Monday, June 30, 2014

New resource for searching and analyzing PTAB decisions

There's a great new resource available for practitioners interested in PTAB decisions: the Patent Board Ferret.

The Ferret includes both search and analysis tools. On the search side, you can search not only by text in the decision, but also by rejection type, disposition, art unit, Examiner, and decision date. On the analysis side, you can generate charts which answer questions like:
do some judge panels introduce new 101 rejections more than others?
do some Examiners have a high reversal rate for section 112?
do cases with oral hearings have a higher rate of reversal?

While the Ferret hasn't processed every single one of the decisions on the PTAB's official site, it does include almost 13000 decisions, and continues to grow. So the Ferret is now my default search engine for PTAB decisions.

I do still use to quickly look at recent decisions of interest to me. shows me all decisions issued on a particular day, along with Examiner name, Correspondent Name (i.e. law firm or sometimes corporation), issues decided, and disposition. has some analysis features too: it can generate spreadsheets for decisions by judge, law firm, tech center, etc.

Thursday, June 19, 2014

Board reverses obviousness when Examiner relies on Applicant's specification for equivalence of bidirectional fabric and metal plates disclosed in reference

Takeaway: The Examiner used the substitution rationale in an obviousness rejection, and relied on the Detailed Description section of the Applicant's own specification for a finding of equivalence. The Board reversed, explaining that "this disclosure is not an admission that can be used as prior art against Appellants." (Ex parte Bleibler, PTAB 2012.)  

Ex parte Bleibler
Appeal 2010009623; Application 10/502,744; Tech. Center 3600
Decided:  November 30, 2012

Independent claim 45 was directed to a concrete support reinforcer. One of the limitations at issue read "insert layers comprising a bidirectionally oriented fabric".

The Examiner rejected the claim as obvious. With respect to the "bidirectional" limitation at issue, the Examiner used a substitution rationale, substituting bidirectionally oriented fabric for the metal plates in Schwegler Figs. 2 and 3. As support for this rationale, the Examiner referred to portions of Applicant's Specification’s which taught that "various alternate insert layers, including bidirectionally oriented textile fabric and metal plates, could be used as would be appreciated by one skilled in the art and without departing from the scope of the invention."

On appeal, the Applicant argued that the Examiner's assertion that bidirectionally oriented fabric could be used  "was without support or citation,"  and that “such an unsupported assertion is an insufficient basis for rejecting a claim.”

In the Answer, the Examiner responded as follows:
Applicants have disclosed that metal plates are equivalent to fabric inserts or bidirectionally oriented fabric inserts.... As Applicants have disclosed this equivalence, and as Schwegler discloses the equivalent metal plates, the claim limitations are met.

The Board characterized the Examiner's position as follows. First, the embodiment of Schwegler Fig. 7 discloses metal plates 15 as insert layers between split strips 2สน at the end of carbon or CFK panel 2. Second, in view of these metal insert layers, a POSITA would substitute bidirectionally oriented fabric for Schwegler’s metal plates because Applicant's Specification admits that both bidirectionally oriented fabric and metal plates can be used for the insert layers.

The Board reversed, explaining that it was impermissible to use of the Applicant's teachings to show a finding of equivalence in a substitution rationale.
Appellants are setting forth a description of their invention and Appellants disclose that the insert layers can be made of either fabric inserts or metal plates. This disclosure is part of Appellants quid pro quo for possibly receiving a patent issued from the present patent application; however, this disclosure is not an admission that can be used as prior art against Appellants as the Examiner appears to have attempted to do. Schwegler’s Figure 7 embodiment discloses using metal plates as the insert layer and metal plates do not meet claim 45’s language of bidirectionally oriented fabric. Thus, the Examiner has failed to show that it would have been obvious to one of ordinary skill in the art to modify Schwegler A to substitute bidirectionally oriented fabric for the metal plates 15 disclosed therein.

My two cents: I give the Applicant points for recognizing that equivalence was at issue. The issue would have been clearer had the Applicant explicitly noted that the Examiner relied on the Applicant's own disclosure for this equivalence, instead of characterizing the Examiner's assertion as "without support or citation."

Equivalence is one of the prongs of the substitution rationale for obviousness:

(3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable
MPEP 2143.B
It's pretty clear to me that a "finding" can't come from the Applicant's disclosure. A "finding" must come from one of the cited references, or other prior art. Or possibly though Official Notice, if appropriate.Not all Examiners take these findings seriously, which leads to appeals like this one.

The statement relied by the Examiner was clearly not an admission of any kind. But even if it was, I'm not sure it was an admission of equivalence. The relied-upon statement read:

Preferably, the individual layers of the lamellar structure are based on a thermoplastic conventional plastic material and additionally have interposed fabric inserts or metal plates as the intermediate layers, most preferably a bidirectionally oriented fabric, especially a bidirectionally oriented aramide fiber fabric.

Isn't this a list of embodiments using different intermediate layers: metal plate; fabric; bidrectionally oriented fabric; bidirectionally oriented aramide fiber? Which isn't the same as saying those different layers are equivalent, right?

Friday, June 13, 2014

Snapshot of 101 Patent Eligible Subject Matter Decisions in May 2014

Posted by: Adam Ellsworth

As the PTAB recently admitted, "the case law regarding 101 continues to evolve" (Ex parte Fickle, Appeal No. 2011-007587).

I thought it might be helpful to look at cases decided by the PTAB in the last month to see if there are any patterns in how the Board is deciding issues of patent-eligible subject matter under 35 U.S.C. 101. It turns out that the case law regarding computer-readable media has pretty-well settled at the PTAB, but it is harder to define clear patterns in decisions regarding the patent-eligibility of other types of methods and systems.

The Rejection of Computer-Readable Media

I considered 32 cases that addressed issues of patent-eligible subject matter under 35 U.S.C. 101. The majority of these cases (22 cases) involved computer-readable media. The takeaway from all of these cases is that in light of Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013 (precedential), do not expect to prevail at the PTAB by arguing that a "computer-readable medium," or even a "computer-readable storage medium," does not include transitory signals. The decisions were unanimous.  If a claim directed to a computer-readable medium omits the words "non-transitory" and lacks other structural limitations, then the computer-readable medium encompasses transitory signals and the claim is not patent-eligible.

Among the cases directed to computer-readable media, Ex parte Makkinejad (Appeal 2011-012801; Decided May 15, 2014) is interesting, because it was not directed to just a computer-readable medium, but rather to a computer-readable storage medium. The result, however, was the same.
Claim 19 of the application is directed to a "computer readable storage medium" and the claim was rejected by the Examiner under 35 U.S.C. 101 as being directed to patent-ineligible subject matter, since, the Examiner argued, the claim encompassed transitory signals. The Appellant argued that "the term 'storage media' would not include any embodiments in which the medium is merely a propagation medium, as opposed to a medium that actually stores data." The Board disagreed and cited as an example, "circulating memory," which uses a delay line to store information in the form of a pattern of pulses. (I'm not convinced by the Board's example, since circulating memory is in itself a physical structure, and the "pattern of pulses" cannot exist without the delay line, sensors, and amplifiers described by the Board. But the Board sustained the rejection of claim 19 under 35 U.S.C. 101.) 

The Rejections of Other Types of Claims (Not Computer-Readable-Media)

Among the non-computer-readable medium cases, two were cases involving biological processes, Ex parte Schatteman (Appeal No. 2011-013696) and Ex parte Cardwell (Appeal No. 2012-001657). In both of these cases, the Board reversed rejections under 35 U.S.C. 101. Among the remaining eight cases, the Board reversed 101 rejections in three cases and upheld 101 rejections in five cases.

101 Rejections Reversed

In the cases in which 101 rejections were reversed, the claims recited physical structures.

Processor and Memory: In Ex parte Cutlip, Appeal No. 2011-011658, rejected claim 7 recited a system comprising a processor and memory configured to provide instructions to the processor, and multiple "modules" to perform various functions. The modules are not explicitly tied to the processor and memory in the claim (such as by having the processor execute instructions of the module), but the specification described functions being performed by the processor. The Board reversed the Examiner's rejection of claim 7, stating that the Examiner had not established a prima facie case of non-statutory subject matter.

Data storage device: In Ex parte Bogues, Appeal No. 2011-013523, the Board held that a claim directed to a "data storage device" excludes transitory signals.

LAN and WAN: And in Ex parte Waites, Appeal No. 2012-000932, the Board held that claim elements "local-area network" and "wide-area network" include computers and associated devices, and therefore the claim did not encompass software per se.

101 Rejections Sustained

Computer program products: In the cases in which 101 rejections were sustained, one of the cases (Ex parte Arrasvuori, Appeal No. 2012-002671) included claims directed to computer program products, and the Board held that the claims could encompass software-only embodiments, and therefore were directed to patent-ineligible subject matter.

Hardware System: In one case, Ex parte Adam (Appeal No. 2012-002144), the claims recited a method in which requests are received, and messages published "by a publish/subscribe hardware system." However, the Board held that this recitation was insufficient to render the claims patent-eligible, stating that the "publish/subscribe hardware system" was merely a "nominal recitation of a computer."


While decisions directed to computer-readable media are consistent in stating that such media encompass transitory signals, other 101 decisions appear to vary on a case-by-case basis. Claims reciting physical structures that perform the steps of the claims are more likely to overcome 101 rejections at the PTAB, but a claim reciting a generic physical structure, such as a "hardware system," may not be patent-eligible.

Thursday, June 5, 2014

Board reverses obviousness when Applicant uses reference to explain POSITA's understanding of "different materials"

Takeaway: The Examiner interpreted "different materials" to cover different phases of a shape memory material (Nitinol). The Applicant argued that these different phases have different properties but are still the same material, and used the teachings of the prior art to make this point. The Board found that the prior art used the term in the same way the Applicant did, which "supports the understanding that different phases of Nitinol would not be described as different materials. This evidence weighs in favor of concluding that a person or ordinary skill in the art would not use 'different materials' to describe the different phases of Nitinol." (Ex parte Thistle, PTAB 2012.)


Ex parte Thistle
Appl. 11/258,278; Appeal 2011004401; Tech. Center 3700
Decided:  June 13, 2012

The application on appeal involved a stent, which is a medical device used to hold open a blood vessel. The claimed stent was made of a shape-memory material, which can undergo a reversible change from a first "remembered" shape to a second shape. One common shape-memory material is nickel titanium alloy, also known as nitinol.

 A representative claim on appeal read:
     1. A barb-implant combination for retaining an implant in a body lumen, the barb-implant combination comprising
     at least a first barb element constructed from a first material and adapted to be attached to or comprise a part of the implant and
     a second barb element adapted to engage a lumen in which the implant is adapted to be deployed, said second barb element comprising a second material different from the first material,
     wherein the second material is a shape memory material which yields by undergoing a stress induced phase change ...
(Emphasis added.)
The Examiner rejected the independent claim as obvious over a combination of three references. The Examiner relied on Richter to disclose the "different material" limitation highlighted above. The Examiner asserted that
Richter discloses thermo-mechanically treating selected portions of Nitinol to create portions having different properties, such as differences in flexibility. A Nitinol barb that has been thermo-mechanically treated so that the first and second elements of the barb have different properties meets the limitation a first barb element constructed from a first material and the second barb element comprising a second material different from the first material since the first and second elements have different properties.
The Applicant traversed this point. The Applicant first discussed the teachings of Richter relied on by the Examiner:
     Richter suggests that this increased flexibility can be achieved by using a different material in one set of connectors than another set of connectors.  Id.  Richter does not teach or suggest that a first section of a flexible connector is made of a first material and a second section of that same connector is made of a second material [as required by claim 1].
     Richter goes on to state "alternatively, if, e.g., NiTi (Nitinol) is utilized," flexibility characteristics can be changed by thermo-mechanically treating the stent, changing the shape of the U loops, or reducing the amount of material.
Applying these teachings to the context of the claims, Applicant then argued as follows:
[The combination] would only suggest changing the flexibility by thermo-mechanically treating a Nitinol barb, changing its shape, or reducing the amount of material to change the flexibility, not by using different materials in a first portion of  the barb element and a second portion of the barb element.  In this combination, the barb of Nott would still be made entirely of one material - Nitinol.
After the Examiner issued a Final Office Action maintaining his position, the Applicant went to appeal. The Appeal Brief reiterated the same arguments made during prosecution.

In the Answer, the Examiner clarified his claim interpretation by explaining that "the first material will be martensitic nitinol with entirely different properties than the second different material austinetic nitinol." (Emphasis added.)

In the Reply Brief, the Applicant reiterated again that "[t]he first portion and the second portion may be in different phases at the time, but it is still the same material."

On appeal, the Board concluded that a person of ordinary skill in the art would not interpret the "different materials" limitation (highlighted in the claim reproduced above) to cover martensitic Nitinol and austenitic Nitinol as the two different materials.

One factor noted by the Board in reaching this conclusion was the Applicant's use of the claim term “different material" in a manner consistent with prior art usage of the term. "[This] supports the understanding that different phases of Nitinol would not be described as different materials." The Board then analyzed in detail the passages of the Richter reference used in the Appeal Brief argument:
     Appellants direct attention (App. Br.13) to the Richter reference, which teaches that stent flexibility can be “accomplished in a variety of ways, for example, by utilizing a different material, by treating the material e.g., by utilizing stainless steel annealing to impart selective degrees of hardness to different portions of the stent.” (FF 4.) Immediately following that teaching, Richter states that “[a]lternatively, if, e.g., NiTi (Nitinol) is utilized, selected portions of the stent may be selectively thermo-mechanically treated” to achieve martensitic and austenitic portions. (FF 3.) As Appellants argue, Richter explicitly distinguishes using different phases of Nitinol as an alternative to using different materials. This evidence weighs in favor of concluding that a person or ordinary skill in the art would not use “different materials” to describe the different phases of Nitinol. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996).
(Emphasis added.)
Based on this claim construction, the Board reversed the obviousness rejection.

My two cents: I give the Applicant points for recognizing that claim construction was the real issue. And for using that framework when discussing the reference.  But the Board did a  much better job than the Applicant in explaining how the reference supported the Applicant's claim construction and undermined the Examiner's unreasonably broad construction.

The Applicant took the usual approach of repeating the reference teachings and stating that those teachings were not the same as the claim limitation at issue. The Board went one tiny step farther and characterized these teachings as "explicitly distinguish[ing] using different phases of Nitinol as an alternative to using different materials." That simple sentence really drove the point home and made a persuasive argument.

Many Applicants are hesitant to make any sort of characterization about a reference. But the way I see it, a simple linking sentence like this one can often be the difference between a persuasive argument and a conclusory assertion. Without this sort of characterization, you're relying on the reader to figure out that Richter's "alternatively" sentence is really an explicit distinction. The quotes from Richter set up the argument, but don't go quite far enough. In my experience, the most persuasive arguments almost always involve some level of characterization.

Thursday, May 22, 2014

Federal Circuit rules on indefiniteness standard and on "adapted to"

The recent Federal Circuit decision In re Packard looked at the standard for indefiniteness used by the PTO. During prosecution, the PTO applies the "two or more plausible interpretations" standard, per the precedential Board decision Ex parte Miyazaki. The standard applied by the courts for an issued patent is instead "insolubly ambiguous." The court in In re Packard declined to reach the larger question of whether the PTO can use this different standard, and decided the narrower question of whether the indefiniteness rejection was proper. The court affirmed the rejection because the Applicant (pro se inventor) didn't substantively respond to the indefiniteness rejection.

In re Giannelli from earlier this year was also a review of a PTAB decision, this one involving claim construction of "adapted to." The PTAB affirmed an obviousness rejection of a claim to an exercise machine, taking the position that the prior art chest press was "capable of" performing the function recited in the claim. The Federal Circuit reversed, after finding that in this particular case, "adapted to" required more than mere capability. The court relied on the specification's disclosure of embodiments that were specifically designed for rowing.

Ryan Alley's blog has thoughtful coverage of both decisions:
   In re Packard – Claim Drafting and Prosecution Lessons
   In re Giannelli – Claim Drafting and Prosecution Lessons

Ryan's blog is my favorite Federal Circuit blog because it offers many practical lessons for prosecutors. 

Tuesday, May 20, 2014

When does "a" mean "the"?

Claims use "a" and "the" in ways that are at odds with plain English usage, which can lead to some strange results.

Let's say I'm describing a text processing algorithm which counts how many times a pattern is found. In plain English, it's perfectly natural to express this as "THE number of occurrences". However, claim drafting reserves "the" for previously-introduced elements. So a claim would probably use "a" instead, to read "A number of occurrences".

Note that in plain English this construction has a completely different meaning: "a number of" often means "some" or "several" (e.g.,"a number of widgets were defective"). Even so, usually no one makes an issue of using "A" to mean "THE" even though it's counter to the plain English meaning. Our brains have been trained to apply a sort of patent filter when reading claims, and we intuitively understand that the drafter really meant "THE number of occurrences even though the claim reads "A number of occurrences."

But what if you don't assume the drafter was using patentese rather than plain English? What if you instead take the position that "a number of" has two different meanings. Then isn't the claim indefinite?

In the recent decision Ex parte Whitney (PTAB 2013), the Board said Yes, it is indefinite. The claim language at issue was: "comparing a number of occurrences of a text pattern in the collection of text at one moment in time with numbers of occurrences of the text pattern in the collection of text at other moments in time.” The Board explained as follows:
     Applicant's arguments ... focus on the failure of the prior art to disclose or suggest comparing an actual numerical count of occurrences, i.e., “a number of occurrences,” of a text pattern in a collection of text at one moment in time with the actual numerical count of occurrences of the text pattern in the collection of text at other moments in time. However, it is equally proper to interpret the phrase, “a number of occurrences,” as the Examiner does, to refer to an indefinite group of occurrences of a text pattern, e.g., some occurrences or several occurrences of the text pattern that are compared at different points in time based on some unspecified criteria.
     Because the claim language is susceptible to two equally reasonable interpretations, the claim language is ambiguous, and, thus, indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). Therefore, we will enter a new ground of rejection of claims 1-50, 53, and 54 as indefinite under 35 U.S.C. § 112, second paragraph.
The Examiner did not raise this issue. And because the claim was indefinite, the Board refused to decide on the prior art rejection. (In re Steele, 305 F.2d 859, 862 (CCPA 1962)(A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.)

A few months earlier, the Board reached the opposite result in Ex parte Qu (PTAB 2013). The limitation at issue read "wherein an arithmetic sum or difference of twice a number of stator teeth and a number of the stator poles equals a number of rotor poles." The Examiner asserted that it was unclear whether "a number of" ... "intended to refer to the total number of teeth or poles or some subset thereof.” The Examiner then interpreted the phrase to mean "subset of teeth" in the prior art rejection. The Examiner explained as follows: 
[T]he devices disclosed in Qu satisfy equation (1) because any number of rotor poles, stator poles, and stator teeth can meet the claimed limitation since ‘a number’ can be any integer, up to the maximum number of poles/teeth disclosed by Qu.
The Board found the claim was not indefinite in view of the specification:
In determining whether a particular claim is definite, the claim’s language must be analyzed in light of the content of the particular application, the prior art’s teaching, and the interpretation that would be given to the claim’s language by a person of ordinary skill in the art at the time the invention was made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009).
The Board found that an equation in the specification made clear that "A number of" meant "THE number of":
The number of the rotor poles, the number stator poles and the stator teeth are configured to satisfy: 2 * Steeth ± Spole = Rpole, wherein STEETH refers to the number of stator teeth 30, SPOLE refers to the number of stator poles and RPOLE refers to the number of rotor poles.
Using this construction, the Board then reversed the prior art rejection.

I think these two decisions are outliers. In the first place, I think most Examiners use the same "patentese" rules of antecedent basis that claim drafters do. Most don't reject as indefinite, and most don't take the position that "A number of" means "SOME of". So the Board probably doesn't see this issue raised by the parties very often. I also looked for other decisions where the Board raised the issue, and didn't see any.

But these decisions do highlight how very different claim language is from plain English.