Monday, July 22, 2013

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.

14 comments:

  1. I have read nothing but the report above. My instant knee-jerk reaction is:

    Reversing the Exr is not the same thing as finding that the claim is invulnerable to indefiniteness objections when properly expressed.

    I suggest that the Board is on a crusade to raise the quality of Examiner objections, spelling out what makes an objection a legitimate one. You?

    ReplyDelete
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    1. Reversing the Exr is not the same thing as finding that the claim is invulnerable to indefiniteness objections when properly expressed.
      I agree. Decisions of the Board should be based on the grounds specified by the Examiner -- not grounds boot-strapped by the Board to help the Examiner out.

      I suggest that the Board is on a crusade to raise the quality of Examiner objections, spelling out what makes an objection a legitimate one.
      I wish. IMHO, the Board fails to recognize that affirming lousy rejections (based upon little evidence and no analysis) only fosters more lousy rejections. If an examiner is affirmed on a lousy rejection for which the examiner only did 20% of what the examiner should have done, the examiner will continue to do 20% (or perhaps test to see if he/she can get away with just 15% or 10%).

      It is human nature to do "as little as possible" to get the job done. If there are no consequences for doing as little as possible, then that activity will fostered.

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    2. You overlook the problem that actually writing out a 112 2nd all proper like can be a difficult task in some instances, and not only that, you don't want to say too much and get people confused about the grounds of rejection. That literally is a problem that we face here.

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  2. Patent applications disclose a lot of things, so claiming "as disclosed in patent publication X" is almost certainly indefinite

    Breadth should not be confused with indefiniteness. In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971). See also M.P.E.P. § 2173.04. The claim did not say "anything in patent publication X." It pointed to a specific disclosure of patent publication X. Is it broad? Yes. Is it indefininte? No.

    Also, there is an argument that the language at issue is within the preamble and non-limiting. How can non-limiting language be indefinite?

    Personally, I would NEVER refer to a patent publication in a claim. Personally, I would NEVER write the claim like that found in claim 92.

    a high flame resistance and unexpected excellent tensile strength
    Why would you ever both to include that language in a claim? A claim isn't a marketing document.

    passing the National Fire Protection Association's (NFPA) Method #701 Flammability Test
    Why would anybody ever include that in the claim language? Is it going to distinguish over mats that don't pass this particular test?

    Some claim drafting lessons. Ask yourself, "does feature Y help to distinguish the claimed invention over the prior art?" If the answer to that question is "No," then ask yourself "why is that feature in there?" Sometimes you'll need a known feature that interacts with the new feature (e.g., "modifying A using X technique" where A is known and X is unknown.").

    Far too many claims I have reviewed include needless limitations that do nothing but serve to give a potential infringer an argument to allege non-infringement.

    ReplyDelete
    Replies
    1. "Is it broad? Yes."

      A claim's breadth refers to what it allows the patentee to exclude others from making, using, selling, etc. I don't think the claim's reference to another published application affects its breadth.

      "Is it indefininte? No."

      I would argue that it is. How is one supposed to determine if their allegedly infringing nonwoven mat is "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"?

      How long before 6tard chimes in that the examiner "should've Miyazaki'd" the claim?

      Delete
    2. >It pointed to a specific disclosure of patent publication X.

      Not exactly. It referenced the ceiling tile of X. Which is pretty much the subject of the entire application.

      >Is it broad? Yes. Is it indefininte? No.

      OK. I'll say it's broad but not indefinite as long as if you construe the language to mean "all embodiments and variations and features of the ceiling tile described in X." But I'm not convinced that's the proper construction, so I still say it's indefinite.

      Delete
    3. "OK. I'll say it's broad..."

      Can anybody explain why the claim's reference to another published app makes it "broad"? It actually narrows the claim.

      Think about it, which of the following is broader:

      (1) 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 ...

      or


      (2) 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, including the ability to, after being scored, folded, and compressed, to spring back to the original shape and orientation ...?

      It seems to me that (2) (i.e. the one that doesn't recite "as disclosed in published...) is broader. It provides the patent owner with the right to exclude any nonwoven mat with the recited features, whereas (1) provides the patent owner with the right to exclude any nonwoven mate with the recited features AND is as disclosed in the referenced published application (i.e. (1) excludes only a subset of what (2) excludes).

      So how is the claim as appealed "broad"?

      Delete
    4. >So how is the claim as appealed "broad"?

      Excellent question. As patent attorneys, we throw around "broad" a lot, but clearly the term is always relative to something.

      If you interpret "as disclosed in X" to be "all variations disclosed in X" then it's broad in the sense that it covers all those variations.

      >It seems to me that the one that doesn't recite "as
      >disclosed in published...) is broader.

      Agreed. And Applicant got that claim issued too, when the Board reversed the only rejection of claim 51, which was a prior art rejection.

      Delete
  3. "As patent attorneys, we throw around 'broad' a lot..."

    I don't.

    Examiners throw it around a lot. Not one of them knows what it actually means, but they love to throw it around.

    Congratulations on your move. A very dynamic firm you've joined to be sure.

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  4. "Reversing the Exr is not the same thing as finding that the claim is invulnerable to indefiniteness objections when properly expressed. "

    I agree with you, but in today's climate, they will not be able to reopen prosecution to "properly word it". I promise. It's as if the directors literally do not understand the purpose of reopening or requesting reconsideration. My SPE surely did not understand the later, by his own admission, and was quite surprised when he looked it up in the MPEP.

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  5. "It's as if the directors literally do not understand the purpose of reopening or requesting reconsideration."

    What is the purpose? What reason would an agency that does, by its own claims, record breaking outstanding quality work have for re-opening a case after the Board reverses their rejections? How is that there can be an appeal conference, sometimes a pre-appeal conference, staffed by the agency's "supervisors" and "quality assurance specialists" that green lights an appeal, but then a need to re-open after the Board finds the rejections lacking?

    "My SPE surely did not understand the later, by his own admission, and was quite surprised when he looked it up in the MPEP."

    I bet he still doesn't understand it.

    ReplyDelete
    Replies
    1. "What is the purpose?"

      Try reading the MPEP.

      "What reason would an agency that does, by its own claims, record breaking outstanding quality work have for re-opening a case after the Board reverses their rejections?"

      The ones in the MPEP.

      "How is that there can be an appeal conference, sometimes a pre-appeal conference, staffed by the agency's "supervisors" and "quality assurance specialists" that green lights an appeal, but then a need to re-open after the Board finds the rejections lacking?"

      Different reasons for different cases.

      "I bet he still doesn't understand it. "

      Nah, he's actually pretty bright. I think there's at least a 50/50 that he does so that'd be a risky bet, indeed, probably one you'd lose. On the other hand, it isn't exactly something that he should be seeing every single year, cases that legitimately need to be reopened or requested for reconsideration are pretty rare around my AU. Most people don't even do many appeals, and I certainly haven't had even a pre-appeal or appeal brief filed in the last 3 years or so. When you don't use the knowledge it starts to fade away.

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    2. I certainly haven't had even a pre-appeal or appeal brief filed in the last 3 years or so
      Either you are doing a great job and/or the attorneys you work for (and/or their clients) are indistinguishable from mice.

      That being said, there is a difference between tech centers and art units. Some are good. Others, meh ...

      I know of art units where you literally cannot get an allowance unless you appeal (or it is related to an application that has already been allowed).

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    3. "Nah, he's actually pretty bright."

      Lulz. Of course, that's in comparison to the rest of the SPE ranks. From my experience, a "pretty bright" SPE is one who actually knows what the letters "MPEP" stand for.

      Delete