Thursday, October 01, 2015

Pro se appellant loses at CAFC in In re Steed

The issue in In re Steed:

The principal issue on appeal is whether Steed antedated
the Evans reference in accordance with the requirements
and law implemented by Rule 131, for Steed
bears the burden to establish “facts . . . 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.”
37 C.F.R. § 1.131(b). Steed argues that the Declaration
and exhibits meet the requirements of either actual
reduction to practice or conception plus diligence.

There was no waiver:

The Board held that “assertions that the claimed invention
was actually reduced to practice in December of
1997, and at the latest by August of 2000 are not set forth
in the Appeal Brief or the Reply Brief, and are thus
considered waived.” Bd. Op. at 6. We discern no such
waiver. To the contrary, the appeal briefs included well
over a hundred pages of exhibits and arguments, all
directed to actual reduction to practice. Although the
Board concluded that the evidence did not establish an
actual reduction to practice, the issue was not omitted
from the appeal briefs.
Steed’s briefs before the Board are clear that Steed
was attempting to establish conception, diligence, and
actual reduction to practice. The flaw in Steed’s proofs
was in the content of the documentary evidence, not in
any purported waiver. It is beyond debate that Steed was
attempting to swear back of Evans, and that this was the
focus of the evidence and argument presented to the
Examiner and the additional documents and affidavits
presented to the Board.

The problem

We agree that the exhibits are not self-explanatory,
and the Examiner had adequately warned the applicant,
stating in the Final Office Action that “most of the notes
included for the [year] 2000 are all notes to call people
without actually including what phone calls were being
made about and what was being accomplished with
reference to the invention” and “there are 57 months of
time unaccounted for in applicant’s attempt to show due
diligence,” among other things. Office Action, Paper No.
34 at 5–6 (March 3, 2011). In an earlier Office Action, the
Examiner stated that “Appendix A . . . does not include
any specifics of the actual invention” and “there are
significant gaps of time between each of the Appendices
A-D that amount to entire years of diligence being omitted.”
Office Action, Paper No. 17 at 3–4 (Dec. 9, 2009).


We agree with the PTO argument, on this appeal,
[T]he Board cannot be faulted for not reviewing
evidence that was not presented to it or to the Examiner.
To the extent Appellants have better
proof of an earlier actual reduction to practice or
conception date, the proper remedy is to file a continuation
application and present the evidence to
the Examiner in the first instance.
PTO Br. 24. We conclude that substantial evidence
supports the Board’s findings, and the ruling that Steed
did not establish an actual reduction to practice before the
Evans effective date of December 23, 2002. That ruling is

As to conception:

An inventor can antedate a Section 103 reference by
showing that the invention was conceived before the
effective date of the reference, with diligence to actual or
constructive reduction to practice. 37 C.F.R. § 131(b).
Conception is “the formation, in the mind of the inventor,
of a definite and permanent idea of the complete
and operative invention, as it is thereafter to be applied in
practice.” Mergenthaler v. Scudder, 11 App. D.C. 264, 276
(D.C. Cir. 1897); see Coleman v. Dines, 754 F.2d 353, 359
(Fed. Cir. 1985). The Board found that the evidence that
Steed provided did not establish conception before the
Evans effective date, and that Steed did not adequately
explain the exhibits and how they showed conception of
the claimed subject matter, or when such conception
occurred. The Board recognized that the Table “identifies
that a piece of evidence corresponds to a certain date” but
criticized the absence of evidence to “explain what fact
that piece of evidence is meant to support as having
occurred on that date.” Bd. Op. at 15.



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