Board says newly cited reference is not a new ground of rejection since it's in the priority chain of previously used reference

Takeaway: The Applicant appealed an obviousness rejection based on three references, and argued that the primary reference Huang did not teach an element as asserted by the Examiner. The Examiner's Answer "further submitted" another reference, Dresti, "to clarify any doubt as to the scope of [the primary reference's] disclosure." The Answer noted that Dresti was in the priority chain of Huang. The Applicant filed a Reply Brief, arguing that the introduction of Dresti on reference for the first time in the Answer was improper, but not substantively addressing the teachings of Dresti. The Board affirmed the rejection and noted in passing that "Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection."

Details:

Ex parte Hardacker
Appeal 2012007118; Appl. No. 11/970,8581; Tech. Center 2400
Decided:  September 30, 2013

The application on appeal was directed to a system including a TV remote control. One of the limitations at issue read: "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element."

The Examiner rejected the independent claims as obvious over a combination of three references: Huang, Woolgar, and Day.

On appeal, the Applicant argued that Huang did not disclose the "single manipulation" element highlighted above. More specifically, the Applicant argued that Huang taught a single keypress controlling a single component, rather than “controlling two separate components with a single key press.”


The Answer included a rebuttal with quotes to several specific sentences of Huang that allegedly disclosed a single keypress controlling multiple components. After quoting these teachings in Huang, the Answer relied on another reference, Dresti:

     Furthermore, the Examiner submits the teachings of Dresti et al. (US 2003/0103088 A1 "Dresti") for which Huang is a continuation-in-part (related US Application 10/288,727). Dresti details the "home theater" and "macro" functions of Huang by disclosing that ... [quote omitted].
     It is the Examiner's position that Huang's disclosure of "home theater" and "macro" functions "grouped under a single designator" sufficiently addresses the disputed limitations of Claim 1. However, to clarify any doubt as to the scope of Huang's disclosure, the Examiner further submits the teachings of Dresti to provide explicit evidence that Huang's macro functions would read on "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element. .." (as summarized above). Therefore, even as narrowly argued by Appellant, the Examiner submits that the Huang's concepts of "home theater" and "macro" functions address the disputed limitation of Claim 1.

In a Reply Brief, the Applicant argued that the Examiner's reliance on Dresti was improper:

     [T]he Examiner discusses a new reference - Dresti. Appellant notes that the discussion of Dresti may only be found in the rebuttal section of the Answer. The use of this new reference has not heretofore been made, nor does it form part of the formal rejections that are the subject of this appeal. To the extent that the conferees are relying on the stated grounds of rejection, the discussion related to the newly-discovered teachings is irrelevant and has not been seasonably presented. To the extent that the conferees are trying to back into a new ground of rejection without saying so, a new ground of rejection in an Examiner's Answer is not permitted without the approval of the Technology Center Director, MPEP 1207.03.
     Accordingly, the rebuttal section either contains a citation to and discussion of a reference not heretofore relied on, and consequently is irrelevant to the issues being appealed, or it is an attempt to cloak a new rejection under the guise of purported teachings of a reference slipped in only during the rebuttal stage of an Answer, and consequently is illegitimate under the rules. In either case, the rejections merit reversal.

The Board affirmed, finding that "Huang as further described in Dresti" would have "at least suggested" the limitation at issue:

     Huang describes controlling multiple appliances in a “home theater” or “room” mode, as well as user programming of remote control keys, assigning appliances to various remote control modes, creating macros, and assigning related variable functions to a single designator. Further, as explained by the Examiner (Ans. 23), it is known in the prior art to use macros to control multiple appliances using a sequence of commands by pressing a single button, as demonstrated by Dresti. Thus, we conclude, as the Examiner does, that Huang (as further described in Dresti) would have at least suggested controlling multiple components using a single remote control button press.

The Board also quickly dismissed the Applicant's argument that Dresti was a new reference that formed part of a new ground of rejection.

Dresti demonstrates that the control of multiple components using the press of a single button is known in the art. Further, Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection.

My two cents: The Board got this one wrong – reliance on Dresti should have been a new ground of rejection – but the Applicant didn't handle it properly.

The standard for determining whether a rejection is new is whether appellant has had before the PTO "a fair opportunity to react to the thrust of the rejection." In re Jung, 637 F.3d 1356, 1365 (Fed.Cir.2011), quoting In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). The way I see it, the Examiner's Answer changed the thrust of the rejection by newly relying on Destri. The Applicant wasn't aware during prosecution that the Examiner was relying on additional teachings in Destri, and thus didn't have an opportunity to rebut these findings. The Board seems to think that the family relationship between the actually-relied-upon reference (Huang) and the newly-relied-upon reference (Destri) meant that the Applicant was already on notice. I just don't see what Destri's presence in Huang's chain of priority has to do with notice.

The Applicant noted in the Reply Brief the introduction of Destri in the Answer, and argued there that it was improper and that the Board should therefore ignore Destri. However, the correct procedure for Applicant to challenge a new ground not designated as such is to file a Petition under § 1.181. (True under the old appeal rules and under the new ones effective Jan. 2012, the difference being that now the Petition tolls the time period for filing a Reply Brief.)