Ex Parte YOPP et al

Patent Trial and Appeal Board

Oct 31, 2018

13738231 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/738,231 01/10/2013
74739 7590 11/02/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
JohnE. YOPP
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.
2011-005 lUSO 1 8520
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. YOPP and CHARLES T. PILON
Appeal2017-007076
Application 13/738,231
Technology Center 3600
Before MARC S. HOFF, JUSTIN BUSCH, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-20, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm and enter a new ground of rejection.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates to a computer system and
method for a guided walkthrough of a retail store. Spec. ,r 1. The system
determines a "representative path" based on previous paths taken by a set of
customers (i.e., a "customer segment") and provides instructions that guide a
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Application 13/738,231
user along the representative path. Spec. ,r 4. According to Appellants'
Specification, the user following the guided walkthrough may be affiliated
with the retail store, in which case the user may use the system to understand
how a customer in a particular customer segment walks through, shops in,
and views the store. Spec. ,r,r 17, 21, 57. Claims 1, 8, and 15 are
independent claims. Claim 8 is reproduced below:
8. A method for providing a guided walkthrough of a retail
store to a user, the method comprising:
receiving by a processor at least one criteria, wherein the
at least one criteria defines a customer segment, and the customer
segment corresponds to a set of customers of the store;
determining by the processor a representative path,
wherein the representative path is determined based upon paths
previously taken through the store by the set of customers of the
customer segment using an indoor tracking system; and
transmitting instructions by the processor to a portable
viewing device to guide the user along the representative path to
simulate shopping at the store from a perspective of one of the
customers from the set of customers;
wherein determining the representative path comprises
merging a plurality of paths previously taken through the store
by each customer of the set of customers;
wherein the set of customers represent a particular
demographic of all customers of the retail store, and the
simulated shopping is from the perspective of a customer within
the demographic;
wherein the simulated shopping comprises instructions to
pause along the path that represents a pause from the previously
taken paths, and the simulated shopping comprises providing
sales data of a product for the particular demographic as the user
progresses through the store along the path.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 5-7.
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Claims 1, 4, 8, 11, 15, and 18 stand rejected under 35 U.S.C. § 112
failing to comply with the written description requirement. Final Act. 8-9.
Claims 1, 2, 4, 6-9, 11, 13-16, 18, and 20 stand rejected under
35 U.S.C. § 103 as obvious in view ofCurlander (US 2012/0239504 Al;
Sept. 20, 2012), Busche (US 2003/0055707 Al; Mar. 20, 2003), and
Figueroa (US 2011/0225068 Al; Sept. 15, 2011). Final Act. 10-22.
Claims 3, 10, and 17 stand rejected under 35 U.S.C. § 103 as obvious
in view of Curlander, Busche, Figueroa, and Otto (US 2009/0125394 Al;
May 14, 2009). Final Act. 22-25. 1
Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103 as obvious
in view of Curlander, Busche, Figueroa, and Kurtti (US 2010/0145608 Al;
June 10, 2010). Final Act. 25-27.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
THE 35 U.S.C. § 101 REJECTION
The Examiner concludes claims 1-20 are directed to judicially
excepted subject matter. Final Act. 5-7; Ans. 3-5. Appellants argue the
§ 101 rejection of all claims as a group. See App. Br. 3-8; Reply Br. 2-3.
1 The section heading for this rejection incorrectly identifies the rejection as
being based on Curlander, Busche, Figueroa, and Kurtti. Final Act. 22. The
body of the rejection, however, correctly identifies Otto as teaching certain
limitations. See Final Act. 23-24. We consider this typographical mistake
to be harmless error.
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We select independent claim 8 as representative and decide the appeal of the
§ 101 rejection based on claim 8. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants 'Arguments
Appellants assert the Examiner failed to present a prima facie case
that the claims are directed to an abstract idea. See App. Br. 4---6; Reply
Br. 2-3. Specifically, Appellants initially contend "it is unclear what the
Examiner alleges is the abstract idea." App. Br. 5. Appellants, however,
acknowledge that the Examiner identified the abstract idea as "steps for data
acquisition, data manipulation, and data processing," and then argue "this
alleged abstract idea has no relationship to what is recited in the claims."
App. Br. 5. Appellants argue that the Examiner did not identify cases in
which the courts determined such concepts were abstract ideas. App. Br. 5;
Reply Br. 2-3. Appellants also assert the Examiner failed to identify cases
in which a court determined a concept similar to "providing a guided
walkthrough of a retail store" was abstract. App. Br. 5. Appellants argue
the claims cannot be done mentally or on paper because they include certain
limitations that cannot be performed manually. App. Br. 5. Finally,
Appellants argue the Examiner has not demonstrated the claims are directed
to an abstract idea because the Examiner failed to provide evidence that
Appellants' claimed functionality was previously performed manually or
using a computer. App. Br. 6 (citing McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Appellants also argue the Examiner failed to consider the claimed
elements in combination, which amount to significantly more. App. Br. 6-7.
In particular, Appellants assert (1) using an "indoor tracking system" to
determine a representative path, (2) guiding a user along the representative
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path using a portable viewing device, and (3) providing data during the
guided path, when considered in combination, amount to significantly more
than the abstract idea. App. Br. 7 (citing BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)).
Appellants also argue the claims are patent-eligible because the claims
do not preempt an abstract idea. App. Br. 8 ( citing Alice Corp. Pty. Ltd. v.
CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014); Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 85 (2012)).
Specifically, Appellants argue the claims are limited to a specific process
and "do not preempt all systems and methods for performing the alleged
abstract idea, even if the Examiner clearly had identified an abstract idea."
App. Br. 8 (citingMcRO, 837 F.3d at 1316).
Prima Facie Case
Many of Appellants' arguments address whether the Examiner
properly identified the abstract idea or came to the correct conclusion about
whether the claim elements recite significantly more than the abstract idea
rather than whether the Examiner presented a prima facie case of patent-
ineligibility. See, e.g., App. Br. 4---6; Reply Br. 2-3. To the extent
Appellants' arguments assert the Examiner failed to present a prima facie
case, we disagree.
The Federal Circuit has repeatedly noted that "the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the U.S. Patent and Trademark Office (USPTO) carries its
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procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, all that is required of the Office is that it set forth the statutory basis of
the rejection, and the reference or references relied on, in a sufficiently
articulate and informative manner as to meet the notice requirement of
§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
The Examiner's rejection, as discussed further below, presents a
prima facie case by identifying that Appellants' claims are directed to
particular concepts, which the Examiner explains are similar to abstract
ideas courts have found ineligible, and explains why the additional elements
do not amount to significantly more than the abstract idea ( e.g., "generally
and generically recited 'indoor tracking system"' and "portable viewing
device" are used for extra-solution activities of acquiring or viewing data to
implement the idea). See Final Act. 2-3, 5-7; Ans. 3-5. Thus, the
Examiner: 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, contrary to Appellants'
contention, explained and analyzed the rejection in sufficient detail to permit
Appellants to respond meaningfully. See Jung, 637 F.3d at 1362.
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The Examiner notified Appellants of the reasons for the rejection
"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. In doing so, the Examiner set forth a prima facie case of
ineligibility.
Step One of Alice Framework
In step one of the Alice analysis, we "determine whether the claims at
issue are directed to" a patent-ineligible concept, such as an abstract idea.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2354--55
(2014 ). The Examiner determines the claims are directed to "providing a
guided walkthrough of a retail store," which merely involves steps for data
acquisition, processing and reporting. Final Act. 2-3, 6-7; Ans. 3--4. The
Examiner concludes that the claims, therefore, are directed to an abstract
idea (i.e., an idea of itself and a process that, other than generically recited
computer elements, can be performed mentally or on paper) of organizing,
storing, and transmitting information. Final Act. 2-3, 6-7; Ans. 3 ( citing
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed.
Cir. 2014)). The Examiner explains the three steps (i.e., the receiving,
determining, and transmitting steps) recited in claim 1, commensurately
recited in claim 8, could be performed mentally or on paper, and that claim 1
simply uses general purpose computer components (i.e., an "indoor tracking
system" and a "portable viewing device") to execute the steps. Ans. 4.
We agree with the Examiner's conclusions because representative
claim 8 focuses on receiving, selecting, and displaying information. In
particular, claim 8 recites collecting data (previous customer path
information and criteria that defines a customer segment representative of a
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particular demographic), processing it (merging the prior paths taken to
determine a representative path), and transmitting (and implicitly displaying
or presenting) data (instructions to follow the representative path). Although
claim 8 recites a "processor" to perform the receiving, determining, and
transmitting steps, a "portable viewing device" to which instructions are
transmitted, and an "indoor tracking system"2 used to track customer paths,
these elements do not change the character of claim 8 as a whole.
The Federal Circuit has concluded similar concepts were directed to
abstract ideas. Specifically, in Electric Power Group, the Federal Circuit
concluded claims reciting a method of collecting data from various sources,
"detecting and analyzing events" by identifying information in the received
data, reporting the event analysis results and visualizations of measurements,
aggregating the event analysis information, and providing a composite
indicator were directed to an abstract idea because the claims were directed
to "collecting information, analyzing it, and displaying certain results of the
collection and analysis." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1351-53 (Fed. Cir. 2016).
2 Appellants' claims simply recite "using an indoor tracking system," but do
not recite how the "indoor tracking system" is used. See App. Br. 21 ( claim
8). Based on the Specification, we presume Appellants' intend the claim to
require using the indoor tracking system to track customer routes taken
through the retail store. See Spec. ,r 33 ("Wireless access points (202, 203,
and 204) in one embodiment are part of a system for providing indoor
location functionality that tracks the position of mobile devices or
smartphones, such as a 'Micro-Location' system from NearBuy Systems.");
see generally Spec. ,r,r 31--44 ( discussing tracking users walking through a
store). For purposes of our analysis of Appellants' claims under 35 U.S.C.
§ 101, we treat the claims as reciting the use of the indoor tracking system to
track customer paths taken through the retail store.
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Similarly, the Federal Circuit concluded that claims directed to
collecting and analyzing information and presenting the results were
ineligible as claiming no more than an abstract idea. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014); see also Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
873 F.3d 1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the
collection, storage, and recognition of data are directed to an abstract idea");
SAP Am., Inc. v. InvestPIC, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
("merely presenting the results of abstract processes of collecting and
analyzing information ... is abstract as an ancillary part of such collection
and analysis") ( quotations omitted).
Moreover, limiting the particular data analyzed does not change the
character of the claim. See Elec. Power, 830 F.3d at 1353 (stating that
"collecting information, including when limited to particular content (which
does not change its character as information)" is treated as "within the realm
of abstract ideas"). Thus, the particular instructions transmitted to the user
that guide the user along the representative path (instructions to pause and
sales data for products) do not change the character of claim 8.
Furthermore, and despite the recitation of a processor, indoor tracking
system, and portable viewing device, we agree with the Examiner that claim
8 is directed to a process that can be done mentally or with pen and paper.
The Federal Circuit has concluded mental processes, even when peiformed
by a computer, are ineligible abstract ideas. Specifically, the Federal Circuit
explained that "purely mental processes can be unpatentable, even when
performed by a computer." CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375-76 (Fed. Cir. 2011). The claims in CyberSource
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recited steps for verifying credit card transactions over the Internet.
CyberSource, 654 F.3d at 1370. The Federal Circuit agreed with the district
court that the claimed method "simply requires one to 'obtain and compare
intangible data pertinent to business risks."' CyberSource, 654 F.3d at 1370
(quoting CyberSource Corp. v. Retail Decisions, Inc., 620 F.Supp.2d 1068,
1078 (N.D. Cal. Mar. 27, 2009)). The Federal Circuit also determined a
computer-implementation of essentially the same method claiming a mental
process was ineligible. 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 Gottschalk v. Benson.").
We agree with the Examiner that claim 8 is directed to an abstract
idea and, thus, tum to step 2 of the Alice analysis.
Step Two of Alice Framework
In step two of our Alice analysis, we determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58.
The Examiner concludes the recited limitations are all just steps for
data acquisition, processing, and reporting, which do not add significantly
more to the abstract idea. Final Act. 2, 7. In other words, the Examiner
concludes the claims recite only elements that are part of the abstract idea
and does not recite additional elements. Final Act. 2. The Examiner also
explains that the recited "indoor tracking system" and "portable viewing
device" are generically and generally recited computer hardware used to
acquire and output data, which is simply insignificant extra-solution activity.
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Final Act. 2-3 (citing Spec. ,r,r 31, 34); Ans. 4. The Examiner concludes the
dependent claims simply recite additional steps, or further refinement of the
already recited steps, of data acquisition, processing, and reporting. Final
Act. 7. The Examiner concludes the claims, therefore, do not amount to
significantly more because the claims: require only a generic computer to
perform generic, well-understood, routine, and conventional computer
functions (i.e., acquiring, processing, and reporting data is old and well
known); do not recite an improvement to another technology or technical
field; and are not rooted in computer technology. Final Act. 2, 7; Ans. 4.
As mentioned above, Appellants assert the recited "indoor tracking
system," using that system to determine a representative path, guiding a user
along the representative path using a portable viewing device, and providing
data during the guided path, when considered in combination, amount to
significantly more than the abstract idea. App. Br. 7 ( citing BASCOM, 827
F.3d at 1348). Appellants' argument is unavailing. Reply Br. 4---6. Notably,
unlike the claims in BASCOM, claim 8 does not require any particular
configuration of components. Nor have Appellants persuasively explained
how the particular combination of steps ( acquiring data using the indoor
tracking system, processing that data to determine a representative path, and
transmitting data to a portable viewing device) amounts to significantly
more than the abstract idea itself.
An inventive concept "cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Alice, 134
S. Ct. at 2355 (explaining that, after determining a claim is directed to a
judicial exception, "we then ask, ' [ w J hat else is there in the claims before
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us?"' (emphasis added, brackets in original) (quoting Mayo, 566 U.S. at
78)). Instead, an "inventive concept" is furnished by an element or
combination of elements that is recited in the claim in addition to the judicial
exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 134 S. Ct. at
2355 (citing Mayo, 566 U.S. at 72-73); see BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme
Court in Alice "only assessed whether the claim limitations other than the
invention's use of the ineligible concept to which it was directed were well-
understood, routine and conventional," (emphasis added)).
On the other hand, "[i]f a claim's only 'inventive concept' is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea." BSG Tech, 899 F.3d at 1290-91 ( citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG Tech, 899 F.3d at
1291.
The only components recited in claim 8 are an "indoor tracking
system" used to collect previous path data, a "portable viewing device" that
receives the transmitted instructions, and a processor that performs the
receiving, determining, and transmitting steps. However, as stated by the
Examiner, both the tracking system and viewing device are generally and
generically recited, and Appellants' Specification suggests that these are
well-known elements being used as intended. See Spec. ,r,r 33, 47, 50
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( disclosing the tracking system can be the Micro-Location system from
NearBuy Systems), 41 (disclosing the viewing device can be a smartphone),
Figs. 2, 5. The processor that performs the steps is also generically and
generally recited and Appellants do not argue the processor executing the
method steps provides an inventive concept. In other words, claim 8
invokes computers merely as a tool to implement an abstract idea for
analyzing and presenting information in a particular way. See BSG Tech,
899 F.3d at 1286. Simply using generic computing devices is not "an
improvement in computers as tools," like those claims found patent-eligible.
Elec. Power, 830 F.3d at 1354.
Appellants do not persuasively explain how or why the particular
arrangement ( or the recited ordered combination) amounts to "significantly
more" sufficient to render the claimed abstract idea patent-eligible subject
matter. Claim 8 's steps relating to acquiring, processing, and reporting the
data are the steps that comprise the abstract idea itself and, therefore, are
insufficient to provide an inventive concept that would render claim 8
patent-eligible.
Moreover, simply using a generic computer to automate a process
does not confer eligibility onto an otherwise abstract idea because it does not
improve a computer or technology, but rather improves the process itself.
See Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (explaining that the
claimed steps could easily "be carried out in existing computers long in use,
no new machinery being necessary"); CyberSource, 654 F.3d at 1375-76
( explaining that "purely mental processes can be unpatentable, even when
performed by a computer"); see also Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[O]ur precedent is
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clear that merely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea."). Thus, claim 8's mere recitation of an indoor tracking
system and a portable viewing device neither changes claim 8 's character ( as
discussed above) nor confers patent-eligibility.
Finally, Appellants contend claim 8 is not directed to an abstract idea
because it does not pre-empt all ways of providing guided walkthroughs of a
store. App. Br. 8. We disagree that this demonstrates patent eligibility in
this case. Claim 8 limits the identified abstract idea only by limiting the type
of information acquired, processed, and reported. Moreover, although
"preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility .... Where a
patent's claims are deerned only to disclose patent ineligible subject matter
under the lviayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("And [the fact]
that the claims do not preempt all price optimization or may be limited to
price optimization in the e-commerce setting do[ es] not make them any less
abstract.").
Thus, the claimed limitations, considered both individually and
together, do not add significantly more to the abstract idea and, therefore, do
not render the subject matter patent eligible.
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Summary
For the above reasons, Appellants have not persuaded us the
Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
NEW GROUND OF REJECTION OF CLAIM 15
Construction
Claim 15 recites "a determining module that determines a
representative path."3 Even though claim 15 recites a "module," rather than
a "means," we construe this limitation as a means-plus-function limitation
because the recited "determining module" would not be "understood by
persons of ordinary skill in the art to have a sufficiently definite meaning as
the name for structure" that is capable of carrying out the recited functions.
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en
bane) (citing Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584
(Fed. Cir. 1996)). More specifically, the presumption against applying
35 U.S.C. § 112, sixth paragraph, is overcome because the claim merely
"recites 'function without reciting sufficient structure for performing that
function."' Williamson, 792 F.3d at 1348 (quoting Watts v. XL Sys., Inc.,
232 F.3d 877, 880 (Fed. Cir. 2000)).
3 Although claim 15 also recites "a first transmitting module that transmits
instructions to a portable viewing device," we do not treat this limitation as a
means-plus-function limitation for purposes of this Decision because the
only function recited is transmitting information-a function which, on its
face, appears to be a basic function such that a person of ordinary skill in the
art would have understood the "transmitting module" to provide sufficient
structure for that function. Should claim 15 undergo further prosecution, we
leave to the Examiner and Appellants to further explore whether this
limitation is a means-plus-function limitation.
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As in Williamson, the claims here do not recite the term "means," but
"the [ determining module] limitation is drafted in the same format as a
traditional means-plus-function limitation, and merely replaces the term
'means' with 'nonce' word 'module,' thereby connoting a generic 'black
box' for performing the recited computer-implemented functions."
Williamson, 792 F.3d at 1350. The term "module" in this context is used as
a generic term tantamount to reciting a means because "module" provides no
indication of the structure necessary to perform the recited functions.
Similarly, the prefix "determination" provides one of ordinary skill in the art
no insight on the structure necessary to perform the recited functions. Here,
as in Williamson, even if one of ordinary skill in the art would be capable of
programming a computer to perform the recited functions, it is not sufficient
to create the structure not otherwise disclosed. Williamson, 792 F.3d at
1351.
The Specification's disclosure that the system may be implemented
using "software modules that provide functionality when executed by
processor 22" suggests the modules may simply be software executing on
generic computer components, which, without specific programming, are not
capable of performing each of the recited functions. Spec. ,r 25; see
Williamson, 792 F.3d at 1350-51 (finding the presumption against invoking
§ 112, sixth paragraph, is overcome because the recitation of a "distributed
learning control module" connotes insufficient structure for carrying out the
recited functions). The Specification provides no explanation or support for
implementing the determining module other than in software. See Spec.
,r 25. Claim 15's "determining module" "recites 'function without reciting
sufficient structure for performing that function,"' because Appellants'
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system is unable to perform the recited function without specific
programmmg. Williamson, 792 F.3d at 1349 (quoting Watts, 232 F.3d at
880).
Because claim 15 recites a "determining module," which is merely a
substitute for the phrase "means for," associated with functional language,
claim 15 invokes 35 U.S.C. § 112, sixth paragraph.
Indefiniteness
Given that the determining module is a means-plus-function
limitation, we look to Appellants' Specification to determine whether there
is sufficient structure to support the recited functions in claim 15 and, in
particular, "determin[ing] a representative path," which "comprises merging
a plurality of paths previously taken through the store by each customer of
the set of customers." The Specification describes determining a
representative path only in functional terms. We see nothing in the
Specification describing any structure for the recited determining module.
For software means-plus-function limitations, the Federal Circuit has
held that corresponding structure may be sufficiently disclosed in the form
of an algorithm. Aristocrat Techs. Aust!. Pty Ltd. v. Int 'l Game Tech., 521
F.3d 1328, 1333 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int'! Game Tech.,
184 F.3d 1339, 1348 (Fed. Cir. 1999) ("A general purpose computer, or
microprocessor, programmed to carry out an algorithm creates 'a new
machine, because a general purpose computer in effect becomes a special
purpose computer once it is programmed to perform particular functions
pursuant to instructions from program software."' ( quoting In re Alappat, 33
F.3d 1526, 1545 (Fed. Cir. 1994)). Nevertheless, the Examiner finds the
Specification does not provide any algorithm or flowchart to support the
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claimed elements and Appellants do not dispute that finding. See Reply
Br. 3 (arguing "a specific flowchart or algorithm is not required to satisfy 35
U.S.C. § 112(a), first paragraph"). Moreover, we do not see, nor have
Appellants pointed to, any structure in the Specification sufficient to perform
at least the determining function.
For the above reasons, we enter a new ground of rejection of claim 15
as being unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite. Claims 16-20 depend from claim 15 and, therefore, also are
indefinite under 35 U.S.C. § 112, second paragraph, and we enter a new
ground of rejection of claims 16-20 on this basis. Because we determine
claim 15 is indefinite, determining the necessary structure required by claim
15 would require speculative assumptions. Therefore, we reverse the
Examiner's rejection of claim 15 under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Cf In re Steele,
305 F.2d 859, 862 (CCPA 1962) (determining a prior art rejection cannot be
sustained if a person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language). Claim
15 recites commensurate functional limitations to claims 1 and 8. Thus, if
we did not construe claim 15 under 35 U.S.C. § 112, sixth paragraph, we
would treat the rejection of claim 15 under 35 U.S.C. § 112, first paragraph,
the same as we treat the rejection of claims 1 and 8 under 35 U.S.C. § 112,
first paragraph, discussed below.
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THE 35 U.S.C. § 112 REJECTIONS
Rejection of Claims 1 and 8
The Examiner rejects claims 1, 8, and 15 4 under 35 U.S.C. § 112 for
failing to comply with the written description requirement. Final Act. 8-9;
Ans. 6-7. Specifically, the Examiner finds Appellants' Specification does
not provide written description support for "determining a representative
path ... wherein determining the representative path comprises merging a
plurality of paths previously taken through the store by each customer of the
set of customers," as recited in each of the independent claims. Final
Act. 8-9. The Examiner finds Appellants' Specification does not disclose
how to determine a representative path or how to merge paths in sufficient
detail to clearly define "what kind of processes 'merging' would involve."
Final Act. 9; Ans. 6-7. The Examiner finds the Specification provides
insufficient information ( e.g., steps, flowcharts, algorithms) describing how
to determine representative paths and how customer paths are merged.
Ans. 6-7 (citing MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP")
§ 2161.01 ). Specifically, the Examiner finds that, although paragraph 52
"states that paths are merged for" three customers "into a single blended
path," the Specification fails to provide an explanation of the steps necessary
to merge or blend the paths. Ans. 7.
Appellants argue no flowchart or algorithm is necessary to satisfy
35 U.S.C. § 112 because the relevant question is whether the written
description describes the claimed invention in sufficient detail such that an
4 As explained in the prior section, we do not address the Examiner's
rejection of claim 8 as failing to comply with the written description
requirement because we newly reject claim 8 as indefinite.
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ordinarily skilled artisan could reasonably conclude the inventor possessed
the claimed invention. App. Br. 10 (citing MPEP § 2163(!)); Reply Br. 3.
Appellants assert the Specification supports the determining a representative
path and merging paths steps recited in the claims 1, 8, and 15. App. Br. 9-
11 ( citing Spec. ,r,r 4 7-51 ).
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact.
Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed.
Cir. 1997) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991) ). The Examiner has the initial burden of presenting evidence or
reasoning to explain why persons skilled in the art would not recognize in
the original disclosure a description of the invention defined by the claims.
In re Wertheim, 541 F.2d 257,263 (CCPA 1976). The Federal Circuit has
explained the test for written description support as follows:
[T]he test requires an objective inquiry into the four comers of
the specification from the perspective of a person of ordinary
skill in the art. Based on that inquiry, the specification must
describe an invention understandable to that skilled artisan and
show that the inventor actually invented the invention claimed .
. . . Thus, we have recognized that determining whether a
patent complies with the written description requirement will
necessarily vary depending on the context. Capon v. Eshhar, 418
F.3d 1349, 1357-58 (Fed. Cir. 2005). Specifically, the level of
detail required to satisfy the written description requirement
varies depending on the nature and scope of the claims and on
the complexity and predictability of the relevant technology. Id.
For generic claims, we have set forth a number of factors for
evaluating the adequacy of the disclosure, including "the existing
knowledge in the particular field, the extent and content of the
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prior art, the maturity of the science or technology, [ and] the
predictability of the aspect at issue." Id. at 1359.
See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (brackets in original).
Thus, as Appellants argue, the question before us is whether a person
of ordinary skill in the art reviewing the Specification objectively would
have considered the inventor to have invented the subject matter of claim 1,
including the recited determining step. In the pending obviousness
rejections, the Examiner cites prior art references that Appellants
acknowledge disclose "merging paths and determining a most popular path."
App. Br. 10 (citing Final Act. 11, 25; Kurtti ,r 15; Busch ,r,r 59---60).
The Specification discloses that "[g]uided walkthrough server 504 ...
automatically identifies representative paths taken by representative
customers for a given store." Spec. ,r 48. The Specification describes
storing customer routes through a store as a collection of coordinates taken
at certain intervals and stored with a customer identification, date, and time.
Spec. ,r 48. The Specification discloses "[u]sing configurable location
precision to allow for close paths to be deemed similar" to calculate "the
most 'popular' route of a combination of coordinate-to-coordinate
segments" and identifying a representative path, which may involve one or a
combination of: using the most popular route, "a path chosen of a single
customer who has the most route segments that match the most popular
route," or "both single and merged customer paths" weighted based on
certain factors. Spec. ,r 48.
The Specification also discloses that "in one embodiment, upon
receiving the criteria for determining the representative path, a server may
merge paths of customers meeting the criteria of the filter into a single
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blended path." Spec. ,r 51; see also Spec. ,r 52 ("At 704, one embodiment
merges paths of different customers who meet the criteria of the filter.").
Within the context of these disclosed embodiments, the Specification then
discloses selecting a "best fit" path as "the one customer path that is most
representative of the blended path." Spec. ,r,r 51-52.
Appellants' disclosure and the cited prior art indicates the technology
of determining and merging paths was relatively advanced and that a person
of ordinary skill in the art would have known what Appellants' recited
determining steps encompassed. When a claim limitation involves elements
that were "well known as of the filing date, the inventors" need not describe
the details of the known aspects. See En Ocean GmbH v. Face Int 'l Corp.,
742 F.3d 955,961 (Fed. Cir. 2014) (citing Webster Loom Co. v. Higgins,
105 U.S. 580, 586 (1881)); see also Webster Loom, 105 U.S. at 586 ("That
which is common and well known is as if it were written out in the patent
and delineated in the drawings"). "This enables patents to remain concise
statements of what is new, not cumbersome repetitions of what is already
known and readily provided by reference." EnOcean, 742 F.3d at 961---62
( quoting Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F .3d
1308, 1324 (Fed. Cir. 2010)).
Thus, we agree with Appellants that their Specification provides
sufficient support for the determining step recited in claims 1 and 8 to meet
the written description requirement of 35 U.S.C. § 112.
Rejection of Claims 4, 11, and 18
The Examiner rejects claims 4, 11, and 18 under 35 U.S.C. § 112 for
failing to comply with the written description requirement. Final Act. 9.
Specifically, the Examiner finds Appellants' Specification does not provide
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written description support for "providing stock-outs for products within a
location of the store where the pause occurs," as recited in claims 4, 11, and
18. Final Act. 9. The Examiner also finds the Specification identifies "two
kinds of 'pauses"'----either stopping playback of the instructions that guide a
user through the store or "a user pause along a path." Ans. 8 (citing Spec.
,r,r 26, 28). The Examiner states that the pause recited in claims 4, 11, and
18 must be interpreted as "a user pause along a path" based on the
independent claims' recitation that the "'pause' is based on 'instructions to
pause along the path."' Ans. 8. The Examiner finds the Specification,
therefore, discloses "that pauses that do not lead to sales may indicate stock-
outs," but does not disclose "providing stock-outs where pauses occur."
Final Act. 4 ( citing Spec. ,r 30), 9; Ans. 7-8 ("The disclosure never teaches
instructions to pause, and then providing stock-outs in the location of the
pause. The written description may teach providing stock-outs after a pause
in playback, but not after a pause in the path.").
Appellants argue the Specification clearly discloses providing tum-
by-tum instructions, including an instruction to pause at points along a
representative path where a customer paused along that path. App. Br. 11
( citing Spec. ,r 26). Appellants also contend the Specification discloses
pausing playback and activating a filter to show stock-outs for the area of the
store in which the user is located. App. Br. 12 ( citing Spec. ,r 28).
We first look to the proper construction of claims 4, 11, and 18.
Claim 4, for example, depends from claim 1. Claim 1 recites, in relevant
part, "transmitting instructions to a portable viewing device to guide the user
along the representative path ... wherein the simulated shopping comprises
instructions to pause along the path that represent a pause from the
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previously taken paths." Claim 4 also recites that "transmitting instructions
to guide the user comprises providing stock-outs for products within a
location of the store where the pause occurs." Thus, claim 4 also defines
claim 1 's step of "transmitting instructions" to include "providing stock-outs
for products within a location of the store where the pause occurs."
We agree with the Examiner that "the pause" recited in claim 4 refers
back to claim 1 's "a pause from the previously taken paths." The pause
necessarily occurs prior to providing stock-outs because: "providing stock-
outs" is part of the transmitting instructions step; the instructions guide the
user along the recited representative path; and determining the representative
path includes merging the paths previously taken. In other words, the
recited pause in the previously taken paths must have occurred prior to
determining the representative path ( which is made up of the previously
taken paths) that, in tum, necessarily occurs before transmitting instructions
to guide the user along the representative path.
Claim 4, however, recites using the pause to identify the location of
products for which the method provides stock-outs, not to identify a point in
time at which the stock-outs are provided. Put another way, the "within a
location of the store where the pause occurs" clause recited in claim 4
modifies the recited products and identifies the location of the products for
which the method provides stock-outs (i.e., those products within the
location where the pause occurred). Claim 4, therefore, simply adds the
limitation that the transmitting instructions step includes providing stock-
outs for the products at the identified location.
As Appellants argue, the Specification discloses providing "tum-by-
tum instructions [that] may also instruct the user to pause at certain points
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along the representative path." Spec. ,r 26. The Specification also discloses
"[t]he pauses may correspond to pauses taken by a customer whose actions
are represented by the representative path" and the guided walkthrough may
provide business intelligence data "relate[ d] to the visible items or store
areas, as seen by the user." Spec. ,r 26. The Specification also discloses that
a representative path may include lengthy pauses without purchases and a
user may "activate a business intelligence filter to show stock-outs ... for
that area of the store." Spec. ,r 28. Given these disclosures and our
construction of claim 4, we agree with Appellants that the Specification
provides written description support for claims 4, 11, and 18.
For the above reasons, we are persuaded the Examiner erred in
rejecting claims 4, 11, and 18 under 35 U.S.C. § 112 for failing to comply
with the written description requirement.
THE 35 U.S.C. § 103 REJECTIONS
Rejection of Claims 1, 2, 6-9, 13-16, and 20
The Examiner finds the combination of Curlander, Busche, and
Figueroa teaches or suggests every limitation recited in independent claims
1, 8, and 15. Final Act. 10-21. Of particular note, the Examiner finds:
Curlander teaches or suggests "determining a representative path ... based
upon paths previously taken through the store by the set of customers" and
"providing sales data of a product"; Busche teaches or suggests "merging a
plurality of paths previously taken through the store by each customer of the
set of customers" ("merging step"); and Figueroa teaches or suggests "the
simulated shopping comprises instructions to pause along the path that
represent a pause from the previously taken paths" ("pause limitation").
Final Act. 4--5 (citing Curlander ,r,r 149-152; Busche ,r 39), 10-13 (citing
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Curlander ,r,r 21, 35, 149--152, 163; Busche ,r,r 59--60; Figueroa (claim 11)).
The Examiner also provides a rationale for combining the cited teachings
from Curlander, Busche, and Figueroa. Final Act. 11-12.
Appellants argue claims 1-3, 5-10, 12-17, 19, and 20 as a group. See
App. Br. 12-16. Claims 3, 5, 10, 12, 17, and 19 stand rejected under
different grounds than the rest of the claims. Appellants present a separate
argument for claims 4, 11, and 18. We select independent claim 1 as the
representative claim for claims 2, 6-9, 13-16, and 20, which stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). We address claims 3-5, 10-12,
and 17-19 in subsequent subsections.
Appellants assert the claimed invention's purpose of simulating a
shopping experience to glean insight into customer behavior differs from the
prior art's purpose of providing information while guiding a customer
through an actual shopping experience. App. Br. 13-15. Appellants
acknowledge that "Curlander discloses guiding a customer through a store
through instructions," but contend that Curlander's instructions are "NOT
from the perspective of a customer (i.e., simulating the shopping of a
customer) based on 'paths previously taken', so it fails to disclose
'simulated shopping' from the perspective of a customer that is not the
current customer." App. Br. 14--15. Appellants also argue Curlander's
previous routes "are for the SAME shopper that the profile is being
determined for." Reply Br. 4.
The Examiner finds that Curlander teaches "shopping characteristics
such as previous routes through the store are used to segment customers and
suggest products or services and create a shopping list which in tum is used
to propose a route." Final Act. 10 (citing Curlander ,r,r 21, 35, 149, 163);
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Ans. 8-9. The Examiner finds Curlander, therefore, "uses history of
previous customers to provide shopper assistance as claimed in the present
claims." Ans. 9.
We are not persuaded the Examiner erred. To the extent Appellants
argue the different purposes of the prior art and the claimed invention confer
patentability without identifying particular limitations the prior art allegedly
fails to teach, such an argument does not identify error in the Examiner's
findings. Moreover, Appellants' arguments that Curlander's previous routes
do not teach or suggest the determining step because Curlander' s previous
routes are for the shopper being guided (i.e., the same shopper rather than
different shoppers) is not commensurate with the scope of the claims.
Nothing in the claims precludes the recited user from being one of the
"customers from the set of customers." Furthermore, claim 1 's recitation of
guiding a user along a path "to simulate shopping" does not preclude the
user from following that user's own prior path(s) because the user is still
guided along a prior path and is, therefore, "simulating" the prior shopping
experience. Finally, we agree with the Examiner that Curlander teaches
segmenting customers to suggest products to create a shopping list that, in
tum, is used to create a route through a store; Appellants provide no
persuasive argument to the contrary. See Cur lander ,r,r 21, 3 5, 149, 163;
Final Act. 10. For these reasons, we disagree with Appellants that Curlander
fails to teach the determining limitation recited in claim 1.
Appellants also argue Busche and Figueroa fail to cure Curlander' s
deficiencies. App. Br. 15-16. Specifically, Appellants argue Busche's
"disclosure of generic 'historical data"' does not teach the merging step
because "the 'historical data' must be 'a plurality of paths previously taken
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through the store by each customer of the set of customers."' App. Br. 15.
Appellants assert that, although Figueroa discloses instructions to stop at a
certain location, Figueroa fails to teach or suggest its "determined stop is
based on a stop on a path made by a previous customer." App. Br. 16.
To the extent these arguments constitute an assertion that neither
Busche nor Figueroa cures Curlander's alleged deficiency with respect to
teaching determining a representative path based on paths previously taken,
these arguments are unpersuasive because, as discussed above, we agree
with the Examiner that Curlander teaches determining a representative path
based on paths previously taken and, therefore, is not deficient. To the
extent these arguments constitute an assertion that Busche fails to teach or
suggest "merging a plurality of paths previously taken through the store" and
Figueroa fails to teach or suggest the pause limitation, we address such
arguments below.
As already discussed above, the Examiner finds Curlander teaches or
suggests "determining a representative path ... based upon paths previously
taken." See Final Act. 10-11. The Examiner finds Busche teaches merging
paths based on previous paths taken and finds the combination of Curlander
and Busche teaches the merging step. See Final Act. 10-11 (citing Busche
,r,r 59---60), 25. Similarly, the Examiner Curlander teaches or suggests
providing instructions to guide a user along a route based on paths
previously taken and Figueroa teaches or suggests displaying a route that
includes a stop at merchandise in finding the combination of Curlander and
Figueroa teaches the pause limitation. Final Act. 12. The Examiner
provides a rationale for combining Busche and Figueroa with Curlander.
Final Act. 11-12. Appellants argue neither Busche nor Figueroa cure the
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deficiencies of Curlander. However, as discussed above, the Examiner's
findings with respect to Curlander' s teachings are not deficient. Thus,
Appellants arguments do not persuade us that Busche, in combination with
Curlander, fails to teach or suggest the merging step recited in claim 1 or
that Figueroa, in combination with Curlander, fails to teach or suggest the
pause limitation recited in claim 1.
For the above reasons, we are not persuaded the Examiner erred in
rejecting representative claim 1 as obvious in view of the combination of
Curlander, Busche, and Figueroa. For the same reasons, claims 2, 6-9, 13-
16, and 20 fall with representative claim 1.
Rejection of Claims 4, 11, and 18
Appellants argue claims 4, 11, and 18 as a group. See App. Br. 16-
17. We select claim 14 as the representative claim for claims 11 and 18,
which stand or fall with claim 4. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds the combination of Curlander, Busche, and
Figueroa teaches or suggests every limitation recited in claims 4, 11, and 18.
Final Act. 13, 17, 22. Of particular relevance to Appellants' arguments
addressing the additional limitations recited in these claims, the Examiner
finds Curlander teaches or suggests "providing stock-outs for products
within a location of the store where the pause occurs" ("providing stock-outs
step"), as recited in representative claim 4. Final Act. 13 ( citing Curlander
,r 79). The Examiner finds Curlander discloses providing in-stock quantities,
which includes stock-outs (i.e., an in-stock quantity of zero). Final Act. 13;
Ans. 10.
Appellants assert "a mere disclosure of inventory, in-stock quantity,
etc., which are clearly known concepts, is not a disclosure of the inventive
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functionality of' the providing stock-outs step. App. Br. 16. Appellants
contend the recited providing stock-outs step provides a certain advantage
not provided in Curlander. App. Br. 17 ( citing Spec. ,r 28). The Examiner
finds Appellants' alleged advantage is not recited in claims 4, 11, and 18.
Ans. 10.
As the Examiner finds, Curlander discloses that its system includes
information about products including an "In-stock quantity" of each product.
Final Act. 13 ( citing Curlander ,r 79); see Curlander ,r 89. 5 Curlander also
discloses that its virtual shopping assistance system can access product
information and the disclosed user interface can "display promotional
information and other product information." Curlander ,r,r 34, 40-41. These
disclosures teach, or at least suggest, displaying an in-stock quantity of a
product, which would include a quantity of zero (i.e., a "stock-out").
Because Curlander suggests displaying a product's in-stock quantity for
products generally, Curlander also suggests displaying the quantity for
products at locations where the recited pause occurs, as recited in the
providing stock-outs step.
For the above reasons, we are not persuaded the Examiner erred in
rejecting representative claim 4 as obvious in view of the combination of
Curlander, Busche, and Figueroa. For the same reasons, claims 11 and 18
fall with representative claim 4.
Rejections of Claims 3, 5, 10, 12, 17, and 19
The Examiner finds the combination of Curlander, Busche, Figueroa,
and Otto teaches or suggests every limitation recited in claims 3, 10, and 17.
5 The Examiner cites Curlander's paragraph 79, but the "In-stock quantity"
is actually disclosed in paragraph 89.
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Final Act. 22-24. The Examiner finds the combination of Curlander,
Busche, Figueroa, and Kurtti teaches or suggests every limitation recited in
claims 5, 12, and 19. Final Act. 24--27. Appellants do not argue claims 3, 5,
10, 12, 17, and 19 separately with particularity. Thus, for the reasons
discussed above, we are not persuaded the Examiner erred in rejecting
claims 3, 10, and 17 as obvious in view of Curlander, Busche, Figueroa, and
Otto or claims 5, 12, and 19 as obvious in view of Curlander, Busche,
Figueroa, and Kurtti.
SUMMARY
We affirm the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 101.
We enter a new ground of rejection of claims 15-20 under 35 U.S.C.
§ 112, second paragraph.
We reverse the Examiner's decision to reject claims 1, 4, 8, 11, 15,
and 18 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 103.
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision to reject claims 1-20 is
affirmed. See 37 C.F.R. § 41.50(a)(l ).
We enter a new ground of rejection of claims 15-20 within our
authority under 37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new
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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:
(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 ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b )(1 ), in order to preserve the right to
seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection, the effective date of the affirmance is deferred until
conclusion of the prosecution before the Examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
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).
AFFIRMED
32