Board explains proper determination of whether prior art controller is "capable of" performing claimed function

Takeaway: In several appeals from Technology Center 1700, the Patent Trial and Appeal Board has reversed rejections when the Examiner asserted that a controller would have been "capable of" performing functional language. In doing so, the Board cites to precedent dealing with mechanical apparatuses, such as In re Schreiber, but also to more recent cases dealing with electronics, such as Typhoon Touch Techs., Inc. v. Dell.

One of the claims in Ex parte Fischer was directed to a plasma deposition apparatus, and included "a controller ... adapted for changing a sense of direction of said flexible substrate in said chamber ..." The Examiner asserted that the "adapted for" language was intended use, and found that the controller in the reference would have been capable of performing the function. On appeal, the Applicant argued that "adapted for" was not intended use, and that the reference must teach a controller that is programmed to support the claimed function. The Board agreed. The Board looked to the Applicant's specification and found it described a controller that was programmed to control the valves in relation to the substrate direction. The claimed controller thus becomes "a special purpose computer structured via programming to perform the control ... recited in the claims" (citing In re Alappat). Comparing that controller to the prior art controller, the Board explained that the "capable of" test was a much higher bar than that used by the Examiner:

While it might be possible to install software that would allow Lu's controller to control the valve opening based on the sense of direction of the substrate, the "capable of" test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a "controller", see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) [*22]  (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir. 2010)), that is not the case here.
(Emphasis added.)

Ex parte Stengelin included claims to a fuel cell system, including a cell voltage monitoring sub-system "configured to" perform various recited functions such as "determine if a wire connection has failed by measuring the voltage of each fuel cell in the fuel cell stack". The Examiner dismissed the functional language as not adding any structure to the monitoring sub-system, finding that neither the specification nor the claims themselves explain "what in the fuel system actually performs said function." The Board found error in the Examiner's application of the "capable of" rule.

The Board first noted that the Applicant's specification described an algorithm for determining whether various components in the fuel system have failed. The Board then explained the proper standard for determining whether a prior art apparatus is "capable of" performing a claimed function. 

Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to establish such capability recited in claim 1, the Examiner must demonstrate that the prior art cell voltage monitoring sub-system possesses the necessary structure, hardware or software, for example, the programming, to function as claimed. The prior art structure must be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed.Cir.2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id.

The Board then reversed, because the Examiner admitted that "neither reference is programmed or otherwise structured to function as claimed," nor did the Examiner "rely upon any reasoning why one of ordinary skill in the art would have configured the cell voltage monitoring subsystem to function as
claimed."

The claims in Ex parte Wheat were also directed to a fuel cell system, including "a controller that controls said hydrogen supply and said air supply to power said heater to warm said fuel cell stack and said water supply when said vehicle is not running" (emphasis added). The reference taught using a programmable logic controller to maintain the temperature of the fuel cell at its optimum operating temperature while the vehicle is running. Examiner took the position that the controller in the reference nonetheless satisfied the limitation at issue, because the structure of the controller did not depend on whether the vehicle is running. The Board found error in the Examiner's position.

The Board discussed the line of case law that requires an apparatus to be distinguishable on structure, then explained how this case law is applied to controllers, where algorithms define structure:

     The concept behind the “capable of” test is that an apparatus that is inherently capable of performing the function recited in the claim is an apparatus no different in structure from the apparatus of the claim. For instance, a parachute defined as opening in a certain functional way, does not have a different structure than one not disclosed as so opening if the prior art parachute is inherently capable of opening as claimed. See In re Ludtke, 441 F.2d 660, 664 (CCPA 1971). A funnel-like structure that functions to control the flow of oil is really no different in structure from a funnel-like structure defined as shaped to dispense popcorn kernels if the oil funnel is capable of dispensing popcorn in the same way. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Defining a structure in terms of its function does not necessarily distinguish it structurally from a prior art structure capable of performing the function.
     However, the situation is more complicated when what is being defined by the claim limitation is a controller. The function of a controller serves to define structure by defining software and/or hardware for performing the function.

Therefore, to be "capable of" performing the recited functions, the prior art controller must "contain some mechanism or software program for performing the required control". Since it did not, the Board reversed. Moreover, the Board explained that the “capable of” test requires that the prior art structure be capable of performing the function without further programming, so it is irrelevant to anticipation that "it might be possible to install software that would allow the prior art controller to warm the fuel cell stack and the water supply when the vehicle is not running."

The claims in Ex parte Kamihara were also directed to a fuel system, including "a control unit configured to control the electric power or electric current extracted from the fuel cell stack in accordance withas not adding any structure." The Examiner dismissed the "configured to" phrase as not adding any structure, asserting that “nothing in the disclosure . . . is drawn to being programmed or having programs” and that “only a general purpose computer is supported by the disclosure.” On appeal, the Applicant argued that the claimed control unit was a special program computer “programmed or otherwise configured to perform” the claimed functions. The Board reversed the rejection, citing In re Schreiber and using the same reasoning found in Ex parte Wheat:

Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the control unit must possess the necessary structure, hardware or software, for example, the programming, to function as claimed. The Examiner indeed de facto admits that neither reference nor their combination is programmed or otherwise structured to function as claimed, nor does the Examiner rely upon any reasoning why one of ordinary skill in the art would have configured the control unit to function as claimed.

The Examiner in Ex parte Dewey was similarly reversed. The claims were, once again, directed to a fuel cell system, and included "a controller for controlling the amount of heat provided by the heater ... " The Examiner asserted that the functional language did not distinguish over the prior art apparatus since the reference taught "a fuel cell stack, a heater circuit including a heater and a controller, which are the same structural features as those claimed by Applicant." The Board reversed, explaining as follows: 

     However, contrary to the Examiner's apparent belief, the mere fact that Breault's fuel cell system includes a controller is not an acceptable reason to believe that the controller inherently possesses the capability of performing the function required by Appellant's claim 1 controller. For the reasons detailed in the Appeal Brief and Reply Brief, the claim 1 controller is patentably distinct from a controller which is not programmed or otherwise designed to perform the claim 1 function. (Internal citations omitted.)
     Similarly, as correctly argued by Appellant, the record provides no acceptable reason for the Examiner's above presumption "that [in Breault's system] the current and voltage flow through the heater are also being monitored by the controller."

My two cents: Good stuff for Applicants. This sort of broad brush treatment of the "capability" of a reference isn't common in the art units where I do most of my work. But it appears to be all too common in Tech. Center 1700. I realize that none of these decisions are precedential. Even so, if faced with such a rejection, I would borrow the reasoning used by the Board in these cases. It's a good way to school the Examiner in how case law such as In re Scheiber is properly applied to computer or controller limitations.

Note that the Typhoon and Microprocessor Enhancement cases are infringement suits. However, the stuff about capabilities and functional language relates to claim construction, not infringement analysis. And while a different standard is used for claim construction standard during prosecution, I say the "capabilities" rule used by the Federal Circuit in these cases applies equally to prosecution.

Guest Post: A Cautionary Tale Relating to Use of Declarations Under 37 C.F.R. § 1.132

[Guest Post by Tracey Harrach, a registered patent attorney at Maschoff Gilmore & Israelsen. Tracey's practice includes all aspects of trademark and patent prosecution. She practices in a variety of technology areas, including: chemical formulations, processes, and syntheses; semiconductor processing and fabrication; biotechnology; and material science.]

Takeaway:  In a post-Therasense decision, a district court granted summary judgment on inequitable conduct stemming from declarations submitted in a reexamination proceeding (Reexam Control No. 90/010,874). Therefore, before submitting a declaration to the PTO, ensure: (1) any past or present financial relationships between the declarant and the patentee are fully disclosed, (2) declarations are provided only by individuals having skill in the relevant art, and (3) representations relating to distinctions over prior art are based on the personal knowledge of the declarant. (Caron et al. v. QuicKutz, Inc., 2:09-cv-02600-NVW (D.Ariz. Nov. 13, 2012.)

Details:

Declarations can provide an expeditious way to advance prosecution; however, declarations may also be fertile ground for charges of inequitable conduct.  While Therasense has significantly raised the bar for a party asserting inequitable conduct based on the patentee’s failure to submit a prior art reference, Therasense recognizes an exception to the “but-for” standard of materiality in connection with the filing of a “false affidavit.”  Therasense, Inc. v. Becton, Dickinson & Company, 649 F.3d 1276, 1292-93 (Fed. Cir. 2011).

A scathing opinion entered by the District Court in Arizona provides a reminder of the dangers associated with the use of declarations in practice before the PTO.  In Caron et al. v. QuicKutz, Inc., Case No. 2:09-cv-02600-NVW, the Court granted summary judgment of unenforceability due to inequitable conduct relating to U.S. Patent No. 7,469,634.  The Court identified three separate acts of inequitable conduct involving declarations submitted to the PTO by the plaintiffs. 

First, the Court found that plaintiffs committed inequitable conduct by submitting three declarations under 37 C.F.R. § 1.132 by individuals who had undisclosed prior financial relationships with the plaintiffs.  Order, at page 15.  See Declarations under 37 C.F.R. § 1.132 submitted on July 5, 2011 in Reexam. Control No. 90/010,874 (available on Public PAIR).  These declarations were submitted by the plaintiffs in order to establish that the plaintiffs’ products were unique in the marketplace.  Specifically, the plaintiffs argued to the PTO that “each declarant identifies that these die features and benefits are novel in their opinion and have never been commercialized in the scrapbooking industry before Spellbinders introduced this invention.”  See Office Action Response dated July 5, 2011, submitted in Reexam. 90/010,874.

The Court cited Ferring B.V. v. Barr Laboratories, Inc. for the proposition that “the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.”  437 F.3d 1181, 1187 (Fed. Cir. 2006).  The Court rejected the plaintiffs’ arguments that the prior relationships were minimal, and accordingly, did not need to be disclosed.  Specifically, the Court found:

Although Plaintiffs contend that the compensation each received was minimal, the evidence shows a basis for possible bias by each declarant. Clear and convincing evidence shows each declarant had motivation to provide an opinion favorable to Plaintiffs’ patent application. The PTO was deprived of evidence that it needed to determine the weight it should give to the declarations….
Order, at page 15.

This issue can be avoided by directly communicating to a declarant the importance of full disclosure of prior and current relationships and ensuring that those relationships are clearly recited in the declaration.  The PTO does not prohibit submission of declarations by declarants with relationships with the patentee.  On the contrary, the Federal Circuit explained in Ferring:

In coming to this conclusion, we fully recognize that inventors often consult their colleagues or other persons skilled in the art whom they have met during the course of their professional life. Accordingly, when an inventor is asked to provide supportive declarations to the PTO, it may be completely natural for the inventor to recommend, and even contact, his own colleagues or people who are, or who have been, affiliated with his employer and to submit declarations from such people. Nothing in this opinion should be read as discouraging such practice. Rather, at least where the objectivity of the declarant is an issue in the prosecution, the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.
437 F.3d at 1194-95.

Second, the Court found that the plaintiffs committed inequitable conduct by submitting declarations from two individuals who based their declarations solely on experience with the plaintiffs’ product as end users.  Order, at pages 14-15.  The Court found “[h]ad the PTO known that [the declarants] did not have professional experience in the relevant industry, it would have given little or no weight to their opinions, particularly regarding the novelty of Spellbinders’ dies.”  Id., at page 15.  In reaching this conclusion, the Court noted the plaintiffs’ representation that the declarations were provided by individuals with “experience in the arts and crafts and scrapbooking industry that are familiar in some way with the [plaintiffs’ products].”  Id., at page 14.  The Court found that the two individuals “[b]oth provided opinions using technical language that implied professional experience in the relevant industry rather than merely experience as a customer….”  Id. 

A practical way to avoid this issue is to have a declarant prepare his or her own declaration and to include in the declaration a description of the declarant’s relevant experience. This approach ensures that the language used by the declarant is commensurate with the declarant’s experience.  Further, by relying on the declarant to describe his or her qualifications, the PTO will have relevant information available to gauge the declarant’s competence to reach the conclusions recited in the declaration.

Third, the Court found that the submission of a declaration by the inventor and one of the plaintiffs, Jeff Caron, constituted “an affirmative act of egregious misconduct” due to unfounded and unsupported characterizations in the declaration of the prior art reference upon which the PTO relied.  Id., at page 21.  The declaration in question was filed by the Plaintiffs on October 24, 2011, in Reexam. 90/010,874, and purported to describe the teachings of International Publication No. WO 03/016035. The Court found that the declarant lacked personal knowledge relating to the assertions made in his affidavit.

The Court’s finding that the declaration constituted “an affirmative act of egregious misconduct” was based upon a finding that the declaration “misrepresented that it conveyed information that the declarant knew to be true and was submitted to the PTO with the misrepresentation that the declarant had firsthand knowledge about the subject of the declaration.”  Id.  The Court also found that Mr. Caron’s deposition testimony was inconsistent with his declaration.  According to the Court, “his deposition testimony was more than evasive; it was false or misleading. If his deposition testimony was true and responsive, then his 2011 representations to the PTO are, at the least, misleading.”  Id., at page 20.

A similar scenario could plausibly occur when an attorney, and not the declarant, formulates the content of the declaration and presents the finished declaration to a declarant for signature.  In such a scenario, the declarant may not take the time to fully understand an argument prepared by the attorney, believing that the attorney’s understanding is sufficient.  As noted by the Court, however, declarations must be based on declarant’s personal knowledge.  In other words, it may not be sufficient to merely have sound technical arguments.  Rather, the arguments must be sound and the arguments must be based on personal knowledge of the declarant.  Again, this issue may be avoided by having a declarant prepare his or her own declaration. 

Blog Posts of Interest

If you're not a regular reader of Ryan Alley's blog, you should be. Ryan covers Federal Circuit cases, with a sharp focus on the aspects that interest patent prosecutors. For example, his recent post on 
In re Abbott Diabetes examines how the Federal Circuit limited the Board's expansive view of Broadest Reasonable Interpretation. And his recent post on Apple v. Samsung discusses the ramifications of using "each" in the context of "plurality."

I've always thought the Federal Circuit's application of 112P6 to software claims was illogical, but never sat down to write a cogent article about why. Kip Werking did a great job of explaining why the Federal Circuit's position is nonsense in his post The Illogic of the Algorithm Requirement for Software Claims at IP Watchdog. 

Property, Intangible, a blog written by in-house counsel Pamela Chestek, covers ownership of IP. Her recent post Assignment of a Continuation-In-Part discussed some tricky issues that can arise in drafting assignments to cover CIPs.

Later this week I'll have a guest post about a post-Therasense district court case involving declarations and inequitable conduct.

BPAI reverses obviousness rejection after finding combination was "more than the predictable use of a prior art element according to its established function"

Takeaway: The BPAI reversed an obviousness rejection of a claim to a mail processing system after finding that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." (Ex parte Ryan, Jr., BPAI 2009.)

Details:

Ex parte Ryan, Jr.
Appeal 2009004014; App. No. 09/777,592 ; Tech. Center 3600
Decided:  September 25, 2009

The application on appeal was directed to a mail processing system. A representative claim on appeal read:

     2. A mail piece verification system for processing mail pieces, the mail pieces having associated therewith respective mail piece data, the system comprising:
     a data center in operative communication with a plurality of mail processing centers,
the data center including a plurality of account files corresponding to a plurality of postage metering systems;
     the data center being adapted to
          store reset data in each of the plurality of account files representative of reset activity associated with the plurality of postage metering systems, respectively;
          receive respective mail piece data corresponding to the mail pieces from the plurality of mail processing centers;
     store empirical data in each of the plurality of account files representative of mailing activity associated with the plurality of postage metering systems, respectively;
     conduct a forensic accounting analysis of the empirical data and the reset data associated with a selected postage metering system using a previously defined time period over which to conduct the forensic accounting analysis; and
     download graphic data to the selected postage metering system to be included in the mail piece data of mail pieces subsequently prepared by the selected postage metering system if the forensic accounting analysis reveals that the empirical data is not consistent with the reset data for the selected postage metering system.
(Emphasis added.)

The Examiner rejected claim 2 as obvious over Hunter, Moore, and Connell. The issue on appeal was whether the combination of Hunter and Connell taught the elements emphasized above.

Specifically, in the Final Office Action the Examiner relied on Hunter for the "conduct a forensic accounting analysis" action, for the claimed "if" condition, and for taking an action – further investigation of possible fraud – in response to the claimed "if" condition. Since Hunter's responsive action was not the claimed "download graphic data" action, the Examiner then relied on Connell as teaching the "download graphic data" action in response to detection of fraud. In explaining how and why these features were combined, the Examiner used the following reasoning:

     To paraphrase in order to explain the rejection in a more simple manner, Hunter detects potential fraud by keeping track of postage value added to a meter, as well as mail pieces from that meter that pass through the postal system. If the postage having been purchased for a meter differs too much from the amount of postage on mail pieces from that meter that have been mailed, this is an indication of potential postage fraud. When such fraud is detected, Hunter initiates a responsive action to deal with the situation. In Hunter, that responsive action is to initiate an investigation (see Hunter, column 5, lines 31-39).
     Of course, claim 1 requires that the responsive action be not an investigation, but a download of graphic data into a meter that gets incorporated onto mail pieces for the purpose of identifying mail pieces originating from suspect meter users. It is necessary to turn to Connell et al. for this portion of the claim limitation.
     Connell et al. is a postal security system that also functions in response to possible postal fraud (see Connell et al., column 1, lines 30-52). Connell et al. works by incorporating graphic data onto mail pieces that indicates whether or not the postage on the mail pieces is legitimate. At any given point in time, there is a particular item of graphic data that is designated as indicating that a mail piece's postage is valid. This designated graphic data changes periodically. In order to keep their "designated graphic data" up-to-date so that their mail pieces are indicated as having valid postage, meter users in Connell et al. must occasionally download the latest version of the designated graphic data. Individuals who are not authorized to be metering mail pieces will not have access to up-to-date designated graphic data, and thus will mail mail pieces with out-of-date graphic data that indicate the mail pieces as potentially fraudulent. Therefore, Connell et al. provides the needed disclosure of graphic data on mail pieces that is used to identify potentially fraudulent mail pieces in response to meter fraud concerns.
     Since the out-of-date graphic data used by a potentially fraudulent user was at one point up-to-date graphic data that was downloaded validly to that user, the out..:of-date graphic
data in Connell et al. that identifies potentially fraudulent data is disclosed as being downloaded
to user meters.

On appeal, the Applicant did not argue the teachings of the individual references, but instead challenged the manner in which the features were combined. Specifically, the Applicant argued that the trigger for Connell's download action was much different from the trigger for Hunter's further investigation action:

[T]he system in Connell selects one of a plurality of stored indicia images [for download] based solely on the date that the indicia will be printed. ... The date has nothing whatsoever to do with whether or not a forensic accounting analysis reveals that the empirical data is not consistent with the reset data. ...  Without using the present claims as a road map, it would not have been obvious to make the multiple, selective modifications needed to arrive at the claimed invention from these references.

In the Answer, the Examiner maintained the rejection and also provided additional explanation.

The use of graphic data to identify postal fraud, as can be seen in the above passages from Connell et al. is a responsive action to the overall problem of postage indicium fraud. While the responsive action in Connell et al. is not a responsive action in the same specific and immediate way that the responsive action in Hunter is, the responsive action in Connell et al. is still a responsive action.
(Emphasis added.)

Also, while the Answer continued to rely on a specific motivation in Connell, the Answer brought in one of the KSR rationales, asserting that the claims “only unite old elements with no change in their respective functions and which yield a predictable result.”

The Board reversed the obviousness rejection. Noting the Examiner's reliance on the "predictable results" rationale from KSR, the Board instead found that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." The Board explained this statement as follows:

The Examiner states, “. . . the responsive action in Connell et al. is not a responsive action in the same specific and immediate way that the responsive action in Hunter is . . ..” Answer 26. We agree. While the overall invention in Connell may be directed to the prevention of postage indicia fraud, Connell describes the “responsive action” (i.e. the downloading of an address of a newly authorized indicia) relied upon by the Examiner functions to detect the postage indium fraud. The Examiner’s “responsive action” of Connell is not a response to a detection of an occurrence of postage indicia fraud but is a means that functions to detect an occurrence of the fraud. Connell’s “responsive action” performs the same function as the Hunter’s description of comparing purchased postage with used postage and not the further investigation of Hunter, as the Examiner seems to assert (see Answer 23). Further, Connell’s “responsive action” performs the same function as the claimed forensic analysis and not the claimed downloading of graphic data.  ...  Therefore, we find that the Appellant has shown the Examiner erred in rejecting claim 2.

My two cents: First, I give credit to the Examiner for providing a detailed explanation of the rejection. Second, I'm glad to see a successful attack on the common "predictable results" rationale. However, I think this fact pattern better fits a proposed-combination-does-not-teach-the-claim argument. That said, I think I figured out how to make the fact pattern fit the predictable results rationale. (Or, more precisely, the UNpredictable results rationale.)

The way I see it, the Examiner's combination rejection takes the form

• Claim includes action A (forensic analysis), result B (data not consistent) of action A, and action C (downloading graphic data) in response to result B.
• Hunter teaches action A, result B of action A, and action C' (initiate fraud investigation) in response to result B.
• Connell teaches action C in response to result B. 
• Combination results in action A, result B of action A, and action C. 

The Board disagreed with the Examiner's reading of the reference. That is, the Board found that Connell's downloading graphics data was not properly understood as action C in response to result B, but was instead action D (fraud detection). Thus, the Board found that the Examiner's combination did not produce the claim, which required action A, result B of action A, and action C in response to result B.

That's why I see the Board's reasoning as a natural fit for a proposed-combination-does-not-teach-the-claims argument, rather than an unpredictable-results argument.

But after thinking about this decision for a while, I think I see how to map this very same reasoning to the lack-of-predictable-results rationale. You could say that the predictable combination of Hunter and Connell is A, B as a result of A, C' in response to B, and D. But the claims require A, B as a result of A, and C in response to B. So the claim is not a predictable result of the combination, and the Examiner didn't make a prima facie case of obviousness. 

As a side note, you'll recall that the Examiner mentioned the predictable results rationale in the Answer, but also used an explicit motivation to combine from the secondary reference. The Board didn't address this alternative rationale.

Finally, I note that the Applicant also used a hindsight argument during prosecution and in the Appeal Brief, and the Board also found hindsight. Personally, I find hindsight to be a particularly UNhelpful way of viewing obviousness. Hindsight is the conclusion reached when the prima facie case isn't made ... the Examiner must have used hindsight because he hasn't made a prima facie case. Hindsight is not itself a standalone argument against obviousness.

BPAI finds "configured to be housed within or detached from the bay" requires both configurations, despite use "or"

Takeaway: In an application directed to a replacement battery pack for an electronic device, the issue on appeal was the phrase "a replacement battery pack configured to be housed within or detached from the battery pack receiving bay" (emphasis added.) The Examiner took the position that since the claim used the word "or" in describing the battery pack configuration, only one of the configurations was required to be found in the prior art. The Applicant argued that the proper interpretation of the claim required both configurations. In particular, the Applicant argued that the phrase "detached from" implied that the battery pack was previously "housed within," and thus the claim required both configurations. The Board found the Examiner's claim interpretation to be unreasonably broad in view of Applicant's specification, which made it clear that "the claim term ““or”” [was used] to mean that the replacement battery pack is configured to provide some functionality, both when the battery pack is disposed in the bay as well as when it is detached from the bay." (Ex parte Godovich, BPAI 2010.) Details:

Ex parte Godovich
Appeal 2009004289; Appl. No.. 11/139,851; Tech. Center 2800
Decided:  November 15, 2010

The application on appeal disclosed a replacement battery pack for an electronic device (below).

A representative claim on appeal read:

     10. A portable electronic device comprising:
     a main body;
     a battery pack for supplying power to the portable electronic device;
     a battery pack receiving bay (120) formed in the main body for removably-housing the battery pack,
     the battery pack receiving bay (120) having a connector electrically connectable to the battery pack; and
     a replacement battery pack (200) configured to be housed within or detached from the battery pack receiving bay,
     the replacement battery pack comprising
          a power storage section having a secondary battery,
          a power input section having at least one power connector for receiving electric power for charging the secondary battery, and
          a power output section having an output terminal for receiving electric power from the power input section and for electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay to power the portable electronic device.
(Emphasis and reference numbers added.)

Claim 10 was rejected as obvious over Applicant's Admitted Prior Art and a patent reference, Shoji. The rejection relied on AAPA for teaching the main body, battery pack and receiving bay, and on Shoji for teaching the claimed replacement battery pack. The rationale supplied for combining the references was substitution of AAPA's battery with Shoji's battery "in order to use the battery for a variety of applications with high power capacity."

With respect to the "configured to" clause of the replacement battery pack, the Final Office Action alleged that "Shoji discloses a replacement battery pack (A) configured to be housed within or detached from the battery pack receiving bay (mounted or inserted in Second bay)." In a Response to Final, the Applicant argued that the Shoji's auxiliary battery A was not configured as recited in the claim. The Applicant explained that, rather than being "configured to be housed within or detached from the bay," "[Shoji's] auxiliary battery A is an external battery which is connected to the electronic device externally via a connection cable between the power output section 3 and the electronic device." The Applicant also argued the "output terminal" element of the replacement battery pack.

The Advisory Action noted only that "the teaching and elements are both shown in the prior office communication, and the arguments presented by the applicant are not persuasive." The Applicant filed a Pre-Apeal Brief Request, then an Appeal Brief, each of which repeated the same arguments for claim 10.

The Examiner provided new information in the Examiner's Answer. Specifically, the Answer explained (for the first time) that "the claim recites, '– housed within or detached from –' so examiner is required to show one of the two not both" (emphasis added). The Answer then explained that Shoji disclosed one of the limitations – "detached from the [bay]" – by disclosing a power supply cable between the auxiliary battery and the electronic device, such that the "auxiliary battery is detached from the battery pack-receiving bay when the power supply cable is disconnected."

The Applicant filed a Reply Brief to challenge the Examiner's claim interpretation:

[A]ppellant respectfully disagrees with the Examiner's interpretation of the alternative expression in lines 9-10 of claim 10. The second part of the alternative expression in claim 10 explicitly recites that the replacement battery pack is configured to be "detached from the battery pack receiving bay." The term "detached" in claim 10 relates to the replacement battery back being "removed" or "taken out of" the battery pack receiving bay. This is the context in which the term"detached" should be read because the recitation "detached from the battery pack receiving bay" is prefaced by "housed within or", which corresponds to the part of the alternative expression in which the replacement battery pack is housed within (i.e., inserted into) the battery pack receiving bay. Stated otherwise, the expression "detached from the battery pack receiving bay" in claim 10 corresponds to the part of the alternative expression in which the replacement battery pack is removed or taken out from the battery pack receiving bay from the configuration in which the replacement battery pack is "housed within" the battery pack receiving bay, as recited in claim 10.
(Emphasis added.)

The Board agreed with the Applicant, finding the Examiner's interpretation to be unreasonable in view of the specification:

     The Examiner does not find that the cited art teaches both configurations. Rather, the Examiner takes the position that because these noted claims employ the word ““or,”” the cited prior art only needs to disclose a replacement battery pack that possess one of the recited configurations –– not both.
     We find the Examiner’’s interpretation to be unreasonably broad. Read in light of the Specification, it is more than reasonably clear that Appellant used the claim term ““or”” to mean that the replacement battery pack is configured to provide some functionality, both when the battery pack is disposed in the bay as well as when it is detached from the bay.

Based on this unreasonable claim construction, the Board reversed the obviousness rejection of claim 10.

My two cents: The board got this one right. Sometimes OR means AND. That is, while OR can be used to signal a list of alternatives, sometimes OR requires the presence of all the alternatives. In my mind, that's usually the case with "configured to X, Y, or Z." That was definitely the case here. Here's the only description in the spec relating to detaching the battery pack from the receiving bay.

[0051] The structure and function of the connector 116 of the replacement battery pack 100 are the same as for a conventional battery pack used for portable computers. When the replacement battery pack 100 is housed in the battery pack receiving bay 120 of the portable computer 105, the connector 116 is electrically connected to a connector provided in the battery pack receiving bay 120 to form appropriate electrical connection and functions as an output terminal for providing power to the portable computer 105. When the replacement battery pack 100 is detached from the battery pack receiving bay 120 of the portable computer 105, the connector 116 of the replacement battery pack 100 can be electrically connected to corresponding connectors of a charging station and functions as an input terminal for charging the replacement battery pack in a conventionally known manner.

The spec clearly describes two configurations and in no way suggests that either is optional.

The Board focused on the narrow issue of interpreting "configured to X or Y". The Board reversed because the claim required both X and Y and the Examiner found only Y ("detached from").

However, the claim language went further that that, since it also included this specific recitation:

the replacement battery pack comprising ... a power output section having an output terminal for ... electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay 

The Applicant should have argued this particular point, since the Examiner did not allege that Shoji taught a replacement pack housed in the bay.

I note that the claim uses "for" ("an output terminal ... for electrical connection"). Some Examiners like to ignore any phrase following "for" as intended use. Some Examiners treat "when" the same way. It's best to find this out early in prosecution so you can either amend so that the Examiner gives the phrases patentable weight, or persuasively argue why the language is not intended use.

Finally, though I do think the Board was right to reverse, the Applicant might have been better off amending during prosecution so that the claims used AND rather than OR. Seems like the claim could easily have been structured to recite something like "a first configuration AND a second configuration."

Related posts:

Careful when using OR in a claim to modes
In a claim to "A" or "B", is B always optional

Does the BPAI require a definition from the time of filing?

If you read this blog regularly, you'll know that claim construction is often the dispositive issue on appeal. Claim construction arguments are, in the end, arguments about the meaning of claim terms. I've posted several times about using dictionary definitions to make persuasive arguments about the meaning of a claim term. (See this list of posts tagged with "definition"). But what source should you use for a definition? And since claim terms are to be interpreted according to meaning at the time of filing, do you need to show a date for the definition?

Today's post will address the second question. I plan to cover the first question in a later post. (In the mean time, check out the post "What does the BPAI think of Wikipedia definitions?" at the Florida Patent Lawyer blog.)

The Board has on several occasions refused to consider a definition that is undated. For example:

[The Applicant's] citation lacks a date to ensure that it reflects knowledge as of the time of their invention.
Ex parte Hyland, BPAI 2011.

However, both the Examiner and Appellants failed to provide corresponding dates indicating that such definitions come from dictionaries that precede the effective filing data of the present patent application. We therefore decline to adopt the respective dictionary definitions offered by the Examiner and Appellants.
Ex parte Raith, BPAI 2012. See also Ex parte Hicks, BPAI 2011 and Ex parte Moran, BPAI 2011.

Though I don't know of a case in which the Applicant provided a dated definition that postdated the Applicant's filing date, I suspect the Board would refuse to consider such a definition for the same reason.

The Board often introduces a definition of its own when the parties do not. When doing so, the BPAI is inconsistent about whether its definitions have dates before Applicant's filing date. See Ex parte Beer (dictionary dated 1971); Ex parte Raith (dictionary dated 2000); Ex parte Schmitz (dictionary dated 1996); Ex parte Reiter (citation with copyright 2012); and Ex parte Gerards (citation to online dictionary "visited Apr. 21, 2012").

Does the meaning of claim terms change so rapidly that we really need to introduce dated definitions? Would it make more sense to presume that a definition reflects the meaning at the relevant date, and let either side rebut the presumption?

The Board recently took this approach in the reexamination appeal Nike v Adidas (PTAB 2012). In the Nike reexam, the parties argued over the meaning of "inflection." In deciding the issue, the Board introduced a dictionary definition of this word. However, instead of noting the date of the definition, the Board instead applied a presumption about the date:

The definitions of general terms cited herein are believed to accurately reflect the meanings of those terms as of the effective filing date(s) of the rejected claims.

I think this approach makes sense during prosecution. After all, most applications and even issued patents are appealed within 10 years of the time of filing, and I doubt that many dictionary definitions change much in that period. So this seems like a reasonable presumption.

I wonder if this presumption is available to Applicants? Maybe. But don't rely on this. Instead, you should provide the date of any definition you rely on. And better yet, provide some evidence of this date rather than a mere assertion.

Applicant wins petition and avoids labeling figure as prior art

Takeaway: During prosecution of an application for a fuel cell system, the Examiner objected to FIG. 1 because it was not designated as prior art, yet "only that which is old is illustrated." The Applicant filed a Petition in response to the objection. The TC Director granted the Petition, apparently based on assertions in the Petition that FIG. 1 included "part of the claimed invention" and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26 ... forms part of the invention."

Details:
Application of Kolodziej
Appl. No. 10/948,402
Tech Center 1700
Petition Decision  January 26, 2009
(available through Public PAIR)

The application was directed to a fuel cell system. The (single elected) independent claim included various system components and a controller. Specifically, the claim recited "a controller for controlling the bypass valve and the pump based on the temperature of the cooling fluid, said controller controlling the bypass valve and the pump in combination."

In a first Office Action, the Examiner objected to FIG. 1 (shown below) because it was not designated as Prior Art. The Examiner required this designation because "only that which is old is illustrated."

Rather than amending FIG. 1, the Applicant instead argued that "Figure 1 is not prior art in that the design of the controller 28 controls the pump 20 and the bypass valve 26 makes the controller 28 novel and unobvious." The Applicant elaborated on the inventive concept by explaining that the claim required controlling the pump and valve in combination rather than independently.

The Examiner maintained the drawing objection in a Final Office Action, and gave this additional explanation: "[T]he discussion of the Related Art [in Applicant's specification] fully describes FIGURE 1 (See paragraph [0009])."

The Applicant appealed the prior art rejections and simultaneously filed a Petition under § 1.182 to fight the drawing objection. In the Petition to the TC Director, the Applicant asserted that "figure 1 includes more than what is old, and particularly includes part of the claimed invention." The Applicant acknowledged that FIG. 1 was described in the background, but explained that operation of the controller 28 depicted in FIG. 1 was part of the invention described in the detailed description. The Applicant asserted that "how a controller operates structurally defines that controller." (The Applicant relied on In re Noll (CCPA 1976) for this proposition.)  Thus, the Applicant argued, FIG. 1 is not prior art, since how the controller operates the pump and valve "is part of the invention."

Shortly after the Examiner's Answer, the Director of TC 1700 granted Applicant's Petition and withdrew the requirement to label FIG. 1 as Prior Art. The Petition Decision provided no explanation, and merely referred to Applicant's assertions that FIG. 1 included "part of the claimed invention," and that the invention included the pump 20, the bypass valve 26, and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26."

My Two Cents: I too would think twice before labeling something Prior Art, since a litigator would probably try to broaden that admission into something never intended by the drafter/prosecutor. Yet if FIG. 1 is a block diagram of known components, maybe it is Prior Art. What in FIG. 1 itself distinguishes the controller 28 over a prior art controller? Sure, it's programming ... but is that programming really shown in any way in FIG. 1? Maybe a better approach is to have a FIG. 1 that includes a block inside the controller that represents the novelty – maybe call it "control algorithm X" – and then have the flow chart of FIG. 2 reference numeral X.

The Applicant petitioned on final and simultaneously pursued an appeal of prior art rejections. Separate issues meant the Applicant could pursue both in parallel. Petitions are less useful when you really want a petition decision before you respond to other issues in the Office Action.

Finally, I wish petition decisions were searchable, because I think petitions are a good tool to have in the toolbox. But until they are, I'll be limited to posting about petitions that I come across randomly while looking at other things.

BPAI affirms anticipation based on reasoning that performing action on whole implies peforming action on all parts

Takeaway: In a reexamination appeal, the BPAI considered the Patentee's arguments that a reference did not disclose "monitoring the operating system for an event". The Board first found that the reference taught monitoring a computer system for an event and also taught that the computer system included an operating system. The Board then affirmed the rejection since "Appellant does not sufficiently demonstrate any differences between ... continuously monitoring the computer system (including the operating system contained therein) for an event ... and the claimed feature of monitoring the operating system for an event. Nor do we identify any differences since in both cases, a computer system and operating system of the computer system are being monitored for an event." The Board's reasoning thus appeared to be that since the whole (computer system) was monitored, any included component (operating system) was also monitored.

Details:

Ex parte Finjan, Inc.
Appeal 2011003035; Reexam 90/008,684; Tech. Center 3900
Decided  June 6, 2011

The patent under ex parte reexamination involved virus protection software. A representative independent claim read:

1. A computer-based method, comprising:
     monitoring the operating system during runtime for an event caused from a request made by a Downloadable;
     interrupting processing of the request;
     comparing information pertaining to the Downloadable against a predetermined security policy; and
     performing a predetermined responsive action based on the comparison, the predetermined responsive action including storing results of the comparison in an event log.
(Emphasis added.)

During the reexam, the Examiner rejected claim 1 as anticipated by a non-patent reference (Rx PC - The Anti-Virus Handbook) which described a software package ("Virex PC") containing two anti-virus programs, VPCScan and VirexPro. The Patentee responded by arguing that several of the claim elements were not taught by the reference – and submitted declaration evidence to supplement these arguments.

One of the elements argued on appeal by the Patentee was the "monitoring" element. The Patentee argued in the Appeal Brief that Virex monitored a user-selected target file rather than the operating system. More specifically, the Patentee argued that Virex "sat in front of" a user-selected target file to intercept all requests associated with this file – regardless of which executable made the request. The Patentee contrasted this with claim 1, which described "monitoring all requests from Downloadable [files] to the operating system, not just requests to particular files." (Emphasis in original.) The Patentee then referred to the expert declaration to provide more technical detail about the workings of Virex:

In order to monitor the operating system for events caused by requests from Downloadables as required by the claims, requests to both selected and non-selected files and file types must be monitored. Per the expert affidavit of Dr. Giovanni Vigna (Paragraph 4), file-based Virex and VirexPRO did not and could not monitor an entire operating system for a requested action or resulting event from a requesting file or program (hereafter "virus file"), the Virex programs could only monitor actions to be taken on pre-determined target files. More particularly, the Virex programs hijack the response routine of specific software interrupts. By doing this, they are able to monitor only a subset of the operations that can be performed by a program (that is, those that are associated with the software interrupt), and, as a result, they are not capable of monitoring the operating system in a comprehensive fashion.

In the Answer, the Examiner responded to the Patentee's arguments. In response to the Patentee's assertion that Virex did not monitor the operating system, the Examiner cited to teachings in the Handbook that Virex monitored requests for disk formatting and requests for disk reads and write. According to the Examiner, "detecting these activities requires that Virex monitor subsystems of the operating system such as the file system, memory system, network system, and run-time execution system." In response to the Patentee's assertion that Virex monitored only user-selected files, the Examiner clarified that the rejection relied on teachings about installation. The Examiner explained that Virex's installation options allowed the user to select all files (via a wildcard ). With this option chosen, Virex would then monitor all files, i.e. "an entire operating system", at runtime.

The Patentee filed a Reply Brief to rebut points in the Examiner's Answer. According to the Patentee, "protecting every file on the computer is not the same as monitoring the operating system." Having the user "manually select every file or extension" is "incredibly inefficient and substantively different from monitoring the operating system" since "if any new files or extensions are added to the computer then the user would need to manually select those files."The Patentee then characterized user selection of every file on the computer as "a construction of the Examiner" that is "not mentioned in [the Handbook]." As for the Examiner's reliance on the teachings about disk formatting and disk reads/writes, "the 'features' are never described in any detail and [the Handbook] does not disclose anything about how these features are performed."

The Board affirmed the anticipation rejection. With regard to the Patentee's "monitoring" argument, the Board referred to the Handbook in making these findings of fact: Virex continuously monitored a computer system which included an operating system; and Virex created an alert when an attempt was made to perform tasks such as executing a program. The Board then drew the following conclusion:

Since [Virex] continuously monitors a computer system that includes an operating system for an “event” (e.g., an attempt to run a program or an attempt to terminate and stay resident – the attempt being a “request” for an event), we agree with the Examiner that Endrijonas discloses monitoring the operating system of the computer system for the event as recited in claim 1.

The Board explained why the Patentee's arguments were unpersuasive:

Appellant does not sufficiently demonstrate any differences between the [Virex program] continuously monitoring the computer system (including the operating system contained therein) for an event (e.g., an attempt to run a program or an attempt to terminate and stay resident) and the claimed feature of monitoring the operating system for an event. Nor do we identify any differences since in both cases, a computer system and operating system of the computer system are being monitored for an event.

Postscript: The Patentee appealed to the Federal Circuit. But the appeal involved another issue (whether or not the Virus Handbook was an enabling reference) so that Fed. Cir. stayed the appeal pending decision on another case on the presumption of enablement for non-patent references, In re Antor Media. Antor was decided in Aug. 2012, but no decision has been issued yet in In re Finjan.

My two cents: Right result. Bad reasoning.

The Board's simplistic reasoning was based on the unsupportable premise that performing an action on a whole implies performing the action on the components of the whole. Probably true in some contexts, but it's hardly a general truth. Does "painting a house" mean painting: 1) the exterior; 2) the exterior and the interior; 3) exterior, interior, and contents of the house; 4) exterior including the window panes and shingles on the roof? Generally, we mean #1. Maybe #2. #3 and #4 are unlikely choices.

In this case, "monitoring a computer system" might mean monitoring only the hardware components, or might mean monitoring only the software application components, or might mean monitoring only the operating system. I'm inclined to say that the Virus Handbook was talking about monitoring the operating system, since the entity that provides services for detecting actions like file access and program execution is usually referred to as an "operating system." But my point is that I reached that conclusion from the specific teachings of the reference, as understood by a POSITA –not from a premise that actions on a system applying to all components of the system.

New rules for inventor declaration and power of attorney

Heads up: Big changes to patent practice starting September 16, 2012. Several new rules packages to implement various provisions of the America Invents Act (AIA) take effect on that date. The only rules package I'll talk about here relates to inventor declaration and power of attorney. The Federal Register Notice can be found here. PharmaPatents has a nice overview of these rules here. IP boutique Oblon Spivak has a FAQ here.

The new rules affect both the procedures for filing declarations and the substance of the declaration itself. Carl Oppedahl, an experienced practitioner who has studied the new rules extensively, says "it is not much of an exaggeration to say that they change everything about the Oath and Declaration of the inventor."

Carl's guest post on Patently-O explains the importance of using the "old" declaration for "old" applications and the "new" declaration for "new applications". Sounds like transitional practice in the days leading up to September 16 changeover will be tricky -- you don't want to send out the old declaration for signature before September 16 and then end up filing it after September 16. To get all the gory details without reading the 52 page notice in the Federal Register, you can purchase Carl's webinar "What will change about the oath or declaration on September 16?"

One far-reaching change in the AIA is that inventors are no longer required to be “applicants” on patent applications. To implement this change, the same rules package taking effect on September 16 allows assignees to not merely prosecute applications, but to actually file in the name of the applicant.

Assignees will probably be glad to hear that the onerous procedures for handling missing or non-signing inventors have been replaced by a much simpler procedure. Under the new rules, you file a much simpler "substitute statement."

AIPF Annual Meeting October 1 and 2: "Intellectual Property as a Corporate Asset"

If you're interested in learning about using IP as a corporate asset, and in getting your CLE at the same time, check out the upcoming program put on by the AIPF (Association of Intellectual Property Firms) on October 1 and 2 in Washington, D.C.

The theme of this year's Annual Meeting is "Intellectual Property as a Corporate Asset", and the program includes presentations on theme topics such as "Models for Monetizing Patents in the 21st Century," "Asset Valuation," and "Tech Transfer after the Obama Technology Objective." The program also includes various IP law topics such as the AIA and the Patent Prosecution Highway, as well as practice development topics like "In-Person and Online Strategies for Networking" and "The Paperless Office".

This year will mark the third time I've attended this event. More info at AIPF 2012 Annual Meeting and Program Schedule.

BPAI affirms indefiniteness when claim positively recites "at least one flooring panel" and then refers to "panels of the least one flooring panel"

Takeaway: During prosecution, the Examiner rejected a claim to a flooring system as being indefinite. The claim positively recited "at least one flooring panel" but then referred to "lips configured to overlap ... a joint between panels of the at the least one flooring panel and the connecting element". The Examiner found that the inconsistency between "at least one flooring panel" (singular) and the "panels" (plural) rendered the claim indefinite. The Board affirmed, finding that the broadest reasonable interpretation of "at least one panel" encompassed a single panel, yet the reference to panels implies multiple panels. (Ex parte Grafenauer, BPAI 2012.)

Details:

Ex parte Grafenauer
Appeal 2010009906; Appl. No. 11/533,634; Tech. Center 3600
Decided:  February 29, 2012

The application on appeal disclosed flooring panels with connecting elements. Claim 15 read:

15. A system, comprising:
      at least one flooring panel with a decorative layer top layer, the at least one flooring panel comprising a tongue and a groove on side edges lying opposite one another; and
      a connecting element comprising a groove and a tongue on side edges corresponding to the tongue and the groove of the at least one flooring panel,
      the connecting element further comprising, in an area of the side edges, lips configured to be a sole sealing mechanism and to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.

During prosecution, the Examiner objected to claim 15, which used the phrase "at least one" with the plural term "panels."

As applicant is only claiming one panel, it appears the claim should be directed to --at least one flooring panel-- rather than "at least one flooring panels".

In response, the Applicant amended to consistently refer to "at least one flooring panel" (singular), so that the claim read:

A system comprising:
      at least one flooring panel ...; and
      a connecting element comprising ...
      the connecting element further comprising ... lips configured to ... bear on a top side of the at least one flooring panels and configured to overlap a butt joint between panels of the at least one flooring panel and the connecting element.

However, the claim did still refer to "panels of the at least one flooring panel." Because of this inconsistency, the Examiner rejected claim 15 as indefinite, taking issue with the "overlap" limitation:

Further, the limitation "overlap a butt joint between panels of the at the least one flooring panel and the connecting element" renders the claim indefinite (lines 8-9 of the claim). It appears the limitation should be directed to more than one panel as the claim recites the lips of the connecting element bearing on the top side of the panels (see fig. 1 of disclosure). However, the claim as presented, only positively recites a singular "at least one flooring panel" as previously noted.
(Emphasis added.)

The Applicant appealed the indefiniteness rejection of claim 15, along with several prior art rejections. Claim 15 is repeated below:

15. A system, comprising:
      at least one flooring panel ... ; and
      a connecting element
      the connecting element further comprising ... lips configured ... to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.
(Emphasis added.)

In the Appeal Brief, the Applicant referred to Figure 1 (shown below) to explain how a person of ordinary skill in the art would understand claim 15.

More specifically, Figure 1, clearly shows lips (9) configured to bear on a top side (8) of an adjacent panel (2) and configured to overlap a butt joint between panels (1,2) of the at least one flooring panel and the connecting element (7).
(Additional numbers added.)

The Examiner's Answer reiterated that the claim recited a singular panel with lips bearing on the singular panel, yet the figures showed each lip bearing on a separate panel. The Answer also stated that "it is unclear if the claim is reciting a singular flooring panel or more than one flooring panel."

The Applicant filed a Reply Brief with a lengthy rebuttal. The Applicant explained why a claim to a single panel nonetheless recited plural panels.

     Claim 15 recites, in part:
... the connecting element further comprising, in an area of the side edges, lips configured to be a sole sealing mechanism and to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.
... That is, a lip on each panel can overlap with an adjacent panel. This language is clearly described in the specification. The claims do not recite that more than one lip is configured to bear on the singular at least one flooring panel. The Examiner is misreading the claims and taking the claim language out of context.
     Also, Appellants submit that although one lip is shown in FIG. 1 and FIG. 2 for each panel, ... two lips can be required so that the lips can provide the sealing mechanism for two, adjacent panels. Additionally, in the context of the claims, the lips are used so that they can provide sealing between at least one panel (e.g., "singular"). ...
     Lastly, for claim 15 to read correctly and for it to be understandable, it is necessary to place the claimed elements in the proper environment. For this reason, although claim 15 is directed to at least one panel, the claim uses the terminology "panels" in order to show how the lips are used with adjacent panels. This is clear from the record and the specification.

The Board affirmed the indefiniteness rejection, focusing on the inconsistency between "at least one panel" and "panels of the at least one flooring panel."

     The broadest reasonable interpretation of the term “at least one panel” is that the term is sufficiently broad to encompass a single panel. On the other hand, the recitation of “panels of the at least one flooring panel and the connecting element” implies that the at least one flooring element must include a plurality of panels. The use of two different terms to identify the “at least one panel” and the “connecting element” implies that the connecting element is not a panel.
     Therefore, the broadest reasonable interpretation of claims 15-20 and 23 is indefinite. Depending on which interpretation of the term “at least one flooring panel” one adopts, claims 15 and 23 may be sufficiently broad to encompass systems having only a single floor panel or may be limited to systems each having a plurality of panels. The disclosure of paragraph [0016] and Figure 1 of the Specification, cited by the Appellant at page 6 of the Appeal Brief, does not resolve this ambiguity. 
(Emphasis added.)

My two cents: The Applicant really stuck to his guns here, and seemed unwilling to claim two panels – even though the novelty seemed to lie in the interactions between the connector and the two panels (i.e., tongue and groove). I don't get this reluctance.

What infringement scenario was the Applicant concerned about giving up by claiming two panels? Sure, such a claim would require a flooring manufacturer to sell two panels and a connecting element, even though the connector did provide a benefit (sealing) when used with only a single panel. But is that really giving up that many infringers? Won't a large number of flooring systems be sold with pairs of panels and a connector in between? Yeah, it's great to have a claim that catches every infringement scenario. But the Applicant here put the entire patent at risk by refusing to rewrite the claim in a way that made sense.

This very issue was explored a bit during oral arguments. The Applicant's representative stated that "a flooring system would ordinarily have more than one panel" and that the tongue and groove of the connecting element would be "connected to a groove and a tongue of respective flooring panels." The judge then asked: "If that's the case, then why not just recite flooring panels?" To which the Applicant's representative responded: "The client had decided that we want to say 'at least one' in this particular case to make it broader."

BPAI affirms obviousness of substituting parallel connector for serial even if reference did not teach equivalence

Takeaway: A Patentee in an inter partes reexamination appealed an obviousness rejection of a dependent claim. The Examiner used the substitution rationale from KSR, substituting a Firewire connector for a USB connector. The Applicant argued that "[the reference] does not disclose that the pin configuration, the wiring scheme required or operation of the two [connectors] are equivalent." The Board affirmed the rejection since the Examiner made the requisite findings of fact discussed in MPEP § 214(B), and the Patentee did not show error in these findings. The Board explained that a teaching of equivalence is not required support a rejection under the KSR substitution rationale. (Milan v. Apple, BPAI 2012.)

Details:

Milan v. Apple
Appeal 2012008569; Reexamination No. 95/001,083; Tech. Center 3900
Decided  Aug. 7, 2012

The patent under reexamination described a flash memory device designed for use with a set of converter plugs. As shown in the figures below, the pin configuration (416) on the flash memory device (400) was configured to mate with several different converter plugs, including a 4-pin USB plug (FIGs. 12A-C) and a 5-pin mini-USB plug (FIGs. 12A-C).

The Patentee appealed various rejections, including independent claim 1 as obvious over two non-patent references ("Palm V Handbook Travel Kit" and "Handbook for Palm Tungsten Handhelds"), and dependent claim 3 as obvious over Palm, Tungsten, and Sirichai.

     1. A flash memory device comprising:
     a housing having opposed first and second ends;
     a flash memory drive enclosed in said housing; and
     a quick connector mounted in said housing and having a plurality of pins exposed at said second end, said pins being configured for electrical connection to a selected one of at least a first interchangeable connector and a second interchangeable connector ...

     3. The flash memory device according to claim 1 wherein said plurality of pins is six female pins arranged in two parallel rows of three pins each.

After rejecting independent claim 1 as obvious over the combination of Palm and Tungsten, the Examiner added Sirichai and used the substitution rationale to reject dependent claim 3. In rejecting claim 3, the Examiner made several findings of fact, including the ones discussed in MPEP § 2143(B) for the substitution rationale:

• One type of Firewire connector is known to have a six pin configuration arranged in two parallel rows of three pins each.
• The prior art (Palm combined with Tungsten) contained a device which differed from the claimed device by the substitution of one component (Sirichai's connector) for another component (Palm's connector).
• Sirichai disclosed USB connectors and Firewire connectors, and described them as known equivalents.
• A POSITA could have substituted one known element (Sirichai's Firewire connector) for another (Palm's USB connector), and the results of the substitution would have been predictable.

The Patentee attacked the obviousness rejection of claim 3 by disagreeing with the Examiner's finding that Sirichai taught the equivalence of USB and Firewire connectors. According to the Patentee, Sirichai's discussion of lighted electrical connectors instead taught that:

... the connector tip is a USB connector tip and in another embodiment the connector tip may be a firewire connector tip. The connector tip 150 of Sirichai is simply referring to "an opaque metal shell[.]" Sirichai only provides that both USB and firewire connector tips could utilize the light source disclosed; it does not disclose that the pin configuration, the wiring scheme required or operation of the two are equivalent.
(Emphasis added.)

The Patentee then concluded that "simply substituting the USB connector of Tungsten with the connector body for a firewire connector will not result in functionality of the resulting connector" and as a result, the combination would not result in claim 3.

The Board was not persuaded by the Patentee's "no equivalence" argument. According to the Board, "a teaching of such equivalence is not required" to support the substitution rationale described in KSR. The Board found that the Examiner had made the requisite findings of fact for a substitution rationale, and the Patentee had not demonstrated error in these findings. The Board therefore affirmed the rejection of dependent claim 3.

My two cents: The Board reached the right result -- at the level of detail expressed in the claim, it is obvious to substitute a USB (serial) connector for a Firewire (parallel) connector. Yes, the operation of a serial bus and a parallel bus is different. But none of those differences have anything to do with what's in the claims. Yes, the pin configurations and wiring schemes are different. Nonetheless, substituting one connector for the other is within the knowledge of a POSITA, and the Applicant didn't argue otherwise.

I do have a problem with the Board's statement about findings of equivalence, because I think it's misleading. Of course the claimed feature and the substituted feature from the reference aren't required to be equivalent in every way. But the two must be equivalent at some level, otherwise you couldn't substitute one for the other, right?

And you can fight an obviousness rejection on this point, i.e., by explaining the differences and why the reference feature wouldn't act as a substitute for the claimed feature. Maybe the lesson here is not to characterize such an argument as being about equivalence, but instead to couch it in terms of "results would not have been predictable" (i.e., the third finding mentioned in the MPEP discussion of substitution)?

I have a problem with this too, however, as the results of a badly-conceived substitution are probably quite predictable: the combination doesn't work as intended, or work as well, or too many modifications are needed to consider it obvious.

So to me, it is about equivalence, not predictability. Because it makes sense to argue that a POSITA would not substitute a blodget for a widget because they are not equivalent in these specific ways which relate to what is claimed. The Patentee here didn't win because he didn't (or couldn't convincingly) explain why the differences matter for what is claimed, and/or why the differences were too great for a POSITA to handle.

BPAI decides whether limitation refers to final state of disconnection or action of disconnecting

Takeaway: An Applicant appealed a written description rejection of a claim for a device used in rock drilling. The rejection hinged on the interpretation of  "device is loaded .... only when said rock bolt is disconnected from said coupling sleeve by rotation of the rock drilling machine." The Examiner interpreted this to exclude loading after disconnection, while the Applicant asserted that the phrase excluded loading during disconnection. The Board found that the proper interpretation was "during disconnection," since "disconnected" must be read in conjunction with the modifier "by rotation." (Ex parte Kanflod, BPAI 2012)
Details:

Ex parte Kanflod
Appeal 2012005389; Appl. No. 10/539,148; Tech. Center 3600
Decided   August 14, 2012

The application on appeal related to drilling machines. The independent claim on appeal was directed to a sleeve that couples a rock bolt (1) to a rock drilling machine (2). (See figure below.)

The limitation at issue read:

a locking device (7) ... said locking device is loaded to retain the rock drilling machine connected to the coupling sleeve only when said rock bolt is disconnected from said coupling sleeve by rotation of said rock drilling machine in a direction for disconnecting said first part of said coupling sleeve from said rock bolt for reinforcing a rock with said rock bolt.
(Emphasis added.)

During prosecution, the Applicant added the qualifier "only" in response to a prior art rejection. The Examiner then rejected the amended claim under § 112 First ¶, as lacking written description. The Office Action explained the problem with the phrase "only when ... disconnected" as follows:

[T]here is no structure to prevent the loading of locking device (7) to retain the rock drilling machine (2) connected to the coupling sleeve (3, 5) regardless of whether or not rock bolt (I) is connected or disconnected, since rock bolt (I) has no contact with either of locking device (7) or drilling machine (2) (even when the bolt is installed) and thus cannot prevent relative loading between device (7) and machine (2).
(Emphasis added.)

The Applicant submitted an expert declaration from the inventor to address the written description rejection. The declaration also explained the meaning of the limitation at issue. Referring to this declaration, the Applicant argued that the "only when ... disconnected" phrase should be read in conjunction with the "rotation" phrase:

[T]he locking device is loaded (locked) to lock the drilling machine to the coupling sleeve only when the drilling device is rotated in a direction to separate the rock bolt from the coupling sleeve, and not during a percussion operation.

The declaration, and the argument, then went on to reference portions of the specification that described this loading behavior in conjunction with the rotating.

The Applicant went to appeal on the written description, indefiniteness, and prior art rejection, with both sides essentially repeating the above written description arguments.

The Board found that the written description rejection was based on an improper claim interpretation, one which read the first portion of the wherein clause in isolation from the remainder of the claim.

A person skilled in the art would understand the above limitation to mean that the locking device is loaded just prior to disconnection of the rock bolt from the sleeve, i.e., when the rock bolt is still connected to the coupling sleeve. The Examiner improperly interprets the limitation to mean that the locking device is loaded only after disconnection of the rock bolt from the sleeve.

The Board reversed the written description rejection, finding that the Applicant's specification did convey possession of the properly interpreted claim.

The specification as originally filed explains that (1) during drilling the locking device 7 is unloaded (Spec. at 2:13-14) and (2) after drilling the locking device is loaded to disconnect the rock bolt from the coupling sleeve (Spec. at 2:14-19).

My two cents: Once again, the real issue is claim construction. It seemed to me that both sides recognized this, but could have done a better of job of explaining exactly how they were interpreting the claim. I had to keep reading the claim, and the arguments, over and over again.

The Examiner apparently read "disconnected" as referring to the bolt's final state, so that the phrase "only when" was interpreted to exclude loading with the bolt disconnected. On the other hand, the Applicant apparently read "only when ... disconnected" to refer to the action of disconnecting the bolt, or perhaps the bolt's intermediate state of being disconnected.

The choice of tense in "when disconnected" definitely sounds like a state rather than an action. It's only when the "by rotation" portion of the claim is considered that it even becomes possible to understand "disconnected" as an action. Still, I think the phrasing "only when said rock bolt is being disconnected" does a better job of conveying the Applicant's apparent intent.

My sense is that the issue of what tense to use comes up more in mechanical cases where you focus on describing structure first, and then on associating actions and states with the structure. Whereas action and state are more central to the claims I deal with every day in computer and electronics applications. Even so, I can think of instances where I've had to think about how to properly convey state, action, or a combination of the two – and it can be a challenge.

BPAI provides concise summary of how to rebut an Examiner's claim interpretation

Takeaway:  In an appeal involving a cartridge for caulking compound, the main issue was the meaning of of the term "punch" in claim limitations such as “punching an opening in the tubular container.” The BPAI explained that the Applicant's mere assertion that claim language did not encompass the teaching of the reference was not sufficient to rebut the Examiner's interpretation. To rebut, an Applicant should point to "precise meaning" in the specification, to a dictionary definition, or to a statement by a POSITA. (Ex parte Longo, BPAI 2012.)

Details:

Ex parte Longo
Appeal 2009014183; Appl. No. 11/328,537; Tech. Center 3700
Decided:  May 23, 2012

The subject matter on appeal was a cartridge for caulking compound. The main issue on appeal was the meaning of the term "punch" in claim limitations such as “punching an opening in the tubular container.”

For the "punching" limitations, the Examiner relied on a reference teaching of a "rapidly actuatable tool for making cuts" which "deforms the cylinder wall to form catches 17 as it cuts." The Applicant argued that the cutting described in the reference was not the same as punching.

The Board presented a dictionary definition ("to cut, stamp, pierce, perforate, form, or drive with a tool or machine that punches") to show that the Examiner's interpretation (punching" includes "cutting") was reasonable. The Board found that the Examiner's interpretation was "essentially unrebutted" by the Applicant.

Appellant, however, points to no specific wording in the specification that shows a precise meaning given to the term “punching” or to any related terms such as “punch” that would amount to interpretive guidance. Appellant also fails to provide support for this argument by pointing to any type of general purpose or technical dictionary as interpretive guidance that punching would not encompass the cutting performed in van Manen, nor does Appellant state that this is a term of art known to those of ordinary skill to exclude van Manen’s cutting. Appellant merely provides attorney argument against the Examiner’s interpretation with nothing further. 

Based on this claim interpretation, the Board affirmed the prior art rejections of the independent claims.


My two cents: I picked this decision not because it was controversial in any way, but because it included a clear and concise statement of what the Board is looking for in an argument about claim construction. A mere assertion in the Appeal Brief that a widget is not a blodget probably won't be convincing. Instead, you should refer to a "precise meaning" in the spec, to a dictionary definition, or to a statement by a expert about what the term means to a hypothetical POSITA.

On this last point, the Board's phrasing suggests that an Applicant statement in the Brief about what the term means to a hypothetical POSITA would be sufficient. However, other decisions I've read suggest instead that you need evidence. This evidence can take the form of another reference that uses the term, or a § 1.132 declaration from a person of ordinary skill in the art about the meaning of the term.