Ex Parte Youman et al

Patent Trial and Appeal Board

Apr 4, 2013

09313532 (P.T.A.B. Apr. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROGER YOUMAN and MARNEY MORRIS
____________

Appeal 2010-007029
Application 09/313,532
Patent 5,629,733
Technology Center 2400
____________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
JOHN A. JEFFERY, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Upon reconsideration in light of our reviewing court’s analysis and
mandate, we reverse and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
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BACKGROUND
This application returns to this panel after the U.S. Court of Appeals
for the Federal Circuit vacated our earlier decision affirming the Examiner’s
rejection of claims 24-27, 29-43, and 45-55 under 35 U.S.C. § 251 as
improperly recapturing surrendered subject matter. In re Youman, 679 F.3d
1335, 1339 (Fed. Cir. 2012) (“Because the Board did not properly apply the
recapture rule’s three-step analysis, we vacate and remand.”).
Specifically, the court concluded that “[t]he Board did not properly
conduct step three of the recapture rule analysis” because “[i]t failed to
determine whether the applicants avoided the recapture rule bar on reissue
by modifying their ‘cycling’ limitation to ‘changing’ in the reissue claim.”
Id. at 1348. The court then remanded the case to us to “apply the recapture
rule analysis, as articulated in [Youman] and in [In re] Mostafazadeh, [643
F.3d 1353 (Fed. Cir. 2011),] to the claims at issue and make necessary
findings of fact.” Id.
As to the first step of the three-step recapture rule analysis, the court
stated:
Under the first step, we “determine whether and in what
‘aspect’ the reissue claims are broader than the patent claims.”
Mostafazadeh, 643 F.3d at 1358 (quoting [In re] Clement, 131
F.3d [1464,] 1468 [(Fed. Cir. 1997)]); Pannu [v. Storz
Instruments, Inc.], 258 F.3d [1366,] 1371 [(Fed. Cir. 2001)].
The parties do not contest that with regards to the selecting
means, the Board correctly determined that the “changing”
limitation in claim 24 (“the reissue claim”) is broader than the
“cycling” limitation of patented claim 1 of the ‘766 patent (“the
patented claim”). Appellants’ Br. 44; Appellee’s Br. 16-17.
This conclusion is confirmed by dependent reissue claim 25,
which limits reissue claim 24 by calling for “changing from a
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first to second character comprising cycling through displayed
alphanumeric characters.” J.A. 33.
Youman, 679 F.3d at 1343.
As to step two of the three-step analysis, the court stated:
Having agreed with the parties that the reissue claim is
broader than the patented claim, step two requires us to
“determine whether the broader aspects of the reissue claims
relate to surrendered subject matter.” Mostafazadeh, 643 F.3d
at 1358 (quoting Clement, 131 F.3d at 1468-69); N. Am.
Container[, Inc. v. Plastipak Packaging, Inc.], 415 F.3d [1335,]
1350 [(Fed. Cir. 2005)]. Both parties answer this inquiry in the
affirmative. Appellants’ Br. 45-46; Appellee’s Br. 17.
Youman, 679 F.3d at 1343. Further, as to step two, the court stated: “We
agree with the Board that through their argument and amendment, the
applicants’ surrendered subject matter was any selecting means that was
broader than the cycling limitation of the patented claim.” Id. at 1344.
As to step three of the three-step analysis, the court stated:
If the reissue claims are broader relative to the patented
claims in a manner related to the surrendered subject matter, we
must “determine whether the surrendered subject matter has
crept into the reissue claim.” Mostafazadeh, 643 F.3d at 1358
(citing Clement, 131 F.3d at 1469); see Hester [Indus., Inc. v.
Stein, Inc.], 142 F.3d [1472,] 1482 [(Fed. Cir. 1998)]. Unless
the claims are materially narrowed in a way that avoids
substantial or whole recapture of the surrendered subject matter,
the surrendered subject matter has crept into the reissue claims
and they are barred under the recapture rule. Mostafazadeh,
643 F.3d at 1361. The Board failed in several respects to apply
this third step of the recapture rule; thus, we must vacate and
remand.
Youman, 679 F.3d at 1344-45.
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In summary, “[t]he recapture rule bars a patentee from recapturing
subject matter, through reissue, that the patentee intentionally surrendered
during the original prosecution in order to overcome prior art and obtain a
valid patent.” Youman, 679 F.3d at 1343 (citing Mostafazadeh, 643 F.3d at
1358).
The recapture rule is applied as a three-step process to:
(1) “determine whether and in what ‘aspect’ the reissue claims are
broader than the patent claims,” Mostafazadeh, 643 F.3d at 1358 (quoting
Clement, 131 F.3d at 1468);
(2) “determine whether the broader aspects of the reissue claims
relate to surrendered subject matter,” id. (quoting Clement, 131 F.3d at
1468-69); and
(3) determine whether the reissue claims’ broader aspect “materially
narrows relative to the original claim such that surrendered subject matter is
not entirely or substantially recaptured,” Youman, 679 F.3d at 1345 (citing
Mostafazadeh, 643 F.3d at 1358, 1359, 1361).
“Thus, if the patentee modifies the added limitation such that it is
broader than the patented claim yet still materially narrows relative to the
original claim, the recapture rule does not bar reissue.” Id. at 1347.
“Properly applied, the material narrowing must relate to the surrendered
subject matter to prevent the recapture rule from applying.” Id. (citing
Mostafazadeh, 643 F.3d at 1359).

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STATEMENT OF THE CASE
Appellants seek to reissue U.S. Patent 5,629,733 pertaining to an
electronic television program guide and using a wireless remote control (or
set top box)1 to search program listings by title. See generally ‘733 Patent,
Abstract; col. 31, l. 52 – col. 32, l. 16; Figs. 4, 38F.
Claim 1 of the original application as filed (“original claim 1”) was as
follows (with key limitations emphasized):
1. An electronic television programming guide for use in connection
with a television receiver for displaying a plurality of television programs
from a plurality of program sources on a plurality of user-selectable
television channels comprising:
user control means for issuing control commands, including channel-
control commands;
data processing means for receiving said control commands and for
generating video control commands;
a video display generator adapted to receive video control commands
from said data processing means for generating and displaying a plurality of
television program titles on said television receiver, said plurality of
television programs displayed alphabetically by title; and
selection means for allowing said user to select a title for display on
said television receiver by selecting the first n characters of said title,
where n is greater than or equal to one; said data processing means being
responsive to said selection means and adapted to select said plurality of
television program titles for display on said television receiver in response to
said n characters.

1 The selection means of patented claim 1 is not limited to just a remote
control since the up/down keys can be on a remote control or be part of a
cable box or other hardware. Col. 11, ll. 53-55.
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Patent claim 1 and reissue claim 24 are illustrative with key
limitations emphasized:
1. An electronic television programming guide for use in connection
with a television receiver for displaying a plurality of television programs
from a plurality of program sources on a plurality of user-selectable
television channels comprising:
user control means for issuing control commands, including channel-
control commands;
data processing means for receiving said control commands and for
generating video control commands;
video display generator means adapted to receive video control
commands from said data processing means for generating and displaying a
visual display of a plurality of television program titles on said television
receiver, said plurality of television program titles arranged alphabetically
by title; and
selection means for allowing said user to select a title for display on
said television receiver by selecting the first n characters of said title,
where n is greater than one; said data processing means being responsive to
said selection means and adapted to select said plurality of television
program titles for display on said television receiver in response to said n
characters;
wherein said video display generator means displays said n characters
and said selection means comprises means for causing each of said n
characters to cycle forward and backward through a plurality of
alphanumeric characters and means for assigning one of said alphanumeric
characters to each of said n characters.

24. An electronic television programming guide for use in connection
with a television receiver for displaying a plurality of television programs
from a plurality of sources on a plurality of user-selectable television
channels comprising:
a wireless remote control, comprising nonalphanumeric keys, that
generates control commands;
a data processor that receives the control commands from the wireless
remote control; and
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a video display generator connected to the data processor that displays
an alphabetically-arranged visual display of a plurality of television program
titles on said television receiver,
wherein a user may search for a title to be displayed by selecting n
characters with the wireless remote control, where n is greater than one,
wherein each of the n characters may be selected with the wireless remote
control from a plurality of displayed alphanumeric characters by changing
from a first character to a second character using the nonalphanumeric
keys.

THE REJECTION
The Examiner rejected claims 24-27, 29-43, and 45-55 under
35 U.S.C. § 251 as improperly recapturing surrendered subject matter.2 Ans.
3-4.3

APPELLANTS’ CONTENTIONS
Appellants argue that the reissue claims materially narrow the original
claim because neither original claim 1 nor issued claims 1 and 12 recite the
following additional narrowing elements now recited in reissue claim 24 and
similarly recited in reissue claim 40 (emphases added):
a wireless remote control, comprising nonalphanumeric
keys, that generates control commands;
. . .
. . . wherein each of the n characters may be selected
with the wireless remote control from a plurality of displayed

2 Claims 1-23 have been indicated as containing allowable subject matter.
App. Br. 2.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed April 1,
2009 (“App. Br.”); (2) the Examiner’s Answer mailed June 23, 2009
(“Ans.”); and (3) the Reply Brief filed August 24, 2009 (“Reply Br.”).
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alphanumeric characters by changing from a first character to a
second character using the nonalphanumeric keys.
App. Br. 14-16; Reply Br. 14-15.

ISSUE
Under § 251, has the Examiner erred in rejecting claims 24-27, 29-43,
and 45-55 by finding that the claims improperly recapture surrendered
subject matter? This issue turns on whether the claims are materially
narrowed relative to the original claims.

ANALYSIS
Original Prosecution
Appellants’ Application Serial No. 08/346,603 (“parent application”)
as filed contained original claim 1 included the following limitation
(emphases added): “selection means for allowing said user to select a title
for display on said television receiver by selecting the first n characters of
said title, where n is greater than or equal to one.” We construe this claim
clause as a means-plus-function clause drafted pursuant to 35 U.S.C. § 112,
¶ 6.4

4 Special rules of claim construction allow for claim limitations drafted in
functional language and are set forth in 35 U.S.C. § 112, ¶ 6, which provides
that:
[a]n element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and
equivalents thereof.
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Appellants’ use of term “means” creates a rebuttable presumption that
Appellants intend to invoke § 112, ¶ 6.5 We find that Appellants’ modifying
the “means to select” by further reciting the term “selection” does not alone
serve to overcome this presumption.6 We further construe Appellants’
“selection means” to cover the corresponding structure (and equivalents
thereof) as described in the Specification to perform the specifically claimed
function of “allowing said user to select a title for display . . . by selecting
the first n characters of said title, where n is greater than or equal to one.”

35 U.S.C. § 112, ¶ 6 (emphases added). While § 112, ¶ 6, permits functional
language to be used, § 112, ¶ 6, operates to restrict claim limitation to those
structures, materials, or acts disclosed in the specification (or their
equivalents) that perform the claimed function. Personalized Media
Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998).
5 The Federal Circuit has established that use of the term “means” is central
to the analysis of whether a claim limitation should be interpreted in
accordance with 35 U.S.C. § 112, ¶ 6: use of the word “means” creates a
rebuttable presumption that the inventor intended to invoke § 112, ¶ 6,
whereas failure to use the word “means” creates a rebuttable presumption
that the inventor did not intend the claims to be governed by § 112, ¶ 6. Id.;
Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367 (Fed. Cir. 2012).
6 Claim language that further defines a term that otherwise would be a nonce
word can denote sufficient structure to avoid a § 112, ¶ 6, construction,
Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d
1344, 1354 (Fed. Cir. 2006), as can a claim limitation that contains a term
that “is used in common parlance or by persons of skill in the pertinent art to
designate structure,” Lighting World, Inc. v. Birchwood Lighting, Inc., 382
F.3d 1354, 1359 (Fed. Cir. 2004). Nor will claim language invoke a § 112,
¶ 6, construction if persons of ordinary skill in the art reading the
specification understand the term to be the name for a structure that
performs the function, even when the term covers a broad class of structures
or identifies the structures by their function. Greenberg v. Ethicon Endo-
Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their
names from the functions they perform.”).
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Appellants’ Specification discusses a user interface which is operable
in two modes, the scroll and search mode, in which there are character boxes
which control the listing of titles. Col. 31, ll. 34-50; see also Figs. 38D-38F.
Appellants’ Specification further describes that the user interacts with this
interface in search mode by entering characters in the character boxes. The
entry of characters is described as follows:7
Characters are input using the up/down arrow keys 43A and
the ENTER or “OK” key 44. By depressing the up/down keys,
the characters in the character boxes cycle through the letters of
the alphabet and the digits 0-9. The arrows displayed around
the perimeter of a character box designate the box currently
activated and the keys which may be depressed. Once the
desired character is selected, depressing the right arrow key
moves the cursor to the second character box and so forth.
Col. 31, ll. 59-67 (emphases added).8 Appellants’ Specification further
describes the selecting operation of this corresponding structure stating “as
characters are changed in the character boxes.” Col. 32, ll. 6-7 (emphasis
added).
We construe the “selection means” of Appellants’ originally filed
claim 1 to cover both the user interface as depicted in Figures 38D and 38F
with the character boxes and its interaction with up or down keys (i.e., non-
alphanumeric keys) and equivalents thereof which are used as input to

7 Appellants describe this as the “search mode” of operation, as opposed to
Appellants’ “scroll mode” which does not select n characters of the title as
required by the selection means.
8 We note that this particular passage is also the supporting structure for the
patent claim 1 limitation of “means for causing each of said n characters to
cycle forward and backward,” and that implicit in this cycling is that the
selected character is dependent upon where in the sequence the current
character is (i.e. its state) to determine the next character displayed.
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implement the occurrence of a character change from a first character to a
second character (a “cycle” being a series of such occurrences)9 where the
characters are the letters of the alphabet and the digits 0-9.
In response to a rejection of originally-filed claim 1, Appellants
amended original claim 1 and added claims 2-23.10 Specifically, Appellants
added the following language to claim 1: “said selection means comprises
means for causing said character displays to cycle forward and backward
through a plurality of alphanumeric characters and means for assigning one
of said alphanumeric characters.” Parent Appl’n Amd’t A filed Mar. 11,
1996, at 2-8 (emphasis added). As the court indicates, Appellants argued in
connection with this amendment “that they overcame the prior art by using
the keys on the television control device to select the characters, by, for
example, cycling through the alphabet, rather than entering each character
using a keyboard, as taught in [the prior art].” Youman, 679 F.3d at 1340.
After a supplemental amendment, the Examiner allowed the parent
application “concluding that the means of selecting characters by cycling

9 See THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE SECOND
EDITION UNABRIDGED 497 (1987).
10 Our reviewing court stated:
The applicants amended the original claim, which provided for
“selecting means,” to require “cycling” to select characters.
This amendment was targeted at overcoming prior art–
specifically, the Reed, Vogel, and Young patents. In the
remarks accompanying this amendment, the applicants argued
that the key distinction in the amended claim that overcame
prior art was the use of “cycling” to “input 36 different
characters (A-Z and 0-9) using only a few keys on the remote
control device.” J.A. 974-75.
Youman, 679 F.3d at 1344.
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forward, backward, up and down through a list of alphanumeric characters
was not obvious in light of the prior art.” Id. (emphasis added). We find
that Appellants’ amendment to original claim 1 limited the selection means
to explicitly require character changes through “a plurality of alphanumeric
characters” (i.e., “cycle”) and that the changes are in two directions (i.e.,
“forward and backward”).

Reissue Prosecution
During prosecution of the present broadening reissue application,
Appellants amended reissue claim 24 by adding that the wireless remote
control comprises nonalphanumeric keys and characters are selected by
changing characters using those keys. Reissue claim 24 recites, in pertinent
part:
wherein a user may search for a title to be displayed by
selecting n characters with the wireless remote control, where n
is greater than one, wherein each of the n characters may be
selected with the wireless remote control from a plurality of
displayed alphanumeric characters by changing from a first
character to a second character using the nonalphanumeric
keys.
Reissue Appl’n Amd’t filed Nov. 16, 2007, at 8 (emphasis added). Accord
Youman, 679 F.3d at 1341 (noting this amendment).
The Examiner later rejected claims 24-44 as improperly recapturing
surrendered subject matter since these claims are said to lack the critical
“cycling” limitation that was added to claim 1 during prosecution of the
original patent to overcome the prior art rejection and render the claim
allowable. Ans. 3-7.
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Although Appellants’ reissue claim 24 is not in means-plus-function
format, it nonetheless positively recites a wireless remote control that is part
of the corresponding structure to the “selection means” in originally filed
claim 1. Therefore, by reciting that characters are selected by changing
from first to second characters using nonalphanumeric keys in claim 24
effectively broadened the remote control’s (i.e., the “selection means”)
character selection function from “cycling” to “changing.” As the court
notes, the added “cycling” limitation was not eliminated; rather, it was
broadened to “changing.” Youman, 679 F.3d at 1345.
As discussed supra, we now determine whether the reissue claims’
broader aspects materially narrow relative to the original claim such that
surrendered subject matter is not entirely or substantially recaptured. We
first address whether the “changing” limitation of the reissue claim
materially narrows relative to the original claim. The “selection means” of
original claim 1 has been construed to “cover the corresponding structure . . .
described in the specification and equivalents thereof.” As discussed supra,
the corresponding structure described in the Specification includes the up or
down keys (i.e., non-alphanumeric keys) which are used as input to
implement the occurrence of a character change from a first character to a
second character, where the characters are the letters of the alphabet and the
digits 0-9.
Despite Appellants broadening the patented claims to an intermediate
scope between the original and patented claims by modifying an added
limitation as noted above, this is not a case, as in Mostafazadeh, 643 F.3d at
1356-57, where the modified limitations are shown to be in the prior art
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relied upon by the Examiner in the original prosecution and therefore not
materially narrowing. That is, the Examiner has not shown that these
broader character-selection features that change displayed alphanumeric
characters using non-alphanumeric keys in claim 24 are in the prior art that
the Examiner relied upon in the original ‘733 patent’s application. See
Youman, 679 F.3d at 1347 (“Where the modified limitation was contained in
the prior art relied on by the examiner in the original prosecution, as the
attachment pad was, the limitation is not materially narrowing.” (citing
Mostafazadeh, 643 F.3d at 1361 n.4; emphasis added)). Accord Youman,
679 F.3d at 1347 (“Mostafazadeh establishes, as a ceiling for determining
whether a modified limitation materially narrows, any recapture of
surrendered subject matter that was in the prior art of the original
prosecution.”) (emphasis added).
During original prosecution, the Examiner rejected original claim 1 as
obvious under § 103 over “(Young or Vogel) and Reed.”11 Non-Final Rej.
mailed Jan. 30, 1996, at 2-4 (“Non-Final Rej.”). By relying on either Young
or Vogel as the base reference in the rejection, the Examiner effectively
alternatively rejected claim 1 as obvious over two separate grounds: (1)
Young and Reed, or (2) Vogel and Reed. In these rejections, the Examiner
found that each base reference (Young and Vogel) disclosed a “selection
means,” namely (1) the “keys” (i.e., switches) 156 of Young’s remote
controller in Figure 21, and (2) the four triangular and “sel” keys in Vogel’s
Figure 2. Non-Final Rej. 2-3. Accord Youman, 679 F.3d at 1339

11 The Young patent is U.S. Patent 5,353,121, the Vogel patent is U.S.
Patent 5,253,066, and the Reed patent is U.S. Patent 5,241,671.
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(summarizing the Examiner’s findings). The Examiner’s identified
“selection means” in Young and Vogel is reproduced below:

Young’s Figure 21 and Vogel’s Figure 2 showing Examiner’s identified
“selection means”

The Examiner found that while Young’s remote control issues control
commands that are received and processed to generate and display television
program titles, the Examiner admitted that Young lacks (1) displaying
programs alphabetically by title, and (2) a selection means that allows a user
to select a title by selecting at least the first character of the title. Non-Final
Rej. 3. The Examiner acknowledged a similar deficiency regarding Vogel
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despite disclosing a selection means. Id. To cure these deficiencies, the
Examiner cited Reed’s multimedia search system of alphabetically-listed
titles, where a user can select a title by entering one or more characters of
the selected title to display the closest titles to the displayed entry. Id.
(citing Reed col. 1, ll. 45-52; col. 4, ll. 28-37; col. 17, ll. 9-17). In light of
these collective teachings, the Examiner concluded that original claim 1
would have been obvious. Accord Youman, 679 F.3d at 1339-40
(summarizing the Examiner’s rejection).
There is no dispute that the “selection means” of original claim 1
would have been obvious over the collective teachings of either Young or
Vogel and Reed, despite Reed’s using a keyboard’s alphanumeric keys to
enter searchable titles.12 This point is all but conceded by Appellants’
narrowing amendment to that rejected claim to render it allowable during
original prosecution, namely by adding the “cycling” limitation as noted
previously. But on this record, we cannot say that Young, Vogel, and Reed
disclose selecting each displayed alphanumeric character with a wireless
remote control by changing from a first character to a second character using
the remote control’s non-alphanumeric keys as recited in reissue claim 24.
To the extent that this changing function—unlike cycling through each
displayed character—is taught by typing in characters of a title as in Reed
considered in light of either Young or Vogel we cannot say; nor will we
speculate in that regard here in the first instance on appeal.

12 See, e.g., Youman, 679 F.3d at 1339 (“The Reed system is used on a
personal computer with access to a keyboard of alphanumeric keys to enter
searchable titles.”).
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We therefore leave it to the Examiner to determine in the first
instance, in this reissue application, whether the broader character selection
features that change displayed alphanumeric characters using
non-alphanumeric keys in claim 24 are shown in the prior art that was
previously relied upon in the original prosecution.13 This is a crucial
finding to determine material narrowing on this record, particularly in view
of the scope of the means-plus-function limitations of original claim 1 noted
previously.14 See Hester, 142 F.3d at 1483 (holding that explicitly reciting a
“spiral conveyance path” in some reissue claims did not materially narrow
original means-plus-function claims whose corresponding structure passed a
conveyor belt through a spiral path).
But what we can say is that where, as here, (1) Appellants modify
during reissue a limitation that was added during original prosecution such
that it is broader than the patented claim yet still narrows relative to the
original claim (i.e., the original application’s claims before amendment or

13 As part of this inquiry, the Examiner should also consider whether other
prior art applies under other patentability statutes in connection with the
pending claims, such as 35 U.S.C. § 103. In this regard, we direct the
Examiner’s attention to U.S. Patent 5,488,409 (Yuen) who, in column 56,
lines 38 through 43, describes changing a character in a displayed title by
pressing “CH UP” and “CH DN” keys to scroll the current character forward
or backward.
14 Notably, Appellants’ Specification at column 10, lines 19-22, states:
“A remote controller suitable for the present invention, such as shown in
FIG. 3, which can be a remote controller manufactured by Universal
Electronics or Presentation Electronics’ Silent Partner . . . ” which
Appellants repeatedly acknowledge the operation thereof is “conventional”
in the art. Col. 10, ll. 7-31.

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cancellation), and (2) the Examiner has not shown that this broader feature
does not materially narrow (e.g., is in the prior art relied upon during
original prosecution), recapture is avoided. See Youman, 679 F.3d at 1347-
48.
Since the Examiner has not shown that reissue claim 24 does not
materially narrow original claim 1 in the parent application, Appellants
avoid recapture. We therefore need not determine whether claim 24 is
materially narrowed in other respects via unclaimed “overlooked aspects” to
avoid recapture—a separate inquiry that we need not address here. See id.
Accordingly, we are persuaded of error in the Examiner’s recapture
rejection under § 251 of (1) independent claim 24; (2) independent claim 40
which similarly broadens its corresponding patented claims, yet materially
narrows the original claims; and (3) dependent claims 25-27, 29-39, 41-43,
and 45-55 for similar reasons.

NEW GROUND OF REJECTION
During prosecution of the present broadening reissue application, the
Examiner indicated that claims 1-23 are allowable. Final Rej. 3.
Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection
against independent claims 1 and 12, under 35 U.S.C. § 103(a) as being
unpatentable over Young or Vogel, in combination with Reed and the newly
cited patent Yuen (US 5,488,409). In the parent application, the Examiner
found that the combination of Young or Vogel and Reed teaches all of the
limitations of the original claim 1 (reproduced supra). See Office Action
mailed Jan. 30, 1996. As discussed supra, Appellants amended the claim
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and the Examiner allowed the amended claim finding that the means for
selecting characters by cycling was not obvious. In rejecting independent
claims 1 and 12, we adopt the Examiner’s findings regarding the teachings
of Young, Vogel, and Reed. Also, the newly-cited Yuen reference teaches
the limitation of selection means for causing the characters to cycle forward
and backward as recited in independent claims 1 and 12. Specifically, Yuen
teaches entering data into a video system which uses channel up and down
keys to scroll forward and backward through characters. Col. 56, ll. 34-54.
We consider combining this data entry method with the teachings of Young,
Vogel, and Reed would have been obvious as it is nothing more than using
known methods to perform their established functions to yield predictable
results. To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We have not reviewed claims 2-11 and 13-22 as well as claims 23—
27, 29-43, and 45-55 to the extent necessary to determine whether these
claims are unpatentable over Yuen in combination with the other patents
cited in the record. We leave it to the Examiner to determine the
appropriateness of any further rejections based on this combination of
references.

CONCLUSION
The Examiner erred in rejecting claims 24-27, 29-43, and 45-55 under
§ 251.

Appeal 2010-007029
Application 09/313,532
Patent 5,629,733

20
DECISION
The Examiner’s decision rejecting claims 24-27, 29-43, and 45-55 is
reversed.
We reject claims 1 and 12 under 35 U.S.C. § 103(a).

REVERSED
37 C.F.R. § 41.50(b)

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