Ex Parte Wang

Patent Trial and Appeal Board

May 29, 2014

11824030 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KONGQIAO WANG
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Appeal 2011-013212
Application 11/824,030
Technology Center 2100
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Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013212
Application 11/824,030

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-18 and 20-47. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. An electronic device comprising:
at least one memory configured to store an image
database; an image annotation database; and at least one
program configured to control the electronic device when
executed;
at least one display device configured to display visual
information;
control apparatus configured to receive control
commands from a user of the electronic device; and
at least one data processor configured to execute the at
least one program, wherein when the at least one program is
executed the electronic device is configured to receive an
image; to perform face detection on the image to locate face
components; in response to detection of at least one face
component containing a face of at least one person, to save
image annotation information identifying the location of the
face component within the image to the image annotation
database; to present the image using the display to a user so that
the at least one face component is emphasized; to receive
additional image annotation information selected by the user,
the additional image annotation information concerning the at
least one person; and to save the additional image annotation
information to the image annotation database.

Appeal 2011-013212
Application 11/824,030

3
Appellant appeals the following rejections:
1. Claims 1-3, 5-18, and 21-46 under 35 U.S.C. § 102(e) as
anticipated by Wen (US 2008/0298766 A1; pub. Dec. 4, 2008).
2. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Wen
and Glenner (US 2006/0148500 A1; pub. Jul. 6, 2006).
3. Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Wen
and Jung (US 2008/0106621 A1; pub. May 8, 2008).
4. Claim 47 under 35 U.S.C. § 103(a) as unpatentable over
Glenner and Wen.

ISSUE
Did the Examiner properly consider the declaration under 37 C.F.R.
§ 1.131?

ANALYSIS
The Appellant argues that the Examiner did not properly consider the
Inventor’s declaration under 37 C.F.R. § 1.131. The Appellant submitted
the declaration to swear behind the Wen reference.
Rule 131 requires a factual showing of either (1) an actual reduction
to practice before the critical date or (2) conception prior to the critical date
coupled with due diligence. In re Borkowski, 505 F.2d 713, 718-19 (CCPA
1974).
The declaration of the inventor states that the claimed invention was
conceived prior to the filing date of the Wen reference. The declaration
further states that the invention was reduced to practice by the filing of the
instant patent application and that the Appellant exercised due diligence
Appeal 2011-013212
Application 11/824,030

4
from the conception of the invention to the filing of Appellant’s patent
application. As such, the declaration was filed to establish conception prior
to the critical date coupled with due diligence, not to establish an actual
reduction to practice before the critical date.
The Examiner found that the declaration was defective because the
declaration did not correlate the evidence of reduction to practice to the
claims. The Examiner stated that the declaration must establish possession
of either the whole invention claimed or something falling within the claim
(such as a species of a claimed genus) in a sense that the claims as a whole
reads on it (Ans. 5). The Examiner, thus, evaluated the declaration for
whether it showed an actual reduction to practice before the filing date of the
Wen reference.
As such, the Examiner did not properly consider the declaration
evidence. In the absence of any response by the Examiner that specifically
addresses the inadequacies of the declaration to show conception coupled
with due diligence from that conception to the filing of Appellant’s patent
application, we conclude that a preponderance of the evidence weighs in
favor of Appellant’s unrebutted position. Therefore, we find that the
Appellant conceived the invention prior to the filing date of the Wen
reference and that the Appellant exercised due diligence from the conception
to the filing of the instant application.
In view of the foregoing, we will not sustain the rejection of the
Examiner.

Appeal 2011-013212
Application 11/824,030

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. DECISION
We reverse the Examiner’s § 102(e) and § 103(a) rejections.

REVERSED

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