Ex Parte Stolte et al

Patent Trial and Appeal Board

Mar 30, 2017

11806268 (P.T.A.B. Mar. 30, 2017)

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.
11/806,268 05/30/2007 John Stolte ORBC.1001 6074
48222 7590 04/03/2017
KEVIN J. MCNEELY, ESQ.
BROWDY & NEIMARK, PLLC
1625 K STREET, NW
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
LI, CE LI
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
kmcneely @ bro wdy neimark. com
rdavis @ browdyneimark. com
kj m @ patentek.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN STOLTE, ANTHONY ROBINSON, and
ANTHONY HOPKO
Appeal 2015-000623
Application 11/806,268
Technology Center 3600
Before LINDA E. HORNER, BRANDON J. WARNER, and
JASON W. MELVIN, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John Stolte et al. (Appellants)1 seek our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Office Action, dated
December 4, 2013 (“Final Act.”), rejecting claims 1-5, 7-20, 23, and 24.
Appellants’ representative presented arguments at an oral hearing on March
16, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify ORBCOMM Inc. as the real party in interest. Appeal
Br. 3.
Appeal 2015-000623
Application 11/806,268
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “space-based network
architecture for detection and monitoring of global maritime shipping using
an automatic identification system.” Spec. 2. Claims 1, 7, 12, and 16 are
independent. Claim 1 is illustrative of the subject matter on appeal and is
reproduced below.
1. A spaced-based system to simultaneously track and
monitor one or more ocean going vessels at any point on the
earth, the system comprising:
a plurality of satellites, each satellite including:
an automatic identification system (AIS)
communications payload to receive AIS signals including
AIS information transmitted from the one or more vessels
and to transmit the received AIS information; and
a plurality of ground earth elements, each ground earth
element including:
a receiver to receive the AIS information
transmitted from one or more of the plurality of satellites
and globally track and monitor the one or more vessels
based on the AIS information received from the
communications payload,
wherein the plurality of satellites are distributed in two or
more orbital planes located at a substantially common altitude
and having a substantially common inclination; and
wherein the system comprises at least one processor to
actively separate at least some of the AIS signals from among
co-channel AIS signals simultaneously arriving at the AIS
communications payload of at least one of the plurality of
satellites, including multiple iterations of an interference
cancellation method that comprises successively removing
recovered AIS signal waveforms from one of the signals received
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Application 11/806,268
by the payload, and wherein the processor demodulates AIS
signals using orthogonal coherent detectors.
REJECTIONS
The Final Action includes the following grounds of rejection:
1. Claims 1-5, 7-9, 12-17, 20, 23, and 24 are rejected under
35 U.S.C. § 103(a) as unpatentable over Eriksen2 and Moser.3
2. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Eriksen, Moser, and Yanagi.4
3. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Eriksen, Moser, and Hakoyama.5
ANALYSIS
Appellants do not contest the Examiner’s findings as to the scope and
content of Eriksen and Moser, the Examiner’s stated reason to modify
Eriksen with the teaching of Moser, or the Examiner’s determination that the
system of Eriksen, as modified by Moser, would render obvious the subject
matter of claim 1. Rather, Appellants confine their arguments to a
presentation of evidence purporting to establish the subject matter disclosed
in Moser that is relied on by the Examiner in all three grounds of rejection is
not “by another,” and thus, Moser is unavailable as prior art to the claims on
appeal under 35 U.S.C. §§ 102(a) or 102(e). Appeal Br. 15-29.
2 T. Eriksen et al., “Maritime traffic monitoring using a space-based AIS
receiver,” Acta Astronautica 58 (available online March 31, 2006) 537-549.
3 US 2005/0254593 Al, published November 17, 2005.
4 US 2006/0129288 Al, published June 15, 2006.
5 JP 2005-181078A, published July 7, 2005 (English Language Abstract).
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Application 11/806,268
Specifically, Appellants assert that Moser does not quality as prior art
against the claimed invention because the subject matter of Moser relied on
by the Examiner “describes appellant’s own work.” Appeal Br. 17.
Appellants submit evidence to support their position, contending that
portions of Moser were copied from documentation of ORBCOMM, the
assignee of the application on appeal. Id.', see also Declaration Under
37 C.F.R. § 1.132 of Greg Flessate, dated August 21, 2013 (hereinafter
“Flessate Dec.”).6 As such, the outcome of this appeal turns on the status of
Moser as prior art under 35 U.S.C. § 102 as to each of the claims on appeal.
Availability of Moser as Prior Art under 35 U.S.C. § 102(b)
Appellants assert that Moser is unavailable as prior art under
35 U.S.C. § 102(b) because: (1) all of the claims of the present application
are fully supported by the ORBCOMM provisional application7; and
(2) Moser was published on November 17, 2005, less than a year before the
May 30, 2006 filing date of the ORBCOMM provisional application.
Appeal Br. 17.
6 The Flessate Declaration is accompanied by two exhibits: (1) ORBCOMM
documentation entitled, “AIS Co-Channel Interference Information,”
4 pages (date unknown) (hereinafter “ORBCOMM Document”); and
(2) ORBCOMM Concept Demonstration Spacecraft Communications
Payload Specification, cover page and pages 27-28 (January 16, 2003)
(hereinafter “ORBCOMM Specification”).
7 The application on appeal (Appl. 11/806,268) was filed on May 30, 2007,
and claims the benefit of priority of Provisional Appl. 60/809,011, filed May
30, 2006.
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Application 11/806,268
Appellants failed to provide any showing in the briefings to
demonstrate that the subject matter of each claim is supported by the
ORBCOMM provisional application. We examined the subject matter of
each claim, and found that at least the subject matter of dependent claims 9-
11 and 19 is not adequately supported by the ORBCOMM provisional
application so as to entitle these claims to the benefit of the provisional filing
date. Thus, Moser qualifies as prior art to these dependent claims under
35 U.S.C. § 102(b). The declaration evidence submitted by Appellants
cannot be relied upon to remove a reference that qualifies as prior art under
35 U.S.C. § 102(b). As noted supra, Appellants have not averred any error
in the substantive rejection of claims 9-11 and 19 under 35 U.S.C. § 103(a)
as unpatentable over Eriksen and Moser. Accordingly, we sustain the
rejection of claims 9-11 and 19 under 35 U.S.C. § 103(a).
We now consider the declaration evidence as it relates to the prior art
status of Moser vis-a-vis the remaining claims on appeal.
Availability of Moser as Prior Art under 35 U.S.C. § 102(a)/(e)
Appellants argue that paragraphs 11 and 38 of Moser “describe[]
appellant’s own work.” Appeal Br. 17. A showing that subject matter in a
printed publication is an applicant’s own work can be relied upon to remove
a prior art reference under 35 U.S.C. §§ 102(a) or (e). In re Katz, 687 F.2d
450, 454 (CCPA 1982) (“one’s own work is not prior art under § 102(a)
even though it has been disclosed to the public in a manner or form which
otherwise would fall under § 102(a)); In re Mathews, 408 F.2d 1393, 1396
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Application 11/806,268
(CCPA 1969) (holding that a Rule 132 declaration can be used to show that
subject matter disclosed in prior art reference under 35 U.S.C. § 102(e) was
the inventor’s own work and not by another).
In Katz, the prior art publication consisted of an article published by
three authors, only one of whom was the named inventor on the patent
application being examined. 687 F.2d at 455. The court in Katz noted that
the discrepancy between the authors listed in the article and the inventor
listed in the application created an ambiguity as to who invented the subject
matter disclosed in the article, on which the Examiner relied in the rejection.
Id. The court held that “[i]t was incumbent, therefore, on appellant to
provide a satisfactory showing which would lead to a reasonable conclusion
that he is the sole inventor.” Id. In Katz, the inventor provided a declaration
averring that he was the sole inventor of the subject matter described and
claimed in his application and also that was disclosed in the article. Id. The
inventor’s declaration also explained that the co-authors of the article “were
students working under the direction and supervision of the inventor, Dr.
David H. Katz.” Id. The court held that this showing by Dr. Katz was
sufficient to demonstrate that the cited article discloses his invention. Id. at
456.
In Mathews, the prior art publication consisted of a prior patent that
qualified on its face as prior art under 35 U.S.C. § 102(e). 408 F.2d at 1394.
The prior patent was filed by Dewey, a co-worker of Mathews. Id. The
court stated that the Dewey patent “is prima facie evidence that Mathews
was not the first inventor.” Id. at 1396. In response to the rejection,
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Application 11/806,268
Mathews submitted an affidavit by Mr. Dewey, in which Mr. Dewey averred
he did not conceive, make, or invent the subject matter at issue, and further
attested that Mr. Mathews disclosed the subject matter to him. Id. at 1394.
The court held that the uncontroverted evidence provided in Dewey’s
affidavit in combination with Mathews’s oath accompanying his application
were sufficient to provide that the relevant disclosure in Dewey was a
disclosure of Mathews’s invention. Id. at 1396.
Appellants’ evidence consists of the Flessate Declaration,
accompanied by the ORBCOMM Document and the ORBCOMM
Specification. During the relevant time period, Mr. Flessate was Executive
Director of Sales and Marketing at ORBCOMM. Flessate Dec., para. 1. Mr.
Flessate is not a named inventor in the application on appeal, and does not
aver to have any first-hand knowledge of circumstances or facts surrounding
conception of the subject matter claimed in the present claims on appeal or
the subject matter disclosed in the ORBCOMM Document, the ORBCOMM
Specification, or Moser. Rather, Mr. Flessate compared portions of the
ORBCOMM provisional application and Moser, and concluded that the
portions “are so similar that copying must have occurred.”8 Id. at para. 12.
This evidence is circumstantial, at best, and because the ORBCOMM
provisional application was filed on May 30, 2006, after the November 17,
8 Specifically, Mr. Flessate compared portions of disclosure on page 7 of the
ORBCOMM provisional application 60/809,011, filed May 30, 2006, with
paragraphs 8, 11, and 38 of Moser, filed April 8, 2005. Flessate Dec.,
paras. 6-11.
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2005 publication date of Moser, we decline to infer from the similarity of the
disclosures that these portions of Moser were copied from the ORBCOMM
provisional application.
Mr. Flessate further avers that the portions of the ORBCOMM
provisional application quoted in paragraphs 6, 8, and 10 of the Flessate
Declaration “were not copied from the Moser application” and “originated
with the inventors of [the ORBCOMM application].” Id. at paras. 13, 14.
Mr. Flessate, however, is not one of the inventors of the present application,
nor does he attest that he was involved with or had first-hand knowledge of
the preparation of the ORBCOMM provisional application. We have no
facts or evidence provided in his declaration to discern the basis on which
Mr. Flessate makes these assertions.
Further, we cannot rely on the original Combined Declaration and
Power of Attorney filed by the inventors and accompanying the application
filing of the present application for an averment that the inventors conceived
of the common subject matter because the original claims, to which the
Combined Declaration referred, did not include this common subject matter.
The Combined Declaration, filed by the inventors, attested, “I believe I am
. . . an original, first and joint inventor ... of the subject matter which is
claimed for which a patent is sought. . . .” Combined Dec., filed December
21, 2007. At the time of filing of this Combined Declaration, the subject
matter claimed did not include the now-claimed subject matter whose
conception is in question, viz:
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Application 11/806,268
at least some AIS signals received by at least one of the plurality
of satellites are actively separated by at least one processor from
among co-channel AIS signals simultaneously arriving at the one
of the plurality of satellites, including multiple iterations of an
interference cancellation method that comprises successively
removing recovered AIS signal waveforms from one of the
signals received by the satellite, and wherein the processor
demodulates AIS signals using orthogonal coherent detectors.
Compare Appeal Br. 30-35 (Claims App.), with Original Claims, filed on
May 30, 2007.
Mr. Flessate further attempts to provide evidence showing a transfer
of information from ORBCOMM to the Moser inventors’ employer, Avtec
Systems, Inc., “[pjrior to the April 8, 2005 filing date of the Moser
application.” Flessate Dec., paras. 18, 19; see also Appeal Br. 28
(Appellants alleging that “Avtec learned of the entirety of the subject matter
of appellant’s independent claims, as filed and as amended, from
ORBCOMM”). The statements and accompanying evidence provided in the
Flessate Declaration, however, do not adequately support Appellants’
position.
Mr. Flessate states that prior to Moser’s filing date, Avtec and
ORBCOMM were involved in discussions concerning a Statement of Work
for Avtec to work under a potential contract with ORBCOMM on
development of a space-based AIS received, and Avtec “received detailed
specifications from ORBCOMM pertaining to space-based AIS receivers.”
Id. at para. 19. Notably, Mr. Flessate does not attest that the documents
attached to his Declaration were the documents actually provided by
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ORBCOMM to Avtec, nor does Mr. Flessate provide copies of the exact
documentation provided by ORBCOMM to Avtec. Rather, Mr. Flessate
avers that the ORBCOMM Document “of unknown date” attached to the
Declaration contains passages that “are nearly identical to” several passages
of Moser.9 10Id. at para. 20. Mr. Flessate does not establish that the subject
matter in the passages of the ORBCOMM Document quoted in paragraph 20
of the Declaration was conceived by the inventors of the present application
on appeal. The Flessate Declaration lacks critical evidence demonstrating
the origination of the subject matter in common between the ORBCOMM
Document and Moser. There is no evidence, for example, establishing that
the common subject matter existed in an internal ORBCOMM document
prior to the commencement of discussions with Avtec. The Flessate
Declaration provides no dates for these discussions, except to state that the
discussions occurred prior to Moser’s filing date. That fact does not
establish who conceived of the common subject matter. In other words,
ORBCOMM simply having internal documents memorializing the common
subject matter prior to Moser’s filing date fails to establish that the inventors
of the ORBCOMM application on appeal conceived of the common subject
matter and shared it with Avtec and/or the Moser inventors. There is no
evidence in the Flessate Declaration, or the accompanying documents, to
preclude the possibility that during discussions between Avtec and
9 Specifically, Mr. Flessate compares passages from the ORBCOMM
Document with the portions of paragraphs 8 and 11 of Moser that are quoted
in paragraphs 7 and 9 of the Flessate Declaration. Flessate Dec., para. 20.
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ORBCOMM some of the common subject matter originated from Avtec, and
ORBCOMM simply memorialized these details in its internal documents
before the Moser filing date. The Flessate Declaration provides only
circumstantial evidence of similarity between passages of ORBCOMM
documents and portions of Moser, without adequate evidence to show that
Appellants invented the common subject matter and disclosed this common
subject matter to Avtec.
The Appeal Brief and the Flessate Declaration make much of the
similarity between the usage of the phrase “[t]he ORBCOMM specification
dictates” in the ORBCOMM Document and the phrase “[t]he applicable
specification may dictate” in paragraph 7 of Moser. Appeal Br. 26
(describing this similarity as the “smoking gun” showing that the Moser
inventors copied from ORBCOMM”); Flessate Dec., paras. 21-26 (stating
that an ORBCOMM specification “did exist as of January 16, 2003, which is
prior to [Moser’s filing date]”). As we noted supra, ORBCOMM simply
having internal documents memorializing the common subject matter prior
to Moser’s filing date fails to establish that the inventors of the ORBCOMM
application on appeal contributed the common subject matter and shared it
with Avtec and/or the Moser inventors. There is no evidence in the Flessate
Declaration, or the accompanying evidence, to preclude the possibility that
during discussions between Avtec and ORBCOMM some of the common
subject matter originated from Avtec, and ORBCOMM simply
memorialized these details in its internal documents before the Moser filing
date. In other words, the fact that Moser may refer to an existing
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specification in paragraph 7 does not establish that the subject matter
disclosed in that specification was conceived of by the inventors of the
application on appeal. Because we do not know when ORBCOMM and
Avtec commenced their discussions, we decline to infer that the details in
the ORBCOMM Specification document were solely the work of
ORBCOMM employees, and more specifically, the work of the inventors of
the application on appeal.10
Appellants contend that “[t]he evidence that the Moser inventors
‘learned of applicant’s invention from applicant’ is established by the
evidence of copying detailed on pages 24-27 of appellant’s appeal brief’
and “under In re Mathews, no further ‘evidence/documents to show what
exactly Moser/Avtec Systems received during those discussions’ is
required.” Reply Br. 2. As noted supra, in Mathews, the applicant supplied
a declaration from the inventor of the prior art Dewey patent, which averred
that Mr. Dewey did not conceive, make, or invent the subject matter at issue,
and further attesting that Mr. Mathews disclosed the subject matter to him.
408 F.2d at 1394. The Patent Office contended that a Rule 131 affidavit by
the inventor to antedate the Dewey patent was the only way of removing
Dewey as prior art under 35 U.S.C. § 102(e). The court disagreed, noting:
When the 102(e) reference patentee got knowledge of the
applicant’s invention from him, as by being associated with him,
10 We note that even if Mr. Moser derived the common subject matter from
discussions with and documents provided by ORBCOMM, that fact does not
establish that these disclosures were “appellant’s own work” and not the
work of other employees at ORBCOMM.
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... and thereafter describes it, he necessarily files the application
after the applicant’s invention date and the patent as a ‘reference’
does not evidence that the invention, when made, was already
known to others.
Id. at 1396 (quoting In re Land, 368 F.2d 879, 824-25 (CCPA 1966).
Unlike in Mathews, we do not have before us evidence from the Moser
inventors disclaiming inventorship of the common subject matter or attesting
to Appellants’ inventorship of the common subject matter. We do not mean
to state that a declaration from the 102(e) reference inventors is required.
The Flessate Declaration, however, fails to establish adequately that the
Moser inventors received knowledge of the Appellants’ invention from the
Appellants. As such, we disagree with Appellants’ contention that “no
further ‘evidence/documents to show what exactly Moser/Avtec Systems
received during those discussions’ is required.” Reply Br. 2.
For these reasons, the evidence provided in the Flessate Declaration is
not sufficient to establish that the relevant disclosure in Moser was a
disclosure of Appellants’ own invention. Accordingly, we sustain the
rejections of claims 1-5, 7, 8, 12-18, 20, 23, and 24 under 35 U.S.C.
§ 103(a).
DECISION
The decision of the Examiner to reject claims 1-5, 7-20, 23, and 24 is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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