Ex Parte Pines

Patent Trial and Appeal Board

Jan 29, 2018

13796261 (P.T.A.B. Jan. 29, 2018)

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.
13/796,261 03/12/2013 Andrew J. Pines 70669.21US1 9140
34018 7590
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
EXAMINER
PINHEIRO, JASON PAUL
ART UNIT PAPER NUMBER
3717
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
chiipmail @ gtlaw .com
escobedot@gtlaw.com
j arosikg @ gtlaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. PINES
Appeal 2017-0014041
Application 13/796,2612
Technology Center 3700
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—3, 8—12, and 16. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Br.,” filed May 27,
2016) and Declaration under 37 C.F.R. § 1.131 (“131 Decl.,” filed
February 18, 2016), and the Examiner’s Answer (“Ans.,” mailed
September 9, 2016), Advisory Action (“Adv. Act.,” mailed April 4, 2016),
and Final Office Action (“Final Act.,” mailed November 20, 2015).
2 Appellant identifies Stem Pinball, Inc., as the real party in interest. Br. 2.
Appeal 2017-001404
Application 13/796,261
CLAIMED INVENTION
Appellant’s claimed invention relates to “an improved tilt sensing
system and method for an amusement game device, such as a pinball
machine” (Spec. 1,11. 23—24).
Claims 1 and 9 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for controlling operation of an
amusement game device, comprising:
using an accelerometer positioned with a game cabinet of
the amusement game device to sense an inclination of the game
cabinet; and
causing play of the amusement game device to be inhibited
in whole or in part when the inclination of the game cabinet as
sensed by the accelerometer exceeds an inclination threshold that
was set relative to a reference idle position for the game cabinet.
REJECTIONS
Claims 1,2, 8—11, and 16 are rejected under 35 U.S.C. § 102(e) as
anticipated by Stellenberg (US 2013/0300058 Al, pub. Nov. 14, 2013).
Claims 3 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Stellenberg and LEGO Mindstorms NXT Software (November 16,
2012), available at https://web.archive.org/web/20121116040329
/http ://www.hitechnic. com/ cgi-bin/ commerce. cgi?preadd=action&key
=NAC1040.
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Application 13/796,261
ANALYSIS
Anticipation
By way of background, Appellant filed a Response After Final
Rejection on February 18, 2016, including a Declaration under 37 C.F.R.
§ 1.131 (the “Rule 131 Declaration”) in an effort to overcome the rejection
of claims 1, 2, 8—11, and 16 under 35 U.S.C. § 102(e) as anticipated by
Stellenberg. In the Rule 131 Declaration, Appellant states that he conceived
the claimed subject matter prior to July 13, 2012 (i.e., the earliest filing date
to which Stellenberg is entitled), as evidenced by an email (attached in an
accompanying Appendix A), and “[f]rom prior to July 13, 2012 until
March 12, 2013, . . . worked diligently to reduce the invention to practice
and to finalize the application for patent” (131 Decl. 110; see also id. 111).3
The Examiner entered the Rule 131 Declaration in an Advisory
Action mailed April 4, 2016 (Adv. Act. 1). However, the Examiner found
the Declaration insufficient to establish a conception date before January 17,
2012 (i.e., the filing date of Stellenberg’s provisional application Serial
No. 61/632,002, which the Examiner concluded was the earliest filing date
to which Stellenberg was entitled) and also insufficient to establish diligence
from a date just prior to January 17, 2012 to either a constructive reduction
to practice or an actual reduction to practice (id. at 2).
Addressing the Advisory Action in the Appeal Brief, Appellant argues
that the Stellenberg provisional application does not disclose the subject
3 Appellant does not assert in the Declaration that the claimed invention was
actually reduced to practice before Appellant filed the present application for
patent. Therefore, we understand that Appellant is asserting diligence from
just prior to July 13, 2012 to the date of Appellant’s constructive reduction
to practice on March 12, 2013, when the present application was filed.
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Application 13/796,261
matter relied on in rejecting the claims under § 102(e), and that the
Examiner erred in concluding that the Rule 131 Declaration is insufficient to
establish a conception date prior to the earliest effective filing date to which
Stellenberg is entitled (App. Br. 4—5). Appellant further asserts that
“averments made in a 37 C.F.R. § 1.131(a) affidavit or declaration do not
require corroboration” (App. Br. 4; see also Reply Br. 3) and that “an
applicant may stand on his or her own affidavit or declaration if he or she so
elects” (App. Br. 4—5 (citing Ex parte Hook, 102 USPQ 130 (Bd. App.
1953)). Appellant, thus, maintains that Stellenberg is not prior art, and that
the rejection under § 102(e) based on Stellenberg should be withdrawn {id.
at 5).
Responding to Appellant’s arguments, the Examiner concedes that
Stellenberg’s provisional application 61/632,002 does not include the
requisite support, and that July 13, 2012 is the earliest date to which
Stellenberg is entitled (Ans. 7). The Examiner, nonetheless, finds the
Rule 131 Declaration ineffective to overcome the Stellenberg reference {id.
at 8—9).
More particularly, the Examiner finds the Declaration insufficient to
establish conception before Stellenberg’s effective filing date because the
“[t]he contents of the e-mail [that Appellant presented as evidence of
conception] provide no nexus to the specific functions of the claims which
have been presented” {id. at 9). And the Examiner finds the Declaration
insufficient to establish diligence based on a typographical error in the
Declaration, i.e., Appellant mistakenly refers to the present application as
application Serial No. 13/286,594 rather than Serial No. 13/796,261 {id.
at 8).
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Application 13/796,261
Putting aside whether the Examiner erred in finding the Declaration
insufficient to establish conception before July 13, 2012, even if the
informality noted by the Examiner (i.e., the typographical error) were cured,
as Appellant suggests (see Reply Br. 3), the Declaration would remain
insufficient to establish diligence from just prior to July 13, 2012 to
Appellant’s constructive reduction to practice on March 12, 2013.
Appellant argues that a declaration under 37 C.F.R. § 1.131(a) does
not require corroboration and that an applicant may stand on his or her
declaration if he or she chooses to do so (App. Br. 4—5). Yet, whether or not
averments in a § 1.131(a) declaration require corroboration, the declaration
must satisfy the requirements of Rule 131, i.e., facts, not merely conclusions,
must be alleged. See In re Facius, 408 F.2d 1396, 1404 (CCPA 1969) (“The
most common way to ‘antedate’ a reference is to submit an affidavit
satisfying the requirements of Rule 131.” (footnotes omitted)); see also
Manual of Patent Examining Procedure (“MPEP”) § 715.07(1).
37 C.F.R. § 1.131 provides that a party, in certain circumstances, may
establish, by a showing of facts, invention prior to a reference applied in a
rejection and, thus, remove that reference as available prior art.
See 37 C.F.R. § 1.131(a). The rule also provides that:
[t]he showing of facts for an oath or declaration under
paragraph (a) of this section 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 and form part
of the affidavit or declaration or their absence must be
satisfactorily explained.
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Application 13/796,261
37 C.F.R. § 1.131(b) (emphasis added).
As described above, Appellant asserts in the Declaration, “[f]rom
prior to July 13, 2012 until March 12, 2013,1 worked diligently to reduce
the invention to practice and to finalize the application for patent” (131 Decl.
110). Appellant also asserts, “I was diligent in reducing to practice the
subject matter claimed in the subject application” and “we,” presumably
referring to himself and his attorney, “were diligent in preparing the
[present] application for patent that was filed on March 12, 2013” {id. 111).
But Appellant presents no evidence, i.e., no “[ojriginal exhibits of drawings
or records, or photocopies thereof,” to support Appellant’s assertions. Nor
does Appellant offer any explanation for the absence of any such records.
Appellant’s statements in the Declaration amount to a mere pleading
and are insufficient to establish diligence. See In re Harry, 333 F.2d 920,
922 (CCPA 1964) (“This is not proof or ‘showing of facts’ but mere
pleading. [Appellant’s affidavit] asserts that facts exist but does not tell
what they are or when they occurred. The Patent Office must have such
facts . . . to judge . . . whether there was diligence.”); cf. Gould v. Schawlow,
363 F.2d 908, 918 (CCPA 1966) (to establish diligence, the inventor must
provide specific details as to what was done and when it was done during the
critical period). As such, and again, putting aside whether Appellant’s
Rule 131 Declaration is sufficient to establish conception before July 13,
2012, the Declaration is insufficient to remove Stellenberg as available
§ 102(e) prior art.
Because Appellant does not present any argument that Stellenberg
fails to disclose one or more elements of claims 1, 2, 8—11, and 16, we
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Application 13/796,261
sustain the Examiner’s rejection of claims 1, 2, 8—11, and 16 under
35 U.S.C. § 102(e).
Obviousness
Appellant does not present any arguments in response to the
Examiner’s rejection of claims 3 and 12 under 35 U.S.C. § 103(a).
Therefore, we summarily sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1, 2, 8—11, and 16 under 35 U.S.C.
§ 102(e) is affirmed.
The Examiner’s rejection of claims 3 and 12 under 35 U.S.C. § 103(a)
is affirmed.
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
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