Docket No. 2016-1371
PROST, MOORE, CHEN
February 13, 2017
Brief Summary: Board claim construction and finding of anticipation affirmed.
Summary: Lockwood appealed Board affirmance following ex parte reexamination requested by an anonymous third party of the examiner’s determination that claims of US 7,010,508 relating to systems for loan screening would have been anticipated (claims 8-14) or obvious (claim 15). Claim 1-7, 16 and 17 were found to be patentable. Lockwood appealed the decision as to the obviousness determination of claims 8-14. In its decision, the Board rejected Lockwood’s argument that “a set of stored data” in the claim 8 limitation “means for analyzing and for combining an user’s entry with 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).’” Lockwood filed a Request for Rehearing, arguing the Board did not consider the ‘508 prosecution history; the Board then reconsidered its position but maintained its original construction. The FC panel explained the “claim construction is reviewed de novo with any underlying factual determinations reviewed for substantial evidence” (Teva, US 2015; Microsoft, FC 2015). In this appeal, however, Lockwood argued that the Board did not conduct a means-plus-function analysis of the entire “means for” limitation and “failed to limit the claim term in dispute to the algorithms disclosed in the specification (and equivalents thereof).” The FC panel noted that the examiner did so and the Board accepted the examiner’s means-plus-function construction. It also explained that the Board’s focus “on the ‘a set of stored data’ language within the larger limitation is unsurprising” because Lockwood directed his appeal to the Board “to the term ‘stored data’ alone”, “consistenly argued” for a narrow construction of the term, and “the Board was entitled to focus on the portion of the claim at issue between the parties, rather than expending time and resources on those parts of the examiner’s construction that were not in dispute.” The FC panel also found Lockwood’s arguments that the Board did not consider the ‘508 prosecution history “to be without merit” since the Board did consider it. It also found “[n]othing in the plain language of claim 8 requires that the ‘stored data’ be accessed from a remote location” as Lockwood argued and, additionally, “the specification lacks a definition of ‘stored data’”. And it found Lockwood had not made a “clear and unmistakable disclaimer” (Thorner, FC 2012) during prosecution since “[t]hen-applicant Lockwood’s statements to the PTO contain words like ‘may’ and ‘for example’” and his “statements during reexamination fare no better” (“the Board is not obligated to treat a patent owner’s claim construction arguments on appeal as prosecution history disclaimer” (Tempo, FC 2014)). Several of the anticipation arguments Lockwood made to the FC were found to have been waived since those were not made to the Board (In re Baxter, FC 2012; Johns Hopkins, FC 1998) and its remaining argument “misses the mark”. The Board’s decision was therefore affirmed.