Ex Parte Bokhari et al

Board of Patent Appeals and Interferences

Nov 19, 2010

09902929 (B.P.A.I. Nov. 19, 2010)

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.
09/902,929 07/10/2001 Wasiq Mahood Bokhari NVIDP376/P002188 9244
75359 7590 11/19/2010
ZILKA-KOTAB, PC- NVID
P.O. BOX 721120
SAN JOSE, CA 95172-1120
EXAMINER
ROSWELL, MICHAEL
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
11/19/2010 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 WASIQ MAHOOD BOKHARI, UMAIR AZIM KHAN,
ANNE SAJER KOHNEN, and QUINTON YVES ZONDERVAN
____________

Appeal 2010-000568
Application 09/902,929
Technology Center 2100
____________

Before HOWARD B. BLANKENSHIP, JEAN R. HOMERE, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000568
Application 09/902,929

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-44, which are all the claims in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

DISCUSSION
Firepad Fireviewer Suite Installation Manual and User’s Guide
In an order (mailed Nov. 30, 2007) remanding the proceeding to the
Examiner, we noted that all of the pending claims were rejected under 35
U.S.C. § 103(a) based on evidence that included a printed copy of a
document referenced as “Firepad Fireviewer Suite User’s Guide.” We
determined that the record did not support the Examiner’s allegation that the
document was a reference under 35 U.S.C. § 102(b). We authorized the
Examiner to prepare a supplemental examiner’s answer for an explanation as
to why the document should be considered to represent prior art, if the
rejection was to be maintained.
After a time, the Examiner provided a new (i.e., not a supplemental)
Answer that designated new grounds of rejection, because the rejections rely
on new evidence (a screenshot) as support for the view that “Firepad”
represents prior art.
Firstly, the examiner would again like to point out that
the Fireviewer 6.0 Shareware Screenshot is provided to provide
evidence that the software disclosed in the Firepad reference
was publicly available prior to Appellant’s filing date. As the
Firepad reference teaches the use of FireViewer 6.0 (see pages
10, 12, 15), the examiner contends that the features disclosed
therein were publicly available at least as early as 17 June 2001,
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Application 09/902,929

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as disclosed in the Shareware Screenshot. Therefore, the
examiner contends that the Firepad reference is valid prior art
under 35 U.S.C. 102(a).

Examiner’s Answer, Jun. 26, 2009, at 16-17.

Section 102(a)
Section 102(a) of Title 35 provides:
A person shall be entitled to a patent unless --

(a) the invention was known or used by others in this
country, or patented or described in a printed publication in this
or a foreign country, before the invention thereof by the
applicant for patent . . . .

Section 102(a) thus contains two separate bases for patent-defeating
lack of novelty: that the invention was “known or used by others in this
country,” or “described in a printed publication in this or a foreign country,”
before the invention thereof by the applicant.
The phrase “described in a printed publication in this or a foreign
country,” by its terms, is limited to information contained in a single
“printed publication.” “[K]nown or used by others in this country,”
however, requires more than mere knowledge or use by others of the
invention in this country. The knowledge or use must have been available to
the public.
Section 102(a) establishes that a person can not patent
what was already known to others. If the invention was known
to or used by others in this country before the date of the
patentee’s invention, the later inventor has not contributed to
the store of knowledge, and has no entitlement to a patent.
Accordingly, in order to invalidate a patent based on prior
knowledge or use, that knowledge or use must have been
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Application 09/902,929

4
available to the public. See Carella v. Starlight Archery, 804
F.2d 135, 139, 231 USPQ 644, 646 (Fed. Cir. 1986) (the
Section 102(a) language “known or used by others in this
country” means knowledge or use which is accessible to the
public); 35 U.S.C. Section 102(a) reviser’s note (1952) (noting
that “‘known’ has been held to mean ‘publicly known’” and
that “no change in the language is made at this time”); P.J.
Federico, Commentary on the New Patent Act (1954) reprinted
in 75 J. Pat. Trademark Off. Soc’y 161, 178 (1993)
(“interpretation [of Section 102(a)] by the courts excludes
various kinds of private knowledge not known to the public”;
these “narrowing interpretations are not changed”).

Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368, 1370 (Fed. Cir.
1998).

Analysis
The Examiner’s statements in support of why the “Fireviewer”
manual should be considered to represent prior art under 35 U.S.C. § 102(a),
which we reproduced supra, are not clear. The Examiner refers to the
“Firepad reference” as if the manual is to be considered a “printed
publication” in accordance with the statute. Yet, the Examiner also refers to
the software “features” described in the Firepad manual being publicly
available prior to the instant application filing date, which suggests that the
manual is to be taken as evidence that the information in the manual was
“known or used by others in this country” prior to the application filing date.
According to this record, the instant application filing date is July 10,
2001. The file copy of the “FireViewer Suite” manual contains a copyright
notice (at 2) of 2001. As the Examiner seems to acknowledge, the manual
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Application 09/902,929

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by itself does not indicate that the manual qualified as a “printed
publication” prior to July 10, 2001.
The “screenshot” evidence shows that a shareware version of
“FireViewer Suite 6.0” was uploaded to a shareware Web site (“The UK’s
Premier Website for Shareware and Freeware Downloads”) on June 17,
2001, which predates filing of the instant application.
If we assume the “screenshot” evidence is submitted to demonstrate
that the provided version of the FireViewer manual qualified as a “printed
publication” prior to July 10, 2001, the evidence falls short. The Examiner’s
rejections rely on some portions of the manual that speak of “Version 6.0”
(e.g., at 15). However, the rejections also rely on portions that speak of
version “6.x” (e.g., at 12). Moreover, a “printed publication” such as a
software manual can be directed to discussion of earlier (or current) software
versions, but published later than the initial availability of the earlier (or
current) versions of the software.
If we assume the “screenshot” evidence is submitted to demonstrate
that the software package itself (Version 6.0) was known or used by others
in this country prior to July 10, 2001, the evidence also falls short. The
“screenshot” suggests that a shareware version of the software was uploaded
to a Web site, apparently, in the United Kingdom. There is no evidence
provided that the shareware (or full) Version 6.0 was downloaded, or
otherwise “known or used by others in this country,” prior to July 10, 2001.
Moreover, there is no evidence provided to show that the “free trial version”
available for download had features identical to those described in the
provided FireViewer manual.
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Application 09/902,929

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Thus, we conclude that the “FireViewer Suite” manual has not been
shown to qualify as a “printed publication” prior to the critical date. Nor has
the evidence established publicly accessible use or knowledge of the
invention (i.e., the software features described in the manual) in this country
prior to the critical date. On this record, too much speculation is required to
reach a conclusion that the information in the “FireViewer” manual
represents prior art under 35 U.S.C. § 102(a). We decline to engage in such
speculation.

Conclusion
Accordingly, since all the rejections on appeal rely on the
“FireViewer Suite” manual, we cannot sustain any of the § 103(a) rejections.

DECISION
The Examiner’s rejections of claims 1-44 under 35 U.S.C. § 103(a)
are reversed.

REVERSED

msc

ZILKA-KOTAB, PC- NVID
P.O. BOX 721120
SAN JOSE CA 95172-1120