Ex Parte Kogan et al

Patent Trial and Appeal Board

Oct 16, 2014

11320028 (P.T.A.B. Oct. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte SANDRA L. KOGAN and MICHAEL MULLER
___________

Appeal 2011-013002
Application 11/320,028
Technology Center 3600
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
This is a decision on rehearing in Appeal No. 2011-013002. We have
jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b).
37 C.F.R. § 41.52.

Appeal 2011-013002
Application 11/320,028

2

ISSUES ON REHEARING
Appellants raise the issues of whether it was appropriate to give no
patentable weight to a claim limitation, and whether a new ground of
rejection should have been designated.
ANALYSIS
We found in our decision that claims 1–23 were properly rejected.
Decision 10–11.
The Appellants argue the panel “elected to ignore the critical claim term
‘usage profile of application usage.’” The Appellants contend that the
panel’s holding was based on an improper reading of In re Gulack, 703 F.2d
1381 (Fed. Cir. 1983). Request 3. The Appellants also contend that this
citing of Gulack requires designating the rejection as a new ground. Request
5.
The Arguments are not commensurate with the Decision. The panel
adopted the Examiner’s findings as to how the art described this limitation,
and analyzed how the Examiner’s findings were proper. Decision 8–9. In
both instances, the panel did not ignore the limitation, but instead gave
patentable weight for the purposes of such analysis.
The panel then went on to find that even were the Examiner’s findings
improper as to the data label, the holding in King Pharmaceuticals, Inc. v.
Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed Cir 2010) would preclude giving
patentable weight to the non-functional labels of target profile and usage
profile attached to the data. As with the concern expressed in King, giving
weight to such data labels would allow the indefinite patenting of Parker’s
Appeal 2011-013002
Application 11/320,028

3

system by the simple inclusion of novel, yet functionally unrelated labelling
limitations.
Thus, we find that Appellants are incorrect both in arguing a total
absence of patentable weight and in arguing the law that was the basis for
the additional analysis. Also, because the panel found the Examiner’s
findings correct and therefore the rejection proper, we do not find it
appropriate to designate the rejection as a new ground.
CONCLUSION
Nothing in Appellants’ request has convinced us that we have
overlooked or misapprehended the law as argued by Appellants.
Accordingly, we deny the request.
DECISION
To summarize, our decision is as follows:
1. We have considered the REQUEST FOR REHEARING.
2. We DENY the request that we reverse the Examiner as to claims
1–23.
3. We DENY the request that we designate the rejection as a new
ground.

REHEARING DENIED

Appeal 2011-013002
Application 11/320,028

4

Ssc