Tuesday, July 21, 2015

PTAB reverses when Examiner provides no explanation for why claimed "blender" reads on "charging nozzle"

Takeaway: The Applicant appealed an obviousness rejection of claims to a process of manufacturing a multi-phase liquid composition. The method claim recited a transferring and a blending step involving a "blender," and the Examiner mapped the blender to a "charging nozzle" in Tanaka, a US patent reference. The Examiner gave no further explanation for the mapping, and one of the arguments made by the Applicant on appeal was: "The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender." The Board reversed the obviousness rejection. The Board first (summarily) agreed with the Applicant about Tanaka: "We fail to understand how charging nozzle 1 of Tanaka constitutes a 'blender.' " The Board also agreed with the Applicant that the purported benefit to the combination was not supported by evidence: "[T]he Examiner does not explain through evidence or technical reasoning how Tanaka's device, as modified, 'would increase the number of three dimensional patterns of the Tanaka apparatus.' "

Ex parte Wei
Appeal No. 2013-001316; Serial No 10,837,214; Tech. Center 3700
Decided:  January 30, 2015

The application on appeal was directed to a process of manufacturing a multi-phase liquid composition. A representative claim on appeal read:
     25. A process for making patterned multi-phase liquid compositions wherein upon dispensing said multi-phase liquid compositions from a container, phases of said multiphase liquid compositions are dispensed evenly from said container, said process comprising:
     placing a plurality of liquid phases in separate vessels equipped with supply lines for transferring said phases from said vessels;
     transferring, via said  supply lines, predetermined amounts of each of said liquid phases from each of said separate vessels into a combiner which aligns each  of said liquid phases in at least one of the following: one of said liquid phases is aligned within another of said liquid phases, said liquid phases are aligned side by side along a common line, or said liquid phases are combined into one line;
     transferring said liquid phases from said combiner to a blender;
     blending said liquid phases together, via said blender
, to produce a multiphase liquid composition having equal volume ratios of one phase to another;  and
     transferring said multi-phase liquid composition to an individual product container via a delivery nozzle,
     wherein said individual product container is received at a bottle holding device and secured to a rotating platform attached to said bottle holding device, and
     wherein said individual product container is rotated, via said rotating platform, when said multi-phase liquid composition is transferred to said individual product container via said delivery nozzle.
One of the issues on appeal was the meaning of "blender."

The Examiner rejected the method claim as obvious over Tanaka in view of Yamazaki. Tanaka was a US patent claiming priority to a Japanese application. Yamazki was a published Japanese application. Both were cited in an IDS, and the Applicant provided a translation of Yamazaki.

The Examiner relied Tanaka for everything except the "equal volume ratios" limitation, and on Yamakazi for that. The rejection as applied to Tanaka consisted of a recitation of the claim language, with a reference number from Tanaka next to each structure in the claims. Here is Tanaka's FIG. 1, annotated by me with the Examiner's mapping of structure to claim terms. 

The Examiner didn't point to any text description in Tanaka, but here is the single sentence in Tanaka that mentions how structure 1 interacts with the other components in the system:
In the multiple charging nozzle 3, as shown in FIG. 1, the charging nozzle 1 is connected to one charger 5, and the sub-nozzle 2 is connected to the other charger 6 so that the transparent gel base and the coloring material are forced into the charging nozzle 1 and the sub-nozzle 2 from hoppers 7, 8 by piston cylinders 9, 10, respectively.
Thus, the structure 1 which the Examiner mapped to the "blender" is referred to in Tanaka as "charging nozzle."

On appeal, the Applicant argued that Tanaka did not disclose a "blender:"
Element 1 of Tanaka is a charging nozzle. The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender.
(Emphasis added.)
The obviousness rejection also asserted – in the alternative – that structure 5 in Yamakazi (labeled "mixing pipe") corresponded to the claimed "blender." The Applicant did not argue the Examiner's alternative reliance on Yamazaki's mixing pipe. However, the Applicant did make a "teaching away" argument as to the combination:
Tanaka found that [the mixer] wouldn't work because it didn't form a three dimensional pattern. Additionally, as the method described in Yamazaki is also related to producing a pattern on the surface (para. 21), not a three dimensional pattern as discussed in Tanaka, Applicants submit there is no motivation from the disclosure of Tanaka to modify its method to include a blender from Yamazaki as stated in the Office Action. In fact, Applicants submit it teaches away from the addition of the blender in Yamazaki as Tanaka desires a three dimensional  pattern.
In the Answer, the Examiner asserted that this teaching away argument (i.e., Tanaka found the mixer wouldn't work) did not take into account the combination actually relied on by the Examiner. The Examiner's combination used a blender (not a mixer) from Yamakazi:
The blender of the Yamazaki reference specifically does not act as a mixer. In paragraph 21 Yamazaki describes designing the blender to avoid mixing the two fluid streams in order to preserve the visual pattern formed  by the separate materials. Therefore the applicant's argument that the Tanaka reference teaches away from mixing is not of any consequence to the proposed combination.
In the Final Office Action, the Examiner had profferred this rationale for adding Yamazaki's blender to the exit pipe in Tanaka's process: "to increase the number of different patterns which the Tanaka apparatus can produce." The Applicant attacked this rationale on appeal, arguing that the purported benefit to the combination was not supported by evidence:
The Office Action provided no support for why one of skill in the art would believe the addition of the Yamazaki blender for surface patterns would increase the number of three dimensional patterns of the Tanaka apparatus.
(Emphasis added.)
The Examiner addressed this argument in the Answer, contending that the Applicant had not fully appreciated Yamazaki:
The fact that the pattern is visible on the surface of the product [as taught in Yamakzai para. 21] is not an indication that the pattern does not extend into the body of the product, merely that the materials in question are opaque; more of the pattern becomes apparent as the surface of the product is worn away by use. The applicant's argument that the Yamazaki blender forms a two dimensional pattern only and is therefore not fit to combine with the Tanaka apparatus is based on an erroneous interpretation of Yamazaki, which clearly extrudes material in a three dimensional pattern.
The Board reversed the obviousness rejection. The Board first summarily agreed with the Applicant's argument about Tanaka: "We fail to understand how charging nozzle 1 of Tanaka constitutes a 'blender.' " Notably, the Board did not make explicit findings as to whether Yamakazi disclosed the claimed "blender," but merely noted (without comment) the Examiner's alternative reliance on Yamakazi's mixing pipe. The remainder of the decision focused on the rationale for combining.

The Examiner's rebuttal in the Answer focused on the Applicant's mention of surface patterns vs. three dimensional patterns. According to the Board, the Answer did not address the thrust of the Applicant's argument. The real issue was the number of patterns, since an increase in this number of patterns was the Examiner's reason for combining. However, the Examiner did not explain why a POSITA would expect such an increase:
More specifically, the Examiner does not identify how many patterns Tanaka discloses. However, it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds Tanaka discloses discharging a spiral pattern (see Ans. 6 (citing Fig. 4)). Similarly, the Examiner does not identify how many patterns Yamazaki discloses, but it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds that Yamazaki discloses "extrud[ing] material in a three dimensional pattern" (Ans. 7). Hence, the Examiner's findings evidence that Tanaka discloses one pattern and Yamazaki discloses one pattern. Additionally, the Examiner does not identify how many patterns Tanaka's device, as modified by Yamazaki's teaching of blender (5), would produce.
My two cents:  I'm not familiar with the term "charging nozzle," and was curious as to whether its meaning is anything close to blender, as alleged by the Examiner. In patents originally filed in English, the most common usage of "charging nozzle" seems to be in context of electrostatics, where "charging" refers to electric charge. However, when "charging nozzle" shows up in patents translated from Chinese or Japanese, it seems to mean "nozzle for filling with gas or liquid." I think this is the sense used in the Tanaka reference. In fact, the machine translation of Tanaka's Japanese language priority document refers to structure 1 as a "filling nozzle." So what could the Examiner have been thinking, asserting that Tanaka's filling/charging nozzle mapped to the claim term "blender"? 

The Examiner gave zero explanation for the mapping – didn't even point to a particular portion of Tanaka's description. But I wonder if the Examiner simply looked at Tanaka FIG. 1, saw that the transparent gel from hopper 7 meets the coloring material from hopper 8 in nozzle 1, so concluded that this meeting of two materials constituted "blending" and the structure in which this action occurred was therefore a "blender." 

Maybe that's the Broadest Reasonable Interpretation, and maybe it's UNreasonably Broad. I'll assume that any structure that effects "blending" is considered a "blender." Even if that's true, this interpretation is reasonable only if a meeting of two liquids in a confined area is considered "blending" -- and UNreasonable if that involves more vigorous action. 

Because the Examiner didn't explain his interpretation, the Applicant didn't have much to argue against – unless the Applicant chose to engage in pure speculation, as I did above. This Applicant chose not to, and instead threw it back on the Examiner: "The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender."

Often when neither side explicitly raises claim interpretation as an issue, the Board takes it upon itself to determine the Broadest Reasonable Interpretation. I was surprised that didn't happen here. Instead, the Board essentially agreed with the Applicant that the Examiner didn't provide enough explanation.

Though it wasn't framed this way, the Board's adoption of the Applicant's position  – the Examiner didn't explain  – makes me wonder if the Board was thinking in terms of Examiner burden. In other words, perhaps the terms "blender" and "charging nozzle" are different enough that a mere assertion by the Examiner that the claim term reads on the reference term isn't enough? Such that all the Applicant has to do is challenge the Examiner's assertion, rather than explaining why the claim term does not read on the reference term?

I wish this decision was one in which the Board imposed an Examiner requirement to put an explicit claim interpretation on the record. But I'm not all sure that's what's happened here. Nor do I recall ever seeing a discussion of burden as it relates to claim interpretation at the Board. In fact, it's fairly common for the opposite to happen: for the Examiner to offer no interpretation at all for a claim term, and still have the Board adopt the Examiner's "findings" and ding the Applicant for not explaining why the claim term doesn't encompass the reference term. So as a practical matter, the Board seems to put the burden on the Applicant to put forth a claim construction, or at least to explain why the Broadest Reasonable Interpretation of the claimed "widget" does not read on the "blodget" in the reference.

Here, the Examiner should have connected the dots by saying "charging nozzle 1 is where two liquids meet, so they undergo some degree of blending, and thus charging nozzle 1 is a 'blender.' " Since he didn't, I would probably raised this issue myself, either in a response or in an Examiner Interview.  Usually, the Examiner will either acknowledge that my understanding of his position was correct, or will correct my misimpression and tell me what he was thinking. Once I understand the Examiner's position, I can better evaluate whether I should stick to my arguments or amend.

Failure to address claim construction is a huge driver of prolonged prosecution. And failure on the part of Applicants to take into account Broadest Reasonable Interpretation explains most of the high rate of affirmance at the Board. So until there's a requirement for the Examiner to put claim construction on the record, Applicants should consider raising the issue of BRI, even if the Examiner doesn't. 

Friday, July 10, 2015

Examples of abandonment after failure to handle drawing requirement

In this post, I'll discuss some applications that went abandoned because the Applicant didn't properly handle drawing objections or requirement that occurred at the last stage of prosecution. The takeaway I see here is that even if you disagree with the drawing requirement/objection itself, or with the PTO's handling of something, you can't just ignore it. You should instead respond as required, and if you think the Examiner is wrong, handle it via petition, as required by the rules. And yeah, fighting it always means extra effort and sometimes real money (EOT fees, petition fees). But those are the rules. 

Application 11/776,390 (history available on Public PAIR) went into appeal with several drawing objections present in the last Office Action before appeal. The Board reversed the Examiner's rejection of one independent claim, and the Applicant filed an RCE to take the allowable subject matter. However, the Applicant did not address the outstanding drawing objections in this reply. The Examiner sent a Notice of Abandonment and indicated that the RCE was improper and thus "any time period running was not tolled by the filing of the improper request." The Applicant's reply "did not address the outstanding objection in the Miscellaneous Action mailed 11/15/2013, as required, and therefore is improper."

Application 11/461,132 (history available on Public PAIR) received a Notice of Allowance, but the Examiner's Notice of Allowability indicated outstanding issues with the drawings. The summary sheet of the Notice of Allowability checked the box "Corrected Drawings must be submitted, including changes required by the attached Examiner's Comment." The Detailed Action explained that formal drawings in compliance with 37 CFR 1.121(d) were required because the originally filed drawings "are not formal (i.e, uniformly thick numbers and lines, etc.)." The PTO sent a Notice of Abandonment after the Applicant paid the issue fee but did not submit new drawings. 

In Application 11/461,084 (history available on Public PAIR) , the very first Examiner communication was an Ex Parte Quayle Action indicating all original claims were allowable. However, no drawings were filed with the application, and the Action also required the Applicant to submit a drawing since "the subject matter admits of illustration by a drawing." Two months after the Ex parte Quayle Action, the Examiner sent a Notice of Abandonment, indicating a failure to reply to the Ex parte Quayle Action. Two weeks later, the Applicant filed a Petition to Withdraw the Holding of Abandonment, arguing that extensions of time under 1.136 were available for an Ex parte Quayle Action, so that the application was not in fact abandoned at the two-month mark. The Petition also requested that that the period for reply to the Action be reset "in order to place the Applicant in substantially the same position as he was when this Petition was filed." Notably, the Applicant did not submit the drawings along with this Petition. The Petition Decision withdrew the holding of Abandonment, but did not reset the reply period. With no drawings submitted and the clock on the Ex parte Quayle still running, the Applicant filed a 3-month extension of time with a Response arguing that no drawings were necessary. The Examiner withdrew the drawings requirement and issued a Notice of Allowance.

In Design Application 29/356,231 (history available on Public PAIR), the Applicant filed a Preliminary Amendment about six weeks after filing to amend the drawings "to provide proper indication, in Fig. 1, of the longitudinal sectional view show in Fig. 2." Only four days after those drawings were filed, the Examiner sent a Notice of Allowance. The Notice of Allowability indicated that "corrected drawings must be submitted including changes described in the attached Examiner's Amendment/Comment."  In that attachment, the Examiner indicated that the drawings were objected to because Fig. 7 cross-sectional view wasn't referenced in any other figure. "That is, there are no directional arrows with numerals at the end that shows from which the view is cut."  The Applicant paid the Issue Fee but did not file drawings in response to Notice. The PTO sent a Notice of Abandonment, which the Applicant petitioned. In the Petition, the Applicant pointed out that drawings addressing the objection were in fact filed, four days before the Examiner's action. The Petition Decision upheld the abandonment, noting that the Notice of Allowance "clearly required drawings" and that the Applicant did not file a reply to this Notice as required by the statute. 

The Applicant filed a Request for Reconsideration arguing that the drawings did in fact comply with the outstanding requirement, and it was irrelevant that this submission was made before the Notice. However, the Petitions Office maintained its position, explaining that "it is clear that the Examiner made a requirement for drawings after these drawings [in the Preliminary Amendment] would have become part of the official application." The Applicant then revived the application for unintentional abandonment, including the drawings with the revival petition, and the patent issued.

Thursday, June 18, 2015

Tips for arguing Unexpected Results Arguments to overcome obviousness

MPEP Sections 716 and 2145 provide a good primer on arguing unexpected results in order to overcome obviousness. This post will dig into the topic in a little more detail, by discussing some PTAB appeal decisions where the Applicant made an unexpected results argument.

The case law of obviousness requires that assertions of unexpected results be supported by evidence. Attorney argument alone is not sufficient. Improper use of attorney argument to show unexpected results was at play in Ex parte Wong and Ex parte Roberge.

The claims in Ex parte Wong (PTAB 2013) were directed to an orthodontic adhesive, and recited a specific ratio of working time to curing time. The Applicant argued that the properties of the adhesive were unexpected. The Applicant supported this argument by presenting in the arguments section of the Appeal Brief, data from testing of the prior art composition. The Board dismissed the test data on two grounds. First, the data wasn't entered into the record before appeal, as required by the rules governing appeal. Second, the data was presented as unsubstantiated argument of counsel, when evidence was required.

The claims in Ex parte Roberge (PTAB 2014) were directed to an engine fan nozzle with a protective coating. The Applicant explained that ice build-up on the nozzle reduced the nozzle's effective area,
which in turn affected efficiency of the engine. The protective coating prevented this reduction in nozzle area and in engine efficiency. Furthermore, a POSITA wouldn't expect the Examiner's combination to achieve this result, since in the reference the coating was used on an airfoil, where ice build-up affects aerodynamics of the airfoil rather than engine efficiency. However, this discussion appeared only in the Appeal Brief, without citation to the specification or to a declaration. The Board was not persuaded because the Applicant had "cited no specific evidence in support of their contention of unexpected results to rebut [the Examiner's] prima facie case." The Board cited In re Lindner, 457 F.2d 506, 508 (CCPA 1972).

Evidence of unexpected results can be presented in an expert declaration or in the specification, but naked assertions are not enough. Ex parte Bailey and Ex parte Eriksson show that an explanation must be provided as to why the results are unexpected.

In Ex parte Bailey (PTAB 2014), the application was directed to an "undercarriage brake light system." The Specification noted an advantage of the claimed 360o configuration:
It illuminates under the entire undercarriage providing extra visual safety to drivers when you are braking. Since visibility is 360 degrees, drivers following your vehicle and also those at intersections and those merging or yielding are alerted to your braking.
The Applicant referred to this advantage when arguing unexpected results. But the Board noted two deficiencies in the argument:
Appellant has not presented corroborating evidence that confirmation of braking to an approached vehicle constitutes an unexpected advantage. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (“One way … to rebut a prima facie case of obviousness is … to show … some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.” (Citation omitted)). Rather, Appellant cursorily mentions the advantage within the Specification, which is insufficient. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“[C]onclusory statements in the specification, unsupported by objective evidence, are insufficient to establish unexpected results.” (Citation omitted)).
(Emphasis in original.)

The application in Ex parte Eriksson (PTAB 2014) was directed to a stabilizing device for a manufacturing process. The claims included opposing electromagnetic stabilizers and opposing sensors. The specification briefly mentioned an advantage of this feature :
The stabilizing device, which is arranged to stabilize the position of the object with respect to the predetermined transport path, comprises at least one first pair of electromagnetic stabilizing members arranged adjacent to the air-knives and on each side of the strip. Since the air-knives and the electromagnetic stabilizing members are arranged adjacent to each other to reduce the movement of the object perpendicular to the direction of transport, an optimal damping of the vibrations is achieved at the region between the air-knives.
The obviousness rejection modified a stabilizer in the primary reference to use opposing sensors and opposing electromagnetics as taught in the secondary reference. The Applicant argued that, when combined, the differences between the two references would change their respective functions and thus would not produce predictable results. The Applicant concluded this argument by mentioning the above advantage that was briefly discussed in the specification:
The [claimed] arrangement provides superior stabilization, as described in the specification at p. 5, ll. 9-14. By applying magnetic force to both sides of the magnetic strip, the claimed invention can help to ensure that the metallic strip follows the predetermined transport path.
The Board found that the assertion of superior stabilization was "not supported by factual evidence". The Board cited to several Federal Circuit cases: In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results must be established by factual evidence.”); In re Hoch, 428 F.2d 1341, 1343-44 (CCPA 1970) (evidence must provide an actual comparison of the properties of the claimed invention with the disclosure of the reference); cf., e.g., In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991).

An explanation of how the claimed feature leads to the result, plus characterization as unexpected, is still not enough. The Applicant must also convince the Board of the unexpectedness. This is illustrated by Ex parte Grispo and Ex parte van der Pol.

The Applicant in Ex parte Grispo (PTAB 2013) argued that the result was unexpected, but the Board saw the result produced by the claims to be the same as the result produced by the reference. The application was directed to a process of purging a dual head injector when injecting contrast during a diagnostic imaging procedure. One feature contested on appeal was the ordering of steps to advance the contrast plunger and the saline plunger. The Examiner did not rely on a particular reference to teach the claimed ordering, but instead took the position that "changes in sequence are prima facie obvious in the absence of new or unexpected results" (citing MPEP 2144.04(IV)(C)).

The Applicant argued that this rationale was improper for a critical limitation and explained its criticality: the claimed order "reduces the waste of relatively expensive contrast, purges air prior to injection, and does so in ... a simple two-step process." However, the Examiner found that one of the references actually “discloses the 'exact reasoning and criticality' for the air purging steps.” The Board agreed, and said the unexpected results argument failed because the Applicant did not provide "persuasive reasoning or credible evidence that the claimed invention achieves any advantage over, or even any result different from, [the Emig reference]." (Emphasis added.) The Board cited In re Hampel, 162 F.2d 483, 485 (CCPA 1947).

The Applicant in Ex parte van der Pol (PTAB 2014) argued the result was unexpected, but the Board viewed the result as inherent. The Examiner modified the UV lighting system of the primary reference to use the non-linear bulb shape from the secondary reference. The Applicant argued that the inventor had recognized advantages of the non-linear shape: reducing resistance of the air flow around the bulb (citing to the spec). The Board dismissed this argument because the Applicant didn't show that "these advantages would have been unexpected by one of ordinary skill in the art, rather than just inherent when using a spherical bulb for its known and conventional use as a UV germicidal lamp." The Board cited In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
Sometimes the Board isn't persuaded because the unexpected results arguments and evidence are contradicted by the explicit disclosure of the references. The application in Ex parte Strebelle (PTAB 2011) was directed to a chemical process for regenerating a catalyst that was used in a hydrogenation reaction. The claimed regeneration process included heating one of six listed Group VIII metals with oxygen at a specific temperature range. The primary reference in the obviousness rejection, Vollheim, disclosed the hydrogenation reaction recited in the process claim, and "mentioned regeneration is possible but without explicitly stating a method." A secondary reference, Welty, taught "catalysts of similar makeup (Group VIII elements) for use in "similar processes (cracking and reforming)", plus the claimed method of regeneration: heating the catalyst in the presence of oxygen at the claimed temperature range.

On appeal, the Applicant argued that the discovery of catalyst regeneration under the claimed conditions was unexpected. The Applicant's own specification had acknowledged the "possibility in theory of regenerating" the catalyst mentioned in Vollheim, but explained that others had found that heavy metal contamination renders regeneration "fruitless" (citing a journal article co-authored by Vollheim and Muller). The Applicant supported the unexpected results argument with an expert declaration that characterized the claimed catalyst regeneration as "completely surprising" in view of the "clear belief by other that it was not possible to regenerate such catalysts." In the Answer, the Examiner noted that "a prior art reference must be considered in its entirety," and Vollheim "clearly acknowledges that regeneration is possible. The Board was not persuaded by the unexpected results argument. The Board found that the Muller/Vollheim article did not explain the process and results in enough detail to support a finding that catalyst regeneration was fruitless, and thus did not credit the Applicant's characterization of the claimed catalyst regeneration as unexpected. 

Monday, June 15, 2015

PTAB pilot program: abandon one appeal and get special priority for another appeal

Late breaking news from Carl Oppedahl's blog: a brand new pilot program at the PTAB allows an Applicant to get special priority for one application already on appeal, by withdrawing the appeal of another application. "Special priority" means a PTAB "goal" of appeal decision no more than 4 months after the petition for special status is granted.

See Carl's post here for full details, and here's a link to the Federal Register Notice. Be sure and read Carl's warning about careful handling of the application withdrawn from appeal.

The PTAB says this program runs until June 19, 2016, or until 2,000 appeals are made special, whichever comes first. The PTAB may choose to extend the program, depending on the results of the pilot. The "Pre Appeal Brief Conference" (PABC) program has been around since 2005 – and is still officially a "pilot pogram." Not sure if it makes any difference, but the PABC is administered by the PTO generally, where this new one appears to be administered directly by the PTAB. 

Thursday, June 4, 2015

PTAB finds Applicant arguments about misleading terms in translated reference were not supported by evidence

Takeaway: An Applicant argued on appeal that a German patent reference didn't disclose the claim limitation "helically extending" despite the presence of "setscrew," "grub screw," and "screwed in" in the English translation. According to the Applicant, the terminology used in the reference could also be used to describe a twist-and-lock structure which did not include helically wound threads. The Applicant also pointed to the lack of a clear illustration of helical threads, the fact that the drawing was "poorly described" with only a paragraph of text, and the fact that the reference was translated from German to English. The Board affirmed the Examiner's rejection. The Applicant's arguments about the drawings were contradicted by the express teachings of the text. The arguments about the terms used by Schraber were presented as attorney argument and were not supported by evidence. The Board cited In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) for the proposition that "argument by counsel cannot take the place of evidence)." (Ex parte Jackson, PTAB 2012.)


Ex parte Jackson
Appeal 2010-011356; Appl. No. 10/784,066; Tech. Center 3700
Decided:  March 16, 2012

The application on appeal was directed to a bone screw used in spinal surgery. A portion of a representative claim on appeal read:
     1. A closure for setting engagement with a structural member and comprising:
     (a) a substantially cylindrical body having an outer cylindrical surface ...
     (b) a guide and advancement flange extending helically about said outer cylindrical surface ....
     (c) at least one of said leading surface or said trailing surface [of the flange] being compound in contour and including an inward anti-splay surface component facing generally toward said closure axis...
Claim 1 was rejected as obvious over Schafer (a German patent) in view of Jackson (same inventor as application on appeal). The Applicant identified Schafer in an IDS, and provided a full translation with the IDS.

The main dispute in prosecution revolved around the teachings of Schafer with respect to the claim limitation "a guide and advancement flange extending helically." The Examiner took the position that this feature was disclosed in Schafer's FIG. 2 (below).

Three lines of argument developed during prosecution. One argument focused on the meaning of "helically wound" (although this precise language wasn't in the claim). A second argument focused on what a POSITA would understand from Schafer's drawings. The third argument related to Schafer's textual description, as translated into English from the original German.

In the first response, the Applicant explained that the perspective view of Schafer's FIG. 2 made it "hard to determine if it has a pitch of any kind," but "comparing the flange shaped openings in comparative spacing from the edge of the seat, indicates that there is no conventional thread positive pitch present on the flanks of the structure" (emphasis added). The Applicant concluded that Schafer's flange was a "twist screw in and lock structure" rather than a helical structure.

Although the Applicant's initial response didn't explicitly discuss claim construction, the Examiner addressed claim construction in the next Office Action. The Examiner explained that "any angular movement in the structure satisfies 'helically wound' as the claims don't set forth a minimum amount of winding." Further, "pitch need not be 'conventional' to be present and 'conventional' is not recited in the claims."

In a Response to the second Office Action, the Applicant argued that even though pitch wasn't in the claims, the phrase "helically wound" nonetheless implied something about pitch. The Applicant used an annotated Schafer FIG. 2 (below) to explain that Schafer's flange would be helically wound only if D2 > D1 and D4 > D3. But since these conditions did not hold, Schafer's flange was not helically wound.

The Applicant also discussed the text description of FIG. 2 that appeared in the of-record translation of Schafer (supplied earlier by the Applicant with an IDS), which read:
In the exemplary embodiment shown in Figure 2, the bifurcated head 4 of the bone screw 1 likewise has a thread, which, however, has a top flank 11 and a bottom flank 10 embodied in a stepped fashion. The shoulder of the bottom flank 10 is shaped such that it forms an undercut 17. This undercut 17, particularly by means of the shoulder 18, prevents the legs 5 from being bent radially outward while the grub screw 3 is being screwed in. A positive lock is thus produced in the radial direction between the bifurcated head 4 and grub screw 3. This positive lock prevents, as previously mentioned, any slippage of the leg 5.
(Emphasis added.)
Based on the drawing and this text, the Applicant urged that FIG. 2 was a "twist and lock" structure in which "projections are screwed or rotated ninety degrees into the receiver," rather than a "structure that will helically rotate into the receiver" as claimed.

The Examiner maintained the rejection in the next Office Action. The Examiner explicitly discussed claim interpretation: "helically wound just means it progresses in a spiral or helical fashion, i.e. is threaded (as opposed to 'twist-lock' designs)." The Schafer text actually relied on by the Applicant "teaches not only that the device has threads but that the anti-splay grub screw is screwed in" (emphasis in original). Thus, "it is quite clear that Schafer discloses a 'threaded' structure (i.e., a helically wound flange structure)."

The Applicant filed one more response before appeal and addressed the Examiner's latest contentions.
According to the Applicant,
There is nothing that requires a "grub screw," as it is translated from German, to be helically wound. Such a screw can have mating portions that rotate, for example, 90°, into each other and such are well known. It is believed that this is what is shown in the German [Schafer] reference.
When the Examiner maintained the rejection, the Applicant appealed. In the Appeal Brief, the Applicant noted that FIG. 2 was "only a partial cross section of the receiver" and the corresponding text was limited to "a single paragraph." The Applicant characterized the embodiment of FIG. 2 as "poorly described" and "apparently added as a quick afterthought." According to the Applicant, a POSITA would see in FIG. 2 that all 7 tiers of the receiver were equally spaced from front to bottom on front and back and essentially horizontal, i.e., did not have a pitch. This was contrary to the meaning of "helically wound," which implied that each tier has a pitch going from one tier to the next with each 360° revolution.

The Applicant then made this point by including FIG. 2 next to a FIG. 2 modified to be helically wound). The juxtaposition allowed a POSITA to "immediately see" that Schafer's FIG. 2 was a twist-and-lock structure rather than a helically wound structure.

Moving from drawings to text, the Applicant acknowledged that the German Schafer patent, as translated, referred to a grub screw "screwed into" a thread in describing FIG. 2. The Applicant also briefly acknowledged that Schafer used the phrase "screwed in" in describing the embodiment of FIG. 1. But according to the Applicant, this terminology wasn't dispositive:
[T]he term screw can mean simple rotation into something. ... A structure that mates upon rotating 90° can be called a grub screw and rotation or twisting can be interpreted and translated from the German into English as being "screwed in" in the Schafer disclosure to distinguish from the closures that are slid in sideways without rotating.
A POSITA looking at Schafer, as a whole and in context, would understand that the FIG. 2 receiver was not helically wound. Furthermore, a POSITA would also understand that Schafer's "closure and receiver are aligned and the closure twisted or rotated 90° to secure them together." 

In the Answer, the Examiner first reiterated that the Schafer translation relied on by the Applicant used the terms "threads and "screw." The Examiner then referred to a full translation provided with the Answer, and pointed to additional mentions of "threading" and "screwing in the setscrew." (This document was identified as "Full translation of Schafer (DE 298 10 798 U1), Schreiber Translations, Inc., May 2010.")

Moving on to address the Appeal Brief arguments, the Examiner asserted that the Appellant's "opinion" that Schafer disclosed a non-threaded design was "irrelevant since it overlooks or misconstrues what the reference explicitly says, namely, that the design shown in Fig. 2 includes a threaded set screw that is screwed in." (Emphasis added.) And although the closure itself wasn't illustrated, the text of Schafer said that the "closure is 'setscrew 3' and that it forms a friction-lock with the undercut 17 and lug 18 of the thread of the head 4 (translation, page 10, lines 5-7)."

The Examiner also criticized the Applicant's "exaggerated" side by side drawings: 
[G]iven the very small portion of the entire circumference of the threads that is actually shown, the purported pitch imagined by Appellant is unnecessary for a helical thread and implausible in a single-start thread design (only one helical thread ridge). The angle that is necessary for the threads of Fig. 2 would not be extreme (as in Appellant's sketch) in the very small portion of the circumference that is shown in the basic drawing of Fig. 2.
In the appeal decision, the Board found that Schafer did disclose the limitation at issue. The Board first addressed the text of Schafer, and its use of terms such as "screw" and "screwed in." The Board acknowledged Applicant's argument that the context of Schafer would lead a POSITA to understand these terms differently from normal English usage. However, the Board agreed with the Examiner's reading of Schafer and further noted that "argument by counsel cannot take the place of evidence, citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).

Turning to the Applicant's arguments about Schafer's drawing, the Board first found these arguments ran counter to Schafer's express teachings in the text (i.e., "grub screw," "screwed in"). Moreover, the Board was not persuaded by the Applicant's side-by-side comparison. Instead, the Board agreed with the Examiner that "given the 'very small portion of the entire circumference of the threads' illustrated in Schäfer‟s figure 2, a conclusion cannot be drawn as to the pitch of the threads."

Finally, the Board considered an argument about the secondary reference and found it not persuasive. As a result, the Board affirmed the § 103 rejection.

My two cents: There are several lines of argument at play here.
  • Inferences made from a drawing. 
  • Overcoming literal teachings of a reference by arguing that the reference really doesn't mean what it says. 
  • Attorney argument.
  • Translation errors.
Considering the point of whether the FIG. 2 drawing alone showed a helically wound thread, I think the Board got this one wrong. According to the Board, the Applicant made unsupported inferences about thread pitch. Maybe so, and maybe the Applicant overreached with the side-by-side drawing. But the Examiner didn't convincingly show that the FIG. 2 drawing itself illustrated helical winding.  So I think the Applicant won that round.

Even so, the linchpin of the Applicant's argument was overcoming the literal teachings of a reference. Words like "screwed in" and "setscrew" and "grub screw" strongly suggested helically wound threads. The Applicant fought hard to convince the Board that, despite these terms, Schafer's closure structure actually twisted or rotated into alignment with the receiver, and this twist-lock behavior did not require helical threads.

I thought the Applicant did a good job of marshaling facts to put together an argument against ordinary meaning. But in the end, this amounted to nothing but attorney argument. The Applicant should have entered evidence in the form of definitions, technical articles, or an expert declaration. I see no bright line rule for when it's appropriate for the attorney to expound upon the teachings of the reference, and when evidence is needed. But when the core of the argument is what a term means, I think you need evidence.

Finally, the Applicant may have held back the strongest argument. To me, the Appeal Brief statement "rotation or twisting can be interpreted and translated from the German into English as being 'screwed in' " was a hint that the translation from German to English was in error. But the Applicant didn't make this point explicit. And this making this argument would certainly require evidence.

If you wanted to argue translation error, what sort of points would you make and what sort of evidence would you submit? Are machine translations more vulnerable here?

Thursday, April 30, 2015

PTAB reverses indefiniteness rejection of claim using trademark Java

Takeaway: The Examiner rejected as indefinite the phrase "parsing the at least one Java annotation" on the grounds that Java was a trademark. The Examiner referred to MPEP 2173.05(u) , which directed the Examiner to reject a claim as indefinite when a trademark was used to identify a product. The Applicant appealed and argued that the relevant inquiry was whether a Person of Ordinary Skill In The Art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." According to the Applicant, the term was not indefinite because Java was understood by a POSITA to refer to "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.” The Board agreed with the Applicant and reversed the indefiniteness rejection.  (Ex parte Nikolov, PTAB 2015.)


Ex parte Nikolov
Appeal 20130000274; Appl. No. 12/314,706;  Tech. Center 2100
Decided:  March 25, 2015

The application on appeal was directed to web software that manipulated objects in a Service-Oriented Architecture (SoA) registry. The Specification acknowledged the existence of various application programming interfaces (APIs) that allowed programmatic access to an SoA registry. The same section mentioned one of these APIs: "the Java API for XML registries (JAXR). "

The Examiner rejected independent claim 1 as indefinite because the "trademark / trade name 'Java' [was used] to identify a programming language." The term "Java" appeared in the preamble ("accessible through a Java API for XML registries (JAXR)" and in the body ("parsing the at least one Java annotation").

The Examiner cited the (non-precedential) Board decision Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). According to the Examiner, Simpson meant that "when a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.”

 The Applicant traversed the indefiniteness rejection, and made five separate arguments:
  • Java identifies the product (the programming language) rather than the source of the product
  • the goods associated with the Java mark do not include "programming language"
  • the mark in Ex parte Simpson was indefinite since it did not adequately convey properties of the material, where "here there is no such uncertainty regarding what 'Java' conveys"
  • it's "illogical" to treat Java and C++ differently in a claim simply because the former is trademarked and the latter is not
  • thousands of issued patents include Java in the claims
In a Final Office Action, the Examiner noted that MPEP 2173.05(u) governed the use of trademarks and trade names in a claim: "if a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.” Responding to the Applicant's mention of C++, the Examiner indicated that an amendment to C or C++ would result in "similar 112 2nd rejections of indefiniteness regarding the use of trademarks or trade names. Responding to another Applicant points, the Examiner considered the "thousands of issued patents with Java in the claims" to be an "interesting statistic," but noted that applications are examined on a case by case basis. The Examiner therefore invited the Applicant to analyze some of these patents and to "present any common facts that trigger an exception to the rules of trademarks in claims," then explain "why this case similarly triggers an exception."

In the same Final Office Action, the Examiner discussed Ex parte Simpson in further detail:
     [Simpson] specifically provides that questions regarding a well-known meaning / satisfactory definition in the literature are questions that resolve around a 35 USC 112 1st rejection for sufficiency of written description for a "name used in trade" ... "We have considered MPEP(v) and note that all address the issue of enablement of a written description under 35 USC, first paragraph."
     Similar to Ex parte Simpson, no enablement rejection has been made. Similar to the Ex parte Simpson court, the Examiner declines to extend the enablement prong of the test of proper use of a trade name to cover indefiniteness of a registered trademark.
On Appeal, the Applicant argued that the use of Java in the claim did not render the claims indefinite per se. The inquiry for indefiniteness was whether a person of ordinary skill in the art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." The Applicant concluded that “a person of ordinary skill in the art would understand what is meant by ‘Java annotation’ and . . . ‘Java API for XML registries’”  because Java was "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.”

The Board agreed with the Applicant and reversed the indefiniteness rejection. The Board found this scenario "closely analogous" to a different non-precedential PTAB decision, Ex Parte O’Farrell (PTAB 2014). The Board explained as follows:
The O’Farrell panel held that the recitation of the trademark “Java” was not indefinite because “ 'Java' is a well-known and widely-used term identifying a particular programming language.” Id. Similarly, we find one of ordinary skill in the relevant art would have understood “Java” in the context of the “Java annotation” and “Java API for XML registries” to refer to the programming language known by that name at the time of Appellants’ invention.
My two cents: There's no doubt in my mind that Java is understood by a POSITA. And since that's the ultimate question when resolving indefiniteness, I say the Board got it right. The name of a programming language is fundamentally different than the name of a chemical composition. Using the trademark of a chemical composition is a problem because the nature of the composition could changes, so you don't know if you infringe or not. On the other hand, as long as a newer version of Java includes the annotation feature, a POSITA still understands "Java annotation" and is thus put on notice of infringement. And if the annotation feature is removed in a future version of Java, yet a patentee asserted against an infringer using an annotation-less Java, well, the claim could be found indefinite at that later time. 

Some of the Applicant arguments made during prosecution dug into trademark specifics (product vs source of product, associated goods), and I give some points to the Applicant for getting creative here. On the other hand, the "other patents use this language" argument is weak, and I didn't find the Java vs. C++ consistency argument to be compelling either. I think both the Applicant and the Examiner got derailed with the lengthy discussion of the MPEP and it's use of Ex parte Simpson. Responding to every single point made by the Examiner is not always the best strategy. The Appeal Brief would have been stronger if the Applicant had demonstrated that a POSITA understood Java, briefly distinguished Simpson, and stopped there.

The Board's finding that the meaning of Java was tied to the time of the invention highlights an interesting issue, because programming languages do change over time. With literal claim scope limited to Java at the time of filing, it would seem Doctrine of Equivalents is needed to expand to future versions of the language. But of course all claim terms are interpreted as of the time of invention, which makes the Board's finding just a reminder of something we should already know.

The PTAB decision mentioned in the MPEP and relied on by the Examiner, Ex parte Simpson, doesn't appear to be freely available online. The 1983 decision date is far too old for the PTAB's own decision database, and even too old for the BPAI decisions archive maintained by Franklin Pierce School of Law