United States Court of Appeals
for the Federal Circuit
__________________________
(Reexamination Nos. 90/006,495 and 95/000,020)
IN RE NTP, INC.
__________________________
2010-1277
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
Decided: August 1, 2011
__________________________
BRIAN M. BUROKER and OZZIE A. FARRES, Hunton &
Williams, LLP, of Washington, DC, argued for appellant.
With them on the brief were YISUN SONG; and ROBERT A.
KING, of Atlanta, Georgia.
NATHAN K. KELLEY, SCOTT C. WEIDENFELLER and
WILLIAM LAMARCA, Associate Solicitors, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With them on the brief was
RAYMOND T. CHEN, Solicitor.
__________________________
Before GAJARSA, CLEVENGER, and MOORE, Circuit Judges.
IN RE NTP 2
GAJARSA, Circuit Judge.
This is an appeal from the Board of Patent Appeals
and Interferences (“Board”). NTP, Inc. (“NTP”) appeals
the Board’s decision affirming the U.S. Patent and Trade-
mark Office’s (“PTO”) rejection of all 764 claims of U.S.
Patent No. 6,317,592 (“the ’592 patent”) during reexami-
nation. The Board held that all claims of the ’592 patent
were anticipated by U.S. Patent No. 6,219,694 issued to
Lazaridis (“Lazaridis”), which qualified as prior art be-
cause the Board concluded that the ’592 patent was not
entitled to claim priority to U.S. Patent Application No.
09/161,462, the parent application of the ’592 patent
(“Parent Application”).
NTP appeals three specific issues: (1) whether the
Board properly construed the term “destination proces-
sor”; (2) whether priority is properly considered during
reexamination; and (3) if it is, whether determining
priority is appropriate in this case. After considering all
of the issues, for the reasons discussed below, we affirm
the Board’s decision.
BACKGROUND
This is one of eight related appeals concerning the re-
examination proceedings of eight NTP patents. Seven of
those appeals are disposed of in In re NTP, Inc., (2010-
1243, -1254, -1263, -1274, -1275, -1276, and -1278) (Fed.
Cir. August 1, 2011) (“NTP Seven Appeal Op.”), which was
decided contemporaneously herewith and provides a more
detailed background of the appeals. In order to avoid
repetition, this opinion reviews only the facts necessary to
the resolution of this appeal.
The application that matured into the ’592 patent was
filed on December 6, 1999 and claims a priority date of
May 20, 1991 through a series of continuation applica-
3 IN RE NTP
tions, as disclosed on the cover page of the ’592 patent.
The Parent Application to the ’592 patent was filed on
September 28, 1998. 1 Reduced to its simplest form, the
invention described in the ’592 patent is an electronic
mail system that transmits an electronic mail message
from an originating processor to a destination processor
through a radio frequency (“RF”) data transmission
network. Id. col.17 ll.25-32. Prior to reaching the desti-
nation processor, the electronic mail message is stored in
a RF receiver, which sends the message to the destination
processor when the two are connected. Id. col.17 ll.32-34,
41-43. In some embodiments of the invention, the elec-
tronic mail message is transmitted through the data
transmission network using a gateway switch and/or an
interface switch. Id. col.18 ll.1-8, col.19 ll.9-15. A gate-
way switch stores information that it receives from an
originating processor before that information is transmit-
ted to the destination processor. Id. col.19 ll.9-15. An
interface switch connects the gateway switch to the RF
transmission network to transmit the stored information.
Id. col.19 ll.19-23.
For this appeal, the key feature of the claimed inven-
tion is the “destination processor.” Claim 1 is representa-
tive of the independent claims of the ’592 patent with
regard to this key feature:
1. In a communication system comprising a wire-
less system which communication system trans-
mits electronic mail inputted to the
1 The Parent Application claims descendancy by
continuation from U.S. Patent Application No. 08/844,957,
filed on April 23, 1997, which is a continuation of U.S.
Patent Application No. 08/443,430, filed on May 18, 1995,
which is a continuation of U.S. Patent Application No.
07/702,939, filed on May 20, 1991. ’592 patent at [63].
IN RE NTP 4
communication system from an originating device,
mobile processors which execute electronic mail
programming to function as a destination of elec-
tronic mail, and a destination processor to which
the electronic mail is transmitted from the origi-
nating device and after reception of the electronic
mail by the destination processor, information con-
tained in the electronic mail and an identification
of a wireless device in the wireless system are
transmitted by the wireless system to the wireless
device and from the wireless device to one of the
mobile processors connected thereto, the originat-
ing device comprising:
a programmed processor which executes elec-
tronic mail programming to originate the elec-
tronic mail, the electronic mail containing an
address of the destination processor and the
information contained in the electronic mail to
be transmitted to the destination processor.
Id. col.28 ll.11-29 (emphases added). NTP disputes the
meaning of “destination processor,” namely whether a
destination processor performs any action after receiving
an electronic mail message.
As originally issued, the ’592 patent contained 665
claims, including twelve independent claims. On Decem-
ber 26, 2002, the PTO initiated reexamination proceed-
ings, 2 during which NTP added dependent claims 666-
2 Research in Motion, Ltd. (“RIM”), after being sued
by NTP for infringing the ’592 patent (among other NTP
patents), initiated reexamination proceedings concerning
the ’592 patent on May 29, 2003. On August 9, 2004,
RIM’s inter partes reexamination proceedings were
merged with the proceedings initiated by the PTO. RIM
agreed to forego further participation in the reexamina-
5 IN RE NTP
764. On February 1, 2006, the examiner issued an Action
Closing Prosecution, rejecting all 764 claims as antici-
pated, obvious, lacking written description, and/or lacking
enablement. The examiner found that eight references
anticipated or rendered obvious some or all of the claims.
Seven of these references antedated the ’592 patent’s
claimed priority date of May 20, 1991 under 35 U.S.C.
§§ 102(b) or (e). 3 Lazaridis, the eighth reference, has a
filing date of May 29, 1998. It could not be a prior art
reference if the ’592 patent was entitled to claim the May
20, 1991 priority date. The examiner, however, concluded
that the claims of the ’592 patent were not entitled to the
earlier priority date because the written description of the
Parent Application did not support a destination proces-
sor that could retransmit the contents of an electronic
mail message, as was claimed in the ’592 patent. There-
fore, Lazaridis was prior art under 35 U.S.C. § 102(e) and
anticipated all 764 claims.
NTP subsequently appealed this decision to the
Board, which affirmed the examiner’s determination
tion proceedings as a condition of a settlement agreement
with NTP.
3 Four of the seven references are prior art under
35 U.S.C. § 102(b): Gary E. Ford, Beginner’s Guide to
TCP/IP on the Amateur Packet Radio Network Using the
KA9Q Internet Software, (May 9, 1990); Stig Kaspersen et
al., Norwegian Telecommunication Administration, Mo-
bile Data Network Description, (1989) (Volumes 1-4, 6-8);
Richard D. Verjinski, PHASE, A Portable Host Access
System Environment, 3 IEEE Military Communications
Conference 1989, 0806-09 (1989); and Bdale Garbee, The
KA9Q Internset Software Package, (1989). The remaining
three references are prior art under 35 U.S.C. § 102(e):
U.S. Patent No. 5,159,592 (“Perkins”), filed on October 29,
1990; U.S. Patent No. 5,917,629 (“Hortensius”), filed on
October 29, 1990; and U.S. Patent No. 4,972,457
(“O’Sullivan”), filed on January 19, 1989.
IN RE NTP 6
concerning the priority date of the ’592 patent. 4 In re
NTP, Inc., No. 2008-004606, at 130-35 (B.P.A.I. Nov. 10,
2009) (“Board Op.”). First, the Board construed the term
“destination processor” to mean the “particular end node
device to which the intended user recipient of electronic
mail has immediate and direct physical access when
accessing and viewing electronic mail.” Id. at 28. The
Board rejected NTP’s argument that the “destination
processor” could also be an intermediate node device, such
as a gateway or interface switch. Id. 27-28. The Board
explained that the written description consistently refers
to destination processors, gateway switches, and interface
switches separately. Id. at 27. Further, neither the
gateway switches nor the interface switches allowed the
user to review a message without further transmission.
Id.
Next, the Board determined that the written descrip-
tion of the Parent Application “does not have [a] written
description for wireless transmission of information
contained in an electronic mail after a destination proces-
sor has received the electronic mail.” Id. at 133. Claim 1
requires that after the destination processor receives the
electronic mail message, it then transmits that electronic
mail message to a wireless device and then to a mobile
processor. ’592 patent, col.28 ll.11-29. The written de-
scription of the Parent Application, however, only de-
scribed a destination processor as having the ability to
receive an electronic mail message—nothing more. Board
Op. at 132-33. The Board rejected NTP’s argument to
define destination processor as including the gateway or
interface switch based on its construction of destination
4 The Board also found that various other claims of
the ‘592 patent were anticipated or obvious but no single
reference or combination of references invalidated all
claims.
7 IN RE NTP
processor. Id. Therefore, the ’592 patent was not entitled
to claim priority to the Parent Application and could not
claim the priority date of May 20, 1991.
Finally, because the ’592 patent’s priority date was its
filing date of December 6, 1999, the Board found that
Lazaridis—as 35 U.S.C. § 102(e) prior art—anticipated all
claims of the ’592 patent. Id. at 135. The Board did not
engage in a substantive analysis of Lazaridis because
NTP did not “argue against the substantive merit of the
anticipation rejection based on Lazaridis,” but only its
availability as prior art. Id. at 122. NTP timely filed an
appeal with this court. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
This court reviews questions of law, such as claim
construction and statutory interpretation, de novo. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004); In re Kathawala, 9 F.3d 942, 945 (Fed. Cir.
1993). The Board’s factual determinations, including
what the examiner considered during prosecution, are
reviewed for substantial evidence. See In re Swanson, 540
F.3d 1368, 1381 (Fed. Cir. 2008); In re Gartside, 203 F.3d
1305, 1315 (Fed. Cir. 2000) (“Because our review of the
Board’s decision is confined to the factual record compiled
by the Board, we accordingly conclude that the substan-
tial evidence standard is appropriate for our review of
Board factfindings.”).
On appeal, NTP does not dispute that Lazaridis an-
ticipates all the claims of the ’592 patent if the ’592 patent
is not entitled to claim the priority date of its Parent
Application, thus breaking the heredity chain of priority
that dates to May 20, 1991. Instead, NTP premises its
argument on the basis that the Board erred in construing
destination processor. Under NTP’s proposed construc-
IN RE NTP 8
tion, the written description of the Parent Application
would support the claimed functions of the destination
processor and thus entitle the ’592 patent to claim an
earlier priority date. NTP also argues that the Board
erred in deciding that the ’592 patent was not entitled to
claim priority to its Parent Application during reexamina-
tion. NTP asserts that the PTO could not consider
whether the ’592 patent was entitled to an earlier priority
date because (1) 35 U.S.C.
§ 301 generally prohibits such an analysis; and (2) 35
U.S.C. § 303(a) prohibits such an analysis in this particu-
lar case because the PTO had already considered the
issue in the original prosecution. Although none of these
arguments has legal merit, we discuss each in turn. 5
I.
The Board construed the term “destination processor”
to mean the “particular end node device to which the
intended user recipient of electronic mail has immediate
and direct physical access when accessing and viewing
electronic mail.” Board Op. at 28. NTP asserts that this
construction is incorrect and proposes that “destination
processor” means “any processor that receives email,
processes the email and then transmits the email to
another destination.” Appellant’s Br. 35. If the claim is
construed as NTP proposes, it would be able to maintain
its claimed priority date of the Parent Application.
5 NTP also argues that the ’592 patent was reduced
to practice prior to October 29, 1990, thus antedating
Lazaridis under 37 C.F.R. § 1.131. The companion opin-
ion in this case disposes of this argument, finding that
substantial evidence supported the Board’s determination
that NTP presented insufficient evidence to satisfy 37
C.F.R. § 1.131. NTP Seven Appeal Op. at 14-21.
9 IN RE NTP
In reexamination, “claims . . . are to be given their
broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in
light of the specification as it would be interpreted by one
of ordinary skill in the art.” Am. Acad., 367 F.3d at 1364
(citation omitted). “Although the PTO gives claims the
broadest reasonable interpretation consistent with the
written description, . . . claim construction by the PTO is
a question of law that we review de novo, . . . just as we
review claim construction by a district court.” In re Baker
Hughes, Inc., 215 F.3d 1297, 1301 (Fed. Cir. 2000) (inter-
nal citations omitted). In this case, the Board’s construc-
tion of “destination processor” is legally correct and is
reasonable in view of the written description and how the
written description would be interpreted by one of ordi-
nary skill in the art.
The Board relied on the written description of the ’592
patent in construing “destination processor.” The system
described in the ’592 patent transmits electronic mail
from an originating processor to a destination processor.
’592 patent, col.17 ll.25-32. To do so, the system uses both
gateway and interface switches. Id. col.18 ll.1-3, col.19
ll.12-15. A gateway switch “stor[es] information received
from [an] originating processor prior to transmission of
the information to the . . . destination processor.” Id.
col.19. ll.12-15. After receiving information from an
originating processor, the gateway switch transmits the
information to an RF information transmission network
through the use of an interface switch. Id. col.19 ll.15-23.
The interface switch “connects an electronic mail system
and/or at least one additional processor to an RF data
transmission network which transmits the information to
a RF receiver which is connectable to the destination
processor.” Id. col.18 ll.3-8. The written description
therefore makes clear that both the gateway switch and
IN RE NTP 10
the interface switch receive and transmit information. A
user, however, cannot retrieve a message from either.
The destination processor receives the electronic mail
message but does not retransmit the message. See, e.g.,
id. col. 17 ll.42-44 (“The RF receiver automatically trans-
fers the information to the destination processor . . . .”);
id. col.18 ll.1-3 (“The present invention transmits elec-
tronic mail from an originating processor to at least one
destination processor through an interface switch.”); id.
col.22 ll.22-23 (“Upon connection, the receiver 119 relays
the information from the RF receiver to the destination
processor.”). Instead, the end user retrieves his or her
electronic mail message through the destination proces-
sor. Id. col.3 ll.14-31. This retrieval does not occur at the
interface or gateway switches. See, e.g., id. col.3 ll.14-18
(“Upon arrival of the information at the destination
processor’s gateway switch . . . [t]he information is typi-
cally stored . . . for later retrieval by the destination
processor . . . .” (emphasis added)). Thus, the user does
not retrieve the message at the gateway or interface
switches—the message must be transmitted through the
RF receiver to the destination processor for the user to
retrieve it.
The Board properly relied on the written description
in construing “destination processor.” The written de-
scription clearly distinguishes between a destination
processor, an interface switch, and a gateway switch. See
supra. All three have distinct functions within the sys-
tem. The written description only states that a message
may be viewed at the destination processor and also
distinguishes a destination processor from an interface
switch and a gateway switch in that there is no disclosure
of the destination processor further transmitting a mes-
sage in the system.
11 IN RE NTP
NTP’s proposed claim construction is not similarly
supported. In fact, NTP’s construction would exclude the
destination processor itself. NTP’s proposed construction
requires that a destination processor “transmit[] the
email to another destination.” Appellant’s Br. 33. There
is no disclosure of the destination processor further
transmitting an electronic mail message. This result
would exclude a destination processor from the definition
of “destination processor” and is clearly incorrect. See
Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1370
(Fed. Cir. 2005) (holding that the district court’s construc-
tion was incorrect because it excluded a required element
of the claim); Dayco Prods., Inc. v. Total Containment,
Inc., 329 F.3d 1358, 1370 (Fed. Cir. 2003) (same). NTP
also relies on an expert declaration to argue that a person
of ordinary skill in the art would understand a destina-
tion processor to include gateway and interface switches.
Although the Board considered the declaration, the Board
chose not to credit it because the expert’s declaration was
not premised on a proper claim construction analysis.
Board Op. at 29. “The Board has discretion as to the
weight to give declarations offered in the course of prose-
cution.” Am. Acad., 367 F.3d. at 1368 (citation omitted).
Here, the Board did not abuse its discretion in discount-
ing NTP’s expert declaration. See id. (affirming the
Board’s decision to discount expert declaration concerning
how a person of ordinary skill in the art would have
understood the claim terms where the declaration “did not
constitute persuasive evidence to support his conclu-
sions”).
Contrary to NTP’s argument, the Board’s construction
of “destination processor” is correct and is supported by
the written description, while NTP’s is not. We therefore
affirm the Board’s construction of “destination processor.”
NTP does not dispute that, based on the Board’s construc-
IN RE NTP 12
tion, the claims of the ’592 patent are not supported by
the written description of the Parent Application because
it does not describe a destination processor transmitting
messages. Thus, unless determining the appropriate
priority date during reexamination is prohibited—either
outright or in this particular case—the claims of the ’592
patent are anticipated by Lazaridis.
II
Reexamination proceedings, governed by 35 U.S.C.
§§ 301 et seq., are intended to “permit any party to peti-
tion the [PTO] to review the efficacy of a patent, following
its issuance, on the basis of new information about pre-
existing technology that may have escaped review at the
time of the initial examination.” H.R. No. 66-1307, 96th
Cong., 2d Sess. (1980), 3-4. The scope of reexamination
proceedings is limited to “substantial new question[s] of
patentability,” 35 U.S.C. § 303(a), which are questions
that have not previously been considered by the PTO,
Swanson, 540 F.3d at 1379. These new considerations
must be based only on “prior art consisting of patents or
printed publications.” 35 U.S.C. § 301; see id. § 302.
Thus, other challenges to the patentability of original
claims—such as qualification as patentable subject mat-
ter under § 101 or satisfaction of the written description
and enablement requirements of § 112—may not be
raised in reexamination proceedings. 6 See id. § 301; 37
C.F.R. §§ 1.552(c), 1.906(c). Moreover, during reexamina-
tion, the patent claims no longer carry the statutory
presumption of validity. In re Etter, 756 F.2d 852, 858
(Fed. Cir. 1985) (en banc).
6 Section 112 can be used to evaluate claims that
were added during reexamination. 37 C.F.R. §§ 1.552(a),
1.906(a).
13 IN RE NTP
A.
We first address NTP’s argument that § 301 prohibits
the examiner from making a priority determination
during reexamination. Reexamination proceedings are
intended to have the same focus as original prosecution,
Etter, 756 F.2d at 857, and are procedurally similar, see
35 U.S.C. §§ 305, 314. During reexamination, the exam-
iner reviews the claims in view of various prior art pat-
ents and printed publications. See id. § 301. If the
examiner believes that a reference invalidates one or
more claims of the patent, he or she issues an office action
to the patentee explaining the reasons a reference is
invalidating. See 37 C.F.R. § 1.104. In order to maintain
those claims, the patentee must then traverse the exam-
iner’s arguments. See id. §§ 1.111, 1.550. An argument
can be made that the patent is entitled to a priority date
that antedates the asserted reference. NTP argued that
its antecedent date was able to overcome Lazaridis.
NTP, however, urges that the analysis stops here. In
other words, NTP submits that once the patentee claims
entitlement to an earlier priority date, the examiner must
accept the applicant’s argument without challenge. For
support, NTP relies on Patlex Corp. v. Quigg, 680 F. Supp.
33, 37 (D.D.C. 1988), where the district court stated that
“the reexamination statute does not contemplate a ‘reex-
amination’ of the sufficiency of a disclosure. Rather, it is
limited to reexamination of patentability based on prior
art patents and publications.” Patlex, however, does not
support NTP’s argument for several reasons.
First, a district court decision may inform the issue
but is not binding precedent on this court. See Brasseler,
U.S.A. I, L.P. v. Stryker Sales Corp., 182 F.3d 888, 891
(Fed. Cir. 1999). Second, the district court precluded
review of priority because that issue—along with enable-
IN RE NTP 14
ment—had been decided during the patent’s original
prosecution. Patlex, 680 F. Supp. at 36. During the
patent’s original prosecution, the examiner stated in the
Reasons for Allowance that he had considered “[u]ndue
breadth” and “sufficiency of the disclosure” and concluded
that the written description of the great-grandparent met
the enablement requirement. Id. (citations omitted).
Third, and most importantly, a patent’s claims are not
entitled to an earlier priority date merely because the
patentee claims priority. Bausch & Lomb, Inc. v. Barnes-
Hind/Hydrocurve, Inc., 796 F.2d 443, 459 (Fed. Cir. 1986)
(explaining that “the art must have existed as of the date
of invention, presumed to be the filing date of the applica-
tion until an earlier date is proved”); see also In re Chu, 66
F.3d 292, 297 (Fed. Cir. 1995) (holding that a reference
was properly considered prior art because the earlier filed
application did not support the patent’s claims, thereby
precluding reliance on its earlier priority date). Rather,
for a patent’s claims to be entitled to an earlier priority
date, the patentee must demonstrate that the claims meet
the requirements of 35 U.S.C. § 120.
Nothing in 35 U.S.C. §§ 301 et seq. entitles a patentee
to a claim of right to its earliest priority date. Under
§ 120, a patent is entitled to the priority date of an earlier
filed application if (1) the written description of the ear-
lier filed application discloses the invention claimed in the
later filed application sufficient to satisfy the require-
ments of § 112; (2) the applications have at least one
common inventor; (3) the later application is filed before
the issuance or abandonment of the earlier filed applica-
tion; and (4) the later application contains a reference to
the earlier filed application. In addition, if the later filed
application claims priority through the heredity of a chain
of applications, each application in the chain must satisfy
15 IN RE NTP
§ 112. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565,
1571 (Fed. Cir. 1997).
Thus, when a patentee argues that its claims are enti-
tled to the priority date of an earlier filed application, the
examiner must undertake a priority analysis to determine
if the patentee meets the requirements of § 120. There is
no statutory limitation during a reexamination proceed-
ing prohibiting the examiner from conducting a priority
analysis. Otherwise, the examiner would be stripped of a
critical legal tool needed in performing a proper reexami-
nation. Nothing in §§ 301 et seq. prohibits an examiner
from determining whether or not a priority date was
properly claimed during the original examination of the
application.
B.
NTP alternatively argues that even if priority may be
properly analyzed during reexamination proceedings, it is
prohibited in the instant case by § 303 because the exam-
iner in the original prosecution had already considered
whether the written descriptions in the Parent Applica-
tion and the ’592 patent supported the claims. Relative to
this issue, NTP makes two arguments. First, NTP argues
that because the examiner did not deny the ’592 patent’s
priority claim, that examiner must have considered the
issue in accordance with the Manual for Patent Examin-
ing Procedures (“MPEP”) § 2163, which requires the
examiner to consider whether the written description
supports the claims. Second, NTP asserts that the exam-
iner determined that the written description of the ’592
patent supported the claims during the original prosecu-
tion, and therefore, he implicitly determined that the ’592
patent was entitled to claim priority to the Parent Appli-
cation because both have the same written description.
Neither of these arguments has merit.
IN RE NTP 16
NTP’s first argument relies on the presumption that
the examiner considered all the evidence before him
during the original prosecution. Prior to 2002, this court
interpreted § 303(a) to permit reexamination “only . . . for
those instances in which the examiner did not have all of
the relevant prior art at his disposal when he originally
considered the patentability of an invention.” In re Por-
tola Packaging, Inc., 110 F.3d 786, 790 (Fed. Cir. 1997),
superseded by statute Pub. L. 107-273, § 13105, 116 Stat.
1758, 1905-06 (Nov. 2, 2002) (“2002 Amendment”). In
other words, if a reference was cited during the original
prosecution, the examiner was presumed to have consid-
ered it, as the regulations require. Id.
In 2002, Congress amended § 303(a) to explain that
“[t]he existence of a substantial new question of pat-
entability is not precluded by the fact that a patent or
printed publication was previously cited by or to the
Office or considered by the Office.” 2002 Amendment. In
Swanson, we explained that this amendment meant that
“Congress . . . has now rejected this presumption of full
consideration. Section 303(a) as amended . . . requires a
more context-specific approach that is based on an analy-
sis of what the PTO actually did.” 540 F.3d at 1380.
Thus, there is no presumption that the examiner consid-
ered whether the written description of the Parent Appli-
cation supports the claims of the ’592 patent simply
because the MPEP requires it.
Whether the examiner actually considered this issue
can only be determined by reviewing the prosecution
history. The history here fails to support NTP’s conten-
tion that the examiner made such a considered judgment.
Deciding whether a patent application satisfies § 112
requires a distinct and separate analysis from deciding
whether that application satisfies § 120. When an exam-
iner decides whether an application satisfies § 112, the
17 IN RE NTP
examiner reviews only the application. Deciding whether
that same application is entitled to an earlier priority
date requires the examiner to determine whether pending
claims are supported by the written description of the
parent application. 35 U.S.C. § 120. While a continuation
application is required to have an identical written de-
scription to that of its parent, this can only be determined
by examining the parent application. Here, it is undis-
puted that the examiner made no such examination of the
Parent Application. Indeed, “[i]n the absence of an inter-
ference or rejection which would require the PTO to make
a determination of priority, the PTO does not make such
findings as a matter of course in prosecution.” Pow-
erOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305
(Fed. Cir. 2008) (footnote omitted).
NTP appears to acknowledge this deficiency in its ar-
gument and thus takes a different tack, arguing that the
examiner implicitly found that the ’592 patent, a con-
tinuation, was entitled to claim priority to its Parent
Application because the examiner found that the written
description supported the ’592 patent’s claims. Yet the
evidence on which NTP relies to demonstrate that the
examiner considered whether the written description of
the ’592 patent supports its claims is inadequate. NTP
relies on three statements in the prosecution history to
support its argument. The first is from an interview
summary, where the examiner stated that “[a]pplicant
further pointed out support within the specification for
the newly proposed features.” J.A. 1260. The second
statement appears in an amendment and refers to the
interview and states that “support for the claimed subject
matter was discussed at the interview and included a
reference to the subject matter [citing specification].” J.A.
1307. The third statement is also in an amendment and
states that “[s]upport for such computer program claims
IN RE NTP 18
can be found in the Appendix of the present application . .
. .” J.A. 1316.
Whether an examiner considered an issue must be
context-specific, and here, there is no evidence that the
examiner actually considered whether the claims of the
’592 patent satisfy the requirements of § 112. In cases
where we have determined the examiner to have consid-
ered an issue during the original prosecution, the issue
was squarely before the examiner. For example, in Rec-
reative Technologies, the examiner used the same refer-
ence during the original prosecution and the
reexamination proceedings to reject the patent’s claims
for obviousness. In re Recreative Techs. Corp., 83 F.3d
1394, 1398 (Fed. Cir. 1996). This court found that the
reexamination was improper because “[t]he question of
patentability in view of the . . . reference was decided in
the original examination, and thus it can not be a sub-
stantial new question.” Id.; cf. WMS Gaming, Inc. v. Int’l
Game Tech., 184 F.3d 1339, 1355 (Fed. Cir. 1999) (“The
burden on the party asserting obviousness is more easily
carried when the references on which the assertion is
based were not directly considered by the examiner during
prosecution.” (emphasis added)). In contrast, in Swanson,
this court found that a reference relied on in the original
prosecution could create a substantial new question of
patentability where the reference was used for a different
purpose during reexamination. 540 F.3d at 1380-81.
In this case, the examiner’s lack of consideration of
§ 112 is even clearer than in Swanson. The statements
that NTP relies upon merely show that the applicant
asserted that the written description supported his
claims, not whether the examiner actually considered this
issue. The examiner issued no rejection based on § 112,
nor did the examiner make an affirmative statement that
the claims of the ’592 patent satisfied § 112, as the exam-
19 IN RE NTP
iner did in Patlex. Although an examiner does not dispute
every single statement an applicant makes—and, of
course, the applicants are required to conduct these
proceedings with candor and good faith—this does not
constitute an admission by the examiner that he consid-
ered and accepted these statements as established. As
Congress acknowledged, examiners have limited time to
review each application and cannot be expected to fully
address every possible issue before them. H.R. Rep. 107-
120 (June 28, 2001) (“[T]he PTO examiner only has a few
precious hours to review the application before she is
required to make a decision on its grant.” (footnote omit-
ted)). Allowing any statement made by an applicant
during prosecution to suffice for “consideration” of an
issue would reintroduce the error of Portola Packaging.
Based on the evidence provided by NTP, the examiner did
not consider either the priority claim of the ’592 patent
based upon the Parent Application or whether its claims
satisfied the requirements of § 112.
III.
We hold that the Board’s claim construction of desti-
nation processor was correct; and that priority can be
considered and determined during reexamination pro-
ceedings, and that here, such a determination was proper
because the examiner did not consider priority during the
original prosecution. Therefore, the ’592 patent was not
entitled to claim the priority date of the Parent Applica-
tion, and as a result, Lazaridis is prior art under § 102(e).
As NTP does not dispute that the claims of the ’592 pat-
ent are anticipated by Lazaridis under § 102, this court
affirms the Board’s decision invalidating all claims of the
’592 patent as anticipated by Lazaridis.
IN RE NTP 20
CONCLUSION
For the foregoing reasons, we affirm the decision of
the Board.
AFFIRMED
COSTS
No costs.