Ex parte Janakiraman

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JANANI JANAKIRAMAN
and RABINDRANATH DUTTA
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Appeal 2008-0998
Application 09/842,835
Technology Center 2100
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Decided: May 6, 2009
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Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE, Vice Chief Administrative Patent Judge, JAMES D.
THOMAS, JEAN R. HOMERE, and STEPHEN C. SIU, Administrative
Patent Judges.
SIU, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants request reconsideration of our decision to affirm the
Examiner’s implied rejection of claims 1, 2, 3, 6-10, 13-17, 20, 21, 22, 24-

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26, and 28-33 under 35 U.S.C. § 103(a). (Decision mailed February 4,
2009).1
SUMMARY OF THE ORIGINAL DECISION
The claimed subject matter on appeal involves rendering graphical
information in textual form. In particular, independent claim 1 recites
analyzing a set of graphical data to determine a set of critical factors,
ranking the determined critical factors according to respective priorities, and
generating a textual description of the set of graphical data, ordered
according to the priorities (Decision 2). Claim 4 depends from claim 1, and
additionally recites that the textual description is presented in aural format.
The Examiner rejected claims 1-3, 6-10, 13-17, 20-22, 24-26, and 28-
33 under 35 U.S.C. § 102(e) as being anticipated by U.S. Patent No.
6,876,981 B1 (“Berckmans”) and claims 4, 5, 11, 12, 18, 19, and 23 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Berckmans, and Wendy Chisholm et al., Web Content Accessibility
Guidelines 1.0, W3C, Recommendation (1991) (“W3C”). (Decision 3.)
The Appellants treated claims 1, 3, 6-8, 10, 13-15, 17, 20-22, 24-26,
and 28-33 as one group which stand or fall together (Decision 13-14). As
such, we considered claims 1, 3, 6-8, 10, 13-15, 17, 20-22, 24-26, and 28-33
1 Appellants do not request reconsideration as to claims 4, 5, 11, 12, 18, 19,
23, and 27.

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as one single group and selected independent claim 1 as the representative
claim of the group (Decision 14).
We reversed the Examiner’s rejection of claims 1-3, 6-10, 13-17, 20-
22, 24-26, and 28-33 under 35 U.S.C. § 102(e) (Decision 9-10). However,
we affirmed the Examiner’s rejection of dependent claim 4, which depends
from claim 1, under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Berckmans and W3C.
Because the narrower claim 4 depends from the broader claim 1 and
because we affirmed the Examiner’s rejection of claim 4 under 35 U.S.C.
§ 103(a) over the cited references, we further found claim 1 (a broader claim
from which claim 4 depends) to also be unpatentable under 35 U.S.C.
§ 103(a) (Decision 3, 13, and 14).
In affirming claim 1, we relied upon Ormco Corp. v. Align
Technology, Inc., 498 F.3d 1307, 1309-20 (Fed. Cir 2007). In Ormco Corp,
the Court held that when dependent claims “were found to have been
obvious, the broader claims . . . must also have been obvious.” In Ormco,
“[dependent] claims 10 and 17 . . . were invalid as obvious” but independent
claims 1 and 11 from which claims 10 and 17 depended, had not been
determined to be obvious. The Court reasoned that “[b]ecause claims 10 and
17 were found to have been obvious, the broader claims 1 and 11 must also
have been obvious” (Ormco at 1319).

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THE REQUEST FOR REHEARING
Appellants contend that our Decision on Appeal mailed February 4,
2009 was erroneous because “[c]laims 2, 3, 6-10, 13-14, 16, 17, 20, 21, 24-
26 and 28-33 were not rejected by the Examiner under 35 U.S.C. § 103 (and
therefore the affirmance of a non-existent, phantom rejection of these claims
under 35 U.S.C. § 103 is error)” (Req. Reh’g 2). Appellants further assert
that “Appellants have had no opportunity to rebut any obviousness assertion
with respect to such claims – which is a violation of due process and
fundamental fairness” (Req. Reh’g 4).
However, the Appellants’ request for rehearing did not raise a
challenge to the merits of our reliance upon the Ormco Corp in affirming
claim 1.
ISSUE
Thus, the issue before us is whether Appellants’ independent claim 1
is unpatentable over the combination of Berckmans and W3C by virtue of its
dependent claim 4 being unpatentable over the same combination?
ANALYSIS
In filing the Request for Rehearing, Appellants had the opportunity
and obligation to “state with particularity the points believed to have been
misapprehended or overlooked by the Board.” 37 C.F.C. § 41.52(a).

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The Appellants do not argue the merits of the rejection of any of
claims 1-33, as explained by the Board. Nor do Appellants contend that the
Board “misapprehended or overlooked” any points relating to the merits of
the rejection of the cited claims. See 37 C.F.R. § 41.52(a)(1). Instead,
Appellants request to be afforded the procedural options available under
37 C.F.R. § 41.50(b)(1) for responding to the alleged new ground of
rejection. (Req. for Reh’g 4-5).
The affirmance of a conclusion of obviousness of an independent
claim may be made when based on a prior determination of obviousness of a
corresponding dependent claim. As the Court made clear in Ormco, when a
dependent claim is “found to have been obvious . . . the broader claims . . .
must also have been obvious” (Ormco at 1319).
In the Opinion, we affirmed the Examiner’s rejection of dependent
claim 4 as unpatentable under 35 U.S.C. § 103(a) over Berckmans and W3C,
which Appellants do not contest. Because claim 4 includes all the
limitations recited in claim 1, we concluded that claim 1 “must have been
obvious” since claim 4 was found to be obvious. As such, we found that the
Examiner’s rejection of claim 4 under 35 U.S.C § 103 constitutes an implied
obviousness rejection of corresponding independent claim 1.
There is no new ground of rejection when the basic thrust of the
rejection remains the same such that an appellant has been given a fair
opportunity to react to the rejection. See In re Kronig, 539 F.2d 1300, 1302-
03 (CCPA 1976). Therefore, a rejection of claims 1-3, 6-10, 13-17, 20-22,

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24-26, and 28-33 constitutes a new ground of rejection if the rationale for
the rejection changes the “thrust” of a prior rejection.
Under the specific facts of this case, our interpretation of claim terms
was not previously detailed by the Examiner. Further, our claim
interpretation differs from the Examiner’s and implicates different
reasoning.
We conclude that this factual situation rises to the level where “the
issues arising under the two sections may be vastly different, and may call
for the production and introduction of quite different types of evidence” (In
re Hughes, 345 F.2d 184, 185-186 (CCPA 1965)). In such situations
involving a possible misunderstanding of a procedural matter, the Board, at
its discretion, may follow an “abundance of fairness policy.” See Ex parte
Letts, 88 USPQ2d 1854, 1859 (BPAI 2008).
Therefore, in the circumstances of this case, we exercise discretion to
grant the Appellants’ request to designate the Decision’s affirmance of the
rejection of claims 1-3, 6-10, 13-17, 20-22, 24-26, and 28-33 under
35 U.S.C. § 103(a) as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
This decision on rehearing does not constitute a new decision on
appeal. Nor does it turn the original Decision into a new decision.
Accordingly, pursuant to 37 C.F.R. § 41.52(a)(1), no request for rehearing
from this decision on rehearing is permitted. Also, because Appellants did
not argue in the rehearing request the merits of any rejection as explained by

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the Board, Appellants are not entitled to any further relief under 37 C.F.R.
§ 41.50(b)(2) once the original decision has been modified to designate the
affirmance of the obviousness rejection of claims 1-3, 6-10, 13-17, 20-22,
24-26, and 28-33 as a new ground of rejection.
CONCLUSION
The Appellants’ Request for Rehearing is granted to the extent
ordered below.
ORDER
The Board’s affirmance of the rejection of claims 1-3, 6-10, 13-17,
20-22, 24-26, and 28-33 under 35 U.S.C. § 103(a) as unpatentable over
Berckmans is designated as a new ground of rejection under 37 C.F.R
§ 41.50(b).
Pursuant to the applicable sections of 37 C.F.R.
§ 41.50(b) the Appellants, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise the following
option with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:

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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
GRANTED
37 C.F.R. § 41.50(b)
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