Appeal No. 2005-2512
Reexamination Control No. 90/006,431
relevant to this appeal, commented on the First Ho Declaration as follows (the Second
Ho Declaration is not addressed):
The declaration makes the following assertions:
(a) The invention was made when appellants were at Epic Design;
(b) Declarant and co-inventor created RailMill and integrated
RailMill and ChipViewer; and
(c) Arcadia manual produced by Archer [S]ystems[:] “to the extent
these documents describe [refer to] RailMill and the use of ChipViewer to
display the outputs from RailMill, they [it] describe[s] our invention, and the
work of our team at Epic...”.
Note that statement (c) is conclusory in nature with no evidence or
statement of facts to support it. Furthermore, there is no claim or
explanation of derivation or attribution on the part of the authors/publishers
of the references.
In any event, Patrick Ho has admitted that ChipViewer was not his
invention and that he is not the author of the Arcadia Manual or the
RailMill documents. Patent Owner amended his claims to be limited to (1)
RailMill and the (2) integration of RailMill and ChipViewer, which is what
Patrick Ho identifies in the declaration as his invention.
Petition Decision at 4 (emphasis added). The TC Director’s conclusion that the First Ho
Declaration is insufficient to prove derivation or attribution in the absence of supporting
declarations by the (unnamed) authors or by the publishers of the RailMill documents is
not binding on the examiner or this Board, because, in our view, that conclusion
concerns the substantive merits of the declaration and thus is outside the scope of a TC
Director’s authority regarding Rule 132 affidavits and declarations, which is limited “to
[their] formal sufficiency and propriety.” MPEP § 1002.02(c), item 3(c). Nor do we find
ourselves in agreement with the merits of the TC Director’s position, which is not
supported in the Petition Decision by the citation of any decisional authority.
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