Hernan A. Cunico et al.

Patent Trials and Appeals Board

Feb 24, 2020

15483474 - (R) (P.T.A.B. Feb. 24, 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.
15/483,474 04/10/2017 Hernan A. Cunico SVL920150132US2_8150-0762 1039
112978 7590 02/24/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
ZEWDU, MELESS NMN
ART UNIT PAPER NUMBER
2643
NOTIFICATION DATE DELIVERY MODE
02/24/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte HERNAN A. CUNICO and ASIMA SILVA
____________________

Appeal 2018-007261
Application 15/483,474
Technology Center 2600
____________________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request for Rehearing1 under 37 C.F.R. § 41.52(a),
requesting that we reconsider our Decision of December 19, 2019, wherein
we affirmed the Examiner’s rejections of claims 21–40. We have
reconsidered our Decision in light of Appellant’s comments in the request,
and are not persuaded that we misapprehended or overlooked arguments
presented by Appellant.
Appellant’s request is denied.

1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board. Arguments not
raised, and Evidence not previously relied upon, pursuant to §§ 41.37, 41.41,
or 41.47 are not permitted in the request for rehearing except as permitted by
paragraphs (a)(2) through (a)(4) of this section.” 37 C.F.R. § 41.52(a)(1).
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Appellant’s Contentions
A. As to dependent claim 22, Appellant contends that as to the
Board Decision, the Board misapprehended Jordan’s teachings because:
[T]he Board stated the following:
We are unpersuaded by Appellant’s
contention. At, column 4, line 66, through column
5, line 10, Jordan explicitly teaches using a category
of relationship, as do column 5, lines 58-59 and 64-
65; and column 6, lines 22-47.
Req. Reh’g 2 (emphasis added).
Contrary to the Board’s contention, Jordan does not
“explicitly teach[] using a category of relationship,” as the term
“category of relationship” is not explicitly mentioned within
Jordan. As such, the Board must be applying some (unstated)
interpretation to arrive at this finding. Assuming, for sake of
argument, that Jordan’s reference to relationships, e.g., “parent,
child, spouse, significant other, relative, friend, co-worker, etc.,”
can also be considered a reference to category of references,
Appellants respectfully submit that this still does not teach or
suggest the limitations at issue.
The Board’s response does not address Appellants’
previously-presented arguments that the fact that a category of
relationship inherently exists does not establish that it is used
within a rule for contacting a contact. The Examiner’s analysis
is completely silent as to (i) the particular rule for contacting the
contact within the escalation plan and (ii) how that particular rule
for contacting the contact uses the category of relationship.
Appellants respectfully submit that the Board has either
misapprehended and/or overlooked these arguments.
Req. Reh’g 3 (emphasis added).
B. As to dependent claim 23, Appellant contends that as to the
Board Decision, the Board misapprehended Examiner’s argument because:
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The Board’s response to these arguments is found in the
paragraph spanning page 9 of the Decision. After reproducing
column 4, lines 36-39 of Jordan, the Board stated the following:
We agree with the Examiner that Jordan’s teaching
of tagging people within their social network
equates to rules for posting an escalation message to
a social network system.
Appellants respectfully submit that the Board has either
misapprehended and/or overlooked certain arguments presented
by Appellants.
First, at no time in either the appealed Second Office
Action or the Examiner Answer did the Examiner either:
(i) mention “tagging people” or (ii) equate tagging people to the
claimed rules for posting an escalation message to a social
networking system. Instead, on page 8 of the appealed Second
Office Action, the Examiner presented a naked citation to
column 4, lines 31-39 without analysis.
Req. Reh’g 4–5 (emphasis added).
C. As to dependent claim 24, Appellant contends that as to the
Board Decision:
The Board’s response to these arguments is found in the
paragraph spanning page 9 of the Decision. After reproducing
column 4, lines 36-39 of Jordan, the Board stated the following:
As to Appellant’s contention, we are unpersuaded.
As we have already noted above, at Column 4, line
66, through column 5, line 10, Jordan explicitly
teaches using a category of relationship, as do
column 5, lines 58-59 and 64-65; and column 6,
lines 22-47.
Appellants respectfully submit that the Board has either
misapprehended and/or overlooked certain arguments presented
by Appellants. Even assuming for sake of argument that “Jordan
explicitly teaches using a category of relationship,” as asserted
by the Board, the Board’s response does not address Appellants’
arguments that Jordan is silent as different categories of
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relationships so as to correspond to the claimed “sending an
escalation message to a contact of the recipient having a
relationship with the recipient of a different category than the
relationship between the sender and the recipient.” A mere
teaching of “a category of relationship” does not address this
argued deficiency within the teachings of Jordan.
Req. Reh’g 7 (emphasis added).
D. As to dependent claim 25, Appellant contends that as to the
Board Decision:
The Board’s response to these arguments is found in the
paragraph spanning pages 10 and 11 of the Decision, in which
the Board stated the following:
As to Appellant’s contention, we are
unpersuaded. At column 6, lines 23-47, Jordan
teaches that a message to a “daughter” contact may
vary in content. The daughter contact message may
be a basic message (e.g., “tell her mother to check
her phone”) or “it may be more detailed.” Id. We
deem this to reasonably suggest that any or all of the
unanswered message may be part of that more
detailed contact message.
Appellants respectfully submit that the Board has either
misapprehended and/or overlooked certain arguments presented
by Appellants.
The limitations missing from Jordan, as argued, are “an
amount of the unanswered message to expose within the first and
second escalation messages.” Neither the basic message (“tell
her mother to check her phone”) nor the detailed message (“it
may be more detailed”) describe an amount of the unanswered
message. Neither the basic message nor detailed message of
Jordan are an amount of the unanswered message.
Req. Reh’g 8 (emphasis added).
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ANALYSIS
A. Claim 22
As to Appellant’s above contention A, we disagree. The panel has not
misapprehended or overlooked Appellant’s argument. Rather, we found the
argument unpersuasive.
Appellant appears to be arguing that the panel’s use of the term
“explicitly” requires that the prior art must recite the term “category of
relationship.” Our use does not so require. Rather, the categories of
relationship are explicitly recited, i.e., “spouse, child, co-worker.” Jordan,
4:67–5:1. Further, we are unpersuaded by Appellant’s assertion that the
Office’s analysis is completely silent as to a “particular rule.” As Appellant
acknowledges, the panel cited column 4, line 66, through column 5, line 10.
In addition to categories of relationship, this portion of Jordan discusses
“priority,” “a specified threshold,” and “preferences” (i.e., specific rules for
the operation of Jordan’s user contact system).
To the extent Appellant is arguing that terms such as “category” and
“rule” must be present in Jordan before the reference is relevant, we
disagree. There is no ipsissimis verbis test within 35 U.S.C. § 103.
Appellant’s assertion that claim limitations are not expressly recited in a
reference does not evidence lack of prima facie obviousness, but, rather,
“begs the substantive question of whether there are facial differences to be
bridged.” See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). A
reference does not have to satisfy an ipsissimis verbis test to disclose a
claimed element, therefore, Appellant’s demand for such an exacting match
is not persuasive of misapprehension, and the argument was not overlooked.
See In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
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B. Claim 23
As to Appellant’s above contention B, we disagree. The panel has not
misapprehended or overlooked Appellant’s argument. Rather, we found the
argument unpersuasive.
The Examiner’s rejection being appealed reads as follows:
Jordan teaches about a method of claim 21, wherein the
escalation plan specifies rules for posting an escalation message
to a social networking system (see col. 4, lines 31-39).
Final Act. 8.
Essentially, Appellant is arguing that this form of the Examiner’s
analysis is “without explanation” (Req. Reh’g 4). We disagree. Although a
minimalist explanation, two points of the Examiner’s analysis are self-
evident; first, the Examiner is equating the limitation of claim 23 to the
citation in parenthesis; and, second, at a minimum, the content of the cited
portion of Jordan is part of the rejection.
We determine, as to claim 23, the Examiner’s form of the rejection
analysis is sufficient to shift the burden of going forward over to Appellant,
and Appellant is not free to disregard the rejection.2
C. Claim 24
As to Appellant’s above contention C, the panel has not
misapprehended or overlooked Appellant’s argument. Rather, we found the
argument unpersuasive.

2 The success of this form of rejection depends on how well the cited
reference communicates the claim limitation (including as part of the entire
claim). Although this form of rejection is sufficient for claim 23, it may be
insufficient in situations that are more complex.
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Appellant repeats their briefing argument that Jordan is silent as to
“sending an escalation message to a contact of the recipient having a
relationship with the recipient of a different category than the relationship
between the sender and the recipient.” Req. Reh’g 7. Again, we disagree.
Jordan teaches “spouse, child, co-worker” (i.e., categories) (Jordan, 4:67)
and an example in which the sender/recipient are related as spouses and the
contact/recipient are related a child/parent (id. at 6:22–47).
D. Claim 25
As to Appellant’s above contention D, we disagree. The panel has not
misapprehended or overlooked Appellant’s argument. Rather, we found the
argument unpersuasive.
Appellant asserts “[n]either the basic message nor detailed message of
Jordan are an amount of the unanswered message.” Req. Reh’g 8.
Essentially, Appellant understands, but disagrees with the panel’s
conclusion. Rehearing is not a blanket opportunity merely to reargue the
Board’s decision as to those points with which Appellant disagrees. That
Appellant disagrees with the ultimate result of the panel’s review of
claim 25 is not an appropriate basis for a Request for Rehearing.
DECISION
Based on the record before us, we deny Appellant’s Request for
Rehearing. Appellant has not persuasively identified any points the Board
misapprehended or overlooked.
The Request for Rehearing is denied.
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Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
21–40 103 Jordan, Fisher 21–40
Overall
Outcome
21–40

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
35–40 101 Eligibility 35–40
21–40 103 Jordan, Fisher 21–40
Overall
Outcome
21–40
TIME PERIOD FOR RESPONSE
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.
§ 1.136(a)(1)(iv).

DENIED