Ex parte Boer

UNITED S TATES PATENT AND T RADEMARK 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.
10/621,862 	07/17/2003 	Jan Boer 	6-2-2-5 	1756
7590 	05/21/2012 	EXAMINER
Ryan, Mason & Lewis, LLP
90 Forest Avenue 	MALEK, LEILA
Locust Valley, NY 11560 ART UNIT 	PAPER NUMBER
2611
MAIL DATE 	DELIVERY MODE
05/21/2012 	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 BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte JAN BOER, BAS DRIESEN, RA’ANAN GIL, and
KAI ROLAND KRIEDTE
Appeal 2009-010590
Application 10/621,862
Technology Center 2600
____________
Before ALLEN R. MACDONALD, THOMAS S. HAHN, and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.
WHITEHEAD, JR., Administrative Patent Judge.
DECISION ON APPEAL

Appeal 2009-010590
Application 10/621,862
STATEMENT OF THE CASE
(1) Appellants and jurisdiction
Jan Boer, Bas Driesen, Ra’anan Gil, and Kai Roland Friedte
(Appellants) appeal under 35 U.S.C. § 134 from a final rejection mailed on
April 2, 2008. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
(2) Filing date and real party in interest
The application on appeal was filed on July 17, 2003.
The application is assigned of record to Agere Systems
Inc. On April 2, 2007, the assignee Agere Systems Inc.
completed a merger with LSI Logic Corporation, with the
resulting entity being named LSI Corporation. LSI Corporation
is the real party in interest.
Appeal Brief, page 1.
(3) Claims and grounds of rejection to be reviewed on appeal
The Examiner entered a Final Office Action (final rejection) which
was mailed on April 2, 2008.
Claims 1-38 are pending in the application. Appeal Brief, page 2.
Claims 1, 16, 18, 23, 25, 34, 35, 37, and 38 are independent claims.
Claims 1, 5, 12-14, 16, 17, 25, 28, 33, and 38 stand rejected under 35
U.S.C. §103(a) as being unpatentable over Sano (European Patent
Application Publication Number EP1 367 752 A1, published March 12,
2

Appeal 2009-010590
Application 10/621,862
2003) and Tzannes (U.S. Patent Application Publication Number
2004/0047296 A1, published March 11, 2004). Answer, pages 3-9.
Claims 2-4, 6, 26, 27, 29, and 34 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Sano, Tzannes, and Mobin (U.S. Patent
Number 6,522,696 B1, issued February 18, 2003). Answer, pages 9-13.
Claims 7-9, 30, and 31 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Sano, Tzannes, Mobin, and Balachandran (U.S.
Patent No. 6,215,827 B1, issued April 10, 2001). Answer, pages 13-14.
Claims 10 and 32 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Sano, Tzannes and Mobin, and Li (U.S. Patent
Application Publication Number 2003/0157914 A1, published August 21,
2003). Answer, pages 14-15.
Claim 11 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Sano, Tzannes, Mobin, Li, and Balachandran. Answer,
pages 15-16.
Claim 15 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Sano, Tzannes, and Balachandran. Answer, pages 16-17.
Claims 18-20, 23, 24, and 37 stand rejected under 35 U.S.C. §103(a)
as being unpatentable over Sano, Tzannes, Mobin, and Balachandran.
Answer, pages 17-25.
3

Appeal 2009-010590
Application 10/621,862
Claims 21 and 22 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Sano, Tzannes, Mobin, Balachandran, and Li. Answer,
pages 25-26.
Claim 36 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Sano, Tzannes, Mobin, Balachandran, and Shurvinton
(U.S. Patent Application Publication Number 2005/0130595 A1, published
June 16, 2005). Answer, pages 26-27.
Claim 35 was allowed. Answer, pages 27-28.
Appellants filed a Declaration of Prior Invention under 37 C.F.R.
§1.131 with exhibits on December 13, 2007 to provide evidence that the
actual reduction to practice of the invention in the instant application was at
least as early as March 12, 2001. Appeal Brief, page 11. Appellants
contend the filing of the Declaration effectively removed Tzannes, having a
priority date of March 8, 2002, as 35 U.S.C. § 102(e) prior art. Id.
In the Final Rejection, mailed April 2, 2008, the Examiner considered
Appellants’ Declaration and determined the Declaration to be “ineffective to
overcome the references used.” Final Rejection, page 2; see also Answer,
pages 30-33.
Appellants filed an Attorney Affidavit on June 5, 2008 to substantiate
Appellants efforts to locate one of the missing inventors required to sign the
4

Appeal 2009-010590
Application 10/621,862
Declaration of Prior Invention under 37 C.F.R. §1.131 filed December 13,
2007. Appeal Brief, pages 11-12.
In an Advisory Action mailed June 25, 2008, the Examiner upheld his
earlier decision that Appellants’ Declaration was “ineffective to overcome
the references used.” Advisory Action, page 2.
Appellants argue that the Declaration signed by three of the four
inventors is sufficient to show actual reduction to practice even without the
testimony of the fourth inventor. Appeal Brief, pages 11-13.
Issue
Does the Board have jurisdiction to decide sufficiency of the
Declaration of Prior Invention under 37 C.F.R. §1.131?
ANALYSIS
Appellants appealed to the Board because they disagreed with the
Examiner’s determination that their Declaration of Prior Invention under 37
C.F.R. §1.131 was not sufficient. Appeal Brief 11-13. According to
M.P.E.P. §715.08, an Examiner’s determination of the sufficiency of
Appellants’ Declaration in the Final Rejection is under the Examiner’s
purview.
5

Appeal 2009-010590
Application 10/621,862
M.P.E.P. 715.08 is reproduced below:
715.08 	Passed Upon by Primary Examiner R-6]
The question of sufficiency of affidavits or declarations
under 37 CFR 1.131 should be reviewed and decided by a
primary examiner.
Review of questions of formal sufficiency and propriety
are by petition filed under >37 CFR 1.181<. Such petitions are
answered 	by the 	Technology 	Center 	Directors 	(MPEP 	§
1002.02(c)).
Review on the merits of a 37 CFR 1.131 affidavit or
declaration is by appeal to the Board of Patent Appeals and
Interferences.
If Appellants disagreed with or questioned the Examiner’s
determination of insufficiency with regard to their Declaration, Appellants’
recourse was to file a petition under 37 CFR 1.181 to be addressed by the
Technology Center Director. See M.P.E.P. 715.08. Instead of filing a
petition to the Technology Center Director, Appellants sought our review on
the sufficiency of the Declaration. Appeal Brief 13. This is a petitionable
matter at this stage and we do not have jurisdiction to overrule the
Examiner’s decision on sufficiency. See M.P.E.P. 715.08.
We therefore treat the Examiner’s decision on the sufficiency of the
declaration as correct in our review on the merits of the various 35 U.S.C.
§ 103 rejections and reach the same results as the Examiner.
DECISION
The rejections of claims 1-34 and 36-38 under the various 35 U.S.C.
§ 103 rejections are sustained.
6

Appeal 2009-010590
Application 10/621,862
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
llw
7