Ex parte Kaye
(Appeal 2000-006050, Appl. No. 10/459,764, Tech. Center 3700)
Decided January 13, 2010
Rehearing May 19, 2010
The claim on appeal was directed to an "interactive storybook." The claimed book included a binder interconnecting the front and back covers, and pages of an exposed story. The claims also required the binder to secure the pages to the front and back covers.
These claim limitations were added during prosecution, along with a corresponding amendment to the specification. The Examiner rejected the amended claim under § 112 1st, written description. The Examiner found that the originally filed spec/drawings showed an element connecting the front and back cover, but this same element did not secure the pages to the cover. Instead, the pages were stacked upon the element.
Having no literal support in the spec for the claim limitation, the Applicant tried to argue implicit support:
Here the original specifications, in addition to the drawings, disclosed by text enough to convey to a person skilled in the art that the pages were secure ... Read together, a person skilled in the art would surely understand that "pages'' in a "storybook" disposed between the book covers were secured to the covers. Likewise, a person skilled in the art would understand that "a story part in a traditional location" of a "storybook" would mean the pages secured to the book's covers. In short, a person skilled in the art - or any person with a passing familiarity with books, for that matter - would assume that the pages of a book are attached the covers.
...
Perhaps the Examiner is suggesting that the additions are new matter because the originally-filed specifications did not show "any way" that the pages were secured. But, in fact, as discussed in detail in Section 2.2.2, below, the original drawings and specification did adequately show how such pages were secured. Alternately, the Examiner may be indicating that the fact that the pages are secured was not disclosed in the originally-filed specification and drawings. However, it would be obvious to one skilled in the art from reading the originally-filed specifications and drawings that the pages should and would be secured to the front and back cover.
The Board pounced upon the "it would be obvious" language, and noted that this is not the proper standard:
"It is not enough to satisfy the written description requirement that the claimed subject matter would have been obvious to a person of ordinary skill in view of the written description. See ICU Medical, Inc. 558 F.3d at 1377; see also Regents of the Univ. of Cal., 119 F.3d at 1566–67."
The Applicant asked for a rehearing, arguing that the Board had misapprehended the "it would be obvious" argument:
Appellant was not contending that the securing of the pages by a binder would be obvious to one skilled in the art in light of the originally-filed specifications, or that the specifications rendered the page binding "obvious" under a 35 USC 103 analysis. Rather, it would be "obvious" to a person skilled in the art that the securing of the pages by a binder was in fact disclosed by the originally-filed specification.In the Decision on Rehearing, the Board upheld the rejection, this time focusing on the "would and should" language of the original argument:
Looking to the purportedly misapprehended statement, Appellant is arguing that a person of ordinary skill in the art would understand that “the pages should and would be secured to the front and back cover,” as contrasted to arguing that a person of ordinary skill in the art would understand from Appellant’s Specification that the pages are secured to the front and back cover. Appellant’s argument fairly implies that the written description requirement does not require actual disclosure, but rather may be met by the perception of a person of ordinary skill in the art of what the disclosure “should and would” include.My two cents: Maybe the Applicant was reading too much into the spec and would have lost anyway. But it seems that the Applicant gave the Board something to find fault with by couching the argument in terms of obviousness and using the modal verb "would."
Related posts: The reasoning used by the Board to uphold a written description rejection reminds me of that used in Ex parte Abdel-Hafez, where the Applicant said the claim element was "implied" by the disclosure.
"The BPAI upheld a written description rejection based on the Applicant's arguments that the claimed element would be obvious to a POSITA reading the disclosure and that a POSITA would understand that the pages should and would be secured to the front and back cover as claimed. In arguing written description, stay away from what a POSITA "should understand" and what is "obvious," and focus on what the disclosure actually teaches to a POSITA. "
ReplyDeleteI have had to remind more than one practicioner whom is arguing against a 112 1st WD that we are not looking at the spec to see what would have been obvious to one of ordinary skill, but rather what was actually taught to one of ordinary skill. It's sad really. Usually I break the news to them over the phone.
>not looking ... what would have been obvious
ReplyDelete>but rather what was actually taught.
A practitioner should definitely know, and apply, the right standard. So if the spec really doesn't teach the claimed limitation, don't bother making an "it would be obvious" argument, since that's the wrong standard.
But it's also true that the teachings can be implicit as well as explicit. In the file histories I read, I sometimes see good facts (implicit support) but bad phrasing of the argument ("obvious", "would").
I also see a lot of conclusory statements about implicit support. IMHO, if the support isn't explicit, you need to explain the reasoning by which a POSITA would infer that the claims were described. IOW, pointing to the not-explicit parts of the spec isn't enough.
>don't bother making an "it would be obvious"
ReplyDelete>argument, since that's the wrong standard.
This is completely off topic, but a very common mistake that I see in reading file histories is applicants using the wrong test for [non] analogous art. Applicants simply argue "not the same field". But that addresses only half of the test.