NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: C. DOUGLASS THOMAS,

Appellant

______________________ 

2017-1100

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 12/878,199.

______________________ 

Decided: November 17, 2017

______________________ 

C. DOUGLASS THOMAS, TI Law Group, PC, San Jose, 

CA, for appellant.

 NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Joseph Matal. Also represented by JEREMIAH 

HELM, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED. 

______________________ 

Before MOORE, CHEN, and STOLL, Circuit Judges.

STOLL, Circuit Judge. 

C. Douglass Thomas appeals the final decision of the 

Patent Trial and Appeal Board of the U.S. Patent and 

Trademark Office, affirming the examiner’s rejection of 

Mr. Thomas’s patent application. Mr. Thomas argues 
2 IN RE: THOMAS

that the Board erred by failing to apply a de novo standard of review to the examiner’s rejection for anticipation 

and by finding anticipation without substantial evidence 

to support its finding. Mr. Thomas also challenges the 

Board’s construction of the claim term “word processing 

program.” Because the Board did not err, we affirm. 

BACKGROUND

Mr. Thomas filed U.S. Patent Application No. 

12/878,199, titled “Method and System for Formation of 

Electronic Documents.” J.A. 20–65. Mr. Thomas’s application discloses a “method and system for creation of 

customized documents over a network as well as for 

negotiation of contents for documents over a network (e.g., 

Internet).” J.A. 51, Abstract. 

The specification discloses a document and delivery 

system 100 illustrated in Figure 1A (reproduced below). 

J.A. 52, Fig. 1A. As shown, the user’s computer (104) 

connects to the Internet (106) through an Internet Service 

Provider (108). Document server (102) also couples to the 

Internet. In operation, the user at computer 104 requests 

the creation and delivery of a specified document from the 

document server. The document server, which can also 

operate as a web server, questions or interrogates the 

user to get the information required to produce the customized document. The document server may host and 

use an application program such as a word processing 
IN RE: THOMAS 3

application to create the customized document. The word 

processing application can operate on the document 

server. After creating the document, the document server 

forwards the customized document through the Internet 

to the user. 

Claims 15–22 are the only pending claims in the application and stand rejected under 35 U.S.C. § 102(e)1 as 

anticipated. Independent claim 15 is representative, 

reciting a four-step method with two “wherein” clauses: 

15. A method for enhancing functionality of a 

server computing device coupled to a network, 

said method comprising:

[a] operating the server computing device 

to receive a request for a file from a requestor; 

[b] linking an application program to the 

server computing device;

[c] operating the application program in 

accordance with a command set to produce 

a processed file; and

[d] returning the processed file to the requestor,

wherein the application program is a word 

processing program, and wherein the 

command set is a macro or a program executable by the word processing program. 

 

1 Congress amended § 102 when it passed the 

Leahy-Smith America Invents Act (“AIA”). Pub. L. No. 

112–29, § 3(b)(1), 125 Stat. 284, 285–87 (2011). However, 

because the application that led to this application was 

filed before March 16, 2013, the pre-AIA § 102 applies. 

Id. § 3(n)(1), 125 Stat. at 293.
4 IN RE: THOMAS

J.A. 126 (emphasis added to highlight the disputed claim 

elements). Claims 19 and 20 both depend from claim 15 

and recite the additional limitation “wherein the request 

includes the command set or information used to produce 

the command set.” J.A. 91.

During prosecution, the examiner rejected claims 15–

22 as anticipated by U.S. Patent No. 6,067,531 (“Hoyt”). 

Hoyt discloses server-side automatic generation of a legal 

contract among multiple clients within a business organization, coupled by a network, accessing a contract database server. Hoyt discloses displaying a pop-up box (1600

in Figure 16, reproduced below) in a graphical user interface of a client applet when a user begins to create a new 

contract document. 

Hoyt Fig. 16. The pop-up box prompts the user to input 

contract terms (for example, a customer name), select a 

contract type and subtype using drop-down menus, and 

indicate whether the current contract is an amendment to 

an existing contract by selecting radio buttons. 

The Board affirmed the examiner’s rejection of claims 

15–22 as anticipated by Hoyt. Mr. Thomas filed a request 

for rehearing, which the Board denied. 

Mr. Thomas timely appealed to this court. We have 

jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A). 
IN RE: THOMAS 5

DISCUSSION 

“During examination, claims . . . are to be given their 

broadest reasonable interpretation consistent with the 

specification. . . .” In re Montgomery, 677 F.3d 1375, 1379 

(Fed. Cir. 2012) (quotation omitted); see also Cuozzo Speed 

Techs., LLC v. Lee, 136 S. Ct. 2131, 2146 (2016). We 

review the Board’s ultimate claim construction de novo. 

See Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 

840–41 (2015); In re Aoyama, 656 F.3d 1293, 1296 

(Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1324 

(Fed. Cir. 2004)). 

Anticipation is a question of fact. In re Gleave, 

560 F.3d 1331, 1334–35 (Fed. Cir. 2009). What the prior 

art discloses is also a question of fact. Para-Ordnance 

Mfg. v. SGS Importers Int’l, 73 F.3d 1085, 1088 (Fed. Cir. 

1995). We review the Board’s fact findings for substantial 

evidence. Gleave, 560 F.3d at 1335. 

I. 

On appeal, Mr. Thomas argues that the Board erred

by improperly burdening him with specific rebuttal requirements and by failing to review the examiner’s rejections de novo. Relying on Jung, Mr. Thomas argues that 

an applicant need only “identify the alleged error in the 

examiner’s rejections,” after which the Board must review 

the examiner’s decision de novo. See In re Jung, 637 F.3d 

1356, 1365–66 (Fed. Cir. 2011). We are not persuaded by 

Mr. Thomas’s arguments.

We agree with the Board that the examiner established a prima facie case of anticipation when he compared each of Mr. Thomas’s claim limitations to Hoyt, 

identifying the specific teachings in Hoyt that correspond 

to each claim limitation. J.A. 96–99. Having done so, the 

examiner put Mr. Thomas on notice of the full basis for 

his rejection, and the burden properly shifted to 

Mr. Thomas to rebut the prima facie case of anticipation. 
6 IN RE: THOMAS

See In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014); 

see also Jung, 637 F.3d at 1364; 35 U.S.C. § 132. This 

required Mr. Thomas to provide specific reasons why 

Hoyt’s teachings did not correspond to each claim element, not to simply list claim elements. Id. The act of 

filing a Board appeal alone does not entitle a patent 

applicant to de novo review of all aspects of the rejection. 

Just like the applicant in Jung, Mr. Thomas did not 

proffer a detailed explanation of the difference between 

the claims and the prior art before the examiner. See 

Jung, 637 F.3d at 1365. Indeed, Mr. Thomas’s appeal 

brief before the Board was more formulaic and conclusory

than the one in Jung. For each claim limitation, 

Mr. Thomas stated the limitation, restated the examiner’s 

Hoyt citation, and concluded that Hoyt failed to teach or 

suggest the claim limitation, without any basis for that 

conclusion. When given a second opportunity to provide 

reasoning in his request for rehearing, Mr. Thomas merely block quoted the same conclusory language from his 

original brief. The facts before us are even more persuasive than those in Jung. Therefore, we agree with the 

Board that the examiner made out a prima facie case of 

anticipation and the burden properly shifted to 

Mr. Thomas to rebut it.

II. 

Mr. Thomas also disputes the Board’s finding that 

Hoyt teaches each and every limitation of independent 

claim 15 and dependent claims 16–22. Specifically, 

Mr. Thomas argues that Hoyt’s pop-up box does not 

satisfy the wherein clauses in claim 15 because it (1) is 

not an “application program,” (2) is not a “word processing 

program,” and (3) does not invoke a macro. We address 

each argument in turn. 

First, Mr. Thomas argues that Hoyt’s pop-up box is 

not an “application program.” But Hoyt discloses that its 

pop-up box is from an applet loaded on to the client from 
IN RE: THOMAS 7

the server. Hoyt col. 5 ll. 21–39. The applet itself is an 

application program, specifically described in the exemplary embodiment as a “contract negotiator JAVA applet.” 

Id. at col. 5 ll. 21–39. We are satisfied that substantial 

evidence supports the Board’s fact findings on this issue.

Second, Mr. Thomas argues that Hoyt’s pop-up box is 

not a “word processing program.” The Board and examiner found that the applet running the pop-up box qualifies 

as a “word processing program” because the pop-up box 

“is configured to allow words to be entered by the user 

. . .[,] which is the same as a word processing program.” 

J.A. 14 (quoting Final Office action at 4 (citing Hoyt, 

col. 34 ll. 1–23, Figs. 2, 3, 16)). 

On appeal, Mr. Thomas urges this court to interpret 

“word processing program” to mean “a computer application program operated on a computing device to create, 

edit and store documents.” To our knowledge based on 

the record before us, Mr. Thomas did not present his 

“create, edit and store” construction of word processing 

program to the Board and therefore waived his arguments 

based on that proposed construction. See In re Baxter 

Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012). Accordingly, we conclude that substantial evidence supports the 

Board’s finding that Hoyt’s pop-up box/GUI applet is a 

“word processing program” under the Board’s broad 

construction of that term. 

Third, Mr. Thomas argues that Hoyt does not invoke 

a macro. We disagree. Claim 15 requires a “command 

set” that is a “macro or a program executable by the word 

processing program.” Hoyt’s pop-up box has radio buttons 

and a cancel button. If a user selects the cancel button, 

the system aborts the new contract. If a user selects the 

radio button indicating that the new contract is an 

amendment to an old contract, the system dedicates data 

storage to describe the history of the contract. The user’s 

selection triggers a set of instructions to perform a partic-
8 IN RE: THOMAS

ular task, which the Board reasonably found to be the 

same thing as being a macro. We agree and are satisfied 

that substantial evidence supports the Board’s findings on 

this issue.

Accordingly, we affirm the Board’s affirmance of the 

rejection of claim 15. Because Mr. Thomas does not 

present separate arguments in support of the patentability of claims 16–18 and 21–22, we affirm the Board’s 

affirmance of the rejection of these claims as well. 

Finally, we turn to Mr. Thomas’s additional arguments regarding dependent claims 19 and 20. 

Mr. Thomas argues that Hoyt does not disclose “wherein 

the request includes the command set or information used 

to produce the command set” as required by claims 19 and 

20. J.A. 127. The examiner and Board found that, in 

Hoyt, a user request prompts the display of a pop-up box, 

and that the rules of the pop-up box (including fields and 

radio buttons) operate as a command set. See Hoyt col. 34 

ll. 1–23, Figs. 2, 3, 16. Indeed, in Hoyt, the contract 

subtypes are defined by an administrator and selected 

from the pop-up box by the end user. Id. at col. 34 ll. 1–

23. Once the end user selects the “OK” button in the popup box, the new contract of the selected subtype is initiated and the end user can enter terms and comments into 

the new contract. Id. We are satisfied from this disclosure in Hoyt that substantial evidence supports the 

Board’s findings on this issue, and we therefore affirm the 

Board’s affirmance of the rejection of claims 19 and 20. 

CONCLUSION

We have carefully considered Mr. Thomas’s remaining 

arguments and find them unpersuasive. For the reasons 

above, we affirm the Board’s decision. 
IN RE: THOMAS 9

AFFIRMED

COSTS

None.