Ex Parte Wren

Patent Trial and Appeal Board

Jun 24, 2016

12556353 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/556,353 0910912009
62250 7590 06/28/2016
Stephen C Wren
1616 S. Voss Rd.Suite 125
Houston, TX 77057
FIRST NAMED INVENTOR
Stephen Corey Wren
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.
case G 2349
EXAMINER
ZURITA, JAMES H
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
06/28/2016 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):
wr_steph@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN COREY WREN
Appeal2013-004649
Application 12/556,353
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
INTRODUCTION
Appellant filed a Request for Rehearing ("Req. Reh'g") asking that
the Board reconsider the Decision on Appeal mailed March 1, 2016
("Decision"). (Req. Reh' g 1.)
In the Decision on Appeal, the Board reversed the Examiner's
rejection of claims 1-5 and 9-18 on the ground of nonstatutory obviousness-
type double patenting. (Decision 7.) We affirmed the Examiner's rejection
of claim 18 under 35 U.S.C. § 112, first paragraph and the Examiner's
rejection of claims 1-5 and 9-18 under 35 U.S.C. § 103(a). (Decision 7.)
Appellant argues that we misapprehended the wording of claim 18
because claim 18 does not require providing or performing an auction but
Appeal2013-004649
Application 12/556,353
rather that "at least one of the central communications facilities is configured
to receive an auction bid to buy." (Req. Reh'g 2.) The Appellant in the
Request, as he did in the Brief directs our attention to page 5 of the instant
application and page 6 of Application No. 08/268,309 ("the '309
application"), which the Appellant asserts is incorporated by reference into
the instant application. (Req. Reh'g 2, 3.)
As we stated in our original Decision, Appellant's Specification does
not provide support for the recitations in claim 18 of the central
communications facilities being configured to perform an auction.
(Decision 6.) The performance of an auction includes the actual auction
steps including the receipt of auction bids to buy. Page 5 of the instant
disclosure and page 6 of the '309 application state that the central
communications facilities provide links to auction houses and as such these
disclosures indicate that the actual auction takes place at the auction house
itself after the link is activated. In fact, page 6 of the '309 application
specifically states that the auction itself takes place at a distant auction
house. As the actual performance of the auction takes place at the auction
house, Appellant does not have support for the central communication
facility performing the step, in the auction, of receiving an auction to bid.
As such, we decline to make any changes in our decision in regard to this
rejection.
Appellant argues that they responded to the rejection under 35 U.S.C.
§ 103 in the Reply Brief. (Req. Reh'g 3.) In our original Decision, we held
that Appellant did not present arguments regarding this rejection, but rather
merely stated that the elements of claim 1 are not shown in the prior art and
thus are allegations ofpatentability. (Decision 7.) As such, there were no
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Application 12/556,353
substantive arguments to this rejection in Appellant's Appeal Brief
Appellant, now direct our attention to arguments made for the first time in in
the Reply Brief. Appellant does not direct our attention to any showing of
good cause explaining why these arguments were not made in the Appeal
Brief. As these arguments were made for the first time in the Reply Brief
without a showing of good cause why they were not presented in the Appeal
Brief, these arguments were not entitled to consideration. See 37 C.F.R.
(BPAI 2010) (informative) ("[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not").
Appellant also argues that we overlooked the issue of whether the
Examiner's election restriction was proper. (Req. Reh'g 5.) However, the
Examiner's restriction requirement is a petitionable matter. See l\1anua1 of
restriction requirement is not within the jurisdiction of the Board. Jn re
Appellant also argues that we overlooked the issue of whether the
Examiner's taking of Official Notice that stocks and bonds are auctioned at
stock markets and bond markets and that buy and sell order are bids was
proper. (Req. Reh'g 5.) Appellant's argument that this issue was not
discussed in our original opinion is well taken. \Ve amend our original
Decision on page 7 after the first full paragraph to include the following:
We agree with the Examiner's response to the Appellant's argument
regarding the taking of Official Notice in regard to the rejection of
claim 18 found on pages 4-5 of the Answer. In this regard, we agree
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Application 12/556,353
that the Appellant has not adequately traversed the taking of Official
Notice in that the Appellant has not challenged the facts upon which
the Official Notice is based. "To adequately traverse such a finding
[of Official Notice], an applicant must specifically point out the
supposed errors in the [E]xaminer's action, which would include
stating why the noticed fact is not considered to be common
knowledge or well-known in the art." MPEP § 2144.03(C); see also
The Request for Rehearing has been granted in the respect that we
have reconsidered our opinion and amended that opinion. The Request for
Rehearing is denied in that we decline to make changes in our affirmance of
the rejection of the claim 18 under 35 U.S.C. § 112, first paragraph and the
affirmance of the rejection of claims 1-5 and 9-18 under 35 U.S.C. § 103.
DENIED
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