Elias Sardonis et al.Download PDFPatent Trials and Appeals BoardApr 13, 202013045257 - (R) (P.T.A.B. Apr. 13, 2020) Copy Citation 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 Copy with citationCopy as parenthetical citation