Wednesday, April 18, 2012

BPAI reverses anticipation when Examiner relies on multiple embodiments

Takeaway: The Applicant appealed an anticipation rejection, arguing that the figures relied on by the Examiner described two separate embodiments. The Examiner took the position that since the reference did not explicitly state that the two embodiments were separate and "non-combinable", "they are treated as a single embodiment." The Board agreed with the Applicant summarily reversed, noting that "Joy’s silence as to how the processor operates with the multithreaded cache can only show what Joy fails to describe or teach, as opposed to an inference of what it does." (Ex parte Lee, BPAI 2012.)

Details:
Ex parte Lee
Appeal 2011008999; Appl. No. 10/453,226; Tech. Center. 2100
Decided  March 21, 2012

The application was directed to microprocessor architecture. A representative claim on appeal read:
1. A cache system for a multithreaded processor having a single processing core and a plurality of active threads, the cache system comprising:
   a first thread micro-cache directly coupled to the single processing core; and
   a second thread micro-cache directly coupled to the single processing core,
   wherein the first thread micro-cache is assigned a first active thread and the second thread micro-cache is assigned a second active thread.

The Examiner rejected the independent claims as anticipated by Joy. The Examiner relied on a processor in FIG. 3 of Joy as teaching the multithreaded processor having a single processing core. The Examiner relied on FIG. 7A of Joy as teaching the claimed micro-caches and the claimed thread assignments.

In an After Final Response, the Applicant that the Examiner had improperly used two different embodiments from Joy in making an anticipation rejection. In an Advisory Action, the Examiner took the position that "[Slince there is no clear mentioning in the Joy reference that Fig. 3 and Fig. 7 are separate non-combinable
embodiments, they are treated as the same embodiment."

The Applicant appealed, arguing once again that the anticipation rejection improperly relied on multiple embodiments:
It is improper to assume that Joy or any other reference teaches something merely because the reference does not state that such a feature is not included. In order for a reference to anticipate or render obvious the limitations of a claim the reference must explicitly or implicitly teach or suggest the feature. ...  The processor configuration of Figure 3 and the cache 700 of Figure 7A are not directed to a single embodiment, as the Examiner states on page 16 of the final Office Action and in the Advisory Action.

The Applicant then referred to several sections of the Joy reference and explained how these sections related to different embodiments.

In the Answer, the Examiner repeated his earlier statement that "since there is no clear mentioning in the Joy  reference that Fig. 3 and Fig. 7 are separate non-combinable embodiments, they are treated as the same
embodiment."

The Board reversed the anticipation rejection with little discussion, merely noting that "we find Joy’s silence as to how the processor operates with the multithreaded cache can only show what Joy fails to describe or teach, as opposed to an inference of what it does."

My two cents: A good reminder to take a close look at anticipation rejections to see if multiple embodiments are involved. Unlike a lot of cases that take several rounds for the real issue to develop, the flaw in the rejection was apparent early in prosecution. I suspect the Examiner's Answer conference let this one go to appeal only because this was not the only prior art rejection of the independent claims. Still, the Examiner looks bad by taking such an untenable position and refusing to let go.

I have another post here that summarizes a few cases about multiple embodiments in the context of anticipation. You can also view today's case Ex parte Lee as a "silence in a reference" case. I've blogged about this general topic several times-- you can find those posts by picking "silence in a reference" from the Labels list on the right side of the blog.

11 comments:

  1. The link in the last paragraphi s broken.

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    1. Link is fixed. Thanks for letting me know.

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  2. "Still, the Examiner looks bad by taking such an untenable position and refusing to let go."

    I'm not aware of any real negative consequences for Examiners who refuse to let go of bad rejections and then get reversed by the BPAI. The Examiner who was recently reversed by the BPAI in one of my cases had been reversed by the BPAI in 10 other appeals in the last two years. During this same period of time, the Examiner became a Primary. Maybe s/he looks bad but s/he still got promoted.

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  3. Typical garbage rejection. The examiner's position is, "Well, gee, there's no evidence that it's not the same embodiment..."

    When are examiners going to learn that it's their job to provide evidence in support of their rejections, not allege that a complete, and admitted, lack of evidence supports their rejection.

    Of course, you'll have 6tard chiming in that applicant's representative should have just been more persuasive.

    Those who are willfully, gleefully, and triumphantly ignorant can't be persuaded. They're ignorant. They need to be sent to the mail room to attach bar code serial number stickers to the applications still being filed by mail.

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  4. "Of course, you'll have 6tard chiming in that applicant's representative should have just been more persuasive"

    Perhaps they could have led with:

    When are examiners going to learn that it's their job to provide evidence in support of their rejections, not allege that a complete, and admitted, lack of evidence supports their rejection?

    "Those who are willfully, gleefully, and triumphantly ignorant can't be persuaded. They're ignorant. "

    Obviously incorrect. You just said what needed to occur before you can persuade them, first you must teach them. Indeed, as I understand it the office historically relied on the attorneys teaching the newer examiners in their responses. Perhaps it is the lack of this teaching in responses that leads to your attitude of "well but but but they can't be persuaded because nobody bothered to tell them the right way to do things and so they're ignorant".

    Just perhaps, it is the rise of the attorneytard form paragraph which explains precisely nothing that leads down this path of forever ignorant examiners. I do not have enough information to say just yet, but I suspect that it is at least part of it.

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  5. Examiners do the best they can with the limited training and knowledge they are provided. The problem comes from those higher up the food chain who promulgate erroneous interpretations of case law and lack knowledge of proper administrative procedue.

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  6. wonder how the comments would run if this were a written description case and applicant was rejected for combining elements from different embodiments into a single claim?

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    1. "wonder how the comments would run if this were a written description case"

      Much the same. Bad practice is bad practice.

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    2. Meaning that such a written description rejection would be overturned by the Board?

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    3. I think he means that such a WD rejection would be affirmed.

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  7. >rejected [on written description] for combining
    >elements from different embodiments into a
    >single claim?

    Interesting question. I came across such a case and it's on my list of interesting things to blog about. Perhaps I'll move that up to the top of the list.

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