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: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.
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; ...
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.
These are common nonsense tactics used by examiners to reject claims. The sad part is that no matter how hard they get slapped by BPAI, they go right back to the same nonsense in the next application on their docket. The sadder part is that their primary/SPE signs off on such nonsense, even when carried on after a BPAI reversal. The saddest part is that this behavior is rewarded, either with narrowing amendments or RCE's, far, far, far, far more often than it is discouraged.
ReplyDelete"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."
ReplyDeleteI get the feeling that one may have been incorrectly decided although I decline to look over it with a fine tooth comb. If what they held were true then they could state specifically what the structural difference was and everyone could move on. Instead, they hee and haw about the device not functioning (but being structurally the same) if oriented in a certain way as opposed to another way. That is, specifically, not a structural difference.
On the other hand, the examiner made the mistake of not arguing persuasively. All he had to do was say: "There is no structural difference. State for me a structural difference and I will consider the reference again." Meh, it happens.
"Applicant argued that the reference taught a support frame that met on an axis perpendicular to the valve frame. The Examiner argued that:"
Again improperly decided and poorly "argued" :( Again I will forego looking over it with a fine tooth comb.
All he needed to do was state that his second region was on all of the axis, x, y and z.
So easy, yet they fail so hard.
Williams is probably a reasonable decision, yet if it goes to court, good luck with your "portions".
809' seems reasonable as well.
Ex parte Li appears to maybe be reasonable considering the art in which it takes place, but in my art we routinely deal with this issue and it is held in the opposite manner as the products with which we deal are routinely turned on their sides etc. The whole reading "in light of the specification" borders on reading limitations into the claim from the spec in this case I should note. If they want to claim in reference to the supporting structure then they are free to do so. Until then, ref is likely anticipatory and it is more than a bit worrisome that the board wouldn't simply have told them to amend the claim such that a limitation spelling out as much was clear from the claim rather than imported limitations from the spec.
What you don't seem to note in your post however is that these are mostly special circumstances and your headline is misleading. Structures are routinely arbitrarily designated. What you don't seem to have made a post about are all the thousands of cases that come back amended in response to such rejections that never go to appeal because the designations were entirely legitimate. I have at least two cases where they are on continual RCE cycle because of what some might term arbitrary designation. And they sure as f will not win on appeal because one of ordinary skill would interpret the reference complete with those arbitrary designations of "portions".
"Structures are routinely arbitrarily designated."
ReplyDeleteYes 6, they are. But we already knew that examiners will twist a reference any which way they can to read on their broadest unreasonable interpretation.
"What you don't seem to have made a post about are all the thousands of cases that come back amended in response to such rejections that never go to appeal because the designations were entirely legitimate."
LOL. Keep dreaming. They're amended because applicants don't have the patience to file an appeal and either enter the appeal-reopen-appeal-reopen merry go round, or wait 2 years for the BPAI to slap the examiner upside the head.
"I get the feeling that one may have been incorrectly decided although I decline to look over it with a fine tooth comb. If what they held were true then they could state specifically what the structural difference was and everyone could move on. Instead, they hee and haw about the device not functioning (but being structurally the same) if oriented in a certain way as opposed to another way. That is, specifically, not a structural difference."
An examiner can't arbitrarily relabel the elements of a prior art reference simply to read on a claim when that results in a nonsensical interpretation of the reference. You have to read and interpret references as one of ordinary skill in the art would read and interpret the references, not as an examiner who's only interest is in rejecting the claim and generating some more RCE's for the pipeline.
It's truly sad that the PTO does not teach examiners that.
"An examiner can't arbitrarily relabel the elements of a prior art reference simply to read on a claim when that results in a nonsensical interpretation of the reference."
ReplyDeleteI don't recall there being anything in the decision noting a nonsensical interpretation of the reference. What they said was:
"LOL. Keep dreaming. They're amended because applicants don't have the patience to file an appeal and either enter the appeal-reopen-appeal-reopen merry go round, or wait 2 years for the BPAI to slap the examiner upside the head."
I would believe you, and in many cases I'm sure you're entirely right, but in many others your unquestionably entirely wrong :( It's too bad you can't see that.
Fact is this, applicants routinely arbitrarily designate "portions", "regions", "axis", etc. and that is entirely what they are, arbitrary designations. They are routinely, and properly, invalidated by another arbitrary designation in a reference. And I should add that "reading the claim in light of the specification" should not be confused with reading limitations into the claim from the spec. That is, it should not be confused for an excuse to simply not add a limitation to the claim itself to make clear the scope of the claim. The later is a great way to have it not be subject to years of nonsensical litigation on the issue being decided in the end by whether or not appellee gets Newman and some asleep judges on the panel, or whether they get some alert judges other than Newman, i.e. what may as well be arbitrarily and/or capriciously.
"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,"
Where they specifically stated that the designations of anterior and posterior differentiate the lens in terms of structure. If such is the case, then why not simply point out what that structural difference is and settle the matter to the satisfaction of all? I'll tell you why not, because there probably was none.
But in any case I have no more time to discuss a case that I can't be bothered to look into further. Fact is, every other case that goes through there is improperly decided, even the ones that get reviewed by the big cheese Kappos himself. That's sad. What they need to work on is, rather than generating 50% nonsensical or blatatly wrong board decisions, leading to hit and miss examination guidelines issued to examiners, is generating guidelines from the board that are both consistent and correct and a substantial reduction in the number of cases wrongly decided.
I also note that the use of 112 2nd to make applicants claim that which they are arguing for but haven't claimed appears to now have come into fashion and has its own FP. I wonder who started that? I know I was doing it at least a year before it became popularized and came up with it myself.
Jes us did I just say "your" where it should be "you're"? I really ha te when others do that, I simply must watch myself.
ReplyDelete"I don't recall there being anything in the decision noting a nonsensical interpretation of the reference."
ReplyDeleteHere's the Board from Ex parte Li: "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."
I love when I get that 112, 2nd rejection because "it's unclear what direction is meant by 'vertical.'"
6, you probably have a form paragraph written for that rejection.