Ex Parte Broker et al

Board of Patent Appeals and Interferences

Sep 21, 2007

09919794 (B.P.A.I. Sep. 21, 2007)

The opinion in support of the decision being entered
today is not binding precedent of the Board.

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN F. BROKER,
DOUGLAS W. GARDNER, ALAN V. NEUBAUER,
BRIAN L. NESS, and KIM L. WRIGHT
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Appeal 2007-0525
Application 09/919,7941
Technology Center 2100
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Decided: September 21, 2007
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Before LEE E. BARRETT, JOSEPH F. RUGGIERO, and
HOWARD B. BLANKENSHIP, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the final
rejection of claims 1-20. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We reverse.

1 Application for patent filed August 2, 2001, entitled "Information
Display System for an Appliance Incorporating Electronic Interface Screen."
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Application 09/919,794

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BACKGROUND
The claims relate to displaying information on an appliance based on
selections by a user. A touch screen is divided into a plurality of zones.
Upon selecting one of the zones displaying a first set of information, the
zone is enlarged to encompass the screen and to display additional details
concerning the first set of information.
Claim 1 is illustrative:

1. A method of conveying information on a display screen of an
appliance comprising:

dividing the screen into a plurality of zones;

displaying a first set of information in one of the plurality of
zones; and

causing said one of the plurality of zones to become enlarged so
as to substantially, entirely encompass the screen, while automatically
presenting a second set of information representing additional details
concerning the first set of information on the screen.

THE REFERENCE

Blair US 6,502,265 B2 Jan. 7, 2003
(filed Dec. 21, 2000)

THE REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Blair. Appellants filed an affidavit under 37 C.F.R. § 1.131 to
antedate the Blair patent, but the Examiner was not persuaded.
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DISCUSSION
The threshold issue is whether Blair is antedated by Appellants'
affidavit under 37 C.F.R. § 1.131 (Rule 131). The affidavit was submitted
on July 20, 2004, and has been entered.2
The Examiner states that sufficiency of the affidavit is a petitionable
matter (Answer 2, 6). However, the sufficiency of a Rule 131 affidavit or
declaration is clearly within the jurisdiction of the Board because it affects a
rejection of the claims. See In re DeBaun, 687 F.2d 459, 214 USPQ 933
(CCPA 1982) (reviewing Board decision involving Rule 131 declaration).
37 C.F.R. § 131 provides that an applicant may establish invention of
the claimed subject matter before the effective date of the reference and
antedate the reference. The tests are stated in § 1.131(b):

The showing of facts shall be such, in character and weight, as
to establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective date of
the reference coupled with due diligence from prior to said date to a
subsequent reduction to practice or to the filing of the application.
[Emphasis added.]

That is, there are three ways in which an applicant can antedate a reference:
(1) actual reduction to practice of the invention prior to the effective date of
the reference; or (2) conception of the invention prior to the effective date of

2 The Evidence Appendix in the Brief lists the affidavit, but does not
include a "statement setting forth where in the record that evidence was
entered in the record by the examiner" as required by 37 C.F.R.
§ 41.37(c)(1)(ix). We will overlook this informality.
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Application 09/919,794

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the reference coupled with due diligence from prior to the reference date to a
subsequent actual reduction to practice; or (3) conception of the invention
prior to the effective date of the reference coupled with due diligence from
prior to the reference date to the filing date of the application (constructive
reduction to practice). Methods (2) and (3) are used when conception occurs
prior to the date of the reference, but reduction to practice, actual or
constructive, is afterward.
The facts and relevant dates are as follows:

May 2000 Conception of the present invention as evidenced
by the disclosure document

September 22, 2000 Actual reduction to practice by commercial
production of washing machine incorporating
claimed invention

December 21, 2000 Filing date of Blair Application 09/741,067
(which became the Blair '265 patent)

August 2, 2001 Filing date of instant application

January 7, 2003 Blair '265 patent issued

Since there is sworn testimony of an actual reduction to practice
before the filing date of the Blair patent, the affidavit is sufficient to antedate
Blair under method (1). Diligence is not required because this is not a case
where the reduction to practice occurred after the filing date of the reference.
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Appellants confuse the issue by stating that "the Applicant never
intended to show a reduction to practice prior to the effective date of the '265
[Blair] reference but rather conception of the invention prior to the effective
date of the reference coupled with due diligence from prior to the date to a
subsequent reduction to practice or to the filing of the application" (Br. 13;
Reply Br. 2 is identical except for a comma). Thus, Appellants argue that
they are not relying on actual reduction to practice before the Blair filing
date but then go on to argue that there was an actual reduction to practice
before the effective date of the reference and no diligence needs to be shown
(Br. 14). Appellants argue that there was a conception date of May 2000,
and the fact that there was only four months before the actual reduction to
practice by production "clearly proves diligent working as a four month
window from conception to reduction to practice in the form of an actual
production version of a washing machine is an incredibly short period of
time" (Br. 13). Diligence is not necessary when the actual reduction to
practice occurs before the date of the reference. While the arguments are
confusing, we nevertheless conclude that the affidavit antedates Blair.
The Examiner's sole reason for objection is that "the submitted
affidavit and exhibits does [sic] not clearly explain which facts or data
applicant is relying on to show completion of his or her invention prior to
the particular date" (Answer 6). However, the affidavit states that "[b]oth
the present invention and the interactive control system for a laundry
appliance as set forth in U.S. Patent No. 6,502,265 are owned by the same
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assignee and were diligently worked on in connection with the production
(production [sic, reduction?] to practice) of a common washing machine that
went into production on September 22, 2000" (Affidavit, page 1). Thus, the
production washing machine is the reduction to practice and the Examiner
has not explained why this is not sufficient.
Therefore, we conclude that Blair is antedated by Appellants' affidavit
under 37 C.F.R. § 1.131. Accordingly, the rejection of claims 1-20 is
reversed.
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REVERSED

eld

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