Friday, August 12, 2011

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.


13 comments:

  1. Miyazaki is a horrible decision and just a further step along the "Applicant can always amend the claims, regardless of the Festo/estoppel/RCE/PTA consequences, and therefore the Examiner can use less-than-the-most-reasonable interpretation of the claims." It's another step in the wrong direction - the right direction being that claims are interpreted the same by the PTO and the courts.

    ReplyDelete
  2. Lulz, examiner made an error of claim construction thanks to applicant's incompetence.

    Same thing different day. The Miyazaki should have gone out as the original rejection. Although Miyazaki may have not been decided at the time.

    Although I stand by my position that Miyazaki settles these kinds of issues quite easily. Had the examiner made that rejection up front then I can assure you the attorney would have either cancelled the dep or amended the ind.

    I like the attorney's use of the "!" though lol.

    "I don't do chemical cases, so I won't say which claim interpretation is the best one."

    I will, it was the applicant's. However, his dependent claim was improper. And since he included the language he did in the dep the ind was broader than it otherwise would be, specifically it was as broad as the examiner interpreted it to be.

    "Would the indefiniteness rejection have been avoided if the dependent claim wasn't there to confuse things?"

    Yes.

    Bottom line, if people could learn to fin draft in the first fin place we wouldn't have these kinds of bad rejections. Well, not as many anyway. What the examiner did was a standard noobie mistake which everyone will come across eventually, wonder how to resolve it, find no guidance worth a dam and then err on the side of rejection.

    ReplyDelete
  3. Also, funny enough, five minutes on google tells us where the first demonstration of an amorphous TAOS used in a channel region was.

    http://www.opticsinfobase.org/view_article.cfm?gotourl=http%3A%2F%2Fwww%2Eopticsinfobase%2Eorg%2FDirectPDFAccess%2FBD95A619%2DFB66%2DC176%2D1539219D8061D164%5F190559%2Epdf%3Fda%3D1%26id%3D190559%26seq%3D0%26mobile%3Dno&org=US%20Patent%20and%20Trademark%20Office

    Tells us in their opening sentence that amorphous In-Ga-Zn-O channel transistors were first demonstrated in 2004 by

    [1] K. Nomura, H. Ohta, A. Takagi, T. Kamiya, M. Hirano, and H. Hosono,
    “Room-temperature fabrication of transparent flexible thin-film transistors
    using amorphous oxide semiconductors,” Nature, vol. 432, pp.488–492, 2004.

    In other words, the entire art was about 3-4 years at the time of this filing.

    To find a 102 for the actual claim as the applicant intends it, if there is one, would probably require a few hours of looking through those citations and the citations of those citations. Finding that in the patent art would be difficult indeed.

    ReplyDelete
  4. "Bottom line, if people could learn to fin draft in the first fin place we wouldn't have these kinds of bad rejections."

    OK 6, why don't you become a patent attorney or at least a patent agent and show us all how to do it? In 5 years you'll be making 2x-3x what you are making now.

    It is a lot easier to criticize a meal than to cook a good meal.

    ReplyDelete
  5. "OK 6, why don't you become a patent attorney or at least a patent agent and show us all how to do it?"

    Lulz, I'm already better than most low level agents out there. People taking the cert or agent's exam come to me for help. And by "people" I mean at least 5 and maybe a few more. It's so funny seeing the kinds of questions they miss on the exam they're so ez.

    But, I'll tell you why I don't become one of the two (although I may still). Because I'm too busy becoming a boss of attorneys along with doing my work here at the office. That's right hos, my startup is started up. My CFO registered the LLC lulz.

    "In 5 years you'll be making 2x-3x what you are making now."

    Yeah, but at what cost? I've heard that being an agent or an attorney is worse in terms of responsibility and headache. And I sure as sht have enough of that with this startup. I hope it hurries up and fails just so I can be done with it lol.

    "It is a lot easier to criticize a meal than to cook a good meal. "

    You're right of course, however, this, specifically, is a fairly old drafting problem that I see all the time. I tire of having to correct it time after time after time. It is as if there is someone out there specifically teaching people to make this mistake.

    I do think that the office could nip a lot of work in the bud by simply issuing drafting suggestions for everyone to read so that this sort of thing doesn't happen.

    ReplyDelete
  6. "Lulz, I'm already better ... this sort of thing doesn't happen,"

    Classic 6 ... lots written, but nothing said.

    ReplyDelete
  7. Lulz, I'm sure it's much better to write little and say nothing like you do.

    ReplyDelete
  8. "Lulz, I'm sure it's much better to write little and say nothing like you do."

    At least I'm not wasting the reader's time.

    ReplyDelete
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