BPAI decisions that turn on grammar

Takeaway: Today I look at a few BPAI decisions where grammar was at issue. Claims involve a lot of phrases and modifiers, and it's challenging to write a claim so that it's clear what modifies what. If the drafter is not careful with grammar, the result can be a claim that is interpreted differently than the drafter intended.

Details: 
In some cases, the Board considers grammar during claim construction. The claim limitation at issue in Ex parte Chen was "the bonding part having a flat surface in contact with the substrate and being formed with a vacant region." The Applicant distinguished the reference by arguing that the vacant region in the reference was not part of the flat surface. The Board found that claim 1 did not require the flat surface to have a vacant region, but instead required the bonding portion to have a flat surface and a vacant region.

Ex parte Khosravi considered which nouns/noun phrases were modified by the adjective "tubular." The claim limitation at issue was "the tubular member being expandable from a collapsed state to an expanded state." The Applicant argued that the claim requires the member to be tubular in both the expandable and the collapsed state, distinguishing over the reference which was flat rather than tubular in the collapsed state. The Examiner took the position that under the broadest interpretation, it is the member that is tubular, not the state: "a collapsed, flattened tubular member ... still has the structure of a tubular member regardless of whether it is collapsed or expanded." The Board agreed with the Examiner, finding that the adjective "tubular" modifies "member" but not either of the claimed states. The Board then affirmed the anticipation rejection.

The claim limitation at issue in Ex parte Hayman was "a layer made from a thermoplastic material or a plastic bend material in the absence of a cavity." The Applicant distinguished over the reference by arguing that the layer in the reference included a cavity, thus implicitly interpreting the limitation as "a layer ... without a cavity." The Board instead read the phrase "in the absence of a cavity" as modifying the verb "made" rather than the noun "layer." The Board then treated "in the absence of a cavity" as a product-by-process limitation. Since the Applicant did not show how the claimed layer itself differed from the layer disclosed in the references, the prior art rejection was affirmed.

In other cases, the Board uses grammatical analysis in determining whether a claim is indefinite. In Ex parte Cummings, the Examiner found claim 4 to be indefinite because it was unclear which element was modified by "provided with."

4. An assembly according to claim 1 wherein said retarding means includes a cylinder filled with a fluid and a piston having a head portion displaceable in said cylinder, provided with restricted passageways therethrough including one-way valves.

The Board noted that the final phrase "might modify any one or more of the retarding means, the cylinder, the piston and the head portion." The Board found that the ambiguity significantly affected the scope of the claim, and that the specification did not resolve the ambiguity. The Board therefore affirmed the indefiniteness rejection.

Ex parte Blattner involved an application claiming priority to a Chinese application. Claim 1 was rejected as indefinite:

1. A reticle manipulating device
with an at least substantially closed housing for maintaining clean-room conditions inside the housing,
which has several functional units,
each of which conducts at least one function for the reticle inside the housing,
wherein a first functional unit is designed as an input/output station for introducing and discharging reticles in and out of the housing,
a manipulating device also arranged inside the housing for transferring the reticles from the input/output station to the at least one other functional unit and vice versa,
is hereby characterized by an interface of the functional unit,
by means of which the at least one functional unit can be connected to the reticle manipulating device. 

The Examiner could not determine which elements were modified by each of the clauses emphasized above. After four pages of careful parsing and analysis, and with some reference to the Applicant's specification, the Board found that the claim was not indefinite. The Board did say that the "is hereby" clause was "awkward."

My two cents: The reticle manipulating device claim in Ex parte Blattner made my head hurt. But I suppose really-hard-to-parse is not the test for indefiniteness.

If it was clear that the Examiner interpreted differently than I intended because of grammar, i.e., the Examiner was parsing the claim differently than me, then I'd strongly consider amending rather than arguing.

• the tubular member being expandable from a collapsed state to an expanded state =>
  the tubular member being expandable from a tubular collapsed state to a tubular expanded state

• a layer made from a thermoplastic material or a plastic bend material in the absence of a cavity =>
  a layer without a cavity, the layer made from a thermoplastic material or a plastic bend material

BPAI affirms indefiniteness for "remains heat-sealable" when no evidence offered for duration of the claimed property

Takeaway: In Ex parte Busch, the BPAI rejected arguments about an indefiniteness rejection as mere attorney argument and hearsay. The claim on appeal was directed to a film with a flame treated surface layer "wherein said flame treated surface of the maleic anhydride-modified polyolefin layer remains heat-sealable." The Board affirmed an indefiniteness rejection because the Specification did not "show any required time period for the ... layer to 'remain heat sealable'." The Appeal Brief argued that the required time was long enough to be used in a packaging application, but the Board rejected this as mere attorney argument. The Reply Brief included several pages of technical explanation, but the Board criticized this information as hearsay rather than evidence.

Details:
Ex parte Busch
Appeal 2009002956, Appl. No. 10/484597, Tech. Center 1700
Decided August 18, 2009

Claim 12 was at issue.

12.  A coextruded, biaxially oriented polyolefin film for heat
sealing, wherein the film comprises
at least one outer top layer,
wherein said top layer has been surface-treated by means of a flame on the surface of the said top layer and wherein said flame treated surface of the maleic anhydride-modified polyolefin layer remains heat-sealable.

 The Examiner found that the claimed invention uses known flame treatment described in a European Patent. The specification also states that "it is necessary here that the heat-sealable surface can be flame-treated in order to increase the surface tension without impairing the heat sealability." The Examiner rejected claim 12 as indefinite because the specification did "not show any required time period for the flame treated maleic anhydride-modified polyolefin layer to 'remain' 'heat sealable'."

In the Appeal Brief, the Applicant asserted that the element was not indefinite because the layer "must be heat-sealable at least long enough to be used in a packaging application" and "this would be known to a person of ordinary skill in the art."

In the Reply Brief, the Applicant submitted several pages of technical details "to more easily understand the differences between heat sealing and adhesion and why adhesion is affected by a dropping surface tension while the heat sealable is not."

The Board found that the Applicant's interpretation of "remains heat sealable" to be a period long enough to be used for packaging was nothing but attorney argument, rather than evidence by a person of ordinary skill in the art.

To establish the meaning of "remains heat-sealable" to one skilled in the art, Busch-through counsel-"testifies" that one skilled in the art would know that the surface must be heat-sealable at least long enough to be used in packaging applications. Appeal Brief, page 8. For a long time, PTO practice-based on binding precedent-has been that counsel's "testimony" is not evidence. See, e.g., In re Walters, 168 F.2d 79, 80 (CCPA 1948); Estee Lauder, Znc. v. L'Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997).

The Board then analyzed the technical information offered in the Reply Brief. The Applicant described this as information provided by the "applicant" to the "undersigned." The Board found the presentation of this information to be riddled with problems.

In the non-entered Reply Brief, Busch attempts to tell us that "applicant" has informed the "undersigned" of certain technical facts, all of which are then set out in excruciating detail in the Reply Brief. Busch should not be surprised that the Board will not give any weight to this  "testimony." First, we have no idea what counsel means by "applicant." Is applicant one of the inventors? Is applicant an employee of the assignee? Second, we assume "the undersigned" is counsel for Busch. Third, what the "applicant" purportedly told counsel is hearsay to the extent Busch relies on applicant's statements to establish the truth of those statements. Fourth, the "testimony" was belatedly presented in a Reply Brief thereby depriving the Board of the benefit of the Examiner's view of the accuracy or relevance of the "testimony." We decline to give any weight to the belated "testimony" presented in the Reply Brief.
(Emphasis added.)

The Board then affirmed the indefiniteness rejection, noting that "[w]e, like the Examiner, have no idea on this record what "remains heat-sealable" means in the context of this invention."

My two cents: This case teaches an important lesson: don't go to appeal with only argument when what you really need is evidence. You might not realize this unless you are familiar with the case law. In my experience, not many Examiners notify the Applicant that evidence is required. The Board, on the other hand, routinely tells Applicants that attorney argument on a specific point will be ignored because evidence is required. However, you've wasted the time and cost of an appeal if you wait for the Board to tell you. 

Prosecution gone wrong

Examiner Interviews are widely viewed as a great way of making forward progress in an application. This was certainly not what happened in one file history that I ran across, where prosecution seemed to go off the rails as a result of an Examiner Interview. Or, more accurately, as a result of the Examiner's Interview Summary, which (according to the Applicant's representative) accused the Applicant's representative of bribing the Examiner!

Here are the juicy details. After a Final Office Action which included prior art rejections, an interview was conducted to discuss claim amendments to overcome the outstanding rejections. The Examiner's Interview Summary said:

The Examiner indicated that such an amendment would define over Hartigan et al as a 35 USC 102 reference, but indicated that the amendment would be subject to further search and/or consideration. [Applicant's representative] then asked if the Examiner would guarantee that if he filed an RCE with said amendment, the Hartigan et al reference would not be applied to the claims in a 35 USC 103 rejection and the Silvis et al and Benett et al references also would not be applied under 35 USC 102 or 35 USC 103. The Examiner stated that he could in no way guarantee that such would happen ... noting that the claims would be subject to further consideration and/or search. [Applicant's representative] then noted that I would receive two counts upon filing of the RCE. The Examiner acknowledged this and noted that examiners are not in the habit of trading counts for guaranteeing that certain prior art references would not be applied to the claims. [Applicant's representative] then indicated that he would go to appeal, noting that he had a 60% chance of winning the appeal. The Examiner stated that he has every right to appeal, and could proceed as he wished.

The Applicant filed a Notice of Appeal and an Appeal Brief. The Applicant simultaneously filed an After Final Response which included an Interview Summary.

In the Interview Summary, the Applicant's representative took offense at the Examiner's use of "trading counts" in the Examiner's Interview Summary. According to the Applicant's representative, the Examiner had accused the practitioner of bribery, an allegation which amounted to defamation. The patent practitioner then asked the PTO to reprimand the Examiner and reassign the application to another Examiner.

Here's the Applicant's Interview Summary:

     It is Applicant's belief that the Examiner has willfully fabricated false information in the Interview Summary dated 10/24/06. It is also Applicant's belief that the Examiner has deliberately attempted to keep communications out of the filewrapper.
     The tone of the third-to-last sentence of the Examiner's Interview Summary (see Exhibit A) falsely accuses Applicant's attorney of bribery. Applicants submit such a  statement is not only defamatory, but cannot be supported by the communication between the Examiner and Applicant's attorney of record. Further, the Examiner's statement that Applicants' required a guarantee with respect to the application a 35 USC 103 rejection in view of as-yet-to-be-performed search not only absurd, but patently false. Moreover, the Examiner has made these and other  inflammatory and defamatory remarks a matter of permanent record. This is outrageous and should not be permitted to stand.
     Applicants respectfully request that the Examiner's Interview Summary dated 10/02/2006 be stricken and removed from the record of prosecution in this case.
     Due to the substantial differences in the Examiner's and Applicants' accounts of the Interview and the fact that the Examiner did not comment or question the accuracy of Applicants' summary the Examiner's Interview Summary has failed to comply with at least MPEP 713.04.
     It is clear that at best there has been a serious breakdown in communication between the Examiner and Applicants' attorney of record, and at worst there has been retaliatory action's taken by the Examiner.
     Regardless, it is Applicants' belief that these differences will likely prevent future communications between the Examiner and Applicants' attorney of record from being open and productive. Therefore, Applicants respectfully request reassignment of the instant application to another Examiner. Moreover, Applicants consider these matters to constitute a serious breach of [the Examiner's] professional responsibility and respectfully request that this case be referred to [the Art Director] with the recommendation that [the Examiner] be formally sanctioned for his unprofessional conduct.
     In the event of reassignment of the instant application to another Examiner, Applicants would be willing to file an RCE and withdraw their appeal in favor of permitting the newly assigned Examiner a full and fair opportunity to review the case as well as to conduct an updated search.

Are you wondering how this all came out? The application went on to appeal, where the Board affirmed the prior art rejections. The Applicant's request for reassignment to a new Examiner was ignored — as it should have been. Procedurally, this sort of request is handled via a Petition, not an After Final response.

I wonder what the client thought about all this. The client was a large corporation, presumably with access to other outside counsel. Would it make sense for the client to switch to another attorney for this particular case? Not to punish the attorney. Purely as a practical matter, because the relationship between the attorney and the Examiner had deteriorated so badly. Or is the relationship with Examiner irrelevant for this particular application because it was on appeal?

First post-Bilski Federal Circuit decision upholds software method claims

Takeaway: In the first Federal Circuit decision to apply Bilski v. Kappos, the court held that two software method claims for halftoning gray scale images were not abstract, and so reversed the district court's invalidation under § 101. (Research Corp. Tech. v. Microsoft Corp., 2010-1037, Fed. Cir. 2010.) The claims did not recite a computer, but the court found that the "invention presents functional and palpable applications in the field of computer technology."


Details:
Research Corp. Tech. v. Microsoft Corp.
Fed. Cir. 2010-1037
December 8, 2010

The district court invalidated two method claims under § 101. A sample claim reads as follows:

11.  A method for the halftoning of color images, comprising the steps of
utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images,
wherein a plurality of blue noise masks are separately utilized to per-form said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

The Federal Circuit's analysis first noted that "in this case, the subject matter is a 'process' for rendering a halftone image." The court found that this subject matter qualifies as patentable subject matter under both the explicit category list in § 101 and the definition of process under § 100 ("The term 'process' means process art, or method ..." ).

The court then proceeded to examine the three patentable subject matter exceptions in the Supreme Court's jurisprudence: laws of nature; physical phenomena; and abstract ideas. Since the parties agreed that the claims were not directed to laws of nature or physical phenomena, the court then considered whether the subject matter amounted to an abstract idea. The court decided that the subject matter was not abstract:

   The court perceives nothing abstract in the subject matter of the processes claimed in the ’310 and ’228 patents. The ’310 and ’228 patents claim methods (statutory “processes”) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask. The invention presents functional and palpable applications in the field of computer technology.
... The fact that some claims in the ’310 and ’228 patents require a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” also confirm this court’s holding that the invention is not abstract. 

The court acknowledged that the methods included algorithms, and even that those algorithms were a "significant part of the claimed combination." Even so, the algorithms "do not bring this invention even close to abstractness that would override the statutory categories and context." Using language from Diamond v. Diehr, the court found that "the patentees in this case 'do not seek to patent a mathematical formula' " but instead " 'seek patent protection for a process of' halftoning in computer applications."


My two cents: Definitely a pro-software decision. I would expect district courts to uphold software claims when applying this decision.

The decision is consistent with my understanding of "abstract." And more specifically, my position that claims that cover a computer implemented method cannot, by definition, be abstract – i.e., the computer takes the claims out of the realm of the abstract idea and into the physical world.

I was mystified by all the talk about "the invention" and "the subject matter of the invention." I'm used to thinking about claims, and considering whether claims cover patentable subject matter. I wonder if the talk about the "subject matter" relates to reading claims in the context of the specification. Certainly these claims are limited to a computer implementation unless you ignore the entire specification and what it means to a person of ordinary skill in the art.

I'm glad to have some post-Bilski guidance from the Federal Circuit. But does RCT v. Microsoft provide much guidance for evaluating tougher cases? Does the decision amount to "we know abstract when we see it, and this ain't it" ?

So far we have two guideposts. Bilski's invention, which didn't mention computers in the claims or the spec, is abstract. RCT's invention – which under a reasonable reading clearly ties to a computer even though a computer isn't positively recited – is not abstract. I see those guideposts as being pretty far apart, and we'll have to wait for other cases to fill out the stuff in between.

BPAI finds that meaning of "integral" argued by Applicant (to avoid 112) reads on reference

Takeaway: In Ex parte Blau, the Applicant relied on the door in the claimed animal trap being "integral" to distinguish over the reference. The Applicant also stated, in responding to a written description rejection, that all drawings show a door of "integral construction." The Board found that the door in the reference "has an integral door as much as the present invention does" even though it had a separately manufactured lure housing, because one of the Applicant's drawings showed a similar construction. Thus, the construction of "integral" specifically argued by the Applicant read on the reference.


Details:
Ex parte Blau
Appeal 2009010556, Appl. No. 11/187,098, Tech. Center 3600
Decided July 16, 2010

The claim at issue was:

1. A humane animal trap comprising:
an elongated plastic enclosure having at one end a rectangular opening for permitting entry by an animal; and
an integral one-way door hinged to a top of said opening ...

Applicant added the term "integral" to the claim in response to the first Office Action. The Examiner then issued a prior art rejection with a different reference, along with a § 112 written description rejection. In response to the written description rejection, the Applicant argued that “[t]hroughout the description of the invention, in the application as filed, and in all of the drawings, only doors of integral construction are shown or described.” The Examiner maintained the written description and obviousness rejections, and the Applicant appealed.

The Board reversed the written description rejection. The Board first noted that the specification did not use the word "integral." However, "Figures 1-3 of the drawings illustrate doors that consist of or are composed of parts that together constitute a whole." The Board said this finding was bolstered by this statement in the specification: "Referring first to FIGS. 1-3 there is illustrated an animal trap of the enclosure type, consisting of only two discrete parts, including ...a one-way metal or hard plastic door 12."

The Board then analyzed the obviousness rejection. The Applicant argued that the door in the reference "is not of integral construction, in that it is made up of a door panel 30, and lure housing 38 that is detachably mounted on the door panel, and a lure 40 placed within the housing." (Fig. 3 of the reference is shown below.)

The Board did not agree that the reference (Stahl) described a detachable lure housing, but did find that Stahl described "a separately manufactured element (the lure housing 38) mounted on the rear surface of the door." Despite the presence of a separately manufactured lure housing 38, the Board nonetheless found that Stahl had an integral door under the meaning argued by the Applicant.

Explaining its reasoning, the Board stated that the Applicant's specification described the doors of Fig. 4 and Fig. 5 as "separately manufactured." (Fig. 4 of the specification is shown below.)

Yet the Applicant's Appeal Brief argued that the (separately manufactured) doors illustrated in Figs. 4 and 5 were "integral." Therefore, despite the presence of a separately manufactured lure housing 38, the Board found that “Stahl has an integral door as much as the present invention does."

Despite finding that the claimed integral door read on the door in the reference, the Board ended up reversing the obviousness rejection because another claimed element was missing from the combination.


My two cents: Be careful what you ask for. The Applicant convinced the Board that the spec and drawsings supported "integral" – but in doing so admitted that "integral" covered "separately manufactured."

Since the door in Applicant's Fig. 4 looks an awful lot like the door in the reference, maybe the Applicant should have stayed away from Fig. 4 in arguing written description. Using Fig. 3 wouldn't have been so harmful, since it does not look to be of two piece construction like Fig. 4, nor did the spec describe the door in Fig. 3 as "separately manufactured." It looks to me like Fig. 3 showed possession of an integral door embodiment, which should be enough to overcome the written description rejection.

It seems to me that the Applicant could have used Fig. 3 as support for an integral door and still argued that the door in the reference was not integral. Instead, by arguing that all embodiments showed doors of integral construction, the Applicant walked himself into an admission that the reference showed an integral door.

Back to blogging

I've had less time to devote to blogging in the past few weeks, since I've been busy with a lot of end-of-year filing deadlines. I'll start ramping up my posts this week, and I hope that by next week, I can return to my normal blogging schedule of 3 posts per week.

Arguments guaranteed to lose: "but look at these similar claims in other issued patents"

Takeaway: Occasionally Applicants make an argument which amounts to "the rejected claims are similar to claims that appear in these issued patents, so the Board should reverse the rejection." The BPAI ignores these arguments, relying on CCPA precedent: "In reviewing specific rejections of specific claims, we do not consider allowed claims in other applications." In re Gyurik, 596 F.2d 1012, 1016 n. 15 (CCPA 1979).

Details: Applicants often use this argument in § 101 rejections (see, e.g., Ex parte Ward and Ex parte Kelkar.) and occasionally for indefiniteness (see, e.g., Ex parte Cochran).

My two cents: Applicants seem to use this as a general appeal to fairness rather than as a legal argument. After all, if dozens of patents issued the week before you file your appeal brief with the phrase "computer implemented method", it hardly seems fair that your claim with the same preamble is rejected under § 101. Perhaps this type of fairness argument is really aimed at the Examiner — after all, the Appeal Brief is your last chance to persuade the Examiner. I have no idea whether this works with Examiners. But it doesn't work with the Board.

A much more creative argument appeared in Ex parte Haines, where the Applicants made a constitutional equal protection argument in fighting a § 101. (Seriously.) The Board ignored that one too, noting that "Appellant has not cited any authority in support of the novel legal argument." For more details, see this post at The Florida Patent Lawyer Blog.

Responding to new case law after an appeal brief is filed

Takeaway: If you have a case on appeal to the BPAI and new case law comes out that affects arguments made in your Appeal Brief, you can file an updated brief to address the new case law. For example, the Applicant in Ex parte Ahluwalia filed a "Letter Brief" to discuss In re Vaidyanathan, and the BPAI did consider the new arguments.

The Applicant in Ex parte Candy tried a different tack and didn't fare so well. After the BPAI affirmed the Examiner's rejections, the Applicant used a Request for Rehearing to ask for permission to file a new Appeal Brief, to present "new arguments responding to the extensive changes in patent law and in the rules and procedures of the BPAI." The Board denied the request because the Applicant didn't point out any specific changes in the law that would "render the Board's decision in error."

Details:

The Letter Brief in Ex parte Ahluwalia referenced In re Vaidyanathan, a decision in which the Federal Circuit reversed an obviousness rejection that had been affirmed by the BPAI. In doing so, the Federal Circuit stated that while the Examiner may rely on common sense as providing a reason to modify, "the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious." The Letter Brief argued that the rejection was deficient under In re Vaidyanathan because the Examiner didn't explain but merely made conclusory statements. The BPAI disagreed, and explained why the Examiner had provided articulated reasoning with some rational underpinning.

The Applicant in Ex parte Candy referred vaguely to "extensive changes" in the law and BPAI rules. I'm not sure what he had in mind. KSR had been out for about a year when the Applicant filed the Appeal Brief. Bilski v. Kappos was just out, but was irrelevant because no § 101 rejections were present. And the BPAI rules had not changed – the extensive BPAI rules package from December 2008 was never put into effect.

My two cents: MPEP 1205.02 makes reference to filing a "supplemental paper", but no details. So it's useful to have Ahluwalia an example application to look at. The Letter Brief is available in Public PAIR.

This supplemental filing might be useful in some cases. For example, there are tons of applications pending before the BPAI that are affected by Bilski v. Kappos. You can do nothing and take your chances with machine or transformation test arguments in an already filed Appeal Brief. But the BPAI might decide that your claim involving a machine is still abstract. A Letter Brief would give you the opportunity what this isn't so – perhaps using some of the factors from the PTO's Bilski guidelines. Something to consider.

BPAI holds that claim which includes figure is not indefinite

Takeaway: In Ex parte Smotkin, the applicant appealed a claim to a fuel cell membrane including a coating having a thickness described in the claim as "in the range shown for Nafion 117 in Figure 10." Figure 10 was actually reproduced as part of the claim, rather than the claim referring to a figure in the spec. The BPAI found that the claim was not indefinite. The Board distinguished Ex parte Fressola, which generally prohibits a claim from incorporating by reference to the specification or drawings. The Board found that the appealed claim did not incorporate by reference, but rather "displays the figure and pinpoints the elements of the figure that relate to the limitations of the claim."

Details:
Ex parte Smotkin
Appeal 2009011268, Appl. No. 09/891,200, Tech. Center 1700
Decided January 22, 2010

The claim at issue is reproduced below:

84. A proton-conducting membrane designed to serve as an electrolyte in a fuel cell, which membrane consists essentially of
     a single metal or metal hydride support, wherein
     one or both faces of said support is coated with an electronically-insulating proton-conducting coating, which coating consists of an inorganic material that contains no liquid phase, said coating having a thickness such that the ASR for protons at at least one temperature between 220°C and 550°C is in the range shown for Nafion® 117 in Figure 10:

In the Final Rejection, the Examiner rejected claim 84 as indefinite, citing to MPEP 2107(s):

Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant's convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).
(Emphasis in original.)

The Examiner further explained that:

In this instance, it is pointed out that a first set of claims (i.e. claims 75-82) has been properly delineated and set forth without the use of said table/fimre. Accordingly, it is contended that is not imperative or necessary to specifically define the claimed subject matter by using the table/figure. The examiner is also concerned about the possibility that claim 84, as now amended, be technically inaccurate due to the use of a table/figure subject to multiple interpretations.

In the Appeal Brief, the Applicant noted a difference between claim 84 and the set of claims which did not use a figure:

[T]he range set forth in the graph of claim 84 is different from that mandated by claim 75; claim 75 mandates an area-specific resistance for protons (ASR) of 0.01-100 C2.cm2 whereas the range shown for NafionB in Figure 10 has a lower limit somewhat greater than 0.01 C2.cm2 and an upper limit clearly lower than 100 C2.cm2. As the figure is the only place where this range for NafionB is set forth in the specification, it is believed necessary to incorporate the figure into the claim in order to provide adequate support for this range.
(Emphasis added.)

The Applicant also distinguished Ex parte Fressola, arguing that Fressola involved an omnibus claim ("as disclosed in the specification and drawings herein") whereas the claim on appeal "sets forth the drawing and identifies the portion of the drawing that is relevant to the limitation of the claim."

The Board reversed the indefiniteness rejection:

In Ex parte Freessola we held that “[i]ncorporation into the claims by express reference to the specification and/or drawings is not permitted except in very limited circumstances.” Claim 84 "does not incorporate by reference a figure or table, it displays the figure and pinpoints the elements of the figure that relate to the limitations of the claim." (Appeal Brief 9.)

My two cents: The Board did not address the Examiner's concern with "use of a table/figure subject to multiple interpretations." Or the Applicant's characterization of Fressola as being about an omnibus claim rather than a figure in a claim. I checked out Fressola, and its facts really were about an omnibus claim: "as disclosed in the specification and drawings herein". But Fressola does contain a long discussion of other case law (going back to 1943) dealing with incorporation by reference of figures or tables.

The claim here literally included the figure, where Fressola prohibits incorporation of a figure by reference. But even if Fressola were applied here, it seems to me Fressola's exception might apply:

Incorporation by reference to a specific figure or table is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.

PTO proposes new appeal rules

Last week the PTO released a Notice of Proposed Rulemaking for rules governing ex parte appeals before the BPAI. (Read the official notice here.)

Generally, these rules make the applicant's job easier. The PharmaPatents blog has a nice summary here, so I won't bother with one. I will also tell you my personal favorite among all the changes: Summary of the Claimed Subject Matter. The current rule requires an explanation of each limitation of each claim under appeal. The proposed rule requires only an explanation of "each limitation in dispute by appellant." Less work for me and a reduced file wrapper as compared to the current practice.

I'm also glad to see a detailed explanation – almost three pages – of what constitutes a new ground of rejection in an Examiner's Answer. Five examples of what does constitute a new ground and five examples of what does not. While I don't particularly like the "not a new ground" list, I'm happy to have guidance from the PTO rather leaving this up to the Examiner's interpretation. While this guidance is not part of the text of the rule itself, I would confidently refer to the Federal Register Notice when arguing that the Answer did contain a new ground, if it came to that.


Past History: As you may recall, the PTO suspended the last proposed package of appeals rules. That package was supposed to go into effect December 2008, but ended up suspended after significant comment from patent practitioners. The currently proposed rule package bears little resemblance to the last one –which is a good thing.

BPAI affirms obviousness because airbag inflatable to a graphically determined pressure does not structurally distinguish over any other airbag

Takeaway: In Ex parte Bayley, the BPAI affirmed an obviousness rejection because "an airbag inflatable to a first pressure  ...  determined from a graph that plots pressure versus thickness" did not distinguish the airbag from any other airbag. The BPAI found that the pressure determination limitation was not a structural limitation, and thus did not give it patentable weight.

Details:
Ex parte Bayley
Appeal 2009008110, Appl. No. 11/175,731, Tech. Center 3600
Decided October 21, 2010

The claims were directed to a vehicle airbag system. The limitation at issue (emphasized below) related to the pressure used to inflate the airbag.

19. A system for helping to protect an occupant of a vehicle ... said system comprising:
     an inflatable vehicle occupant protection device  ... ; and
     an inflation fluid source actuatable to provide a volume of inflation fluid to said inflatable volume sufficient to inflate said inflatable vehicle occupant protection device to at least a first pressure,
     said first pressure being determined from a graph that plots pressure in said inflatable vehicle occupant protection device versus said thickness of said inflatable vehicle occupant protection device ...

The Examiner rejected claim 19 as obvious. The Examiner relied on one reference to teach a relationship between inflation pressure and airbag thickness, and another reference to teach all the other elements.

The Examiner indicated that no patentable weight was given to using a graph to determine the inflation pressure. The Examiner characterized this use of a graph as merely “an intermediary step in a design process” and “not germane to the patentability of the apparatus because there is no structure that is imparted by the design step that distinguishes the airbag claimed from the prior art airbag.”

In the Appeal Brief, the Applicant argued that the graphically determined inflation pressure was a structural rather than a process limitation and should therefore be given patentable weight. Specifically, the Applicant argued that the limitation of a “graphically approximated pressure” should be interpreted as a structural limitation because it defines the pressure of the inflation device, which is “an objectively observable characteristic of the device.” According to the Applicant, the relationship embodied by the graph “imparts upon the protection device a particularized inflation pressure depending on the thickness of the airbag.”

The Applicant went on to explain similarities between the limitation of claim 19 and other types of limitations, all of which the Applicant said were structural:

     Claim 19 recites the structural limitation of a pressure that is determined graphically. More specifically, the structure recited in claim 19 is that of a protection device and an inflator that provides a volume of inflation fluid sufficient to inflate the protection device to at least a first pressure, the magnitude of which is approximated from a plotted point on a graph that plots the inflated thickness of the protection device versus the inflated pressure of the protection device. This structure cannot be described in any other way and therefore must be given patentable weight.
     The scope of this claim element is no less structural, and therefore no less germane to patentability, than a recitation of a specific pressure (e.g., 20 psi/g), a specific formula (e.g., pressure equal to a mathematical formula based on thickness), or a specific function (e.g., a pressure sufficient to prevent an object from striking through the inflated thickness of the protection device).

The Board was not persuaded, deciding that "an inflation pressure value determined from a plot of inflation pressure versus airbag thickness" was not a structural limitation. Referring to the Appeal Brief's list of alternative ways to express the function of inflating, the Board explained that:

Appellants have not provided any evidence to show that an airbag having an inflation pressure chosen from a plot of inflation pressure versus airbag thickness is any different structurally from an airbag having an inflation pressure chosen from a table of inflation pressures and airbag thicknesses or an airbag having an inflation pressure and airbag thickness derived experimentally. An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

The Board then affirmed the obviousness rejection.

My two cents: I think the Board's point – the airbag in the claim is not different than the airbag in the reference – is very important. But it's also subtle. The distinction (presumably) is the actual mechanism used to inflate to the desired pressure –  but that mechanism wasn't actually claimed.

What's going on here is what I call "inferential claiming." The Applicant claimed around the mechanism for inflating to a desired pressure, by referring to an inflation value that was determined in a specific way (a graph). But the claim did not expressly recite the mechanism.

How should the claim have been drafted? Let's assume that software running on a processor determined the desired inflation pressure based on airbag thickness. Then the claim should recite the processor as a structural element, and use functional language to describe how the processor controls the inflation. Maybe even throw in more structure, in the form or an actuator or valve, controlled by the processor. 

Now, I'm not suggesting that my improved claim is patentable over the references. If you throw in a reference that teaches processor-controlled inflation, the Applicant's inflation mechanism may well be obvious in light of the relied-upon reference that taught a relationship between thickness and pressure.

What I am saying is it's a really good idea to make sure the novel mechanism is actually expressed in the claim.

I'll mention one more criticism I have of the claim as written: the use of "a graph" in the claim. The way I see it, the software doesn't literally use a graph to determine inflation values. A table, maybe. A graph, no. So I'd stay away from "graph" and claim the software using a functional relationship between pressure and thickness.

Federal circuit holds structural limitation in method step is limiting despite "comprised" in preamble

Takeaway: In a 1986 claim construction decision, the Federal Circuit held that a method claim which referred to "engaging eight cube pieces" was limited to a 2x2x2 cube despite the use of "which comprised" in the method preamble. Furthermore, the cube size was not expanded by the use of "comprising" in one of the steps: "rotating a first set of cube pieces comprising four cubes about a first axis." The court found that "comprising" was not used as a transitional phrase when describing the first set. Moleculon Research Corp. v. CBS, Inc. (Moleculon II), 793 F.2d 1261 (Fed.Cir. 1986). An old case, but an important one.

Details:
Moleculon Research Corp. v. CBS, Inc. (Moleculon II),
793 F.2d 1261 (Fed.Cir.1986)

This is a claim construction and literal infringement case. The method claim at issue involves a solution for what you may recognize as a mini Rubiks' cube.

3. A method for restoring a preselected pattern from sets of pieces... which comprises:
a. engaging eight cube pieces as a composite cube;
b. rotating a first set of cube pieces comprising four cubes about a first axis;

The accused products included the classic Rubik's cube and the super Rubik's cube. The classic cube included 27 pieces (3 x 3 x 3), where you rotate 9 at a time. The super cube included 64 pieces (4 x 4 x 4), where you rotate 16 at a time.

The district court found that even though the larger cubes were not 2 x 2x 2, infringement was nonetheless present because claim used the magic word "which comprises" in the preamble:

Claim 3, and its dependent claims, 4 and 5, read on the 2 × 2 × 2 form of the puzzle, as well as on such larger cubic embodiments as the 3 × 3 × 3 and the 4 × 4 × 4, because it employs the open transitional phrase "which comprises." The term "comprising" denotes a patent claim as being "open," meaning that the recitation of structure in the claim is open to additional structural elements not explicitly mentioned.
(Emphasis in original.)

On appeal to the Federal Circuit, the accused infringer (CBS) argued that "in solving the 3 × 3 × 3 Rubik's Cube or the 4 × 4 × 4 Rubik's Revenge there is no step of 'engaging eight cube pieces as a composite cube'." Infringement is avoided when a method claim's step is "missing" from the accused method. (Amstar Corp. v. Envirotech Corp. 730 F.2d 1476 (Fed.Cir.).)

The patentee (Moleculon) argued that "which comprises" in the preamble allowed for larger cubes:

Moleculon counters that using the transitional phrase "which comprises" not only opens the claim to additional steps, but also opens the claim and its individual method steps to additional structural elements.

The Federal Circuit held that the 3 x 3 x 3 cube did not infringe.

In considering the patentee's argument about the transition in the preamble, the court concluded that "the transitional phrase does not, in the present case, affect the scope of the particular structure recited within the method claim's step." The court didn't find the accused infringer's "missing step" argument persuasive either, noting that the step wasn't missing, merely different.

The court framed the issue as the effect of the structural limitation, within the step, on the cube size:

[Step a] ("engaging eight cube pieces as a composite cube") contains a structural recitation ("eight cube pieces"). The question before us is not whether, because of the transitional phrase "which comprises," the step reads on a step of an accused method which recites additional structure (hypothetically, "eight cube pieces and six metal plates"), but rather whether this step which recites engaging "eight cube pieces as a composite cube" reads on a step which engages more than eight cube pieces as in the 3 × 3 × 3 Rubik's Cube or the 4 × 4 × 4 Rubik's Revenge.

After referring briefly to district court decisions where structural recitations in a method claim step were construed as limitations, the court held that:

[C]laim 3 is limited, at least for purposes of literal infringement, to a method for restoring a 2 × 2 × 2 composite cube. That interpretation follows not only from the language of step (a), but also from the way the eight cube piece composite cube is manipulated in steps (b), (c), and (d). These steps are limited to manipulating sets of four cubes only.

With regard to step (b), the court noted the use of "comprising" in that step didn't help the patentee either because it wasn't used as a transitional phrase:

During oral arguments, Moleculon argued that the word "comprising" in step (b) ("rotating a first set of cube pieces comprising four cubes about a first axis") means that the step covers four cubes or more. "Comprising" is not used here as a transitional phrase and has no special legal effect as such. Hence, it should be interpreted according to the normal rules of claim interpretation. No analogous word precedes the structural recitation of the number of cube pieces in steps (a) and (c). "Comprising" in step (c) reasonably interpreted means "having" but not "having at least."

Having found that the district court's interpretation was erroneous, the court vacated the finding of infringement. However, the court then remanded because the district court didn't make any findings about how the doctrine of equivalents applied to the larger 3 × 3 ×3 cube.

Postscript: On remand, the district court found that the method claims were directly infringed, through the doctrine of equivalents, by users playing the 3x3x3 cube. Moleculon Research Corp. v. CBS, Inc., 666 F.Supp. 661 (D.Del.1987) (Moleculon III). However, the Federal Circuit reversed, finding that the district court's analysis "entirely reads the number of cubelets and their corresponding engagement/rotation out of every step of the claim."

My two cents: I agree with this analysis. I see it as a good case for accused infringers and a bad one for patentees. But the Federal Circuit hasn't always used Moleculon II in this way.

I think the Federal Circuit got Moleculon II right in Spectrum Intern., Inc. v. Sterilite Corp., 164 F. 3d (Fed. Cir. 1998). The court in Spectrum found that a claim did not include additional elements and cited Moleculon II for the proposition that " 'comprising' is not a weasel word with which to abrogate claim limitations."

Yet the Federal Circuit cited Moleculon II years later for the unremarkable proposition that "open language of claim 1 embraces technology that may add features to devices otherwise within the claim definition." Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367 (Fed. Cir. 2005). Sure, this is a general statement of the law – that's why I said it was an unremarkable proposition – but it's not really what Moleculon II was about. The court in Gillette went on to find that "a group of first, second, and third blades" could include additional blades because the apparatus preamble used the transition "comprising." That's the opposite of Moleculon II, as pointed out by the dissent in Gillette.

There are differences in the three cases, of course, which can perhaps be used to reconcile them. Moleculon II didn't look to anything but the plain language of the claims to reach its result.  Spectrum reached the same result as Moleculon II after examining statements made during prosecution. Gillette reached the opposite result as Moleculon II after examining the specification, several other claims, and the prosecution history.

Waiting on In re Jung: is there a requirement for the Examiner to present a prima facie case?

Takeaway: Most of the BPAI decisions that are appealed to the Federal Circuit involve fairly routine reviews of prior art rejections. In re Jung is different: it's about the Examiner's requirement to make a prima facie case. As such, In re Jung has the potential to greatly impact patent prosecution. As elegantly put in Jung's brief, when the Examiner does put forth of a prima facie case, "applicants are sufficiently informed as to the full basis of the rejection ... and applicants can determine how to best proceed during initial prosecution." But if the BPAI doesn't provide an independent review of the prima facie case requirement, "applicants are all but required to prophylactically submit rebuttal evidence against uncertain and shifting grounds of rejection."

I've been following this case since the appeal was filed, and have read the briefs to the Federal Circuit (available from Westlaw or Lexis) as well as most of the file history (on PAIR: Appl. No. 10/770,072). Oral arguments took place a couple of weeks ago. Here are my thoughts on this interesting case.

Summary:
In Jung's brief, he asks the Federal Circuit to decide an issue of first impression: whether the BPAI properly ruled on the merits of an anticipation rejection instead of ruling on the appealed issue of whether the Examiner had made a prima facie case of anticipation. Jung's brief further defines the prima facie case of anticipation as having two requirements: (i) the Examiner must construe the claims under the broadest reasonable interpretation standard; and (ii) the Examiner must "adduce sufficient evidence to bridge any facially apparent 'teachings' of the applied reference."

The PTO doesn't see it this way. In the PTO's brief to the Federal Circuit, the Solicitor frames the issue as a routine review of a BPAI decision: "whether a reasonable claim construction and substantial evidence support the Board's conclusion that the prior art, Kolinksy, anticipates Jung's claim 1."

I don't know how much leeway the Federal Circuit has in choosing between issues. As a patent prosecutor, I hope the Federal Circuit does take up the issue of a prima facie requirement. But if the Federal Circuit wants to avoid the issue, I think it can do so on the grounds that Jung didn't properly raise the issue below. The PTO makes a convincing case that Jung did not challenge the prima facie case before the Examiner or before the BPAI, but instead substantively responded to the merits of the rejection. Thus, it seems to me that Jung may have waived his right to argue the prima facie requirement issue on appeal to the Federal Circuit.

Moreover, I think that Jung loses even if the Federal Circuit takes up the issue. That is, I think the Examiner did present a prima facie case. The claim term at issue was "well-charge-level controller." The Examiner explained that he gave each of the words their ordinary meaning, and explained how the reference taught a device that controlled the level of charge in a well.

That said, I am thrilled that Jung, even with these bad facts, took this issue up to the Federal Circuit. Because the PTO's idea of prima facie case – as expressed in the Solicitor's brief – is not enough. The way I read the brief, the PTO has taken the position that the Examiner produced a prima facie case of anticipation merely by: i) asserting that every claim limitation was disclosed by the reference; and ii) clearly designating what part of the reference was relied on. I dunno about you, but I need more than that to mount a good attack on a rejection. I want what Jung wants – explicit claim construction and an explanation of how the words used in my claim are met by the words used in the reference.

Wrap-up: I'll post again when the court releases its decision. The court may choose not to provide a full opinion. I'll be very disappointed if the opinion is nothing more than a bare Rule 36 affirmance. This case deserves at least a Rule 36 affirmance with a short explanation of the grounds of decision, since there is such a discrepancy between how the two parties framed the issues.

BPAI reverses rejection of "configured to move" because Examiner's statement that reference "could move" was speculation

Takeaway: In Ex parte Tipley, the claims described physical parts "configured to" move in a specified manner. The Examiner acknowledged that the reference did not teach parts configured to move as claimed. The Examiner insisted that the reference nonetheless anticipated by treating "configured to" as "capable of" and further insisted that the parts in the reference could move as claimed. The Board treated this as an inherency argument. The Board then found that the Examiner's understanding that the parts could move was simply speculation. Since speculation is not enough to support inherency, the Board reversed the anticipation rejection.

Details:

Ex parte Tipley
Appeal 2009000300, Appl. No. 11/108,338, Tech. Center 2800
Decided September 18, 2009

The claims were directed to an arrangement of circuit boards in a computer. Two of the appealed claims are shown below, with the limitations at issue being highlighted:

5. A computer system comprising:
a first circuit board comprising a first connector;
a second circuit board ... having a second connector couplable to the first connector, wherein the second circuit board is configured to move in a first direction along the first circuit board to generally align the first and second connectors;

18. A computer system comprising:
a first circuit board comprising a first connector;
...a second circuit board coupled to the housing, wherein the second circuit board comprises a second connector; and
a biasing mechanism coupled to the housing, wherein the biasing mechanism is configured to bias the second circuit board along a curved path to connect the first and second connectors in the second position of the module.

The Examiner rejected all independent claims as being anticipated by the same reference.

With regard to the "configured to move in a first direction" limitation, the Applicant argued in the Appeal Brief that the limitation was not present in the reference because "housing end 70 blocks the daughter board 8 from moving along the mother board at one end, and surface 34 of housing end 72 blocks the daughter board from moving along the mother board 14 at the other end." [See Fig. 2 below.]

In the Answer, the Examiner further explained the rejection as follows:

[P]lease note that the recitation that an element is "configure to" perform a function is not a positive limitation but only requires the ability to so perform. In this case, Grabbe discloses that the second circuit board (8) can move in a first direction along the first circuit board (14), as shown in the following figure. (Emphasis added. See Fig. 1 below.)

 

The Board noted that the Examiner did not point to an express teaching of the limitation, and therefore analyzed under an inherency theory:

[W]e note that the Examiner’s finding, portrayed in the figure on page 8 of the Answer that allegedly shows the daughter board moving in a direction along the mother board via a directional line added by the Examiner, is based on the mere possibility of such movement and thus is speculative and insufficient to establish the inherency of such movement. The Examiner does not provide any reasoning to support such a determination.

The Board therefore reversed the rejection of the claim (claim 9).

With regard to the "configured to bias the second circuit board along a curved path" limitation, the Applicant argued in the Appeal Brief that the limitation was not present in the reference because:

the daughter board 8 is in contact with a ledge 68, it is impossible for the daughter board 8 to move along a curved path. See Grabbe Fig. 5. As such, the daughter board 8 moves laterally in a straight direction along the surface of the ledge 68 until the engaging surface 38 couples with the connector. [See Fig. 5 below.]

In the Answer, the Examiner further explained the rejection as follows:

[I]t is again noted that the recitation that an element is "configure to" perform a function is not a positive limitation but only requires the ability to so perform. In this case, the second connector (4) of  Grabbe can rotate around a pivot structure and along a curved path, as shown in the following figure. (Emphasis added. See Fig. 3 below.)

Once again, since an express teaching was missing, the Board analyzed under an inherency theory, and found the Examiner's rejection to be in error:

In this regard, we note that the Examiner’s finding portrayed in the figure on page 10 of the Answer that allegedly shows the daughter board 8 moving in a curved path via a curved line added by the Examiner is mere speculation. The Examiner does not provide any reasoning to support a finding that Grabbe’s circuit board inherently moves in a curved path. (Emphasis added.)

My two cents: I don't view this case as being about inherency, at least not in the classic sense. The Examiner's position seems to be that there is no difference between "capable of" and "configured to". The parts in the reference were not designed to move in the claimed manner – but could move a micrometer or two if enough force was applied.

I have two objections to the Examiner's argument. First, even if the claims used the phrase "capable of", this is a strained interpretation of that phrase "capable of". It's akin to saying that one piece glued to another is "capable of being released" simply because the pieces come apart with a pry bar. Second, the claims didn't even use "capable of", they used "configured to." The Examiner's interpretation of "configured to" is simply unreasonable in my opinion.

It's been a long time since I saw a "creative" rejection like this. I wish the Board had hit the Examiner's argument head on rather than shoehorning it into an inherency framework.

BPAI reverses obviousness when alleged benefit related to a different feature than claimed (Ex parte Keller)

Takeaway: The BPAI reversed an obviousness rejection because the benefit relied on by the Examiner as a motivation to combine (improved performance) was not related to the feature claimed, but was instead a benefit of another feature also taught by the reference. (Ex parte Keller.)

Details:
Ex parte Keller
Appeal 2009009225, Appl. No. 11/176,819, Tech. Center 2100
Decided June 15, 2010

The claims on appeal related to a memory controller in a computer. Dependent claim 5 was rejected as obvious, and the feature argued by the Applicant related to selective interleaving: "wherein said method further comprises selectively only interleaving storage of consecutive memory chunks across said multiple sets of said physical dynamic memory devices within said first portion of said memory array,"

The Examiner rejected the parent independent claim using a combination of two references, and added a third reference (Roy) to reject dependent claim 5. As a motivation to combine Roy's interleaving technique with the other two references, the Examiner offered:

Roy teaches performance improvement techniques such as interleaving can reduce the memory system bus cycle time by up to half that of any of the DRAMs individually.

The Board first found that the combination did not disclose selective interleaving as described in claim 5. Roy disclosed the existence of two types of computer systems: those that interleave memory and those don't interleave memory. However, the Board found that this did not amount to a teaching of a system that selectively interleaved some chunks of memory while not interleaving other chunks of memory.

The Board went further to reject the Examiner's motivation to combine, finding that the teaching used by the Examiner as a motivation to add Roy to the combination did not relate to the feature used in the combination – selective interleaving. The benefit of reduced cycle time related instead to a different feature – increasing width of the data bus.

The Board found the Examiner's motivation to combine deficient in yet another way: solving the problem noted in the reference simply didn't suggest the claimed feature of selective interleaving:

Even if this disclosure related to the interleaving memory technique, recognizing problems with interleaving memory would not have taught or suggested combining interleaving and non-interleaving using a single memory array.

My two cents: The rationale used by the Examiner for the combination – improved performance – is an example of what I call a "generic rationale". This decision shows one of two ways I know to fight a generic rationale: argue that the Examiner hasn't shown that the combination actually provides the benefit. The second is to argue that the alleged benefit isn't really beneficial at all or is outweighed by drawbacks.

What initially drew my attention to this decision was the Examiner's mistake in relying on an advantage that wasn't related to the claimed feature. However, the Board's initial finding that the combination did not teach all the elements contained a useful nugget also.

Specifically, a reference that discloses the presence of a particular feature in one embodiment along with the absence of the same feature in another embodiment does not teach selectively enabling the feature. I've seen this sort of rejection before, and I'm glad to to see the Board is persuaded by this reasoning.  

Related posts: Ex parte Khayrallah, which I discussed here, makes the point that disclosure of two options for building a system is not selective disablement of options during system operation. Ex parte Rykowski, which I discussed here, is another example of a successful attack on a generic rationale.

Overview of 1.132 expert declarations

A few weeks ago the Reexamination Alert blog ran a story (here) about a Tivo patent which survived an ex parte reexamination. (Details in PAIR, Reexam Control No. 90/009329). Though a great many reexams go to appeal, that wasn't needed here because the Examiner was persuaded by expert declarations filed in response to the final Office Action. The Reexamation Alert put it like this:

TiVo’s present success is the result of an interview with Examiners followed by two very powerful declarations. TiVo was represented at the interview by counsel, but also by TiVo co-founder and ‘389 patent co-inventor Jim Barton, as well as UCLA Professor John Villasenor. Barton’s declaration, and presumably his presentation at the interview, established a critical nexus between the substantial commercial success enjoyed by TiVo’s digital video recorder and the “automatic flow control” required by claims 31 and 61. Dr. Villasenor’s declaration detailed the technical distinctions between the ‘389 claims and the prior art, which he asserted “simply reacts to the flow and does not control it.”  Villasenor also argued that one skilled in the art would have no reason to combine the references in the manner proposed in the final rejection.

The use of expert declaration evidence is patent prosecution is a topic of particular interest to me, so I reviewed some of the file history, and in particular the declarations and responses which relied on this evidence. I've reviewed many Board decisions dealing with expert declarations, and in doing so have learned about some of the common problem areas with declarations. From what I can see, the expert declarations in this Tivo reexam skillfully handled several areas which Applicants often have trouble with.


Here's a few of the things that Tivo got right in its use of expert declarations -- along with the case authority for why I say each is "right":

1. Most importantly, Tivo used a declaration to explain technical facts, rather than simply putting this in a response as "mere attorney argument." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)(attorney argument without factual evidence will not rebut prima facie obviousness).
2. The declaration includes credentials and those credentials are relevant to the art. For a discussion of the relevant case law, see my post here.
3. The declaration explains the relationship of the declarant to the assignee. Failure to do so can implicate inequitable conduct. An undisclosed business relationship between a patent applicant and a declarant is material if "(1) the declarant's views on the underlying issue are material and (2) the past relationship is a significant one." Ferring B.V. v. Barr Labs, Inc., 437 F.3d 1181, 1188 (Fed. Cir. 2006).
4. The declaration itself gives facts and then draws technical conclusions, rather than conclusions unsupported by fact. The Board has broad discretion to accord little weight to declarations expressing an opinion as to fact when there is a lack of factual support for the opinions expressed. In re Am. Acad. of Sci. Tech. Ctr. , 367 F.3d 1359, 1368 (Fed. Cir. 2004).
5. The declaration itself doesn't make legal conclusions. This is the proper role of attorney argument: to make a legal conclusion such as"not obvious." “An expert’s opinion on the ultimate legal conclusion is neither required nor indeed ‘evidence’ at all.” Mendenhall v. Cedarapids Inc. , 5 F.3d 1557, 1574 (Fed. Cir. 1993) (quoting Nutrition 21 v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991))

In future posts I'll discuss some of these requirements in more detail. In the meantime, you can see a few posts which touch on expert declarations by selecting the label "1.132" in the list of Labels on the right-hand side of the blog.

BPAI finds swear-behind declaration insufficient for using different terminology than in the claims

Takeaway: In Ex parte Disney, the Board found that a swear-behind declaration did not show conception of a claimed spatial relationship because the claims used different terminology than the evidence. Specifically, the claims referred to the dimension as "vertical depth" and the inventor's notebook and invention disclosure form referred to the dimension as "long." Therefore, when differences in terminology exist between the evidence and the claims, you should also show that the terms are equivalent.

Details:
Ex parte Disney
Appeal 2008005465, Appl. No. 10/929,590, Tech. Center 3600
Decided: February 25, 2010

The technology in this application related to the structure of a transistor. The element at issue was:

first and second field plates disposed in the dielectric material of the first and second trenches, respectively, the first and second field plates having a first vertical depth ...
first and second gate members disposed in the dielectric material between the first and second sidewalls of the mesa, and the first and second field plates, respectively, the first and second gate members having a first vertical depth that is less than 20% of the first vertical depth.

Applicant submitted a declaration under § 1.131 to antedate the § 102 reference. The declaration attempted to establish conception before the effective filing date of the reference, coupled with diligence up to the time of filing of the application. The Applicant relied on a declaration from the attorney who prepared the application to establish diligence. The evidence submitted along with the inventor's declaration to establish conception included seven pages of notes and sketches from an inventor's notebook, a corporate invention disclosure form, and results from a computer simulation.

In the final Office Action, the Examiner alleged that the evidence did not show conception of the claimed depth relationship ("first and second field plates having a first vertical depth that is less than 20% of the first vertical depth"). Specifically, the Examiner alleged that:

"No teaching has been found in the Exhibits predating November 16, 2000, of said range. To the extent the Figures are of true scale, – and there is no statement on that either, the range appears not to be met by the figure illustrating the final structure, i.e., Figure 5K, in which the second vertical depth appears to be 25% instead of less than 20%."

The Appeal Brief argued against the Examiner's position by pointing to specific pages and figures in the three evidence documents and explaining how the claimed 20% range was described in these pages. After explaining the relevant portions of the evidence, the Appeal Brief concluded this argument as follows:

The evidence contained in the Declaration under 37 CFR 1.131 therefore clearly establishes the dimensional relationship recited in the relevant claims; namely, the vertical depth (i.e., length) of the gate members (3 pm) is less than 20% of the vertical depth of the field plate members (47 pm = Ld - TBox). Applicant respectfully submits that the range recited in claims 43-44 is fully supported in the Exhibits. Consequently, Baliga '372 should be removed from consideration as a prior art reference.

The Board did not discuss the showing of diligence, and instead moved directly to a discussion of whether the inventor declaration established conception of the claimed relationship between structures, namely, "first and second field plates having a first vertical depth that is less than 20% of the first vertical depth."

The Board found that the declaration was not sufficient. Where the Examiner took issue with the numeric ratio (less than 25% rather than less than 20%), the Board took issue with the terminology used to describe the dimensions. Specifically, the evidence referred to a vertical trench that was 3 um long, where the claim referred to the depth of the plates in the trench. The Board explained that:

The Rule 131 declaration submitted by Appellant to antedate the November filing date of the Baliga ‘372 reference clearly shows a gate poly and a field plate poly, but does not show a depth of the gate members that is less than 20% of another vertical depth (FF4, referring to the figure below showing a gate poly and a field plate poly, and the explanation “Added Vertical (trench) Gate 3μm Long; with Pbody 2.5 μm long, N+ Source 0.2 μm long”).

A measurement that is “long” is not an indication of depth (FF 4). Accordingly, we find that Appellant’s declaration does not prove that he invented the claimed vertical depths prior to the date of the reference to Baliga ‘372.

My two cents: When was the last time you wrote claims and didn't change the terms used by the inventor? That's a large part of what we patent attorneys/agents get paid for ... picking the right words. So I gotta believe this mismatch in terminology will be a common occurrence when you submit inventor-provided evidence with a swear-behind declaration.

The lesson here is not to ignore the discrepancy. Instead, you should explain it. It seems to me that dimensions in particular are easy to explain: depending on what your perspective is, length could also be considered width or depth.

From what I've seen, your best chance is to include the explanation of the discrepancy in the inventor declaration. You can try putting it in as a argument, and you might convince the Examiner that way. But if you go that route on appeal, you risk the Board ignoring your arguments because "[a]rgument of counsel cannot take the place of evidence lacking in the record" (Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)).

I also find it significant that the Board did not question the sufficiency of the showing of diligence. I've seen plenty of Board decisions that didn't reach the merits of whether the evidence showed conception / reduction because diligence was lacking. Therefore, I infer that there was nothing obviously wrong with the diligence showing. Furthermore, neither the Examiner nor the Board questioned the sufficiency of the evidence in showing any of the other claim limitations –  only the 20% limitation seemed to be an issue.

It's true that the Board found that this evidence had a hole in it, and you should take note of this. Nonetheless, I think this swear-behind was still a pretty good showing overall. Consider adding this application to your list of example swear-behind declarations – it's available in PAIR.

Interviews with Chief Judge Rader and former Chief Judge Michel

Earlier this year, the IPWatchdog blog ran a series of interviews with Federal Circuit Chief Judge Rader (here) and former Chief Judge Michel (here). Last week, IPWatchdog ran a follow-up interview with C.J. Michel (here) on the topic of effective appellate advocacy. I found two of Michel's comments particularly interesting: don't waste time in your brief telling the judges what the law is; and trial counsel isn't necessarily the best counsel for an appeal. 

If you're a Federal Circuit junkie and can't get enough of these guys, you might be interested in another interview, this joint interview with Rader and Michel. The article is part of a special patent reform issue of the magazine "Medical Innovation & Business."

Public use anticipation allows multiple references that explain how single system functions

Takeaway: A district court found that multiple documents which described a single system were properly considered a single anticipatory prior art system under the public use prong of § 102(b). IP Innovations LLC v. Red Hat, Inc., 2:07-cv-447, E.D. Tex., October 13, 201.

Details:

The district court in IP Innovations LLC reviewed a jury verdict of anticipation. The jury found that the plaintiff's patent was anticipated by a software system of virtual workspaces created by a university student (referred to as the "Chan system"). As evidence of anticipation, the accused infringer relied on two separate documents which described the Chan system: a publication of the student's thesis; and a published paper by the student's supervisor and a reader of the thesis.

The patentee challenged the jury verdict. While not disputing that the prior art system met every element of the asserted claims, the patentee argued that the prior art system could not anticipate because it was a "blending of two separate articles by different authors."

The court found that substantial evidence supported the jury verdict. An expert for the accused infringer had testified that "the illustrated figures and technical details showed that the two papers described the same Chan system. Therefore, he used the information in both papers to recreate the Chan system." The court found that anticipation under the public use prong of § 102(b) was proper:

"[Alnticipation must be found in a single reference, device, or process." Studiengesellschaji Kohle, rn.b.H v. Dart Indus., Inc., 726 F.2d 724, 726-27 (Fed. Cir. 1984). Dr. Wilson used a single device, the Chan system, to show anticipation. Dr. Wilson did not rely on the articles as separate anticipatory references. He only used the articles to understand how the Chan system functioned. This court sees no error in using multiple references to describe a single prior art system for the purpose of showing anticipation.

The patentee also argued that the accused infringer had never proved that the Chan system existed prior to the § 102(b) bar date. The court found that the evidence did support a date of public use before the bar date of March 25, 1986:

Chan's thesis was published in July 1984, and his professor's paper was published in 1983. Chan's thesis explains that his system was "used in a fourth year undergraduate course" and "approximately 100 students have been exposed to the system over the course of 8 months." Therefore, the papers indicate that the Chan system existed and was in public use at least by 1984.

My two cents: Patent prosecutors may be surprised by this use of multiple documents in an anticipation context. That's because we deal almost exclusively with rejections based on publication. Anticipation in the public use or sale context works slightly differently, since anticipation requires a "single reference, device, or process" (as stated in the Studiengesellschaji decision relied upon in IP Innovations). That is, for public use or sale, it's the device/system/process that anticipates, and the number of documents which describe the prior art unit is irrelevant.

Occasionally an Examiner will issue a public use or sale rejection based on sale/use of the Applicant's own system. Usually this information comes from the Applicant's IDS, but occasionally the Examiner will dig it up on his own from an Internet archive. If this happens to you, you may be fighting an anticipation rejection which properly relies on multiple documents, as happened here in IP Innovations.

Prosecutors will be glad to know that the multiple-document-anticipation doctrine is much more limited under the other prongs of 102. These limits are described in MPEP 2131.01 - Multiple Reference Rejections. In a future post, I'll review some BPAI decisions that involve anticipation with multiple documents.

Trivia: The district court judge in IP Innovations was Judge Rader of the Federal Circuit, sitting in designation while visiting the Eastern District of Texas.

Larson v. Aluminart on remand: Yes to deceptive intent but No to inequitable conduct

Takeaway: We all know that inequitable conduct requires materiality and intent. But I think sometimes we forget that in the end, it comes down to balancing the equities – materiality vs. intent – so finding a little of each isn't always enough. The recent district court opinion in the remanded Larson v. Aluminart case is a good example of this. The district court "found that Larson intentionally and materially deceived the Reexam Panel," and yet went on to conclude there was no inequitable conduct. "Balancing the diminished materiality of the omitted information and Larson's intent, the Court finds that Larson's conduct was not so egregious as to warrant holding its patent unenforceable." Larson Mfg. Co. of S.D., Inc. v. Aluminart Products Ltd., 2010 WL 2990648 (D.S.D. Jul 29, 2010) (NO. CIV 03-4244).

Details: The Federal Circuit ruled on the inequitable issued earlier this year in Larson Mfg. Co. of South Dakota, Inc. v. Aluminart Products Ltd., 559 F.3d 1317, 1341 (Fed. Cir. 2009). At issue was a failure to disclose five items: two office actions from a co-pending continuation application as well as three prior art references.

The lower court found materiality and intent with respect to each of the five items, and found inequitable conduct after balancing the equities. On appeal, the Federal Circuit found partial error in the lower court's findings: the three undisclosed items of prior art were cumulative, not material, but the office actions were material. The Federal Circuit then remanded back to the lower court with instructions to determine whether the patentee withheld the two office actions with deceptive intent. The lower court was also instructed to take into account that the German patent DE `478 was cumulative when considering the materiality of the Fourth office action.

On remand (Larson Mfg. Co. of S.D., Inc. v. Aluminart Products Ltd., 2010 WL 2990648 (D.S.D. Jul 29, 2010)), the district court found materiality once again:

The Court believes that the Fourth Office Action is less material after the Federal Circuit's holding that the German patent DE `478 is cumulative of the Kissinger patent and thus not material. The Fourth Office Action still is material, however, because it was an adverse decision based on a different explanation and interpretation of the Kemp patent and other prior art, and thus it was "clearly information that an examiner could consider important.

The district court also found deceptive intent once again:

The Court still believes intent to deceive the Patent Office is inferred by Larson's failure to disclose Examiner Johnson's adverse September 21, 2005 and June 23, 2006 Office Actions in the `039 Continuation. ... The inference of deceptive intent is the most reasonable inference able to be drawn from the evidence ...
After all of the briefing that has been done in this case, the Court is still left without an explanation for a knowing failure to disclose, and this supports an inference that Larson intended to mislead the Reexam Panel.

However, the patentee's conduct was not egregious when the equities were balanced:

   "Under the balancing test, `[t]he more material the omission or the misrepresentation, the lower the level of intent required to establish inequitable conduct, and vice versa.'" Cargill, Inc. v. Canbra Foods, Ltd., 476 F.3d 1359, 1364 (Fed.Cir. 2007) (quoting Critikon, 120 F.3d at 1256).
   Having found that Larson intentionally and materially deceived the Reexam Panel, the Court proceeds to balance the equities. After careful consideration, the Court still finds the Third Office Action to be highly material but the materiality of the Fourth Office Action has been diminished by the appellate determination that the DE `478 patent information is not material. Balancing the diminished materiality of the omitted information and Larson's intent, the Court finds that Larson's conduct was not so egregious as to warrant holding its patent unenforceable.

My two cents: "The Court is still left without an explanation for a knowing failure to disclose." Wow.  Maybe I'm reading too much into this single sentence. But I read that as not simply no credible explanation, but no explanation whatsoever, not even "I don't remember." I'd say in this situation, deceptive intent really is the "single most reasonable inference able to be drawn from the evidence."

But deceptive intent isn't enough. The patentee came out okay because the two office actions were of "diminished materiality."

I wonder how often this fact pattern shows up: Yes to deceptive intent; No to Inequitable Conduct.