Details:
Ex parte Albrecht
Appeal 2009011896; Appl. No. 10/885,980; Tech. Center 3600
Decided January 28, 2011
The claim at issue read:
27. Apparatus for providing a controlled flow of fluid from a first fluid component to a second fluid component, comprising:
a one-piece orifice plate ... the orifice has a general1y circular shape and a substantially constant diameter ...
The Examiner rejected the emphasized limitation under written description, enablement, and indefiniteness. In the Appeal Brief, the Applicant argued that the written description rejection was flawed because the specification had been amended to provided explicit support for the limitation. The Applicant argued against the enablement requirement by pointing to the drawings, and argued the indefiniteness rejection by explaining that the terms were meant to allow for minor deviations from a perfect shape.
In the Answer, the Examiner asserted that the written description rejection was proper because the amendment to the specification wasn't entered. In regard to the enablement requirement, the Examiner indicated that
While the Figures may show a circular opening, for example, the disclosure does not define "generally" or a "substantially constant diameter." These limitations imply a range. But the specification is silent as to what that range might comprise, especially since the Figures are not stated as being to scale.
The Examiner provided a similar explanation for the indefiniteness rejection:
As noted above, the Figures are not disclosed as being to scale. Thus it is unclear what ranges would include the "minor deviations" Appellant is accounting for.
The Board essentially found that the Examiner had confused written description and enablement with indefiniteness.
The Examiner states that “the terms ‘generally’ and ‘substantially’ are not defined.” Ans. 7 (discussing new matter objection). While we agree that Figures 7A and 7B fail to provide any indication of any specific range or scope for these terms of degree, the Examiner’s concern is an issue of claim definiteness, and is not a matter of written description, new matter, or enablement.
The Board found that the specification and figures showed the Applicant had possession of the limitation "the orifice has generally circular shape and a substantially constant diameter" and therefore reversed the written description rejection. The Board also found that the Examiner had not explained why a POSITA could not make and use this feature, and so reversed the enablement rejection.
The Board reversed the indefiniteness rejection too, with the following explanation:
As to the claim limitations calling for the orifice to have “generally circular shape” and a “substantially constant diameter”, we find the terms “generally” and “substantially” as used in the context of Appellants’ Specification and Figures to take on their ordinary and customary meanings which denote approximation. See Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1366 (Fed. Cir. 2001). As such, the orifice has to have for the most part a circular shape and a largely or approximately constant diameter. See App. Br. 10 (Appellant stating that “generally” is used to encompass “minor deviations from a pure circular shape” and arguing that “substantially” is used to encompass “insignificant deviations from a pure circular shape”).
As such, we find that the use of the term “generally” to modify the phrase “circular shape” and the use of the term “substantially” to modify the phrase “constant diameter” do not render these phrases so unclear such that there is no means by which to ascertain the claim scope.
My two cents: I'm glad the Board untangled the confusion in the written description and enablement rejections. In a lot of the file histories I read, Examiners and Applicants alike are guilty of mixing up new matter, written description, enablement and indefiniteness.
How did these claims survive Miyazaki?
ReplyDeleteEcho Labs was an infringement case, with a presumption of validity. Does the BPAI even apply its own precential law?
Was this Examiner on the job for a couple of weeks before making this rejection? And a primary backed him up? Who doesn’t know the use of “generally” and “substantially”? That’s ludicrous to waste that time and money on this rejection. I don’t know what happened in this case, but I ould definitely have had a pre-appeal brief conference and even appealed to his supervisor in a phone interview before filing this appeal brief. And I would have a hard time not drafting an absolutely scathing brief putting the Examiner in his place.
ReplyDelete>How did these claims survive Miyazaki?
ReplyDeleteSo you think the presence of "substantially" and "generally" leads to "two or more plausible constructions", which would be indefinite under Miyazaki?
>Echo Labs was an infringement case,
>with a presumption of validity. Does the
>BPAI even apply its own precedential law?
While it's true that prosecution uses a slightly different claim construction standard that litigation, I don't think it follows that all claim construction canons are inapplicable during prosecution.
"So you think the presence of "substantially" and "generally" leads to "two or more plausible constructions", which would be indefinite under Miyazaki?"
ReplyDeleteNot just two - infinite. That is the problem with Miyazaki. If the Examiner would have just identified two such possible constructions, and cited Miyazaki, maybe the outcome would have been different.
"While it's true that prosecution uses a slightly different claim construction standard that litigation, I don't think it follows that all claim construction canons are inapplicable during prosecution."
In my view, the difference between Miyazaki and "insolubly ambiguous" is not slight.
This discussion does raise an interesting question, though: what role does "ordinary and custom" meaning play in the broadest reasonably construction analysis? According to MPEP 2111.01 III, ordinary and custom meaning seems to be the heart of the broadest reasonable interpretation (unless the application clearly indicates otherwise).
Yet, I've heard many top practitioners refer to "ordinary and custom" meaning as the default interpretation in litigating issued patents, and *contrast* that standard with broadest reasonable. It looks like not a single case cites in 2111.01 III begins with "In re", so I'm guessing that not a single one involved the broadest reasonable construction...
I don't know about the overall determination in this case. Here's a few thoughts though.
ReplyDeleteHe should have done a better job on his 112 1st. If he wanted to make it stick then he should have noted that he felt that the original pertinent disclosure was much narrower than the applicant's newly submitted language, and then stated that if the applicant wanted that broader language in the application then he should have put it in to begin with.
That would have at least explained the actual issue in a manner that the BPAI would understand, as is they appear to have missed the entire point and told him he was confusing sections of 112. He actually wasn't, but he didn't explain himself very well.
As to enablement, that rejection simply probably wasn't proper here, but if he wanted to go there then he should have explained it better. His issue is that he feels like the applicant and the prior art did not provide an enabling disclosure for the fabrication of a species of generally circular pieces sufficient to justify the allowance of the claims. In other words, he probably wanted to go with a scope of enablement rejection. And even then, it would probably be fail.
As to indefinteness, I don't know it just doesn't seem like an indefiniteness problem in this instance.
What I would have done is hit him with the 112 1st and said that if he felt like he had sufficient disclosure for those terms then he wouldn't mind using the terms he actually put in the application as originally filed since blatantly they'd cover exactly what he has support for, and if they're broad enough to give him support for those interpretations then the claim itself will thus be the same breadth.
Indeed, I doubt you could argue that if he left the generally out that you'd have all that different of a claim scope. The "minor variations" that he wants to build in with the word "generally" are already present and presumed in the overall limitation sans "generally". Therefore, you must assume that he's trying to broaden the claim outside what he actually has support for, or at least so that he can argue later that the claim is broader than what he wants it to be now.
I have yet to have any backtalk when I send out a rejection like this. And I've had ample opportunity to use it.
"How did these claims survive Miyazaki?"
Too many examiners don't know about it. Plus, this thing has been on appeal for years. Hardly anyone knew about Miyazaki back then. At to why the BPAI didn't bring it up themselves is anyone's guess. Either they don't know about it, or they felt there was only really one real reasonable interpretation to be had in this case. Indeed, the examiner and the applicant are both saying that the claim means the same thing though they may use slightly different terms to denote practically, if not exactly, the same exact scope of subject matter.
"Not just two - infinite. "
Nah, not really man.
" If the Examiner would have just identified two such possible constructions, and cited Miyazaki, maybe the outcome would have been different."
I agree, the board would have told him that there weren't an infinite number of possible constructions, there was one. Then they'd have told him what they felt like it was, and then reversed. Sure, the outcome in terms of the language used would be different, but not the ruling.
"Nah, not really man."
ReplyDeleteYou're just not being creative enough. A mathematician could easily create a formula to define how irregular a circle needs to be before not satisfying the claim, and could come up with a second formula for defining an infinite number of variations of the first formula.
For example, suppose that you could come up with a rough measure of how much a circle deviates from perfection, along a scale. Suppose that the scale goes from 0-10. Suppose that values below 2 are generally perfect enough to satisfy the claim. But what value would you choose: 2.00001, or 1.9999, or 2.000002, etc. You could come up with an infinite variety of definitions for the boundary between infringing and non-infringing, all of them would be reasonable. Each of them would be a plausible interpretation under Miyazaki.
"I agree, the board would have told him that there weren't an infinite number of possible constructions, there was one. Then they'd have told him what they felt like it was, and then reversed. Sure, the outcome in terms of the language used would be different, but not the ruling."
Maybe this particular panel would have. But a different panel, if actually followed Miyazaki, might not have. The whole point of Miyazaki is, I think, that the Examiner has the right to make the applicant further define the claim language whenever the examiner identifies any arbitrary ambiguity in it, because applicants, unlike patentees, can still make amendments.
>You could come up with an infinite variety
ReplyDelete>of definitions for the boundary between
>infringing and non-infringing, all of them
>would be reasonable. Each of them would be a
>plausible interpretation under Miyazaki.
Says you. The BPAI apparently doesn't feel that way, since the Board does not regularly find claims with generally and substantially to be indefinite under Miyazaki.
Sure, you can come up with an infinite number of constructions. That doesn't make them reasonable to a POSITA.
>But a different panel, if actually followed >Miyazaki, might not have.
I'm guessing your answer to my comment above -- the Board does not find substantially to be indefinite -- is that the Board itself is not following Miyazaki.
I don't see it that way. Instead, I think your idea that "generally" leads to an infinite number of claim interpretations is flawed, since I say a POSITA does not interpret "generally circular" using a mathematical approach.
"Sure, you can come up with an infinite number of constructions. That doesn't make them reasonable to a POSITA."
ReplyDeleteAll of the mathematical constructions I discussed above would be, in the words of Miyazaki, "plausible."
"I don't see it that way. Instead, I think your idea that "generally" leads to an infinite number of claim interpretations is flawed, since I say a POSITA does not interpret 'generally circular' using a mathematical approach."
My view doesn't hinge on there being an infinite number of constructions, or on using mathematics to define the constructions. Under Miyazaki, you only need to two plausible constructions. I could come up with two plausible constructions (and many more) using words instead of numbers. The result would be the same.
Two more points:
1. According to Patentlyo, when reporting on Miyazaki, "The BPAI's definition for pre-issuance indefiniteness focuses on 'plausible' indefiniteness and varies dramatically from the Federal Circuit's standard of 'insolubly ambiguous.'" So I think that the difference is not slight.
http://www.patentlyo.com/patent/2008/12/during-prosecut/comments/page/2/
2. Miyazaki heavily relies on Ecolab, Inc. v. Envirochem, Inc. (264 F.3d 1358, 1366 (Fed. Cir. 2001)) for its indefiniteness analysis. Consider this line from Echolab: "Furthermore, the use of the term "substantially" to modify the term "uniform" does not render this phrase so unclear such that there is no means by which to ascertain the claim scope." That sounds like the "insolubly ambiguous" standard for invalidating patents, and not the "two or more plausible constructions" standard of Miyazaki.
"A mathematician could easily create a formula to define how irregular a circle needs to be before not satisfying the claim, and could come up with a second formula for defining an infinite number of variations of the first formula."
ReplyDeleteSo now the ability to describe the exact same thing in infinitely different ways is indefinite under Miyazaki? Sorry bucko, the ability to say the same exact thing an infinite amount of ways is not what a Miyazaki rejection is about. It is when they're saying something in the claim that you cannot tell what the proper interpretation is because of two or more reasonable and possible DIFFERENT interpretations, not DIFFERENT WAYS of saying the same exact interpretation.
Learn the Miyazki, study the Miyazaki, live the Miyazaki.
"For example, suppose that you could come up with a rough measure of how much a circle deviates from perfection, along a scale. Suppose that the scale goes from 0-10. Suppose that values below 2 are generally perfect enough to satisfy the claim. But what value would you choose: 2.00001, or 1.9999, or 2.000002, etc. You could come up with an infinite variety of definitions for the boundary between infringing and non-infringing, all of them would be reasonable. Each of them would be a plausible interpretation under Miyazaki."
That's the same argument advanced against all of the "wiggle" language. And guess how many times it has been smacked down? Lots. Also, guess how much it has to do with Miyazaki? None. If you go read the caselaw, the judiciary simply picks a number it finds reasonable for the case at hand and then says that is the only "reasonable" interpretation. And that's how it will continue to be. Miyazaki does not affect this because the INTERPRETATION is definite, and the courts will tell you that there is only one reasonable interpretation in any case like the ones I just discussed ven though one of ordinary skill might have a bit of trouble telling what it is.
There is a distinction to be made, and the courts make it. And they'll continue I have little doubt.
"The whole point of Miyazaki is, I think, that the Examiner has the right to make the applicant further define the claim language whenever the examiner identifies any arbitrary ambiguity in it"
Well it's too bad you haven't bothered to read Miyazki well. When you do, get back to us.
If the logic given here for supporting a Miyazaki rejection is correct, then any claims which recite a range are indefinite because they have a infinite interpretations.
ReplyDeleteThat must be nonsense.