Dated: June 26, 2007
 

Jed Margolin
Applicant, Appellant, pro se
1981 Empire Rd.
Reno, NV  89521-7430
(775) 847-7845
xxx@yyyy.zzz

The Appellant Jed Margolin, acting pro se, certifies the following:

1.  That he is acting pro se in this appeal and has acted so during the
      prosecution of the patent application.

2.  That he is the real party of interest in this case.

3.  As an individual, he does not have subsidiaries or parent companies.

4.  No Patent Agents or Attorneys have appeared or are expected to
     appear for me.
 

__________________

Jed Margolin
Applicant, Appellant, pro se
1981 Empire Rd.
Reno, NV  89521-7430
(775) 847-7845
xxx@yyyy.zzz

Date:  June 26, 2007

CERTIFICATE OF INTEREST .……………………………………....…………  i

TABLE OF CONTENTS  …………………………………………………….....   ii

ARGUMENT  …………………………………………………………….....…….  1

I. The Court committed an error of fact by misstating one of
Margolin’s key arguments  ……………..………………………................ 1

II. The Court committed an error of law by applying the incorrect
standard of review to Margolin’s claims  …….………………...........….  2

III. The Court failed to follow its decision in Phillips v. AWH in
allowing the Examiner to use the Microsoft Computer
Dictionary to define the term server …………………………….............. 3

CONCLUSION ………………………………………..………..………..........…. 7

ADDENDUM –

A.  Judgment entered by the Court of Appeals For the Federal
     Circuit, Appeal No. 2007-1056, June 15, 2007 ..………….………… 8

B.  Email Correspondence with Charles Petzold,
     noted Microsoft author  …………....……………………………….… 15

 C.  Fax to Microsoft Chairman Bill Gates  ………..……………………. 17

CERTIFICATE OF SERVICE  …....…………………………….......………… 18

CERTIFICATE OF COMPLIANCE .…………………………………….......... 19

    The Court erred in summarizing Margolin’s argument about the definition of a subscriber. (Page 5, first full paragraph):

With respect to the term “subscriber,” Mr. Margolin argues that the Board erred in finding that a device, rather than a person, could meet this term. The Board, however, did not make such a finding. The Board found that the Ellis patent describes a PC user who is a person (not a device) who subscribes to a service that provides Internet access. In the ‘801 application, the subscriber is referred to as the owner of the Home Network. ‘801 application,  [Paragraph]16.

2.  BPAI agreed that Margolin’s subscriber is a person (Blue Brief, Page 27: "BPAI's understanding of key terms is different from the Examiner's.")
 

As long as the Examiner defined Margolin’s subscriber as a device, amending the claims would have been futile.
 

BPAI’s agreement that Margolin’s subscriber is a person came too late to allow Margolin to amend his claims.

By disagreeing with the Examiner on the definition of a key term BPAI erred in finding the Examiner's rejection reasonable and the Court's finding of "substantial evidence" to support this ruling is based on a faulty reading of the record.
 
 

The Court speaks of the two-step analysis of determining whether a claim is anticipated under 35 U.S.C. §102. (Bottom of Page 2 to Top of Page 3):

A claim is anticipated under 35 U.S.C. §102 when the same invention, including all of the claimed limitations, appear in a single reference. The determination generally involves a two-step analysis, wherein the Board first construes the claims for purposes of examination, applying to the proposed claims the broadest reasonable meaning of the terms thereof as they would be understood by a person of ordinary skill in the field of the invention. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The purpose of this examination practice is to facilitate precision in claiming by imposing rigor during prosecution, because claims are readily modified before patent issuance. Id.

While the interpretation of prior art under a 35 U.S.C. §102 rejection may use a standard of review of “substantial evidence”, the first step is to construe Margolin’s claims. Since claim construction is a question of law the standard of review (for this step) is de novo. [Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1456, 46 USPQ2d 1169, 1174 (Fed. Cir. 1998) (en banc)]

The Court erred in using a standard of review of "substantial evidence" in construing Margolin’s claims which gave deference to the Patent Office. The standard of review for construing Margolin’s claims should have been de novo.

Late in the prosecution of the patent application (Examiner’s Answer to Margolin’s Appeal Brief to BPAI, Appendix Page A158) the Examiner introduced the Microsoft Computer Dictionary 5th edition to define what a server is.

In Margolin’s response (Margolin’s Reply Brief to Examiner’s Answer, March 16, 2006, Appendix  A165) he noted that the Microsoft Computer Dictionary listed two definitions and the Examiner had used the less common one.

BPAI challenged Margolin’s assertion that Microsoft had listed the more commonly used definition of the term first.
There are two methods used by dictionaries when there are two or more definitions for a word: chronologically (or historically), ranging from earliest to most recent sense; and logically, ranging from more to less important or frequent sense.

Most dictionaries state which criteria they use. Unfortunately, the Microsoft Computer Dictionary does not. Margolin made a substantial effort to find out which method had been used but Microsoft refused to cooperate.
Margolin contacted Sandra Haynes who is listed as the Project Editor in the Microsoft Computer Dictionary (Fifth Edition). She said she didn't know which

method was used because she was just the editor; all of the real work was done by the contributors.

Margolin asked if there had been Writer's Guidelines for the contributors. She said she didn't remember but would look for them. She never got back to him.

Margolin contacted Charles Petzold, one of the listed contributors. Mr. Petzold is a noted Microsoft author. Among other things, he wrote Programming Windows. In an email [1] he wrote:

I don't remember any guidelines about the ordering of multiple definitions, but I would be shocked to the point of sudden death if I learned that the Microsoft Computer Dictionary was based on historical principles like the OED.

Mr. Petzold asked why Margolin was so interested in the matter. Margolin told him, and never heard from him again.

After being told that Bill Gates (or his staff) always answers mail, Margolin sent him a fax [2] . He received no response.

Then Margolin became aware of Phillips v. AWH and there did not appear to be any reason for pursuing the matter further or discussing it in Margolin’s Blue Brief. As the Court noted:

Moreover, different dictionaries may contain somewhat different sets of definitions for the same words. A claim should not rise or fall based upon the preferences of a particular dictionary editor, or the court’s independent decision, uninformed by the specification, to rely on one dictionary rather than another. Finally, the authors of dictionaries or treatises may simplify

[1] See Addendum, page 15
[2] See Addendum, page 17

ideas to communicate them most effectively to the public and may thus choose a meaning that is not pertinent to the understanding of particular claim language. See generally Ellen P. Aprill, The Law of the Word: Dictionary Shopping in the Supreme Court, 30 Ariz. St. L.J. 275, 293-314 (1998). The resulting definitions therefore do not necessarily reflect the inventor’s goal of distinctly setting forth his invention as a person of ordinary skill in that particular art would understand it.

Margolin assumed the Court would follow Markman  [3].   Look at the terms in the claims themselves and if their meaning is clear and the Inventor has not acted as his own lexicographer to define them differently, then stop. If the terms are not clear in the claims themselves, look to the specification. If the terms in the specification are not clear, look to the prosecution history. If that doesn’t help, then it is ok to look in a dictionary.

In the present case, Margolin believes the terms are used in his claims in a manner that is clear to a person having ordinary skill in the art. Moreover, the terms are clear in the manner they are used in the specification. Even more, the term server is discussed at length in the prosecution history, not only the prosecution history of Margolin but also in the prosecution history of Ellis. Both Margolin and Ellis agreed that what makes a server different from a personal computer is the specialized software that makes it a server. [4]

____________

[3]  Markman v. Westview Instruments, inc. 517 U.S. 370 (1996)
[4]  Appendix A96

The requirement is to determine the meaning of a term as it would be understood by a person having ordinary skill in the art at the time the invention was made. It is not acceptable to use any definition in any reference solely because it furthers the Examiner’s agenda to deny the Applicant a patent.

Margolin was surprised when the Court accepted the Examiner’s use of a dictionary, especially the Microsoft Computer Dictionary, without any justification.

The Court erred by disregarding its own ruling in Phillips.

In view of the Court’s errors of fact and of law, Margolin respectfully requests that a Panel of Judges rehear the case.
 

______________

Jed Margolin
June 26, 2007
 
 

      Jed Margolin, of Reno, Nevada, pro se.

      Stephen Walsh, Acting Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, Virginia. On the brief were John M. Whealan, Solicitor, Joseph G. Piccolo and Nathan K. Kelley, Associate Solicitors.
 

Appealed from: United States Patent and Trademark Office, Board of Patent Appeals and Interferences

Before NEWMAN, SCHALL, and DYK, Circuit Judges.

NEWMAN, Circuit Judge.
 

        Mr. Jed Margolin appeals the decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences, which affirmed the Examiner’s rejection of claims 1-5, all of the claims of United States Patent Application No. 09/947,801 (“the ‘801 application”) as being anticipated by subject matter set forth in U.S. Patent No. 6,167,428
 
 

to Ellis.[1]  The finding of anticipation is supported by substantial evidence, and the rejection based thereon is affirmed.
 
 

        The ‘801 application was filed on September 6, 2001, with priority to U.S. Provisional Application No. 60/249,830 filed on November 17, 2000. The claims are directed to an Internet-based, distributed computing system and method permitting an exchange of a home network server’s resources for something of value. Claim 1 is representative (with emphases added to the disputed claim terms):

    1. A distributed computing system comprising:
            (a) a home network server in a subscriber’s home;
            (b) one or more home network client devices;
            (c) an Internet connection;
    whereby the subscriber receives something of value in return for access to
    the resources of said home network server that would otherwise be unused.

         Whether a claim is anticipated and what a reference teaches are questions of fact, whose findings by an expert administrative agency receive deferential review on the “substantial evidence” standard of the Administrative Procedure Act. 5 U.S.C. §706(2)(E). See Dickinson v. Zurko, 527 U.S. 150, 155 (1999); In re Hyatt, 211 F.3d 1367, 1371-72 (Fed. Cir. 2000). This court must uphold the Board’s factual findings of ultimate fact and evidentiary fact, if the findings are supported by substantial evidence in the record before the Board.

        A claim is anticipated under 35 U.S.C. §102 when the same invention, including all of the claimed limitations, appear in a single reference. The determination generally involves
 

[1]  In re Margolin, No. 2006-2005 (Bd. Pat. App. & Int. Aug. 24, 2006).

2007-1056            2

a two-step analysis, wherein the Board first construes the claims for purposes of examination, applying to the proposed claims the broadest reasonable meaning of the terms thereof as they would be understood by a person of ordinary skill in the field of the invention. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The purpose of this examination practice is to facilitate precision in claiming by imposing rigor during prosecution, because claims are readily modified before patent issuance. Id.

        The examiner then compares the construed claims to the asserted anticipating reference, to determine whether “each and every limitation is found either expressly or inherently in [that] single prior art reference.” In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004) (quoting CeleritasTechs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,1360 (Fed. Cir. 1998)). During this procedure the applicant may amend the claims in light of cited references, or for any other reason.

        The examiner found that the claims are anticipated by the Ellis patent, entitled “Personal Computer Microprocessor Firewalls for Internet Distributed Processing.” Ellis describes “computer networks having computers like personal computers or network servers” utilizing distributed processing, thereby enabling a computer user to exchange access to the Internet for use of the computer’s processing power when the computer is idle. Ellis patent, col. 11:55-61. Mr. Margolin argues that Ellis does not anticipate the claims because Ellis does not describe a “home network server” or a “subscriber” within the meaning of the claims presented in the ‘801 application.

        The Board observed that the ‘801 application did not provide a specific definition for the terms “server” and “home network server,” but concluded that the Examiner’s definition
 

2007-1056             3

of “server” as “a computer or program, on the Internet or another network, that responds to  commands from a client” was consistent with the ‘801 specification as well as the use of the term by ordinary skilled artisans. The Board also found that the “home network” term limited only the location of the server and not its function.

        In light of the evidence before the Board, the Board’s claim interpretation is reasonable. See Morris, 127 F.3d at 1055. Specifically, the ‘801 specification broadly described the “home network server” of the claimed invention, stating:

     A Home Network Server is used in a home to network various clients such as PCs, sensors, actuators and other devices. *** Home Network Server 101 is of conventional design and includes a CPU, memory, mass storage (typically a hard disk drive for operations and a CD-ROM or DVD-ROM Drive for software installation), video display capabilities, and a keyboard.

‘801 application, [Paragraphs] 14, 23. This description is broad enough to encompass any apparatus,  including conventional personal computers, having a CPU, memory, monitor, and keyboard that can perform a networking function for various other subservient devices. The Board’s definition is further supported by evidence in the Examiner’s Answer before the Board, wherein the Examiner cited the Microsoft Computer Dictionary 430 (3d ed. 1997) for the definition of “network” relied on by the Board.

         Applying these definitions, the Board found that the applicant’s “home network server” is met by the personal computers shown by Ellis. The Board found that the Ellis patent broadly described PCs as including “network computers,” and that network computers could include both conventional servers and client computers, that may reside at either home or business network systems. We agree that substantial evidence supports this finding. Ellis defined personal computers “as any computer, digital or analog or neural,
 

2007-1056             4

particularly including microprocessor-based personal computers having one or more  microprocessors . . . in their general current form (hardware and/or software and/or firmware and/or any other component) . . . such as workstations, network computers. [and] other household  electronic devices.” Ellis patent, col. 8:61 to col. 9:8. Moreover, Ellis specifically describes a personal computer that is responsive to a user and a network provider, and having the types of components described in the ‘801 application and the ability to control other networked devices. Id. at col. 7:38-47; col. 16:33 to col. 17:22. Ellis teaches that the personal computer may reside either at home or in a business network environment. Id. at col. 17:22-40. These teachings constitute substantial evidence to support the Board’s conclusion that Ellis discloses the same “home networked server” as do the ‘801 claims.

        With respect to the term “subscriber,” Mr. Margolin argues that the Board erred in finding that a device, rather than a person, could meet this term. The Board, however, did not make such a finding. The Board found that the Ellis patent describes a PC user who is a person (not a device) who subscribes to a service that provides Internet access. In the ‘801 application, the subscriber is referred to as the owner of the Home Network. ‘801 application, [Paragraph] 16.

        Similarly, Ellis discloses a PC user, who may be the PC owner or easer. Ellis patent, col. 9:16-18. Moreover, the Ellis patent states that the PC user is a “subscriber” (i.e. one who subscribes to a service), stating that the PC user may enter a business arrangement in which the PC user receives “connection to the Internet... in exchange for… the PC user [making] their PC, when idle, available to the network for shared
 

2007-1056             5

processing.” Id. at col. 11:55-61. Thus, the Board’s finding that the PC user as described in the Ellis patent meets the term limitation “subscriber” in the ‘801 application claims is supported by substantial evidence, and is affirmed.

        The other terms in the ‘801 application claims were conceded to be met by Ellis. We have reviewed all of the arguments presented by Mr. Margolin, but do not discern reversible error in the Board’s rejection of the claims on the ground of anticipation.
 

2007-1056             6

From:     "Charles Petzold" <cp@charlespetzold.com>
To:          "Jed Margolin" <xx@yyyy.zzz>
Sent:      Friday, October 27, 2006 9:41 AM
Subject: Re: Writer's Guidelines for Microsoft Computer Dictionary

I really shouldn't be listed as a contributer to the 5th edition of the
Microsoft Computer Dictionary. I know I wrote some definitions for an
earlier edition (earlier than the 4th, and perhaps the 1991 edition) but I
am quite certain that nothing I wrote has survived.

I don't remember any guidelines about the ordering of multiple definitions,
but I would be shocked to the point of sudden death if I learned that the
Microsoft Computer Dictionary was based on historical principles like the
OED.

Is there a particular definition you're puzzled about?

Charles
 

----- Original Message -----
From: "Jed Margolin" <xx@yyyy.zzz>
To: <cp@charlespetzold.com>
Sent: Friday, October 27, 2006 11:52 AM
Subject: Writer's Guidelines for Microsoft Computer Dictionary
 

> Dear Mr. Petzold.
>
> I have a question about the Microsoft Computer Dictionary (Fifth Edition)
> that Sandra Haynes (the Project Editor) doesn't know the answer to. Since
> you are listed as one of the Contributors I thought you might know.
>
> There are a number of words with more than one definition.
>
> What criteria did you use to decide what order to use in listing them?
>
> There are two conventional approaches to ordering the definitions:
> chronologically (or historically), ranging from earliest to most recent
> sense; and logically, ranging from more to less important or frequent
> sense.
>
> Most dictionaries state which criteria they use. Unfortunately, the
> Microsoft Computer Dictionary does not.
>
> Which one did Microsoft Press use in the Microsoft Computer Dictionary?

>
> Or, did you have different criteria?
>
> If there were Writer's Guidelines for Contributors, it might have the
> answer.
>
>
> Regards,
>
>
> Jed Margolin
>

Jed Margolin                                         1981 Empire Rd.                     Reno, NV 89521-7430
Phone: 775-847-7845                           Email: xx@yyyy.zzz                 November 2, 2006
 

Mr. Bill Gates
Microsoft Corporation
One Microsoft Way
Redmond, WA 98052
Fax: 425-708-0600
 

Dear Mr. Gates,

I have a question about the Microsoft Computer Dictionary (Fifth Edition) that no one at
Microsoft Press has been able to answer. The question might sound trivial, but it is not. A
Patent Examiner has denied me a patent based, in part, on the Microsoft Computer
Dictionary.

There are a number of words with more than one definition. What criteria were used to
decide what order to use in listing them?

There are two conventional approaches to ordering the definitions:

• Chronologically (or historically), ranging from earliest to most recent sense; and

• Logically, ranging from more to less important or frequent sense.

Which one did Microsoft Press use in the Microsoft Computer Dictionary?

Or, did you have different criteria?

If there were Writer’s Guidelines for Contributors, it might have the answer.

It would be really nice to know what method was used. Some day a Patent Examiner might
deny Microsoft a patent based on the Microsoft Computer Dictionary.
 

Sincerely yours,

____________
 

Jed Margolin

The undersigned hereby certifies that a true and correct copy of the above foregoing and Attachments has been served on the Office of the Solicitor for the United States Patent and Trademark Office by United States Postal Service Express Mail Service to the address shown below:

Dated:  June 26, 2007

_________________

Jed Margolin

Office of the Solicitor
Post Office Box 15667
Arlington, VA  22215

This request for a panel rehearing complies with the page limitation of Rule 40 and Rule 32. It is proportionally spaced, has a serif typeface of 14 points or more, and contains fewer than 15 pages.

Dated: Reno, NV
           June 26, 2007
 

________________

Jed Margolin
Applicant, Appellant, pro se
1981 Empire Rd.
Reno, NV  89521-7430
(775) 847-7845
xxx@yyyy.zzz