BPAI uses foreign patent by same inventor to determine field of the invention for non-analogous art analysis

Takeaway: The Applicant appealed an obviousness rejection of claims directed to floor panels and argued that two of the three references were non-analogous art to the claimed invention. In deciding the question of non-analogous art, the BPAI looked at statements in another foreign patent publication by the same Applicant to determine the problem with which the Applicant was involved.  (Ex parte Grafenauer, BPAI 2012.)

Details:
Ex parte Grafenauer
Appeal 2010001906; Appl. No. 11/533,634; Tech. Center 3600
Decided  February 29, 2012

The application on appeal was directed to floor panels. A representative claim on appeal read:

1.  A connecting element for connecting flooring panels with a core of wooden material, comprising
     a tongue on one side edge and a groove on an opposite side edge,
     wherein the tongue corresponds to a groove of a panel and the groove on the opposite side edge corresponds to a tongue of the panel, and
     two lips lying opposite one another embodied on a top side projecting beyond the one side edge and the opposite side edge,
     wherein the two lips are configured to provide a sole sealing mechanism.

The Applicant appealed an obvious rejection which combined three references. The Applicant argued that the two of the three references were not analogous art to the claimed invention. The third reference was a German patent publication to floor panels by the same Applicant, not a priority document for the application on appeal.

In deciding the issue on non-analogous art, the Board first stated the two-prong test, most recently summarized by the Federal Circuit as:

1. whether the art is from the same field of endeavor, regardless of the problem addressed and, 
2. if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.
   In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 6 2004))

The Board then turned to the problems addressed by the inventor and by the references. The Applicant's specification described one problem addressed by the inventor: "preventing moisture from penetrating through a joint into the core of a flooring panel."

Having discovered the problem addressed by the inventor, the Board turned to the first reference at issue, Foy. Foy was not directed to flooring systems, but did describe a resilient seal in contact with a window panel. The Board found Foy was analogous art because Foy's teachings were reasonably pertinent to the inventor's problem of preventing moisture from penetrating through a joint into the core of a floor panel. 

Turning to the second reference at issue, Andrzejewski, the Board noted that Andrzejewski described not merely a sealing strip, but one including an embedded metal carrier 8 designed to grip an edge flange or tongue." The Board found, by referring to the Applicant's German publication, that the inventor had more specifically addressed "the moisture problem by providing a tight connection on the top of the joined panels." The Board found corroborating statements in the Applicant's specification. Therefore, the Board reasoned, "Andrzejewski is reasonably pertinent to the Applicant's problem of locking connected panels in the transverse direction without the necessity of adding glue to the grooves or tongues used for locking the panels so as to tighten the connection on the top of the joint between a flooring panel and the connecting element."

The Board then distinguished In re Klein:

In Klein, our reviewing court criticized the Board for attempting to redefine in general terms the particular problem with which the applicant was involved. See id. at 1351 n.1. Here, the statements of the problems with which the Appellant was involved were taken from the Appellant’s Specification and from the Appellant’s statements in Grafenauer. In Klein, our reviewing court also criticized the Board because the cited references addressed a problem different from that with which the applicant was involved, namely, separating solid objects rather than “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” Id. at 1350-51. Here, the references address the same sealing and joint tightening problems addressed by the Appellant. The Appellant points to nothing in the holding of Klein inconsistent with finding that Foy and Andrzejewski are not non-analogous art.

My two cents: Wonder why the Board even brought up the Applicant's German patent publication? I say that because the Applicant's own spec discussed the problems addressed by the invention, so why bother to look elsewhere? Perhaps the Board read the German publication in order to evaluate it as a reference, happened to see some stuff about the problem solved, and decided to incorporate these statements into its reasoning. 

On the other hand, it wouldn't seem as weird if the Applicant's own spec was completely missing a discussion of problems solved by the invention. In such a case, how does one perform an non-analogous art analysis? Creative answer: look to other statements by the inventor.

I think this use of extrinsic evidence has to be circumscribed. Surely patents by the same inventor but directed to bird feeders won't help us learn about the problems this inventor was addressing in his floor panel application. In fact, I think the other application has to be really, really similar. Not just the field of floor panels, but about sealing between floor panels.

What other factors are relevant in deciding what sort of sources we can look to in understanding the inventor's problem? Does it matter than the application on appeal and the application used to learn about the problem have the exact same set of inventors? Here, that was the case. Does it matter that the two applications have the same assignee? Couldn't tell if that was the case here.

I can see a reexam requester using this sort of creative strategy.  Patents outside the US often contain lots of statements about problems and solutions. So suppose the patentee's own German patent publication is used in an obviousness rejection, and the patentee makes non-analogous art arguments. Then the reexam requester rebuts the non-analogous art argument by showing that the problems are similar. And if the patent under reexam doesn't describe the problem solved by the inventor, looks to related patents/pubs by the same inventor that do describe the problem.

The German reference published two years before the priority date of the application on appeal. The German reference never issued as a patent, and was instead revoked during an opposition.

BPAI not persuaded by Examiner's "design choice" rationale for door placed in rear wall of fireplace tray

Takeaway: In rejecting claims to a fireplace accessory as obvious, the Examiner found that the claimed placement of a hinged door was a "matter of design choice" and that "it would be obvious to place the hinged cover in any convenient location, including the rear of the fireplace tray." The Board disagreed with the Examiner's "any convenient location" rationale, explaining that the reference taught placing the door in a specific location, different than what was claimed. (Ex parte Brown, BPAI 2011.)

Details:



Ex parte Brown
Appeal 2009012485; Appl. No. 10/940,994; Tech. Center 3700
Decided:  August 25, 2011

The application on appeal related to a fireplace. A representative claim on appeal read:

1. A removable fireplace cleanout, comprising:
    a debris collection tray having a floor pan defining a periphery and a plurality of sidewalls extending upward from the periphery, including a front wall, a rear wall, and first and second lateral sidewalls, the rear wall having an opening defined therein;
    a debris dump door panel having an upper edge and a lower edge;
    a weight mounted adjacent the lower edge of said debris dump door panel; and
    at least one top-mounted hinge pivotally attaching the upper edge of the dump door to the rear wall of the tray,
    whereby the dump door closes the opening in the rear wall when the tray is level and swings open by gravity when the tray is tilted so that the rear wall is downward.

The Examiner rejected the claims as obvious over a combination of two references. The first reference, Taylor (see figure below) allegedly taught the claimed tray (20) having walls including a rear wall (26).

Taylor's fireplace tray

The secondary reference, Wagg (see figure below) disclosed an ash retaining apparatus. Wagg was relied on for teaching the claimed door panel (46), hinges (48) and weight (60).

Wagg's ash retainer

More specifically, the Examiner took the position that the door panel (46) in Wagg included a moveable handle cover (60) which operated as a weight. The Examiner also asserted that "the Wagg door is obviously capable of performing those functions [of opening and closing], as the door is hinged and disclosed to be movable." As a reason for adding Wagg's door panel to Taylor's tray, the Examiner offered the benefit of "guid[ng] ashes into the ash retaining enclosure, such as a garbage can."

The Applicant appealed and made several arguments against the combination. In one of these arguments, the Applicant addressed the Examiner's findings about Wagg's door handle acting as the claimed "weight." According to the Application, the arbitrary weight of the door handle would not "close the opening in the real wall when the tray is level" as claimed. Further, the person of skill in the art would have no reason to weight the door appropriately to achieve the claimed function since the only function of Wagg's door handle is to manipulate the door, and increasing the weight of the handle would make this task more difficult. Finally, the Applicant argued that the combination did not teach the specific claimed placement of the hinged door in the rear panel.

In the Answer, the Examiner took the position that the claimed placement of the hinged door was a "matter of design choice" and that "it would be obvious to place the hinged cover in any convenient location, including the rear of the fireplace tray."

The Applicant did not file a Reply Brief.

The Board disagreed with the Examiner's "any convenient location" rationale, explaining that Wagg taught a person of ordinary skill in the art to place the door in a specific location: "over an open end of an ash receiving chamber, in order to seal the ash retaining chamber from the external environment."

The Board also criticized the Examiner for not clearly explaining how Taylor's tray and Wagg's door would be combined. The Board addressed two possible variations of how the Examiner might have modified Taylor with Wagg, and found both of them deficient in either teaching the claimed elements or having a rational reason to combine.

The Board considered the first alternative, in which Wagg's door was placed over the top opening of Taylor's tray, in order to have the hinge top-mounted to seal the ash chamber. But the Board noted that such a modification did not satisfy the claim language of "a rear wall having an opening." Finally, the Board found that the Examiner had improperly treated the "whereby the dump door closes when ... and swings open when ..." as intended use so that Wagg's door need only be capable of performing these functions.

The Board then considered the second alternative, in which Taylor’s tray was modified by Wagg to have an opening in the rear wall, and to have a hinged door cover the opening. But in that case, the Examiner's articulated reasoning of “guid[ing] ashes into the ash retaining enclosure" made no sense, since Wagg did not teach that the door performed this function, and in fact taught a different component for guiding ashes.

My two cents: Is it really this easy to beat a design choice rationale? The Board implied that the design choice rationale was defeated by Wagg's teaching of a specific location for the claimed door panel. Yet almost all design choice rejections are based on modifying a specifically taught location/size/shape/ parameter to produce the claimed feature. So this reasoning surprises me.

I think the Applicant had strong arguments about the claimed weight element, and did a good job of explaining why this feature didn't make sense in the combination proposed by the Examiner.

The Board seemed to reverse using slightly different reasoning that used by the Applicant. That is, the Board didn't mention the weight element, and instead dealt solely with the position of door panel with respect to the rear wall. Here, too, the Board did a good job of explaining why it wouldn't make sense to have Taylor's opening in the rear wall covered by a door panel.

Seems like the Board bent over backwards to understand the Examiner's position on how Taylor's tray was combined with Wagg's door. Could have simply said "Examiner didn't explain how the combined features result in the claimed apparatus" and reverse on those grounds.

Postscript: Unfortunately for the Applicant, it took more than six months after the BPAI's reversal for the Examiner to issue a Notice of Allowance.

BPAI criticizes Applicant for alleging a special meaning for claim term without explaining the meaning

Takeaway: The term "condition" was at issue on an appeal of an application related to microprocessor architecture, The Examiner's answer presented a dictionary definition for the claim term. The Applicant responded in the Reply Brief by arguing that "the Examiner's definition does not overturn the definition ascribed to the word by those of ordinary skill in the art in view of the present specification" and then giving a number of examples of conditions from the specification. The BPAI affirmed, noting that the "[Applicants allege the term has some (unidentified) special meaning in the art, but do not refer us to any evidence in support of the allegation, nor tell us what that the unsupported, unidentified special meaning may be." (Ex parte Watt, BPAI 2009.)

Details:
Ex parte Watt
Appeal 20085801; Appl. No. 10/714,483; Tech. Center 2100
Decided  March 31, 2009

The application on appeal related to microprocessor architecture. A representative claim on appeal read:

1. A method of controlling a monitoring function of a processor, said processor being operable in at least two domains, comprising a first domain and a second domain, said first and second domains each comprising at least one mode, said method comprising the steps of:
     controllably monitoring said processor operating in each of said at least two domains,
     setting at least one control value, said at least one control value relating to a condition and being indicative of whether said monitoring function is allowable in said first domain;
     allowing initiation of said monitoring function in said first domain when said condition is present if its related control value indicates that said monitoring function is allowable; and
     not allowing initiation of said monitoring function in said first domain when said condition is present and its related control value indicates that said monitoring function is not allowable.
(Emphasis added.)

The Examiner rejected the claims as obvious using a combination of two references. One of the issues on appeal was the claim term "control value relating to a condition".

The reference at issue, Angelo, taught a processor having a System Management Mode (SMM), and the Examiner equated entry into SMM with the controlled "monitor function" in a first (secure) domain. Angelo also taught that a System Management Interrupt (SMI) could cause the processor to enter SMM, and the Examiner equated the SMI with the claimed "control value ...being indicative of whether said monitoring function is allowable in said first domain."

The Applicant argued on appeal that Angelo's SMI (alleged "control value") did not meet the "related to a condition" limitation:

The SMIs which are asserted are a non-maskable interrupt having nothing to do with anything relating to a condition. There is no reference to a "condition" or suggestion that anything in Angelo is dependent upon recognition of a "condition." Additionally, there seems to be no stated indication by the Examiner as to how or why he believes the SMI is related to or discloses the claimed "condition."

In the Answer, the Examiner provided a dictionary definition of "condition": "a particular mode of being of a person or thing; existing state; situation with respect to circumstances." The Examiner noted that "this is a rather broad definition." The Examiner then explained how Angelo's SMI was related to several conditions:

1. An SMI timer can be used to assert the SMI. Completion of this timer is a condition.
2. A system request can be used to assert the SMI. The assertion of this system request is a condition.
3. The assertion of the SMI is used to toggle System Management Mode (SMM). This mode is a condition.

The Applicant filed a Reply Brief to respond to the Examiner's interpretation of "condition":

     The Examiner has not made any evidence from "Dictionary.com" of record in this application and therefore the Examiner's definition does not overturn the definition ascribed to the word by those of ordinary skill in the art in view of the present specification and the claims.
     Appellants' specification describes a number of embodiments in which the "condition" can comprise a "secure domain" (page 4, line 17)' a "secure user mode" (page 4, line 23)'" a "type of monitoring function" (page 4, line 29)," a "trace monitoring function" (page 5, lines 1-2)" etc. The term "condition" is believed to be well known to those of ordinary skill in the art. However, should the Examiner contend that it is not, he is obligated to apply the definition set out in Appellants' specification so as to incorporate the various examples set forth therein. Accordingly, Appellants dispute the Examiner's "rather broad definition" from "Dictionary.com" as completely unsupported.

The Board agreed with the Examiner, and sharply criticized the Applicant's Reply Brief arguments about the meaning of "condition".

   Appellants allege that the term “condition” has some (unidentified) special meaning in the art (Reply Br. 2), but do not refer us to any evidence in support of the allegation, nor tell us what that the unsupported, unidentified special meaning may be. Appellants also refer to a “number of embodiments” in the Specification and seem to assert that some (unidentified) special meaning of “condition” can be gleaned from the described embodiments (see id.), which, presumably, would distinguish over the conditions in Angelo that were identified by the Examiner. Thus, although Appellants allege (id.) there is a “definition” for the term “condition” set out in the Specification, Appellants not only do not tell us where the definition may be found, but also neglect to tell us what that the definition may be.
   We will not, and cannot, read any of the specific embodiments described in the Specification into instant claim 1.  [Citations omitted.]

The Board then explained in detail how Alverson disclosed the relied-upon claim limitations, and affirmed the obviousness rejection.

My two cents: The Board chastised the Applicant for not providing a definition. Do you have to provide your own definition to show that the Examiner's interpretation is unreasonably broad?

If the Examiner's interpretation is way off base, probably not. But if your facts are like these, where the Examiner's interpretation did seem reasonable, then yes, you should do more than throw the ball back by saying "The Examiner's definition is wrong."

The Applicant seemed to have a basic misunderstanding of broadest reasonable interpretation.
The Applicant argued that the Examiner was "obligated to apply the definition set out in Appellants' specification so as to incorporate the various examples set forth therein." Not true. While it is true that the claim is to be interpreted in a manner consistent with the spec, this does not extend so far as to read into the claims features that are clearly described as examples. As the Board noted in this case, "the scope of a claim cannot be narrowed by reading disclosed limitations into the claim." (citing In re Morris).

I think the Board was being a bit disingenuous by asking for a definition. The Applicant probably didn't offer a definition because a) the spec didn't have one and b) other dictionary definitions wouldn't have been any more favorable. It seems pretty clear to me that the Applicant was indeed relying on importing limitations into the claims.

Notably, the Applicants went to appeal with dependent claims that further narrowed the term at issue. But the Applicant didn't separately argue the dependents. Perhaps a further indication that the Applicant really did believe that the claim term deserved a more narrow interpretation.

Once the Examiner clearly explained how he was interpreting the reference to teach the claim condition, the Applicant should have pulled from appeal and amended the claims to further describe the condition. Better yet, if the Applicant had realized this before appeal, should have at least added dependent claims

Postscript: The Applicant filed an RCE after losing and appeal and eventually got a patent. The claims were narrowed to further define the condition:

said condition consisting of a respective one of (a) a domain that said processor is operating in, or (b) a mode that said processor is operating in or (c) a type of said monitoring function,
said control value being set to be an enable value for said related condition to indicate that said monitoring function is allowable in said first domain;

These three conditions essentially corresponded to the three "meanings" of condition that were argued in the Reply Brief.

Notably, the Examiner continued to apply the same art to these amended claims, and allowed them only after the Applicant filed another Pre-Appeal and then Appeal Brief.

A cautionary tale about extensions of time

I ran across an interesting post "Wait One Day, Lose Two Days " on the blog 12:01 Tuesday (a blog with interesting tidbits about just-issued patents).

The blog post is a cautionary tale about the dangers of taking extensions-of-time during prosecution of applications that have long claims to priority: an application with a priority claim back to 1999 expired before it issued, apparently due to Applicant delay.

BPAI not persuaded by evidence that authors of reference collaborated but did not find claimed composition obvous

Takeway: The Applicant appealed an obviousness rejection of claims to a chemical cleaning composition. The Examiner relied on a secondary reference to teach adding deionized water to a base composition. The Applicant attacked the rationale for combining by asserting that actual persons of ordinary skill in the art had worked on cleaning compositions but did not use deionized water. Specifically, the Applicant introduced evidence that the inventors of the two patent references had actually collaborated to invent cleaning compositions, but did not come up with a composition that used deionized water. The Board found this evidence unpersuasive because one of the many compositions disclosed in the primary reference did in fact disclose the use of deionized water. The Board did not otherwise comment on the collaboration argument. (Ex parte McClung, BPAI 2011.)

Details:

Ex parte McClung
Appeal 2010006202; Appl. No. 11/056,853; Tech. Center 1700
Decided  Dec. 8, 2011


The patent application was directed to a chemical composition said to be "effective in treating a wide variety of contaminants, such as organic compounds, from boiler systems, chiller systems, cooling tower systems." A representative claim on appeal read:

35. A process of treating contaminant in a system comprising:
(a) selecting a composition of hydrogen peroxide, glycolic acid, and low solids water,
wherein
(i) water is present in an amount of [sic] least about 50 weight percent based on the total weight of said hydrogen peroxide, glycolic acid, and water and
at most about 99 weight percent based on the total weight of said hydrogen peroxide, glycolic acid, and water to provide a composition,
(ii) the low solids water comprises less than about 10 ppm dissolved solids, and
(iii) the composition has a pH of at least about 1.9 and at most about 3.8; and
(b) contacting said contaminant with a concentration of said composition,
wherein said concentration treats at least some of said contaminant in said system, wherein said systems is selected from the group, consisting of boiler systems, chiller systems, cooling tower systems, and combinations thereof.

The Examiner rejected process claim 35 as obvious over the combination of three references: Lokkesmoe, Oakes, and Hei. At issue on appeal was the rationale for combining Lokkesmoe and Oakes to produce the claimed composition.
 
The Examiner relied on Lokkesmoe for teaching the composition as claimed, except for the low solids water in limitation [i]. Lokkesmoe taught that the cleaning composition could include additional ingredients such as alcohols, and any number of adjuvants could be added. The Examiner found that Oakes taught limitation [i] by disclosing the use of "deionized water (i.e., low solids content water)" to dilute concentrated compositions used "as soil removing agents in the food processing industry."
With respect to the rationale for combining Lokkesmoe and Oakes, the Examiner asserted:

It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to use deionized water in the composition taught by Lokkesmoe et al, with a reasonable expectation of success, because Oakes et al. teach the use of deionized water in a similar cleaning composition and further, Lokkesmoe et al. teach the use of water as a diluent in general. Additionally, ... deionized water would be desirable for use by one of ordinary skill in the art in the cleaning compositions taught by Lokkesmoe et al. to reduce contamination of the required components and the substrate on which  the composition will be used.

On appeal, the Applicant argued several points including the rationale for combining Lokkesmoe and Oakes.
The Applicant argued that "the circumstances underlying these references themselves demonstrate it was not obvious to utilize de-ionized water" in the Lokkesmoe process ... [T]his is the rare situation where the actual evidence reveals the invention was not obvious even to the inventors of the prior art references."
 
According to the Applicant, inventors Lokkesmoe and Oakes had collaborated with one another on related technologies and it never occurred  to them to use deionized  water in aqueous solutions comprising hydrogen  peroxide and carboxylic  acids. The Applicant concluded that the failure of Lokkesmoe and Oakes to make the combination weighed against any motivation to combine the references.

As evidence of the collaboration, the Applicant noted that the Lokkesmoe and Oakes references were commonly owned and shared two common inventors (Lokkesmoe and Oakes) . Also, Lokkesmoe was filed six months after Oakes issued. Furthermore, Lokkesmoe and Oakes were the only inventors on another patent for a cleaning composition, one which also didn't use de-ionized water.

The Applicant summarized the collaboration argument as follows:

Despite Messrs. Lokkesmoe and Oakes having collaborated with one another on these technologies, Lokkesmoe, Oakes, and Lokkesmoe/Oakes demonstrate that it did not occur even to them to use de-ionized water in aqueous solutions comprising hydrogen peroxide and carboxylic acids. Messrs. Lokkesmoe and Oakes were, by definition, persons of extraordinary skill in the art of Lokkesmoe and Oakes. And, if the combination was not obvious to such persons of extraordinary skill in the art, it necessarily follows that that the combination was not obvious to a person of ordinary skill in the art. See Okijima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, this is the rare situation where the actual evidence reveals the invention was not obvious even to the inventors of the prior art references.

The Board was not persuaded by the collaboration argument because it was undermined by an express disclosure in Lokkesmoe. While the Applicant maintained that the collaborating co-inventors did not contemplate using deionized water, Table 18 of Lokkesmoe disclosed the use of deionized water in an exemplary composition that also included the hydrogen  peroxide and glycolic acid ingredients of the rejected  claims. Furthermore, the Applicant was aware of this disclosure in Lokkesmoe, since the Appeal Brief had cited this very same Table 18 composition in arguing a different point, to establish that "the one example disclosed in Lokkesmoe utilizing glycolic acid, used significantly less than 50 weight percent of water."

My two cents: I don't practice in the chemical arts so I have no opinion on the technical merits of this decision. I'll have to assume the Board's interpretation of the prior art is accurate.

What drew my attention to the case was the Applicant's use of background information about the references (co-owned, same inventors, same time frame) to show collaboration, and the argument that despite such collaboration, these actual persons of skill in the art did not come up with the claimed composition. I thought this was a really creative argument.

Here, the Board wasn't persuaded by the collaboration argument, because they found other information in the references themselves that showed the collaborators had in fact used deionized water in their compositions. 
But without these additional facts, would the collaboration argument have been persuasive? Does evidence of what real POSITAs actually did in the real world matter to an obviousness analysis?

Maybe not. In another blog post about a reexam case (BPAI gives expert testimony little weight ...), I expressed my disappointment in seeing that when a patentee offered evidence from real people involved in product development, the Board didn't seem to be interested in this. Instead, in that case, as in this one, the Board focused way more on the teachings of the references than on evidence about actual persons of skill in the art.