DUKE MANUFACTURING CO.

Patent Trials and Appeals Board

Mar 16, 2022

2020005464 (P.T.A.B. Mar. 16, 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. 15/055,346 02/26/2016 Canyon DeVille DKE 9898.US 1049 321 7590 03/16/2022 STINSON LLP 7700 FORSYTH BOULEVARD, SUITE 1100 ST LOUIS, MO 63105 EXAMINER YOON, ERIC ART UNIT PAPER NUMBER 2143 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): stl.uspatents@stinson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CANYON DEVILLE, JOSHUA LEE LOY, ORD LIEF DELANEY, NORMAN J. BERNARD, and ANTHONY HORTON Appeal 2020-005464 Application 15/055,346 Technology Center 2100 Before MARC S. HOFF, JOHN A. EVANS, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52 for reconsideration of our Decision on Appeal, dated December 22, 2021 (“Decision”). In that Decision, we affirmed the Examiner’s final rejection of claims 25-36, 38-44, and 54 under 35 U.S.C. § 103(a). We reversed the Examiner’s § 103(a) rejections of claims 45-53. For the reasons set forth below, the request for rehearing is DENIED. Appeal 2020-005464 Application 15/055,346 2 ANALYSIS We have considered the arguments presented by Appellant in the Request for Rehearing (“Req. Reh’g”), but we are not persuaded that the Board misapprehended or overlooked any points in issuing the Decision. We provide additional explanations here, but decline to change our decision in view of Appellant’s arguments. A request for rehearing is properly limited to previously addressed matters that were misapprehended or overlooked. See 37 C.F.R. § 41.52(a). It is not an opportunity to further develop the record through the introduction of new evidence and/or arguments. Nor is it an opportunity to disagree with the Board’s assessment of the arguments or to bolster an insufficient argument already made. 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 may present a new argument based on a recent relevant decision of either the Board or a federal court. New arguments responding to a new ground of rejection designated as such under § 41.50(b) and new arguments that the Board decision contains an undesignated new ground of rejection also are permitted. In the Request, Appellant argues that, in the Decision, 1. The Board misapprehended and/or overlooked Appellant’s arguments regarding motivation to combine (Appeal Br. 10-12; Rely Br. 5-6) by conflating motivation to combine with predictable results. 2. The Board misapprehended the printed matter doctrine when the Board determined the “current status of operation Appeal 2020-005464 Application 15/055,346 3 information” limitation fails to have a functional relationship with its substrate. Req. Reh’g 1. The Board has not misapprehended or overlooked any points or arguments originally raised by Appellant with regard to the Examiner’s obviousness rejections. In the Decision, the Board carefully considered Appellant’s previous arguments. Below, we address each of Appellant’s arguments in the Request in turn. Motivation to Combine Appellant argues that “the Board misapprehended and/or overlooked Appellant’s arguments regarding motivation to combine and improperly conflated the ‘motivation to combine’ requirement with the ‘predictable results’ requirement.” Req. Reh’g 2. In KSR, the Supreme Court approved a flexible approach to the determination of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The Court held that a determination of obviousness may be supported with an “articulated reasoning with [a] rational underpinning to support the legal conclusion of obviousness.” Id. Appellant’s arguments overlook the Examiner’s explanations in the Answer that MPEP § 2143(I) “provides various proper rationales for combining prior art elements, including ‘(B) Simple substitution of one known element for another to obtain predictable results,’ ‘(D) Use of known technique to improve similar devices (methods or products) in the same way’ and ‘(E) Obvious to try- choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success.’” See Ans. 7. The Examiner concluded, and we agreed in the Decision, consistent with KSR, that the combination of Vaseloff and Clark involves the Appeal 2020-005464 Application 15/055,346 4 combination or substitution of known elements to obtain predictable results in light of Clark’s teaching that it is known to place operational information inside a button. Dec. 5; Ans. 7-8. In the Reply Brief, Appellant addressed the Examiner’s “simple substitution” rationale in part by arguing that “[t]he proposed modification of Vaseloff is not a ‘simple substitution of one known element for another,’” but Appellant did not address whether the combined elements were known in the art or whether the results achieved in the combination of Vaseloff and Clark would have been predictable. See Reply Br. 5. Nor did Appellant persuasively address other rationales identified by the Examiner, such as the use of a known technique to improve similar devices in the same way or the “obvious to try” rationale. See Reply Br. 5-6. Appellant’s reliance on Eli Lilly & Co. v. Teva Pharmaceuticals International GmbH, 8 F.4th 1331 (Fed. Cir. 2021), is misplaced. See Req. Reh’g 3. Appellant argues that “[t]he Federal Circuit has explained ‘motivation to combine’ and ‘predictable result’ are distinct and separate requirements of an obviousness analysis.” Id. The Federal Circuit in Eli Lilly, however, did not consider “predictable results,” but rather the separate issue of “a reasonable expectation of success.” Id. at 1339-340. Moreover, the Eli Lilly decision issued on August 16, 2021, more than a month before Appellant’s Reply Brief was filed, yet Appellant did not cite it. Appellant waived the arguments presented here by not raising them in the Appeal Brief or Reply Brief, and Appellant cannot raise them for the first time in a Request for Rehearing. See 37 C.F.R. §41.42 (a)(1). “The failure to raise all issues and arguments diligently, in a timely fashion, has Appeal 2020-005464 Application 15/055,346 5 consequences.” Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative decision). For these reasons, we are not persuaded that we misapprehended or overlooked any points or arguments with regard to the “motivation to combine” analysis in the Decision. Printed Matter Appellant argues that “[t]he Board misapprehended the printed matter doctrine when the Board determined the ‘current status of operation information’ limitation fails to have a functional relationship with its substrate.” Req. Reh’g. 1, 8-9. “Appellant does not dispute the Board’s determination that the ‘current status of operation information’ limitation is printed matter.” Req. Reh’g 6 (citing Dec. 8). On appeal, Appellant sought to distinguish its invention from the prior art based on the displayed “current status of operation information.” See Appeal Br. 12-14. Appellant argued that the prior art does not teach or suggest “current status of operation information” because the content of the information displayed in Clark is not information about the current operational status of a device. See id. We concluded that the particular content of the displayed information in claim 25 is not specifically related to the substrate or explicitly used in the claim, such as by the food management system, to perform any specific function. Dec. 9 (emphasis added). In evaluating the existence of a functional relationship, we considered whether the printed matter (“current status of operation information”) merely informs people of the claimed information, or whether it instead interacts with the other elements of the claim to create a new functionality in the claimed system. Claim 25 recites “displaying on each holding location Appeal 2020-005464 Application 15/055,346 6 display current status of operation information representing a current status of operation of the respective holding location.” Appeal Br. 26 (Claims App.) (emphasis added). The portions of claim 25 emphasized by Appellant recite the limitation “current status of operation,” not the separate, disputed “current status of operation information” limitation. See Req. Reh’g 6. Whereas the food management controller executes operations based on the “current status of operation” in claim 25, we concluded that, within the context of the entire claim, the “current status of operation information” is merely displayed, is not functionally or structurally related to the user interface, and is not explicitly used in the claim to perform any specific function. See Dec. 9. Appellant’s argument that the “current status of operation information” is claimed as structurally related to the user interface because it is displayed “in the touch sensitive area of the holding location display defining the button” is not persuasive. See Req. Reh’g 7-8. Claim 25 recites that the “current position of operation information” appears in a certain location on the user interface, “in the touch sensitive area of the holding location display defining the button.” Claim 25, however, does not require that anything is ever done with the “current status of operation information.” Claim 25 merely recites that the “current status of operation information” is “representative of the current status of operation of the holding location.” As discussed above, the food management controller executes operations based on the recited “current status of operation,” not the disputed “current status of operation information” on which Appellant relied for the patentability of claim 25. The location or appearance of the information itself on the display does not affect the functionality of the user interface, it merely affects what Appeal 2020-005464 Application 15/055,346 7 is communicated to the user of the user interface. In other words, the claimed “current status of operation information” displayed on the button is nonfunctional descriptive material that cannot distinguish the claimed invention from the prior art in terms of patentability. Appellant further argues that the analysis of “printed matter” in the Decision constitutes a new ground of rejection. Req. Reh’g at 4. We disagree that a new ground of rejection is appropriate or necessary. Claim construction is a threshold inquiry for all of our reviews. See In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974) (“Before considering the rejections . . ., we must first [determine the scope of] the claims.”). “Printed matter” is a question of claim construction and not a ground of rejection per se. Moreover, Appellant had the opportunity to present arguments related to “printed matter” in its Request, and we addressed them here. It is important to note that the Decision addressed Appellant’s arguments that the Examiner erred in finding that the combination of Vaseloff and Clark teaches the “current status of operation information” limitation, as recited in claim 25, independent of-and before addressing- “printed matter.” See Dec. 6-7. We disagree with Appellant’s statement that “the Board relied on the printed matter doctrine to discount all of Appellant’s arguments based on the Examiner’s rejections in the Final Office Action and the Examiner’s Answer concerning the “current status of operation information” limitation. Req. Reh’g 5 (citing Dec. 7-9). Appellant cites only our discussion of “printed matter” and not our analysis of Appellant’s arguments, standing alone, on pages 6 and 7 of the Decision. Because we Appeal 2020-005464 Application 15/055,346 8 found Appellant’s arguments on appeal unpersuasive, our discussion of “printed matter” did not change the ultimate outcome of the appeal. For these reasons, we are not persuaded that we misapprehended or overlooked any points or arguments with regard to the “printed matter” analysis in the Decision. CONCLUSION We have considered Appellant’s arguments in the Request, but find none of them persuasive that our original Decision misapprehended or overlooked any points raised by Appellant. Accordingly, we decline to modify our prior decision with regard to Appellant’s arguments. DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. The Examiner’s § 103 rejection of claims 25-36, 38-44, and 54 remains AFFIRMED. SUMMARY Outcome of Decision on Rehearing Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Granted Denied 25-36, 38-44, 54 103(a) Vaseloff, Clark 25-36, 38-44, 54 Appeal 2020-005464 Application 15/055,346 9 Final Outcome of Appeal after Rehearing: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 25-36, 38- 44, 53, 54 103(a) Vaseloff, Clark 25-36, 38- 44, 54 53 45-50 103(a) Vaseloff 45-50 51, 52 103(a) Vaseloff, Celebisoy 51, 52 Overall Outcome 25-36, 38- 44, 54 45-53 DENIED