In re Youman

• Decision Date: 08 May 2012
• Docket Number: No. 2011–1136.,2011–1136.
• Citation: 679 F.3d 1335,102 U.S.P.Q.2d 1862
• Parties: In re Roger YOUMAN and Marney Morris.
• Court: U.S. Court of Appeals — Federal Circuit

679 F.3d 1335

102 U.S.P.Q.2d 1862

In re Roger YOUMAN and Marney Morris.

No. 2011–1136.

United States Court of Appeals, Federal Circuit.

May 8, 2012.

Laurence S. Rogers, Ropes & Gray, LLP, of New York, New York, argued for appellants. With him on the brief was Pristine Johannessen.

Scott C. Weidenfeller, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Alexandria, Virginia, argued for appellee. With him on the brief were Raymond T. Chen, Solicitor, and Janet A. Gongola, Associate Solicitor.

Before LOURIE, SCHALL, and PROST, Circuit Judges.

Opinion for the court filed by Circuit Judge PROST.

Dissenting opinion filed by Circuit Judge LOURIE.

PROST, Circuit Judge.

Roger Youman and Marney Morris (collectively, “applicants”) appeal from a decision of the United States Patent and Trademark Office (“PTO”), Board of Patent Appeals and Interferences (“Board”). The Board affirmed the examiner's rejection of claims 24–27, 29–43, and 45–55 in the applicants' reissue patent application under 35 U.S.C. § 251. Ex parte Youman, No. 2010–007029, 2010 WL 3503790 (B.P.A.I. Sept. 7, 2010) (“Board Decision ”). Because the Board did not properly apply the recapture rule's three-step analysis, we vacate and remand.

Background

The invention at issue is directed to an electronic program schedule system for a television that allows the user to access and navigate television program information efficiently. As a part of this system, a user can access a “By Title” display that lists programs alphabetically by title. A user can either scroll through this list or search it by entering the first few letters of a program title using the remote. As filed, U.S. Patent Application 08/346,603 contained a single claim for the invention. Claim 1 (“original claim 1”) of the application read as follows:

An electronic television programming guide for use in connection with a television receiver for displaying a plurality of television programs from a plurality of program sources on a plurality of user-selectable television channels comprising:

user control means for issuing control commands, including channel-control commands;

data processing means for receiving said control commands and for generating video control commands;

a video display generator adapted to receive video control commands from said data processing means for generating and displaying a plurality of television program titles on said television receiver, said plurality of television programs displayed alphabetically by title; and

selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title, where n is greater than or equal to one; said data processing means being responsive to said selection means and adapted to select said plurality of television program titles for display on said television receiver in response to said n characters.

J.A. 909 (emphasis added). During prosecution, with all the other limitations in the prior art, the examiner rejected original claim 1 based on the “selection means” limitation as obvious under 35 U.S.C. § 103 in light of three prior art references: U.S. Patent No. 5,241,671 (“Reed patent”), U.S. Patent No. 5,253,066 (“Vogel patent”), and U.S. Patent No. 5,353,121 (“Young patent”). The Young patent teaches a television programming guide that can display television program titles on the screen by using a user control. The Vogel patent teaches a television programming guide that includes selecting means such as four triangular arrow buttons and a selection button for selecting programs from a list, but does not disclose displaying programs alphabetically by title or selecting a title by selecting the first few characters of titles. The Reed patent teaches a multimedia search system of alphabetically-listed titles, in which a user can select a title by entering one or more characters of a selected title. As each character is entered, the Reed patent teaches that the program will list titles that are closest to the entry displayed. The Reed system is used on a personal computer with access to a keyboard of alphanumeric keys to enter searchable titles.

The examiner found that it would have been obvious to one of ordinary skill in the art to modify the television guide systems in the Young and Vogel patents, which allow users to select titles by scrolling through programs that are not in alphabetical order, to include a means of selecting a title from an alphabetical list by typing the first n characters of the title into a keyboard, as taught in Reed. The applicants then amended original claim 1 and added claims 2–23. In remarks filed with the amendment, they argued that they overcame the prior art by using the keys on the television control device to select the characters, by, for example, cycling through the alphabet, rather than entering each character using a keyboard, as taught in Reed.¹ After a supplemental amendment, the examiner issued a notice of allowability for claims 1–23, concluding that the means of selecting characters by cycling forward, backward, up and down through a list of alphanumeric characters was not obvious in light of the prior art.

On May 13, 1997, U.S. Patent Number 5,629,733 (“'733 patent”) issued. Claim 1 of the '733 patent (“issued claim”) reads as follows:

An electronic television programming guide for use in connection with a television receiver for displaying a plurality of television programs from a plurality of program sources on a plurality of user-selectable television channels comprising:

user control means for issuing control commands, including channel-control commands;

data processing means for receiving said control commands and for generating video control commands;

video display generator means adapted to receive video control commands from said data processing means for generating and displaying a visual display of a plurality of television program titles on said television receiver, said plurality of television program titles arranged alphabetically by title; and

selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title, where n is greater than one; said data processing means being responsive to said selection means and adapted to select said plurality of television program titles for display on said television receiver in response to said n characters;

wherein said video display generator means displays said n characters and said selection means comprising means for causing each of said n characters to cycle forward and backward through a plurality of alphanumeric characters and means for assigning one of said alphanumeric characters to each of said n characters.

'733 patent col.34 l.49—col.35 l.10 (emphasis added).

On May 13, 1999, within two years of the '733 patent issuing, the applicants filed reissue application 09/313,532, adding claims 24–55. In the accompanying declaration, they stated that “U.S. patent 5,629,733 is partly inoperative by reason of said patent claiming less than we had a right to claim in said patent.” J.A. 334. Following a non-final rejection of claims 24 and 40 under 35 U.S.C. § 251, the applicants amended claim 24 (“reissue claim”) to read as follows:

An electronic television programming guide for use in connection with a television receiver for displaying a plurality of television programs from a plurality of sources on a plurality of user-selectable television channels comprising:

a wireless remote control, comprising nonalphanumeric keys, that generates control commands;

a data processor that receives the control commands from the wireless remote control; and

a video display generator connected to the data processor that displays an alphabetically-arranged visual display of a plurality of television program titles on said television receiver,

wherein a user may search for a title to be displayed by selecting n characters with the wireless remote control, where n is greater than one, wherein each of the n characters may be selected with the wireless remote control from a plurality of displayed alphanumeric characters by changing from a first character to a second character using the nonalphanumeric keys.

J.A. 502. On December 4, 2007, the examiner issued a final rejection of claims 24–44 under 35 U.S.C. § 251 because they improperly recaptured subject matter that was surrendered in the application for the '733 patent.

The applicants appealed. The Board applied the three-step recapture rule analysis to affirm the examiner's rejection of the reissue claims. Under step one, the Board found that the reissue claim was broader than the issued claim but narrower than the original claim. The reissue claim was broader than the issued claim, the Board found, because the “changing” limitation in the reissue claim was broader in scope than the “cycling” limitation in the issued claim. The Board found that the reissue claim was narrower than the original claim because the original claim did not contain any limitation related to how the characters changed, whereas the reissue claim did. Under step two, the Board determined that the broadening related to the surrendered subject matter. Relying on the Manual of Patent Examining Procedure (“MPEP”) § 1402.02(I)(C) (8th ed., rev. 7, July 2008) and North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed.Cir.2005), the Board held that because the reissue claim broadened patented claim 1 to an intermediate scope, it constituted an impermissible recapture of surrendered subject matter. Board Decision, 2010 WL 3503790, at *9. The Board articulated step 3 as allowing a reissue claim to escape the recapture rule only through other materially narrowing limitations “if the narrowing limitation is directed to one or more ‘overlooked aspects' of the invention.” Id. at *10. It concluded that the other...