Joshua L. Purcell et al.

Patent Trials and Appeals Board

Aug 13, 2019

13855779 - (R) (P.T.A.B. Aug. 13, 2019)

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.
13/855,779 04/03/2013 JOSHUA L. PURCELL CHA920100001US2
(013CON)
9853
73479 7590 08/13/2019
Shutts & Bowen LLP
Steven M. Greenberg, Esq.
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
HATCHER, DEIRDRE D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
PMetlika@shutts.com
aschneider@shutts.com
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSHUA L. PURCELL, TASSANEE K. SUPAKKUL,
MATHEWS THOMAS, and JULIO WONG
____________

Appeal 2018-000758
Application 13/855,7791
Technology Center 3600
____________

Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.

McMILLIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

INTRODUCTION
Appellants request rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed March 20, 2019 (“Decision”). We have
reviewed and considered all the arguments made in the Request. We grant
the request only to the extent that Appellants’ arguments in the Request were

1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
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considered. The Request is denied with respect to making any changes in
the Decision.

ANALYSIS
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
37 C.F.R § 41.52(a)(1). New arguments that the Board’s decision contains
an undesignated new ground of rejection are permitted. 37 C.F.R.
§ 41.52(a)(4). The error which Appellants contend occurred in the Decision
was: “to the extent that the Honorable Board relies upon the 2019 Guidance
in respect to its conclusions under 35 U.S.C. § 101, Appellants believe such
a conclusion to be an undesignated new ground of rejection.” Request 4.
However, Appellants fail to clearly identify any points misapprehended or
overlooked by the Board in the Decision. See Request 2–4.
Appellants contend the Board, relying on the 2019 Guidance for
patent subject matter eligibility, affirms the “rejection of a pending claim on
a basis not involved in the appeal previously.” Request 4; see Request 3. To
the extent the Decision contains new arguments which support the rejection,
the alleged new arguments were in addition to and in support of the Board
relying on and adopting the Examiner’s findings, reasoning and conclusions.
Decision 8–9 (“The Examiner concludes the claims ‘are directed toward a
method for determining a service provider that can perform tasks more
efficiently’” and “we conclude the claims recite a fundamental economic
practice” of “optimizing a business process to perform it more efficiently”).
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When considering whether the Board issued a new ground of
rejection, the:
Board need not recite and agree with the examiner’s rejection in
haec verba to avoid issuing a new ground of rejection. “The
ultimate criterion of whether a rejection is considered ‘new’ in a
decision by the Board is whether applicants have had fair
opportunity to react to the thrust of the rejection.”
In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011) (citation and bracketing
omitted).
With regard to the alleged new argument, it was made in responding
to Appellants’ argument that “it is clear that Appellants’ claims are directed
to a particular solution to a problem or a particular way to achieve a
desired outcome defined by the claimed invention” and that the claimed
invention “solves a particular technical problem.” Decision 9 (citing App.
Br. 14). As clearly expressed in the Decision, the Board agreed with the
detailed findings and conclusions provided by the Examiner in the Answer
and Final Office Action. We are not persuaded it was error for the Board to
expand upon the same conclusions made by the Examiner—“that the
claimed invention is merely directed toward performing a task more
efficiently rather than improving another technology or computer function.”
Decision 10; see Ans. 20.
Moreover, we disagree with Appellants that the 2019 Guidance
“reflects a departure from the prior state of affairs.” See Request 4. Instead,
the 2019 Guidance merely applies existing case law in a manner that
increases clarity and consistency:
This guidance does not constitute substantive rulemaking
and does not have the force and effect of law. The guidance
sets out agency policy with respect to the USPTO’s
interpretation of the subject matter eligibility requirements of
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35 U.S.C. 101 in view of decisions by the Supreme Court and
the Federal Circuit. The guidance was developed as a tool for
internal USPTO management and does not create any right or
benefit, substantive or procedural, enforceable by any party
against the USPTO. Rejections will continue to be based upon
the substantive law, and it is those rejections that are
appealable to the Patent Trial and Appeal Board (PTAB) and
the courts.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (emphases added).
Because the 2019 Guidance applies existing case law, simply following the
2019 Guidance is not sufficient for the designation of a case as a new ground
of rejection. Although the specific procedure set forth in the 2019 Guidance
may have changed the procedure by “[p]roviding groupings of subject
matter that is considered an abstract idea” and “clarifying that a claim is not
‘directed to’ a judicial exception if the judicial exception is integrated into a
practical application of that exception,” that modified procedure is based on
pre-existing case law and did not purport to change any substantive law. See
id. at 50 (emphasis added).
We emphasize that a request for rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board” and “must specifically recite ‘the points of law or fact which
appellant feels were overlooked or misapprehended by the Board.’” Ex
parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting
MPEP § 1214.03). Here, Appellants have not specifically identified points
of law or fact overlooked or misapprehended by the Board in its Decision.
That is, Appellants have not specifically identified how the Board changed
the basic thrust of the rejection such that an Appellants have not been given
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a fair opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300,
1302–03 (CCPA 1976).
Appellants have not persuaded us of error in the Decision. Thus, we
discern no reason to change the Decision.

DECISION
Accordingly, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.

REHEARING DENIED