367 F.3d 1359 (Fed. Cir. 2004), 03-1531, In re American Academy of Science Tech Center

Docket Nº:03-1531.
Citation:367 F.3d 1359
Case Date:May 13, 2004
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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367 F.3d 1359 (Fed. Cir. 2004)

70 U.S.P.Q.2d 1827


No. 03-1531.

United States Court of Appeals, Federal Circuit

May 13, 2004

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[Copyrighted Material Omitted]

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John M. Collins, Hovey Williams LLP, of Kansas City, MO, argued for appellant.

C. Edward Polk, Jr., Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for appellee. With him on the brief were John M. Whealan, Solicitor; and Linda Moncys Isacson, Associate Solicitor.

Barry E. Bretschneider, Morrison & Foerster LLP, of McLean, VA, for amicus curiae Novell, Inc. With him on the brief was Charles C. Carson.

Before RADER, BRYSON, and GAJARSA, Circuit Judges.

BRYSON, Circuit Judge.

This is an appeal from a decision of the United States Patent and Trademark Office's Board of Patent Appeals and Interferences in a reexamination proceeding, Appeal No.2003-0349. The Board upheld a patent examiner's rejection, in reexamination, of several claims of U.S. Patent No. 4,714,989 ("the '989 patent"). The owner of the patent, American Academy of Science Tech Center, seeks review of the Board's decision. We affirm.


Before the proliferation of personal computers, it was common for a multiple-user computer system to be arranged so that each user would interface with a mainframe computer by using a so-called "dumb terminal," i.e., a terminal that did not contain processors and performed only input and output functions. Several dumb terminals would be connected to a single mainframe computer, which would run the user applications. The mainframe computer would receive input from and provide output to users through the dumb terminals. The user applications run by the mainframe computer would access data that was stored in a database residing on the mainframe.

In contrast to systems using a mainframe in conjunction with dumb terminals, the '989 patent describes a network in which the processing of user applications is distributed among several computers. In the '989 patent system, user applications are run on the user stations, while the database resides on a dedicated database computer. Several user stations are networked to the database computer so that a user application running on a user station can store data to and retrieve data from the database residing on the database computer. The patent describes using a "data base simulator" to "enable[] an application program ... at the user station to call for storage or retrieval of data from the data center as though it were calling for data from a data base resident at the user station ...." '989 patent, col. 6, ll. 57-62.

The '989 patent was issued on December 22, 1987, on an application filed on October 20, 1986. The 1986 application was a continuation of an application filed on February 19, 1982. In 1991, American

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Academy sued Novell, Inc., in the United States District Court for the Northern District of California, alleging that Novell had infringed the '989 patent. In response, Novell filed a reexamination request on June 6, 1994. The district court stayed the litigation pending the outcome of the reexamination.

During the reexamination, the examiner rejected each of the claims of the '989 patent as anticipated by several references. Four of those references, the Canaday, Lowenthal, Passafiume, and Hsiao references, are at issue in this appeal. The Canaday, Lowenthal, and Passafiume references describe what American Academy calls "back-end" systems. In such back-end systems, several mainframe computers interface with a single database or "back-end" computer. The mainframe computers run user applications and communicate with the database computer to store and retrieve data from a database that resides on the database computer. The Hsiao reference describes networking several personal computers to a database computer that is connected to a database. 1

The claims under reexamination require a plurality of "general purpose user computers" that are connected to a "data center computer." The examiner determined that the mainframe computers in the asserted references (and the personal computers of Hsiao) anticipated the "general purpose user computers" element of the claims under examination. The examiner also found that the references taught an additional disputed claim element, that of "indirectly issuing data base calls," since in each of the references database calls from the user application to the database manager program at the database computer must be sent though some other program or hardware.

In response to those rejections, American Academy submitted arguments and declarations to the effect that the claims of the '989 patent are limited to user computers, such as personal computers, that are each dedicated to a single user. American Academy also argued that the "indirectly issuing" element should be limited to cases in which the user application, when making a database call, is not aware that it is making a remote database call but instead believes that it is making a local database call to the computer running the user application. American Academy thus in effect urged that the "indirectly issuing" limitation should be limited to the use of a database simulator program such as that described in the '989 specification. The examiner was not persuaded by American Academy's arguments and continued to reject the claims both as anticipated and as obvious in light of the cited references.

American Academy appealed the examiner's rejections to the Board, which affirmed the rejections. Although the examiner had been persuaded by the time of appeal that the patent was limited to single-user computers, the Board adopted a broader construction of the claim term "user computer" that encompassed any computer "capable of running application programs for a user." That construction reached the back-end systems of the prior art. The Board also construed the claim term "indirectly issuing" broadly to include "the request going through some other

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component before it is sent to the data base."

American Academy filed a rehearing request, asserting that the Board's claim construction was broader than the examiner's and that the Board's decision was thus based on a new ground of rejection. The Board granted the request, but it concluded that even under American Academy's construction it would have been obvious to replace the mainframe computers of the prior art with personal computers. In response to a further rehearing request in which American Academy asserted that the Board's obviousness rejection also constituted a new ground of rejection, the Board directed that the issue of obviousness be further prosecuted.

In subsequent proceedings before the examiner, American Academy submitted additional declarations, both as to claim construction and as to the issue of obviousness. The examiner, however, again rejected the claims as anticipated and obvious over the prior art.

American Academy appealed the rejections to the Board for a second time. The Board addressed claim 1 in detail, finding that it was representative of the other claims on appeal. Based on the principle that during examination claims should be given their broadest reasonable construction, the Board construed the term "user computer" to encompass the mainframe computers of the prior art. The Board explained that "[a]lthough the patent disclosure does refer to servicing a user in the singular, it also notes that the user could be a person, another device, or machine...." The Board added that it was not persuaded by the declarations submitted by American Academy because "the declarations offer no evidence in support of appellant's definition" and "[i]nstead ... merely offer [the declarant's] opinions as to what the artisan would have understood upon reading the patent disclosure." The Board rejected American Academy's argument that a broad construction of the term "user computer" would vitiate the word "user." Under its definition, the Board explained, the term "user computer" did not include all computers, but excluded special purpose computers, such as those that "are not intended to interface with a user for application programming under any circumstances."

The Board further concluded that the broadest reasonable construction of "indirectly issuing a database call" requires only "that a request from the host computer go through some other component before it is sent to the database." The Board found American Academy's arguments to the contrary unpersuasive and again found the declarations submitted in support of American Academy's narrower construction to be unsupported by the evidence before the examiner. Finally, the Board upheld the alternative obviousness rejections, concluding that the examiner had established a prima facie case of obviousness that was unrebutted by American Academy's arguments or evidence.


We review the Board's legal conclusions de novo and uphold its factual findings if they are supported by substantial evidence. See In re Bass, 314 F.3d 575, 576 (Fed.Cir. 2002). Anticipation is a question of fact, which we review for substantial evidence, see In re Hyatt, 211 F.3d 1367, 1371-72 (Fed.Cir. 2000), while claim construction is a matter of law, reviewed de novo, see In re Baker Hughes Inc., 215 F.3d 1297, 1301 (Fed.Cir. 2000). The primary issue on appeal is the construction of

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the terms "user computer" and "indirectly issuing." Construing those claim terms broadly, the Board found that each of the references, Canaday, Lowenthal, Passafiume, and Hsiao, taught both the use of "user computers" and systems that "indirectly issue" database calls. American Academy does not challenge the sufficiency of the evidence with respect to the Board's decision on any other claim limitations.

During examination, "claims ... are to be...

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