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.

Claiming "only" as modifying an action (Ex parte Webb)

Ex parte Webb
Decided March 21, 2009
(Appeal 2008-3006; Appl. No. 09/905,298; Tech. Center 2100)

The only real issue in Ex parte Webb was claim construction. The word at issue was "only".

I got several things out of this case. One, though patent drafters and prosecutors think a lot about narrow constructions that could lead to avoiding infringement, maybe we don't think enough about broad constructions that the Examiner and/or Board can use to say that claims read on prior art. Two, dictionary definitions often hurt as as much as they help. Three, word position really matters in a claim.

The claims at issue related to a GUI feature: a dialog window that is displayed in one of two states, collapsed and complete (uncollapsed), and the cursor movements that cause the dialog to switch between the two states. Here's what the dialog looks like in the complete (uncollapsed) state:

And here's what the dialog looks like in the collapsed state:

Here is the relevant portion of the claim on appeal — edited and formatted for clarity.

displaying the complete dialog window in response to the cursor moving only from outside of the collapsed version to within the title bar of the collapsed dialog window;

At issue: exactly what cursor movements cause the complete dialog window to be displayed?

According to the Applicant, the cursor must move into the title bar to result in display of the complete dialog window. Thus, "only" operates to exclude: no other cursor movement causes this result.

Under this interpretation, the reference used to reject the claim was distinguishable. The dialog in the reference has an invisible state, where only part of the dialog is visible yet the dialog reacts to cursor movements within the entire extent. Looks something like this, with the dashed lines representing the not-shown-yet-reacts-to-cursor portion:

The reference teaches that moving the cursor anywhere within the existing-but-not-shown portion of the dialog results in the complete dialog being visible.  Since the Applicant's claim construction requires the cursor to move into the title bar, the reference is distinguishable under this construction.

The Board summarily agreed with the Applicant's position, basically repeating the Applicant's argument and reading of the reference. In fact, this isn't an interesting case at all, if you read only the opinion, because the Board didn't explain the Examiner's position.

The Examiner agreed with the Applicant on the teachings of the prior art, but has a different interpretation of the claim limitation discussed above, and specifically, about "only". According to the Examiner, other cursor movements can also result in display of the complete dialog window.

Huh? Doesn't the claim say "the cursor moving only...into the title bar" ??

The Examiner did not interpret "only" as a word of exclusion. As the Examiner read it: the claimed cursor movement results in display of the complete dialog window "without further cursor movement or positioning necessary." The way I see it, the Examiner reads "only" as "merely": the cursor moving "merely" into the title bar causes display of the complete dialog.

Under the Examiner's reading, the reference teaches the limitation at issue. The complete dialog is displayed when the cursor moves to anywhere within the invisible dialog window (including a title bar) and no further cursor movement is necessary to produce the complete dialog.

Once I read the Examiner's argument, I understood his thinking. Though no dictionary definitions were trotted out during the arguments, or by the Board, Merriam-Webster seems to support both positions:

only
1 a : as a single fact or instance and nothing more or different : merely 
1 b : solely, exclusively

Here's where I come down on this: both interpretations were reasonable in the abstract, but "exclusively" is the better choice. Here's the single paragraph in the Applicant's specification that actually describes the behavior:

FIG. 4 illustrates a collapsed version of dialog window 300. As illustrated in FIG. 4, cursor 302 was moved outside of complete dialog window 300 thereby resulting in dialog window 300 collapsing into a smaller area. When cursor 302 is moved back into collapsed dialog window 300, the dialog window 300 will expand once again into the complete version as illustrated in FIG. 3.

No way can you get the Examiner's interpretation of "cursor needs to merely move into the title bar, no further" from that paragraph. The Examiner's broad construction is simply unreasonable in view of the spec. So I think the Board got this one right.

Note that the spec does not say that this behavior is the *only* one that results in the collapsed dialog going back to full size. Yet that's how any ordinary reader would interpret it — after all, that's the only behavior that's described as having that effect. And certainly a patentee that tried to enforce this claim on a dialog that went from collapsed to full size upon some *other* cursor action could expect an invalid-under-written-description argument from the accused. So I think the winning claim construction is supported by the spec, even though the word "only" isn't used.

I'll wrap this up by making my final point, that word position matters.

In the final Office Action before Appeal, the Examiner explained that "placement of 'only' within the phrase is significant to the scope and meaning of the claims". Examiner further states that moving the adjective — so that the claim reads "displaying the complete dialog window only in response to the cursor moving from outside the collapsed window into the title bar" — does require the cursor to move into the title bar in order to collapse the window. [I do think the claim is more clear when phrased this way.]

The Applicant seized on the Examiner's statement, and filed an After-Final amendment to move the word as suggested. But the Examiner refused to enter the amendment after final, since "as indicated in the last Office Action, such an amendment significantly changes the scope of the claim, and therefore a further search is required". Apparently the Applicant was unwilling to file a second RCE to get this amendment in, and chose to appeal instead.

Like I said, I think the Applicant had the better argument. And this time the Board agreed. But I think most practitioners would have filed that RCE instead. The Examiner had all but promised that an RCE with amendment will get over the current art, and I see no reason to worry that a "new search" would have turned up a better reference. After all, it's not like the Examiner was actually limiting the search to references in which a cursor "merely" moved into the title bar, right? On the other hand, perhaps the Applicant was concerned about spending two or three more response cycles on another devious claim interpretation.