BPAI affirms obviousness of combining computerized rule processing from three different settings

Takeaway: The Applicant appealed an obviousness rejection of claims directed to rule-based processing of medical records. The Applicant attacked the rationale for combining by focusing on the three very different technology areas in which the references used rule processing. The Board affirmed the rejection, finding that it was obvious to combine teachings about network configuration rules and document management rules to the primary reference's teachings about patient rules. "The Examiner applied Harsham simply to show the unremarkable fact that one of ordinary skill knew that using rules to set parameters in a computer system simplified tasks. ... The Examiner applied Vulpe simply to show how one of ordinary skill might implement the records management required by Kerr, with the aid of Harsham’s rules, by using Vulpe’s architecture for records management." Ex parte Schoenberg, BPAI 2011.

Details:
Ex parte Schoenberg
Appeal 2010006290; Appl. No. 10/825,352; Tech. Center 3600
Decided November 17, 2011

The claims on appeal were directed to processing medical records. A representative independent claim on appeal read:

     1. A rule processing computer-based method comprising:
      [1] receiving user input to a processor-based computer for defining a computer-executable rule ... [which] causes the computer to identify a target group of patients chosen from a group of existing patients;
      [2] receiving user input to the computer defining ... a computer-executable action to be taken by said computer concerning one or more patients within the target group of patients;
      [3] scheduling ... an execution time for the action;
      [4] processing, by the computer, a plurality of computer-based medical records against said computer-executable rule to determine one or more of said medical records that satisfy the rule,
           wherein each of the medical records contain at least a portion of a corresponding patient's medical history stored to computer-readable medium; and
      [5] initiating by the computer, in accordance with the scheduled execution time, the action concerning corresponding patients to which the determined one or more medical records that satisfy the rule relate.
(Emphasis added.)

The independent claims were rejected as obvious over a combination of three references. According to the Examiner, the primary reference Kerr taught everything except elements 1 and 4 (emphasized above). Secondary references Harsham and Vulpe were relied on for elements 1 and 4, respectively. As a motivation for adding Harsham to Kerr, and Examiner offered "having a means of configuring a computer network in an object-oriented manner" as taught by Harsham. As a motivation for adding Vulpe to Kerr and Harsham, the Examiner offered "having a means of determining which records satisfy a particular rule" as taught by Vulpe.

On appeal, the Applicant first argued that the combination did not teach elements 1 and 4, focusing on the fact that neither secondary reference had anything to do with medical records. Harsham was directed to network management and the rules in Harsham were used to define configuration parameters for network devices. "Harsham simply makes no mention or suggestion whatsoever of any rules that pertain in any way to patients or to medical references." Vulpe was directed to document management, and describes intersection rules that relate to document architecture. "Vulpe simply makes no mention or suggestion whatsoever of any rules that pertain in any way to patients or to medical records."

The Applicant then argued the Examiner had not provided sufficient rationale to combine. The Applicant again focused on the fact that the references came from different technology areas: monitoring delivery of drugs to patients; configuring a computer network; and document management. "Sufficient rationale has still not been provided to establish why one ordinary skill in the art would be motivated to combine such disparate teachings in the manner applied by the Examiner absent the use of impermissible hindsight in which the present application is used as a blue print to piece the element together in the manner claimed."

In the Answer, the Examiner maintained the rejection without further explanation.

The BPAI affirmed the obviousness rejection. The Board began by noting that in arguing elements 1 and 4, the Applicant had improperly attacked individual references. "The Appellant contends that Harsham fails to describe medical records, although it is Kerr that is applied for such records. ... The Appellant contends that Vulpe does not suggest medical records. Again, the Appellant is attacking the references separately, even though the rejection is based on the combined teachings of the references."

The Board then commented that the Applicant's attack on the rationale for combining was misplaced. While the Applicant focused on the different technology areas in which rules were used in the three references, the Examiner applied the more general teachings of the reference:

The Examiner applied Harsham simply to show the unremarkable fact that one of ordinary skill knew that using rules to set parameters in a computer system simplified tasks. As Kerr describes a medical computer system, Harsham simply shows that one of ordinary skill new that Kerr’s administration could be simplified by using rules. Vulpe shows how to improve the organization of documents using a document management system. The Examiner applied Vulpe simply to show how one of ordinary skill might implement the records management required by Kerr, with the aid of Harsham’s rules, by using Vulpe’s architecture for records management.

My two cents: I think the Board's rationale is persuasive. But there is a more important lesson here.

My first impression of the Applicant's arguments was: the Applicant completely missed the boat by not addressing the combination. (A topic I have written about before here as "Mistake #5: Failure to address the combination".)

On further reflection, I see failure to address the combination as the symptom of a bigger problem: focusing on the specific teachings of the references rather than the more general understanding which a POSITA would get from the references.The lesson here is thus: be on the lookout for what a reference teaches in general and don't get stuck in the details.

Here, the Applicant focused on the different areas in which the three references applied rules to record processing: healthcare information systems; network management; and document management. By focusing on the different fields of application, the Applicant appeared to miss what a POSITA would see in all three references about rule processing in general.

The Board did a good job of explaining how the secondary reference Harsham, when read with a focus on the big picture rather than the details, fit with the primary reference Kerr. Harsham stood for the general teaching that users can create rules to define parameters and these rules can be applied to data – rather than the specific teaching that users can create rules to define configuration parameters for network devices and these rules can be applied to data describing network devices. When this general teaching in Harsham is combined with Kerr's use of rules in a different context – to identify groups of patients –  the result something that's at least in the ballpark of Applicant's claim limitation 1.

Said another way:

receiving user input defining a rule which causes the computer to
[specific teaching of 2nd reference = ] define network configuration parameters
[generalized to => ] define parameters
[applied to heatlhcare context of 1st reference => ] define parameters which identify a target group of patients chosen from a group of existing patients;

Here, the Examiner did give an important clue as to how he was generalizing the secondary reference – as long as you read the rejection very carefully. After acknowledging that the primary reference did not teach limitation 1, the Examiner asserted that the secondary reference taught not 1, but 1' :

receiving user input to a processor-based computer for defining a computer-executable rule

Thus, it's clear upon careful reading that the Examiner is relying on primary-modified-by-secondary to get from 1' to 1.

A similar analysis holds for limitation 4, taught by the third reference:

[specific teaching of 2nd reference = ] processing document intersection records against the document intersection rule to determine one or more of said document intersection records that satisfy the rule
[generalized to => ] records and rules
applied to heatlhcare context of 1st reference => ] processing medical records against the rule to determine one or more of said medical records that satisfy the rule

Examiners don't always clearly explain how they are abstracting a feature from one reference and applying the abstraction in the specific context of another reference. But I believe many obviousness rejections can best be understood using this sort of framework.

So Applicants, the next time you find yourself saying "X teaches a widget and Y teaches a green blodget, but neither reference teaches my blue widget", I challenge you to step back and think instead about what the reference says about widgets in general, about colors as applied to blodgets, and about how widgets might be similar to blodgets. With this in mind, you can then evaluate whether or not the combination teaches the element in question, and further, whether the combination is proper.

BPAI says magazine article "The Future of TV" is an enabling reference

Takeaway: The Examiner used a magazine article "The Future of TV" as a secondary reference in an obviousness rejection. The Applicant argued that the reference was not enabling, and pointed to statements in the reference explicitly stating that not all of the described features existed at the time of publication. The Board reversed the obviousness rejection after finding that the combination did not teach all the elements, but also found that the reference was enabling because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." (Ex parte Karaoguz, BPAI 2011.)

Details:
Ex parte Karaoguz
Appeal 2010004430; Appl. No. 10/667,036; Tech. Center 3600
May 9, 2011

The claims on appeal were directed to delivering media content.

The Examiner rejected all claims as obvious over a patent publication (Schein) and a magazine article ("The Future of TV"). The Examiner took the position that Schein taught every claim element except one, then relied on The Future of TV for the element "customizing content or wherein the at least one user defined media channel is pushed from the first home to other authorized users at locations that are separate and distinct from first home."

The Applicant appealed the rejection. In the Brief, the Applicant first argued that the combination did not teach creating user defined media channels which were pushed from one home to another. The Applicant also argued that "The Future of TV" was not an enabling reference, as it described a potential system rather than a system in existence at the time the article published.

To support this argument, the Applicant pointed to explicit statements in the article that "the future of television is just around the corner," "the pieces just have to be improved and linked together in the right way," and "connecting the chain will be no small feat" – admissions that the features did not exist at the time of publication. Moreover, the Applicant noted, the article specifically points out the deficiencies in existing systems:

What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers. ... We still won't have custom TV until companies find the best model for integrating digital content, distribution and the platform.

The Examiner's Answer contained this response to the Applicant's arguments:

Future TV teaches a detailed plan to customize television and push user defined channels. Future TV further states that this is the direction that television is moving since 1999 and discusses the ways in which companies may go about customizing access. The Appellant further argues that Future TV is forward looking and does not describe the technology as it existed at the time the article was written. In response, the Appellant's assertion is a conclusion, and there is no support on record to the contrary.

In a Reply Brief, the Applicant explained that rather than being conclusory, the assertion was explicitly supported by the reference itself. In contrast, "[t]he Examiner's Answer provides absolutely no evidence that the public was in possession of the 'future' technology discussed in The Future of TV at the time that reference was published."

The Board reversed the rejection, based on the finding that neither reference taught the feature of pushing a user created channel. "As the Appellants argue, Schein generally creates a channel selection database for controlling the selection of existing channels rather than creating and pushing a new channel."

The Board also commented about Applicant's argument about the lack of enablement in "The Future of TV." The Board said the argument was not persuasive because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." This in turn was based on an underlying finding of fact made by the Board: "The technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill. Future TV 35."

My two cents: The Board completely mischaracterized the teachings of The Future of TV, and Finding of Fact #6 about Future TV is way off base! What the reference actually says about "existing technology" is this:

Much of the broadcast, reception and display technology needed to let you see whatever show you want, whenever you want, on whatever screen you want, exists. The pieces just have to be improved and linked together in the right way. Connecting the chain will be no small feat. ... What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers.

Because the article says that some of the technology exists, that means some of it doesn't. And I read the statement that "the pieces need to be improved" to really mean that the system won't work until the pieces are modified.

Given the above, how can you possibly say that "the technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill" ? Now, I'll admit that it's possible that a POSITA, at the time of invention, could have taken these few general statements which vaguely refer to existing features and modify them to produce the claimed feature. That is, it's possible the claimed feature was obvious in view of these teachings. But no such evidence was introduced! So there's no way the Board had enough evidence in the record to reach the conclusion that the reference enabled the claimed feature.

This is the most egregiously unsupported finding of fact that I've seen in a while.

BPAI reverses indefiniteness of dependent claim using "comprising" when independent claim used "is one of"

Takeaway: An Examiner rejected as indefinite a dependent claim that included the limitation "the component comprising," as contradicting the recitation in the independent claim "wherein the component is one of." The Examiner took the position that the term "is" in the independent claim operated as a closed transition, and that the dependent claim was indefinite for adding additional components excluded by the closed transition. The BPAI reversed the indefiniteness rejection. To determine whether "is" was an open or closed transition, the Board reviewed the Applicant's specification. The Board concluded that the Applicant did not intend to limit the component to only those components recited in claim 1, so that claim 1 was open to components in addition to those explicitly recited in the claim 1 "wherein" clause. The Board therefore reversed the indefiniteness rejection of the dependent claim. (Ex parte Faguet, BPAI 2011.)

Details:

Ex parte Faguet
Appeal 20120012312; Appl. No. 11/094,461; Tech. Center 1700
Decided:  November 9, 2011

The technology of the application on appeal involved a system used in manufacturing semiconductors. A representative set of claims on appeal read:

1. A plasma enhanced atomic layer deposition (PEALD) system comprising:
     a process chamber;
     ...
     a chamber component exposed to said plasma and made from a film compatible material having at least one molecular component in common with said predetermined film,
     wherein the chamber component is one of a wafer lift pin, a wafer centering ring, a[n] alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt.

2. The PEALD system of claim 1, wherein said chamber component comprises a gas injection plate.
3. The PEALD system of claim 1, wherein said chamber component comprises a substrate holder.
4. The PEALD system of claim 1, wherein said chamber component comprises a contaminant shield.
5. The PEALD system of claim 1, wherein said chamber component comprises at least one of an electrode, a shower head, a grid, a focus ring, a dispersion plate, a gas injector, a shield, a clamp ring, a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a door, a hanger, a hinge, a holder, a gas a diffuser, a chuck, a screw, a nut, or a bolt. 

During prosecution, the Examiner rejected the independent claims as anticipated. Dependent claims 2 and 3 were also rejected as indefinite. The Examiner explained the indefiniteness rejection by stating "it is not possible for the chamber component to be both the component claimed in claim 1 and the different component claimed in claims 2 and 3."

The Applicant appealed, and argued against the indefiniteness rejection by explaining that claim 1 enumerated a list of chamber components, and claims 2 and 3 merely added to this list. The Applicant went further to say that the Examiner had not made a prima facie case of indefiniteness since the Office Action "provided no reasoning as to why a person of ordinary skill in the art would not understand that the list of chamber components can also include the claimed gas injection plate substrate support."

In the Answer, the Examiner added a new indefiniteness rejection of claims 4 and 5 using the same reasoning. The Examiner also elaborated on the indefiniteness rejection:

     [C]laim 1 requires that "the component" be one of a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt. Claim 2 and 3 require "the component" to be something else. Applicant has not addressed how "the component" can be a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt and at the same time be a gas injection plate or substrate holder. Thus the claims are indefinite.
     The Examiner further notes that if claims 2-5 were to be read as argued by the Applicant, claims 2-5 would be improper dependent claims because they would not further limit claim 1, in that, they would add to the list of possible components not limit the list of components, and a rejection that read on claims 2-5 may not read on claim 1. 

The Board addressed the indefiniteness rejection by first noting that the rejection was premised on treating of the transition word "is" (in the phrase "the component is one of") as a closed transition. "Non-conventional transitional phrases (i.e., other than 'comprising,' 'consisting essentially of,' and 'consisting') are interpreted in light of the Specification to determine whether open or closed claim language is intended." (Internal citations omitted.)

Looking to the Applicant's specification, the Board found that the Applicant intended "is" to be an open-ended transition. The Board found that the Specification described an example embodiment in which the chamber components include those recited in dependent claims 2, 3, and 4 (gas injection plate, contaminant plate, and shield). But the specification also gave a list of other components which may be exposed to the chamber, and this list included the components recited in independent claim 1 (wafer lift pin, a wafer centering ring, etc.).  In view of these statements, the Board found no preferred embodiment that limited the chamber component to either the components in claim 1, or to the components in dependent claims 2-5.  The Board concluded that:

Appellants did not intend to limit the chamber component to only those components recited in claim 1. Rather, we interpret claim 1 as open to including chamber components in addition to those explicitly recited in the claim 1 "wherein" clause.

Under this construction, the Board reversed the indefiniteness rejection of the dependent claims.


My two cents: I agree with the Board that the embodiments in the spec weren't limited to chamber components from set A (claim 1) or from set B (claim 2 or 3 or 4 or 5).  Trouble is, I'm not sure that's what the Applicant claimed.

As a matter of plain English, "component is a nut" doesn't mesh with the further limitation the "component includes a gas injection plate.  I'm interpreting the "component is" as defining the component rather than declaring possible additions to the component. And it simply doesn't make sense to say a nut includes a gas injection plate.

I don't think the spec really helps to decide how the Applicant meant the particular transition word used in the claims – "is" – to be interpreted. The paragraph relied on by the Board says:

• the things in the list of claim 1 are "exposed to plasma in the processing chamber"; and
• the things in the dependent claims "can be made from a film compatible material"

Neither of these statements in the spec uses a transition word at all, and are thus no help at all in determining what the Applicant meant by using the transition word "is" to introduce the list of claim 1.


Also, I don't really see this as an open/closed transition issue. Consider the follow hypothetical

• 1.  A device comprising: a network interface, wherein the network interface is an Ethernet interface.
• 2.  The device of claim 2, wherein the network interface comprises a transceiver.

Same paradigm: "is" followed by "comprises". But in this context, there is no indefiniteness problem. These claims make perfect sense.

I could go either way on the situation presented in Ex parte Faguet. If you import enough from the spec, this leads to the conclusion of no indefiniteness. On the other hand, if you read the claims as is, the dependent claim is indefinite.

BPAI reverses obviousness based on KSR rationale "combination of familiar elements"

Takeaway: The BPAI reversed an obviousness rejection in which the Examiner relied on the "combination of known elements to yield predictable results" rationale because the element at issue did not perform the same function. The Examiner modified the shower curtain of a primary reference with a ruffle from a secondary reference, because a ruffle was known to provide a pleasing aesthetic effect. However, the function of the ruffle in the secondary reference was to provide deodorizing properties rather than aesthetics.  (Ex parte Peoples, BPAI 2010.)


Details:
Ex parte Peoples
Appeal 2010-007842; Appl. No. 11/448,936; Tech. Center 3600
Decided:  September 29, 2010

The only claim on appeal, directed to a two-piece shower curtain, recited:

     1. A two-component shower curtain of a type in an in-use condition suspended from a shower support rod and in a laundering condition disconnected from said support rod, said one-component comprising:
     A. a shower curtain of plastic construction material constituted as
          a. a rectangular shape having an upper edge and a bottom edge;
          b. a zipper lower track in sewn attachment along said shower curtain upper edge;
and a said second-component comprising:
     B. a valance of plastic construction material constituted as
          c. an elongated first rectangular strip having an upper edge and a bottom edge;
          d. plural adjacent spaced apart edges bounding openings in said upper-edge for receiving therein grommets for attachment to said support rod;
          e. a zipper upper track in sewn attachment along said valance lower edge;
          f. an elongated second rectangular strip in sewn attachment at a selected location between said upper and bottom edges;
          g. said selected location of said sewn attachment positioning said second rectangular strip in a depending overlapping relation over said zipper upper track; and
     C. an operative position of said valence in overlapping relation of said zipper upper and lower tracks in attached relation to each other;
     whereby when said shower curtain is released by being unzippered from said support rod incident to detachment of said zipper upper and lower tracks and placement of
said shower curtain into said laundering condition thereof, said valance remains to mask said zipper upper track from view to contribute to an enhanced shower curtain appearance.

The Examiner rejected the claim as obvious, relying on a primary reference Hinds for teaching the curtain (elements a, b) and a secondary reference Scott for teaching the valance (elements c-g) and the functional limitation C. As a motivation to combine, the Examiner alleged that a POSITA would incorporate the valance of Scott into the curtain of Hinds "for the purpose of aesthetics." Furthermore, the Examiner also took the position that

All of the claimed elements are known in the prior art and one skilled in the art could have combined the elements as claimed by know methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.

On appeal, the Applicant did not contest that the claimed elements were disclosed, but instead attacked the Examiner's motivation to combine. In the Appeal Brief, the Applicant argued that the Examiner's motivation for using Scott's valance ("aesthetics") ran counter to the teachings of Scott, which disclosed that the valance remained permanently attached to the support rod in order to provide deodorizing or antiseptic properties.

In the Answer, the Examiner further clarified that Scott's ruffle mapped to the "claimed elongated second rectangular strip in sewn attachment at a selected location" and that "use of a ruffle per se in the art of curtains has an explicit purpose, that of a decoration thereby providing a pleasing aesthetic effect." In response to Applicant's argument about Scott's curtain having antiseptic or deodorizing properties, the Examiner noted that the claims did not preclude a fabric strip with such properties.

In the Reply Brief, the Applicant made the additional argument that since the primary reference Hinds already included a valance, the combination with Scott was "excessive, and unnecessary to factor in the use of a shower curtain valance to the disclosure of Hinds."

The Board found that both of the Examiner's reasons to combine ("aesthetics" and "combination of known prior art elements") lacked a rational underpinning. The Board agreed that "aesthetics" was enough reason to modify Hinds' shower curtain to include a valance with structure similar to Scott's ruffle. However, the Board found that "aesthetics" did not explain why a POSITA would further modify Hinds to include claim elements f (second rectangular strip) and g (sewn into a particular position). 

The Board also found the "combination of known elements" rationale was insufficient under these facts because this rationale requires that the element performs the same function in both references.

The Examiner points to no teaching of Scott indicating that the ruffle 3 is to be added for any aesthetic purpose. Instead, Scott discloses that the ruffle 3 protects the tape 5 from the flow of water from the shower and regulates the rate of deodorization or release of fragrance from the tape 5. Therefore, the function of the valance and the elongated second rectangular strip recited in claim 1 would have differed from the function of the ruffle in the shower curtain of Scott. The Examiner articulates no reason why one of ordinary skill in the art would have modified Hinds’ shower curtain to include the elongated second strip of limitation f of claim 1, positioned as recited in limitation g of claim 1, despite this difference in the functions of the recited and prior art elements.
(Emphasis added.)

The Board then reversed the obviousness rejection. 

My two cents: The KSR generic rationales for combining can be harder to deal with than a specific motivation found in the references. But this decision is a good reminder to verify that the rationale fits your facts. Take a look at the MPEP and see what the rationale really requires.

According to MPEP § 2143, the "combination of known elements" rationale used by the Examiner in Ex parte Peoples requires these specific findings of fact:

1. a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
2. a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
3. a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable;

The weak point identified by the Board was #2, each element performs the same function. It appears to me that #1 was not met either. The Examiner made a general statement that Scott taught "the valance" and then the specific finding that Scott's ruffle mapped to claim element f. But the Examiner didn't specifically make findings as to elements c, d, e, g, or C. And it's not clear to me that Scott teaches element g.

BPAI finds that "products purchased in a specified time period" reads on last purchase since that purchase has a time period

Takeaway: On appeal, the BPAI interpreted "purchase history form comprising all products that were purchased during a specified time period" to cover re-use of the last purchase requisition, even if the user does not specify the time period, since the last purchase does correspond to a specified time period. (Ex parte Byers et al., BPAI 2011.)

Details:
Ex parte Byers et al.
Appeal 2010004416; Appl. No. 09/892,800; Tech. Center 3600
Decided March 25, 2011

In this appeal of an electronic commerce application, the issue was claim construction of the limitation emphasized below:

     1.  A method for selling products over an electronic network ... said method comprising the steps of:
     [1] identifying a user;
     [2] transmitting a user specific order entry form to the buyer computer, said order entry form comprising at least one user specific product, a user specific price for said at least one product, and a quantity entry field, wherein said user specific order entry form comprises a user specific purchase history form comprising all products that were purchased during a specified time period ...
(Emphasis added.)

The Examiner rejected claim 1 as obvious, relying on the primary reference for the limitation at issue. As explained in a Final Office Action:

Barnes discloses making a purchase and using a repeat from an old requisition request. The requisition request is used as a purchase order to suppliers, where the order includes products and service that the user wants to purchase. The repeat from an old requisition request can be edited to include the quantity. Such repeat from an old requisition request is considered "a user specific purchase history form comprising all products that were purchased during a specified time period."
(Internal citations omitted.)

The Applicant appealed, arguing that the "during a specified time period" limitation was not taught.  Specifically, the Applicant argued that the primary reference disclosed:

an old requisition request [which] would include only those items purchased on that particular requisition request, which would require the buyer to search for and add products that were not included on the old requisition request ... Conversely, the [claimed] user specific purchase history form includes all products purchased within the time period, which allows the buyer to place an order for any combination of previously ordered products ... 

The Board affirmed, and explained how the reference taught the limitation as follows:

    Barnes describes that a user can repeat a previous purchase request. FF 01. The system then pre-populates a request form including all of the items from the previous request. FF 01. The repeat request provides a list of all of the items purchased during the last purchase, which is a specified time.     Although the Declaration states that this is not a specified time period (Declaration ¶ 5), the claims do not narrow the scope of a specified time period, or how it is specified, and as such Barnes’ requisition is within the scope of this broadly recited feature.
(Emphasis added.)

My two cents: The Board got this one right. The claim isn't precise enough to distinguish over the reference.

I see this sort of imprecision a lot, and I call it the "mere existence" problem. As drafted, all the Examiner has to show is the mere existence of a time period for the purchase history. The claim requires nothing more.

I say this despite the presence of the qualifier "specified." Perhaps what the drafter had in mind is that the user specifies a time period, and the software generates a purchase history form for that time period. But the claim doesn't say "user specified" and I don't think "specified" alone gets you there.

The Board didn't perform explicit claim construction. But you can read the implicit construction between the lines, and I think it goes something like this. A purchase history is a list of products purchased during a particular time period – that's simply what "purchase history" means. This particular time period is also a "specified time period" in that retrieval of a purchase history requires (somebody, somehow) specifying a time period. 

Therefore, the reference teaches the limitation because "the repeat request [in the reference] provides a list of all of the items purchased during the last purchase, which is a specified time."

I might rewrite the claim as:

receiving from a user a specified time period;
transmitting ... a purchase history form including all products purchased during the specified time period.

As an aside, the Examiner didn't do a great job of explaining how the "specified time period" limitation was mapped to the teachings of the reference. I spend a lot of time thinking about what the Examiner could possibly be thinking, so maybe I would have figured this one out eventually. But the process would be so much more efficient if both sides clearly explained their positions. If this Applicant had understood, perhaps he would have readily amended rather than go to appeal.

BPAI finds Examiner improperly shifted the burden to Patentee to show date that material was added to standards document

Takeaway: In an inter partes reexamination proceeding, the Examiner relied on a product safety standard (UL 588) as a reference. The standard included several different copyright dates, the latest of which was in 2001, after the Patentee's effective filing date. The Examiner took the position that the post-filing date was "only the most recent update to otherwise older prior art content" and that "the entire contents of this reference clearly did not first appear in August 2000. The UL reference therefore cannot be dismissed as available prior art." The BPAI reversed, finding that the Examiner had improperly shifted the burden to the Patentee to show when the material relied upon by the Examiner was added to the standard.(Fiber Optic Designs v. Seasonal Specialties, BPAI 2011.)

Details:

Fiber Optic Designs v. Seasonal Specialties
Appeal 2011007195; Reexam. No. 95/000,137; Tech. Center 3900
Decided  July 29, 2011

This inter partes reexamination involved strings of LED lights. The Patentee appealed a number of prior rejections, including an obviousness rejection that used a product safety standard published by Underwriters Laboratory (UL), referred to as "UL 588." ("Standard for Safety for Seasonal/Holiday Decorative Products, Eighteenth Edition). UL 588 included several different copyright dates, including 1921, 1974, and 2001.

The effective filing date of the patent was in 1999. Thus, material in UL 588 dating back to 1921 or 1974 was properly prior art, but material with a date of 2001 was not prior art. The obvious rejection relied on a particular figure, Figure 7.2, which illustrated a set of LED lights connected in parallel.

Before appeal, the Examiner explained why Figure 7.2 of UL 588 was properly prior art, as follows:

The sixth page' of UL Standard 588 refers to "Copyright 1974" which indicates the presence of content within the standard dating back more than 20 years to 1974. Additional references on this page indicate that content in the standard date back to the year 1921. The date of August 21, 2000 and the Fig. 7.2 from this reference, showing nothing more than parallel light connections cannot be dismissed as having first been taught in August 2000. The UL reference is therefore retained as available prior art.

In response, the  Patentee argued that the publication date for Figure 7.2 could not be 1921 or 1974 because "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974, much less 1921." The Patentee offered several types of evidence to support the argument. One such piece of evidence was a Request for Comments (RFC) document which described the purpose of the UL 588 Standard. The RFC contained this statement:

The requirements in the Standard for Seasonal and Holiday Decorative Products, UL 588, were developed prior to the existence of light-emitting diode (LED) lamps and based on recent submittal of these products it has been determined that the requirements need to be revised to reflect this new technology.

Thus, according to the Patentee, "clearly this Underwriters Laboratories document shows that the UL Standard 588 cannot and does not disclose LED standards dating before August 1998 because the LEDs at issue did not exist in 1974 or prior to 2000."

As additional evidence as to why the LEDs discussed in UL 588 dated back to 2002 rather than 1974 or 1921, the Patentee offered declarations describing the UL approval process for the Patentee's LED light string product:

Patentee submitted its product for UL approval in 1999 and received UL approval in March 2001. Exhibit 2, David R. Allen Decl., 7 2. Exhibit 2 provides additional evidence that the invention of the '358 patent is new and non-obvious since even Underwriters Laboratories  recognized that LEDs used in seasonal lighting products were "new technology" in 2001 several years after the invention of the 758 Patent. Indeed, when the Patentee submitted the invention for approval to Underwriters Laboratories, UL tested this patented product as a "new and unusual'' product. Exhibit 2, David R. Allen Decl., 11.2. UL polled its offices worldwide and concluded that none of its employees had ever tested a product similar to the invention. Id.

In summary, the Patentee argued that the Examiner erred in relying on a date of 1974 for Figure 7.2 of UL 588.

On appeal, the Board found that the Examiner had improperly shifted the burden to the Patentee to show that the relied upon portion of the document was not prior art.

The page bearing Figure 7.2 lists a date of August 21, 2000. The Examiner‟s attempt to shift the burden to Appellant to show when Figure 7.2 was added as an update to UL Standard 588 under these facts is improper. It would constitute speculation to determine such a date. See In re Lister, 583 F.3d 1307, 1317 (2009) (“We surely would not view the mere existence of the reference . . . as prima facie evidence that it was available prior to the applicant‟s critical date.”).

Because the Examiner had not made a prima facie showing that the reference was prior art, the Board did not reach the issue of whether the Patentee's rebuttal evidence was convincing.

My two cents: A good illustration of how to handle a scenario where the Examiner relies on a copyright date as the publication date of a reference.

Seems like the Examiner was really overreaching here, since the particular page relied on (Figure 7.2) had its own date of August 21, 2000, a date after Patentee's effective filing date. So doesn't this, by itself, say that the Examiner had not made a prima facie case that Fig. 7.2 was prior art?

The Patentee's statement that "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974" needed some sort of evidentiary foundation, since the basic LED was invented in the 1960's. The Patentee lucked out in finding a standards-related document which stated that the standards were developed before decorative LED light strings and were then updated to cover LED strings. Without this type of document, the Patentee could maybe offer evidence dicussing the history of LED products, showing when LED holiday lights became commercially available. The Patentee's evidence showing their product was UL tested as a "new and unusual product" was an interesting way of getting to the same conclusion.

Check out these [not quite new] blogs

There aren't many blogs that focus on patent prosecution, so whenever I find one I make a point to tell my readers.

Last month I mentioned Ryan Alley's new blog which covers Federal Circuit decisions with a new angle: what do these decisions mean, specifically, for patent drafters and prosecutors. Ryan's blog is now the only blog I regularly read for Fed Cir coverage.

Today I want to mention Mark Terry's Florida Patent Lawyer Blog. Mark started blogging two years ago, about the same time I did, then he took some time off from blogging. But I'm glad to see that he's returned to the blogosphere. Earlier this week Mark posted about an Applicant's "motivation to combine" argument which lost at the BPAI.

BPAI finds that "selecting the product catalogs to search" does not require selection of multiple catalogs

Takeaway: A patentee in reexamination appealed an anticipation rejection of claims to an electronic procurement system. The patentee argued that the reference did not teach "maintaining at least two catalogs" as required by the claim. The patentee further argued that, even if it did, the selection feature relied on by the Examiner referred only to a single catalog, where the claim required selection of multiple catalogs since it recited "selecting the product catalogs to teach." The Board found that the reference taught both limitations, but went further to find that the selection step did not require selection of multiple catalogs. The Board offered no explanation for this interpretation. (Ex parte ePlus, Inc., BPAI 2011.) 

Details:
Ex parte ePlus, Inc.
Appeal 2010007804; Reexam 90/008,104; Tech. Center 3900
May 18, 2011

The patent in reexamination was directed to an electronic procurement system. A representative independent claim on appeal read:

26. A method comprising the steps of:
     maintaining at least two product catalogs on a database containing data relating to items associated with the respective sources;
     selecting the product catalogs to search;
     searching for matching items among the selected product catalogs;
     building a requisition using data relating to selected matching items and their associated source(s);
     processing the requisition to generate one or more purchase orders for the selected matching items; and
     determining whether a selected matching item is available in inventory.
(Emphasis added.)

In this third-party reexamination, the Examiner applied several anticipation rejections using various software product manuals. In one of the anticipation rejections (the "P.O. Writer Manual"), the Examiner read the "product catalogs" on a purchase order history through which the user could re-order a previously ordered item.

On appeal, the Patentee argued that the P.O. Writer order history did not include a catalog of data associating items with multiple sources as required by the claim. Specifically, the Applicant argued that the order history required the user to select an item and then enter a vendor number in order to re-order the item. "As any vendor may be entered regardless of whether there is any information associating Item A1000 to that vendor, it should be clear that no catalog is used or maintained in order to create a purchase order is this manner."

The Patentee further argued that P.O. Writer did not disclose selecting multiple product catalogs to search as claimed. The Examiner relied on a description of P.O. Writer's purchase order history feature as allowing the user to first select an item from "the Best Buy Catalog, as well as the Bayless catalog, or any other vendor you would like to select" and then allowing the user to by the item from "Best Buy, Bayless, or any other vendor you would like to select." However, according to the Patentee, this disclosed selecting a vendor rather than a product catalog.

The Board affirmed the P.O. Writer anticipation rejection. The Board first explained that "catalog" was broad enough to read on the disclosed purchase order history:

As discussed supra, we find that a “catalog” is defined as “an organized collection of items and associated information.” The purchase history disclosed in P.O. Writer Manual (FF 10) provides for items and associated information pertaining to different vendors. We do not find that the selection of previously ordered items from previously indicated vendors to be different from selecting catalogs and searching for items.While it is true that such a process could not be performed for items never before purchased, we find that the process steps recited in claim 26 read upon such a process as explicitly disclosed in P.O. Writer Manual.

The Board specifically adopted the Examiner's findings as to selecting multiple catalogs for search. But the Board went further to find that the limitation "selecting the product catalogs to search" did not require the selection of multiple catalogs:

While we would agree that the “maintaining” step of claim 26 requires multiple catalogs to be maintained, we do not find that the “selecting” step requires the selection of multiple catalogs. As discussed above, P.O. Writer Manual details that multiple catalogs can be maintained in the database of the system (FF 11). The system of P.O. Writer Manual could certainly infringe claim 26 if only one catalog was selected because the “selecting” step allows for multiple or a single catalog to be selected.

The Board also affirmed all the other prior art rejections.




My two cents: I was astounded by the Board's statement that the limitation "selecting the product catalogs to search" did not require selection of multiple catalogs.  After all, the word in question – catalogS – is plural. Furthermore, the claim also recites "maintaining at least two catalogs," so the rule of antecedent basis says that the thing being selected is the same thing being maintained, and the thing being maintained is absolutely plural ("at least two").

Clearly the Board is interpreting the claim language "selecting the product catalogs to search" to mean "selecting which of the catalogs to search." And in plain English, that's how a reader would usually interpret the claim language in question. But claims aren't plain English. They follow all sorts of special rules. Which lead me to the conclusion that the claim requires selecting multiple catalogs.

After I thought about it more, I decided that the Board's interpretation is indeed a possible interpretation. Maybe reasonable minds can differ on which one is correct. But I'm still astounded that the Board didn't give any explanation at all how they arrived at this interpretation. Instead, the Board merely concluded that "we do not find that the 'selecting' step requires the selection of multiple catalogs." This interpretation is far enough from the plain language of the claim that some analysis and explanation is needed.

The patentee filed a Request for rehearing with the Board but did not argue this claim construction issue. Instead, the Request argued a different point made in the Appeal Brief, that the references were not prior art under the "public use" prong of § 102(b). The Request was filed in July, but as of November 1, the Board hasn't yet issued a rehearing decision.

BPAI finds unreasonable Examiner's interpretation of "reflective" to include all materials since all materials reflect to some degree

Takeaway: The Applicant appealed various claims to a window blind, including a dependent claim which specified that the blade was reflective. In explaining the obviousness rejection of this dependent claim, the Examiner indicated that "all materials 'reflect', whether it be heat, light, rain, sound, flying debris, etc." The BPAI reversed the rejection, finding that the Examiner's interpretation rendered the term "reflective" superfluous, and noting that the Federal Circuit disapproved of such an interpretation in Stumbo v. Eastman (Fed. Cir. 2007).

Details:
Ex parte Wilkins
Appeal 20090012698; Application 11/167,701; Tech. Center 3600

The application related to window blinds.  An independent claim included a shutter frame, blades across the shutter frame and a control mechanism, with various other structural limitation for these elements. Dependent claim 21 further specified "at least one of said blades having a reflective surface."

The Examiner rejected all claims as obvious over a combination of various references. During prosecution, the Applicant argued the reflective surface feature of dependent claim 21. The Examiner did not address the Applicant's argument during prosecution.

On appeal, the Applicant argued all independent claims and a number of dependent claim, including claim 21. The Applicant argued in the Appeal Brief that the combination did not teach the reflective surface feature, and further noted that "the Examiner fails to provide any citation to disclosure in the references which teaches or discloses this claim element."

In the Answer, the Examiner provided additional explanation of the rejection of dependent claim 26. Specifically, the Examiner explained that "all materials 'reflect', whether it be heat, light, rain, sound, flying debris, etc."

On appeal, the Board found that the Examiner's interpretation of "reflective" was unreasonable because it rendered the term superfluous.

By concluding that all materials reflect, and as a consequence are “reflective,” the Examiner interprets the term “reflective” as used in claim 26 to be superfluous. Our reviewing court disfavors any claim interpretation which would render a claim term superfluous. Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007). The Examiner has cited nothing in Music, Hordis or Edwards which would disclose a window blind and security shutter in which at least one side of the blades has a reflective surface under a reasonable interpretation of the term “reflective.”

The Board then reversed the rejection of dependent claim 26.


My two cents: A righteous smack down of the Examiner. It wasn't enough for the Examiner to say that all materials reflect light to some degree. No, the Examiner had to read it even broader than this, and say that reflection wasn't limited to light, but also included reflecting flying debris! Unbelievable.

This is one of the most egregious examples of not just failing to read the claims in view of the spec, but actually completely ignoring the spec. The only mention of "reflective" in the spec was this single sentence:

The blades may also be formed with at least one reflective surface, which can be presented to the exterior to reduce absorption of radiant energy from the sun in hot weather conditions, or to the interior to reflect back thermal radiation in the room, thereby reducing further heat losses in cold conditions. 

So when read in light of the spec, "reflective" simply does not mean reflecting rain, sound, or flying debris. 

Unfortunately for the Applicant, at least one prior art rejection of each independent claim was affirmed.

BPAI finds floor covering art is not analogous to contact lens art

Takeaway: In a chemical composition application, the BPAI found that a reference in the field of floor coverings was not analogous art to the other two references related to contact lenses. The Examiner argued that reference in question taught polymer branching, a feature which was applicable in the field of contact lenses as well as floor coverings. However, the BPAI focused on reasons why an inventor of contact lens would look to a floor covering reference to solve a problem, finding that the hypothetical inventor would not. The Board noted that "underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the
principle in other fields." (Ex parte Devlin, BPAI 2011.)

Details:

Ex parte Devlin
Appeal 2010011637; Appl. No. 10/991,124; Tech. Center 1700
Decided  April 4, 2011

The technology in Devlin's patent application related to "radiation-curable prepolymers useful for making polymeric articles, preferably ophthalmic device, more preferably soft hydrogel contact lenses.”

A representative claim on appeal read:

1. A crosslinkable polyurea prepolymer ... comprising the components of:
     (e) at least one aminoalkyl polyalkylene glycol of formula (1) ...
     (f) optionally at least one organic di- or poly-amine, wherein the organic diamine is ...
     (g) optionally at least one diisocyanate selected from the group consisting of ...
     (h) at least one polyisocyanate having at least three isocyanate groups ...

The Examiner rejected as obvious using a combination of three references: two in the field of opthalmic devices such as contact lenses, and one in the field of floor coverings.

The Examiner asserted that the primary reference (Stockwell) taught elements e through g and part of h. The Examiner then used two additional references to modify the primary reference, resulting in the remainder of element h.  The Examiner relied on specific teachings in the two secondary references as reasons to combine: the first modification (Bany) enhanced dimensional stability of contact lenses, while the second modification (Rosenberry) provided "superior abrasion and gouge resistance."

In the Appeal Brief, the Applicant focused on attacking the rationale for combining the references. The Applicant noted that the abrasion resistance characteristic of Rosenberry was an advantage to a floor covering, while the dimensional stability feature provided by the other two references was an advantage to contact lenses.  The Applicant argued that one would not combine features when they provided these different types of advantages.

In the Answer, the Examiner defended his use of the floor covering reference (Rosenberry) by focusing on the technical properties of the chemical compound itself rather than the use of the compound, as follows:

[O]ne of ordinary skill would understand the relevance of Rosenberry et al. – it teaches a suitable method for enhancing the mechanical properties of polyurethane based on acrylate functional prepolymer. The mechanical properties are enhanced by incorporating additional acrylate functionalities. The fact that Rosenberry et al. uses the prepolymer as a floor coating as opposed to a contact lens does not take away from the fact that it has been rendered obvious to increase the amount of branching of the final polymer, which is to be used as a contact lens. Bany et al. has already established this relationship. 
(Emphasis added.)

The Board found that the floor covering reference (Rosenberry) was not analogous art to the other two contact lens references. First, the fields of invention were clearly not the same. Second, the specific problem identified by the Examiner in the primary reference Stockinger was dimensional stability, and this was also the problem that the first secondary reference (Bany) was concerned with dimensional stability.  Rosenberry, however, was not at all concerned with this problem, but rather on "superior gloss retention, abrasion, gouge and stain resistance surfaces.”

On appeal, the Board was not persuaded by the Examiner's focus on the similarity of the technical features as a reason to combine:

The Examiner’s reliance on the idea of branching of polymers and thermosets does not provide a reason why Rosenberry would have been considered by an inventor of contact lenses considering the dimensional stability concerns of Stockinger and Bany. Even accepting that there was similarity at an underlying level of scientific principle, that similarity does not answer the question whether a contact lens designer would have looked to Rosenberry for an answer to the dimensional stability problem. Put another way, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields.

The Board cited to In re Van Wanderham as support for its reasoning.

The Van Wanderham case is illustrative. In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967).

My two cents: I don't practice in the chemical arts, but the Board's reasoning resonates with me. By framing the discussion in terms of "scientific principles," I think the Board articulated what's wrong with focusing solely on technical features when making a combination.

Namely, at some level, almost all references are similar. Chemical compounds are used in all types of products and fields, as are mechanical parts, as are electronic components. So if we look for reasons to combine at this high level, then all prior art is fair game for combination. The analogous art doctrine exists to draw the line somewhere to say that No, a hypothetical inventor would not combine such disparate references.

The Board helped the Applicant out a bit by considering the issue of non-analogous art. The Applicant did make arguments against the rationale to combine, but did not specifically raise the non-analogous art doctrine.

The Board's cite to In re Van Wanderham was unusual. The Applicant didn't mention the case, and it doesn't appear to be referenced in any other BPAI decision.

BPAI broadly interprets "hardware error" as "error related to hardware" rather than "error in hardware"

Takeaway: In Ex parte Yamada, the BPAI agreed with Examiner that "hardware error" read on memory usage reaching a critical threshold because memory was a type of hardware. The Applicant presented a definition of "hardware error" as "an error caused by malfunction of a physical component of the computer," then argued an error in memory usage was a software error rather than an error in a physical component. The Board characterized this argument as irrelevant for not being within the scope of the recited claim limitations.


Details:
Ex parte Yamada
Appeal 2008005668; Appl. No. 10/607,158; Tech. Center 2100
Decided  December 9, 2009

The first independent claim read:

1. A method of terminating an affected application program thread, comprising:
     receiving an indication of a hardware error associated with an application program thread;
     determining the application program thread to be in a user operation mode; and
     terminating the application program.

At issue was the proper construction of the term "hardware error."

The Examiner rejected the claims as anticipated. The Applicant argued that the reference taught prompting a user when memory usage reaches a critical threshold rather than when a hardware error occurs.  In a Final Office Action, the Examiner explained that "since this error affects memory which is hardware, then Mathur discloses a hardware error."

On appeal, the Applicant referred to a definition of "hardware error" from an online dictionary: "error resulting from a malfunction of some physical component of the computer." The Applicant then argued that memory usage above a threshold is not caused by a malfunction of a physical component. The Applicant then explained that under the Examiner's interpretation, even an error that occurred when software allocated more memory than was currently available would be considered a "hardware error."

[T]he above example shows that the Examiner's asisertion is not consistent with the plain meaning of a hardware error as would be understood by one of ordinary sklll in the art.

In the Answer, the Examiner switched position and argued that it was the "system freeze" described in the reference that corresponded to the claimed "hardware error."

Examiner brings to the attention of the Appellant that a system freeze is equivalent to a hardware error. It is hardware error for many reasons. First, it is well known that a system is hardware. An error message that tells the user that the system is out of memory and freezes the rest of the system is a notification of a hardware error (freezing). ... The Examiner also brings to the attention of the Applicant that a physical component was never part of the claim language. As a result, a system freeze reads on a hardware error.

The BPAI first interpreted "hardware error" and found that its broadest reasonable interpretation was "an error related to computer system hardware, e.g., system memory." The Board further found that this interpretation was consistent with the Applicant's specification. In particular, the Board noted that the specification referred to a machine check abort (MCA) signal as a "hardware error signal” and that the specification further stated that the MCA signal "may occur when an error occurs in reading and loading memory data, i.e., from corrupted memory."

Applying this interpretation to the teachings of the reference, the Board found that:

Exceeding a memory usage threshold (causing unstable system performance (FF 3)) and a system “freeze” are system errors related to system hardware (memory), i.e., system hardware error. Appellant’s claimed limitation – receiving an indication of a hardware error – is structurally and functionally equivalent to the method described by Mathur. Appellant’s argument that a hardware error is an “error caused by malfunction of a physical component of the computer” is not within the scope of the recited claim limitations, and is therefore irrelevant.

The Board then affirmed the anticipation rejection.

My two cents: The Board got this one wrong. Certainly memory is a type of hardware. But the term "hardware error" is best understood as an error in a hardware component, not simply an error associated with or related to a hardware component. That is, I agree with the definition presented by the Applicant in the Appeal Brief.

The Board incorrectly characterized the Applicant's argument about the meaning of a claim term ("a hardware error is an 'error caused by malfunction of a physical component of the computer' ") as arguing outside the claims.  You're not arguing outside the claims if the stuff you're arguing about is captured in the meaning of a claim term. 

Once "hardware error" is properly understood as "error in the hardware," it's clear to a POSITA that the reference doesn't teach. While memory usage reaching a critical point may qualify as an error related to memory, it is not an error in the memory itself. The Applicant tried to make this point in the Appeal Brief, but apparently didn't explain the point well enough.

With regard to the system freeze, the Examiner's statement that "a system is hardware" glosses over the fact that a computer system includes software and hardware, and the term "system freeze" doesn't itself say whether the error is an error in a hardware component or in a software component. However, the reference itself clearly taught that the system freeze was an error in memory allocation, which is a software error and not a hardware error. Unfortunately, the Applicant didn't address the system freeze teaching, since the Examiner didn't bring it up until the Answer, and the Applicant didn't file a Reply Brief. As a result, the Applicant may well have lost on this system freeze teaching even if the Applicant did a better job of arguing about the memory usage threshold teaching.

Finally, the Applicant might have strengthened his position by making arguments for dependent claims which more clearly spelled out the type of error meant by "hardware error," e.g., memory read error.

Can a draft application serve as evidence of conception in a swear-behind declaration?

In prosecution, a reference that is dated a few days or weeks before your application's filing date may provide an opportunity to swear behind the reference. But if you follow the conventional approach of using an invention disclosure document as evidence of conception, that may involve showing diligence for a long period up to filing of the application. What if you could use a draft of your patent application as evidence of conception? Now the diligence period would probably be much shorter. [If you need a refresher on swear-behind declarations, conception, and diligence, see my posts here, here, and here.]

I think using a draft application as evidence of conception is a viable strategy, given the right facts. I ran across a file history and corresponding BPAI opinion where the Applicant tried something like this, but blew it by not submitting the right documents as evidence of conception until it was too late. In a future post, I'll explain what went wrong in that case, and some lessons to be learned. This post will explain when and how to use a draft patent application as evidence of conception. I can't promise you this strategy will work -- I haven't run across any another file histories where this came up. So read through my explanation and decide for yourself.

A draft application is great evidence of conception in that – unlike an invention disclosure or technical paper – it's specifically written to describe and enable the claims. However, unlike an invention disclosure or technical paper, it's not written by the inventor. So on its face, an unfiled application may not appear to show conception by the inventor. This is the first obstacle to be addressed in using a draft application as evidence of conception.

I think inventor approval can provide this missing link. If the inventor approved the application for filing before the effective reference date, then I think we have conception by the inventor before the critical date. Along the same lines, an executed declaration of inventorship can provide the missing link. An inventorship declaration that is executed by at least one inventor before the effective reference date shows conception by the inventor.

If you don't have inventor approval/execution before the effective reference date, is the game over? Maybe not. If you can show that the application actually filed has no significant differences as compared to a draft application in existence before the critical date, doesn't that also provide the missing link? Doesn't that also show that the draft application reflects the inventor's conception? After all, the inventor later signed an inventorship declaration attesting that a very similar document described his invention.

So I think that under any of these fact scenarios, you have evidence of conception before the critical date. Of course, you still need evidence of diligence in filing, even if it's only for a few days or weeks. But that's going to be easier to deal with than the typical diligence period, because that starts much earlier when an invention disclosure is filed with the employer. 

As with any swear-behind declaration, a swear-behind relying on a draft patent application as evidence of conception should explain the correspondence between sections of the relied-upon document (in this situation, the draft patent application) and the elements of the pending claims. (See my previous posts mentioned above for more information.) The swear-behind declaration should also include an affirmative statement by the inventors that the draft application describes the claims. You should submit the draft application, as supporting evidence, along with the swear-behind declaration. You should also submit evidence that the draft was in existence as of the effective reference date.

Finally, you must comply with all the formalities of a swear-behind (e.g., signed by all inventors) and follow the rules to get the evidence entered (e.g., on non-final, with an RCE, or with a "good and sufficient" showing after final).

What do you think? Creative thinking? Or am I way off base?

Federal Circuit blog with prosecution focus

A new blog has come to my attention: the Ryan Alley Intellectual Property Law Blog. The focus of the blog so far is Federal Circuit decisions, but with a twist: the posts are written from a patent prosecutor's point of view. For example, Ryan's post on last week's Ultramercial v Hulu decision was subtitled "Claim Drafting Lessons," and the post on CBT Flint v. Return Path (indefiniteness) was subtitled "Prosecution Errors."

I particular like Ryan's blog because each post includes a Lesson section and a Commentary section. I welcome Ryan to the blogosphere and look forward to future posts.

BPAI reminds Applicant that formalities of swear-behind declaration are important

Takeaway: In evaluating a declaration under § 1.131 (swear-behind), the BPAI noted that the declaration did not comply with the required formalities. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors. The Board went on to find that the declaration lacked sufficient evidence of both conception and diligence, and then affirmed the prior art rejection since the Applicant made no substantive arguments against obviousness.

Details:
Ex parte Bianchi
Appeal 200702938; Appl. No. 10/327,489; Tech. Center 3600
Decided  January 28, 2008

The Examiner rejected as obvious over a combination of references. In response, the Applicant swore behind the secondary reference by filing a declaration under § 1.131. The Examiner did not withdraw the rejection, and the Applicant appealed. In the Appeal Brief, the Applicant made no substantive arguments but instead argued that the rejection was deficient because the swear-behind declaration removed the secondary reference as prior art.

The Board affirmed the rejections, finding that the Applicant had not submitted sufficient evidence of conception and/or diligence. The Board also noted that the declaration did not comply with formalities required by § 1.131. Specifically, the declaration named a single inventor as declarant but was signed by all four inventors.

 ...

 

The Board indicated that

If the Appellants pursue the removal of Goodman as prior art by submitting an affidavit or declaration that fully complies with the requirements of 37 C.F.R. § 1.131, they should observe that the existing declaration ambiguously states that only one of the inventors is making the declaration in the text, while all inventors are signatories (FF 03 & 04). All of the inventors of the subject matter claimed must make the declaration. The Appellants should resolve this ambiguity by stating which of the inventors are actually making the declaration in any subsequent affidavit or declaration.

My two cents: Like the declaration of inventorship filed with an application, a § 1.131 declaration must be signed by all the inventors (with a few specific exceptions). But where the declaration of inventorship usually takes the form of a single document that names all inventors and is signed by all inventors, all the § 1.131 declarations I see use a different format. Specifically, a § 1.131 declaration is typically submitted as multiple documents, each signed by one inventor. All the documents include the same facts being attested to, and the same "information and belief" language. They differ only in the identification of the declarant/signatory.

As far as I know, you could submit a single document for a § 1.131, like a declaration of inventorship, as long as each declarant was named separately. The problem here was that one declarant was named as making the statements yet all inventors signed.

In an upcoming post, I'll discuss the sufficiency of the evidence and the timing of the declaration.

Applicant loses drawing objection petition because new matter introduced by showing relative locations of claimed elements

Takeaway: In an application directed to a "compressed tank system" for use in a vehicle fuel cell, the Examiner objected to the drawings for not illustrating the vehicle or the fuel cell. The Examiner then found the Applicant's drawing amendments unacceptable because they introduced new matter. The Petitions Office ruled that the objection was correct because the new drawings showed the location of the tank system in relation to the fuel cell and vehicle, where the originally filed application was silent on these locations. Despite an outstanding drawing objection, the Examiner passed the application to issue when the BPAI reversed all rejections.


Details:
Application 10/967,889 to Sachs (available in Public PAIR)

The Applicant filed an application titled "Heatable Hydrogen Pressure Regulator". The claims were directed to a "compressed tank system." The application included two figures, each illustrating an embodiment of a "compressed hydrogen tank system."


Several of the claims referred to a fuel system on a vehicle. For example, dependent claim 7 read "[t]he tank system according to claim 6 wherein the tank system is associated with a fuel cell system on a vehicle." Also, the preamble of independent claim 16 read "[a] compressed tank system for a fuel cell system on a vehicle, said tank system comprising ... "

In the first substantive Office Action, the Examiner entered a drawing objection under § 1.83(a) (every feature must be shown in the claims). The objection stated that "fuel cell" and "vehicle" must be shown in the drawings or cancelled from the claims. The Office Action also included prior art rejections under § 102 and § 103.

In the first Response, the Applicant submitted an amended Figure 1.

The Applicant also amended the specification so that the text describing Figure 1 referred to newly added vehicle 26 and fuel system 28. The Applicant addressed the prior art rejections by making claim amendments.

In the next (final) Office Action, the Examiner maintained the drawing objection and also indicated that the drawing amendments were "not accepted because they introduce new matter." Specifically, the "drawing contains subject matter which was not described in the specification, such as the location of the fuel cell system and the location of the compressed tank system." The prior art rejections were maintained, and the Office Action also included a 112 First written description rejection for one of the claim limitations added by amendment.

The Applicant responded by simultaneously filing a Notice of Appeal and a Petition to the Technology Center Director. The Petition requested that the drawing objection be withdrawn. In the Petition, the Applicant argued that the claims didn't specify a location for the fuel cell system or the tank system, nor was the amended drawing directed to these locations. Specifically, the Applicant argued:

It appears to be the Examiner's position that adding the fuel cell system 26 and the vehicle 28 to figure 1 is new matter because the original disclosure didn't identify "the location of the fuel cell system and the location of the compressed tank system." Originally filed dependent claims 7 and 15 only claimed that the tank system was associated with a fuel cell system on a vehicle. Paragraph 0014 of the specification was amended to state that the fuel cell system 26 is on the vehicle 28. Nothing in the original claims identified the location of the fuel cell system and the tank system, and, accordingly, nothing in the amended specification and proposed drawing changes is directed to the location of the fuel cell system and the compressed tank system. Therefore, Applicant respectfully submits that the Examiner's non-acceptance of the replacement drawings is improper and unreasonable.

While the application was still on appeal to the BPAI, the Technology Center Director issued a Petition Decision, ruling that the drawing objection was proper. The Decision explained that "there is no support in the original disclosure which shows the relative location of the fuel cell and the compressed tank system in the vehicle" yet "proposed figure 1 now clearly shows where the fuel cell system and the compressed tank system is located in relation with each other in the vehicle." Therefore, the new drawings did introduce new matter, and the objection to the drawings for introducing new matter was proper.

Four years later, the BPAI issued a decision reversing all the rejections (§ 112 First, § 102, and § 103). The Examiner then issued a Notice of Allowance which allowed all pending claims. No mention was made of the drawings or the outstanding drawing objection. The Applicant paid the Issue Fee, and the patent issued.

My two cents: One lesson here is that if you claim an overall system as well as an apparatus, it's wise to have a drawing that illustrates the overall system, even if that's not the focus of your app.


The Petition Decision seemed to be bad news for the Applicant, but turned out to be irrelevant because the Examiner allowed the application anyway after the Board reversed. I've run across a few cases having outstanding objections going into appeal, and this behavior – the objection simply disappears – seems to be fairly common. However, my blog post on the Frye application ("Applicant caught between inconsistent BPAI Decision and Petition Decision") shows that you can't always count on that.

As to the merits of the Petition Decision, I disagree that the amended drawings "clearly show" where the claimed systems are located "in relation with each other in the vehicle." The drawings look to me like schematics or block diagrams that don't convey a particular location. Perhaps the Applicant would have been better off with an amended drawing that looked even more like a black box – maybe showing the vehicle as a rectangle rather than the stylized vehicle.

BPAI gives no patentable weight to a "mental step" limitation

Takeaway: The Board gave no patentable weight to the limitation "at least one set of text that was authored not for any purpose related to creating or accessing the profile" because an objective reader of the claim could not determine the author's purpose. The Board found that the limitation amounted to a mental step and was therefore not to be given patentable weight. (Ex parte Gilmour, BPAI 2011.)

Details:

Ex parte Gilmour
Appeal 2009-003143; Appl. No. 10/135,2541; Tech. Center 2100
Decided  August 8, 2011
The technology on appeal related to profiling electronic documents. A representative claim on appeal read:

178. A machine-implemented method comprising:
   automatically constructing a profile of a first entity based on a plurality of sets of text, the plurality of sets of text including at least one set of text that was authored not for any purpose related to creating or accessing the profile;
   storing the profile in a machine-accessible storage facility;
   in response to an action of a second entity, identifying the first entity as meeting one or more criteria, based on the profile of the first entity; and
   outputting an indication to the second entity that the first entity meets the one or more criteria.
(Emphasis added.)

The Examiner rejected the above independent claim as being obvious over a combination of two references, Robertson and Barrett.

On appeal, the Applicant argued that the combination did not teach the limitation emphasized above. The Applicant argued that Barrett disclosed prompts which were authored specifically for the purpose of creating a viewer profile, "which is directly contrary to the claim limitation in question." The Applicant then noted that the final Office Action did not explain how Barrett taught the limitation, but instead only made the naked assertion that:

Barrett teaches monitoring a user's viewing preferences to create a profile. Preferences, which are viewed by a user, are included in a profile. Preferences, which are not viewed by a user, are not included in a profile, are not purposed [sic] for creating a profile (abstract, col. 2, lines 17-67).

In the Answer, the Examiner first noted that the Applicant's specification did not "support" the limitation at issue, and "thus, Examiner is entitled to give claim limitation its broadest reasonable interpretation in light of the specification."

The Examiner's Answer then explained how Barrett taught the limitation at issue, as follows:

The above information shows that only a single set of programs is selected and the other sets of programs from the programs in the viewer profile template are not selected to create the profile. In this case, the other set is program names, which are not selected, are authored not for any purpose related to creating or accessing the profile. The other set program names are represented as at least one set of text that authored not for any purpose related to creating or accessing the profile.

In a Reply Brief, the Applicant first responded to the Examiner's comment that the limitation at issue was not "supported' by the specification. The Reply Brief also rebutted the Examiner's explanation of Barrett

Finally, the Applicant argued that the Examiner had improperly dissected the claim limitation:

     Furthermore, to properly evaluate the invention as a whole, when applying the prior art, it is improper to dissect a single claim limitation into parts and then find disclosure of each part of the limitation in different references (or different places in the same reference), as the Examiner has done. Hence, with regard to claims 178 and 202, one cannot separate the concept of "a set of text [used to create a profile]" from the concept of "authored not for any purpose related to creating or accessing the profile". These concepts are inextricably linked to form a single limitation in claims 178 and 202, which cannot be dissected (i.e., a set of text that
is used to create a profile of an entity and authored not for any purpose related to creating or accessing the profile). To dissect this limitation into component parts when applying prior art vitiates its meaning.
     Accordingly, the Examiner cannot simply use some disclosure in Barrett of the general notion of "not for any purpose related to creating or accessing a profile," where that notion is unrelated in Barrett to any set of text that is used to create a profile, and then rely upon Robertson's general disclosure of "sets of text" to provide the rest of the claim limitation. To find the present invention prima facie obvious, the Examiner must first find some disclosure of a set of text that is used to create a profile of an entity but which is authored not for any
purpose related to creating or accessing the profile.

The Board affirmed the obviousness rejection by finding that the limitation at issue was not to be given patentable weight.  First, the Board noted that the limitation appeared to be intended use, as it "added no structure to the claim nor functionally changes the 'at least one set of text' that it modifies."

Furthermore, according to the Board, "authored not for any purpose related to creating or accessing a profile" was a mental step and as such, it was not entitled to patentable weight. Although the mental steps doctrine is typically used to analyze for compliance with 101, the Board found it also appropriate in assessing patentable weight.  

We find that this purpose is an undecipherable thought, fully within the mind of the author as he or she composed the text. We strongly question whether one can discern the true purpose of any text, such as an e-mail: was an author’s purpose to inform or misinform the sender or recipient; was the purpose the author’s self aggrandizement or humble flattery of the sender or recipient; was the purpose to acknowledge some debt or to seek relief from it or, as recited in this claim, to be part of a profile. No objective reader of a set of text knows for sure what the author’s purpose in authoring the text was, let alone knowing specifically whether its purpose was related to creating or accessing a profile. The purported limitation expresses a mere idea, a mental step taken by an author and unknown by any but that author, if indeed he can discern his real purpose in authoring the set of text.

Because this was the only limitation argued by the Applicant, and because the Board also found the references to be properly combinable, the Board affirmed the obviousness rejection.

One ALJ dissented from the majority's position. According to the dissent:

[T]he language of claim 178 does not require that someone discern the true purpose of the text. Instead, I find that the negative limitation contained therein is directed towards discriminating whether the text is related to creating/accessing a profile or not. 

Applying the broadest reasonable interpretation in light of the specification, the dissent found that the limitation encompassed "intercepting text, such as e-mails, that is generally not inputted into a profile template."

While Appellants’ choice of terminology, e.g., “authored” and “purpose”, could possibly draw one to conclude that an intended use may be at the horizon when read in isolation, I find that when the claim is read in its entirety and read in light of the specification, it becomes apparent that Appellant is merely attempting to discriminate one type of data from another and not trying to create some mind-reading phenomenon.

The dissent also found that the limitation did affect the claimed functionality, and was therefore not intended use:

When looking at devices, it is understood that the structure of a data file does not change with the type of data placed therein. However, I am not convinced that the same analysis applies to the method steps of the present invention. ... The step of including a set of text with a particular characteristic affects the functionality depending on the type of text intercepted. Accordingly, I disagree with the Majority that the claimed “at least one set of text” should not be given any patentable weight.

My two cents: The Board's use of the mental steps doctrine to determine patentable weight seems out of left field. I don't get it. If an "objective reader" could not figure out the meaning of the limitation at issue, an indefiniteness rejection would have been more appropriate.

Nor do I see how you come up with intended use, because the use was actually claimed.

Then, with its talk about the limitation not providing any "functional changes" to the claimed text, the Board sounded like it was trying to invoke the Non-Functional Descriptive Material doctrine. But, as the dissent noted, NFDM is not applicable here, since the claimed data does affect the functionality. Namely, it affects the claimed construction of a profile.

Seems to me that the Board just didn't like this claim, but didn't know how to reject it, so it tried a shotgun approach: intended use, quasi-Non-Functional-Descriptive-Material, mental steps ...

I feel strongly that the claim was badly written from an enforcement point of view. I don't want to put intent in my claim because that gives the accused infringer plenty to argue about. Plus, what sort of proof do you use to show the author's "purpose" in creating a text?

Let's assume the limitation has patentable weight, and look at the Examiner's position. Best I can tell, the Examiner's logic is as follows:

• Viewer is presented with information about multiple television programs
• Viewer's choices determine which programs are included in a viewer profile
• Those programs which are included read on "authored for a purpose related to creating or accessing the profile"
• Those programs which are not included read on "authored NOT for any purpose related to creating or accessing the profile." 

Is the Examiner's position devious, or way off-base?

Any program not used in creating the profile is ... by definition ... "NOT for any purpose related to creating the profile". On the other hand, that doesn't take into account the claim term "authored." How does the term "authored" fit with the reference's TV programs?

The Applicant characterized the claim language as "a set of text used to create a profile" where the set includes a text NOT authored for any purpose ... " If the claim really said that, I think the Examiner is wrong. Because the unselected programs the Examiner is relying on to meet the "not authored" limitation are not included in (are not "used to create") the profile.

But the claim doesn't say that. Instead, the claim says "automatically constructing a profile of a first entity BASED ON a plurality of sets of text". And the reference does base its profile construction on the entire group of programs: those that make the cut and are selected for inclusion in the profile; and those that are not selected for inclusion in the profile. So isn't the profile constructed BASED ON the entire set of programs?

In total, I think the Examiner's position isn't off base in quite the way the Applicant argued, but does have some holes in it.