Ex Parte Lundberg et al

Patent Trial and Appeal Board

Sep 27, 2017

13310452 (P.T.A.B. Sep. 27, 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.
13/310,452 12/02/2011 Steven W. Lundberg 3431.022US1 4596
21186 7590 09/29/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
THAI, HANH B
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
09/29/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN W. LUNDBERG and TYLER L. NASIEDLAK
Appeal 2017-006642
Application 13/310,452
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—21, which constitute all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as a new ground of rejection
under 37 C.F.R. § 41.50(b) (2015).
1 The real party in interest identified by Appellants is Black Hills IP
Holdings, LLC. App. Br. 2.
Appeal 2017-006642
Application 13/310,452
STATEMENT OF THE CASE
The Invention
Appellants’ disclosed invention relates to mapping patent claims to a
patent concept. Spec. Title, Abstract. In a disclosed embodiment, “when
mapping claims . . . , a user is allowed to highlight the claim terms
associated with a scope concept across a number of claims.” Spec. 172.
Claim 1, which is illustrative, reads as follows:
1. A computer implemented method comprising:
maintaining a database of patent portfolios and a database
of patents, each patent stored in the database of patents
associated with one or more patent portfolios stored in the
database of patent portfolios;
receiving a search query associated with a first patent
portfolio;
searching the first portfolio as a function of the search
query;
generating search results, the search results including one
or more patent claims associated with the search query;
mapping the one or more patent claims to a patent concept;
highlighting any claim terms associated with a patent
scope across a number of claims;
storing the associations; and
displaying the one or more mapped patent claims and the
one or more highlighted claim terms associated with a patent
scope across a number of claims to a user in a single graphic user
interface, wherein displaying the one or more mapped patent
claims in the single graphic user interface includes presenting a
list of target entities owning a reference cited against the one or
more mapped patent claims.
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The Rejections
Claims 1—21 stand provisionally rejected for non-statutory
obviousness-type double patenting over (1) claims 1—21 of copending
Applications 13/310,322 and 13/310,368; and (2) claims 1—9 of copending
Applications 12/605,030, 13/309,200, 13/310,279, and 13/253,936.
See Final Act. 4—10.
Claims 1—21 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. See Ans. 2—6.
Claims 1—21 stand rejected under 35 U.S.C. § 103(a)2 as being
unpatentable over Lundberg et al. (US 2007/0198578 Al; Aug. 23, 2007)
(hereinafter Lundberg ’578), Lindberg et al. (US 2009/0006328 Al; Jan. 1,
2009) and Lundberg et al. (US 2010/0131513 Al; May 27, 2010)
(hereinafter Lundberg ’513). See Final Act. 10—18.
The Record
Rather than repeat the arguments here, we refer to (1) the Briefs
(“App. Br.” filed Oct. 17, 2016; “Reply Br.” filed Feb. 28, 2017) and the
Specification (“Spec.” filed Dec. 2, 2011) for the positions of Appellants;
and (2) the Final Office Action (“Final Act.” mailed Dec. 15, 2015) and
Examiner’s Answer (“Ans.” mailed Dec. 28, 2016) for the reasoning,
findings, and conclusions of the Examiner. Only those arguments actually
made by Appellants have been considered in this decision. Arguments that
2 All prior art rejections are under the provisions of 35 U.S.C. in effect prior
to the effective date of the Leahy-Smith America Invents Act of 2011.
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Appellants did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Related Appeals
Appellants did not identify any related appeals. See App. Br. 3.
However, there are at least twenty-nine (29) related appeals, which are:
Anneal No. Annlication No. Decided/Status
2009-005709 10/128,141 Decision mailed Mar. 23, 2010
2009-006404 10/874,486 Decision mailed Aug. 2, 2010
2011-009966 11/061,383 Decision mailed Jan. 31, 2014
2012-004166 11/061,312 Decision mailed Nov. 4, 2014
2015-000319 13/309,080 Decision mailed May 27, 2016
2015-000321 13/309,127 Decision mailed July 26, 2017
2015-003180 13/309,039 Decision mailed Sept. 23, 2016
2015-007422 13/309,146 Decision mailed June 1, 2016
2016-000912 13/309,060 Decision mailed Aug. 25, 2017
2016-001687 11/888,632 Decision mailed Jan. 19, 2017
2016-002121 13/309,200 Decision mailed Aug. 28, 2017
2016-002680 13/310,279 Decision mailed Aug. 30, 2017
2016-002792 12/605,030 Decision mailed Sept. 1, 2017
2016-006797 13/310,368 Decision mailed Aug. 30, 2017
2016-007186 13/573,803 Decision mailed July 28, 2017
2016-007415 13/464,598 Decision mailed July 31, 2017
2016-007623 13/408,877 Decision mailed Sept. 6, 2017
2016-007787 13/310,322 Decision mailed Sept. 20, 2017
2016-008030 13/253,936 Decision mailed Aug. 3, 2017
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Application 13/310,452
2017-000280 13/408,917 Decision mailed Sept. 12, 2017
2017-000386 11/098,761 Pending
2017-002337 14/010,376 Decision mailed Sept. 8, 2017
2017-003702 14/483,903 Pending
2017-003815 14/094,542 Decision mailed Sept. 18, 2017
2017-004158 14/010,391 Pending
2017-004159 14/010,380 Pending
2017-004188 14/010,400 Pending
2017-006390 13/409,189 Pending
2017-011247 13/253,811 Pending
PROVISIONAL DOUBLE PATENTING REJECTIONS
Because the provisional double patenting rejections (Final Act. 16—
18) are not ripe for decision, we decline to reach them. See Ex parte
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential); see also Ex
parte Jerg, No. 2011-000044, 2012 WL 1375142, at *3 (BPAI 2012)
(expanded panel) (informative) (“Panels have the flexibility to reach or not
reach provisional obviousness-type double-patenting rejections.”).
ISSUES
The issues presented by Appellants’ arguments are as follows:
Does the Examiner err in finding claims 1—21 are directed to non-
statutory subject matter under 35U.S.C. § 101?
Does the Examiner err in finding the combination of Lundberg ’578,
Lindberg, and Lundberg ’513 teaches or suggests “displaying the one or
more mapped patent claims in the single graphic user interface includes
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presenting a list of target entities owning a reference cited against the one or
more mapped patent claims,” as recited in claim 1 ?
ANALYSIS
Rejection under 35 U.S.C. § 101
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 71—73 (2012), the Supreme Court established an analytical
framework under § 101 to distinguish patents that claim patent-ineligible
laws of nature, natural phenomena, and abstract ideas—or add too little to
such underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. To determine whether claims are
patent eligible under § 101, we apply the Supreme Court’s two-step test
articulated in Alice Corp. Pty. v. CLS Bank International, 134 S. Ct. 2347
(2014): (1) “determine whether the claims at issue are directed to a patent-
ineligible concept,” such as an abstract idea, id. at 2355 (emphasis added);
and (2) if the claims are directed to a patent-ineligible concept, “consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application,” id.
Prima Facie Case
Appellants’ contention that the Examiner has failed to make a prima
facie case of unpatentability is unavailing. See Reply Br. 2—\. Appellants’
argue the Examiner has failed to follow the guidance materials of the United
States Patent and Trademark Office (USPTO) (specifically (1) July 2015
Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015);
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and (2) Recent Subject Matter Eligibility Decisions, Memorandum, (Nov. 2,
2016)). See id. However, “[f]ailure of Office personnel to follow the
USPTO’s guidance materials is not, in itself, a proper basis for either an
appeal or a petition.” May 2016 Subject Matter Eligibility Update, 81 Fed.
Reg. 27,381, 27,382 (May 6, 2016). Rather, “[^ejections will continue to be
based upon the substantive law, and it is these rejections that are
appealable.” Id.
The Examiner has a duty to give notice of the rejection with sufficient
particularity to give Appellants a fair opportunity to respond to that
rejection. See 35 U.S.C. § 132(a). As the Federal Circuit has clarified,
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
“notifying] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection.” Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Here, we find the Examiner’s rejection satisfies the initial burden of
production by identifying that the claims describe the abstract ideas
identified by the courts, such as intermediated settlement in Alice and risk
hedging in Bilski v. Kappos, 561 U.S. 593 (2010) (part 1 of the Alice
analysis), and that the remainder of the claims do not include significantly
more than the abstract idea because the generically-recited computer
elements are well-understood, routine, and conventional, and therefore do
not add a meaningful limitation to the abstract idea (part 2 of the Alice
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analysis). See Ans. 3—6. Accordingly, the Examiner has set forth the
statutory basis for the rejection, namely 35 U.S.C. § 101, concluded that the
claimed invention is directed to a judicial exception to § 101, namely an
abstract idea, and explained the rejection in sufficient detail to permit
Appellants to respond meaningfully. Thus, we find that the Examiner set
forth a prima facie case of patent-ineligibility.
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355 (emphasis added). “[T]he ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
[Specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)) (second bracket in original).
The record supports the Examiner’s finding that the focus of the
invention is an abstract idea. According to the Specification, tools that
identify patents typically provide a large number of results that do not allow
a quick relevancy determination. Spec. ^fl[ 4, 6. Appellants’ invention
proposes an interface that allows a user to highlight claim terms associated
with a scope concept so that other claim terms are mapped more quickly.
Id. 172.
Appellants argue the claims rejected under § 101 as a group. See
Reply Br. 2—A. We, therefore, select independent claim 1 as the
representative claim for this group, and claims 2—21 stand or fall with claim
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1. 37 C.F.R. § 41.37(c)(l)(iv). Here, claim 1 requires, in essence,
maintaining a database of patent portfolios and patents, searching a first
patent portfolio as a function of a received search query, generating search
results including a patent claim, mapping the patent claim to a patent
concept, highlighting claim terms associated with a patent scope, storing the
associations, and displaying the mapped patent claim and highlighted claim
term. Accordingly, in the context of the Specification discussed above,
claim 1 ’s “character as a whole” is directed to a more efficient approach to
finding related search results based on received user input.
“An idea of itself is not patentable.” Diamond v. Diehr, 450 U.S. 175,
185 (1981) (citation omitted); see also Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (“[MJental processes, and abstract intellectual concepts are not
patentable.”). It is well settled that if a method can be performed by human
thought alone, or by a human using pen and paper, it is merely an abstract
idea and not patent-eligible under § 101. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
Here, we agree with the Examiner (Final Act. 3) that claim 1 as a
whole is directed to an abstract idea. Applying Alice step one, we find under
a broad but reasonable interpretation, nothing precludes performing the
operations mentally or by using pen and paper. That is, a human can
mentally maintain (or use pen and paper to do so) a collection of patent
portfolios and patents. Further, a human can mentally search (or use pen and
paper to do so) a first portfolio as a function of a received search query, and
then generate search results including a patent claim associated with a search
query. For example, a human can mentally remember a specific claim term
and either (1) remember which patent applications include that same specific
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claim term or (2) physically search files in a folder to find the patent
applications. Additionally, a human can mentally map (or use pen and paper
to do so) the patent claim to a patent concept. Further, a human can
mentally highlight (or use pen and paper to do so) any claim terms
associated with a patent scope across a number of claims, and store the
associations. Lastly, a human can use pen and paper to display the mapped
patent claim and highlighted claim terms associated with a patent scope
across a number of claims on a piece of paper, wherein displaying includes
presenting a list of target entities owning a reference cited against the
mapped patent claim.
That claim 1 adds a “database” and a “single graphic user interface”
does not change our conclusion. Mental processes remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. See CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in GottschalkP);
see also Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266,
1279 (Fed. Cir. 2012) (“Using a computer to accelerate an ineligible mental
process does not make that process patent-eligible.”).
Moreover, the claim steps of (1) receiving a search query; (2)
analyzing the generated claims associated with the search query by (a)
mapping the claims to a concept and (b) highlighting any claim terms
associated with a patent scope; and (3) displaying the mapped patent claims
and the highlighted claim terms, collectively, are no more than the
collection, analysis, transmission, and display of data, which has been found
to be an abstract idea. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
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Application 13/310,452
1350 (Fed. Cir. 2016). Filtering search results using selectable categories is
also an abstract idea. See Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927,
939 (N.D. Cal. 2015), aff’d, 670 F. App’x 704 (Fed. Cir. 2016).
Therefore, claim 1 is directed to an abstract idea under the first step of
the analysis.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 78). The Supreme Court describes the second step of this
analysis as “a search for an inventive concept—i.e., an element or
combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself.” Id. (brackets in original) (internal quotations omitted).
Appellants’ liken the claims to those at issue in McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). Reply Br. 4.
In particular, Appellants contend that, like the McRO claims, “the instant
claims use rules to allow the computer to provide patent mapping functions
that the computer could not previously perform.” Id.
We disagree. Our reviewing court has noted that “some
improvements in computer-related technology when appropriately claimed
are undoubtedly not abstract” and that “[sjoftware can make non-abstract
improvements to computer technology just as hardware improvements can.”
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Enfish 822 F.3d at 1335. The court found that the “plain focus of the
claims” in Enfish was “on an improvement to computer functionality itself,
not on economic or other tasks for which a computer is used in its ordinary
capacity.” Id. at 1336.
In Appellants’ claim 1, the rules applied (i.e., mapping generated
search results to a patent concept, highlighting claim terms, and displaying
the results) amount to simply the rules of finding related search results based
on received user input. The rules do not effect an improvement to computer
functionality itself, but, instead, focus on a process (i.e., finding and
presenting relevant search results) that qualifies as an abstract idea, for
which computers are invoked merely as a tool.
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Therefore, we are not persuaded that the Examiner erred in rejecting claim 1,
and claims 2—21, not argued separately with particularity.
Rejection under 35 U.S.C. § 103
Appellants contend the Examiner erred in finding the combination of
Lundberg ’578, Lindberg, and Lundberg ’513 teaches or suggests “wherein
displaying the one or more mapped patent claims in the single graphic user
interface includes presenting a list of target entities owning a reference cited
against the one or more mapped patent claims,” as recited in claim 1. App.
Br. 14—16. In particular, Appellants argue although paragraph 17 of
Lindberg recites an “entity,” Lindberg does not disclose “a list of target
entities owning a reference cited against the one or more mapped patent
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Application 13/310,452
claims,” as recited in claim 1. Id. at 15—16 (citing Lindberg 117).
Appellants further argue although Figure 2G and paragraph 22 of Lindberg
discloses (1) grouping contacts together to find commonalities; and (2)
displaying a list of places that a group of contacts has visited, Lindberg does
not disclose “presenting a list of target entities owning a reference cited
against the one or more mapped patent claims,” as recited in claim 1. Id. at
16 (emphasis in original) (citing Lindberg Figure 2G; 122).
We are not persuaded of error. Turning to the rejection, we find no
error in the Examiner’s uncontested finding that Lundberg ’578 at least
suggests displaying (1) highlighted claim terms associated with a patent
scope across a number of claims; and (2) a mapped patent claim and its
corresponding entities owning the reference included in the mapped subject
matter. Final Act. 11—12 (citing Lundberg ’578 17, 23, 26, 28, 32, 36, 40,
50-51,58, 62-64).
A portion of Lundberg ’578’s Figure 7G is illustrative and reproduced
below:
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Application 13/310,452
Reproduction of a portion of Lundberg ’578’s Figure 7G
Figure 7G of Lundberg ’578 illustrates a user interface (760) that
displays patent mappings (764) of a claim (762) and its limitations. Id. 1 60.
Lundberg ’578 claims benefit to provisional application 60/703,413.
Lundberg ’578 11. Figure 7G of Lundberg ’578 corresponds to Figure 7G
of the ’413 provisional application. Solely for purposes of readability, the
same portion of Figure 7G of the ’413 provisional application is reproduced
below:
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Application 13/310,452
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Reproduction of a portion of Figure 7G in Lundberg’s provisional
application
Lundberg ’578 teaches a claim’s individual limitations of interest are
mapped to reusable limitation concepts and highlighted. Id. 126. In that
sense then, Figure 7G of Lundberg ’578 at least suggests that the claim’s
(762) individual mapped limitations of interest are highlighted. Thus, Figure
7G of Lundberg ’578 at least suggests displaying a mapped patent claim and
highlighted claim limitations associated with a patent scope across a number
of claims to a user.
Lundberg ’578 further discloses the user interfaces of Figures 7A—7G
as “claim mapping screens for performing mapping on claims in a single
patent.” Id. 162. Given that the claim “mapping screens create a report on
features of the patent, such as [the] title[,] issuance date[,] and inventors”
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(Id. 1 62 (emphasis added)), Lundberg ’578 at least suggests that the user
interfaces of Figures 7A—7G display the single patent’s inventors.
Nor do we find error in the Examiner’s uncontested finding that
Lundberg ’513 at least suggests displaying a reference cited against a
mapped patent claim. Final Act. 12—13 (citing Lundberg ’513 132); Ans. 7
(citing Lundberg ’513 1 63). In an example embodiment, Lundberg ’513’s
visualization engine displays patents owned by competitors that first
introduced a patent concept. Id. 26, 63; Figure 16. In that sense then,
Lundberg ’513 displays a patent cited against a patent claim mapped to the
same patent concept. Accordingly, it would have been obvious for the user
interfaces of Lundberg ’578 to include the patent’s competitors (in addition
to the patent’s inventors) as taught by Lundberg ’513 “to further maximize
the value of concepts to patent claims.” Id. 1 62.
Appellants’ contentions regarding Lindberg’s alleged shortcomings
(see App. Br. 15—16) are unpersuasive, because they are not germane to the
limited purpose for which Lindberg was cited, namely displaying Lundberg
’578’s mapped entities (i.e., Lundberg ’578’s mapped patent claim,
highlighted claim limitation, and the patent’s inventors), as discussed above,
in a single graphic user interface (see Final Act. 12). Moreover, merely
integrating Lundberg ’578’s displayed mapped entities into a single graphic
user interface is an obvious design choice. Cf. In re Larson, 340 F.2d 965,
968 (CCPA 1965) (“the use of a one piece construction instead of the
structure disclosed in [the prior art] would be merely a matter of obvious
engineering choice.”).
Nor do we find Appellants’ contention that Lindberg is non-analogous
art persuasive. See App. Br. 16—18. “The identification of analogous prior
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art is a factual question.” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)
(citing In re GPAC, 57 F.3d 1573, 1577 (Fed. Cir. 1995)). In an obviousness
analysis,
[t]wo separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004)). “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” Klein, 647 F.3d at 1348 (quoting In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992)) (emphasis added).
Lindberg teaches allowing a user of a device to produce a set of
commonalities from entries in a list. Lindberg 116. We find a reference
that teaches a technique to display multiple entities on a single graphical
user interface (Id 119) would logically commend itself to a skilled person
faced with “the problem of providing a concise patent analysis display to a
user” (App. Br. 17). Accordingly, we find that Lindberg is analogous art
with regard to Appellants’ invention because Lindberg is reasonably
pertinent to the problem faced by the Appellants. We note that, although we
do not necessarily agree that Lindberg is not in Appellants’ field of
endeavor, we need not reach that question.
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Appellants do not persuade us of error in the rejection of claim 1
under 35 U.S.C. § 103(a). Accordingly, we sustain the rejection of (1) claim
1; (2) independent claims 11 and 21, which are argued relying on the
arguments made for claim 1 (see App. Br. 16); (3) claims 2—10 and 12—20,
which variously depend, directly or indirectly, from claims 1,11, and 21,
and were not separately argued with particularity (see id.).
DESIGNATION OF NEW GROUNDS OF REJECTION
Although the overall thrusts of our patent-eligibility and obviousness
analyses are the same as the Examiner’s reasoning, we have provided
additional explanations not provided by the Examiner. Accordingly, in the
interests of giving Appellants a full and fair opportunity to respond, we
designate our affirmance as new grounds of rejection.
DECISION
We do not reach the provisional double patenting rejections.
The Examiner’s decision to reject claims 1—21 is affirmed and the
affirmance is designated as a new ground of rejection within our authority
under 37 C.F.R. § 41.50(b).
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
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(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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b) (2015).
AFFIRMED
37 C.F.R, $ 41.50(b)
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