Board notes differences in independent claims and reverses some rejections while affirming others

Takeaway: In an appeal involving disk drive controllers, the Board focused on differences between independent claims to reverse the obviousness rejection of several independent claims while affirming the rejection of another independent claim. The Board found that the primary reference did not disclose emulation of an ATA controller, and so reversed the rejection of claims that specifically recited such emulation. But for another claim that recited "interfacing with a [host] as through [a controller] were attached to the [host]," the Board found that the phrase "as though" did not exclude a controller actually attached to the host. Beacuse this feature was disclosed by the primary reference, the Board affirmed this rejection. (Ex parte Stolowitz, PTAB 2010.)

Details:

Ex parte Stolowitz
Appeal 2009006157; Appl. No. 10/885,960; Tech. Center 2100
Decided: October 24, 2010

The application on appeal was directed to disk drive controllers. Two representative claims read:

     1. A method of interfacing a RAID storage device controller to a PCI bus host without modifying existing host driver software, the method comprising the steps of:
     in the RAID controller, implementing a host interface for logical connection to the PCI bus host, the host interface emulating an ATA controller;
     in the RAID controller, emulating an IDE storage device as though it were connected to the emulated ATA controller, thereby forming a first logical IDE storage device interface;
...
     20. A RAID storage device controller comprising:
     a host interface compliant with ATA interface specifications for interfacing with a PCI bus host as though an ATA controller were attached to the PCI host bus;
     a drive interface comprising a plurality of drive port interfaces for attaching a plurality of disk storage devices to the RAID storage device controller;
...

The Examiner rejected all the independent claims as obvious over a combination of two references. The rejection relied on FIGs. 1 and 2 of Levy for teaching the above-emphasized limitations. The Examiner characterized Levy as follows:

Levy is teaching that the disclosed method and design provides for RAID functionality while emulating existing IDE/ATA functionality such that the existing software drivers and software applications can still be used, this is a description of a system and method for emulating existing hardware and software functionality.
(Emphasis in original.)

On appeal, the Applicant argued several limitations, including those emphasized above. With respect to claim 1, the Applicant argued that a PCI host controller is not the same as a RAID controller. The Applicant then addressed the emulating limitation as follows:

Simply disclosing "an existing controller ... around which all drivers and applications are installed" (Col.4, lines 32-34), as relied on by the Examiner in Levy, does not even suggest any sort of emulating, let alone specifically teaching that "in the RAID controller ... a host interface for logical connection to the PCI host bus [is implemented], the host interface emulating an ATA controller, as claimed.
(Emphasis in original.)

The Applicant treated claim 20 in a similar manner, arguing that "disclosing an intermediate adapter connected to an existing controller, as in Levy, simply fails to even suggest 'interfacing as though an ATA controller were attached to the PCI host bus'." (Emphasis added.)

In the Answer, the Examiner elaborated on the teachings of Levy with respect to emulation:

[C]learly Levey is teaching that the MIR-95 system is emulating a normal IDE ATA disk drive channel, while actually performing RAID level 1 mirroring with a plurality of ATA IDE disk drives.  ... Col. 8 lines 29-34 [teaches] more specifically, "...if the disk drive adapter MIR-95 determines that the system is in a mirror mode, then for each WRITE command it will cause the same data to be written to all of the hard drives rather than to only one hard drive ...", in other words, the MIR-95 emulates the behavior of a single disk drive, but actually performs RAID level 1 disk mirroring and performs a WRITE to more than one drive.
(Emphasis in original.)

The Answer also included a definition of emulate from a technical dictionary: "to represent a system by a model that accepts the same inputs and produces the same outputs as the system represented." The Examiner then tied this to Levy's teachings as follows:

The MIR-95 accepts the same inputs and produces that same outputs as the system represented, which is a single disk on an ATA IDE channel. However, the MIR-95 is in fact another system that simulates the functionality of a single ATA IDE channel, but actually provides the functionality of a RAID level 1 mirroring system.
(Emphasis in original.)

According to the Examiner, "this is description of emulation as it is defined by the IEEE." 

The Board reversed the rejection of claim 1, but affirmed the rejection of claim 20. With respect to claim 1, the Board found that the Examiner had mischaracterized the MIR-95 interface between the IDE controller and the physical drives:

This misses the point; Levy’s MIR-95 is not a host interface because it does not connect to the host computer. Levy’s host interface is an IDE controller, which generally is an ATA compatible controller. There is no emulation; there is identity instead.
(Emphasis added.)

While claim 1 actually recited "emulating an ATA controller," claim 20 did not. Claim 20 instead recited "interfacing with a PCI bus host as though an ATA controller were attached to the PCI host bus." The Board framed the issue for claim 20 as: "whether, as a matter of inferential logic, doing something as though A were true precludes A from being true."

According to the Board, the answer is No:

The Appellants’arguments appear to assume that the claim requires that an ATA controller was not attached to the PCI host bus. The claim contains no such limitation. As a matter of inferential logic, doing something as though A were true does not preclude A from being true. Levy has an ATA compliant IDE controller attached to a bus which may be a PCI host bus. The ATA compliant controller in Levy interfaces identically as though attached to a PCI host bus.
(Emphasis added.)

Because claim 20 did not exclude a configuration in which the ATA controller was in fact attached to the PCI bus, the Board affirmed the rejection.

My two cents: The Board got the rejection of claim 1 right. From my own cursory reading of the reference, it appears that Levy teaches emulation, just not the emulation that was claimed. That is, Levy teaches a redundant disk controller that emulates a single disk controller. And maybe it's obvious to go from that to what the Applicant claimed. But even if the Examiner understood Levy's limited teaching and was relying on obviousness to carry the rejection the rest of the way, he didn't explain his reasoning well enough to make a prima facie case.

The Applicant got lucky here with claim 1, because the arguments were not very persuasive. The Applicant's argument amounted to little more than a quote from each cited portion of the reference, followed by a corresponding assertion  that the particular quote did not amount to a teaching of the claim element at issue. That strategy doesn't usually work. This is one of those unusual cases where the gap between the reference and the claims was so large on its face that a mere assertion was all it took to convince the Board. In other words, the Examiner read way too much into the reference.

As for claim 20, I interpret it differently than the Board did. I read the phrase "as though attached" to exclude attachment. That is, I read the claim as expressing a counterfactual conditional rather than an indicative conditional. (If you're into linguistics, Wikipedia has more about conditionals here.)

The Board's affirmation of the rejection of claim 20 should have been designated as a new ground, because it definitely relied on a new claim construction, one not seen by the Applicant before the Board's decision. I say this not because the Examiner didn't make his claim construction explicit, but because at no point during prosecution did the Examiner treat claim 20 any differently than claim 1. So the only way it's fair for the Board to interpret the two claims differently on appeal is to designate an affirmed rejection as a new ground. 

Finally, an important lesson here is that sometimes small differences in claim language can have big results. Here, expressing the distinguishing limitation with exactly the same language in all claims – a very common tactic for patent prosecutors – would have resulted in either a complete win or a complete loss. Instead, some of the Applicant's claims made it through appeal, even though others did not.

Board reverses indefiniteness of claim that references a published patent application

Takeaway: The Examiner rejected as indefinite a claim which referred to a published patent application: "A nonwoven mat ... suitable for use as the scored and folded vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U.S. Patent Application No. 20020020142 filed April 23, 2001 ..." The Examiner cited Ex parte Fressola as authority, asserting that Fressola allowed incorporation by reference "only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a separate document into the claim. The Board reversed the rejection. The Board distinguished Fressola on the grounds that Fressola's claim included no limitations other than a reference to Fressola's specification and drawings. (Ex parte Jaffee, PTAB 2012.)

Details:
Ex parte Jaffee
Appeal 2010011413; Appl. No. 10/718,007; Tech. Center 1700
Decided:  March 15, 2012

The application described a fibrous mat and a method of manufacturing the mat. According to the abstract, the disclosed mats are flame resistant, have good strength after being scored and folded, and are particularly useful in making lightweight, compressible ceiling panels.

The original claims to the mat specified only physical properties of the fibers and of the curing resin. To overcome prior art, the Applicant amended during prosecution to specify a number of properties of the mat itself. The Applicant also argued that "the mats of the invention were designed for ceiling tiles of the type described in U.S. 20020020142, as pointed out in the specification," while the mat in the primary reference did not have these properties. The Examiner responded by commenting that the claims were directed to a mat rather than a ceiling tile, and the claims themselves did not specify that the mat meets the requirements of the vertical, folding panels in the ceiling tile of  U.S. 20020020142.

In response, the Applicant further amended one of the independent claims so that it referred to the ceiling tile. After this amendment, claim 91 read:

      91. A nonwoven mat having a basis weight of 2 to about 2.6 lbs/100 sq. ft, a high flame resistance and unexpected excellent tensile strength, flex and recovery properties after scoring and folding and suitable for use as the scored and folded vertical webs spanning between an exposed mat and a backer mat in a compressible ceiling tile as disclosed in published U.S. Patent Application No. 20020020142 filed April 23, 2001, including the ability to, after being scored, folded, and compressed, to spring back to the original shape and orientation ...
      the fibrous nonwoven mat comprised of
      a blend of fibers comprising about 84 to about 92 wt. percent of chopped glass fibers having an average fiber diameter in the range of about 13 to about 17.5 microns and a length in the range of about 0.7 to about 1.1 inches and about 8 to about 15 wt. percent of polyester fibers having a length of about 0.25 +/0.07 inch,
     the blend of fibers being bound together with about 20 to 30 wt. percent, based on the dry weight of the fibrous nonwoven mat, of a cured resin consisting essentially of a resin derived from an aqueous homopolymer or copolymer of polyacrylic acid and a polyol, with or without a polycarboxy polymer,
     the fibrous nonwoven mat having a Taber Stiffness of at least about 50 gram centimeters and passing the National Fire Protection Association's (NFPA) Method #701 Flammability Test.

 The next Office Action included an indefiniteness rejection for claim 91 because "claims may not incorporate another publication, but instead should clearly spell out the intended structure, composition, etc. of the invention." The rejection indicated that the limitation was "interpreted as intended use limitation that does not contribute to the structure or chemistry of the claimed article."
After several more rounds in which the Examiner maintained the prior art and indefiniteness rejections, the Applicant appealed both.

In arguing against indefiniteness,the Applicant first noted that the Examiner had cited no authority that prohibited a claim from referring to a published patent application. Next, the Applicant noted that claim 51 was not rejected as indefinite, even though it pointed out with less particularity, by including the "spring back to the original shape" language without reference to the publication. Third, the Applicant argued that reference to a patent publication was a concise way of describing specific "spring back" properties for which no standard test yet existed. Finally, the Applicant addressed a position taken by the Examiner in prosecution: that a claim should be self-contained and understandable by a POSITA without guidance from a separate document. According to the Applicant, "it has long been accepted and practiced to use shorthand terms and identifiers to incorporate or explain limitations in the claims." Moreover, claim 51 referenced "the NFPA Method #701 Flammability Test" and yet was not subject to an indefiniteness rejection.

In the Answer, the Examiner provided authority for the indefiniteness rejection. The Examiner relied on Ex parte Fressola (27 USPQ2d 1608, 1609 (Bd. Pat. Appl. & Inter. 1993) for the proposition that "incorporation by reference is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a separate document into the claim. Incorporation by reference is a necessity doctrine, not for applicant's convenience." (Emphasis added.) The Examiner asserted that here, "there is a practical way to define the invention in words as demonstrated in instant claim 51."

The Board reversed the prior art rejection and the indefiniteness rejection. In discussing the indefiniteness rejection, the Board distinguished Ex parte Fressola, where the claim relied entirely on the entire specification and figures: "42. A system for the display of stereographic three-dimensional images of celestial objects as disclosed in the specification and drawings herein." In the instant case, the reference "merely sets forth a capability requirement of the mat described in the claim," and the Examiner failed to explain "how reciting the capability requirement in that form causes the claim to fail to circumscribe a particular area with a reasonable degree of precision and particularity."

My two cents: The Board got this one wrong. The claim here is different than Fressola, but is still indefinite. Patent applications disclose a lot of things, so claiming "as disclosed in patent publication X" is almost certainly indefinite. Tell me exactly what characteristics are included in a mat "suitable for use as the scored and folded vertical webs ... in U.S. 20020020142."

Is it a tile where "the dividers are elongated cells having collapsible sides so that when lateral or transverse pressure is applied to the cell in predetermined directions it will collapse into a shallow space." The publication says one embodiment contains such dividers.

Is it a tile where the dividers are "of an elongated cellular or tubular configuration." The publication says one embodiment contains such dividers.

"The inquiry under section 112, paragraph 2, now focuses on whether the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the patentee's right to exclude." Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). Jaffee's claims do not provide such notice to the potential infringer or the public.

Related posts: I discussed Ex parte Fressola in another blog post: BPAI holds that claim which includes figure is not indefinite.

Board reverses obviousness when rejection failed to show the combination used "known methods"

Takeaway: The Applicant appealed an obviousness rejection of a medical infusion pump. The rejection involved combining a mechanism constrained to linear motion with a rotary gear. The Examiner's rationale for the combination: the gear was "a known structure used with shape memory wires to control the flow of gases and liquids." On appeal, the Applicant argued that this rationale was insufficient for obviousness, absent a reason to combine a linear mechanism with a rotary gear. The Applicant also attacked the Examiner's bare assertion that the linear mechanism could be modified to use a gear instead, by pointing out a number of considerations that the Examiner had not addressed, including "which elements in the linearly actuated pumping mechanism the rotating gear is to be attached to and acted upon." The Board reversed the rejection because the Examiner did not explain how the proposed combination of elements would be accomplished, and thus "falls short of showing that the proposed combination could have been done according to known methods." (Ex parte Nason, PTAB 2013.)

Details:

Ex parte Nason
Appeal 2011007641; Appl No. 11/726,330; Tech. Center 3700
Decided:  April 15, 2013

The application on appeal was titled "Shape Memory Alloy Wire Driven Positive Displacement Micropump with Pulsatile Output." A representative claim on appeal read:

     1. A method of using an apparatus having a housing to deliver a fluid medication to a user, comprising the steps of:
     subjecting a shape memory wire within the housing to a first material condition, ... ; and
     subjecting the wire to a second material condition;
     wherein the shape memory wire is operatively coupled to a gear within the housing; and
     the gear comprises teeth and is operatively coupled to a fluid pump within the housing such that when the wire produces the work stroke as a consequence of a transition between the first and second material conditions, the gear is rotated such that the fluidpump generates a fluid flow that delivers the fluid medication from the apparatus to the user.

Fig. 9A (below) shows one embodiment:

During prosecution, the Examiner rejected the independent claims as obvious.The rejection relied on the primary reference Idriss (shown below, left) for the shape memory wires (shown in blue), housing, and fluid pump. In Idriss, the wires moved a slider 3 via a magnet 41, and the slider movement allowed fluid to flow through a port in the slider 3.

Idriss	AbuJudom

The rejection then relied on a secondary reference AbuJudom (shown above, right) to show the remaining element: a gear (shown in red) coupled to the shape memory wires (shown in blue). In AbuJudom, the wires 30, 32 moved the gear 46, which opened damper 12 and allowed fluid to flow.

As a reason for combining, the Examiner asserted that AbuJudom's gear was "a known structure used with shape memory wires to control the flow of gases and liquids."

The Applicant argued that this rationale was improper because adding a gear would render Idriss' pump unsatisfactory for its intended purpose. The Applicant noted that Idriss specifically described the slider as being "constrained for essentially linear movement in the directions of the arrow 30." Idriss also taught that this linear geometry produced a pulse magnitude that was repeatable and fixed. Thus, "the introduction of a rotating gear with teeth will compromise the operability of this mechanism, namely by introducing rotational forces which will oppose, or at the very least, hinder the linear forces and elements."

The Examiner maintained the rejection in a Final Office Action which addressed the Applicant's arguments as follows:

The Examiner finds no merit to the argument that a gear is not capable of delivering a discrete and metered amount of fluid medication or a repeatable and fixed pulse, the linearity of the device is not removed, just how the linear force is applied to the slider. One of ordinary skill in the art would be perfectly capable of utilizing a gear in the above combination while maintaining all the design considerations of Idriss that make it novel.

On appeal, the Applicant argued that the rataionale of a gear being a "known structure" –  without an objective reason to combine Idriss linear mechanism with AbuJudom's rotary gear – was not sufficient to establish a prima facie case of obviousness. The Appeal Brief repeated the "unsatisfactory for intended purpose" argument, along with additional technical explanation:

Because the rotational forces that are produced by a rotating gear with teeth are incompatible with the linear forces that the Idriss' pumping mechanism uses to control its work stroke, the mechanical coupling of such a gear to the Idriss device would compromise the operability of the device unless Idriss somehow taught or suggested for example: (1) how and where a rotating gear could be attached on the linearly actuated pumping mechanism; (2) which elements in the linearly actuated pumping mechanism the rotating gear is to be attached to and acted upon; and (3) how and where the existing elements within the linearly actuated pumping mechanism are to be rearranged and/or removed in order to accommodate the introduction of a rotating gear with teeth.

The Applicant then asserted that Idriss included no such teachings.

The Examiner's Answer responded to the Applicant argument by explaining one advantage of a gear: wire movement is magnified or diminished through the use of larger or smaller gears, which in turn resulted in "greater disbursement of a smaller system (large gear) or greater precision (smaller gear)."

The Board reversed the obviousness rejection, explaining that "the mere fact that AbuJudom described a gear coupled to shape memory wires to control fluid flow is not a reason to add a gear to Idriss’ device." The Board acknowledged KSR's familiar elements/known methods/predictable results rationale. However, the Board noted that here the Examiner failed to make the required "known methods" finding, since he did not explain how the proposed combination of elements would be accomplished.

My two cents:  I don't have statistics to back this up, but I'm confident in saying that when the Board quotes KSR's familiar elements/known methods/predictable results rationale, they usually affirm. And I'm usually disappointed by the Board's handwaving rather than fact-finding about the "known  methods" piece of the analysis. So I was happy to see a reversal based on a failure to show that the combination used "known methods."

The Applicant definitely helped the Board to see this deficiency in the rejection, by making detailed technical arguments about how the features from the two references just didn't fit together very well. Now, a lot of Applicants make the pieces-don't-fit argument but fail to account for modifications that a POSITA would make in fitting them together. This usually results in a reminder from the Board that obviousness does not require one feature to be "bodily incorporated" into another.

Looks like the Applicant here put a lot of thought into how a POSITA would go about fitting the pieces together. The Applicant's technical discussion convinced me – and the Board – that the fit between the pieces was so far off that the combination did not use "known methods" to combine the pieces.

Board finds swear-behind with redacted dates insufficient to show conception before critical date

Takeaway: An Applicant submitted a swear-behind declaration along with two evidentiary exhibits: an invention disclosure document with redacted dates; and a letter directing outside counsel to prepare a patent application, with a date after the critical date. The Examiner refused to remove the reference as prior art, finding the evidence insufficient. The Examiner also indicated that by failing to remove the reference as prior art in an earlier appeal of the same application, the Applicant had admitted that the reference was prior art. The Applicant appealed, with the sole issue being the sufficiency of the swear-behind. The Board agreed with the Examiner that the evidence was not sufficient to support the inventor's declaration of conception before the critical date, and so affirmed the prior art rejection. However, the Board found that the Applicant had not admitted the reference was prior art. (Ex parte Busche II, PTAB 2013.)

Details:
Ex parte Busche II
Appeal 2012-010360; 10/969,819; Tech Center 2100
Decided:  June 28, 2013

The Applicant lost an appeal of prior art and § 101 rejections and then reopened prosecution by filing an RCE with amendments. In the first Office Action of reopened prosecution, the Examiner rejected all claims as being obvious over Morita in view of Zhang – the same combination used in the appealed rejections.

In response to the non-final Office Action, the Applicant submitted a swear-behind affidavit under § 1.131 and argued that Morita had been removed as a reference. The Applicant also submitted an additional declaration establish diligence. This additional declaration was executed by the attorney who prepared and filed the patent application, and was also styled as a declaration under § 1.131.

In a Final Office Action, the Examiner found the swear-behind to be unpersuasive and so maintained the rejection. As a preliminary matter, the Examiner noted that MPEP 715(II)(G) prohibits a swear-behind "where applicant has clearly admitted on the record that subject matter relied on in the reference is prior art." According to the Examiner, the Applicant had admitted that Morita was prior art by failing to argue the point during the earlier appeal. The Examiner then evaluated the merits of the swear-behind and found it insufficient. "Exhibit A, which was submitted along with Applicant's 1.131 declarations, is not dated, so there is no way to know if the disclosure predates the prior art of reference."

The Applicant went to appeal – again – but this time the sole issue was the sufficiency of the swear-behind to remove Morita as prior art. With respect to the alleged admission, the Applicant took issue with the particular phrasing used by the Examiner ("the Examiner believes that Applicant has admitted") and argued that the Examiner's beliefs are irrelevant because the "Office must abide by a rule of law." The Applicant then address the merits of the declarations as follows:

At no point does the Office Action actually point to any of the four above-mentioned declarations and specificially address why this evidence is alleged to be insufficient. Each declaration is in evidentiary form. The declarations speak for themselves in supporting both conception prior to the June 29, 2004 and diligence until after the filing date for hte claimed invention of October 21, 2004. With the presentation of prima facie evidence supporting a conclusion that Morita is not prior art, the Office must either accept this evidence or provide a legally valid explanation as to why the evidence is insufficient.

The Examiner's Answer provided more specifics on the alleged deficiencies in the swear-behind declaration. The Examiner noted that the exhibit attached to the attorney's declaration of diligence was dated July 22, 2004, and so does not show conception or diligence prior to Morita's June 29, 2004 filing date (the critical date). The Examiner also noted that the exhibit attached to the inventor's declarations (an invention disclosure document) was not dated at all, and so cannot show conception before the critical date.

The Applicant filed a Reply Brief responding to the Answer. The Applicant noted that MPEP 715.07(II)  specifically allows for redaction of dates in the evidentiary document and concluded that "sworn affidavits are evidence" which "supports conception prior to June 29, 2004 and due diligence between conception until the filing of the patent application." With respect to the alleged admission as to Morita being prior art, the Applicant denied making a "clear admission" per MPEP 7.15(II)(G), and argued that "the Office offers no legal reference to support the conclusion that [a previous appeal arguing the merits of Morita] equates to a clear admission by Appellant."

The Board found the swear-behind to be insufficient and affirmed the § 103 rejection on this basis.  The Board first noted a procedural problems with submission of the declarations:

[N]one of the declarations were provided in the Appeal Brief's Evidence Appendix, let alone accompanied with the requisite statement setting forth where in the record the Examiner entered this evidence under 37 C.F.R. § 41.37(c)(1)(ix). Rather, the Brief's Evidence Appendix indicates "None."

Despite this procedural failure, the Board nonetheless decided to proceed on the merits. Regarding the Applicant's alleged admission of Morita as prior art, the Board held as follow:

Appellants can still seek to disqualify Morita as prior art under 37 C.F.R. § 41.37(c)(1)(ix) in a later proceeding based on evidence that was not at issue in the earlier proceeding ... Where, as here, Appellants have not clearly admitted that the subject matter relied upon in the reference is prior art (as indicated in the Reply Brief), the Examiner's reliance on MPEP 7.15(II)(G) and related case law is inappropriate ...  [T]his issue is based on newly-submitted evidence not considered previously which effectively creates a new record for our review and thus presents us with a new patentability question.

To explain why the contents of the declarations was insufficient to establish conception before the critical date, the Board first noted that a § 1.131 declaration must allege facts—not conclusions:

[T]here are insufficient facts on the record to support these conclusions [that the inventor conceived of the independent claims before the critical date]. The sole Exhibit A accompanying these declarations, namely the IBM disclosure document entitled "Main Idea for Disclosure CHA8-2003-0018," is unavailing in this regard. As the Examiner indicates, the disclosure document is undated, so we cannot say—nor have Appellants shown—that it existed before Morita's filing date of June 29, 2004. Rather, the record at best establishes that doc existed on July 22, 2004, when it was sent to Mr. Michael Hoffman of the attorney's law firm in connection with filing an associated patent application. Even assuming, without deciding, that this supports conception before July 22, 2004, that does not mean it supports conception before [the critical date of] June 29, 2004.

The Board then explained that the declarations failed to tie the disclosure document to the claims:

Apart from merely summarily asserting that the disclosure document describes "the present invention," the inventors' declarations say nothing more about the particulars of the document. Nor do Appellants' declarations explain how the disclosure doc specifically pertains to—let alone factually supports—their conclusions regarding the [independent claims] ... The IBM disclosure document therefore has little probative value regarding conception before Morita's filing date. As such, the inventors' conclusions regarding their conceiving the [independent claims] is essentially uncorroborated—a factor that while not dispositive for § 1.131 declarations, nonetheless significantly weakens their probative value.

The Board then found that the submitted evidence was insufficient to disqualify Morita and so affirmed the rejection.

My two cents: The Applicant did better than some – at least some documentary evidence was submitted to support the declaration. Unfortunately, this evidence fell far short of supporting the  statements in the declaration regarding the date of conception.

The earliest dated evidence was July 26 – the date outside counsel received the invention disclosure. According to Applicant arguments made in the two Briefs, this evidence supports conception before the June 29 critical date. How can the Applicant make this argument with a straight face? What accounts for those missing 4 weeks?

Most folks who read this blog know that the following sequence of events is commonly in large corporations with a defined patent procedure: inventor conceives; inventor fills out an invention disclosure form; inventor submits the form; form sits in a queue for review for inhouse counsel; inhouse counsel reviews and approves for drafting; approved disclosure is sent to outside counsel.

So maybe the Applicant was saying that it's reasonable to assume that these events take 4 weeks or so. Of course, the Applicant's argument that the "evidence supports conception" didn't come anywhere close to actually explaining this. This is pure speculation on my part.

But would such an argument have been persuasive? Suppose another declaration, by inhouse counsel, explained the corporation's procedures and gave average duration for each phase of process, where the averages added up to more than 4 weeks. Would this have been sufficient to show conception  before the critical date?

I wish the Applicant had made this argument and that the Board had spoken about this issue. I  don't recall any other Board decisions on point.

I'm going to say: No. I think you need facts about the application at issue, not information about typical or average.

Also, I say it wouldn't help if the time period was much shorter than 4 weeks. After all, it's certainly possible that the inventor conceived, filled out the form, was approved by inhouse counsel and sent to outside counsel all in the same day. We've probably all worked on rush filings like this. So I don't think you can assume that the application at issue is typical or average.

Finally, though the Board decline to reach the question of diligence, it's clear to me that the Applicant's evidentiary showing of diligence was also insufficient. The only evidence of diligence was a letter showing receipt of the disclosure document by the attorney, on July 26. No other evidence for the time period between July 26 and the filing date. Instead, the Applicant relied on two statements in the attorney-executed declaration: one about customary practice (describing the firm's typical time period from receipt of disclosure to filing as being 90-120 days); and another averring "diligent and active" assistance of preparation, review, and filing from July 26 until the filing date.

The "diligent and active" statement is not corroborated by evidence about specific activities undertaken by the attorney. As for the "customary practice" statement, once again I say that you need facts about the specific application at issue and not information about average and typical.

Board affirms obviousness after finding that melt index was recognized as result effective variable

Takeaway: The Examiner rejected as obvious various claims to a method of manufacturing foam-paperboard laminates. The Examiner used the routine optimization rationale, alleging that since melt index was a result effective variable for viscosity, the claimed melt index value was obvious. The Applicant argued that the Examiner had used hindsight because the prior art had not recognized melt index as a result effective variable. According to the Applicant, "none of the prior art of record recognized or appreciate the effects melt index have on web speed, as discovered by the inventors of the present invention." The Board affirmed the obviousness rejection after finding that melt index was recognized by the prior art to "affect viscosity, among other blend properties, and thus ability to extrude or process the blend." (Ex parte Swoboda, PTAB, 2012.)

Details:

Ex parte Swoboda
Appeal 2010012538; Appl. No. 11/454,570; Tech. Center 1700
Decided:  May 28, 2012

The application was directed to a method of manufacturing foam-paperboard laminates, such as those used in insulated beverage containers. One of the limitations argued on appeal was "providing a melted LDPE [Low Density Polyethylene] having a melt index of at least about 8.0 g/10 min."

According to the specification, the claimed melt index was unconventional in an extrusion process, "because the resulting coating would be thought to be too soft to provide an article with useful properties." However, the inventors found that using the claimed melt index in combination with other claimed processing parameters allowed an increase in extrusion speed (recited in step c of the claim) and improved the foam quality. 

The Examiner rejected the independent claims as obvious. The Examiner relied on a primary reference, Iioka, for everything except the claimed melt index, for which the Examiner relied on a secondary reference, Roox. The Examiner asserted that "melt index is a result effective variable of viscosity controlling at least ease of extrusion and is therefore subject to routine optimization."

The Applicant appealed and made several arguments. With respect to result effective variables, the Applicant argued that Roox did not recognize melt index as a result effective variable "for viscosity" as asserted by the Examiner. Instead, the Applicant argued that Roox merely taught that melt index should be "sufficiently high to permit dispersion of one component of a resin into another component of a resin." According to the Applicant:

Insofar as the record shows, the only evidence that shows melt index is a recognized, result determinative variable has been gleaned from the Applicant's own specification, which is nothing short of impermissible hindsight. Indeed, none of the prior art of record recognized or appreciate the effects melt index have on web speed, as discovered by the inventors of the present invention.

In the Answer, the Examiner further explained his position on the result effective variable:

Roox teaches that the melt index of the polymer blend may be selected from a large range (.1 to 500 for the blend (col. 2, lines 38-41 )) but does not state the given effect. However, the effect has been articulated; specifically, melt index is a result effective variable of viscosity controlling at least ease of extrusion."

The Board found that melt index was a result-effective variable recognized by Roox:

 The Examiner finds that Roox teaches a range of melt indices that overlaps Appellants’ claimed range (Ans. 4, 9, 13). The Examiner finds that Roox’s focus on the melt index of the blend indicates that the melt index is an important variable for controlling viscosity and thus extrusion. Id. Roox further discloses using higher melt indices to permit dispersion within the blend (col. 3, ll. 12-15). Based on these findings, we agree with the Examiner that Roox recognizes melt index is a result effective variable for controlling the ability of extruded materials to disperse. An improved dispersability of the materials in the blend would affect viscosity, among other blend properties, and thus ability to extrude or process the blend.
(Emphasis added.)

The Board was not persuaded by any of the other arguments made by the Applicant, and so affirmed the rejection.

My two cents: Materials science isn't my area of expertise, but seems to me that the Board went a bit beyond the Examiner's actual findings. I don't see that the Examiner said Roox "focused on the melt index of the blend" – all I saw was that the Examiner relied on Roox's blend melt index to teach the claimed LDPE melt index. I certainly don't see how this "focus" led the Examiner to the conclusion that Roox taught that viscosity was controlled by melt index. All I saw was the Examiner's assertion that viscosity was controlled by melt index.

On the other hand, Roox certainly did teach that melt index affects dispersion. The Applicant even acknowledged this teaching in the Appeal Brief. Plus, Wikipedia says that melt index is inversely proportional to viscosity. Materials science is not my thing, but this suggests to me that "melt index is not a results-effective variable recognized in the prior art" is a losing argument.

Perhaps the Applicant was really making an unexpected result argument:

Indeed, none of the prior art of record recognized or appreciate the effects melt index have on web speed, as discovered by the inventors of the present invention.
(Appeal Brief.)

 If so, the Applicant didn't frame the argument very well – the section title for the argument was "result determinative variable" rather than "unexpected results." And the Applicant didn't carry the evidentiary burden either. The Specification did include various statements that the claimed LDPE properties led to an increase in web speed. The Specification even included some technical explanation of why a POSITA would have found the results unexpected. However, case law also requires a comparison of the claims with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). No such comparison was present in the Specification, nor did the Applicant file a § 1.132 declaration making a comparison.

Board decisions involving Written Description rejections of computer readable medium claims

Once Examiners started issuing lots of § 101 rejections for computer applications, Applicants started to respond with amendments to turn non-CRM claim into CRM claims. If the spec didn't contain the magic words "computer-readable medium," the amendment often triggered a rejection under § 112 First, Written Description (the "possession" requirement).

In this post, I'll take a look at some PTAB decisions involving Written Description rejections. It's a mixed bag, with some affirmances and some reversals. 

The Board reversed a Written Description rejection in Ex parte Davis (PTAB 2011).  The originally filed claims recited "a computer readable medium or media having thereon a method." The Examiner gave a § 112 First, Written Description requirement to this claim, alleging that "there is no support in the originally filed specification for a computer readable medium or media." The same claim was also subject to an indefiniteness rejection, as it was allegedly "unclear how a computer readable medium could 'have thereon' a method."

To overcome the indefiniteness rejection, the Applicant amended the claim to recite "a computer readable medium encoded with computer executable instructions which, when executed by the computer cause the computer to perform the steps of." With respect to the enablement rejection, the Applicant made two arguments.

First, the Applicant noted that "this application is drawn to computer based lookups by collisionless direct tables and CAMS and inherently includes [support] for a computer readable medium." Second, the Applicant noted that the original specification "states that the control function 18 which controls the operation of the CAM 10 and hashing function 16 is implemented in hardware or software." The Applicant concluded that "a computer readable medium necessarily flows from such a software implementation."

The Examiner maintained the rejection, and indicated that "this evidence does [not show] sufficient support in the original disclosure for the specific implementation using a computer readable medium which is current claimed."

The Applicant appealed and repeated these same arguments for the enablement rejection. In the Answer, the Examiner elaborated on the rejection:

In other words, the Applicant is stating that although explicit support for the claim limitations ... are not included in the original disclosure, this specific software limitation is inherent. [However.] the mere suggestion of a software implementation ("A control function (either hardware or software) 18 is provided...") only suggests support that software programming can be used instead of hardware and it does not provide adequate support for a computer readable storage medium or computer performing specific steps based on instructions stored in such a medium as presented in the claims. ... [T]he suggestion of a software implementation would only suggest that one of ordinary skill in the art can perform the desired function by writing the appropriate software program intead of hardware and does not provide adequate supoprt for a computer readable storage medium. ... This minor suggestion of a software implementation is the closest evidence of support for this subject matter in the application as originally filed. Examiner believes this specific implementation is new matter which was added after the original disclosure.

The Applicant filed a Reply Brief to address the Examiner's contentions:

Storing data in memory such as a content addressable memory (CAM) in the cited portion of the originally filed specification obviously comprehends storing "computer instructions on a computer readable medium" [as recited in the claims at issue.] Content addressable memory is known to one skilled in the art as a special type of computer memory that is searched to look for particular data stored therein on constrast to random access memory (RAM) which returns data stored at that address. It is inherent that computer memory such as content addressable memory is implemented in a "computer ('hardware') having computer readable storage medium" .... The Examiner's position renders the concept of interpreting the disclose as "one skilled in the art" meaningless if this language does not lead to implementations as claimed.

The Board disagreed that a computer readable medium was inherent in the specification. The Board, however, reversed the rejection on a different ground: the originally filed claims explicitly recited "a computer readable medium or media having thereon a method."

The Board affirmed a Written Description rejection in Ex parte Niemi (PTAB 2013). The Applicant added a new claim to "a computer program embodied on a computer readable medium, said computer program configured to control a processor to perform ..." The Examiner rejected the new claim under § 112 First, Written Description, alleging that "the phrase 'computer readable medium" is not properly described in the specification."

The Applicant responded to the Enablement rejection by referring to FIG. 4:

     [A] process is illustrated which defines a new event package for event registrations of a user to be implemented by a registrar and used by a presence server 303.  A computer terminal 123 or laptop 112 which may include a computer readable medium (see lines 23-33 of page 7 of the specification) A  computer readable medium may be regarded as a computer memory which a computer terminal 123 or laptop is certain to include. Or, one of ordinary skill in the art is certain to conclude that a terminal 123 or laptop 112 includes a computer readable medium in order to carry out the functions of such a computing device.
... The presence server 303 may also be a computer readable medium because it also has a memory. Among the various operations performed in claims 38 and 39, each of these operations is performed with reference to the computer readable mediums provided by the presence server or the user. Therefore, the specification provides support for a computer readable medium, and claims 38 and 39 are in compliance with §112, first paragraph.

The Examiner maintained the rejection and went final. The Applicant appealed and made the same arguments in the Appeal Brief. The Examiner provided no additional information in the Answer.

The Board affirmed the rejection. First, the Board found that the particular page of the specification relied on by the Applicant did not describe a computer readable medium, and in fact referred to FIG. 1, not FIG. 4 as stated by the Applicant. Second, the Board found that computer terminal 123 or laptop 112 "is not identified to contain computer readable media for the entire process of FIG. 4 to embody the entire claimed process."

The Board reversed a Written Description rejection in Ex parte Visser (PTAB 2013). The application claimed priority to an EPO application, and the originally filed claims recited:

      11. A computer programme comprising instructions to produce and display an image ... and comprising instructions to perform the steps of ...

To overcome a 101 rejection, the Applicant amended to

     11. A computer program encoded on a computer readable medium for causing the computer to execute a method to produce and display an image ... and causing the computer to perform the acts of:

The Examiner issued a § 112 First, Written Description rejection and alleged that "the claim language pertaining to 'a computer readable medium' was not described in the originally filed specification."

Before appealing, the Applicant traversed the rejection and argued that "one skilled in the art would have no trouble whatsoever understanding that a computer program, as specifically recited on page 7, line 27, is stored in a memory or a computer readable device." When the Examiner maintained the rejection and went final, the Applicant argued again, this time referring to a paragraph in the specification reading "manipulations of the object data set take place within the central processor of the computer".

When the Examiner maintained the rejection and went final, the Applicant appealed.
On appeal, the Applicant quoted a paragraph in the specification that read "manipulations of the object data set take place within the central processor of a computer." The Applicant then argued that this shows possession:

As is universally known in the art, all processors contain on board memory and all computers need memory to function. The instructions on which computers operate are all stored in a computer readable storage medium (e.g. memory).

The Examiner's Answer responded to these arguments by noting that while the specification describes processor a enabling manipulation of an object data set, "the processor does not cause the computer to execute a method to produce and display an image of a multidimensional volume as recited in claim 11."

The Board agreed with the Applicant's statements about how a person of ordinary skill in the art would understand the specification, and so reversed the Written Description rejection.The Board used a technical dictionary to supplement its analysis:

Appellant’s “central processor of a computer,” also known as a “microprocessor” is defined as “[a] central processing unit (CPU) on a single chip” such that “[w]hen memory and power are added to a microprocessor, all the pieces, excluding peripherals, required for a computer are present” (emphasis added). MICROSOFT® COMPUTER DICTIONARY 338 (5th ed. 2002). Because the Specification discloses a “central processor of a computer,” one of ordinary skill in the art at the time of the invention would have recognized that the computer includes a memory, thus providing written description support for a “computer readable medium.”

The Board reversed a Written Description rejection in Ex parte MacKouse. The Applicant amended the computer-implemented method claims to instead recite "a computer readable media having stored therein instructions." The Examiner rejected the claims under § 112 First, Written Description. According to the Examiner, the specification did not disclose a computer-readable media, and as a result there is "no evidence that the inventor was in possession of the claimed concepts involving a computer-readable media."

The Applicant responded with two arguments in a Pre-Appeal Brief. First, "original claim 1 recited a 'computer implemented' method [and] computers inherently include computer-readable media." Second, the specification disclosed "stored procedures such as SQL procedures."

When the application was forwarded to appeal, the Applicant beefed up the stored procedures argument in the Appeal Brief:

A person of ordinary skill in art would understand the pages 46-65 of Applicant's specification to be a detailed description of stored computer programs ("stored procedures, PL/SQL stored procedure," "batch processing," "Java program," etc.) that could be used to implement the claimed invention. ... Inherently, in order for computer programs to be 'stored,' they must be stored in 'computer readable media.

The Examiner's Answer included additional information. The Examiner explained that the "program" disclosed in the specification is non-statutory subject matter, and the claimed CRM is non-statutory subject matter since that term typically covers signals, "particularly when the specification is silent."

The Applicant filed a Reply Brief and argued that the word "stored" in the the preamble excluded signals.

The Board reversed the rejection. The Board first found that the specification "provided a detailed description of stored computer programs (e.g., stored procedures, PL/SQL stored procedure, Java program, etc.)" to implement the processes of the claims at issue. As a result, the Board found that  "the Specification sufficiently demonstrates that the inventor had possession of a tangible medium to store the software program."

The Board affirmed a Written Description rejection in Ex parte Ohwadi (PTAB 2010). Claim 15 was originally directed to "a software element ... operative to effect or permit a download of a polling element." In response to a § 101 rejection, the Applicant amended to recite "a software element on a computer readable medium." The Examiner maintained the § 101 rejection and also added a rejection under § 112 First, Written Description. According to the Examiner, there was no disclosure for the CRM, only a mention that "the application may be stored on a device" and a PC 10 illustrated in FIG. 1.

The Applicant appealed. The Appeal Brief argued that a POSITA would understand from the specification that the "computer method disclosed therein may be provided on a computer readable medium." The Applicant further argued that the "disclosure of computer implemented methods would imply to the skilled person the use of computer readable media."



The Examiner elaborated on the rejection in the Answer as follows:

The disclosure of  [device with storage and a PC] is not similar in scope to the term "computer readable medium" ... [According to the Dictionary of IEEE Standards Terms], the term "computer readable medium" includes both storage and transmission medium, this scope is different from what was disclosed in the instant specification. 

The Board affirmed the rejection with the following explanation:

Appellants’’ arguments supra (App. Br. 7) fail to point to any specific portion of the Specification that would have purportedly conveyed with reasonable clarity to those skilled in the art that Appellants were in possession of the disputed claim limitation (a computer readable medium). Thus, we find Appellants have made no showing explaining why a person of ordinary skill would have understood, at the time the application was filed, that the description requires a computer readable medium.
(Emphasis added, original citations omitted.)

My two cents: Every one of these rejections should have been reversed.

The Board doesn't give the person of ordinary skill in the computer arts enough credit. When such a POSITA comes across "computer implemented method" or similar phrasing, the POSITA immediately appreciates that this encompasses a software implementation of the method. The POSITA further appreciates that a software implementation requires a processor to execute the instructions making up the method, and storage from which to execute the instructions. The POSITA further appreciates that "computer readable medium" (and variants of that phrase) covers such storage.

I just don't see how anyone who has ever programmed a computer can question the truth of these statements, or the conclusion drawn from them that a mention of "computer implemented method" does show possession of claims to a CRM.

Now, the Board does go off track if the phrasing of the Applicant's arguments suggest that the CRM is "obvious" in light of the spec. Don't say this, as obvious is the wrong standard for Written Description. I've also seen the Board treat Applicant arguments about what the spec "implies" as "obvious" arguments. (See my post here for my thoughts on why the Board is mistaken, and stuff implied by the spec do suffice for written description.) So you gotta stay away from the word "obvious" and I'd probably stay away from "implied" also. Point to where computers are mentioned in your spec, point to where the spec ties those computers to the claimed functionality, and explain all that a POSITA takes away from these sections.

To increase your chances of winning, don't rely solely on attorney argument. Refer to definitions or technical encylopedias. Or if you really want to have the best shot at winning, get a declaration under § 1.132 to explain this stuff.

Board reverses when Examiner ignored merits of expert declaration

Takeaway: An Applicant submitted declaration evidence to rebut an inherency assertion about a commonly owned reference. The Examiner said the declaration wasn't persuasive because it was conclusory, lacked evidentiary support, and was submitted by an interested party (an inventor). On appeal, the Board reversed because the "Examiner’s response to the Declaration does not focus on the merits of the statements provided in the Declaration." The Board noted that the declarant's relationship with the common assignee put him in the "best position to provide statements regarding the properties of the products described in the Randall reference." (Ex parte Currier, PTAB 2010.)

Details:
Ex parte Currier
Appeal 2009011735; Appl. No. 10/957,745; Tech. Center 1700
Decided: May 27, 2010

The application on appeal was directed to wallboard. A representative claim on appeal read:

     1. A gypsum wallboard comprising:
     a gypsum core having a planar first face and a planar second face;
     a coated non-woven glass fiber mat facing material suitable for level 4 finishing adhered to and covering at least one of the planar first face and the planar second face of the gypsum core,
     said coated non-woven glass fiber mat facing material having been contacted (i) on a non-coated side and (ii) during preparation of the wallboard with an aqueous gypsum slurry that sets to form the gypsum core,
     wherein the non-woven glass fiber mat facing material comprises a majority of glass fibers of a fiber diameter between about 8 and about 11 microns and a fiber length between 1/4 and 3/4 inch,
     the glass fibers of the non-woven glass fiber mat facing material being bound together with an adhesive binder comprising an acrylic adhesive binder and
     wherein the non-woven glass fiber mat facing material has a coating comprising a dried aqueous mixture comprising (i) a mineral pigment, (ii) a polymer adhesive binder and optionally (iii) an inorganic adhesive binder on a free surface of said non-woven glass mat facing material and
     said coated non-woven glass mat facing material has a porosity which allows water to evaporate through said coated non-woven glass fiber mat from the gypsum core during the preparation of the wallboard.
(Emphasis added.)

The Examiner originally rejected the claims as obvious over a combination of references, and relied on Jaffee for teaching a glass fiber mat having the claimed fiber parameters. The Examiner asserted that level 4 finishing was "a latent property to the board rendered obvious by the prior art" and "Applicant has not made any showing to the contrary."

The Applicant argued that the fiber diameters and lengths disclosed in Jaffee (15-16 microns and 3/4 to 1 inch) were outside the claimed ranges. With respect to Level 4 finishing, Applicant asserted that "Jafee is also completely silent about the surface morphology of the mat ... Jaffee does not mention the prospect of coating the mat at all. Unquestionably, the preparation of a coated mat suitable for Level 4 finishing is not inherent to any of the embodiments disclosed or suggested by the Jaffee patent. "

The Applicant submitted an expert declaration under § 1.132 to support these arguments. The Declarant, Currier, was one of the inventors and was employed by the assignee. The declaration explained how the properties of glass fibers in the mat affect the level of finishing, and described the use of coatings to smooth the mat surface. The declaration then went into some detail about the problems faced in reducing fiber size and in achieving a proper amount of coating.

The Declarant specifically disagreed with the Examiner's characterization of Level 4 finishing as being a "latent property to the board rendered obvious by the prior art." The Declarant attested that the claimed combination of fiber parameters and adhesive binder led to a mat that was suitable for Level 4 finishing. "It is the combination of these elements that is important and isolated disclosures of these elements in separate disclosures does not suggest the surprising benefit obtained by their combination." (Emphasis added.)

The declaration also referred to "a family of gypsum board faced with non-woven glass mat facing material" ("the DENS products"), and stated that none of these products had a surface "suitable for level 4 finishing." The declaration also specifically stated that level 4 finishing was not present in the the product described in a commonly owned patent to Randall ('354 Patent).

In the next Office Action, the Examiner withdrew the previous rejection in favor of a different § 103 rejection. As the primary reference, the Examiner used another Randall reference – a continuation of the Randall patent discussed in the expert declaration. The rejection relied on Randall for a coated non-woven glass fiber mat having a fiber diameter in the claimed range. The rejection relied on Jaffee for the claimed fiber length. The rejection also asserted Randall's coating was "inherently suitable for level 4 finishing since it is compositionally identical to the claimed coating."

The Office Action commented on the Currier Declaration as follows:

The Currier declaration has been fully considered but is not considered persuasive. To the contrary, the declaration seems to support the conclusion that the board taught in Randall is suitable for level 4 finishing because the glass fibers taught therein are not exposed through the coating. The declaration states level 4 finishing is usually not obtainable because of the glass fibers' surface properties (paragraph 11). Furthermore, the selection of fiber sizes is considered to be obvious in view of the teachings of Randall with respect to surface finish, porosity, etc.

On appeal, the Applicant argued that Randall did not explicitly disclose the mat's surface characteristics or its suitability for Level 4 finishing. The Applicant also argued against inherency, as follows:

The Final Office Action also contended that the Randall coating, being "compositionally identical to the claimed coating" is inherently suitable for Level 4 finishing. That conclusion is simply wrong. What the Final Office Action ignored is that attaining a surface suitable for Level 4 finishing is not just a function of the coating formulation, but is a function of a non-obvious relationship among the coating formulation, basis weight of the coating and the characteristics of the mat being coated (fiber diameter, fiber length, mat binder adhesive and mat basis weight). In its attempt to find the necessary interrelationship obvious, the Office Action ignores the evidence provided by the Currier Declaration and then engages in a hindsight selection and evaluation of the teachings of Randall and Jaffee.

The Examiner maintained his position in the Answer, and commented on the declaration as follows:

Alan Currier's opinions are noted that are not persuasive in overcoming the examiner's inherency position because the opinion (a) is not supported by factual evidence, (b) is merely conclusory and fails to address the examiner's logic in concluding level 4 finishing is inherent to Randall, and because (c) Mr. Currier is a party interested in the outcome of the application.

The Board found the Applicant's arguments about Randall to be persuasive, and so reversed.The Board also commented specifically on the Examiner's treatment of the declaration evidence:

The Examiner’s conclusion regarding the Declaration did not appear to account for the fact that the Randall reference and the present application share a common assignee. Thus, the Declarant is in the best position to provide statements regarding the properties of the products described in the Randall reference. The Declarant Currier indicated that the invention of U.S. Patent 6,770,354 [the parent of the Randall reference] did not have a surface suitable for Level 4 finishing. The Examiner’s response to the Declaration does not focus on the merits of the statements provided in the Declaration. Thus, the evidence presented in the present record does not support the Examiner's position that the claimed characteristics are inherent in the product of Randall.

Since the Examiner has not properly considered the submitted evidence, the rejection cannot be sustained.

My two cents: The Examiner implied that the inventor's declaration wasn't credible because he was an interested party. What does "interested" mean here? The vast majority of inventors don't have a financial interest in the patent itself because they assign their rights to their employer. Some percentage of inventors get a monetary reward when the patent issues, but not all do.

Is the Examiner's concern actually that an inventor is still "interested" simply because his name is on the patent, and ...what ... it makes him feel good to have the application issue? Is the concern instead that an employee is expected to sign whatever his boss or legal department tells him to?

The Examiner said Currier's opinions weren't supported by "factual evidence." Currier unequivocally stated that Randall's wallboard didn't have a Level 4 finish. Does this need to be supported by evidence? [The Board didn't seem to think so.] Presumably there is a product information sheet for the Randall wallboard that describes its finishing level as something other than Level 2. Perhaps this could have been submitted with the declaration as factual evidence to address this sort of concern.

Or maybe Currier's statement about the Randall wallboard should be viewed as a factual statement by one who knows about the products in question. Currier was a Director of R&D and "responsible for all product development in the Gypsum Division."

The Board didn't specifically say whether they viewed Currier's statements as opinions or fact. However, where the Examiner focused on Currier being an inventor with an "interest", the Board instead looked at it from a different angle: since Currier worked for the same corporation that owned the Randall patent, he was in a position to know the technology described in Randall. In the Board's eyes, this made him a knowledgeable declarant rather than a too-interested-to-be-believeable declarant.

Finally, in the real world the § 1.132 Declarant will often be the inventor, or maybe another employee of the assignee. After all, it's probably simpler, faster, and/or cheaper to get an employee involved than an outside consultant of some kind. And while those consultants don't typically have a financial interest in the patent application, they are often paid for their time in working on the declaration. To me, this would seems to make the credibility of the paid expert more suspect that that of the corporate employee. So who is a better pick for a § 1.132 declaration

Board reverses enablement rejection for "computer readable medium" since specification discloses an integrated circuit embodiment

Takeaway: The Examiner issued a § 112 First, Enablement rejection after the Applicant changed "medium" to "computer readable medium." The Applicant appealed and pointed to the specification 's disclosure of "a processor such as a computer or an electronic data processor in accordance with code such as computer program code, software, and/or integrated circuits." The Applicant also argued that computer readable media are "so notoriously well known" that undue experimentation was not required. The Board reversed the rejection since specification did disclose "at least one embodiment of a medium as an integrated circuit coded to perform functions." (Ex parte Hofstee, PTAB 2011.)

Details:

Ex parte Hofstee
Appeal 2009006207; Appl. No. 10/763,079; Tech. Center 2400
Decided:  February 24, 2011

The Applicant was directed to secure electronic communications. Original claim 22 recited

     22. A computer program product for secure communications, the computer program product having a medium with a computer program embedded thereon, the computer program comprising: 

When this claim was rejected under § 101, the Applicant amended to add "computer readable":

      22. A computer program product for secure communications in a message source, the computer program product having a computer readable medium with a computer program embedded thereon, the computer program comprising: 

The Examiner then gave a § 112 First, Enablement rejection, alleging that "the Applicant fails to sufficiently point out or describe computer readable media." The Applicant appealed this rejection, along with prior art rejections.

In the Appeal Brief, the Applicant pointed to the following passage in the specification as evidence of enablement:

It is further noted that, unless indicated otherwise, all functions described herein may be performed in either hardware or software, or in some combinations thereof. In a preferred embodiment, however, the functions are performed by a processor such as a computer or an electronic data processor in accordance with code such as computer program code, software, and/or integrated circuits that are coded to perform such functions, unless indicated otherwise.

The Applicant also argued that:

[C]omputer readable media, such as floppy disks, magnetic tape, hard disk drives, random access memories, flash memories, optical disks, and the like are so notoriously well-known that a person of ordinary skill in the art would not require any undue experimentation to store computer code that performs the functions described in the instant specification onto a computer readable medium.

The Board reversed the rejection because the passage quoted above from the Applicant's specification disclosed "at least one embodiment of a medium as an integrated circuit coded to perform functions." The Board noted that enablement did not require a specification to disclose what is well known in the art (Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984)), and that "omission of minor details does not cause a specification to fail to meet the enablement requirement." Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).

My two cents: The Applicant was smart to focus on "undue experimentation," since the Examiner did reject under Enablement rather than Written Description. By its very nature, enablement is about what a POSITA knows and what a POSITA understands from Applicant's specification. In the computer and electronics arts, the amount of detail required about specific implementation mechanisms is relatively low. You don't need much detail about processors, logic circuits, memory, and storage. As long as enough detail is present about the claimed functions, a POSITA can generally figure out how to implement that functionality on the appropriate hardware or software platform. So it didn't surprise me that the Board reversed this Enablement rejection.

Now, had this been a § 112 First rejection under Written Description, the story would be different. In that case, the Board is less likely to be persuaded with arguments about what a POSITA knows, because the focus is instead on what the inventor possessed.

Examiners are sometimes sloppy about the distinction between Enablement and Written Description. (As is the Board ... see BPAI confuses enablement and written description.) For this reason, I read all § 112 First and Second rejections very carefully. I've even seen an Examiner throw in § 101, Enablement, Written Description, and indefiniteness, giving essentially the same explanation for all.

Board reverses obviousness of rejection involving Examiner affidavit of personal knowledge

Takeaway: Ex parte Moody was a rare case in which an Examiner relied on personal knowledge in a rejection. During prosecution of claims directed to a paper towel dispenser, the Examiner used, as prior art, photos of a dispenser shown alongside a tape measure. The Examiner asserted that that this dispenser had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Applicant traversed the rejection and demanded an affidavit of personal knowledge per CFR § 1.102(a)(d)(2). The Examiner produced two affidavits, one declaring the date of use and another attesting to the measured dimensions. On appeal, the Applicant argued that the dispenser in the photo did not disclose the claimed length of the dispensing aperture relative to the length of the paper towels. 

Details:
Ex parte Moody
Appeal 2008005114; Appl. No. 10/004,823; Tech. Center 3600
Decided:  December 1, 2009

The application was directed to a paper towel dispenser (shown below), and the limitation at issue was a shortened dispensing aperture, as emphasized.

     1. A modified gravity-feed towel dispenser for dispensing C-fold and interfolded towels,
     wherein said dispenser houses C-fold or interfolded towels having a transverse length, L,
     which are positioned to be dispensed through an elongated bottom dispensing aperture having a length of L or greater,
     said towel dispenser including means for defining a top portion, a front wall, a back wall and a pair of side walls of said towel dispenser, as well as a bottom portion collectively defining an interior for receiving a stack of C-fold or interfolded towels,
     said bottom portion of said towel dispenser defining said elongated bottom dispensing aperture,
     wherein an adapter plate is secured to said bottom portion of said towel dispenser and is configured to abridge the length of said dispensing aperture to a length L' of 80 percent to 90 percent of said transverse length, L, of said C-fold or interfolded towels.(Emphasis added.)

During prosecution, the Examiner rejected various claims using a combination of an issued patent (Gettelman) and a Bobrick 363 model towel dispenser. Bobrick was alleged to be prior art because it bore a "3/81 copyright date on the interior instruction panel" and had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Office Action included several photos of a tape measure along various parts of the dispenser. According to the Examiner, these photos showed that the Bobrick dispenser included a 9.75" dispensing slot and a towel magazine capable of holding 11" wide towels, which met the limitation of "a length L' of from about 80% to about 90% of transverse length, L, of C-fold or interfolded towels. The Examiner relied on the primary reference, Gettelman, for all other limitations.

The Applicant argued that the copyright date did not establish that the Bobrick dispenser was prior art, noted that the Examiner-supplied photographs were too blurry to accurately show dimensions, and demanded an affidavit of personal knowledge as to the dimensions measured by the Examiner:

     First, in order to be prior art, the dispenser must have existed in its current form as of that date. In this regard, the copyright date on the loading instructions do not establish that the aperture on a lower part of the dispenser existed in its current form before 2000. That part of the device may have been changed or modified at any time. The Examiner has not testified that he made any measurement of any device which existed before the priority date of this application.
     The rejections should also be withdrawn because the Examiner has not complied with [the personal knowledge requirement of] CFR § 1.102(a)(d)(2) ... Counsel cannot tell from the obscured photographs provided the length of the dispensing opening, nor can Applicant determine the length of towel placed therein. Other indistinguishable features include whether there are inclined terminal portions, what the angle of inclination is, the shape of the aperture, etc.
     Applicant requests that the rejections based on the PTO Bobrick model be withdrawn, or a detailed affidavit be provided with all relevant dimensions clearly labeled; this affidavit should also necessarily include relevant dates prior to Dec 2000 when the dimensions were observed.

In a Final Office Action, the Examiner acceded to the Applicant's demands for clear photographs and also provided two personal affidavits. One affidavit attested to the date of use of the Bobrick dispenser as being at least August of 1999 – though the Examiner nonetheless maintained that the copyright date "establishes by preponderance of the evidence a 1981 public sale/use date." The other affidavit attested as to various dimensions, and read as follows:

Examiner's Affidavit in Support of the Measured
Bobrick Model 363 Towel Dispenser Dimensions

I, Michael E. Butler, do hereby afftrm the following facts based on measurements made on the Bobrick Model 363 Towel Dispensers located in the USPTO Crystal Park 5 restrooms.
The dispensing slot has a length of 10 1/2  inches.
The dispensing magazine has a towel major axis length of 11"
The dispensing slot has a width of  2 1/2 nches in the middle
The dispensing slot has a width of  3/4 inches at the end of the straight base
The arcuate surface bearing the dispensing slot has a chord of 10.5 cm
The arcuate surface bearing the dispensing slot has an arcuate length of 11.7 em
The arcuate surface commences tangent to the horizontal back of the dispensing slot curving upward to a frontal non tangential termination relative the front panel with the following projections:
The arcuate surface has projection on the horizontal axis of 9.4 cm
The arcuate surface has a projection on the vertical axis of 6 cm

The Examiner provided the following rationale for obviousness:

It would have been obvious for the Gettelman et al. retrofit adapter to have dimensions selected from those used in the proven BOBRICK 363 towel dispenser because such dispenser has proven itself effective in minimizing multiple dispensed towels and fall through and come up with the instant invention.

The Examiner further explained that:

The magazine is well capable of holding towels exceeding the width by about 10-25% and would have been obvious to one of ordinary skill in the art to place towels of such dimensions in the dispenser ... The length of slot is sufficiently close to 90% of available towel length to obviate a slot about 80-90% of the towel length.

On appeal, the Applicant argued that the Bobrick Dispenser did not teach the claimed dimensions. Specifically, the Applicant argued that the Examiner's Affidavit did not support the rejection, and that the Examiner had mischaracterized the Bobrick dispenser:

     The commercial dispenser was asserted in the Final Rejection to have a 9.75 inch dispensing slot between 11 inch sidewalls (88%). That statement is clearly mistaken. The Examiner's Affidavit contradicts that assertion stating that the dispensing slot is 10-1/2 inches or over 95% of the distance between sidewalls; not at all suggestive of the claimed relative length of about 80-90%.
     Furthermore, upon examination of the photographs of the dispenser [provided by the Examiner], it appears that the dispensing slot actually extends from sidewall to sidewall, just as in Fig. 3 of  Gettner [the primary reference], and therefore does not at all suggest dispensing a towel through an aperture shorter than the towel.
(Emphasis added.)

The Applicant also attacked the Examiner's rationale for combining, arguing that there is no motivation to modify the adapter in Gettelman using the Bobrick dispenser (which did not use an adapter). According to the Applicant, "an adapter plate modifies a dispenser, not vice-versa."

In the Examiner's Answer, the Examiner disagreed with the Applicant about the width of the dispensing slot shown in the photos:

Contrary to applicant's assertion, the slot in the Bobrick '363 model dispenser and the Gettlemen et al. dispenser do not extend the entire magazine cavity distance.

On appeal, the Board agreed with the Examiner that Bobrick's dispensing aperture was not identical to the dispensing magazine's length, finding it to be slightly shorter (95%). The Board also found that in Gettelman, the transverse length of the aperture and of the adapter were nearly identical. The  Board reversed because the Examiner did not provide a rational reason why a POSITA would shorten Gettleman's adapter plate based on the dispensing aperture in Bobrick's towel dispenser. The Board found that the "extensive amount of modification needed to the adapter plate of Gettelman is suggested nowhere in the cited art," but was instead "born from the use of impermissible hindsight reconstruction in view of Appellant’s Specification."

My two cents: I included the Board's discussion of why the Examiner's obviousness rationale was deficient, but did so just to be complete. My real interest in this case is the Examiner Affidavit of personal knowledge – this is the only case I can recall where the Examiner provided one. I think this is a useful example of when to ask for an affidavit, how to do so, and what to look for in the Examiner's Affidavit when he provides it.

Here, it was crystal clear that the Examiner really was relying on personal knowledge. But from what I've seen, some Applicants request a personal affidavit as sort of a boilerplate response whenever the Examiner uses Official Notice, "well known", inherency, or even KSR's "creative inferences." It's usually abundantly clear from the record that the Examiner is not relying on personal knowledge, adn in such cases I'm not sure why Applicants bother with the request. See my post Examiner affidavit of personal knowledge for some of those.

And for an example of another case where the Applicant probably should have asked for an Examiner Affidavit, check out my blog post here about Ex parte Gray. In Gray, the Examiner asserted that a patent reference was really a Gillette Mach 3 razor. The Examiner then used his own measurements of a Mach 3 razor rather than the dimensions depicted in the patent drawing. The Applicant disputed the assertion, but did not ask for an affidavit of personal knowledge. The Board ignored the Examiner's unsupported assertion.