Ex parte SEEL

Board of Patent Appeals and Interferences

Oct 23, 2000

08500231 (B.P.A.I. Oct. 23, 2000)

1
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(2) is not binding precedent of the Board.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. 76
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROY D. SEEL
_____________
Appeal No. 1997-2021
Application No. 08/500,231
______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON and KRASS, Administrative Patent
Judges
THOMAS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
In a paper filed September 20, 2000, appellant requests
that we reconsider or rehear our decision dated March 22,
2000, where- in we sustained the rejection of claims 21
through 24, 26 through 28, 30 and 31 under the public use
clause of 35 U.S.C. § 102(b). The application file reveals
that subsequent to our earlier decision in March, appellant
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Application No. 08/500,231
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was granted various extensions of time to file this request
for rehearing.
Pages 2 and 3 of our original opinion set forth a brief
file history of prosecution of this application as well as its
earlier applications.
This is the fourth appeal in this application before the
Board. As indicated at page 3 of our original decision, after
the third decision on appeal, appellant sought relief at
Federal District Court in the District of Columbia. The
present application was filed at the direction of the
presiding judge in that appeal with instructions that
declarations of all those who saw the video booth more than
one year before the great grandparent application Serial No.
07/170,924, filed on March 21, 1988, should be filed in the
present application. Therefore, the critical date in question
is March 22, 1987.
At the outset, to the extent appellant's request for
rehearing urges a reconsideration of the decision rendered in
each of the first three appeals, as set forth more or less in
the first twenty six paragraphs of the request for rehearing,
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Application No. 08/500,231
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the request is denied. Appellant has long lost any rights
accorded to him under the rules of practice to seek any relief
for any
alleged errors in these earlier decisions on appeal. Of those
first three appeals taken by appellant during earlier
prosecution of parent applications of this application, a
request for reconsid-eration was filed in a timely manner only
with respect to the second appeal in Appeal No. 92-1594 which
request was denied on June 18, 1992. We are unaware of any
provision of 37 CFR § 1.197 which permits appellant to seek a
reconsideration of prior appeals after the time set therefor
has expired.
We have considered appellant's positions set forth
between paragraphs 27 and 44 of the request for rehearing. It
is believed that the discussion at pages 4 and 5 of our
original opinion in effect basically still answers the urgings
for reconsideration set forth in the above noted paragraphs.
For emphasis, we repeat again the essence of the statement we
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Application No. 08/500,231
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made at page 4 of our original opinion that the focus of the
affirmance of the rejection was, as urged by the examiner, the
absence of any curative and subsequent declarations from
declarants McLaughlin, Goman, Floam [sic: Flom] specifying the
year in which they each saw the video booth located in the so-
called Commercial
Craft facility. We did not accept in our original opinion nor
do we accept now, without confirming declarations, appellant's
own declarations or those of others averring or otherwise
declaring that declarants McLaughlin, Goman and Flom agreed to
the confidentially and limited control of the video booth in
this Commercial Craft facility before the critical date. We
do not question that appellant's own direct declaration and
those of other individuals may be probative of a pattern of
behavior of individuals agreeing to the confidentiality and
limited control of access of the video booth at the time it
was seen by the respective individuals.
We made specific findings at the top of page 5 of our
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Application No. 08/500,231
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original opinion regarding the declarations of Mr. Flom and
Goman. Mr. Flom's declaration of August 2, 1989, indicates
that he saw the prototype booth operating satisfactory during
the month of September 1987, but this declaration contains no
statement of confidentiality and no statement as to where the
booth was located when it was seen by the declarant. The
subsequently filed declaration filed in August of 1995 from
Mr. Flom, although it includes a statement of confidentiality,
does
not indicate in what year he observed the booth in operation
at the Commercial Craft facility. Because this is a
subsequently filed declaration, we do not have the certainty
we require that the booth was seen to be operated after the
critical date of March 22, 1987. The observations by Mr. Flom
past the critical date are not probative of the issue before
us.
A similar conclusion can be reached with the declarations
from Mr. Goman. His July 31, 1987, declaration indicates that
he saw the prototype video booth operating satisfactory during
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Application No. 08/500,231
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the month of April 1987, while, on the other hand, the
subsequently filed declaration on July 31, 1995 does not
include the year in which Mr. Goman saw the operation of the
booth at the Commercial Craft facility even though the
declaration of this date indicates an agreement as to
confidentiality. The initial declaration contains no
statement as to where the booth was located when it was seen
by the declarant. Again, any events that occurred after the
critical date are not probative of the issue before us as it
applies to Mr. Goman.
As to the third individual in question, Mr. McLaughlin,
his initial declaration of July 31, 1989 indicates that he saw
the
prototype video booth operating satisfactory during the month
of March 1987. While not indicating any sense of any
agreement as to confidentiality in this declaration, it cannot
be determined
from this declaration that he saw the operation of the
prototype
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Application No. 08/500,231
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video booth before or after the critical date of March 22,
1987. There is also no statement as to where the booth was
located when it was seen by the declarant. His subsequently
filed declaration filed on July 31, 1995, does not cure these
defects even though it does indicate that a sense of
confidentiality was agreed to while at the same time no year
was specified as to when he observed the prototype booth in
the Commercial Craft facility. Again, since this was a
subsequently filed declaration, we remain unpersuaded that he
agreed to any sense of confidentiality before the critical
date.
In essence, we remain unconvinced that all of the people
who observed the prototype video booth in operation before the
critical date agreed to the confidentiality and limited
control thereof at the Commercial Craft facility as required
at the direction of the presiding judge in the Federal
District Court discussed earlier in this opinion and noted at
the top of page 3 of our earlier opinion. Even if we consider
collectively both
declarations from each of the three declarants, McLaughlin,
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Application No. 08/500,231
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Flom and Goman, it has not been convincingly established to us
by their own declarations that each of them respectively
agreed to the confidentiality concerning any demonstrations of
the prototype claimed invention before the critical date. It
is not sufficient for appellant and/or other people to make
declarations that other people were made subject to
confidentiality and the complete control of the facility was
maintained prior to the critical date without confirming
declarations or affidavits from the respectively named
individuals. As set forth at the bottom of page 4 of our
original opinion, we can conclude only that not all of the
people who saw the video booth at the Commercial Craft
facility were made subject to secrecy agreements and that
complete control of that facility was not maintained prior to
the critical date. The public policy considerations
underlying the prior public use provisions of 35 U.S.C. §
102(b) demand no less.
Finally, we considered at page 5 of our original opinion,
the particulars regarding the alleged special consideration
aspects of appellant's arguments relating to independent claim
31 and its dependent claims. This claim focuses on the two-
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Application No. 08/500,231
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way
mirror feature of the claimed invention. We required proper,
additional declarations from the three earlier noted
individuals subsequent to our earlier decision on appeal to
obviate any sub-
issue with respect to the special considerations as well as
the assertion of private experimental use also discussed at
the bottom of page 6 of our last decision in Appeal No. 94-
1463 to which we made specific reference and incorporated by
reference into our original opinion in March of this year
(2000). Paragraphs 46 and 47 of appellant's request for
rehearing merely indicate that appellant's attempts to seek
the subsequent declarations "were unsuccessful". In paragraph
47 of the request for rehearing appellant urges the allowance
of claim 31 and its dependent claims "because these
indiviguals [sic] said it was too long ago to specifically
recall details about their involvement with the booth." On
their face, appellant's urgings do not convince us of any
error in our original opinion as to any subissue relating to
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Application No. 08/500,231
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claim 31 and its respective dependent claims.
In view of the foregoing, appellant's request for
rehearing is granted to the extent that we have in fact
reviewed our findings but is denied as to making any change
therein.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ERROL A. KRASS )
Administrative Patent Judge )
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Application No. 08/500,231
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vsh
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Henry W. Cummings
3313 W. Adams Street
St. Charles, MO 63301