PTAB reverses obviousness based on inherency and design choice – but then enters new design choice rejection

Takeaway: In an obviousness rejection, the Examiner relied on several alternative theories for the range of values claimed for a material property of foam: inherency, design choice, and overlapping ranges. The Applicant appealed, and the Board reversed the Examiner's rejection. The Applicant's specification was persuasive evidence that the claimed property wasn't inherent, the Examiner's design choice rationale amounted to an impermissible per se rule, and the overlapping ranges theory relied on data in the Applicant's own specification. However, after finding that the claimed effusivity values weren't described by the Applicant as critical, the Board went on to enter a new obviousness rejection. On the basis of these additional factual findings, the Board found that "the mere selection of a known plastic material having the claimed ranges for effusivity and thermal conductivity to make Reinke's plastic container, as modified by Ishikawa, would have been an obvious design choice for a person skilled in the art." (Ex parte Gehring, PTAB 2016.)

Details:

Ex parte Gehring
Appeal 2014004556; Appl. No. 12/485,073; Tech. Center 3700
Decided:  June 10, 2016

The application on appeal was directed to a case for dispensing cleaning wipes. The specification taught that some consumers prefer a case that feels warm to the touch. This property of a material, known as effusivity, is calculated as the square root of the product of the material's thermal conductivity, density, and specific heat capacity. The originally filed claims recited a foam material with a specific effusivity range.

A representative claim on appeal read:

     1. A reusable container for storing and dispensing wipes, the wipes container comprising:
     a. an upper container shell hingedly joined to a lower container shell
such that the upper and lower shells can be configured in an open position and a closed position,
     wherein an interior storage space is defined by the upper and lower shells when the shells are in the closed position,
     the upper and lower shells being at least partially separable from one another to enable a user to replenish a depleted wipes supply in the container;
      b. an opening in the upper shell that enables a user to access at least one wipe stored in the interior storage space, and
     a lid connected to the upper shell and disposed over the opening;
     wherein the upper and lower shells are formed of a molded synthetic polymeric foam material
     wherein the synthetic polymeric foam has an Effusivity value at 23° C and 32° C of from 200-300, according to the Sensory Warm Test,  and
     the lid is formed of a different polymeric material than the shells.
(Emphasis added.)

The Examiner initially rejected the claim using a combination of Reinke and Guy. Guy taught a wipes container having a foam insulator, and the Examiner asserted "it appears that Guy's insulator would inherently have the claimed effusivity value." The Applicant amended to specify the foam's location (outer surface of the shell). The Examiner's next rejection used a new secondary reference Abramson, plus a third reference Lee. Abramson taught a wipes container with outer surface made of leather, and Lee taught foamed EVA as replacement for leather. According to the Examiner, it was obvious to substitute foam for leather, and "it would appear that the foamed EVA of Lee inherently has the claimed effusivity value." The Applicant amended again, adding a lid formed of a different polymeric material.

The next rejection added a third reference Ishikawa for the lid, and switched to a different secondary reference Miller ("Vascular Access Kits and Methods"). Miller disclosed a two part case made of EVA foam, and taught that "EVA may be generally described as a polymeric material with some of the characteristics of elastomeric materials and some characteristics of thermal plastic materials." The Examiner asserted the obviousness of making Reinke's case out of Miller's EVA foam "for the predictable result of obtaining good thermal characteristics." The Examiner further asserted that "it appears that the EVA of Miller would have the claimed effusivity value," and indicated that the burden of proof had shifted to the Applicant. (“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).)

In response, the Applicant amended the foam characteristics to narrow the claimed effusivity value, from "less than about 550" to "from 100 to 400." In addition, the Applicant traversed the Examiner's reliance on Miller by noting that while the Applicant's specification taught that EVA foams have differing effusivity properties, Miller did not discuss any reason to use materials with particular thermal conductivity or effusivity properties. According to the Applicant, the fact that containers formed of EVA foam were known did not amount to a suggestion to use a material with the particular property claimed.

The Examiner maintained the rejection. In the Response to Arguments, the Examiner asserted that it was "within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice" (citing to In re Leshin, 277 F.2d 197 (CCPA 1960)). The Examiner also explained that even if Miller didn't discuss the desirability of particular effusivity values, recognition by the Applicant of a different advantage that flowed naturally from the prior art doesn't confer patentability (citing to Ex parte Obiaya, 227 USPQ 58 (BPAI 1985)).

The Applicant once again narrowed the effusivity range (now "from 200-300"), and this time argued there was no suggestion or teaching in the references to both replace Reinke's material with Miller's EVA form and to "select and/or process such material such that it would have an Effusivity Value [as claimed]." The Examiner maintained the rejection, and addressed the narrowed effusivity range by reiterating his position that Miller's EVA foam was presumed to inherently have the claimed effusivity value.

The Applicant appealed. In the Appeal Brief, the Applicant first attacked the Examiner's rationale for combining as follows:

     Although Miller et al. mentions at [0055] that its molded case may be formed of compression molded EVA foam, it also states that it may be formed of any of a number of other materials "including, but not limited to, nylon, cordura type materials, various types of polymeric and plastic materials,'' and "relatively soft materials such as canvas, polyesters and similar materials,'' "materials such as lightweight aluminum alloys and similar hard materials," and "a wide variety of polymeric materials, elastomeric rnaterials and/or thermoplastic materials" including urethane and PVC. Contrary to the Office's assertion, Miller et al. contains no mention of "good thermal characteristics." Regardless, this phrase is undefined and ambiguous, and therefore, devoid of any suggestive content. Miller et al. provides no particular reason why compression molded EVA would be desired over any of these other materials in any particular circumstances.
(Internal citations omitted.)

The Applicant then attacked the Examiner's reliance on inherency:

     Here, the Office has not shown that the EVA foam mentioned by Miller et al. would necessarily have only a particular range of Effusivity (falling within the range of Applicant's claims), or that this would be recognized by a person of ordinary skill in the art. Further, data in Table l of Applicant's specification, and the associated explanatory text, show that compression molded EVA foam as taught by Miller et al. may have an Effusivity Value outside of the recited range. ... This [data] shows that the Effusivity of compression molded EVA foam is not necessarily 200-300, contrary to the Office's assertion of inherency.(Emphasis added, internal citations omitted.)

The Examiner maintained his position in the Answer. After reiterating the previously stated rationales (design choice; and Miller's brief mention that EVA has thermal characteristics), the Examiner then brought up a new benefit of an EVA foam liner, as taught by Miller: "protect the contents carried in the resulting kit from being damaged or crushed."

With regard to the Applicant's argument that the Office Action had failed to show inherency, the Examiner responded as follows:

It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. [Citing to In re Wertheim, In re Woodruff, and In re Geisler.] Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.

The Appeal Brief had referred to the specification as evidence that EVA foam doesn't necessarily have the properties claimed. In the Answer, the Examiner noted that "Miller et al. may also have an Effusively Value inside the recited range" and explained that prima facie obviousness exists when claimed ranges "overlap or lie inside ranges disclosed by the prior art." Finally, the Examiner stated again that the burden of proof on inherency had shifted to the Applicant.

The Board reversed the Examiner's rejection, finding several errors. First, the data in the Applicant's specification was "persuasive evidence" that Miller's EVA foam may have effusivity values outside the claimed range, which meant the Examiner's use of inherency was improper. Next, the Examiner had relied on the same Applicant data as evidence that some EVA foams have an effusivity value overlapping the claimed range. This was also error: "because sample 12C is part of Appellant's Specification, it does not constitute prior art against the claimed effusivity range subject matter. Finally, the Examiner's use of design choice was also in error:

... the Examiner's mere reliance on In re Leshin amounts to a per se rule that  eliminates the need for fact-specific analysis of claims and prior art and is legally incorrect. Our precedents do not establish any rules of obviousness, just as those precedents themselves expressly declined to create such rules. In re Ochiai, 71F.3d 1565, 1572 (Fed. Cir. 1995).  

The Board did, however, make a new ground of rejection that found the claim obvious over the primary reference Reinke in combination with the tertiary reference Ishakawa. (The Board's rejection did not rely on Miller.) Reinke disclosed upper and lower shells and a lid, and Ishakawa taught a lid made of a different material. And although neither reference taught the claimed effusivity range, the Board found that "the selection of a suitable material is a matter of obvious design choice."

The Board supported the rejection with additional findings, and provided additional explanation. First, the Board noted that the relevant issue for design choice is whether the alleged differences between the claimed invention and the prior art "result in a difference in function or give unexpected results" (citing In re Rice, 341 F.2d 309, 314 (CCPA 1965)). Next, the Board noted that the materials described in Applicant's Table I were commercially available, and found that the material properties of effusivity and thermal conductivity were well known. In making this "well known" finding, the Board relied the specification's characterization of effusivity as a "commonly known" property, as well as case law that "[a]n artisan must be presumed to know something about the art apart from what the references disclose." In re Jacoby, 309 F .2d 513, 516 (CCPA 1962).

The Board then found there was "no evidence of record to express the criticality of the claimed ranges." The specification merely identified any value less than 550 – whether inside the claimed range or outside –  as "suitable" for holding wipes. The effusivity and temperature ranges weren't critical, and did not "result in a difference in function or give unexpected results." "Accordingly, the mere selection of a known plastic material having the claimed ranges for effusivity and thermal conductivity to make Reinke's plastic container, as modified by Ishikawa, would have been an obvious design choice for a person skilled in the art."

My two cents:  It was clear from the very first Office Action that the Examiner wasn't relying on a specific teaching for the claimed effusivity range, but was instead relying on other rationales  – first inherency, then design choice, then overlapping ranges. Yet the Applicant narrowed the range not once, but twice, without even addressing these rationales.

Huh? If the Examiner took the position that "less than 500" was inherent in the reference, what reason did the Applicant have to think that a narrower range would not be viewed as inherent?

Seems to me the Applicant could have ended prosecution sooner and just gone to appeal on the claimed range. I think the Examiner's rejection had plenty of holes in it, so I'd probably appeal. Wouldn't have changed the end result – the Board fixes the Examiner's mistake by issuing a new rejection –  but would have saved an RCE fee and attorney fees for two responses.

It's also true that the claims were vulnerable to a properly articulated design choice rejection – which is exactly what the Board did. Was it wise to appeal such a vulnerable claim? Not a clear call. Sometimes the Board does the extra work to enter a new rejection, but sometimes the Board just reverses the Examiner. I think I would have appealed – but probably without narrowing the originally claimed range.

PTAB reverses indefiniteness for a "system" claim having a single (regulator) element

Takeaway: The independent claim on appeal was a "system" with a single "regulator" element in the body of the claim. The regulator was defined in the body of the claim with several structural elements and one functional limitation. The Examiner found it unclear as to whether the functional language was limiting or not, and so rejected the claim as indefinite. The Board reversed, finding that "['system'] simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' " (Ex parte Bell, PTAB 2016.)

Details:

Ex parte Bell
Appeal 2014-009335; Appl. No. 13/050,752; Tech. Center 3700
Decided:  September 28, 2016

The application on appeal was directed to a hydraulic pressure regulator. A representative claim on appeal read:

     1. A system comprising:
     a spring-loaded hydraulic pressure regulator having a maximum deadband of less than 200 pounds per square inch when coupled to a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch,
     the spring-loaded hydraulic pressure regulator comprising:
     a housing having first and second inner chambers;
     a spring disposed within the second chamber;
     a sensing piston disposed within the housing and responsive to pressure within the first inner chamber and to a biasing force generated by the spring; and
      at least one supply seal ring disposed within the first chamber.

The Examiner rejected claim 1 as indefinite. The Examiner explained that the only structural limitations of the claim were parts of the regulator. This indicated that the claim was drawn to a regulator, even though the preamble read "a system comprising." It was therefore unclear whether the functional language "having a maximum deadband ..." was part of the preamble (and thus non-limiting) or part of the body (and thus limiting).

On appeal, the Applicant argued that the deadband functional language was clearly part of the body, since it followed the preamble. The Applicant further noted the dependent claims included further elements in the system of the independent claim. Finally, the claim was definite because "it sets out and circumscribes a particular subject matter (i.e., a specific type of spring-loaded hydraulic pressure regulator) with a reasonable degree of clarity."

The Examiner responded in the Answer as follows:

[T]he claim includes two transitional phrases, and the argued limitation also precedes the second transitional phrase, under which logic the argued limitation should be considered part of the preamble, because it precedes a transitional phrase.

The Examiner summarized up his stance on indefiniteness as: "reasonable artisans could disagree as to the limiting effect of the argued limitation."

The Board reversed the indefiniteness rejection as not being supported by a "rational underpinning." Referring to a dictionary definition of "system," the Board explained that the word "simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as a combination of parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' "

My two cents: I suppose the Applicant could have avoided/overcome the rejection by using "regulator" in the preamble. But maybe using "system" instead avoided arguments in litigation about the meaning of "regulator" ?

Some of the Applicant's comments suggested that the use of "system" rather than "regulator" in the preamble was related to the dependent claims. "System" allowed dependent claims with additional elements (e.g., blowout preventer, fluid source) that were external to the regulator. 

Would the Examiner have given the same indefiniteness rejection if the preamble recited device or apparatus?

PTAB reverses 103 when secondary reference feature would not provide benefit if incorporated into primary reference

Takeaway: The Examiner rejected claims to a citrus reamer as obvious over a combination of three references, with two references disclosing the claimed features and a third providing a reason to combine. The Applicant successfully argued the the Examiner's reason to combine wasn't rational, by providing a technical explanation of why the feature from the second reference wouldn't work in the primary reference. The Board agreed and reversed. (Ex parte Hensel, PTAB 2016.)

Details:
Ex parte Hensel
Appeal 2014-006258; Appl. No. 13/306,946; Tech. Center 3700
Decided:  June 9, 2016

The application was directed to an electric citrus reamer. The only independent claim on appeal read:

     15. A citrus press device with a motor for rotating a citrus reamer comprising:
     ...
     a fruit dome that cooperates with the reamer;
     the reamer having primary ribs,
     each rib having an apex, the apex comprising an elevated projection;
     the elevated projections spaced from and surrounding a central pin that acts as a spacer between the reamer and the dome.

The Examiner rejected the claim as obvious using a combination of three reference. The Examiner found that the primary reference De Zarate (a utility patent) disclosed all limitations except for the projections. For that feature, the Examiner turned to the secondary reference Reinicke (a design patent). The Examiner proposed using Reinecke’s ribs in De Zarate’s reamer 25 so that the De Zarate’s protuberance 26 (mapped to the claimed "central pin") was "surrounded by ribs and was at a higher elevation than the ribs.” For a reason to combine, the Examiner turned to a teaching in the third reference Jakovicz (also a utility patent)   "... portions formed to grip the fruit section [would] prevent undue slipping during use of the device."

The Applicant made two arguments on appeal. One, the combination of the primary and secondary references did not suggest the claimed cooperation between ribs and central pin. Two,  the third reference did not provide a motivation to combine the first two references.

More specifically, the Applicant argued that the primary reference De Zarate taught a central pin but no ribs, while the secondary reference Reinicke taught ribs but no pin. In combining the two, the Examiner did not account for the claim language which required the projection at the apex of each rib to be spaced apart from the central pin, and also required these projections to surround the central pin. According to the Applicant, the Examiner had improperly isolated the pin and rib features and did not consider the claim as a whole.

Reinicke's ribs

De Zanate's reamer

The Applicant also traversed the Examiner's rationale for combining, by arguing that the advantage described in Jakovicz – prevention of undue slipping during use of reamer – didn't make sense when applied to De Zanate's reamer. De Zarate’s device extracted juice from a fruit section by pressing the fruit section between dome (33) and rotating reamer (25), whereas Jakovicz disclosed a fruit press juicer, which did not suggest inclusion of a rotating reamer. Based on this difference in operation, Jakovicz’s teaching of “rib-like parts being formed to grip the cut edge of the fruit section and prevent undue slipping thereof” was not a rational basis for modifying De Zarate’s reamer 25 to include the claimed ribs, since the principle of reamer 25 requires rotation relative to the fruit. The Applicant concluded this portion of the argument by framing the issue as "no reasonable expectation of success," and noting that "Reinecke is a design patent that provides little or no teaching in regards to any operation of the reamer" (emphasis added).

The Board reversed, finding that the Examiner's rationale for modifying De Zarate’s reamer to include ribs was not rational. The Board agreed that Reinecke extracted juice by relative rotation between the ribbed mound and the fruit section. This involved some slippage between the ribbed mound and the fruit section, so preventing slippage wasn't a reason to incorporate this feature into De Zarate’s. The Board then dug deeper into the teaching in  Jakovicz cited by the Examiner cited as a reason for using ribs – and found that this teaching applied to Jakovicz’s annular ribs, not radial ribs (as claimed).

It is not clear how the structure of Jakovicz’s annular ribs 24 would lead a person of ordinary skill in the art to modify De Zarate’s rotating reamer 25 to include Reinecke’s radial ribs to prevent undue slipping between reamer 25 and fruit during use. Jakovicz’s annular ribs 24 grip the outer edges of the fruit section as plunger 27 presses the fruit section into member 20, thereby providing a complete expressing of juice from the fruit section. That is a markedly different juicing operation than De Zarate’s rotating of reamer 25 within the fruit section, as the fruit section is pressed on to reamer 25 by cap 33. Due to the differences in structure and function between De Zarate and Jakovicz we determine the Examiner errs in determining it would have been obvious to modify De Zarate’s rotating reamer 25 to include Reinecke’s ribs, in light of Jakovicz, to prevent undue slipping between reamer and fruit during use of De Zarate’s device.
(Emphasis added, internal citations omitted.)

My two cents: This case caught my eye because the Examiner used a third reference only for a rationale for combining. Theoretically possible, I suppose, to find one reference teaching a feature (here, Reinecke’s ribs) but not an advantage, and another reference (Jakovicz) that taught an advantage for the feature. And of course Reinicke couldn't discuss any advantages or benefits, since it was a design patent, so the Examiner had to turn to a third reference.

But wait ... if the reference teaching the advantage of the claimed feature (Jakovicz) also taught the claimed feature, why use the intermediate reference (Reinicke) at all?

Maybe because the reference-with-advantage doesn't teach all the claimed structure. That's what got the Examiner into trouble here. Jakovicz’s statement about the advantage of ribs applied to annular ribs, not radial ribs as claimed (and as allegedly disclosed in Renicke). I think the Examiner's rationale was irrational for this reason alone.

The Applicant didn't dig that deeply into Jakovicz (and shouldn't have to), and instead focused more on why the combination of ribs and reamer wouldn't work. I might have framed this more narrowly as "change to principle of operation" rather than more general "motivation isn't rational." But the important thing is the technical explanation about why the combination didn't make sense, and kudos to the Applicant for focusing on that. 

PTAB reverses § 103 when secondary reference teaches image processing during capture where claim requires post-capture processing

Takeaway: The Examiner rejected claims to user-initiated post-capture zoom processing of facial images as obvious over zoom processing taught by a primary reference in view of user-initiated zoom during image capture. The Applicant appealed, arguing that the secondary reference relied on by the Examiner taught zoom before capture while the claims required zooming in a digital image that was already in existence. The Board agreed with the Applicant and reversed: "[the secondary reference] zooming by half-pressing a shutter button occurs before capture of an image with its 'image taking device,' whereas the claims are directed to post-capture processing of images with a computer system. (Ex parte Bhatt, PTAB 2016.)

Details:
Ex parte Bhatt
Appeal 2014-009532, Appl. No. 13/182,409, Tech. Center 2600
Decided:  June 13, 2016

The application on appeal was directed to image processing, and more specifically, to presenting zoomed views of multiple faces. Each particular zoom level maximizes the fraction of the image occupied by the face. As explained in the application:

... it would be desirable to present zoomed views of multiple human faces depicted in the images 350-A, 350-B, 350-C and 350-D to allow a user associated with the system 300 to determine one or more faces from among the multiple faces are in focus or otherwise desirable and the image(s) from among the images 350-A, 350-B, 350-C and 350-D corresponding to the determined faces. To this effect, the GUI 302 can also include a control 320 through which the user can request that the system 300 concurrently zooms to portions of the multiple images 350-A, 350-B, 350-C and 350-D depicting faces of several persons.

 ... Upon receiving user input via the arrows of the control 320, the system 300 can switch, based on a display index/order associated with an anchor image, from concurrently presenting zoomed views associated with the detected instances of a person's face to concurrently presenting zoomed views associated with the detected instances of another person's face.

A representative claim on appeal read:

     1. A method performed by one or more processes executing on a computer system, the method comprising:
     presenting, on a user interface viewable on a display coupled to the computer system, one or more digital images;
      receiving user input requesting to zoom to faces depicted in the one or more digital images, where the faces include either human faces or animal faces; and
     in response to receiving the user input and for each of the one or more digital images, automatically presenting on the user interface a zoomed view of the digital image
     that displays an enlarged representation of a portion of the digital image showing an instance of a face depicted in the displayed portion of the digital image,
     the zoomed view of the digital image covering an [entire] area of the user interface configured to present the one or more digital images,
      the zoomed view being presented at a zoom-level that is selected to maximize a fraction of the displayed portion of the digital image occupied by the face.

The Examiner rejected the independent claims as obvious. According to the Examiner, the primary reference Shiritani taught most of the zoom limitations. In discussing the feature "zoom level selected to maximize a fraction ... occupied by the face," the Examiner relied on Shiritani's teaching "... in the case of an upright full-length figure image or the like, because the face area is small, the user has to observe the face area by enlarging the full-length figure image to be full-screen."

The Examiner acknowledged that the primary reference did not teach zooming on multiple faces in response to user input, or doing so automatically. The Examiner turned to Nose for the zoom-in-response-to-user-input feature, the rationale for combining being "in order to allow users more flexibility in image zooming." Finally, for the feature of "automatically presenting ... a zoomed view," the Examiner relied on In re Venner, explaining that "it has been held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art." (MPEP 2144.04.III.)

The Applicant appealed and made multiple arguments against obviousness. With respect to the "maximize a fraction ... occupied by the face" limitation allegedly taught by the "full-screen" discussion in Shiratani, the Applicant argued that the reference did not teach making the face full-screen, but rather making the entire image full-screen. The Applicant then focused on the claim limitation "zoomed view covering an area of the UI configured to present the ... digital images," which the Examiner read on FIG. 9B of Shiratani.

The Applicant suggested that since Shiratani's UI included multiple images in the same window, the zoomed view did not cover the area presenting the digital image.

Finally, the Applicant traversed the Examiner's reliance on Nose for image zooming in response to user input. The Applicant pointed out that Nose described a two-step shutter button in a digital camera, where a half-press of the shutter button zoomed in on a face, and a full-press recorded the current image. Thus, zoom feature in Nose was a zoom before an image is captured, where the claim referred to zooming in a digital image already in existence.

In the Answer, the Examiner responded to the Applicant arguments with additional explanation. First, the Examiner reiterated that "Paragraphs 0017-0020 & Figures 9A/9B [of primary reference Shiratani] disclose maximizing or zooming an image which is already occupying an entire area of the user interface." The Examiner then explicitly explained how the combination was used to reject the claim: "Shiratani ... discloses enlarging the image after capture [while] Nose's contribution surrounds the ability to use the half-press [by the user] to zoom" (emphasis added.)

In a Reply Brief, the Applicant noted an inconsistency in the Examiner's position.

... [t]he Examiner has also made competing assertions with respect to Shiratani ... the Examiner has explicitly acknowledged that "[p]aragraphs 0017-0020  & Figures 9A/9B disclose an album with different faces being disclosed in two or more different images." ... In doing so, the Examiner has contradicted his previous assertion [in the Answer] that Shiratani's "[p]aragraphs 0017-000 & Figures 9A/9B discloses maximizes or zooming an image which is already occupying an entire area of the user interface.
(Emphasis in original.)

The Board agreed with the Applicant that the Examiner's reliance on Nose was in error.

Nose's zooming by half-pressing a shutter button occurs before capture of an image with its "image taking device," whereas the claims are directed to post-capture processing of images with a computer system.

Because the Examiner also admitted that Shiratani failed to teach this feature, the Board reversed the obviousness rejection.

My two cents: The Board got this one wrong: the Examiner's Answer clearly stated that it was the combination of Shiratani and Nose that taught the claimed feature. Nose provided a generic zoom-in-response-to-user-action, while Shiratani taught the claimed zoom details.

The Examiner made it easy for the Board to reach this conclusion, by presenting disjointed findings instead of a single coherent rejection. That is, the body of the rejection in the Answer explicitly stated that Nose taught the entire zoom limitation – and apparently that's the part the Board read. Then, the Response to Arguments section of the Answer contradicted the earlier statement, and explained instead that Nose taught zoom-in-response-to-user and Shiritani taught all other zoom details.

This habit – never revising a position, instead always piling on new stuff – is common practice by both Examiners and Applicants. I certainly appreciate it when the Examiner specifically responds to my arguments, but prefer that the Examiner do so by updating the rejection to take my arguments into account. If the Examiner instead reiterates the errored rejection then provides new information in a "Response to Arguments" section  – as he did here  – then the Applicant has two choices. One, file a response that goes point-by-point to address each contested Examiner statement as a separate argument. Alternatively, the Applicant could synthesize the total of all the Examiner's findings, resolving any internal contradictions, and make a coherent argument against this synthesized rejection.

Most Applicants take the first approach, even though it results in a disjointed argument – and IMHO a disjointed argument is by definition weaker than one that is coherently presented. I imagine there are a variety of reasons why Applicants don't incorporate multiple (and sometimes contradictory) Examiner findings into a single "synthesized" rejection. One, the Examiner contradicting himself is a good thing, right – highlight the contradiction and characterize it as error. Two, the Applicant's job is only to traverse the specific rejection on the record. I have a different viewpoint. As far as I know, an internal inconsistency or contradiction in a rejection isn't fatal error, so I don't see this as a strong argument. Moreover, assuming I'm confident about the "synthesized" rejection,* I am addressing the rejection on the record –I'm just doing a better job of explaining it than the Examiner did.

*I limit this "synthesized rejection" approach to instances where I am confident that I can resolve the internal contradictions/inconsistencies in the rejection. Ex parte Bhatt seems like a good candidate.

PTAB Finds Claims Directed to Point-of-Sale System for Printing Coupons for a Third Party to be Patent-Eligible Subject Matter

Takeaway: The PTAB reversed an Examiner's rejection under 35 U.S.C. § 101 of claims to a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services. In part, the PTAB focused on the specific limitations of the claims to find that the claims do not preempt the abstract idea as defined by the Examiner. (Ex parte Barous, Appeal No. 2016-003320, PTAB, August 1, 2016).

Details:
Ex parte Barous
Appeal 2016-003320; Application No. 10/397,778; Technology Center 3600
Decided: August 1, 2016

In Ex parte Barous, the PTAB reversed an Examiner’s rejection of claims that recited utilizing a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services  under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

The PTAB identified claims 14 and 43 as being representative of the claimed subject matter:

14. A system for distributing third-party coupons by a retailer on the Internet, the Internet including a computer with a monitor and a printer, the third-party coupons being associated with goods or services of a third-party retailer, which goods or services are unrelated to the goods or services of the retailer and wherein the third-party retailer purchases advertising from the retailer, the system comprising:

a server configured to:

cause a graphical user interface (GUI) to be displayed on the monitor;

display an advertisement associated with a third-party coupon of the third-party retailer;

display a threshold value in the GUI;

calculate a value of a transaction based on a purchase of goods or services made from the retailer by a consumer;

display the value of the transaction in the GUI; and

enable the computer to print the third-party coupon when the value of the transaction exceeds the threshold value;

wherein the third-party coupon is redeemable for the goods or services of the third-party
retailer; and

wherein goods or services of the third-party retailer are unrelated to the goods or services sold by the retailer and therefore are unpurchaseable from the retailer.

43. A checkout system for a retail outlet for distributing third- party discount coupons associated with one or more third-party retailers comprising:

a printer; and

a point-of-sale register having a processor configured to:

add prices of items purchased by a shopper to reach a total sale ST;

compare the total sale ST of the shopper to a threshold sale value T; and

print one or more third-party coupons for use with a respective third-party retailer to purchase goods or services unrelated to the goods or services offered by the retail outlet if the total sale ST of the shopper exceeds the threshold sale value T.

 

At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of distributing coupons by a retailer for the purpose of enhancing revenue, and the Appellant did not dispute the Examiner's characterization.  However, during its analysis, the PTAB disagreed with the Examiner and found that the Examiner's characterization of the abstract idea as being too broad.  Instead, the PTAB found that the claims were directed to "much more limited systems and methods distributing only coupons redeemable at a third-party retailer for goods that were unpurchaseable at the issuing retailer and/or are unrelated to the goods or services offered by the issuing retailer, and then only upon the occurrence of certain conditions."

Regarding step two, the Examiner stated "[t]he steps or acts performed (utilizing a processor) in independent method claims 27 and 50 are not enough to qualify as 'significantly more' than the abstract idea itself, since the claims are a mere instruction to apply the abstract idea. Furthermore, there is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment, and the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional."  The Appellant argued that, in the prior art, retailers commonly distributed coupons to enhance sales of goods or services provided by the retailer.  The Appellant contrasted the prior art with the claimed invention by stating the claimed subject matter:

entails systems and methods that enable a retailer to distribute coupons in a different way. For example, the retailer's point- of-sale (POS) register distributes a so-called third-party coupon that is redeemable for a discount on the goods or services sold by some other retailer. These goods or services of the third- party retailer are unrelated to the goods or services offered by the retailer distributing the coupon. The retailer's POS register is configured to print this coupon for a shopper when the register determines that the value of the goods or services purchased by the shopper from the retailer exceeds a threshold value. This enhances the retailer's revenue because the shopper increases his or her purchase from the retailer in order to receive discount coupons for a third-party retailer.

 

The Appellant further argued that the claims meet the specific threshold set forth in step two because the claims "add specific limitations to what is known in the art" because:

[i]t is unconventional for a retailer's POS register to print a coupon for the purchase of a third-party retailer's unrelated goods or services. It is especially unconventional for the retailer's POS register to condition doing this on a shopper's total purchase from the retailer exceeding a certain threshold sale value. None of this is routine or well understood. In fact, twelve years of prosecution reveals that nothing in the prior art teaches these additional features or even renders them obvious. Nothing of record demonstrates that this sort of activity has ever been previously engaged in by those in the field.

 

In its analysis, the PTAB relied upon the specific limitations of the claims to find that the claims do not preempt the "abstract idea" as defined by the Examiner.  To support this conclusion, the PTAB related upon the 2014 Interim Guidance on Patent Subject Matter Eligibility to identify that “specific limitations other than what is well understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application” qualify under the "significantly more" exception of step two.  The PTAB went on to state that these guidelines require that if an Examiner decides the limitations do not add "significantly more" to the claim, the Examiner must identify the limitations and explanations provided as to why this is the case.  The PTAB found that the Examiner failed to provide persuasive arguments or evidence as to why the limitations were not "significantly more" (i.e., the argument “are generic computer functions (e.g. adding, comparing and printing) that are well-understood, routine and conventional activities previously known to the industry” did not suffice.)

Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter finding that the claims did add "significantly more" to the abstract idea.

My two cents:  Appellants may look to contrast specific limitations within the claim with the prior art to illustrate that those claims limitations add "significantly more" to the alleged abstract idea.  Additionally, these types of limitations may be utilized to argue that the claimed subject matter is an "unconventional" arrangement of elements.

PTAB Reverses Examiner’s Patent-Ineligible Subject Matter Rejection of Method Claims for Using Multi-Pixels Spectral Images to Identify Microorganisms

Takeaway: The PTAB reversed an Examiner's rejection of claims for utilizing multi-pixel spectral images to identify microorganisms under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.  In part, the PTAB focused on the practical application of the claimed subject matter to find that the claims do not preempt the abstract idea or any natural law.  (Ex parte Ismail, Appeal No. 2014-005477, PTAB, July 1, 2016).

Ex parte Ismail
Appeal 2014-005477; Application No. 11/630,856; Technology Center 1600

Decided: July 1, 2016

Details:  In Ex parte Ismail, the PTAB reversed an Examiner’s rejection of claims for using multi-pixels spectral images to identify microorganisms under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

Claim 1, which is representative of the claimed subject matter, recites:

1. A method for characterizing a microorganism said method comprising:

a) obtaining at least one multi-pixels spectral image of a sample of said microorganism, wherein each pixel of said multi-pixels spectral image has a corresponding spectrum;

b) selecting one or more spectra from said multi-pixels spectral image, wherein said selecting is based on one or more spectral characteristics of said corresponding spectrum; and

c) identifying said microorganism by comparing said one or more selected spectra with spectra of reference microorganisms from a database to determine an identity of said microorganism.

At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of data manipulation.  More specifically, the Examiner found that the claims recite “methods for characterizing a microorganism by determining an identity of an organism” through “empirical and data analysis and acquisition steps [that] are well-understood, conventional, and routine in diagnosing imaging microorganisms.”   Additionally, the Examiner found “there is no clear-cut practical application of the objective of the claim” and thus concludes the claims are drawn to a patent-ineligible “law of nature/natural principle.”  The Examiner then went on to find that the claims “recite neither a physical transformation nor a critical tie of a significant step to a particular machine.”

The PTAB agreed with the Appellant in finding that the Examiner did not persuasively show that the claims, considered in their entirety, are limited to an abstract idea or natural principle. For example the Appellants argued that the claim limitations of claim 1 require obtaining a multi-pixels spectral image of a sample and then selecting a spectra from that image based on its spectral characteristics.  Additionally, the claim limitations required that selected spectral data of the sample be compared with spectral data of reference microorganisms in a database to identify the sample microorganism.  The Appellants argued that these limitations tied the claim to a particular machine and that comparing spectra from pixels of the image with spectra from a database is not merely a mental process as argued by the Examiner.  For instance, the Examiner argued that the “body of independent claim 1 relies on image data analysis of image data … [that] may be interpreted to be obtained empirically.”  However, the PTAB found that the Examiner did not adequately explain this contention to find that the claimed subject matter was not an abstract idea under step one of the Alice/Mayo framework.

The PTAB then addressed the claimed subject matter under step two of the Alice/Mayo framework (whether the claimed subject matter includes an “inventive concept”).  Similar to the findings with respect to step one, the PTAB was unconvinced that the Examiner set forth reasoning that the “steps recited in the claims are so conventional and routine that the claims, in their entirety, lack any inventive concept.” For this portion, the PTAB seemed to focus on whether the claims would wholly preempt “access to the building block itself.” More specifically, the PTAB stated that “the Examiner has not persuasively demonstrated that the claim elements here add nothing of substance such that the claims stand to preempt any law of nature or abstract idea alone.”  In contrast, the PTAB found that “the rejected claims include multiple steps directed to a practical application of a particular type of spectral-image analysis.”

Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter.

My two cents:  In line with the decision in BASCOM, the PTAB and courts are starting to focus on whether the claims are directed to a practical application of the alleged abstract idea or whether the claims encompass the abstract idea (and thus preempt that abstract idea).  Applicants may wish to utilize these type of arguments, as it appears that some decisions are relying on the practical application aspect of the claimed subject matter.  

PTAB Utilizes Enfish to Find Claim Directed to Bit Slipping is Directed to Patent-Eligible Subject Matter

Takeaway: The PTAB issued a decision overturning an Examiner's rejections of method claims directed to bit slipping as being directed to patent-ineligible subject matter. The Examiner rejected the method claims at issue as being directed to an abstract idea under step one of the Alice/Mayo framework. In overturning the Examiner's rejection, the PTAB utilized the decision in Enfish v. Microsoft to find that the claims were directed to improving the functioning of a computer. (Ex parte Carvalho, Appeal 2015-001076, PTAB July 6, 2016)

Details:

Ex parte Carvalho
Appeal 2015-001076; Application No. 12/283,652; Technology Center 2600
Decided: July 6, 2016

In a decision released on July 6, 2016, a PTAB panel found method claims directed to "bit slipping according to information regarding aligning of words" as directed to patent-eligible subject matter under 35 U.S.C. § 101. Claim 14, which is illustrative of the subject matter rejected as directed to patent-ineligible subject matter, recites:

14. A method comprising:

aligning words to a desired word boundary, wherein each of the words has a plurality of bits;

receiving from a word aligner, by a bit slipper, information regarding the aligning; and

slipping bits of the words, wherein total delay due to the aligning and the slipping is constant for all phases of a recovered clock signal,

wherein the aligning and the slipping are performed by a transceiver system.

The Examiner rejected claim 14 as being directed to patent-ineligible subject matter because claims 14 was "a mere statement of a general concept," and that its recitation of a "transceiver system," a "recovered clock signal," and the functions of aligning and slipping are insufficient to make the claim patent eligible. More specifically, the Examiner found that claim 14 was directed to the abstract idea of "bit slipping according to information regarding the aligning of words."

The PTAB disagreed with the Examiner and cited the recent Federal Circuit decision in Enfish, LLC v. Microsoft Corp.,_F.3d_, No. 2015-1244, 2016 WL 2756255, (Fed. Cir. May 12, 2016) for its support. Specifically, the PTAB explained that Enfish looked to "improvements in computer-related technology, including software improvements, are not inherently abstract, and thus, it is 'relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis'" to find the claims at issue in Enfish as directed to patent-eligible subject matter.

The PTAB then explained that the rejected method claims were directed to "an improvement in the functioning of a computer (i.e., eliminating word aligner latency delay uncertainty) and not to the addition of general-purpose computer components to a fundamental economic practice or mathematical equation." To support this decision, the PTAB looked to the specification of Appellant's application to justify that the claims were directed to the improvement in the functioning of a computer. More specifically, the PTAB identified that the specification taught how prior art systems would introduce "a Deserializer/Word aligner latency uncertainty." The PTAB then contrasted the deficiencies of the prior art with the solutions set forth in the specification. Specifically, the PTAB cited that, in an embodiment, the invention "solves this problem of latency uncertainty by using a bit slipper so that the total delay from word aligning and bit slipping is constant for all recovered clock phases, which 'allows for having a fixed and known latency between the receipt and transmission of bits for all phases of parallelization by the deserializer.'"

As such, the PTAB found that claims at issue were not directed to an abstract idea under step one of the Alice/Mayo framework but instead were directed to patent-eligible subject matter because the claims were directed to an improvement in the functioning of the computer.

Takeaway:  This a useful decision by the PTAB illustrating how to rebut an Examiner's rejection under step one of the Alice/Mayo framework. For example, Applicants and practitioners may contemplate including prior deficiencies to illustrate the technological improvements and benefits of the invention in order to align the claims at issue with the decision in Enfish (illustrating that claims are directed to improving the functioning of the computer).  

Federal Circuit Further Defines Alice Step Two to Find Claims Reciting Conventional Computing Components to Include Inventive Concept

Takeaway: The Federal Circuit issued a decision expanding upon "inventive concept," finding that the inquiry requires more than identifying that each claim element, by itself, was known in the art. Based upon this finding, the Federal Circuit found that claims directed to a specific implementation of filtering content on the Internet did include an inventive concept where the claims set forth a "non-conventional and non-generic arrangement of known, conventional pieces." (BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, No. 2015-1372 (Fed. Cir. June 27, 2016)).

Details: BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC
No. 2015-1372
Decided: June 27, 2016

On June 27, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC further expanding upon step two of the Alice/Mayo framework. As a quick refresher, step one of the Alice/Mayo framework determines whether the claims recite merely an abstract idea, and step two of the Alice/Mayo framework determines whether the claims, if directed to an abstract idea, include an "inventive concept." As stated in Alice v. CLS Bank, "an inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer."

The patent at issue, U.S. Patent No. 5,987,606, included two groups of claims: a first group limited to individual-customizable filtering on a remote ISP server, and a second group further limited to a hybrid filtering scheme implemented on the ISP server comprised of a master-inclusive list, an individual-customizable set of exclusive lists, and an individual-customizable set of inclusive lists. Claim 1 was representative of the individual-customizable filtering and recited:

1.  A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:

a local client computer generating network access requests for said individual controlled access network accounts;

at least one filtering scheme;

a plurality of sets of logical filtering elements; and

a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filter- ing scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

Claim 23, which depends upon claim 22, was representative of the hybrid filtering scheme, and claims 22 and 23 recited:

22. An ISP server for filtering content forwarded to controlled access network account generating network access requests at a remote client computer, each network access request including a destination address field, said ISP server comprising:

a master inclusive-list of allowed sites;

a plurality of sets of exclusive-lists of excluded sites, each controlled access network account associated with at least one set of said plurality of exclusive-lists of excluded sites; and

a filtering scheme, said filtering scheme allowing said network access request if said destination address exists on said master inclusive-list but not on said at least one associated exclusive-list, whereby said controlled access accounts may be uniquely associated with one or more sets of excluded sites.

23.  The ISP server of claim 22 further comprising:

a plurality of inclusive-lists of allowed sites, each controlled access user associated with at least one of said plurality of inclusive-lists of allowed sites, said filtering program further allowing said network access request if said requested destination address exists on said at least one associated inclusive-list.

This case came to the Federal Circuit through on an appeal filed by BASCOM from a district court's decision to grant a motion to dismiss under Rule 12(b)(6). In its analysis, the Federal Circuit agreed with the district court's assessment that the claims were directed to the abstract idea of filtering content on the Internet at step one of the Mayo/Alice framework.

However, the Federal Circuit disagreed with the district court's assessment that the claimed subject matter did not include an "inventive concept." The district court found that BASCOM did not adequately assert that the claims included an "inventive concept" because "considered individually, or as an ordered combination, are no more than routine additional steps involving generic computer components and the Internet, which interact in well-known ways to accomplish the abstract idea of filtering Internet content.”

The Federal Circuit agreed that the limitations of the claims, when taken individually, did recite "generic computer, network and Internet components." However, the Federal Circuit stated that the "inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art" and that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." To support its decision, the Federal Circuit stated that the claims did not preempt "all ways of filtering content on the Internet" but instead were directed to "a particular, practical application of that abstract idea."

The Federal Circuit went on analogize the claims at issue with the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). For example, the Federal Circuit identified that the present claims were claiming a technology-based solution to filter content on the Internet that overcomes existing problems with other Internet filtering systems much like the claims present in DDR which were claiming a technical way to satisfy an existing problem for website hosts and viewers.

My two cents: Finally, a Federal Circuit decision providing applicants and appellants the ability to rebut step two assertions from the Patent Office that the claim elements merely recite a "generic," "routine," and/or "conventional" components.

 

Claims Directed to Prioritizing Events on an Electrical Power System Found Invalid as Being Directed to Patent-Ineligible Subject Matter Under 101

Takeaway:  A PTAB panel introduced a new ground of rejection sua sponte finding that the claimed subject matter was directed to patent-ineligible subject matter. The panel found that the claimed subject matter was directed to prioritizing events within an electrical power system and that the Applicant's patent application described nothing more that mere data collection within the system and prioritizing events based upon a ranking.  In other words, the Applicant's patent application admitted that it was known to gather data about abnormal conditions within an electrical system.  As such, the panel equated the technical details of the claimed subject matter to limiting the use of the abstract idea of prioritizing events to a particular technological environment.  (Ex parte Muthu-Manivannan, Appeal 2014-006595, PTAB June 13, 2016.)

Details:
Ex parte Muthu-Manivannan
Appeal 2014-006595;  Application 12/031,990;  Technology Center 2400
Decided: June 13, 2016

In a recent decision in which the Applicant appealed an examiner's rejection under 35 U.S.C. 103, the Board entered a new ground of rejection under 35 U.S.C. 101 for method claims that were directed to "prioritizing events on an electrical power system."  Claim 1, which was illustrative of the claimed subject matter, recited:

A method for prioritizing events on an electrical power system, comprising:
(a) acquiring at least one data portion representative of the behavior of an electrical power system, where the electrical power system comprises all or a part of a system that conducts electrical power between an electric power source and an electric load, the at least one data portion containing at least one power system event which represents a deviation from steady-state operation of the electrical power system;
(b) assigning at least one rank value to the at least one data portion based on the type of power system event, the rank value indicative o f a priority o f the event; and
(c) conducting subsequent data processing operations on the at least one data portion in accordance with the at least one rank value. 

The Board began its analysis with first determining "whether the claims at issue are directed to one of those patent-ineligible concepts" (e.g., fundamental economic practice, method of organizing human activity, an idea of itself, or mathematical formula or relationship).

In this analysis, the Board noted that claim 1 was directed to a method that comprised "(a) acquiring data containing an event representing a deviation from a steady state operation of a power system, (b) assigning a rank indicative of a priority based on the type of event, and (c) conducing data processing operations in accordance with the rank."  Based upon this finding, the Board found that the claim was only directed "to the idea of prioritizing events based on type and processing data in accordance with the rank."  The Board went on to state that "this idea, which amounts to a scheme for organizing and using information, is abstract, as were similar to concepts that have been considered by both the Supreme Court and our reviewing Court" and referred to decisions finding claims directed to patent-ineligible subject matter such as in In re TLI Communications LLC Patent Litigation, No. 2015-1372, 2016 WL 2865693 (Fed. Cir. May 17, 2016) and in Intellectual Ventures I LLC v.Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015).

Finding that the claimed subject matter was directed to an abstract idea, the Board transitioned to determining whether the claimed subject matter was directed to significantly more than the abstract idea itself (i.e., directed to a patent-eligible application of the abstract idea).  In this analysis, the Board pointed to the background and specification portions of Applicant's patent application to find that "it was known to gather information about abnormal conditions in an electrical system for used by operations and maintenance personnel" and that "the claim merely acquires data, ranks the data, and 'conduct[s] subsequent data processing operations' according to the ranking."  Based upon these findings the Board found that claim 1, as a whole, comprised "conventional steps involved in managing an electrical system (i.e., processing events), to which the abstract idea of ranking is applied, where the steps are performed on a computer."  The Board went on to note that "neither limiting the use of an abstract idea to a particular technological environment nor using a general purpose computer can transform the idea into a patent-eligible invention."

Based upon these findings, the Board concluded that independent claim 1 did not amount to more than an abstract idea and entered a new ground of rejection. 

My two cents:  This decision provides further support that any description of "conventional," "known," and "routine" usages of technology within the specification may come back to bite an applicant since the Board, patent examiners, and the courts have utilized these types of descriptions to support a finding that an abstract idea was merely being implemented within a particular technological environment or being implemented using a general purpose computer. 

PTAB: Nuijten Doesn't Apply to Method Claims

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Takeaway: The 35 U.S.C. § 101 prohibition against claims covering transitory signals per se, as articulated by the Federal Circuit in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), does not apply to method claims, since methods are processes and are therefore among the expressly permitted categories of statutory subject matter. Ex parte Kosuru, No. 2014-005593 (P.T.A.B. May 19, 2016).

Details:
Ex parte Kosuru
Appeal 2014-005593; Appl. No. 13/406,478; Tech. Center 2100
Decided: May 19, 2016

In the application underlying this appeal decision, all of the independent claims were method claims, and each recited an "input file being stored on a computer readable storage medium." Initially, the word "storage" was absent from the claims, and the examiner rejected all of the claims as directed to non-statutory subject matter under § 101, citing to In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating signal . . . is not a 'process, machine, manufacture, or composition of matter.' Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.") The claims were amended to specify that the "medium" was a "storage medium," as above, but the examiner maintained the rejection on final.

The Federal Circuit held in Nuijten that a propagating signal itself, such as a radio broadcast, an electrical signal through a wire, or a light pulse through a fiber-optic cable, is not patentable subject matter. According to then-director David Kappos's January 26, 2010 memo to the examining corps, entitled "Subject Matter Eligibility of Computer Readable Media," the PTO interpreted the Federal Circuit's decision in Nuijten to mean that "[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." The memo references the Nuijten opinion as well as the August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."

In their briefs in Kosuru, the appellants conceded that their claims were "drawn to" a computer-readable storage medium, but emphasized that the use of the word "storage" meant that the claims could not read on transitory signals and thus were subject-matter eligible. In support, the appellants referred to Ex parte Hu, No. 2010-000151 (B.P.A.I. Feb. 9, 2012), which held that "[w]hile a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data" (emphasis added).

The examiner's only response was an allegation that the specification did not refer to "storage" media—a weak response given that the claims clearly recited "storage" and no rejection was made on § 112 grounds for lack of written description or enablement. The appellants' reply brief noted several specification paragraphs that mentioned algorithms "stored on" computer-readable media or on "a disk," but even absent this support, PTO policy evidently tolerates amendment language limiting claims to non-transitory embodiments even when such language is not explicitly supported, so long as non-transitory interpretations are not ruled out by the specification. See the above-mentioned 2010 memo ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments . . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent . . .").

The PTAB resolved the appeal of the § 101 rejection on much broader grounds than the examiner and appellants had argued: "Unlike the claims at issue in In re Nuijten, each of the pending claims here recites a method—a series of acts or steps—and thus falls under the statutory category of 'process.'" Indeed, the examiner (and the Board) had only to read the opinion cited in support of the rejection to realize that, in Nuijten, disputed independent claim 14 was directed to "[a] signal," while claims 1-10, directed to "[a] method," and 11-13, "[a]n arrangement for embedding supplemental data in a signal," were not appealed because the PTO found them statutory without any fuss.

My two cents: Nuijten did not expressly hold that process claims cannot be rejected as "covering" transitory signals, because that issue was not before the Nuijten court. This case may provide useful support for countering Nuijten-type rejections of method claims.

Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based. Transitory signal subject-matter analysis is a narrow area of subject-matter eligibility analysis. Like the words "directed to" used in broader subject-matter eligibility jurisprudence, including abstract-idea jurisprudence (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014); In re Benson, 441 F.2d 682, 684 (C.C.P.A. 1971)), the word "covers" used in the Kappos memo ("[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected . . .") can be interpreted overly broadly. When "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes. The examiner and appellants got lost on a wild goose chase over whether the specification taught "storage" media, whereas the real question was the propriety of the examiner's initial decision as to whether the claims could be interpreted as attempting to capture, among whatever else, transitory signals per se.

Another potentially winning argument in this case might have been to argue that the claimed "input file" cannot reasonably be interpreted as encompassing transitory signals, since, even under broad interpretations, "file" has a meaning of a record of greater-than-transitory permanence such that it can be stored and retrieved at arbitrary times. After this PTAB decision, such an argument is superfluous in view of the fact that an Applicant can simply point out that the claims are couched as methods.