Ex Parte Jones

Board of Patent Appeals and Interferences

Sep 25, 2003

08852119 (B.P.A.I. Sep. 25, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARTIN KELLY JONES
____________
Appeal No. 2000-0872
Application No. 08/852,119
____________
ON BRIEF
____________
Before THOMAS, BARRETT, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 21 and 23 through 49, which are all
of the claims pending in this application.
Appellant's invention relates to a method for notifying a
user in advance of an impending arrival of a vehicle at a vehicle
stop. Claim 1 is illustrative of the claimed invention, and it
reads as follows:
1. A method for notifying a user in advance of an
impending arrival of a vehicle at a vehicle stop, comprising the
steps of:
monitoring travel of said vehicle;
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Application No. 08/852,119
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forwarding travel data to a computer associated with said
user; and
producing a message at said computer for said user
indicative of an impending arrival of said vehicle at said
vehicle stop before said vehicle reaches said vehicle stop, based
upon said travel data.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ross (Ross I) 5,444,444 Aug. 22, 1995
(effectively filed May 14, 1993)
Ross (Ross II) 5,648,770 Jul. 15, 1997
(effectively filed May 14, 1993)
Claims 1 through 21, 23 through 35, 37 through 41, 43
through 47, and 49 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Ross I or Ross II.
Claims 36, 42, and 48 stand rejected under 35 U.S.C. § 103
as being unpatentable over Ross I or alternatively Ross II.
Reference is made to the Examiner's Answer (Paper No. 30,
mailed October 29, 1999) for the examiner's complete reasoning in
support of the rejections, and to appellant's Brief (Paper
No. 29, filed September 27, 1999) and Reply Brief (Paper No. 31,
filed December 6, 1999) for appellant's arguments thereagainst.
OPINION
We have carefully considered the claims, the applied prior
art references, and the respective positions articulated by
Appeal No. 2000-0872
Application No. 08/852,119
3
appellant and the examiner. As a consequence of our review, we
will reverse the anticipation rejections of claims 1 through 21,
23 through 35, 37 through 41, 43 through 47, and 49, and the
obviousness rejections of claims 36, 42, and 48.
Appellant relies on affidavits under 37 C.F.R. § 1.131 and
1.132 to overcoming the rejections under 35 U.S.C. §§ 102 and
103. In a Remand to the examiner dated March 26, 2001 (Paper
No. 33), we asked the examiner to determine whether or not
appellant and Ross, the patentee of both patents used in the
rejections, are claiming the same patentable invention, as
defined in 37 C.F.R. § 1.601(n). The examiner complied, stating
in the Response to Remand dated September 11, 2003 (Paper No. 40)
that appellant and Ross are not claiming the same patentable
invention. Thus, no interference exists. Further, the examiner
determined that the patents were filed less than one year prior
to the earliest date to which the claimed subject matter is
entitled. Accordingly, there is no bar under 35 U.S.C. § 102(b).
The examiner admitted, therefore, that appellant can swear back
of the patents via an affidavit under 37 C.F.R. § 1.131.
Appellant filed a Rule 131 Affidavit on July 19, 1999. The
examiner (Answer, page 14) recognizes that 37 C.F.R. § 1.131
requires that "[o]riginal exhibits of drawings or records, or
Appeal No. 2000-0872
Application No. 08/852,119
4
photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence satisfactorily
explained," but contends (Answer, page 15) that appellant has
failed the requisite evidence. We disagree.
Appellant's affidavit asserts conception prior to May 14,
1993, the effective filing date of the Ross patents, followed by
due diligence to May 18, 1993, the filing date of the
application. Appellant supplies, as Exhibit B, a declaration
from Mr. Horstemeyer, his attorney, explaining the work done and
the dates thereof for preparing the patent application. Exhibit
C is a record of Mr. Horstemeyer's billing for the work done for
appellant. The billing record indicates that revisions were made
May 5th, 7th, 10th, and 11th of 1993. Exhibit D, a letter from
Mr. Horstemeyer to appellant, states that the final draft of the
application was mailed to appellant for signature on May 12,
1993. The billing records show no further amendments after
May 12, 1993, thereby establishing conception prior to May 14,
1993. Mr. Horstemeyer indicates in the Declaration that May 15th
and 16th were a Saturday and Sunday, respectively. The records
show that he billed for reviewing the formality documents and
formal drawings of the application on May 17, 1993, and then he
filed the application on May 18, 1993. We find these records to
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Application No. 08/852,119
5
be sufficient evidence of conception prior to May 14, 1993 and
due diligence up to the filing of the application on May 18,
1993. Accordingly, we must reverse the rejections under
35 U.S.C. §§ 102(e) and 103, as the Ross patents no longer
qualify as prior art against appellant.
CONCLUSION
The decision of the examiner rejecting claims 1 through 21,
23 through 35, 37 through 41, 43 through 47, and 49 under
35 U.S.C. § 102(e) and claims 36, 42, and 48 under 35 U.S.C.
§ 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
APG:clm
Appeal No. 2000-0872
Application No. 08/852,119
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SCOTT A HORSTEMEYER
THOMAS KAYDEN
HORSTEMEYER & RISLEY
100 GALLERIA PARKWAY NW
SUITE 1500
ATLANTA, GA 30339