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.
You seem to get the same result by applying the doctrine of claim differentiation. That's what I use in these situations, but superfluity is also nice to know about.
ReplyDelete"(Actually, the Applicant did argue the dependent claim – but not the “repel one another” limitation.) As it was, the Board didn't decide (or need to decide) whether or not the reference taught the “repelling” feature.
ReplyDelete"
That makes me lol.
Here's a dumb question - why was the Applicant arguing before the BPAI that a limitation should be read into his claim? Wouldn't it have been a lot easier to amend that limitation into the claim himself?
ReplyDelete>arguing that a limitation should be read into
ReplyDelete>his claim?
I think sometimes there's a *slight* distinction between arguing the meaning of a claim term and arguing that a limitation should be read into the claim.
For example, say the claim recites "generally straight" and the Examiner reads this on something with a bend in it. If you argue that "generally straight" means "without a bend" are you arguing the meaning of a term or reading a limitation into the claim? I say the former, because you're really arguing that the limitation is implicit in the meaning.
>Wouldn't it have been a lot easier to amend
>that limitation into the claim
Yes, amending would have been much more effective.
Arguing a limitation that doesn't appear in the claims is almost always a really bad idea.
First, the Examiner is entitled to ignore the argument since the argument is "not coextensive with the scope of the claims". (That's the language the Board sometimes uses.)
Second, if the patent is asserted then the accused infringer will say prosecution disclaimer applies to narrow the claim scope.
So you get the worst of both worlds. The claim is read broadly in prosecution and narrowly in litigation.
Appellant presented no arguments regarding the allowability of the dependent claims. So there's no indication whether any of those dependent features would overcome the rejections. And now the Board's decision is res judicata against those claims if they were rewritten in independent form and filed in a continuation.
ReplyDeleteTerrible advocacy.
Why do applicants and practitioners continue to appeal and not take advantage of the opportunity to argue the patentability of the dependent claims?
"Why do applicants and practitioners continue to appeal and not take advantage of the opportunity to argue the patentability of the dependent claims?"
ReplyDeleteI may be jaded about this but... .
Appeals immediately create more billable hours. Clients aren't necessarily going to file a continuation if they are satisfied with the issued dependent claims. I think it is more of a bird in the hand vs. two in the bushel issue.
>Clients aren't necessarily going to file a
ReplyDelete>continuation if they are satisfied with the
>issued dependent claims
Seems like you answered a different question -- why appeal when you can file a continuation. The original comment assumed that the Applicant decided to appeal, then asked why we don't *argue* non-allowed dependents during appeal.
Unless I'm misinterpreting what you said?
"Why do applicants and practitioners continue to appeal and not take advantage of the opportunity to argue the patentability of the dependent claims?"
ReplyDeleteI think that's a question you must ask to each applicant and each practitioner. However, I can answer as one practitioner: (1) the clients don't necessarily want to pay the extra attorney fees for the extra arguments if they're confident enough in the arguments for the independent claims, and (2) the practitioners don't want to do it for free.
I wonder (and I'd be glad to hear comments) how much a BPAI judge happily greets a 10-page brief as opposed to a 40-page brief. By limiting the material (number of arguments), the judge and devote more energy to the arguments that are there. If the arguments for the independent claims suffice, the other arguments are not needed.
"I wonder (and I'd be glad to hear comments) how much a BPAI judge happily greets a 10-page brief as opposed to a 40-page brief. By limiting the material (number of arguments), the judge and devote more energy to the arguments that are there. If the arguments for the independent claims suffice, the other arguments are not needed."
ReplyDeleteI've heard this advice from APJ's at a couple of bar/association meetings. It's BS. Based on Mr. Fleming's comments at the BPAI conference held in April, the Board is trying to follow more of a "judicial model" when deciding appeals. Thus, the Board will decide the appeal on the narrowest grounds it can. If you're not making a series of arguments of narrowing scope, including the separate patentability of dependent claims, you're inviting an affirmace.
I see it all the time in decisions. Appellants don't separately argue dependent claims, or even independent claims of differing scope, the APJ's pick the easiest claim to affirm, and the appellant is toast.
Why you would wait 2+ years for that result is beyond my understanding.
>Why you would wait 2+ years for that result
ReplyDelete>is beyond my understanding.
Here's a theory. A lot of practitioners simply don't have a sense of what works and doesn't work with appeals. They haven't been using the process long enough/often enough to get back many decisions from the cases they do appeal. And they don't read BPAI decisions.
So the approach they use at appeal is the same one they use with the Examiner. And in many cases it simply doesn't work.
>By limiting the material (number of
ReplyDelete>arguments), the judge and devote more energy
>to the arguments that are there.
Sure, that's why you make strong arguments and leave out the weak ones.
But when I have strong arguments for dependent claims, then I'll argue those. Even if it significantly increases the size of my brief.
>happily greets a 10-page brief as opposed to
>a 40-page brief.
I once read a brief that had an entire *page* of string cites for anticipation law. What a waste of paper.
"I wonder (and I'd be glad to hear comments) how much a BPAI judge happily greets a 10-page brief as opposed to a 40-page brief. By limiting the material (number of arguments), the judge and devote more energy to the arguments that are there. If the arguments for the independent claims suffice, the other arguments are not needed."
ReplyDeleteI'm the OP for that remark, and I think the two responses had better arguments than what was in my remark. I'll concede that.
The responses also triggered another thought: if the APJ sees that he would need to write a lot to affirm every rejection of so many separately-argued claims, he may be more motivated to find a way to allow the independent claims. Given that the initial burden is (at least I thought so) on the examiner to justify the rejection as opposed to on the appellant to justify withdrawing the rejection, I won't feel ethical guilt that I loaded up a brief to get an improper rejection reversed.
You have to keep in mind that, for the most part, APJ's are former examiners, and like examiners, are on production. Of course they'd rather see a 10 page brief sitting as the next appeal on their docket rather than a 40 page brief. Unfortunately, the length of the brief is dictated by the need to address every reasonable basis for reversal and not to make the APJ's job easier. Not addressing every reasonable basis for reversal, and preserving those issues for appeal, is malpractice.
ReplyDeleteI often argue non-analogous art in briefs. I know the Board is never going to reverse an examiner on the basis of non-analogous art, but it is often the first, and best, argument for reversal. I almost always include additional arguments (e.g. no reason to combine, no expectation of success, not all elements in reference(s), etc.), but I'm not going to leave out a good argument just because it's an extra page or two.
I once filed a brief and my only argument was the secondary reference was non-analogous art. The brief was filed pre-KSR. The Board decided the appeal post-KSR. Instead of simply agreeing with my argument that the secondary reference was non-analogous art, the Board cooked up some quote from KSR (e.g. no explanation of how the references could be predictably combined) and reversed.
Many times I find myself making arguments in a response to an examiner that are not directed to the examiner, they are directed to the Board. So even if the examiner ignores the argument, the Board can't (or shouldn't). I also find myself making arguments in appeal briefs that are not directed to the Board, but to the Federal Circuit. Yes, the Board does ignore arguments. Get them all on the record and preserve everything for appeal.