Satish Gudiboina et al.

Patent Trials and Appeals Board

Feb 24, 2020

15172755 - (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. 15/172,755 06/03/2016 Satish Gudiboina 10-410-US-C1 2310 128144 7590 02/24/2020 Rimon PC One Embarcadero Center Suite 400 San Francisco, CA 94111 EXAMINER KHOSHNOODI, FARIBORZ ART UNIT PAPER NUMBER 2157 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): docketing.rimonlaw@clarivate.com eofficeaction@appcoll.com patentdocketing@rimonlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SATISH GUDIBOINA and KIRILL ULYANOV Appeal 2018-009141 Application 15/172,755 Technology Center 2100 Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and NABEEL U. KHAN, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on Appellant’s Request for Rehearing.1 Appellant’s Request for Rehearing is filed under 37 C.F.R. § 41.52(a)(1) requesting that we reconsider our Decision of December 26, 2019, wherein we affirmed the Examiner’s rejection of claims 1-21 under 35 U.S.C. § 103(a). We have reconsidered our Decision in light of Appellant’s comments in the request, and have found no errors. We, therefore, decline to change the Decision. 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.” 37 C.F.R. § 41.52(a)(1). Appeal 2018-009141 Application 15/172,755 2 Appellant’s Contentions 1. Appellant contends that as to the Decision the Board erred because: On page 3 of the Decision, the PTAB make the unsupported allegation that “Appellant’s argument regarding claims 5, 12, and 19 amounts to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguish them from the references.” This is plainly incorrect and requires improperly ignoring Applicant’s arguments as a whole as set forth on the record. Appellant’s Appeal Brief and other documents of record directly compare the claim language with the disclosure of the prior art in detail. Examples of Appellant’s arguments on the record distinguishing the specific claim language from the prior art are set forth below. [Appellant subsequently reproduces several of its arguments from its Appeal Brief arguing against the rejection of independent claims 1, 8, and 15.] Reh’g Req. 2-9 (citing Appeal Br. 5-14), Appellant’s emphasis omitted, panel’s emphasis added. 2. Appellant also contends that as to the Decision, the Board erred because: After ignoring the bulk of Appellant’s argument, the PTAB then seems to acknowledge that the claims include elements not found in the prior art and looks for reasons to ignore these expressly recited elements. Specially, the Decision relies on In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) as supporting that functional language does not confer patentability if prior art structure has capability of functioning in the same manner. The PTAB does not specify which claim language is considered it deems to “not confer patentability” but appears to use In re Schreiber as a catch-all to ignore the claim language that has been distinguished form the prior art by Appellant. Appeal 2018-009141 Application 15/172,755 3 . . . . A large part of the PTABs erroneous logic stems from the fact that Schreiber cannot be applied to method claims, such as claim 1 in this appeal. . . . . The PTAB's extension of In re Schreiber to method claims is without basis in the law. Such application would appear to render all method claims anticipated by any other method (because the claimed method steps could be carried out)[.] Further, independent claim 8 recites [a processor]. A processor in combination with instructions for causing the processor to carry out a function is structure, not function. Therefore, In re Schreiber does not apply to the apparatus claims on appeal. Reh’g Req. 9, 11-12, Appellant’s emphasis omitted, panel’s emphasis added. ANALYSIS 1. As to Appellant’s above contention 1, we disagree. In support of its contention, Appellant reiterates several of its arguments from its Appeal Brief addressing independent claims 1, 8 and 15. See Reh’g Req. 2-9 (citing Appeal Br. 5-14). However, Appellant’s justification for reiterating its previous arguments challenges a statement in the Decision regarding claims 5, 12, and 19 (a different set of claims). See Decision 3. In the statement, we indicated that Appellant’s argument regarding claims 5, 12, and 19 amounts to a general allegation that claims 5, 12, and 19 define a patentable invention without specifically pointing out how the language of claims 5, 12, and 19 patentably distinguishes from the references. See id.; see also Appeal 2018-009141 Application 15/172,755 4 Appeal Br. 14. We did not indicate that Appellant’s arguments regarding claims 1, 8, and 15 amounted to such a general allegation. Instead, we specifically referenced Appellant’s arguments regarding claims 1, 8, and 15, and identified why the arguments were not persuasive. See Decision 5-8 (citing Appeal Br. 5-13). Thus, Appellant’s reiteration of its arguments previously raised in its Appeal Brief does not identify “points believed to have been misapprehended or overlooked by the Board” as required by 37 C.F.R. § 41.52(a)(1). 2. As to Appellant’s above contention 2, we also disagree. Contrary to Appellant’s contention, the U.S. Court of Customs and Patent Appeals (the predecessor court to the U.S. Court of Appeals for the Federal Circuit) made clear that the principle articulated in In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) regarding functional language is applicable to method claims. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (“[The burden of proof required to overcome a prima facie obviousness rejection based on the belief that a functional limitation is an inherent characteristic of the prior art] is applicable to product and process claims reasonably considered as possessing the allegedly inherent characteristics,” emphasis added.). Thus, it was not error to apply In re Schreiber to claim 1. With respect to claim 8, claim 8’s recitation of “processor” does not change the fact that claim 8 recites functionality that the prior art structure of Auerbach is capable of performing, as explained in the Decision. Decision 8. Appeal 2018-009141 Application 15/172,755 5 DECISION In view of the foregoing discussion, we deny Appellant’s request to make any changes in our Decision. Appellant has not identified any points the Board has misapprehended or overlooked. The request for rehearing is denied. Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1, 4, 6, 8, 11, 13, 15, 18, 20 103(a) Pelenur, Auerbach, Safo 1, 4, 6, 8, 11, 13, 15, 18, 20 5, 12, 19 103(a) Pelenur, Auerbach, Safo, Ratcliffe 5, 12, 19 2, 3, 9, 10, 16, 17 103(a) Pelenur, Auerbach, Safo, Hoffman 2, 3, 9, 10, 16, 17 7, 14, 21 103(a) Pelenur, Auerbach, Safo, Kim 7, 14, 21 Overall Outcome 1-21 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 6, 8, 11, 13, 15, 18, 20 103(a) Pelenur, Auerbach, Safo 1, 4, 6, 8, 11, 13, 15, 18, 20 5, 12, 19 103(a) Pelenur, Auerbach, Safo, Ratcliffe 5, 12, 19 2, 3, 9, 10, 16, 17 103(a) Pelenur, Auerbach, Safo, Hoffman 2, 3, 9, 10, 16, 17 7, 14, 21 103(a) Pelenur, Auerbach, Safo, Kim 7, 14, 21 Overall Outcome 1-21 Appeal 2018-009141 Application 15/172,755 6 DENIED