Ex Parte 6875021 et alDownload PDFPatent Trial and Appeal BoardMay 28, 201595001237 (P.T.A.B. May. 28, 2015) Copy Citation 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. 95/001,237 09/22/2009 6875021 NINT-001/00US 144575-2016 9171 20210 7590 05/28/2015 DAVIS & BUJOLD, P.L.L.C. 112 PLEASANT STREET CONCORD, NH 03301 EXAMINER WOOD, WILLIAM H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/28/2015 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 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. 90/009,520 08/28/2009 6875021 ADC021 9714 20210 7590 05/28/2015 DAVIS & BUJOLD, P.L.L.C. 112 PLEASANT STREET CONCORD, NH 03301 EXAMINER WOOD, WILLIAM H ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/28/2015 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 ______________ ADC TECHNOLOGY, INC., Patent Owner, Appellant, and Cross-Respondent v. NINTENDO OF NORTH AMERICA, INC., SONY COMPUTER ENTERTAINMENT AMERICA, INC., AND MICROSOFT CORPORATION,1 Third Party Requesters, Cross-Appellants, and Respondents ______________ Appeal 2014-0091322 Reexaminations 95/001,237 and 90/009,520 (merged) United States Patent 6,875,021 B2 (expired)3 Technology Center 3900 ______________ 1 During the pendency of these reexamination proceedings, Sony Computer Entertainment America, Inc. merged with Sony Computer Entertainment America LLC. Third Party Requestors’ Cross Appeal Brief (“Req. Appeal Br.”), filed on September 6, 2013, at 2 n.1. 2 This appeal is related to pending PTAB Appeals 2014-009133 and 2014- 009134 (hereinafter “’9133 Appeal” and “’9134 Appeal”). Decisions on Appeal in all three appeals are being mailed concurrently. 3 This patent (hereinafter “’021 patent”) issued to Takeya Okamoto on April 5, 2005, based on Application 10/713,713, filed on November 14, 2003. The ’021 patent is the seventh in a chain of U.S. applications beginning with Application 08/232,862 (now Patent 5,489,103), filed on April 25, 1994. ’021 patent 1:5–17. The ’021 patent expired on April 25, 2014. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 2 Before JOHN C. MARTIN, STEPHEN C. SIU, and IRVIN E. BRANCH, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Patent Owner appeals the Examiner’s rejections of original patent claims 1–11. Patent Owner’s Appeal Brief (hereinafter “PO Appeal Br.”), filed on September 12, 2013, at 4. Third Party Requesters (“Requesters”) filed a cross-appeal challenging the Examiner’s determination not to reject claims 1, 5, 8, and 11 on an additional ground. Req. Appeal Br. 3 (III.B). We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315. We AFFIRM the Examiner’s decision that claims 1–11 are unpatentable over the prior art. We also AFFIRM the Examiner’s decision not to enter the proposed rejection that is the subject of Requesters’ appeal. I. STATEMENT OF THE CASE A. Related Litigation and Reexamination Appeals The ’021 patent involved in this Appeal (hereinafter “’9132 Appeal”) and the patents involved in the related ’9133 and ’9134 Appeals are the subjects of stayed litigation styled ADC Technology, Inc. v. Microsoft Corp., et al., No. 2:08-CV-01579-RSM (W.D. Wash.). PO Appeal Br. 3; Req. Appeal Br. 3. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 3 The ’021 patent is the seventh in a chain of seven U.S. patents. Specifically, the ’021 patent identifies itself as: a Divisional of U.S. application Ser. No. 10/307,886 filed on Dec. 2, 2002, now U.S. Pat. No. 6,702,585 B2 [hereinafter “’585 patent”], which is a Divisional of U.S. patent application Ser. No. 09/733,541, filed Dec. 8, 2000, now U.S. Pat. No. 6,488,508 B2 [“’508 patent”], which is a Divisional of U.S. patent application Ser. No. 09/109,784, filed Jul. 2, 1998, now U.S. Pat. No. 6,193,520 B1 [“’520 patent”], which is a Continuation-In-Part of U.S. patent application Ser. No. 08/642,560, filed May 3, 1996, now U.S. Pat. No. 5,775,995 [“’995 patent”], which is a Divisional of U.S. patent application Ser. No. 08/555,400, f[il]ed Nov. 9, 1995, now U.S. Pat. No. 5,735,744, which is a Continuation-In[-]Part of U.S. patent application Ser. No. 08/232,862, filed Apr. 25, 1994, now U.S. Pat. No. 5,489,103 [“’103 patent”]. ’021 patent 1:5–17 (emphasis added). The patents in the U.S. patent chain claim foreign priority based on Japanese patent document No. 5-108303, filed on May 10, 1993. As explained below, the Examiner has found that the ’021 patent claims are entitled to benefit of this foreign filing date and thus predate Roskowski, which is asserted as a reference by Requesters.4 The ’585 patent, which is the parent of ’021 patent, is involved in merged ex parte and inter partes reexaminations 90/009,522 and 95/001,236, which are the subjects of the ’9134 Appeal. 4 Roskowski, et al., U.S. Patent 5,624,316, issued on April 29, 1997, based on an application filed on June 6, 1994. Request Ex. K. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 4 The ’508 patent, which is the grandparent of the ’021 patent, is involved in merged ex parte and inter partes reexaminations 90/009,521 and 95/001,234, which are the subjects of the ’9133 Appeal. The ’520 patent (i.e., the great-grandparent of the ’021 patent) was involved in merged ex parte reexaminations 90/009,524 and 90/010,666, which are the subject of a January 11, 2013, “Decision on Appeal” in BPAI Appeal 2012-012256, affirming various rejections.5 The affected claims were canceled by Ex Parte Reexamination Certificate US 6,193,520 C1, which issued on July 23, 2014. The ’995 patent (i.e., the great-great-grandparent of the ’021 patent) was involved in merged ex parte reexaminations 90/009,523 and 90/010,663, which were the subject of a November 10, 2011, “Decision on Appeal” in BPAI Appeal 2012-000193, reversing all rejections. Ex Parte Reexamination Certificate 5,775,995 C1 issued on April 24, 2012. The ’021, ’585, and ’508 patents, which are the subjects of this appeal and the ’9133 and ’9134 Appeals, respectively, expired on April 25, 2014. B. These Merged Reexamination Proceedings The original ’021 patent claims consist of claims 1–11, of which claims 1, 5, and 8 are independent claims. 5 Adhered to in a Decision on Request for Rehearing, mailed on July 30, 2013. Also, an “Errata” was mailed on January 2, 2014. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 5 As explained in greater detail below, original claims 1–11 were amended and supplemented by new claims during an initial portion of the merged proceedings. However, original claims 1–11 have been reinstated and all of the new claims canceled, thereby leaving only original claims 1– 11 for our consideration. Ex parte reexamination of claims 1, 5, 8, and 11 was requested by Patent Owner in a July 10, 2009, “Request for Reexamination of USP 6,875,021.” Inter partes reexamination of claims 1–11 was requested in a “Request for Inter Partes Reexamination of U.S. Patent 6,875,021” (hereinafter “Request”), filed by Requesters on September 22, 2009. The Examiner has found that the ’021 patent claims are entitled to benefit of the May 10, 1993, date of Japanese patent document 5-108303. Order Granting/Denying Request For Inter Partes Reexamination (hereinafter “Inter partes Order”), mailed on December 18, 2009, at 5. The ex parte and inter partes proceedings were merged by a “Decision, Sua Sponte, to Merge Reexamination Proceedings,” mailed on April 14, 2010. The papers discussed below are in the file of the inter partes proceeding. The rejections that have been proposed by Requesters or initiated by the Examiner during these merged reexamination proceedings are identified as grounds A–BM, which arose in the manner described below. The rejections of original claims 1–11 proposed in the Request (at pages i–iv) are identified as grounds A–V. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 6 A first Non-Final Office Action, mailed on August 26, 2010, adopted (at pages 6–9, 13, and 14) only grounds A–H, J, and S and declined (at page 10) to adopt ground K (anticipation by Roskowski) because “Roskowski fails to overcome Okamoto’s (USPN 6,875,021) priority date and is therefore not applicable as prior art.” Patent Owner responded by amending each of the independent claims (namely, claims 1, 5, and 8) and adding new claims 12–27. Amendment and Response (hereinafter “PO Sept. 2010 Resp.”), filed on September 28, 2010, at 2–6. Requesters responded by proposing new grounds A–N of rejection of the amended and new claims. Third Party Requestors’ Comments Subsequent to Patent Owner’s Response Regarding Inter Partes Reexamination of U.S. Patent No. 6,875,021 (hereinafter “Req. Oct. 2010 Comments”), filed on October 25, 2010.6 These proposed new grounds A–N were redesignated as grounds W–AJ by the Examiner in a first Action Closing Prosecution (“ACP”), mailed on January 18, 2011, at 2. Following a first Right of Appeal Notice (“RAN”), mailed on April 4, 2011, and the filing of appeal and respondent briefs on July 18 and August 18, 2011, the Examiner issued a second Non-Final Office Action (hereinafter “June 2012 NF Action”), mailed on June 4, 2012. The 6 An accompanying October 22, 2010, “Declaration of Dr. Michael Zyda” is not relied on in either of Requesters’ briefs and thus will be given no further consideration. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 7 Examiner (at pages 26–29) entered proposed grounds of rejection AG–AJ of the amended and new claims and (at pages 29–30) entered new Examiner- initiated rejections identified as grounds AK–AM. In a July 11, 2012, “Response to Office Action,” Patent Owner reinstated (at pages 2–4) original claims 1–11 and replaced (at pages 4–6) previously entered new claims 12–27 with a different set of new claims 12–31. Requesters on August 6, 2012, filed “Third-Party Requesters’ Comments Subsequent to Patent Owner’s Response Under 37 C.F.R. § 1.947” (“Req. Aug. 2012 Comments”), which: (1) requested (at page 24 sec. III.A) reinstatement of withdrawn grounds A–H, J, and S (listed in a table) (later redesignated by the Examiner as AN–AW); (2) proposed (at page 25–27, secs. III.B–III.E) new rejections that the Examiner later designated as grounds AX–BA (of which ground AX is for anticipation by Roskowski); and (3) proposed (at pages 27–48) additional rejections identified as grounds BB–BM. In a second ACP, mailed on March 5, 2013, the Examiner: (i) reinstated (at pages 8–14) previously withdrawn grounds A–H, J, and S (redesignating them as grounds AN–AW), (ii) repeated grounds AG–AJ (id. at 7), and (iii) adopted (at pages 16–20) grounds BB–BG and BJ–BM. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 8 Patent Owner’s April 9, 2013, “Response to Office Action,” re- presented original claims 1–11 and omitted (thereby effectively proposing to cancel) previously added new claims 12–31. In a second RAN (hereinafter “May 2013 RAN”), mailed May 24, 2013, the Examiner: (1) approved (at page 1) entry of Patent Owner’s proposed amendment and noted (id. at 1, box 2) the resulting cancelation of new claims 12–31; (2) maintained (at pages 8–16) the rejections of original claims 1–11 on only grounds AG–AJ, AN–AW, BB, and BE; and (3) repeated (at pages 14–15) the decision not to adopt proposed ground AX (anticipation by Roskowski). The Examiner’s Answer, which incorporates the RAN by reference, was mailed on March 5, 2014. “Patent Owner’s Rebuttal Brief” (“PO Reb. Br.”) was filed on April 7, 2014. The ’021 patent expired on April 25, 2014. C. The Rejections Entered by the Examiner The entered rejections that are the subject of Patent Owner’s appeal are set forth in the following tables: Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 9 Entered Grounds Under 35 U.S.C. § 102 Ground Reference Claims May 2013 RAN page AN Rhoades7 1–4 and 8–10 9 AO Griswold8 1–11 9 AP Hornbuckle9 1–11 10 AQ Shear10 1–11 11 AR Thacher11 1–11 11 AS Matsuda12 1 and 4–11 12 AT Oseki13 1 and 4–11 12 AU Kato14 1 and 4–11 13 AV Wiedemer15 1–3, 5, 6, 8, 9, and 11 13 7 Rhoades U.S. Patent 5,181,107, which issued on January 19, 1993. Request Ex. A. 8 Griswold U.S. Patent 5,940,504, issued on August 17, 1999. Request Ex. B. 9 Hornbuckle U.S. Patent 5,497,479, issued on March 5, 1996. Request Ex. C. 10 Shear U.S. Patent 5,410,598, issued on April 25, 1995. Request Ex. D. 11 Thacher U.S. Patent 5,083,271, issued on January 21, 1992. Request Ex. E. 12 Matsuda, Japanese Patent Publication H3-149693, published on June 26, 1991. Request Ex. F. Our understanding of Matsuda is based on the translation provided by Requesters. Id. 13 Oseki, Japanese Laid-Open Patent Application 4-158441, published on June 1, 1992. Request Ex. G. Our understanding of Oseki is based on the translation provided by Requesters. Id. 14 Kato, Japanese Laid-Open Application 2-113463, published on January 14, 1992. Request Ex. H. Our understanding of Kato is based on the translation provided by Requesters. Id. 15 Wiedemer, U.S. Patent 4,905,280, issued on February 27, 1990. Request Ex. J. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 10 Entered Grounds Under 35 U.S.C. § 103(a) Ground References Claims June 2012 NF Action page May 2013 RAN page AG Hornbuckle + Tashiro16 1–5 and 8–11 26 8 AH Matsuda17 + Stokey18 5–7 27 8 AI Kato + Stokey 5–7 27 8 AJ Kato + Dobrow19 5–7 28 8 AW Wiedemer + Suzuki20 4, 7, and 10 N/A 14 BB Matsuda + Tsumura21 1–11 N/A 16 BE Hornbuckle + Tsumura 1–11 N/A 17 16 Tashiro, et al., U.S. Patent 4,998,199, issued on March 5, 1991. Req. Oct. 2010 Comments Ex. C. 17 Matsuda, Japanese Laid-Open Application H3-149693, published on June 26, 1991. Request Ex. F. 18 Nancy L. Stokey, Intertemporal Price Discrimination, The Quarterly Journal of Economics 355-71 (Aug. 1979). Req. Oct. 2010 Comments Ex. E. 19 Megumi Komiya & Barry Litman, The Economics of the Prerecorded Videocassette Industry, in Social and Cultural Aspects of VCR Use 25-44 (Julia R. Dobrow ed., Lawrence Erlbaum Associates, Inc. 1990). Req. Oct. 2010 Comments Ex. F. 20 Suzuki, U.S. Patent 5,157,643, issued on October 20, 1992. Req. Oct. 2010 Comments Ex. G. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 11 D. The Appealed Proposed Rejection Not Adopted by the Examiner The sole nonadopted rejection that is the subject of Requesters’ appeal is the proposed rejection of claims 1, 5, 8, and 11 under 35 U.S.C. § 102(e) for anticipation by Roskowski (Ground AX). Req. Appeal Br. 7. As noted above, the Examiner declined to adopt this proposed rejection, finding that the claims are entitled to benefit of May 10, 1993, Japanese priority date. E. The Subject Matter Described in the ’021, ’585, ’508, and ’520 Patents The claims at issue in this appeal and the related ’9133 and ’9134 Appeal are directed to common subject matter described in the ’021, ’585, ’508, and ’520 patents, which are related to each other as divisionals in the above-identified chain of U.S. patents. The claimed invention relates to “an interactive communication system for transmitting video game and karaoke software from a host facility to communication terminal devices.” ’021 patent 1:21–23. The principal issue in this appeal is whether Patent Owner is correct to argue that the claim phrase “transmitting the program, the data, or the combination of the program and data” (claims 1, 5, and 8) must be given a conjunctive interpretation, i.e., as requiring an ability to separately transmit each of a program, data, and a combination of a program and data.22 PO 21 Tsumura, U.S. Patent 5,547,202, issued on August 20, 1996. Request Ex. M. 22 All quotations herein of claim language are based on the Claims Appendix, PO Appeal Br. 26–28. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 12 Appeal Br. 10–12. The Examiner instead agrees with Requesters that the claim language properly may be given a disjunctive interpretation, i.e., as requiring an ability to transmit at least one of a program, data, and a combination of a program and data. May 2013 RAN 25; Req. Resp’t Br. 4. As explained in greater detail below, Patent Owner more particularly appears to be of the view that the claim language requires an ability to selectively transmit any of (i) an executing program that is unaccompanied by any data, (ii) data that is unaccompanied by any executing program, or (iii) a combination of an executing program and data. We do not agree with this interpretation. The ’021 patent does not define either of the terms “program” and “data,” which are used in the ‘’021 patent in the various ways discussed below. We begin our discussion with Figures 1, 2, and 6, which appear in all seven of the patents in the U.S. patent chain.23 For the following reasons, we agree with the Examiner that the term “game data’ as used in Figures 2 and 6 refers to the combination of a game executing program and data for use by the game executing program. Figure 1 is reproduced below. 23 The ’021, ’585, ’508, and ’520 patents include Figures 1–14, of which only Figures 1–11 appear in the third-filed ’995 patent and second-filed patent 5,735,744. Only Figures 1–7 appear in the first-filed ’103 patent. Figures 2 and 6 in the ’021, ’585, ’508, and ’520 patents show fee-charging features that do not appear these figures in the earlier patents. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 13 Figure 1 is a block diagram of a communication terminal device according to the invention. ’021 patent 3:46–47. A personal communicator 1 includes, inter alia, a memory 8 and a terminal modem 3 that is connected to transmission paths 200. Id. at 4:61–63; 5:1–4. Figure 2 is reproduced below. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 14 Figure 2 is a block diagram of a communication system that includes the personal communicator 1 shown in Figure 1. Id. at 4:39–42. A host facility 100 has “a game data base 101, karaoke data base 103 and other data base 105” and also has a “game data transmitter 111, karaoke data transmitter 113 and other data transmitter 116” for retrieving data from the corresponding data base and transmit them (to personal communicator 1). Id. at 4:44–47. Figure 6, which is reproduced below, describes the operation of the host facility and personal communicator depicted in Figures 1 and 2. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 15 Specifically, figure 6 is “a flowchart of the process to be effected when playing a game is requested at the communication terminal device.” Id. at 3:57–59. At step S1100, “game request data” (i.e., data representing a request to play a game) are generated and include the identification number of the calling personal communicator 1 and the desired game number. Id. at 6:20–23. At step S1110, the generated game request data are sent to host facility 100. Id. at 6:23–24. Subsequently, “game data” corresponding to the request are retrieved from the game data base 101 and sent to the corresponding personal communicator. Id. at 6:25–31. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 16 The Examiner, referring to the third-filed, ’995 patent in the patent chain, finds that the term “game data” as used in Figures 2 and 6 refers to a game executing program and data for use by the game executing program: [T]he 5,775,995 patent . . . uses the phrase “game data” to refer to both the game program and the data on which the program operates (column 5, lines 49-60; also column 6, lines 1-56; a game program must include data from some source in order to function, the disclosure of a game is disclosure of the game and the data operated on by that game; memory 8 is storing both the game and the game data). May 2013 RAN 15. Patent Owner does not challenge this finding by the Examiner, which we find to be a reasonable one. For reasons like those given above, we further find that the term “karaoke data” as used in Figure 2 includes a karaoke execution program and data for use by the karaoke executing program. Patent Owner does not contend otherwise. In contrast to the above-discussed terms “game data” and “karaoke data,” the following passage, which appears in all of the patents in the U.S. patent chain, uses the term “advanced map data” to refer to data that are transmitted without being accompanied by an executing program: Map data of a role-playing game may be divided according to the progress degree of the story and the divided map data be sold separately. When the game progresses and the player wishes to play on a more advanced map data, the player purchases and downloads the advanced map data. In this case, arrangement is provided such that the player cannot purchase the advanced map data until the “capacity” or the progress Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 17 degree of the characters in the game reaches a predetermined degree or level. ’021 patent 8:34–42. Although the above-quoted passage does not include the term “program,” Patent Owner reads the claim term “program” on the originally purchased game and reads the claim term “data” on the “more advanced map data”/“advanced map data”: “[T]he '021 Patent states that when the game (e.g., program) progresses and the player wishes to play on a more advanced map data (e.g., data), the player can purchase and download the advanced map data (e.g., data).” PO Appeal Br. 11. To the extent Patent Owner is suggesting that the originally purchased game consists of a game executing program that is unaccompanied by any data, we are not persuaded. As correctly pointed out by Requesters, “[i]n this example, the originally purchased game must include some map data such that the player can progress to a predetermined level to purchase ‘advanced’ map data.” Req. Resp’t Br. 11. Apart from being recited in the claims, the only mention in the ’021 patent of transmitting a “combination” of a program and data is in the Abstract and in the first paragraph (reproduced below) of the “Detailed Description of the Preferred Embodiment,” which describes (i) transmitting a “combination” of a “program” and “data” and (ii) gives as examples “transmitting a karaoke executing program and the data indicative of karaoke music to be played, or a set of a word processing program and the data indicative of document examples”: Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 18 In the embodiment of the invention, data, a program, or a combination of the two is transmitted from a host facility to a communicator as a communication terminal device. The data can be game data for playing games, karaoke data for playing karaoke music, image data for displaying static images like still pictures or dynamic images like movies, audio data for reproducing sound or playing music, character data for composing documents, and the like. The program includes a large-scale program, such as a program for word processing, a program for computing with a spread sheet, or a program for communication, and a plug-in-program to be incorporated in a main program. Transmitting a combination of the program and data means, for instance, transmitting a karaoke executing program and the data indicative of karaoke music to be played, or a set of a word processing program and the data indicative of document examples. ’021 patent 4:16–31 (emphasis added) (hereinafter “Detailed Description first paragraph”). This Detailed Description first paragraph initially appeared in the fourth-filed, ’520 patent. The Abstract recites: “A communication system is proposed for transmitting at least one of the data, the program, and a combination of them from a host facility to a communicator such as a communication terminal device.” E. The Claims on Appeal Claim 1, which is representative of the independent claims, reads as follows: 1. (Original) A software distributing system for transmitting at least one of the program, the data, and a combination of the program and data stored in a database Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 19 provided in a distribution center to a requested communication terminal device via communication lines; storing the transmitted program, the data, and the combination of the program and data in a memory provided in the communication terminal device; and enabling execution of the program or data processing according to the program, the data, and the combination of the program and data in the memory, said distribution center comprising: a transmitter device for transmitting the program, the data, or the combination of the program and data at the request of said communication terminal device[] to said communication terminal device; and a charging device for charging a fee for at least one use of the transmitted program, the data, or the combination of the program and data in said communication terminal device. Claims App., PO Appeal Br. 26. II. CLAIM INTERPRETATION A. Claim Interpretation Principles The ’021, ’585, and ’508 patents expired on April 25, 2014, after all briefs had been filed. The matter of how to interpret the claims of an expired patent is not addressed by the Examiner, Patent Owner, or Requesters. As noted by our reviewing court: While claims are generally given their broadest possible scope during prosecution, In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), the Board’s review of the claims of an expired patent is Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 20 similar to that of a district court’s review, Ex Parte Papst- Motoren, 1 U.S.P.Q.2d 1655, 1655-56 (B.P.A.I. Dec. 23, 1986); see also MPEP § 2258 I.G (directing Examiners to construe claims pursuant to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), during reexamination of an expired patent). In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In Papst-Motoren, the Board held that: [I]n reexamination proceedings in which the PTO is considering the patentability of claims of an expired patent which are not subject to amendment, a policy of liberal claim construction may properly and should be applied. Such a policy favors a construction of a patent claim that will render it valid, i.e., a narrow construction, over a broad construction that would render it invalid. 1 USPQ2d at 1656 (citations omitted). As noted by the Board, giving the claim language a liberal interpretation in light of the specification does not permit reading “inferential limitations” into a claim. Id. at 1656–57. An expanded panel of the Board has pointed out that the Papst- Motoren language with regard to giving a claim of an expired patent a construction “that will render it valid” can be misleading. Ex parte Katz, 2010 WL 1259722 (BPAI 2010). As noted in Katz, our reviewing court has limited the maxim that claims are construed, if possible, to sustain their validity “to cases in which the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Id. at *7 (quoting Phillips, 415 F.3d at 1327) (internal quotations and citation omitted). Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 21 “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313. As further explained by our reviewing court: “Apart from the claim language itself, the specification is the single best guide to the meaning of a claim term.” AIA Eng’g Ltd. v. Magotteaux Int’l S/A, 657 F.3d 1264, 1272 (Fed. Cir. 2011) (internal quotations and citation omitted). And while the prosecution history often lacks the clarity of the specification, it is another established source of intrinsic evidence. Id. After considering these three sources of intrinsic evidence, a court may also seek guidance from extrinsic evidence. Phillips, 415 F.3d at 1317-18. However, extrinsic evidence may be less reliable than the intrinsic evidence. Vederi, LLC v. Google, Inc., 744 F.3d 1376, 1382 (Fed. Cir. 2014). “[T]he context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. “A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.” Vederi, 744 F.3d at 1383 (citing Merck & Co., Inc. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)). It is improper to read limitations from examples in the specification into the claims. See Cadence Pharmaceuticals Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 22 to import from the patent’s written description limitations that are not found in the claims themselves.”) (internal quotations and citation omitted). B. The Claim Language Requires a Conjunctive Interpretation Patent Owner argues that the claim phrase “transmitting the program, the data, or the combination of the program and data” (claims 1, 5, and 8) must be given a conjunctive interpretation and thus as requiring an ability to transmit each of the three transmission types. Specifically, Patent Owner argues: “[I]n order to meet the subject limitation of transmitting either the program, the data, or the combination of program and data, the applied reference must teach a system capable of transmitting separate ‘program’ and ‘data,’ and also a ‘combination of program and data.’” PO Appeal Br. 11. See also PO Reb. Br. 7 (“[I]f the meaning of Claim 1 is construed consistent with the specification, the software distributing system of Claim 1 must be construed as being capable of handling any of the three alternate types . . . .”). The Examiner agrees with Requesters that the claim language requires a disjunctive interpretation, i.e., as requiring an ability to transmit at least one of the recited transmission types. See May 2013 RAN 25 (“Third Party argues ‘the claim limitation should be read disjunctively’, referring to the ‘at least one of the program, the data, and a combination of the program and data’ limitation . . . . This argument is fully considered and is persuasive.”) (bolding omitted). Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 23 For the following reasons we agree with Patent Owner’s conjunctive claim interpretation. Patent Owner’s arguments for a conjunctive interpretation are based on language appearing in the preambles and the bodies of claims 1, 5, and 8 and also on the above-quoted Detailed Description first paragraph. PO Appeal Br. 10–13. We begin our analysis with the language that appears in the bodies of the claims. The body of claim 1 reads as follows: said distribution center comprising: a transmitter device for transmitting the program, the data, or the combination of the program and data at the request of said communication terminal devices [sic, device] to said communication terminal device; and a charging device for charging a fee for at least one use of the transmitted program, the data, or the combination of the program and data in said communication terminal device. (Emphasis added.) The bodies of claims 5 and 8 include similar recitations. We agree with Patent Owner that giving the claim language a conjunctive interpretation is the only way to accord weight to all three recited transmission types. If the claim language were given a disjunctive interpretation, the transmission of a combination of a program and data would satisfy each of the first and second transmission types (i.e., “program” and “data”) and would make it unnecessary ever to determine whether the transmission satisfies the third type (i.e., “the combination of the program and data”). Therefore, we agree with Patent Owner that a disjunctive interpretation would render some of the claim language superfluous. See PO Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 24 Appeal Br. 12 (“The Patent Office's adoption of TPR's argument that the claim limitation should be read disjunctively . . . would render the claim language superfluous.”). Thus, we agree with Patent Owner that the language in question in the bodies of independent claims 1, 5, and 8 should be given a conjunctive interpretation. Because the language recited in the bodies of the claims requires a conjunctive interpretation, it is not necessary to address Patent Owner’s additional reliance on the phrase “transmitting at least one of the program, the data, and a combination of the program and data” in the preambles of claims 1, 5, and 8 and on the Detailed Description first paragraph as support for a conjunctive interpretation.24 In addition to their position that the claim language allows a disjunctive interpretation, the Examiner and Requesters contend that the references satisfy a conjunctive interpretation. See May 2013 RAN 22 (“[B]oth the Patent Office and the Third Party Requester have also shown the cited prior art discloses all three elements.”). 24 “In general, a preamble is construed as a limitation if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). Neither Requesters nor the Examiner contends that the “transmitting” paragraph in the preambles is entitled to no weight. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 25 C. What is Required by the Claim Language When Given a Conjunctive Interpretation? Patent Owner does not contend that a conjunctive claim interpretation requires an ability to transmit the same program and data both separately and in combination. Nor does Patent Owner contend that the ’021 patent describes transmitting the same program and data both separately and in combination. As noted above, Patent Owner reads the claimed separate transmission of a “program” and “data” respectively on the role-playing game and advanced map data described in the ’021 patent at column 8, lines 34–38. PO Appeal Br. 11. Patent Owner reads the claimed “combination of the program and data” on the last sentence of the Detailed Description first paragraph, which states that “[t]ransmitting a combination of the program and data means, for instance, transmitting a karaoke executing program and the data indicative of karaoke music to be played, or a set of a word processing program and the data indicative of document examples.” PO Appeal Br. 12 (quoting ’021 patent 4:27–31). Nor does Patent Owner, when explaining why the claims are entitled to benefit of the April 25, 1994, filing date of the ’103 patent (which does not include the Detailed Description first paragraph), contend that the ’103 patent describes an ability to transmit the same program and data both separately and in combination. Instead, Patent Owner reads the separately transmitted “program” and “data” on a “video game” and the “advanced map data,” respectively, and reads the transmitted “combination of the program and data” transmission of a “karaoke game with song data” (recited at ’103 Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 26 patent 9:4–5). PO Resp’t Br. 7–8. (The merits of this position of Patent Owner are addressed infra in the discussion of the benefit issue.) As will appear from the discussion of the entered and proposed rejections, neither Requesters nor the Examiner treats a conjunctive claim interpretation as requiring an ability to transmit the same program and data both separately and in combination. We further conclude that the claims do not require that the transmitted “data” (whether transmitted separately or in combination with a “program”) be intended for use by the transmitted “program.” Although such a relationship is present in the above-discussed role-playing game/advanced map data example (’021 patent 8:34–38) and also in the examples of “a karaoke executing program and the data indicative of karaoke music to be played, or a set of a word processing program and the data indicative of document examples” (id. at 4:27–31), it is improper to read limitations from specification examples into the claims. Cadence, 780 F.3d. at 1369. We next address Patent Owner’s apparent position that the claims require an ability to transmit any one of (1) a program unaccompanied by any data, (2) data unaccompanied by any executing program, and (3) a combination of an executing program and data. Patent Owner’s Table 1 is reproduced below: Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 27 PO Appeal Br. 14. This table lists six references in the column labeled “Program Only” and no reference in any of the other columns (labeled “Data only,” “Program & Data Only,” “Combination only,” and “Program, Data & Combination”). Patent Owner argues that “none of the cited art clearly teaches transmitting anything except ‘program only’” (id. at 14) and “none of the prior art discloses or suggests a system that transmits ‘data’ only and charges a fee on the data only.” Id. at 15. To the extent Patent Owner is basing this “Data only” interpretation on the “advanced map data” example in the ’021 patent, which are transmitted without being accompanied by an executing program, it is improper to read limitations from specification examples into the claims. Cadence, 780 F.3d. at 1369. The claim language does not preclude the separately transmitted “program” from being accompanied by some data or preclude the separately transmitted “data” from being accompanied by a program. At most, the claim language precludes the separately transmitted Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 28 “program” from being accompanied by the particular data that correspond to the recited “data” and precludes the separately transmitted “data” from being accompanied by the particular program that corresponds to the recited “program.” It is for this reason that we agree with Patent Owner’s position (PO Appeal Br. 11) that the claimed “program” reads on the originally purchased role-playing game in the role-playing game/advanced map data example (’021 patent 8:34–38). As explained above, the originally purchased role-playing game necessarily includes some initial map data. Requesters contend that some of the references describe transmitting a combination of a program and data because they describe transmitting video game software, which necessarily includes a game executing program and data for use thereby. More particularly, and presumably relying on the ’021 patent’s role-playing game/advanced map data example, Requesters, argue: “Consistent with the ‘021 Patent specification, transmission of ‘game software’ includes transmission of both a game ‘executing program’ and ‘game data.’” Req. Resp’t Br. 11. Patent Owner does not deny that a transmitted video game includes a game executing program and data for use thereby. Requesters further argue: “The transmission of video games requires both program and data, and thus, the prior art discloses all three elements.” Id. at 10 (heading b, bolding omitted). We agree with Patent Owner that “a prior art reference teaching the transmission of video games does not teach or suggest a system capable of transmitting all three distinct transmission Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 29 types.” PO Reb. Br. 10. Transmission of a video game does not satisfy the claimed requirement for an ability to separately transmit a program and data. We next address Requesters’ argument that the “charging device” paragraph in the bodies of claims 1 and 8 must be given a disjunctive interpretation: [I]ndependent claims 1 and 8 of the ‘021 patent require only: “charging a fee for at least one use of the transmitted program, the data, or the combination of program and data” (claim 1); and “charging a fee for at least one transmitted program, data, or combination of the program and data” (claim 8). As the claims of the ‘021 Patent make clear, the charging device need not charge for all transmitted elements, just “at least one.” Req. Resp’t Br. 10. We agree with Patent Owner that the above-quoted claim language must be given a conjunctive interpretation and thus requires an ability to charge a usage fee for at least one use of each of the three transmission types. See PO Appeal Br. 15 (“[N]one of the prior art discloses or suggests a system capable of transmitting a program, data, and a combination, and charges a fee on the program, data, or the combination that was transmitted.”). III. THE EXAMINER’S ANTICIPATION REJECTIONS Patent Owner’s arguments against the anticipation rejections are specifically directed to the independent claims (viz., claims 1, 5, and 8). Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 30 “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). A. Anticipation by Matsuda (claims 1 and 4–11) (Ground AS) Matsuda’s invention is “an information rental system configured to rent [out] various kinds of information, such as game information, educational information, video information, and audio information, to many people.” Matsuda 4 para. 3(a) (emphasis added). Matsuda’s Figure 1 is reproduced below. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 31 Id. at 11. Figure 1 is a block diagram illustrating a configuration of a system in accordance with Matsuda’s invention. Id. at 10. The system includes an information center 1 linked by communication lines 3 to terminal blocks 2, which are located in different homes. Id. at 5–6. Information center 1 includes an “information data” storage block 11, which stores “information data” in the form of “various kinds of game software, educational software, video software or audio software, for example, which are normally returned to rental stores after use.” Id. at 6 (emphasis added). Each terminal block 2 includes identification means 21, selection means 22, storage means 23, and display means 24. Id. at 7. As acknowledged by Patent Owner, the information is transmitted from information center 1 to a terminal block 2 in response to a request by the terminal block: A user of the terminal accesses the center to get desired information and references the index information attached to the obtained information to determine whether to rent or not. If rental is chosen, the rental information is transmitted to storage means of the terminal block via [a] communication line for use at the terminal block. Pg. 5, first full paragraph. PO Appeal Br. 17. Thus, the transmission occurs “at the request of said communication terminal device[]” (claim 1). Requesters read the claimed three transmission types on Matsuda as follows: “Matsuda teaches a software distributing system for transmitting programs (e.g., educational software), data (e.g., audio or video Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 32 information), and a combination of program and data (e.g., game software).” Req. Aug. 2012 Comments 10. Patent Owner’s argument against the rejection is specifically directed to the claimed separate transmission of “data”: Through-out the specification, Matsuda is consistent in stating that it is an information rental system that allows “software products” to be rented so that users do not need to go all the way to a rental store. However, nothing in Matsuda teaches or suggests downloading and charging a fee for “data,” such as the map data supported in the '021 specification. Therefore, Matsuda only teaches a rental system for programs and TPR’s [Third Party Requesters’] argument fails to show how Matsuda discloses all three distinct transmission types. PO Appeal Br. 17–18 (emphasis added). This argument is unpersuasive because Patent Owner has not demonstrated that the claim term “data” does not read on the audio or video software, which presumably will include audio data or video data. Assuming for the sake of argument that the audio and video data are accompanied by an executing program, the claim language, as noted above, does not preclude the separately transmitted “data” from including or being accompanied by an executing program. We sustain the rejection of claims 1 and 4–11 for anticipation by Matsuda. B. Anticipation by Rhoades (claims 1–4 and 8–10) (Ground AN) The invention described in Rhoades “provide[s] a vehicle whereby a plurality of information service software programs are made available Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 33 substantially upon demand and upon request to individual subscribers on a ‘pay-per-use’ basis with a minimum of subscriber overhead.” Rhoades 2:32–36 (emphasis added). Rhoades’s Figure 1 is reproduced below. Figure 1 is a system-level block diagram depicting a digital interactive communication system in conjunction with a home computing assembly in accordance with Rhoades’s invention. Id. at 3:52–55. The home subscriber utilizes the home computing element 10 to call the remote information services storage center 60 through the telephone line 74. Once a telephone link is established, the subscriber selects any one of a plurality of information services, including for example mall shopping services, personal dating services, . . . grocery shopping service, catalog sales, travel agency services, floral services, classified Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 34 advertising, contests, and pre-stored video games, or other software programs which have been previously offered to the subscriber in a menu format. Id. at 4:44–55 (emphasis added). Furthermore, “[a]ll billing for use of the subscribed information services is performed automatically by the computer facilities of the remote information storage center 60 and the billing information is transmitted over the telephone lines 74 to the main office or headquarters 90 (see FIG. 1).” Id. at 5:28–33. We understand this statement to mean that the user is billed for each requested type of information service, including the floral and advertising services and video games. Therefore, we agree with Requesters that “[t]he system charges for each use of the downloaded software program, regardless of which program is downloaded. [Rhoades] 3:34-38, 5:28-33.” Req. Resp’t Br. 12. Requesters read the claimed three transmission types on Rhoades as follows: “Rhoades discloses an interactive communication system that can transmit programs (e.g., software programs), data (e.g., classified advertising data), and a combination of program and data (e.g., pre-stored video games).” Req. Aug. 2012 Comments 10. Patent Owner argues: The interactive browsing taught in Rhoades '107 is quite different than the '021 claims. For example, Claim 1 recites charging a fee for at least one use of the “data.” Claim 5 recites charging a fee for a specified time for use of the “data.” Claim 8 recites charging a fee for the “data.” Therefore, even if Rhoades '107 discloses “data,” which Patent Owner contends is Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 35 not shown, Rhoades '107 clearly fails to teach or suggest charging a fee associated with the data as recited in the claims. PO Appeal Br. 15–16. This argument is unpersuasive because Patent Owner has not demonstrated that the claim term “data” does not read on the data (e.g., image data) received as part of the floral service, classified advertising service, or video games. Payment for the service is also payment for the data provided by the service. We sustain the rejection of claims 1–4 and 8–10 for anticipation by Rhoades. C. Anticipation by Griswold (Claims 1–11) (Ground AO) Griswold’s invention “generally relates to systems for managing licenses of products such as computer software, video games, CD-ROM information, movies and other video products, music and other audio products, multimedia products, and other systems for up-to-date recording of actual usage of such a licensed product to enable efficient billing therefor.” Griswold 1:16–22. Griswold’s Figure 1 is reproduced below. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 36 Figure 1 is a general block diagram of the preferred exemplary embodiment of Griswold’s invention. Id. at 4:53–54. As shown in Figure 1, a licensed product 1, which includes an executable portion 1A and a data portion 1B, is located at a licensee’s site. Id. at 5:19–20. License datagrams 3, which are messages that describe information related to the use of licensed product 1, are sent over a communications network between the licensee and licensor. Id. at 5:44–47. Griswold explains that licensed product 1 can be delivered to the licensee site over communication lines or by broadcasting: Also, the presently described embodiment includes a product 1 which is at the licensee’s site. This implies that product 1 is on some physical media such as diskette, tape, or CD. However, product 1 can be electronically delivered over communications lines to the licensee and therefore might exist Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 37 in the memory of the licensee’s machine, rather than any physical media. In the case of a product such as music, radio programs and the like, product 1 may even be broadcast to the licensee’s site for playback; thus, the product 1 would not even be “resident” in the licensee’s machine. Id. at 11:44–54. The Request reads the transmitted “program,” “data,” and combination of program and data on an electronically delivered product 1: “Griswold discloses that programs and/or data “can be electronically delivered over communications lines to the licensee and therefore might exist in the memory of the licensee's machine, rather than any physical media.” Request 31 (quoting Griswold 11:46-50). Patent Owner argues that anticipation is lacking because Griswold does not describe electronic delivery of product 1 from the licensor to the licensee in response to a request: Griswold . . . states that the product could be electronically delivered over communication lines to the licensee and therefore exist in the memory of the licensee's machine, rather than any physical media. Interestingly, however, Griswold is silent about the system or manner in which the product would be electronically delivered. It appears that how the products become available at the licensee's machine is not important. Therefore, Griswold can not possibly be a prior art reference in regards to transmitting at least one of the program, the data, and combination of the program and data stored in a database provided in a distribution center to a requested communication terminal device. . . . . . . The TPR appears to argue that the product (which could be computer software, CD-ROM information, etc[.]) is Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 38 transmitted from the licensor's site to the remote licensee's site. However, upon closer review of Griswold, one will notice that Griswold discloses transmitting request and reply datagrams between the licensee's site and the licensor's site and not the product itself. See, e.g., Griswold, Fig. 1, Col. 5, lines 19-60. PO Appeal Br. 20 (emphasis altered). We agree with Patent Owner that Griswold does not describe transmitting a product 1 from the licensor’s site to the licensee’s site in response to a request by the latter. This argument is not addressed by Requesters. We do not sustain the rejection of any of claims 1–11 for anticipation by Griswold. D. Anticipation by Hornbuckle (Claims 1–11) (Ground AP) Hornbuckle’s invention relates to remotely controlling and monitoring the use of computer software. Hornbuckle 1:15–16. Hornbuckle’s Figure 1 is reproduced below. Figure 1 is an illustration of a data communication system in which a remote control module of Hornbuckle’s invention is employed. Id. at 4:60–62. As Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 39 shown in this figure, software rental system 10 generally comprises a host computer 12, a target computer 14, a remote control module (RCM) 16 associated with host computer 12, and an RCM 18 associated with target computer 14. Id. at 5:9–13. Communication between host computer 12 and target computer 14 and their respective RCMs 16 and 18 is accomplished via a standard serial RS232 communications link. Id. at 5:13–16. The following passage describes “programs or data” that are downloadable from host computer 12 to target computer 14 and also describes “usage and other accounting data”: By means of the present invention, an authorized user at the target computer is able to “download” programs or data, via a telephone line and a programmable remote control module (RCM) connected at each end thereof from a central or host computer. Usage and other accounting data are monitored by the RCM and stored in memory resident therein. At predetermined times, the central or host computer accesses the RCM for the purpose of “uploading” the usage and other accounting data to the central or host computer. The RCM of the present invention also includes: (1) programmable modules for preventing unauthorized use, copying, vandalism and modification of downloadable data and programs during or after transmission to the target computer . . . . Id. at 3:23–37 (emphasis added). Hornbuckle further explains that “[i]n at least some instances, the rental software provided by the host computer 12 may have a very large amount of code and many data files.” Id. at 11:55–57. Requesters read the claimed three transmission types on Hornbuckle as follows: “Hornbuckle describes a software rental system for transmitting Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 40 programs (e.g., engineering or scientific software and tax programs), data (e.g., advertising and promotional material), and a combination of program and data (e.g., video game) from a host computer to a target computer.” Req. Aug. 2012 Comments 11. See also Req. Resp’t Br. 9 (“Hornbuckle teaches a rental system where ‘unauthorized use, copying, vandalism and modification of downloadable data and programs’ is prevented.”) (quoting Hornbuckle 3:32–36). Patent Owner argues: [T]he “data” taught in Hornbuckle is “usage data” or “menu data” and this “usage data” or “menu data” would not be charged a fee for at least one use of the “data” as recited in Claim 1, or charged a fee for specified time for use of the “data” as recited in Claim 5, or charged a fee for the “data” as recited in Claim 8. Hornbuckle expressly states that “the present invention relates to remotely controlling and monitoring the use of computer software.” In addition, Patent Owner's argument that the data disclosed in Hornbuckle is “usage” or “menu” data is supported in several paragraphs (Col. 3, lines 23-31; Col. 3, lines 56-60; Col. 4, lines 15-21). PO Appeal Br. 16. We are not persuaded by Patent Owner’s argument. The term “data” in Hornbuckle’s phrase “downloadable data and programs” (at 3:32–36) clearly refers to downloadable data for which the user is charged rather than to “usage data” or “menu data,” for which the user is not charged. We sustain the rejection of claims 1–11 for anticipation by Hornbuckle. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 41 E. Anticipation by Shear (Claims 1–11) (Ground AQ) Shear’s invention “relates to techniques for preventing unauthorized use of an electronic digital information database and for measuring the utilization of the database by authorized users.” Shear 1:21–25. Shear’s invention “solves the fundamental CD and Optical publishing problem of how to provide end-users with disk libraries containing many different publications from different venders.” Id. at 7:4–7. Patent Owner argues that Shear fails to describe the three transmission types: “At best, Shear discloses transmitting database information that is accessed. Although Shear may do a good job of disclosing the remote access of database information, Shear does not teach or suggest transmitting at least one of a program, data, or a combination of program or data.” PO Appeal Br. 22. We are persuaded by Patent Owner’s argument, which is not addressed by Requesters, who instead state only: “With respect to Shear, [Patent Owner] admits that Shear discloses transmitting database information (e.g., data) that is accessed, but argues that Shear does not disclose all three types. The Ground AQ rejection of all claims should be confirmed.” Req. Resp’t Br. 7 (citation omitted). We do not sustain the rejection of any of claims 1–11 for anticipation by Shear. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 42 F. Anticipation by Thacher (Claims 1–11) (Ground AR) Thacher’s invention “relates to games of skill, and in particular to a system in which players of individual electronic games such as video games or the like can play a tournament.” Thacher 1:8–11. Thacher’s Figure 1 is reproduced below. Figure 1 is a block diagram of a basic tournament system according to Thacher’s invention. Id. at 5:43–44. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 43 Central computer 6 is connected to local video games (i.e., video game machines25) 1 by interfaces 3 and to remote video games by a CATV cable 10, modems 9, and interfaces 3. Id. at 5:52–6:6. Each interface 3 is connected to a respective card reader, such as a credit card reader. Id. at 5:58–60. If a player has credit, the video game machine is turned on, enabling the player to play. Id. at 2:58–59. Requesters read the claimed transmission of “data” on Thacher as follows: Thacher discloses transmitting many types of data [that] may be downloaded from a central computer by the remote computer terminal, including announcement messages (7:62-65), a program for a different kind or difficulty of game (13:38-57; 16:52-60; 18:20-28), memory address location for scores and other data relating to the kind of game (13:60-14:6), a specific display (16:6-28), or even in-game advertising (17:59-65). Req. Aug. 2012 Comments 12 (emphasis added). Patent Owner argues that Thacher does not describe charging a fee for transmission of the above-identified data, as is required when the “charging” claim language is properly given a conjunctive interpretation: TPR attempts to argue that Thacher's disclosure of various types of data (i.e., announcement messages, in-game advertising) teaches the data as recited in the '021 claims. There is no teaching or suggestion in Thacher that a charging device charges a fee for at least one use of the data (Claim 1), or charges a fee for a specified time for use of the data (Claim 5), or charges a fee for the data (Claim 8). . . . 25 Thacher 2:54. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 44 Therefore, at best, Thacher only teaches one distinct type, namely programs. PO Appeal Br. 17. Requesters respond by arguing, incorrectly, that the “charging” claim language must be given a disjunctive interpretation and thus does not require charging for transmitted “data”: Contrary to Appellant’s arguments, the claims do not require charging for all transmitted programs, data, and combination. Instead, as discussed above, the claims require only: “charging a fee for at least one use of the transmitted program, the data, or the combination of program and data” (claim 1); “charging a fee for a specified time for use of at least one program, data, or combination of program and data” (claim 5); and “charging a fee for at least one transmitted program, data, or combination of the program and data” (claim 8). Appellant does not dispute that Thacher teaches charging for transmitted programs. Appellant does not dispute that Thacher teaches transmission of the combination. Thacher teaches distribution of games and therefore teaches transmission of the combination. The rejection of all claims under Ground AR should be maintained. Req. Resp’t Br. 11 (citations omitted). For the reasons given supra, we agree with Patent Owner that the claim language requires an ability to charge a usage fee for each of the three transmission types. We do not sustain the rejection of any of claims 1–11 for anticipation by Thacher. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 45 G. Anticipation by Oseki (Claims 1 and 4–11) (Ground AT) Oseki’s invention is a software rental system. Oseki 3. Oseki’s Figure 1 is reproduced below. Figure 1 is a structural drawing of the software lending system in an embodiment of Oseki’s invention. Id. at 4. The software provider side comprises, inter alia, “a memory means 1 on which various application software (hereinafter, AP) is stored” and a means 5 that transmits the read AP file to the user via a line 6. Id. Patent Owner contends that “Oseki only discloses one distinct type, namely programs” (PO Appeal Br. 18) and thus fails to show all three of the claimed transmission types. Id. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 46 Neither Requesters nor the Examiner contends that Oseki describes all three transmission types. The sole mention of Oseki in Requesters’ Respondent Brief is in the following passage: “Appellant admits that each of Rhoades '107, Hornbuckle, Thacher, Matsuda, Oseki, and Kato teaches transmission of at least a ‘program.’ Appeal Br. at 14. As such, the rejection of all claims under Grounds AN, AP, AR, AS, AT, and AU should be maintained.” Req. Resp’t Br. 6. This argument is unpersuasive because it fails to address the claim language when given its proper conjunctive interpretation. We do not sustain the rejection of claims 1 and 4 –11 for anticipation by Oseki. H. Anticipation by Kato (Claims 1 and 4–11) (Ground AU) Kato’s invention is “an online software automatic vending machine for supplying online various kinds of software.” Kato 4. The software “rang[es] over various fields, from so-called business software including word processors, spreadsheets, and databases to computer graphics, music, games, and so on.” Id. at 5. Requesters read the claimed three transmission type on Kato as follows: “Kato discloses a system that can transmit programs (e.g., application programs such as word processors), data (e.g., music or computer graphics), and a combination of program and data (e.g., games).” Req. Aug. 2012 Comments 11. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 47 Patent Owner argues that “Kato is only concerned with and therefore only discloses one distinct type, namely software programs” and that “TPR's argument fails to show how Kato discloses all three distinct transmission types.” PO Appeal Br. 19. This argument is unpersuasive because Patent Owner has not demonstrated that the claimed “data” does not read on music or computer graphics or that the claimed “combination” of a program and data does not read on a game. We sustain the rejection of claims 1 and 4–11 for anticipation by Kato. I. Anticipation by Wiedemer (Claims 1–3, 5, 6, 8, 9, and 11) (Ground AV) Wiedemer’s invention relates to “systems for pay broadcast of videotext and videogames and to a method for providing secure distribution of videotext and videogame material to users on a pay per view basis.” Wiedemer 1:12–15. Television, videotext, and videogame programming are broadcast in scrambled form with a broadcast signal that is imbedded in the program broadcast. Id., Abstract. The receiving station can generate signals to descramble the input program content. Id. Wiedemer’s Figure 1 is reproduced below. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 48 Figure 1 is a schematic block diagram of a videotext and videogame pay per use system constructed in accordance with Wiedemer’s invention. Id. at 2:31–33. A decoder 10 at a user’s location receives a “scrambled broadcast signal” received from, for example, a broadcast station 12 that “broadcast[s] either over the air or over cable.” Id. at 2:44–46. The decoder unscrambles the scrambled broadcast signal (assuming that the system user has been properly authorized to gain access to the broadcast signal) and produces an unscrambled program signal that is suitable, for example, for viewing on a conventional television set 16. Id. at 2:49–54. Wiedemer’s system can be used to distribute videogame materials. Id. at 12:3–5. Microprocessor 22 in decoder 10 also is connected by a flexible Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 49 cable 36 to a remote memory unit 38 housed in a cartridge 40. Id. at 3:47– 49. Cartridge 40 is shaped and sized to conform to the shape and size of game cartridges designed for a home computer 42 intended for videogame use. Id. at 3:51–55. When Wiedemer’s system is being used for this purpose, microprocessor 22 provides an output stream of digital characters decoded from the input stream received from the broadcast signal and loads those characters directly to the memory unit 38. Id. at 12:11–14. Therefore, Requesters are correct to describe Wiedemer as “disclos[ing] transmitting videotext and videogames from a distribution center over a cable line to a home receiver, which decodes the signal and routes game information to a removable memory unit attached to a game console.” Req. Aug. 2012 Comments 12. Patent Owner argues that Wiedemer does not describe “transmitting” information from broadcast station 12 to decoder 10 in response to a request from the decoder, as required by the claims: Wiedemer does not teach or suggest “a transmitter device for transmitting the program, the data, or the combination of the program and data at the request of said communication terminal devices to said communication terminal device,” but rather teaches a broadcast system in which programming is embedded into a broadcast signal. Therefore, Wiedemer does not disclose any of the transmitted types. PO Appeal Br. 19. In response, Requesters argue that “[b]ecause the user can select a program content level and descramble and store only the programs of that Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 50 level, Wiedemer describes transmitting at the request of the communication terminal.” Req. Resp’t Br. 13. We do not agree that descrambling and storing a portion of the scrambled signal that the decoder receives from broadcast station 12 fairly can be described as “transmitting” information to the decoder at the request of the decoder, as is necessary to satisfy the claim language. Therefore, we do not sustain the rejection of any of claims 1–3, 5, 6, 8, 9, and 11 for anticipation by Wiedemer. IV. THE EXAMINER’S OBVIOUSNESS REJECTIONS A. Wiedemer in View of Suzuki (Claims 4, 7, and 10) (Ground AW) Suzuki is relied on (at Request page 169) for only the disabling feature recited in dependent claims 4, 7, and 10, of which claim 4 reads as follows: 4. (Original) A software distributing system as in claim 1, further including a disabling device that disables said transmitted program, data, or combination of program and data, until said distribution center receives charge for use of said program, data, or combination of program and data. Because we have found that Wiedemer does not anticipate parent claims 1, 5, and 8, we do not sustain the rejection of any of claims 4, 7, and 10 for obviousness over Wiedemer in view of Suzuki. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 51 B. Matsuda in View of Tsumura (Claims 1–11) (Ground BB) Patent Owner’s arguments against this ground of rejection are directed to the independent claims. PO Appeal Br. 23-24. Because we have sustained the rejection of claims 1 and 4–11 for anticipation by Matsuda, we also sustain the rejection of claims 1–11 for obviousness over Matsuda in view of Tsumura. See In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“[A]nticipation is the epitome of obviousness.”). C. Hornbuckle in View of Tsumura (Claims 1–11) (Ground BE) Because we have sustained the rejection of claims 1–11 for anticipation by Hornbuckle, we also sustain the rejection of claims 1–11 for obviousness over Hornbuckle in view of Tsumura. D. Hornbuckle in View of Tashiro (Claims 1–5 and 8–11) (Ground AG) Because we have sustained the rejection of claims 1–11 for anticipation by Hornbuckle, also sustain the rejection of claims 1–5 and 8– 11 for obviousness over Hornbuckle in view of Tashiro. E. Kato in View of Stokey (Claims 5–7) (Ground AH) Because we have sustained the rejection of claims 1 and 4–11 for anticipation by Kato, we also sustain the rejection of independent claim 5 and its dependent claims 6 and 7 for obviousness over Kato in view of Stokey. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 52 Furthermore, the subject matter relied on in Stokey, namely, “disclos[ing] varying the cost of computer software depending on the length of time the software has been available in the market” (Req. Oct. 2010 Comments 41–42) is not relevant to original claims 5–7, which are the claims before us. Instead, Stokey was relevant to claim 5 as previously amended to recite setting the use fee in accordance with the “newness” of the transmitted program, data, or combination of program and data. PO Sept. 2010 Resp. 3. F. Matsuda in View of Stokey (Claims 5–7) (Ground AI) Inasmuch as we have sustained the rejection of claims 1 and 4–11 for anticipation by Matsuda, we also sustain the rejection of claims 5–7 for obviousness over Matsuda in view of Stokey. Also, as noted above, Stokey is not relevant to the subject matter recited in original claims 5–7. G. Kato in View of Dobrow (Claims 5–7) (Ground AJ) Because we have sustained the rejection of claims 1 and 4–11 for anticipation by Kato, we also sustain the rejection of claims 5–7 for obviousness over Kato in view of Dobrow. We note that Dobrow, like Stokey, was cited to address amended claims 5-7, which recited setting the use fee in accordance with the “newness” of the transmitted information. See Req. Oct. 2010 Comments 43 (“Dobrow discloses varying the cost of consumer entertainment products Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 53 (e.g. movies) depending on the length of time the product has been available in the market.”). V. CONCLUSIONS REGARDING EXAMINER’S REJECTIONS A. Sustained Rejections We have sustained the Examiner’s following rejections: 1. Claims 1 and 4–11 for anticipation by Matsuda (Ground AS). 2. Claims 1–4 and 8–10 for anticipation by Rhoades (Ground AN). 3. Claims 1–11 for anticipation by Hornbuckle (Ground AP). 4. Claims 1 and 4–11 for anticipation by Kato (Ground AU). 5. Claims 1–11 for obviousness based on Matsuda in view of Tsumura (Ground BB) 6. Claims 1–11 for obviousness based on Hornbuckle in view of Tsumura (Ground BE). 7. Claims 1–5 and 8–11 for obviousness based on Hornbuckle in view of Tashiro (Ground AG). 8. Claims 5–7 for obviousness based on Kato in view of Stokey (Ground AH). 9. Claims 5–7 for obviousness based on Matsuda in view of Stokey (Ground AI). 10. Claims 5–7 for obviousness based on Kato in view of Dobrow (Ground AJ). Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 54 B. Rejections Not Sustained We have not sustained the Examiner’s following rejections: 1. Claims 1–11 for anticipation by Griswold (Ground AO). 2. Claims 1–11 for anticipation by Shear (Ground AQ). 3. Claims 1–11 for anticipation by Thacher (Ground AR). 4. Claims 1 and 4–11 for anticipation by Oseki (Ground AT). 5. Claims 1–3, 5, 6, 8, 9, and 11 for anticipation by Wiedemer (Ground AV). 6. Claims 4, 7, and 10 for obviousness based on Wiedemer in view of Suzuki (Ground AW). VI. THE PROPOSED REJECTION THAT IS THE SUBJECT OF REQUESTERS’ APPEAL The sole proposed rejection argued in Requesters’ Appeal Brief is the proposed rejection of claims 1, 5, 8, and 11 for anticipation by Roskowski (Ground AX). As noted above, the Examiner finds that the ’021 patent claims are entitled to benefit of the May 10, 1993, date of Japanese patent document 5-108303 (Inter partes Order 5), thereby implicitly also finding that the claims are entitled to the April 25, 1994, filing date of the ’103 patent, which is the only patent in the U.S. patent chain that has a filing date that predates Roskowski’s June 6, 1994, filing date. Under 35 U.S.C. § 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 55 matter of the claim is disclosed in the manner provided by 35 U.S.C. § 112, first paragraph, in the earlier filed application. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998). Requesters correctly note that “[n]owhere prior to the ‘520 Patent, which was filed on July 2, 1998, is the phrase ‘combination of the program and the data’ (or any derivatives) used.” Req. Aug. 2012 Comments 14. Nevertheless, we agree with the Examiner that “[t]he addition of [the] language ‘a combination of the program and data . . .’ during a prosecution point does not preclude the subject matter from being disclosed previous to that point.” May 2013 RAN 15. Furthermore, we agree with the Examiner’s finding that the recited “combination of the program and data” has written description support in the claim term “game data” as used in the patents in the U.S. patent chain that precede the fourth-filed ’520 patent and in the Japanese priority application: For example, the 5,775,995 patent . . . uses the phrase “game data” to refer to both the game program and the data on which the program operates (column 5, lines 49-60; also column 6, lines 1-56; a game program must include data from some source in order to function, the disclosure of a game is disclosure of the game and the data operated on by that game; memory 8 is storing both the game and the game data). The “combination” was disclosed prior to Third Party Requester’s example. The original Japanese application has similar language (starting at paragraph 0026). Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 56 Id. The above-cited subject matter from column 5, lines 49–60 and column 6, lines 1–56 of the ’995 patent appears in the ’103 patent at column 5, line 30 to column 6, line 46. Requesters do not challenge the Examiner’s above-quoted position that the ’995 and ’103 patents describe transmitting a combination of a program and data. Instead, Requesters argue that these patents do not additionally describe the separate transmission of a program and data: Prior to the addition of this disclosure [in the ’520 patent] there is no support in the earlier parent patent specification for transmitting a “combination of program and data” in addition to separately transmitting a program and separately transmitting data because, prior to this amendment, there was no distinction made between “the program” and “the data.” Req. Appeal Br. 9. As noted supra, Patent Owner reads the separately transmitted “program” and “data” on a “video game” and the “advanced map data,” respectively. PO Resp’t Br. 7-8. Requesters have not demonstrated any error in this position of Patent Owner, which we find to be persuasive. Therefore, we find that the claims before us are entitled to the April 25, 1994, filing date of the ’103 patent, with the result that Roskowski is not available as prior art against the claims. Accordingly, we sustain the Examiner’s decision not to enter the proposed rejection of claims 1, 5, 8, and 11 for anticipation by Roskowski. Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 57 VII. DECISION The Examiner’s decision that claims 1–11 are unpatentable over the prior art is affirmed. The Examiner’s decision not to reject any of claims 1, 5, 8, and 11 for unpatentability over Roskowski 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. AFFIRMED msc Appeal 2014-009132 Patent 6,875,021 B2 Merged Reexaminations 90/009,520 and 95/001,237 58 For Patent Owner: DAVIS & BUJOLD, P.L.L.C 112 PLEASANT STREET CONCORD, NH 03301 For Third Party Requesters: COOLEY LLP ATTN: PATENT GROUP 1299 PENNSYLVANIA AVENUE, NW SUITE 700 WASHINGTON, DC 20004 Copy with citationCopy as parenthetical citation