BPAI interprets "completely embedded" to include preferred embodiment and dependent claim

Takeaway: In arguing against a prior art rejection, the Applicant distinguished the claimed heater from the reference heater by noting that the reference heater was not "completely embedded" in the container wall, because portions of the pipes carrying the heated water extended outside the wall. The Board found this interpretation was improper because it would exclude the Applicant's preferred embodiment and a dependent claim. According to the Board, the correct interpretation required only the heating means, not the entire heating system, to be within the container walls. (Ex parte Knetsch.)

Details:
Ex parte Knetsch

Appeal 2009012276; Appl. No. 10/835,487; Tech. Center 3700
Decided  May 24, 2011

The application related to a container for a liquid used by a vehicle's catalytic converter. 

1. A motor vehicle-mounted container for storing a urea-water solution, comprising:
     a container having an interior space into which liquid can be fed ... wherein a free space is provided [which] corresponds to an increase in volume of a liquid that has frozen in said interior space, and
     a heating means integrated into at least one of a base of the container and into a lateral wall of the container, such that said heating means is completely embedded in and surrounded by at least one of a material of the base and a material of the lateral wall of the container.
(Emphasis added.)

The Examiner combined three references: a first reference for the liquid container with heater; a second reference for the free space; and a third reference (Avramidis) for the embedded heater.

The Applicant argued that the third reference did not teach a heater that was "completely embedded and surrounded by" either the base or the side wall, but instead a heater that extended out through the container wall. (See element 20 in Figure below.)

The Examiner didn't specifically address this argument in the Examiner's Answer.

On appeal, the Board first considered the proper interpretation of "embedded completely within." The Board found that the Applicant's proposed construction was "inconsistent with the Specification and the context of the claims." The Board noted that the specification described two alternatives for the structure of the heating means: "heating tubes that are connected to the coolant circuit of the [] combustion engine"; or "an electrical heating means." As such, the heating system as a whole must extend out of the wall in order to connect with the coolant circuit or the electrical system. Applicant's Fig. 1, below, shows a cross section of the wall with heating tubes 20:

The Board therefore concluded that:

[T]o interpret “completely embedded” as excluding a structure wherein some portion of the structure responsible for heating the container exits the container wall would be interpreting the term to exclude the structure described in Appellants’ preferred embodiment and dependent claim 6, wherein the heating means is connected to the engine cooling circuit and, therefore, must extend out of the container wall at some location.
(Emphasis added.)

In interpreting the teachings of the reference, the Board also noted that the portion of the reference's heater that does not extend out of the container is the component that actually heats the liquid. Therefore, it was also proper to read "heating means" on that portion alone, which "render[ed] it irrelevant whether it connects to elements extending out of the container wall."


My two cents: Before anyone points out how ridiculous it is to file a patent application for a liquid container that includes a heater, I note that the novelty appeared to be related to preventing damage to the container by including space for the liquid to expand when freezing. Okay, maybe that's obvious too. But it was the claim construction issue related to the placement of the heater that caught my eye.


It's unusual for the Board to consider the preferred embodiment when arriving at a claim construction. The more common approach is to say that "embodiments from the spec are not imported into the claims." And I don't think I've ever seen the Board consider a dependent claim when interpreting a term in an independent claim.

The Board referred to the description of the preferred embodiment, but  I didn't see any other embodiments where heating elements did not extend outside the wall, or a lot of boilerplate broadening language. Sometimes the Board points to this sort of language when saying "we won't import limitations from the spec into the claims."

So, on the whole, I guess I agree that the Board's interpretation was consistent with the spec while the Applicant's interpretation was not.

The claim element at issue was written in means-plus-function form, but that didn't seem to be dispositive. Probably would have had the same outcome if the term "heater" was used instead. 

Finally, it usually turns out bad for the Applicant when the Board compares the drawings in the reference with the Applicant's drawings and the claimed feature looks the same in both.

BPAI reverses § 101 rejection of computer readable medium as "inoperative"

Takeaway: The BPAI reversed a § 101 "inoperative" rejection for a claim to a computer readable storage medium. (Ex parte Riley, June 24, 2010.) The specification stated that the computer readable medium encompassed electrical connections such as "wires," and "optical fibers," which the Examiner found were not capable of storage. Thus, the Examiner rejected the claim under § 101 as "inoperative and therefore lacks utility." The Board found that the reference to wires and optical fibers was in a description to a medium, not a storage medium, and that a POSITA would understand wires and fibers to be non-storage mediums. Thus, the claim did not encompass wires and fibers, and was not inoperative.

My two cents: I have never seen an § 101 inoperative rejection. I think the Examiner got a little too clever here and really missed the boat. Inoperability rejections are usually limited to crazy stuff like perpetual motion, cold fusion, and methods of controlling aging. See MPEP 2107.01, which goes on to state:

Situations where an invention is found to be "inoperative" and therefore lacking in utility are rare, and rejections maintained solely on this ground by a Federal court even rarer. ....

An invention that is "inoperative" (i.e., it does not operate to produce the results claimed by the patent applicant) is not a "useful" invention in the meaning of the patent law. See, e.g., Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989); In re Harwood, 390 F.2d 985, 989, 156 USPQ 673, 676 (CCPA 1968) ("An inoperative invention, of course, does not satisfy the requirement of 35 U.S.C. 101 that an invention be useful."). However, as the Federal Circuit has stated, "[t]o violate [35 U.S.C.] 101 the claimed device must be totally incapable of achieving a useful result." Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d 1555, 1571, 24 USPQ2d 1401, 1412 (Fed. Cir. 1992) (emphasis added).

Mistake #10 when arguing at the BPAI: Arguing about issues that aren't appealable

It took me half the year, but today marks the end of my list of Top 10 Mistakes in Arguing on Appeal to the BPAI. The last one is: Arguing about issues that aren't appealable.

Not all issues that arise in patent prosecution are appropriate for appeal. The BPAI has a very specific jurisdiction: claim rejections. That leaves a large number of issues that are outside of the BPAI's jurisdiction, which means you must petition rather than appeal. A long list of these can be found in Chapter 1000 of the MPEP, including:

• Restriction requirement
• Objections to the drawings
• Objections to the specification
• Objections to the claims
• Refusal to enter claims after final
• Refusal to enter evidence after final
• Finality of Office Action
• Refusal to enter appeal or reply brief
• Formal sufficiency and propriety of declarations
• Refusal to give priority date for failure to satisfy conditions in 35 USC 119 or 120

Bringing up these issues in an appeal brief is not damaging per se. The Board will simply refuse to decide on the issue. The damage occurs in cases where waiting until after appeal to resolve the issue is too late. 

Not all issues need to be resolved. Maybe you don't think it was proper for the Examiner to make the Office Action final – but you can usually live without a ruling to that effect. Maybe you think the Examiner's objection to the specification for a purported misspelling is improper – the spec really should use the word "discrete" rather than "discreet" – but I'll bet you'd be willing to amend the spec if you win on appeal. (The misspelling objection is, sadly, a true story.)

Some issues can be resolved after appeal, but doing so will cost a great deal of time and money. Suppose your chances of winning on appeal are low unless your declaration evidence is entered. If you think the Board will rule on this in your favor and consider your evidence, you're wrong, and your misunderstanding may result in the Examiner's rejection being affirmed. You can reeopen prosecution after losing on appeal, and enter the evidence then – but this is obviously a big waste of the client's time and money. So if you really want that evidence entered, and you have good facts, you should petition simultaneously with the appeal.

Finally, if you really need a petition to be decided in your favor to get allowable claims, waiting until after appeal can be fatal. That's because almost all the petitions discussed in this post are petitions under 37 C.R.F. § 1.181, which says that petitions "not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely." Given that the appeal process takes on the order of years, not months, it's safe to say that the appeal will not be decided within two months of the Office Action that you're petitioning. While it's possible that the petition decision-maker will have mercy and not dismiss as untimely, clearly you don't want to depend on that.

The petition you need a favorable decision will most likely be related to new matter. Imagine winning on substantive issues at the Board, then having a new matter issue blocking you from a Notice of Allowance. Maybe you can deal with the new matter issue by withdrawing the spec amendment that's causing the problem -- only to get a "no antecedent basis in the spec" objection in the next Office Action. Maybe you can deal with the new matter issue by withdrawing the drawing amendment that's causing the problem – only to have the Examiner reinstate the "every feature of the claims must be illustrating in the drawings" objection that prompted your drawing amendment. Therefore, you really should petition the objection as soon as possible.

There is an exception to that: a new matter objection to the spec or drawings that is actually related to the claims should be accompanied by a claim rejection under § 112 First. The new matter objection then becomes an appealable matter rather than a petitionable one. MPEP 608.04(c). In such cases, I think it's best to address this in the Appeal Brief, asking the Board to consider the issue on appeal. Then you can get a decision disposing of both the § 112 rejection and the new matter objections. Though I would probably file a timely petition and pursue the issue on appeal, in case the Board didn't see it as an appealable issue.

For more on the interplay between spec objections and 112 rejections, see my post here and the Board's decision in Ex parte Popp.

I'll be blogging about petitions from time to time. Petitions aren't searchable like BPAI decisions, so it's not as easy to research petition issues. But I read a lot of file histories in my blog research, and sometimes I do come across interesting issues related to petitions, which may lead to a blog post.

BPAI reverses obviousness when two references describe two "completely different" types of vehicle transmissions

Takeaway: In Ex parte Janson, the BPAI reversed an obviousness rejection which involved combining a continuously variable vehicle transmission with a discrete gearing transmission. "The Examiner failed to articulate how a person having ordinary skill in the transmission art would combine the teachings of two completely different transmissions, namely, Thomas’ automatic transmission (gears) and Kukucka’s CVT (belts) ... The Examiner’s rationale for combining these two patents is based upon an insufficient rational underpinning or factual basis to support the combination."

Details:

Ex parte Janson
Appeal 2010009939; Appl. No. 11/973,594; Patent 7,086,987 B2; Technology Center 3600
Decided  November 5, 2010

The claims on appeal for this reissue application related to a vehicle transmission. A representative claim read:

14. A powertrain for an automotive vehicle, comprising:
...
     a transmission including a first input driveably connected to the power source, a first output, and epicyclic gearing located in a torque path between the first input and the first output ... and the transmission produces the low range gear only in response to manual selection of low range gear operation of the transmission; and
     a transfer case including a second input driveably connected to the first output ... the transfer case providing no low-range torque ratio.
(Emphasis added.)

The Examiner originally rejected the claim as anticipated by Thomas. The Applicant persuaded the Examiner that the manually selected low range gear in Thomas applied to the transfer case rather than to the transmission.

The Examiner then switched to an obviousness rejection, adding Kukucka as a secondary reference which allegedly taught a manually selected low range gear for a transmission. The Examiner concluded:

It would have been obvious to a person of ordinary skill in the art at the time the invention was made to provide Thomas with a manual selection of a low range ratio in view of Kukucka et al to eliminate requirement / need to use a transfer case gear set to provide low range due to the use of low range selection via transfer cases requiring vehicle to be resting or at a very slow speed (see Kukucka paragraph [0018] last four lines).

The Applicant appealed. In the Appeal Brief, the Applicant argued that the references did not disclose the above-emphasized limitation related to manual selection of a low range gear.

     Thomas refers to a PRNDL gear selector used to select operating ranges of the transmission ... The park range is the only gear range that Thomas discloses as being selected manually. ...
     Presumably because Thomas does not disclose explicitly that the low gears are manually selected, Kukucka is cited for disclosing a continuously variable transmission that produces multiple forward ratios and a low range ratio greater than the torque ratio of the forward gears.
     Kukucka's transmission 16 is a belt-drive, continuously variable transmission having no epicyclic gearing or any other gearing producing multiple forward gears, a reverse gear and a low range gear, as claim 14 recites.
(Emphasis added.)

In the Answer, the Examiner first noted that the Applicant had attacked the references individually. The Examiner then further clarified which limitations were taught by which reference:

   Thomas does disclose ... producing the low range gear only in response to manual selection of low range gear operation (column 5, lines 44-46 in Thomas discloses that first and second gears (of the transmission) can be used as low gears when the transfer case modes are manually selected).
   There is no confusion on the examiner's part as to the difference between selecting low gear range in a transmission and selecting low gear range in a transfer case, that is why Kukucka was used as a secondary reference in view of Thomas to show that it is well known in the art to use a manually selected low range ratio in which the range would then be produced by the transmission.

The Board was persuaded by the Applicant's arguments, and noted that the Examiner had not rebutted the deficiencies pointed out by the Applicant. The Board also found fault with the Examiner's rationale for combining:

     [W]e further conclude that the Examiner failed to articulate how a person having ordinary skill in the transmission art would combine the teachings of two completely different transmissions, namely, Thomas’ automatic transmission (gears) and Kukucka’s CVT (belts), in order to reach the claimed invention of a transmission having epicyclic gearing where the transmission automatically produces gear shifts among the forward gears and produces the low range gear only in response to the manual selection of low range gear operation of the transmission. The Examiner points to no interrelated teaching of these two patents, the effects of demands known to the design community or present in the marketplace, or the background knowledge possessed by a person having ordinary skill in the art as support for the rationale to make the proposed modification. In our view, the Examiner’s rationale for combining these two patents is based upon an insufficient rational underpinning or factual basis to support the combination, but instead is based upon doubts that the claimed invention is unpatentable [sic].
(Emphasis added.)

The Board therefore reversed the obviousness rejection.

My two cents: This case shows there is hope for beating an obviousness rejection when there are vast differences between the combined references. Here, the Applicant didn't specifically make a rationale-for-combining argument which pointed out these differences. The Applicant mentioned that the secondary reference was a continuously variable transmission with no gears whatsoever, without specifically contrasting this with the discrete gear transmission in the primary reference. But the Board did figure out these were "two completely different transmission."

To me, there is no rationale for combining here because a POSITA wouldn't look to combine a discrete gearing transmission with a continuous transmission in the first place. And if he did, it would take more routine skill in the art to combine them. Either way, that points to non-obviousness.

While I agree with the outcome, I was puzzled by the Board's criticism of the Examiner's rationale. It's true that the Examiner did not refer to marketplace demands (stronger, faster, cheaper?) or background knowledge of a POSITA. Instead, the Examiner did what is most common for obviousness: point to a teaching in the references themselves.

Then again, the Examiner's motivation from the secondary reference was weak: "to eliminate requirement / need to use a transfer case gear set to provide low range due to the use of low range selection via transfer cases requiring vehicle to be resting or at a very slow speed." Doesn't that amount to nothing more than: it would be obvious to provide a low range gear because low range gears are useful?

BPAI finds adding a fourth parameter doesn't change basic principles of operation of reference

Takeaway: In Ex parte De Jonge, the Applicant attacked an obviousness rejection of a dependent claim by arguing that "adding features beyond the conventional arrangement in Russell [the primary reference] would clearly change the principle of operation of Russell." The Board disagreed: "We do not see, and Applicant does not explain, how modifying Russell from consideration of three vehicle parameters to consideration of four vehicle parameters is a 'change in the basic principles' of operation of Russell’s device."


Details:
Ex parte De Jonge
Appeal 2009005757; Appl. 10/820,424; Tech. Center 3600
Decided  April 27, 2010

A representative independent claim on appeal read:

23. A shifter for controlling the transmission of a motor vehicle, comprising:
...
a controller that actuates said powered pawl based at least in part on at least one vehicle operating parameter in addition to an input from a vehicle ignition, a position of the shift member, and a position of a vehicle brake pedal.

Dependent claim 24 added the limitation "the at least one vehicle parameter other than the enumerated parameters comprises engine rpm."

The Examiner rejected independent claim 23 as being anticipated by Russell. The Examiner also rejected dependent claim 24 as being obvious over Russell in view of Kato, with Kato allegedly disclosing the engine rpm as the claimed other vehicle operating parameter. 

In rejecting independent claim 24, the Examiner relied on Russell's teaching of an indication from the shift lever of a lever position other than park. The Examiner took the position that this lever position other than park taught the additional parameter recited in the claim. The Applicant argued that the "other than park" shift lever position in Russell could not read on both the claimed "position of the shift member" and the claimed "vehicle operating parameter in addition to" the other parameters. The Board agreed and reversed the anticipation rejection.

Dependent claim 24 narrowed the additional vehicle operating parameter to "engine rpm." In the obviousness rejection, the Examiner asserted that Kato disclosed "an engine revolution speed signal used to control shifting of a lever to another gear" and then concluded that:

[I]t would have been obvious to reach the subject matter of claim 24 by modifying the shift lever assembly of Russell to add engine rpm as a parameter for control of movement of the shifting lever, as taught by Kato, in order to prevent careless operation of the shift knob and to eliminate the possibility of jack-rabbit starts or hard braking ([Kato] Col. 3 Lines 36-38).

The Applicant did not dispute the Examiner's factual findings about Kato, but made several arguments about the rationale for combining. One such argument was "the proposed modification changes the principle of operation of the reference." The Applicant argued as follows:

... Fig. 8 of Russell '524 discloses a conventional Brake Transmission Shifter Interlock (BTSI) arrangement that prevents shifting out of park unless the brake is being applied. ...
   Because Russell '524 does not disclose use of any vehicle operator parameters (other than the conventional BTSI inputs), modification of Russell '524 to include such features would require adding entirely new functions to the Russell '524 arrangement.
   Applicant further notes that "if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prim facie obvious." MPEP 2143.01, citing In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959). Adding features beyond a conventional BTSI arrangement to Russell '524 would clearly change the principle of operation of Russell '524.

The Board was not persuaded by the Applicant's argument. The Board distinguished Ratti, where "the modification fundamentally changed the technical basis of how a seal performed its sealing function and how a sealed interface was attained." In this case, the Board found that Russell used three parameters, and that the proposed modification was to add a fourth parameter taught by Kato:

In the case before us, Russell’s controller activates the actuator based on the vehicle parameters of ignition, brake, and shift member position (Fact 2). Kato discloses consideration of engine rpm as a vehicle parameter for control of the actuator of a gear shifter (Facts 6-7). We fail to see, and Appellants have failed to explain, how modification of Russell from consideration of three vehicle parameters to consideration of four vehicle parameters is a “change in the basic principles” of operation of Russell’s device. Rather,  this modification to Russell’s device is an improvement specifically taught by Kato that a person of ordinary skill in the art would recognize would improve Russell’s electronically-actuated shifter mechanism in the same way as in Kato. KSR, 550 U.S. at 417.

After affirming the obviousness rejection of dependent claim 24, the Board entered a new ground of rejection of independent claim 23:

Because claims 24 and 25 include all the limitations recited in claim 23, we conclude claim 23 must have been obvious based on our conclusion of obviousness of claims 24 and 25. See Ormco v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent claim is “found to have been obvious, the broader claims . . . must also have been obvious”).

My two cents: I don't know too much about vehicle transmissions, but based on the record presented by the Applicant, I think the Board was right.

The Applicant did not dispute that that the primary reference taught actuating a pawl based on the three claimed inputs – in fact, in discussing independent claim 23, the Applicant admitted that Russell disclosed the three claimed inputs. Nor did the Applicant dispute that the secondary reference taught engine rpm as an additional operating parameter. All the Applicant did in arguing dependent claim 24 was to make the conclusory statement that "adding features beyond a conventional BTSI arrangement to Russell '524 would change the principle of operation of Russell '524." Yet the Applicant did not explain why this was so.

In arguing the independent claim, the Applicant attempt to describe the claimed invention as being "completely different" than Russell:

The shifter of the present invention, as recited in independent claim 23, controls the powered pawl based on vehicle operating parameters in a manner that is completely different than conventional "PARK lock" and "ignition lock" functions. As discussed above, Russell '524 (Fig. 8) does not disclose control of a powered pawl based on a vehicle operating parameter. Rather, Russell '524 discloses a conventional BTSI arrangement that utilizes the position of the shift lever, ignition state, and brake pedal position to lock the shifter in park according to conventional park and ignition lock criteria/inputs.

Yet this great difference seems to boil down to: Russell uses three inputs; the independent claim adds an unspecified parameter; and the dependent claim narrows that to a specific parameter. How is that a change to basic operating principles? If there was a bigger difference, the Applicant didn't explain it to me in the brief.

I see the "change in basic principles of operation" argument used quite a bit, but it doesn't seem to win very often. Usually the Board says what it did here: what we have here is a small change, not a change to basic principles. I do think it's an effective argument when you explain how the change is fundamental. 

Postscript: Following appeal, the Applicant exercised the right to re-open prosecution after a new ground of rejection by the Board. The Board reversed the anticipation rejection of dependent claim 26, so the Applicant rewrote that one as independent. A few other claims were already dependent on claim 26.


In a non-final Office Action, the Examiner rejected now-independent claim 26 and all of its dependents as being obvious over Russell in view of Kato. (Same references as before.) The Examiner explained that:

Applicant's amendment in response the Appeal Board decision rendered on June 15, 2010 is presuming that the Boards silence to the remainder of the claims not listed in the new grounds of rejection is an indication of allowability. However, this is not the case, and as noted in the footnote on page 13 of the decision "no inference should be drawn from the failure to make a new ground of rejection for other claims," according claims 26-29 and 51 -59 stand rejected in view of the new grounds of rejection set forth by the Appeal Board.

So although the Board chose to enter a new ground of rejection only for independent claim 24 (not anticipated but still obvious), the Board essentially gave a roadmap for the Examiner to reject the other claims and he took it.

The Examiner did allow another set of claims which had been allowable before appeal. The Applicant cancelled those claims before appeal and reinstated them on reopening prosecution.

The Applicant apparently wasn't satisfied with getting only this second set of claims, since the application went abandoned.

Mistake #9 when arguing at the BPAI: Arguments that ignore relevant case law

Mistake #9 of my "Top Ten Mistakes Applicants Make at the BPAI" is making arguments that clearly go against existing case law. Here are the most common examples I've observed.

• Ignoring KSR. Obviousness doesn't require a motivation to combine from the references. After KSR, the test is instead "articulated reasoning with some rational underpinning" to combine the references. See my previous post "Mistake #6 when arguing at the BPAI: Arguing the TSM test for obviousness".
• Using the wrong standard for "teaching away."  The Federal Circuit has said that disclosure of an alternative to X is not teaching away from X.  In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of thesealternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”)
• Making obviousness arguments in an anticipation rejection. Non-analogous art is irrelevant to anticipation (see previous post here). Teaching away is irrelevant to anticipation (see previous post here). Secondary considerations such as unexpected results are irrelevant to anticipation (see previous post here).
• Bringing up the number of references when arguing obviousness. The Federal Circuit has said that the number of references is not an indicator of non-obviousness. In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) ("The large number of cited references does not negate the obviousness of the combination, for the prior art uses the various elements for the same purposes as they are used by appellants, making the claimed invention as a whole obvious in terms of 35 U.S.C. § 103.") 
• Bringing up the age of the references when arguing obviousness. The Federal Circuit's predecessor has said that the age of the references is not an indicator of non-obviousness. "The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem." In re Wright, 569 F.2d 1124 (CCPA 1977)(citing In re McGuire, 416 F.2d 1322 (CCPA1969)). 
•  Bringing up another that patent issued with similar claim language. The patentability of other applications is legally irrelevant. See my previous post "Arguments guaranteed to lose: 'but look at these similar claims in other issued patents'."
• Making arguments about due process and equal protection. The BPAI has no jurisdiction over these issues. For the Board's response to a due process argument, see the inter partes reexam decision here in Meadwestvaco v. Graphic Packaging Int'l.  See the post here at The Florida Patent Lawyer blog for the Board's response to an equal protection argument.

BPAI reverses anticipation based on multiple distinct embodiments

Takeaway: In Ex parte Cucerzan, the BPAI reversed an anticipation rejection when the Examiner relied on multiple distinct embodiments within the single reference. "Thus, it is not enough [in an anticipation rejection] that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)."

Details:

Ex parte Cucerzan
Appeal 2009008190; Appl. No. 11/094,078; Tech. Center 2100
Decided  May 2, 2011

The technology for this patent application related to spell checking. A representative claim on appeal read:

1. A method of forming a target error model to facilitate spell checking input text related to a target data collection comprising steps of:
a) providing a source query log containing user queries to at least one source data collection;
b) generating target relational data based on the source query log including corrective substring suggestions that relate to the target data collection and corresponding misspelled substrings for the
corrective substring suggestions extracted from the source query log;
c) building a target error model using the target relational data including target statistical occurrence data for the substrings of the target relational data derived from the source query log; and
d) storing the target error model on a computer readable medium.

All independent claims were rejected as being anticipated by Shazeen. On appeal, the Applicant argued that Shazeen did not disclose the claimed relationships between the elements (e.g., generating X based on Y and building Z using X). The Applicant pointed out that these relationships were missing because the Examiner relied on separate and distinct embodiments in Shazeen. For example, the Applicant argued :

[T]here is no disclosed relationship between the cited elements of the spell-checking embodiments C and E and the cited "target error model" (i.e., database of contexts of the spell-checking embodiment B [col. 2, ll. 22-44]) of Shazeer, as the Examiner contends. Thus, there is no disclosure of the spell-checking embodiments C and E forming the database or corpus of the spellchecking embodiment B (i.e., cited target error model), as the Examiner contends.

The Examiner did not address this argument in the Answer.

The Board reversed the anticipation rejection because "the Examiner reaches a finding of anticipation by combining separate, distinct embodiments of Shazeer." The Board noted this is prohibited by the case law of anticipation, which requires elements that are both identically shown in the reference and  arranged as they are in the claims, as explained by NetMoneyIn:

Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention. Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).

The Board found that Shazeer clearly referred to multiple embodiments:

In particular, the respective portions of Shazeer’s columns 2, 3, and 10 that are relied on by the Examiner refer to different disclosed embodiments, as clearly indicated by the first sentence of each paragraph in Shazeer’s columns 2 and 3, and the first sentence of each of the first two paragraphs of column 10: e.g., “According to another general example embodiment of the present invention . . . .” (col. 2, ll. 22-23), “In another example embodiment of the present invention . . . .” (col. 3, l. 1), “According to a further example embodiment of the present invention . . . .” (col. 10, ll. 1-2).

The Board concluded:

Because of the Examiner’s reliance on multiple distinct embodiments in Shazeer, we are in accord with the Appellant that the elements of the claimed invention are not identically shown in the reference, arranged as they are in the claims.

Two dependent claims were rejected as being obvious over the anticipatory reference. The Board affirmed this obviousness rejection, noting that anticipation arguments relating to multiple embodiments are not relevant for obviousness. In a footnote, the Board declined to reject the independent claims under § 103, instead stating that "we leave this question of obviousness to the Examiner in the event of further prosecution."

My two cents: Patents are full of the word "embodiment," so the next time you see an anticipation rejection, it may be worth investigating whether the Examiner is relying on what the reference describes as different embodiments. Now, if you convince the Examiner that anticipation is inappropriate under Net MoneyIn, you'll probably get an obviousness rejection. So you should also consider whether you have good arguments against combining the multiple embodiments of the single reference.

Though the Applicant pointed out that the Examiner relied on multiple embodiments, the Applicant didn't directly make the argument that anticipation doesn't allow this. But the Board got the point and filled in the blanks a bit. I would definitely cite Net MoneyIn or In re Arkley when making this argument.

BPAI criticizes Applicant's claim term definition because the definition gave examples

Takeaway: The Applicant in Ex parte Brunner offered evidence of the meaning of "graphics processing unit," in the form of an IEEE article "GPU Computing." The BPAI found that the article did not provide a definition of the term, and instead described examples of GPUs. The Board adopted the Examiner's broader interpretation of GPU: "any processing unit that carries out graphical operations, such as outputting display data to a display device."

Details:

Ex parte Brunner
Appeal 2009006904; Appl. No. 10/877,358; Tech. Center 2600
Decided February 14, 2011

A representative claim on appeal read:

1. A method to generate a display-wide visual effect, comprising:
     copying an image buffer’s contents into a second buffer;
     filtering the second buffer’s contents back into the image buffer using a graphics processing unit to generate a specified visual effect, wherein the image buffer is associated with a system frame buffer; and
     compositing an application-specific window buffer into the image buffer, wherein the act of compositing is performed by the graphics processing unit after the act of filtering.

During prosecution, the Examiner took the position that "any processing unit that carries out graphical operations, such as outputting display data to a display device, is a graphic processing unit." The Examiner used this interpretation in an obviousness rejection, asserting that "because the at least one programmable processor in Hamburg is described as outputting data to at least one output device (such as the described LCD screen), the at least one programmable processor described in Hamburg is considered a graphics processing unit."

The Applicant contested this interpretation, and submitted an IEEE article titled "GPU Computing" as evidence of the meaning of "graphic processing unit" to a POSITA. The Applicant referred to this article in the Appeal Brief, arguing:

As one of ordinary skill in the art would recognize, the use of a graphics processing unit (GPU) entails a significantly different process than using a system's central processing unit and providing for efficient use of display resources. "[T]he architecture and programming model of the GPU are maredly different than most other commodity single-chip processors." (Owens et al., GPU COMPUTING ...; Evidence Appendix.) "The input to the GPU is ... triangles ... [each] triangle generates a primitive called a "fragment" at each screen-space pixel location that it covers. Because many triangles may overlap at any pixel locations, each pixel's color value may be computed [by the GPU] from several fragments." (Id.) In contrast, a central processing unit is driven by standard programming commands and process a single pixel at a time. Thus, the use of a dedicated graphics processing unit as claimed is not an insignificant difference between the cited art and the claimed invention.

The Examiner elaborated on his position in the Answer:

[T]he Applicant's claims don't limit the disclosed graphics processing unit to the graphics processing unit described by Owens et al. The claimed graphics processing unit is only limited to a graphics processing unit that [functional language of the claim.]

The Examiner also pointed to a portion of Hamburg that taught:

The invention can be implemented advantageously in one or more computer programs that are executable on a programmable system including at least one programmable processor ... Suitable processors include, by way of example, both general and special purpose microprocessors.

The BPAI found fault with the Applicant's interpretation of "graphics processing unit":

Appellants have not demonstrated error in the Examiner’s conclusion that the recited “graphics processing unit” is broad enough to read on Hamburg’s “programmable processor.” The reason is that Owens describes examples of GPUs without offering what can be accurately characterized as a broadest reasonable definition of that term.6 Furthermore, Appellants’ reliance on Owens’ discussion of “triangles” and the “fragments” generated thereby is misplaced in view of Owens’ description of triangles as “typical” rather than as essential: “The input to the input to the GPU is a list of
geometric primitives, typically triangles, . .” (emphasis added). Owens at 880, 2d col., 1st para. under heading “A. The Graphics Pipeline.” 

The Board found that the Applicant did not demonstrate error in the Examiner's interpretation, then used the Examiner's interpretation to conclude that Hamburg did disclose a graphics processing unit. The Board affirmed the obviousness rejection.

My two cents: The Applicant was smart to zero in on the real issue here: the meaning of GPU. And to hit the issue head on by introducing evidence.

Unfortunately for this Applicant, looks like this Board wanted a true definition, where the article was instead a discussion of GPUs. I think the Board made a mistake by not looking at the article as a whole and what it said about how POSITAs interpret "graphics processing unit." To me, the article as a whole clearly taught that GPU means something other than a processor that carried out graphics operations, by explaining how GPUs are different than regular microprocessors. The Applicant could have done a better job of explaining this – and probably would have had he known the Board was going to focus on this.

I haven't read many BPAI opinions dealing with the use of technical articles rather than dictionary definitions to argue meaning of a claim term to a POSITA. So I'm not sure how common this outcome is. My sense is that a true definition from a dictionary is better.

I'm disappointed the Board didn't recognize that the Examiner's interpretation was ridiculously broad. Yeah, okay, maybe the Applicant didn't have the best argument, and it's true that a GPU isn't limited to triangle primitives. But the meaning of GPU isn't as broad as a processor that carries out graphics operations. My PC in 1990 "carried out graphics operations" in order to put graphics on the screen, and it didn't have a GPU.

Maybe the Applicant was dead in the water here anyway, thanks to the offhand statement in the reference that "[s]uitable processors include, by way of example, both general and special purpose microprocessors." A graphics processing unit is certainly a special purpose microprocessor, so this  blanket statement in the reference may amount to a teaching of the claimed element.

Looks like the Applicant got away with a procedural error: as far as I could tell, the GPU Computing article was submitted for the first time in the Evidence Appendix of the Appeal Brief.

Finally, I note that decision is not as big a travesty as the Board's opinion in Ex parte Giacalone, There, the Board found that because "digital signal processing" meant manipulating images or other real-world signals, a video processor was a DSP because it processed images. (I posted long ago about Giacalone; read about it here.)

News at the BPAI

• The PTO announced (here) that a new BPAI Chief Judge has been appointed to replace Chief Judge Fleming, who retired last year. The new Chief Judge is James Donald Smith, who most recently served as Chief IP Counsel of the healthcare company Baxter International. The Chief Judge has many administrative responsibilities, and Kappos said that the new Chief Judge is "committed to making the Board more efficient and more responsive to the needs of parties filing appeals."
• Occasionally PTO administrative officials serve as judges on a BPAI panel, as a "statutory member" authorized by 35 U.S.C. § 6. Director Kappos and former Deputy Director Barner did so in last year's precedential opinion Ex parte Frye. The recently appointed Deputy Director of the Patent Office, Teresa Stanek Rea, recently acted as a BPAI judge in last week's opinion Ex parte Adelman. Deputy Director Rea, a former president of the AIPLA, moved to the PTO from the DC law firm Crowell & Moring.