BPAI finds that 67% more is "substantially equal" to 0.15 mL since quantity is small (Ex parte Pavich)

Takeaway: Ex parte Pavich involved a marking pen for surgical sites on the body.  The claim on appeal was for a "one-time skin marking system", where the single use aspect was captured in the relationship between the volume of liquid in the hollow body and the volume of liquid in the marking tip: "a marking liquid carried in said hollow body, said marking liquid having a volume not greater than an amount substantially equal to said predetermined liquid carrying capacity." The single reference used in the prior art rejection disclosed 0.25 mL in the body and 0.15 mL in the tip. Although the Board acknowledged that 0.25 was 67% more than 0.15, the Board nonetheless found the volumes were "substantially equal" since the quantities involved were quite small.

Details:
Ex parte Pavich
Appeal 2009011807; Appl. No. 11/106,094; Tech. Center 3700
Decided  April 22, 2011

A representative claim on appeal read:

1. A one-time skin marking system, comprising
a. a marking implement having a hollow body portion,
b. a marking tip extending from said marking implement, said marking tip being in fluid
communication with said hollow body portion and said marking tip having a predetermined liquid carrying capacity,
c. a marking liquid contained in said hollow body portion, said marking liquid having a volume not greater than an amount substantially equal to said predetermined liquid carrying capacity, and
d. a pressure-sensitive expedient for delivering said marking liquid to said marking tip.
(Emphasis added.)

The Examiner first rejected as anticipated by Rosen, then switched to an obviousness rejection using the same reference. The Examiner found that Rosen disclosed all elements except "having a volume not greater than ... " However, the Examiner asserted that Rosen's marking pen was for single use, and used a volume of marking liquid "sufficient to saturate the marking tip."  The Examiner found it obvious to provide the claimed volume of marking liquid "in order to match the volume of the liquid to an amount sufficient to saturate the marking tip."

In the Appeal Brief, the Applicant argued that Rosen did not disclose the claimed "substantially equal" volume limitation. According to the Applicant, Rosen taught filling the body to 0.25 mL and taught a  tip which absorbed 0.15 mL of the treating solution. The Applicant thus concluded that the volume of liquid in the hollow body (0.25 mL) is  “approximately double the [0.15 mL] carrying capacity of the nib” rather than substantially equal as claimed.

The Applicant also explained why a POSITA would not modify Rosen to use the claimed volume, as follows:

[I]t is mere speculation that Rosen must somehow have a substantially equal amount of liquid to the liquid carrying capacity. Rosen is silent on the subject, and clearly all of the disclosure of Rosen, emphasized by the drawings, suggests the opposite, and that is Rosen has much more liquid than the liquid carrying capacity of the tip. Again, as explained above, Rosen really doesn't care about matching the liquid carrying capacity because all Rosen wants to do is flush the fluorescarnine from the tip. Thus, Rosen provides an abundance of liquid (the solvent) for that purpose. Rosen is concerned only with flushing the fluorescamine from the nib, and not limiting the amount of liquid for any reason.

In the Answer, the Examiner responded as follows:

Appellant's argument appears to rely on the premise that since the disclosure of Rosen is not expressly concerned with matching the liquid in the hollow body portion to the carrying capacity of the marking tip, one of ordinary skill in the art would not have found it obvious to do so. In response, Examiner points ... especially to the passage ... "a volume of dermatologically acceptable solvent for the furanone in the sealed solvent tube sufficient when the tube is broken to dissolve the furanone in the wick in the solvent released from the tube and saturate the wick marking nib with the resulting solution." One skilled in the art would understand that a volume of solvent (the marking liquid) substantially equal to the liquid carrying capacity of the nib would be sufficient to dissolve the furanone in the nib and saturate the nib with the resulting solution.

The Board didn't even perform an obviousness analysis, finding instead that Rosen disclosed every claim limitation. The Board's factual findings about Rosen agreed with the Applicant: 0.25 mL in the housing and 0.15 mL in the tip. However, the Board found that the Applicant had improperly characterized the body volume as being double the tip volume: "The 0.25 mL of solvent is actually only two-thirds as much more than 0.15 mL."

The Board then explained that use of "substantially' broadened the claim so that Rosen anticipated:

In addition, we note that use of words of approximation, such as “substantially,” in a patent claim implies the avoidance of a strict numerical boundary of the specified parameter. See Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). Thus, in our opinion, one of ordinary skill in the art would consider the 0.25 mL volume of solvent 33 in the glass ampoule 30 of Rosen’s marking device 10 to be substantially equal to the 0.15 mL predetermined carrying capacity of the nib 50. See, e.g., In re Sinex, 309 F.2d 488, 493 (CCPA 1962) (substantially horizontal includes chamber that is inclined at 9 degrees). In support of this holding, we note that “nothing in the prosecution history of the present invention clearly limits the scope of “substantially equal” such that the adverb “substantially” does not broaden the meaning of “equal” and thus, in claiming “substantially equal,” Appellants claimed more than equal. We find that since the two volumes are relatively small, the two volumes are substantially equal.

My two cents: Most of the applications I prosecute don't claim dimensions or capactities, even relative ones, and I don't use "substantially" much. But the Board's reasoning here – that what's important is the small absolute difference of 0.15 mL instead of the relative difference of 67% – strikes me as, well, wrong.

The Board relied on In re Sinex, which did find that "substantially horizontal includes chamber that is inclined at 9 degrees," as the Board said. But I say Sinex doesn't really speak to the issue of whether it's relative or absolute values that matter in determining what's "substantial." 

The issue in Sinex was: how much of an incline is still "substantially" horizontal? The Federal Circuit's predecessor, the CCPA, said that a 9% include was not, without explaining why. But I think we can all agree that a 45% incline is not substantially horizontal. The way I see it, a 9% incline is 9/45 = 20% more than horizontal. Thus, I read In re Sinex as saying that 20% more than X is outside the scope of substantially X.

I see see no reason to read Sinex as saying that 9 more than X is always outside of substantially X. What if X were 1000? Why would we say that 1009 is not substantially equal to 1000? I'd be inclined to say, to the contrary, 1009 is substantially equal to 1000. 

I've looked, but don't see a case that is directly on point (I didn't look exhaustively since this question isn't important to the cases I work on.)

If you know of a case that really addresses "is substantially evaluated as a relative or an absolute," post a comment and let me know.