Yamamoto, In re, 84-557

• Decision Date: 07 August 1984
• Docket Number: No. 84-557,84-557
• Citation: 222 USPQ 934,740 F.2d 1569
• Parties: In re Yujiro YAMAMOTO, Appellant, and Dictaphone Corp., Intervenor. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1569

740 F.2d 1569

222 U.S.P.Q. 934

In re Yujiro YAMAMOTO, Appellant and Dictaphone Corp., Intervenor.

Appeal No. 84-557.

United States Court of Appeals Federal Circuit.

Aug. 7, 1984.

Grover A. Frater, Santa Ana, Cal., argued for appellant.

Thomas E. Lynch, Washington, D.C., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol., and Jere W. Sears, Deputy Sol., Washington, D.C.

Gregor N. Neff, New York City, argued for intervenor. With him on the brief were William S. Frommer, New York City, and Melvin J. Scolnick, Stamford, Conn., of counsel.

Before DAVIS, BALDWIN and MILLER, Circuit Judges.

BALDWIN, Circuit Judge.

This appeal is from a decision of the United States Patent and Trademark Office (PTO) Board of Appeals (board) in a reexamination proceeding involving U.S. Patent No. 3,747,228 (Yamamoto) issued to appellant, Yamamoto. The board affirmed rejection of claims 1-3, 7, and 8 as unpatentable under 35 U.S.C. Sec. 103 over U.S. Patent No. 3,300,586 (Shepard) and of claim 4 over Shepard in view of U.S. Patent No. 3,550,289 (Orita). We affirm.

Procedural History

Appellant filed suit for infringement of the Yamamoto patent in the United States District Court for the Central District of California against Dictaphone Corporation (Dictaphone). Dictaphone requested reexamination of the patent in suit and is an intervenor in this appeal. The District Court action was stayed pending the outcome of the reexamination proceeding.

The Invention

The Yamamoto patent describes and claims an interview machine. The machine asks a question, records the interviewee's answer, then asks another question. This alternating question and answer sequence is repeated until the interview is completed. The machine detects the continuance and the end of each question. It also detects the continuance and the end of each answer. Using this detected information, the machine determines the timing of questions and the periods allowed for response. The machine may be programmed to repeat a question if no response is given, to go on to the next question, or to terminate the interview. Claim 1 of the patent recites appellant's invention as follows:

1. An interview machine comprising:

a question storage memory adapted for storing a series of questions to be asked of an interviewee, and having associated means for retrieving each question from the memory and communicating it in audible form to the interviewee;

an answer storage memory adapted for storing a series of answers given by the interviewee;

manually operable means for causing the first question of the series to be communicated to the interviewee; and

timing and control means responsive if the question is not answered within a predetermined period of time for causing the next question of the series to be communicated to the interviewee, and responsive if an answer is initiated within said predetermined period of time for whereby the interviewee upon initiating his answer within said predetermined period of time may give as long as answer as he desires, and upon completion of his answer the machine automatically communicates the next question of the series to him.

delaying the retrieval and communication of the next question until the answer has been completed;

The Prior Art

The Shepard patent describes a telephone answering machine. In addition to simply answering the telephone, it asks the caller questions and records answers to those questions. The caller may give an answer for as long as he likes. The next question will be posed when the previous answer is completed. If a question is not answered within a certain time, the machine automatically asks the next question. The machine described in Shepard is also capable of distinguishing between "YES" and "NO" answers and selecting the next question according to the answer given. In addition, the machine may control the operation of several different tape recorders and telephones simultaneously.

The Orita patent describes a language teaching machine which delivers a series of questions or instructions to headphones worn by students. Students' answers are spoken into a microphone and are recorded one after another in a tape recorder. The student may answer for as long as he or she wants. When an answer is completed, the next question is automatically sent to the headphones.

OPINION

The first issue presented by this appeal is whether the board adopted the correct standard of claim interpretation in reexamination proceedings. The board said that claims subject to reexamination will "be given their broadest reasonable interpretation consistent with the specification, and limitations appearing in the specification are not to be read into the claims." In adopting this standard for reexamination proceedings, the board followed In re Reuter, 651 F.2d 751, 210 USPQ 249 (CCPA 1981), where the United States Court of Customs and Patent Appeals approved use of the broadest reasonable interpretation standard in reissue proceedings.

Appellant contends that the adoption of this standard for interpreting claims subject to reexamination was error. Appellant urges us to require the PTO to apply a rule of claim construction adopted by Federal District Courts when the validity of an issued patent is in question. Appellant relies on Photo Electronics Corp. v. England, 581 F.2d 772, 199 USPQ 710 (9th Cir.1978), where the United States Court of Appeals for the Ninth Circuit described its approach to claim construction in an infringement action in the following manner:

The starting point is the rule that patent claims should be construed liberally to uphold the patent's validity rather than to destroy the inventor's right to protect the substance of his invention ....

Id. at 776, 199 USPQ at 714 (citations omitted). ^* We affirm the board's decision to give claims their broadest reasonable interpretation, consistent with the specification, in reexamination proceedings.

The PTO broadly interprets claims during examination of a patent application since the applicant may "amend his claims to obtain protection commensurate with his actual contribution to the art." In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550, 56 CCPA 1381, 1395 (1969). This approach serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified. Applicants' interests are not impaired since they are not foreclosed from obtaining appropriate coverage for their invention with express claim language. Id at 1405 n. 31, 162 USPQ at 550 n. 31, 56 CCPA at 1396 n. 31.

An applicant's ability to amend his claims to avoid cited prior art distinguishes proceedings before the PTO from proceedings in federal district courts on issued patents. When an application is pending in the PTO, the applicant has the ability to correct errors in claim language and adjust the scope of claim protection as needed. This opportunity is not available in an infringement action in district court. District courts may find it necessary to interpret claims to protect only that which constitutes patentable subject matter to do justice between the parties. Id. at 1404, 162 USPQ at 550, 56 CCPA at 1395.

The same policies warranting the PTO's approach to claim interpretation when an original application is involved have been held applicable to reissue proceedings because the reissue provision, 35 U.S.C. Sec. 251, permits amendment of the claims to avoid prior art. In re Reuter, 651 F.2d at 756, 210 USPQ at 253-54. The reexamination law, set forth below, gives patent owners the same right:

In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301 of this title, or in response to a decision adverse to the patentability of a claim of a patent. No proposed...