Tuesday, May 24, 2016

PTAB: Nuijten Doesn't Apply to Method Claims

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Takeaway: The 35 U.S.C. § 101 prohibition against claims covering transitory signals per se, as articulated by the Federal Circuit in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), does not apply to method claims, since methods are processes and are therefore among the expressly permitted categories of statutory subject matter. Ex parte Kosuru, No. 2014-005593 (P.T.A.B. May 19, 2016).

Ex parte Kosuru
Appeal 2014-005593; Appl. No. 13/406,478; Tech. Center 2100
Decided: May 19, 2016

In the application underlying this appeal decision, all of the independent claims were method claims, and each recited an "input file being stored on a computer readable storage medium." Initially, the word "storage" was absent from the claims, and the examiner rejected all of the claims as directed to non-statutory subject matter under § 101, citing to In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating signal . . . is not a 'process, machine, manufacture, or composition of matter.' Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.") The claims were amended to specify that the "medium" was a "storage medium," as above, but the examiner maintained the rejection on final.

The Federal Circuit held in Nuijten that a propagating signal itself, such as a radio broadcast, an electrical signal through a wire, or a light pulse through a fiber-optic cable, is not patentable subject matter. According to then-director David Kappos's January 26, 2010 memo to the examining corps, entitled "Subject Matter Eligibility of Computer Readable Media," the PTO interpreted the Federal Circuit's decision in Nuijten to mean that "[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." The memo references the Nuijten opinion as well as the August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."

In their briefs in Kosuru, the appellants conceded that their claims were "drawn to" a computer-readable storage medium, but emphasized that the use of the word "storage" meant that the claims could not read on transitory signals and thus were subject-matter eligible. In support, the appellants referred to Ex parte Hu, No. 2010-000151 (B.P.A.I. Feb. 9, 2012), which held that "[w]hile a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data" (emphasis added).

The examiner's only response was an allegation that the specification did not refer to "storage" media—a weak response given that the claims clearly recited "storage" and no rejection was made on § 112 grounds for lack of written description or enablement. The appellants' reply brief noted several specification paragraphs that mentioned algorithms "stored on" computer-readable media or on "a disk," but even absent this support, PTO policy evidently tolerates amendment language limiting claims to non-transitory embodiments even when such language is not explicitly supported, so long as non-transitory interpretations are not ruled out by the specification. See the above-mentioned 2010 memo ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments . . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent . . .").

The PTAB resolved the appeal of the § 101 rejection on much broader grounds than the examiner and appellants had argued: "Unlike the claims at issue in In re Nuijten, each of the pending claims here recites a method—a series of acts or steps—and thus falls under the statutory category of 'process.'" Indeed, the examiner (and the Board) had only to read the opinion cited in support of the rejection to realize that, in Nuijten, disputed independent claim 14 was directed to "[a] signal," while claims 1-10, directed to "[a] method," and 11-13, "[a]n arrangement for embedding supplemental data in a signal," were not appealed because the PTO found them statutory without any fuss.

My two cents: Nuijten did not expressly hold that process claims cannot be rejected as "covering" transitory signals, because that issue was not before the Nuijten court. This case may provide useful support for countering Nuijten-type rejections of method claims.

Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based. Transitory signal subject-matter analysis is a narrow area of subject-matter eligibility analysis. Like the words "directed to" used in broader subject-matter eligibility jurisprudence, including abstract-idea jurisprudence (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014); In re Benson, 441 F.2d 682, 684 (C.C.P.A. 1971)), the word "covers" used in the Kappos memo ("[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected . . .") can be interpreted overly broadly. When "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes. The examiner and appellants got lost on a wild goose chase over whether the specification taught "storage" media, whereas the real question was the propriety of the examiner's initial decision as to whether the claims could be interpreted as attempting to capture, among whatever else, transitory signals per se.

Another potentially winning argument in this case might have been to argue that the claimed "input file" cannot reasonably be interpreted as encompassing transitory signals, since, even under broad interpretations, "file" has a meaning of a record of greater-than-transitory permanence such that it can be stored and retrieved at arbitrary times. After this PTAB decision, such an argument is superfluous in view of the fact that an Applicant can simply point out that the claims are couched as methods.

Tuesday, May 17, 2016

Enfish Mayo Step One Inquiry Fails to Save Claims Directed to Assigning Classification Data to Digital Images From Being Deemed an Abstract Idea

Takeaway: The Federal Circuit utilized the updated Mayo analysis set forth in the recent Enfish v. Microsoft decision to affirm a lower court’s ruling that the claims at issue were directed to patent-ineligible subject matter. In part, the Federal Circuit found the claimed subject matter was directed to the abstract idea of assigning “classification data” to digital images and that the claims merely recited generic components that did not provide an “inventive concept” that would transform the otherwise patent-ineligible abstract idea into a patent-eligible application of the concept. (TLI Communications LLC, v. AV Automotive, L.L.C., 2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421, May 17, 2016)

TLI Communications LLC, v. AV Automotive, L.L.C.
2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421
Decided: May 17, 2016

In a recent precedential decision, the Federal Circuit invalidated claims reciting an invention that assigns “classification data,” such as a date or a timestamp, to digital images as being directed to an abstract idea under 35 U.S.C. § 101 even in light of the updated Mayo step one inquiry as set forth in Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016). More specifically, the decision in Enfish clarified that the relevant inquiry at Mayo step one was “to ask whether the claims are directed to an improvement to computer functionality versus being directed an abstract idea. See Enfish slip op. at *11.

Claim 17, which is representative of the subject matter, recited:

A method for recording and administering digital images, comprising the steps of:

recording images using a digital pick up unit in a telephone unit,

storing the images recorded by the digital pick up unit in a digital form as digital images,

transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

receiving the data by the server,

extracting classification information which characterizes the digital images from the received data, and

storing the digital images in the server, said step of storing taking into consideration the classification information.

At Mayo step one (i.e., determining whether the claims at issue are directed to a patent-ineligible concept), the Federal Circuit found that the subject matter of claim 17 was drawn to the concept of classifying an image and storing the image based on its classification. The Federal Circuit noted that the claim required “concrete, tangible components such as 'a telephone unit' and a 'server.'“ However, the Federal Circuit went on to state that the “specification makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner” and that the specification's emphasis that the “present invention 'relates to a method for recording, communicating and administering [a] digital image' underscores that claim 17 is directed to an abstract concept.”

As mentioned above, the Federal Circuit utilized the recent clarification to Mayo step one set forth in Enfish to examine whether the claimed subject matter was directed to an improvement in computer functionality or whether the claimed subject matter was directed to an abstract idea. In supporting its conclusion that the claims were directed to an abstract idea, the Federal Circuit found that the claims were not directed to a specific improvement to computer functionality. Instead, the Federal Circuit found that the claims were directed to usage of conventional or generic technology in a well-known environment.

Of note, the Federal Circuit focused its discussion on the appellant's specification. For instance, the Federal Circuit states that the “specification does not describe a new telephone, a new server, or a new physical combination of the two” and that the “specification fails to provide any technical details for the tangible components, but instead predominantly describes the system and methods in purely functional terms.” The decision points to the description of the “telephone unit” in the specification as having “the standard features of a telephone unit” and that “cellular telephones may be utilized for image transmission.” Additionally, the decision points to the description of the server as being described “simply in terms of performing generic functions such as storing, receiving, and extracting data.”

In concluding its Mayo step one analysis, the Federal Circuit likened the claims at issue to the claims at issue in Content Extraction v. Wells Fargo Bank, which were directed to “collecting data,” “recognizing certain data within the collected data set,” and “storing the recognized data in memory.”

In its Mayo step two analysis (i.e., whether the claims at issue include an “inventive concept”), the Federal Circuit found that the claims failed to recite any “elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea.” Similar to its analysis set forth above with respect to Mayo step one, the Federal Circuit found that the claims at issue merely recited generic computer components “insufficient to add an inventive concept to an otherwise abstract idea” and that ”the recited physical components behave exactly as expected according to their ordinary use.”

As such, the Federal Circuit affirmed the lower court's decision that the claims at issue were directed to an abstract idea and, thus, invalid under 35 U.S.C. § 101.

My two cents: Again, this decision provides a lesson that the any specification should include as much technical detail as possible. For example, this Federal Circuit decision focused on the inadequacies of the specification (e.g., the specification described the system in purely functional terms, only describing the components in terms of performing generic functionality, etc.). Additionally, the Enfish decision notes that the specification in that case explained that the prior art database structures were inferior to the claimed invention. Thus, Applicants may consider including explanations of  why Applicant’s technology is superior to the prior art in the specification. 

Tuesday, May 3, 2016

PTAB Deems Method for Providing Funds to a Player at a Gaming Facility as Patent-Ineligible Subject Matter

Takeaway: A PTAB panel affirmed an Examiner's rejection of the claimed subject matter as being directed to patent-inelgible subject matter.  In part, the panel found the claimed subject matter was directed to the abstract idea of transferring funds between various institutions and that the claimed subject matter did not include additional elements that would provide an "inventive concept" transforming an otherwise patent-ineligible abstract idea into a patent-eligible application of the concept.  (Ex parte Nicholas, No. 2016-003046, PTAB Apr. 22, 2016)


Ex parte Nicholas
Appeal 2016-003046; Appl. No. 14/186,522; Technology Center 3700
Decided: April 22, 2016
In a recent decision, the PTAB upheld an Examiner's rejection that a method for providing funds to a player (using a portable electronic device) for providing funds to a player at a gaming facility as directed to patent-ineligble subject matter.  Claim 18, which was illustrative of the subject matter claimed, recited:
A method of providing funds to a player at a gaming facility comprising:

a portable electronic device sends a wireless communication to a funding establishment that supports a financial card;

the funding establishment supporting the financial card by storing an authorized level of credit available to the player from the financial card in memory;

the wireless communication containing data that identifies a) a specific financial card and a specific electronically-stored account established at the gaming facility on a server and b) an amount of funds to be applied against the financial card and transferred to the specific financial account;

the specific financial account receiving the transferred amount of funds and the gaming facility allowing electronic transfer of the transferred amount of funds; and

the specific financial account electronically transferring funds to a fund-providing electronic apparatus in the gaming facility.

In upholding the Examiner's rejection under 35 U.S.C. § 101 as directed to patent-ineligible subject matter, the PTAB analyzed the claim utilizing the Mayo framework set forth in Alice v. CLS Bank.  In its analysis, the PTAB agreed with the Examiner that the claim was directed to the patent-ineligible abstract idea of "the fundamental economic practice of funds transfers" under Mayo Step 1.
The Appellant disagreed with this characterization by stating “there is no substantive evidence according to any authoritative definition that supports the [Examiner’s] assertion [that claim 18 is directed to an abstract idea].” Then, the Appellant asserted that the claimed subject matter did “not represent a fundamental economic [practice], but encompasses a series of steps among multiple defined apparatus in which distinct lines of communication and specific steps are performed . . . in a specific field of actual transfer of value in a specific business field.”
The PTAB dismissed this characterization by finding that the claimed limitations of transferring funds between various institutions and facilities as "well-established and fundamental building block of the modern financial system."
The PTAB then moved its analysis to Mayo Step 2 to determine whether the claimed subject matter recited any additional elements that would transform the subject matter into "a patent-eligible application of the abstract idea."  However, the PTAB utilized the Appellant's specification and prior art to find that the recited elements of "a portable electronic wireless device capable of wireless communication, a gaming facility server, and a financial institution memory are generic electronic components that are well-understood, routine, and conventional in the industry."  For instance, the PTAB cited to the Appellant's specification to find that casino patrons routinely carry portable electronic devices on their persons and that gaming kiosks were “mainstays within casinos."
Appellant argued that the claimed subject matter recited "three or more distinct and separate electronic elements (personal data transmitter, electronic gaming machine, local gaming server with accounting functions, and financial institution server) which 'represent far more than an abstract idea in itself'" and that the claimed subject matter increased the speed and the security of financial transactions "in which value is immediately made available for wagering[, which] has been a long felt business need improved by the present technology.”
The PTAB quickly dismissed with this argument by reiterating that the Appellant's specification described electronic components that were well-understood, routine, and conventional in the industry and that the speed/security of the claimed subject matter were "merely characteristic of electronic funds transfers generally."
Based upon these findings, the Board sustained the Examiner's rejection of the claimed subject matter as being directed to patent-ineligible subject matter.
My two cents:  This decision provides a lesson that the any specification should include as much technical detail as possible such that an Applicant can rebut any assertions that the specification merely describes devices/components that are well-understood, routine, and conventional.  

Thursday, April 21, 2016

Obviousness Reversal Roundup for March 2016

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Countering obviousness rejections can be both the most quotidian and the most challenging task of the patent practitioner or pro se applicant. For those who enjoy feeling hopeless, the decisions of the PTAB are fraught with examples of losing arguments. But not here. Please enjoy this review of six of last month's PTAB decisions reversing obviousness rejections.

Ex parte Sewell
Appeal 2013-008463; Appl. No. 11/847,474; Tech. Center 2600
Decided: March 7, 2016

In this case, the Board found no prima facie case of obviousness where the examiner did not rationally articulate the how or why of the allegedly obvious combination. The appealed final rejection alleged as a "suggestion/motivation" for combining the teachings of cited references, to arrive at the claimed printing system having a GUI, a desire "to eliminate the need for a personal computer as disclosed by [one reference] in the Background [section]." The panel "concur[red] with Appellants’ assertions . . . that the Examiner has not rationally articulated how/why one of ordinary skill in the art at the time of Appellants’ invention would combine the [references'] collective teachings and/or suggestions . . . as claimed . . . ." It is tough to determine what "assertions" the Board was referring to, since a review of the briefs shows that the appellants' arguments were directed more toward showing that the proposed modification would have rendered the prior art device unsatisfactory for its intended purpose. Although this can be a winning argument (as discussed below with respect to Ex parte Hager), it doesn't seem to be what won here. The panel appears to have reinterpreted the appeal arguments and reversed the rejections on a different basis than what had been argued. Although the Board rarely takes it upon itself to fashion un-argued grounds for reversal, it is the Board's prerogative. The application has subsequently been allowed.

This decision serves as a reminder that it is always incumbent upon the examiner to adequately establish not just that different references show different elements of the claims, but also that a person skilled in the art would have had reason to combine or modify the references. A lack of adequate explanation as to what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination should lead the Board to infer that the examiner selected the references with the assistance of hindsight. See In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).

Ex parte Kuijper 
Appeal 2014-000569; Appl. No. 12/515,963; Tech. Center 3700
Decided: March 18, 2016
The Board reversed here because a "broad general statement" of motivation is impermissible use of a per se rule. The final rejection alleged that "it would have been obvious to one of ordinary skill in the art, at the time of the invention, to have provided [one reference] with the corrugation shape, as taught by [another reference], because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results." The rejection further cited to In re Dailey, 357 F.2d 669 (C.C.P.A. 1966) for the proposition that a "change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results." The appeal brief complained that the alleged motivation offered "no rational reason as to why a person of ordinary skill in the art would substitute the single-cutter structure . . . for one of the cutters in the multiple cutter structure of [the base reference]. Not only is this illogical, but also the results of such a substitution, if even possible, would not be predictable to one of ordinary skill in the art." The Board agreed that the examiner's "overly broad, general statement" was insufficient, and quoted In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995): "This method of analysis is founded on legal error because it substitutes supposed per se rules for the particularized inquiry required by section 103. It necessarily produces erroneous results. . . . [E]liminat[ing] the need for fact-specific analysis of claims and prior art may be administratively convenient for PTO examiners and the Board . . . But reliance on per se rules of obviousness is legally incorrect and must cease."

Here, like in Sewell, the Board's reasoning did not exactly mirror the arguments presented by the appellants, inasmuch as the appellants did not cite Ochiai and did not identify the rejection as being grounded only in a "per se rule". Even so, this decision shows that general statements that references would have been combinable is insufficient grounds for an obviousness rejection, where such allegations do not show how or why a person skilled in the art would have been led to select and combine the particular prior art features from different references to arrive at the appealed claims. Such is the burden of the examiner in order to make a prima facie case of obviousness. See In re Vaidyanathan, 381 F. App'x 985, 993 (Fed. Cir. 2010) (nonprecedential).

Ex parte Elder
Appeal 2014-004233; Appl. No. 12/818,592; Tech. Center 1700
Decided: March 23, 2016

Like in Sewell and Kuijper, the Board reversed here because the examiner did not identify a sufficient reason for a person of ordinary skill to have modified the base reference in the proposed manner. Independent claim 7 was finally rejected as obvious over two references. The action set out detailed factual findings and concluded that "[o]ne of ordinary skill in the art . . . would have been motivated to provide the [first reference device] with a [second reference's filter having a particular flow passage configuration] since [the second reference] states . . . that such filters 'have a very high mechanical stability and a relatively high insensitivity to impact, as can happen during transport and assembly,' 'remain operative for a considerably longer period, before cleaning is required,' and also have 'very good rejection properties for the washing off of the sediment in rewashing operations.'" The applicant argued that the cited "reasons" for motivation were with reference not to the particular claimed configuration, "but rather the overall filter". As such, "[t]here is no reason disclosed why the [first reference's] openings would benefit from having" the particular claimed flow passage configuration. The reply brief noted that "it is still unclear why one would bring the opposed first/second openings and the third/fourth openings together" [as in the proposed modification]. The Board agreed, concluding that "the modification proposed in the rejection is the result of hindsight and would not have been obvious at the time of the invention."

The examiner fought this case about as hard as I've seen, going so far as to provide marked-up drawings comparing the filter structures in the cited references. Valid factual findings necessarily underlie every obviousness rejection under Graham, but they are insufficient to make the case where the references do not make clear why the combination would have been motivated and no other supporting reasoning is supplied.

Ex parte Metz 
Appeal 2014-002549; Appl. No. 12/598,492; Tech. Center 3600
Decided: March 24, 2016

The appealed rejection cited to In re Japikse, 181 F.2d 1019 (C.C.P.A. 1950), for the proposition that "rearranging parts of an invention involves only routine skill in the art", in support of a rejection based on a single reference. Independent claims required a "disk having an outer lateral area defining a ring shaped circumferential surface with a knurled section". The reference was alleged to show the claimed disk, but with knurls elsewhere than on the circumferential surface. ("Knurl" is a great word to Google image search.) The rejection alleged that it would have been obvious to provide the knurls on the circumferential surface to "provid[e] a better frictional surface to prevent unwanted sliding". The applicants countered that moving the knurls wouldn't have worked to solve the problem (a problem that didn't actually exist to begin with), would have been contrary to the functioning of the reference device, and besides, "'the mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellants specification, to make the necessary changes in the reference device.' Ex parte Chicago Rawhide Mfg. Co., 455 F. 2d 563 (Bd. Pat. App. & Inter. 1984)," MPEP § 2144.04 (VI)(C). The Board agreed that "it is not apparent why it would be desirable to . . . to increase friction of the cam member" by moving the knurls in the reference device since the reference already addressed unwanted torque rotation, the problem allegedly solved by the proposed knurl relocation. The Board thus found that the modification reasoning lacked rational underpinnings and appeared to be the result of hindsight analysis.

The record shows that multiple telephonic interviews and a pre-appeal conference were expended without persuading the examiners of the fault in the rejection. Applicant tenacity prevailed, likely in part because there were multiple good arguments, factual as well as legal, deployed to counter the rejection. Examiners frequently make use of boilerplate citation to legal precedent to support spurious rejection rationales (MPEP § 2144.04 provides a big list, where both Dailey and Japikse appear), but these citations can be rebutted by showing how the cited cases are not applicable to the facts and circumstances of the case at hand.

Ex parte Tatarka
Appeal 2014-007414; Appl. No. 13/066,118; Tech. Center 1700
Decided: March 28, 2016

This decision in a chemical composition case in part stands for the proposition that a prior art reference that includes a "laundry list" of candidate features does not make any particular one of those features "obvious to try" (within the meaning of KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)) where the cited reference does not present a finite number of identified, predictable solutions. On appeal, the rejection hinged on whether or not the single reference in the obviousness rejection taught or suggested the claimed cycloolefin containing modifiers with a crystalline content of 0-10%. The appellants complained that the examiner's "insistence that it is obvious to pluck norbomene from the disclosure of [the reference] which includes 8 Columns of cyloolefin structures involving thousands of potential monomers is conclusory". The panel concurred, noting that the rejection failed to "provide any specific rationales for why a person of skill in the art would choose a norbornene/ethylene elastomer as the flexible polymer among the many possibilities" offered in the reference. "Because of [the reference's] lack of guidance towards selecting norbornene/ethylene over other possibilities in [the reference's] broad disclosure," the rejections were reversed.

Examiners love to rely on "laundry list" references, and not just in the chemical arts, because they seem to throw in everything and the kitchen sink. But just because a reference provides in a single document all the building blocks of a rejected invention does not mean that it would have been obvious, in view of the reference, to put together the building blocks in the same way as in the claims. An examiner is not necessarily free to pick and choose from among myriad possibilities that a reference might offer in making a rejection; a valid motivation for doing so must still be articulated. The Board may have been more sympathetic to the applicants in this case because the record showed the lengths to which they had gone to demonstrate the differences in the optical properties of their invention versus the prior art, even providing samples in an interview, which they photographed for the record.

Ex parte Hager 
Appeal 2014-000978; Appl. No. 13/014,796; Tech. Center 1700
Decided: March 29, 2016

The decision in this case reiterates the "teaching away" lesson of In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), that a proposed modification would not have been obvious if it would render the device or method of the reference unsatisfactory for its intended purpose. Representative claim 1 related to a silicon semiconductor wafer production method. However, one of the three references relied upon in the rejection required conducting its respective chamber etch and coating steps without a wafer, "so that all parts of the chamber, including the susceptor, are etched and then coated". The appellants recognized that the primary reference required the absence of the wafer, and cited W.L. Gore v. Garlock, 721 F.2d 1540 (Fed. Cir. 1983), and DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) for the respective "teaching away" holdings of those cases. The examiner responded with the following remarks: "The mere fact that [the primary reference] teaches that the cleaning and pre-coating are performed without a wafer present on the susceptor does not preclude the implementation of an improvement to the process of [the primary reference] by, for example, utilizing a dummy wafer as per the teachings of [the secondary reference]. If appellant's 'teaching away' logic were followed, then any modification to the teachings of any primary reference would not be valid as the reference implicitly 'teaches away' from making such modifications. This logic does not hold unless the reference clearly and specifically states that the proposed change would render the disclosed process untenable or unworkable." The Board helpfully recognized that "teaching away" doctrine doesn't require a reference to expressly shoot down not-yet-invented modifications, and noted that the examiner ignored that the primary reference required the absence of a wafer in making rejections that modified the primary reference by adding a dummy wafer. Thus, the Board reversed the rejections.

This is another instance of the Board showing largesse, in conjuring up Gordon to support the appellants' position, even though the appellants did not themselves cite to that case. "Teaching away" is not always a winning argument, but it's always good to keep Gordon and the other "teaching away" cases in mind when considering the propriety of obviousness rejections that rely on a combination of references.

Thursday, April 14, 2016

Board reverses 101 rejection of a method claim reciting particular machine components

Takeaway:  A PTAB panel found that the Examiner failed to establish a prima facie case of unpatentability in reversing an Examiner’s § 101 rejection relating to hardware/software technology for establishing credit on an automatic vending machine.  In part, the panel found that the Examiner did not establish that the claims were directed to an abstract idea.  Even if the Examiner had established that the claims were directed to an abstract idea, the claims were tied to particular machine (allowing this panel to reiterate that the machine-or-transformation test remains a useful investigative tool for § 101 analysis).  (Ex parte Krampe, No. 2013-010784, PTAB Mar. 31, 2016)


Ex parte Krampe
Appeal 2013-010784; Appl. No. 12/653,741; Technology Center 3600
Decided: March 31, 2016
In a recent decision, a PTAB panel reversed an Examiner’s rejection that the claims at issue were directed to an abstract idea.  The PTAB began its decision by framing the claims at issue as relating “to establishing credit on an automatic vending machine . . . using a cellular telephone, or other personal wireless communication device, using an applet placed on the personal communication device that can communicate with a vending universal wireless device placed on the vending device.”  Claim 1, which was illustrative of the subject matter on appeal, recited:
A method of establishing credit on a vending device by a consumer comprising: 
coupling a vending universal wireless interface to a vending device controller; 
activating an applet on a personal wireless communication device to establish a wireless link with said vending device controller; 
communicating between said personal wireless communication device and said vending device to acquire the vending device’s identification number and vending information; 
establishing a wireless link between said personal wireless communication device and a remote computer server; 
transmitting information acquired from said vending device from said personal wireless communication device to said remote computer server along with a request for credit approval for use on said vending device; 
determining credit availability for said through said remote computer server;
generating a transaction record from the transmitted request; 
transmitting a response from said remote computer server to said personal communication device authorizing a predetermined credit for use on said vending device when such credit is authorized; 
transmitting said credit approval from said personal wireless communication device to said vending device; and 
activating said vending device to dispense a product therefrom; 
thereby eliminating the need for currency or the surrendering one’s credit card for swiping by a third party, or of a dedicated connection between a vending device and a remote computer server to activate a vending device is eliminated.
The panel began its analysis by determining whether the claims at issue were directed to a patent-ineligible abstract idea (Mayo step 1).  In quick order, the panel found that the Examiner failed to establish that claim 1 was directed to an abstract idea.  Instead, the Examiner merely argued that claim 1 “do[es] not involve a general concept.”  As such, the panel concluded that the Examiner failed to establish a prima facie case of unpatentability.
However, the panel did analyze the claims at issue under Mayo step 2 (whether the claimed subject matter included an "inventive concept."  Under this analysis, the panel was not persuaded that the Examiner considered “all of the claim elements both individually and in combination to assess whether the claim amounts to significantly more than an abstract idea.”  Instead, the Examiner found “that the step of determining credit availability … is ‘a significant solution step,’ but is not recited as being ‘performed by an automated programmed computer, thus failing to make method claim 1 statutory.'”  The Examiner then concluded that the remaining elements of claim 1 “have no explicit or inherent recitation of a machine nor qualifying transformation.”
The panel agreed with the Appellant that the claims at issue were tied to a particular machine.  The panel reiterated that the machine-or-transformation test, while not dispositive of a section 101 inquiry, remains a useful investigative tool.
In supporting its decision, the panel identified that the claims at issue were directed to establishing credit on a vending device (e.g., a machine). Claim 1 recited ten steps and many of these steps/elements referenced “particular components of a vending device, information associated with the vending device, and/or communications established and exchanged between the vending device and other devices.”
The panel then found that the Examiner did not address the Appellant’s arguments.  Instead, the Examiner merely repeated the Examiner’s earlier assertions that “the finding that the “claimed significant solution step [(i.e., the step of determining credit availability)] is not automated, thus making insignificant use of the machine.”
Based upon the above reasoning, the Board reversed the § 101 rejection.

My two cents:  This is a case where the Board could have ended its analysis at Mayo step 1 since the Board found the Examiner's argument that claim 1 "do[es] not involve a general concept" suggested the claim was not directed to an abstract idea.  However, the Board went to provide potential additional guidance in overcoming § 101 rejections insofar as the Board finding that a majority of the method steps included recitation of a particular machine components (in this case particular machine components of a vending machine) and the use of the machine-or-transformation test remaining a useful investigative tool. 

Monday, April 4, 2016

Board finds that using input device from stowed location renders unsatisfatory for intended purpose

Takeaway: The Applicant appealed an obviousness rejection of a claim to a personal portable storage device (PPSD) with simultaneous wireless access to host devices. The limitation at issue was "said PPSD remaining in a stowed location during said access." The primary reference was an input device "incorporating additional devices or functionality." The Examiner added a reference teaching a cardiac/lung function monitor that could be carried in the hand, on a belt, or in a pocket. The Applicant argued that stowing the computer input device would render it inoperable for its intended purpose. The Examiner explained that a trackball device (one of the devices mentioned in the primary reference) could be used in a pocket since motion of the device itself wasn't required to manipulate the cursor. The Board agreed with the Applicant and reversed the rejection under § 103. (Ex parte Chen, No. 2013-000463, PTAB Mar. 4, 2015)


Ex parte Chen
Appeal 2013-000463; Appl. No. 11/170,655; Tech. Center 2100
Decided:  March 4, 2015

The application on appeal described "a portable device which may wirelessly interface with other personal electronic devices in order to provide increased data storage capacity." A representative claim on appeal read:
     1. A personal portable storage device (PPSD) comprising:
     a storage medium;
     a wireless component coupled to said storage medium, said wireless component having multiple simultaneous connection capabilities;
     a transfer management electronics coupled to said storage medium for allowing a plurality of host devices to access said PPSD simultaneously through said wireless component, without requiring physical connections between said PPSD and said plurality of host devices,
     said PPSD remaining in a stowed location during said access;
     a self-contained energy source coupled to said transfer management electronics; and
     a housing of a size and shape well-suited to being carried on a person, said housing at least partially enclosing said storage medium, said wireless component, said transfer management electronics, and said self-contained energy source,
     such that said PPSD is easily transported.
(Emphasis added.)
The Examiner rejected this claim as obvious over Ram, Gurevich, and Sackner. The primary reference, Ram, was directed to a computer peripheral (e.g., a mouse) with additional I/O devices contained within the peripheral's enclosure. Gurevich taught the simultaneous access without physical connections feature, and Sackner was used for the "stowed" feature. Sackner was directed to a cardiac/lung function monitor, "possibly hand-held, [and] it may also be carried on an individual normal clothing, for example, on a belt, or may be placed in a pocket provided on garment." The Examiner's rationale for combining Sackner with Ram and Gurevich was "it is easy to situate a PPSD [personal portablestorage device] on a belt."

The Applicant argued that the combination was improper because it rendered the prior art being modified unsatisfactory for its intended purpose (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). More specifically, "keeping the computer apparatus of Ram stowed" would mean it wasn't available for use, "which is directly away from Applicants understanding of the intended purpose of Ram (a mouse apparatus)."

Maintaining the rejection, the Examiner noted that in addition to a mouse, Ram also taught a keyboard containing memory and a wireless adapter. "Since keyboards do not typically need to be in a constant state of motion to be used properly," the combination of Ram's keyboard as modified by Gurevich and Sackner could be stowed "without affecting the ability to use the device." In response, the Applicant asserted that operating a stowed keyboard would be difficult, then attacked the Examiner's statements as "extremely speculative and not supported by a preponderance of evidence." The Applicant requested that the Examiner provide an affidavit in support of his findings. 

The Examiner kept the rejection, and in response to the Applicant's argument about the difficulty of using a stowed keyboard, the Examiner noted that the Applicant's own FIG. 6 depicted the storage device stowed in a pocket. The Applicant repeated the same render-inoperable argument and noted that no Examiner affidavit had been provided to support the Examiner's findings.

This time the Examiner maintained the obviousness rejection but switched focus once again. Sackner disclosed a heart monitor that was "stowable on one's belt or pocket," plus Ram disclosed a trackpoint or trackball "as part of the keyboard or mouse." Since a trackpoint/ball moves the cursor without moving the device around, it "can easily be manipulated to move the cursor while stowed, and keys can still be manipulated on a device that is in one's pocket or on a belt."

In the last response filed before appeal, the Applicant characterized these Examiner statements as "purely speculative and not supported by a preponderance of evidence." The Applicant also questioned the Examiner's new focus on Sackner. The Examiner's rejection modified Ram with Sackner (not vice versa), so whether or not Sackner was stowable was "not the question being raised or the argument being addressed." The Applicant restated the § 103 argument as follows:
     [I]t is the utilization of Ram from a stowed location that is properly being addressed in Applicants arguments. With respect to Ram, the Office Action has not provided a prima facie case that overcomes Applicants arguments that keeping the computer apparatus (a mouse apparatus or a keyboard) of Ram stowed would result in Ram not being available for PROPER or INTENDED purpose of Ram.
     [W]hether the computer apparatus of Ram can be manipulated while in one's pocket or on a belt is irrelevant and erroneous. It is merely a straw­ man argument to that does not provide any factual evidence to support the prima facie case for obviousness. That is, Applicants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.
     In contrast, Applicants submit that a proper prima facie rejection of obviousness must be supported by evidence rather than speculation and opinion. Specifically, Applicants note that attempting to utilize the computer apparatus of Ram from a stowed location would adversely affect the ability to use the device.
The Examiner issued one more Office Action before the Applicant appealed. The Examiner's position wasn't speculative, since a trackball or keyboard was easily manipulated "as long as it is reachable by the user." And although the Applicant characterized manipulation of Ram's device while stowed as "irrelevant and erroneous," "it is well-known that a keyboard or trackball can be manipulated on a device that is stowed in a fixed position."

At that point, the Applicant appealed. The Applicant did a quick traversal of the obviousness rejection by arguing that the Examiner's modification of Ram by Sackner rendered Ram inoperable for its intended use. The remainder of the Appeal Brief focused on the Examiner's failure to make a prima facie case supported by evidence, as opposed to subjective opinion.

To this end, the Applicant attacked several assertions made by the Examiner in prosecution, including a trackball or keyboard is easily manipulated when in reach, and "it is well-known  that  a keyboard or a trackball can be manipulated  on a device that is stowed in a fixed position." According to the Applicant, such statements were speculative and not supported by any actual evidence.

The Applicant then cited to several administrative law cases mentioned in the MPEP.
The "assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support" (MPEP 2144.03(a); In re Zurko, 258 F.3d  1379, 1385, (Fed. Cir. 2001)). Moreover, "the examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge" (MPEP 2144.03(B); see In re Soli, 317 F.2d 941, 946, (CCPA  1963); see also In re Chevenard, 139 F.2d 711, 713 (CCPA  1943)).
The Applicant concluded the Appeal Brief with:
Appellants submit that the above well-known statement lacks any factual evidence to support the prima facie case for obviousness. In contrast, Appellants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.
In the appeal decision, the Board first summarized the positions of the Applicant ("the mouse would not be available for its intended use as an input device if stowed in a pocket or a belt as in Sackner") and the Examiner ("being stowed would not inhibit the mouse from communicating with other devices"). The Board then reversed, explained its reasoning as follows:
Although the mouse includes a storage device, the Examiner has not shown that the storage device is capable of being accessed by host devices outside of the mouse for storing or retrieving data. Therefore, on this record, the sole intended use of the mouse does not depart from its conventional purpose as an input device. Thus, we agree with Appellants modifying the mouse with Sackner’s teaching to be stowed would not comport with its intended use as an input device, and would thereby render the mouse unsatisfactory for its intended purpose.3
3 In the event of further prosecution, the Examiner should consider modifying Sackner’s microprocessor (3) with the teachings of Gurevich and Ram to reject claim 1.
My two cents: First off .... why so long to appeal? The Applicant filed a total of 9 responses and 3 RCEs before appeal. And 4 of these 9 responses argued the very issue that went to appeal. Sure, the Applicant got more information each time (generally a good thing) but it also allowed the Examiner to switch position. Should have appealed much earlier. Definitely a bad idea to RCE without amending or entering evidence.

But kudos to the Applicant for recognizing a good rationale-to-combine argument, and sticking to it. It's rare to appeal when the only issue is rationale-to-combine, as opposed to combination-doesn't-teach.

The Applicant's focus on Examiner evidence seemed to be unnecessary in this particular case. The way I read it, the Board reversed because it was persuaded by the Applicant's combination-unsatisfactory-for-intended-purpose argument, and not because the Examiner didn't provide evidence about manipulation of a trackball stowed in a pocket. The Board simply looked at the conventional purpose of an input device and found that stowing it away would frustrate this purpose. The Board then concluded that, since this was the case, a POSITA would not modify Ram's input device to be stowed away like Sackner's monitor.

In other words, the Applicant and Examiner focused on whether an input device could be used while stowed, but the Board focused on whether a POSITA would do this in the first place. And rightly so, as rationale/motivation to combine isn't about what a POSITA could do, but about what a POSITA has a reason to do. The Board didn't see a reason to stow the input device away.

This reasoning sidesteps the issue of whether or not the Examiner needed evidence. But say the Board did reach that issue ... isn't this question one that can be understood by any one with common knowledge and common sense? Neither side went into a lot of explanation as to why a trackball was or was not usable in this manner. The Examiner gave a couple of sentences explaining why usable, while the the Applicant made a naked assertion "not usable." Neither side offered evidence, but maybe evidence is overkill for this particular technology and use case.

Or is the Applicant right, and as a matter of administrative law, the Examiner needs evidence to support his position? Usually, the references themselves are used as evidence. I doubt Ram had anything to say about using the device while stowed, and the Examainer didn't cite to any such teachings in Ram.

Does it make a difference whether the combination uses Ram's keyboard, trackball, or mouse? Note that the Board's opinion said "render the mouse unsatisfactory for its intended use."

Was the Examiner's thinking colored by the fact that it's now common (in 2016) to use a smart phone without looking at the keyboard?  Not such a stretch to envision texting on a smart phone that's stowed in a pants pocket.

Did you catch footnote 3 at the end of the Board's opinion? The Board suggested that using Sackner (the heart monitor) as the primary reference would be a better obviousness rejection. Looks like Sackner's heart monitor meets the storage, housing, stowed, and energy source limitations. Ram provides the transfer electronics and wireless, and Gurevich provides the simultaneous connections. I haven't thought about it enough to know what the two rationales for modification would be, but the combination certainly doesn't have the same weakness that the Examiner's combination did, since the base device is stowable.