BPAI affirms obviousness, finding that although reference was silent on the claimed feature, the feature was probably present

Takeaway: A Patentee appealed an inter partes reexam of a toy. In addressing an obviousness rejection, the Patentee argued that the primary reference did not teach peg templates that were opaque as claimed. The BPAI found that while the reference was silent on this point, such silence "makes it more likely than not that the disclosed peg template is opaque." The Board then upheld the obviousness rejection.

Details:

Mega Brands America, Inc. v. Hasbro, Inc.
Appeal 2010008455; Reexam. Control 95/000,098; Patent No. 6,729,932; Tech. Center 3900
Decided  June 7, 2011

The patent on appeal was directed to a toy, in the form of an illuminated polyhedron having apertured sides into which colored translucent pegs are inserted to create designs. (If you're an old timer like me, that sounds like a variation of a "Lite Brite" – which is now available for a new generation as an iPad app.)

Fig. 1 of the patent is shown below.

One of the independent claims on appeal read:

          30. An illumination toy for simultaneous use by a plurality of users, comprising:
               an illuminated polyhedron having
                    a base,
                    a plurality of sides extending upwardly from the base, every side extending upwardly from the base having an interactive activity disposed thereon,
                    wherein at least one of the sides comprises an apertured side having a plurality of apertures, and
an illumination source disposed between the sides such that the illumination source provides simultaneous illumination to all of the plurality of sides; and
               a plurality of translucent pegs;
               wherein the apertures of the at least one apertured side are adapted to receive the translucent pegs and retentively engage the translucent pegs.

All claims were rejected as obvious under several different combinations.

Claim 30 (shown above) was rejected as obvious over Anderson in view of Maxim. The primary reference Anderson was a spherical globe alleged to include all claimed features except the polyhedron. Anderson also taught that the sphere could be "any hollow structure or housing of any shape." The secondary reference Maxim was a color-change puzzle game in the shape of a cube, pyramid, or sphere. The Examiner alleged it would have been obvious "to make globe of Anderson in the shape of a polyhedron" because the selection of the shape would be a matter of design choice.

On appeal, the Patentee argued with respect to claim 30 that the primary reference Anderson taught away from flat aperture surfaces as required by the claim. According to the Patentee, Anderson's reference to a globe of "any shape" meant "shapes other than spherical, but not including shapes having a flat aperture surface such as cylindrical, ovoid, conical, football, etc."

The Board was not persuaded by this teaching away argument. First, the same passage in Anderson referring to "any shape" specifically mentioned known toy devices having a flat apertured surface. Furthermore, Anderson taught that increasing pegboard surface area would be beneficial. The Board noted that one way to increase the area is to increase the number of flat surfaces. The fact that Anderson's embodiment achieved the benefit of increased surface area in a different way (using a sphere) "does not show that the prior art is 'teaching away' from the invention claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.2004)."

The Board then affirmed the rejection of independent claim 30. 

The Patentee separately argued dependent claim 32, which further included "a plurality of opaque sheets" with "indicia thereon corresponding to positions of at least some of the apertures." The Examiner asserted that the peg templates in Anderson corresponded to the opaque sheets. The Patentee disagreed with this characterization of Anderson. According to the Patentee, not only Anderson did not teach that the peg templates were opaque, there was no reason for the peg templates in Anderson to be opaque since the part behind the template was opaque.

The Board was not persuaded by this argument about silence in the reference. The Board drew the opposite inference from the reference's silence – that the reference was probably opaque:

[W]e think the Patent Owner's reliance of lack of specific disclosure in Anderson as to opacity of the template is misplaced. We observe that most common materials are opaque, and materials that are not opaque are distinguished as being transparent or translucent. Anderson's silence with regard to the light transmissivity of the peg template makes it more likely than not that the disclosed peg template is opaque. 

The Board also found that Anderson's drawing of the peg template (shown below) provided further evidence that the template was opaque rather than transparent.

The Reexam Requester had argued a transparent surface would have been represented in a different manner:

As can be seen in FIG. 3, the front openings, but not the rear openings, of the apertures 40 are shown in the figure. In view of conventional USPTO drafting rules, had the peg template 38 been non-opaque (e.g., transparent), the apertures' rear openings would have been visible from the front through the peg template 38 and would therefore have been illustrated in FIG. 3. The fact that only the front openings of the apertures 40 are illustrated in FIG. 3 evidences that the peg template 38 shown therein is opaque.

The Board found this reasoning persuasive, stating that

Figure 3 of Anderson which shows a perspective view of a peg template 38 supports this finding in that the apertures 40 and the lower right edges of the peg template are not illustrated to show their depth dimension. See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (Drawings can be relied upon for what they reasonably disclose and suggest to one of ordinary skill in the art.).

The Board thus affirmed the obviousness rejection of dependent claim 32.

My two cents: I was originally troubled by the inference the Board drew from the reference's absence of teaching about opaque vs. transparent. After all, it's also possible that the reference didn't choose to describe the opacity or transparence because it was unimportant to the invention. That is, silence with regard to a characteristic doesn't necessarily mean the characteristic takes the most common form.

But on more careful reading, the Board didn't say that silence implied opaque, but rather that silence implied probably opaque. Clearly not good enough for anticipation. Good enough for obviousness? I'm not sure how probabilities play into obviousness. On further reflection, I decided I don't disagree with the Board's reasoning on this point.

I thought the Reexam Requester's drawing argument was clever. Maybe stretching it a bit, but clever nonetheless. I find clever arguments are more common in reexam than during normal prosecution, presumably because so much more is at stake.

I'm not sure exactly what "conventional drafting rule" the Requester was referring to. MPEP 1503.02 mentions transparency: "Oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror."

Does everyone really follow all the PTO's drawing conventions, such that we can assume that the patent drafter really intended to convey an opaque rather than a transparent template? OK, an issued patent carries a presumption of validity, but I'm not sure this presumption extends as far as to presume compliance with all PTO drawing conventions.

New Appeal Rules and New Terminal Disclaimer Form

New Appeal Rules go into effect Jan. 23: The PTO has adopted new rules for proceedings before the BPAI. The new rules apply to appeals with a Notice of Appeal filed on or after Jan. 23, 2012.  Several of the rules relate to Appeal Brief content and actually simplify things for Applicant. The biggest change to the rules relates to new grounds of rejection in an Examiner's answer: what constitutes a new ground, and what happens when a new ground appears. See the two-part summary of the rules at the PharmaPatents blog: Rules Simplifying Ex Parte Appeal Practice and New Guidance on New Rejections on Appeal.

EFS now offers web-based Terminal Disclaimer: The PTO has made a small but very useful improvement to e-filing. Instead of uploading a Terminal Disclaimer in the form of a PDF, you can now fill out a web-based Terminal Disclaimer form. See the PTO announcement here and more details here. The TD is automatically processed to verify that the filer is listed on the power of attorney, and if so the TD is automatically approved. In contrast, filing the old way requires a manual review of the TD by PTO personnel. One caveat: if you're not on the power of attorney, the assignee must sign, in which case you'll probably want to file the old way.

Intellectual Property Law Forum is dead but IP Talk Pro springs to life

One of my favorite online patent pros resources used to be the "Intellectual Property Law Forum." IP Law Forum is an online discussion forum which dates back many years – back to when the term "message board" was common.

Over the past five years or so, I've had many enlightening discussions with virtual colleagues on IP Law Forum. Sadly, the forum has been down for several months due to spam attacks.

I was thrilled to hear that an IPLF contributor ("Robert K S")  has started up a new forum at
http://iptalk.pro/.  Not  much traffic yet, but I hope it will grow as more folks discover it.

If you have a question or issue that stumps your colleagues, or you work alone and don't have any colleagues down the hall to bounce an idea off of, try IPtalk Pro.

Book Review: U.S. Patent Prosecutor's Desk Reference

U.S. Patent Prosecutor's Desk Reference
Joshua P. Graham and Thomas G. Marlow
Oxford University Press, May 2011
432 pages
$225
http://www.oup.com/us/catalog/general/subject/Law/?view=usa&ci=9780199740628

When I see the title "Desk Reference," I think of a book that covers a relatively broad topic in medium depth.  The "U.S. Patent Prosecutor's Desk Reference" delivers on this expectation. All four hundred pages in this book are devoted to what patent prosecutors do every day: responding to Office Action rejections. The depth is just right: much more than an overview, but not so many details that you lose the big picture.

The bulk of the book is the section "Rejections and Responses."  The remainder of the book consists of the text of the patent statutes and a Table of Cases.  My personal opinion is that the patent statute section is a waste of paper because if I want the text of a statute I look to the MPEP (online or my two-volume softcover). But going to a second source is an extra step, so maybe some will find it useful to have the statutes in this book.

The "Rejections and Responses" section is organized by statute –  § 101, § 102, § 103, § 112 – exactly how patent prosecutors categorize rejections.  It also covers design patents and reissue. For each rejection, the book first states the "Basis of the Rejection" (i.e., the text of the statute) and then includes sections for various responses to the rejection. For example, as possible Responses to anticipation, the book includes a section for "Reference Does Not Include Every Claim Element" and another section for "Reference Does Not Qualify as Prior Art." These sections are then broken down into subsections, for example, "Asserted Reference is Not a Printed Publication," "Asserted Reference is Publication of Applicant's Own Invention." In other words, these Response sections and subsections correspond to arguments you can make against the rejection.

The meat of the book, and its most valuable content, is in these Response sections and subsections. Here you learn not simply that "Does Not Include Every Claim Element" is an argument against anticipation, but exactly what words to use to make that argument. In other words, this is where you find boilerplate. 

The boilerplate arguments found in this book are derived from case law. In most Response section/subsection you get a choice of boilerplate based on different cases.  The boilerplate argument text is styled "Rejection Response." For many of these cases, you'll also find a "Quotable Language" section. Finally, each case includes a "Relevant Facts" discussion and a "Technology Area" category. A practitioner will find these two sections useful in choosing boilerplate which is most relevant to his particular rejection.

The case law, and boilerplate arguments taken therefrom, is quite extensive: well over two hundred different cases are included.  Of special interest to me was the fact that almost a third of them are BPAI decisions.  So when thumbing through the cases for a Response to Written Description rejection, you'll find not only a Federal Circuit case saying "drawings may be relied on to support the claims," but also a BPAI case standing for the same proposition. Thus, you can pick the case that fits your facts better, say, one related to drawings in a business method application rather than a mechanical application.

In my opinion, this book would be of great use to novice practitioners who have not yet developed a library of boilerplate arguments. For novices who practice outside of a firm and thus don't have access to boilerplate used by colleagues, this book might well be a lifesaver.  While a novice can find much of what he needs in the MPEP, the MPEP is focused on rejections. The structure of this book lends itself better to what a practitioner is looking for – arguments to use against rejections.

Even if you have been practicing for a while, you'll probably find more than a few useful items in the book. The list of rejections is very thorough, so it's a good place to turn for unusual rejections rejections like specific utility and multiplicity. The only rejection I wasn't able to find listed was the very rare 112 First, Fourth Paragraph rejection. And as I mentioned above, each Response section includes many different cases. So if you're an experienced practitioner and feel that your standard "does not teach" boilerplate just doesn't speak directly to the particular circumstances of the rejection, you can probably find something more specific to those circumstances in this book.

I believe most practitioners can benefit greatly from the book's section "The Examiner Misconstrued a Claim Limitation." I've said countless times on my blog that most rejections aren't really about what the reference teaches, but are instead based on a misunderstanding about claim construction. Yet from the file histories I read weekly in doing research for my blog, practitioners don't always get this. You should be arguing "The Examiner has misconstrued the claims" and this book gives you some boilerplate with which to do just this.

The book doesn't cover objections at all, but that choice doesn't surprise me. Most practitioners don't see objections as a big deal, and the MPEP does contain some bare bones information about objections. Also, because objections are handled by petition rather than appeal, there is very little precedential case law on objections.

The worst criticism I have of the book is this: it all but ignores KSR. In almost a hundred pages of various responses to an obviousness rejection, the sole mention of KSR is the "Non-Analogous Art" section, and only through a cite to the MPEP. Nor are there any post-KSR obviousness cases included in this 2011 book.

I find this baffling. Perhaps the absence of KSR is related to two other aspects of the case law chosen for this book. One, there are no Supreme Court cases. Two, the only Federal Circuit cases included in the book are appeals of BPAI decisions, rather than appeals of district court decisions. Now, I appreciate there are some differences between invalidity in the context of PTO prosecution and the context of district court litigation. There are also some differences in the standard of claim construction. So I can see preferring an "In Re" case over an "X v. Y" case. But I don't see how you can essentially ignore the seminal case on obviousness because the case originated in the courts rather than the PTO.

Finally, you should be aware that the book doesn't cover Bilski, since the Bilski opinion issued after the book's May 2011 publication date.

All in all, a good addition to a practitioner's library. Just be aware that you'll need to look elsewhere for obviousness arguments.

Back to blogging

I took some time off from blogging in December. Lots of work with end-of-the-year filings. And I wanted some time to relax over the holidays.

I'll return to blogging next week.