Monday, September 3, 2012

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."

12 comments:

  1. Oh, yeah! Blame it on the client. They should be real happy to read that.
    Truth is, there are stubborn clients who will demand that you don't give up "at least one."
    However, the BPAI could just as easily have said that it is not indefinite, "at least one" means "one or more" and the use of the word "panels" later on indicates there are "at least two" panels being claimed, set that down in the prosecution history and let the litigation judge use that during claim construction.

    Yes, this was stubbornness on the part of the Applicant and stubbornness on the part of the BPAI in not reversing the Examiner's rejection.

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  2. i personally dont think the faulty language is "panels" but in fact "between" as in "between panels". that there has a greater connotation of more than 1 panel than "panels" (we regularly use the plural to reference the singular). rather, to say "between" pretty much requires more than 1 for between to exist

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  3. "I don't get this reluctance"

    It probably wasn't the applicant's reluctance. It was probably the applicant's attorney's reluctance to submit to the coercive power of Ex parte Miyazaki.

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  4. "However, the BPAI could just as easily have said that it is not indefinite, "

    Nah, they couldn't, because it is still unclear what is meant by the first recitation of "at least one panel". What is meant by the second recitation surely is that there is more than one, but the meaning of the first recitation is quite up for debate. And when there is debate, Miyazaki steps in to referee.

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    Replies
    1. "Nah, they couldn't, because it is still unclear what is meant by the first recitation of "at least one panel"."

      Unclear to whom? It's not like they defined the level of ordinary skill such that they could articulate why someone of ordinary skill wouldn't be able to understand it.

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    2. I love your persistence.

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  5. "The client had decided that we want to say 'at least one' in this particular case to make it broader." "

    See? Notice that last part about "make it broader", it wasn't the client that was truly making the decision, it was the leading question invariably asked by the lame attorney. You know he asked something like shall we narrow the claim and say "panels" or keep it broader and say "at least one"? Instead of simply explaining the actual issue in the case like someone who isn't a tard would have done.

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    Replies
    1. Given how badly examinertards muck up 112 rejections, the attorney thought he had a winning argument. The attorney forgot how far the BPAI goes to save bad rejections.

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    2. Examinertards aren't the only ones who don't understand 112, 2nd. There are plenty of practitioners who don't understand it. There's a good example of that over at Gene Quinn's IP Watchdog site.

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  6. The problem is that "at least one" panel is neither singular nor plural: it is both. "At least one" = "one or more". If it's one, you have one panel, singular. If it's more than one, you have panels, plural. "At least one" is a compact way of phrasing a claim to cover one or more than one in infringement, but it can lead to awkward follow-on phrasing when you need to refer back to "the at least one panel".

    If at some point you want to explicitly claim two panels, you should then have a dependent claim such as "...wherein the at least one panel comprises a first panel and a second panel". I've also seen the extremely clumsy "...wherein the at least one panel comprises at least two panels" or "...wherein the at least one panel comprises a plurality of panels". This can then easily spiral out of control.

    All that said, in this case, the connector is useless unless it is connecting two panels. You can't use it as an edge molding to seal a single panel, because it would still have an exposed groove, same as a bare panel, so no one would use it in that way.

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    Replies
    1. How dare you attempt to bring common sense into this discussion!

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