Thursday, June 21, 2012

Prosecution tip: Using an RCE to suspend prosecution

Takeaway: An Applicant filed an RCE to pull from appeal in order to file declaration evidence of non-obviousness. While doing so, the Applicant took advantage of a little-used rule (§ 1.103(c)) to request suspension of prosecution for three months, thus giving the Applicant time to obtain the declaration. The Applicant then filed expert evidence under § 1.132 before the close of the suspension period. (Application of Hermann, Appl. No. 09/817,797, Tech. Center 2800, available on Public PAIR.) 

Details: There are two mechanisms by which an Applicant can request suspension of prosecution. You can file a petition under § 1.103(a), which requires a showing good and sufficient cause. Or you can request suspension under § 1.103(c) by simply checking a box on the RCE transmittal. No reason for the suspension is required. However, note that the request for suspension does not itself serve as the "submission" required to be filed with an RCE. Therefore, you must also file a response to the Final Office Action or refer to a previously filed After Final.

My two cents:  I think this route sounds like a very useful option once you decide to file declaration evidence. Typically, you're at final when you realize that declaration evidence is what you need to beef up your position. That means you're already going to need to file an RCE. So for a relatively small fee (currently $130), you can buy yourself an extra three months to obtain the declaration from the inventor or other expert. That's way cheaper than paying EOTs.

Postscript: Unfortunately, the declaration evidence didn't work for the Applicant in 09/817,797.  The Examiner not only found the declaration unpersuasive, the Examiner stated that "the declaration fails to teach why the device recited in the claims of the instant application is workable" and then gave a new enablement rejection. The Applicant submitted another declaration to address both the enablement and prior art rejections. The application is currently on appeal.

Monday, June 18, 2012

BPAI affirms obviousness, finding that lots of of obvious choices does not make claimed choice non-obvious

Takeaway: The Applicant appealed an obviousness rejection of claims to a combination of a detergent and a container. In addition to teaching the claimed container, the secondary reference also taught that the container provided "customer friendly dispensing." According to the Applicant, the prior art included an infinite number of other containers that would be suitable for a detergent. Therefore, the Applicant said, the Examiner had used advantages of the container gleaned from the Applicant's specification, viewed in hindsight, to arrive at the claimed combination. The Board affirmed the rejection. The Examiner's rationale came from an express teaching of the reference, not hindsight. As for the Applicant's argument about the number of possible containers, "[t]he fact that it would have been equally obvious to use other containers for Gutierrez’s detergent does not make the use of Seifert’s container any less obvious." (Ex parte Buzzaccarini et al., BPAI 2011.)

Details:

Ex parte Buzzaccarini et al.
Appeal 2010009418; Appl. No. 11/799,800; Tech. Center 1700
Decided  July 13, 2011

The application on appeal involved laundry detergent.  The independent claims were directed to a combination of a detergent and a container.

1. An article of commerce for laundering comprising:
     (a) a shear-thinning, compact fluid laundry composition comprising a sum of water and non-aminofunctional solvent of from about 5% to about 45%, by weight of the composition; and
     (b) a water-insoluble container releasably storing said compact fluid laundry detergent composition;
     wherein said composition has a neat viscosity, Vn, of from about 1,000 cps to about 10,000 cps as measured at 20 s-l, and a diluted viscosity, Vd, that is less than or equal to about 0.5Vn, as measured at 20 s-1; and
     wherein the water insoluble container is selected from bottom dispensing containers that are capable of preventing olfactory access by a consumer to a head space co-located with the compact fluid laundry composition in the water-insoluble container during dispensing of the compact fluid laundry composition.

A final Office Action included an obviousness rejection for the independent claims. The obviousness rejection relied on: a primary reference for the claimed composition except for the specific viscosity values; a secondary reference for the claimed container; and a third reference as evidence that the claimed composition would inherently possess the claimed viscosity.

On appeal, the Applicant argued, at length, that a POSITA would not be motivated to combine the composition and the container since there are an infinite number of choices for each:

     The only motivation the Examiner provided for the employment of the container of Seifert et al. to hold the composition of Gutierrez et al. was to contain and dispense the liquid detergent in a customer friendly fashion.
     However, without further motivation, Applicants submit that there are an infinite number of containers, besides just the bottom dispensing containers as recited in Applicants' claim 1, that are suitable for customer friendly packaging of a sheer-thinning fluid laundry composition. Applicants further submit that there are an infinite number of fluid laundry compositions, besides just the particular sheer-thinning fluid laundry composition as recited in Applicants' claim 1, that are suitable for customer friendly packaging in a bottom dispensing container.
   In light of the endless number of possible combinations of fluid laundry compositions and containers, Applicants' specification provides the advantages of the particular article of commerce as recited in claim 1. Such advantages include the conservation of resources and the elimination of waste (through a more concentrated, and therefore viscous, composition that does not sacrifice performance), as well as packaging that provides improved ease of measurable dispensing and aesthetic appeal to consumers. Additionally, the creation of such an article of commerce requires an interdisciplinary collaboration between fluid laundry composition formulators and packaging engineers. Thus, Applicants contend that the Examiner's combination of Gutierrez et al. in view of Seifert et al. when taken with Kott et al. is a product of impermissible hindsight reconstruction, wherein the Examiner has improperly utilized Applicants' specification as a roadmap.

In the Answer, the Examiner maintained the asserted motivation to combine ("to contain and dispense the liquid detergent in a friendly fashion") and defended the motivation as follows:
In this case, certainly, applicant would agree that the cleaning composition of Gutierrez et al. is obviously offered to consumers in some form, or type, of container. All cleaning products come with a container inherently. The only question remains, is the type of container, and whether it is well known in the art or not. Therefore, the appellant's assertion (pages 10, 11, and 12) that examiner's rejection has impermissibly utilized the current application as a road map for hindsight reconstruction, is respectfully disagreed with.

The Board affirmed the obviousness rejection. The Board first found that the primary reference did teach the claimed composition, and that the combination was obvious because "Seifert expressly suggests the use of the container for laundry detergent." The Board then dismissed the Applicant's "infinite choices" argument as follows:
This argument is not persuasive, because Seifert expressly suggests the use of its bottom dispensing container for laundry detergents (FF 5). Thus, Seifert would have suggested using the container with any liquid detergent, including the detergent of Gutierrez. The fact that it would have been equally obvious to use other containers for Gutierrez’s detergent does not make the use of Seifert’s container any less obvious.
(Emphasis added.)

My two cents: This case really highlights the huge differences between how inventors and patent attorneys view obviousness and how the court sees obviousness. In the inventor view, even if all containers are known, the inventor evaluates each one to determine whether it makes sense to use. Such an evaluation takes time, so that the larger the number of choices, the less obvious it is to choose any particular one.

This case suggests to me that the way the courts view obviousness, all the possible types of containers and the advantages of each are not only available to the inventor, but are instantaneously available. Sure, the Seifert reference was one of many [hundreds? thousands?] containers for liquids, but it isn't as if the inventor had to read all of the references, one by one. The inventor already knows that Seifert's container is advantageous for detergents. And knows about all other types of liquid containers and their advantages. Simultaneously.

It seems like the courts think that in predictable arts, choosing among any finite number of options is obvious because the evaluation is cost-free.

Maybe I'm reading too much into the BPAI's reasoning.. Maybe the courts don't really feel that evaluating a finite number of options has no cost whatsoever. Maybe the courts only feel that evaluating options is part of the inventive process, which means we don't reward inventors for simply going through the process.

Except that in some scenarios, the cost of evaluating options must surely be prohibitive. And picking a particular one really is inventive.

Shouldn't the obviousness analysis take this into account? It seems like when the court chooses to use the "finite number of identified, predictable solutions" rationale, the court should look at the number of options, the cost of evaluating each one, and the benchmark used to determine whether the cost is prohibitive.

Maybe in some technology areas, thousands of options can be easily modeled via computer. Under those facts, maybe an inventor doesn't deserve a patent for merely selecting one option among thousands.

Maybe in other fields, evaluating even a dozen options has a high cost. Under those facts, maybe an inventor does deserve a patent for choosing one option.



Wednesday, June 13, 2012

BPAI finds "single unitary computer program" reads on two programs in reference based on Applicant's minimal description of claimed program

Takeaway: On appeal, the Applicant argued that the reference's teleconferencing feature did not anticipate the limitation "single unitrary conference program" because the reference required two separate programs in order to provide the teleconferencing feature. The BPAI found that "single unitary computer program" read on two programs in the reference because the Applicant had almost no description of the program: merely a single rectangle in a figure. "Absent a description of the details of what might be contained in [Applicant's] rectangle 106, we do not see how the present limitations might distinguish over Nakayama ... We fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) [in the reference] cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication." (Ex parte Ditzik , BPAI 2012.)

Details:

Ex parte Ditzik
Appeal 2009014097; Appl. No. 11/023,361; Tech. Center 2600
Original Decision:  November 30, 2011
Decision on Rehearing: April 30, 2012

A representative claim on appeal read:
23. A data conferencing system comprising:
a first conferencing computer
...
wherein the first conferencing computer is configured to a personal computer configured to run an operating system, a single unitary computer conferencing program adapted to real-time communication, and a plurality of personal computer application programs ...
(Emphasis added.)
 The Examiner rejected the independent claims as being anticipated by Nakayama. The Applicant amended to add the qualifier "single unitary," and argued that the conferencing function in Nakayama required two programs on a computer: an interlocution object program and an interloction conrol program. Thus, Nakayama did not satisfy the "single unitary" limitation, according to the Applicant.

The Examiner maintained the rejection and disagreed with the Applicant's characterization of the reference. The Examiner asserted that "the only functionality required of Applicants conferencing program is to achieve real-time communication," which Nakayama achieved with the interlocution control program alone. Thus, the "interlocution object program is not necessary for real-time communication."

The Applicant repeated the argument on appeal. The Examiner maintained his position and elaborated on it, explaining that while the did recite a "single unitary computer conferencing program," it did not require that the entire conferencing operation be accomplished with a single program -- only that it be "adapted to real-time communication". The Examiner again asserted that Nakayama's control program performed real-time communication, cited to several specific sections of the reference.

The Board affirmed the rejection, focusing on what "single unitary computer conferencing program" meant in the context of Applicant's disclosure. The Board noted that the claimed program was barely described at all:
The only description of the "realtime tele-writing conferencing program 106" in the written description consists of the words "realtime tele-writing conferencing program 106."
...
Appellant’s disclosure does not describe the actual components that make up the “conferencing
program” 106. A practical application of the “conferencing program” might include various other “programs” that make up the overall conferencing program (e.g., a program for data acquisition and a program for data transfer). Absent a description of the details of what might be contained in rectangle 106, we do not see how the present limitations might distinguish over Nakayama, even if we were to accept all of Appellant’s arguments concerning the operation of the interlocution “control” and “object”
programs of the reference.

The Board further noted that the phrase "single unitary" did not appear at all in the specification, and the Applicant relied solely on one of the figures as the basis for the limitation.
Appellant’s argument reduces to the contention that instant Figure 4B shows one rectangle for program 106 and Nakayama shows two separate rectangles [designated Interlocution Control Program and Interlocution Object Program]. ... [W]e fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication.

My two cents: The argument between the Applicant and the Examiner boils down to a "where do you draw the box" argument. The Examiner drew a box around the control program and mapped that to the claimed "conferencing program," then said the reference anticipates because the box meets the limitation "single unitary". The Applicant drew a box around the control program AND the interlocution program and mapped that to the claimed "conferencing program," and said no anticipation because the box does not meet "single unitary."

The Board refused to play this game and said: It doesn't matter where you draw the box in this case. The Applicant did nothing more than label a box with the text "conferencing program." Doing so doesn't give the program a "single unitary" structure.

The Board essentially ignored found the "single unitary" qualifier meaningless given the lack of detail in the Applicant's disclosure.

I see "where do you draw the box" issues in mechanical cases too, but there is usually a lot less room for maneuvering by either side. And I've definitely seen the Board reverse when the Examiner drew the box in a completely arbitrary or nonsensical way. Many computer cases are definitely vulnerable to this sort of rejection.


Thursday, June 7, 2012

BPAI finds § 1.132 is improper mechanism for swear behind, even if some facts are within personal knowledge of attorney

Takeaway: In attempting to antedate (swear behind) a reference with a showing of conception then diligence, the Applicant first submitted a declaration under § 1.131 signed by the Applicant's attorney. When the Examiner indicated that a  § 1.131 declaration must be signed by the inventors, the Applicant refiled the attorney-signed declaration under § 1.132. The BPAI found both declarations to be insufficient, noting that the first was insufficient because it wasn't signed by an inventor, and the second because only a § 1.131 declaration is available for swearing behind a reference. (Ex parte Flynn, BPAI 2010.)

Details:

Ex parte Flynn
Appeal 2009008768; Appl. No. 11/550,050; Tech. Center 2100
Decided: March 11, 2010

The technology in the application on appeal involved a computer simulator for remote control locomotive systems. All claims were rejected as obvious. The Applicant attempted to remove a primary reference in one of the obviousness rejections by antedating, or swearing behind, the reference. One of the issues on appeal was whether the swear-behind declaration was effective.

In a first attempt to antedate the reference, the Applicant filed a § 1.131 declaration which purported to show conception "prior to 2002 and the March 2002 date of the Transport Technology reference" and diligence "from prior to 2002 to the filing of the parent application on June 25, 2002."  The declaration was filed with supporting documentation that included: a nine-page invention submission form; client correspondence authorizing the preparation of a patent application; and several more items of client correspondence with attached copies of a draft application, inventor comments, and a revised draft. Though the declaration was styled as a  § 1.131 declaration, it was executed by the Applicant's representative rather than the inventors.

In the next Office Action, the Examiner explained that the declaration was defective because a § 1.131 declaration must be executed by the inventors. The Examiner also found the evidence insufficient to establish conception or diligence.

In a second attempt to antedate the reference, the Applicant filed the same set of papers, once again executed by the Applicant's representative. But this time the declaration was styled as a § 1.132 declaration.

In the Answer, the Examiner found the § 1.132 declaration insufficient to swear behind the reference, explaining that § 1.131 is the only mechanism available for antedating. The Applicant did not file a Reply Brief.

The Board found both declarations to be ineffective in antedating the reference. The Board noted that plain language of § 1.131 requires an antedating declaration to be signed by all the inventors. Thus, the first declaration was ineffective. The Board found that the second declaration was also ineffective because § 1.132 is an improper mechanism for antedating:
A declaration under 37 C.F.R. § 1.132 is improper for antedating a prior art reference where such declarations are specifically provided for under 37 C.F.R. § 1.131. Rule 1.132 is essentially a default rule, allowing applicants to traverse rejections/objections where no other rule provides for a means (through declaration practice) to do so – “any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.” 37 C.F.R. § 1.132 (emphasis added). Rule 1.131 specifically provides the means by which a prior art reference may be antedated, i.e., it is a basis that is “otherwise provided for.”
The Board further explained that a § 1.132 declaration could be used in conjunction with a 1.131 declaration. That is, the Applicant could have submitted a § 1.131 declaration executed by the inventors, along with a § 1.132 declaration of facts within the personal knowledge of the representative. Finally, the Board noted that the Applicant could have used a § 1.183 petition to request a waiver of the invention signature requirement.

My two cents:  It appears that the attorney stuck to § 1.132 because some of the facts relating to diligence were facts within the personal knowledge of the attorney rather than the inventor. Even so, the rules seem pretty clear that § 1.131 is what you use for a swear-behind. And as the Board noted, you can file the § 1.131 in conjunction with a § 1.132 signed by the attorney and attesting to the attorney's personal knowledge (e.g., diligence).

I suppose an inventor could attest to facts of receiving a draft, responding with comments, and receiving a revised draft. But here, the attorney attested to "due diligence" being exercised from conception to filing. It does seem that the attorney rather than the inventor is the right person to attest to the legal conclusion of due diligence. So file two declarations, one by the inventor and one by the attorney.

The Board's suggestion of  a § 1.183 petition for waiver of the inventor signature requirement doesn't seem to fit the facts here. That is, there was nothing to suggest that the inventor couldn't or wouldn't sign. But it is useful to know this avenue is available.

Getting signatures from all the inventors during prosecution is probably difficult in a lot of cases because of the long delay between filing and appeal. I wonder if one of the reasons swear-behind isn't very common is that attorneys figure it would be too much trouble to track down inventors.