Ex Parte Tsukidate et al

Patent Trial and Appeal Board

Feb 26, 2014

12930767 (P.T.A.B. Feb. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RYOTA TSUKIDATE, KENICHI FUJITA,
SHIGEKI KANEKO, and YOSHIYASU TAKEUCHI1
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Appeal 2014-001908
Application 12/930,767
Patent 6,507,950
Technology Center 2400
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Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
JASON V. MORGAN, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

1 Panasonic Corporation (formerly known as Matsushita Electric Industrial
Co., Ltd.) is the Real Party in Interest. App. Br. 3.
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Introduction
Appellants seek another reissue of original patent application
08/956,344 (“’344 App.” or “original patent application”), now U.S.
6,507,950 B1 (“’950 patent” or “original patent”). This application is a
Continuation Reissue Application of Divisional Reissue Application
11/338,588 (“’588 application” or “’588 App.”), which is a Divisional
Reissue Application of Reissue Application 11/033,490 (“’490 application”
or “’490 App.”), now U.S. RE41,257 E. This is an appeal under 35 U.S.C.
§ 134(a) from the Examiner’s Final Rejection of claims 41 and 42. Claims
1-40 (which appear in the ’950 patent) are canceled. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Related Proceedings
The present application relates to Continuation Reissue Application
13/216,835, the subject of Appeal No. 2013-007207 (Examiner affirmed;
Dec. 13, 2013), and the ’588 application, the subject of Appeal No. 2014-
000119 (Examiner reversed; Jan. 29, 2014). App. Br. 4. The present
application also relates to Continuation Reissue Applications 13/216,804 and
13/216,820, which are both expressly abandoned. Ans. 3.
Invention
Appellants invented a program information broadcasting method
“aimed to minimize time for retrieval of program by viewers in operating an
electronic program guide.” Abst.
From the data constituting the master data, minimal necessary
items for preparation of a program table are extracted, and a
program basic information 22 is prepared. Said master data and
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said program basic information are transmitted simultaneously
with the broadcasting, and said program basic information is
received, reproduced and displayed before receiving of the
master data at a receiving terminal unit 31 is completed. As a
result, the program basic information having far less amount of
data [sic] than the master data can be incorporated . . . .
Id.
Exemplary Claim
Claim 41, reproduced below with key recitations emphasized, is
illustrative:
41. A program information broadcasting method, comprising:
preparing program basic information including a title and
an ID for each of a plurality of programs; and
transmitting said program basic information;
wherein said program basic information further
comprises an address for each of said plurality of programs,
each address specifying an existence and location of at least
one of a plurality of text data included in master information;
and
wherein said program basic information and said master
information are derived only from a same plurality of programs
to be broadcast.
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Rejections2
The Examiner rejects claims 41 and 42 under 35 U.S.C. § 112, first
paragraph, as failing to meet the enablement requirement. Ans. 9.
The Examiner rejects claims 41 and 42 under 35 U.S.C. § 251 as
impermissibly recapturing surrendered subject matter. Ans. 9-17.

ISSUES
1. Did the Examiner err in finding that claim 41 is not enabled under
35 U.S.C. § 112, first paragraph, because it improperly excludes limitations
that are critical or essential to the practice of the invention?
2. Did the Examiner err in finding that reissue claim 41 improperly
recaptures surrendered subject matter?

ANALYSIS
35 U.S.C. § 112, first paragraph
The Examiner notes that claim 41 does not include limitations
requiring simultaneous transmission of master data and program basic

2 In addition to these rejections, the Examiner objected to Appellants’
amendments to the Specification. Ans. 3-6, 45-48; App. Br. 26-27. After
the Examiner filed an Answer in this Appeal, Appellants filed a Petition
under 37 C.F.R. § 1.181 seeking supervisory review of the Examiner’s new
matter objection. Petition for Review (Sept. 5, 2013). The Technology
Center 2400 Director dismissed the petition on the merits. Decision on
Petition (Nov. 1, 2013). As Appellants correctly noted, disposition of this
issue through petition was appropriate given the Examiner did not reject
claims reciting similar matter under 35 U.S.C. § 112. Petition for Review 1
(Sept. 5, 2013). Lacking any such rejection, there is nothing within the
jurisdiction of the Board concerning the Examiner’s objection.
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information, with the program basic information being received, reproduced,
and displayed before the master data is completely received. Ans. 9. The
Examiner further submits “the disclosure only has support for the basic
information which includes information which includes a minimum
necessary of items extracted from all programs in the master data.” Id. The
Examiner finds that, based on the original disclosure’s inclusion of these
steps in all disclosed embodiments, the excluded limitations are critical or
essential to the practice of the invention. Id. Thus, the Examiner concludes
the Specification does not enable claim 41. Id. (citing In re Mayhew, 527
F.2d 1229 (CCPA 1976)).
Appellants contend the Examiner erred because the Examiner does
not “point to any portion of Appellants’ disclosure that explicitly states that
the” excluded recitations are “essential.” App. Br. 10. Appellants further
note “the Examiner’s rejection does not discuss any of the factors set forth in
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), as they relate to undue
experimentation.” App. Br. 10. The Examiner maintains the 35 U.S.C.
§ 112, first paragraph, rejection, finding “[t]he whole disclosure is geared
towards the extraction feature, where the basic information is extracted from
the master data.” Ans. 36.
A rejection for failure of a claim to recite a necessary element is
appropriate in cases such as a method claim that omits “a step without which
the invention as claimed [is] wholly inoperative (meaning it simply would
not work and could not produce the claimed product).” Amgen Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1337-38 (Fed. Cir. 2003)
(citing Mayhew, 527 F.2d at 1233). In Mayhew, for example, the
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Specification provided evidence that use of a cooling zone in a particular
location was necessary because the Specification explicitly stated the
disclosed method was “‘practicable because of special cooling apparatus,
specially located.’” 527 F.2d at 1233. The Examiner’s findings, however,
do not identify comparable evidence showing that any of the identified
elements missing in claim 41 make the invention practicable such that their
absence leaves the claimed invention wholly inoperative. Ans. 9.
Moreover, the Examiner’s findings do not address any of the Wands factors.
Id. Therefore, we agree with Appellants that the Examiner erred in rejecting
claim 41 for lack of enablement. App. Br. 9-11.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claim 41, or of claim 42, which is similarly rejected.
35 U.S.C. § 251
During prosecution of the original patent application, the Examiner
rejected claim 1 under 35 U.S.C. § 102(b) as being anticipated by Chaney
(U.S. 5,515,106). ’344 App. Non-Fin. Rej. 3 (Mar. 1, 2002). Appellants
amended claim 1 to include the new recitation “said program basic
information including extracted items of all of programs included in said
master data compilation so that the amount of data in said basic program
information is considerably smaller than that of said master data.” ’344
App. Amend. 14-15 (June 3, 2002) (emphasis added). Appellants also
modified claim 1 to properly recite a system claim and to maintain a proper
antecedent basis among terminology used therein. App. Br. 19. Appellants
added program information broadcasting method claim 25, which Appellants
noted substantially corresponded to claim 1 as amended. ’344 App. Amend.
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13 (June 3, 2002). After these claim amendments, newly introduced claim
25 was closer in form and substance to claim 1 as originally filed than to
claim 1 as amended.
To illustrate the substantive changes introduced in the amendments, as
opposed to changes in form to claim 1, claim 25 of the ’950 patent (“’950
patent claim 25”) is reproduced below. The differences between claim 1 as
originally filed (“original ’344 application claim 1”) and patent claim 25 as
introduced and allowed are illustrated using strike-through (for deletions
from original ’344 application claim 1) and underline (for insertions into
’950 patent claim 25) formatting:
A program information broadcasting system method,
comprising the steps of:
preparing a master data of program information for
recognizing a broadcasting program with wherein program
elements of said broadcasting program being are divided into a
plurality of items and being turned wherein said items are
converted to data at a broadcasting center;
preparing a program basic information with list,
comprising a minimal number of items that are necessary items
for the preparation of a program guide being, that are extracted
from said data constituting said master data, said program basic
information including extracted items from all programs
included in said master data so that the amount of data in said
program basic information is substantially smaller than the
amount of data in said master data;
transmitting said master data and said program basic
information simultaneously with the broadcasting a program;
and
receiving, reproducing and/or displaying said program
basic information before completion of receipt of said master
data at a receiving terminal unit.
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Appellants argued that Chaney did not anticipate the amended and
newly added claims:
Claims 1-10, 14-16 and 19-24 stand rejected as being
anticipated by Chaney et al. (’106). Although Chaney et al.
disclose that program information is divided into two kinds one
of which is simplified in the same manner as in the present
invention, the disclosure of Chaney et al. differs from the
present invention as follows:
Chaney et al. disclose transmission of program
information by dividing the same into two kinds, such that one
includes information of programs to be broadcast within a
short viewing period such as a few days and the other includes
information of programs to be broadcast within a longer
viewing period, such as 13 days or more. The reference defines
“master data” as related to a predetermined, relatively short,
viewing period; and “special data” as data related to a period
longer than said predetermined, shorter, viewing period.
According to the present invention, program information is
divided into two such lists of data, one that includes items that
are minimally necessary for the preparation of a program guide
and the other that includes all items. The second data set is
detailed program information that can be displayed when
selected by a user.
According to the Chaney et al. disclosure, information of
programs to be broadcast within a short period of time can be
derived shortly whereas information of programs to be
broadcast within a longer period of time, including a period
after the short period, cannot be derived shortly. By
comparison, according to the present claimed invention, the
basic information includes minimally necessary items of
information of programs to be broadcast over a short period of
time that can be displayed quickly and without delay because
such data are sent from the broadcasting center to each
terminal and received by each terminal before the master data
list is completely received.
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From the above it will be understood that the present
invention is superior in that information on any programs can
be displayed quickly irrespective of the broadcasting date or
time of the program. Each of independent claims 1, 14 and 19
recites the requirement for the above-mentioned master data
and basic data, which are not disclosed or taught by Chaney et
al.
. . . .
Newly added claims 25-37 are method claims
substantially corresponding to apparatus claims 1-24.
’344 App. Amend. 10, 13 (June 3, 2002) (emphases added).
The Examiner allowed amended claim 1 and newly added claim 25,
noting that:
Chaney does not disclose broadcasting/generating a master
guide of program information, where a basic guide of program
information is assembled by extracting items of all programs
from the master guide, and transmitting both guides
simultaneously to a receiver, where the special guide is
displayed prior to completion of receipt of the master guide.
’344 App. Notice of Allowance 2 (Aug. 28, 2002) (emphasis added).
Appellants paid the issue fee and the USPTO issued the ’950 patent
on January 14, 2003.
Nearly two years later, Appellants filed the ’490 application, declaring
that in “claim 25 of the [’950] patent there was a requirement that the basic
program information list was required to be extracted from the master data.
It is believed that this requirement was too limiting on the scope of the
claims of the instant patent.” ’490 App. Reissue Decl. 2 (Jan. 11, 2005).
Appellants filed the ’588 application as a Divisional Reissue Application of
the ’490 application, declaring the same error. ’588 App. Reissue Decl. 2
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(Jan. 24, 2006). On January 15, 2011, Appellants filed this application as a
Continuation Reissue Application of the ’588 application.
The Examiner rejects reissue claim 41 under 35 U.S.C. § 251 as
improperly recapturing surrendered matter because reissue claim 41
excludes recitations in ’950 patent claims 1 and 25 introduced by Appellants
to overcome the 35 U.S.C. § 102(b) rejection made during prosecution of the
’344 application. Ans. 38. In particular, the Examiner finds that “the
distinction between [Chaney] and the claims was the preparation of a master
and basic guide, wherein the basic guide/information includes extracted
items of all the programs in the master guide wherein the basic guide was
received/reproduced/displayed prior to completion of receipt of the master
guide.” Id. at 14.
Appellants contend the Examiner erred in this rejection. App. Br. 15-
26. To analyze the issue of improper recapture through reissue, we apply a
three-step process. In re Youman, 679 F.3d 1335, 1343-47 (Fed. Cir. 2012);
In re Mostafazadeh, 643 F.3d 1353, 1358-59 (Fed. Cir. 2011) (citing In re
Clement, 131 F.3d 1464, 1468-70 (Fed. Cir. 1997)).
Step 1:
First we determine whether, and in what aspects, the reissue claims
are broader than the patent claims. Youman, 679 F.3d at 1343. Here, the
Examiner correctly finds that reissue claim 41 omits the ’950 patent claim 1
(and ’950 patent claim 25) recitation: “said program basic information
including extracted items of all of programs included in said master data
compilation so that the amount of data in said basic program information is
considerably smaller than that of said master data.” Ans. 12-14. Appellants
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acknowledge the exact words of the recitation are not present in reissue
claim 41. App. Br. 16-18. Because of these omissions, reissue claim 41 is
broader than ’950 patent claims 1 and 25 in at least two respects. First, ’950
patent claims 1 and 25 require that, in preparing a program basic information
list, “said program basic information includ[es] extracted items from all
programs included in said master data” (emphasis added). In contrast,
reissue claim 41 merely recites “preparing program basic information . . . for
each of a plurality of programs . . . to be broadcast” and “wherein said
program basic information further comprises an address for each of said
plurality of programs, each address specifying an existence and location of
at least one of a plurality of text data included in master information.” Thus,
reissue claim 41 is broader than ’950 patent claims 1 and 25 with respect to
the origin of the program basic information. Instead of requiring extraction
of program basic information from the master data, the program basic
information can be prepared using another source. Appellants acknowledge
reissue claim 41 is broader in this respect since this extraction requirement is
at least one of the supposed errors Appellants seek to correct. ’490 App.
Reissue Decl. 2 (Jan. 11, 2005); ’588 Reissue Decl. 2 (Jan. 24, 2006); Add’l
Supp. Reissue Decl. 2 (Feb. 15, 2011).
Second, reissue claim 41 does not provide a counterpart to the
recitation “so that the amount of data in said program basic information is
substantially smaller than the amount of data in said master data.” Thus,
reissue claim 41 is broader than ’950 patent claims 1 and 25 with respect to
the relationship between the amount of data in the program basic
information relative to the amount of data in the master data.
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Because two features in the omitted recitation, “said program basic
information including extracted items from all programs included in said
master data so that the amount of data in said program basic information is
substantially smaller than the amount of data in said master data,” are not
found in reissue claim 41, reissue claim 41 is broader than ’950 patent
claims 1 and 25 in these aspects as detailed above.
Step 2:
Next, we determine whether the broader aspects of the reissue claims
relate to surrendered subject matter. Youman, 679 F.3d at 1343. Appellants
contend that in amending the original patent application, they “only argued
features that were present in the originally filed claims, not features added
by the June 3, 2002[,] Amendment.” App. Br. 22. We disagree with
Appellants. As Appellants submitted:
Chaney et al. disclose transmission of program information by
dividing the same into two kinds, such that one includes
information of programs to be broadcast within a short viewing
period such as a few days and the other includes information of
programs to be broadcast within a longer viewing period, such
as 13 days or more.
’344 App. Amend. 10 (June 3, 2002).
In other words, Appellants argued that Chaney’s division of program
information separated programs based on broadcast time, with programs to
be broadcast sooner placed in a first dataset and programs to be broadcast
later in a second dataset. Appellants argued that in the claimed invention:
program information is divided into two such lists of data, one
that includes items that are minimally necessary for the
preparation of a program guide and the other that includes all
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items. The second data set is detailed program information that
can be displayed when selected by a user.
’344 App. Amend. 10 (June 3, 2002) (emphasis added).
In other words, Appellants argued that, unlike Chaney’s time-based
division program information, their claimed invention divides program
information based on detail-level (i.e., program basic information containing
minimal necessary items and master data including all data). Appellants
emphasized that their invention is “superior [to Chaney] in that information
on any programs can be displayed quickly irrespective of the broadcasting
date or time of the program.” Id. (emphasis added). The ’950 patent claims
1 and 25 recitation “said program basic information including extracted
items from all programs included in said master data so that the amount of
data in said program basic information is substantially smaller than the
amount of data in said master data” is key to this distinction because it
requires the program basic information include items from all of the
programs included in the master data. See ’344 App. Notice of Allowance 2
(Aug. 28, 2002) (“Chaney does not disclose . . . where a basic guide of
program information is assembled by extracting items of all programs from
the master guide . . . .” (emphasis added)). Because this recitation, and this
distinguishing feature in particular, were not in the original ’344 application
claim 1, this omitted recitation relates to subject matter surrendered by
Appellants during the ’344 application prosecution.
Step 3:
Finally, we determine whether the reissue claims materially narrow
the claims relative to the original claims (i.e., the original application’s
claims before amendment or cancellation) such that Appellants avoid full or
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substantial recapture of the subject matter surrendered during prosecution.
Youman, 679 F.3d at 1345. As discussed in step 2, original claim 1 did not
require that the program basic information include items from all of the
programs included in the master data. As further discussed in step 2,
Appellants’ arguments during the ’344 application prosecution show that
’950 patent claims 1 and 25 distinguish Chaney because of this feature. That
is, Chaney divides its program data based on time, with first and second lists
having information for different programs while the basic program
information and master data of ’950 patent claims 1 and 25 both have
information, at different levels of detail, for the same programs.
This distinguishing feature is at the core of the surrendered subject
matter. Reissue claim 41 has recitations directed to this particular feature.
Specifically, reissue claim 41 recites: (1) “preparing program basic
information . . . for each of a plurality of programs . . . to be broadcast”; (2)
“wherein said program basic information further comprises an address for
each of said plurality of programs, each address specifying an existence and
location of at least one of a plurality of text data included in master
information”; and (3) “wherein said program basic information and said
master information are derived only from a same plurality of programs to be
broadcast” (emphases added). While the language of reissue claim 41
differs from ’950 patent claims 1 and 25, the effect is substantially similar
because the basic program information has the complete set of data
pertaining to the “plurality of programs to be broadcast.” The master
information dataset, which derives “only from a same plurality of programs
to be broadcast,” cannot contain data for additional or different programs to
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be broadcast. Thus, in contrast to original ’344 application claim 1, reissue
claim 41 requires that the program basic information include items from all
of the programs included in the master data. This feature is worded
differently and is not as limiting as the related feature in ’950 patent claims 1
and 25. Nonetheless, reissue claim 41 significantly narrows original ’344
application claim 1 with respect to the surrendered subject matter.
As discussed under step 1, reissue claim 41 omits other features such
that reissue claim 41 is broader than ’950 patent claims 1 and 25 in certain
aspects. The broadening impact of these omissions does not outweigh the
narrowing impact of the requirement that the claimed basic program
information contains information for all the programs in the master
information. Appellants, in distinguishing the ’950 patent claims 1 and 25
from Chaney, did not heavily rely on either: (1) the source of the program
basic information or (2) the relationship between the amount of the data in
the program basic information and the amount of data in the master data
(i.e., the master information). ’344 App. Amend. 10, 13 (June 3, 2002).
Therefore, we find that reissue claim 41 is materially narrowed relative to
original ’344 application claim 1 such that it avoids full or substantial
recapture of the subject matter surrendered during the ’344 application
prosecution.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 251
rejection of reissue claim 41, and reissue claim 42 which contains the same
materially narrowing recitations.

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DECISION
We reverse the Examiner’s 35 U.S.C. § 112, first paragraph, rejection
of claims 41 and 42.
We reverse the Examiner’s 35 U.S.C. § 251 rejection of claims 41 and
42.

REVERSED

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