Patentee loses argument about "printed publication" in reexam appeal

Takeaway: In an ex parte reexamination appeal, the Patentee argued, without success, that the reference was not a "printed publication" under § 102(b). (Ex parte i2 Technologies, Decision on Appeal, Decision on Rehearing.) The Patentee first argued that the reference was not a "textbook" as characterized by the reexam Requester, but was instead a user manual that was distributed by the professor author to some students. The Board found that the reference was "disseminated and publicly accessible" as required by § 102(b), since declaration evidence submitted by the Requester established that the reference was freely distributed to 600 students in a class and that additional copies were sold to anyone who asked.

The Patentee further argued that the sole evidence of dissemination and public availability – the declaration – was insufficient because the declaration was uncorroborated, citing to TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004) The Board distinguished TypeRight. In TypeRight, the court had reason to doubt about the credibility of the witnesses, since the document was undated and there was a discrepancy in the witness' recollection of the reference's date. The Board found that here the patentee had not raised "any specific doubts as to the credibility of the evidence." Therefore, no corroboration was required.

Details:
Ex parte i2 Technologies
Appeal 201002337; Reexam. 90/008,645; U.S.5,930,156; Tech. Center 3900
Decision on Appeal October 26, 2010, Decision on Rehearing March 17, 2011

An Ex parte Request for Rexamination relied on the "Roberts 1983 Reference" as a § 102(b) reference. The Requester described the reference as "a textbook written by Prof. Stephen D. Roberts describing a simulation modeling language and environment called 'INSIGHT' that Prof. Roberts developed, implemented, used, and sold from the mid 1970s until about 1990." According to In re Klopfenstein, determining whether a reference qualifies at a "printed publication" under § 102(b) involves looking at two factors, public dissemination and indexing or cataloging.

The Requester asserted that the reference was "widely disseminated," and as evidence, submitted a declaration by Prof. Roberts stating that several hundred copies of the book were distributed to students. The Requester further asserted that the reference was "widely accessible to anyone who wanted a copy." As evidence, the same declaration stated that Roberts referred to the textbook in a number of journal articles and then sold the book to journal readers who contacted him about it.

During reexamination, the Patentee argued that In re Klopfenstein requires a "printed publication" to meet both the disseminated and publicly accessible elements, but the requester had failed to show either. As to public dissemination, the Patentee argued that:

[T]he Roberts document is not a traditional textbook. It was not published by a typical publishing house, not permanently bound, and not a hardback book. ... [The] Roberts document appears to be a three-hole punched, loose-leaf document merely placed in a three-ring binder. ... There is not one piece of evidence (e.g., sales receipts, invoices, bookstore information) that supports the contention that the Roberts document was publicly accessible as a textbook. 

With regard to indexing or cataloging, the Patentee argued that not only was no evidence presented, in fact the author took steps to avoid indexing or cataloging. Specifically, Roberts did not obtain an International Standard Book Number which would allow sellers to order the book.

In a Final Office Action, the Examiner maintained his position that Roberts 1983 was a proper § 102(b) reference. In response to the Patentee's dissemination argument, the Examiner asserted that "published by a typical publishing house, permanently bound and hardback are not required criteria for a printed publication." In response to the Patentee's cataloging argument, the Examiner asserted that the law does not require "that a publication be indexed or cataloged in a public repository" or "for a publication to use an ISBN number."

The Patentee appealed. The Appeal Brief included those arguments discussed above, as well an argument that applies to reexam but not to original prosecution. The Patentee argued that the requester's declaration alone was insufficient as a matter of law, since "corroboration is required of any witness whose testimony alone is asserted to invalidate a patent.” (TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004)

The Examiner disagreed with this point in the Answer, citing In re Etter for the proposition that reexamination involves no presumption of validity. The Examiner reiterated that the Roberts 1983 Reference meet the criteria for § 102(b) laid out in In re Klopfenstein.

In its Decision on Appeal, the Board first laid out the controlling case law for § 102(b) as follows:

Our reviewing court has explained that a reference is "publicly accessible" upon a satisfactory showing that: (1) the “document has been disseminated”; or (2) “otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006) (quoting In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). 

The Board applied Bruckelmeyer to find that the Roberts 1983 Reference was a "printed publication" under § 102(b). In response to the Patentee's arguments about the type of publication, the BPAI noted that the law does not hinge on the type of binding or the identity of the publisher, but instead on whether the reference was "disseminated and publicly accessible." In response to the Patentee's arguments about indexing, the Board noted that indexing or cataloging is not a requirement for "publicly accessible." "Since the reference was freely distributed to individuals interested and ordinarily skilled in the art without restriction, we agree with the Examiner’s finding that the Insight reference was publicly accessible and therefore a 'printed publication' within the meaning of 35 U.S.C. ¶ 102(b)."

The Patentee then filed a Request for Rehearing with the BPAI, arguing that "the Board overlooked 'certain matters of fact or law with regard to whether the Insight reference is qualified as a printed publication under 35 U.S.C. § 102.' ” Specifically, the Patentee argued that "corroboration is required of any witness whose testimony alone is asserted to invalidate a patent," citing to TypeRight Keyboard Corp. v. Microsoft Corp., 374 F.3d 1151, 1159 (Fed. Cir. 2004). In its Decision on Rehearing, the Board distinguished TypeRight. In TypeRight, the court had reason to doubt the credibility of the witnesses, since the document was undated and there was a discrepancy in the witness' recollection of the reference's date. The Board found that here the patentee had not raised "any specific doubts as to the credibility of the evidence," and therefore, no corroboration was required.

My two cents: I find that reexamination appeals often have interesting arguments. Appellants don't usually argue about whether or not a reference is actually prior art, probably because most Examiners use issued patents and patent publications and there isn't much room to argue there. But non-patent literature is much more common in reexaminations, where the requester has reason to spend a lot of money on a literature search. That leaves a lot more room to argue about the "printed publication" requirement. And since an in-force patent is at stake, it's not surprising that the patentee digs really deep with its arguments, bringing up facts like ISBN numbers and sales receipts.

If you think the requester bent the rules by submitting a declaration of facts showing dissemination, rather than actual evidence, think again. MPEP 2258 allows for declarations to "explain the contents or pertinent dates of prior art patents or printed publications in more detail."

This decision highlights a big difference between invalidating through reexam as compared to litigitation: reexam does not offer the opportunity to depose the declarant. I suppose the fact finder is supposed to take this into account when weighing the credibility of the declarant. The Board didn't comment on credibility here, so we don't know what they were thinking.

In refusing to require evidence to corroborate the declaration that described dissemination, the Board distinguished TypeRight by saying that in this reexam, the patentee had not raised "any specific doubts as to the credibility of the evidence". Was that a valid distinction?

In arguments before the Examiner, the patentee did point out that the events attested to by the declarant happened 20 years ago -- but the patentee didn't bring this up on appeal. Would that have been enough? Another way to attack a declarant is to show a relationship between the party and the declarant. But in reexam, there may be no way to discover who the declarant is or why he's submitting a declaration. So how is a patentee in reexam going to raise doubts as to the declarant's credibility? To me, the way the Board distinguished TypeRight doesn't make sense, given the differences between reexam and litigation.

BPAI finds that expansive definition of "functional polymer" in spec applies to claim term "polymeric compound" having same root

Takeaway: In Ex parte Brabec, the Examiner interpreted the claim term "polymeric compound" broadly to include a small number of repeating units. The Applicant argued that the ordinary meaning of polymer required a large number of molecules. However, the claim term "polymeric compound" was not present in the spec, and the spec did include an expansive definition of "polymer." This definition said the term "polymer" was “not intended to be subject to any limitation with respect to molecular size." The Board found that the spec's expansive definition of "polymer" also applied to the claim term "polymeric unit" and thus affirmed the obviousness rejection.

Details:
Ex parte Brabec
Appeal 2009008774; Application 10/522,862; Tech. Center 1700
Decided  July 28, 2010
The application involved an integrated circuit card having an integrated energy supply, such as a solar cell. Cards of this type are often used for a security cards or "smart" credit cards.

The claim on appeal read:

1. A chip card comprising
an energy converter that occupies either a portion or an entire surface area of the chip card, so that an energy supply of the chip card is integratedly present thereon,
wherein the energy converter comprises a photovoltaically active polymeric compound.

The limitation at issue was the "photovoltaically active polymeric compound."
In a final Office Action, the Examiner rejected claim 1 as obvious over two references: a primary reference that taught the chip card and a solar cell (energy converter); and a secondary reference that disclosed a solar cell which used metal-free phthalocyanine as a photovoltaically active compound.

In response, the Applicant argued that the Examiner's reliance on metal-free phthalocyanine was misplaced, since metal-free phthalocyanine was not a "polymeric compound." Specifically, the Applicant argued that "it is well known in the art that a polymeric compound is a molecule containing a large number of monomeric repeat units," whereas phthalocyanine is monomeric compound.

In an Advisory Action, the Examiner noted that the Applicant's position -- a polymeric compound is a molecule containing a large number of monomeric repeat units -- is inconsistent with the expansive definition of polymer in the Applicant's specification:
The terms polymer, organic material, and functional polymer are not intended to be subject to any limitation with respect to molecular size, particularly to polymeric and/or oligomeric materials, but instead the use of 'small molecules' is completely feasible as well.

Using the Applicant's own definition, the phthalocyanine compound in Loutfy met the claim limitation, since it was a "small molecule" with repeating units.
The Advisory Action also offered a dictionary definition of "polymer" as "a chemical compound or mixture of compounds formed by polymerization and consisting essentially of repeating structural units." Phthalocyanine was made of repeating structural units and so was a polymer under this definition too.

In the Appeal Brief, the Applicant acknowledged the expansive definition of "polymer" in the specification, but noted that the claim limitation used the term "polymeric compound" rather "polymer." Thus, the expansive definition did not apply. Furthermore, because the specification did not provide a special definition for "polymeric compound," the term took on its ordinary meaning.

The ordinary and accustomed meaning of the term "polymeric compound" is a molecule containing a relatively large number of monomeric repeat units. This meaning is consistent with the specification.

The Applicant then asserted that the phthalocyanine compound disclosed in the reference was an oligomeric compound, defined as "a few repeating units," rather than a polymeric compound. Finally, the Applicant argued that the specification's use of the claim term "polymeric compound" actually excluded oligomeric compounds. 

Indeed, given that the specification recites both "polymeric materials" and "oligomeric materials," one skilled in the art could readily understand that a polymeric material is different from and has a larger molecular size than an "oligomeric material." Thus, one skilled in the art could recognize that Appellant's intention for reciting the term "a polymeric compound" in claims 1 and 9, rather than the terms "polymer," "organic material," and "functional polymer'' defined in the specification, is to exclude oligomeric materials or small molecules from these two claims.

In the Examiner's Answer, the Examiner explained that the specification did not actually define the claim term "polymeric compound" yet expressed the Applicant's intention of not limiting the molecule size of a "polymer." Therefore, the Examiner interpreted "polymeric compound" as having "any number of repeating monomeric structure and can be small molecules as well." The compound disclosed in the reference, with a structure of four repeated monomers, met this definition.

On appeal, the BPAI agreed with the Examiner's claim construction, and thus affirmed the rejection. The Board first noted that the claim term "polymeric compound" was not even present in the specification or originally filed claims.

The closest term appears to be in the sentence, “Due to the ability to make a polymer solar cell out of photovoltaically active dyes/functional polymers, a chip card can be printed and inscribed with a polymer solar cell instead of printing ink.” (Spec. 2, 4th full para.; emphasis added.) This sentence, by itself, does not illuminate the meaning of the critical term used in claim 1.

To ascertain the meaning of the claim term, the Board then turned to the spec's expansive definition of "polymer," characterizing this as the "critical disclosure." (Definition reproduced above in discussion of Advisory Action.)
The Board then rejected the Applicant's reliance on ordinary meaning, and found instead that the spec's expansive definition of "polymer" also applied to the claim term "polymeric compound."

   We do not find persuasive Brabec’s attempt to dissociate the term “polymeric compound” from the broad definition given by the supporting 862 Specification to the root term “polymer.” The only express exclusions from the term “polymer” are conventional semiconductors and “typical metallic conductors.” The 862 Specification, in the passage quoted supra, expressly includes “small molecules” and “oligomers” as being within the scope of the terms “polymer solar cell” and “functional polymer.”
The only requirement is that the “organic material” be photovoltaically active.
   We therefore reject Brabec’s claim interpretation as being inconsistent with the originally filed specification. ...
   Had the Examiner read the claims in a vacuum, without benefit of the teachings of the 862 Specification, we have no doubt that the Examiner would not have interpreted the “photovoltaically active polymeric component” recited in claim 1 as encompassing a small molecule made from four monomers. Such an interpretation, however congruent with “common understanding,” would have been legal error, as it would have ignored the teachings of the 862 Specification.

My two cents: Since I don't practice in the chemical arts, my opinion isn't worth two cents. Maybe half a cent. Even so, this case is mostly about definitions, so the reasoning is probably relevant to any case where the Applicant defines one term and uses a different term in the claim.

The Applicant's expansive definition of one term – not used in the claims but related to a claim term – seems to have infected the meaning of another term actually used in the claims. I don't know enough about chemistry to agree or disagree with the specific outcome of this case, but the Board's basic claim construction rationale – looking to the express definition of one term when a similar term is not even present in the spec – seems reasonable.

I see this as a good case study on the pitfalls involved when you try to write a definition. Because I found the spec paragraph which the Board relied on as a "definition" to be ambiguous.

The terms "polymer" in "polymer solar cell," "organic material," and "functional polymer" herein encompass all types of organic, metalorganic and/or organic/inorganic synthetics and composites (hybrids) that are photovoltaically active. They signify, for example, all those denoted in English by terms such as "plastics." This includes all types of materials except for the semiconductors that form conventional diodes (germanium, silicon) and typical metallic conductors. Hence, there is no intended limitation in the dogmatic sense to organic material as carbon-containing material, but rather, the broadest use of silicones, for example, is also contemplated. Furthermore, the terms are not intended to be subject to any limitation with respect to molecular size, particularly to polymeric and/or oligomeric materials, but instead the use of "small molecules" is completely feasible as well. The word "polymer" in "functional polymer" is historically derived and makes no statement as to the presence of any actual polymeric compound. "Functional polymers" can mean semiconducting, conducting and/or insulating materials.

Does this passage really define "polymer" as the Board implied? Or does it define only the three more specific terms "polymer solar cell," "organic material," and "functional polymer?" And does it even define those terms?

To me, the passage does define "functional polymer." But I'm not so sure about "polymer solar cell" and "organic material." Note that "organic material" doesn't even contain the word "polymer." So what do we make of this sentence:

The terms "polymer" in "polymer solar cell," "organic material," and "functional polymer" herein encompass ...

Does this discrepancy mean the passage fails as a definition for "organic material" but nonetheless succeeds as a definition for "functional polymer" ?

BPAI finds that "incorporating information in a single screen for simultaneous display" reads on a series of screens presented on a single display

Takeaway: In Ex parte Schwartz, the Applicant appealed an anticipation rejection for a claim to a method of operating an ATM. The claim involved simultaneous display of information from multiple institutions: "incorporating the items of financial information [from different financial institutions] in a single screen for displaying on the display simultaneously." The Board found that a series of software screens presented on a single hardware screen met the claimed limitation.


Details:

Ex parte Schwartz
Appeal 2010002006; Appl. No. 10/348,145; Tech. Center 3600
Decided  December 29, 2010


The application related to automated teller machines. A representative claim on appeal read:

9. A method of operating of a self service terminal to present a user with aggregated account information in relation to a plurality of the user's accounts with individual financial institutions, the method comprising the steps of:
     (a) accessing, through the Internet, items of financial information remotely held in different financial institutions at a plurality of different locations; and
     (b) incorporating the items of financial information in a single screen for displaying on the display simultaneously.
(Emphasis added.)

The Examiner rejected originally filed claim 9 as being anticipated.  During prosecution, the Applicant amended from "a screen" to "a single screen" and argued that the reference did not teach "incorporating the financial information [from different financial institutions] in a single screen ... simultaneously." The Applicant agreed that the reference taught financial information from different institutions, but asserted that the reference merely taught an ATM with a single hardware screen. The Applicant explained that the specification used "screen" to mean something different than hardware. Specifically, the term "screen" was defined in the specification to refer to the user interface graphics, text, and controls, rather than the "hardware (for example, the LCD, CRT, or touchscreen) that displays the graphics, text, [and] controls." Since the reference taught a separate login procedure for each account, the account information was displayed "on separate screens, at different times" rather than on "a single screen" as claimed.

In a Final Rejection, the Examiner further explained that the reference taught the limitation at issue as follows:

Most ATMs consist of only a single physical screen, which displays all of the information accessible by the ATM. Therefore, the ATM's disclosed by Antonin consist of a single screen, wherein the screen accesses and displays the information disclosed by Antonin, namely, the information from a number of financial institutions noted by Applicant in his remarks.

The Applicant appealed the anticipation rejection. In the Appeal Brief, the Applicant pointed again to the specification's distinction between a screen and the hardware that displays it. The Applicant then argued that "a 'single screen' in which graphics, text, controls, etc. are presented (as in the present application) is not the same as a single screen in which the screen is a hardware device that can access and display information (as in Antonin)."

In the Answer, the Examiner further explained the rejection as follows:

In short, Appellant argues that Antonin discloses only a "screen" in the sense of a television screen, ATM screen, or computer monitor that comprises glass and a projection means for displaying information, and that this screen does not anticipate the "single screen" of claims 4 and 9, which is directed to a graphical screen, such as a menu screen of an ATM that presents options for a user to select from in order to advance to a subsequent screen ...
The Examiner did not, however, limit his description of Antonin to such an understanding of the word "screen." .... [T]he [XML] content disclosed by Antonin ... includes "screens . . . for guiding a user through the financial transactions" thus employing graphics and text to allow a user to proceed from one screen to the next in order to fulfill the transaction. Thus, the "screens" anticipate the "single screen" in claims 4 and 9 of the instant invention. The Appellant has not addressed these "screens" disclosed in Antonin.

The BPAI agreed with the Examiner. The Board acknowledged the specification's use of "screen" to refer to text and graphics while excluding physical hardware like an LCD or CRT. The Board then interpreted the claim at issue to require "displaying financial information in the form of text and graphics on a software 'screen' or window."

However, the Board found that:

Antonin describes guiding a user through information presented on a single screen in order to complete a financial transaction on an ATM. Furthermore, Antonin describes a screen in both the physical hardware sense and in the software window screen sense that is consistent with the claimed invention. 

Therefore, the Board found that the reference did teach a single screen for displaying financial information, and affirmed the rejection.

My two cents: I'm sure some of you reading this will think "even if the Applicant won the anticipation argument, it's OBVIOUS to present account information on a single screen rather than a series of screens." Probably, but that's not interesting so I'm not discussing that aspect.

I think the Board failed to appreciate the simultaneous aspect of the claim: "(b) incorporating the items of financial information in a single screen for displaying on the display simultaneously." I think that single word does distinguish over the reference's series of "software" screens that appear on a single hardware display. I think the Applicant's arguments should have focused more on "simultaneously." The Applicant mentioned this in the first response, but didn't develop the argument in the Appeal Brief. And while the Applicant did a good job of making the software vs. hardware distinction, maybe the argument would be stronger if it was a bit more nuanced: software screen vs. hardware display, rather than software screen vs. hardware screen.

Seems like the Applicant took some care in the spec to make the distinction between a software "screen" and the hardware that displays the screen, and between the invention's single screen which displayed information from multiple institutions simultaneously and the series of screens used in the prior art:

The term "screen" is used herein to denote the graphics, text, controls (such as menu options), and such like, that are displayed on an SST display; the term "screen" as used herein does not refer to the hardware (for example, the LCD, CRT, or touchscreen) that displays the graphics, text, controls, and such like. Typically, when a transaction is being entered at an SST, a series of screens are presented in succession on the SST display. For example, a first screen may request a user to insert a card, a second screen may invite the user to enter his/her PIN, a third screen may invite the user to select a transaction, and so on.

Could the Applicant have better expressed the distinction in the claims? A negative limitation is one way to do that – something like "in a single screen rather than a series of screens." Negative limitations often risk violating the 112 First written description requirement, but I don't think that would be the case here, given the spec paragraph I quoted above.

BPAI finds needle "configured to drive a suture against tissue without severing the suture" does not require the tip to sever the suture in all scenarios

Takeaway: The Applicant claimed a needle tip "configured to drive a suture against tissue without severing the suture." On appeal, the BPAI affirmed an anticipation rejection after finding that the limitation "excludes only those structures that would sever a suture in every instance upon being driven against tissue" and "does not mean that in all circumstances the tip severs the suture material."

Details:

Ex parte Strkyer Endoscopy
Appeal 2009-010003; Appl. No. 10/680,079; Tech. Center 3700
Decided   December 22, 2010

This application involved a surgical apparatus for delivering and retrieving a suture. Claim 36 included a cannula (hollow tube for insertion into a body cavity), and the disputed limitation was "wherein a portion of a distal end of the cannula is configured to drive a suture against tissue without severing the suture."

The Examiner rejected claim 36 as being anticipated by Violante, which disclosed a surgical instrument including a hollow needle for delivering suture thread to a body location. According to the Examiner, the needle tip 42 in FIG. 2 corresponds to the "distal end of the cannula is configured to drive a suture against tissue without severing the suture."

Neither FIG. 2 nor any other figure in Violante showed the needle tip in detail. But in the Appeal Brief, the Applicant pointed to the portions of the specification which described the needle tip. These portions described the needle tip as "beveled and sharpened" and "present[ing] a sharpened edge that may be employed in cutting of suture material." The Applicant argued that "the bevel causes the interior surface of the trailing end of the bevel to be sharply acute," which presents "a distinct danger that a suture ... will be severed during insertion." Thus, Violante's needle tip was not "configured to drive a suture ... without severing."

In the Answer, the Examiner responded that Violante met the claim limitation in two ways. First, while the point of the needle tip is sharp, the face of the bevel is blunt. Thus, the face of the bevel is "a portion of the distal end of the cannula" which can be applied to drive the suture "without severing." Furthermore, even the sharp portion of the beveled tip "forms a narrow point that would not likely engage and sever a suture." (Emphasis added.) Since Violante describes the needle as being used for tissue penetration "there is little or no danger that a suture inserted through the use of the device of Violante would be severed during insertion."

The Applicant responded to this last point in the Reply Brief.  While acknowledging that a beveled and sharpened tip can penetrate tissue, the Applicant argued that the reference did not disclose "how the suture can be inserted through tissue without being severed by the sharpened edge." According to the Applicant, the reference did not explain how the needle tip actually interacts with the suture during tissue puncturing. 

The Board affirmed the anticipation rejection, but seemed to apply a slightly different rationale. The Board agreed with the Examiner that some portions of the needle tip would be incapable of severing the suture. But while the Examiner relied on the face of the bevel as that portion, the Board instead looked to the "side of Violante's tip that is not beveled". That side "remains unmodified and thus retains the curved shape of the cylindrical tube's outer surface." The Board found that this curved portion of Violante's needle tip "would not operate to sever suture when driven against tissue."


The Board then went further to note that Violante's structure actually taught more than was necessary. According to the Board, all that was necessary to satisfy the "broadly written" claim was "a structure that in some circumstances will not sever a suture when pressed or driven against body tissue. "

[C]laim 36, as broadly written, excludes only those structures that would sever a suture in every instance upon being driven against tissue. That a "beveled and sharpened tip" includes a sharpened edge which may be useful in cutting a suture material does not mean that in all circumstances the tip severs the suture material. Indeed, the tip's ability to cut the material is not dependent solely on the tip's configuration but is also a function of other factors such as the driving force applied to the suture, the strength of the material that makes up the suture, and the tension on the suture. Violante's tip, even if
sharpened, may be driven against tissue with a force of inadequate magnitude to severe a particular suture. It is neither unreasonable nor inconsistent with Stryker's specification that the beveled and sharpened tip in Violante constitutes a structure that in some circumstances will not sever a suture when pressed or driven against body tissue. That is sufficient to satisfy claim 36.

My two cents: Was it the presence of "configured to" that led the Board to take such an expansive reading of the claim language? Under the Board's reading, a sharp needle tip meets the limitation as long as the surgeon uses minimal force and/or the suture is made of incredibly strong fiber. Does using purely functional language always result in this sort of interpretation?

To combat this you may need to recite structure that performs this function. In this case, the structure that produced the behavior of "driv[ing] a suture against tissue without severing the suture" was a "blunt heel" (274 in FIG. 42 below).

In fact, the Applicant argued this distinction in the Appeal Brief:

This feature is very clearly shown in Figures 42 and 43, and is described in the accompanying text of paragraph 222, which reads "[tlhe cannula is preferably blunted or rounded off at 274 (see FIGS. 42 and 43) so as to minimize the possibility of damaging a suture during a tissue piercing operation, as will hereinafter be discussed in further detail." ...
Clearly, the blunt heel 274 is a feature entirely different from and independent of the beveled shape of the cannula tip.

The BPAI ignored this argument, of course

In this case, if Stryker intended that its cannula end includes the  specific structural characteristic of a "blunt heel," it could easily have amended the claims accordingly. It did not. Claim 36 requires simply that "a portion of the distal end of said cannula is configured to drive a suture against tissue without severing the suture." That feature is met in the prior art by a cannula or tube having a distal end with any portion of the distal end configured such that it does not sever suture when driven against tissue.

This feature was captured in an originally filed dependent claim. But that claim was canceled before appeal.

The first explanation of how the needle tip in the reference met the limitation didn't appear until the Examiner's Answer.

Arguments guaranteed to lose: the Examiner changed his position

Takeaway: The BPAI is not impressed when Applicants bring up the fact that the Examiner changed position during prosecution. The Board has ignored such arguments, citing to a decision from the Federal Circuit's predecessor court holding that the PTO is allowed to change its position. In re Ruschig, 379 F.2d 990, 993 (CCPA 1967)

I'll discuss three BPAI decisions which illustrate this point.

In Ex parte Ferri, the Applicant "complained" in the Appeal Brief that claims had been amended "in reliance on an interpretation offered by the Examiner, which was then withdrawn in a subsequent Office Action." The Board noted that

[This complaint] has been made by many applicants over the years and was answered many years ago by Judge Rich, who observed that "[t]here is nothing unusual, certainly, about an examiner changing his viewpoint as to the patentability of claims as the prosecution of a case progresses, and, so long as the rules of Patent Office practice are duly complied with, an applicant has no legal ground for complaint because of such change in view. The life of a patent solicitor has always been a hard one." In re Ruschig, 379 F.2d 990, 993 (CCPA 1967) (citation omitted).

In Ex parte Joos, the Examiner had withdrawn a rejection using a particular reference, then reapplied the same reference in a later round. The Appeal Brief characterized this behavior as "unreasonable, costly, and counterproductive." The Board was unsympathetic:

Reapplying references after both the Examiner and the Applicants had earlier thought them distinguished can be appropriate when, for example, the Examiner has a reason to think that a mistake was made. Mistakes may be costly and counterproductive to the Applicants and to the Office, but a good faith effort to correct the mistake is not unreasonable. Appellants’ objection here is not a legal ground for complaint. See Ruschig, 379 F.2d at 993; see also, Blacklight Power, 295 F.3d at 1273-74 (explaining that the Office may withdraw a notice of allowability to revisit an earlier patentability decision before a patent issues).

Ex parte Haley involved a method of gene therapy. In the first Office Action, the Examiner issued an enablement rejection, asserting that "the state of the art for gene therapy was highly unpredictable" at the time of filing. The Applicant got past the enablement rejection, but appealed an obviousness rejection in which the Examiner used the "predictable results" rationale from KSR.  In the Appeal Brief, the Applicant argued that this rationale was inappropriate, since the Examiner had admitted in the first Office Action that "the state of the art for gene therapy was highly unpredictable." The BPAI dismissed the argument, noting that "[w]hile ideally the Examiner’s position would remain consistent throughout prosecution, the Examiner is permitted to change his viewpoint regarding the patentability of the claims as prosecution progresses."

BPAI confuses enablement and written description?

Takeaway: In appealing a § 112 First written description rejection, the Applicant properly argued  "possession" in the Appeal Brief but mistakenly referred to "enabling" in the Reply Brief. The BPAI affirmed the rejection, but seemed to do so soley on the basis of enablement argument in the Reply Brief, ignoring the written description argument in the Appeal Brief. The Board first noted the Examiner's finding that the original specification did not disclose the amended claim's "computer program product on a computer readable medium." The Board then explained that the Applicant did not address this finding and instead argued that the amended claim was enabled under § 112 First. "Such an argument is immaterial to a written description rejection."

Details:
Ex parte Van Rijnsoever et al.
Appeal No. 2009006117; Appl. No. 10/482,145; Tech. Center 2400
Decided  June 28, 2010

The claim at issue was originally filed as:

10. A computer program product arranged for causing a processor to execute the method as claimed in claim 1.

The Examiner rejected the originally filed claim under § 101, asserting that "a 'program product' not embedded in a tangible medium amounts to functional descriptive material which is nonstatutory." The method claim 1, to which claim 10 referred, was not rejected under § 101 or § 112 First.

In response to the rejection, the Applicant amended as follows:

10. A computer program product on a computer readable medium that is arranged for causing a processor to execute the method as claimed in claim 1.

The Examiner withdrew the § 101 rejection for amended claim 10. But the Examiner gave a new rejection under § 112 First written description, asserting that "the original filed disclosure does not disclose a computer program product on a computer readable medium." The method claim 1, to which claim 10 referred, was not rejected under § 101 or § 112 First.

In the Appeal Brief, the Applicant argued the § 112 First written description rejection as follows:

The applicants are not certain whether the Office action asserts that the applicants did not have possession of a computer readable medium, or did not have possession of a computer program product on a computer readable medium. In either case, the applicants respectfully maintain that the possession of a method to perform a particular function, such as inserting synchronization information into a packet, circa 2003, necessarily and sufficiently indicates that the applicants possessed the ability to provide a computer program on a computer readable medium to execute each of the elements of claim 1. Accordingly, the applicants respectfully maintain that the rejection of claim 10 under 35 U.S.C. 112, first paragraph should be reversed by the Board.

In the Answer, the Examiner seized on the Applicant's use of the phrase "ability to provide" and  suggested that the Applicant had argued enablement rather than written description:

h. With respect to the rejection of claim 10 under 35 USC 112, first paragraph, Appellant, on page 15, argues that the possession of a method to perform a particular function, such as inserting synchronization information into a packet, circa 2003, necessarily and sufficiently indicates that the applicants possessed the ability to provide a computer program on a computer readable medium to execute the elements of claim 1.
     The originally filed disclosure does not disclose a computer program product on a computer readable medium. Therefore, the rejection of claim 10 is a written description issue, rather than an enablement issue.
(Emphasis in original.)

The Applicant filed a Reply Brief, arguing as follows:

The Examiner's Answer asserts that because the applicants' specification does not expressly disclose a computer product on a computer readable medium, claim 10 does not satisfy the requirements of 35 U.S.C. 112, first paragraph. ... The applicants respectfully maintain that the method of the invention is presented in full, clear, concise, and exact terms to enable any person skilled in the art to embody the invention as a computer program on a computer readable medium, and as such, satisfies the requirements of 35 U.S.C. 112, first paragraph.
(Emphasis added.)

The Board affirmed. The Board seemed to reach this conclusion by accepting the Examiner's characterization of the Appeal Brief argument, in conjunction with the explicit reference to "enable" in the Reply Brief:

Here, the Appellants admit that claim 10 was amended to recite that the originally claimed computer program product is provided on a computer readable medium. (Amendment and/or Response under 37 C.F.R. § 1.11 1, at 14, filed March 28, 2007.) The Examiner finds that the original filed disclosure does not disclose a computer program product on a computer readable medium. For their part, the Appellants do not address this finding but instead argue that the amended claim is enabled under 5 112, ¶ 1. Such an argument is immaterial to the written description rejection. Based on the aforementioned facts and analysis, we conclude that the Examiner did not err in finding that claim 10 lacks an adequate written description.
(Emphasis added.)

My two cents: 1) The Board really blew this one. 2) If you lose on appeal, read the decision carefully and ask for a Rehearing if the Board made an error like this one.

You're very limited in a Rehearing. A Request for Rehearing "must state with particularity the points believed to have been misapprehended or overlooked by the Board." Furthermore, "arguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing."

However, in this particular case, I think the record is clear that the Board misapprehended the Applicant's argument.The decision made no reference to the possession argument in the Appeal Brief, and said pretty clearly that the Board relied on the enablement argument in the Reply Brief to affirm the rejection.

Are system claims better than method claims for computer-implemented inventions?

If you have a computer-implemented invention, are method claims more valuable than system claims, or vice versa? I submit that system claims are the clear winner, at least since January 2011.

Method claims are clearly subject to scrutiny under Bilski. (Bilski v. Kappos, 30 S. Ct. 3218,  (2010).) But it's possible that courts won't apply Bilski to other types of claims – the question is still open. Score: System 1; Method 0.

Direct infringement of a method claim requires that a single party performs all steps. Joint liability for multiple parties is possible, but the standard is high. The Federal Circuit recently clarified this high standard for joint liability in Akamai Techs., Inc. v. Limelight Networks, Inc. (December 20, 2010): "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." Score: System 2; Method 0.

In contrast, the Federal Circuit recently held that system claims which include elements in the possession of more than one actor are analyzed differently. In Centillion Data Sys., L.L.C. v. Qwest Commc'ns Intl, Inc. (January 20, 2011), the court held that "to 'use' a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it." The system claim in Centillion involved components operated by a telephone billing provider (the back end) as well as components operated by a customer of the provider (the front end). The court found that customer actions controlled the system as a whole, so that the customer was a direct infringer. Score: System 3; Method 0.

The only reason I can think of for including a method claim in a computer-implemented application today is the uncertainty of case law. It's always possible that when a patent issuing today is litigated many years in the future, new case law will make method claims the more valuable ones.

Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll finish my discussion of Mistake #7: Using attorney argument when evidence is required. My previous post in this series  – Mistake #7.0 – covered some of the scenarios where you may need evidence rather than attorney argument:

• Whether a specification is enabling
• Whether a reference is enabling
• Meaning of a claim term
• Knowledge of a POSITA

The remaining two scenarios, covered in today's post, are:

• Teachings of a reference
• Modifying or combining references

The first four BPAI decisions in today's post show that when you stray from the explicit teachings of the reference, the Board may find that attorney argument is not enough.

Ex parte Matsushita involved writing servo information to a disk drive. One of the claims required a control mechanism adapted to "enable writing ... during a subsequent revolution using the WORF data." The patentee argued that the prior art "is believed to only use WORF data obtained before servowriting for that track begins" and “in Schmidt, the WORF data used to write to a target track is apparently produced before any writing to the target track is enabled.” (Emphasis added.) The Board dismissed this as speculative argument rather than evidence:

Matsushita’s argument is not persuasive. Matsushita does not explain why it believes that Schmidt obtains WORF data only before servowriting to a track begins. Matsushita’s belief amounts simply to speculative argument by its counsel as to how Schmidt’s system may operate which is unsupported by objective evidence, such as expert testimony. Argument of counsel cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A. , 129 F.3d 588, 595 (Fed. Cir. 1997).

The Board then went on to explain how the reference did disclose the claimed limitation.
 
The Applicant in Ex parte Jacquot made an argument which the Board saw as being contradictory to the teachings of the reference. The reference disclosed "device emulation" while the claims recited "device simulation." The Applicant argued that the two were not functionally equivalent. But the Board noted that, to the contrary, the reference "apparently uses the two terms interchangeably and even explicitly describes that the computing device, e.g, S/390 can be simulated." The BPAI further explained that "the Applicant has not directed us to evidence to support its argument that emulation and simulation are not the same as far as Shmid is concerned." (Emphasis added.)

An Applicant statement about the teachings of reference which is merely conclusory may lead the Board to say that evidence is required. Ex parte Mayer involved clams to a chemical composition. The Applicant argued that "thermoplastic vinyl polymer B is dissolved in and reacted with polyisocyanate A to produce the composition of claim 1," whereas the "references disclose polymer/polyisocyanate dispersions." "One skilled in the art would readily appreciate that there is a difference between modified polyisocyanates and dispersions, particularly in view of the teachings in Appellants' specification." The Board found this statement to be "without evidentiary support" and stated that "attorney argument and conclusory statements, absent evidence, are entitled to little, if any, weight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)."

The technology in Ex parte Intel Corp. related to a method of manufacturing a microsensor. The claim at issue included the step "forming said backside cavity while maintaining a portion of said substrate in said cavity to act as strengthening strips that extend completely across said backside cavity."  The Examiner asserted that the reference taught the "strengthening strip" element by disclosing a layer and a rim which operate to provide mechanical support for the sensor diaphragm. In The Applicant argued that the layer in the reference was a "tiny bit of material" which was "too thin" to perform any support or strengthening function. The Board found that this statement lacked evidentiary support:

We reject Intel's characterization. At the outset, Intel's bare assertion that a structure is too "tiny" if it is 5 microns thick to provide support or strength to a component is unpersuasive. The size or thickness of a structure cannot be taken in a vacuum, without explanation, in evaluating its feasibility as a strengthening strip. Intel also does not support its assertion with any objective evidence, such as declaration testimony. The assertion is simply argument of counsel. Such argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588,595 (Fed. Cir. 1997).

The remaining BPAI decisions in today's post show that attorney argument can be insufficient when explaining how references would, or would not, combine. Once again, it seems that straying from the explicit teachings can be viewed as mere speculation.

Ex parte Jarrell involved a collapsible wall hanger, and the Applicant appealed an obvious rejection using a combination of two references. The Applicant attacked the rationale for combining, arguing that "since Bierman’s scaffold has fixed brackets to render the scaffold rigid, it would not have been obvious to modify these fixed brackets to pivotal members in view of Thomas." But the Board dismissed this argument since "Appellant has provided no evidence that replacing Bierman’s welds with pivotal connections would render Bierman’s structure insufficiently rigid." (citing In re Pearson).

The application in Ex parte Doery related to a mail stacker. The Applicant appealed an obviousness rejection and argued that the combination would render one of the reference inoperative. Specifically, the Applicant argued that "if the insert of Caporali were incorporated along the platform of Beauchamp a Z-shaped drop profile between mailpieces could not occur,” which meant that “sufficient time and separation would not be available to dry the printed ink.” The Board dismissed this argument because "Appellant has not provided any evidence to show that the insert block of Caporali is not capable of working with the device of Beauchamp" (citing In re Pearson). The Board then went on to explain why the combination was not inoperative.

My two cents: When explaining the teachings of a reference, the line between what is acceptable attorney argument, and what is not, can be hard to discern. The cases I've read suggest that you're most likely to get into trouble when you make bald assertions and don't tie them to teachings in the reference. If you have support in the reference for your assertions, point to it. If you don't, you should consider submitting a 1.132 affidavit from a person who is more qualified to interpret the reference, i.e., a person of ordinary skill in art.