Attorney Docket No. 3566.046UBX
`Filed via PRPS on November 4, 2013
`
`
`Filed on behalf of GSI Commerce Solutions, Inc.
`By: Thomas C. Reynolds
`
`Lissi Mojica
`
`Timothy E. Bianchi
`
`Kevin Greenleaf
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`1600 TCF Tower
`121 South Eighth Street
`Minneapolis, MN 55402
`Telephone: (612) 373-6900
`Facsimile: (612) 339-3061
`
`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________
`
`GSI COMMERCE SOLUTIONS, INC.
`Petitioner
`
`v.
`
`LANDMARK TECHNOLOGIES LLC
`Patent Owner of
`U.S. Patent No. 7,010,508
`Issued Mar. 7, 2006
`Appl. No 08/418,772 filed Apr. 7, 1995
`_____________________________________
`
`
`
`
`
`
`
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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`Table of Contents
`
`I.
`
`INTRODUCTION ..................................................................................... 1
`
`II. GROUNDS FOR STANDING 37 C.F.R. § 42.304(a) ............................... 2
`
`A.
`
`B.
`
`PETITIONER GSI COMMERCE SOLUTIONS, INC. HAS STANDING TO
`FILE THIS PETITION .............................................................................. 2
`
`THE CLAIMS OF THE ’508 PATENT ARE COVERED BUSINESS
`METHODS BECAUSE THEY ARE DIRECTED TO FINANCIAL
`PRODUCTS AND SERVICES .................................................................... 3
`
`C.
`
`CLAIMS 1-17 DO NOT RECITE A “TECHNOLOGICAL INVENTION” ........... 5
`
`III. MANDATORY NOTICES (37 C.F.R. § 42.104(a)(1)) ............................. 6
`
`IV. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS FOR THE REQUESTED RELIEF (37 C.F.R. § 42.22(a)) ... 7
`
`V.
`
`SUMMARY OF THE ’508 PATENT AND PROSECUTION HISTORY
`..................................................................................................................... 9
`
`A.
`
`B.
`
`SUMMARY OF THE PROSECUTION HISTORY ......................................... 11
`
`PRIORITY ANALYSIS FOR THE ’508 PATENT ........................................ 17
`
`VI.
`
`IDENTIFICATION OF HOW THE CHALLENGED CLAIMS ARE
`UNPATENTABLE AND SPECIFIC STATUTORY GROUNDS
`PURSUANT TO 37 C.F.R. § 42.104(b) ....................................................21
`
`A.
`
`B.
`
`THE CLAIMS OF THE ’508 ARE INDEFINITE UNDER 35 U.S.C. §
`112 ¶ 2 .............................................................................................. 21
`
`CLAIMS 1-17 ARE UNPATENTABLE AS OBVIOUS UNDER 35 U.S.C.
`§ 103 ................................................................................................. 24
`
`VII. CLAIM CONSTRUCTION PURSUANT TO 37 C.F.R. § 42.104(b)(3) 24
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`CLAIM 1 ............................................................................................ 25
`
`CLAIM 2 ............................................................................................ 30
`
`CLAIM 5 ............................................................................................ 30
`
`CLAIM 7 ............................................................................................ 30
`
`CLAIM 8 ............................................................................................ 30
`
`CLAIM 9 ............................................................................................ 32
`
`CLAIM 10 .......................................................................................... 33
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`H.
`
`CLAIM 11 .......................................................................................... 33
`
`I.
`
`J.
`
`K.
`
`L.
`
`CLAIM 12 .......................................................................................... 34
`
`CLAIM 13 .......................................................................................... 34
`
`CLAIM 14 .......................................................................................... 35
`
`CLAIM 15 .......................................................................................... 35
`
`M. CLAIM 16 .......................................................................................... 36
`
`N.
`
`CLAIM 17 .......................................................................................... 37
`
`VIII. THE PRIOR ART RENDERS OBVIOUS THE CLAIMS 1-17 OF THE
`’508 PATENT UNDER 35 U.S.C. § 103 ...................................................38
`
`A.
`
`B.
`
`C.
`
`D.
`
`REASONS TO COMBINE LOCKWOOD WITH EITHER OF JOHNSON,
`DUNGAN, GAITSPERT, OR GORDON ................................................. 38
`
`LOCKWOOD IN VIEW OF JOHNSON AND EMYCIN RENDERS
`OBVIOUS CLAIMS 1-17 ....................................................................... 43
`
`LOCKWOOD IN VIEW OF DUNGAN, GORDON, AND EMYCIN
`RENDERS OBVIOUS CLAIMS 1-17 ....................................................... 61
`
`LOCKWOOD IN VIEW OF GAITSPERT, GORDON, AND EMYCIN
`RENDERS OBVIOUS CLAIMS 1-17 ....................................................... 66
`
`IX. CONCLUSION .........................................................................................71
`
`X. APPENDIX OF EXHIBITS ...................................................................... A
`
`PRIOR ART (PA) ................................................................................. A
`
`PATENT (PAT) .................................................................................... B
`
`OTHER DOCUMENTS (OTH) ................................................................ B
`
`A.
`
`B.
`
`C.
`
`
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 7,010,508 (“the ’508 Patent”; Ex. 1007) issued March 7,
`
`2006 and is assigned to Landmark Technologies LLC (“Landmark”). Each of
`
`claims 1-17 of the ’508 Patent is unpatentable for two independent reasons. First,
`
`the specification of the ’508 Patent fails to disclose a structure for many of the
`
`means-plus-function elements in the claims. Second, every element of each of
`
`those claims was known in the prior art, including the use of so-called “forward-
`
`chaining” – the alleged inventive feature of the ’508 Patent.
`
`Each of the ’508 Patent’s claims is unpatentable for failure to comply with
`
`35 U.S.C. § 112 ¶ 2 and 6. A claim element governed by § 112 ¶ 6 is indefinite if
`
`the specification does not disclose its corresponding structure(s). Aristocrat Techs.
`
`Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1338 (Fed. Cir. 2008).1 To
`
`disclose structure for a § 112 ¶ 6 element consisting of a function performed on a
`
`programmed, general-purpose computer, the specification must teach the algorithm
`
`that performs that function. Id. Each claim of the ’508 Patent recites means to
`
`perform various functions on a programmed, general-purpose computer, for which
`
`
`
`1 The ’508 Patent is subject to pre-AIA patentability rules because all claims of the
`
`’508 Patent were filed prior to March 16, 2013.
`
`- 1 -
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`the ’508 Patent fails to teach any corresponding algorithm. Thus, claims 1-17 are
`
`indefinite and therefore unpatentable.
`
`Each of the ’508 Patent’s claims is also unpatentable under 35 U.S.C. § 103.
`
`In its initial examination of the ’508 Patent application, the Patent Office found
`
`that every element of the ’508 Patent’s claims was disclosed in the inventor’s own
`
`prior art patent (i.e., U.S. Patent No. 4,359,631 (“Lockwood”); Ex. 1001) except
`
`the use of “forward-chaining.” However, the use of backward- and forward-
`
`chaining was well known in the art at the time of the ’508 Patent’s invention. As
`
`the prior art references cited herein and the declaration of Dr. Sandra Newton (Ex.
`
`1008) show, ordinarily skilled artisans working with expert systems at the time
`
`would have combined Lockwood with references showing backward- and forward-
`
`chaining regardless of the particular domains in which those references were used.
`
`Thus, the prior art references cited herein that teach the use of both backward- and
`
`forward-chaining combined with the teachings of Landmark’s own admitted prior
`
`art patent (i.e., Lockwood) render all claims of the ’951 Patent unpatentable.
`
`II. GROUNDS FOR STANDING 37 C.F.R. § 42.304(a)
`A.
`
`Petitioner GSI Commerce Solutions, Inc. Has Standing to File this
`Petition
`
`Petitioner GSI Commerce Solutions, Inc., an eBay Enterprise Company,
`
`(“GSI”) has been charged with infringement because Landmark has sued iRobot
`
`Corporation, GSI’s customer, for infringement of the ’508 Patent. Specifically,
`
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`Landmark’s complaint and infringement contentions allege infringement based
`
`upon iRobot’s use of GSI systems and software. See generally Ex. 1009. As GSI is
`
`obligated to indemnify iRobot Corporation for accusation(s) of patent infringement
`
`relating to its use of GSI’s products, GSI has standing here. See Arris Group, Inc.
`
`v. British Telecomm. PLC, 639 F.3d 1368, 1375 (Fed. Cir. 2011).
`
`Petitioner GSI certifies that it is not estopped from challenging the claims on
`
`the grounds identified in this petition. 37 C.F.R. § 42.302(b). Further, GSI has not
`
`been party to any other post-grant review of the challenged claims under Chapter
`
`32 of title 35, United States Code. Accordingly, GSI has standing to seek post-
`
`grant review of the ’508 Patent.
`
`B.
`
`The Claims of the ’508 Patent Are Covered Business Methods
`because They Are Directed to Financial Products and Services
`
`The AIA defines a covered business method (“CBM”) patent as “a patent
`
`that claims a method or corresponding apparatus for performing data processing or
`
`other operations used in the practice, administration, or management of a financial
`
`product or service….” AIA § 18(d)(1); see also, 37 C.F.R. § 42.301.
`
`The Office noted that the AIA’s legislative history demonstrates that a
`
`“financial product or service” should be “interpreted broadly,” encompassing
`
`patents “claiming activities that are financial in nature, incidental to a financial
`
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`activity or complementary to a financial activity.”2 Moreover, the language
`
`“practice, administration, or management” is “intended to cover any ancillary
`
`activities related to a financial product or service, including … marketing,
`
`customer interfaces, [and] Web site management and functionality….”3
`
`The ’508 Patent is a covered business method because, for example, claim 1
`
`recites 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; means
`
`for
`
`receiving data comprising operator-selected
`
`information and orders from said installation via said means for communicating
`
`and 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. In the specification, the structures described are components of
`
`loan processing equipment. Additionally, the very first sentence of the “Summary
`
`of the Invention” section of the ’508 Patent specification states, “The principal
`
`object of this invention is to provide an economical means for screening loan
`
`
`
`2 77 Fed. Reg. 48,735 (Aug. 14, 2012) (to be codified at 37 C.F.R. § 42).
`
`3 Joe Matal, A Guide to the Legislative History of the America Invents Act: Part II
`
`of II, 21 Fed. Cir. B.J. 4, pp. 635-636 (2012).
`
`- 4 -
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`

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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`applications.” (’508 Patent, 1:47-48, emphasis added.) Further, FIG. 1 illustrates
`
`communicating with “FINANCIAL INSTITUTION 101,” which is used “primarily
`
`to process loan applications and handle other financial transactions.” ’508 Patent,
`
`1:30-33. Likewise, FIGS. 3-5 describe financial transactions related to loan
`
`processing. Finally, Landmark has filed at least fifty-three lawsuits alleging that
`
`the financial checkout functions of e-commerce websites infringe the ’508 Patent.
`
`See, e.g., the Burberry complaint (Ex. 1010), and the Airgas complaint (Ex. 1011).
`
`Therefore, the ’508 Patent qualifies as a CBM patent subject to review under AIA
`
`§ 18.
`
`C. Claims 1-17 Do Not Recite a “Technological Invention”
`
`The AIA excludes “patents for technological inventions” from transitional
`
`post-grant review. AIA § 18(d)(1). To determine whether a patent claim is for a
`
`technological invention, “the following will be considered on a case-by-case basis:
`
`whether the claimed subject matter as a whole recites a technological feature that is
`
`novel and unobvious over the prior art; and solves a technical problem using a
`
`technical solution.” 37 C.F.R. § 42.301(b). When the Office first proposed this
`
`definition, commentators asked the Office to revise the definition to clarify that a
`
`technological invention could meet one of these tests or the other, or to provide a
`
`wholly different test. See, e.g., 77 Fed. Reg. 157, p. 48736-37. The Office refused,
`
`holding that a technological invention must meet both tests to avoid classification
`
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`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`as a CBM patent. This definition is consistent with the AIA’s legislative history
`
`and represents “the best policy choice.” Id., p. 48735-36.
`
`Thus, as noted above, to qualify as a technological invention (and, therefore,
`
`escape transitional post-grant review) a patent must have: (1) a technological
`
`feature that is novel and unobvious; and (2) the patent must solve a technical
`
`problem using a technical solution. To institute a transitional post-grant review, a
`
`patent need only have one claim directed to a CBM even if the patent includes
`
`additional claims directed to technological inventions. Id., p. 48736.
`
`The claims of the ’508 Patent fail both prongs of the technological invention
`
`test. First, as discussed below, every element of the claims of the ’508 Patent was
`
`well known in the art before the ’508 Patent was invented. Thus, the claims as a
`
`whole cannot recite a “technological invention” because they “require no specific,
`
`unconventional software, computer equipment, tools or processing capability.”
`
`SAP America, Inc. v. Versata Development Group, Inc., slip op. CBM2012-00001,
`
`(PTAB Jan. 9, 2013), p. 28 (citing Dealertrack v. Huber, 674 F.3d 1315, 1333
`
`(Fed. Cir. 2012)).
`
`Second, the ’508 Patent does not solve any technical problem or disclose any
`
`technical solution.
`
`III.
`
` MANDATORY NOTICES (37 C.F.R. § 42.104(a)(1))
`
`Real Party in Interest: GSI Commerce Solutions, Inc. and eBay Inc.
`
`- 6 -
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`Related Matters: Concurrently filed petition for transitional post-grant review of
`
`U.S. Patent No. 5,576,951; Ex Parte Reexamination (Control No. 90/012,671);
`
`Landmark v. iRobot, case no. 6:13-cv-411, E.D. Tex. 2013 (Ex. 1009).
`
`Lead Counsel
`
`Back-Up Counsel
`
`Thomas C. Reynolds (Reg. No. 32,488)
`Schwegman, Lundberg & Woessner,
`P.A.
`150 Almaden Blvd.
`Suite 750
`San Jose, CA 95113
`Tel. (408) 278-4058
`Fax (408) 993-0832
`treynolds@slwip.com
`
`Lissi Mojica (Reg. No. 63,421)
`Timothy E. Bianchi (Reg. No. 39,610)
`Kevin Greenleaf (Reg. No. 64,062)
`Schwegman, Lundberg & Woessner,
`P.A.
`P.O. Box 2938
`Minneapolis, MN 55402
`Tel. (612) 373-6900
`Fax (612) 339-3061
`lmojica@slwip.com
`tbianchi@slwip.com
`kgreenleaf@slwip.com
`
`
`
`IV. STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS FOR THE REQUESTED RELIEF (37 C.F.R. § 42.22(a))
`
`GSI requests post-grant review and cancellation of claims 1-17 of the ’508
`
`Patent based on the grounds of unpatentability detailed below. The prior art relied
`
`upon is as follows:
`
`• U.S. Patent No. 4,359,631: “SELF-SERVICE TERMINAL,” Lockwood, et
`
`al., filed July 11, 1980 (“Lockwood”), is prior art under 35 U.S.C. § 102(b).
`
`(Ex. 1001)
`
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`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`• “A Model of an Audit Judgment in the Form of an Expert System,” Dungan,
`
`Chris W., Ph. D. dissertation, University of Illinois, published May 23, 1983
`
`(“Dungan”), is prior art under 35 U.S.C. § 102(b). (Ex. 1002)
`
`• “GAITSPERT: An Expert System for the Evaluation of Abnormal Human
`
`Locomotion Arising from Stroke,” James M. Dzierzanowski, et al., IEEE
`
`TRANSACTIONS ON BIOMEDICAL ENGINEERING, VOL. BME-32,
`
`NO. 11, published NOVEMBER 1985 (“GAITSPERT”), is prior art under
`
`35 U.S.C. § 102(a). (Ex. 1003)
`
`• “The EMYCIN Manual,” William van Melle, et al., published October 1981
`
`(“EMYCIN”), is prior art under 35 U.S.C. § 102(b). (Ex. 1004)
`
`• “Expert System for Diesel Electric Locomotive Repair,” Harold E. Johnson,
`
`et al., Journal of Forth Application and Research, vol. 1, no. 1, pp. 7-16,
`
`published Sept. 1983 (“Johnson”), is prior art under 35 U.S.C. § 102(b). (Ex.
`
`1005)
`
`• “AN INTERACTIVE VIDEO INFORMATION TERMINAL,” Ronald D.
`
`Gordon, Globecom '82, IEEE Global Telecommunications Conference,
`
`Conference Record vol. 3 of 3, Miami, Nov. 29 to Dec. 2, 1982 (“Gordon”),
`
`is prior art under 35 U.S.C. § 102(b). (Ex. 1006)
`
`- 8 -
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`V.
`
`SUMMARY OF THE ’508 PATENT AND PROSECUTION HISTORY
`
`The ’508 Patent discloses an automated multimedia system for data
`
`processing. ’508 Patent, claim 1. The system allows users to make inquiries and
`
`place orders. Importantly, the claims require, “means for processing said operator-
`
`entered information, inquiries, and orders according to backward-chaining and
`
`forward-chaining sequences.” ’508 Patent, claim 1.4 Landmark has admitted that
`
`Lockwood discloses backward-chaining. See July 7, 1997 amendment, p. 21.
`
`Landmark relied on the following portions of the ’508 specification to describe the
`
`meaning of “forward-chaining”:
`
`
`
`4 Claims 8 and 16 (the only other independent claims in the ’508 Patent) also
`
`include a “backward-chaining and forward-chaining” limitation.
`
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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`Once all the proper answers have been accepted,
`
`they 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 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.
`
`
`
`’508 Patent, 4:56-64.
`
`’508 Patent, FIG. 4.
`
`Forward-chaining, to which this passage refers, is analyzing a customer’s answers
`
`to the posed questions and then determining whether more questions need to be
`
`posed in order to refine the data necessary for a thorough assessment of the
`
`customer’s qualifications. Simply stated, the ’508 Patent discloses a system for
`
`resolving inquiries and placing orders that, in response to data entered, will ask
`
`additional questions of the user.
`
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`

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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`A.
`
`Summary of the Prosecution History
`
`The prosecution of the original ’508 Patent application was extensive - it
`
`lasted almost eleven years.5 Thus, the following summary highlights only the
`
`statements, amendments and events in the prosecution history believed to be most
`
`relevant to this Petition.
`
`The original ’508 Patent application included seven claims, of which one
`
`was independent. Landmark added claims 8-17 in a preliminary amendment. In a
`
`first office action dated February 3, 1997, all claims were rejected under 35 U.S.C.
`
`§ 112 (lack of enablement) and 35 U.S.C. § 103 over Lockwood. Landmark filed a
`
`
`
`5 The application that led to the ’508 Patent was filed on April 7, 1995. The
`
`application was a continuation of Application No. 08/347,270 filed on November
`
`30, 1994, now U.S. Patent No. 6,289,319, which is a continuation of Application
`
`No. 08/096,610 filed on July 23, 1993, now abandoned, which is a continuation of
`
`Application No. 07/752, 026 filed on August 29, 1991, now abandoned, which is a
`
`continuation of Application No. 07/168,856 filed on March 16, 1988, now
`
`abandoned, which is a continuation of Application No. 06/822,115 filed on January
`
`24, 1986, now abandoned, which is a continuation-in-part of Application No.
`
`06/613,525 filed on May 24, 1984, now U.S. Patent No. 4,567,359.
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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
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`response on July 7, 1997 amending the claims and attempting to overcome the §
`
`112 rejection.
`
`With respect to the § 103 rejection, Landmark stated that the claimed system
`
`was fundamentally different from the earlier Lockwood patent since the system
`
`described in that patent was a menu-driven system that employed a rigid, pre-
`
`ordained sequence of menus and sub-menus. July 7, 1997 amendment, p. 20. As a
`
`result, Landmark argued that “[i]n this primitive type of interactive process, the
`
`machine need not analyze the answer because each answer leads progressively to
`
`the next predetermined step in accordance with the sequence imposed by the menu
`
`tree.” Id., p. 16.6 This allegedly distinguished the prior Lockwood patented system
`
`from that of the ’508 Patent application because, according to Landmark,
`
`The claimed system has the ability of interpreting an answer before
`
`moving to the next step. An answer does not progressively call for a
`
`preformatted and unique type of new menu display as in the prior art,
`
`but opens the gate for a choice between different types of subsequent
`
`displays or actions. That choice is made by the system.
`
`Most significant is the fact that in its processing of a user’s entry, the
`
`system uses not only that entry but also previously acquired data. That
`
`
`
`6 Interestingly, Landmark has accused e-commerce systems that operate in this
`
`same way of infringement in numerous litigations.
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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`previously acquired data may have been elicited from the same user
`
`through an earlier inquiry or may have been obtained from another
`
`source.
`
`Id., pp. 17-18.
`
`Landmark also characterized the claimed invention as a “forward-chaining”
`
`system as opposed to a “backward-chaining” system known in the art, such as that
`
`disclosed in the earlier Lockwood patent. Id., pp. 21-22 (“Backward-chaining is a
`
`way to emulate human inductive reasoning or goal-directed reasoning. It starts
`
`with a selection option and works backward to prove its accuracy. …. a backward-
`
`chaining system starts with a user having a goal in mind to be proven.”) Landmark
`
`described forward-chaining as,
`
`a common term of the art designating a way to emulate human
`
`deductive or data-driven reasoning. The data provided by the user
`
`enables the search to begin at an appropriate point. Rules that may be
`
`available to the system but do not apply to the problem, are eliminated
`
`from consideration by the system.
`
`Id., pp. 23-24 (emphasis added). Thus, the basic distinction between forward-
`
`chaining and backward-chaining is moving forward to a goal, or moving backward
`
`from a goal. Notwithstanding this stated distinction between forward- and
`
`backward-chaining, Landmark went on to point out that independent claim 16
`
`“specifically recites the ‘backward-chaining and forward-chaining’, problem
`
`solving techniques.” Id., p. 25.
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`- 13 -
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`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`On October 28, 1997, the examiner issued a final office action maintaining
`
`the prior §§ 112 and 103 rejections. Landmark appealed the final rejection to the
`
`Board of Patent Appeals and Interferences.
`
`The Board reversed the examiner’s § 112 rejections, affirmed the examiner’s
`
`rejection of claims 1-15 under § 103, and reversed the examiner’s § 103 rejection
`
`of claims 16 and 17. With respect to claims 16 and 17, the Board stated:
`
`[T]hese claims specifically recited that the acceptance and processing
`
`of requests are done “according to backward-chaining and forward-
`
`chaining sequences.” While these terms do not appear to be part of the
`
`original disclosure, and there may be a question of proper support,
`
`there is no rejection, on record, under the written description section
`
`of 35 U.S.C. § 112, regarding the now claimed “backward-chaining
`
`and forward-chaining sequences.”
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`... We rely on appellant’s
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`explanation of these terms in Paper No. 8 and find that Lockwood
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`does not disclose both “backward-chaining and forward-chaining
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`sequences,” as set forth in instant claim 16.
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`BPAI decision, dated Sept. 25, 2000, pp. 4-5.
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`In response to the Board’s decision, on November 28, 2000, Landmark filed
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`an amendment in which independent claims 1 and 8 were amended to include
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`references to “backward-chaining and forward-chaining sequences” (the same
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`limitation found in allowable claims 16 and 17).
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`On April 23, 2002, the examiner issued an office action again rejecting all
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`remaining claims under § 112 on the ground that the “backward-chaining and
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`

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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
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`forward-chaining sequences” amendment to the claims was not supported by the
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`original disclosure and that the disclosure failed to provide a written description of
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`how the process of accepting and processing requests was performed according to
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`backward-chaining and forward-chaining sequences.
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`Landmark ultimately appealed the examiner’s decision to the Board and on
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`August 30, 2005, the Board issued its decision reversing the examiner. In doing so,
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`the Board first noted the examiner’s prior § 112 rejection (which was reversed in
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`the Board’s first decision) involved enablement, while the examiner’s current §
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`112 rejection involved lack of written description for the “backward-chaining and
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`forward-chaining sequences” limitation. The Board then concluded that despite the
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`fact that the specification did not mention the terms “backward-chaining” and
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`“forward-chaining,” there was nevertheless sufficient support in the specification
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`for those terms.
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`In light of the Board’s decision, all claims were allowed and the ’508 Patent
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`issued on March 7, 2006.
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`On September 15, 2012, a Request for Ex Parte Reexamination (“EPX”)
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`was filed (Control No. 90/012,671). On July 31, 2013, the examiner issued a final
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`office action rejecting claims 8-15, confirming claims 1-7 and 16-17, and rejecting
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`new claims 18-25 (added during reexam). Claims 8-14 were rejected under 35
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`U.S.C. § 102(b) as being anticipated by Johnson (the same Johnson reference
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`- 15 -
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`relied on in the instant Petition) and claim 15 was rejected under 35 U.S.C. §
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`103(a) as being obvious over Johnson in view of Principles of Rule-Based Expert
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`Systems, Advances in Computers, Marshall C. Yovits ed., Academic Press Inc.,
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`N.Y., Volume 22. Landmark subsequently filed a reply to the final office action in
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`which it asked, inter alia, for cancellation of rejected claims 18-25. Landmark also
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`sought to amend rejected independent claim 8. In an advisory action dated October
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`4, 2013, the examiner refused to enter the proposed amendments. Landmark filed a
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`response on October 10, 2013 essentially asking for reconsideration of the
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`examiner’s decision. On October 18, 2013, the examiner issued a second advisory
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`action once again refusing to enter the proposed amendments.
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`As for confirmed claims 1-7 and 16-17, the requester had cited Lockwood in
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`combination with either of secondary references Dungan7, Shortliffe, or Johnson,
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`all of which are systems that use both backward- and forward-chaining. The
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`examiner found that these references did present a substantial new question of
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`patentability. Specifically, the examiner conceded that each of the cited secondary
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`references showed the limitation previously deemed lacking in the prior art (i.e.,
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`forward-chaining). See December 6, 2012, Order Granting Request for Ex Parte
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`Reexamination, pp. 23, 27, and 32. Notwithstanding this, in the first office action
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`
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`7 The Dungan reference, like Johnson, is also relied on in the instant Petition.
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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
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`the examiner found that Dungan, Shortliffe, and Johnson were not combinable with
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`Lockwood and that they taught away from such a combination because each
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`reference was allegedly domain-specific. See February 20, 2013, Office Action, p.
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`98. Incongruously, the examiner limited Lockwood to the “travel domain,” but
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`then immediately cited a paragraph from the patent discussing the system’s
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`“versatility” and how its “operational sequences,” in fact, are domain-
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`independent. Id. (citing Lockwood, 8:39-50; emphasis added).
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`As set forth more fully below, the examiner erred in her conclusion that
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`Lockwood is not combinable with Dungan or Johnson. In fact, there are numerous
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`reasons to combine the backward- and forward-chaining features of Dungan and
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`Johnson with Lockwood in order to provide “a higher grade of services such as
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`professional advice and counseling” as explicitly suggested by Lockwood itself.
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`See Lockwood, 8:49-50.
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`B.
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`Priority Analysis for the ’508 Patent
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`The Office previously determined in connection with the EPX that the
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`earliest priority date to which all of the claims of the ’508 Patent is entitled is
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`January 24, 1986. See the November 28, 2012, Order Granting Request for Ex
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`Parte Reexamination, pp. 19-20:
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`The examiner agrees that ’525/’359 does not appear to provide
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`adequate support for the claims 1-17 of the ’508 Patent under 35
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`U.S.C. § 112, so the claims are not entitled to the benefit of the
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`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`priority date of that application/patent. Support for these claims, at the
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`earliest, appears to be in CIP appl. 06/822,115, filed January 24, 1986.
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`These claims 1-17 therefore will be examined in light of the 1986
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`filing date of the ’115 CIP.
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`The ’115 continuation-in-part (“CIP”) application was filed from parent
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`Application No. 06/613,525, now U.S. Patent No. 4,567,359 (“the ’359 Patent”).
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`The application for the ’359 Patent is the earliest-filed application in the chain of
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`priority of the ’508 Patent. However, as set forth in detail in the EPX request (pp.
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`15-21), the ’359 Patent does not contain any disclosure relating to the limitation
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`that the Office ultimately found to distinguish over the prior art: namely, the
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`capability of processing an answer given by a user in combination with prior
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`answers and/or other data to formulate or compose a new inquiry (referred to as
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`“forward-chaining” by Landmark). There was no support for such forward-
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`chaining claim limitations in the priority chain of the ’508 Patent until at least the
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`filing of the ’115 CIP application on January 24, 1986.
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`Landmark recently filed a response to the examiner’s final office action in
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`the EPX in which Landmark attempted to rebut the finding of a January 24, 1986
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`priority date by showing alleged support for all claims dating back to the ’359
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`Patent. See September 26, 2013 reply to office action, pp. 13-15. Landmark argues
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`that the key “forward-chaining sequences” claim language finds support in certain
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`figures of the ’359 Patent. Specifically, Landmark argues that Fig. 3 shows
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`- 18 -
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`

`

`Petition for Post-Grant Review of U.S. Patent No. 7,010,508
`
`“receiving and processing user input/answers (e.g., FIG. 3, stages 30 and 31) in
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`combination with other information (e.g., FIG. 3, stages 32 and 33) in order to
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`form a new inquiry (e.g., FIG. 4, stage 34 or FIG. 5, stage 50).” Id. at p. 15.
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`However, these figures do not support forward-chaining, and therefore the ’508
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`Patent cannot claim priority to the ’359 patent.
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`The systems and method of the ’359 Patent do not describe any forward-
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`chaining. In fact, steps 30-33 of Fig. 3 show a flow diagram of asking a customer
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`whether they have received a previous quote for insurance from the system. If the
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`answer is “yes,” steps 31-33