The opinion in support of the decision being entered
`today was not written for publication and is not
`binding precedent of the Board.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`
`Ex parte LAWRENCE B. LOCKWOOD
`
`
`Appeal No. 2005—2411
`
`ON BRIEF
`
`Application No. 08/418,772
`MAILED
`
`
`
`
`U.S. PATENT AND TRADEMARK OFFICE
`BOARD OF a’ATENT APPEALS
`AN INTERPRENCE
`
`
`AUG 3 0 2005
`
`Before HAIRSTON, KRASS and SAADAT, Administrative Patent Judges.
`
`KRASS, Administrative Patent Judge.
`
`Decision On Appeal
`
`This is a decision on appeal from the final rejection of
`
`claims 1—17.
`
`The invention is directed to an automatic data processing
`
`system comprising a searchable mass storage and at least one user
`
`station.
`
`Each user station relies on sounds, video images, and
`
`textual display media to assist the user in the quest for
`
`-1-
`
`Lockwood Exhibit 2011
`
`GSIV.L0dflNOOd
`
`IPR2014-00025
`
`Lockwood Exhibit 2011
`GSI v. Lockwood
`IPR2014-00025
`
`
`today was not written for publication and is not
`binding precedent of the Board.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE BOARD OF PATENT APPEALS
`AND INTERFERENCES
`
`
`Ex parte LAWRENCE B. LOCKWOOD
`
`
`Appeal No. 2005—2411
`
`ON BRIEF
`
`Application No. 08/418,772
`MAILED
`
`
`
`
`U.S. PATENT AND TRADEMARK OFFICE
`BOARD OF a’ATENT APPEALS
`AN INTERPRENCE
`
`
`AUG 3 0 2005
`
`Before HAIRSTON, KRASS and SAADAT, Administrative Patent Judges.
`
`KRASS, Administrative Patent Judge.
`
`Decision On Appeal
`
`This is a decision on appeal from the final rejection of
`
`claims 1—17.
`
`The invention is directed to an automatic data processing
`
`system comprising a searchable mass storage and at least one user
`
`station.
`
`Each user station relies on sounds, video images, and
`
`textual display media to assist the user in the quest for
`
`-1-
`
`Lockwood Exhibit 2011
`
`GSIV.L0dflNOOd
`
`IPR2014-00025
`
`Lockwood Exhibit 2011
`GSI v. Lockwood
`IPR2014-00025
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`information and/or services. Data entered by the user is
`
`automatically processed with information already stored.
`
`The
`
`processing is said to be “according to forward—chaining sequences
`
`including analyzing said data in the system in order to formulate
`
`a more focused answer or an additional inquiry to be presented to
`
`the user” (principal brief-page 4).
`
`Thus,
`
`the system
`
`automatically analyzes and interprets stored data in combination
`
`with new queries and answers in order to lead the user down a
`
`more effective search path.
`
`Representative independent claim 8 is reproduced as follows:
`
`An automated multimedia system for data processing for
`8.
`delivering information on request to at least one user, which
`comprises:
`
`at least one computerized station;
`
`means for accepting and processing an user’s entry according
`to backward-chaining and forward—chaining sequences,
`including:
`
`means for analyzing and for combining a user's entry with a
`set of stored data, and means,
`responsive to said means for
`analyzing and for combining,
`for formulating a query and
`outputting said query to said user; and
`
`means for delivering information to said user.
`
`No references are relied on by the examiner.
`
`Claims 1-17 stand rejected under 35 U.S.C.
`
`§ 112, first
`
`paragraph, as relying on an inadequate written description.
`
`-2-
`
`
`
`Appeal No. 2005—2411
`Application No. 08/418,772
`
`Reference is made to the briefs and answer for the
`
`respective positions of appellant and the examiner.
`
`QElfllQfl
`
`At the outset, we note that there is a prior decision by
`
`this Board relating to the instant claimed subject matter. That
`
`decision, Appeal No. 1999-0393,
`
`rendered September 25, 2000,
`
`affirmed the examiner's decision regarding a rejection of claims
`
`1—15 under 35 U.S.C. § 103 but reversed the examiner’s decision
`
`anent a rejection of claims 8—17 under 35 U.S.C. § 112, first
`
`paragraph and a rejection of claims 16 and 17 under 35 U.S.C.
`
`§ 103.1
`
`The rejection under 35 U.S.C. § 112, first paragraph,
`
`in
`
`that decision involved the enablement clause of that statutory
`
`section,
`
`the examiner taking the position that the disclosure
`
`supported only claims which were limited to a system for
`
`processing a loan, and not claims directed to the broader
`
`“automated multimedia data processing system.”
`
`The issue before us in the instant case is whether there is
`
`an adequate written description for the claimed “according to
`
`backward—chaining and forward—chaining sequences.”
`
`
`
`1That decision referred back to still an earlier decision in
`Appeal No. 1991—1232,
`rendered July 31, 1991.
`
`._3_
`
`
`
`Appeal No. 2005—2411
`Application No. 08/418,772
`
`The written description requirement is separate from the
`
`enablement requirement of 35 U.S.C. 112; it is not necessary that
`
`the claimed subject matter be described identically but that the
`
`originally filed disclosure convey to those skilled in the art
`
`that appellant had invented the subject matter now claimed.
`
`Precisely how close the original description must come to comply
`
`with the description requirement must be determined on a case by
`
`case basis as a question of fact.
`
`In re Barker, 194 USPQ 470
`
`(CCPA 1977), cert den., sub. nom., Barker v. Parker, 197 USPQ 271
`
`(1978);
`
`In re Wilder, 222 USPQ 369 (Fed. Cir. 1984), cert den.,
`
`sub. nom.; Wilder v. Mossinghoff, 105 S. Ct. 1173 (1985).
`
`At page 4 of our decision of September 25, 2000, we noted
`that it was not clear whether the examiner was maintaining a
`
`rejection of claims based on the written description section of
`
`35 U.S.C. § 112, but that,
`
`in any event, we would not sustain
`
`such a rejection because the examiner provided no reason for
`
`finding the disclosure deficient. However,
`
`the claimed
`
`“according to backward-chaining and forward-chaining sequences"
`
`was not one of the issues,
`
`regarding any rejection based on the
`
`first paragraph of 35 U.S.C. § 112,
`
`in our decision of September
`
`25, 2000.
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`This cited portion of the claims was referred to by us, at
`
`pages 4-5, of that decision, but it was in reference to a
`
`rejection of claims 16 and 17 under 35 U.S.C. § 103. We
`
`indicated therein that we could not sustain the rejection under
`
`35 U.S.C.
`
`§ 103, but we noted that “according to backward-
`
`chaining and forward—chaining sequences” did not appear to be
`
`part of the original disclosure and that, perhaps,
`
`there might be
`
`an issue with regard to the written description requirement of
`
`35 U.S.C.
`
`§ 112.
`
`With this as a background,
`
`the examiner deemed it wise to
`
`initiate a rejection of the instant claims under 35 U.S.C. § 112,
`
`first paragraph, based on an inadequate written description to
`
`support
`
`the claimed “according to backward-chaining and forward—
`
`chaining sequences," bringing us to the present issue.
`
`Appellant asserts that there are two issues to be resolved,
`
`the first being whether it was proper for the examiner to apply
`
`this new rejection after the initial rejection was not sustained
`
`by the Board, and the second going to the merits of whether
`
`claims 1—17 do,
`
`in fact, contain subject matter which was not
`
`described in the specification.
`
`As to the first issue, we do not agree with appellant as the
`
`examiner was well within her rights to make the rejection.
`
`-5-
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`Appellant may not rely on our previous decision because we made
`
`no finding as to this issue therein.
`
`In fact,
`
`there was no
`
`rejection in the earlier case based on a lack of written
`
`description as to the claimed “according to backward—chaining and
`
`forward—chaining sequences.” While appellant asserts that we
`
`were satisfied with the specification being supported by a
`
`dictionary definition of the terms, or we “would have formulated
`
`a new ground for rejection or remanded the claims for
`
`reconsideration by the Examiner” (principal brief-page 7),
`
`appellant’s reasoning is faulty. Whether we choose to make a new
`
`ground of rejection,
`
`to remand to the examiner, or to do nothing
`
`but note a possible trouble spot,
`
`is purely discretionary with
`
`the Board. Nothing should be read into our choosing not to make
`
`a new ground of rejection.
`
`Appellant notes that “...the allowance of Claims 16 and 17
`
`was final and binding upon the Examiner” (principal brief—page
`
`7).
`
`If appellant is referring to our reversal of the rejection
`
`of claims 16 and 17 in the previous case,
`
`this was from an
`
`entirely different ground of rejection. Moreover, decisions of
`
`the Board do not “allow” claims. Our decisions are merely
`
`findings of propriety/impropriety of an examiner’s particular
`
`rejection. Merely because we may find an examiner’s particular
`
`-6-
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`rejection of a claim to be improper,
`
`for some specific reason,
`
`this is not meant to imply that the subject matter of that claim
`
`is patentable.
`
`Indeed, it may be unpatentable for some other
`
`reason; it may be unpatentable over some prior art not of record
`
`and not before us. Our decisions are very specific to the very
`
`particular rejection and reasoning before us, based on all the
`
`evidence of record. Nothing more should be read into our
`
`decisions regarding the ultimate patentability of a particular
`
`claim. Rather than a finding of patentability of a particular
`
`claim, an affirmance by the Board may be more accurately
`
`interpreted as a finding of unpatentability of a particular claim
`
`while a reversal may be more accurately interpreted as a finding
`
`of a particular claim to be not unpatentable over the specific
`
`ground of rejection and the specific evidence provided by the
`
`examiner. That is not to say that certain claimed subject matter
`
`may be unpatentable for some reason and in view of some evidence
`
`not before the Board.
`
`Accordingly,
`
`the examiner was well within her rights to
`
`initiate this new ground of rejection based on the written
`
`description requirement of 35 U.S.C. § 112.
`
`If appellant feels
`
`that there was some procedural error in the examiner’s
`
`establishment of this new ground of rejection, appellant could
`
`_7_
`
`
`
`Appeal No. 2005—2411
`Application No. 08/418,772
`
`have petitioned the matter to the Director.
`
`The Board deals with
`
`substantive, rather than procedural, matters.
`
`Now,
`
`the question remains as to whether the examiner’s
`
`rejection was proper.
`
`The examiner’s position is that “according to backward—
`
`chaining and forward-chaining sequences” is not supported by the
`
`original disclosure because the original disclosure “fails to
`
`provide a written description of how the process of accepting and
`
`processing of requests are done according to backward—chaining
`
`and forward—chaining sequences” (answer—page 4).
`
`Appellant cites the IBM Dictionary of Computing for a
`
`definition of “forward-chaining”:
`
`An iterative procedure for solving a problem by which
`the problem is transformed into...a proven proposition
`applied to the premises, and another problem to be
`solved until a conclusion is reached or no further
`inferences can be made (principal brief—page 8).
`
`Using this definition, and admitting that the terms
`
`“backward—chaining” and “forward—chaining” do not appear in the
`
`original disclosure, appellant cites page 11,
`
`lines 13—20, of the
`
`instant specification:
`
`they
`Once all the proper answers have been accepted,
`are processed 146 by the terminal data processor 113.
`This process may involve analyzing certain key answers
`in order to identify any element or data that would
`
`-8...
`
`
`
`Appeal No. 2005—2411
`Application No. 08/418,772
`
`automatically disqualify the applicant. Depending upon
`the result of that first analysis, more questions 147
`may be presented to the applicant in order to refine the
`data necessary for a thorough assessment of his
`qualifications (emphasis added by appellant—page 9 of the
`principal brief).
`
`Appellant then uses a standard dictionary2 to define
`
`“analysis” as
`
`A method of proving a proposition by assuming the
`result and working backward to something that is known
`to be true.
`
`Appellant contends that the definition of “analyzing” and
`
`“forward—chaining” “are the expression of the same reasoning
`
`process” (principal brief—page 9) and that therefore the
`
`“essence” of the term “forward-chaining” is found in the
`
`specification at page 11,
`
`lines 13-20.
`
`The examiner argues that appellant may not rely on
`
`dictionary definitions because “according to backward—chaining
`
`and forward-chaining sequences” is “essential material” and
`
`appellant may not rely on other materials to supply deficiencies
`
`in the specification (see page 10 of the answer).
`
`The test for written description is whether the disclosure
`
`of the application as originally filed reasonably conveys to the
`
`
`
`2Random House Compact Unabridged Dictionary, Special Second
`Edition—Random House, New York, page 74
`
`-9-
`
`
`
`Appeal No. 2005—2411
`Application No. 08/418,772
`
`artisan that the inventors had possession at that time of the
`
`later claimed subject matter. Vya§;§gth_lng4_yé_Mahg££ar, 935
`
`F.2d 1555, 19 USPQZd 1111 (Fed. Cir. 1991);
`
`ln_r§_fia§lgw, 707
`
`F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983).
`
`Thus,
`
`the question here is whether appellant had possession
`
`of processing data “according to backward-chaining and forward—
`
`chaining sequences” at the time of filing the instant
`
`application.
`
`We find nothing wrong with employing a dictionary in order
`
`to determine the meaning of a disputed claim term unless some
`
`other, unusual, meaning, argued by an applicant,
`
`is to be
`
`ascribed to the claimed term.
`
`In the instant case,
`
`the examiner
`
`does not dispute the definition given to the term “according to
`
`backward—chaining and forward—chaining sequences" by the
`
`dictionary cited by appellant.
`
`The examiner merely notes that
`
`the IBM Dictionary was published in August 1993, while the Random
`
`House Dictionary was published no earlier than 1987 and so they
`
`“cannot be considered as prior art to provide a proper support to
`
`the term” “according to backward—chaining and forward—chaining
`
`sequences.”
`
`Appellant responds by attacking the examiner for not earlier
`
`pointing out that the references have defective filing dates,
`
`so
`
`-10—
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`that appellant could have had an opportunity to submit earlier
`
`references.
`
`The time at which a defect is pointed out is
`
`immaterial to the issue at hand.
`
`If a prior art reference is not
`
`viable because it has an improper date, it is not a viable prior
`
`art reference, period, as a matter of law, no matter what the
`
`examiner may or may not have done.
`
`The requirement of a proper
`
`date is one of statute.
`
`In the instant case, however,
`
`the
`
`dictionaries are not employed as “prior art,” purporting to be a
`
`bar to patentability under
`
`35 U.S.C. § 102 or 103. Rather,
`
`the dictionaries here are merely
`
`used as standard reference works to show the definition of the
`
`terms “according to backward-chaining and forward-chaining
`
`sequences" and “analysis.” We have no evidence to show, nor do
`
`we have any reason to believe,
`
`that the definition of these terms
`
`had changed, or would have had any different meaning between the
`
`time of the filing of the instant application and the publication
`
`dates of the dictionaries.
`
`In any event, appellant attaches to
`
`the reply brief, further evidence of the definitions of “forward—
`
`chaining” and “backward—chaining”, at pages 186 and 188 of
`
`“Advances in Computers—Volume 22, Academic Press 1983.”
`
`Accordingly, we accept the definition of “forward—chaining”
`
`cited in the IBM Dictionary and the definition of “analysis”
`
`-11-
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`cited in the Random House Dictionary, as well as “forward-
`
`chaining” referring to data—driven control(page 186 of “Advances
`
`in Computers”) and “backward-chaining” referring to goal-driven
`
`control
`
`(page 188 of “Advances in Computers”). Specifically with
`
`regard to “backward—chaining,” the examiner does not appear to
`
`dispute appellant's assertion, at page 8 of the principal brief,
`
`that this term is “part of the prior art and is not particularly
`
`relevant to the issue.”
`
`An invention claimed need not be described ipsis verbis in
`
`the specification in order to satisfy the disclosure requirements
`
`of 35 U.S.C. 112.
`
`Ex arte Holt, Bd Pat App & Inter, 4/23/91, 19
`
`USPQ2d 1211.
`
`Thus, if the cited portion of page 11,
`
`lines 13—21,
`
`of the instant specification, describes what is entailed by the
`
`definition of a “forward—chaining sequence,” albeit the term
`
`“forward-chaining sequence” is never used,
`
`then there would be
`
`sufficient written description to permit the claimed “backward-
`
`chaining and forward—chaining sequences.”
`
`It appears to us, after reviewing the specification,
`
`especially, page 11,
`
`lines 13—21,
`
`thereof,
`
`that the specification
`
`does describe a data—driven control since the first analysis
`
`determines the identity of any element or data that would
`
`-12-
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`I automatically disqualify an applicant3 and then, depending on the
`
`result of that analysis, more questions may be presented in order
`
`to refine the data necessary for a thorough assessment of an
`
`applicant’s qualifications. This is also clearly an iterative
`
`procedure for solving a problem until a conclusion is reached or
`
`no further inferences can be made.
`
`Therefore, we determine that applicant did,
`
`indeed, have
`
`possession of processing “according to backward-chaining and
`
`forward—chaining sequences,” as claimed, and that the rejection
`
`of claims 1—17 under 35 U.S.C. § 112, first paragraph, based on
`
`an inadequate written description, should be reversed.
`
`3This portion of the analysis may be said to be “goal—
`driven” (the process of qualifying or disqualifying an
`applicant), or “backward-chaining.”
`
`-13—
`
`
`
`Appeal No. 2005—2411
`Application No. 08/418,772
`
`Accordingly,
`
`the examiner’s decision is reversed.
`
`REVERSED
`
` N
`
`.
`
`vvvv
`I OARD OF PATENT
`
`Administrative Patent Judg
`
`ERROL A. KRASS
`
`Administrative Patent Judge
`
`APPEALS AND
`INTERFERENCES
`
`WWW WW
`
`MAHSHID D. SAADAT
`
`Administrative Patent Judge
`
`EK/rwk
`
`-14-
`
`
`
`Appeal No. 2005-2411
`Application No. 08/418,772
`
`CHARMASSON & BUCHACA & LEACH LLP
`1545 HOTEL CIRCLE SOUTH
`SUITE 150
`
`SAN DIEGO, CA 92108-3412
`
`-15-
`
`
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