Ex Parte Joseph et al

Board of Patent Appeals and Interferences

Jun 9, 2011

09903457 (B.P.A.I. Jun. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte KURIACOSE JOSEPH, 8
ANSLEY WAYNE JESSUP JR., 9
VINCENT DUREAU, 10
and ALAIN DELPUCH 11
___________ 12
13
Appeal 2011-007917 14
Application 09/903,457 15
Technology Center 3600 16
___________ 17
18
19
Before HUBERT C. LORIN, ANTON W. FETTING, and 20
MEREDITH C. PETRAVICK, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 17, 2010) and the Examiner’s Answer (“Ans.,” mailed
January 12, 2011).
Kuriacose Joseph, Ansley Wayne Jessup Jr., Vincent Dureau, and Alain 2
Delpuch (Appellants) seek review under 35 U.S.C. § 134 (2002) of a non-3
final rejection of claims 165-167, 185, 218-220, 236, 252, and 256-261, the 4
only claims pending in the application on appeal. This is a reissue 5
application from application number 08/233,908, U.S. Pat. No. 5,819,034, 6
issued October 6, 1998. We have jurisdiction over the appeal pursuant to 7
35 U.S.C. § 6(b) (2002). 8
The Appellants invented a client-server distributed computer system 9
(Specification 1:5-6). 10
An understanding of the invention can be derived from a reading of 11
exemplary claim 165, which is reproduced below [bracketed matter and 12
some paragraphing added]. 13
165. A method to facilitate placing an order for an item, the 14
method comprising: 15
[1] receiving an order request at a client system; 16
[2] automatically determining an item identity for an item to 17
which the order request pertains; 18
[3] automatically retrieving personal information previously 19
stored in a permanent memory in the client system, the 20
retrieved personal information pertaining to a user associated 21
with the client system; and 22
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[4] causing an order to be placed, the order including the item 1
identity and the retrieved personal information. 2
The Examiner relies upon the following prior art: 3
Garneau US 5,497,420 Mar. 5, 1996
Florin US 5,621,456 Apr. 15, 1997
Claims 165-167, 185, 218-220, 236, 252, and 256-261 stand rejected 4
under 35 U.S.C. § 251 as having a defective reissue declaration because the 5
error which is relied upon to support the reissue application is not an error 6
upon which a reissue can be based. 7
Claims 165-167, 185, 218-220, 236, 252, and 256-261 stand rejected 8
under 35 U.S.C. § 251 as being an improper recapture of broadened claimed 9
subject matter surrendered in the application for the patent upon which the 10
present reissue is based. 11
Claims 165-167, 185, 218-220, 236, 252, and 256-261 stand rejected 12
under 35 U.S.C. § 103(a) as unpatentable over Florin and Garneau. 13
ISSUES 14
The issues of propriety of the declared error and recapture turn primarily 15
on whether the Appellants described the error with any degree of 16
particularity and whether any of the claims are drawn to an invention similar 17
to those in any of the 9 original claims in the issued patent. The issue of 18
obviousness turns primarily on whether the term “personal information” is 19
broad enough to encompass the identification of a terminal personally used. 20
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to Parent Patent U.S. 5,819,034 4
01. The issued patent contains 9 claims. 5
02. All of those original claims are cancelled in the instant 6
application. 7
03. All of those original claims are presented in divisional 8
application [sic, divisional-reissue, see 7/10/2001 preliminary 9
amendment] 09/903,458, whose prosecution is currently 10
suspended pending allowability of one of the other reissue, 11
divisional, or divisional-reissue applications. 12
04. All 9 claims in the issued patent covered an invention sending 13
and receiving time division multiplexed packets. None of the 14
claims in the instant application covers such an invention. 15
Facts Related to the Prior Art 16
Florin 17
05. Florin is directed to presenting an improved audio-visual user 18
interface for selecting and displaying cable television or other 19
audiovisual programs, as well as controlling various audio-visual 20
devices and interactive services. Florin 2:37-40. 21
22
23
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Garneau 1
06. Garneau is directed to pay per view or the equivalent service 2
which does not require the downloading of a descrambling or 3
subscriber terminal enabling code from a head end on a terminal 4
by terminal basis, and can be used to allow service providers to 5
provide services such as banking, merchandise ordering, personal 6
information storage and retrieval, etc. to a population of 7
subscribers. In addition, the system can facilitate the use of a 8
single network by multiple cable TV operators without the danger 9
that a subscriber of one can order programming or services from 10
another. Garneau 1:48-58. 11
07. Garneau ‘s terminal address (I.D.) retrieves the program or 12
service identification code corresponding to the selected program 13
or service, and utilizing an encryption key, processes the program 14
number and terminal ID through an algorithm using the 15
encryption key to form an encrypted event request code, which is 16
displayed on the television screen. The subscriber then initiates 17
the action of placing an order for a pay-per-view event. Garneau 18
2:24-32. 19
ANALYSIS 20
Claims 165-167, 185, 218-220, 236, 252, and 256-261 rejected under 35 21
U.S.C. § 251 as having a defective reissue declaration because the error 22
which is relied upon to support the reissue application is not an error upon 23
which a reissue can be based. 24
The Appellants’ declarations state that : 25
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the '034 patent also discloses a method and system that, stated 1
generally, uses a client system to facilitate the determining of 2
an item identity for an item to which an order request pertains, 3
automatically retrieving personal information previously stored 4
in a permanent memory in the client system, and causing an 5
order to be placed, where the order including the item identity 6
and the retrieved personal information. This invention is 7
distinct from the invention claimed in the original patent; and is 8
not in any way claimed in the issued claims of the '034 patent. 9
10
The Examiner found 11
[t]his statement of error is not sufficient because it does not 12
identify a single word, phrase, or expression in the 13
specification or in an original claim (s) 1-9, and how it 14
renders the original patent wholly or partly inoperative or 15
invalid. The statement filed is no better than saying in the 16
reissue declaration that this ‘application is being filed to correct 17
errors in the patent which may be noted from the change made 18
by adding new claim [10]”, see MPEP 1414, II, C. Ans. 6. 19
20
Thus, the issue appears to be whether the reason provided by the 21
Appellants provided any specific detail. We find the phrase “facilitate the 22
determining of an item identity for an item to which an order request 23
pertains, automatically retrieving personal information previously stored in a 24
permanent memory in the client system, and causing an order to be placed, 25
where the order including the item identity and the retrieved personal 26
information” in the Appellants’ declaration describing what the original 27
claims omitted has sufficient specificity. 28
The portion of the MPEP the Examiner cites requires that the public be 29
put on notice as to the particular nature of the correction, and the reason 30
provided by the Appellants certainly describe generally the nature of the 31
claims that are to be added. This statement is more than merely being the 32
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equivalent of stating “that the original claims did not cover certain 1
embodiments/language being presented by new claim 10” as the Examiner 2
found. One does not have to look at the specific claims being added to 3
appreciate the nature of the error being corrected. The most recent version 4
of the MPEP now has the following sentence prior to the portion cited by the 5
Examiner. 6
A statement of "failure to include a claim directed to" and then 7
presenting a newly added claim, would not be considered a 8
sufficient "error" statement because applicant has not pointed 9
out what the other claims lacked that the newly added claim 10
has, or vice versa. 11
MPEP 1414, II, C. Thus, this portion of the MPEP puts the phrasing 12
regarding hypothetical new claim 10, supra, in context as merely requiring 13
that the Applicants do more than just recite the added claim numbers and 14
contents without regard to the existing claims. Clearly the Appellants’ 15
declaration has pointed out what the original claims lacked and the newly 16
claims have. 17
Claims 165-167, 185, 218-220, 236, 252, and 256-261 rejected under 35 18
U.S.C. § 251 as being an improper recapture of broadened claimed subject 19
matter surrendered in the application for the patent upon which the present 20
reissue is based. 21
The Examiner found that none of the claims currently rejected are 22
directed to the same invention as any of the original claims from the issued 23
patent, and that ordinarily, under such a circumstance, no recapture could be 24
found. Ans. 17-20. The Examiner further made a finding that if all the 25
original claims from the issued patent are canceled, then recapture may then 26
be found. Id. 27
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The Appellants dispute this. We must agree with the Appellants. We 1
are at a loss to see how the Examiner arrived at this finding as to an 2
exception to the case where claiming entirely new inventions does not 3
involve recapture. 4
First, the original claims remain intact in another divisional. FF Error! 5
Reference source not found.. There is no requirement that the original 6
claims remain with the first reissue application. Second, the Examiner 7
appears to base the finding on a view that the subject matter that materially 8
narrows the reissue claims should be the overlooked aspect of the original 9
invention claimed in the patent. This view holds up for recapture in claims 10
directed to the same invention as in the original claims, but this is 11
nonsensical for wholly different inventions, if only because with claims to 12
such different inventions, the original invention is not in the claim. 13
Therefore it is logically inconsistent to require the overlooked aspects be 14
those of the originally claimed invention. We find no authority in the 15
statutes, case law, or even the MPEP for the Examiner’s finding. Instead, 16
the Court of Appeals for the Federal Circuit recently held that no recapture 17
exists in such circumstance. 18
The Board’s reliance on this portion of the MPEP is misplaced. 19
This portion of the MPEP deals with claims in which there is no 20
need to apply the recapture rule in the first place. The recapture 21
rule is triggered only where the reissue claims are broader than 22
the patented claims because the surrendered subject matter has 23
been re-claimed in whole or substantial part … In contrast, this 24
portion of the MPEP addresses reissue claims directed at 25
“additional inventions/embodiments /species not originally 26
claimed.” Because the subject matter of these claims was “not 27
originally claimed,” it is wholly unrelated to the subject matter 28
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that was surrendered during prosecution and the recapture rule 1
is not even triggered. 2
In re Mostafazadeh --- F.3d ----, 2011 WL 1642830, Slip Opinion 2010-3
1260 (Fed Cir 5/3/2011). 4
Claims 165-167, 185, 218-220, 236, 252, and 256-261 rejected under 35 5
U.S.C. § 103(a) as unpatentable over Florin and Garneau. 6
We are unpersuaded by the Appellants’ arguments that the prior art fails 7
to describe the claimed automatically retrieving personal information. The 8
Appellants contend that Garneau’s “unique logical or physical terminal 9
address” is not an example of personal information. App. Br. 23. 10
We agree with the Examiner’s finding that such terminal information is 11
at least within the scope of the claim limitation “personal information” at 12
issue, at least because, as the Examiner found, “[t]he claim does not recite 13
any specific personal information and therefore any information associated 14
with the user can be termed as personal information of the user.” Ans. 20. 15
We find that the identifier of a terminal a user personally accesses is among 16
the many pieces of information that might be characterized as personal. See 17
FF 07. 18
CONCLUSIONS OF LAW 19
The rejection of claims 165-167, 185, 218-220, 236, 252, and 256-261 20
under 35 U.S.C. § 251 as having a defective reissue declaration because the 21
error which is relied upon to support the reissue application is not an error 22
upon which a reissue can be based is improper. 23
The rejection of claims 165-167, 185, 218-220, 236, 252, and 256-261 24
under 35 U.S.C. § 251 as being an improper recapture of broadened claimed 25
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subject matter surrendered in the application for the patent upon which the 1
present reissue is based is improper. 2
The rejection of claims 165-167, 185, 218-220, 236, 252, and 256-261 3
under 35 U.S.C. § 103(a) as unpatentable over Florin and Garneau is proper. 4
DECISION 5
To summarize, our decision is as follows. 6
 The rejection of claims 165-167, 185, 218-220, 236, 252, and 256-261 7
under 35 U.S.C. § 251 as having a defective reissue declaration 8
because the error which is relied upon to support the reissue 9
application is not an error upon which a reissue can be based is not 10
sustained. 11
 The rejection of claims 165-167, 185, 218-220, 236, 252, and 256-261 12
under 35 U.S.C. § 251 as being an improper recapture of broadened 13
claimed subject matter surrendered in the application for the patent 14
upon which the present reissue is based is not sustained. 15
 The rejection of claims 165-167, 185, 218-220, 236, 252, and 256-261 16
under 35 U.S.C. § 103(a) as unpatentable over Florin and Garneau is 17
sustained. 18
No time period for taking any subsequent action in connection with this 19
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 20
§ 1.136(a)(1)(iv) (2007). 21
22
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AFFIRMED 1
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3
erc 4
5