Ex Parte Corser et al

Patent Trial and Appeal BoardSep 29, 2014

12339425 (P.T.A.B. Sep. 29, 2014)

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. 12/339,425 12/19/2008 Don Clair Corser DP317651 7181 22851 7590 09/29/2014 Delphi Technologies, Inc. P.O. Box 5052 M/C 483-400-402 Troy, MI 48007-5052 EXAMINER WILENSKY, MOSHE K ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 09/29/2014 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DON CLAIR CORSER and JOEL THOMAS HAMBRUCH ____________________ Appeal 2012-008031 Application 12/339,425 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, LYNNE H. BROWNE, and BRANDON J. WARNER, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Don Clair Corser and Joel Thomas Hambruch (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–5 under 35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted Prior Art (AAPA), Hunzinger (US 6,347,663 B1, iss. Feb. 19, 2002), and Kaspar (US 2005/0006544 A1, pub. Jan. 13, 2005). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-008031 Application 12/339,425 2 CLAIMED SUBJECT MATTER The claims are directed to method for securing a heat exchanger bracket. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for attaching a bracket to a heat exchanger comprising the steps of providing a heat exchanger having a mounting surface; followed by locating a bracket in contact with the mounting surface, the bracket having an edge portion that conforms to the mounting surface; followed by skiving a portion of the mounting surface adjacent to the edge portion so that a sufficient amount of the skived material is deformed against the edge portion to retain the bracket to the heat exchanger. ISSUES The issues presented by this Appeal are whether the statements in the sixth paragraph of the Specification constitute an admission, and if so, whether this admission is disqualified as prior art under 35 U.S.C. § 103(c). ANALYSIS Does the Sixth Paragraph of the Specification Constitute an Admission? “Appellants note that the MPEP consistently refers to identifying / labeling ‘prior art’ with the phrase ‘prior art’ contained within quotation marks.” Appeal Br. 7. Appellants argue that “the phrase ‘prior art’ has special significance in the arena of patent prosecution, and that MPEP §2129 acknowledges this special significance by placing the phrase ‘prior art’ within quotation marks.” Id. Appellants further contend that: Appeal 2012-008031 Application 12/339,425 3 if the phrase “prior art” appears verbatim in the specification then the subject matter identified as “prior art” is treated as admitted prior art. MPEP §2129 does not state that any word or phrase that may or may not be construed as synonymous with the phrase “prior art” is to be given the same significance. To apply MPEP §2129 so broadly as to rely on the judgment of an Examiner to determine if §2129 is applicable in the absence of a verbatim admission of “prior art” would place an unreasonable burden on the Examiner Corps, and would lead to inconsistency in the examination of patent applications. Id. In response to these arguments, the Examiner cites Sjolun v. Musland, 847 F.2d 1573, 1576 (Fed. Cir. 1988)(The description of the prior art . . . states that “[c]onventional crab traps have been used in their present form for main years.”) for the proposition that “the words ‘prior art’ do not need to be present in the specification in order to invoke an admission of prior art.” Ans. 8. The Examiner explains the factual support underlying his determination that the sixth paragraph of the Specification is an admission stating: First, the relevant text appears in the “Background of the Invention” section. Second, the relevant section follows the phrase a fourth known method of securing a bracket to a heat exchanger. [The] Examiner believes the term known method is analogous to the term “conventional” used in Sjolund. Third, appellant’s September 22, 2011 Amendment states [t]he method described in paragraph [0006] of Applicants’ specification is a method that was being developed and evaluated at Delphi prior to the present invention (emphasis added). This statement indicates a Delphi employee(s) developed the method prior to the current application. This statement constitutes a further admission by appellant that confirms the initial interpretation that paragraph [0006] is prior Appeal 2012-008031 Application 12/339,425 4 art. A similar statement is made in the 132 Declaration1 which fails to establish how the declarant, a contract employee, got this information and knows it to be true, and also fails to establish that the declarant has the authority to speak about this issue on behalf of the assignee. Id. at 8–9. The Examiner correctly determines that our precedent is not so narrow as to preclude a finding of an admission unless the phrase “prior art” appears ipsissimis verbis. The Examiner has identified signals in the Specification indicating that the method described in the sixth paragraph thereof was known at the time of the invention. Further, we agree with the Examiner that the amendment to the Specification discussed supra is further evidence that the sixth paragraph constitutes an admission, and we note that Appellants do not contest the Examiner’s determination in the Reply Brief. Thus, Appellants do not apprise us of error in the Examiner’s determination that the sixth paragraph of the Specification constitutes an admission. Is the Sixth Paragraph of the Specification Disqualified as Prior Art? Appellants argue that even if the method described in the sixth paragraph of the Specification is an admission, it only qualifies as prior art under 35 U.S.C. § 102(f) and therefore is disqualified as prior art under 35 U.S.C. § 103(a). See Appeal Br. 9. 35 U.S.C. § 103(c) states: (1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the 1 Declaration under 37 C.F.R. § 1.132 of co-inventor Don C. Corser, dated October 31, 2011 (132 Declaration). Appeal 2012-008031 Application 12/339,425 5 same person or subject to an obligation of assignment to the same person. (2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if — (A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made; (B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and (C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement. (3) For purposes of paragraph (2), the term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention. Appellants state that “[t]he ‘known’ method described in paragraph [0006] of Appellants’ specification is a method that was being developed and evaluated at Delphi prior to the invention that is the subject of the present Application.” Appeal Br. 9, see also the 132 Declaration. Appellants do not identify the inventors of the method described in the sixth paragraph of the Specification and do not identify the method as the work of the inventors of the method that is the subject of this Appeal. Accordingly, the Examiner correctly determined that the method described in the sixth paragraph of the Specification is subject matter developed by another person. See, e.g. Ans. 11. Section 103(c) serves to disqualify prior art when that prior art only qualifies under one of sections 102 (e), (f), or (g) and the subject matter developed by another person is “owned by the same person or subject to an Appeal 2012-008031 Application 12/339,425 6 obligation of assignment to the same person” at the time the claimed invention was made. 35 U.S.C. § 103(c). Appellants argue that at the time the claimed invention was made, “[t]he ‘known’ method described in paragraph [0006] of Appellants’ specification is a method that was being developed and evaluated at Delphi prior to the invention that is the subject of the present Application” and “the method described in paragraph [0006] and the claimed invention were both “subject to an obligation of assignment to Delphi.” Appeal Br. 9. However, Appellants fail to provide evidence that Delphi was developing and evaluating the method described in the sixth paragraph of the Specification, or evidence of this obligation of assignment. Moreover, Appellants fail to provide evidence that the subject matter was “owned by the same person or subject to an obligation of assignment to the same person” within the meaning of that phrase as it is defined by the statute. Attorney’s arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405. Thus, Appellants fail to show that the sixth paragraph of the Specification is disqualified as prior art under Section 103(c). CONCLUSION The Examiner’s determination that the statements in the sixth paragraph of the Specification constitute an admission is correct. Further, Appellants’ admission is not disqualified as prior art under 35 U.S.C. § 103(a). DECISION The Examiner’s rejection of claims 1–5 is AFFIRMED. Appeal 2012-008031 Application 12/339,425 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED pgc