Patent bloggers at AIPLA in DC

The AIPLA Annual Meeting will be held in October, in Washington DC. One of the programs is a panel discussion of patent bloggers. I'll be one of the panel speakers, joined by fellow bloggers Dennis Crouch (Patently-O) and Donald Zuhn (PatentDocs). You can find more information about the meeting here.

Indefiniteness rejection for claims that are inconsistent with spec

Takeaway: The BPAI has affirmed indefiniteness rejections under § 112, 2nd paragraph when a claims is inconsistent with the specification, citing In re Cohn, 438, F.2d 939, 993 (CCPA 1971)(sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, as being indefinite, where the claims were inherently inconsistent with the description, definitions, and examples appearing in applicant’s specification).

Details:

In two cases, the claims described the shape of an element, but the Board found that the word used to describe the shape didn't match the drawings. In one case (Ex parte Sazy), the claim recited "banana shaped unitary body" and the drawings depicted a shape which suggested a banana. However, the Board noted that the dictionary definition of banana included "tapering" : "elongated often curved and usually tapering fruit of the banana plant." The Board found that the shape in the Applicant's drawing was elongated and curved, but not tapering. The Board affirmed the indefiniteness rejection because of this inconsistency between drawings and claims.

In another case involving a shape (Ex parte Sabbagh), the claim recited "kidney shaped shield" and the drawings depicted a shape which suggested a kidney. (See Applicant's Fig. 1 below.)

The Applicant argued that "a kidney-shaped object generally is round or oval and indented at one side like a kidney organ or a kidney bean," and provided images of a kidney organ and a kidney bean. However, the Board found that the shapes were different: 

After comparing the shape of Appellant’s claimed shield body (as per Figure 1 of Appellant’s Drawings) with the examples provided by Appellant of kidney-shaped objects (as per Figures 1A and 1B of the  Amendment), we do not find that Appellant’s illustrated oral shield 100 is kidney-shaped ...

One case involved an inconsistency between a claim limitation and the teachings of the spec. The claim in Ex parte LaSalle recited "a support structure ... not providing resistance to the opposed clamping forces." But the Board found that the description of the support structure, and the structure's interaction with the other claim elements, "must inherently result in the support structure providing some amount of resistance to the force." The Board affirmed the indefiniteness rejection because of this inconsistency between spec and claims.

Another case involved a claim that was internally inconsistent. The claim in Ex parte Choe recited "a heat resistant layer formed on the surface of the cover heater" and "a reflective layer between the cover heater and the heat-resistant layer." The Board found that the plain language of the first limitation required the heat resistant layer to be in surface-to-surface contact with the cover heater. However, the Board also found that this requirement contradicted the plain language of the second limitation ("layer between"). The Board entered a new ground of rejection under § 112, 2nd paragraph holding that the claim was "inherently inconsistent with [itself] and with the descriptions, definitions, and examples appearing in Appellants’ Specification."

My two cents: I don't think I've ever seen this sort of rejection before. In my experience, when the Examiner thinks the claims don't match the spec, the result is a rejection under  § 112, 1st. 

In all the cases discussed above, the BPAI cites to In re Cohn, which is really about inconsistency claim limitation and the teachings of the spec.

As used and defined in the specification, and unmodified by other terminology, an "opaque finish" is a flat-appearing finish which is not obtained when an alkali metal silicate is used as a sealant.... The claims, on the other hand, specifically call for sealing the oxide surface with an alkali silicate in order to ultimately obtain an "opaque appearance."
In re Cohn, 438, F.2d 939, 993 (CCPA 1971)

Of the four cases discussed above, In re Cohn seems on point for two of them. In re Cohn seems clearly on point for the the layer case (Choe), and still on point for the support structure case (Salazar). But I'm not convinced that In re Cohn really speaks to the banana case (Sazy) or the kidney case (Sabbagh).

List of daily BPAI decisions

I found a great resource for those of you interested in BPAI opinions: a list of daily BPAI opinions. This list is much more useful than going to the BPAI site, because the list includes basic information for each opinion. This basic information includes:

• the technology center; 
• the outcome (reversed, affirmed, affirmed-in-part);
• the type of appealed rejections;
• the name of the law firm; 
• the name of the Examiner; and
• case law cited by the BPAI.

This great resource is compiled by James Long, a registered U.S. patent attorney who currently works for the Jianq Chyun Intellectual Property Office in Taiwan.

Trade secrets or patents?

I ran across an interesting discussion on the IP Biz blog about trade secrets versus patents: "The Case Against a Case Against Patents."

The IP Biz post by blogger Lawrence Ebert is a response to the post "A Case Against Patents" on the MarkiMicrowave blog. In that post, microwave engineer Christopher Marki makes the argument that "for small tech companies like Marki Microwave, patents do not provide as many benefits as is often assumed." 

BPAI finds swear-behind insufficient for lacking details of diligence

Takeaway: In Ex parte Brown, the BPAI discussed evidence of due diligence in a § 1.131 (swear-behind) declaration. Despite the Applicant's submission of 32 exhibits of evidence, the Board found that the declaration was deficient in showing either actual reduction to practice or conception plus due diligence. "We have no evidence that the specific details of any of the claims were conceived prior to the applied art, no specific details of development activities of the claimed subject matter or of the drafting activities of the patent application, and no evidence that the attorney was diligent in constructive reduction."

Details: 
Ex parte STEPHEN JAMES BROWN
Appeal 2009002452, Appl. No. 09/237,194, Tech. Center 3600
Decided April 20, 2010

With regard to evidence of actual reduction to practice, the Board had this to say:

Many of the activities detailed in the declaration and exhibits bear little direct relation to actually reducing the invention to practice. Many of the activities are directed to establishing intellectual  property protection measures, obtaining speaking engagements, and planning for staffing needs. Others, such as proposing development timetables, are tangentially related, but show no actual reduction itself.

Next, with regard to diligence:

The period from  September 3 to 30 is unaccounted for. Further, no activity is shown between October 7 and October 27. To establish diligence for constructive reduction to practice, the attorney’s diligence must be shown.

The Board quoted the law for excusable lapses in diligence:

[I]t may not be possible for a patent attorney to begin working on an application at the moment the inventor makes the disclosure, because the attorney may already have a backlog of other cases demanding his attention. Thus, the courts have recognized that reasonable diligence is all that is required of the attorney. [] Generally, the patent attorney must show that unrelated cases are taken up in chronological order, thus, the attorney has the burden of keeping good records of the dates when cases are docketed as well as the dates when specific work is done on the applications.
Bey v. Kollonitsch, 806 F.2d 1024, 1028 (Fed. Cir. 1986).

The Board then applied the law of diligence to the facts: 

But there is no evidence of such a backlog or that if there was a backlog that it was taken up in chronological order. There is also no evidence showing that the period subsequent to the last documented attorney activity on October 29 up to the date of filing was excused activity. We are left with a large number of days in which no documented attorney activity occurred and no evidence that those days were excusable.

My two cents: This is a good teaching case of what not to do in a swear-behind.

Interestingly, the Board had no reason to even consider the swear-behind. The reference was filed in 1992. The application on appeal was a continuation-in-part filed in 1999, with the parent filed in 1992. Yet the Board found that the Applicant did not present any evidence whatsoever that the application was entitled to the parent's filing date. Without a valid claim to priority, the swear-behind is useless.

Boilerplate with attitude

Check out this boilerplate from U.S. Pub. 20080087720:

[0037]The present invention includes several independently meritorious inventive aspects and advantages. Unless compelled by the claim language itself, the claims should not be construed to be limited to structures that incorporate all of the inventive aspects, or enjoy all of the advantages, disclosed herein.

[0038]It is well established that the claims of the patent serve an important public notice function to potential competitors--enabling them to not only determine what is covered, but also what is not covered--by the patent. And a number of Federal Circuit decisions have emphasized the importance of discerning the patentee's intent--as expressed in the specification--in construing the claims of the patent.

[0039]But defendants in patent infringement suits--while arguing the importance of this public notice function--often seek strained and uncharitable constructions of the claims that would render them either nonsensical, too narrow to have any significant value, or so broad that the claim is anticipated by the prior art. Counsel for defendants routinely flog minor grammatical, typographical, or syntactical flaws, if any, in the claims or specification, forgetting that patents are generally written by--and for--engineers and technicians, not by and for grammatical perfectionists and English language PhD's. Furthermore, defendants frequently misconstrue the specification and prosecution history in claim construction briefs and hearings in an effort to import contrived and novel limitations into the construction of the claims. They also frequently strive to--in essence--rewrite the claims so that they do not cover the accused device.

[0040]Accordingly, I wish to make my intentions clear--and at the same time put potential competitors on clear public notice. It is my intent that the claims receive a liberal construction and be interpreted to uphold and not destroy the right of the inventor. It is my intent that the claim terms be construed in a charitable and common-sensical manner, in a manner that encompasses the embodiments disclosed in the specification and drawings without incorporating unrecited, unnecessary limitations. It is my intent that the claim terms be construed as broadly as practicable while preserving the validity of the claims. It is my intent that the claim terms be construed in a manner consistent with the context of the overall claim language and the specification, without importing extraneous limitations from the specification or other sources into the claims, and without confining the scope of the claims to the exact representations depicted in the specification or drawings. It is also my intent that not each and every term of the claim be systematically defined and rewritten. Claim terms and phrases should be construed only to the extent that it will provide helpful, clarifying guidance to the jury, or to the extent needed to resolve a legitimate, good faith dispute that is material to the questions of validity or infringement. Otherwise, simple claim terms and phrases should be presented to the jury without any potentially confusing and difficult-to-apply definitional construction. 

My two cents: I don't expect a statement of the drafter's intent to affect how a court interprets claims. The law already allows for things like construing terms in accordance with the spec while not importing limitations from the spec, construing to avoid invalidity in some situations, etc.  I don't think the patentee gets better treatment by asking for it in the spec, nor worse treatment if you don't ask.

First use date in trademark prosecution used as evidence of on-sale date in patent litigation

Takeaway: A patentee's trademark application was used, unsuccessfully, by the accused infringer as evidence of an on-sale bar. (Lampi, LLC v. American Power Products, Inc., 65 F.Supp.2d 757, 761 (N.D.Ill.1999)). According to the district court, the patentee's Micro Lampi fluorescent light product embodied the asserted claims. The patentee filed a product configuration (trade dress) application for this product. During prosecution of the trademark, the patentee submitted sworn statements specifying a date of first use in commerce. This first use date (before the critical date of the patent) contradicted the patentee's evidence about the on-sale date of the product (after the critical date).

The court found that the patentee was not judicially estopped from relying on the on-sale date established at trial, because the contrary position taken in the trademark proceeding was the product of inadvertence and mistake. Therefore, the patent was not invalid for an on-sale bar because the on-sale date established at trial was after the critical date.

The Federal Circuit affirmed this portion of the district court's opinion, finding that the district court did not abuse its discretion. (Lampi Corp. v. American Power Products, Inc., 228 F. 3d 1365, Fed. Cir. 2000.)

Details:
Lampi, LLC. v. American Power Products, Inc.
N.D. Illinois, Eastern Division,
August 31, 1999

The accused infringer argued that the statements made in the trademark prosecution prevented the patentee from denying a sale before the critical date. The doctrine of judicial estoppel is an equitable concept that forbids a litigant from obtaining victory in a prior proceeding and then repudiating the grounds for that victory in a different case to win a second victory. Chaveriat v. Williams Pipe Line Co., 11 F.3d 1420, 1427 (7th Cir.1993). However, the doctrine should not be applied when the former position was the result of inadvertence or mistake or when there is only an appearance of inconsistency between the two positions. In Matter of Cassidy, 892 F.2d 637, 642 (7th Cir.), cert. denied, 498 U.S. 812, 111 S.Ct. 48, 112 L.Ed.2d 24 (1990).

The president of the patentee testified that in making statements that the Micro Lampi was "in use in commerce" in 1985 (before the critical date), she misunderstood the meaning of this phrase. She mistakenly believed that submitting preliminary plans for manufacturing the Micro Lampi housing amounted to "use in commerce." The court found this testimony to be credible. The patentee also amended its trademark application to amend the date of first use from July 1985 to September 1986. The court found this to be further evidence that the initial representation was the product of inadvertence and mistake.

In conclusion, the court found that the evidence at the infringement trial showed that the on-sale date was after the critical date, and judicial estoppel did not apply to prevent the patentee's reliance on this date. Therefore, the patent was not invalid.


My two cents: "Use in commerce" in trademark law is not exactly the same as "sale" in patent law — but it's pretty close. The statutory definition of "use in commerce" includes "goods are sold or transported in commerce." Seems to me that if your first use was sale, rather than transport, that qualifies as an on-sale event in patent law. 

That's only half the story. The date of first use in commerce is relevant only if the "Micro Lampi" product which was the subject of the trade dress registration was also embodied in the patent claims. The opinion didn't analyze this, but simply stated that the Micro Lampi was the commercial embodiment of the patents-in-suit, and that "Lampi applied to the PTO to register the external design of the Micro Lampi as a trademark." Perhaps the patentee admitted that the two were the same.

In many cases it could be a lot more work to show that the product for which a trademark application was filed was the claimed product. For example, what if the Micro Lampi had lots of different models, all of which shared the same trade dress / product configuration and thus the same first use in commerce, but which differed in their internals so that only some of the models embodied the claims? In such a case, the first use date is not indicative of an on-sale sale date for a claimed embodiment.

BPAI rejects "mechanism adapted to move": no structure and thus indefinite (Ex parte Merdan)

Takeaway: The BPAI entered a new indefiniteness rejection for means-plus-function limitations in a mechanical case. The Board found that no structure was disclosed for performing the movement function of "a mechanism adapted to move at least one of the optical system and the securement device while maintaining the cutting spot on the wall of the tubular member." The specification merely stated that a shaft was moved, without describing any structure to accomplish the movement.  (Ex parte Merdan.)

Details:
Ex parte Merdan
Appeal 2010009279, Appl. No. 10/190,975, Tech. Center 1700
Decided August 31, 2010

The subject matter of the application was a system for manufacturing a stent, including a laser system 20 which cut out a pattern from a tube 12 mounted on a movable shaft 18. According to the Applicant, the inventive features included securing the tube in a vertical orientation, and a liquid flow 26, both of which assisted in removing debris during the cutting process.

The claims on appeal were rejected under § 103, but the Board did not reach the merits of the rejection. Instead, the Board raised a new ground of rejection under § 112, ¶ 2, finding that the "mechanism" limitation in each independent claim was indefinite.

The two limitations are issue were:

• a mechanism adapted to move at least one of the optical system and the securement device while maintaining the cutting spot on the wall of the tubular member thereby moving the cutting spot over at least a portion of the wall of the tubular member in both vertical and circumferential directions;
• a mechanism adapted to move at least one of the laser apparatus and the securement device whereby the laser system removes material from at least a portion of the wall of the tubular member in both vertical and circumferential directions; 

The Board first held that both claims were indefinite under the precedential opinion Ex parte Miyazaki:

When an applicant has not given notice to the public [by using the phrase 'means for'] that his or her purely functional claim element is to be limited to the application of § 112,  sixth paragraph, a first USPTO concern is that the claim is indefinite.

The Board then used an alternative rationale to reject under In re Donaldson:

Moreover, even assuming 35 U.S.C. § 112, ¶ 6 applies, in consulting the Specification, we find no structure corresponding to the function of moving the optical system and/or the securement device as claimed. For this additional reason, the claims are indefinite under 35 U.S.C. § 112, ¶ 2. See In re Donaldson Co., 16 F.3d 1189, 1195 (Fed.Cir.1994) (en banc)

In the Appeal Brief, the Applicant pointed to a section of the spec as disclosing the structure. However, the Board found the spec merely stated the function ("the tube 12 is moved via the predetermined movement pattern of shaft 18"), and did not "identify the specific mechanisms or structures that impart the disclosed movements."

My two cents: A straightforward application of § 112, ¶ 6. No structure = indefinite. I see a lot of means-plus-function claims shot down in computer and electronics applications, but this was one of the few times I've seen that happen in a mechanical case.

The interesting aspect to me is how to draft a claim that avoids this rejection. The claim recited "an optical system including a laser, said optical system adapted to form a cutting spot on a wall of a tubular member ... and to modulate the laser energy according to a predetermined pattern." The second independent claim included a whereby clause that captured the important aspect of vertical removal: "whereby the laser system removes material from at least a portion of the wall of the tubular member in both vertical and circumferential directions."

Could you just tack the whereby clause onto the end of the claim, to capture the inventive vertical removal aspect while avoiding explicitly claiming the movement?

What about a method claim with the step "moving the optical system or the securement device"? Could you get away with that, or would it be vulnerable to an § 112, 1st rejection? I think you have a better chance of overcoming enablement because you can rely on the knowledge of a POSITA. Perhaps you could successfully argue that even though you didn't disclose a computer-controlled motor for moving the shaft in a pattern, a POSITA would know how to do that.

One more interesting tidbit about this case. This is the second appeal for this case, and the Applicant still doesn't have a Board decision on the prior art rejections. In the first appeal, the merits weren't reached because the Board rejected the hybrid method/system claims as indefinite under IPXL Holdings v. Amazon.com. On return from the first appeal, the Applicant amended the claims to clearly claim a system rather than a method, by reciting the "optical system," the "securement device" and the "mechanism adapted to move." The Applicant appealed at the Examiner's prior art rejections at the first opportunity. But the § 112, ¶ 6 rejection raised by the Board once again prevented a decision on the prior art rejection.

BPAI finds "i is occasionally greater than one" does not conflict with "i is invariant"

Takeaway: In Ex parte Giacomini, the BPAI reversed an enablement rejection for a dependent claim that appeared on its face to contradict its parent claim. The independent claim appeared to recite that a particular value varied, while the dependent claim explicitly recited that the same value was invariant. The Examiner applied an enablement rejection on the basis that the specification described alternative embodiments (variable and invariant), but not an embodiment that was both variable and invariant.

The Board found no conflict, reasoning  that: "[if] i is at least occasionally greater than one (as claim 1 requires), it is therefore possible that i could be invariant (as claim 2 requires), and always be equal to two, or three, or any other integer greater than one, without doing violence to the requirement of claim 1." 

Details:  
Ex parte Giacomini
Appeal 200900139, Appl. No. 09/725,7371, Tech. Center 2600
Decided April 15, 2009

The subject matter of the application was web servers. The claims were directed to populating a web cache with resources. One of the issues on appeal was an enablement rejection of dependent claim 2. That claim, and it's parent claim, are shown below, with the relevant language emphasized.

1. A method comprising: populating a cache with a resource only when at least i requests for said resource have been received; wherein i is an integer and is at least occasionally greater than one.

2. The method of claim 1, wherein the value of i is invariant.

The Examiner contended that the dependent limitation "i is invariant" conflicted with the independent limitation "[i] is at least occasionally greater than one." In other words, the independent claim recited that i varies, yet the dependent claim recited that i does not vary. The Examiner therefore alleged that the dependent claim was not enabled, since the specification did not describe how to make and use an embodiment in which i was both variable and invariant.

The Board determined that the discrepancy was not a conflict after all because the two limitations captured different embodiments. Referring to teachings in the spec, the Board found that in one embodiment, i varies with time of day, the day of the week, etc. In another embodiment, the value of i does not change over time or as a function of circumstance. The Board then reasoned that:

If i is at least occasionally greater than one (as claim 1 requires), it is therefore possible that i could be invariant (as claim 2 requires), and always be equal to two, or three, or any other integer greater than one, without doing violence to the requirement of claim 1.

My two cents: First of all, it seems weird to me that the Examiner issued an enablement rejection. I think an indefiniteness rejection is more appropriate, i.e., I can't tell what the claims mean because two limitations are in conflict with each other.

But the underlying issue is the same whether you couch it in terms of enablement or indefiniteness: how to reconcile a limitation that effectively requires i to vary with another limitation that explicitly requires i to be invariant.

The Board reconciles this by saying that "i is at least occasionally greater than 1" does not in fact require i to vary.  The Board's logic has a sort of intuitive appeal. For any particular embodiment, i is either variable or fixed. The independent claim is written to cover both. The dependent claim covers fixed only. I'm on the fence as to whether I think the Applicant was clever and the Board got it right, or the Applicant was too clever and the Board got it wrong.

But forget about the dependent claim. Why didn't the Board issue a new indefiniteness rejection for the independent claim? What does "occasionally greater than one" mean? Consider a method that populates after i=2 requests. Two is definitely greater than one. So whether this method infringes seems to depend on how often the cache is populated after 2 requests. If your method always populates after 2 requests, then are you infringing? Since "always" means i is "invariant", and 2 > 1, this behavior definitely reads on dependent claim 2.

But does this same behavior read on "i is occasionally greater than 1"? I don't know. I don't really know how to parse that. But let's say it does. Let's say that "always > 1" satisfies "occasionally > 1".
But that's the easy case. Consider another method that doesn't always populate after 2 requests, but varies its behavior in some manner, such as time of day.  [That's exactly what the claim covers, and what the application describes.] Suppose that when run during a particular time period, under a particular set of 100 inputs, the method populates the cache after 2 requests 90 times, and populates after 1 request 10 times. Does this behavior read on "i is occasionally greater than 1"? That is, does "90% of the time" read on "occasionally"?

You can see where I'm going with this ... does "10% of the time" read on "occasionally"? Where do you draw the line? This is probably the most difficult-to-parse claim that I've run across in a long time.


Related posts: If the name Giacomini sounds familiar, it may be because the Applicant was involved in the Federal Circuit decision In re Giacomini, which involved using the provisional date as the effective filing date of a reference under 102(e). I blogged about that here and here.

BPAI not persuaded by argument that reference for home use would not combined with reference for mass production (Ex parte Fellowes)

Takeaway: The BPAI found unpersuasive an Applicant's "no motivation to combine argument" that a primary reference related to a home user context while the secondary reference related to a mass production context. The Board found that the secondary reference was not in fact limited to a mass production context.
(Ex parte Fellowes, Inc.)

Details:
Ex parte Fellowes, Inc.
Appeal 2010001690, Reexam Control No. 90/010,137, Tech. Center 3900
Decided May 24, 2010

This appeal involved a patent under reexam. The claims at issue were directed to a paper insert for a CD case with a specific pattern of fold lines. The § 103 rejection combined a cassette insert having perforated lines (Ace) with a CD insert having fold lines (Fantone).

The Applicant argued that a POSITA would not be motivated to combine the two references because the cassette insert in Ace was directed to home users, while the CD insert in Fantone was directed to mass production. The Examiner's Answer addressed this argument as follows:

While admittedly, these CD storage boxes could be used manufactured [sic] in a production run of pre-produced and packaged compact discs, they equally could be sold to the home or office consumer for use in storing homemade compact disc media. There is nothing in the Fantone reference that limits the use of the disclosed prior art CD Rom jewel boxes for a commercial production of pre-packaged CDs. Additionally, the current patent claims are not limited to any commercial use or production of the claimed product. 

The Board affirmed the obviousness rejection, noting that the Applicant's no-motivation-to-combine argument was "only viable in the context of mass production," and "[did] not address the Examiner’s home or office consumer rationale." The Board further noted that the Applicant's own Background section supported the Examiner's use of a consumer context, since the Background stated that “a need [has grown] to label these disks and their storage containers once they have been produced,” that the disks “are being used for  archival data storage,” and there is a need for labels involving “short runs of disks.”

My two cents: This type of motivation to combine argument can be persuasive in some contexts, but simply didn't fit the facts here. That is, if the feature relied on in the Fantone reference really was limited to a mass production context, then it would not make sense to combine it with a feature limited to a home user context. However, the Board found that the feature was not so limited, so the Applicant lost the argument.


The Board didn't address the Examiner's statement "the current patent claims are not limited to any commercial use or production of the claimed product." I think the Examiner's statement misses the mark. The Applicant wasn't arguing features that weren't in the claims, and was instead arguing about why the references didn't make sense to combine. Reasons against combining don't need to be expressed in the claims.

Interesting blog posts

• Over at PharmaPatents, Courtenay Brinckerhoff has a post "Pharma Cases Dominate New USPTO Obviousness Examination Guidelines." Courtenay doesn't just summarize the pharma cases in the guidelines, she also provides her insight.
• At the Intellectual Property Directions blog, Bruce Horwitz has an interesting post "Summary Judgment - What should your application include?" Bruce makes a case for including Background and Summary sections in patent applications.
• Bruce writes the post in reaction to a recent opinion, from patent searcher Greg Aharonian, that Background and Summary are nothing but trouble. Greg's "Internet Patent News Service” newsletter is distributed via listserv – subscription instructions are here.
• On a recent comment thread on PatentlyO, I ran across a very insightful statement about claim drafting: "the art of claim drafting is being vague to exactly the right extent." (Read the full comment here.) I'll add my own variation: the art of claim drafting is being vague to exactly the right extent and in areas that have been carefully considered. In other words, using the word "connected" is good if you've considered that it might be interpreted as directly or indirectly connected. If you haven't thought about this, it's vague in a bad way. 

Related posts: I've mentioned the Intellectual Property Directions blog before. At this post here, I mentioned  another post by Bruce Horowitz about what to include in a patent spec, which I characterized as "unconventional." I don't always agree with Bruce, but I welcome opposing points of view that are reasonable and well-explained, as his are.

BPAI finds that reading "end" on "midpoint" is unreasonable (Ex parte Szymbor)

Takeaway: The Applicant claimed two opposed ends of a bristle. The Examiner used a reference with a U-shaped bristle, and read one of the ends on the midpoint of the bristle, where it bent in half. The Board found that interpreting a midpoint as an "opposed end" was "unreasonable" and "contorts the ordinary and customary meaning as understood by a person having ordinary skill in the art." (Ex parte Szymbor.)

Details:
Ex parte Szymbor
Appeal 2009011926, Appl. NO. 10/104,337, Tech. Center 3600
Decided August 24, 2010

The subject matter of the patent application was a seal for a gas turbine engine, used to prevent gas from escaping through a gap between stationary and rotating parts. This type of seal, known as a "brush seal,"  includes packs of wire bristles sandwiched between plates.

One of the claims on appeal read:

12. A brush seal, comprising: a bristle arrangement, including:
a plurality of bristles, each of said bristles having a first end and an opposed second end; and
plates receiving said bristles therebetween, each of said plates having a first end and a second end;
wherein said first ends of said bristles extend past said first ends of said plates and said second end of said bristles resides between said first and second ends of said plates.

One of the Applicant's arguments was about the "first end" and "second opposed end" limitations. As is common, the underlying issue was really claim construction.

The reference used by the Examiner is shown below, where bristles 2 are bent in half around, and retained by, ring 8.

Specifically, the Examiner read the claimed "first end" on the portion of the bristle 2 which contacted the sealing surface 20. The Examiner read the "second end" on the portion of the bristle which is retained by the ring 8. The Examiner explained this interpretation as follows:

[E]nd is defined by a boundary marking extremities of something, the boundary of the bristles in Reisenger et al. is the second end marking the extremity of the bristle arrangement.

Having interpreted "ends" to be top and bottom portions of the bristle, the Examiner then found that the top portion ("second end") was "opposed" to the bottom portion ("first end").

The Applicant argued that the ends of the bristle were those portions that contact the sealing surface 20, and that these portions were aligned rather than opposed. The Applicant cited to a portion of the reference which read: "The ends of the wire bundle 2 extend in parallel and radially toward the inside to thus form a sealing element which slides on a sealing surface 20 ..."

The Board used dictionary definitions of "opposed" and "end" to interpreted "opposed second end" as "the extreme or last part of the bristle in opposition or contrary to its first end." The Board then found that the Examiner's interpretation of "second end" as the midpoint of the bristle 2 (where the bristle 2 wraps around the ring 8) was "unreasonable" and "contorts the ordinary and customary meaning as understood by a person having ordinary skill in the art."

My two cents: This seems like another case where the Examiner designated arbitrary portions of a structure to meet the claim limitation. The Examiner's definition of "end" closely tracked the Board's definition -- extremity. But a wire has two recognizable ends, and bending the wire in half doesn't make the midpoint into an end.

It occurred to me that the two real ends of the U-shaped bristle actually are opposed to each other. So why did the Examiner use this tortured reading of end as midpoint? My guess is using the natural interpretation of "ends" does meet the "opposed" limitation, but in doing so one or more of the other claim limitations isn't met.

Related Posts: Other posts discussing arbitrary delineation of structures by the Examiner are here and here.

BPAI uses printed matter doctrine to reject disposable garment claims (Ex parte Sosalla)

Takeaway: The claims in Ex parte Sosalla were directed to a disposable garment including a focal and a background graphic, where the claims further described characteristics of each graphic. On appeal, the Board issued a new anticipation rejection using the printed matter doctrine. Specifically, the Board found that the two graphics were printed matter on the garment substrate, and that the properties of the graphics were thus non-functional descriptive material and not entitled to patentable weight.

Details:
Ex parte Sosalla
Appeal 2009010866, Appl. No. 11/025,528, Tech. Center 3800
Decided August 26, 2010

The six independent claims all included "a focal graphic" and "a background graphic." In five of the independent claims, each graphic included a "color transition region" having a particular width limitation, e.g.,  "a hue transition width" of 0.5 mm, a "saturation transition width" of 1.0 mm, etc. In the remaining independent claim, the background graphic was further limited to "a Gaussian blur effect" of 4 pixels.

The Board reversed a single reference obviousness rejection, finding that the reference did not disclose the particular width limitations, and that the Examiner's reason for modification ("create a more apparent graphic feature against a contrasting background") was not persuasive.

The Board then issued a new anticipation rejection, using the same reference. The Board first made findings of fact:

Sosalla discloses each structural limitation on the garments recited in each of these claims  ... This includes, without limitation, a disposable garment having a multicolored scene graphic including a focal graphic incorporating at least one character graphic; a background graphic; and a garment-feature graphic disposed on the garment. 

The Board then found that the non-structural limitations of the claim were not entitled to patentable weight:

The disposable garment in each of the appealed claims serves as a substrate and the focal graphic and background graphic are printed matter on that substrate. (FF 3, 4). The relationship between the disposable garment and the graphics is aesthetic and a non-functional relationship. To the extent that the Appellants argue that the relative degree of blurring of the focal and background graphics makes such garments visually appealing and more desirable to wear (see Spec. 1, ll. 10-26), the function of the graphics is “useful and intelligible only to the human mind” and, as such, does not  patentably (that is, structurally) distinguish the claimed subject matter from the prior art. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969); see also In re Seid, 161 F.2d 229, 231 (CCPA 1947) (differences in ornamentation are entitled to little weight in determining the obviousness of a claim to a structure).

My two cents: The Board only muddied the waters by referring to ornamentation and aesthetics to explain why the visual appeal of the claimed graphics was not a patentable distinction. This case really rested on the printed matter doctrine, quoted in the "Principles of Law" section of the opinion:

When the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not be entitled to patentable weight. In re Gulack, 703 18 F.2d 1381, 1385 (Fed. Cir. 1983).

So I read this case as being a straightforward application of the printed matter doctrine. The details of the graphics – aesthetic or not – are completely irrelevant, since no functional relationship existed between the garment and the graphics.

BPAI reverses when Examiner asserts "anything can be considered substantially rigid" (Ex parte McQueer)

Takeaway: In Ex parte McQueer, the BPAI smacked down an Examiner's unreasonably broad interpretation of “substantially rigid.” The Examiner took the untenable position that “substantially rigid” read on “elastic.” The Examiner's justification was that the claim limitation was so broad that “[a]nything can be considered substantially rigid.”

Details:
Ex parte McQueer
Appeal 2009013145, App. No. 10/987,889, Tech. Center 3700
Decided: June 22, 2010

Claim 11 was directed to a protective athletic garment that includes “a substantially rigid shoulder portion adapted to protect a shoulder area of a user from impact.”

The Examiner issued an anticipation rejection using a reference which disclosed a breast plate. The Examiner read the “shoulder portion” of the claim on a pair of shoulder straps for attaching the breast plate to a user’s body.

The Applicant argued that the reference explicitly taught shoulder straps made of “elastic nylon material,” which is not “substantially rigid.” In the Answer, the Examiner replied that the term “substantially rigid” is so broad that “[a]nything can be considered substantially rigid.”

The Examiner provided this further explanation:

All fabric materials are rigid to a degree, including elastic/nylon material. Elastic/nylon material would have a substantially greater rigidity in comparison to other materials. Furthermore, the degree of rigidity of an elastic nylon material would also be affected by the temperature of the material, very cold temperatures would create a substantially more rigid material then when the same material is at room temperature.

The Board was not persuaded by the Examiner's reasoning:

Thus, the Examiner contends that because there theoretically exists some material that is less rigid than an elastic nylon material, then the elastic nylon material may be considered substantially rigid. That position is unreasonable. By that standard, all materials are at once substantially rigid and yet also substantially non-rigid.

The Board cited to dictionary definitions of rigid and flexible, and finally concluded that “[i]t is unreasonable to view the requirement that a material be substantially devoid of flexibility as also encompassing a material that is flexible, such as Jankowski’s elastic nylon material.” Such an interpretation “effectively reads the term 'substantially rigid' out of the claims.”

The Board also noted that the Examiner's statement about rigidity at cold temperatures was a mere assertion. Furthermore, the Examiner did not “adequately explain, why, even if the assertion is true, a material that increases its rigidity only for a limited time under an extreme circumstance, i.e., very cold temperatures, meets the general and unrestricted claim requirement of a shoulder portion that is “substantially rigid.”

My two cents:  Obviously the Board reached the right result here. Next time you challenge an Examiner's unreasonably broad interpretation of "substantially," consider including the Board's reasoning in your arguments.

New PTO procedure relaxes requirements for Examiner interview

Patent Docs reports here about a relatively new PTO procedure which relaxes the requirements for attorney/agent participation in an Examiner interview. According to the Patent Docs post:

Under the old procedure, practitioners were required to file a power of attorney or authorization to act in a representative capacity in order to participate in an interview.  Under the new procedure, practitioners need only file an Applicant Initiated Interview Request Form (PTO-431A).

I'm not sure that all Examiners followed the old, more rigorous, procedure, but I like the new procedure better.

Usefulness of Pre-Appeal Brief Conferences

The just-n-examiner blog has a new discussion (here) on the usefulness of the Pre-Appeal Brief Conference (PABC). just-n-examiner wonders:

Why would an attorney/applicant go to the time and expense of requesting a pre-appeal conference without first requesting an interview with the examiner?

The post is about examiner interviews as much as PABCs, so read the post even if you never do appeals. And be sure to read the comments thread which includes answers from practitioners as well as input from other examiners.

just-n-examiner has been on my personal reading list for a long time. I just added it to My Blog List here on All Things Pros.

PTO new KSR guidelines

The PTO has published Updated KSR Guidelines in the Federal Register (available here). The guidelines have been updated in view of 24 post-KSR Circuit opinions from the Federal Circuit.

The Guidelines include a "teaching point" for each of the post-KSR opinions. The Guidelines break the opinions into two main categories: 20 opinions dealing with the prima facie case; and 4 opinions dealing with rebuttal evidence. The prima facie category is further divided into: Combining Prior Art Elements (6 opinions); Substituting One Known Element for Another (7 opinions); and Obvious to Try (7 opinions).

The Guidelines repeatedly stress the importance of fact finding and explanation.

• "It remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly. If a rejection has been made that omits one of the required factual findings, and in response to the rejection a practitioner or inventor points out the omission, Office personnel must either withdraw the rejection, or repeat the rejection including all required factual findings"
• "This requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity"
• "When considering obviousness, Office personnel are cautioned against treating any line of reasoning as a per se rule."
• "Simply stating the principle (e.g., "art recognized equivalent," "structural similarity") without providing an explanation of its applicability to the facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness."

The Guidelines also refer to Examiner training materials from 2008 that are specific to particular technology centers, found at http://www.uspto.gov/web/offices/pac/dapp/opla/ksr/ksr_training_materials.htm.