Ex Parte Jeong et alDownload PDFPatent Trial and Appeal BoardApr 11, 201312720430 (P.T.A.B. Apr. 11, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MOO RYONG JEONG and TOSHIRO KAWAHARA ____________ Appeal 2013-002155 Application 12/720,430 Patent US 7,551,568 B2 Technology Center 2400 ____________ 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 Appeal 2013-002155 Application 12/720,430 2 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.”). Appeal 2013-002155 Application 12/720,430 3 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 Appeal 2013-002155 Application 12/720,430 4 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 Appeal 2013-002155 Application 12/720,430 5 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”). Appeal 2013-002155 Application 12/720,430 6 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. Appeal 2013-002155 Application 12/720,430 7 ORDER The Examiner’s decision rejecting claims 1-171 is reversed. REVERSED babc Copy with citationCopy as parenthetical citation