BPAI decisions that turn on grammar

Takeaway: Today I look at a few BPAI decisions where grammar was at issue. Claims involve a lot of phrases and modifiers, and it's challenging to write a claim so that it's clear what modifies what. If the drafter is not careful with grammar, the result can be a claim that is interpreted differently than the drafter intended.

Details: 
In some cases, the Board considers grammar during claim construction. The claim limitation at issue in Ex parte Chen was "the bonding part having a flat surface in contact with the substrate and being formed with a vacant region." The Applicant distinguished the reference by arguing that the vacant region in the reference was not part of the flat surface. The Board found that claim 1 did not require the flat surface to have a vacant region, but instead required the bonding portion to have a flat surface and a vacant region.

Ex parte Khosravi considered which nouns/noun phrases were modified by the adjective "tubular." The claim limitation at issue was "the tubular member being expandable from a collapsed state to an expanded state." The Applicant argued that the claim requires the member to be tubular in both the expandable and the collapsed state, distinguishing over the reference which was flat rather than tubular in the collapsed state. The Examiner took the position that under the broadest interpretation, it is the member that is tubular, not the state: "a collapsed, flattened tubular member ... still has the structure of a tubular member regardless of whether it is collapsed or expanded." The Board agreed with the Examiner, finding that the adjective "tubular" modifies "member" but not either of the claimed states. The Board then affirmed the anticipation rejection.

The claim limitation at issue in Ex parte Hayman was "a layer made from a thermoplastic material or a plastic bend material in the absence of a cavity." The Applicant distinguished over the reference by arguing that the layer in the reference included a cavity, thus implicitly interpreting the limitation as "a layer ... without a cavity." The Board instead read the phrase "in the absence of a cavity" as modifying the verb "made" rather than the noun "layer." The Board then treated "in the absence of a cavity" as a product-by-process limitation. Since the Applicant did not show how the claimed layer itself differed from the layer disclosed in the references, the prior art rejection was affirmed.

In other cases, the Board uses grammatical analysis in determining whether a claim is indefinite. In Ex parte Cummings, the Examiner found claim 4 to be indefinite because it was unclear which element was modified by "provided with."

4. An assembly according to claim 1 wherein said retarding means includes a cylinder filled with a fluid and a piston having a head portion displaceable in said cylinder, provided with restricted passageways therethrough including one-way valves.

The Board noted that the final phrase "might modify any one or more of the retarding means, the cylinder, the piston and the head portion." The Board found that the ambiguity significantly affected the scope of the claim, and that the specification did not resolve the ambiguity. The Board therefore affirmed the indefiniteness rejection.

Ex parte Blattner involved an application claiming priority to a Chinese application. Claim 1 was rejected as indefinite:

1. A reticle manipulating device
with an at least substantially closed housing for maintaining clean-room conditions inside the housing,
which has several functional units,
each of which conducts at least one function for the reticle inside the housing,
wherein a first functional unit is designed as an input/output station for introducing and discharging reticles in and out of the housing,
a manipulating device also arranged inside the housing for transferring the reticles from the input/output station to the at least one other functional unit and vice versa,
is hereby characterized by an interface of the functional unit,
by means of which the at least one functional unit can be connected to the reticle manipulating device. 

The Examiner could not determine which elements were modified by each of the clauses emphasized above. After four pages of careful parsing and analysis, and with some reference to the Applicant's specification, the Board found that the claim was not indefinite. The Board did say that the "is hereby" clause was "awkward."

My two cents: The reticle manipulating device claim in Ex parte Blattner made my head hurt. But I suppose really-hard-to-parse is not the test for indefiniteness.

If it was clear that the Examiner interpreted differently than I intended because of grammar, i.e., the Examiner was parsing the claim differently than me, then I'd strongly consider amending rather than arguing.

• the tubular member being expandable from a collapsed state to an expanded state =>
  the tubular member being expandable from a tubular collapsed state to a tubular expanded state

• a layer made from a thermoplastic material or a plastic bend material in the absence of a cavity =>
  a layer without a cavity, the layer made from a thermoplastic material or a plastic bend material

BPAI affirms indefiniteness for "remains heat-sealable" when no evidence offered for duration of the claimed property

Takeaway: In Ex parte Busch, the BPAI rejected arguments about an indefiniteness rejection as mere attorney argument and hearsay. The claim on appeal was directed to a film with a flame treated surface layer "wherein said flame treated surface of the maleic anhydride-modified polyolefin layer remains heat-sealable." The Board affirmed an indefiniteness rejection because the Specification did not "show any required time period for the ... layer to 'remain heat sealable'." The Appeal Brief argued that the required time was long enough to be used in a packaging application, but the Board rejected this as mere attorney argument. The Reply Brief included several pages of technical explanation, but the Board criticized this information as hearsay rather than evidence.

Details:
Ex parte Busch
Appeal 2009002956, Appl. No. 10/484597, Tech. Center 1700
Decided August 18, 2009

Claim 12 was at issue.

12.  A coextruded, biaxially oriented polyolefin film for heat
sealing, wherein the film comprises
at least one outer top layer,
wherein said top layer has been surface-treated by means of a flame on the surface of the said top layer and wherein said flame treated surface of the maleic anhydride-modified polyolefin layer remains heat-sealable.

 The Examiner found that the claimed invention uses known flame treatment described in a European Patent. The specification also states that "it is necessary here that the heat-sealable surface can be flame-treated in order to increase the surface tension without impairing the heat sealability." The Examiner rejected claim 12 as indefinite because the specification did "not show any required time period for the flame treated maleic anhydride-modified polyolefin layer to 'remain' 'heat sealable'."

In the Appeal Brief, the Applicant asserted that the element was not indefinite because the layer "must be heat-sealable at least long enough to be used in a packaging application" and "this would be known to a person of ordinary skill in the art."

In the Reply Brief, the Applicant submitted several pages of technical details "to more easily understand the differences between heat sealing and adhesion and why adhesion is affected by a dropping surface tension while the heat sealable is not."

The Board found that the Applicant's interpretation of "remains heat sealable" to be a period long enough to be used for packaging was nothing but attorney argument, rather than evidence by a person of ordinary skill in the art.

To establish the meaning of "remains heat-sealable" to one skilled in the art, Busch-through counsel-"testifies" that one skilled in the art would know that the surface must be heat-sealable at least long enough to be used in packaging applications. Appeal Brief, page 8. For a long time, PTO practice-based on binding precedent-has been that counsel's "testimony" is not evidence. See, e.g., In re Walters, 168 F.2d 79, 80 (CCPA 1948); Estee Lauder, Znc. v. L'Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997).

The Board then analyzed the technical information offered in the Reply Brief. The Applicant described this as information provided by the "applicant" to the "undersigned." The Board found the presentation of this information to be riddled with problems.

In the non-entered Reply Brief, Busch attempts to tell us that "applicant" has informed the "undersigned" of certain technical facts, all of which are then set out in excruciating detail in the Reply Brief. Busch should not be surprised that the Board will not give any weight to this  "testimony." First, we have no idea what counsel means by "applicant." Is applicant one of the inventors? Is applicant an employee of the assignee? Second, we assume "the undersigned" is counsel for Busch. Third, what the "applicant" purportedly told counsel is hearsay to the extent Busch relies on applicant's statements to establish the truth of those statements. Fourth, the "testimony" was belatedly presented in a Reply Brief thereby depriving the Board of the benefit of the Examiner's view of the accuracy or relevance of the "testimony." We decline to give any weight to the belated "testimony" presented in the Reply Brief.
(Emphasis added.)

The Board then affirmed the indefiniteness rejection, noting that "[w]e, like the Examiner, have no idea on this record what "remains heat-sealable" means in the context of this invention."

My two cents: This case teaches an important lesson: don't go to appeal with only argument when what you really need is evidence. You might not realize this unless you are familiar with the case law. In my experience, not many Examiners notify the Applicant that evidence is required. The Board, on the other hand, routinely tells Applicants that attorney argument on a specific point will be ignored because evidence is required. However, you've wasted the time and cost of an appeal if you wait for the Board to tell you. 

Prosecution gone wrong

Examiner Interviews are widely viewed as a great way of making forward progress in an application. This was certainly not what happened in one file history that I ran across, where prosecution seemed to go off the rails as a result of an Examiner Interview. Or, more accurately, as a result of the Examiner's Interview Summary, which (according to the Applicant's representative) accused the Applicant's representative of bribing the Examiner!

Here are the juicy details. After a Final Office Action which included prior art rejections, an interview was conducted to discuss claim amendments to overcome the outstanding rejections. The Examiner's Interview Summary said:

The Examiner indicated that such an amendment would define over Hartigan et al as a 35 USC 102 reference, but indicated that the amendment would be subject to further search and/or consideration. [Applicant's representative] then asked if the Examiner would guarantee that if he filed an RCE with said amendment, the Hartigan et al reference would not be applied to the claims in a 35 USC 103 rejection and the Silvis et al and Benett et al references also would not be applied under 35 USC 102 or 35 USC 103. The Examiner stated that he could in no way guarantee that such would happen ... noting that the claims would be subject to further consideration and/or search. [Applicant's representative] then noted that I would receive two counts upon filing of the RCE. The Examiner acknowledged this and noted that examiners are not in the habit of trading counts for guaranteeing that certain prior art references would not be applied to the claims. [Applicant's representative] then indicated that he would go to appeal, noting that he had a 60% chance of winning the appeal. The Examiner stated that he has every right to appeal, and could proceed as he wished.

The Applicant filed a Notice of Appeal and an Appeal Brief. The Applicant simultaneously filed an After Final Response which included an Interview Summary.

In the Interview Summary, the Applicant's representative took offense at the Examiner's use of "trading counts" in the Examiner's Interview Summary. According to the Applicant's representative, the Examiner had accused the practitioner of bribery, an allegation which amounted to defamation. The patent practitioner then asked the PTO to reprimand the Examiner and reassign the application to another Examiner.

Here's the Applicant's Interview Summary:

     It is Applicant's belief that the Examiner has willfully fabricated false information in the Interview Summary dated 10/24/06. It is also Applicant's belief that the Examiner has deliberately attempted to keep communications out of the filewrapper.
     The tone of the third-to-last sentence of the Examiner's Interview Summary (see Exhibit A) falsely accuses Applicant's attorney of bribery. Applicants submit such a  statement is not only defamatory, but cannot be supported by the communication between the Examiner and Applicant's attorney of record. Further, the Examiner's statement that Applicants' required a guarantee with respect to the application a 35 USC 103 rejection in view of as-yet-to-be-performed search not only absurd, but patently false. Moreover, the Examiner has made these and other  inflammatory and defamatory remarks a matter of permanent record. This is outrageous and should not be permitted to stand.
     Applicants respectfully request that the Examiner's Interview Summary dated 10/02/2006 be stricken and removed from the record of prosecution in this case.
     Due to the substantial differences in the Examiner's and Applicants' accounts of the Interview and the fact that the Examiner did not comment or question the accuracy of Applicants' summary the Examiner's Interview Summary has failed to comply with at least MPEP 713.04.
     It is clear that at best there has been a serious breakdown in communication between the Examiner and Applicants' attorney of record, and at worst there has been retaliatory action's taken by the Examiner.
     Regardless, it is Applicants' belief that these differences will likely prevent future communications between the Examiner and Applicants' attorney of record from being open and productive. Therefore, Applicants respectfully request reassignment of the instant application to another Examiner. Moreover, Applicants consider these matters to constitute a serious breach of [the Examiner's] professional responsibility and respectfully request that this case be referred to [the Art Director] with the recommendation that [the Examiner] be formally sanctioned for his unprofessional conduct.
     In the event of reassignment of the instant application to another Examiner, Applicants would be willing to file an RCE and withdraw their appeal in favor of permitting the newly assigned Examiner a full and fair opportunity to review the case as well as to conduct an updated search.

Are you wondering how this all came out? The application went on to appeal, where the Board affirmed the prior art rejections. The Applicant's request for reassignment to a new Examiner was ignored — as it should have been. Procedurally, this sort of request is handled via a Petition, not an After Final response.

I wonder what the client thought about all this. The client was a large corporation, presumably with access to other outside counsel. Would it make sense for the client to switch to another attorney for this particular case? Not to punish the attorney. Purely as a practical matter, because the relationship between the attorney and the Examiner had deteriorated so badly. Or is the relationship with Examiner irrelevant for this particular application because it was on appeal?

First post-Bilski Federal Circuit decision upholds software method claims

Takeaway: In the first Federal Circuit decision to apply Bilski v. Kappos, the court held that two software method claims for halftoning gray scale images were not abstract, and so reversed the district court's invalidation under § 101. (Research Corp. Tech. v. Microsoft Corp., 2010-1037, Fed. Cir. 2010.) The claims did not recite a computer, but the court found that the "invention presents functional and palpable applications in the field of computer technology."


Details:
Research Corp. Tech. v. Microsoft Corp.
Fed. Cir. 2010-1037
December 8, 2010

The district court invalidated two method claims under § 101. A sample claim reads as follows:

11.  A method for the halftoning of color images, comprising the steps of
utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images,
wherein a plurality of blue noise masks are separately utilized to per-form said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

The Federal Circuit's analysis first noted that "in this case, the subject matter is a 'process' for rendering a halftone image." The court found that this subject matter qualifies as patentable subject matter under both the explicit category list in § 101 and the definition of process under § 100 ("The term 'process' means process art, or method ..." ).

The court then proceeded to examine the three patentable subject matter exceptions in the Supreme Court's jurisprudence: laws of nature; physical phenomena; and abstract ideas. Since the parties agreed that the claims were not directed to laws of nature or physical phenomena, the court then considered whether the subject matter amounted to an abstract idea. The court decided that the subject matter was not abstract:

   The court perceives nothing abstract in the subject matter of the processes claimed in the ’310 and ’228 patents. The ’310 and ’228 patents claim methods (statutory “processes”) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask. The invention presents functional and palpable applications in the field of computer technology.
... The fact that some claims in the ’310 and ’228 patents require a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” also confirm this court’s holding that the invention is not abstract. 

The court acknowledged that the methods included algorithms, and even that those algorithms were a "significant part of the claimed combination." Even so, the algorithms "do not bring this invention even close to abstractness that would override the statutory categories and context." Using language from Diamond v. Diehr, the court found that "the patentees in this case 'do not seek to patent a mathematical formula' " but instead " 'seek patent protection for a process of' halftoning in computer applications."


My two cents: Definitely a pro-software decision. I would expect district courts to uphold software claims when applying this decision.

The decision is consistent with my understanding of "abstract." And more specifically, my position that claims that cover a computer implemented method cannot, by definition, be abstract – i.e., the computer takes the claims out of the realm of the abstract idea and into the physical world.

I was mystified by all the talk about "the invention" and "the subject matter of the invention." I'm used to thinking about claims, and considering whether claims cover patentable subject matter. I wonder if the talk about the "subject matter" relates to reading claims in the context of the specification. Certainly these claims are limited to a computer implementation unless you ignore the entire specification and what it means to a person of ordinary skill in the art.

I'm glad to have some post-Bilski guidance from the Federal Circuit. But does RCT v. Microsoft provide much guidance for evaluating tougher cases? Does the decision amount to "we know abstract when we see it, and this ain't it" ?

So far we have two guideposts. Bilski's invention, which didn't mention computers in the claims or the spec, is abstract. RCT's invention – which under a reasonable reading clearly ties to a computer even though a computer isn't positively recited – is not abstract. I see those guideposts as being pretty far apart, and we'll have to wait for other cases to fill out the stuff in between.

BPAI finds that meaning of "integral" argued by Applicant (to avoid 112) reads on reference

Takeaway: In Ex parte Blau, the Applicant relied on the door in the claimed animal trap being "integral" to distinguish over the reference. The Applicant also stated, in responding to a written description rejection, that all drawings show a door of "integral construction." The Board found that the door in the reference "has an integral door as much as the present invention does" even though it had a separately manufactured lure housing, because one of the Applicant's drawings showed a similar construction. Thus, the construction of "integral" specifically argued by the Applicant read on the reference.


Details:
Ex parte Blau
Appeal 2009010556, Appl. No. 11/187,098, Tech. Center 3600
Decided July 16, 2010

The claim at issue was:

1. A humane animal trap comprising:
an elongated plastic enclosure having at one end a rectangular opening for permitting entry by an animal; and
an integral one-way door hinged to a top of said opening ...

Applicant added the term "integral" to the claim in response to the first Office Action. The Examiner then issued a prior art rejection with a different reference, along with a § 112 written description rejection. In response to the written description rejection, the Applicant argued that “[t]hroughout the description of the invention, in the application as filed, and in all of the drawings, only doors of integral construction are shown or described.” The Examiner maintained the written description and obviousness rejections, and the Applicant appealed.

The Board reversed the written description rejection. The Board first noted that the specification did not use the word "integral." However, "Figures 1-3 of the drawings illustrate doors that consist of or are composed of parts that together constitute a whole." The Board said this finding was bolstered by this statement in the specification: "Referring first to FIGS. 1-3 there is illustrated an animal trap of the enclosure type, consisting of only two discrete parts, including ...a one-way metal or hard plastic door 12."

The Board then analyzed the obviousness rejection. The Applicant argued that the door in the reference "is not of integral construction, in that it is made up of a door panel 30, and lure housing 38 that is detachably mounted on the door panel, and a lure 40 placed within the housing." (Fig. 3 of the reference is shown below.)

The Board did not agree that the reference (Stahl) described a detachable lure housing, but did find that Stahl described "a separately manufactured element (the lure housing 38) mounted on the rear surface of the door." Despite the presence of a separately manufactured lure housing 38, the Board nonetheless found that Stahl had an integral door under the meaning argued by the Applicant.

Explaining its reasoning, the Board stated that the Applicant's specification described the doors of Fig. 4 and Fig. 5 as "separately manufactured." (Fig. 4 of the specification is shown below.)

Yet the Applicant's Appeal Brief argued that the (separately manufactured) doors illustrated in Figs. 4 and 5 were "integral." Therefore, despite the presence of a separately manufactured lure housing 38, the Board found that “Stahl has an integral door as much as the present invention does."

Despite finding that the claimed integral door read on the door in the reference, the Board ended up reversing the obviousness rejection because another claimed element was missing from the combination.


My two cents: Be careful what you ask for. The Applicant convinced the Board that the spec and drawsings supported "integral" – but in doing so admitted that "integral" covered "separately manufactured."

Since the door in Applicant's Fig. 4 looks an awful lot like the door in the reference, maybe the Applicant should have stayed away from Fig. 4 in arguing written description. Using Fig. 3 wouldn't have been so harmful, since it does not look to be of two piece construction like Fig. 4, nor did the spec describe the door in Fig. 3 as "separately manufactured." It looks to me like Fig. 3 showed possession of an integral door embodiment, which should be enough to overcome the written description rejection.

It seems to me that the Applicant could have used Fig. 3 as support for an integral door and still argued that the door in the reference was not integral. Instead, by arguing that all embodiments showed doors of integral construction, the Applicant walked himself into an admission that the reference showed an integral door.

Back to blogging

I've had less time to devote to blogging in the past few weeks, since I've been busy with a lot of end-of-year filing deadlines. I'll start ramping up my posts this week, and I hope that by next week, I can return to my normal blogging schedule of 3 posts per week.

Arguments guaranteed to lose: "but look at these similar claims in other issued patents"

Takeaway: Occasionally Applicants make an argument which amounts to "the rejected claims are similar to claims that appear in these issued patents, so the Board should reverse the rejection." The BPAI ignores these arguments, relying on CCPA precedent: "In reviewing specific rejections of specific claims, we do not consider allowed claims in other applications." In re Gyurik, 596 F.2d 1012, 1016 n. 15 (CCPA 1979).

Details: Applicants often use this argument in § 101 rejections (see, e.g., Ex parte Ward and Ex parte Kelkar.) and occasionally for indefiniteness (see, e.g., Ex parte Cochran).

My two cents: Applicants seem to use this as a general appeal to fairness rather than as a legal argument. After all, if dozens of patents issued the week before you file your appeal brief with the phrase "computer implemented method", it hardly seems fair that your claim with the same preamble is rejected under § 101. Perhaps this type of fairness argument is really aimed at the Examiner — after all, the Appeal Brief is your last chance to persuade the Examiner. I have no idea whether this works with Examiners. But it doesn't work with the Board.

A much more creative argument appeared in Ex parte Haines, where the Applicants made a constitutional equal protection argument in fighting a § 101. (Seriously.) The Board ignored that one too, noting that "Appellant has not cited any authority in support of the novel legal argument." For more details, see this post at The Florida Patent Lawyer Blog.

Responding to new case law after an appeal brief is filed

Takeaway: If you have a case on appeal to the BPAI and new case law comes out that affects arguments made in your Appeal Brief, you can file an updated brief to address the new case law. For example, the Applicant in Ex parte Ahluwalia filed a "Letter Brief" to discuss In re Vaidyanathan, and the BPAI did consider the new arguments.

The Applicant in Ex parte Candy tried a different tack and didn't fare so well. After the BPAI affirmed the Examiner's rejections, the Applicant used a Request for Rehearing to ask for permission to file a new Appeal Brief, to present "new arguments responding to the extensive changes in patent law and in the rules and procedures of the BPAI." The Board denied the request because the Applicant didn't point out any specific changes in the law that would "render the Board's decision in error."

Details:

The Letter Brief in Ex parte Ahluwalia referenced In re Vaidyanathan, a decision in which the Federal Circuit reversed an obviousness rejection that had been affirmed by the BPAI. In doing so, the Federal Circuit stated that while the Examiner may rely on common sense as providing a reason to modify, "the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious." The Letter Brief argued that the rejection was deficient under In re Vaidyanathan because the Examiner didn't explain but merely made conclusory statements. The BPAI disagreed, and explained why the Examiner had provided articulated reasoning with some rational underpinning.

The Applicant in Ex parte Candy referred vaguely to "extensive changes" in the law and BPAI rules. I'm not sure what he had in mind. KSR had been out for about a year when the Applicant filed the Appeal Brief. Bilski v. Kappos was just out, but was irrelevant because no § 101 rejections were present. And the BPAI rules had not changed – the extensive BPAI rules package from December 2008 was never put into effect.

My two cents: MPEP 1205.02 makes reference to filing a "supplemental paper", but no details. So it's useful to have Ahluwalia an example application to look at. The Letter Brief is available in Public PAIR.

This supplemental filing might be useful in some cases. For example, there are tons of applications pending before the BPAI that are affected by Bilski v. Kappos. You can do nothing and take your chances with machine or transformation test arguments in an already filed Appeal Brief. But the BPAI might decide that your claim involving a machine is still abstract. A Letter Brief would give you the opportunity what this isn't so – perhaps using some of the factors from the PTO's Bilski guidelines. Something to consider.