Telephone and Data Systems, Inc.

Patent Trials and Appeals BoardAug 3, 2021

2020003578 (P.T.A.B. Aug. 3, 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. 15/040,883 02/10/2016 Christopher Daniel Theisen 285948 9169 23460 7590 08/03/2021 LEYDIG VOIT & MAYER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON AVENUE CHICAGO, IL 60601-6731 EXAMINER ROBINSON, KYLE G ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 08/03/2021 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte CHRISTOPHER DANIEL THEISEN and JAMES MATTHEW TWIEG __________ Appeal 2020-003578 Application 15/040,883 Technology Center 3600 ____________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON REHEARING STATEMENT OF THE CASE Appellant1 filed a request for rehearing (“Req. Reh’g”) under 37 C.F.R. § 41.52 of our decision (“Decision”) dated April 2, 2021. In that Decision, we affirmed (1) the Examiner’s rejection of claims 10, 14, and 18 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Telephone and Data Systems, Inc. See Appeal Brief (“Appeal Br.”) 1, filed Nov. 4, 2019. Appeal 2020-003578 Application 15/040,883 2 under 35 U.S.C. § 112(a),2 (2) the Examiner’s rejection of claims 10, 14, and 18 under 35 U.S.C. § 112(b),3 and (3) the Examiner’s rejection of claims 1– 18 under 35 U.S.C. § 103. ANALYSIS 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) and (a)(4) of this section. 37 C.F.R. § 41.52(a)(1). A rehearing is not an opportunity to rehash arguments originally made in the Brief(s), neither is it an opportunity to express mere disagreement with a decision. As an initial matter, Appellant states that “[i]n the event that the Section 103-based rejections are not reversed in response to Appellant’s Rehearing Request, Appellant earnestly requests guidance/clarification with regard to what clarification to Appellant’s claim terminology could be added by an amendment accompanying a request for continued examination.” Req. Reh’g 2. However, the Patent Trial and Appeal Board is a review body, rather than a place of initial examination, and we therefore decline to make a determination of what claim terminology could be added by an amendment in a Request for Continued Examination. Rather, we 2 The request for rehearing does not contend that the Board overlooked anything in connection with the rejection under 35 U.S.C. § 112(a). See Req. Reh’g, passim. 3 The request for rehearing does not contend that the Board overlooked anything in connection with the rejection under 35 U.S.C. § 112(b). See Req. Reh’g, passim. Appeal 2020-003578 Application 15/040,883 3 leave it to the Examiner to provide such recommendations should there be further prosecution of this application. See MPEP § 1213.02 (pointing out that “[t]he Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims.”). Reproducing paragraphs 31 and 46 of the Specification and emphasizing portions thereof, Appellant contends that as shown from Appellant’s disclosure and corresponding elements of the independent claims, the claimed invention incorporates a very specific way for carrying out the claimed “generating” operation – one which is facilitated by an inter- application interface of the location manager through which the marketing media builder obtains location-specific information for a particular outlet for which marketing print media is to be generated. Req. Reh’g 4. This contention is unpersuasive because the Decision points out that “the particulars of these paragraphs are not recited in claim 1.” Dec. 7 (citing In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); In re Self, 671 F.2d 1344, 1348 (CCPA 1982)). The Decision further points out that “even assuming, for the sake of argument, that there are different reasons for having an inter-application interface,” as disclosed from Appellant’s emphasized portions of paragraphs 31 and 46, “the Examiner’s reasoning for modifying Orner’s method need not be the same as Appellant’s reason for having an inter-application interface” and “that the prior art has a different reason or motivation to combine is of no moment as long as there is a sufficient reason to make the combination.” Dec. 7–8 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); Ex Parte Obiaya, 227 USPQ 58, 60 (BP AI 1985)). Appeal 2020-003578 Application 15/040,883 4 Appellant argues that “Orner does not mention, or even remotely suggest, ‘outlet’ information (i.e. information for particular outlets).” Req. Reh’g 5; see also id. at 2, 6 (Appellant arguing that “[l]ocalization is merely a general terminology suggesting coverage of a geographic region (albeit a limited geographic region)” and that “a[t] no point does the [F]inal Office [A]ction (or Decision) refer to factual evidence showing that ‘localization’ equates to ‘outlet-specific’ data sets”). This argument is unpersuasive because as the Decision states, “[i]dentical language between the prior art and claims is not required to sustain a prior art rejection.” Dec. 6 (citing In re Skoner, 517 F.2d 947,950 (CCPA 1975)). Further, in the Decision, the Board explains we agree with the Examiner that because Orner discloses the “process of localizing, personalizing, and distributing print advertising to franchises or company-owned locations” (Orner ¶ 34; emphases added), Orner discloses the “outlet-specific” aspect of the claimed subject matter. Id. We note that the term “outlet-specific” is not defined in the Specification––but rather–– the Specification discloses, “[t]he location manager 140 is a highly configurable, extensible database functionality supporting an extensible set of location-specific information for multi-outlet enterprises including, by way of example, on an outlet location-specific basis: fixtures, location, hours of operation, outlet-specific products/services, prices, contact information, special offers, etc.” Spec. ¶ 32; emphases added. In this regard, the term “outlet-specific” (or “location-specific”), in relation to information or data, is quite broad and is not limited to a specific mailing or street address (as argued by Appellant and discussed below). Appeal 2020-003578 Application 15/040,883 5 Next, Appellant argues that “Orner’s disclosure does not indicate/contemplate any need to maintain two separate applications (joined by an inter-application interface) to carry out ‘regionalizing’ a generic (e.g.[,] national) advertisement template.” Req. Reh’g 5. Appellant also argues that “neither Orner nor Cheung indicates a problem with Orner’s complete/functional system that would be addressed by adding an inter- application data interface to Orner’s complete system” and that “[t]here is no factual support in the record on appeal that Orner even requires (or would benefit from) an inter-application data interface (of the type described by Cheung).” Id. at 6; see also id. at 2 (Appellant arguing that “the incorporation of Cheung’s ‘inter-application interface’ into Orner’s disclosed system is based upon the exercise of improper/excessive hindsight”); id. at 5 (Appellant arguing that “undue reliance upon hindsight [has been exhibited by the Examiner in] applying Cheung’s teaching regarding inter-application data interface to modify Orner’s fully operational system, which does not indicate any particular problem/need, to include Cheung’s inter-application data interface.”). These arguments are unpersuasive because the Decision explains that “[t]he Examiner cited specific teachings in Orner and Cheung themselves, not Appellant’s disclosure, in support of the Examiner’s articulated reasoning for combining Orner and Cheung as proposed in the rejection.” Dec. 7–8 (citing Final Act. 4–5; Ans. 4–5). The Decision further explains that “Appellant has not made a showing that the Examiner’s rationales were outside of the knowledge of an ordinarily skilled artisan at the time the claimed invention was made, or were gleaned only from Appellant’s disclosure.” Id. at 8 (citing Appeal Br. 14–17). Appeal 2020-003578 Application 15/040,883 6 Moreover, Appellant does not explain why Orner’s system is a “complete/functional system” such that it would be unnecessary to add an inter-application data interface. In the Decision, the Board points out that to the extent Appellant is arguing that there is absolutely no need to use an inter-application interface [in Orner], the Examiner explains that Orner’s paragraph 17 discloses importing a database and Orner’s paragraph 37 discloses uploading localization data, which indicate that multiple components are used such that there is a need to use an inter-application interface between the multiple components for the transfer of data. Dec. 8 (citing Ans. 4–5). Indeed, Orner discloses at least two components, an ad-template with database fields and a database containing localization data. Orner ¶ 17; see also id. ¶ 37 (Orner disclosing “data flow” and “document data is uploaded”); Ans. 4 (The Examiner explaining that Orner discloses a “design program,” which equates to the recited “marketing media builder” of claim 1, and a database containing localization data, which equates to the recited “location manager” of claim 1). If data is going from one location (or component or application) to another, then it stands to reason that there are at least two components (or applications) in Orner’s system. Here, for Orner’s system to be complete, then there must be an inter-application interface to transfer data between multiple components (or applications), as explained by the Examiner and as seemingly required by claim 1. See Final Act. 4–5; see also Ans. 4–5 (The Examiner reasoning that “the fact that Orner discloses the importing of a database (see Para. [0017]), as well as the uploading of localization data ([see] Para. [0037][)],” would be “indicative that there are multiple components involved, since there would be no need to import or upload data if the data is already stored on a single component.”). However, as further reasoned by Appeal 2020-003578 Application 15/040,883 7 the Examiner, as Orner does not explicitly disclose an “inter-application interface,” we do not fault the Examiner for looking to Cheung’s teaching of an inter-application for transfer of data from one component (or application) to another, in order to fill this gap with respect to Orner’s disclosure of its system. See Final Act. 4–5. Appellant argues that Orner does not disclose data comprising “a specific mail address/outlet” including a “street address” and that “[t]here isn’t even an indication in Orner that the disclosed system includes two distinct applications, a pre-requisite for incorporating such interface.” Req. Reh’g 6. However, these features are not recited in the claims. See In re Van Geuns, 988 F.2d at 1184; In re Self, 671 F.2d at 1348. We also note here, it is unclear what Appellant considers as “distinct applications.” Lastly, Appellant argues that “the Decision seeks to place the burden upon Appellant to ‘explain what “particularized problem” is solved by the claimed subject matter.’” Req. Reh’g 6 (citing Dec. 7). In the Decision, the Board states that “Appellant does not explain what ‘particularized problem’ is solved by the claimed subject matter that is different from the Examiner’s proffered reason for the proposed modification,” in response to Appellant’s contention that neither Orner nor Cheung “demonstrates awareness of any particularized problem with Orner’s disclosed system.” Dec. 7 (citing Appeal Br. 5). Here, the Board does not improperly shift any particular burden to Appellant––but rather––the Board explains that there is no specificity as to Appellant’s contention. See Ex Parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010) (precedential) (Only issues and findings of fact contested by the Appellant will be addressed). Appeal 2020-003578 Application 15/040,883 8 Accordingly, for the above reasons, we have reconsidered our Decision in light of the arguments in Appellant’s request for rehearing, but the Request is denied with respect to our modifying the Decision. CONCLUSION In summary: Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 3, 5, 7, 9– 11, 13–15, 17, 18 103 Orner, Poirier, Cheung 1, 3, 5, 7, 9–11, 13– 15, 17, 18 2, 4, 6 103 Orner, Poirier, Cheung, Silverstein 2, 4, 6 8, 12, 16 103 Orner, Poirier, Cheung, Blumberg 8, 12, 16 Overall Outcome 1–18 Appeal 2020-003578 Application 15/040,883 9 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 10, 14, 18 112(a) Written Description 10, 14, 18 10, 14, 18 112(b) Indefiniteness 10, 14, 18 1, 3, 5, 7, 9– 11, 13–15, 17, 18 103 Orner, Poirier, Cheung 1, 3, 5, 7, 9–11, 13– 15, 17, 18 2, 4, 6 103 Orner, Poirier, Cheung, Silverstein 2, 4, 6 8, 12, 16 103 Orner, Poirier, Cheung, Blumberg 8, 12, 16 Overall Outcome 1–18 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