Ex Parte 5657076 et al

Board of Patent Appeals and Interferences

May 10, 2012

90010848 (B.P.A.I. May. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/010,848 03/04/2010 5657076 TAPP01-00004 4947
23990 7590 05/11/2012
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
BROWNE, LYNNE HAMBLETON
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/11/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOLLIS MATTHEW TAPP,
Appellant and Patent Owner
____________

Appeal 2012-002079
Reexamination Control No. 90/010,848
Patent 5,657,076
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JONI Y. CHANG,
Administrative Patent Judges.

SIU, Administrative Patent Judge

DECISION ON REQUEST FOR RECONSIDERATION

Appellant requests rehearing under 37 C.F.R. § 41.52 of our Decision
on Appeal entered January 31, 2012 (“Decision” or “Dec.”) wherein we
affirmed the Examiner’s final rejection of claims 1-15, 17, 19-28 of U.S.
Patent No. 5,657,076 (the ‘076 patent).
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Patent 5,657,076

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Appellant alleges that the Board overlooked evidence provided in
Appellant’s declaration pursuant to 37 C.F.R. § 1.131 (filed March 22, 2011)
in which Appellant asserts that the ‘076 patent was allegedly reduced to
practice “as early as January 12, 1993” (Req. for Reh’g 5) based on the
filing date of a “continuation-in-part (CIP) application [that] was merely
obvious over Tapp’s earlier-filed ‘057 patent” (id.) and that “predates the
Lin reference” (Req. for Reh’g 6).
As stated in the Decision, Appellant’s Declaration pursuant to 37
C.F.R. § 1.131 is not part of the record (Decision 13). Appellant filed a
“Declaration of Prior Invention Under 37 CFR § 1.131” on March 22, 2011
(“Declaration”) in response to the Examiner’s final Office action dated
January 18, 2011. The Examiner refused entry of the Declaration, which
Appellant has not contested. An affidavit submitted after a final rejection
may be admitted upon a showing of good and sufficient reasons why the
affidavit is necessary and was not earlier presented (37 C.F.R. § 1.116(e)).
Appellant does not demonstrate that such a showing was made or even
attempted. For example, Appellant does not indicate that a petition was
timely filed with the Director containing a statement of the facts involved
and the point or points to be reviewed and the action requested (37 C.F.R. §
1.181(b)).
Since Appellant’s Declaration is not part of the record, we cannot
agree with Appellant that the Declaration demonstrates an earlier reduction
to practice of the claimed invention of the ‘076 patent.
In addition, Appellant states that assuming the Declaration had been
entered into the record (but was not), the Declaration demonstrates reduction
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Patent 5,657,076

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to practice of the claims of the ‘076 patent because the ‘076 patent and the
continuation-in-part parent patent (U.S. Patent No. 5,398,057 – the ‘057
patent) each have claims “‘. . . differing therefrom only in details which are
obvious to one of ordinary skill in the art’” (Req. for Reh’g 5, citing In re
Spiller, 500 F.2d 1170, 1178 (CCPA 1974)).
However, in order to establish a constructive reduction to practice
based on the filing date of an earlier filed application, the earlier filed
application must meet the requirements of 35 U.S.C. § 120 and 35 U.S.C.
§ 112, first paragraph, for the subject matter claimed in the instant patent.
See Hyatt v. Boone, 146 F.3d 1348, 1352 (Fed. Cir. 1998). 35 U.S.C. § 112
requires that “the specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.” It is not sufficient for Appellant to argue
that the entire invention as claimed in the ‘076 patent was disclosed in the
‘057 patent even though at least one portion of the claimed invention in the
‘076 patent is not disclosed in the ‘057 patent.1
In this case, “[t]he primary consideration is whether . . . the affidavit
also establishes possession of either the whole invention claimed or
something falling within the claim.” See In re Tanczyn, 347 F.2d 830, 833
(C.C.P.A 1965). Appellant has neither demonstrated nor asserted that the
‘057 patent (the continuation-in-part parent patent) establishes possession of

1 In re Tanczyn, 347 F.2d 830, 832 (C.C.P.A 1965), “[i]t does not appear to
us logical that one should be permitted to dissect the ‘invention’ . . . into
several parts and then say because he has invented one such part prior to a
reference disclosing that part that he has also invented the entire
combination prior to that reference. . . .”
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Patent 5,657,076

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the claims of the ‘076 patent. Indeed, as Appellant does not dispute, the
‘057 patent fails to disclose, for example, “a recording device” as recited in
claim 19 of the ‘076 patent.
Appellant also argues that the Board overlooked points pertaining to
the Oliver reference but presents similar arguments as previously presented
in Appellant’s Brief and previously addressed in the Decision. Specifically,
Appellant reiterates the argument that Oliver “utilizes an electrical pulse
train on a wired connection” but “does not use infrared light pulses” (Req.
for Reh’g 8). As we previously stated in the Decision, Oliver discloses
infrared pulses (or signals) (see, e.g., Decision 6-8). As further clarification,
Oliver discloses “an infrared light emitting diode that transmits the pulse
train as infrared pulses to the infrared detector” (col. 3, ll. 33-34). We do not
find and Appellant has not indicated a significant difference between the
infrared pulses of Oliver and the “infrared coded signal” as recited in claim
10.

CONCLUSION
We have considered Appellant’s Request for Rehearing but find no
points that we have misapprehended or overlooked. Therefore, the Request
is DENIED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED

rvb
Appeal 2012-002079
Reexamination Control No. 90/010,848
Patent 5,657,076

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Patent Owner

Docket Clerk
P.O. Box 800889
Dallas, TX 75380

Third Party Requester

X10 Wireless Technology, Inc.
c/o David A. Lowe, Esq.
Black Lowe & Graham
701 Fifth Avenue, Suite 4800
Seattle, WA 98104