Monday, October 31, 2011

BPAI finds that "selecting the product catalogs to search" does not require selection of multiple catalogs

Takeaway: A patentee in reexamination appealed an anticipation rejection of claims to an electronic procurement system. The patentee argued that the reference did not teach "maintaining at least two catalogs" as required by the claim. The patentee further argued that, even if it did, the selection feature relied on by the Examiner referred only to a single catalog, where the claim required selection of multiple catalogs since it recited "selecting the product catalogs to teach." The Board found that the reference taught both limitations, but went further to find that the selection step did not require selection of multiple catalogs. The Board offered no explanation for this interpretation. (Ex parte ePlus, Inc., BPAI 2011.) 

Ex parte ePlus, Inc.
Appeal 2010007804; Reexam 90/008,104; Tech. Center 3900
May 18, 2011

The patent in reexamination was directed to an electronic procurement system. A representative independent claim on appeal read:
26. A method comprising the steps of:
     maintaining at least two product catalogs on a database containing data relating to items associated with the respective sources;
     selecting the product catalogs to search;
     searching for matching items among the selected product catalogs;
     building a requisition using data relating to selected matching items and their associated source(s);
     processing the requisition to generate one or more purchase orders for the selected matching items; and
     determining whether a selected matching item is available in inventory.
(Emphasis added.)

In this third-party reexamination, the Examiner applied several anticipation rejections using various software product manuals. In one of the anticipation rejections (the "P.O. Writer Manual"), the Examiner read the "product catalogs" on a purchase order history through which the user could re-order a previously ordered item.

On appeal, the Patentee argued that the P.O. Writer order history did not include a catalog of data associating items with multiple sources as required by the claim. Specifically, the Applicant argued that the order history required the user to select an item and then enter a vendor number in order to re-order the item. "As any vendor may be entered regardless of whether there is any information associating Item A1000 to that vendor, it should be clear that no catalog is used or maintained in order to create a purchase order is this manner."

The Patentee further argued that P.O. Writer did not disclose selecting multiple product catalogs to search as claimed. The Examiner relied on a description of P.O. Writer's purchase order history feature as allowing the user to first select an item from "the Best Buy Catalog, as well as the Bayless catalog, or any other vendor you would like to select" and then allowing the user to by the item from "Best Buy, Bayless, or any other vendor you would like to select." However, according to the Patentee, this disclosed selecting a vendor rather than a product catalog.

The Board affirmed the P.O. Writer anticipation rejection. The Board first explained that "catalog" was broad enough to read on the disclosed purchase order history:
As discussed supra, we find that a “catalog” is defined as “an organized collection of items and associated information.” The purchase history disclosed in P.O. Writer Manual (FF 10) provides for items and associated information pertaining to different vendors. We do not find that the selection of previously ordered items from previously indicated vendors to be different from selecting catalogs and searching for items.While it is true that such a process could not be performed for items never before purchased, we find that the process steps recited in claim 26 read upon such a process as explicitly disclosed in P.O. Writer Manual.
The Board specifically adopted the Examiner's findings as to selecting multiple catalogs for search. But the Board went further to find that the limitation "selecting the product catalogs to search" did not require the selection of multiple catalogs:

While we would agree that the “maintaining” step of claim 26 requires multiple catalogs to be maintained, we do not find that the “selecting” step requires the selection of multiple catalogs. As discussed above, P.O. Writer Manual details that multiple catalogs can be maintained in the database of the system (FF 11). The system of P.O. Writer Manual could certainly infringe claim 26 if only one catalog was selected because the “selecting” step allows for multiple or a single catalog to be selected.

The Board also affirmed all the other prior art rejections.

My two cents: I was astounded by the Board's statement that the limitation "selecting the product catalogs to search" did not require selection of multiple catalogs.  After all, the word in question – catalogS – is plural. Furthermore, the claim also recites "maintaining at least two catalogs," so the rule of antecedent basis says that the thing being selected is the same thing being maintained, and the thing being maintained is absolutely plural ("at least two").

Clearly the Board is interpreting the claim language "selecting the product catalogs to search" to mean "selecting which of the catalogs to search." And in plain English, that's how a reader would usually interpret the claim language in question. But claims aren't plain English. They follow all sorts of special rules. Which lead me to the conclusion that the claim requires selecting multiple catalogs.

After I thought about it more, I decided that the Board's interpretation is indeed a possible interpretation. Maybe reasonable minds can differ on which one is correct. But I'm still astounded that the Board didn't give any explanation at all how they arrived at this interpretation. Instead, the Board merely concluded that "we do not find that the 'selecting' step requires the selection of multiple catalogs." This interpretation is far enough from the plain language of the claim that some analysis and explanation is needed.

The patentee filed a Request for rehearing with the Board but did not argue this claim construction issue. Instead, the Request argued a different point made in the Appeal Brief, that the references were not prior art under the "public use" prong of § 102(b). The Request was filed in July, but as of November 1, the Board hasn't yet issued a rehearing decision.

Monday, October 17, 2011

BPAI finds unreasonable Examiner's interpretation of "reflective" to include all materials since all materials reflect to some degree

Takeaway: The Applicant appealed various claims to a window blind, including a dependent claim which specified that the blade was reflective. In explaining the obviousness rejection of this dependent claim, the Examiner indicated that "all materials 'reflect', whether it be heat, light, rain, sound, flying debris, etc." The BPAI reversed the rejection, finding that the Examiner's interpretation rendered the term "reflective" superfluous, and noting that the Federal Circuit disapproved of such an interpretation in Stumbo v. Eastman (Fed. Cir. 2007).

Ex parte Wilkins
Appeal 20090012698; Application 11/167,701; Tech. Center 3600

The application related to window blinds.  An independent claim included a shutter frame, blades across the shutter frame and a control mechanism, with various other structural limitation for these elements. Dependent claim 21 further specified "at least one of said blades having a reflective surface."

The Examiner rejected all claims as obvious over a combination of various references. During prosecution, the Applicant argued the reflective surface feature of dependent claim 21. The Examiner did not address the Applicant's argument during prosecution.

On appeal, the Applicant argued all independent claims and a number of dependent claim, including claim 21. The Applicant argued in the Appeal Brief that the combination did not teach the reflective surface feature, and further noted that "the Examiner fails to provide any citation to disclosure in the references which teaches or discloses this claim element."

In the Answer, the Examiner provided additional explanation of the rejection of dependent claim 26. Specifically, the Examiner explained that "all materials 'reflect', whether it be heat, light, rain, sound, flying debris, etc."

On appeal, the Board found that the Examiner's interpretation of "reflective" was unreasonable because it rendered the term superfluous.
By concluding that all materials reflect, and as a consequence are “reflective,” the Examiner interprets the term “reflective” as used in claim 26 to be superfluous. Our reviewing court disfavors any claim interpretation which would render a claim term superfluous. Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007). The Examiner has cited nothing in Music, Hordis or Edwards which would disclose a window blind and security shutter in which at least one side of the blades has a reflective surface under a reasonable interpretation of the term “reflective.”

The Board then reversed the rejection of dependent claim 26.

My two cents: A righteous smack down of the Examiner. It wasn't enough for the Examiner to say that all materials reflect light to some degree. No, the Examiner had to read it even broader than this, and say that reflection wasn't limited to light, but also included reflecting flying debris! Unbelievable.

This is one of the most egregious examples of not just failing to read the claims in view of the spec, but actually completely ignoring the spec. The only mention of "reflective" in the spec was this single sentence:
The blades may also be formed with at least one reflective surface, which can be presented to the exterior to reduce absorption of radiant energy from the sun in hot weather conditions, or to the interior to reflect back thermal radiation in the room, thereby reducing further heat losses in cold conditions. 
So when read in light of the spec, "reflective" simply does not mean reflecting rain, sound, or flying debris. 

Unfortunately for the Applicant, at least one prior art rejection of each independent claim was affirmed.

Friday, October 14, 2011

BPAI finds floor covering art is not analogous to contact lens art

Takeaway: In a chemical composition application, the BPAI found that a reference in the field of floor coverings was not analogous art to the other two references related to contact lenses. The Examiner argued that reference in question taught polymer branching, a feature which was applicable in the field of contact lenses as well as floor coverings. However, the BPAI focused on reasons why an inventor of contact lens would look to a floor covering reference to solve a problem, finding that the hypothetical inventor would not. The Board noted that "underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the
principle in other fields." (Ex parte Devlin, BPAI 2011.)


Ex parte Devlin
Appeal 2010011637; Appl. No. 10/991,124; Tech. Center 1700
Decided  April 4, 2011

The technology in Devlin's patent application related to "radiation-curable prepolymers useful for making polymeric articles, preferably ophthalmic device, more preferably soft hydrogel contact lenses.”

A representative claim on appeal read:
1. A crosslinkable polyurea prepolymer ... comprising the components of:
     (e) at least one aminoalkyl polyalkylene glycol of formula (1) ...
     (f) optionally at least one organic di- or poly-amine, wherein the organic diamine is ...
     (g) optionally at least one diisocyanate selected from the group consisting of ...
     (h) at least one polyisocyanate having at least three isocyanate groups ...

The Examiner rejected as obvious using a combination of three references: two in the field of opthalmic devices such as contact lenses, and one in the field of floor coverings.

The Examiner asserted that the primary reference (Stockwell) taught elements e through g and part of h. The Examiner then used two additional references to modify the primary reference, resulting in the remainder of element h.  The Examiner relied on specific teachings in the two secondary references as reasons to combine: the first modification (Bany) enhanced dimensional stability of contact lenses, while the second modification (Rosenberry) provided "superior abrasion and gouge resistance."

In the Appeal Brief, the Applicant focused on attacking the rationale for combining the references. The Applicant noted that the abrasion resistance characteristic of Rosenberry was an advantage to a floor covering, while the dimensional stability feature provided by the other two references was an advantage to contact lenses.  The Applicant argued that one would not combine features when they provided these different types of advantages.

In the Answer, the Examiner defended his use of the floor covering reference (Rosenberry) by focusing on the technical properties of the chemical compound itself rather than the use of the compound, as follows:

[O]ne of ordinary skill would understand the relevance of Rosenberry et al. – it teaches a suitable method for enhancing the mechanical properties of polyurethane based on acrylate functional prepolymer. The mechanical properties are enhanced by incorporating additional acrylate functionalities. The fact that Rosenberry et al. uses the prepolymer as a floor coating as opposed to a contact lens does not take away from the fact that it has been rendered obvious to increase the amount of branching of the final polymer, which is to be used as a contact lens. Bany et al. has already established this relationship
(Emphasis added.)

The Board found that the floor covering reference (Rosenberry) was not analogous art to the other two contact lens references. First, the fields of invention were clearly not the same. Second, the specific problem identified by the Examiner in the primary reference Stockinger was dimensional stability, and this was also the problem that the first secondary reference (Bany) was concerned with dimensional stability.  Rosenberry, however, was not at all concerned with this problem, but rather on "superior gloss retention, abrasion, gouge and stain resistance surfaces.”

On appeal, the Board was not persuaded by the Examiner's focus on the similarity of the technical features as a reason to combine:
The Examiner’s reliance on the idea of branching of polymers and thermosets does not provide a reason why Rosenberry would have been considered by an inventor of contact lenses considering the dimensional stability concerns of Stockinger and Bany. Even accepting that there was similarity at an underlying level of scientific principle, that similarity does not answer the question whether a contact lens designer would have looked to Rosenberry for an answer to the dimensional stability problem. Put another way, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields.

The Board cited to In re Van Wanderham as support for its reasoning.

The Van Wanderham case is illustrative. In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967).
My two cents: I don't practice in the chemical arts, but the Board's reasoning resonates with me. By framing the discussion in terms of "scientific principles," I think the Board articulated what's wrong with focusing solely on technical features when making a combination.

Namely, at some level, almost all references are similar. Chemical compounds are used in all types of products and fields, as are mechanical parts, as are electronic components. So if we look for reasons to combine at this high level, then all prior art is fair game for combination. The analogous art doctrine exists to draw the line somewhere to say that No, a hypothetical inventor would not combine such disparate references.

The Board helped the Applicant out a bit by considering the issue of non-analogous art. The Applicant did make arguments against the rationale to combine, but did not specifically raise the non-analogous art doctrine.

The Board's cite to In re Van Wanderham was unusual. The Applicant didn't mention the case, and it doesn't appear to be referenced in any other BPAI decision.

Monday, October 10, 2011

BPAI broadly interprets "hardware error" as "error related to hardware" rather than "error in hardware"

Takeaway: In Ex parte Yamada, the BPAI agreed with Examiner that "hardware error" read on memory usage reaching a critical threshold because memory was a type of hardware. The Applicant presented a definition of "hardware error" as "an error caused by malfunction of a physical component of the computer," then argued an error in memory usage was a software error rather than an error in a physical component. The Board characterized this argument as irrelevant for not being within the scope of the recited claim limitations.

Ex parte Yamada
Appeal 2008005668; Appl. No. 10/607,158; Tech. Center 2100
Decided  December 9, 2009

The first independent claim read:

1. A method of terminating an affected application program thread, comprising:
     receiving an indication of a hardware error associated with an application program thread;
     determining the application program thread to be in a user operation mode; and
     terminating the application program.

At issue was the proper construction of the term "hardware error."

The Examiner rejected the claims as anticipated. The Applicant argued that the reference taught prompting a user when memory usage reaches a critical threshold rather than when a hardware error occurs.  In a Final Office Action, the Examiner explained that "since this error affects memory which is hardware, then Mathur discloses a hardware error."

On appeal, the Applicant referred to a definition of "hardware error" from an online dictionary: "error resulting from a malfunction of some physical component of the computer." The Applicant then argued that memory usage above a threshold is not caused by a malfunction of a physical component. The Applicant then explained that under the Examiner's interpretation, even an error that occurred when software allocated more memory than was currently available would be considered a "hardware error."
[T]he above example shows that the Examiner's asisertion is not consistent with the plain meaning of a hardware error as would be understood by one of ordinary sklll in the art.

In the Answer, the Examiner switched position and argued that it was the "system freeze" described in the reference that corresponded to the claimed "hardware error."
Examiner brings to the attention of the Appellant that a system freeze is equivalent to a hardware error. It is hardware error for many reasons. First, it is well known that a system is hardware. An error message that tells the user that the system is out of memory and freezes the rest of the system is a notification of a hardware error (freezing). ... The Examiner also brings to the attention of the Applicant that a physical component was never part of the claim language. As a result, a system freeze reads on a hardware error.

The BPAI first interpreted "hardware error" and found that its broadest reasonable interpretation was "an error related to computer system hardware, e.g., system memory." The Board further found that this interpretation was consistent with the Applicant's specification. In particular, the Board noted that the specification referred to a machine check abort (MCA) signal as a "hardware error signal” and that the specification further stated that the MCA signal "may occur when an error occurs in reading and loading memory data, i.e., from corrupted memory."

Applying this interpretation to the teachings of the reference, the Board found that:
Exceeding a memory usage threshold (causing unstable system performance (FF 3)) and a system “freeze” are system errors related to system hardware (memory), i.e., system hardware error. Appellant’s claimed limitation – receiving an indication of a hardware error – is structurally and functionally equivalent to the method described by Mathur. Appellant’s argument that a hardware error is an “error caused by malfunction of a physical component of the computer” is not within the scope of the recited claim limitations, and is therefore irrelevant.

The Board then affirmed the anticipation rejection.

My two cents: The Board got this one wrong. Certainly memory is a type of hardware. But the term "hardware error" is best understood as an error in a hardware component, not simply an error associated with or related to a hardware component. That is, I agree with the definition presented by the Applicant in the Appeal Brief.

The Board incorrectly characterized the Applicant's argument about the meaning of a claim term ("a hardware error is an 'error caused by malfunction of a physical component of the computer' ") as arguing outside the claims.  You're not arguing outside the claims if the stuff you're arguing about is captured in the meaning of a claim term. 

Once "hardware error" is properly understood as "error in the hardware," it's clear to a POSITA that the reference doesn't teach. While memory usage reaching a critical point may qualify as an error related to memory, it is not an error in the memory itself. The Applicant tried to make this point in the Appeal Brief, but apparently didn't explain the point well enough.

With regard to the system freeze, the Examiner's statement that "a system is hardware" glosses over the fact that a computer system includes software and hardware, and the term "system freeze" doesn't itself say whether the error is an error in a hardware component or in a software component. However, the reference itself clearly taught that the system freeze was an error in memory allocation, which is a software error and not a hardware error. Unfortunately, the Applicant didn't address the system freeze teaching, since the Examiner didn't bring it up until the Answer, and the Applicant didn't file a Reply Brief. As a result, the Applicant may well have lost on this system freeze teaching even if the Applicant did a better job of arguing about the memory usage threshold teaching.

Finally, the Applicant might have strengthened his position by making arguments for dependent claims which more clearly spelled out the type of error meant by "hardware error," e.g., memory read error.