Intelligent Mechatronic Systems Inc.

Patent Trials and Appeals BoardDec 2, 2021

2020004246 (P.T.A.B. Dec. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/991,976 01/10/2016 Otman A. Basir 60449-197 PUS2 5161 26096 7590 12/02/2021 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER CAI, WAYNE HUU ART UNIT PAPER NUMBER 2644 NOTIFICATION DATE DELIVERY MODE 12/02/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte OTMAN B. BASIR ____________________ Appeal 2020-004246 Application 14/991,976 Technology Center 2600 ____________________ Before ALLEN R. MacDONALD, JAMES B. ARPIN, and ADAM J. PYONIN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing (“Req. Reh’g”)1 under 37 C.F.R. § 41.52(a), requesting that we reconsider our Decision (“Dec.”) of September 10, 2021, wherein we affirmed the Examiner’s rejections of claims 1–9 and 14. We have reconsidered our Decision in light of Appellant’s comments in the request, and are not persuaded that we misapprehended or overlooked arguments presented by Appellant. Appellant’s request is denied. 1 “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board. Arguments not raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1) (2019). Appeal 2020-004246 Application 14/991,976 2 Appellant’s Contentions A. Appellant contends the Board overlooked a new ground of rejection in the Examiner’s Answer. Appellant respectfully requests rehearing primarily because the rejection presented by the Office in the Examiner’s Answer relies on a different combination of features than the rejection presented in the Final Office Action and should have been designated a New Ground of Rejection. As a result, the remarks directed to the lack of sufficient rationale to establish prima facie obviousness presented by Appellant in the Reply Brief were not untimely and the Board should fully consider the remarks. Req. Reh’g 2 (emphasis added). In the instant case it was the examiner who changed the specific finding by altering the allegedly obvious combination in the Examiner’s Answer, however, the legal principles, as well as the principles of fairness, remain the same. The Examiner’s Answer altered the specific finding - in this case, the specifically defined combination - and the Appellant must be afforded an opportunity to respond to the changes to the specific findings. Thus, the rejection outlined in the Examiner’s Answer must be designated a New Grounds of Rejection, and Appellant’s remarks responding to the new grounds in the Reply Brief were timely and must be considered. Req. Reh’g 4 (emphasis added). B. Appellant contends the Board overlooked: Appellant[’]s remarks that “there is no reason for the costly addition of another processor (and its required power source) at the microphone/speaker before it is connected to the vehicle unit. The new grounds of rejection proposed to add an additional, unnecessary processor to a microphone and speaker prior to their connection to a vehicle unit with its own processor” (emphasis added). [Reply Br. 3] Req. Reh’g 5. Appeal 2020-004246 Application 14/991,976 3 C. Appellant contends the Board overlooked the requirements of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007): Not only did the Board not rely on the incorrect rationale provided by the Examiner, the Board relied on a statement that provides no rationale at all and incorrectly asserted that KSR only requires a rational to be provided for “difficult” cases. This is not the standard, established by KSR. Req. Reh’g 6. ANALYSIS A. As to Appellant’s above contention A, we disagree. The panel has not overlooked Appellant’s argument that the Examiner’s Answer must be designated a New Grounds of Rejection. Unlike the inter parte case law (Rambus v. Rea, 731 F.3d 1248 (Fed. Cir. 2013)) and inter parte appeal rule (37 C.F.R. § 41.77(b)) cited by Appellant (Req. Reh’g 4), the current appeal is an ex parte appeal which is not covered by 37 C.F.R. § 41.77(b). To the extent Appellant is concerned that the rejection in the Examiner’s Answer is an undesignated new ground of rejection, such an issue is a matter for petition to the Director under 37 C.F.R. § 1.181 (within two months of the Examiner’s Answer). Further, failure to timely file such a petition will constitute a waiver of any such arguments. Any request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner’s answer and before the filing of any reply brief. Failure of appellant to timely file such a petition will constitute Appeal 2020-004246 Application 14/991,976 4 a waiver of any arguments that a rejection must be designated as a new ground of rejection. 37 C.F.R. § 41.40(a) (2019) (emphasis added). In view of the January 23, 2012 effective date of 37 C.F.R. § 41.40, Appellant’s alleged examiner failure is not appealable to this Board. B. As to Appellant’s above contention B, the panel has not overlooked Appellant’s “costly addition” remarks in the Reply Brief. Rather, we found Appellant’s remarks untimely and unpersuasive as the Final Action cites Gilmartin’s teaching of the addition of another processor. Gilmartin teaches a communications device (i.e., user interface device) selected from among a variety of processor containing devices (Gilmartin ¶¶ 44–45). Again, Gilmartin teaches the claimed user interface device including a processor. . . . Appellant overlooks that the Final Action presents alternative reasons as to why each of Gilmartin and Ichikawa respectively teach or suggest a user interface device including a processor. Final Act. 3-4. Dec. 8. C. As to Appellant’s above contention C, the panel has not overlooked the requirements of KSR. Rather, we pointed out that if we had found Appellant’s untimely argument to instead be timely (Dec. 8), then “the Examiner’s articulated reasoning to modify the cited references . . . is sufficient here” (Dec. 9). This would be because a situation of mere substitution—as presented by the Examiner—is not the same as a “difficult” case of obviousness to which the Court was referring in parts of its reasoning Appeal 2020-004246 Application 14/991,976 5 in KSR. DECISION Based on the record before us, we deny Appellant’s Request for Rehearing. Appellant has not persuasively identified any points the panel misapprehended or overlooked. Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 2 103 Gilmartin, Ichikawa 1, 2 3–6 103 Gilmartin, Ichikawa, Walby 3–6 7 103 Gilmartin, Ichikawa, Dunne 7 8, 9 103 Gilmartin, Ichikawa, Dickinson 8, 9 14 103 Gilmartin, Ichikawa, Dunne, Oesterling 14 Overall Outcome 1–9, 14 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 103 Gilmartin, Ichikawa 1, 2 3–6 103 Gilmartin, Ichikawa, Walby 3–6 7 103 Gilmartin, Ichikawa, Dunne 7 8, 9 103 Gilmartin, Ichikawa, Dickinson 8, 9 14 103 Gilmartin, Ichikawa, Dunne, Oesterling 14 Overall Outcome 1–9, 14 Appeal 2020-004246 Application 14/991,976 6 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). DENIED