Ex Parte Johnson et al

Board of Patent Appeals and Interferences

Apr 29, 2010

10157603 (B.P.A.I. Apr. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN C. JOHNSON and SHANE R. KONSELLA
____________

Appeal 2006-003134
Application 10/157,603
Technology Center 2100
____________

Decided: April 29, 2010
____________

Before JOHN A. JEFFERY, JOSEPH L. DIXON, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

I. STATEMENT OF THE CASE
Appellants filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”) for reconsideration of our Decision
mailed November 29, 2006 (hereinafter “Decision”). The Examiner rejected
claims 1-37 under 35 U.S.C. § 102 as being anticipated by Sahota. We
reversed the rejection of claims 1-12, 17-30, and 32-37 under 35 U.S.C. §
102. We sustained the rejection of claims 13-16 and 31 under 35 U.S.C. §
102. We entered a new ground of rejection against independent claim 1.
Appellants request rehearing of our Decision. First, Appellants request
rehearing of our new ground of rejection. Second, Appellants request
rehearing of our affirmance of claims 13-16 and 31 under 35 U.S.C. § 102.
We deny the request to modify our decision in the Request for
Rehearing.

A. INVENTION
The invention at issue on appeal relates to:

[a] document formatting system receives an electronic
document and processing instructions from a device. The
processing instructions contain information regarding how to
process the electronic document. The electronic document is
reformatted based on the information contained in the
processing instructions. The reformatted document is then
provided to a destination device, such as a printer or display
device, which renders or otherwise processes the reformatted
document.

(Abstract.)
B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A processor-readable medium comprising processor-executable
instructions configured for:

receiving an electronic document from a device;
Appeal 2006-003134
Application 10/157,603

4

receiving processing instructions from the device, the processing
instructions being associated with the electronic document and
containing information regarding how to process the electronic
document;

reformatting the electronic document pursuant to the information
contained in the processing instructions; and

providing the reformatted electronic document to a destination device.

C. REFERENCE
The Examiner relies on the following reference as evidence:

Sahota 2001/0056460 A1 Dec. 27, 2001

II. ISSUES
Issue 1:
Did the Board err in the new ground of rejection of independent claim
1 or misapprehend or overlook any points identified by Appellants in the
Request for Rehearing?

Issue 2:
Did the Board misapprehend or overlook any points identified by
Appellants with respect to claims 13-16 and 31?

Appeal 2006-003134
Application 10/157,603

5
III. PRINCIPLES OF LAW
§ 41.52 Rehearing.
(a)(1) Appellant may file a single request for rehearing within
two months of the date of the original decision of the Board. No
request for rehearing from a decision on rehearing will be
permitted, unless the rehearing decision so modified the
original decision as to become, in effect, a new decision, and
the Board states that a second request for rehearing would be
permitted. The request for rehearing must state with
particularity the points believed to have been misapprehended
or overlooked by the Board. Arguments not raised in the briefs
before the Board and evidence not previously relied upon in the
brief and any reply brief(s) are not permitted in the request for
rehearing except as permitted by paragraphs (a)(2) and (a)(3) of
this section. When a request for rehearing is made, the Board
shall render a decision on the request for rehearing. The
decision on the request for rehearing is deemed to incorporate
the earlier opinion reflecting its decision for appeal, except for
those portions specifically withdrawn on rehearing, and is final
for the purpose of judicial review, except when noted otherwise
in the decision on rehearing.
(2) Upon a showing of good cause, appellant may present a new
argument based upon a recent relevant decision of either the
Board or a Federal Court.
(3) New arguments responding to a new ground of rejection
made pursuant to § 41.50(b) are permitted.
37 C.F.R. § 41.52.

Appeal 2006-003134
Application 10/157,603

6
IV. ANALYSIS
I. New ground of rejection against claim 1

Appellants state that:
Sahota’s disclosure is not at all easy to follow let alone understand. In
reaching the conclusion that Claim 1 reads on Sahota, the Board
appears to have only relied upon paragraphs [0034] and [0035].
These paragraphs are taken from an introductory portion of Sahota’s
detailed description. The discussion in those paragraphs can only be
understood in the context of Sahota’s disclosure as a whole.

(Request 2-3.) Appellants subsequently go on to discuss paragraphs [0073]-
[0076], [0044] and [0047]. (Request 3).

We agree with Appellants contention that the disclosure of Sahota is
“not at all easy to follow let alone understand” as Appellants contend. Yet,
Sahota has headings to subdivide different portions of the disclosure for ease
of understanding. For example, paragraph [0030] begins with "Exemplary
Syndication System," paragraph [0038] begins with "Basic Syndication
Operation," and the discussion of paragraphs [0073]-[0076] begins with
"Syndication Server." These headings delineate different sections and help
identify the different embodiments which are being disclosed in each
section.
The statements made in our new ground of rejection in our Decision
were limited solely to the discussion in the reference to paragraphs [0034]-
[0035] which begins with "[i]n one embodiment, syndication server 110
transforms . . . ." (emphasis added.) Sahota discloses many embodiments
and generalized teachings. Our findings in our Decision were limited to this
Appeal 2006-003134
Application 10/157,603

7
single specific embodiment which we found to teach the claimed invention
of independent claim 1.
Therefore, Appellants' arguments relying on different portions of the
reference that teach other embodiments which do not show the claimed
invention are irrelevant to our rejection and do not identify any points
misapprehended or overlooked in our Decision. Furthermore, Appellants'
arguments and citations to the syndication server and the generalized
discussions in Sahota of the operation of the syndication server does not
show that we overlooked or misapprehended any points in our Decision, as it
relates to the specific teachings in paragraphs [0034]-[0035]. Therefore,
Appellants have not identified any errors in our new ground of rejection or
identified any points which we misapprehended or overlooked in our
Decision in our new ground of rejection. Therefore, we deny Appellants'
request to modify the rejection of the independent claim 1.

II. Sustained rejection of claims 13-16 and 31

With respect to independent claims 13-16 and 31, Appellants contend
that "the Board's decision to sustain the rejection stems from the Board's
misapprehension of Sahota’s teachings as discussed above with respect to
claim 1." (Request 4.) We disagree with Appellants. Our Decision at page 6
clearly identifies a difference in scope of language between independent
claim 1 and independent claim 13.
We stated:
we find the Examiner's correlation is sufficient to show that
Sahota teaches the invention as recited in independent claim 13
and has established a prima facie case of anticipation.
Appeal 2006-003134
Application 10/157,603

8
Therefore, we look to Appellants' briefs for rebuttal. We find
only a brief argument at pages 11-12 of the Appeal brief and no
argument in the Reply Brief. Therefore, we find that
Appellants have not shown error . . . .

(Decision 6).
Since Appellants' originally presented argument was based upon "the
same device" argument which we found was not supported by the language
of independent claim 13, Appellants' argument was unpersuasive of error in
the Examiner's proffered showing of anticipation.
In the Request for Rehearing, Appellants "must state with particularity
the points believed to have been misapprehended or overlooked by the
Board. Arguments not raised in the briefs before the Board and evidence not
previously relied upon in the brief and any reply brief(s) are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2) and (a)(3)
of this section" pursuant to § 41.52(a).
In the Request for Rehearing, Appellants rely upon their arguments
advanced with respect to the new ground of rejection where they further
embellished and elaborated upon their arguments in responding to the new
ground of rejection. But with respect to rejections which are merely
sustained, Appellants' arguments in the Request for Rehearing must identify
“points believed to have been misapprehended or overlooked by the Board.”
The Board does not misapprehend or overlook points which have not been
previously raised or argued before the Board. Therefore, Appellants' further
embellishments in response to the new ground of rejection go well beyond
"only a brief argument at pages 11-12 of the appeal brief and no argument in
the reply brief" as we identified and considered in our Decision. We
considered the merits of Appellants' originally presented arguments in the
Appeal 2006-003134
Application 10/157,603

9
Brief and the Reply Brief and found them unpersuasive of the error in the
Examiner showing of anticipation.
Additionally, Appellants' present showing in the Request for
Rehearing (Request 4-5) provides no correlation to the instant claim
language of independent claim 13 and again appears to rely upon the "same
device" argument which we find has no support in the language of
independent claims 13. Therefore, it is not persuasive of error in the
Examiner's showing of anticipation.

VI. CONCLUSION
For the aforementioned reasons, Appellants have identified no points
which the Board misapprehended or overlooked in our Decision. Appellants
have identified no error in the Board's new ground of rejection of
independent claim 1.

VII. ORDER
We deny Appellants' request to modify our decision.

REQUEST FOR REHEARING-DENIED

erc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins, CO 80527-2400