Wednesday, April 10, 2013

Board reverses anticipation rejection which relied on secondary reference incorporated into Background of primary reference

Takeaway: The Applicant appealed an anticipation rejection. The Examiner relied not only on the anticipatory reference, but also on an issued patent incorporated into the anticipatory reference. The incorporated reference was discussed in the Background section of the anticipatory reference, rather than in the Detailed Description. The Board reversed on the grounds that the Examiner's reliance on the incorporated reference was improper under these facts. "The Examiner has not provided a link between Martin’s embodiments and Table I in Beaverstock.Nor do we see such a link in Martin. Rather, the Examiner has simply selected various disparate features from the references in arriving at the claimed invention which is improper under § 102." (Ex parte Laub, PTAB 2009.) 

Ex parte Laub
Appeal 2009004880; Appl. No. 10/869,070; Tech. Center 2100
Decided  December 18, 2009

The application was directed to an online transactional processing (OLTP) system for a production line that makes a product. A representative claim on appeal read:
     13.  A method of calculating a value of work in progress on the basis of reporting data received from a set of reporting points of work centers of a production line for producing a product, the production line being logically divided into shop areas,  one reporting point of each shop area being an exit point corresponding to an intermediate production step, the method comprising the steps of:
...     generating a first table comprising aggregated quantities of intermediate products and aggregated scrap quantities reported from the exit points on the basis of the reporting data stored in the database;
     ... and
     calculating a total value of work in progress by means of the first and second tables by the server computer.
In a first Office Action, the Examiner rejected independent claim 13 as anticipated by Martin, which described real-time accounting of plant performance at a sub-plant level. In particular, the Examiner relied on the following two sentences in Martin for the "generating a first table" step.
The plant can also purchase electricity from a local utility and can sell excess electricity to the utility ... For the purposes of this example, it is assumed that the power plan consists of two boilers and a generator. Steam from the two boilers is used both to drive the generator, which in turn, provides electricity to the plant, and to provide steam directly to a number of process units in the plant."
The Applicant argued the "generating" limitation was not taught by Martin as alleged. More specifically, the Applicant argued that the Martin's statements that a power plant uses boilers and a generator did not teach generating a table, and did not teach aggregated quantities as reported from exit points, as recited in claim 1.

In the next (final) Office Action, the Examiner changed the rejection of claim 13 to anticipation by Martin "with incorporated reference Beaverstock." The rejection mapped the "generating" step to Beaverstock's Table 1, a block of code showing calculations from variables.

The Applicant filed an After Final Response. Applicant noted that Beaverstock taught an incurred resource cost that was calculated from the variables catalyst usage, energy cost, and materials cost, and that the calculation was implemented by six functions implemented by code in Table 1. The Applicant argued that these did not correspond to aggregated quantities as reported from exit points, as recited in claim 1. An Advisory Action did not comment on the Applicant's arguments on claim 13.

On appeal, the Applicant repeated the same arguments in the Appeal Brief. In the Answer, the Examiner further explained which variable in the code block corresponded to the claimed aggregate scrap quantity.

The Board reversed on the grounds that the Examiner had combined the unrelated teachings of Martin and Beaverstock in a manner not permitted in an anticipation rejection. Beaverstock was discussed in Martin's Background, and was therefore a distinct disclosure not directly related to the portions of Martin relied on for the other claimed elements.
The Examiner has not provided a link between Martin’s embodiments and Table I in Beaverstock. Nor do we see such a link in Martin. Rather, the Examiner has simply selected various disparate features from the references in arriving at the claimed invention which is improper under § 102. See Net MoneyIn, 545 F.3d at 1369; see also Arkley, 455 F.2d at 587.

My two cents: There are a few scenarios in which it's proper for the Examiner to use multiple references in an anticipation rejection -- see MPEP 2131.01 for a list. But these scenarios are pretty limited, so be ready to challenge if the Examiner steps outside of these bounds.

The Applicant got a lucky break here, since the Applicant did not argue the particular issue which the Board used to reverse the rejection.


  1. Karen -- in my experience, it's best to make each and every argument possible -- for each and every claim -- right from the very first office action on the merits.

    While requiring a greater investment in time, research, effort, and yes -- money -- such an approach offers the best opportunity to obtain the greatest and most valuable invention scope possible.

    This also puts one in a better position to take advantage of any helpful applicable new caselaw that arises during your prosecution ... while concurrently also putting one in a better position to address any caselaw that could negatively impact you (these are also powerful reasons to always have an active continuation on your invention).

    In these days of multi-year prosecution time lines, this is especially important.

    An argument which may today seem marginal/ questionable and/or of little usefulness ... may be the very one that gets you your patent(s) 1-5 or more years from now.

    But if you haven't made that argument, and preserved it along the way, you could end up with nothing; or far less than you could have otherwise.

    The prosecution history of my 09/832,440 application including the Board/PTAB and Fed Cir briefs are one example of such an approach.


  2. Thank you, Karen. As I recall, it wasn't too long ago that you posted about an anticipation rejection that was reversed because the Examiner cherry picked from different embodiments in the same prior art reference. This case seems to gel with that...anticipation requires the claim elements not only be found in the same reference, but also in the same embodiment. Which only makes sense.

    1. Yep, I agree with your assessment: combining one embodiment from the ref with another embodiment from the incorporated ref (as in this post) is merely a special case of the "can't pick and choose embodiments for anticipation" rule.