Ex parte Seaman

Decision Date28 July 2017
Docket NumberAppeal 2016-007612
PartiesEx parte DAVID ROBERT SEAMAN, BLAIR JAMES WALL, and CHIRSTOPHER CARL CAPSON Application 13/117, 135 Technology Center 2100
CourtUnited States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board
FILING DATE: 05/27/2011

Before JUSTIN BUSCH, NORMAN H. BEAMER, and ALEX S. YAP Administrative Patent Judges.

DECISION ON REHEARING

YAP Administrative Patent Judge.

In a Decision entered April 27, 2017 ("Decision") in relation to the above-captioned application, we affirmed the Examiner's rejection of claims 1-3 and 5-20 under 35 U.S.C. § 103(a) as being unpatentable over Woodhill in view of Gwozdz. Appellants have requested rehearing of our Decision in relation to our rejections.

We have granted Appellants' request to the extent we have reconsidered our original Decision in light of Appellants' points, but we decline to modify the Decision.

DISCUSSION

Appellants urge that our Decision erred because we "overlooked, and thus failed to adhere to, the [relevant] legal standards" (Req. Reh'g 2-6), "misapprehended the disclosure and teachings" of the prior art references (id. at 6-8), and misapprehended the arguments made against the combination of the prior art references (id. at 8-9). According to Appellants, "the Decision . . . provides merely conclusory statements instead of providing the required articulated reasoning with rational underpinning." (Id. at 9.)

37 C.F.R. § 41.52(a) states that "[t]he 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, . . . are not permitted in the request for rehearing except as permitted by paragraphs (a)(2) [(i.e., 'a new argument based upon a recent relevant decision of either the Board or a Federal Court')] through (a)(4) [(i.e., 'New arguments that the Board's decision contains an undesignated new ground of rejection')] of this section." (Emphases added.) The issue pertinent to this request is whether Appellants have met their burden of showing that we misapprehended or overlooked pertinent law, the claims, or the disclosure of the cited prior art, and thus, erred in sustaining the rejection of claims. See 37 C.F.R. § 41.52(a)(1). In sum, having considered the arguments in the Request for Rehearing ("Request"), we are not persuaded that we misapprehended or overlooked a particular matter in affirming the Examiner's rejection and we adhere to our decision to sustain the rejection.

Prima Facie Case

Appellants contend that "the Decision erroneously applies the law by citing to In re Jung (Fed. Cir. 2011), which is a decision ruling on the sufficiency of an anticipation rejection under 35 U.S.C. 102." (Req. Reh'g 3.) In other words. Appellants contend that In re Jung does not apply to other rejections, including 103 rejections. (Id.) We disagree.

In patent prosecution, a burden-shifting procedure occurs between the Examiner and the Applicant, which is "merely a procedural device that enables an appropriate shift of the burden of production." In re Jung, 637 F.3d 1356, 1362 (Fed.Cir.2011) (citation omitted). The Examiner carries the initial burden of establishing a prima facie case of unpatentability "by adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond." Id. The statement of the prima facie case, however "need not be a full exposition on every conceivable deficiency of a claim. . . . Rather, its purpose is simply to provide sufficient notice to the applicant to facilitate his effective submission of information." Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed.Cir.2007). Thereafter, "the burden shifts to the applicant to rebut the prima facie case with evidence and/or argument." Id. Finally, "[patentability vel non is then determined on the entirety of the record, by a preponderance of evidence and weight of argument." In re Glaug, 283 F.3d 1335, 1338 (Fed.Cir.2002).

In Jung, the Federal Circuit notes that "the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in'notifying] the applicant. . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.' 35 U.S.C. § 132." 637 F.3d 1356, 1362 (Fed. Cir. 2011). Similar to Appellants in the current matter,

Jung contends that establishing a prima facie case requires more than just notice under § 132, and that whatever else may be required is part of the examiner's burden in rejecting any claim. According to Jung, until that burden is met by the examiner, the rejection need not be challenged on the merits by the applicant.

In re Jung, 637 F.3d at 1363. (See also App. Br. 4--5 (challenging the sufficiency of the Examiner's 103 rejection arguing that the Examiner's rejection must satisfy the obviousness standard of KSR).) The Federal Circuit disagrees:

This court disagrees and sees no reason to impose a heightened burden on examiners beyond the notice requirement of § 132. Jung, without any basis, would have this court impose additional prima facie procedural requirements and give applicants the right first to procedurally challenge and appeal the prima facie procedural showing before having to substantively respond to the merits of the rejection. Such a process is both manifestly inefficient and entirely unnecessary. Indeed, Jung's arguments as to why the examiner failed to make out a prima facie rejection are the same arguments that would be made on the merits.

In re Jung, 637 F.3d at 1363, emphasis added. While the rejection at issue in Jung concerns an anticipation rejection, the holding in Jung, i.e., "the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, " applies to all rejections by the PTO during prosecution. Id. Importantly, the Federal Circuit and other courts have applied Jung to other types of rejections. See, e.g., In re Adler, (Fed. Cir. 2013) (103 rejection); In re Hillis, 484 Fed.Appx. 491, 495 (Fed. Cir. 2012) (enablement rejection); see also Alberts v. Kappos, 917 F.Supp.2d 94 (D.D.C 2013) (103 rejection); Disney Enterprises, Inc. v. Rea, 940 F.Supp.2d 288 (E.D. VA 2013) (103 rejection). This is consistent with 35 U.S.C. § 132, which applies to all rejections by the PTO, including obviousness rejections under 35 U.S.C. § 103:

(a) Whenever on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be re-examined. . . .

Appellants argue that "the Decision does not address, nor even acknowledge, that KSR is the governing law for supporting the legal conclusion of obviousness. . . . [and that n]owhere does the Decision mention or discuss the requirements under KSR." (Req. Reh'g 2-3.) This argument is not persuasive. As discussed above and in the Decision, the Examiner has satisfied its procedural burden of establishing a prima facie case when its rejection satisfies 35U.S.C.§l32. Moreover, Appellants fail to respond adequately (App. Br. 4--5) to the Examiner's findings (Final Act. 7) and therefore, fail to show specific fault in the Examiner's findings. See In re Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court [or this Board] to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art."). Furthermore, as we have noted in the Decision, "[w]e have reviewed the Examiner's rejection in light of Appellants' arguments . . . [and w]e are not persuaded that the Examiner erred in rejecting claims 1-3 and 5-20." (Decision 3.)

Impermissible Hindsight

Appellants contend that:
Nowhere does the Decision actually interpret the law required by an impermissible hindsight analysis nor evaluate whether the Final Rejection used impermissible hindsight, as Appellant[s] ha[ve] argued. See Decision pages 6-7.
Instead, the Decision never turns its analysis to whether or not the only suggestion to combine the references to produce the claimed invention came from Appellant[s'] disclosure, as Appellant[s] ha[ve] argued. The Appellant[s] clearly argued in the Appeal Brief that the combination is based on hindsight reasoning, but the Decision never makes a determination as such with regard to the combination, instead digressing into a sole discussion of Woodhill rather than an analysis of the argument concerning impermissible hindsight.
Further, the Decision seems to apply impermissible hindsight itself... Thus, the Decision is analyzing the references contrary to the established law by ignoring what Gwozdz teaches its metadata actually is, which is different than the claimed elements.

(Req.Reh'g4-5.)

Appellants' arguments are not persuasive because Appellants have not sustained their burden of showing that we misapprehended or overlooked a particular matter. Specifically, Appellants have not shown that we have misapprehended or overlooked anything instead contending that the Decision's analysis is wrong. We are also not persuaded by Appellants' contention that "the Decision never makes a determination as such with regard to the combination, instead digressing into a sole discussion of Woodhill rather than an...

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