Tuesday, April 29, 2014

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. 

31 comments:

  1. Everybody should read the In re Skvorecz decision for a pretty hilarious example of what length's lifer APJ's will go through to affirm at all costs. To the point of completely embarrassing themselves in front of a federal circuit court of appeals.

    Keep up the record breaking outstanding quality work, PTO!!!!!

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    Replies
    1. Forgot already that Skvorecz was discredited when the earlier precedent of Resqnet.com v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003) was uncovered? Keep up the record breaking outstanding quality posts!!!

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    2. Forgot already that Skvorecz was discredited when the earlier precedent of Resqnet.com v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003) was uncovered?
      Discredited? How so?

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    3. "Discredited? How so?"

      See Newell Co. v. Kenney Mfg., 864 F.2d 757, 765 (Fed. Cir. 1988).

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    4. See Newell Co. v. Kenney Mfg., 864 F.2d 757, 765 (Fed. Cir. 1988).
      What does that have to do with the issues at hand? It wasn't cited in Resqnet. You say that Skvorecz is discredited by Resqnet -- then explain yourself.

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    5. "You say that Skvorecz is discredited by Resqnet -- then explain yourself."

      Discredit (transitive verb): "to cause disbelief in the accuracy or authority of (~ a discredited theory)."

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    6. Thomas Pain writes "blah, blah, blah." Yawn ... another examiner pretending to be an attorney.

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    7. BTW ... Thomas Pain's (lack of a) response reminds me of a quote from one of my favorite moves, Snatch ... "You are shrinking, and your two little [ ] are shrinking with you ... Now [ ] off!"

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    8. "What does that have to do with the issues at hand? It wasn't cited in Resqnet."

      Yes, of course, a case is controlling only if the opinion in support of the decision cites to it.

      Excelsior!! Preserving the standard of record breaking outstanding quality posts!!!

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    9. "Thomas Pain's (lack of a) response [I got nothing]."

      Nothing to respond to, Pookie. Nobody has touched the substance of Newell and Resqnet.

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    10. Nobody has touched the substance of Newell and Resqnet.
      Nobody has identified the substance of Newell and Resqnet other than making some vague comment that they somehow discredited Skvorecz.

      BTW -- if Newell and Resqnet were inconsistent with Skvorecz, it was a lousy job at the Solicitor's office not to raise them in Skvorecz. Regardless, Skvorecz is binding precedent -- your QQing aside.

      When will non-attorneys learn that there is more to practicing law than just citing cases??

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    11. "BTW -- if Newell and Resqnet were inconsistent with Skvorecz, it was a lousy job at the Solicitor's office not to raise them in Skvorecz."

      So, that's three cases you have know idea what they're about. Any others? Alphabetical will be ok.

      "Regardless, Skvorecz is binding precedent -- your QQing aside."

      Ok, just bear down and try to get through just one. Newell. But you are forewarned, it doesn't have a lot of pictures.

      "When will non-attorneys learn that there is more to practicing law than just citing cases??"

      Excelsior!!!

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    12. Sorry. I don't actually read the actual cases. Who has the time?

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    13. MAL writes: So, that's three cases you have know [sic] idea what they're about.

      Hmmmm ... you have yet to prove that you know what they are about and explain how Newell and Resqnet were inconsistent with Skvorecz.

      You made the statement that Skvorecz is bad law -- the burden is on you to back it up.

      This is so examiner-like -- fearful of putting any argument about the law on the record -- fearful of being exposed as a fraud.

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    14. "You made the statement that Skvorecz is bad law -- the burden is on you to back it up."

      Don't know much about burdens, either? The initial burden is to show where I made that "statement."

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    15. "Forgot already that Skvorecz was discredited when the earlier precedent of Resqnet.com v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003) was uncovered?"

      In what case was the "earlier precedent" of Resqnet.com "uncovered" and how did any such case "discredit" Skvorecz?

      BTW, WTF are you talking about?

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    16. And if Skvorecz was "discredited" why is APJ Morrison citing it to reverse the examinertard in the decision Karen posted?

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    17. "BTW, WTF are you talking about?"

      I sincerely believe that you do not know. No offense taken.


      "And if Skvorecz was 'discredited' why is APJ Morrison citing it to reverse the [gentleman] in the decision Karen posted?"


      I never said the Skvorecz decision was wrong. Nor did I say it was right. But one with a passing knowledge of Federal Circuit jurisprudence (or maybe only read Karen's commentary about Skvorecz when it came out) would not crow happy hyperbole about what he considers "hilarious" and "embarrassing."


      But keep up the record breaking outstanding quality posts!!!

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    18. "I never said the Skvorecz decision was wrong. Nor did I say it was right."

      You said it was "discredited" (WTF that means).

      "But one with a passing knowledge of Federal Circuit jurisprudence (or maybe only read Karen's commentary about Skvorecz when it came out) would not crow happy hyperbole about what he considers 'hilarious' and 'embarrassing.'"

      APJ McDonald's tortured reasoning in his affirmance of the examiner is hilarious and embarrassing. As the Federal Circuit noted when it said, "The protocol of giving claims their broadest reasonable interpretation during examination does not include giving claims a legally incorrect interpretation."

      So again, WTF are you talking about?

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    19. You will have to quote the "tortured reasoning" if you want anybody to know WTF you're talking about.

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    20. Lulz. You funny.

      Let me quote the Fed. Cir.:

      "The PTO now presses the theory that claim 1 is anticipated because it can be construed to include wire legs without offsets, because the claim uses the open-ended transition term 'comprising.'[2] The PTO argues that because the signal 'comprising' is open-ended, not every wire leg is required by claim 1 to include offsets. The PTO states that the usage 'comprising' permits the Skvorecz structure to include legs without offsets, although claim 1 states that 'said wire legs' and 'each wire leg' have offsets. Thus the PTO argues that even if claim 1 were construed to require that every wire leg has an offset, the Buff patent shows offsets 52 that laterally displace wire leg 49, apparently arguing that it is irrelevant whether Buff's wire leg 48 has an offset. Thus the Board held that claim 1, when given its broadest interpretation, reads on the Buff structure and thus is anticipated."

      How's that?

      Then there's this:

      "The PTO has not correctly construed the signal 'comprising.' This signal simply means that the device may contain elements in addition to those explicitly mentioned in the claim. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed.Cir.2007) ("In the patent claim context the term `comprising' is well understood to mean `including but not limited to.'"). The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset."

      Can't even interpret "comprising" correctly. Pretty sad.

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    21. Skvorecz was discredited when the earlier precedent of Resqnet.com v. Lansa, Inc., 346 F.3d 1374 (Fed. Cir. 2003) was uncovered?
      Nearly 20 posts since this statement, and still no supporting explanation. Only an Examiner can be this stubborn.

      Is there anybody wanting to help Thomas Pain out? Anybody at all?

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    22. "This signal ["comprising"] simply means that the device may contain elements in addition to those explicitly mentioned in the claim."

      I agree.

      I do not claim:

      A widget consisting of [i.e., limited to] a plurality of wire legs with offsets.

      I claim:

      A widget comprising [i.e., including but not limited to] a plurality of wire legs with offsets.

      Elements in addition to those explicitly mentioned in the claim include two wire legs without offsets.

      Please explain what, specifically, is "tortured" about the reasoning. Please include the definition of "comprising" in the explanation. Be specific.

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    23. "Please include the definition of 'comprising' in the explanation."

      I quoted the Fed. Cir. decision that deals with the "well understood" meaning of the term "comprising" in patent claims. Did you not read that?

      I guess I should quote this part of the decision also:

      "The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset."

      The use of the term "comprising" is not a license for examiners, or APJ's, to ignore the clear requirement of the claim that "each" leg have an offset in the rush to reject-reject-reject and affirm-affirm-affirm. Pretty simple concept for most to understand.

      Like the post at 10:18 AM I too am waiting for your explanation of how Skvorecz was "discredited" by the "earlier precedent" of Resqnet.com. As you haven't yet provided an explanation, I can only imagine that you're devising some new form Shepardizing in which earlier precedents "discredit" later precedents. WTF that means.

      It's okay to admit that you have no idea what you're talking about. It's not like we don't already know that.

      The truth will set you free. Give it a try.

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    24. "The use of the term "comprising" is not a license for examiners, or APJ's, to ignore the clear requirement of the claim that "each" leg have an offset in the rush to reject-reject-reject and affirm-affirm-affirm. Pretty simple concept for most to understand."

      I see. Even though you said "Can't even interpret "comprising" correctly," now it's the "each" you want to rely on. Ok. We can do that. What does the Federal Circuit have to say about the meaning of "each?"

      "Claim 1 of the ’608 patent recites “each of a plurality of fields,” which does not carry the same meaning as “every field.” Rather, the recitation of “plurality” suggests the use of “at least two.” See York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1575 (Fed. Cir. 1996) (“The term means, simply, ‘the state of being plural.’”). While “at least two” may mean “every” under some circumstances, the two terms are not synonymous. In sum, “each of a plurality of fields” means “each of at least two fields.” ResQNet.com v. Lansa, 346 F.3d 1374 (Fed. Cir. 2003),

      Oops.

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    25. That's nice. But claim 1 of Skvorecz didn't recite each of a plurality of legs, as the court noted the claim recited that each wire leg has an offset which does carry the same meaning as "every leg."

      Oops.

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    26. "the claim recited that each wire leg has an offset"

      "[E]ach wire leg has an offset" is not recited in claim 1 of Skvorecz.

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    27. Since you don't have time to actually read the actual cases, I can let you know that claim 1 of Skvorecz recites "at least two," i.e., a plurality of, wire legs.

      So. You still haven't explained why the Board's reasoning was "tortured," but to get there you have to (1) ignore the meaning of "comprising," (2) change the meaning of "each" to "each and every, whether part of the claimed combination or not," and (3) re-write the claim. Anything else?

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    28. "So. You still haven't explained..." how ResQNet.com "discredited" Skvorecz, or even what you mean by "discredited."

      Keep up the record breaking outstanding quality work you're doing over there.

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    29. How come AAA JJ is changing the subject? Oh, I see.

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    30. See Newell Co. v. Kenney Mfg., 864 F.2d 757, 765 (Fed. Cir. 1988).

      Lulz

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