Ex Parte Zrike et alDownload PDFPatent Trial and Appeal BoardDec 18, 201511463574 (P.T.A.B. Dec. 18, 2015) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 111463,574 08/09/2006 Kenneth L. Zrike 28548 7590 12/22/2015 Lodestar Patents, PLLC, P.O. Box 1226 QUEEN CREEK, AZ 85142-1226 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P05407 7170 EXAMINER SENSENIG, SHAUN D ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 12/22/2015 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): USPTOmail@patentdoc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH L. ZRIKE and CHRISTOPHER A. ZRIKE Appeal2013-007054 Application 11/463,574 Technology Center 3600 Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and SCOTT C. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the final rejection of claims 38-57 and 59-75, which are all of the pending claims. 1 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 Appellants state that the real parties in interest are the inventors, Christopher Zrike and Kenneth Zrike. Appeal Br. 2. Appeal2013-007054 Application 11/463,574 Claimed Subject Matter The claims are directed to sports matchmaker systems. Claim 3 8, reproduced below, is illustrative of the claimed subject matter: 38) An Internet computer system, relating to assisting finding of at least one proposed joint event by at least one second participant with at least one first participant, comprising: • computer database means for searchably storing proposed-event information wherein such proposed-event information comprises i) at least one type of proposed joint event, ii) at least one proposed geographic area for such proposed joint event, and iii) at least one proposed time frame for such at least one proposed joint event; • computer interface means for permitting database entry on behalf of such at least one first participant of such at least one proposed joint event; • computer interface means for permitting entry, on behalf of such at least one second participant, first searchable criteria for proposed matching of such at least one proposed joint event; and [sic] • computer processing means for retrieving from said computer database means such proposed-event information matching such first searchable criteria; [and] • computer interface means for assisting communication by at least one second participant with at least one first participant. 2 Appeal2013-007054 Application 11/463,574 References and Rejections The Examiner relies on the following references in rejecting the claims on appeal: Lang US 2002/0070954 Al June 13, 2002 Gross US 2004/0111478 Al June 10, 2004 Insley US 2006/0136498 Al June 22, 2006 Claims 62-74 stand rejected under 35 U.S.C. § 101. Final Act. 3 (mailed June 9, 2011). Claims 62-75 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 3. Claim 64 stands rejected under 35 U.S.C. § 112 second paragraph as being indefinite. Final Act. 5. Claims 38--42, 44, 45, 47, 50-56, 62, 63, 65-71, 74, and 75 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Insley and Lang. Final Act. 6. Claims 43, 46, and 73 stand rejected under 35 U.S.C. §103(a) as being unpatentable over Insley, Lang, and Gross. Final Act. 12. ANALYSIS Rejections under 35 US.C. §§ 101and112 Appellants do not contest the rejection of claims 62-74 under 35 U.S.C. § 101. Accordingly, we summarily affirm this rejection. Appellants also do not contest the rejection of claims 62-75 under 35 U.S.C. § 112, first paragraph. Accordingly, we summarily affirm this rejection. 3 Appeal2013-007054 Application 11/463,574 Appellants additionally do not contest the rejection of claim 64 under 35 U.S.C. § 112, second paragraph. Accordingly, we summarily affirm this rejection. Rejections under 35 US.C. § 103(a) Appellants have submitted five separate Rule 131 affidavits. See Appeal Br., Evid. App. Two of these affidavits (the "Original Affidavits") were submitted and considered during the prosecution of the instant patent application. Appeal Br. 31. The other three affidavits (the "New Affidavits") were not submitted to the Examiner or considered in connection with the instant application, but were submitted during the prosecution of a related patent application. See id. at 32; see also Ans. 3. Appellants argue that their "affidavit evidence under Rule 131 effectively 'swears behind' the Insley reference, thereby eliminating Insley as prior art," and further argue that they did not abandon their invention. Appeal Br. 16. Appellants do not set forth any other substantive patentability arguments regarding the Examiner's 35 U.S.C. § 103(a) rejections. In response, the Examiner determines that the New Affidavits are improper new evidence that may not be offered on appeal. Ans. 3. The Examiner also determines that the Original Affidavits are not sufficient to establish prior conception or reduction to practice of the claimed invention. Id. at 3--4. For the reasons set forth below, we agree with the Examiner. Insley (the primary reference in the Examiner's§ 103 rejections, and the reference Appellants attempt to swear behind) is a published patent application that was filed on December 20, 2005, and thus is entitled to an effective filing of December 20, 2005. See 35 U.S.C. § 102(e) (pre-America 4 Appeal2013-007054 Application 11/463,574 Invents Act version); Appeal Br. 15 (citing Dec. 20, 2005 as the effective filing date of Insley). To swear behind Insley, Appellants' Rule 131 affidavits must be sufficient to establish conception and reduction to practice prior to December 20, 2005, or conception prior to this date coupled with due diligence from prior to this date until reduction to practice. See 3 7 C.F .R. § 1.131. Appellants attempt to satisfy this burden by demonstrating that both conception and reduction to practice occurred prior to December 20, 2005. See Appeal Br. 16-17. Our reviewing court has provided the following explanation of the requirements for swearing behind a reference under Rule 131 : When the issue of priority concerns the antedating of a reference, the applicant is required to demonstrate, with sufficient documentation, that the applicant was in possession of the later-claimed invention before the effective date of the reference. Demonstration of such priority requires documentary support, from which factual findings and inferences are drawn, in application of the rules and law of conception, reduction to practice, and diligence. The purpose is not to determine priority of invention-the province of the interference practice-but to ascertain whether the applicant was in possession of the claimed invention sufficiently to overcome the teachings and effect of an earlier publication of otherwise invalidating weight. In re Steed, 802 F.3d 1311, 1316 (Fed. Cir. 2015) (emphasis added). The two Original Affidavits are substantively identical to one another, and contain the following testimony: 1. I am [Inventor's name] of the invention disclosed in Patent Application Ser. No. 11/463,574 ("the '574 application), and prior provisional applications serial number 60/707,889, filed 08/12/05, and serial number 60/775,920, filed 02122/06, entitled "SPORTS MATCHMAKER SYSTEMS". 5 Appeal2013-007054 Application 11/463,574 2. The date of my conception of the entirety of the invention was at least as early as November 2003. 3. The date of the reduction to practice of an actual embodiment of the subject matter described in the '574 application, and claimed therein, was at least as early as December 2003. 4. Exhibits A---C include true and accurate copies of three emails [I] sent to initialize [] beta-testers of the reduction to practice of an embodiment of the invention in February 2004. 5. Exhibit D is a true and correct annotated version of the true SQL Sports Matchmaker archived database revealing beta-test registrations from December 2003 and February 2004. 6. Exhibit E is a true and correct copy of the first and last (7) pages of the Development Agreement, executed on June 2, 2002 whereby [one of the named inventors] engaged a developer to assist in the reduction to practice of the invention. Appeal Br., Evid. App. The testimony in the Original Affidavits regarding conception and reduction to practice is conclusory in nature, and not supported by specific facts or data sufficient to demonstrate that the Applicants were in possession of the invention, as presently claimed, prior to December 20, 2005. The vague and general statements in the Original Affidavits "amoun[t] essentially to mere pleading, unsupported by proof or a showing of facts" and, thus, do not satisfy the requirements of 3 7 C.F .R. § 1.131 (b ). In re Borkowski, 505 F.2d 713, 718 (CCPA 1974); see also Steed, 802 F.3d at 1316 ("[T]he applicant is required to demonstrate, with sufficient documentation, that the applicant was in possession of the later-claimed invention before the effective date of the reference.) (emphasis added). Exhibits A-E, which allegedly relate to the beta testing and development of the claimed invention, are also general in nature, and do not describe the invention, as presently claimed, element by element, nor do they show that it 6 Appeal2013-007054 Application 11/463,574 was conceived and reduced to practice prior to December 20, 2005. Accordingly, we are not persuaded that the Examiner erred in determining that the Original Affidavits are insufficient to disqualify Insley as prior art. The three New Affidavits attached to the Appeal Brief were not submitted during the prosecution of the instant patent application. Accordingly, these affidavits constitute new evidence that is not admissible in this Appeal. See 37 C.F.R. § 41.33(d)(2). Thus, we are not persuaded that the Examiner erred in determining that the New Affidavits are insufficient to disqualify Insley as prior art. For the above reasons, we are not persuaded that the Examiner erred in rejecting claims 38--42, 44, 45, 47, 50-56, 62, 63, 65-71, 74, and 75 under 35 U.S.C. §103(a), or claims 43, 46, and 73 under 35 U.S.C. §103(a). DECISION For the foregoing reasons, we affirm the rejection of claims 62-74 under 35 U.S.C. § 101; the rejection of claims 62-75 under 35 U.S.C. §112, first paragraph; the rejection of claim 64 under 35 U.S.C. § 112, second paragraph; the rejection of claims 38--42, 44, 45, 47, 50-56, 62, 63, 65-71, 74, and 75 under 35 U.S.C. § 103(a); and the rejection of claims 43, 46, and 73 under 35 U.S.C. §103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED rvb 7 Copy with citationCopy as parenthetical citation