Ex Parte Chane et al

Board of Patent Appeals and Interferences

Jan 19, 2012

10306752 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/306,752 11/27/2002 Lena D. Chane 007412.01067 8310
71867 7590 01/19/2012
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
AHLUWALIA, NAVNEET K
ART UNIT PAPER NUMBER
2166
MAIL DATE DELIVERY MODE
01/19/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LENA D. CHANE, DAVID BRANDYBERRY,
ALEX CHUNG, ALI CRAKES,
SITHAMPARA BABU NIRANJAN, and
VIVA CHU

____________

Appeal 2009-010511
Application 10/306,752
Technology Center 2100
____________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants, pursuant to 37 C.F.R. § 41.52, have submitted a timely
Request for Rehearing dated December 14, 2011 (hereafter the “Request”),
requesting rehearing of our original decision dated October 14, 2011
affirming the Examiner’s decision to reject claims 1-4, 6, 9-14, and 16-23
under § 103 but not under § 102. Opinion 1, 13.
Appeal 2009-010511
Application 10/306,752

2
We have reconsidered our October 14, 2011 opinion in light of
Appellants’ comments in the Request and find no errors. We therefore
decline to change our prior decision for the following reasons.

Purported New Ground of Rejection
Appellants assert that we have presented a new ground for the § 103
rejection of claims 1-4, 6, 9-14, and 16-23 based on McEvilly and Perkes.
See Request 3-4. Specifically, Appellants assert the Examiner did not rely
or discuss Figure 7 of McEvilly and that we have “significantly relied on
Figure 7 of McEvilly to affirm the Examiner’s final rejection[.]” Request 3.
Based on this assertion, Appellants contend that we have set forth a new
ground of rejection which is based on a new rationale. See Request 4.
We disagree. Contrary to Appellants’ contentions (Request 3-4), the
Examiner has relied on and discussed Figure 7 in McEvilly when addressing
the § 103 rejection of the pending claims. Both in the Final Rejection (Final
Rej. 10) and the Examiner’s Answer (Ans. 21, 23), the Examiner discusses
Paragraph 0164 of McEvilly to teach using code modules as recited.
Notably, Paragraph 0164 discusses Figure 7 and the components of database
39.1 Thus, while the Examiner did not explicitly state “Figure 7” in the
Final rejection and the Examiner’s Answer, the Examiner nonetheless points
to Paragraph 0164 when discussing the code module, and Paragraph 0164
addresses Figure 7, database tables 705, and stored procedure 713. See FF 7.
Also, when discussing the modules, the Examiner cites to Paragraph
0150 in McEvilly, which addresses database 39, and the details of the

1 We note a typographical error in FF 6. See Op. 9. “[D]atabase 30”
discussed in FF 6 should be “database 39.”
Appeal 2009-010511
Application 10/306,752

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database are developed in Paragraph 0164. See Final Rej. 12; Ans. 12.
Thus, at most, our discussion of Paragraph 0164 in the Opinion merely
elaborates on what cited Paragraphs 0150 and 0164 state and is not based on
a different rationale than what the Examiner relied upon in concluding the
claims were obvious. For these reasons, the thrust of the appealed rejection
did not change in the Opinion, and Appellants have had a fair opportunity to
respond to the rejection. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011); see
also In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005)
Additionally, we stated in the Opinion that some of the disputed claim
recitations (e.g., the table of contents module containing information)
contain non-functional descriptive material and do not further limit claim 1.
Thus, when addressing the table of content limitation, our claim construction
of this limitation obviated a discussion of Figure 7 and Paragraph 0164 (see
Op. 11-12) in sustaining the Examiner’s rejection. Also, we noted that
Appellants assert without any further discussion that McEvilly fails to teach
various limitations. See Op. 12. Notably, merely asserting that McEvilly
fails to teach a limitation (see App. Br. 7) is not considered a separate
argument for patentability. See In re Lovin, 99 USPQ2d 1373, 1378-79
(Fed. Cir. 2011) (stating interpreting 37 C.F.R. § 41.37(c)(1)(vii) to require a
more substantive argument than a naked assertion that the prior art fails to
teach limitation in order to address a claim separately is not unreasonable
interpretation of the rule). Thus, once again, our statement concerning the
argument that McEvilly fails to teach the packaging, optimizing, and
compressing steps obviated a discussion of Figure 7 and Paragraph 0164
(see Op. 12-13) in sustaining the Examiner’s rejection.

Appeal 2009-010511
Application 10/306,752

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McEvilly and Perkes Allegedly Do Not Qualify as Prior Art
For the first time on appeal, Appellants argue that both McEvilly and
Perkes do not qualify as prior art. See Request 2-8. Such challenges are
untimely and have been waived. See Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not.”). In fact, we
specifically noted that McEvilly was not challenged as prior art in our
decision. Op. 3 n.1.2 Perkes also was not challenged as prior art. See App.
Br. 6-8. Moreover, as noted above, the Opinion has not presented a new
ground or rejection according to 37 C.F.R. § 41.50(b) which permits new
arguments pursuant to 37 C.F.R. § 41.52(a)(3). Nor has Appellants show
good cause to present this new argument based upon a recent relevant Board
or court decision according to 37 C.F.R. § 41.52(a)(2).
Also, in the Request, Appellants present an Appendix demonstrating
the support for claim 1’s elements in the U.S. Provisional No. 60/353,799,
filed January 30, 2002. See Appendix in Request. However, such evidence
has not been entered and made of record by the Examiner. Cf. 37 C.F.R.
§ 41.37(c)(1)(ix). Additionally, Appellants have not attempted to antedate
the critical reference dates of McEvilly and Perkes for the subject matter
contained in other pending claims, including independent claims 9, 16,
and 22.

2 Appellants also assert that our opinion improperly relied on April 3, 2002
as the filing date for McEvilly and October 25, 2001 as the filing date for
Perkes. Request 2. This is untrue. We simply noted that Appellants have
not challenged that McEvilly qualifies as prior art.
Appeal 2009-010511
Application 10/306,752

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Lastly, Appellants did not specifically address claims 2-4, 6, 9-14, and
16-23. See Request 1-8. We refer to our previous discussion of these
claims. See Opinion 13.
We have considered the arguments raised by Appellants in the
Request, but the arguments are not persuasive to find that the original
decision was in error. Based on the record before us now and in the original
appeal, we are still of the view that the Examiner (1) erred in rejecting
claims 1-4, 6, 9-14, and 16-23 under § 102, but (2) did not err in rejecting
those claims under § 103.
We have granted the Request to the extent that we have reconsidered
our decision of October 14, 2011, but we deny the request with respect to
making any changes therein.

REHEARING DENIED

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