Ex Parte 7,054,547 B1 et alDownload PDFBoard of Patent Appeals and InterferencesFeb 6, 201295000312 (B.P.A.I. Feb. 6, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/000,312 10/24/2007 7,054,547 B1 272192800300 7405 22850 7590 02/06/2012 OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER GAGLIARDI, ALBERT J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 02/06/2012 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 ____________________ NISSAM CORP., Patent Owner and Appellant v. TIME WARNER, INC., Requester and Respondent ____________________ Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 Technology Center 3900 ____________________ Before ALLEN R. MacDONALD, KARL D. EASTHOM, and STEPHEN C. SIU, Administrative Patent Judges. MACDONALD, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 2 STATEMENT OF THE CASE Introduction This is a decision on Appellant Patent Owner’s Request for Rehearing. At page 1 of the Request, Appellant submits that the Board erred in the decision (“the Decision”) entered October 27, 2011, because “the Board entered new claim constructions never previously advanced by the Examiner or Requester, which raises a new ground of rejection” and requests that “the Board to designate its decision as a new ground of rejection to give Patent Owner the right to reopen prosecution before the Examiner in accordance with 37 CFR § 41.77(b)(1).”1 Exemplary Claim Exemplary independent claim 1 under appeal reads as follows: Claim 1. A laser readable disc for use in conjunction with an apparatus capable of playing the laser readable disc, the apparatus having a random access capability and a plurality of play control functions, the laser readable disc comprising: at least one track storing a video program having a plurality of video segments each containing a plurality of video frames; and 1 37 CFR § 41.77(b) reads in-part: . . .When the Board makes a new ground of rejection, the owner, within one month from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal proceeding as to the rejected claim: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 3 said at least one track further storing video segment information, not contained within said video frames, said video segment information comprising video segment addresses identifying the locations of video segments within the video program, and a segment code which prohibits at least one play control function of the apparatus during a playing of at least one of the video segments. Appellant’s Contentions 1. Appellant contends that the Board erred in the Decision because: As a matter of due process, the Board's October 27th decision should be expressly designated as containing new grounds of rejection to afford the Patent Owner the right to reopen prosecution before the Examiner. (Request 2), and: Because the Board made and relied on new claim constructions that the Requester and the Examiner did not raise, the Board relied on new grounds of rejection. (Request 2), and: Where the Board decides to expressly define a term, where the interpretation of that term was never expressly at issue in the case, it risks raising a new ground of rejection, which is what has happened in this case. (Request 6). 2 2. Further at page 2 of the Request, Appellant contends: Although the Patent Owner vigorously disputes the merits of the Board’s decision, which rely upon the new claim constructions, this Request for Rehearing cannot reach the merits until a record is developed to properly rebut the positions of the Board. 2 The same argument found at page 6 of the Request is also made at the sentence bridging pages 7 and 8, and at the sentence in the center of page 9. Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 4 3. Lastly, Appellant contends that the advisory discussion3 found in the paragraph bridging pages 17-18 of the Board’s Decision is mistaken because: The Board’s implication that Patent Owner discussion of the claim language is a “proposed construction” that is somehow an attempt to amend the claims by “disavowal or estoppel” that would subject the claims to a written description rejection under 35 U.S.C. § 112, first paragraph (Op. 17-18) is without merit. The original Examiner, the Examiner in this reexamination, and the Requester have all understood the claims to mean that the video segment information, not contained within the video frames, comprises video segment addresses and a segment code. That the Board now apparently considers the claims to be open to a different construction does not suggest that Patent Owner is trying to narrow the claims by argument. (Request 5-6, footnote). PRINCIPLES OF LAW 1. Claim Construction - Grammar “A claim must be read in accordance with the precepts of English grammar.” In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). 2. Claim Construction Before the USPTO - Broadest Reasonable Construction By One Of Ordinary Skill In The Art “It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’ ” 3 The discussion in the paragraph bridging pages 17-18 of the Board’s Decision is advisory only and not determinative of the result reached in the Decision. Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 5 Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citations omitted). [T]he Supreme Court made clear that the claims are “of primary importance, in the effort to ascertain precisely what it is that is patented.” Because the patentee is required to “define precisely what his invention is,” the Court explained, it is “unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms.” Phillips, 415 F.3d at 1312 (citations omitted). We have frequently stated that the words of a claim “are generally given their ordinary and customary meaning.” We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. Phillips, 415 F.3d at 1312-13 (citations omitted). The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. This court explained that point well in Multiform Desiccants, Inc. v. Medzam, Ltd.: Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 6 It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor's words that are used to describe the invention-the inventor's lexicography- must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Phillips, 415 F.3d at 1313 (citations omitted). [T]he claims themselves provide substantial guidance as to the meaning of particular claim terms. See Vitronics, 90 F.3d at 1582; see also ACTV, Inc. v. Walt Disney Co., 346 F.3d 1082, 1088 (Fed.Cir.2003) (“the context of the surrounding words of the claim also must be considered in determining the ordinary and customary meaning of those terms”). Phillips, 415 F.3d at 1314. The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.Cir.2004). Phillips, 415 F.3d at 1316. 3. Determining Anticipation Requires Claim Construction Determining whether a reference or other piece of prior art anticipates a patent claim involves a two-step analysis. The first step is to construe the claim to determine its meaning; the second step is to compare the properly construed claim to the disclosure of the reference or prior art to assess whether that disclosure meets all the limitations of the claim. Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 7 A determination that a claim is anticipated under 35 U.S.C. § 102(b) involves two analytical steps. First, the Board must interpret the claim language, where necessary. Because the PTO is entitled to give claims their broadest reasonable interpretation, our review of the Board's claim construction is limited to determining whether it was reasonable. In re Morris, 127 F.3d 1048, 1055 (Fed.Cir.1997). Secondly, the Board must compare the construed claim to a prior art reference and make factual findings that “each and every limitation is found either expressly or inherently in [that] single prior art reference.” In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). 4. Determining Obviousness Requires Claim Construction In order to compare the claim with the prior art under § 103, the first step is to properly construe the claim. Cf. In re Crish, 393 F.3d 1253. 5. New Ground of Rejection It is well-established that the Board is free to affirm an examiner’s rejection so long as “appellants have had a fair opportunity to react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302–03 (CCPA 1976). See also In re Kumar, 418 F.3d 1361, 1368 (Fed.Cir.2005) ( “In calculating the overlapping values, the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response.”). In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). There is no new ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner.” In re Noznick, 391 F.2d 946, 949 (CCPA 1968). Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 8 ANALYSIS First Contention Appellant argues that the Board has erred as a matter of due process, because where the interpretation of a term was never expressly at issue in the case and if the Board decides to expressly define a term, the Board raises a new ground of rejection. We disagree. In the Appeal Brief, Appellant disputes the Examiner’s rejections under § 102 and § 103. Further, Appellant explicitly and specifically raises the claim language whose construction is now the basis of this Request. For example, Appellant’s argument heading at page 12 of the Patent Owner’s Appeal Brief states, “The Office has not properly interpreted and applied the ‘segment information/segment code” limitations of independent claims 1, 7, 12, 17, and 23”. Appellant then goes on to argue that specific interpretations of the claims are appropriate. For example, see page 14 of the Appeal Brief where Appellants argue: The “segment information” expressly recited in claim 1 of the '547 patent includes both (l) addresses identifying locations of video segments and (2) a segment code. Independent claims 7, 12, 17, and 23 also recite limitations for both segment address information and a segment code. Given (1) Appellant’s above discussed Appeal Brief arguments and (2) the above cited case law which establishes that (a) a claim must be read in accordance with the precepts of English grammar, (b) the USPTO determines the scope of a claim giving the claim its broadest reasonable construction as it would be interpreted by one of ordinary skill in the art, and (c) determining anticipation (or obviousness) requires claim construction; we conclude that there is no new ground of rejection due to this Board Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 9 explaining why Appellant’s arguments were ineffective to overcome the rejection made by the Examiner. Cf. Noznick, 391 F.2d at 949. Appellant had a fair opportunity in the Appeal Brief to set forth Appellant’s view of how the claims on appeal would be interpreted by one of ordinary skill in the art. To the extent that Appellant did not address basic rules of English grammar and the meaning of terms in the claims, Appellant waived this opportunity. The Board having set forth in the Decision its view of how the claims on appeal would be interpreted by one of ordinary skill in the art, Appellant’s Request for Reconsideration was another opportunity for Appellant’s to address basic rules of English grammar and the meaning of terms in the claims (by explaining how this Board erred in setting forth its understanding of how one of ordinary skill in the art would interpret the claims on appeal). However, Appellant again waived this opportunity (further discussed directly below with respect to Appellant’s second contention). Second Contention Appellant states that “the Patent Owner vigorously disputes the merits of the Board’s decision” and Appellant argues that they cannot reach the merits of the claim construction until the record is further developed. Appellant’s statement that “Patent Owner’s vigorously disputes the merits” is of no moment given Appellant’s complete silence as to why they believe the Board has erred on the merits. Specifically, Appellant is silent as to why Appellant believes the Board is mistaken in its construction of the Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 10 claims on appeal. As we noted above, Appellant has thus waived the opportunity to reach the merits of the claim construction by setting forth in the Request “the points believed to have been misapprehended or overlooked in rendering the Board’s opinion reflecting its decision.” 37 C.F.R. § 41.79 (b)(1). Given the Board’s explicit analysis of the claim construction, we are unpersuaded by Appellant’s argument that they cannot reach the merits of the claim construction, i.e., that Appellant is unable to argue why they believe the Board’s claim construction is wrong. Third Contention Appellant contends that the Board was mistaken in its discussion that Appellant was attempting to amend the claims by “disavowal or estoppel”. Although we disagree, the Board’s opinion on this matter is advisory only and not determinative of the result reached in the Decision. Further, any impact on Patent Owner’s patent from such a disavowal or estoppel (should such impact exist) is beyond the scope of this appeal. Lastly, the general issue of whether such a disavowal or estoppel is an amendment of the claims is currently before our reviewing court in an unrelated appeal. See Marine Polymer Tech., Inc. v. Hemcon, Inc., 659 F.3d 1084 (Fed. Cir. 2011) (vacated and petition for rehearing en banc granted January 20, 2012). For these reasons we decline to further address Appellant’s third contention. Appeal 2011-011260 Reexamination Control 95/000,312 U.S. Patent 7,054,547 B1 11 DECISION In view of the foregoing discussion, we grant Appellant’s Request for Rehearing to the extent of reconsidering our decision, but we deny Appellant’s request with respect to making any other change thereto. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v). REQUEST FOR REHEARING DENIED ack For Patent Owner: OBLON, SPIVAK, McCLELLAND MAIER & NEUSTADT, LLP 1940 Duke Street Alexandria, VA 22314 For Third Party Requester: MORRISON & FOERSTER, LLP 555 West Fifth Street Suite 3500 Los Angeles, CA 90013-1024 Copy with citationCopy as parenthetical citation