Ex Parte Holt et al

Patent Trial and Appeal Board

Feb 13, 2017

12912416 (P.T.A.B. Feb. 13, 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.
12/912,416 10/26/2010 Keith W. Holt 10-0097 2007
144016 7590 02/15/2017
SheriHan Rnsis; P P
EXAMINER
1560 Broadway, Suite 1200
Denver, CO 80202
TALUKDAR, ARVIND
ART UNIT PAPER NUMBER
2132
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
e-docket @ sheridanross. com
mreno @ sheridanross. com
mells worth @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH W. HOLT, JOHN G. LOGAN, and KEVIN KIDNEY
Appeal 2015-005852
Application 12/912,4161
Technology Center 2100
Before BRUCE R. WINSOR, HUNG H. BUI, and KEVIN C. TROCK,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—3, 5—10, 12—17, 19, and 20.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.3
1 According to Appellants, the real party in interest is LSI Corporation.
App. Br. 2.
2 Claims 4, 11, and 18 are conditionally allowed if rewritten in independent
form including all limitations of base claims and any intervening claims.
Final Act. 3.
3 Our Decision refers to Appellants’ Appeal Brief filed November 10, 2014
(“App. Br.”); Reply Brief filed May 20, 2015 (“Reply Br.”); Examiner’s
Answer mailed March 20, 2015 (“Ans.”); Final Office Action mailed
December 17, 2013 (“Final Act.”); and original Specification filed October
26, 2010 (“Spec.”).
Appeal 2015-005852
Application 12/912,416
STATEMENT OF THE CASE
Appellants’ invention relates to a method for online migration of data
in a storage system comprising a plurality of storage devices. Spec. 11.
Claims 1,8, and 15 are independent. Claim 1 is illustrative of Appellants’
invention, as reproduced below:
1. A method for online migration of data in a storage system
comprising a plurality of storage devices, the method
comprising:
controlling, by operation of a first volume manager, a
volume of the storage system mapped according to a first
mapping structure, wherein the first mapping structure constrains
the volume to a fixed subset of the plurality of storage devices;
defining a second mapping structure based on information
defining the volume;
quiescing processing of host I/O requests directed to the
volume as presently mapped according to the first mapping
structure;
transitioning control of the volume from the first volume
manager to a second volume manager;
commencing processing of the host I/O requests directed
to the volume wherein the volume is mapped according to the
second mapping structure; and
migrating, by operation of the second volume manager,
data of the volume to any of the plurality of storage devices,
wherein the migration is performed without interrupting
processing of host I/O requests directed to the volume.
App. Br. 11 (Claims App.).
Evidence Considered
Goggin
Korupolu
White
US 2012/0042034 A1
US 2009/0228589 A1
US 2007/0266383 A1
Feb. 16, 2012
Sept. 10, 2009
Nov. 15, 2007
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Appeal 2015-005852
Application 12/912,416
Declaration from inventor Kevin Kidney filed under 37 C.F.R.
§ 1.131 with accompanying exhibits A—J (“Kidney Declaration”) filed on
September 23, 2013.
Declaration from counsel Gregory T. Fettig filed under 37 C.F.R.
§ 1.131 with accompanying exhibits A—J (“Fettig Declaration”) filed March
6, 2013.
Examiner’s Rejections
(1) Claims 1, 5—8, 12—15, 19, and 20 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Goggin. Final Act. 4—6.
(2) Claims 2, 9, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goggin and Korupolu. Final Act. 7—8.
(3) Claims 3,10, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goggin and White. Final Act. 8—9.
Issue on Appeal
Based on Appellants’ arguments, the dispositive issue on appeal is
whether Appellants’ Declarations under 37 C.F.R. § 1.131 are sufficient to
swear behind Goggin. App. Br. 6—10; Reply Br. 2—6.
ANALYSIS
35 U.S.C. § 102(e): Claims 1, 5—8, 12—15, and 19—20 based on Goggin
Goggin has an effective filing date of August 13, 2010, two (2)
months earlier than Appellants’ pre-AIA filing date of October 26, 2010 and,
as such, qualifies as a prior art under 35 U.S.C. § 102(e) against Appellants’
invention.
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Application 12/912,416
The Examiner finds Goggin teaches “a method for online migration of
data in a storage system comprising a plurality of storage devices” equipped
with all limitations of claims 1, 5—8, 12—15, 19, and 20. Final Act. 4—6.
Appellants file (1) a counsel Declaration (Gregory Fettig) under
37 C.F.R. § 1.131 with accompanying exhibits (Exhibits A—F) on March 15,
2013; and (2) an inventor Declaration (Kevin Kidney) under 37 C.F.R.
§ 1.131 with the same accompanying exhibits (Exhibits A—F) on September
23, 2013, in an effort to swear behind Goggin and remove Goggin as a prior
art reference. App. Br. 6—10; Reply Br. 2—6.
Rule 131 Declaration
Appellants contend Declarations under 37 C.F.R. § 1.131 from one of
the three name inventors, Mr. Kevin Kidney, and Appellants’ counsel, Mr.
Gregory Fettig, and accompanying exhibits (Exhibits A—G) are sufficient to
swear behind Goggin and remove Goggin as a prior art reference. App. Br.
6—10; Reply Br. 2—6.
Inventor Declaration under 37 C.F.R. § 1.131 relied upon by
Appellants to swear behind Goggin states, in part:
1. This declaration is made by Kevin Kidney, an inventor of
the subject matter disclosed and claimed in U.S. Patent
Application 12/912,416 (filed Oct. 26, 2010 and entitled
“Methods And Structure For Online Migration Of Data In
Storage Systems Comprising A Plurality Of Storage Devices”),
to establish completion of an invention in the United States at a
date prior to Aug. 13, 2010, the earliest effective filing date of
U.S. Pre-Grant Publication Number 2012/0042034 (published
Feb. 16, 2011; “Goggin”).
2. Prior to the effective filing date of Goggin, we, the
inventors of the present patent application, conceived of the
invention embodied in U.S. Patent Application Number
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Appeal 2015-005852
Application 12/912,416
12/912,416. Evidence of the prior conception is shown in a
detailed document entitled “Method for non-disruptive migration
between RAID volume managers” (Exhibit A). This document
was received and docketed by this firm on June 16,2010 (Exhibit
B).
3.5 The evidentiary showing herein is sufficient to document
that the inventors had fully conceived of the invention at least as
early as June 16, 2010 (hereafter the “earlier conception date”).
The earlier conception date predates the § 102(e) date of Goggin,
the priority date of which is August 13, 2010.
4. Diligence in pursuing the patenting of this invention between
the earlier conception date of June 16, 2010 and the filing date of
the patent application on October 26, 2010 is illustrated in
Exhibits C - L. In particular, after the invention disclosure was
docketed with outside counsel of the firm, Duft Bomsen & Fettig
LLP (formerly Duft Bomsen & Fishman LLP, hereinafter the
“firm”), the application was assigned to Devin Looijen by Mr.
Daniel Fishman, an attorney with the firm. Mr. Looijen contacted
us to discuss the invention in greater detail on Aug. 30, 2010
(Exhibit C). After reviews and revisions by Mr. Fishman and Mr.
Looijen, Mr. Fishman sent us a first draft of the patent
application prepared by Mr. Looijen for review by us on Sept.
24, 2010 (Exhibit D). Mr. Looijen stayed in continuous contact
with us during that time for reviews and revisions of the draft
patent application (Exhibits E - H) resulting in a final draft of the
patent application on Oct. 18, 2010 (Exhibit I). Attempts to
obtain signature documents associated with the filing (e.g.,
assignments and declarations) were made up until the time of
filing (Exhibits J - K). The signature documents were sent to the
firm on Oct. 22, 2010 (Exhibit L) and the Application was filed
on Oct. 26, 2010.
Kidney Decl. 1—4.
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Application 12/912,416
Counsel Declaration under 37 C.F.R. § 1.131 relied upon by
Appellants to swear behind Goggin also contains similar provisions. See
Fettig Decl. Tflf 2-A.
Appellants contend, based on Rule 131 Declarations, that (1) evidence
of conception can be found in the original invention disclosure (Exhibit A)
submitted on June 16, 2010, where “each of the claim elements is supported
in Exhibit A at section 7, page 3 via elements 528—544, 548, 552, 556, and
572” and “a detailed description of the invention with drawings [is provided]
on pages 6—11 of Exhibit A”; and (2) due diligence can be demonstrated, via
communications between counsel and the inventors up until the date of filing
shown in Exhibits C—L. App. Br. 6—7. In addition, Appellants acknowledge
there are three inventors listed in the application, including Kevin Kidney,
Keith Holt, and John Logan, but argue the 131 Declaration signed by Mr.
Kevin Kidney alone complies with 37 C.F.R. § 1.46 and § 1.47 because: (1)
“Mr. Holt and Mr. Logan are no longer employed by the Appellant, LSI
Corporation,” (2) “Appellant’s attorney attempted to contact Mr. Holt and
Mr. Logan with no tangible results,” and (3) “their last known addresses
were provided” along with the Petition under 37 C.F.R. § 1.47. App. Br. 8—
9.
In response, the Examiner does not address the counsel Declaration
under 37 C.F.R. § 1.131. Instead, the Examiner takes the position that the
inventor Declaration under 37 C.F.R. § 1.131 is insufficient because: (l)the
131 Declaration is signed only by Mr. Kevin Kidney, and not Mr. Holt and
Mr. Logan, (2) “proof that the nonsigning inventor is unavailable or cannot
be found (similar to the proof required for a petition under pre-AIA 37 CFR
1.47) must be submitted with the petition under 37 CFR 1.183” but “no
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Application 12/912,416
evidence of such a submission has been presented.” Ans. 3^4 (emphasis
omitted). In addition, the Examiner responds that the inventor Declaration
does not show (3) “conception” because “there is no evidence that the email
in Exhibit B in fact contains all the materials of Exhibit A” and, likewise,
does not show (4) “due diligence” because the critical time period to
establish diligence is from Goggin’s filing date of August 13, 2010, to
Appellants’ filing date of October 26, 2010, and Appellants have not shown
diligence relative to several time gaps between emails shown in Exhibits C—
L, i.e., “the period from August 13—August 30 (16—17 days) and August 30-
September 24 (25—26 days), September 24—October 4 (10—11 days) and
October 4—October 11 (7 days—8 days) and October 21 to October 26 (5—6
days).” Ans. 4—5 (emphasis omitted).
We disagree with the Examiner. At the outset, we note that assessing
the sufficiency of a Rule 131 affidavit or declaration is within the
jurisdiction of the Board because it affects a rejection of the claims. See In
re DeBaun, 687 F.2d 459 (CCPA 1982) (reviewing Board decision
involving Rule 131 declaration). 37 C.F.R. § 1.131 (Pre-AIA) provides, in
pertinent part:
(a) When any claim of an application or a patent under
reexamination is rejected, [1] the inventor of the subject matter
of the rejected claim, [2] the owner of the patent under
reexamination, or [3] 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 for an oath or declaration under
paragraph (a) of this section shall be such, in character and
weight, as to establish reduction to practice prior to the effective
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Application 12/912,416
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 C.F.R. § 1.131 (emphasis added) (bracketing added).
Further, MPEP provides the following guidance regarding the
requirements of Rule 131:
The essential thing to be shown under 37 CFR 1.131 (a) is priority
of invention and this may be done by any satisfactory evidence
of the fact. FACTS, not conclusions, must be alleged. . . .
A general allegation that the invention was completed prior to
the date of the reference is not sufficient. Similarly, a declaration
by the inventor to the effect that his or her invention was
conceived or reduced to practice prior to the reference date,
without a statement of facts demonstrating the correctness of this
conclusion, is insufficient to satisfy 37 CFR 1.131(a).
MPEP § 715.07 [R-l 1.2013],
Based on our review of the evidence, we find Rule 131 Declarations
and the accompanying exhibits (Exhibits A—G) are sufficient to establish a
date of invention prior to the effective date of Goggin.
First, we note that (1) 37 C.F.R. § 1.47 (pre-AIA) governs the
situation when an inventor refuses to sign or cannot be reached to sign a
Declaration required for filing a new application in the PTO, and (2)
37 C.F.R. § 1.183 governs the suspension of rules in an extraordinary
situation. However, neither § 1.47 nor § 1.183 is required to antedate a prior
art reference under Rule 131. In particular, Rule 131 does not require all the
inventors to sign the Declaration in order to antedate a prior art reference.
Instead, Rule 131(a) permits [1] the inventor, [2] the owner of the patent
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Application 12/912,416
under reexamination, or [3] the party qualified under §§ 1.42, 1.43, or 1.47
(i.e., legal representative or assignee) to sign the Declaration. As such, we
find both Declarations under 37 C.F.R. § 1.131 from Mr. Kidney and Mr.
Fettig are executed properly.
Second, we find the inventor Declaration under 37 C.F.R. § 1.131 and
accompanying exhibits (Exhibits A—G) are sufficient to establish a date of
conception at least as of June 16, 2010 in the United States as per MPEP
§ 715.07(c). Kidney Decl. 2—3.5. For example, as recognized by
Appellants, “Exhibit B evidences the existence of Exhibit A because Exhibit
B lists the attached documents in that email, including the invention
disclosure of Exhibit A” and “[t]he email of Exhibit B was received by the
Applicant’s attorneys of record on June 16, 2010.” Reply Br. 3. In addition,
both the inventor, Mr. Kidney, and Appellants’ counsel, Mr. Fettig, testify
that (1) evidence of prior conception of each of Appellants’ claim elements
is shown in Exhibit A, and (2) Exhibit A was received on June 16, 2010, as
shown in Exhibit B. Id.
Third, we also find the inventor Declaration under 37 C.F.R. § 1.131
and accompanying exhibits (Exhibits A—G) are sufficient to establish due
diligence. Kidney Decl. 14. Evidence of diligence, to be persuasive, must
show reasonable diligence throughout the entire critical period. Monsanto
Co. v. Mycogen Plant Sci. Inc., 261 F.3d 1356, 1369 (Fed. Circ. 2001)
(citing Fitzgerald v. Arbib, 268 F.2d 763, 766 (CCPA 1959)). An inventor’s
testimony regarding his reasonable diligence must be corroborated by
evidence. Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006).
“However, there need not necessarily be evidence of activity on every single
day if a satisfactory explanation is evidenced.” Id. Instead, Appellants must
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Application 12/912,416
give a clear explanation of the exhibits pointing out exactly what facts are
established and relied on by Appellants. In re Borkowski, 505 F.2d 713,
718-19 (CCPA 1974).
In this appeal, as recognized by the Examiner, there are several time
gaps between emails shown in Exhibits C—L, i.e., “the period from August
13—August 30 (16—17 days) and August 30-September 24 (25—26 days),
September 24—October 4 (10-11 days) and October 4—October 11 (7 days—8
days) and October 21 to October 26 (5—6 days).” Ans. 5. However, these
time gaps between Appellants and counsel must be evaluated under a rule of
reason. See Price v. Symsek, 988 F.2d 1187, 1195 (Fed. Cir. 1993)
(explaining that under a rule of reason analysis, “[a]n evaluation of all
pertinent evidence must be made so that a sound determination of the
credibility of the inventor’s story may be reached”). Under a rule of reason
analysis, Appellants are not required to account for every day the application
was worked on. The focus of the diligence analysis is not to scour evidence
in search of intervals of time where Appellants have failed to substantiate
some sort of activity; but rather, to assess the evidence as a whole that “the
invention was not abandoned or unreasonably delayed.” Brown, 436 F.3d at
1379. The absence of evidence that an inventor and his attorney revised or
discussed the application on a daily or weekly basis is alone insufficient to
conclude that the invention was abandoned or unreasonably delayed.
Based on our review of the record, we find these time gaps between
Appellants and counsel are not unreasonable within the context of
Appellants’ submission of an initial invention disclosure and Appellants’
attorneys working to prepare an original patent application for filing in the
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Application 12/912,416
PTO based on the initial invention disclosure submitted by an inventor. For
example, as explained by Appellants,
The longest gap of time of alleged inactivity cited by the
Examiner during the critical period of diligence is 25 to 26 days,
existing from August 30 (e.g., Exhibit C) to September 24 (e.g.,
Exhibit D). During that time, Mr. Looijen contacted the
inventors to discuss the invention. He also completed a first draft
of the patent application for their review . . . because it is
common for the patent application drafting process to take time,
otherwise the application would not be diligently prepared. . . .
Highly technical inventions such as this one take longer to
understand. Writing them takes even longer. Having partners as
well as inventors review them for quality takes even longer. Less
than 6 weeks to prepare this application is reasonable and the
Applicant has adequately explained any absences in explicit
evidence of diligence during the critical period. . . .
. . . Reasonable patent attorneys learn about an invention
in detail before they intrude on an inventor’s time. Reasonable
patent attorneys try to prepare a patent application without using
too much of an inventor’s time during the initial drafting process.
Reasonable patent attorneys do not continually send sketches,
blueprints, photographs, notebook entries, etc. to inventors nor
do they continually ask for such from inventors. Typical patent
attorneys work on several matters at once and there is no way to
account for every day of effort in this process.
Reply Br. 4—6.
Similarly, the gap between Exhibit D and Exhibit F is about 2 weeks,
a typical time frame for all three inventors, Kevin Kidney, Keith Holt, and
John Logan, to review the draft application prepared by counsel and provide
necessary comments to be incorporated into the final application for review
and filing in the PTO, shown in Exhibit I.
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Based on this record, we find Rule 131 Declarations and the
accompanying exhibits (Exhibits A—J) are sufficient to remove Goggin as a
prior art reference. According, we do not sustain the anticipation rejection
of claims 1, 5—8, 12—15, 19, and 20 and the obviousness rejection of claims
2, 3, 9, 10, 16, and 17 based on Goggin.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting: (1) claims 1, 5—8, 12—15, 19, and 20 under
35 U.S.C. § 102(e) as being anticipated by Goggin; (2) claims 2, 9, and 16
under 35 U.S.C. § 103(a) as being unpatentable over Goggin and Korupolu;
and (3) claims 3, 10, and 17 under 35 U.S.C. § 103(a) as being unpatentable
over Goggin and White.
DECISION
As such, we REVERSE the Examiner’s Final Rejection of claims 1—3,
5-10, 12-17, 19, and 20.
REVERSED
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