Monday, December 2, 2013

Board finds indefiniteness when Applicant argument inconsistent with language of claim

Takeaway: An Applicant appealed the prior art rejection of a claim to noise reduction electronics. The Applicant argued that the reference didn't teach "wherein the actuator is ... directly mounted on a surface of the component influenced by the vibrations." The actuator was positively recited in the body of the claim, but the component was not. The Board entered a new indefiniteness rejection. The Board found that the Applicant's argument implied that the component was part of the claimed combination, while the structure of the claim itself implied that the component was not. Thus, the claim was ambiguous and indefinite under Ex parte Miyazaki.(Ex parte Bendel, PTAB 2013.)

Details:

Ex parte Bendel
Appeal 2012-001251; Appl. No. 11/901,804; Tech. Center 3600
Decided: Nov. 21, 2013

The application was directed to noise reduction electronics. A representative claim on appeal read:
     1. A device for actively influencing vibrations in a component, comprising:
     a sensor for detecting the vibrations;
     an electrically actuatable piezoelectric actuator for acting on the component; and
     a regulation and control unit in which actuating signals are generated from sensor signals of the sensor in order to adjust the actuator;
     wherein the actuator is one of (a) directly mounted on a surface of the component influenced by the vibrations, and (b) enclosed inside a wall of the component influenced by the vibrations.
(Amendments shown.)
The Applicant amended as shown above in response to an anticipation rejection in the first Office Action. The Examiner maintained the anticipation rejection in the next Office Action, and the Applicant appealed.

In the Appeal Brief, the Applicant argued that the reference did not teach either of the alternative limitations describing the location of the actuator. According to the Applicant:
[T]he cited sections of Fischer merely describe actuators 4 enclosed within a vibration damper module 1. Thus, the actuators 4 are merely situated within a device for actively influencing vibrations in a component. Nowhere does Fischer disclose that its actuators 4 are directly mounted on a surface of a component influenced by vibrations, as opposed to the device for actively influencing vibrations, as provided for in the context of claim 1.
The Examiner provided further explanation of his position in the Answer, as follows:
The Applicant takes an overly narrow construction of (1) what constitutes the "component" and (2) what it means to be "influenced" by vibrations.  First, claim 1 does not require the "component" to be entirely separate from the device ... the claim in no way precludes the "component" from being some part of the "device" itself. Second, the mere fact that the vibration damper module 1 is producing vibrations does not preclude some portion of it from being "influenced" by these vibrations as well. All that is required to meet the limitation of claim 1 is that the component changes in some way (i.e., is "influenced") due to the vibrations of the device.  Given the broadest possible reasonable interpretation of the claim, the housing 5 of the vibration damper module 1 is "influenced by vibrations" because it goes from a state of rest to a state of "tension" in producing the counter vibrations. 
The Applicant filed a Reply Brief arguing that the Examiner's interpretation of the claim language at issue was unreasonable:
[A]ny reading of the present application makes plain that "a component influenced by vibrations" does not form a part of "a device for actively influencing vibrations."  Moreover, the Examiner's overly broad interpretation of the presently claimed subject matter leads to the nonsensical result of a device that produces influencing vibrations that influence itself, and simultaneously produces damping vibrations to dampen the influencing vibrations previously produced.  ... it is completely nonsensical to produce influencing vibrations only to then try to damp those same vibrations.  ... one of ordinary skill in the art would know that in order to prevent vibrations in a device for actively influencing vibrations, one may simply not produce any influencing vibrations from the outset, instead of producing influencing vibrations only to then have to simultaneously produce damping vibrations.
The Board didn't reach the merits of the anticipation rejection and instead entered a new indefiniteness rejection under Ex parte Miyazaki ("more than one plausible interpretation"). The Board first noted that the preamble did not recite a device in combination with a component, but rather recited the component being influenced as the target of the intended use of the device. However, in the Appeal Brief the Applicant distinguished the reference with arguments about the component. The Board found that this contradiction between the preamble and the position taken by the Applicant made the claim ambiguous:
   Since Appellant appears to be arguing that the wherein clause states a  condition that is material to patentability, claim 1 appears to be ambiguous. In other words, it is not clear whether Appellant’s claim 1 recites a device per se, with intended use language as to the component, or a combination of a device and a component wherein the actuator is one of directly mounted on the surface of the component or enclosed inside a wall of the component.
   As claim 1 is a claim under examination that is susceptible of more than one plausible interpretation, claim 1 is indefinite because the scope of the claim differs significantly depending upon which of the plausible interpretations one adopts. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211- 12 (BPAI 2008) (precedential) ) (“if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”).

My two cents: Arguing that a claim element distinguishes over the reference make a claim ambiguous? Really? Nah, I don't buy it.

The Board's reasoning goes like this:
A) claim term recited in preamble but not in body means term gets no patentable weight
B) Applicant argued that same term distinguishes over the reference, i.e., gets patentable weight
C) A and B are contradictory, thus claim is ambiguous.

The way I look at it, A is a presumption that the Applicant attempted to rebut with B. Looking at the claim alone, maybe the term gets no patentable weight. But Applicant argued the reference didn't teach the term at issue, thus implying the term gets patentable weight. Maybe the Applicant's rebuttal is persuasive, and maybe it isn't. But it seems ridiculous to use this argument to find the claim contradictory and thus indefinite. If anything, the Applicant argument makes the claim more definite.

69 comments:

  1. Notwithstanding that Miyazaki is bad law that is inconsistent with Federal Circuit precedent, the PTAB's finding is off base. The "component" is not positively recited as part of the claimed device. In claim drafting, the "component" is what is called an "environment" or "workpiece" element, and this style of claim drafting has long been acceptable.

    From what I have seen, the quality of PTAB decisions have gotten considerably worse over the past year.

    BTW -- the reason why the PTAB introduced the 112, 2nd paragraph rejection was to avoid ruling on the real issue under 35 USC 102. I've seen this a few times. Instead of addressing the appealed issues at hand, the PTAB says we cannot address the art rejection because it requires "speculative assumptions" and then cites a 40 year old CCPA case with a different fact pattern than that presented here.

    It would be nice if they could do their f'n job and just rule on the 102 issue instead of wasting both the Applicants' and Examiner's time to address an issue that is easily fixed by amendment. If they think there are two possible claim constructions, then make two decisions that covers both claim constructions.

    ReplyDelete
    Replies
    1. "The "component" is not positively recited as part of the claimed device. In claim drafting, the "component" is what is called an "environment" or "workpiece" element, and this style of claim drafting has long been acceptable"

      If that be true, then why not make that of record? And why not simply clarify the whole matter by taking the term out of the preamble and putting it in a wherein statement (or whatever other way) at the end of the claim? Takes like 5 seconds to clarify what you mean and the case ends.

      Delete
    2. why not simply clarify the whole matter by taking the term out of the preamble and putting it in a wherein statement
      How does that clarify things?

      If that be true, then why not make that of record?
      You need to make of record basic claiming principles? Do I have to explain what is meant when I recite "a body ... and widget connected to the body" (i.e., the "a body" and "the body" are one in the same).

      Delete
    3. "How does that clarify things?"

      Everyone then knows that the term is limiting on the claim and is properly referred to in the other limitations.

      "You need to make of record basic claiming principles? "

      You think for one second that there are more than a handful of examiners that know "claiming principles" that are adopted by attorneys willy nilly at all? Give me a break.

      ""a body ... and widget connected to the body" (i.e., the "a body" and "the body" are one in the same)."

      I doubt it. But then that isn't what is being claimed in the instant case now is it? The "in a component" is following a "for".

      If I've told you tar ds on this board once I've told you a thousand times, take items you want to have a fuc king effect on the claim out from behind the "for". Otherwise, they're getting bundled in with the function/intended use.

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    4. You think for one second that there are more than a handful of examiners that know "claiming principles" that are adopted by attorneys willy nilly at all?
      Willy Nilly? Environmental limitations have probably been around for longer than you (or your parents) have been alive.

      Otherwise, they're getting bundled in with the function/intended use.
      I'm sorry, We don't write claims for Examiners who think they know the law better than 99% of everybody else. We write claims based upon long-established case law that most Examiners "get." Unfortunately, we get stuck dealing with know nothings that think they know something from time to time, but we deal with it.

      You are a speed bump that will eventually get drummed out of the USPTO for being too much of a PITA.

      Delete
    5. "Willy Nilly? Environmental limitations have probably been around for longer than you (or your parents) have been alive."

      So they were adopted willy nilly before my parents were alive, and that means that their adoption willy nilly somehow is implanted into examiner's knowledge?

      "I'm sorry, We don't write claims for Examiners who think they know the law better than 99% of everybody else"

      Well I'm sorry too when you case goes to the board and you get a Miyazaki up ins of your face. I'll continue to tell you tar ds until you listen or until someone takes the issue to the CAFC.

      "We write claims based upon long-established case law that most Examiners "get." "

      You mistake their skipping right over top of claim construction for their "getting" your horsesht drafting practices that are older than my parents and taught in obscure lawlyer texts/classes. Sorry bro.

      "Unfortunately, we get stuck dealing with know nothings that think they know something from time to time, but we deal with it."

      In other words, you need to accomodate the lowest common denominator. HUGE SURPRISE. It's only what I've been telling you for the last 6 years. But nooooo, that's the worst thing of the evers.

      "You are a speed bump that will eventually get drummed out of the USPTO for being too much of a PITA."

      Keep dreaming and tell it to the board. And to all the other examiners who will immediately jump to my defense.

      Delete
  2. "From what I have seen, the quality of PTAB decisions have gotten considerably worse over the past year."

    I agree. Which is unfortunate. I would have thought that hiring from outside would have improved, not worsened, the quality of decisions.

    I know this APJ. Very disappointing to see her buying into this Miyazki nonsense. She should know better.

    ReplyDelete
    Replies
    1. She should know better.
      I don't know what it is at the USPTO, but I've seen some good attorneys go bad at the USPTO. Personally, I would have to take a long, hard look before I hired any patent attorney that came out of the PTAB.

      I understand that when the evidence is 50-50 (or even 45-55) leaning towards the USPTO's view. However, I have seen far too much intellectual dishonestly, mangling of case law, and woeful knowledge of the technology out of the PTAB.

      Delete
    2. "I agree. Which is unfortunate. I would have thought that hiring from outside would have improved, not worsened, the quality of decisions"

      You've got to be joking right? All these newly minted attorneys with no (or limited) real world experience getting hammered with the most egregious of disputes between examiner and applicant? Pshaw.

      Delete
    3. "I don't know what it is at the USPTO, but I've seen some good attorneys go bad at the USPTO. Personally, I would have to take a long, hard look before I hired any patent attorney that came out of the PTAB."

      The "going bad" is nothing more than having the weight of making sure you're doing the right thing in the case hitting you in the face. It's a very real, very invisible, phenomena.

      And she's bound by precedent in Miyazaki, as am I.

      Delete
    4. "The 'going bad' is nothing more than having the weight of making sure you're doing the right thing in the case hitting you in the face. It's a very real, very invisible, phenomena."

      Oh the lulz that ridiculous statement generates. Too many to count.

      The consequences to APJ's for getting it wrong, like shockingly and colosally wrong (e.g. In re Klein (all 5 references non-analogous), Leithem, Stepan, Eaton, etc.), are nil. Zilch. Zip. Nada. The next case pops up on their docket and if they get that one as shockingly and colosally wrong as the previous one it makes no difference. Another case will pop up on their docket after that one. And another paycheck for another bi-week of record breaking outstanding quality work will appear in their bank account.

      That's some weight. How do they, how do you, bear it?

      "And she's bound by precedent in Miyazaki, as am I."

      Miyazaki is not law. It doesn't bind anyone. Not even you. And certainly not me.

      Delete
    5. "I understand that when the evidence is 50-50 (or even 45-55) leaning towards the USPTO's view. However, I have seen far too much intellectual dishonestly, mangling of case law, and woeful knowledge of the technology out of the PTAB."

      If the evidence is 50-50 (i.e. in equipoise), the applicant wins. The burden of proof of unpatentability on the PTO is preponderance (i.e. 50+%).

      We had an in-house CLE from a former APJ turned partner at a boutique recently. His firm is one of our outside providers. He discussed appeals practice in front of the BPAI/PTAB. He stated in no uncertain terms that APJ's are looking for any reason to affirm the examiner. No impartiality. No recognition that the burden lies on the examiner throughout the entire prosecution, no recognition that examiner's findings and arguments are entitled to no deference. Just flat out acknowledgement that the PTAB deck is stacked against applicants.

      I, and mostly every other practitioner I know, already knew that. But to hear it admitted so openly was rather eye opening.

      Delete
    6. "Oh the lulz that ridiculous statement generates. Too many to count.

      The consequences to APJ's for getting it wrong, like shockingly and colosally wrong (e.g. In re Klein (all 5 references non-analogous), Leithem, Stepan, Eaton, etc.), are nil. Zilch. Zip. Nada. The next case pops up on their docket and if they get that one as shockingly and colosally wrong as the previous one it makes no difference. Another case will pop up on their docket after that one. And another paycheck for another bi-week of record breaking outstanding quality work will appear in their bank account.

      That's some weight. How do they, how do you, bear it?

      "And she's bound by precedent in Miyazaki, as am I."

      Miyazaki is not law. It doesn't bind anyone. Not even you. And certainly not me. "

      Why not come do the job for a bit brosefus? Then I'll watch as your tune magically changes.

      Delete
    7. I was offered the job, but turned it down for another offer. Mainly because I worried what would happen to my own personal sense of professionalism once I had a job that didn't require one scintilla of professionalism. What would become of me if I had a job where it didn't matter one bit whether I got it right or wrong? The check would probably be nice, but ultimately I need to know that the work I do matters. And that it's important that I get it right. That job just doesn't offer that.

      You're perfect for the job, 6tard. Unfortunately you still haven't managed to get yourself into law school. Despite the fact that in the last 30+ years it's never been easier to get in than it is right now.

      Oh well.

      Delete
    8. Why not come do the job for a bit brosefus? Then I'll watch as your tune magically changes.
      The last Decision I read was, "Appellant argues that reference doesn't teach X. We are unpersuaded by Appellant's argument. We adopt as our own the Examiner's findings and analysis in the Reply Brief." There was about 4 paragraphs of this for each limitation argued. Sheeet. I could have wrote that in about 45 minutes.

      BTW ... if you do a bad job in the private sector, your career path may be permanently halted -- if you are lucky. Worse, you could lose your client, be sanctioned by the judge, be subject to a malpractice lawsuit, and/or lose your job.

      Delete
    9. "We had an in-house CLE from a former APJ turned partner at a boutique recently. His firm is one of our outside providers. He discussed appeals practice in front of the BPAI/PTAB. He stated in no uncertain terms that APJ's are looking for any reason to affirm the examiner. No impartiality."

      From one person's opinion you extrapolate to support your lack of knowledge about the appeals process in general and the board in particular. May we extrapolate from your remarks that all attorneys are idiots?

      Delete
    10. "What would become of me if I had a job where it didn't matter one bit whether I got it right or wrong?"

      Probably the same thing that happens at your current job, you're just as useless as ever.

      "The check would probably be nice, but ultimately I need to know that the work I do matters."

      O come on, you're constantle bemoaning the horrors wrought on poor applicants. Of course your job at the board would "matter".

      " And that it's important that I get it right"

      See that's the thing, you decide how much effort to put in. If you're not willing to put much in, then sure, you'll do the same thing as others.

      "Despite the fact that in the last 30+ years it's never been easier to get in than it is right now."

      Yes at the cost of 2 arms and a leg. As opposed to a mere leg back when. If you're spotting the cost I'll be in next year. Plenty of schools will take me for the low low cost of two arms and a leg. Sht, I can either have a legal education or a summer house in the hamptons.

      Delete
    11. Sht, I can either have a legal education or a summer house in the hamptons.
      Your ignorance extends to real estate as well. How comforting.

      Delete
    12. "The consequences to APJ's for getting it wrong, like shockingly and colosally wrong (e.g. In re Klein (all 5 references non-analogous), Leithem, Stepan, Eaton, etc.), are nil. Zilch. Zip. Nada"

      Geez. Where do we start. Did you actually read Klein? Or just a blurb? More importantly, did you look at the actual record? It's on Public Pair. Spend 10 minutes or so. As they say at the bored (where you'd really like to work, if only you could, we can see that), if those were the facts, I would agree with the result.

      Delete
    13. "As they say at the bored (where you'd really like to work"

      Hey, he got the interview. That's still pretty impressive, right? even if he didn't get the job

      Delete
    14. "See that's the thing, you decide how much effort to put in. If you're not willing to put much in, then sure, you'll do the same thing as others."

      No, that's what you would do. We're all aware of your level of professionalism (i.e. non-existent).

      Delete
    15. "From one person's opinion you extrapolate to support your lack of knowledge about the appeals process in general and the board in particular. May we extrapolate from your remarks that all attorneys are idiots?"

      He was an APJ for 20+ years. So long that his original title was Examiner-in-Chief before they changed it to APJ. Was on thousands of panels. Even if it was his "opinion" it was based on a lengthy and extensive experience at the BPAI. His "opinion" hardly needs any extrapolation.

      My own experience is 20+ years of prosecution experience. I've filed enough appeals myself and reviewed enough BPAI/PTAB decisions to confirm that this former APJ's "opinion" is pretty much dead on balls accurate as to the mindset of most APJ's. Especially the lifers.

      Delete
    16. "Did you actually read Klein?"

      Yes, I did. Did you?

      Delete
    17. "Did you actually read Klein?"

      ...... "Yes, I did. Did you?"

      Well, good for you. Good job! But that was the easy part.

      "An inventor considering the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals,” would not have been motivated to consider any of these references when making his invention, particularly since none of these three references shows a partitioned container that is adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments.

      2 As noted above, we agree with Mr. Klein that the government cannot now redefine the problem Mr. Klein was addressing as a “compartment separation problem.”"

      ..... In re Klein


      "The problem facing Klein was a compartment separation problem -- not a bird or butterfly feeding problem."

      ...... Board Decision 2007-06-07.

      Delete
    18. "The consequences to APJ's for getting it wrong, like shockingly and colosally wrong (e.g. In re Klein (all 5 references non-analogous), Leithem, Stepan, Eaton, etc.), are nil. Zilch. Zip. Nada"

      Geez. Where do we start. Did you actually read Stepan Co.? Or just a blurb? More importantly, did you look at the actual record? It's on Public Pair. Spend 10 minutes or so. As they say at the bored (where you'd really like to work, if only you could, we can see that), if those were the facts, I would agree with the result.

      Delete
    19. What is your point? Are you trying to argue that the Board didn't get it incredibly wrong in any of the cases I listed? Because they did. Don't even need 10 minutes to figure that out.

      Delete
    20. "Are you trying to argue that the Board didn't get it incredibly wrong in any of the cases I listed? Because they did. Don't even need 10 minutes to figure that out."

      Here, let me hold your hand. Now please explain why the Board got it "incredibly wrong" when it made two findings, the CAFC selected one of the two to base the decision on, and refused to consider the other.

      Delete
    21. "Here, let me hold your hand. Now please explain why the Board got it "incredibly wrong" when it made two findings, the CAFC selected one of the two to base the decision on, and refused to consider the other."

      Lulzapalooza. So your complaint is that the Fed. Cir. did to the BPAI what the BPAI does to applicants every day?

      Let it go.

      If you want to be more specific as to why the BPAI got it right that all five references in Klein were analogous, please do. We could all use the laughs.

      In the meantime, Klein is a case where the Fed. Cir. told the APJ's in question, correctly I might add, that they had zero understanding of the case law on non-analogous prior art. Whine and cry all you want, but that was the result.

      Delete
    22. BTW, are you that poster still nursing a serious grudge over the "illegal panel decision" in Zurko IV?

      Lulz

      Delete
    23. "Lulzapalooza. So your complaint is [yada] [yada] [yada]"

      I never would have imagined an "attorney" could have such a complete misapprehension of a relatively simple case like In re Klein. Finally, I understand the basis for your opinion. Thanks.

      Delete
    24. I get it. -- If this "attorney" makes two arguments on appeal to the board, the board affirms after considering the first and refuses to consider the second, the "attorney" has made a colossal blunder.

      Delete
    25. "I never would have imagined an 'attorney' could have such a complete misapprehension of a relatively simple case like In re Klein. Finally, I understand the basis for your opinion. Thanks."

      Would you have ever imagined that three administrative patent "judges" could have such a complete misapprehension of a relatively simple case like In re Klein?

      Again, do you have a point? One you can state clearly enough even for an "attorney" like me to understand?

      Delete
    26. "I get it. -- If this 'attorney' makes two arguments on appeal to the board, the board affirms after considering the first and refuses to consider the second, the 'attorney' has made a colossal blunder."

      Well, the Board is on record as admitting that they are incapable of assessing the individual merits of a plurality of arguments. See pages 5-6 of the article linked below. So if you present a persuasive argument of, for example, no reason in the prior art to modify/combine, to the point that it's beyond a reasonable doubt, but then have an additional argument or two (e.g. teaching away, non-analogous art) that they don't find persuasive, they will be too "distracted" to reverse because they are simply not competent enough to address the merits of each traversal.

      Sad. But true.

      http://www.usptols.org/uploads/Ten_Common_Mistakes__5_.pdf

      Delete
    27. "Well, the Board is on record (Yada Yada Yada)"

      English version -- "I've got nothing. I'll change the subject and hope nobody notices."

      Delete
    28. Still waiting for you to make your point. Are you seriously arguing that Klein, Leithem, Stepan, etc. were not terrible decisions by the Board?

      Delete
    29. No,no, shortly he'll xplain why an "attorney" can make two arguments but the board cannot make two findings. He's thinking.

      Delete
    30. "He's thinking."

      Always the optimist.

      Delete
    31. " Are you seriously arguing that Klein, Leithem, Stepan, etc. were not terrible decisions by the Board?"

      Does he mean decision or opinion?

      Delete
    32. "Does he mean decision or opinion?"

      He does'nt know.

      Delete
    33. "He does'nt know."

      Maybe he'll come back when he's more prepared.

      Delete
    34. ssshhh.. He's thinking.

      Delete
    35. wait for it ....

      Delete
    36. it took thomas pain five days to grasp a simple concept. aaa jjj is much, much, smarter. just you wait.

      Delete
    37. wait for it...

      Delete
  3. "Arguing that a claim element distinguishes over the reference make a claim ambiguous? Really? Nah, I don't buy it."

    Except where, as it seems to be in this case, an attorney's remarks raises the question as to "the subject matter which Appellant regards as the invention."

    ReplyDelete
  4. Yet another case where miyazaki solves all the substantive issues in the case and once resolved will likely result in a quick issuance of an allowance.

    If the examiner himself had been trained in the use of Miyazaki this is yet another case that never needed to go to the board. The applicant would have simply clarified and got their allowance.

    But noooooo, miyazaki is the worst thing since sliced bread.

    Finally though I don't think they needed to rely on the arguments to establish the Miyazaki rejection, the plain language of the claim is open season in this case. Though certainly arguments can bring this issue up. The only question is, should such be a new grounds of rejection if issued at time of final in re applicant's response? I've been going with "no" in my OAs and nobody has said anything, but I could be wrong.

    ReplyDelete
  5. "The Board's reasoning goes like this:
    A) claim term recited in preamble but not in body means term gets no patentable weight
    B) Applicant argued that same term distinguishes over the reference, i.e., gets patentable weight
    C) A and B are contradictory, thus claim is ambiguous."


    Actually Karen, to be clear, it goes like this:

    The Board's ACTUAL reasoning goes like this:
    A) claim term recited in preamble but not in body means term gets no patentable weight
    B) Applicant argued that same term distinguishes over the reference, i.e., gets patentable weight
    C) A and B are rely on two different constructions to which the claim is amenable thus the claim is ambiguous.

    ReplyDelete
    Replies
    1. "A and B are rely on two different constructions to which the claim is amenable thus the claim is ambiguous."

      A and B don't "rely on two different constructions to which the claim is amenable" as you argue. Either the preamble is accorded patentable weight under the existing case law, or it isn't accorded patentable weight. The Board should have decided that issue and then decided the prior art rejections.

      Simple. And it doesn't rely on bullshirt like Miyazaki to resolve the case.

      Delete
    2. A and B don't "rely on two different constructions to which the claim is amenable" as you argue.
      Bingo. There is a difference between two difference claim constructions and not giving a term patentable weight. BTW, whether or not a term in a preamble is accorded patentable weight is a determination that must be made on a case by case basis. There is no per se rule for ignoring claim language in a preamble.

      The Board should have decided that issue and then decided the prior art rejections.
      Amen brother.

      Delete
    3. "There is a difference between two difference claim constructions and not giving a term patentable weight"

      Whether or not the preamble gets "patentable weight" or not is not at issue in this case. It's whether or not the preamble is limiting on the claim or not. Not only for purposes of comparing the claim to prior art to determine patenability, but also in terms of determining infringement (or other conditions of patentability other than ones regarding art, i.e. 101/112).

      I swear, you attorneys can do better.

      Delete
    4. "A and B don't "rely on two different constructions to which the claim is amenable" as you argue."

      You can feel free to assert that all you like, the board decided differently. Take it to the federal circuit on their behalf if you feel so strongly on the matter.

      "Either the preamble is accorded patentable weight under the existing case law, or it isn't accorded patentable weight. "

      The limiting effect of the preamble isn't just "patentable weight" it matters for things like infringement too. We're not just talking about saying "meh, it doesn't get patentable weight". The Board did determine that it was not unreasonable to consider the part at issue part of the intended use and not limiting. In fact they found that reasonable. Likewise, they found it reasonable to also consider it a distinct part, apart from the intended use.

      "it is not clear whether Appellant’s claim 1 recites a device per se, with intended use language as to the component, or a combination of a device and a component wherein the actuator is one of directly mounted on the surface of the component or enclosed inside a wall of the component. "

      "The Board should have decided that issue and then decided the prior art rejections."

      They did decide the issue of "patentable weight". It gets patentable weight. Either as an intended use limitation (which the examiner would like), or as a distinct part (as the applicant would like). They're two different constructions and both are reasonable. Thus, Miyazaki steps in to lay the hammer down.

      Delete
    5. Oh and actually AAA JJ, I was careless in repeating Karen's breakdown. Sorry about that. I was just copy and pasting to make the difference clear without paying much attention to what she said.

      It should be:
      The Board's ACTUAL reasoning goes like this:
      A) claim term recited in preamble AS A PART OF AN INTENDED USE but not in body means (NOTE HERE NOTHING ABOUT WHETHER THE term gets no patentable weight)
      B) Applicant argued that same term distinguishes over the reference because the feature is a component separate from the "device".
      C) A and B are rely on two different constructions to which the claim is amenable thus the claim is ambiguous.

      My bad, i was just copying and pasting carelessly to highlight the difference of constructions for Karen.

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    6. Whether or not the preamble gets "patentable weight" or not is not at issue in this case. It's whether or not the preamble is limiting on the claim or not.
      Care to explain the difference between whether or not the preamble gets "patentable weight" and whether it is limiting on the claim or not.

      This should be good ....

      The Board did determine that it was not unreasonable to consider the part at issue part of the intended use and not limiting
      Consider the claim language of: "A screwdriver for driving a screw having a Philips-head, comprising a tip, wherein the tip is configured to fully mate with the Philip-head of the screw."
      Definite or not? Is the screw an environmental limitation or not? Does the screw place a physical limitation on the screwdriver?

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    7. "Care to explain the difference between whether or not the preamble gets "patentable weight" and whether it is limiting on the claim or not."

      Sure. Patentable weight refers solely to whether it helps to distinguish over the art, generally for purposes of non-obviousness/obviousness determinations though sometimes referring to anticipation as well. Whether the limitation in fact is limiting on the scope of the claim in any meaningful way, and deciding which meaningful way, as a result of an intended use limitation will impact distinguishing over the art, as well as infringement and 112/101. In other words, the later is just everyday claim construction "what does the claim mean", as opposed to "what disginguishes this claim from the prior art and can we premise calling this invention non-obvious thereupon that distinguishing feature" which is what "patentable weight" is referring to.

      "Consider the claim language of: "A screwdriver for driving a screw having a Philips-head, comprising a tip, wherein the tip is configured to fully mate with the Philip-head of the screw.""

      An interesting example. However in your example screws are unambiguously not part of the screw driver. That is not so much the case in the instant case, though they could have easily made it the case through an amendment, which they voluntarily chose not to do. And, if you were arguing over a piece of prior art that never showed a phillips screw but instead showed just a phillips screw driver (with phillips tip) then you wouldn't go on and on about the reference not showing a screw now would you?

      I say it is definite so far as I can see. But then, in your hypo the applicant has yet to make any outrageous arguments against a perfectly reasonable construction with his wished for super narrow construction that he refuses to amend the claim to.

      But in any event, this case is not about the drafting of straw examples. It is about the instant application and the claims as drafted in the application.

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    8. Sure ... is referring to.
      Got any case cites for this or are you just pulling this out of your ***? Don't worry, I won't hold my breath on the case cites.

      And, if you were arguing over a piece of prior art that never showed a phillips screw but instead showed just a phillips screw driver (with phillips tip) then you wouldn't go on and on about the reference not showing a screw now would you?
      The difference is that the limitations in these claims do distinguish over the prior art.

      But in any event, this case is not about the drafting of straw examples
      Argument by analogy. This is the foundation of arguing law. This is what you do when you cite case law, which rarely ever matches your exact fact pattern. In essence, you are arguing that the facts are analogous, and thus, the legal analysis associated with Case X should apply.

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    9. "Argument by analogy"

      Argumentum ad strawanalogy?

      "This is the foundation of arguing law."

      Especially when you have so much fun with your straw!

      "In essence, you are arguing that the facts are analogous, "

      You can argue that all you like, they aren't, which is what you have a super hard time understanding.

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    10. no love for stoogesDecember 4, 2013 at 4:45 PM

      "I was just copy and pasting...without paying much attention..."

      No worries. But if you stay there much longer then cutting and pasting and inserting misspellings into form paragraphs will be the only skills you have left. Then you'll end up a failed SPE turned mid-level (mis)management stooge.

      Try to avoid that fate. You've seen what becomes of those fell into that trap.

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    11. "Then you'll end up a failed SPE turned mid-level (mis)management stooge. "

      Idk what makes you think the mid-level mismanagement is made up of failed spes, at least so far as I'm aware, they've been promoting the best of their spes (recently took one of the best I know, if not the best I know of, and took one of the other best the year before that). I'm talking numbers here brosefus, performance. And according to the ones getting promoted they wouldn't have gotten the promo if not for those in their art propelling them to the promo.

      It may have used to have been that way, (go d only knows how many ta rd old mid-levelers I know of) but they're taking the top ones now.

      "You've seen what becomes of those fell into that trap."

      A huge paycheck for going to meetings and making little training programs? The opportunity to become a director/BPAI judge? I mean, all said, I could stand to suffer that fate. Or just spein' from home in NC/SC/PA/FL/CA. Chris t bro, you gonna be ballin with that paycheck. B A L L I N '.

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  6. "But it seems ridiculous to use this argument to find the claim contradictory and thus indefinite. "

    Why is it ridiculous to quickly and easily resolve the whole of the dispute with claim construction rather than digging into the merits of the art? Seems to me like the ultimate in efficiency, and entirely appropriate where the issue with the application of the art is actually nothing more than an issue between which claim construction to adopt.

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  7. "If anything, the Applicant argument makes the claim more definite. "

    All it really does is announce to the world that they did a poor job drafting the claim in the first place.

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  8. I'm not an expert in patent drafting, but I wonder: who is infringing this claim? Not the manufacturer of the device, because until the device is arranged with the component according to the claim, the device is not infringing. The only way to infringe the claim is by making, selling, etc. the combination of the device with the component. So what is there to loose by claiming the combination at first place?

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  9. So what is there to loose [sic] by claiming the combination at first place?
    Good point. Some environmental limitations somehow change the configuration of the device being claimed. However, the limitations in this device do not. Instead, they only appear to distinguish the claimed invention over the prior art.

    In this instance, I see no good reason not to claim the combination. I'm no litigator, and there may be a secondary infringement argument that I may be missing. Regardless, I don't see what claiming only the device is going to get somebody.

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  10. "The Applicant takes an overly narrow construction"

    Back in the 1990s, before PTO mis-Management in the 2000s poisoned the Examining Corps with an overemphasis on BRI, when an Applicant stated something in an argument that provided prosecution history estoppel that would narrow a claim's interpretation in subsequent litigation, the Examiner accepted the Applicant's argued narrower interpretation of the claim language. If the on-record narrow interpretation by the Applicant put the claim in condition for allowance, the Examiner allowed the claim and noted the Applicant's narrow interpretation in the Reasons for Allowance.
    The Examining Corps' illogical over-reliance on BRI utterly divorced from the Applicant's specification has got to change.

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    1. I remember those days. The problem with that approach though was that applicants made narrowing arguments during prosecution, got their claims allowed, and then went and sued alleged infringers with claims relying on the doctrine of equivalents trying to expand the claims they themselves had narrowed during prosecution. The Fed. Cir. got sick of seeing that and started trimming the doctrine of equivalents (e.g. Festo) and the PTO probably just followed their lead in telling applicants that if they intended the claim to have the meaning they were arguing it had to just go ahead and put it in the claim.

      The firm I worked at in the late 90's to early 00's had a weekly lunch where case law summaries the associates prepared were discussed. I remember reading more than a few cases where the difference between what the patentee argued to the PTO the claim meant and what they argued to the USDC the claim meant was as wide as the Grand Canyon.

      Patentees are sometimes their own worst enemy.

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    2. "ack in the 1990s, before PTO mis-Management in the 2000s poisoned the Examining Corps with an overemphasis on BRI, when an Applicant stated something in an argument that provided prosecution history estoppel that would narrow a claim's interpretation in subsequent litigation, the Examiner accepted the Applicant's argued narrower interpretation of the claim language. "

      I'd be willing to do that still today if the mgmt were on board. But I understand why they're reluctant. And indeed I'm a bit reluctant myself. That sht just lets you get around providing the public with notice of what is covered by the claims in the claims themselves, and claims have a public notice function they're supposed to be fulfilling. Just amend the claim and go on about your life.

      Half of what we do here is dealing with the nonsense of yesteryear's PTO and what a mess it has resulted int.

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    3. "The problem with that approach though was that applicants made narrowing arguments during prosecution, got their claims allowed, and then went and sued alleged infringers with claims relying on the doctrine of equivalents trying to expand the claims they themselves had narrowed during prosecution"

      Ahh, very interesting. I was unaware that the good ol doctrine of "windfall for stuff I didn't invent" was to blame. Meh, color me unsurprised.

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  11. "Ahh, very interesting. I was unaware that the good ol doctrine of 'windfall for stuff I didn't invent' was to blame. Meh, color me unsurprised."

    The Supremes in Festo noted that the DOE is an important safeguard for patentees, and they should have access to it absent compelling reasons to deny them access to it. But as I said, some patentees were over the line. Probably too many for the Fed. Cir.'s comfort thus leading to their (eventually overruled) bright line rule from their first decision in Festo.

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  12. "The Supremes in Festo noted that the DOE is an important safeguard for patentees,"

    I know I know. That's why they keep it around. To me, it's just one more on the huge heap of hold overs from yesteryear for dinosaurs averse to change. One whic happens to be really good in the traditional useful arts, and less so in the new school ones.

    See, the thing is AAA JJ, as this situation and so many others of late demonstrate, people can't be trusted to use these things wisely and justly. It's a money grab now. It isn't about the applicant's contribution to the art anymore, if it ever truly was, at least in many "arts". It's about technicalities of claims, or worse, vaguaries of claims, and how much you can get away with in the court room along with demand letters. If patent law hadn't evolved in such a way then I would be behind the DOE 10000%. And in fact I sort of still am in some very rare cases where it is crystal clear what the contribution to the art was and the failures of the claims to capture that. Unfortunately that is about 1% of the cases where DOE is brought up so far as I've seen. It could be that it is routinely used properly behind closed doors where I never see it. But that doesn't help its public perception.

    Either way when you see someone who "invented" an old school caller ID system for phones in the 80's or early 90's threatening someone making an Iphone app under the DOE (the difference in the claims compared to the activity of the accused was so bad I'm not even sure what their "theory" of infringement was if they even really had one) when their claim isn't even about software sht starts to look ridiculous. And that's not the only case, that's just the one that sticks out the most. Bottom line, people have demonstrated that they cannot be trusted with this power so it needs to go. Or else there needs to be real consequences implemented for frivolous complaints. And by real I do not mean a slap on the wrist fine.

    I'm not going to argue about the DOE all day long, if you want to have another say, go ahead, that will be the end of it.

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    1. If you've ever seen the attempts some competitors of your clients make to design around claims that you personally drafted and got allowed, you would appreciate the DOE. Some of the attempts are very clever, and some are incredibly unclever. It's relatively easy to pick apart a claim and ask what can you change/omit/disguise/etc. to try to avoid a claim. Anticipating every variation and permutation that can arise from that exercise is simply impossible. DOE is absolutely necessary.

      But I understand your point. The height of this foolishness was when a bunch of attorneys convinced BT (British Telecom) that their patent on switching between databases read on internet hyperlinks. I remember reading some of the judges comments and they were to the tune of, "You guys have got to be kidding, right?" but because dismissing the case would have definitely lead to an appeal, and probably a reversal and reinstatement of the cases, they went on.

      Maybe that wasn't the height. Maybe it was the beginning. I can't remember. It was so long ago. And my memory ain't what it used to be.

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