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`Paper No.
`Filed: February 17, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
`
`
`THE UNITED STATES POSTAL SERVICE (USPS)
`AND THE UNITED STATES OF AMERICA,
`AS REPRESENTED BY THE POSTMASTER GENERAL,
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`Petitioner,
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`v.
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`RETURN MAIL, INC.,
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`Patent Owner.
`
`__________________
`
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`Case: CBM2014-00116
`Patent: 6,826,548
`
`__________________
`
`
`Petitioner’s Reply to Patent Owner’s Response
`Pursuant to 37 C.F.R. § 42.24
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`TABLE OF CONTENTS
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`Case CBM2014-00116
`Patent 6,826,548
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`Preliminary Statement ......................................................................................... 1
`I.
`II. Standing ................................................................................................................ 2
`III. Claims 39-44 of the ’548 Patent Recite Only Non-Statutory
`Subject Matter ...................................................................................................... 2
`IV. 1997 ACS Anticipates Claims 39-44 of the ’548 Patent ................................ 6
`A. RMI Mischaracterizes 1997 ACS in Many Different Ways .................... 6
`1.
`1997 ACS Discloses at Least Three Types of “Codes” ......................... 7
`2.
`the Sender Wants Electronic Notification of Updated Addresses ..... 8
`3.
`Sender via a Computer ............................................................................... 9
`B. RMI Advocates Narrow (and Improper) Claim Interpretations
`to Differentiate Its Claims from 1997 ACS .............................................. 10
`1. Claims Do Not Require Complete Electronic Processing ................ 10
`2. UAA Mail of 1997 ACS Meets Claim Requirements for
`“Returned Mail Items” and “Undeliverable Mail Items” .................. 10
`3.
`1997 ACS Discloses the “Right” Kind of “Codes” ........................... 11
`4.
`Described in the Specification ............................................................... 13
`5. RMI Has Not Effectively Rebutted that 1997 ACS Discloses
`the “First Detector” of Claim 41 .......................................................... 13
`C. 1997 ACS’s “Arrangement” Is Sufficiently Similar to Anticipate
`the Claims ....................................................................................................... 14
`V. Conclusion .......................................................................................................... 15
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`1997 ACS Discloses Decoding Codes and Determines If
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`1997 ACS Discloses Transferring Updated Addresses to
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`1997 ACS Discloses “Return Mail Data Records” as
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`TABLE OF AUTHORITIES
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`FEDERAL CASES
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`Case CBM2014-00116
`Patent 6,826,548
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`Page(s)
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`AT&T v. Excel Comm., Inc.,
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`172 F.3d 1352 (Fed. Cir. 1999) .......................................................................................... 4
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`buySafe Inc. v. Google, Inc.,
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`765 F.3d 1350 (Fed. Cir. 2014) .......................................................................................... 5
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`Content Extraction & Transmission LLC v. Wells Fargo Bank,
` No. 2013–1588, 2014 WL 7272219 (Fed. Cir. Dec. 23, 2014) ..................................... 5
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`DDR Holdings , LLC v. Hotels.com, L.P.,
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`773 F.3d 1245 (Fed. Cir. 2014) .......................................................................................... 5
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`Net MoneyIN, Inc. v. VeriSign, Inc.,
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`545 F.3d 1359 (Fed. Cir. 2008) ........................................................................................ 15
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`FEDERAL STATUTES
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`35 U.S.C. § 101 ................................................................................................................. passim
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`35 U.S.C. § 102 .................................................................................................................... 2, 15
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`35 U.S.C. § 271 ........................................................................................................................... 2
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`35 U.S.C. § 281 ........................................................................................................................... 2
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`I.
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`Preliminary Statement
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`Patent 6,826,548
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`“Looking at the ’548 patent, its architecture is simple… and is specifically
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`designed to support automating the address updating process.” Ex.1015 at 22
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`(emphasis added). “The entire purpose behind the patent is to convert a manual
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`process to an integrated automated process.” Id. at 23 (citing Ex.1001, 1:55-
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`60)(emphasis added). In instituting this CBM Review, the Board found that “USPS
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`has established that claims 39-44 more likely than not are directed to non-statutory
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`subject matter under 35 U.S.C. § 101.” Institution Decision, at 19 (“ID”). Nothing in
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`the Patent Owner’s Response (“POR”) changes the reasoned and correct conclusions
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`in the Institution Decision. Alice reaffirmed that claims directed to abstract ideas,
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`without limitations sufficient to tie them down, are patent ineligible. Rather than
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`address this standard, RMI concocts its own misguided tests for patent-eligibility that
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`have no basis in precedent and, in fact, run afoul of the holdings in Alice, Bilski,
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`Benson, Flook, Bancorp, and CyberSource. POR at 27-51.
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`Having failed to move to amend claims, RMI now attempts to effect, through
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`arguments improperly narrowing its claims, what it should have done through claim
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`amendment. RMI attempts to turn a blind-eye to the entirety of the 1997 ACS
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`reference mischaracterizing it as a manual system. In so doing, RMI tacitly concedes
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`the abstractness of its claims and the anticipation of 1997 ACS. Therefore, USPS
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`respectfully requests cancellation of asserted claims 39-44 of the ’548 patent as being
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`unpatentable under 35 U.S.C. § 101 and anticipated by 1997 ACS under § 102 for the
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`reasons set forth herein and in its Petition for CBM Review (Paper No. 2).
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`Lastly, RMI attempts to challenge USPS and its real party-in-interest standing
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`to bring CBM review against the ’548 patent. But as the Board has correctly found,
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`USPS and the U.S. Government have standing to bring CBM Review here. ID at 18.
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`II.
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`Standing
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`The plain language of § 18(a) of the AIA does not limit covered business
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`method reviews to persons sued for infringement under 35 U.S.C. §§ 271 and 281.
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`RMI has sued USPS for infringement of the ’548 patent. Ex.2002 ¶¶ 1, 21. Therefore,
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`USPS has standing to bring CBM review of the ’548 patent. RMI concedes that its
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`’548 patent is financial in nature. ID at 12; Preliminary Response at 10-14; see also
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`POR. Further, the ’548 patent recites only nominal, generic, long-existing
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`technologies, such as the common telephone, any computer, or any Internet or
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`intranet address or location, therefore there is no technological innovation. Thus, the
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`Board correctly concluded that the USPS has standing to bring CBM review and the
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`’548 patent claims otherwise qualifies.
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`III. Claims 39-44 of the ’548 Patent Recite Only Non-Statutory Subject
`Matter
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`“[T]his case involves changing and processing data in a way that improves
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`the overall processing of returned mail.” POR at 34 (emphasis added). The claims-
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`at-issue do not include any meaningful, concrete limitations limiting the claims to a
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`specific application nor includes limitations that amount to significantly more than the
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`abstract idea of relaying mailing address data. Contrary to RMI’s assertion (POR at
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`28), ample evidence exists, including RMI’s own words—the patent claims, the
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`specification, RMI’s expert declaration, and excerpts of the file history—for the Board
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`to conclude the ’548 patent claims the abstract idea of relaying mailing address data.
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`Indeed, the Board in granting the Petition preliminarily determined that sufficient
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`evidence existed that the claims are “more likely than not directed to non-statutory
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`subject matter under 35 U.S.C. § 101.” ID at 22, 23, & 26. Moreover, as set forth
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`below, this response rebuts each argument advanced by RMI that the ’548 patent is
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`“patent eligible because it is not directed only to an abstract idea and has an
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`inventive concept.” POR at 51 (emphasis added).
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`RMI criticizes the USPS for not relying on its technical expert to support its
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`§ 101 arguments. In contrast, RMI relies on its technical expert, Dr. Nettles to
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`provide a legal opinion based on his two-part test (of his own creation) that the claims
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`are patentable subject matter because they contain a "technological
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`improvement." Id. at 28. He states:
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`First, [the patent] has an overall structure or “architecture” that supports
`automation. Second, it has key technological enablers that support and
`enable the architecture.
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`Ex.2015 at 25. However, it is well-established that “whether the asserted claims…are
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`invalid for failure to claim statutory subject matter under 35 U.S.C. § 101, is a question
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`of law[.]” AT&T v. Excel Comm., Inc., 172 F.3d 1352, 1355 (Fed. Cir. 1999).
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`RMI next attempts to salvage the validity of its instituted claims by inserting
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`claim limitations that are simply not recited in the claims. But RMI cannot escape the
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`actual claim language of the ’548 patent. RMI alleges “the piece of mail can be read
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`directly by an optical scanner, and then processed by the application server,” but not a
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`single claim recites an “optical scanner” or “application server.” Claims 39-44. Even
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`if the claims included an “optical scanner” or “application server,” which they do not,
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`the Board correctly noted, “at the time of the invention of the ’548 Patent, neither
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`decoding, such as bar code reading, nor electronically transmitting, was unknown,
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`unachievable, or incapable of being combined in the manner claimed.” ID at 14. The
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`’548 patent discloses that encoding and decoding were old and well known at the time
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`of the application. Ex.1001, 3:11-15; see also ID at 14. RMI further alleges “the
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`encoded information … is decoded and transforms incorrect address information
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`into correct address information after checking the available databases or
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`alternatively a notification that the prior address is incorrect,” citing Figs. 2 and 3.
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`POR at 39 (emphasis added). Claims 39-44 simply do not contemplate, let alone
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`claim, “transform[ing] incorrect address information into correct address information
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`after checking the available database” or providing a “notification that the prior
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`address is incorrect.”
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`RMI efforts to “narrow” their abstract idea by importing language and
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`limitations not recited by the claims to avoid preemption (and as later will be
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`discussed anticipation) run afoul of Supreme Court precedent. Mayo holds that the
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`breadth or narrowness of an abstract idea is not relevant to the application of the
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`exclusionary rule itself. Rather, the exclusionary rule applies “even if the
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`particular…abstract idea at issue is narrow.” buySafe, Inc. v. Google, Inc., 765 F.3d 1350,
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`1353 (quoting Mayo, 132 S.Ct. at 1303).
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`RMI’s last attempt is to argue that its claims “satisfy both the “machine or
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`transformation tests (‘MOTT’).” POR at 39. While the Supreme Court in Bilski noted
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`that the MOTT is a “useful and important clue” for determining patent eligibility, it is
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`clear today that not all machine implementations are created equal. In view of Alice,
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`“there can remain no doubt: recitation of generic computer limitations does not make
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`an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P.,
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`773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice, 134 S.Ct. at 2358). Here, RMI’s
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`claims utilize conventional and generic hardware that existed before the ’548 patent
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`and are not limited to a particular type of machine. Similar to how the computer-
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`implemented claims with a scanner in CET were directed to “basic concept of data
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`recognition and storage,” Content Extraction & Transmission LLC v. Wells Fargo Bank,
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`No. 2013-1588, 2014 WL 7272219 at *3 (Fed. Cir. Dec. 23, 2014), RMI’s claims are
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`drawn to the basic concept of “relaying mailing address data.” If RMI wanted to limit
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`its claims to “specific machines…capable of organizing, transforming, transmitting
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`and posting the address information,” it should have added these limitations to its
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`claims not merely argue them in its Response. The specification and RMI’s expert
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`confirm that the purpose of the ’548 patent is merely to automate the “very labor
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`intensive task of manually updating individual mailing address records.” Ex.1015 at
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`250; see also Ex.2005 at ¶ 52. RMI cannot rewrite its claims through arguments that it
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`did not rewrite by amendment nor use generic well-known devices to perform the
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`abstract idea of “relaying address data” thus pre-empting the field.
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`Thus, USPS respectfully requests the Board to cancel claims 39-44 as being
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`unpatentable under 35 U.S.C. § 101.
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`IV.
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`1997 ACS Anticipates Claims 39-44 of the ’548 Patent
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`In an effort to overcome the Board’s initial finding of anticipation, RMI first,
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`mischaracterizes 1997 ACS and, second, argues for an overly narrow interpretation of
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`its claim limitations. The Board should reject those arguments.
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`A. RMI Mischaracterizes 1997 ACS in Many Different Ways
`In its Response, RMI confusingly describes and mischaracterizes many aspects
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`of the disclosure of 1997 ACS. Though RMI acknowledges that 1997 ACS discloses
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`the “opportunity for electronic notification,” (POR at 53) and the “possibility of a
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`corrected address being provided” (POR at 55), RMI nonetheless dismisses 1997 ACS
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`as an anticipating reference. RMI argues that “particular circumstances” must apply
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`(POR at 53), but willfully ignores that 1997 ACS still discloses the limitations of the
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`asserted claims. RMI’s mischaracterizes 1997 ACS as a “manual system,” (Ex.2015
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`¶ 98)—but, 1997 ACS discloses an automated electronic process for providing
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`electronic address corrections to mail senders, to the extent required by the
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`claims. Ex.1004 at 4, 5, 7; Ex. 1028 (Supp. Declaration of J. Lubenow) ¶¶ 3-10.
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`1.
`1997 ACS Discloses at Least Three Types of “Codes”
`RMI repeatedly argues in vain that 1997 ACS does not disclose any “codes”
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`that can be encoded and decoded. (POR at 55.) But, there is no question that 1997
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`ACS discloses three such codes—(1) ACS Participant Code (e.g., “#BXBJDCK”); (2)
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`Ancillary Service Endorsement (“ASE”) (e.g., “address service requested”); and (3)
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`Keyline (e.g., #JNS0069TWK2874#)—each represents “data converted into code”
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`and each is “decipherable.” Ex.1004 at 9, 10, 14. As Dr. Lubenow explains, each code
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`has a proscribed format and each code must be decoded to determine if the customer
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`participates in electronic notification and wishes to receive an updated address for the
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`relevant mail piece. Ex.1028 ¶¶11-21. Only a properly-formatted Participant Code
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`corresponds to a particular sender. Ex.1004 at 4. And, CFS units use this code to
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`determine if the customer is participating in electronic notifications. Ex.1004 at 9.
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`Likewise, the ASE is a code phrase that is required for electronic Change of Address
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`(“COA”) notification. Ex.1004 at 14. Though the code phrases contain English
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`words, they are codes because those words have no commonly understood meaning.
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`Lubenow at X. Indeed, those phrases are deciphered into useable information only by
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`a person with the requisite knowledge (the postal letter carrier or CFS clerk) to
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`determine if the sender has requested address correction. Ex.1028 ¶ ¶16-18; Ex.1004
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`at 14-17. Finally, 1997 ACS discloses the Keyline code. Ex.1004 at 9, 10. Though
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`optional for electronic COA notification, it is nonetheless describes a unique code
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`(originally provided by the sender) that is encoded by the USPS into the Fulfillment
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`Files before transmission to the sender. The Keyline is decoded by both the USPS (as
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`part of the Check Digit Computation) and by the sender to allow matching the ACS
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`notification with the sender’s records. Ex.1028 ¶¶19-20, Ex.1004 at 10-11.
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`2. 1997 ACS Discloses Decoding Codes and Determines If the
`Sender Wants Electronic Notification of Updated Addresses
`Though RMI attempts to muddy the waters, 1997 ACS simply discloses that
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`senders must place certain codes on mail pieces, which, when decoded by the USPS,
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`indicate whether the sender wants electronic notification of the corrected
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`address. Ex.1004 at 4-5; Ex.1028 ¶ 21. CFS Units detect and decode codes to
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`determine if the sender wants address correction. Ex.1028 ¶¶ 32-35. The CFS Unit
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`uses the Participant Code and the ASE to determine if the sender wants a corrected
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`address. Then, as required by claim 42, the CFS Unit obtains a new address from the
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`Change of Address (“COA”) database1 using the name and address of intended
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`1 RMI suggest that the origin of the customer’s new address is important. POR at 53.
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`First, RMI cites no claim language that requires the new address to come from a
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`recipients. Ex.1004 at 5, 6. If a new address is available, then 1997 ACS discloses
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`transmitting a fulfillment notification to National Customer Support Center. Id. at 6.
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`And finally, as required by claim 43, 1997 ACS describes that a computer creates
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`Fulfillment Files by encoding, among other things, the recipient’s name, updated
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`address, and old address. Id. at 19.
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`3. 1997 ACS Discloses Transferring Updated Addresses to
`Sender via a Computer
`On a regular schedule, the 1997 ACS Fulfillment Files are electronically
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`transferred by a computer to the party participating in ACS (sometimes called a return
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`mail service provider in the claims) either via electronic tapes, cartridges or diskettes
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`or by posting on an electronic bulletin board system for download by the sender, as
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`required by claim 42. Ex. 1004 at 5-6; Ex.1028 ¶¶36-38. The sender decodes the
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`Fulfillment Files on the other end to update its files. Though RMI repeatedly states
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`that 1997 ACS does not describe using computer program instructions to complete
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`this process, (POR at 67 n.33), a person of ordinary skill would understand that this
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`Fulfillment File (complete with its headers, field length, bit position, and bit length)
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`would be stored by a computer program and necessarily involve compute instructions.
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`Ex.1004 at 19-28; Ex.1028 ¶¶ 6-9.
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`particular source. Moreover, 1997 ACS operates the same regardless of who provides
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`the updated address. Ex.1004 at 4; Ex.1028 ¶¶ 30-31.
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`B. RMI Advocates Narrow (and Improper) Claim Interpretations to
`Differentiate Its Claims from 1997 ACS
`Next, RMI attempts to interpret its claims narrowly—in contravention of the
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`Board’s preliminary claim construction—to save its claims. The Board should neither
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`reconstrue the claims at RMI’s invitation nor apply its narrow scheme.
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`1.
`Claims Do Not Require Complete Electronic Processing
`RMI broadly argues the claims require complete electronic processing, relying
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`on a statement from the Court of Federal Claims. Ex.1011 at 18. But, the Board did
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`not adopt this position. ID at 14, 20-21. So, only those limitations that recite electronic
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`transmitting (claim 39), a processor (claim 40), or electronic transferring and network
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`(claim 42) must be electronic. As explained above, 1997 ACS meets those limitations.
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`Moreover, the claims do not preclude manual processing for certain limitations, which
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`are also disclosed by the 1997 ACS process. And the portions of the 1997 ACS
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`process that are performed manually (e.g., by postal letter carriers or CFS clerks) meet
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`the non-electronic limitations. Ex.1028 ¶ 10.
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`2.
`UAA Mail of 1997 ACS Meets Claim Requirements for
`“Returned Mail Items” and “Undeliverable Mail Items”
`RMI also argues that 1997 ACS’s processing of Undeliverable-As-Addressed
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`(“UAA”) mail does not anticipate processing a “plurality of” “returned mail items”
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`(Claim 39) or “undeliverable mail items” (Claims 40-42). POR at 62-63. Initially, there
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`can be no question that 1997 ACS is designed to process more than one piece of mail.
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`Ex.1028 ¶24. Moreover, the Board preliminarily construed “returned mail items” as
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`“items that are mailed and come back to a post office facility”. ID at 10. Though the
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`USPS maintains that its definition (“mail subject to being sent back”) is the BRI for
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`this term, even under the narrower definition, 1997 ACS discloses processing of
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`“returned mail items,” because a person of ordinary skill would recognize that the
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`CFS Units are not co-located with the Delivery Units. Ex.1028 ¶¶26-27. Therefore,
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`when 1997 ACS discloses “mail piece . . . is sent by the postal employees to the CFS
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`unit” this means the piece has been mailed and “comes back” to the post office
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`facility, i.e., the CFS Unit. Ex.1004 at 5; Ex.1026 at 6. As for “undeliverable mail
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`items,” this was not a term construed by the Board, but the use of the term in the
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`claims reveals that an “undeliverable mail item” is merely mail returned after mailing.
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`See claim 40, 41. As Dr. Lubenow explains, the commonly understood definition of
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`UAA mail in 1997, (Ex.1027 at 129), clearly encompasses such “undeliverable mail
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`items,” thus 1997 ACS discloses processing of “undeliverable mail item[s]”.
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`3. 1997 ACS Discloses the “Right” Kind of “Codes”
`RMI argues that none of the three codes disclosed by 1997 ACS are the “right”
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`kind of codes to meet the various claim limitations. To come to this conclusion, RMI
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`adopts a tortured, narrow interpretation of “code” requiring that a code must: (a) have
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`“specific letters” corresponding to “specific meanings”2 (thus barring code words); (b)
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`2 Dr. Nettles lauds ZIP Codes for having structure (Ex.2015 ¶ 65), but in reality the
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`ZIP Code would not meet RMI’s narrow definition of “code” either. Ex.1028 ¶14.
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`“change[] form”; (c) be found completely on the mail piece; and (d) indicate alone
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`whether the sender gets an address notification. POR at 66, 67, 75 n.39.3 But, none of
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`those limitations are in the claims, neither party offered a construction for this term,
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`nor did the Board construe it. Thus, “code” should be given its plain and ordinary
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`meaning. RMI’s arguments to the opposite should be rejected.
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`Under the proper construction, 1997 meets the claim requirements. 1997 ACS
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`discloses the decoding and determines the steps of the claims. As noted above, 1997
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`ACS discloses that the Participant Code and the ASE code must be placed on the
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`mail piece based on the sender’s wishes about electronic address correction. Ex.1028
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`¶21. 1997 ACS discloses “the mailpiece (depending on its mail class and
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`endorsements) is sent by the postal carrier to the CFS Unit” (Ex.1004 at 5), where an
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`attempt is made to obtain an updated address. Moreover, through the creation of the
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`Fulfillment files that include the Keyline identifying the recipient, 1997 ACS also
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`discloses the encoding and decoding “intended recipient identification information”
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`required by claim 41. Ex.1028 ¶¶19-21. Finally, the stored “customer number” of
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`3 Dr. Nettles also adds the requirement that determination of whether the sender
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`wants a corrected address must be found based on information on the mail piece, not
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`by looking to another source. Ex.2015 ¶58. In Dr. Nettles’ view, because 1997 ACS
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`interprets codes (e.g., the Participant Code) using a database, this is not the type of
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`“code” in the claim. But, this is also not a requirement in the claim language.
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`claim 40 is disclosed, because the claim only requires that the customer number be
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`“associated” with the mail piece and 1997 ACS discloses the customer number is
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`stored in the header of the Fulfillment File (Ex.1004 at 20), and the header is followed
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`by a COA record for each undeliverable mail item. Ex.1004 at 22.
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`4. 1997 ACS Discloses “Return Mail Data Records” as
`Described in the Specification
`RMI argues that “return mail data record” of Claim 42 is different from the
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`Fulfillment Files (that include corrected addresses) posted in 1997 ACS to mailers via
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`the bulletin board system. POR at 76. The term “returned mail data record” was not
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`construed, but the specification describes “returned mail data records” may include
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`corrected addresses. Ex.1001 at 5:3-13. Thus, the 1997 ACS discloses this limitation.
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`5.
`RMI Has Not Effectively Rebutted that 1997 ACS Discloses
`the “First Detector” of Claim 41
`RMI repeatedly argues that 1997 ACS does not anticipate because “the CFS
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`units did not have scanners until at least 2005.” POR at 64 n.30; 67 n.34; 60. First,
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`RMI admits that barcodes and scanners are only suggestions by the specification.
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`POR at 2. The claims do not require scanners or barcodes. Id. at 2-3. Further, the
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`exhibits offered by RMI do not establish its point. RMI’s Exhibit 2030 only states that
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`by May 2005, the installation of scanner for scanning “newly-designed Change of
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`Address cards” was complete. Id. at 1; see also 2031 at 22. Neither exhibit discusses the
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`1997 CFS units, as RMI contends.
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`Claim 41 only recites “a first detector,” which is not defined in the
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`specification. The USPS proposed that the BRI of detector should be “one that
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`Case CBM2014-00116
`Patent 6,826,548
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`detects” (Ex. 1010 at 314) and RMI gave no specific definition, except to say that it
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`could not be a person. Prel. POR at 21. The Board preliminarily determined that this
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`term should be given its plain and ordinary meaning and preliminarily adopted “a
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`device for detecting information” “for the sake of completeness” but noted that
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`detector is “generic.” ID at 9-10, 24.
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`There is no question that 1997 ACS discloses that the CFS Unit performs the
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`function of detecting at least the Participant Code and the Endorsement Code while
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`determining whether the sender has requested an electronic address correction. Dr.
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`Lubenow testified that the CFS unit would had to have as a “first detector” (Ex.1023
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`at 172:11-173:2). And, that conclusion is not only supported by other evidence, it is
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`not refuted by RMI’s exhibits. Ex.1028 ¶¶33-35; Ex.1018 at 7 (1999’s Redirection
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`History); Ex.1025 at 3 (CFS history by postal historian Ludeman). Thus, because only
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`a generic “first detector” is required by claim 41, 1997 ACS discloses this limitation to
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`a person of ordinary skill in the art.
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`C. 1997 ACS’s “Arrangement” Is Sufficiently Similar to Anticipate the
`Claims
`RMI contends that the claims of the ’548 patent are not anticipated because the
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`’548 patent takes a “different approach” to providing address correction. POR at 55.
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`Accordingly, RMI argues that 1997 ACS does not anticipate, not because the
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`elements are not disclosed, but because elements are not disclosed as “arranged in the
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`claim.” See, e.g., POR at 65 (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
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`1370-71 (Fed. Cir. 2008)). But Net MoneyIN involved an attempt to combine two
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`distinct protocols from a single reference, which is not the case here. Rather, 1997
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`ACS discloses all steps in a single example and the steps are disclosed as related to
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`one another. Moreover, RMI tries to extend its argument to creating the “output file”
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`in claim 42.4, by arguing that this output file must be created before the determining
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`step. POR at 74. But, this order is not in the claim language. The Board should reject
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`RMI’s attempt to save its claims in this fashion.
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`V.
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`Conclusion
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`Based on the analysis above and the record before the Board, claims 39-44 of
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`the ’548 patent should be cancelled under 35 U.S.C. §§ 101 and 102.
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`Dated: February 17, 2015
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`Respectfully submitted,
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`By: /Lionel Lavenue/
`Lionel Lavenue, Reg. No. 46,859
`Finnegan, Henderson, Farabow, Garrett &
`Dunner LLP
`Two Freedom Square
`11955 Freedom Drive
`Reston, VA, 20190-5675
`Phone:
`571.203.2750
`Fax:
`571.203.2777
`E-mail: USPS-RMI-CBM@finnegan.com
`Attorney for Petitioner
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`CERTIFICATE OF SERVICE
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`Case CBM2014-00116
`Patent 6,826,548
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`The undersigned certifies that the foregoing Petitioner’s Request for
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`Rehearing Pursuant to 37 C.F.R. § 42.71(d) was served on February 17, 2015, by
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`Express Mail to the following attorneys of record for Petitioner as well as by
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`electronic service at the e-mail address listed below.
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`Douglas H. Elliott
`doug@elliotiplaw.com
`Eric M. Adams
`eric@elliottiplaw.com
`Renea Mattox
`renea@elliottiplaw.com
`Sarah Kelly
`sarah@elliottiplaw.com
`THE ELLIOTT LAW FIRM, PLLC
`6750 West Loop South, Suite 995
`Bellaire, Texas 77401
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`
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`
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`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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