In a separate action on November 11, 2008, GEOSPAN requested the U.S Patent Office to reexamine Pictometry’s U.S. Patent Number 7,424,133, entitled “Method and Apparatus for Capturing, Geolocating and Measuring Oblique Images.” This action is a procedure used by the U.S. Patent Office to allow the claims in existing patents to be contested (Ref. No. 95/001,110)
In its request, GEOSPAN set forth substantial new questions of patentability based upon a September 5, 2002 printed publication by David Rattigan, a reported for a Boston newspaper. The USPTO ordered inter partes reexamination of the ‘133 Patent, and subsequently issued a Non-Final Office Action on February 2, 2009 rejecting claims 17-24 on anticipation and obviousness grounds. Currently, the rejections are on appeal to the BPAI.
On May 25, 2010, the patent owner filed its brief. On the appeal, the Patent Owner is contesting the USPTO’s conclusion that the submitted declaration evidence filed under 37 C.F.R. § 1.131 (swear behind) is insufficient as well as the conclusion that declaration evidence filed under 37 C.F.R. § 1.132 is insufficient to disqualify the Rattigan publication based upon attribution. (MPEP 716.10). Of particular interest is the dispute between the USPTO and the Patent Holder as to whether declaration evidence can be used to disqualify a prior art reference as “attributed” to the inventors’ work where none of the inventors is an author of the printed publication used to reject the claims.
The USPTO has taken the position that some overlap must exist between inventorship and authorship of the prior art reference to properly be “attributed.” Conversely, the patent owner in its brief relies on In re Costello, 717 F.2d 1346, 1347 (Fed. Cir. 1983), Ex parte Nykoluk, Appeal No. 2008-1778, page 21 (Bd. App. & Int. 2008) and Ex parte 5872952 et al., Appeal No. 2005-2512 (Bd. App. & Int. 2006) in arguing that co-authorship is not a requirement for disqualifying a reference using a § 1.132 declaration.
PPG Comment: Attribution typically involves co-authorship as inventions are often described in academic papers by the inventors along with other contributors. The idea behind attribution is that a description initially identified as prior art that is “attributable” to the inventors work, should be disqualified. Here, the description is by a reporter commenting on a promising technology that formed the basis for the patent, as demonstrated by the declaration evidence of record (Patent Owner Brief here). The Office appears to be requiring co-authorship of the news report not based upon any holding of the courts, but instead, based on commonly encountered fact patterns.
An Answer to the appeal briefing was issued last week (here). I was hoping for a bit more insight into the position of the Office. Unfortunately, the Answer simply incorporates the positions of the RAN (which, was of course written prior to the briefs). Very strange.