Details:
Ex parte Hoarau
Appeal 2009003673; Appl. No. 10/953,549; Tech. Center 1700
Decided: January 22, 2010
The application on appeal was directed to a bookbinding system. The Applicant appealed several independent claims, two of which are reproduced below:
10. A method of binding sheets, comprising:The Examiner rejected all three independent claims as being anticipated by Taillie, as follows:
accumulating plural sheets (206) to be bound by placing an edge of each sheet adjacent an adhesive strip (202);
locally heating (208) the adhesive strip (202) to selectively melt a portion of the adhesive on the adhesive strip in a vicinity of less than all of the plural sheets to be bound.
11. A method of binding sheets, comprising:
accumulating plural sheets (206) to be bound, each of the plural sheets being sequentially placed adjacent to an adhesive strip (202); and
locally heating (208) the strip (202), wherein the adhesive strip is locally heated on a sheet-by-sheet basis, as each of the sheets is placed adjacent to the adhesive strip.
Taillie teaches a method of binding multiple sheets to each other after heating an adhesive layer thereon, one sheet at a time. Multiple sheets can mean at least two sheets. By interpreting the claims, it is disclosed that plural sheets are bound through an adjacent adhesive strip.The Applicant appealed. The Applicant argued that claim 10 specified binding a plurality of sheets with an adhesive strip, where in Taillie, "each single sheet is associated with a single adhesive, which is prefused in the sheet or an adjacent sheet." As another distinction, the Applicant also argued that claim 10 specified heating a portion of the adhesive, where in Taillie, "each adhesive area [is] heated in its entirety to bind the sheets."
With respect to claim 11, the Applicant argued that in Taillie "an adhesive is prefused into a surface edge of the sheet and the sheets are placed adjacent to each other" where claim 11 specified placing a sheet adjacent to an adhesive layer."
In the Answer, the Examiner explained claim interpretation as follows:
In interpreting claim 10, the limitation stating melting a "portion" of the adhesive includes the "entire" amount of adhesive in the strip.In a Reply Brief, the Applicant argued broadest reasonable interpretation. For claim 10, the Applicant argued that a reasonable interpretation "cannot include multiple adhesive strips such that more than one adhesive strip is used to bind the plural sheets." For claim 11, the Applicant argued that "the adhesive strip that the sets of sheets are sequentially placed adjacent to, is the same adhesive strip that is locally heated each time a new set of sheets is placed adjacent to it."
With respect to claim 11 ... "locally heating the adhesive strip", this limitation refers to the previous set of sheets and is not limited to only one adhesive strip.
The Board was not persuaded by all of the Applicant's arguments, but did reverse both rejections.
The Board found that Claim 10 was not limited to single adhesive sheet as urged by the Applicant. The claim language "placing an edge of each sheet adjacent an adhesive strip" was therefore met by Taillie's "[placing] an edge of each sheet adjacent to the underlying sheet’s adhesive strip." br />
Continuing on to Applicant's second argument for claim 10, the Board found the Examiner's interpretation of "a portion of the adhesive" to be unreasonable. The Examiner read "a portion of" on the entire amount of adhesive in the strip. The Board referred to a dictionary definition for plain and ordinary meaning ("something less than the whole to which it belongs"), and Board noted that "[t]he Examiner has not established that the Appellant is giving the term 'portion' any meaning other than its ordinary meaning." Because the Examiner's interpretation of claim 10 was in error, the Board reversed the rejection of claim 10.
For claim 11, the Board also found the Examiner's interpretation "locally heating the adhesive strip," to allow for multiple adhesive strips, to be unreasonable. The Board explained as follows:
The Appellant’s Claim 11 requires that the adhesive strip is locally heated on a sheet-by-sheet basis as each of the sheets is placed adjacent to “the” adhesive strip, i.e., the same adhesive strip. Taillie locally heats each sheet’s adhesive strip when a sheet edge is placed on it (col. 6, ll. 49-59). Thus, Taillie’s local heating takes place when each sheet is placed adjacent to “an” adhesive strip, but not adjacent to “the” adhesive strip, i.e., the same adhesive strip.My two cents: No surprise that "a portion" doesn't read on "entire," but it's a bummer that the Examiner dug in his heels and went all the way to appeal on this point
The Board's treatment of "an adhesive strip" seems inconsisent between claim 10 and claim 11. In claim 10, the Board said "placing an edge of each sheet adjacentan adhesive strip" allowed for more than one strip, with each sheet adjacent to a different strip. Claim 11 also recited "an adhesive strip," but the Board said the phrase "locally heating the adhesive strip" was limited to one strip, the same one each time.
Presumably the difference is "an" in claim 10 versus "the" in claim 11. So if claim 10 is reworded to look more like claim 11, does this avoid Taillie?
providing an adhesive strip;The "providing" step doesn't itself prohibit multiple strips, but the article "the" in the placing phrase does. Right?
accumulating plural sheets to be bound by placing an edge of each sheet adjacent the adhesive strip;
>The "providing" step doesn't itself prohibit multiple strips, but the article "the" in the placing phrase does. Right?
ReplyDeleteRight, that's why "the" is English's definite article
Examiners have been using these bullsh!t "interpretations" for years (e.g. "Oh, the reference melts the entire strip, so that's melting a portion of the strip. Hee, hee, ain't I clever?"), and continue to do so despite decisions like these. Karen has highlighted a host of them, including the examiners who try to have one element from a reference meet two separate elements in a claim by arbitrarily delineating the one element from the reference, and the examiners who try to read a reference that discloses "rigid" onto a claim of "flexible" (because "everything has some degree of flexibility").
ReplyDeleteWhy doesn't PTO management take decisions like this that clearly reverse such nonsense and circulate them to the examining corps with the message, "STOP SENDING BULLSH!T LIKE THIS TO THE BOARD!!!!"? Why do applicants have to appeal garbage like this?
So in other words someone forgot the word "only" and the board covered for their mistake. Ho hum, another day another blatant board misstep. And another case that would have been resolved by the routine use of miyazaki pre-board.
ReplyDelete"STOP SENDING BULLSH!T LIKE THIS TO THE BOARD!!!!"
Because they desire such bull as that to go to the board. Whom do you think the PTO management is if not the original people that started such claim constructions in the first place?
I should also note that this appears to be a method of binding books and I've seen plenty of books that are only adhered in portions down the side. Take the reference that does the melting of the whole thing, combine with portions books I've seen (and which aren't hard to find at all in the local library) and there's you a 103.
ReplyDeleteFeel free to include that affidavit of personal knowledge with your 103. Good luck getting your SPE to sign off on that.
DeleteDon't need to, just such a book exists in the library downstairs. It nearly fell apart in my hands the other day which is why I remembered that so vividly. I still can't believe we have a library here still but for some reason we do.
Delete"Don't need to..."
DeleteYour ignorance of evidence, facts, law, etc. never ceases to amaze.
Oh so now books in the library, easily scannable into edan just aren't evidence, and are insufficient to establish facts, and you're amazed.
DeleteNo, you're just a tard.
Good luck establishing that any one of the books in the library was made according to the claimed methods at issue in this case.
DeleteTard.
"I still can't believe we have a library here still but for some reason we do."
It's obviously not doing you any good.
"So in other words someone forgot the word 'only' and the board covered for their mistake."
ReplyDeleteWhy am I not surprised that 6tard thinks these types of claim interpretations are proper?
"Whom do you think the PTO management is if not the original people that started such claim constructions in the first place?"
Lifer tard SPE's are not "PTO management." I'm talking about, e.g., Mr. Kappos and/or Ms. Rea while they were there.
I don't want to hear about the need to hire hundreds of APJ's to address the ex parte appeals backlog when the backlog is sh!t like this that should never even been sent up.
"Why am I not surprised that 6tard thinks these types of claim interpretations are proper? "
ReplyDeleteBecause they're standard procedure. That's why. If you mean only, then you say only. The prior art method does heat a portion. In fact it heats more than a portion as well. It just doesn't heat only a portion. The issue is a simple one that arises dam near every day. And the amendment to fix it is simple as well. The public is thus put on notice, and all is well.
"Lifer tard SPE's are not "PTO management." I'm talking about, e.g., Mr. Kappos and/or Ms. Rea while they were there."
Then you should talk to the PTO management about changing their title so that it will fit in with your little naming scheme for the director.
I should also mention that in the instant case I have little doubt that the good director would back the rejection as the issue, as noted, occurs all the time and the way it is fixed, routinely, on a daily basis, is known and widely used. So that's one reason why the good director wouldn't cite the instant application and tell people to stop sending sht like that to the board. The good director could hold the application up as a great example as a prime opportunity to apply miyazaki though. The one construction is only a portion and the other is simply a portion. Applicant may pick and his claim will be so limited.
"Because they're standard procedure." Right. I know that. There's a whole bunch of "standard procedures" at the PTO that are legally improper. Sh!t just like this. And sh!t like rejecting "flexible" with a reference that says "rigid" because "hur, hur, everything is somewhat flexible."
DeleteYeah, those "standard procedures." The ones that are complete bullsh!t and cost applicants time and money. Yeah, the Director should get all the TC Directors and SPE's and QAS's in a room and tell them the next a$$hat who greenlights an appeal like that is going back to examining. With a docket of nothing but amended cases from fired probationary examiners.
"The one construction is only a portion and the other is simply a portion." Why is one construction "only a portion"? Here's a newsflash 6tard: reading words into the claim that aren't there isn't reasonable. It may be "standard procedure" but it's not reasonable. Exactly as the Board noted in its reversal.
"I should also mention that in the instant case I have little doubt that the good director would back the rejection as the issue..."
I doubt it. I'm pretty sure the PTO Director is not going to back a loser rejection like this. While it may be "standard procedure" for lifer examinertards and SPE's, the Director is a little smarter than that I think.
"The one construction is only a portion and the other is simply a portion."
DeleteYour invincible, willful ignorance is incredible.
The BRI is constrained by two very important limitations, which examinertards, SPEtards, and APJtards, almost always conveniently forget. The BRI must be 1) consistent with applicant's use of the term AND 2) consistent with the interpretation that one of ordinary skill in the art would reach. In this case, a construction of "portion" to include "entire" would not be consistent with applicant's use of the term "portion" and would also be inconsistent with the interpretation one of ordinary skill in the art would reach. The APJ's in this case got it exactly right. You know what they say about blind squirrels.
BRI does not include any and all clever interpretations examiners can dream up in order to get a reference to read on a claim. Your continued insistence that it does just confirms you're a triumphantly ignorant tard.
> prime opportunity to apply miyazaki though.
Delete>The one construction is only a portion and
>the other is simply a portion.
Miyazaki applies where there are two "plausible" constructions. Now, I've not seen any decisions about what "plausible" means, but let's assume here that "plausible" = "broadest reasonable".
If that's true, then the claim is not indefinite, because the Board found only one BRI.
Surely Miyazaki can't mean that every time the Examiner and the Applicant disagree (or even take opposite positions on) claim interpretation, the claim is therefore indefinite.
""plausible" = "broadest reasonable". "
DeleteWhy on earth would "plausible" mean "broadest reasonable"? You're such a ta rd sometimes Karen. It just means reasonable or probable. It is emminently probable that the applicant is using the term the same way thousands of other people use it day in and day out in his art and others to boot.
"If that's true, then the claim is not indefinite, because the Board found only one BRI. "
Just because the board found only one BRI doesn't mean that the other interpretation is unreasonable, especially if the issue was never raised to them. Review bodies can generally only, and for that matter, only generally, make decisions on the issues presented to them.
"Surely Miyazaki can't mean that every time the Examiner and the Applicant disagree (or even take opposite positions on) claim interpretation, the claim is therefore indefinite"
Not every time, but the vast majority of times. That's what it is there to sort out Karen. It's the office's trump card where it is being reasonable even though the applicant would like another interpretation to be adopted sans their putting it in the claim. All Miyazaki is there for is to clarify what the applicant is talking about and make sure that gets in the claim.
Although no, a miyazaki issue is not raised where the office believes there is only one reasonable interpretation, the one it has already adopted. This happens where the applicant's interpretation is found to be unreasonable by the office. That does happen sometimes. And in those cases no miyazaki issue is raised. Though a note on the record stating that one would be raised if the applicant's interpretation were found to be reasonable by any reviewer would be properly added to the record so that everyone is clear that a 112 would then appear on a finding of both interpretations being reasonable.
"Your continued insistence that it does just confirms you're a triumphantly ignorant tard."
DeleteI have never insisted anything of the sort tar d.
"Right. I know that. There's a whole bunch of "standard procedures" at the PTO that are legally improper"
ReplyDeleteWell then, why don't you whine directly to your pto management, aka the director? I don't know if the incoming replacement director will be available at the gym or not like past ones have been, but if you want then I could get you in. Perhaps for a price.
But I'm sorry bucko, this instant situation isn't going to change. It's a fundamental consequence of language which the PTO has no control over.
And I should add that I'm not too much of a fan of the rigid>flexible case. But, depending on the circumstance I could see why that position was taken. If I had to guess though it was probably in a depending claim, the examiner rejected it like that just to get the case moving, the applicant argued it and moved it up, and the examiner simply stuck to the same position. That's a danger, or perhaps you might call it a feature, of requiring examiners (who are human beings, and who have the intrinsic want to "be right" that all humans have) to examine depending claims which is currently built into the system. If you prefer we not examine them then that would be acceptable to me. I have suggested such on occasioni and at least one SPE I know of is on board.
And before you get all boo hooey on me you should realize that personally most of my cases don't even go to RCE and I haven't had so much as an pre-appeal in years. The apps I prosecute get done in ridiculously low amounts of time with ridiculously low amounts of money spent for what they're getting.
" Yeah, the Director should get all the TC Directors and SPE's and QAS's in a room and tell them the next a$$hat who greenlights an appeal like that is going back to examining."
I don't think that would go over very well, you'd make a pretty bad leader, or else you'd shape up into a better leader when you got the job. You don't seem to understand politics, even office politics, very well.
"Here's a newsflash 6tard: reading words into the claim that aren't there isn't reasonable. "
Exactly what I'm saying. Too bad the board did that.
The applicant simply said portion. The reference does a portion. It even goes above and beyond and does more. The applicant is relying specifically on not going above and beyond and ONLY doing a portion. I should note that it would be simple enough to get such on the record in an interview, at which point 112 takes over commanding them to claim what they subjectively believe to be their invention. Problem solved. Everyone moves on with their life.
And you should be aware, even though you seem to not be, people ROUTINELY use the word "portion" in just the manner I've described and which the examiner correctly presumed it to be used in the first place.
"Exactly as the Board noted in its reversal."
Awww did the pretty whittle boardtard make a boo boo? It's fine. I've seen much more egregious things than this.
Seems like we agree there are two possible interpretations of "a portion of X." One: only a portion of X. Two: at least a portion of X.
ReplyDeleteI'm pretty sure we'd all agree that outside the patent context, "a portion of" is interpreted as ONLY a portion.
Can one of the folks advocating for portion-includes-whole explain what canon of claim construction allows your interpretation, one that counter to ordinary meaning?
In some contexts, that canon would something along the lines of "applicant's usage trumps ordinary meaning". But here, no one has suggested that the Applicant used "portion" in a manner other than its ordinary meaning.
In *some* contexts, the canon that trumps ordinary meaning is "comprising is an open-ended term and allows for additional elements." But I say "comprising" as a preamble doesn't reach into every term in the claim and open it up all terms to "at least".
"Can one of the folks advocating for portion-includes-whole explain what canon of claim construction allows your interpretation..."
DeleteKaren,
The folks advocating that "canon of claim construction" are examinertards, in particular 6tard, and what allows it is their need to get their counts. So any claim construction that allows them to read a reference on the claim, reject the claim (knowing that a rejection will be signed by their SPE/primary with no questions asked), and get their count is just fine with them.
And when you tell them that their construction of the claim is counter to ordinary meaning, the response you will get is, "Yeah? So what? I got my count."
"In *some* contexts, the canon that trumps ordinary meaning is 'comprising is an open-ended term and allows for additional elements.'"
There are many examinertards, SPEtard, and APJtards who wrongly believe in, and practice, this canon of claim construction. To see an example of one APJtard who did (and probably still does), see In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009).
"I'm pretty sure we'd all agree that outside the patent context, "a portion of" is interpreted as ONLY a portion.
DeleteCan one of the folks advocating for portion-includes-whole explain what canon of claim construction allows your interpretation, one that counter to ordinary meaning? "
I'm not sure that I do agree that a portion in everyday language excludes a whole when used as in a sentence as here. It depends on the context of course. If you say to a child eat a portion of your cookie, are you excluding the child from eating the whole cookie? What if you also hand them a picture of a cookie half eaten? If on the other hand you're making a sign and say put a color of permanent marker on a portion of a blank sign so as to make a sign that conveys information then surely you exclude the whole as you'd just have a different colored blank page.
In the present context it seems plain he wanted to exclude the whole. It was the examiner's fault for not telling him to put it in the claim and citing miyazaki after the first response.
As to a cannon, sure thing toots, BRI. It's what we in the office use to settle these exact issues before they head to court and the alleged infringer is doing the whole thing while the prior art blatantly shows doing the whole thing.
"I'm pretty sure we'd all agree that outside the patent context, "a portion of" is interpreted as ONLY a portion."
DeleteUh, no. If I paint an entire wall, I've also painted a portion of the wall.
I just noticed that claim 10 recites, "locally heating (208) the adhesive strip (202) to selectively melt a portion of the adhesive on the adhesive strip in a vicinity of less than all of the plural sheets to be bound." You don't "selectively" melt anything when you melt the entire adhesive strip.
Delete6tard's "one construction" is even more wrong than I though.
Shocking.
"...than I thought."
Delete"You don't "selectively" melt anything when you melt the entire adhesive strip."
DeleteI do. I "selectively" melt the first portion and then I "selectively" melt the second (final) portion.
>Uh, no. If I paint an entire wall, I've also painted a portion of the wall.
DeleteTrue statement, but not relevant.
First, in ordinary conversation, the utterance "painted an entire wall" isn't meant to convey anything about portions. All your true statement it tells us is that "all" includes "a portion." In fact, all portions.
Your (true) statement doesn't speak to how, in ordinary conversation, we interpret the phrase "a portion". Which is the phrase at issue.
To re-use your context, I submit that when a person says "I painted a portion of the wall", he did *not* mean that he painted the *entire* wall. In fact, the speaker's choice to use the phrase "a portion" shows that he meant to convey just the opposite: that he *only* painted a portion. So while the phrase itself was silent about "all" or "only", the context implies "only."
Agree? Disagree? Note that here I'm discussing ordinary conversation, not the special context of patent claims.
"locally heating (208) the adhesive strip (202) to selectively melt a portion of the adhesive on the adhesive strip in a vicinity of less than all of the plural sheets to be bound"
DeleteIf I'm interpreting that to mean what you think it means, then I cite the doctrine of claim differentiation. I win. K thx bye now.
"It depends on the context of course."
ReplyDeleteNo sh!t, Sherlock. That's why the BRI is constrained by the two limitations I mentioned. BRI is not what the claim could mean, especially what the claim could mean to an examiner whose sole motivation is reject the claim and git dat count. If your intepretation is not consistent with applicant's use of the term "portion" and not cnsistent with what one of ordinary skill in the art, after having read the patent (application), would interpret it to mean, then it's not the BRI.
Jeebus H. Chr!stmas you's ignant.
You read the word "only" into the claim to be "consistent" with an embodiment in the specification? Well, when you say it that way, it makes perfect sense.
Delete"You read the word 'only' into the claim to be 'consistent' with an embodiment in the specification?"
DeleteWas there such an embodiment (i.e. entire) disclosed in the application?
"Well, when you say it that way..."
Did the examiner say it that way, or did the examiner say, "Hur,hur, I'm interpreting 'entire' to read on 'portion' because I needs muh count"?
"Was there such an embodiment (i.e. entire) disclosed in the application?"
DeleteAh, I see, claim scope is limited to disclosed embodiments. Makes more sense all the time.
But wait. Not even a "means plus function" is limited to disclosed embodiments.
Never mind. For a brief moment, I thought you had something.
What are you rambling about?
DeleteTP's talking about canons of claim construction. Don't worry about it.
Delete"not cnsistent with what one of ordinary skill in the art, after having read the patent (application), would interpret it to mean, then it's not the BRI"
DeleteExcept here it is consistent with that. Whoopsie on your part.
The board is full of t ards, a fact we see confirmed on this very board week in and week out. What of it?
DeleteWhat are you rambling about?
ReplyDelete