BPAI affirms obviousness of combining computerized rule processing from three different settings

Takeaway: The Applicant appealed an obviousness rejection of claims directed to rule-based processing of medical records. The Applicant attacked the rationale for combining by focusing on the three very different technology areas in which the references used rule processing. The Board affirmed the rejection, finding that it was obvious to combine teachings about network configuration rules and document management rules to the primary reference's teachings about patient rules. "The Examiner applied Harsham simply to show the unremarkable fact that one of ordinary skill knew that using rules to set parameters in a computer system simplified tasks. ... The Examiner applied Vulpe simply to show how one of ordinary skill might implement the records management required by Kerr, with the aid of Harsham’s rules, by using Vulpe’s architecture for records management." Ex parte Schoenberg, BPAI 2011.

Details:
Ex parte Schoenberg
Appeal 2010006290; Appl. No. 10/825,352; Tech. Center 3600
Decided November 17, 2011

The claims on appeal were directed to processing medical records. A representative independent claim on appeal read:

     1. A rule processing computer-based method comprising:
      [1] receiving user input to a processor-based computer for defining a computer-executable rule ... [which] causes the computer to identify a target group of patients chosen from a group of existing patients;
      [2] receiving user input to the computer defining ... a computer-executable action to be taken by said computer concerning one or more patients within the target group of patients;
      [3] scheduling ... an execution time for the action;
      [4] processing, by the computer, a plurality of computer-based medical records against said computer-executable rule to determine one or more of said medical records that satisfy the rule,
           wherein each of the medical records contain at least a portion of a corresponding patient's medical history stored to computer-readable medium; and
      [5] initiating by the computer, in accordance with the scheduled execution time, the action concerning corresponding patients to which the determined one or more medical records that satisfy the rule relate.
(Emphasis added.)

The independent claims were rejected as obvious over a combination of three references. According to the Examiner, the primary reference Kerr taught everything except elements 1 and 4 (emphasized above). Secondary references Harsham and Vulpe were relied on for elements 1 and 4, respectively. As a motivation for adding Harsham to Kerr, and Examiner offered "having a means of configuring a computer network in an object-oriented manner" as taught by Harsham. As a motivation for adding Vulpe to Kerr and Harsham, the Examiner offered "having a means of determining which records satisfy a particular rule" as taught by Vulpe.

On appeal, the Applicant first argued that the combination did not teach elements 1 and 4, focusing on the fact that neither secondary reference had anything to do with medical records. Harsham was directed to network management and the rules in Harsham were used to define configuration parameters for network devices. "Harsham simply makes no mention or suggestion whatsoever of any rules that pertain in any way to patients or to medical references." Vulpe was directed to document management, and describes intersection rules that relate to document architecture. "Vulpe simply makes no mention or suggestion whatsoever of any rules that pertain in any way to patients or to medical records."

The Applicant then argued the Examiner had not provided sufficient rationale to combine. The Applicant again focused on the fact that the references came from different technology areas: monitoring delivery of drugs to patients; configuring a computer network; and document management. "Sufficient rationale has still not been provided to establish why one ordinary skill in the art would be motivated to combine such disparate teachings in the manner applied by the Examiner absent the use of impermissible hindsight in which the present application is used as a blue print to piece the element together in the manner claimed."

In the Answer, the Examiner maintained the rejection without further explanation.

The BPAI affirmed the obviousness rejection. The Board began by noting that in arguing elements 1 and 4, the Applicant had improperly attacked individual references. "The Appellant contends that Harsham fails to describe medical records, although it is Kerr that is applied for such records. ... The Appellant contends that Vulpe does not suggest medical records. Again, the Appellant is attacking the references separately, even though the rejection is based on the combined teachings of the references."

The Board then commented that the Applicant's attack on the rationale for combining was misplaced. While the Applicant focused on the different technology areas in which rules were used in the three references, the Examiner applied the more general teachings of the reference:

The Examiner applied Harsham simply to show the unremarkable fact that one of ordinary skill knew that using rules to set parameters in a computer system simplified tasks. As Kerr describes a medical computer system, Harsham simply shows that one of ordinary skill new that Kerr’s administration could be simplified by using rules. Vulpe shows how to improve the organization of documents using a document management system. The Examiner applied Vulpe simply to show how one of ordinary skill might implement the records management required by Kerr, with the aid of Harsham’s rules, by using Vulpe’s architecture for records management.

My two cents: I think the Board's rationale is persuasive. But there is a more important lesson here.

My first impression of the Applicant's arguments was: the Applicant completely missed the boat by not addressing the combination. (A topic I have written about before here as "Mistake #5: Failure to address the combination".)

On further reflection, I see failure to address the combination as the symptom of a bigger problem: focusing on the specific teachings of the references rather than the more general understanding which a POSITA would get from the references.The lesson here is thus: be on the lookout for what a reference teaches in general and don't get stuck in the details.

Here, the Applicant focused on the different areas in which the three references applied rules to record processing: healthcare information systems; network management; and document management. By focusing on the different fields of application, the Applicant appeared to miss what a POSITA would see in all three references about rule processing in general.

The Board did a good job of explaining how the secondary reference Harsham, when read with a focus on the big picture rather than the details, fit with the primary reference Kerr. Harsham stood for the general teaching that users can create rules to define parameters and these rules can be applied to data – rather than the specific teaching that users can create rules to define configuration parameters for network devices and these rules can be applied to data describing network devices. When this general teaching in Harsham is combined with Kerr's use of rules in a different context – to identify groups of patients –  the result something that's at least in the ballpark of Applicant's claim limitation 1.

Said another way:

receiving user input defining a rule which causes the computer to
[specific teaching of 2nd reference = ] define network configuration parameters
[generalized to => ] define parameters
[applied to heatlhcare context of 1st reference => ] define parameters which identify a target group of patients chosen from a group of existing patients;

Here, the Examiner did give an important clue as to how he was generalizing the secondary reference – as long as you read the rejection very carefully. After acknowledging that the primary reference did not teach limitation 1, the Examiner asserted that the secondary reference taught not 1, but 1' :

receiving user input to a processor-based computer for defining a computer-executable rule

Thus, it's clear upon careful reading that the Examiner is relying on primary-modified-by-secondary to get from 1' to 1.

A similar analysis holds for limitation 4, taught by the third reference:

[specific teaching of 2nd reference = ] processing document intersection records against the document intersection rule to determine one or more of said document intersection records that satisfy the rule
[generalized to => ] records and rules
applied to heatlhcare context of 1st reference => ] processing medical records against the rule to determine one or more of said medical records that satisfy the rule

Examiners don't always clearly explain how they are abstracting a feature from one reference and applying the abstraction in the specific context of another reference. But I believe many obviousness rejections can best be understood using this sort of framework.

So Applicants, the next time you find yourself saying "X teaches a widget and Y teaches a green blodget, but neither reference teaches my blue widget", I challenge you to step back and think instead about what the reference says about widgets in general, about colors as applied to blodgets, and about how widgets might be similar to blodgets. With this in mind, you can then evaluate whether or not the combination teaches the element in question, and further, whether the combination is proper.

BPAI says magazine article "The Future of TV" is an enabling reference

Takeaway: The Examiner used a magazine article "The Future of TV" as a secondary reference in an obviousness rejection. The Applicant argued that the reference was not enabling, and pointed to statements in the reference explicitly stating that not all of the described features existed at the time of publication. The Board reversed the obviousness rejection after finding that the combination did not teach all the elements, but also found that the reference was enabling because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." (Ex parte Karaoguz, BPAI 2011.)

Details:
Ex parte Karaoguz
Appeal 2010004430; Appl. No. 10/667,036; Tech. Center 3600
May 9, 2011

The claims on appeal were directed to delivering media content.

The Examiner rejected all claims as obvious over a patent publication (Schein) and a magazine article ("The Future of TV"). The Examiner took the position that Schein taught every claim element except one, then relied on The Future of TV for the element "customizing content or wherein the at least one user defined media channel is pushed from the first home to other authorized users at locations that are separate and distinct from first home."

The Applicant appealed the rejection. In the Brief, the Applicant first argued that the combination did not teach creating user defined media channels which were pushed from one home to another. The Applicant also argued that "The Future of TV" was not an enabling reference, as it described a potential system rather than a system in existence at the time the article published.

To support this argument, the Applicant pointed to explicit statements in the article that "the future of television is just around the corner," "the pieces just have to be improved and linked together in the right way," and "connecting the chain will be no small feat" – admissions that the features did not exist at the time of publication. Moreover, the Applicant noted, the article specifically points out the deficiencies in existing systems:

What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers. ... We still won't have custom TV until companies find the best model for integrating digital content, distribution and the platform.

The Examiner's Answer contained this response to the Applicant's arguments:

Future TV teaches a detailed plan to customize television and push user defined channels. Future TV further states that this is the direction that television is moving since 1999 and discusses the ways in which companies may go about customizing access. The Appellant further argues that Future TV is forward looking and does not describe the technology as it existed at the time the article was written. In response, the Appellant's assertion is a conclusion, and there is no support on record to the contrary.

In a Reply Brief, the Applicant explained that rather than being conclusory, the assertion was explicitly supported by the reference itself. In contrast, "[t]he Examiner's Answer provides absolutely no evidence that the public was in possession of the 'future' technology discussed in The Future of TV at the time that reference was published."

The Board reversed the rejection, based on the finding that neither reference taught the feature of pushing a user created channel. "As the Appellants argue, Schein generally creates a channel selection database for controlling the selection of existing channels rather than creating and pushing a new channel."

The Board also commented about Applicant's argument about the lack of enablement in "The Future of TV." The Board said the argument was not persuasive because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." This in turn was based on an underlying finding of fact made by the Board: "The technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill. Future TV 35."

My two cents: The Board completely mischaracterized the teachings of The Future of TV, and Finding of Fact #6 about Future TV is way off base! What the reference actually says about "existing technology" is this:

Much of the broadcast, reception and display technology needed to let you see whatever show you want, whenever you want, on whatever screen you want, exists. The pieces just have to be improved and linked together in the right way. Connecting the chain will be no small feat. ... What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers.

Because the article says that some of the technology exists, that means some of it doesn't. And I read the statement that "the pieces need to be improved" to really mean that the system won't work until the pieces are modified.

Given the above, how can you possibly say that "the technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill" ? Now, I'll admit that it's possible that a POSITA, at the time of invention, could have taken these few general statements which vaguely refer to existing features and modify them to produce the claimed feature. That is, it's possible the claimed feature was obvious in view of these teachings. But no such evidence was introduced! So there's no way the Board had enough evidence in the record to reach the conclusion that the reference enabled the claimed feature.

This is the most egregiously unsupported finding of fact that I've seen in a while.

BPAI reverses indefiniteness of dependent claim using "comprising" when independent claim used "is one of"

Takeaway: An Examiner rejected as indefinite a dependent claim that included the limitation "the component comprising," as contradicting the recitation in the independent claim "wherein the component is one of." The Examiner took the position that the term "is" in the independent claim operated as a closed transition, and that the dependent claim was indefinite for adding additional components excluded by the closed transition. The BPAI reversed the indefiniteness rejection. To determine whether "is" was an open or closed transition, the Board reviewed the Applicant's specification. The Board concluded that the Applicant did not intend to limit the component to only those components recited in claim 1, so that claim 1 was open to components in addition to those explicitly recited in the claim 1 "wherein" clause. The Board therefore reversed the indefiniteness rejection of the dependent claim. (Ex parte Faguet, BPAI 2011.)

Details:

Ex parte Faguet
Appeal 20120012312; Appl. No. 11/094,461; Tech. Center 1700
Decided:  November 9, 2011

The technology of the application on appeal involved a system used in manufacturing semiconductors. A representative set of claims on appeal read:

1. A plasma enhanced atomic layer deposition (PEALD) system comprising:
     a process chamber;
     ...
     a chamber component exposed to said plasma and made from a film compatible material having at least one molecular component in common with said predetermined film,
     wherein the chamber component is one of a wafer lift pin, a wafer centering ring, a[n] alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt.

2. The PEALD system of claim 1, wherein said chamber component comprises a gas injection plate.
3. The PEALD system of claim 1, wherein said chamber component comprises a substrate holder.
4. The PEALD system of claim 1, wherein said chamber component comprises a contaminant shield.
5. The PEALD system of claim 1, wherein said chamber component comprises at least one of an electrode, a shower head, a grid, a focus ring, a dispersion plate, a gas injector, a shield, a clamp ring, a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a door, a hanger, a hinge, a holder, a gas a diffuser, a chuck, a screw, a nut, or a bolt. 

During prosecution, the Examiner rejected the independent claims as anticipated. Dependent claims 2 and 3 were also rejected as indefinite. The Examiner explained the indefiniteness rejection by stating "it is not possible for the chamber component to be both the component claimed in claim 1 and the different component claimed in claims 2 and 3."

The Applicant appealed, and argued against the indefiniteness rejection by explaining that claim 1 enumerated a list of chamber components, and claims 2 and 3 merely added to this list. The Applicant went further to say that the Examiner had not made a prima facie case of indefiniteness since the Office Action "provided no reasoning as to why a person of ordinary skill in the art would not understand that the list of chamber components can also include the claimed gas injection plate substrate support."

In the Answer, the Examiner added a new indefiniteness rejection of claims 4 and 5 using the same reasoning. The Examiner also elaborated on the indefiniteness rejection:

     [C]laim 1 requires that "the component" be one of a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt. Claim 2 and 3 require "the component" to be something else. Applicant has not addressed how "the component" can be a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt and at the same time be a gas injection plate or substrate holder. Thus the claims are indefinite.
     The Examiner further notes that if claims 2-5 were to be read as argued by the Applicant, claims 2-5 would be improper dependent claims because they would not further limit claim 1, in that, they would add to the list of possible components not limit the list of components, and a rejection that read on claims 2-5 may not read on claim 1. 

The Board addressed the indefiniteness rejection by first noting that the rejection was premised on treating of the transition word "is" (in the phrase "the component is one of") as a closed transition. "Non-conventional transitional phrases (i.e., other than 'comprising,' 'consisting essentially of,' and 'consisting') are interpreted in light of the Specification to determine whether open or closed claim language is intended." (Internal citations omitted.)

Looking to the Applicant's specification, the Board found that the Applicant intended "is" to be an open-ended transition. The Board found that the Specification described an example embodiment in which the chamber components include those recited in dependent claims 2, 3, and 4 (gas injection plate, contaminant plate, and shield). But the specification also gave a list of other components which may be exposed to the chamber, and this list included the components recited in independent claim 1 (wafer lift pin, a wafer centering ring, etc.).  In view of these statements, the Board found no preferred embodiment that limited the chamber component to either the components in claim 1, or to the components in dependent claims 2-5.  The Board concluded that:

Appellants did not intend to limit the chamber component to only those components recited in claim 1. Rather, we interpret claim 1 as open to including chamber components in addition to those explicitly recited in the claim 1 "wherein" clause.

Under this construction, the Board reversed the indefiniteness rejection of the dependent claims.


My two cents: I agree with the Board that the embodiments in the spec weren't limited to chamber components from set A (claim 1) or from set B (claim 2 or 3 or 4 or 5).  Trouble is, I'm not sure that's what the Applicant claimed.

As a matter of plain English, "component is a nut" doesn't mesh with the further limitation the "component includes a gas injection plate.  I'm interpreting the "component is" as defining the component rather than declaring possible additions to the component. And it simply doesn't make sense to say a nut includes a gas injection plate.

I don't think the spec really helps to decide how the Applicant meant the particular transition word used in the claims – "is" – to be interpreted. The paragraph relied on by the Board says:

• the things in the list of claim 1 are "exposed to plasma in the processing chamber"; and
• the things in the dependent claims "can be made from a film compatible material"

Neither of these statements in the spec uses a transition word at all, and are thus no help at all in determining what the Applicant meant by using the transition word "is" to introduce the list of claim 1.


Also, I don't really see this as an open/closed transition issue. Consider the follow hypothetical

• 1.  A device comprising: a network interface, wherein the network interface is an Ethernet interface.
• 2.  The device of claim 2, wherein the network interface comprises a transceiver.

Same paradigm: "is" followed by "comprises". But in this context, there is no indefiniteness problem. These claims make perfect sense.

I could go either way on the situation presented in Ex parte Faguet. If you import enough from the spec, this leads to the conclusion of no indefiniteness. On the other hand, if you read the claims as is, the dependent claim is indefinite.

BPAI reverses obviousness based on KSR rationale "combination of familiar elements"

Takeaway: The BPAI reversed an obviousness rejection in which the Examiner relied on the "combination of known elements to yield predictable results" rationale because the element at issue did not perform the same function. The Examiner modified the shower curtain of a primary reference with a ruffle from a secondary reference, because a ruffle was known to provide a pleasing aesthetic effect. However, the function of the ruffle in the secondary reference was to provide deodorizing properties rather than aesthetics.  (Ex parte Peoples, BPAI 2010.)


Details:
Ex parte Peoples
Appeal 2010-007842; Appl. No. 11/448,936; Tech. Center 3600
Decided:  September 29, 2010

The only claim on appeal, directed to a two-piece shower curtain, recited:

     1. A two-component shower curtain of a type in an in-use condition suspended from a shower support rod and in a laundering condition disconnected from said support rod, said one-component comprising:
     A. a shower curtain of plastic construction material constituted as
          a. a rectangular shape having an upper edge and a bottom edge;
          b. a zipper lower track in sewn attachment along said shower curtain upper edge;
and a said second-component comprising:
     B. a valance of plastic construction material constituted as
          c. an elongated first rectangular strip having an upper edge and a bottom edge;
          d. plural adjacent spaced apart edges bounding openings in said upper-edge for receiving therein grommets for attachment to said support rod;
          e. a zipper upper track in sewn attachment along said valance lower edge;
          f. an elongated second rectangular strip in sewn attachment at a selected location between said upper and bottom edges;
          g. said selected location of said sewn attachment positioning said second rectangular strip in a depending overlapping relation over said zipper upper track; and
     C. an operative position of said valence in overlapping relation of said zipper upper and lower tracks in attached relation to each other;
     whereby when said shower curtain is released by being unzippered from said support rod incident to detachment of said zipper upper and lower tracks and placement of
said shower curtain into said laundering condition thereof, said valance remains to mask said zipper upper track from view to contribute to an enhanced shower curtain appearance.

The Examiner rejected the claim as obvious, relying on a primary reference Hinds for teaching the curtain (elements a, b) and a secondary reference Scott for teaching the valance (elements c-g) and the functional limitation C. As a motivation to combine, the Examiner alleged that a POSITA would incorporate the valance of Scott into the curtain of Hinds "for the purpose of aesthetics." Furthermore, the Examiner also took the position that

All of the claimed elements are known in the prior art and one skilled in the art could have combined the elements as claimed by know methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.

On appeal, the Applicant did not contest that the claimed elements were disclosed, but instead attacked the Examiner's motivation to combine. In the Appeal Brief, the Applicant argued that the Examiner's motivation for using Scott's valance ("aesthetics") ran counter to the teachings of Scott, which disclosed that the valance remained permanently attached to the support rod in order to provide deodorizing or antiseptic properties.

In the Answer, the Examiner further clarified that Scott's ruffle mapped to the "claimed elongated second rectangular strip in sewn attachment at a selected location" and that "use of a ruffle per se in the art of curtains has an explicit purpose, that of a decoration thereby providing a pleasing aesthetic effect." In response to Applicant's argument about Scott's curtain having antiseptic or deodorizing properties, the Examiner noted that the claims did not preclude a fabric strip with such properties.

In the Reply Brief, the Applicant made the additional argument that since the primary reference Hinds already included a valance, the combination with Scott was "excessive, and unnecessary to factor in the use of a shower curtain valance to the disclosure of Hinds."

The Board found that both of the Examiner's reasons to combine ("aesthetics" and "combination of known prior art elements") lacked a rational underpinning. The Board agreed that "aesthetics" was enough reason to modify Hinds' shower curtain to include a valance with structure similar to Scott's ruffle. However, the Board found that "aesthetics" did not explain why a POSITA would further modify Hinds to include claim elements f (second rectangular strip) and g (sewn into a particular position). 

The Board also found the "combination of known elements" rationale was insufficient under these facts because this rationale requires that the element performs the same function in both references.

The Examiner points to no teaching of Scott indicating that the ruffle 3 is to be added for any aesthetic purpose. Instead, Scott discloses that the ruffle 3 protects the tape 5 from the flow of water from the shower and regulates the rate of deodorization or release of fragrance from the tape 5. Therefore, the function of the valance and the elongated second rectangular strip recited in claim 1 would have differed from the function of the ruffle in the shower curtain of Scott. The Examiner articulates no reason why one of ordinary skill in the art would have modified Hinds’ shower curtain to include the elongated second strip of limitation f of claim 1, positioned as recited in limitation g of claim 1, despite this difference in the functions of the recited and prior art elements.
(Emphasis added.)

The Board then reversed the obviousness rejection. 

My two cents: The KSR generic rationales for combining can be harder to deal with than a specific motivation found in the references. But this decision is a good reminder to verify that the rationale fits your facts. Take a look at the MPEP and see what the rationale really requires.

According to MPEP § 2143, the "combination of known elements" rationale used by the Examiner in Ex parte Peoples requires these specific findings of fact:

1. a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
2. a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
3. a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable;

The weak point identified by the Board was #2, each element performs the same function. It appears to me that #1 was not met either. The Examiner made a general statement that Scott taught "the valance" and then the specific finding that Scott's ruffle mapped to claim element f. But the Examiner didn't specifically make findings as to elements c, d, e, g, or C. And it's not clear to me that Scott teaches element g.

BPAI finds that "products purchased in a specified time period" reads on last purchase since that purchase has a time period

Takeaway: On appeal, the BPAI interpreted "purchase history form comprising all products that were purchased during a specified time period" to cover re-use of the last purchase requisition, even if the user does not specify the time period, since the last purchase does correspond to a specified time period. (Ex parte Byers et al., BPAI 2011.)

Details:
Ex parte Byers et al.
Appeal 2010004416; Appl. No. 09/892,800; Tech. Center 3600
Decided March 25, 2011

In this appeal of an electronic commerce application, the issue was claim construction of the limitation emphasized below:

     1.  A method for selling products over an electronic network ... said method comprising the steps of:
     [1] identifying a user;
     [2] transmitting a user specific order entry form to the buyer computer, said order entry form comprising at least one user specific product, a user specific price for said at least one product, and a quantity entry field, wherein said user specific order entry form comprises a user specific purchase history form comprising all products that were purchased during a specified time period ...
(Emphasis added.)

The Examiner rejected claim 1 as obvious, relying on the primary reference for the limitation at issue. As explained in a Final Office Action:

Barnes discloses making a purchase and using a repeat from an old requisition request. The requisition request is used as a purchase order to suppliers, where the order includes products and service that the user wants to purchase. The repeat from an old requisition request can be edited to include the quantity. Such repeat from an old requisition request is considered "a user specific purchase history form comprising all products that were purchased during a specified time period."
(Internal citations omitted.)

The Applicant appealed, arguing that the "during a specified time period" limitation was not taught.  Specifically, the Applicant argued that the primary reference disclosed:

an old requisition request [which] would include only those items purchased on that particular requisition request, which would require the buyer to search for and add products that were not included on the old requisition request ... Conversely, the [claimed] user specific purchase history form includes all products purchased within the time period, which allows the buyer to place an order for any combination of previously ordered products ... 

The Board affirmed, and explained how the reference taught the limitation as follows:

    Barnes describes that a user can repeat a previous purchase request. FF 01. The system then pre-populates a request form including all of the items from the previous request. FF 01. The repeat request provides a list of all of the items purchased during the last purchase, which is a specified time.     Although the Declaration states that this is not a specified time period (Declaration ¶ 5), the claims do not narrow the scope of a specified time period, or how it is specified, and as such Barnes’ requisition is within the scope of this broadly recited feature.
(Emphasis added.)

My two cents: The Board got this one right. The claim isn't precise enough to distinguish over the reference.

I see this sort of imprecision a lot, and I call it the "mere existence" problem. As drafted, all the Examiner has to show is the mere existence of a time period for the purchase history. The claim requires nothing more.

I say this despite the presence of the qualifier "specified." Perhaps what the drafter had in mind is that the user specifies a time period, and the software generates a purchase history form for that time period. But the claim doesn't say "user specified" and I don't think "specified" alone gets you there.

The Board didn't perform explicit claim construction. But you can read the implicit construction between the lines, and I think it goes something like this. A purchase history is a list of products purchased during a particular time period – that's simply what "purchase history" means. This particular time period is also a "specified time period" in that retrieval of a purchase history requires (somebody, somehow) specifying a time period. 

Therefore, the reference teaches the limitation because "the repeat request [in the reference] provides a list of all of the items purchased during the last purchase, which is a specified time."

I might rewrite the claim as:

receiving from a user a specified time period;
transmitting ... a purchase history form including all products purchased during the specified time period.

As an aside, the Examiner didn't do a great job of explaining how the "specified time period" limitation was mapped to the teachings of the reference. I spend a lot of time thinking about what the Examiner could possibly be thinking, so maybe I would have figured this one out eventually. But the process would be so much more efficient if both sides clearly explained their positions. If this Applicant had understood, perhaps he would have readily amended rather than go to appeal.

BPAI finds Examiner improperly shifted the burden to Patentee to show date that material was added to standards document

Takeaway: In an inter partes reexamination proceeding, the Examiner relied on a product safety standard (UL 588) as a reference. The standard included several different copyright dates, the latest of which was in 2001, after the Patentee's effective filing date. The Examiner took the position that the post-filing date was "only the most recent update to otherwise older prior art content" and that "the entire contents of this reference clearly did not first appear in August 2000. The UL reference therefore cannot be dismissed as available prior art." The BPAI reversed, finding that the Examiner had improperly shifted the burden to the Patentee to show when the material relied upon by the Examiner was added to the standard.(Fiber Optic Designs v. Seasonal Specialties, BPAI 2011.)

Details:

Fiber Optic Designs v. Seasonal Specialties
Appeal 2011007195; Reexam. No. 95/000,137; Tech. Center 3900
Decided  July 29, 2011

This inter partes reexamination involved strings of LED lights. The Patentee appealed a number of prior rejections, including an obviousness rejection that used a product safety standard published by Underwriters Laboratory (UL), referred to as "UL 588." ("Standard for Safety for Seasonal/Holiday Decorative Products, Eighteenth Edition). UL 588 included several different copyright dates, including 1921, 1974, and 2001.

The effective filing date of the patent was in 1999. Thus, material in UL 588 dating back to 1921 or 1974 was properly prior art, but material with a date of 2001 was not prior art. The obvious rejection relied on a particular figure, Figure 7.2, which illustrated a set of LED lights connected in parallel.

Before appeal, the Examiner explained why Figure 7.2 of UL 588 was properly prior art, as follows:

The sixth page' of UL Standard 588 refers to "Copyright 1974" which indicates the presence of content within the standard dating back more than 20 years to 1974. Additional references on this page indicate that content in the standard date back to the year 1921. The date of August 21, 2000 and the Fig. 7.2 from this reference, showing nothing more than parallel light connections cannot be dismissed as having first been taught in August 2000. The UL reference is therefore retained as available prior art.

In response, the  Patentee argued that the publication date for Figure 7.2 could not be 1921 or 1974 because "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974, much less 1921." The Patentee offered several types of evidence to support the argument. One such piece of evidence was a Request for Comments (RFC) document which described the purpose of the UL 588 Standard. The RFC contained this statement:

The requirements in the Standard for Seasonal and Holiday Decorative Products, UL 588, were developed prior to the existence of light-emitting diode (LED) lamps and based on recent submittal of these products it has been determined that the requirements need to be revised to reflect this new technology.

Thus, according to the Patentee, "clearly this Underwriters Laboratories document shows that the UL Standard 588 cannot and does not disclose LED standards dating before August 1998 because the LEDs at issue did not exist in 1974 or prior to 2000."

As additional evidence as to why the LEDs discussed in UL 588 dated back to 2002 rather than 1974 or 1921, the Patentee offered declarations describing the UL approval process for the Patentee's LED light string product:

Patentee submitted its product for UL approval in 1999 and received UL approval in March 2001. Exhibit 2, David R. Allen Decl., 7 2. Exhibit 2 provides additional evidence that the invention of the '358 patent is new and non-obvious since even Underwriters Laboratories  recognized that LEDs used in seasonal lighting products were "new technology" in 2001 several years after the invention of the 758 Patent. Indeed, when the Patentee submitted the invention for approval to Underwriters Laboratories, UL tested this patented product as a "new and unusual'' product. Exhibit 2, David R. Allen Decl., 11.2. UL polled its offices worldwide and concluded that none of its employees had ever tested a product similar to the invention. Id.

In summary, the Patentee argued that the Examiner erred in relying on a date of 1974 for Figure 7.2 of UL 588.

On appeal, the Board found that the Examiner had improperly shifted the burden to the Patentee to show that the relied upon portion of the document was not prior art.

The page bearing Figure 7.2 lists a date of August 21, 2000. The Examiner‟s attempt to shift the burden to Appellant to show when Figure 7.2 was added as an update to UL Standard 588 under these facts is improper. It would constitute speculation to determine such a date. See In re Lister, 583 F.3d 1307, 1317 (2009) (“We surely would not view the mere existence of the reference . . . as prima facie evidence that it was available prior to the applicant‟s critical date.”).

Because the Examiner had not made a prima facie showing that the reference was prior art, the Board did not reach the issue of whether the Patentee's rebuttal evidence was convincing.

My two cents: A good illustration of how to handle a scenario where the Examiner relies on a copyright date as the publication date of a reference.

Seems like the Examiner was really overreaching here, since the particular page relied on (Figure 7.2) had its own date of August 21, 2000, a date after Patentee's effective filing date. So doesn't this, by itself, say that the Examiner had not made a prima facie case that Fig. 7.2 was prior art?

The Patentee's statement that "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974" needed some sort of evidentiary foundation, since the basic LED was invented in the 1960's. The Patentee lucked out in finding a standards-related document which stated that the standards were developed before decorative LED light strings and were then updated to cover LED strings. Without this type of document, the Patentee could maybe offer evidence dicussing the history of LED products, showing when LED holiday lights became commercially available. The Patentee's evidence showing their product was UL tested as a "new and unusual product" was an interesting way of getting to the same conclusion.

Check out these [not quite new] blogs

There aren't many blogs that focus on patent prosecution, so whenever I find one I make a point to tell my readers.

Last month I mentioned Ryan Alley's new blog which covers Federal Circuit decisions with a new angle: what do these decisions mean, specifically, for patent drafters and prosecutors. Ryan's blog is now the only blog I regularly read for Fed Cir coverage.

Today I want to mention Mark Terry's Florida Patent Lawyer Blog. Mark started blogging two years ago, about the same time I did, then he took some time off from blogging. But I'm glad to see that he's returned to the blogosphere. Earlier this week Mark posted about an Applicant's "motivation to combine" argument which lost at the BPAI.