Ex Parte StatchukDownload PDFPatent Trial and Appeal BoardFeb 23, 201511494975 (P.T.A.B. Feb. 23, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ___________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ___________________ Ex parte CRAIG STATCHUK ____________________ Appeal 2012-003425 Application 11/494,975 Technology Center 2100 ____________________ Before RICHARD E. SCHAFER, MAHSHID D. SAADAT, and JOHN F. HORVATH, Administrative Patent Judges. HORVATH, Administrative Patent Judge. DECISION ON REQUESTS FOR REHEARING Appeal 2012-003425 Application 11/494,975 2 STATEMENT OF THE CASE Appellant has filed, under 37 C.F.R. § 41.52(a)(1), two Requests for Rehearing of the Patent Trial and Appeal Board (“Board”) Decision on Appeal mailed September 22, 2014 (“Decision”). Appellant’s first request (“Req. Reh’g I”) asks us to reconsider the merits of the new grounds of rejection issued in the Decision. Appellant’s second request (“Req. Reh’g II”) asks us to reconsider our decision to designate the new grounds of rejection an affirmance of the Examiner’s rejection. For the reasons stated below, we are not persuaded the Decision is in error. Therefore, Appellant’s Requests are DENIED. ISSUES AND ANALYSIS I. Whether the Decision’s new ground of rejection takes the form of a Graham based obviousness analysis, and provides a reason for combining the Copperman 1 and Cazemier 2 references. Appellant contends the Decision’s new grounds of rejection for independent claims 14, 41, and 54 is not in the form of a Graham-based obviousness analysis, fails to explain how the Copperman and Cazemier references are combined, and fails to provide a reason for combining the references. Req. Reh’g I 2–4, 8–9, 21– 22, and 29–30. We are not persuaded by Appellant’s arguments. The Decision provided detailed findings on the teachings of both the Copperman and Cazemier references. Dec. 5–8. It also provided detailed findings explaining how the teachings of Copperman, when combined with the teachings of Cazemier, disclose all of the limitations of claim 14. Id. at 8–9. It therefore provided a Graham-based obviousness analysis. 1 U.S. Patent App.Pub. No.: US 2004/0024939 A1, published on Feb. 5, 2004. 2 U.S. Patent No.: US 6,609,123 B1, issued on Aug. 19, 2003. Appeal 2012-003425 Application 11/494,975 3 The Decision cited Cazemier for a single teaching—that information can be stored in a database and retrieved using a cubic metadata model that has at least one hierarchical dimension. Dec. 6–8. As explained in the Decision, the combination of Copperman’s teaching of reading information from a database with Cazemier’s teaching of a database having a cubic metadata model meets claim 14’s limitation of reading a target content instance comprising an authored hierarchy of topics generated during an authoring process for a user reporting application that includes a cube hierarchy. Id. at 6, 8. The Decision subsequently referred to the combination of Copperman and Cazemier because the remaining limitations of claim 14 recite steps involving this target content instance, i.e., the one obtained by combining the teachings of Copperman and Cazemier. For example, the remaining limitations recite creating a representation of the target content instance, and generating an index summary that includes the representation of the target content instance. Claims App’x. But the Decision relied on Copperman alone for teaching the remaining steps of the claim involving the target content instance, e.g., creating its markup language representation, Dec. 8–9, generating an index summary card that includes its representation, id. at 9, and exposing the index summary card to a search engine. Dec. 9. In short, the Decision explained how Copperman discloses all the limitations of claim 14 except the nature of the customer database record that is read, summarized, marked-up, and added to Copperman’s knowledge container. Dec. 8–9. The Decision cited Cazemier simply to show that it was well known to persons of ordinary skill in the art at the time of Appellants invention that database records could be stored using a metadata model that is an authored hierarchy of topics generated during an authoring process for a user reporting application, the authored hierarchy of topics including a cube hierarchy. Id. at 8. Thus, the Appeal 2012-003425 Application 11/494,975 4 combination of Copperman and Cazemier reflects no more than the simple substitution of one known element (Cazemier’s specific database) with another (Copperman’s generic database) to achieve a predictable result. The Supreme Court has found such combinations to be obvious. See, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”) (citation omitted). As our reviewing Court has held, “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citation omitted). For the reasons explained above, we are not persuaded by Appellant’s arguments the Decision’s rejection of claims 14, 41, and 54 under 35 U.S.C. § 103(a) as unpatentable over Copperman and Cazemier was erroneous. We therefore deny Appellant’s request to modify the Decision for this reason. II. Whether the Decision’s application of the new grounds of rejection to the claims as grouped in the Appeal Brief has denied Appellant the opportunity to continue prosecution of those claims. Appellant contends the Decision cannot reject the claims grouped together with claims 14, 41, and 54 in the Appeal Brief under the new grounds of rejection applied to claims 14, 41, and 54. Req. Reh’g I 4–6. Appellant argues doing so is unfair, closes off prosecution, and “denies Appellant the right to argue against a Appeal 2012-003425 Application 11/494,975 5 non-final rejection of Appellant’s claims.” Id. at 5, see also Req. Reh’g II 7–8. We are not persuaded by Appellant’s arguments. The Decision affirmed the Examiner’s rejection of all claims on the new grounds presented, and advised Appellant of his right to either request rehearing upon the same record or reopen prosecution to further develop the record through the submission of amendments or new evidence. Dec. 10–11 (citing 37 C.F.R. 41.50(b)). Appellant chose to request rehearing. The Rules permit Appellant’s request to include new arguments in response to the new grounds of rejection. 37 C.F.R. § 41.52(a)(3). The Rules do not restrict the manner in which Appellant may present those arguments; nor do they prohibit Appellant from regrouping the claims to facilitate presentation of the new arguments. Indeed, Appellant has regrouped the claims in the first Request for Rehearing so that each and every claim stands alone in its own group. Req. Reh’g I 8–30. Consequently, we are not persuaded by Appellant’s argument that the Decision has denied Appellant the right to argue against the new grounds of rejection as applied to the claims grouped together with claims 14, 41, and 54 in the Appeal Brief. We therefore deny Appellant’s request to modify the Decision for this reason. III. Whether the Decision’s rejection of the dependent claims failed to account for the limitations recited in the dependent claims. As noted supra, Appellant has separately grouped, and separately argues for the patentability of each of dependent claims 16, 17, 19–22, 24, 25, 27–29, 34–39, and 42–52. Req. Reh’g I 9–29. For each dependent claim, Appellant argues the new grounds of rejection applied to the claim is not in the form of a Graham-based obviousness analysis, fails to explain how the Copperman and Cazemier references were combined, and Appeal 2012-003425 Application 11/494,975 6 fails to provide a reason for combining the references. Req. Reh’g I 9–29. These are the same arguments Appellant made with respect to independent claims 14, 41, and 54, supra, and we explained there why we are not persuaded by them. Next, for each dependent claim, Appellant argues the new grounds of rejection “does not include and does not account for” the particular limitation recited in the dependent claim. Req. Reh’g I 9–29. We are not persuaded by Appellant’s argument. The Decision affirmed on new grounds the Examiner’s rejections of claims 16, 17, 19–22, 24, 25, 27–29, 34–39, and 42–52. Dec. 9–10. Thus, the Decision approved the findings on pages 6–10 of the Examiner’s Answer for rejecting these claims. Appellant has now had two opportunities to identify any errors in the Examiner’s rejections of claims 16, 17, 19–22, 24, 25, 27–29, 34–39, and 42–52. Initially, Appellant could have grouped the claims differently in the Appeal Brief, and indicated in the Appeal Brief how the Examiner erred in rejecting the claims in each group. Currently, because the Decision designated the affirmance a new grounds of rejection, Appellant has been able to regroup claims 16, 17, 19–22, 24, 25, 27–29, 34–39, and 42–52, and has been given the opportunity to raise new arguments contesting the Decision’s affirmance (i.e., approval) of the Examiner’s final rejection of these claims. Appellant has not done so. We therefore deny Appellants request to modify the Decision for this reason. IV. Whether the Decision’s rejection on new grounds can be designated an affirmance of the Examiner’s grounds of rejection. Appellant contends the Decision’s rejection of independent claims 14, 41, and 54 under new grounds cannot be deemed an affirmance of the Examiner’s grounds of rejection. Req. Reh’g II 2–7. In particular, Appellant argues the Board Appeal 2012-003425 Application 11/494,975 7 is required to either affirm or reverse the Examiner on the grounds specified by the Examiner, Req. Reh’g II 2–4 (citing 37 C.F.R. § 41.50(a)(1)), and cannot designate a new grounds of rejection an affirmance even though the new grounds rely on the same statutory basis and references relied on by the Examiner. Req. Reh’g II 5–7 (citing In re Leithem, 661 F.3d. 1316, (Fed. Cir. 2011)). We are not persuaded by Appellant’s arguments. First, Rule 41.50(a)(1) does not require the Board to either affirm or reverse the Examiner on the grounds specified by the Examiner. Rather, the Rule states “[t]he Board . . . may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner.” 37 C.F.R. § 41.50(a)(1) (emphasis added). The Rule thus grants the Board the discretion to affirm or reverse the Examiner on the grounds specified by the Examiner. It does not, however, require the Board to affirm or reverse the Examiner on the grounds specified by the Examiner. Nor does it prohibit the Board from affirming the Examiner on new grounds found by the Board. Indeed, it is not uncommon for the Board to affirm the Examiner on new grounds when the new grounds rely on the same art and statutory basis relied on by the Examiner, but apply a different rationale or rely on different portions of the art to support the rejection. See, e.g., Ex Parte Campbell, 2014 WL 4060122 (PTAB 2014), Ex Parte Grossman, 2012 WL 6108084 (PTAB 2012), Ex Parte Michelsen, 2012 WL 338375 (PTAB 2012), Ex Parte Kovacs, 2011 WL 6294411 (BPAI 2011), Ex Parte Ledger, 2011 WL 6012366 (BPAI 2011), Ex Parte Richeson, 2009 WL 2700158 (BPAI 2009). Second, our reviewing Court’s decision in Leithem does not prohibit the Board from designating a new ground of rejection an affirmance of the Examiner’s rejection. Rather, it requires the Board to designate a rejection a new ground of rejection when it relies on facts and rationales not relied on by the Examiner, even Appeal 2012-003425 Application 11/494,975 8 if the rejection uses the same references and statutory basis as the Examiner’s rejection. In re Leithem, 661 F. 3d 1316, 1319 (Fed. Cir. 2011). And, although it is true that the Board in Leithem reversed the Examiner’s rejection on remand from the Federal Circuit, it is also true that the Board has affirmed Examiners’ rejections and designated the affirmances new grounds of rejection in other cases as noted supra. For the reasons discussed above, we are not persuaded by Appellant’s argument that the Board is required to reverse the Examiner when the Board rejects claims using the same references and statutory basis as the Examiner but new facts or rationales, and designates the rejection a new grounds of rejection. We therefore deny Appellant’s request to modify the Decision for this reason. V. Whether the Decision denies Appellant substantive rights by designating the new ground of rejection an affirmance of the Examiner’s decision. Appellant argues that by designating the new ground of rejection an affirmance, the Decision has “unjustly denied Appellant of the substantive rights associated with a reversal of the Examiner’s decision. For example, patent term adjustment is awarded for Board decisions that reverse the Examiner, and not for Board decisions that affirm the Examiner.” Reg. Reh’g II 9 (citing 37 C.F.R. §§ 1.701(a)(3) and 1.701(c)(3)). We are not persuaded by Appellant’s argument. First, given the 2006 filing date and current pendency of Appellant’s application, the rules governing any potential patent term adjustment due to delay caused by appellate review are Rules 1.702(e) and 1.703(e). We find these Rules require Appellant to have received a favorable decision on Appeal to be eligible for patent term adjustment. For example, Rule 1.703(e) indicates the period of patent Appeal 2012-003425 Application 11/494,975 9 term adjustment under Rule 1.702(e) (Delays caused by successful appellate review) begins on the date jurisdiction passes to the Board and ends on the date of a final decision in favor of the applicant by the Board. 37 C.F.R. § 1.703(e). As noted supra, we do not find error in the Decision’s new grounds of rejection of Appellant’s claims under 35 U.S.C. § 103(a) in view of Copperman and Cazemier. Consequently, we do not find the Decision to be a final decision in favor of Appellant as required by Rule 1.703(e), and are not persuaded Appellant is entitled to any potential patent term adjustment regardless of whether the Decision is designated an affirmance on new grounds or a reversal and rejection on new grounds. Second, because none of the claims in Appellant’s application are currently allowed, Appellant is not currently entitled to any patent term adjustment. Should one or more of Appellant’s claims be allowed at a future date, the decision to grant Appellant any patent term adjustment will be made by the Director at that time. See 35 U.S.C. § 154(b)(3)(B)(i). Should Appellant disagree with the Director’s decision, Appellant will be provided an opportunity to request the Director’s reconsideration of the decision, see 35 U.S.C. § 154(b)(3)(B)(ii), as well as an opportunity to have the Director’s decision reviewed by the United States District Court for the Eastern District of Virginia. See 35 U.S.C. § 154(b)(4)(A). For these reasons, we are not persuaded by Appellant’s argument that the Decision has denied Appellant of any substantive right. We therefore deny Appellant’s request to modify the Decision for this reason. DECISION We have considered Appellant’s arguments that the Decision misapprehended or overlooked the points raised in Appellants’ first and second Appeal 2012-003425 Application 11/494,975 10 Requests for Rehearing, and have found them unpersuasive. We therefore deny Appellants’ first and second Requests. This Decision on Appellant’s first and second Requests for Rehearing incorporates our September 22, 2014 Decision on Appeal, and is final for the purposes of judicial review. 37 C.F.R. § 41.52(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. REHEARING DENIED llw Copy with citationCopy as parenthetical citation