NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE ROBERT YEAGER

______________________ 

2012-1667

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in serial No. 

12/218,144. 

______________________ 

Decided: June 7, 2013

______________________ 

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. 

______________________ 

Before DYK, CLEVENGER, and MOORE, Circuit Judges.

PER CURIAM. 

Robert D. Yeager appeals from a decision of the Patent Trial and Appeal Board (“Board”). The Board affirmed 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 application 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 respect to said particular pending [U.S.] patent application, said selection step 

comprising: 

(i) constructing a software database of items comprising [U.S.] patents and published patent 

applications known to said applicant; 

(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 System;

(iii) noting the classes and subclasses, when subclasses are 
 IN RE: ROBERT YEAGER 3

available, assigned to said pending 

patent application; and

(iv) conducting by a computer processor an electronic search of said 

searchable indicia in said database 

for items bearing indicia corresponding to said classes and subclasses assigned to said pending 

patent application; and

(b) disclosing all U.S. patents and published U.S. patent applications identified 

by the electronic search as having said indicia corresponding to said classes and 

subclasses assigned to said pending application 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. Independent claim 8 is similar to claim 1, but requires that the 

search step to be performed “without conducting a substantive 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 software 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 independent 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 independent 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 independent 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 argument 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 representative of either,” Lee nonetheless anticipated because “an 

inventor, assignee, or legal representative of either merely 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 jurisdiction 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). Factual determinations are reviewed for substantial evidence. 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 construing 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 applications.” 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,” “disclosing,” 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 classification 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 supported by substantial evidence. 

We have considered Yeager’s remaining arguments 

and find them to be without merit.

AFFIRMED