"Creativity and common sense"
The appeal of ex parte re-exam 95/000,402 offers guidance to both the requestor and to the patent holder on "what NOT to do."
Within the decision:
Citing to KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), Frame Media urges that given the limited number of available relaying options one with ordinary skill in the art would have reasonably expected success in pursuing any of them.
We are inclined to agree with Frame Media. Ceiva does not address, in any of its Briefs, the above-noted obviousness assessment or offer any credible explanation as to why it is incorrect. We do not discern why a person of ordinary skill in the art, employing creativity and common sense, see Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324. 1329 (Fed. Cir. 2009), would not have reasonably appreciated from Muoio’s disclosure that information which is ultimately conveyed to a given display device, i.e., image data and playlist information, may be relayed together in response to a request for image data that is associated with the playlist.
The patent challenger/requestor ALSO had problems:
Frame Media evidently asks that this Board sort through the record so as to cobble together an “appropriate” rejection. That request is, however, misplaced in the context of an appeal. It is not the role of the Board to properly formulate a rejection which has been inadequately articulated. We further observe in that regard that an appeal brief is generally prohibited from incorporating a newly proposed ground of rejection. See 37 C.F.R. § 41.67(c)(1)(vi).
We do not agree with Frame Media. There is simply no apparent reason why Frame Media should now have opportunity to seemingly bolster an inadequate rejection with recourse to additional teachings of a prior art reference, yet obfuscate its reliance on that very reference as not actually forming part of the proposed rejection. We reject Frame Media’s position that it should be allowed to do so.
**Of new grounds of rejection
This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. A requester may also request rehearing under 37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer issuing any decision on such request for rehearing until such time that a final decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. ...