Ex Parte Davis et al

Patent Trial and Appeal Board

Mar 26, 2014

11214980 (P.T.A.B. Mar. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARTHUR G. DAVIS and RUTH A. JONES
____________

Appeal 2011-012239
Application 11/214,980
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG,
and LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-22. (App. Br. 5). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
This invention relates to providing software copy control. (Spec. 2).
Claim 1, reproduced below, is representative of the claimed subject matter:
1. A method for providing software copy control, the method
comprising:
distributing an installation program, the installation program
programmed to extract identification information from a user
processor designated to run an application program, the identification
information including at least one of a motherboard serial number
associated with the user processor, a central processing unit serial
number associated with the user processor, or a hard disk drive serial
number associated with the user processor;
receiving the identification information from the installation
program executing on the user processor;
receiving a request for the application program from the
installation program executing on the user processor;
creating an identifier based on at least the received
identification information;
configuring the application program to run only on the user
processor; and
transmitting the application program back to the installation
program still executing on the user processor, the application program
configured to be installed on the user processor by the installation
program and configured, using the identifier, to run only on the user
processor.

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REJECTION
Claims 1-22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ciudad et al. (US 7,530,065 B1; May 5, 2009) further in
view of Zeng (US 6,681,212 B1; Jan. 20, 2004).

CONTENTIONS
Appellants contend the rejected claims are entitled to a priority date
that antedates the Ciudad reference filing date (August 13, 2004). (App. Br.
6). Specifically, Appellants contend:
(1) The Declarations submitted under 37 C.F.R. § 1.131 are sufficient
to establish conception (before the critical date), coupled with due diligence
to the date of constructive reduction to practice (i.e., the filing date of
Appellants’ provisional application 60/607,672 on September 7, 2004, which
is after the Ciudad reference critical date of August 13, 2004). (App. Br. 8).
In the alternative, Appellants are seeking to show:
(2) An actual reduction to practice before the critical date of the
reference because: “[T]he applicants swore that they had completed their
invention and reduced their claimed invention to practice prior to August 13,
2004, [and] that their ‘672 provisional patent was substantially complete at
that time.” (App. Br. 7 (emphasis added)). Appellants further allege actual
reduction to practice because “[t]he applicants in their declarations stated
under oath that they had completed their invention and reduced it to practice
before August 13, 2004, the effective date of the Ciudad reference.” (Id.).
The Examiner responds that insufficient evidence has been presented
(Ans. 21), and that the evidence presented for the first time with the Appeal
Brief does not meet the requirements for entering new evidence with the
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Appeal Brief (Ans. 21-22), under 37 C.F.R. §§ 41.33, 41.37, and therefore
priority of invention has not been established.
The Examiner finds Appellants failed “to set fort[h] in the showing of
facts, as to establish reduction to practice prior to the effective dat[e] of the
reference, or conception of the invention prior to the effective date of the
reference coupled with due diligence.” (Ans. 20 (emphasis omitted)). The
Examiner restates the requirements of 37 C.F.R. § 1.131(b) regarding the
showing of facts required to establish: (A) actual reduction to practice, or
(B) conception, coupled with due diligence until the constructive reduction
to practice of the invention, and in particular, the requirement of either
exhibits or an explanation of their absence. Regarding Appellants’ § 1.131
Declarations, the Examiner notes that “[n]o original exhibits or drawings or
record were provided. Their absence also was not [] satisfactorily
explained.” (Ans. 4, 20 (emphasis omitted)).

ISSUES
Regarding the rejection of claims 1-22 on appeal, is the Ciudad patent
available as prior art? The dispositive issues are whether the inventors’
Declarations under 37 C.F.R. § 1.131 are sufficient to establish either:
(A) an actual reduction to practice prior to the Ciudad reference
critical date (August 13, 2004, the filing date of the Ciudad patent), or
(B) conception of the invention prior to the filing date of the Ciudad
patent (August 13, 2004), coupled with due diligence from prior to the
reference date to the date of constructive reduction to practice (the filing
date of Appellants’ provisional application 60/574,253, which is September
7, 2004).
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PRINCIPLES OF LAW
The sufficiency of a Rule 131 affidavit or declaration is within the
jurisdiction of the Board because it affects a rejection of the claims. See In
re DeBaun, 687 F.2d 459 (CCPA 1982) (reviewing Board decision
involving Rule 131 declaration). The purpose of filing a Rule 1.131
declaration is to demonstrate that the applicant invented the subject matter of
the rejected claims prior to the effective date of a reference. 37 C.F.R. §
1.131; In re Asahi/Am., Inc., 68 F.3d 442, 445 (Fed. Cir. 1995). “Antedating
a reference is a common occurrence, governed by a stable and non-
controversial jurisprudence.” Loral Fairchild Corp. v. Matsushita Elec.
Indus. Co., 266 F.3d 1358, 1366 (Fed. Cir. 2001) (Newman, P., concurring).
The law is well settled that a reference may be removed from consideration
by submitting an affidavit (declaration) under 37 C.F.R. § 1.131, antedating
the reference, or by showing that the reference “is a description of the
applicant’s own work” using an affidavit/declaration under 37 C.F.R.
§ 1.132. In re Costello, 717 F.2d 1346, 1349 (Fed. Cir. 1983).
37 C.F.R. § 1.131 provides that an applicant may establish invention
of the claimed subject matter before the effective date of the reference and
antedate the reference. The requisite showing of facts is 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.
Thus, 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; (2) conception of the invention prior to the
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effective date of 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 (critical date), but
reduction to practice, actual or constructive, occurs after the date of the
reference.

ANALYSIS
At the outset, we observe Appellants’ Specification claims priority to
(i.e., the “benefit of”) provisional application 60/607,672, filed on
September 7, 2004.1 (Spec. ¶ [001]). We note this date is after the filing
date of the Ciudad patent, i.e., the critical date, which is August 13, 2004.
We additionally note that neither Appellants nor the Examiner have
addressed the questions of whether written description support under 35
U.S.C. § 112, first paragraph, is found in provisional application 60/607,672,
or any “substantially complete” draft of the provisional application, as
referred to by the inventors in their respective Declarations. To establish the
benefit of the provisional application 60/607,672 filing date, written
description support on a claim-by-claim basis for each claim limitation

1 We note the correct terminology is that a non-provisional application
claims the “benefit of” (and not “priority to”) a provisional application under
35 U.S.C. § 119(e) to provide an earlier effective filing date for the
subsequent non-provisional application.
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purportedly entitled to the benefit of the provisional application filing date
must be shown by Appellants.2
In this appeal, the arguments advanced in the Brief (pp. 7-9), indicate
that Appellants are concerned with showing either: (A) actual reduction to
practice of the invention prior to the effective filing date of the Ciudad
patent, or (B) conception of the invention prior to the effective filing date of
the Ciudad patent coupled with due diligence asserted from prior to the
effective filing date of the Ciudad patent to the subsequent filing date of

2 The 35 U.S.C. § 102(e) critical reference date of a U.S. patent or U.S.
application publications and certain international application publications
entitled to the benefit of the filing date of a provisional application under 35
U.S.C. § 119(e) is the filing date of the provisional application with certain
exceptions only if the provisional application(s) properly supports the
subject matter relied upon to make the rejection in compliance with 35
U.S.C. § 112, first paragraph. See MPEP § 2136.03(III).
Under § 120, a patent is entitled to the priority date of an earlier
filed application if (1) the written description of the earlier filed
application discloses the invention claimed in the later filed
application sufficient to satisfy the requirements of § 112; (2)
the applications have at least one common inventor; (3) the later
application is filed before the issuance or abandonment of the
earlier filed application; and (4) the later application contains a
reference to the earlier filed application. In addition, if the later
filed application claims priority through the heredity of a chain
of applications, each application in the chain must satisfy
§ 112.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
1997)(emphasis added).
In re NTP, Inc., 654 F.3d 1268, 1277 (Fed. Cir. 2011). Cf. In re Giacomini,
612 F.3d 1380, 1383 (Fed. Cir. 2010) (“[A]n applicant is not entitled to a
patent if another’s patent discloses the same invention, which was carried
forward from an earlier U.S. provisional application or U.S. non-provisional
application. . . . An important limitation is that the provisional application
must provide written description support for the claimed invention.”).
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Appellants’ provisional application 60/607,672, filed on September 7, 2004
(constructive reduction to practice). (Spec. ¶ [001]). Therefore, we consider
both issues A and B.
The requirement for Appellants to present evidence or an explanation
is set forth in 37 C.F.R. § 1.131(b): “Original exhibits of drawings or
records, or photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence must be satisfactorily explained.”
Thus, in order to establish (A) an actual reduction to practice before
the critical date of the Ciudad reference, or (B) conception of the invention
before the critical date, coupled with due diligence until the date of
constructive reduction to practice, the declaration must be accompanied by
original exhibits of drawings or records, or photocopies thereof, or their
absence must be satisfactorily explained. See id.

Issue A (actual reduction to practice)
Regarding issue A (actual reduction to practice), a general allegation
that the invention was completed prior to the date of the reference is not
sufficient. Ex parte Saunders, 23 O.G. 1224 (Comm’r Pat. 1883). “In
general, proof of actual reduction to practice requires a showing that the
apparatus actually existed and worked for its intended purpose.” MPEP
§ 715.07(III). “The primary consideration is whether, in addition to showing
what the reference shows, the affidavit also establishes possession of either
[(1)] the whole invention claimed or [(2)] something falling within the
claim, in the sense that the claim as a whole reads on it.” In re Tanczyn, 347
F.2d 830, 833 (CCPA 1965).
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However, adoption of the “rule of reason” has not altered the
requirement that evidence of corroboration must not depend
solely on the inventor himself. . . . Independent corroboration
may consist of testimony of a witness, other than an inventor, to
the actual reduction to practice or it may consist of evidence of
surrounding facts and circumstances independent of
information received from the inventor.
Reese v. Hurst, 661 F.2d 1222, 1225 (CCPA 1981) (citations omitted).
Here, we find the Declarations of the inventors do not set forth any
additional facts supported by objective, independent evidence admitted by
the Examiner into the official record to establish an actual reduction to
practice before the critical date of the Ciudad reference. See n.2 infra.

Issue B (conception coupled with due diligence
until constructive reduction to practice)
In the alternative (issue B), to show conception a prior “inventor must
be able to ‘describe his invention with particularity.’ [Burroughs Wellcome
Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).] This requires
both (1) the idea of the invention’s structure and (2) possession of an
operative method of making it.” Invitrogen Corp. v. Clontech Labs, Inc.,
429 F.3d 1052, 1063 (Fed. Cir. 2005).
The record shows that each inventor has executed a “Declaration
under 37 C.F.R. 1.131” that states:
4. The invention claimed in this application was
invented and reduced to practice before August 13, 2004. Our
provisional patent application serial number 60/607,672 filed
on September 7, 2004 demonstrates conception matter for all of
the claims in the above-identified patent application. That
provisional patent application was substantially complete as of
August 13, 2004.
(Emphasis added).
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The Declarations of the inventors do not set forth any additional facts
supported by objective evidence admitted by the Examiner into the official
record.3 The inventors’ description of the provisional patent application as
“substantially complete” does not set forth a description of the claimed
invention with any particularity; thus, it is not clear that the entire claimed
invention (rather than a “substantial” portion of it) was conceived before the
critical date of August 13, 2004.
Only a “substantially complete” provisional application is referenced
in the § 1.131 inventors’ Declarations. The Declarations of the inventors
are not accompanied by original exhibits of drawings or records, or
photocopies thereof, and the absence of such drawings or records is not
explained.
Therefore, the Declarations of the inventors are insufficient to
establish either (A) an actual reduction to practice prior to the effective date
of the Ciudad reference (August 13, 2004), as discussed above, or (2)
conception of the invention prior to the effective filing date of the reference
(August 13, 2004), coupled with due diligence until the date of construction
reduction to practice (September 7, 2004, the filing date of Appellants’
provisional patent application 60/607,672). The inventors do not explain the
absence of such exhibits or records and there is no explanation regarding the
absence of such evidence in the Appeal Brief.
Assuming, arguendo, that Appellants’ statements in the Declarations
are sufficient to establish conception of the invention prior to the effective

3 Cf. with Reese v. Hurst, 661 F.2d 1222, 1239 (CCPA 1981) (discussing the
weight to be given to self-serving declarations made by an appellant in an
interference proceeding).
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date of the reference (on or before August 13, 2004), Appellants must also
establish due diligence from the time of conception until the date of
constructive reduction of the invention to practice. Assuming arguendo that
Appellants are able to establish the requisite § 112, first paragraph, support
for the utility claims on appeal in the provisional application, the date of
constructive reduction to practice is the date of filing of the provisional
patent application (provisional application 60/607672 filed on September 7,
2004).
During the period in which reasonable diligence must be shown, there
must be continuous exercise of reasonable diligence. In re McIntosh, 230
F.2d 615, 619 (CCPA 1956); see also Burns v. Curtis, 172 F.2d 588, 591
(CCPA 1949) (referring to “reasonably continuous activity”). A party
alleging diligence must account for the entire critical period. Griffith v.
Kanamaru, 816 F.2d 624, 626 (Fed. Cir. 1987); Gould v. Schawlow, 363
F.2d 908, 919 (CCPA 1966). Even a short period of unexplained inactivity
is sufficient to defeat a claim of diligence. Morway v. Bondi, 203 F.2d 742,
749 (CCPA 1953); Ireland v. Smith, 97 F.2d 95, 99-100 (CCPA 1938). In In
re Mulder, 716 F.2d 1542, 1542-46 (Fed. Cir. 1983), the Federal Circuit
affirmed a determination of lack of reasonable diligence, where the evidence
of record was lacking for a two-day critical period. Likewise, in Rieser v.
Williams, 255 F.2d 419, 424 (CCPA 1958), there was no diligence where no
activity was shown during the first 13 days of the critical period. A party
alleging diligence must provide corroboration with evidence that is specific
both as to facts and dates. Gould v. Schawlow, 363 F.2d at 920; Kendall v.
Searles, 173 F.2d 986, 993 (CCPA 1949). The rule of reason does not
dispense with the need for corroboration of diligence that is specific as to
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dates and facts. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993; see also
Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985).
Here, the record shows a gap of 25 calendar days, of which 16 were
regular working days in the United States and nine were weekends or
holidays (Labor Day). The critical period is from the date of conception
(declared by the inventors to be before August 13, 2004) until the date of
Appellants’ constructive reduction to practice (the date of filing of the
provisional application 60/607672, on September 7, 2004).
In reviewing each inventor’s “Declaration under 37 C.F.R. 1.131,” we
find the following statement: “We were working with patent counsel
between August 13, 2004 and September 7, 2004 to prepare provisional
patent application serial number 60/607,672 for filing with the United States
Patent and Trademark Office.”
However, specific facts have not been provided showing the activities
performed by the inventors or their patent counsel during these 25 days. For
instance, it has not been indicated, even generally, on what days the patent
counsel scheduled review of the merits of the invention and obtained
authorization to undertake the patent application filing and why they did not
do so on other days. On this record, we cannot conclude that there was
reasonably continuous activity toward reducing the invention to practice
during the critical period from before August 13, 2004 (declared date of
conception) until the date of Appellants’ constructive reduction to practice
(the filing date of Appellants’ provisional application 60/607672 on
September 7, 2004).
Appellants urge that diligence was established by the inventors’
Declarations. (App. Br. 7). Appellants further assert “[t]hree weeks to
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complete and file a patent application is a very short period of time for such
a massive organization [as the USPS].” (App. Br. 8). However, even short
periods of unexplained activity (Morway, 203 F.2d at 749; Ireland, 97 F.2d
at 99-100), including periods as short as two days (Mulder, 716 F.2d at
1542-46) or 13 days (Rieser, 255 F.2d at 424) are considered by our
reviewing court to be sufficient to defeat a claim of diligence.
Appellants submitted new evidence with the filing of their Appeal
Brief. This evidence is in the form of an article titled “United States Postal
Service” and an article titled “APWU Local President: USPS HQ Staff Has
Increased 38% Since 2000” (App. Br. 15 (Evidence Appx.)). Appellants
provide this evidence to support their argument regarding due diligence, and
particularly the new evidence is used to support a fact regarding the number
of people employed by the USPS at the time of the invention. (App. Br. 8).
However, this evidence was not entered into the record by the Examiner.
(Ans. 22). No Reply Brief to the Examiner’s Answer was filed by
Appellants in response. See 37 C.F.R. §§ 41.33, 41.37.
Evidence filed after the date of filing a notice of appeal and prior to
the date of filing an appeal brief will not be admitted except when the two
conditions required by 37 C.F.R. § 41.33(d)(1) are met: First, the evidence
must overcome all rejections under appeal. Second, the appellant must
provide a “showing of good and sufficient reasons why the . . . Evidence is
necessary and was not earlier presented.” Id.
Neither condition has been met in this case. Appellants state the new
evidence was provided to show the number of employees of the USPS at the
time of the invention (App. Br. 7), and Appellants further contend this fact is
relevant to establishing due diligence between the conception of the
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invention and the filing of the provisional application (constructive reduction
to practice). Regarding the first condition, there is no relationship between
the number of employees of an assignee and the due diligence required to
establish an earlier date of invention. Appellants have not provided any
reasoning, supported by legal precedent, as to why the number of employees
of the USPS establishes due diligence. Regarding the second condition,
Appellants do not provide a showing of good and sufficient reasons why the
evidence was not earlier presented. Arguments not made are considered
waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2004). Therefore, the evidence
(“United States Postal Service” and “APWU Local President: USPS HQ
Staff Has Increased 38% Since 2000”) has not been considered because it
was not entered into the record by the Examiner. (Ans. 22).
The issues here lie with the insufficiency of proof. A party alleging
diligence must provide corroboration with evidence that is specific both as to
facts and dates. Gould, 363 F.2d at 920; Kendall, 173 F.2d at 993.
Appellants have not presented sufficient facts and dates to account for all
activity during the 25-day critical period. The statements provided as
evidence in the Declarations are insufficient to show reasonably continuous
activity during the 25-day period to support a finding of reasonable diligence
from before August 13, 2004 (declared date of conception) until the date of
Appellants’ constructive reduction to practice (the filing date of Appellants’
provisional application 60/607672 on September 7, 2004).
Therefore, we agree with the Examiner that Appellants “fail[] to set
forth in the showing of facts, as to establish [either (A) actual] reduction to
practice prior to the effective date of the reference, or [(B)] conception of the
invention prior to the effective date of the reference coupled with due
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diligence” until the date of constructive reduction to practice. (Ans. 4, 20
(emphasis omitted)).
DEFECTIVE DECLARATION
We additionally note that the Declaration of Arthur G. Davis held in
the official electronic record is in error. The Declaration signed by “Arthur
G. Davis” states in part “I, Ruth A. Jones do hereby declare that: 1. I am
Ruth A. Jones.” This appears to be a mistake, because one inventor (Davis)
would not declare himself to be the second inventor (Jones). The
Declaration is defective. In the alternative, it is possible that received pages
were not scanned in the correct order into the official USPTO e-DAN
electronic file system. If this is the case, Appellants should resubmit the
defective Declaration.
CONCLUSION
On this record, Appellants have not persuaded us the Examiner erred
in rejecting claims 1-22 under 35 U.S.C. § 103.

DECISION
We affirm the Examiner’s decision rejecting claims 1-22 under 35
U.S.C. §103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED

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