Ex Parte Van Den Hamer et al

Patent Trial and Appeal Board

Feb 5, 2014

10145677 (P.T.A.B. Feb. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PETER VAN DEN HAMER,
HENDRIK DIRK LODEWIJK HOLLMANN,
and MAARTEN PETER BODLAENDER
____________

Appeal 2010-012510
Application 10/145,677
Technology Center 2100
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Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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A request for rehearing “‘must state with particularity the points
believed to have been misapprehended or overlooked by the Board’” and
“must specifically recite ‘the points of law or fact which appellant feels were
overlooked or misapprehended by the Board.’” Ex Parte Quist, 95 USPQ2d
1140, 1141 (BPAI 2010) (precedential) (quoting MPEP § 1214.03).
In the instant case, Appellants have requested a rehearing under
37 C.F.R. § 41.52 on October 1, 2013 (“Request”) from our Decision on
Appeal mailed August 1, 2013 (“Decision”), wherein we:
(1) reversed the anticipation rejection of (a) claims 1-3 based on the
findings as to Vollmer and (b) claims 4-9 as being unpatentable for
obviousness based on the findings as to Vollmer with respect to claim 1
upon which claims 4-9 depend (due to Vollmer’s lack of any teaching of a
memory as recited in claim 1),
(2) reversed the anticipation rejection of claims 10 and 12-14 based on
the findings as to Ramamurthy (due to Ramamurthy’s lack of any teaching
of first and second headers as recited in claim 1), and
(3) entered a new ground of rejection for claim 1 under 35 U.S.C.
§ 103(a) over Ramamurthy and Vollmer. See Decision 5-6.
Specifically, Appellants contend that the original panel Decision
presented reasoning insufficient to support a prima facie case of obviousness
(Request 3-5) and failed to provide a rational underpinning supporting the
new ground of rejection (Request 6).
Appellants must establish that the new ground of rejection does not
present a prima facie case of unpatentability because of (i) failing to meet
the notice requirement of 35 U.S.C. § 132, or (ii) erring with respect to
“either . . . an underlying finding of fact upon which the final conclusion of
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obviousness was based, or . . . the reasoning used to reach the legal
conclusion of obviousness.” Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (addressing the Board’s standard of review); see also In
re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (addressing the notice
requirement).
To prevail, an argument establishing an error must also demonstrate
resulting prejudice. As explained by the Federal Circuit:
[T]o prevail the appellant must not only show the existence of
error, but also show that the error was in fact harmful because it
affected the decision[.] See Munoz v. Strahm Farms, Inc., 69
F.3d 501, 504 (Fed.Cir.1995) (“The correction of an error must
yield a different result in order for that error to have been
harmful and thus prejudice a substantial right of a party.”); see
also Palmer v. Hoffman, 318 U.S. 109, 116, 63 S.Ct. 477, 87
L.Ed. 645 (1943) (“He who seeks to have a judgment set aside
because of an erroneous ruling carries the burden of showing
that prejudice resulted.”).
In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Gechter v.
Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997)).
Exemplary Claim
Exemplary independent claim 1 under reconsideration reads as
follows (emphasis added):
1. A data tag comprising:

a memory, the memory containing self-descriptive data, said self-
descriptive data including:

a first data element

a first header describing the first data element;

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a second data element;

a second header describing the second data element.

Appellants have not specifically pointed out any points overlooked or
misapprehended by the Board in its Decision, other than to assert that the
Board’s original Decision failed to make a prima facie case of obviousness
with regard to claim 1, namely a failure to present a proper motivation or
rational underpinning for the conclusion of obviousness.
In the instant case, the obviousness rejection of claim 1 as being
unpatentable over the combination of Ramamurthy and Vollmer is not new,
because Appellants have had ample opportunity to react to the thrust of the
rejection and evidentiary scheme; that is, the findings as to the individual
teachings of Ramamurthy and Vollmer, as well as the motivation for making
the combination. All three of the essential elements of the Board’s rejection
of claim 1 (i.e., the findings as to the teachings of Ramamurthy, the findings
as to the teachings of Vollmer, and the motivation for modifying
Ramamurthy with Vollmer) were presented to Appellants in the Final
Rejection (Final Rej. 2-10), in the Examiner’s Answer (Ans. 4-12 and 15-
16), and again in the Decision’s new ground of rejection (Decision 5-6)
employing these three elements. Thus, Appellants have been given adequate
notice and have had ample opportunity to dispute these three essential
elements (i.e., the thrust of the rejection and/or evidentiary scheme) of the
Board’s new ground of rejection as to claim 1 found in the Decision.
Therefore, Appellants have not been subject to any undue prejudice for
failure to be apprised of the basis of the new ground of rejection for claim 1
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which relies upon an evidentiary scheme which Appellants have previously
been made aware.
Ramamurthy
More specifically, with regard to claim 1, Ramamurthy discloses a
data tag 50 (Fig. 1, elements 14a, 14b, and 14c; see Ans. 15) comprising a
memory 58 (Fig. 3; col. 5, ll. 40-44) which contains self-descriptive data
(col. 5, l. 65 to col. 6, l. 14 describing fields defined by a user such as an IP
address field, a port number field, and additional information in other fields;
see Ans. 15). The self-descriptive data of Ramamurthy therefore includes a
first data element (the IP address; see Ans. 11-12), and a second data
element (the port number; see Ans. 11-12).
Vollmer
Also with regard to claim 1, Vollmer discloses (see Ans. 4, 5, and 11)
a first header (7 in Fig. 4) describing the first data element (6 in Fig. 4; first
data field 4211 having permanent broadcast information disclosed at col. 3,
ll. 16-23); a second data element (6 in Fig. 4; ); and a second header
describing the second data element (7 in Fig. 4; second data field 4212
having flexible broadcast information disclosed at col. 3, ll. 23-32).
Motivation and Rational Underpinning for Combining
Ramamurthy and Vollmer
With regard to claim 1 and the motivation to combine Ramamurthy
and Vollmer, the present case is not similar to Rambus Inc. v. Rea, 731 F.3d
1248, 1255-56 (Fed. Cir. 2013) (concluding that the Board erred by using a
new motivation), in which the examiner made an erroneous finding in
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support of a combination of references and the Board made new, alternative
findings to support the combination, including essentially providing a new
motivation to combine the references. Id. In contrast, in the instant case, the
Board relies on the same motivation that the Examiner relied upon in the
Answer, namely that of providing a data tag for use in a computer network
for ultimate data processing and collection, as taught by Ramamurthy’s
Abstract (see Ans. 11-12; Decision 6).
In addition, the Board relies upon a rational underpinning for reaching
the conclusion of obviousness, i.e., a motivation to combine Ramamurthy
with Vollmer, that includes providing a more efficient transmission of
information by using flexible data fields as taught by Vollmer (see Abs.; col.
1, l. 65 – col. 2, l. 31; e.g., second data field 4212 which includes flexible
broadcast information as disclosed at col. 3, ll. 23-32). Notably, this
motivation is almost identical to Appellants’ own disclosure found at page 2
of the Specification, e.g., providing a flexible amount of data fields (Spec.
2:8-27), in order to avoid the known problem of “fixed length format in
terms of tag cost price” (Spec. 2:6-7). In other words, Vollmer discloses the
same motivation for using two headers as Appellants’ motivation found at
page 2, lines 8-10 and 23-27 of the Specification, namely that of providing
flexible adjustment and/or expansion of the division of data fields for future
requirements (see Vollmer, col. 2, ll. 19-21) due to wide variations of data
rates associated with various information elements (see Vollmer, col. 2, ll. 1-
11).
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Summary
In this light, Appellants’ contentions that the Board’s new ground of
rejection in the Decision failed to establish a prima facie case of obviousness
(Request 5), or failed to present a rational underpinning for the conclusion of
obviousness (Request 6), are not persuasive.
The combination of Ramamurthy and Vollmer teaches or suggest a
data tag comprising a memory containing self-descriptive data, the self-
descriptive data including (i) a first data element, (ii) a first header
describing the first data element, (iii) a second data element, and (iv) a
second header describing the second data element.
This decision on rehearing merely fills in the gaps, and explains in
more detail, the Examiner’s and the Board’s findings with respect to
Ramamurthy (see Ans. 6-8, 11-12, and 15-16) and Vollmer (see Ans. 4-5, 8,
and 11-13) and the motivation for making the combination, all of which
Appellants were apprised of early in the prosecution (see Final Rej. 2-10).
In view of the foregoing, Appellants have not shown that the Decision
by the Board overlooked or misapprehended any facts or reached any
improper conclusions as to the obviousness of claim 1 over the combination
of Ramamurthy and Vollmer.
Conclusion
Appellants’ Request for Rehearing has been granted to the extent that
our decision has been reconsidered, but such request is denied with respect
to making any modifications to the decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a)(1)(iv).
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REQUEST FOR REHEARING
DENIED

msc