10404297 (P.T.A.B. Dec. 13, 2013)

Ex Parte Kaminsky et al

Patent Trial and Appeal BoardDec 13, 2013

10404297 (P.T.A.B. Dec. 13, 2013)

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. 10/404,297 03/31/2003 David Louis Kaminsky RSW920030019US1 (087) 7735 46320 7590 12/16/2013 CAREY, RODRIGUEZ, GREENBERG & O''''KEEFE, LLP STEVEN M. GREENBERG 7900 Glades Road SUITE 520 BOCA RATON, FL 33434 EXAMINER LEWIS, ALICIA M ART UNIT PAPER NUMBER 2167 MAIL DATE DELIVERY MODE 12/16/2013 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 DAVID LOUIS KAMINSKY and DAVID M. OGLE ________________ Appeal 2011-000034 Application 10/404,297 Technology Center 2100 ________________ Before ALLEN R. MacDONALD, ST. JOHN COURTENAY III, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a paper under 37 C.F.R. § 41.52(a)(1) requesting that we reconsider our Decision of September 25, 2013, wherein we affirmed the Examiner’s rejection of claims 1-6. We have reconsidered our Decision in light of Appellants’ comments in the request, and have found no errors. We, therefore, decline to change the Decision. Appellants’ request is denied. Appeal 2011-000034 Application 10/404,297 2 DISCUSSION Appellants argue “in both Wyse and Bahl the ‘distance’ for determining the closest sites or nearest fixed resource is calculated based on the physical locations of the user and the sites or fixed resources. In comparison, in the Applicants’ claimed invention the ‘distance’ does not refer to physical distance.” Reh’g Req. 2. At the outset, we cannot have overlooked or misapprehended an argument that was not made in the Principal Brief or Reply Brief. Appellants have not indicated where in the appeal brief(s) this argument was initially raised. Therefore, Appellants’ argument is untimely under our rules of procedure. See 37 C.F.R. § 41.52(a)(1). Even if our reviewing court were to find Appellants’ argument on rehearing to be timely, we do not find it persuasive for the reasons discussed below. During examination of a patent application, a claim is given its broadest reasonable construction “in light of the specification 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 omitted) (internal quotation marks omitted). Additionally, “[t]hough understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.” See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Appellants’ Specification (¶13 (emphasis added)) describes: “intracontact relationships can be computed which can include geographic distances, rankings of authority, departmental distinctions and the like.” Appeal 2011-000034 Application 10/404,297 3 Appellants’ Specification (¶15 (emphasis added)) states “a contact is closest relationally to the anchor contact, rather than merely geographically.” Therefore, we find distance based on physical locations is consistent with Appellants’ Specification. Accordingly, Appellants’ arguments are not convincing of any error in our original Decision regarding Wyse’s teaching of the recited “computing a distance” (Claim 1). Dec. 6 (citing Wyse, col. 25, claim 1, step(e)(2)) (“determining . . . the distance between the user’s location and the identified site”). Appellants further argue “Bahl only teaches a hierarchy based on the geographical locations of the fixed resources, not a logical contact hierarchy as in the Appellants’ invention.” Reh’g Req. 3. We conclude a broad but reasonable interpretation of the contested claim language does not preclude the recited logical contact hierarchy from being a hierarchy based on the geographical locations of fixed resources. Cf. Spec. ¶¶13, 15 discussed supra. Appellants’ further argument is not persuasive of any error in our original Decision which finds Bahl’s hierarchical directory structure for fixed resources teaches or suggests the recited logical contact hierarchy. Dec. 6-7 (citing Bahl, Abstract, ¶¶ 10, 13, 14). CONCLUSION Based on the record before us now and in the original appeal, we have granted Appellants’ request to the extent that we have reconsidered our Decision, but we deny Appellants’ request to make any changes in our Decision. On this record, we are not persuaded the Examiner’s claim Appeal 2011-000034 Application 10/404,297 4 interpretation is overly broad, unreasonable, or inconsistent with Appellants’ Specification. It is our view that Appellants have not identified any points the Board has misapprehended or overlooked. The request for rehearing is denied. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED tj