Digest of In re Thomas C. Chuang, No. 2014-1257 (Fed. Cir. Feb. 10, 2015) (non-precedential). On appeal from PTAB in Serial No. 12/488,562. Before Reyna, Mayer, and Chen (per curiam).

Procedural Posture: Applicant appealed the Board’s decision affirming the rejection of all pending claims as obvious. CAFC affirmed.

  • Claim Construction: The Board adopted the examiner’s analysis that the claimed “rental price” encompassed the prior art’s disclosure of a monthly rental scheme under the broadest reasonable interpretation. The CAFC held that, by adopting the examiner’s analysis, the Board adequately addressed the construction of the term to permit judicial review. The CAFC then held that the examiner implicitly construed the disputed term to mean “an associated rental fee for renting media online” and concluded that this construction was reasonable. In contrast, the CAFC found the Appellant’s proposed construction was inconsistent with portions of his specification.
  • Obviousness: The CAFC rejected Appellant’s argument that the prior art’s disclosure of a monthly subscription teaches away from the use of expiration dates. The CAFC held that there was substantial evidence to support the Board’s finding because the fact that two references teach different payment models does not mean one of ordinary skill would be discouraged from combining features of these references. Since the references taught old and well-known concepts for renting media, the CAFC found it would have been obvious to take a well-established feature of one reference and incorporate this feature into the other, and noted that the Appellant failed to cite any passage in the prior art that criticized or otherwise discouraged the use of expiration dates in a rental system using a subscription payment model.