May Patents Ltd.

Patent Trials and Appeals Board

Mar 18, 2022

2020003781 (P.T.A.B. Mar. 18, 2022)

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. 15/213,914 07/19/2016 Yehuda BINDER BINDER-006-US10 4586 131926 7590 03/18/2022 May Patents Ltd. c/o Dorit Shem-Tov P.O.B 7230 Ramat-Gan, 5217102 ISRAEL EXAMINER BUKOWSKI, KENNETH ART UNIT PAPER NUMBER 2621 MAIL DATE DELIVERY MODE 03/18/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YEHUDA BINDER ____________________ Appeal 2020-003781 Application 15/213,914 Technology Center 2600 ____________________ Before JEFFREY S. SMITH, BARBARA A. BENOIT, and JOHN R. KENNY, Administrative Patent Judges. KENNY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING INTRODUCTION Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 (“Rehearing Request,” “Req. Reh’g”) for reconsideration of our Decision on Appeal, mailed December 29, 2021 (“Decision,” “Dec.”). In our Decision, we affirmed the Examiner’s rejections of claims 1-12, 15-17, 19-34, 36-41, 43, 45-50, and 52-63. Dec. 7. In the Rehearing Request, Appellant implicitly requests that we reverse the rejections made by the Examiner. Req. Reh’g 2-5. We deny the Rehearing Request. Appeal 2020-003781 Application 15/213,914 2 ANALYSIS The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 41.52(a)(1), which provides in relevant part, “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” Appellant’s Rehearing Request does not expressly identify any points believed to be misapprehended or overlooked by the Board. Req. Reh’g 2-5. Nevertheless, Appellant makes the arguments set forth below. A. Field of Endeavor In its Appeal Brief, Appellant argued that the definition provided by Examiner for the field of endeavor for this application is not the same as the definitions for the fields of endeavor for other applications filed by Appellant. See, e.g., Appeal Br. 7-8. In its Rehearing Request, Appellant argues that the differing definitions by the Examiner(s) amount to a moving target and warrant reversal of the Examiner’s rejections. Req. Reh’g 2-4. In our Decision, we indicated that we were deciding the issues before us, and, in particular, whether the Examiner’s definition for the field of endeavor provided for this application and its claimed invention was correct and whether Xu was within that field. We stated: The fact that the fields of invention for other applications may have been formulated differently and Xu was found to be within those fields does not impact our analysis here. Xu can be in more than one formulated field of endeavor, and as set forth above, Xu is in the field of endeavor here. Dec. 6. In the Rehearing Request, Appellant provides no reason why the field of endeavor the Examiner specified for this application is incorrect, other than to merely argue that the Examiner(s) provided different definitions for Appeal 2020-003781 Application 15/213,914 3 the fields of endeavor for other applications. Req. Reh’g 2-4. Further, Appellant provides no reason why Xu is not within the field of endeavor that the Examiner specified. Id. Appellant, however, argues that the following cases support its contention that the alleged inconsistency with the definitions for other cases warrants reversal (id.): In re Durance, 891 F.3d 991 (Fed. Cir. 2018); In re Vaidyanathan, 381 F. App’x 985 (Fed. Cir. 2010); Motor Vehicle Mfs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29 (1983); and Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267 (Fed. Cir. 2017). We disagree. Durance addresses the issue of whether arguments in an appellant’s reply brief were timely presented, which is not at issue here. Durance, 891 F.3d at 996. Ultratec addresses whether a motion to admit testimony of a trial witness should have been granted, which is also not at issue here. Ultratec, 872 F.3d at 1275. Motor Vehicle Manufacturers holds that an agency should explain its action. Motor Vehicle Mfs., 463 U.S. at 43. We, however, have explained why we accepted the Examiner’s definition for the field of endeavor and why Xu is within that field. See Dec. 4-6. Vaidyanathan addresses a situation where the office provided three different explanations for a teaching by a reference where the rejection at issue relied on that teaching. Vaidyanathan, 381 F. App’x at 991. Vaidyanathan does not involve alleged inconsistencies with findings from other applications on distinct issues. Id. Moreover, in this case, Appellant has not argued that the findings regarding the fields of endeavor from the other applications were correct, nor has Appellant explained why the definitions for the fields of endeavor for the other applications must be the same as for this application. Id. Further, Appellant has not explained why Appeal 2020-003781 Application 15/213,914 4 Xu could not be in more than one field of endeavor. Id. Thus, we sustain the Examiner’s findings regarding Appellant’s field of endeavor and the Examiner’s finding that Xu is within that field. B. Alleged New Ground of Rejection Appellant argues that, because we explained that Xu can be in more than one field of endeavor and that our analysis was not affected by definitions for the fields of endeavor for other applications, our Decision set forth a new ground of rejection. Req. Reh’g 3. We disagree. “When considering whether the Board issued a new ground of rejection, the ‘ultimate criterion of whether a rejection is considered “new” in a decision by the Board is whether applicants have had fair opportunity to react to the thrust of the rejection.’” In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011)). A new ground of rejection generally will not be found based on the Board further explaining the examiner’s rejection or the Board’s thoroughness in responding to an applicant’s argument. Id. (citing In re Jung, 637 F.3d 1356, 1364-65 (Fed. Cir. 2011)). Here, Appellant had a chance to respond to the thrust of the Examiner’s rejection regarding analogous art. We did not alter the Examiner’s definition of the field of endeavor, and we did not alter the Examiner’s finding that Xu was within that field. Dec. 4-6. The fact that that we explained why we were upholding the Examiner’s findings regarding the field of endeavor and Xu does not give rise to a new ground of rejection. Biedermann, 733 F.3d at 337. Appeal 2020-003781 Application 15/213,914 5 C. References and Fields of Endeavor Appellant argues that a reference can only be in one field of endeavor. Req. Reh’g 3. Appellant contends that that all rules, regulations, and the Manual of Patent Examining Procedure specify that there can only be one field of endeavor associated with a reference. Id. To support this contention, Appellant provides quotes from cases that refer to a field of endeavor in the singular form. Id. But none of those quotes indicate that a reference can only be in one field of endeavor. Id. The quoted passages address fields of endeavor for claimed inventions, not whether more than one field of endeavor can encompass a prior art reference. Id. And Appellant presents no reason why, and we see no reason why, a single reference cannot provide disclosures in several fields of endeavor. For example, Kitaura, which is of record in this case, on its face, is listed as being subject to different categories of classification. Kitaura, code (52). Further, the patent code recognizes that applications can disclose and claim “two or more independent and distinct inventions.” 35 U.S.C. § 121. Thus, we see no reason why a prior art patent reference cannot describe more than one distinct invention and have subject matter that falls within more than one field of endeavor. Thus, we do not agree with Appellant that a prior art reference can only be in one field of endeavor. D. Combination of Cho, Yamada, and Corbett Appellant argues that it previously asserted that Cho, Yamada, and Corbett are not in the field of the endeavor found by the Examiner and that we should find that these references are not analogous art. Req. Reh’g 4. We are not persuaded by this argument. Appellant merely asserts that the references are not in the field of the endeavor specified by the Examiner Appeal 2020-003781 Application 15/213,914 6 without explaining why. Id. Further, the Examiner found that Cho, Yamada, and Corbett are also pertinent to the problem with which the inventor was involved, findings that Appellant does not address. Ans. 17- 22; Req. Reh’g 4. Thus, we do not reverse the Examiner’s findings that Cho, Yamada, and Corbett are analogous art. E. Adoption of the Examiner’s Findings Appellant argues that we were required to separately address all arguments (more than twenty) presented in the Appeal Brief and could not instead adopt the Examiner’s findings. Req. Reh’g 4-5. We disagree. “It is commonplace in administrative law for a reviewing body within an agency to adopt a fact-finding body’s findings. On judicial review, the adopted material is treated as if it were part of the reviewing body’s opinion.” In re Cree, Inc., 818 F.3d 694, 698 n.2 (Fed. Cir. 2016). F. Summary In sum, after considering our Decision in light of the statements made in the Rehearing Request, we deny the Rehearing Request. DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Granted Denied 1-4, 6, 10- 12, 15-17, 19, 21 31, 32, 34, 36, 37, 40, 41, 43, 47, 52- 54 103(a) Binder, Xu 1-4, 6, 10- 12, 15-17, 19, 21 31, 32, 34, 36, 37, 40, 41, 43, 47, 52- 54 Appeal 2020-003781 Application 15/213,914 7 Claims 35 U.S.C. § Reference(s)/Basis Granted Denied 5, 20, 45, 46, 55-57 103(a) Binder, Xu, AAPA 5, 20, 45, 46, 55-57 7-9, 33, 38, 39 103(a) Binder, Xu, Kitaura 7-9, 33, 38, 39 22, 23, 48, 49 103(a) Binder, Xu, Cho 22, 23, 48, 49 24, 50 103(a) Binder, Xu, Karman 24, 50 25-29, 58- 62 103(a) Binder, Xu, Yamada 25-29, 58- 62 30, 63 103(a) Binder, Xu, Yamada, Corbett 30, 63 Overall Outcome 1-12, 15- 17, 19-34, 36-41, 43, 45-50, 52- 63 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 6, 10- 12, 15-17, 19, 21 31, 32, 34, 36, 37, 40, 41, 43, 47, 52- 54 103(a) Binder, Xu 1-4, 6, 10- 12, 15-17, 19, 21 31, 32, 34, 36, 37, 40, 41, 43, 47, 52- 54 5, 20, 45, 46, 55-57 103(a) Binder, Xu, AAPA 5, 20, 45, 46, 55-57 7-9, 33, 38, 39 103(a) Binder, Xu, Kitaura 7-9, 33, 38, 39 22, 23, 48, 49 103(a) Binder, Xu, Cho 22, 23, 48, 49 Appeal 2020-003781 Application 15/213,914 8 Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 24, 50 103(a) Binder, Xu, Karman 24, 50 25-29, 58- 62 103(a) Binder, Xu, Yamada 25-29, 58- 62 30, 63 103(a) Binder, Xu, Yamada, Corbett 30, 63 Overall Outcome 1-12, 15- 17, 19-34, 36-41, 43, 45-50, 52- 63 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). DENIED