NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE ROBERT YEAGER
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2012-1667
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in serial No.
12/218,144.
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Decided: June 7, 2013
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ROBERT D. YEAGER, of Sewickley, Pennsylvania, pro
se.
NATHAN K. KELLEY, Deputy Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia, for
appellee. With him on the brief were JOSEPH MATAL and
FRANCES M. LYNCH, Associate Solicitors.
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Before DYK, CLEVENGER, and MOORE, Circuit Judges.
PER CURIAM.
Robert D. Yeager appeals from a decision of the Pa-
tent Trial and Appeal Board (“Board”). The Board af-
firmed the rejection of claims 1–8 of Yeager’s Patent
2 IN RE: ROBERT YEAGER
Application No. 12/218,144 (“the ’144 application”) as
either anticipated or obvious. We affirm.
BACKGROUND
The ’144 application was filed on July 11, 2008. It
claims methods of identifying relevant prior art references
within a database for disclosure to the United States
Patent and Trademark Office (“PTO”) in connection with
a patent application. Independent claim 1 reads:
1. A computer-assisted method for facilitating the
prosecution of a particular pending patent appli-
cation in the [PTO], said method comprising:
(a) discriminately selecting [U.S.] patents
and published [U.S.] patent applications
for submission to the [PTO] in discharge of
an applicant’s duty of disclosure with re-
spect to said particular pending [U.S.] pa-
tent application, said selection step
comprising:
(i) constructing a software data-
base of items comprising [U.S.] pa-
tents and published patent
applications known to said appli-
cant;
(ii) providing for each item within
said database searchable indicia
representative of the classes and
subclasses, when subclasses are
available, assigned to said item by
the [PTO] in accordance with a
[U.S.] Patent Classification Sys-
tem;
(iii) noting the classes and sub-
classes, when subclasses are
IN RE: ROBERT YEAGER 3
available, assigned to said pending
patent application; and
(iv) conducting by a computer pro-
cessor an electronic search of said
searchable indicia in said database
for items bearing indicia corre-
sponding to said classes and sub-
classes assigned to said pending
patent application; and
(b) disclosing all U.S. patents and pub-
lished U.S. patent applications identified
by the electronic search as having said in-
dicia corresponding to said classes and
subclasses assigned to said pending appli-
cation to the [PTO] in connection with said
pending application.
J.A. 25–26. Dependent claim 6 further requires that “said
database [referenced in claim 1] is a relational database”
(i.e., a database structured to recognize relationships
between stored items of information). J.A. 27. Independ-
ent claim 8 is similar to claim 1, but requires that the
search step to be performed “without conducting a sub-
stantive review of the items within [the] database.” J.A.
28. Yeager describes his invention as “employ[ing] the
search strategy adopted by the PTO for examining . . .
particular pending patent application[s] as the criterion
for selecting which . . . U.S. patents and/or published U.S.
patent applications known to the applicant . . . should be
disclosed to the PTO in discharge of the applicant’s duty
of disclosure.” Appellant’s Br. 8–9.
The ’144 application was rejected by the examiner
based on two prior art references. The primary reference
is U.S. Patent No. 6,694,331 (“Lee”), which describes a
method of “formulating and facilitating searches for
intellectual property.” Lee at [57]. Lee describes a soft-
ware database including U.S. patents and published U.S.
4 IN RE: ROBERT YEAGER
patent applications, and a “class search module . . . for use
with one or more classification systems” such as the
PTO’s patent classification system. Lee col 3. ll. 37–49,
col. 6 ll. 35–40. The examiner found that Lee anticipated
claims 1–5, 7, and 8 of the ’144 application, and that claim
6 was obvious over the combination of Lee and U.S.
Patent Publication 2006/0026174 (“Lundberg”). The
examiner relied on Lundberg for the “relational database”
limitation of claim 6.
Yeager appealed the rejection of his claims to the
Board, arguing that Lee did not anticipate his independ-
ent claims because a patent applicant’s duty of disclosure
is a claim limitation and Lee does not address the duty of
disclosure. Yeager further asserted that Lee was silent
regarding the “noting” and “disclosing” steps in independ-
ent claim 1, and challenged the examiner’s construction of
the claim term “applicant,” which the examiner construed
to include a “user.” Finally, regarding claim 8, Yeager
argued that the prior art did not teach searching “without
conducting a substantive review of the items within [the]
database.”
The Board affirmed the examiner’s rejections, finding
that Lee disclosed all of the elements of Yeager’s inde-
pendent claims, including search criteria based on the
PTO’s patent classification system. It also found that
facilitating a patent applicant’s discharge of the duty of
disclosure was merely a description of intended use, not a
limitation on claim scope. Regarding the “noting” and
“disclosing” steps, the Board found that Yeager did not
provide an adequate reasoned explanation of his argu-
ment to overcome the examiner’s anticipation rejection,
and that Lee disclosed those steps in any event. The
Board further found that the claim term “applicant” was
non-functional descriptive material not entitled to any
patentable weight. Because Yeager did not offer separate
arguments regarding his other claims, the Board did not
IN RE: ROBERT YEAGER 5
address them separately. Yeager sought rehearing before
the Board.
On rehearing, the Board held in the alternative that,
even accepting Yeager’s proposed claim construction of
“applicant” as “an inventor, assignee, or legal representa-
tive of either,” Lee nonetheless anticipated because “an
inventor, assignee, or legal representative of either mere-
ly amounts to a potential user.” The Board also noted
that Yeager “d[id] not make a bona fide effort to explain”
why the prior art did not teach claim 8’s limitation of
searching “without conducting a substantive review of the
items within [the] database.” In the alternative, the
Board found “without conducting a substantive review” to
be a negative limitation, and that because Lee did not
specifically describe conducting substantive review, it
implicitly disclosed the absence of substantive review.
Yeager timely appealed to this court. We have juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal conclusions de novo. In
re NTP, Inc., 654 F.3d 1268, 1273 (Fed. Cir. 2011). Fac-
tual determinations are reviewed for substantial evi-
dence. Id. Anticipation is a question of fact. In re Gleave,
560 F.3d 1331, 1334–35 (Fed. Cir. 2009).
Yeager first argues that the Board erred by constru-
ing the claim term “applicant” to be included within the
term “user.” We agree with the Board that Yeager’s
distinction between “applicant” and “user” is one without
a difference. Lee states that “[a] user . . . may use [search
results] . . . as a drafting tool to assist in the preparation
of technical or legal documents[,] e.g., . . . patent applica-
tions.” Lee col. 9 ll. 16–21. Thus, Lee clearly discloses
use by a patent applicant, including “an inventor or an
assignee, and/or the legal representative of either.”
Substantial evidence therefore supports the Board’s
6 IN RE: ROBERT YEAGER
conclusion that Lee, in describing a “user,” includes an
“applicant.” 1
Yeager next argues that the Board did not adequately
address his arguments regarding the “noting,” “disclos-
ing,” and “without conducting a substantive review of the
items within [the] database” limitations. With respect to
these limitations, the Board found that Yeager provided
no reasoned explanation as to why Lee does not describe
them. Yeager identifies no error in that finding, instead
suggesting that his generalized references to those claim
limitations in his briefs sufficed to preserve those issues
before the Board. As we held in In re Lovin, however, a
party that offers only “a mere recitation of the claim
elements and a naked assertion that the corresponding
elements were not found in the proper art” waives any
argument with respect to those claim elements. 652 F.3d
1349, 1356–57 (Fed. Cir. 2011). We therefore see no error
in the Board’s rejection of Yeager’s arguments regarding
the “noting,” “disclosing,” and “without conducting a
substantive review of the items within [the] database”
limitations.
Finally, Yeager argues that the Board erred in finding
that Lee discloses using the same search criteria used by
the PTO during examination. We disagree. Lee discloses
“a search system for use with one or more classification
systems (e.g., U.S. Patent and Trademark Office classifi-
cation of patents)” and states that “classifications may
include . . . primary and secondary classifications (e.g.,
class\subclass) assigned to intellectual property.” Lee col.
6. ll. 37–40; col. 6 l. 67 to col. 7. l. 4. Accordingly, the
1 Because we affirm the Board’s conclusion that Lee
describes an “applicant” under any claim construction, we
do not reach its alternative conclusion that the term was
not entitled to any patentable weight.
IN RE: ROBERT YEAGER 7
Board’s conclusion that Yeager describes the search
criteria applied by the PTO during examination is sup-
ported by substantial evidence.
We have considered Yeager’s remaining arguments
and find them to be without merit.
AFFIRMED