In re Scroggie

170 F. App'x 132
Court of Appeals for the Federal Circuit·Decided March 13, 2006·No. No. 05-1370·Published

Opinion

PROST, Circuit Judge.

Michael C. Scroggie, Michael E. Kacaba, David A. Rochon, and David M. Diamond (collectively, “Scroggie”) appeal a decision by the United States Patent and Trademark Office Board of Patent Appeals and Interferences (the “Board”) affirming the final rejection of claims 41-67 of U.S. Patent Application Serial No. 09/401,198 (the “ ’198 application”) as obvious under 35 U.S.C. § 103 in view of a single prior art reference, U.S. Patent No. 5,933,811 (“Angles”). Ex parte Scroggie, Appeal No.2004-0738, Paper No. 33 (B.P.A.I. Nov. 30, 2004) (“Board Decision”). Because the Board erred in construing the term “generating page data” in claims 41-49, we [133]*133reverse the Board’s decision with respect to those claims, but because the Board correctly construed the term “personalized web page” in claims 50-67, we affirm the Board’s decision with respect to those claims.

BACKGROUND

On September 23, 1999, Scroggie filed the ’198 application. The claims of the ’198 application are generally directed to a system and method for generating a web page. In claims 41-49, “generating page data” is both a limitation of the claims and a part of the preamble, whereas for claims 50-67, “generating a web page” is only part of the preamble. Additionally, claims 50-67 contain the limitation “personalized web page.” Claims 41 and 50 are representative with respect to each of those limitations which are the focus of the parties’ dispute in this case.

41. A computer implemented method for generating a web page, said method comprising the steps of:
transmitting a prompt for personal information from a main computer to a personal computer over a computer network;
transmitting personal information data from said personal computer to said main computer over said computer network in response to said prompt; and
generating page data defining a web page based upon said personal information data.
50. A computer method for generating a web page, said method comprising the steps of:
transmitting a prompt for personal information from a main computer to a personal computer;
receiving at said main computer personal information data transmitted from said personal computer; and
transmitting from said main computer to said personal computer web page data for displaying a personalized web page, said personalized web page based upon said personal information data.

(emphases added).

The ’198 application’s specification, however, appears to be more narrow than its claims because it is generally directed to a method for sending shopping incentives (e.g., coupons) to customers over the internet. The coupons can be transmitted to the customer in various ways, including by e-mail and by embedding the coupons in a web page. The coupons can then be printed by the customer and used at retail stores.

In the decision on appeal, the Board relied solely on Angles as establishing a prima facie case of obviousness of claims 41-67.1 In general, Angles discloses a system and method for delivering customized electronic advertisements in an interactive communication system. The Board found that the first two elements of representative claim 41, i.e., the two transmitting steps, were clearly taught or suggested by Angles. Scroggie does not disagree. Additionally, the Board found that the examiner had not explained where, in Angles, the third element, “generating page data defining a web page based upon said personal information data” was either taught [134]*134or suggested. The Board, however, found that column 4, lines 7-9, of Angles discloses that advertisements sent to a consumer’s computer may contain hyper-links to other information and that the “hyperlinks typically direct the user’s Internet browser to access different websites on the Internet.” Board Decision, slip op. at 5. Thus, the Board concluded that since the advertisements sent to a consumer in Angles are based on personal information of the consumer and the hyper-links in the advertisement lead to a web page which is generated from some page data, “one may fairly interpret this disclosure as a teaching of ‘generating page data defining a web page based upon said personal information.’ ” Board Decision, slip op. at 8.

In regard to claims 50-67, the Board found that the hyper-links in Angles suggest the “personalized web page” limitation because those hyper-links lead to a web page as a result of personal information. Thus, the Board concluded that the web pages displayed could be considered “personalized web pages” as that term is used in claims 50-67.

On Scroggie’s request for rehearing, the Board reaffirmed its conclusion that Angles teaches the third limitation of claim 41, “generating page data defining a web page based upon said personal information.” The Board reiterated that “if the advertisements, which are sent to a consumer based on personal information, are said to be ‘page data’ (i.e., the advertisement page contains data including a hyperlink) and the hyperlink (the hyperlink defining a web page since clicking on this hyperlink will send the user to that web page) in that page data is directed to a certain web page, it can be reasonably said that Angles generates page data defining a web page based on personal information, as claimed.” Ex parte Scroggie, Appeal No.2004-0738, Paper No. 33, slip op. at 3-4 (B.P.A.I. Feb. 10, 2005).

DISCUSSION

Obviousness is a legal question based on underlying factual findings. See e.g., In re Mayne, 104 F.3d 1339, 1341 (Fed.Cir. 1997). What a reference teaches, including whether it teaches toward or away from the claimed invention, is a question of fact. Para-Ordnance Mfg. v. SGS Imps. Int’l, 73 F.3d 1085, 1088 (Fed.Cir.1995). This court upholds the Board’s factual findings unless they are unsupported by substantial evidence. In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir.2000).

Claim construction, however, is a question of law reviewed de novo on appeal. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed.Cir.1998) (en banc). Since during prosecution, claims must be given their “broadest reasonable interpretation,” this court reviews the Board’s interpretation of disputed claim language to determine whether it is “reasonable” in light of all the evidence before the Board. In re Hyatt, 211 F.3d 1367, 1372 (Fed.Cir.2000); In re Morris, 127 F.3d 1048, 1055 (Fed. Cir.1997).

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In re Scroggie, 170 F. App'x 132 (Fed. Cir. 2006).

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