Ex Parte Reisman

Patent Trial and Appeal Board

Oct 28, 2016

12893246 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/893,246 09/29/2010
105758 7590 11/01/2016
Renaissance IP Law Group LLP (Portland - North)
7327 SW Barnes Road #521
Portland, OR 97225
Richard R. Reisman
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.
47003/0029 3752
EXAMINER
RASHID, HARUNUR
ART UNIT PAPER NUMBER
2497
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
matthew. phillips@renaissanceiplaw.com
docket. clerk@renaissanceiplaw.com
PhillipsPatentLawyer@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD R. REISMAN
Appeal2014-000548
Application 12/893,246
Technology Center 2400
Before MAHSHID D. SAADAT, CATHERINE SHIANG, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered June 27,
2016 ("Dec."), which affirmed the Examiner's decision to reject claims 13-
15 under 35 U.S.C. § 103. We have considered Appellant's arguments, and
such arguments have not persuaded us that we misapprehended or
overlooked any matters in our decision. Therefore, Appellant's Request for
Rehearing ("Req. ") is denied.
Appeal2014-000548
Application 12/893,246
DISCUSSION
A request for rehearing "must state with particularity the points [of
law or fact] believed to have been misapprehended or overlooked by the
Board," and must comply with 37 C.F.R. § 41.52(a)(l) (2012).
I
Appellant argues that "this Board Decision found that Kaplan teaches
that limitation ["a user station not previously identified to the remote
computer system"]. Specifically, the Board Decision cited to page 9 of the
Examiner's Answer." Req. 9-10 (emphasis added) (citation omitted). In
particular, Appellant argues: 1) "The Board Decision Misapprehended
Kaplan, Which Does Not Teach or Suggest the 'User Station Not Previously
Identified' Limitation"; 2) "Kaplan does not teach that the user has been
previously identified"; and 3) "Kaplan does not teach that the user station
(kiosk) has been previously identified" (Req. 10, 14 (boldface omitted)). 1
See Req. 10-15.
First, Appellant's statements about our decision are incorrect.2 To the
contrary, our decision explicitly states that the disputed claim limitation "a
user station not previously identified to the remote computer system" is
taught or suggested by the combined teachings of Johnson and Kaplan-not
merely the teachings of Kaplan. See Dec. 4--5.
1 It is unclear why Appellant argues "Kaplan does not teach that the user has
been previously identified" (Req. 1 O); and "Kaplan does not teach that the
user station (kiosk) has been previously identified" (Req. 14), as such
arguments support our-not Appellant's-position.
2 Appellant's statements also contradict the Reply Brief, which
acknowledges that "[t]he Examiner relies on Kaplan as a secondary
reference" for teaching the disputed claim limitation. Reply Br. 6.
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Specifically, our decision explains that the Examiner finds-and
Appellant does not dispute-Johnson teaches the claimed "user station"
(mapped to Johnson's user machine) and the claimed "remote system"
(mapped to Johnson's server system). Dec. 4.
Further, Kaplan discloses:
To use the invention, the subscriber takes any music
selection in the store display and approaches the kiosk station
10. The subscriber is provided with an access card, similar to a
credit card, which is used to activate the kiosk station 10 ....
Each customer can complete a brief membership
application which asks for basis demographic information,
general music listening preferences and buying habits and an
access card will then be generated for that subscriber. Each
subscriber will have a barcode on their access card which will
immediately identify them when beginning a session on the
kiosk station 10.
Kaplan 5:22-36 (emphasis added).
Therefore, our decision explains that the Examiner correctly finds
Kaplan teaches or suggests before the user (or customer) completes the
membership application, he is "not previously identified to the ... system."
Dec. 4. In fact, Appellant admits in Kaplan, it is a "fact that a customer
without an access card might be considered to be 'not previously
identified."' Req. 11.
Our decision further explains because Appellant does not challenge
the propriety of combining the teachings of Johnson and Kaplan, the
Examiner correctly finds the combination teaches or suggests "a user station
[mapped to Johnson's user machine] not previously identified to [taught or
suggested by Kaplan's teachings] the remote system [mapped to Johnson's
server system]." Dec. 4--5.
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Application 12/893,246
Second, Kaplan discusses different time periods: ( 1) before the user
(customer) completes the membership application; and (2) after the user
(customer) completes the membership application, and then an access card
will be generated. See Kaplan 5:22-36. As discussed above, the Examiner
cites Kaplan's Time 1 (before completing the membership application) for
teaching the claimed "not previously identified." In contrast, Appellant's
following arguments are about Time 2 (after completing the membership
application), and fail to show the Examiner's finding based on Time 1 is
incorrect:
Kaplan also envisions that users of the kiosk are already known.
In particular Kaplan states, "After scanning their
user/subscriber card (free to the user, available at the store
counter) across the UPC bar code reader[,]" the user may
operate the kiosk. (Kaplan 3:16-18.) That is, before using the
kiosk, the user must obtain a user/subscriber card. Thus, the
user is identified by the user/subscriber card before operations
occur. Accordingly, Kaplan reinforces the notion of Johnson
described above that users in Johnson are already identified.
App. Br. 16-17 (emphasis added).
In the Reply Brief (pages 6-7), Appellant again argues about Time 2
(after completing the brief membership application}--not Time 1 cited by
the Examiner (before completing the brief membership application}--and
fails to persuasively argue the Examiner's finding based on Time 1 is
incorrect:
The Examiner relies on Kaplan as a secondary reference.
The Applicant pointed out in the Appeal Brief that Kaplan also
assumes that a user has been previously identified [App. Br.
16-1 7] .... The Examiner responds by repeating the essence of
the rejection and contending that the user must have been
unknown to the kiosk computer at the time when the user
completed a membership application to obtain the
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user/subscriber card and thus concluding that "the examiner
interprets registration as new user to the remote server or [sic]
'the User Has Been Previously Identified to the Remote
Computer System'.". (See Examiner's Answer§ 2.6 at 9.) In
other words, the Examiner seems to contend that if one backs
up far enough in time, at some point the user was not
"previously identified." Such reasoning is specious for several
reasons. Under that logic, every user and user station - and
everything at all - was not previously identified at some point
in time. Under that logic, even a fully administered, closed
enterprise network in which all of the computers are known a
priori would at some point have not previously identified its
users and user stations.
Reply Br. 6-7 (emphasis added) (original emphasis omitted).
Contrary to Appellant's assertion, the Examiner did not "contend that
if one backs up far enough in time, at some point the user was not
'previously identified"' (Reply Br. 6-7 (emphasis added)). As discussed
above, the Examiner cites Kaplan's explicit teachings, and correctly finds
before completing the brief membership application, the user (customer) is
"not previously identified to the ... system." Ans. 9 (citing Kaplan 5:30-
35). Appellant does not critique the specific Kaplan portion cited by the
Examiner, and his general assertion that "[u]nder that logic, every user and
user station - and everything at all - was not previously identified at some
point in time ... even a fully administered, closed enterprise network in
which all of the computers are known a priori would at some point have not
previously identified its users and user stations" (Reply Br. 7) does not show
why the Examiner's findings-based on Kaplan's explicit teachings
regarding before the user (customer) completes the brief membership
application-are incorrect.
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Further, Appellant's citing a claim construction issue in Jn re Suitco
Surface Inc., 603 F.3d 1255 (Fed. Cir. 2010) (Reply Br. 7) is not on point.
In Suitco, the court held "that the phrase 'material for finishing the top
surface of the floor' refers to a clear, uniform layer on the top surface of a
floor that is the final treatment or coating of a surface. It is not any
intermediate, temporary, or transitional layer." Suitco, 603 F.3d at 1260-61.
Unlike the claim construction issue in Suitco, the claim construction is clear
here: the Examiner correctly finds Kaplan teaches or suggests the claimed
"not previously identified," and Appellant admits it is a "fact that a customer
without an access card might be considered to be 'not previously identified"'
(Req. 11).
Therefore, our decision explains that Appellant's contentions are
unpersuasive of Examiner error, because Appellant failed to persuasively
address the Examiner's specific findings and failed to critique the Kaplan
portion cited by the Examiner. See Dec. 4.
Finally, because our decision and the Examiner's findings rely on the
combined teachings of Johnson and Kaplan to teach the disputed claim
limitation, Appellant has not shown the inquiry of whether Kaplan alone
teaches "the user station (kiosk) has been previously identified" (Req. 14}-
regardless of the answer-is sufficient for showing error.
II
Appellant argues: "The Board Decision Overlooked the Applicant's
Arguments That Kaplan Does Not Teach the 'User Station Not Previously
Identified' Limitation." Req. 15 (boldface omitted). In particular, Appellant
contends: "The Board Decision overlooked the Applicant's arguments at
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pages 16-17 of the Appeal Brief"; and "The Board Decision improperly
disregarded the Applicant's arguments at pages 6-7 of the Reply Brief'
(Req. 15-16 (boldface omitted)). Appellant argues the Board unlawfully
disregarded Appellant's arguments about Kaplan in the Reply Brief. See
Req. 18-20.3
We disagree. As discussed above, our decision explicitly states that
the disputed claim limitation "a user station not previously identified to the
remote computer system" is taught or suggested by the combined teachings
of Johnson and Kaplan-not merely the teachings of Kaplan. Dec. 4--5.
Therefore, Appellant's argument that Kaplan alone does not teach the
disputed claim limitation is insufficient for showing error.
Further, as discussed above, this panel did not overlook or disregard
Appellant's arguments about Kaplan (on pages 16-17 of the Appeal Brief
and pages 6-7 of the Reply Brief): we explicitly acknowledged those
arguments, which are unpersuasive for showing error because Appellant
failed to persuasively address the Examiner's specific findings, and failed to
critique the Kaplan portion cited by the Examiner. See Dec. 4. We want to
make it abundantly clear that our footnote "[t]o the extent Appellant
3 Appellant represents "in Application No. 09/553,337, Appeal No. 2011-
004918, in which the United Stated District Court for the Eastern District of
Virginia remanded the matter to the Office for the Board to enter an order
reversing the Board's prior decision and remanding the case to the
Examiner. Intellectual Ventures I LLC v. Focarino, No. 1: 13-cv-534
(AJT/TCB) (E.D. Va. Filed Jan. 13, 2014) (remand order)." Req. 19 n.5.
But the district court order merely states: "Pursuant to a settlement between
the parties, it is hereby ORDERED that the instant civil action is
REMANDED to the United States Patent & Trademark Office for further
administrative proceedings." Agreed Order of Remand dated January 13,
2014.
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advances new arguments in the Reply Brief without showing good cause,
Appellant has waived such arguments. See 37 C.F.R. § 41.41(b)(2)" (Dec.
4) is a general statement applicable to all new arguments in the Reply Brief,
and Appellant's arguments about Kaplan on pages 6-7 of the Reply Brief do
not constitute such waived new arguments. While Appellant had the option
to petition the Director to address the Examiner's new findings in the
Answer, Appellant chose to file a reply brief. As a result, we considered the
merits of the arguments in our decision because Appellant had a full and fair
opportunity to respond to the Examiner's analysis on the merits. 4 See In re
Stepan Co., 660 F.3d 1341, 1343--44 (Fed. Cir. 2011).
III
"Arguments not raised~ and Evidence not previously relied upon ...
are not permitted in the request for rehearing except as permitted .... ~'
37 C.F.R. § 41.52(a)(l) (2012). Therefore, to the extent Appellant advances
new arguments without showing good cause, Appellant has waived such
new arguments.
For example, Appellant argues:
A customer who has not yet obtained an access card - the
alleged not previously identified user - cannot use the kiosk
and thus cannot perform step [ 1] of the patent claims. As a
reminder, step [1] concerns computer actions. Specifically, step
4 We were aware of the Examiner's new findings in the Answer, as we cited
the Examiner's Answer instead of the Final Action; and we stated
"Appellant fails to squarely respond to the Examiner's ... findings [from
page 9 of the Answer], and fails to critique the Kaplan portion cited by the
Examiner" (Dec. 4), which does not indicate Appellant's arguments in the
Reply Brief were waived. Dec. 4.
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[ 1] says that a "remote computer system" "receiv[ es]" "from
the user station" "over a communications network" "first
information." That is when the user station must be "not
previously identified to the remote computer system." ... [T]he
relevant time period for step [ 1] and its "user station not
previously identified" limitation is when Kaplan's kiosk 10 (the
alleged "user station" in Kaplan) is sending information to a
"remote computer system" (presumably the UNIX mini 70 or
executive information system 90)- not before the customer has
obtained an access card at the store counter.
Req. 11.
Appellant has waived the above new argument, as Appellant has not
shown any good cause for the belated presentation, and raising the belated
argument at such a late stage is unfair. We further note the belated argument
is unpersuasive because it ignores the Examiner's specific findings: the
Examiner finds-and Appellant does not dispute-Johnson teaches
"receiving at a remote computer system over a communications network
first information." See Final Act. 6. Therefore, the Examiner does not rely
on Kaplan to teach that claim limitation separately. As noted in our decision
(Dec. 4--5), in the Appeal Brief and Reply Brief, Appellant does not
challenge the propriety of combining the teachings of Johnson and Kaplan
for teaching the disputed claim limitation. In any event, the skilled artisan
would "be able to fit the teachings of multiple patents together like pieces of
a puzzle" since the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420-21 (2007).
Appellant has not presented persuasive evidence that the resulting
arrangements would have been "uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
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art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed.
Cir. 2007) (citingKSR, 550 U.S. at 418-19).
In another example, Appellant argues:
Perhaps the Examiner and the Board implicitly adopted a
strained interpretation of "not previously identified" to make
Kaplan's teachings relevant to the claims. However, such an
interpretation would surely be unreasonable and not at all
anchored to the actual language of step [ 1]. If a user could be
"not previously identified" if he/she were unknown at any time
in the past, no matter how far removed from the computer
actions recited in step [1], then the phrase "not previously
identified" would be meaningless .... A new, unknown user
must provide demographic information on a membership
application. Presumably someone enters that information in a
behind-the-counter computer in a non-user, administrator mode
to add the customer as a known, authorized user, at which point
the customer gets an access card. This type of process, which
was prevalent in closed-enterprise networks at the time of the
invention, in no way makes the user "not previously identified"
when placed in the context of near-by claim language, and,
indeed, in no way resembles the claim language.
Perhaps the Examiner and the Board assumed that the
membership application was a computerized application that
the customer completes at the kiosk. Absolutely nothing in
Kaplan says or suggest that. The Office would bear the burden
to show that but has not done so - and cannot do so. See In re
Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002) ("During patent
examination the PTO bears the initial burden of presenting a
primafacie case ofunpatentability. If the PTO fails to meet
this burden, then the applicant is entitled to the patent."
(citations omitted)). The Examiner has not even attempted to
present that strained interpretation of Kaplan. Such a reading of
Kaplan would be contrary to the express text of Kaplan, which
says that the kiosk will not work until the customer scans the
barcode on his/her access card. See Kaplan 3: 16-21, 5 :24--26.
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Indeed, there is absolutely no disclosure in Kaplan of the kiosk
having any capability to dispense an access card, and the Office
"may not resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual
basis." In re Warner, 379 F.2d 1011, 1017 (C.C.P.A. 1967).
Indeed, a machine dispensing barcode-bearing cards would
have been far-fetched in 1992 when the Kaplan application was
filed. The only reasonable assumption is that a customer fills
out a paper application to obtain an access card and gives the
paper application to a behind-the-counter store employee, who,
perhaps after checking the paper application and entering its
information, gives the customer an access card.
Req. 12-14.
Appellant has waived the above new argument, as Appellant has not
shown any good cause for the belated presentation, and raising the belated
argument at such a late stage is unfair. We further note the belated argument
is unpersuasive because it includes assertions (such as how a membership
was processed in 1992) that are speculative and unsubstantiated by evidence.
In any event, Appellant has not persuasively explained how Appellant's
speculation about membership processing in 1992 renders the Examiner's
findings incorrect. As discussed above, and admitted by Appellant (Req.
11 ), before the user completes the membership application, Kaplan teaches a
"not previously identified" user.
In a third example, Appellant argues:
[T]he claims in this application make clear that it is "the remote
computer system" that has "not previously identified" the user
station. The Examiner makes no attempt to identify what this
"remote computer system" is in Kaplan. This is another clear
shortcoming in the Examiner's and the Board's misplaced
reliance on Kaplan.
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Req. 15.
Appellant has waived the above new argument, as Appellant has not
shown any good cause for the belated presentation, and raising the belated
argument at such a late stage is unfair. We further note the belated argument
is unpersuasive because, as discussed above, the Examiner finds-and
Appellant does not dispute-Johnson teaches the claimed "remote computer
system." See Dec. 4. Therefore, Kaplan does not need to separately teach
that claim element.
CONCLUSION
For the reasons stated above, Appellant has not persuaded us that we
misapprehended or overlooked any issue of fact or law in our decision.
We have granted Appellant's Request for Rehearing to the extent that
we have reconsidered our decision dated June 27, 2016. Appellant has not
shown that we misapprehended or overlooked any issue of law or fact in
reaching that decision. Accordingly, we deny Appellant's Request for
Rehearing.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
DENIED
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