Tuesday, September 30, 2014

Blogs covering AIA Inter Partes Review, Post Grant Review and Covered Business Method Review

My blog covers the A in PTAB – meaning that I discuss cases where the Applicant has appealed an Examiner rejection during prosecution. The T in PTAB stands for Trials, and it looks like these Trials proceedings are big business, because I've found quite a few blogs that cover PTAB activity.

Here's a quick list:

US PTO Litigation Alert
Patents Post Grant
Reexam Link
PTAB Trial Blog
IPR Petition Denied
Post Grant AdvocATor

A bit more background for those of you that aren't familiar with PTAB Trials. The jurisdiction of the Board was enlarged significantly by the AIA. The PTAB still handles appeals of Examiner rejections during prosecution  and appeals during ex parte reexamination. But the PTAB now also handles Inter Partes Review, Post Grant Review and Covered Business Method Review.

Inter Partes Review (commonly abbreviated as IPR) is analogous to old inter partes reexamination – though there plenty of differences. Post Grant Review is like Inter Partes Review, but is limited to patents filed under AIA rules and to a 9-month period after issuance. Covered Business Method Review is like Post Grant Review – except that filing date is irrelevant and it is limited to "covered business methods." This link summarizes the differences in chart format.

In the past, I've found a lot to learn from reexamination appeal. Applicants tend to go into more detail in their arguments, as reexamination is an expensive process with higher stakes. This is even more true for IPR and its brethren, so I'll be blogging about IPR, PGR and CBM decisions from time to time, if I see some good stuff.

Monday, September 29, 2014

PTAB affirms anticipation of tourniquet by cable tie since tie is capable of "safe occlusive pressure"

Takeaway: The Applicant appealed a claim to a tourniquet including "the block body and cuff cooperate to provide safe occlusive pressures to both sides of the target digit." The Examiner rejected as anticipated by a cable tie used with telecom cable: the range of pressures exerted by the cable tie  included "safe" pressure, and this capability was enough for anticipation. The Applicant argued that the reference cable tie was made of high-tensile thermoplastic and had a loop tensile strength over 250 pounds. The Applicant entered expert affidavits by two surgeons attesting that this cable tie "was not suitable for use as a digit tourniquet." The Board adopted the Examiner's reasoning and affirmed the rejection.

Ex parte Warburton
Appeal 2011-011302; Appl. No. 11/222,956; Tech. Center 3700
Decided  January 18, 2013

The application on appeal was directed to a tourniquet for a finger or toe. The application included several independent apparatus claims of differing scope, as well as a method-of-use claim.

One of the independent claims on appeal read: 
     1. A single-use disposable digital tourniquet, comprising:
a substantially rigid block support body defining a curved digit contact outer surface and an opposing outer surface ...the support body comprising first and second spaced apart cuff channels sized and configured to receive a cuff therethrough,
     wherein the first and second cuff channels extend ... such that, in position, a cuff extends out of the first and second channels of the block body ...
     wherein the block body and cuff cooperate to provide safe occlusive pressures to both sides of the target digit ...
(Emphasis added.) 
In the early rounds of prosecution, the Examiner used a series of prior art tourniquet references to reject the claims. The Applicant amended the claims several times to distinguish over these tourniquet references.

In the fifth Office Action, a new reference, Dyer, appeared. Dyer described a cable tie assembly used to space apart a telecom cable and a metal support. The Examiner used Dyer to reject all the claims, including some that had been indicated as allowable in previous Office Actions.

Dyer's cable tie is shown below left, and an embodiment of the Applicant's claimed torniquet is shown on the right.
The Examiner asserted that Dyer's cable tie anticipated all the independent apparatus claims. Dyer was also used as a primary reference in a § 103 rejection of the sole independent method claim.

The Applicant amended independent apparatus claim 1 to recite "wherein the block body and the cuff cooperate to provide safe occlusive pressures to both sides of the target digit." The specification taught that "the minimum finger occlusion pressure is a function of the circumference of the finger and the patient's systolic blood pressure." The specification also included a table of target pressures vs. cuff widths, and incorporated by reference a journal article about finger tourniquets. The Applicant argued that Dyer did not teach "desired target/safe occlusive  pressures and/or [is] simply not configured to support the digit in the manner required for appropriate digit tourniquet use."

Along with the response, the Applicant filed § 1.132 Declarations by two surgeons. The surgeons asserted that Dyer's cable tie was not suitable for use as a digit tourniquet, and that they would not look to the field of cable ties for information about a medical instrument.

The Examiner maintained the anticipation rejection and provided further explanation:
[T]he amount of pressure provided by the device of Dyer depends solely on the amount of tension applied to the strap as it is pulled through the cable tie head and how far the strap is pulled through the cable tie head. Therefore, the device of Dyer is capable of providing various amounts of pressure to an object held between the cable tie head and the strap ... Simply because the material provides a large loop tensile strength ... does not render the strap incapable of providing a safe occlusive pressure as the strap could be left more or less slack around an object to provide a desired pressure.
(Emphasis added.)
In response to the Applicant's argument that Dyer did not "teach" the safe occlusive pressure limitation, the Examiner noted Dyer (an issued patent) was presumed to be enabled. Finally, the Examiner critiqued the declarations, contending that their statements about the maximum pressure the device is capable of applying "does not factually prove that the device is incapable of producing a smaller pressure."

The Applicant appealed. Elaborating upon earlier arguments, the Applicant explained that Dyer taught a tie wrap made of high-tensile thermoplastic and having a loop tensile strength over 250 pounds. In fact, Dyer suggested a particular crystalline plastic (DELRIN®) described as having "metal-like" properties. Thus, "this would not appear to be a material that forms a cuff for providing safe occlusive pressures to a target digit (i.e., without causing nerve or tissue damage." (Emphasis in original.)

Responding to the Examiner's point about presumed enablement, the Applicant argued that enablement in Dyer should be assessed with respect to cable ties, not tourniquets.
Dyer does not describe any mechanism that could provide this [safe occlusive pressure] feature; rather, Dyer teaches that the strap is inserted without any regard to the degree of tension of the objects held under the strap, and that the strap cannot be "backed out" or withdrawn to reduce this tension.  Thus, Appellant strongly asserts that Dyer does not contain adequate disclosure such that a person of ordinary skill in the art could make and use the claimed digital tourniquet having block body and cuff that cooperate to provide safe occlusive pressure to both sides of a target digit.
The Examiner's Answer focused on the capability of Dyer's structure. According to the Examiner, the "safe occlusive pressures" limitation was intended use, meaning Dyer's cable tie did anticipate because it was capable of applying the claimed pressures. Furthermore, the Answer noted that "the Rule 132 affidavits do not discuss the claimed invention providing 'safe occlusive pressures' and only discuss the block and strap providing occlusive pressure." (Emphasis added.)

The Applicant filed a Reply Brief with extensive rebuttal of the Examiner's positions. With regard to affidavits, the Reply Brief indicated specific paragraphs in the affidavits that referred to "safe, even and/or controlled occlusive pressure." The Reply Brief then asserted that the "Examiner's blanket statements that cable ties ... can provide a safe, even and/or controlled pressure cannot outweigh evidence to the contrary in the form of statements by expert surgeons."

Addressing intended use, the Reply Brief asserted that "safe occlusive pressures ... are provided by structural aspects of the claimed tourniquet such as the geometry of the support body and the cuff and the cooperating nature of these two components." (Emphasis added.)

Finally, commenting on the capabilities of Dyer's cable tie, the Reply Brief quoted from selected passages in Dyer to show that Dyer's "strap is inserted without any regard to the degree of tension on the objects" and "cannot be backed out or withdrawn to reduce this tension." As a result, Dyer does not "adequately describe" the claimed structural features that cooperate to function in the claimed manner.

The Board affirmed the anticipation rejection of claim 1 and explained as follows:
We note that the term “safe” is a relative term that is not otherwise defined by the Specification. In this regard, we agree with the Examiner’s logic that “the pressure provided by the strap of the device of Dyer depends solely upon the tension applied to the strap and the amount of strap pulled through the cable tie head” and that the device of Dyer is capable of applying pressure that would fall  within the range of pressure deemed safe for use as a digit tourniquet. Evidence supplied by Appellant in the form of expert opinion does not prove that the device of Dyer is incapable of supplying safe pressures. Accordingly, we conclude that the Examiner did not err in concluding that claim 1 is anticipated by Dyer.
My two cents: Imagine the Applicant's frustration at overcoming three tourniquet references, only to be blocked by a cable tie! Now, the Applicant did win on some other claims, but that's a topic for another post.

I give points to the Applicant for thoroughly addressing the Examiner's position throughout prosecution. With each round, the Applicant elaborated on his own previous arguments and also addressed points brought up by the Examiner in the last paper.

I wondered how the Applicant could have avoided or overcome the Dyer rejection. Is the root issue the meaning of "safe occlusion pressure"? The Board did suggest "safe" is broad. Or is intended use the root issue?

One way of looking at this is that the Dyer's high-strength cable tie strap can be used to apply a range of pressures, with Applicant's "safe" pressure in between. The reference therefore anticipates. If that's the issue, language about limiting the pressure should overcome. But I can't tell if this limiting aspect is how the Applicant really understood his invention, because the spec doesn't use the word limit or anything like it.

I've also thrown by the semi-structural "cooperate" limitation. Does the block body really have anything to do with the limit or safe pressure function? It's just the cuff, isn't it?

I might try something like "cuff adapted to safely limit," then argue it's not intended use, and instead conveys information about the type of structure. And the structure in Dyer – a high-tensile strap – is simply not one that operates to limit pressure to a safe value.

If the Examiner/Board insists on reading "adapted to" as intended use (satisfied by mere capability in the reference structure), I think maybe you're still okay. The high-tensile strap isn't really even capable of limiting pressure to a safe value. Sure, it's capable of producing safe pressure. Sure, it's capable of limiting pressure, since it will break at some point – but that's way past the safe value. 

The spec did mention "safe", "even", and "controlled" pressures, but didn't focus on this aspect, and didn't even use the word "limit." Probably because the Applicant focused on distinguishing over other tourniquets, not cable ties. And that's clearly a challenge with rejections like this: amending to describe a feature that's implicit in the description when read in context by a POSITA – yet isn't specifically described in any detail in the spec.

What does appear to be important is a related feature: structure to let the user know when the target pressure has been reached. This function is provided by a deformable member extending across the cuff channel. The material and specific design of the deformable member is chosen to yield or break when particular target is reached, producing tactile or audible feedback. This feedback tells the user to stop pulling on the cuff.

This deformable member was recited in some of the original dependent claims, and was also in two of the claims that had rejections reversed by the Board.

Tuesday, September 23, 2014

Board considers subcomponent of integrated assembly and finds subcomponent is "to be attached to" the final assembled structure

Takeaway: A claim to an aircraft mounting structure recited a "mount portion ...to be attached to a pylon". The Examiner read the mount portion on a pyramid structure that was part of the assembled pylon. The Applicant argued that because the pyramid structure was already part of the pylon, it would no be understood as a component "to be attached to" the pylon. The Examiner explained that "integration (combining multiple into one) is a form of 'attachment'. " The Board agreed with the Examiner. (Ex parte Cloft,  PTAB 2014.)

Ex parte Cloft
Appeal 2012-005061; Appl. No. 12/016,234; Tech. Center 3600
Decided  June 9, 2014

The application was directed to structures for mounting an aircraft engine. Where prior art arrangements used multiple bolted joints to attach the engine to a pylon structure on the wing, the invention used engine mount beams that were integrally formed with the pylons. 

A representative claim on appeal read:

     1. A mounting arrangement for a gas turbine engine comprising:
     a pylon mount structure having a first mount portion and a second mount portion positioned aft of said first mount portion,
          said first and said second mount portions comprising separate components to be independently attached to a pylon;
     a first engine mount beam integrally formed with said first mount portion as a single-piece component ... ; and
     a second engine mount beam integrally formed with said second mount portion as a single-piece component ...
The Examiner rejected as obvious over a combination of two references. In the rejection, the Examiner asserted that a POSITA would have used the teaching, in the secondary reference, of a pylon mount portion integrally formed with a mount beam, and combined that with the remaining claim elements taught in the primary reference (Marche).

The Applicant appealed. One argument on appeal concerned the limitation that the first pylon mount portion "be independently attached to a pylon". The Examiner specifically asserted that the first mount portion corresponded to structures 14/16 in the primary reference Marche, and that the pylon corresponded to structure 4. (See figure below.)

The Applicant argued that Marche did not teach that the mount portion was "to be independently attached to" the pylon because the reference taught instead that the triangle structure 14 was “already part of” the rigid structure 4. (Emphasis added.)

In the Answer, the Examiner provided this additional information:
The first portion 14/16 and the second portion 18 are distinct components joined to the pylon at separate locations (fore and aft of pylon 4). As such, they are separate components to be "independently" attached from each other (i.e. one's joining does not depend on the other) to the pylon. It is further noted that integration (combining multiple into one) is a form of "attachment." The claims do not specify the type of attachment to be obtained.
(Emphasis in original.)

The Applicant filed a Reply Brief to address this new information.
Pyramid 14 is the pylon itself (see paragraph [0076]). Specifically, the pylon comprises lower 12 and upper 20 stringers and the pyramid 14. The aft mount 18 is attached to the pylon stringer 12. As such, the examiner's first [mount portion] and second mount portions cannot be considered as "separate components to be independently attached to a pylon."
(Emphasis added.)
The Board was not persuaded by the Applicant's argument.

The Board found that pyramid 14 was indeed "attached to" pylon 4during assembly of the pylon. That is, the Board adopted the Examiner's reasoning that combining stringer 10, stringer 12, and pyramid 14, to produce an integrated pylon 4, involved attaching the stringer 12 to the pylon 4. The Board explained as follows:
     To be clear, Marche discloses that “rigid structure 4 is globally made by the assembly of lower stringers 12 and upper stringers 10 connected to each other.” Marche para. 76. This same paragraph also discloses that “a forward part of this rigid structure 4 is composed of a pyramid 14.” Marche para. 76. Hence, Appellants’ argument is understood that as item 14 is already part of item 4, then it is not clear how this item 14 can also be independently attached to item 4.
      The Examiner clarifies “that integration (combining multiple into one) is a form of ‘attachment.’ The claims do not specify the type of attachment to be obtained.” Ans. 9. The Examiner further finds that as Marche’s corresponding first portion 14/16 and second portion 18, “are distinct components joined to the pylon at separate locations (fore and aft of pylon 4),” that “they are ‘separate components’ to be ‘independently’ attached from each other (i.e., one’s joining does not depend on the other) to the pylon.” Ans. 9.
     Appellant disagrees, contending that “[p]yramid 14 is the pylon itself” and references Marche paragraph [0076] for support (Reply Br. 2), but as stated above, this paragraph only states that pyramid 14 is a “forward part” of “rigid structure 4” which itself is described as being an “assembly” made from different stringers 10 and 12 that are “connected to each other.” Hence, there is no indication in Marche that the construction of rigid structure/pylon 4 is monolithic but instead, Marche describes item 4 as an assembly of multiple components connected together. Marche para. 76. Consequently, Appellant’s contention that Marche’s item 14 is not “independently attachable to a pylon as claimed” is not persuasive. App. Br. 6.
(Emphasis added.)

My two cents: The Board tried to be to clever, and in doing so, got this one wrong.

First, I do agree that the process of producing an integrated component sometimes involves attaching subcomponents – as was the case here. However, here the subcomponents were attached to each other: stringers 10 and 12 are attached to pyramid 14 to form pylon 4.  I do not agree that pyramid 14 was attached to pylon 4, as there was no pylon 4 until all three pieces were attached together.

Second, the claim is to an apparatus not a method. Once Marche's pylon 4 was formed, the pyramid 14 can't be considered a "separate component to be independently attached to a pylon [4]". Right? You can't, on the one hand, rely on the fully assembled pylon 4 as the claimed pylon and, at the same time, rely on the pyramid subcomponent 14 as a structure attached.

Perhaps the Applicant's use of the phrase "to be attached" rather than "attachable" weakens my argument. Perhaps "to be attached" can be read as referring to the time of assembly? But note that neither the Board nor the Examiner appeared to rely on this.

Wednesday, September 17, 2014

Federal Circuit decision reminds prosecutors to pay attention to entire chain in claim to priority

The Federal Circuit decision Medtronic Corevalve v Edwards Lifesciences deals with priority claims and underscores the importance of making sure each application in the continuity chain has a proper reference to the entire chain. 

Ryan Alley covered this decision on his Federal Circuit blog. Read Ryan's post here: 
Medtronic Corevalve v. Edwards Lifesciences – Family & Priority Lessons

Ryan's blog is valuable to me because he always offers insight as to how a decision affects patent prosecutors. Here, Ryan suggests that in reviewing the chain of priority claims, we look at the actual specification and any amendments applied, and not rely on Filing Receipts or PAIR data. Ryan also reminds us that a defect can be cured during the application lifetime by a Petition to Accept Delayed Benefit Claim, or by reissue if the defective application has already issued.

Monday, September 15, 2014

Sample of Petitions to request republication

C.F.R. § 1.221 allows an Applicant to correct errors in published applications, by filing a petition that requests republication of specifically identified errors. This week I'll review a small sample of Petition Decisions for a Request for Republication. The interesting issues here are:
  • What's "material" ?
  • What's a "PTO mistake" ? 
These are important, since only mistakes that are both material and attributable to the PTO can be filed with no fees, under C.F.R.  § 1.221(b); otherwise, the filing is under C.F.R.  § 1.221(a) and a fee is owed. MPEP 1121 indicates that OCR errors are not considered PTO mistakes if caused by poor quality text in an Applicant submission. And the MPEP describes "material mistake" as one "that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent." (MPEP 1130.A).

Today's post will discuss materiality in the context of a Request for Republication. A future post will consider source of the mistake – PTO or Applicant. 

Materiality wasn't discussed in some of the Decisions I reviewed, presumably because the issue was clear on its face. For example, in Petition Decision 03-12-09 in Appl. No. 11/976,414, the Office summarily denied a request to correct a missing "and" in the title. This Decision did note (in dicta) that the title error could have been avoided if the Applicant had filed a Request for Corrected Filing Receipt.

Petition Decision 01-07-2009 in Appl. 11/976,182 is another one without a discussion of materiality.  The Office summarily granted a request in which the published claim read "wherein the second RF device is protocol is one of Bluetooth ...". The PTO apparently failed to apply a Preliminary Amendment that deleted one of the duplicate noun phrases ("wherein the second RF device is protocol is one of").

Petition Decision 02-05-10 in Appl. No. 11/974,186 is yet another Decision lacking discussion of materiality. The Office granted a request to correct the published claim "binds to the serum protein at least one physiological pH value of less than 6.7..." when a Preliminary Amendment added another instance of the preposition "at" ("binds to the serum protein at at least one physiological pH value of less than 6.7").

In some of the other Decisions, materiality seemed to be a closer call and was discussed in the Decision.

Petition Decision 05-15-09 in Appl. No. 11/969,182 involved capitalization in a chemical compound. Specifically, the compound in the claim read SIHpRq rather than SiHpRq. The Office denied the request for republication after finding the mistake was not material. The Decision explained that "the public would recognize the proper formula from the context which describes the molecule as 'an organic silane'."

Petition Decision 04-06-2009, Appl. No. 11/972,654 involved a Preliminary Amendment which deleted a list of elements ("one or more halogen (F, Cl, Br, I) atoms") from a claim. The patent publication did not take this deletion into account. The Office denied the request for correction, finding that the mistake was not material. "The error is a typographical error, which is clearly understandable by one of ordinary skill in the art in reading the claim, as the listed atoms are halogens" (Emphasis added.)

Petition Decision 06-08-2010 in Appl. No. 11/968,925 involved an independent claim reciting "a polynucleotide selected from the group consisting of", followed by group members designated by lower case letters: (a), (b), ... (j). Each of dependent claims 2-11 then claimed one of the group members, identified by lower case letter. In the patent publication, dependent claim 11 referred to subpart (O) of claim 1, rather than subpart (j). The Office denied the request for republication as not material. Since the independent claim referred to subparts (a) through (i), and there was no subpart (O), a person of skill in the art "would recognize the (O) in claim 11 to be an erroneous printing and understand the intended reference to (j)."

My two cents: There isn't a lot of guidance here about materiality, but the focus seems to be on reading in context, and on the knowledge of a POSITA. Even if a POSITA is initially confused by two upper case letters in SI HpRq, the meaning would be understood because the spec described an "organic silane." Similarly, a POSITA wouldn't be confused by the presence of "Fl, Cl, Br, and I" after the word "halogen," since these elements are halogens. I'm not a chemist, but I'm persuaded by the PTO's reasoning on these two.

In my mind, the polynucleotide claim (the one using a lower case letter to identify a group member) is a closer call. OK, I can see that (O) in dependent claim 11 is a mistake, since the independent claim only refers to (a) through (j). But how does the reader figure out which lower case letter was really intended?

The Petition Decision expected the reader to figure out that the first set of dependent claims, when considered as a whole, covered all 10 polynucleotides. Dependent claims 2 through 10 referred to polynucelotides (a) through (i), so isn't it logical that dependent claim 11 should refer to (j)? Is this asking too much of the reader?

According to MPEP 1130.A, we look at materiality from the viewpoint of "the public." The public doesn't have much chance of understanding a patent, so I'll make things simple and assume that "the public" really means "POSITAs." Even so, while it only takes a casual reading by a POSITA to figure out that (O) is wrong, it takes more work to figure out that (j) is right.  So I think the PTO got this one wrong: this mistake is material.

One of the Decisions – Petition Decision 05-06-2010 in Appl. No. 11/968,527, denied for being untimely – notes that an explanation of materiality may be a good idea:
Relevant copies of application papers may facilitate processing it it is not readily apparent where the error occurs. If it is not clear why the error is a material error, then explanation may be warranted.
Applying this to the polynucleotide claim, maybe the Request for Republication would have been granted if the Applicant had explained materiality, discussing it in terms of the amount of work needed to figure out which polynucleotide was intended by the drafter. Or maybe in coming up with this explanation, the Applicant would be convinced that the mistake wasn't material after all. By the way, none of the petitions I reviewed included any real explanation of materiality.

As a side note, the PTO doesn't maintain a database of all Petition Decisions, so it's not easy to search for them. However, Google does index some Petition Decisions, and that's where I found these. See USPTO Bulk Data - Patent Petition Decisions for more info. Of course, once you have the application number from the Decision, you can get the entire file history on PAIR.

Monday, September 8, 2014

PTAB says "identifying a number of patients" requires identification of a group but not a specific number

In a post from earlier this year – When does "a" mean "the" – I  discussed the meaning of "A number of" as used in a claim. As I noted in that post, typical English usage would be "THE number of widgets" but because THE has a special meaning in claim language, drafters sometimes rephrase as "A number of widgets".

The earlier post was about two Board decisions that considered whether this phrase was indefinite, since the phrase was amenable to two interpretations. One decision said indefinite, one said not indefinite.

I've found another decision in which the Board came at this phrase from a different angle – claim construction rather than indefiniteness. In Ex parte Scherpbier, the claim limitation read "identifying a first number of patients at a particular location awaiting processing at a particular treatment process stage." The Applicant argued that the prior art did not identify the actual number in the phrase “a … number of patients.” The Board said the claim did not require this.

     ... The issue here is the proper interpretation of this phrase. Unfortunately, Appellants chose an English language idiom generally referring to an indefinite group of patients for this limitation. In the face of a limitation susceptible to plural reasonable interpretations, the Office may test each interpretation against the art, because “[i]t is the applicants’ burden to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 23 1048, 1056 (Fed. Cir. 1997).
     Although it is possible to interpret the claim as identifying the actual numeric total of such patients, it is equally proper to interpret the claim as identifying some indefinite group of patients. [Indirect reference to definition from McGraw-Hill Dictionary of American Idioms and Phrasal Verbs.] The art clearly identifies such an indefinite group, and this is how the Examiner interpreted the claim phrasing.
     Given no clear exclusion of such an interpretation in the claim, we find the Examiner’s construction reasonable in view of the ordinary and customary idiomatic usage of this phrasing and the art describes such identification. 
The Board did not enter a new indefiniteness rejection.