Ex Parte Tsukidate et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201412930767 (P.T.A.B. Feb. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RYOTA TSUKIDATE, KENICHI FUJITA, SHIGEKI KANEKO, and YOSHIYASU TAKEUCHI1 ________________ Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 Technology Center 2400 ________________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and JASON V. MORGAN, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL 1 Panasonic Corporation (formerly known as Matsushita Electric Industrial Co., Ltd.) is the Real Party in Interest. App. Br. 3. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 2 Introduction Appellants seek another reissue of original patent application 08/956,344 (“’344 App.” or “original patent application”), now U.S. 6,507,950 B1 (“’950 patent” or “original patent”). This application is a Continuation Reissue Application of Divisional Reissue Application 11/338,588 (“’588 application” or “’588 App.”), which is a Divisional Reissue Application of Reissue Application 11/033,490 (“’490 application” or “’490 App.”), now U.S. RE41,257 E. This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 41 and 42. Claims 1-40 (which appear in the ’950 patent) are canceled. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Related Proceedings The present application relates to Continuation Reissue Application 13/216,835, the subject of Appeal No. 2013-007207 (Examiner affirmed; Dec. 13, 2013), and the ’588 application, the subject of Appeal No. 2014- 000119 (Examiner reversed; Jan. 29, 2014). App. Br. 4. The present application also relates to Continuation Reissue Applications 13/216,804 and 13/216,820, which are both expressly abandoned. Ans. 3. Invention Appellants invented a program information broadcasting method “aimed to minimize time for retrieval of program by viewers in operating an electronic program guide.” Abst. From the data constituting the master data, minimal necessary items for preparation of a program table are extracted, and a program basic information 22 is prepared. Said master data and Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 3 said program basic information are transmitted simultaneously with the broadcasting, and said program basic information is received, reproduced and displayed before receiving of the master data at a receiving terminal unit 31 is completed. As a result, the program basic information having far less amount of data [sic] than the master data can be incorporated . . . . Id. Exemplary Claim Claim 41, reproduced below with key recitations emphasized, is illustrative: 41. A program information broadcasting method, comprising: preparing program basic information including a title and an ID for each of a plurality of programs; and transmitting said program basic information; wherein said program basic information further comprises an address for each of said plurality of programs, each address specifying an existence and location of at least one of a plurality of text data included in master information; and wherein said program basic information and said master information are derived only from a same plurality of programs to be broadcast. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 4 Rejections2 The Examiner rejects claims 41 and 42 under 35 U.S.C. § 112, first paragraph, as failing to meet the enablement requirement. Ans. 9. The Examiner rejects claims 41 and 42 under 35 U.S.C. § 251 as impermissibly recapturing surrendered subject matter. Ans. 9-17. ISSUES 1. Did the Examiner err in finding that claim 41 is not enabled under 35 U.S.C. § 112, first paragraph, because it improperly excludes limitations that are critical or essential to the practice of the invention? 2. Did the Examiner err in finding that reissue claim 41 improperly recaptures surrendered subject matter? ANALYSIS 35 U.S.C. § 112, first paragraph The Examiner notes that claim 41 does not include limitations requiring simultaneous transmission of master data and program basic 2 In addition to these rejections, the Examiner objected to Appellants’ amendments to the Specification. Ans. 3-6, 45-48; App. Br. 26-27. After the Examiner filed an Answer in this Appeal, Appellants filed a Petition under 37 C.F.R. § 1.181 seeking supervisory review of the Examiner’s new matter objection. Petition for Review (Sept. 5, 2013). The Technology Center 2400 Director dismissed the petition on the merits. Decision on Petition (Nov. 1, 2013). As Appellants correctly noted, disposition of this issue through petition was appropriate given the Examiner did not reject claims reciting similar matter under 35 U.S.C. § 112. Petition for Review 1 (Sept. 5, 2013). Lacking any such rejection, there is nothing within the jurisdiction of the Board concerning the Examiner’s objection. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 5 information, with the program basic information being received, reproduced, and displayed before the master data is completely received. Ans. 9. The Examiner further submits “the disclosure only has support for the basic information which includes information which includes a minimum necessary of items extracted from all programs in the master data.” Id. The Examiner finds that, based on the original disclosure’s inclusion of these steps in all disclosed embodiments, the excluded limitations are critical or essential to the practice of the invention. Id. Thus, the Examiner concludes the Specification does not enable claim 41. Id. (citing In re Mayhew, 527 F.2d 1229 (CCPA 1976)). Appellants contend the Examiner erred because the Examiner does not “point to any portion of Appellants’ disclosure that explicitly states that the” excluded recitations are “essential.” App. Br. 10. Appellants further note “the Examiner’s rejection does not discuss any of the factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), as they relate to undue experimentation.” App. Br. 10. The Examiner maintains the 35 U.S.C. § 112, first paragraph, rejection, finding “[t]he whole disclosure is geared towards the extraction feature, where the basic information is extracted from the master data.” Ans. 36. A rejection for failure of a claim to recite a necessary element is appropriate in cases such as a method claim that omits “a step without which the invention as claimed [is] wholly inoperative (meaning it simply would not work and could not produce the claimed product).” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1337-38 (Fed. Cir. 2003) (citing Mayhew, 527 F.2d at 1233). In Mayhew, for example, the Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 6 Specification provided evidence that use of a cooling zone in a particular location was necessary because the Specification explicitly stated the disclosed method was “‘practicable because of special cooling apparatus, specially located.’” 527 F.2d at 1233. The Examiner’s findings, however, do not identify comparable evidence showing that any of the identified elements missing in claim 41 make the invention practicable such that their absence leaves the claimed invention wholly inoperative. Ans. 9. Moreover, the Examiner’s findings do not address any of the Wands factors. Id. Therefore, we agree with Appellants that the Examiner erred in rejecting claim 41 for lack of enablement. App. Br. 9-11. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, first paragraph, rejection of claim 41, or of claim 42, which is similarly rejected. 35 U.S.C. § 251 During prosecution of the original patent application, the Examiner rejected claim 1 under 35 U.S.C. § 102(b) as being anticipated by Chaney (U.S. 5,515,106). ’344 App. Non-Fin. Rej. 3 (Mar. 1, 2002). Appellants amended claim 1 to include the new recitation “said program basic information including extracted items of all of programs included in said master data compilation so that the amount of data in said basic program information is considerably smaller than that of said master data.” ’344 App. Amend. 14-15 (June 3, 2002) (emphasis added). Appellants also modified claim 1 to properly recite a system claim and to maintain a proper antecedent basis among terminology used therein. App. Br. 19. Appellants added program information broadcasting method claim 25, which Appellants noted substantially corresponded to claim 1 as amended. ’344 App. Amend. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 7 13 (June 3, 2002). After these claim amendments, newly introduced claim 25 was closer in form and substance to claim 1 as originally filed than to claim 1 as amended. To illustrate the substantive changes introduced in the amendments, as opposed to changes in form to claim 1, claim 25 of the ’950 patent (“’950 patent claim 25”) is reproduced below. The differences between claim 1 as originally filed (“original ’344 application claim 1”) and patent claim 25 as introduced and allowed are illustrated using strike-through (for deletions from original ’344 application claim 1) and underline (for insertions into ’950 patent claim 25) formatting: A program information broadcasting system method, comprising the steps of: preparing a master data of program information for recognizing a broadcasting program with wherein program elements of said broadcasting program being are divided into a plurality of items and being turned wherein said items are converted to data at a broadcasting center; preparing a program basic information with list, comprising a minimal number of items that are necessary items for the preparation of a program guide being, that are extracted from said data constituting said master data, said program basic information including extracted items from all programs included in said master data so that the amount of data in said program basic information is substantially smaller than the amount of data in said master data; transmitting said master data and said program basic information simultaneously with the broadcasting a program; and receiving, reproducing and/or displaying said program basic information before completion of receipt of said master data at a receiving terminal unit. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 8 Appellants argued that Chaney did not anticipate the amended and newly added claims: Claims 1-10, 14-16 and 19-24 stand rejected as being anticipated by Chaney et al. (’106). Although Chaney et al. disclose that program information is divided into two kinds one of which is simplified in the same manner as in the present invention, the disclosure of Chaney et al. differs from the present invention as follows: Chaney et al. disclose transmission of program information by dividing the same into two kinds, such that one includes information of programs to be broadcast within a short viewing period such as a few days and the other includes information of programs to be broadcast within a longer viewing period, such as 13 days or more. The reference defines “master data” as related to a predetermined, relatively short, viewing period; and “special data” as data related to a period longer than said predetermined, shorter, viewing period. According to the present invention, program information is divided into two such lists of data, one that includes items that are minimally necessary for the preparation of a program guide and the other that includes all items. The second data set is detailed program information that can be displayed when selected by a user. According to the Chaney et al. disclosure, information of programs to be broadcast within a short period of time can be derived shortly whereas information of programs to be broadcast within a longer period of time, including a period after the short period, cannot be derived shortly. By comparison, according to the present claimed invention, the basic information includes minimally necessary items of information of programs to be broadcast over a short period of time that can be displayed quickly and without delay because such data are sent from the broadcasting center to each terminal and received by each terminal before the master data list is completely received. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 9 From the above it will be understood that the present invention is superior in that information on any programs can be displayed quickly irrespective of the broadcasting date or time of the program. Each of independent claims 1, 14 and 19 recites the requirement for the above-mentioned master data and basic data, which are not disclosed or taught by Chaney et al. . . . . Newly added claims 25-37 are method claims substantially corresponding to apparatus claims 1-24. ’344 App. Amend. 10, 13 (June 3, 2002) (emphases added). The Examiner allowed amended claim 1 and newly added claim 25, noting that: Chaney does not disclose broadcasting/generating a master guide of program information, where a basic guide of program information is assembled by extracting items of all programs from the master guide, and transmitting both guides simultaneously to a receiver, where the special guide is displayed prior to completion of receipt of the master guide. ’344 App. Notice of Allowance 2 (Aug. 28, 2002) (emphasis added). Appellants paid the issue fee and the USPTO issued the ’950 patent on January 14, 2003. Nearly two years later, Appellants filed the ’490 application, declaring that in “claim 25 of the [’950] patent there was a requirement that the basic program information list was required to be extracted from the master data. It is believed that this requirement was too limiting on the scope of the claims of the instant patent.” ’490 App. Reissue Decl. 2 (Jan. 11, 2005). Appellants filed the ’588 application as a Divisional Reissue Application of the ’490 application, declaring the same error. ’588 App. Reissue Decl. 2 Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 10 (Jan. 24, 2006). On January 15, 2011, Appellants filed this application as a Continuation Reissue Application of the ’588 application. The Examiner rejects reissue claim 41 under 35 U.S.C. § 251 as improperly recapturing surrendered matter because reissue claim 41 excludes recitations in ’950 patent claims 1 and 25 introduced by Appellants to overcome the 35 U.S.C. § 102(b) rejection made during prosecution of the ’344 application. Ans. 38. In particular, the Examiner finds that “the distinction between [Chaney] and the claims was the preparation of a master and basic guide, wherein the basic guide/information includes extracted items of all the programs in the master guide wherein the basic guide was received/reproduced/displayed prior to completion of receipt of the master guide.” Id. at 14. Appellants contend the Examiner erred in this rejection. App. Br. 15- 26. To analyze the issue of improper recapture through reissue, we apply a three-step process. In re Youman, 679 F.3d 1335, 1343-47 (Fed. Cir. 2012); In re Mostafazadeh, 643 F.3d 1353, 1358-59 (Fed. Cir. 2011) (citing In re Clement, 131 F.3d 1464, 1468-70 (Fed. Cir. 1997)). Step 1: First we determine whether, and in what aspects, the reissue claims are broader than the patent claims. Youman, 679 F.3d at 1343. Here, the Examiner correctly finds that reissue claim 41 omits the ’950 patent claim 1 (and ’950 patent claim 25) recitation: “said program basic information including extracted items of all of programs included in said master data compilation so that the amount of data in said basic program information is considerably smaller than that of said master data.” Ans. 12-14. Appellants Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 11 acknowledge the exact words of the recitation are not present in reissue claim 41. App. Br. 16-18. Because of these omissions, reissue claim 41 is broader than ’950 patent claims 1 and 25 in at least two respects. First, ’950 patent claims 1 and 25 require that, in preparing a program basic information list, “said program basic information includ[es] extracted items from all programs included in said master data” (emphasis added). In contrast, reissue claim 41 merely recites “preparing program basic information . . . for each of a plurality of programs . . . to be broadcast” and “wherein said program basic information further comprises an address for each of said plurality of programs, each address specifying an existence and location of at least one of a plurality of text data included in master information.” Thus, reissue claim 41 is broader than ’950 patent claims 1 and 25 with respect to the origin of the program basic information. Instead of requiring extraction of program basic information from the master data, the program basic information can be prepared using another source. Appellants acknowledge reissue claim 41 is broader in this respect since this extraction requirement is at least one of the supposed errors Appellants seek to correct. ’490 App. Reissue Decl. 2 (Jan. 11, 2005); ’588 Reissue Decl. 2 (Jan. 24, 2006); Add’l Supp. Reissue Decl. 2 (Feb. 15, 2011). Second, reissue claim 41 does not provide a counterpart to the recitation “so that the amount of data in said program basic information is substantially smaller than the amount of data in said master data.” Thus, reissue claim 41 is broader than ’950 patent claims 1 and 25 with respect to the relationship between the amount of data in the program basic information relative to the amount of data in the master data. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 12 Because two features in the omitted recitation, “said program basic information including extracted items from all programs included in said master data so that the amount of data in said program basic information is substantially smaller than the amount of data in said master data,” are not found in reissue claim 41, reissue claim 41 is broader than ’950 patent claims 1 and 25 in these aspects as detailed above. Step 2: Next, we determine whether the broader aspects of the reissue claims relate to surrendered subject matter. Youman, 679 F.3d at 1343. Appellants contend that in amending the original patent application, they “only argued features that were present in the originally filed claims, not features added by the June 3, 2002[,] Amendment.” App. Br. 22. We disagree with Appellants. As Appellants submitted: Chaney et al. disclose transmission of program information by dividing the same into two kinds, such that one includes information of programs to be broadcast within a short viewing period such as a few days and the other includes information of programs to be broadcast within a longer viewing period, such as 13 days or more. ’344 App. Amend. 10 (June 3, 2002). In other words, Appellants argued that Chaney’s division of program information separated programs based on broadcast time, with programs to be broadcast sooner placed in a first dataset and programs to be broadcast later in a second dataset. Appellants argued that in the claimed invention: program information is divided into two such lists of data, one that includes items that are minimally necessary for the preparation of a program guide and the other that includes all Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 13 items. The second data set is detailed program information that can be displayed when selected by a user. ’344 App. Amend. 10 (June 3, 2002) (emphasis added). In other words, Appellants argued that, unlike Chaney’s time-based division program information, their claimed invention divides program information based on detail-level (i.e., program basic information containing minimal necessary items and master data including all data). Appellants emphasized that their invention is “superior [to Chaney] in that information on any programs can be displayed quickly irrespective of the broadcasting date or time of the program.” Id. (emphasis added). The ’950 patent claims 1 and 25 recitation “said program basic information including extracted items from all programs included in said master data so that the amount of data in said program basic information is substantially smaller than the amount of data in said master data” is key to this distinction because it requires the program basic information include items from all of the programs included in the master data. See ’344 App. Notice of Allowance 2 (Aug. 28, 2002) (“Chaney does not disclose . . . where a basic guide of program information is assembled by extracting items of all programs from the master guide . . . .” (emphasis added)). Because this recitation, and this distinguishing feature in particular, were not in the original ’344 application claim 1, this omitted recitation relates to subject matter surrendered by Appellants during the ’344 application prosecution. Step 3: Finally, we determine whether the reissue claims materially narrow the claims relative to the original claims (i.e., the original application’s claims before amendment or cancellation) such that Appellants avoid full or Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 14 substantial recapture of the subject matter surrendered during prosecution. Youman, 679 F.3d at 1345. As discussed in step 2, original claim 1 did not require that the program basic information include items from all of the programs included in the master data. As further discussed in step 2, Appellants’ arguments during the ’344 application prosecution show that ’950 patent claims 1 and 25 distinguish Chaney because of this feature. That is, Chaney divides its program data based on time, with first and second lists having information for different programs while the basic program information and master data of ’950 patent claims 1 and 25 both have information, at different levels of detail, for the same programs. This distinguishing feature is at the core of the surrendered subject matter. Reissue claim 41 has recitations directed to this particular feature. Specifically, reissue claim 41 recites: (1) “preparing program basic information . . . for each of a plurality of programs . . . to be broadcast”; (2) “wherein said program basic information further comprises an address for each of said plurality of programs, each address specifying an existence and location of at least one of a plurality of text data included in master information”; and (3) “wherein said program basic information and said master information are derived only from a same plurality of programs to be broadcast” (emphases added). While the language of reissue claim 41 differs from ’950 patent claims 1 and 25, the effect is substantially similar because the basic program information has the complete set of data pertaining to the “plurality of programs to be broadcast.” The master information dataset, which derives “only from a same plurality of programs to be broadcast,” cannot contain data for additional or different programs to Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 15 be broadcast. Thus, in contrast to original ’344 application claim 1, reissue claim 41 requires that the program basic information include items from all of the programs included in the master data. This feature is worded differently and is not as limiting as the related feature in ’950 patent claims 1 and 25. Nonetheless, reissue claim 41 significantly narrows original ’344 application claim 1 with respect to the surrendered subject matter. As discussed under step 1, reissue claim 41 omits other features such that reissue claim 41 is broader than ’950 patent claims 1 and 25 in certain aspects. The broadening impact of these omissions does not outweigh the narrowing impact of the requirement that the claimed basic program information contains information for all the programs in the master information. Appellants, in distinguishing the ’950 patent claims 1 and 25 from Chaney, did not heavily rely on either: (1) the source of the program basic information or (2) the relationship between the amount of the data in the program basic information and the amount of data in the master data (i.e., the master information). ’344 App. Amend. 10, 13 (June 3, 2002). Therefore, we find that reissue claim 41 is materially narrowed relative to original ’344 application claim 1 such that it avoids full or substantial recapture of the subject matter surrendered during the ’344 application prosecution. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 251 rejection of reissue claim 41, and reissue claim 42 which contains the same materially narrowing recitations. Appeal 2014-001908 Application 12/930,767 Patent 6,507,950 16 DECISION We reverse the Examiner’s 35 U.S.C. § 112, first paragraph, rejection of claims 41 and 42. We reverse the Examiner’s 35 U.S.C. § 251 rejection of claims 41 and 42. REVERSED bab Copy with citationCopy as parenthetical citation