Docket No. 2013-1114
DYK, O’MALLEY(D), TARANTO
January 13, 2014
Brief Summary: Board decision of obviousness affirmed as reference found to have been publicly available and diligence in reduction to practice could not be shown from attorney’s records.
Summary: Enhanced Security Research (ESR) appealed PTAB decision that its US 6,119,236 relating to computer security devices was invalid for obviousness in view of a computer manual (Manual) and a scholarly article (Liepins) after an ex parte reexamination proceeding. During reexamination, the examiner rejected the claims as obvious and ESR’s arguments that the manual was not publicly-available prior art. The FC panel agreed that the Manual disclosed software that teaches responding to attempted breaches based on user-define criteria but not the automatic assignment of different weights to different types of breaches. It concluded the “weights” limitation was taught by Liepens (“Nothing…suggests that ESR’s method of assigning weights is any more sophisticated than that of Liepens.”) ESRs arguments regarding the dependent claims were rejected as improper because it “did not argue the dependent claims under separate subheadings as Rule 41.37 (2012) required” (citing In re Lovin, FC 2011). It was also noted that ESR did “not contest that a person of ordinary skill in the art would have been motivated to combine” the references or present any secondary indicia of non-obviousness for consideration. Regarding public availability, the panel explained that “even relatively obscure documents qualify as prior art so long as the public has a means of accessing them” (In re Hall, FC 1986 (“a single cataologued thesis in one university library”); Constrant, FC 1988 (“[a]ccessibility goes to the issue of whether interested members of the relevant public could obtain the information if they wanted to.”; 35 U.S.C. § 102(a)(1)) and determined the Manual was publicly available. ESR also argued the Manual should not be considered because it was missing pages and therefore “cannot be considered as a whole” (citing Panduit, FC 1987). However, the panel explained that Panduit only concluded “that § 103 does not permit a court to stitch together an obviousness finding from discrete portions of prior art references without considering the references as a whole” and that this “is not what occurred here” (MPEP § 2214: “a requester is only required to submit the ‘pertinent parts’ of any non-English translation”; MPEP § 704.14(a): “where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter”; “nothing in the Manual here suggests the missing pages were necessary to an understanding of the pertinent parts of the reference.”) ESR also argued a prior date of invention but the FC agreed with the Board conclusion that “ESR failed to show that [attorney] Saunders ‘worked diligently and continuously’” during the critical time period (citing Bey, FC 1986 (“the attorney’s records should ‘show the exact days when activity specific to [the patentee’s] application occurred.”)) Thus, the Board’s decision was affirmed. Judge O’Malley’s dissent argued that the Board “erred in relying on a facially incomplete reference” without “substantial evidence…that the same reference was publicly available as of the critical date.”