Ex Parte 7222078 et al

Patent Trial and Appeal Board

Mar 31, 2016

95000639 (P.T.A.B. Mar. 31, 2016)

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.
95/000,639 08/12/2011 7222078 13557-105161.R1 3851
70646 7590 04/01/2016
LAW OFFICE OF JONATHAN M. WALDMAN LLC
830 Welsh Road # 256
Huntingdon Valley, PA 19006
EXAMINER
WASSUM, LUKE S
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
04/01/2016 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
________________

GOOGLE INC.,
Third Party Requesters,

v.

LODSYS GROUP LLC,
Patent Owner.
____________

Appeal 2016-001634
Inter Partes Reexamination Control No. 95/000,639
Patent US 7,222,078 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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Reexamination Control 95/000,639
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SUMMARY
Background
This proceeding arose from a request for inter partes reexamination of
now-expired US Patent 7,222,078 B2, which is entitled “METHODS AND
SYSTEMS FOR GATHERING INFORMATION FROM UNITS OF A
COMMODITY ACROSS A NETWORK” (issued to Daniel H. Abelow on
May 22, 2007 from U.S. Application No. 10/734,102, filed Dec. 10, 2003)
(“the ’078 Patent”). The real party in interest of the ’078 Patent is stated to
be the Patent Owner, Lodsys Group LLC. PO App. Br. 1. The request for
inter partes reexamination, assigned Reexamination Control No. 95/000,639
(“Request”), was filed August 12, 2011 by Google Inc. (“Requester”).1
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We review the
appealed rejections for error based upon the issues identified by Appellants,
and in light of the arguments and evidence produced thereon. See Ex parte
Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm.

1 In addition to the above-noted Request, we also refer to various other
documents throughout this Opinion, including (1) the Action Closing
Prosecution, mailed September 25, 2012 (“ACP”); (2) Right of Appeal
Notice, mailed June 12, 2013 (“RAN”); (3) Patent Owner’s Appeal Brief,
filed September 23, 2013 (“PO App. Br.”); (4) Requester’s Corrected
Respondent Brief, filed November 25, 2013 (“3PR Resp. Br.); and (5) the
Examiner’s Answer, mailed April 1, 2014 (incorporating the RAN by
reference) (“Ans.”).
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The Invention and Claims
The ’078 Patent describes the invention as follows:
In an exemplary system, information is received at a central
location from different units of a commodity. The information
is generated from two-way local interactions between users of
the different units of the commodity and a user interface in the
different units of the commodity. The interactions elicit from
respective users their perceptions of the commodity.
Abstract.
Independent claim 1 is illustrative of the appealed claims:
1. A system comprising:
units of a commodity that can be used by respective users
in different locations,
a user interface, which is part of each of the units of the
commodity, configured to provide a medium for two-way local
interaction between one of the users and the corresponding unit
of the commodity, and further configured to elicit, from a user,
information about the user’s perception of the commodity,
a memory within each of the units of the commodity
capable of storing results of the two-way local interaction, the
results including elicited information about user perception of
the commodity,
a communication element associated with each of the units
of the commodity capable of carrying results of the two-way
local interaction from each of the units of the commodity to a
central location, and
a component capable of managing the interactions of the
users in different locations and collecting the results of the
interactions at the central location.

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The Adopted Rejections Appealed by Patent Owner
According to Owner (PO App. Br. 2), Claims 1–74 of the expired
’078 patent are pending. Claims 1–7, 10–16, 18, 22, 24, 25, 30–32, 38, 46–
48, 50–53, and 69–74 are subject to reexamination, while claims 8, 9, 17,
19–21, 23, 26–29, 33–37, 39–45, 49, and 54–68 are not subject to
reexamination. Of the claims subject to reexamination, claims 7, 12–15, 18,
24, and 70 have been confirmed, and claims 1–6, 10, 11, 16, 22, 25, 30–32,
38, 46–48, 50–53, 69, and 71–74 have been rejected and are appealed
(PO App. Br. 3):
Claims 1–3, 5, 6, 16, 22, 25, 30–32, 38, 46–48, 50–53, 69, 71, 72, and
74 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Kravette
(US 5,077,582; issued Dec. 31, 1991).
Claims 1–6, 10, 11, 16, 22, 25, 30–32, 38, 46–48, 50–52, 69, 71, 72,
and 74 stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Dworkin (US 4,992,940; issued Feb. 12, 1991).
Claim 73 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Dworkin.

THE KRAVETTE REJECTION
Contentions
As part of the first anticipation rejection, the Examiner finds that
Kravette teaches “units of a commodity.” More specifically, the Examiner
interprets the claim language “unit of a commodity” as “a single instance of
a product or a single use of a service.” RAN 7 (citing ACP 6–20). Based
upon this definition, the Examiner interprets the recited “individual unit of a
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commodity” as reading on a portion of Kravette’s photocopying and
monitoring billing system 50. RAN 11–18. The relevant portion of this
system is reproduced below, as annotated by Requester (3PR Resp. Br. 11):

The above annotated Figure 3 of Kravette (see 3PR Resp. Br. 11)
depicts first monitoring system 60 comprising monitoring system 40 in
combination with three copiers 52. Similarly, second monitoring system 70
comprises monitoring system 10 in combination with individual copier 52.
Owner first points out that because the appealed claims have expired,
the normal standard used during prosecution for claim construction—the
“broadest reasonable interpretation” (BRI) standard—does not apply.
PO App. Br. 5. Instead,
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Proper claim construction of an expired patent in a reexamination
proceeding requires . . . that claims should be interpreted to
preserve their validity if at all possible [per Pabst-Motoren].
However, the courts have also limited application of this maxim
to cases where, after applying the available tools of claim
construction, the claim is still ambiguous. Liebel-Flarsheim Ca.
v. Medrad Inc., 358 F.3d 898,911 (Fed. Cir. 2004).
PO App. Br. 4 (citing RAN 7); accord PO App. Br. 4–15.
Owner then argues that in the present case, an ambiguity does exist as
to how the claim language “unit of a commodity” should be construed.
[T]he Examiner’s interpretation of a single “unit of a
commodity” in the context of a product is open-ended,
unbounded, and unlimited to include any and all groupings of
commodities because, when illustrated, a line can be drawn
around such a grouping and a common label can be given to the
grouping–a perfect example of a term in isolation being given an
unreasonable interpretation inconsistent with the context of the
claims as a whole and the patent at large. In contrast, the Patent
Owner’s interpretation of a single “unit of a commodity” is
limited to only those groupings (or combinations) of other
commodities and/or component parts [that] are readily
recognizable to persons of ordinary skill in the art as being a
single “unit of a commodity” (and thus would not include those
“groupings” of commodities that a skilled artisan would not
readily perceive as a single unit).
PO App. Br. 13.
Owner continues,
Likewise, the Examiner's interpretation of a single “unit of a
commodity” in the context of a service (and specifically a
computerized service) is based on the portion visible to each of
the users (i.e., from the user’s perspective) solely for the purpose
of finding multiple services. In contrast, the Patent Owner’s
interpretation of a single “unit of a commodity” is based on the
person of ordinary skill in the relevant art at the time of the
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invention who would view the computerized system and service
it provides to users (i.e., from the provider’s perspective).
PO App. Br. 13–14.
To summarize Owner’s position, Kravette’s monitoring systems,
including systems 60 and 70, depicted above, do not constitute respective
units of a commodity because each of these systems can be construed as
being made of a group of plural commodities—monitoring system 10 and
copier(s) 52.
Analysis
We need not decide whether Kravette’s monitoring system 40, in
combination with plural stand-alone copiers 52, reasonably can be
interpreted as corresponding to a “unit of a commodity.” It is sufficient to
note that Kravette discloses units of a commodity when that claim term is
construed narrowly in the manner urged by Owner.
More specifically, monitoring system 10 is connected to only a single
copier 52. Kravette, FIG. 3. Furthermore, Kravette expressly discloses that
“[t]he monitoring system may either be attached to an existing copier or
constructed within the copier at the time of manufacture.” Kravette, col. 5,
ll. 5–7. A skilled artisan would readily perceive such a copier that possesses
an internal monitoring system as constituting “a single unit”—not a
grouping of individual commodities, and thereby satisfy Owner’s narrower
construction of “unit of commodity.” Owner presents no arguments for why
it would be unreasonable to interpret a copier possessing an internal
monitoring system as constituting a single unit of a commodity.
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Moreover, the Examiner interprets plural instances of such internal-
monitoring-system copiers as reading on the claimed plural “units of a
commodity”:
However, since it is disclosed that in one embodiment, the
monitoring system is internal to a copier, drawing Figure 3
clearly illustrates that when this embodiment of the invention is
utilized, multiple such copiers could be connected, via a
telephone line, to a central billing computer, anticipating the
claimed invention.
RAN 18; see also Kravette, Fig. 3.
Conclusion
Accordingly, Owner has not demonstrated the Examiner erred in
interpreting claim 1. We therefore sustain the Examiner’s anticipation of
claim 1 over Kravette, as well as that rejection of claims 2, 3, 5, 6, 16, 22,
25, 30–32, 38, 46–48, 50–53, 69, 71, 72, and 74, which are not argued
separately. See PO App. Br. 28.

THE DWORKIN REJECTIONS
Dworkin is directed to “an automated system [that] assists a user in
locating and purchasing goods or services sold by a plurality of vendors.
The system includes a programmed computer [that] is linked to a database.”
Dworkin, Abstract.
Contentions
Owner contends that the Examiner is interpreting the claimed plural
“units of commodity” as reading on the individual services performed by
Dworkin’s entire system. PO App. Br. 28–29. Owner argues, “[w]hether a
product or a service, it is respectfully submitted that Dworkin merely
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discloses a single instance of a product or a service and thus only a single
unit of a commodity, whereas the claims of the expired ’078 patent require
multiple units (plural) of a commodity.” PO App. Br. 28; accord id. 28–31.
Analysis
It is true that the Examiner does take the position that “the disclosed
invention [the claimed ‘commodity’] is a service, available for use by any
number of users accessing [Dworkin’s] service over a network.”
ACP (citing Dworkin col. 1, l. 63–col. 2, l. 5). And it is also true that the
Examiner further explains, “the claimed ‘unit of a commodity’ would be
embodied by a single use of the service, and therefore the claimed ‘units
[plural] of a commodity’ would be embodied by a plurality of users each
making use of the service.” ACP 46. We need not decide the
reasonableness of this position, though, because the Examiner takes
alternative positions, as well.
For example, the Examiner additionally takes the alternative position
that the plural commodities are being mapped to products—not services.
RAN 19 (adopting Requester’s position set forth on pages 20–21 of
Requester’s Respondent Brief). See also 3PR Resp. Br. 20–24 (arguing that
the claimed “units of commodity” respectively correspond to the individual
instances of Dworkin’s terminals 5). The Examiner also maps the remainder
of claim 1 based upon the rationale that each terminal 5 corresponds to a unit
of a commodity. RAN 38–40 (mapping the claimed “user interface, which
is part of each of the units of the commodity” to Dworkin’s means for
displaying to the user, a Main Menu [that] lists the major selections available
to the user” (citing Dworkin, col. 4, ll. 39-41; FIG. 3)).
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Also, a review of the prior art confirms that Dworkin expressly
discloses that the system may include multiple user terminals 5—not just a
single terminal:
Computer 1 also communicates with terminal 5. The terminal
can be at the same location as the computer, or it can be located
remotely. In the latter case, the terminal is connected to the
computer by telephone lines and modems, or their equivalents,
in a conventional manner. In the preferred embodiment, there
are many terminals, operated by many users, all connected
to central computer 1. The central computer is programmed,
using known techniques, to accommodate a large number of
users.
Dworkin col. 4, ll. 3–12 (emphasis added).
Owner does not present any arguments as to why this alternative
rationale of the Examiner is erroneous. See generally PO App. Br. (instead
arguing that Dworkin’s service does not constitute plural units of a
commodity). That is, Owner does not contend that Dworkin fails to disclose
multiple terminals 5. Nor does Owner contend that it would be unreasonable
to interpret the claimed “units of a commodity” as reading on Dworkin’s
plural terminals 5—either under a narrow interpretation of the claim
language or otherwise.
As noted above, because we do not decide the present appeal on the
Examiner’s alternative interpretation that the claimed “units of a
commodity” read on multiple uses of a single service, we need not address
Owner’s assertion (PO App. Br. 28) that Dworkin merely discloses a single
instance of a service. We likewise need not address Requester’s counter-
argument (3PR Resp. Br. 22) that “‘[i]t is well settled that the mere
duplication of parts has no patentable significance unless a new and
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unexpected result is produced.’ In re Harza, 274 F2.d 669, 774 (CCPA
1960.” We do point out, though, that the “duplication-of-parts” doctrine is
only relevant to obviousness rejections under 35 U.S.C. § 103(a). The
doctrine has no bearing on § 102 anticipation rejections.
Conclusions
Accordingly, we sustain the anticipation rejection of claim 1 over
Dworkin, as well as that rejection of claims 2–6, 10, 11, 16, 22, 25, 30–32,
38, 46–48, 50–52, 69, 71, 72, and 74, which were not argued separately.
RAN 31.
Regarding dependent claim 73, Owner does not make any separate
patentability arguments regarding the rejection of this claim. Owner instead
traverses the obviousness rejection of claim 73 for the reasons set forth in
relation to the above claims. PO App. Br. 31. Accordingly, we sustain the
rejection of claim 73 for the reasons noted above.

DECISION
The Examiner’s decision rejecting claims 1–6, 10, 11, 16, 22, 25,
30–32, 38, 46–48, 50–53, 69, and 71–74 is affirmed.

In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

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AFFIRMED

pgc

Patent Owner:

Law Office of Jonathan M. Waldman, LLC
830 Welsh Road #256
Huntingdon Valley, PA 19006

Third Party Requester:

Steptoe & Johnson, LLP
1330 Connecticut Ave. NW
Washington, DC 20036