Ex Parte Jennings

Board of Patent Appeals and Interferences

Mar 9, 2007

09696458 (B.P.A.I. Mar. 9, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DOUGLAS M. JENNINGS
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Appeal No. 2007-0064
Application No. 09/696,458
Technology Center 3600
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ON BRIEF
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Decided: *
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Before, TERRY J. OWENS, MURRIEL E. CRAWFORD, and STUART S. LEVY
Administrative Patent Judges.
TERRY J. OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The appellant appeals from a rejection of claims 26-44 and 52-61, which are
all of the pending claims.

Appeal Number: 2007-0064
Application Number: 09/696,458
THE INVENTION
The appellant claims a vehicle dashboard bezel and a method for using it to
add an instrument to a vehicle. Claim 33 is illustrative:
33. An after-market dashboard bezel, comprising:
a body configured to be mounted in a bezel mounting space defined
between a dashboard housing and an instrument cluster assembly of a vehicle;
and
an instrument mount secured to said body.

THE REFERENCE
Auto Meter Gauge Works flyer, “New for ‘99” (Auto Meter Products, Inc.,
undated).

THE REJECTION
Claims 26-44 and 52-61 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by the Auto Meter flyer.
OPINION
We reverse the aforementioned rejection.
35 U.S.C. § 102 states, in relevant part:
A person shall be entitled to a patent unless –
(a) the invention was … patented or described in a printed publication
in this or a foreign country, before the invention thereof by the applicant for
patent….

The appellant argues that the examiner has not established that the Auto
Meter flyer met the requirements of a printed publication prior to the appellant’s
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Appeal Number: 2007-0064
Application Number: 09/696,458
invention on or before May 26, 2000 (brief, pages 8-10).1 The appellant relies
upon a letter from Thomas F. Bergert, counsel for Gauge Works (named on the
Auto Meter flyer), wherein Mr. Bergert states that “[w]ith regard to the statement
on the flyer, ‘Available in June’, our client believes this statement indicated that
the product was to become available in June, 2000” (reply brief, page 4).
The examiner argues that “the flyer provided by Auto Meter Products is
proper prior art, and was submitted in good faith, in response to a proper query by
the Examiner” (answer, page 6). The examiner has not provided evidence that the
Auto Meter flyer was submitted in good faith. The examiner argues that the
examiner’s query to Auto Meter Products to obtain the flyer was proper under
37 CFR § 1.105(a)(1)(i)-(vii) (answer, page 6). As correctly pointed out by the
appellant (reply brief, page 3), that rule authorizes the examiner to require
submission of information from individuals identified under § 1.56(c) or any
assignee. The examiner has not identified the person contacted at Auto Meter
Products to obtain the flyer, let alone establish that the person is identified under
§ 1.56(c) or is an assignee and, therefore, has a duty of candor to the Patent and
Trademark Office.

1 The invention date is based upon a Rule 131 declaration by Douglas M. Jennings
filed April 21, 2003.
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Appeal Number: 2007-0064
Application Number: 09/696,458
Moreover, to establish that a reference is a printed publication the examiner
must show that the reference Ahas been disseminated or otherwise made available
to the extent that persons interested and ordinarily skilled in the subject matter or
art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d 221, 226,
210 USPQ 790, 794 (CCPA 1981), quoting I.C.E. Corp. v. Armco Steel Corp., 250
F.Supp. 738, 743, 148 USPQ 537, 540 (SD NY 1966). The examiner argues that
“[i]t is clear that the flyer was clearly intended, and utilized, as part of a mass
mailing to their customers since it promoted its booth at the SEMA Convention in
1999 (as indicated at the bottom of the flyer)” (answer, page 6). The bottom of the
flyer states: “Stop by our Booth at SEMA, to see our new products!”. There is no
statement that the SEMA booth was at a 1999 convention. If Mr. Bergert is correct
that “Available in June” on the flyer refers to June 2000, then the SEMA show
referred to at the bottom of the flyer may be a 2000 show. The examiner has not
shown that the Auto Meter flyer was disseminated or otherwise made available to
anyone prior to the appellant’s invention, let alone being made available to the
extent that persons interested and ordinarily skilled in the subject matter or art,
exercising reasonable diligence, can locate it.
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Appeal Number: 2007-0064
Application Number: 09/696,458
The examiner, therefore, has not established that the reference relied upon in
rejecting the appellant’s claims is prior art. Accordingly, we reverse the
examiner’s rejection.
DECISION
The rejection of claims 26-44 and 52-61 under 35 U.S.C. § 102(a) over the
Auto Meter flyer is reversed.
REVERSED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

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Appeal Number: 2007-0064
Application Number: 09/696,458
Paul J. Maginot, Esq.
Maginot, Addison & Moore
Bank One Center/Tower
111 Monument Circle, Suite 3000
Indianapolis, IN 46204-5130

TJO/jrg

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