Ex Parte Agarwal et al

Patent Trial and Appeal Board

Nov 3, 2016

13893591 (P.T.A.B. Nov. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/893,591 05/14/2013 Shubham Agarwal
52021 7590 11/07/2016
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IN920110244US2_8150-0385 1146
EXAMINER
GIDDINS, NELSONS
ART UNIT PAPER NUMBER
2437
NOTIFICATION DATE DELIVERY MODE
11/07/2016 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHUBHAM AGARWAL, MANU KUCHHAL and
SHAILENDRA K. SASON
Appeal2015-000844
Application 13/893,591
Technology Center 2400
Before CAROLYN D. THOMAS, JEFFREYS. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellants request rehearing of the Patent Trial and Appeal Board's
("Board") Decision mailed August 9, 2016 ("Decision") in which we
affirmed the rejections of claims 17, 25, 32, 36, and 38 under§ 103 as being
unpatentable over various combinations of Phillips et al. (US 2012/0066610
Appeal2015-000844
Application 13/893,591
Al, ivfar. 15, 2012), ivforris (US 2011/0252356 Al, Oct. 13, 2011), and
Maciocci (US 2009/0287646 Al, Nov. 19, 2009) (see Final Act. 18, 28). 1
ANALYSIS
In the Request for Rehearing ("Request"), Appellants allege that the
Board overlooked arguments "presented by Appellants in the Reply Brief
regarding the distinction between the term 'native application' and the term
'web application"' (Req. 1-2, 6).
Specifically, Appellants argue that arguments in the Reply Brief
regarding native application and web application terminology were "in
response to the new arguments for claim 36 and claim 32 originally raised in
the Examiner's Answer" (Req. 6). We disagree.
As an initial matter, we find that Appellants merely make a
conclusory statement regarding the Examiner raising additional issues in the
Answer (see Reply Br. 1 ), because Appellants fail to direct our attention to
any additional findings made by the Examiner regarding a "native
application." Instead, the Examiner continues to rely on Maciocci, not
Phillips, in the Final Action to teach the claimed native application (see
Final Act. 24, 29, 30---31 ). Specifically, the Examiner cites to Figures 1, 2,
and 3, and Paragraphs 31, 58, 67, and 68, of Maciocci in the Final Rejection
(see id.) and to Paragraphs 32 and 55 of Maciocci in the Examiner's Answer
1 In the record before us, it is unclear whether the Examiner maintains the
rejection of claims 25, 32, and 38 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter, as the Examiner has neither withdrawn nor
repeated the§ 101 rejection as currently applicable (see Ans. 3). In the
event the Examiner has maintained the§ 101 rejection of claims 25, 32, and
38, we summarily affirm the rejection given the lack of rebuttal from
Appellants.
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Appeal2015-000844
Application 13/893,591
(see Ans. 14). Appellants, in the Reply Brief, cite Appellants' Specification
to define "native application" and "web application," and contend Phillips'
web applications cannot teach both the claimed "web application" and the
claimed "native application" (Reply Br. 4--5). The Examiner does not use
Phillips to teach or suggest the claimed "native application." Thus, the
problem with this argument, as highlighted in our Decision, is that the
argument pertaining to the Phillips reference, rather than the cited
paragraphs in the Maciocci reference, is not necessitated by the Examiner's
response and is instead a belated argument introduced for the first time in the
Reply Brief (see Decision 8). See Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (informative); see also 37 C.F.R. § 41.41(b)(2) ("Any
argument raised in the reply brief which was not raised in the appeal brief,
or is not responsive to an argument raised in the Examiner's answer,
including any designated new ground of rejection, will not be considered by
the Board for purposes of the present appeal, unless good cause is shown"
(emphasis added)). In other words, Appellants' arguments regarding the
claimed native application are not responsive to, and thereby are not
necessitated by, the Examiner's findings in the Examiner's Answer.
Furthermore, we note that the Examiner's additional citations to the
Maciocci reference in the Answer do not constitute new grounds because the
Examiner cites to Figures 1, 2, and 3 in the Final Rejection (see Final Act.
24, 29, 30-31) and the paragraphs additionally cited by the Examiner in the
Examiner's Answer, Paragraphs 32 and 55, are associated with previously
cited Figures 1 and 3, respectively (see Ans. 14; see also Maciocci i-fi-129-32,
49-55). In other words, the Examiner's additional citations to Paragraphs 32
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Appeal2015-000844
Application 13/893,591
and 55 merely elaborate upon what is taught in the previously cited Figures
1 and 3 of Maciocci.
Therefore, for at least the aforementioned reasons, we find unavailing
Appellants' contention that the new arguments were necessitated by the
Examiner's Answer.
DECISION
Accordingly, we have granted Appellants' Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REHEARING DENIED
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