Ex Parte GE et al

Patent Trial and Appeal Board

Jan 31, 2017

13586040 (P.T.A.B. Jan. 31, 2017)

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.
13/586,040 08/15/2012 Chongzhao GE PCll 1414US1 6334
58342 7590 02/02/2017
WARREN A. SKLAR (SOER)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
HANNETT, JAMES M
ART UNIT PAPER NUMBER
2662
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
ipdocket @ rennerotto. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHONGZHAO GE, ZHIYUAN CUI, and QINGFA YANG
Appeal 2015-008079
Application 13/586,040
Technology Center 2600
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Sony Mobile Communications AB as the real party in
interest. App. Br. 2.
Appeal 2015-008079
Application 13/586,040
STATEMENT OF THE CASE
The Invention
Appellants’ invention relates to “a camera module, an electronic
device comprising the same and an Auto Focus (AF) method. In which the
camera module controls an AF according to received direction information
of the camera module [sic].” Abstract.
References and Rejections
1. Claims \-A and 6—8 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Zhou (US 2013/0155266 Al, published June 20, 2013).
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Zhou and Velarde (US 2012/0257065 Al, published Oct.
11,2012).
ANALYSIS
Appellants do not challenge the merits of the prior art rejections, but
instead seek to swear behind the Zhou reference cited in support of each
rejection. App. Br. 4 et seq. In doing so, Appellants seek to show
reasonable diligence in reducing the invention to practice from just prior to
Zhou’s prior art date (December 15, 2011), to the filing date of the Chinese
application to which this application claims priority (December 31, 2011).
Id. The evidence provided by Appellants includes a declaration filed under
37 U.S.C. § 1.131 (“Declaration”) and an order letter to foreign attorneys,
dated November 15, 2011 (“Order Letter”). In Appellants’ Declaration,
Appellants state “[d]uring the time from at least just prior to December 14,
2011 through December 31, 2011 ... I worked diligently through my
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Application 13/586,040
attorney to finalize and file the current application.” Declaration 13.
Appellants’ Order Letter, sent before the priority date of Zhou, instructs
foreign attorneys to draft the Chinese application, send the draft to the
inventors for their review, and to file the application by certain suggested
dates (see Order Letter).
The Examiner finds “the evidence submitted is insufficient to
establish diligence from a date prior to the date of reduction to practice of
the Zhou reference to either a constructive reduction to practice or an actual
reduction to practice.” Ans. 5—6. We agree with the Examiner that
Appellants fail to provide sufficient evidence to establish reasonable
diligence for the duration of the critical period from December, 15, 2011, to
December 31, 2011. We adopt the Examiner’s findings and conclusions as
set forth in the Answer. Ans. 5—7.
Title 37 C.F.R. § 1.131 provides that a party, in certain circumstances,
may establish, by a showing of fact, invention prior to a reference applied in
a rejection and thus remove that reference as available prior art. In
connection with the required showing, 37 C.F.R. § 1.131(b) specifies:
The showing of facts for an oath or declaration under paragraph
(a) of this section shall be such, in character and weight, as to
establish reduction to practice prior to the effective date of the
reference, or conception of the invention prior to the effective
date of the reference coupled with due diligence from prior to
said date to a subsequent reduction to practice or to the filing of
the application. Original exhibits of drawings or records, or
photocopies thereof, must accompany and form part of the
affidavit or declaration or their absence must be satisfactorily
explained.
An applicant must account for the entire period during which diligence is
required by either affirmative acts or sufficient excuse for inactivity. Gould
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Application 13/586,040
v. Schawlow, 363 F.2d 908, 918 (CCPA 1966); Hullv. Davenport,
90 F.2d 103, 105 (CCPA 1937); Griffith v. Kanamaru, 816 F.2d 624, 626
(Fed. Cir. 1987). Although constant effort is not required, there must be
some record evidence to explain the delay. In re Nelson, 420 F.2d 1079,
1081 (CCPA 1970). Reasonable diligence can be shown if it is established
that the attorney worked reasonably hard on the particular application in
question during the continuous critical period. Bey v. Kollonitsch, 806 F.2d
1024, 1027 (Fed. Cir. 1986).
The evidence presented shows the application was with the foreign
attorneys during the critical period. Order Letter 1—2. However, Appellants
have not provided any evidence that any specific acts related to the
application were actually performed (except filing the application), or if they
were, the date that such acts were performed. As the Examiner notes, there
is no evidence that the application was shared with the inventors for review
or if the inventors had any specific input on the application. Ans. 6.
Similarly, no evidence has been presented, in the form of billing records,
communications, snapshots of counsel’s docket, or the like, as to when and
for how long the foreign attorneys were working on the application, and
when they were working on unrelated matters. Appellants must present
details of diligence for the present invention. See e.g., Bey, 806 F.2d at
1027—28. (“[The] records did not show the exact days when activity specific
to this application occurred. . . . [T]he attorney has the burden of keeping
good records of the dates when cases are docketed as well as the dates when
specific work is done on the applications.”)
The only evidence directly related to actions that may have taken
place during the critical period is Appellants’ statement in the Declaration
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that “[d]uring the time from at least just prior to December 14, 2011 through
December 31, 2011 . . .1 worked diligently through my attorney to finalize
and file the current application.” However, Appellants do not provide any
records to corroborate this statement. Given the absence of underlying
evidence, we find the Appellants’ statement in the Declaration amounts to a
mere pleading and is insufficient to establish diligence. See In re Harry, 333
F.2d 920, 923 (CCPA 1964) (“This is not proof or ‘showing of facts’ but
mere pleading. It asserts that facts exist but does not tell what they are or
when they occurred. The Patent Office must have such facts ... to judge . . .
whether there was diligence.”)
Appellants rely on Gianladis v. Kass, 324 F.2d 322, (CCPA 1963),
arguing that because a two month period for filing an application has been
deemed sufficient for showing diligence, a period of less than two months,
as in this case, for filing the Chinese application necessarily shows diligence
over the critical period. See App. Br. 8. The concern here, however, is not
the length of time taken to draft and file the application. Instead the issue is,
as explained above, that Appellants have not presented any evidence
accounting for the specific actions of either themselves or their attorneys
during this duration. In Gianladis there was evidence of the attorneys
performing a prior art search, correspondence between the attorneys and the
inventor regarding the invention, and actions taken by the inventor in
pursuing the application. See Gianladis, 324 F.2d at 760 (“Both Kass and
his attorney from inception engaged in activity directed to an expeditious
preparation and filing of the application.”). We lack similar evidence in this
case.
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For the reasons above, we find that the Examiner correctly determined
that the evidence submitted by Appellants is of insufficient weight and
character. Because Appellants do not challenge the merits of the rejections,
we sustain the Examiner’s rejections of claims 1—8.
DECISION
The Examiner’s rejections of claims 1—8 are affirmed.
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.
§ 41.50(f).
AFFIRMED
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