Ex Parte Muller

Patent Trial and Appeal Board

Oct 24, 2016

12651248 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/651,248 12/31/2009
46321 7590 10/26/2016
CRGOLAW
STEVEN M. GREENBERG
7900 Glades Road
SUITE 520
BOCA RATON, FL 33434
FIRST NAMED INVENTOR
Michael Muller
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CAM920090045US1 (246) 8768
EXAMINER
PAN, YONGJIA
ART UNIT PAPER NUMBER
2145
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MULLER
Appeal2015-004131
Application 12/651,248 1
Technology Center 2100
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellant's Request for Rehearing of our
Decision on Appeal mailed August 2, 2016.
Appellant's request is denied.
1 According to Appellant, the real party in interest is IBM Corp. App. Br. 2.
Appeal2015-004131
Application 12/651,248
BACKGROUND2
Appellant has filed a paper under 37 C.F.R. § 41.52 requesting we
reconsider our Decision affirming the Examiner's rejection of claims 1-20
under§ 103(a) as being obvious over the combination of Gallo and Marvit.
Request 2-6.
We reconsider our Decision in light of Appellant's Request, but
decline to change the decision for the reasons provided, infra.
APPELLANT'S ARGUMENTS
(1) Appellant contends:
As can be seen, the Board stated that the Examiner referred to
the specification of a zoom level for the cells (plural) being
displayed. Appellants believe such a conclusion of fact to be
clearly erroneously in error in so far as Examiner showed only a
specification of a zoom level for a single, individual cell of a
grid-not the grid entirely as claimed by Appellants. Indeed,
Appellants stated as much at page 7 of the Appeal Brief and
pages 3 and 4 of the Reply Brief.
Request 5---6.
(2) Appellant further contends:
The Board additionally establishes a second and final finding of
fact that the claim term "event" is to be broadly construed to
include the "hitting of an enter key". But, Appellants' point was
less directed to the notion of an event in general and more to the
2 Our Decision on Rehearing relies upon Appellant's Appeal Brief ("App.
Br.," filed Sept. 2, 2014); Reply Brief ("Reply Br.," filed Feb. 17, 2015);
Examiner's Answer ("Ans.," mailed Dec. 22, 2014); Final Office Action
("Final Act.," mailed Apr. 2, 2014); our Decision on Appeal ("Decision"
mailed Aug. 2, 2016); and the original Specification ("Spec.," filed
Dec. 31, 2009).
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Appeal2015-004131
Application 12/651,248
notion that the event received (hitting an enter key) must be
directed to the entire grid-not a single cell in the grid.
Request 6.
RESPONSE TO ARGUMENTS
We have only considered those timely arguments actually made by
Appellant in deciding this Request. Arguments which Appellant could have
timely made but chose not to make in Request or in the prior Appeal and
Reply Briefs have not been considered and are waived. 37 C.F.R.
§ 41.37(c)(l)(iv).
We have not overlooked or misapprehended Appellant's arguments in
our Decision. As a matter of claim construction, we adopt a broad but
reasonable interpretation of the recited "zooming operation on the grid of the
multiple different cells." Claim 1. 3 In particular, we note Appellant does
not point to or otherwise present evidence of a definition of a "zooming"
operation that \~1ould preclude the Examiner's broader interpretation of the
3 "In the patentability context, claims are to be given their broadest
reasonable interpretations ... limitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (citations omitted). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common usage
would be so understood by a person of experience in the field of the
invention." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip.,
Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its mvn
lexicographer and assign to a tenn a unique definition that is difforent frmn
its ordinary and customary meaning; however, a patentee must clearly
express that intent in the written description."). Absent an express intent to
impart a novel meaning to a claim term, the words take on the ordinary and
customary rneanings attributed to them by those of ordinary skill in the art
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed.
Cir. 2003) (citation omitted).
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Appeal2015-004131
Application 12/651,248
zooming operation, or that a person with skill in the art would attribute a
different meaning to this term.
In our Decision, we found Gallo's layouts, associated with the
cellularized environment, and specifying a zoom level for the displayed
cells, along with cell locations and default values for cells, teach or at least
suggest disputed limitations "performing the zooming operation on the grid
of the multiple different cells" and "direct[ing] a zooming operation on the
grid of the multiple different cells." Decision 4--5.
We are not persuaded by Appellant's arguments that Gallo's teachings
are limited to a single cell and not to multiple cells. 4 Request 4--6. We
4 To the extent that Gallo's teachings could arguendo be limited to a single
cell (as urged by Appellant), we find extending the teaching of Gallo to
"performing the zooming operation on the grid of the multiple cells"
(claim 1) would have merely been a "predictable use of prior art elements
according to their established functions." KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Thus, claiming a mere plurality of prior art elements
is not an unobvious distinction over the prior art of record, because using
plural elements would have produced a predictable result under§ 103. "A
mere duplication of parts is not invention." In re Marcum, 47 F.2d 377, 378
(CCPA 1931) (citing Topliffv. Topliff, 145 U.S. 156, 163 (1892)). See also
Dunbar v. Myers, 94 U.S. 187, 195 (1876) ("for most purposes the machine
will operate as well and as successfully with one deflecting plate as with
two. Two deflecting plates may be better than one .... "); In re Abrahamsen,
53 F.2d 893, 894 (CCPA 1931) ("It is true that in the patent cited, there was
but one detachable blade. However, the use of two such blades would
readily suggest itself to the mechanic. It is a mere duplication of parts, and
this has been uniformly held to be not patentable.") (citations omitted); In re
Harza, 274 F.2d 669, 671 (CCPA 1960) ("It is well settled that the mere
duplication of parts has no patentable significance unless a new and
unexpected result is produced."). Thus, we conclude "performing the
zooming operation on the grid of the multiple different cells," as recited in
claim 1, is not an unobvious distinction over the prior art of record, absent
some showing of secondary considerations, such as unexpected results. See
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Appeal2015-004131
Application 12/651,248
agree with the Examiner's finding that Gallo's groups of cells disclose the
"grid of the multiple different cells," as recited in claim 1. Ans. 3, citing
Gallo i-f 10. We also agree with the Examiner's finding that Gallo's events
and user actions teach or at least suggest "a zooming operation on the grid
the multiple different cells." Id. We agree with the Examiner because
Gallo's user actions, including zooming, are performed in a cellular
environment, on groups of cells, where cells are dynamically changing as a
result of user actions. Ans. 3-5, Gallo i-fi-1121, 122. We find Gallo's user
actions, including zooming, on a cellularized environment teach or at least
suggest5 the disputed limitation "zooming operation on the grid of the
multiple different cells," as recited in claim 1.
Accordingly, based on the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the combination of Gallo
and Marvit to teach or suggest the contested limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
CONCLUSION
We have considered all of the arguments raised by Appellants in the
Request. However, Appellant has not persuasively shown that we
misapprehended or overlooked any of their arguments, or that our Decision
should otherwise be modified. reversed. For the aforementioned reasons,
Appellant's contentions have not persuaded us of error in our Decision.
also MPEP 2144.04(VI)(B)("REVERSAL, DUPLICATION, OR
REARRANGEMENT OF PARTS'').
5 "[T]he question under 35 U.S.C. § 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made." Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F. 2d 804, 807-808 (Fed. Cir. 1989).
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Application 12/651,248
DECISION
Accordingly, while we have granted Appellant's Request to the extent
that we have reconsidered our Decision, that request is denied with respect
to making any changes therein. No time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. §
1.136(a)(l )(iv).
REQUEST FOR REHEARING DENIED
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