Ex Parte Cunningham et al

Board of Patent Appeals and Interferences

Nov 17, 2010

10098700 (B.P.A.I. Nov. 17, 2010)

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.
10/098,700 03/15/2002 David W. Cunningham 4000-007 6945
24112 7590 11/18/2010
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
11/18/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte DAVID W. CUNNINGHAM, 8
JOHN M. HARDEN, 9
WILLIAM N. ENGLE, and 10
CHARLES W. REUBEN 11
___________ 12
13
Appeal 2009-005222 14
Application 10/098,700 15
Technology Center 3600 16
___________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 19
ANTON W. FETTING, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON REQUEST FOR REHEARING122

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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24
25
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Application 10/098,700

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The Appellants filed a REQUEST FOR RECONSIDERATION on 1
August 23, 2010. The Examiner rejected claims 15-19, 54-55, and 64-72 2
under 35 U.S.C § 102(e) as anticipated by Deaton and rejected claims 15-19, 3
54-55, and 64-72 provisionally under the doctrine of obviousness-type 4
double patenting. We reversed the anticipation rejections and affirmed 5
obviousness-type double patenting rejections in our June 21, 2010 Decision. 6
The Appellants seek reconsideration of the decision to affirm the 7
obviousness-type double patenting rejections. 8
We DENY the REQUEST FOR REHEARING. 9
ISSUES 10
The issue pertinent to this request is whether the Appellants have 11
sustained their burden of showing that we misapprehended the art or the 12
claims and thus erred in sustaining the obviousness-type double patenting 13
rejections of claims. 37 C.F.R. 41.52(a)(1). The pertinent issue turns on 14
whether we improperly used an obviousness analysis instead of the required 15
non-statutory obviousness-type double patenting analysis. 16
ANALYSIS 17
We found in our decision that claims. 18
The Examiner erred in rejecting claims 15-19, 54-55, and 64-72 19
under 35 U.S.C. § 102(e) as being anticipated by Deaton. 20
The Examiner did not err in rejecting claims 15-19, 54-55, and 21
64-72 under the doctrine of obviousness-type double patenting. 22
Decision 12. 23
The Appellants first contend that we improperly applied an obviousness 24
analysis based on 35 U.S.C. § 103(a) in our analysis of the non-statutory 25
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obviousness-type double patenting rejection. Request 1-2. The Appellants 1
point to the panel’s use of the word “patent” rather than “claim” in the 2
analysis of the pertinence of the prior art as a primary reason for the 3
Appellants’ contention. However, the Appellants’ do not contend that the 4
panel’s analysis earlier in the Decision was not between the claims in the 5
instant application and the corresponding claims in the ‘449 patent, which is 6
the relevant inquiry relative to the Appellants’ contentions. 7
We begin by pointing out that the only limitation in contention in the 8
obviousness-type double patenting rejection is limitation [6] of claims 15 9
and 66 and as applied to claims 16 and 67. Since the Appellants have not 10
contested the remaining limitations (App. Br. 14 and Request 4), we have 11
taken this as an indication that the Appellants agree that the remaining 12
limitations between claim 5 of the ‘449 patent and claims 15 and 66 are 13
identical. As such, our analysis is based on whether limitation [6] is an 14
obvious variant. “[I]f the scope of the application and the patent claims is 15
not identical, the court must ask whether the former defines merely an 16
obvious variation of the latter.” In re Berg, 140 F.3d 1428, 1432 (Fed. Cir. 17
1998). “A later patent claim is not patentably distinct from an earlier patent 18
claim if the later claim is obvious over, or anticipated by, the earlier claim. 19
In re Longi, 759 F.2d at 896 (affirming a holding of obviousness-type 20
double patenting because the claims at issue were obvious over claims in 21
four prior art patents).” Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 22
968 (Fed. Cir. 2001). 23
In our decision we found that limitation [6] is obvious in view of the 24
cited prior art since Deaton describes the feature of limitation [6]. The 25
Appellants argue that our finding of motivation and use of prior art are used 26
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for an obviousness determination under 35 U.S.C. § 103(a) and not for non-1
statutory double patenting. “However, a double patenting of the 2
obviousness type rejection is ‘analogous to [a failure to meet] the non-3
obviousness requirement of 35 U.S.C. § 103,’ except that the patent 4
principally underlying the double patenting rejection is not considered prior 5
art.” In re Longi, 759 F.2d 887, 892 (C.A.Fed.,1985), In re Braithwaite, 379 6
F.2d 594, 600 (1967). As such, in our decision found that claims 6 and 66 of 7
the claimed invention are obvious variants of claim 5 of ‘449 in view of 8
Deaton. As such, our application of an obviousness analysis that parallels 9
that of a 35 U.S.C. § 103(a) analysis, where we determined that the claims of 10
the present invention are obvious variants of ‘449, is proper. Thus, we find 11
this argument unpersuasive as to error on our part. 12
The Appellants additionally contend that we incorrectly construed the 13
term “varying the value of at least some of the media such that the value of 14
the media varies according to selected conditions.” Request 4. We begin by 15
pointing out that in our decision we applied a construction of the term that 16
was provided by the Appellants. Decision 10-11 and Reply Br. 3. In the 17
Reply Brief, the Appellants provided the claim construction for this term to 18
encompass bringing about a change in the value of the media according to 19
certain conditions. Reply Br. 4. 20
Our claim construction of this term encompasses any type of variation in 21
the value of the media. Decision 10. This construction is both consistent 22
with the Specification and consistent with the construction provided by the 23
Appellants. The Appellants now argue that the proper construction of this 24
term requires the media to be issued and thereafter be subjected to variations 25
in value in order to be consistent with the claim as a whole. Request 4-5. 26
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However, there is nothing explicit or implicit in the claim language that 1
requires that the method steps are performed in a specific order. The 2
distribution step of limitation [7] does not require the varying the value step 3
of limitation [6] to be performed before the distribution. Since we do not 4
find a requirement in the claim language that the method steps are performed 5
in a specific order, our claim construction is consistent with the claim as a 6
whole. As such, the Appellants’ argument is not found persuasive as to error 7
on our part. 8
For the above reasons we are not convinced of reversible error in our 9
decision. Accordingly, the Appellants’ request for rehearing is denied, 10
DECISION 11
To summarize, our decision is as follows: 12
• We have considered the REQUEST FOR REHEARING. 13
• We DENY the request that we reverse the Examiner as to claims 15-14
19, 54-55, and 64-72. 15
o The rejection of claims 15-19, 54-55, and 64-72 under 35 16
U.S.C. § 102(e) as being anticipated by Deaton remains not 17
sustained. 18
o The rejection of claims 15-19, 54-55, and 64-72 under the 19
doctrine of obviousness-type double patenting remains 20
sustained. 21
22
REHEARING DENIED 23
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