Ex Parte Do et al

Patent Trial and Appeal Board

Jun 13, 2016

13325881 (P.T.A.B. Jun. 13, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/325,881 12/14/2011
22898 7590 06/15/2016
ISHIMARU & AS SOCIA TES LLP
1111 W. El Camino Real
Ste 109-146
Sunnyvale, CA 94087
FIRST NAMED INVENTOR
Byung Tai Do
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.
27-842 7344
EXAMINER
SINGAL, ANKUSH K
ART UNIT PAPER NUMBER
2895
NOTIFICATION DATE DELIVERY MODE
06/15/2016 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):
efiling@ishimarulaw.com
lomi@ishimarulaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte BYUNG TAI DO, ARNEL SENOSA TRASPORTO, and
LINDA PEI EE CHUA
Appeal2014-004815
Application 13/325,881 1
Technology Center 2800
Before CHUNG K. PAK, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Action2 rejecting claims 1-3, 5-13, and 15-20 under 35 U.S.C. § 103(a) as
unpatentable over the collective teachings of Do3 and Sekimoto4 and claims
1 Application 13/325,881 ('881 Application), filed December 14, 2011.
2 Final Action mailed on June 24, 2013 ("Final Act.")
3 United States Patent Publication No. 2012/0280377 Al by Byung Tai Do et al.,
published on November 08, 2012.
4 United States Patent Publication No. 2010/0101836 Al by
Yasuyuki Sekimoto, published on April 29, 2010.
Appeal2014-004815
Application 13/325,881
4 and 14 under 35 U.S.C. § 103(a) as unpatentable over the collective
teachings of Do, Sekimoto, and Masumoto5. We have jurisdiction pursuant
to 35 U.S.C. § 6.
We REVERSE.
DISCUSSION
The Examiner has the burden of establishing a prima facie case of
obviousness under 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). Such burden requires the Examiner to demonstrate that
the references used in rejecting the claims on appeal under§ 103(a) are
available as "prior art" under 35 U.S.C. §102.
Here, the Examiner relies upon Do as the primary reference in rejecting
all of the claims on appeal. However, the Examiner does not demonstrate
that Do is available as "prior art" under 35 U.S.C. §102. For instance, Do is
not qualified as "prior art" under §102(a) or (b) because Do was published
on November 8, 2012, which is after the earliest effective filing date of the
'881 Application, namely December 14, 2011. Do is available, if at all,
under § 102( e ), because Do is an application for patent, published under
section 122(b ), filed on May 5, 2011, which is before the earliest effective
filing date of the '881 Application. Do, however, is not prior art to the
claimed subject matter on appeal under§ 102(e). 35 U.S.C. § 102(e) states
(emphasis added):
5 United States Patent Publication No. 2011/0024899 Al by Kenji Masumoto et
al., published on February 03, 2011.
2
Appeal2014-004815
Application 13/325,881
A person shall be entitled to a patent unless -
( e) the invention was described in ( 1) an application for
patent, published under section 122(b ), by another filed
in the United States before the invention by the applicant
for patent or (2) a patent granted on an application for
patent by another filed in the United States before the
invention by the applicant for patent, except that an
international application filed under the treaty defined in
section 3 51 (a) shall have the effects for purposes of this
subsection of an application filed in the United States
only if the international application designated the
United States and was published under Article 21 (2) of
such treaty in the English language.
In other words, Do must be "by another" to be qualified as "prior art" under
§ 102( e ). However, the inventors of Do are Byung Tai Do, Amel Senosa
Trasporto, and Linda Pei Ee Chua. They are the same inventors named in
the '881 Application6. Do is not "by another" as required under 35 U.S.C.
§ 102(e).
Accordingly, we hold that the Examiner has failed to carry the burden of
establishing a prima facie case of obviousness of the subject matter recited
in claims 1-20 within the meaning of 35 U.S.C. § 103(a).
6 See Manual of Patent Examining Procedure (MPEP) (Original Ninth
Edition, March 2014, Rev. 07.2015, November 2015), § 706.02 (a) (2).II,
p.700-33; see also MPEP § 2136.04.I, p. 2100-107.
3
Appeal2014-004815
Application 13/325,881
DECISION
We REVERSE the rejections of claims 1through20 under 35 U.S.C.
§ 103(a).
REVERSED
4