Board affirms anticipation of balloon catheter after interpreting "circumferentially extending"

Takeaway: On an appeal of a claim to a balloon catheter, the dispositive issue was claim interpretation relating to a scraper cord carried along outer surface of the balloon. The claim recited that the cord had "a circumferentially extending intermediate portion." The Examiner mapped the cord to the guide wire of a reference catheter. The Applicant argued that the guide wire was so thin that it was unreasonable to say it extended in a circumferential direction. The Examiner took the position that because the guide wire had some width, it did indeed extend circumferentially. The Board agreed and affirmed the rejection. (Ex parte Shekalim, PTAB 2012.)

Details:

Ex parte Shekalim
Appeal 2011009757; Appl. No. 11/885,158; Tech. Center 3700
Decided  July 5, 2012

The application was directed to a balloon catheter with an external scraper cord. When the balloon expands, the cord comes into contact with the blood vessel walls. As the balloon is moved along the vessel, the cord scrapes deposits from the vessel walls.

A representative claim on appeal read:

     1. Apparatus for removing deposits from a selected location on the inner surface of a tubular structure, comprising:
     an expansible device constructed such that in its non-expanded condition, it is introducible into the tubular structure, manipulatable therein to said selected location of the tubular structure, and radially-expansible therein to engage the inner surface of the tubular structure and the deposits to be removed; and
     at least one elongated scraper cord carried on the outer surface of said expansible device,
     said scraper cord being of a flexibility and a thickness to engage the inner surface of said tubular structure upon the expansion of said expansible device, and
     having a circumferentially extending intermediate length axially movable with respect to and along the outer surface of said expansible device in its expanded condition to scrape away said deposits from the inner surface of the tubular structure.
(Emphasis added.)

During prosecution, the Examiner rejected an earlier version of claim 1 as as anticipated by the balloon catheter in FIG. 5 of McMurtry (shown below).

The Examiner mapped the "expansible device" element to McMurtry's balloon 14 and the "scraper cord" element to McMurtry's guide wire 15. The Examiner noted that the guide wire was movable along the outer surface in two ways: proximally/distally, through ports 21 and 22; and rotatably, via its proximal end through opening 20 (not shown in FIG. 5).

The Applicant argued that McMurtry's element 15 was not a "scraper cord" but instead was a "guide wire" that acted to guide the catheter into the artery and hold the balloon after expansion.  According to the Applicant, McMurtry's guide wire was "certainly not constructed to serve as a 'scraper cord' to scrape away deposits from the inner surface of the artery.

Nevertheless, Applicant amended to further describe the scraper cord as "having a circumferentially extending intermediate portion axially movable." The Applicant then asserted that "such a structure is clearly not present in McMurtry, and to modify it to provide such a structure would render the device of that patent unworkable to perform its intended guiding function."

The Examiner maintained the rejection on final. With respect to the "circumferentially" limitation, the Examiner explained that "since the cord 15 has a thickness/is three dimensional, it extends circumferentially." With respect to the "axially movable" limitation, the Examiner repeated the same comments about proximal/distal movement and rotational movement. Finally, the Examiner found "no structural limitations that distinguish the claimed 'scraper cord' over the cord/guidewire in the McMurtry et al. reference that would deem the cord/guidewire incapable of scraping within a vessel."

The Applicant filed an After Final Response. The Applicant argued that the Examiner's interpretation of the claimed scraper cord was unreasonable, and that the guidewire in the reference was not capable of scraping.

[O]ne skilled in the art would not construe the above-quoted recitation from claim 1 as "reading on" the thickness of the guidewire of McMurtry et al., nor that the guidewire of McMurtry et al. is capable of performing the function of the scraper cord in Applicant's construction, namely to scrape away deposits from the inner surface of the tubular structure. Particularly in this case, where the guidewire is of small  circular diameter, both its "circumferentially-extending intermediate portion", which produces the scraping action, and the scraping action produced thereby, would not be significant especially since its movement is constrained to a linear, axial movement.
(Emphasis added.) 

The Examiner issued an Advisory Action that essentially repeated the earlier assertions.

On appeal, the Applicant made the same arguments: that the Examiner's construction of the claimed structure of the scraper cord was unreasonable; and that the guide wire wasn't capable of the claimed scraping function. The Examiner maintained the same position in the Answer. The Applicant filed a Reply Brief alleging that the Answer "failed to reference Appellant's arguments in the Appeal Brief."

The Board affirmed the anticipation rejection. The Board agreed with the Examiner’s finding that McMurtry’s guide wire had the capabilities of the scraper cord recited in claim 1. More specifically, the Board agreed that since a guide wire does have some thickness, "its width or diameter necessarily extended circumferentially with respect to the balloon’s outer surface." The Board further elaborated on this point:

That is, some portion of the balloon’s circumference is necessarily covered by the width of the guide wire, even if less than a degree of the circumference. McMurtry’s guide wire satisfies the first of the disputed requirements.

The Board also addressed the "axially movable" limitation. After first noting that the claim itself didn't specify a reference axis, the Board looked to the specification or drawings. The phrase "axially movable" was not found in the specification, and no annotations were present in the drawings to specify an axis. However, movement along the longitudinal axis of the balloon was illustrated in Applicant's Figs. 1a-c, and this met the ordinary meaning of "axially." Since McMurtry’s guide wire also moved parallel to the longitudinal axis of the balloon, McMurtry taught this limitation.

My two cents: The Applicant's catheter clearly had structure which was distinguishable from McMurtry. Compare McMurtry's guide wire 15 (left) with Applicant's scraper cord 4c (below right):
Applicant's top view of the balloon in FIG. 1b shows that the cord's intermediate portion 4c
surrounds a much larger portion of the circumference of the balloon, due to its multiple segments that snake back and forth. In contrast, McMurtry's guide wire 15 covers only an insignificant portion of the circumference of the balloon, though since the guide wire 15 has a width it does cover some of the balloon.

I suspect it was this aspect that the Applicant tried to express through the "circumferentially extending" limitation. But the Applicant's choice of language didn't quite do it for the Examiner or for the Board.

I'm not an expert in drafting mechanical claims, so I won't opine on how best to express this distinction. Maybe you need to at least add in the notion of multiple segments, if "circumferentially" only make sense when there are multiple segments to go around the circumference. Note that this aspect was captured in dependent claim 4. On appeal, dependent claim 4 was rejected as obvious, but The Examiner withdrew this rejection in the Answer.

I will say that the Examiner's interpretation of "circumferentially extending" seems devious to me, but not ridiculous. Maybe the Applicant fully appreciated this yet appealed the independent claim anyway, knowing that claim 4 (which better expressed the distinction) was allowable. 

Board reverses anticipation rejection which relied on secondary reference incorporated into Background of primary reference

Takeaway: The Applicant appealed an anticipation rejection. The Examiner relied not only on the anticipatory reference, but also on an issued patent incorporated into the anticipatory reference. The incorporated reference was discussed in the Background section of the anticipatory reference, rather than in the Detailed Description. The Board reversed on the grounds that the Examiner's reliance on the incorporated reference was improper under these facts. "The Examiner has not provided a link between Martin’s embodiments and Table I in Beaverstock.Nor do we see such a link in Martin. Rather, the Examiner has simply selected various disparate features from the references in arriving at the claimed invention which is improper under § 102." (Ex parte Laub, PTAB 2009.) 

Details:
Ex parte Laub
Appeal 2009004880; Appl. No. 10/869,070; Tech. Center 2100
Decided  December 18, 2009

The application was directed to an online transactional processing (OLTP) system for a production line that makes a product. A representative claim on appeal read:

     13.  A method of calculating a value of work in progress on the basis of reporting data received from a set of reporting points of work centers of a production line for producing a product, the production line being logically divided into shop areas,  one reporting point of each shop area being an exit point corresponding to an intermediate production step, the method comprising the steps of:
...     generating a first table comprising aggregated quantities of intermediate products and aggregated scrap quantities reported from the exit points on the basis of the reporting data stored in the database;
     ... and
     calculating a total value of work in progress by means of the first and second tables by the server computer.

In a first Office Action, the Examiner rejected independent claim 13 as anticipated by Martin, which described real-time accounting of plant performance at a sub-plant level. In particular, the Examiner relied on the following two sentences in Martin for the "generating a first table" step.

The plant can also purchase electricity from a local utility and can sell excess electricity to the utility ... For the purposes of this example, it is assumed that the power plan consists of two boilers and a generator. Steam from the two boilers is used both to drive the generator, which in turn, provides electricity to the plant, and to provide steam directly to a number of process units in the plant."

The Applicant argued the "generating" limitation was not taught by Martin as alleged. More specifically, the Applicant argued that the Martin's statements that a power plant uses boilers and a generator did not teach generating a table, and did not teach aggregated quantities as reported from exit points, as recited in claim 1.

In the next (final) Office Action, the Examiner changed the rejection of claim 13 to anticipation by Martin "with incorporated reference Beaverstock." The rejection mapped the "generating" step to Beaverstock's Table 1, a block of code showing calculations from variables.

The Applicant filed an After Final Response. Applicant noted that Beaverstock taught an incurred resource cost that was calculated from the variables catalyst usage, energy cost, and materials cost, and that the calculation was implemented by six functions implemented by code in Table 1. The Applicant argued that these did not correspond to aggregated quantities as reported from exit points, as recited in claim 1. An Advisory Action did not comment on the Applicant's arguments on claim 13.

On appeal, the Applicant repeated the same arguments in the Appeal Brief. In the Answer, the Examiner further explained which variable in the code block corresponded to the claimed aggregate scrap quantity.

The Board reversed on the grounds that the Examiner had combined the unrelated teachings of Martin and Beaverstock in a manner not permitted in an anticipation rejection. Beaverstock was discussed in Martin's Background, and was therefore a distinct disclosure not directly related to the portions of Martin relied on for the other claimed elements.

The Examiner has not provided a link between Martin’s embodiments and Table I in Beaverstock. Nor do we see such a link in Martin. Rather, the Examiner has simply selected various disparate features from the references in arriving at the claimed invention which is improper under § 102. See Net MoneyIn, 545 F.3d at 1369; see also Arkley, 455 F.2d at 587.

My two cents: There are a few scenarios in which it's proper for the Examiner to use multiple references in an anticipation rejection -- see MPEP 2131.01 for a list. But these scenarios are pretty limited, so be ready to challenge if the Examiner steps outside of these bounds.

The Applicant got a lucky break here, since the Applicant did not argue the particular issue which the Board used to reverse the rejection.

Follow-up to Ex parte Cogdill - Examiner introduces "equivalent" circuit diagram

Last week I posted here about Ex parte Cogdill, a case in which the Examiner relied on an "equivalent' circuit diagram for anticipation. My post resulted in a fair amount of reader comments, and the issues brought up in the comment thread inspired me to do this follow-up post. I don't have a strong opinion about the right answer to most of these issues. (Many of those who commented did have strong opinions about the rightness of their position.) I do think the issues are interesting to explore.

Though the Applicant in Ex parte Cogdill didn't identify it as such, the threshold legal issue here is whether or not an Examiner-introduced diagram can be used in a rejection – even if is equivalent. As commenters pointed out, such a diagram is not prior art under § 102 or § 103.

I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. Is this sort of annotated drawing also prohibited because it's not prior art? I don't see it that way. I view this drawing-plus-added-text as the Examiner's assertions about the teachings of the reference.

I've also seen a few cases where the Examiner annotates with something like a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42. Once again, I see this as an Examiner assertion about the teachings of the reference. 

So maybe what happened in Cogdill's equivalent circuit drawing is analogous to the Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It's well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram that much different than substituting the term "lever" in the reference with the word "member"?

That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, an Examiner writes something like

Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1);  ...

Is the Examiner-created Fig. 3B in the Cogdill case just a way for the Examiner to better illustrate how he was reading Johnson's Fig. 3? In other words, is Fig. 3B an Examiner finding about the teachings of the reference rather than a type of evidence that is inadmissible because it doesn't qualify as prior art?

Could the Examiner have introduced Fig. 3B as evidence through a personal affidavit? Surely an Applicant could introduce an equivalent circuit diagram as declaration evidence, along with an explanation of how the claim limitation at issue is not disclosed by the diagram. So could the Examiner do the same thing through a personal affidavit?

If we get past the threshold legal issue, then the next issue might be the burden of proof on the equivalence of the circuit diagrams. Does a mere assertion of equivalence by the Examiner shift the burden to the Applicant to explain why they are not equivalent? Can the Applicant attack the asserted equivalence with attorney argument, or is real evidence required?

If we get past all that, we reach the questions of fact as to whether Figs. 3 and 3B in Ex parte Cogdill really were equivalent and whether the limitation at issue was disclosed. I'm not a EE, so I'll refrain from expressing an opinion on that ultimate question. I will, however, ask a few questions about the issue. 

As far as circuits go, the claim and the diagrams in Cogdill look pretty simple. You have to understand the difference between parallel and serial. But that's covered in a basic physics class, so I'm not convinced you need to be a EE to interpret this aspect of the circuit. (And yeah, you also have to understand what impedance is, but that doesn't appear to be at issue).

The rest of the claim appears to describe how the impedance elements are connected, using terms such as "between," "one end" and "branch points." With all this talk about connections, it this more of a mechanical-type claim? Or do we need to understand something about circuits in order understand what those positional relationships mean in a circuit context?

Board affirms anticipation rejection based on an Examiner-provided circuit diagram that was equivalent to reference diagram

Takeaway: In an anticipation rejection of a claim to an electrical circuit, the Examiner relied on a circuit diagram and asserted it to be equivalent to the diagram used in the reference. The Applicant appealed and argued that the Examiner's reliance on this figure was improper. The Board affirmed the anticipation rejection after finding that the Examiner's diagram was equivalent and disclosed the claim limitation at issue. (Ex parte Cogdill, PTAB 2010.)

Details:
Ex parte Cogdill
Appeal 2010005510; Appl. No. 10/655,964; Tech. Center 2800
Decide  June 27, 2010

The application was directed to circuitry for memory modules. A representative claim on appeal read:

     1.  A circuit for a memory module address bus comprising:
     a transmission line comprising a dampening impedance between a driver and a branch point of said transmission line; and
     a parallel termination impedance having one end coupled to said transmission line between said series dampening impedance and said branch point,
     wherein said parallel termination impedance is on the same side of any memory module as said driver;
     said transmission line having branches from said branch point,
     wherein ones of said branches are coupled to at least one memory module interface.
(Emphasis added.)

The Examiner rejected the originally filed claims as anticipated by Figure 3 of the Johnson reference (shown below).

Johnson Fig. 3

In response, the Applicant amended to further describe the two claimed impedance element as "series"  and "parallel" and also added the "same side" limitation. The Applicant argued that Fig. 3 of Johnson did not disclose the parallel impedance as claimed.

The Examiner maintained the rejection in a Final Office Action, and provided a "Fig. 3b" (shown below) which the Examiner described as an "equivalent circuit."

"Fig. 3B"

According to the Examiner, "it is irrelevant how these schematics are drawn as long as the connections/nodes are the same, since it is merely a matter of drawing choice." The Examiner then explained the rejection as follows: 

The parallel termination impedance (326) is between the series dampening impedance and the branch point (star node) and the parallel termination impedance (326 - where 326 is parallel in reference to Vtt and star node) is on the same side (below memory modules 302-308) as the driver (312).

The Applicant appealed. In the Appeal Brief, the Applicant acknowledged that the rejection was based on the Examiner's "Fig 3b," allegedly an equivalent circuit. But the Applicant's argument addressed only Johnson's Fig. 3.

More specifically, the Applicant argued that Johnson's Fig. 3 disclosed a termination impedance that was NOT located as claimed, since that diagram showed "a parallel terminal impedance 326 having one end coupled to a branch point, while the other end is coupled to the termination voltage" (emphasis in original). In contrast, the Applicant argued, the appealed claim required the parallel termination impedance to have "one end coupled to a transmission line between said series dampening impedance and said branch point, wherein said parallel termination impedance is on the same side of any memory module as said driver" (emphasis in original).

In the Answer, the Examiner maintained his position. He also noted that the rejection relied on the Fig. 3b equivalent circuit rather than Fig. 3 in Johnson.

The Applicant filed a Reply Brief. In the Reply Brief, the Applicant argued that the Fig. 3b used by the Examiner was not part of the Johnson reference, and was also missing lead-in transmission line 314. The Applicant also pointed to statements in Johnson about an advantage of the relative position of the series impedance and the terminating impedance's branch point. The Applicant then argued that the configuration in the Examiner's Fig. 3b would defeat Johnson's objective.

The Board affirmed the rejection, based on a finding that the Examiner's reliance on the "equivalent circuit" of Fig. 3b was appropriate.

We agree with the Ex that this depiction of Johnson's Fig 3 is electrically equivalent to Johnson's description. Appellant's argument that Fig. 3b is not part of Johnson's disclosure may be literally accurate but is not relevant. Fig 3b is merely another way of drawing the components of Johnson's  invention, electrically connected identically to the manner shown in Johsnon Fig 3. Electrical circuit diagrams are intended to illustrate the manner in which electrical and electronic components are connected to one another. They are not necessarily intended as an exact, to-scale representaiton of the layout of the actual circuit.

My two cents: I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. I've seen a few cases where the Examiner draws a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42.

Maybe what happened here with the "equivalent" drawing is more like an Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram much different than substituting the term "lever" in the reference with the word "member"? That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, the Examiner writes something like
Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1);  ...
Was the Examiner's made up Fig. 3B just a way for him to better explain how he was reading Johnson's Fig. 3?

In the end, the Applicant here didn't hit the Examiner's findings/assertions head on, and would have been better served by clearly taking one of three positions. One, argue that, as a point of law, the Examiner is not allowed to introduce his own "equivalent" drawing. Two, explain why the Examiner's figure was not in fact equivalent. Three, argue why the equivalent circuit did not teach the claimed element. Not hitting the Examiner's position head on was a fatal mistake here.

Perhaps the Applicant's argument in the Reply Brief about Johnson's objective was meant to be an argument against equivalence. If so, the Applicant should have made that more clear, because an argument about objectives of the reference may go to non-obviousness, but is irrelevant to an anticipation rejection.

Creative, but losing, arguments against obviousness-type double patenting

What are your options for fighting an obviousness-type double patenting rejection when you don't want to – or can't – file a terminal disclaimer, yet you don't have good arguments for argue non-obviousness? Today's post will cover a half-dozen cases where Applicants came up with atypical arguments against double patenting ... but all were losing arguments at the Board.

The Applicant in Ex parte Germeyer (BPAI 2010) took the position that since the commonly owned reference was unavailable as prior art under §103, the reference was also "unavailable as a secondary reference to support an obviousness-type double patenting rejection." The Board disagreed. The Board stated that the double patenting rejection was not made under §103, even if the obviousness analysis is similar. "Rather than precluding patentability as under §103, nonstatutory double patenting rejections permit patenting conditioned by a terminal disclaimer. Thus, we find Appellants’ arguments based on §103(c) unpersuasive." 0).

The Applicant in Ex parte Stomp (BPAI 2012) appealed an obviousness-type double patenting rejection. The facts of this case were a bit unusual in that the application on appeal did not claim priority to the issued patent, and the application on appeal and the issued patent had different owners. The Applicant argued that neither of the policies addressed by double patenting rejections – extension of term and harassment by different assignees – was relevant to these facts. First, the Applicant noted that extension of term was not implicated because of the appealed application would expire several years before the patent used in the rejection. Second, the Applicant explained that the application and the patent "are owned and have always been owned by two separate entities”." The Applicant distinguished this from the In re Van Ornum line of cases, where the court dealt only with commonly owned patents that might subsequently be assigned or transferred to different parties. The Board agreed that term extension was irrelevant here, but was not persuaded by the argument about lack of common ownership. The Board discussed In re Fallaux, which endorsed the Ornum rationale.

     We note that the Fallaux court explicitly stated that its opinion “should not be read to decide or endorse the PTO‟s view” as to “whether a patent may be used as a reference for an obviousness-type double patenting rejection where the patent shares only a common inventor with the application, rather than an identical inventive entity or a common assignee.” In re Fallaux at 1315 (citing MPEP § 804 ¶ I.A.).
     ... [G]iven that the possibility of multiple assignee harassment is not avoided when the conflicting subject matter is separately owned at the time the applications are filed, we are not persuaded that an obviousness-type double patenting rejection is only proper when the claimed subject matter is potentially transferred to separate assignees after the applications are filed.

Two Board decisions dealt with Applicants who argued the impropriety of a provisional double patenting rejection. During prosecution, the Applicant in Ex parte Bolle (BPAI 2011) faced a series of prior art rejections and a provisional double patenting rejection. The Applicant fought the prior art rejections by arguing and/or amending. The Applicant repeatedly requested the Examiner to withdraw the provisional double patenting rejection, reasoning that since the prior art rejections had been overcome, and the instant application was filed the same day as the reference, "the Examiner must withdraw this provisional rejection." The Applicant repeated the same argument on appeal: the Board should reverse the provisional rejection in view of the identical filing date of the two applications, and the Applicant's position that "the sole rejection of [the claims on appeal] under 103 is improper. The Board affirmed the obviousness rejection and the double patenting rejection. The common filing date was not grounds for reversal because term extension was not the only policy behind double patenting. “[T]here is a second justification for obviousness type double patenting - harassment by multiple assignees.” (citing In re Fallaux, 564 F.3d 1313, 1319, (Fed. Cir. 2009)).

The Applicant in Ex parte Luu (BPAI 2011) made a purely procedural argument about a provisional double patenting rejection. The Applicant relied on MPEP 804(I)(B)(1), which directs the Examiner to withdraw a provisional double patenting rejection when no other rejections remain. The Applicant noted that the copending application used in the rejection could not be expected to issue first since it had not yet started examination. According to the Applicant, this fact in conjunction with the MPEP directive were grounds for the Board to reverse or vacate. The Board viewed this as an untimely request for procedural relief and refused, citing Ex parte Moncla, 2009-006448 (BPAI 2010) (precedential). The Board acknowledged that the Examiner did have the discretion to withdraw the provisional rejection, but noted that jurisdiction had since passed from the Examiner to the Board. The Board then explained that petition, rather appeal, was the appropriate mechanism to contest the Examiner's refusal to withdraw the provisional double patenting rejection. (Ex parte Luu, PTAB 2011)(Appl. No. 11/297,201).

Finally, the Applicant in Ex parte Lin (BPAI 2012) went to appeal with only a double patenting rejection. After losing at the Board, the Applicant filed a terminal disclaimer and then a Request for Rehearing at the Board. The Request asked the Board to reconsider the rejection "in view of the recently submitted terminal disclaimer," or in the alternative, to remand to the Examiner for consideration of the Terminal Disclaimer. The Board denied the Request because Rehearing is limited to arguments already made the Brief. The Rehearing Decision said nothing about remand. The Applicant then filed the Terminal Disclaimer again, this time with an RCE. In the Remarks submitted with the RCE, the Appilcant asked for speedy issuance, noting that the Application had already been in prosecution for five years and only six years of term remained because of the terminal disclaimer. PAIR shows that the Terminal Disclaimer was approved a few days after filing of the RCE – but as of today, more than six months have since elapsed with no further action on the case.

Follow up to Ex parte Osborne

In my last post (here) I discussed Ex parte Osborne and said I didn't understand the opinion the first time I read it. In this post, I'll discuss the reasoning behind the Board's decision. This reasoning wasn't apparent to me at first, but apparently quite a few readers did figure it out, and they've posted comments to explain. So if you've read the comment thread on the last post, you know the answer already.  


As discussed in my previous post, the main issue in the Brief and the Answer was whether water acted as an antimicrobial agent at the temperatures disclosed in the reference. The Board seemed to ignore that issue and instead affirmed based on a finding that the "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." I wondered why the Board felt it could ignore the temperature issue. After all, that's the point the parties argued on appeal.

As a reminder, here's the claim on appeal, with the limitation at issue emphasized.

35. A meat processing system comprising a series of stations in order:
     A first station for stunning an animal;
     A second station for exsanguinating the animal;
     A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
     A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
     wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.

The key to understanding the opinion is the first two words emphasized in one of the Board's Findings of Fact.

The Specification provides that "the antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
(Finding of Fact 1, emphasis in PTAB opinion.)

The Board found that the Applicant had defined the claim term "antimicrobial agent" in this first sentence. And after carefully re-reading the opinion, I realized that the Board ignored water temperature because they weren't relying on the first ("killing") prong of the definition. Instead, the Board apparently relied on the "removing" prong of the definition. The physical action of water applied to the hide removes microorganisms, regardless of the water temperature. Well, maybe not in all scenarios, but certainly when the Norrie reference specifically disclosed that "carcass is also subject to deluge flow of water for washing." (Finding of Fact 4.)

So yeah, I agree that Norrie teaches "at least one microbial agent is applied to the hide," because it's clear that a flood of water will remove microorganisms, regardless of water temperature.

I'm still annoyed that the Board's opinion wasn't written in a way that makes this more clear. After discussing the temperature issue argued by the parties, the Board should have said something like "The temperature of the water is irrelevant because Applicant's explicit definition covers 'removing microorganisms' which can be achieved by the physical action of a 'deluge flow' of water coming into contact with the hide." Instead, the Board made the cryptic statement "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." Without explaining why temperature was irrelevant.

Had the Board written that, I probably still would have written about the decision. But my post would have been about the dangers of getting stuck on one issue and not realizing there are other issues you need to address. Basically, the Applicant went down the wrong track, got stuck on it, and lost at the Board as a result. Perhaps the Applicant would have realized the error had the Examiner steered the Applicant back to the "removing microorganisms" aspect of the definition. It's not 100% clear to me that the Examiner relied on the removal aspect at any point in prosecution, though there are a few hints here and there that he did.

Is this a new ground of rejection? The Board relied on the very same sections of the Norrie reference that the Examiner did. I'm no expert on "new grounds" law, but perhaps it isn't a new ground for this very reason. If not a new ground, that seems a bit unfair. Basically, the Board decided the case on an issue that wasn't even briefed by the parties. Yes, the case law allows the Board to do this, but a new ground would remove some of the sting for the Applicant by saving him an RCE fee if he wanted to narrow his claims after appeal. On the other hand, the real sting of appeal -- win or lose -- is pendency before the Board.