Applicant fights hard to get Examiner to provide translation of foreign reference

Takeaway: The Examiner rejected using a Japanese language reference. The rejection specifically referred to a drawing in the reference, but the Examiner did not provide a translation of the text that appeared in the drawing. The Applicant raised this issue several times in prosecution. The Applicant also filed a Petition under § 1.181, requesting the TC Director to compel the Examiner to act. After the fourth request, the Examiner finally provided a translation of the text in the relied-upon drawing. The Applicant later appealed. (Appl. No. 11/474,530 to Arjomand, "Window Refrigerator," available on Public Pair.)

Details:
Appl. No. 11/474,530 to Arjomand "Window Refrigerator"
(file wrapper available on Public Pair)

The application was directed to a "refrigerator for home use having its front indoors and its condenser coil outdoors to save electricity whenever the outdoors is colder than indoors."

In the first Office Action (mail date July 16, 2009), the Examiner rejected the claims as anticipated by patent publication JP 063000416A. A machine translation of the reference specification was included with the Office Action. A few weeks after the Office Action was mailed, the Applicant filed a paper requesting the Examiner to provide a translation of the entire reference. (This scenario is covered by MPEP 710.06 "Situations When Reply Period is Reset or Restarted.") The request explained:

The Examiner provided a machine translation accompanied by a single Figure which does not appear to be the one relied on by the Examiner. Applicant could only find the published abstract online. Applicant requests that all figures be supplied and that new a response period be set.

Five weeks after the Office Action mail date, the Examiner had not complied with the Applicant's request, so the Applicant filed a Petition under 1.181. The Petition asserted that it was PTO policy to supply "clear" translations of foreign language references (citing Ex parte Rudd, Appeal 2007-3775). The Applicant requested the Technology Center director to compel the Examiner to take the following actions:

• supply the drawings from the cited reference
• if the drawings include text in Japanese, supply an English translation of such material
• set a new 3-month response period, as of mailing date of the drawings

Five days after the Petition was filed, the Examiner sent a copy of the entire reference – including figures – in Japanese. The Examiner also reset the period for Response, to start from August 31 rather than July 25.  The Applicant then filed a paper specifically requesting the Examiner to provide an English translation of foreign-language subject matter found in FIG. 5 (the sole figure relied upon by the Examiner). The Applicant also requested a new 3-month response period.

On Sept. 25, the Examiner sent a "Miscellaneous Action" with this explanation:

   The rejection based on the JP patent is solely for teaching "ref/freezer (fig. 5) that has a separate freezer compt (8) and a fridge comp (9) where a damper (18) is disposed adjacent the fridge compartment (fig. 5) and dependent on a reference frame of view, the damper is disposed ... (fig. 5.)"
    Therefore no additional English translation of fig. 5 is deemed necessary in view of the computer translation sent earlier. The response period for the outstanding Office Action mailed 8/25/2009 remains UNCHANGED.

The Applicant filed a Response to Office Action a few weeks short of the six month date of the new reply period. The Applicant amended claims but also brought up the issue of the missing translation for the drawings. According to the Applicant, the Examiner's refusal to provide a full translation left the Applicant unable to determine whether the Examiner was impermissibly picking and choosing from the teachings of the reference. (In re Wesslau, 353 F.2d 238, 241 (C.C.P.A. 1965)). This refusal denied the Applicant the "possibility of presenting an educated response to the Office Action." The Applicant also noted the pending Petition to the TC Director.

The Examiner issued an Office Action, which was Final because of the claim amendments. The Office Action used the same Japanese reference in the rejection, and said nothing about Applicant's renewed request for a translation.

The Applicant filed a After Final Response within the two month date, and once again brought up the Examiner's failure to provide a full translation. This time the Applicant made arguments about the level of skill in the art. The Applicant took the position that the poor translation of the Japanese language reference made it impossible to determine the level of skill in the art. As a result, the third Graham factor had not been resolved and the rejection was deficient.

The Examiner issued an Advisory Action and indicated that he would request a full translation. He nonetheless maintained that it was proper to rely on a translated abstract of a foreign reference. The Examiner also asserted that a POSITA would know that the abstract is accurate. Furthermore, since the abstract was sufficient, the level of skill has been established.

Three weeks after the Advisory Action, the Examiner sent the translated figures. The Applicant filed an RCE with all new claims and thanked the Examiner for supplying the translation. The Applicant appealed after the next Office Action, which used a new primary reference (also Japanese). The original reference remained.

My two cents: I think reasonable minds can differ about whether fighting about a missing translation is a good idea. I do think it's important to try to make some forward progress on the merits of the case, rather than getting stuck solely on the translation issue.

I like the idea of filing a petition while at the same time continuing raise it with the Examiner. Here, looks like the Applicant worn the Examiner down before the petition was decided.

I'm generally in favor of appealing early. But failure to provide a translation is a petitionable, not appealable, matter. So appealing early would be a bad idea if you wanted to limit your arguments to failure to provide a full translation. In other words, I think you need to address the Examiner's assertions about the reference, even if you don't have all the information you need to make a great argument.

You could say, as the Applicant did, that the insufficient translation means the Examiner failed to make a Prima Facie case. And, sure, Prima Facie case is certainly something you can raise on appeal. Still, the interaction of these issues – Examiner requirements during prosecution, level of skill, foreign language reference – is complex. So I wouldn't bet my appeal on the Board holding that incomplete English translation means no level of skill means no Prima Facie case.

Finally, the Applicant could have bypassed the Examiner and gotten its own translation. Could be that costs actual money. But maybe not a lot. After all, it was only the Japanese text on the figures themselves that the Applicant was fighting about at the end. The Examiner had already provided the English language text of the entire specification. (After a specific request by the Applicant, that is.) 

PTAB agrees with Applicant that "beyond predefined speed" means above, not below

Takeaway: The Applicant appealed claims to a braking system. The limitation at issue read
"detection of ... rotational engine speed falling below a predetermined minimum." The Examiner relied on this statement in a Japanese reference: "judge whether rotation is beyond a predefined limit." The Applicant argued that the ordinary meaning of "beyond" was more than the limit, where the claim specified "below" the limit. Neither side cited a definition or any other evidence of meaning to a POSITA. The Board summarily agreed with the Applicant, citing to a dictionary definition, and reversed the rejection. (Ex parte Sabelstrom, PTAB 2015.)

Details:
Ex parte Sabelstrom
Appeal 2012012232; Appl. No. 11/721,180; Tech. Center 3600
Decided:  July 30, 2015

The Examiner introduced Hoshido (a Japanese reference) in a Final Office Action, after the Applicant amended in the first response. The rejection read:

As per claim 1, Hoshido discloses Auxiliary Brake Control Device of Vehicle comprising:
     means for disengaging the auxiliary brakes when the incident is detected;
     ... wherein the incident comprises at least one of: ...
     the rotational speed of the engine falling below a predetermined minimum value (engine rotation is beyond predetermined rotation (for example 900 RPM), Paragraph 21).

The Final Office Action included a copy of Hoshido (in Japanese), along with the corresponding English language abstract.

In the Appeal Brief, the Applicant argued that the Examiner had misinterpreted Hoshido. The Applicant included (in the Evidence Appendix) a machine translation from the JPO, and explained as follows

     It appears that [the relied-upon statement in Hoshido] has been construed to correspond to a step of determining that the rotational speed of the engine has fallen below a predetermined value. This is not correct. ...      In paragraph 21 a set of rules, steps 2-5, are defined, which set of rules are used for determining that braking is unnecessary, that is it is determined whether the driving condition is such that no brakes should be applied. ...
     In the third condition (4) it is determined whether the engine speed is beyond certain threshold value or not. A normal meaning of beyond is "more than; in excess or over and above"...  If the engine is running at low speed, there will be a reason to assume that braking is unnecessary, while if the engine is running a high speed, braking may be assumed to be desired. Thus, "beyond" should be understood to mean that braking is caused to occur when engine speed is above a predetermined value, not below the value.

The Applicant offered this additional context for the teachings of Hoshido:

It should also be noted that the exemplified condition is 900 RPM, a typical mid-range speed for diesel truck engine. Idling speed would be around 700 RPM and risk for stall is typically 100 rpm below this. It is thus clear that the condition tests whether the engine speed is above a certain threshold value or not.  

The Examiner's Answer repeated the same position. The only relevant additional information was this comment on the Applicant's statement about mid-range, idle, and stall speeds: "This explanation is so broad, different type of engine has different range of engine speeds according to manufacture specification."

The Reply Brief included a summary of differences between the claimed invention and the teachings of Hoshido. The Applicant did not further discuss the meaning of "beyond predetermined rotation."

My two cents: One of the few instances in prosecution where the issue really was the teachings of the reference, rather than the  meaning of the claims. The Applicant was smart to focus on meaning, though the position would be strengthened by offering evidence rather than a naked assertion.

Notably, it was the Applicant and not the Examiner that provided an English translation of the Japanese language reference. MPEP 706.2(II) that if the Examiner relies on the document itself rather than just the abstract, a translation should be provided.

The Applicant included the translation in the Evidence section of the Appeal Brief. Technically, the Applicant should have submitted this earlier and had the Examiner enter it as evidence. I'm glad to see the Board didn't ding the Applicant on this technicality, especially since the Examiner didn't follow the rules in the first place.

PTAB dings Applicant for citing to cases without analogizing facts

Takeaway: An Applicant appealed claims that described structure in terms of segments with joined endpoints, along with profiles for each segment. The Applicant argued that the Examiner had interpreted geometric features shown in the reference drawings in an arbitrary manner, in order to read on the claims. In making that argument, the Applicant cited to two prior Board decisions involving reference were also at issue. The Board dismissed this portion of the argument because the Applicant didn't compare facts in the cited cases to facts in the case on appeal. (Ex parte Justin, PTAB 2014.)


Details:
Ex parte Justin
Appeal No.: 2012008703; Appl. No. 12/784,824; Tech. Center 3700
Decided:   December 30, 2014

The Applicant appealed two anticipation rejections of claims to a "punch for cutting tile from a workpiece". The claims recited a cutting blade and further described the structure of the cutting blade in terms of segments with joined endpoints, along with spline profiles for each segment. (See Applicant's Fig. 14, below.)

The Examiner rejected as anticipated by the cutting die in Copeland. The Applicant traversed, arguing that Copeland's die did not have a cutting blade formed by four joined segments as required by the claims. The Examiner had added lines to Copeland's figure as axes to identify segments, but those lines "cross the punch shape at intermediate locations" and thus were not joined segments.

Examiner's Annotated Figure from Final Rejection

When the Examiner maintained the rejection, the Applicant appealed. The Appeal Brief argued that the Examiner had used arbitrary segments. In support of this argument, the Applicant cited to language in two ex parte PTAB decisions:

The  Examiner's interpretation of the drawings in Copeland and Spengler is unreasonable  because he uses arbitrary portions of the drawings that were "defined only by the Examiner" to meet Applicant's claim limitations. Ex parte Denison, Appeal 2009-004110,  p. 5 (BPAI  2010) (Exhibit A) ("However, that 'structure' identified by the Examiner results only from an arbitrary delineation of Berry's structure, made in order to meet the claim limitations. Even giving  the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood  the  claim  terms  requiring  'double-curved  portions'  and  'Y-shaped  portions'  to include the arbitrary portions of Berry defined only by the Examiner"); See also, Ex parte Richardson, Appeal 2009-003991, p. 11 (BPAI 2009) (Exhibit B)  ("The Examiner appears to have arbitrarily set the axis of the cited references with no consideration as to the relationship with other claimed features").

The Applicant mentioned one of these PTAB decisions again, later in the argument section:

Here, as in Ex parte Richardson, the interpretation of the claim by the Examiner is not consistent with the description of  the invention in the specification. The Examiner has arbitrarily added annotations consistently of two axes added to the prior art figures with no consideration as to the relationship with the other claimed  features. Ex parte Richardson, p.11.

The Examiner's Answer included the same figure with additional annotations, though no further explanation:

Annotated Figure from Examiner's Answer

The Applicant filed a Reply Brief and expanded on the argument, as follows:

     The Examiner's Answer completely ignores and flies in the face of the [BPAI] respected authority relied upon in Applicant's Appeal Brief. Ex parte Denison, Appeal 2009-004110, p.5 (BPAI 2010) and Ex parte Richardson, Appeal  2009-003991, p. 11 (BPAI 2009). The Examiner cites no authority for relying upon axes hand drawn by the Examiner on a cited prior art reference to support the assertion that the claims are anticipated ...
     The Examiner's Answer is devoid of any support in the prior art for his  construction of the claims and so the Examiner just sketches some lines on the prior art drawings and concludes that the claims are anticipated. In conclusion, the Examiner is wrong on the law and wrong to torture the prior art references by arbitrarily sketching lines that are defined only by the Examiner.

The Board affirmed the rejection. The Board essentially dismissed the Applicant's "arbitrary" argument for two reasons. First, the cited PTAB decisions were not precedential. Second, the Applicant did not "provide a persuasive line of reasoning analogizing the facts in those cases with facts in the presently appealed case."

Turning to the merits, the Board found that the Examiner's annotations were not arbitrary.   The axes which the Examiner added to the figure served as a system to identify joined segments, with the center point of the punch acting as the center of the coordinate system." The Board found this system of identifying segments to be reasonable. Furthermore, the Board found that the Examiner's findings about how the claims read on the reference were supported by a preponderance of the evidence.

My two cents: Patent prosecutors rely on case law far less than many other types of attorneys. Success in patent prosecution is commonly understood to depend far more on technical distinctions than on purely "legal" arguments. But if you're going to rely on case law for more than simply a basic legal proposition (e..g, the elements of a prima facie case of obviousness), you need to do what we learned in law school.

The Applicant did the first part, which is finding cases relevant to the issue at hand. Both cases involved Examiner annotation of a reference figure to show claimed geometric features. Then go the extra mile by showing how the facts in the relied-upon case are similar to or different from your facts. If you simply cite to the holding and use some quotes, you're essentially asking the Board to do the analysis for you.

PTAB finds kit of chemical agents disclosed in reference renders claimed solution obvious

Takeaway: Claims to a cleaning solution excluding an oxidizing agent were rejected as obvious in view of a kit of prepackaged components for later mixing with the excluded oxidizer. On appeal, the Applicant argued that any "solution" prepared from the kit disclosed in the reference necessarily includes an oxidizing reagent because there was "no suggestion to alter the essential order of addition of its reagents, which requires mixing the oxidizing agent and the surfactant as an initial step." After performing claim construction, the Board relied on a different kit, also disclosed in the reference, to find the solution obvious. The Board noted that the Applicant and Durmowicz both contemplate mixing a oxidizing agent solution with another solution that omits the agent, producing a final solution. Thus, Durmowicz's solution [made from the components in the second kit] "reasonably renders the solution of claim 59 obvious when formulated in the first tube that will later be mixed with a second tube containing the nucleic  acid deactivating agent." (Ex parte Nelson, PTAB 2015.)

Details:

Ex parte Nelson
Appeal 2013002307; Appl. No. 11/073,085; Tech. Center 1600
Decided:  October 26, 2015

The technology on appeal involved nucleic-acid probes, used to test a biological sample for the presence of particular microorganisms. The claims on appeal were directed to cleaning agents used to avoid contamination during the testing.

A representative claim on appeal recited:

     59. A homogeneous solution for use in preventing nucleic acids from acting as templates in an amplification reaction when the solution is combined with a nucleic acid deactivating agent,
     the solution consisting essentially of
a corrosion-inhibiting agent, a wetting agent, and a solubilizing agent,
each of the agents remaining substantially in solution at 22°C,
[functional limitations related to agents],
wherein the solution does not include a nucleic acid deactivating agent.
(Emphasis added.)

Early in prosecution, the Examiner rejected the claims as anticipated by Durmowicz, relying on a discussion of agents that are pre-packaged as separate components, then mixed before use. The Applicant disputed the Examiner's reading of Durmowicz and specifically argued that Durmowicz's kit of prepackaged agents did not include a solubilizer as claimed: 

    In sum, [Durmowicz] requires the inclusion and presence of a nucleic acid oxiding agent in all contemplated embodiments (including kits), whether they are intermediate or final embodiments. In other words, at no point (even transiently) does Durmowicz contemplate a solution containing combined starting materials (e.g., surfactant + builders + solvents), but excluding  a nucleic acid oxiding agent.

Later in prosecution, the Examiner used Durmowicz in a single-reference § 103 rejection:

     Examiner recognizes that the cited art Durmowicz  et al. teaches the components of the solution recited in instant claims along with many other choices. Furthermore the cited art does not recite a single composition containing all the recited components in one place, hence an obviousness rejection over the cited art is also being made.
... Durmowicz et al. does not teach a specific composition consisting essentially of the all recited components. It would have been prima facie obvious to one of  ordinary skill in the art to make a solution containing [the three agents as claimed] wherein the solution does not include a nucleic acid deactivating agent.

As a rationale for omitting the deactivator, the Examiner relied on the (allegedly) common biochemical practice of preparing one solution with a oxidizer and a separate solution without, and then mixing the two shortly before use, because oxidizing agents become less active in storage. Finally, the Examiner asserted "a reasonable expectation that the resulting composition where oxidizing agent was freshly added prior to use would be very effective  in deactivating  nucleic acid from surfaces."

The Applicant responded by arguing that even Durmowicz's kit of prepackaged agents did not suggest the claimed solution, because Durmowicz required the presence of a nucleic acid deactivating agent in each of its solutions.

When the Examiner maintained the obviousness rejection, the Applicant appealed. The Applicant argued the Examiner had not provided sufficient evidence:

The Examiner appears to suggest that although Durmowicz fails to teach the claimed solutions, the Durmowicz teaching to prepare solutions shortly before use explicitly guides one of skill in the art to the claimed solutions. [However, this] conclusion is solely the opinion of the Examiner, with no support in the cited art. For example, no art beyond the Durmowicz reference is relied upon by the Examiner (1) for the above proposition, and (2) for the proof of what one of skill in the art was purported to know or how they would practice at the relevant time.

In addition to this attack on the Examiner's prima facie case, the Applicant also argued on the merits. Specifically, the Applicant reiterated that Durmowicz did not disclose a solution without a deactivating agent:

Thus, contrary to the limitations of the present claims, Durmowicz requires the presence of a nucleic acid deactivating agent in each of its solutions. Stated differently, no homogeneous solutions (i.e., multi-component homogeneous solutions, as required in the pending claims) are taught or suggested by Durmowicz that lack a nucleic acid deactivating agent.
(Emphasis added.)

The Applicant went on to explain the difference between the claimed homogeneous solution and Durmowicz's kit of separate components:

Importantly, these pre-packaged reagents are not identified as, nor are they, "solutions" comprising multiple agents such as the homogenous solutions of the present claims. Rather, para. 52 of Durmowicz discloses separately packaging each reagent of the future "solution" that is to be made. In other words, although Durmowicz discusses separately packaging the "surfactant" agent and the "oxidizing" agent, these individually packaged agents are not the ultimate "solution," as that term is used in the present claims. Moreover, the Durmowicz disclosure provides no suggestion to alter the essential order of addition of its reagents, which requires mixing the oxidizing agent and the surfactant as an initial step. Accordingly, any "solution" prepared according to the Durmowicz kit disclosure includes an oxidizing reagent.

The Applicant next questioned the benefit proffered by the Examiner as a reason to separate the oxidizer from the other components: 

Durmowicz, therefore, contemplates prepackaging in order to facilitate dissolution of its ingredients, and not to avoid a purported rapid decrease in activity of solutions containing oxidizing agent. As such, the basis for this proposition of the Examiner is lacking in the cited art.

Finally, the Applicant made an unexpected results argument:

In fact, those of skill in the art would have expected particulate formation if a corrosion­ inhibiting agent, wetting agent, and solubilizing agent were combined in the absence of an oxidizing agent. For example, as indicated in the present specification at para. 16, it was the present inventors who discovered that the components of the claimed solution could be combined in the absence of the nucleic acid deactivating reagent without forming a precipitate or an otherwise non-homogenous solution.

The Examiner's Answer repeated the earlier explanation about how and why a POSITA would take Durmowicz' separate components and mix them together before use to obtain the claimed solution:

Hence in biochemical arts to ensure optimal activity each time the solution containing oxidizing agent is used, one practice is to prepare two separate solutions, a solution (1) containing all the remaining components which is stable for longer period of time and the oxidizing agent is kept separate either as powder or another solution (2) which is freshly reconstituted if powder form  is used then the solution  (2) is mixed with solution (1) shortly before  use.

The Applicant filed a Reply Brief, but it was denied entry because it included amendments to the claims. 

The Board affirmed the obviousness rejection. As discussed above, the Brief had argued that each of Durmowicz's agents was separately packaged for later combination into a future solution, and these individually packaged agents were not the ultimate claimed solution. The Board viewed the teachings of Durmowicz differently.

The Board pointed out that Durmowicz taught two kits. One kit included "appropriate amounts of surfactant and oxidizing agent in separate containers for mixing prior to application." Another kit included "surfactant and organic builder salts such as phosphates or bicarbonates in one tube and the oxidizing (i.e. nucleic acid deactivating agent) in another tube." Moreover, the Board found (as a matter of claim construction) that Durmowicz's builder salts corresponded to the claimed "corrosion-inhibiting agents." The Appeal Brief discussed the first kit but not the second.

The Board concluded the properly construed claim was obvious in view of the second kit and a separate teaching about solvents:

[The second kit] solution with surfactant, organic builder salts such as phosphates and bicarbonates (Finding of Fact 7) and optionally organic solvents such as isopropanol (Finding of Fact 11) reasonably renders the solution of claim 59 obvious when formulated in the first tube that will later be mixed with a second tube containing the nucleic acid deactivating  agent  (FF 6).

The Board dismissed the Appeal Brief discussion of unexpected results (homogeneous solution rather than particulates) because the Applicant did not offer evidence. "Appellants do not identify any teaching in Durmowicz suggesting that the combination of components necessarily results in particulate formation, and indeed, Durmowicz teaches "a non-particulate solution" (see Durmowicz , para. 53).
 
My two cents: The outcome might have been different if the Applicant had been more proactive and addressed all of Durmowicz's teachings about the kit. It's true the Examiner relied exclusively on general teachings about a kit in para. 52. However paras. 53 and 54 contained more details about first and second kits, respectively, and the Board found that the second kit corresponded to a combination of a corrosion-inhibiting agent, a wetting agent, and a solubilizing agent. The Board found it obvious to combine this later with a deactivator.

I see the Board's affirmance as a new ground of rejection. MPEP 12707 says it's a new ground to "rel[y] on a different portion of a reference which goes beyond the scope of the portion that was previously relied upon" but not a new ground when "citing a different portion of a reference to elaborate upon that which has been cited previously." Relying on a different kit of reagents is "going beyond previously relied upon" than "elaborating on previously relied upon." So if the Applicant filed a Request for Rehearing asking the PTAB to designate a New Ground of Rejection, the law is on the Applicant's side. (That said, I don't think the Board actually grants many of these Requests, and the Federal Circuit has corrected the Board a number of times in the past few years on the subject of New Grounds.)
 
The way I see it, designation of a New Ground would still be a pyrrhic victory. A New Ground of Rejection in an appeal decision allows the Applicant to file post-appeal amendments and/or evidence without paying for an RCE. Which means the Applicant still waited on appeal for all those years only to lose because the PTAB decided to go farther than the Examiner did.

It's true that the law requires the Applicant only to show error in the Examiner's rejection, and not to show patentability over the cited references. Even so, a more proactive Applicant might have accounted for the two paragraphs following the one relied on by the Examiner. Perhaps that would have led to claim amendments rather than appeal.


Claim construction was also an issue in this case, though neither party appreciated it until too late. The Examiner first addressed claim construction in the Answer, and the Applicant in the Reply Brief – though the Reply wasn't entered because it also contained claim amendments. I'll discuss these claim construction issues in a future post.

Finally, it's worth mentioning that when the Examiner added the § 103 rejection for the first time, he also maintained the anticipation rejection – while at the same time acknowledging that the reference didn't describe a single composition with all the components "in one place." The  Examiner explained anticipation as follows:

[B]efore the contents of the container with oxidizing agent is mixed with the surfactant solution, the solution clearly lacks an oxidizing agent. This is the rationale because of which Examiner concludes Durmowicz et al. does teach a solution that lacks an oxidizing agent.

The Applicant traversed the § 102 rejection on the basis of the Examiner's admission, and the Examiner then withdrew it, before the Applicant appealed.

PTAB reverses when Examiner provides no explanation for why claimed "blender" reads on "charging nozzle"

Takeaway: The Applicant appealed an obviousness rejection of claims to a process of manufacturing a multi-phase liquid composition. The method claim recited a transferring and a blending step involving a "blender," and the Examiner mapped the blender to a "charging nozzle" in Tanaka, a US patent reference. The Examiner gave no further explanation for the mapping, and one of the arguments made by the Applicant on appeal was: "The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender." The Board reversed the obviousness rejection. The Board first (summarily) agreed with the Applicant about Tanaka: "We fail to understand how charging nozzle 1 of Tanaka constitutes a 'blender.' " The Board also agreed with the Applicant that the purported benefit to the combination was not supported by evidence: "[T]he Examiner does not explain through evidence or technical reasoning how Tanaka's device, as modified, 'would increase the number of three dimensional patterns of the Tanaka apparatus.' "

Details:
Ex parte Wei
Appeal No. 2013-001316; Serial No 10,837,214; Tech. Center 3700
Decided:  January 30, 2015

The application on appeal was directed to a process of manufacturing a multi-phase liquid composition. A representative claim on appeal read:

     25. A process for making patterned multi-phase liquid compositions wherein upon dispensing said multi-phase liquid compositions from a container, phases of said multiphase liquid compositions are dispensed evenly from said container, said process comprising:
     placing a plurality of liquid phases in separate vessels equipped with supply lines for transferring said phases from said vessels;
     transferring, via said  supply lines, predetermined amounts of each of said liquid phases from each of said separate vessels into a combiner which aligns each  of said liquid phases in at least one of the following: one of said liquid phases is aligned within another of said liquid phases, said liquid phases are aligned side by side along a common line, or said liquid phases are combined into one line;
     transferring said liquid phases from said combiner to a blender;
     blending said liquid phases together, via said blender, to produce a multiphase liquid composition having equal volume ratios of one phase to another;  and
     transferring said multi-phase liquid composition to an individual product container via a delivery nozzle,
     wherein said individual product container is received at a bottle holding device and secured to a rotating platform attached to said bottle holding device, and
     wherein said individual product container is rotated, via said rotating platform, when said multi-phase liquid composition is transferred to said individual product container via said delivery nozzle.

One of the issues on appeal was the meaning of "blender."

The Examiner rejected the method claim as obvious over Tanaka in view of Yamazaki. Tanaka was a US patent claiming priority to a Japanese application. Yamazki was a published Japanese application. Both were cited in an IDS, and the Applicant provided a translation of Yamazaki.

The Examiner relied Tanaka for everything except the "equal volume ratios" limitation, and on Yamakazi for that. The rejection as applied to Tanaka consisted of a recitation of the claim language, with a reference number from Tanaka next to each structure in the claims. Here is Tanaka's FIG. 1, annotated by me with the Examiner's mapping of structure to claim terms. 

The Examiner didn't point to any text description in Tanaka, but here is the single sentence in Tanaka that mentions how structure 1 interacts with the other components in the system:

In the multiple charging nozzle 3, as shown in FIG. 1, the charging nozzle 1 is connected to one charger 5, and the sub-nozzle 2 is connected to the other charger 6 so that the transparent gel base and the coloring material are forced into the charging nozzle 1 and the sub-nozzle 2 from hoppers 7, 8 by piston cylinders 9, 10, respectively.

Thus, the structure 1 which the Examiner mapped to the "blender" is referred to in Tanaka as "charging nozzle."

On appeal, the Applicant argued that Tanaka did not disclose a "blender:"

Element 1 of Tanaka is a charging nozzle. The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender.
(Emphasis added.)

The obviousness rejection also asserted – in the alternative – that structure 5 in Yamakazi (labeled "mixing pipe") corresponded to the claimed "blender." The Applicant did not argue the Examiner's alternative reliance on Yamazaki's mixing pipe. However, the Applicant did make a "teaching away" argument as to the combination:

Tanaka found that [the mixer] wouldn't work because it didn't form a three dimensional pattern. Additionally, as the method described in Yamazaki is also related to producing a pattern on the surface (para. 21), not a three dimensional pattern as discussed in Tanaka, Applicants submit there is no motivation from the disclosure of Tanaka to modify its method to include a blender from Yamazaki as stated in the Office Action. In fact, Applicants submit it teaches away from the addition of the blender in Yamazaki as Tanaka desires a three dimensional  pattern.

In the Answer, the Examiner asserted that this teaching away argument (i.e., Tanaka found the mixer wouldn't work) did not take into account the combination actually relied on by the Examiner. The Examiner's combination used a blender (not a mixer) from Yamakazi:

The blender of the Yamazaki reference specifically does not act as a mixer. In paragraph 21 Yamazaki describes designing the blender to avoid mixing the two fluid streams in order to preserve the visual pattern formed  by the separate materials. Therefore the applicant's argument that the Tanaka reference teaches away from mixing is not of any consequence to the proposed combination.

In the Final Office Action, the Examiner had profferred this rationale for adding Yamazaki's blender to the exit pipe in Tanaka's process: "to increase the number of different patterns which the Tanaka apparatus can produce." The Applicant attacked this rationale on appeal, arguing that the purported benefit to the combination was not supported by evidence:

The Office Action provided no support for why one of skill in the art would believe the addition of the Yamazaki blender for surface patterns would increase the number of three dimensional patterns of the Tanaka apparatus.
(Emphasis added.)

The Examiner addressed this argument in the Answer, contending that the Applicant had not fully appreciated Yamazaki:

The fact that the pattern is visible on the surface of the product [as taught in Yamakzai para. 21] is not an indication that the pattern does not extend into the body of the product, merely that the materials in question are opaque; more of the pattern becomes apparent as the surface of the product is worn away by use. The applicant's argument that the Yamazaki blender forms a two dimensional pattern only and is therefore not fit to combine with the Tanaka apparatus is based on an erroneous interpretation of Yamazaki, which clearly extrudes material in a three dimensional pattern.

The Board reversed the obviousness rejection. The Board first summarily agreed with the Applicant's argument about Tanaka: "We fail to understand how charging nozzle 1 of Tanaka constitutes a 'blender.' " Notably, the Board did not make explicit findings as to whether Yamakazi disclosed the claimed "blender," but merely noted (without comment) the Examiner's alternative reliance on Yamakazi's mixing pipe. The remainder of the decision focused on the rationale for combining.

The Examiner's rebuttal in the Answer focused on the Applicant's mention of surface patterns vs. three dimensional patterns. According to the Board, the Answer did not address the thrust of the Applicant's argument. The real issue was the number of patterns, since an increase in this number of patterns was the Examiner's reason for combining. However, the Examiner did not explain why a POSITA would expect such an increase:

More specifically, the Examiner does not identify how many patterns Tanaka discloses. However, it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds Tanaka discloses discharging a spiral pattern (see Ans. 6 (citing Fig. 4)). Similarly, the Examiner does not identify how many patterns Yamazaki discloses, but it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds that Yamazaki discloses "extrud[ing] material in a three dimensional pattern" (Ans. 7). Hence, the Examiner's findings evidence that Tanaka discloses one pattern and Yamazaki discloses one pattern. Additionally, the Examiner does not identify how many patterns Tanaka's device, as modified by Yamazaki's teaching of blender (5), would produce.

My two cents:  I'm not familiar with the term "charging nozzle," and was curious as to whether its meaning is anything close to blender, as alleged by the Examiner. In patents originally filed in English, the most common usage of "charging nozzle" seems to be in context of electrostatics, where "charging" refers to electric charge. However, when "charging nozzle" shows up in patents translated from Chinese or Japanese, it seems to mean "nozzle for filling with gas or liquid." I think this is the sense used in the Tanaka reference. In fact, the machine translation of Tanaka's Japanese language priority document refers to structure 1 as a "filling nozzle." So what could the Examiner have been thinking, asserting that Tanaka's filling/charging nozzle mapped to the claim term "blender"? 

The Examiner gave zero explanation for the mapping – didn't even point to a particular portion of Tanaka's description. But I wonder if the Examiner simply looked at Tanaka FIG. 1, saw that the transparent gel from hopper 7 meets the coloring material from hopper 8 in nozzle 1, so concluded that this meeting of two materials constituted "blending" and the structure in which this action occurred was therefore a "blender." 

Maybe that's the Broadest Reasonable Interpretation, and maybe it's UNreasonably Broad. I'll assume that any structure that effects "blending" is considered a "blender." Even if that's true, this interpretation is reasonable only if a meeting of two liquids in a confined area is considered "blending" -- and UNreasonable if that involves more vigorous action. 

Because the Examiner didn't explain his interpretation, the Applicant didn't have much to argue against – unless the Applicant chose to engage in pure speculation, as I did above. This Applicant chose not to, and instead threw it back on the Examiner: "The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender."

Often when neither side explicitly raises claim interpretation as an issue, the Board takes it upon itself to determine the Broadest Reasonable Interpretation. I was surprised that didn't happen here. Instead, the Board essentially agreed with the Applicant that the Examiner didn't provide enough explanation.

Though it wasn't framed this way, the Board's adoption of the Applicant's position  – the Examiner didn't explain  – makes me wonder if the Board was thinking in terms of Examiner burden. In other words, perhaps the terms "blender" and "charging nozzle" are different enough that a mere assertion by the Examiner that the claim term reads on the reference term isn't enough? Such that all the Applicant has to do is challenge the Examiner's assertion, rather than explaining why the claim term does not read on the reference term?

I wish this decision was one in which the Board imposed an Examiner requirement to put an explicit claim interpretation on the record. But I'm not all sure that's what's happened here. Nor do I recall ever seeing a discussion of burden as it relates to claim interpretation at the Board. In fact, it's fairly common for the opposite to happen: for the Examiner to offer no interpretation at all for a claim term, and still have the Board adopt the Examiner's "findings" and ding the Applicant for not explaining why the claim term doesn't encompass the reference term. So as a practical matter, the Board seems to put the burden on the Applicant to put forth a claim construction, or at least to explain why the Broadest Reasonable Interpretation of the claimed "widget" does not read on the "blodget" in the reference.


Here, the Examiner should have connected the dots by saying "charging nozzle 1 is where two liquids meet, so they undergo some degree of blending, and thus charging nozzle 1 is a 'blender.' " Since he didn't, I would probably raised this issue myself, either in a response or in an Examiner Interview.  Usually, the Examiner will either acknowledge that my understanding of his position was correct, or will correct my misimpression and tell me what he was thinking. Once I understand the Examiner's position, I can better evaluate whether I should stick to my arguments or amend.

Failure to address claim construction is a huge driver of prolonged prosecution. And failure on the part of Applicants to take into account Broadest Reasonable Interpretation explains most of the high rate of affirmance at the Board. So until there's a requirement for the Examiner to put claim construction on the record, Applicants should consider raising the issue of BRI, even if the Examiner doesn't. 

Examples of abandonment after failure to handle drawing requirement

In this post, I'll discuss some applications that went abandoned because the Applicant didn't properly handle drawing objections or requirement that occurred at the last stage of prosecution. The takeaway I see here is that even if you disagree with the drawing requirement/objection itself, or with the PTO's handling of something, you can't just ignore it. You should instead respond as required, and if you think the Examiner is wrong, handle it via petition, as required by the rules. And yeah, fighting it always means extra effort and sometimes real money (EOT fees, petition fees). But those are the rules. 

Application 11/776,390 (history available on Public PAIR) went into appeal with several drawing objections present in the last Office Action before appeal. The Board reversed the Examiner's rejection of one independent claim, and the Applicant filed an RCE to take the allowable subject matter. However, the Applicant did not address the outstanding drawing objections in this reply. The Examiner sent a Notice of Abandonment and indicated that the RCE was improper and thus "any time period running was not tolled by the filing of the improper request." The Applicant's reply "did not address the outstanding objection in the Miscellaneous Action mailed 11/15/2013, as required, and therefore is improper."

Application 11/461,132 (history available on Public PAIR) received a Notice of Allowance, but the Examiner's Notice of Allowability indicated outstanding issues with the drawings. The summary sheet of the Notice of Allowability checked the box "Corrected Drawings must be submitted, including changes required by the attached Examiner's Comment." The Detailed Action explained that formal drawings in compliance with 37 CFR 1.121(d) were required because the originally filed drawings "are not formal (i.e, uniformly thick numbers and lines, etc.)." The PTO sent a Notice of Abandonment after the Applicant paid the issue fee but did not submit new drawings. 

In Application 11/461,084 (history available on Public PAIR) , the very first Examiner communication was an Ex Parte Quayle Action indicating all original claims were allowable. However, no drawings were filed with the application, and the Action also required the Applicant to submit a drawing since "the subject matter admits of illustration by a drawing." Two months after the Ex parte Quayle Action, the Examiner sent a Notice of Abandonment, indicating a failure to reply to the Ex parte Quayle Action. Two weeks later, the Applicant filed a Petition to Withdraw the Holding of Abandonment, arguing that extensions of time under 1.136 were available for an Ex parte Quayle Action, so that the application was not in fact abandoned at the two-month mark. The Petition also requested that that the period for reply to the Action be reset "in order to place the Applicant in substantially the same position as he was when this Petition was filed." Notably, the Applicant did not submit the drawings along with this Petition. The Petition Decision withdrew the holding of Abandonment, but did not reset the reply period. With no drawings submitted and the clock on the Ex parte Quayle still running, the Applicant filed a 3-month extension of time with a Response arguing that no drawings were necessary. The Examiner withdrew the drawings requirement and issued a Notice of Allowance.

In Design Application 29/356,231 (history available on Public PAIR), the Applicant filed a Preliminary Amendment about six weeks after filing to amend the drawings "to provide proper indication, in Fig. 1, of the longitudinal sectional view show in Fig. 2." Only four days after those drawings were filed, the Examiner sent a Notice of Allowance. The Notice of Allowability indicated that "corrected drawings must be submitted including changes described in the attached Examiner's Amendment/Comment."  In that attachment, the Examiner indicated that the drawings were objected to because Fig. 7 cross-sectional view wasn't referenced in any other figure. "That is, there are no directional arrows with numerals at the end that shows from which the view is cut."  The Applicant paid the Issue Fee but did not file drawings in response to Notice. The PTO sent a Notice of Abandonment, which the Applicant petitioned. In the Petition, the Applicant pointed out that drawings addressing the objection were in fact filed, four days before the Examiner's action. The Petition Decision upheld the abandonment, noting that the Notice of Allowance "clearly required drawings" and that the Applicant did not file a reply to this Notice as required by the statute. 

The Applicant filed a Request for Reconsideration arguing that the drawings did in fact comply with the outstanding requirement, and it was irrelevant that this submission was made before the Notice. However, the Petitions Office maintained its position, explaining that "it is clear that the Examiner made a requirement for drawings after these drawings [in the Preliminary Amendment] would have become part of the official application." The Applicant then revived the application for unintentional abandonment, including the drawings with the revival petition, and the patent issued.

Tips for arguing Unexpected Results Arguments to overcome obviousness

MPEP Sections 716 and 2145 provide a good primer on arguing unexpected results in order to overcome obviousness. This post will dig into the topic in a little more detail, by discussing some PTAB appeal decisions where the Applicant made an unexpected results argument.

The case law of obviousness requires that assertions of unexpected results be supported by evidence. Attorney argument alone is not sufficient. Improper use of attorney argument to show unexpected results was at play in Ex parte Wong and Ex parte Roberge.

The claims in Ex parte Wong (PTAB 2013) were directed to an orthodontic adhesive, and recited a specific ratio of working time to curing time. The Applicant argued that the properties of the adhesive were unexpected. The Applicant supported this argument by presenting in the arguments section of the Appeal Brief, data from testing of the prior art composition. The Board dismissed the test data on two grounds. First, the data wasn't entered into the record before appeal, as required by the rules governing appeal. Second, the data was presented as unsubstantiated argument of counsel, when evidence was required.


The claims in Ex parte Roberge (PTAB 2014) were directed to an engine fan nozzle with a protective coating. The Applicant explained that ice build-up on the nozzle reduced the nozzle's effective area,
which in turn affected efficiency of the engine. The protective coating prevented this reduction in nozzle area and in engine efficiency. Furthermore, a POSITA wouldn't expect the Examiner's combination to achieve this result, since in the reference the coating was used on an airfoil, where ice build-up affects aerodynamics of the airfoil rather than engine efficiency. However, this discussion appeared only in the Appeal Brief, without citation to the specification or to a declaration. The Board was not persuaded because the Applicant had "cited no specific evidence in support of their contention of unexpected results to rebut [the Examiner's] prima facie case." The Board cited In re Lindner, 457 F.2d 506, 508 (CCPA 1972).

Evidence of unexpected results can be presented in an expert declaration or in the specification, but naked assertions are not enough. Ex parte Bailey and Ex parte Eriksson show that an explanation must be provided as to why the results are unexpected.

In Ex parte Bailey (PTAB 2014), the application was directed to an "undercarriage brake light system." The Specification noted an advantage of the claimed 360o configuration:

It illuminates under the entire undercarriage providing extra visual safety to drivers when you are braking. Since visibility is 360 degrees, drivers following your vehicle and also those at intersections and those merging or yielding are alerted to your braking.

The Applicant referred to this advantage when arguing unexpected results. But the Board noted two deficiencies in the argument:

Appellant has not presented corroborating evidence that confirmation of braking to an approached vehicle constitutes an unexpected advantage. See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (“One way … to rebut a prima facie case of obviousness is … to show … some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.” (Citation omitted)). Rather, Appellant cursorily mentions the advantage within the Specification, which is insufficient. See In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“[C]onclusory statements in the specification, unsupported by objective evidence, are insufficient to establish unexpected results.” (Citation omitted)).
(Emphasis in original.)

The application in Ex parte Eriksson (PTAB 2014) was directed to a stabilizing device for a manufacturing process. The claims included opposing electromagnetic stabilizers and opposing sensors. The specification briefly mentioned an advantage of this feature :

The stabilizing device, which is arranged to stabilize the position of the object with respect to the predetermined transport path, comprises at least one first pair of electromagnetic stabilizing members arranged adjacent to the air-knives and on each side of the strip. Since the air-knives and the electromagnetic stabilizing members are arranged adjacent to each other to reduce the movement of the object perpendicular to the direction of transport, an optimal damping of the vibrations is achieved at the region between the air-knives.

The obviousness rejection modified a stabilizer in the primary reference to use opposing sensors and opposing electromagnetics as taught in the secondary reference. The Applicant argued that, when combined, the differences between the two references would change their respective functions and thus would not produce predictable results. The Applicant concluded this argument by mentioning the above advantage that was briefly discussed in the specification:

The [claimed] arrangement provides superior stabilization, as described in the specification at p. 5, ll. 9-14. By applying magnetic force to both sides of the magnetic strip, the claimed invention can help to ensure that the metallic strip follows the predetermined transport path.

The Board found that the assertion of superior stabilization was "not supported by factual evidence". The Board cited to several Federal Circuit cases: In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results must be established by factual evidence.”); In re Hoch, 428 F.2d 1341, 1343-44 (CCPA 1970) (evidence must provide an actual comparison of the properties of the claimed invention with the disclosure of the reference); cf., e.g., In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991).

An explanation of how the claimed feature leads to the result, plus characterization as unexpected, is still not enough. The Applicant must also convince the Board of the unexpectedness. This is illustrated by Ex parte Grispo and Ex parte van der Pol.

The Applicant in Ex parte Grispo (PTAB 2013) argued that the result was unexpected, but the Board saw the result produced by the claims to be the same as the result produced by the reference. The application was directed to a process of purging a dual head injector when injecting contrast during a diagnostic imaging procedure. One feature contested on appeal was the ordering of steps to advance the contrast plunger and the saline plunger. The Examiner did not rely on a particular reference to teach the claimed ordering, but instead took the position that "changes in sequence are prima facie obvious in the absence of new or unexpected results" (citing MPEP 2144.04(IV)(C)).

The Applicant argued that this rationale was improper for a critical limitation and explained its criticality: the claimed order "reduces the waste of relatively expensive contrast, purges air prior to injection, and does so in ... a simple two-step process." However, the Examiner found that one of the references actually “discloses the 'exact reasoning and criticality' for the air purging steps.” The Board agreed, and said the unexpected results argument failed because the Applicant did not provide "persuasive reasoning or credible evidence that the claimed invention achieves any advantage over, or even any result different from, [the Emig reference]." (Emphasis added.) The Board cited In re Hampel, 162 F.2d 483, 485 (CCPA 1947).

The Applicant in Ex parte van der Pol (PTAB 2014) argued the result was unexpected, but the Board viewed the result as inherent. The Examiner modified the UV lighting system of the primary reference to use the non-linear bulb shape from the secondary reference. The Applicant argued that the inventor had recognized advantages of the non-linear shape: reducing resistance of the air flow around the bulb (citing to the spec). The Board dismissed this argument because the Applicant didn't show that "these advantages would have been unexpected by one of ordinary skill in the art, rather than just inherent when using a spherical bulb for its known and conventional use as a UV germicidal lamp." The Board cited In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
   
Sometimes the Board isn't persuaded because the unexpected results arguments and evidence are contradicted by the explicit disclosure of the references. The application in Ex parte Strebelle (PTAB 2011) was directed to a chemical process for regenerating a catalyst that was used in a hydrogenation reaction. The claimed regeneration process included heating one of six listed Group VIII metals with oxygen at a specific temperature range. The primary reference in the obviousness rejection, Vollheim, disclosed the hydrogenation reaction recited in the process claim, and "mentioned regeneration is possible but without explicitly stating a method." A secondary reference, Welty, taught "catalysts of similar makeup (Group VIII elements) for use in "similar processes (cracking and reforming)", plus the claimed method of regeneration: heating the catalyst in the presence of oxygen at the claimed temperature range.

On appeal, the Applicant argued that the discovery of catalyst regeneration under the claimed conditions was unexpected. The Applicant's own specification had acknowledged the "possibility in theory of regenerating" the catalyst mentioned in Vollheim, but explained that others had found that heavy metal contamination renders regeneration "fruitless" (citing a journal article co-authored by Vollheim and Muller). The Applicant supported the unexpected results argument with an expert declaration that characterized the claimed catalyst regeneration as "completely surprising" in view of the "clear belief by other that it was not possible to regenerate such catalysts." In the Answer, the Examiner noted that "a prior art reference must be considered in its entirety," and Vollheim "clearly acknowledges that regeneration is possible. The Board was not persuaded by the unexpected results argument. The Board found that the Muller/Vollheim article did not explain the process and results in enough detail to support a finding that catalyst regeneration was fruitless, and thus did not credit the Applicant's characterization of the claimed catalyst regeneration as unexpected. 

PTAB pilot program: abandon one appeal and get special priority for another appeal

Late breaking news from Carl Oppedahl's blog: a brand new pilot program at the PTAB allows an Applicant to get special priority for one application already on appeal, by withdrawing the appeal of another application. "Special priority" means a PTAB "goal" of appeal decision no more than 4 months after the petition for special status is granted.

See Carl's post here for full details, and here's a link to the Federal Register Notice. Be sure and read Carl's warning about careful handling of the application withdrawn from appeal.

The PTAB says this program runs until June 19, 2016, or until 2,000 appeals are made special, whichever comes first. The PTAB may choose to extend the program, depending on the results of the pilot. The "Pre Appeal Brief Conference" (PABC) program has been around since 2005 – and is still officially a "pilot pogram." Not sure if it makes any difference, but the PABC is administered by the PTO generally, where this new one appears to be administered directly by the PTAB. 

PTAB finds Applicant arguments about misleading terms in translated reference were not supported by evidence

Takeaway: An Applicant argued on appeal that a German patent reference didn't disclose the claim limitation "helically extending" despite the presence of "setscrew," "grub screw," and "screwed in" in the English translation. According to the Applicant, the terminology used in the reference could also be used to describe a twist-and-lock structure which did not include helically wound threads. The Applicant also pointed to the lack of a clear illustration of helical threads, the fact that the drawing was "poorly described" with only a paragraph of text, and the fact that the reference was translated from German to English. The Board affirmed the Examiner's rejection. The Applicant's arguments about the drawings were contradicted by the express teachings of the text. The arguments about the terms used by Schraber were presented as attorney argument and were not supported by evidence. The Board cited In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) for the proposition that "argument by counsel cannot take the place of evidence)." (Ex parte Jackson, PTAB 2012.)

Details:

Ex parte Jackson
Appeal 2010-011356; Appl. No. 10/784,066; Tech. Center 3700
Decided:  March 16, 2012

The application on appeal was directed to a bone screw used in spinal surgery. A portion of a representative claim on appeal read:

     1. A closure for setting engagement with a structural member and comprising:
     (a) a substantially cylindrical body having an outer cylindrical surface ...
     (b) a guide and advancement flange extending helically about said outer cylindrical surface ....
     (c) at least one of said leading surface or said trailing surface [of the flange] being compound in contour and including an inward anti-splay surface component facing generally toward said closure axis...

Claim 1 was rejected as obvious over Schafer (a German patent) in view of Jackson (same inventor as application on appeal). The Applicant identified Schafer in an IDS, and provided a full translation with the IDS.

The main dispute in prosecution revolved around the teachings of Schafer with respect to the claim limitation "a guide and advancement flange extending helically." The Examiner took the position that this feature was disclosed in Schafer's FIG. 2 (below).

Three lines of argument developed during prosecution. One argument focused on the meaning of "helically wound" (although this precise language wasn't in the claim). A second argument focused on what a POSITA would understand from Schafer's drawings. The third argument related to Schafer's textual description, as translated into English from the original German.

In the first response, the Applicant explained that the perspective view of Schafer's FIG. 2 made it "hard to determine if it has a pitch of any kind," but "comparing the flange shaped openings in comparative spacing from the edge of the seat, indicates that there is no conventional thread positive pitch present on the flanks of the structure" (emphasis added). The Applicant concluded that Schafer's flange was a "twist screw in and lock structure" rather than a helical structure.

Although the Applicant's initial response didn't explicitly discuss claim construction, the Examiner addressed claim construction in the next Office Action. The Examiner explained that "any angular movement in the structure satisfies 'helically wound' as the claims don't set forth a minimum amount of winding." Further, "pitch need not be 'conventional' to be present and 'conventional' is not recited in the claims."

In a Response to the second Office Action, the Applicant argued that even though pitch wasn't in the claims, the phrase "helically wound" nonetheless implied something about pitch. The Applicant used an annotated Schafer FIG. 2 (below) to explain that Schafer's flange would be helically wound only if D2 > D1 and D4 > D3. But since these conditions did not hold, Schafer's flange was not helically wound.

The Applicant also discussed the text description of FIG. 2 that appeared in the of-record translation of Schafer (supplied earlier by the Applicant with an IDS), which read:

In the exemplary embodiment shown in Figure 2, the bifurcated head 4 of the bone screw 1 likewise has a thread, which, however, has a top flank 11 and a bottom flank 10 embodied in a stepped fashion. The shoulder of the bottom flank 10 is shaped such that it forms an undercut 17. This undercut 17, particularly by means of the shoulder 18, prevents the legs 5 from being bent radially outward while the grub screw 3 is being screwed in. A positive lock is thus produced in the radial direction between the bifurcated head 4 and grub screw 3. This positive lock prevents, as previously mentioned, any slippage of the leg 5.
(Emphasis added.)

Based on the drawing and this text, the Applicant urged that FIG. 2 was a "twist and lock" structure in which "projections are screwed or rotated ninety degrees into the receiver," rather than a "structure that will helically rotate into the receiver" as claimed.

The Examiner maintained the rejection in the next Office Action. The Examiner explicitly discussed claim interpretation: "helically wound just means it progresses in a spiral or helical fashion, i.e. is threaded (as opposed to 'twist-lock' designs)." The Schafer text actually relied on by the Applicant "teaches not only that the device has threads but that the anti-splay grub screw is screwed in" (emphasis in original). Thus, "it is quite clear that Schafer discloses a 'threaded' structure (i.e., a helically wound flange structure)."

The Applicant filed one more response before appeal and addressed the Examiner's latest contentions.
According to the Applicant,

There is nothing that requires a "grub screw," as it is translated from German, to be helically wound. Such a screw can have mating portions that rotate, for example, 90°, into each other and such are well known. It is believed that this is what is shown in the German [Schafer] reference.

When the Examiner maintained the rejection, the Applicant appealed. In the Appeal Brief, the Applicant noted that FIG. 2 was "only a partial cross section of the receiver" and the corresponding text was limited to "a single paragraph." The Applicant characterized the embodiment of FIG. 2 as "poorly described" and "apparently added as a quick afterthought." According to the Applicant, a POSITA would see in FIG. 2 that all 7 tiers of the receiver were equally spaced from front to bottom on front and back and essentially horizontal, i.e., did not have a pitch. This was contrary to the meaning of "helically wound," which implied that each tier has a pitch going from one tier to the next with each 360° revolution.

The Applicant then made this point by including FIG. 2 next to a FIG. 2 modified to be helically wound). The juxtaposition allowed a POSITA to "immediately see" that Schafer's FIG. 2 was a twist-and-lock structure rather than a helically wound structure.

Moving from drawings to text, the Applicant acknowledged that the German Schafer patent, as translated, referred to a grub screw "screwed into" a thread in describing FIG. 2. The Applicant also briefly acknowledged that Schafer used the phrase "screwed in" in describing the embodiment of FIG. 1. But according to the Applicant, this terminology wasn't dispositive:

[T]he term screw can mean simple rotation into something. ... A structure that mates upon rotating 90° can be called a grub screw and rotation or twisting can be interpreted and translated from the German into English as being "screwed in" in the Schafer disclosure to distinguish from the closures that are slid in sideways without rotating.

A POSITA looking at Schafer, as a whole and in context, would understand that the FIG. 2 receiver was not helically wound. Furthermore, a POSITA would also understand that Schafer's "closure and receiver are aligned and the closure twisted or rotated 90° to secure them together." 

In the Answer, the Examiner first reiterated that the Schafer translation relied on by the Applicant used the terms "threads and "screw." The Examiner then referred to a full translation provided with the Answer, and pointed to additional mentions of "threading" and "screwing in the setscrew." (This document was identified as "Full translation of Schafer (DE 298 10 798 U1), Schreiber Translations, Inc., May 2010.")

Moving on to address the Appeal Brief arguments, the Examiner asserted that the Appellant's "opinion" that Schafer disclosed a non-threaded design was "irrelevant since it overlooks or misconstrues what the reference explicitly says, namely, that the design shown in Fig. 2 includes a threaded set screw that is screwed in." (Emphasis added.) And although the closure itself wasn't illustrated, the text of Schafer said that the "closure is 'setscrew 3' and that it forms a friction-lock with the undercut 17 and lug 18 of the thread of the head 4 (translation, page 10, lines 5-7)."

The Examiner also criticized the Applicant's "exaggerated" side by side drawings: 

[G]iven the very small portion of the entire circumference of the threads that is actually shown, the purported pitch imagined by Appellant is unnecessary for a helical thread and implausible in a single-start thread design (only one helical thread ridge). The angle that is necessary for the threads of Fig. 2 would not be extreme (as in Appellant's sketch) in the very small portion of the circumference that is shown in the basic drawing of Fig. 2.

In the appeal decision, the Board found that Schafer did disclose the limitation at issue. The Board first addressed the text of Schafer, and its use of terms such as "screw" and "screwed in." The Board acknowledged Applicant's argument that the context of Schafer would lead a POSITA to understand these terms differently from normal English usage. However, the Board agreed with the Examiner's reading of Schafer and further noted that "argument by counsel cannot take the place of evidence, citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).

Turning to the Applicant's arguments about Schafer's drawing, the Board first found these arguments ran counter to Schafer's express teachings in the text (i.e., "grub screw," "screwed in"). Moreover, the Board was not persuaded by the Applicant's side-by-side comparison. Instead, the Board agreed with the Examiner that "given the 'very small portion of the entire circumference of the threads' illustrated in Schäfer‟s figure 2, a conclusion cannot be drawn as to the pitch of the threads."

Finally, the Board considered an argument about the secondary reference and found it not persuasive. As a result, the Board affirmed the § 103 rejection.

My two cents: There are several lines of argument at play here.

• Inferences made from a drawing. 
• Overcoming literal teachings of a reference by arguing that the reference really doesn't mean what it says. 
• Attorney argument.
• Translation errors.

Considering the point of whether the FIG. 2 drawing alone showed a helically wound thread, I think the Board got this one wrong. According to the Board, the Applicant made unsupported inferences about thread pitch. Maybe so, and maybe the Applicant overreached with the side-by-side drawing. But the Examiner didn't convincingly show that the FIG. 2 drawing itself illustrated helical winding.  So I think the Applicant won that round.

Even so, the linchpin of the Applicant's argument was overcoming the literal teachings of a reference. Words like "screwed in" and "setscrew" and "grub screw" strongly suggested helically wound threads. The Applicant fought hard to convince the Board that, despite these terms, Schafer's closure structure actually twisted or rotated into alignment with the receiver, and this twist-lock behavior did not require helical threads.

I thought the Applicant did a good job of marshaling facts to put together an argument against ordinary meaning. But in the end, this amounted to nothing but attorney argument. The Applicant should have entered evidence in the form of definitions, technical articles, or an expert declaration. I see no bright line rule for when it's appropriate for the attorney to expound upon the teachings of the reference, and when evidence is needed. But when the core of the argument is what a term means, I think you need evidence.

Finally, the Applicant may have held back the strongest argument. To me, the Appeal Brief statement "rotation or twisting can be interpreted and translated from the German into English as being 'screwed in' " was a hint that the translation from German to English was in error. But the Applicant didn't make this point explicit. And this making this argument would certainly require evidence.

If you wanted to argue translation error, what sort of points would you make and what sort of evidence would you submit? Are machine translations more vulnerable here?

PTAB reverses indefiniteness rejection of claim using trademark Java

Takeaway: The Examiner rejected as indefinite the phrase "parsing the at least one Java annotation" on the grounds that Java was a trademark. The Examiner referred to MPEP 2173.05(u) , which directed the Examiner to reject a claim as indefinite when a trademark was used to identify a product. The Applicant appealed and argued that the relevant inquiry was whether a Person of Ordinary Skill In The Art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." According to the Applicant, the term was not indefinite because Java was understood by a POSITA to refer to "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.” The Board agreed with the Applicant and reversed the indefiniteness rejection.  (Ex parte Nikolov, PTAB 2015.)

Details:

Ex parte Nikolov
Appeal 20130000274; Appl. No. 12/314,706;  Tech. Center 2100
Decided:  March 25, 2015

The application on appeal was directed to web software that manipulated objects in a Service-Oriented Architecture (SoA) registry. The Specification acknowledged the existence of various application programming interfaces (APIs) that allowed programmatic access to an SoA registry. The same section mentioned one of these APIs: "the Java API for XML registries (JAXR). "

The Examiner rejected independent claim 1 as indefinite because the "trademark / trade name 'Java' [was used] to identify a programming language." The term "Java" appeared in the preamble ("accessible through a Java API for XML registries (JAXR)" and in the body ("parsing the at least one Java annotation").

The Examiner cited the (non-precedential) Board decision Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). According to the Examiner, Simpson meant that "when a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.”

 The Applicant traversed the indefiniteness rejection, and made five separate arguments:

• Java identifies the product (the programming language) rather than the source of the product
• the goods associated with the Java mark do not include "programming language"
• the mark in Ex parte Simpson was indefinite since it did not adequately convey properties of the material, where "here there is no such uncertainty regarding what 'Java' conveys"
• it's "illogical" to treat Java and C++ differently in a claim simply because the former is trademarked and the latter is not
• thousands of issued patents include Java in the claims

In a Final Office Action, the Examiner noted that MPEP 2173.05(u) governed the use of trademarks and trade names in a claim: "if a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.” Responding to the Applicant's mention of C++, the Examiner indicated that an amendment to C or C++ would result in "similar 112 2nd rejections of indefiniteness regarding the use of trademarks or trade names. Responding to another Applicant points, the Examiner considered the "thousands of issued patents with Java in the claims" to be an "interesting statistic," but noted that applications are examined on a case by case basis. The Examiner therefore invited the Applicant to analyze some of these patents and to "present any common facts that trigger an exception to the rules of trademarks in claims," then explain "why this case similarly triggers an exception."

In the same Final Office Action, the Examiner discussed Ex parte Simpson in further detail:

     [Simpson] specifically provides that questions regarding a well-known meaning / satisfactory definition in the literature are questions that resolve around a 35 USC 112 1st rejection for sufficiency of written description for a "name used in trade" ... "We have considered MPEP(v) and note that all address the issue of enablement of a written description under 35 USC, first paragraph."
     Similar to Ex parte Simpson, no enablement rejection has been made. Similar to the Ex parte Simpson court, the Examiner declines to extend the enablement prong of the test of proper use of a trade name to cover indefiniteness of a registered trademark.

On Appeal, the Applicant argued that the use of Java in the claim did not render the claims indefinite per se. The inquiry for indefiniteness was whether a person of ordinary skill in the art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." The Applicant concluded that “a person of ordinary skill in the art would understand what is meant by ‘Java annotation’ and . . . ‘Java API for XML registries’”  because Java was "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.”

The Board agreed with the Applicant and reversed the indefiniteness rejection. The Board found this scenario "closely analogous" to a different non-precedential PTAB decision, Ex Parte O’Farrell (PTAB 2014). The Board explained as follows:

The O’Farrell panel held that the recitation of the trademark “Java” was not indefinite because “ 'Java' is a well-known and widely-used term identifying a particular programming language.” Id. Similarly, we find one of ordinary skill in the relevant art would have understood “Java” in the context of the “Java annotation” and “Java API for XML registries” to refer to the programming language known by that name at the time of Appellants’ invention.

My two cents: There's no doubt in my mind that Java is understood by a POSITA. And since that's the ultimate question when resolving indefiniteness, I say the Board got it right. The name of a programming language is fundamentally different than the name of a chemical composition. Using the trademark of a chemical composition is a problem because the nature of the composition could changes, so you don't know if you infringe or not. On the other hand, as long as a newer version of Java includes the annotation feature, a POSITA still understands "Java annotation" and is thus put on notice of infringement. And if the annotation feature is removed in a future version of Java, yet a patentee asserted against an infringer using an annotation-less Java, well, the claim could be found indefinite at that later time. 

Some of the Applicant arguments made during prosecution dug into trademark specifics (product vs source of product, associated goods), and I give some points to the Applicant for getting creative here. On the other hand, the "other patents use this language" argument is weak, and I didn't find the Java vs. C++ consistency argument to be compelling either. I think both the Applicant and the Examiner got derailed with the lengthy discussion of the MPEP and it's use of Ex parte Simpson. Responding to every single point made by the Examiner is not always the best strategy. The Appeal Brief would have been stronger if the Applicant had demonstrated that a POSITA understood Java, briefly distinguished Simpson, and stopped there.

The Board's finding that the meaning of Java was tied to the time of the invention highlights an interesting issue, because programming languages do change over time. With literal claim scope limited to Java at the time of filing, it would seem Doctrine of Equivalents is needed to expand to future versions of the language. But of course all claim terms are interpreted as of the time of invention, which makes the Board's finding just a reminder of something we should already know.

The PTAB decision mentioned in the MPEP and relied on by the Examiner, Ex parte Simpson, doesn't appear to be freely available online. The 1983 decision date is far too old for the PTAB's own decision database, and even too old for the BPAI decisions archive maintained by Franklin Pierce School of Law. 

PTAB affirms indefiniteness when CRM claim recites human action ("subscribe")

Takeaway: In an application for a computerized valuation platform, the Examiner rejected a computer-readable medium claim as indefinite. The Examiner took issue with the phrase "subscribing to the web-based valuation service," asserting that the word "subscribe" implied a human action, which conflicted with the claim's recital of a method performed by computer instructions. The Applicant argued that the action was done through computer instructions, at the request of a user. In support of this argument, the Applicant presented a dictionary definition ("to obtain a subscription") which did not mention performance by a human. The Board found that the definition offered by the Applicant did involve human activity, and thus affirmed the rejection. (Ex parte Allaway, PTAB 2014.)

Details:
Ex parte Allaway
Appeal 2012-006215; Appl. No. 11/009,547; Tech. Center 3600
Decided:  December 15, 2014

The application on appeal described a computerized valuation platform for intellectual property assets. During prosecution, the Applicant presented a system claim and a comupter-readable medium (CRM) claim. The CRM claim on appeal read:

     35. A computer-readable medium encoded with computer executable instructions .... , the instructions perform a method comprising:
      publishing at least one portable formula module defining one or more valuation formulas associated with an intellectual property asset at a network server that offers a web-based valuation service;
      subscribing to the web-based valuation service from a client device to access the at least one portable formula module;
      acquiring one or more values associated with variables of the one or more valuation formulas from a network database utilizing an automated acquisition that pulls information from the network database in response to a subscriber request;
      determining one or more valuation results associated with the intellectual property asset by executing the one or more valuation formulas using the acquired values; and
      displaying the determined one or more valuation results of the intellectual property asset valuation on an information presentation interface of the client device.
(Emphasis added.)

The Examiner rejected all claims under § 101 and § 103. The Examiner also rejected CRM claims 35 and 37 as indefinite. The Examiner explained that independent claim 35 was indefinite since "it is unclear how [a CRM] subscribes to a web-based valuation service (a human user activity)." (Emphasis added.) The Examiner used the same rationale for dependent claim 37, which recited "the client device further subscribing to ..."

During prosecution the Applicant argued against the indefiniteness rejection of independent claim 35. The Applicant first noted that the Examiner seemed "seem[ed] to rely on the notion that 'subscribing' is a human activity by its very definition." But according to the Applicant, the term was not given this meaning by the Applicant's disclosure, by the prior art, or by a POSITA (citing MPEP 2173.02). The Applicant also introduced a definition ("to obtain a subscription," from Dictionary.com), which did not mention performance by a human. Thus, the Applicant concluded that the indefiniteness rejection was improper.

The Applicant also addressed the indefiniteness rejection of dependent claim 37 by explaining that the " 'subscribing' is done at the behest of a user (presumably human) through a computer-readable medium encoded with computer-executable instructions." The Applicant asserted that the term was consistent with usage by a POSITA, and gave a specific example ("digital video recording device subscribing to a show at the behest of the user or having a server push content to a user's device or computer at the behest of a user.") The Applicant also referenced a portion of the Specification to support this interpretation.

In the next Office Action, the Examiner did not address the dictionary definition proffered by the Applicant. The Examiner did respond to the arguments for dependent claim 37 by commenting on the portion of the Specification mentioned by the Applicant. According to the Examiner, the Specification taught that "the subscribing is not directed to a system or set of computer instructions, but rather to actions of the individual user. This creates confusion as to when direct infringement or the claim limits occurs."

The Board affirmed the indefiniteness rejection. The Board first explained the requirements of a prima facie case of indefiniteness, as explained by the Federal Circuit's In re Packard decision:

When the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b) 

The Board noted that all of the meanings in the Applicant's proffered dictionary definition (from Dictionary.com) involved human activity, as did the Applicant's own examples offered in the Appeal Brief (TiVo and iTunes). The Board then found that the Examiner had presented a "well-grounded rejection" which the Applicant's arguments had not overcome, and thus ffirmed.

My two cents: The Board got this one wrong. When read in the context of the claim, publish and subscribe are not human actions. A POSITA would recognize these as computer actions that are part a well-known design pattern. (See this Wikipedia entry for "Publish-subscribe pattern".)

The CRM claim at issue recited "publishing" as well as "subscribing." Interestingly, the Examiner did not assert that "publish" was indefinite. Whatever led the Examiner to conclude that "publish" was
understood by a POSITA should also apply to "subscribe."

To make a much stronger case, the Applicant should have offered evidence of the technology-specific meaning of "subscribe." I did a cursory web search and found a Wikipedia entry as well as several technical articles discussing the Publish-Subscribe pattern (e.g., Oracle® Database Application Developer's Guide, Microsoft Patterns and Practices).