90009296 - (D) (P.T.A.B. Jun. 11, 2013)

Ex Parte 6631375 et al

Patent Trials and Appeals BoardJun 11, 2013

90009296 - (D) (P.T.A.B. Jun. 11, 2013)

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. 90/009,313 03/23/2009 6631375 1117-0010001 7283 37420 7590 06/12/2013 VISTA PRINT USA, INC. ATTN: PATENT COUNSEL 95 HAYDEN AVENUE LEXINGTON, MA 02421 EXAMINER WOOD, WILLIAM H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/12/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte VISTAPRINT TECHNOLOGIES LIMITED, Appellant ____________________ Appeal 2012-002897 Reexamination Controls 90/009,296 & 90/009,313 Patent 6,631,375 B2 Technology Center 3900 ____________________ Before STEPHEN C. SIU, JOSIAH C. COCKS and STANLEY M. WEINBERG, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In papers filed September 12, 2012, Appellant requests rehearing under 37 C.F.R. § 41.52 from the Opinion of the Board of Patent Appeals and Interferences1, dated July 12, 2012. In the Opinion, the Board affirmed the Examiner’s rejection of claims 1-6, 8, 9, 13-25, and 27-44 under 35 1 The Board of Patent Appeals and Interferences became the Patent Trial and Appeal Board on September 16, 2012 (collectively referenced as the “Board”). Appeal 2012-002897 Reexamination Controls 90/009,296 & 90/009,313 Patent 6,631,375 B2 2 U.S.C. § 103(a) as being unpatentable over the Corel Whitepaper and Furman; claim 7 under 35 U.S.C. § 103(a) as being unpatentable over the Corel Whitepaper, Furman, and Farros; and claim 26 under 35 U.S.C. § 103(a) as being unpatentable over the Corel Whitepaper, Furman, and Corel FAQ. A “request for rehearing must state with particularity the points believed to have been misapprehend or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79(b)(1). Appellant alleges that the Board erred by misapprehending or overlooking Appellant’s arguments that “there was no reason to combine Corel Whitepaper with Furman’s translation protocol” (Req. Reh’g 1). Appellant’s arguments pertaining to combinability of Corel Whitepaper and Furman were fully discussed in the prior Opinion. We continue to disagree with Appellant for at least the reasons already set forth in the Opinion (see e.g., Opinion 4-6). Appellant argues that it would not have been obvious to one of ordinary skill in the art to have combined Corel Whitepaper and Furman because “the rejections assume that because the Java-coded document described in the Corel Whitepaper ultimately will be printed, the Java-coded document must first be translated” (Req. Reh’g 2). We disagree with Appellant at least because none of the rejections as described in the Opinion rely on Appellant’s alleged assumptions. Indeed, no assumption was made in the Opinion pertaining to any specific type of document in Corel Whitepaper or whether such a document “must” be translated or not. Appeal 2012-002897 Reexamination Controls 90/009,296 & 90/009,313 Patent 6,631,375 B2 3 Appellant also argues that “[t]he rejections further assume that the Corel Whitepaper’s Java-coded document is a PDL document” (Req. Reh’g 3). However, no such assumption was made in the Opinion. In addition, Appellant’s issue of a “PDL format” was previously addressed in the Opinion (Opinion 6-7). CONCLUSION For the foregoing reasons and those expressed in the Opinion, we have considered Appellant’s Request for Rehearing but find no points that we have misapprehended or overlooked. Therefore, the Request for Rehearing is denied. DENIED peb cc: Patent Owner: VISTA PRINT USA, INC. ATTN: PATENT COUNSEL 95 HAYDEN AVENUE LEXINGTON, MA 02421 Appeal 2012-002897 Reexamination Controls 90/009,296 & 90/009,313 Patent 6,631,375 B2 4 Third Party Requestor: KENT J. SIEFFER T SHUMAKER & SIEFFERT, P.A. 1625 RADIO DRIVE SUITE 300 WOODBURY, MN 55125