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;
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.
I really dislike clever judges that could do us all a favor and not find ambiguities but, instead, read statutes as they are written. And I’m not referring merely to the board and to this particular case, but to the Fed. Circuit having raised this non-conundrum. The sixth paragraph of §112 specifically refers to an element in a claim being expressed as a “means” or a “step.” As a consequence, if the claim does not include the word “means” nor the word “step,” then it is not construed according to §112, 6th paragraph. Thus, no ambiguity.
ReplyDelete"The Board first held that both claims were indefinite under the precedential opinion Ex parte Miyazaki:
ReplyDeleteWhen 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."
ZAZA ZAM. Now for Beauregards.
Robert Meyer said:
ReplyDelete>if the claim does not include the word
>“means” nor the word “step,” then it is not
>construed according to §112, 6th paragraph.
Haven't thought much about this issue. But I like your approach. We don't need 112P6 to invalidate this claim. Because a claim like this one -- that simply doesn't describe how the workpiece is moved -- still has to comply with written description and enablement.
Two comments.
ReplyDelete1. I would love for the Fed. Cir. to knock down this ridiculous Miyazaki decision.
2. I think this is a good example of confusing breadth with indefiniteness. For one, I don't think that the claim has to be read as a 112, 6th claim. For another, it is obvious to me that the skilled artisan would have known at least a few good ways to make the mechanism(s) move. That should provide sufficient 112 first support for the claim language, which covers any way of moving the mechanism(s). The specification need not describe, and preferably omits, that which is well known in the art. MPEP 2164.05(a).
"1. I would love for the Fed. Cir. to knock down this ridiculous Miyazaki decision."
ReplyDeleteAmen. If the examiners, and the APJ's, actually bothered to read the spec, they would see that there's only one BRI of the claims that is conistent with the spec and with the interpretation that would be given by POSITA. However, as none of the examiners, or APJ's, bother to read the spec, and as none of the examiners, or APJ's, are POSITA, and are to lazy to do the fact finding to establish OSITA, we are stuck with this idiotic "precedential" decision. Hopefully somebody will take it to the Fed. Cir. and get it struck down.
"2. I think this is a good example of confusing breadth with indefiniteness."
As the vast majority of the examiners don't understand either, you're probably right. They're confusing two concepts that they don't understand either of. Happens all the time.
"1. I would love for the Fed. Cir. to knock down this ridiculous Miyazaki decision.
ReplyDelete"
Prolly not gonna happen. At least one CAFC judge is already on our side :)
"For one, I don't think that the claim has to be read as a 112, 6th claim. "
You're absolutely right, it doesn't "have to be" but it "could be". That's why it got Miyazakied.
"Amen"
QQ moar nubcakes.
"As the vast majority of the examiners don't understand either, you're probably right. They're confusing two concepts that they don't understand either of. Happens all the time. "
Probably right, but still, qq moar nubcakes.
Kip Werking said:
ReplyDelete>I don't think that the claim has to be read
>as a 112, 6th claim.
Gotta disagree with you here. Though lack of "means" leads to a presumption *against* 112P6, I still don't see any structure *whatsoever* in the "mechanism adapted to move" limitation. In such a case, the case law clearly says the limitation should be treated under 112P6.
"the case law clearly says the limitation should be treated under 112P6. "
ReplyDeleteWhen it gets its presumption o validity maybe dearheart. But not while it's in this hea P T O.
Karen,
ReplyDeleteYou may be right about 112, 6th. In that case, my comments are limited to criticizing the portion of the opinion that consider the application outside the context of 112, 6th.
"Prolly not gonna happen. At least one CAFC judge is already on our side :)"
ReplyDeleteLOL Yeah, Plager is in yo' corner. So what?
At some point instead of issuing 5 page memos on how to apply 112, 2nd, and issuing "precedential" BPAI decisions, somebody at the PTO is going to figure out the best way to deal with this nonsense is for the examiners to follow the law and the MPEP. Put the BRI on the record in the first OA, and let applicant amend/argue around it. In the rare instance where there's more than one BRI that is consistent with the spec and the interpretation POSITA would arrive at, put the two (or more, but highly doubtful) BRI's on the record, and explain how the art is applied. Then let the applicant amend/argue around. Not that tough.
How appeals are reaching the BPAI, and the Fed.Cir., without the examiner putting the BRI on the record can only be explained one way: examiner incompetence. And some rampant incompetence on the part of the "quality assurance" types too.
Mr. Kappos, please fix this. You're are only hope.
I agree that appealing to the BPAI without a claim construction on the record is stupid. So *many* cases turn on claim construction without the Applicant ever realizing how the Examiner is interpreting the words in the claim. If the Applicant is lucky, he finds out in the Examiner's Answer. If he's not, he finds out when the Board performs claim construction.
ReplyDeleteBut while it seems like shoddy examination must be responsible for a lot of RIDICULUOUSLY UNreasonable interprations, I don't see that Examiner incompetence is the reason there is no claim construction on the record. Because I'm not aware of any Fed Cir case law, BPAI case law, or MPEP section that says Examiners *should* do this, much less *must* do this.
Not sure where the blame for this lies. If the Fed Cir actually held that "PTO is not required to put claim construction on the record during prosecution, then probably the Fed Cir. But I'm not aware of a case in which this was brought up as an issue. No doubt many Applicants are actually *against* the PTO putting claim construction on the record. Because Applicants might then be forced to argue against the Examiner's construction, and these statements will then be used to interpret the claims in litigation.
"Because I'm not aware of any Fed Cir case law, BPAI case law, or MPEP section that says Examiners *should* do this, much less *must* do this."
ReplyDeleteYou should read J. Plager's concurrence in Oetiker.
That goes doubly for you, 6tard.
"No doubt many Applicants are actually *against* the PTO putting claim construction on the record. Because Applicants might then be forced to argue against the Examiner's construction, and these statements will then be used to interpret the claims in litigation."
ReplyDeleteI don't agree with that. As the majority of "BRI" that I see actually fall into the category of BUI, I would prefer if the examiner put his/her nonsensical claim constrution on the record, up front, in the first OA, so I can address it.
The examining corps also needs a very intensive training class(es) in claim construction. Taught by somebody other than the utterly useless "quality assurance" types over there.
"At some point instead of issuing 5 page memos on how to apply 112, 2nd, and issuing "precedential" BPAI decisions, somebody at the PTO is going to figure out the best way to deal with this nonsense is for the examiners to follow the law and the MPEP. Put the BRI on the record in the first OA, and let applicant amend/argue around it. In the rare instance where there's more than one BRI that is consistent with the spec and the interpretation POSITA would arrive at, put the two (or more, but highly doubtful) BRI's on the record, and explain how the art is applied. Then let the applicant amend/argue around."
ReplyDeleteYou apparently have no idea how much of a boon this decision is to the office. It makes what used to be difficult decisions into easy ones. Those "people" who you think will get tired of sending out memos will only like Miyazaki more with time.
"Not that tough."
Lol, so what if the other interpretation is not covered by the art? There are so many other reasons why "it's not that tough" is so blatantly on its face false, if not an outright deception, that it is lolable.
"You should read J. Plager's concurrence in Oetiker."
What of it? I've read it before. Nothing there to impact the subject at hand JDtard.
"The examining corps also needs a very intensive training class(es) in claim construction. Taught by somebody other than the utterly useless "quality assurance" types over there. "
So why don't you teach it? Consider it as some pro bono work for patent law.
>There are so many other reasons why "it's not
ReplyDelete>that tough" is so blatantly on its face
>false, if not an outright deception, that it
>is lolable.
I believe the *it* in "it's not that tough" refers to The Examiner Putting Claim Construction on the Record.
You appear to be saying that The Exmaminer Putting Claim Construction is not that easy, ie, that it is tough.
Can you explain why?
BTW, I read the "put claim construction on the record" comment as applying to all cases, rather than being limited to cases where 112P6 might apply.
Karen,
ReplyDeleteYou wrote: "I'm not aware of any Fed Cir case law, BPAI case law, or MPEP section that says Examiners *should* do this, much less *must* do this."
Doesn't this fall within the Graham factor "the differences between the art and the claimed invention"? If the Examiner thinks that there is a difference, based on a fishy claim construction, I think that Graham would require the Examiner to put that on the record.
In general, it seems that Examiners and Applicants put too little emphasis on Graham during prosecution, even though the Supreme Court (in KSR and earlier) has repeatedly stated that it provides the fundamental factors for analyzing obviousness.
For example, I can scarcely remember seeing a single action from the PTO that characterized the level of skill in the art. Examiners seem to think that the level of skill is apparent from the art itself virtually 100% of the time, even if there are five different references directed to different technologies.
"I believe the *it* in "it's not that tough" refers to The Examiner Putting Claim Construction on the Record. "
ReplyDeleteNo "it" refers to making multiple alternate rejections to one claim. It takes long enough to reject one interpretation of 10-100 claims per case thank you very much.
Putting down a claim construction is, for me at least, easy. I often do something akin to it by simply writing down what I feel that the reference shows in the first action. That is what I'm construing the claim to cover. It isn't always verbatim what the applicant wrote in the claim, which is what many examiners put in the action, and which I used to do. Putting the findings that they are rejected over in your own words is, practically speaking, putting your claim construction on the record. It should be very clear to the attorney that the examiner has either interpreted the claim correctly or what they feel is incorrectly.
To be honest most of my cases do not come down to claim construction being that big of an issue.
" If the Examiner thinks that there is a difference, based on a fishy claim construction, I think that Graham would require the Examiner to put that on the record."
ReplyDeleteThat's because you're a rtard who doesn't understand Graham :( That's a problem because you're probably an attorney :( :( :(
>>"I believe the *it* in "it's not that tough"
ReplyDelete>>refers to The Examiner Putting Claim
>>Construction on the Record. "
>
>No "it" refers to making multiple alternate
>rejections to one claim.
But you're not the one that originally wrote "it's not that tough", are you? So it appears that you and I, as readers, disagree about what "it" referred to.
>I often do something akin to [claim >construction] by simply writing down what I
>feel that the reference shows in the first
>action.
I suppose whether or not I'd consider that an actual claim construction depends on what you really mean by "write down what the reference shows".
I'll give you an example of what I do *not* consider to be claim construction by an Examiner. My claim recites "widget". The Eaxminer says the reference teaches "widget", and cites to a section of the spec that teaches a "foobar".
That's *not* a claim construction. All that tells me is that the Examiner interprets "widget" so as to read on "foobar". It does not tell me what that interpretation is, ie, how widget and foobar are interpreted such that their meanings intersect.
Now ... suppose the Examiner instead said "Ref teaches a foobar that groks. A widget is interpreted to be an entity that groks. Therefore, ref teaches claimed widget."
That is claim construction: widget = entity that groks.
>Doesn't [claim construction] fall within the
ReplyDelete>Graham factor "the differences between the
>art and the claimed invention"?
No, that's not how I understand the "differences" factor. Differences come into play after claim construction, and after understanding what the references teach ("scope and content of prior art").
>I can scarcely remember seeing a single
>action from the PTO that characterized the
>level of skill in the art.
The PTO says that the Fed Cir says that's not necessary. I blogged about this a while back ("Examiner not required to make a finding of the level of skill").
It doesn't bother me too much not to have findings about level of skill.
What *is* important is an appreciation of the differences. Because the number of differences/degree of difference often points toward NONobviousness. Which is why I try to explain these differences even if the Examiner doesn't acknowledge them.
Karen,
ReplyDeleteIf "differences come into play after claim construction," then the Examiner must construe the claim, right?
"Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole." MPEP 2141.02.
I don't see how the Examiner can identify differences without construing the claim.
However, I think that your point is that, even if the Examiner has to interpret that claim, he does not have to set forth a explicit statement of the metes and bounds of the claim on the record. In other words, the Examiner can, in his/her head, interpret a claim feature as X. But the Examiner doesn't have to say in an Office Action: the claim feature means V-Z.
I think you are probably right about this. I think MPEP 2141.02 is probably the closest that you can get to a requirement that the Examiner do the sort of claim construction that we would like.
Karen,
ReplyDeleteAs for the "level of skill" - it is not always futile to ding the Examiner for this. See In re Vaidyanathan:
http://ipwatchdog.com/2010/05/21/newman-obviousness-foresight/id=10641/
where Judge Newman takes the Examiner to task for not making findings about the level of skill in the art.
You are right that the MPEP cites the CAFC for the proposition that it is sometimes not necessary to explicitly state what the level of skill is, if the level is apparent from the art. But 1. sometimes is not never, and I never see examiners do this, and 2. the MPEP says lots of things by selectively citing the CAFC, or paraphrasing the CAFC in a biased manner. Also, it often is *not* apparent, to even the most charitable and sophisticated patent attorney, what the level of skill in the art is (i.e. in the face of four different references, of various complexity, directed to various technologies). The Supreme Court has been very clear that the Graham factors define the obviousness analysis. I don't see how that analysis can meaningfully be conducted if the record is effectively silent about 1 of the 3 factors.
For the above reasons, I continue to cite the MPEP and In re Vaidyanathan in responding to many obviousness rejections.
>However, I think that your point is that,
ReplyDelete>even if the Examiner has to interpret that
>claim, he does not have to set forth a
>explicit statement of the metes and bounds of
>the claim on the record.
Yes, that's the way I understand the current state of the law. Implicit claim construction -- claim recites "widget"; ref teaches "foobar"; implication is that widget encompasses foobar -- appears to comply with the law.
>You are right that the MPEP cites the CAFC
ReplyDeleteYou are wise to be wary of the MPEP take on case law. Note that I've seen BPAI decisions that say the same thing (no explicit finding of level of skill required). Though some would say that you're wise not to assume that the BPAI got the law right either.
>it's *not* apparent ... what the level of
>skill in the art is (i.e. in the face of
>four different references, of various >complexity, directed to various
>technologies).
In such a situation, asking the Examiner to make a finding about the level of skill sounds like a good idea.
I would contrast making this argument in a context where it is relevant with a knee-jerk reaction to 103 that says "Examiner didn't make a finding of level of skill" when it doesn't seem particularly relevant -- in the face of case law that says an *explicit* finding is not always required.
>Supreme Court has been very clear that the
ReplyDelete>Graham factors define the obviousness
>analysis. I don't see how that analysis can
>meaningfully be conducted if the record is
>effectively silent about 1 of the 3 factors.
I read the BPAI decisions as saying that the record *does* contain an implicit finding about level of skill in the art because the references themselves are evidence of the level of skill.
"No 'it' refers to making multiple alternate rejections to one claim. It takes long enough to reject one interpretation of 10-100 claims per case thank you very much."
ReplyDeleteIf you find that you often have multiple broadest reasonable interpretations, you might want to consider the possibility that most of them, and most likely all of them except one, are not reasonable. The broadest reasonable interpretation that can be given a claim during examination is constrained by the requirement that the construction be in light of the specification as it would be interpreted by one of ordinary skill in the art. Sure, you can come up with a lot of interpretations if you ignore that requirement. But then those interpretations are not the broadest reasonable interpretation. The requirement that the BRI be consistent with POSITA's interpretation is there for a reason.
"It does not tell me what that interpretation is, ie, how widget and foobar are interpreted such that their meanings intersect. "
ReplyDeleteWell if it isn't apparent to you how he's interpreting it then there is always a phone on your desk and I'm quite sure you have like 2 minutes.
"I read the BPAI decisions as saying that the record *does* contain an implicit finding about level of skill in the art because the references themselves are evidence of the level of skill."
ReplyDeleteI don't want to hijack this thread. But I do want to ask:
What can that mean? Consider the following example. Suppose that three references are applied. One is a ten page reference about a general cell phone user interface. It looks like it could have been written by a college student (or smart high school student). Another is a 90 page complex reference about how packets are analyzed using advanced mathematics to efficiently move the packets. It looks like it was written by a Ph.d The third is a 30 page reference that relates to 3-D video game technology, and looks like it was written by a programmer with one or two years of experience.
How do those reference, without some analysis by the examiner, reflect what the level of skill in "the" art is? Which reference governs? If no reference governs, how are they merged to arrive at a single skill in the art?
The example that I use above is not that fanciful, either. It is routine for examiners, esp. new examiners, to cite 3 or 4 references in rejecting claims, even when those references are directed to different art units, and have significantly different complexity.
I recognize that the Board and CAFC have sometimes said that the art can reflect the level of skill. But in examples like the above, I don't see how those claims make any sense. Even if it is the law, it is bad law. I would like to think that, if pressed, the courts would acknowledge that the Examiner has to do more in situations like that (see In re Vaidyanathan).
"If you find that you often have multiple broadest reasonable interpretations, you might want to consider the possibility that most of them, and most likely all of them except one, are not reasonable."
ReplyDeleteI considered it. Still reasonable.
Thing is guys I pretty much only use this in the following situations.
1. Sloppy drafting (usually blatant, often a result of translation)
2. Claims that are intentionally drafted to have two or more interpretations. On their face even.
3. Claim construction dispute. Applicant feels it should be interpreted one way. I feel like it should be interpreted another way, or either his way or my way.
Zam. All 3 situations are easily diffused. What's more, if they argue (which is rare) 9 times out of 10 you get a response that admits that the applicant is not claiming what they consider to be their invention, but spells out much more clearly what they'd like to say. The response is so easy. Cite their response and the end of 112 2nd and say put it in the claim.
The whole situation is so easily diffused by the office taking this stance.
The only thing is the very very unlikely case where the applicant can't amend because he doesn't have good support for what he meant to say but which everyone knows he meant to say. And truly this is a drafting error. So, meh, there's always malpractice. And sometimes the PTO might let them slide anyway, especially if the record is clear.
>Claim construction dispute. Applicant feels
ReplyDelete>it should be interpreted one way. I feel like
>it should be interpreted another way,
Are you saying you give an indefiniteness rejection under Miyazaki when you spell out one [reasonable] interpretation and the Applicant proposes another?
>or either his way or my way.
Now, this is exactly what the Board said in Miyazaki: "we agree that widget could mean foobar or that widget could mean fubar, and we can't tell which one the Applicant meant."
Fact finder can't tell which one = indefinite.
[Assuming that Miyazaki makes sense, which I'm not sure I do.]
>But in examples like the above, I don't see
ReplyDelete>how [the Board and CAFC's position that the
>art reflects the level of skill in the art]
>the make any sense.
Haven't read those cases in quite a while, and don't have time to do it now.
Perhaps the relevant CAFC decisions are limited to situations where the references are more uniform / aren't so disparate as the example you gave. As I noted above, I think asking for a determination of level of skill makes sense in some scenarios. Certainly would for the scenario you gave in your last comment.
I didn't mean to imply that the case law says the level of skill in the art is always ascertainable solely by the references. Just that a knee-jerk reaction by Applicants to an Examiner not specifically addressing the level of skill in the art is misguided.
"Well if it isn't apparent to you how he's interpreting it then there is always a phone on your desk and I'm quite sure you have like 2 minutes."
ReplyDeleteRight. Because I'm sure it's always worth two minutes of your time to have an examiner tell you that the broadest reasonable interpretation of flexible is rigid, or the broadest reasonable interpretation of end is midpoint. Just pick up the phone. Then advise your client that in light of these entirely reasonable interpretations, you recommend abandoning the application.
"Are you saying you give an indefiniteness rejection under Miyazaki when you spell out one [reasonable] interpretation and the Applicant proposes another?"
ReplyDeleteAbsoposolutely. I thought I told you about this the other day. There is no better use for this type of rejection. It brings claim construction right straight to the forefront in an easy to understand format for the board to review. Either the board thinks my interpretation is unreasonable and the app's reasonable, or the applicant is rejected under my art, if the board thinks mine is reasonable and the applicant's unreasonable. And finally the applicant is rejected under 112 if both constructions are reasonable.
"Right. Because I'm sure it's always worth two minutes of your time to have an examiner tell you that the broadest reasonable interpretation of flexible is rigid, or the broadest reasonable interpretation of end is midpoint. Just pick up the phone. Then advise your client that in light of these entirely reasonable interpretations, you recommend abandoning the application. "
Whatever works for you man.