BPAI unimpressed by Applicant's argument that "finite number of choices" is too large

Takeaway: The BPAI affirmed an obviousness decision based on a single reference, where the only limitation missing from the reference was the particular party which accessed a memory interface. The Examiner asserted that there are only a finite number of parties who would access the interface. The Applicant argued that the number of people on earth is a finite number, but is too large to indicate obviousness. The Board explained that while the number of options may theoretically be finite and yet too large to be obvious, in the context of the reference, the number of parties is two rather than six billion, and the claimed party was a predictable choice among the two.

Details:
Ex parte Sobecks
Appeal 2009013122, Application 10/123,457, Tech. Center 3600
Decided March 3, 2010

The claims on appeal relate to a retail product display which can be updated by a product representative in physical proximity to the display. The limitation at issue, for a representative method claim, was:

via a representative of the product source:
     physically accessing the at least one memory interface to couple at least one physical memory to the at least one memory interface, 
     which at least one physical memory contains fresh product-source-to-consumer relationship-building displayable information suitable to display on the dynamic display.

The Examiner found that a single reference taught all the limitations except for "physically accessing" and "via a representative of the product source." In the final rejection, the Examiner asserted that each of these two limitations had a finite number of choices, and that the claimed choice was predictable:

   However, there are a finite number of means for coupling a physical memory to a unit through a memory interface (i.e., physically with cables, inserting a disk, wirelessly, etc.) and there are a finite number of entities which could perform the task (representative, customer, etc.). Regardless of the coupling means selected or the entity performing the task, the same predictable result is achieved: the physical memory is coupled through a memory interface. ...
   It would have been obvious to one of ordinary skill in the art at the time the invention was made to select an appropriate coupling means and an appropriate entity to perform the task, considering the predictable nature of the outcome, to enable the system to upload new product information and function as required.

The Applicant took issue with the Examiner's focus on "finite number" as an indicator of obviousness, and made the following argument in the Appeal Brief:

    While it is undoubtedly true that there are only a finite number of means to make the described coupling, and only a finite number of entities who could perform the task, such an observation is distinctly unhelpful when assessing obviousness as the exact same thing can be said for essentially any invention. Furthermore, if it is the Examiner's intent to suggest that, by using the word "finite," only a small pool of candidates exist, the Examiner is in error. For example, the claim requires that the coupling be performed by a "representative of the product source." As only a very small fraction of the 6+ billion people presently on the Earth qualify in these regards in a given application setting, this literally leaves billions of entities who might be considered as being potentially available to perform the task who do not meet the requirements of the claim. Although candidates numbering in the "billions" are no doubt "finite," the number is still categorically large.
   A prima facie showing of obviousness of course requires more than that the claimed approach be somehow more than a mere candidate amongst a pool of finite possibilities. ...

The Board was unimpressed by this argument because the Applicant failed to appreciate what finite meant in the context of the reference:

   Treyz places its promotional system within a retail store context. In such a context there are only two sets of parties who have the product data that is required for product promotional campaigns, viz. the retailer and the product source. Thus, the finite number the Examiner found is two sets of parties rather than six billion individual people.
   As to the finite number of means of access, Treyz relies on flash memory, which is a physical form of memory media. FF 04. Thus some form of physical access to the flash memory is required to update its contents. So although there may theoretically be a large number of ways to alter the contents of the memory in Treyz, the reliance on a physical memory card narrows the field considerably.

The Board went on to agree with the Examiner that the claimed features were predictable choices among the narrowed-down finite number, and thus affirmed the rejection.

My two cents: KSR says that obviousness may be likely when there are "a finite number of identified, predictable solutions to the recognized need or problem." The thinking here seems to be that it's obvious to try them all.

Although the solutions must also be "identified" and "predictable," I've always been bothered by the use of the word "finite." I've been waiting for an Applicant or patentee to attack the "finite" rationale, because after all, finite is a really large number. But this wasn't the right case for that sort of attack.

In some arts, the number of choices is so large that it's probably not obvious to try them all. In re Kubin, a biotech case, described this as "throw[ing] metaphorical darts at a board filled with combinatorial prior art possibilities," and said that obvious-to-try is not appropriate for such cases.

Sobecks was a software application with business method-y aspects. According to the Applicant in Sobecks, the universe of choices for which party would physically access the memory was really large: any person on earth. But "which party" isn't the same as "which individual," and there were only a few parties involved in the context of promotional displays in a retail store. Maybe the retailer who's using the display, the seller of the product being promoted, and the customer. So that's three, not six billion. The Board further narrowed it down to two, because only the retailer and the seller have the information which will be updated through the interface. But increasing the number of choices to three doesn't change the outcome: choosing among three is way more likely to be obvious than choosing among six billion.

Related posts: I think the Applicant was smart to realize that framing the number of choices affects obviousness. In the Ex parte Sato case that I blogged about last year (here), the Board reversed an obviousness rejection after agreeing with the Applicant that a line has an infinite number of directions that are orthogonal to it.

Mistake #6 when arguing at the BPAI: Arguing the TSM test for obviousness

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." Today I'll discuss Mistake #6: Arguing the Teaching, Suggestion or Motivation test for obviousness.

More than three years after KSR, Applicants continue to file Appeal Briefs that respond to obviousness rejections with "There is no teaching, suggestion or motivation to combine the references." As the Board is quick to point out, KSR makes it clear that this is not the proper test for obviousness:

Appellant additionally argues throughout the Appeal Brief that the prior art does not teach, suggest, or motivate the proposed combination of the teachings of Ohayon and Watanabe. The correct standard, however, is whether the Examiner has articulated a reason with rational underpinning to support the proposed combination. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") (cited with approval in KSR, 550 U.S. at 419 (holding a rigid insistence on teaching, suggestion, or motivation [TSM] is incompatible with its precedent concerning obviousness)).
(Ex parte Diamond.)

Under KSR, TSM is one rationale for combining references, but is not the only one:

Appellants also argue that the Examiner has not set forth a proper obviousness rejection because the Examiner has not articulated all of the findings “require[d]” by Manual of Patent Examining Procedure (MPEP) § 2143(G). This cited section of the MPEP pertains to the discussion of a Teaching, Suggestion, or Motivation (TSM) as one of several exemplary rationales that may be used to support a conclusion of obviousness  – but the Examiner does not rely on such a rationale. See  KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (characterizing the TSM test as a helpful insight, but rejecting the rigid requirement of a TSM).
(Ex parte Lyons.)

Here are a few cases in which the Applicant attacked TSM but didn't attack the rationale actually provided by the Examiner:

   Appellants then rely on outdated case law in arguing that "[t]he motivation to combine these references is not found in any of the references." Appeal Br. 16. The Examiner, on the other hand, has provided reasoning articulating why it would have been obvious to combine the references as proposed. Ans. 9-10 (Grandey discloses materials used for noise/sound attenuation (col. 1, ll. 20-21), Brown discloses a noise/vibration absorbing media used in turbine applications (paras. 17 and 31)). The Examiner's proposed combination thus appears to merely select a suitable material according to its intended use.
(Ex parte Hardwicke.)

    The underpinning of the Examiner's conclusion of obviousness is premised on a teaching of Matsuno to suspend a diagnosis under certain conditions that may lead to a misdiagnosis. While the Examiner does not explain in detail all of the underlying bases supporting this rational underpinning, one of ordinary skill in the art, reviewing the record before us, would recognize the support.  As we have discussed above, the references describe a great desire to accurately diagnose the various components in the powertrain. ... As such, the Examiner's proposed combination is nothing more than predictably applying known techniques to a device ready for improvement. ...
   The Examiner need only provide a reason with rational underpinning, which, as we have identified, the Examiner has done. The background knowledge, inferences, and creative steps that a person of ordinary skill in the art would employ need not always be explicitly laid out by the Examiner. Appellants have not provided any evidence, nor articulated any explanation, as to why the Examiner's reason is lacking rational underpinning. Instead, Appellants focus on the outdated TSM test. As such, we are not persuaded that the Examiner erred in concluding that the disclosures of Eich and Matsuno render obvious the subject matter of claim 9.
(Ex parte Langer, internal citations omitted.)   

   The Examiner first concludes that it would have been obvious to select an elastomer with an appropriate hardness. Appellants merely state that the art does not teach or suggest a vulcanized polymer having a Shore A hardness of 90 or less. However, a teaching or suggestion is not required to support a conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ...
    The Examiner articulates that one of ordinary skill would recognize the range of hardness values that would be suitable for oral brushes. This appears to be supported by similar statements in Libby and Coleman that we noted in our fact findings above. Appellants give no explanation why the Examiner's reason is lacking rational underpinning.
(Ex parte Roberts.)

My two cents: I don't think that mentioning teaching, suggestion or motivation is itself fatal. Nor is attacking the motivation relied on by the Examiner. But focusing too much on TSM may lead you to ignore the bigger picture: whether or not the Examiner provided "articulated reasoning with some rationale underpinning."

To increase your chances of winning on appeal, don't stop at TSM, but instead look carefully at the Examiner's rejection to see if he used a rationale like substitution, predictable results, or finite number of predictable solutions. If so, argue against that rationale. Even if the Examiner didn't use one of those rationales, you should think carefully about appealing if one of the rationales is appropriate. It's not unusual for the Board to fill in a rationale that the Examiner merely hinted at but didn't expound on. Though less common, it's not unheard of for the Board to discover such a rationale themselves. 

BPAI interprets "height" of a layer as thickness rather than altitude

Takeaway: The Board affirmed a written description rejection by adopting the Examiner's claim construction, in which "height" of a layer was interpreted as a thickness.  The Applicant's arguments against the written description rejection relied on a different interpretation.

Details:
Ex parte Jung
Appeal 2009-008540, Appl. No. 11/019,3151, Tech. Center 2800
January 8, 2011

The claims were directed to a method of semiconductor fabrication. The Examiner issued a written description rejection for this claim limitation:

forming a tunnel oxide layer on the active area of the semiconductor substrate such that a height of the tunnel oxide layer is not lower than a height of the trench isolation layer;
(Emphasis added.)

In response, the Applicant relied solely on drawings rather than the specification to show possession.  The Applicant argued that Figure 7 disclosed "a height of the tunnel layer [210] is not lower than a height of the trench isolation layer [204]."

In the next Office Action, the Examiner asserted that Figure 7 did not support the limitation at issue, and used an annotated Figure 7 to explain why:

According to the Examiner, Figure 7 showed the height of the tunnel oxide layer as being lower than the height of the trench isolation layer, which is the opposite of what was claimed.

The Applicant appealed, but the Appeal Brief did not address the Examiner's implicit interpretation of  of "height".

In the Answer, the Examiner made his claim construction explicit, asserting that the plain meaning of "height" is "the distance from the base of something to the top."

The Board noted that the specification did not discuss relative heights of the layers, and did not define the term "height". The Board agreed with the Examiner's reading of Figure 7 and affirmed the written description rejection.

My two cents: Though the Board never referred to claim construction or broadest reasonable interpretation, it's pretty easy to figure out that a) the meaning of "height" is dispositive here and b) the Examiner was interpreting "height" of a layer to mean "thickness" of the layer, rather than the position of the layer relative to the bottom of the substrate (altitude?). 

The Applicant should have either argued against this construction in the Appeal Brief. Or not even appealed in the first place. The last Office Action before the Notice of Appeal was non-final, so no RCE was necessary to make a clarifying amendment.

I haven't thought too much about it, but something like this?

• height position of the tunnel oxide layer is not lower than a height position of the trench isolation layer, relative to the semiconductor substrate"

Blog posts on Federal Circuit's joint infringement opinion Akamai v. Limelight

Direct infringement generally requires a single infringer, though joint infringement is a theoretical possibility. Joint infringement has always been a tough theory to win on, and the Federal Circuit just made it harder. In the recent decision Akamai vs. Limelight, the Federal Circuit held that there can "only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps."

I found a couple of interesting posts from other bloggers that explore the practical implications of Akamai. Most joint infringement cases I'm aware of relate to software, but PharmaPatents takes a different angle and looks here at how Akamai might be applied to diagnostic medical methods. Gametime IP makes the case here that divided infringement is a concern for system/apparatus claims as well as method claims like those at issue in Akamai.

Guest Post: Burden of Proof at the BPAI

[Guest Post by David Boundy. David is a Vice President and Assistant General Counsel for Intellectual Property for a prominent Wall Street brokerage firm. The views he expresses here are not those of the firm or any other clients. David is a co-author of the book Patent Prosecution, to be published in 2011 by Oxford University Press.]

“On appeal, the Applicant must persuade the BPAI of reversible error.”^[1] A number of recent, post-Frye^[2] Board decisions start with this statement, or a similar allocation of burden of proof. These Board decisions are just plain wrong.

The burden of persuasion only shifts to the appellant after an examiner presents evidence (or at least argument) on every element of a prima facie case, following required procedure. On appeal, as throughout ex parte proceedings, the burden is on the Board to establish prima facie unpatentability to a preponderance of evidence. Before the Board, the examiner is just an advocate, not a lower-tribunal fact-finder, and has no claim to deference. While the appellant has the option to simply take “pot shots” against the examiner’s prima facie case, the examiner cannot create a prima facie case through mere conclusory statements. The Board must evaluate the evidence as a neutral and let the evidence speak for itself.^[3] “Demonstrate reversible error to the Board” may be good practical advice, but the Board itself has committed reversible error when it states this as the foundation for a decision.^[4]

That’s the legal requirement. However, good tactical practice may counsel that an appellant go further.

An examiner must meet both components of the legal burden

Everything starts with the examiner. An examiner has two burdens, one substantive, one procedural. The examiner has a substantive obligation to find a good reference, and a separate procedural obligation to explain the correspondence between the claim and the reference.

The procedural obligations arise under 37 C.F.R. § 1.104, MPEP Chapter 2100, the Administrative Procedure Act, and the like. The most important (and frequently-breached) elements of the examiner’s procedural burden—referred to as “the prima facie case”—include:

• When a reference is complex or shows or describes inventions other than that claimed by the applicant [that is, in any § 102 rejection where the reference shows anything more than the claim, and in all § 103(a) rejections], the particular part relied on must be designated as nearly as practicable.

• The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. Note the word “apparent”—“open to view, clear or manifest to the understanding.” Office Actions are not IQ tests for applicants or guessing games. The examiner has an obligation to clearly and unambiguously communicate the basis for the rejection.^[5]

• The examiner must make each showing on each legal element of the prima facie case specified in Chapter 2100 of the MPEP. To meet this procedural obligation, the examiner doesn’t have to be right, but the examiner can’t be silent or substitute a different test.

• Like all other decisions of all other federal agencies, “At a minimum, [an agency decision must] ‘examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.”^[6] MPEP § 707.07(f) incorrectly states that an examiner “should” answer all material traversed; it’s a statutory “must.”

• On appeal, the Examiner’s Answer must “point out where all of the specific limitations recited in the rejected claims are found in the prior art,” and should compare the claim feature-by-feature with the prior art, with a reference to the specific page, line number.^[7]

The practical burden on an appellant depends on whether the examiner did or didn’t address all procedurally-required prima facie elements

BPAI gives written description rejection when "specification and claims merely recite a description of a problem while claiming all solutions to it"

Takeaway: It's rare to see a written description rejection for an originally filed claim. In fact, MPEP 2163.1.A says there is a strong presumption that originally filed claims have an adequate written description. In Ex parte Krick, the Examiner didn't have a problem with the written description, but the BPAI did. The BPAI entered a new written description rejection because the "specification and claims merely recite a description of a problem to be solved while claiming all solutions to it."

Ex parte Krick
Appeal 2009007641, Appl. No. 10/802,378, Tech. Center 3700
Decided September 20, 2010

The application related to controlling air flow during manufacturing of integrated circuits.

1. An air grate comprising:
one or more pieces of one or more materials adapted to partially cover no more than 40% of a spanned area, allowing air to flow through a plurality of openings disposed in the uncovered portion of the spanned area to meet a semiconductor device manufacturing air flow requirement,
where each of the openings is sufficiently small to meet a semiconductor device manufacturing fall though object size limitation, and
where the one or more materials are further adapted to meet a semiconductor device manufacturing spill protection requirement.

The "spill protection requirement" was added in the first response. All other limitations were present in the originally filed claim. 

The Applicant appealed the only rejection, which was an obviousness rejection using a single reference. The Examiner took the position that the reference was capable of covering 40% of the spanned area, which is all that was required by the "adapted to" language. With regard to the other two requirement limitations, the Examiner explained that choosing a suitable size and suitable material does not patentably distinguish.

On appeal, the Board reversed the obviousness rejection. The Board found that Examiner did not make sufficient factual findings that the reference was actually capable of performing the claimed functions, or provide a rationale for modifying the reference to perform the functions.

The Board then entered a new written description rejection, finding that the "specification and claims merely recite a description of a problem to be solved while claiming all solutions to it." The Board explained the written description issue in some detail:

     In clear contrast [to the written description requirement] is Appellant's specification, which does not describe the claimed requirements except by way of a single structure that is said to satisfy each requirement. The Specification indicates that Appellants invented an air grate having a particular 1 inch opening that covers 40% or less of the span which it covers and that has a 1/2 inch raised edge for spill protection. Spec., paras. 21, 24, and 27. The Specification does not describe all means of how to meet any and all potential spill protection requirements, for example, but rather provides an example of one structure that is said to address a spill protection requirement. Appellants' Specification discloses neither a representative number of examples (species) falling within the scope of the genus of air grates satisfying the claimed spill protection requirement nor structural features common to members of the genus so as to permit one of skill in the art to "'visualize or recognize' the members of the genus." See Ariad, 598 F.3d at 1350. In effect, Appellants' Specification and claims merely recite a description of a problem to be solved while claiming all solutions to it, covering all air grates later actually invented and determined to fall within the claims' functional boundaries. See id. at 1353. Appellants' disclosure is similarly lacking for the other functional requirements.
     Appellants must demonstrate possession of the invention, not merely that which makes it obvious. Id. at 1571-72. The examples in the Specification are not indicative of a disclosure describing an invention of an air grate able to satisfy an air flow, fall through, or spill protection requirement as claimed. Put another way, the Specification merely describes one variant of something that fits within the claims' scope, but does not describe the invention as recited in claims 1, 9, 16, and 23. See id.

My two cents: I think understanding the written description requirement is one of the more challenging aspects of patent law. According to the Federal Circuit, the specification must describe the claimed invention "in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention." But what does that mean?

Ex parte Krick probably isn't of any help when the question of sufficient disclosure is a close call. But Krick is a great example of an clear failure to comply with written description, by claiming all solutions yet disclosing only a few.

Could the Applicant get over the written description rejection by removing the three manufacturing requirements, leaving only an air grate "adapted to partially cover no more than 40% of a spanned area"? The Appeal Brief argued that the 40% parameter was a structural limitation that was novel because it simultaneously met the three claimed manufacturing requirements. But if that's the case, then isn't satisfaction of the three manufacturing requirements simply an inherent result of the claimed structure? 

Not a great strategy, though. The feature "adapted to partially cover no more than 40% of a spanned area" is likely be found obvious, especially after KSR. The applicant probably viewed the manufacturing requirement aspect as the novelty, which is why it was in the claims in the first place.

This case reminded me of the Federal Circuit's Lizard Tech decision. Lizard Tech affirmed invalidation of a claim for lack of a written description. The claim was directed to a compression algorithm, and covered a generic method of performing seamless discrete wavelet transform (DWT). The Federal Circuit held this claim violated the written description requirement because the specification taught only a single way of creating a seamless DWT, and that limitation was missing from the claimed method. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45 (Fed. Cir. 2005).

Mistake #5 when arguing at the BPAI: Failing to address the combination

Moving through my list of Top 10 Mistakes when arguing at the BPAI, it's on to Mistake #5: Failing to address the combination. I've actually blogged about this one several times before, so take a look at these earlier posts for examples of how things can go wrong if you don't address the combination.

Don't forget to address the combination
Another reminder to address the combination
How to respond when the Examiner says "Can't attack the references individually"

In this post, I'll discuss one more instance where the BPAI chastised the Applicant for failing to address the combination.

The technology in Ex parte Nelson involved paving asphalt roads. The Examiner rejection claim 22 as obvious over a combination of three references.

22. A screed assembly comprising:
at least one screed section that includes a screed plate that
defines an upper surface and a lower surface; and
a screed heating arrangement that includes a thin sheet electric
heater bonded to the upper surface with an adhesive bonding material.

In the Appeal Brief, the Applicant discussed the deficiencies of each of the three references:

With regard to claim 22, the Williams et al. reference does not even include specific teachings as to any type of electrical heater being attached to the screed plate, or merely somehow attached to the paving machine in a position to radiate heat onto the screed plate, or some other method of heat transfer. Borrup fails to teach bonding a thin sheet electric heater to the upper surface of a screed plate, or any analogous machine, with an adhesive bonding material. Raymonds' bolted liquid tanks are flatly not disclosure of bonding thin film heaters to anything. Therefore, even when combined, the cited references do not teach all of the limitations of claim 22.

According to the Board, the Applicant failed to consider how the Examiner had applied the references in combination. The Board elaborated on where the Applicant had gone wrong:

The Examiner's proposed combination starts with Williams' device, designed to address heat control problems associated with screed heaters. This device is ready for improvement because Williams does not describe specifically how the electric heater is connected to the screed. Raymond teaches that screed heaters can transfer heat by conduction, and Borrup teaches a particular, flexible heat conduction device attached via bonding. Thus, the proposed modification merely fills in the gaps in the teachings of Williams, specifying that the heater is a conductive heater that is bonded directly to the metal screed, as taught in Raymond and Borrup. The Examiner finds that one of ordinary skill in the art would have an expectation of success combining the identified teachings and would also avoid the known problems in the art such as damaged screeds and poor asphalt finish. Ans. 12. Appellant has not argued, much less shown, that the Examiner's proposed combination would be beyond the level of ordinary skill in the art.

Mistake #4 when arguing at the BPAI: Not recognizing that the real issue is claim interpretation.

In this second week of the new year, I'll continue with my list of Top 10 Mistakes in Arguing on Appeal to the BPAI. (See the full list here.) Today is Mistake #4: Not recognizing that the real issue is claim interpretation.

I'll start off by saying that since Examiners are not required to – and usually don't – discuss claim construction, this issue is really easy to miss.

A lot of Appeal Briefs include various passages from the reference and then conclude with "But the blodget discussed in the reference is not the same as the claimed 'widget'." Even though claim construction is not discussed, the Applicant must have some sort of claim construction in mind. Implicit in the argument is that under the Applicant's interpretation, the claims don't read on the reference.

Applicants might get better results by thinking about how the Examiner could possibly be interpreting the claim term "widget" so that it does read on the "blodget" in the reference. Then, if the issue is an unreasonable claim construction, you can hit that issue head on rather than focusing on the reference. Or if you decide that the Examiner's construction is not so unreasonable, you can decide not to appeal.

Ex parte White involved a system to implement distinctive ringing for a telephone. The claim included the limitation "implemented without installing additional hardware at a subscriber's premises." The Applicant pointed out that the distinctive ring in the reference was produced by a locally implemented wireless centrex. The Applicant argued that this locally implemented component was "additional hardware at a subscriber's premises."

You can see that if the wireless centrex could be viewed as residing somewhere other than "at a subscriber's premises," then the Applicant's argument falls apart. And that's exactly what the Board found: that the components were placed in a central office, which is "relatively locally placed" but is still "remote from each subscriber’s premises and equipment (i.e. remote from mobile station 101 and/or its associated office) as claim 1 requires." Using this claim construction, the BPAI affirmed the rejection.


In one of the cases I blogged about previously, the Examiner brought up claim construction, but the Applicant didn't do anything with it. The case is Ex parte Fleming, and the Applicant appealed a claim to a stent which included a lattice with a closed (unexpanded) configuration and an open (expanded) configuration. The claim also defined the lattice as "made of a material that is normally prone to crushing, deformation or recoil."

The Applicant explained in some detail why the stent in the reference would not function properly if made of a material that was prone to crushing, deformation or recoil. However, the Applicant's argument assumed that the the "normally prone to" language in the claim referred to the expanded state. Yet the Examiner explained – in the final rejection, and then again in the Answer – that he was interpreting "normally" as referring to the unexpanded state, before the loops in the lattice interlocked. The Board found the Examiner's interpretation to be reasonable, and affirmed the rejection.

The most frustrating cases may be those where the Applicant makes it's claim construction clear, then the Board decides on a different claim construction. The claim in Ex parte Iwamura recited "at least one component configured for communicating with the server along a wired path and also being configured for communicating with the server along a wireless path." The Applicant focused on the "and also" language, arguing that the claim required communication over both wired and wireless links, while the reference taught communicating over one or the other, but not both. The Examiner didn't disagree, and instead relied on modifying the reference to use both.

The Board, however, found that the "configured for" language did not require actual communication over both links, merely that the component support both wired and wireless communications. Using this construction, the Board affirmed. If the Applicant had predicted at least the possibility of this interpretation, the Applicant may have chosen not to appeal.

Notably, the Iwamura Board did not marks this as a new ground of rejection. The Examiner didn't put an explicit claim construction on record, so maybe the Board didn't view this as a different claim construction? Though I say the first claim construction on the record should be a new ground.

Applicant mistakes may result in losing at the BPAI, but is the BPAI following the law?

Last week I posted my list of "Top 10 Mistakes in Arguing on Appeal to the BPAI," and followed up with posts to elaborate on the first 3 of those mistakes.

This topic has drawn more comments than usual. A number of the comments say the BPAI isn't following the law for prima facie case, burden of proof, standard of review, etc.

This series of posts is about what approaches don't seem to work at the BPAI, practically speaking. Not about whether the BPAI is performing a proper review as required by administrative law.

David Boundy has graciously agreed to do a guest post soon to explain the topic of burden of proof and standard of review at the BPAI. David is very knowledgeable about administrative law as it applies to the PTO. David is well known in the patent community for insisting that the PTO follow the law. David assembled and led the teams that made presentations at the White House Office of Management and Budget to show that the Patent Office's Continuations, 5/25 Claims, IDS and Appeal rules violated many provisions of administrative law. This effort led OMB to direct the PTO to withdraw these rules in January and December 2008!

Mistake #3 when arguing at the BPAI: Failing to address Examiner's specific findings

I'm starting off 2011 with my "Top 10 Mistakes in Arguing on Appeal to the BPAI." In this post I'll elaborate on Mistake #3: Failing to address Examiner's specific findings.

In discussing Mistake #1 – Conclusory assertion rather argument with explanation – I noted that Applicants often fail to make a real argument on appeal. One reason may be that the Examiner hasn't given the Applicant much to work with, so that there's nothing specific to rebut.

But by the time you reach appeal, the Examiner has probably made specific findings about how the reference teaches your claim elements. If so, you need to pay attention to exactly what the Examiner said, and deal with it. Here are a few examples where the Applicant failed to do this and lost:

This passage suggests that the functional circuit design, on which the Examiner reads the recited "initial IC device design" (Answer 3), contains information indicating which structures (e.g., transistors and interconnect lines) are connected to each other, which would appear to be enough to satisfy the claim. Appellants have not explained why the Examiner's reliance on paragraph [0118] is misplaced, instead simply asserting that "[t]here is no language in the cited passages that teaches that the initial IC device design includes a desired relationship between at least two structures within the IC device design" (Reply Br. 6). The rejection of claim 7 is therefore affirmed.
(Ex parte Lukanc, emphasis added.)

The Examiner’s uncontested finding that Yamamoto’s figure 4(c) depicts the locking member 4A (the “connecting member”) having an “abutment section” (the upper right section of U-shaped intermediate portion 41) engaging the lower face of main portion 30 (the “corresponding section of said main holder member”) belies Appellants’ arguments (see App. Br. 8, Reply Br. 2-3) that  Yamamoto’s locking member 4A does not have a front abutment section which engages the holder main member 3. See Facts 1 and 4. 
(Ex parte Yanagita, emphasis added.)

With respect to Appellants’ argument that Franchere does not teach the “wells for containing a fluid sample therein” feature required by claims 1, 12, 27, and 35, Appellants’ argumennt is unpersuasive of reversible error because it fails to address the Examiner’s stated case, which is based on, inter alia, Franchere’s test tubes and the corresponding openings in Franchere’s modular units, as meeting the “wells” feature required by claims 1, 12, 27, and 35. In this regard, the Examiner finds and Appellants do not specifically dispute that Franchere’s test tubes are capable of containing a fluid sample therein. (Compare Ans. 3 and 4 with App. Br. 6-10 and Reply Br. 2-5). On the present record, the term “well” is any depression that can hold a fluid sample. Accordingly, Appellants’ argument is unpersuasive of reversible error.
(Ex parte Blouin, emphasis added.)

Don't forget to see if the Examiner has specifically addressed claim construction, and to contest the interpretation if your argument implicitly relies on a different interpretation of that term.

Next, we turn to the Appellants' argument that neither Carmody nor DeWolf teaches systematically updating the detailed record. Br. 2-5. In response the Examiner construes the term systematical to be "methodical in procedure or plan;" ... then finds that paragraph [0081] of Carmody and paragraph [0008] of DeWolf teach this limitation. Answer 10. The Appellants do not challenge the reasonableness of the Examiner's construction nor do they address the Examiner's specific finding above that Carmody and DeWolf teach this limitation.We are not persuaded by this argument of the Appellants.
(Ex parte Capotosto, emphasis added.)

Finally, you should specifically look for new findings, reasoning, or claim interpretation in the Examiner's Answer. Then you need to file a Reply Brief to address any new stuff, as noted in this BPAI decision:

[The Appeal Brief] argument overlooks the fact that the process depicted in Figure 5 is performed at each data rate. ... Furthermore, as pointed out by the Examiner in the Answer, Pinard specifically describes using the data rate as a basis for selecting an AP ... Appellants, who did not file a reply brief, have not addressed, let alone shown error in, the Examiner’s reliance on these column 2 passages.
(Ex parte Backe.)

Since I've started this series on Mistakes when arguing at the BPAI, I've heard from several readers who ask how to square the BPAI decisions I've cited with the BPAI's own precedential opinion Ex parte Frye. After all, doesn't Frye say that the BPAI should not give deference to the Examiner's findings? 

It seems to me that Frye clearly limits that deference to contested findings.

     ... Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.
     Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. For example, if an appellant contests an obviousness rejection only on the basis that a cited reference fails to disclose a particular limitation, the Board need not review the other, uncontested findings of fact made by the examiner underlying the rejection, such as the presence of uncontested limitations in the prior art.

Mistake #2 when arguing at the BPAI: Arguing outside the claims

Continuing with my Top 10 Mistakes in Arguing on Appeal to the BPAI, in this post I'll discuss Mistake #2: Arguing outside the claims.

In discussing Mistake #1, I said that the Board is not often persuaded by conclusory assertions and you're more persuasive with a real argument with explanation. However, your argument should stay close to the claim language. Otherwise, the Board may ignore the argument as being outside the scope of the claim.

   Appellants argue (App. Br. 10) that, in contrast to the claimed invention requiring that the processor monitor a stored version of the video transmission, the Spehr reference monitors the actual transmission. According to Appellants (id.; Reply Br. 2), the claimed invention, by monitoring the stored information rather than the actual transmission, makes it easier to adjust another channel.
   We find Appellants' argument to be unpersuasive as it is not commensurate with the scope of claim 1. It is our opinion that Appellants’ argument improperly attempts to narrow the scope of the claim by implicitly adding disclosed limitations which have no basis in the claim. See In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). We find nothing in the language of claim 1 which requires monitoring the stored version of the video transmission. 
(Ex parte Cormack.)

   Appellants merely contend that Folegnani fails to disclose “to dynamically adjust the size of the monitoring period” without providing and supporting reasoning why. Furthermore, the Examiner found that this argument is not commensurate with the scope of claim 33. We agree. Claim 33 recites “wherein said period of time comprises a cycle window that is variable and controllable.” There is no requirement that the monitoring period be dynamically adjusted. Instead, the period of time must be variable and controllable.
(Ex parte Buyuktosunoglu.)

Arguing outside the claims is a bad idea for a second reason: if your patent is asserted, such an argument limits the claim scope through the doctrine of prosecution disclaimer.

Prosecution disclaimer is sometimes referred to as prosecution history estoppel. See my previous post here for an explanation of the difference between the two.

Mistake #1 when arguing at the BPAI: Conclusory assertion rather than argument with explanation

In a previous post I listed my Top 10 Mistakes in Arguing on Appeal to the BPAI. Now I'll provide some explanation about Mistake #1: Conclusory assertion rather than argument with explanation.

Perhaps the most damaging mistake is not actually making a real argument. A surprising number of arguments in Appeal Briefs look like this:

Claim 1 recites a widget. Reference A does not teach a widget. Therefore the rejection should be overturned. 

I don't find that convincing, and the BPAI isn't usually convinced either. Here's what the BPAI has to say about "arguments" like that one:

Appellants’ contention that the references do not teach each limitation of the claim is supported by a summary of the references (Br. 11-14) and quotation of claims 4, 21, 41, and 61 (Br. 15-16). Appellants’ summary of the references and quotation of the claims contains no explanation of how the claim language patentably distinguishes over the references, and thus fails to identify a basis for concluding that any of the Examiner’s findings are erroneous.
(Ex parte Candy.)

For his part, the Appellant does not address these findings. Instead, he merely alleges that "[n]o such generation of suggested edits is taught by Microsoft Excel 2000" (Appeal Br. 11) and that "[t]here is absolutely no teaching whatsoever in Excel 2000 of such hierarchical log of edit regions." (Id. at 12.) These allegations "do not . . . explain why the Examiner's explicit fact finding is in error."
(Ex parte Poynor.)

Sometimes the argument provides a tiny bit more explanation:

Claim 1 recites a widget. Reference A teaches a blodget. A blodget is not a widget. Therefore, the rejection could be overturned.

But WHY is a blodget is not a widget? The BPAI wants to know:

Appellant argues that the combination of Angell and Orr does not teach or suggest "a stenocaptioning device configured for transcribing audio from an audio event simultaneously with an occurrence of the audio event." First, it is argued that the transcribed text in Angell is "synchronized." Br. 7-10 § A.1. This argument is not helpful because it does not explain why synchronized text cannot meet the limitation.
(Ex parte Pettinato.)

The only time you're going to win with conclusory assertions is when the subject matter of the claim is worlds apart from the subject matter of the reference, so that the assertion "does not teach" is almost self-evident. Say, a claim to a chemical compound and a reference describing a mousetrap.

Now, I understand there are valid reasons why prosecutors would rather not make "real" arguments. The first one that comes to mind is prosecution disclaimer (also referred to as argument-based estoppel). If I thought I could get allowances with nothing but conclusory assertions, then I'd be tempted too.

Another reason for avoiding "real" arguments might be a fear of an inequitable conduct charge for mischaracterizing the reference. But based on the case law I've seen, I think this fear is overblown.

Top 10 Mistakes in Arguing on Appeal to the BPAI

I've been blogging about BPAI decisions for about a year and a half, and I definitely see some common themes about which arguments win on appeal and which ones don't.

So I'll start off 2011 with this list of "Top 10 Mistakes in Arguing on Appeal to the BPAI" :

1. Conclusory assertion rather than argument with explanation
2. Arguing outside the claims
3. Failing to address Examiner's specific findings
4. Not recognizing that the real issue is claim interpretation
5. Failing to address the combination
6. Arguing the Teaching, Suggestion or Motivation test
7. Using attorney argument when evidence is required
8. Using a declaration that amounts to opinion without factual support
9. Arguments that ignore relevant case law
10. Arguments about issues that aren't appealable

This ranking is not based on anything fancy like a statistical study. Instead, this is my overall impression, based on reading many BPAI decisions, of which tactics are commonly used yet unwise.

Also, I won't address the question of whether or not the BPAI is legally correct in treating these actions as mistakes that are damaging to the Applicant. For example, whether the BPAI is properly allowed to affirm simply because the Applicant didn't address an Examiner finding.

I'll follow up this list with other posts that go into more detail on each of these mistakes.

New Federal Circuit patent decisions blog

Lots of blogs discuss new patent decisions from the Federal Circuit, so there is probably something for everyone. I find some of them to be too academic for my taste, others are too cutesy, and still others have too many long quotes.

I've found a relatively new Federal Circuit decision blog that I particularly like: Speedy Federal Circuit Briefs. The blogger is C. Allen Black, a patent attorney in Pennsylvania. The blog's format is like a case outline, with sections for Issue, Findings, Lower Court's Disposition and Findings on Appeal. The author usually ends each post with one or two sentences of "Allen's Observations." Another nice touch is that the author posts "No new opinions" when appropriate, which means I don't have to wonder whether I missed something on a particular day.