Board finds no inconsistency with relying on Official Notice for a claimed feature while also asserting that this feature isn't supported by Applicant's sparse description

Takeaway: The Examiner denied the Applicant's priority claim to a provisional, for failure to adequately describe a claim limitation. According to the Examiner, some description was present, but not in the context claimed. The Examiner then used Official Notice for this same feature in an obviousness rejection. On appeal, the Applicant argued the "facial inconsistency" of these two positions: "asserting the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature." The Board was not persuaded by the inconsistency argument, and cited to Vas-Cath Inc. v. Mahurkar to explain that "a claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application." (Ex parte Timbadia, PTAB 2013.)

Details:
Ex parte Timbadia
Appeal 2010002877; Appl. No. 10/712,938; Tech. Center 3700
Decided: March 25, 2013

The application was directed to automated test-taking. During prosecution, the Applicant amended to add these limitations:

     delivering a changed state object at the same time that a triggering event occurs on the testing station;
     upon failure of the testing station, the [state objects] ... are used to recreate the examination on the testing station ... and
     wherein the user will not be penalized for the time that questions are not available.
(Emphasis added for limitations at issue.)

In response, the Examiner switched to a different secondary reference in the obviousness rejection (Ashley)of all independent claims. The Examiner relied on this secondary reference for the "at the same time" feature, and took Official Notice of the new "not penalized" feature. At the same time, the Examiner denied the priority claim because the newly added "at the same time" and "not penalized" features were allegedly not present in the provisional. However, Examiner did not reject any claims under written description or enablement.

In an After Final response, the Applicant argued that the Ashley reference was not prior art because the Applicant's provisional did provide an enabling disclosure for the newly claimed features. In support of this argument, the Applicant pointed to to specific passages in the provisional and explained their relevance. The Applicant also traversed the Official Notice as follows:

Applicants cannot fail to note that this portion of the claims so evidently and precisely enabled by the provisional application is also the same portion of the claims for which the Examiner has relied upon official notice. Per MPEP 2144.03, Applicants thus traverse such taking of official notice as improper as lacking sufficient documentary evidence. Citation of a post-dated alleged prior art reference by the Examiner is erroneous not only for the obviousness rejection presented, but also as grounds for taking official notice that the claimed feature is of such notorious character as capable of instant and unquestionable demonstration as to defy dispute. See In re Zurko, 258 F.3d at 1386.

The Applicant appealed. In the Brief, the Applicant specifically traversed the issue of the priority claim. The Applicant explained that the provisional application described using a test state to recover an exam after testing station failure, and this test state includes an elapsed test time that takes into consideration the amount of time that a test is unavailable to the user. Thus, Ashley was not prior art. In the obviousness section of the Brief, the Applicant also argued that Ashley did not teach the "at the same time" limitation. Notably, this section did not discuss the "not penalized" claim limitation or the Examiner's reliance of Official Notice for this feature.

In the Answer, the Examiner maintained the obviousness rejection of all independent claims. The Examiner discussed the denial of priority in the obviousness rejection. The Examiner acknowledged that the "not penalized" claim language was present in the provisional, but noted this was in the context of accounting for transmission latency rather than in the context of a recovery function (as claimed). In a Response to Arguments section, the Examiner noted there were "significant modifications" and "stark differences" between the provisional and the application on appeal. Also, the Applicant had failed to adequately traverse the Official Notice during prosecution, thus admitting that the "not penalized" feature was well-known.

The Applicant filed a Reply Brief which included a section titled "the Examiner's use of Official Notice was properly traversed, is improper and is Squarely Inconsistent with the Office's Contention that Subject Matter at Issue is Not Supported by Applicants'Own Provisional Application." The Applicant argued that the traversal was proper, as follows:

[T]he traversal highlighted the facial inconsistency in the examiner's logic of asserting that the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature.

On appeal, the Board made findings with regard to "Claims 1 and 13 – Written Description Support" since this issue was contested and impacted the obviousness rejection. The Board found that all features recited in claims 1 and 13 were adequately described in the provisional, so that Ashley was not prior art. With regard to the "not penalized feature," the Board found that the Examiner’s interpretation of what the provisional application describes was "unreasonably narrow." The Examiner incorrectly focused on the provisional's teachings about accounting for transmission latency, but a person of ordinary skill reading the document as a whole "would conclude that recreating the test based on the state of the test at the time of a testing station failure would require not penalizing the user for time lost due to this failure."

Since Ashely was not prior art for claims 1 and 13, the Board reversed the obviousness rejection of these claims. However, claim 20 used slightly different language to describe the "initial state object" feature, which the Board found was not adequately described in the provisional. The Board therefore considered the obviousness rejection of claim 20 on the merits, and affirmed.

With regard to the "at the same time" feature, the Board found no error in the Examiner's finding that Kershaw taught this feature. With regard to the "not penalized" feature, the Board found that the Applicant had not properly traversed the taking of Official Notice because it did not "explain why the noticed fact is not considered to be common knowledge or well-known in the art" (citing In re Boon, 439 F.2d 724, 728 (CCPA 1971)).

The Board also commented on the Applicant's inconsistency argument – that the Notice'd feature was completely missing in the reference yet textually supported by Applicant's provisional:

Appellants have not provided persuasive argument as to why the Examiner’s findings are inconsistent. A claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991).

Finally, the Board noted that any alleged inconsistency was resolved by the Board's finding that the subject of the Official Notice ("not penalized" feature) was indeed properly supported in the provisional application.


My two cents: The Applicant's inconsistency argument has intuitive appeal, but is ultimately flawed. The argument goes like this: "Surely the Examiner's characterization of a feature as 'well-known' indicates that very little description is needed, in which case a sparse description of the same feature by the Applicant shouldn't result in a denial of the priority claim." However, this argument is flawed because it confuses enablement and written description.

A reference has only to enable. Since this can take into account the background knowledge of a POSITA, a sparse description may indeed be enough for enablement. On the other hand, the Applicant's spec has to comply with both the enablement and the written description requirement. And written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." (Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (en banc)).

Unfortunately, when you have a sparse description of a particular embodiment that falls within the claim scope, then try to argue that a POSITA can fill in the rest, the case law on written description goes against you:

The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.
Lockwood v. American Airlines, Inc., 107 F. 3d 1565 (Fed. Cir. 1997).

Or, put another way:

A description of one method . . . does not entitle the inventor . . . to claim any and all means for achieving that objective."
LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005).

Board affirms obviousness and refers to Applicant specification for advantages of adding secondary reference

Takeaway: The Applicant appealed an obviousness rejection of claims directed to a process of manufacturing stents. Though the Final Office Action relied on advantages taught by the secondary reference, the Advisory Action also mentioned advantages disclosed in the Applicant's specification. The Appeal Brief argued that these Applicant-known advantages actually showed that the secondary reference was non-analogous art. The Board affirmed the obviousness rejection. Though the Decision mentioned advantages taken from the secondary reference, the Board also appeared to impermissibly rely on the Applicant-known advantages as a reason to combine. (Ex parte Sciver, PTAB 2014.)

Details:

Ex parte Sciver
Appeal 2012011728; Appl. No. 12/748,271; Tech. Center 1700
Decided:  October 31, 2014

The application was directed to systems methods for coating a stent with a drug.

Board finds swear-behind declaration to be insufficient for lack of explanation

Takeaway: The Applicant attempted to remove a reference with a § 1.131 (swear-behind) declaration. The two-page declaration referred to an Appendix A included in the provisional application but did not comment or explain on the Appendix. The Board found that the Applicant had not provided any of the evidence needed to show conception, reduction to practice, or diligence. "[T]here is no explanation of what the document in Appendix A is; whether it purports to establish conception or actual reduction to practice; what diligence, if any, the inventors can show in reducing the invention to practice; and how it discloses the claimed invention." (Ex parte Schmidt, PTAB 2014.)

Details:
Ex parte Schmidt
Appeal 2012005120; Appl. No. 10/156,131; Tech.Center 2600
Original Decision:  May 29, 2014; Rehearing Decision:  Sept. 12, 2014

In response to a prior art rejection in a Non-Final Office Action, the Applicant attempted to remove a reference with this § 1.131 (swear-behind) declaration:

Board ignores qualifier "discrete" and interprets "connected to" to allow indirect connections

Takeaway: In an appeal of claims to a memory controller, the Board gave no weight to the qualifier "discrete," and interpreted "connected to" as allowing indirect connections rather than requiring direct connections. (Ex parte Morrow, PTAB 2008.)

Details:
Ex parte Morrow
Appeal 2007-3972; Appl. No. 10/027,978; Tech. Center 2100
Decided: May 8, 2008

The application on appeal was directed to a memory controller for a computer system. Two of the independent claims on appeal read:

     14. An apparatus, comprising:
     a memory controller; and
     a table walk device connected to the memory controller and externally located from a memory management unit (MMU).

     23. A system, comprising:
     a processor;
     a discrete memory controller adapted to perform a table walk operation and coupled to the processor; and
     a volatile memory device coupled to the discrete memory controller.

Broadest Reasonable Interpretation does not allow broadening from a dictionary definition

Takeaway: In today's post I'll discuss two cases where the Board found that Broadest Reasonable Interpretation does not mean the Examiner can start with a dictionary definition and broaden from there.

In Ex parte Butler, the application was directed to a positioning control system for lithographic printing, and the claim term at issue was "a partial order filter". The claim was rejected as anticipated by a reference (Yuan) teaching a photolithography system. The reference system used a filter and listed notch, low pass, and high pass filters as examples.

Board affirms obviousness when Applicant misunderstands Examiner's combination

Understanding the Examiner's position is key to advancing prosecution. Before appeal, it's best that the Applicant understands what the Examiner is saying, and that the Examiner understands what the Applicant is saying. Certainly a misunderstanding was at the root of the appeal of an obviousness rejection in Ex Parte Sudhardja. Sometimes the Examiner doesn't explain clearly, sometimes the Applicant just doesn't get it, and sometimes both forces are at work. What happened here?

Ex Parte Sudhardja
Appeal 2010-004119; Application No. 11/196,651; Tech. Center 2100
Decided  November 5, 2012

The application on appeal was directed to a "self-repairing" graphics processing unit (GPU) that included redundancy features. The application was a Continuation-In-Part. The parent application described redundant functional units in an integrated circuit; the CIP added GPU-specific details.

Board reminder that Federal Circuit appeal, not PTAB Rehearing, is the appropriate forum to reargue issues already decided by the PTAB

The PTAB Rehearing decision Ex parte Brozell criticized an Applicant for filing a Request for Rehearing in order to argue that the Board had erred on claim construction and on the conclusion of obviousness:

[A] request for rehearing is not an opportunity to express disagreement with a decision. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided.
(Emphasis added.)

Blogs covering AIA Inter Partes Review, Post Grant Review and Covered Business Method Review

My blog covers the A in PTAB – meaning that I discuss cases where the Applicant has appealed an Examiner rejection during prosecution. The T in PTAB stands for Trials, and it looks like these Trials proceedings are big business, because I've found quite a few blogs that cover PTAB activity.

Here's a quick list:

US PTO Litigation Alert
Patents Post Grant
Reexam Link
IPR-PGR
PTAB Trial Blog
IPR Petition Denied
Post Grant AdvocATor

A bit more background for those of you that aren't familiar with PTAB Trials. The jurisdiction of the Board was enlarged significantly by the AIA. The PTAB still handles appeals of Examiner rejections during prosecution  and appeals during ex parte reexamination. But the PTAB now also handles Inter Partes Review, Post Grant Review and Covered Business Method Review.

Inter Partes Review (commonly abbreviated as IPR) is analogous to old inter partes reexamination – though there plenty of differences. Post Grant Review is like Inter Partes Review, but is limited to patents filed under AIA rules and to a 9-month period after issuance. Covered Business Method Review is like Post Grant Review – except that filing date is irrelevant and it is limited to "covered business methods." This link summarizes the differences in chart format.

In the past, I've found a lot to learn from reexamination appeal. Applicants tend to go into more detail in their arguments, as reexamination is an expensive process with higher stakes. This is even more true for IPR and its brethren, so I'll be blogging about IPR, PGR and CBM decisions from time to time, if I see some good stuff.

PTAB affirms anticipation of tourniquet by cable tie since tie is capable of "safe occlusive pressure"

Takeaway: The Applicant appealed a claim to a tourniquet including "the block body and cuff cooperate to provide safe occlusive pressures to both sides of the target digit." The Examiner rejected as anticipated by a cable tie used with telecom cable: the range of pressures exerted by the cable tie  included "safe" pressure, and this capability was enough for anticipation. The Applicant argued that the reference cable tie was made of high-tensile thermoplastic and had a loop tensile strength over 250 pounds. The Applicant entered expert affidavits by two surgeons attesting that this cable tie "was not suitable for use as a digit tourniquet." The Board adopted the Examiner's reasoning and affirmed the rejection.

Details:
Ex parte Warburton
Appeal 2011-011302; Appl. No. 11/222,956; Tech. Center 3700
Decided  January 18, 2013

The application on appeal was directed to a tourniquet for a finger or toe. The application included several independent apparatus claims of differing scope, as well as a method-of-use claim.

Board considers subcomponent of integrated assembly and finds subcomponent is "to be attached to" the final assembled structure

Takeaway: A claim to an aircraft mounting structure recited a "mount portion ...to be attached to a pylon". The Examiner read the mount portion on a pyramid structure that was part of the assembled pylon. The Applicant argued that because the pyramid structure was already part of the pylon, it would no be understood as a component "to be attached to" the pylon. The Examiner explained that "integration (combining multiple into one) is a form of 'attachment'. " The Board agreed with the Examiner. (Ex parte Cloft,  PTAB 2014.)

Details:
Ex parte Cloft
Appeal 2012-005061; Appl. No. 12/016,234; Tech. Center 3600
Decided  June 9, 2014

The application was directed to structures for mounting an aircraft engine. Where prior art arrangements used multiple bolted joints to attach the engine to a pylon structure on the wing, the invention used engine mount beams that were integrally formed with the pylons. 

Federal Circuit decision reminds prosecutors to pay attention to entire chain in claim to priority

The Federal Circuit decision Medtronic Corevalve v Edwards Lifesciences deals with priority claims and underscores the importance of making sure each application in the continuity chain has a proper reference to the entire chain. 

Ryan Alley covered this decision on his Federal Circuit blog. Read Ryan's post here: 
Medtronic Corevalve v. Edwards Lifesciences – Family & Priority Lessons

Ryan's blog is valuable to me because he always offers insight as to how a decision affects patent prosecutors. Here, Ryan suggests that in reviewing the chain of priority claims, we look at the actual specification and any amendments applied, and not rely on Filing Receipts or PAIR data. Ryan also reminds us that a defect can be cured during the application lifetime by a Petition to Accept Delayed Benefit Claim, or by reissue if the defective application has already issued.

Sample of Petitions to request republication

C.F.R. § 1.221 allows an Applicant to correct errors in published applications, by filing a petition that requests republication of specifically identified errors. This week I'll review a small sample of Petition Decisions for a Request for Republication. The interesting issues here are:

• What's "material" ?
• What's a "PTO mistake" ? 

These are important, since only mistakes that are both material and attributable to the PTO can be filed with no fees, under C.F.R.  § 1.221(b); otherwise, the filing is under C.F.R.  § 1.221(a) and a fee is owed. MPEP 1121 indicates that OCR errors are not considered PTO mistakes if caused by poor quality text in an Applicant submission. And the MPEP describes "material mistake" as one "that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent." (MPEP 1130.A).

Today's post will discuss materiality in the context of a Request for Republication.

PTAB says "identifying a number of patients" requires identification of a group but not a specific number

In a post from earlier this year – When does "a" mean "the" – I  discussed the meaning of "A number of" as used in a claim. As I noted in that post, typical English usage would be "THE number of widgets" but because THE has a special meaning in claim language, drafters sometimes rephrase as "A number of widgets".

The earlier post was about two Board decisions that considered whether this phrase was indefinite, since the phrase was amenable to two interpretations. One decision said indefinite, one said not indefinite.

I've found another decision in which the Board came at this phrase from a different angle – claim construction rather than indefiniteness.

PTAB interpretations of "integral" in various mechanical applications

Today's post will take a look at how the Board has interpreted the claim term "integral", and variations thereof, in a few different mechanical applications. In these decisions, the Board has read "integral" to be broader than unitary construction – thus covering parts that are welded together – but not so broad as to cover parts that are held together by friction fitting or that are merely interconnected.

PTAB assumes any verb phrase using "to" signals intended use

Takeaway:
Sometimes Examiners ignore claim language – give it no patentable weight – by characterizing a phrase as "intended use." However, not every verb phrase using "to" signals intended use. In many types of claims – computer-implemented ones in particular – the word "to" denotes the result of an action.

Consider this simple example: searching a document to find a match on a search term. The match is the result of the search. The result is not inherent – not every search produces a match – but neither is the result an intended use of the search.

In today's post, I'll review some cases in which the PTAB ignored verb phrases introduced by the word "to" because the Board concluded that the phrase was intended use.

Analysis:
The Board considered the phrase "to analyze costs" in Ex parte Liebich (PTAB 2013). The claim language at issue was "performing, using a processor, a value chain analysis by evaluating the attributes ... to analyze costs associated with the costed entities." Because no analyzing step was positively recited, the Board found intended use and gave the phrase no patentable weight.

Furthermore, we note that claim 1 merely requires that the “chain analysis” is performed “to analyze cost” by a processor. That is, claim 1 does not positively recite any step of analyzing cost. Instead, we find such “to analyze cost” language merely represents a statement of intended use or purpose (intended result) of the evaluated data which does not limit the claim. Particularly, an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Accordingly, we conclude that claim 1 merely requires ... performing, using a processor, an analysis by evaluating the data.

This issue was dispositive, since the Applicant had admitted that the reference taught data analysis by a processor, which was all that was required by this portion of the claim.

The application in Ex parte Teichman (PTAB 2013) involved power control. The method claim recited the step “controlling a grid-side converter . . . to regulate the voltage and frequency of the grid via scheduling power flow to a compensating circuit.”

We note that the portion of the limitation – “to regulate the voltage and frequency of the grid” – argued by Appellant fails to distinguish the claimed invention from the prior art either structurally or functionally. Specifically, the recited feature essentially consists of a statement of intended use or purpose for the controlling functionality. Such statements of intended purpose “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).

The phrase at issue in Ex parte Kreichbaum (PTAB 2013) was "transmitting the inputs to a second body part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters."  Once again relying on Boehringer, the Board construed the phrase that began with "to enable" as "represent[ing] the intended use of the inputs which provide tactile feedback." (Emphasis added.) As a result, the Board concluded that "claim 1 merely requires transmitting data to a second body part of the user that is capable of enabling the user to identify the different alphanumeric characters or symbols input onto the pressure-sensitive area of the entry device."

The application in Ex parte Kim (PTAB 2013) dealt with a power control system. The portion of the claim at issue read:

a control system . . .
     to calculate a decreased residual amount of the battery based on a difference between the determined residual amount and a previous residual amount, and
     to control the power supply to the system part based on comparing the calculated decreased residual amount and the residual amount to a predetermined value,

The Board treated the limitations "to calculate ..." and "to control ..." as intended use, giving them no patentable weight because they were not "positively recited as actually occurring."

The application in Ex parte Khayrallah was directed to a multiple antenna receiver. The Board considered a method claim having the limitation "selectively assigning an first one of the receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal." The Once again citing Boehringer, the Board found that the "to receive" phrase was intended use. As such, it did not limit the claim "because it merely defines a context in which the invention operates."

To bolster its conclusion, the Board noted the presence of a separate receiving step in the claim:
Additionally, we note further that the claim positively recites a “receiving” step where two or more receive antennas receive the entire wideband signal including all of the multiple sub-signals prior to a first one of the receive antennas being selectively assigned to receive a sub-signal. Thus, we give “selectively assigning a first one of said receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal” its broadest reasonable interpretation as merely assigning a first antenna that is capable of receiving a signal at a first discrete frequency component of the wideband signal.

In Ex parte Lippincott a video decoding system that included "a plurality of processors, each ...  arranged to execute the certain instructions stored in the instruction memory to decode a frame of the video information"and "a control processor to determine a subset of instructions needed to process a
particular frame of the video information from the type information."

We find Appellant’s argument that the Gove reference fails to teach “any kind of decoding” and “determining a subset of instructions” to be unpersuasive. App. Br. 11. Claim 24 merely requires memory for storing instructions for decoding and a processor for executing instructions. It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition.”); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

My two cents: Among the cases reviewed today, there's no question in my mind that the following phrases deserve patentable weight, since they express results not intention

• controlling a grid-side converter . . . to regulate the voltage
• evaluating the attributes ... to analyze costs associated with the costed entities
• selectively assigning one of the receive antennas to receive ...

For this one, I'm inclined to rewrite to have a separate identification step that is tied to the transmitted inputs.

• transmitting the inputs to a second part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters

The remaining cases are different in that the "to X" phrases express an action rather than a result. 

• a control system . . . to calculate [an amount] ... and to control the power supply
• a control processor to determine a subset of the instructions needed to process a particular frame.

In each case, the Examiner (and the Board) viewed the phrasing "a [structure] to [action]" as intended use. So I would ask the Examiner what format he wants to see order to give it patentable weight ... operable to calculate ... that calculates?

New resource for searching and analyzing PTAB decisions

There's a great new resource available for practitioners interested in PTAB decisions: the Patent Board Ferret.

The Ferret includes both search and analysis tools. On the search side, you can search not only by text in the decision, but also by rejection type, disposition, art unit, Examiner, and decision date. On the analysis side, you can generate charts which answer questions like:
do some judge panels introduce new 101 rejections more than others?
do some Examiners have a high reversal rate for section 112?
do cases with oral hearings have a higher rate of reversal?

While the Ferret hasn't processed every single one of the decisions on the PTAB's official site, it does include almost 13000 decisions, and continues to grow. So the Ferret is now my default search engine for PTAB decisions.

I do still use ptab.us to quickly look at recent decisions of interest to me. ptab.us shows me all decisions issued on a particular day, along with Examiner name, Correspondent Name (i.e. law firm or sometimes corporation), issues decided, and disposition. ptab.us has some analysis features too: it can generate spreadsheets for decisions by judge, law firm, tech center, etc.

Federal Circuit rules on indefiniteness standard and on "adapted to"

The recent Federal Circuit decision In re Packard looked at the standard for indefiniteness used by the PTO. During prosecution, the PTO applies the "two or more plausible interpretations" standard, per the precedential Board decision Ex parte Miyazaki. The standard applied by the courts for an issued patent is instead "insolubly ambiguous." The court in In re Packard declined to reach the larger question of whether the PTO can use this different standard, and decided the narrower question of whether the indefiniteness rejection was proper. The court affirmed the rejection because the Applicant (pro se inventor) didn't substantively respond to the indefiniteness rejection.

In re Giannelli from earlier this year was also a review of a PTAB decision, this one involving claim construction of "adapted to." The PTAB affirmed an obviousness rejection of a claim to an exercise machine, taking the position that the prior art chest press was "capable of" performing the function recited in the claim. The Federal Circuit reversed, after finding that in this particular case, "adapted to" required more than mere capability. The court relied on the specification's disclosure of embodiments that were specifically designed for rowing.

Ryan Alley's blog has thoughtful coverage of both decisions:
   In re Packard – Claim Drafting and Prosecution Lessons
   In re Giannelli – Claim Drafting and Prosecution Lessons

Ryan's blog is my favorite Federal Circuit blog because it offers many practical lessons for prosecutors. 

When does "a" mean "the"?

Claims use "a" and "the" in ways that are at odds with plain English usage, which can lead to some strange results.

Let's say I'm describing a text processing algorithm which counts how many times a pattern is found. In plain English, it's perfectly natural to express this as "THE number of occurrences". However, claim drafting reserves "the" for previously-introduced elements. So a claim would probably use "a" instead, to read "A number of occurrences".

Note that in plain English this construction has a completely different meaning: "a number of" often means "some" or "several" (e.g.,"a number of widgets were defective"). Even so, usually no one makes an issue of using "A" to mean "THE" even though it's counter to the plain English meaning. Our brains have been trained to apply a sort of patent filter when reading claims, and we intuitively understand that the drafter really meant "THE number of occurrences even though the claim reads "A number of occurrences."

But what if you don't assume the drafter was using patentese rather than plain English? What if you instead take the position that "a number of" has two different meanings. Then isn't the claim indefinite?

In the recent decision Ex parte Whitney (PTAB 2013), the Board said Yes, it is indefinite. The claim language at issue was: "comparing a number of occurrences of a text pattern in the collection of text at one moment in time with numbers of occurrences of the text pattern in the collection of text at other moments in time.” The Board explained as follows:

     Applicant's arguments ... focus on the failure of the prior art to disclose or suggest comparing an actual numerical count of occurrences, i.e., “a number of occurrences,” of a text pattern in a collection of text at one moment in time with the actual numerical count of occurrences of the text pattern in the collection of text at other moments in time. However, it is equally proper to interpret the phrase, “a number of occurrences,” as the Examiner does, to refer to an indefinite group of occurrences of a text pattern, e.g., some occurrences or several occurrences of the text pattern that are compared at different points in time based on some unspecified criteria.
     Because the claim language is susceptible to two equally reasonable interpretations, the claim language is ambiguous, and, thus, indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). Therefore, we will enter a new ground of rejection of claims 1-50, 53, and 54 as indefinite under 35 U.S.C. § 112, second paragraph.

The Examiner did not raise this issue. And because the claim was indefinite, the Board refused to decide on the prior art rejection. (In re Steele, 305 F.2d 859, 862 (CCPA 1962)(A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.)

A few months earlier, the Board reached the opposite result in Ex parte Qu (PTAB 2013). The limitation at issue read "wherein an arithmetic sum or difference of twice a number of stator teeth and a number of the stator poles equals a number of rotor poles." The Examiner asserted that it was unclear whether "a number of" ... "intended to refer to the total number of teeth or poles or some subset thereof.” The Examiner then interpreted the phrase to mean "subset of teeth" in the prior art rejection. The Examiner explained as follows: 

[T]he devices disclosed in Qu satisfy equation (1) because any number of rotor poles, stator poles, and stator teeth can meet the claimed limitation since ‘a number’ can be any integer, up to the maximum number of poles/teeth disclosed by Qu.

The Board found the claim was not indefinite in view of the specification:

In determining whether a particular claim is definite, the claim’s language must be analyzed in light of the content of the particular application, the prior art’s teaching, and the interpretation that would be given to the claim’s language by a person of ordinary skill in the art at the time the invention was made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009).

The Board found that an equation in the specification made clear that "A number of" meant "THE number of":

The number of the rotor poles, the number stator poles and the stator teeth are configured to satisfy: 2 * S_teeth ± S_pole = R_pole, wherein STEETH refers to the number of stator teeth 30, SPOLE refers to the number of stator poles and RPOLE refers to the number of rotor poles.

Using this construction, the Board then reversed the prior art rejection.

I think these two decisions are outliers. In the first place, I think most Examiners use the same "patentese" rules of antecedent basis that claim drafters do. Most don't reject as indefinite, and most don't take the position that "A number of" means "SOME of". So the Board probably doesn't see this issue raised by the parties very often. I also looked for other decisions where the Board raised the issue, and didn't see any.

But these decisions do highlight how very different claim language is from plain English.

Is it circular reasoning when an obviousness rejection says the reason for adding a feature is to get that feature?

Takeaway: Sometimes the Examiner asserts that the reason to add a feature from a secondary reference is to obtain that very same feature. Is this circular reasoning and thus an improper rationale for obviousness? Today's post highlights a few cases where the PTAB said this logic was insufficient to support a conclusion of obviousness.

Discussion: In many obviousness rejections, the Examiner's rationale for combining amounts to "add feature X from reference B to reference A in order to get feature X." Yet obtaining the added feature X is only a reason to combine if having X provides an undisputed advantage, right? Otherwise, it's If the mere presence of X doesn't provide such an advantage, then the Examiner still hasn't shown why a POSITA would combine A and B.

In today's post, I'll discuss a few cases where the Examiner used this sort of reasoning and the Board reversed. Now, I'm not saying that this argument is a winner. In many of the decisions that I review, I end up convinced that X does convey an undisputed advantage, and thus does serve as a proper reason to combine. But if you have a case where you think "add X to get X" doesn't adequately motivate a POSITA to combine the references, you may find the Board's reasoning in these three decisions to be helpful in framing your argument.

The claim in Ex parte Banna (PTAB 2014) involved a multi-stage receiver including a delay controller. The claim limitation at issue required the controller to "select the delay value for the delay block by calculating a processing delay associated with the generation of the one or more processing parameters." The Applicant appealed an obviousness rejection that used a single reference. The Examiner acknowledged that the single reference (Sendyk) did not teach calculating a processing delay, but asserted that it would have been obvious “to modify the invention of Sendyk, and to obtain the time difference between the two delay control signals to have the delay value.” (Emphasis added.) The Applicant argued that “the Examiner has failed to identify any valid reason to modify Sendyk.” (Emphasis in original.)

The Board agreed that the Examiner did not provide a reason with rational underpinning, and reversed the rejection. The Board cited In re Chaganti, 2014, WL 274514, *4 (Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been obvious to one of ordinary skill.’ Such circular reasoning is not sufficient–more is needed to sustain an obviousness rejection.")

In Ex parte Foxenland (PTAB 2013), the claim at issue related to ordering a call list of party identifiers (i.e., phone numbers) based on call frequency, where two or more communication identifiers correspond to a single party identifier. More specifically, the claim required that "the call frequency information for the single party identifier includes the call activity related to each of the at least two of the plurality of communication identifiers." The Examiner relied on Kreitzer's arrangement of a call list in order of call frequency based on communication identifiers, and Levy's use of multiple phone numbers associated with a single party. As a reason for incorporating Levy into Kreitzer, the Examiner offered "for the purpose of managing a plurality of communication identifiers that correspond to a single party identifier by storing these data in the communication terminal."

The Board reversed the obviousness rejection. The Board found that the Examiner had concluded obviousness without giving a "specific reason why the ordinary artisan would have had any incentive to incorporate multiple different numbers associated with a single individual as taught by Levy into the hotlist of Kreitzer." (Emphasis added.) Thus, although the Examiner had shown that each claimed feature was known, he did not provide a sufficient reason for combining them. 

The reexamination appeal LG Electronics v Whirpool (PTAB 2013) involved ice dispensing in a bottom mount refrigerator, which purportedly "presented a unique challenge because the freezer compartment is located lower than desired for an ice dispensing location." The Board framed the obviousness issue as whether the Examiner provided a sufficient reason to "incorporate both an ice dispenser and a separate door in the same ice compartment" as required by the claim. 

The Examiner combined a primary reference showing a door providing access into a refrigerator ice making/storage compartment with a secondary reference showing a refrigerator ice dispenser. The rejection used the "predictable result" rationale, asserting that "such a combination would apply known features, such as an ice compartment door, to achieve a predictable result of providing a user access to the ice in the ice compartment." The Board reversed. The Board assumed that "such a combination would apply known features to achieve a predictable result" – but this is true only after the decision is made to combine these features. The rejection failed because the Examiner did not explain "why one would have chosen to combine both a prior art access door and a dispenser in a single refrigerator in the first place." (Emphasis in original.)

Board finds that "band of frequencies" does not require range and reads on single clock frequency

Takeaway: The Applicant appealed claims to a memory controller using two frequency bands to communicate with a memory device. The Examiner rejected as anticipated by a reference that taught the use of two clock frequencies (X and X/2). The Applicant appealed and argued that "band of frequencies" implies a range, and thus does not read on a single frequency. The Board affirmed the rejection because the Applicant's specification discussed an embodiment using a "zero band of frequencies", which the Board interpreted as a single frequency.

Details:

Ex parte Alon
Appeal 2010008694; Appl. No. 11/021,514; Tech. Center 2600
Decided: Feb. 19, 2013

The application was directed to a memory controller with a simultaneous bi-directional link to the memory. A representative claim on appeal read:

     1. A memory system, comprising:
     a controller;
     a memory device; and
     a set of signal lines, coupled to the controller and the memory device,
     wherein, on each of the signal lines, the controller is to communicate to the memory device using a first band of frequencies while the memory device is communicating to the controller using a second band of frequencies, and
     wherein the controller is configured to dynamically adjust the first band of frequencies based on a predetermined data rate from the controller to the memory device
and to dynamically adjust the second band of frequencies based on a predetermined data rate from the memory device to the controller.

The Examiner asserted that Koroodi's teaching of a clock rate of X Mhz and a clock rate of X/2 MHz read on the "first band of frequencies" and "second band of frequencies". The Applicant appealed and argued that reading "band of frequencies" on a single clock frequency was an unreasonably broad interpretation of "band".

The Applicant made several points related to Broadest Reasonable Interpretation. According to the Applicant, "the clock rate of a controller is a distinct technical concept from frequency bands for communication, such as for communication from a controller to a memory device or a memory device to a controller", and the Examiner violated the BRI requirement by equating these "distinct concepts".

Moreover, the Applicant argued, "band of frequencies" means a range of frequencies, and does not read on a single frequency as asserted by the Examiner. As support for this argument, the Applicant referred to Fig. 3's depiction of "first band of frequencies 364" as encompassing a range of frequencies 368. According the Applicant, this would teach a person of ordinary skill in the art (POSITA) that "band of frequencies" included multiple frequencies. The Applicant then referenced other uses of the term "band" in the art, asserting that "a band-pass filter passes a specified range of frequencies while filtering out frequencies outside the specified range." According to the Applicant, this shows that a POSITA would understand "band" as "range", even without consulting the specification.

Neither party disputed that Kuroodi taught a single clock frequency rather than a range. Thus, the Applicant concluded that under a reasonable interpretation, Kuroodi did not teach the claimed "range of frequencies."

In the Answer, the Examiner responded to the Appeal Brief arguments by stating that "the Examiner is not limited to Applicant's definition, which is not specifically set forth in the claims. In re Tanaka et al. 193 USPQ 139, (CCPA) 1977.

The Board found the Examiner's interpretation to be reasonable, and affirmed the anticipation rejection. After explicitly adopting the Examiner's finding and reasoning, and concurring with the Examiner's conclusions, the Board offered this additional explanation.

The Board first indicated that the Examiner's requirement for a definition to be incorporated into the claims was improper. The Board then noted that the claim term should be afforded its plain meaning since the Applicant's specification did not provide a definition for the term.

The Board was not persuaded by the Applicant's first BRI argument – that clock rate and communication frequency – are different, and instead concluded that a clock rate may be expressed as a frequency.

As for the second BRI argument  – that "band" did not encompass a single frequency – the Board found that the specification taught to the contrary. More specifically,  para. 044 of the Applicant's specification "provides an example in which there is a 'zero band of frequencies' ". ( "The memory system 200 may have a mode of operation in which the control logic 210 allocates a substantially zero band of frequencies to the first band of frequencies 368 (FIG. 3) and a maximum band of frequencies to the second band of frequencies 370 (FIG. 3) ..."

The Applicant made other arguments as well, but the Board was not persuaded by these either, and affirmed the anticipation rejection.

My two cents: The Board interpreted "zero band" as a single frequency. But it seems to me that the discussion of "zero band" in Applicant's spec was really saying that one embodiment allocated NO frequencies to one direction, and all of the frequencies to the other. In fact, I'd say this is how a POSITA would understand the spec as written.

Perhaps if the drafter had used this more straightforward phrasing, instead of "zero band", the Board would have ruled differently. This embodiment was captured in an original dependent claim. Perhaps the drafter was taught to avoid claiming a negative ("allocate no frequencies")? Could the Applicant have covered this embodiment by simply claiming "allocate all of the frequency band" to the other direction?

Board finds use of "only a first wire set and a second wire set" trumps transition "comprising" to exclude other wire sets

Takeaway: The Examiner asserted that a claim reciting "only a first wire set and a second wire set" read on a prior art structure having three wire sets. The Examiner explained that the third wire set was not excluded because the claim used the transition "comprising." The Board found this construction unreasonable because the use of "only" inside the body of the claim limited the claim to two wire sets. The Board cited two Federal Circuit decisions in support of its reasoning, In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009) and Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279 (Fed. Cir. 1986).

Details:

Ex parte King
Appeal 2011009265; Serial No. 11/317,551;  Tech. Center 3700
Decided  August 15, 2013

The application on appeal was directed to an apparatus for sectioning a plastic drum container, often used for shipping liquids. A representative claim on appeal read:

     1. A drum sectioner comprising:
     only a first wire set and a second wire set, wherein the first wire set includes at least one longitudinal wire and the second wire set includes only a first lateral wire and a second lateral wire, the first and second lateral wires and the at least one longitudinal wire cooperating with each other to support a
drum; and
     at least one power supply supplying electrical current through the at least one longitudinal wire,
     the first lateral wire and the second lateral wire to section the drum in multiple pieces.

The Applicant appealed an anticipation rejection of the above claim. The Applicant argued that the Wilgus reference disclosed three sets of wires, where the claim recited "only a first and second wire set." The Applicant also argued Wilgus disclosed more than two lateral wires, where the claim recited "second wire set includes only a first lateral wire and and second lateral wire".

In the Answer, the Examiner acknowledged that Wilgus disclosed three wires but asserted that the use of "comprising" did not exclude additional structures. Therefore, according to the Examiner, "the wire grid formed by frames 10 and 11 of Wilgus reads on the limitations of claim 1."

The Applicant did not file a Reply Brief.

The Board found that the Examiner had misconstrued the transitional phrase "comprising", and as a result, improperly ignored the term "only."

In this case, the first use of the word “only” applies to the first and second wire sets, and to the first and second lateral wires of the second wire set, and elements outside of those clauses are not limited. Thus, the Examiner has erred by finding that third wire set (attached to the frame 12) is not excluded from the claimed invention, and additional wires from the first and second lateral wires are not excluded from the second wire set. 
(Emphasis added.)

The Board cited two cases to explain its reasoning. The first case relied on by the Board was In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009). The Federal Circuit in Skvorecz held that the Examiner was unreasonable in interpreting ‘comprising’ to allow some wire legs without offsets, despite limitations that "each wire leg" has an offset. The Board also relied on Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986), which discussed construction of "consisting of" as used in the body of a claim. Mannesmann held that when a limiting term “appears in [a] clause [of the body of a claim, rather than immediately following the] preamble[, it] limits only the element set forth in [that] clause; other elements are not excluded from the claim as a whole.”

My two cents: In my experience, Examiners often use the presence of the transition "comprising" as an excuse to ignore other limiting qualifiers within the claim. If you encounter this, try using the same reasoning as the Board did here to show the Examiner his error. 

Means Plus Function and Patent-Eligible Subject Matter: Conflicting Opinions at the PTAB

Posted by: Adam Ellsworth

The MPEP contains a very specific rule at section 2181(II)(B) directed to the interpretation of means-plus-function claims to determine if the claim is directed to patent-eligible subject matter. This section states that means-plus-function limitations should not be interpreted as including non-structural (e.g. software only) embodiments. This rule appears to be an exception, or a carve-out, of the general rule that if a claim covers both statutory and non-statutory embodiments under the broadest reasonable interpretation, the claim is directed to non-statutory subject matter. (See MPEP 2106(I)).

Below are two cases decided by the PTAB that were each faced with means-plus-function claims, and each applied a different rule to arrive at opposite conclusions.

Ex parte Walker

In Ex parte Walker, Appeal No. 2010-012277 (Decided June 14, 2013), the claim-in-question was as follows:

44. A computer-implemented apparatus in a server for inserting a content into a content stream for rendering on a mobile user device, the apparatus comprising:
first means for generating an annotation parameter having a content identifier and an insertion point indicator;
second means for inserting the annotation parameter into the content stream; and
third means for transmitting to the mobile user device the content to be inserted at the mobile user device and being associated with the annotation parameter, before transmitting the content stream to the mobile user device.

Regarding the terms "server" and "mobile user device" in the preamble, the Board did not address these terms in detail, and instead stated only: "We are not persuaded of error." Regarding the "means-plus-function" limitations in claim 44, the Board cited MPEP 2106(I) which states that claims covering both statutory and non-statutory embodiments are directed to non-statutory subject matter.  The Board also stated that the "means" could be wholly embodied in software, and the Board sustained the rejection of the claims under 35 U.S.C. 101. Ultimately, the Board affirmed all the rejections under 35 U.S.C. 101, and affirmed only some of the rejections under 35 U.S.C. 103(a).

Ex parte Hillis

On the other hand, in Ex parte Hillis, Appeal No. 2010-007389 (Decided June 21, 2013), the Board arrived at the opposite result regarding the patent-eligibility of claims including means-plus-function language. In Hillis, the claim-in-question was as follows:

17. A system comprising:
means for determining an organization of at least one content of at least one spatial data storage system; and
means for defining a schedule of content transmission in response to the organization of the at least one content of the at least one spatial data storage system, the schedule expressly identifying the content by one or more times.

In each case, the claim-in-question included means-plus-function limitations having corresponding physical structures described in the specification. However, in Hillis, the Board cited the Federal Register at 76 Fed. Reg. 7168 (Feb. 9, 2011), which corresponds to MPEP 2181(II)(B). This section states, in a relevant part:

"Often the supporting disclosure for a computer-implemented invention discusses the implementation of the functionality of the invention through hardware, software, or a combination of both. In this situation, a question can arise as to which mode of implementation supports the means-plus-function limitation. The language of 35 U.S.C. 112, sixth paragraph requires that the recited “means” for performing the specified function shall be construed to cover the corresponding “structure or material” described in the specification and equivalents thereof. Therefore, by choosing to use a means-plus-function limitation and invoke 35 U.S.C. 112, sixth paragraph, applicant limits that claim limitation to the disclosed structure, i.e., implementation by hardware or the combination of hardware and software, and equivalents thereof. Therefore, the examiner should not construe the limitation as covering pure software implementation."

The Board stated that, according to the rules set forth in the Federal Register, the means-plus-function limitations should not be construed to encompass software embodiments. The Board held that the claims-in-question were directed to patent-eligible subject matter and reversed the rejections under 35 U.S.C. 101, although the Board upheld the Examiner's prior art rejections of the claims under 35 U.S.C. 102.

My two cents:

I think the panel in Hillis got it right here. While the panel in Walker applied a general rule of claim construction, MPEP 2181(II)(B) carves out a specific exception in the case of means-plus-function language. Examiners still apply the "broadest reasonable interpretation," but it is not reasonable to interpret specification-supported means-plus-function limitations as patent-ineligible subject matter, since, by definition, these limitations are directed to "structures" and "materials" described in the specification.

Ideally, this type of rejection would be handled prior to appeal by citing MPEP 2181(II)(B) to the Examiner, because the explicit language in the MPEP is more persuasive to an Examiner, for whom the MPEP is their guide for examining applications, than for a PTAB panel. The PTAB is more likely to cite Federal Circuit or Supreme Court precedent rather than the MPEP, and may disregard the Federal Register or MPEP, as the panel did in Ex parte Walker.

There's an interesting prologue in Walker: the Examiner contacted the Appellant after issuance of the Board's decision, and the Appellant agreed to cancel the claims for which the Board upheld rejections under 35 U.S.C. 103(a). For the remaining claims, including claim 44, above, the Examiner issued a Notice of Allowance, without substantial amendments to the claim, effectively withdrawing the rejection under 35 U.S.C. 101 after it was upheld by the Board. 

Board says newly cited reference is not a new ground of rejection since it's in the priority chain of previously used reference

Takeaway: The Applicant appealed an obviousness rejection based on three references, and argued that the primary reference Huang did not teach an element as asserted by the Examiner. The Examiner's Answer "further submitted" another reference, Dresti, "to clarify any doubt as to the scope of [the primary reference's] disclosure." The Answer noted that Dresti was in the priority chain of Huang. The Applicant filed a Reply Brief, arguing that the introduction of Dresti on reference for the first time in the Answer was improper, but not substantively addressing the teachings of Dresti. The Board affirmed the rejection and noted in passing that "Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection."

Details:

Ex parte Hardacker
Appeal 2012007118; Appl. No. 11/970,8581; Tech. Center 2400
Decided:  September 30, 2013

The application on appeal was directed to a system including a TV remote control. One of the limitations at issue read: "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element."

The Examiner rejected the independent claims as obvious over a combination of three references: Huang, Woolgar, and Day.

On appeal, the Applicant argued that Huang did not disclose the "single manipulation" element highlighted above. More specifically, the Applicant argued that Huang taught a single keypress controlling a single component, rather than “controlling two separate components with a single key press.”


The Answer included a rebuttal with quotes to several specific sentences of Huang that allegedly disclosed a single keypress controlling multiple components. After quoting these teachings in Huang, the Answer relied on another reference, Dresti:

     Furthermore, the Examiner submits the teachings of Dresti et al. (US 2003/0103088 A1 "Dresti") for which Huang is a continuation-in-part (related US Application 10/288,727). Dresti details the "home theater" and "macro" functions of Huang by disclosing that ... [quote omitted].
     It is the Examiner's position that Huang's disclosure of "home theater" and "macro" functions "grouped under a single designator" sufficiently addresses the disputed limitations of Claim 1. However, to clarify any doubt as to the scope of Huang's disclosure, the Examiner further submits the teachings of Dresti to provide explicit evidence that Huang's macro functions would read on "at least one mode element on the remote control, the remote control sending at least one command to the TV and at least one command to the component in response to a single manipulation of the mode element. .." (as summarized above). Therefore, even as narrowly argued by Appellant, the Examiner submits that the Huang's concepts of "home theater" and "macro" functions address the disputed limitation of Claim 1.

In a Reply Brief, the Applicant argued that the Examiner's reliance on Dresti was improper:

     [T]he Examiner discusses a new reference - Dresti. Appellant notes that the discussion of Dresti may only be found in the rebuttal section of the Answer. The use of this new reference has not heretofore been made, nor does it form part of the formal rejections that are the subject of this appeal. To the extent that the conferees are relying on the stated grounds of rejection, the discussion related to the newly-discovered teachings is irrelevant and has not been seasonably presented. To the extent that the conferees are trying to back into a new ground of rejection without saying so, a new ground of rejection in an Examiner's Answer is not permitted without the approval of the Technology Center Director, MPEP 1207.03.
     Accordingly, the rebuttal section either contains a citation to and discussion of a reference not heretofore relied on, and consequently is irrelevant to the issues being appealed, or it is an attempt to cloak a new rejection under the guise of purported teachings of a reference slipped in only during the rebuttal stage of an Answer, and consequently is illegitimate under the rules. In either case, the rejections merit reversal.

The Board affirmed, finding that "Huang as further described in Dresti" would have "at least suggested" the limitation at issue:

     Huang describes controlling multiple appliances in a “home theater” or “room” mode, as well as user programming of remote control keys, assigning appliances to various remote control modes, creating macros, and assigning related variable functions to a single designator. Further, as explained by the Examiner (Ans. 23), it is known in the prior art to use macros to control multiple appliances using a sequence of commands by pressing a single button, as demonstrated by Dresti. Thus, we conclude, as the Examiner does, that Huang (as further described in Dresti) would have at least suggested controlling multiple components using a single remote control button press.

The Board also quickly dismissed the Applicant's argument that Dresti was a new reference that formed part of a new ground of rejection.

Dresti demonstrates that the control of multiple components using the press of a single button is known in the art. Further, Huang is a continuation-in-part of Dresti, and as such, is not a newly cited reference or a new basis for rejection.

My two cents: The Board got this one wrong – reliance on Dresti should have been a new ground of rejection – but the Applicant didn't handle it properly.

The standard for determining whether a rejection is new is whether appellant has had before the PTO "a fair opportunity to react to the thrust of the rejection." In re Jung, 637 F.3d 1356, 1365 (Fed.Cir.2011), quoting In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). The way I see it, the Examiner's Answer changed the thrust of the rejection by newly relying on Destri. The Applicant wasn't aware during prosecution that the Examiner was relying on additional teachings in Destri, and thus didn't have an opportunity to rebut these findings. The Board seems to think that the family relationship between the actually-relied-upon reference (Huang) and the newly-relied-upon reference (Destri) meant that the Applicant was already on notice. I just don't see what Destri's presence in Huang's chain of priority has to do with notice.

The Applicant noted in the Reply Brief the introduction of Destri in the Answer, and argued there that it was improper and that the Board should therefore ignore Destri. However, the correct procedure for Applicant to challenge a new ground not designated as such is to file a Petition under § 1.181. (True under the old appeal rules and under the new ones effective Jan. 2012, the difference being that now the Petition tolls the time period for filing a Reply Brief.)

Board decisions involving the Wayback Machine to show status as prior art (Part II)

In my last post (here), I discussed Examiner usage of an archived web page as a reference, and noted that the Board generally finds this usage acceptable. That post also illustrated a few unsuccessful arguments against this use of archived web pages in a rejection.

Today's post deals with the relationship between the actual reference, as identified by the Examiner, and the archive pages produced by the Examiner. In today's cases, the Board focused on corroboration between the archive pages and the asserted reference -- in other words, did the evidence show that the pages from the archive (dated before the critical date) actually correspond to the reference identified in the rejection (dated after the critical date). The Board upheld prior art status only when the archive pages in the record were identifiable as earlier versions of the reference page.


In Ex parte Benveniste, the Board reversed because the Examiner had not shown corroboration between the web page retrieved during examination and the archived version. During prosecution, the reference was referred to as "http://www.motivators.com/Promotional-Custom-SafetyConeStressball-6143.html#Tab12." The List of References Cited listed two non-patent documents:

• "Internet Wayback Machine" [online] Retrieved on 2012-03-13 [during examination]. Retrieved From: http://web.archive.org/web/20050430223104/http://www.motivators.com/6143-promotional-item.html
• "Motivators Promotional Products" [online] retrieved on 2012-03-13 [during examination]. Retrieved from http://www.motivators.com/Promotional-Custom-ConstructionConeStressReliever-6143.html.   Tab12.

On appeal, the Applicant argued public dissemination. ("The Examiner has not shown that a person in the field of emergency repair plugs for boat hulls would have come across the cited reference prior to the critical date.") The Applicant acknowledged the Examiner's reliance on the Wayback Machine (rather than the current Motivators page) to show prior art status, but noted that "Appellants have not been successful at accessing the web page address provide by the Examiner."

The Board reversed on the basis of a lack of corroboration between the web page retrieved during examination and the web page retrieved via the Wayback Machine. The Board explained:

The page cited to by the Examiner in the Final Office action currently redirects to: http://www.motivators.com/Promotional-Custom-ConstructionConeStressReliever-6143.html. The Examiner cites http://web.archive.org/web/20050430223104/http://www.motivators.com/6143-promotional-item.html as evidence of the effective date of the www.motivators.com page entered into the file wrapper Mar. 23, 2012. There is nothing corroborating the page copied by the Examiner with the date of the page provided by the Wayback Machine.
(Emphasis Added.)

The Board found that without such corroboration, the Examiner had not shown that the Motivator reference was prior art.


The Applicant in Ex parte Aguilera tried to use date information in the footer of the archive print out to show a lack of corroboration, but the Board found the Applicant had misunderstood the date. During prosecution, the reference was first identified in the Office Action as "Minwen Ji, 'Instant Snapshots in a Federated Array of Bricks,' Internet Systems and Storage Laboratory, HP Lab, Palo Alto, January 28, 2005." The Applicant traversed, noting that Ji itself referred to the date as an "internal accession date," and while Ji indicated that the publication was "approved for external publication," Ji did not give a publication date.

The next Office Action updated the list of References Cited to include "Internet Archive Wayback Machine April 20, 2005" and included 2 pages from the Wayback Machine. The Response to Arguments section then explained that the Wayback Machine showed that the reference was available on the HP Technical Reports website in Feb. 2005 (before the critical date).

The Applicant filed an appeal and repeated earlier arguments. Notably, the Appeal Brief did not address the Wayback Machine evidence.

The rejection in the Examiner's Answer once again identified the reference using a Jan. 2005 date, but the Response to Arguments section "reiterated" that "the HP website and the Internet Archive Wayback Machine both provide evidence that Ji's  reference was available to the public during the year of 2005." The Answer also included a page from the Wayback Machine, listing bibilographic information and an abstract for the Ji publication. The footer on this page identified the source (a Wayback Machine URL) and also a current date (2009).

Finally, the Answer also included a "HP Technical Reports" page showing a list of technical reports, including "HPL-2005-15 - Instant Snapshots in a Federated Array of Bricks ; Ji, Minwen." According to the Examiner, the presence of "2005" in the document name  indicated that "Ji's reference was available to the public as shown by the HP website in 2005." The Examiner further asserted that the Technical Reports page was obtained using the link http://www.hpl.hp.com/techreports/2005, and the presence of "2005" in the URL was a further indication of the prior art status of the Ji publication. 


The Applicant filed a Reply Brief addressing both the Wayback Machine evidence and the HP Technical Reports page. According to the Applicant, the current date (2009) on the Wayback Machine print-out "indicates the publication date of the version being shown". Finally, the Applicant argued that the presence of the year 2005 in a URL does not show the reference was publically available in 2005, but showed only that certain references that available at the time of examination had a "written date" of 2005.

The Board found that the Examiner's use of the Wayback Machine was enough evidence that the Ji reference was prior art:

We find the Appellants’ arguments unpersuasive regarding the Wayback Machine evidence as one of ordinary skill in the art would understand that the date highlighted by Appellants in the bottom right hand corner, i.e., 12/22/2009, merely indicates a date of printing a hardcopy, not the date of publication. Furthermore, the Archive evidence presented by the Examiner clearly shows dates as early as 2005.

In Ex parte Rowse, the Board found that the URL of the archived pages identified those pages as earlier version of the reference. The rejection identified the web page reference as "Xactware.com, retrieved from the Internet Archive Wayback Machine <archive.com>, 6/29/1998." The Applicant traversed the rejection by arguing that "the Internet Archive is not prior art" because "the 'Internet Archive Wayback Machine' from which the Xactware reference was taken was not publicly available until [after Applicant's filing date.]" In the next Office Action, the Examiner clarified that "the web page (and date published) is meant to serve as prior art -- not the internet archive."

On appeal, the Board analyzed the Examiner's prima facie showing of Xactware as prior art. The Board first noted the reference identified by the Examiner was the archived Xactware web pages, not the pages retrieved from the Xactware site at the time of examination. The Board further noted that the pages themselves showed an archive date:

Based on the Uniform Resource Locator (URL) content at the bottom of each page, pages 1 through 15, as numbered by the Examiner, appear to represent web pages that were published (publicly available) on the “xactware.com” site in the year 1998.

In view of this prima facie showing that the reference was prior art, the Board looked to the Applicant for a rebuttal and found none:

     In the instant case, Appellants have not provided any evidence to show that the website from which Xactware was retrieved is not reliable as to presumed dates of publication. Nor have Appellants provided any other evidence tending to show that the content described by Xactware was not publicly available on the presumed dates.
.... On this record, we conclude that the Examiner properly considered Xactware to represent prior art with respect to the invention of the rejected claims.

My two cents: If you're not familiar with the Wayback Machine, here's a very brief explanation of the interface.

Typing in a web address from the main page (internetarchive.org) gives you a timeline/calendar view of all the archived pages for that site.

Clicking on a specific date retrieves the page as it existed on that past date:

Note that the URL of the retrieved page in the browser address bar
https://web.archive.org/web/20110820040341/http://www.allthingspros.blogspot.com/
encodes the name of the archived site and the archive date.