September 18, 2011
The boys at Catalina Marketing thought they had a hot idea, so they hired a rum prosecutor. 09/401,939 claims "distributing purchasing incentives to consumers from a main computer to a 'personal computer' over a computer network." This old idea got panned by the PTO, who resorted to an everyday dictionary to define "personal computer," as the '939 prosecutor hadn't bothered to nail down this critical claim term. Not that it would have mattered much.
In re Michael C. Scroggie (CAFC 2011-1016) nonprecedential; Judges Rader, Prost and O'Malley, per curium
The Board found that "[t]he ordinary and customary meaning of 'personal computer' is a computer built around a microprocessor for use by an individual." J.A. 26 (citing American Heritage Dictionary of the English Language (4th ed. 2000)). The Board noted that the specification of the '939 application did "not define a personal computer" and stated that "absent further definition in the Specification, the [interpretation was] to be guided by how one of ordinary skill would have understood the term." J.A. 29.
This court reviews factual findings of the Board for substantial evidence. See In re Gartside, 203 F.3d 1305, 1312-16 (Fed. Cir. 2000). Claims appealed from the Board receive the broadest reasonable meaning in light of the specification. See In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). In addition, the applicant may act as a lexicographer by setting out a definition in some manner within the patent disclosure. See Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992). A specification or file history must clearly identify an applicant's unique definition. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). "This Court thus reviews the PTO's interpretation of disputed claim language to determine whether it is 'reasonable.'" In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997)). "The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact." Gartside, 203 F.3d at 1316. This court reviews the Board's legal conclusions de novo. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000).
The first question before this court is whether the Board's interpretation of "personal computer" is reasonable. The representative claim recites only the term "personal computer." Nowhere in the specification does Scroggie act as a lexicographer and define that term. Specifically, the '939 application has no definition or explanation of "personal computer." Scroggie has not ventured to add such a limitation or definition by amendment.
To act as a lexicographer, an applicant must define claim terms with "reasonable clarity, deliberateness, and precision." In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). This court has previously determined that it is improper to "attempt to redefine the claimed invention by impermissibly incorporating language appearing in the specification into the claims," but it is proper for the specification of an application to be used "to interpret what the [Appellants] meant by a word or phrase in the claim." Id.
This court permits the PTO to use dictionary definitions in tandem with the specification and prosecution history to enlighten the broadest reasonable interpretation of a claim term. This court has previously held that "dictionary definitions are [ ] pertinent." In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007) (citing Philips, 415 F.3d at 1318). The Board omitted the phrase "as in an office or at home or school" as only exemplary and not part of the definition. This court discerns no error in this omission. As the Board stated, the omitted portion was not part of the definition because the "as in" is not limiting. Thus, the record supports the reasonableness of Board's interpretation.
The examiner had no problem finding prior art.
Obviousness requires evaluation of the "differences between the subject matter sought to be patented and the prior art" with an eye on "the subject matter as a whole . . . at the time the invention was made" from the perspective of "a person having ordinary skill in the art." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C § 103(a)). This inquiry focuses on three basic factual inquiries: "the scope and content of the prior art. . . ; differences between the prior art and the claims at issue. . . ; and the level of ordinary skill in the pertinent art. . . . ." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
Who egged this on to CAFC appeal? More money than brains.
Inventors - the smooth-talking patent prosecutor in your burb is probably taking you for a ride. As Steve Winwood once sang, "And the man in the suit has just bought a new car from the profit he's made on your dreams." If you want to get real about the prospects for an enforceable patent, call Platinum Patents. If you can bear reality and want the low-down on your chances of cashing in at the patent casino, ask for the sales prevention department, who'd just as soon kill a patent as look at an application. They won't waste your time or money. But if it looks like you've struck pay dirt, they'll be the first to help shovel.
Posted by Patent Hawk at September 18, 2011 1:37 PM | Prosecution