Tuesday, April 26, 2011

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.

24 comments:

  1. I think the phrase "not greater than" makes the Decision feel more wrong. If the claim stated that the volumes were simply "substantially equal," then maybe a 0.1 mL deviation would better meet the claim. But the fact that the claim is setting an upper boundary, it feels wrong to go beyond that boundary by such a large proportional margin.

    That being said - I think the Applicant would have done well to recite a rough volume value/range at least in a dependent claim. If the recited volume of one chamber was, say 1ml, the 0.1ml increase in the prior art may have "felt" huge, and not met the claim.

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  2. "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."

    Wow ... you actually thought that the BPAI got it wrong. I know it isn't the first time, but it is still refreshing to see.

    Of course they got it wrong, the BPAI employed their favorite tactic of MSU (make s#&t up) in construing the language of the claim. How did they determine that .25 was "substantially equal" to .15? Did they rely on similar art that made a statement such as this? Did they have declaration evidence from one skilled in the art? Did they have a dictionary definition to work with? … No, No, and No – they just MSU.

    Also, I very much doubt if you are going to find a case on point – at least not if you are looking for similar facts. Like many decisions, this revolves around a claim construction that was never made by the Examiner – i.e., what is meant by "substantially equal." For that you can look to Andrew Corp. v. Gabriel Electronics, Inc., 847 F.2d 819, 6 USPQ2d 2010 (Fed. Cir. 1988), which was directed towards an indefiniteness issue regarding the term "substantially equal". In that case, the court stated that the meaning of this term should be viewed through the eyes of one of ordinary skill in the art.

    "We find that since the two volumes are relatively small, the two volumes are substantially equal."
    FYI – that was from the BPAI decision. As an FYI, this was decided in tech center 3700 (i.e., "mechanical engineering, manufacturing, and products"). I would wager that if the same set of facts was made before tech centers 1600 or 1700, they would not have written that statement.

    The BPAI writes "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." This "more than equal" claim construction is simply wrong. The term "substantially equal" means "equal but not equal to the nth degree" or "equal but not perfectly equal."

    One last thing, besides the BPAI presenting an analysis that was never presented by the Examiner, they don't even have the courtesy to designate it a new grounds of rejection. Instead, they "affirm" the Examiner's rejection, when, in fact, they discarded the Examiner's analysis and inserted their own analysis instead.

    This is one of the many reasons I have little respect for the BPAI. They MSU, they are institutionally biased towards the positions of the Examiner, and they play fast and loose with both the case law and their own rules. Unlike in Federal District Court, in which the judge knows that his/her rulings will likely be appealed, the APJs at the BPAI know that there is a very small chance that their decisions will be appealed.

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  3. Karen:

    As a follow up to my point about the BPAI playing fast and loose with the case law, I'll give you the subject matter for your next post:

    The citation of Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572 (1985)) for the proposition that "Silence implies assent."

    This citation first appeared 3 years ago (almost to the date) in Appeal No. 2007-003514, and based upon a search of the BPAI's web site, this case has been cited a total of 26 times over the last 3 years.

    I won't ruin the surprise, but let me suggest that you read the Supreme Court case and find the context in which the phrase "[s]ilence implies assent" was made. You should also see how this case is being applied by the BPAI. You can then share your findings with the rest of us.

    If this doesn't make you shake your head about the legal acumen of the people writing decisions at the BPAI, I don't know what will.

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  4. "The term "substantially equal" means "equal but not equal to the nth degree" or "equal but not perfectly equal.""

    Based on applicant's new arguments it sounds like the claim is amenable to two different interpretations. 112 Miyazaki.

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  5. "Based on applicant's new arguments it sounds like the claim is amenable to two different interpretations"

    Big f'ng deal. Almost ALL claim language is amenable to multiple different interpretations -- the English language (or any other language for that matter) is not perfect -- it is loose and squishy. However, that doesn't not make the language indefinite.

    Also, Miyazaki is a dubious BPAI decision written during a low point (i.e., during Dudas' reign of terror) of the USPT. After a re-read, that decision smacks of substantive law-making by the BPAI. In fact, they admit as such when they state "our reviewing court has never before set forth a different standard of review for indefiniteness under 35 U.S.C. § 112, second paragraph [but we are going to make one up on our own]."

    I very much doubt that that holding would survive a trip to the Federal Circuit. Unfortunately, the BPAI gets aways with s&%t like this because most cases are not appealed.

    Classic BPAI --> MSU.

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  6. "Almost ALL claim language is amenable to multiple different interpretations -- the English language (or any other language for that matter) is not perfect -- it is loose and squishy. However, that doesn't not make the language indefinite."

    Nope, but your arguments do.

    And, just for lols, I might also give you a 112 2nd for not claiming that which the applicant subjectively believes to be the invention as "substantially equal" and one or the other of your proposed definitions are substantively different by your own definition.

    If you want to claim "equal but not equal to the nth degree" then go ahead. If you want to claim "equal but not perfectly equal." then go ahead. But you can't have it both ways by your own definition. I see no indication that you intend for your "or" to be used inclusively, rather it appears you are presenting alternatives as the two definitions are substantively different.

    "Also, Miyazaki is a dubious BPAI decision written during a low point (i.e., during Dudas' reign of terror) of the USPT. After a re-read, that decision smacks of substantive law-making by the BPAI. In fact, they admit as such when they state "our reviewing court has never before set forth a different standard of review for indefiniteness under 35 U.S.C. § 112, second paragraph [but we are going to make one up on our own].""

    If by "dubious" you mean recognized by several CAFC judges as being a great step forward and a model for their own reform then sure it is totally "dubious".

    "I very much doubt that that holding would survive a trip to the Federal Circuit."

    I very much wish that one of the dozens or hundreds of applicants with little but this standing in their way would appeal. But for some reason they don't share your optimistic viewpoint when it is up to them to wait years for the court to get around to it.

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  7. I would like to see somebody take Miyazaki to the Fed. Cir. I don't know that it would be reversed, but I think a decision like that needs to be reviewed by the Fed. Cir. Sort of like Donaldson where the PTO was claiming that 112, 6th should be interpreted differently during examination than during litigation. It needs to be resolved.

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  8. >I very much doubt if you are going to find
    >a case on point – at least not if you are
    >looking for similar facts.

    I want a case that speaks to whether or not comparisons qualified by terms like "substantially" are interpreted as an absolute or relative to the quantities involved. Seems like that's not very fact specific.

    IOW, when deciding X is substantially >, <, or = Y, do we look at the absolute quantity X-Y, or do we look at X-Y/Y.

    I *think* this is fundamentally a question of claim construction rather than a question of interpreting the reference. At least, I'm pretty sure I've seen courts treat "substantially" like this.

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  9. "rather it appears you are presenting alternatives as the two definitions are substantively different."
    No, they are the same, just different wording. You just have a problem with the English language. Don't worry, you have great company on that front in Alexandria.

    "And, just for lols, I might also give you a 112 2nd for not claiming that which the applicant subjectively believes to be the invention as 'substantially equal' and one or the other of your proposed definitions are substantively different by your own definition."
    Stop daydreaming 6. You don't have the set necessary to make a rejection for "lols." I would hate to be your primary … "oh s$%t, it is 6 again with another one of his cockamamie ideas – when will he ever learn that he is just an examiner, not a Federal Circuit judge."

    "I very much wish that one of the dozens or hundreds of applicants with little but this standing in their way would appeal. But for some reason they don't share your optimistic viewpoint when it is up to them to wait years for the court to get around to it."
    Don't know much about anything, do you? It is a lot quicker to get a decision of the Federal Circuit than the BPAI – it’s a lot easier to move cases when you just rely upon the law and eschew the MSU principle that bogs down the BPAI. FYI – all it takes is the right applicant. Mess with someone like Hyatt and it will happen.

    "If by 'dubious' you mean recognized by several CAFC judges as being a great step forward and a model for their own reform then sure it is totally 'dubious'."
    Care to identify said CAFC judges and where they stated Miyazaki was some "great step forward"?

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  10. "I want a case that speaks to whether or not comparisons qualified by terms like 'substantially' are interpreted as an absolute or relative to the quantities involved. Seems like that's not very fact specific."

    You need to ask one skilled in the art, through whose eyes claim terms should be interpreted. If you've tried to come up with an answer to that question without consulting one skilled in the art, you are just MSU -- apparently OK with the BPAI, but not something I would be proud of.

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  11. >>I want a case that speaks to whether or not
    >>comparisons qualified by terms like
    >>'substantially' are interpreted as an absolute
    >>or relative to the quantities involved.
    >
    >You need to ask one skilled in the art, through
    >whose eyes claim terms should be interpreted.

    Huh. Of course "claims are interpreted by a POSITA" is a fundamental tenet of claim construction. I hadn't really considered that my basic question -- relative or absolute -- might depend on the art. I was thinking it was more generic.

    In this particular case, I can't see that the answer to the question "is 0.15 mL substantially equal to 0.25 mL" given by a medical-device-POSITA is different than the answer given by a simple-mechanical-POSITA, or is different than the answer given by a software-POSITA.

    But sure, I'll agree that in some cases you might need to ask a POSITA whether the interpretation is relative or absolute.

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  12. Hi Karen, the following case pops up my head in your "absolute or relative" question:
    Cohesive Techs., Inc. v. Waters Corp. (Fed. Cir. 2008)

    Peter

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  13. My research regarding language of approximation, particularly with regard to the terms “about” and “substantially,” has revealed that, absent clear limits set forth in the specification, established on the record during prosecution, or imposed by the technology in the art at the time the application was originally filed, the question typically turns on expert testimony regarding the amount of variation that is significant, (e.g., the purpose of the invention is no longer achieved). Accordingly, I don’t think that either relative or absolute amounts are preferable unless the file wrapper sets forth a range of variability in those terms. What typically matters is whether the purpose was achieved in spite of the amount of variation exhibited by the prior art.

    In cases where the specification and/or prosecution history provide clear limits, Courts typically set the boundary of variability at the specified limits. For example, when an upper or lower limit for a range of permissible values is specified, and the specification warns away from exceeding the imposed limit, then Courts have looked to factors such as recited decimal degrees of specification of values, and measurable error at the time the specification was filed to determine the permissible amount of deviation from the recited limit (see Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1455 (Fed. Cir. 1988)). However, absent any intrinsic or extrinsic evidence to warrant a departure from the common and ordinary meaning of the approximate language, Courts do not typically limit the recited value on the basis of the degree of decimal value specified or measurable error, considering instead what is "reasonably close" in view of the facts of the case, nature of the invention, and knowledge in the art (see CellNet Data Systems Inc. v. Itron Inc., 17 F.Supp.2d 1100, 1113-14 (N.D. Cal. 1998)). In their analyses, absent specific limits evidenced by the specification or prosecution history, Courts typically do not lay out a range of permissible variability, but rather look to the value exhibit by the accused device or process, and determine whether it is reasonably close (see Viskase Corp. v. American National Can Co., 261 F.3d 1316, 1322, 59 USPQ2d 1823 (Fed. Cir. 2001)).

    To be continued ...

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  14. Some illustratively exceptional cases help to demonstrate how broad the literal scope can be for claims that recite language of approximation, and that the DOE can be applied to expand the literal scope of claims reciting such language. For example, in one case, the court found that a claim limited to an antigen affinity “at least about 108 liters per mole” was infringed both literally and under the DOE by an assay having a measured affinity of 7 x 107 (see Hybritech Inc. v. Abbott Labs., 849 F.2d 1446 (Fed. Cir. 1988)). Thus, literal scope can extend nearly half an order of magnitude, especially where the difference was no greater than the measurement error common in affinity measurements. In another case, the Court found that a claim requiring expansion of a product “approximately 100% to 150%” was not literally infringed by expansion of a product “an average of 53.6%, 62.56%, or 74.46%.” However, this expansion occurred after selecting a product that inherently requires less expansion to achieve the same result, the Court found infringement under the DOE. It is further noted that Courts commonly permit variances of 50% under the DOE (see Paul Corp. v. Micron Separations, Inc. 66 F.3d 1211, 1219-20 (Fed. Cir. 1995)). Specific to durations, a recited limitation of “about 2 minutes to about 4 minutes,” absent any limiting prosecution history or other limiting evidence, has been construed as “30 seconds to 10 minutes” (see Schreiber Foods Inc. v. Saputo Cheese USA Inc., 83 F. Supp. 2d 942, 949 (N.D. Ill. 2000)).

    In view of the forgoing examples, it should be apparent that allowing variability more than 50%, or even 500% (i.e., half an order of magnitude) is not uncommon. With such claims so broadly construed, it is easy to see how the result in this case is not out of the ordinary. I would suggest, however, that the Applicant might have been permitted to establish the limits during prosecution by arguing as they did (i.e., prosecution history estoppel by argument), thus narrowing the range of variability at least to exclude the degree exhibited by the reference. By preventing the Applicant from establish the limit on the record through argument, it would appear that the Applicant has been deprived of the opportunity to obtain claims using language of approximation in the well-established and accepted fashion. On the other hand, I would suggest that Applicants in cases like these should file Declarations from experts to testify as to the degree of variability that is significant, rather than merely trying to establish the limit as an undetermined amount less than the amount of variability exhibited in the reference. A court would require no less regarding a new reference presented at trial, and the BPAI apparently intends to do likewise for art considered during prosecution.

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  15. Peter,

    Thanks for the cite to Cohesive! I'm gonna read it.

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  16. TINLA IANYL: wow, that was a very helpful summary. Let me know if you wanna do a guest post on my blog about this, or a related subject.

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  17. Thanks, Karen!

    And thanks for that cite, Peter. I just read Cohesive, and it says:

    "To be clear, it is the purpose of the limitation in the claimed invention—not the purpose of the invention itself—that is relevant."

    So mea culpa. :)

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  18. "Stop daydreaming 6. You don't have the set necessary to make a rejection for "lols." I would hate to be your primary … "oh s$%t, it is 6 again with another one of his cockamamie ideas – when will he ever learn that he is just an examiner, not a Federal Circuit judge.""

    HAHAHAHAHAHAHAHAHHAHAHAHAHAHAHAH.

    Also hahahahahahahahhahahahahahahaha to your other comment, and I'd look forward to your explanation on the record of how they are the same. After your abandonment rolls in I'd lol some more and I'd feel sorry for your client having engaged you.

    "Don't know much about anything, do you? It is a lot quicker to get a decision of the Federal Circuit than the BPAI – it’s a lot easier to move cases when you just rely upon the law and eschew the MSU principle that bogs down the BPAI. FYI – all it takes is the right applicant. Mess with someone like Hyatt and it will happen."

    I can't wait. In the mean time I have people like IBM that are the rough equiv. Strangely, they always comply and usually have very little problems (compared to a sample of non-ibmers) under this kind of rejection because they hire people who are not ret ards to draft their claims and argue, and they also have very well defined inventions (at least in my area which doesn't happen to be systems for waiting in the bathroom line on an airplane).

    "Care to identify said CAFC judges and where they stated Miyazaki was some "great step forward"? "

    You can find the cases on PO within the last year. Complete with comments going on for quite some time about the issue. And no, I didn't fav it, if you're not up on your news then I'm sorry.

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  19. "In this particular case, I can't see that the answer to the question "is 0.15 mL substantially equal to 0.25 mL" given by a medical-device-POSITA is different than the answer given by a simple-mechanical-POSITA, or is different than the answer given by a software-POSITA."

    I think it is important. What we are talking about is a tolerance. How close is close enough? You also have to consider not only who is answering the question but the context. In some contexts, .25 may be close enough to .15 that they are identical. Other times, it may not. These are all questions that should be answered based upon findings of fact. However, the problem is that the BPAI didn't make any findings of fact about this particular context.

    Put differently, the answer to the question is "it depends." Not a satisfying answer, but that is the real answer. You are not going to find a case directly on point because I very much doubt that you'll find similar facts in a similar context.

    In reality, the BPAI doesn't know that .25 is (or isn't) close enough to .15 in this particular context. In this instance, where the BPAI doesn't have any good facts one way or another, they side with the Examiner and MSU to support their position. This is a scenario I have seen quite often – if in doubt and you are the BPAI, side with the Examiner and assume that your dubious reasoning won't be appealed.

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  20. "You can find the cases on PO within the last year. Complete with comments going on for quite some time about the issue."

    Sorry, while employing your infamous "google search," I didn't find it, so if google cannot find it, I'm going to assume it doesn't exist. Of course, if you want to prove me wrong, be my guest, but I won't stay up waiting for a response that will never come.

    "After your abandonment rolls in I'd lol some more and I'd feel sorry for your client having engaged you."
    Abandonment rolls in? You cannot abandon cases on your accord. I know you are rules challenged, but my clients and I are not abandoning any case based upon a dubious rejection from an Examiner. It will go to appeal.

    FYI -- I've appealed a great many 112 rejections, and I cannot remember any instance in which the 112 rejection was sustained in those times in which an Examiner's Answer was filed. Few examiner, particularly you, really don't understand 112, 2nd.

    Keep it up 6 -- we all know your bark is worse than your bite.

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  21. All of 6's bluster aside (and that's a lot of bluster!!), I think it would be very helpful for the Fed. Cir. to chime in on whether it's a good idea for the standard of 112, 2nd during litigation to be insolubly ambiguous and the standard during examination to be at least two plausible constructions. Given that a panel just ruled in In re Jung that the examiner is not even required to provide even one BRI, I think it's rather ridiculous to allow the PTO to reject claims under 112, 2nd without even giving one plausible construction.

    I have yet to see a BPAI decision that actually decides a Miyazaki rejection entered by the examiner. The only cites to Miyazaki I see are new grounds entered by the BPAI.

    Are there any such decisions? Or is everybody quaking in their boots at the prospect of appealing 6?

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  22. "is 0.15 mL substantially equal to 0.25 mL"

    Now, if the Examiner had a reference that showed a marker sized for a giant that had 1000 gallons in the tip and 1667 gallons in the reservoir, would the BPAI have still used the "both are relatively small/large" amounts? Is 1000 gallons substantially equal to 1667 gallons since they are both relatively large amounts? When you look at the ratios from this perspective, the BPAI decision looks ridiculous. As I recall, case law says that the actual size/scale of what's in the reference does not matter if the claim elements function in the same manner as what is disclosed in the reference. The BPAI would have said that the relative ratios are same/similar and therefore the reference would have anticipated/rendered obvious the claimed subject matter.

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  23. >case law says that the actual size/scale of
    >what's in the reference does not matter if the
    >claim elements function in the same manner as
    >what is disclosed in the reference.

    Are you thinking of Gardner v. TEC Systems, Inc?
    Mentioned in MPEP 2144.04 Obviousness - Changes in Size/Proportion.

    "Fed Cir held that only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device."

    Doesn't say quite what you said: Gardner talks specifically about *relative*, where it sounds like the case you're thinking of said absolute doesn't matter, implying that relative does.

    So maybe I'm off base.

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  24. I was probably thinking more along the lines of In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.) from the same MPEP section.
    My thought was that a reference showing a giant marker scaled up marker to demonstrate obviousness of this smaller marker would be one thing, but that what the BPAI did was simply ridiculous.

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