Details:
Ex parte 500 Group
Appeal 2010-010428; Appl. No. 90/008,998; Patent 6,601,930; Tech. Center 3900
Decided: October 26, 2010
One of the independent claims on appeal read:
1. An apparatus for transporting articles between working locations, comprising:The Patentee appealed the Examiner's final rejection as obvious over Spielhoff in view of Kennedy. Spielhoff was a German patent, and the Examiner included a PTO translation with the Final Office Action. One of the issues on appeal was the meaning of the language highlighted above.
a base container having an interior space in which articles to be transported can be stored,
one or more rotatable ground engaging wheels mounted to the apparatus toward the bottom of said apparatus ...
at least one removable container having [four elements]...
said at least one removable container being removably secured above said base container when said apparatus is at a working location ...
The Examiner alleged that FIG. 3 of Spielhoff disclosed the base container as 4' and removable container as 8'. The Examiner also provided annotated FIG. 3 (below) bearing the added label "removably secured region for removable container."
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| Spielhoff Fig. 3 |
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| Spielhoff Fig. 4 |
In this rejection, the Examiner has used such a colloquial and overly broad interpretation of the word "secured" as used in the present claims. That is, as set forth in detail above, "secured" means "fixed," "attached" and "fastened." Two objects that are "secured" to each other may not be separated absent the removal/separation of that which is "securing" the two objects together. ... [T]he broadest reasonable interpretation of "securing" elements together, as recited in the claims, requires that the elements be "fixed," "attached" or "fastened" together.The Applicant's claim construction argument also mentioned various securing mechanisms disclosed in the specification, but explicitly stated that these features should not be read into the claims.
The Examiner's Answer specifically explained how Spielhoff's cabinet was encompassed by various definitions of "secure" provided by the Examiner and by the Applicant:
- One definition of "secured" proffered during reexamination by the Examiner is "to relieve from exposure to danger: act to make safe against adverse contingencies" (Merriam-Webster's Collegiate Dictionary, 10th ed., page 1056). Under this definition the toolbox is relieved from exposure when placed in the region defined by the Examiner.
- Further, another definition of "secured" supplied by Appellant is "firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way" (Brief at top of page 8). Under this definition the toolbox is firmly placed in position and unlikely to give way when placed in the region defined by the Examiner.
- Further, another definition of "secured" supplied by the Appellant is "to make firm or tight; fasten" (Brief at top of page 8). One definition of "tight" is "strongly fixed or held: secure" (Merriam-Webster's Collegiate Dictionary, 10th ed., page 1234). Under this definition the toolbox is made tight by being strongly held when placed in the region defined by the Examiner.
The Board agreed with the Examiner's interpretation. The Board first noted that Specification did not expressly define the claim term ("secured"), nor did it use the other terms (“fixed,” “attached,” fastened”) to describe the relationship of the removable container and the base container. To the contrary, the Specification states that the securing function can be accomplished “in any manner, for example, by a frictional fit.” Thus, the Specification "makes it clear that the term is being used, and should be construed, broadly."
Moreover, while the Applicant asserted that every definition of "secure" uses the word "fasten," the Board found that some of the definitions had a broader meaning. The Board elaborated as follows:
For example, one of the definitions of “secured” relied upon by Appellant is “firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way.” (App. Br. 8, Ex. 9 (emphasis added)) Thus, a container that is “inserted” into a compartment, as in Spielhoff, would be “secured” in the compartment because it had to be placed in the compartment and would be unlikely to come loose or give way. In this respect, we further note the provision of a lid (not numbered) for the compartment in the tool cart of Spielhoff, which furthers securing of the removable case.The Board then concluded that the Applicant's interpretation (fastening required) was too narrow. Instead, "the arrangement of Spielhoff, where the container is inserted into the top compartment, is encompassed by Appellant’s claims."
My two cents: The Board got this one wrong. I'll agree with that the Broadest definition here – firmly fixed of place in position and unlikely to come loose – is also Reasonable. But I say the Board overreached in applying the reference to the claims.
Simply put, there was zero evidence in the record that a toolbox placed in Spiehoff's compartment would be unlikely to come loose due to friction along the sides of the compartment. The crude drawings in Spielhoff's suggest that the container is roughly the same size as the compartment, but there isn't enough detail to say that the sizes are close enough to achieve the function implied by "secure."
I give the Applicant points for making claim construction the heart of the argument, but unfortunately Applicant didn't sieze on this particular issue that is implicated by the broadest definition.
The way I see it, the Board improperly speculated about the teachings of the reference. But this could have gone another way.
The Board could have treated the claim language "secured ... when said apparatus is at a working location" as intended use, and then taken the position that the compartment need only be capable of fixing a container in place. Under that theory, the reference anticipates if there exists a hypothetical compartment and a hypothetical container having relative sizes such that friction fit keeps the container in place. Right? Or is hypothetical not good enough?
Over on Patently-O is a posting about "wireless" in which there is a comment why the PTO runs BRI, Dennis Crouch suggests:
ReplyDelete"The purpose of this approach is to offer an additional buffer zone between the prior art and the issued patent and to give the USPTO stronger tools to ensure that claims are not ambiguously written."
Now if that is accurate, it strikes me as part of the explanation why the PTO habitually over-stretches to run novelty objections. It feels duty-bound to push the envelope almost to "unreasonable" lengths.
Another part of the explanation is that running the objection under 102 is so much easier than making a 103 objection stick.
Yet another part of the explanation is to set the file wrapper up right.
My practice is at the EPO, where obviousness objections are comparatively easy for the Office to drive home and where there is no doctrine of file wrapper estoppal. So EPO Examiners have no need to push to unreasonable lengths, and see no point in it.
In short, you can't really blame the individual USPTO Examiner, can you? They are only doing their job diligently, the way they were taught.
Sure, Examiners are operating in a particular environment, with constraints and incentives. Some do it diligently, some not. Some do it according to the PTO guidelines, some not.
DeleteI don't take issue with diligent, even zealous, Examiners. In fact, I respectfully call them "devious". And I usually amend when I see a devious construction or reading of the art.
And sure, we can all draw the Reasonable / Unreasonable line at a different place.
That said, there are some positions that just seem to be *unjustifiably* unreasonable. An Examiner that says a chair leg is removably attached because the leg can be removed with a blowtorch is not being devious in any defensible manner, he's simply being unreasonable. Notably, the PTAB usually smacks down these unjustifiable interpretations.
I suppose one only argues about "removable" because "removable" is what conveys novelty. And let's face it, it's a pretty poor basis for establishing novelty, isn't it?
DeleteTake your example of a leg. If mine goes gangrenous, I do hope it is "removable" and if my chair's gets woodworm or dry rot I hope it too is "removable" (with or without a blowtorch).
If "removable" is all you've got, you don't deserve to get past the PTO Examiner, do you? Try again, I say, this time with a better basis for novelty than "removable".
That's how I see it. And I'm an attorney not an examiner. I just don't like trivial stuff acquiring a presumption of validity because my clients have to deal with the rubbish that issues from the PTO..
"there was zero evidence in the record that a toolbox placed in Spiehoff's compartment would be unlikely to come loose due to friction along the sides of the compartment."
ReplyDeleteLooking at the compartments shown in Fig. 4, I wonder why you think the shape of the compartments does not constitute evidence that the toolbox would not come loose. Unless one were to tip the whole apparatus over (or, more silly, drop it into water or take it up into a low-gravity environment), what would make the toolbox come loose from the compartment?
>Unless one were to tip the whole apparatus over ... what would make the toolbox come
ReplyDelete>loose from the compartment?
I think we both agree the container comes loose *under some conditions* unless there's a mechanism for keeping the top closed.
I say tipping over is a normal operating condition *in the context of securing*. In fact, just the sort of condition securing is meant to handle. Thus it's not "secured" unless it stays in place when tipped over.
So maybe it boils down to what we consider normal operating conditions.
If we focus only on the definition we're discussing, it might also depend on how we parse "firmly fixed or placed in position and unlikely to come loose or give way.” Does this convey these two alternatives (firmly fixed; placed in position) plus an additional constraint (unlikely to come loose) Or does it merely convey these two alternatives (firmly fixed; placed in position AND unlikely ..."). Or does FIRMLY apply to "fixed in position" also (firmly fixed; firmly placed in position AND unlikely ...").?
Under the second reading, a shelf might "secure" the container since the container is placed on the shelf and unlikely to come loose. Well, unless you tilt the shelf enough toward vertical. (Back to the normal operating conditions.)
Where the third reading -- "firmly placed in position" -- seems to exclude a shelf.
While I see where you're coming from, I think in the end there's enough room for interpretation of these terms that I can't say that either your or the PTAB is "wrong." However, my own preference (similar to what was said up at 4:51) would be that the PTO not rely on such a vague phrase for patentability.
DeleteNo evidence of friction? I would expect there to be none.
ReplyDeleteFriction, I mean. It would be hard enough to lift the Spielhoff toolbox out of the top compartment, even with no friction at all. between the walls of the compartment and those of the toolbox housed within it. Who in their right mind would increase the severity of the task by making it a friction fit?
Tell me, when a golfball rolls into the hole in the middle of the green, is it "secured" to the green?
>would be hard enough to lift the toolbox out of the top compartment,
Delete>even with no friction at all ... [so why] increase the severity
>of the task by making it a friction fit?
I think you're saying there are features in Spielhoff's FIG. 3, other than relative size, that make the toolbox hard to lift out of the cabinet. What features are those?
>golfball rolls into the hole in the middle of the green, is it "secured" to the green?
Under the definition used by the Examiner and PTAB, Yes, because the ball placed in the hole would be unlikely to come loose.
That assertion doesn't seem any more ridiculous to me than the actual scenario in the 500 reexam. I suppose yours is a bit better as a hypo because it has no additional structure to complicate the analysis -- only the container and the contained.
My hypo isn't brilliant because (in normal use" the golf green doesn't move but the tool cart does. If one were to pull the Spielhoff tool cart over rough ground at great speed, I think the tool box might jump out. So it might be a good idea to "secure" the box to the cart, with a luggage strap or elastic bandperhaps. Spielhoff doesn't show this, but I think it would have been obvious to any tool cart user in a hurry.
DeleteHey ho, never mind. For me, what matters for the orderly development of the law is not so much the technical facts of the case but more the reasoning underlying the decision.
The problem with the Examiner's analysis is that it neglects that there are limitations on the "broadest reasonable interpretation." Specifically, it still must be interpreted in view of one having ordinary skill in the art.
ReplyDeleteLet's just look at the preamble ... "apparatus for transporting articles between working locations." For most tradesman, this would also involve not only wheeling the apparatus from one place to another at a jobsite but also taking the apparatus, loading into the bed of a pickup truck, driving the pickup truck to another worksite, unloading the pickup truck, and wheeling it to a new jobsite.
This would expose the apparatus to not only tipping, but bumps in the road, as well as high winds. Given those extremely well-known potential circumstances, I would imagine that one skilled in the art would NOT consider the container of Spielhoff to be removably secured.
>must be interpreted in view of one having ordinary skill in the art.
Delete>look at the preamble ... "apparatus for transporting articles
>between working locations." For most tradesman this would also
Yes, claim construction is from the viewpoint of a POSITA, but also respects other rules of claim construction. Which means patentable weight to the preamble only under limited circumstances.
I don't know whether this preamble gets weight here or not -- the argument wasn't made in prosecution, and I'm too lazy to parse the long/complicated claim to decide for myself.
But my point still stands: can't focus too much on the preamble. Certainly not in prosecution. You can probably get farther with this argument in litigation.
But my point still stands: can't focus too much on the preamble. Certainly not in prosecution.
DeleteYou do realize that whether or not limitations in the preamble are given patentable weight is done on a case by case basis and that their is no per se rule that these limitations are not to be given patentable weight?
Also, do you realize that the arguments regarding the preamble are not directed to the claim language per se but used to establish who is a person of ordinary skill in the art. The argument still stands whether or not the language is in the preamble or not. The purpose of the claims is to distinguish over the prior art -- not establish who is one of ordinary skill in the art.
>> can't focus too much on preamble. Certainly not in prosecution.
Delete>>
>Whether preamble limitations get patentable weight is case by case
>rather than per se rule of no patentable weight.
Agreed. I suppose I didn't express myself well with my "can't focus too much" remark.
What I meant to convey was that preamble gets patentable weight in limited circumstances (MPEP 2111.02), so make sure your preamble fits into one of those before relying on that for an argument.
>arguments about preamble are not directed to claim language per se
>but to establish who is a POSITA.
...
>Purpose of claims is to distinguish over prior art -- not establish who is one
>of ordinary skill in the art.
I'm not sure if I'm following you.
Broadest Reasonable Interpretation is from the viewpoint of the POSITA. We agree on that.
I think you're saying that while the preamble doesn't always limit the claims, it is always evidence of "who" is a POSITA. Meaning, what ... the field the POSITA is in? the facts he knows?
And as evidence of POSITA's knowledge (?) (viewpoint?), this information from the preamble then informs the understanding of the claims? But this information doesn't limit the claims?
Is that your position?
I'm not aware of any legal doctrine that says a preamble *determined to be non-limiting* nonetheless tells us stuff about the POSITA that we use in interpreting the claims.
Now, I can see introducing evidence of some kind about what "secured" means to a POSITA. Evidence from the Application itself, from dictionaries (layman or technical), or other documentary evidence (including declaration of a POSITA).
But that's not the same as saying the words in a *non-limiting* preamble are themselves evidence of what a POSITA means by a term in the body of the claim. If that's your position, I'd like to know what it's based on.
Meaning, what ... the field the POSITA is in? the facts he knows?
ReplyDeleteAre they mutually exclusive? Doesn't the field of the hypothetical position of ordinary skill in the art inform they facts he or she knows?
And as evidence of POSITA's knowledge (?) (viewpoint?), this information from the preamble then informs the understanding of the claims? But this information doesn't limit the claims
The specification is intrinsic evidence as to the meaning of the claims but it doesn't necessarily limit a claim either. I don't understand your point. There is a difference between evidence of who one of ordinary skill in the art is and a limitation as to the invention.
I'm not aware of any legal doctrine that says a preamble *determined to be non-limiting* nonetheless tells us stuff about the POSITA that we use in interpreting the claims.
Was it KSR that something to the effect that common sense could be used in place of written evidence? But seriously, it is evidence.
Now, I can see introducing evidence of some kind about what "secured" means to a POSITA.
How about you first introduce evidence identifying the POSITA? As I stated above, once the identity of the POSITA is known, what the POSITA actually knows can be bettered determined.
But that's not the same as saying the words in a *non-limiting* preamble are themselves evidence of what a POSITA means by a term in the body of the claim. If that's your position, I'd like to know what it's based on.
Is the specification evidence? If the specification, why not the claim? If not the specification, why not?
Finally, as I noted in a previous post, "[t]he argument still stands whether or not the language is in the preamble or not." Put simply, neither the Examiner nor the Board considered how a POSITA would consider the phrase "secured."
>neither Examiner nor Board considered how POSITA would
Delete>consider the phrase "secured."
The Applicant, Examiner and Board all explicitly considered the issue of claim construction for the claim term "secured". No disagreement on that.
In doing so, they *implicitly* did so from the viewpoint of a POSITA. No one raised the issue of POSITA qualifications, knowledge, etc. In the absence of evidence on this point, the references themselves are considered indicative of a POSITA's knowledge. Nobody brought up anything in the references that supported a narrower reading of "secured".
It appears that you want to consider the Applicant's field of use as evidence of the meaning of a claim term, in order to narrow the meaning of "secured". I don't recall seeing any cases where the Applicant tried this. Or at least not using this particular angle.
Many, many cases where the Applicant quotes from the spec and says "see, my use of secured is much narrower". And the Board always says BRI doesn't allow importing limitations from the spec, you didn't define the term, so you're stuck with the broader understanding.
Which tells me you're going to have to present the argument differently in order to get anywhere. And it looks like you are: you seem to characterize the preamble as information about the field of use, field of use tells us who a POSITA is, knowing how a POSITA is informs our understanding of the claim term "secured". Haven't seen this angle before.
>>the words in a *non-limiting* preamble are themselves evidence of what a
>>POSITA means by a term in the body of the claim. If that's your position,
>>I'd like to know what it's based on.
>Is the specification evidence? If the specification, why not the claim?
>If not the specification, why not?
Yes, the specification is intrinsic evidence used in claim construction. Though the spec gets much less weight during patent prosecution than it does during litigation. That's a big difference between BRI and post-issue construction.
The claims themselves are also evidence, ie, claim x can be used to interpret claim y, and by extension, I suppose term X can be used to interpret term Y in the same claim. Case law supports this position for claim construction in litigation. I'm not aware of any case law that says it works differently for BRI.
None of that changes my analysis, because the law treats the preamble differently than the body of the claim. For that reason, I don't agree with your position that term X in a *non-limiting* preamble is evidence of what a POSITA means by a term Y in the body of the claim. Since as I said before:
>>I'm not aware of any legal doctrine that says a preamble *determined to
>>be non-limiting* nonetheless tells us stuff about the POSITA that we
>>use in interpreting the claims.
>
>Was it KSR that something to the effect that common sense could be used
>in place of written evidence?
KSR was all about obviousness and nothing to do with claim construction. AFAIK, our discussion here is limited to claim construction.
>Was it KSR that something to the effect that common sense could be used
>in place of written evidence? But seriously, it is evidence.
So your position is that common sense is a form of evidence?? I'll wait for clarification before going much further on this point.
But assuming common sense is evidence ... evidence relevant to what issue or analysis ... claim construction?
Which means, in the end, what ... that common sense informs claim construction?
None of that changes my analysis, because the law treats the preamble differently than the body of the claim. For that reason, I don't agree with your position that term X in a *non-limiting* preamble is evidence of what a POSITA means by a term Y in the body of the claim. Since as I said before:
DeleteThe law SOMETIMES treats the preamble as non-limiting (remember, case-by-case basis). However, even if the preamble is considered to be non-limiting (i.e., the limitations are not to be considered in how the invention is distinctly claimed), you are attempting to apply that very narrow exception to something entirely different (i.e., evidence of the identity of a POSITA). Are you saying that the preamble should be ignored for all purposes?
So your position is that common sense is a form of evidence??
SCOTUS seemed to think so. Have you read Perfect Web v. InfoUSA?
Still, you have yet to answer the question of what is evidence of a person of ordinary skill in the art? Wouldn't the specification (and more importantly) the claims be a great place to look to identify the relevant art?
>law SOMETIMES treats preamble as non-limiting (remember, case-by-case).
DeleteWe don't disagree on this point. I haven't reached the issue of whether or not the preamble in the case under discussion is limiting. The parties didn't raise this point, and you haven't performed the analysis here.
Assuming here that it's NON-limiting because the effect of a NON-limiting phrase on interpretation of a claim limitation is an issue that intrigued me.
>you are attempting to apply that very narrow exception [non-
>limiting preamble] to something entirely different: evidence of
>POSITA's identity
Or, the way I see it, *youre* the one using preamble words to determine identity of a POSITA, rather than using them in the conventional way, which is merely as a word to be interpreted (if found limiting in the first place).
>Are you saying preamble should be ignored for all purposes?
I haven't actually taken a position on whether the preamble should be / is used as you suggest. I've simply noted that I'm not aware of case law on point.
>Are you saying preamble should be ignored for all purposes?
All purposes, No, of course not.
Conventional analysis does this with the preamble: A) determine whether word/phrase in preamble is limiting; B) if limiting, interpret the word/phrase as understood by a POSITA.
Interpreting a claim term from the viewpoint of a POSITA implicitly means deciding the who/what of a POSITA. From what I can tell, you're using a phrase in the preamble to decide who/what of a POSITA. This is new to me.
>>So your position is that common sense is form of evidence??
Delete>SCOTUS seemed to think so. Have you read Perfect Web?
In Perfect Web, the Fed Cir used common sense to fill in a missing element in a claim. Did not mention common sense in the context of claim construction.
>you haven't yet answered the question of what is evidence of a POSITA
In obviousness analysis, the references themselves are evidence of the knowledge of a POSITA. However, you're talking about claim construction, not obviousness analysis.
The sub-issue of who/what is a POSITA doesn't come up much in discussing [pre-grant] claim construction. Because it's rare for claim construction to be explicitly discussed by the parties during prosecution.
The closest I've seen the *Board* come to considering this sub-issue is when the Board introduces a technical dictionary definition during claim construction.
The main reason I'm discussing this here is that it's a new issue to me.
>Wouldn't specification, or better yet the claims, be a great place
>to look to identify the relevant art?
Why are we identifying the relevant art? Is this part of explicit claim construction? Is this part of identifying the who/what of a POSITA, which is an implicit precursor to claim construction?
Assuming here that it's NON-limiting because the effect of a NON-limiting phrase on interpretation of a claim limitation is an issue that intrigued me.
ReplyDeleteThe specification (while not limiting) can also be used in the interpretation of claim language. As such, why not the preamble?
In obviousness analysis, the references themselves are evidence of the knowledge of a POSITA. However, you're talking about claim construction, not obviousness analysis.
You are asking (answering?) the wrong question. The question isn't what does one of ordinary skill in the art know -- the issue is who is one of ordinary skill in the art? You have identify "who they are" before you can ask the "what do they know."
The closest I've seen the *Board* come to considering this sub-issue is when the Board introduces a technical dictionary definition during claim construction.
You are better off assuming that anything the Board considers is probably wrong and needs to be verified.
In Perfect Web, the Fed Cir used common sense to fill in a missing element in a claim. Did not mention common sense in the context of claim construction
The Fed Cir used "common sense" as evidence. If the evidence is good enough to add missing limitation, why wouldn't it be good enough for claim construction? Why does the purpose matter?
Why are we identifying the relevant art?
I meant to say relevant POSITA (so as to follow up on the statement immediately above that one. Again, let me repeat, what is evidence of a person of ordinary skill in the art? What steps are you going to take to identify this person? Where are you going to look? You've admitted that identifying the POSITA is a precursor to claim construction, so how are YOU going to do it?
OK, I think I now completely understand. Your position is:
DeleteThe preamble of the claim *should* be used to interpret terms in the body of the claim. Preamble helps us understand who/what is a POSITA, and understanding a POSITA is an implicit step to interpreting claim from the viewpoint of a POSITA. ["Should" emphasized because no case law on point, but you assert your approach is consistent with general claim construction principles.]
Now that I do understand your point, I can respond. My response is, Gee, I don't really have a strong opinion one way or the other. I admit that I think far more about what *is* than what *should be*. My passion about what "should be" tends to be focused mostly on the law of obviousness rather than the law of claim construction.
>>closest I've seen the *Board* come to considering this sub-issue is '
>>when Board introduces technical dictionary definition during claim
>>construction.
>You are better off assuming that anything the Board considers is
>probably wrong and needs to be verified.
I agree the Board gets case law wrong, though IMO not enough to justify this default assumption.
I mentioned the Board in the context of noting I'd never seen this issue (use of preamble to inform fact finding about POSITA as part of claim construction) arise before. Not from the parties, and not from the Board. As part of my larger point that I don't know of any existing case law on this issue.
>what is evidence of a person of ordinary skill in the art? What steps will you take >to identify this person? Where are you going to look?
Delete>You've admitted that identifying the POSITA is a precursor to claim construction,
>so how are YOU going to do it?
Honestly, I haven't thought much about it.
I'm curious if you're advocating this sort of POSITA analysis as part of routine prosecution.
Few prosecutors include even a cursory discussion of claim construction during prosecution, and even fewer make explicit claim construction arguments. And I don't recall seeing a single instance of a prosecutor making "who is a POSITA" statements on the record in the context of clam construction. Doesn't mean it doesn't ever happen. But I do read enough file histories to know it's rare.
If you are advocating POSITA analysis as part of routine prosecution, how would *you* do it? Would you limit your POSITA analysis to the spec and the claims? Or would you introduce other evidence, and if so, what?
"Who is a POSITA" is a routine part of the obviousness analysis performed in litigation. Would you borrow from this?
I'm curious if you're advocating this sort of POSITA analysis as part of routine prosecution.
DeleteNo -- not really necessary. However, in this instance, the Board adopted a claim construction of "secured" that really didn't consider the meaning of the term by a POSITA. Said another way, the term "secured" means different things to different people and the Board (in its haste to bend over backwards to support the broadest possible interpretation) picked an interpretation that wasn't consistent (IMHO) with the meaning a POSITA would give to that term.