BPAI finds Examiner assertion that reference describes a commercial embodiment to be unsupported by evidence

Takeaway: During prosecution of a patent application directed to a razor, the Examiner and the Applicant disagreed over the location of the finger pad on a razor depicted in an anticipatory patent. The Applicant argued that the finger pad was in the middle rather than at an end. The Examiner then asserted that the razor in the reference was actually a Gillette Mach 3. The Examiner asserted that he reference drawing was not drawn to scale because he had personally measured a Mach 3, and the finger pad was much closer to the end than the Applicant argued (20% rather than 50%). The BPAI ignored the Examiner's unsupported assertion about the location of the finger pad, and reversed because the reference disclosed a finger pad in the middle of the handle rather than at one end. (Ex parte Gray, BPAI 2010.)

Details:
Ex parte Gray
Appeal 2009002038; Appl. No. 10/798,541; Tech. Center 3700
Decided  October 24, 2010

A representative claim on appeal read:

2. A shaving razor comprising
   a housing having a primary guard at a front of said housing and a primary cap at an upper surface at a back of said housing, one or more primary shaving blades between said primary guard and said primary cap,
   a trimming blade mounted at the back of said housing having a trimming blade cutting edge oriented away from said upper surface, and
   an elongated handle having a first end secured to said housing,
   said handle having a finger pad at said first end on the same side as said primary blades.

During prosecution, the Examiner rejected the claims as anticipated by a patent to Rozenkranc. The assignee of Rozenkranc also owned the application, a fact that would become pertinent later. With respect to Rosenkranc's disclosure of the claimed location of the finger pad, the Examiner provided this annotated figure:



The Applicant argued this limitation by making an analogy:

   The finger pad is placed closer to one end of the handle versus the other. one were to place a football on the 45 yard line of a football field one would not say that the football is placed at one end of the field.
   The same can be said for the alleged finger pad of Rozenkranc. The finger pad is positioned in the middle of the handle and not at the first end. Thus, even if there is a finger pad in the area indicated by the Examiner, this cannot fairly be construed to be positioned "at the first end" of the handle.

The Examiner maintained the rejection, but changed the interpretation of the reference to include new information about the dimensions. In doing so, the Examiner accused the Applicant of mischaracterizing the commonly-owned Rozenkranc reference:

[T]he handle of Rozenkranc is a Gillette Mach 3 razor handle, and is not drawn to scale. I have personally measured a Gillette Mach 3 Handle, and the finger pad (as you, Gillette should know) starts much closer to the terminus having the primary blades than 45% as you continually allege. It is at the 20% mark that the finger-pad begins, which is unquestionably "at a first end" thereof. Your argument that the pad begins at the 45 yard line is misleading, and not in good faith.

The Applicant went to appeal, but did not address the Examiner's comment in the Appeal Brief. The Applicant did, however, contest the Examiner's finding in the Reply Brief:

First, the Office asserts that the handle of Rozenkranc is a Gillette Mach 3 razor handle. The Applicant, Gillette, has no idea where this notion came from but it is factually incorrect. Second, the position taken by the Office that the middle of an object constitutes an end is unreasonable.

The Board agreed with the Applicant, finding that the Examiner's interpretation of "end" to read on the middle was unreasonable. The Board also drew attention, in a footnote, to the Examiner's unsupported findings about the Mach 3 razor:

3 The Examiner notes in the Answer that he had stated previously in the Final Office Action of July 9, 2007, that the handle of Rozenkranc is a Gillette Mach 3 razor handle, and that he personally measured such a handle and found that the finger pad starts at the 20% mark from the terminus of the handle. Ans. 22. The Examiner fails to provide any basis for the assertion that the Rozenkranc handle is a Gillette Mach 3 razor handle, and Appellants deny the accuracy of this assertion. Reply Br. 1.

My two cents: When an Examiner makes a finding that relies on personal knowledge – as was clearly the case here – the rules require a "personal knowledge" affidavit under § 1.104. Here, the Examiner could easily attest to the measurements of a Mach 3 razor, but that alone wouldn't be evidence that the Rozenkranc reference described a Mach 3.

Here, the Applicant didn't ask for an affidavit, but instead specifically denied of the allegation. Should the Applicant have asked for an affidavit? Since the rule makes a requirement of the Examiner, not the Applicant, I don't see that the Applicant gave up anything by not asking.

On the other hand, this case caught my eye because it's one of the few I've seen where a personal knowledge affidavit really does apply. Applicants often ask for one in situations where it doesn't apply: statements that are really about Official Notice or an allegation of something being well known. (See my post Examiner affidavit of personal knowledge for a discussion of this misstep.) So I thought it was a little weird that in the one instance that seemed to cry out for a personal knowledge affidavit, the Applicant didn't ask for one.

What about the Applicant specifically denying, in the Appeal Brief, the Examiner's allegation as "factually incorrect"? Did the Applicant investigate the commonly owned Rozenkranc patent and make a determination that Rozenkranc did not describe a Mach 3 razor? If not, was it a bad idea to put this specific denial in the record? And if the Applicant did make such a determination about its commonly owned patent, was it a good idea to put that determination in the record? Did the Applicant come close to admitting that Rozenkranc doesn't cover a Mach 3 razor?

As you can see, this case turned out – as many do – to be mostly about claim interpretation. I'll discuss the claim construction issue in more detail in a future post.

BPAI says incorporation by reference requires "specific journal, volume, and page number for the citation"

Takeaway: A biotechnology patent application dealing with soluble protein mutants for treating melanoma referred to a non-patent article as "Ujvari et al., 2001." During prosecution, the Applicant amended the specification to include information from this article in order to overcome written description and indefiniteness rejections. The Examiner then objected to the amendment as new matter, finding that the specification's incorporation by reference was ineffective because the article was referred to only by author name and year. On appeal, the Board agreed, finding that the "original Specification failed to provide written descriptive support for a citation to a particular Ujvari reference by a specific journal, volume, and page number for the citation." The Board noted that the general statement “[a]ll of the publications and patent applications and patents cited in this specification are herein incorporated in their entirety by reference” was not sufficient. (Ex parte Petrescu, BPAI 2011.)

Details:
Ex parte Petrescu
Appeal 2010002359; Appl. No.10/959,600; Tech. Center 1600
Decided May 20, 2011

The biotechnology application on appeal related to soluble protein mutants and methods for treating melanoma with these proteins.

During prosecution, the Examiner issued a written description rejection for an amended claim, explaining that the specification was deficient in several ways. First, "the specification is unclear about the size of the transmembrane domain of the tyrosinase that is truncated." Next, the specification referred to position 81 rather than claimed position 86. Finally, the specification referred to "position 81" but lacked a reference to a sequence id number.

The Applicant filed an After Final response and addressed the rejection by asserting that both size and sequence number information were provided in a journal article, one that was incorporated by reference into the application.

With regard to the size of the transmembrane domain, applicants respectfully assert that human tyrosinase is a type I membrane glycoprotein that has 553 amino acids with one C-terminal transmembrane domain. This information is published in Ujvari et al., J. Biol. Chem., 276:5924-593 1 (2001), which is incorporated by reference in the present application. ... Furthermore, Ujvar ... provides GenBank accession number Y00819 as the sequence for the human tyrosinase gene.

When an Advisory Action indicated that the rejection was not overcome, the Applicant then filed an RCE. The Applicant maintained that the journal article provided written description support for new claims referring to position 86 in sequence number id 6 as well as for the previous amendments. The Applicant also amended the specification so that "the primers listed in Example 2 [now] refer to SEQ ID NOs," including claimed id 6.

In the next non-final Office Action, the Examiner maintained the written description rejection and also entered a new matter objection. According to the Examiner, the incorporation by reference was ineffective:

The complete reference of Ujvari et al., 3. Biol. Chem., 276:5924-5931 (2001) [discussed in the response] is not part of the original specification. The instant specification on page 6, paragraph 0026, recite the reference as Ujvari et al, 2001. There is no details of the reference in the instant specification as originally filed about the Journal. Vol. No. or Pages. Therefore, incorporating Ujvari et al., J. Biol. Chem., 2765924-5931 (2001), by reference introduces new matter. Further, the sequence of SEQ ID NO: 6 and 7 was never a part of the sequence listing, and incorporating these sequences via the incomplete reference of Ujvari et al. would be improper as well.

The Applicant filed a response arguing that the incorporation by reference was proper:

[T]he only Ujvari publication published in 2001 that relates to tyrosinase is Ujvari et al., JBiol Chem, 276(8):5924-3 (2001), and therefore, it is obvious that applicants' recitation of Ujvari 2001 in the specification refers to this JBC article.

When the final Rejection maintained the written description rejection and new matter objection, the Applicant appealed. The Appeal Brief argued that the incorporation by reference was proper because the specification included a citation to "Ujvari et al. 2001" coupled with the statement "All of the publications and patent applications and patents cited in this specification are herein incorporated in their entirety by reference." The Applicant then explained in detail why "Ujvari et al. 2001" amounted to a "full citation":

[E]ven a broad Google search reveals only one Ujvari et al, 2001 reference, and that is : Ujvari, Aron R, Eisenhaure T, Cheng E, Parag HA, Smicun Y, Halaban R, Hebert DN 2001 Translation rate of human tyrosinase determines its N-linked glycosylation level. J Biol Chem. 276(8):5924-3 1. In addition, search of the NCBI's PubMed database reveals that only one reference listing Ujvari as first author was published in 2001, and the reference relates to tyrosinase and is found in the Journal of Biological Chemistry (J Biol Chem, 276(8):5924-3 (2001)). Furthermore, the Ujvari reference describes that tyrosinase has 7 N-glycosylation sites, two copper binding domains and one C-terminal TM domain, as stated in the specification just before the Ujvari reference is cited. Accordingly, it is clear that the Ujvari  2001 reference cited and incorporated in the specification is Ujvari et al al., J Biol Chem, 276(8):5924-3 (2001). Therefore, the Ujvari reference was properly incorporated into the specification. Material is "in" the specification if it is incorporated by reference.
(Emphasis added.)

The Applicant's written description argument essentially relied on the specification as amended.

The Examiner's Answer commented on the arguments from the Appeal Brief as follows:

   The blanket incorporation by reference statement in the specification does not sufficiently point to which material was intented to be incorporated from which document. The complete and clear identity of the referenced patent, application, or publication is not uniquely identified as required bv 37 CFR 1.57(a) such that correction can be made.
   Moreover, 37 CFR 1.57 does not permit incorporation from references which need to be identified bv further searching for a partially described reference such as Ujvari et al. (2001 ) [without the Journal name, volume or page number] with a broad or narrow "Google Search" or "search of the NCBl's PubMed database" in order to determine which of the existing literature references by the same author to be most relevant, applicable and suitable for "incorporation by reference". 37 CFR 1.57 applies even if the authors publishing field is quite narrow.

As a threshold matter, the Board found that the Examiner's new matter objection rose to the level of an appealable rather than a petitionable matter, citing MPEP § 2163.06 (When “both the claims and specification contain new matter  either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable.”).

The Board found that while the specification did properly incorporate a U.S. patent by reference, "there is no specific incorporation of Ujvari by reference." The Board then dismissed Applicant's argument that “only one reference listing Újvári as first author was published in 2001” as an "unsupported contention of Appellant's counsel." Finally, the Board noted that while another published paper did refer to the full citation, this "falls short of suggesting that this specific reference is the only 2001 reference, available to the public, that lists Ujvari as first author."

The Board then affirmed:

Absent evidence to the contrary, we are constrained to find that the preponderance of evidence on this record supports a conclusion that the original Specification failed to provide written descriptive support for a citation to a particular Ujvari reference by a specific journal, volume, and page number for the citation.

My two cents: If there was ever any doubt, this decision emphasizes the need to fully specify a citation rather than to use a shorthand abbreviation. The Applicant made some creative arguments (Google search, PubMed), but it makes sense to me that the Board insisted on "specific journal, volume, and page number."

I don't see incorporation by reference a lot in the applications I prosecute. Perhaps it's more common in other technology areas such as biotech.

BPAI reverses obviousness based on "mere duplication" rationale, finding that "these modifications go far beyond mere duplication"

Takeaway: The Examiner rejected a claim to a gutter system as obvious, alleging that the difference between the combined references and the claims was nothing more than a duplication of parts. As support for this rationale, the Examiner cited to In re Harza. The Board reversed, saying that In re Harza is limited to a mere duplication of parts, and that the modifications in this case went far beyond simply duplicating parts. (Ex parte Rippolone, BPAI 2011.)

Details:
Ex parte Rippolone
Appeal 2009015057; Appl. No. 10/787,429; Tech. Center 3600

The application on appeal involved gutters. Claim 7 read:

7. A gutter thawing system section comprising:
     a first molded gutter section comprising a liquid passage and a first multiple of linear air flow passage adjacent thereto;
     a second molded gutter section comprising a second multiple of non-linear air flow passages which connect at least two of said first multiple of linear air flow passages; and
     a third molded gutter section comprising an input connector and a return connector, said input connector in communication with at least one of said first multiple of linear air flow passages, and a said return connector in communication with at least one of said first multiple of linear air flow passages.

In a first Office Action, the Examiner rejected as obvious over Bortugno in view of Bernardi. The Examiner relied on Bernardi for non-linear air flow passages, and Bortugno for a gutter thawing system having a gutter section with a liquid passage and an air flow passage and a hot air supply. The Examiner acknowledged that Bortugno did not disclose multiple air flow passages or multiple gutter sections. However, the Examiner alleged that it would be have obvious to duplicate the parts in the Bortugno, relying on the "mere duplication of parts" rationale from In re Harza, 274 F.2d 669 (CCPA 1960).

In the first Response, Applicant made several arguments, including one that the "mere duplication of parts" rationale was not sufficient as a reason why a POSITA would modify the cited reference. 

The Examiner maintained the obviousness rejection on Final and defended the "mere duplication" rationale as follows:

However, citing In re Harza (see MPEP §2144. 04 (VI) (B) the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. It is the examiner's position that no new and unexpected result is produced, therefore, the modification of duplicating parts is not a patentable feature for the invention as claimed. As a result, requiring a rationale for modifying a reference is moot because the modification is, under Harza, not a patentable feature.

The Applicant filed an After Final Response repeating the argument that mere duplication was insufficient.

The Advisory Action did not add any further explanation about the mere duplication rationale.

The Applicant appealed, making several arguments for claim 7. The Applicant attacked the "mere duplication" rationale by arguing that the reasoning from In re Harza was inapplicable, since the modifications to Bortugno were more than mere duplication. Specifically, the Applicant argued that the three gutter sections recited in claims 7 were different and not duplicates.

In the Answer, the Examiner defended the use of the "mere duplication" rationale as follows:

The examiner maintains that the rejection [citing duplication of parts] was proper. While noting that the gutter sections in claim 7 vary in structure, the first limitation addressed was that there are a multiple of sections. Bortugno did not specifically provide this limitation, so the examiner stated to have this limitation would be obvious because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). The examiner further addressed the limitations relating to the varying gutter sections in the prior Office Action.

The Applicant filed a Reply Brief that addressed several points, but did not further address "mere duplication."

The Board found that In re Harza's "mere duplication" rationale was inapplicable and reversed the rejection. In explaining its reasoning, Board elaborated on the Applicant's basic argument that the claimed sections were more than duplicates:

The Examiner does not merely duplicate Bortugno’s gutter section to make multiples of that gutter section. The Examiner changes the structure of duplicated gutter sections. Bortugno’s original section lacks a non-linear air flow passage, yet the Examiner modifies a second gutter section to include a non-linear air flow passage. (See Ans. 7-8). Then the Examiner must further modify the duplicated second section to connect a first air flow passage in Bortugno’s original section with the duplicated section’s non linear air flow passage. The Examiner further modifies another duplicated section, a third section, in a different manner. The Examiner modifies the third section via Bernardi’s teaching to include a return connector. (See Ans. 8). This modification changes Bortugno’s system from a system without a return to hot-air type furnace 12 to a system with a return to the hot-air type furnace 12. The Examiner does not account for the modification the return to the hot-air type furnace 12 has on Bortugno’s exhaust ports 39. (See Reply Br. 2-3). These modifications are far beyond the holding in Harza, which is limited to a mere duplication of parts.
(Emphasis added.)

My two cents: According to the above-emphasized statement from the Board regarding Harza, you ought to be able to beat the mere duplication rationale any time the combination goes beyond mere duplication. But you're still vulnerable to an overall conclusion of obviousness. So I say don't stop at arguing that mere duplication/Harza doesn't apply. Instead, take a cue from the Board's reasoning, and explain in as much detail as possible what the differences are – i.e., what modifications are needed to go from the combined features in the references to the claimed invention. Seems to me that one or two major differences or even a bunch of tiny ones are indicia of non-obviousness.

Also see this post at Ryan Alley's blog for some suggestions in dealing with the mere duplication rationale. Ryan discusses the rationale in the context of the recent Celsis In Vitro v. CellzDirect decision.

BPAI interpets "cryptographic processor" based on processor capabilities not design

Takeaway: The Examiner rejected a method claim for a cryptographic system as anticipated by a system including a graphics processor. According to the Examiner, the step of "invoking an interrupt using the cryptographic processor" read on a graphics processor "by virtue of its ability to undertake graphics processing of the type commonly used in steganography and the watermarking or encoding of graphical data." That is, the Examiner interpreted "cryptographics processor" as a processor capable of processing images to find hidden messages, rather than a processor specifically designed for cryptography. The BPAI affirmed with no explicit discussion of the Examiner's claim interpretation. (Ex parte Blaker, BPAI 2011.)

Details:
Ex parte Blaker
Appeal 2009011364; Appl. No. 09/852,562; Tech. Center 2400
Decided:  October 17, 2011

The subject matter of the application related to cryptographic systems. A representative claim on appeal read:

15. A method of operating a cryptographic data processing system that comprises a host processor, a system memory coupled to the host processor, and a cryptographic processor integrated circuit that is coupled to the host processor and the system memory, the method comprising:
providing a command queue in the system memory;
loading a command block into the command queue using the host processor;
setting a value of an interrupt field in the command block to request an interrupt when the command block has been executed;
executing the command block using the cryptographic processor; and
invoking an interrupt using the cryptographic processor after executing the command block if the interrupt field in the command block is set to the value to request the interrupt.
(Emphasis added.)

In a first Office Action, the independent claims were all rejected as either anticipated or obvious. In the anticipation rejection of claim 15, the entire text of the claim was reproduced, followed by a cite to four sections of the reference.

In response, the Applicant argued that "invoking an interrupt using the cryptographic processor" was not taught. According to the Applicant, the final relied-upon portion of the reference "pertains to the rendering engine 104 generating an interrupt for the host processor rather than the graphics processor 114. The rendering engine 104 is used for address translation (Hussain, col. 4, lines 2-8) and, therefore, is unrelated to a cryptographic processor as recited in Claim 15." (Emphasis added.)

All rejections were maintained in the final Office Action. The final Office Action included a more detailed explanation of how the reference taught the invoking limitation:
The argument presented is based on the assertion that Hussain fails to teach the feature of ["invoking an interrupt using a cryptoprocessor ..."] Yet a careful reading of Hussain shows that such is indeed taught at the passages cited in the rejection; in col. 6 1ine 59 through col. 7 line 6; where a rendering engine is able to interrupt a host processor using sent values of a "ready variable".

The Applicant appealed and argued the "invoking using a cryptographic processor" language in claim 15. Specifically, the Applicant argued that the reference's rendering engine was not a cryptographic processor.

The aforementioned passage of Hussain cited in the First Action pertains to the rendering engine 104 generating an interrupt for the host processor rather than the graphics processor 114. The rendering engine 104 is used for address translation (Hussain, col. 4, lines 2 - 8) and, therefore, is unrelated to a cryptographic processor as recited in Claim 15. The Final Action continues to maintain the rejection based on the operation of the rendering engine 104 (Final Action, page 3), but Appellants continue to maintain that the rendering engine 104 of Hussain is not a cryptographic processor as recited in Claim 15.

The Examiner's Answer included an explanation of why the claimed "cryptographic processor" corresponded to the rendering engine in the reference:

[Hussain] col.4 lines 25-33 Rendering Engine and Back-End Graphics processor are taught as components of a "Graphic Processor." This reads on a cryptographic processor by virtue of its ability to undertake graphics processing of the type commonly used in steganography and the watermarking or encoding of graphical data.

The Applicant did not file a Reply Brief.

The Board summarily affirmed the anticipation rejection with little explanation:

[W]e adopt the Examiner’s findings as our own. See Ans. 9-10, 19. Additionally, we reiterate that Hussain discloses the rendering engine 104 and the graphics back end processor 114 can collectively be a graphics processor (see FF 1-2).

My two cents: The Examiner's interpretation was ridiculous. The Examiner's reasoning goes like this: reference teaches a graphics processor; a graphics processor can be used in steganography (hiding messages in images); therefore, a graphics processor is a cryptographic processor.

While the logic is appealing, it flies in the face of what these terms mean to a POSITA. That is, a POSITA understands a cryptographic processor to be one type of processor and a graphic processor to be quite a different type of processor.

The error made by the Examiner – and ratified by the Board – is in parsing the claim term too finely. A "cryptographic processor" is not merely a processor that happens to do cryptography, but is instead one that is designed to do cryptography. I've been using a PC to connect to secure web sites for many years, and that involves cryptographic functions. Yet despite the fact that my x86 did SSL, it did so with a general purpose microprocessor, not a cryptographic processor. (Intel recently added special instructions to enable fast and secure data encryption and decryption, so maybe the latest x86 chips are "cryptographic processors.")

The Board makes this mistake far too often. I've blogged about two other decisions where the Board made showed a lack of basic understanding about differences in processor types: digital signal processor (see my post here on Ex parte Giacalone) and graphics processor. (see my post here on Ex parte Brunner).

Finally, the Applicant made a big mistake by not filing a Reply Brief. Since the first real explanation of the Examiner's interpretation didn't appear until the Answer, the Applicant could have properly raised this point in the Reply Brief. Unfortunately, the rules won't let you evidence at this late stage, only dictionary definitions. If you need more of a technical explanation than would be supported by a dictionary definition, you'd have to go with attorney argument and hope that the Board didn't have a problem with this. Maybe you just stick with the more basic claim construction rule that you can't pick apart or deconstruct individual words in a claim term when the term itself has meaning.

The other option is to pull the case from appeal in order to introduce evidence. And that involves paying an RCE fee, since an Examiner making claim construction explicit probably isn't a New Ground of Rejection which gives the Applicant the right to reopen pros without an RCE. But until Examiners are required to put an explicit claim construction on the record, we'll have to deal with situations like this.