10645185 (B.P.A.I. Jun. 21, 2010)

Ex Parte Childers

Board of Patent Appeals and InterferencesJun 21, 2010

10645185 (B.P.A.I. Jun. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte WINTHROP CHILDERS 8 ____________________ 9 10 Appeal 2009-006270 11 Application 10/645,185 12 Technology Center 3600 13 ____________________ 14 15 Decided: June 21, 2010 16 ____________________ 17 18 19 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 20 MOHANTY, Administrative Patent Judges. 21 22 CRAWFORD, Administrative Patent Judge. 23 24 25 DECISION ON APPEAL26 Appeal 2009-006270 Application 10/645,185 2 STATEMENT OF THE CASE 1 Appellant appeals under 35 U.S.C. § 134 (2002) from a Final 2 Rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b) 3 (2002). 4 Appellant invented online systems and methods for requesting a 5 projector and presentation venue reservation (Abstr.). 6 Independent claim 1 under appeal reads as follows: 7 1. A projector reservation system, 8 comprising: 9 a reservation system server capable of 10 communicating over a network with a client that 11 fulfills projector and venue reservation requests 12 received via the network and coordinates a 13 transport and a storage of presentation data 14 received via the network; and 15 one or more projector systems capable of 16 communicating with the reservation system server 17 that download the presentation data for display 18 according to the projector and venue reservation 19 requests. 20 21 The prior art relied upon by the Examiner in rejecting the claims on 22 appeal is: 23 Hotaling US 5,124,912 Jun. 23, 1992 24 Nishihara US 2003/0208565 A1 Nov. 6, 2003 25 Lee et al. US 2004/0039723 A1 Feb. 26, 2004 26 Dorensbosch US 2004/0064355 A1 Apr. 1, 2004 27 Johnson US 7,143,177 B1 Nov. 28, 2006 28 Lee US 2006/0010317 A1 Jan. 12, 2006 29 Hamid US 2006/0288229 A1 Dec. 21, 2006 30 The Examiner rejected claims 1, 5, and 7 under 35 U.S.C. § 103(a) as 31 being unpatentable over Dorenbosch in view of Lee et al.; rejected claims 2 32 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Dorenbosch in 33 Appeal 2009-006270 Application 10/645,185 3 view of Lee et al. and Official Notice; rejected claims 3, 4, and 31 under 35 1 U.S.C. § 103(a) as being unpatentable over Dorenbosch in view of Lee et al. 2 and Hamid; rejected claims 8, 11, 14, and 29 under 35 U.S.C. § 103(a) as 3 being unpatentable over Dorenbosch in view of Lee et al. and Lee; rejected 4 claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Dorenbosch in 5 view of Lee et al., Lee, and Hotaling; rejected claims 10, 12, and 13 under 6 35 U.S.C. § 103(a) as being unpatentable over Dorenbosch in view of Lee et 7 al., Lee, and Official Notice; rejected claims 15, 18-22, and 26 under 35 8 U.S.C. § 103(a) as being unpatentable over Dorenbosch in view of Lee et al. 9 and Johnson; rejected claim 16 under 35 U.S.C. § 103(a) as being 10 unpatentable over Dorenbosch in view of Lee et al., Johnson, and Hamid; 11 rejected claims 17 and 27 under 35 U.S.C. § 103(a) as being unpatentable 12 over Dorenbosch in view of Lee et al., Johnson, and Nishihara; rejected 13 claims 23-25 and 28 under 35 U.S.C. § 103(a) as being unpatentable over 14 Dorenbosch in view of Lee et al., Hamid, and Official Notice; rejected claim 15 30 under 35 U.S.C. § 103(a) as being unpatentable over Lee et al. in view of 16 Johnson and Hamid; rejected claim 32 under 35 U.S.C. § 103(a) as being 17 unpatentable over Dorenbosch in view of Lee et al., Hamid, and Johnson; 18 and rejected claim 33 under 35 U.S.C. § 103(a) as being unpatentable over 19 Dorenbosch in view of Lee et al., Hamid, and Nishihara. 20 We AFFIRM. 21 22 ISSUE 23 Did the Examiner err in asserting that the Childers Declarations of 24 August 17, 2007 and March 26, 2008 do not set forth sufficient facts to 25 antedate the Lee et al. and Dorenbosch references? 26 Appeal 2009-006270 Application 10/645,185 4 FINDINGS OF FACT 1 Childer’s Declaration of August 17, 2007 (First Declaration) 2 The Childer’s Declaration states: 3 Following my conception prior to October 1, 4 2002, I worked diligently with the Patent Attorney, 5 Leland Wiesner, Esq.[,] to prepare the patent 6 application filed on August 21, 2003 thereby 7 constructively reducing the invention to practice. 8 During this time period, the patent attorney 9 prepared one or more drafts of the application for 10 my comments. With my comments, the patent 11 attorney revised one or more portions of the 12 application, claims and/or figures to accommodate 13 my suggestions. 14 (¶6). 15 16 PRINCIPLES OF LAW 17 Antedating References 18 If a patent is available as a reference against appellant, the burden is 19 on appellant to establish the facts necessary to “‘overcome’” that patent. In 20 re Facius, 408 F.2d 1396, 1403-04 (CCPA 1969). 21 Actual reduction to practice requires proof of a physical embodiment 22 or performance of a process that includes all limitations of the claims. UMC 23 Elecs. Co. v. U.S., 816 F.2d 647, 652 (Fed. Cir. 1987). 24 The presence or absence of reasonable diligence must necessarily be 25 determined by the evidence adduced in each case. Gould v. Schawlow, 363 26 F.2d 908, 919 (CCPA 1966). 27 Appeal 2009-006270 Application 10/645,185 5 ANALYSIS 1 Antedating References 2 We are not persuaded that the Examiner erred in asserting that the 3 Childers Declarations of August 17, 2007 and March 26, 2008 do not set 4 forth sufficient facts to antedate the Lee et al. and Dorenbosch references 5 (App. Br. 11-16; Reply Br. 5-10). Specifically, Appellant has not met their 6 burden of establishing sufficient facts in the record to overcome the Lee et 7 al. and Dorenbosch references. See In re Facius, 408 F.2d at 1403-04. 8 We initially note that Appellant has not set forth any evidence of an 9 actual reduction to practice of the claimed invention. Contrary to 10 Appellant’s arguments, even an enabled disclosure document is not 11 sufficient to establish an actual reduction to practice for a method (Reply Br. 12 5-7). Evidence of an actual performance of a method is necessary. See 13 UMC Elecs. Co. v. U.S., 816 F.2d at 652. 14 The entirety of facts on record to support Appellant’s diligence, from 15 September 12, 2002 to August 21, 2003, is a statement in the First 16 Declaration that the inventor worked with a patent attorney during this 17 period to draft and revise the patent application (¶6). Such a statement, in 18 the absence of additional evidence as to exactly what events in the course of 19 application drafting occurred on which days, is insufficient to meet 20 Appellant’s burden of overcoming the Lee et al. and Dorenbosch references. 21 See Gould v. Schawlow, 363 F.2d at 919 (CCPA 1966); In re Mulder, 716 22 F.2d 1542, 1545 (Fed. Cir. 1983) (lack of evidence of activity for at least 23 three months between the time the draft application was received in this 24 country and the time the application was filed held to be fatal). Compare 25 Gould v. Schawlow, 363 F.2d at 916-17 (testimony of patent attorney 26 Appeal 2009-006270 Application 10/645,185 6 relating to their joint activities in preparing a patent application from 1 December 1958 to April 1959 was a sufficient showing of diligence); Rines 2 v. Morgan, 250 F.2d 365, 369 (CCPA 1957) (voluminous record, including 3 testimony of attorney, shows diligence between November 1943 and the 4 filing of the patent application on March 18, 1944). While Appellant does 5 set forth December 26, 2002 as the start date of the RFQ and April 14, 2003 6 as the date where Mr. Wiesner’s services were formally contracted, 7 Appellant has not provided any evidence to support these events (Reply Br. 8 8-10). 9 We have reviewed Appellant’s arguments on pages 8-10 of the Reply 10 Brief concerning lack of access to draft applications and delays due to 11 internal company procedures. However, such arguments cannot take the 12 place of evidence necessary to meet Appellant’s burden. 13 Regarding Appellant’s argument on pages 10-11 of the Reply Brief 14 concerning Official Notice, because such arguments were not set forth in the 15 Appeal Brief and no good cause has been set forth for their exclusion, we 16 decline to address them. See Ex Parte Borden, 93 USPQ2d 1473, 1477 17 (BPAI 2010) (expanded panel) (informative) (“the Rules do not require the 18 Board to take up a belated argument that has not been addressed by the 19 Examiner, absent a showing of good cause”). 20 Appeal 2009-006270 Application 10/645,185 7 DECISION 1 The decision of the Examiner to reject claims 1-33 is affirmed. 2 No time period for taking any subsequent action in connection with 3 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 4 § 1.136(a)(1)(iv) (2007). 5 6 AFFIRMED 7 8 9 10 11 hh 12 13 HEWLETT-PACKARD COMPANY 14 Intellectual Property Administration 15 3404 E. Harmony Road 16 Mail Stop 35 17 FORT COLLINS, CO 80528 18