Ex Parte Hayes

Patent Trial and Appeal Board

Jun 14, 2017

12819931 (P.T.A.B. Jun. 14, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/819,931 06/21/2010 John Hayes LIZA134245 1168
26389 7590 06/16/2017
rTTRTSTRNSFN OTONNOR TOHNSON KTNDNFNN PT T C EXAMINER
1201 THIRD AVENUE ROSTAMI, MOHAMMAD S
SUITE 3600
SEATTLE, WA 98101-3029 ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
efiling @ cojk. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN HAYES
Appeal 2016-008728
Application 12/819,9311
Technology Center 2100
Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
DAVID J. CUTITTAII, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—15, which constitute all claims pending in this
application. App. Br., Claims App’x. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellant identifies the Real Party in Interest as Celartem, Inc. App. Br. 1.
Appeal 2016-008728
Application 12/819,931
STATEMENT OF THE CASE
Appellant invented a computer implemented method and system for
facilitating the compression of a LIDAR point cloud. Spec. 1:20—2:2. In
particular, upon receiving vectors of a point cloud, time series converter
(106) sorts the vectors in the manner in which they were collected, and
forwards them to pipeline wavelet transformer (110) containing multiple
stages that convert the vectors to produce coefficients facilitating the
compression of the point cloud. Id., Fig. 1. Independent claim 1, which is
illustrative, reads as follows:
1. A system for compressing a point cloud, comprising:
a time series converter being executed on a computer with a
processor configured to receive vectors of the point cloud, and
further configured to sort the vectors of the point cloud in
accordance with ordinal references that are indicative of the
order in which the data of the vectors were collected; and
a pipelined wavelet transformer being executed on the
computer or another computer with another processor
comprising multiple pipeline stages all configured to receive
the point cloud from the time series converter to produce
coefficients that facilitate compression to produce a compressed
point cloud.
Rejection on Appeal2
Claims 1—15 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Wiman, “Fast Compression and Access of Lidar Point Clouds
Using Wavelets,” 2009 Urban Remote Sensing Joint Event (May 20—22,
2009). Final Act. 6—12.
2 The Examiner withdrew the rejection under 35 U.S.C. § 101 previously
entered against claims 6—15 for being directed to non-statutory subject
matter. Ans. 4.
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Application 12/819,931
ISSUE
We have reviewed Appellant’s arguments in the Appeal Brief (App.
Br. 8—51) and the Reply Brief (Reply Br. 8—12) in light of the Examiner’s
findings and explanations (Ans. 4—27). The dispositive issue before us is the
following:
Did the Examiner err in finding Appellant’s Declarations under
37 C.F.R. §§ 1.131 and 1.132 are insufficient to antedate Wiman?
ANALYSIS
Appellant argues that the Declaration submitted by Dr. John Hayes,
the inventor, under 37 C.F.R. § 1.131 on July 24, 2013, and the Declaration
submitted by Dr. Glen Thompson, a professional tester, under 35 C.F.R.
§ 1.132 are sufficient to show actual reduction to practice of the claimed
invention before May 20 2009, and are thereby effective to antedate the
Wiman reference.3 App. Br. 10-19. In particular, Appellant argues U.S.
Patent Law permits antedating a reference either by establishing reduction to
3 Appellant also argues Wiman is not a valid prior art reference under
35 U.S.C. § 102 (a) because none of the dates relied upon by the Examiner
qualifies as a valid publication date predating Appellant’s filing date of
July 13, 2009. App. Br. 9—10; Reply Br. 8—12. In particular, Appellant
argues that the dates of May 20-22 are the dates of the 2009 Urban Remote
Sensing Joint Event held in Shanghai. It is unclear, though, whether the
dates of the cited event is also the publication date of the Wiman reference.
App. Br. 10. Further, Appellant argues that although June 26, 2009, was the
date when the Wiman reference was added to IEEE Xplore, it is unclear that
the added document was publicly available on that same date as it is
customary that documents added to the database are not usually available to
the public the same day. Reply Br. 11.
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Application 12/819,931
practice of the invention before the effective date of the reference or by
establishing conception before the effective date of the reference coupled
with due diligence. Id. at 10—11. Accordingly, Appellant submits the
Examiner limiting antedating the reference only through the latter alternative
is a misinterpretation of the law. Id. These arguments are persuasive.
The purpose of filing a § 1.131 Declaration is to demonstrate that the
Appellant 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/America 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 Elect. Indus., 266 F.3d 1358, 1366
(Fed. Cir. 2001) (Newman, J., concurring). A reference may be removed
from consideration by submitting an affidavit (Declaration) under 37 C.F.R.
§ 1.131, antedating the reference. In re Costello, 111 F.2d 1346, 1349 (Fed.
Cir. 1983). See also In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974)
(“[F]or the purpose of antedating [a] reference under Rule 131, it is
sufficient that appellant has shown a reduction to practice of his basic
invention, which showing will also suffice as to claims differing therefrom
only in details which are obvious to one of ordinary skill in the art.”).
We agree with Appellant that “[tjhere is no need for Appellant to show
conception and diligence separately from proof of actual reduction to
practice.” App. Br. at 13. As persuasively argued by Appellant, the
Declarations need only establish that the claimed invention physically
existed and successfully worked for its intended purpose before the effective
date of the reference. Id. at 13—16. In this case, Appellant submits a
Declaration including 93 pages of code as evidence that the claimed
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invention was completed and worked before May 20, 2009. See Dr. Hayes’s
Declaration. Further, Appellant provides Dr. Thompson’s Declaration,
which independently corroborates that, upon testing the code provided in
Appellant’s Declaration, the code worked successfully for the intended
purpose set forth in the claims.
In response, the Examiner finds that the Declarations do not show
conception prior to the date of the reference coupled with due diligence.
Ans. 9—10. As noted above, however, the Examiner’s findings are
misplaced because the Declarations were not submitted to antedate the
reference through earlier conception coupled with due diligence. The
Declarations were submitted to demonstrate actual reduction to practice.
Further, the Examiner finds that the Declarations are insufficient to
show actual reduction to practice because it is unclear as to how the
computer code submitted by Appellant relates to the claims. Ans. 11—12.
We do not agree with the Examiner. As noted above, the § 132 Declaration
submitted by Dr. Thompson, a professional tester, indicates that he has
successfully compiled the code submitted by Appellant, and the code
worked for the intended purpose set forth in the claims. Although the
Declarations do not outline point by point how each line of code relates to
each claim limitation, the Declarations need not delve into such details. In
Spiller, the court determined a Rule 131 Declaration showing possession of
the “basic invention,” or the “heart of the invention,” or “establishing]
broadly possession of the invention,” can be adequate to antedate a prior art
reference even if what is shown in the Rule 131 Declaration does not include
all of the limitations of the later-claimed invention. Spiller, 500 F.2d at
1177. In this case, we find that Appellant has sufficiently demonstrated a
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reduction to practice through a declaration and exhibit showing possession
of the “basic invention” or the “heart of the claimed invention.” Thus,
Appellant has shown a reduction to practice of their basic invention, which
showing will also suffice as to claims differing therefrom only in details
which are obvious to one of ordinary skill in the art. See Spiller 500 F.2d at
1178. We are satisfied that the cumulative weight of the evidence before us
favors Appellant’s position that the claimed invention was actually reduced
to practice before May 20, 2009.
Because we are persuaded of Examiner error with regard to
Appellant’s Declarations, which are dispositive of the rejection of claims 1—
15, we do not reach the additional arguments raised by Appellant.
Therefore, Wiman is disqualified as prior art under 35 U.S.C.
§ 102(a). Accordingly, we do not sustain the rejection of claims 1—15.
DECISION
We reverse the Examiner’s rejection of claims 1—15.
REVERSED
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