In Re: Thomas

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: C. DOUGLASS THOMAS,
Appellant
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2017-1100
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/878,199.
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Decided: November 17, 2017
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C. DOUGLASS THOMAS, TI Law Group, PC, San Jose,
CA, for appellant.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Joseph Matal. Also represented by JEREMIAH
HELM, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED.
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Before MOORE, CHEN, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
C. Douglass Thomas appeals the final decision of the
Patent Trial and Appeal Board of the U.S. Patent and
Trademark Office, affirming the examiner’s rejection of
Mr. Thomas’s patent application. Mr. Thomas argues
2 IN RE: THOMAS
that the Board erred by failing to apply a de novo stand-
ard of review to the examiner’s rejection for anticipation
and by finding anticipation without substantial evidence
to support its finding. Mr. Thomas also challenges the
Board’s construction of the claim term “word processing
program.” Because the Board did not err, we affirm.
BACKGROUND
Mr. Thomas filed U.S. Patent Application No.
12/878,199, titled “Method and System for Formation of
Electronic Documents.” J.A. 20–65. Mr. Thomas’s appli-
cation discloses a “method and system for creation of
customized documents over a network as well as for
negotiation of contents for documents over a network (e.g.,
Internet).” J.A. 51, Abstract.
The specification discloses a document and delivery
system 100 illustrated in Figure 1A (reproduced below).
J.A. 52, Fig. 1A. As shown, the user’s computer (104)
connects to the Internet (106) through an Internet Service
Provider (108). Document server (102) also couples to the
Internet. In operation, the user at computer 104 requests
the creation and delivery of a specified document from the
document server. The document server, which can also
operate as a web server, questions or interrogates the
user to get the information required to produce the cus-
tomized document. The document server may host and
use an application program such as a word processing
IN RE: THOMAS 3
application to create the customized document. The word
processing application can operate on the document
server. After creating the document, the document server
forwards the customized document through the Internet
to the user.
Claims 15–22 are the only pending claims in the ap-
plication and stand rejected under 35 U.S.C. § 102(e) 1 as
anticipated. Independent claim 15 is representative,
reciting a four-step method with two “wherein” clauses:
15. A method for enhancing functionality of a
server computing device coupled to a network,
said method comprising:
[a] operating the server computing device
to receive a request for a file from a re-
questor;
[b] linking an application program to the
server computing device;
[c] operating the application program in
accordance with a command set to produce
a processed file; and
[d] returning the processed file to the re-
questor,
wherein the application program is a word
processing program, and wherein the
command set is a macro or a program exe-
cutable by the word processing program.
1 Congress amended § 102 when it passed the
Leahy-Smith America Invents Act (“AIA”). Pub. L. No.
112–29, § 3(b)(1), 125 Stat. 284, 285–87 (2011). However,
because the application that led to this application was
filed before March 16, 2013, the pre-AIA § 102 applies.
Id. § 3(n)(1), 125 Stat. at 293.
4 IN RE: THOMAS
J.A. 126 (emphasis added to highlight the disputed claim
elements). Claims 19 and 20 both depend from claim 15
and recite the additional limitation “wherein the request
includes the command set or information used to produce
the command set.” J.A. 91.
During prosecution, the examiner rejected claims 15–
22 as anticipated by U.S. Patent No. 6,067,531 (“Hoyt”).
Hoyt discloses server-side automatic generation of a legal
contract among multiple clients within a business organi-
zation, coupled by a network, accessing a contract data-
base server. Hoyt discloses displaying a pop-up box (1600
in Figure 16, reproduced below) in a graphical user inter-
face of a client applet when a user begins to create a new
contract document.
Hoyt Fig. 16. The pop-up box prompts the user to input
contract terms (for example, a customer name), select a
contract type and subtype using drop-down menus, and
indicate whether the current contract is an amendment to
an existing contract by selecting radio buttons.
The Board affirmed the examiner’s rejection of claims
15–22 as anticipated by Hoyt. Mr. Thomas filed a request
for rehearing, which the Board denied.
Mr. Thomas timely appealed to this court. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
IN RE: THOMAS 5
DISCUSSION
“During examination, claims . . . are to be given their
broadest reasonable interpretation consistent with the
specification. . . .” In re Montgomery, 677 F.3d 1375, 1379
(Fed. Cir. 2012) (quotation omitted); see also Cuozzo Speed
Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). We
review the Board’s ultimate claim construction de novo.
See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
840–41 (2015); In re Aoyama, 656 F.3d 1293, 1296
(Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004)).
Anticipation is a question of fact. In re Gleave,
560 F.3d 1331, 1334–35 (Fed. Cir. 2009). What the prior
art discloses is also a question of fact. Para-Ordnance
Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1088 (Fed. Cir.
1995). We review the Board’s fact findings for substantial
evidence. Gleave, 560 F.3d at 1335.
I.
On appeal, Mr. Thomas argues that the Board erred
by improperly burdening him with specific rebuttal re-
quirements and by failing to review the examiner’s rejec-
tions de novo. Relying on Jung, Mr. Thomas argues that
an applicant need only “identify the alleged error in the
examiner’s rejections,” after which the Board must review
the examiner’s decision de novo. See In re Jung, 637 F.3d
1356, 1365–66 (Fed. Cir. 2011). We are not persuaded by
Mr. Thomas’s arguments.
We agree with the Board that the examiner estab-
lished a prima facie case of anticipation when he com-
pared each of Mr. Thomas’s claim limitations to Hoyt,
identifying the specific teachings in Hoyt that correspond
to each claim limitation. J.A. 96–99. Having done so, the
examiner put Mr. Thomas on notice of the full basis for
his rejection, and the burden properly shifted to
Mr. Thomas to rebut the prima facie case of anticipation.
6 IN RE: THOMAS
See In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014);
see also Jung, 637 F.3d at 1364; 35 U.S.C. § 132. This
required Mr. Thomas to provide specific reasons why
Hoyt’s teachings did not correspond to each claim ele-
ment, not to simply list claim elements. Id. The act of
filing a Board appeal alone does not entitle a patent
applicant to de novo review of all aspects of the rejection.
Just like the applicant in Jung, Mr. Thomas did not
proffer a detailed explanation of the difference between
the claims and the prior art before the examiner. See
Jung, 637 F.3d at 1365. Indeed, Mr. Thomas’s appeal
brief before the Board was more formulaic and conclusory
than the one in Jung. For each claim limitation,
Mr. Thomas stated the limitation, restated the examiner’s
Hoyt citation, and concluded that Hoyt failed to teach or
suggest the claim limitation, without any basis for that
conclusion. When given a second opportunity to provide
reasoning in his request for rehearing, Mr. Thomas mere-
ly block quoted the same conclusory language from his
original brief. The facts before us are even more persua-
sive than those in Jung. Therefore, we agree with the
Board that the examiner made out a prima facie case of
anticipation and the burden properly shifted to
Mr. Thomas to rebut it.
II.
Mr. Thomas also disputes the Board’s finding that
Hoyt teaches each and every limitation of independent
claim 15 and dependent claims 16–22. Specifically,
Mr. Thomas argues that Hoyt’s pop-up box does not
satisfy the wherein clauses in claim 15 because it (1) is
not an “application program,” (2) is not a “word processing
program,” and (3) does not invoke a macro. We address
each argument in turn.
First, Mr. Thomas argues that Hoyt’s pop-up box is
not an “application program.” But Hoyt discloses that its
pop-up box is from an applet loaded on to the client from
IN RE: THOMAS 7
the server. Hoyt col. 5 ll. 21–39. The applet itself is an
application program, specifically described in the exem-
plary embodiment as a “contract negotiator JAVA applet.”
Id. at col. 5 ll. 21–39. We are satisfied that substantial
evidence supports the Board’s fact findings on this issue.
Second, Mr. Thomas argues that Hoyt’s pop-up box is
not a “word processing program.” The Board and examin-
er found that the applet running the pop-up box qualifies
as a “word processing program” because the pop-up box
“is configured to allow words to be entered by the user
. . .[,] which is the same as a word processing program.”
J.A. 14 (quoting Final Office action at 4 (citing Hoyt,
col. 34 ll. 1–23, Figs. 2, 3, 16)).
On appeal, Mr. Thomas urges this court to interpret
“word processing program” to mean “a computer applica-
tion program operated on a computing device to create,
edit and store documents.” To our knowledge based on
the record before us, Mr. Thomas did not present his
“create, edit and store” construction of word processing
program to the Board and therefore waived his arguments
based on that proposed construction. See In re Baxter
Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012). Accord-
ingly, we conclude that substantial evidence supports the
Board’s finding that Hoyt’s pop-up box/GUI applet is a
“word processing program” under the Board’s broad
construction of that term.
Third, Mr. Thomas argues that Hoyt does not invoke
a macro. We disagree. Claim 15 requires a “command
set” that is a “macro or a program executable by the word
processing program.” Hoyt’s pop-up box has radio buttons
and a cancel button. If a user selects the cancel button,
the system aborts the new contract. If a user selects the
radio button indicating that the new contract is an
amendment to an old contract, the system dedicates data
storage to describe the history of the contract. The user’s
selection triggers a set of instructions to perform a partic-
8 IN RE: THOMAS
ular task, which the Board reasonably found to be the
same thing as being a macro. We agree and are satisfied
that substantial evidence supports the Board’s findings on
this issue.
Accordingly, we affirm the Board’s affirmance of the
rejection of claim 15. Because Mr. Thomas does not
present separate arguments in support of the patentabil-
ity of claims 16–18 and 21–22, we affirm the Board’s
affirmance of the rejection of these claims as well.
Finally, we turn to Mr. Thomas’s additional argu-
ments regarding dependent claims 19 and 20.
Mr. Thomas argues that Hoyt does not disclose “wherein
the request includes the command set or information used
to produce the command set” as required by claims 19 and
20. J.A. 127. The examiner and Board found that, in
Hoyt, a user request prompts the display of a pop-up box,
and that the rules of the pop-up box (including fields and
radio buttons) operate as a command set. See Hoyt col. 34
ll. 1–23, Figs. 2, 3, 16. Indeed, in Hoyt, the contract
subtypes are defined by an administrator and selected
from the pop-up box by the end user. Id. at col. 34 ll. 1–
23. Once the end user selects the “OK” button in the pop-
up box, the new contract of the selected subtype is initiat-
ed and the end user can enter terms and comments into
the new contract. Id. We are satisfied from this disclo-
sure in Hoyt that substantial evidence supports the
Board’s findings on this issue, and we therefore affirm the
Board’s affirmance of the rejection of claims 19 and 20.
CONCLUSION
We have carefully considered Mr. Thomas’s remaining
arguments and find them unpersuasive. For the reasons
above, we affirm the Board’s decision.
IN RE: THOMAS 9
AFFIRMED
COSTS
None.