Ex Parte Hussey et al

Patent Trial and Appeal Board

Sep 26, 2017

12384098 (P.T.A.B. Sep. 26, 2017)

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.
4162.01US02 4737
EXAMINER
MAHMOOD, REZWANUL
ART UNIT PAPER NUMBER
2164
MAIL DATE DELIVERY MODE
12/384,098 03/31/2009
112610 7590 09/26/2017
Christensen, Fonder, Dardi & Herbert PLLC
33 South Sixth Street
Suite 3950
Minneapolis, MN 55402
Michael P. Hussey JR.
09/26/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL P. HUSSEY, JR., PAVEL A. BARANOV,
TERRENCE E. MCARDLE, TIMOTHY M. BOESENBERG,
and BALDEV DUGGAL
Appeal 2017-005807
Application 12/3 84,09s1
Technology Center 2100
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
JESSICA C. KAISER, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 6—27, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b). Claims 1—5 have been cancelled.
Claims 28—35 have been withdrawn.
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION UNDER 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is PEEKANALYTICS,
INC. Br. 4.
Appeal 2017-005807
Application 12/384,098
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to aggregating
personal information from multiple data sources (Abstract). Claim 6,
reproduced below, is exemplary of the claimed subject matter:
6. A method of indexing information available from public
sources over a network and corresponding to a person via a
personal information aggregation system that includes a first
server, a processor, and a database of profiles stored in a memory
device, comprising:
receiving at the first server, data associated with a person,
the data associated with the person being publicly available over
a network and including name data comprising at least a first
name and a last name and including other data;
using the processor to determine whether the other data
includes a unique item of information associated with the person,
and when the other data includes a unique item of information
associated with the person, performing the steps of:
querying the database of profiles, the database of
profiles including a plurality of data profiles, each of the
data profiles having data corresponding to a previously-
profiled person, to determine whether the name data and
unique item of information of the data associated with the
person match name data and a unique item of information
of one of the plurality of data profiles of the database of
profiles;
merging the data associated with the person with the
one of the plurality of data profiles when both the name
data and unique item of information of the data associated
with the person match the name data and the unique item
of information of the one of the plurality of data profiles;
determining whether the other data includes a
location when the unique item of information associated
with the person does not match the unique item of
information of the one of the plurality of data profiles, and
when the other data does not include a location, create a
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partial-profile data record including the name data and the
other data, and when the other data does include a location
and the name data matches the name data of the one of the
plurality of data profiles, perform the steps of:
querying the database of profiles to identify
data profiles having name data that matches the
name data of the person, and having a location that
is in a geographic vicinity of the location of the
other data; and
merging the data associated with the person
with an identified data profile having name data that
matches the name data of the person, and having a
location that is in the geographic vicinity of the
location of the other data, thereby indexing
publicly-available information of the person.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lewis US 2005/0075950 A1 Apr. 7, 2005
Routson US 2007/0192122 A1 Aug. 16, 2007
McKeon US 2007/0299856 A1 Dec. 27, 2007
Denney US 2008/0177704 A1 July 24, 2008
REJECTIONS
Claims 6—15, 17—23, 25, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Routson, Lewis, and McKeon (Final
Act. 13-26, 29-35,40-41).
Claims 16 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Routson and Lewis (Final Act. 26—29, 35—40).
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Claim 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Routson, Lewis, McKeon, and Denney (Final Act. 41—
42).
ISSUE 1
35 U.S.C. § 103(a): Claims 6—10 and 15—27
Appellants contend their invention as recited in claim 6 is patentable
over Routson, Lewis, and McKeon (Br. 12—20) and their invention as recited
in claims 16 and 24 is patentable over Routson and Lewis {id. at 27—31).2
The issues presented by the arguments are:
Issue la: Has the Examiner shown the combination of Routson and
Lewis teaches or suggests “determin[ing] whether the other data includes a
unique item of information associated with the person, and when the other
data includes a unique item of information . . . querying the database of
profiles,” as recited in claim 6 and similarly recited in claims 16 and 24?
Issue lb: Has the Examiner shown the combination of Routson and
Lewis teaches or suggests “determining whether the other data includes a
location when the unique item of information associated with the person
does not match the unique item of information of the one of the plurality of
data profiles,” as recited in claim 6 and similarly recited in claims 16 and
24?
2 Rather than repeat the arguments here, we refer to the Appeal Brief for the
positions of Appellants and the Final Office Action and Answer for the
positions of the Examiner. Only those arguments actually made by
Appellants have been considered in this decision. Arguments that
Appellants did not make in the Brief are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Issue lc: Has the Examiner shown the combination of Routson and
Lewis teaches or suggests “when the other data does not include a location,
create a partial-profile data record including the name data and the other
data,” as recited in claim 6 and similarly recited in claims 16 and 24?
Issue Id: Did the Examiner improperly combine Routson and Lewis?
ANALYSIS
Issue la
Appellants contend the Examiner erred in finding Routson teaches
“determin[ing] whether the other data includes a unique item of information
associated with the person, and when the other data includes a unique item
of information . . . querying the database of profiles,” as recited in claim 6
and similarly recited in claims 16 and 24 (Br. 13—14, 27—30). Specifically,
Appellants argue the claimed “invention makes a preliminary determination
as to what kind of data has been identified prior to” querying the database
but Routson’s database query “is not initially conditioned upon the type of
data” (id. at 14).
We are not persuaded. The Examiner finds (Ans. 3^4; Final Act. 14—
15), and we agree, Routson “queries [a] database of profiles,” as recited in
claim 6, by “determin[ing] which [personal identification (PID)] information
in external database(s) 106 will be considered a potential match to PID
information in [CLIC] database 112” (Routson | 87; see Routson || 82, 84).
In particular, Routson searches for “the addresses, [social security numbers
(SSN)], and phone numbers stored in CLIC database 112” (Routson | 88).
The Examiner further finds (Ans. 6), and we agree, Routson’s “searches
would only be performed conditionally” such that “searches by SSN would
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not always be executed” because “if an account is associated with a business
which is not a sole proprietorship, then the impact of the SSN in the search
process is reduced or may not be relevant at all (since the SSN of the
account owner may not be available)” (Routson | 85).
Appellants’ argument that Routson’s database query is not
conditioned on Routson’s determination that unique information is included
in data (Br. 13—14) is not persuasive. Routson searches for and matches
unique information, e.g., SSN information, from an external database with
an internal database (Routson | 84). In order to successfully match SSN
information, Routson must initially determine what that SSN information is
exactly, thereby determining that the SSN information, i.e., “unique
information,” exists. Routson’s subsequent search, i.e., database query, is
based on the inclusion of that determined SSN information because that
search uses the determined SSN as “search criteria” (id.; see id. Tflf 89-90).
Furthermore, Routson teaches, or at least suggests, determining
whether to perform a query based on the existence of SSN information. In
particular, Routson teaches that “searches would only be performed
conditionally” and that “searches by SSN would not always be executed . . .
since the SSN of the account owner may not be available” (id. 1 85). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton,” and Routson teaches, or at least suggests, performing a search
conditioned on the existence of SSN information. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007).
Accordingly, we are not persuaded the Examiner fails to show the
combination of Routson and Lewis teaches or suggests “determin[ing]
whether the other data includes a unique item of information associated with
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the person, and when the other data includes a unique item of
information . . . querying the database of profiles,” as recited in claim 6 and
similarly recited in claims 16 and 24.
Issue lb
Appellants contend the Examiner erred in finding Routson teaches or
suggests “determining whether the other data includes a location when the
unique item of information associated with the person does not match the
unique item of information of the one of the plurality of data profiles,” as
recited in claim 6 and similarly recited in claims 16 and 24 (Br. 15—16, 28,
30-31). Specifically, Appellants argue Routson does not teach that the
“determination of whether location information is present is initially
conditioned on determining that the unique item associated with the person
does not match [the] unique item of a data profile” {id. at 16). Appellants
further argue Routson “is silent as to determining whether the ‘other data’
even includes the location information” {id. at 15).
We are not persuaded. The Examiner finds, and we agree, Routson
teaches that when there is “no match with [the] unique information^] such as
[a] social security number,” Routson will “match using other information,”
such as address information (Ans. 6 (citing Routson 1113)).
Appellants’ argument that Routson does not determine whether data
includes a location when unique information data does not match (Br. 15—
16) is not persuasive. In particular, Routson determines that the SSN
information, i.e., “unique information,” of two customer accounts does not
match (Routson 1113 (“Stanley C. Doe 1012 and Stanley C. Doe 1014 were
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initially not linked because the social security number was missing on the
Gold Card of Stanley C. Doe 1014.”)).
Further, when the SSN information does not match, Routson then
determines whether the address information of the two customer accounts
matches, thereby determining whether the data includes a location (id.
(“secondary sample linkage rule 708B states that a link should be made if
there is an exact match on the full name and address”)). That is, Routson
determines that the customer account data includes location information
because matching customer account addresses requires determining what
those addresses are.
Accordingly, we are not persuaded the Examiner fails to show the
combination of Routson and Lewis teaches or suggests “determining
whether the other data includes a location when the unique item of
information associated with the person does not match the unique item of
information of the one of the plurality of data profiles,” as recited in claim 6
and similarly recited in claims 16 and 24.
Issue lc
Appellants contend the Examiner erred in finding Lewis teaches or
suggests “when the other data does not include a location, create a partial-
profile data record including the name data and the other data,” as recited in
claim 6 and similarly recited in claims 16 and 24 (Br. 16—17, 28, 30).
Specifically, Appellants argue the “creation of a new participant record in
Lewis is not dependent upon” the “require[ment] that a first name and a last
name is received” (id. at 17). Appellants further argue “creating a new
participant record is conditioned upon having other data that includes a
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‘unique item of information’” but “the only requirement [for creating a new
record] in Lewis is that name and address data are missing” (id.).
We are not persuaded. As discussed supra, we agree with the
Examiner’s finding that Routson receives customer account data and, from
that data, extracts and matches PID information such as first names, last
names, addresses, and SSNs (Ans. 3—4, 7—8 (citing Routson || 78, 84—85,
112—113); see Routson Figs. 10a—b). Further, as discussed supra, we agree
with the Examiner’s finding that Routson teaches scenarios in which certain
PID information cannot be matched because that information is unavailable,
while other PID information can be matched (Ans. 6 (citing Routson 1113)).
The Examiner further finds (Final Act. 18; Ans. 8—9), and we agree, Lewis
teaches “[i]f no . . . address information is included in the received
participant information 230, a new participant record is created 232” (Lewis
175).
Appellants’ arguments that Lewis’ record creation is not dependent on
receiving data that includes a first name, a last name, and a unique item of
data (Br. 17) inappropriately attack Lewis individually when the rejection is
based on the combination of Routson and Lewis. In re Keller, 642 F.2d 413,
426 (CCPA 1981) (citation omitted). Specifically, Appellants do not
address the Examiner’s incorporation of Lewis’ record creation into
Routson’s matching process, which matches received name data and unique
PID information. The Examiner modifies Routson, teaching scenarios with
“some matching information,” i.e., certain PID information matches while
certain other PID information does not match, by incorporating Lewis’
record creation (Ans. 9). The Examiner’s modification results in the
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creation of a new record, i.e., “a partial-profile data record,” when location
PID information does not match, but other PID information does match (id.),
Accordingly, we are not persuaded the Examiner fails to show the
combination of Routson and Lewis teaches or suggests “when the other data
does not include a location, create a partial-profile data record including the
name data and the other data,” as recited in claim 6 and similarly recited in
claims 16 and 24.
Issue Id
Appellants contend the Examiner improperly combined Routson and
Lewis (Br. 18—20). Specifically, Appellants argue the Examiner’s reasoning
for the combination, i.e., to “consolidat[e] account information, and to
provide accurate, consistent resolution of particular identities,” is not
supported by the Examiner’s combination of Routson and Lewis (id. at 18
(citations omitted)). Appellants further argue the Examiner’s combination
“create[s] additional, and most likely erroneous, customer records” and, as
such, “points away from adding new records of persons who cannot be
identified, or linked to an existing customer account” (id. at 19).
We are not persuaded. The motivation for the Examiner’s
combination, “accurate, consistent resolution of particular identities by
aggregating information to identify multiple identities that a single
participant may have” (Final Act. 18), is taught by Lewis itself (Lewis 12)
and Lewis’ record creation supports that benefit. As such, the incorporation
of Lewis’ record creation into Routson’s system supports that benefit for the
combination of Routson and Lewis. Furthermore, Appellants’ argument
“that creating] new customer data . . . would not improve the accuracy of
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the linking process of Routson” (Br. 19) does not address the Examiner’s
finding that the combination creates a new record “for subsequent linking [to
a customer account] at a later time” (Ans. 11). That is, the Examiner’s
combination creates a new record such that, when more information is
available, the new record can be added to a customer’s account, thereby
improving the accuracy of the customer’s account at a later time.
Further, Appellants’ argument that Routson “points away from adding
new records of persons who cannot be identified, or linked to an existing
customer account” (Br. 19) is not persuasive because to teach away, a
reference must “criticize, discredit, or otherwise discourage” investigation
into the claimed solution, and Appellants have not identified where Routson
criticizes, discredits, or otherwise discourages adding new records. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Furthermore, Appellants’
hypothetical scenario that the Examiner’s combination creates “most likely
erroneous[] customer records,” thereby reducing accuracy, is supported only
by attorney argument and is accordingly unpersuasive. In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”).
Accordingly, we are not persuaded the Examiner improperly
combined Routson and Fewis. Therefore, we sustain the rejection of claims
16 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Routson and
Fewis and the rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Routson, Fewis, and McKeon. We also sustain the
Examiner’s rejections of claims 7—10, 17—23, and 25—27, for which
Appellants have not presented separate arguments. See Br. 17, 29, 32.
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ISSUE 2
35 U.S.C. § 103(a): Claim 11
Appellants contend their invention as recited in claim 11, is patentable
over Routson, Lewis, and McKeon (Br. 20-22). The issue presented by the
argument is:
Issue 2: Has the Examiner shown the combination of Routson, Lewis,
and McKeon teaches or suggests “the vicinity of the location of the other
data comprises a predetermined distance from the location of the other data,”
as recited in claim 11?
ANALYSIS
Appellants contend the Examiner erred in finding the combination of
Routson, Lewis, and McKeon teaches or suggests “the vicinity of the
location of the other data comprises a predetermined distance from the
location of the other data,” as recited in claim 11 (Br. 20-22). Specifically,
Appellants argue McKeon teaches “matching rules based on an address on
the same street, same address, or same town,” but, according to Appellants,
“a ‘predetermined distance’ is different than merely matching a street name
or town name” because the distances “will vary widely depending on the
geographic size of the city” or “the length of the street” {id. at 21—22).
We are not persuaded. The Examiner finds (Ans. 13), and we agree,
McKeon “[m]atch[es] records if. . . they have an address on the same street”
or “addresses in the same town” (McKeon || 115, 117).
Appellants’ arguments that addresses on the same street or the same
town are not within a vicinity comprising a “predetermined distance” (Br.
21—22) are not persuasive. Streets and towns are defined by predetermined
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distances; accordingly, locations on the street or within the town are
vicinities having predetermined distance. Additionally, Appellants’
arguments directed to Routson and Lewis (Br. 20—21) do not address the
Examiner’s finding that McKeon teaches vicinities having predetermined
distances. Accordingly, we are not persuaded the Examiner fails to show the
combination of Routson, Lewis, and McKeon teaches or suggests the
limitations recited in claim 11. Therefore, we sustain the rejection of claim
11 under 35 U.S.C. § 103(a) as being unpatentable over Routson, Lewis, and
McKeon.
ISSUE 3
35 U.S.C. § 103(a): Claim 12
Appellants contend their invention as recited in claim 12, is patentable
over Routson, Lewis, and McKeon (Br. 22—24). The issue presented by the
arguments is:
Issue 3: Has the Examiner shown the combination of Routson, Lewis,
and McKeon teaches or suggests “wherein the predetermined distance is
greater for name data having a high frequency of occurrence,” as recited in
claim 12?
ANALYSIS
Appellants contend the Examiner erred in finding the combination of
Routson, Lewis, and McKeon teaches or suggests “wherein the
predetermined distance is greater for name data having a high frequency of
occurrence,” as recited in claim 12 (Br. 22—24). Specifically, Appellants
argue none of the references teaches “name frequency” (id.).
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We are not persuaded. Under the broadest reasonable interpretation,
the limitations of claim 12, a method claim, need not be reached because
those limitations are only required if certain conditions precedent are met.
See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792 (PTAB
April 28, 2016) (precedential). Claim 12, ultimately depending on claim 6,
further defines claim 6’s step of “querying the database of profiles to
identify data profiles . . . having a location that is in a geographic vicinity of
the location of the other data.” And that step is only performed “when the
other data does include a location.” Thus, in the event the other data does
not include a location, claim 6’s step of “querying the database of profiles to
identify data profiles . . . having a location that is in a geographic vicinity of
the location of the other data” need not be performed. As such, the
limitations of claim 12, which further define the querying step of claim 6,
need not be reached. See Schulhauser, 2016 WL 6277792, at *3.
Accordingly, we are not persuaded of error in the Examiner’s rejection of
claim 12. Therefore, we sustain the rejection of claim 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Routson, Lewis, and McKeon.
ISSUE 4
35 U.S.C. § 103(a): Claim 13
Appellants contend their invention as recited in claim 13, is patentable
over Routson, Lewis, and McKeon (Br. 24—26). The issue presented by the
arguments is:
Issue 4: Has the Examiner shown the combination of Routson, Lewis,
and McKeon teaches or suggests “wherein a geographic area of the vicinity
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of the location of the other data varies directly with the frequency of
occurrence of the name data,” as recited in claim 13?
ANALYSIS
Appellants contend the Examiner erred in finding the combination of
Routson, Lewis, and McKeon teaches or suggests “wherein a geographic
area of the vicinity of the location of the other data varies directly with the
frequency of occurrence of the name data,” as recited in claim 13 (Br. 24—
26). Specifically, Appellants argue the references “all are silent as to using a
geographic area that varies with the frequency of occurrence of name data”
(id. at 25).
We are not persuaded. Similar to claim 12, under the broadest
reasonable interpretation, the limitations of claim 13, a method claim, need
not be reached because those limitations are only required if certain
conditions precedent are met. Claim 13, depending on claim 6, further
defines claim 6’s step of “querying the database of profiles to identity data
profiles . . . having a location that is in a geographic vicinity of the location
of the other data.” As discussed supra, the limitations of claim 13, which
further define the querying step of claim 6, need not be reached because the
querying step of claim 6 need not be reached. See Schulhauser, 2016 WL
6277792, at *3. Accordingly, we are not persuaded of error in the
Examiner’s rejection of claim 13. Therefore, we sustain the rejection of
claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Routson,
Lewis, and McKeon.
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ISSUE 5
35 U.S.C. § 103(a): Claim 14
Appellants contend their invention as recited in claim 14, is patentable
over Routson, Lewis, and McKeon (Br. 26-27). The issue presented by the
arguments is:
Issue 4: Has the Examiner shown the combination of Routson, Lewis,
and McKeon teaches or suggests “calculating a frequency of occurrence of
the name data in the vicinity and . . . having a location that is in the vicinity
of the location of the other data when the frequency of occurrence of the
name data in the vicinity is less than a predetermined threshold,” as recited
in claim 14?
ANALYSIS
Before addressing the Examiner’s rejection, we first consider whether
dependent claim 14 is sufficiently definite under 35 U.S.C. § 112, second
paragraph. As discussed below, we determine it is not, and, accordingly, we
enter a NEW GROUND OF REJECTION of claims 14 and 15 under 37
C.F.R. § 41.50(b).
The Federal Circuit has stated that “[i]t makes good sense, for
definiteness and clarity . . . , for the USPTO initially to reject claims based
on a well-founded prima facie case of lack of clarity (in its several forms)
based on the perspective of one of ordinary skill in the art in view of the
entire written description and developing prosecution history.” In re
Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014). Below we identify the ways
in which the language of claim 14 “is ambiguous, vague, incoherent, opaque,
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or otherwise unclear in describing and defining the claimed invention.” Id.
at 1311.
Claim 14 recites, in part, “calculating a frequency of occurrence of the
name data in the vicinity.” That limitation is so generic that it provides no
context as to what is being calculated so as to allow one of ordinary skill in
the art to ascertain the metes and bounds of the claim. For example, the
claim recites a “vicinity,” but it is unclear what constitutes a vicinity. A
“vicinity” is a subjective term and neither the claim nor the Specification
define the boundaries of a “vicinity” or provide any standard for measuring
the scope of a vicinity. Additionally, Appellants’ Specification appears to
equate “frequency” with commonness (see Spec. 15:10-12), but
commonness is subjective, and the Specification does not provide a standard
for measuring commonness.
Furthermore, it is unclear what an “occurrence of the name data”
encompasses. Name data for the same person can occur in multiple, distinct
locations (Spec. 12:12—14), but an occurrence could mean that a) each
respective occurrence of the same person’s name data in each location are
themselves an “occurrence” or b) the occurrences of the same person’s name
data, even in multiple different locations, are all considered the same
“occurrence.” The interpretation of an “occurrence” of what, or whose,
name data is susceptible to multiple plausible interpretations.
For the reasons discussed above, we determine claim 14 is ambiguous,
vague, or otherwise unclear. Accordingly, we enter a new ground of
rejection under 35U.S.C. § 112, second paragraph as to claim 14 as well as
claim 15, which depends from claim 14.
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Because we determine the claims are ambiguous, vague, or otherwise
unclear, we further determine that analyzing the Examiner’s rejection of
claim 14 under 35 U.S.C. § 103 would require us to make unreasonably
speculative assumptions concerning the meaning of the claim language,
which we decline to do.3 See In re Steele, 305 F.2d 859, 862—863 (CCPA
1962). Therefore, we pro forma reverse the Examiner’s rejection of
claim 14 under 35 U.S.C. § 103(a), as well as the rejection of claim 15,
which depends from claim 14.
DECISION
The Examiner’s rejection of claims 6—13, 17—23, 25, and 27 under 35
U.S.C. § 103(a) as being unpatentable over Routson, Lewis, and McKeon is
affirmed.
The Examiner’s rejection of claims 14 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Routson, Lewis, and McKeon is
reversed.
The Examiner’s rejection of claims 16 and 24 under 35 U.S.C.
§ 103(a) as being unpatentable over Routson and Lewis is affirmed.
The Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a) as
being unpatentable over Routson, Lewis, McKeon, and Denney is affirmed.
3 Although claim 6, from which claim 14 depends, recites the term,
“vicinity,” we addressed Appellants’ arguments directed to claim 6 because
none of those arguments requires speculation as to the meaning of a
“vicinity.” Should there be further prosecution, the Examiner should
consider whether claim 6 as recited is indefinite under 35 U.S.C. § 112,
second paragraph.
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In a new ground of rejection, we reject claims 14 and 15 under 35
U.S.C. § 112, second paragraph for indefiniteness.
TIME TO RESPOND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
19
Appeal 2017-005807
Application 12/384,098
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
37 C.F.R, $ 41.50(b)
20