14971979 - (R) (P.T.A.B. Aug. 24, 2020)

All Phase Consulting, Inc.

Patent Trials and Appeals BoardAug 24, 2020

14971979 - (R) (P.T.A.B. Aug. 24, 2020)

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. 14/971,979 12/16/2015 Elvis Abreu APC001 5704 66068 7590 08/24/2020 RICHARD A. BAKER, JR. New England Intellectual Property, LLC 291 Main Street WEST NEWBURY, MA 01985 EXAMINER HUA, QUAN M ART UNIT PAPER NUMBER 2645 NOTIFICATION DATE DELIVERY MODE 08/24/2020 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): RICHARD_A_BAKER_JR@YAHOO.COM USPTO@dockettrak.com rbaker@newenglandip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ELVIS ABREU and OSVALDO RODAMEZ ABREU ____________ Appeal 2019-000860 Application 14/971,979 Technology Center 2600 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 filed a Request for Rehearing (“Request”) under 37 C.F.R. § 41.52(a)(1) for reconsideration of our Decision on Appeal, mailed June 23, 2020 (“Decision”). Our Decision affirmed the Examiner’s decision rejecting claims 1–6, 9–12, 14–17, 20–26, 28, and 31–43 as being obvious under 35 U.S.C. § 103, over the cited combinations of references. Our Decision also affirmed the Examiner’s decision rejecting claim 43 under 35 U.S.C. § 112(a) as lacking written description support. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is All Phase Consulting, Inc. See Appeal Br. 3. Appeal 2019-000860 Application 14/971,979 2 In the Request, Appellant does not substantively traverse the analysis set forth in our Decision. Instead, Appellant urges that our analysis of the Examiner’s obviousness rejections in our Decision qualifies as an undesignated new grounds of rejection. In particular, Appellant cites to Honeywell Int’l Inc. v. Mexichem Amanc Holding S.A. (865 F.3d 1348, 1354 (Fed. Cir. 2017)), and argues that the Board has violated the notice provisions of the Administrative Procedure Act (5 U.S.C. § 551 et seq.), because we have changed the thrust of the Examiner’s obviousness rejections in at least the following ways: (1) Regarding Rejection C of independent claims 1 and 20, Appellant argues that our claim construction in our Decision improperly construes the word “and” as an “or.” Request 3–5. (2) Regarding Rejection B of independent claim 14 and Rejection C of independent claim 40, Appellant argues that our claim construction in our Decision construed the claim term “action module” under 35 U.S.C. § 112(f) for the first time in the prosecution history. Request 5–6. (3) Appellant argues that our designation of the level of skill of a PHOSITA in our Decision creates a new ground of rejection because it affects the issues of combinability and hindsight. Request 6–8. We have reviewed Appellant’s arguments in the Request, our Decision, and have again reviewed the Examiner’s obviousness rejections, and the Examiner’s responses to Appellant’s arguments as set forth in the Answer. On this record, we are not persuaded that we misapprehended or overlooked any points in rendering our Decision. However, Appellant’s new argument that our Decision contains an undesignated new ground of rejection is expressly permitted under 37 C.F.R. Appeal 2019-000860 Application 14/971,979 3 § 41.52(a)(4). In support, Appellant advances three principal arguments, as follows: Request Argument (1) Under Appellant’s argument (1), and regarding Rejection C of independent claims 1 and 20, we disagree with Appellant that our claim construction in our Decision (12) improperly construes the word “and” as an “or.” See Request 3–5. As stated in our Decision at page 11: Claims 1 and 20 recite the same call management options, identified herein as limitations A and B: performing one or more executable actions on one or more of the incoming calls and the playing of the media on the user device by the uninterrupted media play and call management system based on the processed selection of the one of the one or more of the call management options, the call management options comprising: [A] accepting the incoming call while supporting the continued playing of the media on the user device; and [B] sending a message indicating an availability of the user device only for the text communication for the duration of the playing of the media. Claim 1 (emphasis and bracketed labeling added). As addressed in our Decision at page 12, we emphasize that the language of claim 1 merely requires: “performing one or more executable actions . . . based on the processed selection of the one of the one or more of the call management options” A and B (emphasis added). Independent claim 20 also recites: “performing one or more executable actions . . . based on the processed selection of the one of the one or more of the call management options A and B (emphasis added). Appeal 2019-000860 Application 14/971,979 4 Therefore, we restate and clarify that claims 1 and 20 merely require the cited combination of references to teach or suggest “performing one or more executable actions on one or more of the incoming calls . . . based on the processed selection of the one of the one or more of the call management options, the call management options comprising:” A and B, meaning that under the broadest reasonable interpretation (BRI),2 either call management option A, or call management option B must be selected, but not requiring the “processed selection” of both call management options A and B.3 (emphasis added). See Decision 12. Accordingly, we disagree that our claim construction regarding claims 1 and 20 constitutes a new ground of rejection, and we deny Appellant’s request under Argument (1) that it be treated as a new ground of rejection. Request Argument (2) Under Request Argument (2), and regarding Rejection B of independent claim 14 and Rejection C of independent claim 40, we agree with Appellant that our claim construction in our Decision construed the claim term “action module” under 35 U.S.C. § 112(f) for the first time in the prosecution history. Request 5–6. 2 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 3 When a claim covers several alternatives, the claim may be unpatentable if any of the alternatives within the scope of the claim are taught by the prior art. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001); see also Schumer v. Lab. Computer Sys., Inc., 308 F.3d 1304, 1311 (Fed. Cir. 2002) (citing Brown v. 3M, 265 F.3d at 1352). Appeal 2019-000860 Application 14/971,979 5 Although we do not agree as a general matter that routine de novo review of the Examiner’s claim construction by the Board constitutes a new ground of rejection, to the extent that our application of Williamson v. Citrix Online, LLC (792 F.3d 1339, 1349 (Fed. Cir. 2015)) and 35 U.S.C. § 112(f) in the first instance on appeal has, arguendo, significantly changed the thrust of the affected rejections, procedural due process requires notice and a fair opportunity to respond.4 Accordingly, we agree to modify our Decision to the extent that we designate our Decision a new ground of rejection under 37 C.F.R. § 41.50(b) for the affected claims, specifically including Rejection B of independent claim 14 (which recites an “action module”) and its associated dependent claims, including Rejection B of claims 15, 21–23 and 28, Rejection E of claims 16 and 24, Rejection G of claim 17, Rejection I of claim 25, and Rejection L of claim 26. Because Rejection C of independent claim 40 also recites an “action module” we likewise designate our Decision regarding Rejection C of independent claim 40 as a new ground of rejection under 37 C.F.R. § 41.50(b). 4 “[T]he ultimate criterion of whether a rejection is considered ‘new’ in a decision by the [B]oard is whether [applicants] have had fair opportunity to react to the thrust of the rejection.” In re Leithem, 661 F.3d 1316, 1319 (Fed. Circ. 2011) (alterations in original) quoting In re Kronig, 539 F.2d 1300, 1302–03 (CCPA 1976) (holding no new ground of rejection when the Board relied on the same statutory basis and the same reasoning advanced by the examiner). See also Honeywell Int’l Inc. v. Mexichem Amanc Holding S.A., 865 F.3d 1348, 1354 (Fed. Cir. 2017). Appeal 2019-000860 Application 14/971,979 6 Request Argument (3) Under Argument (3), Appellant urges that our new designation of the level of skill of a PHOSITA5 in our Decision creates a new ground of rejection because it affects the issues of combinability and hindsight. Request 6–8. As argued by Appellant: “In prosecution, the Examiner never defined the person of ordinary skill in the art. The first definition in the prosecution of the present application of the person of ordinary skill in the art occurs in the Decision on Appeal on page 24.” Id. at 7. Although the Declarant Alejandra Martinez Cuevas attests that a “Bachelor’s Degree in Computer Science” plus relevant experience qualifies the Declarant as “an expert in the field of media play and call management systems” (Declaration 1), we have not made any finding regarding the level of skill of an expert in the art. We have merely found that a bachelor’s degree in computer science plus relevant experience would be “representative of the level of ordinary skill in the art as applicable to this appeal.” Decision 24–25 (emphasis added). Therefore, we do not agree with Appellant that we have conflated the level of skill of an expert in the art with the level of ordinary skill in the art as applicable to this appeal. See Request 7, footnote 2. We have thus considered the educational level of active workers in the field. We do not agree with Appellant that our factual finding regarding the level of ordinary skill in the art as applicable to this appeal (Decision 24–25) constitutes a 5 PHOSITA means a “Person Having Ordinary Skill in the Art.” Appeal 2019-000860 Application 14/971,979 7 new ground of rejection. Therefore, we deny Appellant’s Request as articulated under Request argument (3). DECISION We have reconsidered our Decision, in light of Appellant’s arguments in the Request, and are not persuaded that we misapprehended or overlooked any points in rendering our Decision. We grant Appellant’s Request for Rehearing only to the extent that we have reconsidered our Decision and have modified it to be a new ground of rejection under 37 C.F.R. § 41.50(b), as applicable only to the affected claims under Appellant’s Request Argument (2), specifically including Rejection B of independent claim 14 (which recites an “action module”) and its associated dependent claims, including Rejection B of claims 15, 21–23 and 28, Rejection E of claims 16 and 24, Rejection G of claim 17, Rejection I of claim 25, and Rejection L of claim 26. Because independent claim 40 also recites an “action module” we likewise designate our Decision regarding Rejection C of independent claim 40 as a new ground of rejection under 37 C.F.R. § 41.50(b). Claim 40 has no dependent claims. Correction of Typographical Error — ERRATUM As noted in our Decision on page 32, footnote 6: “We note the Examiner omitted claims 41 and 42 from the heading of Rejection C on page 40 of the Final Action. However, the Examiner provided a detailed statement of rejection for claims 41 and 42 under the Rejection C heading on page 56 of the Final Action. We have made appropriate correction herein.” Appeal 2019-000860 Application 14/971,979 8 This correction was made for Rejection C on page 5 of our Decision, in which the list of “Claims Rejected” by the Examiner under Rejection C is correctly shown as: “1–4, 9, 20, 32, 40–42.” The list of “Claims Rejected” by the Examiner under Rejection C is also correctly shown as “1–4, 9, 20, 32, 40–42” in the DECISION SUMMARY table on page 33 of our Decision. However, the “Affirmed” column for Rejection C on page 33 of our Decision inadvertently omits claims 41 and 42. This omission of claims 41 and 42 is a typographical error. We therefore additionally modify our Decision to correct this typographical error in which the incomplete list of claims “1–3, 4, 9, 20, 32, 40” under the “Affirmed” column for Rejection C is modified on page 33 of our Decision to read: “1–4, 9, 20, 32, 40–42.” As modified, this corrects the DECISION SUMMARY table on page 33 to agree with our holding on page 32 of our Decision: “we sustain the Examiner’s obviousness Rejection C of claims 1–4, 9, 20, 32, and 40–42.” We make no other changes or modifications to our Decision. Appeal 2019-000860 Application 14/971,979 9 Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Thus, WITHIN TWO MONTHS FROM THE DATE OF THIS REHEARING DECISION, Appellant must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner;6 or (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). 6 Regarding option (1), “Reopen prosecution,” and particularly regarding the requirement to submit an amendment and/or new evidence, please note MPEP 1214.01(I): “If the appellant submits an argument without either an appropriate amendment or new evidence as to any of the claims rejected by the Board, it will be treated as a request for rehearing under 37 C.F.R. 41.50(b)(2).” If for any reason Appellant desires to reopen prosecution before the Examiner without submitting an amendment and/or new evidence, a Request for Continued Examination (RCE) that complies with 37 C.F.R. § 114 will remove the application from the jurisdiction of the Board under 37 C.F.R. § 41.35, and will reopen prosecution before the Examiner. Appeal 2019-000860 Application 14/971,979 10 MODIFIED DECISION SUMMARY Outcome of Decision on Rehearing: Rej Claims Rejected 35 U.S.C. § Reference(s)/ Basis Denied Granted New Grounds B 14, 15, 21–23, 28 103 Cannon, Eide, Ort, Kim ’278, Luehrig 14, 15, 21–23, 28 14, 15, 21–23, 28 C 1–4, 9, 20, 32, 40–42 103 Cannon, Ort, Kim ’278, Luehrig 1–4, 9, 20, 32, 40–42 40 E 16, 24 103 Cannon, Eide, Ort, Kim ’278, Luehrig, Kim ’401 16, 24 16, 24 G 17 103 Cannon, Eide, Ort, Kim ’278, Luehrig, Kim ’401, Carion 17 17 I 25 103 Cannon, Eide, Ort, Kim ’278, Luehrig, Sommer 25 25 L 26 103 Cannon, Eide Ort, Kim ’278, Luehrig, Dorcey 26 26 Overall Outcome 1–4, 9, 14–17, 20–26, 28, 32, 40–42 14–17, 21–26, 28, 40 Appeal 2019-000860 Application 14/971,979 11 Final Outcome of Appeal after Rehearing: Rej Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Rev New Ground A 43 112(a) Written Description 43 B 14, 15, 21–23, 28 103 Cannon, Eide, Ort, Kim ’278, Luehrig 14, 15, 21–23, 28 14, 15, 21–23, 28 C 1–4, 9, 20, 32, 40, 41, 42 103 Cannon, Ort, Kim ’278, Luehrig 1–4, 9, 20, 32, 40, 41, 42 40 D 5, 33, 36 103 Cannon, Ort, Kim ’278, Luehrig, Kim ’401 5, 33, 36 E 16, 24 103 Cannon, Eide, Ort, Kim ’278, Luehrig, Kim ’401 16, 24 16, 24 F 6, 31 103 Cannon, Ort, Kim ’278, Luehrig, Kim ’401, Carion 6, 31 G 17 103 Cannon, Eide, Ort, Kim ’278, Luehrig, Kim ’401, Carion 17 17 H 11, 34 103 Cannon, Ort, Kim ’278, Luehrig, Sommer 11, 34 I 25 103 Cannon, Eide, Ort, Kim ’278, Luehrig, Sommer 25 25 J 10 103 Cannon, Ort, Kim ’278, Luehrig, Hannum 10 K 12, 35 103 Cannon, Ort, Kim ’278, Luehrig, Dorcey 12, 35 L 26 103 Cannon, Eide Ort, Kim ’278, Luehrig, Dorcey 26 26 M 37, 38 103 Cannon, Ort, Kim ’278, Luehrig, Incoming Mail 37, 38 N 39 103 Cannon, Ort, Kim ’278, Luehrig, Yeh 39 O 43 103 Cannon, Ort, Kim ’278, Luehrig, Vendrow 43 Appeal 2019-000860 Application 14/971,979 12 Rej Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Rev New Ground Overall Outcome 1–6, 9–12, 14–17, 20–26, 28, 31–43 14–17, 21–26, 28, 40 GRANTED IN PART; 37 C.F.R. § 41.50(b)