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)."
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.