Thursday, June 23, 2011

BPAI affirms obviousness based on generic motivation "need for higher performance disk caching methods"


Takeaway: In Ex parte Rau, the Board cited with approval a generic motivation to combine based on a statement in the Background of the secondary reference: "there is a continuing need in the art for new disk caching methods and structures, offering lower overhead and higher performance than is presently possible with known methods and systems." Neither the Examiner nor the Board showed any connection between the higher performance and the particular claimed feature relied on by the examiner. Yet if the claimed feature didn't produce the higher performance – if instead, higher performance was caused by something else – then where is the motivation to combine?

Ex parte Rau
Appeal 2009008251; Serial No. 11/021,707; Tech. Center 2100
Decided June 16, 2011

The technology on appeal related to caching in a computer. A representative claim on appeal read:

     1. A method of updating a data cache having a plurality of rows, the method comprising:
     maintaining a list of the rows, the list including a plurality of entries, each entry corresponding to a row and having a key uniquely identifying the row, and further having a count indicating an age of the row;
     sorting the entries by their key;
     searching the list for an entry having a key to a row to be updated if found or added if not found;
     if the entry having the key to the row to be updated is found:
               removing the entry from the list;
               sorting the remaining entries by their count, so that the entry at the beginning of the list is for the oldest row, and the entry at the end of the list is for the newest row;
               appending a new entry at the end of the list that replaces the removed entry, the new entry having the same key as the removed entry, and a count indicating the corresponding row is the newest; and
              updating the corresponding row in the data cache. 

The Examiner rejected the independent claim as obvious over a combination of two references. According to the Examiner, the primary reference taught all limitations except for the sorting by count and appending at the end of the list. The Examiner relied on a secondary reference for these limitations. As a reason for combining the references, the Examiner offered an explicit motivation in the secondary reference: "there is a continuing need in the art for new disk caching methods and structures, offering lower overhead and higher performance than is presently possible with known methods and systems."

In the Appeal Brief, the Applicant made several arguments: the primary reference did not teach removing the entry when found; no expectation of success in the combination; and teaching away. The Applicant did not contest the motivation to combine.

On appeal, the Board considered each of the Applicant's arguments, and found no error in the Examiner's positions. The Board therefore affirmed the obviousness rejection.

Finally, the Board noted with approval the Examiner's explicit motivation to combine, taken from the secondary reference:
We also agree with the Examiner’s explicit motivation that combining the references would be obvious since “there is a continuing need in the art for new disk caching methods and structures, offering lower overhead and higher performance” (Ans. 6). The Supreme Court has stated that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). 

My two cents: I don't have an opinion on the overall conclusion of obviousness. But I think the Board was completely offbase in using this generic motivation to combine as a grounds for affirmation.

I've seen plenty of cases in which generic motivations – stronger, faster, cheaper – were convincing. Take, for example, an obviousness rejection based on modifying the primary reference to use titanium instead of steel because the secondary reference teaches that titanium is lighter. Sounds pretty convincing because the generic benefit – reduced weight – is directly tied to the modification.

That's not the case here, not by a long shot. First of all, the motivation relied on was in the Background of the reference:

In view of these and other deficiencies associated with prior art methods of implementing a disk cache and replacement strategy, a continuing need exists in the art for new disk caching methods and structures, offering lower overhead and higher performance than is presently possible with known methods and systems.

All the Background section tells me is that a need exists. Strictly speaking, this statement doesn't even tell me that the reference solved the problem. But let's assume a POISTA would interpret this statement as also implying "and we're going to tell you how we solved it".

Even so, this statement doesn't doesn't tell me how the claimed invention in the reference solved the problem. Yet unless the specific teaching relied on in the rejection (here, sorting by count and appending at the end of the list) was the feature that actually produced the benefit (here, higher performance), that teaching can't properly serve as a motivation to combine.

Why should we assume – based on the single statement quoted above – that it was sorting by count and appending at the end of the list that produced higher performance? Maybe sorting by count and appending at the end of the list were already known in the art, and the higher performance was produced by some other feature not relied on by the Examiner. Maybe sorting by count and appending at the end of the list were involved in achieving higher performance, but only in combination with other features.

I'm always suspicious of explicit motivations to combine, because Examiners often take them out of context. References disclose lots of features, and lots of benefits. Don't assume that the cited benefit is actually produced by the feature you're claiming. Read the reference carefully and decide for yourself.


15 comments:

  1. Karen -

    I agree with you 100%.

    Applicant in this case -

    The ultimate conclusion of obviousness is reviewed de novo. :)

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  2. Two things.

    1) I am fairly confident this would be reversed at the Federal Circuit. As readily apparent, there is no indication that the modifications yield the proposed benefits. I see these type of rejections ALL THE TIME, and I specifically argue that there is no evidence to support a conclusion that A modifiction yields X benefit. Without looking at the prosecution history, I cannot tell of the Appellant made those (or similar) argument.

    2) Never understate the importance of the APJ writing the decision. Karen -- this is a point you should consider whenever evaluating any BPAI decision. As recently posted by Dennis Crouch on his blog, there is a great discrepency between different APJs and their affirmance/reversal rate. I've seen this APJ's work before. He likes to play fast and loose with KSR.

    Like many APJs, he'll cite to multiple of sections of KSR (pages worth) and then conclude, voila, that the limitaitons are obvious. There are a lot of APJs that mistake the citation of case law for actual analysis. An analysis requires the application of the case law to the facts -- not simply the recitation of case law. Also, a conclusion is not an analysis.

    Unfortunately, what we are looking at is simply the long-lasting effect from the Dudas reign of terror and the mindset that was ingrained into everybody at that time.

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  3. "I've seen this APJ's work before. He likes to play fast and loose with KSR."

    He is a she actually.

    "Unfortunately, what we are looking at is simply the long-lasting effect from the Dudas reign of terror and the mindset that was ingrained into everybody at that time."

    APJ Dang actually has quite a bit of private practice experience (I worked with her at a firm in Alexandria) and in-house experience. She is not of the mindset that was ingrained into everybody during the Dudas reign of terror.

    I haven't reviewed the file wrapper closely enough to make a comment on her decision, but it's not correct to conclude the decision is wrong simply based on her tendency to frequently cite to KSR.

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  4. >I specifically argue that there is no
    >evidence to support a conclusion that A
    >modification yields X benefit. Without
    >looking at the prosecution history, I cannot
    >tell of the Appellant made those (or similar)
    >argument.

    I didn't review the entire file history, only the FOA, AF, Appeal Brief and Answer.

    But the Applicant did not make the argument in the Appeal Brief, which is the only thing that matters. I'll update my post to make it clear that the applicant did not make the argument.

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  5. Meh, look on the bright side, even if the 103 was wrong, it doesn't really matter, the 112 and 101 issues are still pending.

    "Why should we assume – based on the single statement quoted above – that it was sorting by count and appending at the end of the list that produced higher performance?"

    Um, they're not. They're saying there was a motivation for one to start taking old steps and start combinin' them up hoping to get higher performance etc.

    I don't usually use generic motivations myself, and I understand why you guys take issue with them as it is pretty much the reason I try not to use them. But, even so, that is what the examiner used here and the applicant didn't bother to argue against it, so, perhaps he was persuaded. Or perhaps he was incompetent. Either way, it doesn't matter.

    "I'm always suspicious of explicit motivations to combine, because Examiners often take them out of context. "

    As you well should be, that is the most fun kind of explicit motivation to combine to use.


    DUDAS REIGN OF TERROROROROROROORORORRORORRRRRRRRRRRRRRRRRRRRRR!!!!!!!!!!!!!!!!!!!!!!!1111111111111elventyone111!!!!!!!!!!!!!!!1111

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  6. "She is not of the mindset that was ingrained into everybody during the Dudas reign of terror."

    An examiner for about 7 years (90-97) and then got appointed to the BPAI in 2007.

    Hmmm .... been out of the USPTO for 7 years, and goes back in 2007 ... right in the thick of the mess.

    Regardless, I have found her work product to be sub-standard. When you are new at the job and the boss says "reject, reject, reject" or "affirm, affirm, affirm" you do what the boss says. Again, getting back to the issue at hand ... there is a difference between citing case law and presenting a good analysis.

    OK, let's look at some of this "quality" work.

    On page 6, it is written:

    "To determine whether the references would have suggested a method of updating a data cache which includes a step of “removing the entry from the list” (claim 1), we give the claims their broadest reasonable interpretation consistent with the Specification. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)."

    Here, the APJ is mixing claim construction ("broadest reasonable interpretation") with obviousness ("would have suggested"). Of course, claim interpretation is the first step of any analysis, but it is simply sloppy to combine the two in this manner.

    Also, the APJ writes "claim 1 does not preclude a cache table having a fixed number of entries," while address the argument that the prior art teaches a fixed number of entries. However, claim 1 recites "searching the list for an entry having a key to a row to be … added if not found." Paragraph [0021] of the specification also teaches that "New rows are appended to the end of the cache and old rows are removed wherever such old rows are located in the cache."By my reading, consistent with the specification, is that the capability of adding an entry certain means that claim 1 does preclude a cache table having a fixed number of entries.

    The APJ also writes "In particular, having a fixed number of entries does not mean that the entries (and the data therein) must be fixed/unchanged." Here, the APJ is playing fast and loose with the terminology. Although the value within the entry may change, the number of entries does not change

    The APJ concludes "we will not limit an 'entry' to those with the fixed number corresponding to the addressable locations as labeled by Moenne-Loccoz but rather interpret 'entry' as any entered data in the cache table that corresponds to a row." However, this is inconsistent with paragraph [0019] of Appellants' specification (i.e., "each entry in the list includes a key field 45 … a count field 35"), which describes the entry as the addressable location, which is distinct from the values that are contained in the entry.

    The APJ dismisses the "no expectation of success" and "teaches away" arguments. I didn't look at them, but my guess is that they probably aren't any good. A "teaches away" argument is a sure loser, and the BPAI doesn't really respond well to "no expectation of success" arguments, unless they are made very well. Regardless, this APJ fails at least on two accounts: (i) the claim construction is inconsistent with how BOTH the prior art and Appellants are using the term "entry" and (ii) the proposed benefit (i.e., "lower overhead and higher performance") is not supported by any evidence.

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  7. I wonder if the applicant will try to file a request for rehearing.

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  8. "An examiner for about 7 years (90-97) and then got appointed to the BPAI in 2007.

    Hmmm .... been out of the USPTO for 7 years, and goes back in 2007 ... right in the thick of the mess."

    Uh, that's actually 10 years out.

    And the period of 1990-1997 was when the PTO's "mission statement" was "help our customers get patents."

    This APJ has susbstantial private practice and in-house experience, including a stint at the company that year after year receives the most patents. I doubt very much that her independent decision making ability was thoroughly overcome in 2007 by the "reject, reject, reject" policy of the Dufas administration.

    You're free to disagree with her decision, and to point out any factual and/or legal flaws you think it may contain, but to question her professionalism on nothing more than the timing of her return to the PTO is wrong. And you owe her an apology.

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  9. "I doubt very much that her independent decision making ability was thoroughly overcome in 2007 by the 'reject, reject, reject' policy of the Dufas administration."

    Thoroughly overcome? Can you pin it down any further? So, if 90% of her independent decision making was overcome, then was it thoroughly overcome? BTW – I will give you props for calling it the "Dufas administration."

    If there was a more anti-inventor Director of the Patent Office than Dudas, I have never heard of him. That being said, I doubt very much that most people hired into the BPAI in 2007 would have had the 'stuff' to buck the anti-patent trend that was clearly prevalent at that time.

    "to question her professionalism on nothing more than the timing of her return to the PTO is wrong"
    No ... my questioning of her professionalism is based upon her work product. The timing of her return to the USPTO just puts things into context.

    "you owe her an apology"
    No ... she owes this appellant an apology. She probably owes a quite a few appellants an apology. However, I would say a great many APJs also fall within that class. If you think she deserves an apology, why don't you defend her work product?

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  10. There's no denying that the PTO during the Clinton Administration was very pro-allowance and the PTO during the Bush II Administration was very anti-allowance.
    That being said, this was not some single APJ at work. This was a panel decision. Now, the process behind how the panel reaches a consensus to decide cases and write them up is beyond me. This was a panel comprising APJs Homere, Lucas and Dang. So, it's a disservice to say this decision was based solely on Dang's background and experience.

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  11. Going back for a moment to the issue of generic motivation, I would take a more militant stand than even Karen does and argue that generic motivation can never be used as a valid grounds for combining. The motivation is (or should be) directed to the specific elements that are to be combined.

    The question should be: Assuming references A and B are in analogous arts, what are the specific properties of Element 1 as disclosed by reference A and Element 2 as disclosed by reference B that would motivate PHOSITA to combine those two elements?

    Simply saying "To make the world a better place," as many examiners essentially argue, just doesn't cut it. Simply identifying a "continuing need" as the PTO does here and does ad naseum since KSR also doesn't cut it.

    It is not the end product -- the combination -- that motivates. The combination is down stream of the source of the motivation.

    I'm not saying that people cannot be motivated by a perceived general result such as a "better" mousetrap, but I am saying that such a generic motivation is not sufficient for a 103 rejection.

    The (legal) motivation comes from some specific quality or structure or characteristic of both elements that would make it evident to a regular ol' PHOSITA to put them together to produce the claimed subject matter as a whole that is being 103-rejected.

    Most examiner's I've dealt with who use generic motivation are just too lazy to assess the PA components being combined to identify the known or disclosed qualities of those components that would appeal to PHOSITA. They merely conclude "Hey, combining A and B would be cool, so there's the motivation."

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  12. The thing of it is that most BPAI decisions I've read reverse rejections with generic motivations.

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  13. >most BPAI decisions I've read reverse >rejections with generic motivations.

    I generally use the term "motivation" to mean an explicit teaching in a reference. My first reaction to your comment is to say my experience doesn't agree with your. But I don't have any numbers, just a gut feel.

    When you use the term "generic motivation", does that encompass substitution and predictable results rationales?

    If you were, I'd disagree more strongly. I've seen a *ton* of BPAI decisions that affirm obviousness using those two rationales. [FWIW, I don't read many chemical or biotech decisions.]

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  14. >generic motivation can never be used as a
    >valid grounds for combining.

    Are you saying that KSR or post-KSR case law doesn't support the use of generic motivations? Or that generic motivation *should not* be allowed? That is, that you disagree with it on policy or philosophical grounds.

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  15. "Are you saying that KSR or post-KSR case law doesn't support the use of generic motivations"

    That is exactly what I'm saying. As stated by the Supreme Court, "rejections on obviousness grounds cannot be sustained by merely conclusory statements; instead there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."

    A "rational underpinning" isn't the "claimed invention is merely a collection of known elements yielding predictable results" or one of the many catch phrases used by the BPAI. Has anybody read KSR? The Supreme Court actually looked at the facts. They didn't summarily dismiss the facts (like they did in Bilski). Instead, SCOTUS articulated a reasoning to combine.

    Although I stated this somewhat differently above, it bears repeating (perhaps in this form) --- there is a difference between merely citing case law and actually applying the law to the facts.

    Too many of the BPAI's decisions are merely recitations of case law entirely unaccompanied by an analysis vis-à-vis the facts.

    The fact that you've seen a ton of BPAI decisions like this merely reflects the lack of quality at the BPAI.

    This is a quote I also like from KSR: "Often, it will be necessary for a court to look to interrelated teachings of multiple patent … to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue." What is the biggest joke about the KSR decision is that although KSR put the kibosh on the TSM standard, the "rational underpinning" from my first quote and the "apparent reason" from my second quote is just another way of saying TSM. They are all reasons why one skilled in the art would have modified X in view of Y. In essence, SCOTUS rejected a test they ultimately ended up using.

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