Ex Parte KAMIYA

Patent Trial and Appeal Board

Feb 22, 2018

13554879 (P.T.A.B. Feb. 22, 2018)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/554,879 07/20/2012 Takuki KAMIYA F1423.10049US01 5066
97149 7590
Maschoff Brennan
1389 Center Drive, Suite 300
Park City, UT 84098
02/26/2018 EXAMINER
LEVEL, BARBARA M
ART UNIT PAPER NUMBER
2144
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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):
docket @ mabr. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKUKI KAMIYA
Appeal 2017-001938
Application 13/554,879
Technology Center 2100
ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
JOHN D. HAMANN, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 1—4, 6—12, 14—18, and 20-23, which are all the claims
pending in this application.1 Claims 5, 13, and 19 are cancelled. (App. Br.
3). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The disclosed and claimed invention on appeal relates to “Efficient
XML Interchange (EXI) Profile stream decoding.” Spec. 11.
1 We refer herein to the Final Office Action (“Final Act.”), mailed Nov. 24,
2015; the Appeal Brief (“App. Br.”), filed Aug. 24, 2016; the Examiner’s
Answer (“Ans.”), mailed Sept. 16, 2016; and the Reply Brief (“Reply Br.”),
filed Nov. 16, 2016.
Appeal 2017-001938
Application 13/554,879
Illustrative independent claim 1 is reproduced below:
1. A method of reducing dynamic memory usage during
decoding of an Efficient XML Interchange (EXI) stream in a
sensor, the method comprising:
parsing an EXI Profile stream to identify each element within
the EXI Profile stream that is not defined by an associated
XML schema;
examining a first bit after a corresponding SE event for each
of the identified elements;
assigning an initial built-in element grammar with no top-
level production to each element where the first bit is set to 0
or an augmented built-in element grammar with one top level
production of AT(xsi:type) to each element where the first bit
is set to 1; and
capping in the sensor an amount of dynamic memory used for
evolving built-in element grammars associated with each
element that include the initial built-in element grammar and
the augmented built-in element grammar.
Rejections
A. Claims 1—4, 6—12, 14—18, 20, and 23 are rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of “Efficient XML Interchange (EXI) Profile,” W3C
Working Draft April 10, 2012, hereinafter referred to as EXI Profile;
“Efficient XML Interchange (EXI) Format 1.0,” W3C
Recommendation March 10, 2011, hereinafter referred to as
EXI Format; and Fablet et al. (US 2012/0150828 Al, June 14, 2012),
hereinafter Fablet, and further in view of Heuer et al. (US
2012/0124017 Al, May 17, 2012), hereinafter Heuer. (Final Act. 5).
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B. Claims 21 and 22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of EXI
Profile, EXI Format, Fablet, Heuer, and Cseri et al. (US
2003/0046317 Al, published March 6, 2003), hereinafter Cseri.
ANALYSIS
In reaching our decision, we consider all the evidence presented and
all arguments actually made by Appellant.
The Rule §1.131 Declaration
At the outset, we note the Examiner finds the RULE § 1.131
Declaration is defective based upon a purported deficiency in Appellant’s
showing of due diligence “from the time just prior to the EXI Profile
reference date of April 10, 2012 to the time the present application was filed
on July 20, 2012” (i.e., the time of constructive reduction to practice).2
(Final Act. 3) (emphasis added).
However, in the Appeal Brief, Appellant fails to traverse the
Examiner’s finding that the Rule § 1.131 Declaration is defective.
Therefore, we need not reach the issue of the sufficiency of the 37 C.F.R.
§ 1.131 Declaration, filed Oct. 5, 2015. Arguments not made are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, the EXI Profile (Pub. April 10, 2012) reference cited by
the Examiner has not been successfully antedated by the Rule § 1.131
2 Regarding the purported showing of due diligence, the Examiner finds
“the Kamiya Declaration contains multiple gaps of time between April 9,
2011 and July 20, 2012, in which there is no evidence of activity or
explanation for inactivity.” (Final Act. 3) (emphasis added).
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declaration. (See Final Act. 5—21).
However, this does not end our inquiry.
Dispositive issue — the Rule § 1.132 Declaration
A second Declaration, this one under 37 C.F.R. § 1.132, was filed on
Feb. 10, 2016, to remove the portion of content in the EXI Profile reference
under the heading “E Grammar Restriction Considerations” as being the
inventor’s own work. See, inter alia, the named inventor Takuki Kamiya’s
statement in the Rule § 1.132 Declaration (3):
I am providing this declaration to establish that the disclosure at
least under the heading “E Grammar Restriction
Considerations” of the EXI profile. (“World Wide Web
Consortium, Efficient XML Interchange (EXI) Profile”, W3C
Working Draft, 10 April 2012, http://www.w3.org/TR/exi-
profile) was invented and provided by me to the World Wide
Web Consortium.
(emphasis added).
The Examiner relies on this portion of the EXI Profile reference to
support rejection A: “The EXI profile document also provides Grammar
Restriction Decoder Considerations. Once grammar learning is disabled,
the EXI decoder will not need to create any new built-in element grammar.”
(Final Act. 5).
Dispositive Issue on Appeal
Thus, we find the dispositive issue before us on appeal is whether the
Rule § 1.132 Declaration is defective for the reasons found by the Examiner.
See the “Examiner-Initiated Interview Summary,” mailed April 13, 2016:
“the Kamiya Declaration shows [(1)] co-authors working together but not
that co-authors were working under applicant’s direction[,] and . . . [(2)]
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the Kamiya Declaration did not provide ‘a reasonable showing supporting
the basis for applicant’s position’ as co-author sole inventor without
disclaiming affidavits.” (emphasis added).
Thus, the Examiner finds the Rule § 1.132 Declaration is insufficient,
and the content under the heading “E Grammar Restriction Considerations”
should not be removed from consideration in the EXI Profile reference,
because the Declaration does not establish that such content was the
inventor ’ s own work. (Id.).
In response, Appellant contends, inter alia:
“this case distinguishes from In re Katz[3] in that [the co-author]
has refused to sign a declaration submitted to him.” Id.
(emphasis added). Thus, in Ex Parte Kroger, the B.P.A.I.
recognized that if there were only declarations from the
applicants, the B.P.A.I. would have been constrained to find
that the declarants were the inventors, and it was only
distinguished from In re Katz because of evidence in the record
that the co-author refused to sign a declaration that he was not an
inventor.
Here, the facts are directly analogous to In re Katz and
In re DeBaun[4] and distinguishable from Ex Parte Kroger, and
in fact, the evidence submitted in the present case exceeds that
provided in In re Katz. The statement from the inventor
Kamiya in this case is “uncontradicted and ‘unequivocal’”
that the inventor Kamiya is the sole inventor of the E-Grammar
Disclosure. Kamiya Declaration, || 3-7. Furthermore, the
declaration makes clear that the inventor Kamiya is a co-author
of the document, as the inventor Kamiya was a member of the
working group. Id. Additionally, like in In re DeBaun, the
declaration includes documentary evidence that it was the
inventor Kamiya who submitted the information to the
working group. Id.; see also id. Exhibit A. Furthermore, as
3 Appellant cites In re Katz, 687 F.2d 450 (CCPA 1982).
4 Appellant cites In re DeBaun, 687 F.2d 459, 463 (CCPA 1982).
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stated in In re Katz, “certainly one’s own invention, whatever
the form of disclosure to the public, may not be prior art against
oneself,” even if that includes via a draft paper of a standards
working group. In re Katz, 687 F.2d at 454. The reasoned
explanation that Kamiya was part of a working group to
whom he explained his invention and that published his
invention is exactly the sort of reasonable explanation (and
confirmed by documentary evidence) that is supported under
the case law. Furthermore, there is absolutely no evidence that
there was another inventor of the E-Grammar Disclosure, as
was the key distinguishing fact in Ex Parte Kroger. [5] Therefore,
Applicant respectfully submits that a sufficient showing has been
made to establish that at least the E-Grammar Disclosure is the
inventor Kamiya's own work and is therefore ineligible as prior
art under 35 U.S.C. § 102(a).
(App. Br. 10-11) (emphasis added).
The Examiner disagrees:
In contrast to In re Katz, the Kamiya Declaration does not even
identity the other co-authors or state that the other W3C Work
Group co-authors of the EXI Profile reference were working
under the direction of Kamiya or otherwise explain why the co­
authors were not co-inventors. Instead, the email provided as
Exhibit A of the Kamiya Declaration, shows the Editor of the
EXI Profile reference, Daniel Peintner actively collaborating
with Kamiya regarding the present application's claimed
invention and the subject matter disclosed in the cited EXI
Profile reference. The Examiner respectfully submits that,
unlike the facts of In re Katz, the Kamiya Declaration fails to
identify all the other W3C Working Group EXI Profile co­
authors, much less establish that all the other unidentified co­
authors were either working under the direction of Kamiya or
were not working together as co-inventors. The Examiner also
notes that Appellant has not provided a disclaiming affidavit
from Daniel Peintner, the Editor collaborating with Kamiya
5 Appellant cites Ex Parte Kroger, 1982 WL 50447 (BPAI Nov. 22, 1982).
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in the email provided as Exhibit A of the Kamiya
Declaration. See MPEP 2132.01 Publications as Pre-AIA 35
U.S.C. 102(a) Prior Art.
(Ans. 4) (emphasis added).
In the Reply Brief, Appellant responds, inter alia:
In the Examiner’s Answer, the Examiner has contended that the
Kamiya Declaration fails to identify the other co-authors and
fails to explain why they should not be included as authors.
Examiner’s Answer, p. 5. However, both propositions are
incorrect legally and factually. First, In re Katz makes clear that
“authorship of an article by itself does not raise a
presumption of inventorship with respect to the subject
matter disclosing the article.” 687 F.2d at 455-56. Thus, there
is no legal basis for the Examiner's contention that a failure to
list each member of the group by name somehow makes the
Kamiya Declaration deficient. Second, the Kamiya
Declaration does identify the other authors, namely, the
other members of the Efficient XML Interchange Working
Group. Kamiya Declaration, | 7. Furthermore, the Kamiya
Declaration explains why none of those authors should be listed
as inventors, namely, because “I was the sole contributor.” Id.
at | 6. Furthermore, the Kamiya Declaration provides
documentary evidence to support and bolster the statement
that Kamiya was the sole contributor, without input or
collaboration. See Kamiya Declaration, Appendix A.
(Reply Br. 3) (emphasis added).
Evidence in support of Declaration —Exhibit A
We turn our attention to the evidence submitted in support of the
inventor’s Declaration under RULE § 1.132. In particular, Exhibit A
includes three email messages, including a first email sent on Nov. 5, 2011
from EXI Profile co-editor Daniel Peintner to the Efficient XML
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Interchange WG (working group). There are included two responsive
emails, dated Dec. 5, 2011 and Dec. 7, 2011 respectively, as sent from the
inventor, Takuki Kamiya, to co-editor Daniel Peintner on Dec. 5, 2011, and
as sent from the inventor to “member-exi-wg@w3.org,” on Dec. 7, 2011.
The first email (from co-editor Daniel Peintner to the working group)
contains the subject line “Unknown Element Grammar Evolution” and
the two subsequent emails from inventor Takuki Kamiya responsively list in
the subject line: “RE: Unknown Element Grammar Evolution.”
Significantly, co-editor Daniel Peintner begins his Nov. 5, 2011
message with the statement, “This morning I have been thinking a bit more
about the way we plan to restrict grammar evolution.” However, we find
the Nov. 5, 2011 email closes with the unequivocal statement “I did not
find any good solution for this issue: Maybe someone else does! Thanks,
— Daniel.” (emphasis added).
Thus (in the absence of further emails in the record), we find a
preponderance of the evidence (i.e., Daniel Peintner’s own statement)
supports a finding that co-editor Daniel Peintner “did not find any good
solution” for the “Unknown Element Grammar Evolution” issue
discussed in the aforementioned three emails.
In light of this statement of record (Exhibit A. Nov. 5, 2011 email
message from Daniel Peintner), we find the lack of any disclaiming affidavit
from Daniel Peintner (or the other members of the working group) is not
dispositive in this appeal. We note the Examiner has not provided any
evidence of record showing that one or more purported co-authors of EXI
Profile in the working group has refused to disclaim inventorship, and
believes himself or herself to be an inventor, so as to render inventor Takuki
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Kamiya’s declaration under RULE § 1.132 insufficient. See MPEP 2132.01
(II) (Rev. Aug. 2017).
In such case, the rejections of record can be overcome by submission
of a specific declaration by the inventor (or at least one joint inventor)
establishing that the article describes the inventor’s own work, as is the case
presented here. See (Id.). See In re Katz, 687 F.2d 450 (CCPA 1982). See
also MPEP § 715.01(c) (“Reference is Publication of Applicant’s Own
Invention”). (Rev. Aug. 2017).
See also MPEP §716.10, in pertinent part:
An uncontradicted “unequivocal statement” from an
inventor or joint inventor regarding the subject matter disclosed
in an article, patent, or published application has been accepted
as establishing inventorship. In re DeBaun, 687 F.2d 459, 463,
214 USPQ 933, 936 (CCPA 1982). Depending on the situation,
documentation created contemporaneously with the
conception/invention and/or declarations/affidavits by the other
inventor(s) named in the reference may be used to corroborate
inventorship. See EmeraChem Holdings, LLC v. Volkswagen
Grp. of Am., Inc., 859 F.3d 1341, 123USPQ2d 1146 (Fed. Cir.
2017). When additional documentary evidence contradicts
statements made by the inventor or at least one joint inventor
with respect to inventorship, it may be appropriate to maintain
the rejection(s). Ex parte Kroger, 219USPQ 370 (Bd. App.
1982).
(emphasis added).
Applying this guidance here, we find Exhibit A provides
contemporaneous documentation that corroborates inventor Takuki
Kamiya’s RULE §1.132 Declaration, based upon a preponderance of
evidence. We note inventor Takuki Kamiya has twice submitted
Declarations under penalty of perjury that he is “the sole inventor of the
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invention described and claimed in United States Patent Application Number
13/554,879 titled ‘EFFICIENT XMF INTERCHANGE PROFILE
STREAM DECODING,’ filed on July 20, 2012 (hereinafter ‘the
Application’).” RULE § 1.132 Declaration, filed Feb. 10, 2016; see also the
Japanese language original Declaration (p. 1), filed with the patent
application on July 20, 2012.
“Rule 13 [2] declarations and corroborating evidence constitute an
‘uncontradicted, unequivocal statement’ that they are the inventors of the
subject matter claimed in the instant application.” DeBaun, 687 F.2d at 463
(CCPA 1982) (bracket in original). The standard set forth by the court in
DeBaun was that it was “incumbent on appellant to provide satisfactory
evidence, in light of the total circumstances of the case, that the reference
reflected his own work.” Id. (citing with approval In re Facius, 408 F.2d
1396 (CCPA 1969)).
Although a RULE § 1.132 statement by the Appellant regarding his
inventorship in view of an article, patent, or published application may not
be sufficient where there is evidence to the contrary,6 here, we find the
Examiner has not fully developed the record to provide any evidence to
the contrary. See Ex parte Kroger, 219 USPQ 370 (BPAI 1982). The
Examiner advances a theory based upon speculation and conjecture, instead
of objective evidence of record. (Ans. 4). We decline to engage in such
speculation.
We recognize that EmeraChem Holdings, 859 F.3d at 1347 (Fed. Cir.
6 See e.g. Reese v. Hurst, 661 F.2d 1222, 1239 (CCPA 1981)(discussing the
weight given to self-serving declarations made by an Appellant in an
interference proceeding).
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2017), cautions that “DeBaun does not stand for the proposition that a
declaration alone is always sufficient to support an inventor’s claim to
inventorship. The CCPA recognized that ‘it was incumbent on appellant to
provide satisfactory evidence, in light of the total circumstances of the case,
that the reference reflected his own work.’ Id. [DeBaun] at 463.”
Here, we find Exhibit A, for the reasons discussed above, in
combination with the inventor’s Declaration under RULE §1.132, are
sufficient to support inventor Takuki Kamiya’s claim to sole inventorship
based upon a preponderance of the evidence of record.
Therefore, after reviewing the record, we are persuaded the Examiner
erred for essentially the same reasons argued by Appellant (App. Br. 8—11),
as further discussed above. Accordingly, we are constrained on this record
to remove from consideration the content under the heading “E Grammar
Restriction Considerations” from the EXI Profile reference, as relied upon
by the Examiner to support Rejection A under § 103(a). Because
rejection A improperly relies upon the inventor’s own work as evidence to
support the rejection, we reverse rejection A of all claims rejected
thereunder.
Rejection B of Claims 21 and 22
Rejection B also relies upon the same portion of the EXI Profile
reference to support the rejection of claims 21 and 22. For the same reasons
discussed above regarding the inventor’s Rule § 1.132 Declaration, we are
constrained on this record to remove from consideration the content under
the heading “E Grammar Restriction Considerations” from the EXI Profile
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reference, as being the inventor’s own work. Accordingly, we reverse
rejection B of all claims rejected thereunder.
DECISION
We reverse the Examiner’s decision rejecting claims 1—4, 6—12,
14—18, and 20-23.
REVERSED
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