Ex parte Peppel

Board of Patent Appeals and Interferences

Mar 13, 2000

08398862 (B.P.A.I. Mar. 13, 2000)

Application for patent filed March 6, 1995, entitled1
"Electronic Trading Card."
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
_______________
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte TYLER PEPPEL

Appeal No. 1998-2848
Application 08/398,8621

ON BRIEF

Before BARRETT, FLEMING, and NASE, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-2848
Application 08/398,862
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This is a decision on appeal under 35 U.S.C. § 134 from
the rejection of claims 1-39.
We affirm, but enter new grounds of rejection.
BACKGROUND
The disclosed invention is directed to a system and
method for implementing a trading card metaphor in an
electronic trading card (ETC). ETCs are segments of computer
code that have a data format as shown in Figure 1. ETC
products may be of various types, such as clue cards, code
cards, sports cards, and character cards (Figure 4). ETCs may
be made, traded, used in activities (such as game playing), or
may be collected like paper trading cards (specification,
pages 8-9; Figure 6).
Claims 1, 16, and 21 are reproduced below.
1. A system for the implementation of a trading card
metaphor, comprising:
a disassociated computer program, consisting of a
plurality of electronic trading cards (ETCs), each ETC
corresponding to a disassociated computer code segment
and having an electronic format that supports card
scarcity and card authenticity.
16. A method for implementing a trading card metaphor in
an electronic trading card (ETC), comprising the steps
of:
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entering a multiroom virtual environment where each
room in said environment requires a specific set of ETCs
to complete an ETC collection, each ETC corresponding to
a disassociated computer code segment and having an
electronic format that supports card scarcity and card
authenticity;
finding a missing ETC;
completing said set; and
reward when said set is completed.
21. A method for implementing a trading card metaphor,
comprising the steps of:
a dissociating a computer program, consisting of a
plurality of electronic trading cards (ETCs), each ETC
corresponding to a disassociated computer code segment
and having an electronic format that supports card
scarcity and card authenticity.
The Examiner relies on the following prior art reference:
Smith et al. (Smith) 5,533,124 July 2, 1996
(filed December 7, 1994)
Claims 1-39 stand rejected under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter.
Claims 1-39 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Smith.
We refer to the Office Action (Paper No. 10) entered
May 21, 1997, and the Examiner's Answer (Paper No. 17) (pages
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referred to as "EA__") for a statement of the Examiner's
position and to the replacement Brief (Paper No. 16) (pages
referred to as "Br__") filed March 2, 1998, for Appellant's
arguments thereagainst.
OPINION
Interpretation of "disassociated"
The claims first require interpretation. "[T]he name of
the game is the claim." In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). In particular,
we define the term "disassociated" which appears in all
independent claims.
The Examiner states (Paper No. 10, page 2):
The claimed invention is directed to data structures
representing descriptive material per se. This
determination is based on the fact that Applicant has
intentionally avoided claiming the mechanism or medium
that is interrelated with the data structure; e.g.:
"disassociated computer program"; "disassociated computer
code segments." See M.P.E.P. 2106.
The Examiner further states (EA5):
The word "disassociated" means: "to disconnection [sic]
from association, dissociate," Webster's New
International Dictionary, Second Edition, (1939). A
computer program is associated with a medium; e.g. a disk
or computer memory. Therefore, a disassociated computer
program is a program not associated when [sic] a medium.
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Thus, the Examiner interprets "disassociated" to mean not
associated with a tangible medium.
A "computer program" per se is an abstract entity and
does not imply association with a storage medium or memory. A
medium must be explicitly recited. Therefore, we do not
interpret "disassociated" to necessarily refer to lack of
association with a tangible medium, although it could have
that meaning also. The term "disassociated" is used in the
specification in the sense of "separate," "standing by
itself," or "not part of something else," which is consistent
with its normal meaning of "detached from association." For
example, the specification discusses the opportunity for
"multimedia products that allow consumers to browse, create,
collect, and exchange disassociated pieces of multimedia data"
(emphasis added) (page 4, lines 7-8) as opposed to "large,
monolithic collections of data that can only be browsed by the
consumer" (page 4, lines 9-10). As another example, the
specification discusses "disassociated components in the form
of ETCs" (page 20, lines 2-3).
We interpret "a disassociated computer program" in
claim 1 to be a separate computer program, i.e., a program
Appeal No. 1998-2848
Application 08/398,862
MPEP § 2106 incorporates the footnotes of the2
Guidelines into the body of the text and changes some wording,
such as "non-functional" in the Guidelines to "nonfunctional."
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that is not part of a larger computer program. The "ETC
corresponding to a disassociated computer code segment" in all
of the independent claims is interpreted to mean that the ETC
is a separate computer code segment, i.e., a code segment that
is not part of a larger code segment. Because the claims do
not recite that the computer program or the computer code
segment is stored on a tangible medium, no medium is expressly
or impliedly claimed.
35 U.S.C. § 101
The Examiner states (Paper No. 10, page 2):
The claimed invention is directed to data structures
representing descriptive material per se. This
determination is based on the fact that Applicant has
intentionally avoided claiming the mechanism or medium
that is interrelated with the data structure; e.g.:
"disassociated computer program"; "disassociated computer
code segments." See M.P.E.P. 2106.
Section 2106 of the Manual of Patent Examining Procedure
(MPEP) reproduces the Patent and Trademark Office Examination
Guidelines for Computer-Related Inventions (Guidelines),
1184 Off. Gaz. Pat. & Trademark Office 87 (March 26, 1996) . 2
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As stated in MPEP § 2106 under heading IV.B.1, "Non-Statutory
Subject Matter":
Descriptive material can be characterized as either
"functional descriptive material" or "nonfunctional
descriptive material." In this context, "functional
descriptive material" consists of data structures and
computer programs which impart functionality when encoded
on a computer-readable medium. . . . "Nonfunctional
descriptive material" includes but is not limited to
music, literary works and a compilation or mere
arrangement of data.
Both types of "descriptive material" are
nonstatutory when claimed as descriptive material per se.
When functional descriptive material is recorded on some
computer-readable medium it becomes structurally and
functionally interrelated to the medium and will be
statutory in most cases. . . . When nonfunctional
descriptive material is recorded on some computer-
readable medium, it is not structurally and functionally
interrelated to the medium but is merely carried by the
medium. Merely claiming nonfunctional descriptive
material stored in a computer-readable medium does not
make it statutory. . . .
We refer to the analysis in section IV.B.1(a) in the MPEP and
the Guidelines for further analysis. Computer programs and
data structures per se are abstractions and do not fall within
any of the four statutory categories of patentable subject
matter.
Appellant groups claims 1-39 to stand or fall together
(Br11). Thus, the rejection would normally be decided on the
basis of a single claim. See 37 CFR § 1.192(c)(7) (1997).
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Although Appellant reproduces the independent claims, this
does not constitute an argument as to why the claims are
separately patentable. Id. Under the rules, we could
consider claims 1-39 to stand or fall together with claim 1,
in which case all the claims would be considered nonstatutory
because claim 1 is nonstatutory. However, we have decided to
address the independent claims separately. The dependent
claims will stand or fall with their respective independent
claim.
Independent claim 1 and dependent claims 2-14
The "disassociated computer program" in claim 1 is a
computer program per se, i.e., a computer program in the
abstract and not embodied in any tangible medium. It is
considered non-statutory "functional descriptive material" for
the reasons discussed in the Guidelines and the MPEP. The
"ETC corresponding to a disassociated computer code segment
and having an electronic format" is a data structure per se,
i.e., a data structure (as shown in Figure 1) in the abstract
and not embodied in any tangible medium. It is also
considered non-statutory "functional descriptive material" for
the reasons discussed in the Guidelines and the MPEP. Claim
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1, as a whole, does not recite statutory subject matter.
Although claim 1 is directed to a "system" in the preamble,
this is not determinative of statutory subject matter. See
In re Walter, 618 F.2d 758, 205 USPQ 397 (CCPA 1980) (system
claims and method claims held nonstatutory).
Appellant argues that the § 101 rejection is untimely and
puts an undue burden on Appellant (Br12-13). While it is
unfortunate that the Examiner did not enter the § 101
rejection until the third Office action, there is nothing that
can be done. Examiners are charged with making sure that an
"applicant is entitled to a patent under law," 35 U.S.C.
§ 151. A statutory ground of rejection cannot be dismissed
just because it was not entered earlier.
Appellant argues (Br13): "The Examiner's proposition
'that the Applicant has intentionally avoided claiming the
mechanism or medium that is interrelated with the data
structure' is pure speculation without any factual basis and,
moreover, is apt to offend Applicant and his Counsel." The
claims define what Appellant regards as his invention.
35 U.S.C. § 112, second paragraph. Since claim 1 does not
recite any substrate medium on which the computer program and
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ETCs are stored, it must be presumed that Appellant intended
not to claim the medium.
Appellant quotes claims 1, 15, 16, 19, 21, and 38 and
concludes (Br15-16): "Clearly, none of the above claims is
directed to data structures representing descriptive material
per se. [Paragraph] For example, Claim 1 essentially recites
a system comprising a disassociated computer program
consisting of electronic trading cards." Appellant makes no
effort to address why a computer program and an ETC computer
code segments are not descriptive material "per se" under the
Guidelines and the MPEP, that is, Appellant has not shown how
the claims (especially claim 1) recite something physical.
Appellant quotes from the specification and states
(Br16): "The concept of the conventional trading card is well
known, and, in doubt, the physical appearance of the
electronic trading card would have to be assumed to be similar
to that of a conventional trading card." The claims define
the invention. It is Appellant's responsibility to claim what
he regards as his invention and we assume the claims reflect
Appellant's intent. Here there is nothing physical about what
is claimed in claim 1 and no physical appearance is recited.
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Limitations will not be read into the claims from the
specification to make the claimed subject matter statutory.
Moreover, it is not clear what limitations Appellant would
have read in from the specification.
Appellant argues (Br16-17):
From the above it is clear that it is not a data
structure per se or a computer program per se (so-called
Functional Descriptive Material) which is claimed. See
M.P.E.P. 2106 B 1.(a): "Data Structures [sic] not
claimed as embodied in computer-readable media are
descriptive material per se and are not statutory because
they are neither physical 'things' nor statutory
processes." The present claims are clearly different and
directed to different subject matter than was claimed in
Warmerdam, 33 F.3d, 1361, 31 USPQ2d, 1760 [cited in
footnote 30 in the Guidelines to the quotation] where a
claim to a data structure per se was held nonstatutory.
While the invention may be worked using a series of steps
to be performed on a computer (e.g. in case of on-line
ETCs), the system according to the invention may as well
be implemented by using physical trading cards containing
the particular ETC format (i.e. ETCs on physical media).
But even in the former case, the invention does not
merely manipulate an abstract idea or solve a purely
mathematical problem without any limitation to a
practical application. With the present invention,
electronic trading cards must be produced or created,
distributed or traded, then collected, and offer some
kind of reward when a series of ETCs has been completed.
Electronic trading cards can be viewed, either on a
computer screen or on some other physical media (see
order, In re Gary M. Beauregard, et al., Case
No. 95-1054, Fed. Cir., 12 May 1995) ("Connector [sic ?]
Programs Embodied in a Tangible Medium ...are patentable
subject matter under 35 USC § 101...".
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Again, the claims define the invention and claim 1 does
not recite that the computer program and the ETC computer code
segment are embodied in physical media. The claimed computer
program and a computer code segment having a certain format
(i.e., a data structure) are abstract. The citation of
In re Beauregard is inapposite because the claimed subject
matter is not embodied in a tangible medium as noted in the
quotation.
For the reasons discussed above, Appellant has not
persuaded us of error in the rejection of claim 1. The § 101
rejection of claim 1 and its dependent claims 2-14 is
sustained.
Independent claims 15, 16, and 19
and dependent claims 17, 18, and 20
Claims 15, 16, and 19 are method claims and, therefore,
the analysis applied to claim 1 does not hold. The Examiner
apparently recognized this when writing the Examiner's Answer
and provided this additional reasoning (EA3-4):
The claimed invention of claims 15, 16, 19, 21 and
those dependent therefrom are directed to abstract ideas.
Each set of claims describe an ethereal function. If the
function is not ethereal then it is unknown who (a
person) or what (a computer) is performing the function
or who or what is being operated on by the function.
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Appellant did not file a reply brief to challenge these
new reasons by the Examiner. See 37 CFR § 1.193(b) (appellant
may file a reply brief addressing new points of arguments).
Nevertheless, we do not affirm the rejection pro forma.
"[A] series of steps is a 'process' within § 101 unless
it falls within a judicially determined category of
nonstatutory subject matter exceptions." In re Sarkar,
588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978). The
recognized exceptions are for "laws of nature, natural
phenomena, and abstract ideas." See In re Alappat,
33 F.3d 1526, 1542, 31 USPQ2d 1545, 1556 (Fed. Cir. 1994) (in
banc) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
The key to statutory subject matter is whether the claimed
subject matter is directed to a "practical application," which
the Federal Circuit has said is "a useful, concrete and
tangible result." State Street Bank & Trust Co. v. Signature
Financial Group Inc., 149 F.3d 1368, 1375, 47 USPQ2d 1596,
1602 (Fed. Cir. 1998). Thus, a "process" no longer requires a
physical transformation of something to a different state or
thing (although such transformations fall within the so-called
"safe harbors" of the Guidelines and MPEP § IV.B.2.(b)(i)).
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Claim 15 recites steps of "assembling and personalizing
at least one ETCs [sic]," "choosing a format and setting for
said ETC," followed by several optional steps. These steps
are directed to a "useful, concrete and tangible result" of
preparing an ETC. We do not agree with the Examiner's
conclusion that the steps are "ethereal" in the sense of
lacking some physical action. The § 101 rejection of claim 15
is reversed.
Claim 16 recites steps of "entering a multiroom virtual
environment where each room in said environment requires a
specific set of ETC to complete an ETC collection," "finding a
missing ETC," "completing said set," and "reward when said set
is completed." These steps are directed to a "useful,
concrete and tangible result" of an ETC collecting activity.
We do not agree with the Examiner's conclusion that the steps
are "ethereal." The § 101 rejection of claim 16 and its
dependent claims 17 and 18 is reversed.
Claim 19 recites steps of "solving a puzzle having
increasing levels of difficulty using a series of [ETCs]" and
"reproducing a personalized certificate of completion when,
and only when, each level of said puzzle is solved, said
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certificate of completion optionally including clues to solve
a next level of said puzzle." These steps are directed to a
"useful, concrete and tangible result" of playing a puzzle
game using ETCs. We do not agree with the Examiner's
conclusion that the steps are "ethereal." The § 101 rejection
of claim 19 and its dependent claim 20 is reversed.
NEW GROUND OF REJECTION UNDER 37 CFR § 1.196(b)
Independent claim 21 and dependent claims 22-37
We enter a new ground of rejection under 37 CFR
§ 1.196(b) as to claim 21 and its dependent claims 22-37 under
35 U.S.C. § 112, second paragraph.
Claim 21 recites the single step of "a dissociating a
computer program, consisting of a plurality of electronic
trading cards (ETCs), each ETC corresponding to a
disassociated computer code segment and having an electronic
format that supports card scarcity and card authenticity." In
our opinion, the phrase "a dissociating a computer program" is
indefinite under 35 U.S.C. § 112, second paragraph. It cannot
be determined whether claim 21 intends to recite "dissociating
a computer program" or "a dissociating computer program." In
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any case, it is not known what is meant by either phrase and
we find no description of either phrase in the specification.
We reverse the § 101 rejection of claims 21-37. Where
the claimed subject matter is indefinite, an evaluation
thereof relative to statutory subject matter is inappropriate.
Cf. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970) ("If no reasonably definite meaning can be ascribed to
certain terms in the claim, the subject matter does not become
obvious--the claim becomes indefinite); In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962) ("[O]ur
analysis of the claims leaves us in a quandry as to what is
covered by them. We think the examiner and the board were
wrong in relying on what at best are speculative assumptions
as to the meaning of the claims and basing a rejection under
35 U.S.C. § 103 thereon.").
Independent claim 38 and dependent claim 39
System claim 38 recites "said ETC including a display
system, a housing, software, a battery, a CPU, and an LCD
display." Thus, system claim 38 recites physical structure
which has not been addressed by the Examiner. Although
claim 38 does not recite that the ETC data structure is
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contained in a memory (which is missing from the list of
structure), the structure included with the ETC is enough to
provide statutory subject matter. Accordingly, the § 101
rejection of claims 38 and its dependent claim 39 are
reversed.
35 U.S.C. § 102(e)
The rejection stands or falls based on the sufficiency
of the Peppel declarations to antedate the Smith patent
The merits of the anticipation rejection over Smith have
never been argued during prosecution and are not argued in the
Brief. See 37 CFR § 1.192(c)(8)(iii) (1997) (In the rule
governing the content of the Argument section of the appeal
brief: "For each rejection under 35 U.S.C. 102, the argument
shall specify the errors in the rejection and why the rejected
claims are patentable under 35 U.S.C. 102, including any
specific limitations in the rejected claims which are not
described in the prior art relied upon in the rejection.").
Appellant relies exclusively on the (First) Declaration Under
37 CFR § 1.131 by the inventor Tyler Peppel (part of Paper
No. 5) and the Second Declaration Under 37 CFR § 1.131 by Mr.
Peppel (Paper No. 8) to antedate the Smith patent.
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Accordingly, the rejection will be decided based on the
sufficiency of the Peppel declarations to swear behind Smith.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391, 21 USPQ2d
1281, 1285 (Fed. Cir. 1991) ("It is not the function of this
court to examine the claims in greater detail than argued by
an appellant, looking for nonobvious distinctions over the
prior art."); In re Wiechert, 370 F.2d 927, 936, 152 USPQ 247,
254 (CCPA 1967) ("This court has uniformly followed the sound
rule that an issue raised below which is not argued in this
court, even if it has been properly brought here by a reason
of appeal, is regarded as abandoned and will not be
considered. It is our function as a court to decide disputed
issues, not to create them."); In re Wiseman, 596 F.2d 1019,
1022, 201 USPQ 658, 661 (CCPA 1979) (arguments must first be
presented to the Board before they can be argued on appeal).
The Peppel declarations do not establish conception of
the
claimed invention coupled with diligence to the filing
date
A prior art patent which does not claim the same
patentable invention may be sworn behind under 37 CFR § 1.131
by a showing of facts sufficient to establish a completion of
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the invention in this country before the filing date of the
application on which the U.S. patent issued. "The showing of
facts shall be such, in character and weight, as to establish
reduction to practice prior to the effective data 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." 37 CFR § 1.131(b). The
"invention" refers to the subject matter of the claims. The
purpose of the Rule 131 showing is to establish broadly
possession of the invention. A Rule 131 declarant need not
necessarily show possession of the entire invention as later
claimed; it is sufficient that he shows possession of enough
to make the entire invention obvious to one of ordinary skill
in the art. See In re Spiller, 500 F.2d 1170, 1176,
182 USPQ 614, 618-19 (CCPA 1974). Cf. Bosies v. Benedict,
27 F.3d 539, 543, 30 USPQ2d 1862, 1865 (Fed. Cir. 1994) (In
interferences: "The question of conception is properly
directed to whether there was 'formation [] in the mind of the
inventor of a definite and permanent idea of the complete and
operative invention . . . [and whether] every limitation of
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the count [was] known to the inventor at the time of the
alleged conception.' Coleman v. Dines, 754 F.2d 353, 359,
224 USPQ 857, 862 (Fed. Cir. 1985) (emphasis added).").
The Examiner states (Paper No. 10, pages 2-3):
The evidence is insufficient to establish a
conception of the invention prior to the effective date
of the Smith et al. reference. Conception is the mental
part of the inventive act. The Applicant proves
conception either by demonstrative evidence or by a
complete disclosure to another. In this case, providing
a photocopy of a lab notebook page having the word "E-
Card" is not demonstrative evidence. Demonstrative
evidence is evidence that would enable one skilled in the
art to understand what the invention is; e.g.: a
flowchart or a block diagram is such evidence in this
technological art. Furthermore, the evidence showing
communications between an inventor and a third party does
not show complete disclosure to another. It is clear
that the communication[s] were in regards to a licensing
agreement. A reasonable businessman when in a potential
arms-length negotiation would not "show all his cards" to
his adversary for fear of losing leverage and proprietary
rights; therefore, complete disclosure to another was not
conveyed at these meetings or communications.
. . .
The evidence submitted is insufficient to establish
diligence from a date prior to the date of reduction to
practice to [sic, of] the Smith et al. reference to
constructive reduction to practice, i.e. the Applicant's
filing date. The particular "screen shots" are
insufficient to show diligence because the Applicant has
not provided evidence to establish the contents of each
document and the authenticity of the dates shown next to
the document icons.
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Thus, the Examiner finds the declarations and evidence
insufficient to establish conception and diligence, both of
which are necessary to antedate the Smith patent.
Appellant argues that the Peppel declarations provide
evidence of conception prior to the effective date of Smith
(December 7, 1994) along with evidence of due diligence
(Br18). The declarations authenticate the evidence, but make
no attempt to correlate the evidence with the limitations of
the claims.
We agree with the Examiner's conclusion that the evidence
is not sufficient to establish conception and diligence, but
disagree with the Examiner's expressed reasons. Thus,
although we sustain the rejection, we designate this a new
ground of rejection because Appellant has not had a fair
opportunity to respond. See In re Kronig, 539 F.2d 1300,
1302, 190 USPQ 425, 426 (CCPA 1976) (the "ultimate criterion"
of whether a rejection is new is "whether appellants have had
a fair opportunity to react to the thrust of the rejection").
The Examiner states that showing is insufficient because
the evidence is not "demonstrative evidence." Demonstrative
evidence is evidence addressed directly to the senses without
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intervention of witnesses or testimony, as by actual sight,
hearing, or taste. It is not evidence which demonstrates how
the invention works as the Examiner appears to think.
Appellant's evidence is demonstrative evidence. The Examiner
hints at the correct reason by stating that a lab notebook
page having the word "E-card" is not the kind of evidence that
would enable one skilled in the art to understand the
invention. However, this does not inform Appellant of the
real deficiency in the evidence.
The Examiner also states that the invention was not
completely disclosed at the meetings noted in the evidence.
This is an unsupported conclusion. We have no way of knowing
from the evidence exactly what was conveyed at the meetings.
The real reason the evidence does not establish
conception is because it does not show that Appellant was in
possession of the claimed invention. The showing of
conception must be commensurate in scope with the claims. All
independent claims 1, 15, 16, 19, 21, and 38 contain the
following limitation: "each ETC . . . having an electronic
format that supports card scarcity and card authenticity."
"Card scarcity" can be generated by user skill, timing, copy
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protection, limited manufacturing, and random distribution of
partial sets (specification, pages 11-12, 15). "Card
authenticity" can be accomplished with encryption; e.g.,
"Counterfeit ETCs can be detected using public-key/private-key
encryption" (specification, page 12, lines 12-13). We do not
find the concepts of "card scarcity" and "card authenticity"
discussed anywhere in the evidence submitted. One of the
slides is entitled "E-Card Security"; however, this appears to
just refer to how the ETCs are accessed and there is no
mention of card scarcity or card authenticity. This is just
one example, but it applies to all claims. As another
example, we do not find support for the limitations of
entering a multiroom virtual environment and completing a set
as recited in claim 16. The declarations should particularly
point out how each claim limitation is supported by the
evidence. Appellant has not established conception of the
claimed invention and the Rule 131 declarations are
insufficient to overcome Smith. The anticipation rejection of
claims 1-39 is sustained.
In addition, even assuming the evidence was sufficient to
establish conception, Appellant has failed to establish
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diligence from a date prior to Smith's filing date to the
constructive reduction to practice which occurred on the
filing date of Appellant's application. We do not understand
what the Examiner's comments have to do with diligence.
Diligence is whether Appellant and his attorney worked without
delay to get the application filed, not the contents of the
document and the authenticity. While we agree with counsel's
statement that, in many circumstances, "[i]t is not
unreasonable to expect the preparation of a patent application
to take the interval from December 2, 1994 until
March 6, 1995" (Br18), since the delay is over three months, a
declaration of counsel would normally be expected setting
forth dates establishing progress towards filing. Therefore,
Appellant has not established diligence from a date prior to
Smith's filing data to the application filing date and the
Rule 131 declaration is insufficient to overcome Smith. The
anticipation rejection of claims 1-39 is sustained for this
additional reason.
Appeal No. 1998-2848
Application 08/398,862
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CONCLUSION
The rejection of claims 1-14 under 35 U.S.C. § 101 is
sustained and the rejection of claims 15-20, 38, and 39 under
§ 101 is reversed. The rejection of claims 21-37 under § 101
is reversed because claim 21 is too indefinite to evaluate
statutory subject matter. A new ground of rejection has been
entered as to claims 21-37 under 35 U.S.C. § 112, second
paragraph.
The rejection of claims 1-39 under 35 U.S.C. § 102(e)
over Smith is sustained, but is denominated as a new ground of
rejection because of new reasoning.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, "A new ground of rejection
shall not be considered final for purposes of judicial
review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
Appeal No. 1998-2848
Application 08/398,862
- 26 -
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED - 37 CFR § 1.196(b)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Appeal No. 1998-2848
Application 08/398,862
- 27 -
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-2848
Application 08/398,862
- 28 -
Michael A. Glenn
P.O. Box 7831
Menlo Park, CA 94026