Applicant requests BPAI rehearing and receives new Office Action because Request introduced new evidence

Takeaway: In Ex parte O'Neill, the Board "procedurally reversed" the Examiner's obviousness rejections and instead entered a new ground of rejection for indefiniteness. The Applicant filed a Request for Rehearing by the BPAI under § 41.50(b)(2). The Request included arguments against the new indefiniteness rejection and was accompanied by an expert declaration under § 1.132 to "provide evidentiary support" for these new arguments. However, the BPAI did not act on the Request. Instead, the Examiner responded by issuing a non-final Office Action which included the Board-entered indefiniteness rejection as well as the previously-entered obviousness rejection. The Office Action noted that a Rehearing by the BPAI was not appropriate, since a Rehearing is limited to the same record, while the Applicant had submitted new evidence. 

My two cents: The rules which cover post-appeal processing (37 CFR § 41.50) are complicated, so you should read them carefully when you get a BPAI decision back. A Rehearing by the BPAI is strictly limited to the existing record — unless the Board enters a new ground of rejection, in which case arguments against the new rejection are allowed. But new evidence supporting those arguments is not allowed in a Rehearing.

BPAI reverses § 102(b) rejection because reference did not show sale or use in United States

Takeaway: The BPAI reversed an anticipation rejection under the "use or sale" prong of § 102(b) because neither the press release nor the related online article established use or sale of the game controller in the US.  The fact that the press release stated that the game controller could be used with game titles that were available in the US did not establish that the controller was actually used in the US. (Ex parte Kislevitz, BPAI 2011.)

Details:
Ex parte Kislevitz
Appeal 2009009637; Appl. No. 10/770,344; Tech. Center 3700
Decided  January 18, 2011

The sole independent claim on appeal read:

1. A hand-held controller configured to control an operation of an amusement device,
   the controller comprising a multi-part housing including at least a left-hand grip portion and a righthand grip portion,
   wherein the left-hand grip portion and the right-hand grip portion are substantially the same size and are pivotable with respect to each other to control the operation of the amusement device.

On appeal, the independent claim stood rejected as anticipated under § 102(b) by a press release describing a game controller called the NeGcon. The press release read, in its entirety:

NeGcon Goes Black:
The NeGcon, Namco's analog controller, will be rereleased in a brand-new color.
By Yutaka Ohbuchi, GameSpot / Posted Mar 6, 1998 4: 19 pm PT
      On April 29, Namco will rerelease its NeGcon analog controller,which is used for racing titles like Rage Racer, Wipeout XL, and Ace Combat. It has the same features as the previous version, but it is smaller in size than the original and has a lower price (2,980 yen compared with the older 4,980-yen price tag). It's currently not know whether this new NeGcon color will be released in the US.

The same anticipation rejection also relied on an online publication, the Twist article, as "evidence" of various features included in the NeGcon.

In the Appeal Brief, the Applicant first argued that the press release was not prior art under the § 102(b) public use or sale prong, since the press release referred to Japan rather than the US. The Applicant then argued that even if the press release was treated as prior art under the printed publication prong, the press release did not disclose any of the claimed elements, since the only feature mentioned was the color. The Applicant further argued that the Twist article did not establish use or sale in the US because the article did not identify the location of the toy store where the author found a NeGcon controller in 1996.

In the Answer, the Examiner clarified that "the first [press release] reference was used to establish the simple fact the reference was released prior to the filing" and that "the second reference was provided to establish the structure and features of the controller." The Examiner then replied to points raised in the Appeal Brief:

However the applicant refuses to agree the article is evidence of the original NeGcon was in public use or sale in the United States. The Examiner is amazed by this argument when the article clearly states the controller is used for racing titles such as Rage Racer, Wipeout XL & Ace Combat which are video games that were on sale & in the public at the time.
...
The picture below was disclosed by the second reference [(Twist article)] and clearly demonstrates the twisting or pivotable motion with respect to the left and right portion that the NeGcon is capable of performing. However the applicant refuses to believe the reference since the blogger posted the article after the applicant's filling date. Furthermore, the applicant refuses to believe the picture below is the original NeGcon the first reference mentions, even though the controllers labels: Namco, NeGcon and PlayStation are clearly visible in the picture.

The Applicant filed a Reply Brief to respond to various points in the Examiner's Answer:

   The Examiner relies on the identification of certain video games (Rage Racer, WipeOutXL, and Ace Combat) in the GameSpot article as proof the NeGcon controller was also on sale in the U.S. But the Examiner conveniently ignores the fact that NONE of these games REQUIRED the use of a Namco NeGcon controller (or that he has failed to even prove the games themselves to have been on sale or in public use in the U.S. before the critical date). ...
   Applicants have not argued that the controllers shown in the various pictures [in the Twist article] are in some way mislabeled. What applicants argue is regardless of what is shown, the article does not prove that a Namco NeGcon controller was on sale or in public use in the United States prior to the February 2, 2003, 102(b) bar date. The article is dated 2007. The identity and location of author and those of the "local toy store" referred to in the Twist article are not identified and are simply unknown.

The Applicant then concluded the Reply Brief argument as follows:

The mere fact that people today in the United States are familiar with certain items is not proof that any of those items were on sale or in use in the United States before a specific date. The mere fact that some items might have been available or in use in the United States before the specific date is not proof that another article that might be optionally used with such item(s) was also on sale or in public use in the United States before that specific date. Finally, the mere fact that something is described in English on the internet is not proof that whatever is being described is occurring or has occurred or exists or has existed in the United States.

The Board reversed the anticipation rejection, finding that neither the press release nor the Twist article showed public use or sale in the US. With regard to the press release reference, the Board noted that the press release did not explicitly refer to sale in the US, and that a price expressed in yen suggests that the controller was expected to go on sale in Japan. Furthermore, mentioning that "the controller may be used for certain enumerated racing titles does not establish such use was within the United States." The Board further found that "while the [Twist reference] states that the author (unnamed) found a controller 'at a local toy store' in 1996, nothing in the reference establishes the location of that toy store as being within the United States."

My two cents: Looks to me like the Examiner got a little too fancy here with his rejection, without properly understanding the use/sale prong. Perhaps the Examiner was simply unfamiliar with the fine points of the use/sale rejection because they're relatively rare in prosecution. I don't see many of them on appeal. And those that I do see tend to be in reexamination, which is handled by a special reexam art unit.

I thought the Applicant did a great job in arguing, and in responding to each of the Examiner's points. Maybe the Board would have reversed even without such compelling arguments, because the Examiner's arguments were weak. But why rely on the Board to find these weaknesses – point them out yourself.

I notice that the Board didn't comment on the propriety of the Examiner combining multiple references into a single § 102, with the "Twist" article being used as "evidence" of NeGcon features. I suppose the Board didn't need to reach this question, since even when considered together the two references didn't show use or sale in the US.

BPAI considers competing definitions and chooses Examiner's because Applicant didn't explain why unreasonable

Takeaway:  When both the Examiner and the Applicant presented a definition for "laminate," the BPAI accepted the Examiner's definition. "The Examiner’s claim interpretation is not inconsistent with Appellant’s Specification, and Appellant provides us with no argument as to why the Examiner is unreasonable in adopting a general dictionary definition of the term. Rather, Appellant merely provides us with a dueling definition ..." (Ex parte Hageman, BPAI 2010)

Details:
Ex parte Hageman
Appeal 2009013454; App. No. 10/864,225; Tech. Center 3600
Decided August 11, 2011


This application was directed to roofing material. A representative claim on appeal read:

12. A roof comprising:
   a deck; and
   a laminate of a metal layer, a core layer and a plastic layer overlying said deck with the metal layer being on one side of the core layer and the plastic layer being on an opposite side; and
   a roof covering over the laminate.

The underlying issue was the interpretation of the claim term "laminate."

During prosecution, the Examiner rejected the claim as being anticipated. When the Applicant argued that the three layers in the reference were not a "laminate," the Examiner maintained the rejection, went final, and responded as follows:

A laminate is a layered structure in which the layers are fastened together by a fastening means. The Hageman prior art has a metal, core and plastic layer fastened (via 39) together in the exact arrangement that is claimed within the application.

In an After Final response, the Applicant argued that the Examiner's definition was wrong, and presented a dictionary definition:

The Examiner['s definition] is wrong. A laminate is "a sheet of material made by bonding two or more sheets or layers." (WordNetB 3.0, C 2006 by Princeton University). Thus, it is not merely sufficient that the layers be fastened to together they must be bonded together. The insulation layer 26 is clearly not bonded to the laminate of the metal 24 and the fabric 26 and thus the metal 24, the fabric 26 and the insulation layer 22 together do constitute a laminate; instead, as clearly disclosed in Hageman, only the metal and fabric layers constitute the laminate.

In an Advisory Action, the Examiner presented his own dictionary definition, from Webster's II New College Dictionary, Third Edition: "1) to make by joining several layers; 2) to split into thin layers; and 3) to
press or form into a thin sheet."

The Applicant appealed, and presented the same argument about the meaning of "laminate." In the Answer, the Examiner criticized the Applicant's definition because it wasn't in the specification:

The examiner also contends that if a specific definition of laminate was sought after by the applicant, it should be found within the claim language or the original specification, which it was not. Consequently, if the applicant's specific, sought after definition of laminate were to be instantly added into the claim or specification, it would constitute new matter.

The Board then found the Examiner's definition of "laminate" was reasonable:

... in light of the acceptable, broader general dictionary definitions [presented by the Examiner] and the lack of any further specific definition of the term in Appellant’s claim language or Specification. The Examiner’s claim interpretation is not inconsistent with Appellant’s Specification, and Appellant provides us with no argument as to why the Examiner is unreasonable in adopting a general dictionary definition of the term. Rather, Appellant merely provides us with a dueling definition without any convincing explanation or reason as to why we should choose this narrower definition in light of the Office’s claim construction practice of adopting the broadest reasonable construction when viewed in light of Appellant’s Specification.

The Board then noted there was no dispute that the reference disclosed that the three layers were attached by mechanical fasteners such as screws or nails. Thus, the reference anticipated under the broadest reasonable interpretation.


My two cents: The Board seems to be saying that presenting your own definition of a claim term isn't enough when the Examiner also presents one – that you you need to explain why your narrower definition is nonetheless the broadest reasonable one. That is, the Board seems to give the Examiner's definition the presumption of Broadest Reasonable Interpretation, leaving it to the Applicant to overcome that presumption. I've not seen this before. Why didn't the Board act as fact finder and determine which definition was correct?

I note both parties used layman's dictionaries. Maybe a technical dictionary would have helped. I did a quick web search, and found several technical definitions that were similar to the general dictionary definition provided by the Applicant. Is a definition from a technical dictionary more relevant than one from a general dictionary?

Even without a definition from a technical dictionary, maybe you could tie the definition to the field of the invention, or to "the art". But what is the relevant field/art here? Roofing? Materials science? This particular application didn't have a lot of jargon, and seemed like it could be understood by a layman. Does that say that a specialized dictionary definition is inappropriate?

Moving away from the issue of what definition to use, and to the related topic of when to introduce them ... The Examiner's Answer suggested that if "a specific definition of laminate was sought after by the applicant, it should be found within the claim language or the original specification." I agree that this is a good idea if the Applicant's overriding concern is getting allowed claims as soon as possible. Because doing so should force the Examiner to interpret the claim as the Applicant intended.

But this approach is extremely impractical, since then every single term in the claim would the require a definition ... deck; laminate; layer; core; metal; plastic; side; opposite; roof. Each of those terms can and probably will be interpreted by the PTO in a way that Applicant didn't intend. Rather than narrowing my claims at filing by providing all these definitions, I'd rather wait until prosecution and argue about the meaning of those particular terms that are at issue. You can always introduce evidence during prosecution about the meaning of a particular claim term. 

BPAI reverses when Examiner fails to provide any reason whatsoever to combine

Takeaway: In Ex parte Kucharczyk, the BPAI reversed an obviousness rejection because the Examiner failed to provide any reason whatsoever to combine.

Details:

Ex parte Kucharczyk
Appeal 2010002564; Appl. No. 10/444,884; Tech. Center 3700
Decided:  August 15, 2011

A representative claim on appeal read:

   21. A cell delivery catheter system for delivering and positioning cells in a patient’s body, comprising:
   a catheter body having a proximal end and a distal end, said catheter body defining a central
axis;
   a plurality of optical fibers embedded within the catheter body or placed upon its outer or inner surface for conveying illumination to and optical signals from the target tissues;
   a cell delivery barrel located within said catheter body having a distal aperture;
   lumens surrounding the cell delivery barrel for delivery of said cells; the cell delivery barrel having a volume to carry and deliver cells within said volume, and
   a source of fluid coupled to said cell delivery barrel for ejecting said cells from said cell delivery barrel under the control of the user. 

The Examiner rejected both independent claims as obvious. The Examiner relied on a primary reference, March, for teaching everything except the limitation "conveying illumination to and optical signals from the target tissues." The Examiner relied on a secondary reference, Lemelson, for teaching the illumination limitation, and explained the combination as follows:

   March does not teach that the optical fibers are used to convey illumination to and optical signals from the target tissues. March's optical fibers are instead used to ablate tissue.
   Lemelson teaches a catheter with embedded optical fibers that are used for conveying illumination to and optical signals from target tissues. " ... light directed along and from the end of light pipe 22 is reflected through fluid, such as body liquid existing in cavity 16 and is modulated by the physical and chemical contents of such body fluid, causing variations in the content of such light, which variations may be detected by one or more techniques including computerized signal analysis of the electrical signals generated when the modulated light is converted to electrical signals. Furthermore, such received light may also be spectrographically analyzed to permit the light passing through the fluid sample to detect both physical and chemical variables present in the fluid being scanned thereby". Lemelson discloses that his device is capable of use with "medical materials" dispensers. Lemelson discusses using his catheter for cytometry.
(Emphasis added. Internal citations omitted.)

On appeal, the Applicant argued that March did not teach several elements. The Applicant also argued that Lemelson did not make up for the deficiencies in March:

The disclosure of Lemelson does absolutely nothing to advance the teachings of March nor to overcome the deficiencies of March by suggestion modification of the structure of March to meet the limitations of these claims. Lemelson is, in fact, nearly identical in subject matter disclosure to that of March. Lemelsons "medicinal materials" (a term selected in the rejection to imply a teaching far broader than that actually enabled by Lemelson) are again molecular materials. At no time does Lemelson suggest "delivery of cells," structure in the underlying device for delivery of cells, or any other function or structure that has been clearly shown to be absent from the teachings of March.

In the Answer, the Examiner clarified his position on several teachings in March, and also indicated that "Lemelson is only used to teach the function of the optical fibers." 

The Board summarily reversed, finding that the Examiner's rejection was "devoid of an articulation of some reason with some rational underpinning to support the legal conclusion of obviousness." 


My two cents: One failure, followed by two huge failures, followed by a correction.

Failure one: the conference of Examiners who signed off on the Answer and let this go to appeal. Failure two: the Applicant, who didn't even point out this glaring mistake – not during prosecution and not on appeal. It's great the Board corrected the error by reversing the rejection – but this was a ridiculous waste of everyone's time. Let's keep our fingers crossed that this case gets allowed instead of having prosecution reopened after reversal.

I look for a weakness in reason-to-combine every time I get an obviousness rejection. If the Examiner offers a weak reason – an advantage that doesn't exist, an advantage that isn't an advantage, a rationale that just doesn't fit the facts – then I'll attack it. So you'd better believe that I'd be all over a complete omission like this one.Sure, the Board may backfill to make up the deficiencies in the Examiner's position, and maybe I'll lose if that happens. But I'll give it my best shot.

By the way, the two sentences I quoted – Lemelson discloses use with medical materials dispensers and  use of the catheter for cytometry – were the only sentences that were in any way related to reason-to-combine. And these two sentences amount to nothing more than an assertion that the references were analogous art.

Upcoming IP CLE in Chicago

The Association of Intellectual Property Firms (AIPF) has an upcoming CLE program in Chicago, "Enhancing IP Rights in a Time of Erosion." The one-and-a-half day program offers 10 hours of CLE, including 1 hour of ethics. The program will be September 19 & 20, 2011 at the W City Center in Chicago.

The program will include a mix of speakers from law firm and corporate practice, covering both substantive law and practice management topics. Some of the topics are: 

• Maintaining Your Brand of Excellence in IP (Philip S. Johnson, Johnson & Johnson)
• Corporate IP Trends in Light of the Recession and Evolving Case Law (Clifton G. Green, Whirlpool Corporation; Kurt Van Thomme, invited, Pioneer Hi-Bred International Inc.)
• IP at Goodyear (Bruce J. Hendricks, The Goodyear Tire & Rubber Company)
• Strength of IP Rights Outside the US
• Top Case Review
• E-lawyering
• Marketing, Brand Building and Social Media for Attorneys
• Legal Project Management

I've been involved in planning this conference, and I hope to see some of you there. Registration and hotel information is available at http://aipf.com/annual-meetings/2011-annual-meeting/.

BPAI affirms obviousness when Applicant admits "probably enough routines in the 600 page reference to build the system of the invention"

Takeaway: In Ex parte Daks, the Applicant appealed an obviousness rejection using a 600 page user manual as a primary reference. The Applicant acknowledged the breadth of teachings in the reference: "Admittedly, there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built." But the Applicant argued that these teachings were too general, and did not provide a POSITA "with the specific guidance necessary to combine the diverse [features in the reference] to develop Applicant's claimed invention." The Board used the admission to affirm the obviousness rejection. "We find no error with the Examiner’s conclusion that, in view of Appellants’ admission that all claimed limitations are taught by Project, one of ordinary skill in the art would have found it obvious to apply the claimed limitations.

Details:
Ex parte Daks
Appeal 2009007621; Appl. No. 09/966,004; Tech. Center 2100
Decided  March 11, 2011

The application involved software for tracking development. of software products. A representative claim on appeal read:

   8. A method for tracking the development of software products having a plurality of developmental lines on a computer controlled display comprising:
     setting in each of said plurality of developmental lines, a sequence of checkpoints;
     tracking each of said developmental lines to determine the reached checkpoints; and
     simultaneously displaying said plurality of developmental lines and indicating said reached checkpoints.

During prosecution, the Examiner rejected the independent claims as obvious over the book "Using Microsoft Project 98" in view of a U.S. patent to Song. The Examiner relied on the Microsoft Project book for everything except "plurality of developmental lines." The Examiner then alleged that Song disclosed defining checkpoints for "components or developmental lines" during project execution. The Examiner further alleged that the motivation to combine was the book's teaching of "organizing a project activity or task list into phases."

The Applicant appealed, and in the Appeal Brief argued that the combined references did not disclose simultaneous display of multiple developmental lines. The Applicant acknowledged that Project 98 described a planning tool which simultaneous displayed tasks at the same level in a task hierarchy, but argued that these teachings about task hierarchies are "too vague and unspecific to lead one skilled in the art" to apply them to developmental lines.

The Applicant also argued that the Examiner used hindsight to piece together a rejection from general teachings in a 600 page user guide:

The Examiner has cited sections from the large publication. The Project text does provide a user with software tools for the management of business or manufacturing projects including scheduling, assignment of tasks, allocating resources, and even bench marking which for the purpose of this discussion will be considered as check pointing. The Examiner has picked general elements from the Project text book and proposed combining such general elements, not based upon any suggestion the Project text, but based primarily on Applicants' own teaching. Admittedly, there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built. However, Applicants submit that the cited Project text does not provide one skilled in the art with the specific guidance necessary to combine the diverse tools and routines in Project to develop Applicants' claimed invention.
(Emphasis added.)

 In the Answer, the Examiner revised the rejection to explain that Song was "largely cumulative to the evidence contained in Project." The Examiner then explained how the teachings in "Using Project 98" about tasks corresponded to simultaneous display of multiple developmental lines:

The additional cited teachings of Project shown that has been known to break up large projects into separate phases of functional groups, which form tasks that are individually managed as part of overall project management. These separate tasks and associated resources may be considered developmental lines. .... Project further describes simultaneous display of multiple tasks in the Gantt chart and displaying multiple milestones.
(Internal citations omitted.)

The Examiner attacked the hindsight argument by noting that:

[E]verything disclosed in the Project reference pertains to features found in a single software product, namely the Microsoft Project 98 software product. Thus, the elements of the Project reference relied upon were not combined based on applicant's own teachings through impermissible hindsight as applicant alleges but were instead already combined (by Microsoft Corporation) prior to applicant's filing date.
(Emphasis added.)

The Examiner then seized upon a statement made by the Applicant in the Appeal Brief:

Appellants' admission that, "there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built," is itself an apparent concession that the claimed invention would have been obvious in view of the Microsoft Project 98 software product described in the Project reference.
(Emphasis added.)

The Applicant filed a Reply Brief attacking the motivation to combine. Even if "each of the individual elements could be found in the 600 page Project 98 reference," the Examiner "has failed to show any teaching in this reference that the individual elements could be combined."

The Board affirmed the obviousness rejection. The affirmance appeared to be at least partly based on the Applicant's admission in the Appeal Brief:

We agree with the Examiner that “[A]ppellants’ admission … is itself an apparent concession that the claimed invention would have been obvious in view of the Microsoft Project 98 software product described in the Project reference” That is, we find no error with the Examiner’s conclusion that, in view of Appellants’ admission that all claimed limitations are taught by Project, one of ordinary skill in the art would have found it obvious to apply the claimed limitations.
(Emphasis added.)

The Board also noted that the KSR rationale "combination of familiar elements according to known methods ... [to] yield predictable results" was applicable here: a POSITA "would have found it obvious to combine Project’s teaching of tracking and displaying of project development with Song’s teaching of tracking and displaying software development."

My two cents: Everything you say can and will be used against you. Not just in litigation, but as this case shows, also during prosecution.

The Applicant's main focus was "not enough reason to combine these disparate teachings from a really big reference" rather than on the specific elements. And I think the damaging statement made by the Applicant was simply meant to highlight the lack of reason to combine. But the Applicant shot himself in the foot by making what comes very close to an explicit admission that all the elements were taught.

Was it an admission? The only thing that keeps the statement from being a bright line admission is the qualifier "probably." I would have qualified more carefully, with "even if" or "assuming for the sake of argument."

Actually, I wouldn't have made the statement in the first place. While the statement may be an attempt to bolster the no-motivation argument, it does so at the expense of does-not-teach. And we all know that does-not-teach, rather than no-reason-to-combine, is your best chance of winning an obviousness argument.

BPAI uses dependent claim to find independent claim to be indefinite

Takeaway: In a case involving chemical compounds in a transistor structure, the BPAI used a dependent claim to enter a new indefiniteness rejection for the independent claim. The Board found that both the Applicant's claim construction and the Examiner's were plausible, leading to an indefiniteness rejection under Ex parte Miyazaki. The Board noted that the Applicant's claim construction argument for the independent claim appeared to be at odds with the limitations in a dependent claim. (Ex parte Hoffman.)

Details:

Ex parte Hoffman
Appeal 2009008056; Appl. No. 10/799,961; Tech. Center 2800
Decided  July 27, 2011

The technology in this application involved the structure of a transistor. A representative independent claim on appeal read:

l. A semiconductor device, comprising:
   a drain electrode;
   a source electrode;
   a channel contacting the drain electrode and the source electrode,
   wherein the channel includes one or more compounds of the formula AxBxOx, 
   wherein the one or more compounds of the formula AxBxOx includes one or more of gallium-germanium oxide, gallium-tin oxide, gallium-lead oxide, indium-germanium oxide, indium-lead oxide, each O is atomic oxygen,
   where each x is a non-zero number, but the value of “x” for each constituent element may be different,
   wherein the channel includes one of an amorphous form and a mixed-phase crystalline form; and a gate dielectric positioned between a gate electrode and the channel.

On appeal, all claims were rejected as obvious. One of the underlying issue was the interpretation of the limitation "compounds of the formula AxBxOx." Citing Ex parte Davis (CCPA 1948), the Examiner took the position that the transition "comprising" meant that the "limitations are open-ended and the compounds (AxBxOx) referred to therein can contain other elements." This interpretation read on compounds of the form AxCxBxOx, so that the gallium-indium-tin oxide (indium = C) disclosed in the primary reference read on the claimed compound.

In the Appeal Brief, the Applicant acknowledged that "comprising" leaves the claim open to unrecited elements. But the Applicant also argued that: 

The term "comprising" does not mean that the Examiner can alter or disregard the elements specifically recited. ... [and] does not license the Examiner to change or add to the chemical compounds specifically and expressly recited.

In the Answer, the Examiner buttressed his claim interpretation by referring to various claims depending from claim 1. Dependent claim 6 read “wherein the one or more compounds of the formula AxBxOx includes Cx to form a compound of the formula AxBxCxOx.” In order for claim 1 to be broader than claim 6, the “formula AxBxOx” limitation must encompass the claim 6 compound AxBxCxOx, and therefore the formula limitation must be open-ended.

The Applicant filed a Reply Brief and continued to argue against the Examiner's claim interpretation. The Applicant discussed the precedent related on by the Examiner: 

[Ex parte Davis] does hold that a the term "comprising" leaves a claim open for the inclusion of additional recited elements. It is, however, a complete mischaracterization of Davis to argue that Davis holds that each limitation is individually open-ended, such that the recitation of a particular chemical compound can be essentially ignored and transfigured into a recitation of any compound comprising the recited and additional constituents. Such an unreasonable interpretation would make it unreasonably difficult for an applicant to specify precisely the desired chemical compounds to be recited in a claim. The Examiner's interpretation of Davis is unreasonable, unworkable and utterly without supporting authority!

The Board reversed the obviousness rejections on grounds other than claim construction. Specifically, the Board found no reason to replace the semiconducting indium-tin oxide in the channel layer of the primary reference with the highly conductive transparent conducting materials of the second reference.

However, the Board did address the claim construction issue in another way: by finding that independent claim 1 was amenable to two plausible interpretations and thus indefinite under Ex parte Miyazaki.

[T]he claim 1 term of “compounds of the formula AxBxOx” is amenable to two or more plausible claim constructions (i.e., one being open ended as argued by Appellants and one being closed-ended as presented by the Examiner), thereby justifying requiring Appellants to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. See Miyazaki, 89 USPQ2d at 1211.

My two cents: I don't do chemical cases, so I won't say which claim interpretation is the best one. But – still speaking as a person NOT skilled in the chemical arts – the arguments offered on both sides seem reasonable. Based on that, I'm inclined to agree with the Board's indefiniteness rejection under Miyazaki. On the other hand, I'm not sure "reasonable" is the same as "plausible." And I just don't know enough about chemical practice to say if both are plausible or not.

I wonder if another theme underlying the indefiniteness rejection was the "confusion" caused by the dependent claim. I say that because the Applicant seemed to have the better argument about the use of comprising. Remember, " 'comprising' is not a weasel word with which to abrogate claim limitations." Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed.Cir.1998). Would the indefiniteness rejection have been avoided if the dependent claim wasn't there to confuse things?

I noticed that several other dependent claims used the same format. For example, claim 10 dependent from claim 6 and read "the one or more compounds of the form AxBxCxOx. includes Dx to form a compound of the formula AxBxCxDxOx." So it appears that this claim format was intentional.

BPAI gives expert testimony little weight, for discussing state of the art before filing date and admitting no knowledge of reference before litigation

Takeaway: In an appeal from an ex parte reexamination, the patentee submitted a number of expert depositions from related litigation in support of various non-obviousness arguments.  In affirming the Examiner's obviousness rejections, the BPAI suggested that the expert testimony was not probative because the testimony related to the state of the art at a time well before the filing date. The BPAI also suggested that the testimony had little value because the experts admitted they were not even aware of the prior art systems at the time of filing. (Ex parte Baxter International, Inc., BPAI 2010.)

Details:

Ex parte Baxter International, Inc.
Informative Opinion
Appeal 2009006493; Reexamination No. 90/007,751; Patent 5,247,4341; Tech. Center 3900
Decided  March 18, 2010


This was an appeal in an ex parte reexam. The patent relates to a touch screen user interface for a  kidney dialysis machine. A representative claim on appeal read:

12. In a method of operating a hemodialysis machine, an improvement in a user/machine interfacing process, the improvement comprising:
   (a) providing a touch screen operably coupled to the machine, the touch screen adapted to display an indicium soliciting a user of the machine to touch a region on the screen so as to select a machine-operation parameter;
   (b) touching the region to select the machine operation parameter;
   (c) in response to said touching, invoking on the screen a data-entry display associated with the machine-operation parameter, the data entry display including a display of a permissibly settable range of the machine-operation parameter, so as to allow the user to select and enter a parametric value associated with the machine-operation parameter within said range; and
   (d) touching the data-entry display to select and enter the parametric value so as to cause the machine to operate in conformance with the selected machine-operation parameter and the entered parametric value.

During the reexam, the Examiner rejected the claims as obvious. As a primary reference, the Examiner used "the CMS08 Handbook," a manual for a dialysis machine which used a control panel for input and a screen for display. As a secondary reference, the Examiner used a "SARNs 9000" manual describing a blood perfusion machine with a touch screen that supported both input and display. In response to the rejection, the patentee put forth various arguments of non-obviousness, and included various depositions from a related litigation to support some of these arguments.

The patentee made a number of arguments in the Appeal Brief. One of the arguments attacked the prima facie case of obviousness by explaining why a POSITA would not combine the asserted references. The patentee used the litigation depositions to provide factual support for this argument. For example:

   Finally, the Patent Owner maintains that an ordinary artisan in the field of hemodialysis would not have looked to the cardio-pulmonary bypass (CPB) field for help in solving the problems of traditional user control of hemodialysis function. Baxter (the Patent Owner) and Fresenius (the Reexamination Requestor) are the two largest dialysis companies in the world. In the nearly five-year litigation surrounding these patents, almost sixty depositions were taken, including all of the named inventors, key present and past R&D personnel for both companies, numerous senior marketing executives, nephrologists, and other third-party witnesses in the dialysis field. It is hard to imagine a more representative sample of those "skilled in the art." Yet not a single witness from either Baxter or Fresenius had even heard of the Sarns machine. This fact speaks volumes about whether one of ordinary skill in the art of hemodialysis machines would have looked to the cardio-pulmonary bypass field for inspiration or problem-solving help.
   As Dr. Lee Henderson, Baxter's expert consultant in hemodialysis and nephrology, points out in his expert report: "Based on my experience during the relevant time, there was very little, if any, technical exchange between engineers designing HD equipment and those designing heart-lung machines."
(Emphasis added, internal citations omitted.)

In the Answer, the Examiner treated the patentee's "POSITA would not combine" argument as a non-analogous art argument:

   Appellants argue that testimony of Dr. Dennis Brunner and Lee Henderson supports the contention that the artisan would not have knowledge, awareness nor would have looked to the prior art in design of a touch screen hernodialysis device. Such testimony, while expert opinion is an argument akin to an assertion that the references are non-analogous art. These arguments are non-persuasive [because] the substantive issue here is more basic. The artisan already possessed functional hemodialysis devices [the CMS08] with suitable controls, guidance to selectable variables and alarm limits. ... The issue before the artisan was clearly more simple, related to the ease with which the user might analyze and effect a change in certain hemodialysis parameters. The issue comes down to one of programming, and whether the artisan would be guided to the art accepted input/output device of a touch screen to effect such parameter changes.

The Board affirmed all of the Examiner's obviousness rejections. After making various findings of fact about the teachings of the references, the Board concluded that:

[T]he collective teachings of the applied prior art references would have prompted a person of ordinary skill in the art to couple a touch screen interface with a hemodialysis machine. ... The interrelatedness of the prior art teachings, coupled with the expectation that a technique used to improve one device would also improve other similar devices, amply support the Examiner’s obviousness conclusion. KSR, 550 U.S. at 417-18.

In discussing the patentee's rebuttal evidence, the Board noted that the expert testimony was not credible because it focused on the wrong time period.

We also find no error in the Examiner’s refusal to credit the testimonies of certain experts as supporting Appellant’s skepticism or lack of a reasonable expectation of success argument. As pointed out by the Examiner, these experts testified on the knowledge of a person of ordinary skill in the art at a time period significantly before the relevant filing date. We have not been directed to any evidence indicating that further advances in touch screen technology did not occur up to the relevant filing date. 

The Board also discounted the expert evidence because it failed to take into account the teachings of the asserted references:

Moreover, we have not been directed to any evidence that these witnesses, before giving their testimonies, considered the teachings of the applied prior art references, which plainly disclose the successful incorporation of touch screen interfaces into critical medical systems. Indeed, Appellant has admitted that “not a single witness from either Baxter or Fresenius had even heard of the [prior art] Sarns machine.” That admission reveals the lack of any substantial value in the relied upon evidence vis-a-vis Appellant’s argument.

Postscript: The patentee has appealed the BPAI decision to the Federal Circuit.

Other Blog Coverage: The BPAI marked this decision "Informative," but I've no reason to think this status has anything to do with the issues discussed here. Several other bloggers have said the Informative status is due to the BPAI's discussion of the differing standards of validity applied to reexam and litigation.

See "District Court Analysis v. PTO Reexamination Analysis" at Patents Post-Grant and "BPAI Informative Opinion Underscores Different Validity Standards for Reexams" at The 271 Patent Blog.

For an explanation of precedential, informative and routine status, see my post "Meaning of BPAI Precedential and Informative Opinions."

My two cents: The Board's point about the time period considered by the experts is well taken. That is, the viewpoint for non-obviousness is the time of filing, so whether or not POSITAs would have used touch screens a full five years before filing is not very probative. Remember that when gathering your rebuttal evidence.

On the other hand, the Board took a cheap shot with the quote "not a single witness had even heard of [the prior art] Sarns machine." The evidence in question was not submitted for the purpose of distinguishing the reference. Instead, the evidence was submitted as a factual statement about why an actual person in the art did not look to prior art like the Sarns machine – because that person simply didn't think of perfusion machines when addressing a problem with a dialysis machine. So why is it a big deal that the witness was unaware of the Sarns perfusion machine?

Perhaps the Board is making a bigger point: that anyone involved in designing user interfaces for dialysis machines who isn't familiar with the touch screen interface on the Sarns perfusion machine isn't a true POSITA? If so, I'd like to hear an explanation of why the Board thinks that is the case.

The patentee offered evidence from real people involved in product development. Is the law even interested in what actual persons in the art did or didn't do, looked at or didn't look at? I appreciate that obviousness is from the viewpoint of a hypothetical POSITA. But what's wrong with using real POSITAs to inform our understanding of the hypothetical POSITA?

Sure, there may be concerns about the credibility of POSITA testimony when the POSITA has a connection to the patentee or applicant. Fair enough. The fact finder can take that into account.

But suppose you had 100 disinterested POSITAs say "I wouldn't have combined A with B and here's why." Do you ignore that information because we're only interested in what hypothetical POSITAs would do, rather than what real ones would do? Or, in the case of Baxter, did not do (look to perfusion machines).

Related Posts: I'll be doing another post about Ex parte Baxter that discusses the "skepticism of experts" doctrine in more detail.  The Board didn't have much to say about the merits of this argument (only about the credibility of the testimony), but the Examiner's comments are worth discussing.