Monday, July 4, 2011

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.)


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".


  1. I agree that there was insufficient evidence tying the commercial embodiment to the patent. A declaration from the assignee of the patent or the company producing the commercial embodiment would have been ideal though probably not actually obtainable in the "real world." Applicant had some good bits and pieces but not enough connecting them together.

    One basis for introducing new evidence into the appeal brief that worked for me was where the examiner made a new argument in her advisory action.

  2. Still, entry/non-entry of evidence submitted with an appeal brief is within the province of the examiner, not the board.

  3. Let's be clear, if the evidence is submitted with the notice of appeal, then rule 41.33(d) doesn't control. If the rejection is final, then rule 1.116 controls. If the rejection is not final, then rule 1.116 probably still controls, but that makes less sense to me (bc 116 is directed to final rejections).

    The Examiner doesn't have unlimited to discretion to enter or not enter evidence in those situations. He's bound both by rule 41.33d (if filed after NOAppeal) or rule 116 (if final before or with NOAppeal). 41.33d is almost impossible to satisfy. But rule 116 gives the examiner much less discretion. For example, if your appeal is in response to an Office Action raising new rejections, then you have shown, almost per se, good cause for not submitting the evidence earlier.

  4. "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."

    yeah they didn't say that, but they probably should have. You can of course introduce evidence as to what a person of skill would understand the original reference to be saying.

    "Finally, make sure the reference commercial embodiment is actually prior art."

    I don't know if this is technically necessary. Just like you can present expert testimony after the fact, you can present evidence dated after the filing date that would indicate how one of skill would have interpreted the original reference. I would think anyway.

    "and you're forced to fight the issue of non-entry with a petition. "

    Gl with that. PTA better be very valuable to you.