(Appeal 2008-3485; App. No. 10/419,121; Tech. Center 2100)
Decided: February 3, 2009
McGrath discloses a microprocessor which implements a particular instruction. The representative claim on appeal was a method which included the step "executing a security initialization instruction." The claim further described the instruction as causing specific transmitting and retrieving actions, and further stated "the security initialization instruction is a single instruction including a plurality of atomically executed microcode components."
The reference used for anticipation disclosed a microprocessor instruction related to security, and the Board found that this instruction performed the claimed transmitting and retrieving actions. The Board then used what I think is strained reasoning to find that the instruction in the reference was atomically executed as claimed.
Ellison discloses the execution of a series of steps in a specified order and does not disclose that the execution of any of the steps in the series is interrupted by other processes. Therefore, construing the term “atomic” broadly but reasonably and in light of the Specification, which discloses that “to execute atomically refers to executing to completion in a specified order without interruption” (Spec. 12, ll. 17-18), we agree with the Examiner that Ellison discloses executing the iso_init instruction that causes the execution of a series of steps to completion in a specified order without disclosure of any interruption (i.e., “atomic”).So the Board says that because the reference did *not* mention that interruptions *could occur* during the instruction, this means the reference implicitly taught that interruptions *could not occur*.
(Ex parte McGrath, p. 9, emphasis added.)
Since when is an ABSENCE of teaching NOT X the same as TEACHING X? Maybe this makes sense if a reference is expected to teach everything. In that case, the fact that something is not mentioned becomes important. But references do not say everything. Patents in particular have good reasons for leaving out lots of stuff. So I don't think it's proper, as a general rule, to draw an inference about the absence of a teaching in a patent reference. And I think the Board's reasoning is ridiculously strained.
The only thing worse than this reasoning is that the Board ignored a statement in the reference about interruptability of instructions from which a strong inference could be drawn. Specifically, the reference listed particular instructions as non-interruptible – and did not include the iso_init instruction relied on by the Examiner in this list! In the Appeal Brief, the Appellant pointed out the logical inference: that a POSITA would not understand the iso_init instruction to be non-interruptible, since it wasn't in the list. The Reply Brief also rebutted the Answer's alternative explanation of this teaching. And the Board said nothing at all about this important argument.
In my opinion, the Appellant had the better argument. But regardless of which side was more persuasive, it's incomprehensible to me that the Board didn't bring this up, and instead relied on an absence of a teaching that iso_init was interruptible as implying that iso_init was non-interruptible (as claimed).
The board's definition of atomic was completely wrong. Further, taking the specifications partial description of atomic as a complete definition was not justified either. I think you are being kind to call the reasoning strained.
ReplyDeleteThat said, I don't think the Appellant addressed the Board's definition of atomic headon. The reason for this "failure" is very understandable. The examiner did not make the error the board made and appeared to fully understand what atomic meant.
The examiner appeared to believe that the iso_init statement was made up of those other statements (iso_enter, etc.) that were disclosed as non interruptable. The applicant correctly argued that the examiner was wrong, about the constitution of iso_init.
The Board then made the error you describe. Once the board found that iso_init was atomic using the bad definition, the examiner's error in describing the make up of iso_init was irrelevant.
I note that the appellant did get this patent to issue with some substantial amendments to the claims. I don't believe the atomic nature of iso_init was a patentable distinction.
>I don't think the Appellant addressed
ReplyDelete>the Board's definition of atomic headon.
>[Because the] examiner did not make the error
>the board made and appeared to fully
>understand what atomic meant.
Yeah, this really bugs me: that the Board is allowed to a) make new arguments and/or b) perform extensive fact finding.
The Appeal often ends up being about something completely different than what the Applicant and Examiner thought it was.
When the Board brings up a new argument, I would like the Appellant to be able to address this in a Request for Rehearing by the Board. But it's not -- Rehearing only allows for re-arguing stuff that was already brought up in the *Appeal Brief*.
"this means the reference implicitly taught that interruptions *could not occur*."
ReplyDeleteNo it means that the reference implicitly taught that interruptions *do not occur* in that embodiment.
Negative limitations always bring up this kind of nonsense regardless of the Art in which they are being used. I get them in my own art from time to time and I apply the art in the analogously same way. I have yet to recieve any arguments about such application so far as I recall.
The board followed standard procedure so far as I can tell.
"Since when is an ABSENCE of teaching NOT X the same as TEACHING X?"
It's not. I think you got your statement wrong. The (implicit in this case) absence of X (interuptions) is the same as teaching NOT X. There you go pumpkin.
And it has always been this way to my knowledge. There have been some court cases on the issue/involving the issue of negative limitations as this issue is not new.
"Yeah, this really bugs me: that the Board is allowed to a) make new arguments and/or b) perform extensive fact finding. "
MAYBE YOU SHOULD TELL KAPPOS THAT THE REVIEW IS NOT TO BE DE NOVO. GO FILE AN APPEAL RIGHT NOW PLEASE, THEN APPEAL TO THE CAFC ASAP, K THANKS I WOULD REALLY APPRECIATE IT AND WILL NOT LAUGH AT YOU. THIS IS IMPORTANT SO I CAPSED IT.
"the Appellant pointed out the logical inference: that a POSITA would not understand the iso_init instruction to be non-interruptible, since it wasn't in the list. "
That might or might not be true I haven't read the reference. But it apparently didn't seem to be that true to the board. However it does seem the Board's work product has gone down significantly in terms of quality as of late. Especially in terms of properly addressing the issues in the case.
>No it means that the reference implicitly
ReplyDelete>taught that interruptions *do not occur* in
>that embodiment.
OK. I agree your rewording from can't to don't is more clear. It doesn't change my stance.
I strongly disagree that the absence of a statement in the reference about interruptions of the execution of an instruction implies that interruptions do not occur. In my opinion, the absence of such a statement says nothing about whether interruptions do, or do not occur, in the embodiment discussed in the reference.
>absence of X (interuptions) is the same as
>teaching NOT X.
Yep, that's the crux of the issue. *Why* do you read the absence of X as NOT X?
References do not teach everything. So why is silence on something considered a teaching?
>There have been some court cases on the
>issue/involving the issue of negative
>limitations as this issue is not new.
I don't know of any case law on point. But I gotta think that you're right, that this is a general issue and must have been ruled on before.
>MAYBE YOU SHOULD TELL KAPPOS THAT THE REVIEW
ReplyDelete>IS NOT TO BE DE NOVO. GO FILE AN APPEAL RIGHT
>NOW PLEASE, THEN APPEAL TO THE CAFC ASAP
There are plenty of BPAI issues that I'd love to see the CAFC rule on. I don't yet have a client who thinks any of these issues are important enough to spend the time and money on.
"MAYBE YOU SHOULD TELL KAPPOS THAT THE REVIEW IS NOT TO BE DE NOVO. GO FILE AN APPEAL RIGHT NOW PLEASE, THEN APPEAL TO THE CAFC ASAP, K THANKS I WOULD REALLY APPRECIATE IT AND WILL NOT LAUGH AT YOU. THIS IS IMPORTANT SO I CAPSED IT."
ReplyDeleteMaybe some day you will learn something about administrative law. Until then, you're just another examiner using phrases like "de novo" that you don't even understand.
Sigh.
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ReplyDelete>If I tell you...I just drove to the store,
ReplyDelete>bought bread, and drove home
[As I noted above, I find your example inapplicable to Ex parte McGrath. But relevant to the general subject of absence of teaching, and interesting, so I'll comment.]
I will draw no inference one way or the other as to what other stops you made between home and the store, or as to whether you went past the store.
You might have all kinds of reasons for leaving out these other facts. Just as there are all kinds of reasons why references leave out teachings.
As for a trip to the moon, I *will* draw an inference there. I will use other knowledge to infer that you didn't go to the moon. Specifically, it's a momentous thing that you would have mentioned.
This is an example of when drawing inferences is sometimes proper. Namely, when there is reason to believe something would have been disclosed, *then* you can infer something from its absence.
>I just drove to the store, bought bread, and
ReplyDelete>drove home ....
I understand your logic, but find it inapplicable to the Ex parte McGrath.
McGrath claimed atomically executing a particular instruction. While you can call this as a "negative limitation" (because atomic means *non*interruptible), I say it's a very positive limitation: it says the instruction **has** to be executed without interruption.
Therefore, a reference that teaches an instruction that can be interrupted does not anticipate.
Also, a reference that is silent as to whether or not an instruction can be interrupted does not anticipate. The instruction in the reference might be interruptible. It might not be. Can't tell. So no anticipation. Because the claim specifically excludes an instruction that can be interrupted.
Note that this silence is different than an reference that teaches that an instruction may or may not be interruptible. Such a reference *would* teach because that's two embodiments, one instruction that can be interrupted, and one instruction that can be interrupted. The second embodiment anticipates.
But that teaching is different than silence. And I do *not* draw the inference "could be interruptible or could be non-interruptible" from the silence.
>at least in most arts, there is an implication
>that a disclosed method/product implicitly
>discloses at least the specific method/product.
I don't practice in enough arts to comment about "most arts".
Don't really know what you mean by "discloses at least the specific". Maybe you're referring to genus/species?
I will agree that *sometimes* you can draw an inference from silence in a reference. This is just not one of them.
>[in McGrath] the board appears to have found,
>factually, was a method that didn't involve
>any interuptions taking place.
Absolutely that's what they found. My issue is with the reasoning they used to get to this finding of fact. Which I find ridiculous for the reasons already discussed.
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ReplyDelete"I will draw no inference one way or the other as to what other stops you made between home and the store, or as to whether you went past the store."
ReplyDeleteSeriously Karen? Would you expect any non-partial judge or jury to find the same as you espouse?
"You might have all kinds of reasons for leaving out these other facts."
Like I'm having an affair :)
Or like I want to keep secret my interuptions of some steps performed?
Seriously? How about this reason I would remain silent if I were to be writing the instant reference: because no interuptions took place.
ZING!
"Specifically, it's a momentous thing that you would have mentioned."
Would they not have mentioned an interupt? Hmmm. Seems kind of momentous, in fact it might only take a moment.
In any event, it's been fun discussing it with ya and all Kar, but that's my final word. The disagreement between you and me is likely one of world-view anyway. I have a reasonable one, you have a pro-patent biased one. And like I told you anyway, there is too much caselaw pointing the proper direction for the board to hold otherwise without having committed an error themselves.
Keep in mind that the lawl on New Matter would have to change if the lawl on negative limitations were resolved in your favor here. The current lawl on New Matter allows for amending a negative limitation into a claim in an app when there is an absence of teaching in the spec/original claims (usually anyway). This being a given, it would be improper in the extreme to not have that same principle work backwards when applying references. If you and I were the decision makers I would happily exchange you your position on this issue for a reversing of the holding of the ability to amend in negative limitations when there is merely an absence of teaching in the spec/original claims. However, the issue was decided long ago and it was resolved against both of our wishes.
I'll leave you with a suggestion:
DO. NOT. USE. NEGATIVE. LIMITATIONS.
"Yep, that's the crux of the issue. *Why* do you read the absence of X as NOT X?"
ReplyDeleteFirst, because the limitation in the claim covers situations with an absence of X. That is, if you performed the method or made the product in the reference that shows an absence of X exactly how it is related in the reference then your process/product will infringe the new claim. What infringes if later anticipates if earlier my dearheart.
I'll ask you this to demonstrate. If I tell you (and publish on my blog) I just drove to the store, bought bread, and drove home do you:
A: imply I drove to the store and bought bread and drove home
B: imply that I went to the store, blasted off to the moon, collected moon rocks, came back to earth, got bread and came home
If B, why do you imply that? (assuming there is no time-frame reference for which you to judge the liklihood of A or B happening). If a patent application comes in to the office one year after tomorrow and claims:
A method comprising:
driving to the store;
not going to the moon;
not collecting moon rocks;
not coming back from the moon;
buying bread; and
driving home.
Should it sail through 102 as not being anticipated by my disclosure? If someone drives to the store, buys bread, and drives home do they infringe?
Bottom line is that, at least in most arts, there is an implication that a disclosed method/product implicitly discloses at least the specific method/product. Which in the instant case the board appears to have found, factually, was a method that didn't involve any interuptions taking place.
Apologies to Anonymous ... I deleted your first "drove to the store" comment (the one from Friday about 6 PM) by mistake. I put it back, but it's out of sequence now. I was trying to delete my own comment [so I could edit it a bit], but picked yours by accident.
ReplyDelete>A method comprising:
ReplyDelete>driving to the store;
>not going to the moon;
>...
I don't think I've ever written a claim like this. But I'll acknowledge that a method step "NOT Xing" is problematic, for all the reasons you mention.
But ... While McGrath was about a method claim, the "negative limitation" wasn't a step. That is, McGrath did not claim "executing an instruction without interruption". McGrath claimed [paraphrase] "executing an atomic instruction".
"Atomic" is a characteristic of an instruction. It's a negative limitation in the same way that an inflexible elongated member and an anaerobic reaction are negative. Or, in the technologies I'm more familiar with, a non-blocking I/O operation, non-pageable memory, or non-maskable interrupt. Do you see any problem with those sorts of limitations?
There must be thousands of references that mention I/O operations. The vast majority of them are probably silent as to blocking/not, because that's not important to the particular reference. In many of those silent references, I would not draw an inference of "non-blocking" simply because blocking was not mentioned.
Agree? Disagree?
Are there specific cases that state a reference must specifically disclose a negative limitation?
ReplyDelete>Are there specific cases that state a >reference must specifically disclose a
ReplyDelete>negative limitation?
I've done some preliminary research, and didn't find anything quite on point. I'm doing further research, and hope to have another post on this issue.
But two points for now ...
One, the Board in McGrath did not cite a case. Perhaps that's an indication that there isn't a well known one.
Two, I think that it's confusing to characterize the limitation at issue in Ex parte McGrath as a "negative limitation".
The limitation in McGrath was "executing an atomic instruction". (Paraphrased, but accurate and gets my point across). Atomic instruction doesn't mean "an instruction that wasn't interrupted". Atomic instruction means "an instruction that cannot be interrupted."
That is, "atomic" is a characteristic of the element. If it's a "negative limitation", so are nonlinear, inflexible, and many other adjectives that describe characteristics of things.
I'm curious if others would consider "inflexible member" to be a negative limitation.
I would not consider "inflexible member" to be a negative limitation. However, please review Ex Parte Roger Duffy in which, according to my understanding, the term "non-epoxy" was deemed a negative limitation.
ReplyDelete>"non-epoxy" was deemed a negative limitation.
ReplyDeleteOK. But I see a big difference between inflexible and non-epoxy. INflexible means opposite-of-flexible. While NON-epoxy means anything-not-epoxy.
Now that I think about it, I think "negative limitation" usually does refer to the "anything-not" type of usage.
These sorts of negative limitations often run afoul of written description. Because anything-not-epoxy is broad, you need to show that you possessed everything-not-epoxy.
Karen, you kinda crazy.
ReplyDeleteYou could also say that inflexible means "anything not flexible". Or "any member which is not a flexible member" in the instant situation.
The fact of the matter is that negative limitations are negative limitations. Although some, like "inflexible" are relatively benign and will often not raise any ruckus, they are still negative limitations. You are limiting the claim by what it isn't (flexible) rather than by what it is (rigid?). I know in that in the specific instance at hand it seems like a benign issue of semantics, and that is precisely the case. Even so, some situations cause issues.
In any event, I already had my final word on the issue so I'm just giving you this because you specifically asked.
There is a USSC? case that states a great definition of what negative limitations are, it goes something like: any limitation that limits the claim by reciting what it is not rather than what it is.