Monday, August 22, 2011

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. 




22 comments:

  1. "Finally, the Examiner was dead wrong when he said 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." The BPAI has always allowed definitions to be introduced into evidence during prosecution as evidence of a term's meaning. "

    Lulz Karen he didn't say anything about not being able to introduce evidence. He merely stated what the applicant should have done from the get go, which, coincidentally is the correct course of action if you want your terms all narrowly interpreted.

    Still this guy could have won if he had a decent lawltard.

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  2. "Lulz Karen he didn't say anything about not being able to introduce evidence. He merely stated what the applicant should have done from the get go, which, coincidentally is the correct course of action if you want your terms all narrowly interpreted."

    6 -- materials is close enough to your art, and you should know that a laminate is not simply a bunch of materials stacked one on top of another with a nail driven through them. Specifications are written for those skilled in the art, not examntards whose use of the phrase broadest reasonable interpretation stops at broadest.

    From McGraw-Hills Dictionary of Scientific and Technial Terms.

    Laminate -- "sheet of material made of several different bonded layers.

    6 aren't you the one who has been bemoaning the length of patents? Complaining that the patents of yesteryear were so much shorter? However, this isn't the first time I've seen you advocate for putting MORE disclosure into a patent. Yet another reason why we don't respect you -- your positions are consistent.

    You are like a politician -- if the other side likes it, you hate it ... if the other side hates it, you like it ... regardless of whether or not it corresponds to your philosophy.

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  3. >[Examiner] merely stated what the applicant
    >should have done from the get go

    I see your point. I revised my post accordingly.

    >which, coincidentally is the correct
    >course of action if you want your terms
    >all narrowly interpreted.

    I don't want my terms *narrowly* interpreted, which is what adding a definition would do. I want my terms interpreted narrowly enough to distinguish over the prior art. Until I know what references the Examiner will cite, I don't want to narrow unnecessarily.

    Examiners are focused only on allowability. Makes sense -- that's the role of an Examiner. But attorneys should also think about infringement and claim scope. I don't want just any allowable claim, I want a good allowable claim.

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  4. was appealing this really the best course? best case he gets reversed and reopens adding "bonding layers is well known in art; it would have been obvious to bond into a laminate to [do something cool here]"

    probably should have distinguished more, and if his only feature is the bonded laminate it probably wasnt patentable anyway

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  5. assuming that the bonding laminate feature was patentable, he should have incorporated the a more detailed description (that could include at least some use of a technical definition) of this point of novelty in the specification in the first place.

    having not done so, it might not hurt to incorporate it partially into the claims to further prosecution. it is always possible to refile a continuation after allowance.

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  6. It's not often that a blog about patent prosecution will have me screaming at my computer screen, but even if the applicant had won, an incredible amount of money would still have been wasted.

    If "laminate" meant "bonded" in the claims, then why not just amend the claims? If the Examiner's "broadest reasonable construction" pulls in things that your client did not invent, it seems far more efficient to amend and circumvent the broad construction than to argue over whether it is, or isn't, too broad...

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  7. >more efficient to amend and circumvent the
    >broad construction than to argue over whether
    >it is, or isn't, too broad...

    Agreed.

    I wrote about this case because I was interested in the the dueling definitions aspect.

    But yeah, stepping back and looking at the big picture, this seems like an easy case to amend rather than arguing over meaning.

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  8. great blog...funny comments. Also, is it just me or could the claim have been drafted differently, besides the whole laminate issue. For example, it requires a deck, etc. I am not fluent in this field, but it seems to me that it could have been done differently.

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  9. "materials is close enough to your art, and you should know that a laminate is not simply a bunch of materials stacked one on top of another with a nail driven through them."

    Well tbh, materials is half of my art.

    But anon on the subject of this post, idk what all to tell you man, you seem to think I'm all up in arms n stuff advocating putting in definitions etc. bloating the spec. Nah, I'm not. I don't advocate making special meanings for words by lexicography in the spec. I advocate, if it can be said I advocate anything in this space, making what you're talking about clear from the get go. If you're so retar ded that you can't do that without resorting to a definition then so be it, use definitions, otherwise just use context.

    I haven't read this whole case, but hopefully he has some exemplary embodiments where the product is a "true laminate" and he could point to those to show what he meant by laminate. He can also bust out the technical dictionary and argue you have to use that.

    Bottom line, I said he could have won this case with a good lawlyer and I meant it. And I don't advocate excessive use of definitions in your spec.

    Although I will also note that I don't mind if it is a bloated spec if most of it is just definitions. A 50 page spec with 47 pages of definitions isn't all that bad imo, I wouldn't mind that at all. I usually have no need to consult special definitions save in very very few cases.


    Finally I would note that the more I think about it the more I warm to the examiner's position in this case, at least in so far as I understand the art etc.

    For instance, it should be a simple matter for the applicant to add "bonded" before "laminate" in his claim IF he has WD for that. And then wallah we have his claim construction forced. However, if he were to make that amendment, well, I have to wonder if he'd get WD support for that. Personally I would probably give it to him and let him go. But then, I also probably wouldn't have made the original rejection.

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  10. >could the claim have been drafted
    >differently, besides the whole laminate
    >issue. For example, it requires a deck, etc.

    I note that Applicant had one set of claims to a "base sheet" and another to a "combined base sheet and insulating layer." But in response to a restriction, the Applicant elected the claims on appeal -- roof and method of forming a roof -- instead.

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  11. "the broadest reasonable construction when viewed in light of Appellant’s Specification."

    Applicant should have at least provided some rational basis to support the proposition that one of ordinary skill would have viewed its definition as more in line with the spec.

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  12. >Applicant should have [explained why]
    >one of ordinary skill would have viewed its
    >definition as more in line with the spec.

    Yep, I like it. That's a good way to sum up Applicant's mistake.

    And the Applicant didn't even get halfway there. Didn't even make a *naked assertion* that a POSITA would have viewed Applicant's definition as being more in line with the spec. Much less a rational basis for the assertion.

    The Applicant merely said "Examiner is wrong; my definition is correct". Not very persuasive.

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  13. This stinks all the way around.

    1) Every party involved (Examiner, BAPI, Attorney) should know what a laminate means more than just the Examiner's definition -- unless they got their engineering degree mail order.

    2) The Examiner was too lazy to put together a decent obviousness rejection -- he had all the materials in the right place, he just had to articular a rationale for bonding them together

    3) The applicant was too lazy to pull together more than one dictionary definition and perhaps a declaration to support their position. If I took this decision to my materials professor back in college, he would likely cringe.

    4) The BPAI was tied up in their "affirm examiner whereever possible" mantra to identify the correct definition when they saw it.

    IMHO, it is a big f'n waste of time to amend claim language that has an art-recognized meaning just because the Examiner wants to play it cute. You wonder why there is a backlog? Because Examiners don't want to dispose of cases properly -- they cut corners. Had a rock-solid 103 rejection been made, this application probably would have been abandoned a long time ago. However, since the Examiner put together a weak rejection, Applicant appealed. So what that they lost, it is still a minor issue to amend the claims, and they will be back to the start.

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  14. >The BPAI [didn't] identify the correct
    >definition when they saw it.

    Good point: the Board did *not* act like a fact finder, making a determination as to which side was more persuasive.

    Instead, the Board acted like there is a presumption that the Examiner's definition is correct, and that the Applicant lost because he didn't overcome the presumption.

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  15. "And the Applicant didn't even get halfway there. Didn't even make a *naked assertion* that a POSITA would have viewed Applicant's definition as being more in line with the spec. Much less a rational basis for the assertion."

    Yeah, I simply don't understand attorneys who fail to do more than present conclusory statements any more than I understand examiners who do the same. I think this partially stems from the fact that Examiners demand amendments to the claims rather than prosecution history estoppel-making statements made on the record by applicant during the course of prosecution.

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  16. Several interesting things here.

    First, here we have a claim construction issue on an issue of underlying fact. I haven't done the legal research here, but I suspect that an issue of fact even one underlying a claim construction is to be decided on a preponderance, favoring the applicant. On any other issue of fact, evidence in equipoise (as we see here) would favor the applicant. I wonder what the law is here. I agree with Karen's comment of 10:47 that this at least raises a question.

    On the other hand, the rule for claim construction is "broadest reasonable interpretation"--which would seem to trump, especially here, where (at least clear to me) the dictionary definition that the examiner relied on is just plain wrong. Courts have recognized that dictionaries sometimes do err, and exercise judgement to discount dictionaries -- I wonder why not here.

    Third, the appellant had the option of stacking in more dictionaries. You can always drop in more dictionary definitions. Nix v. Hedden, 149 U.S. 304, 306-307 (1893); Ex parte Scroggie, App. Ser. No. 09/401,939, Appeal 2008-4478, Decision on Petition (BPAI Jul. 18, 2008) (unpublished). That would have shown that the examiner's dictionary was the odd man out, and was wrong.

    Fourth, the appellant had the option of amending the claim to recite "bonded." I wonder why this didn't happen.

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  17. An interesting aspect is that the applicant's own prior art reference (US 6,108,993) was used against him. He should have been able to argue that his own reference disclosed/discussed the metal 24 and fabric 26 as a laminate, but did not disclose/discuss the metal 24, fabric 26 and insulation 22 as a laminate, presumably because those three elements, although fastened together, were not bonded and thus do not constitute a laminate as would be understood by one of ordinary skill in the art. In other words, shouldn't Hageman have argued, "Hey, US 6,108,993 is my patent, and the reason it doesn't describe the fastened metal 24, fabric 26 and insulation 22 as a 'laminate' is because it's not a laminate as one of ordinary skill in the art, e.g. myself, would understand it."?

    But I agree with David and Karen, it's troubling that the Board took the examiner's evidence of the meaning of laminate as weightier than applicant's evidence. Clearly it was not.

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  18. >applicant's own prior art reference
    >was used against him.

    You know, I missed this tidbit the first time around.

    >argue that his own reference disclosed or >discussed metal and fabric as laminate
    >but not metal, fabric and insulation as
    >laminate

    Some folks don't like to say anything about their own patent when it's used as a reference. I think the concern is that these remarks could somehow used to limit claim scope when that reference=patent is asserted.

    OTOH, Applicant here looks like LittleGuy rather than BigCorp, so not sure he would be worried about this.

    >"Hey, US 6,108,993 is my patent, and it
    >doesn't describe fastened metal, fabric,
    >and insulation as a 'laminate' is because
    >it's not a laminate

    Do you think this statement has,or should have, special weight because the same guy is
    inventor on both reference and app?

    Or is that a good argument even if the reference didn't have same inventor?

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  19. "Or is that a good argument even if the reference didn't have same inventor?"

    I think it's a good argument regardless of who the inventor of the reference is, but I think it's a better argument in the case where the inventor of the reference is the same as the applicant.

    What really concerns me about this case is the rush to the dictionary. On everybody's part, the applicant, the examiner, but especially the APJ's. Where is the analysis of "what is the broadest reasonable interpretation consistent with the applicants' use of the term and the interpretation that would be given to the term by one of ordinary skill in the art?" We shouldn't even be talking about dictionaries unless that analysis is done and turns out to be inconclusive.

    I frequently get examiners telling me that "element X from Smith corresponds to element Y from the claim" and it's almost invariably a ridiculous stretch. I currently have one examiner telling me that a swirler from a turbine corresponds to a claimed burner tube. Uhm, no it doesn't. If a swirler was the same thing as a burner tube, at least one of the ten references that the examiner cited, or at least one of the ten references that we cited would say something like, "the swirler, also referred to as a burner tube". But none of them do. When I discussed the rejection with the engineers they asked me, "What is the examiner talking about, we're claiming a burner tube and he's showing us a swirler."

    I've met with lots of inventors in my time. I used to review hundreds of published apps and issued patents with a committee of engineers every three months to see what their competitors were up to, and while we sat in a conference room for 10+ hours a day reading through claims, not one of them ever said, "Gee, what does this term mean, maybe I should go look it up in a dictionary." That's simply ridiculous. The only people who think that's how people of ordinary skill figure out what a claim term means are examiners, APJ's, USDC and CAFC J's. It's nonsense.

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  20. "I've met with lots of inventors in my time. I used to review hundreds of published apps and issued patents with a committee of engineers every three months to see what their competitors were up to, and while we sat in a conference room for 10+ hours a day reading through claims, not one of them ever said, "Gee, what does this term mean, maybe I should go look it up in a dictionary." "

    Well of course not, they're content to come to whatever "conclusionlol" they want to about how the claim should be interpreted.

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  21. >not one of them ever said, "Gee, what does
    >this term mean, maybe I should go look it up
    >in a dictionary."

    Another example of something I commented on in another post -- ignoring information about what real POSITAs think and do, in favor of a hypothetical POSITA. Apparently, a hypothetical POSITA consults a layman's dictionary to find out what laminate means.

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