Examiner affidavit of personal knowledge

I've seen plenty of file histories where the Examiner says an element is known or well-known instead of providing a reference, and the Applicant responds by saying "since the Examiner appears to be relying on personal knowledge, Applicant demands that the Examiner provide an affidavit attesting to these facts."

According to some practitioners, this is a good strategy to force the Examiner to provide a reference, because Examiners don't want to be bothered with an affidavit. Since I'm as annoyed as the next guy by allegations that elements are "known", "well-known," "notoriously well-known," and "extremely well known," I was curious to know a) the legal basis for the demand for an affidavit and b) whether or not it's a good way to force the Examiner to provide a reference.

37 CFR 1.104(d)(2) really does say that the Examiner must provide an affidavit when relying on personal knowledge:

When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.

I found a few instances where this "personal knowledge" issue has been raised at the BPAI. Only one of these Board decisions said that the Examiner should have provided an affidavit, and in this one the Examiner really did state that the element came from "facts within his personal knowledge". The other cases were found to be instances of Official Notice, and in most of them the Examiner made the Official Notice explicit.

Takeaway: The rules for traversing Official Notice are very specific, and not doing so properly is an admission that the element is known. So, instead of arguing "Examiner didn't provide a reference, so must have been relying on personal knowledge," it seems much more productive to instead assume that the Examiner is invoking Official Notice when no reference is provided, and to properly traverse the Official Notice. Sure, there are decisions where the Board treated the real issue as Official Notice rather than personal knowledge, and didn't punish the Applicant for not properly traversing — but why rely on the Board's generosity?

Here's a Summary of the Board's findings on the "personal knowledge" issue.

Ex parte Hull: The Examiner really did use personal knowledge! The final Office Action said: "The examiner has personal knowledge...In September, 1998, the examiner cut hyperlinks from a web browser and pasted said hyperlinks into an email. While composing an email message in Microsoft Outlook within the Windows operating environment, the examiner cut URLs of online documents from Internet Explorer and pasted them into said email message. Thus, the limitation of Claim 59 reads on this personal knowledge of the examiner." The Applicant argued that it was improper to reject a claim based on personal knowledge. The Board found in favor of the Applicant: "Therefore, we decline to consider the examiner’s personal knowledge as evidence because the examiner has failed to provide an affidavit or declaration setting forth specific factual statements with an explanation to support the finding of record."

Ex parte Trans Texas Holding Corp.: The Examiner didn't use the magic words "Official Notice" but the Board read it that way. The first Office Action alleged that "the deposit account being secured by property of the institution" was "implicit" in the reference "because this was a well-known method of running a bank." The Applicant responded by disagreeing that this was well-known, referencing the "personal affidavit" rule, and requesting that the PTO "make of record whatever evidence it might have in this regard." The Board found that the request for a personal affidavit "is clearly inappropriate because the examiner is relying not on personal knowledge but on the general knowledge of persons having ordinary skill in the banking art that it was standard practice to provide security for deposit accounts."

Ex parte Duck: The Examiner asserted that a feature was "well-known" instead of using the magic words "Official Notice." The Applicant argued that the examiner did not provide either a reference or a personal affidavit in support of this assertion. The Board didn't comment on the appropriateness of an affidavit, but did find that the Examiner's assertion was based on speculation "and thus fails to provide sufficient reasons for finding [the claim to be] obvious." [My take on this: the problem wasn't the lack of an affidavit, it was the type of facts that the Examiner was asserting to be well-known.]

Ex parte Moitra: The first Office Action said: "The Examiner takes official Notice that is is old and well-known in the art to track costs." The Applicant responded by arguing that the Examiner had cited no source for this finding, and alleged that the "Examiner states that this comes from his personal knowledge." The Board found that the requirement for a personal affidavit was inapplicable, because "this section only requires that facts that are within the personal knowledge of the Examiner be supported. The facts taken under Official Notice here were explicitly found to be common knowledge, and were not based on the Examiner’s personal knowledge."

Ex parte Trajkovic: The Examiner took Official Notice that it was well known in the art that windows are represented on the taskbar by icons and that windows were reactivated by activating these icons. The Applicant argued that the Examiner was required to submit a reference or a personal affidavit to establish facts within personal knowledge. The Board found that:

The use of status buttons on the taskbar (or status bar) in a windows environment to represent windows was so notoriously well known that it cannot be seriously in dispute (although it always would be better for an Examiner to provide a reference where it would be easily available). Such status buttons change appearance to indicate the active window and it was well known to reactivate an inactive window by activating a status button. Anyone who used a computer with Microsoft Windows before 2002 would know these facts.

In claim to “A or B”, is B always optional?

Ex parte Buckley
Decided March 10, 2009
(Appeal 2007-3617, Appl. No. 09/941,329, Tech. Center 2100)

I blogged about Ex Parte Buckley earlier (here), discussing a §112 rejection that really turned out to be a claim construction issue: whether “additional” modified one noun phrase, or two. It turns out there was another claim construction issue lurking in this case, one which didn’t get much discussion: when the claim recites “A or B,” is B optional?

The simplistic answer is “The claim uses the alternative so B is optional." But does the word “or” always mean in the alternative? I say No, not always — as usual, it depends on *exactly* what the claim says.

Here's claim limitation at issue: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle or a signal device transmitter.”

The Board agreed with the Examiner that “under the broadest reasonable interpretation of the claim the ‘hardware dongle’ may be read as optional.” (Decision, p. 9.) The Examiner laid out his argument in the Answer:

Additionally, as an alternate argument, Applicant's entire argument is moot in view of the fact that that the limitation requiring access without "an additional hardware dongle" is not even required by the claim when the alternative OR limitation requiring access without an additional signal device transmitter is utilized. Examiner again notes that evaluating this claim in view of the OR conjunction for the purposes of determining patentability requires the claim to be interpreted two ways, 1) wherein both the hardware and software layer can be accessed without the requirement for an additional hardware dongle OR 2) wherein both the hardware and software layer can be accessed without the requirement for an additional signal device transmitter.
(Examiner’s Answer, p. 38, emphasis in original.)

Note the Examiner’s conclusion that the use of “or” signals an alternative. In this case, I say the Examiner is wrong: the negative phrase “without” effectively changes the alternative to a combination. I think the correct claim construction is “both the hardware and software layer can be accessed without the requirement for an additional hardware dongle AND without the requirement for a signal device transmitter.”

To make this point clearer, consider this simpler example: “turning the vehicle without stopping or slowing.” Okay, my example limitation used the word “or” — but surely no one would say that stopping and slowing are alternatives? I think it’s clear that the claim actually requires two things: turning without stopping; and turning without slowing.

I was disappointed to see that the Board agreed with the Examiner on this, though it would have helped if the Applicant filed a Reply Brief to address the point. As a practical matter, it’s probably wiser to amend during prosecution rather than trying to convince the Examiner that “or” doesn’t always mean “in the alternative.” In this case, I would amend to: “wherein both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle and without the requirement for a signal device transmitter.” Or maybe “wherein each of the hardware and the software layer” — because someone might interpret "both" as requiring simultaneous access?

PTO fixes minor problem with appeal brief rules

Earlier I posted about the BPAI decision Ex parte Ghuman — a precedential one — in which the Board remanded a case back to the Examiner with instructions to cancel claims that were not appealed, for later return to the Board. This is a problem for Appellants because a minor mistake (forgetting to file a concurrent amendment cancelling non-appealed claims) now results in a significant delay in getting the case before the Board.

As one who frequently appeals, I was thrilled to read that the PTO has decided to address this problem by modifying the CFR rules which govern appeals! Under the PTO's proposed new rule, when an Appellant "clearly limits the appeal to fewer than all of the rejected claims", the non-appealed claims are deemed to have been cancelled. The new rule further provides that the Examiner should note the cancellation in the Examiner's answer. Most importantly — and here's the part that overrules Ex parte Ghuman — "an application will not be returned or remanded by the BPAI for correction merely due to a failure of an examiner’s answer to note the cancellation of non-appealed rejected claims."

You can read the proposed rulemaking notice here, and thanks to PatentDocs for reporting this news (here).

Case law you can use: Examiner can't pick and choose unrelated embodiments in a §102

What do you do when an Examiner gives you a §102 rejection that combines completely unrelated teachings in a single reference?

With a §103, at least you can argue why these two pieces are unrelated and thus would not be combined. OK, you're unlikely to convince the Examiner with this argument — but at least it's legally relevant. But "wouldn't make sense to combine" isn't legally relevant to a §102...is it?

Not exactly. But there is another weapon you can use:

The [prior art] reference must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.
In re Arkley, 455 F.2d 586, 587 (CCPA 1972).

Although In re Arkley was a chemical compound case, the Board does ocassionally use it to overturn anticipation rejections in non-chemical cases.

On example is Ex parte Ludwig (Appl. No. 09/812,400). The anticipatory reference taught two embodiments of a tone generator: FIG. 2 was a hardware implementation; FIG. 4 was a software implementation. The Examiner read one claim limitation on a component in FIG. 2 and another claim limitation on a component in FIG. 4. The Board reversed, holding that "the Examiner’s anticipation rejection cannot be based on merely picking and choosing multiple, distinct teachings from Suzuki that could somehow be combined to arrive at the claimed invention. See [Net MoneyIn, 545 F.3d ] at 1371. See also In re Arkley, 455 F.2d at 587. Rather, to anticipate, Suzuki must disclose every recited element arranged as in the claim—which it does not." (Decision, pp. 10-11.)

Another example is Ex parte Sato (Appl. No. 10/791,829). The claims were directed to an electro-deionization apparatus which introduced deionized water from desalting compartments into a specific location in concentrating compartments or allowed concentrated water to flow out of a specific location in the concentrating compartments. The Board overturned the rejection, citing In re Arkley and holding that the "[t]he Examiner has combined the Liang ‘037 Figures 1 and 13 without establishing a direct relation of the relied-upon features." (Decision, p. 5.)

Here's another example: Ex parte Omshehe (Appl. No. 09/954,509). The claims were directed to verifying software licenses when executing software. The anticipatory reference taught two distinct licensing mechanisms. The Examiner relied on one of these mechanisms to teach some claim limitations, then on the other mechanism to teach the remainder of the limitations. The Board reversed the rejection, holding that "such a mix[ing] and match[ing] [of] elements from Redding's two distinct authorization modes is inappropriate for a rejection based on anticipation. Therefore, the Examiner fails to show every element of the claimed invention arranged as in the claims." (Decision, p. 6.) Interestingly, the Board did not cite any caselaw for the proposition that mixing and matching is inappropriate. But clearly In re Arkley is appropriate.

As a final example, look at Ex parte Strongin (Appl. No. 09/825,905). The technology involved (computer processor architecture) is more complicated than I want to get into. But the takeaway is that the Board reversed, citing In re Arkley and stating that "The Examiner is apparently of the opinion that the claimed feature of (1) controlling access to selected information using a first table is taught by Figure 45 of Nozue, and (2) controlling access to selected information using a second table is taught by Figure 24A of Nozue. We find that Figures 24A and 45 depict different embodiments of the Nozue reference." (Decision, pp. 6-7.)

Change in PTO procedure affects RCE processing

Back in October, the Patent Office announced a number of changes to the Examiner count system and docketing system, to go into effect November 15. You can find summaries of these changes at PatentlyO (here) and at Just a Patent Examiner (here).

Like most practitioners, I understand the basics of the count system, but not in enough detail to even begin to understand how these changes will affect my practice. So I'll admit I haven't spent much time thinking about these changes.

The change to docketing of RCEs at the PTO seems easier to understand: in the old days, PTO procedures gave Examiners only 2 months to process an RCE; now, the Examiner has no fixed deadline to process RCEs. Therefore, from what I've read, everyone expects RCEs to start backing up in the queue. In fact, this post at IP Today says the RCE delay could be several months to possibly a year.

I've read some discussion from examiners and practitioners about what all this will mean. (To read for yourself, check out comment threads for the PatentlyO and Just a Patent Examiner hyperlinks above). I was actually surprised that there wasn't coverage about this topic. Guess I was thinking of the continuation rules package back in October 2007, and all the hoopla then.

This change seems to have slipped in under the radar. Then again, it's just a change to internal PTO procedures, whereas the continuation rules package was widely viewed as the biggest change to patent practice in 25 years.

Enablement rejection when problem is complex and disclosure is short

An earlier post introduced Ex parte Rodriguez and discussed the Board's rejection of means-plus-function and apparatus claims. In this post, I'll cover the Board's enablement rejection of the method and computer-readable medium claims.

A claim is enabled when the specification allows a POSITA to "make and use" the claimed invention. Many Examiners and practitioners — and even some BPAI decisions — talk about enablement in terms of "support in the spec." This case is interesting because it uses the proper standard for determining whether claim are enabled: viewing the specification in light of the "Wands factors":

(1) the quantity of experimentation necessary; 
(2) the amount of direction or guidance presented;
(3) the presence or absence of working examples;
(4) the nature of the invention;
(5) the state of the prior art;
(6) the relative skill of those in the art;
(7) the predictability or unpredictability of the art; and
(8) the breadth of the claim.

Even if you've never seen this list before, you can probably guess how the factors work. For example, a spec with working examples (3) balances against unpredictable technology (7), and more disclosure (2) balances against complex technology (5).

The Board found that the three Wands factors relating to the Applicant's spec went against the Applicant:

(1) "the quantity of experimentation necessary" is high;
(2) "the amount of direction and guidance presented" by Appellants is minimal;
(3) there are no "working examples" presented by Appellants in their Specification;
(Decision, p. 42.)

Basically, the Board considered this to be a skimpy disclosure. There are a total of three figures. FIG. 2 is the block diagram that shows the most detail:

FIG. 3 is the only flow chart:

The flow chart doesn't have more than a single block for each step in the independent method claim:

11. A method for automated random verification of structurally variable and complex systems, comprising the steps of:
(A) generating a random system configuration file of said system;
(B) generating one or more parameters of said system in response to said random system configuration file;
(C) generating a system level netlist of said system in response to said random system configuration file;
(D) verifying one or more target modules with said system in response to said system level netlist; and
(E) automatically and randomly adjusting step (D) in response to said random system configuration file.

In the enablement rejection, the Board focused on the disclosure of steps B and C. According to the Summary of Claims in the Appeal Brief, steps B and C correspond to states 208 and 210 in the flowchart, and these steps are performed by the system builder (104 in FIG. 2). However, the Board did not find in the spec any description of how the parameters and netlist were generated.

The spec described, in general terms, what the generated parameters were: system parameters for a particular configuration of the system-under-test. The spec also described the input from which the parameters were generated: a configuration file which described the system in terms of bus functional models, target modules, and their respective interconnections. However, the Board found this basic description of input and output was all that was disclosed.

The spec contained even less detail for step C. The Board noted that the spec did not describe a netlist, but found that a netlist was known in the art to be a data structure which defines connectivity between pins of the various cells of an integrated circuit design. Even so, the Board found that the spec did not describe how to generate the system parameters or the netlist from the claimed inputs:

The Specification does not disclose any specific algorithm that could be implemented on a general purpose computer to provide automated random verification of complex and structurally variable systems." More particularly, Appellants' disclosure lacks even a single embodiment showing how to implement the "system builder" and steps (B) and (C).
(Decision, p. 41.)

Theoretically, a skimpy spec can be outweighed by other factors. Unfortunately, the skimpy spec also included a few statements that went against the Applicant: "factor (4) the nature of the invention" is highly complex as shown by Appellants' description of the significant prior art failings [in the Background] and Appellants' indications [in the Background] that their invention will overcome these failings." (Decision, p. 42.)

Also, factor (8) went against the Applicants: " 'the breadth of the claims" is very broad as it encompasses every way of accomplishing the "generating" results of steps (B) and (C)." (Decision, p. 42.)

The remaining factors were all favorable to the Applicant —less disclosure is required for predictable, well-developed, low-skilled technology:

(5) "the state of the prior art" is well developed as shown by the [reference which we rely on for the meaning of "netlist"];
(6) Appellants contend (without further support) that "the relative skill of those in the art" is high (see Finding of Fact 11 [statement in the spec that functions may be implemented using a conventional computer programmed "according to the teachings of the present specification, as will be apparent to those skilled in the relevant art(s)];
(7) Appellants also contend (without further support) that "the predictability of the art" is above average (see Finding of Fact 12 [statement in the spec that appropriate programming can be applied by programmers "based on the teachings of the present disclosure, as will also be apparent to those skilled in the relevant art(s)."])
(Decision, p. 42.)

When all the factors were considered, the Board found that the method claims were not enabled by the spec. And because the computer-readable medium claims included exactly the same functional language, the same finding applied to those claims as well.

Though the Board considered all the Wands factors, I believe the broad claims and skimpy disclosure were dispositive. Applicant's statement in the Background which described the problem as "complex" was the final nail in the coffin.

The Board strongly criticized the spec for not including "working examples." Unfortunately, the Board did not give any guidance as to what would serve as a "working example" in a software application. Is source code expected? Flow charts for every function? Are block diagrams not enough – or are block diagrams okay if more detail is provided?

I don't know much about this particular area of technology (verification of hardware using software). My sense from having read the spec and file history is that the "system builder" component which the Board focused on – and which had the least detail in the spec – was not the innovative feature. The word "random" appears a lot, and I wonder if the innovation has to do with mixing up the models that are used as input in a random way. If so, perhaps the Applicant could have avoided an enablement rejection by providing more details about the randomization feature. Then if an enablement rejection appeared, the Applicant could offer declaration evidence that a POSITA knows how to generate a netlist from a basic configuration file, and that this basic knowledge coupled with details about the randomizing are enough to practice the method claims.

Meaning of BPAI precedential and informative opinions

Earlier this week I discussed Ex parte Rodriguez. I noted that the decision was precedential, and you can probably figure out what that means. But if you're not familiar BPAI nomenclature, the BPAI provides a Standard Operating Procedure document which explains the meaning of BPAI "routine", "precedential" and "informative" opinions.

As its name suggests, a precedential opinion is one that must be followed in future BPAI decisions. The BPAI typically issues only two or three precedential opinions each year.
 
Informative opinions are more common: eleven were issued in 2009 (two of which were interference cases). The SOP describes informative opinions as follows:

Informative opinions are not binding, but illustrate norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest.

The vast majority of BPAI opinions fall into the third category of routine opinions. The SOP says:

Routine opinions that are cited by a party or that are publicly available may be cited for whatever persuasive value they may have but, as a general matter, Routine opinions should be cited sparingly.

Ex parte Rodriguez (precedential): 112 is the new 101

Ex parte Rodriguez (precedential)
Decided October 1, 2009
(Appeal 2008-000693, Appl. No. 10/132,492, Tech. Center 2100)

This case involved four different sets of claims: apparatus claims; means-plus-function claims; method claims; and computer-readable medium claims. The technology related to verification of hardware components, using software running on a computer.

All claims were rejected by the Examiner under §102(b). Without reaching the merits of the Examiner's rejection, the Board entered new grounds of rejection for each of the claim sets:

• means-plus-function claims: rejected under §112 Second, following the rationale set out in Aristocrat v. Inter. Game Tech.
• apparatus claims: found to be means-plus-function claims and also rejected under §112 Second, following Aristocrat.
• apparatus claims: alternatively, if not considered to be means-plus-function, rejected under §112 First, enablement.
• method claims and computer-readable medium claims: rejected under §112 First, enablement.

A rejection under §101 was (inexplicably) missing.

If the Patent Office issues guidelines based on this decision, I predict Ex parte Rodriguez will have a big impact on practitioners that prosecute "software" applications. Method claims have already hit a roadblock with 101/Bilski, but Bilski itself doesn't suggest its application to other claim types. This decision, on the other hand, applies to method claims – possibly even those that pass the Bilski test – and most of the other claim types that are used cover software implementations. The only claim type that isn't directly implicated by this decision appears to be a processor-plus-memory claim.

Although the four new rejections were each slightly different, all are based on the same underlying facts: the claims contained very little structure and instead relied almost completely on functional language; and the specification contained very little detail about how to implement the functions. Therefore, the patent applications that will be most affected by Ex parte Rodriguez are ones that fit this fact pattern.

In this post, I'll discuss how those facts played out in Ex parte Rodriguez in the rejections of the means-plus-function and apparatus claims. In a future post, I'll discuss the rejection of the method and computer-readable-medium claims.

Means-plus-function claims: The specification stated that the various claimed functions could be implemented by a "conventional general purpose digital computer," and also said "appropriate software coding can readily be prepared by skilled software programing." However, the Board found that no specific description of how to generate a system configuration file was provided.

Whenever a general purpose computer is disclosed as the means for implementing a function, an algorithm to implement that function must also be disclosed. This rule – essentially saying that an algorithm serves as the "structure" – was recently set out by the Federal Circuit in Aristocrat, although Aristocrat followed precedent set way back in 1999 by WMS Gaming. Because the spec disclosed no such algorithm, the Board found the means-plus-function claims to be indefinite.

Apparatus claims treated as means-plus-function: An example limitation in the independent apparatus claim is: "a system configuration generator configured to generate a random system configuration file of a structurally variable and complex system." Even though the magic word "means" was not present, this limitation (as well as each of the others) was still subject to §112 ¶6 because the Board found no evidence that the terms in question (e.g. "system configuration generator") connoted structure. Having determined that the apparatus claims were really means-plus-function in disguise, the Board then repeated the Aristocrat analysis set out above to find the claims indefinite.

Apparatus claims treated as NON-means-plus-function: If the apparatus claims did not fall under §112 ¶6, the Board found that these claims were invalid for lack of enablement "because the claim elements are purely functional (i.e., there is no particular structure to support the function being performed)." (Decision, p. 28.) To hold otherwise would allow the claim to "encompass any and all structures for achieving that result, including those which were not what the applicant had invented." (Decision, p. 30.) "Congress permitted [through §112 ¶ 6] the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof." (Decision, pp. 30-31, quoting Greenberg v. Ethicon, Fed. Cir. 1996.)

The Board found that the "system builder" limitation covered any and all structures that performed the recited function. Since "any and all structures" included ones not described in the specification, the Board then entered an enablement rejection for the apparatus claims.

Method and computer-readable-medium claims: I'll discuss these in a future post.

Long patent specifications

Dennis Crouch wrote a recent post at PatentlyO entitled "The Requirement that the Written Description be Concise." His point was that the statute itself says "concise" but neither the courts nor the BPAI have paid much attention to this requirement.

The comment thread for this post had an interesting discussion among practitioners about why patent application are wordy. (Check it out here. And an older thread on the same topic here.) Several points of view are presented, but general consensus is that a big driver of fat specifications is claim construction – and the uncertainty surrounding it.

One commenter mentioned an Apple publication (20080122796) which, according to PAIR, includes: a 193 page spec; 302 pages of drawings; and 44 claims, 9 of which are independent. I wonder if the drafter got a big budget for this application, or whether it was subject to standard pricing, or even a flat-fee arrangement.  

This Apple application hasn't yet started examination, but a continuation has already issued (7,479,949). That seems strange until you hear that the continuation went through Accelerated Examination. The Applicants filed a 132-page Examination Support document. No Office Actions were issued. An in-person Examiner Interview was conducted, a Terminal Disclaimer was filed (over the not-yet-examined parent), and the patent issued.  

In re Giacomini: random thoughts on the prosecution history

Earlier I posted (here) on In re Giacomini, an appeal from the BPAI to the Federal Circuit to decide the issue: when a reference claims benefit to a provisional, is the provisional filing date used as the effective date of the reference?

This is a case of first impression for the Federal Circuit, and I'm glad someone else is spending the money to get this issue resolved.  Not sure why these guys chose to be the test case. The assignee of the patent is a privately held company (Broadspider Networks), and according to the Applicant's brief, the patent attorneys that represent the Applicant are shareholders.

In this post I have a few random comments on the prosecution history of this case (Application 09/725,737). The technology involves resource caching on a web server.

The Applicant had a number of objected-to dependent claims in the case, yet decided to appeal to the BPAI – and then to the Federal Circuit – rather than taking the allowable subject matter. However, a continuation was filed on the same day the appeal to the Federal Circuit was filed.

The Applicant overcame 2 of the 4 rejections at the BPAI, and is appealing the remaining 2 rejections to the Federal Circuit. Thus, the Applicant needs to win not only on the "not prior art" issue, but also on "does not teach" for a different reference.

The Applicant's filing date was only two months before the reference's provisional filing date. Thus, it seems like swearing behind the provisional could have been an option. But who knows? Could be the Applicant didn't have good evidence of diligence or of actual reduction to practice.

During prosecution, the Applicant made absolutely no substantive arguments against the "not prior art" reference, i.e., did not argue "does not teach." Once again, sounds like a good candidate for swearing behind.

The reference patent publication and the provisional were almost identical. So the material relied upon in the rejection was clearly "supported" by the provisional and thus the reference is entitled to the provisional filing date according to BPAI precedent (Ex parte Yamaguchi, discussed in my previous post).

In the appeal to the BPAI, the Applicant didn't present a detailed argument about "can't use the provisional filing date," despite the fact that this position conflicts with the MPEP and with BPAI precedent. The Appeal Brief simply said: "The 102(e) filing date of Tran is 29 December 2000, which is after the filing date of the present application (29 November 2000), and therefore, is an invalid prior art reference." The Examiner's Answer pointed out the priority claim to the provisional. The Applicant didn't file a Reply Brief. 

Since the Applicant's position on use of the provisional filing date goes against BPAI precedent, it seems to me there was no real chance of winning this issue at the BPAI. In other words, if you want BPAI precedent to be overruled, you need to go to the Federal Circuit, and there's no point in arguing statutory construction to the BPAI.

Surprisingly, the BPAI did not raise a new rejection under 101, even though one of the independent claims was the following method claim, which seems vulnerable to the Bilski machine-or-transformation test:
    1. A method comprising:
    populating a cache with a resource only when at least i requests for said resource have been received;
    wherein at i is an integer and is at least occasionally greater than one.

I don't know much about appellate practice. But I wonder if the Federal Circuit can raise a new 101 rejection, or even remand to the BPAI with instructions for a new rejection?

Follow up / Related Posts:

• I blogged here about the BPAI decision Ex parte Giacomini going up to appeal, and here about the eventual Federal Circuit decision In re Giacomini.
• I blogged here about why the Applicant didn't even argue that the reference didn't deserve the provisional's filing date.

Fed. Cir. appeal on use of provisional date as priority date (In re Giacomini)

Last year, the BPAI issued the precedential opinion Ex parte Yamaguchi, which held that a reference is available as 102(e) prior art as of the filing date of its provisional application, as long as the provisional "supports" the subject matter used in the rejection.

I didn't even blink when I read this decision, since I see Examiners do this all the time and the MPEP specifically allows for this (see MPEP 2163.03). My impression of Yamaguchi was that the Applicant didn't understand the burden of proof: the Applicant argued that the provisional "didn't exactly track" the reference patent publication, and the Board considered this to be a conclusory statement which wasn't enough to rebut the Examiner's finding that the "provisional application 'clearly shows the same subject matter as applied from the [reference]'."

Now this issue – reaching back to the provisional filing date – is coming before the Federal Circuit in the case In re Giacomini (Fed. Cir. docket no. 2009-1400). I was surprised to learn this is the first time the Federal Circuit has considered the issue. True, the relevant language in § 102(e) is relatively recent: the 1999 "American Inventors Protection Act". But no one in the last 10 years had an infringement case or a BPAI case that hinged on a reference's provisional date that was important enough to appeal?

In re Giacomini is scheduled for oral argument in January 2010, and the briefs are available through PatentlyO (here).

Though I glanced at the briefs, I'm not interested enough in statutory construction to form an opinion on which side has the better argument. I am interested in patent prosecution, though, and found a few things in the file history that I'll comment on in a later post.

Follow up / Related Posts:

• I blogged about the eventual Federal Circuit decision In re Giacomini here; 
• I blogged about why the Applicant didn't even argue that the reference didn't deserve the provisional's filing date here.
• I blogged about Giacomini's indefiniteness issue at the BPAI here.

Pitfalls when arguing disadvantage of a reference in a 103

When reading BPAI decisions, I'm particularly interested in motivation-to-combine arguments. One line of attack that I often see is attacking the Examiner's motivation-to-combine by saying the combination has a disadvantage, and thus the POSITA would not be motivated to combine. In a similar line, the Applicants often argue that the combination negates a benefit provided by one of the references, and thus the POSITA would not be motivated to combine. Applicants often couch these similar arguments as "teaching away".

When presented with such arguments, the Board often cites to Winner Int’l Royalty Corp. v. Wang (Fed. Cir. 2000):

The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.

Here are several examples of cases in which the Board found that the Applicant's motivation-to-combine argument was a losing argument under Winner.

Ex parte Hahnl involved a muffler with a spring-controlled valve. In making a 103 rejection, the Examiner found that the primary reference taught a coil spring in a muffler, but did not teach a mechanism for cooling the spring. The Examiner therefore added a secondary reference which discloses a heat shield surrounding a spring in a boiler. The Applicants argued that the muffler reference taught away from the combination: the muffler spring was already made of heat-resistant material, and thus adding the heat shield was redundant, and increased the cost for no good reason. The Board found that this did not nullify using the heat shield reference to modify the muffler reference, since a POSITA could nonethless see a benefit in adding additional heat protection to the spring.

Ex parte Rawle involved a shaver with razor blades. The Examiner rejected under 103 using only a single reference, saying that modifying the three-bladed unit in the reference to add two more blades would be obvious because doing so would provide a closer shave. The Applicants argued that adding blades increases friction which reduces shave quality. The Board found that "these competing considerations (closer shave vs. increased frictional drag forces) would likely be weighed by" a POISTA, but "the mere existence of competing considerations does not establish nonobviousness."

Ex parte Sisken involved an engine with two exhaust gas control valves. The Examiner found that the primary reference in the 103 rejection taught everything except a second control valve as claimed, and so remedied this deficiency by adding another reference which taught two control values, the second one positioned as claimed. The Applicants argued that the primary reference taught away from the combination since it discussed the increased cost and complexity of a second valve. The Board found that a POSITA "could see benefit in generating air flow during the regenerating process which could outweigh the cost and complexity considerations of adding a second valve".

Ex parte Cooper involved a method of transferring funds. The Examiner found that the primary reference disclosed everything except delivering an ATM card to the funds recipient. The Examiner added a secondary reference which disclosed fund transfer to third-party recipients, including issuing an ATM card to the third-party recipient. The Applicants argued that the primary reference taught away from the combination because the stated goal of the primary reference was to eliminate the use of an ATM card. The Board acknowledged that withdrawal without an ATM card was an objective of the primary reference, but noted that the reference "further states that despite the advantages of a cardless withdrawal system, the invention may also be used in connection with other terminals, such as conventional ATMs". Thus, the reference did not teach away from the combination.

Ex parte Cable involved a grain conveyor which used an oval coil spring. The Examiner found that Admitted Prior Art disclosed all the elements, except that APA used an elastomeric spring instead of an oval coil spring. The Examiner then remedied the deficiency with another reference that disclosed an oval coil spring, finding it an obvious design choice to substitute one spring for another. The Applicants pointed to reasons described in the spec as to why a POSITA would not use coil springs. The Board found that "each of the alternatives of record had known advantages and disadvantages. However, the record does not provide any direct teaching away from the use of ovoid coil springs in vibratory conveying apparatuses."

To increase your chances of winning on this type of argument, it would probably help to go the extra mile and show that you've considered how the pros and cons of the combination play out when weighed against one another.

Fed. Cir. says BPAI didn't properly apply "each" (In re Skvorecz:)

Today I'll discuss a Federal Circuit review of a BPAI decision, In re Skvorecz. I didn't find much coverage of this case in the usual patent blogs, although Patent Hawk did cover it (here). 

Inventor Skvorecz filed a reissue on his patent on a wire stand, and when he lost at the the BPAI, the inventor appealed to the Federal Circuit. The Federal Circuit addressed three issues (reissue capture, anticipation, and written description) but this post will discuss only the anticipation rejection.

The anticipation rejection turns on whether "comprising" allows the presence of an extra instance of X that doesn't meet the limitations that the claim imposes on X, as long as some Xs do meet the limitation. In other words, does a collection of round and square widgets anticipate "a plurality of widgets, each widget being round". Some widgets aren't round...but are the square widgets part of the claimed plurality, or can they be ignored?

The relevant portions of the claim at issue are shown below:

1.  A wire chafing stand comprising an upper rim of wire steel... a lower rim of wire steel ...having at least two wire legs with each wire leg having two upright sections interconnected to one another...a plurality of offsets located either in said upright sections of said wire legs or in said upper rim...

The Board found that the reference did have two legs, each with multiple offsets located in the upright sections of the leg. 

On rehearing at the BPAI, the Applicant argued that the claim language requires that "each and every wire leg in the chafing stand of claim 1 (not selected wire legs) must include an offset," and that the Board had overlooked a third leg in the reference which does not include an offset. Therefore, Applicant argued the reference did not anticipate.

On rehearing, the Board first found that the third leg referred to by the Applicant is a transverse member rather than a leg. The Board also summarily dismissed the Applicant's argument about the meaning of "each", simply stating that "the claim language does not preclude a third wire leg that does not include an offset." On appeal to the Federal Circuit, the PTO explained its reasoning, relying on the special meaning of "comprising":

The PTO argues that because the signal “comprising” is open-ended, not every wire leg is required by claim 1 to include offsets. The PTO states that the usage “comprising” permits the Skvorecz structure to include legs without offsets, although claim 1 states that “said wire legs” and “each wire leg” have offsets.

The Federal Circuit agreed with the Applicant: "The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claim states that each wire leg has an offset." (Decision, p. 8.) "The signal 'comprising' does not render a claim anticipated by a device that contains less (rather then more) than what is claimed." (Decision, p. 8.)

After interpreting "each leg of the at least two legs" to mean "every leg", the Court went on to chastise the PTO for stretching the claims past the broadest reasonable interpretation to a "legally incorrect interpretation." (Decision, p. 8.)

But was the PTO that far off? As pointed out by the Federal Circuit blog 717 Madison Place (here), back in 2003 the Federal Circuit itself took the position that "each" did not mean "every", in the case ResQNet.com v. Lansa:

Claim 1 of the ’608 patent recites “each of a plurality of fields,” which does not carry the same meaning as “every field.”  Rather, the recitation of “plurality” suggests the use of “at least two.” See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term means, simply, ‘the state of being plural.’”).  While “at least two” may mean “every” under some circumstances, the two terms are not synonymous.  In sum, “each of a plurality of fields” means “each of at least two fields.”

I found it interesting that in In re Skvorecz, the Court didn't even mention any other Federal Circuit cases dealing with "each", and chose instead to focus on "comprising" and "broadest reasonable interpretation."

Specialized Federal Circuit patent blogs

A lot of blogs cover Federal Circuit patent decisions, but I like to know a little of the backstory too. For that I turn to PATracer, a blog written by two patent litigators. PATracer is different because it covers a case before the decision is issued. This PATracer post on Prometheus v. Mayo is a good example of the type of coverage you'll find: arguments made by both parties, info about the district court decision, and about the oral arguments. While some of the cases on PATracer involve appeal for non-patent issues (jurisdiction, standing, etc.) others do involve substantive patent issues.

Another Fed Cir blog focuses on oral arguments: 717 Madison Place. I've never had a particular interest in oral arguments, but I found this blog interesting enough to add to my Google Reader.

Examiner not required to make a finding of the level of skill

According to KSR, a factfinder must make three factual determinations (the "Graham factors") in an obviousness analysis: scope and content of prior art; differences between prior art and claims; and level of ordinary skill in the pertinent art.

In making a §103 rejection, Examiners almost always cite to portions of the references, so I suppose that's making a finding about the "scope and content of prior art." Some Examiners do a better job than others in explaining the differences between the art and the claims, but I can usually read in between the lines here.

Yet in the applications I've prosecuted, I don't recall a single instance of the Examiner ever discussing the level of skill in the art. Furthermore, such findings are also rare in the BPAI cases that I've read. Yet the Board doesn't consider this lack of an Examiner finding to be an error.

How can this be? Why is there such a disconnect between the law and Board-sanctioned Examiner behavior? Are we practitioners wasting paper by arguing that the Examiner hasn't made a prima facie case of obviousness because the Examiner didn't make findings of fact on level of ordinary skill? Or, worse yet, do we look uninformed when we make this argument, because the Examiner isn't really required to do this after all?

The answer seems to be: Yes, you're probably wasting time dinging the Examiner for this. According to the BPAI, case law allows the Examiner to take some shortcuts or make some assumptions about level of ordinary skill.

An Applicant brought up this very issue in an appeal to the BPAI, and the Board had this to say on the subject:

Appellant faults the Examiner for failing to ascertain the level of skill in the art, citing Graham. Reply Br. 4. In the absence of other evidence addressing the level of skill, it is presumed to be represented by the references themselves. See In re Oelrich, 579 F.2d 86, 91 (CCPA 1978) ("the PTO usually must evaluate both the scope and content of the prior art and the level of ordinary skill solely on the cold words of the literature"); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (Board did not err in adopting the approach that the level of skill in the art was best determined by the references of record.)
(Ex parte Atkin, p. 21.)

This seems to be consistent with the MPEP, if you read it carefully:

Office Personnel fulfill the critical role of factfinder when resolving the Graham inquiries....When making an obviousness rejection, Office personnel must therefore ensure that the written record includes findings of fact concerning the state of the art and the teachings of the references applied. In certain circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done.
(MPEP 2141.)

So the MPEP says findings about level of ordinary skill are required only sometimes. Another statement from §2141 says that the finding can be implicit rather than explicit:

Any obviousness rejection should include, either explicitly or implicitly in view of the prior art applied, an indication of the level of ordinary skill.

Although no case law is cited, this statement is consistent with In re GPAC, one of the cases cited by the Board in Ex parte Atkin (noted above).

Given that the law doesn't really require the Examiner to specifically discuss level of ordinary skill in the art, I'm not sure that boilerplate telling him that he does is useful.

"Substantially no software" doesn't exclude software (Ex parte Avizienis)

Ex parte Avizienis
Decided October 29, 2009
(Appeal 2009-003592; Appl. No. 09/886,959; Tech. Center 2100)

I posted about this case earlier (here) to discuss 112, fourth paragraph. In this post, I'll discuss the claim construction of the element "a hardware network of components, having substantially no software".

In the Brief, the Applicant took the position that the primary reference did not disclose this element, because the "cited circuits [in the primary reference] are operated by associated software, most prominently avionics software." (Brief, p. 20.)  Before filing the Brief, the Applicant also filed an expert affidavit under 1.132 making this same point. The Examiner did not make a specific allegation about how the reference taught the "substantially no software" limitation, instead only stating that "Figures 3, 4, and 5 disclose a hardware network of fault detection and handling components." (Answer, p. 5.) 

The Board found that "having substantially no software" did not distinguish over the primary reference, construing the term as follows:

We note that the Court of Appeals for the Federal Circuit has repeated reaffirmed that the term "substantial" implies "approximate." See note 6 supra. Thus, we broadly but reasonably construe Appellant's claim 1 as not precluding the use of software programs that may be held in a ROM or any other medium or firmware.
(Decision, p. 16.)

My reaction to this: the Board appears to have read "substantially" out of the claim! If "substantially no software" does not preclude the use of software, what effect does the adjective "substantially" have?

I wouldn't take issue with this if the Board analyzed the reference to find that "the reference is 95% hardware and 5% software", and then concluded that such a makeup qualifies as "substantially no software." I also wouldn't take issue with this if the Board found that "substantially" was indefinite when measuring to software vs. hardware. They could punt by saying: "We can interpret phrases like 'substantially parallel' and even 'substantially simultaneously' but we simply don't know what 'substantially no software' actually means." Instead, the Board seems to have jumped to a conclusion without a good explanation.

Improper dependent for adding element introduced in preamble (Ex parte Avizienis)

Rejections of improper dependent claims under §112, fourth paragraph are uncommon, so was interested  to come across one in a BPAI decision recently. Although I learned some things about §112 , fourth paragraph, the decision was disappointing in several ways.

Ex parte Avizienis
(Appeal 2009-003592; Appl. 09/886,959; Tech. Center 2100)

Here are the two claims involved in the §112, fourth paragraph rejection:

1. Apparatus for deterring failure of a computing system, said apparatus comprising:
   a hardware network of components, having substantially no software and substantially no firmware except programs held in an unalterable read-only memory;
   terminals of the network for connection to such system; and
fabrication-preprogrammed hardware circuits of the network
   for guarding such system from such failure.

4. The apparatus of claim 1, further comprising
   such computing system.

The first thing you probably noticed about the dependent claim is "such". Not to worry — the Specification explicitly states that "such" means the same thing as "the" or "said", but refers back to features that are part of the environment rather than ones that are actually part of claimed apparatus.

The Examiner didn't seem to have a problem with the use of "such" rather than "the". Instead, the Examiner took the position that "comprising such computing system" did not further limit claim 1 because the computing system was already a limitation of claim 1. Specifically, the Examiner found that "a computing system" was introduced in the preamble, and was given patentable weight because the feature was then recited in the body of the claim. Thus, "reciting 'such computer system' in its own claim becomes a redundant limitation." (Final Office Action, p. 4.)

The Examiner's reasoning here seems to fly in the face of well-known and accepted patent practice, namely, the practice of including a "workpiece" in the preamble rather than positively reciting the workpiece as an element of the apparatus. This practice can be helpful in capturing infringement. For example, in this particular set of claims, the apparatus works in conjunction with a system (the "workpiece" that is operated on), providing fault protection for the system. However, the protective apparatus is likely to be sold separately from the system. Therefore, it's a good idea to not positively recite the system as an element. Instead, the system goes in the preamble, and is referred to as necessary when describing the apparatus and how it functions to protect the system. 

The Examiner's reasoning confuses patentable weight with what elements are actually part of the apparatus. The computer system is functionally related to the apparatus, and therefore the body of the claim does refer to the system introduced in the preamble. Specifically, "computer system" is given patentable weight so that not just any old hardware circuits will anticipate, but only those circuits that perform the function of "guarding such computer system".

Nonetheless, the computer system is not part of the apparatus of independent claim 1. Therefore, adding the computer system as a positively recited element of the apparatus, as dependent claim 4 does, clearly further limits independent claim 1.

[Note: Whether this function was merely "intended use" and thus should not be given patentable weight is a separate issue, not brought up in the case. In fact, the Examiner's reasoning depends on answering Yes to the patentable weight question.]

The Board agreed with the Examiner's conclusion — that "such computer system" in the dependent claim did not further limit the independent claim. But while the Examiner didn't have a problem with the non-standard term "such", the Board did:

Instead, we conclude that the use of "such" actually broadens what has been previously claimed, because "such computing system" (claim 4) could be reasonably read on a different computing system (perhaps a similar computing system) than the particular "computing system" originally introduced in the preamble of claim 1. Thus, we are persuaded by the Examiner's arguments...
(Decision, pp. 12-13.)

I take issue with several aspects of this decision.

1.  The only way you can read "such computing system" on a different computing system is by flatly ignoring the Specification, which explicitly explains that "such" is used to refer back to previously introduced terms. Even the "broadest reasonable interpretation" isn't allowed to contradict the specification. 
2. If the Board does interpret "such" to add an additional element, then the dependent claim does limit the independent claim, which means the rejection under §112, fourth paragraph should be reversed.
3. If it's unclear whether or not "such computer system" introduces a new element, the claim has an indefiniteness problem, and the §112, fourth paragraph rejection should be converted to an indefiniteness rejection.
4. The §112, fourth paragraph should be entered as a new ground of rejection because the Board used different reasoning than the Examiner did. The position taken by the Examiner in prosecution was that "such computer" did not introduce a new element, and thus did not further limit the claim. The Board took the opposite position — that "such computer" introduced a new element. The Board should make this a new ground of rejection to give the Applicant a chance to respond to this argument for the first time.

"User control for action X" covers automatic X (Ex parte Wood)

Ex parte Wood
Decided July 29, 2009
(Appeal 2009-002250, Appl. No. 10/077,062, Tech. Center 2600)

This case relates to steroscopic imaging. The claim limitation at issue is:

a single user control for adjusting the first and second distances of the stereoscopic image displayed by the display means, wherein at least the first distance of the stereoscopic image displayed on the display means is adjusted to correspond to a distance between eyes of a user.

The Examiner rejected under §102, with a reference teaching a stereoscopic imaging system with computer-controlled calibration that takes intraocular distance into account. The Examiner took the position that the computer is the claimed "user control" because the computer makes adjustments of the image distance based on the user. (Final Office Action, p. 2.)

The Applicant argued that the computer automatically adjusts images, and the system does not allow the user to make any distance adjustments. Therefore, the computer is not a "user control for adjusting" image distances.

In the Answer, the Examiner asserted an alternative form of the rejection, based on a different feature of the reference where a user moves a sheet with a target on it, the computer tracks the target and adjusts the image distance accordingly. "It is the user who moves the sheet, thus the user is controlling the apparatus." (The Examiner did not withdraw the original basis of the rejection, but added this as an alternative basis.)

The Board upheld the rejection, first noting that the Applicant's distinction between automatic and user control was irrelevant because "the words 'manual' or 'manually' do not appear in any of the claims." (Decision, pp. 9-10.) The Board then found that the claimed user control encompasses a user's manual movement of the sheet to calibrate or adjust the stereoscopic parameters.

The Board didn't stop there, but went on to make several additional findings about how other portions of the reference also taught the claimed "user control." The Board noted that the reference's system corrects for a different intraocular distance whenever a user of a different size (e.g., a child) steps in front of the reference's system. "Thus, the user's self-induced movement constitutes a form of user control or input." (Decision, p. 11.)

Finally, Board brought up several features not explicitly taught by the reference, but which would nonetheless be understood with by a POSITA, which read on user control of the stereoscopic distance parameters. "The common knowledge of the technologist [POSITA] would include the technical fact that a stereoscopic system such as that shown in Shapiro's Figure 7 would have an on/off button for user operation, or an on/off button for starting...the calibration routine."  (Decision, footnote 8, p. 10.) Thus, a button which initiates the computer-controlled calibration is a "user control for adjusting" the parameters as claimed because the user presses the button and the resulting calibration takes intraocular distance into account.

Like most BPAI decisions I read, this one makes me think about alternative ways to claim that avoid the Board's broad construction.

How do you claim user control of X in a way that avoids user-initiated computer control of X? That is, how do you avoid reading on the user pressing the button that initiates the computer-controlled calibration sequence that takes action X (here, adjusting the intraocular distance).

How do you claim user control of X in a way that avoids indirect user actions that affect X? Like the user moving in front of the system, which triggers the computer-controlled calibration sequence that takes action X?

One obvious answer to both of those questions is something like a "control for direct user adjustment of the first and second distances". Though if you tried making this amendment in prosecution, I can see getting a §112, First paragraph rejection. Ideally, you could think through all these possible broad constructions and capture the distinctions in the specification. When writing applications and drafting amendments, I used to spend all my time worrying about how my language can affect infringement. Now I realize that to get a patent, I need to spend time worrying about how my language can be broadly construed in ways I never considered to read on prior art that I hadn't even considered.

One final comment. I note that Board's comment that the claims don't specify manual or automatic seems to imply that the Examiner's first application of the rejection, using the computer-controlled calibration without the user-moved sheet, would also be upheld. This seems to read the adjective "user" out of "user control," unless you agree with the Examiner's position that "user" doesn't describe the entity doing the controlling, but instead describes the type of adjustments (i.e., "the computer makes adjustments of the image distance based on the user").

Careful when using OR in a claim to modes

The Ex parte Nguyen decision which I discussed earlier (here) had an interesting footnote about the use of "or." The claim limitation at issue was "a single button for controlling said means for operating to allow a said user to select write mode or said pan mode." Other limitations described the two modes.

The concept of modes and mode selection is common in the kinds of applications I draft and prosecute. Modes are almost always mutually exclusive, so the system is in one of the supported modes at a time. Therefore, using "or" when describing mode behavior seems natural to me, and I would interpret the above limitation as a button that selects between the two modes.

The Board's footnote in Nguyen suggests that the Board would interpret this limitation differently:

We note that the "single button" of claim 1 also reads on a button that merely selects either a write mode or pan mode, i.e., not necessarily both.

I read this as "a button that selects write mode reads on the claimed button; a button that selects pan mode reads on this button; the button doesn't have to toggle between the two." Whereas my interpretation of the claimed button does require the button to toggle between the two.

This is the first Board decision I recall that suggested this interpretation, but I've definitely run across Examiners who treat the phrase "X or Y" as permission to find only one of them in the reference. You can try to convince the Examiner (or the Board) that "or" doesn't always have such a narrow meaning, but I think this claim language might work better: "a single button for controlling said means for operating to allow a said user to select BETWEEN said write mode AND said pan mode."

One weakness I can see with my proposed claim language is this: what if there modes other than write and pan? Will the accused infringer attempt to argue that your claim requires switching between exactly these two modes?

"Button" includes software and hardware implementations (Ex parte Ngueyn)

Ex parte Nguyen
Decided September 21, 2009
(Appeal 2009-007175; Appl. 10/696,610; Tech. Center 2100)

The claim at issue was directed to "a pen-based computer system", and the element at issue was "a single button for controlling said means for operating to allow a user to select said write mode or said pan mode".

The Examiner took the position that an on-screen icon, which the user activated by touching the icon with the pen, read on the claimed button. The Examiner further explained that "one skilled in the art recognizes controls, GUI elements, buttons are all under the same category of visual cues to the user that perform a function when activated." (Answer, pp. 3-4.)

The Applicant argued that "a manually actuated button and a screen pen touch icon selection element are simply not the same." (Brief, p. 8.) The Examiner responded that the specification describes hardware and software, but the claim language makes no distinction between the two and so it is not clear whether the claimed button is physical or is a part of the user interface. (Answer, pp. 8-9.)

The Board agreed found that the reference's icon read on the element at issue:

Further, claim 1 does not limit its “button” to a hardware-type button as Appellant argues. Rather, claim 1 merely recites “a single button” that allows a user to “select said write mode or said pan mode.” Thus, we interpret the “button” of claim 1 as including both hardware-type and screen icon-type buttons.
(Decison, pp. 7-8, citations omitted.)

The claim construction standard used by the Board is "broadest reasonable", so I wasn't surprised at all to see the Board's construction of "button". I think that a person familiar with computers would understand "button," when used in a claim to a pen-based computer, to encompass both a physical button and a on-screen button implemented in software. Such a person wouldn't feel the need to consult the spec, since button is a familiar term.

However, I reviewed the spec, and the claimed mode selection button is described only as a physical button. And as described by In Re Bond, the standard is the "broadest reasonable interpretation consistent with the specification". Therefore, it seems to me that the Board's construction is incorrect.

The decision did not include any Findings of Fact about the Applicant's spec, so perhaps the Board did not review the spec, but instead relied on the Examiner's characterization of it. As noted above, the Examiner's claim construction discussion characterized the spec as describing "hardware and software." This statement seems to imply that the button was described as being either, even though the spec contained no mention of a software-implemented on-screen button.

No rationale to combine separate conditions for claimed action (Ex parte Pierre)

Ex parte Pierre
Decided September 8, 2008
(Appeal 2008-3860, Appl. No. 09/972,821, Tech. Center 2600)

This case relates to interactive television. The limitation at issue was:

removing the viewer discernable notification of the detected event, in response to detecting said priority is relatively low and a timeout for acknowledgement of said event has expired.

The Board interpreted this claim as requiring that removal be conditional on detecting both conditions (priority and timeout). The Examiner used a §103 combination of three references, though only one of the references was used for teaching the removing action, the priority condition, and the timeout condition. (The other references were used for teaching other elements not at issue.)

The Board agreed with the Examiner's finding that the relied-upon reference taught the removal action and the two conditions. However, the Board found that the reference taught removal upon either of the two conditions, not both. The Board then found that:

The Examiner has not articulated a rationale to explain how Kikinis teaches or suggests that the viewer discernable [sic] notification of the detected event is removed in response to detecting both: (1) the priority is relatively low; and (2) a timeout for acknowledgement of the event has expired. Instead, the Examiner merely addresses how Kikinis teaches removal of the viewer discernable notification in response to detecting each of the two conditions separately (Ans. 5, 12). But the Examiner has not addressed how Kikinis teaches or suggests removal of the viewer discernable notification in response to detecting both of the two conditions.
(Decision, p. 7.)

KSR requires "articulated reasoning with some rational underpinning to support the legal conclusion of obviousness," and because the Examiner did not provide such reasoning the Board reversed the §103 rejection.

What I noticed about this case is that the Board's grounds for reversal were no-reason-to-combine rather than does-not-teach. This highlights the danger of not addressing the combination in a §103 argument.

Note that the "combination" at issue for this particular element was not a combination of two references, but two features from the same reference. That might lead a practitioner to argue does-not-teach, or more particularly, does-not-teach-elements-as-arranged-in-the-claims. For an anticipation rejection, that would be enough: you can argue that the reference must teach the action based on both conditions, not simply action-on-condition-1 and same-action-on-condition-2.

Obviousness allows the Examiner to combine action-on-condition-1 with same-action-on-condition-2 to result in action-on-both-conditions — regardless of whether the conditions come from the same reference or different references. (Thus, I find it helpful to think of "combination" in terms of combining features rather than references.)

The catch is, though, is that the Examiner must provide a rationale for combining the features. When the features (here, the two conditions) come from different references, this point is so central to the obviousness analysis that it doesn't need stating. Yet I think it's easy for Examiners and practitioners both to overlook this point in a case like this one, when the two features come from the same reference.

Two newly discovered patent blogs

It's interesting to hear about issues from an in-house point of view. So I'll definitely be reading these two blogs which I recently discovered.

American IPA
"Occasional thoughts on US patent practice" from an in-house patent attorney.

Property, intangible
A blog about ownership of intellectual property rights, written by an in-house IP attorney.

BPAI panel says inter partes case irrelevant to an appeal

Recently, I posted (here) about a BPAI case that questioned the relevance of infringement claim construction case law in a BPAI appeal, given that different standards of claim construction apply.

In another case, Ex parte Anderson, the Board criticized the Applicant for citing a Federal Circuit infringement decision related to inherency. This time the Board's reasoning focused on how the burden of production differs in ex parte and inter partes practice:

[Applicant] cites inter partes infringement decisions to make the same points [about inherency]. We, on the other hand, have gone out of our way to limit the citations to ex parte decisions. There is a reason. Ex parte practice differs from inter partes infringement practice. For example, it is possible for the Examiner to make out a prima facie case of inherency by establishing that an applicant's claimed composition prima facie appears to be the same as a composition described in a reference. Unlike accused infringers in inter partes infringement cases (or for that matter parties in interference cases), the USPTO has no means for making and comparing properties or characteristics of compositions. Accordingly, if the Examiner has a reasonable basis for believing that a reference describes a claimed product, the burden of going forward with the evidence shifts to the applicant. The burden of going forward with the evidence applicable in ex parte practice does not apply in inter partes cases.
(Decision, pp. 13-14.)

As I noted in my earlier post, I have seen this criticism from the Board only a few times. So I probably won't change my practice, unless I find a good "In Re" case that says the same thing that the infringement case does.

BPAI panel says infringement case irrelevant in appeal

According to Ex parte Alms, Applicants should be careful in "citing and relying on inter partes infringement cases for claim construction principles when claims are before the USPTO." What's the problem? Different standards of claim construction.

The standard used by the BPAI has a nifty name: "broadest reasonable construction." The standard used in an infringement case doesn't have a nifty name, but for the purpose of contrasting with the BPAI standard, the standard can perhaps be summed up as something like: a construction consistent with the specification, as viewed by one of ordinary skill in the art. The important point being that the prosecution standard is intended to be broader than the infringement standard.

If taken to an extreme, this seems to imply that the only relevant Federal Circuit claim construction cases are those that review BPAI cases (i.e., "In re" cases). If that's so, someone should update the MPEP, since §2111 contains a number of cites to infringement case law.

I read a lot of BPAI cases, and I've seen this warning about improper reliance on case law only a few times. Therefore, I don't think I'll change my practice yet.

Claims implied by specification not enough for 112 First (Ex parte Abdel-Hafez:)

Ex parte Abdel-Hafez
Decided March 30, 2009
(Appeal 2002-3826; Appl. No. 10/691,696; Tech. Center 2100)

I view this case as a warning to avoid the word "implied" in your arguments against a § 112 rejection. The Applicant argued that a claim element was "implied" by the disclosure, and Board read "implied" as "renders obvious":

... the question of written description support should not be confused with the question of what would have been obvious to the artisan ... Whether Appellant's proffered provisional application support "implies" and thus renders obvious the later claimed "global" limitations is not relevant to the inquiry before us.
(Decision, p. 10.)

I think the Board was confused about written description vs. obviousness, since I do not read the Applicant's argument (a claim element was implied by the disclosure) as an argument that the claim element was obvious in view of the disclosure. Instead, I view the Applicant's argument as a reliance on the implicit teachings of the specification. And there's nothing wrong with that: an Applicant is entitled to rely not only on the explicit teachings of the specification, but also on the implicit teachings, since the specification is viewed not from the standpoint of a layman, but from the standpoint of a person of ordinary skill in the art.

 Although [the applicant] does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.... The test for sufficiency of support in a parent application is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter. 46 Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed.Cir. 1991).

Okay, sometimes there's a fine line between saying that something not explicitly described in the spec is rendered obvious by the spec, and saying that something not explicitly described is implicitly disclosed. But the line exists, and I don't understand why the Board thought the Applicant crossed this line. After all, the Applicant said the claim element was "implied" by the spec, not that the element was "obvious" in view of the spec.

It's not clear whether the Board relied on this finding alone to uphold the §112 rejection, since the Board went on to indicate that "Appellants have not provided any meaningful analysis explaining how the pertinent portions of the provisional application meet the written description and enablement requirements under §112, first paragraph."(Decision, p. 10.)

It's true that the Applicant here did nothing more than point to two paragraphs of the provisional and make this statement:

While the word "global" is not used, taken with the provisional drawings, these all imply that the scan-enable SE signals and the set-reset enable SR_EN signals are global in nature in that provisional application.
(Brief, p. 11.)

So another takeway from this case could be: if you're relying on implicit rather than explicit disclosure, explain your reasoning. In this particular case, the argument might go something like this:

The provisional application discloses: “[t]he present invention uses A scan enable (SE) and and/or gate to disable the asynchronous set/reset signals of ALL scan cells. A new set/reset enable (SR_EN) signal is introduced to propagate the faults of asynchronous set/reset signals in a dedicated capture cycle.” (Capitalization and italics added for emphasis.) Although the provisional uses the article A rather than the adjective ONE, when used in ordinary English and outside of a claim, “A scan enable” is understood to mean “ONE scan enable.” Thus, the provisional discloses that one scan enable disables set/reset for all scan cells. Since "global" means "of, relating to, or applying to a whole," ONE signal that disables something for ALL scan cells is understood to be a “GLOBAL scan enable signal,” as is recited in claim 83. Thus, the provisional does “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The written description rejection of claim 83 should therefore be overturned.

I won't say that Ex parte Abdel-Hafez holds “using 'implied' in reference to the disclosure is inapplicable to a § 112 argument” — that would go too far. However, I do think this case shows that if you rely on implicit disclosure, you should explain the inferences that a POSITA draws from the disclosure.

Admitted Prior Art

I've learned to draft patent applications with Background sections that are really short and really general, with the basic rationale being "the Examiner can use statements in the Background as Admitted Prior Art."

Recently I looked into the topic of Admitted Prior Art (APA). Here's what I found. First, I'll discuss the treatment of Backgound statements as APA, and then I'll discuss the treatment of statements outside the Background as APA.

APA and the Background section 
Surprisingly, the MPEP contains no discussion of APA at all. Also, I found no per se rule in the case law that statements in the Background are prior art. However, the case law does say: when the Specification as a whole implies that a particular statement is prior art, then the Examiner has a prima facie case for the statement being APA. 
Ex parte Shirley (Appeal 2009-2352) has an in-depth discussion of Background-as-APA. In that case, the specification used the word "related art" rather than "prior art," and also contained a disclaimer that background statements are not intended to be admission of prior art. The BPAI said that it wasn't the form of the statements that mattered, but the "substantive content of the Specification as a whole" (Decision, p. 22). The BPAI then provided an in-depth explanation of the rule for determining whether statements in the specification are APA:

      When a review of the record as a whole reasonably implies that—or at least raises a reasonable question of whether—a particular disclosure or statement constitutes a prior-art admission, an Examiner may use such a disclosure or statement in formulating prior-art rejections of claims under 35 U.S.C. §§ 102 or 103. This is so even if the specific words “prior art” are not expressly used verbatim. In such circumstances though, the Examiner must set forth the underlying facts and reasoning leading to the conclusion that a disclosure or statement constitutes a prior-art admission.
      Such prior-art rejections, when supported by sufficient facts and reasoning, establish prima facie evidence of the claims’ unpatentability and shift the burden of rebuttal to the Applicant. An Applicant cannot then rebut the rejection by merely arguing that the term “prior-art” was never used verbatim. Similarly, an Applicant’s noting of the fact that the Specification includes a prior-art disclaimer, may not alone be sufficient to rebut such a rejection in those situations where an Examiner has previously provided a rationale for why the disclaimer is ineffective or unpersuasive. Of course, an Applicant may still rebut such a prior-art rejection with credible and sufficient evidence that the disclosure or statement upon which the Examiner relies does not constitute a prior-art admission. For example, an Applicant can still affirmatively state that the disclosure in question was Applicants’ own work, not publicly disclosed more than a year prior to the application’s filing.
   ...  [W]e are merely noting that the use of alternative characterizations like “related art” and prophylactic prior-art disclaimers, such as the one included in the present Specification, are commonplace in patent prosecution. We are further clarifying that these alternative characterizations and prior-art disclaimers must be reviewed on a case-by-case basis, and in light of the record as a whole, to determine which disclosures and statements, if any, actually constitute prior-art admissions.
(Ex parte Shirley, pp. 22-23 and 25.)

APA and Statements outside the Background

The rule as explained in Ex parte Shirley says the Specification must be looked at as a whole. Therefore, it's not surprising to find that statements from the Specification that are not in the Background can be used as Admitted Prior Art, depending on the circumstances. For example,

• A product described by vendor and model number was found to be APA. (Ex parte Barr, Appeal 2006-0963.)

• A component described as "commonly known in the industry" was found to be APA. (Ex parte Reinert, Appeal 2007-2399.)

• A method described as "traditional" is APA, but the resulting product may not be. In Ex parte Vineis, (Appeal 2008-5873), the specification stated:

Substrate 10 may be provided with a rough edge 20, having a roughness greater than that of an edge polished substrate...The roughness of rough edge 20 is inherently present in substrate 10 when, for example, substrate 10 is cut from a boule traditionally formed by the Czochralski method, and is subjected to the conventional mechanical edge shaping process described above.

The Board said:

Although Appellants rely on techniques that are “traditionally” used or “conventional” in the course of forming their substrate, Appellants do not identify the semiconductor substrate recited in the claims as the work of another. (See FF 12). Thus, the recited semiconductor substrate is not admitted prior art.

This information about APA wasn't easy to find. However, now that I've found it, this case law provides a framework for arguing against APA, if the facts support it.

Selecting means more than one choice (Ex parte Hemmat)

Ex parte Hemmat
Decided October 13, 2009
(Appeal 2009-003911; Appl. No. 10/429,615; Tech. Center 3600)

I ran across this case when reading the blog Gray on Claims. (I like this blog a lot because it covers BPAI cases in addition to Federal Circuit and District Court.) The subject matter of the application is a business method and several issues were on appeal, including 101/Bilski.  I'm going to discuss only the indefiniteness issue. In particular, I'm going to explore other ways of writing the claim  to avoid indefiniteness.

I've edited the claim to show the portion involved in the indefiniteness issue:

holding a meeting...wherein the meeting results in additions to the concept document identifying at least one proposed approach, ... ;

identifying impacted systems for each proposed approach by ...;

selecting a final selection from the at least one proposed approach with a view of the long-range plans and overall direction of an enterprise rather than to a specific problem.

The Board found that selecting requires more than one choice, and this was inconsistent with the use of "at least one", which allowed for only a single choice.

When I read this, my first thought was: "That's not inconsistent. A POSITA understands that if there's only one choice, the selection degenerates into selecting that one choice".

Give the Board some credit: the indefiniteness holding did not rest on this inconsistency alone. The Board also found that other parts of the claim were inconsistent with selecting the single choice. For further details on that, read the case summary on Gray's blog (here).

What I'm interested in is this: though here the Board did not find selecting-from-what-could-be-a-single-choice to be indefinite per se, I can definitely see an Examiner giving me such a rejection. And I wouldn't be surprised if, in another case, the Board did find indefiniteness for this reason alone.

So I'm wondering if there is a better way to claim this sort of thing, to avoid the specter of indefiniteness completely. The claim in Ex parte Hemmat is complicated, so I'm going to discuss this issue in the context of a much simpler hypo.

Here's the feature I want to claim, in plain English rather than claim language. The method performs a search which comes up with possible candidates, then chooses the best candidate as a match. The spec would explain that when the search results include only one candidate, that one candidate is the best match.

Using the style from Ex parte Hemmat, this translates to:

Approach #1
performing a search that produces at least one candidate;
selecting a best match from the at least one candidate.

But the lesson from Ex parte Hemmat  is that approach #1 is vulnerable to an indefiniteness rejection.

How about this instead?

Approach #2
performing a search that produces a plurality of candidates;
selecting a best match from the plurality of candidates.

I don't like approach #2 because no infringement occurs for those data sets that return only one candidate. While the accused infringer doesn't escape entirely — infringement still occurs whenever data sets return 2+ candidates — this does complicate damages and proof of infringement, doesn't it?

How about this?

Approach #3
performing a search that produces a group of candidates;
selecting a best match from the group of candidates

The idea behind "group" is that it allows for 1 or more without screaming "indefiniteness problem" like "at least one" does. But maybe not. Maybe it's got the same problem: since it allows for the possibility of only one, this conflicts with the verb "selecting."

Then the obvious solution is to get rid of the pesky verb "selecting," which means we can go back to "at least one". How about this:

Approach #4
performing a search that produces at least one candidate;
determining a best match from the at least one candidate.

Since determining doesn't carry the connotation of more-than-one, this one should be safe from the charge of indefiniteness. But determining isn't quite the same as selecting from a group of predetermined choices, and it's possible that you need to express this difference in order to avoid prior art.

Here's my last attempt. Does the following approach allow you to keep the determine-vs-select distinction yet avoid indefiniteness?

Approach #5
performing a search that produces a group of candidates;
determining a best match from the group of candidates by:
    if the group has more than one candidate, selecting the best match from the more than one candidate;
    if the group has exactly one candidate, appointing the exactly one candidate as the best match.

Certainly #5 is clunky, and wouldn't be my first choice. But maybe it's good to have as a backup.