Ex Parte Hua et al

Patent Trial and Appeal Board

Mar 14, 2016

12220218 (P.T.A.B. Mar. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/220,218 07/22/2008
45209 7590 03/16/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
Fay Hua
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.
42Pl3855D 6300
EXAMINER
REAMES, MATTHEW L
ART UNIT PAPER NUMBER
2893
NOTIFICATION DATE DELIVERY MODE
03/16/2016 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):
inteldocs _ docketing@cpaglobal.com
Database_ Group@bstz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FAY HUA, CARLL. DEPPISCH, and
KRISTA J. WHITTENBURG
Appeal2014-001301
Application 12/220,218
Technology Center 2800
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF CASE
Appellants2 appeal the Examiner's decision to reject claims 1-3 and
5-9 under 35 U.S.C. § 102(e) as anticipated by Sreeram,3 and claim 4 under
35 U.S.C. § 103(a) as obvious over Sreeram. We have jurisdiction under
35 U.S.C. §§ 6(b) and 134(a).
We AFFIRM.
1 In our opinion below, we refer to the Appeal Brief filed July 8, 2013
(Appeal Br.), the Examiner's Answer mailed September 5, 2013 (Ans.), and
the Reply Brief filed November 5, 2013 (Reply Br.).
2 Appellants identify the real party of interest as Intel Corporation. Appeal
Br. 3.
3 US 2002/0175403 Al published Nov. 28, 2002.
Appeal2014-001301
Application 12/220,218
OPINION
The specifics of the invention are not at issue in this case. Instead, the
issue is whether Appellants have successfully established invention of the
claimed subject matter before the effective filing date of Sreeram. Appeal
Br. 5-6.
In order to establish an earlier date, Appellants rely upon two
declarations under 3 7 C.F .R. § 1.131, the Hua Declaration and the Deppisch
Declaration, 4 along with Exhibits A---C submitted with the declarations.
Appeal Br. 5---6.
The Examiner responds that the showing is deficient for a number of
reasons. Ans. 3---6. One of the reasons, which the Examiner raised for the
first time in the Answer, is because only two of the three inventors have
supplied Declarations. Ans. 3. According to the Manual of Patent
Examining and Procedure, affidavits or declarations must be made by all of
the inventors. 5 MPEP § 715.04 (8th ed., rev. 8, July 2010).
Appellants acknowledge that Hua and Deppisch are only two of the
three inventors, and that there is no declaration from inventor Krista
Whittenburg. Reply Br. 7. Appellants do not argue against the requirement
that all inventors make declarations. Id. Instead, Appellants ask that if we
reach a decision reversing the Examiner's decision on other grounds, we
4 The Hua and Deppisch Declarations filed on April 6, 2011. See also
Appeal Br., Appendix B.
5 In some situations, and with the correct showing or petition, fewer than all
the inventors or another interested party can make the declaration, but there
is no evidence that Appellants have met the requirements for those
situations. See MPEP § 715.04; see also In re Carlson, 79 F.2d 900 (CCPA
1935); Ex parte Foster, 1903 C.D. 213, 105 O.G. 261.
2
Appeal2014-001301
Application 12/220,218
remand the application to the Examiner to afford Appellants the opportunity
to locate Krista Whittenburg. Id.
As there is an undisputed defect in the showing relied upon by
Appellants, we cannot say that Appellants have met their burden in
establishing prior invention. Because Sreeram remains prior art, we sustain
the Examiner's rejections over Sreeram. We do not reach any of the other
issues raised. 6
DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
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).
AFFIRivIED
6 It is recommended that the Examiner consult an Interference Practice
Specialist regarding the issue of whether Sreeram is claiming the same
patentable invention so that a decision can be made on whether to declare
an interference proceeding. See MPEP § 2302 (9th ed. Rev. 07.2015 Nov.
2015). The Sreeram application issued as U.S. Patent 6,653,741 on
November 25, 2003.
3