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.
Karen,
ReplyDelete1. The new BPAI rule 41.30 excludes dictionaries from the definition of "evidence." Although the PTO seems to have contemplated that this exception would apply primarily to briefs under 41.37, it would appear to apply equally to the reply brief rules 41.41, which also defines the exclusion in terms of "evidence."
Notably, however, 41.41 does exclude new *arguments* that are not raised in the 41.37 brief or responsive to the examiner's answer (without good cause). In most cases, however, it would appear that citing a dictionary to rebut an examiner's answer would satisfy that standard.
2. Re: claim construction. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) ("It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed.").
One thing I always tell my clients is that if you are going to go to the BPAI on a claim construction argument (such as this case), we need to make sure that we nail down the definition of the term. The BPAI will bend over backwards to affirm any claim construction by the Examiner – no matter how ridiculous.
ReplyDeleteTwo, this is a classic situation of the Examiner finding similar features to establish that different items are the same. Both a motorcycle and dump truck have wheels but that doesn't make them the same.
I've looked at the Appeal Brief, and the argument as to independent claim 15 was sparse – basically, a paragraph worth of arguments. IMHO, that isn't going to cut it.
Finally, the not filing of a Reply Brief is ONLY justified, IMHO, if the client decides that they don't want to pay the money. I would never recommend not filing a Reply Brief. Personally, I believe that any attorney that recommends not filing a Reply Brief is not acting in their client's best interest.
>2. Re: claim construction. See Phillips v.
ReplyDelete>AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.
>2005)
Well, yeah, I'm aware of Phillips :-)
But I think you're further suggesting that the Phillips quote you identified -- "It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed" -- might be appropriate here.
Yeah, I like it, since the quote stresses POSITA and I say a POSITA understands crypto processor differently than the Examiner's interpretation.
>go to the BPAI on a claim construction
ReplyDelete>argument, we need to make sure that we nail
>down the definition of the term.
Agreed. But I don't think that occurs to most practitioners because they don't even seem to realize that their real argument is over claim construction. I make "unreasonably broad interpretation" a main focus of most of my arguments.
>not filing of a Reply Brief is ONLY
>justified, IMHO, if the client decides that
>they don't want to pay the money.
I have one other exception: that the Examiner's answer truly adds no new information and is a 100% repeat of the Final OA.
Some folks say you should file a Reply Brief anyway, and maybe I would -- I can see value in a focused Reply Brief that really gets to the heart of the arguments you already made in the Appeal Brief, without all the extra fluff that's often in an Appeal Brief.
But if the attorney didn't file a Reply to an Answer that didn't add any new info, I wouldn't say the attorney made a big mistake. Just made a different judgment than I might have.
"I have one other exception: that the Examiner's answer truly adds no new information and is a 100% repeat of the Final OA."
DeleteI would definintely respond with a Reply Brief. It would be something like this.
We argued X, Y, and Z. The Examiner did not respond to those arguments in the Examiner's Answer.
We argued A, B, and C. The Examiner did not respond to those arguments in the Examiner's Answer.
We argued P, Q, and R. The Examiner did not respond to those arguments in the Examiner's Answer.
I would charge the client a minimal amount for it, but I think it would drive home the point that the Examiner has nothing.
I agree. Even if the ex answer adds nothing - file a reply brief that points that out! It makes the examiner look like a lazy person who doesn't really care if the claim is patentable.
Deletetoo bad reply briefs have gone from discouraged (prior 37 cfr 1.193) to allowed and often now expected. Do not know if it was the case here, but Examiners should state their "broadest reasonable" interpretation at least by the Final, not for the first time in the Answer
ReplyDeleteThe level of advocacy from the patent bar at BPAI is poor, at best. The APJ's are not going to do your job for you, and many of them cannot because they are career examiners and simply don't know the law any better than the examiners.
ReplyDeleteIf you think the examiner's claim construction is unreasonable, state the requirements for BRI (i.e. consistent with applicant's use AND consistent with interpretation POSITA would reach) and explain why the examiner's interpretation is unreasonable (i.e. inconsistent). Cite some evidence (e.g. your own spec and prior art references).
I see a lot of appeals with no reply brief. That's simply bad advocacy. You're given the opportunity to have the last word and you don't take it? Please find another area of law to practice.
Karen, you seem to get riled up every time a case comes up involving a processor/processing unit. Probably best to avoid these for the sake of your blood pressure.
ReplyDelete"If you think the examiner's claim construction is unreasonable, state the requirements for BRI (i.e. consistent with applicant's use AND consistent with interpretation POSITA would reach) and explain why the examiner's interpretation is unreasonable (i.e. inconsistent). Cite some evidence (e.g. your own spec and prior art references)."
also this
>explain why the examiner's interpretation >is unreasonable ...
ReplyDeleteI'm all for that. Just not sure that your two examples of how to accomplish this will be persuasive.
>Cite some evidence
>(e.g. your own spec
If your patent app is written like most of the ones I see, you won't have much luck here. Because most apps don't come anywhere close to saying what "widget" really means.
Instead, every other sentence is filled with weasel language that makes it clear that this is only an example of a widget. The Board is then quick to use this against the Applicant, saying that using these embodiments to discern the meaning of widget would be impermissibly importing limitations from the spec.
>prior art references)
This approach works best if the prior is NPL (Non Patent Ref). Otherwise, I expect you could have the problem I referred to above. That is, the reference patent is going to use the same wiggle language when discussing widgets, and so the Board would say the same thing. Not as sure about this one, though -- I haven't seen many Applicants refer to prior art when explaining why the Examiner's interpretation is unreasonable.
"The Board is then quick to use this against the Applicant, saying that using these embodiments to discern the meaning of widget would be impermissibly importing limitations from the spec."
ReplyDeleteI frequently see BPAI decisions where they reference the applicant's spec to discern the meaning of a claim term. That doesn't mean they're importing limitations into the claim from the spec.
The problem I see most frequently is applicants arguing for a narrower interpretation than what is provided in the spec. That's where weasel words bite you. In order to get the BRI of a term that is consistent with your use of the term, you have to use the term consistently in your spec. If you don't, then every interpretation by the examiner that is "consistent" with even one of the umpteen different ways the term is used is going to be reasonable.
"If your patent app is written like most of the ones I see, you won't have much luck here. Because most apps don't come anywhere close to saying what 'widget' really means."
This is where the really terrible examiners get you. They say, "Well, there's no explicit definition in the spec, so I can interpret any way I want." That is wrong of course.
You don't have to provide explicit definitions. If you're using terms according to their ordinary and customary meaning, as they would be understood by POSITA, then that's your argument. What evidence supports your argument? Your spec and the prior art.
I have an examiner currently giving a claim term that is well known in the particular art a ridiculous interpretation. Our use of the term, in the spec and in the claims, is according to its ordinary and customary meaning. The examiner's primary reference uses the term consistent with the manner we use the term.
We have a widget sensor connected to element A. The examiner's reference has a widget sensor connected to element B (i.e. the reference doesn't meet the claim). The reference also has a blodget sensor connected to element A. So the examiner tells me, "Well, I'm interpreting the blodget sensor connected to element A to be your widget sensor connected to element A because if I give the term 'blodget' an interpretation that I pulled out of my rectum, it meets the claim."
The interpretation is entirely inconsistent with 1) our use of the term "widget" and 2) the reference's use of the term "widget." I was told that if I don't like it, I can take it up with the Board.
That's what I'm going to do.
"That's what I'm going to do."
DeleteThat is precisely what you should do. After you file the Appeal Brief, don't be surprised to get a call from the Examiner offering up a few minor amendments to put the application in condition for allowance.
And what amendments would these be? And why would they be necessary? And why should I agree to them?
DeleteThis notion that applicants should agree to unnecessary amendments simply to provide the examiners with cover so that they can defend themselves from OPQA ("Gee, I gave it the broadest interpretation I could and they did amend. So I did my job, right?") is bullsh!t.
"And what amendments would these be? And why would they be necessary? And why should I agree to them?"
DeleteThat is all fact dependent, but if the Examiner offers up an allowable claims and if the offered up amendments don't change much, then the client may take it.
"Gee, I gave it the broadest interpretation I could and they did amend. So I did my job, right?"
BS or not ... this is what happens. However, it doesn't happen unless you put their feet to the fire, which is the main point of the post.
"That is all fact dependent..."
DeleteI gave you all the facts you needed. There's no PF case because the examiner is using BUI.
"BS or not ... this is what happens."
I'm aware that it happens. My point is that it should not be happening.
"However, it doesn't happen unless you put their feet to the fire, which is the main point of the post."
It happens over and over and over again. From the same examiners. Because there is no "fire" to put their feet to. If they get reversed, there are no consequences. I've read BPAI decisions where the examiner's position is called, in no uncertain terms, "unfounded" and "based on speculation and hindsight" and the next OA you get from that exact same examiner has all the same rejections.
Getting reversed by BPAI is of no consequence to the examiner, the SPE, and/or the utterly useless know-nothing, do-nothing QAS's.
As there is nothing Mr. Kappos can do, apparently, to change this mindset, the only relief applicants can hope for is to get the BPAI backlog under control. Waiting 2-3 years for this garbage to be reversed is not relief.
"is not relief."
DeleteWell, not for applicants anyway.
"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.
ReplyDelete"
I'm curious Karen, if there was a reference that stated that the graphics processor was totally used for such a purpose on a date prior to a year before filing would you still be concerned? And if you would, why? And if not, I wonder do you yet understand that is how the rest of the world (outside the softwarez artz of magicz) understand a "processor", graphics processor or cryptography 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."
Well you can always present a little evidence of this nonsense and the examiner might buy it.
"The Board makes this mistake far too often."
That is because it isn't a mistake :(
"Unfortunately, the rules won't let you evidence at this late stage, only dictionary definitions."
True but if you had such evidence then there is no rule against you simply asking the examiner to be a sweetheart and take a gander at it anyway and give you a preliminary hearing on it. Even after final some examiner would do it. Especially if you were to state that an RCE might just be forthcoming and you were glad to have resolved the issue.
Or, you could simply file an RCE and get the evidence entered anyway.
"But until Examiners are required to put an explicit claim construction on the record, we'll have to deal with situations like this. "
Right because it took a rocket scientist to understand after the 2nd action that the examiner was relying on the graphics processor to be a cryptographic one. You could just not be a tard and make the construction the one you want with evidence right straight up without waiting for him to explain to you that he is considering a graphics processor to be a cryptographic one for x reason. Professionals have been known to do this from time to time and it is effective from time to time. But I guess for the rest of you qqing will just have to do.
"Right because it took a rocket scientist to understand after the 2nd action that the examiner was relying on the graphics processor to be a cryptographic one."
DeleteOh 6 ... I long for the day when I can show you my office actions and show you what a pi$$poor job your fellow examiners do.
If I recite a "a widget operatively connected to a blodget including a first connector and a second connector" and the Examiner cites paragraphs [0031]-[0038] (or about two pages of text), tell me how am I supposed to divine some claim costruction from that when those two pages describe about 25 different elements?
Don't bother answering.
"Oh 6 ... I long for the day when I can show you my office actions and show you what a pi$$poor job your fellow examiners do."
DeleteI just got through reading someone's actions in the sister case to one of mine. They took my primary and used it thankfully, which made their rejection a lot better after they fed up 2x nonfinals, but they're still making a pretty outrageous 103. I mean like, seriously outlandish. It kind of makes me sad, especially considering they're supposed to be the bomb as a primary. Not to even mention they misconstrued a structural limitation as a product by process limitation some crazy how. Oh, and they started the case off with a bad species restriction and when the applicant replied telling him how to do it properly he just went final with the restriction. Still don't know about those restricted claims, I guess maybe he'll have them rejoined.
But, I guess if I did "work" of this "quality" then I could do 300% production no sweat too.
Maybe if you weren't posting blog comments 7-8 hours a day you could do 300%. But there's no incentive to do over 130%, so why not just cut down your blog posting to 6-7 hours a day?
DeleteIdk about that. I hardly need to cut back on posting on blogs, all I need to do is be willing to send out the first garbage rejection I can get my hands on.
DeleteSee, here's the thing, doing quality rejections takes time and a lot of mental energy/effort. The mental energy/effort thing is what is the problem at this point. I only have a given amount per day to give.
Doing shtty or not serious work just takes time and little energy. That I most certainly could do if I stopped posting.
"we need to make sure that we nail down the definition of the term"
ReplyDeleteSays a professional.
" Both a motorcycle and dump truck have wheels but that doesn't make them the same."
Unless the claim simply calls for a wheeled contraption.
"Cite some evidence (e.g. your own spec and prior art references)."
Says another professional.
"Probably best to avoid these for the sake of your blood pressure."
True that.
"Otherwise, I expect you could have the problem I referred to above. That is, the reference patent is going to use the same wiggle language when discussing widgets,"
That is because you practice in an art that is built upon BS. But, even so, if everyone is using that language then perhaps POSITA doesn't interpret it like you think he does and the BOARD is correct lol.
6 ... the point missed by you and the BPAI is that the Examiner has the burden of establishing a prima facie case. This means EXPLAINING the Examiner's rejection (i.e., put applicants on notice as to the reasoning behind the rejection) -- FYI, a claim construction is reasoning behind a rejection.
DeleteWhen neither side presents any evidence, the tie goes to the runner (i.e., the applicant). Put differently, the Examiner's evidence has to be more than the applicant's evidence, and if there is no evidence presented (on either side), Applicant wins.
Unfortunately, there are too many at the BPAI that little more experience as a 3rd year associate (i.e., just barely scraping the surface), and some at the BPAI that drank the Dudas Koolaid.
Things are a changing though ......
Unfortunatey, as noted above, the level of representation at the BPAI is so poor that few APJs ever get their feet held to the fire.
Where was that "point" made and I missed it? Because I did not notice where that point was made. Although, even if it was, I always keep it in the back of my mind.
DeleteTo be clear, the examiner has to make out a prima facie case for it to be proper. All the examiner does irl is make out a case to the best of his ability and make a judgement to the best of his ability.
To be sure, you're right about notice needing to be given, and that if it is not then the applicant can certainly say that they do not feel like notice has been properly given.
That said, there is no reason to make claim constructions explicit in most cases. Most cases aren't built upon horse manure in an art built entirely on horse manure. In others feel free to argue that without a claim construction then you did not recieve notice. If the examiner should accept your lack of notice then you'll get a non-f.
YAY! Or, o wait, you were wanting a patent. So perhaps you should just pick up the phone and try to work out the claim construction.
"When neither side presents any evidence, the tie goes to the runner (i.e., the applicant). "
There is no tie foo. The examiner made a claim construction based upon the intrinsic evidence, the spec.
"Things are a changing though"
Yeah they're changing in a direction which I'm In re Lovin' It!
"That said, there is no reason to make claim constructions explicit in most cases."
Deleteehh ... you don't need to make claim construction for all elements. However, if you are saying Y discloses X. Or there is a paragraph that includes Y and there is some (unstated) implication that Y identically discloses X, then I want a claim construction.
"So perhaps you should just pick up the phone and try to work out the claim construction."
Oh wait, 37 CFR 1.104(b) says that an examiner's action will be complete as to all matters and 37 CFR 1.2 says that the action of the PTO will be based exclusively on the written record. To the extent that a telephone call is possible, that does not abrogate the Examiner from his/her responsibility to do their job.
"The examiner made a claim construction based upon the intrinsic evidence, the spec."
Yeah right ... except that the Examiner didn't (1) even put forth a claim construction and (ii) even if the Examiner did (highly doubtful), the Examiner didn't refer to the specification.
"I'm In re Lovin' It"
Easily limited on its facts. The good thing about being a lawyer is that you should know how to do that.
"then I want a claim construction."
DeleteBaby, you don't get what you want, you get what you need to be put on notice. Although I might be generous enough to give it to you myself, there is no reason to obligate the whole corps to doing a claim construction for a million different elements a year. We waste quite enough trees as it is around here already.
"Oh wait, 37 CFR 1.104(b) says that an examiner's action will be complete as to all matters and 37 CFR 1.2 says that the action of the PTO will be based exclusively on the written record. "
You can feel free to take the slow route to a patent if you so choose. I won't stop you.
"To the extent that a telephone call is possible, that does not abrogate the Examiner from his/her responsibility to do their job."
Ask me how much anyone at the PTO gives two shts. Go ahead. Ask me. I personally do a decent job imo, much better than most, but it is difficult for me to decide on where the line should appropriately be drawn for the whole corps considering history and all. Sure, we want to strive for record breaking quality, but according to the powers we were breaking records in what you no doubt consider to be some of the worse years of quality.
"Easily limited on its facts. The good thing about being a lawyer is that you should know how to do that."
Yeah but they're facts that get repeated a lot due to attorney laziness.
"Baby, you don't get what you want, you get what you need to be put on notice."
DeleteI will if I ask for it. That's how you distinguish from Jung – "I don't understand how the Examiner got from A to X without a claim construction – i.e., notice wasn't provided."
" there is no reason to obligate the whole corps to doing a claim construction for a million different elements a year."
Except the law ….
"You can feel free to take the slow route to a patent if you so choose. I won't stop you."
Patent term adjustment … warms the cockles of my heart.
" Ask me how much anyone at the PTO gives two shts."
Some do, most don't … I learned that a long time ago. I'm glad you confirmed it.
"the powers we were breaking records in what you no doubt consider to be some of the worse years of quality."
Do you measure whether or not the prior art that was applied against a reference should have been applied? No? I didn't think so. Just because you put the modifier "quality" next to some random measurement doesn't mean that you produce a quality product when that number is 100%. That may fool Congress, the general public, and/or the media, but it doesn't fool the patent bar.
"Yeah but they're facts that get repeated a lot due to attorney laziness."
Not my problem.
"Except the law …."
DeleteThe law has never been interpreted that way, and indeed it has recently been interpreted explicitly the opposite.
"I will if I ask for it. "
I lulzed. Go for it tard.
"Patent term adjustment … warms the cockles of my heart."
You don't have any cockles.
’m not familiar with the cryptographic computer art; however, I would like to present an analogy. Let’s assume we have an application drawn to a method of driving a nail into a wall. The claim recites: A method of carpentry comprising: holding the pointy tip of a nail against a wall and driving the nail into the wall using a hammer.
ReplyDeleteThe examiner finds a reference where someone uses a brick to bash a nail into a wall. We all know that a brick is not a hammer, but has the claim been anticipated? If someone is “using” a brick to hammer a nail into the wall, why is the brick not a hammer? There's nothing in the claim particular to a crytographic processor. If a widget does the same thing as a bloget, why is the widget not a bloget? If it walks like a duck and quacks like a duck....
"If someone is 'using' a brick to hammer a nail into the wall, why is the brick not a hammer."
DeleteTake a brick to a carpenter (i.e., one skilled in the art). Ask them if it is a hammer? If the answer, is "No ... that's a brick," then no hammer. If the answer is "Yes ... I've seen a brick used as a hammer before," then it is a hammer.
Simple claim construction principles .... if you can find your answer in the MPEP, then neither attorney nor examiner has an excuse
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2111_01.htm
Subsection three is titled "'PLAIN MEANING' REFERS TO THE ORDINARY AND CUSTOMARY MEANING GIVEN TO THE TERM BY THOSE OF ORDINARY SKILL IN THE ART."
"If someone is “using” a brick to hammer a nail into the wall, why is the brick not a hammer? There's nothing in the claim particular to a crytographic processor. If a widget does the same thing as a bloget, why is the widget not a bloget"
DeleteI'll tell you why. Because the CCPA changed the substantive law on what might be included structurally in a method claim a long time ago. It used to be that a method could not be distinguished in that manner, but then they changed that around so that new compositions/structures can distinguish a method.
>If a reference stated that the graphics
ReplyDelete>processor was totally used for such a
>purpose on a date prior to a year before
>filing would you still be concerned?
Yes, I would still think the claim interpretation is wrong.
Because as my post clearly states, I say a POSITA understands a graphics processor to be a processor designed to do graphics processing, and a crypto processor to be a processor designed to do crypto functions.
So even if the reference describes actual use rather intended use, I still think the interpretation is wrong. Because I'm not claiming a processor used to perform graphics functions.
Further, I say that such processors have *structure* that distinguishes them from general purpose processors.
Which leads me to my next comment
>"If someone is 'using' a brick to hammer a
>nail into the wall, why is the brick not a >hammer."
I'll give essentially the same answer that the other commenter did -- because a POSITA understands to a hammer to be something different than a brick, despite the fact that both can be used for the same function.
The hypo claim didn't say "means for driving a nail into a wall", it said "hammer."
Now I'll take that same answer and I'll phrase it differently to tie into my comment above about processors:
A hammer connotes different structure than a brick. Therefore, a brick does not anticipate a hammer.
I'm not so sure I buy a brick/=hammer "A hammer is a tool meant to deliver an impact to an object...Stone hammers are known which are dated to 2,600,000 BCE...By analogy, the name hammer has also been used for devices that are designed to deliver blows."-Wikipedia.
DeleteI wish I had used a better example than a hammer/brick. There are lots of structures that are known by their function rather than structure (phones are sometimes camcorders, my mom says she had newspaper for shoes when she was little).
>wonder do you yet understand that is how >the rest of the world (outside the
ReplyDelete>softwarez artz of magicz) understand a
>"processor", graphics processor or
>cryptography processor?
Are you saying that someone with a CS degree isn't a POSITA for purposes of interpreting these terms?
I disagree, but even if that's true, I say a EE understands the terms in the same way I've argued ... designed for, not used for ...
Yes, the root of our disagreement is how a POSITA understands these terms. [And maybe even who a POSITA is.]
So far all we've done is play "he says" and "she says."
I'll offer evidence about the term graphics processor. Wikipedia says
"A graphics processing unit or GPU (also occasionally called visual processing unit or VPU) is a specialized electronic circuit designed to rapidly manipulate and alter memory in such a way so as to accelerate the building of images in a frame buffer intended for output to a display."
What evidence supports your position?
"Yes, I would still think the claim interpretation is wrong. "
ReplyDeleteMmmmk. Well I guess you can get to submitting on your evidence. And then maybe the examiner will cite some counter evidence. Or you can start drafting your apps better in the first place.
"Are you saying that someone with a CS degree isn't a POSITA for purposes of interpreting these terms? "
I don't know, did I say that? Because I don't remember saying that.
" I say a EE understands the terms in the same way I've argued "
I've got good news and I've got bad news. Good news is I'm EE and bad news is I don't. Not necessarily anyway. If you should show some evidence sure, I'll go along with it. And the reason is simple. Because the PTO must use the broadest reasonable interpretation in view of this wide open spec, and specifically not necessarily the "right" interpretation. Until there is evidence on this hea record then the spec is all we have to go on. This issue is not special to the software arts and we're no more inclined to give the "designed for" vs. "used for" argument to people in other arts as we are in the software arts. And I'll tell you why not, because if we go around giving everyone "designed for" then the people that meant "used for" (or will argue such in litigation) get their patent over invalidating references.
It just so happens that people in the software arts like to argue about it more and more fervantly.
"What evidence supports your position?"
The spec, and I have not bothered myself to gather extrinsic evidence to match that presented so I will give you your construction "graphics processor". However, I believe in order to win this case you don't want to alter the construction of a "graphics processor" you want to alter the examiner's construction of a crypographic one. So you'll need evidence of that, not of the graphics processor. Obviously if the examiner bought into your stuff about "designed for" vs. "used for" then he wouldn't have made the rejection in the first place, so you need to alter his construction of the claim, not of the reference, he knows good and well what a graphic processor is designed for.
But in any event, do you see how easy it is for them to get their case "won"? Took you like 5 minutes and surely you could get the one for a crypto one as well.
>name hammer has also been used for devices
ReplyDelete>that are designed to deliver blows
Didn't say *who* has used the word hammer for a blow-delivering device. A novelist? Or a POSITA?
If a structure is truly *recognized* by a POSITA "by its function" then I'm ok with that. So if there are all kinds of funky screwdrivers out there which a POSITA would refer to *as a screwdriver*, then no problem.
But tell me that a claim reciting "screwdriver" is *anticipated* by a knife, I have a problem with that, because a POSITA just doesn't understand the term "screwdriver" to mean "knife" even though a knife's tip can be used to turn a screw.
OTOH, tell me its obvious to substitute the knife for the screwdriver, and I'll deal with that.
>lots of structures that are known by their
>function rather than structure (phones are
>sometimes camcorders,
Yep. I dealt with this something very close to this issue in an old post:
http://allthingspros.blogspot.com/2010/01/ex-parte-joachim-mobile-phone-is-pda-is.html
Once again, this whole issue could have been avoided if the applicant had demanded an explicit determination of the level of ordinary skill. Once that level of skill was set forth by the examiner, the applicant could either agree or disagree. In any event, it would have provided a basis from which the applicant could have presented an argument that the examiner's claim interpretation was inconsistent with the level of ordinary skill, for the reasons Karen set out with regard to the type of processor involved.
ReplyDelete>whole issue could have been avoided if the
Delete>applicant had demanded an explicit
>determination of the level of ordinary skill.
Not quite ... could have been avoided only if the Applicant could make the Examiner comply with your demand.
Anyone successfully convinced an Examiner that he's actually required to determine the level of skill (e.g., by employing Ruiz v. AB Chance)?
The spec refers to the processor in question as a "cryptographic accelerator processor".
ReplyDeleteAnyone think the case would have come out any differently if that term had been used instead?
The "accelerator" qualifier doesn't exactly express the designed-to-do-X aspect I referred to in my comments. But seems like the Examiner would have an even harder time defending the position that a graphics processor *accelerates* steganography ... even if could be/was actually used for this task.
Karen,
ReplyDeleteFirst and foremost, love, love, love the blog. You're doing a great service to all us practitioners. Thanks so much.
Of lesser overall importance – I have to whole-heartedly disagree with you on this issue. I’d side with the examiner on this one. I don’t think it’s unreasonably broad to interpret the claim so as to include any processor capable of performing cryptographic operations. (I would be willing to quibble over whether the cited reference indicates that its graphics processor can perform the steganographic and watermarking operations that the examiner assumes it supports, but that doesn't seem to be at issue here.)
I think Mr. POSITA is vastly overrated as a source of precise, consistent definitions and usage, so I'm not very fond of arguments based solely on POSITA's interpretation. Even if you found one POSITA to give you a definition for “cryptographic processor” consistent with your proposed definition, you’d likely find another that will give you the examiner’s definition. More importantly, if you started poking at the first definition with the first POSITA, it would likely collapse on top of him/her. For example, if you then asked the first POSITA whether a graphical processor capable of performing steganographic processing and watermarking and encoding graphical data would be a “cryptographic processor,” I bet you the answer would likely be: “Well, in that case, I guess it would be . . .” I’m even more confident of that with the screwdriver example. Yes, if you asked POSITA whether a “knife” is a “screwdriver,” you’d likely be told “no.” But if you showed your POSITA a reference in which the tip of a knife blade was being used to drive screws and asked whether the tool turning the screw was a screwdriver you’d likely be told, “Well, it’s being used as a screwdriver here.”
Instead, I think the applicant should have determined much earlier that this was an argument over the meaning of “cryptographic processor.” Even if the examiner were interpreting the term unreasonably broadly (which I don’t feel he/she was), the attorney could have amended the claim to explicitly incorporate the narrower definition that the attorney felt was the correct definition and preclude the examiner’s definition. Likewise, if you’re certain a hammer connotes different structure from a brick, then why wouldn’t you include a description of that structure in the claim to make the distinction from a brick clear when you're rejected over a reference showing a brick pounding nails? If you truly believe that any reasonable interpretation inherently encompasses this hammer-specific structure, then you shouldn’t see this as changing the scope of the claim at all. I think the reality is that most practitioners want to complain about structural elements being construed as means-plus elements during examination, but in all honesty they’re doing everything they can to leave that option open when it comes time to assert the claims.
In my experience, most of the time practitioners complain about unreasonably broad interpretations they should instead be asking themselves why they’re unwilling to amend the claims to preclude the relevant interpretation. If the examiner’s unreasonably broad “interpretation” includes simply ignoring words altogether then it may not be possible or make any difference. However, where the examiner and practitioner are locked in a battle over what a word or phrase means, there should be no effect on claim scope to incorporate the desired definition into the claim. Now, finality of rejections, PTA, Festo issues, etc. may warrant against amending, but from the standpoint of the literal claim scope there shouldn’t be any downside.
>applicant should have determined much
Delete>earlier that this was an argument
>over meaning of “cryptographic >processor.
Amen to that.
>amended the claim to explicitly incorporate
>the narrower definition
Not always as easy as you suggest.
First, what sort of language are you thinking ... "processor capable of crypto but not graphics"? Don't like it, since that gives an infringer an opportunity to argue his crypto processor can do graphics.
Next, the spec didn't have any special definition of crypto processor, so your options for amending in the way you suggest are probably limited.
But I do agree, in general, with the idea of amending to put words in the claims rather than arguing the words are implicitly there. That's an important lesson I learned really early on and I hammer it home anytime I am training a newbie.
I just feel this is one of those special cases when I would not be inclined to so amend, for the reasons I suggested above.
>certain a hammer connotes different
>structure from a brick, then why
>wouldn’t you include a description
>of that structure in the claim
You know the answer to that. Because the more explicit structure I recite, the more arguments an infringer has that he's not infringing.
>they’re doing everything they can
>to leave that option open when it
>comes time to assert the claims.
Absolutely. I'll cop to that.