In Re Naren Chaganti ( 2012 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE NAREN CHAGANTI
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2011-1344
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Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: March 9, 2012
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NAREN CHAGANTI, of Town & Country, Missouri, pro
se.
RAYMOND T. CHEN, Solicitor, United States Patent &
Trademark Office, of Alexandria, Virginia, argued for
appellee. With him on the brief was SYDNEY O. JOHNSON,
JR., Associate Solicitor.
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Before NEWMAN, REYNA, and WALLACH, Circuit Judges.
PER CURIAM.
Naren Chaganti (“Chaganti”) appeals the decision by
the Board of Patent Appeals and Interferences (“Board”)
affirming the U.S. Patent and Trademark Office’s (“PTO”)
rejection of all pending claims of U.S. Patent Application
IN RE CHAGANTI 2
Serial No. 09/307,752 (“the ’752 application”) and the
Board’s subsequent denial of Chaganti’s Request for
Reconsideration. Based on the discussion below, we
AFFIRM.
BACKGROUND
The ’752 application claims an “invention [] related to
the area of publicly traded securities and other financial
instruments.” ’752 Application. Chaganti’s claimed
invention enables intangible property owners to sell
shares of the property to the highest bidder. Id. Claim 7
is representative and reads as follows:
7. A computer-implemented method of market-
ing an intangible property interest, the
method comprising the steps of:
establishing an electronic marketplace;
assigning an identifier to said intangible
property interest; storing the identifier;
receiving a bid for purchase of said in-
tangible property interest; and
selling said intangible property inter-
est.
’752 application, claim 7 (emphasis added).
The Board found that that the term “intangible prop-
erty” was not clearly defined in the specification and did
not exclude stocks and bonds; the Board therefore deter-
mined that the ’752 application was either anticipated
under 35 U.S.C. § 102(b) by U.S. Patent No. 5,873,071(“Ferstenberg”) or rejected as being obvious under 35
U.S.C. § 103(a) over Ferstenberg. Ex parte Chaganti, No.
2009-012123 (B.P.A.I. Sept. 24, 2010). 1 We have jurisdic-
tion under 28 U.S.C. § 1295(a)(4).
1 The Board also determined the claims of the ’752
application to be unpatentable under 35 U.S.C. § 103(a)
3 IN RE CHAGANTI
DISCUSSION
We review the PTO’s claim construction de novo. In re
Baker Hughes Inc., 215 F.3d 1297, 1301 (Fed. Cir. 2000).
During examination, the PTO gives claims “their broadest
reasonable construction consistent with the specification .
. . . [C]laim language should be read in light of the speci-
fication as it would be interpreted by one of ordinary skill
in the art.” In re Suitco Surface, Inc., 603 F.3d 1255, 1259-
60 (citations omitted). “The specification contains a
written description of the invention which must be clear
and complete enough to enable those of ordinary skill in
the art to make and use it.” Vitronics Corp. v. Concep-
tronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.1996). “Thus,
the specification is always highly relevant to the claim
construction analysis.” Id. This court reviews the Board’s
interpretation of disputed claim language to determine
whether it is “reasonable.” In re Morris, 127 F.3d 1048,
1054-55 (Fed. Cir. 1997).
The primary argument Chaganti makes on appeal
challenges the PTO’s interpretation that “intangible
property” does not exclude “stocks and bonds.” Chaganti
argues he is able to act as his own lexicographer, having
defined “intangible property” in the specification so that it
excludes stocks and bonds; he asserts that the specifica-
tion clearly illustrates the intent to exclude stocks and
bonds. Chaganti also argues that the PTO erred in not
considering the specification.
Chaganti is correct that “[a] patentee may act as its
own lexicographer and assign to a term a unique defini-
tion that is different from its ordinary and customary
over multiple other prior art references. However, it
seems that Appellant only challenges the Board’s conclu-
sions regarding Ferstenberg. See Appellant’s Informal
Reply Brief (“Appellant’s Reply”) at 1-5.
IN RE CHAGANTI 4
meaning; however, a patentee must clearly express that
intent in the written description.” Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir.
2008) (emphasis added). Here the specification does not
clearly define “intangible property” or indicate the pat-
entee’s intent to exclude stocks and bonds from the phrase
“intangible property.”
The specification begins: “This invention is related to
the area of publicly traded securities and other financial
instruments,” ’752 application at 1, which may be rea-
sonably understood to encompass stocks and bonds. The
patent then recites a non-exclusive list of what this par-
ticular invention is “related to,” offering a wide variety of
potential subject matters:
the use of an electronic apparatus to issue, list,
price and trade property interests in intangible
forms of property such as patents, trademarks,
copyrights, goodwill, licenses, leases, easements,
rights, a seafaring route and others; personal
rights such as a right to future income of a person;
special objects such as collectibles; and services
such as a musician’s concert recital time or a
babysitter’s time.
Id. The specification also states:
It should be noted that though a certain types of
properties [sic] are discussed in the foregoing, that
discussion is by no means limited to the actual
types of properties used as an illustration. Thus,
the invented method and system should not be
limited by the discussion provided herein.
Id. at 6.
The specification’s list of subject matters relating to
the invention makes it difficult to determine the defini-
5 IN RE CHAGANTI
tion of “intangible property.” In addition, by its very
terms, the specification is confusing. It notes that “no
publicly tradeable stock marketplace exists for the sale of
certain non-corporate, non-commodity forms of property,”
citing again to the list above, and adds later that “[t]here
is a need, therefore, for a system and method to accom-
modate sales of such tangibles and intangibles in the
marketplace.” Id. at 1-2. The imprecise and unclear use
of the terms “stock,” “non-corporate,” “non-commodity,”
“tangible,” and “intangible,” complicates the meaning of
“intangible property” and its limitations.
Chaganti is correct that the specification also states
that “according to the present invention, trading shares in
an electronic communication medium involves subject
matter other than a corporate stock, bond, option, or
futures contracts to delivery of commodities.” Id. at 9.
Indeed, the specification states “the invention is directed
toward a method and system to issue, list, price, and
trade securities in certain forms of special property for
which no publicly tradeable marketplaces currently exist,”
while also drawing a contrast, numerous times, to estab-
lished systems such as the New York Stock Exchange. Id.
at 1-2. 2 Chaganti contends that this disclosure is a clear
indication that the meaning of “intangible property” as
used in the specification excludes stocks and bonds.
However, since the term “intangible property” is not
clearly defined, nor do the embodiments of the invention
disclosed in the specification reveal a clear intent to
exclude stocks and bonds from the scope of the claims, the
2 Chaganti also asserts that the PTO erred by not
separately addressing the dependent claims. Since
Chaganti does not make distinct arguments with respect
to the patentability of the dependent claims on appeal,
however, those claims fall along with the independent
claims.
IN RE CHAGANTI 6
Board’s construction of “intangible property” is reasonable
in view of the written description, and how the written
description would be interpreted by one of ordinary skill
in the art.
CONCLUSION
The Board reasonably determined that the contested
claim term encompasses stocks and bonds, and we there-
fore affirm the anticipation and obviousness rejections
made to the claims.
AFFIRMED.