`
`MAY 1 7 2013
`
`CENTRAL
`
`REEXAMINATIOPIDNWHE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Ex Parte Reexamination of:
`
`US. Patent No. 7,010,508 to LOCKWOOD
`
`Confirmation No.2 1015
`
`Control No.: 90/012,671
`Filed: September 15, 2012 ’
`
`.
`
`.
`
`‘
`
`_
`Art Unit: 3992
`Examinerf REICHLE, Karin M.
`
`For: Automated Multimedia Data
`
`Patent Owner’s Atty. Docket: 3323.002REX5
`
`Processing Network
`
`Patent Owner’s Reply to Office Action in Ex Parte Reexamination
`
`Mail Stop “Ex Parte Reexam”
`Attn: Central Reexamination Unit
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`Sir:
`
`The intrinsic and extrinsic evidence demonstrate “stored data” recited in “means for
`
`analyzing and for combining an user’s entry with a set of stored data” is broadly interpreted by a
`
`person having ordinary skill in the art at the time of the invention to mean data accessed from a
`
`remote location. Johnson’s standalone computer uses “rules,” i.e., machine instructions, to operate
`
`on facts and user input and cannot perform any bi-directional communication — cannot access
`
`anything remote from the standalone computer. Hence, neither Johnson’s “rules” nor any other
`
`disclosure can anticipate at
`
`least
`
`the claimed “stored data.” Patent Owner therefore requests
`
`reconsideration and confirmation of rejected independent claim 8 and its dependents 9-15.
`
`The Office granted a one-month extension of time in its petition decision mailed on March
`
`14, 2013 to extend the due date for this Reply to from April 20, 2013 to May 20, 2013.
`
`Fees for additional claims are being paid. If additional
`
`fees are necessary to prevent
`
`abandonment of this reexamination, then such fees are hereby authorized to be charged to our
`
`Deposit Account No. 19-0036.
`
`1
`
`Lockwood Exhibit 2012
`G81 v. Lockwood
`
`IPR2014-00025
`
`1
`
`Lockwood Exhibit 2012
`GSI v. Lockwood
`IPR2014-00025
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`Lockwood 35 (1.5. C. § 1.131 Declaration Exhibits
`
`Lockwood Exhibit A
`
`Lockwood Exhibit B
`
`Lockwood Exhibit C
`
`
`
`Conception Claim Chart — Mapping claim terms to conception documents
`
`Priority Claim Chart Mapping of 508 patent claims to ’525 application
`
`Lawrence Lockwood Rule 131 Declaration
`
`Lockwood Exhibit D
`
`Henri J A Charmasson Rule 131 Declaration
`
`Lockwood Exhibit 1
`US Patent No. 4,359,631 (now RE32,115) Filed July 11, 1980
`
`Lockwood Exhibit 2
`Letter from State of California Department of Insurance - July 27, 1982
`
`Lockwood Exhibit 3
`
`US. Patent No D286 956 - Filed September 26 1982
`
`Lockwood Exhibit 4
`
`Automated Insurance Centers (AIC) Painting - Fall 1982
`
`Lockwood Exhibit 5
`
`Centron Automated Insurance Centers Spring 1983
`
`Lockwood Exhibit 6
`
`Letter from PIA Merchandismg Co
`
`January 4 1983
`
`Lockwood Exhibit 7
`
`The Research Project - Automated Insurance Centers - May 1983
`
`.
`.
`LOCkWOOd Exmblt 8
`
`Gerald K. Moore’s Summary of Expended Time - June 1983 to December
`1983; Insurance Company Letters August to September 1983
`
`Lockwood Exhibit 9
`Lockwood Exhibit 1 0
`
`Centron Automated Insurance Centers Busmess Plan - August 1983
`Cgoégsumer Marketing Inc. and Centron 5 Marketing Agreement - October
`
`Lockwood Exhibit 1 1
`
`Automated Insurance Centers Scale Model - November 21, 1983
`
`.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Consumer Marketing Inc., Security Pacific Insurance Services, Inc., and
`.
`.
`
`
`
`LOCkWOOd EXhlblt 12
`Automated Insurance Centers Proposal - February 1984
`
`
` . .
`
`LOCkWOOd EXhlblt 13
`
`
`
`
`Com Technology, Inc. and Centron AIC Demonstration Agreement - October
`1983; Proprietary Rights Agreement - February 1984
`
`Lockwood Exhibit 14
`
`Com Technology, Inc., The Automated Insurance System — August 1983
`
`
`
`Proprietary Rights Agreement - February 1984
`Lockwood Exhibit 15
`
`
`Lockwood Exhibit 16
`Automated Insurance Network - April 1984
`
`
`
`
`
`US. Patent No. 4,567,359 - Filed May 24, 1984
`
`
`Com Technology, Inc. Digital Equipment Corporation Inv0ice September
`1 984
`
`
`Lockwood Exhibit 17
`
`Lockwood Exhibit 18
`
`
`
`
`Smoot 35 US. C. § 1.132 Declaration Exhibits
`
`
`
`Exhibit
`Description
`
`
`
`
`Smoot Exhibit A
`
`Smoot Exhibit B
`
`Smoot Exhibit C
`
`Smoot Exhibit D
`
`
`
`
`
`
`Curriculum Vitae for Steven W. Smoot
`
`PDPI 1 Systems and Options Summary - April to June 1982
`
`
`
`
`fig-FORTHfor PDP11 - Assembly Source Listing with Compiler
`
`Security and Variable Length Names - January 1980
`Steven W. Smoot Rule 132 Declaration
`
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`Table of Contents
`
`1.
`
`11.
`
`III.
`
`IV.
`
`Status of the Claims ................................................................................................................... 5
`
`Introduction ............................................................................................................................. 12
`
`Statement of Substance of the Examiner Interview of April 24, 2013 .................................... 13
`
`Response to rejections ............................................................................................................. 14
`A.
`“Stored data” should be interpreted to mean data accessed from a remote location
`in the claim feature “means for analyzing and for combining an user’s entry with a
`set of stored data” ........................................................................................................ 14
`1.
`Reexamination claim construction case law .................................................... 15
`
`2.
`3.
`4.
`
`Patent Owner can be his own lexicographer ................................................... 15
`“Means-plus-function” case law ...................................................................... 16
`Proper interpretation of the term “means for analyzing and for combining
`an user’s entry with a set of stored data,” requires interpretation of the term
`“set of stored data” to mean data accessed from a remote location ................ 18
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`Patent Owner was his own lexicographer for “stored data” showing the
`term meant data accessed from a remote location ............................... 18
`
`Structure in the specification: terminal’s general purpose computer
`performs an algorithm that “analyzes” and “combines” both inputted
`19
`“user entry” and accessed “stored data” ...........................................
`Technical expert’s understanding of what a POSITA would interpret as
`“stored data” is data accessed from a remote location ........................ 23
`
`The Board’s understanding of “stored data” is data accessed from a
`remote location, and is consistent with the specification and expert
`declaration evidence ............................................................................ 24
`
`The intrinsic evidence points to only one broad interpretation for
`“stored data” — data accessed from a remote location ......................... 26
`
`B.
`
`2.
`
`Johnson’s “rules,” i.e., machine instructions, cannot anticipate the claimed “stored
`data,” e.g., data accessed from a remote location ..................................'...................... 26
`1.
`Johnson’s use of rules does not disclose the claimed combining a user’s
`entry with data accessed from a remote location ............................................. 27
`Johnson is a standalone expert system that has no ability to communicate
`with any other device, and thus cannot access data from a remote location,
`e. g., cannot disclose “stored data” ................................................................... 31
`Johnson’s standalone system that operates using rules cannot disclose
`“means for analyzing and for combining an user’s entry with a set of stored
`data” where the “stored data” is accessed from a remote location .................. 32
`
`3.
`
`C.
`
`Summary of why claim 8 patentably distinguishes from Johnson .................. 32
`4.
`The combination of Johnson and AIC fails to establish prima facie obviousness
`because AIC fails to cure the deficiencies of Johnson with respect to claim 8 ........... 33
`
`V.
`
`Patent Owner’s Rule 131 Declarations prove conception, diligence and a reduction to practice
`that removes Johnson as a reference ........................................................................................ 35
`
`A.
`B.
`C.
`D
`
`Overview of a legal “invention” .................................................................................. 35
`Conception ................................................................................................................... 35
`Diligence ...................................................................................................................... 36
`Constructive reduction to practice ............................................................................... 37
`
`-3-
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`E.
`
`F.
`G.
`
`H.
`1.
`
`Patent Owner has antedated Johnson ........................................................................... 37
`
`Conception prior to September 1983 ........................................................................... 37
`Diligence from just before the effective date until the constructive reduction
`practice ......................................................................................................................... 37
`Mr. Lockwood signed the Rule 131 Declaration on behalf of Patent Owner ............. 38
`Conclusion ................................................................................................................... 39
`
`VI.
`
`Discussion of new claims ........................................................................................................ 39
`
`VII.
`
`Conclusion ............................................................................................................................... 4O
`
`
`
`Control‘No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`I.
`
`Status of the Claims
`
`Claims 1-17 of US. Patent No. 7,010,508 (“the’508 patent”) are subject to the present
`
`reexamination. Claims 1—7 and 16-17 are confirmed, claims 8-15 are rejected, and claims 18-25 are
`
`sought to be added, of which claims 18 and 22 are independent. A listing of all Original Patent
`
`Claims (claims 1-17) from the ’508 patent is presented here for convenience:
`
`1.
`
`(Original Patent Claim) An automated multimedia system for data processing which
`
`comprises:
`
`a computerized installation including a database, means for entering data into said database,
`
`and a program means for storing, processing, updating, and retrieving data items in response to
`
`coded requests from stations in communication with said installation;
`
`at least one station including a general purpose computer and a program applicable to said
`
`computer for sending said requests to said installation;
`
`means for communicating data back and forth between said installation and said station;
`
`said station further including:
`
`a mass memory and means associated therewith for storing and retrieving textual and
`
`graphical data;
`
`a video display and means associated therewith for displaying textual and graphical data;
`
`means for entering information into said computer;
`
`means for programming sequences of inquiring messages on said video display in accordance
`
`with preset routines and in response to said information;
`
`said sequences including instructions to an operator of said station for operating said station;
`
`and
`
`means for selectively and interactively presenting to said operator interrelated textual and
`
`graphical data describing a plurality of transaction options, and for selectively retrieving data from
`
`said mass memory;
`
`means for storing information, inquiries, and orders for transactions entered by said operator
`
`via said means for entering information;
`
`means for transmitting said inquiries and orders to said installation via said means for
`
`communicating;
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`means for receiving data comprising operator-selected information and orders from said
`
`installation via said means for communicating; and
`
`means for interactively directing the operation of said computer, video display, data receiving
`
`and transmitting means, and mass memory comprising means for holding an operational sequencing
`
`list, means for processing said operator-entered information,
`
`inquiries, and orders according to
`
`backward-chaining and forward-chaining sequences, and means responsive to the status of said
`
`computer, display, mass memory, and data receiving and transmitting means for controlling their
`
`operation;
`
`said means for processing including means for analyzing said operator-entered information
`
`and means, responsive to said means for analyzing, for presenting additional inquiries in response to
`
`said operator-entered information;
`
`said computerized installation further including:
`
`means responsive to items received from said station for immediately transmitting selected
`
`data retrieved from said database to said station;
`
`means responsive to an order received from said station for updating data in said database
`
`including means for correlating to a particular set of data received from said station;
`
`whereby said system can be used by a plurality of entities, each using one of said stations, to
`
`exchange data, and to respond to inquiries and orders instantaneously or over a period of time.
`
`2.
`
`(Original Patent Claim) The data processing system of claim 1, wherein at least one of
`
`said stations comprises a tangible record-generator and means associated therewith to generate a
`
`document.
`
`3.
`
`(Original Patent Claim) The system of claim 1, wherein said textual data comprise
`
`codes, words, phrases, numbers, and letters.
`
`4.
`
`(Original Patent Claim) The system of claim 3, wherein said graphical data include
`
`still pictures, and moving images.
`
`5.
`
`(Original Patent Claim) The system of claim 4, wherein said station further comprises
`
`means for generating audio information.
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`6.
`
`(Original Patent Claim) The system of claim 1, wherein said mass memory comprises
`
`an optical disc.
`
`7.
`
`(Original Patent Claim) The system of claim 5, wherein said means for selectively and
`
`interactively presenting comprises means for retrieving and combining textual data and graphical
`
`data, to process said textual and graphical data into audio-visual signals, and to apply said signals to
`
`said video display.
`
`8.
`
`(Original Patent Claim) An automated multimedia system for data processing for
`
`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 an 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.
`
`9.
`
`(Original Patent Claim) The system of claim 8, wherein said means for formulating
`
`comprise means for presenting a question to said user.
`
`10.
`
`(Original Patent Claim) The system of claim 9, wherein said means for formulating
`
`further comprise means for requesting information for said user.
`
`1 1.
`
`(Original Patent Claim) The system of claim 9, wherein:
`
`said means for combining comprise means for searching said set of stored data; and
`
`said means for formulating comprise means for selectively retrieving said question from a
`
`plurality of stored questions.
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`12.
`
`(Original Patent Claim) The System of claim 10, wherein:
`
`said means for combining flirther comprise means for matching part of said user’s entry with
`
`part of said set of stored data; and
`
`said means for requesting comprise means for generating an information request message.
`
`13.
`
`(Original Patent Claim) The system of claim 10, which further comprises:
`
`a storage means;
`
`means for addressing said storage means with said request message; and
`
`computer programs for controlling said various means.
`
`14.
`
`(Original Patent Claim) The system of claim 13, wherein said means for delivering
`
`further comprise means for translating textual information into graphical information.
`
`15.
`
`(Original Patent Claim) The system of claim 13, wherein said means for delivering
`
`further comprises means for translating textual information into audio—visual information.
`
`16.
`
`(Original Patent Claim) An automated multimedia data processing system which
`
`comprises:
`
`at least two computerized stations, each including:
`
`at least one access means;
`
`a mass memory and a database stored in said mass memory;
`
`means for storing, processing, updating, and retrieving data;
`
`program means for controlling said storing, processing, updating, and retrieving data means
`
`in response to coded requests entered on said access means;
`
`means, associated with said mass memory, for storing and retrieving textual and graphical
`
`data;
`
`means for processing interrelated textual and graphical data describing a plurality of
`
`transaction options, and
`
`for selectively retrieving data from said mass memory; interrelated textual and graphical data
`
`stored in said mass memory, and accessible through interrelated textual and graphical access path
`
`means;
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`means for accepting and processing said requests according to backward-chaining and
`
`forward-chaining sequences;
`
`means responsive to said coded requests for automatically displaying selected data;
`
`means for interactively directing the operation of said various means,
`
`and of said mass memory, said means for directing comprising means for holding an
`
`operational sequencing list and means responsive to the status of said mass memory, and said various
`
`means, for controlling their operations.
`
`17.
`
`(Original Patent Claim) The system of claim 16, which further comprises:
`
`a computerized installation; wherein each of said stations comprises:
`
`means for entering and transmitting requests to said installation;
`
`means for receiving data from said installation; and
`
`means for displaying said data.
`
`18. (New) An automated data processing system configured to communicate with at least two
`
`computerized stations, each station located at a remote site and comprising a remote data access
`
`interface, the system comprising:
`
`a processor;
`
`a database' and
`
`a memog configured to store instructions, execution of which by the processor cause the
`
`processor to perform operations comprising,
`
`receiving a request from the remote data access interface of at least one of the
`
`computerized stations in response to the computerized station analyzing an entg of a user,
`
`accessing stored data in the remote database associated with the entry,
`
`transmitting the accessed stored data to the computerized workstation thereby causing
`
`the computerized workstation to perform operations comprising,
`
`combining the accessed stored data from the remote database with the enfl,
`
`processing interrelated locally stored textual and graphical data describing transaction
`
`options,
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`performing forward-chaining and backward-chaining seguences based on the
`
`combining to formulate a guepy, and
`
`outputting the gueg and any respective related data to the user.
`
`19. (flew) The system of claim 18, further comprising:
`
`a communication interface configured to receive the reguest from the remote data access
`
`interface of the at least one of the computerized stations.
`
`20. (flew) The system of claim 19, further comprising:
`
`an update unit configured to periodically poll at least one of the computerized stations, and to
`
`update the interrelated locally stored textual and graphical data.
`
`21. “flew! The system of claim 19, further comprising:
`
`a communication control unit configured to control transfer of the stored data to at least one
`
`of the computerized stations.
`
`22. (New) An automated data processing system including a computerized station with a
`
`remote data access interface in communication with a remote database, the system comprising:
`
`a processor“, and
`
`a memory configured to store instructions, execution of which by the processor cause the
`
`processor to perform operations comprising,
`
`analyzing, at the computerized station= an enfl of a user,
`
`transmitting, using the remote data access interface, a request based on the entg to
`access stored data from the remote database
`
`receiving the stored data,
`
`combining the received stored data with the entg,
`
`-10-
`
`
`
`Control No. 90/012,671
`Patent Owner’ 5 Atty. Dkt. No. 3323 .002REX5
`
`processing interrelated locally stored textual and graphical data describing transaction
`
`options,
`
`performing forward-chaining and backward-chaining seguences based on the
`
`combining to formulate a gueg, and
`
`outputting the gueg and any respective related data to the user.
`
`23. (flew) The system of claim 22, further comprising:
`
`an output device configured to output the gueg, wherein the output device is configured to
`
`provide at least one of aural and visual output.
`
`24. (flew) The system of claim 22, further comprising:
`
`an input device configured to accept the entgg, wherein the input device is configpred to
`
`accept at least one of tactile and coded input.
`
`25. (flew) The system of claim 22, wherein the system is configured to translate textual data
`
`into at least one of aural and visual output.
`
`-11-
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`II.
`
`Introduction
`
`Patent Owner respectfully requests that the Office reconsider and withdraw the rejections of
`
`claims 8-15 of the ’508 patent, and confirm them in a Notice of Intent to Issue a Reexamination
`
`Certificate (“NIRC”) for at least the following reasons:
`
`1)
`
`The proper claim construction of “stored data” in the claim feature “means for
`
`analyzing and for combining an user’s entry with a set of stored data” requires identifying the
`
`structure disclosed in the specification that supports the clamed fimction. That disclosed
`
`structure incudes an algorithm (e.g., a self-service terminal including a computer with one or
`
`more of the algorithm’s identified in Figures 3, 4, and 5 to analyze and combine user entry
`
`with stored data, e. g., data accessed from a remote location). (See Section IV.A.)
`
`2)
`
`Johnson does not anticipate “stored data,” e.g., data accessed from a remote location,
`
`because Johnson discloses a “standalone terminal” using “rules,” i.e., machine instructions, to
`
`process local information and user entries, but with no ability to perform “bi-directional”
`
`communication. (See Section NB.)
`
`3)
`
`Finally, the claimed invention antedates Johnson, such that Johnson is not available as
`
`a reference. (See Section V.)
`
`In this Reply, Patent Owner discusses the Examiner Interview in Section III, the reasons why
`
`Johnson cannot anticipate the properly interpreted claim 8 in Section IV, why Johnson is not a
`
`proper reference in Section V, and support for the new patentable claims, claim 18—25, in Section
`
`VI.
`
`-12_
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`III.
`
`Statement of Substance of the Examiner Interview of April 24, 2013
`
`Pursuant to 37 C.F.R. § 1.560(b), Patent Owner submits herewith a written statement
`
`summarizing the substance of the interview held on Wednesday, April 24, 2013. Present at the
`
`interview were:
`
`For CRU
`
`Primary Examiner Karin M. Reichle
`Conferee SPE Daniel J. Ryman
`Conferee Primary Examiner Eric B. Kiss
`
`For Patent Owner:
`
`Lawrence B..Lockwood, Inventor
`Raymond A. Mercado
`Steve Smoot
`Donald J. Featherstone (Reg. No. 33,876)
`Jason D. Eisenberg (Reg. No. 43,447)
`Richard M. Bemben (Reg. No. 68,658)
`
`Landmark Technologies LLC, Managing Partner
`Landmark Technologies LLC
`Technical Expert
`Sterne, Kessler, Goldstein & Fox PLLC
`Sterne, Kessler, Goldstein & Fox PLLC
`Sterne, Kessler, Goldstein & Fox PLLC
`
`Patent Owner made a presentation summarizing the claimed invention, and addressed the
`
`patentable distinctions between independent claim 8 and the publication: Expert System for Diesel
`
`Electric Locomotive Repair, Harold E. Johnson, Jr. et al., Journal of Forth Application and Research,
`
`vol.1, no.1, pp.7-16, published September 1983 (“Johnson”). A copy of the presentation was
`
`previously included in the Office’s Ex Parte Reexamination Interview Summary mailed on April 26,
`2013.
`
`Patent Owner and Expert Smoot demonstrated that Johnson does not disclose each and every
`
`element of independent claim 8, as required by the pending anticipation and obviousness rejections
`
`of claims 8-15. For example, Johnson does not disclose, inter alia, “means for analyzing and for
`
`combining an user’s entry with a set of stored data,” where the “set of stored data” includes data
`
`accessed from a remote location. Patent Owner and Expert Smoot demonstrated that Johnson
`
`discloses a standalone expert system that analyzes an operator’s input using a discrete and static set
`
`of “rules.” The “rules” are defined in Johnson as machine instructions. The machine instructions
`
`operate on local facts and user input. Therefore, Johnson lacks a “means for” analyzing and
`
`combining a user’s entry with “a set of stored data,” e.g., data accessed from a remote location.
`
`Patent Owner submits that the inventive features discussed during the interview distinguish
`
`the claims from Johnson. No final agreement was reached on the patentability of the claims in the
`
`-13-
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`reexamination. However, Examiner Reichle indicated that further analysis of Johnson, as well as
`
`consideration of statements and evidence to be submitted would occur.
`
`IV.
`
`Response to rejections
`
`Claims 8-14 are rejected under 35 U.S.C. § 102(b) as allegedly being anticipated by Johnson.
`
`(Office Action, pp. 3-78.) Claim 15 is rejected under 35 U.S.C. § 103(a) as allegedly obvious over
`
`Johnson in view of Principles of Rule-Based Expert Systems, Advances in Computers, Marshall C.
`Yovits ed., Academic Press Inc., N.Y., Volume 22, pp. 163-216, 1983 (“Advances in Computers” or
`
`“AIC”). (Office Action, pp. 78-82.) Patent Owner traverses these rejections.
`
`The Court of Appeals for the Federal Circuit held that any analysis of anticipation or
`
`obviousness must first begin with the construction of the claim term. Medichem, S.A. v. Rolabo, S.L.,
`
`353 F.3d 928, 933 (Fed. Cir. 2003) (citations omitted); see also Power MOSFET Tech. v. Siemens,
`
`378 F.3d 1396, 1406 (Fed. Cir. 2004) (accord); Amazon v. EN, 239 F.3d 1343, 1351 (Fed. Cir. 2001)
`
`(accord).
`
`At least the claim term “stored data” in the claim feature “means for analyzing and for
`
`combining an user’s entry with a set of stored data” is required to be constructed. Patent Owner will
`
`show that “stored data” is data accessed from a remote location when broadly interpreting “means
`
`for analyzing and for combining an user’s entry with a set of stored data.”
`
`In Section IV.A, Patent Owner explains claim construction case law for reexamination,
`
`lexicographer, and means-plus-function. In Section IV.B, Patent Owner explains why Johnson’s
`
`“rules,” i.e., machine instructions, cannot anticipate the claimed “stored data,” e.g., data accessed
`
`from a remote location. In Section IV.C, Patent Owner explains why, if arguendo the references are
`
`properly combinable, the combination of Johnson and AIC fails to establish prima facie obviousness
`
`because AIC fails to cure the deficiencies of Johnson with respect to claim 8.
`
`A.
`
`“Stored data” should be interpreted to mean data accessed from a remote
`location in the claim feature “means for analyzing and for combining an user’s
`entry with a set of stored data”
`
`Patent Owner stated at the Interview that it agrees with the Office that the term “means for
`
`analyzing and for combining an user’s entry with a set of stored data” invokes 35 U.S.C. § 112(t) (35
`
`-14-
`
`
`
`Control No. 90/012,671
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`U.S.C. § 112(6) pre-AIA)‘. (Office Action, pp. 9-17.) But the Office’s construction of this term is
`
`incomplete. Patent Owner generally agrees with the Office’s conclusion that the function of the term
`
`“means for analyzing” under § 112(f)
`
`is “the ability to automatically and onsite,
`
`i.e by the
`
`computerized station, analyze (i.e. engage in ‘analysis’ of) and combine a user’s entry with a set of
`
`stored data.” (Office Action, pp. 16-17.) But Patent Owner disagrees with the Office’s blanket
`
`conclusion that the structure includes the “hardware and software of the computerized station.” Id.
`
`The Federal Circuit has clearly held that when a means-plus-function limitation relates to a
`
`computer process,
`
`the corresponding structure must be more than simply a general-purpose
`
`computer. Thus, hardware and software of the computerized station -— alone — is not
`
`the
`
`corresponding structure of this claim term; rather, the corresponding structure must include the
`
`algorithm or method that performs the term’s stated function.
`
`1.
`
`Reexamination claim construction case law
`
`The Office must give claims their broadest reasonable interpretation consistent with the
`
`specification (“BRI” or “BRI standard”). In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
`
`2010) (citation omitted); M.P.E.P § 2258 (G). The Court in Suitco further explained that the Office
`
`must give claims a construction that reasonably reflects the plain language and disclosure of the
`
`patent “as [they] would be interpreted by one of ordinary skill in the art,” e.g., based on an expert’s
`
`understanding of what the claim term would have meant to one of ordinary skill in the art. Suitco,
`
`603 F.3d at 1259. The Federal Circuit has made clear that this holding requires consideration of both
`
`“intrinsic and extrinsic evidence,” and that such a reasonable “construction cannot be divorced from
`
`the specification and the record evidence” including “extrinsic evidence show[ing] [w]hat a person
`
`of ordinary skill in the art would recognize” regarding the subject matter claimed. In re NTP, Inc.,
`
`654 F.3d 1279, 1288 (Fed. Cir. 2011). Evidence that needs to be considered by the Office is: claim
`
`language, specification disclosure, prosecution history, expert declarations, dictionaries, etc. Id.
`
`2.
`
`Patent Owner can be his own lexicographer
`
`Additionally, an inventor may choose to be his own lexicographer in two ways. “First, the
`
`claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and
`
`clearly set forth a definition of the disputed claim term in either the specification or prosecution
`
`' Only 35 U.S.C. § 112(1) will be referred to herein.
`
`-15-
`
`
`
`Patent Owner’s Atty. Dkt. No. 3323.002REX5
`
`Control No. 90/012,671
`
`history.” CCS Fitness, Inc. v. Brunswick Corp, 288 F.3d 1359, 1366 (Fed. Cir. 2002) (emphasis
`
`added). “Second, a claim term will not carry its ordinary meaning if the intrinsic evidence shows that
`
`the patentee distinguished that term from prior art on the basis of a particular embodiment,
`expressly disclaimed subject matter, or described a particular embodiment as important to the
`
`invention.” Id. at 1366-67 (citing SciMed Life Sys., Inc. v. Adv. Cardiovascular Sys., Inc, 242 F.3d
`
`1337, 1343-44 (Fed. Cir. 2001) (emphasis added) (limiting a claim term based in part on statements
`
`in the specification indicating that “all embodiments” of the claimed invention used a particular
`
`structure»; Spectrum Int ’1, Inc. v. Sterilite Corp, 164 F.3d 1372, 1378 (Fed. Cir. 1998) (narrowing a
`
`claim term’s ordinary meaning based on statements in intrinsic evidence that distinguished claimed
`
`invention from prior art)
`
`3.
`
`“Means—plus-function” case law
`
`35 U.S.C. § 112(f) allows a patentee to draft a claim limitation in “means-plus-fimction”
`
`form, by reciting a fimction to be performed as a claim limitation rather than definite structure.
`
`Odetics, Inc. v. Storage Tech. Corp, 185 F.3d 1259, 1266 (Fed. Cir. 1999). The construction of a
`
`means-plus-function limitation follows a two-step approach: (1) identify the claimed function; and
`
`(2) identify the corresponding structures in the written description. All Voice Computing PLC v.
`
`Nuance Commc’ns, Inc, 504 F.3d 1236, 1240 (Fed. Cir. 2007). And to satisfy the requirements of §
`
`1 12, second paragraph, a person of ordinary skill in the art must be able to recognize that structure in
`
`the specification and associate it with the corresponding function in the claim. Id. at 1241.
`
`When a means-plus-function limitation relates to a computer process,
`
`the corresponding
`
`structure must be more than simply a general-purpose computer. Aristocrat Techs. v. Int ’1 Game