Applicant files computer application without drawings and loses petition arguing "drawings not required"

Takeaway: The Applicant filed a software patent application which referred to drawings, but the filing did not actually include the drawings. The PTO sent a Notice of Incomplete Application. In response, the Applicant filed a Preliminary Amendment with drawings, and a Petition to request that the application be granted a filing date as of the original filing date. The Petition argued that drawings were not required to comply with § 113, and cited  MPEP § 608.02.III, which says that a drawing is not required if the application contains a process claim ("process" or "method" in the preamble). The PTO denied petition, stating that "A review of the specification indicates that drawings are required." (Serial No. 12/362,457, available through Public PAIR.)

Details:
Application of Cornwall
Serial No. 12/362,457; Tech. Center 2800
(Available on Public PAIR)

On January 29, 2009, the Applicant filed an application titled "Endpoint Classification and Command Processing" (classified by the PTO as Communications: Electrical). No drawings were included with the filing.

On February 19, 2009, the PTO sent the Applicant a Notice of Incomplete Application. The Notice indicated that "a filing date has NOT been accorded ... for the reasons indicated below" and also included this statement:

Application was deposited without drawings. 35 U.S.C. 113 (first sentence) requires a drawing "where necessary for the understanding of the subject matter sought to be patented." Applicant should reconsider whether the drawings are necessary under 35 U.S.C. 113 (first sentence).

On April 20, 2009, the Applicant responded to the Notice by filing a preliminary amendment with drawings. The Amendment to the Drawings section read: "Five replacement drawing sheets including Figures 1-5 are included herewith."

On the same day, the Applicant filed a petition with the Office of Petitions to request that the application be granted a filing date as of the original filing (January 29, 2009). The petition argued that drawings were not necessary to the understanding of the invention since "all of the claims ... are directed to a method for 'identifying the features of an endpoint' and 'a method operative to collect packet data.' In support of the argument, the Applicant cited to MPEP § 608.02.III:

An OPAP formality examiner should not treat an application without drawings as incomplete if drawings are not required. A drawing is not required for a filing date under 35 U.S.C. 111 and 113 if the application contains: (A) at least one process claim including the term "process" or "method" in its introductory phrase;

Six months later, the PTO issued a Petition Decision which denied the request. The Petition stated:

A review of the specification indicates that drawings are required. Drawings are required under U.S.C. 113 for the understanding of the subject matter sought to be patented. The filing date will be the date of the submission of the drawings.

Two months after the Petition Decision, and ten months after the original filing, the PTO issued a Filing Receipt granting a filing date of April 29, 2009 (the date of the Preliminary Amendment with drawings). 

My two cents: It's pretty clear what happened here. This was a computer case, and the original specification referred to figures. So clearly the intention was to file with drawings, but the drawings were inadvertently omitted. (Unlike a chemical case, which I'm told are routinely filed with drawings.)  So the attorney was forced to argue "drawings not required." And even found an MPEP section that directly supported his position.

It seems weird that the MPEP specifically says you can get away with no drawings if you have a method claim yet the Petitions Office summarily denied the petition with the conclusory statement "a review of the spec indicates that drawings are required". [I know the MPEP isn't law, but still.]

Whether drawings are "required" is actually only part of the inquiry, because § 113 has two parts. The second sentence "addresses the situation wherein a drawing is not necessary for the understanding of the invention, but the subject matter sought to be patented admits of illustration by a drawing and the applicant has not furnished a drawing." (MPEP § 608.02.IV.) The MPEP goes on to explain that in such cases, the application should be granted a filing date, but the Examiner should require drawings under 37 CFR 1.81(c) or 1.83(c). 

That's the Applicant's scenario, exactly. Perhaps the petitions attorney was confused about the two prongs in § 113. In hindsight, maybe it would have helped if the Applicant mentioned this in the petition. "My app complies with the first sentence of § 113. And if it doesn't comply with the second, well, then, I still get a filing date." 

As an aside, I find it amusing to hear that a method claim in a software case requires a drawing "for the understanding of the invention." A flowchart depicting a sequence of three boxes with text mirroring the claims just doesn't do much to help me understand the invention. And I think I could write a perfectly enabling software patent application with no figures that should win on a petition like this. I would never do this in the real world, since there is no upside and a lot of downside. But from a purely intellectual point of view, I simply don't think all software applications require drawings to understand the invention.

BPAI interprets "length along time bar" to cover a direction transverse to time bar

Takeaway: In an appeal of claims to a media file manager, the Applicant argued the limitation "length along the time bar that depends upon the amount of media files associated with the respective segment of unit time." The Applicant argued that the reference time bar was horizontal and the histogram bins that allegedly corresponded to "length" were vertical. Thus, according to the Applicant, the reference taught a length that was transverse to the time bar rather than along the time bar. The Board interpreted "along the time bar" more broadly, finding that the phrase covered "any relative position with respect to the time bar (whether vertically or horizontally)." The Board then affirmed the obviousness rejection. (Ex parte Metsatahti et al., BPAI 2011.)

Details:

Ex parte Metsatahti et al.
Appeal 2009012027; Serial. No. 10/715,162; Tech. Center 2100
Decided:  August 28, 2011

The application on appeal was a computer application for managing media file storage. The claim limitation at issue related to the program's generation of a timeline view: "a time bar that divides time into segments of unit time, each segment of unit time having a respective length along the time bar that depends upon the amount of media files associated with the respective segment of unit time." (Emphasis added.)

The Examiner rejected the claim as obvious over the media file viewers taught in Rothmuller and Parker.
Rothmuller's viewer (shown below) included a timeline 250 showing the number of photos taken as a function of time. The user selected the time period by adjusting time bands 251.

Rothmuller, FIG. 3

According to the Examiner,  Rothmuller's viewer included "segments of time and their size depends upon the amount of files for that time segment."

The Examiner relied on Parker's viewer for teaching a media viewer depicting media files as a histogram, with a horizontal bar "divided into segments of unit time" as recited in the claim.

Parker, FIG. 6G (color added to better show histogram bins)

According to the Examiner, Parker's viewer uses a "timeline ... divided into units of time as being days, months, or years."

Finally, the Examiner acknowledged that neither reference disclosed "segments of time having length along time bar (horizontally)" (emphasis added). However, the Examiner concluded that since the references showed vertical bars that represent the amount of media files associated with that time unit, it would have been obvious to "modify the vertical graphs for a specific time segment to horizontal graph along the time bar" (emphasis added). The Examiner cited In re Stevens (101 USPQ 284 (CCPA 1954)) for the proposition that adjustability involves only routine skill in the art.

The Applicant appealed, and argued in the Brief that the claimed time bar was not disclosed by the asserted combination. In particular, the Applicant argued that the combination did not teach a "length along the time bar that depends upon the amount of media files associated with the respective segment of unit time." The Applicant explained that, depending on how "segment" was interpreted, Rothmuller's timeline was either divided into segments of equal size (six months), or the segment size was independently chosen by a user through adjusting time bands 251. The Applicant further explained that Parker taught histogram bins that are uniformly spaced, where the number of bins depends on the screen resolution.

In the Answer, the Examiner responded to Applicant's arguments and further explained his position. The bar graph [in FIG. 3 of Rothmuller] "represented for certain segments of time show respective length/height, which is along the time bar for that segment of time and this respective length/height represents the amount of media/photos associated with that time segment." (Emphasis added.) Parker's FIG. 6B showed "may 6th as segment of time and may 6th as having respective length (sideways or horizontal) which depends on the number of thumbnails associated with may 6th." (Emphasis added.)

The Applicant filed a Reply Brief and argued the specific limitation "along the time bar." The Applicant noted that the "vertical bar graphs shown in Fig. 3 of Rothmuller have respective lengths transverse to the timeline that depend upon the amount of media files associated with the respective bar graph." (Emphasis added.) The Applicant made the same point with respect to FIG. 6C of Parker: "The graphs of Parker (i, e., the bars rising vertically from each of the boxes numbered 1,2,3.. .) are not "along the time bar" as asserted by the Examiner, but are transverse to the histogram timeline shown in the figure, as is typical for a conventional histogram timeline as disclosed by Parker."


The Board affirmed the obviousness rejection. However, the Board found that the combination was not necessary, since the appealed claim was obvious over either Parker or Rothmuller.

The Board's conclusion was based on claim construction of the phrase "length along the time bar that depends upon the amount." In response to the Examiner's admission that the time bars in the references were horizontal, the Applicant had argued that the histogram bins (claimed "amount") were vertical, and thus transverse to the timeline rather than "along the time bar" as claimed. The Board noted that the horizontal aspect was not "commensurate in scope with the specific language of claim 1," since claim 1 did not recite "such 'horizontally' oriented time bars." The Board interpreted the length phrase as follows:

Claim 1 does not place any limitation on what "along the time bar" mean, includes, or presents. Thus, we give this claim limitation its broadest reasonable interpretation as any relative position with respect to the time bar (whether vertically or horizontally), as specifically defined in claim 1.
(Emphasis added.)

The Board then applied this claim interpretation to each of the references in turn:

     [W]e find that the bar widths [in Rothmuller] represent the segments of unit time having a respective length (bar height) which is in a relative position with respect to the time bar since the bars are connected to the timeline and spaced along the timeline. ... We find the timeline along the horizontal axis [in Parker] to be the time bar that is divided into segments of time. We find further that the bar heights of the bars represent the "length" that "depends upon the amount of media files" since the bar height is indicative of the number of digital multimedia objects.
     In view of our claim interpretation above, we find that disclosure from either reference, Rothmuller or Parker, teaches and would have suggested providing "a time bar that divides time into segments of unit time, each segment of unit time having a respective length along the time bar that depends upon the amount of media files associated with the respective segment of unit time," as specifically required by claim 1.
(Internal citations omitted, emphasis added.)

My two cents: The Board got the claim construction on this one way wrong. The Board's interpretation of "along the time bar" completely ignored the ordinary meaning of "along." In this context, "along" implies a specific positional relationship which is not captured by the Board's interpretation of "any relative relationship."

The Board's discussion suggested that the Applicant relied on the time bar being horizontal, but this was misleading. The Applicant's actual argument did not rely on a specific orientation for the time bars or histogram bins, but instead (correctly) focused on the positional relationship: the histograms in the references (the claimed "amount") were transverse to, rather than along, the time bar.


The Examiner's rejection was on the right track because it didn't rely on an erroneous claim interpretation. The Examiner admitted that each of two references did not meet the "along the time bar" limitation and relied on an "obvious to adjust vertical to horizontal" rationale.

I think the Applicant wins even under this rationale. I see the switch from vertical histogram bins to a horizontal arrangements to be counterintuitive. That is, a histogram graph is expected to use different axes for the bin size and the time (or whatever grouping arrangement is used). So a POSITA would not find it obvious to flip the bins from a vertical arrangement to a horizontal arrangement. Ideally, the Applicant would argue this point, rather than leaving a hole in the attack on obviousness by not addressing the Examiner's rationale.

In my view, this decision merits a request for rehearing by the Board. Such rehearings are strictly limited to arguments already on the record, but here the Applicant has everything it needs to argue "the points believed to have been misapprehended or overlooked by the Board" (the standard for rehearing).

Postscript: After losing at the BPAI, the Applicant filed an RCE and amended the claims to recite "a time bar extending in a predefined direction ... each segment of unit time having a respective width, as measured in the predefined direction." The Examiner rejected using essentially the same rationale as before (obvious to switch vertical to horizontal), though he cited different case law (In re Einstein, mere reversal is obvious).

BPAI not persuaded by Applicant attack on timeframe of allegedly "conventional" features

Takeaway: An Applicant appealed a single reference obviousness rejection of claims to an automotive brake light. During prosecution, the Examiner asserted that two claimed features not disclosed by the reference were "typical" or "conventional." The Applicant attacked the obviousness rejection by arguing that the these assertions improperly considered knowledge at the time of the rejection rather than the time of the invention. In the Answer, the Examiner went further with regard to one of the features, asserting that "lens means have been employed for many decades in brake light devices." The Board adopted the Examiner's findings and affirmed the rejection, noting that the "many decades" time period included the time of the invention and that the Applicant did not offer any further explanation to rebut obviousness. (Ex parte Heller BPAI 2012.)

Details:
Ex parte Heller
Appeal 2010002978; Appl. No. 10/354,842; Tech. Center 2600
Decided: April 17, 2012

The invention related to an automotive brake light using an illuminated trademark or logo. One of the claims on appeal read:

37. A vehicle symbol illumination apparatus operable in conjunction with a vehicle braking or lighting system consisting essentially of:
     one or more light sources;
     one or more light-transmissive portions;
     one or more non-light transmissive portions;
     wherein said one or more light-transmissive portions are encased by said one or more non-light transmissive portions so as to form a logo, symbol or trademark associated with a vehicle model or vehicle manufacturer;
     wherein said one or more light transmissive portions illuminate in conjunction with the activation of the vehicle braking system;
     wherein said apparatus is to be located upon production substantially in the center of the trunk, spoiler, air dam or roof of the vehicle;
     wherein said one or more light transmissive portions illuminate upon the braking of the vehicle simultaneously performing the function of the mandated high-mounted stop lamp and as a logo, symbol or trademark associated with a vehicle or vehicle manufacturer now merged together to form a single component of original manufacturer's automotive
equipment; and
     wherein said light transmissive portion is a lens allowing illumination upon braking of the vehicle.
(Emphasis added.)

The Examiner rejected claim 37 as obvious over a single patent reference, Lee. The Examiner acknowledged that Lee did not disclose the "trunk" limitation, but asserted that brake lights are "typically" placed on trunks, and thus it would be obvious to modify Lee to use this location in order to intensify the illuminated appearance of the vehicle. The Examiner also acknowledged that Lee did not disclose the "lens" limitation, but asserted that "it is conventional in the art to use lens means to allow brake light illumination to pass in high mount brake light systems."

On appeal, the Applicant argued that Lee did not teach the "encased" limitation. The Applicant then argued that modifying Lee to use a trunk location would require "extensive tooling and redesign," so that a POSITA would not be motivated to use the claimed location. Finally, the Applicant attacked the Examiner's findings about a "typical" location and a "conventional" use of a lens, on the basis that these findings did not take into account the relevant timeframe, which is the time of the invention rather than the time of the rejection. "Further, to the extent the Examiner is considering what is typical [or conventional] now, he has overlooked the fact that the obviousness inquiry focuses on the time period of when the invention was made." (Citing W.L. Gore & Assocs. Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).)

The Board affirmed the rejection. The Board first found that the Applicant's interpretation of "encased" was too narrow, and that Lee disclosed this limitation under a proper interpretation. The Board was not persuaded by the redesign argument, instead finding that a POSITA "can choose the specific location merely depending on the style of vehicle and aesthetic effect desired by a vehicle manufacturer," making such a choice obvious. Finally, the Board was not persuaded by the Applicant's obviousness timeframe argument:

We ... adopt the Examiner’s finding that the use of a lens would be obvious because lens have been employed for many decades, including the relevant time period, in brake light devices. (Ans. 7). Appellant has not offered any further explanation to rebut the Examiner’s assertion that the use of a lens would have been obvious.
(Emphasis added.)

My two cents: I know some practitioners who view the timeframe for obviousness as a weak point in most rejections. Some would probably say the Examiner hasn't actually made a prima facie case without a showing that the missing feature and/or the rationale-for-combining was known at the time of the invention.

Yet I never see this argument made. And this case seems to illustrate why not. While it may be true that the Examiner did not make a showing that lens were known and used in brake lights in 2003, who's going to go on record and actually say that they weren't? Nobody. So the best you can do is make the Examiner shore up his case with evidence, or perhaps an explicit taking of Official Notice. Perhaps that's all the attack-the-obviousness-timeframe-finding argument is meant to do.

In the end, the Board seemed to treat the Examiner's statement about the lens as quasi-Official Notice. Not surprisingly, the Applicant didn't bother to refute the statement that lens were known in 2003, nor that it was obvious in 2003 to employ a lens for a light transmissive portion of an illumination apparatus.

BPAI reverses anticipation rejection using trademark registration to support inherency theory

Takeaway: During a reexamination appeal, the BPAI reversed an anticipation rejection involving a trademark registration. The rejection was based on a print advertisement for a product in conjunction with the trademark registration for that product. The trademark registration listed four goods, only one of which corresponded to the claim limitation at issue ("wire glass"). The Board found that since the registration listed goods other than the claimed variety of glass, the trademark in the ad was not evidence that the publication necessarily described the claim limitation at issue. Therefore, the Board reversed the anticipation rejection. (Anemostat Products v. O'Keefe's, Inc., BPAI 2011.)

Details:

Anemostat v. O'Keefe's, Inc.
Appeal 2011005771
Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016
Patent US 7,090,906 B2
Technology Center 3900
Decided  September 29, 2011

A patentee with an independent claim to a "fire resistant safety glass" appealed a § 102(b) rejection in a reexamination. The limitation at issue was "a piece of wire glass."

The publication used in the rejection was a print advertisement in a magazine. The ad identified the product as FireLite NT, and described the product as "an impact safety/fire-rated window glazing material. Product is made with abrasion-resistant 3M® Scotchshield® Ultra Film." Since the ad did not include the "wire glass" limitation, the Examiner relied on an inherency theory, based on a US trademark registration for FireLite NT. Specifically, the Examiner relied on the description of goods in the trademark registration, listed as "fire-rated and impact safety-rated glazing material for building windows, doors and partitions; namely sheet glass, wire glass, laminated glass, and multiple glass."

The Board reversed the Firelite NT rejection, finding that the trademark's description of goods was not enough to show that the advertised product necessarily included "a piece of wire glass" as claimed.  While the trademark showed that the product was used for one of four different glass products (sheet glass, wire glass, laminated glass, and multiple glass), it did not show that the product mentioned in the ad was wire glass rather than one of other three varieties of glass. The Board then cited In re Robertson for the proposition that "[i]nherency is not established by probabilities or possibilities. (In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)).

My two cents: I thought this was worth blogging about because it's unusual to find a trademark registration used in a rejection. (Although all kinds of unusual prior art shows up in reexamination).

Nothing wrong, in theory, with a rejection based on a trademark registration. In fact, this would have been a slam dunk rejection had the only good listed been the claimed "wire glass."

More interesting question: could the Examiner/requester have turned this into an obviousness rejection? With the ad being a primary reference used to teach a generic limitation "fire-rated and impact safety-rated glazing material" and the registration used to one show that the specific limitation "wire glass" was one of merely four options for the type of glass?