In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`367 F.3d 1359
`United States Court of Appeals,
`Federal Circuit.
`
`In re AMERICAN ACADEMY
`OF SCIENCE TECH CENTER.
`
`No. 03–1531.
`
` | May 13, 2004.
`
`Synopsis
`Background: Owner of patent requiring a plurality of
`“general purpose user computers” that were connected to
`a “data center computer” appealed from a United States
`Patent and Trademark Office, Board of Patent Appeals and
`Interferences decision, 2003 WL 23014570, which upheld
`a patent examiner's rejection, in reexamination, of several
`patent claims as anticipated.
`
`[2]
`
`6 Cases that cite this headnote
`
`Patents
`Construction and Operation of Reexamined
`Patents
`Patents
`Language of claims in general
`Patents
`Specifications and Drawings; Written
`Description
`
`During examination, patent claims are to be
`given their broadest reasonable interpretation
`consistent with the specification, and claim
`language should be read
`in
`light of
`the
`specification as it would be interpreted by one
`of ordinary skill in the art; “broadest reasonable
`construction” rule applies to reexaminations as
`well as initial examinations.
`
`Holdings: The Court of Appeals, Bryson, Circuit Judge, held
`that:
`
`47 Cases that cite this headnote
`
`[1] term “user computer,” as used in patent claim describing
`a method of operating a distributed data processing system
`including a plurality of independent, not necessarily uniform,
`general purpose user computers to run respective user
`application programs, properly encompassed the mainframes
`and minicomputers of the cited prior art, and
`
`[2] term “indirectly issuing” required only that a request from
`the host computer go through some other component before
`it is sent to the database.
`
`Affirmed.
`
`West Headnotes (9)
`
`[1]
`
`Patents
`De novo review in general
`Patents
`Novelty; anticipation
`
`Anticipation is a question of fact, which is
`reviewed for substantial evidence, while patent
`claim construction is a matter of law, reviewed
`de novo.
`
`[3]
`
`Patents
`Amendment of Application
`
`An applicant's ability to amend his claims to
`avoid cited prior art distinguishes proceedings
`before Patent and Trademark Office (PTO) from
`proceedings in federal district courts on issued
`patents.
`
`3 Cases that cite this headnote
`
`[4]
`
`Patents
`Data processing
`
`In light of the description in the specification,
`term “user computer,” as used in patent claim
`describing a method of operating a distributed
`data processing system including a plurality of
`independent, not necessarily uniform, general
`purpose user computers to run respective user
`application programs, properly encompassed the
`mainframes and minicomputers of the cited prior
`art; term “user computer” was used to refer to
`the function of the computer in running a user
`application, not to the identification of the user
`computer as a personal computer as opposed to
`a mainframe.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
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`SAMSUNG 1047
`Samsung Electronics v. SmartFlash
`CBM2014-00199
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`

`
`In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`1 Cases that cite this headnote
`
`11 Cases that cite this headnote
`
`[5]
`
`Patents
`Specification disclaimer
`
`Patentee may demonstrate an intent to deviate
`from the ordinary and accustomed meaning of
`a claim term by including in the specification
`expressions of manifest exclusion or restriction,
`representing a clear disavowal of claim scope.
`
`[9]
`
`Patents
`In general; utility
`
`US Patent 4,714,989. Invalid.
`
`Cases that cite this headnote
`
`5 Cases that cite this headnote
`
`Attorneys and Law Firms
`
`[6]
`
`Patents
`Hearing and determination
`
`Patent and Trademark Office's Board of Patent
`Appeals and Interferences has broad discretion
`as to the weight to give to declarations offered in
`the course of prosecution of patent.
`
`1 Cases that cite this headnote
`
`[7]
`
`Patents
`Data processing
`
`Term “indirectly issuing,” as used in patent claim
`describing a method of operating a distributed
`data processing system including a plurality of
`independent, not necessarily uniform, general
`purpose user computers to run respective user
`application programs, required only that a
`request from the host computer go through
`some other component before it is sent to the
`database, and was not limited to a user computer
`application program issuing a call for data as
`though from resident storage, coupled with an
`intermediate step redirecting the call to the
`remote data center computer.
`
`1 Cases that cite this headnote
`
`*1361 John M. Collins, Hovey Williams LLP, of Kansas
`City, MO, argued for appellant.
`
`C. Edward Polk, Jr., Associate Solicitor, Office of the
`Solicitor, United States Patent and Trademark Office, of
`Arlington, VA, argued for appellee. With him on the brief
`were John M. Whealan, Solicitor; and Linda Moncys Isacson,
`Associate Solicitor.
`
`Barry E. Bretschneider, Morrison & Foerster LLP, of
`McLean, VA, for amicus curiae Novell, Inc. With him on the
`brief was Charles C. Carson.
`
`Before RADER, BRYSON, and GAJARSA, Circuit Judges.
`
`Opinion
`
`BRYSON, Circuit Judge.
`
`This is an appeal from a decision of the United States
`Patent and Trademark Office's Board of Patent Appeals
`and Interferences in a reexamination proceeding, Appeal
`No.2003–0349. The Board upheld a patent examiner's
`rejection, in reexamination, of several claims of U.S. Patent
`No. 4,714,989 (“the ′989 patent”). The owner of the patent,
`American Academy of Science Tech Center, seeks review of
`the Board's decision. We affirm.
`
`[8]
`
`Patents
`Preferred embodiment
`
`Even when the specification describes only a
`single embodiment, claims of a patent should
`not be read restrictively unless the patentee has
`demonstrated a clear intention to limit the claim
`scope using words or expressions of manifest
`exclusion or restriction.
`
`I
`
`Before the proliferation of personal computers, it was
`common for a multiple-user computer system to be arranged
`so that each user would interface with a mainframe computer
`by using a so-called “dumb terminal,” i.e., a terminal that
`did not contain processors and performed only input and
`output functions. Several dumb terminals would be connected
`to a single mainframe computer, which would run the user
`
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`In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`applications. The mainframe computer would receive input
`from and provide output to users through the dumb terminals.
`The user applications run by the mainframe computer would
`access data that was stored in a database residing on the
`mainframe.
`
`In contrast to systems using a mainframe in conjunction
`with dumb terminals, the ′989 patent describes a network
`in which the processing of user applications is distributed
`among several computers. In the ′989 patent system, user
`applications are run on the user stations, while the database
`resides on a dedicated database computer. Several user
`stations are networked to the database computer so that a
`user application running on a user station can store data to
`and retrieve data from the database residing on the database
`computer. The patent describes using a “data base simulator”
`to “enable[ ] an application program ... at the user station to
`call for storage or retrieval of data from the data center as
`though it were calling for data from a data base resident at the
`user station ....” ′989 patent, col. 6, ll. 57–62.
`
`The ′989 patent was issued on December 22, 1987, on an
`application filed on October 20, 1986. The 1986 application
`was a continuation of an application filed on February 19,
`1982. In 1991, American *1362 Academy sued Novell, Inc.,
`in the United States District Court for the Northern District of
`California, alleging that Novell had infringed the ′989 patent.
`In response, Novell filed a reexamination request on June
`6, 1994. The district court stayed the litigation pending the
`outcome of the reexamination.
`
`During the reexamination, the examiner rejected each of
`the claims of the ′ 989 patent as anticipated by several
`references. Four of those references, the Canaday, Lowenthal,
`Passafiume, and Hsiao references, are at issue in this
`appeal. The Canaday, Lowenthal, and Passafiume references
`describe what American Academy calls “back-end” systems.
`In such back-end systems, several mainframe computers
`interface with a single database or “back-end” computer. The
`mainframe computers run user applications and communicate
`with the database computer to store and retrieve data from
`a database that resides on the database computer. The Hsiao
`reference describes networking several personal computers to
`a database computer that is connected to a database. 1
`
`The claims under reexamination require a plurality of
`“general purpose user computers” that are connected to
`a “data center computer.” The examiner determined that
`the mainframe computers in the asserted references (and
`
`the personal computers of Hsiao) anticipated the “general
`purpose user computers” element of the claims under
`examination. The examiner also found that the references
`taught an additional disputed claim element, that of
`“indirectly issuing data base calls,” since in each of the
`references database calls from the user application to the
`database manager program at the database computer must be
`sent though some other program or hardware.
`
`In response to those rejections, American Academy submitted
`arguments and declarations to the effect that the claims of the
`′989 patent are limited to user computers, such as personal
`computers, that are each dedicated to a single user. American
`Academy also argued that the “indirectly issuing” element
`should be limited to cases in which the user application,
`when making a database call, is not aware that it is making
`a remote database call but instead believes that it is making
`a local database call to the computer running the user
`application. American Academy thus in effect urged that the
`“indirectly issuing” limitation should be limited to the use of a
`database simulator program such as that described in the ′989
`specification. The examiner was not persuaded by American
`Academy's arguments and continued to reject the claims both
`as anticipated and as obvious in light of the cited references.
`
`American Academy appealed the examiner's rejections to the
`Board, which affirmed the rejections. Although the examiner
`had been persuaded by the time of appeal that the patent
`was limited to single-user computers, the Board adopted a
`broader construction of the claim term “user computer” that
`encompassed any computer “capable of running application
`programs for a user.” That construction reached the back-
`end systems of the prior art. The Board also construed the
`claim term “indirectly issuing” broadly to include “the request
`going through some other *1363 component before it is sent
`to the data base.”
`
`American Academy filed a rehearing request, asserting
`that the Board's claim construction was broader than the
`examiner's and that the Board's decision was thus based on a
`new ground of rejection. The Board granted the request, but it
`concluded that even under American Academy's construction
`it would have been obvious to replace the mainframe
`computers of the prior art with personal computers. In
`response to a further rehearing request in which American
`Academy asserted that the Board's obviousness rejection also
`constituted a new ground of rejection, the Board directed that
`the issue of obviousness be further prosecuted.
`
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`In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`In subsequent proceedings before the examiner, American
`Academy submitted additional declarations, both as to claim
`construction and as to the issue of obviousness. The examiner,
`however, again rejected the claims as anticipated and obvious
`over the prior art.
`
`American Academy appealed the rejections to the Board
`for a second time. The Board addressed claim 1 in detail,
`finding that it was representative of the other claims on
`appeal. Based on the principle that during examination claims
`should be given their broadest reasonable construction, the
`Board construed the term “user computer” to encompass the
`mainframe computers of the prior art. The Board explained
`that “[a]lthough the patent disclosure does refer to servicing
`a user in the singular, it also notes that the user could be
`a person, another device, or machine....” The Board added
`that it was not persuaded by the declarations submitted
`by American Academy because “the declarations offer no
`evidence in support of appellant's definition” and “[i]nstead ...
`merely offer [the declarant's] opinions as to what the artisan
`would have understood upon reading the patent disclosure.”
`The Board rejected American Academy's argument that a
`broad construction of the term “user computer” would vitiate
`the word “user.” Under its definition, the Board explained,
`the term “user computer” did not include all computers,
`but excluded special purpose computers, such as those that
`“are not intended to interface with a user for application
`programming under any circumstances.”
`
`The Board further concluded that the broadest reasonable
`construction of “indirectly issuing a database call” requires
`only “that a request from the host computer go through
`some other component before it is sent to the database.” The
`Board found American Academy's arguments to the contrary
`unpersuasive and again found the declarations submitted in
`support of American Academy's narrower construction to be
`unsupported by the evidence before the examiner. Finally,
`the Board upheld the alternative obviousness rejections,
`concluding that the examiner had established a prima facie
`case of obviousness that was unrebutted by American
`Academy's arguments or evidence.
`
`II
`
`[1]
` We review the Board's legal conclusions de novo
`and uphold its factual findings if they are supported by
`substantial evidence. See In re Bass, 314 F.3d 575, 576
`(Fed.Cir.2002). Anticipation is a question of fact, which we
`
`review for substantial evidence, see In re Hyatt, 211 F.3d
`1367, 1371–72 (Fed.Cir.2000), while claim construction is
`a matter of law, reviewed de novo, see In re Baker Hughes
`Inc., 215 F.3d 1297, 1301 (Fed.Cir.2000). The primary issue
`on appeal is the construction of *1364 the terms “user
`computer” and “indirectly issuing.” Construing those claim
`terms broadly, the Board found that each of the references,
`Canaday, Lowenthal, Passafiume, and Hsiao, taught both
`the use of “user computers” and systems that “indirectly
`issue” database calls. American Academy does not challenge
`the sufficiency of the evidence with respect to the Board's
`decision on any other claim limitations.
`
`[2]
` During examination, “claims ... are to be given
`their broadest reasonable interpretation consistent with the
`specification, and ... claim language should be read in light
`of the specification as it would be interpreted by one of
`ordinary skill in the art.” In re Bond, 910 F.2d 831, 833
`(Fed.Cir.1990); accord Bass, 314 F.3d at 577 (“[T]he PTO
`must apply the broadest reasonable meaning to the claim
`language, taking into account any definitions presented in
`the specification.”); In re Cortright, 165 F.3d 1353, 1358
`(Fed.Cir.1999) (“Although the PTO must give claims their
`broadest reasonable interpretation, this interpretation must
`be consistent with the one that those skilled in the art
`would reach.”); Hyatt, 211 F.3d at 1372. The “broadest
`reasonable construction” rule applies to reexaminations as
`well as initial examinations. See In re Hiniker Co., 150 F.3d
`1362, 1368 (Fed.Cir.1998); In re Yamamoto, 740 F.2d 1569,
`1571 (Fed.Cir.1984). Giving claims their broadest reasonable
`construction “serves the public interest by reducing the
`possibility that claims, finally allowed, will be given broader
`scope than is justified.” Yamamoto, 740 F.2d at 1571;
`accord Hyatt, 211 F.3d at 1372; In re Zletz, 893 F.2d
`319, 322 (Fed.Cir.1989) (“An essential purpose of patent
`examination is to fashion claims that are precise, clear,
`correct, and unambiguous. Only in this way can uncertainties
`of claim scope be removed, as much as possible, during the
`administrative process.”).
`
`[3]
` Construing claims broadly during prosecution is not
`unfair to the applicant (or, in this case, the patentee), because
`the applicant has the opportunity to amend the claims to
`obtain more precise claim coverage. See Yamamoto, 740
`F.2d at 1571–72 (“Applicants' interests are not impaired
`since they are not foreclosed from obtaining appropriate
`coverage for their invention with express claim language.
`An applicant's ability to amend his claims to avoid cited
`prior art distinguishes proceedings before the PTO from
`
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`In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`proceedings in federal district courts on issued patents. When
`an application is pending in the PTO, the applicant has the
`ability to correct errors in claim language and adjust the
`scope of claim protection as needed.”); Zletz, 893 F.2d at 321
`(“[D]uring patent prosecution when claims can be amended,
`ambiguities should be recognized, scope and breadth of
`language explored, and clarification imposed.”); Hyatt, 211
`F.3d at 1372.
`
`[4]
` American Academy appeals the rejection of claims 1–
`17 and 20–26 to this court. However, the parties agree that
`the construction of the terms “user computer” and “indirectly
`issuing” is determinative as to all the claims on appeal. Claim
`1 is thus representative of all the claims at issue for purposes
`of the appeal. It claims:
`
`1. A method of operating a distributed data processing
`system
`including a plurality of
`independent, not
`necessarily uniform, general purpose user computers
`to run respective user application programs to process
`user data and a *1365 data center computer to store,
`retrieve, and update user data, said user computers being
`selectively interconnected with said data center computer
`by respective data communication hardware over data
`communication network means, said method comprising
`the steps of:
`
`(a) managing in a data center computer by means of a
`data base manager program a user data base of user data
`items to perform data operations of storing, updating,
`and retrieving said user data items in response to data
`base calls for such operations from a user computer;
`
`(b) running a user application program in a general
`purpose user computer to process user data, said user
`application program indirectly issuing data base calls
`for data operations regarding user data items in response
`to requirements for said data operations by said user
`application program;
`
`(c) in response to a data base call regarding a user data
`item from a user application program, initiating by said
`user computer only a data communication link with said
`data center computer over data communication network
`means;
`
`(d) communicating said data base call from said user
`computer to said data center computer;
`
`(e) performing by said data center computer said data
`operation regarding said user data item defined by said
`data base call; and
`
`(f) communicating an appropriate response to said data
`base call from said data center computer to said user
`computer.
`
`(emphasis added).
`
`A
`
`[5]
` American Academy first argues that the term “user
`computer” should be limited in the ′989 patent to refer
`only to single-user computers. Although the claim does
`not contain words of restriction that would suggest that
`narrow construction, American Academy argues that the
`specification makes clear that the claim language should be
`given an interpretation narrower than the ordinary meaning of
`the claim language would suggest. This court has recognized
`that a patentee “may demonstrate an intent to deviate from
`the ordinary and accustomed meaning of a claim term
`by including in the specification expressions of manifest
`exclusion or restriction, representing a clear disavowal of
`claim scope.” Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d
`1313, 1325 (Fed.Cir.2002); accord Alloc, Inc. v. Int'l Trade
`Comm'n, 342 F.3d 1361, 1368 (Fed.Cir.2003) (“A patent
`applicant may consistently and clearly use a term in a manner
`either more or less expansive than its general usage in the
`relevant art, thereby expanding or limiting the scope of the
`term in the context of the patent claims.”); SciMed Life Sys.,
`Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
`1343–44 (Fed.Cir.2001).
`
`In arguing that the specification of the ′989 patent makes
`clear that multi-user computers, such as mainframes and
`minicomputers, do not fall within the definition of “user
`′989 patent,
`computer” as that term is used in the
`American Academy points to language in the Background
`of the Invention portion of the specification discussing
`configurations that use mainframes connected to dumb
`terminals. According to American Academy, by pointing
`out the deficiencies with multi-user computers such as
`mainframes, the specification excludes those mainframes
`from the definition of user computers.
`
`It is true that the specification suggests that, as the
`number of users using a mainframe *1366 increases,
`
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`In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`the amount of processing power necessary to run all the
`user applications increases, and consequently the cost of a
`mainframe capable of handling all the requisite processing
`increases. ′989 patent, col. 1, ll. 26–41. The specification
`continues by describing why one potential solution—using
`several processors in communication with one another to
`perform the role of a single processor—is inadequate. In that
`system, the specification explains, the overhead necessary for
`communication between multiple processors would consume
`substantial computing resources. Id., col. 1, l. 42 to col. 2, l. 3.
`
`The Background of the Invention thus highlights the problems
`inherent in performing all the processing necessary to run
`multiple user applications at a central computer, whether
`that computer includes only one very expensive processor
`or several less expensive processors consuming valuable
`computing resources talking to one another. The specification
`does not, however, disclaim the networking of mainframes
`to a central computer that is devoted to database access.
`To the contrary, the Background of the Invention appears
`to allow a configuration in which multiple user applications
`are run separately on several mainframe computers, which
`communicate with a database computer that is dedicated
`to the functions of storing and retrieving data. In such a
`case, several less expensive mainframe computers could be
`used to manage the processing of an increasing number
`of user applications while the overhead associated with
`communication among processors would be limited to
`communications related to the storage and retrieval of data.
`
`American Academy argues that the specification describes
`the user stations in a way that distinguishes a “user
`computer” from a multi-user computer. In particular,
`American Academy points to a portion of the specification
`that provides as follows:
`
`the system of the present invention
`includes a plurality of user stations
`each dedicated to servicing a user
`(which could be a person, another
`device, or machine)
`and
`each
`functioning as a stand-alone computer,
`having its own central processing
`unit,
`typically a microprocessor,
`and equipment by which the user
`can communicate with the central
`processing unit, typically a video
`display and keyboard terminal. The
`user stations may have other peripheral
`equipment as well, such as disk drives,
`
`printers, card readers, or the like.
`The user stations service the users
`by executing application programs
`supplied by the users.
`
`′989 patent, col. 2, ll. 35–47 (emphasis added). American
`Academy notes that the term “user station,” which appears
`to be synonymous with “user computer” as used in the ′989
`patent, is referred to as “dedicated to servicing a user.” That
`reference, according to American Academy, indicates that a
`“user station” or “user computer” must be a computer that is
`dedicated to a single user.
`
`As the Director of the PTO points out in his brief, however,
`the specification states that a “user” can be “a person, another
`device, or machine,” which suggests that the “user computer”
`could be a mainframe or minicomputer. The Director also
`points to a portion of the specification that provides as
`follows:
`
`Although specific equipments are
`shown for the user station 4 and
`data center 8 of FIG. 2, it should
`be understood
`that a variety of
`configurations could be utilized to
`enable the user station 4 to *1367
`operate as an interface with users and
`to process application programs 116,
`and to enable the data center 8 to serve
`as a storage and retrieval center for
`data of common interest to the user
`stations.
`
`′989 patent, col. 6, ll. 79–14. The specification then
`proceeds to differentiate the user computers from the
`data center computer in terms of function, explaining
`that a “user station ... would be utilized to interact
`with the operator, generate payroll information, produce
`accounting reports, process accounts payable and accounts
`receivable, sort, compile, process hotel or airline reservation
`requests, and in general process data pursuant to a variety
`of conventional application programs” while “[t]he data
`centers ... illustratively would serve to store data relating to
`the personnel of a company, payroll information regarding
`such personnel, accounts payable and accounts receivable
`data, information regarding occupancies and vacancies in a
`hotel chain or airline system, and generally any type of data
`which may be of interest to more than one user station....” Id.,
`col. 6, ll. 14–27. According to the Director, the specification
`thus makes clear that the term “user computer” is used to refer
`
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`In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`to the function of the computer in running a user application,
`not to the identification of the user computer as a personal
`computer as opposed to a mainframe.
`
`American Academy argues that to read “user computer”
`to encompass mainframes and minicomputers would vitiate
`the word “user.” The Board, however, recognized that
`the addition of the word “user” would “disqualify those
`computers that are designed as special purpose computers for
`some use and are not intended to be reprogrammed by users
`for their own benefits.”
`
`American Academy also points to the specification's
`reference to the Zilog Z–80 as a type of computer that could
`be used in a system embodying the invention. The Zilog Z–
`80, American Academy argues, was never intended to serve
`as a multi-user computer, and thus, according to American
`Academy, the reference to the Zilog Z–80 indicates that
`multi-user computers were not intended to be within the
`scope of “user computers” as that term was used in the ′989
`patent. The specification, however, describes the Zilog Z–80
`as part of an “illustrative embodiment” of a “conventional
`microprocessor,” not as an essential element of the invention.
`′989 patent, col. 5, ll. 27–32. Moreover, the examiner, citing a
`contemporaneous reference on microprocessors, determined
`that the Zilog Z–80 had the capability to function as a multi-
`user computer.
`
`We agree with the Board that the description in the
`specification would not preclude a mainframe or a
`minicomputer from serving as the “user computer” of the
`invention. In general, the specification distinguishes a user
`computer from a data center computer in terms of function.
`Although some of the language of the specification, when
`viewed in isolation, might lead a reader to conclude that
`the term “user computer” is meant to refer to a computer
`that serves only a single user, the specification as a whole
`suggests a construction that is not so narrow. Instead, the
`specification indicates that the invention is intended to reach
`“a variety of configurations” including those in which the
`“user” is not a person, but is another device or machine. Thus,
`in light of the description in the specification, a construction
`of “user computer” that includes multi-user computers, such
`as mainframes or minicomputers, is not unreasonably broad.
`
`American Academy contends that the declarations of Dr.
`Maryanski, submitted *1368 at various points in the course
`of the reexamination proceedings, establish that one of
`ordinary skill in the art would understand the term “user
`
`computer” to mean a computer dedicated to a single user, and
`not a mainframe or minicomputer. See Teleflex, Inc. v. Ficosa
`N. Am. Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002) (“[T]he
`ordinary meaning must be determined from the standpoint of
`a person of ordinary skill in the relevant art.”); In re Cortright,
`165 F.3d 1353, 1358 (Fed.Cir.1999) (“Although the PTO
`must give claims their broadest reasonable interpretation,
`this interpretation must be consistent with the one that those
`skilled in the art would reach.”). The Board upheld the
`examiner's determination that the declarations consisted only
`of Dr. Maryanski's personal opinions and did not constitute
`persuasive evidence in support of his conclusions.
`
`[6]
` The Board has broad discretion as to the weight to
`give to declarations offered in the course of prosecution. See
`Velander v. Garner, 348 F.3d 1359, 1371 (Fed.Cir.2003)
`(“[A]ccord[ing] little weight to broad conclusory statements
`[in expert testimony before the Board] that it determined
`were unsupported by corroborating references [was] within
`the discretion of the trier of fact to give each item of evidence
`such weight as it feels appropriate.”); cf. Ashland Oil, Inc.
`v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294
`(Fed.Cir.1985) (“Opinion testimony rendered by experts must
`be given consideration, and while not controlling, generally
`is entitled to some weight. Lack of factual support for
`expert opinion going to factual determinations, however, may
`render the testimony of little probative value in a validity
`determination.” (citations omitted)). Although there is “no
`reason why opinion evidence relating to a fact issue should
`not be considered by an examiner,” In re Alton, 76 F.3d
`1168, 1175 n. 10 (Fed.Cir.1996), the Board is entitled to
`weigh the declarations and conclude that the lack of factual
`corroboration warrants discounting the opinions expressed in
`the declarations, see Velander, 348 F.3d at 1371; Ashland Oil,
`776 F.2d at 294.
`
`American Academy also asserts that the prosecution history
`of the original application that matured into the ′989 patent
`supports its construction of the term “user computer.” During
`prosecution, the PTO rejected the claims of the application
`based on a prior art patent to Anderson. The applicant
`characterized Anderson as including remote transaction
`terminals and a host data processing system, in which the
`host, and not the remote terminals, processed the transactions.
`American Academy argues that the failure of the applicant
`and the examiner to characterize the host computer as
`a “user computer” is evidence that a user computer is
`intended to service a single user. However, the applicant
`distinguished the Anderson reference on the ground that the
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
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`
`In re American Academy Of Science Tech Center, 367 F.3d 1359 (2004)
`70 U.S.P.Q.2d 1827
`
`application programs were run on the host computer, rather
`than on remote transaction terminals. In effect, the applicant
`analogized the system of Anderson to the mainframe and
`dumb terminal configuration described in the Background
`of the Invention section of the ′989 patent, with the remote
`transaction terminals of Anderson likened to dumb terminals.
`Thus, it would not have made sense for the applicant to
`compare the host computer of Anderson with the user
`computers of the application, since the user computers of the
`application were intended to replace devices analogous to
`the remote transaction terminals of Anderson. Accordingly,
`the discussion of the Anderson reference in the prosecution
`history of the original application for the ′ 989 patent *1369
`does not support American Academy's position.
`
`Finally, American Academy points to an inconsistency
`between the Board's construction of the term “user computer”
`and that of the district court in American Academy's litigation
`against Novell. In th