Ex Parte Henry

Board of Patent Appeals and Interferences

Mar 21, 2008

09998795 (B.P.A.I. Mar. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN G. HENRY
____________

Appeal 2007-2777
Application 09/998,795
Technology Center 2100
____________

Decided: March 21, 2008
____________

Before JAMES D. THOMAS, KENNETH W. HAIRSTON,
and ST. JOHN COURTENAY III, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1 through 11 and 13 through 31 since
claim 12 was canceled in the amendment filed December 21, 2005. We
have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
We have not reproduced in this decision a representative claim since
the issue presented to us for decision relates only to the nature of the
requirements for an affidavit or declaration filed within 37 C.F.R. § 1.131.
Appeal 2007-2777
Application 09/998,795

The following references are relied on by the Examiner:
Rudd US 6,934,915 B2 Aug. 23, 2005
(filing date Oct 9, 2001)
Kloba WO 01/18688 A2 Apr. 28, 2000

Claims 1, 5, 14, 15, 23, 24, and 26 through 31 stand rejected under
35 U.S.C. § 102(a) as being anticipated by Rudd. To this reference the
Examiner adds Kloba as to claims 2 through 4, 6 through 11, 13, 16 through
22, and 25 which stand rejected under 35 U.S.C. § 103(a).
Rather than repeat verbatim the positions set forth by the Appellant
and the Examiner, reference is made to the Brief and Reply Brief for
Appellant’s positions, and to the Answer for the Examiner’s positions.
OPINION
At least for the reasons set forth by the Examiner in the Answer, we
sustain the rejection of the noted claims under 35 U.S.C. § 102 as well as
those separately rejected under 35 U.S.C. § 103.
At the outset, we reproduce here paragraph (b) of 37 C.F.R. 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.
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.

2
Appeal 2007-2777
Application 09/998,795

It is noted that the top of page 8 of the Final Rejection repeats these
requirements of this rule.
The original declaration was submitted by Appellant with an
amendment on December 21, 2005, and Appellant’s declaration bears a
signature date of December 15, 2005. Page 11 of this amendment only
briefly mentions this declaration. It is also noted that certain claims were
amended as well as a part of this amendment.
Pages 7 and 8 of the Final Rejection mailed on March 17, 2006, as
well as page 8 of the Answer indicate the Examiner’s view that there is not a
sufficient showing of facts to determine the present invention defined by the
claims was actually conceived before the October 9, 2001, filing date of
Rudd.
Collectively, the Brief and Reply Brief urge that the declaration alone
should be considered factual evidence within the rule to prove conception of
the invention before the filing date of the Rudd patent followed by diligent
constructive reduction to practice after the filing date of this reference to the
filing date of December 3, 2001 of this application.
In view of these findings, we conclude that Appellant has not
submitted the required factual showing noted earlier with respect to
paragraph (b) of 37 C.F.R. § 1.131. The record before us does not establish
that original exhibits of drawings or records or photocopies thereof
accompanied the declaration filed under the rule and, correspondingly, there
appears to be no explanation at all in the record to lead the Examiner to
conclude that the absence of them was satisfactorily explained.
3
Appeal 2007-2777
Application 09/998,795

Thus, within the terms of part (b) of the rule, Appellant has not
submitted facts in the form required by the rule of conception of the
invention prior to the effective date of the reference coupled with due
diligent from prior to that date to a constructive reduction to practice of the
invention by the filing of this application. Therefore, we find no error in the
Examiner’s positions as to the anticipation rejection of the noted claims
under 35 U.S.C. § 102(a). Although the Examiner’s views are correct, they
are incomplete as to the full extent of the submissions of facts to support
Appellant’s positions with respect to Rudd. These necessarily would include
submissions of facts as to conception as well as to diligence up to the filing
date of this application.
Because Appellant’s arguments with respect to the second stated
rejection of claims under 35 U.S.C. § 103 as expressed at page 17 of the
principal Brief on appeal relies upon the arguments represented with respect
to the alleged impropriety of the Examiner’s positions in maintaining the
rejection of 35 U.S.C. § 102 over Rudd, the rejection of the claims under 35
U.S.C. § 103 is affirmed as well. Furthermore, the merits of these rejections
have not been argued before us.
Appellant’s reliance at page 16 of the principal Brief and at pages 2
and 3 of the Reply Brief on Ex parte Gilbert P. Hyatt (1996 WL 1761844
(Bd. Pat. App. & Interf.)) is misplaced. It is plain within the analysis in this
Board Decision that no affidavit or declaration was submitted under the
provisions of 37 C.F.R. § 1.131. Although the Board does note a declaration
was filed by the appellant in its reasoning, since it was submitted in the form
to rebut an Examiner’s case of prior public use or sale as alleged in the
4
Appeal 2007-2777
Application 09/998,795

Examiner’s rejection, it only could have been submitted within the
provisions of 37 C.F.R. § 1.132, which Appellant appears to recognize at the
bottom of page 3 of the Reply Brief. There is no corresponding requirement
of this latter rule that compares with the nature of the showing of facts
required by 37 C.F.R. § 1.131(b) reproduced earlier and discussed in this
opinion.
It is noted here that the nature of the submissions required by
paragraph (b) of 37 C.F.R. § 1.131 is such as to permit the Examiner to
determine adequacy of support for the claimed subject matter at the time it is
before the Examiner. This is significant in the factual history of this
application since the claims were amended at least once after their filing.
In view of the foregoing, the decision of the Examiner rejecting
various claims under 35 U.S.C. § 102 and 35 U.S.C. § 103 is affirmed since
Appellant has presented no evidence before us of error on the Examiner’s
part regarding these rejections.

5
Appeal 2007-2777
Application 09/998,795

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

pgc

HEWLETT-PACKARD COMPANY
Intellectual Property Administration
P.O. Box 272400
Fort Collins CO 80527-2400
6