Ex Parte Galloway

Board of Patent Appeals and Interferences

Sep 15, 2009

10396969 (B.P.A.I. Sep. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM C. GALLOWAY
____________

Appeal 2008-003461
Application 10/396,969
Technology Center 2100
____________

Decided: September 16, 2009
____________

Before LEE E. BARRETT, JOSEPH L. DIXON, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-71. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2008-003461
Application 10/396,969

A. INVENTION
The invention at issue on appeal relates to computer mass storage
devices; in particular, it relates to Serial Attached SCSI (Small Computer
System Interface) mass storage devices. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 1, which further illustrates the invention, follows.
1. A method for closing a connection between a first port
and a second port, with or without intermediate ports, comprising:

the first port sending a closing connection request with a
reason for closure;

the first port receiving a response from the second port; and

the first port halting a closing process if the response is a keep-
alive-response, otherwise, the first port proceeding with the closing
process.

C. REFERENCE
The Examiner relies on the following reference as evidence:

T 10, American National Standards Institute, Working Draft
American National Standard: Project T 10/1562-D; Serial
Attached SCSI (SAS), Revision 3b (January 26, 2003)
(hereinafter “Serial Attached SCSI (SAS) working draft
standard revision 3b”).

2
Appeal 2008-003461
Application 10/396,969

D. REJECTIONS
Claims 1-46 are rejected under 35 U.S.C. § 102(a) as being clearly
anticipated by the Serial Attached SCSI (SAS) working draft standard
revision 3b.

Claims 47-71 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over applicant's admitted prior art in view of the Serial
Attached SCSI (SAS) working draft standard revision 3b.

II. ISSUE
Has Appellant presented a sufficient showing to disqualify the Serial
Attached SCSI (SAS) working draft standard revision 3b reference and
therefore disqualify the reference and obviate the rejections under 35 U.S.C.
§§ 102 and 103?
III. PRINCIPLES OF LAW
35 U.S.C. § 102(a)
A person shall be entitled to a patent unless -
(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant
for patent

MPEP 716.10 Attribution

Under certain circumstances an affidavit or declaration
may be submitted which attempts to attribute an activity, a
reference or part of a reference to the applicant. If successful,
3
Appeal 2008-003461
Application 10/396,969

the activity or the reference is no longer applicable. When
subject matter, disclosed but not claimed in a patent application
filed jointly by S and another, is claimed in a later application
filed by S, the joint patent or joint patent application publication
is a valid reference available as prior art under 35 U.S.C.
102(a), (e), or (f) unless overcome by affidavit or declaration
under 37 CFR 1.131 showing prior invention (see MPEP § 715)
or an unequivocal declaration by S under 37 CFR 1.132 that he
or she conceived or invented the subject matter disclosed in the
patent or published application. Disclaimer by the other
patentee or other applicant of the published application should
not be required but, if submitted, may be accepted by the
examiner.

Where there is a published article identifying the
authorship ( MPEP § 715.01(c)) or a patent or an application
publication identifying the inventorship ( MPEP § 715.01(a))
that discloses subject matter being claimed in an application
undergoing examination, the designation of authorship or
inventorship does not raise a presumption of inventorship with
respect to the subject matter disclosed in the article or with
respect to the subject matter disclosed but not claimed in the
patent or published application so as to justify a rejection under
35 U.S.C. § 102(f).

However, it is incumbent upon the inventors named in
the application, in response to an inquiry regarding the
appropriate inventorship under 35 U.S.C. 102(f) or to rebut a
rejection under 35 U.S.C. 102(a) or (e), to provide a satisfactory
showing by way of affidavit under 37 CFR 1.132 that the
inventorship of the application is correct in that the reference
discloses subject matter derived from the applicant rather than
invented by the author, patentee, or applicant of the published
application notwithstanding the authorship of the article or the
inventorship of the patent or published application. In re Katz,
687 F.2d 450, 455, 215 USPQ 14, 18 (CCPA 1982) (inquiry is
appropriate to clarify any ambiguity created by an article
regarding inventorship and it is then incumbent upon the
applicant to provide "a satisfactory showing that would lead to
4
Appeal 2008-003461
Application 10/396,969

a reasonable conclusion that [applicant] is the ... inventor" of
the subject matter disclosed in the article and claimed in the
application).

An uncontradicted "unequivocal statement" from the
applicant regarding the subject matter disclosed in an article,
patent, or published application will be accepted as establishing
inventorship. In re DeBaun, 687 F.2d 459, 463, 214 USPQ 933,
936 (CCPA 1982). However, a statement by the applicants
regarding their inventorship in view of an article, patent, or
published application may not be sufficient where there is
evidence to the contrary. Ex parte Kroger, 218 USPQ 370 (Bd.
App. 1982) (a rejection under 35 U.S.C. 102(f) was affirmed
notwithstanding declarations by the alleged actual inventors as
to their inventorship in view of a nonapplicant author
submitting a letter declaring the author's inventorship); In re
Carreira, 532 F.2d 1356, 189 USPQ 461 (CCPA 1976)
(disclaiming declarations from patentees were directed at the
generic invention and not at the claimed species, hence no need
to consider derivation of the subject matter).

IV. ANALYSIS
Appellant presented a declaration under 37 C.F.R. §§ 1.131 and/or
1.132 filed January 9, 2006, and Appellant provided supporting evidence
including an e-mail dated March 26, 2002 from Bill Galloway to the SAS
Technical Committee regarding the subject of DONE reason codes.
Appellant argues that “[a]s the [a]pplicant was a working member of
the SAS working group and active in preparing and editing the specification,
Revision 3b is effectively a publication where the [a]pplicant is one of the
co-authors in a Rule 131 and/or 132 declaration is submitted as being the
appropriate way to overcome the rejection. See MPEP 715.01(c).” (App.
Br. 4). Appellant identifies page ii of the Serial Attached SCSI (SAS)
reference which lists Appellant as one of the members of the technical team
5
Appeal 2008-003461
Application 10/396,969

and pages v to ix where Appellant is listed for various items to clearly
indicate Appellant's status as one of the co-authors of revision 3b and its
predecessors. (App. Br. 4-7).
37 CFR § 1.131, Affidavit or declaration of prior invention,
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 to establish invention of
the subject matter of the rejected claim prior to the effective
date of the reference or activity on which the rejection is based.

37 CFR § 1.131(b) states:
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. 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.
37 CFR § 1.132, Affidavits or declarations traversing rejections or
objections, states:
When any claim of an application or a patent under
reexamination is rejected or objected to, any evidence
submitted to traverse the rejection or objection on a basis not
otherwise provided for must be by way of an oath or declaration
under this section.
6
Appeal 2008-003461
Application 10/396,969

If we accept Appellant’s declaration under 37 CFR § 1.131 and the
reference on its face lists Appellant as participating in the technical
committee, then according to Appellant’s contention, the reference does not
clearly qualify under 35 U.S.C. § 102(a) wherein it is not by others since
Appellant is one of the listed participants.
The fact that Appellant is one of the listed participants alone does not
evidence that the disclosure in Serial Attached SCSI (SAS) working draft
standard revision 3b is his own work. See In re DeBaun , 687 F.2d 459,
462-63 (CCPA 1982) (patent to DeBaun and Noll available as reference
unless shown to be sole work of DeBaun). Therefore, we do not find
Appellant’s argument persuasive to disqualify the Serial Attached SCSI
(SAS) working draft standard revision 3b reference.
Alternatively, we may view Appellant’s initial disclosure to the SAS
Technical Committee regarding the subject of DONE reason codes as
evidence of conception by Appellant. Then the reference is a publication
"by others," wherein the declaration and supporting corroborating evidence
of the March 26, 2002 email evidence in which the Appellant disclosed the
claimed invention to the Technical Committee which ultimately published
the reference, then Appellant’s declaration, which was submitted as a
declaration under 37 CFR §§ 1 .131 and/or 1.132, may be treated as
evidencing "attribution" wherein under certain circumstances a declaration
may be submitted which attempts to attribute an activity, a reference, or part
of a reference to the applicant.

Appellant has stated in the declaration under 37 C.F.R. §§ 1.131
and/or 1.132, filed January 9, 2006, that “[t]he email [dated March 26, 2002]
7
Appeal 2008-003461
Application 10/396,969

is a proposal explaining my invention to modify the DONE primitive to
allow inclusion of NO_CREDIT and ACKNAK_TMO reasons. The names
of the reasons were changed to CREDIT TIMEOUT and ACK/NAK
TIMEOUT when the proposal was accepted for inclusion in the SAS
standard” and “[t]he invention is my sole invention and there was no joint
inventor.”
Appellant’s corroborating evidence of the March 26, 2002 e-mail
shows disclosure to the technical SAS working group concerning the
claimed invention which was ultimately incorporated into the specification
of revision 3b. MPEP 716.10 states:
An uncontradicted "unequivocal statement" from the
applicant regarding the subject matter disclosed in an article,
patent, or published application will be accepted as establishing
inventorship. In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
However, a statement by the applicants regarding their
inventorship in view of an article, patent, or published
application may not be sufficient where there is evidence to the
contrary. Ex parte Kroger, 218 USPQ 370 (Bd. App. 1982).

In the present prosecution history, we find no evidence to the contrary
and merely find the Examiner requiring Appellant to produce evidence of
actual or constructive reduction to practice. (Ans. 22-24). We find the
evidence that Appellant has provided evidences that Appellant conceived of
the claimed invention prior to the disclosure thereof to the SAS Technical
Committee and that the SAS Technical Committee portion of the Serial
Attached SCSI (SAS) working draft standard revision 3b reference relied
upon by the Examiner is attributable to Appellant and therefore is not known
or used "by others" as required by 35 U.S.C. § 102(a).

8
Appeal 2008-003461
Application 10/396,969

V. CONCLUSION
For the aforementioned reasons, Appellant has shown that the
reference relied upon by the Examiner is not prior art by others under
35 U.S.C. § 102(a) and therefore the rejection is not proper and similarly the
reference is not available under 35 U.S.C. § 103.

VI. ORDER
We reverse the anticipation rejection of claims 1-46 and the
obviousness rejections of claims 47-71.

REVERSED

peb

WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI,
L.L.P.
20333 SH 249 6TH FLOOR
HOUSTON, TX 77070
9