Ex Parte May

Board of Patent Appeals and Interferences

Apr 30, 2007

10075976 (B.P.A.I. Apr. 30, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte MICHAEL J. MAY
___________

Appeal 2006-1776
Application 10/075,976
Technology Center 3700
___________

Decided: April 30, 2007
___________

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
GARY V. HARKCOM, Vice Chief Administrative Patent Judge, and
MURRIEL E. CRAWFORD, STUART S. LEVY, and ANTON W. FETTING,
Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is a decision on Appellant’s Request for Reconsideration filed
September 14, 2006. We treat the Request for Reconsideration as a request for
rehearing under 37 C.F.R. § 41.52 (2006). The appeal was initially decided by a
3-judge panel consisting of Judges Crawford, Levy and Fetting. The panel entered
a new rejection of independent claims 1 and 8 as being unpatentable under
35 U.S.C. § 103(a) over Lively in view of Acker. See 37 C.F.R. § 41.50(b) (2006).
The request seeks rehearing of the original panel’s decision entering the new
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Application 10/075,976

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rejection. Because of the importance of the sole legal issue raised by the request,
the panel has been expanded to a 5-judge panel. For reasons which follow, we
(1) have considered the request on the merits, but (2) decline to withdraw the new
rejection based on Lively in view of Acker.

ISSUE ON REHEARING
In an opinion in support of the original panel decision, the panel entered a
new rejection, pursuant to 37 C.F.R. § 41.50(b), of the subject matter of
independent claims 1 and 8 under 35 U.S.C. § 103 as obvious over Lively in view
of Acker. Appellant limits the request for rehearing to a single issue: whether
Lively is prior art. According to the Appellant, Lively, a U.S. patent application
published under 35 U.S.C. § 122(b), is not prior art. Appellant reasons that
because both Lively [second Lively application] and its parent application [first
Lively application] were abandoned, the published second Lively application
cannot be afforded its effective filing date for prior art purposes. In particular, the
Appellant contends that
[a]s set forth in the . . . records from USPTO Public PAIR, Lively was
abandoned. The parent case, U.S. Application Serial No. 09/538,612,
relied on by the Board for an effective date, was also abandoned, and
was never published. Therefore, Lively is only available as a reference
as of its publication date of July 11, 2002, which is after Applicant's
filing date. See MPEP 2126.01 and 2127. Lively is not a proper
reference, and should be withdrawn.
(Request for Rehearing 1-2).
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FACTS
The Appellant does not contend that the combination of second Lively
application and Acker, as applied, fails to describe all of the subject matter of the
rejected claims at issue or fails to render the subject matter of claims 1 and 8
unpatentable under 35 U.S.C. § 103(a).
The Appellant does not contend that Acker is not prior art, but only that Acker
alone is insufficient to reject the claims.
The Appellant does not contend the portions of Lively relied upon in the new
rejection are not sufficiently supported by its parent application.
The Appellant does not contend that the claimed invention of Lively is not
sufficiently supported by its parent application.
Lively filed application 09/538,612 on Mar. 29, 2000 (first Lively application).
The Appellant filed the application on appeal (10/075,976) on Feb. 14, 2002.
The application on appeal does not claim the benefit of an earlier filing date
under 35 U.S.C. §§ 119, 120, 121, or 365.
Lively filed continuation-in-part application 10/098,033 on Mar. 14, 2002
(second Lively application), claiming the benefit under 35 U.S.C. § 120 of the first
Lively application.
The first Lively application became abandoned due to a failure to respond to a
final rejection mailed October. 18, 2002. Thus, the two Lively applications were
co-pending.
The second Lively application was published on July 11, 2002, as a U.S. patent
application publication [Document 2002/0090240 A1] under 35 U.S.C.
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§ 122(b). The second Lively application is the U.S. patent application publication
that is applied in the new rejection under 35 U.S.C. § 103 at issue.

The second Lively application became abandoned for failure to respond to an
Office action that was mailed on June 29, 2005.
The portions of the second Lively application cited in support of the new
rejection are fully described in the specification of the first Lively application,
particularly at pp. 22-27. More particularly, the subject matter of the rejected
claims 1 and 8 is described by the first and second Lively applications and Acker
as follows:
A method of producing a personalized package wrapper [See
Lively para. 26 - gift-wrapping paper; 09/538,612 p. 9] that comprises
at least one user submitted image [See Lively para. 53 – user could
scan in the desired graphical image; 09/538,612 p. 25], the method
comprising the steps of:
3/29/00
First
Lively
filed
2/14/02
Appeal
Appl’n
filed
3/14/02
Second
Lively
filed
7/11/02
Second
Lively
published
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displaying the user submitted image in a display area of an
imaging device [See Lively para. 55 – the up-loaded graphical images
56 can be included in the custom-created design; also Fig. 9 image ref
element 56; first Lively application at p.26-27];
providing a window on said image to produce a windowed image,
said window being movable relative to the image, and said windowed
image comprising at least a portion of the image [See Acker col. 7 line
66 to col. 8 line 15 describing an image crop window and Fig. 5
showing the shapes of such windows - the user at 133 selects a crop
shape from the table, and the selected shape is superimposed over the
image at 135 so that the user can move and/or resize the image within
the shape];
displaying a package wrapper image that includes a representation
of at least a portion of a package wrapper which includes the
windowed image thereon; [See Lively para. 44 - Once the Internet
user has selected all of the desired graphical image options 56
(background, text, icons and overall layout of text and icons), the web
site 20 pushes a web page 28e to the screen 32 that displays the entire
custom-created design 150 (step 540); first Lively application, p. 20]
selecting a package wrapper size; and [See Lively para. 50 - under
the printable media type parameter, the following sub-parameters can
be included: printable media type, selected color of the media (paper
color) and the file name for the media format information stored
within the database that is associated with the selected media type. As
an example, the actual media format information could include the
size of block, number of repeated blocks, size of the media and other
format information; first Lively application, p. 23]
performing at least one of a printing of the package wrapper with
the windowed image thereon, a transmitting of the package wrapper
image, and a storing the package wrapper image. [See Lively para. 56
- to produce a final print image for printing on one of the associated
printers 70 at the printing facility 240; first Lively application, p. 15]

Appeal 2006-1776
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PRINCIPLES OF LAW
The applicable statutory law regarding the status of Lively as prior art is
(1) 35 U.S.C. § 103(a) (2004)
A patent may not be obtained though the invention is not identically
disclosed or described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the
invention was made.
and (2) 35 U.S.C. § 102(e) (2004)
(e) the invention was described in - (1) an application for patent,
published under section 122(b), by another filed in the United States
before the invention by the applicant for patent or (2) a patent granted
on an application for patent by another filed in the United States
before the invention by the applicant for patent, except that an
international application filed under the treaty defined in section
351(a) shall have the effects for the purposes of this subsection of an
application filed in the United States only if the international
application designated the United States and was published under
Article 21(2) of such treaty in the English language . . . [emphasis
added].
and (3) 35 U.S.C. § 120 (2004)
An application for patent for an invention disclosed in the manner
provided by the first paragraph of section 112 of this title in an
application previously filed in the United States, or as provided by
section 363 of this title, which is filed by an inventor or inventors
named in the previously filed application shall have the same effect,
as to such invention, as though filed on the date of the prior
application, if filed before the patenting or abandonment of or
termination of proceedings on the first application or on an application
similarly entitled to the benefit of the filing date of the first
application and if it contains or is amended to contain a specific
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reference to the earlier filed application. No application shall be
entitled to the benefit of an earlier filed application under this section
unless an amendment containing the specific reference to the earlier
filed application is submitted at such time during the pendency of the
application as required by the Director. The Director may consider
the failure to submit such an amendment within that time period as a
waiver of any benefit under this section. The Director may establish
procedures, including the payment of a surcharge, to accept an
unintentionally delayed submission of an amendment under this
section. [Emphasis added.]

Section 102(e) was amended by the American Inventors Protection Act of 1999
(AIPA) (Pub. L. 106-113, 113 Stat. 1501 (1999)), and was further amended by the
Intellectual Property and High Technology Technical Amendments Act of 2002
(Pub. L. 107-273, 116 Stat. 1758 (2002)). The AIPA contained a number of
changes to title 35, including provisions for the publication of pending applications
for patent, with certain exceptions, promptly after the expiration of a period of
eighteen months from the earliest filing date for which a benefit is sought under
title 35 (“eighteen-month publication”). See 35 U.S.C. 122(b). The eighteen-
month publication provisions of the AIPA became effective on November 29,
2000, and apply to all applications filed on or after November 29, 2000. See Pub.
L. 106-113, 113 Stat. at 1501A-566 through 1501A-567. The USPTO
implemented the eighteen-month publication provisions of the AIPA and began
publishing, for the first time, patent applications filed on or after November 29,
2000 eighteen months after the effective filing date of the application.
U.S. patent applications published under 35 U.S.C. 122(b) are given prior art
effect under 35 U.S.C. 102(e) as of its earliest effective U.S. filing date against any
subsequently filed U.S. applications (with certain exceptions for international
applications). See 145 Cong. Rec. S14,708, S14,719 (daily ed. Nov. 17, 1999)
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(section-by-section analysis of S. 1948 printed in the Congressional Record at the
request of Senator Lott) (“Section 4505 amends section 102(e) of the Patent Act to
treat an application published by the USPTO in the same fashion as a patent
published by the USPTO. Accordingly, a published application is given prior art
effect as of its earliest effective U.S. filing date against any subsequently filed U.S.
applications.”)
Section 102(e)(1) gives prior art effect to U.S. patent application publications,
such as the published second Lively application, as of the earliest U.S. effective
filing date. Congress in making a published application prior art as of its filing
date adopted for published applications the same prior art status that it previously
adopted for patents which are prior art. A patent which is prior art under § 102(e)
may be prior art as of the date of its parent if the subject matter claimed in the
patent is described in the parent. In re Wertheim, 646 F.2d 527, 209 USPQ 554
(CCPA 1981). In making published applications prior art as of their filing date,
and recognizing that patents could be prior art as of some parent date, Congress
made no distinction between published applications and issued patents with respect
to earlier filed applications of either published applications or patents. Had
Congress wished to limit a published application to its own filing date, and not
some earlier filing date based on a parent application, it would have explicitly said
so. There is no cogent basis for treating issued patents and published applications
differently when it comes to the effective filing date of either. Section 120 affords
an earlier prior art date to the published application as of the earliest date of those
applications upon which the application publication claims priority in which
support under 35 U.S.C. § 112, first paragraph is found. Prior art under 35 U.S.C.
§ 102(e) can be applied in rejections under 35 U.S.C. § 103. See Hazeltine
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Research, Inc. v. Brenner, 382 U.S. 252 (1965); In re Zenitz, 333 F.2d 924, 926,
142 USPQ 158, 159 (CCPA 1964). “35 U.S.C. § 103 is in parimateria with 35
U.S.C. § 102(e).”
Thus, the 35 U.S.C. § 102(e) date of a published U.S. application that did
not result from, or claim the benefit of, an international application is its earliest
effective U.S. filing date, taking into consideration (1) any proper benefit claims to
a prior U.S. application under 35 U.S.C. § 120 (or 35 U.S.C. § 119(e), which is not
at issue in this appeal) and (2) whether any prior application describes in
compliance with 35 U.S.C. § 112, first paragraph, the subject matter used to make
the rejection. Whether the published application, or its parent application, was
abandoned is not relevant to the prior art status of the published U.S. patent
application.

ANALYSIS
The second Lively application is a U.S. patent application publication
(Document 2002/0090240 A1) filed under 35 U.S.C. § 111(a), on March 14, 2002.
The second Lively application claims the benefit under 35 U.S.C. § 120 of the
prior-filed non-provisional first Lively application filed under 35 U.S.C. 111(a), on
March 29, 2000. Accordingly, the earliest effective U.S. filing date of the second
Lively application is the March 29, 2000, filing date of the first Lively application
as to the subject matter described in the manner provided by 35 U.S.C. § 112, first
paragraph, in both the first and second Lively applications
Therefore, the prior art date of the published Lively application under 35
U.S.C. § 102(e) is the earliest effective U.S. filing date, which is March 29, 2000,
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for subject matter described in both applications in the manner required by 35
U.S.C. § 112, first paragraph.
The Appellant contends that an abandoned published patent application is not
afforded the earlier filing date or effective filing date. We disagree. Certainly, if
the published second Lively application had issued as a patent, there would be no
question but that it would be afforded the earlier effective filing date of its parent
application under 35 U.S.C. § 102(e). See In re Wertheim, 646 F.2d 527, 209
USPQ 554 (CCPA 1981). The applicability of this statutory provision was
extended by the AIPA, supra, to U.S. patent application publications.
In support of his contentions, the Appellant directs our attention to MPEP
§ 2126.01, which refers to the date a foreign patent is effective as a reference, and
MPEP § 2127, which refers to the date abandoned patent applications (as
contrasted with U.S. patent application publications) become effective as prior art.
These sections are not relevant to U.S. patent application publications such as the
second Lively application. Instead, MPEP §§ 706.02(f)(I)(B) and 2136.02 provide
the advisory propositions of law pertinent to U.S. patent application publications,
as in this case, and the application of those advisory propositions of law parallel
the analysis we have drawn above.
Because the effective filing date of the second Lively application antedates
the filing of the application on appeal, we conclude that the second Lively
application is prior art vis-à-vis the subject matter of independent claims 1 and 8.
Accordingly, we maintain the rejection of the subject matter of independent claims
1and 8 under 35 U.S.C. § 103 as being obvious over the second Lively application
in view of Acker.

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DECISION
Appellant's request is granted to the extent that the decision has been
reconsidered. The request is denied with respect to reversing the decision as to the
new rejection based on the second Lively application in view of Acker. Our new
rejection of the subject matter of independent claims 1 and 8 under 35 U.S.C. §
103 as obvious over the second Lively application in view of Acker is maintained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

DENIED

hh

Thomas H. Close
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201