Ex Parte Jeong et al

Patent Trial and Appeal Board

Apr 11, 2013

12720430 (P.T.A.B. Apr. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MOO RYONG JEONG and TOSHIRO KAWAHARA
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Appeal 2013-002155
Application 12/720,430
Patent US 7,551,568 B2
Technology Center 2400
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Before JOSEPH L. DIXON, ROBERT E. NAPPI, and JOHN A. JEFFERY,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-171. We have jurisdiction under 35 U.S.C. § 6(b), and
we heard the appeal on April 9, 2013. We reverse.

STATEMENT OF THE CASE
Appellants seek to reissue U.S. Patent 7,551,568 pertaining to using
protocols among network access devices and terminals with power saving
devices. See generally ‘568 Patent, Abstract, col. 1, ll. 23-26. Claim 1 is
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illustrative with bracketing and underlining to show deletions and insertions
with respect to patented claim 1:
1. A network edge point operable to be associated with a terminal in a
communication network [associated with a terminal] and to receive
[receiving] packets from the network that specify the terminal as destination,
the network edge point comprising:
a connection manager for determining a classification rule for the
packets;
a classifier [that assigns] for assigning to each packet a classification
according to the classification rule; and
a service manager [that maps] for mapping a service to the packet
according to the packet’s classification and a current power mode associated
with the terminal, wherein the service manager [accesses] is for accessing a
rule table to determine whether the terminal should be alerted from a power
saving state to process the packet.

THE REJECTION
The Examiner rejected claims 1-171 under 35 U.S.C. § 251 as based
on a defective reissue declaration. Ans. 3-4.1

CONTENTIONS
The Examiner finds that because the patented claims are directed to a
relevant statutory class (e.g., an apparatus in claim 1), they are definite and
therefore do not recite both an apparatus and a method as Appellants
contend. Ans. 3-6. Thus, the Examiner reasons, there is no potential
indefiniteness error to correct via reissue. Id.
Appellants argue that even assuming that claim 1 could be interpreted
as definite, Appellants are nonetheless entitled to have the patent reissued to

1 Throughout this opinion, we refer to (1) the Appeal Brief filed August 20,
2012 (“App. Br.”); (2) the Examiner’s Answer mailed September 17, 2012
(“Ans.”); and (3) the Reply Brief filed November 8, 2012 (“Reply Br.”).
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further strengthen the claim against a possible interpretation that would
render the claim indefinite. App. Br. 9-10. Appellants add that claim 1
could be interpreted as indefinite as claiming both an apparatus and a
method in view of relevant precedent. App. Br. 10-14; Reply Br. 1-3.

ISSUE
Under § 251, has the Examiner erred in rejecting claims 1-171 by
finding that the reissue declaration filed March 12, 2012, is defective by
specifying an improper error upon which the present reissue application is
based? This issue turns on whether Appellants are permitted to amend
claims via reissue to preclude a possible interpretation that the claims are
indefinite under § 112, second paragraph.

ANALYSIS
We begin by noting that the present reissue application was filed on
March 9, 2010—less than one year after Appellants’ ‘568 patent issued on
June 23, 2009. The declaration accompanying the filing of the reissue
application indicated that the patent was believed to be wholly or partly
inoperative or invalid due to Appellants’ claiming more or less that they had
the right to claim. Decl. filed Mar. 9, 2010, at 1. In this declaration,
Appellants identified at least one error upon which the issue was based,
namely “[a] network device having a service manager that applies a service
rule that corresponds to the packet’s classification and a current power mode
of the terminal, wherein applying the service rule results in either delivering
or to discarding the packet was not claimed.” Id. The accompanying
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amendment added claims 68-171, but did not substantially amend the
patented claims. See Prelim. Amd’t filed Mar. 9, 2010.
Over two years later, Appellants filed another declaration again
indicating that the patent was believed to be wholly or partly inoperative or
invalid due to Appellants’ claiming more or less that they had the right to
claim. Decl. filed Mar. 12, 2012, at 1. But this declaration specifies a
different error which is at the heart of this dispute, namely that apparatus
claim 1 has method limitations and consequently “could possibly be
interpreted as claiming both an apparatus and a method” and therefore would
be indefinite under § 112, second paragraph. Id. Accompanying this
declaration was an amendment that, among other things, amended the
apparatus claims to clarify that the method limitations do not have to be
performed to infringe those claims. Amd’t filed Mar. 12, 2012, at 25.
For example, the amendment to claim 1 replaced various active steps
with functional equivalents, such as replacing (1) “that assigns” with “for
assigning,” (2) “that maps” with “for mapping,” etc. These conversions
from active steps to functional language effectively broaden the patented
apparatus claims to merely require that the recited apparatus elements (e.g.,
“connection manager,” “classifier,” “service manager,” etc.) are capable of
performing the intended function—not that they actually perform that
function. See In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
Accordingly, the present reissue application is effectively a broadening
reissue application.
To be sure, the March 2012 broadening reissue declaration and
accompanying amendment was (1) filed more than two years after the patent
issued (June 23, 2009), and (2) broadens in a manner somewhat different
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than the broadening associated with the March 2010 declaration and
amendment. Nevertheless, the broadening associated with the March 2012
declaration is timely, for the first broadening reissue declaration and
amendment was filed in the present application on March 9, 2010, which is
within the requisite two-year period for broadening reissues under § 251.
See In re Staats, 671 F.3d 1350, 1355-56 (Fed. Cir. 2012) (citing In re Doll,
419 F.2d 925 (CCPA 1970)).
Turning to the rejection, we find nothing in the reissue statute nor
precedent that precludes broadening the apparatus claims to recite functional
language in lieu of affirmative method steps as Appellants have done here,
despite Appellants’ perception that the claims could be rendered invalid
under § 112, second paragraph. To be sure, the Federal Circuit has held that
apparatus claims reciting method steps are indefinite under § 112, second
paragraph.2 But whether the particular facts in those cases squarely apply to
the facts of this case is debatable. Nevertheless, that uncertainty is

2 See IPXL Holdings, LLC v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed.
Cir. 2005) (noting that when a claim recites both a system and a method for
using that system, it is unclear whether infringement occurs when (1) one
creates a system that allows a user to perform the recited method (i.e.,
change predicted transaction information or accept a displayed transaction),
or (2) the recited method actually occurs (the user actually uses an input
means to perform these steps)); see also In re Katz Interactive Call Proc.
Pat. Litig., 639 F.3d 1303, 1318 (Fed. Cir. 2011) (claims reciting an
“interface means for providing automated voice messages . . . to certain of
said individual callers, wherein said certain of said individual callers
digitally enter data” held indefinite under § 112, second paragraph);
Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir.
2011) (same for claims reciting (1) four apparatus elements including a
trellis encoding means, and (2) a final element reciting “transmitting the
trellis encoded frames”).
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immaterial here, for Appellants are simply broadening the claims via a
timely-filed reissue application by replacing affirmative steps with
corresponding functional language—a permissible correction under § 251
where, as here, the patentee claimed less than they had a right to claim.
In any event, corrections to claims via reissue to avoid potential
indefiniteness have been judicially sanctioned, albeit in another context, to
avoid having to rely on implication or litigation. See In re Altenpohl, 500
F.2d 1151, 1156-57 (CCPA 1974) (“Lack of antecedent basis in a claim
could render it invalid under 35 U.S.C. § 112, second paragraph, and . . . a
patentee should be allowed to correct an error or ambiguity in a claim
without having to rely on implication or litigation.” (emphases added)).
Although Appellants admit that their reissue application hedges against
possible invalidity due to indefiniteness (Reply Br. 1), that alone is
insufficient to preclude correcting these potential errors via reissue. Cf. In re
Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011) (noting the court’s adopting
and adhering to a rule that adding a dependent claim as a hedge against
possible invalidity is a proper reason to seek reissue).
We are therefore persuaded that the Examiner erred in rejecting
claims 1-171 under § 251.

CONCLUSION
The Examiner erred in rejecting claims 1-171 under § 251.

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ORDER
The Examiner’s decision rejecting claims 1-171 is reversed.

REVERSED

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