In Re: Steed
802 F.3d 1311
| Fed. Cir. | 2015Background
- Applicants (Steed et al.) sought patents for a web-integrated debt-recovery software system; claim 37 is representative and recites role-specific web pages, a cross-bar switch, and role-based data assignment.
- The Examiner rejected claims as obvious over a prior publication, Evans (effective Dec. 23, 2002). Applicants attempted to antedate Evans under 37 C.F.R. § 1.131 (Rule 131) by asserting either actual reduction to practice before Evans or conception before Evans plus continuous diligence.
- Applicants submitted a Rule 131 declaration, multiple exhibits (inventor notebooks, intranet logs, activity tables), and later offered additional materials and two third-party affidavits at the Board hearing; the Examiner found the evidence insufficient for both conception/reduction and diligence.
- The Board refused to admit or rely on evidence not previously before the Examiner (including the hearing affidavits and a post‑hearing table) and concluded Applicants failed to show either actual reduction to practice before Evans or conception plus diligence; it affirmed the obviousness rejection over Evans.
- On appeal, the Federal Circuit reviewed the Board’s factual findings for substantial-evidence support and its legal conclusions de novo, and affirmed: the record lacked specific, corroborated dates/events linking the evidence to the claim limitations, and the Board permissibly excluded new, unproffered evidence.
Issues
| Issue | Plaintiff's Argument (Steed) | Defendant's Argument (PTO) | Held |
|---|---|---|---|
| Whether Applicants established actual reduction to practice before Evans | Applicants: working prototype and execution on intranet since 1997–2000, corroborated by exhibits and two third‑party affidavits | PTO: evidence lacks specific dates, linkage to claim elements, and the affidavits were untimely/new before the Board | Held: No — substantial evidence supports Board that reduction to practice was not shown |
| Whether Applicants established conception before Evans plus due diligence to reduction | Applicants: inventor logs, activity table, and exhibits show conception and continuous diligence | PTO: exhibits are ambiguous, incomplete, and fail to explain how entries map to claimed invention or show continuous diligence | Held: No — Board reasonably found conception/diligence not proven |
| Whether the Board improperly excluded post‑examination evidence (affidavits, table) | Applicants: evidence was effectively disclosed in the appeal brief/table and should have been considered; asked Board to call inventors | PTO: Board properly followed rules—only evidence entered before the Examiner may be relied upon; new evidence was untimely | Held: No — Board properly refused to consider new evidence absent good cause |
| Whether the claims were obvious in view of Evans given the failure to antedate | Applicants: Evans does not significantly overlap with claimed invention; had not shown priority | PTO: With Evans unrebutted as a reference, claims were obvious as found by Examiner/Board | Held: Yes — rejection for obviousness affirmed because antedating failed and no persuasive non‑obviousness argument was made |
Key Cases Cited
- Holmwood v. Sugavanam, 948 F.2d 1236 (Fed. Cir. 1991) (actual reduction to practice requires an embodiment that worked for its intended purpose)
- In re Jolley, 308 F.3d 1317 (Fed. Cir. 2002) (appellate review: Board findings reviewed for substantial evidence; legal conclusions reviewed de novo)
- In re NTP, Inc., 654 F.3d 1279 (Fed. Cir. 2011) (burden on party asserting reduction to practice)
- In re Omeprazole Patent Litig., 536 F.3d 1361 (Fed. Cir. 2008) (elements required to prove actual reduction to practice)
- Coleman v. Dines, 754 F.2d 353 (Fed. Cir. 1985) (definition and standards for conception)
- In re Borkowski, 505 F.2d 713 (C.C.P.A. 1974) (applicant must explain notebook pages to demonstrate reduction to practice)