14373279 - (R) (P.T.A.B. Oct. 26, 2020)

To Chin

Patent Trials and Appeals BoardOct 26, 2020

14373279 - (R) (P.T.A.B. Oct. 26, 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. 14/373,279 07/18/2014 To Chin 3319/0514PUS1 5395 60601 7590 10/26/2020 Muncy, Geissler, Olds & Lowe, P.C. 4000 Legato Road Suite 310 Fairfax, VA 22033 EXAMINER JIANG, YONG HANG ART UNIT PAPER NUMBER 2689 NOTIFICATION DATE DELIVERY MODE 10/26/2020 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): MAILROOM@MG-IP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TO CHIN Appeal 2019-000679 Application 14/373,279 Technology Center 2600 Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and MICHAEL J. STRAUSS, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In the Decision on Appeal mailed July 24, 2020 (“Decision”), the Board affirmed the Examiner’s obviousness rejections of claims 17–29 under 35 U.S.C. § 103(a). Pursuant to 37 C.F.R. § 41.52, Appellant requests rehearing of the Decision.1 See Request for Rehearing, filed September 21, 2020 (“Req. Reh’g”). Appellant’s Request is denied. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Chin To, the named inventor. Appeal Brief filed May 10, 2018 (“Appeal Br.”) 1. Appeal 2019-000679 Application 14/373,279 2 THE REQUEST FOR REHEARING STANDARD OF REVIEW A request for rehearing must state with particularity the points believed to have been misapprehended or overlooked. 37 C.F.R. § 41.52(a)(1)(2017). Arguments not raised in the briefs before the Board and evidence not previously relied upon in the briefs are not permitted in the request for rehearing. Id. A request for rehearing is not an opportunity to express merely disagreement with a decision without setting forth points believed to have been misapprehended or overlooked. See id. The proper course for an Applicant dissatisfied with a Board decision is to appeal to the United States Court of Appeals for the Federal Circuit, not to file a request for rehearing to reargue issues that have already been decided. See 35 U.S.C. §§ 141, 145. ANALYSIS Claim 17 Appellant contends for the first time in the Request for Rehearing that, after a price change, Janning’s price label displays static price information whereas “[i]n Claim 17 the content of [a] tag is dynamic, the feature signal is a pattern of changes, meant for identification by machine” with rapid changes being preferred and enabling the use of light outside the visible spectrum. Req. Reh’g 1. Appellant further argues “in Claim 17 the feature signal must be different [from that supplied] to other tags in range, but in [Janning’s] price label, the content [of different tags] can be the same.” Id. Appellant’s arguments are unpersuasive as failing to identify any argument that our Decision misapprehended or overlooked and, thus, Appellant’s further arguments are not properly presented in a Request for Appeal 2019-000679 Application 14/373,279 3 Rehearing. In particular, Appellant had not previously argued Janning’s updating of a price label allegedly fails to teach a claim limitation. See generally Appeal Br. 2. Although Appellant’s second argument, that Janning’s price labels have the same content was belately mentioned in Appellant’s Reply Brief filed October 26, 2018, that argument was deemed waived at the time of our original Decision because the argument had not been earlier presented in Appellant’s Appeal Brief. 37 C.F.R. § 41.41(b)(2). See In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal). Furthermore, Appellant’s arguments are unpersuasive as not being commensurate in scope with argued claim 17. In particular, claim 17 does not recite any temporal requirements of the recited feature signal, such as the argued rapid changes alleged to distinguish over Janning’s price labels which, according to Appellant, display price changes only as warranted. Likewise, claim 17 does not require allocation of different feature signals to the various tags so as to distinguish over Janning’s labels in which the content of different tags can be the same. Claims 27 and 29 Appellant contends for the first time in the Request for Rehearing that “[t]he goal of Claim 27 is identify [an] object by its feature signal, . . . [as] a replacement [for a] barcode,” the barcode being usable at close ranges in contract with the claimed feature code, which “is usable [at] much longer range.” Req. Reh’g 2. This argument is unpersuasive because it was not earlier argued and, accordingly, fails to identify an argument that our Decision misapprehended or overlooked. Furthermore, such argument is Appeal 2019-000679 Application 14/373,279 4 unpersuasive because it is not commensurate in scope with argued claim 27, which neither excludes barcodes nor recites the argued greater device- operating distances. Conclusion For the reasons discussed, Appellant’s Request for Rehearing with respect to our Decision in connection with the rejection under 35 U.S.C. § 103(a) is procedurally improper and substantively unpersuasive and, therefore, denied. DECISION For the reasons supra, Appellant has fails to persuade us that we have misapprehended or overlooked any of Appellant’s’ arguments or other points made by Appellant. Therefore, Appellant’s Request for Rehearing has been granted to the extent that our Decision has been reconsidered, but is denied with respect to making any modifications to the Decision. DECISION SUMMARY Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 17 103(a) Janning, Richardson 17 27, 29 103(a) Janning, Stephenson, Ehrman 27, 29 Overall Outcome 17, 27, 29 Appeal 2019-000679 Application 14/373,279 5 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 17–19, 25, 26 103(a) Janning, Richardson 17–19, 25, 26 20 103(a) Janning, Richardson, An 20 21 103(a) Janning, Richardson, Stevens 21 22–24 103(a) Janning, Richardson, Shefter 22–24 27, 29 103(a) Janning, Stephenson, Ehrman 27, 29 28 103(a) Janning, Stephenson, Ehrman, Chaves 28 Overall Outcome 17–29 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED 37 C.F.R. § 41.52(a)(1)