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).

PTO takes 7 years to process Petition to Make Special (or Why you should use e-Petitions)

Takeaway: The PTO took seven years to process a Petition to Make Special Based on Age. The Petition Decision indicated that "the delay in rendering a decision is regretted." (Application of Dressler, Appl. No. 11/733,605, available on Public PAIR.) 

This particular petition was filed in 2007, before electronic processing of petitions was available. However, the PTO put such a system in place for Make Special - Age back in early 2008. The PTO expanded the system again in 2011. As of 2015, the "e-Petition" system handles seven different petitions. See the PTO's e-Petition Resource page for details.

With e-Petition, the petition is automatically granted as long as you fill out the form correctly and attach supporting documentation. Applicants should certainly be using e-Petition whenever possible. Doing so will prevent unbelievable delays like the one in the Dressler application.

Details:

Application of Dressler, Appl. No. 11/733,605 (available on Public PAIR)

An application was filed in April 2007, along with a Petition to Make Special based on age. The inventor was 67. Prosecution started in 2010. The Applicant appealed and jurisdiction finally passed to the PTAB in August 2012. The Board issued a Decision in March 2015.

The above pattern of prosecution is pretty typical. Several rounds of back and forth with the Examiner. IDSes filed along the way. A long wait at the Board. But what about the Petition to Make Special? Looks like prosecution was humming along, while the petition was, what ... stuck in limbo?

The Petitions Office finally granted the Petition to Make Special in January 2014. That's seven years after the Petition was filed. The Petitions Examiner apologized, noting in the decision that  "the delay in rendering a decision is regretted."

My two cents: So what's the best practice in scenarios like this one?

E-petition wasn't available at the time of filing (2007), so you can't fault the Applicant for the initial petition filing. But an early rudimentary e-petition became available in early 2008 for just this type of petition. Not having received a Decision on the earlier petition, this Applicant could have refiled using e-Petition. Fill out the special PDF fillable form made available by the PTO, upload it via EFS, and get an instantaneous Petition Decision. That would have meant Special status in 2008 when prosecution was still in progress, not in 2014 when it's too late because the application is on appeal.

The PTO revamped and expanded the e-Petition program in 2011. In this expanded program, several types of Petitions are handled by entering information directly into EFS rather than uploading special forms. Make Special - Age is still supported the old way, with the PDF fillable form. Still, all these  e-Petitions are automatically granted or denied. No more waiting on the Petitions Office. If this Applicant had availed himself of this program in 2011, the application would have been granted Special status during prosecution, when it still mattered. More info on the PTO's e-Petition Resource page.

Without an e-Petition, you're left with the unsatisfactory option of periodically checking status with the Petitions Office. Here, no query to the Petitions Office showed up in PAIR, ever. Perhaps phone calls were made – this wouldn't show up in the written record.

As all patent prosecutors are painfully aware, an Applicant has no real power to force the PTO to do anything. But if this Petition was simply "lost" or "stuck" somewhere in the PTO's workflow processing, I suspect a query would do the trick. So as a last resort, docket a periodic reminder every time a petition is filed outside of e-Petitions, and send a status inquiry and/or make a phone call to the Petitions Office (or Examiner, depending on the type of petition).

PTAB reverses when Examiner interprets "each pixel of a color image" as referring to pixels in different images

Takeaway: The Applicant appealed the obviousness rejection of claims to digital image processing. The claim language at issue was: "for each of multiple given pixels of a color image, determining ..." The Examiner read this on pixels in different images, and the Applicant argued it was limited to processing pixels in the same image. The Examiner relied on Baldwin Graphic Systems, Inc. v. Siebert, Inc., The Applicant considered the context of the determining step as a whole, including the term "local neighborhood." The Board agreed with the Applicant and reversed the rejection. (Ex parte Staelin, PTAB 2013)

Details:
Ex parte Staelin
Appeal 2012000632; Appl. No. 11/280,097; Tech. Center 2600
Decided:  February 28, 2013

The application on appeal was directed to digital image processing. A representative claim on appeal read:

     A method, comprising:
     for each of multiple given pixels of a color image having multiple color channels, determining a respective local difference measure value from a value of the given pixel and a respective value of at least one other pixel in a local neighborhood of the given pixel for each of multiple of the color channels;
     for each of the given pixels, ascertaining a respective color correlation value measuring deviation of the respective local difference measure values determined for the multiple color channels  from a reference: and
     calculating a level of noise in the color image from one or more of the ascertained color correlation values;
     wherein the determining, the ascertaining, and the calculating are performed by a machine.
(Emphasis added.)

The claim limitation at issue on appeal was the "respective local difference" step emphasized above.
This independent claim was rejected as obvious using a combination of two references.

The Examiner asserted that this step corresponded to the SAD (Sum of Absolute Differences) calculation in the primary reference. Applicant argued that the SAD (Sum of Absolute Differences) measure disclosed in the reference did not correspond to the claimed step because it used pixels in different frames. Thus, according to the Applicant, "the SAD measure does not constitute 'a respective value of at least one other pixel in a local neighborhood of the given pixel' " as claimed.

In a later Office Action, the Examiner gave this additional explanation:

However, the Examiner notes that "determining a respective local difference measure value [...] " is taught by Hamosfakidis by virtue of the fact that Hamosfakidis finding difference between pixels in a local neighborhood be it for a single image or of different frames as the Applicant argues.

The Applicant appealed. In the Appeal Brief, the Applicant picked up on the Examiner's explanation and asserted that as properly construed, the "local difference" is determined based on pixels in the same color image. The Applicant made a detailed claim construction argument, using dictionary definitions and focusing on the plain meaning of "local" and of "neighborhood." The Applicant concluded that "the plain meaning of the 'determining' element of claim 1 does not support the Examiner's position that the measurement of differences between  pixels of different frames."

The Examiner responded in the Answer as follows:

The examiner notes that the applicant does not claim that the determining step is done for the "same color image"... [T]he applicant does claim "a color image" but the examiner notes that in for example  in KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) and in Baldwin Graphic Systems, Inc. v. Siebert, Inc., the court confirmed that the use of the indefinite articles "a" or "an", in an open-ended claim containing the transitional phrase "comprising", carries the meaning of "one or more."

The Board found the Examiner's claim construction to be unreasonable:

We agree with Appellants that the Examiner's construction is unreasonable. The language of claim 1 recites ''for each of multiple given pixels of a color image having multiple color images." Therefore, we interpret the claim language of the "determining" step to require that the local distance measure be determined in the same color image. As noted by Appellants, Hamosfakidis teaches measuring differences between different frames,  i.e. different color images. Therefore, Hamosfakidis cannot teach taking a local difference value between a given pixel and a one other pixel  in a local neighborhood  of the given pixel, in a color image.
(Emphasis in original.)

The Board then reversed the obviousness rejection based on the Examiner's unreasonable construction.

My two cents: This decision makes sense to me, but I wish the Board had given a better explanation. The Board's phrasing suggests that it's the presence of "each of" that leads to the conclusion that "image" is limited to a single image – despite the presence of "a." Which makes sense to me, although perhaps my thinking is colored by my background as a programmer.

The Applicant emphasized the terms "local" and "neighborhood" in concluding that the repeated pixel processing ("for each") was performed on the same image. The Board didn't comment on how persuasive this piece of the argument was.

Though I think the Board got this one right, I wouldn't be surprised to see other panels apply the "A means one or more" rule and affirm the rejection. Amending to "a single color image" would have forced the Examiner to change his rejection.

PTAB reverses § 103 when Examiner's combination adds feature already present in primary reference

Takeaway: An Applicant appealed claims to a zoned HVAC system. The Examiner rejected as obvious using a combination of two references, Kolk and Petite. The Examiner stated that Kolk did not disclose a remote temperature control function, and asserted that Petite disclosed this feature as  "[an] additional function from remote location beside the utility." "Additional function" then served as the rationale for combining Kolk's HVAC system with Petite's remote temperature control. The Board reversed after finding that Kolk did provide remote temperature regulation. The Board reasoned that since Kolk already provided this feature, a POSITA would not view Petite's remote control as a reason for modification. (Ex parte Tessler, PTAB 2014.)

Details:

Ex parte Tessler
Appeal 2012-006616; Appl. No. 12/700,643; l 
Decided:  October 2, 2014

The application on appeal was directed to a HVAC system with a wireless thermostat. "[A] remote source communicates with a wireless controller [to control energy usage] and sends signals to the wireless controller via a gateway located near or, in one implementation, forming part of the wireless controller." The originally filed claims generally captured the interaction between the local gateway, the wireless transceiver, and the thermostat controller which allowed the user to changecontrol parameter(s) from a remote location.
 
The first Office Action included multiple rejections of the independent claims, including a § 103 rejection using Kolk and Petite. Kolk disclosed a temperature regulating system utilizing energy price information, and the Examiner relied on Kolk for most of the claim elements. The Examiner noted that Kolk disclosed a module that used telephone lines or the Internet to communicate with an outside source, but did not disclose gateway communication with a wireless receiver. The Examiner asserted that Petite disclosed this feature "as an alternative suitable communication." Also, while Kolk did not disclose a remote temperature control function, the Examiner asserted that Petite disclosed this as "additional function from remote location beside the utility."

This "alternative suitable communication" and "additional function" then served as the Examiner's specific rationale for combining. The rejection also mentioned the "predictable results" rationale from KSR. Finally, the Examiner asserted that it was "well known in the art that a HVAC with single zone and single thermostat can be extended to a HVAC system with multiple zones and multiple thermostats," and cited several references as evidence of this finding.

The Applicant made various amendments resulting in independent claims of different scope. Independent claims 1 and 19 were amended so that control of the thermostat was "separate from any utility based control" and the wireless transceiver was located in a housing assembly. Independent claim 13 was amended differently, to explicitly recite dual zones, thermostats, and transceivers. Claim 13 then read:

     13. A zoned HVAC system having two or more zones, comprising:
     a local gateway;
     a first thermostat for controlling a first zone of the zoned HVAC system, the first thermostat having:
          a first wireless transceiver for wirelessly communicating  with the local gateway of the building or other structure, wherein the local gateway is located remotely from the HVAC controller;
          a first controller coupled to the first wireless transceiver ... [and] configured to allow a user to change one or more of the first control parameters from a remote location on the communications network via the local gateway and the first wireless transceiver [of the first controller] ;
     a second thermostat for controlling a second zone of the zoned HVAC system, the second thermostat having:
          a second wireless transceiver ...
          a second controller... configured to allow a user to change one or more of the second control parameter from a remote location on the communications network via the local gateway and the second wireless transceiver [of the second controller].

In addressing the § 103 Kolk / Petite rejection, the Applicant argued each independent claim separately but focused mostly on independent claim 1. For claim 13, the Applicant argued that the combination did not disclose "many elements of claim 13 including, for example, a zoned HVAC system having two or more zones comprising [first and second thermostats for controlling respective zones." (Emphasis in original.) Despite this assertion, Applicant did not specifically explain how claim 13 distinguished over the combination made by the Examiner.

In a Final Office Action, the Examiner maintained the § 103 Kolk / Petite rejection. As an additional justification for the conclusion of obviousness, the Examiner also added these additional statements about Petite:

Petite et al. disclose remote monitoring and control device can either for utility company (C-1, L-60 to C-2, L-6) or environmental or safety systems (C-2, L-7-14) in the same field of endeavor for the purpose of providing multiple usages of the apparatus. Petite et al. also disclose the transceivers are electrically interfaced with the thermostat (C-5, L-58-64). 

The Applicant filed an After Final Response and argued:

[C]laim 13 recites, for example, a local gateway, and first and second thermostats each having a respective first or second wireless transceiver for wirelessly communicating with the local gateway. While multiple zone HVAC systems may have been known, Applicants submit that the recited first and second thermostats, each capable of communicating with the same local gateway, particularly in combination with the other elements of claim 13, cannot fairly be considered to be taught, discloses or suggested by Kolk et al. or Petite et al.
(Emphasis in original.)

The Examiner issued an Advisory Action simply restating the KSR predictable results rationale. The Applicant appealed, filing a Pre-Appeal Brief Request and then an Appeal Brief. Both handled the § 103 Kolk and Petite rejection by repeating earlier arguments. 

The Examiner's Answer maintained all rejections and responded to several Applicant arguments. With respect to claim 13, the Examiner referred to the three patents cited earlier as evidence that "multi-zones associated with multi-thermostats is well known in the art." The Examiner then explained how Petite disclosed local gateway communication

Referring to Fig.2, Petite discloses the same one local gateway 220 communicates with sensor  / actuator / transceiver 222 and sensor / actuator/transceiver  224. The sensor / actuator  can be thermostat (C-5, L-63). Therefore, one local gateway 220 is able to communicate with multiple thermostats 222 and 224 and the rejection is valid.

The Applicant filed a Reply Brief and addressed claim 13 as follows:

... Kolk et al. and Petite et al.,even when combined with [evidentiary reference] Liebl et al., cannot be fairly said to teach first and second thermostats as recited in claim 13. The Examiner has not provided any articulated reasoning with rational underpinning [as required by KSR] to support the conclusion of obviousness. The Examiner appears to be asserting that one could modify Kolk et al. to achieve the claimed method, which is an improper ground for obviousness. The Court in KSR further stated: "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." The Examiner has not provided any objective reason to modify Kolk et al. in the manner recited in claim 13, other than relying on the instant specification, which is clear error.

On appeal, the Board reversed the obviousness rejection of Kolk in view of Petite, finding that the Examiner's rationale for combining was deficient.

     We find that the Examiner’s stated reasoning, “so as to have an alternative suitable communication and remote HVAC control as additional function from remote location beside for the utility,” is based on the use of impermissible hindsight reconstruction in view of the Appellants’ disclosure. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
     At the outset, we note that for the reasons set forth supra, the Examiner does not establish that the remote user in Petite is not the utility company. [The Examiner instead relies on Petite's remote use by "environmental or safety systems."] Furthermore, we note that Kolk’s system is already remotely controlled. See Kolk, Fig. 1. We thus find the Examiner’s rejection insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to include Petite’s remote system into Kolk’s remote temperature regulating system. The Examiner has not provided any findings that either Kolk or Petite recognized a problem with the remote technique used in Kolk. As such, absent hindsight, we fail to see why one having ordinary skill in the art would have been led by the teachings of Petite to modify the temperature remote system of Kolk in the manner claimed.

My two cents: I picked this decision because it illustrates a good way to attack an obviousness rejection: advantageous function X provided by reference B is not a proper reason to combine if reference A already has advantageous function X. Here, the Board reasoned that since Kolk already allowed remote temperature regulation, a POSITA would not view Petite's remote control as a reason for modification.

The Applicant didn't really make this specific argument. Yeah, the Applicant argued the Examiner didn't provide an "objective" reason to combine, but that was made in the context of the Examiner's "multi-zone HVACs are well-known" statement. The Applicant essentially argued that "could modify to add the feature" is not a proper § 103 rationale. And that wasn't the rationale used by the Examiner.

I'm actually surprised by the reversal here, since the Examiner did include KSR's "predictable results" as a rationale. (An alternative one? As a supplemental explanation?). The Board usually summarily affirms that rationale with nothing more than a bit of hand-waving as to the factual findings required for this rationale. Here, the Board reversed the § 103 based on the explicit motivation from Petite, and appeared to ignore the "predictable results" rationale.

Finally, I note that the Examiner's factually findings about one of the features at issue -- remote temperature regulation were actually inconsistent. In discussing Kolk, the Examiner explicitly found "thermostat 26 including a communication module communicating with a remotely located outside source 40." Which is arguably a teaching of remote temperature regulation. But then the Examiner proceeded to disavow this teaching, finding that "Kolk does not disclose ... remote temperature control function." The Board appeared to make their own finding about this feature, and didn't comment about the Examiner's inconsistent findings.

Here's an interesting question: since already Kolko disclosed the feature at issue, there really isn't a need to combine with Petite to obtain this feature. The Board took this and reasoned that the Examiner's rationale was therefore improper. But why doesn't it make the rationale irrelevant, as opposed to improper? Sure, you need Petite for the other features missing from Kolk, and you need a modification rationale for each of those features. But not for the remote temperature regulation feature found in Kolk, right?

Board finds non-analogous art when Examiner mistakes advantage in reference with problem solved by reference

Takeaway: In appealing an obviousness rejection of a semiconductor device, the Applicant argued that one of the references was non-analogous art. The Examiner asserted that the anti-fogging film disclosed in the reference had the same purpose – excellent durability and wear resistance – as the claimed invention, and was therefore analogous. The Board found that the Examiner had erred in characterizing the problems. The Board found that the problem solved by the invention was "protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer". The Board found that reference solved a different problem: fogging of window glass, mirrors, and lens. The Board therefore reversed the § 103 rejection. (Ex parte Seo, PTAB 2013.)

Details:
Ex parte Seo
Appeal 2011-005820; Appl. No. 11/378,799; Tech Center 2800
Decided:  October 11, 2013

The application on appeal was directed to a semiconductor device for an LCD display. The independent claim on appeal read:

     1. A display device comprising:
     a substrate;
     a metal layer formed on the substrate and including a top surface and a side surface, wherein the metal layer comprises aluminum or an aluminum alloy;
     an insulating layer covering the metal layer; and
     an aluminum complex oxide layer disposed between the top and side surfaces of the metal layer and the insulating layer, wherein the aluminum complex oxide layer is formed by applying to the metal layer a coating solution that comprises at least one selected from the group consisting of zirconium, tungsten, chromium and molybdenum.

The Examiner rejected the originally filed independent claim 1 as obvious over Doushita in view of Applicant Admitted Prior Art. The Examiner relied on Doushita for the aluminum complex oxide layer element (location and composition), and AAPA for everything else. As a reason for combining, the Examiner asserted that Doushita's coating would provide "the structure of the admitted prior art with 'excellent durability, wear resistance, anti-fogging property and anti-fogging sustainability property'. "

During prosecution, the Applicant made various amendments, but the Examiner maintained the obviousness rejection using Doushita and AAPA. The Applicant also made one argument: that Doushita was non-analogous art. As a preliminary matter, the Applicant noted that Doushita and the invention were in different classifications: Class 428 "Stock material or miscellaneous articles" as compared to Class 438 "Semiconductor device manufacturing: process." Moving on to the test for analogous art, the Applicant first discussed the respective fields of invention. Doushita disclosed an anti-fogging article used for "buildings, vehicles, optical components, [etc.]," but this list did not include a semiconductor device (Applicant's field). The Applicant then discussed the purpose or problem solved: for Doushita, anti-fogging, with durability and wear resistance as secondary characteristics; for the Applicant, corrosion of aluminum, with secondary characteristics of electrical resistance, electrical conductivity, and adhesive strength. Therefore, "Doushita is not reasonably pertinent to the specific problem with which the Applicants were involved."

During prosecution, the Examiner did not directly respond to all of the Applicant's non-analogous art arguments. The Examiner did clarify that Doushita was "not used for the claimed structure but for the substitution of the conventional aluminum oxide layer formed on the line." The Examiner also explained that several of Doushita's applications for the anti-fog coating (i.e., "optical component," "medical equipment," "mirror," "lens") amounted to an application for semiconductor devices.
 
After several rounds of prosecution (including an RCE), the Applicant appealed. In the Appeal Brief, the Applicant reiterated the previously made non-analogous art argument, concluding with: 

Applicants fail to understand how the problem of anti-fogging of window glass, mirrors, and lens is reasonably pertinent to the problem of protecting a metal layer 212 of a semiconductor from corrosion with an aluminum complex oxide layer 213.

 The Applicant separately argued that the Examiner's rationale for combining was insufficient:

     Doushita simply discloses an aluminum oxide used as an anti-fogging article. Nowhere does Doushita disclose the structural relationship of the aluminum oxide layer relative to any other layer(s). Doushita fails to disclose the aluminum complex oxide layer is disposed between the top and side surfaces of the metal layer and the insulating layer. As such, without more structure specifics, Applicants submit the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer.
     Therefore, there is no suggestion to combine AAPA and Doushita with each other so as to obtain the technical features of Applicants' claimed subject matter.

Notably, the Applicant did not argue that the combination failed to disclose the claimed limitations.

The Examiner's Answer include (for the first time) a specific response to the non-analogous art argument. The Examiner asserted that Doushita's teaching of an aluminum complex oxide layer with "excellent durability and wear resistance" was "the same purpose as the claimed invention" and was therefore "reasonably pertinent and has enough motivation to be considered." Addressing Applicant's argument about classifications, the Examiner had "considered or cross referenced" the "miscellaneous articles" referred to in the title of Class 428. "Further, 'optical component' is a semiconductor device; and  Class 438 'Semiconductor device manufacturing: Process' deals with this device formation."

The Board  reversed the obviousness rejection. The Board first explained that the field of endeavor was determined by looking at "explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Board then characterized the problem solved by the reference (fogging of window glass, mirrors, and lens) and the problem addressed by the claimed invention (protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer).

The Board concluded that the anti-fogging properties of Doushita’s film "would not have logically attracted the attention of an artisan possessing knowledge of Appellants’ Admitted Prior Art." Despite Doushita's mention of "optical components" as a use for the disclosed anti-fogging article, the Board found that the anti-fogging properties "would have little utility on a semiconductor device."

As an independent basis for reversal, the Board agreed with the Applicant's second argument that the Examiner's rationale for combining was insufficient. Although Daushita taught the use of aluminum oxide as a coating and listed various advantageous properties of the coating, Daushita lacked the structural details of the oxide that were recited in claim 1. The Board agreed that "without more structure specifics, ... the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer."
My two cents: An important part of analogous art analysis is framing the problem. Here, the Examiner confused an advantage disclosed in the reference for a problem solved by the reference. Which seems to be related to focus. It's common for a reference to have a laundry list of advantages, Here, that list did include an advantage – wear-resistance – that overlapped with an advantage of the invention – corrosion protection.  But as suggested by the title ("Non-fogging article and process for the production thereof"), the problem solved by the reference was not susceptibility to wear, but fogging. Kudos to the Applicant for honing in on this winning argument.

Board okays Examiner's reliance on drawings alone, despite silence as to scale

Takeaway: The Applicant appealed an obviousness rejection In an application directed to a semiconductor structure. The Examiner relied solely on prior art figures to teach relative dimensions as claimed. The Applicable argued that such reliance was improper as a matter of law because the reference did not mention scale. The Board disagreed, finding "sufficient detail and precision [in the drawings] to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written description supports those findings and conclusions." (Ex parte Sato , PTAB 2014.)

Details:
Ex parte Sato
Appeal 201201276; Appl. No. 11/686,892; Tech .Center 2800
Decided:  March 20, 2014

The application on appeal was directed to an LED. The limitations at issue involved the relative dimensions of structures within the LED.

During prosecution, the Examiner rejected originally filed claim 9 as obvious over Kwak in view of Applicant Admitted Prior Art (AAPA).

     9. A method of manufacturing a semiconductor light-emitting device, the semiconductor light-emitting device including a semiconductor layer and a first electrode (24) on a first surface (11) of a semiconductor substrate (10) and a second electrode (40) on a second surface (12) of the semiconductor substrate (10), the semiconductor layer including a light-emitting  region (22A), the method comprising the steps  of:          
     after forming the semiconductor layer on the first surface (11), forming the first electrode (24) on the first surface (11) so as to correspond to at least the light-emitting region (22A);  
     arranging a recessed section (12A) with a depth larger than the thickness of the second electrode (40) on the second surface (12) so as to form a step section (12B) projected from the recessed section (12A) in a region other than the recessed section (12A) in the second surface (12);
     forming the second electrode (40) on at least the recessed section (12A) of the second surface;          
(Emphasis added.)

For the "depth" limitation highlighted above, the Examiner relied solely on the figures in Kwak – not on the specification of Kwak. In analyzing Kwak Fig. 17, the Examiner mapped via hole h3 to the claimed recessed section and conductive layer 175 to the claimed projection.

The Applicant argued only the dimensional ("depth") limitation of claim 9. However, the Applicant did not distinguish Kwak, instead merely traversing the Examiner's sole reliance on Kwak's drawing. Citing to a variety of cases from the Federal Circuit and CCPA, the Applicant asserted that reliance on the drawings was improper under case law because the specification of the reference was silent on dimensions (absolute and relative). The Applicant further asserted that the specification "fails to indicate that the drawings are to scale" so that "apparently the proportions shown in FIG. 17 are apparently the result of the draftman's selection rather than the embodiment of an intention to represent the device to scale." 

The Examiner maintained the rejection in another Office Action, and continued to rely solely on the drawings. In response to Applicant arguments, the Examiner pointed to MPEP 2125 ("the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art"). The Examiner further explained his reading of Kwak:

... Kwak clearly discloses in figure 17 that the depth of the recessed section h3 is larger than the thickness of the second electrode 175, and the one of ordinary skill in the art would easily recognize this relationship from the figure of Kwak. Furthermore, if the second electrode 175 was thicker than the recess h3, then it would be level with the bottom of, or even protrude from the bottom of, layer 150. However, Kwak clearly shows second electrode 175 to be recessed within the recessed section h3. The Examiner submits that one of ordinary skill in the art would easily recognize that the depth of the recessed section is larger than the thickness of the second electrode 175.

Later in prosecution, Applicant added another claim with relative dimensions. This one involved width rather than depth:

     13. A method of manufacturing a semiconductor light-emitting device, the method comprising the steps of:
     forming a first electrode on a projection section, said projection section being a contact layer on a first conductivity type cladding layer;
     forming a second electrode in a recessed section of a substrate, the width of said recessed section being larger than the width of said projection section.
(Emphasis added.)

The Examiner rejected claim 13 as anticipated by or (in the alternative) obvious over Romano. Once again the rejection relied solely on drawings. In analyzing FIG. 15 of Romano, the Examiner mapped area 516 to the claimed recessed section and layers s574 and 576 to the claimed projection.

The Applicant filed an After Final Response and handled the claim 13 rejection similar to the previous handling of claim 9. Namely, the Applicant argued that case law prohibited the Examiner from relying solely on the figures of the reference. In the Advisory Action, the Examiner responded to the claim 13 argument by once again referring to MPEP 2125 and explaining what inferences a POSIA would draw from the figure alone. The Advisory Action concluded with this statement

[O]ne of ordinary skill in the art would easily recognize this [relative width]structural limitation . Hence, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the width of the recessed section larger than the width of the projection section since Romano clearly suggests this structure in figure 15. (Emphasis added.)

The Applicant appealed the pending claims. Once again, the only argument made for independent claims 9 and 13 was improper reliance on the drawings. For claim 9, the Applicant merely repeated the arguments made in the Response to Final. For claim 13, the Applicant repeated previous arguments but added additional arguments.

One of the arguments newly added for claim 13 addressed two cases cited in MPEP 2125. The Applicant first distinguished In re Aslanian, arguing that Aslanian dealt with a design patent rather than utility patent. The Applicant then addressed In re Mraz by quoting sections in which the appellate court had approved of use of a drawing showing the features at issue "with great particularity," while contrasting this with an "enlarged section of a small drawing obviously never intended to show the dimensions of anything." The Applicant asserted that Romano, like the disapproved drawing in Mraz, "fails to proffer an intent that the width of cavity (416)(516) is larger than the width of layers (474,476)(574,576)."


In contesting the rejection of claim 13, the Applicant also used a teaching of the width limitation in Applicant's own specification to argue that the Examiner had used hindsight:
In the absence of any disclosure within Romano [of the width limitation] or any other objective supporting evidence, the line of reasoning within the Office Action appears to have been merely an extraction from the Appellant's own specification.


The Examiner's Answer basically repeated the earlier rejection of claim 9, but did add an annotated version of Kwak's Fig. 17. The Answer varied the rejection of claim 13 by also relying on an annotated Fig. 14 of Romano.

The Answer also explicitly stated (first the first time) a rationale for the obviousness rejection of claim 13: "in order to maximize the heat dissipation from device, as discussed in Romano [citation to section omitted]." The Examiner also responded to the Appeal Brief arguments of hindsight by asserting (again) that "one of ordinary skill in the art would easily recognize" in Romano's drawing, the width relationship recited in claim 13.

After receiving the Examiner's Answer, the Applicant filed an Amendment cancelling independent claim 9. Independent claim 13, added during prosecution, remained on appeal as obvious over Romano.

The Board framed the issue as "... whether Romano 'describes' [under § 102] or suggests [under § 103,] the claimed relative widths." The Board affirmed and explained as follows:

     [W]e look to the drawings, but consider them in light of the disclosure as a whole to determine what Romano would have disclosed and suggested to one of ordinary skill in the  art. ... The Examiner here is not attempting to use the drawings of Romano to establish precise dimensions, but is citing the drawings for showing generalized proportions. While we agree with Appellants that the drawings are not disclosed by Romano as being to scale, the drawings are drawn with a sufficient detail and precision to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written  description supports those findings and conclusions. ....In explaining Figure 9, Romano states that the cavity 216 has a length and width larger than that of the p-contacts 240 situated above it. (Internal citations omitted) .... 

... Romano's Figures 10-14 show the progressive steps of forming a semiconductor device with a filled cavity 416. All of the figures depict the various layers and structures within the device with different thicknesses. It is, therefore, reasonable to believe that Romano intended to convey relative differences in thickness even if not exactly to scale. Figures  11-14, like  Figure 9, include multiple p-contacts (440) over cavity 416. Therefore, it is reasonable to believe that, like the p-contacts of Figure 9, the p-contacts 440 of Figures 10-14 are intended to be of smaller width than the width of the cavity 416.

My two cents: Weak Applicant argument. It was clear from the prosecution history that the Examiner did not rely on dimensions, measurements, or values, which means In re Wilson and In re Wright were inapposite. Similarly, the Examiner relied on general rather than precise proportions, so In re Olson and Hockerson-Halberstadt v. Avia were inapposite.

Still, this decision is a good review of the case law governing drawings as prior art.