Ex Parte Locker et al

Patent Trial and Appeal Board

Dec 30, 2016

12198979 (P.T.A.B. Dec. 30, 2016)

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.
12/198,979 08/27/2008 Howard Jeffrey Locker RPS920080063-U S-NP 5099
63203 7590 01/04/2017
ROrTTT7 fr ASSOPTATRS
EXAMINER
750 B STREET DUNN, DARRIN D
SUITE 3120
SAN DIEGO, CA 92101 ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
01/04/2017 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):
Noelle@rogitz.com
eofficeaction @ appcoll.com
John@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD JEFFREY LOCKER,
DAVID CARROLL CHALLENER, JUSTIN TYLER DUBS,
STEVEN RICHARD PERRIN, MICHAEL TERRELL VANOVER,
and JENNIFER GREENWOOD ZAWACKI1
Appeal 2015-004576
Application 12/198,979
Technology Center 2100
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 8—10, 12, 16—19, 24—26, and 32—37. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Lenovo Singapore PTE, Ltd., as the real party in
interest. App. Br. 2.
Appeal 2015-004576
Application 12/198,979
REJECTIONS
The Examiner rejects claims 1,2, 8, and 21 under 35 U.S.C. § 103(a)
as being unpatentable over Scott et al. (US 2010/0023788 Al; Jan. 28,
2010), Hodges et al. (US 2009/0135751 Al; May 28, 2009), and Jinmei et
al. (US 2008/0126796 Al; May 29, 2008). Final Act. (Oct. 9, 2014) 5-9.
The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, Hodges, Jinmei, and Ogawa et al.
(US 2006/0117100 Al; June 1, 2006). Final Act. 9-10.
The Examiner rejects claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, Hodges, Jinmei, and Loughran et al.
(US 2006/0174108; Aug. 3, 2006). Final Act. 10-11, 22-23.
The Examiner rejects claims 10, 16, 18, and 24—26 under
35 U.S.C. § 103(a) as being unpatentable over Scott, Hodges, Jinmei, and
LeProwse et al. (US 2008/0244289 Al; Oct. 2, 2008). Final Act. 11—22.
The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, Hodges, Jinmei, LeProwse, and Loughran. Final
Act. 22-23.
The Examiner rejects claims 12 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Scott, Hodges, Jinmei, LeProwse, and Ogawa.
Final Act. 23-24, 26-27.
The Examiner rejects claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, Hodges, Jinmei, LeProwse, Ogawa, and Loughran.
Final Act. 25—26.
The Examiner rejects claims 27—29 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, Hodges, Jinmei, and Bishop et al. (US 4,823,256;
Apr. 18, 1989). Final Act. 27—28.
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Appeal 2015-004576
Application 12/198,979
The Examiner rejects claim 30 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, Hodges, Jinmei, LeProwse, Amaranten (currently
available at https://infosecworld.wordpress.com/2012/06/21/ipsec-vpn-
basics/), Anand et al. (US 2002/0191793 Al; Dec. 19, 2002), and Sikdar et
al. (US 2007/0022479 Al; Jan. 25, 2007). Final Act. 28-30.
The Examiner rejects claim 31 under 35 U.S.C. § 103(a) as being
unpatentable over Scott, Hodges, Jinmei, LeProwse, and Ogishi et al.
(US 6,178,450 Bl; Jan. 23, 2001). Final Act. 30-31.
DISPOSITIVE ISSUE
Did the Examiner err in finding the evidence submitted by Appellants
is of insufficient weight and character to establish reasonable diligence
during the critical period antedating Scott?
PRINCIPLES OF LAW
An applicant may overcome a prior art rejection by filing a
declaration under 37. C.F.R. § 1.131 to antedate the applied reference.
37 C.F.R. § 1.131(a) in pertinent part is reproduced below:
When any claim of an application ... is rejected, the [inventor]
of the subject matter of the rejected claim[, . . ., 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 ... on which the rejection is based.
In accordance with 37 C.F.R. § 1.131(b), to establish prior invention of the
subject matter of the rejected claims:
[t]he 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
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Application 12/198,979
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.
An applicant must account for the entire period during which
diligence is required by either affirmative acts or sufficient excuse for
inactivity. Gould v. Schawlow, 363 F.2d 908, 918 (CCPA 1966); Hull v.
Davenport, 90 F.2d 103, 105 (CCPA 1937); Griffith v. Kanamaru,
816 F.2d 624, 626 (Fed. Cir. 1987). Although constant effort is not
required, there must be some record evidence to explain the delay. In re
Nelson, 420 F.2d 1079, 1081 (CCPA 1970). The fact-finder need not
speculate as to the reason for delay. Id.
ANALYSIS
Appellants do not challenge the merits of the prior art rejections, but
instead seeks to antedate the Scott reference cited in support of each
rejection. App. Br. 4 et seq. In doing so, Appellants seek to show
reasonable diligence in reducing the invention to practice for the duration
spanning Scott’s prior art date of July 28, 2008 to the present application’s
filing date of August 27, 2008. Id. There is no dispute with respect to
conception. Ans. 3 (“The Examiner stipulates that Appellant has
conditionally satisfied the conception requirement[.]”).
The Examiner finds the evidence submitted by Appellants is of
insufficient weight and character to establish diligence for two durations
demarcated by outside counsel’s receipt of the invention disclosure on
August 11, 2008: (i) Lenovo’s disclosure queue review of the invention
(e.g., of the invention submission form) from July 28, 2008 to
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Application 12/198,979
August 11, 2008; and (ii) outside counsel’s drafting of the application and
Lenovo’s ensuing review thereof.2 Ans. 5—8. For the reasons below, we
agree that Lenovo fails to show reasonable diligence for the duration of
July 28, 2008, to August 11, 2008, i.e., for the disclosure queue review. We
do not address the second duration.3
With respect to the duration of July 28, 2008, to August 11, 2008,
Appellants merely filed, under 37 C.F.R. § 1.131, a declaration of a Lenovo
in-house patent agent (herein “Munoz-Bustamante Declaration” or “Munoz-
Bustamante Decl.”) that: (1) claims Lenovo receives hundreds of invention
disclosures each year; (2) provides a general outline of Lenovo’s invention
disclosure review process; and (3) notes that Lenovo “sent a disclosure of
the subject invention to outside counsel on August 11, 2008, about seven
weeks after the original disclosure was submitted by the inventors” and with
details as to the drafting and review timeline between August 11, 2008, and
August 27, 2008. Munoz-Bustamante Decl. 2-4. The Examiner correctly
finds that the Munoz-Bustamante Declaration fails to address adequately
activity or excuse for inactivity with respect to the present invention—i.e., to
show diligence with particularity to the invention—during the disclosure
queue review. Ans. 7. Lenovo argues that proof of diligence does not
require proof of constantly working towards an invention’s reduction to
2 The Examiner’s comments imply that Lenovo must show diligence from
the invention’s conception date to the application’s filing date. Ans. 6. To
antedate prior art, Lenovo must rather show diligence from the given prior
art date to the application’s filing date. See, e.g., Nelson, 420 F.2d at 1081.
3 We also do not address presented issues of whether the inventors’
submitted declaration is insufficient for lacking an inventor signature
(Steven R. Perrin) and correct identification of the presently pending claims.
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Application 12/198,979
practice. App. Br. 6—8. Lenovo further argues that their in-house patent
attorney s/agents must, per Lenovo’s normal course of business, review an
invention and prepare instructions to outside counsel during the disclosure
queue review. Id. at 7.
We recognize that, in a large company, inventors and in-house patent
attorney s/agents intermittently work on various inventions over an extended
period of time. We also recognize that constant effort is not required to
establish reasonable diligence. Nelson, 420 F.2d at 1081. However, the
entire critical period must be accounted for by affirmative acts and excuse
for inactivity; each showing diligence with respect to the at-issue invention.
Id.', see also Gould, 363 F.2d at 918; Hull, 90 F.2d at 105; Griffith,
816 F.2d at 626. The Munoz-Bustamante Declaration does not evidence any
such activities or excuse for the critical period of July 28, 2008, to August
11, 2008. The Munoz-Bustamante Declaration at best asserts that, for this
duration, the invention’ disclosure queue review was “disposed] ... in the
due course of work” (Munoz-Bustamante Decl.]f 3) and in-house patent
attomeys/agents “were diligent every day in the normal course of Lenovo
business” (id. at 14). Though it may be true that Lenovo’s in-house patent
attomeys/agents are diligent employees, general business activity and
resulting speculation of activity for a particular invention are not persuasive
evidence of diligence. Nelson, 420 F.2d at 1081; see also In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (Mere argument of counsel cannot take
the place of evidence lacking in the record.). Lenovo must present details of
diligence for the present invention, but failed to do so. See e.g., Bey v.
Kollonitsch, 806 F.2d 1024, 1027—28 (Fed. Cir. 1986) (“[The] records did
not show the exact days when activity specific to this application
occurred. . . . [T]he attorney has the burden of keeping good records of the
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Application 12/198,979
dates when cases are docketed as well as the dates when specific work is
done on the applications.”), cited by App. Br. 7. For instance, the Munoz-
Bustamante Declaration fails to provide the number of other disclosures
pending during the critical period and any details describing the timing and
tasks involved in Lenovo’s decision making process. Moreover, by the
Munoz-Bustamante Declaration’s own admission, the Lenovo invention
review process is monthly. Munoz-Bustamante Deck 13. Yet, Appellants
submitted an invention disclosure on June 16, 2008 (Locker Deck 11)—
more than seven weeks before a disclosure was sent to outside counsel
(Munoz-Bustamante Deck 14). That is, the two-week delay between
July 28, 2008, and August 11, 2008, is particularly unaccountable given the
frequency with which Lenovo reviews invention disclosures and given the
date on which the invention disclosure was submitted.
For the reasons above, the Examiner correctly determined that the
evidence submitted by Lenovo is of insufficient weight and character.
Accordingly, the rejections of claims 1, 2, 4, 8—10, 12, 16—19, 24—26, and
32—37 under 35 U.S.C. § 103(a) as unpatentable over Scott (in combinations
with other references) are sustained.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 4, 8—10, 12,
16-19, 24—26, and 32—37.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
See 37 C.F.R. § 41.50(f).
AFFIRMED
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