Ex parte Daniels

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte TIM DANIELS, DOUG HINZIE, and DAVID SPATZ
Appeal 2008-0568
Application 09/932,57 1
Technology Center 2 100
~ e c i d e d : 'May 20,2009
Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
JAMES T. MOORE and ALLEN R. MACDONALD, Vice Chief
Administrative Patent Judges, and WILLIAM F. PATE, I11 and
LINDA E. HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge
DECISION ON APPEAL
1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-0568
Application 09/932,57 1
STATEMENT OF THE CASE
Tim Daniels et al. (Appellants) seek our review under 35 U.S.C. 5 134
of the Examiner's adverse decision rejecting claims 1- 13. We have
jurisdiction under 35 U.S.C. 5 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
The Appellants' claimed invention relates to lubricants supply chain
management. Spec. 2:20. Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. 	A computer programmed to execute a
process for lubricants supply chain management,
said process comprising:
(a) upon receiving a request from a web-browser
client, querying a database comprising a catalog of
lubricants and prices and availability for same and
serving the results of said query to said requesting
web-browser client for display;
(b) serving an order form to said web-browser
client which is configured to contain fields for
order quantity and type for lubricants, delivery
type preferences and delivery address entered in
said web-browser client, and determining and
displaying on said web-browser client a delivery
price quote;
(c) receiving an order from said web-browser
client for a specific type and quantity of lubricants
2

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Application 091932,571
and having a specific delivery type selected;
(d) electronically transmitting over a network said
order to a fulfillment agent selected from the group
consisting of a Lubricant Blender or an Order
Fulfillment Agent, and mixtures thereof;
(e) electronically transmitting over a network said
order and said delivery information to a Freight-
Handling Agent;
(f) wherein said Freight-Handling Agent inputs
said information into a delivery optimization
system which outputs a delivery schedule which
includes said order, and electronically transmits
over a network said order and said delivery
information to at least one Trucking Company; and
(g) maintaining the status and all actions and
communications for said order in a web-accessible
database.
THE EVIDENCE
The Examiner relies upon the following evidence:
Hager 	US 6,085,808 	Jul. 11, 2000
Peterson 	US 200110011232 A1 	Aug. 2,2001
Dabbiere 	US 200210013721 A1 	Jan. 31,2002
Navani 	US 200210049667 A1 	Apr. 25,2002
Phillips 	US 2002101 16348 A1 	Aug. 22,2002
"Petrolsoft Introduces Wholesale Supply-Chain Planning Solution
for Refinery-to-Terminal Distribution," Business Wire, p. 17 (Aug. 2,
1999) (Business Wire).
The Appellants rely upon the following evidence:
Affidavit of Tim Daniels, Doug Hinzie, and David Spatz, filed under
37 C.F.R. 5 1.131 with accompanying exhibits ("the ' 131 affidavit")

Appeal 2008-0568
Application 09/932,57 1
THE REJECTIONS
The Appellants seek review of the following Examiner's rejections:
1. Claims 1-3, 5-8, 10, 11, and 13 are rejected under 35 U.S.C. 5 102(e)
as being anticipated by Navani.
2. Claims 4, 9, and 12 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Navani and Hager.
3. Claims 1, 2, 6, 7, and 11 are rejected under 35 U.S.C. 5 103(a) as
being unpatentable over Dabbiere and Business Wire.
4. Claims 4, 9, and 12 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Dabbiere, Business Wire, and Hager.
5. Claims 3 and 8 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Dabbiere, Business Wire, and Peterson.
6. Claims 5, 10, and 13 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Dabbiere, Business Wire, and Phillips.
ISSUE
The Appellants submitted an affidavit to antedate Navani and
Dabbiere. App. Br. 5. The Examiner found that the Appellants failed to
supply sufficient facts and supporting documentary evidence and exhibits to
show conception prior to the effective date of the prior art and subsequent
diligent reduction to practice of the claimed invention, as required by
37 C.F.R. 5 1.131(b). Ans. 8- 11. The Appellants contend that the Examiner
has failed to correctly apply the law regarding affidavits submitted under

Appeal 2008-0568
Application 09/932,57 1
37 C.F.R. 5 1.131 and that the Appellants' 	' 131 affidavit provides sufficient
evidence to antedate Navani and Dabbiere. Br. 7.
The issue presented by this appeal is:
Have the Appellants shown the Examiner erred in finding that the
' 131 affidavit fails to provide sufficient evidence to antedate Navani and
Dabbiere?
FINDINGS OF FACT
We find the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Znc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
1. 	The Examiner found that Navani discloses each element of claims
1-3, 5-8, 10, 11, and 13. Final Office Action dated June 8, 2005
(Final Office Action), paras. 24-30.
2. 	The Examiner made findings of fact and thereafter concluded that
the subject matter of claims 4,9, and 12 would have been obvious
to one having ordinary skill in the art at the time the invention was
made in view of the teachings of Navani and Hager, or, in view of
the teachings of Dabbiere, Business Wire, and Hager. Final Office
Action, paras. 34-35 and paras. 41-42.
3. 	The Examiner made findings of fact and thereafter concluded that
the subject matter of claims 1, 2, 6,7, and 11 would have been
obvious to one having ordinary skill in the art at the time the
5

Appeal 2008-0568
Application 09/932,57 1
invention was made in view of the teachings of Dabbiere and
Business Wire. Final Office Action, paras. 36-40.
4. 	The Examiner made findings of fact and thereafter concluded that
the subject matter of claims 3 and 8 would have been obvious to
one having ordinary skill in the art at the time the invention was
made in view of the teachings of Dabbiere, Business Wire, and
Peterson. Final Office Action, paras. 43-44.
5. 	The Examiner made findings of fact and thereafter concluded that
the subject matter of claims 5, 10, and 13 would have been obvious
to one having ordinary skill in the art at the time the invention was
made in view of the teachings of Dabbiere, Business Wire, and
Phillips. Final Office Action, paras. 45-46.
6. 	The Appellants do not contest the findings of fact made by the
Examiner as to the scope and content of the prior art, the
differences, if any, between the prior art and the claimed invention,
or the level of ordinary skill in the art, and do not contest the
Examiner's conclusions of anticipation and obviousness of the
claimed subject matter. Br., passim.
7. 	The Appellants submitted an affidavit pursuant to 37 C.F.R.
5 1.131 to antedate Navani and Dabbiere. Br. 5 and Evidence
Appendix.
8. 	The ' 131 affidavit states that the invention of claims 1- 13 "was
reduced to practice on a date prior to May 22,2000 or conceived

Appeal 2008-0568
Application 09/932,57 1
on a date prior to May 22, 2000 and diligently reduced to practice
thereafter."
9. 	The ' 131 affidavit included attached "project documents used in
the planning, commercial design, and/or implementation of the
invention." The ' 131 affidavit states that the attached project
documents "have a date prior to May 22, 2000 and/or existed in
draft form prior to May 22, 2000."
PRINCIPLES OF LAW
37 C.F.R. 5 1.131 provides in pertinent part:
(a) When any claim of an application or a patent under
reexamination 	is rejected, the inventor of the subject
matter of the rejected claim, the owner of the patent
under reexamination, 	or the party qualified under 	$ 5
1.42, 1.43, or 1.47, may submit an appropriate oath or
declaration to establish invention of the subject matter of
the rejected 	claim prior 	to the effective 	date of 	the
reference or activity on which the rejection is based . . . .
(b) The showing of facts 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.
37 C.F.R. 5 1.131 (2008).

Appeal 2008-0568
Application 09/932,57 1
ANALYSIS
The Appellants have waived any arguments contesting the substance
of the Examiner's underlying findings as to the prior art and ultimate
conclusions of anticipation and obviousness of the subject matter of claims
1-13 (Facts 1-6). Rather, the Appellants limited their challenge of the
Examiner's adverse decision to an attempt to swear behind and thus remove
two of the references, viz, Navani and Dabbiere, relied upon by the
Examiner in the rejections. Br. 5.
To swear behind Navani and Dabbiere, the Appellants must establish
invention of the subject matter of the rejected claims prior to the effective
date of each reference by showing facts sufficient to establish reduction to
practice prior to each effective date or conception of the invention prior to
each effective date coupled with due diligence from prior to each effective
date to a subsequent reduction to practice or to the filing of the application.
37 C.F.R. 5 1.131. The Appellants have submitted evidence in an effort to
establish invention of the subject matter of the rejected claims prior to May
22, 2000, i.e., the effective date of the earlier Dabbiere reference (Facts 7
& 8). This evidence consists of an affidavit under 37 C.F.R. 5 1.131, signed
by the inventors, and accompanying "project documents used in the
planning, commercial design, and/or implementation of the invention"
(Facts 7 & 9).
The ' 131 affidavit states that the invention of claims 1- 13 "was
reduced to practice on a date prior to May 22, 2000 or conceived on a date
prior to May 22, 2000 and diligently reduced to practice thereafter" (Fact 8).
8

Appeal 2008-0568
Application 09/932,57 1
The ' 131 affidavit further states that the attached project documents "have a
date prior to May 22, 2000 and/or existed in draft form prior to May 22,
2000" (Fact 9).
The evidence submitted by the Appellants in the present appeal is
similar in weight and character to the evidence submitted in In re
Borokowski, 505 F.2d 713 (CCPA 1974) and In re Harry, 333 F.2d 920,921
(CCPA 1964). In both of those cases, the court found the evidence
insufficient to antedate the prior art.
In In re Borokowski, 505 F.2d 713 (CCPA 1974), the appellants
submitted a Rule 131 affidavit to antedate a prior art patent. Id. at 7 14. The
appellants asserted that they conceived and reduced to practice the disclosed
and claimed subject matter prior to the filing date of the prior art patent. Id.
at 716. The remainder of the affidavit referred to attached exhibits,
including notebook pages and laboratory data, which the appellants asserted
described a reduction to practice of the process of the application. Id. 	The
appellants also submitted a supplemental affidavit with a supplemental
progress report discussing the significance of the test runs described in the
earlier-submitted exhibits. Id. at 7 17.
In determining that the original and supplemental affidavits were
insufficient to antedate the prior art reference, the court in Borokowski
stated:
The original and supplemental affidavits together
with the accompanying comments do not
adequately explain what facts or data appellants
are relying upon to show a completion of their

Appeal 2008-0568
Application 09/932,57 1
invention prior to [the effective date of the prior
art]. The affidavits for the most part consist of
vague and general statements in the broadest terms
as to what the exhibits show along with the
assertion that the exhibits describe a reduction to
practice. This amounts essentially to mere
pleading, unsupported by proof or showing of
facts.
Id. at 7 18 (citing In re Harry, 33 F.2d 920 (CCPA 1964)). In particular, the
court found that the fifteen notebook pages submitted in the exhibits to the
original affidavit were not clear on their face and that "[ilt was appellants'
burden to explain the content of these notebook pages as proof of acts
amounting to reduction to practice." 	Id. at 719. The court concluded that
"[albsent a clear explanation of the [pertinent] notebook pages pointing out
exactly what facts are established therein and relied on by appellants, the
affidavits based thereon are of little assistance in enabling the Patent Office
and its reviewing courts to judge whether there was an actual reduction to
practice of the invention." 	Id. (citing In re Harry, supra).
The court in Borokowski acknowledged that differences exist between
the requirements of interference practice and the ex parte showing of
completion of an invention prior to the effective date of a patent or
publication under Rule 131; nonetheless, the court upheld the board's
determination that the affidavits submitted in the case were insufficient to
meet the requirements of Rule 131. Id. (stating that the court's holding in In
re Spiller, 500 F.2d 1170 (CCPA 1974), "nowhere weakens the requirement,

Appeal 2008-0568
Application 09/932,57 1
under Rule 131, of a factual showing of completion of the invention before
the critical date.").
Similarly, in In re Harry, 333 F.2d 920, 921 (CCPA 1964), the
appellant filed two affidavits attempting to antedate prior art references. The
first affidavit stated that the subject matter of a drawing annexed "was
diligently reduced to practice," and the second affidavit stated that "steps
were taken to reduce the invention to practice in a commercial size unit by
engineering preparation of drawings, cost estimates and both construction
and installation of apparatus embodying the invention was done as promptly
as possible in all the circumstances." 	Id. at 922. The court held that Rule
131 requires "not a statement that facts exist" but an "oath to facts showing a
completion of the invention" and "the showing of facts shall be such, in
character and weight, as to establish reduction to practice, etc." 	Id. 	The
court found that the appellant's affidavits were "not proof or 'showing of
facts' but mere pleading" and merely asserted "that facts exist but does not
tell what they are or when they occurred." Id.
In the case before us, the '131 affidavit consists of only a bald
assertion in the broadest terms that the invention of claims 1-13 was either
reduced to practice prior to the effective date or conceived of prior to the
effective date and thereafter diligently reduced to practice.2 The Appellants
rely on the project documents submitted with the '1 3 1 affidavit as evidence
2 It appears from the Appellants' arguments in the Brief that they are
submitting the affidavit to show conception prior to May 22,2000 and
diligence from a time just prior to May 22, 2000 to the date of Appellants'
filing and constructive reduction to practice on August 16, 2001. Br. 6.
11

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in support of this assertion. The Appellants state that the project documents
"have a date prior to May 22, 2000 and/or existed in draft form prior to May
22, 2000" (Fact 9). Because the documents attached to Appellants' affidavit
may have been only in draft form prior to the effective date of the prior art,
we have no way of knowing from the Appellants' affidavit what portion of
the information in the attached project documents existed prior to the
effective date.
As in Borokowski and Harry, the Appellants' ' 131 affidavit also fails
to sufficiently explain the content of the project documents or how the
information therein establishes acts amounting to reduction to practice or
conception and diligent reduction to practice of the claimed invention. Thus,
the Appellants' assertion of prior invention amounts to mere pleading
unsupported by proof or showing of facts of sufficient character and weight
to establish prior invention by the Appellants. In re Borokowski, 505 F.2d at
718.
The Appellants discuss the content of the attached project documents
on page 6 of the Brief, in which they contend that the charts and diagrams at
pages 18, 20, and 24 "teach the invention as claimed sufficiently to enable
one skilled in the art to practice the invention." As we noted above, based
on the statement in the ' 131 affidavit that these documents existed "in draft
form" prior to May 22,2000, we have no way of knowing whether the
information in the charts and diagrams on pages 18, 20, and 24 existed as
now shown prior to the effective date of the prior art or whether some other
draft form of these pages existed prior to the effective date.
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Application 09/932,57 1
Further, the Appellants have failed to point to the specific information
on these identified pages on which they rely to show conception of the
invention. Neither the ' 131 affidavit nor the arguments in the Brief establish
facts sufficient to tie the information found in the charts and diagrams of the
project documents to the claim limitations in a manner to show conception
of even the basic invention. See In re Spiller, 500 F.2d 1170, 1178 (CCPA
1974) (holding a Rule 131 declaration that shows reduction to practice of the
inventor's "basic invention" is also sufficient as to claims differing
therefrom in details which are obvious to one of ordinary skill in the art). As
such, the attached project documents are of little assistance in enabling the
Patent Office to judge whether there was conception of the invention prior to
the effective date of the prior art and diligence thereafter until Appellants'
constructive reduction to practice.
The Appellants contend the Examiner improperly rejected the '13 1
affidavit because the dates on the accompanying exhibits were redacted.
Br. 5. The Examiner mentioned the redacted dates only in the context of
finding that "[tlhe Applicants have failed to meet their burden of providing
explicit facts and supporting evidence which would demonstrate diligence in
reducing the invention to practice over the critical period, which in this case
begins 22 May 200 and ends on the date the instant patent application was
filed." Ans. 8 (quoting Final Office Action, para. 17). The Examiner did
not refer to the redacted dates in finding that the ' 131 affidavit fails to
clearly set out specific facts which demonstrate that the claimed invention
was conceived before the effective date of the applied references and fails to
13

Appeal 2008-0568
Application 09/932,57 1
clearly explain which exhibits are relied upon as evidence to support which
facts. Final Office Action, paras. 11 and 15. Rather, the Examiner's
determination that the ' 131 affidavit failed to establish conception before the
effective date of the prior art was based on the lack of a sufficient showing
of facts, as explained supra, to support the Appellants' bald assertion of
prior conception, and was not based on the redacted dates of the
accompanying exhibits.
As to the issue of diligence, the Appellants contend that given the
"relatively short period of time between [the effective date of the earliest
cited reference and the date the Appellants' application was filed], the 131
Affidavit's express recital of due diligence is sufficient." Br. 6. As noted by
the Appellants, the time period in this case for showing diligence is
approximately 15 months. Id. We do not agree with the Appellants'
characterization of this time period as a "relatively short period of time" for
showing diligence. 	C$ In re Mulder, 716 F.2d 1542, 1545 (Fed. Cir. 1983)
(affirming the Board's refusal to accept declarations as meeting the
requirements of Rule 131 when the declarations contained no evidence
showing diligence during the two-day period between the effective date of
the prior art and the Appellants' filing date). Regardless, an "express recital
of due diligence" without showing any facts to support such a recital is mere
pleading, which is insufficient to establish diligence. See e.g., In re
Borokowski, 550 F.2d at 718 and In re Harry, 333 F.2d at 922.

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Application 09/932,57 1
CONCLUSION
The Appellants have not shown the Examiner erred in finding that the
' 131 affidavit fails to provide sufficient evidence to antedate Navani and
Dabbiere.
DECISION
The decision of the Examiner to reject claims 1-13 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED
TIMOTHY J. HADLOCK
CHEVRON CORPORATION
P.O. BOX 6006
SAN RAMON, CA 94583-0806