Monday, June 17, 2013

Board affirms obviousness even though benefit described in reference not linked to claim element

Takeaway: The Examiner rejected claims to a method for context aware computing as obvious over a combination of three references. The Applicant attacked the Examiner's combination rationale, arguing that the benefit used by the Examiner as a reason to combine was not actually produced by the claimed feature. The Board did not discuss the benefit disclosed in the reference, but instead merely stated that the Examiner had found a motivation to combine in the purported benefit. (Ex parte Cutlip , PTAB 2013.)

Details:

Ex parte Cutlip
Appeal 2010007365; Appl. No. 11/847,298; Tech. Center 2100
Decided:  June 13, 2013

The application on appeal was directed to context aware computing. A representative claim on appeal read: 

     1. A method for ontologically driving context mediation in a computing system, the method comprising:
     collecting a plurality of events arising from a solution in a computing environment;
     loading operational meta-data for the solution;
     contextually mediating the collected events with the operational meta-data to produce context sensitive events; and,
     correlating the context sensitive events with corresponding symptoms in a display to an end user in the computing environment,
     wherein the events comprising both base events and also splunked events.
The Examiner rejected the claim as obvious over a combination of three references. The third reference, Chandrasekaran, was relied upon for the "base events and also splunked events" limitation. The Examiner cited the following statement as a reason for utilizing the base/splunked events feature in Chandrasekaran: "Based on the foregoing, techniques are clearly needed for efficiently processing sequences of events that may occur at different points in time." (Background of Chandrasekaran.)

In the Appeal Brief, the Applicant attacked the Examiner's reason to combine:
     The "technique" taught by Chandrasekaran is separate from the base events and compound events. Specifically, the techniques of Chandrasekaran are used for processing and evaluating base events and compound events. Therefore, to obtain the alleged benefit of "efficiently processing sequences of events that may occur at different points in time," classifying events as base events and compound events is not enough since the benefits are attributable to the technique and not just classifying events as base events and compound events to which the technique is applied. ...  Whether or not modifying the events of the applied prior art (i.e., the combination of Baudino and Zaner-Godsey) to include base events and compound events would result in the proposed benefit has not been established by the Examiner.
(Emphasis added.)
The Examiner did not address argument this in the Answer.

The Board affirmed the rejection. The Board briefly addressed the Applicant's rationale argument, but only to say that the Examiner was right, without explaining why:
     Appellant also contends that the combination of Baudino, Zaner-Godsey, and Chandrasekaran is improper. Reply Br. 6-7. In particular, the Appellant contends that “[w]hether or not modifying the events of the applied prior art (i.e., the combination of Baudino and Zaner-Godsey) to include base events and compound events would result in the proposed benefit has not been established by the Examiner.” App. Br. 18 (emphasis omitted). We disagree with the Appellant.
     The Examiner found that a person with ordinary skill in the art would have been motivated to combine Baudino, Zaner-Godsey, and Chandrasekaran in order to efficiently process sequence of events that may occur at different points in time. Ans. 8. As such, we find that the Examiner has provided an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.
My two cents: I agree that the Examiner articulated his reasoning. But I say that the Applicant showed that the reasoning was faulty, i.e., that it lacks a "rational underpinning." As a reason to combine, the Examiner proferred the benefit "efficient processing." But the reference which mentioned efficient processing did not disclose that this efficiency was a result of the feature relied upon in the combination.

The statement relied upon by the Examiner – "Based on the foregoing, techniques are clearly needed for efficiently processing sequences of events that may occur at different points in time" – was in the Background section of Chandrasekaran, following a list of shortcomings of the prior art. At most, this sentence shows that some combination of techniques disclosed in Chandrasekaran leads to efficient processing of sequences of events at different points in time. It does not show that efficient processing is produced by the feature which the Examiner took from Chandrasekaran – the use of base events and splunked/compound events.

In fact, other teachings in Chandrasekaran suggest that efficiency is a result of specific techniques such as the use of array operations to compare attribute values with constant values ([0100]) and splitting base event indices into parallel tracks based on a maximal composite partitioning key ([0114]).

So it's not the base and splunked/compound events that result in efficient processing. Then why would a POSITA be motivated to use these events to modify the primary and secondary references to produce Applicant's claims?

This rationale just doesn't stand up to scrutiny, which is why I'm convinced the Board got it wrong. And even if they didn't, I'm disappointed the Board didn't explain why the Examiner's rationale was rational, instead of just stating that the Examiner "found" that the reference taught a benefit. A "rational underpinning" requires more than merely putting "findings" on paper – it doesn't become rational until it's based on findings that are also established to be correct.

The Applicant clearly identified the issue – "whether or not modifying the events of the [asserted combination] to include base events and compound events would result in the proposed benefit." The Applicant also showed that Chandrasekaran did not link the benefit to the claimed feature. That should be enough. The Applicant shouldn't be required to spell out what other features in Chandrasekaran actually did produce that benefit (array operations, special keys, etc.).

10 comments:

  1. Classic PTAB dreck decision -- forget common sense, forget good reasoning -- if the Examiner got close, then affirm.

    I've seen this analysis over and over and over again:
    (1) Reference X is missing limitation A.
    (2) Find limitation A in reference X.
    (3) Find any random benefit associated with reference Y -- notably the random beneft doesn't have to be associated with limitation A.
    (4) Say that "it would would have been obvious to modify X to include A based upon random benefit associated with reference Y."

    Examiners have been doing this pre-KSR and post-KSR.

    Cr@p like this isn't always bought by the PTAB, but it oftentimes is -- it really comes down to the APJ writing the decision -- forget the law and common sense.

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  2. This smells like the same type of "record breaking outstanding quality work at record breaking outstanding quantity" that the PTO claimed during the Dufas administration. They would do a bunch of "in process reviews" of FAOM's or FR's and have a checklist handy. If the examiner provided a reason for combining/modifying references, the box was checked, regardless of how utterly silly and ridiculous the reason was, and the OA was counted as being of "outstanding" quality.

    Look for a report shortly about the "outstanding record breaking quality that was done at record breaking outstanding quantity" to get the PTAB backlog down. The fact that APJ's are just checking the "examiner provided articulated reasoning" box on the checklist and affirming without actually deciding if the "articulated reasoning" makes any sense won't be mentioned in the report.

    ThomasPaine

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    1. June 20, 2013 at 9:04 AM

      "Wrong. Appellate court panels are not bound by earlier panel decisions."

      Shouldn't you and JS let everybody know (as if you haven't already) that you are just a coupla newbies? Shouldn't you do some kind of legal disclaimer, or something?

      Just Saying.

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  3. This is not my field, but I am particularly impressed by the weakness of the wording the applicant has chosen. He didn't say: This is incorrect! He said the Examiner didn't show it IS correct. And the Board said: well, he made a suggestion, and you didn't even say that the rationale he suggested was invalid.
    Perhaps, if the applicant worded his argument differently, the outcome would have been different. for example: "a skilled person would not combine the references as the Examiner suggested because he knows that the alleged benefit is related to feature X, and will not be gained by feature Y, which the Examiner suggested incorporating into the combination of references Johnson and Smith. Following the Examiner's rationale, a skilled person may end up with a combination of A, B, and X, and not A, B, and Y as claimed"
    Perhaps the Board would have responded differently.

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    1. >Board said ... you didn't even say that the rationale Examiner suggested was invalid

      Disagree. The Applicant did explicitly argue that the Examiner's rationale was deficient. But the Board didn't even acknowledge this argument. The Board simply referenced the Examiner's motivation taken from the secondary reference, suggesting the Examiner wins by offering such a motivation - even if it's not factually supported, ie, isn't rational.

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  4. He didn't say: This is incorrect! He said the Examiner didn't show it IS correct.
    What you are overlooking is burden of proof. The Examiner has the initial burden of proof. The Examiner cannot make a conclusory statement and then have the burden shift to Applicant. Hence, the argument is framed correctly -- the Examiner has failed to present evidence that the alleged benefit for the combination is related to the proposed modification.

    And the Board said: well, he made a suggestion, and you didn't even say that the rationale he suggested was invalid.
    Its invalid if the suggestion is not based upon a rational underpinning. Why is it that the PTAB will go to great lengths to reconstruct an Examiner's analysis, supply missing facts and missing analysis (I've seen it many times), yet require "magic words" from an Applicant's arguments in order to be considered (I've seen this too)?

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  5. "Hence, the argument is framed correctly -- the Examiner has failed to present evidence that the alleged benefit for the combination is related to the proposed modification."

    It may be correctly, but it isn't persuasively. Then again, it probably isn't even correctly. As much as you may not like it, the examiner's statement was literally based on the evidence offered regardless of the evidence's completeness or incompleteness and so is not "conclusory".

    For like the 10000000th time, the technical correctness of an argument bears little correlation to its chances of success. The persuasiveness of the argument does however bear a huge correlation to its chances of success. And the prooffered argument is, as was noted by the above poster, very weak in the persuasiveness dept. It is essentially the argument that "hey, examiner's have to show that the motivation is directly related to specifically the claimed subject matter instead of using a blanket motivation to combine that may, or may not be attributable to my little limitation". Frankly if the reference is talking about matters of bs, as in this application, the blanket motivation may well be beyond sufficient motivation for one of ordinary skill to just toss in abstract concepts like the feature alledged to be missing.

    Though had the examiner correctly weilded 101 none of us probably would have even been having this conversation.

    "Why is it that the PTAB will go to great lengths to reconstruct an Examiner's analysis, supply missing facts and missing analysis (I've seen it many times), yet require "magic words" from an Applicant's arguments in order to be considered (I've seen this too)?"

    Because it isn't their job to simply create more work for the examiners in the office. They have a certain review standard and it was enunciated by none other than Davi K in Fry/Frie or whatever case that was. It is helpful to remember that standard even though the boad occasionally ignores it.

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    1. >blanket motivation may well be beyond sufficient motivation for
      >POSITA to just toss in abstract concepts like the feature alleged
      >to be missing

      Not sure what you mean by "blanket motivation". This isn't a case where the Applicant attacked the rationale because it was generic -- something like stronger, faster, cheaper.

      Depending on the facts, generic rationales can sometimes be sufficient.

      But here the rationale was simply not related to the feature relied upon in the combination. Here the reference specifically taught that it was the use of (e.g.) a "maximal composite partitioning key" that led to efficient processing. The reference did *not* teach that the use of splunked events and base events led to efficient processing.

      So if not efficient processing, then exactly what reason would a POSITA have to add the splunked and base events in the third reference to the other two? The Examiner simply didn't identify one.

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  6. It is essentially the argument that "hey, examiner's have to show that the motivation is directly related to specifically the claimed subject matter instead of using a blanket motivation to combine that may, or may not be attributable to my little limitation"
    No ... wrong as always 6 ... the argument was that the motivation had nothing to do with the modification (not the claimed subject matter).

    For like the 10000000th time, the technical correctness of an argument bears little correlation to its chances of success.
    God forbid the PTAB actually know the technology. I recently saw an affirmance where the PTAB made up a new "rational underpinning" and the funny part was that it was completely wrong. They argued that performing X (as opposed to Y) is necessary to achieve a particular result. However, Y is what was necessary to achieve the result. If they knew anything about the technology, it would have been painfully obvious. Unfortunately for that particular applicant, the PTAB just made sh1t up.

    the blanket motivation may well be beyond sufficient motivation for one of ordinary skill to just toss in abstract concepts like the feature alledged to be missing
    You mean "hocus pocus ... its obvious" accompanied by lots of hand waving? Blanket motivations are conclusory. If they were acceptable, any invention composed of old parts (the vast, vast majority of them) would be obvious.

    "Though had the examiner correctly weilded 101 none of us probably would have even been having this conversation."
    Actually, there was a 101 rejection -- thanks for not even bothering to read the decision before bloviating on and on and on.

    Because it isn't their job to simply create more work for the examiners in the office.
    Oh … we all know that many APJs on the PTAB doesn't like to force Examiner to do anything – like follow the law. Many of these were brought on when Dudas came to power. Regardless, there are APJs who understand the law … its basically the luck of the draw. I've known that for a very long time.

    the examiner's statement was literally based on the evidence offered regardless of the evidence's completeness or incompleteness and so is not "conclusory".
    Since you didn't even bother to read the decision, it is obvious that you are shooting from the hip – as always.

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    1. 3 days. You can almost hear the wheels turning.

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