Ex Parte 6,968,375 B1 et al

Patent Trial and Appeal Board

Apr 3, 2017

90013273 (P.T.A.B. Apr. 3, 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.
90/013,273 06/17/2014 6,968,375 B1 1737.578REX5 5540
60683 7590 04/04/2017
Robert Bosch LLC
1800 W. Central Road
Mount Prospect, IL 60056
EXAMINER
NGUYEN, MINH DIEU T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/04/2017 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 ROBERT BOSCH LLC
____________________

Appeal 2016-006040
Reexamination Control No. 90/013,273
Patent 6,968,375 B1
Technology Center 3900
____________________

Before MARC S. HOFF, ERIC B. CHEN, and STEPHEN C. SIU,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Patent Owner requests rehearing of our Decision entered September 1,
2016 (“Decision”), in which we affirmed the rejection of claims 1, 4, 5, 15–
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Application 90/013,273

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19, 28–30, and 35, and reversed the rejection of claims 9-11, 13, 14, 21, 25,
and 32–34.
OPINION
We will maintain the rejections.

PRINCIPLES OF LAW
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 (8th ed., Rev. 9, Aug. 2012)). 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arguments originally made in the Brief, neither is it an opportunity to merely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) though
(a)(4). Id. The proper course for an Appellant 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.
ANALYSIS
CLAIM 1
Appellant argues in the Brief that “the database at the server of Brown
‘630 would likely need to be modified to accommodate the indexing, access
and cross-correlation of ‘queries’, ‘responses to the queries’, and ‘details of
the individual’.” App. Br. 15-16. The Request for Rehearing alleges that “the
Examiner has not established that adding a new type of data to an existing
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Application 90/013,273

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database can be performed without changing the function of the database.”
Req. for Reh’g 4–5; see App. Br. 16.
Appellant is correct that the Examiner did not explicitly answer this
contention. Our agreement with the Examiner’s overall conclusion of
obviousness remains, however. We find that the mere addition to Brown
‘630 of storing another field (i.e., details related to the individual) in the
database, according to the teachings of Kaufman, would not require a change
in function of the database of Brown ’630, i.e., the organized storage of data
for prompt retrieval. See Ans. 7, 38.
Appellant admits that “it does not appear that the Board relied on the
new rationale of ‘to better serve the patient’ in affirming the rejection.” Req.
for Reh’g. 6. In view of that admission, the Board concludes that this portion
of the Request does not constitute a point alleged to have been
misapprehended by the Board.
CLAIM 15
We are unpersuaded by Appellant’s argument that “mere use of an
object by an individual does not mean that the object is necessarily
associated with that individual.” Req. for Reh’g 8. We agree with the
Examiner’s finding that Claim 17 of Brown ’630 recites a remotely
programmable apparatus comprising “a user interface for communicating the
set of queries to the user and for receiving the responses to the set of queries
from the user.” See Ans. 41. The dictionary definition of the verb “associate”
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Application 90/013,273

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is “to connect or bring into relation, as thought, feeling, memory, etc.”1 A
user who, through the user interface of a programmable apparatus, receives a
set of queries and who sends back a set of answers, may fairly be said to be
connected or brought into relation with said apparatus. Further, the invention
of Brown ‘630 claim 17 contemplates that a (particular) user is sent a
(particular) set of queries meant for that user and no other. The sender of the
queries expects that said particular user is associated with the programmable
apparatus that receives that particular set of queries.

We therefore conclude that Appellant has not shown any points which
we misapprehended or overlooked in our Decision.

CONCLUSION
We have granted Appellant’s request for rehearing to the extent that
we have reconsidered our decision affirming the rejection of claims 1, 4, 5,
15–19, 28-30, and 35, and reversing the rejection of claims 9–11, 13, 14, 21,
25, and 32–34, but we decline to modify the decision.
Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose
of judicial review. A party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

REHEARING DENIED

1 http://www.dictionary.com/browse/associated?s=t. Retrieved March 27,
2017.
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