Wednesday, March 25, 2015

PTAB reverses when Examiner interprets "each pixel of a color image" as referring to pixels in different images

Takeaway: The Applicant appealed the obviousness rejection of claims to digital image processing. The claim language at issue was: "for each of multiple given pixels of a color image, determining ..." The Examiner read this on pixels in different images, and the Applicant argued it was limited to processing pixels in the same image. The Examiner relied on Baldwin Graphic Systems, Inc. v. Siebert, Inc., The Applicant considered the context of the determining step as a whole, including the term "local neighborhood." The Board agreed with the Applicant and reversed the rejection. (Ex parte Staelin, PTAB 2013)

Details:
Ex parte Staelin
Appeal 2012000632; Appl. No. 11/280,097; Tech. Center 2600
Decided:  February 28, 2013

The application on appeal was directed to digital image processing. A representative claim on appeal read:
     A method, comprising:
     for each of multiple given pixels of a color image having multiple color channels, determining a respective local difference measure value from a value of the given pixel and a respective value of at least one other pixel in a local neighborhood of the given pixel for each of multiple of the color channels;
     for each of the given pixels, ascertaining a respective color correlation value measuring deviation of the respective local difference measure values determined for the multiple color channels  from a reference: and
     calculating a level of noise in the color image from one or more of the ascertained color correlation values;
     wherein the determining, the ascertaining, and the calculating are performed by a machine.
(Emphasis added.)
The claim limitation at issue on appeal was the "respective local difference" step emphasized above.
This independent claim was rejected as obvious using a combination of two references.

The Examiner asserted that this step corresponded to the SAD (Sum of Absolute Differences) calculation in the primary reference. Applicant argued that the SAD (Sum of Absolute Differences) measure disclosed in the reference did not correspond to the claimed step because it used pixels in different frames. Thus, according to the Applicant, "the SAD measure does not constitute 'a respective value of at least one other pixel in a local neighborhood of the given pixel' " as claimed.

In a later Office Action, the Examiner gave this additional explanation:
However, the Examiner notes that "determining a respective local difference measure value [...] " is taught by Hamosfakidis by virtue of the fact that Hamosfakidis finding difference between pixels in a local neighborhood be it for a single image or of different frames as the Applicant argues.

The Applicant appealed. In the Appeal Brief, the Applicant picked up on the Examiner's explanation and asserted that as properly construed, the "local difference" is determined based on pixels in the same color image. The Applicant made a detailed claim construction argument, using dictionary definitions and focusing on the plain meaning of "local" and of "neighborhood." The Applicant concluded that "the plain meaning of the 'determining' element of claim 1 does not support the Examiner's position that the measurement of differences between  pixels of different frames."

The Examiner responded in the Answer as follows:
The examiner notes that the applicant does not claim that the determining step is done for the "same color image"... [T]he applicant does claim "a color image" but the examiner notes that in for example  in KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) and in Baldwin Graphic Systems, Inc. v. Siebert, Inc., the court confirmed that the use of the indefinite articles "a" or "an", in an open-ended claim containing the transitional phrase "comprising", carries the meaning of "one or more."
The Board found the Examiner's claim construction to be unreasonable:
We agree with Appellants that the Examiner's construction is unreasonable. The language of claim 1 recites ''for each of multiple given pixels of a color image having multiple color images." Therefore, we interpret the claim language of the "determining" step to require that the local distance measure be determined in the same color image. As noted by Appellants, Hamosfakidis teaches measuring differences between different frames,  i.e. different color images. Therefore, Hamosfakidis cannot teach taking a local difference value between a given pixel and a one other pixel  in a local neighborhood  of the given pixel, in a color image.
(Emphasis in original.)
The Board then reversed the obviousness rejection based on the Examiner's unreasonable construction.

My two cents: This decision makes sense to me, but I wish the Board had given a better explanation. The Board's phrasing suggests that it's the presence of "each of" that leads to the conclusion that "image" is limited to a single image – despite the presence of "a." Which makes sense to me, although perhaps my thinking is colored by my background as a programmer.

The Applicant emphasized the terms "local" and "neighborhood" in concluding that the repeated pixel processing ("for each") was performed on the same image. The Board didn't comment on how persuasive this piece of the argument was.

Though I think the Board got this one right, I wouldn't be surprised to see other panels apply the "A means one or more" rule and affirm the rejection. Amending to "a single color image" would have forced the Examiner to change his rejection.

Thursday, March 19, 2015

PTAB reverses § 103 when Exaniner's combination adds feature already present in primary reference


Takeaway: An Applicant appealed claims to a zoned HVAC system. The Examiner rejected as obvious using a combination of two references, Kolk and Petite. The Examiner stated that Kolk did not disclose a remote temperature control function, and asserted that Petite disclosed this feature as  "[an] additional function from remote location beside the utility." "Additional function" then served as the rationale for combining Kolk's HVAC system with Petite's remote temperature control. The Board reversed after finding that Kolk did provide remote temperature regulation. The Board reasoned that since Kolk already provided this feature, a POSITA would not view Petite's remote control as a reason for modification. (Ex parte Tessler, PTAB 2014.)

Details:

Ex parte Tessler
Appeal 2012-006616; Appl. No. 12/700,643; l 
Decided:  October 2, 2014

The application on appeal was directed to a HVAC system with a wireless thermostat. "[A] remote source communicates with a wireless controller [to control energy usage] and sends signals to the wireless controller via a gateway located near or, in one implementation, forming part of the wireless controller." The originally filed claims generally captured the interaction between the local gateway, the wireless transceiver, and the thermostat controller which allowed the user to changecontrol parameter(s) from a remote location.
 
The first Office Action included multiple rejections of the independent claims, including a § 103 rejection using Kolk and Petite. Kolk disclosed a temperature regulating system utilizing energy price information, and the Examiner relied on Kolk for most of the claim elements. The Examiner noted that Kolk disclosed a module that used telephone lines or the Internet to communicate with an outside source, but did not disclose gateway communication with a wireless receiver. The Examiner asserted that Petite disclosed this feature "as an alternative suitable communication." Also, while Kolk did not disclose a remote temperature control function, the Examiner asserted that Petite disclosed this as "additional function from remote location beside the utility."

This "alternative suitable communication" and "additional function" then served as the Examiner's specific rationale for combining. The rejection also mentioned the "predictable results" rationale from KSR. Finally, the Examiner asserted that it was "well known in the art that a HVAC with single zone and single thermostat can be extended to a HVAC system with multiple zones and multiple thermostats," and cited several references as evidence of this finding.

The Applicant made various amendments resulting in independent claims of different scope. Independent claims 1 and 19 were amended so that control of the thermostat was "separate from any utility based control" and the wireless transceiver was located in a housing assembly. Independent claim 13 was amended differently, to explicitly recite dual zones, thermostats, and transceivers. Claim 13 then read:
     13. A zoned HVAC system having two or more zones, comprising:
     a local gateway;
     a first thermostat for controlling a first zone of the zoned HVAC system, the first thermostat having:
          a first wireless transceiver for wirelessly communicating  with the local gateway of the building or other structure, wherein the local gateway is located remotely from the HVAC controller;
          a first controller coupled to the first wireless transceiver ... [and] configured to allow a user to change one or more of the first control parameters from a remote location on the communications network via the local gateway and the first wireless transceiver [of the first controller] ;
     a second thermostat for controlling a second zone of the zoned HVAC system, the second thermostat having:
          a second wireless transceiver ...
          a second controller... configured to allow a user to change one or more of the second control parameter from a remote location on the communications network via the local gateway and the second wireless transceiver [of the second controller].
In addressing the § 103 Kolk / Petite rejection, the Applicant argued each independent claim separately but focused mostly on independent claim 1. For claim 13, the Applicant argued that the combination did not disclose "many elements of claim 13 including, for example, a zoned HVAC system having two or more zones comprising [first and second thermostats for controlling respective zones." (Emphasis in original.) Despite this assertion, Applicant did not specifically explain how claim 13 distinguished over the combination made by the Examiner.

In a Final Office Action, the Examiner maintained the § 103 Kolk / Petite rejection. As an additional justification for the conclusion of obviousness, the Examiner also added these additional statements about Petite:
Petite et al. disclose remote monitoring and control device can either for utility company (C-1, L-60 to C-2, L-6) or environmental or safety systems (C-2, L-7-14) in the same field of endeavor for the purpose of providing multiple usages of the apparatus. Petite et al. also disclose the transceivers are electrically interfaced with the thermostat (C-5, L-58-64). 
The Applicant filed an After Final Response and argued:
[C]laim 13 recites, for example, a local gateway, and first and second thermostats each having a respective first or second wireless transceiver for wirelessly communicating with the local gateway. While multiple zone HVAC systems may have been known, Applicants submit that the recited first and second thermostats, each capable of communicating with the same local gateway, particularly in combination with the other elements of claim 13, cannot fairly be considered to be taught, discloses or suggested by Kolk et al. or Petite et al.
(Emphasis in original.)
The Examiner issued an Advisory Action simply restating the KSR predictable results rationale. The Applicant appealed, filing a Pre-Appeal Brief Request and then an Appeal Brief. Both handled the § 103 Kolk and Petite rejection by repeating earlier arguments. 

The Examiner's Answer maintained all rejections and responded to several Applicant arguments. With respect to claim 13, the Examiner referred to the three patents cited earlier as evidence that "multi-zones associated with multi-thermostats is well known in the art." The Examiner then explained how Petite disclosed local gateway communication
Referring to Fig.2, Petite discloses the same one local gateway 220 communicates with sensor  / actuator / transceiver 222 and sensor / actuator/transceiver  224. The sensor / actuator  can be thermostat (C-5, L-63). Therefore, one local gateway 220 is able to communicate with multiple thermostats 222 and 224 and the rejection is valid.
The Applicant filed a Reply Brief and addressed claim 13 as follows:
... Kolk et al. and Petite et al.,even when combined with [evidentiary reference] Liebl et al., cannot be fairly said to teach first and second thermostats as recited in claim 13. The Examiner has not provided any articulated reasoning with rational underpinning [as required by KSR] to support the conclusion of obviousness. The Examiner appears to be asserting that one could modify Kolk et al. to achieve the claimed method, which is an improper ground for obviousness. The Court in KSR further stated: "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." The Examiner has not provided any objective reason to modify Kolk et al. in the manner recited in claim 13, other than relying on the instant specification, which is clear error.
On appeal, the Board reversed the obviousness rejection of Kolk in view of Petite, finding that the Examiner's rationale for combining was deficient.
     We find that the Examiner’s stated reasoning, “so as to have an alternative suitable communication and remote HVAC control as additional function from remote location beside for the utility,” is based on the use of impermissible hindsight reconstruction in view of the Appellants’ disclosure. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
     At the outset, we note that for the reasons set forth supra, the Examiner does not establish that the remote user in Petite is not the utility company. [The Examiner instead relies on Petite's remote use by "environmental or safety systems."] Furthermore, we note that Kolk’s system is already remotely controlled. See Kolk, Fig. 1. We thus find the Examiner’s rejection insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to include Petite’s remote system into Kolk’s remote temperature regulating system. The Examiner has not provided any findings that either Kolk or Petite recognized a problem with the remote technique used in Kolk. As such, absent hindsight, we fail to see why one having ordinary skill in the art would have been led by the teachings of Petite to modify the temperature remote system of Kolk in the manner claimed.
My two cents: I picked this decision because it illustrates a good way to attack an obviousness rejection: advantageous function X provided by reference B is not a proper reason to combine if reference A already has advantageous function X. Here, the Board reasoned that since Kolk already allowed remote temperature regulation, a POSITA would not view Petite's remote control as a reason for modification.

The Applicant didn't really make this specific argument. Yeah, the Applicant argued the Examiner didn't provide an "objective" reason to combine, but that was made in the context of the Examiner's "multi-zone HVACs are well-known" statement. The Applicant essentially argued that "could modify to add the feature" is not a proper § 103 rationale. And that wasn't the rationale used by the Examiner.

I'm actually surprised by the reversal here, since the Examiner did include KSR's "predictable results" as a rationale. (An alternative one? As a supplemental explanation?). The Board usually summarily affirms that rationale with nothing more than a bit of hand-waving as to the factual findings required for this rationale. Here, the Board reversed the § 103 based on the explicit motivation from Petite, and appeared to ignore the "predictable results" rationale.

Finally, I note that the Examiner's factually findings about one of the features at issue -- remote temperature regulation were actually inconsistent. In discussing Kolk, the Examiner explicitly found "thermostat 26 including a communication module communicating with a remotely located outside source 40." Which is arguably a teaching of remote temperature regulation. But then the Examiner proceeded to disavow this teaching, finding that "Kolk does not disclose ... remote temperature control function." The Board appeared to make their own finding about this feature, and didn't comment about the Examiner's inconsistent findings.

Here's an interesting question: since already Kolko disclosed the feature at issue, there really isn't a need to combine with Petite to obtain this feature. The Board took this and reasoned that the Examiner's rationale was therefore improper. But why doesn't it make the rationale irrelevant, as opposed to improper? Sure, you need Petite for the other features missing from Kolk, and you need a modification rationale for each of those features. But not for the remote temperature regulation feature found in Kolk, right?

Thursday, March 12, 2015

Board finds non-analogous art when Examiner mistakes advantage in reference with problem solved by reference

Takeaway: In appealing an obviousness rejection of a semiconductor device, the Applicant argued that one of the references was non-analogous art. The Examiner asserted that the anti-fogging film disclosed in the reference had the same purpose – excellent durability and wear resistance – as the claimed invention, and was therefore analogous. The Board found that the Examiner had erred in characterizing the problems. The Board found that the problem solved by the invention was "protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer". The Board found that reference solved a different problem: fogging of window glass, mirrors, and lens. The Board therefore reversed the § 103 rejection. (Ex parte Seo, PTAB 2013.)

Details:
Ex parte Seo
Appeal 2011-005820; Appl. No. 11/378,799; Tech Center 2800
Decided:  October 11, 2013

The application on appeal was directed to a semiconductor device for an LCD display. The independent claim on appeal read:
     1. A display device comprising:
     a substrate;
     a metal layer formed on the substrate and including a top surface and a side surface, wherein the metal layer comprises aluminum or an aluminum alloy;
     an insulating layer covering the metal layer; and
     an aluminum complex oxide layer disposed between the top and side surfaces of the metal layer and the insulating layer, wherein the aluminum complex oxide layer is formed by applying to the metal layer a coating solution that comprises at least one selected from the group consisting of zirconium, tungsten, chromium and molybdenum.
The Examiner rejected the originally filed independent claim 1 as obvious over Doushita in view of Applicant Admitted Prior Art. The Examiner relied on Doushita for the aluminum complex oxide layer element (location and composition), and AAPA for everything else. As a reason for combining, the Examiner asserted that Doushita's coating would provide "the structure of the admitted prior art with 'excellent durability, wear resistance, anti-fogging property and anti-fogging sustainability property'. "

During prosecution, the Applicant made various amendments, but the Examiner maintained the obviousness rejection using Doushita and AAPA. The Applicant also made one argument: that Doushita was non-analogous art. As a preliminary matter, the Applicant noted that Doushita and the invention were in different classifications: Class 428 "Stock material or miscellaneous articles" as compared to Class 438 "Semiconductor device manufacturing: process." Moving on to the test for analogous art, the Applicant first discussed the respective fields of invention. Doushita disclosed an anti-fogging article used for "buildings, vehicles, optical components, [etc.]," but this list did not include a semiconductor device (Applicant's field). The Applicant then discussed the purpose or problem solved: for Doushita, anti-fogging, with durability and wear resistance as secondary characteristics; for the Applicant, corrosion of aluminum, with secondary characteristics of electrical resistance, electrical conductivity, and adhesive strength. Therefore, "Doushita is not reasonably pertinent to the specific problem with which the Applicants were involved."

During prosecution, the Examiner did not directly respond to all of the Applicant's non-analogous art arguments. The Examiner did clarify that Doushita was "not used for the claimed structure but for the substitution of the conventional aluminum oxide layer formed on the line." The Examiner also explained that several of Doushita's applications for the anti-fog coating (i.e., "optical component," "medical equipment," "mirror," "lens") amounted to an application for semiconductor devices.
 
After several rounds of prosecution (including an RCE), the Applicant appealed. In the Appeal Brief, the Applicant reiterated the previously made non-analogous art argument, concluding with: 
Applicants fail to understand how the problem of anti-fogging of window glass, mirrors, and lens is reasonably pertinent to the problem of protecting a metal layer 212 of a semiconductor from corrosion with an aluminum complex oxide layer 213.
 The Applicant separately argued that the Examiner's rationale for combining was insufficient:
     Doushita simply discloses an aluminum oxide used as an anti-fogging article. Nowhere does Doushita disclose the structural relationship of the aluminum oxide layer relative to any other layer(s). Doushita fails to disclose the aluminum complex oxide layer is disposed between the top and side surfaces of the metal layer and the insulating layer. As such, without more structure specifics, Applicants submit the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer.
     Therefore, there is no suggestion to combine AAPA and Doushita with each other so as to obtain the technical features of Applicants' claimed subject matter.
Notably, the Applicant did not argue that the combination failed to disclose the claimed limitations.

The Examiner's Answer include (for the first time) a specific response to the non-analogous art argument. The Examiner asserted that Doushita's teaching of an aluminum complex oxide layer with "excellent durability and wear resistance" was "the same purpose as the claimed invention" and was therefore "reasonably pertinent and has enough motivation to be considered." Addressing Applicant's argument about classifications, the Examiner had "considered or cross referenced" the "miscellaneous articles" referred to in the title of Class 428. "Further, 'optical component' is a semiconductor device; and  Class 438 'Semiconductor device manufacturing: Process' deals with this device formation."

The Board  reversed the obviousness rejection. The Board first explained that the field of endeavor was determined by looking at "explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Board then characterized the problem solved by the reference (fogging of window glass, mirrors, and lens) and the problem addressed by the claimed invention (protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer).

The Board concluded that the anti-fogging properties of Doushita’s film "would not have logically attracted the attention of an artisan possessing knowledge of Appellants’ Admitted Prior Art." Despite Doushita's mention of "optical components" as a use for the disclosed anti-fogging article, the Board found that the anti-fogging properties "would have little utility on a semiconductor device."

As an independent basis for reversal, the Board agreed with the Applicant's second argument that the Examiner's rationale for combining was insufficient. Although Daushita taught the use of aluminum oxide as a coating and listed various advantageous properties of the coating, Daushita lacked the structural details of the oxide that were recited in claim 1. The Board agreed that "without more structure specifics, ... the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer."
My two cents: An important part of analogous art analysis is framing the problem. Here, the Examiner confused an advantage disclosed in the reference for a problem solved by the reference. Which seems to be related to focus. It's common for a reference to have a laundry list of advantages, Here, that list did include an advantage – wear-resistance – that overlapped with an advantage of the invention – corrosion protection.  But as suggested by the title ("Non-fogging article and process for the production thereof"), the problem solved by the reference was not susceptibility to wear, but fogging. Kudos to the Applicant for honing in on this winning argument.

Tuesday, March 3, 2015

Board okays Examiner's reliance on drawings alone, despite silence as to scale

Takeaway: The Applicant appealed an obviousness rejection In an application directed to a semiconductor structure. The Examiner relied solely on prior art figures to teach relative dimensions as claimed. The Applicable argued that such reliance was improper as a matter of law because the reference did not mention scale. The Board disagreed, finding "sufficient detail and precision [in the drawings] to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written description supports those findings and conclusions." (Ex parte Sato , PTAB 2014.)

Details:
Ex parte Sato
Appeal 201201276; Appl. No. 11/686,892; Tech .Center 2800
Decided:  March 20, 2014

The application on appeal was directed to an LED. The limitations at issue involved the relative dimensions of structures within the LED.

During prosecution, the Examiner rejected originally filed claim 9 as obvious over Kwak in view of Applicant Admitted Prior Art (AAPA).
     9. A method of manufacturing a semiconductor light-emitting device, the semiconductor light-emitting device including a semiconductor layer and a first electrode (24) on a first surface (11) of a semiconductor substrate (10) and a second electrode (40) on a second surface (12) of the semiconductor substrate (10), the semiconductor layer including a light-emitting  region (22A), the method comprising the steps  of:          
     after forming the semiconductor layer on the first surface (11), forming the first electrode (24) on the first surface (11) so as to correspond to at least the light-emitting region (22A);  
     arranging a recessed section (12A) with a depth larger than the thickness of the second electrode (40) on the second surface (12) so as to form a step section (12B) projected from the recessed section (12A) in a region other than the recessed section (12A) in the second surface (12);
     forming the second electrode (40) on at least the recessed section (12A) of the second surface;          
(Emphasis added.)
For the "depth" limitation highlighted above, the Examiner relied solely on the figures in Kwak – not on the specification of Kwak. In analyzing Kwak Fig. 17, the Examiner mapped via hole h3 to the claimed recessed section and conductive layer 175 to the claimed projection.

The Applicant argued only the dimensional ("depth") limitation of claim 9. However, the Applicant did not distinguish Kwak, instead merely traversing the Examiner's sole reliance on Kwak's drawing. Citing to a variety of cases from the Federal Circuit and CCPA, the Applicant asserted that reliance on the drawings was improper under case law because the specification of the reference was silent on dimensions (absolute and relative). The Applicant further asserted that the specification "fails to indicate that the drawings are to scale" so that "apparently the proportions shown in FIG. 17 are apparently the result of the draftman's selection rather than the embodiment of an intention to represent the device to scale." 

The Examiner maintained the rejection in another Office Action, and continued to rely solely on the drawings. In response to Applicant arguments, the Examiner pointed to MPEP 2125 ("the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art"). The Examiner further explained his reading of Kwak:
... Kwak clearly discloses in figure 17 that the depth of the recessed section h3 is larger than the thickness of the second electrode 175, and the one of ordinary skill in the art would easily recognize this relationship from the figure of Kwak. Furthermore, if the second electrode 175 was thicker than the recess h3, then it would be level with the bottom of, or even protrude from the bottom of, layer 150. However, Kwak clearly shows second electrode 175 to be recessed within the recessed section h3. The Examiner submits that one of ordinary skill in the art would easily recognize that the depth of the recessed section is larger than the thickness of the second electrode 175.
Later in prosecution, Applicant added another claim with relative dimensions. This one involved width rather than depth:
     13. A method of manufacturing a semiconductor light-emitting device, the method comprising the steps of:
     forming a first electrode on a projection section, said projection section being a contact layer on a first conductivity type cladding layer;
     forming a second electrode in a recessed section of a substrate, the width of said recessed section being larger than the width of said projection section.
(Emphasis added.)
The Examiner rejected claim 13 as anticipated by or (in the alternative) obvious over Romano. Once again the rejection relied solely on drawings. In analyzing FIG. 15 of Romano, the Examiner mapped area 516 to the claimed recessed section and layers s574 and 576 to the claimed projection.
The Applicant filed an After Final Response and handled the claim 13 rejection similar to the previous handling of claim 9. Namely, the Applicant argued that case law prohibited the Examiner from relying solely on the figures of the reference. In the Advisory Action, the Examiner responded to the claim 13 argument by once again referring to MPEP 2125 and explaining what inferences a POSIA would draw from the figure alone. The Advisory Action concluded with this statement

[O]ne of ordinary skill in the art would easily recognize this [relative width]structural limitation . Hence, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the width of the recessed section larger than the width of the projection section since Romano clearly suggests this structure in figure 15. (Emphasis added.)

The Applicant appealed the pending claims. Once again, the only argument made for independent claims 9 and 13 was improper reliance on the drawings. For claim 9, the Applicant merely repeated the arguments made in the Response to Final. For claim 13, the Applicant repeated previous arguments but added additional arguments.

One of the arguments newly added for claim 13 addressed two cases cited in MPEP 2125. The Applicant first distinguished In re Aslanian, arguing that Aslanian dealt with a design patent rather than utility patent. The Applicant then addressed In re Mraz by quoting sections in which the appellate court had approved of use of a drawing showing the features at issue "with great particularity," while contrasting this with an "enlarged section of a small drawing obviously never intended to show the dimensions of anything." The Applicant asserted that Romano, like the disapproved drawing in Mraz, "fails to proffer an intent that the width of cavity (416)(516) is larger than the width of layers (474,476)(574,576)."


In contesting the rejection of claim 13, the Applicant also used a teaching of the width limitation in Applicant's own specification to argue that the Examiner had used hindsight:
In the absence of any disclosure within Romano [of the width limitation] or any other objective supporting evidence, the line of reasoning within the Office Action appears to have been merely an extraction from the Appellant's own specification.


The Examiner's Answer basically repeated the earlier rejection of claim 9, but did add an annotated version of Kwak's Fig. 17. The Answer varied the rejection of claim 13 by also relying on an annotated Fig. 14 of Romano.

The Answer also explicitly stated (first the first time) a rationale for the obviousness rejection of claim 13: "in order to maximize the heat dissipation from device, as discussed in Romano [citation to section omitted]." The Examiner also responded to the Appeal Brief arguments of hindsight by asserting (again) that "one of ordinary skill in the art would easily recognize" in Romano's drawing, the width relationship recited in claim 13.

After receiving the Examiner's Answer, the Applicant filed an Amendment cancelling independent claim 9. Independent claim 13, added during prosecution, remained on appeal as obvious over Romano.

The Board framed the issue as "... whether Romano 'describes' [under § 102] or suggests [under § 103,] the claimed relative widths." The Board affirmed and explained as follows:
     [W]e look to the drawings, but consider them in light of the disclosure as a whole to determine what Romano would have disclosed and suggested to one of ordinary skill in the  art. ... The Examiner here is not attempting to use the drawings of Romano to establish precise dimensions, but is citing the drawings for showing generalized proportions. While we agree with Appellants that the drawings are not disclosed by Romano as being to scale, the drawings are drawn with a sufficient detail and precision to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written  description supports those findings and conclusions. ....In explaining Figure 9, Romano states that the cavity 216 has a length and width larger than that of the p-contacts 240 situated above it. (Internal citations omitted) .... 
... Romano's Figures 10-14 show the progressive steps of forming a semiconductor device with a filled cavity 416. All of the figures depict the various layers and structures within the device with different thicknesses. It is, therefore, reasonable to believe that Romano intended to convey relative differences in thickness even if not exactly to scale. Figures  11-14, like  Figure 9, include multiple p-contacts (440) over cavity 416. Therefore, it is reasonable to believe that, like the p-contacts of Figure 9, the p-contacts 440 of Figures 10-14 are intended to be of smaller width than the width of the cavity 416.
My two cents: Weak Applicant argument. It was clear from the prosecution history that the Examiner did not rely on dimensions, measurements, or values, which means In re Wilson and In re Wright were inapposite. Similarly, the Examiner relied on general rather than precise proportions, so In re Olson and Hockerson-Halberstadt v. Avia were inapposite.

Still, this decision is a good review of the case law governing drawings as prior art.

Monday, February 9, 2015

PTAB finds Examiner's interpretation of "lamp assembly" unreasonable when read on a bumper surrounding a headlight

Takeaway: The Applicant appealed an anticipation rejection of claims to an auto light assembly with a charging port. The reference disclosed a vehicle with a charging port and a headlight, both located in the front fascia / bumper. The Examiner read the claimed "exterior lamp assembly including an illumination source and an electrical port" on the fascia / bumper. The Applicant argued that the bumper wasn't a "lamp assembly" even though it surrounded the components included in the claimed assembly. The Board found the Examiner's interpretation to be unreasonable. "Although Figures 20 and 22 of Austin show a headlamp adjacent to electrical connector 170, there is no disclosure in Austin, either in the Figures or description, that an electrical port be included as part of an exterior lamp assembly of an automotive vehicle, as required by Appellants’ claims."

Details:
Ex parte Grider
Appeal 2013-003930; Appl. No. 12/493,514; Tech. Center 2800
Decided:  January 22, 2015

The application on appeal was directed to an auto light assembly with a charging port. A representative claim on appeal read:
     1.  An  automotive vehicle capable of receiving  power from an electrical power grid, the vehicle comprising:
      a battery charger; and
     an exterior lamp assembly including (i) an illumination source and (ii) an electrical port configured to be electrically connected with the electrical power grid, wherein the electrical port is electrically connected with the battery charger.
The dispositive issue on appeal was the meaning of "exterior lamp assembly." The Examiner rejected claim 1 as anticipated by Austin. The Examiner mapped the claim's "electrical port" to electrical connector 170 in Austin's Fig. 22, the "illumination source" to the "headlamp in Fig. 22," and the "exterior lamp assembly" to reference number 172 in Fig. 22.


During prosecution the Applicant argued that Austin's 172 was not properly understood as an "exterior lamp assembly." The Applicant pointed out that Austin described 172 as a "front or rear surface." ("The electrical connector 170 [can be] located in a front or rear surface [fascia] 172, 174 of the vehicle.") According to the Applicant, 172 was best understood as a fascia or a surface of the vehicle's bumper cover.

In a Final Office Action, the Examiner responded that this surface "clearly includes an exterior lamp, thus making interpreting item 172 as an exterior lamp assembly reasonable."

On appeal, the Applicant reiterated the earlier argument, and elaborated as follows:
The examiner argues that because Austin's front fascia 172 at least partially surrounds Austin's exterior lamp assembly, that front fascia 172 is somehow part of the exterior lamp assembly. This logic, however, is flawed. By analogy, a tire can surround the wheel on which it is mounted. This does not mean that the tire is somehow part of the wheel. Similarly, a shoe can surround a foot. This does not mean that the shoe is somehow part of the foot.  Hence, Austin's fascia is not part of Austin's exterior lamp assembly.
(Emphasis added.)
The Examiner maintained this position on appeal. The Examiner responded to the Appeal Brief arguments by asserting that "front surface (172) of Austin is clearly an exterior device, which includes a headlamp/illumination source  (Fig. 22), therefore reading on an exterior  lamp assembly." The Examiner then explained that while the Applicant had argued for a narrowed interpretation, no such features were present in the claim. Finally, the Examiner noted that the Applicant had not provided any evidence that reading the claimed feature on Austin's surface 172 was unreasonable.

The Applicant filed a Reply Brief to rebut points raised in the Examiner's Answer. The Applicant first argued that the Examiner's interpretation was inconsistent with the interpretation of a person of ordinary skill.
Austin's "front or rear surface" language does not refer to the clear surface covering Austin's headlamps. Instead ... one of ordinary skill would interpret "front or rear surface 172, 174" as referring to Austin's fascia, which as known in the art do not include headlamp assemblies. Austin's windshield is an "exterior device" in as much as Austin's headlamp assembly is an "exterior device." One of ordinary skill upon reading Austin's "front or rear surface 172, 174" language and referring to Figure 22, however, would not conclude that Austin is suggesting that the power cord could be plugged into Austin's  windshield  for  obvious  reasons.
Finally, the Applicant presented additional technical reasoning as to why a POSITA would not understand  Austin to disclose a lamp assembly included in the bumper surface 172:
Moreover,  locating  Austin's  electrical  connector   170 in the clear surface covering Austin's headlamps would present challenging issues related  to, among other things, packaging the electrical outlet components in and around the headlamps of the assembly (e.g., the electrical connector and associated wiring would have to be placed such that it does not obstruct the light output by the headlamps and is properly sealed to prevent water and debris from entering the headlamp cavity, etc.) If Austin had intended to disclose such an arrangement, he would at least have made some mention of these issues to provide an enabling disclosure.
The Board found the Examiner's interpretation to be unreasonable, and reversed the anticipation rejection. The Board explained as follows:
Although Figures 20 and 22 of Austin show a headlamp adjacent to electrical connector 170, there is no disclosure in Austin, either in the Figures or description, that an electrical port be included as part of an exterior lamp assembly of an automotive vehicle, as required by Appellants’ claims. The Examiner does not direct us to any disclosure in Austin that teaches that front surface 172 or rear surface 174 is part of an exterior lamp assembly. Nor does the Examiner direct us to evidence in Appellants’ Specification or elsewhere in the intrinsic or extrinsic record that would support a construction of “exterior lamp assembly” that is broad enough to encompass either front surface 172 or rear surface 174 in Austin’s Figures 20–23.
(Emphasis added.)
My two cents: Broadest Reasonable Interpretation is often a dispositive issue, but not all Applicants realize this early enough in prosecution. Here the Applicant did hit the BRI issue head on, and kept arguing about it until the very end (Reply Brief). Surprisingly, although the focus was BRI, nobody brought in dictionary definitions or other evidence of meaning to a POSITA. The Applicant's argument instead used analogies.

I thought the Applicant made a compelling argument, and the Board was persuaded in this case. However, I think arguing by analogy is risky, as the Board is sometimes dismissive of analogies or hypotheticals.

Neither the Applicant nor the Board focused on this, but I think "assembly" is the heart of the argument. The Examiner's position seemed to be: the lamp was within / part of / included in the fascia;  the fascia was therefore a lamp assembly; the fascia was on the outside; the fascia was therefore an "exterior lamp assembly."

But I say "assembly" implies more than just physical surrounding. To me, "assembly" implies a collection of parts that are recognizable to the POSITA as being part of a whole thing. So an LED, an electrical socket, a surrounding frame, and a bracket might all be part of a "lamp assembly". Sure, we can argue about exactly which parts are included in a particular assembly. But here, how can you say, with a straight face, that a fascia/bumper is understood by a POSITA as the entire collection of parts that together make up a "lamp assembly"?

Tuesday, February 3, 2015

PTAB not persuaded that reference disclosing non-elected species is improper

Takeaway: In appealing an obviousness rejection, the Applicant attacked the availability of a reference on the grounds that this contradicted an Election of Species requirement. More specifically, the Applicant argued that since the Applicant chose not to elect claims to a window refrigerator in combination with freezers and air conditioners, the Examiner was precluded from using a reference to a central air conditioner, which was even further removed than was the non-elected combination. The Board was not persuaded, noting that the only preclusive effect of a Restriction/Election was on divisional applications. (Ex parte Arjomand, PTAB 2014.) 

Details:
Ex parte Arjomand
Appeal 2012-008435; Appl. No. 11/474,530; Tech. Center 3700
Decided:  Nov. 3, 2014

The Application on appeal was titled "Window Refrigerator." According to the Specification, "during the hot summer months, this device can be used as both a refrigerator/freezer (R/F) and an indoor cooling and de-humidifying device; and in winter as an indoor heating-humidifying device."

At the start of prosecution, the Examiner issued an Election of Species Requirement, identifying species A, B, and C corresponding to Figures 1, 4, and 9. The Applicant filed a Response electing Group B (Fig. 4) and asserting that the elected group covered claims 24-37. The Response also stated:
Applicant thanks the examiner for recognizing the patentable distinctness of the subject matter of [elected] claims 24-37 over the subject matter of the other grouped claims. Clearly, claims 24-37 would be patentable over any prior art which is further removed from these claims than is the subject matter of [independent] claims 23 or 38.
(Emphasis added.)
In the first Action on the merits, the Examiner rejected all claims as obvious over Lukas, Metcalfe and Maeda. In the Response to this first Office Action, the Applicant argued, i.a., that this § 103 rejection was "improper for procedural reasons" because it was contradictory to the restriction/election requirement:
The examiner [through the Restriction/Election Requirement], in effect, held that a claim directed to a combination of a freezer and a refrigerator was patentable over a combination of an air conditioner and a cooling area for food (refrigerator), as see Section 802.01 of the MPEP. The examiner should not now be heard to say that the combination of a freezer and a refrigerator is unpatentable over the combination of an air conditioner and a refrigerator.
The Examiner issued a new ground of rejection in the next Office Action and did not comment on the Applicant's "contradictory" argument.

After several more rounds of prosecution , the Applicant appealed. By the time of appeal, the obviousness rejection had evolved to include a different set of references: Wertheimer, Maekawa (from the first Office Action) and Shavit. In the Appeal Brief, the Applicant renewed the "contradictory" argument and used it to challenge whether Shavit was a proper reference under § 103.
     The examiner's reliance upon Shavit and Wertheimer raises an issue that was decided early on in the prolonged prosecution of this application. Prior to a first action on the merits the examiner required an election of species between Fig. 1, Fig. 4, and Fig. 9. Fig. 1 is related to a window air conditioner. Fig. 4 is related to a window refrigerator. Fig. 9 is related to a window refrigerator associated with a freezer and a heat pump (air conditioner).
     Section 802.01 II of the M.P.E.P. states in part: "Related inventions are distinct if the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) and wherein at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though they may each be unpatentable over the prior art)." (Capitals in original.)
     [During prosecution] the examiner acknowledged the election of claims 24-29 [Fig. 4 (window refrigerator)]. At that time he could have withdrawn the requirement, had he considered that window refrigerators were not patentable over window refrigerators associated with freezers and air conditioners. By maintaining the [restriction/election] requirement the examiner confirmed that window refrigerators are considered to be patentable over window refrigerators associated with freezers and air conditioners. This being the case, it is quite clear that window refrigerators are [also] patentable over central air conditioners. It is appellant's position that the use of a reference drawn to a central air conditioning system is improper and contrary to the examiner's [initial] position that window refrigerators are patentable over window refrigerators associated with freezers and air conditioners.
The claim groups resulting from the Restriction/Election were as follows:
STATUS FIGURE FIGURE DESCRIPTION CLAIM
Unelected Fig. 1 "thermos attached to the front of a window A/C" 23. A combination of a window .... a device comprising an air conditioner passing through the window having a front side ... with a control panel, and a thermos attached to the front of the air conditioner ...
Elected Fig. 4 "standalone small size window R/F" 24. A combination of a window ... and a window refrigerator/freezer device, which device has a motor, a compressor, an evaporator, and a condenser coil and at least one of a refrigerator compartment and a freezer compartment..
Unelected Fig. 9 "full-size window R/F having an auxiliary heat pump on top of it" 38. A combination of a window .... ; a window refrigerator/freezer device having a motor, a compressor, an evaporator, and a condenser coil ..and a heat pump device

The Board was not persuaded that Shavits was an improper reference. The Board explained that there is no connection between restriction/election and availability of a reference:
     Appellant further argues that the Examiner’s reliance on Shavit to remedy this deficiency is improper because, before beginning examination on the merits, the Examiner issued an Election of Species Requirement dividing the Application into three species, and one of the non-elected species relates to air conditioners, as does Shavit. ....
     We do not agree with Appellant’s position on this point. The Election of Species Requirement was issued based on the content of the Application, and any preclusive effect of the Election of Species Requirement with respect to rejections of the elected claims extends only to divisional applications directed to the non-elected species, not to other references. See 35 U.S.C. § 121.
My two cents: I had a hard time following the Applicant's own argument, but I understood the Board's characterization. I thought the Applicant's argument was creative, but also completely off-base.

The Applicant relied on a (mis)reading of the MPEP's definition of the term "distinct" used in the divisional statute. The crux of the Applicant's argument seemed to hinge on this phrase:  "PATENTABLE (novel and nonobvious) OVER THE OTHER."

Applicant's reasoning appeared to be:
  • Examiner said window refrigerators are distinct from window refrigerators in association with freezers and air conditioners.
  • According to the definition of distinct, window refrigerators are therefore Patentable Over window refrigerators in association with freezers and air conditioners
  • Window refrigerators are therefore Non-Obvious over window refrigerators in association with freezers and air conditioners
  • A reference disclosing a window refrigerator associated with freezers and air conditioners is therefore improper in an Obviousness rejection of a window refrigerator (one without freezers and air conditioners?)
  • A central air conditioners is even further removed from a window refrigerator (one without freezers and air conditioners?) than are freezers and air conditioners
  • CONCLUSION: A reference disclosing a central air conditioner associated with freezers and air conditioners is therefore improper in an Obviousness rejection of a window refrigerator (one without freezers and air conditioners?)
What baffles me is that the Applicant argued this as a matter of law, when the argument at best had a sort of intuitive appeal, as a matter of logic. But the logic falls apart pretty fast, because the Applicant ignored the magic word "claims": the comparison in the PATENTABLE OVER clause is to claims. So a claim to a window refrigerator is PATENTABLE OVER a claim to a window refrigerator in association with with freezers and air conditioners.

So, we're talking about claims, not disclosure. Moreover, we're talking about groups of claims in the same application.