Case: 16-1371 Document: 1-3 Page: 9 Filed: 12/29/2015 (15 of 41) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LAWRENCE B. LOCKWOOD Appeal 2015-000143 Technology Center 3900 Before ST. JOHN COURTENAY III, CAROLYN D. THOMAS, and JASON J. CHUNG, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This reexamination proceeding arose from a third-party request by a Requestor for Ex parte reexamination that was filed on September 15, 2012. Lawrence B. Lockwood (Appellant, hereinafter "Owner"), the owner of the patent under reexamination/ appeals under 35 U.S.C. 134(b) and 306 from a July 31,2013 Final Rejection of claims 8-15. The Examiner. indicates the patentability of '508 patent claims 1-7, 16, and 17 is 1 The U.S. Pat. 7,010,508 B1 involved in this reexamination appeal proceeding (hereinafter the '508 Patent) was issued to inventor Lawrence B. Lockwood on March 7, 2006.
Case: 16-1371 Document: 1-3 Page: 10 Filed: 12/29/2015 (16 of 41) confirmed. (Final Action 2). The Examiner withdrew the rejections of new claims 18-25 in the Answer (3-4). Therefore, new claims 18-25 are not before us on appeal. An oral hearing was conducted on AprilS, 2015. We have jurisdiction under 35 U.S.C. 134(b) and 306. We affirm. Invention The patent under reexamination on appeal relates to "an economical means for screening loan applications." (Col. 1, 11. 46-47.) Representative Claim Independent claim 8 is illustrative of the rejected claims on appeal: 8. An automated multimedia system for data processing for delivering information on request to at least one user, which comprises: [a] at least one computerized station; [b] means for accepting and processing an user's entry. according to backward-chaining and forward-chaining sequences, including: [ c] means for analyzing and for combining an user's entry with a set of stored data, and [ d] means, responsive to said means for analyzing and for combining, for formulating a query and outputting said query to said user; and [ e] means for delivering information to said user. (Lettering added. Contested limitation [c] lettered and emphasized.) 2
Case: 16-1371 Document: 1-3 Page: 11 Filed: 12/29/2015 (17 of 41) Rejections A. Claims 8-14 stand rejected under pre-ala 35 U.S.C. 102(b) as being anticipated by Harold E. Johnson Jr. & Piero P. Bonissone, "Expert System for Diesel Electric Locomotive Repair", Journal of Forth Application and Research, vol. 1, no. 1, pp. 7-16, published Sept. 1983 (hereinafter "Johnson"). (See Non-Final Action 2, mailed February 20, 2013). B. Claim 15 stands rejected under pre-ala 35 U.S.C. 103(a) as being unpatentable over the combined teachings and suggestions of Johnson in view of "Principles of Rule-Based Expert Systems", Advances in Computers, Academic Press Inc., N.Y., vol. 22, pp. 163-216, (Marshall C. Yovits, ed. 1983) (hereinafter "Advances In Computers"). (See Final Action 90; Non-fmal Action 2). Grouping of claims Based on Owner's arguments, we decide the appeal of the anticipation rejection of claims 8-14 on the basis of representative claim 8. See 37 C.F.R. 41.37(c)(l)(iv)(2012). We address rejected claim 15 separately, infra. Related Prior BP AI or PTAB Appeals and Proceedings 1. Ex Parte Lawrence B. Lockwood, BPAI Appeal No. 2005-2411, Application No. 08/418,772, mailed August 30, 2005. The Exatniner' s decision was reversed. 3
Case: 16-1371 Document: 1-3 Page: 12 Filed: 12/29/2015 (18 of 41) 2. Ex Parte Lawrence B. Lockwood, BPAI Appeal No. 1999-0393, Application No. 08/418,772, mailed September 25, 2000. The Exatniner's decision was affirmed-in-part. 3. Ebay Enterprise, Inc. and Ebay, Inc., Petitioners, v. Lawrence B. Lockwood, Patent Owner, US Pat. 7,010,508 B1, CBM2014-00025. The CBM proceeding was terminated on October 14, 2014, as a result of a settlement agreement between the parties. Related Litigation Due to the very large number of settled or ongoing district court trial proceedings, we incorporate herein by reference to the related litigation listed on pages 7-9 of Owner's principal Brief. Issue 1: ANALYSIS Priority of Invention Under 35 U.S.C. 120, is the '508 patent under reexamination entitled to the benefit of the May 24, 1984 filing date ofu.s. Patent 4,567,359 to Lawrence B. Lockwood (Owner)? The first page of the '508 patent discloses a priority chain back to the earliest flied US Pat. No. 4,567,359 (hereinafter the '359 patent), for which the Owner claims the benefit of the May 24, 1984 filing date, as follows: Related U.S. Application Data Continuation of application No. 08/347,270, flied on Nov. 30, 1994, now Pat. No. 6,289,319, which is a continuation of application No. 08/096,610, flied on Jul. 23, 1993, now abandoned, which is a continuation of application No. 07/752,026, flied on Aug. 29, 1991, now abandoned, which is a continuation of application No. 07/168,856, flied on Mar. 16, 1988, now abandoned, which 4
Case: 16-1371 Document: 1-3 Page: 13 Filed: 12/29/2015 (19 of 41) is a continuation of application No. 06/822,115, filed on Jan. 24, 1986, now abandoned, which is a continuation-in-part of application No. 06/613,525, filed on May 24, 1984, now Pat. No. 4,567,359. (See '508 patent, page 1). The Examiner addressed the priority issue in the Order (18-19) granting the Request, 2 and agreed with the Requester, as follows: 12. The '508 patent claims priority benefits back to application 06/613,525, hereinafter also referred to as '525 or the '525 application, filed 5/24/1984, now U.S. Patent No. 4,567,359, hereinafter also referred to as '359 or '359 patent. One of the references cited in the instant Request, Johnson, would be available as prior art under 102(a), rather than 102(b), if the claims were entitled to the benefit of the earliest priority date. The instant Request alleges, however, that the claims of the '508 patent are not entitled to this earliest date but rather are at most entitled to the filing date of U.S. Patent Application No. 06/822, 115, herein after also referred to as '115 or ' 115 CIP. See the instant Request at pages 2 and 11-21 and paragraph 10 supra. MPEP 2217 allows a Requester to point out that claims in a patent are not entitled to the benefit of an earlier priority date. The present Request, see portions cited in prior paragraph, provides such a discussion. The Request explains that "...it is clear that the only patentable feature of the claims of the '508 patent is 'processing said operator-entered information, inquiries, and orders according to backward-chaining and forward-chaining sequences.' To the extent that that concept has any support in the specification of the '508 patent, that support first appeared in the '115 CIP. In particular, p. 9, line 22-p. 10, line 2 of the ' 115 CIP specification... ". [sic] The examiner 2 See Order Granting Request for Ex Parte Reexamination, mailed December 6, 2012, pages 18-19. 5
Case: 16-1371 Document: 1-3 Page: 14 Filed: 12/29/2015 (20 of 41) agrees that '525/'359 does not appear to provide adequate support for the claims 1-17 of the '508 patent under 35 US.C. 112, so the claims are not entitled to the benefit of the priority date of that application/patent. Support for these claims, at the earliest, appears to be in CIP application 06/822,115, filed 01/24/1986. These claims 1-17 therefore will be examined in light of the 1986 filing date of the '115 CIP. (Emphasis added.) Regarding the benefit of priority, our reviewing court guides: a patent's claims are not entitled to an earlier priority date merely because the patentee claims priority. Bausch & Lomb, Inc. v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 449 (Fed.Cir.1986) (explaining that "the art must have existed as of the date of invention, presumed to be the filing date of the application until an earlier date is proved"); see also In re Chu, 66 F.3d 292, 297 (Fed.Cir.1995) (holding that a reference was properly considered prior art because the earlier filed application did not support the patent's claims, thereby precluding reliance on its earlier priority date). Rather, for a patent's claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. 120. Inre NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011). 3 As further indicated by the court in NTP, the burden lies with the patent owner to demonstrate for each claim on appeal that each patent or application in the asserted chain of priority claims meet the requirements of 3 We note NTP was cited by Owner in footnote 23 on page 21 of the Appeal Brief. 6
Case: 16-1371 Document: 1-3 Page: 15 Filed: 12/29/2015 (21 of 41) 35 U.S. C. 120. In this reexamination proceeding, we fmd the Owner has not shown that each ofthe '508 patent claims 8-15 are entitled to the benefit of the May 24, 1984 filing date of the '359 patent. In particular, we fmd Owner's proffered Exhibit B (see also App. Br. 11-13) does not demonstrate that each patent or patent application in the chain of priority from the '508 patent under reexamination meets each of the multiple requirements clearly articulated by the court in NTP, as pertaining to each of claims 8-15 before us on appeal: Under 120, a patent is entitled to the priority date of an earlier filed application if ( 1) the written description of the earlier filed application discloses the invention claimed in the later filed application sufficient to satisfy the requirements of 112; (2) the applications have at least one common inventor; (3) the later application is filed before the issuance or abandonment of the earlier filed application; and ( 4) the later application contains a reference to the earlier filed application. In addition, if the later filed application claims priority through the heredity of a chain of applications, each application in the chain must satisfy 112. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997). NTP, Inc., 654 F.3d at 1277 (Fed. Cir. 2011). Further, we note Owner was the named Appellant in Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997), as cited above by the court in NTP. 4 In Lockwood, the Federal Circuit reviewed the district court fmdings 4 As named Appellant, Mr. Lockwood (Owner) is presumed to have had actual notice of his own appeal to the Federal Circuit and at least 7
Case: 16-1371 Document: 1-3 Page: 16 Filed: 12/29/2015 (22 of 41) regarding a different but overlapping chain of priority from US Patent 5,309,355 (to Lockwood) back to the same '359 patent for which Owner of the '508 patent (now under reexamination) claims the benefit of the '359 patent filing date of_may 24, 1984. In Lockwood, the Federal Circuit upheld the district comi in fmding Lockwood's asserted chain of priority was defective, and further affirn1ed the lower court in holding that the '359 patent was invalid as being obvious over a prior art '631 patent and the American Airlines SABRE reservation system, which was in public use in the 1960s and 1970s. See Lockwood, 107 F.3d 1569~72 (Fed. Cir. 1997). The Federal Circuit additionally affirmed "[t]he district court correctly held that the '355 patent was invalid as anticipated by the '359 patent." (Id. at 1572). Although we fmd the multi-prong test in NTP, which places the burden on the patentee, dispositive for purposes of considering the priority issue in this reexamination appeal, we nevertheless fmd the Federal Circuit's opinion in Lockwood, 107 F.3d 1569-72, raises substantial and material questions regarding the overlapping asserted chain of priority we consider here. We note the invalid '359 patent and abandoned CIP application 06/822,115 (filed Jan. 24, 1986) are in the same chain of priority found defective by the Federal Circuit in Lockwood (i.e., the chain of priority from constructive notice of the courts' decision in Lockwood v. Am. Airlines, Inc., 107 F.3d 1565 (Fed. Cir. 1997). Owner is reminded of the affirmative duty to disclose all information material to patentability under 37 C.F.R. 1.56. 8
Case: 16-1371 Document: 1-3 Page: 17 Filed: 12/29/2015 (23 of 41) US Pat. 5,309,355 (to Lockwood) back to the same '359 patent for which Owner of the '508 patent (now under reexamination) claims the benefit of the '359 patent filing date of May 24, 1984). Because the multi-prong test articulated by the court in NTP is dispositive here, and because litigationrecords revealing the details of the district court proceedings considered by the court in Lockwood are not of record here, we need not consider the Federal Circuit's 1997 Lockwood decision to decide the issue of priority in this appeal. However, we bring the related prosecution history in Lockwood to the attention of our reviewing court in the event of an appeal by the Owner regarding our Decision. 5 To the extent that the Federal Circuit's decision regarding priority of invention in Lockwood may be controlling in this reexamination appeal regarding the asserted chain of priority, or may create estoppel for the Owner, our decision denying the Owner the benefit of 5 To the extent the '359 patent was held invalid on grounds of prior public use, we note the subject matter ofany patent held invalid by a federal court on grounds of prior public use would appear to lapse into the public domain, where such subject matter is free to use by anyone, and belongs to no one. We note the court in Bernhardt, L.L.C. v. Collezione Europa USA, Inc., 386 F.3d 1371, 1381 (Fed. Cir. 2004), stressed that it is necessary to analyze the evidence of public use in the context of policies that underlie the public use and on sale bar, that include "discouraging removal of inventions from the public domain that the public justifiablybelieves are freely available, prohibiting an extension of the period for exploiting an invention, and favoring prompt and widespread disclosure of inventions." (Internal quotations omitted, emphasis added). We leave further consideration of this issue to the Federal Circuit in the event our Decision is appealed. 9
Case: 16-1371 Document: 1-3 Page: 18 Filed: 12/29/2015 (24 of 41) U.S. Patent 7,010,508 Bl priority to the '359 patent filing date is in accord with the court's decision in Lockwood, which considered an overlapping chain of priority. For the aforementioned reasons, on this record, we are not persuaded the Examiner erred in denying the Owner's claim to the benefit of the '359 patent's May 24, 1984 filing date under 35 U.S.C. 120. (App. Br. 12). We fmd the Johnson reference of record is available as a pre-ala 102(b) reference. We note an anticipation rejection under 102(b) is a statutory bar that cannot be overcome with Rule 1.131 declarations and/ or evidence, which we have considered, but dismiss as moot. See Final Rejection (3), mailed July 31,2013. Rejection A of Representative Claim 8 Issue 2: Under 102(b), did the Examiner err by fmding Johnson discloses the following contested limitation: [ c] means for analyzing and for combining an user's entry with a set of stored data, within the meaning of representative claim 8? (Lettering and emphasis added). Regarding the anticipation rejection of claim 8 over Johnson, Owner focuses on the claim term "stored data" and contends: the Board also should reverse the Examiner's decision because Johnson, even if deemed a proper reference, does not teach at least "stored data," as properly construed, e.g., data accessed from a remote location. The Examiner's claim construction is legally deficient because it is incomplete and inconsistent with the specification and prosecution history. Using the proper construction, Johnson's station completely lacks bidirectional 10
Case: 16-1371 Document: 1-3 Page: 19 Filed: 12/29/2015 (25 of 41) communication capabilities because it does not access data from a remote location (such as a remote fmancial institution or remote credit rating service). (App. Br. 14, emphasis added, footnote references omitted.) In support, Owner urges: (b) "Patent Owner's construction is consistent with the prior BP AI decisions during original prosecution" (App. Br. 15) and, (c) "Johnson discloses a stand-alone computer system that cannot access data from a remote location." (App. Br. 16.) Owner particularly contends: FIG. 1 of Johnson (reproduced below) is a block diagram of Johnson's expert system. Viewing FIG. 1, a PHOSITA of expert systems would understand that the elements of the expert system correspond to elements of a processor of a computer system. The "backward interpreter" and "forward interpreter" correspond to the instruction execution unit; the "rules" correspond to the machine instructions to be executed by the execution unit (interpreters); and "new fact" and "existing facts" correspond to the data the machine instructions (rules) operate upon. A PHOSITA would not understand the "rules" of Johnson to be "data," and especially not "stored data" as it is described throughout the disclosure of the '508 patent, i.e., as data accessed from a remote computer system. (App. Br. 34.) In the Final Rejection (30), which the Examiner incorporated by reference into the Answer (3), the Examiner reads the contested "set of stored data" recited in claim 8, on the meta-rules described in Johnson (e.g., Figs. 1-2, pp. 8-9): Therefore Johnson also teaches the ability to automatically and onsite, i.e. by the computerized station discussed supra (e.g. PDP 11/23 of field prototype unit), analyze (i.e. engage in "analysis" of) and combine a user's entry (e.g., initial facts) with 11
Case: 16-1371 Document: 1-3 Page: 20 Filed: 12/29/2015 (26 of 41) a set of stored data (e.g., HYPOTHESES, rules) (e.g., "A fixed sequence of questions is used to gather the initial facts about... symptoms... A set of meta-rules... retrieves from the various knowledge spaces the subsets of rules associated with all the hypotheses that could be relevant to the initial symptoms. This collection of hypotheses constitutes a preliminary diagnosis", "The BACKWARD INTERPRETER then tries to evaluate each hypothesis with the given set of rules and current facts").. Claim Construction During patent examination, a claim is given its broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In ream. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, such an interpretation must not import limitations from the Specification into the claims. "[A ]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confming the claims to those embodiments... claims 1nay embrace 'different subject matter than is illustrated in the spec~fic embodiments in the specification.'" Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (citations and internal quotation marks omitted). Although not specifically before us on appeal, we further note 35 U.S.C. 112, second paragraph, "puts the burden of precise claim drafting squarely on the applicant." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Had the inventor "who was responsible for drafting and prosecuting the patent, intended something different, it could have prevented 12
Case: 16-1371 Document: 1-3 Page: 21 Filed: 12/29/2015 (27 of 41) U.S. Patent 7,010,508 Bl this result through clearer drafting." Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 951 (Fed. Cir. 1993). 6 Although a patent applicant is entitled to be his or her own lexicographer of patent claim terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such definitions in the Specification with sufficient clarity to provide a person of ordinary skill in the art with clear and precise notice of the meaning that is to be construed. See also In re Paulsen, 30 6 During reexamination before the USPTO, we decline to consider the prosecution history (as a court would in patent infringement litigation) for purposes of claim construction because reexamination is de novo examination without deference to the previous examination which determined patentability in the first instance. See 35 U.S.C. 305. Cf with prosecution history estoppel which prevents a patentee from recapturing through the doctrine of equivalents the subject matter that the applicant surrendered during prosecution. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 734 (2002). Cf also with the doctrine of prosecution disclaimer: "[W]here the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender." Omega Engineering, Inc., v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003). "Claims may not be construed one way in order to obtain their allowance and in a different way against accused infringers." Southwall Technologies, Inc. v. CardinaliG Co., 54 F.3d 1570~ 1576 (Fed. Cir. 1995) (citation omitted). Thus, we fmd statements by both Owner and the Examiner that purport to give deference to the prosecution history for purposes of claim construction during reexamination are misplaced. See, e.g., App. Br. 14-15; Final Rejection 14. However, we note that prosecution history is considered by the USPTO for the purpose of determining attempted recapture of surrendered subject matter in reissue examinations. See, e.g., In re Clement, 131 F.3d 1464 (Fed. Cir. 1997). 13
Case: 16-1371 Document: 1-3 Page: 22 Filed: 12/29/2015 (28 of 41) U.S. Patent 7,010,508 Bl F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to defme the specific tenns used to describe the invention, this must be done with reasonable clarity, deliberateness, and precision; where an inventor chooses to give terms uncommon meanings, the inventor must set out any uncommon defmition in some manner within the patent disclosure so as to give one of ordinary skill in the art notice of the change). Here, we fmd no defmition for the contested "set of stored data" in the claim, or in the '508 patent Specification. (Claim 8). Rather, we fmd the '508 patent merely describes non-limiting examples of such data. (See e.g., col. 4, 11.22-25). Moreover, during the oral hearing held on April 8, 2015, Owner's representative acknowledged there was no defmition in the '508 patent under reexamination for the contested "stored data" claim term. Because "applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). We decline Owner's repeated urging to read the unclaimed adjective "remote" into the cla:ij.n. We broadly but reasonably interpret the contested claim 8 limitation ("a set of stored data"), as reading on any type of data in any location (e.g., local data, remote data, or data located somewhere in between). We fmd no language in independent claim 8 which precludes the Examiner's broader reading of the contested "a set of stored data" (claim 8) on the meta-rules in Johnson. See "Final Rejection" (30). We have considered all of Owner's arguments and evidence presented. However, in light of the controlling case law cited above, and by the preponderance of evidence, we are not persuaded the Examiner's broader ) ) 14
Case: 16-1371 Document: 1-3 Page: 23 Filed: 12/29/2015 (29 of 41) Appeal 2015-000143 U.S. Patent 7,010,508 Bl interpretation is overly broad, unreasonable, or inconsistent with Owner's '508 patent Specification. For these reasons, on this record, we are not persuaded the Examiner erred regarding the 102(b) rejection A of representative claim 8. Accordingly, we sustain the Examiner's finding of anticipation regarding independent claim 8. Grouped claims 9-14 fall with claim 8. See 37 C.F.R. 41.37(c)(l)(iv)(2012). RejectionB ofclaim 15 under 103 Owner advances no separate arguments for dependent claim 15. Arguments not made are considered waived. See 37 C.F.R. 41.37(c)(l)(iv)(2012). Therefore, on this record, we are not persuaded the Examiner erred regarding rejection B of claim 15. Accordingly, we sustain the rejection of claim 15. 102(b). DECISION We affirm the Examiner's decision rejecting claims 8-14 under We affirm the Examiner's decision rejecting claim 15 under 103. No time period for taking any subsequent action in connection with this appeal mjly be extended under 37 C.F.R. ~.136(a). 41.50(f). AFFIRMED See 37 C.F.R. 15
Case: 16-1371 Document: 1-3 Page: 24 Filed: 12/29/2015 (30 of 41) U.S. Patent 7,010,508 Bl Patent Owner: Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 Third Part Requestor: Schwegman Lundberg & Woessner/Reexams PO Box2938 Minneapolis, MN 55402 ACP 16