Ex Parte McCoy

Patent Trial and Appeal Board

Nov 24, 2014

12110648 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CAROL M. MCCOY
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Appeal 2012-008446
Application 12/110,648
Technology Center 3700
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Before NEAL E. ABRAMS, MICHAEL L. HOELTER,
and LEE L. STEPINA, Administrative Patent Judges.

STEPINA, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Carol M. McCoy (Appellant) seeks our review under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–8 and 16–27. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a system for tracking the passage
of time. Claims 1, 16, and 21 are illustrative of the claims on appeal and are
reproduced below:
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1. A system for tracking the passage of time comprising:
a predetermined event;
a set of blocks, each block having a number
corresponding to a number of time increments remaining until
the predetermined event; and
an image related to the predetermined event;
wherein each block displays a portion of the image; and
wherein arranging the blocks in a predetermined
arrangement produces the image.

16. A system for tracking the passage of time comprising:
a predetermined event; and
a set of counting units, each counting unit having a first
side displaying a number corresponding to a number of time
increments until the predetermined event and a second side
displaying a portion of an image corresponding with the
predetermined event;
wherein arranging the counting units in a predetermined
arrangement produces the image.

21. A system for tracking the passage of time comprising:
a set of ten blocks numbered 1 through 10, each number
corresponding to a number of time increments remaining until a
predetermined event; and
an image related to the predetermined event, wherein
each block displays a portion of the image; and
wherein the image is produced by arranging the blocks in
the following predetermined arrangement:
the blocks having numbers 10, 9 and 8 form a first
row of the image;
the blocks having numbers 7, 6 and 5 form a
second row of the image;
the blocks having numbers 4, 3 and 2 form a third
row of the image; and
the block having number 1 forms a fourth row of
the image.

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REFERENCES RELIED ON BY THE EXAMINER
Rice US 3,937,472 Feb. 10, 1976
Bowman US 2009/0007467 A1 Jan. 8, 2009

THE REJECTIONS ON APPEAL
Claims 1–3 and 16 are rejected under 35 U.S.C. § 102(e) as
anticipated by Bowman.
Claims 4–8, 17, 18, and 21–27 are rejected under 35 U.S.C. § 103(a)
as obvious over Bowman.
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as obvious
over Bowman in view of Rice.
BACKGROUND
Each of the rejections against the pending claims cites Bowman. In a
declaration filed under 37 C.F.R. § 1.131 (hereinafter “Declaration”),1
Appellant asserts she made an actual reduction to practice (“ARP”) at least
as early as June 27, 2007, and Appellant argues this antedates Bowman as a
reference inasmuch as Bowman’s critical date as prior art is July 5, 2007.
Appeal Br. 8–10. Appellant relies on this argument for all the rejected
claims. Appeal Br. 7, 12, and 13. The Examiner finds the Declaration
lacking as evidence of a reduction to practice of certain features recited in
the claims, stating:
Applicant's evidence merely shows a screen shot of drawings of
squares with numbers and pictures on them, as well as photos
of what appears to be this same thing. The evidence submitted
does not show the claimed features of the invention. The

1 Appellant submitted two declarations (April 12, 2011 and July 6, 2011),
both of which were entered into the record by the Examiner. The second
declaration was attached as an appendix to Appellant’s Appeal Brief, and we
refer to this submission as the “Declaration” in our discussion.
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submitted drawings do not show much of what is claimed, such
as “a predetermined event”, “a number corresponding to a
number of time increments remaining”, the blocks
containing a portion of a second, third fourth and fifth image,
etc. Further, there is no evidence from the drawings submitted
showing or explaining how to use the invention.
Ans. 11 (emphasis added).
In response, Appellant argues the Examiner does not give sufficient
weight to the explanation in the Declaration itself, stating “the Examiner
erroneously ignores the statements in the supplemental declaration and
focuses only on the accompanying evidence, arguing that the drawings do
not show ‘a predetermined event’ or ‘a number corresponding to a number
of time increments remaining.’” Reply Br. 3 (emphasis added).
ANALYSIS
An applicant may overcome a rejection under 35 U.S.C. § 102(e) 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… 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 or activity 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:
The 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
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
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and form part of the affidavit or declaration or their absence
must be satisfactorily explained.
Thus, for an ARP, no showing of diligence is required.
Regarding the standard for sufficiency of the content of a 1.131
declaration, the predecessor to the Federal Circuit explained,
for the purpose of antedating the [cited] reference under
Rule 131, it is sufficient that appellant has shown a reduction to
practice of his basic invention, which showing will also suffice
as to claims differing therefrom only in details which are
obvious to one of ordinary skill in the art.
In re Spiller, 500 F.2d 1170, 1178 (CCPA 1974) (emphasis added). The
claim at issue in Spiller recited a method of manufacturing a cellulosic sheet
material including a step of “forming a water-wet web containing at least
25% by weight of water.” Id. at 1171. The 1.131 declaration used to
antedate a reference cited against this claim included evidence of the
Inventor’s prior development of a process using wet paper containing “40%
to 70% by weight of water.” Id. at 1173. The court in Spiller concluded that
paper with a “water-wet web containing at least 25% by weight of water”
would have been obvious over the evidence submitted with the 1.131
declaration establishing the use by the inventor of wet paper with 40% to
70% by weight of water, and therefore the 1.131 declaration was sufficient
to remove the cited reference as prior art. Id. at 1178.
In the Evidence Appendix, Appellant provides, inter alia, Exhibit A,
page 1; Exhibit A, page 2; Exhibit B, page 2; and Exhibit B, page 3.

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Exhibit A, page 1, is reproduced below:

Exhibit A, page 1, depicts a Christmas tree, as described by Appellant
on page 2 of the Declaration. Squares are overlaid on the Christmas tree and
arranged in three rows of three, topped by a single square centered above the
highest row of three.

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Exhibit A, page 2, is reproduced below:

Exhibit A, page 2, depicts an arrangement of ten sequentially
numbered squares, arranged from 1 to 10, starting with three rows of three
squares (8–10), (5–7), (2–4) and ending with a square (1) at the top. The
squares are arranged in the same configuration as the squares in Exhibit A,
page 1.

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Exhibit B, page 4, is reproduced below:

Exhibit B, page 4, depicts a photograph of an image of a Christmas
tree formed by an arrangement of ten square blocks arranged in three rows
of three and topped off by a single block.

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Exhibit B, page 3, is reproduced below:

Exhibit B, page 3, depicts a photograph of ten sequentially numbered
blocks arranged in three rows of three and topped off by a single block
having the number “10” on it.
As evidence the images in Exhibit A were created before the July 5,
2007, critical date, the Declaration includes a screen-shot of a computer file
“properties” image indicating that the file associated with this properties
image was last saved on June 27, 2007. Evidence App’x, Exhibit A, page 3.
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As evidence of the date the block arrangements depicted in Exhibit B were
created, Appellant states, in the Declaration:
At least as early as June 27, 2007, I also created a
prototype by attaching various drawings to a set of blocks. The
attached photos (Exhibit B) show the prototype I created at
least as early as June 27, 2007. After attaching the images to the
blocks and thus further reducing the Invention to practice, I
arranged the blocks as described in the claims to confirm that
the system worked as intended.
Declaration ¶ 7. The Examiner makes no finding as to whether the
arrangements of blocks depicted in the photographs in Exhibit B were
created before or after the critical date of Bowman.
The Declaration also includes copies of independent claims 1, 16, and
21 along with general statements that Appellant “conceived in the United
States and reduced to practice, prior to July 5, 2007, …the Invention as set
forth in the aforementioned claims.” Declaration ¶ 3.
The Application includes six figures; Figure 2 is reproduced below:

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Figure 2 depicts a birthday cake, as described on page 2 of the
Specification. Squares are overlaid on the birthday cake and arranged in
three rows of three, topped by a single square centered above the highest
row of three. Figure 3 is reproduced below:

Figure 3 depicts an arrangement of ten sequentially numbered squares,
arranged from 1 to 10, starting with three rows of three squares (10–8), (5–
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7), (4–2) and ending with a square (1) at the top. The squares are arranged
in the same configuration as the squares in Figure 2.
Based on the preponderance of the evidence, we are satisfied that the
Figures in Exhibit A and the photographs in Exhibit B, taken together with
the statements in the Declaration, would have rendered obvious the systems
recited in independent claims 1, 16, and 21, and therefore, the Declaration is
sufficient (based on an ARP) to antedate Bowman as a reference against
these claims. See Spiller, 500 F.2d 1170, 1178. We acknowledge the
Examiner’s concerns as to whether the Declaration discloses how to use the
invention and whether the numbers on the squares and blocks in Exhibits A
and B correspond to a number of time increments as recited in claims 1, 16,
and 21. However, an arrangement of ten numbered blocks (including an
image when properly arranged) as depicted in Exhibits A and B is inherently
capable of performing such use. Accordingly, the Declaration and
accompanying Exhibits A and B are sufficient to antedate Bowman under
the standard set forth in Spiller with respect to claims 1, 16, and 21.
Dependent Claims
Although Appellant asserts that all the dependent claims stand or fall
with respective independent claims 1, 16, or 21 (Appeal Br. 7), in a situation
such as this, where the question is the sufficiency of a declaration and
supporting evidence, we find such grouping inappropriate. Specifically, it
may be that Appellant’s Declaration is not sufficient, under Spiller, to
antedate a reference with respect to one of the dependent claims because of
specific, non-obvious features recited by the dependent claim, even if the
Declaration may be sufficient for the respective independent claim.
Moreover, Appellant has not indicated that the dependent claims would have
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been obvious over the respective independent claims. Accordingly, as
Appellant has not made separate arguments for any of the dependent claims,
and the circumstances surrounding Appellant’s arguments against the
Examiner’s 102 and 103 rejections require such separate arguments, we
sustain the rejection of claims 2 and 3 as anticipated by Bowman; the
rejection of claims 4–8, 17, 18, and 22–27 as obvious over Bowman; and the
rejection of claims 19 and 20 as obvious over Bowman and Rice.
Conception plus Diligence
Appellant also makes arguments, based on the Declaration, regarding
conception of the invention, but we agree with the Examiner that these
arguments are moot inasmuch as there is no persuasive evidence of record
establishing diligence from a date before the effective date of Bowman as
prior art to an actual or constructive reduction to practice.
New Ground of Rejection
We enter a new ground of rejection of claims 1, 16, and 21 and the
claims depending therefrom, respectively, under 35 U.S.C. § 112, ¶ 2 as
indefinite. A claim is indefinite if “read in light of the patent’s specification
and prosecution history, [it] fail[s] to inform, with reasonable certainty,
those skilled in the art about the scope of the invention.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2123 (2014). The test for
definiteness under 35 U.S.C. § 112, ¶ 2, is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted).
Independent claim 1 recites “an image related to the predetermined
event.” Independent claim 16 recites “an image corresponding with the
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predetermined event.” Independent claim 21 recites “an image related to the
predetermined event.” The Application does not provide a reasonable basis
for determining what an image “related to” or “corresponding with” a
predetermined event is.2
Appellant’s Specification states, “[t]he system 20 of the present
invention may be used in conjunction with any desired predetermined event
and corresponding image 42. Some further examples of images 42 are a
flower, balloons and a fireworks display.” Specification 5. Accordingly,
when read in light of the Specification, the “predetermined event” recited in
the independent claims must be broad enough to read on any desired
predetermined event. Further, the claimed “predetermined event” is broadly
described in Appellant’s Specification as related to an image of a flower.
The relationship of the image of a flower to any particular event is not
defined in the Specification nor is it self-evident.3 Indeed, according to the
Specification, the particular event may be any desired predetermined event.
A second issue regarding the clarity of the independent claims is that
the Specification states, “[i]n another aspect of the invention, the blocks may
be customized by the user. For example, certain photographs associated
with certain events, e.g., a family photo from a Fourth of July celebration,
may be used as images.” Specification 6. Accordingly, the particular image
may be a customized image, having significance only to the specific user,
not to a person of ordinary skill in the art. In other words, the independent

2 Independent system claims 1 and 16 positively recite “a predetermined
event,” as an element, which is also unclear.
3 It may be that the image of a flower is related to the first day of May,
Mother’s Day, a high school prom, or some other more personal event but
the exact event would appear to vary depending on the viewer and/or the
circumstances.
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claims, by reciting an “image corresponding with” or “image related to” a
predetermined event, fail to inform with reasonable certainty those skilled in
the art about the scope of the invention. What might be an infringing
product for one user would not be an infringing product for another user,
based solely on the subjective opinion of the respective user. See Datamize,
LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (“The scope of claim
language cannot depend solely on the unrestrained, subjective opinion of a
particular individual purportedly practicing the invention.”). Accordingly,
we enter a new ground of rejection of claims 1, 16, and 21 and the claims
depending therefrom, respectively, under 35 U.S.C. § 112, ¶ 2 as indefinite.
DECISION
In light of the discussion above, the rejection of claims 1 and 16 as
anticipated by Bowman is reversed.
The rejection of claim 21 as obvious over Bowman is reversed.
The rejection of claims 2 and 3 as anticipated by Bowman is affirmed.
The rejection of claims 4–8, 17, 18, and 22–27 as obvious over
Bowman is affirmed.
The rejection of claims 19 and 20 as obvious over Bowman in view of
Rice is affirmed.
We enter a new ground of rejection of claims 1–8 and 16–27 under 35
U.S.C. § 112, ¶ 2 as indefinite.
Regarding the new ground of rejection, Appellant must, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the
following options with respect to the new ground of rejection, in order to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . .; or
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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