2019001705 (P.T.A.B. Sep. 23, 2020)

Fisher, Michelle

Patent Trials and Appeals BoardSep 23, 2020

2019001705 (P.T.A.B. Sep. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/253,607 04/15/2014 Michelle Fisher BLZMP004C51 1402 12120 7590 09/23/2020 Michelle Fisher 2930 Domingo Ave Suite 123 Berkeley, CA 94705 EXAMINER GOYEA, OLUSEGUN ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 09/23/2020 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): mfisher@blazemobile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHELLE FISHER ___________ Appeal 2019-001705 Application 14/253,607 Technology Center 3600 ____________ Before CARL W. WHITEHEAD JR., JOHN F. HORVATH and SCOTT RAEVSKY, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge WHITEHEAD JR. Opinion Concurring filed by Administrative Patent Judge HORVATH. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 has filed a Request for Rehearing under 37 C.F.R. § 41.52 on July 2, 2020 (“Request”), from our Decision on Appeal mailed May 4, 2020 (“Decision”), wherein we affirmed the 35 U.S.C. § 112(a), (b) rejections as well as the 35 U.S.C. § 103 rejection of claims 1, 6, 11, 16, 20– 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Michelle Fisher as the real party in interest. Appeal Brief 2. Appeal 2019-001705 Application 14/253,607 2 33, 35, 36, 40, 41, 44, 45, 49, 50 and 52–632. See Decision 14. Claims 2–5, 7–10, 12–15, 17–19, 34, 37–39, 42, 43, 46–48 and 51 are cancelled. Final Action 3. We have reviewed Appellant’s Request but find no arguments or evidence identifying an issue that we either misapprehended or overlooked. Appellant “requests consideration of the Board Decision dated 3/5/20 for Patent Application No. 15/076,578 in which the Board reversed the Examiner’s rejection.” Request 2. Appellant further contends, “[I]n related patent application 14/253,648 which was also under Appeal, it is respectively requested that consideration of the Board decision under 37 CFR 41.52 in which the Board reversed the Examiner’s rejection for the same reasons as patent application no. 15/076,578.” Request 3. Respectfully, neither decision cited by Appellant has been designated precedential by the PTAB, therefore neither decision is binding upon this panel. See PTAB Standard Operating Procedure (SOP) 2 (Rev.10), available at http://www.uspto.gov/patents-application-process/patent-trial-and-appeal- board/resources. Appellant further contends: The Board may have overlooked Applicant’s statement regarding this on page 11 of the Appeal Brief dated May 17, 2018 which stated the following: “The Board for Patent Appeals and Interferences (BPAI) has specifically stated that KSR tell us that ‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some 2 Claims Appendix lists 63 claims. See Claims Appendix 8. The Examiner and Appellant acknowledge only 62 claims. See Appeal Brief 8; Answer 4. Claim 63 is dependent upon independent claim 11. We address claim 63 with claim 11. Appeal 2019-001705 Application 14/253,607 3 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” Request 4–5. Respectfully, the statement was not overlooked by the panel. The statement was under the heading “Legal Standard for an Obviousness Rejection” along with other citations to the MPEP and various other court decisions. Appeal Brief 11–12. We did not find Appellant’s citation to the MPEP and various court decisions to be demonstrative of Examiner error. See generally Appeal Brief; Reply Brief. Respectfully, we do not find Appellant’s citation to the MPEP, various court decisions, as well as, PTAB decisions to be demonstrative of Examiner error. See generally Request. Moreover, Appellant did not argue in the Appeal that the claims were patentable because the Examiner failed to articulate sufficient reasoning to combine the cited prior art. See Appeal Brief 8–30. As stated in our Decision, any arguments not made in the Appeal Brief were waived. See Decision 5–6 (citing Ex parte Frye, 94 USPQ2d at 1072, 1075 (BPAI 2010) (precedential); Hyatt 551 F.3d 1307, 1313-14 (Fed. Cir. 2008)); see also 37 C.F.R. § 41.37(c)(1)(iv). We cannot have erred by failing to consider an argument Appellant has waived. DECISION Accordingly, for the reasons stated above, Appellant’s Request for Rehearing is denied. Appeal 2019-001705 Application 14/253,607 4 CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 41, 50, 54, 60 112 Written Description 41, 50, 54, 60 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50, 52–62 112 Indefiniteness 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50, 52–63 1, 6, 11, 16, 20–22, 25– 28, 30, 31, 35, 36, 40, 41, 44, 45, 49, 50, 52, 55–58, 61– 63 103 Rackley, Clisham 1, 6, 11, 16, 20–22, 25–28, 30, 31, 35, 36, 40, 41, 44, 45, 49, 50, 52, 55–58, 61–63 23 103 Rackley, Hayashi 23 24, 29 103 Rackley, Clisham, Bemmel 24, 29 32, 33 103 Rackley, Clisham, Ruano 32, 33 53, 59 103 Rackley, Clisham, Gobburu 53, 59 54, 60 103 Rackley, Clisham, Gautier 54, 60 Overall Outcome 1, 6, 11, 16, 20–33, 35, 36, 40, 41, 44, 45, 49, 50, 52–63 DENIED Appeal 2019-001705 Application 14/253,607 5 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHELLE FISHER ___________ Appeal 2019-001705 Application 14/253,607 Technology Center 3600 ____________ Before CARL W. WHITEHEAD JR., JOHN F. HORVATH and SCOTT RAEVSKY, Administrative Patent Judges. Opinion of the Board filed by Administrative Patent Judge WHITEHEAD JR.. Opinion Concurring filed by Administrative Patent Judge HORVATH. DECISION ON REQUEST FOR REHEARING Appeal 2019-001705 Application 14/253,607 6 HORVATH, Administrative Patent Judge, concurring. I agree with the majority’s decision to deny Appellant’s request for rehearing, and write separately to express additional reasons the request should be denied. As stated above, Appellant requests “consideration of a new argument based upon recent relevant decision[s] by the Board for related patent applications.” Request 2 (citing MPEP § 1214.03(a)(2)). Specifically, Appellant asks us to consider the Board’s decisions on appeal in Application Nos. 15/076,578 (“the ’578 Application”) and 14/253,648 (“the ’648 Application”). Appellant failed to identify this appeal as a related appeal in the two appeals later-filed in the ’578 and ’648 Applications, which our rules require. See 37 C.F.R. § 41.37(c)(1)(ii) (requiring the identification by application of “all other prior and pending appeals” that “may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal”). Had Appellant done so, the panel could have considered whether, and to what extent, the three appeals raised overlapping issues such that a decision in one would affect decisions in the others. By failing to do so, Appellant has denied this panel that opportunity, and cannot now ask this panel to consider whether and how the issues decided by another panel in the other appeals affect this appeal. Id. (“If an appeal brief does not contain a statement of related cases, the Office may assume there are no such related cases.”). Moreover, in this appeal, Appellant did not raise the argument that the claims were patentable because they recited a non-browser based application and the prior art failed to disclose a non-browser based application, i.e., the argument that led to the reversal of the Examiner’s rejections in the ’578 and Appeal 2019-001705 Application 14/253,607 7 ’658 Applications. See App. Br. 8–30; see also Request 2–3. Any arguments Appellant did not raise in its Appeal Brief were waived. See Decision 5–6; see also Ex parte Frye, 94 USPQ2d at 1075; Hyatt v. Dudas, 551 F.3d at 1313-14; 37 C.F.R. § 41.37(c)(1)(iv). Therefore, the panel cannot have erred by failing to consider an argument Appellant had waived. Finally, Appellant’s previously waived argument is unpersuasive in view of the references cited by the Examiner. Specifically, the Examiner cited Rackley for teaching a non-browser based application. See Final Act. 9 (citing Rackley ¶¶ 176, 194). Rackley teaches accessing billing information on a remote server using either “a computer online with web access or via a mobile device 15 with mobile views.” Rackley ¶ 176 (emphasis added). Rackley teaches the “mobile views” of mobile device 15 are obtained via a downloaded “mobile client (also called a mobile application or a ‘Mobile Wallet’).” Id. ¶ 194 (emphasis added). The Specification similarly identifies Appellant’s non-browser based application as a “Mobile Wallet application.” Spec. ¶ 15. Moreover, on page 30 of the appeal brief filed in the ’578 Application, Appellant argued the plain meaning of a “non-browser based application” was an application “operable without a network connection or offline.” Rackley teaches its mobile client or application “runs independently on the mobile device and does not require an active communication connection to the [server]” and, therefore, can “operate in an offline mode.” Rackley ¶ 176. That is, Rackley teaches its mobile client is a non-browser based application per Appellant’s definition of that term. Finally, Rackley teaches its mobile and web-based clients access the remote server using different interfaces. Id. ¶ 164 (disclosing the remote Appeal 2019-001705 Application 14/253,607 8 server has “three major interfaces” including a “mobile device (mobile client) interface” and a “world wide web (WWW) or Internet user interface (UI)). Rackley further teaches that users “may prefer to conduct certain types of functions . . . via an Internet web interface instead of via a mobile interface.” Id. ¶ 208 (emphasis added). That is, Rackley teaches the mobile device uses a mobile interface rather than a web interface because its mobile client is not a browser. Instead, as discussed above, it is a Mobile Wallet or non-browser based application. For all of the reasons expressed above, I agree with the majority’s decision to deny Appellant’s request for rehearing.