Ex Parte A. James Smith, Jr. Appellant and Patent Owner, 2010 WL 3269939 (2010)
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`2010 WL 3269939 (Bd.Pat.App. & Interf.)
`
`Board of Patent Appeals and Interferences
`
`Patent and Trademark Office (P.T.O.)
`
`Ex Parte A. James Smith, Jr. Appellant and Patent Owner
`
`Appeal 2009-014595
`Reexamination Control 90/008,078
`Patent 6,571,336 B1 Technology Center 3900
`August 17, 2010
`*1 AMSTER, ROTHSTEIN & EBENSTEIN LLP
`90 PARK AVENUE
`NEW YORK, NY 10016
`
`Before JEAN R. HOMERE, SCOTT R. BOALICK, and KEVIN F. TURNER
`Administrative Patent Judges
`TURNER
`Administrative Patent Judge
`
`DECISION ON APPEAL 1
`
`A. James Smith, Jr. 2 appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claims 6, 7, 27, 28, 35-39, and
`41-45. Claims 1, 3-5, 8- 26, and 29-32, the only other pending claims, have been indicated as patentable and/or confirmed,
`with claims 1, 27, 33, and 39 having been amended. Therefore, claims 6, 7, 27, 28, 33, 35-39, and 41-45 stand before us
`on Appeal. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
`
`We AFFIRM.
` 
`
`STATEMENT OF THE CASE
`
`This proceeding arose from a request for ex parte reexamination filed by A. James Smith, Jr., patent owner, on June
`26, 2006 of United States Patent 6,571,336 B1 issued to A. James Smith, Jr. on May 27, 2003, based on United States
`Application 09/970,955 filed October 4, 2001.
`
`Patentee's invention relates to a method and system for securing passwords and personal identification numbers utilizing
`a MasterCode camouflaged within a Mastergrid which contains all the characters, symbols or pictograms of which the
`MasterCode is a subset. (Abs., Spec. col. 1, ll. 52-55).
`
`Exemplary Independent Claim 6 reads as follows:
`6. (Original) A method for securing data and for providing secure access to the data comprising the steps of:
`
`creating a graphical image;
`
`encrypting said data using said graphical image as an encryption key, wherein said encryption key is formed from a
`character set, and
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`Ex Parte A. James Smith, Jr. Appellant and Patent Owner, 2010 WL 3269939 (2010)
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`providing the capability to utilize said key for gaining access to said data.
`
`The prior art reference relied upon by the Examiner in rejecting the claims is:
`
`May 15, 2007
`7,219,368 B2
`Juels et al. (“Juels”)
` 
` 
` 
`The Examiner rejected claims 6, 7, 27, 28, 33, 35-39, and 41-45 under 35 U.S.C. § 102(e) as anticipated by Juels. (Ans. 4).
`
`Appellant relied upon the following in rebuttal to the Examiner's rejection:
`
`Smith, Jr. (“Smith, Jr. ′328”)
` 
`
`US 6,253,328
` 
`
`Jun. 26, 2001 (See App. Br. 6-13)
` 
`
`ISSUE
`
`*2 Appellant contends that the Examiner's sole rejection of claims 6, 7, 27, 28, 33, 35-39, and 41-45 under 35 U.S.C.
`§ 102(e) as anticipated by Juels is in error because Juels 3 is not prior art. (App. Br. 6, see also Reply Br. 2). Appellant
`asserts that the presently rejected claims of U.S. Patent No. 5,671,336 4 (hereinafter “the ′336 patent”), under Appeal,
`are entitled to the priority date of its parent, U.S. Patent No. 6,253,328 5 (hereinafter “the ′328 patent”). Thus, Appellant
`argues that Jules, which was filed after the ′328 patent, cannot be a reference against the rejected claims. (Reply Br.
`1- 2). The Examiner responds that “[e]ach of the claims on appeal recite[] the limitation ‘graphical image,’ for which
`there's no support in the ′328 patent.” (Ans. 8). Specifically, the Examiner finds that the display of the MasterCode in
`a MasterGrid as disclosed in the ′328 patent, is not a “graphical image.” (Ans. 8).
`
`Thus, the sole dispositive issue 6 arising from the respective positions of Appellant and the Examiner is:
`
`Was the Examiner's determination in error, specifically that at the time of the invention, the disclosure of the ′328 patent
`does not reasonably convey to one of ordinary skill in the art that the Appellant had possession of a “graphical image,”
`as presently claimed in the ′336 patent, and as such, Appellant is not entitled to claim benefit of the ′328 patent's filing
`date?
` 
`
` 
`Facts Pertinent to the Original Prosecution History of the ′336 Patent (Child)
`
`FINDINGS OF FACT
`
`1. The ′336 patent, U.S. App. No. 09/970,955, claims domestic priority under 35 U.S.C. § 120 as a continuation-in-part
`(hereinafter “CIP”) of U.S. App. No. 09/891,132 filed on June 25, 2001, now abandoned, which claimed priority to U.S.
`App. No. 09/022,578, now the ′328 patent, filed on February 12, 1998,
`
`2. In a Non-Final First Office Action (hereinafter “FAOM”) mailed, May 22, 2002, the Examiner acknowledged
`Appellant's claim for domestic priority, but the Examiner did not find adequate support under 35. U.S.C. § 112, first
`paragraph for original claims 6-12 and 27-32 in the ′328 patent, the parent application. (FAOM 4)
`
`3. In the FAOM, the Examiner found with respect to claims 6-12, that there was no “… written description of encrypting
`data using a graphical image as an encryption key [citation omitted].” (FAOM 4).
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`Ex Parte A. James Smith, Jr. Appellant and Patent Owner, 2010 WL 3269939 (2010)
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`*3 4. In the FAOM, the Examiner found with respect to claims 27-32, that there was “… no support for masking data
`using a graphical image as a key. [citation omitted].” (FAOM 4).
`
`5. In Appellant's Remarks 7 , received August 7, 2008 (hereinafter “App. Remarks”), Appellant responded to the FAOM
`stating, “[w]ith respect to claim 12, it is submitted that claim 12 is fully supported by the [′328 patent], because claim 12
`of the pending application is exactly the same claim 12 in the [′328 patent].” 8 (App. Remarks 5).
`
`6. In a Final Office Action, mailed September 26, 2002 (hereinafter “FOA”), the Examiner maintained the priority
`findings from the FAOM with respect to claims 6-11 9 and 27-32. (FOA 4).
`
`7. Additionally, in the FOA, the Examiner denied benefit of priority to new claims 43-55. (FOA 4).
`
`8. In the FOA, the Examiner found with respect to claims 43-55 that the ′ 328 patent “… provides no support for
`masking a password in a graphical image [citation omitted].” (FOA 4).
`
`9. After a Request for Continued Examination, received December 20, 2002, a Notice of Allowance (hereinafter “NOA”)
`was mailed on February 10, 2002.
`
`10. In the NOA, the Examiner allowed claims 1-32 and 43-55, but in the Reasons for Allowance, the Examiner again
`maintained that the ′328 patent, upon which priority is claimed fails to provide adequate support under 35 U.S.C. §
`112, first paragraph for claims 6-11, 27-32, and 43-55. (NOA 2-3).
` 
`Facts Pertinent to the Reexamination Prosecution History of the ′336 Patent (Child)
`
`11. Appellant requested reexamination of the ′336 patent in a Request for Ex Parte Reexamination by Patent Owner,
`filed June, 26, 2006 (hereinafter “Req. for Reexam.”).
`
`12. In the Request for Reexamination, Appellant raised substantial new questions of patentability with respect to
`independent claims 33 and 39 in view of the Blonder Patent 10 .
`
`13. Appellant responded to an ex parte reexamination Non-Final Action, mailed January 28, 2008 (hereinafter “NFA”),
`with arguments to antedate Jules as prior art, in a response filed March 28, 2008 (hereinafter “App. Response to NFA”).
`(App. Response to NFA 7-15).
`
`14. In an ex parte reexamination Final Action, mailed May 27, 2008 (hereinafter “RFA”), the Examiner confirmed claims
`1, 3-5, 8-26, and 29-32, but refused to disqualify Jules as prior art for claims 6, 7, 27, 28, 33, 35-39, and 41-54. (RFA 7).
`
`15. Appellant responded to the Examiner's RFA in a response filed July 14, 2008 (hereinafter “App. Response to RFA”),
`again attempting to disqualify Jules as prior. (App. Response to RFA 5-13).
`
`*4 16. Appellant filed a Notice of Appeal, received August 21, 2008, in response to the Reexamination Examiner's RFA
`denying benefit of priority to the ′328 patent with respect to claims 6, 7, 27, 28, 33, 35-39, and 41-45.
`
`17. The Examiner finds that there is no support in the ′328 patent for each of the claims 6, 7, 27, 28, 33, 35-39, and
`41-45, which recite the term “graphical image.” (Ans. 8).
` 
`Facts Pertinent to the Filing Date of the Jules Reference
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`Ex Parte A. James Smith, Jr. Appellant and Patent Owner, 2010 WL 3269939 (2010)
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`18. Jules was filed as U.S. App. No. 09/815,560 on March 23, 2001 and issued from this application on May 15, 2007.
`
`19. Jules claims priority as a CIP of PCT/US00/03522, filed on February 10, 2000.
`
`20. PCT/US00/03522 claims priority to Provisional Apps. 60/119,674 and 60/137,687, filed February 11, 1999 and June
`4, 1999, respectively.
`
`21. Jules is also a CIP of U.S. App. No. 09/544,809, filed April 7, 2000, now abandoned.
`
`22. The Jules Reference is definitively available as prior art as of March 23, 2001 which antedates only the filing date
`of the ′336 patent by approximately 195 days. 11
` 
`Facts Pertinent to the Filing Date of the ′328 Patent (Parent)
`
`23. The ′328 patent, was filed February 12, 1998.
`
`24. The ′328 patent antedates the earliest possible effective filing date of the Jules Reference by approximately 364
`days. 12
` 
`
`PRINCIPLES OF LAW
`
`Determination of a priority date is purely a question of law if the facts underlying that determination are undisputed. See
`E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C., 525 F.3d 1353, 1359 (Fed. Cir. 2008). However,
`determination whether a priority document contains sufficient disclosure to comply with the written description aspect of
`35 U.S.C. § 112, first paragraph, is a question of fact. Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558 (Fed.Cir.1994);
`Bradford Co. v. Conteyor North America, Inc., 603 F.3d 1262, 1269 (Fed. Cir. 2010)).
`
`Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an
`appellant fails to present arguments on a particular issue - or, more broadly, on a particular rejection - the Board will
`not, as a general matter, unilaterally review those uncontested aspects of the rejection. See, e.g., Hyatt v. Dudas, 551
`F.3d 1307, 1313-14 (Fed. Cir. 2008) (the Board may treat arguments appellant failed to make for a given ground of
`rejection as waived).
`
`Different claims of a continuation-in-part (CIP) application may receive different effective filing dates because subject
`matter arising “for the first time in the CIP application does not receive the benefit of the filing date of the parent
`application.” Augustine Medical, Inc. v. Gaymar Indus., Inc., 181 F.3d 1291, 1302 (Fed. Cir. 1999). Under 35 U.S.C. §
`120, “in a chain of continuing applications, a claim in a later application receives the benefit of the filing date of an earlier
`application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including
`the written description requirement, with respect to that claim.” Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316,
`1326 (Fed. Cir. 2008) (citing Transco Prods. Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556 (Fed. Cir. 1994)).
`
`*5 Prosecution history can also be relevant to claim interpretation. See Renishaw plc v. Marposs Societa per Azioni, 158
`F.3d 1243, 1249 n.3 (Fed. Cir. 1998) (“[A]ny interpretation that is provided or disavowed in the prosecution history also
`shapes the claim scope.”); see also Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002)
`(“[P]rosecution history … cannot be used to limit the scope of a claim unless the applicant took a position before the
`PTO that would lead a competitor to believe that the applicant had disavowed coverage of the relevant subject matter.”).
`
`An applicant's statement to the examiner is a compelling disclaimer of scope such that a patent may not be entitled
`to an earlier priority date. Bradford, 603 F.3d at 1269 (citing Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340,
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`Ex Parte A. James Smith, Jr. Appellant and Patent Owner, 2010 WL 3269939 (2010)
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`1350 (Fed. Cir. 2004) (“We take the patentee at its word and will not construe the scope of … [a] patent's claims more
`broadly than the patentee itself clearly envisioned.”)). That is because arguments made to persuade an examiner to allow
`an application trump an ambiguous disclosure that otherwise might have sufficed to obtain an earlier priority date.
`See Standard Oil Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (holding that any argument made to
`convince the examiner of the patentability of the claimed invention “limits the interpretation of claims so as to exclude
`any interpretation that may have been disclaimed or disavowed during prosecution in order to obtain claim allowance”).
` 
`
`ANALYSIS
`
`Appellant's sole argument in response to the Examiner's rejection of claims 6, 7, 27, 28, 33, 35-39, and 41-45 under
`35 U.S.C. § 102(e) is that Jules is not prior art since Appellant is relying on the filing date of the ′328 patent which
`discloses the term “graphical image,” and thus provides written support under 35 U.S.C. § 112, first paragraph, thereby
`disqualifying Jules. (App. Br. 6-7, see also Reply Br. 2). We are not persuaded by Appellant's arguments and agree with
`the Examiner that Jules is prior art under 35 U.S.C. § 102(e) with respect to claims 6, 7, 27, 28, 33, 35-39, and 41-45.
`(FF 17, 18, 22).
`
`During the course of reexamination prosecution, the Examiner denied Appellant's claim to benefit of priority to the ′328
`patent, and found no support in the ′328 patent for each of the claims in the ′336 patent that recite the term “graphical
`image.” 13 (Ans. 8). However, we find no need to make a determination as to whether the ′328 Patent provides support
`for the contested subject-matter during this reexamination, and instead find that Appellant is estopped from disqualifying
`Jules as intervening art since Appellant failed to traverse the Examiner's findings regarding priority during the original
`prosecution of the ′336 Patent (FF 5) and in fact did not raise any issues regarding benefit of priority to the ′328 patent
`in the Request for Ex Parte Reexamination by Patent Owner. (FF 11, 12).
`
`*6 In making this determination, we find that during the original prosecution of the ′336 patent, the Examiner made
`specific unambiguous priority findings during a First Office Action (FF 2, 3, 4), a Final Office Action (FF 6, 7, 8), and
`again in the Examiners Reasons for Allowance (FF 10). In response to these priority findings, Appellant did not contest
`the findings other than to correct the Examiner's apparent clerical error. (FF 5). Thus, in overcoming the prior art during
`the prosecution of the ′336 patent without attempting to traverse the Examiner's priority findings, the Appellant forwent
`opportunities to persuade the Examiner that there may be support for the contested subject-matter in an ambiguous
`disclosure that otherwise might have sufficed to obtain an earlier priority date. Determination of a priority date is purely
`a question of law if the facts underlying that determination are undisputed. See E.I. du Pont de Nemours, 525 F.3d at 1359.
`
`Further, while we realize that a patentee's silence in the face of the Examiner's Reasons for Allowance (FF 10) should
`not be treated as an acquiescence, we do find these facts compelling, and thus cannot be ignored when combined with
`the Appellant's silence in the responses to formal office actions during the original prosecution. As a result, we find that
`it would be reasonable to infer from this that Appellant did not contest the Examiner's priority findings, and indeed is
`not rightfully entitled to benefit from the ′ 328 patent's earlier effective filing date for the claims presently at issue. Thus,
`we find that based upon Appellant's silence and the prosecution history in toto, it would be reasonable for a competitor
`to believe that the applicant had disavowed priority with respect to claims 6, 7, 27, 28, 33, 35-39, and 41-45 based on
`the original Examiner's priority findings.
`
`Therefore, based upon the Examiner's unambiguous priority findings (FF 2, 3, 4, 6, 7, 8), the Appellant's full and fair
`opportunity to contest these findings during original prosecution (FF 5), and their opportunity to appeal to the Board
`(FF 9), we find that these circumstances have created an estoppel for the Appellant to deny that there was new matter
`present in the CIP. As such, Appellant's silence during the original prosecution creates an estoppel for the Appellant to
`deny the Examiner's repeated priority findings, thereby impliedly conceding their correctness, and therefore Appellant's
`lack of entitlement to the original filing date of the ′328 patent for the term “graphical image,” as recited in claims 6,
`7, 28, 33, 3-9, and 41-45 of the ′336 patent.
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`Ex Parte A. James Smith, Jr. Appellant and Patent Owner, 2010 WL 3269939 (2010)
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`Accordingly, we find that the prosecution history of the ′336 patent does indeed alter the patent scope of the ′336
`patent with respect to priority such that the ′336 patent is not entitled to priority of the earlier effective date of the ′328
`patent for the claims presently on Appeal, and as such find that Appellant is estopped from making arguments during
`reexamination that should have been made during the course of original prosecution or within the period to enlarge the
`scope of the claim in reissue under 35 U.S.C. § 251.
` 
`
`CONCLUSIONS
`
`*7 Appellant has failed to show that the Examiner reversibly erred in determining that that at the time of the invention,
`the disclosure of the ′ 328 patent does not reasonably convey to one of ordinary skill in the art that the Appellant had
`possession of a “graphical image,” as presently claimed in the ′336 patent, and as such, Appellant is not entitled to claim
`benefit of the ′328 patent's filing date.
` 
`
`DECISION
`
`The decision of the Examiner to reject claims 6, 7, 27, 28, 33, 35-39, and 41-45 is AFFIRMED.
`
`Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37
`C.F.R. § 41.50(f).
` 
`
`AFFIRMED
`
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`Footnotes
`1
`The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a
`request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” shown on the PTOL-90A cover
`letter attached to this decision.
`A. James Smith, Jr. is the real party in interest and the current owner of the patent under reexamination.
`Juels, App. No. 09/815,560, was filed March 23, 2001.
`The ′336 patent, App. No. 09/970,955, was filed October 4, 2001, and claims priority as a Continuation-in-part to App. No.
`09/891,132, filed on June 25, 2001, now abandoned, which claims priority to Continuation App. No. 09/022,578, filed on
`February 12, 1998, now Patent No. 6,253,328 B1.
`The ′328 patent, App. No. 09/022,578, was filed February 12, 1998.
`Appellant makes no arguments regarding the scope and content of the Jules reference as it applies to the present claims other
`than to argue that it is not prior art due to its filing date. (App. Br. 11-14).
`Appellant additionally filed a Terminal Disclaimer to the ′328 patent, received August 7, 2002.
`Throughout the entire prosecution of the ′336 patent, this is Appellant's only argument in response to the Examiner's findings
`regarding priority.
`The Examiner withdrew the priority findings regarding claim 12 and granted benefit of the filing date of the ′328 patent to
`claim 12. (FOA 5).
`The Blonder Patent, entitled “Graphical Password” was filed as U.S. App. No. 08/520,904 on August 30, 1995, claiming
`priority as a continuation to now abandoned U.S. App. No. 08/223,252, and issued September 24, 1996, as U.S. Pat. No.
`5,559,961. The Blonder Patent expired due to nonpayment of maintenance fees under 37 C.F.R. § 1.362.
`This calculation is based upon the assumption that the Jules Reference finds no support in any of the earlier filing dates in
`which it claims priority to. Based upon this assumption, Jules is available as prior art against the ′ 336 patent's filing date
`under 35 U.S.C. § 102(e).
`This calculation is absent any consideration as to whether the Jules Reference provides written support to this earliest possible
`effective filing date.
`During reexamination, the reexamination Examiner did not cite to the original prosecution Examiner's priority findings.
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`Ex Parte A. James Smith, Jr. Appellant and Patent Owner, 2010 WL 3269939 (2010)
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`2010 WL 3269939 (Bd.Pat.App. & Interf.)
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`End of Document
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`© 2016 Thomson Reuters. No claim to original U.S. Government Works.
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` © 2016 Thomson Reuters. No claim to original U.S. Government Works.
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