IP Law Daily, PATENT—Fed. Cir.: Substantial evidence supported PTAB’s anticipation ruling, (Jan 18, 2022)

By Kevin M. Finson, J.D.

A system for storing and searching data from a mobile phone was properly denied registration because it was anticipated by prior art references.

A patent claim involving the storage of alphanumeric data by mobile phone was invalid as anticipated, the U.S. Court of Appeals for the Federal Circuit has held. The Patent Trial and Appeal Board’s holding of invalidation was supported by substantial evidence (In re Oliver Wendel Gamble, January 18, 2022, per curiam).

Oliver Wendell Gamble applied for a patent covering a method for a user to capture and store information sent to the users phone in a searchable file under U.S. Patent Application No. 14/541,132 (the ’132 application). The Examining Attorney denied registration on the ground of anticipation by two prior art references. Gamble appealed.

Anticipation. Gamble argued that the first prior art reference, U.S. Patent Application No. 15/382,161 (“Ford”), did not anticipate his claims because it referred to storing information in “memory” while his application referred to storing the information in a “database.” The court held that substantial evidence supported the PTAB’s conclusion that these terms overlapped, the database was stored in memory. Gamble also argued that the second prior art reference, U.S. Patent Application No. 11/055,340 (“Bautista”) did not anticipate his searchable database claim because it taught storage of data on a remote server, not on the user’s phone. The Federal Circuit pointed out that Gamble’s own claim did not limit itself to any storage location and merely described a searchable database file with no reference to where the database was kept. For that reason, the court held that substantial evidence supported the Board’s conclusion that this claim was anticipated by Bautista.

Because substantial evidence supported the Board’s conclusions, the denial of registration was affirmed.

The Case is No. 21-1848.

Attorneys: Oliver Wendel Gamble, pro se. Benjamin T. Hickman for the USPTO.

Cases: Patent FedCirNews GCNNews