Ex Parte Hallberg et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612181946 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/181,946 07/29/2008 76003 7590 05/31/2016 Kristine Elizabeth Matthews 7501 Henson Forest Drive Summerfield, NC 27358 FIRST NAMED INVENTOR Bryan Severt Hallberg 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SLA2370 2860 EXAMINER NGUYEN, MINH CHAU ART UNIT PAPER NUMBER 2459 NOTIFICATION DATE DELIVERY MODE 05/31/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): kmatthews@runbox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BRYAN SEVERT HALLBERG, RENJIT TOM THOMAS, GREGORY A. BARTNICK, and DARYL HLASNY Appeal2015-000031 Application 12/181,946 Technology Center 2400 Before ERIC S. FRAHM, CATHERINE SHIANG, and CARLL. SILVERMAN, Administrative Patent Judges. SHIANG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-22, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Introduction The present invention relates to browser widgets. See generally Spec. 1. Claim 1 is exemplary: 1. A method for managing multiple instances of a web widget, said method comprising: Appeal2015-000031 Application 12/181,946 rece1vmg a first Uniform Resource Locator (URL) associated with a first widget; generating a first instance identifier associated with a first instance of said first widget, wherein said first instance identifier is unique across all widgets and all widget instances associated with a server system; and adjoining said first instance identifier and said first URL, thereby producing an first instance-adjoined URL. References and Rejection Claims 1-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Peltonen (US 2009/0216634 Al; pub. Aug. 27, 2009) and Synstelien (US 2008/0040681 Al; pub. Feb. 14, 2008). ANALYSIS On this record, we find the Examiner did not err in rejecting claims 1- 22. Appellants contend Peltonen is not prior art, because Appellants submitted a declaration under 37 CPR§ 1.131 (the "declaration" or "affidavit") stating the conception and reduction to practice of this invention occurred before February 27, 2008-the effective priority date of Peltonen. See App. Br. 4---6. The Examiner finds the declaration is insufficient because it is not supported by adequate evidence. See Ans. 15-16. We agree with the Examiner. 3 7 CPR § 1.131 states (emphasis added): Affidavit or declaration of prior invention. 2 Appeal2015-000031 Application 12/181,946 (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 . . . 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 ..... (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. 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. Further, "[t]he Board has broad discretion as to the weight to give to declarations offered in the course of prosecution .... Board is entitled to \veigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations[.]" In re American Academy of Science Tech Center, 367 F.3d 1359, 1368 (Fed. Cir. 2004) (citations omitted). First, the Examiner finds-and Appellants do not dispute-Appellants have redacted all the relevant dates in the supporting Exhibits A and B of the declaration. See Ans. 15; declaration Exs. A, B. Therefore, Appellants have not provided any evidence to support the declaration as to when the conception and reduction to practice of this invention occurred. Appellants' interpretation of an excerpt from Manual of Patent Examining Procedure (MPEP) § 715.07 (App. Br. 5) is incorrect and unpersuasive, as that interpretation directly contradicts 3 7 CPR § 1.131, which explicitly requires 3 Appeal2015-000031 Application 12/181,946 "[t]he showing ojfacts 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." 37 CPR § 1.131 (emphasis added). By eliminating all the relevant dates, Appellants have removed the facts required to support the declaration. Because Appellants have not provided adequate evidence for us to evaluate whether the conception and reduction to practice of this invention indeed occurred before February 27, 2008, Appellants have not persuaded us Peltonen is not prior art. Second, Application of Borkowski, 505 F.2d 713(CCPA1974) further illustrates the inadequacy of the declaration. Similar to Borkowski, in this case, the proofs submitted under Rule 131 'taken as a whole' [are] unconvincing. The [] affidavit[] together with the accompanying comments do not adequately explain what facts or data appellants are relying upon to show a completion of their invention prior to [February 27, 2008]. The affidavit[] for the most part consist[ s] of vague and general statements in the broadest terms as to what the exhibits show along with the assertion that the exhibits describe a [conception and] reduction to practice. This amounts essentially to mere pleading, unsupported by proof or showing of facts. It was appellants' burden to explain the content of these [computer file] pages as proof of acts amounting to [conception and] reduction to practice. That was not done. Absent a clear explanation of the [computer file] pages pointing out exactly what facts are established therein and relied on by appellants, the affidavits based thereon are of little assistance in enabling the Patent Office and its reviewing courts to judge whether there was an actual [conception and] actual reduction to practice of the invention. Borkowski, 505 F.2d at 718-719. 4 Appeal2015-000031 Application 12/181,946 For example, claim 1 recites a method for managing multiple instances of a web widget, and the method includes the following claim limitations: receiving a first Uniform Resource Locator (URL) associated with a first widget; generating a first instance identifier associated with a first instance of said first widget, wherein said first instance identifier is unique across all widgets and all widget instances associated with a server system; and adjoining said first instance identifier and said first URL, thereby producing an first instance-adjoined URL. Claim 1 (emphases added). However, the declaration fails to specifically point out where exactly in Exhibit B--which has 39 pages---each of the receiving, generating, and adjoining claim limitations is taught, and how each of those limitations is supported by the computer files of Exhibit B. In fact, the declaration does not even mention any of such claim limitations. Similarly, the declaration fails to specifically point out where exactly in Exhibit B, each of the claim limitations of claims 2-22 is taught, and how each of those limitations is supported by the computer files of Exhibit B. Again, the declaration does not even mention any of such claim limitations. In short, the declaration fails to create a nexus between the claim limitations of claims 1-22 and the computer files of Exhibit B. Therefore, following the holding of Borkowski, the declaration is "insufficient to meet the requirements of Rule 131." Borkowski, 505 F.2d at 719. As a result, Appellants fail to show Peltonen is not prior art. 5 Appeal2015-000031 Application 12/181,946 Appellants do not advance other arguments against the Examiner's rejection. Because Appellants have not persuaded us the Examiner erred, we sustain the Examiner's rejection of claims 1-22. DECISION We affirm the Examiner's decision rejecting claims 1-22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation