Ex Parte Brown

Board of Patent Appeals and Interferences

Sep 9, 2010

09237194 (B.P.A.I. Sep. 9, 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.
09/237,194 01/26/1999 STEPHEN JAMES BROWN 99-0120 / 7553.00029 9517
60683 7590 09/09/2010
HEALTH HERO NETWORK, INC.
2400 GENG ROAD, SUITE 200
PALO ALTO, CA 94303
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
09/09/2010 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte STEPHEN JAMES BROWN 8
___________ 9
10
Appeal 2009-002452 11
Application 09/237,194 12
Technology Center 3600 13
___________ 14
15
Before HUBERT C. LORIN, ANTON W. FETTING, and BIBHU R. MOHANTY, 16
Administrative Patent Judges. 17
FETTING, Administrative Patent Judge.18
DECISION ON REQUEST FOR REHEARING119

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 2009-002452
Application 09/237,194

2

STATEMENT OF CASE 1
This is a decision on rehearing in Appeal No. 2009-002452. We have 2
jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Requests for Rehearing are limited to matters misapprehended or overlooked 4
by the Board in rendering the original decision. 37 C.F.R. § 41.52 (2007). 5
ISSUES ON REHEARING 6
The Appellant contends that our decision to accept Kirk as prior art is 7
improper, and so the rejections should be reversed (Request 12). The Appellant 8
raises two issues in the Request for Rehearing. The first issue relates to whether the 9
panel raised a new ground of rejection that the Appellant was not afforded an 10
opportunity to respond to (Request 2-3). The second issue relates to whether the 11
panel did not recognize the adequacy of the evidence of diligence in reduction to 12
practice (Request 6-11). 13
ANALYSIS 14
We found in our decision that claims 34-138 were unpatentable as being either 15
anticipated or obvious over the prior art. (Decision 19-20). As the Appellant did 16
not argue whether the prior art described the rejected claims, the only issue before 17
us was whether the art as applied in the rejections was prior art. More specifically, 18
whether Kirk was prior art in view of the evidence offered by the Appellant that 19
the claimed subject matter was invented prior to Kirk’s filing date. 20
The Appellant argues that the panel raised a new ground of rejection that the 21
Appellant was not afforded an opportunity to respond to (Request 2-3). The 22
Appellant does not cite to where this occurred in the Decision, but appears to refer 23
to the Panel’s Finding of Fact 40 (Decision 13-14) that the Appellant presented no 24
evidence that the disclosure in the 07/977,323 application provides a 35 25
Appeal 2009-002452
Application 09/237,194

3

U.S.C. § 112 compliant written description of the inventions as recited in the 1
instant claims. 2
To be clear, the panel did not introduce a new ground of rejection. Application 3
07/977,323 is not before the Board of Patent Appeals and Interferences, and the 4
panel made, and makes, no findings as to the patentability of the claims in that 5
application. Conversely, the disclosure in application 07/977,323 could only form 6
the basis of a rejection under 35 U.S.C. § 112 over the claims in the instant 7
application 09/237,194 under the most unusual of circumstances which are not 8
present here. 9
The Finding of Fact 40 which the Appellant refers to is simply a finding that is 10
pertinent to the issue of whether the Appellant adequately swore behind the Kirk 11
reference, as the instant application would need the benefit of the earlier filing date 12
of application 07/977,323. The panel’s finding was just that, a finding of the fact 13
that the Appellant has not yet introduced any evidence in the record showing 14
specifically how the disclosure of the earlier application supports the present 15
claims. The Appellant has not presented such evidence with this Request either. 16
Next, the Appellant apparently requests clarification on the panel’s findings 17
regarding whether conception was shown prior to Kirk’s filing date (Request 3). 18
The Appellant apparently questions whether our Finding of Fact 31 that the 19
Appellant provided evidence of conception prior to Kirk’s filing date (Decision 12) 20
contradicts the panel’s Finding 4 that there are no details of any method or 21
machine other than the names of some devices, nor are there details showing the 22
specific components recited in the claims in the evidence provided. 23
To be clear, Finding of Fact 31 simply acknowledges that a declaration is a 24
form of evidence. This evidence was provided by the Appellant. The panel did 25
Appeal 2009-002452
Application 09/237,194

4

not find this was persuasive evidence. Finding of Fact 4 simply finds that, aside 1
from the Appellant’s assertion that conception occurred prior to the filing date of 2
Kirk, there is no objective evidence supporting that assertion. 3
The Appellant asserts that paragraph 2 of the declaration explains the 4
associations. (Request 5). However, on its face, the declaration was prepared 5
subsequent to the filing date of Kirk. Thus, this explanation, while potentially a 6
helpful support, if such associations already existed in Exhibit B and needed some 7
minor clarification, is not objective evidence that Exhibit B shows conception of 8
the invention as claimed. In the absence of anything in Exhibit B that shows those 9
associations between the contents of Exhibit B and the claimed subject matter 10
these explanations are unpersuasive. 11
Finally, the Appellant argues the panel did not recognize the adequacy of the 12
evidence of diligence in reduction to practice (Request 6-11). First we note that 13
the Request does not contend that the patent attorney responsible for constructive 14
reduction to practice acted diligently. This is pertinent as the evidence does not 15
show actual reduction to practice. Second, the Appellant argues that the inventor 16
was excused from having to diligently reduce the invention to practice because the 17
inventor was pursuing his full time job as the head of a company. While we agree 18
that an inventor may be excused for reasonable interruptions, the logical 19
implication of the Appellant’s argument is that an inventor can sit on a conception 20
until whenever he gets around to reduction to practice by the simple act of working 21
his day job. This is not the case. Certainly, the head of a company can hire 22
someone to pursue reduction to practice. In fact, the record suggests that was done 23
here. Thereafter, the issue is not whether the inventor had the time, but whether 24
the subordinate was diligently acting on the inventor’s behalf. But having hired 25
such a person, the record shows no details of the development activity performed 26
Appeal 2009-002452
Application 09/237,194

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by that person as objective evidence of diligence in the reduction to practice. 1
Decision 5-12: Findings of Fact 4-29. 2
CONCLUSION 3
Nothing in Appellant’s request has convinced us that we have overlooked or 4
misapprehended the evidence as argued by Appellant. Accordingly, we DENY the 5
request. 6
DECISION 7
To summarize, our decision is as follows: 8
• We have considered the REQUEST FOR REHEARING 9
• We DENY the request that we reverse the Examiner as to claims 34-138. 10
11
12
REHEARING DENIED 13
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mev 18
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HEALTH HERO NETWORK, INC. 20
2400 GENG ROAD, SUITE 200 21
PALO ALTO CA 94303 22