95001284 (P.T.A.B. Apr. 30, 2013)

Ex Parte 7009655 et al

Patent Trial and Appeal BoardApr 30, 2013

95001284 (P.T.A.B. Apr. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,284 12/18/2009 7009655 169AA-000400US 1850 83275 7590 04/30/2013 AMPACC Law Group, PLLC 6100 219th Street SW, Suite 580 Mountlake Terrace, WA 98043 EXAMINER ESCALANTE, OVIDIO ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ APPLE, INC. Requester and Respondent v. Patent of MEDIOSTREAM, INC. Patent Owner and Appellant ____________________ Appeal 2012-006989 Reexamination Control 95/001,284 Patent US 7,009,655 B2 Technology Center 3900 ____________ Before HOWARD B. BLANKENSHIP, STEPHEN C. SIU, and JOSIAH C. COCKS, Administrative Patent Judges. BLANKENSHIP, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2012-006989 Reexamination Control 95/001,284 Patent US 7,009,655 B2 2 INTRODUCTION Third Party Requester has filed (Dec. 10, 2012) a Request for Rehearing (37 C.F.R. § 41.79(a)(1)) that contends we erred in the Decision on Appeal mailed November 9, 2012, in which we affirmed the Examiner’s decision adverse to the patentability of claims 1-9 and 12-18 but reversed the decision with respect to claims 10 and 11. Patent Owner has filed (Dec. 10, 2012) Comments in Opposition to Requester’s request for rehearing (37 C.F.R. § 41.79(c)).1 DISCUSSION 37 C.F.R. § 41.79(b) provides (emphasis added): (1) The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision. Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing except as permitted by paragraphs (b)(2) and (b)(3) of this section. (2) Upon a showing of good cause, appellant and/or respondent may present a new argument based upon a recent relevant decision of either the Board or a Federal Court. (3) New arguments responding to a new ground of rejection made pursuant to § 41.77 (b) are permitted. Requester submits that we should have sustained the § 102 rejection of claims 10 and 11 over the Cleaner 5 User Manual (“Cleaner 5”) in view 1 This appeal is related to Appeal 2012-006988 (inter partes reexamination 95/001,283). Appeal 2012-006989 Reexamination Control 95/001,284 Patent US 7,009,655 B2 3 of an alleged “inherent” anticipation, or should have entered a new ground of rejection under § 103(a). As evidence for the alleged “inherent” anticipation of claims 10 and 11 over Cleaner 5 Manual, Requester refers to “VCD Specification Version 2.0 (1994), submitted on March 9, 2011 as document N263 in Patent Owner's IDS.” Req. R’hrg 3. Requester does not point out where it relied on the “VCD Specification” document in the briefs. Nor does Requester point to where it proposed a rejection of claims 10 and 11 for obviousness under 35 U.S.C. § 103(a). Requester thus has not identified anything that we may have misapprehended or overlooked in rendering our decision. DECISION We have granted Requester’s request for rehearing to the extent that we have reconsidered our decision affirming the Examiner’s decision adverse to the patentability with respect to claims 1-9 and 12-18 but reversing with respect to claims 10 and 11, but we decline to modify our decision in any way. Requests for extensions of time in this proceeding are governed by 37 C.F.R. § 1.304(a). DENIED Appeal 2012-006989 Reexamination Control 95/001,284 Patent US 7,009,655 B2 4 Patent Owner: Steve Y. Cho AMPACC LAW GROUP 6100 219th Street SW, Suite 580 Mountlake Terrace, WA 98043 Tel: 425-348-3500 Third Party Requester: Tracy Druce James P. Murphy Brian McKnight NOVAK DRUCE + QUIGG, LLP 1000 Louisiana Street Wells Fargo Plaza, 53rd Floor Houston, Texas 77002 Tel: 713-571-3400