The engaging aspect of inter partes reexamination requests is that the requesting party is not forced to the sidelines after submitting the request. The requesting party is a player. And that is exactly what Apple intended when it filed its response to Interval's earlier response to the First Office Action on Interval's U.S. Patent No. 6,788,314.
You will recall the examiner's determination that all 15 claims of the '314 patent, six independent claims and nine dependent claims, were invalid. The examiner, however, did not adopt the analysis that Apple had provided in its reexamination request, although the examiner did rely on the art cited by Apple.
In its response to that first office action Interval conceded independent claim 5 and its related claim 6. So those two were taken off the board for good. That left five independent claims and eight original dependent claims. But Interval then added 16 new dependent claims which it asserted are supported by the original description.
Now Apple re-enters the fray by asking the examiner to reconsider the examiner's refusal to adopt Apple's rationale on why all of the claims should be rejected. Why do this when the examiner still rejected all of the claims? Because of Interval's counter-argument on why the remaining claims should be allowed, and the addition of all of the new dependent claims. Apple does not want to see Interval slip through this net.
Apple is relying on just two patents and a magazine article as a basis for rejecting all of the Interval claims: 5,748,190 ("Kjorsvik"); 5,913,040 ("Rakavy"); and the article "Buying a Real Computer Monitor," by Salm, in the October 1984 edition of Popular Electronics. Apple argued that claims 1, 3, 5, 7, 9, 10, 12, 13, and 15 were anticipated (not novel) under each of Kjorsvik and Rakavy. In addition, Apple argued those same claims were obvious over Kjorsvik in view of Rakavy. With respect to claims 2, 4, 6, 8, 11 and 14, Apple argued they were obvious over each of Kjorsvik in view of Salm and Rakavy in view of Salm.
The examiner did not adopt these requested bases for rejection. In fact, the examiner declined to find any of the claims of the '314 patent anticipated by either Kjorsvik or Rakavy because, in the examiners view, they failed to disclose one or more elements of the claimed invention. Moreover, the examiner declined to consider Rakavy at all as a basis for rejecting any of the claims. Rather, the examiner rejected all of the claims solely as obvious over Kjorsvik alone or in view of Salm.
Since the examiner limited the bases for rejection, Interval only needed to respond to the bases the examiner actually asserted when Interval responded. In its response Interval argued that:
- Kjorsvik alone or in combination with Salm fails to teach or suggest the claimed "without the content data being aggregated at a common physical location remote from the content display system." In fact, Interval argued, Kjorsvik teaches the opposite, i.e., aggregation at a common physical location remote from the content display system and that it would not have been obvious to eliminate such aggregation.
- Kjorsvik alone or in combination with Salm fails to teach or suggest the claimed "in an unobtrusive manner that does not distract a user of the display device . . . from a primary interaction." Interval argues that this claim does not include screensavers, an interpretation claimed by Apple.
Following is a summary of each of the points raised by Apple in its reply:
- The examiner's rejections under Kjorsvik either alone or in combination with Salm are proper with respect to the unobtrusive manner" issue because the claim construction language Interval adopts to support its position is "contrary to the explicit teachings of the specification, the claims and the intrinsic record." Specifically, Apple argues that the embodiment had to be both unobtrusive and not distracting to the user. In essence, Apple reasserts that the specification, claims, and intrinsic record can only be interpreted as including screensavers.
- The patent owner, in its response, failed to traverse (oppose) a number of the obviousness arguments advanced by the examiner, and those argument should be sustained by the examiner.
- The patent owner adopted the position that management of content is the same as storage of content, and those two are not the same. Centralized management of content can occur even if the content is not centrally stored. For this and each of the previous reasons advanced, the examiner's rejections should be sustained.
- The examiner erred by not adopting Apple's anticipation under Kjorsvik argument. In Apple's view Kjorsvik discloses all elements of the '314 claims to which Apple applied Kjorsvik.
- The examiner erred by not adopting Apple's anticipation under Rakavy argument. In Apple's view Rakavy discloses all elements of the '314 claims to which Apple applied Rakavy.
- The examiner erred by not adopting Apple's proposed rejection over Rakavy in view of Kjorsvik. Basically, Apple does not believe the examiner gave this argument (or Rakavy) proper consideration.
- None of the newly added claims include any patentably distinct features, these features all being known in the art prior to the date of invention, and the patent owner having admitted this point. Even if this were not true, either Kjorsvik or Rakavy teaches each of the newly claimed elements.
One final point that Apple raises is the proper priority date for the '314 patent. Interval asserts it should be the date of the '399 application or the '652 patent. Apple asserts the '314 patent should only have a priority date consistent with its filing, and not earlier. Apple raised this point in its reexamination request, but the examiner failed to address the point.
Now we wait to see how the examiner responds to the new information and arguments from Interval and Apple.