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September 29, 2005

$1/2 Billion ReExam

5,838,906 was the lucky lotto number for Eolas to cash in a one-half billion dollar prize from Microsoft. It was seriously questioned whether the ticket was genuine. The Patent Office in re-exam affirmed it was. On what basis?

5,838,906 claimed an invention of letting users play with interactive software in their web browsers.

The examiner rejected critical claims using four- and five-way 103(a) combinations; heavy lifting by the examiner to need that much artillery for rejection.

MPEP 2143.03 (paraphrased by the examiner) - "The establishment of a prima facie case of obviousness requires that all the claim limitations must be taught or suggested by the prior art".

To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) . "All the words in a claim must be considered in judging the patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)

A core limitation in the claims, of automatically executed interactive objects, was not anticipated.

During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372, 54 UPSQ2d 1664, 1667 (Fed. Cir. 2000).

The claimed "interactive processing" was not anticipated per the disclosed definition: "Interprocess communication between the hypermedia browser and the embedded application program is ongoing after the program object has been launched". Interactivity was repeatedly and explicitly described in the '906 application.

A prima facie case of obviousness may be rebutted by showing that the art, in any material respect, teaches away from the claimed invention. In re Geisler, 116 F.3d 1465, 1471, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997).

The patent owner successfully argued that one of the five references used in combination for rejection, Toye, taught away from automatically starting the application running the interactive object.

If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).

If the proposed modification or combination would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959).

The patent owner successfully argued that the basis for rejection in proposed combination contradicted a fundamental principle of operation of the prior art references. In other words, a modification to the basic principles of operation of the prior art references would have to be presumed to support rejection, and that is unsupportable. Particularly, combination with Toye, "would turn that distributed system into a centralized database system, thereby destroying its distributed nature." Also against Toye was its intended use in collaborative document processing, a different purpose than the claimed invention, and a basis for arguing teaching away. There were other successful arguments against Toye.

The patent owner argued that "the general and nebulous Toye language regarding 'openness and flexibility' was not related to any possible motivation to combine the references."

The mere fact that references can be combined or modified does not render the resultant combination obvious unless the prior art also suggests the desirability of the combination. In re Mills, 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990).

To support the conclusion that the claimed invention is directed to obvious subject matter, either the references must expressly or impliedly suggest the claimed invention or the examiner must present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references. Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Inter. 1985).

c. It is required to consider the references in their entireties, i.e., including those portions that would argue against obviousness. Panduit Corp. v Dennison Manufacturing Company, 227 USPQ 337, 345 (CAFC 1985).

In weighing all the arguments made, the examiner considered this guideline -

The Patent Owner's arguments traversing the rejection need only prevail by the "preponderance of the evidence" standard to succeed in having the rejections set forth in the last office action withdrawn. The ultimate determination of patentability must be based upon consideration of the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQD2d 1443 (Fed. Cir. 1992).

Credit certainly goes to prosecutor Charles E. Krueger of Walnut Creek, CA.

More coverage from Patently-O.

Posted by Patent Hawk at September 29, 2005 2:20 PM | Prosecution