Applicant wins petition and avoids labeling figure as prior art

Takeaway: During prosecution of an application for a fuel cell system, the Examiner objected to FIG. 1 because it was not designated as prior art, yet "only that which is old is illustrated." The Applicant filed a Petition in response to the objection. The TC Director granted the Petition, apparently based on assertions in the Petition that FIG. 1 included "part of the claimed invention" and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26 ... forms part of the invention."

Details:
Application of Kolodziej
Appl. No. 10/948,402
Tech Center 1700
Petition Decision  January 26, 2009
(available through Public PAIR)

The application was directed to a fuel cell system. The (single elected) independent claim included various system components and a controller. Specifically, the claim recited "a controller for controlling the bypass valve and the pump based on the temperature of the cooling fluid, said controller controlling the bypass valve and the pump in combination."

In a first Office Action, the Examiner objected to FIG. 1 (shown below) because it was not designated as Prior Art. The Examiner required this designation because "only that which is old is illustrated."

Rather than amending FIG. 1, the Applicant instead argued that "Figure 1 is not prior art in that the design of the controller 28 controls the pump 20 and the bypass valve 26 makes the controller 28 novel and unobvious." The Applicant elaborated on the inventive concept by explaining that the claim required controlling the pump and valve in combination rather than independently.

The Examiner maintained the drawing objection in a Final Office Action, and gave this additional explanation: "[T]he discussion of the Related Art [in Applicant's specification] fully describes FIGURE 1 (See paragraph [0009])."

The Applicant appealed the prior art rejections and simultaneously filed a Petition under § 1.182 to fight the drawing objection. In the Petition to the TC Director, the Applicant asserted that "figure 1 includes more than what is old, and particularly includes part of the claimed invention." The Applicant acknowledged that FIG. 1 was described in the background, but explained that operation of the controller 28 depicted in FIG. 1 was part of the invention described in the detailed description. The Applicant asserted that "how a controller operates structurally defines that controller." (The Applicant relied on In re Noll (CCPA 1976) for this proposition.)  Thus, the Applicant argued, FIG. 1 is not prior art, since how the controller operates the pump and valve "is part of the invention."

Shortly after the Examiner's Answer, the Director of TC 1700 granted Applicant's Petition and withdrew the requirement to label FIG. 1 as Prior Art. The Petition Decision provided no explanation, and merely referred to Applicant's assertions that FIG. 1 included "part of the claimed invention," and that the invention included the pump 20, the bypass valve 26, and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26."

My Two Cents: I too would think twice before labeling something Prior Art, since a litigator would probably try to broaden that admission into something never intended by the drafter/prosecutor. Yet if FIG. 1 is a block diagram of known components, maybe it is Prior Art. What in FIG. 1 itself distinguishes the controller 28 over a prior art controller? Sure, it's programming ... but is that programming really shown in any way in FIG. 1? Maybe a better approach is to have a FIG. 1 that includes a block inside the controller that represents the novelty – maybe call it "control algorithm X" – and then have the flow chart of FIG. 2 reference numeral X.

The Applicant petitioned on final and simultaneously pursued an appeal of prior art rejections. Separate issues meant the Applicant could pursue both in parallel. Petitions are less useful when you really want a petition decision before you respond to other issues in the Office Action.

Finally, I wish petition decisions were searchable, because I think petitions are a good tool to have in the toolbox. But until they are, I'll be limited to posting about petitions that I come across randomly while looking at other things.

BPAI affirms anticipation based on reasoning that performing action on whole implies peforming action on all parts

Takeaway: In a reexamination appeal, the BPAI considered the Patentee's arguments that a reference did not disclose "monitoring the operating system for an event". The Board first found that the reference taught monitoring a computer system for an event and also taught that the computer system included an operating system. The Board then affirmed the rejection since "Appellant does not sufficiently demonstrate any differences between ... continuously monitoring the computer system (including the operating system contained therein) for an event ... and the claimed feature of monitoring the operating system for an event. Nor do we identify any differences since in both cases, a computer system and operating system of the computer system are being monitored for an event." The Board's reasoning thus appeared to be that since the whole (computer system) was monitored, any included component (operating system) was also monitored.

Details:

Ex parte Finjan, Inc.
Appeal 2011003035; Reexam 90/008,684; Tech. Center 3900
Decided  June 6, 2011

The patent under ex parte reexamination involved virus protection software. A representative independent claim read:

1. A computer-based method, comprising:
     monitoring the operating system during runtime for an event caused from a request made by a Downloadable;
     interrupting processing of the request;
     comparing information pertaining to the Downloadable against a predetermined security policy; and
     performing a predetermined responsive action based on the comparison, the predetermined responsive action including storing results of the comparison in an event log.
(Emphasis added.)

During the reexam, the Examiner rejected claim 1 as anticipated by a non-patent reference (Rx PC - The Anti-Virus Handbook) which described a software package ("Virex PC") containing two anti-virus programs, VPCScan and VirexPro. The Patentee responded by arguing that several of the claim elements were not taught by the reference – and submitted declaration evidence to supplement these arguments.

One of the elements argued on appeal by the Patentee was the "monitoring" element. The Patentee argued in the Appeal Brief that Virex monitored a user-selected target file rather than the operating system. More specifically, the Patentee argued that Virex "sat in front of" a user-selected target file to intercept all requests associated with this file – regardless of which executable made the request. The Patentee contrasted this with claim 1, which described "monitoring all requests from Downloadable [files] to the operating system, not just requests to particular files." (Emphasis in original.) The Patentee then referred to the expert declaration to provide more technical detail about the workings of Virex:

In order to monitor the operating system for events caused by requests from Downloadables as required by the claims, requests to both selected and non-selected files and file types must be monitored. Per the expert affidavit of Dr. Giovanni Vigna (Paragraph 4), file-based Virex and VirexPRO did not and could not monitor an entire operating system for a requested action or resulting event from a requesting file or program (hereafter "virus file"), the Virex programs could only monitor actions to be taken on pre-determined target files. More particularly, the Virex programs hijack the response routine of specific software interrupts. By doing this, they are able to monitor only a subset of the operations that can be performed by a program (that is, those that are associated with the software interrupt), and, as a result, they are not capable of monitoring the operating system in a comprehensive fashion.

In the Answer, the Examiner responded to the Patentee's arguments. In response to the Patentee's assertion that Virex did not monitor the operating system, the Examiner cited to teachings in the Handbook that Virex monitored requests for disk formatting and requests for disk reads and write. According to the Examiner, "detecting these activities requires that Virex monitor subsystems of the operating system such as the file system, memory system, network system, and run-time execution system." In response to the Patentee's assertion that Virex monitored only user-selected files, the Examiner clarified that the rejection relied on teachings about installation. The Examiner explained that Virex's installation options allowed the user to select all files (via a wildcard ). With this option chosen, Virex would then monitor all files, i.e. "an entire operating system", at runtime.

The Patentee filed a Reply Brief to rebut points in the Examiner's Answer. According to the Patentee, "protecting every file on the computer is not the same as monitoring the operating system." Having the user "manually select every file or extension" is "incredibly inefficient and substantively different from monitoring the operating system" since "if any new files or extensions are added to the computer then the user would need to manually select those files."The Patentee then characterized user selection of every file on the computer as "a construction of the Examiner" that is "not mentioned in [the Handbook]." As for the Examiner's reliance on the teachings about disk formatting and disk reads/writes, "the 'features' are never described in any detail and [the Handbook] does not disclose anything about how these features are performed."

The Board affirmed the anticipation rejection. With regard to the Patentee's "monitoring" argument, the Board referred to the Handbook in making these findings of fact: Virex continuously monitored a computer system which included an operating system; and Virex created an alert when an attempt was made to perform tasks such as executing a program. The Board then drew the following conclusion:

Since [Virex] continuously monitors a computer system that includes an operating system for an “event” (e.g., an attempt to run a program or an attempt to terminate and stay resident – the attempt being a “request” for an event), we agree with the Examiner that Endrijonas discloses monitoring the operating system of the computer system for the event as recited in claim 1.

The Board explained why the Patentee's arguments were unpersuasive:

Appellant does not sufficiently demonstrate any differences between the [Virex program] continuously monitoring the computer system (including the operating system contained therein) for an event (e.g., an attempt to run a program or an attempt to terminate and stay resident) and the claimed feature of monitoring the operating system for an event. Nor do we identify any differences since in both cases, a computer system and operating system of the computer system are being monitored for an event.

Postscript: The Patentee appealed to the Federal Circuit. But the appeal involved another issue (whether or not the Virus Handbook was an enabling reference) so that Fed. Cir. stayed the appeal pending decision on another case on the presumption of enablement for non-patent references, In re Antor Media. Antor was decided in Aug. 2012, but no decision has been issued yet in In re Finjan.

My two cents: Right result. Bad reasoning.

The Board's simplistic reasoning was based on the unsupportable premise that performing an action on a whole implies performing the action on the components of the whole. Probably true in some contexts, but it's hardly a general truth. Does "painting a house" mean painting: 1) the exterior; 2) the exterior and the interior; 3) exterior, interior, and contents of the house; 4) exterior including the window panes and shingles on the roof? Generally, we mean #1. Maybe #2. #3 and #4 are unlikely choices.

In this case, "monitoring a computer system" might mean monitoring only the hardware components, or might mean monitoring only the software application components, or might mean monitoring only the operating system. I'm inclined to say that the Virus Handbook was talking about monitoring the operating system, since the entity that provides services for detecting actions like file access and program execution is usually referred to as an "operating system." But my point is that I reached that conclusion from the specific teachings of the reference, as understood by a POSITA –not from a premise that actions on a system applying to all components of the system.

New rules for inventor declaration and power of attorney

Heads up: Big changes to patent practice starting September 16, 2012. Several new rules packages to implement various provisions of the America Invents Act (AIA) take effect on that date. The only rules package I'll talk about here relates to inventor declaration and power of attorney. The Federal Register Notice can be found here. PharmaPatents has a nice overview of these rules here. IP boutique Oblon Spivak has a FAQ here.

The new rules affect both the procedures for filing declarations and the substance of the declaration itself. Carl Oppedahl, an experienced practitioner who has studied the new rules extensively, says "it is not much of an exaggeration to say that they change everything about the Oath and Declaration of the inventor."

Carl's guest post on Patently-O explains the importance of using the "old" declaration for "old" applications and the "new" declaration for "new applications". Sounds like transitional practice in the days leading up to September 16 changeover will be tricky -- you don't want to send out the old declaration for signature before September 16 and then end up filing it after September 16. To get all the gory details without reading the 52 page notice in the Federal Register, you can purchase Carl's webinar "What will change about the oath or declaration on September 16?"

One far-reaching change in the AIA is that inventors are no longer required to be “applicants” on patent applications. To implement this change, the same rules package taking effect on September 16 allows assignees to not merely prosecute applications, but to actually file in the name of the applicant.

Assignees will probably be glad to hear that the onerous procedures for handling missing or non-signing inventors have been replaced by a much simpler procedure. Under the new rules, you file a much simpler "substitute statement."

AIPF Annual Meeting October 1 and 2: "Intellectual Property as a Corporate Asset"

If you're interested in learning about using IP as a corporate asset, and in getting your CLE at the same time, check out the upcoming program put on by the AIPF (Association of Intellectual Property Firms) on October 1 and 2 in Washington, D.C.

The theme of this year's Annual Meeting is "Intellectual Property as a Corporate Asset", and the program includes presentations on theme topics such as "Models for Monetizing Patents in the 21st Century," "Asset Valuation," and "Tech Transfer after the Obama Technology Objective." The program also includes various IP law topics such as the AIA and the Patent Prosecution Highway, as well as practice development topics like "In-Person and Online Strategies for Networking" and "The Paperless Office".

This year will mark the third time I've attended this event. More info at AIPF 2012 Annual Meeting and Program Schedule.

BPAI affirms indefiniteness when claim positively recites "at least one flooring panel" and then refers to "panels of the least one flooring panel"

Takeaway: During prosecution, the Examiner rejected a claim to a flooring system as being indefinite. The claim positively recited "at least one flooring panel" but then referred to "lips configured to overlap ... a joint between panels of the at the least one flooring panel and the connecting element". The Examiner found that the inconsistency between "at least one flooring panel" (singular) and the "panels" (plural) rendered the claim indefinite. The Board affirmed, finding that the broadest reasonable interpretation of "at least one panel" encompassed a single panel, yet the reference to panels implies multiple panels. (Ex parte Grafenauer, BPAI 2012.)

Details:

Ex parte Grafenauer
Appeal 2010009906; Appl. No. 11/533,634; Tech. Center 3600
Decided:  February 29, 2012

The application on appeal disclosed flooring panels with connecting elements. Claim 15 read:

15. A system, comprising:
      at least one flooring panel with a decorative layer top layer, the at least one flooring panel comprising a tongue and a groove on side edges lying opposite one another; and
      a connecting element comprising a groove and a tongue on side edges corresponding to the tongue and the groove of the at least one flooring panel,
      the connecting element further comprising, in an area of the side edges, lips configured to be a sole sealing mechanism and to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.

During prosecution, the Examiner objected to claim 15, which used the phrase "at least one" with the plural term "panels."

As applicant is only claiming one panel, it appears the claim should be directed to --at least one flooring panel-- rather than "at least one flooring panels".

In response, the Applicant amended to consistently refer to "at least one flooring panel" (singular), so that the claim read:

A system comprising:
      at least one flooring panel ...; and
      a connecting element comprising ...
      the connecting element further comprising ... lips configured to ... bear on a top side of the at least one flooring panels and configured to overlap a butt joint between panels of the at least one flooring panel and the connecting element.

However, the claim did still refer to "panels of the at least one flooring panel." Because of this inconsistency, the Examiner rejected claim 15 as indefinite, taking issue with the "overlap" limitation:

Further, the limitation "overlap a butt joint between panels of the at the least one flooring panel and the connecting element" renders the claim indefinite (lines 8-9 of the claim). It appears the limitation should be directed to more than one panel as the claim recites the lips of the connecting element bearing on the top side of the panels (see fig. 1 of disclosure). However, the claim as presented, only positively recites a singular "at least one flooring panel" as previously noted.
(Emphasis added.)

The Applicant appealed the indefiniteness rejection of claim 15, along with several prior art rejections. Claim 15 is repeated below:

15. A system, comprising:
      at least one flooring panel ... ; and
      a connecting element
      the connecting element further comprising ... lips configured ... to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.
(Emphasis added.)

In the Appeal Brief, the Applicant referred to Figure 1 (shown below) to explain how a person of ordinary skill in the art would understand claim 15.

More specifically, Figure 1, clearly shows lips (9) configured to bear on a top side (8) of an adjacent panel (2) and configured to overlap a butt joint between panels (1,2) of the at least one flooring panel and the connecting element (7).
(Additional numbers added.)

The Examiner's Answer reiterated that the claim recited a singular panel with lips bearing on the singular panel, yet the figures showed each lip bearing on a separate panel. The Answer also stated that "it is unclear if the claim is reciting a singular flooring panel or more than one flooring panel."

The Applicant filed a Reply Brief with a lengthy rebuttal. The Applicant explained why a claim to a single panel nonetheless recited plural panels.

     Claim 15 recites, in part:
... the connecting element further comprising, in an area of the side edges, lips configured to be a sole sealing mechanism and to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.
... That is, a lip on each panel can overlap with an adjacent panel. This language is clearly described in the specification. The claims do not recite that more than one lip is configured to bear on the singular at least one flooring panel. The Examiner is misreading the claims and taking the claim language out of context.
     Also, Appellants submit that although one lip is shown in FIG. 1 and FIG. 2 for each panel, ... two lips can be required so that the lips can provide the sealing mechanism for two, adjacent panels. Additionally, in the context of the claims, the lips are used so that they can provide sealing between at least one panel (e.g., "singular"). ...
     Lastly, for claim 15 to read correctly and for it to be understandable, it is necessary to place the claimed elements in the proper environment. For this reason, although claim 15 is directed to at least one panel, the claim uses the terminology "panels" in order to show how the lips are used with adjacent panels. This is clear from the record and the specification.

The Board affirmed the indefiniteness rejection, focusing on the inconsistency between "at least one panel" and "panels of the at least one flooring panel."

     The broadest reasonable interpretation of the term “at least one panel” is that the term is sufficiently broad to encompass a single panel. On the other hand, the recitation of “panels of the at least one flooring panel and the connecting element” implies that the at least one flooring element must include a plurality of panels. The use of two different terms to identify the “at least one panel” and the “connecting element” implies that the connecting element is not a panel.
     Therefore, the broadest reasonable interpretation of claims 15-20 and 23 is indefinite. Depending on which interpretation of the term “at least one flooring panel” one adopts, claims 15 and 23 may be sufficiently broad to encompass systems having only a single floor panel or may be limited to systems each having a plurality of panels. The disclosure of paragraph [0016] and Figure 1 of the Specification, cited by the Appellant at page 6 of the Appeal Brief, does not resolve this ambiguity. 
(Emphasis added.)

My two cents: The Applicant really stuck to his guns here, and seemed unwilling to claim two panels – even though the novelty seemed to lie in the interactions between the connector and the two panels (i.e., tongue and groove). I don't get this reluctance.

What infringement scenario was the Applicant concerned about giving up by claiming two panels? Sure, such a claim would require a flooring manufacturer to sell two panels and a connecting element, even though the connector did provide a benefit (sealing) when used with only a single panel. But is that really giving up that many infringers? Won't a large number of flooring systems be sold with pairs of panels and a connector in between? Yeah, it's great to have a claim that catches every infringement scenario. But the Applicant here put the entire patent at risk by refusing to rewrite the claim in a way that made sense.

This very issue was explored a bit during oral arguments. The Applicant's representative stated that "a flooring system would ordinarily have more than one panel" and that the tongue and groove of the connecting element would be "connected to a groove and a tongue of respective flooring panels." The judge then asked: "If that's the case, then why not just recite flooring panels?" To which the Applicant's representative responded: "The client had decided that we want to say 'at least one' in this particular case to make it broader."