11107004 (B.P.A.I. Nov. 17, 2010)

Ex Parte Das et al

Board of Patent Appeals and InterferencesNov 17, 2010

11107004 (B.P.A.I. Nov. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE TJnited States Patent and Trademark Office Add,&: COMMISSIONER FOR PATENTS P 0 Box 1450 Alexandria, Virginia 22313-1450 www uspto go" 11/107,004 0411 5/2005 Pradeep K. Das F-833-01 6500 APPLICATION NO. 919 7590 11/19/2010 PITNEY BOWES INC. EXAMINER FILING DATE INTELLECTUAL PROPERTY & TECH. LAW DEPT. RAVETTI, DANTE 35 WATERVIEW DRIVE MSC 26-22 FIRST NAMED INVENTOR I ARTUNIT I PAPERNUMBER I SHELTON, CT 06484 3685 ATTORNEY DOCKET NO. CONFIRMATION NO. Please find below andlor attached an Office communication concerning this application or proceeding. NOTIFICATION DATE The time period for reply, if any, is set in the attached communication. DELIVERY MODE Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): iptl@pb.com 11/19/2010 ELECTRONIC PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte PRADEEP K. DAS, DAVID W. SPENCER, ROBERT A. CORDERY, and FREDERICK W. RYAN JR. Appeal 2009-010583 Application 1 111 07,004 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. FETTING, Administrative Patent Judges. FETTING, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. 5 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. Appeal 2009-010583 Application 1 111 07,004 STATEMENT OF CASE This is a decision on rehearing in Appeal No. 2009-010583. We have jurisdiction under 35 U.S.C. 5 6(b) (2002). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision. 37 C.F.R. 5 41.52 (2002). ISSUES ON REHEARING The Appellants raise an issue that relates to the construction of claim 1. The Appellants argue the panel should have been constrained to construe claim 1 the same as in a related application, and that the findings in that related application should be binding precedent on the panel in this appeal. ANALYSIS We found in our decision that claims 1-28 were obvious over the applied art. Decision 12- 13. The Appellants argue that the panel in Appeal 2009-010725 found that the limitations in its claim 1 were not described or obvious over the same art as in the instant case. Request 2-3. The Appellants contend that the panel's construction was erroneous and improper because construction was overly broad and the panel should have been bound to the construction in the related case. Request 2. The first and most pertinent observation is that the Appellants point to a related application, not the instant application, and definitely not the instant appeal. Res judicata does not restrain the panel from reaching the proper conclusion in this appeal. [Tlhe policy and purpose of the patent laws preclude the applicability of any doctrine akin to the judicially-developed doctrine of "res judicata" to bar the granting of patents on inventions that comply with the statute. The same policy and purpose precludes reliance on any Appeal 2009-010583 Application 1 111 07,004 such doctrine to force the granting of patents on inventions that do not comply with the statute. The Patent Office must have the flexibility to reconsider and correct prior decisions that it may find to have been in error. In re Borkowski, 505 F.2d 713,718 (CCPA 1974). We also find that while the Appellants contend the phrase "direct contact data" is defined in the Specification, the Appellants point to exemplary embodiments alone, rather than any definition. See Request 3. There is no actual definition in the Specification, and the claim does not limit the manner in which the adjectival phrase "direct contact" modifies the noun "data." Thus, as the panel found, the instant claim 1 limitation "merely requires any information or data reasonably pertaining to direct contact to the business entity." Decision 9. Our final finding is that the pertinent limitation in the related application claim is "decoding the digital image in the mobile communications device to retrieve the direct contact data and the transaction data." The corresponding limitation in the instant claim 1 is "decoding the digital image in the mobile communications device to retrieve the direct contact data for the business entity ofering the transaction and the transaction data" (emphasis added to show difference in phrasing). Thus the claim limitation at issue differs substantively from that in the related application. Of particular note is that the reference to transaction data is now included in the intended use portion of the limitation within the prepositional "for" phrase rather than being a separate object of the verb "to retrieve" as in the related application. Thus, the panel in the instant appeal faced a different patentability issue than that before the panel in the related application. Appeal 2009-010583 Application 1 111 07,004 CONCLUSION Nothing in Appellants' request has convinced us that we have improperly construed claim 1 as argued by Appellants. Accordingly, we deny the request. DECISION To summarize, our decision is as follows: We have considered the REQUEST FOR REHEARING We DENY the request that we reverse the Examiner as to claims 1-28. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R. 5 1.136(a)(l)(iv) (2007). REHEARING DENIED mev PITNEY BOWES INC. INTELLECTUAL PROPERTY & TECH. LAW DEPT. 35 WATERVIEW DRIVE MSC 26-22 SHELTON CT 06484