12097415 (P.T.A.B. Mar. 29, 2017)

Ex Parte Di Cocco et al

Patent Trial and Appeal BoardMar 29, 2017

12097415 (P.T.A.B. Mar. 29, 2017)

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. 12/097,415 03/08/2010 Antonio Di Cocco FR920050055US1 (427) 1502 46320 7590 CRGO LAW STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, EL 33434 EXAMINER BYCER, ERIC J ART UNIT PAPER NUMBER 2173 NOTIFICATION DATE DELIVERY MODE 03/31/2017 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@crgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANTONIO DI COCCO and FILIPPO CALA Appeal 2014-000782 Application 12/097,415 Technology Center 2100 Before DANIEL J. GALLIGAN, CHRISTA P. ZADO, and JOSEPH P. LENTIVECH, Administrative Patent Judges. ZADO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2014-000782 Application 12/097,415 Appellants request rehearing of the Patent Trial and Appeal Board’s (“Board”) Decision mailed January 3, 2017 (“Decision”), in which we affirmed the rejection of claim 11 under 35 U.S.C. § 101 and rejections of claims 1—11 and 13 under 35 U.S.C. § 103 as obvious over U.S. Pat. Pub. 2004/0163032 (“Guo”) and U.S. Patent No. 6,744,422 B1 (“Schillings”). A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. §41.52(a)(1). Appellants specifically seek rehearing with respect to our finding that the Examiner did not err in finding the combination of Guo and Schilling teaches or suggests “discarding all previously received symbols for the purposes of future comparisons if no further data symbol is received prior to expiry of said dynamically determined period,” as recited in claim 1. Req. Reh’g 2—3. In particular, the Examiner found that Guo teaches “discarding all previously received symbols for the purposes of future comparisons if no further data symbol is received prior to expiry” of a “predetermined time period.” Ans. 31—34. In the Answer, the Examiner acknowledged Guo does not teach that the “predetermined time period” is dynamically determined, but found Schillings teaches this feature. Id. In the Request, Appellants take issue with our finding that the combination of Guo and Schillings teaches the “discarding” limitation, but rather than argue with respect to the “discarding” limitation, Appellants argue for the first time that Schillings fails to teach another claim limitation. In particular, Appellants assert that Schillings’ teachings regarding dynamically determining a variable interval of time between a user’s key strokes based on a user’s cadence alone does not account for the claim 2 Appeal 2014-000782 Application 12/097,415 language “wherein said dynamically determined period is calculated as a function of a time interval between previous data symbol entries.” Req. Reh’g. 4. Appellants do not cite to where this argument was made previously. See Req. Reh’g 3^4. Indeed, Appellants’ argument that Schillings falls short of teaching or suggesting this limitation is new. The Examiner addressed this claim limitation in the Final Rejection, finding Schillings teaches “computing or calculating the time delay interval between entries” by calculating the interval of time between entries and dynamically determining a variable time period as a function based on these calculations. Final Act. 9-10. Appellants had the opportunity, therefore, to raise arguments regarding the “wherein” limitation in the Appeal Brief and Reply Brief, but they did not. Appellants’ argument, therefore, is not proper to make in a rehearing request. Appellants also argue the Board failed to account for the claim language “for purposes of future comparisons” in the claim recitation “discarding all previously received symbols for purposes of future comparisons if no further data symbol is received prior to expiry of said dynamically determined period.” Req. Reh’g 5—6. Notably, Appellants argue the Board’s Decision does not mention the language “for purposes of future comparisons” in its Decision even though Appellants’ raised this issue at page 11 of the Appeal Brief and page 7 of the Reply Brief. Id. We did not misapprehend or overlook arguments made by Appellants in the Appeal Brief and Reply Brief. In the Appeal Brief, Appellants did not provide any argument beyond conclusory remarks that Guo fails to teach “discarding all previously received symbols for the purposes of future comparisons”: Further, Examiner relied on paragraphs 0019-0030 of Guo in rejecting the claim limitation “discarding all previously 3 Appeal 2014-000782 Application 12/097,415 received symbols for the purposes of future comparisons if no further data symbol is received prior to expiry of said dynamically determined period.” However, Examiner did not provide proper analysis as to how this complex limitation is taught in these paragraphs. Examiner’s only analysis “enter the selected word — user is done typing” only accounts for “no further data symbol is received”; however, it does not account for “discarding all previously received symbols for the purposes offuture comparisons”, nor does it account for “prior to expiry of said dynamically determined period. Appeal Br. 11. In the Answer, the Examiner specifically addressed the “for purposes of future comparisons” language. Ans. 12,26—31. The Examiner relied on admitted prior art indicating a skilled artisan “would recognize that at the conclusion of a word, all previously entered symbols would be discarded prior to the beginning of a new auto-completion loop” (Ans. 26— 27) and on Guo’s teachings regarding determining a second set of character inputs, which are not influenced, impacted, or concerned with the first set of character inputs (Ans. 12 (citing Guo Tflf 25—27); id. at 26—31). Appellants did not address these findings in the Reply Brief, but instead provided only a conclusory assertion that the combined references did not teach the entirety of the “discarding all previously received symbols” claim limitation because the cited art “does not teach the concept of using dynamically determined period in auto-completion.” Reply Br. 7. In particular, Appellants’ assertion in the Reply Brief did not specifically call out the “for future purposes” language, but instead referred to the concept of a dynamically determined period. Id. In our Decision, therefore, we found Appellants had not explained sufficiently why the Examiner had erred in determining the combination of Guo and Schillings taught the “discarding” limitation. 4 Appeal 2014-000782 Application 12/097,415 Decision 4—5. Appellants’ contentions and arguments in the Request, therefore, do not persuade us that we misapprehended or overlooked any matter. For the foregoing reasons, we are not persuaded to modify our Decision. 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 5