Ex Parte Broen et al

Patent Trial and Appeal Board

Nov 14, 2013

11249676 (P.T.A.B. Nov. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NANCY L. BROEN and JYANPING RUNG
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Appeal 2011-008453
Application 11/249,676
Technology Center 3700
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Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
CARL M. DeFRANCO, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
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STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing (“Req. Reh'g.”) dated
Oct. 21, 2013, under 37 C.F.R. § 41.52 of the Decision on Appeal
(“Decision”) mailed Aug. 21, 2013, regarding the rejection of claims 1-41.
We do not modify our opinion.

THE REQUEST FOR REHEARING
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked. Arguments not raised
in the briefs before the Patent Trial and Appeal Board (“Board”) and
evidence not previously relied upon in the briefs are not permitted in the
request for rehearing. See 37 C.F.R. § 41.52(a)(1). Also, a request for
rehearing is not an opportunity to express disagreement with a decision
without setting forth points believed to have been previously
misapprehended or overlooked in the briefs. The proper course for an
Applicant 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 seek a rehearing because “the Board has made a reversible
error in coming to its conclusion that Claims 1-41 are directed to non-
statutory subject matter.” Req. Reh'g. 2. Appellants further seek a rehearing
because the Board “made a reversible error in coming to its conclusion that
the Examiner has properly identified to Appellants three distinct steps that
are lacking in claim 41” such that “claim 41 is rejected under 35 U.S.C.
§ 112, second paragraph, as being incomplete for omitting essential steps.”
Req. Reh'g. 2, 3. Each such assertion will be separately addressed.
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The rejection of claims 1-41
as being directed to non-statutory subject matter
Appellants again contend that “the machine or transformation test
should only be applied to process claims. Therefore this test is inapplicable
to apparatus claims.” Req. Reh'g. 3, see also Br. 8. In the present matter,
claims 1-12 and 16-39 are apparatus claims. The Decision, in addressing
this contention, references Bancorp Servs., L.L.C. v Sun Life Assurance Co.
of Can.(U.S.), 687 F.3d 1266 (Fed Cir, 2012). Decision 4-5. Appellants
now contend that the application of Bancorp was incorrect and further that,
essentially, Bancorp should be limited to its facts. Req. Reh'g. 4-9.
As stated in the Decision, the Federal Circuit’s holding in Bancorp
addresses the Supreme Court’s explanation that “the form of the claims
should not trump basic issues of patentability.” Decision 4 (citations
omitted). More specifically, Bancorp discusses treating different claim
formats (system, method, medium) the same “for purposes of patent
eligibility under § 101.” Decision 4 (citation omitted) (emphasis added).
Even Appellants acknowledge that Bancorp holds “that ‘a machine, system,
medium, or the like may in some cases be equivalent to an abstract mental
process for purposes of patent ineligibility.’ 687 F. 3d at 127[7].” Req.
Reh'g. 4 (emphasis added). Nevertheless, in Appellants’ Request for
Rehearing, Appellants critique the application of the “machine or
transformation” test to Appellants’ apparatus claims in order to determine
patent eligibility under § 101. Req. Reh'g. 4. Appellants’ critique is
premised on the condition that to equate method and apparatus claims under
this test, the scope of the method and apparatus claims so investigated need
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be the same or nearly so.1 Req. Reh'g. 4, 5. Appellants’ contention would
limit the application of Bancorp to nearly identical fact patterns and would,
in effect, eviscerate the Federal Court’s discussion of the Supreme Court’s
explanation that “the form of the claims should not trump basic issues of
patentability.” See Bancorp, 687 F.3d at 1277 (citation omitted). As stated
in Bancorp, the Supreme Court instead advises “against a rigid reading of
§ 101 that ‘would make the determination of patentable subject matter
depend simply on the draftsman’s art.’” Id., citing Mayo Collaborative
Servs. v Prometheus Labs., Inc., 132 S.Ct. 1289, 1294 (2012) (quotation
omitted), see also Decision 4. Appellants do not identify any holding that
supports their contention that Bancorp is applicable only to claims that meet
this fact pattern. Based on the record presented, Appellants do not persuade
us that the holding in Bancorp is to be restricted as asserted.
Regarding Appellants’ method claims 13-15, 40, and 41, Appellants
contend in the Request for Rehearing that these method claims are patent
eligible because they satisfy the second transformation prong of the
“machine or transformation” test. Req. Reh'g. 9-11. However, when earlier
addressing these method claims in the Appeal Brief, Appellants did not
dispute the Examiner’s finding that these method claims “do not identify the
subject matter being transformed or changed.” Ans. 7, see also Ans. 8, 9.
Instead, at that time, Appellants avoided discussing the transformation prong
and focused instead on the machine prong. Br. 8-9. More specifically, in

1“Therefore, the holding in Bancorp involved an instance where the
apparatus claims exactly or very closely tracked the language of the method
claims” and “[t]herefore, this holding can only be applied in situations where
the system and method claims are virtually identical in form and substance.”
Req. Reh'g. 5.
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their Appeal Brief, Appellants asserted that “[r]egardless of whether ‘the
method claims do not identify the subject matter being transformed or
changed,’ Office action at Page 8, claims 13-15, 40, and 41 are patent
eligible because they are ‘tied to a particular machine or apparatus.’” Br. 8-
9. Now, after electing to not address this transformation prong in their
Appeal Brief, Appellants seek to address it in the Request for Rehearing.
Req. Reh'g. 9-11.
Appellants seem to believe they can now present such a new argument
based on a statement in the Decision (and as emphasized by Appellants) that
“applying the claimed statistic[al] analysis to ‘a container’ and the like,
without more, does not render the claim anything other than as stated, i.e.,
‘non-statutory subject matter.’” Req. Reh'g. 9 quoting Decision 7.
Appellants’ emphasis on “without more” seems to be understood as an open
invitation to now provide this “more.” This is not the case. The phrase in
question was directed to Appellants’ argument that applied the statistical
analysis to a container and that this argument, as it was presented (i.e.,
“without more”), was insufficient to persuade the Board that the claims are
anything other than as stated by the Examiner, i.e. non-statutory subject
matter. This phrase is not to be construed as an opportunity to provide
additional arguments not previously made. Appellants are reminded that, in
effect, arguments not made are waived (37 C.F.R. § 41.37 (c)(1)(vii)) and
that a Request for Rehearing may not contain new arguments (37 C.F.R.
§ 41.52(a)(1)). Accordingly, as Appellants now seek to present
“transformation” arguments not previously raised (Req. Reh'g. 9-11), we do
not find them persuasive of Board error. Furthermore, and equally
applicable, Appellants do not persuade us that the Decision misapprehended
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or overlooked points previously made because Appellants do not indicate
how arguments not previously made could have possibly been
misapprehended or overlooked.
The rejection of claim 41 under 35 U.S.C. § 112, second paragraph,
as being incomplete for omitting essential steps
Appellants contend that factual and legal error occurred based on the
statement in the Decision that Appellants made “‘no attempt to further
address the Examiner’s [missing] three enumerated steps.’” Req. Reh'g. 2,
11-13; Decision 8. Appellants base this contention on the fact that the
Examiner’s Answer containing this finding was filed after, not before, their
Appeal Brief and thus the Board’s error in indicating that Appellants did not
respond (i.e., the Appeal Brief could not respond to a finding not yet made).
Req. Reh'g. 11-12. However, here, the Board is referring to the fact that
Appellants elected to not submit a Reply Brief in this matter which would
have afforded Appellants an opportunity to respond to the Examiner’s
Answer. The statement in the Decision that Appellants made “no attempt to
further address the Examiner's three enumerated steps” is a reference to a
lack of a Reply Brief. Decision 8. In essence (and as above), arguments not
timely made are waived. Appellants’ own failure to respond does not
persuade us the Board committed reversible error or that any point was
misapprehended or overlooked.

DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants’ Request
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for Rehearing, but is denied with respect to our making any modification to
the Decision.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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