Ex Parte Granda et al

Patent Trial and Appeal Board

Dec 11, 2015

12651439 (P.T.A.B. Dec. 11, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/651,439 12/31/2009
73811 7590 04/15/2016
Leydig, Voit & Mayer, Ltd.
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Shawn F. Granda
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P007956-0ST-ALS/267577 9115
EXAMINER
EISNER, RONALD
ART UNIT PAPER NUMBER
2644
NOTIFICATION DATE DELIVERY MODE
04/15/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAWN F. GRANDA, ANTHONY J. SUMCAD, and KEVIN R.
KRAUSE
Appeal2013-009963
Application 12/651,439
Technology Center 2600
Before JEAN R. HOMERE, CAROLYN D. THOMAS, and
CHRISTA P. ZADO, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal2013-009963
Application 12/651,439
TI'-JTRODUCTION
Appellants request rehearing of the Patent Trial and Appeal Board's
("Board") Decision mailed December 15, 2015 ("Decision"), in which we
affirmed the rejection of claims 1-5, 7-14, and 16-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Shabalin (US 2005/0081108 Al, Apr.
14, 2005) and Chiang (US 5,463,670, Oct. 31, 1995); and the rejection of
claim 20 as being unpatentable over Shabalin, Chiang, and Mochizuki (US
2008/0178042 Al, July 24, 2008).
ANALYSIS
In the Request for Rehearing ("Request"), Appellants allege that "the
PTAB Decision affirms the rejection ... without fully addressing the single
most discussed error in Appellants' Reply - the absence of any teaching in
either cited reference of Appellants' claimed 'autonomous probe to place a
data call to the cellular communications device' element" (Req. 1 ). We
disagree.
Specifically, Appellants contend that "Appellants' recited 'data call'
to a 'cellular communications device' is distinct from both a user clicking on
a hyperlinked URL (Shabalin) and a voice call (Chiang)" (Req. 3).
Appellants further contend that "[ n ]either the final Office action nor the
PT AB Decision addresses the absence of any teaching in the cited references
regarding Appellants' claimed placing a 'data call to the cellular
communications device' and 'error messages' responsive to the 'data call to
the cellular communications device"' (Req. 5).
Contrary to Appellants' contentions, in our Decision, we did indeed
address the claimed "initiating an autonomous probe to place a data call to
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Application 12/651,439
the cellular communications device" and "receiving an error message at the
probe responsive to the data call." At the outset, we highlighted that
"Appellants' arguments do not take into account what the collective
teachings of the prior art would have suggested to one of ordinary skill in the
art and is therefore ineffective to rebut the Examiner's prima facie case of
obviousness" (Decision 4 ). Then, we noted that Appellants' Appeal Brief
merely attacks Shabalin for not teaching an "autonomous probe" that issues
a data call and receives an error message (id. at 4, 5). However, the
Examiner relied upon Chiang for teaching the "autonomous probe" for
sending and receiving, not Shabalin (id. at 5; see also Ans. 28, 29 and Final
Act. 5).
In addition, the Examiner relied upon Shabalin for teaching "a data
call from the cellular communications device" (see Final Act 5) and Chiang
for teaching "a data call to a customer's device" (id.). In other words, the
Examiner relied upon both Shabalin and Chiang for teaching a "data call" to
a customer device. However, Appellants' contentions in the Appeal Brief
fail to rebut both of these findings, i.e., Appellants fail to rebut the
Examiner's specific findings regarding Shabalin's "data call from the
cellular communications device" (see App. Br. 11 ). In fact, as noted in our
Decision, Appellants concede that in Shabalin "any ensuing data call is the
result of a user electing to click on a link displayed within a graphical user
interface ... an ensuing data call in Shabalin is 'initiated by the customer'
and therefore not autonomous" (see Decision 6, citing App. Br. 12). Stated
differently, Appellants merely argue that Shabalin's user electing to click on
a link is not autonomous, instead of it not being a data call. Therefore, we
found that "even if Chiang relates to voice calls (and not data calls), as
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Application 12/651,439
proffered by Appellants, such arguments do not take into account what the
collective teachings of the prior art would have suggested" (see Decision 6)
because Appellants concede that Shabalin teaches "data calls."
Although Appellants now contend (and belated in the Reply Brief)
that "Appellants' recited 'data call' to a 'cellular communications device' is
distinct from [] a user clicking on a hyperlinked URL (Shabalin)" (Req. 3;
see also Reply Br. 6), we note that Appellants failed to make this precise
argument in the principal Appeal Brief, but instead merely focused on
Shabalin's user clicking on a URL as not being autonomous, which we
found unpersuasive. Arguments not made are waived. See 37 C.F.R. §
41.37(c)(l)(vii). Cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed.
Cir. 1991) ("It is not the function of this court to examine the claims in
greater detail than argued by an Appellant, looking for nonobvious
distinctions over the prior art."). Furthermore, belated arguments in the
Reply Brief are also technically 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."). This is
equally applicable to belated arguments in the Request for Rehearing.
DECISION
Accordingly, we have granted Appellants' Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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Application 12/651,439
REHEARING DENIED
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