Ex Parte Profitt-Brown et al

Patent Trials and Appeals Board

Jun 21, 2019

12985492 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/985,492 01/06/2011
28395 7590 06/25/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Elizabeth Profitt-Brown
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.
83178519 4444
EXAMINER
DO,TRUCM
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
06/25/2019 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@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIZABETH PROFITT-BROWN, KELLY LEE ZECHEL,
JOSEPH PAUL RORK, BRIAN PETERSEN, and
EDWARD ANDREW PLEET
Appeal 2018-007 491
Application 12/985,492
Technology Center 3600
Before BRETT C. MARTIN, LYNNE H. BROWNE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Elizabeth Profitt-Brown et al. (hereinafter "Appellants") filed a
request for rehearing under 37 C.F.R. § 41.52 (hereinafter "Request"), dated
June 3, 2019, of our Decision on Appeal (hereinafter "Decision" or "Dec.")
mailed April 2, 2019. In the Decision, we affirmed the Examiner's rejection
of claims 9 and 10 under 35 U.S.C. § 101.
Appeal 2018-007 491
Application 12/985,492
DISCUSSION
A request for rehearing is limited to matters overlooked or
misapprehended by the Panel in rendering the original decision. See
37 C.F.R. § 41.52; see also Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI
2010) (precedential) ( quoting Manual of Patent Examining Procedure
("MPEP") § 1214.03). It may not rehash arguments originally made in the
Brief, neither is it an opportunity to merely express disagreement with a
decision. It may not raise new arguments or present new evidence except as
permitted by paragraphs (a)(2) through (a)(4). See 37 C.F.R. § 41.52. The
proper course for Appellants dissatisfied with a Board decision is to seek
judicial review, not to file a request for rehearing to reargue issues that have
already been decided. See 35 U.S.C. §§ 141, 145.
Appellants assert "that the lack of 'practical application' analysis
warrants rehearing to consider exactly this analysis, and for at least the
reasons below, and ... that the practical application analysis reveals the
patent eligibility of the claims." Request 2. According to Appellants, there
is "no mention of this analysis in the Board's decision. Instead, the Board
states that under the Revised Guidance, the Board should examine the
additional material to determine whether it is 'more than what is well-
understood, routine and conventional activity.' Concluding that the
additional material is not, the Board sustains the 101 rejection." Id. at 3-4.
Although, we agree with Appellants that under the Revised Guidance,
we are directed to determine if the claim as a whole integrates the judicial
exception into a practical application of that exception, we do not agree that
the Decision is devoid of such analysis. Rather, considering the claim as a
whole we state that "[t]he method of finding charging station locations is a
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Appeal 2018-007 491
Application 12/985,492
process that constitutes mental steps but for the recitation of generic
computer components. That is, other than reciting that the method is
'computer implemented' nothing in the claim precludes the step from
practically being performed in the mind." Dec. 4.
On page 5 of the Decision, we explained why two additional
limitations beyond the identified mental process "do not integrate the
claimed judicial exception into a practical application of that exception
because they do not impose any meaningful limits on practicing the abstract
idea." Dec. 5. Here, we considered the claim as a whole in determining
whether the additional limitations integrate the exception into a practical
application, and this analysis is consistent with the Revised Guidance quoted
at page 3 of Appellants' Request.
Appellants argue that "[t]he error here is clear in that the new prong
two analysis expressly requires that the consideration of 'routine and
conventional activity' is not the predicating factor, or even to be considered,
in the 'practical application' analysis." Request 4. Contrary to Appellants'
argument, however, the Decision only mentions well-understood, routine,
conventional activity in reevaluating the post- and extra-solution activity as
part of Step 2B of the Revised Guidance. See Dec. 5-6.
Accordingly, Appellants' arguments are not persuasive of error in our
decision affirming the rejection of claims 9 and 10 under 35 U.S.C. § 101.
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Appeal 2018-007 491
Application 12/985,492
DECISION AND ORDER
We grant the Request to the extent that we have considered the
arguments pertaining to matters allegedly overlooked or misapprehended,
but otherwise deny the Request.
DENIED
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