Ex Parte Wang et al

Patent Trial and Appeal Board

Nov 24, 2014

12019512 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH CHEN-TING WANG and
JUAN MANUEL ALVAREZ
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Appeal 2012-009077
Application 12/019,512
Technology Center 3600
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Before: CHARLES N. GREENHUT, JILL D. HILL, and
BRANDON J. WARNER, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Kenneth Chen-Ting Wang and Juan Manuel Alvarez (Appellants)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
23–37. We have jurisdiction under 35 U.S.C. § 6(b).
Oral argument for this appeal was held before a panel of the Board on
November 4, 2014.
We AFFIRM.

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CLAIMED SUBJECT MATTER
Independent claim 23, reproduced below, represents the claimed
subject matter.
23. A method of separating seeds, the method comprising:
a) providing a reservoir comprising a plurality of seeds in
a liquid;
b) providing an inlet flow of liquid into the reservoir;
c) adjusting the specific gravity of the liquid so that a
first portion of the seeds float near the surface of the liquid
relative to a second portion of the seeds that sink near the
bottom of the reservoir; and
d) providing an outlet flow of the liquid from a location
proximal to the top of the reservoir, wherein the outlet flow
removes the first portion of the seeds from the reservoir

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
McDaniel US 3,642,129 Feb. 15, 1972
Davitt US 3,954,415 May 4,1976
Barnsbee US 4,194,926 Mar. 25, 1980
Fogerson US 4,750,995 June 14, 1988
Fluid density separator VSG-06, Hoopman Equipment & Engineering, © 2006
(Hoopman)

REJECTIONS

Claims 23, 27, 28, and 31–35 stand rejected under 35 U.S.C. § 102(a)
or 102(b) as anticipated by Hoopman. Ans. 5.
Claims 24–26 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hoopman, McDaniel, and Davitt. Id. at 6.
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Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hoopman and Barnsbee. Id. at 8.
Claims 36 and 37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hoopman, Barnsbee, and Fogerson. Id. at 9.

OPINION
Hoopman as Prior Art
Appellants submitted an Information Disclosure Statement on July 11,
2008, including the Hoopman reference with a date of “2006.”1 The
Examiner, relying on a copyright date of “2006” and Appellants listing
thereof on the Information Disclosure Statement as evidence of a public
disclosure date, applied the Hoopman reference as prior art in rejecting the
pending claims.
Appellants refer us to MPEP § 2128, which states that “absent
evidence of the date that the disclosure was publicly posted, if the
publication itself does not include a publication date (or retrieval date), it
cannot be relied upon as prior art under 35 U.S.C. §102(a) or (b).” Appeal
Br. 5; Reply Br. 7. Appellants argue that the Examiner fails to establish
that the Hoopman reference constitutes prior art under any section of 35
U.S.C. § 102, and “has provided no evidence establishing the date that
Hoopman was publicly available and certainly no evidence that it was
publicly available as of [Appellants’] filing date,” so that “the Examiner has

1 Appellants argue, correctly, that citation of Hoopman in Appellants’
Information Disclosure Statement was “not an admission or indication that
Hoopman is prior art” because “the ‘[m]ere listing of a reference in an
information disclosure statement is not taken as an admission that the
reference is prior art against the claims.’” Id. at 4–5 (citing MPEP
§ 2129 (IV) and 37 C.F.R. § 1.97(h) regarding materiality).
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not met the burden to demonstrate that Hoopman was publicly available.”
Appeal Br. 4 (emphasis added). Appellants base this argument on their
assertion that a copyright date “has no bearing on when something was
published or even if it was ever published at all . . . .” Appeal Br. 5
(emphasis added); Reply Br. 7.
The Examiner responds that the Hoopman reference “is not only dated
2006, but it also provides contact information, including a physical and
virtual (Hoopman Engineering website) address, at the bottom of both
pages,” which is “indicative of the fact that the Hoopman reference
functions as a sales brochure for a ‘Fluid Density Separator.’” Ans. 11. The
Examiner finds that this information provides evidence that, and supports an
“inference that the sales brochure was available to the public” and therefore
qualifies as prior art. Id. at 11–12.
In response to Appellants’ assertion that the Hoopman reference is not
prior art in accordance with Carella v. Starlight Archery, 804 F.2d 135 (Fed.
Cir. 1986) (Appeal Br. 4), the Examiner distinguishes the facts of the
Hoopman reference from those set forth in Carella, pointing out that
“Hoopman contains a 2006 copyright date and has explicit information for
the electronic retrieval of [information regarding] the ‘Fluid Density
Separator VSG-06.” Ans. 12. The Examiner further finds that the Hoopman
Engineering website “contains a ‘News Section’ indicating that the VSG-06,
which is the subject of the Hoopman reference] was promoted at a
conference in 2006.” Id.
Appellants counter that public availability of the website’s “News
Section” and the alleged disclosure of the VSG-06 at a conference in 2006,
do not support the rejection because the website information does not show
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knowledge or use by others in this country, or patenting or description in a
printed publication in this or a foreign country in 2006 because “there is no
evidence that the ‘News Section’ was publicly available as of the priority
date of the present application.” Appeal Br. 5–6.
The Examiner nonetheless concludes that “the available evidence is
sufficient to satisfy Examiner’s burden in showing that Hoopman was
properly cited and applied . . . .” Id. at 13.
While we agree that the Information Disclosure Statement was not an
explicit admission of the Hoopman reference as material prior art, we also
agree with the Examiner that Appellants’ submission of the Hoopman
reference with a 2006 date, along with the copyright date listed on the
Hoopman reference, provide prima facie evidence of its public availability.
In fact, it is the only evidence, there being no evidence of record that calls
into question the veracity or accuracy of the 2006 date. Appellants’
assertion that a copyright date “has no bearing on when something was
published or even if it was ever published at all” (App. Br. 4–5) is not on
point. Although a copyright may be obtained for an unpublished work,2
general practice is to include the “year of first publication” in a copyright
notice.3 Appellants have not come forward with any evidence to suggest the
authors of the Hoopman reference did not comply with this general practice.
Accordingly, the Examiner has met the burden of establishing the Hoopman
reference is prima facie available as prior art with a date of, broadly, 2006.

2 Compare In re Lister, 583 F. 3d 1307 (Fed. Cir. 2009) (where the court
held that the date of copyright registration, without more, was not sufficient
evidence to shift the burden to the applicant to show inaccessibility).
3 See Universal Copyright Convention, Article III § 1 (emphasis added).
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35 U.S.C. § 102(b) states: “A person shall be entitled to a patent
unless . . . the invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this country, more than
one year prior to the date of application for patent in the United States.”
(Emphasis added). Appellants’ Specification, filed January 24, 2008, claims
priority to U.S. Provisional Patent Appl. No. 60/886,480, filed January 24,
2007. Spec. 1. Because the broad 2006 date alone of the Hoopman
reference is insufficient evidence of its public availability prior to January
24, 2006, the Hoopman reference may not be prior art under Section 102(b).
The Hoopman reference is, however, prior art under at least 35 U.S.C. §
102(a), which sets forth entitlement to a patent unless: “the invention was . .
. described in a printed publication in this or a foreign country, before the
invention thereof by the applicant for a patent.”
Prior Art Rejections
Appellants argue that the prior art rejections must be reversed because
the Hoopman reference is not prior art. Because we conclude that the
Examiner has met the burden of establishing the Hoopman reference as prior
art under at least 35 U.S.C. § 102(a), we sustain the prior art rejections.

DECISION
We AFFIRM the rejection of claims 23, 27, 28, and 31–35 under 35
U.S.C. § 102(a) as anticipated by Hoopman.
We REVERSE the rejection of claims 23, 27, 28, and 31–35 under 35
U.S.C. § 102(b) as anticipated by Hoopman
We AFFIRM the rejection of claims 24–26 under 35 U.S.C. § 103(a)
as unpatentable over Hoopman, McDaniel, and Davitt.
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We AFFIRM the rejection of claims 29 and 30 under 35 U.S.C.
§ 103(a) as unpatentable over Hoopman and Barnsbee.
We AFFIRM the rejection of claims 36 and 37 under 35 U.S.C.
§ 103(a) as unpatentable over Hoopman, Barnsbee, and Fogerson.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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