Seymour RAPAPORT et al.

Patent Trials and Appeals Board

Sep 3, 2020

12854082 - (R) (P.T.A.B. Sep. 3, 2020)

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.
12/854,082 08/10/2010 Seymour RAPAPORT RAPA-01733US0 7080
28554 7590 09/03/2020
Vierra Magen Marcus LLP
2001 Junipero Serra Blvd., Suite 515
Daly City, CA 94014
EXAMINER
HO, RUAY L
ART UNIT PAPER NUMBER
2175
NOTIFICATION DATE DELIVERY MODE
09/03/2020 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):
patents@vierramagen.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEYMOUR RAPAPORT, JEFFREY A. RAPAPORT,
KENNETH ALLEN SMITH, JAMES BEATTIE, and GIDEON GIMLAN1
____________________

Appeal 2020-000346
Application 12/854,082
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ELENI MANTIS MERCADER, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 on
July 20, 2020 (hereinafter “Request”), requesting that we reconsider our
Decision on Appeal of June 1, 2020 (hereinafter “Decision”). In the
Decision, we reversed the Examiner’s rejections of claims 1, 5, 12, 15, 21
through 30, 32, 33, and 36 through 40 under 35 U.S.C. § 112, first
paragraph; claims 1 and 5 under 35 U.S.C. § 112 second paragraph; claims 1

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Jeffrey A. Rapaport, is the real party in
interest. Appeal Br. 3.
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and 36 through 40 under 35 U.S.C. § 103 based upon Turski, Schoenberg
and Sacco; claims 2 through 4, 6 through 10, and 18 through 20 under
35 U.S.C. § 103 based upon Schoenberg Macadaan and Neely; and claims 5,
12 through 17, and 32 through 35 under 35 U.S.C. § 103 based upon Sacco
and Schoenberg. We affirmed the Examiner’s rejections of claims 18
through 20, 26 through 28, and 31 under 35 U.S.C. § 112, first paragraph;
claims 2 through 4, 6 through 10, and 12 through 24 under 35 U.S.C. § 112
second paragraph; claims 21 through 24 under 35 U.S.C. § 102 based upon
Elder; and claims 25 through 31 under 35 U.S.C. § 103 based upon
Schoenberg and Elder.
We reconsidered our Decision in light of Appellant’s Request for
Rehearing, but we decline to modify the Decision.

ISSUES AND ANALYSIS
Appellant requests rehearing based on several points allegedly
misapprehended or overlooked in the by the Board when it affirmed the
35 U.S.C. § 103 rejections. Request 2. We will address each point in the
order presented in the Request.
First Point
Appellant’s first argued point is that Board misapprehended
Appellant’s statements in the Appeal Brief, which rely upon arguments
made outside of the Appeal Brief, as requesting a de novo review and that
this constitutes a global error that is overlooked by the Board. Request 2–
11. Appellant presents several rationales to support this argument.
First, Appellant argues that these statements were rebuttal evidence, in
the form of specification evidence, which the Examiner refused to consider
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and mischaracterized as “lengthy arguments.” Request 2–6 (Appellant’s
¶¶ 1b–1c) (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d
1091 (Fed. Cir. 2020) and several non-precedential PTAB decisions).
These arguments have not persuaded us of to change the Decision. In
McRO, the “specification evidence” discussed is the specification of the
application. McRO at 1099. Our decision did consider the Specification as
evidence when Appellant provided specific arguments identifying portions
of the Specification. However, as stated in the Decision:
Throughout the Briefs Appellant’s arguments also
reference arguments not made in the Briefs but presented in
prior communications with the Examiner. See, e.g., Appeal Br.
17 (“[a]ll this by the way is argued and backed up with
supporting evidence to a greater level of detail in the earlier
filed response RE7/2018 which the Examiner has elected to
summarily dismiss as ‘lengthy arguments.’ See pg. 27 of
RE7/2018 (‘Be that as it may, ... ’). RE7/2018 is part of the
record.”). These arguments, presented in papers other than the
Briefs, have not been considered as they are not before us. See
37 C.F.R. § 41.37(iv) (“any arguments or authorities not
included in the appeal brief will be refused consideration by the
Board for purposes of the present appeal”).

Decision 5 (footnote omitted). The discussion of “specification evidence” in
McRO does not contradict this holding. Thus, we did not overlook the
arguments, rather we identified they were not properly before us. Had
Appellant wanted the Board to consider arguments made in prior responses
to the Examiner, Appellant should have presented those arguments in the
Appeal Brief as required by 37 C.F.R. § 41.37. Appellant’s argument that
on page 17 of the Brief, that a) they incorporated the prior arguments in the
brief; b) that they asserted the Examiner failed to address these arguments;
and c) that a) and b) constitute rebuttal evidence, is nothing more than an
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attempt to circumvent 37 C.F.R. § 41.37(iv). Further, Appellant has not
shown that the arguments presented in prior responses could not have been
presented in the Appeal Brief, and as such they were waived. Accordingly,
Appellant’s arguments in ¶¶ 1b–1c of the Request have not persuaded that
we overlooked arguments raised by Appellant in the Briefs.
Second, Appellant argues that numerous times on the record
Appellant identified Figure 2 as providing support for the claimed
recitation of “spatial and/or hierarchical” organization. Request 6
(Appellant’s ¶ 1d), Appellant asserts this “was merely one example of a
wholesale refusal by the Examiner to respond to all the rebuttal
evidence” and asserts the response to the Examiner dated July 9, 2018
cites to additional “specification evidence” which was not considered
by the Examiner. Request 7.
These arguments are not persuasive of error in the Decision. We
did consider Appellant’s arguments in the Appeal Brief, identifying
Figure 2 and Figures 5A and 6 as providing written-description support
for the “spatial and/or hierarchical organization” limitation. See
Decision 7 and 8, reversing the Examiner’s rejection as it applies to this
limitation. However, as discussed above, any other arguments in the
July 9, 2018, response to the Examiner, were not before us and as such
were not considered. Accordingly, Appellant’s argument ¶ 1d of the
Request have not persuaded that we overlooked arguments raised by
Appellant in the Briefs.
Third, Appellant argues that the response to the Examiner dated
July 9, 2018 is incorporated by reference into the Appeal Brief and
does not appear to be a rule against such incorporation by reference.
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Request 8 (Appellant’s ¶ 1e).
As discussed above, the Decision cited 37 C.F.R. § 41.37(iv)
which clearly states, “any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of
the present appeal.” The citations and arguments made in the July 9,
2018 were not presented in the Appeal Brief. Nor has Appellant
identified any authority that permits incorporation by reference of prior
arguments. Accordingly, Appellant’s argument ¶ 1e of the Request
have not persuaded that we overlooked arguments raised by Appellant
in the Briefs.
Fourth, Appellant argues that with respect to the written-
description rejection the Appellant provided rebuttal evidence in the
July 9, 2018 response to the Examiner. Request 8–10 (Appellant’s
¶ 1f). In these arguments, Appellant identifies portions of the
Specification asserted to provide support of the limitations identified by
the Examiner as lacking written-description support. Id.
These arguments have not persuaded us we misapprehended or
overlooked arguments made in the prior decision. Appellant’s
arguments in paragraph 1f (i) assert we correctly determined the
limitation “spatially and/or hierarchical organization.” We note that
this determination in the decision was based upon arguments made in
the Appeal Brief, not based upon arguments made in the July 9, 2018
response to the Examiner. Decision 6–7. Appellant’s arguments in
paragraph 1f (ii) assert the limitation directed to “headline column” was
identified in the July 9, 2018 response to the Examiner in paragraph 99.
Request 8. The Appeal Brief included no argument that the limitation
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was supported in paragraph 99. As such, we did not overlook this
argument as Appellant did not present it to us in accordance with
37 C.F.R. § 41.37(iv). Appellant makes similar arguments in
paragraphs 1f (iii–vix). As identified in the Decision, we considered
not only the portions of the Specification cited in the arguments but
also those in the “Summary of the Claimed Subject Matter” portion of
the Appeal Brief. Decision 7–8. The paragraphs of the Specification
asserted in the Request as providing written-description support for
rejected claim limitations were also not identified in the Summary of
the Claimed Subject Matter section of the Appeal Brief. Accordingly,
Appellant’s arguments in ¶¶ 1f (i–vix) of the Request have not
persuaded us that we overlooked arguments raised by Appellant in the
Briefs.

Second Point
Appellant’s second argued point is that the Decision’s discussion
on page 18, as to why we reversed the Examiner’s rejection of claim 2
under 35 U.S.C. § 112, second paragraph, is confusing. Request 11.
On page 18 of the Decision, we merely identified that we disagreed
with the Examiner’s rationale that is it not clear if the “vote” and
“guess” are the same (see e.g., Answer 30), as we do not see any
confusion. Thus, Appellant’s arguments directed to the second point
have not persuaded that we misapprehended or overlooked arguments
raised by Appellant in the Briefs, and we do not change the Decision.

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Third Point
Appellant’s third argued point is that the Decision simplified the
definition of “community-controlled topic space.” Request 11.
Appellant cites to the July 9, 2018 response to the Examiner as
asserting that topic space is community controlled due to automatically
repeated updating and not just based on plural users as identified on
page 16 of the Decision. Request 11–12.
These arguments have not persuaded us to change the Decision.
This point is premised upon arguments presented in the July 9, 2018
response to the Examiner and not an argument raised in the Appeal
Brief. As such, Appellant did not present it to us in accordance with
37 C.F.R. § 41.37(iv). Thus, Appellant’s arguments directed to the
third point have not persuaded that we misapprehended or overlooked
arguments raised by Appellant the Briefs, and we do not change our
decision.

Fourth Point
Appellant’s fourth argued point is that the discussion on page 6
of the Decision addressing Figure 2’s Topic Center Owned Note
Exchanges (TCONES) is a conclusion unsupported by evidence of
record. Request 12. Appellant asserts that the decision erred in
discussing item 225 as being a topic space; rather Appellant asserts it is
a platform and the TCONEs 216 do not extend outside topic space 215.
Request 12.
We are not persuaded of error by these arguments. Initially, we
note that the statement cited by Appellant is on page 8 of the Decision
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and not page 6 as argued by Appellant. Further, these statements are in
support of a reversal of the Examiner’s written-description rejection.
Appellant’s Specification in numerous places discuss items 215 and
225 as spaces for topics and identifies item 220 as a platform. See e.g.,
Specification ¶¶ 85, 86, 104, and 119. Thus, not persuading us we
misunderstood item 225 as a topic space. Further, regarding
Appellant’s statement about the TCONEs extending outside the topic
space, the Decision did not discuss the TCONES extending outside the
topic space. The Decision merely stated that “Figure 2 depicts Topic
Center Owned Note Exchanges (TCONEs) which extend in the z
direction (i.e., perpendicular to the topic space) and as such represent a
spatial organization of the data.” Decision 8. Thus, Appellant’s
arguments directed to the fourth point have not persuaded that we
misapprehended or overlooked arguments raised by Appellant the
Briefs, and we do not change our decision.

CONCLUSION
For the aforementioned reasons, Appellant’s contentions have not
persuaded us to change our Decision with respect to the rejections under
35 U.S.C. § 112, 35 U.S.C. § 102, and 35 U.S.C. § 103
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).

Appeal 2020-000346
Application 12/854,082

9
REQUEST FOR REHEARING DENIED
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Denied Granted
1, 5, 12, 15,
18–33, 36–
40
112, first
paragraph
Written
Description
18–20, 26–
28, 31

1–10, 12–
40
112,
second
paragraph
Indefinite 2–4, 6–10,
12–40

21–24 102 Eder 21–24
25–31 103 Schoenberg, Eder 25–31
Overall
Outcome
2–4, 6–10,
12–40

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 12, 15,
18–33, 36–
40
112, first
paragraph
Written
Description
18–20, 26–
28, 31
1, 5, 12,
15, 21–30,
32, 33, 36–
40
1–10, 12–
40
112,
second
paragraph
Indefinite 2–4, 6–10,
12–40
1, 5
21–24 102 Eder 21–24
1, 36–40 103 Turski,
Schoenberg, Sacco
1, 36–40
2–4, 6–10,
18–20
103 Schoenberg,
Macadaan, Neely
2–4, 6–10,
18–20
5, 12–17,
32–35
103 Sacco, Schoenberg 5, 12 –17,
32–35
25–31 103 Schoenberg, Eder 25–31
Overall
Outcome
2–4, 6–10,
12–40
1, 5