Ex Parte Prokhorov

Patent Trial and Appeal Board

May 31, 2013

11931564 (P.T.A.B. May. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANIL V. PROKHOROV
____________________

Appeal 2011-004493
Application 11/931,564
Technology Center 3600
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Before: LINDA E. HORNER, BARRY L. GROSSMAN, and
NEIL A. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
15. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed a system for detecting a battery malfunction
and performing battery mitigation for a hybrid electric vehicle. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for detecting malfunction of a battery
in a hybrid electric vehicle having an electric
motor and a fuel engine comprising:
a diagnostic circuit which receives signals
representative of required driveshaft torque and
speed over a diagnostic time period and a state of
charge of the battery at the beginning of the
diagnostic period as input signals and generates an
output signal at the end of the diagnostic period
representing an estimated state of charge of the
battery at the end of the diagnostic period, said
diagnostic circuit determining a difference
between an estimated state of charge of the battery
at the end of the diagnostic period and an actual
current state of charge of the battery at the end of
the diagnostic period, and
a circuit which generates a battery fault
signal whenever said difference exceeds a
predetermined threshold.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Medasani US 2009/0055330 A1 Feb. 26, 2009

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REJECTIONS
The Examiner made the following rejection:
Claims 1-15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Medasani. Ans. 3.1
Appellant seeks our review of the rejection of claims 1-15 under 35
U.S.C. § 103(a).
OPINION
The Examiner found that the subject matter of claims 1-15 was
rendered obvious to one of ordinary skill in the art at the time the invention
was made, by the teachings of the cited Medasani reference. Ans. 3-5.
Appellant does not contest the substance of the underlying findings as
to the prior art made by the Examiner or the ultimate conclusion of
obviousness of the claimed subject matter. App. Br., passim; Reply Br.,
passim. Instead, Appellant limits his challenge of the Examiner’s adverse
decision to an attempt to swear behind and thus remove Medasani, the sole
reference relied upon by the Examiner, in the rejection. App. Br. 7-8; Reply
Br. 1-4. Appellant contends that the Declaration pursuant to 37 C.F.R.
§ 1.131 filed by the inventor Danil V. Prokhorov (Prokhorov Declaration) on
Oct. 7, 2009, is sufficient to eliminate the eligibility of Medasani as prior art
by establishing Appellant’s earlier date of conception coupled with
continuous diligence to reduce to practice the subject matter disclosed and
claimed. App. Br. 7-9, Prokhorov Declaration. The Prokhorov Declaration,
signed Oct. 6, 2009, and set out in full below, avers that the inventor

1 The Examiner withdrew a rejection of claims 1-15 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as his invention.
Ans. 5.
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conceived the invention in July 2007, and includes the conclusory statement
that he “diligently reduced the invention to practice by filing a patent
application in October 2007.” Prokhorov Declaration, p. 1.2
The entire substance of the Prokhorov Declaration, which is signed
and sworn to under Section 1001 of Title 18 of the United States Code is
reproduced here:
DECLARATION UNDER 37 CFR §1.131
1. I, Danil V. Prokhorov, am the sole inventor of the above-
identified United States patent application.
2. I conceived the invention set forth in the above-identified
patent application in July 2007.
3. Attached hereto as Exhibit A1-A10 are drawings that I
created and stored in my computer in late July or early August
2007 and, in any event, prior to August 23, 2007. These
drawings depict the same invention disclosed in the above-
identified patent application.
4. More specifically, pages A1, A2, A7 and A8 of Exhibit A
represent the state of charge as a function of time and
correspond to FIG. 1 in the patent application. Pages A3, A4,
A7 and A8 correspond to FIG. 2 in the patent application, while
pages A5, A6, A9 and A10 correspond to FIGS. 3 and 4 in the
patent application.
5. I diligently reduced the invention to practice by filing a
patent application in October 2007.3

The Examiner refuses to accept the Prokhorov Declaration as
sufficient to remove Medasani as prior art because the Declaration “fails to
provide account for the entire period during which diligence is required by
either affirmative acts or acceptable excuses.” Ans. 6.

2 October 2007 is the month and year in which Appellant’s application was
filed with the Office. Ans. 1.
3 This reproduction omits paragraph 6, which contains Appellant’s
acknowledgement under Section 1001 of Title 18.
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Appellant asserts that the Declaration shows actual reduction to
practice prior to the effective date of the reference and also shows
conception prior to the effective date of the reference coupled with diligence
from a period prior to the effective date of the reference until the filing of the
patent application. App. Br. 8. As to actual reduction to practice, Appellant
refers to the drawings in the Declaration being “the same that are used in the
patent specification including the computer simulation, so that those
drawings together with the computer simulation in June 2009 [sic, 2007]
constitute a reduction to practice.” Id. Appellant says that it is “rudimentary
that detailed drawings and computer simulation are sufficient to constitute
an actual reduction to practice.” Id. Appellant further refers to it being
known that “neural networks such as that in the preferred embodiment of the
present invention are conventionally implemented by software so that the
simulation shown in FIG. 1 of the patent drawing is, in fact, an
implementation of the system.” Id.
As to diligence, Appellant suggests the period of time from the
making and/or generation of the documents which are Exhibits to the
Prokhorov Declaration, to the time of filing the patent application, “a matter
of weeks,” did not break the continuity of the conception, and suggests
further that even if there were an applicable “continuous” requirement of
Rule 131, “there is no requirement that the inventor spend every moment of
every day working on the completion of the invention.” App. Br. 8. The
Examiner responds to this argument by noting that “the court has held that a
2-day period lacking activity has been held to be fatal.” Ans. 8.

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PRINCIPLES OF LAW
37 C.F.R. 1.131, entitled “Affidavit or declaration of prior invention,”
describes the showing of facts required to establish conception and reduction
to practice, or conception coupled with diligence:
b) 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 and form part
of the affidavit or declaration or their absence must be
satisfactorily explained.

37 C.F.R. § 1.131(b).

Our reviewing court in Cooper v. Goldfarb, 154 F.3d 1321, 1327
(Fed. Cir. 1998) stated:
Conception is the formation, in the mind of the inventor, of a
definite and permanent idea of the complete and operative
invention, as it is thereafter to be applied in practice … A
reduction to practice can be either a constructive reduction to
practice, which occurs when a patent application is filed, or an
actual reduction to practice…. In order to establish an actual
reduction to practice, the inventor must prove that: (1) he
constructed an embodiment or performed a process that met all
the limitations of [the claimed subject matter]; and (2) he
determined that the invention would work for its intended
purpose…. Depending on the character of the invention and the
problem it solves, determining that the invention will work for
its intended purpose may require testing.

(Citations omitted).
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ANALYSIS
Actual reduction to practice

On this record, Appellant’s Prokhorov Declaration has not
demonstrated that the claimed invention was actually reduced to practice
prior to the priority date of Medasani. Appellant has not shown that the
claimed invention was made or constructed prior to the publication date of
Medasani, much less shown it to work for its intended purpose prior to the
publication date of Medasani. The Prokhorov Declaration only shows, at
most, that the claimed subject matter was conceived of, as noted in the
documents attached thereto, in late July or early August, prior to the
effective date of Medasani. The Declaration is silent as to any claim therein
to an actual reduction to practice by computer simulation, or even that the
drawings, which the Declaration states correspond to the figures in the
application, were the result thereof.
The Prokhorov Declaration never mentions actual reduction to
practice, computer simulation, and only says that the pages attached to the
Exhibit which correspond to Fig. 1 of the patent application “represent the
state of charge as a function of time,” Prokhorov Declaration p. 1, para. 4.
This statement is never tied in with or supported as a computer simulation,
or the invention as a whole, which has many elements and references “state
of charge” several times. See claim 1.
Accordingly, to the extent that Appellant is now suggesting that there
may have been an actual reduction to practice, the Declaration does not
provide a showing of facts sufficient to established an actual reduction to
practice prior to the effective date of the reference. An actual reduction to
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practice is not supported or described in the description of the source of the
drawings which were attached to the Prokhorov Declaration.

Diligence

We agree with the Examiner, Ans. 6, that Appellant has not
demonstrated due diligence from a time prior to the effective date of
Medasani continuously up to the date of filing of the patent application. The
inventor/declarant’s mere assertion of diligence (“I diligently reduced the
invention to practice….) (Prokhorov Declaration p. 1, para. 5) is not
supported by any evidence which shows that the inventor was reasonably
diligent during the critical time period from a time prior to effective date of
Medasani continuously up to the date of filing of his patent application. See
In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983); see also Gould v.
Schawlow, 363 F.2d 908, 919 (CCPA 1966) (An applicant must account for
the entire period for which diligence is required; a mere statement that there
were no weeks or months that the invention was not worked on is not
enough.); In re Harry, 333 F.2d 920, 922 (CCPA 1964) (A mere statement
that the claimed subject matter “was diligently reduced to practice” is not a
showing.).
The inventor’s Declaration stating that he acted “diligently” provides
no facts to support the claim he makes to having so acted. Appellant has
simply not proffered any evidence directed to due diligence, particularly any
evidence or facts which are specific as to any steps taken, dates, or acts
during the period of professed diligence. Kendall v. Searles, 173 F.2d 986,
993 (CCPA 1949) (To establish reasonable diligence, Applicants must be
specific as to dates and facts). The statement of diligence in the Prokhorov
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Declaration is “not proof or ‘showing of facts’ but mere pleading,” Harry,
333 F.2d at 922, which is not sufficient to show diligence.
Accordingly, based on the totality of the record, including due
consideration of Appellant’s arguments and evidence we agree with the
decision of the Examiner that the proffered Prokhorov Declaration fails to
establish either due diligence from prior to the effective date of the reference
until filing of the patent application, or to the extent argued, an actual
reduction to practice, as required by 37 C.F.R. § 1.131.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-15 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)(1)(iv) (2009).

AFFIRMED

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