As we noted above, the examiner confirmed seven of the dependent claims in the Non-Final Office Action. With that exception the office action largely follows the determination to grant the reexamination. However, Lodsys is warned:
The next step is for Lodsys to respond to the office action.
Page 8
The Substantial New Question
At the time of allowance, the examiner cited clear reasons for allowance for independent claims 48 (issued claim 1) and 135 (issued claim 69), pointing out those features not taught in the prior art made of record during prosecution of the application.
Prior art which teaches or suggests these features would therefore raise a substantial new question of patentability.
Prior Art
The following prior art is cited by the Third Party Requester in alleging a substantial new question of patentability:
U.S. Patent 5,003,384 to Durden et al. ("Durden")
U.S. Patent 5,077,582 to Kravette et al. ("Kravette")
U.S. Patent 4,992,940 to Dworkin et al. ("Dworkin")
* U.S. Patent 5,477,262 to Banker et al. ("Banker")
Page 9
U.S. Patent 5,956,505 to Manduley ("Manduley")
* Cited during prosecution of the '078 patent.
Proposed Substantial New Questions of Patentability
The Third Party Requester has requested reexamination of claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, based upon the following allegations of a substantial new question or patentability based upon the following proposed rejections:
Issue 1: Claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 are anticipated under 35 U.S.C. § 102(b) by Durden.
Issue 2: Claims 1-7,10,15,16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 are anticipated under 35 U.S.C. § 102(e) by Kravette.
Issue 3: Claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 are anticipated under 35 U.S.C. § 102(b) by Dworkin.
Issue 4: Claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 are anticipated under 35 U.S.C. § 102(e) by Banker.
Page 10
Issue 5: Claims 1-7,10,15,16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 are
anticipated under 35 U.S.C. § 102(e) by Manduley.
Analysis
The examiner agrees that based upon the following analysis, the teachings of the cited prior art raises a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32/38, 46-48, 50-53 and 69-74 of the '078 patent.
Preliminary Issue: Claim Construction
The claims at issue in the '078 patent include some terms which require clarification in order to correctly analyze the prior art's applicability in determining a Substantial New Question of Patentability. In particular, the terms 'unit of a commodity' and 'user' will be considered.
Commodity
The term 'commodity' appears in the Abstract and the claims, but nowhere in the body of the specification.
Page 11
A survey of the parent and other preceding applications shows that the term
'commodity' was first introduced in a preliminary amendment to the parent
application, 09/370,663. The originally filed claims used the terms 'product', but a
preliminary amendment filed concurrently with the application canceled the original
claims and added new claims which used the term 'units of a commodity' in place of
'product'. The change in terminology from 'product' to 'units of a commodity' was
therefore not necessitated in order to distinguish over prior art.
The independent claims of the '078 patent, for the most part, use the term 'units of a commodity'. The exception is independent claim 54, which uses the term 'units of a facsimile equipment'. Dependent claim 8 also includes the feature that the commodity is a facsimile machine. In light of these claims, 'facsimile equipment' is presumably one example of a commodity.
Dependent claim 6 includes the feature that the unit of a commodity comprises 'telephone extension equipment'. Claim 11 includes the feature that the unit of a commodity comprises 'consumer television equipment'. Claim 50 includes the feature that the commodity is a 'demonstration unit'.
In the Background of the Invention, the invention is characterized as a Customer-Based Product Design Module (see col. 2, line 22 et seq.), in which case the 'commodity'
Page 12
cited in the claims would equate to a 'product'. More generally, the claimed commodity
is referred to in the Background variously as 'products, services and information
systems' (see col. 1, lines 50-52), 'products and services' (see col. 2, line 25), and
'products, equipment, tools and toys' (col. 2, lines 46-49). A number of other examples
are disclosed at col. 11, line 5 through col. 12, line 37.
Additionally, drawing Figure 1 comprises a flow chart of the Customer Design
System (CDS), and includes the 'product or service' terminology.
Based upon this information, the term 'commodity' will be interpreted as a product or service, and a 'unit of a commodity' will be interpreted as a single instance of a product, or a single use of a service.
User
The term 'user' can be found throughout the claims and specification.
There is no explicit language in the specification which can be used to derive a definition, so the term should be given the ordinary meaning that the term would have to an ordinary artisan in the art in question at the time of the invention. "Absent an express intent to impart a novel meaning to a claim term, the words take on the
Page 13
ordinary and customary meanings attributed to them by those of ordinary skill in the
art." Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294,1298 (Fed Cir. 2003).
n the context of the specification and claims, a 'user' would be understood by an
ordinary artisan as a person who uses a product or service.
Issue 1: Durden
Durden does not [emphasis added] raise a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, for the reasons discussed below.
. . .
Page 17
Issue 2: Kravette
Page 18
Kravette raises a substantial new question of patentability with regard to claims
1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, for the
reasons discussed below.
Kravette teaches a system for monitoring paper processing devices, such as photocopiers (see Abstract). In accordance with the disclosed invention, photocopiers generate diagnostic signals when a malfunction is detected, or when maintenance such as toner or paper refill is required (see col. 4, lines 42-46). Said diagnostic signals are translated to a signal usable by an offsite end user to determine the condition of the photocopier (see col. 4, lines 50-55).
Upon receipt of a diagnostic signal a central station then dispatches a service person and informs the service person of the nature of the problem (see col. 9, lines 36-40). Each service person may be equipped with a portable hand held input/output device in the form of a keypad/display which may become part of the monitoring system through the use of an auxiliary input of the monitoring CPU (see col. 9, lines 41-44). The service person at the job site may also communicate with the central station through a modem by becoming part of the monitoring system through an input/output device; the service person would input his time of arrival at the job site, the work
Page 19
completed, parts replaced and needed, and the time of completion of the job (see col. 9,
lines 49-55).
The central station may also communicate with the service person directly
through the photocopier monitoring system (see col. 9, lines 59-67).
In the Request, it is alleged that Kravette raises a Substantial New Question of Patentability of claims 1-7,10,15,16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, because Kravette anticipates these claims under 35 U.S.C. § 102(e).
As discussed above, with regard to independent claim 1, a reference would have to teach the following features in order to raise an SNQ:
"a user interface which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user's perception of the commodity, and
a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including the elicited information about user perception of the commodity"
Similarly, with regard to independent claim 69, a reference would have to teach
the following features in order to raise an SNQ:
"eliciting user perceptions of respective units of the commodity through interactions at a user interface of the respective unit, and
Page 20
collecting and storing the received information at the remote database"
With respect to claim 1, the Requestor maps the photocopier disclosed by Kravette to the claimed unit of a commodity (see page 76 of the Request).
The Requestor also maps the portable hand held input/output device 34 disclosed in Kravette to the claimed user interface (see page 77 of the Request).
The Requestor further maps Kravette's disclosure of the service person's use of the portable hand held input/output device 34 to input and retrieve diagnostic and maintenance information from the monitoring system to the claimed eliciting, from a user, information about the user's perception of the commodity (see page 79 of the Request).
Three issues must be resolved with regard to this proposed rejection.
1. Does the service person disclosed by Kravette qualify as a 'user'?
Given the broad interpretation given the term 'user' as described above with respect to claim construction, the service person, 'using' the monitoring system to input and retrieve diagnostic data and service information (see col. 9, lines 14-20), as well as to communicate with the central station (see col. 9, lines 49-52), would qualify as a 'user'.
Page 21
2. Does the user interface elicit information about the user's perception of the commodity?
Kravette discloses the service person providing input to the monitoring system regarding at least maintenance information, such as data related to recent service and data as to when certain copier parts were replaced (see col. 9, lines 14-20). The service person also inputs information regarding his time of arrival at the job site, the work completed, parts replaced and needed, and the time of completion of thejob (see col. 9, lines 52-55).
Of this information disclosed by Kravette as being submitted by the service provider through portable hand held input/output device 34, at least information regarding parts replaced and needed would anticipate the claimed feature of 'information about the user's perception of the commodity', since this information about parts replaced and needed by the photocopier must be perceived by the service person.
3. Is the user interface 'part of each of the units of the commodity', as required by claim 1?
Throughout the specification and drawings of Kravette, the photocopier monitoring system 10 is depicted as separate from the photocopier. See, for example,
Page 22
drawing Figures 1, 2, 3 and 4. See also, for example, disclosure that Interface 12 of the
photocopier monitoring system "receives signals from a copier (not shown)", col. 5,
lines 12-13.
Given this disclosure, Kravette could not be relied upon to anticipate claim 1,
since the portable hand held input/output device (the user interface) becomes part of
the monitoring system, but elicits information from the user regarding the user's
perceptions of the photocopier (the unit of the commodity); anticipation would require
the user to input information regarding the user's perception of the monitoring system.
However, at col. 11, lines 1-4, Kravette discloses monitoring system 60, which includes a plurality of copiers 52 and a photocopier monitoring system 40. This is illustrated in drawing Figure 3:
Page 23
When monitoring system 60 (encompassing both the photocopier monitoring system 40 and all attached copiers 52) is mapped to the claimed 'unit of the commodity', Kravette then anticipates claim 1, since the user interface becomes part of the unit of the commodity (the monitoring system 60), and elicits information regarding the user's perception of the unit of the commodity (since the copier is part of monitoring system 60).
Page 24
In fact, Kravette additionally discloses a more analogous embodiment of the
disclosed invention. Kravette discloses one embodiment where "...the entire monitoring
system is manufactured internal to the photocopier to which it is to be applied" (see col.
15, lines 18-21). In this embodiment, the portable hand held input/output device (the
user interface) becomes part of the photocopier (by virtue of becoming part of the
monitoring system), and elicits information from the user regarding the user's
perceptions of the photocopier, thus anticipating this feature of claim 1 of the '078
patent.
The same analysis applies to the Requestor's proposed rejection of independent claim 69 of the '078 patent over Kravette (see pages 108-116 of the Request).
Thus, with respect to independent claim 1, Kravette teaches those features which were cited by the examiner as reasons for allowance during prosecution of the '078 patent.
Kravette teaches a user interface which is part of each of the units of the commodity (see disclosure of the portable hand held input/output device 34 becoming part of the monitoring system 10, col. 9, lines 41-44; see also disclosure of en embodiment where the monitoring system is manufactured internal to the photocopier,
Page 25
col. 15, lines 18-21), configured to provide a medium for two-way local interaction
between one of the users and the corresponding unit of the commodity, and further
configured to elicit, from a user, information about the user's perception of the
commodity (see disclosure that the service person can input time of arrival at the job
site, the work completed, parts replaced and needed, and the time of completion of the
job, col. 9, lines 52-55), and
a memory within each of the units of the commodity capable of storing results of
the two-way local interaction, the results including the elicited information about user.
perception of the commodity (see disclosure that the diagnostic data of the photocopier
can be stored in RAM 29, which can also store maintenance information, such as data
related to recent service and data as to when certain copier parts were replaced, col. 9,
lines 14-18).
With respect to independent claim 69, Kravette teaches those features which were cited by the examiner as reasons for allowance during prosecution of the '078 patent.
Kravette teaches eliciting user perceptions of respective units of the commodity through interactions at a user interface of the respective unit (see disclosure that the
Page 26
service person can input time of arrival at the job site, the work completed, parts
replaced and needed, and the time of completion of the job, col. 9, lines 52-55), and
collecting and storing the received information at the remote database (see
disclosure that the service person can communicate with the central station by inputting
his time of arrival, work completed, parts replaced and needed, and the time of
completion of the job, col. 9, lines 49-55; see also disclosure that the billing or other
computer at the central station sends a status inquiry signal to the monitoring system 10
to output the diagnostic data and maintenance information for storage on said billing or
other computer, col. 9, lines 23-28).
In light of these teachings, there is a substantial likelihood that a reasonable examiner would consider Kravette important in deciding whether or not claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent are patentable.
The teachings of Kravette are new and non-cumulative with respect to the teachings of the prior art applied during the prosecution of the '078 patent. Furthermore, the teachings of Kravette have not been considered in a final holding of invalidity by a federal court. Accordingly, Kravette raises a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 that has not been decided in a previous examination.
Page 27
Issue 3: Dworkin
Dworkin raises a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, for the reasons discussed below.
Dworkin teaches an automated system for assisting a user in locating and purchasing products or services having desired characteristics, and also having the best available price (see col. 1, lines 63-65). The user tells the system the general type of product or service desired, and in response the system displays a template which gives various technical criteria for the product or service (see col. 2, lines 6-11). The user fills out entries on the template to define the minimum requirements for the product or service, and the system locates and displays information regarding products or services meeting these requirements (see col. 2, lines 11-18).
The system also allows the user to communicate complaints or suggestions to management or a particular supplier, or to receive help in using the system (see col. 2, lines 42-46; see also col. 4, lines 56-58; see also col. 10, lines 9-17).
Page 28
In the Request, it is alleged that Dworkin raises a Substantial New Question of Patentability of claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, because Dworkin anticipates these claims under 35 U.S.C. § 102(b).
As discussed above, with regard to independent claim 1, a reference would have to teach the following features in order to raise an SNQ:
"a user interface which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user's perception of the commodity, and
a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including the elicited information about user perception of the commodity"
Similarly, with regard to independent claim 69, a reference would have to teach the following features in order to raise an SNQ:
"eliciting user perceptions of respective units of the commodity through interactions at a user interface of the respective unit, and
collecting and storing the received information at the remote database"
With respect to claim 1, the Requestor maps the terminals disclosed by Dworkin to the claimed unit of a commodity (see page 121 of the Request).
Page 29
The Requestor also maps the main menu on the user's terminal disclosed in Dworkin to the claimed user interface (see page 122 of the Request).
The Requestor further maps Dworkin's disclosure of the user's selection of menu item 8 in order to communicate with management in order to submit complaints or offer suggestions for improvements to the claimed eliciting, from a user, information about the user's perception of the commodity (see pages 124-125 of the Request).
Under such an interpretation, Dworkin would fail to anticipate the relevant features of the '078 patent, because the claims require the system to elicit the user's information about their perception of the commodity, which in this case would be the terminal.
That being said, when the automated system for assisting a user in locating and purchasing desired products or services is interpreted as the unit of the commodity, Dworkin would anticipate the relevant features, since the disclosed complaints and suggestions (the elicited information) refer to the system, said system being the unit of the commodity.
The same analysis applies to the Requestor's proposed rejection of independent claim 69 of the '078 patent over Dworkin (see pages 154-160 of the Request).
Page 30
Thus, with respect to independent claim 1, Dworkin teaches those features which were cited by the examiner as reasons for allowance during prosecution of the '078 patent.
Dworkin teaches a user interface which is part of each of the units of the commodity (see disclosure of the Main Menu, which is part of the automated system for assisting a user in locating and purchasing desired products or services, col. 4, lines 43-61; see also drawing Figure 3), configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user's perception of the commodity (see disclosure of item number 8 of the Main Menu, which allows the user to communicate complaints or suggestions to management or a particular supplier, or to receive help in using the system, col. 2, lines 42-46; see also col. 4, lines 56-58; see also col. 10, lines 9-17), and
a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including the elicited information about user perception of the commodity (see disclosure that the user-supplied communication, comprising complaints or suggestions, can be embodied in an electronic mail message,
Page 31
said electronic mail message inherently requiring memory for storage prior to
transmission, col. 9, lines 9-12).
With respect to independent claim 69, Dworkin teaches those features which were cited by the examiner as reasons for allowance during prosecution of the '078 patent.
Dworkin teaches eliciting user perceptions of respective units of the commodity through interactions at a user interface of the respective unit (see disclosure of item number 8 of the Main Menu, which allows the user to communicate complaints or suggestions to management or a particular supplier, or to receive help in using the system, col. 2, lines 42-46; see also col. 4, lines 56-58; see also col. 10, lines 9-17), and
collecting and storing the received information at the remote database (see disclosure that the user-supplied communication, comprising complaints or suggestions, can be embodied in an electronic mail message transmitted to an electronic mailbox, col. 9, lines 9-12).
In light of these teachings, there is a substantial likelihood that a reasonable examiner would consider Dworkin important in deciding whether or not claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent are patentable.
Page 32
The teachings of Dworkin are new and non-cumulative with respect to the teachings of the prior art applied during the prosecution of the '078 patent. Dworkin was cited during prosecution of the '078 patent, but was never applied in any claim rejections.
Furthermore, the teachings of Dworkin have not been considered in a final holding of invalidity by a federal court. Accordingly, Dworkin raises a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 that has not been decided in a previous examination.
Issue 4: Banker
Banker does not [emphasis added] raise a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, for the reasons discussed below.
. . .
Page 34
. . .
Issue 5: Manduley
Manduley raises a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, for the reasons discussed below.
Page 35
Manduley teaches a method for activating an optional feature in a data processing device (see Abstract). The data processing device includes a display, keyboard and user interface software that allows a user to input data into the data processing device, and also allows the user to access application manager software which enables and controls access to the various applications resident in the data processing device (see col. 3, lines 41-44 and 57-65).
The data processing device includes a mechanism for allowing an authorized user to request activation of optional applications or features (see drawing Figures 3A through 3D; see also col. 5, line 2 through col. 7, line 39, and particularly col. 6, lines 1-8).
In the Request, it is alleged that Manduley raises a Substantial New Question of Patentability of claims 1-7,10,15,16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent, because Manduley anticipates these claims under 35 U.S.C. § 102(e).
As discussed above, with regard to independent claim 1, a reference would have
to teach the following features in order to raise an SNQ:
"a user interface which is part of each of the units of the commodity, configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user's perception of the commodity, and
Page 36
a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including the elicited information about user perception of the commodity"
Similarly, with regard to independent claim 69, a reference would have to teach the following features in order to raise an SNQ:
"eliciting user perceptions of respective units of the commodity through interactions at a user interface of the respective unit, and
collecting and storing the received information at the remote database"
With respect to claim 1, the Requestor maps the data processing devices disclosed by Manduley to the claimed unit of a commodity (see page 207 of the Request).
The Requestor also maps display 26 and keyboard 28 on the data processing devices disclosed in Manduley to the claimed user interface (see page 209 of the Request).
The Requestor further maps Manduley's disclosure of the user's request for activation of an optional application program or their various features to the claimed eliciting, from a user, information about the user's perception of the commodity (see page 210 of the Request).
Page 37
The same analysis applies to the Requestor's proposed rejection of independent
claim 69 of the '078 patent over Manduley (see pages 235-238 of the Request).
Thus, with respect to independent claim 1, Manduley teaches those features which were cited by the examiner as reasons for allowance during prosecution of the '078 patent.
Manduley teaches a user interface which is part of each of the units of the commodity (see disclosure of the data processing device [unit of the commodity] which includes a display, keyboard and user interface software [collectively, the user interface] that allows a user to input data into the data processing device, and also allows the user to access application manager software which enables and controls access to the various applications resident in the data processing device (see col. 3, lines 41-44 and 57-65), configured to provide a medium for two-way local interaction between one of the users and the corresponding unit of the commodity, and further configured to elicit, from a user, information about the user's perception of the commodity (see disclosure of the receipt of an optional application or feature activation request, col. 2, lines 63-67 et seq.), and
a memory within each of the units of the commodity capable of storing results of the two-way local interaction, the results including the elicited information about user
Page 38
perception of the commodity (see disclosure of the storage of request codes identifying
the requested features and/or applications, as well as any required hardware, prior to
transmission of the request to the data center, col. 6, lines 10-50 and 55-60).
With respect to independent claim 69, Manduley teaches those features which were cited by the examiner as reasons for allowance during prosecution of the '078 patent.
Manduley teaches eliciting user perceptions of respective units of the commodity through interactions at a user interface of the respective unit (see disclosure of the receipt of an optional application or feature activation request, col. 2, lines 63-67 et seq.), and
collecting and storing the received information at the remote database (see disclosure that the data center receives request codes from users or devices, col. 7, lines 40-45; see also disclosure that upon activation of the requested application or feature, the data center updates the customer's file to reflect activation of the requested programs or features and addition of any ordered hardware, col. 8, lines 18-21).
Page 39
In light of these teachings, there is a substantial likelihood that a reasonable examiner would consider Manduley important in deciding whether or not claims 1-7, 10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 of the '078 patent are patentable.
The teachings of Manduley are new and non-cumulative with respect to the teachings of the prior art applied during the prosecution of the '078 patent. Furthermore, the teachings of Manduley have not been considered in a final holding of invalidity by a federal court. Accordingly, Manduley raises a substantial new question of patentability with regard to claims 1-7,10-16,18, 22, 24, 25, 30-32, 38, 46-48, 50-53 and 69-74 that has not been decided in a previous examination.
