Monday, March 7, 2011

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.

16 comments:

  1. Why would possession of the ability to embody the invention on a computer readable medium imply that the application as filed discloses such an embodiment?

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  2. Classic Examiner/BPAI BS. If Applicants amended the claims to recite "turning on a computer prior to performing the computer implemented steps," would anybody question that Applicants were not in possession?

    Computer program products and computer readable mediums are long-known to be associated with one another. You don't have to disclose in the specification "supplying electricity to your processor" to actually claim it. The specification is written for one skilled in the art -- it doesn't have to include everything, particularly the stuff everbody knows.

    As for the BPAI, I'm not surprised in the least by their actions. I'm seeing more and more decisions where it doesn't even seem like they've read much of the briefs beyond skimming them.

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  3. "If Applicants amended the claims to recite "turning on a computer prior to performing the computer implemented steps," would anybody question that Applicants were not in possession?"

    But then the applicant should not argue that he had the ability to turn on the computer, but that turning on the computer was implicit in performing the invention as described in the application.

    In the present case, the applicant should have argued that the method claim showed possession of the computer program on a computer readable medium, not just an ability to put it there.

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  4. "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. ... "

    And the examiner also asserts that because the applicant's specification does not implicitly disclose that either. But perhaps the examiner hasn't been explicit about making that asertion. Even so, it comes along implicitly in the 112 1st rejection.


    "However, in this particular case, I think the record is clear that the Board misapprehended the Applicant's argument."

    Lulz, no they apprehended it just fine. The applicant made the wrong argument, and got burned. And the reason they made the wrong argument is because they probably don't have any WD support. If they wanted to argue that it is implicit that disclosing a "computer program productlol" implicitly discloses a computer program productlol on a computer readable mediumlol" then fine, argue that and let the board sort it out. Don't tell us all about how you enabled a computer program productlol on a computer readable medium therefore the 112 1st doesn't apply. That's not even a properly directed argument, as the board pointed out.

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  5. "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 the method is not rejected.

    "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:"

    Actually probably did a De Novo review as well when they reached that conclusion. That likely did that by performing a de novo analysis and failing to find support for the amended claim either. This likely happened because, gasp, they did not have WD support.

    This case is like Ariad all over again. You had to have DESCRIBED your invention you're wanting to now claim tardfaces, you can't just get everything you might have enabled.

    "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. "

    Yeah because that argumentlol is not even nearly germane. Whether or not a METHOD is disclosed in terms that ENABLE someone to make a computer readable mediumlol or not is entirely irrelevant if you displayed possession of such a computer readable medium on the filing date. Completely, 100% irrelevant.

    "Why would possession of the ability to embody the invention on a computer readable medium imply that the application as filed discloses such an embodiment? "

    Because attorneytards are retarded. That's why. Oh wait, nevermind, that's not actually a good reason.

    "If Applicants amended the claims to recite "turning on a computer prior to performing the computer implemented steps," would anybody question that Applicants were not in possession?"

    Um yes, tard. There is no indication that such was considered part of the invention as of the date of filing. The invention could have been intended to be used on systems already running. We have no way of knowing.

    "You don't have to disclose in the specification "supplying electricity to your processor" to actually claim it. "

    You most certainly do have to disclose in the specification "supplying electricity to your processor" to actually claim "supplying electricity to the processor" or the like.

    "The specification is written for one skilled in the art -- it doesn't have to include everything, particularly the stuff everbody knows."

    You're right, it doesn't. But it does have to include everything you plan on claiming smart arse. Implicitly or explicitly.

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  6. "But then the applicant should not argue that he had the ability to turn on the computer, but that turning on the computer was implicit in performing the invention as described in the application."

    Exactly, and then we'd determine if it was implicit. And depending on the app it might or might not be.

    "In the present case, the applicant should have argued that the method claim showed possession of the computer program on a computer readable medium, not just an ability to put it there. "

    You don't want to argue that because it would be retarded. You'd get shot down so many different ways.

    Which, incidentally, is probably why they didn't argue that. And they instead went with an Ariad like enablement-type argument that lost badly not long ago.

    Don't get me wrong, I give applicants implicit disclosure for support for their amendments quite often, indeed, I'm probably too generous with it, but I see no indication that he actually possessed such an embodiment that he is now claiming. What I do see is a fundamental lack of understanding of the "possession" concept that just keeps popping up no matter how many times courts smack it down.

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  7. I looked at the spec and I just don't see any support for a computer readable medium. Computer program product was in original claim 10, but no details of what that meant were provided in the disclosure. In fact, the only appearance of the word computer in the original application was in original claim 10.

    Using obviousness type language (i.e. would allow a person of ordinary skill in the art) in response to a written description requirement generally heralds a losing argument, but that appears to have been the applicants only shot.

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  8. Mhmmm, I see that kind of sht day in and day out. Instead of simply pointing you to a paragraph number and stating "there is some support" attorneys start making outlandish arguments. You see those outlandish arguments and you know there is something amiss. 99/100 you'll then find they lack support etc.

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  9. Ironically, I think the applicant would have had a better chance of overcoming the first rejection on claim 10 as originally presented.

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  10. Dear 6,

    Please start signing your posts using the name/URL profile option so that your beloved moniker will appear at the top of the post. That would really help us skip over them much more quickly. THX

    ReplyDelete
  11. I would but the way the site posts makes it difficult. Especially at the office.

    Sorry I can't help you out.

    "Ironically, I think the applicant would have had a better chance of overcoming the first rejection on claim 10 as originally presented. "

    Indeed probably so. A real shame about these kinds of cases. But, like I always am telling you guys, bad lawlyering is simply everywhere these days.

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  12. TINLA IANYL SAID:

    See what I did there.

    You can just type your name at the top if you are too lazy to hit submit the four times necessary to post here under a name.

    ReplyDelete
  13. Broje you presume your convenience outweighs my own.

    How presumptuous.

    Btw, if you don't want to read a comment then just stop reading it jeez. When your precious virgin eyes are exposed to the realities of the incompetence of your side of prosecution and you are revolted by it then simply turn away. It really isn't that hard.

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  14. At least on the brief squib Karen posts, the Board blew it. The Board is bound by official agency interpretations, including this memo from David Kappos of January 2010:

    http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf

    The Kappos memo says that this kind of claim amendment does not raise a "new matter" issue. That's an error by Office of Patent Legal Administration: "new matter" applies to amendments to the spec, "written description" applies to amendments to the claims. Nonetheless, the Board should have been able to see past OPLA's error.

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  15. The January 2010 Kappos memo says that changing a claim directed to a "computer readable medium" to a "non-transitory" computer readable medium would typically not raise the issue of new matter. However, as one example, the issue of new matter would be raised if the only viable disclosed embodiment is a "transitory" type of medium.

    Even if one were to assume that the Board is bound by official agency interpretations, that memo does not apply to the claim amendment being discussed here.

    For the Appeal Brief argument, alleging that the disclosure demonstrates the "ability to provide" something does sounds more like alleging enablement, rather than showing possession. One shows "possession" by descriptive means in the disclosure -- such as words, structures, figures, diagrams, formulas, etc. -- that fully set forth the inventiion now claimed. Lockwood v. American Airlines, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).

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  16. "Even if one were to assume that the Board is bound by official agency interpretations, that memo does not apply to the claim amendment being discussed here."

    Obviously, but boundy is way too big of a toolbag to have figured that out from little ol' Karen's perfectly good summary. His small mind simply jumps to whatever little safehouse that is nearby in his little notion of what the lawl happens to be in a given situation and preys that he'll ride out the storm. Same ol' same ol'.

    Just ignore him.

    ReplyDelete