Kentv.Odman et al.

Board of Patent Appeals and Interferences

Mar 28, 2011

11371351 (B.P.A.I. Mar. 28, 2011)

BoxInterferences@uspto.gov
Tel: 571-272-4683

Paper 35
Filed: 28 March 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
DELBERT ODMAN and DAVID MAX KENT
Junior Party
(Application No. 12/283,583),
v.
DAVID MAX KENT
Senior Party
(Application No. 11/371,351).
_______________
Patent Interference No. 105,748 (SCM)
(Technology Center 3700)
_______________

Before RICHARD SCHAFER, SALLY GARDNER LANE and
SALLY C. MEDLEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
JUDGMENT – Bd. R. 127 1
Odman motion 1 was denied, since Odman failed to sufficiently 2
demonstrate that Delbert Odman contributed in a significant manner to the 3
conception of the invention defined by at least one of the counts. (Paper 34). 4
Accordingly, judgment is entered against Odman. 5
It is 6
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ORDERED that judgment is entered against Odman for Counts 1-18, 1
(Paper 1 at 4-6); 2
FURTHER ORDERED that claims 2-4, 6-8, 10, 12-17 and 35-39 of 3
Odman’s involved Application 12/283,583, which correspond respectively 4
to Counts 1-18 (Paper 1 at 4-7), are finally REFUSED, 35 U.S.C. § 135(a); 5
FURTHER ORDERED that the parties shall note the requirements 6
of 35 U.S.C. § 135(c) and Bd. R. 205; and 7
FURTHER ORDERED that a copy of this judgment be entered in 8
the administrative records of the involved Odman Application 12/283,583 9
and Kent Application 11/371,351. 10
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3
cc (via electronic mail): 1
Attorney for Odman: 2
Michelle Bos 3
Michelle Bos Legal LLC 4
P.O. Box 803 5
Zillah, WA 98953 6
(509) 945-2822 7
mbos@michelleboslegal.com 8
Chris E. Svendsen 9
Svendsen Legal LLC 10
P.O. Box 10627 11
Yakima, WA 98909 12
(509) 949-6707 13
csven@svenlegal.com 14
Kent (pro se): 15
David M. Kent 16
10114 SE 225th Place 17
Kent, WA 98031 18
(206) 612-1722 19
dmkent4@comcast.net 20
BoxInterferences@uspto.gov
Tel: 571-272-4683

Paper 34
Filed: 28 March 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
DELBERT ODMAN and DAVID MAX KENT
Junior Party
(Application No. 12/283,583),
v.
DAVID MAX KENT
Senior Party
(Application No. 11/371,351).
_______________
Patent Interference No. 105,748 (SCM)
(Technology Center 3700)
_______________

Before RICHARD SCHAFER, SALLY GARDNER LANE and
SALLY C. MEDLEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION – MOTIONS – Bd. R. 125 1
A. Introduction 2
The interference is before us to decide Odman Motion 1. Odman 3
moves for judgment on the basis of inventorship. (Paper 25 at 3:1-5). 4
Odman Motion 1 is DENIED. 5
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B. Findings of Fact (“FF”) 1
1. Odman is involved in the interference on the basis of Application 2
12/283,583 (“‘583 Application”) filed 12 September 2008. 3
2. Kent is involved in the interference on the basis of Application 4
11/371,351 (“‘351 Application”) filed 08 March 2006. 5
3. There are 18 Counts in the interference, Count 7 is representative and 6
is as follows: 7
A loader, comprising: 8
(a) a sling; 9
(b) a lowering mechanism in contact with the sling that can 10
lower the sling; 11
(c) a release mechanism that secures at least one side of the 12
sling; 13
(d) a take-up mechanism attached to the sling on the side 14
opposite from the release mechanism; and 15
(e) a set of flippers that are actuatable from a horizontal 16
position to a vertical position. 17
4. According to Delbert Odman, Applied Engineering, Inc. was formed 18
by Delbert Odman, David Kent and Jeff Clark in 2003 to develop packing 19
line products for Packing House Services Inc., owned by Odman and his 20
family. (Ex. 2001, ¶¶ 1-3). 21
5. Delbert Odman’s son Jeff Odman testified that during 2003 and 2004 22
Kent and Delbert Odman spent many hours working to develop a new 23
machine for inserting fruit trays into packing cartons. (Ex. 2002, ¶ 3). 24
6. According to Delbert Odman and Jeff Odman, Kent and Delbert 25
Odman discussed and physically experimented with straps for lowering fruit 26
trays into packing cartons. (Ex. 2001, ¶ 8; Ex. 2002, ¶ 4). 27
7. Delbert Odman also testified that he and Kent worked on the 28
development of a box loader, offered suggestions to one another, solved 29
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engineering problems and improved the design over the course of several 1
months as the invention evolved. (Ex. 2001, ¶¶ 9-11). 2
8. According to Delbert Odman, Applied Engineering ceased doing 3
business in 2004 or 2005, and Kent became associated with Seatac 4
Automation Systems LLC while Odman continued his involvement with 5
Packing House Services, Inc. (Ex. 2001, ¶¶ 17-18). 6
9. Kent filed the ‘351 Application on 08 March 2006, the rights of which 7
are assigned to Seatac Automation Systems LLC. 8
10. The ‘351 Application lists Kent as the sole inventor. 9
11. Odman filed the ‘583 Application on 12 September 2008, with an oath 10
listing Odman and Kent as joint inventors, bearing only Odman’s signature. 11
12
12. Odman’s ‘583 specification and claims are identical to Kent’s ‘351 13
specification and claims. (Paper 25 at 11:26). 14
C. Analysis 15
This interference involves an inventorship dispute between Odman 16
and Kent. Delbert Odman believes that he is a joint inventor of the claimed 17
subject matter, while David Kent believes that he is the sole inventor of the 18
claimed subject matter. Kent filed first, followed by Odman who filed an 19
identical specification and claims, listing Kent as a co-inventor. This 20
interference was declared to resolve the inventorship dispute. See Chou v. 21
University of Chicago, 254 F.3d 1347, 1358 n.2 (Fed. Cir. 2001) (a means 22
for a putative inventor to assert inventorship rights is to file a patent 23
application and seek to have the PTO declare an interference in order to 24
establish inventorship). 25
Odman substantive Motion 1 is for judgment under 35 U.S.C. 102(f) 26
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against Kent on the basis that the Kent ‘351 Application names the incorrect 1
inventors. (Paper 25 at 3:1-5, 9-10). As the moving party, Odman bears the 2
burden of establishing that it is entitled to the requested relief. Bd. R. 3
41.121(b). 4
The issue of joint inventorship is governed by 35 U.S.C. 116, which 5
provides that: 6
[w]hen an invention is made by two or more persons jointly, 7
they shall apply for patent jointly and each make the required 8
oath, except as otherwise provided in this title. Inventors may 9
apply for a patent jointly even though (1) they did not 10
physically work together or at the same time, (2) each did not 11
make the same type or amount of contribution, or (3) each did 12
not make a contribution to the subject matter of every claim of 13
the patent. 14
Conception is the touchstone of inventorship and each joint inventor 15
must contribute to the conception of the claimed invention. Ethicon, Inc. v. 16
U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir 1998). Conception 17
exists when there is a definite and permanent idea of an operative invention, 18
including every feature defined by the count. Sewall v. Walters, 21 F.3d 19
411, 415 (Fed. Cir. 1994). “[A] joint inventor must contribute in some 20
significant manner to the conception of the invention.” Fina Oil and Chem. 21
Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997). As such, “each inventor 22
must contribute to the joint arrival at a definite and permanent idea of the 23
invention as it will be used in practice.” Burroughs Wellcome Co. v. Barr 24
Labs, Inc., 40 F.3d 1223, 1229 (Fed Cir. 1994). There must be 25
corroborating evidence for any asserted contribution to the conception of the 26
invention. Fina, 123 F.3d at 1474 (Fed. Cir. 1997). 27
This interference was declared with 18 counts. For Odman to prevail, 28
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Odman must demonstrate that Odman contributed in some significant 1
manner to the conception of at least one count. The burden of proof is a 2
preponderance of the evidence. 3
Odman’s motion is brief. The motion consists of a repeat of the listed 4
facts (Paper 25 at 4:9-at 5:11 compared with 9-12) and Odman’s analysis 5
that consists of a single paragraph (Paper 25 at 6:14-7:5). In its analysis 6
paragraph, Odman does not articulate nor direct us to evidence of Delbert 7
Odman’s specific contribution to a conception of the invention defined by 8
any of Counts 1-18. Instead, Odman’s evidence indicates that there were 9
general discussions between Odman and Kent regarding possible methods 10
for lowering trays into packing cartons and physical experiments with plastic 11
load straps. (Ex. 2001, ¶ 8; Ex. 2002, ¶ 4). For example, Delbert Odman 12
testified that: 13
[i]n the course of a discussion regarding possible methods for 14
lowering cardboard fruit trays into packing cartons, Kent and I 15
picked up plastic load straps and held the straps between us, 16
using the straps to lower the trays. We experimented with ways 17
to raise and lower the strap, as well as how to hold the strap in 18
place and how to get it out of the way when the tray is ready to 19
be released. 20
(Ex. 2001, ¶ 8). While the above may indicate that Kent and Odman 21
performed different “possible methods” for lowering fruit trays into packing 22
cartons using plastic straps, we do not know how such acts demonstrate a 23
conception of any one of the counts. All of the counts include an apparatus, 24
e.g., a loader with various mechanical parts. For example, Count 7 recites a 25
loader that includes a sling, a lowering mechanism in contact with the sling, 26
a release mechanism that secures one side of the sling, a take-up mechanism 27
attached to the sling on the side opposite the release mechanism and a set of 28
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flippers. When read in light of the Kent specification1, it is apparent that the 1
loader is a machine with various parts corresponding to the claimed elements 2
and not two individual humans lowering trays into a box. Odman’s 3
argument and evidence do not address the elements of the loader apparatus 4
defined by any of the counts; i.e., the loader machine with a sling, lowering 5
mechanism, release mechanism, take-up mechanism and set of flippers. The 6
only element that is arguably the same as an element in any of the counts is 7
the sling, i.e., formed by the plastic straps that Odman and Kent allegedly 8
held in their hands and used to lower trays into boxes. Even assuming that 9
the straps identified in Odman’s evidence (Ex. 2001, ¶ 8; Ex. 2002 ¶¶ 4-5) 10
are the same as a sling, Odman admits that it was Kent that initially 11
proposed using the straps to lower the trays; not Delbert Odman. (Paper 25 12
at 6:17-18; Ex. 2002, ¶ 5). 13
Odman additionally argues that Odman contributed to the process of 14
designing the patentable box loader, making vague references to “extensive 15
experimentation and collaboration”. (Paper 25 at 6:16-17; 7:4-5). These 16
arguments are not specific in any way. We do not know to which 17
experimentation or collaboration Odman is referring. Odman’s evidence to 18
which we are directed is also not specific. That evidence generally describes 19
that Kent and Odman (i) worked on the project, (ii) communicated with one 20
another and offered suggestions to one another, (iii) developed a machine, 21
(iv) solved engineering problems, and (v) improved the design (Ex. 2001, ¶¶ 22
9-11; Ex. 2002, ¶ 3). The evidence merely shows that Odman may have 23
generally contributed work, suggestions, solutions, and design 24
improvements that may or may not have ended up in the invention defined 25

1 The Odman specification is identical.
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by any of Counts 1-18. Odman’s arguments and evidence are not specific 1
with respect to the elements of any of the counts and therefore does not 2
provide sufficient information to enable us to ascertain whether Odman’s 3
work, suggestions, solutions or design improvements found their way into, 4
or were a significant contribution to, the invention defined by any one of 5
Counts 1-18. 6
For all these reasons, Odman has not sufficiently demonstrated joint 7
inventorship by showing that Odman contributed in a significant manner to 8
the conception of the invention defined by at least one of the counts. Since 9
Odman failed to sufficiently demonstrate that it is entitled to the relief 10
sought, we need not and have not considered Kent’s Opposition or Odman’s 11
Reply. 12
D. Order 13
It is 14
ORDERED that Odman Motion 1 is DENIED. 15
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8
cc (via electronic mail): 1
Attorney for Odman: 2
Michelle Bos 3
Michelle Bos Legal LLC 4
P.O. Box 803 5
Zillah, WA 98953 6
(509) 945-2822 7
mbos@michelleboslegal.com 8
Chris E. Svendsen 9
Svendsen Legal LLC 10
P.O. Box 10627 11
Yakima, WA 98909 12
(509) 949-6707 13
csven@svenlegal.com 14
Kent (pro se): 15
David M. Kent 16
10114 SE 225th Place 17
Kent, WA 98031 18
(206) 612-1722 19
dmkent4@comcast.net 20