95000533 (P.T.A.B. Jul. 21, 2014)

Ex Parte 7113919 et al

Patent Trial and Appeal BoardJul 21, 2014

95000533 (P.T.A.B. Jul. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/000,533 02/11/2010 7113919 206025-0001US.601939 4063 10872 7590 07/22/2014 Riverside Law LLP 300 Four Falls Corporate Center, Suite 710 300 Conshohocken State Road West Conshohocken, PA 19428 EXAMINER BONSHOCK, DENNIS G ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 07/22/2014 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ NATIONAL SEMICONDUCTOR CORPORATION Requester v. eTOOL DEVELOPMENT, INC. Patent Owner and Appellant ____________________ Appeal 2014-003315 Reexamination Control 95/000,5331 Patent No. US 7,113,919 B1 Technology Center 3900 ____________________ Before MARC S. HOFF, DAVID M. KOHUT, and ERIC B. CHEN, Administrative Patent Judges. HOFF, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The real party in interest is eTool Development, Inc. Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 2 Patent Owner eTool Development, Inc. appeals under 35 U.S.C. §§ 134(b) and 315(a) (2002) from the rejection of claims 1-4, 6-13, 15-23, 25- 35, 37-44, 46-55, 57-61, 68-70, 74-81, 88-90, and 94-100 as set forth in the Right of Appeal Notice (RAN) mailed December 12, 2012.2 Patent Owner filed a brief (“PO App. Br.”) on March 21, 2013 and a rebuttal brief (“PO Reb. Br.”) on December 19, 2013. The Examiner mailed an Examiner’s Answer (“Ans.”) on October 17, 2013 which incorporated the RAN by reference. An oral hearing was held on June 25, 2014. We have jurisdiction under 35 U.S.C. §§ 134 and 315. We reverse. The ‘919 Patent issued to Eric W. Norris and Walter C. DeDouza on September 26, 2006, and is assigned to Chemodomain, Inc. The ‘919 Patent concerns a system and method for the automated selection of formulations and/or formulation components by specifying product characteristics. The system and method serve customers that use selected components as raw materials for manufacture of specialty products and that require an understanding of how those components affect performance. Products such as electronic circuits, coatings, adhesives, sealants, inks, polishes, cleaners, and detergents fall within the product profile (Abstract). Claim 1 is exemplary of the claims on appeal: 1. (Original) A method for a supplier of at least one supplier specific specialty component to provide a customer with technical support information for making a supplier specific formulation having certain characteristics over a network-based system so as to permit the customer to make the formulation 2 Claims 101-156 have been cancelled. Claims 5, 14, 24, 36, 45, 56, 62-67, 71-73, 82-87, and 91-93 are not subject to reexamination. Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 3 from the at least one supplier specific specialty component promoted and offered for sale by the supplier to the customer, the method comprising: providing a computer database comprising promotional information specific to the at least one specialty component, a supplier offer to sell the at least one specialty component and supplier technical support information for making a plurality of product formulations using the at least one specialty component; classifying in the computer database the plurality of product formulations according to a set of product characteristics for each of said formulations; receiving over the network from the customer a plurality of inputs indicative of a set of customer preferred characteristics; presenting over the network to the customer supplier technical support information comprising a plurality of formulation constituent components including the at least one specialty component for each of said plurality of formulations corresponding to said set of characteristics received from the customer so that the customer may select different combinations of said components to be used with the at least one specialty component so as to allow the customer to create different trial formulations; receiving over the network from the customer another input selecting at least one particular combination of constituent components to be used in combination with the at least one specialty component for use in creating at least one trial formulation; presenting over the network to the customer technical support information for said at least one trial formulation including performance characteristics for said at least one trial formulation, said performance characteristics being substantially consistent with and supplemental to the customer preferred characteristics; presenting over the network to the customer the promotional information specific to the least one specialty component; and Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 4 presenting over the network to the customer an offer sell the at least one specialty component. The Examiner relies upon the following prior art in rejecting the claims on appeal: Henson 6,167,383 Dec. 26, 2000 Lynch 5,708,798 Jan. 13, 1998 Barck 7,003,548 Feb. 21, 2006 Kolowa 6,370,513 Apr. 9, 2002 Beall 6,169,992 Jan. 2, 2001 Kavanagh 5,838,965 Nov. 17, 1998 Iyengar 6,874,146 Mar. 29, 2005 Froseth 2002/0004749 Jan. 10, 2002 “Comparing the High Speed Comparators,” National Semiconductor Application Note 87, Interface Development Group, June 1973 (hereinafter “National Application Note”) Archived web page http://web.archive.org/web/19991010013450/http://www.national.com/pf/L M/LM161.html (hereinafter “Product Folder LM161”) Archived web page http://web.archive.org/web/19990129055202/http://www.national.com/pf/10 /100314.html (hereinafter “Product Folder 100314”) The claims stand rejected over various combinations of prior art references (PO App. Br. 21-24): Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 5 References Claims Basis Henson 1-4, 6-13, 15, 17-23, 25-30, 41-44, 46-55, 57-61, 74, 75, 77-81, 90, 94, 95, 97, 99, and 100 102(e) Henson and Beall 31, 32, 35, and 37-40 103(a) Henson and Kolawa 16 103(a) Henson, Beall, Kavanagh, and Iyengar 34 103(a) Henson, Beall, and National Application Note 68, 70, and 88 103(a) Henson, Beall, National Application Note, and Product Folder LM161 or Product Folder 100314 69 and 89 103(a) Henson, Beall, National Application Note, and Product Folder LM161 76 and 96 103(a) Henson and Lynch 1-4, 6-13, 15, 17-23, 25-30, 41-44, 46-55, 57-61, 74, 75, 77-81, 90, 94, 95, and 97-100 103(a) Henson, Lynch, and Beall 31, 32, 35, and 37-40 103(a) Henson, Lynch, and Kolawa 16 103(a) Henson, Lynch, Beall, and Kavanagh 33 103(a) Henson, Lynch, Beall, Kavanagh, and Iyengar 34 103(a) Henson, Lynch, Beall, and National Application Note 68-70, 88, and 89 103(a) Henson, Lynch, Beall, National Application Note, and LM161 76 and 96 103(a) Barck 1-4, 7-13, 17-23, 26- 30, 41-44, 47-53, 55, 58-61, 74, 75, 77-81, 90, 94, 95, and 97-100 102(e) Barck and Beall 31-33, 35, 37-40, 46, and 57 103(a) Barck and Automotive News 6, 15, and 25 103(a) Barck and Kolawa 16 103(a) Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 6 Barck, Beall, and Iyengar 34 103(a) Barck and Henson 54 103(a) Barck, Beall, and National Application Note 68, 70, and 88 103(a) Barck, Beall, National Application Note, and Product Folder LM161 or Product Folder 100314 68 and 89 103(a) Barck, Beall, National Application Note, and Product Folder LM161 76 and 96 103(a) Kolawa 1, 3, 4, 10, 11, 13, 16, 17, 20-23, 30, 41, 50, 61, 74, 75, 77, and 80 102(e) Kolawa and Beall 31-33 and 76 103(a) Kolawa, Froseth, and Beall 35, 38-40, and 96 103(a) Kolawa, Henson, and Beall 35 and 38-40 103(a) Kolawa and Froseth 2, 7-9, 12, 18, 19, 26- 29, 42-44, 47-49, 51- 53, 55, 58-60, 78, 79, 81, 90, 94, 95, and 97- 100 103(a) Kolawa, Beall, and National Application Note 6, 15, and 25 103(a) Kolawa, Beall, and Iyengar 34 103(a) Kolawa, Froseth, Beall, and National Application Note 37, 57, 88, and 89 103(a) Kolawa, Henson, Beall, and National Application Note 37 103(a) Kolawa, Beall, and National Application Note 46 and 68-70 103(a) Kolawa, Froseth, and Henson 54 103(a) Lynch and Henson 1-4, 6-13, 15, 17-23, 25-30, 41-44, 46-55, 57-61, 74, 75, 77-81, 90, 94, 95, and 97-100 103(a) Lynch and Beall 31 and 32 103(a) Lynch, Henson, and Beall 35, 37-40, 46, and 57 103(a) Lynch, Henson, and Kolawa 16 103(a) Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 7 Lynch, Beall, and Kavanagh 33 103(a) Lynch, Beall, Kavanagh, and Iyengar 34 103(a) Lynch, Henson, Beall, and National Application Note 68, 70, and 88 103(a) Lynch, Henson, Beall, National Application Note, and Product Folder LM161 or Product Folder 100314 69 and 89 103(a) Lynch, Henson, Beall, National Application Note, and Product Folder LM161 76 and 96 103(a) ISSUES Patent Owner argues that the Examiner has not applied the proper construction of the terms “specialty component,” “technical support information,” “making,” and “matching” (PO App. Br. 28-29, 34, 42, and 47). As a consequence of these allegedly improper constructions, Patent Owner contends that the primary references used to reject the claims – Henson, Lynch, Barck, and Kolawa – lack a disclosure of several elements of the claimed invention, rendering the Examiner’s rejections erroneous (PO App. Br. 51, 55-56, 59, and 61-62). Patent Owner’s contentions present us with the following issues: 1. Did the Examiner apply an appropriate construction of the claim term “specialty component”? 2. Did the Examiner apply an appropriate construction of the claim term “technical support information”? 3. Did the Examiner apply an appropriate construction of the claim term “making”? 4. Did the Examiner apply an appropriate construction of the claim term “matching”? Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 8 5. Did the Examiner err in rejecting various claims over Henson, or combinations of references including Henson? 6. Did the Examiner err in rejecting various claims over combinations of references including Lynch? 7. Did the Examiner err in rejecting various claims over Barck, or combinations of references including Barck? 8. Did the Examiner err in rejecting various claims over Kolawa, or combinations of references including Kolawa? PRINCIPLES OF LAW “[T]he specification is always highly relevant to the claim construction analysis. Usually ‘it is dispositive; it is the single best guide to the meaning of a disputed term.’” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1149 (Fed. Cir. 2012). “A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007) (quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)). Section 103(a) 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 subject matter pertains.’ KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 9 including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at 407, (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”) ANALYSIS CLAIM CONSTRUCTION “Specialty component” We agree with Patent Owner’s proposed construction of “specialty component.” The Specification of the ‘919 patent makes clear that a specialty component is non-fungible, or has at most a limited number of competitive alternatives (PO App. Br. 28-29; ‘919 Patent, col. 2, l. 44 – col. 3, l. 10). We further agree with Patent Owner that the term “specialty” suggests uniqueness (PO Reb. Br. 3). We find error in the Examiner’s proposed construction of the phrase as “a particular component that may be promoted and offered for sale and used in combination with other components in at least one formulation that substantially conforms to preferred characteristics” (PO App. Br. 28). We agree with Patent Owner that such a construction would read the term “specialty” out of the claim. We further agree with Patent Owner that a construction of “specialty component” as a component that is branded is erroneous, because there are a wide variety of components that are sold with name brands that are in no way “special” or “unique.” Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 10 “Technical support information” The claims recite such limitations as “technical support information for making a supplier specific formulation” (claim 1), “technical support . . . for use by a customer in selecting constituent components for making a formulation” (claim 21), “providing formulations and technical support information for making the formulations” (claim 31), “technical support information for making said formulations” (claim 41), et cetera. We need not reach the precise question whether we fully adopt the Patent Owner’s proposed construction of “technical support information” as “information of technical assistance so as to enable a customer to make or assemble at least a portion of a product” (PO App. Br. 34). The claim term “technical support information” is intertwined with the claim term “formulation” throughout the patent claims. “Formulation” is explicitly defined in the ‘919 Patent: “product specifications wherein the product is assembled from one or more components and wherein the specification impart the understanding to build at least a prototype product” (col. 5, ll. 12- 15). As discussed infra, the absence of such a “formulation” that “imparts the understanding to build at least a prototype product” in several of the references relied upon by the Examiner is sufficient to demonstrate error in many of the rejections under appeal. “Making” The Patent Owner argues for a construction of “making” as “to build or fabricate” (PO App. Br. 41). The Examiner agrees with this proposed Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 11 construction, but further contends that building or fabricating can be interpreted as building a prototype via computer modeling of a system (Ans. 7). While we agree with the Examiner that in the claimed invention, the customer does not physically possess the components to physically build the formulation (Ans. 8), and while Patent Owner conceded at oral hearing that the claims do not require that anything be physically built, we do not agree with the Examiner that “building or fabricating” may be fairly read to encompass mere computer modeling. We agree with Patent Owner that there is no embodiment in the ‘919 patent that only discusses the modeling of a formulation without also discussing technical support information that enables the customer to actually make the formulation (PO Reb. Br. 8). We further agree with Patent Owner that the ‘919 Patent discloses following the formulation (i.e., a specification that imparts the understanding to build at least a prototype product) to build the formulation from the components, and that a customer can also model the formulation using modeling software (‘919 Patent, col. 12, ll. 17-19; PO App. Br. 43). “Matching” Patent Owner asserts that “matching” be construed as “having a substantial degree of conformity” (PO App. Br. 46). While the Examiner states agreement with the construction “substantially conform to” (Ans. 9), the Examiner still argues for a lower standard of matching than Patent Owner, stating that “while you would match socks with a rather identical Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 12 pair, matching two people for compatibility would result in a much lesser degree of conformity” (Ans. 9). We do not agree with the Examiner’sdefinition of “matching.” Using the Examiner’s example, we do not agree that one must necessarily lower the degree of matching when attempting to match two people for compatibility. We agree with Patent Owner that the Specification only discloses embodiments wherein performance characteristics of matching formulations have a high degree of conformity with the characteristics or criteria preferred by the customer (PO App. Br. 47). For example, Figure 16 discloses “matching” ranging from a 92% match to a 100% match of all specified characteristics (PO Reb. Br. 8-9). The Examiner’s proposed construction is not suggested by the claims, and would accommodate almost any inconsistency between ‘performance characteristics’ of the ‘formulation’ and the characteristics or criteria specified by the customer (PO App. Br. 49). REJECTIONS REJECTIONS BASED ON HENSON, LYNCH, OR BARCK We find that the Examiner erred in rejecting claims over Henson, Lynch, and/or Barck, because none of these references disclose “technical support information for making a supplier specific formulation,” “technical support information for making a plurality of product formulations,” or the like. As discussed supra, even if we do not adopt Patent Owner’s proposed construction of “technical support information,” each of the independent Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 13 claims recites a formulation, expressly defined in the ‘919 patent as a specification that “impart[s] the understanding to build at least a prototype product” (col. 5, ll. 12-15). Taken together with our construction of “make” as “build or fabricate,” we find that neither Henson, Lynch, nor Barck discloses a specification (or other information) that imparts information to the customer sufficient for that customer to build at least a prototype product. We agree with Patent Owner that Henson provides information that enables a customer to make a decision on construction of the computer system (PO App. Br. 52). Henson, however, provides insufficient information for a customer to make or assemble at least a portion of a product (PO App. Br. 53), nor any “formulation” which includes a “product specification which imparts the understanding to build at least a prototype product” (PO App. Br. 54). Lynch also configures and identifies a system which incorporates the customer’s specifications where the identified system would be made by a manufacturer for the customer, but not made by the customer. We agree with Patent Owner that there would be no need for Lynch to supply the customer with technical assistance to enable customer to make the identified system, nor is such technical assistance provided (PO App. Br. 55-56). Lynch does not include a formulation, as defined in the ‘919 Patent -- no specification that imparts the understanding to build at least a prototype product, nor information of technical assistance so as to enable a customer to make or assemble (i.e. build or fabricate) a product (id.). Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 14 We do not agree with the Examiner that the information provided via Lynch would enable one to build the modeled product (Ans. 23). In Lynch (Figs. 5, 11), actual components are not identified and no details of interconnection are revealed (see PO Reb. Br. 12). There is no indication that Figure 5 is anything more than illustrative of the modeling and its constraints, and no indication that it is displayed to anyone (PO Reb. Br. 12). Figure 11 only reveals the physical relative locations of system components in block diagram form, with no electrical interconnections shown or displayed (PO Reb. Br. 12-13). We also agree with Patent Owner that Barck’s information concerning automobile options selected by the customer is insufficient to enable the customer to build or fabricate an automobile (PO App. Br. 59). The Examiner relies on Barck’s disclosure that it creates a virtual representation or otherwise simulates a product or prototype (Ans. 25), but we find that Barck does not provide a specification or other information that would enable the customer to build at least a prototype product. We further agree with Patent Owner that the Examiner’s application of Barck (and Henson, and Lynch) ignores the claim requirement that technical support information including formulations must be provided to customer before the customer selects any combination of components for a trial formulations (PO Reb. Br. 14). Because we find that Henson, Lynch, and Barck all fail to disclose technical support information for making a product formulation, as we construe these terms and apply the express definition of “formulation,” we do not sustain the Examiner’s rejections over these references. Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 15 REJECTIONS BASED ON KOLAWA We agree with Patent Owner that Kolawa does not offer to sell any “specialty component,” in accordance with a proper construction of the term. Kolawa does not disclose the use of any component that is non-fungible, or has a limited number of commercial alternatives, or is considered otherwise “special” or “unique.” The Examiner asserts that Kolawa teaches a specialty component by invoking Kolawa’s example of branded cream cheese (Ans. 31). We do not agree with the Examiner that a branded product is necessarily non-fungible, or otherwise “special” (see PO App. Br. 65). It is possible that Kraft Philadelphia cream cheese may ‘conform with particular qualities, standards, or specifications,’ but Kolawa confirms that branded cream cheese is not suggested to the user until after the recipe vector, including cream cheese, has been determined to be the closest match to the user’s preference vector (PO App. Br. 66). Kraft products are only recommended to the customer because Kraft is a sponsor of Kolawa’s system. We further find that Kolawa does not disclose “high degree of conformity” matching, as our claim construction requires. Kolawa provides the “closest” match to the recipe vector, which is not necessarily a match of the requisite high degree of conformity (see PO App. Br. 67). Because we find that that Kolawa discloses neither the “specialty component” recited in the claims nor “matching” having a “high degree of conformity,” we do not sustain the claim rejections based on Kolawa. Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 16 CONCLUSIONS 1. The Examiner did not apply an appropriate construction of the claim term “specialty component.” 2. In view of the ‘919 Patent’s definition of the term “formulation,” we need not reach the question whether the Examiner applied an appropriate construction of the claim term “technical support information.” 3. The Examiner did not apply an appropriate construction of the claim term “making.” 4. The Examiner did not apply an appropriate construction of the claim term “matching.” 5. The Examiner erred in rejecting various claims over Henson, or combinations of references including Henson. 6. The Examiner erred in rejecting various claims over combinations of references including Lynch. 7. The Examiner erred in rejecting various claims over Barck, or combinations of references including Barck. 8. The Examiner erred in rejecting various claims over Kolawa, or combinations of references including Kolawa. ORDER The Examiner’s rejection of claims 1-4, 6-13, 15-23, 25-35, 37-44, 46-55, 57-61, 68-70, 74-81, 88-90, and 94-100 is reversed. REVERSED Appeal 2014-003315 Reexamination Control 95/000,533 Patent No. 7,113,919 B1 17 Patent Owner: RIVERSIDE LAW LLP 300 Four Falls Corporate Center, Suite 710 300 Conshohocken State Road West Conshohocken, PA 19428 Third Party Requester: Robert A. Saltzberg MORRISON & FOERSTER LLP 425 Market Street San Francisco, CA 94105-2482