Ex Parte 7133293 et al

Patent Trial and Appeal Board

Feb 25, 2016

95001319 (P.T.A.B. Feb. 25, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,319 03/29/2010 7133293 MOUNT-00100 1333
32361 7590 02/26/2016
GREENBERG TRAURIG (NY)
MET LIFE BUILDING
200 PARK AVENUE
NEW YORK, NY 10166
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/26/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

ANTEC, INC.
Requester

v.

STREAK PRODUCTS, INC.
Patent Owner and Appellant
____________

Appeal 2015-008003
Reexamination Control 95/001,319
Patent 7,133,293B2
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, DANIEL S. SONG, and
MICHAEL L. HOELTER, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION UNDER 37 C.F.R. § 41.77(f)
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This is a decision under 37 C.F.R. § 41.77(f). On March 4, 2014, we
affirmed the Examiner’s decision to reject claims 1-9 on various grounds.
(Decision on Appeal, Appeal No. 2013-004126, mailed March 4, 2014,
hereinafter, “Decision” at 31.) Specifically, we affirmed the rejection of
claims 1-9 under 35 U.S.C. § 103(a) as obvious over the combination of
Performance PC's Modular Power Supply, 5-26-03, Wolfman, Virtual
Hideout (“Performance”) in view of Seasonic SSR-400 User's Manual,
1998-2000, Seasonic (“SSR-400”) (Decision 17-26), and the rejection of
claims 1 and 4 under 35 U.S.C. § 103(a) as obvious over the combination of
Performance and Silentpcreview forum discussion “detachable cables on
psu’s,” 1/2003, Various authors posting on website (“SPCR Forum”)
(Decision 26-29.) However, because our rationale differed from that of the
Examiner, we designated our affirmance as a new ground of rejection under
37 C.F.R. § 41.77(b). (Decision 2, 17-20, 31-33.)
In response to the Previous Decision, Patent Owner Streak Products,
Inc. exercised its option under 37 C.F.R. § 41.77(b)(1) to file a request to
reopen prosecution, presenting documents including: a decision of the
Beijing High People's Court of the People's Republic of China No. 5840
(“Chinese High Court Decision”) (“Exhibit A”); Chinese Utility Model
Patent No. ZL 200420005481.7 (“Chinese Patent”) (“Exhibit B” and
“Exhibit C”); the certificate from the State Intellectual Property Office
(SIPO) (“Certificate”) (“Exhibit D”); and a September 27, 2013 decision of
the Beijing Higher People’s Court of the People's Republic of China
(“Exhibit E”) (“Chinese Patent Validity Decision”). Patent Owner alleges
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that the documents provided support to its allegations of copying. (Patent
Owner’s Request to Reopen Prosecution Pursuant to 37 C.F.R.
§ 41.77(b)(1), filed April 4, 2014, hereinafter “PO 41.77(b)(1) Resp.” 4-9.)
Requester Antec, Inc. filed a response under 37 C.F.R. § 41.77(c)
including documents in response to the documents provided by Patent
Owner. (Third Party Requester’s Comments Pursuant to 37 C.F.R.
§ 41.77(c), filed May 5, 2014, hereinafter “Req. 41.77(c) Resp.”)
Specifically, Requester’s response included: a decision by the Taiwan
Intellectual Property Office (“TIPO”) on Taiwan Patent No. M253980 (“the
’980 Patent”) dismissing an invalidation request on June 6, 2008 (Exhibit A
“the decision for Validation,” TIPO Announcement No. 09720292390, “the
’390 Decision”); a decision by the Petitions and Appeals Committee under
the Taiwan Ministry of Economic Affairs, (Exhibit B “The decision from
Petitions and Appeals Committee,” Retrieval of Ministry Decisions No.
09706115590, “the ’590 Decision”); a decision by Taiwan's Intellectual
Property Court (“IP Court”) (Exhibit C “Administrative Judgment from IP
Court”); a decision form the Taiwan Supreme Administrative Court (Exhibit
D “Administrative Judgment,” Supreme Administrative Court Verdict No.
1301); and a listing of evidence reviewed and considered by the Taiwan
Supreme Administrative Court (Exhibit E). Requester contends that the
submitted documents provide evidence that Patent Owner’s copying
arguments have been rejected by different tribunals in Taiwan. (Req.
41.77(c) Resp. 5-7.)
An order granting Patent Owner’s request to reopen and remanding
the inter partes reexamination to the Examiner was issued. (“ORDER
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REMANDING INTER PARTS REEXAMINATION UNDER 37 C.F.R.
§ 41.77(d) TO THE EXAMINER”, hereinafter “Remand Order” mailed June
27, 2014.) The Remand Order also entered Requester’s Comments for
consideration by the Examiner. (Remand Order 3.)
An Examiner’s Determination under 37 C.F.R. § 41.77(d) was issued
on August 4, 2014. (Hereinafter, “Ex. Det.”) The Examiner’s
Determination limits the discussion therein to the rejection of claims 1-9 as
obvious over Performance in view of SSR-400 (Ex. Det. 3), while noting
that the rejection of claims 1 and 4 as obvious over Performance in view of
the SPCR Forum was affirmed (Ex. Det. 2). Because the evidence
associated with Patent Owner’s request to reopen prosecution relates only to
copying, we take the Examiner’s analysis regarding the rejection of the
claims over Performance in view of SSR-400 to be equally applicable to the
rejection over Performance in view of the SPCR Forum. In the Examiner’s
Determination, the Examiner maintained the rejection of claims 1-9 under 35
U.S.C. § 103 over Performance in view of SSR-400. (Ex. Det. 4.)
Specifically, the Examiner determined that “[t]he new evidence presented is
not a persuasive showing of copying that will overcome the prima facie
obviousness presented by the references.” (Ex. Det. 4-6.)
Patent Owner filed a response to the Examiner’s Determination
(Patent Owner’s Comments in Response to August 4, 2014 Determination
after Board’s Decision with New Grounds of Rejection filed September 3,
2014 (hereinafter, “PO 41.77(e) Resp.”)).
Requester filed a response to the Examiner’s Determination (Third
Party Requester’s Comments Pursuant to 37 C.F.R. § 41.77(e) filed
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September 4, 2014 (hereinafter, “Req. 41.77(e) Resp.”)). Requester also
filed a response to Patent Owner’s Comments under 37 C.F.R. § 41.77(e) to
the Examiner’s Determination (Third Party Requester’s Comments Pursuant
to 37 C.F.R. § 41.77(e) filed October 3, 2014 (hereinafter, “2nd Req. 41.77(e)
Resp.”)).
Pursuant to 37 C.F.R. §41.77(f), this decision is deemed to
incorporate our earlier decision, except as indicated.

DISCUSSION
As discussed above, the documents provided by Patent Owner as new
evidence are stated by Patent Owner to relate to copying of the claims and
submitted as further objective evidence of non-obviousness. As an initial
matter, we emphasize that our findings and conclusions with respect to the
evidence previously of record both weighing in favor of and against a
conclusion of obviousness as stated in the Decision are incorporated herein.
37 C.F.R. § 41.77(f). Thus, the question is whether the documents presented
by Patent Owner in its response under 37 C.F.R. § 41.77(b)(1) and the
documents provided by Requester in its response under 37 C.F.R. § 41.77(c)
change our previous conclusion.
Notwithstanding the question of whether certain documents were
timely presented, we agree with the Examiner that the additional documents
provided by Patent Owner are insufficient to change the overall
determination that the claims would have been obvious over the prior art of
record, particularly in view of the additional documents presented by
Requester in response. We observe that the underlying evidentiary
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documents that formed the basis of Courts’ Decisions in China and Taiwan
have not been made of record in this proceeding.1 In our Decision, we stated
that there was insufficient evidence of copying in the record to support a
finding of non-obviousness. (Decision 25-26.) As part of that analysis, we
observed that there was insufficient evidence to support Patent Owner’s
contention that the invention was disclosed to Requester. (Decision 26.)
The additional documents provided by both the Patent Owner and
Requester do not alter our conclusion. That is, the Chinese High Court
Decision and the Taiwan Supreme Administrative Court Decision, which
allegedly relate to foreign counterparts of the ’293 Patent under
reexamination, reached different conclusions on what appears to be similar
evidence. (PO 41.77(b)(1) Resp. Ex. A at 12, E; Req. 41.77(c) Resp. Ex. D
at VII (5.), VIII, E.) Specifically, the Taiwan Supreme Administrative Court
found that there was insufficient evidence to prove that Requester was not
the inventor of the Taiwanese Patent in dispute, whereas the Chinese High
Court determined that Patent Owner was the inventor of the Chinese Patent
in dispute. (Req. 41.77(c) Resp. Ex. D at VII (5.) and VIII; PO 41.77(b)(1)
Resp. Ex. A at 12.)
Without being able to review the original evidentiary documents
forming the basis of these decisions and to assess in detail the exact
substance of the disclosures of any communications between the involved

1 The “STATEMENT PURSUANT TO 37 C.F.R. § 1.985 and 37 C.F.R.
§ 11.18” submitted by Patent Owner on September 3, 2014 and including a
fully redacted version of a deposition transcript of Requester’s President Mr.
Andrew Lee, even if properly of record in this case, is of little value as there
is no visible text.
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parties, we accord little weight to the summary of facts provided in each of
the submitted documents related to the proceedings in China and Taiwan, as
each reflects an assessment of the facts presented in relation to the
applicable legal standards of those countries, rather than an assessment of
facts related to claims at issue in the ’293 Patent and the applicable U.S. law.
In this regard, we are of the opinion that the claim chart provided by
Patent Owner that allegedly shows correspondence between the claims of
the ’293 Patent and a Chinese Patent that the Chinese High Court found
disclosed the “same technological solution” as the ’293 Patent (PO
41.77(b)(1) Resp. 5-9) is insufficient to provide any further evidence of
copying. A showing of copying requires evidence of efforts to replicate a
specific product. Wyers v. Master Lock, 616 F.3d 1231, 1246 (Fed. Cir.
2010) (citing Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317,
1325 (Fed. Cir. 2004).)
As discussed by the Requester and the Examiner, the documents
submitted by Patent Owner address an ownership dispute over a “technical
solution” disclosed in two different foreign patents, and not whether
Requester copied a particular product. (Req. 41.77(c) Resp. 7-9; Ex. Det. 6.)
Therefore, the documents submitted by Patent Owner do not provide
sufficient additional evidence of copying.
We refer to the Decision pages 20-26 expressly, where we discussed
the evidence of secondary considerations and the evidence of obviousness.
Specifically, we adhere to our original view that “the strong desire expressed
in Performance for eliminating excess cables combined with the known use
of pinouts in conjunction with metal chassis containing power supplies as
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disclosed in SSR-400 outweighs the evidence of industry praise, long-felt
need and copying presented by Patent Owner for the deficiencies identified
supra.” (Decision 26.) The additional documents considered herein, do not,
in our assessment, alter the balance of this inquiry for the reasons expressed
above.
Accordingly, after re-considering the evidence of record, both for and
against a conclusion of obviousness, we remain of the opinion that claims
1-9 would have been obvious over the prior art of record.

CONCLUSION
As a result, we have considered the submissions by Patent Owner and
Requester in response to the new grounds of rejection set forth in the
Decision, and modify the Decision to the extent discussed above. However,
we decline to otherwise modify the Decision, and maintain the Decision’s
affirmance of:
The Examiner’s decision to reject claims 1-9 as obvious over
Performance in view of SSR-400; and
The Examiner’s decision to reject claims 1 and 4 as obvious over
Performance in view of the SPCR Forum.

In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
in opposition to the request and additional requests for rehearing must be in
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accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (d) of this section,
and for submitting comments under paragraph (c) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

37 C.F.R. § 41.77(f)

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PATENT OWNER:
GREENBERG TRAURIG (NY)
MET LIFE BUILDING
200 PARK AVENUE
NEW YORK, NY 10166

THIRD-PARTY REQUESTER:
STEVEN LAW GROUP
1754 TECHNOLOGY DRIVE
SUITE 226
SAN JOSE, CA 95110
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