Ex Parte 4670857 et al

Board of Patent Appeals and Interferences

Jan 5, 2009

90007353 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL I. RACKMAN
____________

Appeal 2008-1893
Reexamination Control 90/007,353
United States Patent 4,670,857
Technology Center 3900
____________

Decided: January 5, 2009
____________

Before FRED E. MCKELVEY, Senior Administrative Patent Judge, and
SALLY C. MEDLEY, and KEVIN F. TURNER, Administrative Patent
Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner (Appellant) appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1-8. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.
We AFFIRM.

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STATEMENT OF THE CASE
This proceeding arose from a third party request for ex parte
reexamination filed by Microsoft Corporation, (Requester), Redmond, WA,
on December 22, 2004, of United States Patent 4,670,857 (hereinafter the
'857 Patent), entitled “Cartridge-Controlled System Whose Use is Limited to
Authorized Cartridges” and issued to Michael I. Rackman on June 2, 1987.
The real party in interest is Michael I. Rackman as patent owner and
patentee. (App. Br. 1).
Requester states that the '857 Patent is involved in patent infringement
litigation and that it is the defendant in Rackman v. Microsoft Corp.,
CV-97-0003 (E.D. N.Y.) (Request for Reexamination at 2).
The invention relates to “cartridge-controlled systems, and more
particularly to such a system whose use is limited to authorized cartridges”
(col. 1, ll. 5-7). The claimed invention is best illustrated in Figs. 1 and 4,
reproduced below:

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Fig. 1 of the '857 Patent depicts a prior art cartridge-controlled
system, having a microprocessor (18) controlling a memory accessing circuit
(22) coordinating access to individual locations in random access memory
(RAM; 24). Instructions are read from the cartridge (12) and executed,
allowing for user interaction, for example with a video game. (Col. 3,
ll. 22-64). The '857 Patent describes a process, illustrated in Fig. 4, where
encrypted instructions on a cartridge are decrypted by the system and stored,
to be executed thereafter. Through the use of public-key encryption, the
encryption algorithm is known only to the machine manufacturer and it is
not practically possible for unauthorized persons to manufacture original
cartridges which will work with the machine. (Col. 2, ll. 35-38).
Claim 1 on appeal, which is representative, reads as follows:
1. A plurality of mass-produced identical systems each
comprising data processing means for generating memory-
accessing address signals and for executing memory-furnished
instructions; and means for interfacing said data processing
means with an insertable cartridge having a read-only-memory
contained therein; characterized by a read-write memory; said
data processing means further controlling generation of
memory-accessing address signals to allow accessing of blocks
of encrypted instructions from the read-only-memory of an
inserted cartridge, decryption of the blocks of encrypted
instructions thus accessed, and generation of memory-accessing
address signals to allow storage of the decrypted blocks of
instructions in said read-write memory, and thereafter executing
instructions furnished by said read-write memory in response to
generated memory-accessing address signals; said blocks of
instructions being stored in encrypted form in said read-only-
memory in accordance with a private key which is associated
with a public key of a public-key cryptosystem pair, and said
data processing means controlling the decryption of said blocks
of encrypted instructions in accordance with said public key;
each of said identical systems controlling said decryption and
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thereafter execution of instructions furnished by its read-write
memory in the identical manner responsive to insertion of the
same cartridge.
A Final Office Action was mailed March 26, 2007.1 The prior
art references relied upon to reject the claims on appeal are:
Best 4,278,837 Jul. 14, 1981
Flies 4,297,569 Oct. 27, 1981
Weinstein 4,453,074 Jun. 5, 1984
The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Weinstein in view of either Flies or Best. (Final Office
Action 2). Appellant has indicated that dependent claims 2, 4, 6, and 8 are
not separately argued, (App. Br. 10), and no particular elements of claims 1,
3, 5, and 7 are specifically argued. Thus, consistent with Appellant’s
arguments, we confine our discussion to the Examiner’s rejection of claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii).
Weinstein is directed towards a protection system for intelligent cards
having encrypted codes, where the system uses public-key encryption. In
the rejection, the Examiner found that Weinstein teaches all elements of
claim 1 except that the encrypted data stored on the cartridge are
“instructions”, i.e. program code, or that the terminal’s microprocessor
executes those instructions. The Examiner relies on either of Flies and Best,
to cure these deficiencies, with motivations supplied in the rejection (Final
Office Action 2-12).

1 The Appeal Brief (App. Br.) was filed May 7, 2007, an Examiner’s Answer
(Ans.) was mailed June 6, 2007, a Reply Brief (Reply Br.) was filed on June
21, 2007, a Supplemental Examiner’s Answer (Supp. Ans.) was mailed
August 13, 2007, and a Supplemental Reply Brief (Supp. Reply Br.) was
filed August 31, 2007.
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Appellant contends that the references are not combinable on the basis
that the Examiner has asserted, and even if the references were combined as
indicated, they would not give rise to the apparatus and method of the claims
of the '857 Patent. (App. Br. 10). According to Appellant, Weinstein does
not address executable instructions and Weinstein, Best and Flies all have
opposite objectives from the invention. (App. Br. 13-16). Appellant also
argues that one of ordinary skill in the art would not have combined
Weinstein with either of Best or Flies and cites reasons why such ordinary
artisans would not combine those references. (App. Br. 17-22).

ISSUES
Thus, the issues arising from the Examiner's rejection, and Appellant's
contentions responding to the rejection, are:
Has Appellant shown that the Examiner erred in finding that a person
having ordinary skill in the art would have combined Weinstein with Best or
combined Weinstein with Flies according to the rationales supplied in the
rejection of the claims of the '857 Patent?
If not, has Appellant shown that the Examiner erred in concluding that
combinations of references would have provided the functionalities specified
in the claims of the '857 Patent?

FINDINGS OF FACT
BACKGROUND:
1. Oral arguments were heard on September 17, 2008, a transcript
of which is entered into the record.
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2. The '857 Patent discusses the prior art as follows (col. 1,
ll. 8-20):
There are many microprocessor-controlled systems
which operate in accordance with a series of instructions
stored in interchangeable read-only memories (ROM).
Typical among such systems are the video game units
which are sold for home use. Such a unit is connected to
a television receiver, and a cartridge, containing a ROM,
is inserted in a slot provided for this purpose. The
cartridge furnishes the instructions for controlling the
microprocessor operation which, in turn, controls the
television display, reading of a keypad, etc. A common
use for such systems is the playing of games. For each
game which may be played, a different cartridge is
provided.
3. The '857 Patent then states the problems with such prior art
systems to include (col. 1, ll. 30-35):
There is often no way to prevent the marketing of
"compatible" cartridges, that is, cartridges which will
control the machine operation using the same set of
instructions (albeit in different sequences to control
different games or programs), by a competing "software"
supplier.
4. The '857 Patent states that different methods of cryptography
were also known in the art (col. 4, l. 64 – col. 5, l. 7):
For many years, attention has been focused on the
transmission of sensitive or secret messages over a
communications channel. Attention has also been
focused on techniques for authenticating message
transmission, that is, to verify that a message incoming
over a data channel indeed originated with the purported
sender. Public-key cryptography is now recognized as a
possible solution to both the privacy and authentication
problems. One of the earliest works on the subject is that
of Diffie and Hellman, "New Directions in
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Cryptography", IEEE Transactions on Information
Theory, November, 1976.
5. During the prosecution of the application that matured into the
'857 Patent and the instant reexamination proceeding, reference
has been made to the paper by Diffie and Hellman simply as
“New Directions.”
6. The '857 Patent explains the application of public-key
cryptography to the problems associated with the prior art
systems (col. 6, ll. 51-66):
The present invention is based upon the principles of
public-key cryptography which relate to the authentication of
messages. If a message is decrypted with the public key of a
public-key cryptosystem pair and the decryption is intelligible,
then it follows that the original message must have been
encrypted with the associated private key of the transmitter.
What is of concern in the present invention is the decryption of
a "message" into "intelligible text" in the sense that the
intelligible text comprises a sequence of instructions which can
control the microprocessor operation. If the encryption of
blocks of instructions is done in accordance with the
manufacturer's private key, decryption with the public key will
result in a sequence of instructions capable of controlling the
microprocessor as originally contemplated by the software
designer.

THE WEINSTEIN REFERENCE:
7. Weinstein discloses the concept of storing data that has been
encrypted using public-private key encryption on an insertable
storage medium, i.e., a credit card. (Abstract, Col. 4, ll. 14-32).
8. The encrypted data is subsequently read from the insertable
storage medium and decrypted, with the decrypted result being
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used to authenticate that the storage medium is from an
authorized source. (Col. 4, ll. 14-57).
9. Weinstein discloses a plurality of mass-produced transaction
terminals that are used for decryption and authentication. (Col.
8, ll. 40-45).
10. Weinstein fails to disclose the encryption of multiple
executable instructions, but instead discloses the decryption and
authentication of a stored code, where that code is the
encryption of a concatenation of a user secret password and a
common reference text. (Abstract).

THE FLIES REFERENCE:
11. Flies discloses an insertable storage medium on which
encrypted instructions are stored. Based on an
encryption/decryption code entered by a user, the contents will
be decrypted into plain text or ‘garbage.’ (Abstract; Col. 13,
l. 55- col. 14, l. 32).
12. The contents of the insertable storage medium may contain an
executable program or routine for the microprocessor. (Col. 13,
ll. 4-5).
13. Flies discloses that the encryption/decryption methods that are
employed may be any acceptable method. (Col. 14, ll. 33-34).

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THE BEST REFERENCE:
14. Best is directed to a system having a microprocessor which
executes programs which are stored in cipher to prevent
software piracy. (Abstract).
15. In Best, the microprocessor executes a program by deciphering
instructions piecemeal as it fetches and executes them. (Col. 3,
ll. 36-38).
16. The enciphered program may be accompanied by enciphered
data stored in memory, where that memory may be any of a
variety of conventional storage devices. The enciphered
program may be read from storage media such as magnetic disc
or tape, optically-coded discs, or magnetic bubble domain
memory. (Col. 6, ll. 18-30)

THE HELLMAN DEPOSITION:
17. Appellant filed an exhibit captioned “SELECTED PAGES
FROM HELLMAN DEPOSITION TESTIMONY” which
provided certain pages from a deposition by Martin E. Hellman
on March 16, 2005.
18. Mr. Hellman was one of the authors of the New Directions
paper and was an expert retained by Requestor in the above-
cited litigation. (App. Br. 21).
19. Mr. Hellman indicated that the '857 Patent and Weinstein
applied message authentication in a novel way “to a problem
that had not occurred to me in 1976 when we wrote the paper.”
(Hellman Deposition p. 264).
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20. According to Mr. Hellman the application of message
authentication was novel, in his view, with respect to the 1976
New Directions paper and “not necessarily novel as compared
to the Weinstein patent.” (Hellman Deposition p. 264).

PRINCIPLES OF LAW
On appeal to this Board, Appellant must show that the Examiner erred
in finally rejecting the claims. Cf. In re Kahn, 441 F.3d 977, 985-986 (Fed.
Cir. 2006) (“‘On appeal to the Board, an applicant can overcome a rejection
by showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with evidence of secondary indicia of
nonobviousness.’”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)); see also 37 C.F.R. § 41.37(c)(1)(vii).
The United States Patent and Trademark Office (PTO) gives claim
terms their broadest reasonable interpretation, taking into account any
enlightenment by way of definitions or otherwise found in the specification.
In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation”).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
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subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727,
1734 (2007).
KSR reaffirmed the analytical framework set out in Graham v. John
Deere Co., 383 U.S. 1 (1966), which states that an objective obviousness
analysis includes: (1) determining the scope and content of the prior art;
(2) ascertaining the differences between the prior art and the claims at issue;
and (3) resolving the level of ordinary skill in the pertinent art. KSR, 127 S.
Ct. at 1734. Secondary considerations such as commercial success, long felt
but unsolved needs, or failure of others “‘might be utilized to give light to
the circumstances surrounding the origin of the subject matter sought to be
patented.’” Id. (quoting Graham, 383 U.S. at 17-18).
KSR explained:
For over a half century, the Court has held that a “patent for a
combination which only unites old elements with no change in
their respective functions . . . obviously withdraws what is
already known into the field of its monopoly and diminishes the
resources available to skillful men.” . . . This is a principal
reason for declining to allow patents for what is obvious. The
combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield
predictable results.
KSR, 127 S. Ct. at 1739. Thus, “when a patent claims a structure already
known in the prior art that is altered by mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR, 127 S. Ct. at 1740. And, “if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
Id.
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KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 127 S. Ct. at
1741 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
(“Our suggestion test is in actuality quite flexible and not only permits, but
requires, consideration of common knowledge and common sense”); Alza
Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is
flexibility in our obviousness jurisprudence because a motivation may be
found implicitly in the prior art. We do not have a rigid test that requires an
actual teaching to combine . . . ”).
“When the PTO [i.e., an examiner,] shows prima facie obviousness,
the burden then shifts to the applicant[s] to rebut.” In re Mayne, 104 F.3d
1339, 1342 (Fed. Cir. 1997).
“[C]ase law does not require that a particular combination must be the
preferred, or the most desirable, combination described in the prior art in
order to provide the motivation for the current invention.” In re Fulton, 391
F.3d 1195, 1200 (Fed. Cir. 2004).
Mere allegations or conclusory statements in a specification or an
affidavit do not take the place of factual evidence. See, e.g., In re Lindner,
457 F.2d 506, 508 (CCPA 1972) (“The affidavit and specification do contain
allegations that synergistic results are obtained with all the claimed
compositions, but those statements are not supported by any factual evidence
. . . [M]ere conclusory statements in the specification and affidavits are
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entitled to little weight when the Patent Office questions the efficacy of
those statements.”).

ANALYSIS
We note that the Examiner and Appellant have some disagreement
with the presentation of facts in Appellant’s Appeal Brief. (App. Br. 1-11,
Ans. 20-29, Reply Br. 7-9). We have not addressed every point of
disagreement over the facts and have only presented the findings of fact
supra that we have concluded are needed to resolve the issues in this case.
We note that the '857 Patent discloses the problems associated with
the prior art systems (FF. 2) and discloses the nature of public-key
cryptography and how it provides authentication (FF. 4). Questions raised at
the Oral Hearing were concerned with whether the invention claimed in the
'857 Patent merely required the application of known elements to solve a
known problem. (Oral Hearing 7). Appellant indicated that the new
function, achieved for the known elements, was the prevention of a third-
party cartridge manufacturer from producing cartridges that could be used
on a machine embodying the invention. (Oral Hearing 7-8). It is in this
context, of considering whether a technique that has been used to improve
one device would be apparent to a person of ordinary skill to improve other
devices in the same way, that we consider the prior art rejection made by the
Examiner.

Combinations of the Cited Prior Art
Appellant concedes that the same encryption process applies to both
data and instructions in Weinstein, but argues that if Weinstein had
instructions on smart cards, they wouldn’t be executed. (App. Br. 13).
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Additionally, Appellant argues that there is no teaching of instructions
receivable from the outside. (Reply Br. 1-2). The Examiner found that this
is mere speculation because the system in Weinstein is capable of reading
and executing code. (Ans. 33-34). We agree with the Examiner to the
extent that we do not find Weinstein as precluding the execution of outside
executable instructions. Given the teachings of Flies and Best, (FF. 12 and
16), we cannot say that one of ordinary skill in the art would not have altered
Weinstein to execute code provided on an insertable medium.
Appellant argues that the purpose of Weinstein is to verify identity
and is not applicable to the present invention. Appellant argues that
verification of identity would not be accomplished through entry by the user
of executable instructions. (App. Br 14). However, given the teachings of
Flies and Best, (FF. 12 and 14), executable programs can be used to provide
authorization, which is related to verification. The objectives of identity
verification and authorization are at least compatible, if not overlapping, and
are not opposite as Appellant has argued.
Appellant argues that Weinstein encourages other companies to issue
credit cards that could be used with his machines, which is the opposite
objective of the '857 Patent. (App. Br. 14-16). Appellant argues that the
present invention wants to restrict media that will work with a particular
machine and Weinstein wants all credit cards to work with his machine.
However, Weinstein does not encourage the use of unauthorized credit cards
or unauthorized users. We therefore cannot agree with Appellant’s
assertion. Additionally, the process of authentication is common to
Weinstein and the '857 Patent. The Examiner noted, (Ans. 37-38), that
persons may be authorized to issue cards that are compatible with
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Weinstein’s machines, just as they may be authorized by the manufacturer to
produce cartridges, which is a similar objective as provided in the '857
Patent. As such, we do not find the objectives of Weinstein and the '857
Patent to run counter to the extent that one of ordinary skill in the art would
not have considered Weinstein in an effort to overcome the prior art
problems acknowledged in the '857 Patent. (FF. 3).
Appellant argues that Best requires cartridges to not work on all
machines because Best’s objective is to thwart copying. Appellant also
argues that Flies requires that every key works differently because each user
has their own password, and cannot provide keys that work with all
machines. Thus, Appellant concludes that Best and Flies have objectives
which are opposite of the '857 Patent. (App. Br. 14-16). We do not agree.
In Best, while prevention of copying may be one objective, the use of a
cipher requires authentication of the data being encrypted through that
cipher, or else no programming can be decrypted. In other words,
programming not enciphered may not operate on a system requiring
enciphered data. In Flies, while the keys may not work in every machine,
the system still provides authentication for that individual key and user.
Thus, we do not find the objectives of Best and Flies to run counter to the
objectives of the '857 Patent which includes authentication of particular
insertable media. Given the similar interests, we find that one of ordinary
skill in the art would have considered Best and Flies in an effort to overcome
the prior art problems acknowledged in the '857 Patent.
Appellant argues that the object of present application is to control
who could write original software that would run on a machine and the prior
art combinations do not achieve this object. (App. Br. 16). The Examiner
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found that the objective of application is not claimed and is irrelevant. (Ans.
42-43). We disagree with the Examiner in that method claims 3 and 7 recite
the prevention of unauthorized manufacture of compatible cartridges;
however, we agree with the Examiner that the argument is irrelevant since
the combinations of Weinstein and Best or Flies allow for this objective to
be met, as discussed above.
Appellant argues that one of ordinary skill in the art would not have
looked to Best or Flies since their design philosophies are opposite of
Weinstein. (App. Br. 17-18). The Examiner found that the design
philosophies are not opposite because there is no fixed design philosophy
with respect to the kind of encryption used to secure executable code. (Ans.
43). We agree with the Examiner since we do not find the design
philosophies or other aspects of Best and Flies to be opposite to those of
Weinstein. We further agree with the Examiner that Weinstein would have
informed one of ordinary skill in the art of the types of cryptography that
could be applied in the cryptographic applications disclosed in either of Best
or Flies.
Appellants also argue that Weinstein has no way of running
instructions received from card and Weinstein has nothing to do with the
prevention of software copying. (App. Br. 17-18). The Examiner found that
Weinstein has capability to receive instructions and it would have been
obvious to execute those instructions. (Ans. 45-46). We agree with the
Examiner that if Weinstein received executable instructions, per Best or
Flies, it would have been obvious to execute those instructions. We also
agree that since Weinstein is disclosed to be capable of executing
instructions, this functionality is already found in Weinstein. Also, since
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Weinstein is concerned with securing information, executable instructions
would benefit from encryption used in Weinstein, to at least the same extent
as instructions in Best or Flies benefit from encrpyption.
Appellant argues that the Examiner’s argument about adding program
data to the other data does not consider public key encryption and that not all
data are the same. (App. Br. 18-21). The Examiner found that Weinstein
teaches public key encryption and that cryptography applies to both
unexecutable and executable data. (Ans. 49-50). We agree with the
Examiner in that providing public key encryption on every machine in view
of Weinstein would have been obvious. In addition, in view of Best, the
provision of encryption of both programming and additional data is
explicitly disclosed. (FF. 16). As such, we do not find Appellant’s
counterarguments to be compelling.
Appellant argues that Weinstein’s disclosed “numerous other
purposes” do not envision providing secure access to programs, contrary to
what the Examiner has found, and instead are concerned with prevention of
copying. (App. Br. 21). Even if we were to agree with Appellant that the
clear implication of Weinstein was the prevention of copying, that does not
mean that Weinstein cannot be applied to the process of securing access to
programs, as proposed in the rejection.
Appellant also argues that the testimony of Hellman, characterized by
Appellant as an "expert," details that the present application’s use of his
authentication technique was “novel” contradicts obviousness findings.
(App. Br. 21-22). The Examiner found that the testimony does not point to
novelty and that the testimony discusses the novelty of the '857 Patent with
respect to the New Directions paper but not with respect to Weinstein.
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(Ans. 57-59; FF. 20). The Examiner, therefore, declined to give much, if
any, weight to the Hellman testimony. We have no reason to disagree with
the Examiner. We add that the disclosure of Weinstein also suggests that
applications of public key cryptography, other than those envisioned by the
authors of New Directions, were being contemplated by those of ordinary
skill in the art.
Appellant also argues that either formulation of cited references fails.
Appellant argues that in either of Best or Flies in view of Weinstein, the
encrypted instructions are designed for a single machine or user with the
addition of public key cryptography. (App. Br. 22-23). We disagree, as
discussed above, in that the combination would not necessarily result in
encrypted instructions designed for use in a single machine. In both Best
and Flies, the instructions would be executable by multiple machines that are
compatible with the processes disclosed in Best and Flies.
Appellant also argues that Weinstein in view of either Best or Flies
provides for cards which work on all machines with no programs, but that
the addition of either of Best or Flies restricts use of cards/cartridges. (App.
Br. 22-23). We disagree, as discussed above, in that the combination would
not necessarily result in restricted use of the insertable media, since it would
depend on the compatibility of the machines with the processes disclosed in
Best and Flies.
In the Supplemental Answer, the Examiner found that one of ordinary
skill in the art would have known that asymmetric cryptography, as in
Weinstein, was “better” than symmetric cryptography. (Supp. Ans. 2-6).
Appellant argues that neither Flies nor Best is made better by using public
key cryptography since key distribution is not an issue in either. (Supp.
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Reply Br. 1-3). We find the discussion to be immaterial to the obviousness
of the combination of Weinstein with either of Best or Flies since it is not
required that a particular combination must be the most desirable or best to
provide the motivation for the combination. As such, we do not find
Appellant’s arguments to be compelling and we affirm the rejection of
claims 1-8.

Other Briefed Issues
The Appellant alleges that the Examiner improperly uses “code” to
gloss over differences. However, the Examiner ultimately found that the
usage has been clarified and Appellant has had the opportunity to respond.
(App. Br. 24; Ans. 60). Appellant makes similar arguments with respect to
the Examiner’s use of the terms “information” and instructions”
interchangeably. (Reply Br. 6-7). Even if we agreed with Appellant that the
terms “code” and “instructions,” in the context of the '857 Patent are
certainly different or that the terms “information” and “instructions” are
likewise different, we find any such juxtaposition by the Examiner to be
inadvertent and immaterial to the rejections proffered and our analysis. As
discussed above, Appellant has not established any error in the rejection of
the claims, even in view of the distinctions between the terms as emphasized
by Appellant.
Appellant also argues that the original Board panel, which issued the
December 16, 1986 Opinion, considered “New Directions” which is the
same as Weinstein. Appellant argues: “[i]nsofar as the '857 claims are
concerned, Weinstein adds nothing to ‘New Directions.’” (App. Br. 24). As
such, Appellant argues that the present issues have already been decided.
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However, as the Examiner found, (Ans. 60), the rejection before the prior
panel is not the same as the instant rejection. While we have considered the
prior panel’s opinion, we are not precluded from our findings because of that
panel’s opinion. The prior panel did not consider any rejections applying
Weinstein or Flies and we accept its findings with respect to Best alone. As
such, we do not find the present issues before us to have been previously
decided.

Other Issues Raised at Oral Hearing
At Oral Hearing [but not in its briefs], Appellant indicated that based
on the grant of reexamination request, the Requestor wrote a letter to the
judge in the above-cited litigation indicating that ordering reexamination
supported Requestor’s charge of inequitable conduct on the part of
Appellant for not disclosing Weinstein to the Examiner in the original
prosecution of the '857 Patent. (Oral Hearing p. 29). Seeking to inject into
this reexamination proceeding an issue which is apparently before the
district court, Appellant requested that we find that (1) “there is nothing in
Weinstein that adds anything pertinent to [the] '857 [patent] over New
Directions,” and (2) Weinstein is cumulative to New Directions. (Oral
Hearing p. 29).
Appellant invites us to issue an advisory opinion on an inequitable
conduct issue not relevant to any issue before the Board. We decline the
invitation. If Appellant believes the references are cumulative, it should
present its argument to the district court. See In re Lanham, 1 USPQ2d 1877
(Comm'r Pat. 1986), aff'd sub nom. Stewart Systems, Inc. v. Commissioner,
Appeal 2008-1893
Reexamination Control 90/007,353 (U.S. Patent 4,670,857)

21
1 USPQ2d 1897 (E.D. Va. 1986) (fraud in the procurement of a patent not
an issue which is considered in reexamination)
At Oral Hearing, Appellant also called out attention to a recently
decided case, In re Swanson, 540 F.3d 1368 (Fed. Cir. 2008). Based on
Swanson, Appellant invites us to determine whether a substantial new
question of patentability exists vis-à-vis a prior reexamination request said to
have been made in 1993. According to Appellant, it was decided that the
prior request for reexamination determined that no new substantial question
of patentability existed. (Oral Hearing p. 32). Appellant told us that (1) the
earlier reexamination request was made on the basis of unpatentability of
claims in view of Weinstein and Best and (2) the present reexamination
request was made on the basis of unpatentability of claims in view of
Weinstein, Best, and Flies. Appellant further told us that Flies is cumulative
in its teachings with Best and is applied in the alternative to Best. Appellant
therefore reasons that the issues in the two reexamination requests were the
same, and that reexamination is barred under Swanson.
Appellant, of course, is a registered patent attorney and therefore an
applicant familiar with reexamination. The Swanson issue, having not been
presented before the Examiner, or briefed before us, has been waived. 37
C.F.R. § 41.37(c)(1) (vii) ("Any arguments or authorities not included in the
brief or a reply brief … will be refused consideration unless good cause is
shown"). To be sure, Swanson was decided after briefing. However, unlike
Swanson who presented and preserved an issue for appeal, Appellant did not
do so. No excuse is apparent why the issue could not have been raised.
Swanson demonstrates that it could have been raised.
Appeal 2008-1893
Reexamination Control 90/007,353 (U.S. Patent 4,670,857)

22
Beyond Appellant's failure to raise the issue is the state of this record.
Appellant, in effect, invites us (1) to search the record of the prior
reexamination, as well as perhaps the prosecution of the application which
matured into the patent under reexamination, (2) compare the evidence and
arguments made in the prior reexamination with those made in this
reexamination, and (3) see if we can come up with some theory upon which
Appellant might prevail. We decline this invitation as well. The Board will
not take on the role of an advocate for an appellant, particularly in a
reexamination requested by a third party.
First, Appellant has not presented a complete record.
Second, we do not have the views of the Examiner on the precise
argument which Appellant now seems to advance.
Third, reexamination proceedings are to be carried out with special
dispatch.
Fourth, we decline to speculate on the precise facts, or order a remand
so that a record can be developed at this point, because the third party
requester and district court may be waiting to learn the outcome of this
reexamination.
For the reasons given, on a totality of the evidence before us,
Appellant has not shown good cause for raising the issue for the first time at
oral hearing. We exercise discretion not to consider issue raised for the first
time at oral argument.
CONCLUSION
Appellant has failed to demonstrate error in the Examiner’s
determination that a person a having ordinary skill in the art would have
found it prima facie obvious to combine Weinstein with Best or combine
Appeal 2008-1893
Reexamination Control 90/007,353 (U.S. Patent 4,670,857)

23
Weinstein with Flies according to the rationales supplied in the rejection of
the claims of the '857 Patent, and that the proffered combinations would
have provided the functionalities specified in the claims of the '857 Patent.

DECISION
The Examiner’s decision to reject appealed claims 1-8 is affirmed.
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)(iv).
AFFIRMED

ack

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