ONAPP LIMITED

Patent Trials and Appeals Board

Mar 21, 2022

2020004367 (P.T.A.B. Mar. 21, 2022)

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. 13/788,363 03/07/2013 Julian Chesterfield 43762/300 6162 32642 7590 03/21/2022 STOEL RIVES LLP - SLC 201 SOUTH MAIN STREET, SUITE 1100 ONE UTAH CENTER SALT LAKE CITY, UT 84111 EXAMINER MIRZA, ADNAN M ART UNIT PAPER NUMBER 2453 NOTIFICATION DATE DELIVERY MODE 03/21/2022 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): patlaw@stoel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIAN CHESTERFIELD Appeal 2020-004367 Application 13/788,363 Technology Center 2400 Before MAHSHID D. SAADAT, JAMES R. HUGHES, and JASON J. CHUNG, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2022). Appellant identifies the real party in interest as OnApp Limited. Appeal Br. 4. Appeal 2020-004367 Application 13/788,363 2 CLAIMED SUBJECT MATTER The claims are directed to “data storage system in which multiple data storage units are connected together over a network,” wherein “[b]y maintaining a local record of the metadata received over the network, each storage node can establish a live picture of the data stored in the other storage nodes.” Spec. ¶¶ 2, 13. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A computer data storage network, comprising: a plurality of storage nodes connected together to provide an integrated storage resource; wherein each storage node is configured to prepare a file including information concerning data stored at the storage node, and to send the file to the other storage nodes in the computer data storage network, and wherein each storage node is configured to receive files that are sent by the other storage nodes; and wherein each storage node is configured to maintain a local record of the files received over the computer data storage network. Appeal Br. 25 (Claims App.). Independent claims 14-16 recite similar file information sharing. Appeal Br. 27-28 (Claims App.). REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Smith US 2013/0218840 A1 Aug. 22, 2013 REJECTION The Examiner maintains the following rejection: Claims 35 U.S.C. § References 1-20 102(e) Smith Appeal 2020-004367 Application 13/788,363 3 OPINION During prosecution, Appellant submitted a Declaration under 37 C.F.R. § 1.131 of the named inventor, Julian Chesterfield, on April 12, 2018 (the “Chesterfield Declaration”) in an effort to overcome the rejection of then pending claims 1-20 under 35 U.S.C. § 102(e) as anticipated by Smith. Mr. Chesterfield states, in that declaration, that he conceived the claimed invention before February 17, 2012 (the effective date of the Smith reference), and that he worked diligently, from before February 17, 2012 until March 15, 2012 (the effective foreign filing data of the instant application), to reduce the invention to practice and finalize the application for patent. Additionally, the inventor’s representative, Peter Arrowsmith, provided two declarations on April 12, 2018 and July 29, 2019 (the “Arrowsmith 2018 Declaration” and “Arrowsmith 2019 Declaration)” stating that the Power Point slides sent by the inventor (submitted as Exhibit A) was the basis and support for the application Mr. Arrowsmith prepared for the inventor. The Examiner determined that because Appellant failed to allege facts and present evidence sufficient to satisfy the requirements of Rule 131, the 2018 and 2019 Rule 131 Declarations were ineffective to remove Smith as a reference. In his declaration, Mr. Chesterfield states that he invented the claimed subject matter before February 17, 2012, as evidenced by a series of emails and a set of slides, attached in the accompanying Exhibit A. He also declares that he worked diligently, from before February 17, 2012 until March 15, 2012, to reduce the invention to practice and finalize the application for patent, as evidenced by accompanying Exhibits B and C. Additionally, the Arrowsmith 2019 Declaration includes a table in Appeal 2020-004367 Application 13/788,363 4 subheading “(A)” on pages 2-5 that corresponds the content of the slides in Exhibit A with the recited features of the claims in this appeal. The Arrowsmith 2019 Declaration further includes subheading “(B)” on pages 5- 7 that outlines the activities related to client contacts and preparation of the patent application according to their dates starting from Feb. 15, 2012 up to the filing data of the instant application. The Examiner takes the position, as set forth in the Final Office Action, that Appellant’s submitted evidence, i.e., the PowerPoint slides identified as the email attachment shown in Exhibit A of the Chesterfield Declaration, is insufficient to establish the relationship of the submitted information to diligence by failing to account for the entire period in which diligence is required. Final Act. 2-3. The Examiner, thus, maintains that the claims are properly rejected as anticipated by Smith. Id. at 6-8. In response to Appellant’s contentions, the Examiner states that the PowerPoint slides in Exhibit A fail to provide a date and the documents in Exhibits B and C, although having dates, do not show due diligence and therefore fail to overcome the prior art effective filing data of February 17, 2012. Ans. 3-4. Appellant argues that the submitted declarations “attest to the factuality or correctness of the proof or evidence provided, including the PowerPoint invention presentation (i.e., the invention disclosure, in this case) explaining the invention, emails documenting the delivery of the invention presentation and a meeting between the inventor and the European patent attorney,” which reflect ongoing work during the “Critical Period” to prepare the application. Appeal Br. 12. According to Appellant, the date of the PowerPoint slides is at least on or before February 13, 2012, the date the slides were sent as an attachment to an email on that date, as evidenced by Appeal 2020-004367 Application 13/788,363 5 the statement in an email data February 13, 2012. Id. at 13 (citing Exhibit C 8). Appellant further argues that the journal entries shown in Exhibit B support the attorney’s diligence as early as February 15, 2012, which predates the Smith reference. Appeal Br. 13-14. 2 37 C.F.R. § 1.131 provides that a party, in certain circumstances, may establish, by a showing of facts, invention prior to a reference applied in a rejection and, thus, remove that reference as available prior art. See 37 C.F.R. § 1.131(a). The rule also provides that: [t]he 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). “Diligence turns on the factual record.” In re Steed, 802 F.3d 1311, 1317 (Fed. Cir. 2015); see also 37 C.F.R. § 1.131(b) (2022). Reasonable diligence is all that is required of the attorney. Reasonable diligence is established if attorney worked reasonably hard on the application during the continuous critical period. If the attorney has a reasonable backlog of unrelated cases which he takes up in chronological order and carries out expeditiously, that is sufficient. See MPEP § 2138.06; Perfect Surgical Techniques, Inc. v. Olympus Am., Inc. (Perfect Surgical), 841 F.3d 1004, 1009 (Fed. Cir. 2016). 2 We do not address Appellant’s other arguments related to the Smith reference because this issue is dispositive of the appeal before us. Appeal 2020-004367 Application 13/788,363 6 Upon consideration of the evidence in this appeal in light of the respective positions advanced by the Examiner and Appellant, we determine that Appellant has identified reversible error in the Examiner’s determination that Appellant has not provided sufficient evidence of reasonable continuous diligence during the critical period. Rather than weighing the evidence as a whole over the entire critical period, the Examiner focuses only on one document, i.e., the PowerPoint slides, which are actually referenced in an email from the inventor to the attorney. Ans. 4. The document in question is mentioned to be an attachment in an email from the named inventor, Mr. Chesterfield, to Mr. Arrowsmith sent on February 13, 2012. See Exhibit C (stating “I’ve attached a set of slides.”). More particularly, we find that the Declarations and exhibits submitted by Appellant are sufficient to establish diligence during the critical period and show invention prior to Smith’s effective data. CONCLUSION Therefore, we are persuaded by Appellant’s arguments that the inventor’s email is sufficient for one of ordinary skill in the art to understand that the inventor had possession of the claimed invention and to establish the reasonable diligence for the duration of the critical period (i.e., from at least February 15, 2012 to March 15, 2012) necessary to antedate the Smith reference. Accordingly, we do not sustain the Examiner’s anticipation rejection of claims 1-20. Appeal 2020-004367 Application 13/788,363 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 102(e) Smith 1-20 REVERSED