Ex Parte Zrike et al

Patent Trial and Appeal Board

Dec 18, 2015

11463574 (P.T.A.B. Dec. 18, 2015)

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.
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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.
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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
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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".
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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
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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
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