Meaning of "providing" in a software claim

Takeaway: Before you use the word "providing" in your claim, think very carefully about how it might be interpreted, and about which entity will do the "providing" under those interpretations. Otherwise you risk the possibility of divided infringement, where the entity that provides is not the same as the entity that performs the other steps. And divided infringement is almost always fatal.

Details: Consider the limitation "providing to a user a thumbnail visual image of a web page." Does "providing" mean "supplying," "transmitting," or "displaying"?

In many situations, the answer to this question is dispositive to the question of infringement. A typical software architecture uses one or more servers to generate, store, and transmit the image, with a browser client displaying the image. Yet direct infringement requires a single entity perform all the claimed steps. If the other claimed steps read on actions performed by the server, but the "providing" step is construed as "displaying," then the claim may have no direct infringer.

This very issue came up in Garafa.com, Inc. v. IAC Search & Media, Inc. (D. Del., Civ. No. 07-787-SLR). The technology was briefly described by the court in an order denying a preliminary injunction, 2008 WL 5155622 (D.Del.):

[I]nstead of a standard search engine display consisting of a list of hyperlinks (known as the URL or "uniform resource locator" of a web page) and a brief description of the web page, the '904 patent describes a way of providing thumbnail visual images of the hyperlinked web pages along with the hyperlink.

The claim limitation at issue was "concurrently providing a thumbnail visual image of the home page of at least one web site which is represented by said at least one hyperlink via the Internet by employing an image server that stores and provides said thumbnail visual image."
The court's original claim construction order, 2009 WL 2949526 (D.Del.), construed "providing" to mean "supplying." One of the defendants advocated for "displaying," but the court saw two problems with that. First, claim differentiation: a dependent claim added "the thumbnail visual image is displayed." Second, the court looked to the image server phrase in the claim ("that stores and provides said thumbnail visual image”) and noted that "an image server cannot 'display' images itself, but it can 'supply' them." Finally, the references in the specification to providing "over the internet" indicated movement of content from a server to the client.

On reconsideration, the court changed its position, and ordered that “providing [to a user] a thumbnail visual image” means “displaying to a user a thumbnail visual image.”

Upon further study, it is the court's conclusion that the invention is directed to the (at least partially concurrent) display of images to the user, as compared to the (at least partially concurrent) rendering of images for a user's (perhaps future) viewing. The invention is consistently described as a methodology for “displaying” information for a user's benefit. (See, e.g., col. 1, I. 14; col. 1, II. 39-41) The claims are drawn to the user's vantage point (“presenting internet information to a user”), as compared to describing the underlying system by which images are (concurrently) rendered by the web server and image server (via the web browser) for viewing. The term “providing [to a user] a thumbnail visual image” is construed, therefore, as “displaying to a user a thumbnail visual image.”
(2009 WL 3074712 (D.Del.)

This construction was dispositive of the question of infringement. The accused website services transmitted search results with hyperlinks but not thumbnails. The thumbnails were transmitted only when the user clicked on a hyperlink. With “providing” construed as “displaying,” the court then found no infringement:

[I]infringement by these products necessarily requires multiple parties' participation. That is, defendants perform at least one step of the claimed methods, while the users must facilitate at least the “providing” step by their own actions.

My two cents: In finding no infringement, the court did say that the claim required user action (clicking on a hyperlink). However, it seems to me the claim would have no direct infringer even if the claim didn't require user action, because as construed, the claim still required a step to be performed by a browser client, which is a separate entity than the server performing the rest of the steps.

In interpreting "provide" as "display," the court focused on parts of the spec that described displaying thumbnails to the user. Who knows whether the drafters and/or prosecutors of the patent considered how this interpretation of "provide" would result in divided infringement.

Perhaps the drafters/prosecutors used "providing" because it's broad. Why nail yourself down to server side (transmitting) or client side (displaying)? Let's pick a word that covers both!

I view this case as showing the danger of overreach: having the court pick a meaning that you don't want. I'd rather pick a word that specifically covers the way the technology works without having to rely on a stretch.

Now, picking that right word isn't easy, so you should think carefully about it. "Transmitting" has its own problems – does it require direct transmission, or does it cover indirect transmission too? Careful use in the spec can help you out here. Instead of relying on the spec to broaden your chosen term, consider writing the spec so that it further clarifies the narrower meaning that you want.

Arbitrarily claimed structures are vulnerable to Examiner's arbitrary interpretation of reference

Takeaway: Last week, I posted here about cases in which the BPAI reversed because the Examiner had interpreted a reference's structure in an arbitrary manner. Today I discuss the opposite: cases in which the Board found that an element was arbitrarily described in the claim, so that the reference did teach the element.

Details: Ex parte Janda claimed "a system for managing rental equipment" which included first and second secure areas, the second secure area being accessible from the first secure area. The reference disclosed a storage room with a locking mechanism. The Board found that:

One of ordinary skill in the art, seeing the layouts of the storage room 110 shown in Figs. 1A, 1B and 2 of Brown, would understand that the room could be divided into separate areas of arbitrary size and shape. That is, one of ordinary skill in the art would understand that different portions of the floor space of the storage room 110 might be assigned arbitrarily to a “first area” or to “second areas” of the room. The layouts shown in Figs. 1A, 1B and 2 of Brown indicate that any such area within Brown’s storage room 110 would be accessible from any separate area within the room.

It appears that the Board found this arbitrary assignment of areas in the reference to be acceptable because of the manner in which the areas were described in the claims:

The Appellant uses the terms “first secure area” and “plurality of second secure areas accessible from the first secure area” broadly enough to reasonably include areas within the same secure storage room so long as each second secure area is accessible from the first secure area.

Though the Board referred to the claim terms as "broad," it seems that "arbitrary" would also fit.

In Ex parte Stiles, the Board found that the Examiner's interpretation of the reference structure was "no more arbitrary than the [Applicant's]," at least when looking at the Applicant's figures. The claims were directed to a razor including a "handle portion having lower, middle, and longitudinal portions." The claim defined each portion as extending along a corresponding axis, and further defined angles of intersection for pairs of axes. The Appeal Brief referred to the following figure in summarizing the claim:

The rejection included this figure from the reference, with annotations added by the Examiner:

The Applicant distinguished the reference by arguing that the handle in the reference was a continuous curve without identifiable axes:

The continuous nature of the curve means that any arbitrary designation of a particular point on the curve as the lower, middle, or upper portions of the curve does not result in that portion of the curve extending along an identifiable first, second, or third axis as required by [the claims].

The Board didn't see the distinction:

[T]he similarity between Hollinger’s handle and that of Appellant is striking, and the demarcated lower, middle, and upper portions of Hollinger’s handle extend along the three demarcated axes in both Appendices A and B in much the same manner as Appellant’s lower, middle, and upper portions. As such, the Examiner’s parsing of Hollinger’s handle into three portions and definition of three longitudinal axes along which those portions extend are no more arbitrary than those described by Appellant in Figure 6A.

In another case, Ex parte Gogarnoiu, the Board did characterize various positional relationships in a claim as "arbitrary," but the real problem was intended use. The claims were directed to a dental implant, with various limitations defining the orientation of implant portions, e.g., "a first portion forming a mesiodistal face having a first angle extending obliquely with respect to the longitudinal axis ... " and "a second portion forming a facial face having a second angle extending obliquely ... "

The Applicant argued that the reference did not disclose the implant being oriented in the mouth as claimed, but the Board found that "when the device is outside a patient, the designation of faces is arbitrary." The Board further explained:

We appreciate Appellant’s argument that “the use of terms such as ‘mesiodistal’ or ‘facial’ is not merely terminology . . . but instructs one having skills in the field of dentistry which portion or face of a tooth or implant is being described with respect to the patient’s mouth” (App. Br. 5-6). However, in the context of a device claim, where the device may be implanted in multiple different orientations in multiple different locations in the mouth, the orientation terms do not impose any structural requirements on the device itself. Instead, at best, these orientation terms indicate how the device will be implanted into the patient’s mouth. This intended use of the implant of claim 1 does not structurally distinguish the implant from the dental implant disclosed by Elian.

My two cents: At some level, you could say that almost any structure is arbitrary when you use words to define it. The trick seems to be deciding whether the Examiner's interpretation of a structure in the reference is more arbitrary than how you define the structure in your claim.

Examiner can't use arbitrary structures to interpret a reference

Takeaway: The Board has reversed prior art rejections in several cases where the Examiner arbitrarily interpreted the position of various structural elements – like a claim that read on the reference only if  the reference was turned on its side.

Details: I'll discuss five different cases. 

Ex parte Pham involved a claim directed to a lens for implanting into an eye. The limitation at issue was "at least first and second edges formed in a region" of "a posterior optic periphery." In response to an anticipation rejection, the Applicant argued that the reference taught edges located on an anterior, not posterior, optic periphery. The Examiner argued that his reading of the reference was nonetheless acceptable because "labeling surfaces as anterior and posterior has no effect on the sturucture and the terms are merely dependent on the perspective of an individual."

The Board found that anterior and posterior were not interchangeable in this particular case, referring to the Applicant's specification:

While [the Examiner's] argument is sometimes appropriate, in the instant case the anterior and posterior faces serve different purposes which would not have been considered by the ordinary skilled worker to be interchangeable, since the anterior face is directed towards the cornea and the posterior face towards the retina ([reference to Applicant's specification]). In order for the optical lens to function correctly, the optical axis and orientation must be maintained or light entering the lens will not be properly focused on the retina ([reference to Applicant's specification]). Therefore, in this particular situation, the labeling of anterior and posterior has structural effects on the optic lens, differentiating these sides structurally, rather than simply functionally.

The Board then reversed the rejection.

In Ex parte Richardson, the claims at issue were directed to a valve for use in a blood vessel. The limitation at issue was "a support frame that meets the valve frame at a first and second region that extends parallel with the reversiably sealed opening." In response to an anticipation rejection, the Applicant argued that the reference taught a support frame that met on an axis perpendicular to the valve frame. The Examiner argued that:

[A]xes are arbitrary points or lines established through structural elements. A plane can be established in an infinite number of directions through the opening and the frames, thus since the claims do not clearly set forth how the axes run through the structures to differentiate from the prior art the Examiner has established arbitrary axes through the opening and junction also.

The Board agreed with the Applicant, noting that "[t]he Examiner appears to have arbitrarily set the axis of the cited references with no consideration as to the relationship with other claimed features." The Board then reversed the rejection. 

Ex parte Williams involved a vehicle seat system. Claim 1 read as follows:

1. A seat system for a vehicle comprising:
a seat foam pad having a headrest portion and a backrest portion;
a structural support member formed of a foam material that is at least partially enclosed by the headrest portion and the backrest portion; ...

In response to an anticipation rejection, the Applicant argued that the reference taught a structural support member that was partially enclosed by the headrest portion, but not by the backrest portion. In the Answer, the Examiner explained that "an imaginary line" drawn through the center of foam block 33 divided the foam block into a headrest portion (above the line) and a backrest portion (below the line), and that under this reading, foam block 33 is enclosed by both.

The Board reversed the rejection, finding that the Examiner's imaginary line was an unreasonable interpretation. The reference also included a second foam block 34 which was adjacent to the backrest section 13; the first foam block 33 was adjacent to the headrest section 12. Therefore "[a]ny line of demarcation between the headrest and backrest sections, in a fair and reasonable reading of the Taylor patent, would be located at a position somewhere between foam blocks 33 and 34, and not at a position bisecting or otherwise intersecting foam block 33." (Emphasis in original.)

Ex parte 6,378,809 was a reissue application dealing with spacecraft. Claim 4 read as follows:

4. A spacecraft comprising
at least one thermal radiator panel that is movable, from a stowed position to a deployed position,
wherein in said deployed position said thermal radiator panel extends in an anti-Earth direction from an anti-Earth pointing end of the spacecraft,
wherein when in the deployed position a transverse edge of said panel is non-parallel to a transverse aft edge of said spacecraft.

In an anticipation rejection, the Examiner commented that the positional terms in the claim were "somewhat arbitrary" and argued that "by defining a transverse edge as extending across the [radiator] panel from the hinge," the reference then disclosed that edge as being non-parallel to a transverse edge of the spacecraft as claimed.
The Board reversed the rejection. After first disagreeing that the claim terms were "somewhat arbitrary," the Board went on to find that the Examiner's interpretation of the transverse edge of the radiator panel to be unreasonable and inconsistent with the spec.

We find that the Specification makes clear that the transverse edge of the satellite is located at the aft end of the satellite (FF 2), and that the longitudinal axis of the panel extends along the panel from the satellite (FF 3). Thus, the transverse edge of the panel would be orthogonal to the longitudinal axis of the panel within the plane of the panel [rather than extending across the panel from the hinge as alleged by the Examiner.]

The claims at issue in Ex parte Li were directed to the structural features of a cryogenic cooling apparatus. The Board commented that

It appears that the Examiner has, in effect, found that Averill discloses Appellants’ cooling apparatus lying on its side with a “top flange” on the right and two base members extending vertically on the left.

Looking to the claims and the specification, the Board found that: 

[O]ne of ordinary skill in the art reading the claims in light of the Specification would understand claim 1 to define an apparatus in which the cryostat and the support stage are aligned vertically relative to the support surface (e.g., the ground, see Spec. 8, l. 6-8, 12-13; Fig. 1).

Using this claim interpretation of vertical alignment relative to the ground, the Board reversed because the reference did not disclose a cryogenic cooling apparatus in that configuration.

Related Posts: I first came across the concept of arbitrary delineation of structures in Ex parte Dennison, and discussed that case here.

Dealing with foreign references

Takeaway: When using a foreign language reference in a rejection, the MPEP suggests that an Examiner should always provide a translation of the entire document rather than relying on the English language abstract, as long as both are prior art. However, BPAI case law interpreting this provision is inconclusive. One case suggests that if the rejection relies solely on the abstract, no translation is required. Other cases hold that a translation is always required.

Two related issues. One, will a machine translation do? One case found a machine translation insufficient because it contained many untranslated words. Two, what do you do if the Examiner doesn't provide a translation? File a petition.

Details: The MPEP section "Reliance upon Abstracts and Foreign Language Documents in Support of a Rejection" states:

Citation of and reliance upon an abstract without citation of and reliance upon the underlying scientific document is generally inappropriate where both the abstract and the underlying document are prior art. See Ex parte Jones, 62 USPQ2d 1206, 1208 (Bd. Pat. App. & Inter. 2001) (unpublished). ...
When both the abstract and the underlying document qualify as prior art, the underlying document should normally be used to support a rejection. In limited circumstances, it may be appropriate for the examiner to make a rejection in a non-final Office action based in whole or in part on the abstract only without relying on the full text document. In such circumstances, the full text document and a translation (if not in English) may be supplied in the next Office action.
(MPEP 706.02.)

Why does the MPEP mention "where both the abstract and the underlying document are prior art" ? Abstracts for scientific articles are sometimes published separately than the article itself. In such circumstances, the abstract may be prior art even if the article is not, or vice versa. This wrinkle doesn't come up with patent references, since the abstract is simply part of the patent application.

So the first thing for you to check is whether or not the abstract is separately published. If not, both are prior art, and the MPEP says the Examiner is required to supply an English language translation of a foreign reference – good news for Applicants. However, a recent BPAI decision interpreting this MPEP section read it differently.

In Ex parte Park, the Applicant argued that the Examiner's reliance on the English language abstract of a reference was improper, citing MPEP 706.02. In a footnote, the Board noted that "contrary to the premise of Appellants’ argument, the Examiner’s reliance on Inada is based exclusively on the English language abstract and not on the underlying non-English language document." By focusing on the language "seeks to rely on that document" in the MPEP provision, the Board seemed to imply that a translation would be required only if the Examiner relied on the underlying document rather than the abstract. Yet in Park both the abstract and the underlying reference were available as prior art – the reference was a Japanese patent publication, not a scientific article.

The dicta in Ex parte Park contradicts two older BPAI decisions from 2005 and 2006. In the first, Ex parte Barraclough, the Board remanded the case back to the Examiner rather than reaching a decision because the Examiner did not provide a translation. As authority for this requirement, the Board referred to MPEP 706.02 and to Ex parte Jones (the same case mentioned in the MPEP). The Board noted that the translation should be already in the record because it functions as a board of review, not of examination. (Note: the remand decision is not available on the BPAI website, but is available through Public PAIR in Appl. No. 10/499,644.)

In the second decision, Ex parte Anelli, the Board criticized the Examiner for waiting until the Examiner's Answer to provide the English language translation, noting that this delay "directly contravenes MPEP 706.02." However, the Board considered this harmless error because they reversed the obviousness rejection for not teaching all the elements.

The Board also touched on the translation issue in another recent decision. A footnote in Ex parte Iekuchi noted that both the Appeal Brief and the Examiner's Answer characterized the rejection as relying on the "abstract only" of a foreign language reference. The Board's failure to address the lack of a translation may be tacit agreement that no translation was required because only the abstract was relied upon – but it's also possible that the Board didn't bring up the issue because the Applicant didn't.

Ex parte Rudd, involved a machine translation of a foreign language reference, where the translation included a number of untranslated words (shown in the text as asterisks). The Board found that many of the specific paragraphs relied on by the Examiner contained untranslatable words as well as grammatical and idiomatic errors, and noted that "major parts of the machine translations are unintelligible to us." The Board remanded back to the Examiner with an order to provide a better translation.

Finally, the recent decision Ex parte Camps held that the requirement for an translation of a foreign language reference is reviewable by petition, not appeal. The Board cited the same Ex parte Jones decision mentioned in the MPEP:

In Jones, our colleagues held that: "... If a translation is not supplied by the examiner, the applicant may wish to consider seeking supervisory relief by way of a petition (37 CFR § 1.181) to have the examiner directed to obtain and supply a translation."

My two cents: One of the underlying rationales in Ex parte Jones was that an abstract for a scientific journals is likely to be in error because these abstracts are written by persons other than the author. This same concern isn't present when the reference in question is a patent application. Nonetheless, in dealing with any reference it's important to have the whole document, because the understanding you get from reading the whole is sometimes different than what you get reading the abstract alone. Therefore, the idea that a translation is not required if the Examiner relies only on the abstract seems fundamentally unfair.

The policy of making this a petitionable matter rather than an appealable one makes sense because requiring the Examiner to take a particular action is a procedural matter. Even so, it's bad news for Applicants because petition practice is slow, unpredictable, and expensive.

No broadening in a continuation reissue if unrelated to original broadening aspect

Reissue and reexam are relatively specialized areas of prosecution practice. I rely on the Reexamination Alert blog to keep up with developments in this area.

According to this post at the Reexam Alert blog, the BPAI decided an issue of first impression related to broadening reissue:

The Board framed the issue as “whether a continuing reissue application can broaden the patented claims beyond the two-year statutory period in a manner unrelated to the broadening aspect that was identified within the two-year period” (emphasis added), and concluded that such a broadening was precluded by § 251, ¶4.

Can a system claim be intrepreted as a method?

Takeaway: In Ex parte White, a dissenting judge found that a claim to "a system" was ambiguous as to whether an apparatus or a method was claimed. The dissent relied on a dictionary definition of "system" as "any formulated, regular, or special method or plan of procedure" as well as a finding that functional limitations within the body could be interpreted as method steps rather than use of the system.

Details:
Ex parte White
Appeal 2009-004737, Appl. No. 10/124,239, Tech. Center 2600
Decided November 18, 2009

The claim at issue was:
1. A system for associating distinctive rings with one or more callers, said system comprising:
a. a subscriber interface server storing, for each subscriber, information identifying one or more callers and pre-set ringer types associated with each of said callers, wherein said ringer types are pre-set via a menu-based interface available via said subscriber interface server; and
b. a telephony system communicating with said subscriber interface server and associating incoming callers with any pre-set ringer type and rendering any of said pre-set ringer type to said subscriber.

The dissent relied on several dictionary definitions of "system." Using one definition (“an assemblage or combination of things or parts forming a complex or unitary whole"), the term meant "apparatus." But using two other definitions, the term meant "method": "coordinated body of methods or a scheme or plan of procedure; . . . a system of government;” and “any formulated, regular, or special method or plan of procedure: a system of marking, numbering, or measuring; a winning system at bridge.”

The dissent noted that typically the meaning of "system" in the preamble is clear from the body of the claim. But the dissent found that in this claim, the limitations in the body could be interpreted as either devices or method steps:

For example, the claim limitations “a subscriber interface server storing [information]”; and “a class 5 switch working in conjunction with said subscriber interface server identifying an incoming call . . . , identifying a pre-set ringer type,” and “rendering said identified pre-set ringer type . . . .” can be reasonably interpreted in two alternative manners. On the one hand, the limitations can be interpreted as reciting two devices (a server and a switch) as well as processes for making, and the intended uses for, these devices. Alternatively though, the claim limitations can be reasonably interpreted as reciting a series of method steps (storing information, identifying a pre-set ringer type, and rendering said identified pre-set ringer type), with the method claim being further limited to particular devices (server and switch) that perform the recited method steps.

Citing Ex parte Lyell, 17 USPQ2d 1548, 1550 (BPAI 1990), the dissent said this choice between device-with-intended-use vs. method-performed-by-particular-device was important because it affected the determination of infringement.

For example, if claim 1 is interpreted as being directed to an apparatus, a given subscriber interface server in combination with a given class 5 switch could potentially infringe claim 1 even if the information identifying pre-set ringer types is pre-set within the server by some process other than “via a menu-based communication session between a subscriber’s telecommunication equipment and said subscriber interface server.” But, if claim 1 is alternatively interpreted as being directed to a method, the process by which ringer type information is pre-set in a given server would have bearing on whether claim 1 is infringed.

The dissent concluded by finding that the claim was indefinite under IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005).

My two cents: I get the dissent's point about indefiniteness – but I think interpreting the word "system" as "method" to reach that conclusion is really strained. I think the dissent should have relied only on Ex parte Lyell and IPXL Holdings to make the point.

I was disappointed to see the dissent characterize the functional limitations (e.g., "identifying an incoming call") as intended use. I haven't noticed this happening much at the Board, though I fight this battle with Examiners sometimes. 

The dissent also characterized these functional limitation as "processes for making" the claimed devices. That seems weird to me – I've just never thought of my functional limitations to an apparatus as "making" the apparatus. This way of thinking about functional limitations was also expressed in Amazon, where the court talked about infringement occurring "when one creates a system that allows the user [to perform claimed actions]."

BPAI finds that generic benefit is not proper motivation

Takeaway: In Ex parte Linzer, the Examiner offered "reduce[s] bandwidth, time, and memory" as a motivation to combine two references. The Board found the motivation deficient because "no evidence on record suggests that the proposed combination / modification would actually reduce the bandwidth, time, and/or memory." In some cases, a generic benefit (i.e., stronger, faster, cheaper) does provide good a reason to combine. But this case suggests that's not enough – the Examiner must explain how the combination actually produces that benefit.

Details: The technology in Ex parte Linzer was digital video discs. The feature at issue was reading two streams of button data from disc, then multiplexing the two button streams. The Examiner relied on one reference to teach reading button streams from disc, and another to teach multiplexing a button stream with an audio/video stream, to produce the combination of multiplexing multiple button streams. As a motivation to combine, the Examiner alleged that this combination "reduce[s] bandwidth, time, and memory."

In the Appeal Brief, the Applicant challenged this allegation as a conclusory statement without the analysis required by KSR. The Applicant then provided a technical explanation as to why the claimed multiplexing did not provide the benefits alleged by the Examiner.

In the Answer, the Examiner further elaborated on his reasoning, explaining that multiplexing saves time because all the data are sent at once rather than one at a time, eliminates the need for a huge buffer to store all the data before playback, and reduces bandwidth because the line is used for a short period of time before playback.

The Applicant filed a Reply Brief including specific rebuttals to the Examiner's newly explained reasoning.

The Board found the motivation to combine to be deficient because "no evidence on record suggests that the proposed combination/modification would actually reduce the bandwidth, time, and/or memory." The Board also found that "[t]he Examiner's articulated reasoning in the rejection does not possess a rational underpinning to support the legal conclusion of obviousness."

My two cents: I wish the Board had addressed the enhanced explanation of motivation in the Examiner's Answer, and the Applicant's rebuttal in the Reply Brief. Is this case really about the Examiner not providing detailed reasoning? Or is it also about which side made a more persuasive technical argument about motivation to combine?

The Board also found that the combination of references didn't teach one of the elements. Thus, the rejection could have been reversed on that ground alone. But the Board went farther and (as I read the opinion) reversed on motivation-to-combine grounds also. It's that part of the opinion that I found interesting.

POSTSCRIPT: Several folks have posted comments showing strong disagreement with my interpretation of the case. It seems to me the wording of the opinion leaves plenty of room for reasonable minds to disagree.

Using credentials in an expert declaration

Takeaway: An expert declaration under § 1.132 should describe the declarant's background. The BPAI expects specific facts about the background rather than generalizations. The BPAI also expects the declaration to explain how the declarant's background and credentials qualify him as an expert on the subject matter at issue.

Details: The basic requirement for an expert declaration to include credentials was explained by the BPAI in Ex parte Sharpe and Ex parte Greksch. The declaration in Ex parte Greksch provided "no credentials of Declarant as an expert in intellectual property or, in particular, the standard for obviousness under 35 U.S.C. § 103." The Board therefore refused to "credit Declarant as an expert on the standard of obviousness under 35 U.S.C. § 103." In Ex parte Sharpe, the Board reached the same result, finding that the statements provided in the declaration were not "probative" because "the credentials of the declarant have not been provided in the Declaration."

The requirement for details about credentials rather than generalization was explained in Ex parte Gillespie:

Gillespie testifies that he has 24 years experience in the field of nonwovens fabric manufacture and melt spinning of synthetic polymer fibers. Declaration, ¶ 2. However, Gillespie does not state any educational background. Nor does Gillespie explain why his  background qualifies him to express opinions on the subject matter of his declaration. When a witness fails to properly qualify credentials, the fact finder in an ex parte context may properly decline to credit opinion testimony. Cf. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 589-90 (1993) (fact finder must ensure that any and all scientific testimony and evidence is not only relevant, but reliable).

The requirement for an explanation of how the credentials qualify a declarant was discussed in Ex parte Kambe:

Dr. Singh has impressive academic and professional credentials. However, Appellants' statements that Dr. Singh is "an expert in the field of inorganic nanoparticles" (Br. 23) (bold omitted) and that he is "an expert in inorganic nanoparticle technology" (Br. 25) do not appear to be supported by Dr. Singh's resume where the only mention of nanoparticles is the listing of "nanoparticle synthesis and processing" under "Research Interests." If some of the papers, conferences, and consulting involve nanoparticle expertise or experience, this has not been pointed out by Appellants. ...  This paragraph does not say how Dr. Singh is familiar, by education or experience, with approaches to separating nanoparticles by filtration. 

Federal Circuit on "broadest reasonable" construction

Takeaway: In the recent decision In re Suitco Surface (2009-14, Fed. Cir. 2010), the Federal Circuit found the BPAI's claim construction of a floor "finishing layer" to be unreasonably broad. The BPAI relied on the transitional word "comprising" to find that "finishing layer" read on any layer above the floor that was suitable for placement on the top layer, regardless of whether it was the top or final layer. The court smacked down the BPAI with this:

The broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention.

Details: I'll focus only on the claim construction of "material for finishing." Full details of the case can be found here on the 37 Thoughts blog.

The claim at issue was:

4. On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:
at least one elongated sheet including a uniform flexible film ... and
a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor.

The BPAI interpreted "material for finishing" as "a material that is structurally suitable for placement on the top surface of a floor." The BPAI also relied on the transitional phrase "comprising" to allow "the finishing material to fall anywhere above the surface being finished regardless of whether it actually ‘finishes’ the surface."

The court disagreed and found that the "material for finishing" is the "layer on the top surface of a floor that is the final treatment or coating of a surface," explaining that:

A material cannot be finishing any surface unless it is the final layer on that surface. Otherwise, the material would not be “finishing” the surface in any meaningful sense of the word.

The court remanded to the BPAI for a new invalidity analysis with the proper claim construction.

My two cents: I see the holding of In re Suitco as: while "comprising" allows additional elements, it does not allow for the presence of additional that overrule an explicit limitation. In Suitco, additional layers on top of the finishing material were not allowed because such layers would overrule the "material for finishing" limitation.

The BPAI has twice used In re Suitco in precisely this manner to reject an Examiner's interpretation that included elements excluded by the claim. Ex parte Henninge involved a lithium battery, with the claim limitation at issue being "wherein the separator-electrode unit comprises an inorganic separator unit." The Examiner argued that because "comprising" was used as the transitional phrase, the separator-electrode unit could include organic ingredients. The BPAI rejected this interpretation because the claim contained an explicit requirement that the separator is inorganic.

Ex parte Wu was a chemical case, where the claim limitation at issue was “one or more carbon black fillers, wherein said fillers are the only fillers in the organosilane masterbatch.” The Examiner used a reference which taught silica (not carbon black) fillers, and argued that this met the claimed limitations because "the term 'comprising' permits inclusion of the additional ingredients not recited in the claims." The Board rejected this interpretation, finding that "['comprising'] does not permit the presence of those fillers, including silica fillers, which are specifically excluded by the explicit language of the claims."

A plea for argument rather than boilerplate

A few months ago, the Patentably Defined blog added a post titled "A Few Ways To Get On The Bad Side Of Your Examiner". From a list of eight, these two in particular resonate with me:

• Present only a general argument with only generic citations to several pieces of art, without an explanation as to how the art supports the argument.
• Submit a needlessly lengthy response inflated with numerous boilerplate paragraphs.

A more recent post on PTO Director Kappos blog provides a list of “Five Things Patent Examiners Wish You Would Do”. There's some overlap here, since number two on that list is: 

Lay Out Arguments From the Get-Go

Attorneys should be precise in their arguments, pointing out in a concise manner just how the invention is novel and how it is different from prior art. And they should do this at the outset, rather than waiting until after one or more office actions, or on appeal.

Both of these lists fit with my prosecution philosophy of actually putting an argument in the record. I'm not yet convinced that this works with the Examiner, as Patentably Defined and Kappos seem to suggest. But I am convinced this is the best way to go on appeal.

Federal Circuit considers "obvious to try"

Takeaway: In deciding obviousness, it matters a lot how you frame the number of possible options. Choosing between two options is probably obvious. Choosing between an infinite number is almost certainly not. In the recent decision Rolls-Royce v. United Technologies Corp. (2009-1307, Fed. Cir. 2010), the court chose to frame the number of choices as infinite rather than two, and upheld the district court's finding of non-obviousness.

Details: Rolls-Royce v. United Tech. Corp. was a review of an interference decision for patent applications involving turbine fan blades. After claim construction, the question of obviousness amounted to whether a foward sweep angle of the fan blade was obvious in view of a rearward sweep angle. UTC argued that a POISTA "would have found it obvious to try to reverse the sweep angle from rearward to forward sweep."

Instead of viewing obviousness as a matter of two choices (forward or rearward), the court instead saw a "broad selection of choices for further investigation", which "included any degree of sweep." The court noted that such a large number of choices goes against obvious-to-try, referring to the post-KSR obvious-to-try decision Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341 (Fed. Cir. 2008):

To determine that an invention would have been obvious to try on the basis of the record before the time of invention, this court has clarified, with respect to inventions requiring selection of a species from a disclosed genus, that the possible approaches and selection to solve the problem must be "known and finite." See Abbott, 544 F.3d at 1351.

It's not clear that the large number of options alone would have led the court to find non-obviousness, because the record did not show any "design need or market pressure or other motivation" to try forward sweep. The court thus found that "the invention would not have presented itself as an option at all, let alone an option that would have been obvious to try."

My two cents: The issue of the number of options as it relates to obviousness usually comes up in the chemical arts. This is the only Federal Circuit decision I know of, outside of the chemical arts, that discusses this issue in depth. The next time I get an obviousness rejection that seems to rely on obvious-to-try, I'll see if I can re-frame the number of choices as large rather than small. If so, I'll use Rolls-Royce v. United Tech. Corp. to make this part of my argument.