Ex Parte 6513042 et al

Board of Patent Appeals and Interferences

Jul 15, 2010

90007997 (B.P.A.I. Jul. 15, 2010)

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.
90/007,997 04/05/2006 6513042 9001 6741
7590 07/16/2010
CYNTHIA S. MURPHY
RENNER OTTO BOISSELLE & SKLAR
NINTEENTH FLOOR
1621 EUCLID AVENUE
CLEVELAND, OH 44115
EXAMINER
CHOI, WOO H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/16/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TEST.COM
Appellant and Patent Owner
____________

Appeal 2009-010023
Reexamination Control 90/007,997
Patent 6,513,042 B1
Technology Center 3900
____________

Before MURRIEL E. CRAWFORD, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.

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Test.com2 appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306.
We REVERSE.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by Electronic Frontier Foundation on Apr. 5, 2006 of United States Patent
6,513,042 issued to John C. Anderson and Charles Stack on Jan. 28, 2003,
based on United States Application 09/248,465 filed Feb. 11, 1999.
Patentee’s invention relates to a method of making a test and posting
the test on-line for potential test-takers. (Spec. col. 1, ll. 5-7). Once a test is
compiled and posted, the test-taker is charged for taking the test. The test-
maker and the proprietor of the host system share the revenues generated by
the test-taker taking the test. (Id. at col. 1, 38-41).
Independent claim 1, which is deemed to be representative, reads as
follows:
1. A method of making a test and posting the test on-line
for potential test-takers, said method comprising the steps of:
providing a host system and a plurality of remote
terminals operatively coupled to the Internet;
inputting questions at one of the remote terminals;

2 Test.com is the real party in interest and the current owner of the patent
under reexamination.
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compiling the questions at the host system to make a compiled
test;
posting the test on-line for potential test-takers;
wherein a test-taker is required to pay to take the
compiled test;
and wherein the test-maker and the proprietor of the host
system share the revenues generated by the test-taker taking the
test.

The prior art references relied upon by the Examiner in rejecting the
claims are:
On Tour Media Press Release, On Tour IntraLearn Delivers First Internet-
based Training and Testing Solution for Online Certification, Nov. 16, 1998.
(“Press Release”).
On Tour Media Inc., IntraLearn Web-based Certification Training and
Management System, Administrator Guide, 1998. (“Administrator Guide”).
On Tour Media Inc., IntraLearn Web-based Certification Training and
Management System, Student Manual, 1998. (“Student Guide”).

The Examiner rejected claims 1-16 under 35 U.S.C. § 103(a) as
unpatentable over Administrator Guide and Press Release. (Ans. 3).
Additionally, the Examiner rejected claims 11 and 13 under 35 U.S.C. §
103(a) as unpatentable over Administrator Guide, Press Release and Student
Guide. (Ans. 8). Lastly, the Examiner rejected claims 17 and 18 under 35
U.S.C. § 103(a) as unpatentable over Administrator Guide, Press Release,
and Student Guide. 3 (Ans. 10).
Appellant relied upon the following in rebuttal to the Examiner’s

3 The Examiner refers to Student Guide interchangeably as Student Manual.
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rejections:
Declaration under 37 C.F.R. § 1.131 of Jim Posch, filed Feb. 11, 2008
(“Posch Dec.”) (Evidence App’x).
Declaration under 37 C.F.R. § 1.131 of John C. Anderson, filed Feb.
11, 2008. (“Anderson Dec.”) (Evidence App’x).
Declaration under 37 C.F.R. § 1.131 of James F. Koehler, filed Feb.
11, 2008 (“Koehler Dec.”) (Evidence App’x).

The Anderson and Koehler declarations also rely on Exhibits 1-13, which
are discussed below.

ISSUE
In response to the Examiner’s rejections, Appellant contends that
Appellant’s declarations submitted pursuant to 37 C.F.R. § 1.131 are
effective to predate Administrator Guide, Press Release and Student Guide,
the prior art of record. (App. Br. 5, see also Reply Br. 2). In particular,
Appellant contends that the declarations meet the requirements set forth in
the statute and that the invention is clearly referenced in the declarations and
described in the exhibits. (App. Br. 5-6). Thus, Appellant contends that
“the attached exhibits show [that] the invention was actually reduced to
practice prior to November 16, 1998,” thereby antedating Administrator
Guide, Press Release, and Student Guide as prior art under 35 U.S.C. §
103(a). (App. Br. 5-7).
The Examiner maintains the rejections and finds that the declarations
do not satisfy the requirements of 37 C.F.R. § 1.131 (a) and (b). (Ans. 11-
15). In particular, the Examiner finds Appellant’s declarations are “[v]ague
and general statements . . . which ‘amount[s] to mere pleading, unsupported
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by proof or showing of facts’ and, thus, do[es] not satisfy the requirements
of 37 CFR § 1.131 (b).” (Ans. 13) (citation omitted).
Thus, the threshold issue is:
Did the Examiner err in finding that the declarations under 37 C.F.R.
§ 1.131 fail to provide sufficient evidence to antedate Administrator Guide,
Press Release and Student Guide?

FINDINGS OF FACT
1. Appellant submitted three declarations, signed by Jim Posch, James
Koehler, and John Anderson respectively, in an attempt to antedate the prior
art of record.4 (App. Br. 5).
2. In the declaration of Jim Posch submitted Feb. 11, 2008, Posch
declares, inter alia, that he is the president and CEO of Test.com, that the
instant patent was reduced to practice in the United States prior to November
16, 1998, and he incorporates the entirety of the declarations of John
Anderson and James Koehler, discussed infra. (Posch Dec. 2).
3. In the declaration of James Koehler, submitted Feb. 11, 2008,
Koehler declares, inter alia, that he is the Secretary and Chairman of the
Board of Directors of Test.com, and that he has personal knowledge that the
instant patent was reduced to practice in the United States prior to November
16, 1998. (Koehler Dec. 2).

4 These declarations are substantially similar, but signed separately by each
affiant. For ease of reference, we refer to the declaration of Anderson unless
otherwise stated.
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4. In the declaration of John Anderson, submitted Feb. 11, 2008,
Anderson declares, inter alia, that he is an inventor of the present patent, and
that he has personal knowledge that the instant patent was reduced to
practice in the United States prior to November 16, 1998. (Anderson Dec.
2).
5. Press Release was available as prior art on November 16, 1998.
(Press Release p. 1).
6. Administrator Guide has a copyright of 1998, and thus available as
prior art as of December 31, 1998. (Administrator Guide p. 2).
7. Student Manual has a copyright of 1998, and thus available as prior
art as of December 31, 1998. (Student Manual p. 2).

Exhibit 1
1-1. Exhibit 1 is a news publication which describes an online test
center. (Exhibit 1, p. 1).
1-2. Anderson declares that the publication was published prior to
November 16, 1998, and discloses that a job candidate with access to a
computer with a modem and an Internet connection can access the online
test center through a browser. (Exhibit 1, p. 1, see also Anderson Dec. 2).
1-3. Anderson declares that this publication discloses the similar
limitations in claims 1, 9, 11, 12, 14, and 15. (Anderson Dec. 2).

Exhibit 2
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2-1. Exhibit 2 is directed to promotional material prepared for HR
managers (Anderson Dec. 2) that describes creating tests, user accounts (i.e.,
user name and password), online scoring, and a charging a fee. (Exhibit 2).
2-2. Anderson declares that this material was published prior to
November 16, 1998 and discloses limitations in claims 1, 5, 6, 7, 8, 9, 11,
and 12.

Exhibit 3
3-1. Exhibit 3 is a document from a press kit created by an advertising
agency regarding the method of the present patent. (Exhibit 3, pp. 1, 2, see
also Anderson Dec. 2).
3-2. Anderson declares that this press kit is dated prior to November
16, 1998 and “discloses that a private, secure corporate account can be used
to administer established or customized tests online” which in conjunction
with Exhibit 2, discloses limitations recited in claim 1. (Anderson Dec. 2,
3).

Exhibit 4
4-1. Exhibit 4 is a compilation of screen shots displaying test
questions and showing steps in the process of adding new questions or
editing existing questions. (Exhibit 4, pp. 1-13).
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4-2. Exhibit 4 also depicts icons at the top of the screen shot (i.e.,
webpage) which include “take a test,” “create a test,” “account,” “private
account,” “forum,” and “help.” (Exhibit 4, pp. 1-13).
4-3. Anderson “. . .declare[s] that Exhibit 4 is a representative screen
that shows an image which was personally known to me to be posted online
and available before the date of November 16, 1998.” Further, Anderson
declares that “[t]hese are screen shots demonstrating how to enter a test that
disclose the claim 1 limitation compiling the questions at the host system to
make a compiled test [sic].” (emphasis original). (Anderson Dec. 3).

Exhibit 5
5-1.Exhibit 5 is a licensing agreement between Test.com and a
customer. (Exhibit 5, p. 1).
5-2. Exhibit 5 describes fees and royalty structures. (Exhibit 5, pp. 1,
2).
5-3. Anderson declares that this agreement is dated prior to November
16, 1998 and demonstrates limitations from claims 1 and 13. (Anderson
Dec. 3).

Exhibit 6
6-1. Exhibit 6 is a news publication that describes Test.com’s internet
testing system. (Exhibit 6, pp. 1, 2).
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6-2. Exhibit 6 describes establishing a secure, private testing site with
instant scoring. (Exhibit 6, p. 2).
6-3. Anderson declares that this publication was dated prior to
November 16, 1998 and in conjunction with Exhibits 2 and 3, discloses
limitations in claims 2 and 3. (Anderson Dec. 3).

Exhibit 7
7-1. Exhibit 7 is a compilation of screen shots displaying test
questions and how to add new questions or edit existing questions. (Exhibit
7, pp. 1-5).
7-2. Anderson declares that the screen shots of Exhibit 7 were
“. . . personally known to me to be posted online and held available to the
public at a date before November 16, 1998.” (Anderson Dec. 3).
7-3. Anderson declares that these screen shots demonstrate the
limitations of claims 4 and 7 disclosing how to edit a test. (Anderson Dec.
3).

Exhibit 8
8-1. Exhibit 8 depicts a screen shot of Test.com. The screen shot
displays featured tests directed to OPAC, kids, programming, and civil
service. The webpage also displays a Create a TestSM icon that allows a user
to create a test and share any revenues it garners. (Exhibit 8, p. 1).
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8-2. Anderson “. . . declare[s] that Exhibit 8, which is a representative
computer screen shot of a homescreen where a test-maker is prompted for a
username and password was posted online and in use by the public at a date
prior to November 16, 1998.” (Anderson Dec. 3).
8-3. Anderson declares that this screen shot illustrates the limitation of
claim 3. (Anderson Dec. 3).

Exhibit 9
9-1. Exhibit 9 is directed to a publication which describes the
establishment of a private account for the National Beta Club that allows
students the opportunity to practice college placement tests such as the ACT,
SAT, and other academic practice tests, in a secure, easy-to-administer
environment at Test.com. (Exhibit 9).
9-2. Exhibit 9 also describes that through Test.com’s “create-a-test”
program, users can enter tests such as pre-employment tests, certification
exams, personality profiles, or aptitude tests into Test.com’s database.
(Exhibit 9).
9-3. Anderson declares that this publication “. . . depicts many choices
for the test-taker to choose from the directory as specified in claim 9. The
claim 12 limitation wherein the restricted directory includes academic
practice tests is also inherent in the publication of Exhibit 9.” (Anderson
Dec. 3).
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9-4. Anderson declares that this publication was dated prior to
November 16, 1998. (Anderson Dec. 3).

Exhibit 10
10-1. Exhibit 10 displays a screen shot of Test.com. The screen shot
depicts four questions, the amount of time to take the test, and buttons to
take the test for free. (Exhibit 10).
10-2. Anderson declares that this screen shot depicting a preview
screen, as recited in claim 10, was posted online and in use by the public
prior to November 16, 1998. (Anderson Dec. 3).

Exhibit 11
11-1. Exhibit 11 is a publication which describes schools paying set-
up and maintenance fees to set up private accounts for their students to take
various tests. (Exhibit 11).
11-2. Anderson declares that this publication discloses a limitation
recited by claim 12 and was dated prior to November 16, 1998. (Anderson
Dec. 3).

Exhibit 12
12-1. Exhibit 12 is a licensing agreement between Test.com and a
customer stating that a fee per student is paid annually. (Exhibit 12, p. 2,
clause 6).
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12-2. Anderson declares that this exhibit in conjunction with Exhibit
11, discloses a limitation recited by claim 12. (Anderson Dec. 3).
12-3. Anderson declares that this agreement was signed and executed
at a date prior to November 16, 1998. (Anderson Dec. 3).
12-4. Exhibit 12 states that the test site “will be operational on or
before 21 June 1998.” (Exhibit 12, p. 2, clause 10).

Exhibit 13
13-1. Exhibit 13 is directed to a promotional article describing
Test.com. The article describes that users just need access to a computer
with a web connection and results are generated immediately. (Exhibit 13).
13-2. Anderson declares that this promotional article discloses a
limitation recited by claim 13, and was to be released prior to November 16,
1998. (Anderson Dec. 4).

PRINCIPLES OF LAW
The Board evaluates a declaration submitted pursuant to 37 C.F.R.
§ 1.131 on its merits, considering the evidence relied upon in light of the
arguments explaining why the evidence is sufficient. The Board has broad
discretion in weighing declaration evidence. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); In re Inland Steel, Co., 265 F.3d
1354, 1366 (Fed. Cir. 2001).
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An Applicant’s declaration must clearly explain the evidence and
exhibits, pointing out exactly what facts are established and relied on by
applicant to show conception and reduction of the invention to a practical
form:
The affidavit or declaration and exhibits must clearly
explain which facts or data applicant is relying on to
show completion of his or her invention prior to the
particular date. Vague and general statements in broad
terms about what the exhibits describe along with a
general assertion that the exhibits describe a reduction to
practice “amounts essentially to mere pleading,
unsupported by proof or a showing of facts” and, thus,
does not satisfy the requirements of 37 CFR 1.131(b).
MPEP § 715.07 (I) (quoting In re Borkowski, 505 F.2d 713, 718
(CCPA 1974)). See also In re Harry, 333 F.2d 920, 922 (CCPA 1964)
(Where the affidavit “asserts that facts exist but does not tell what they are
or when they occurred.”). A declaration exhibit need not support all claimed
limitations; however, any missing limitation must supported by the
declaration itself. MPEP § 715.07 (I) (citing Ex parte Ovshinsky, 10
USPQ2d 1075, 1077 (BPAI 1989)).
“[F]or the purpose of antedating [a] reference under Rule 131, it is
sufficient that appellant has shown a reduction to practice of his basic
invention, which showing will also suffice as to claims differing therefrom
only in details which are obvious to one of ordinary skill in the art.” In re
Spiller, 500 F.2d 1170, 1178 (CCPA 1974). The court subsequently
clarified that Spiller “nowhere weakens the requirement, under Rule 131, of
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a factual showing of completion of the invention before the critical date.” In
re Borkowski, 505 F.2d at 719.

ANALYSIS
Claims 1-18 are not unpatentable under 35 USC § 103(a) as the affidavit or
declaration filed under 37 CFR § 1.131 meets the requirements of 37 CFR §
1.131.
37 C.F.R. § 1.131(a)
Appellant argues that the Examiner has improperly rejected the
declarations filed under 37 CFR § 1.131 on the grounds that it is
unacceptable and fails to meet the requirements set forth in the statute.
(App. Br. 5). In response to this argument, the Examiner finds that the
declarations were not signed by all the inventors of the subject matter
claimed, nor was a petition under rules §§ 1.42, 1.43, or 1.47 made, and thus
the declarations are not acceptable. (Ans. 11, 12).
While the Examiner may be correct regarding the requirements for 37
CFR § 1.131 as it applies to regular examination, this is not the case once a
patent application has issued and then subsequently under reexamination, as
is the case here. Specifically, rule 37 CFR § 1.131(a) states:
(a) When any claim of an application or a patent
under reexamination is rejected, the inventor of the
subject matter of the rejected claim, the owner of the
patent under reexamination, or the party qualified under
§§ 1.42, 1.43, or 1.47 may submit an appropriate oath or
declaration. . . .
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37 C.F.R. § 1.131 (2009). (emphasis added).
As stated supra, Rule 37 CFR § 1.131(a) states in the alternative that
when a patent under reexamination is rejected, the inventor of the subject
matter of the rejected claim, the owner of the patent under reexamination, or
the party qualified under §§ 1.42, 1.43, or 1.47 may submit an appropriate
oath or declaration. Based upon the language of rule 37 CFR § 1.131, we
find that Appellant need only present a declaration signed by the patent
owner, Test.com, or one of its authorized agents. Presently, Appellant has
submitted three declarations signed by Jim Posch, the President and CEO of
Test.com, Inc., James Koehler, the Secretary and Chairman of the Board of
Directors of Test.com, and John Anderson, an inventor of the present patent
(FF 1), and thus in our opinion satisfied the requirement under 37 CFR §
1.131(a) for a declaration. Therefore, contrary to the Examiner’s contention,
we find that there is no requirement for a patent owner, in reexamination, to
show that one or all missing inventors are dead, legally incapacitated, or
otherwise unavailable per rules §§ 1.42, 1.43, or 1.47, as would be the case
for the applicant of a patent application.
Additionally, with respect to Examiner’s argument that “MPEP
section 715.04 is equally applicable to both a pending application and a
patent under reexamination” (Ans. 12), we cannot agree and find that even if
that section is applicable, we do not find that the section trumps the clear
wording of the cited Rule. Therefore, even if Examiner’s contention is
correct and § 715.04 applies to reexamination, 37 CFR § 1.131(a) controls,
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and it is clear that, as discussed supra, a declaration signed by the patent
owner’s authorized agent meets the requirement under 37 CFR § 1.131(a)
for a signed declaration.
Therefore, we cannot concur with the Examiner’s arguments under 37
CFR § 1.131(a) for a declaration.

37 CFR § 1.131(b)
Appellant generally argues that the declarants confirm that their
invention was actually reduced to practice prior to November 16, 1998 as
evidenced by the attached exhibits. (App. Br. 6, see also Reply Br. 2). In
response, the Examiner finds that Appellant’s declarations are “[v]ague and
general statements . . . which ‘amounts to mere pleading, unsupported by
proof or showing of facts’ and, thus, does not satisfy the requirements of 37
CFR 1.131(b).” (Ans. 13) (citation omitted).
We cannot agree with the Examiner and find the Appellant’s
declarations compelling as evidence showing a reduction to practice. To
show a reduction to practice, an affiant must clearly explain which facts or
data Appellant is relying on to show completion of his or her invention prior
to the particular date. In re Borkowski, 505 F.2d at 718. While the
Examiner may be correct that the Appellant’s exhibits alone may not clearly
explain the subject matter for which they rely on, we find that an
accompanying exhibit need not support all claimed limitations, provided that
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any missing limitation is supported by the declaration itself. Ex parte
Ovshinsky, 10 USPQ2d at 1077.
Here, Appellant has persuasively mapped the accompanying exhibits
to the claims with which they pertain and pointed out exactly what facts are
established therein and relied on by Appellant. (FF 1-1 to 13-2).
Additionally, Appellant declares that the screen shots of exhibits 4, 7, 8, and
10 show the actual output of the running computer program (App. Br. 7)
which Appellant declares was “. . . posted online and available before the
date of November 16, 1998.” (FF 4-3, 7-2, 8-2, 10-2). Thus, while the
Examiner may find these screen shots to be isolated screen shots that do not
provide factual evidence of the claimed invention (Ans. 14), we disagree and
find the probative weight of the declarations and exhibits together, in their
entirety, show Appellant’s completion of an online testing system publicly
operating online, and thus appropriate for Appellant to rely on as a showing
of facts set forth in Rule 131.
Further, “for the purpose of antedating [a] reference under Rule 131, it
is sufficient that appellant has shown a reduction to practice of his basic
invention, which showing will also suffice as to claims differing therefrom
only in details which are obvious to one of ordinary skill in the art.” In re
Spiller 500 F.2d at 1178. In Spiller, the court determined a Rule 131
declaration showing possession of the “basic invention,” or the “heart of the
invention,” or “establish[ing] broadly possession of the invention,” can be
adequate to antedate a prior art reference even if what is shown in the Rule
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131 declaration does not include all of the limitations of the later-claimed
invention. Id.
As such, we find that Appellant has sufficiently demonstrated a
reduction to practice through declarations and exhibits showing possession
of the “basic invention” or the “heart of the invention.” Specifically,
Appellant has shown news publication, promotional materials, and screen
shots which show an online testing center (FF 1-1), adding new or editing
existing test questions (FF 7-1), a fee for the test-taker (FF 11-1), revenue
sharing (FF 5-2, 8-1), and private user accounts (FF 2-1, 3-2, 9-1).
Additionally, the exhibits show, and declarations support facts clearly
describing, a webpage which Appellant declares was online and available
before November 16, 1998 depicting an online testing site depicting icons
allowing a user to at least “take a test” and “create a test,” and go to their
“account” and/or “private account” (FF 4-2, 4-3), which we find
substantially support the broad limitations as claimed by Appellant. Thus,
Appellant has shown a reduction to practice of his basic invention, which
showing will also suffice as to claims differing therefrom only in details
which are obvious to one of ordinary skill in the art. See In re Spiller 500
F.2d at 1178.
Therefore, based upon our review of the declarations (FF 2), we find
exhibits 1-13 are sufficiently mapped to the limitations recited in
independent claims 1, 12, 13, 14, and 15, and their respective dependent
claims. (FF 1-1 to 13-2). We further find that each of exhibits 1-13 have
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dates prior to November 16, 1998 (FF 2, 3, 4), which is before the earliest
possible date available as prior art for Press Release, Administrator Guide,
and Student Guide (November 16, 1998). (FF 5-7).
Accordingly, we conclude that Press Release, Administrator Guide,
and Student Guide are antedated by Appellant’s' declarations under 37
C.F.R. § 1.131. We find that the Examiner erred in holding that the
declarations under 37 C.F.R. § 1.131 are ineffective to overcome Press
Release, Administrator Guide, and Student Guide. Therefore, Press Release,
Administrator Guide, and Student Guide are disqualified as prior art in each
of the applied rejections. As such, we cannot sustain the Examiner’s
rejections of claims 1-16 under 35 U.S.C. § 103(a) as obvious over
Administrator Guide and Press Release, claims 11 and 13 under 35 U.S.C. §
103(a) as obvious over Administrator Guide, Press Release, and Student
Guide, and claims 17 and 18 under 35 U.S.C. § 103(a) as obvious over
Administrator Guide, Press Release and Student Guide.

CONCLUSIONS
We conclude that the Examiner erred in finding that the declarations
under 37 C.F.R. § 1.131 fail to provide sufficient evidence to antedate
Administrator Guide, Press Release and Student Guide.

DECISION
The decision of the Examiner to reject claims 1-18 is REVERSED.
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REVERSED

ack

cc:

Cynthia S. Murphy
RENNER OTTO BOISSELLE & SKLAR
Ninteenth Floor
1621 Euclid Avenue
Cleveland, OH 44115

Jason Schultz, Staff Attorney
Electronic Frontier Foundation
454 Shotwell Street
San Francisco, CA 94110