Ex Parte 7,054,547 B1 et al

Board of Patent Appeals and Interferences

Feb 6, 2012

95000312 (B.P.A.I. Feb. 6, 2012)

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

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Reexamination Control 95/000,312
U.S. Patent 7,054,547 B1

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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.
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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.
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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.
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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.:
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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.
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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).

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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
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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
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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

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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