11859491 (P.T.A.B. Jan. 21, 2014)

Ex Parte Kim

Patent Trial and Appeal BoardJan 21, 2014

11859491 (P.T.A.B. Jan. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KYUNAM KIM ____________ Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 Technology Center 2100 ____________ Before BRADLEY R. GARRIS, ROBERT E. NAPPI, and GAY ANN SPAHN, Administrative Patent Judges. Per Curiam. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting reissue claims 70 and 72-94 under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for patent upon which the present reissue is based. See App. Br. 8; see also Ans. 5. Appellant’s present reissue application seeks to reissue U.S. Patent 6,910,186 B2 (“the ʼ186 patent”), Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 2 issued June 21, 2005, based on U.S. Patent Application Serial No. 09/732,628 (“the ʼ628 application”), filed December 8, 2000. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant’s reissue claims generally relate to a method of communicating or chatting between users with graphical representations or images, such as avatars, in a computer environment. See Spec., col. 17, l. 32 – col. 18, l. 26, Abstr., and Figs. 9A-9D. The graphical representations or images are provided to a user if checking has shown that a user purchased a product, such as a specific toy. Id. Independent reissue claim 70, reproduced infra, with emphasis added, is illustrative of the appealed subject matter, and independent reissue claims 81 and 89 are also discussed infra, in pertinent part. 70. A method of providing content comprising the steps of: receiving a first password from a user computer, wherein the first password is provided with a product, wherein the password is hidden from the user and is different from a second password that is associated with another product having an appearance different from an appearance of the product; checking said first password; providing common content over a network to a plurality of users including said user; and providing first specialized content over said network, said first specialized content being provided based on said checking; wherein said first specialized content is different from second specialized content provided over said network in response to receiving said second password and includes a Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 3 character whose appearance substantially resembles, and is recognizable as having the appearance of the product with which the first password was provided. App. Br., Clms. App’x. Independent claim 81 is directed to “[a] method of providing content to a user computer” and includes, inter alia, the steps of “receiving a password from a user computer, wherein the password is hidden and is included with a toy,” and “accepting input from the user computer for selecting, based on said password, an image that represents said toy from a plurality of images, wherein said image is a graphical representation of said toy, and other images of said plurality of images are graphical representations of other toys having different appearances from said toy.” Id. Independent claim 89 is directed to “[a] method of providing content to a user computer” including, inter alia, the step of “checking that a first toy was provided to a user by receiving information from the user computer associated with the user.” Id. ISSUES Appellant argues that the Examiner applied the wrong legal standard to determine whether the reissue claims are subject to recapture based upon an overlooked invention. App. Br. 11-13.1 Appellant also argues that the reissue claims in the present reissue application are directed to additional 1 Appellant cites Ex Parte Henshaw, 2010WL 1539047, *8 (BPAI 2010), which is of limited guidance to this issue as it is not precedential and was issued prior to In re Mostafazadeh, 643 F.3d 1353 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335 (Fed. Cir. 2012). Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 4 inventions/embodiments/species not originally claimed in the ʼ628 application and as such, are directed to an overlooked invention. App. Br. 13-18. More particularly, Appellant argues that contrary to the Examiner’s findings, the Specification provides alternative embodiments and the Examiner erred in linking the contracting feature of the patent claims in the ʼ186 patent with the feature of checking password and product purchase. App. Br. 13-39; see also Reply Br. 2-5. Additionally, Appellant argues that the step of contracting was never surrendered during prosecution, as patent claim 46 (i.e., claim 47 of the ʼ628 application from which the ʼ186 patent issued), did not include such a limitation. App. Br. 24. Further, Appellant argues that claims 70, 81, and 89 recite a materially narrowing limitation and as such do not recapture surrendered subject matter. App. Br. 35-39. The issues presented by Appellant’s above-discussed arguments are: I. whether the Examiner erred by not considering the reissue claims to be directed to overlooked subject matter; and II. whether the Examiner erred in construing the surrendered subject matter and not considering independent reissue claims 70, 81, and 89 and the claims dependent thereon to be materially narrowed. OPINION Issue I – Overlooked Subject Matter We are not persuaded by Appellant’s arguments that the Examiner erred in considering the reissue claims to be directed to overlooked subject matter. The Examiner found that during prosecution of the ʼ628 application Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 5 which issued as the ʼ186 patent, the independent claims were amended to include the following limitations: “contracting with an owner of an image for use of said image in a graphic environment approved by said owner, said image characterizing a source of a product or service offered by said owner” and “displaying said image to a first user to represent a second user image representing the user in a graphic environment that is configured to allow various emotional expressions of said first and second users as well as physical interactions, if desired, between a representation of said first user and said image representing said second user to emulate an actual physical interaction between said first and second users.” Ans. 5-6; see also Ans. 9-10. Further, the Examiner noted that the reissue claims on appeal do not recite the contracting and displaying steps. Ans. 6. The Examiner, citing to columns 17 and 18 of the ʼ186 patent, found that the claims of the reissue application are not directed to additional inventions/embodiments/species. Ans. 15-16. The Examiner also found that the checking of the purchase of a product is merely an alternative implementation of the embodiment where the user contracts with an owner of the image. Id. The Examiner considered this finding to be also supported by patent dependent claims 42, 43, 52, 54- 56, and 64- 67 of the ʼ186 patent, which recite limitations directed to checking that a user purchased a product or service and that the checking involves a password.2 Ans. 18-21. Further, the Examiner found that even if verifying a purchase is a separate embodiment from contracting, these 2 We note that the limitations of these claims were present in the originally filed claims of the ’628 application from which the ‘186 patent issued. Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 6 dependent claims show that verifying a purchase is not an overlooked aspect of the invention. Ans. 19. We concur with the Examiner’s assessment. With respect to “reissue claims directed at ‘additional inventions/embodiments/species not originally claimed,’” our reviewing court has said that “[b]ecause the subject matter of these claims was ‘not originally claimed,’ it is wholly unrelated to the subject matter that was surrendered during prosecution and the recapture rule is not even triggered.” In re Mostafazadeh, 643 F.3d 1353, 1360 (Fed. Cir. 2011); see also In re Youman, 679 F.3d 1335, 1347 (discussing overlooked aspects as being limitations never claimed and thus never surrendered). We are not persuaded by Appellant’s argument that the reissue claims are directed to overlooked aspects for reciting a different embodiment than claimed. See App. Br. 13-35. Whether or not there are different embodiments is immaterial, as the Examiner has shown that the claims of the current reissue application are not wholly unrelated to the subject matter surrendered during the prosecution of the ʼ628 application which issued as the ʼ186 patent. Specifically, the patent dependent claims discussed supra show that the limitations added during reissue are related to the limitations directed to contracting with an owner of an image for use of said image in a graphic environment approved by said owner, said image characterizing a source of a product or service offered by said owner. Further, the existence of patent claims with limitations directed to checking the purchase of products using passwords (i.e., claims 42, 43, 54- 56, and 64-67) demonstrates that Appellant considered and did not overlook Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 7 limitations directed to checking as recited in the reissue claims. Thus, Appellant’s arguments directed to independent reissue claims 70 (App. Br. 14-28), 81 (App. Br. 28-31) and 89 (App. Br. 31-33) have not persuaded us that the reissue claims are directed to overlooked aspects of the invention. Independent Claim 70 and dependent claims 72, 73, 79, and 803 With respect to independent reissue claim 70, Appellant asserts that features directed to a) “[c]hecking said . . . password” (App. Br. 16-24; emphasis omitted), b) “[f]irst specialized content . . . recognizable as having the appearance of the product with which the first password was provided . . .” (App. Br. 24-26; emphasis omitted), c) “[t]he password is hidden from the user” (App. Br. 26-27), and d) “[d]ifferent appearance characters with different passwords” (App. Br. 27-28), all without a contracting step, represent overlooked subject matter. We are not persuaded because the Examiner has shown that these features were in fact considered and not wholly unrelated to the surrendered subject matter, as discussed supra. In addition to the patent claims discussed by the Examiner, we note patent claims 57 and 68 of the ‘186 patent discuss the product as a doll (a toy) and patent claims 56 and 66 of the ‘186 patent discuss the user obtaining a character of the purchased product. Thus, we concur with the Examiner there is ample evidence to support the Examiner’s finding that the features of independent reissue claim 70 directed to checking said password, first specialized content recognizable as having the appearance of the product with which the first password was provided, “[t]he password is 3 These claims are grouped together as Appellant does not separately address claims 72, 73, 79, and 80. Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 8 hidden from the user,” and different appearance characters with different passwords, are not overlooked subject matter. Accordingly, Appellant has not persuaded us that independent reissue claim 70 and reissue claims 72, 73, 79, and 80 dependent thereon are directed to overlooked aspects of the invention. With respect to dependent claims 74-78 and 93, Appellant’s arguments on pages 34-35 of the Brief are merely recitations of the claim language combined with an assertion that nothing in the ‘186 patent claims provides the claimed feature. Our reviewing court has held that such are not substantive arguments of Examiner error. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). For this this reason alone Appellant’s arguments regarding these dependent claims are not persuasive of error; nonetheless, we are also not persuaded of error for the following reasons. Dependent claim 74 With respect to dependent reissue claim 74, Appellant asserts that limitations directed to “the first specialized content provided responsive to checking the password includes two characters,” wherein “a first character [is] related to the product and a second character . . . is manipulated by another user,” without a contracting step, represents overlooked subject matter. App. Br. 34. As discussed supra with respect to independent reissue claim 70 (on which dependent reissue claim 74 directly depends), we concur Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 9 with the Examiner that the features of the user obtaining characters of the purchased product are not overlooked subject matter. Patent claims 55 and 63 are evidence of this, because patent claim 51, from which patent claim 55 ultimately depends, recites that there are plural images, some of which identify products or services of said organization (an organizational character) and because claim 63 recites plural characters each representing a user. Further, as discussed supra, the Examiner has shown that the use of a password was recited in the patent claims. Accordingly, Appellant has not persuaded us that dependent reissue claim 74 is directed to overlooked aspects of the invention. Dependent claim 75 With respect to dependent reissue claim 75, Appellant asserts that limitations directed to “providing reduced functionality in the environment if the user did not enter a password,” without a contracting step, represents overlooked subject matter. App. Br. 34. As discussed supra with respect to independent reissue claim 70 (on which dependent reissue claim 75 indirectly depends) and dependent reissue claim 74 (on which dependent reissue claim 75 directly depends), we concur with the Examiner that the feature of the user obtaining a character of the purchased product is not overlooked subject matter. Further, as discussed with respect to reissue claim 74, that there are plural images or characters, some of which identify products or services of said organization (an organizational character), are not overlooked subject matter. While the patent claims of the ʼ186 patent do not discuss reduced functionality in the environment if the user does not enter a password, the patent independent claims do recite plural users with Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 10 animated images representing users (characters provided to user) without requiring the verification of a sale (see, e.g., patent claim 51). Also, patent dependent claim 23 recites “said second user overriding said first user[’]s manipulation of said first image at least part of the time,” and this relates to functionality. Accordingly, Appellant has not persuaded us that dependent reissue claim 75 is directed to overlooked aspects of the invention. Dependent claim 76 With respect to dependent reissue claim 76, Appellant asserts that limitations directed to “the first character [being] a representation of the toy that was purchased, and the reduced functionality (that is provided according to claim 75) includes that the character is a generic character that is not a representation of the toy,” without a contracting step, represents overlooked subject matter. App. Br. 34. As discussed supra with respect to reissue claim 70 (on which dependent reissue claim 76 indirectly depends), dependent reissue claim 74 (on which dependent reissue claim 76 indirectly depends), and dependent reissue claim 75 (on which dependent reissue claim 76 directly depends), we concur with the Examiner that the feature of the user obtaining a character of the purchased product is not overlooked subject matter. Further, as discussed with respect to reissue claim 74, that there are plural images or characters, some of which identify products or services of said organization (an organizational character), are not overlooked subject matter. While the patent claims of the ʼ186 patent do not discuss a generic character that is not a representative of the toy, the patent independent claims do recite plural users with animated images representing users (characters provided to users) without requiring the verification of a sale Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 11 (see, e.g., patent claim 51). Accordingly, Appellant has not persuaded us that reissue claim 76 is directed to overlooked aspects of the invention. Dependent claim 77 With respect to reissue claim 77, Appellant asserts that limitations directed to “the user can block an activity of a second character,” and “[t]he reduced functionality (that is provided according to claim 75) includes that the user cannot block the activity of the first character,” without a contracting step, represents overlooked subject matter. App. Br. 35. As discussed above with respect to independent reissue claim 70 (on which dependent reissue claim 77 indirectly depends), we concur with the Examiner that the feature of the user obtaining a character of the purchased product is not overlooked subject matter. While the patent claims do not explicitly recite that “the user can block an activity of a second character,” patent dependent claim 23 recites “said second user overriding said first user[’]s manipulation of said first image at least part of the time,” and this is not wholly unrelated to a user blocking an activity of a second character. Accordingly, Appellant has not persuaded us that dependent reissue claim 77 is directed to overlooked aspects of the invention. Dependent claim 78 With respect to reissue claim 78, Appellant asserts that the limitation directed to “a first password [being] hidden on packaging,” without a contracting step, represents overlooked subject matter. App. Br. 35. As discussed supra with respect to independent reissue claim 70 (on which dependent reissue claim 78 directly depends), we concur with the Examiner that the features of the user obtaining characters of the purchased product are Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 12 not overlooked subject matter. Further, as discussed supra, the Examiner has shown that the use of a password was recited in the patent claims. While the patent claims do not discuss the password being hidden, a hidden password clearly relates to the use of a password. Further, we note that the patent claims recite the use of a password on the packaging of a product (patent claims 56, 57, and 67) which the ‘186 patent, in column 18, lines 19- 25, describes as the method of hiding the password. Accordingly, Appellant has not persuaded us that dependent reissue claim 78 is directed to overlooked aspects of the invention. Dependent claim 93 With respect to dependent reissue claim 93, Appellant asserts that the limitation directed to a hidden password, without a contracting step, represents overlooked subject matter. App. Br. 35. For the same reasons as discussed supra with respect to dependent reissue claim 78, Appellant has not persuaded us that dependent reissue claim 93 is directed to overlooked aspects of the invention. Issue II – Materially Narrowed To determine whether reissue claims violate the recapture rule involves a three step analysis. Youman, 679 F.3d at 1343. “Under the first step, we ‘determine whether and in what “aspect” the reissue claims are broader than the patent[] claims.’” Id. Under the second step, we “‘determine whether the broader aspects of the reissue claims relate to surrendered subject matter.” Id. “If the reissue claims are broader in a manner related to surrendered subject matter,” then under the third step, we Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 13 “‘determine whether the surrendered subject matter has crept into the reissue claim” (i.e., whether the reissue “claims are materially narrowed in a way that avoids substantial or whole recapture of the surrendered subject matter”). Id. at 1344-1345. Appellant does not contest the Examiner’s determination that the reissue claims are broader than the patent claims, but rather contests the finding of surrendered subject matter and the finding that the reissue claims are not materially narrowed. The determination of whether subject matter is surrendered involves “look[ing] to the prosecution history for arguments and changes to the claims made in an effort to overcome a prior art rejection.” Mostafazadeh, 643 F.3d at 1353. As discussed above, the Examiner found that during prosecution of the ʼ628 application which issued as the ʼ186 patent the claims were narrowed such that the limitations directed to contracting were narrowed to include that the contracting is for the use of the image in a graphic environment approved by said owner, and the image characterizing a source of a product or service. Further, the Examiner found that the claims were amended such that the computer display was narrowed to a graphics environment that is configured to allow emotional expressions of the users as well as physical interactions. We concur with the Examiner that these amendments resulted in surrender. The amendments were submitted on May 17, 2004 and were argued to overcome a prior art rejection based upon Megiddo and Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 14 Rodriguez.4 The amendments to independent claims 1, 52, and 64 in the ʼ628 application (renumbered to claims 1, 51, and 63, respectively, in the ʼ186 patent) were directed to both the contracting step and the computer display. Further, the September 1, 2004 notice of allowability included a statement of reasons for allowance which identified these limitations as the reasons for allowing the ʼ628 application. Thus, Appellant, by amending and narrowing the claim limitations directed to the contracting step and the computer display step, surrendered the contracting and graphical display limitations as recited in the originally filed claims of the ʼ628 application. We are not persuaded by Appellant’s arguments that claim 47 of the ʼ628 application (i.e., claim 46 of the ʼ186 patent) did not include contracting and that as such there is no surrender. App. Br. 21-22. This assertion is factually in error because independent claim 47, as originally filed in the ʼ628 application, included the limitation “at least one image being owned by an organization and used under contract with said organization.” Claim 47 was subsequently amended to delete that limitation and to recite limitations directed to (i) an image provided by an organization characterizing a source of a product or service, and (ii) the graphics environment being configured to allow emotional expressions of the users as well as physical interactions. Our reviewing court has said “when a patentee narrows the original claim in an effort to overcome a prior art rejection and makes arguments in support, the patentee surrenders the subject matter 4 The prior art rejection in the Office Action, mailed January 15, 2004, relied upon a finding that contracting for the use of an image was known, and cited Rodriguez as support for this feature. Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 15 broader than the patent[] claim.” Youman, 679 F.3d at 1344. Thus, Appellant’s argument that the ʼ628 application claim 47 does not recite a limitation directed to contracting has not shown that the amendment to the original claim did not result in surrender. We next look to whether the surrendered subject matter has crept back into the reissue claims. Appellant’s arguments directed to this issue assert that all of independent reissue claims 70, 81, and 89 have materially narrowing amendments, namely: (1) the checking, first specialized content having appearance of product with which first password was provided, password being hidden, and different appearance character with different passwords (independent reissue claim 70); (2) the hidden password and accepting input from user computer for selecting based on password (independent reissue claim 81); and (3) “checking that a first toy was provided to a user,” and “providing, based on said checking, a first graphical image that represents said first toy” (independent reissue claim 89). App. Br. 35-39. We are not persuaded that the reissue claims are materially narrowed with respect to the surrendered subject matter. As discussed supra, the Examiner identified narrowing amendments directed to two features of the reissue claims for which there is surrender, the contracting and the computer display. Appellant’s arguments do not address both of these, and thus, we do not need to reach the issue as to whether (1), (2), or (3) supra represents a material narrowing with respect to independent reissue claims 70, 81, and 89, respectively, because Appellant has not shown that the reissue claims are materially narrowed with respect to the surrender of the computer display Appeal 2013-009622 Application 11/859,491 Patent 6,910,186 B2 16 limitations.5 Appellant has not persuaded us that the Examiner erred in construing the surrendered subject matter and not considering independent reissue claims 70, 81, and 89 and the claims dependent thereon to be materially narrowed. Accordingly, we sustain the Examiner’s rejection of independent claims 70, 81, and 89, and claims 72-80, 82-88, and 90-94 dependent thereon, under 35 U.S.C. § 251 as improperly recapturing surrendered subject matter. DECISION We AFFIRM the Examiner’s decision to reject claims 70 and 72-94. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls 5 As discussed above, at least some of these limitations were present in the originally filed claims of the ʼ628 application. During prosecution of that application, the Examiner determined that at least some of the limitations were known in the prior art and would have been obvious, which suggests that such limitations are not materially narrowing.