In Re: Lockwood , 679 F. App'x 1021 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: LAWRENCE B. LOCKWOOD,
Appellant
______________________
2016-1371
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/012,671.
______________________
Decided: February 13, 2017
______________________
JENNIFER ISHIMOTO, Banie & Ishimoto LLP, Menlo
Park, CA, for appellant.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by THOMAS W.
KRAUSE, JEREMIAH HELM, MONICA BARNES LATEEF.
______________________
Before PROST, Chief Judge, MOORE, and CHEN, Circuit
Judges.
CHEN, Circuit Judge.
This appeal arises from an ex parte reexamination of
U.S. Patent No. 7,010,508. The Patent and Trademark
Office’s Patent Trial and Appeal Board affirmed the
2 IN RE: LOCKWOOD
examiner’s determination that certain claims of the ’508
patent are unpatentable as anticipated (claims 8–14) or
obvious (claim 15). Ex parte Lockwood, No. 2015-000143,
2015 WL 1802443 (PTAB Apr. 17, 2015) (Board Decision).
Patent Owner Lawrence B. Lockwood appeals the Board’s
decision. Because we agree with the Board that the
claimed “stored data” is not limited to data fetched from a
remote location and that the prior art Johnson reference
discloses “stored data” as properly construed, we affirm
the Board’s decision.
BACKGROUND
The ’508 patent issued on May 7, 2006. It comes from
a long line of continuation applications that claim priority
to May 24, 1984. 1 The patent “relates to terminals used
by banking and other financial institutions to make their
services available at all hours of the day from various
remote locations.” ’508 patent, 1:22–25.
While the patented invention is claimed broadly, the
specification describes the invention in the context of
applying for a loan. See id. at 1:47–48 (“The principal
object of this invention is to provide an economical means
for screening loan applications.”). The specification
explains that “up to 75% of persons applying for loans fail
to meet the financial institution qualification criteria.”
Id. at 1:48–50. The invention seeks to streamline the loan
application process by weeding out these applicants before
they reach a loan officer. It accomplishes this goal by
introducing a system of remote terminals in communica-
tion with financial institutions and credit rating services
1 The Board affirmed the examiner’s determination
that the ’508 patent was not, in fact, entitled to the
claimed May 24, 1984 priority date. Board Decision at *6.
Lockwood does not appeal this decision. Appellant’s
Opening Br. at 4 n.3.
IN RE: LOCKWOOD 3
via telecommunication links. Id. at 2:27–30. The specifi-
cation describes the function of the remote terminals as
follows:
Each remote terminal displays the live image of a
fictitious loan officer who helps the applicant
through an interactive series of questions and an-
swers designed to solicit from the applicant all the
information necessary to process his loan applica-
tion. The terminal can acquire credit rating in-
formation about the applicant from the credit
reporting bureau and make a decision based on all
the information gathered about the credit worthi-
ness of the applicant and the amount of loan to
which he is entitled. The loan amount is then
communicated to the applicant and to the finan-
cial institution for further processing of the loan.
Id. at 1:67–2:11.
The PTO instituted ex parte reexamination of claims
1–17 of the ’508 patent in response to a request by an
anonymous third party. The examiner found claims 1–7,
16, and 17 patentable; claims 8–14 unpatentable as
anticipated by Johnson 2; and claim 15 unpatentable as
obvious in view of Johnson in combination with AIC3.
Lockwood appealed the examiner’s decision with respect
to claims 8–15 to the Board.
2 Harold E. Johnson, Jr. and Piero P. Bonissone,
Expert System for Diesel Electric Locomotive Repair,
1 JOURNAL OF FORTH APPLICATION AND RESEARCH 1, Sept.
1983, at 7.
3 Principles of Rule-Based Expert Systems, in 22
ADVANCES IN COMPUTERS, 163 (Marshall C. Yovits ed.
1983).
4 IN RE: LOCKWOOD
The Board affirmed the examiner’s decision. The
Board’s analysis focused on claim 8, the lone independent
claim at issue in the appeal:
8. An automated multimedia system for data
processing for delivering information on request to
at least one user, which comprises:
at least one computerized station;
means for accepting and processing an us-
er’s entry according to backward-chaining
and forward-chaining sequences, includ-
ing:
means for analyzing and for combining an
user’s entry with a set of stored data, and
means, responsive to said means for ana-
lyzing and for combining, for formulating
a query and outputting said query to said
user; and
means for delivering information to said
user.
’508 patent, 7:47–59 (emphasis added). More specifically,
the Board’s analysis focused on the “a set of stored data”
language of the limitation emphasized above. The Board
rejected Lockwood’s argument that the claimed “a set of
stored data” should be narrowly construed to mean “data
accessed from a remote location.” Board Decision at *8.
It instead agreed with the examiner that “a set of stored
data” should be broadly construed to “read[] on any data
in any location (e.g., local data, remote data, or data
located somewhere in between).” Id. Based on its con-
struction, the Board affirmed the examiner’s anticipation
and obviousness rejections.
Lockwood filed a Request for Rehearing before the
Board. He argued that the Board erred by refusing to
consider the ’508 patent’s prosecution history when it
IN RE: LOCKWOOD 5
rendered its claim construction. While the Board seemed
to doubt that it was required to consider a patent’s prose-
cution history when construing claims in a reexamination
proceeding, it nonetheless reevaluated the claim term “a
set of stored data” in view of the ’508 patent’s prosecution
history and maintained its original construction. J.A. 10.
Lockwood now appeals the Board’s decision. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
Lockwood appeals both the Board’s claim construction
of “a set of stored data” and its factual findings with
respect to the prior art Johnson reference. We address
each issue in turn.
I. Claim Construction
We apply the framework established in Teva Pharma-
ceuticals U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831
(2015), when reviewing a claim construction adopted by
the Board. Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015). Under that framework, claim
construction is reviewed de novo with any underlying
factual determinations reviewed for substantial evidence.
Id. (citing Teva, 135 S. Ct. at 841–42).
Before the Board, Lockwood’s claim construction ar-
gument focused on the term “a set of stored data” rather
than the full limitation “means for analyzing and for
combining an user’s entry with a set of stored data.” On
appeal to us, however, Lockwood asserts that “the Board
erred in not performing a proper means-plus function
analysis [of the full limitation] . . . and failed to limit the
claim term in dispute to the algorithms disclosed in the
specification (and equivalents thereof).” Appellant’s
Opening Br. at 9.
We find Lockwood’s argument misplaced. Lockwood
does not dispute that the examiner performed a “means-
6 IN RE: LOCKWOOD
plus-function analysis” when he analyzed the claims. See
id. at 21 n.5; see also J.A. 5829–30 (“The structure corre-
sponding to such function . . . as best understood, is
interpreted to be a processor onsite/of the computerized
station which is run/programmed/implemented by soft-
ware to automatically analyze . . . and combine a user’s
entry with a set of stored data, and equivalents thereof.”
(emphases omitted)). In affirming the examiner’s rejec-
tion of claims 8–15, the Board did not introduce its own
construction. Rather, it adopted the examiner’s means-
plus-function construction. Board Decision at *9 (“[W]e
are not persuaded the Examiner’s broader interpretation
is overly broad, unreasonable, or inconsistent with [the]
’508 patent [s]pecification.”).
That the Board focused its analysis on the “a set of
stored data” language within the larger limitation is
unsurprising. When Lockwood appealed the examiner’s
unpatentability finding to the Board, he directed his claim
construction arguments to the term “stored data” alone.
See J.A. 11242 (“At least the claim term ‘stored data’ in
the claim feature ‘means for analyzing and for combining
an user’s entry with a set of stored data’ is required to be
construed.”); see also Appellant’s Opening Br. at 9–10
(“The central issue in the reexamination was whether or
not the ‘stored data’ within this claim could be ‘any type of
data in any location’ (as found by the Board) or whether it
was limited to ‘data fetched from a remote location’ as
advocated by Appellant.”). He consistently argued that
the examiner’s construction was overbroad and that the
Board should narrowly construe “stored data” to mean
“data accessed from a remote location.” See, e.g.,
J.A. 11245 (“Proper interpretation of the term ‘means for
analyzing and for combining an user’s entry with a set of
stored data,’ requires interpretation of the term ‘set of
stored data’ to mean data accessed from a remote loca-
tion.”); J.A. 11246 (“Patent Owner was his own lexicogra-
pher for ‘stored data’ showing the term meant data
IN RE: LOCKWOOD 7
accessed from a remote location . . . .”). 4 The Board found
otherwise. In reaching its conclusion, the Board was
entitled to focus on the portion of the claim limitation at
issue between the parties, rather than expending time
and resources on those parts of the examiner’s construc-
tion that were not in dispute. We thus reject Lockwood’s
attempt to reframe the argument he raised below to
suggest that the Board failed to address an issue that
Lockwood never actually raised.
Lockwood next argues that the Board erred as a mat-
ter of law by failing to consider the ’508 patent’s prosecu-
tion history when construing the claims. We find this
argument to be without merit. In its initial decision, the
Board did “decline to consider the prosecution history”
under the mistaken belief that the prosecution history
from the original examination is irrelevant to claim
construction in reexamination proceedings. Board Deci-
sion at *8 n.6. However, when Lockwood presented the
Board with our decision in Microsoft Corp. v. Proxyconn,
Inc., 789 F.3d 1292 (Fed. Cir. 2015), the Board ultimately
did “consult[] the ’508 patent’s prosecution history (includ-
ing the reexamination files).” J.A. 10 (emphases omitted).
While the Board ultimately refused to alter its claim
construction in view of the prosecution history, it did
consider the prosecution history.
Finally, Lockwood argues that the Board miscon-
strued “stored data,” repeating the argument it made to
the Board that the term should be narrowly construed to
4 Lockwood’s arguments to us likewise focus on the
claim term “stored data,” not the larger “means” limita-
tion. See e.g., Appellant’s Reply Br. at 7 (“This case turns
on whether the ‘stored data’ of claim 8 must be construed
to contain data fetched from a remote location, and the
underlying structure of the claim is a terminal equipped
to communicate over a network.” (emphasis added)).
8 IN RE: LOCKWOOD
mean data accessed from a remote location. Lockwood
cites portions of the ’508 patent specification in which
certain data is stored at financial institutions and credit
rating services remote from the terminal. See Appellant’s
Opening Br. at 22–24 (citing ’508 patent, 2:27–30 and
3:27–33, among others). Lockwood further contends that
he disavowed any construction of “stored data” that
included locally stored data during prosecution of the
original claims of the ’508 patent.
We disagree. Nothing in the plain language of claim 8
requires that the “stored data” be accessed from a remote
location. The claim on its face reads on data stored re-
motely or locally. In this way, claim 8 stands apart from
other claims upheld as patentable by the examiner.
Those claims expressly require access to remotely stored
data. See, e.g., ’508 patent, 7:1–3 (claim 1: “means for
receiving data comprising operator-selected information
and orders from said installation via said means for
communicating”); id. at 8:61 (claim 17: “means for receiv-
ing data from said installation”).
Further, the specification lacks a definition of “stored
data.” It includes non-limiting examples of “stored data”
that reside remote from the terminal (e.g., financial
institutions, credit rating services). Moreover, the specifi-
cation makes clear that the information transmitted from
the financial institutions and credit rating services to the
terminal is stored in a local RAM before that information
is used by the terminal. See ’508 patent, 3:48–51 (“Thus,
the RAM memory can be used to hold data obtained from
the loan rate files 109 at the financial institution as well
as applicant’s financial profiles obtained from the credit
rating service 103.”); see also id. at 4:28–30 (“The terminal
goes into a standby mode with its DMA unit 116 waiting
for a transfer of information from the line into the RAM
memory 117.”). The ’508 patent’s Figure 5 shows that the
information is read from the local memory—not accessed
from a remote location—when it is used by the terminal:
IN RE: LOCKWOOD 9
Taken together, the plain language of claim 8 and the
description in the ’508 patent specification confirm that
“stored data” should be read broadly to encompass both
data stored remotely and locally. As such, the Board
properly chose not to adopt the contrary opinion of Lock-
wood’s expert.
Lockwood’s arguments with respect to the prosecution
history are likewise unavailing. “To constitute disclaimer,
there must be a clear and unmistakable disclaimer.”
Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1366–67 (Fed. Cir. 2012). Then-applicant Lock-
wood’s statements to the PTO contain words like “may”
and “for example.” J.A. 162 (“Information processed by
means of one of the terminals 105 may be stored then
retrieved as, for example, a loan quotation.” (emphases
added)). They are not the “clear and unmistakable”
statements necessary for disclaimer.
Lockwood’s statements during reexamination fare no
better. Lockwood certainly proposed a narrow claim
construction to the Board. But the Board is not obligated
to treat a patent owner’s claim construction arguments on
appeal as prosecution history disclaimer. See Tempo
Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 978 (Fed. Cir.
2014) (“This court also observes that the PTO is under no
obligation to accept a claim construction proffered as a
10 IN RE: LOCKWOOD
prosecution history disclaimer, which generally only binds
the patent owner.”).
And, Board statements from an earlier appeal are
simply too ambiguous to find disclaimer. The Board
upheld an examiner’s rejection of claim 8 (as originally
drafted) as obvious over another Lockwood patent.
J.A. 260. As part of its analysis, the Board stated that it
understood the claimed “means for combining a user’s
entry with a set of stored data” “as disclosed and argued
. . . refer[red] to employing both a user’s keyed input and
data stored in the central processor in order to control
various means responsive to both of these items.”
J.A. 259–60. While this statement suggests that then-
applicant Lockwood argued that stored data included
remotely stored data in the form of “data stored in the
central processor,” nothing in the statement or other
citations provided by Lockwood demonstrates disclaimer
of locally-stored data.
We therefore affirm the Board’s construction of “a set
of stored data” to include data stored locally to the termi-
nal. 5
II. PATENTABILITY
The Board affirmed the examiner’s finding that inde-
pendent claim 8 was anticipated by Johnson. Board
5 While Lockwood mentions in his opening brief
that his petition to have an amendment entered after
final rejection was denied, we do not read his brief as
including a challenge to that petition decision. Even if
Lockwood had included such a challenge, we would be
without jurisdiction to consider that petition in this
appeal. See In re Berger, 279 F.3d 975, 984 (Fed. Cir.
2002).
IN RE: LOCKWOOD 11
Decision at *9. 6 Anticipation is a question of fact, In re
Hyatt, 211 F.3d 1367, 1371 (Fed. Cir. 2000), which we
review for substantial evidence, In re Gartside, 203 F.3d
1305, 1315 (Fed. Cir. 2000).
Lockwood presents multiple arguments why—even
under the Board’s construction of “a set of stored data”—
the Johnson prior art reference does not disclose all
limitations of independent claim 8. But Lockwood failed
to raise most of these arguments to the Board. Except for
the question of whether Johnson’s “rules” are “stored
data,” Lockwood’s arguments with respect to patentability
are therefore waived. See In re Baxter Int’l, Inc., 678 F.3d
1357, 1362 (Fed. Cir. 2012) (“[W]e generally do not con-
sider arguments that the applicant failed to present to the
Board.”); Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d
1342, 1362 (Fed. Cir. 1998) (“As a general rule, an appel-
late court will not hear on appeal issues that were not
clearly raised in the proceedings below.”).
Lockwood’s sole remaining argument—i.e., that John-
son’s “rules” are not “stored data”—misses the mark.
Johnson makes clear that its “[r]ule-based expert systems
consist of a body of knowledge (knowledge base) and a
mechanism (inference engine) for interpreting this
knowledge.” J.A. 917 (emphasis added). Johnson further
explains that “[t]he body of knowledge is divided into facts
about the problem, and heuristics or rules that control the
use of knowledge to solve problems in a particular do-
main.” Id.; see also J.A. 918 (“[The inference engine’s]
task is to monitor the facts in the data base and execute
the action part of those rules that have their situation
part satisfied.”); id. (“An associative information table
provides additional facts, such as unit standard features,
6 Lockwood concedes that “the rejections of claims
9–15 stand or fall with claim 8.” Appellant’s Opening Br.
at 9.
12 IN RE: LOCKWOOD
unit history of failures, model failure propensity, etc.”). It
is the “facts” in the “knowledge base,” not the “rules”
themselves, that satisfy the “stored data” limitation. See
J.A. 5831–32. The Board’s anticipation finding is there-
fore supported by substantial evidence.
CONCLUSION
For the foregoing reasons, we affirm the Board’s deci-
sion that claims 8–15 of the ’508 patent are unpatentable.
AFFIRMED
COSTS
No costs.