Obviousness reversed because Examiner merely asserted that combination provided a benefit, without explaining how (Ex parte UTC)

Takeaway: The BPAI reversed an obviousness rejection because the Examiner did not explain how a combination provided an alleged benefit.  The Examiner merely asserted that modifying the reference would produce a benefit. The Board held that the Examiner had failed to make a prima facie case.


Details:
Ex parte United Technologies Corporation
Appeal 2009006732, Appl. No. 10/899,886, Tech. Center 3700
Decided November 18, 2009


The claim at issue was to a process for machining blade slots in a turbine.  The limitation at issue was  forming a rectangular slot having multiple rectangular areas. Those areas had walls that formed a perpendicular angle with a surface.  For purposes of the obviousness discussion, the general idea is more important than the specific claim language, so here's an illustration of the claimed slot and walls:

The Examiner rejected under § 103, using a primary reference that taught multiple areas. However, the Examiner admittedly the walls in the reference did not include an angle perpendicular to the surface:

The Examiner then asserted that :

It would have been obvious to one of ordinary skill in the art at the time of invention to make the first and second surfaces of Yazdzik et al. perpendicular to the first and third [walls], and second and fourth walls because such a configuration would have been far easier to machine than the angled first and second surfaces of Yazdzik et al.

The Board held that such a mere assertion does not amount to a prima facie case for obviousness.

The Examiner, however, does not explain why making the noted surfaces perpendicular would be “far easier” or point to any factual support for that determination. The initial burden is on the Examiner to provide a factual basis to support an obviousness conclusion. In re Warner, 379 F.2d at 1017. No such basis has been provided. Moreover, even if making the surfaces perpendicular is in fact easier, the Examiner has not articulated why that knowledge would have been known to one with ordinary skill in the art.

My two cents: When an Examiner asserts that the combination provides a particular benefit, think hard about whether that makes sense.  And if not, argue on the basis that the Examiner has not provided an explanation of how the alleged benefit flows from the combination. You might also question whether the feature that the Examiner asserts to be a benefit really is beneficial. Finally, even assuming the combination does result in the alleged behavior and the alleged behavior really is a benefit, consider whether a POSITA would realize it was a benefit. 

As a side note, the Applicant didn't rely solely on the motivation-to-combine argument. The Applicant also argued that the reference did not teach, and won on this point. And this was a relatively rare instance where the argument really was about what the reference taught.  (The vast majority of arguments are really about how broadly to read the claims.)

The claimed process for forming a slot included two steps, using two different grinding wheels. The Examiner alleged that the slot shown in the reference (the second graphic above) was formed by two different wheels. The Applicant successfully argued, by pointing to specific portions of the reference, that the reference did not teach that the slot was formed using the second wheel. The reference taught instead that the second wheel was used for finishing the slot already formed.

BPAI finds not obvious to select one direction from infinite number of perpendicular directions (Ex Parte Sato)

Takeaway: In Ex Parte Sato, the BPAI reversed an obviousness rejection to a claim to a transmission belt. after finding an infinite number of choices existed for the limitation at issue. The claim required fibers oriented along the width of a transmission belt. The Board found the reference did not disclose this orientation, but merely fibers oriented in a direction perpendicular to longitudinal. The Board noted there are an infinite number of directions perpendicular to longitudinal, and the Examiner did not explain why a person of ordinary skill in the art would have selected the width direction from all these possibilities.

Details:
Ex Parte Sato
Appeal 2009005955, Appl. No. 10/523,708, Tech. Center 3600
Decided August 16, 2020

Here is the dependent claim at issue, with the language at issue emphasized.

2. A transmission belt according to claim 1, wherein said chopped aramid fibers and said chopped polyester fibers are oriented in a width direction of said belt body.

Though both the parent claim and this dependent claim were rejected under § 103, the Examiner relied solely on the primary reference, Ito, as teaching the emphasized feature. The Examiner alleged that the claimed width-oriented fibers were disclosed by Ito's teaching of fibers "aligned in a direction orthogonal to a longitudinal line L of the belt." The Examiner explained that width is a direction orthogonal to the longitudinal line.

Ito's belt, with line L, is shown below:

In the Appeal Brief, the Applicant argued:

However, paragraph [0053] of Ito '226 does not state that the fibers should be aligned in the width direction of the belt, but rather that they are aligned "... to be orthogonal to a longitudinally extending line L." "Orthogonal" means perpendicular. Ito '226 is saying that the fibers could be aligned in any direction perpendicular to the line L (depicted in Fig. 1 of the-reference). Thus, the fibers could be aligned, for instance, vertically in the sense of the cross sectional drawing shown in Fig. 1 of the reference. This would not be in the direction of the width of the belt, as called for in claim 2. Indeed, the locus of all lines perpendicular to a line (L) would be a plane perpendicular to line L. There would thus be an infinite number of directions in which the fibers could be oriented, and still be orthogonal to line L.
(Emphasis added.)

The Board agreed with the Appellant:

[T]here are an infinite number of directions that are orthogonal to the longitudinal line, including vertical. The Examiner does not adequately explain why one of ordinary skill would have found it obvious to select the width direction from all the possible orthogonal orientations. We cannot sustain the rejection.

My two cents:  I think the infinite-number-of-choices is a great rebuttal to an obviousness argument, and I'm glad to see the Board bought it — but was misapplied to these facts. A belt has three axes – longitudinal, transverse and vertical – each of which is perpendicular to the other two. The reference disclosed fibers oriented in perpendicular-to-longitudinal, which covers transverse (i.e., width) or vertical. So I see two choices, not an infinite number. It's true that there are an infinite number of lines in a particular plane. But the claim was for fibers are oriented in a width direction, so essentially claimed one plane (transverse) and wasn't limited to fibers oriented along one particular line.

Failure to overcome rejection in original prosecution estops argument in reexamination (Ex parte Smith)

In a decision which may greatly impact patentees who find themselves in reexamination, the BPAI held in Ex parte Smith that an Applicant in reexam was estopped from arguing a priority claim based on failure to overcome a written description rejection in the earlier prosecution of the issued patent. Specifically, during the original prosecution the Applicant chose to make a claim amendment to distinguish over a reference rather than to appeal the Examiner's finding that the claim didn't deserve priority to the parent. During reexamination, the Applicant did appeal on this very issue, and the BPAI held that "Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings thereby impliedly conceding their correctness."

You can find a full discussion of the decision here on the Patents Post Grant blog. Thanks to Scott McKeown of the Patents Post Grant blog for bringing this decision to my attention.

BPAI uses superfluity doctrine to interpret a claim limitation (Ex parte Walpole)

Takeaway: In Ex parte Walpole, the BPAI applied the superfluity doctrine, i.e., a claim construction should not render a phrase superfluous. The independent claim recited “a magnet” and “an opposing magnet.” The Applicant argued that “opposing” meant the two magnets repelled each other. The Board noted that a dependent claim recited “wherein poles of the opposing magnet are generally aligned with poles of the magnet such that the magnet and the opposing magnet repel one another.” The Board said that this dependent claim would be superfluous under the Applicant's interpretation, and therefore adopted the Examiner's interpretation: “spatially opposed.”

Details:
Ex parte Walpole
Appeal 2009001235, Appl. No. 11/057,770, Tech. Center 3700
Decided Feb. 19, 2010

The claims were directed to a compressor valve which included two magnets: “a magnet coupled to the valve member” and an “opposing magnet.” The Examiner found this feature to be taught by one magnet placed above another, i.e., in opposite locations.

The Applicant argued that “opposing magnet” meant “having a magnetic pole which repels the other magnet.” In support of this argument, the Applicant pointed to the spec:

[T]he specification favors construing this term as referring to repelling magnets. The specification explains that a “magnet 40 is mounted to the button 38 in such a manner that the orientation of magnets 34 and 40 is such that like poles face each other creating a repelling force.” Application, paragraph 10. That is, the specification teaches repelling magnets. Although Appellant does not suggest that the Board read the specification into claim 18, Appellant stresses that one of ordinary skill in the art would construe the phrase “opposing magnets” to refer to repelling magnets if this phrase is read in light of the specification.

The Applicant also tried arguing what term meant to a person of ordinary skill in the art:

One of ordinary skill in the art of magnetism would readily appreciate that magnets either repel or attract one another depending on the orientation of their poles. Thus, in context of magnetism, the term “opposing” as recited in the claims would be understood to mean “repelling” by those of ordinary skill in the art.

The Applicant  acknowledged that the dependent claim explicitly recited that the opposing magnet repelled the first magnet, but argued that claim differentiation did not apply:

The Examiner's claim-differentiation argument is inapt because claim 27 does not have to further limit the term “opposing” for this claim to be different in scope from claim 1: claim 27 adds other limitations, such as “a guard,” and “a shoe.”

The Board said claim differentiation did apply, and that the doctrine dictated that “opposing” could not refer to the magnetic property, since this would render superfluous the dependent claim language “wherein poles ... are generally aligned ... such that the magnet and the opposing magnet repel one another.” The Board then held that the Examiner's interpretation of “opposing” as “spatially opposing” was reasonable.

My two cents: The Board got this one right. In particular, I agree that the specification did not support the Applicant's interpretation. While the spec clearly described two magnets that repel each other, it didn't use the adjective “opposing” to describe this feature.

Also, the Applicant should have argued the dependent claim which explicitly spelled out “the magnet and the opposing magnet repel one another.” The Applicant clearly thought the “repelling” feature distinguished over the references. Therefore, the Applicant should argued the claim that specifically included the feature: the dependent claim. That way, if the Examiner/Board agreed that this feature distinguished over the art, the dependent claim would be allowable. As it was, the Board didn't decide (or need to decide) whether or not the reference taught the “repelling” feature. 

Appellant loses argument that anticipatory reference is not enabling (Ex parte Given Image Ltd.)

Takeaway: In the reexamination appeal Ex parte Given Imaging Ltd., the Applicant argued that a reference with a short description and one figure wasn't enabling and thus wasn't anticipatory. Despite the presence of declaration evidence, the BPAI affirmed the anticipation rejection, finding that the reference was enabling for what the Applicant actually claimed. So if your claim is high-level, without a lot of detail, don't be surprised when the reference used against you is also high-level, or when your "reference isn't enabling" argument isn't found persuasive.

Details:
Ex parte Given Imaging Ltd.
Appeal 200900064, Reexam Control No. 90/006,898, Patent No. 5,604,531

This was an appeal during reexamination of a medical imaging patent. Claim 1 recited:

1. An in vivo video camera system comprising:
a swallowable capsule comprising:
a camera system;
an optical system for imaging an area of interest onto said camera system; and
a reception system which receives said transmitted video output.

Claim 11 recited a different preamble – "autonomous video endoscope" – but was otherwise the same with respect to the issues discussed here.

The Examiner issued two different anticipation rejections, using Yamazaki and Saito.  The Applicant submitted declaration evidence to show neither reference was enabling, and thus could not anticipate.

The Applicant used the declarations to argue that Yamazaki disclosed a lens and a light source inside a gastric capsule, but did not enable "a functioning optical system," for various technical reasons explained in the declaration.The Applicant characterized Yamazaki's sparse description and single figure as "nothing more than an abstract idea."

With respect to Saito, the Applicant used the declarations to argue that while the application purported to disclose an endoscope, the disclosed device would not function properly as an endoscope, for various technical reasons explained in the declaration.

The declaration further stated that because of those technical deficiencies, neither reference "could have provided desired medical images without extensive redesign." Therefore, the Applicant argued, the references did not anticipate. "[I]nvalidity based on anticipation requires that the assertedly anticipating disclosure enabled the subject matter of the reference and thus of the patented invention without undue experimentation." Elan Pharms. v. Mayo Found. For Med. Educ. Research, 346 F.3d 1051 (Fed. Cir. 2003). 

The Examiner's Answer reiterated that both Yamazaki and Saito disclosed each element of independent claims 1 and 11. With respect to the alleged lack of enablement, the Examiner maintained that the references did disclose a functioning optical system because they did produce images of some kind. While acknowledging that the "systems may not produce the desired medical images," the Examiner noted that arguments about "desired medical images" were outside the scope of the claims, which did not refer to image quality.

The Board affirmed both anticipation rejections, finding that both references disclosed each claim element. In doing so, the Board found that both references were enabling for what the Applicant actually claimed.

With respect to claim 1, the Board interpreted an “in vivo video camera system” as "a system capable of taking video pictures inside a body." The Applicant acknowledged in oral arguments that the systems disclosed in the references could produce some type of image. Therefore, the Board found that the references were enabling for claim 1. The Board said the Applicant's argument that the disclosed systems were not capable of producing images suitable for medical diagnosis was irrelevant, since the claim specified neither the type of image nor a particular image quality.

Where claim 1 recited "an in vivo video camera system," claim 11 recited instead an "autonomous video endoscope." The Applicant argued that the term "endoscope" implied and necessitated something capable of providing diagnostic images. The Board disagreed, finding that "Appellant’s Specification provides no such definition of an endoscope and uses the term to describe various types of devices." The Board interpreted "an autonomous video endoscope” to be "an independent capsule that captures in-body images." Using the same analysis applied to claim 1, the Board then found the disclosed systems were enabling for claim 11.

My two cents: The Applicant did one thing right here: submitted evidence to show the references weren't enabled. "Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes ... inoperability of the prior art ..." (MPEP 716.01(c).)

That couldn't make up for the fatal mistake committed by the Applicant here: arguing outside of the claims. Or, as the Board often puts it, "Applicant's arguments are not commensurate with the scope of the claims." Another way of looking at this decision is that it turned on claim construction: the Applicant interpreted "in vivo video camera system" and "endoscopic system" as producing images suitable for medical diagnosis; the Board said that interpretation was too narrow.

The Applicant also made an interesting argument about the presumption that a reference is operable – interesting, but unsuccessful. The Applicant acknowledged that issued patents are entitled to the presumption of operability, but argued that unexamined patent applications are not. The Board held that since the filing of a patent application is considered constructive reduction to practice, the presumption still applies. The concurrence in this opinion went much further, holding that any type of reference – including a newspaper article – should be presumed operable.

BPAI issues informative opinion about broadest reasonable interpretation

The BPAI recently marked the 2009 opinion Ex parte Givens as "informative." As I noted in an earlier post (here), the BPAI marks certain opinions as informative in order to "explain best practices ... [and] address recurring problems."

In Ex parte Givens, the BPAI enforced the "reasonable" part of "broadest reasonable interpretation," the claim construction standard used in prosecution. The technology in Givens was digital signal processing, and the claim term at issue was "sub-band spectral subtractive routine." You can find a quick summary of Ex parte Givens here at The 271 Patent Blog. But here's the part you want to use as reasoning in your next argument over broadest reasonable interpretation: "Any interpretation that fails to give weight to “sub-band,” “spectral,” “subtractive,” and “routine” deprives the words in this claim term of their normal meaning."

BPAI reverses 102(f) rejection based on publication with single author in application with multiple inventors (Ex parte Cherepinsky)

Takeaway: In re Cherepinsky involved a § 102(f) (did not invent) rejection. The Examiner's rationale for the rejection was that multiple inventors were listed, yet the subject matter of the application was based on a Ph.D. thesis with a single author. The Board reversed, finding that a scientific publication is not evidence of "invention," so that the published thesis did not provide adequate evidence that the listed inventors did not invent.


Details: 35 USC 102(f) states:

A person shall be entitled to a patent unless -

*****

(f) he did not himself invent the subject matter sought to be patented.

My two cents: The Board reached the right conclusion, but it's reasoning was weird.

Since the rejection was under § 102(f), the issue in this case was whether the named inventors were the true inventors, i.e. who invented. The Board relied solely on In re Katz to reverse the rejection, citing it for the proposition that a scientific publication is not evidence of " 'invention' as that term is used in the patent statutes." (In re Katz, 687 F.2d 450, 454 (C.C.P.A. 1982)).

Yet the rejection at issue in In re Katz was § 102(g) (first to invent), and the Federal Circuit's holding was "disclosure in a publication does not prove that any 'invention' within the meaning of § 102(g) has ever been [reduced to practice] by anyone." So the Board used a case about whether invention occurred to decide an issue of who invented.

The Examiner seemed to confuse authorship with inventorship, and simply did not present a prima facie case that Applicants "did not invent." The Applicant said as much in the Appeal Brief:

While the disclosure may be substantially based on [Cherepinsky's Ph.D.] thesis, the claims determinine inventorship. The inventors of the claimed subject matter are those named herein.

Overcome obviousness by explaining technical difficulties rather than just restating the functional objectives of the combination (Ex parte Port-A-Cool)

Takeaway: The reexam decision Ex parte Port-A-Cool, LLC shows that to rebut a prima facie case of obviousness, you need to do more than merely assert that the combination of features represents more than the exercise of a POSITA's skill. You need to actually explain why and how this is so by providing details of the technical difficulties and of the skills required for attaining such objectives.

Details:
Ex parte Port-A-Cool, LLC (decision, rehearing)
Appeal 2009-001702, Reexam 90/006,567, Tech. Center 3900
Decided October 8, 2009

The claims in this patent under re-exam were directed to a housing for an evaporative cooler. The rejections on appeal included an obviousness rejection using only a single reference (Calvin). Here is a portion of the relevant claim, with the limitation at issue being emphasized:

1. A cooler housing supported on a base, having an exterior, an interior, and front and rear openings, where the base is integrally formed with the housing ...

The Examiner acknowledged that the Calvin reference did not teach a "base ... integrally formed with the housing." The Examiner used the "obvious design choice" to close this gap, citing to In re Larson for the proposition that "merely making integral parts that are separate involves only routine engineering design."

The Applicant argued that In re Larson does not stand for a per se rule. The Examiner acknowledged this, and restated the rejection as an obvious design choice "absent any teaching of criticality or unexpected results by the Applicants."

In the Reply Brief, the Applicant argued that the declaration evidence from the inventors (submitted before appeal) rebutted a prima facie case of obviousness:

The Declarations establish the problems encountered in the art, the prior art solution to the problems and the time duration in which the invention was made in light of one skilled in the art, including the educational, technical and industrial experience of the declarant. Such factors are indicative that the claimed invention is not obvious to those of skill in the art.

On appeal, the Board applied one of the rationales from KSR to affirm the obviousness rejection. Even considering the declaration evidence as to why the modification would not be obvious, the Board found:

There is no persuasive evidence that making the support frame integral with the housing would have been beyond the skill of one of ordinary skill in the art. [KSR v. Teleflex, 550 US 398, 417.] In this regard, the claimed invention "merely applies the well known technique of making various structural features integral to yield predictable results." Id.
(Emphasis added.)

After the appeal decision, the Applicant asked for a rehearing. In the Request for Rehearing, the Applicant argued that the declaration "presented details of the development of the invention" which "required extensive efforts by one of ordinary skill the art, and was not a 'predictable variation'." The Applicant argued that the Board's statements referring to "no persuasive evidence" and "merely applies the well known technique" were contrary to the declaration evidence.

In its Decision on Request for Rehearing, the Board explained that the declarations were unpersuasive because they did not present details to explain why integrally forming the base with the housing would be beyond the skill of a POSITA. The Applicant's rebuttal to the prima facie case was an assertion of technical challenges beyond the skill of a POSITA, but the evidence did not support that assertion.

... Contrary to the Appellant's assertion, in our view, the Declaration does not present "details" that persuade us that integrally forming the base with the housing would have entailed skills beyond those of one of ordinary skill. The Declaration states that integrally forming the base with the housing was "troublesome since it required the combination of two separate functional components into one while incorporating all of the stability characteristics of the caddy base and the operational features of the housing and which further addressed the bottom surface weakness of the rotomolded caddy base." (Decl. ¶ 11). However, such a general statement is not much more than simple articulation of the functional objectives for developing the claimed invention, and does not provide details as to the technical difficulties and skills required for attaining such objectives.
     The Declaration also specifies that a void that is above the caster mounting surface caused the casters to collapse (Decl. ¶ 11), but it does not provide persuasive evidence or articulate technical reasons as to why redesigning of that area was technically difficult or would have been beyond the skills of a person skilled in the art. In this regard, while the declarant, Mr. Calvert, may be skilled in the relevant field of coolers and in manufacturing of coolers, the Appelllant has not persuasively shown that the level of ordinary skill in the art is such that arriving at the claimed invention, which includes an integrally formed support base and housing, would have involved skills beyond those of one of ordinary skill.
     While the Declaration further states that "molds had to be continually re-designed in order to address the issue of stability[,]" (Decl. ¶ 11), with the exception of the above noted "void" issue, no further details are provided with respect what other technical issues or unforeseeable problems were addressed during by each redesign and how many redesigns were required. Furthermore, while the general assertion is made that "a great deal of time and resources were expended to solve these issues[,]" (Decl. ¶ 12), no details are provided with respect to the amount of time and resources expended.
     The Appellant's argument for non-obviousness is based on the assertion that there were technical challenges to the claimed invention that were beyond the skill set of one of ordinary skill in the art, the solution for which was inventive and took substantial time and resources to develop. However, the evidence does not reflect these challenges and the alleged inventive contribution.
(Emphasis added.)

My two cents: Arguing that the combination of references doesn't teach one of the limitations is almost always a better choice than arguing that the combination isn't obvious. But if you're stuck with arguing obviousness itself,  this decision provides an excellent explanation of what it takes to overcome obviousness at the BPAI. Although this decision involves declaration evidence, the same principles apply to attorney argument. In short, you're unlikely to overcome an obviousness rejection by arguing "No, it's not just a predictable variation" or "No, it's not a simple substitution." You need to explain why that's so, in as much detail as possible.

This decision also shows that this requirement for a real explanation is still present when you submit declaration evidence. You're unlikely to overcome an obviousness rejection with "No, it's not just a predictable variation" or "No, it's not a simple substitution." even when your expert/inventor makes this as a  sworn statement.

Neither the Applicant nor the Examiner discussed KSR, which was relatively new law when this application went to appeal.

BPAI finds a swear-behind declaration that is good enough (Ex parte Test.com)

Takeaway: For an example of a swear behind (§ 1.131) declaration that the BPAI found convincing, see the reexamination appeal decision Ex parte Test.com. Note this one is an actual reduction to practice case, so no diligence is involved. This decision also shows that a declaration that does not show reduction to practice of every claim limitation can be still be sufficient if what is missing are "details which are obvious to one or ordinary skill in the art." (In re Spiller, 500 F2.2d 1170, 1178.)

Details: Earlier this year I wrote a series of blog posts on swear-behind (§ 1.131) declarations at the BPAI. (See Part I, Part II, and Part III.) In that same series, I also noted that a study by Patently O showed that the BPAI finds three-fourths of the swear-behind declarations that are at issue on appeal to be insufficient for one reason or another.

The reexamination appeal decision Ex parte Test.com, which found the swear-behind sufficient, is therefore worth a read. My earlier posts on swear-behind treatment at the BPAI stressed the importance of providing evidence, not just conclusory statements, and of tying the evidence to the claims. The Applicant in this case did just that. The declaration includes statements from 2 inventors asserting personal knowledge of reduction to practice, accompanied by 13 exhibits. The exhibits included press releases, promotion materials, screen shots of the software implementing the invention, and a licensing agreement between Test.com and the customer using the software. The declaration also includes statements by the inventors tying portions of the exhibits to particular claim limitations.

You can get a feel for what the Applicants relied on looking through the 7 pages in the Findings of Fact section of the BPAI decision. The Findings of Fact are arranged by exhibit. In these Findings of Fact, the Board summarizes the contents of the exhibit, followed by the declaration statement that relies on this exhibit. For example:

Exhibit 3
3-1. Exhibit 3 is a document from a press kit created by an advertising agency regarding the method of the present patent. (Exhibit 3, pp. 1, 2, see also Anderson Dec. 2).
3-2. Anderson declares that this press kit is dated prior to November 16, 1998 and “discloses that a private, secure corporate account can be used to administer established or customized tests online” which in conjunction with Exhibit 2, discloses limitations recited in claim 1. (Anderson Dec. 2, 3).

This application went to appeal because the Examiner found that the declarations were not sufficient. The Examiner found they were "[v]ague and general statements ... which 'amount[s] to mere pleading, unsupported by proof or showing of facts', and thus does not satisfy the requirements of 37 CFR 1.131." In particular, the Examiner took issue with the screen shots, finding them "to be isolated screen shots that do not provide factual evidence of the claimed invention."

The Board disagreed, and found that "the probative weight of the declarations and exhibits together, in their entirety, show Applicant's completion of an online testing system public operating online." The Board further noted that an Applicant is not always required to show reduction to practice of every claim limitation:

In Spiller, the court determined a Rule 131 declaration showing possession of the “basic invention,” or the “heart of the invention,” or “establish[ing] broadly possession of the invention,” can be adequate to antedate a prior art reference even if what is shown in the Rule 131 declaration does not include all of the limitations of the later-claimed invention. Id. As such, we find that Appellant has sufficiently demonstrated a reduction to practice through declarations and exhibits showing possession of the “basic invention” or the “heart of the invention.” Specifically, Appellant has shown news publication, promotional materials, and screen shots which show an online testing center (FF 1-1), adding new or editing existing test questions (FF 7-1), a fee for the test-taker (FF 11-1), revenue sharing (FF 5-2, 8-1), and private user accounts (FF 2-1, 3-2, 9-1). Additionally, the exhibits show, and declarations support facts clearly describing, a webpage which Appellant declares was online and available before November 16, 1998 depicting an online testing site depicting icons allowing a user to at least “take a test” and “create a test,” and go to their “account” and/or “private account” (FF 4-2, 4-3), which we find substantially support the broad limitations as claimed by Appellant. Thus,Appellant has shown a reduction to practice of his basic invention, which showing will also suffice as to claims differing therefrom only in details which are obvious to one of ordinary skill in the art. See In re Spiller 500 F.2d at 1178. 

My two cents: If you're preparing a swear-behind declaration and don't have a lot of experience in this area, do yourself a favor and read Ex parte Test.com, and maybe even review the actual declaration and exhibits on PAIR.

Seems to me the clear danger in submitting a swear-behind that shows the "heart of the invention" rather than every limitation is that relying on In re Spiller also means you're admitting that the difference between what you showed and what you claim is obvious. So you get rid of one reference, but if the Examiner finds another teaching only the elements you relied on in your declaration, he has a good single-reference obviousness rejection, right? Because you've admitted the missing elements are obvious. Perhaps this is less dangerous in a reexam context, because maybe you can assume the reference asserted is the best one?

Is it necessary to point out every mistake in an Office Action?

Is it a good idea to point out every time the Examiner makes a mistake in an Office Action? I don't think Applicants do this to be snide. I think some Applicants really are worried that failing to address every incorrect statement in the Office Action somehow damages their case.

I came across a file history in which the Examiner issued a § 103 rejection, and prefaced it with the standard form paragraph from MPEP 706.02. The paragraph starts with "This application currently names joint inventors" and then goes on to say that if any claims are not commonly owned, the Applicant has a duty to let the Examiner know since that opens up more prior art under 103(c)/102(e). Turns out the form paragraph was inappropriate because the application named only a single inventor. The Applicant made this point in the next response, carefully stating for the record that the application was filed with a single inventor, inventorship had not changed, and "Appellant is unaware of any other circumstances leading to the conclusion that there are multiple inventors."

Now, the Applicant was very polite in correcting the record. So the Examiner shouldn't have felt  insulted – if he even noticed this paragraph buried after all the other arguments. But still ... is this necessary? What possible harm can come from just letting this slide?

Is it simply that some incorrect statements do need to be addressed? [And I agree that some do.] So that if you address all the errors, you don't need to think about which ones matter?

Patent pros resources: "Strategic Patenting"

For those of you new to patent drafting and prosecution, here's a new online resource: "Strategic Patenting" by Fish & Associates. I'd consider this to be a high level overview. It has chapters on claim drafting, specification drafting, office actions, infringement, provisionals, and PCT, to name a few.

You should be aware, however that at least some of the information is dated (e.g., the book says 101 rejections are unusual, and mentions the PTO's disclosure document program was discontinued a few years ago). And some of the topics may be oversimplified, for example, the discussion of objections and rejections in the section on 112 seems to suggest these two are the same when there are important differences.

Treat this book as a basic overview rather than a substitute for a patent prosecution treatise by a legal publisher, (e.g, Patent Prosecution by Donner or Patent Application Practice by Hawes). Finally, a disclaimer: this post is not an endorsement, simply a pointer to a resource.

BPAI rejects claim to ambiguous statutory class under indefiniteness rather than § 101 (Ex parte Miyata)

Takeaway:  In Ex parte Miyata, the Board rejected a Jepson style system claim under 112 § 2nd (indefiniteness). The Board paraphrased the claims as follows:

In a video camera system capable of [performing specified functions], the video camera system being characterized in that [under certain circumstances, specified phenomena occur].

The Board concluded that "it is simply not reasonably clear what statutory class claim 5 is intended to be directed."

Details:Ex parte Miyata
Appeal 2009-008927, App. No. 10/347,865, Tech. Center 2600
Decided: February 25, 2010

The claim at issue read:

5. In a video camera system capable of carrying out panning/tilting control of a camera device and capable of displaying a video imaged by the camera device on a monitor as well as superimposing a mask image on an arbitrary area within a range of imaging with the camera device,
the video camera system being characterized in that
in a case where the mask image is moved, the size of the mask image is corrected both forward and backward or either forward or backward in the direction of movement, the amount of correction of said mask image is adjusted depending on the movement speed thereof and the amount of correction increases as the movement speed increases.

The Board first explained that "system" can be either an apparatus or a method, quoting a dictionary definition ("system: any formulated, regular, or special method or plan of procedure") for support of this statement. The Board then noted that often the body of a claim clarified which statutory class was intended, but found no clarification here.

Rather, the balance of claim 5 merely states that the “system”—or field in which the invention is used – possesses certain characteristics. One of ordinary skill in the art, then, is not put on reasonable notice of whether claim 5 is intended to be directed towards process steps (e.g., changing the sizes of mask images) or  alternatively directed towards structural elements (e.g., a video camera, a pan/tilt controller, a video monitor, and specially programmed processor).

The Board then assumed that the claim was an apparatus, and that the entire "video camera system" was not claimed, since the claim recited "in a video camera system." The Board still found that it was not clear exactly what structure was being claimed:

• A processor programmed to perform the claimed functions, but not the other components mentioned (video camera, pan/tilt controller, and/or video display monitor)?
• A computer-readable medium encoded with software to perform the claimed functions, but not the processor which executes the software?
• The software per se?
• The corrected, enlarged mask image?

While the Board did not reject under § 101, they did state that "it is simply not clear whether claim 5 is directed towards patent eligible subject matter under 35 U.S.C. § 101." The Board declined to rule on the prior art rejections, "because it is necessarily based on speculative assumption as to the meaning of the claims."

My two cents: I gotta admit this is one of the most incomprehensible claims I've ever seen. Perhaps a bad translation is to blame: the application claims priority to a Japanese application.

The Board's focus on statutory classes in the context of indefiniteness is a bit unusual. I usually see this sort of analysis in § 101 rejections. The claim's real problem is the confusion about the structural elements. So I'd reject as indefinite for that reason alone, and not bother with any discussion of statutory classes.

I certainly agree with the Board's refusal to rule on the prior art rejections — you need some degree of certainty about claim scope in order to discuss the prior art.

The Board's holding that the preamble term "system" could be interpreted as a method in this application is ridiculous. (Same issue came up in a previous BPAI decision, see my previous post here.)

Does squishing an eyeball qualify as "transforming an article"?

I recently discovered the Patently-unOBVIOUS blog. One of the older posts covers the BPAI decision Ex parte Roberts, which contained an interesting 101 rejection. The decision predates Bilski v. Kappos, but it's still relevant today.

The application was about obtaining eye measurements for laser surgery. One of the method claims included steps for obtaining the measurements and correlating the data. The BPAI affirmed the 101 rejection: no transformation and no machine.

Patently-unOBVIOUS makes the interesting point that the claim should be interpreted as inherently applying pressure to the eyeball, and that this should qualify as a transformation of an article. 

My take on this is that the Board did not think as carefully about the claim as Patently-unOBVIOUS did, and would not have affirmed the 101 if they realized that the claim required movement of the eyeball. I say that because another claim explicitly recited "perturbing the cornea," and the Board did not apply a new 101 rejection for that claim.


Check out the full post at Patently-unOBVIOUS, which has the catchy title The Punched Drunk Eye of Schrodinger's Cat.


As a postscript, the Applicant in Ex parte Roberts reopened prosecution after the adverse appeal decision. In addition to amending in an attempt to overcome the affirmed prior art rejections, the Applicant has also tried several different tacks to overcome the 101 rejections. None of them have worked: the Examiner twice rejected different varieties of a computer-readable medium claim, then rejected a method claim which explicitly recites a computer system in the body.

District court finds claim impossible to infringe, and also invalid on four separate grounds

Takeaway: A district court found a nonsensical claim to be not only not infringed, but invalid under written description, enablement, inoperable and even the rarely invoked § 112 Second "not what the patentee regarded as his invention." (Frazier v. Wireline Solutions, LLC, C-10-3, S.D. Tex., July 16, 2010.) The claim recited: "[a] head member attached to the lower portion of the mandrel having a slot for catchably retaining the engaging portion of a superposed bridge plug." The court found it impossible for the lower end of one bridge plug to connect with another bridge plug located above the first.

Details: The accused infringer argued that Chef America controls (Chef America v. Lamb-Weston, Inc., 358 F.3d 1371 (Fed. Cir. 2004)), so that the court must construe the claim as written and grant summary judgment of non-infringement. The accused infringer further argued that under such a construction, the claim was invalid under § 112 Second and § 101.

The patentee accepted that the plain meaning of "superposed" was "above." Even so, the patentee argued that one of ordinary skill in the art would interpret the claim as referring to one plug above and a different plug below, since the claim contained two references to "a bridge plug."

The district court rejected the patentee's "strained and entirely unpersuasive attempt to reinterpret Claim 4." Having concluded that the claim contained an error, the court then phrased the next issue as whether it had the authority to correct the error by replacing "superposed bridge plug" (i.e., above) with "subjacent bridge plug (i.e., below).

As a threshold matter, the court held it would not correct the error because the patentee had argued in a hearing that the claim did not contain an error. Furthermore, correction is appropriate only when the correction is not subject to reasonable debate – and here reasonable debate existed because the patentee argued "no error."

The court then quickly disposed of the issue of infringement (none – not even possible) and moved on to invalidity. The court found the claim failed to meet both the written description requirement and the requirement under § 112 Second "applicant regards as his invention:" 

With Claim 4 written as is, the specification would have to describe a bridge plug that has a lower end capable of engaging another bridge plug located above it. Instead, the specification describes what one would expect to find, namely a bridge plug with an engaging portion at an end that is capable of connecting with another bridge plug positioned adjacent to that end. Because Claim 4 is not described anywhere in the specification (due to the use of "superposed" instead of "subjacent"), it necessarily fails the written description requirement ...
[T]he bridge plug as described in the specification of the '376 Patent differs materially from that described in Claim 4. Thus, due to the use of "superposed" rather than "subjacent," the claim is invalid under paragraph 2 of Section 112.

Since the claim recited an impossible limitation, the court also found that the claim failed to meet the enablement and utility requirements, citing Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1359 (Fed. Cir. 1999):

[W]hen an impossible limitation, such as a nonsensical method of operation, is clearly embodied within the claim, the claimed invention must be held invalid. . . . [W]hen the claimed subject matter is inoperable, the patent may indeed be invalid for failure to meet the utility requirement of § 101 and the enablement requirement of § 112.

My two cents: Definitely the right result. Though I do wonder if four grounds for invalidity were overkill.

The court treated as fatal the patentee's refusal to admit error in the claim. But I feel certain that the court would have reached the same result anyway. The facts here seem very close to the burning bread dough in Chef America.

I'd be surprised if the claim at issue was an originally filed claim. Instead, it was probably the result of careless prosecution. I'd say the four lessons here are:

1. Proofread your claim amendments.
2. Proofread your allowed claims. 
3. Proofread your issued claims.
4. Proofread before filing a lawsuit. 

 The decision did not mention a certificate of correction, so I assume there wasn't one. The patentee did file amended infringement contentions, replacing "superposed" with "subjacent."

Thanks to Scott Daniels at the Reexamination Alert blog for bringing this case to my attention.

Arguments guaranteed to lose: not obvious because the references are old

Takeaway: The BPAI has held in a number of decisions that the mere fact that the references used in an obviousness rejection are old does not indicate non-obviousness. Federal Circuit precedent requires actual evidence of a long felt need.

• Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324-25 (Fed. Cir. 2004) (absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness); and
  
• In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (the mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem).

Details:

In Ex parte West, the Applicant argued that the two references had been around for nearly 40 years without being combined as proposed by the Examiner “militates against the Examiner’s conclusion.” The Board found the argument "not persuasive, as the record is devoid of evidence showing a long-felt need or unsuccessful efforts by others to solve the problem." (Emphasis added.)

In Ex parte A.L.S. Enterprises, Inc., the Applicant argued that "the relative age of these references suggests that these references were not so easily combined as suggested by the Examiner." The Board disagreed, stating that "[t]he present record lacks the required persuasive evidence that establishes previous attempts and failure in providing a bag for garments that absorb odor."

In Ex parte Bourhis, the Applicant even explained why the age of the reference should have been considered an indication of non-obviousness:

No motivation would have existed to use Kim’s compositions in Curry’s two compartment devices. Specifically, Kim was filed about 26 years after Curry. Thus, Curry’s two compartment devices were well-known at the time Kim filed his application. Yet, Kim neither teaches nor suggests using his compositions in a two-compartment device.

The Board was not persuaded, because the Applicant did not provide any evidence of long-felt need or failure by others.