On Tuesday, the BPAI seemingly ended the 10 year saga of Ex Parte Gary E. Rhine affirming the examiner’s rejection of expired U.S. Patent 4,910,652. The reexamination was initiated in April 2000 on behalf of Casio Computer by the now long defunct law firm of Pennie & Edmonds. At issue in the appeal was the patentability of a combination wristwatch/flashlight. In 2002, the Patent Owner amended claim 1 to require a fixed time delay, arguing that the prior art demonstrated an adjustable time delay. However, the reexamination lagged on for years, and prior to appeal, in 2007, the patent expired. On appeal, the USPTO explained that the amendment was effectively withdrawn upon patent expiration in 2007.
In a scathing supplemental brief (here) the Patent Owner pointed out that the reexamination had been pending some 10 years, including some unexplained year long gaps in prosecution, bounced appeal briefs, etc. The Patent Owner argued that in light of this delay, it was “outrageous” that the USPTO would withdraw the amendment.
While a 10 year pendency is extreme to say the least, this reexamination was filed in a time before the creation of the Central Reexamination Unit (CRU). This case is one of the few remaining with the general examining corps. Likewise, ex parte reexamination appeal rules have been changed to avoid the rejection of appeal briefs late in the game. While not much comfort to Mr. Rhine, fortunately, the patent reexamination landscape has changed significantly over the years.
Nevertheless, of perhaps greater interest is why the Patent Owner would amend the claims in the first place since the winning argument was right under his nose.
At issue in the appeal was a single independent claim, claim 1 below (as amended):
1. (As Amended) A time keeping and displaying wrist mountable watch having a flashlight mounted in the case thereof, said flashlight comprising:
a power supply for supplying electrical power to said flashlight, said power supply electrically connected to at least one light source, and
time delay means for automatically extinguishing said light source after a fixed time delay following the energization of said light source by the electrical deenergization of said light source.
The Office identified the time delay means as being satisfied by the Mallory reference (Fig. 1 below)
PPG Comment: Rather than arguing that the “time delay means” of the claim was required to be interpreted under 35 USC § 112 6th paragraph (i.e., means plus function) and that the circuit structure of the specification was nowhere near an equivalent structure to the mechanical spring/bellows arrangement of Mallory, the Patent Holder instead argued the reference was non-analogous art, and could not be bodily incorporated into a watch. Giving the Patent Holder the benefit of the doubt, perhaps the aversion to 112 6th was litigation inspired. For example, the solenoid/capacitive based circuitry of the patent specification, although described as exemplary, could limit infringement options.
While the BPAI cannot be blamed for not making the Patent Holder’ s argument for him, I am left wondering whether a statutorily mandated claim construction can be ignored regardless of the implied “waiver” of such arguments in the brief? As pointed out repeatedly on this blog, the USPTO could save Patent Holders a lot of grief, and conserve Office resources by requiring third party requesters to properly address means-plus-function claims, upfront, in their requests for reexamination.
 Patent Owner sued Casio Computer in 1998 on this patent Rhine v. Casio Inc., Inc., No. 3:96CV7524 (N.D. Ohio May 12, 1998). After a remand from the CAFC, the case was dismissed in 2005 without prejudice in light of the reexamination.