BPAI reverses anticipation rejection for method of manufacturing a syringe "free of flash lines" based on drawing of finished syringe with no flash lines

Takeaway: In Ex parte Boucherie, the Applicant claimed a method of manufacturing a plunger for a medical syringe. A claim on appeal included the limitation "said piston body ... being formed such that the front side and side wall thereof are free of any flash lines and/or gate points for the plastic." The Examiner used an anticipatory reference that disclosed a syringe manufacturing process. The Examiner also found that the "formed free of flash lines" limitation was disclosed by a drawing of the final product, which did not show flash lines. The Board reversed the anticipation rejection, finding that "there are a number of reasons why the flash lines and gate point formed in the gasket during the Fig. 2(a)-(c) molding process might not be illustrated in the syringe shown in Fig. 1, though actually present in the final molded product."

Details:

Ex parte Boucherie
Appeal 2010002109; Appl. 10/530,351; Tech. Center 1700
Decided  May 2, 2011

The application on appeal related to a method for manufacturing plungers for medical syringes.

1. Method for manufacturing plungers for medical syringes,
     said plunger comprising at least two parts including a longitudinal plunger body made of plastic and a piston body provided at a front end of the plunger body,
    which piston body comprises a plastic which is softer than the plastic of the plunger body,
    wherein said plunger, or at least a part of the plunger, is formed by first manufacturing the piston body and then the plunger body, or at least a part of the plunger body, by means of injection moulding, and
    wherein the plunger body, or said part of the plunger body, is injected against the piston body,
    said piston body having a front side and a side wall and being formed such that the front side and side wall thereof are free of any flash lines and/or gate points for the plastic.
(Emphasis added.)

The term "flash lines," also known as flashing, refers to the excess bits of plastic produced by the molding process. As explained in the specification, this excess plastic is especially undesirable for a medical syringe, since the material "may come off and thus end up in the reservoir of the syringe, and thus also in the medical liquid to be injected."

The Examiner rejected the independent claims as being anticipated by various references. One of the references was a Japanese patent publication, Chiba, which disclosed a method of manufacturing a syringe. The Examiner asserted that manufactured syringe was shown in Fig. 1 of Chiba as having no flash lines or gate points and thus met the claim limitation highlighted above.

On the final rejection, the Applicant appealed and argued (inter alia) the claim limitation highlighted above. In the Appeal Brief, the Applicant distinguished Chiba as follows:

As can be seen in Figs. 2(a)-(c) of the Chiba publication, the front side and the sidewalls of the gasket 6 include a gate point for the thermoplastic elastomer and flash lines, respectively. For clarification, the flash lines are formed on the side wall of the gasket 6 along the split between the molds 21a, 21b. This is due to the fact that some of the thermoplastic elastomer material injected to form the gasket 6 will fill in the gaps defined by the split between the two mold parts 21a, 21b, no matter how small the gaps are.

In the annotated Fig. 2(c) below, the flash lines are drawn in red.

In the Answer, the Examiner explained that the manufactured product in Fig. 1 was relied on for teaching the contested limitation:

Figure 1 of Chiba clearly shows a gasket 6 (i.e. piston body) that is free from any flash lines and/or gate points for the plastic. Although Figures 2(a)-2(c) show a gasket 6 (i.e. piston body) having a gate point, this gate point is removed to the extent that the resulting gasket, shown in Figure 1, is free from any flash lines or gate points. Note that the claim does not require the piston to be free of  any flash lines and/or gate points as it exits the die, for example, but the claim only requires the piston being free from flash lines and/or gate points. It is therefore interpreted that as long as the final form of the molded gasket 6 (i.e. piston body) is free from flash lines and/or gate points, Chiba's gasket 6, as shown in Figure 1, meets the claimed limitation. The claim does not preclude a finishing step that would remove any flash lines or gate points resulting from the molding process.
(Emphasis added.)

The Applicant filed a Reply Brief to contest these findings. First, the Applicant repeated the explanation of how the manufacturing process discussed in the text of Chiba and illustrated in Figs. 2(a) - (c) of Chiba would produce flash lines and gate points. The Applicant then explained why it was inappropriate to rely on the final product shown in Chiba's Fig. 1 for the claimed process limitation:

While the flash lines and the gate point for the plastic may not actually appear to be shown in Fig. 1, this may be for a number of reasons that do not involve the steps according to the method as recited in claim 1. In particular, since the drawing of Fig. 1 is shown as a cross-sectional view, if the view is taken along any plane other than the plane that contains the flash lines, the flash lines would not appear in the drawing of Fig. 1. Alternatively, even if the cross-sectional view is taken along the plane that contains the flash lines, since there is a necessary compression of the gasket 6 at the interface between the gasket 6 and the walls 4a of the outer case 4 to ensure sealing therebetween, such flash lines would also be compressed, and not necessarily visible in the drawing of Fig. 1.

The Reply Brief also explained that while finishing steps in general were not excluded by the claim, those that eliminated flash lines and gate points were excluded, by the "formed free of" limitation:

While the examiner's answer is correct in that pending claim 1 does not preclude any finishing steps, such a finishing step to remove any flash lines and/or gate points for the plastic is unnecessary in the method of pending claim 1, which requires that the front wall and side wall of the piston body are formed free of any flash lines and/or gate points for the plastic at the injection molding step.
(Emphasis added.)

The Board agreed with the Applicant and reversed the Chiba anticipation rejection:

We are in agreement with Appellant that the Examiner’s findings are insufficient to establish that Chiba inherently performs a step to remove the flash lines and gate point created in the disclosed molding process. As explained by Appellant, there are a number of reasons why the flash lines and gate point formed in the gasket during the Fig. 2(a)-(c) molding process might not be illustrated in the syringe shown in Fig. 1, though actually present in the final molded product. (Rep. Br.10 5-7.)

My two cents: Right result, and an example of good advocacy. The Applicant didn't just say that the Examiner was wrong, but explained why. And every time the Examiner provided more information about what he was thinking, the Applicant explained in even more detail why this was wrong. Perhaps the Board would have looked at the facts and decided for the Applicant anyway – but the Applicants arguments made it easy for the Board to reach that result.

The Examiner's mistake in thinking that the reference anticipated because the claim didn't exclude a finishing step is a common one. Yes, it's true that the transition term "comprising" allows additional steps. But not one that is excluded by other claim limitations, which is the case here: "said piston body ... being formed such that the front side and side wall thereof are free of any flash lines and/or gate points for the plastic." As the Federal Circuit so aptly put it, " '[c]omprising' is not a weasel word with which to abrogate claim limitations." (Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed.Cir.2007).)

BPAI finds that use of "or" requires teaching of only one option recited in the claim

Takeaway: In Ex parte Rokosz, the BPAI treated claim language involving "or" as an alternative limitation, even though the Applicant argued that the claim required the presence of both options recited in the claim. The limitation in question was "whether to configure at least one of said scheduled meetings for display ... as free time, or whether to configure said at least one of said scheduled meetings for display ... as busy time.” In support of its interpretation, the Board cited to MPEP § 2173.05(h) ("Alternative Limitations” and Markush-style claiming).

Details:

Ex parte Rokosz
Appeal 2009003688; App. 10/331,413; Tech. Center 2100
Decided  November 24, 2009

The patent application on appeal was directed to scheduling software. A representative claim on appeal read:

     1. A system for selectively exposing free time in a group scheduling system, the system comprising:
     a groupware system comprising a calendar of scheduled meetings between a plurality of groupware system users;
     a set of free time rules, each of said free time rules specifying whether to configure at least one of said scheduled meetings for display in a groupware client as free time, or whether to configure said at least one of said scheduled meetings for display in a groupware client as busy time; and,
     a free time rule processor configured to configure individual ones of said scheduled meetings to appear in a groupware client as free time to requesting ones of said groupware system users based upon associated ones of said free time rules.
(Emphasis added.)

The Applicant appealed a final Office Action rejecting the independent claims as being anticipated. In the Appeal Brief, the Applicant argued that the reference did not teach "the display of scheduled time as free time." According to the Applicant, the reference merely taught that a portion of a scheduled time period appeared as free time.

The Examiner's Answer contended, for the first time, that because the claim used the word "or" in describing the free time rules, anticipation required only a teaching of one or the other: the display of scheduled time as free time; or the display of scheduled time as busy time. Therefore, since FIG. 2 of the reference showed a schedule with 4 AM as Unavailable (claimed "busy time"), whether or not the reference also taught display of scheduled time as free time was irrelevant. Nonetheless, the Examiner continued to maintain that the reference also taught the alternative condition.

The Applicant filed a Reply Brief to dispute this new interpretation of the phrase involving "or," arguing that the claims required both options to be present in the reference:

The Appellants' claims require the presence of "a set of free time rules", each of the free time rules specifying whether (1) "to configure at least one of the scheduled meetings for display in a groupware client as free time", or whether (2) "to configure said at least one of said scheduled meetings for display in a groupware client as busy time". This is a binary choice that must be specified by the free time rules as set forth by the express language of the claims. The Examiner has failed to identify this limitation in its entirety in Srimuang.

The Board interpreted the claim to require only one of the options, citing to the MPEP's sections on Alternative Claim Language and Markush claims:

At the outset, we agree with the Examiner that in order to show anticipation, only one of the recited alternatives needs to be disclosed by the reference (Srimuang). [FN1] Thus, the Examiner need only show a “set” (of at least one ) “free time” rules specifying: (a) “whether to configure at least one of said scheduled meetings for display . . . as free time,” or, (b) “whether to configure said at least one of said scheduled meetings for display . . . as busy time.”
[FN1] See MPEP § 2173.05(h), “Alternative Limitations” and Markush-style claiming.

The Board went further to find that the reference also taught both alternatives:

We broadly but reasonably construe the claimed “scheduled meetings” as reading on any designated slot in a calendar of scheduled meetings, as the actual subject matter of the designated happening is a non-functional limitation in the claim (see below). Given this construction, we find Srimuang discloses that employee A has indicated that 8:00 AM and 4:00 PM are free time slots, as shown in Fig. 2.

The Applicant filed a Request for Rehearing, arguing that "no species of a rule is specified [in the claim] using Markush phraseology. Rather, a binary choice is presented that a rule specifies 'whether to' do one action, 'or whether to' do another action."

The Board was not persuaded. As explained in its Decision on Request for Rehearing (Apr. 28, 2010):

     Although Appellant's claim 1 is not a Markush claim per se, the claim clearly defines each free time rule using alternative language ("or"). Appellant's arguments appear to impute that each free time rule should be read with conjunctive prongs. (Request 2-3). We particularly note that none of Appellant's claims on appeal recite the argued "binary choice" language. (Request 3, ¶ 1, l.7). We will not endeavor to read such argued limitations into the claim. 
     Moreover, Appellant could have amended his claims during prosecution to recite "and" instead of "or" (cf: "binary choice") to clarify the meaning and intended scope of the disputed claim term "free time rule." However, Appellant chose not to do so. 

Postscript:  After appeal, the Applicant filed an RCE with these claim amendments:

a set of free time rules, each of said free time rules specifying whether as a binary choice to configure at least one of said scheduled meetings for display in a groupware client either as free time, or whether to configure said at least one of said scheduled meetings for display in a groupware client as busy time;

The Examiner then rejected under 112 First Written Description, noting that "the limitation 'binary choice' is not supported by applicant's original specification."

The Applicant responded by referring to a paragraph in the spec and asserting that the paragraph "describes with clarity a binary choice of exposing a meeting as free or busy time."  The Examiner then withdrew the Written Description rejection. 

My two cents: I wish I knew a bulletproof way to claim options, since options are a common pattern in software patents. I've encountered more than a few Examiners who insist that any use of the term "or" invokes the Markush rule "only need to find one of them in the reference." I was disappointed to see the Board also apply this simplistic analysis. Maybe there are better ways to express the option pattern in this claim, but on balance, the better interpretation is that the claim requires a system that supports both options.

The Applicant's attempt to clarify by amending after appeal ran into trouble with Written Description. Originally I wondered if the Examiner was thinking that "binary choice" specifically limits to two options, where the spec described two options but probably didn't strictly limit the number of options to two. I would probably have left out "binary" for this reason. But apparently that wasn't the real issue, since the Examiner withdrew the rejection.

I really question the wisdom of appealing again, because the Board explicitly found that the reference taught both options, based on their construction of "scheduled meetings." I don't see that the Applicants have addressed this issue going up to the next appeal.

It's possible that the Applicants will get lucky and the Examiner will cave before it gets to the Board. At this time, the Applicant has filed an Appeal Brief, but the Examiner hasn't filed the Answer. The Applicant argued that the Examiner has not explained how the reference teaches the "binary choice" language. Perhaps the Examiner won't recall the Board's earlier claim construction, or will somehow think that "binary choice" makes the Board's construction of "scheduled meetings" irrelevant.

BPAI reverses Enablement rejection when Examiner confuses § 101 Non-Statutory Subject Matter with § 101 Lack of Utility

Takeaway: The BPAI reversed a § 112 First Paragraph Enablement rejection in a computer software application because the Examiner's rationale for the Enablement rejection related to lack of utility under § 101. The BPAI agreed that an Enablement rejection appropriately accompanied a lack of utility rejection under In re Kirk. However, here the outstanding § 101 rejection involved the non-statutory subject matter prong of § 101 rather than the lack of utility prong.


Details:
Ex parte Sun
Appeal 2009008503; Appl. No. 11/171,388; Tech. Center 2100
Decided  May 31, 2011

The invention related to "multimedia user interfaces that provide an intelligent interaction paradigm to help analysts better formulate, validate and manage analyses hypotheses." A representative claim on appeal read:

1. A computer implemented method supporting competitive intelligent analyses of information, comprising the steps of:
     generating, on a computer display device, a display of a hypothesis in a hypothesis space;
     generating, on said computer display device, a display of accumulated information in an information space that helps to evaluate the hypothesis;
     in response to user input, linking a hypothesis to relevant information in the information space;
in response to user input, linking information displayed in the information space to a particular hypothesis and its state; and
     if a particular hypothesis stands rejected or confirmed, generating, in the hypothesis space, a description of the state of the hypothesis as rejected or confirmed.

A first Office Action (issued in 2006) included a § 101 non-statutory subject matter rejection and a § 112 First Paragraph Enablement rejection, but no prior art rejections. In explaining the § 101 rejection, the Examiner asserted that "none of the claims are limited to practical applications," citing AT&T v. Excel Communcations, Inc. Furthermore, according to the Examiner, MPEP 21071.01 directed that an Enablement rejection should accompany a § 101 rejection:

Courts have also cast the 35 U.S.C. 101/ 35 U.S.C. 112 relationship such that 35 U.S.C. 112 presupposes compliance with 35 U.S.C. 101. See In re Ziegler, 992 F.2d 1197, 1200-1201, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993) ("The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. 101 that the specification disclose as a matter of fact a practical utility for the invention. ... If the application fails as a matter of fact to satisfy 35 U.S.C. § 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. § 112."); In re Kirk, 376 F.2d 936, 942, 153 USPQ 48, 53 (CCPA 1967) ("Necessarily, compliance with § 112 requires a description of how to use presently useful inventions, otherwise an applicant would anomalously be required to teach how to use a useless invention.").
(MPEP 21071.01.)

In the first response, the Applicant amended the method claims to include the phrase "on a computer display device" and argued that the amendment overcame both rejections. But the final Office Action maintained both rejections, and the Applicant appealed.

In the Appeal Brief, the Applicant explained how "the claims on appeal in this application are clearly directed to practical applications" and were thus directed to statutory subject matter as interpreted by In re Warmerdam, State Street Bank, and AT&T. The Applicant argued for reversal of the § 112 First Paragraph Enablement rejection because it explicitly relied on the § 101 rejection.

The Examiner maintained both rejections in the Answer, and explained that the Enablement rejection was appropriate because

... current case law (and accordingly, the MPEP [Manual of Patent Examining Procedure]) require such a rejection if a §101 rejection is given because when Applicant has not in fact disclosed the practical application for the invention, as a matter of law there is no way Applicant could have disclosed how to practice the undisclosed practical application.
(Emphasis in original.)

The application did not reach the BPAI until 2011. The Board affirmed the § 101 rejection under Bilski v. Kappos, finding that the method claims were not tied to a particular machine and also failed to transform  an article to a different state or thing.

However, the Board reversed the § 112 First Paragraph Enablement rejection, finding that the Examiner had confused a § 101 Non-Statutory Subject Matter rejection with a § 101 Lack of Utility rejection:

     The Examiner’s statement of the rejection of claims 1-25 under § 112, first paragraph appears to be couched in terms of the claims lacking enablement. However, the Examiner offers no analysis with respect to how the disclosure fails to enable the subject matter, other than reference to MPEP § 2107.01(IV) and In re Kirk, 376 F. 2d 936, 942 (CCPA 1967). See Ans. 10.
     MPEP § 2107.01(IV) and In re Kirk relate the statutory grounds of § 101 and § 112, first paragraph to a rejection for lack of utility. Although the Examiner rejects the claims under § 101 as being directed to nonstatutory subject matter, the Examiner does not show that the claims are deficient under the utility prong of 35 U.S.C. § 101.
     Accordingly, as the § 112 rejection appears to be based solely on a § 101 “lack of utility” rejection that has not been made, we do not sustain the rejection of claims 1-25 under 35 U.S.C. § 112, first paragraph.

My two cents:  I admit I've sometimes used the phrase "utility rejection" when I really mean a § 101 non-statutory subject matter rejection. I further admit that this usage is sloppy and incorrect. But I do know the difference between a non-statutory subject matter rejection – quite common in computer cases – and a rejection for lack of utility (sometimes referred to as a "specific utility" rejection) – which typically occurs in in a biotech case and is almost never appropriate in a computer case. So if an Examiner relied on In re Kirk to throw in an Enablement rejection in a computer case, I'm confident I'd know something was very wrong.

I found three other applications where this same Examiner has made this type of inappropriate Enablement  rejection in the past few years. In two of them, the issue went to appeal and the BPAI reversed (Ex parte Mitchell and Ex parte Griffith). In the third, the Examiner withdrew the Enablement rejection in the Answer without comment (Ex parte Aklilu).

How did I find other appeal decisions involving the same Examiner? I used the list of BPAI decisions available at the JIANQ CHYUN Intellectual Property Office blog. The list, which is compiled daily by James Long, includes the names of the ALJ, the Examiner, and the legal representative, as well as the rejections on appeal. So if you know the Examiner's name then you can use the blog's search box to search for other decisions involving the same Examiner. Same for law firm name. This blog is a great resource!

BPAI affirms written description rejection of "integrated read-reset circuit", finding that showing a circuit as a box does not equate to an integrated circuit

Takeaway: The Applicant amended a circuit element to add "integrated," so that the claim read "a dual mode common integrated read-reset circuit." The Examiner rejected under § 112 First, Written Description, finding no support for an "integrated circuit." The Applicant pointed to passages in the specification describing the two modes of the circuit and a figure showing the read-reset circuit in a block diagram. The BPAI affirmed, explaining that "showing a circuit as a box does not equate to an integrated circuit." (Ex parte Henderson, Appeal 2009004652.)

Details:
Ex parte Henderson
Appeal 2009004652; Appl. 10/405,904; Tech. Center 2600
Decided:  May 17, 2010

The patent application on appeal involved image arrays such as those used in digital cameras. A representative claim on appeal read:

10. An image array sensor comprising:
     an array of pixels arranged in rows and columns, each pixel comprising a light-sensitive element and switching means for applying a reset signal to the pixel and to read out a pixel signal from the pixel;
     a dual mode common integrated read-reset circuit, in each column, to operate as a buffer in a first mode to apply the reset signal to the pixels, and to also operate as a comparator in a second mode to read pixel reset signals and pixel signals;
     analog-to-digital conversion means for converting the pixel reset signals and the pixel signals from analog to digital; and
     a memory to store the digital pixel reset signals of the pixels for up to a complete frame.
(Emphasis added.)

The Applicant added the phrase "dual mode common integrated" during prosecution to distinguish over a § 102 reference. The Applicant explained the difference as follows:

Although Applicant maintains that Boemler et al. does not disclose a read-reset circuit operating in two modes, to further advanced prosecution Applicant has amended independent Claim 10, 17, and 24 to recite a dual mode common integrated reset circuit, in each column .... Boemler et al. discloses a separate amplifier and comparator for each column of pixels and not a dual mode common integrated read-reset circuit ....
(Emphasis added.)

The next Office Action converted the anticipation rejection to an obviousness rejection by adding a secondary reference for teaching a "common integrated circuit." The Examiner also noted that "the new limitation of dual mode does not further limit the claim since there were already two modes claimed." The Examiner also rejected the amended claims under § 112 First, Written Description, explaining that:

The limitation of an integrated circuit was not disclosed in the specification. While different circuits are described, none of them are referenced to as an integrated circuit.

In response to the Written Description rejection, the Applicant argued that the limitation was described in Figures 1 and 2 and specific passages in the specification. The Applicant argued obviousness as follows:

The Examiner correct noted that Boemler et al. fails to disclose a common integrated circuit ... and looks to Tandon et al. to remedy this deficiency. ... [T]he analog image sensor of Tandon et al. comprises several discrete circuits 40, 42, 44, 50 for processing the output of the plurality of pixels to produce an analog output 52. The lateral voltage generator circuit provides the reset voltage for resetting the plurality of pixels.
(Emphasis added.)

The Examiner maintained the rejection in a Final Office Action, and the Applicant appealed.

The Appeal Brief argued the written description rejection by reproducing Figures 1 and 2 and the relied upon passages from the spec:

[0014] The two column lines 16 and 20 are connected to a Read-Reset Amplifier (RRComp) circuit 22. The RRComp circuit 22 has two modes controlled by signals ReadMode and ResetMode. When a row of pixels is to be reset to a reference voltage VRT, these signals are ReadMode=0 and ResetMode=1 and the RRComp 22 functions as a unity gain buffer amplifier. When a row of pixel voltages is to be read out and converted into digital form, ReadMode=1 and ResetMode=0 and the RRComp 22 functions as an open loop amplifier or comparator.
(Emphasis in original.)

The Examiner elaborated on the Written Description rejection in the Answer, and in particular, explained his interpretation of the claim limitation at issue:

Appellant argues that the RRComp circuit 22 shown in Figs. 1 and 2 and functions in two modes creates support for the limitation "dual mode common integrated read-reset circuit". The examiner disagrees and notes that no where in the specification as originally filed is the limitation of an integrated circuit described. Further no description of RRComp 22 can be found that fits the definition of what an integrated circuit is. Citing the common understood definition from "The Authoritative Dictionary of IEEE Standards Terms, seventh edition published in 2000, an integrated circuit is "a combination of interconnected circuit elements inseparable associated on or within a continuous substrate" or "a combination of connected circuit elements (such as transistors, diodes, resistors, and capacitors) inseparably associated on or within a continuous substrate" or "a solid-state circuit consisting of interconnected active and passive semiconductor devices diffused into a single silicon chip". Nothing in the specification describes RRComp 22 as meeting anything of these definitions.
(Emphasis added.)

The Applicant did not file a Reply Brief.

The Board did not discuss claim construction, but moved on to quickly dismiss the Applicant's Written Description argument and affirm that rejection:

Appellant points to Figures 1 and 2 of Appellant’s drawings, reference numeral 22, the Read-Reset Amplifier (RRComp), to show that the circuit is integrated. App. Br. 8-9. ... However, we do not find that simply showing a circuit as a box equates to an integrated circuit.
(Emphasis added.) 

The Board also affirmed the obviousness rejection, citing to In re Larson (making components integral or separable is considered to be an obvious design choice) and KSR (predictable result of combination of known devices).

My two cents: As usual, this decision turns on claim construction. The Board often makes this point – even when neither the Applicant nor the Examiner acknowledge it. This decision did not discuss claim construction at all. Nonetheless, the Board's discussion of the Written Description rejection tells me that the Board interpreted "dual mode common integrated read-reset circuit" as requiring an "integrated circuit" as that term of art is understood by a POSITA. 

The Board was right that putting a label on a box in a block diagram doesn't show that the inventor understood the box to be an "integrated circuit." It's true the application involved "integrated circuits" – the specification does mention CMOS and NMOS. Had the Applicant referred to that section of the spec, maybe the outcome would be different. Instead, the Applicant only discussed the sections of the spec which describe the dual mode aspect of the circuit. The Applicant appears to have completely ignored the Examiner's hints about claim construction in the Office Actions, and his explicit construction in the Answer.

What struck me about this case is this: I'm pretty sure the Applicant didn't intend to claim an "integrated circuit" as that term is understood by a POSITA. If so, the Applicant blew it by not arguing claim construction and/or amending once the Examiner's interpretation was clear.

It's true the application involved "integrated circuits" as that term is understood by a POSITA -- the specification does mention CMOS and NMOS. Even so, reading the argument the Applicant made to distinguish over the art, it seems clear to me that the Applicant used the adjective "integrated" in a different manner: to describe a single circuit which integrated two functions (buffer and comparator).

Once the Examiner's Answer explained that he was reading "integrated" to modify "circuit" and reading "integrated circuit" as a term of art, the Applicant should have dealt with this issue of claim construction. If the Applicant really wanted to hang his hat on this distinction (a circuit which integrated two functions), he should have either filed a Reply Brief with claim construction arguments, or should have pulled the case from appeal to amend the claim.

The limitation read "dual mode common integrated read-reset circuit." How persuasive would it be to argue that "integrated" refers to the dual mode aspect of the circuit and not the circuit as a whole?  Under the "last antecedent" doctrine discussed in Finisar, only the adjective "read-reset" modifies "circuit." (Finisar Corp. v. The DirecTV Group, Inc., 523 F.3d 1323, 1335-36 (Fed. Cir. 2008).) On the other hand, this is prosecution and not litigation, and perhaps making this argument merely highlights that the claim could be interpreted either way, thus leading to an indefiniteness rejectiion under Ex parte Miyazaki.

How could the claim be amended to clarify? I think moving the adjective "integrated" so that the claim reads "integrated dual mode common read-reset circuit" is an improvement. Another option might be "single dual mode common read-reset circuit", although I suspect this would result in a § 112 rejection from some Examiners.

What about "integral" rather than "integrated"? "Integral" is commonly used in mechanical cases to mean (roughly) "one piece" – but we don't want to imply that the physical structure is one piece. The idea here is that two functions are combined into the read-reset circuit.

Finally, while I chose to focus on claim construction in this post, this type of distinction  – circuit which integrates two functions  – doesn't usually win the day, and it didn't win here. When the Applicant added the limitation discussed here, the Examiner switched from an anticipation to an obviousness rejection, pulling in a secondary reference to teach "supporting circuitry all on the same integrated circuit" and "an advantage to doing this is that the number of chips that need to be handled can be decreased." Not surprisingly, the Board affirmed the obviousness rejection, citing to In re Larson (making components integral or separable is considered to be an obvious design choice) and KSR (predictable result of combination of known devices).

So you won't be surprised to hear that after losing on appeal, the Applicant amended and the Examiner allowed the claim. The amendment removed "integrated" and added additional features related to the dual mode aspect:

a dual mode common integrated read-reset circuit, in each column, configured to
operate as a buffer in a first mode to apply the reset signal to the pixels while an output of the dual mode common read-reset circuit is coupled to the pixels, and to also
operate as a comparator in a second mode to read pixel reset signals and pixel signals while an input of the dual mode common read-reset circuit is coupled to the pixels;

BPAI reminder that declaration of unexpected results must include statement that results are unexpected

Takeaway: The BPAI found that the Applicant's evidence of unexpected results was insufficient to rebut the prima facie case of obviousness because the expert declaration failed to state the results were unexpected. Arguments in the Appeal Brief did characterize the results as unexpected, but the Board pointed out that "attorney argument is not evidence." (Ex parte Uchida, Appeal 2011000486.)

Details:

Ex parte Uchida
Appeal 2011000486; Appl. No. 11/731,595; Tech. Center 1600
Decided: July 7, 2011

The claims were directed to a chemical composition. One of the limitations at issue read "the inorganic heat generating agent is magnesium sulfate having an average diameter of from about 0.01 μm to about 40 μm."

The Examiner rejected the claims as obvious. On appeal, the Applicant argued that the average diameter limitation was not taught or suggested by the combination of references. The Appeal Brief also referred to previously submitted evidence showing that the claimed particle diameter produced unexpected results.

The Board found that the claim language "to about 40 μm" was broad enough to encompass the 50 μm particle in one of the references. The Board also found that the evidence of secondary considerations was flawed:

Although the Uchida [expert] Declaration shows that 1 micron particles produce a slightly higher maximal temperature than 50 micron particles, neither the Specification nor the Declaration states that this result was unexpected. Cf. In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“[W]hen an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.”). Here, the only characterization of the results as unexpected is in the Appeal Brief, and attorney argument is not evidence.
(Emphasis added.)

The Board also criticized the evidence as not being commensurate with the claim scope. "[T]he claims encompass a particle size range of about 1 μm to about 40 μm, and the evidence shows results only at the lower limit of the claimed range."

Having found the record "devoid of evidence" that actually showed unexpected results, the Board affirmed the obviousness rejection.

My two cents: If you're spending the time and money to submit evidence of secondary considerations, do it right. Note that two of the points made by the Board apply to all types of secondary considerations:

• In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“[O]bjective evidence of non-obviousness must be commensurate in scope with the claims…”). 
• Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)("However, arguments of counsel cannot take the place of evidence lacking in the record.").

Also be aware that specific types of secondary considerations (e.g., commercial success, unexpected results, etc.) have other requirements. So look up the relevant case law and make sure your evidence complies. For example, the Board didn't mention this in Uchida, but the unexpected results doctrine requires that the results be unexpected as compared to the closest prior art.  

• In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)(“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”).

Bilski at one year

It's been a little over a year since the Supreme Court decided Bilski v. Kappos. I thought about doing some sort of update on Bilski at the BPAI and district courts – then I discovered that IPWatchdog not only beat me to the punch, but did a fantastic job.

IPWatchdog recently featured the guest post "One Year Post-Bilski: How the Decision is Being Interpreted" authored by Michelle Holoubek of Sterne, Kessler, Goldstein & Fox. The post provides a quick discussion of Bilski trends at the BPAI and in the courts, and a link to document with case summaries for post-Bilski § 101 decisions.

BPAI holds that reissue cannot be used to remove a terminal disclaimer

Takeaway: 
A patentee filed a reissue in order to remove a terminal disclaimer. The patentee appealed the Examiner's decision that removal of a terminal disclaimer is not an error correctable by reissue. The BPAI, in an expanded seven-judge panel, held that reissue cannot be used to remove a terminal disclaimer because the patent's term is fixed at issue. (Ex parte Yamazaki.)

Details:

Ex parte Yamazaki
Appeal 2010002033; Appl. 10/045,902; US. 6,180,991; Tech. Center 2800
Decided  January 11, 2011


During prosecution of the '991 Patent, the Applicant filed a terminal disclaimer to overcome double patenting rejection. Later in prosecution, the Applicant filed a § 1.181 Petition to Withdraw Terminal Disclaimer after amending such that the claims were no longer subject to the double patenting rejection. Before the petition was decided, Applicant received a Notice of Allowance and paid the issue fee. After the '991 Patent issued, the PTO dismissed the petition, stating that the "USPTO will not remove a recorded terminal disclaimer once a patent issues," and also stating that reissue is not available to nullify a terminal disclaimer.

Before the expiration of '991 Patent, the Applicant filed a reissue. The reissue declaration referred to several errors related to the Petition to Withdraw Terminal Disclaimer. The Examiner rejected the claims during reissue as having a defective declaration, stating that nullification of a terminal disclaimer is not an  error correctable in reissue. The Applicant appealed the Examiner's rejection.

The Board interpreted the reissue statute (§ 251) to hold that the PTO cannot reissue a patent having no remaining unexpired term. The BPAI found that the patent in question had already expired – due to the terminal disclaimer – before the first reissue Office Action was mailed. Since the patent on appeal had expired, the Board found that reissue was not available.

The Board went further than the facts of the case to hold that reissue is never available to remove a terminal disclaimer. The Board reasoned that removing the terminal disclaimer would extend the term of the patent, yet the patent's term is fixed at issue. In explaining its position, the Board cited Ex Parte Wellerdieck, Appeal No. 2007-1119, (BPAI 2007) (informative).  In Wellerdieck, the Board held that "§ 251 does not permit reissue of a patent to extend the term of the original patent, as set upon issuance of the patent."

In reaching its decision, the Board also explicitly overruled a non-precedential decision, Ex parte Durckheimer, Appeal No. 94-2004,  (BPAI 1996). The Board in Durckheimer interpreted “the term of the original patent” § 251 to mean the full term of the patent granted by § 154 without taking into account the terminal disclaimer. Here, the Board noted that § 154 was amended after Durckheimer to specifically recognize that patent term can expire based upon a terminal disclaimer.


My two cents: Most BPAI decisions affect only the Applicant/Patentee. This one affects every patent   that includes a terminal disclaimer. Let's hope this patentee has enough at stake to appeal to the Federal Circuit.

The patentee did file a Request for Rehearing by the BPAI. It's possible the BPAI will change its mind -- two judges in the expanded panel of seven did file a concurrence which disagreed with the broad holding. I expect this decision to be marked Precedential, or at least Informative.

At oral arguments before the BPAI, one of the judges asked about the Petition to Withdraw Terminal Disclaimer that was filed during prosecution of the original patent, then commented that "I'm more concerned with the issue that we are not the proper place to be with this issue before the Director." I'm not sure where the judge was going with this. Any remedies related the petition (filed in 1999) have long since expired. Perhaps that was the judge's point: it was a petitionable issue and you failed to handle it in the appropriate manner. Though the appropriate manner – Withdraw from Issue and/or ask the PTO to hold the issuance until the petition was decided (suspension of rules?) – isn't very satisfactory either. This case, like Frye, is yet another fine example how appeals and petitions don't play together very well.

If you want more details about how the Board interpreted the reissue statute, you'll have to read the decision yourself. I blogged about this one because I think it's an important decision, but arguments about statutory construction don't interest me too much.

Applicant caught between inconsistent BPAI Decision and Petition Decision

Takeaway: The Examiner objected to originally filed drawings in the first Office Action on the merits (mailed in 2004), and the Applicant is still fighting the very same objection in 2011 – even after winning at the BPAI on the prior art rejections! What's worse, the Applicant is now caught between inconsistent direction from the PTO: the BPAI Decision said to petition the objections and the Petition Decision said to appeal the objections. The Applicant has now filed a Renewed Petition which explains this inconsistency. If the Applicant loses this time, the only recourse is to file a suit in district court. (Application of Frye, Appl. 10/790,923.)

Details:

Application of Frye
Application 10/790,923
Technology Center 3700

Frye's filed a patent application for a shoe in 2004. The first Office Action on the merits included two § 1.83(a) drawing objections:

The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the midsole(s) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.The drawings are objected to because the specification states that 824 is a point at 1/2 the length of the shoe, however the point at 824 in figure 14 appears to be clearly in the forefoot portion of the shoe, this is confusing.
(Emphasis added.) 

The originally filed spec referred to a midsole, but did not use a reference number. So the Applicant responded by amending the spec and drawings to add reference number 829. The drawing amendment looked like this:

The Examiner was not satisfied. In the first Final Office Action he maintained the two drawing objections and also indicated that the drawing contained new matter:

These drawings are not entered because they contain new matter, i.e. the thickness, shape, exact location, etc. of the midsole is considered to be new matter.
(Emphasis added.)

The Applicant filed an RCE with claim amendments to address prior art rejections and also argued against the new matter objection. The Applicant addressed the second drawing objection ("824 points to the forefoot") by explaining that line 824 had been "repositioned so that it coincides with the midpoint of the sole." The Applicant traversed the new matter objection by pointing to specific sections of the specification to show support for "midsole."

The Examiner maintained all three objections. Later in prosecution, the Applicant argued that a midsole is known to a POSITA and is thus not new matter:

Moreover, midsoles are well known by those of skill in the art as shown in the various prior art documents submitted by Applicant and cited by the Examiner and as taken by the Examiner as Official Notice, in the Office Action. No unusual features have been attributed to the midsole provided in FIGURE 14 and described in Applicant's specification.
(Emphasis added.)

The Examiner did not respond to this particular argument.

The Applicant filed seven more responses and amendments dealing with prior art rejections before appealing, but no progress was made on the objections. In addition to the prior art rejections, the Appeal Brief addressed the drawing and new matter objections (repeating the arguments already on record).

In the appeal decision (Ex parte Frye), the Board reversed all the prior art rejections. The Board did not reach the drawing and new matter objections. Instead, the Board noted that objections are petitionable matters, and chastised the Applicant for not dealing with this sooner:

In general, since petitions should be made within two months of the mailing date of the action or notice from which relief is requested, 37 C.F.R. § 1.181(f), petitionable matters should be addressed before an appeal reaches the Board. In the present case, it would have been desirable for the Appellant to have resolved the objections to the drawings and refusal to enter proposed drawing amendments by petition prior to the matter reaching the Board.

When the application (with all rejections reversed) was returned to the Examiner, the Examiner issued an Ex parte Quayle Action maintaining the drawing and new matter rejections. The Applicant filed two more responses with the same drawings and the same arguments traversing the objections. Finally, in April 2011, the Applicant filed a Petition on the new matter and drawing objections, and simultaneously filed an RCE (but no claim amendments).

After the petition was filed, but before a petition decision was issued, the Examiner issued another Office Action in response to the RCE. This Office Action maintained the drawing objection but withdrew the new matter objection in favor of an enablement rejection:

The specification and drawings are confusing and inconsistent and therefore do not provide adequate basis to enable one of ordinary skill in the art to make the claimed shoe becuase it is not clear where the location of point 824 is to be located. The specification states "approximately 1/2 the length" however the drawings clearly show such a location to be in the forefoot of the footwear. One of ordinary skill in the art would not be able to determine which location is appropriate for the invention. Also the drawings do not show a midsole and one of ordinary skill in the art would not know what thickness, shape, exact location etc. would be appropriate. Therefore the specification lacks enablement for a midsole or the location of the point which the forward toe section of constant thickness of the insole meets the heel section of the insole with a decreasing thickness.

The Petition, which handled by the Technology Center Director, was dismissed on the grounds that the drawing objection was related to the enablement rejection and thus should be handled by the BPAI:

A review of the record indicates that the drawing objection and claim rejection are directed to the same issues. ...  [T]he correctness of the examiner's drawing objection, resting on the lack of clarity of the claimed the location of point 824 of midsole, is dependent on the correctness' of the examiner's 35 USC 112 first paragraph rejection of claims based on the original specification. It is the policy of the USPTO in appropriate circumstances to decline to rule on a petitionable issue, when, as here, that an issue is also determinative of a  rejection, and as such, is appropriate for consideration on appeal to the BP AI. In this case, the issue in the objection and rejection, as here, additionally and necessarily requires the exercise of technical skill and legal judgment in order to evaluate the facts presented, the issue is properly decided on the merits, and is properly reviewed on appeal, not petition. Under the circumstances, it is believed that the issues presented under the claim rejections and drawing objection in the instant case require the same review by the BPAI. Thus, this issue is appealable and should not be decided by petition.
(Emphasis added.)

On July 5, 2011, the Applicant filed Renewed Petition explaining that the Petition Decision was inconsistent with the BPAI's decision:

The Board invited Applicant to pursue this issue through petition and have this issue addressed before an appeal reaches the Board. The Board is stating that this issue is to be resolved by petition. See Decision on Appeal, page 18, lines 15-21.Thus, Applicant is caught in an endless loop where the issue is passed off from the Board to the Director and now apparently is to be passed backed to the Board which stated that the issue was not within its jurisdiction and thus not appealable. As a result, Applicant respectfully requests the Director to decide this issue pursuant to this Renewed Petition.

 My two cents: Petitions are generally useless to Applicants because a petition doesn't stop the 6-month statutory clock and petition decisions often take months if not years. Not true here, as the decision took only about 6 weeks. This case highlights a second problem with the petition process  – the confusion between issues that are appealable and issues that are petitionable, which can catch the Applicant in "an endless loop" between the two entities.

Technically, there is no endless loop. Technically, the BPAI decision and the Petition decision are not inconsistent, because they were deciding two different issues. The Petition considered an enablement rejection that wasn't present when the Applicant petitioned, because the landscape changed between the time the petition was filed and the time the petition was decided. That is, the Applicant petitioned the new matter and drawing objections (Office Action mailed September 22, 2010), but by the time the petition was decided the new matter objection had disappeared in favor of an enablement rejection (Office Action mailed April 21, 2011).

Still, this mere technicality has huge consequences for the Applicant. If the Director doesn't have mercy on the Applicant in the Renewed Petition, the Applicant is forced into a second appeal, which will take years.

On a comletely different note, the Applicant's behavior here simply baffles me. The Applicant waited seven years to file a petition which should have been filed after the first Final Office Action! Why did the Applicant continue to repeat the same argument over and over and over? Because he thought there was no penalty for doing so? Because he didn't know there was an alternative?

Maybe the Applicant was hoping that the objections would simply go away. I have seen a number of cases go to the Board with objections present, and when the BPAI decided in the Applicant's favor, the Examiner issued a Notice of Allowance. That is, the objection simply disappeared with no comment. But as this case shows, you're in trouble if the Examiner maintains the objection even when the claims are otherwise allowable. So after what happened here in Frye, perhaps Applicants should consider filing petitions more often, at least when it's clear that the Examiner is entrenched in his position.

I also wonder if the Applicant dodged a bullet here by waiting so long to file the petition. Rule 1.181 says that petitions that are not "filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely." It's not clear to me whether the action from which relief is requested is the very first Office Action in which the objection is raised, or whether it's the latest action maintaining the objection. I'd like it to be the latter, since that's more lenient for Applicants. Yet if the two month time period renews every time you get an Office Action, I don't really see the point of a two month time period, since that would allow me to wait (almost) indefinitely to file a petition.

It would have been nice if the Examiner had issued an enablement rejection from the start rather than new matter. The Board would have decided the issue, and that would be that. On the other hand, the Applicant did amend the spec, so this might be one of rare cases where a new matter objection is appropriate. This case illustrates why you don't want to amend the spec to add literal support for your claims: it's easier to appeal an enablement rejection than to petition a new matter rejection.

BPAI ignores Applicant arguments about commercial embodiment when not clear that embodiment actually corresponds to reference

Takeaway: In fighting an anticipation rejection based on a issued patent, the Applicant introduced evidence of a commercial embodiment of the system shown in the reference patent. The Applicant used this evidence to argue that a feature was not present in the anticipatory system. The BPAI discounted the evidence on appeal because the Applicant had not shown that the commercial embodiment described in the product brochure evidence was the same embodiment described in the reference patent.(Ex parte Perchak.)

Details:

Ex parte Perchak
Appeal 2007001607; Appl. 10/242,829; Tech. Center 2800
Decided:  January 8, 2008

The technology on appeal involved an optical lens. A representative claim on appeal read:

     6. An axicon comprising a light transmissive body including a cylindrical outer surface having first and second ends,
     a first light transmitting surface at one end of said body, and
     a second light reflecting surface at the other end of said body from said first light transmitting surface;
     said body being constructed and arranged such that a beam of light received by said light transmitting surface is redirected to said light reflecting surface and
     the light reflecting surface will transform the input beam into an exiting beam comprised of rays differently arranged from the received light rays and exiting the end of the body at the location of the reflecting surface.

The Examiner finally rejected independent claim 6 as being anticipated by the vision correction apparatus in Wrobel, alleging that Wrobel's item 10a included first and second reflecting surfaces having the claimed functional limitations. The Examiner further explained his reasoning as follows:

[R]eflection will occur at the second surface since this surface forms an interface between two media. Such reflection will be directed out through the outer (side) surface of the body. Likewise, due to the reversible nature of optics, light entering through the side of element 10a will be reflected off the conical surface and will exit through the outwardly curved first (left) surface.

In the Appeal Brief, the Applicant argued that a POSITA would understand that the second surface of Wrobel's vision correction apparatus did not reflect. The Applicant explained that stray reflections of a laser beam from an opthmalogical instrument would be "extremely dangerous, and totally unacceptable to ophthalmalogy instrumentation, not to mention various government regulations and insurance requirements."

The Applicant also introduced evidence on appeal to show that Wrobel's vision correction apparatus did not reflect. This evidence was a product brochure which described an alleged commercial embodiment of Wrobel's apparatus. According to the Applicant, "[t]he illustrations and printed description in this Exhibit leave no doubt that this apparatus is based on the Wrobel patent disclosure." The Applicant then used the details in this product brochure to explain how this commercial embodiment allowed for "no possibility for 'reflection' of part of the laser beam in any direction around and outward of the optics."

In the Answer, the Examiner responded to Applicant's evidence as follows:

[T]he claimed article must be distinguished structurally over the prior art and not merely in the manner it is used. ... Appellant argues that additional structure (e.g. a housing) shown in this [brochure] eliminates the possibility of reflection outside of the optics. However, use of any additional structure is not seen to negate the fact that the structural features of the claimed axicon are met by Wrobel.

The Board agreed with the Examiner. The Board found that Wrobels' conical surface is reflective ("in accordance with physical principles"), and that "there is no structural difference between optical element 10a of Wrobel and the axicon defined by claim 6."

The Board discounted Applicant's evidence completely, commenting as follows:

First, it is not at all clear that the MEL 80 Excimer Laser described in the brochure of Exhibit A corresponds to the apparatus of Wrobel, as Appellant asserts (App. Br. 6). The brochure of Exhibit A is devoid of any patent markings, and does not show the optical system in any detail. For example, Exhibit A does not show a system such as that shown in Fig. 3a of Wrobel. We also note that page 13 of Exhibit A states "[n]ot for sale in the United States." Therefore, we do not find Exhibit A to be probative of the issues presented here.

The Board then affirmed the anticipation rejection of independent claim 6.

My two cents: The Applicant's argument was creative. Examiners are allowed to use multiple documents describing the same embodiment in 102 rejection. The Applicant attempted to use multiple documents describing the same embodiment to show the reference did not teach. And it looks like to me the Applicant was on the right track – the Board did not say "you can't introduce evidence related to the reference that is outside the four corners of the reference."

But the Applicant's evidence had some holes in it. The Applicant needed to show that the apparatus in the product brochure was the same as the apparatus in the reference. I'm not sure how often you'll have the proof you need to show this.

The Board wanted similar drawings, but patent drawings are often quite different than product drawings. On the other hand, many products do have patent marking on a product, and the Board's comments suggested this would have been enough. Finally, make sure the reference commercial embodiment is actually prior art. Here, the Applicant tripped up by relying on a commercial embodiment that didn't qualify under either 102(a) or 102(b).

The Board discounted the evidence on substantive grounds, but could have dismissed it on procedural grounds. The rules are clear that you can't include evidence in an Appeal Brief. In cases like this, where the Applicant doesn't realize the evidence is needed until a Final rejection, the rules allow for introducing evidence in an After Final response or even after Notice of Appeal, as long as you show good cause. However, if the Examiner chooses not to enter the evidence, the Board simply won't consider it, and you're forced to fight the issue of non-entry with a petition. 

For an example of a multiple reference 102 in a litigation context, see my post "Public use anticipation allows multiple references that explain how single system functions".