BPAI ignores Applicant's definition of DSP (Ex parte Giacalone)

Ex parte Giacalone
Decided August 10, 2009
(Appeal 2009-004743, Appl. No. 10/242,202, Tech. Center 2100)

In Ex parte Giacalone, one of the main issues considered by the Board of Patent Appeals and Interferences was the meaning of the term "digital signal processor" (DSP). The Examiner parsed the individual words in the claim and took the position that a DSP is a "processor that processes signals in a digital form." (Examiner's Answer, p.5.) The Applicant provided two definitions of the term DSP as understood by a person of ordinary skill in the art: a special-purpose microprocessor designed specifically for digital signal processing; and a special-purpose CPU for used for digital signal processing applications. (Reply Brief, p. 3.) The Applicant also provided a definition of "digital signal processing", and then argued that the Examiner had provided no evidence that the video coprocessor in the Hong reference was specialized/special-purpose for digital signal processing. (Reply Brief, pp. 3-4.)

The Board brought in its own definition of "digital signal processing." (Manipulating images, sounds, and other real-world signals, Decision, p. 7.) Based on this definition, the Board found that the coprocessor in Hong was a DSP because "it processes video, i.e. images." (Decision, p. 8.)

The Board got one thing right: it ignored the Examiner's unreasonably broad definition of DSP, which would make every processor a DSP since "processor" already implies digital. However, it appears that the Board ignored the special-purpose/specialized aspect of the DSP definition provided by the Applicant.

In doing so, I say the Board got this one wrong. The issue isn't the type of data (here, video) that is processed – the processor must be designed to process certain types of data, typically through specialized instructions (as noted in the Applicant's definition).

In finding that the Hong reference "processes video," the Board also misunderstood Hong. The Board quoted Hong as disclosing "a video processor 200 [which] is a coprocessor in a system or integrated circuit that includes a control processor (CPU) and input/output resources such as a video interface unit." (Decision, p. 7.)  So Hong does teach that the system as a whole – especially the codec – processes video. But the only thing that video processor 200 itself does is perform a quantization operation on particular inputs.

I think the Applicant had another good argument which wasn't made: that Hong's block 200 was not a processor even though it was described as one. A person of ordinary skill in the art understands "processor" as an entity that executes instructions, while "video processor 200" is a single-purpose logic block which always performs a quantization operation on a divisor input and a dividend input.

Note that the Applicant submitted an actual definition for the term at issue, rather than merely making argument about what the term means. If you merely argue about the meaning of a term, without providing evidence, you're vulnerable to the Board ignoring your argument as "mere attorney argument."

Arguments guaranteed to lose: teaching away in anticipation context

I read a few Board of Patent Appeals and Interferences decisions recently where the Applicant distinguished over the reference and used the magic words "teaches away". Unfortunately, the magic words were used in a §102 argument. The Board noted that “[t]eaching away is irrelevant to anticipation," citing Seachange International, Inc., v. C-Cor, Inc., 413 F.3d 1361, 1380 (Fed. Cir. 2005).

I reviewed the Appeal Briefs to see the actual arguments made. In several of the cases, the Applicant had good facts, and I even agree that the reference "teaches away" in some sense. 

For example, in Choi et al. (Application 10/179,583, Appeal Brief available in Public PAIR), the claim included the feature of re-establishing a connection between a client and a previously-used server, and the reference taught establishing a new connection to a different server. Thus, the reference taught the opposite of what was claimed. With these facts, I think the Applicant in Choi was on the right track: a teaching of NOT-X is evidence that X is not taught.

As another example, in Iwamura et al. ( Application 09/972,371, Appeal Brief available in Public PAIR), the claim included encrypting a signal and the reference taught decrypting a signal – again, the reference taught the opposite of what was claimed. I don't think these facts are quite as good. While encryption and decryption are opposites, they're also symmetrical, so that you can probably infer some things about decryption from the teachings about encryption. If the Examiner is relying on implicit teachings, pointing out this opposite teaching may not help. On the other hand, if the Examiner is truly alleging that encryption and decryption are the same, the fact that they are opposites helps the Applicant's position.

The mistake made by the Applicants in these cases was simply in characterizing this as "teaching away".
It would be unfortunate to have the Board ignore your underlying arguments simply because you characterized them improperly. "Teaching away" has a specific meaning in patent law (teaching away from the combination), and is therefore is appropriate for obviousness but not for anticipation. So I say use the underlying facts to your advantage when you can – just don't use the magic words "teaches away" in an anticipation argument.

The trouble with boilerplate

While reading a recent BPAI decision, I noticed a footnote which said:

The Appellants "request[] that this honorable Board of Patent Appeals and Interferences reverse the Examiner's decision in this case and indicate the allowability of application claims 1-24." In an ex parte appeal, however, the Board "is basically a board of review -- we review ... rejections made by patent examiners." ... We lack authority to indicate the allowability of claims.

Now, I'm certain that the writer of the appeal brief didn't think too much about his request for allowability – it was simply what we call "boilerplate." But that's exactly the trouble with boilerplate – we as writers don't think too much about, while we can't be sure what the impact of it will be on our readers.

Certainly no great harm was done in this case by the boilerplate I refer to. The Board read the statement, saw it as irrelevant to the decision, and moved on. But the footnote also tells us that the Board did recognize a request for allowability as legally irrelevant in an appeal brief. So I wonder if there's a risk of more subtle harm  – does the careless use of boilerplate cause the Applicant to lose some credibility in the Board's and/or Examiner's mind?

Method claim indefinite for passive claiming (Ex parte Brune)

Ex parte Brune 
Decided August 7, 2009
(Appeal 2009-004646, Appl. No. 10/399,272, Tech. Center 2100)

In Ex parte Brune, the Board of Patent Appeals and Interferences found a method claim indefinite under §112 ¶2, finding that "we are unable to discern the steps of claim 1." The Board called attention to several "wherein" clauses, such as "where a device can be selected using a control device" and "wherein the user interface of a first device is displayed."  The Board noted that a method claim should have "clauses that are designated by a present participle," citing to Credle v. Bond (Fed. Cir. 1994) for this grammar lesson. (Decision, p. 8.)

I think the Board could have explained the situation better.

I would have used the terms active and passive rather than "present participle." Thus, I would have characterized the problem as: the body of the claim included "wherein" clauses using passive verbs ("is displayed") rather than active verbs ("displaying").

Also, the claim had no active verbs at all. Would just one have saved the claim from indefiniteness? I say that because a strict approach to claim drafting would find the scope of such a claim quite clear: it's limited to this single positively recited step, and the remainder of the phrases are not given any patentable weight precisely because they're not positively recited. [See MPEP 2111.04 for a surprising statement about the patentable weight of "wherein" clauses. ]

Personally, I dislike claims with lots of wherein clauses. I try to confine my use of wherein clauses to a very specific situation: narrowing a generic noun to a more specific noun – "wherein the LAN is Ethernet." Not because I've seen this type of rejection before, but because I agree with the basic philosophy of this decision: claim scope is more definite when you positively recite elements.

I haven't done any analysis on indefiniteness rejections, but I have read a dozens of BPAI decisions this year, and this is the first rejection I've seen of this kind. This case is one of only two appeal decisions on the BPAI website that cite to Credle v. Bond. [Note that the Board could have made similar decisions without citing to that same precedent.]

Don't forget to address the combination

In dealing with obviousness rejections, my preference is to always argue that the combination of references doesn't teach all the claimed elements. [As long as the facts support this position, of course. If the combination really does teach the claim, then you're left with arguing that the combination isn't obvious – and that's usually an uphill battle.]

In the vast majority of my cases with a claim including elements X and Y, the Examiner relies on one reference for teaching element X and a different reference for teaching Y. That is, the Examiner doesn't usually rely on the combination as teaching a particular element. In such a case, I can make the following logical argument that the claim isn't obvious because X isn't taught:

• Reference #1 doesn't teach X.
• Neither does Reference #2. 
• Therefore the combination doesn't teach X.

This simplistic approach is not appropriate when the Examiner instead relies on the combination for teaching a particular element. For example, suppose my claim includes "a green widget." If the Examiner relies on Reference #1 for teaching a widget, and on Reference #2 for teaching a green wiki, then the allegation is really that the combination teaches "green widget." In such cases, arguing that the Examiner didn't make a prima facie case of obviousness requires you to go farther than the conclusory statement "therefore the combination doesn't teach," and instead to actually explain why the combination doesn't teach.

The BPAI made this point recently in Ex parte Parmelee (Appeal 2008-2907, Application 09/683,943, Technology Center 2400). Rejected claim 1 included a "data store including digital safe deposit accounts stored therein," where "each of the digital safe deposit accounts is associated with at least one private key." The Board noted that the Examiner relied on Wheeler for multiple stored digital accounts with public/private keys, and on Cohen for electronic safe deposit accounts. (Decision, p. 10.) The Board also found that the Examiner provided a compelling motivation for modifying Wheeler's method to use an electronic safe deposit account instead of a digital account. (Decision, p. 10.)

In addition to upholding the rejection, the Board criticized the Applicant for not addressing "the combined teachings as set forth by the Examiner." (Decision, p. 12, emphasis added.) "Repeatedly, Appellants' arguments include a portion of the subject matter relied upon by the secondary reference [Wheeler] in each limitation which is argued to not be taught or suggested by each of the individual references." (Decision, p.12, emphasis added.)

After reviewing the appeal brief, I find I agree with the Board. The closest thing I see to an argument addressing the combination is a statement that neither reference contained a suggestion to combine. [And as I see it, "no suggestion" goes to overcoming prima facie obviousness, not to arguing there is no prima facie obviousness.] There are instead several statements that amount to "neither reference teaches digital safe deposit accounts, where each is associated with at least one private key." (See, e.g, Brief, 2nd para. on p. 17 and last para. on p. 19.)

Ex parte Parmelee is a good reminder to make sure that your arguments truly address the combined teachings when appropriate.

Avoiding remand when some claims are not appealed

What’s more frustrating than the long wait for an appeal decision from the BPAI? How about getting all the way to the Board, only to have the Board issue a remand rather than a decision?

The most common reason for a remand that is the fault of the Applicant is probably a defective appeal brief. These errors are mostly avoidable if you pay close attention to the rules governing briefs in MPEP 1205.02. A remand can also result from improper handling of claims not on appeal. Because the relevant case law for handling unappealed claims is not referenced in the MPEP, I don't think this procedure is well understood.

In this post, I'll first tell you the procedure which should definitely avoid a remand. Then I'll explain the finer points for those of you that are interested in more detail.

In the BPAI decision Ex parte Ghuman, the Applicant appealed only claims 1-4 even though claims 1-20 were pending. The Board remanded the application (rather than reaching a decision) with instructions for the Examiner to cancel the non-appealed claims. There was no confusion here about whether or not the Applicant intended to appeal claims 5-20 since the Status of the Claims, Grounds of Rejection, and Arguments sections of the brief were all consistent. The Board noted these underlying facts, yet ruled that the Applicant should have filed an amendment to cancel any claims not on appeal.

The take-away of this decision – a decision which is identified as precedential – seems to be: to avoid the possibility of remand by the BPAI, cancel non-appealed claims. The rules allow such cancellation before filing the brief (under CFR 1.116) or even after (under CFR 41.33).

Ex parte Ghuman seems to be controlling law for what happens once the case reaches the Board. However, the PTO seems to have adopted a "cancel on behalf of the Applicants" policy which avoids this harsh result. According to a BPAI FAQ:

If the appellant clearly identified fewer than all of the rejected claims as being appealed in the appeal brief or other papers, the Office will consider this as an authorization to cancel the rejected claims that are not on appeal before the application is forwarded to the BPAI for a decision. See Ex parte Ghuman (Bd. Pat. App. & Int. 2008)(precedential). The examiner will enter an examiner’s amendment to cancel the rejected claims that are not being appealed.

The FAQ also notes that instead of canceling claims, the Examiner will reject the brief as defective "if the applicant’s intention to appeal the rejection of fewer than all of the pending claims is unclear from the appeal brief."

I like the PTO's policy. Canceling claims ahead of time which would be canceled later seems fair to me. And I wholeheartedly agree with the policy of addressing errors or inconsistencies in the record before jurisdiction passes to the Board.

So maybe you don't really need to file an amendment canceling claims after all – as long as the Examiner knows and applies this PTO policy, that is. (This policy is not in the MPEP, by the way.)

What if the Examiner forgets to cancel your claims? If you're lucky, you may still dodge a remand. A recent survey of decisions indicates that the Board isn't uniformly applying its precedent.

In situations where it is clear what claims are intended to be appealed, the Board has in some cases rendered a decision with instructions for the Examiner to cancel the non-appealed claims (Ex parte Vosaya), and in others remanded rather than reach a decision (Ex parte Bhatia, Ex parte Almstrand).

In situations where it is not clear what claims are intended to be appealed, the Board has in some cases (Ex parte Boneh, Ex parte Marin, Ex parte Maule) rendered a decision on the appealed claims and told the Examiner to cancel what the BPAI finds to be the non-appealed claims, and in others (Ex parte Bolle) remanded rather than reach a decision.

The most conservative approach is to cancel the claims yourself rather than relying on the kindness of the Examiner or the Board.

BPAI cares about adjective placement in a claim (Ex parte Buckley)

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

When drafting a claim, every word matters – and the placement of those words is important too. This point was underscored by the Board of Patent Appeals and Interferences in Ex Parte Buckley. The claim limitation at issue was “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 Examiner interpreted this claim limitation as requiring access to both layers without an additional hardware dongle, and without a signal device transmitter. (Answer, p. 4.) Using this interpretation, the Examiner rejected the claim under §112 ¶1 because remote access would be impossible without the use of a signal device transmitter. (Answer, p. 4.) The Applicant argued that the limitation should instead be construed as “both layers can be accessed without an additional hardware dongle and without an additional signal device transmitter,” which was described in the specification. (Brief, p. 8, emphasis added.)

The Board agreed with the Examiner’s claim construction: as a matter of English grammar, “additional” modifies “hardware dongle” but not “signal device transmitter.” (Decision, pp. 5-6.) Although the grammar rule cited by the Board didn’t seem on point to me, the Board appeared to reach its conclusion because the article “a” in front of “signal device transmitter” separates the adjective “additional” from “signal device transmitter." (Decision, p. 5.)

Although I agree with the Board's claim construction, I also see this as a good example of how claim syntax is different than ordinary English usage. In normal writing, a single instance of “additional” is understood as modifying both noun phrases: “Both the hardware and the software layer of the console device can be accessed without the requirement for an additional hardware dongle or signal device transmitter.” This works because in normal writing, there is no article in front of “signal device transmitter.” Yet when drafting a claim, we’re compelled to use the extra article “a”, and doing so changes how the modifier “additional” is applied.

The Applicant could have overcome the §112 ¶1 rejection by repeating the adjective “additional” in front of “signal device transmitter.” In fact, the Applicant filed an RCE after appeal and amended the claims to do just that.

PC inherently capable of concurrent windows display (Ex parte Eino)

Ex parte Eino
Decided March 10, 2009

(Appeal 2008-3046, Appl. No. 10/283,281, Tech. Center 3700)

In Ex parte Eino, the Board of Patent Appeals and Interferences made the following finding of inherency: “We agree with the Examiner…that personal computers are inherently capable of opening a second window concurrently with the first window showing the same endoscopic image and control panel image as those displayed on said first display unit (FF12).” (Decision, p. 10.)

I think the Board really got this one wrong. In the broadest sense, a computer is capable of doing anything it’s programmed to do. But in my view, that computer is only inherently capable of doing a thing once it’s programmed to do that thing. (To hold otherwise – to hold that a computer is inherently capable of performing all functions – would lead to the conclusion that all computer-implemented features can be rejected with any prior art teaching a programmable computer.)

The best response to an inherency finding is a counterexample. Thus, using my interpretation of “inherently capable of,” a computer is not inherently capable of opening two windows concurrently because a computer with a text-based command line interface (rather than a graphical user interface) does not even use windows, much less open two windows concurrently.

In this case, I think the Board’s inherency finding went farther than the Examiner’s. The Examiner’s allegation used the words “inherently” and “conventionally”:

The second personal computer . . . having a second display . . . disclosed by Wang is inherently capable of displaying a second window. The computer is inherently capable of displaying said second window on said second display unit simultaneously with the endoscopic image and control panel image displayed in the first display unit. Computers are conventionally ascribed the capability of running multiple applications in separate windows.
(Ans. 6.)

The way I read it, the Examiner made two separate allegations, one about inherency and one about conventional computers. The Examiner’s inherency allegation was silent about a second program in the second window, which the appealed claim required. The Examiner handled this by making an allegation about the capabilities of a conventional computer. Thus, the Examiner didn't rely solely on inherency, but also relied on something akin to saying the "simultaneous display of windows" feature is well known, or to taking Official Notice of this feature.

In this case – as in many – I suspect that winning the battle on inherency doesn’t lead to winning the war on obviousness. Suppose you fight and force the Examiner to find a reference which teaches concurrent display of windows running different applications. Once this is added to the mix, the Board's obviousness finding in this case doesn’t seem unreasonable. Though the Board didn’t couch it in these terms, it seems like the Board used a substitution rationale. Something like this:

• The primary reference, Wang, taught all limitations but two.
• One of the missing limitations -- displaying a specific type of program (a repair manual) in second window -- is disclosed by the secondary reference, Corby.
• The other missing limitation -- running a second app in a second window -- is inherent in Wang.
• Plugging Corby’s repair manual application into the second window of Wang is obvious.

Thus, I'm not saying that it makes sense to fight this sort of inherency allegation. But I do think the Board's reasoning is way off base.