Ex Parte Jung et alDownload PDFPatent Trial and Appeal BoardNov 25, 201311901240 (P.T.A.B. Nov. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/901,240 09/13/2007 Edward K.Y. Jung SE1-1067-US 4563 80118 7590 11/26/2013 Constellation Law Group, PLLC P.O. Box 580 Tracyton, WA 98393 EXAMINER VILLECCO, JOHN M ART UNIT PAPER NUMBER 2661 MAIL DATE DELIVERY MODE 11/26/2013 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 EDWARD K.Y. JUNG, ROYCE A. LEVIEN, ROBERT W. LORD, MARK A. MALAMUD, and JOHN D. RINALDO JR. ____________________ Appeal 2012-004260 Application 11/901,240 Technology Center 2600 ____________________ Before THU A. DANG, JAMES R. HUGHES, and JEFFREY S. SMITH, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Pursuant to 37 C.F.R. § 41.52, Appellants filed a Request for Rehearing (Req. Reh’g)1 alleging a misapprehension or oversight by this Board in a Decision on Appeal mailed September 3, 2013. In that Decision the Board affirmed the Examiner’s rejection of claims 72, 73, 75-99, 101, 103, 104, and 106 under 35 U.S.C. § 103(a). 1 We refer to Appellants’ Request for Rehearing (“Req. Reh’g.”) filed November 4, 2013; Appeal Brief (“Br.”) filed July 27, 2011; Supplemental Appeal Brief (“Supp. App. Br.”) filed October 10, 2011; and our Decision on Appeal (“Dec.”) mailed September 3, 2013. Appeal 2012-004260 Application 11/901,240 2 ANALYSIS In a Request for Rehearing received November 4, 2013, Appellants contend that: 1) the Board’s claim interpretation impermissibly broadened the claims (Req. Reh’g. 2-4); 2) the Board’s claim interpretation constitutes an improper new ground of rejection (Req. Reh’g. 4-5); and 3) the Board’s and the Examiner’s findings fail to meet the “KSR Standard” (Req. Reh’g. 5-6). We have carefully reviewed the Decision in light of Appellants’ allegations of error. We find Appellants’ contentions to be without merit and we decline to make any substantive change to our Decision. With respect to Appellants’ first point of error, Appellants contend that the Board misapprehends or misconstrues “sending a request” (claim 72), in that: The Board has alleged that the claimed “request” is essentially generic, unbounded by the words of the claim following it . . . . In reading those words out of the claim, the Board manufactured a way to avoid the reality that the cited portions of the Cragun reference describe only requests for “permission” and a “request to register” with an ad hoc network . . . . . . . . The difference between the specific request of the claims and the two types of requests in Cragun is ignored by the Board through its interpretation. The Board justifies this broadening of the claim to make it appear closer to Cragun by asserting that the ignored words are “statements of intended use” and “non-functional descriptive language.” Both of these assertions are incorrect. (Req. Reh’g. 3.) As indicated in the Decision, the Board broadly but reasonably interpreted the claim language – “sending a request from a second image capture device to a first image capture device” (claim 72) – as Appeal 2012-004260 Application 11/901,240 3 sending data between devices (from a second device to a first device). (Dec. 7-8.) The Board further broadly but reasonably interpreted the claim language – “for the first image capture device to send a first image to the second image capture device” (claim 72) – as “functional” language1 relating an intended purpose of the data (request) to be sent between devices, i.e., what the data ultimately causes to happen. (Dec. 6-8.) Contrary to Appellants’ arguments, the Board did not broaden the claim – we merely interpreted it giving the claim language its “broadest reasonable interpretation consistent with the [S]pecification” in accordance with our mandate that “claim language should be read in light of the [S]pecification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations and internal quotation marks omitted). Appellants chose to draft the claim such that the distinction over the prior art lies in the data contained in the request and its purpose, the Board simply clarified the breadth of the claim language. Although Appellants make several additional arguments concerning the Board’s interpretation, statements of intended use or purpose, 1 The “sending” of “a first image to the second image capture device” from “the first image capture device” (claim 72) (the “second sending”) is not affirmatively recited in the claim and, therefore, is functional in nature – it is not a positively recited method step. Here, the second sending need not actually occur – only the sending of the request (the purpose of which is to request the second sending). While claims are not necessarily indefinite for using such functional language, where a claim fails “to provide a clear-cut indication of the scope of subject matter embraced by the claim,” the claim may run afoul of § 112, second paragraph. Halliburton Energy Servs. v. M–I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (citation and internal quotation marks omitted). Appeal 2012-004260 Application 11/901,240 4 and non-functional descriptive material (Req. Reh’g. 3-4), none of these arguments persuade us that we misapprehended any points of law or fact in our original Decision. With respect to Appellants’ second point of error, Appellants contend that the Board’s claim interpretation constitutes an improper new ground of rejection. (Req. Reh’g. 4-5.) It is well-established that the Board may affirm an examiner’s rejection so long as appellants have had “a fair opportunity to react to the thrust of the rejection.” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (quoting In re Kronig, 539 F.2d 1300, 1302–03 (CCPA 1976)) (internal quotation marks omitted). See In re Adler, 723 F.3d 1322, 1328 (Fed. Cir. 2013). Appellants’ misconstrue the relevant law. As explained in the Decision, Appellants, in their Appeal Brief, merely argued that the claims differed from Cragun and Bates, and chose not to provide any detailed explanation of this difference. (Dec. 9-10.) The Board understood Appellants to argue that the claims should be read to distinguish the recited method from the prior art because of the data contained in the request. In response to this argument, the Board provided its detailed interpretation of the claim (Dec. 6-8) as well as explaining the Examiner’s findings that Cragun broadly describes sending a request to share images and ultimately sharing images if a device joins the network (Dec. 8). The Board’s claim interpretation and thorough response did not change the thrust of the Examiner’s rejection and Appellants had a fair opportunity to respond. Thus, Appellants have not specifically explained how we “misapprehended” the relevant law and, therefore, have not pointed out any particular points overlooked or misapprehended by the Board in its Decision. Appeal 2012-004260 Application 11/901,240 5 With respect to Appellants’ third point of error, Appellants contend the Board’s (and the Examiner’s) findings fail to meet the “KSR Standard.” (Req. Reh’g. 5-6.) Here, Appellants merely reiterate the arguments made in their Appeal Brief (Br. 36-37) in their Request for Reconsideration (Req. Reh’g. 5-6). Specifically, Appellants contend that the Examiner’s rationale for combining Cragun and Bates “is a conclusory statement that falls short of the required ‘articulated reasoning with some rational underpinning’ of KSR.” (Req. Reh’g. 6.) As we explained in our Decision, the Examiner provided a proper rationale in that the combination improved functionality, which we found to have “some rational underpinning.” (Dec. 9.) We further explained that one skilled in the art would have been able to combine the techniques taught by Bates, authenticating a device utilizing a captured image, and the techniques taught by Cragun, sharing images among devices attached to a network. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Again, Appellants have not specifically explained how we “misapprehended” the relevant law and, therefore, have not pointed out any particular points overlooked or misapprehended by the Board in its Decision. For these reasons, we find Appellants’ arguments unpersuasive of error, either in our Decision or the Examiner’s rejection, and we decline to modify our Decision. CONCLUSION In view of the foregoing discussion, we deny Appellants’ request for rehearing. We decline to modify our original Decision. REQUEST FOR REHEARING – DENIED Appeal 2012-004260 Application 11/901,240 6 msc Copy with citationCopy as parenthetical citation