Elias Sardonis et al.

Patent Trials and Appeals Board

Apr 13, 2020

13045257 - (R) (P.T.A.B. Apr. 13, 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.
13/045,257 03/10/2011 Elias Sardonis 0141.0015US2 2561
107992 7590 04/13/2020
HoustonHogle LLP
1666 Massachusetts Avenue
Suite 12
Lexington, MA 02420
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
docketing@houstonllp.com
grant.houston@houstonllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ELIAS SARDONIS, MELANIE STRODTMAN,
and ROBERT STOBER
____________

Appeal 2017-010614
Application 13/045,257
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req.”), pursuant to 37
C.F.R. § 41.52, on November 12, 2019, seeking reconsideration of our
Decision on Appeal mailed September 11, 2019 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 1–4, 7–14, 17–21, 27–29, and

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Jenzabar, Inc. Our
decision references Appellant’s Appeal Brief (“Appeal Br.,” filed March 6,
2017) and Reply Brief (“Reply Br.,” filed August 7, 2017), and the
Examiner’s Answer (“Ans.,” mailed June 5, 2017) and Final Office Action
(“Final Act.,” mailed June 30, 2016).
Appeal 2017-010614
Application 13/045,257
2
31–33 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter
without significantly more. We have jurisdiction over the Request under
35 U.S.C. § 6(b).2
DISCUSSION
Appellant alleges in the Request that “[b]y collectively analyzing
independent claims 1, 11, 21, 27 and 33 and their respective dependent
claims” (Req. 2), “the Board failed to appreciate the uniqueness of
individual claims in regard to patentable subject matter.” Id. Consequently,
Appellant asserts that the Board “erred in collectively using claim 1 as an
exemplary claim for all the other claims.” Id. We cannot agree.
As an initial matter, Appellant’s assertion that the Board erred by
“[b]y collectively analyzing independent claims 1, 11, 21, 27 and 33 and
their respective dependent claims” (Req. 2) is inconsistent with the present
record. In our Decision, we determined that “[i]ndependent claims 11, 21,
27, and 33 contain limitations substantially similar to those of independent
claim 1” (Decision 11), and “sustain[ed] the Examiner’s § 101 rejection of
these independent claims and the claims depending therefrom” for the same
reasons. Id.
We find no indication of record, nor does Appellant direct us to any
indication, that Appellant previously argued independent claims 1, 11, 21,
27, and 33 individually. See, e.g., Appeal Br. 8 (“Present claim 1, and in

2 Although we reversed the Examiner’s rejection of claim 21 under
35 U.S.C. § 103(a), we also affirmed the Examiner’s rejection of claims 1–4,
7–14, 17–20, 27–29, and 31–33 under 35 U.S.C. § 103(a). Appellant seeks
reconsideration only of the affirmed rejection of claim 21 under § 101. See
Req. 1 (“Rehearing is requested with respect to its affirmance of the
rejection of claim 21 under 35 U.S.C. § 101.”).
Appeal 2017-010614
Application 13/045,257
3
fact all of the pending claims, are directed to improvements in the
functioning of computers and specifically academic retention management
systems.”). Although Appellant asserts, in its Reply Brief, that “the Answer
appears to have failed to set forth a prima facie rejection of any of the other
claims in the application” (Reply Br. 2), other than merely reproducing
language from independent claims 21, 27, and 33(see, e.g., id. at 2–3),
Appellant offered no substantive argument with respect to any of claims
separate from the arguments with respect to indpendent claim 1. See
generally, Appeal Br. 6–10; Reply Br. 1–3.3 Thus, even accepting
Appellant’s argument that the Board erred in “[b]y collectively analyzing
independent claims 1, 11, 21, 27 and 33 and their respective dependent
claims” (Req. 2), any such error was harmless, because Appellant offered no
substantive argument with respect to any of claims 2–4, 7–14, 17–21, 27–29,
and 31–33 separate from the arguments with respect to independent claim 1.
In light of the above, we are not persuaded that we overlooked or
misapprehended any point of law or fact in rendering our Decision.
Therefore, we decline to modify our original Decision.
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of Appellant’s Request, but is denied in
all other respects.

3 In contrast, Appellant did, however, make substantive arguments in the
Appeal Brief with respect to the rejection of claim 21 under § 103. Appeal
Br. 12–14. But Appellant presented no such distinct argument with respect
to the rejection under § 101.
Appeal 2017-010614
Application 13/045,257
4
CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–4, 7–14,
17–21, 27–
29, 31–33
101 Eligibility 1–4, 7–14,
17–21,
27–29,
31–33

Final Outcome of Appeal After Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–14,
17–21, 27–
29, 31–33
101 Eligibility 1–4, 7–14,
17–21, 27–
29, 31–33

1–4, 7–14,
17–21, 27–
29, 31–33
103(a) Yaskin, Jenzabar 1–4, 7–14,
17–20, 27–
29, 31–33
21
Overall
Outcome
1–4, 7–14,
17–21, 27–
29, 31–33

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