Board decisions involving the Wayback Machine to show status as prior art (Part I)

Long ago I wrote a series of post discussing the use of web pages as prior art. In one of those posts (here), I mentioned the use of www.archive.org  (a.k.a. the "Wayback Machine"), which is an archive site of web pages as they existed in the past. An Examiner can't allege that a web page was available as of your application's past filing date if all he has is the page retrieved as of the examination date, However, he can use the Wayback Machine to navigate to that same web page, retrieve a copy as it existed as of a particular past date, and use the page retrieved via the Wayback Machine as the reference.

Since my original post back in 2009, I've come across a few more cases where the Applicant tried to disqualify a reference on the basis of its retrieval via the Wayback Machine. Generally, it's a losing battle: as long as the Examiner identifies the page and retrieval date in the proper manner, the Board views such references as "printed publications" under § 102(b) or § 102(a).  In today's post, I'll discuss a few of these Board decisions, and highlight some unpersuasive arguments made by Applicants.

To qualify as a "printed publication," case law requires that the reference be disseminated to persons in the art. For example, MPEP § 2128 states that "[a] reference is proven to be a 'printed publication' 'upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it. In re Wyer, 655 F.2d 221, 210 USPQ 790 (CCPA 1981)."

In Ex parte Rowse, the Applicant attacked the Examiner's use of the Wayback Machine on this basis. The Applicant argued that "the Examiner has provided no evidence that the Xactware reference qualifies as a printed publication other than asserting that 'the Internet Archive is a tool used to access internet pages that were published and publicly accessible in the well-documented past.' " Next, the Applicant referred to the "dissemination" requirement in MPEP § 2128, and then continued as follows:

Regarding "public dissemination," pages on the World Wide Web are not "disseminated" - they are "browsed" using a "Web browser" - the antithesis of dissemination. Many web pages are never even browsed. Regardless, the Examiner has submitted no evidence to show that the Xactware reference was ever "disseminated" to members of the public, or "browsed" by members of the public, prior to the applicants' date of invention. Regarding "public availability," the Examiner has made no showing that the Xactware reference was catalogued, indexed or searchable in any publically-available database prior to the applicants' date of invention.
(Emphasis added.)

The Board in Rowse found that the Examiner had made a prima facie case of the reference's status as prior art. The Board did not specifically address the dissemination argument, addressing instead the general argument that the Examiner had not provided evidence of publication. The Board first noted that in an ex parte proceeding, the rules of evidence are relaxed when demonstrating prima facie unpatentability. The Board then explained that

Appellants have not provided any evidence to show that the website from which Xactware was retrieved is not reliable as to presumed dates of publication. Nor have Appellants provided any other evidence tending to show that the content described by Xactware was not publicly available on the presumed dates.
(Emphasis added.)

The Board has also been unpersuaded by Applicant arguments that the Wayback Machine is not appropriate to show prior art status because it's not reliable. In Ex parte Hicks, the Applicant argued that “per the explicit terms of use for the Internet Archive Wayback Machine [mentioned on the archive site itself], the January 21, 2005 archive is not guaranteed to be accurate, current, complete, reliable, secure or error-free.” (Emphasis added.) The Applicant further asserted that "the Internet Archive does not guarantee that the data listed for January 21, 2005 is what was actually archived or if anything at all was even archived for that date." The Applicant concluded that the Wayback Machine is therefore "not a valid or reliable resource for establishing prior art."

The Examiner's Answer noted that Applicant had not provided any evidence to demonstrate that the archive date was invalid or that the web page was not accessible to persons of skill in the art. The Applicant filed a Reply Brief stating that:

Notwithstanding the well-recognized difficulty of proving a negative, Appellants' representative has performed an Internet search and has been unable to locate any other evidence indicating that the FFHD reference was  published  prior  to Appellants'  filing date. The only evidence of record in support of a prior publication date is from a single third party source that per it's own terms of use may not be accurate.

The Board in Hicks appeared to address the Applicant's unreliability argument by shifting the burden to the Applicant:

Electronic documents are archived on the Wayback Machine and are dated as of the archived date of the website. Appellants do not indicate that the archive date provided for FFHD by the Wayback Machine was generated other than in the normal course of operation of this site. There is no indication that this date was arbitrarily assigned or that the origin of document itself is suspect.

The Applicant in Hicks also tried another argument, characterizing the "URL date indicated by the Internet Archive Wayback Machine" as "nothing more than a third party assertion."

A publication date cannot be established based on an uncorroborated third party assertion unsupported by any affidavit or declaration. If all that was required to establish a publication date was a third party assertion unsupported by any affidavit or declaration, then any reference could be turned into prior art merely by finding a third party willing to place a prior publication date on the document. Such uncorroborated third party assertions unsupported by any affidavit or declaration are not sufficient evidence.  If an Applicant  wishes  to  submit an assertion by a third  party as evidence, e.g., in support of a Rule 131 or 132 submission, then the third party assertion is required to be supported by an affidavit or declaration. The Examiner should be held to no less of a standard. Here, the Examiner has not obtained any affidavit or declaration from the Internet Archive Wayback Machine supporting the publication date of  the FFHD reference. Nor has any other corroborating evidence been supplied by the Examiner despite repeated challenges  by the Applicant.

The Board in Hicks was not persuaded by this argument either. After noting that a PTO proceeding is not bound by the stricter rules of evidence of a judicial proceeding, the Board concluded that "without more, we decline to agree with Appellants that reliance by the Examiner on FFHD was improper."

As noted above, the Board generally allows the use of the Wayback Machine to show prior art status,
as long as the Examiner identifies the page and retrieval date in the proper manner. In a future post, I'll discuss a few cases where proper identification was at issue.

Board explains that when functional language is coupled with program structure, prior art structure be capable of performing the function without further programming

Sometimes when an Examiner sees a "controller" claimed in combination with functional language, he asserts that a controller in the reference reads on the claim language even though it doesn't perform the function. The Examiner's reasoning is that any controller is "capable of" performing the claimed function, and apparatus claims must distinguish on structure not function.

Last year I blogged here about a number of Board decisions that reversed an Examiner for using this reasoning. And I recently ran across another one of these reversals, in Ex parte Stein. Stein involved claims to an "immunoassay analyzer" which recited "a computer controller which [functional limitations]". I think this language in the Board's decision discussing the relevant case law makes a good template for arguing against such rejections.

     Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus as disclosed must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the controller must possess the necessary structure, hardware or software, for example, the programming, to function as claimed.
     The Examiner’s analysis appears to be based upon a finding that Hanawa’s controller would have been capable of performing the claimed functions upon further modification, such as the installation of software (Ans. 17, 18). While it might be possible to install software and/or hardware that would allow Hanawa’s controller to perform the functions of controlling movement, tracking location and determining the path for each of a plurality of test vessels as required in claim 1 and 13, the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc. , 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller,” see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the case here.

Note that the Board distinguishes In re Schreiber, which was purely mechanical, and which seems to be a favorite among Examiners. The Board relies instead upon more recent cases that involve electronics.

Example of a swear-behind (1.131) declaration executed by an assignee

Takeaway: A §1.131 declaration used to swear behind a reference must be signed by all the inventors, unless "it is not possible to produce the declaration of the inventor." (MPEP 715.04(I)(D).) In such cases, "an assignee or other party of interest" can sign. The MPEP doesn't give much additional guidance on how a swear-behind declaration executed by the assignee is any different than one executed by an inventor, but an example of an assignee swear-behind can be found in Reexam 90/009,435 (available on Public PAIR).

Details:

Appl. 90/009,435
Volterra Ex parte Reexamination
Filing Date: April 6, 2009
(File history available on Public PAIR.)

The Patentee in an ex-parte reexam submitted a declaration under §1.131 to swear behind a reference. However, because one of the two inventors was deceased, the Applicant accompanied the §1.131 Declaration with a Petition under §1.183 requesting waiver of the signature of the unavailable inventor. (See MPEP 715.04(I)). The §1.131 signed by the remaining inventor included a statement that his co-inventor was deceased. The §1.183 Petition explained those facts, then stated:

Thus, for at least these reasons, the Patent Owner submits that this is an extraordinary situation, in which justice requires suspension or waiver of any requirement that all inventors sign the declaration. The Patent Owner requests that a suspension of the rules be granted under 37 C.F.R. § 1.183 and that the declaration under 37 C.F.R. §1.131 be accepted with the signature of the sole surviving inventor, Andrew J. Burstein.

The Petitions Office denied the Petition because an "alternative avenue that complies with the rules is available to obtain the requested relief." The Petition Decision explained that §1.131 specifically allows the Patent Owner to sign the declaration during a reexam. The explanation in the Decision also referred to MPEP 715.04(I)(D), which indicated that "an assignee, or other party in interest" can sign the declaration "when it is not possible to produce the declaration of the inventor."

After the Petition was Denied, the Applicant then resubmitted the §1.131 declaration that was signed by the surviving inventor, and submitted a new §1.131 declaration that was executed by the assignee. The assignee declaration read as follows:

Declaration of Prior Invention by Volterra Semiconductor  under 37 C.F.R. §1.131

I, DAVID OH, hereby declare:
1. I am the General Counsel and Vice President of Legal Affairs of Volterra Semiconductor Corporation, the assignee of the entire right, title, and interest in each of U.S. Patents No. 6,278,264, ("Flip-Chip Switching Regulator") and No. 6,462,522 ("Transistor Pattern for Voltage Regulator"), henceforth "the Burstein Patents." I am empowered to act on behalf of Volterra Semiconductor Corporation.
2. Andrew J. Burstein and Charles Nickel are co-inventors of the Burstein Patents.
3. Charles Nickel is deceased. Because it is not possible to obtain or produce a declaration by Charles Nickel, and because the assignee may make such a declaration in a reexamination proceeding even if the inventors are available, I make this declaration on behalf of Volterra Semiconductor Corporation under 37 C.F.R. §1.131(a) and MPEP 715.04(I)(D).
4. On information and belief, Andrew J. Burstein and Charles Nickel conceived of the inventions described in the Burstein Patents in the United States, and reduced them to practice, prior to February l, 2000, as described in Andrew Burstein's declaration entitled, "REPLY DECLARATION OF ANDREW BURSTEIN IN SUPPORT OF VOLTERRA SEMICONDUCTOR CORPORATION'S MOTION FOR ENTRY OF PRELIMINARY INJUNCTION," ("the reply declaration") dated September 25, 2009, the entirety of which is incorporated into the present declaration. The reply declaration and its accompanying Exhibits A-P were filed in each of the above-referenced reexamination proceedings in conjunction with the DECLARATION OF PRIOR INVENTION OF ANDREW J. BURSTEIN UNDER 37 C.F.R. §1.131 ("the Burstein Rule 131 declaration") dated February 22, 2010.
5. A copy of the Burstein Rule 131 declaration and the reply declaration (with supporting Exhibits A-P) is attached and forms part of the present declaration, with all statements therein declared again in the present declaration.
[Final section acknowledging penalties for willful false statements, referring to 18 U.S.C. §1001.]

The Examiner found the §1.131 declaration to be sufficient to remove the reference.

My two cents:  In the Volterra case, the assignee declaration merely stated that the inventor was dead. The assignee declaration did not include documentary evidence (a death certificate?) although the declaration of the surviving co-inventor did include a corroborating statement.

Note that this lack of documentary evidence is a special circumstance peculiar to reexam. The §1.131 rule itself specifically allows "the owner of the patent under reexamination" to sign the declaration. Notably, the rule also distinguishes between the patent owner and other types of non-inventors allowed to sign: "party qualified under §§ 1.42 [dead inventor] , 1.43 [legally incapacitated inventor], or 1.47 [missing or uncooperative inventor]." 

So outside of reexam, a swear-behind executed by the assignee is submitted under the dead/legally incapacitated provision, or the missing/uncooperative provision. Which means you definitely need to do more than state "inventor can't be found." You need to explain why it's not possible for the inventor to sign, and submit documentary evidence supporting this. MPEP 715.04(I)(D) explains that the evidence is like that you'd submit under the missing/uncooperative provision of § 1.47.

 Proof that the non-signing inventor is unavailable or cannot be found similar to the proof required for a petition under 37 CFR 1.47 must be submitted with the petition under 37 CFR 1.183 (see MPEP § 409.03(d)). Petitions under 37 CFR 1.183 are decided by the Office of Petitions (see MPEP § 1002.02(b)).

As far as the contents of the assignee swear-behind declaration itself, I would look to this Voltera reexam as an example. The sections that differ from an inventor declaration are the description of the signer's position/role at the assignee, and the specific "empowered to act" statement (the first paragraph). And though it may seem a little strange for the signer (here, the General Counsel) to attest to actions of the inventor in the fourth paragraph, that's what a swear-behind is – attestation that the inventors conceived/reduced to practice. I note that in this particular example, the statement about inventor actions is made "on information and belief" and specifically refers to documentary evidence.

Finally, the Petition Decision also noted that "authority to take action by the assignee Volterra has already been established with the filing of a statement under 37 CFR 3.73(b)." In the Volterra case, this Right of Assignee statement was filed with the request for reexam. It's not clear whether you should file such a statement when submitting an assignee swear-behind during regular prosecution. I suppose it wouldn't hurt.

Board affirms anticipation of "selectively deformable projection" but not because plastic is inherently deformable

Takeaway: In an application directed to a fuel injector, the Examiner asserted that the reference disclosed a "selectively deformable projection." In illustrating the projection, the reference drawing used the cross-hatching pattern for synthetic resin or plastic, which the Examiner asserted was "known to be selectively deformable." The Applicant argued that because the MPEP did not require particular cross-hatching patterns to be used, the projection in the reference was not necessarily made of plastic. Furthermore, the Examiner had not provided evidence that plastic was selectively deformable. The Board affirmed the rejection, noting that the reference taught a projection that passes through an aperture when the electrical terminals are mated with a power source. The Board reasoned that such a projection was "selectively deformable." (Ex parte Reiter, PTAB 2013.)

Details:

Ex parte Reiter
Appeal 2010008974; Appl. No. 11/662,621; Tech. Center 3700
Decided:  September 11, 2012

The application was directed to a fuel injector. A representative claim on appeal read:

     18. A fuel injector, comprising:
     a valve housing;
     a solenoid coil;
     a selectively deformable projection;
     a restoring spring;
     an armature, wherein the armature is acted upon by the restoring spring, and wherein the armature cooperates with the solenoid coil;
     a valve needle, wherein valve needle and the armature together form an axially displaceable valve part;
     a sealing seat formed by a valve-closure member and a valve-seat body, wherein the valve closure member is provided on the valve needle; and
     a disk made of an elastomeric material affixed between the solenoid coil and the valve housing.
(Emphasis added.)

In a first Office Action, the Examiner rejected originally filed claim 18 as obvious over a combination of two references. The Applicant amended to include a "selectively deformable projection."

The Examiner maintained the rejection in a Final Office Action, relying on reference number 96 in FIG. 2 of the primary reference, Casey.

The Examiner then explained that while the text of Casey referred to 96 as  "mating aperture" rather than as a projection, "the numeral and line call-out are pointing out the projecting part of bobbin 88."

The Applicant argued in an After Final Response that the reference did not disclose that the projecting part of bobbin 88 was "selectively deformable."

The Examiner provided additional information in an Advisory Action, noting the cross-hatching pattern shown in Casey's FIG. 2 and indicating that this pattern is for "a synthetic resin or plastic." The Advisory Action same cross-hatching was used for number 100, described in Casey as an "electrical connector housing" made of "a structural plastic such as glass filled nylon."  The Action thus concluded that "such plastic is known to be selectively deformable."

The Applicant appealed, and maintained that Casey did not teach a "selectively deformable projection." The Applicant characterized Examiner's statement about inherent properties of structural plastic as "speculation and conjecture" since "there is no evidence in the present record that a structural plastic such as glass filled nylon is or may be selectively deformable." Turning to the cross-hatching in Casey's FIG. 2, the Applicant noted that the MPEP did not actually require particular cross-hatching patterns, but only indicated that Applicants should use these patterns, and also indicated that "use and clarity [of patterns] must be decided on a case-by-case basis." Thus, Casey's cross-hatching was not sufficient evidence that the projection was necessarily made of a structural plastic.

The Examiner's Answer elaborated once again on the cross-hatching issue, noting that the illustration of projection 27 in Applicant's FIG. 3 used the very same cross-hatching pattern as used in Casey, which in turn was the pattern for synthetic resin or plastic shown in MPEP 608.02. The Examiner also asserted that "synthetic resin and/or plastic are know for their inherently present deformation properties." Finally, the Answer included a statement that seemed to involve claim construction: "The Examiner would like to point out that any physical object is inherently selectively deformable to a degree."

The Applicant filed a Reply Brief and argued the above statements from the Answer were merely "conclusory allegations of inherency," where the law of inherency required "a basis in technical fact and/or technical reasoning."

The Board affirmed the rejection. The Board first interpreted the term at issue. Using dictionary definitions of the two adjectives, the Board found that “ 'a selectively deformable projection' is a projection that can have its form spoiled due to a highly specific activity or effect." (Emphasis in original.) Applying this interpretation to Casey's teachings, the Board found as follows:

The portion of bobbin 88 which forms aperture 96 juts out from the main body of bobbin 88 as shown in Figure 2, thus constituting a projection as required by claim 18. This projection can have its form spoiled due to a highly specific activity or effect such as when the jutting portion of bobbin 88 passes with electrical terminals 94 through apertures 96 provided in the radial flange 80 or when the terminals 94 are mated with a power source for the solenoid coil 86. See Casey, col. 4. Ll. 51-55. Accordingly, Casey describes “a selectively deformable projection” as broadly claimed.

The Board also commented on the cross-hatching issue as follows:

Appellant contends that the cross hatching symbol used for aperture 96 is not necessarily synthetic resin or plastic because such symbols are not required by MPEP § 608.02. This argument concedes that Casey’s aperture 96 is indicated to be synthetic resin or plastic, and the fact that such marking is not mandated does not demonstrate that this marking is in error. Further, consistent with the indication that it is synthetic rubber or plastic, aperture 96 is formed by pair of bosses 98 that circumscribe and electrically isolate electrical terminals 94. Casey, col. 4, ll. 55-58; fig. 7.

My two cents: The Examiner relied solely on cross-hatching and inherent properties of plastic. The Board, however, relied on teachings in Casey about the projection passing through the aperture. So I say the Board made a new ground of rejection without designating it as such.

Did the Board read too much into Casey? Maybe the protrusion deformed as it passed through the aperture. But maybe the aperture was sized just slightly larger than the protrusion, so that deformation of the protrusion wasn't needed. Absent a teaching that

The original rejection relied on aperture 96 as the "projection." The Examiner later clarified by essentially saying "Casey may say 96 is an aperture, but it clearly points to a projection." And though I didn't mention this in my discussion of the prosecution history, the Applicant and the Examiner actually went back and forth on this point several more times. This is silly because Casey actually names the relied-upon structure "boss 98."

 The electrical terminals 94 are electrically insulated from the stator's radial flange by a pair of bosses 98 circumscribing the electrical terminals. These bosses 98 are formed integral with the spool 92 and extend through the apertures 96 of the radial flange. Alternatively, the solenoid coil 86 may be wound on a separate spool as is commonly done in the art. 

Why didn't the Examiner modify his rejection to rely on this more specific teaching instead of confusingly referring to aperture 96? And when he didn't, why did the Applicant keep harping on an irrelevant point? I think sometimes Applicants just like pointing out Examiner errors, even ones that don't directly advance their case.

One final nitpick. The Board said the Applicant conceded that Casey indicated the aperture/projection was plastic. I disagree: all the Applicant conceded was that Casey used cross-hatching. The Applicant in fact argued (several times) that a POSITA wouldn't necessarily understand cross-hatching to mean plastic.

Board finds indefiniteness when Applicant argument inconsistent with language of claim

Takeaway: An Applicant appealed the prior art rejection of a claim to noise reduction electronics. The Applicant argued that the reference didn't teach "wherein the actuator is ... directly mounted on a surface of the component influenced by the vibrations." The actuator was positively recited in the body of the claim, but the component was not. The Board entered a new indefiniteness rejection. The Board found that the Applicant's argument implied that the component was part of the claimed combination, while the structure of the claim itself implied that the component was not. Thus, the claim was ambiguous and indefinite under Ex parte Miyazaki.(Ex parte Bendel, PTAB 2013.)

Details:

Ex parte Bendel
Appeal 2012-001251; Appl. No. 11/901,804; Tech. Center 3600
Decided: Nov. 21, 2013

The application was directed to noise reduction electronics. A representative claim on appeal read:

     1. A device for actively influencing vibrations in a component, comprising:
     a sensor for detecting the vibrations;
     an electrically actuatable piezoelectric actuator for acting on the component; and
     a regulation and control unit in which actuating signals are generated from sensor signals of the sensor in order to adjust the actuator;
     wherein the actuator is one of (a) directly mounted on a surface of the component influenced by the vibrations, and (b) enclosed inside a wall of the component influenced by the vibrations.
(Amendments shown.)

The Applicant amended as shown above in response to an anticipation rejection in the first Office Action. The Examiner maintained the anticipation rejection in the next Office Action, and the Applicant appealed.

In the Appeal Brief, the Applicant argued that the reference did not teach either of the alternative limitations describing the location of the actuator. According to the Applicant:

[T]he cited sections of Fischer merely describe actuators 4 enclosed within a vibration damper module 1. Thus, the actuators 4 are merely situated within a device for actively influencing vibrations in a component. Nowhere does Fischer disclose that its actuators 4 are directly mounted on a surface of a component influenced by vibrations, as opposed to the device for actively influencing vibrations, as provided for in the context of claim 1.

The Examiner provided further explanation of his position in the Answer, as follows:

The Applicant takes an overly narrow construction of (1) what constitutes the "component" and (2) what it means to be "influenced" by vibrations.  First, claim 1 does not require the "component" to be entirely separate from the device ... the claim in no way precludes the "component" from being some part of the "device" itself. Second, the mere fact that the vibration damper module 1 is producing vibrations does not preclude some portion of it from being "influenced" by these vibrations as well. All that is required to meet the limitation of claim 1 is that the component changes in some way (i.e., is "influenced") due to the vibrations of the device.  Given the broadest possible reasonable interpretation of the claim, the housing 5 of the vibration damper module 1 is "influenced by vibrations" because it goes from a state of rest to a state of "tension" in producing the counter vibrations. 

The Applicant filed a Reply Brief arguing that the Examiner's interpretation of the claim language at issue was unreasonable:

[A]ny reading of the present application makes plain that "a component influenced by vibrations" does not form a part of "a device for actively influencing vibrations."  Moreover, the Examiner's overly broad interpretation of the presently claimed subject matter leads to the nonsensical result of a device that produces influencing vibrations that influence itself, and simultaneously produces damping vibrations to dampen the influencing vibrations previously produced.  ... it is completely nonsensical to produce influencing vibrations only to then try to damp those same vibrations.  ... one of ordinary skill in the art would know that in order to prevent vibrations in a device for actively influencing vibrations, one may simply not produce any influencing vibrations from the outset, instead of producing influencing vibrations only to then have to simultaneously produce damping vibrations.

The Board didn't reach the merits of the anticipation rejection and instead entered a new indefiniteness rejection under Ex parte Miyazaki ("more than one plausible interpretation"). The Board first noted that the preamble did not recite a device in combination with a component, but rather recited the component being influenced as the target of the intended use of the device. However, in the Appeal Brief the Applicant distinguished the reference with arguments about the component. The Board found that this contradiction between the preamble and the position taken by the Applicant made the claim ambiguous:

   Since Appellant appears to be arguing that the wherein clause states a  condition that is material to patentability, claim 1 appears to be ambiguous. In other words, it is not clear whether Appellant’s claim 1 recites a device per se, with intended use language as to the component, or a combination of a device and a component wherein the actuator is one of directly mounted on the surface of the component or enclosed inside a wall of the component.
   As claim 1 is a claim under examination that is susceptible of more than one plausible interpretation, claim 1 is indefinite because the scope of the claim differs significantly depending upon which of the plausible interpretations one adopts. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211- 12 (BPAI 2008) (precedential) ) (“if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”).

My two cents: Arguing that a claim element distinguishes over the reference make a claim ambiguous? Really? Nah, I don't buy it.

The Board's reasoning goes like this:
A) claim term recited in preamble but not in body means term gets no patentable weight
B) Applicant argued that same term distinguishes over the reference, i.e., gets patentable weight
C) A and B are contradictory, thus claim is ambiguous.

The way I look at it, A is a presumption that the Applicant attempted to rebut with B. Looking at the claim alone, maybe the term gets no patentable weight. But Applicant argued the reference didn't teach the term at issue, thus implying the term gets patentable weight. Maybe the Applicant's rebuttal is persuasive, and maybe it isn't. But it seems ridiculous to use this argument to find the claim contradictory and thus indefinite. If anything, the Applicant argument makes the claim more definite.

Board holds inherency does not require that all embodiments necessarily have claimed feature

Takeaway:  The Applicant appealed claims to an absorbent belted article (e.g., a diaper). The claims recited a belt attached to an absorbent structure by a joint, and also included functional limitations describing the release strength of the joint. The Examiner's anticipation rejection relied on the claimed release strength being inherent in the joint disclosed in the reference. The Applicant argued that inherency was improper here, because the reference taught that the joint could be formed by "any means known in the art", and not every known joint structure would necessarily meet the release strength limitation. The Board found that several types of joints specifically disclosed in the reference were identical to the types of joints in the Applicant's spec, so the Examiner's presumption of inherency was proper. Since the Applicant didn't rebut this presumption, the Board affirmed the inherency rejection. (Ex parte Almberg, PTAB 2012.)

Details:

Ex parte Almberg
Appeal 2010005008; Appl. No. 10/684,585; Tech. Center 3700
Decided:  March 23, 2012

The application on appeal was directed to a belted absorbent article. A representative claim read:

     A belted absorbent article comprising:
     an absorbent structure ... and
     a pair of opposed belt halves comprising nonwoven material attached to said absorbent structure at said rear end region of said rear panel,
     each of said belt halves being attached by a respective joint ...
     wherein each of said joints between each said belt half and said absorbent structure is such that when each said belt half is subjected to a tension force of 35 N acting along said longitudinal axis of the belt, and said longitudinal axis of the belt creates an angle (a) to said transverse axis of said absorbent structure, the following minimum average release times (t) of each said belt half from said absorbent structure are attained:
     when a = 10°, t >= 720 seconds; when a = 20°, t >= 330 seconds; when a = 25°, t >= 240 seconds; when a = 30°, t >= 180 seconds; and when a = 40°, t >= 75 seconds.

The Examiner rejected the claim as being anticipated by Ames. The Examiner found that Ames explicitly disclosed all the elements but the claimed release times. However, the Examiner found that Ames inherently disclosed the release properties, because the structure of the belt joint in Ames was the same as the belt joint structure disclosed in Applicant's specification.

In the Appeal Brief, the Applicant argued that Ames' broad teaching about the belt joint was not enough for inherency:

Ames does not disclose any specific structure for joining the belt flaps to the rear of the absorbent article.  The entire disclosure related thereto, as set forth at col. 17, lines 51-53, is that if the belt flaps 62 and 64 are separate elements joined to the diaper 20, they can be joined "by any means as known in the art." In order to rely on the theory of inherency, it must be shown that the recited conditions must be met in each and every instance.  MPEP, section 2112, IV.  Clearly, it must be recognized that all "means as known in the art" will not necessarily satisfy the requirements of the means for joining recited in claim 1. Accordingly, the claimed joint cannot be inherent based on Ames.
(Emphasis in original.)

In the Answer, the Examiner referred to Applicant's disclosure of "materials and structure suitable for forming the belt halves and attaching the belt" and then referred to portions of Ames that "teach similar materials and structures for the belt halves."  More specifically, the Examiner found that:

The belt halves of Ames have the same properties (elasticity, attached along the longitudinal axis, extending outwardly from a longitudinal edge) and is used in the same environment as appellant's outer cover (a belt in an absorbent product).

Because of this similarity in structure, the Examiner concluded that "Ames obviously includes belt halves capable of providing the claimed release times" because inherency case law holds that "when the structure recited in the reference is substantially identical to that of the claims of the instant invention, claimed properties or functions are presumed to be inherent."

In the Response to Arguments section, the Examiner elaborated on his inherency position as follows:

[T]he Examiner has provided technical reasoning which supports the position of inherency. The present application is primarily directed to the joints between the belt halves and the absorbent structure. The application claims when subjected to a certain force, the longitudinal axis of the belt creates an angle, and a certain release time is attained. Ames does in fact cite structure and materials similar to the claimed invention. ...
(Emphasis added, internal citation omitted.)

The Applicant filed a Reply Brief asserting that the Examiner's "technical reasoning" for inherency was insufficient:

The Examiner's allegation [that Ames discloses structures similar to the claimed invention], even if true, does not provide any factual or technical basis for holding that the materials and methods of Ames must necessarily result in the functional properties of the structure that are recited in the present claims.  The Examiner has provided no basis to refute the plain truth that similar materials may be assembled so as to provide a wide range of attributes.
(Emphasis added.)

The Applicant elaborated on this last point, explaining that Ames' failure to provide details about the belt joints undermined an inherency finding:

Ames did not disclose any teaching of a particular manner in which the belts are to be joined to the diaper.  Ames did not disclose any functional properties of the joint.  Consequently, there is no basis to conclude that the functional structural requirements of the present claims are inherent in the disclosure of Ames unless every means of attachment known in the art necessarily produces the required structural properties.  However, such cannot be the case. The conventional materials and methods encompassed by the Ames disclosure could produce very different results depending on the particulars of how the materials were joined.(Emphasis added.)

The Board was not persuaded by the Applicant's arguments, and instead found that the Examiner's reasoning as to inherency had shifted the burden the to Applicant to show that the belt joint in Ames would not necessarily last for the claimed release times.

The Board found that the Applicant's specification described the joint between the belt half and the absorbent structure as using "adhesive bond lines, though any attachment methods, such as thermal or ultrasonic bonding, may be employed."

The Board also found that the portion of Ames relied on by the Examiner disclosed that:

[belt flaps 62 and 64] can be joined [to the diaper 20] by any means as known in the art. Examples of suitable attachment means include adhesive bonding, heat bonding, pressure bonding, ultrasonic bonding, dynamic mechanical bonding or a combination of any of these means or any other means as are known in the art.

The Board noted that "there is no dispute that these two joining methods are the same as Ames' heat bonding and ultrasonic bonding", and framed the issue as follows:

Thus, the question is whether the evidence is sufficient to find that Ames' heat bonded joints or ultrasonic bonded joints would necessarily last, on average, for at least 12 minutes if a 7.8 pound force was applied to the joint at an angle of 10°, etc.

The Board decided that the Examiner had the better argument.

The opposite finding would mean that, on average, prior art diaper joints made by the same heat bonding or ultrasonic bonding method failed in less than 12 minutes, etc. The bald argument that prior art diaper joints generally failed in less than 12 minutes is not credible. Under these circumstances, the rejection's evidence is sufficient to shift the burden to Appellants to prove the contrary. See e.g. Best, 562 F.2d at 1255.

My two cents:  The issue here was a functional limitation (having to do with force needed to release a joint), and whether the joint structure disclosed in the reference inherently met that functional limitation. According to the Applicant, inherency is present only when "each and every instance" of the disclosed structure meets the functional limitation. The Applicant argued that this wasn't the case, since the reference stated that the joint could be formed by "any means known in the art," and not every known joint structure would necessarily meet the release strength limitation.

I was intrigued by the Applicant's line of reasoning, because I have never run across this "each and every instance" requirement for inherency. As far as I can tell, the Applicant was mistaken.

The Applicant did not cite to specific cases. The Applicant cited to an MPEP section on inherency (2112.IV), but I didn't see anything there about "each and every instance." And the Board didn't comment on this specific point, but applied plain vanilla inherency law. The joint structures mentioned in the reference – ones formed by adhesive bond lines, thermal bonding, or ultrasonic bonding – were the same ones that Applicant's spec described as providing the claimed release strength limitation. Because the structures were substantially identical, the release strength limitation was presumed to be inherent in the structures. The Applicant did not rebut this presumption, so the Board found the Examiner's anticipation-by-inherency argument to be persuasive. 

Losing obviousness arguments: no Graham factors, no TSM, no articulated reasoning

Summary: When fighting an obviousness rejection, some Applicants argue the "formalities" of the rejection instead of, or in addition to, the merits of the rejection. The argument most readily identifiable as aimed at formalities and avoiding the merits is the argument that the Examiner failed to comply with Graham v. Deere, which requires an obviousness analysis to include specific factual findings. Another common argument is that the Examiner failed to provide "articulated reasoning with some rational underpinning." If offered without further explanation that deals with the merits of the rejection, this conclusory argument can be viewed as merely arguing the formalities. Finally, another common argument against obviousness is that the references do not include a suggestion or motivation to combine. Once again, if offered without explanation, I consider this a formalities argument. The real problem with this last argument, however, is that's it's simply wrong: KSR makes it clear that the rationale for combining does not have to come from the references themselves.

The cases covered in today's post show that the PTAB isn't easily persuaded by any of these arguments. The Board usually finds that the Examiner, in laying out the rejection, implicitly made the underlying factual findings required by Graham. This strongly suggests that there is no requirement for the Examiner to specifically refer to them as Graham factors. The Board also usually finds that the Examiner did "articulate" a rationale for combining references and that the rationale does have a "rational underpinning." Finally, even if the Examiner relies on a specific statement in a reference as a rationale, if there is anything at all in the record that suggests an alternative rationale (substitution, predictable results, etc.) the Board will often affirm.

Details:  

Ex parte Foster (PTAB 2010) illustrates a typical "Graham factors" argument against obviousness. On appeal, the Applicant argued that "[t]he Office Action must make explicit an analysis of the factual inquiries set out in Graham" and that the rejection was in error because "the Office Action does not even mention the factual inquiries set forth in Graham." 

The Board was not persuaded, and explained why:

The Examiner found that either Li or Wang discloses all the limitations of claim 2 except a flat heat pipe, and that Quisenberry discloses a flat heat pipe. Ans. 5-6. As such, the Examiner made findings as to the scope and content of the prior art and differences between the prior art and the claimed invention under Graham. Though the Examiner did not make a specific finding regarding the level of skill in the art, Appellants have not argued that the proposed modification was beyond the level of skill in the art (Br. passim), and we consider the prior art to be reflective of the level of skill in the art. Against this background, the Examiner determined the obviousness of claim 2.4 Ans. 6. Hence, contrary to Appellants’ assertion, the Examiner analyzed claim 2 in light of the factual inquiries set forth in Graham.

In Ex parte Holloway (PTAB 2011), the Board tore apart the Applicant's Graham factors argument, by pointing to specific statements in the Examiner's Answer that corresponded to Graham factors. The obviousness rejection was fairly typical, consisting of an assertion that the primary reference disclosed a particular element, followed by other assertions about how teachings in the remaining references related to other claim elements. In explaining the rationale for combining, the Examiner made this statement:

Once it was known to provide such markings, the particular information one chooses to convey by using markings is seen to have been an obvious matter of choice. The purpose of markings or indicia is to convey information. It is not seen that patentability can be predicated on the type of information one chooses to convey through markings or indicia; especially when, as shown by the art taken as a whole, the information was known and thus conventional.
(Emphasis added.)

In the Reply Brief, the Applicant characterized the statement quoted above as one showing that the Examiner used his own subjective standard, rather than the objective analysis required by Graham.

The Board disagreed, and found that the Examiner performed a proper obviousness analysis.

     Indeed, the Examiner assessed the scope of the admitted and applied prior art, finding that Paravano and Liger [disclose] containers having markings which respectively represent the volume of alcoholic beverage ... dispensed as well as the alcohol content of that volume. Ans. 4-5. The Examiner further finds that each of Velho, Davis, Prieto,Manaka, Dor, Rhee, Pauli, and Christiaens [disclose] that it was known in the art to mark containers to convey information with respect to ... the character of the dispensed volume with respect to alcoholic beverages and other ingestible compositions. Ans. 5-6. ... It is apparent that the Examiner further factually determined the difference between ... representative claim 1, and the level of ordinary skill in the art as reflected in the admitted and applied prior art. Ans. 4-6.
     Thus, the Examiner applied the Graham factors in reaching the determination that it would have been obvious to one of ordinary skill in the art to mark an alcoholic beverage container to indicate the volume thereof which represents a “standard drink,” and thus, the number of drinks based on that “standard” which remain in the container as well as the number of such “standard” drinks dispensed to a consumer. Ans. 6-7; see also Ans. 7-8.

Ex parte Brown (PTAB 2009) is another case illustrating a losing Graham factors argument. Here's the Board summarizing the Applicant's argument:

Appellants also contend that … the Examiner fails to address "all of the Graham factors to establish the required background for an obviousness rejection" and also "fails to apply all four Graham factors to establish the necessary background elements for determining obviousness" (App.Br. 14); [and] “In the complete absence of any mention or consideration of the Graham factors, the Final Office Action cannot support an obviousness rejection." (App. Br. 15)

And here's the Board explaining how the rejection did indeed comply with Graham:

In the instant case, we find that the Examiner does use the Graham factors to ascertain the scope of Bottom such that Bottom does not explicitly disclose a BIOS program in each server (Ans. 12-13). We also find that the Examiner ascertains the scope of AAPA and the difference between AAPA and the claimed subject matter of the present invention, i.e., "BIOS is well known to persons of skill in the design and use of information handling systems of the general types here described" and a similar BIOS program is employed in the present invention (Ans. 13, FF7). We further find that the Examiner resolves the level of skill in the art such that it would have been obvious to one having ordinary skill in the art at the time the invention was made to combine the teaching of the BIOS in AAPA into the server of Bottom to detect and signal occurrences of events affecting the respective server since the BIOS was conventionally used to test hardware at startup, to start an operating system, and to support data transfer among hardware devices (Ans. 13).

The obviousness rejection in Ex parte Slovisky (PTAB 2011) relied on a single reference in view of Office Notice that "it was known in the art to angle injection passages that feed the gas path." The Examiner even provided an additional reference as evidence of angled injection passages. The Applicant argued that the Examiner's reasoning was conclusory and thus failed to comply with KSR or any of the obviousness rationales listed in the MPEP.

The Board said this argument missed the point:

In arguing that the Examiner's conclusion of obviousness is "conclusory," Appellants do not particularly set forth which factual findings they believe the Examiner erred in making or why. Appeal Br. 15-16. While Appellants argue that the Examiner has not made factual findings with respect to the claimed angles (see Issue lb), the Examiner's analysis is not premised on a finding that prior art discloses the claimed angles but rather a conclusion that the prior art disclosures render the claimed angles obvious. "[W]hile an analysis of obviousness always depends on evidence . . . it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference." Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). As such, the proper inquiry is whether the Examiner's conclusion of obviousness is reasonable and based on rational underpinning, not whether the Examiner's rejection fits within any of the enumerated rationales in the Manual of Patenting Examining Procedure (MPEP) as argued by Appellants (Appeal Br. 16-17). See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") (cited with approval in KSR, 550 U.S. at 418) (rejecting rigid rules that limit the obviousness inquiry). Appellants' arguments with respect to the rationales not used by the Examiner (Appeal Br. 16-17) are not persuasive because they do not tend to show error in the Examiner's articulated rejection. 

Finally, Ex parte Rothschild (PTAB 2012) is a reminder from the Board that strict adherence to the Teaching, Suggestion, Motivation (TSM) test is not required under KSR:

Appellant argues that (1) there is “no teaching, suggestion, or motivation in either Walker or Steeg to combine the references” ... [T]he Examiner did not apply the “teaching, suggestion, or motivation” test; rather, the Examiner applied the Adams test of simple substitution of one known element for another to yield no more than a predictable result (Ans. 4); see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing U.S. v. Adams, 383 U.S. 39, 40 (1966) for this proposition).

Conclusion: While it can be challenging to fight an obviousness rejection that is sparse or hard to understand, Applicants are more successful when addressing the merits of the rejection and rebutting the Examiner's findings and/or rationale, rather than attacking the rejection itself in order to avoid the merits.

Many patent prosecutors are wary of putting any more on the record than in absolutely necessary to get allowed claims. So you might be tempted to argue formalities, without reaching the merits, if you feel that the Examiner didn't fully comply with the law.

If so, you're betting the farm that the Board say that the Examiner didn't follow the rules. If the Examiner literally didn't provide a rationale for combining, the Board may indeed reverse the rejection. (See my post BPAI reverses when Examiner fails to give any reason whatsoever to combine.)

But the cases in this post show that a typical obviousness rejection – assertions about references followed by a statement of rationale – is enough for the Board to find the Examiner complied with Graham v Deere. And even a sloppy ratonale can lead to an affirmance if left unrebutted by the Applicant.

A final note: Some of the cases discussed in this post are several years old. But they're consistent with more recent cases. 

Applicant petitions when Examiner says claims do not read on elected figure

Takeaway: In response to a Restriction requiring restriction between species/figures, the Applicant elected the species of Fig. 4 and asserted that all claims (1-11) read on the elected species. The Examiner issued another Action indicating that the phrase "linear series of at least three [brushes]" did not read on elected Fig. 4. The Applicant petitioned the Examiner's decision, explaining why claim 1 did read on Fig. 4. The Technology Center Director found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable, and that the Restriction Requirement was therefore proper. (Appl. 11/507,367.)

Details:

Application of Alfano
Appl. No. 11/507,367
Tech Center 3700
Petition Decision January 26, 2009 (available through Public PAIR)

 The Applicant filed an application directed to a therapeutic body brush, with one independent claim and ten dependents. (View published application here.)

As a first action, the Examiner issued a species restriction, naming Figs. 3, 4, and 5 as distinct species. The Restriction required the Applicant to elect one of these species and to identify "the claims encompassing the elected species."

The figures (shown below) were described in the Application as follows:

FIG. 3 is a perspective view of the preferred long handle version of the body brush.
FIG. 4 is a perspective view of the preferred short handle version of the body brush.
FIG. 5 is a side view of the flexible handle portion and telescoping handle portion body brush ...

In a Response to Restriction, the Applicant elected Fig. 4 and specified that all the claims (1-11) read on the species of Fig. 4.

The Examiner then issued a Miscellaneous Action indicating that the Response was non-responsive.

Applicant's response is non-responsive since Applicant has elected the species of Fig. 4 and claim 1 fails to read on the elected species of Fig. 4. Specifically, claim 1, lines 4-5 recite "a linear series of at least three brush head mounting structures" (emphasis added) which is not readable on elected Fig. 4. Moreover, the specification never describes such an arrangement for elected Fig. 4.

The Action indicated that the Applicant had one month to file a responsive reply, with extensions of time available for a fee.

The Applicant filed a "Miscellaneous Paper" arguing that the Response to Resriction was fully responsive. The Applicant explained how the embodiment of Fig. 4 fell within the scope of claim 1. First, the Applicant asserted that the claim term "linear series" included both rectilinear series and and curvilinear series. The Applicant then asserted since "[t]he series of mounting structures in FIG 4 is curvilinear," elected claim 1 read on the species of FIG. 4. This paper was filed at the three-month mark, but without an extension of time fees.

The PTO next sent a Notice of Fees due, essentially treating Applicant's last filed paper as responding to the outstanding Miscellaneous Paper, but being two months late.

The Applicant then filed a Petition Under § 1.181 requesting Supervisory Review by the Technology Center Director. The Petition requested, as relief, withdrawal of the Examiner's holding of non-responsiveness. The Petition also requested that the associated extension fees be waived.

In the Petition, the Applicant made several substantive arguments. First, the Response to Restriction was fully responsive. Second, the Examiner's position (as clarified in an Examiner Interview) made it "logically impossible" to select Fig. 4 and corresponding claims reading on that Figure. Third, the Examiner's standard for "fully responsive" was improper.

The Applicant's argument that the Response to Restriction was fully responsive hinged on the meanings of "linear," "curvilinear," and "rectilinear." The Applicant contended that "rectilinear" and "curvilinear" are both subsets of "linear." As evidence, the Applicant presented definitions of all three words that referred to "line." Under this interpretation, claims 1-11 did read on Fig. 4, and the Response to Restriction was thus fully responsive.

The Applicant then explained why the Examiner's position was a "logical impossibility." During an Examiner Interview, the Supervisory Examiner indicated that none of claims 1-11 read on Fig. 4. However, claims 1-11 were the only claims in the application – thus the "logical impossibility" of electing Fig. 4, even though the Restriction Requirement identified Fig. 4 as one of three species.

As a final point, the Applicant argued that the Examiner had applied an improper standard for responsiveness.

The examiner and his supervisor have taken the position that identifying claims believed to read on an elected species is responsive only if those claims happen to match the ones the examiner believes read on that species. In other words, an answer is not an answer at all unless he happens to agree with it.

According to the Applicant, "a response is responsive if every demand for a reply receives an answer."

The Technology Center Director dismissed the petition. The Petition Decision first disposed of the issue of extension-of-time fees, noting that the Examiner's refusal to consider the late reply was proper. Turning to the propriety of the Restriction Requirement itself, the Decision noted that claim 1 "does raise a question as to what 'linear' means with respect to the elected Fig. 4." The Decision found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable.

The term "linear" is typically applied to mean "straight" in everyday language. It is clear that is how the examiner understood the term "linear." In this regard, the Examiner also questioned whether there was any support in the specification in regard to the elected species of Fig. 4 ... Under the circumstances, the examiner's Office action of Dec. 7, 2007 is deemed proper since the understanding of "linear" came to light.

The Decision indicated that the basis of the Petition was essentially that the Examiner's position was unreasonable. As such, the appropriate procedure was a Request for Reconsideration.

This argument is proper in a request for reconsideration before the examiner. If the examiner had erred upon reviewing applicant's arguments, it would be appropriate for the examiner to draft a corrected election requirement or, alternatively, in agreeing with applicant's argument, move forward, in the examination of what has been elected.

The Decision then explained that the Applicant's "Miscellaneous Paper" was essentially a Request for Reconsideration, but one filed after the one-month reply period.

The miscellaneous letter of Mar. 10, 2008, is essentially a request for reconsideration in that it presents arguments to support the applicant's position in the election and is in direct response to the Office action of Dec. 7, 2007. Therefore, the requirement for an extension of time is correct before the examiner can consider the paper. It is not properly filed until the fee has been paid - including additional fees to cover for the continuing running the period for response.

Thus, the Examiner's holding of non-responsiveness was proper, and the requirement for extension of time fees was correct.

The Application went abandoned after the Petition Decision.

My two cents: See, I told you: it's always about claim construction. While the issue decided in this Petition Decision was non-responsiveness of an Applicant's Reply, the underlying issue was claim construction.

The TC Director decided that the Examiner's interpretation was not unreasonable. However, I didn't see any analysis of Broadest Reasonable Interpretation, only a brief mention of "everyday language." And I note that it's very unusual for the TC Director to rule on claim construction. This is a strange intersection of restriction practice (decided via petition) and claim construction (decided via appeal).

If the Applicant really wanted to fight for examination of claims 1-11, I suppose the next step would be to file a Request for Reconsideration of the Petition Decision, this time with the Petitions Office. That's how you "appeal" a petition decision and take it up to the next level.

The attorneys at the Petitions Office may not be familiar with the law of Broadest Reasonable Interpretation. On the other hand, the are attorneys, so should be equipped to handle BRI, especially if the Applicant does a good job of briefing the issue. The PTAB is better equipped to deal with BRI, since they deal with it every day. But procedurally, I can't see a way to get this before the PTAB. The Rules are clear that the PTAB only reviews rejections, and there aren't actually any rejections here. 

Board finds "a portion of the adhesive strip" does not read on the entire strip

Takeaway: The Applicant appealed claims to a bookbinding system. One of the limitations at issue was "locally heating the adhesive strip to selectively melt a portion of the adhesive on the adhesive strip." The Applicant argued that the anticipatory reference disclosed melting all of the adhesive, while the claim specified "a portion." Without explanation, the Examiner took the position that "melting a 'portion' of the adhesive includes the 'entire' amount of adhesive in the strip." The Board found this interpretation to be unreasonable, and reversed the claim rejection. (Ex parte Hoarau, 2010.)

Details:

Ex parte Hoarau
Appeal 2009003673; Appl. No. 10/953,549; Tech. Center 1700
Decided: January 22, 2010

The application on appeal was directed to a bookbinding system. The Applicant appealed several independent claims, two of which are reproduced below:

     10. A method of binding sheets, comprising:
     accumulating plural sheets (206) to be bound by placing an edge of each sheet adjacent an adhesive strip (202);
     locally heating (208) the adhesive strip (202) to selectively melt a portion of the adhesive on the adhesive strip in a vicinity of less than all of the plural sheets to be bound.
     11. A method of binding sheets, comprising:
     accumulating plural sheets (206) to be bound, each of the plural sheets being sequentially placed adjacent to an adhesive strip (202); and
     locally heating (208)  the strip (202), wherein the adhesive strip is locally heated on a sheet-by-sheet basis, as each of the sheets is placed adjacent to the adhesive strip.

The Examiner rejected all three independent claims as being anticipated by Taillie, as follows:

Taillie teaches a method of binding multiple sheets to each other after heating an adhesive layer thereon, one sheet at a time. Multiple sheets can mean at least two sheets. By interpreting the claims, it is disclosed that plural sheets are bound through an adjacent adhesive strip.

The Applicant appealed. The Applicant argued that claim 10 specified binding a plurality of sheets with an adhesive strip, where in Taillie, "each single sheet is associated with a single adhesive, which is prefused in the sheet or an adjacent sheet." As another distinction, the Applicant also argued that claim 10 specified heating a portion of the adhesive, where in Taillie, "each adhesive area [is] heated in its entirety to bind the sheets."

With respect to claim 11, the Applicant argued that in Taillie "an adhesive is prefused into a surface edge of the sheet and the sheets are placed adjacent to each other" where claim 11 specified placing a sheet adjacent to an adhesive layer."

In the Answer, the Examiner explained claim interpretation as follows:

In interpreting claim 10, the limitation stating melting a "portion" of the adhesive includes the "entire" amount of adhesive in the strip.
With respect to claim 11 ... "locally heating the adhesive strip", this limitation refers to the previous set of sheets and is not limited to only one adhesive strip.

In a Reply Brief, the Applicant argued broadest reasonable interpretation. For claim 10, the Applicant argued that a reasonable interpretation "cannot include multiple adhesive strips such that more than one adhesive strip is used to bind the plural sheets." For claim 11, the Applicant argued that "the adhesive strip that the sets of sheets are sequentially placed adjacent to, is the same adhesive strip that is locally heated each time a new set of sheets is placed adjacent to it."

The Board was not persuaded by all of the Applicant's arguments, but did reverse both rejections.

The Board found that Claim 10 was not limited to single adhesive sheet as urged by the Applicant. The claim language "placing an edge of each sheet adjacent an adhesive strip" was therefore met by Taillie's "[placing] an edge of each sheet adjacent to the underlying sheet’s adhesive strip." br />
Continuing on to Applicant's second argument for claim 10, the Board found the Examiner's interpretation of "a portion of the adhesive" to be unreasonable. The Examiner read "a portion of" on the entire amount of adhesive in the strip. The Board referred to a dictionary definition for plain and ordinary meaning ("something less than the whole to which it belongs"), and Board noted that "[t]he Examiner has not established that the Appellant is giving the term 'portion' any meaning other than its ordinary meaning." Because the Examiner's interpretation of claim 10 was in error, the Board reversed the rejection of claim 10.

For claim 11, the Board also found the Examiner's interpretation "locally heating the adhesive strip," to allow for multiple adhesive strips, to be unreasonable. The Board explained as follows:

The Appellant’s Claim 11 requires that the adhesive strip is locally heated on a sheet-by-sheet basis as each of the sheets is placed adjacent to “the” adhesive strip, i.e., the same adhesive strip. Taillie locally heats each sheet’s adhesive strip when a sheet edge is placed on it (col. 6, ll. 49-59). Thus, Taillie’s local heating takes place when each sheet is placed adjacent to “an” adhesive strip, but not adjacent to “the” adhesive strip, i.e., the same adhesive strip.

My two cents: No surprise that "a portion" doesn't read on "entire," but it's a bummer that the Examiner dug in his heels and went all the way to appeal on this point

The Board's treatment of "an adhesive strip" seems inconsisent between claim 10 and claim 11. In claim 10, the Board said "placing an edge of each sheet adjacentan adhesive strip" allowed for more than one strip, with each sheet adjacent to a different strip. Claim 11 also recited "an adhesive strip," but the Board said the phrase "locally heating the adhesive strip" was limited to one strip, the same one each time.

Presumably the difference is "an" in claim 10 versus "the" in claim 11. So if claim 10 is reworded to look more like claim 11, does this avoid Taillie?

providing an adhesive strip;
accumulating plural sheets to be bound by placing an edge of each sheet adjacent the adhesive strip;

The "providing" step doesn't itself prohibit multiple strips, but the article "the" in the placing phrase does. Right?

PTAB finds that "arranged to enable particles to occupy the closest extreme position" is necessarily met since one of two extremes must be closest

Takeaway: An Applicant appealed claims to an e-ink display. The limitation at issue was a drive means with functional language "arranged for contolling the reset potential difference ... to enable particles to occupy the extreme position which is closest to ... the image information." The Applciant argued that the reference circuit did not control the particles to occupy a particular one of the extreme positions. The Examiner argued that the reference circuit did position the particle at both extremes at different times, and one of these extremes was the one closest to the image – which was all that the "arranged to enable" language required. The Board agreed with the Examiner and affirmed the rejection. (Ex parte Zhou, PTAB 2012.)

Details:

Ex parte Zhou
Appeal 2010002955; Appl. No. 10/542,910; Tech. Center 2600
May 14, 2012

The application on appeal was directed to an electrophoretic display, a technology commonly used for e-book readers. (See Wikipedia article here for more details.)

A relevant portion of a claim on appeal read:

     1. An electrophoretic display panel (1),  for displaying a picture corresponding to image information, comprising:
     an electrophoretic medium (5) comprising charged particles (6);
     a plurality of picture elements (2) ;
     a first and a second electrode (3, 4) associated with each picture element ... ; and
     drive means (100) ... arranged for controlling the reset potential difference of each picture element to enable particles to occupy the extreme position which is closest to the position of the particles which corresponds to the image information.
(Emphasis added.)

FIG. 2 of the application is shown below:

During prosecution, the Examiner rejected the claim as obvious using a combination of two references. According to the Examiner, the primary reference taught "the reset potential difference can enable particles to occupy either extreme position."

The Applicant argued that such a teaching was not enough to meet the "closest" limitation:

 [The reference] still does not disclose or suggest any relationship between the current position of the particles and their final or extreme position, let alone disclose or suggest controlling ... to enable particles to occupy the extreme position which is closest to the position of the particles which is closest to the image information.

In an Advisory Action, the Examiner further explained his reasoning. The reference's use of the reset potential difference allows the particle to occupy either extreme position (i.e., nearest either  electrode). Therefore, this same capability also allows the particle to occupy "the extreme position which is closest to the image" – whichever one that happens to be.

On appeal, the Applicant argued that the combination did not teach "controlling the reset potential difference of each picture element to enable particles to occupy the extreme position which is closest to the position of the particles which corresponds to the image information."

The Applicant repeated this argument in the Appeal Brief. In the Answer, the Examiner elaborated on how the particular claim language used to describe behavior allowed the rejection:

 [A]pplicant has not positively claimed that the particles actually occupy the extreme position which is closest to the position of the particles which corresponds to the image information;" rather, the applicant has merely claimed that the "drive means" are "arranged" to "enable" the particles to occupy this extreme position. ..[T]he position of the particles can be divided into three possible positions:  a position closest to the first electrode, a position closest to the second electrode, and an intermediate position between the two electrodes. ... [T]he position of the particles depends on the potential difference applied to the first and second electrodes (i.e., positively charged particles will migrate to a negatively charged electrode and negatively charged particles will migrate to a positively charged electrode).  Thus, it stands to reason that a "drive means" that is "arranged" to "enable" the charged particles to occupy either or both extreme positions can "enable" the charged particles to occupy the extreme position that "is closest to the position of the particles which corresponds to the image information.

The Applicant filed a Reply Brief and responded to the Examiner as follows:

[T]here is no need to include "actual" performance in the claims. A device or means which is arranged to perform a patentable function is patentably distinct from another similar device or means which is not arranged to perform this particular function. Accordingly, patentable weight should be given to the related features.

The Board briefly summarized the positions of the parties, and then affirmed the obviousness rejection. The Board explained that "[w]e agree with the Examiner since the closest position must be one of the two extreme positions disclosed by the prior art."

My two cents: The way I see it, the Examiner's position was that the primary reference "accidentially" taught the limitation at issue. According to the Examiner, all the claim required is that the voltage drove the charged particles to one end in one scenario and the other end in another scenario. One of those ends is necessarily the one closest to the image.

The Applicant seemed to argue that the reference didn't specifically control the particles in the manner claimed. But did the Applicant t claim the scenarios in enough detail to distinguish? 

The Examiner, and the Board, focused on the levels of indirection allowed by "arranged to" and "enable". But the claim did recite that the drive means controlled the voltage to achieve a specific result. Would it have helped if the Applicant had put an active verb such as "select" in the claim, along with some sort of selection criteria?

Was there a distinction here, and the Applicant just didn't capture it? Are there some distinctions that are impossible, or nearly impossible, to express in a claim? And was this one of them?

Board agrees with Applicant that "a common binder polymer for the core and the shell" means identical and not merely sharing some properties

Takeaway: In a claim to toner ink for printers, the Applicant went to appeal on the issue of the meaning of
"a common binder polymer for the core and the shell." According to the Examiner, the asserted combination met this element because one reference taught styrene for the core and the other reference taught styrene for the shell. Thus, the core and shell had styrene in common. According to the Applicant, identical polymers were required, and the references did not disclose identical polymers. Instead the references taught different concentrations of styrene in the core and the shell, resulting in a different glass transition temperature. The Board found that the Examiner's interpretation was unreasonable in view of the specification and reversed the rejection. (Ex parte Massa, PTAB 2013.)

Details:

Ex parte Massa
Appeal 2012009081; Appl No. 11/870,651; Tech. Center 1700
Decided  Sep. 25, 2013

The application on appeal was directed to toners for printer ink. A representative application on appeal read:

     1. A core-shell polymer particle comprising
a common binder polymer for the core and the shell
wherein the core has a porosity and
the shell is non-porous and
the particle has a porosity of from 10 to 70 percent.

During prosecution, this claim was rejected as obvious over a combination of two references. The Examiner relied on the primary reference for the core porosity and particle porosity elements, and the secondary reference for the non-porous shell. The Examiner relied on the combination for the "common binder polymer" element, since the primary reference dislcosed that sytrene is a suitable monomer for the core while the secondary reference disclosed that sytrene is suitable for the shell. The combination taught that the core and the shell have styrene in common, and thus taught "a common binder polymer for the core and shell."

The Applicant appealed and argued that the Examiner's interpreation of "a common binder polymer for the core and the shell" was unreasonable. The combination taught core and shell binder polymers having a monomer in common, but differering in the concentration of this monomer so as to produce a difference in glass transition temperature for core and shell. In contrast, the claim required "core and shell polymers being the same, i.e., common." As evidence that "common" meant "same," the Applicant referenced a sentence in the specification stating that "the porous particles of the present invention have the same polymer for the core and shell."

The Examiner maintained his position in the Answer. Nothing the Applicant's reliance on the specification, the Examiner asserted that a POSITA "would not conclude that appellant's use of 'the same' in a sole instance in the specification mandates replacement for 'a common' throughout  the specification." The Examiner then explained that, rather than being synonyms, the words "common" and "same" were instead genus/species: 

     The term "common" [in the term at issue] represents a large range of possibilities, similar to a genus.  For example, a core comprising a mixture of binder polymers A and B would have a common binder polymer with a shell comprising a mixture of binder polymers B and C; wherein the binder polymer C would read on the claimed "a common binder polymer for the core and the shell."
     On the other hand, the term "same" as recited in the specification represents a limited number of options.  Turning to the example above, a core comprising a mixture of binder polymers A and B, would not be "the same" as a shell comprising a mixture of binder polymers B and C,  because of the presence of A and C in the core and shell, respectively. (However, the use of comprising in the preamble opens up the claim to allow for the core and shell to read on "the same").  Similar to the genus/ species relationship in which the species in the written description cannot limit the claimed genus, the use of the term "the same" in the specification cannot be employed to limit the claimed term "a common."
(Emphasis added.)

The Board found the Examiner's interpretation to be unreasonable as applied to the facts of the case.

     [W]hen the claim language is read in light of the Specification by one of ordinary skill in the art as it must be, it defines a binder polymer for the core and the shell that is the same, or identical, polymer composition. Appellants' Specification describes "the same polymer for the core and shell" (page 6, lines 2-3).
     Accordingly, while the Examiner sets forth a rationale for how, in a different context, common polymers may not be identical, we concur with Appellants that such an interpretation is not reasonable in the context of Appellants' Specification and intent.
(Emphasis added.)

The Board then reversed the obviousness rejection as being based on a flawed claim interpretation.

My two cents: I can't decide how I feel about this one.I thought the Examiner's genus/species analogy was creative, but the Board apparent thought it was overreaching.

My gut feeling about common meaning is that "same" means "identical" while "common" requires less than identical. But I don't want cases being decided on gut feeling, so definition evidence would have helped here. Not much else to go on, since the spec itself uses "same" exactly once (as pointed out by the Examiner), and only uses "common" once – in the Summary of the Invention.

Often when the Applicant points to a statement in the spec as a reason to narrow a claim term, the Board notes that the relied-upon statement is couched in terms of examples or embodiments. But here the specification sentence that used the word "same" also used the term "invention". So you can't immediately discount the sentence by saying that it referred to a different embodiment than the one claimed.

Should the Applicant have amended the claim to use "same" rather than "common", since that was the meaning he was arguing? After all, hasn't the Applicant given up scope here with a clear disclaimer? Or would this Examiner gave a 112 1st Written Description rejection if the Applicant tried that?

Board reverses 101 rejection based on a server recited in the preamble

Posted by: Adam Ellsworth

Takeaway: In an appeal involving a computer-implemented method of matching mobile agents with location-based orders (such as assigning a taxi to a customer), the Board reversed the rejection under 35 U.S.C. § 101 of a method claim that recited a server in the preamble. The Board acknowledged that the machine-or-transformation test was not the sole test to apply, but found that the claims satisfied the “machine” prong of the test, which was sufficient to render the claims patent-eligible.

Details

Ex parte O’Meara

Appeal 2012-005110, App. No. 09/740,201, Center 3600

Decided: September 26, 2013

The application on appeal was directed to assigning mobile agents to location-based orders. Claim 1 reads as follows:

1. A computer-implemented method of allocating a location-related order to one of a plurality of mobile agents, said method being carried out by an ordering server programmed to carry out the steps of the method, which comprise: 

a) maintaining a current order record identifying a first location and first time at which each agent is expected to become free to fulfill a new order; 

b) maintaining a prioritized listing of locations including both scheduled locations which an agent is currently due to visit and unscheduled locations which said agent is not currently due to visit, with locations in said listing being prioritized to rank both the scheduled and unscheduled locations for said agent according to availability of the agent to reach each location after said first time, said availability having been calculated for each location irrespective of whether or not said agent is currently due to visit a particular location in said listing; 

c) receiving said location-based order and recording the location and time at which said order is to be fulfilled; 

d) determining from said prioritized listing of locations a suitable agent to fulfill said order; and 

e) allocating said order to said suitable agent.

The application first went to appeal in 2006 and the Board reached a decision in that appeal in 2009. In that decision, the Board reversed the Examiner’s obviousness rejections under 35 U.S.C. § 103(a), but the Board entered a new ground of rejection under 35 U.S.C. § 101, holding that the claims were directed to patent-ineligible subject matter. The Board applied the machine-or-transformation test to determine patent eligibility, which was the test of the time as set forth by the Federal Circuit. The preamble of the claim at the time of the first appeal recited only that the method was “computer-implemented.” The Board stated that the term “computer-implemented” in the preamble of the claims did not recite a “particular” machine, and no other elements of the claims tied the claims to a machine or transformed an article to another thing.

During the intervening prosecution between the first appeal and the present appeal, the Appellants amended the preamble of claim 1 to recite “A computer-implemented method of allocating a location-related order to one of a plurality of mobile agents, said method being carried out by an ordering server programmed to carry out the steps of the method, which comprise:”

The Examiner rejected the claims by applying only the machine-or-transformation test. Interestingly, the Examiner cited the Supreme Court decision Bilski v. Kappos, 95 USPQ2d 1001 (2010) as a reference in the Final Office Action, even though that case states that the machine-or-transformation test is not the sole test to apply to determine patent eligibility. The Appellants pointed out that reliance solely on the machine-or-transformation test was inconsistent with the Supreme Court decision Bilski, to which the Examiner responded in the Final Office Action: “The Examiner respectfully disagrees,” and the Examiner didn’t address the argument further. Nor did the pre-appeal review board address the error.

In maintaining the rejection, the Examiner argued in the Answer to the Appeal Brief that the “ordering server” recitation was (1) insufficient recitation of a machine or transformation, (2) the recitation was merely nominally, insignificantly, or tangentially related to the performance of the steps, and (3) merely recited the field in which the method was intended to be applied.

The Examiner also refused to give the amended preamble patentable weight, arguing that the preamble recited merely the purpose of the process, and was not required by the steps in the body of the claim.

The Board disagreed with the Examiner on both counts. First, the Board held that the preamble, and in particular the limitation that the method be carried out by an ordered server, should be given patentable weight. Since the “ordered server” was a required element for performing the steps in the claim, the ordered server gave “life, meaning, and vitality” to the claim,

Second, the Board held that the term “said method being carried out by an ordering server…” recited in the preamble rendered the claim patent-eligible under 35 U.S.C. § 101. The Board acknowledged that the standard for determining patent eligibility under § 101 had evolved since the first appeal, but stated that the machine and/or transformation prongs are factors for determining whether a claim is patent-eligible. The Board held stated that the recitation of the ordering server in the preamble of the claims sufficiently tied the claims to a machine, and so the claims satisfied the machine-or-transformation test and were patent-eligible.

My two cents:

This opinion is remarkable for two reasons. First, the Board held that a limitation in the preamble limited the scope of the claim. It is common practice for Examiners to refuse to give preambles any patentable weight, but the Board points out that the “ordering server” in the preamble is a required element for practicing the claim steps and thus gives meaning to the entire claim. The Board appears to have been swayed by the specificity of the recited machine, since the Board had previously rejected the claim when the preamble recited only “a computer-implemented method.” Second, the Board acknowledged that its previous opinion was based on outdated law, and reversed an Examiner who tried to rely on the Board’s previous opinion to maintain the rejection.

The Appellants in this case did a good job of referring to the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos,” 75 Fed. Reg. 43,922, 43926 in their Appeal Brief. The Appellants pointed out that even though the machine-or-transformation test was not the sole test to apply, it was one test to be applied under the Interim Guidance, and the Appellants pointed to the specific prongs of the test described in the Interim Guidance that were satisfied by the claims. Although the Examiner ignored the Interim Guidance during regular prosecution and on appeal, the Board was persuaded by the Appellants’ arguments.

While the machine-or-transformation test is not the sole test to apply to determine patent-eligibility of a claim, the Board treated the test as a threshold in this case. Once it found that the claims satisfied the "machine" prong of the test, it didn't apply any other test. I agree with this approach. There are multiple tests available to demonstrate patent-eligible subject matter. In the Interim Guidance, some are listed as "Factors that Weigh in Favor of Patent Eligibility." Factors that are not part of the machine-or-transformation test include practical application of a law of nature and observable and verifiable performance of steps of a method. Not every test needs to be applied in each case, and a claim may be found patent-eligible based on only one of the tests. But if practitioners want an Examiner to apply any test other than the machine-or-transformation test, they should not merely state that "the machine-or-transformation test is not the sole test to apply." Instead, they should supply what they consider to be the appropriate test to the Examiner, supported by the Interim Guidance and other case law, as appropriate.