Ex Parte Hoang

Board of Patent Appeals and Interferences

Mar 10, 2010

10449171 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KHANH HOANG
____________

Appeal 2009-003704
Application 10/449,171
Technology Center 2100
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Decided: March 10, 2010
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Before LEE E. BARRETT, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-33. Claim 34 has been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
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STATEMENT OF THE CASE
INVENTION
Appellant’s invention relates generally to a system for integration,
management, and coordination of activities of customers accessing an
enterprise through a plurality of applications and/or touchpoints. (Spec.,
para. [0002]).

ILLUSTRATIVE CLAIM
1. A method of managing activities of customers in an enterprise, the
enterprise comprising a plurality of data end points, the methods comprising:

gathering data relating to a customer from the data end points;

receiving a real time request for the data from data end point;

creating an object for the customer using the gathered data; and

delivering the object in real time to the data end points.

PRIOR ART
Beauchamp US 2003/0197733 A1 Oct. 23, 2003
Harper US 2003/0212654 A1 Nov. 13, 2003
Smith US 2003/0217333 A1 Nov. 20, 2003

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THE REJECTIONS
1. The Examiner rejected claims 1-5, 7-12, 15-17, and 27-31 under
35 U.S.C. § 102(e) as anticipated by Harper.1
2. The Examiner rejected claims 20-26, 32 and 33 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Harper and Smith.
3. The Examiner rejected claims 6, 13, 14, 18 and 19 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Harper and
Beauchamp.

CONTENTIONS BY APPELLANT
Appellant contends that the evidence submitted with the 1.131
Declaration: (1) identifies the parts of the annotated computer code that
provided individual features of each claim, and (2), identifies the creation
dates of each part of the computer code, which were before the earliest
possible priority date of Harper. (App. Br. 6, underline added) Appellant
further avers that “the evidence submitted is sufficient for at least three
reasons. First, the case law and the MPEP allow any evidence that shows
conception to be used, not just project proposals. Second, the sworn affidavit
is itself valid evidence of the prior conception. Third, the combination of the
affidavit and the supporting Exhibits is even stronger proof of conception
than the individual parts.” (App. Br. 7).

1 We note that the Examiner sets forth detailed rejections under § 102(e) for
claims 30 and 31 (Ans. 10-11), even though the heading of the § 102
rejection omits these claims. (Ans. 4). We consider this to be harmless error
and consider claims 30 and 31 as standing rejected under § 102(e) as
anticipated by Harper.
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THE EXAMINER’S RESPONSE
The Examiner disagrees. The Examiner finds the evidence submitted
is insufficient to show conception of the claimed invention. (Ans. 3). The
Examiner states that “[t]he showing of conception is necessary in order to
swear behind a reference using a declaration or affidavit under 37 C.F.R.
[§]1.131. In order for the Applicant to sufficiently show conception, the
Applicant must produce evidence such as a project proposal that adequately
details all aspects of the claimed invention.” (Ans. 3, second full paragraph,
emphasis added). The Examiner further states that “[s]ince the Applicant
failed to show the date of conception of the invention, it is not possible to
fully determine if proper diligence has been established from the point of
conception to the constructive reduction to practice of the invention. In order
to overcome this obstacle, the Applicant must first establish the point of
conception, as noted above, and then effectively show diligence from the
point of conception to the constructive reduction to practice. Because of this
deficiency [] the Applicant will not be granted the request for an early
priority date under 37 C.F.R. [§] 1.131.” (Ans. 3-4).

ISSUE
Based upon our review of the administrative record, we note that the
Examiner’s finding regarding the purported lack of due diligence is based
solely on the Examiner’s contention that Appellant’s Declaration and
supporting exhibits are insufficient to show conception of the invention. (See
App. Br. 3-4: “Since the Applicant failed to show the date of conception of
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the invention, it is not possible to fully determine if proper diligence has
been established from the point of conception to the constructive reduction
to practice of the invention.”).
Therefore, we have determined that the following issue is dispositive
in this appeal:
Did Appellant’s Declaration under 37 C.F.R. § 1.131
include evidence of sufficient character and weight to
establish conception of the present invention (as the first
requisite element under §1.131) for the purpose of
antedating the Harper reference?

PRINCIPLES OF LAW

Declaration Under 37 C.F.R. § 1.131
37 C.F.R. § 1.131 provides in pertinent part:
(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 . . . .
(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

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drawings or records, or photocopies thereof, must accompany
and form part of the affidavit or declaration or their absence
must be satisfactorily explained. (Emphasis added).
37 C.F.R. § 1.131 (emphasis added.)
The Board evaluates a declaration submitted pursuant to 37 C.F.R.
§ 1.131 on its merits, considering the evidence relied upon in light of the
arguments explaining why the evidence is sufficient. The Board has broad
discretion in weighing declaration evidence. In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004); In re Inland Steel, Co.,
265 F.3d 1354, 1366 (Fed. Cir. 2001).
An Applicant’s declaration must clearly explain the evidence and
exhibits, pointing out exactly what facts are established and relied on by
applicant to show conception and reduction of the invention to a practical
form:
The affidavit or declaration and exhibits must clearly explain
which facts or data applicant is relying on to show completion
of his or her invention prior to the particular date. Vague and
general statements in broad terms about what the exhibits
describe along with a general assertion that the exhibits
describe a reduction to practice “amounts essentially to mere
pleading, unsupported by proof or a showing of facts” and,
thus, does not satisfy the requirements of 37 CFR 1.131(b).

MPEP § 715.07 (I) (quoting In re Borkowski, 505 F.2d 713, 718 (CCPA
1974)). See also In re Harry, 333 F.2d 920, 922 (CCPA 1964) (Where the
affidavit “asserts that facts exist but does not tell what they are or when they
occurred.”). A declaration exhibit need not support all claimed limitations;
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however, any missing limitation must supported by the declaration itself.
MPEP § 715.07 (I) (citing Ex parte Ovshinsky, 10 USPQ2d 1075 (BPAI
1989)).
Conception has been defined as “the complete performance of the
mental part of the inventive act” and it is “the formation in the mind of the
inventor of a definite and permanent idea of the complete and operative
invention as it is thereafter to be applied in practice . . . . ” Townsend v. Smith,
36 F.2d 292, 295 (CCPA 1930). Cf. “[C]onception is established when the
invention is made sufficiently clear to enable one skilled in the art to reduce it
to practice without the exercise of extensive experimentation or the exercise
of inventive skill.” Hiatt v. Ziegler, 179 USPQ 757, 763 (Bd. Pat. Inter.
1973).

FINDINGS OF FACT
1. Appellant’s affidavit under 37 C.F.R. §1.131 declares that Exhibits
“A” to “H” evidence that the present invention was conceived before
the effective filing date of Harper. (App. Dec. 3-4)
2. Appellant’s affidavit Exhibits “A” to “H” are annotated code with
creation dates from Nov. 17, 2001 to January 15, 2002. (App. Dec. 4)
3. The Harper reference claims the benefit of two provisional
applications (60/351,842, filed January 25, 2002, and 60/360,064 filed
Feb. 25, 2002). (Harper pg. 1).
4. Appellant’s Declaration maps the limitations of independent claim 1
to Exhibits “A” to “C” via the annotations provided in the code. (App.
Dec. 4-5).
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5. Appellant’s Declaration maps the limitations of independent claim 9
to Exhibits “A” to “C” via the annotations provided in the code. (App.
Dec. 4-5).
6. Appellant’s Declaration maps the limitations of independent claim 15
to Exhibits “A” to “C” via the annotations provided in the code. (App.
Dec. 4-5).
7. Appellant’s Declaration maps the limitations of independent claim 20
to Exhibits “A” to “G” via the annotations provided in the code. (App.
Dec 4-5).
8. Appellant’s Declaration maps the limitations of independent claim 27
to Exhibits “B,” “C,” and “H” via the annotations provided in the
code. (App. Dec. 4-5).

ANALYSIS
We decide the question of whether Appellant’s Declaration and
supporting exhibits under 37 C.F.R. § 1.131 include evidence of sufficient
character and weight to establish conception of the present invention (as the
first requisite element under §1.131) for the purpose of antedating the Harper
reference.
The Examiner states in the record that “[s]ince the Applicant failed to
show the date of conception of the invention, it is not possible to fully
determine if proper diligence has been established from the point of
conception to the constructive reduction to practice of the invention.” (Ans.
3-4).

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Therefore, because the Examiner’s finding regarding the purported
lack of due diligence is based solely on the Examiner’s contention that
Appellant’s Declaration is insufficient to show conception of the invention,
we need not reach the issue of whether Appellant has established due
diligence from conception until constructive reduction to practice to decide
this appeal.
Instead, our decision is based solely on the substance of Appellant’s
Declaration and supporting exhibits to determine if Appellant has
established “conception” of the present invention prior to the Harper
reference’s critical date of January 25, 2002 (corresponding to the earlier
filing date of the two provisional applications of Harper). Based upon our
review of the record, we are in agreement with Appellant’s arguments
regarding this issue. (e.g., see Reply Br. 7-8; 10).
Appellant contends that the evidence submitted with the § 1.131
Declaration: (1) identifies the parts of the annotated computer code that
provided individual features of each claim, and (2), identifies the creation
dates of each part of the computer code, which were before the earliest
possible priority date of Harper. (App. Br. 6) Appellant relies on Exhibits
A-I to show completion and “possession” of the claimed invention before the
earliest effective date of Harper (January 25, 2002). As such, Appellant
contends that the Examiner erred in determining that the Declaration under 37
C.F.R. § 1.131 and the accompanying Exhibits are sufficient to establish a
conception of the invention prior to the effective date of Harper. (Id. and 10-
11).

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We note that the Examiner found the affidavit under 37 C.F.R. §
1.131 defective for the following specific reasons:
Applicant gave no evidence of conception of the
invention in the submitted 37 C.F.R. 1.131 Affidavit. The
showing of conception is necessary in order to swear behind a
reference using a declaration or affidavit under 37 C.F.R. 1.131.
In order to Applicant to sufficiently show conception, the
Applicant must produce evidence such as a project proposal
that adequately details all aspects of the claimed invention.
Because of this deficiency the Applicant will not be granted the
request for any early priority data under 37 C.F.R. 1.131.
. . . .

Since the Applicant failed to show the date of conception
of the invention, it is not possible to fully determine if proper
diligence has been established from the point of conception to
the constructive reduction to practice of the invention. In order
to overcome this obstacle, the Applicant must first establish the
point of conception, as noted above, and then effectively show
diligence from the point of conception to the constructive
reduction to practice. Because of this deficiency, the Applicant
will not be granted the request for an early priority date under
37 C.F.R. 1.131.

(Ans. 3-4, underline added).

Based upon our review of the Declaration, we find exhibits “A” to “H”
are sufficiently mapped to the limitations recited in independent claims 1, 9,
15, 20, and 27, respectively. (FF 4-8). We further find that each of exhibits
“A” to “H” have creation dates of Nov. 17, 2001 to January 15, 2002 (FF 2),
which are before the earliest possible effective filing date of Harper (January
25, 2002). (FF 3)
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In particular, we find the Examiner has erred by contending that in
order “to sufficiently show conception, the Applicant must produce evidence
such as a project proposal that adequately details all aspects of the claimed
invention.” (Ans. 3, underline added). Based upon our review of the evidence
(FF 4-8), it is our view that Appellant’s Declaration and supporting exhibits
are sufficiently clear to establish conception and enable one skilled in the art
to reduce Appellant’s invention to practice without the exercise of extensive
experimentation or the exercise of inventive skill. See Hiatt v. Ziegler,
179 USPQ at 763.
In particular, we observe that it is known in the art that different
programmers may be assigned different aspects of a project such as those
shown in Exhibits “A” to “H,” and the different aspects of the overall project
may be started and completed at different times. Therefore, we find
Appellant has sufficiently demonstrated “conception” of the present invention
prior to the earliest effective priority date of Harper as evidenced by the
Declaration and supporting Exhibits. (FF 4-8).
Because each rejection before us relies on Harper (that we find is
antedated by Appellant’s § 1.131 Declaration and supporting Exhibits), we
reverse the Examiner’s rejection under 35 U.S.C. § 102(e) of claims 1-5, 7-
12, 15-17, and 27-31. Furthermore, we do not find, nor has the Examiner
established, that either Smith or Beauchamp cures the deficiencies of Harper.
Therefore, we also reverse the Examiner’s § 103 rejections of claims 6, 13,
14, 18, 19, 20-26, 32, and 33.

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CONCLUSION
Appellant’s Declaration under 37 C.F.R. § 1.131 includes evidence of
sufficient character and weight to establish conception of the present
invention (as a first requisite element under §1.131) for the purpose of
antedating the Harper reference.

ORDER
The Examiner’s rejection of claims 1-5, 7-12, 15-17, and 27-31 under
35 U.S.C. §102(e) is reversed.
The Examiner’s rejections of claims 6, 13, 14, 18, 19, 20-26, 32 and
33 under 35 U.S.C. § 103(a) are reversed.

REVERSED

pgc

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