Friday, July 25, 2014

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?

13 comments:

  1. 3 out of the 6 decisions you cited was written by Thu Dang -- notorious for ignoring Typhoon Touch v. Dell Inc., which is the Federal Circuit case most on point. I have commented many times on Dang's decisions in the past on this blog -- look it up. IMHO, a terrible APJ.

    A couple of other points, Liebich was also based upon the PTAB's continued mis-citing of In re Lowry to ignore limitations. Lippincott wasn't written by Dang, but she was on the panel.

    What is particularly frustrating about this type of shenanigans from the PTAB is that this claim language can be easily "fixed" (to the extent it needs fixing). However, since the PTAB didn't rule on the real issue -- instead, they punted by saying that the limitations were not given patentable weight -- applicant will have to go through the appeal process again to address substantially the same issue. It is a waste of both applicants and the USPTO's time and money.

    ReplyDelete
    Replies
    1. I agree that often some re-wordsmithing to appease the Examiner without giving away scope will often do the trick in these instances. The big (?) is why the patent practitioners didn't take care of all that before appeal.

      Delete
    2. The big (?) is why the patent practitioners didn't take care of all that before appeal
      If I amend, the next action will be final -- regardless if the examiner produces a new rejection. If I want to amend after that, I am SOL unless I file a RCE, which permanently tolls type-B PTA. Also, if I amend, I'm going up DOE on that language.

      Amending claims has consequences -- some of which are negative to the client. A good patent practitioner only amends if justified based upon the circumstances.

      Delete
    3. I think we can all agree that amendments have various costs, and that the client's particular goals must be taken into account. Sometimes that means amending to replace "adapted to" with "operable to" even if that results in a Final. Sometimes that means going to appeal with the claims as is. I've done both, and feel that each strategy call was justifiable.

      I find that in most cases, the Applicant didn't realize that the Examiner was treating as intended use, or didn't realize the significance (ie, the art reads on the claim once that functional language is ignored). Lack of clear explanation by the Examiner is partly to blame for such situations, but hasty/sloppy prosecution by Applicants also plays a role here. IMHO, you do everything you can to figure out what the Examiner's real position is, and sometimes that takes a bit of extra work, time, and/or pages.

      Delete
    4. Sometimes that means going to appeal with the claims as is. I've done both, and feel that each strategy call was justifiable.
      I'll amend if the Examiner is going to allow the application. However, if the Examiner won't budge regarding the prior art, I don't see any reason to amend.

      I find that in most cases, the Applicant didn't realize that the Examiner was treating as intended use, or didn't realize the significance (ie, the art reads on the claim once that functional language is ignored).
      That is probably most practitioners rely upon the Federal Circuit's statement in In re Lowry that "[t]he Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art."

      you do everything you can to figure out what the Examiner's real position is, and sometimes that takes a bit of extra work, time, and/or pages
      That sometimes still isn't enough. I've seen applications in which the Examiner alleged that the prior art taught the limitations at issue and the PTAB disagreed -- however, the PTAB deemed these limitations "intended use" or "nonfunctional descriptive matter" and ignore them -- all without designating the "affirmance" a new ground of rejection.


      Delete
    5. >PTAB [found limitations were not taught and yet ignored because]
      >deemed "intended use" or "nonfunctional descriptive matter" --
      >all without designating the "affirmance" a new ground of rejection.

      Failure to designate as a new ground is egregiously unfair to the Applicant.

      Though the PTAB often ignores YET ALSO finds the limitations taught in the prior art. That happened in several of these applications.

      Delete
  2. Completely OT, but some amusing reading from the OIG.

    link to oig.doc.gov

    And of course the media’s take on it.

    link to washingtontimes.com

    Lulz. You can’t make this stuff up.

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  3. Say what you want about APJ Dang, but she certainly smacked up the examiner in 10/211,047.

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    Replies
    1. If the decision accurately reflects the record, then that is an easy reversal. Don't mention all of the claim language and expect to be reversed.

      As an aside, the claim language is a bit wordy for my taste. It clocks in at almost 400 words. Preferably, I like to keep my independent claim 1 to under 100 words.

      Delete
    2. I took a quick look at the smack down in 10/211,047. I plan to read more closely -- maybe there's some good language I can use in an argument that the Examiner didn't meet Jung's PF requirement.

      Delete
  4. If they express results then there is no need to use the word "to". Just leave it out and save yourself the trouble.

    ReplyDelete
    Replies
    1. So what linking word/phrase would you use instead of "to". For example, in the following

      controlling a grid-side converter . . . to regulate the voltage

      How would you link the control aspect and the voltage regulation aspect?

      Delete
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