Sunday, November 22, 2009

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.

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