Board finds that using input device from stowed location renders unsatisfatory for intended purpose

Takeaway: The Applicant appealed an obviousness rejection of a claim to a personal portable storage device (PPSD) with simultaneous wireless access to host devices. The limitation at issue was "said PPSD remaining in a stowed location during said access." The primary reference was an input device "incorporating additional devices or functionality." The Examiner added a reference teaching a cardiac/lung function monitor that could be carried in the hand, on a belt, or in a pocket. The Applicant argued that stowing the computer input device would render it inoperable for its intended purpose. The Examiner explained that a trackball device (one of the devices mentioned in the primary reference) could be used in a pocket since motion of the device itself wasn't required to manipulate the cursor. The Board agreed with the Applicant and reversed the rejection under § 103. (Ex parte Chen, No. 2013-000463, PTAB Mar. 4, 2015)

Details:

Ex parte Chen
Appeal 2013-000463; Appl. No. 11/170,655; Tech. Center 2100
Decided:  March 4, 2015

The application on appeal described "a portable device which may wirelessly interface with other personal electronic devices in order to provide increased data storage capacity." A representative claim on appeal read:

     1. A personal portable storage device (PPSD) comprising:
     a storage medium;
     a wireless component coupled to said storage medium, said wireless component having multiple simultaneous connection capabilities;
     a transfer management electronics coupled to said storage medium for allowing a plurality of host devices to access said PPSD simultaneously through said wireless component, without requiring physical connections between said PPSD and said plurality of host devices,
     said PPSD remaining in a stowed location during said access;
     a self-contained energy source coupled to said transfer management electronics; and
     a housing of a size and shape well-suited to being carried on a person, said housing at least partially enclosing said storage medium, said wireless component, said transfer management electronics, and said self-contained energy source,
     such that said PPSD is easily transported.
(Emphasis added.)

The Examiner rejected this claim as obvious over Ram, Gurevich, and Sackner. The primary reference, Ram, was directed to a computer peripheral (e.g., a mouse) with additional I/O devices contained within the peripheral's enclosure. Gurevich taught the simultaneous access without physical connections feature, and Sackner was used for the "stowed" feature. Sackner was directed to a cardiac/lung function monitor, "possibly hand-held, [and] it may also be carried on an individual normal clothing, for example, on a belt, or may be placed in a pocket provided on garment." The Examiner's rationale for combining Sackner with Ram and Gurevich was "it is easy to situate a PPSD [personal portablestorage device] on a belt."

The Applicant argued that the combination was improper because it rendered the prior art being modified unsatisfactory for its intended purpose (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). More specifically, "keeping the computer apparatus of Ram stowed" would mean it wasn't available for use, "which is directly away from Applicants understanding of the intended purpose of Ram (a mouse apparatus)."

Maintaining the rejection, the Examiner noted that in addition to a mouse, Ram also taught a keyboard containing memory and a wireless adapter. "Since keyboards do not typically need to be in a constant state of motion to be used properly," the combination of Ram's keyboard as modified by Gurevich and Sackner could be stowed "without affecting the ability to use the device." In response, the Applicant asserted that operating a stowed keyboard would be difficult, then attacked the Examiner's statements as "extremely speculative and not supported by a preponderance of evidence." The Applicant requested that the Examiner provide an affidavit in support of his findings. 

The Examiner kept the rejection, and in response to the Applicant's argument about the difficulty of using a stowed keyboard, the Examiner noted that the Applicant's own FIG. 6 depicted the storage device stowed in a pocket. The Applicant repeated the same render-inoperable argument and noted that no Examiner affidavit had been provided to support the Examiner's findings.

This time the Examiner maintained the obviousness rejection but switched focus once again. Sackner disclosed a heart monitor that was "stowable on one's belt or pocket," plus Ram disclosed a trackpoint or trackball "as part of the keyboard or mouse." Since a trackpoint/ball moves the cursor without moving the device around, it "can easily be manipulated to move the cursor while stowed, and keys can still be manipulated on a device that is in one's pocket or on a belt."

In the last response filed before appeal, the Applicant characterized these Examiner statements as "purely speculative and not supported by a preponderance of evidence." The Applicant also questioned the Examiner's new focus on Sackner. The Examiner's rejection modified Ram with Sackner (not vice versa), so whether or not Sackner was stowable was "not the question being raised or the argument being addressed." The Applicant restated the § 103 argument as follows:

     [I]t is the utilization of Ram from a stowed location that is properly being addressed in Applicants arguments. With respect to Ram, the Office Action has not provided a prima facie case that overcomes Applicants arguments that keeping the computer apparatus (a mouse apparatus or a keyboard) of Ram stowed would result in Ram not being available for PROPER or INTENDED purpose of Ram.
...
     [W]hether the computer apparatus of Ram can be manipulated while in one's pocket or on a belt is irrelevant and erroneous. It is merely a straw­ man argument to that does not provide any factual evidence to support the prima facie case for obviousness. That is, Applicants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.
     In contrast, Applicants submit that a proper prima facie rejection of obviousness must be supported by evidence rather than speculation and opinion. Specifically, Applicants note that attempting to utilize the computer apparatus of Ram from a stowed location would adversely affect the ability to use the device.

The Examiner issued one more Office Action before the Applicant appealed. The Examiner's position wasn't speculative, since a trackball or keyboard was easily manipulated "as long as it is reachable by the user." And although the Applicant characterized manipulation of Ram's device while stowed as "irrelevant and erroneous," "it is well-known that a keyboard or trackball can be manipulated on a device that is stowed in a fixed position."

At that point, the Applicant appealed. The Applicant did a quick traversal of the obviousness rejection by arguing that the Examiner's modification of Ram by Sackner rendered Ram inoperable for its intended use. The remainder of the Appeal Brief focused on the Examiner's failure to make a prima facie case supported by evidence, as opposed to subjective opinion.

To this end, the Applicant attacked several assertions made by the Examiner in prosecution, including a trackball or keyboard is easily manipulated when in reach, and "it is well-known  that  a keyboard or a trackball can be manipulated  on a device that is stowed in a fixed position." According to the Applicant, such statements were speculative and not supported by any actual evidence.

The Applicant then cited to several administrative law cases mentioned in the MPEP.

The "assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support" (MPEP 2144.03(a); In re Zurko, 258 F.3d  1379, 1385, (Fed. Cir. 2001)). Moreover, "the examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge" (MPEP 2144.03(B); see In re Soli, 317 F.2d 941, 946, (CCPA  1963); see also In re Chevenard, 139 F.2d 711, 713 (CCPA  1943)).

The Applicant concluded the Appeal Brief with:

Appellants submit that the above well-known statement lacks any factual evidence to support the prima facie case for obviousness. In contrast, Appellants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.

In the appeal decision, the Board first summarized the positions of the Applicant ("the mouse would not be available for its intended use as an input device if stowed in a pocket or a belt as in Sackner") and the Examiner ("being stowed would not inhibit the mouse from communicating with other devices"). The Board then reversed, explained its reasoning as follows:

Although the mouse includes a storage device, the Examiner has not shown that the storage device is capable of being accessed by host devices outside of the mouse for storing or retrieving data. Therefore, on this record, the sole intended use of the mouse does not depart from its conventional purpose as an input device. Thus, we agree with Appellants modifying the mouse with Sackner’s teaching to be stowed would not comport with its intended use as an input device, and would thereby render the mouse unsatisfactory for its intended purpose.^3
3 In the event of further prosecution, the Examiner should consider modifying Sackner’s microprocessor (3) with the teachings of Gurevich and Ram to reject claim 1.

My two cents: First off .... why so long to appeal? The Applicant filed a total of 9 responses and 3 RCEs before appeal. And 4 of these 9 responses argued the very issue that went to appeal. Sure, the Applicant got more information each time (generally a good thing) but it also allowed the Examiner to switch position. Should have appealed much earlier. Definitely a bad idea to RCE without amending or entering evidence.

But kudos to the Applicant for recognizing a good rationale-to-combine argument, and sticking to it. It's rare to appeal when the only issue is rationale-to-combine, as opposed to combination-doesn't-teach.

The Applicant's focus on Examiner evidence seemed to be unnecessary in this particular case. The way I read it, the Board reversed because it was persuaded by the Applicant's combination-unsatisfactory-for-intended-purpose argument, and not because the Examiner didn't provide evidence about manipulation of a trackball stowed in a pocket. The Board simply looked at the conventional purpose of an input device and found that stowing it away would frustrate this purpose. The Board then concluded that, since this was the case, a POSITA would not modify Ram's input device to be stowed away like Sackner's monitor.

In other words, the Applicant and Examiner focused on whether an input device could be used while stowed, but the Board focused on whether a POSITA would do this in the first place. And rightly so, as rationale/motivation to combine isn't about what a POSITA could do, but about what a POSITA has a reason to do. The Board didn't see a reason to stow the input device away.

This reasoning sidesteps the issue of whether or not the Examiner needed evidence. But say the Board did reach that issue ... isn't this question one that can be understood by any one with common knowledge and common sense? Neither side went into a lot of explanation as to why a trackball was or was not usable in this manner. The Examiner gave a couple of sentences explaining why usable, while the the Applicant made a naked assertion "not usable." Neither side offered evidence, but maybe evidence is overkill for this particular technology and use case.

Or is the Applicant right, and as a matter of administrative law, the Examiner needs evidence to support his position? Usually, the references themselves are used as evidence. I doubt Ram had anything to say about using the device while stowed, and the Examainer didn't cite to any such teachings in Ram.

Does it make a difference whether the combination uses Ram's keyboard, trackball, or mouse? Note that the Board's opinion said "render the mouse unsatisfactory for its intended use."

Was the Examiner's thinking colored by the fact that it's now common (in 2016) to use a smart phone without looking at the keyboard?  Not such a stretch to envision texting on a smart phone that's stowed in a pants pocket.

Did you catch footnote 3 at the end of the Board's opinion? The Board suggested that using Sackner (the heart monitor) as the primary reference would be a better obviousness rejection. Looks like Sackner's heart monitor meets the storage, housing, stowed, and energy source limitations. Ram provides the transfer electronics and wireless, and Gurevich provides the simultaneous connections. I haven't thought about it enough to know what the two rationales for modification would be, but the combination certainly doesn't have the same weakness that the Examiner's combination did, since the base device is stowable.

Tips for arguing Unexpected Results Arguments to overcome obviousness

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

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

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


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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Board finds swear-behind declaration to be insufficient for lack of explanation

Takeaway: The Applicant attempted to remove a reference with a § 1.131 (swear-behind) declaration. The two-page declaration referred to an Appendix A included in the provisional application but did not comment or explain on the Appendix. The Board found that the Applicant had not provided any of the evidence needed to show conception, reduction to practice, or diligence. "[T]here is no explanation of what the document in Appendix A is; whether it purports to establish conception or actual reduction to practice; what diligence, if any, the inventors can show in reducing the invention to practice; and how it discloses the claimed invention." (Ex parte Schmidt, PTAB 2014.)

Details:
Ex parte Schmidt
Appeal 2012005120; Appl. No. 10/156,131; Tech.Center 2600
Original Decision:  May 29, 2014; Rehearing Decision:  Sept. 12, 2014

In response to a prior art rejection in a Non-Final Office Action, the Applicant attempted to remove a reference with this § 1.131 (swear-behind) declaration:

Guest Post: A Cautionary Tale Relating to Use of Declarations Under 37 C.F.R. § 1.132

[Guest Post by Tracey Harrach, a registered patent attorney at Maschoff Gilmore & Israelsen. Tracey's practice includes all aspects of trademark and patent prosecution. She practices in a variety of technology areas, including: chemical formulations, processes, and syntheses; semiconductor processing and fabrication; biotechnology; and material science.]

Takeaway:  In a post-Therasense decision, a district court granted summary judgment on inequitable conduct stemming from declarations submitted in a reexamination proceeding (Reexam Control No. 90/010,874). Therefore, before submitting a declaration to the PTO, ensure: (1) any past or present financial relationships between the declarant and the patentee are fully disclosed, (2) declarations are provided only by individuals having skill in the relevant art, and (3) representations relating to distinctions over prior art are based on the personal knowledge of the declarant. (Caron et al. v. QuicKutz, Inc., 2:09-cv-02600-NVW (D.Ariz. Nov. 13, 2012.)

Details:

Declarations can provide an expeditious way to advance prosecution; however, declarations may also be fertile ground for charges of inequitable conduct.  While Therasense has significantly raised the bar for a party asserting inequitable conduct based on the patentee’s failure to submit a prior art reference, Therasense recognizes an exception to the “but-for” standard of materiality in connection with the filing of a “false affidavit.”  Therasense, Inc. v. Becton, Dickinson & Company, 649 F.3d 1276, 1292-93 (Fed. Cir. 2011).

A scathing opinion entered by the District Court in Arizona provides a reminder of the dangers associated with the use of declarations in practice before the PTO.  In Caron et al. v. QuicKutz, Inc., Case No. 2:09-cv-02600-NVW, the Court granted summary judgment of unenforceability due to inequitable conduct relating to U.S. Patent No. 7,469,634.  The Court identified three separate acts of inequitable conduct involving declarations submitted to the PTO by the plaintiffs. 

First, the Court found that plaintiffs committed inequitable conduct by submitting three declarations under 37 C.F.R. § 1.132 by individuals who had undisclosed prior financial relationships with the plaintiffs.  Order, at page 15.  See Declarations under 37 C.F.R. § 1.132 submitted on July 5, 2011 in Reexam. Control No. 90/010,874 (available on Public PAIR).  These declarations were submitted by the plaintiffs in order to establish that the plaintiffs’ products were unique in the marketplace.  Specifically, the plaintiffs argued to the PTO that “each declarant identifies that these die features and benefits are novel in their opinion and have never been commercialized in the scrapbooking industry before Spellbinders introduced this invention.”  See Office Action Response dated July 5, 2011, submitted in Reexam. 90/010,874.

The Court cited Ferring B.V. v. Barr Laboratories, Inc. for the proposition that “the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.”  437 F.3d 1181, 1187 (Fed. Cir. 2006).  The Court rejected the plaintiffs’ arguments that the prior relationships were minimal, and accordingly, did not need to be disclosed.  Specifically, the Court found:

Although Plaintiffs contend that the compensation each received was minimal, the evidence shows a basis for possible bias by each declarant. Clear and convincing evidence shows each declarant had motivation to provide an opinion favorable to Plaintiffs’ patent application. The PTO was deprived of evidence that it needed to determine the weight it should give to the declarations….
Order, at page 15.

This issue can be avoided by directly communicating to a declarant the importance of full disclosure of prior and current relationships and ensuring that those relationships are clearly recited in the declaration.  The PTO does not prohibit submission of declarations by declarants with relationships with the patentee.  On the contrary, the Federal Circuit explained in Ferring:

In coming to this conclusion, we fully recognize that inventors often consult their colleagues or other persons skilled in the art whom they have met during the course of their professional life. Accordingly, when an inventor is asked to provide supportive declarations to the PTO, it may be completely natural for the inventor to recommend, and even contact, his own colleagues or people who are, or who have been, affiliated with his employer and to submit declarations from such people. Nothing in this opinion should be read as discouraging such practice. Rather, at least where the objectivity of the declarant is an issue in the prosecution, the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.
437 F.3d at 1194-95.

Second, the Court found that the plaintiffs committed inequitable conduct by submitting declarations from two individuals who based their declarations solely on experience with the plaintiffs’ product as end users.  Order, at pages 14-15.  The Court found “[h]ad the PTO known that [the declarants] did not have professional experience in the relevant industry, it would have given little or no weight to their opinions, particularly regarding the novelty of Spellbinders’ dies.”  Id., at page 15.  In reaching this conclusion, the Court noted the plaintiffs’ representation that the declarations were provided by individuals with “experience in the arts and crafts and scrapbooking industry that are familiar in some way with the [plaintiffs’ products].”  Id., at page 14.  The Court found that the two individuals “[b]oth provided opinions using technical language that implied professional experience in the relevant industry rather than merely experience as a customer….”  Id. 

A practical way to avoid this issue is to have a declarant prepare his or her own declaration and to include in the declaration a description of the declarant’s relevant experience. This approach ensures that the language used by the declarant is commensurate with the declarant’s experience.  Further, by relying on the declarant to describe his or her qualifications, the PTO will have relevant information available to gauge the declarant’s competence to reach the conclusions recited in the declaration.

Third, the Court found that the submission of a declaration by the inventor and one of the plaintiffs, Jeff Caron, constituted “an affirmative act of egregious misconduct” due to unfounded and unsupported characterizations in the declaration of the prior art reference upon which the PTO relied.  Id., at page 21.  The declaration in question was filed by the Plaintiffs on October 24, 2011, in Reexam. 90/010,874, and purported to describe the teachings of International Publication No. WO 03/016035. The Court found that the declarant lacked personal knowledge relating to the assertions made in his affidavit.

The Court’s finding that the declaration constituted “an affirmative act of egregious misconduct” was based upon a finding that the declaration “misrepresented that it conveyed information that the declarant knew to be true and was submitted to the PTO with the misrepresentation that the declarant had firsthand knowledge about the subject of the declaration.”  Id.  The Court also found that Mr. Caron’s deposition testimony was inconsistent with his declaration.  According to the Court, “his deposition testimony was more than evasive; it was false or misleading. If his deposition testimony was true and responsive, then his 2011 representations to the PTO are, at the least, misleading.”  Id., at page 20.

A similar scenario could plausibly occur when an attorney, and not the declarant, formulates the content of the declaration and presents the finished declaration to a declarant for signature.  In such a scenario, the declarant may not take the time to fully understand an argument prepared by the attorney, believing that the attorney’s understanding is sufficient.  As noted by the Court, however, declarations must be based on declarant’s personal knowledge.  In other words, it may not be sufficient to merely have sound technical arguments.  Rather, the arguments must be sound and the arguments must be based on personal knowledge of the declarant.  Again, this issue may be avoided by having a declarant prepare his or her own declaration. 

Can a draft application serve as evidence of conception in a swear-behind declaration?

In prosecution, a reference that is dated a few days or weeks before your application's filing date may provide an opportunity to swear behind the reference. But if you follow the conventional approach of using an invention disclosure document as evidence of conception, that may involve showing diligence for a long period up to filing of the application. What if you could use a draft of your patent application as evidence of conception? Now the diligence period would probably be much shorter. [If you need a refresher on swear-behind declarations, conception, and diligence, see my posts here, here, and here.]

I think using a draft application as evidence of conception is a viable strategy, given the right facts. I ran across a file history and corresponding BPAI opinion where the Applicant tried something like this, but blew it by not submitting the right documents as evidence of conception until it was too late. In a future post, I'll explain what went wrong in that case, and some lessons to be learned. This post will explain when and how to use a draft patent application as evidence of conception. I can't promise you this strategy will work -- I haven't run across any another file histories where this came up. So read through my explanation and decide for yourself.

A draft application is great evidence of conception in that – unlike an invention disclosure or technical paper – it's specifically written to describe and enable the claims. However, unlike an invention disclosure or technical paper, it's not written by the inventor. So on its face, an unfiled application may not appear to show conception by the inventor. This is the first obstacle to be addressed in using a draft application as evidence of conception.

I think inventor approval can provide this missing link. If the inventor approved the application for filing before the effective reference date, then I think we have conception by the inventor before the critical date. Along the same lines, an executed declaration of inventorship can provide the missing link. An inventorship declaration that is executed by at least one inventor before the effective reference date shows conception by the inventor.

If you don't have inventor approval/execution before the effective reference date, is the game over? Maybe not. If you can show that the application actually filed has no significant differences as compared to a draft application in existence before the critical date, doesn't that also provide the missing link? Doesn't that also show that the draft application reflects the inventor's conception? After all, the inventor later signed an inventorship declaration attesting that a very similar document described his invention.

So I think that under any of these fact scenarios, you have evidence of conception before the critical date. Of course, you still need evidence of diligence in filing, even if it's only for a few days or weeks. But that's going to be easier to deal with than the typical diligence period, because that starts much earlier when an invention disclosure is filed with the employer. 

As with any swear-behind declaration, a swear-behind relying on a draft patent application as evidence of conception should explain the correspondence between sections of the relied-upon document (in this situation, the draft patent application) and the elements of the pending claims. (See my previous posts mentioned above for more information.) The swear-behind declaration should also include an affirmative statement by the inventors that the draft application describes the claims. You should submit the draft application, as supporting evidence, along with the swear-behind declaration. You should also submit evidence that the draft was in existence as of the effective reference date.

Finally, you must comply with all the formalities of a swear-behind (e.g., signed by all inventors) and follow the rules to get the evidence entered (e.g., on non-final, with an RCE, or with a "good and sufficient" showing after final).

What do you think? Creative thinking? Or am I way off base?

BPAI gives expert testimony little weight, for discussing state of the art before filing date and admitting no knowledge of reference before litigation

Takeaway: In an appeal from an ex parte reexamination, the patentee submitted a number of expert depositions from related litigation in support of various non-obviousness arguments.  In affirming the Examiner's obviousness rejections, the BPAI suggested that the expert testimony was not probative because the testimony related to the state of the art at a time well before the filing date. The BPAI also suggested that the testimony had little value because the experts admitted they were not even aware of the prior art systems at the time of filing. (Ex parte Baxter International, Inc., BPAI 2010.)

Details:

Ex parte Baxter International, Inc.
Informative Opinion
Appeal 2009006493; Reexamination No. 90/007,751; Patent 5,247,4341; Tech. Center 3900
Decided  March 18, 2010


This was an appeal in an ex parte reexam. The patent relates to a touch screen user interface for a  kidney dialysis machine. A representative claim on appeal read:

12. In a method of operating a hemodialysis machine, an improvement in a user/machine interfacing process, the improvement comprising:
   (a) providing a touch screen operably coupled to the machine, the touch screen adapted to display an indicium soliciting a user of the machine to touch a region on the screen so as to select a machine-operation parameter;
   (b) touching the region to select the machine operation parameter;
   (c) in response to said touching, invoking on the screen a data-entry display associated with the machine-operation parameter, the data entry display including a display of a permissibly settable range of the machine-operation parameter, so as to allow the user to select and enter a parametric value associated with the machine-operation parameter within said range; and
   (d) touching the data-entry display to select and enter the parametric value so as to cause the machine to operate in conformance with the selected machine-operation parameter and the entered parametric value.

During the reexam, the Examiner rejected the claims as obvious. As a primary reference, the Examiner used "the CMS08 Handbook," a manual for a dialysis machine which used a control panel for input and a screen for display. As a secondary reference, the Examiner used a "SARNs 9000" manual describing a blood perfusion machine with a touch screen that supported both input and display. In response to the rejection, the patentee put forth various arguments of non-obviousness, and included various depositions from a related litigation to support some of these arguments.

The patentee made a number of arguments in the Appeal Brief. One of the arguments attacked the prima facie case of obviousness by explaining why a POSITA would not combine the asserted references. The patentee used the litigation depositions to provide factual support for this argument. For example:

   Finally, the Patent Owner maintains that an ordinary artisan in the field of hemodialysis would not have looked to the cardio-pulmonary bypass (CPB) field for help in solving the problems of traditional user control of hemodialysis function. Baxter (the Patent Owner) and Fresenius (the Reexamination Requestor) are the two largest dialysis companies in the world. In the nearly five-year litigation surrounding these patents, almost sixty depositions were taken, including all of the named inventors, key present and past R&D personnel for both companies, numerous senior marketing executives, nephrologists, and other third-party witnesses in the dialysis field. It is hard to imagine a more representative sample of those "skilled in the art." Yet not a single witness from either Baxter or Fresenius had even heard of the Sarns machine. This fact speaks volumes about whether one of ordinary skill in the art of hemodialysis machines would have looked to the cardio-pulmonary bypass field for inspiration or problem-solving help.
   As Dr. Lee Henderson, Baxter's expert consultant in hemodialysis and nephrology, points out in his expert report: "Based on my experience during the relevant time, there was very little, if any, technical exchange between engineers designing HD equipment and those designing heart-lung machines."
(Emphasis added, internal citations omitted.)

In the Answer, the Examiner treated the patentee's "POSITA would not combine" argument as a non-analogous art argument:

   Appellants argue that testimony of Dr. Dennis Brunner and Lee Henderson supports the contention that the artisan would not have knowledge, awareness nor would have looked to the prior art in design of a touch screen hernodialysis device. Such testimony, while expert opinion is an argument akin to an assertion that the references are non-analogous art. These arguments are non-persuasive [because] the substantive issue here is more basic. The artisan already possessed functional hemodialysis devices [the CMS08] with suitable controls, guidance to selectable variables and alarm limits. ... The issue before the artisan was clearly more simple, related to the ease with which the user might analyze and effect a change in certain hemodialysis parameters. The issue comes down to one of programming, and whether the artisan would be guided to the art accepted input/output device of a touch screen to effect such parameter changes.

The Board affirmed all of the Examiner's obviousness rejections. After making various findings of fact about the teachings of the references, the Board concluded that:

[T]he collective teachings of the applied prior art references would have prompted a person of ordinary skill in the art to couple a touch screen interface with a hemodialysis machine. ... The interrelatedness of the prior art teachings, coupled with the expectation that a technique used to improve one device would also improve other similar devices, amply support the Examiner’s obviousness conclusion. KSR, 550 U.S. at 417-18.

In discussing the patentee's rebuttal evidence, the Board noted that the expert testimony was not credible because it focused on the wrong time period.

We also find no error in the Examiner’s refusal to credit the testimonies of certain experts as supporting Appellant’s skepticism or lack of a reasonable expectation of success argument. As pointed out by the Examiner, these experts testified on the knowledge of a person of ordinary skill in the art at a time period significantly before the relevant filing date. We have not been directed to any evidence indicating that further advances in touch screen technology did not occur up to the relevant filing date. 

The Board also discounted the expert evidence because it failed to take into account the teachings of the asserted references:

Moreover, we have not been directed to any evidence that these witnesses, before giving their testimonies, considered the teachings of the applied prior art references, which plainly disclose the successful incorporation of touch screen interfaces into critical medical systems. Indeed, Appellant has admitted that “not a single witness from either Baxter or Fresenius had even heard of the [prior art] Sarns machine.” That admission reveals the lack of any substantial value in the relied upon evidence vis-a-vis Appellant’s argument.

Postscript: The patentee has appealed the BPAI decision to the Federal Circuit.

Other Blog Coverage: The BPAI marked this decision "Informative," but I've no reason to think this status has anything to do with the issues discussed here. Several other bloggers have said the Informative status is due to the BPAI's discussion of the differing standards of validity applied to reexam and litigation.

See "District Court Analysis v. PTO Reexamination Analysis" at Patents Post-Grant and "BPAI Informative Opinion Underscores Different Validity Standards for Reexams" at The 271 Patent Blog.

For an explanation of precedential, informative and routine status, see my post "Meaning of BPAI Precedential and Informative Opinions."

My two cents: The Board's point about the time period considered by the experts is well taken. That is, the viewpoint for non-obviousness is the time of filing, so whether or not POSITAs would have used touch screens a full five years before filing is not very probative. Remember that when gathering your rebuttal evidence.

On the other hand, the Board took a cheap shot with the quote "not a single witness had even heard of [the prior art] Sarns machine." The evidence in question was not submitted for the purpose of distinguishing the reference. Instead, the evidence was submitted as a factual statement about why an actual person in the art did not look to prior art like the Sarns machine – because that person simply didn't think of perfusion machines when addressing a problem with a dialysis machine. So why is it a big deal that the witness was unaware of the Sarns perfusion machine?

Perhaps the Board is making a bigger point: that anyone involved in designing user interfaces for dialysis machines who isn't familiar with the touch screen interface on the Sarns perfusion machine isn't a true POSITA? If so, I'd like to hear an explanation of why the Board thinks that is the case.

The patentee offered evidence from real people involved in product development. Is the law even interested in what actual persons in the art did or didn't do, looked at or didn't look at? I appreciate that obviousness is from the viewpoint of a hypothetical POSITA. But what's wrong with using real POSITAs to inform our understanding of the hypothetical POSITA?

Sure, there may be concerns about the credibility of POSITA testimony when the POSITA has a connection to the patentee or applicant. Fair enough. The fact finder can take that into account.

But suppose you had 100 disinterested POSITAs say "I wouldn't have combined A with B and here's why." Do you ignore that information because we're only interested in what hypothetical POSITAs would do, rather than what real ones would do? Or, in the case of Baxter, did not do (look to perfusion machines).

Related Posts: I'll be doing another post about Ex parte Baxter that discusses the "skepticism of experts" doctrine in more detail.  The Board didn't have much to say about the merits of this argument (only about the credibility of the testimony), but the Examiner's comments are worth discussing.

BPAI reminder that declaration of unexpected results must include statement that results are unexpected

Takeaway: The BPAI found that the Applicant's evidence of unexpected results was insufficient to rebut the prima facie case of obviousness because the expert declaration failed to state the results were unexpected. Arguments in the Appeal Brief did characterize the results as unexpected, but the Board pointed out that "attorney argument is not evidence." (Ex parte Uchida, Appeal 2011000486.)

Details:

Ex parte Uchida
Appeal 2011000486; Appl. No. 11/731,595; Tech. Center 1600
Decided: July 7, 2011

The claims were directed to a chemical composition. One of the limitations at issue read "the inorganic heat generating agent is magnesium sulfate having an average diameter of from about 0.01 μm to about 40 μm."

The Examiner rejected the claims as obvious. On appeal, the Applicant argued that the average diameter limitation was not taught or suggested by the combination of references. The Appeal Brief also referred to previously submitted evidence showing that the claimed particle diameter produced unexpected results.

The Board found that the claim language "to about 40 μm" was broad enough to encompass the 50 μm particle in one of the references. The Board also found that the evidence of secondary considerations was flawed:

Although the Uchida [expert] Declaration shows that 1 micron particles produce a slightly higher maximal temperature than 50 micron particles, neither the Specification nor the Declaration states that this result was unexpected. Cf. In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“[W]hen an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.”). Here, the only characterization of the results as unexpected is in the Appeal Brief, and attorney argument is not evidence.
(Emphasis added.)

The Board also criticized the evidence as not being commensurate with the claim scope. "[T]he claims encompass a particle size range of about 1 μm to about 40 μm, and the evidence shows results only at the lower limit of the claimed range."

Having found the record "devoid of evidence" that actually showed unexpected results, the Board affirmed the obviousness rejection.

My two cents: If you're spending the time and money to submit evidence of secondary considerations, do it right. Note that two of the points made by the Board apply to all types of secondary considerations:

• In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“[O]bjective evidence of non-obviousness must be commensurate in scope with the claims…”). 
• Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)("However, arguments of counsel cannot take the place of evidence lacking in the record.").

Also be aware that specific types of secondary considerations (e.g., commercial success, unexpected results, etc.) have other requirements. So look up the relevant case law and make sure your evidence complies. For example, the Board didn't mention this in Uchida, but the unexpected results doctrine requires that the results be unexpected as compared to the closest prior art.  

• In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)(“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”).

Mistake #8 when arguing at the BPAI: Using a declaration that amounts to opinion without factual support

Today I'll return to my list of Top 10 Applicant Mistakes on Appeal. The last post in this series was Mistake #7: "Using attorney argument when evidence is required". (Split into two parts: Mistake 7.0 and Mistake 7.5.)

The most common form of evidence is an expert declaration under § 1.132. Today's post on Mistake #8 is also about declarations: "Using a declaration that amounts to opinion without factual support."

Ex parte Norman was an extreme example of a § 1.132 declaration with no factual support whatsoever. The declaration, which was submitted to overcome an obviousness rejection, merely stated:

I am a co-inventor of the above-identified Application. I am familiar with the Official Action dated September 24, 2003 and have thoroughly studied the prior art used to reject the claims in the Application. As a result of my long experience in the toy industry, I can unequivocally state that the prior art utilized to reject the claims in the Application does not render those claims obvious. Rejection of the claims is based on the use of hindsight, not actual teachings or suggestions gleaned from the prior art.

The Board found that "this conclusory assertion is of little or no value because Mr. Norman fails to set forth any facts underlying the opinion."

The Applicant in Ex parte Pruitt filed a § 1.132 declaration to overcome an obviousness rejection. The declaration discussed the teachings of the prior art, and even contained references to specific passages in the prior art:

16. In the BACKGROUND portion of the Elliott et a1 patent (Col. 1, lines 44-48), the inventors confirm that a single pair of rubber conditioning rolls with a herringbone rib pattern has problems feeding extremely thick or wet hay. When the rubber rolls get wet, they become slick and can't grip the hay as well. Therefore, the inventors in this patent state that one of the objects of their invention is "to provide a hay cutting machine which is less prone to plugging than others presently available" (Col. 1, lines 66-68). These inventors suggest solving this problem by providing a second pair of rubber rolls with a herringbone rib pattern and setting the tension lighter than in a "single-roller" conditioner to accomplish the same degree of conditioning (Col. 2, lines 1-4). This patent does not disclose the use of metal conditioning rolls of any kind.

However, the Board found the declarant's statement about rubber rolls to not be credible because it contradicted the plain teachings of the prior art, and because the declarant did not explain the discrepancy:

[W]e cannot ascertain the basis for Mr. Pruitt’s statement in paragraph 16 of the declaration that Elliott discloses the use of rubber rolls. We have reviewed the passages of Elliott cited by Mr. Pruitt and find no mention that the rolls are made from rubber. Mr. Pruitt does not provide any further explanation in his declaration for the basis for this assertion.

Ex parte Tydings was a reexamination appeal with claims directed to a urine drug screening system. The patentee submitted a § 1.132 declaration to overcome an obviousness rejection, but the Board found the statements were not supported by facts:

The declarants testify that the claimed assay assembly and the assembly claimed in the 620 patent function differently. Tydings, ¶¶ 13, p. 3; Hipple, ¶ 11, p. 3. Hipple also testifies that it would not have been appreciated that the up the wick flow would function and be operable. Hipple, ¶ 11, p. 3. The declarants, however, have not provided an explanation of how the claimed and 620 assemblies in fact function differently or why one skilled in the art would not have appreciated that arranging the contact point so the urine generally flows in an upward direction would not be operable. We do not give weight to the unsupported opinions on these points. Opinions unsupported by facts are entitled to little or no weight. In re Etter, 756 F.2d 852, 860 (Fed. Cir. 1985) (en banc).
(Emphasis added.)

Ex parte Early Childhood LLC was another reexamination appeal. The patentee filed a § 1.132 declaration to show the secondary consideration of commercial success. The declarant stated that “[t]he cot which is patented in the 6,345,400 patent . . . is a principal product of ELC . . . and comprises a significant portion of the $180,000,000 annual revenue and has been a huge commercial success.” The Board found the declaration insufficient because it did not "provide a detailed analysis of how the features of the cot enjoying these sales compares to features of the claimed cot." The Board further noted that "[m]erely stating that a product, even if it is the claimed product, is a 'significant portion' of annual revenue does not establish any of these factors [required to show commercial success]." The patentee offered as additional evidence an email "which states that cot covers with Velcro® enclosures have become 'standard' in Asia," but the Board found that this email did not address the commercial success factors either.

Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll finish my discussion of Mistake #7: Using attorney argument when evidence is required. My previous post in this series  – Mistake #7.0 – covered some of the scenarios where you may need evidence rather than attorney argument:

• Whether a specification is enabling
• Whether a reference is enabling
• Meaning of a claim term
• Knowledge of a POSITA

The remaining two scenarios, covered in today's post, are:

• Teachings of a reference
• Modifying or combining references

The first four BPAI decisions in today's post show that when you stray from the explicit teachings of the reference, the Board may find that attorney argument is not enough.

Ex parte Matsushita involved writing servo information to a disk drive. One of the claims required a control mechanism adapted to "enable writing ... during a subsequent revolution using the WORF data." The patentee argued that the prior art "is believed to only use WORF data obtained before servowriting for that track begins" and “in Schmidt, the WORF data used to write to a target track is apparently produced before any writing to the target track is enabled.” (Emphasis added.) The Board dismissed this as speculative argument rather than evidence:

Matsushita’s argument is not persuasive. Matsushita does not explain why it believes that Schmidt obtains WORF data only before servowriting to a track begins. Matsushita’s belief amounts simply to speculative argument by its counsel as to how Schmidt’s system may operate which is unsupported by objective evidence, such as expert testimony. Argument of counsel cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A. , 129 F.3d 588, 595 (Fed. Cir. 1997).

The Board then went on to explain how the reference did disclose the claimed limitation.
 
The Applicant in Ex parte Jacquot made an argument which the Board saw as being contradictory to the teachings of the reference. The reference disclosed "device emulation" while the claims recited "device simulation." The Applicant argued that the two were not functionally equivalent. But the Board noted that, to the contrary, the reference "apparently uses the two terms interchangeably and even explicitly describes that the computing device, e.g, S/390 can be simulated." The BPAI further explained that "the Applicant has not directed us to evidence to support its argument that emulation and simulation are not the same as far as Shmid is concerned." (Emphasis added.)

An Applicant statement about the teachings of reference which is merely conclusory may lead the Board to say that evidence is required. Ex parte Mayer involved clams to a chemical composition. The Applicant argued that "thermoplastic vinyl polymer B is dissolved in and reacted with polyisocyanate A to produce the composition of claim 1," whereas the "references disclose polymer/polyisocyanate dispersions." "One skilled in the art would readily appreciate that there is a difference between modified polyisocyanates and dispersions, particularly in view of the teachings in Appellants' specification." The Board found this statement to be "without evidentiary support" and stated that "attorney argument and conclusory statements, absent evidence, are entitled to little, if any, weight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)."

The technology in Ex parte Intel Corp. related to a method of manufacturing a microsensor. The claim at issue included the step "forming said backside cavity while maintaining a portion of said substrate in said cavity to act as strengthening strips that extend completely across said backside cavity."  The Examiner asserted that the reference taught the "strengthening strip" element by disclosing a layer and a rim which operate to provide mechanical support for the sensor diaphragm. In The Applicant argued that the layer in the reference was a "tiny bit of material" which was "too thin" to perform any support or strengthening function. The Board found that this statement lacked evidentiary support:

We reject Intel's characterization. At the outset, Intel's bare assertion that a structure is too "tiny" if it is 5 microns thick to provide support or strength to a component is unpersuasive. The size or thickness of a structure cannot be taken in a vacuum, without explanation, in evaluating its feasibility as a strengthening strip. Intel also does not support its assertion with any objective evidence, such as declaration testimony. The assertion is simply argument of counsel. Such argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588,595 (Fed. Cir. 1997).

The remaining BPAI decisions in today's post show that attorney argument can be insufficient when explaining how references would, or would not, combine. Once again, it seems that straying from the explicit teachings can be viewed as mere speculation.

Ex parte Jarrell involved a collapsible wall hanger, and the Applicant appealed an obvious rejection using a combination of two references. The Applicant attacked the rationale for combining, arguing that "since Bierman’s scaffold has fixed brackets to render the scaffold rigid, it would not have been obvious to modify these fixed brackets to pivotal members in view of Thomas." But the Board dismissed this argument since "Appellant has provided no evidence that replacing Bierman’s welds with pivotal connections would render Bierman’s structure insufficiently rigid." (citing In re Pearson).

The application in Ex parte Doery related to a mail stacker. The Applicant appealed an obviousness rejection and argued that the combination would render one of the reference inoperative. Specifically, the Applicant argued that "if the insert of Caporali were incorporated along the platform of Beauchamp a Z-shaped drop profile between mailpieces could not occur,” which meant that “sufficient time and separation would not be available to dry the printed ink.” The Board dismissed this argument because "Appellant has not provided any evidence to show that the insert block of Caporali is not capable of working with the device of Beauchamp" (citing In re Pearson). The Board then went on to explain why the combination was not inoperative.

My two cents: When explaining the teachings of a reference, the line between what is acceptable attorney argument, and what is not, can be hard to discern. The cases I've read suggest that you're most likely to get into trouble when you make bald assertions and don't tie them to teachings in the reference. If you have support in the reference for your assertions, point to it. If you don't, you should consider submitting a 1.132 affidavit from a person who is more qualified to interpret the reference, i.e., a person of ordinary skill in art.

Mistake #7.0 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll discuss Mistake #7: Using attorney argument when evidence is required. Actually, I'll take two posts to cover this topic, so consider this to be a post on Mistake 7.0. (Update: The second half of this post can be found here: Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required.)

The MPEP discusses the use of declaration evidence to refute a prima facie case of obviousness. Therefore, some practitioners have the mistaken impression that this is the only time evidence is required. Not so. Other types of arguments that may require evidence instead of attorney argument include:

• Whether a specification is enabling
• Whether a reference is enabling
• Meaning of a claim term
• Knowledge of a POSITA
• Teachings of a reference
• Modifying or combining references

I'll talk about the first four of these in today's post. I'll save teachings of a reference and modifying  / combining references for the next post in the series. A general guideline for all situations is that the Board may require evidence when your argument relies on more than the plain teachings of the reference.

Applicants often respond to enablement or written description rejections by pointing to portions of the specification and arguing that the claims are enabled in view of these teachings. If these teachings are self-explanatory, then attorney argument is probably sufficient. However, if one needs to go beyond the explicit teachings of the specification to see that the claim is enabled, evidence may be required.

This point is illustrated in Ex parte Roche (BPAI, 2009). 

The Examiner has presented a facial case that determining a threshold value for a particular fuel rod is not predictable. The Examiner has further presented a logical basis to conclude that one of ordinary skill in the art would be required to conduct undue experimentation to determine the threshold value. In opposing the Examiner’s reasoning, Compagnie chose not to rely upon evidence in the appeal. Instead, Compagnie relies upon unsupported attorney argument that the specification provides examples of how the threshold might be determined and postulates a manner in which one of ordinary skill in the art could potentially determine a threshold value. We do not credit Compagnie’s attorney argument as it is not commensurate with the teachings of the specification. See, Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

Similarly, when an Applicant takes the position that a reference is not enabling, evidence may be required, especially when the position contradicts the reference itself.

This issue arose in Ex parte Kim (BPAI, 2009). The application claimed a semiconductor manufacturing method which included the step "performing a non-selective etching from said substantially planar surface to a said predetermined structure formed thereon." The Applicant argued that the reference did not explain how to make the etching process non-selective as claimed, i.e., that the disclosure in the reference was not enabling. The Applicant noted that the reference did not include any details for non-selectivity, while the Applicant's own non-selective etching was described in detail.

The Board disagreed:

   IBM has offered no credible argument nor evidence that the RIE of Hummler is “selective” as to certain materials shown in Fig. 9 versus “non-selective”. To the contrary, Fig. 10 illustrates that the nitride layer 42, as well as the insulating material 50, and the pad nitride 14, are all removed in the RIE to present a substantially uniform planar surface in Fig. 10A.
   IBM's remarks regarding the alleged non-enabling disclosure of Hummler are not well taken. Hummler is presumed to be enabling for all that it describes and IBM has proffered no evidence to the contrary. See, In re Sasse, 629 F.2d 675, 681 (CCPA 1980)

Attorney argument may not be appropriate in explaining the meaning of a claim term. Instead, a dictionary definition or other evidence of what the term means to a person in the art may be required.

This point is illustrated by Ex parte Pettinato. The Examiner read the claim term "stenocapturing device" as being "broad enough to include a voice recognition transcription device," while the Applicant asserted that "it is known to those skilled in the art of closed captioning that a stenocaptioning machine is operated by a human being." The Board agreed with the Examiner's interpretation, noting that "Appellant has not provided a definition from a recognized source in the art, but has only provided attorney argument."

Statements about the knowledge of a person of ordinary skill in the art can be another instance where evidence rather than attorney argument is required. Ex parte Cobb involved an indefiniteness rejection for the term "standard size magnetic stripe gift card." The Applicant asserted that "there is a standard size for magnetic strip gift cards, and that is the size of a credit card, namely 54 mm by 86 mm."

The Board affirmed the indefiniteness rejection, explaining that:

Appellant presents only argument and but no evidence indicating that a person of ordinary skill in the art would have known that there was at the time of invention a standard size for magnetic strip gift cards, or that that size is the same as credit cards. Appellant does not argue that the Specification offers any clarification as to what constitutes a “standard” size gift card.

As another example of assertions about the understandings of a POSITA, in Ex parte Rosenberg the Applicant argued that if the changing pad disclosed in one reference were modified to absorb urine per the teachings of another reference, "it would quickly become stinky and unusable."

The Board found this statement to be mere speculation unsupported by evidence:

The Appellant, however, does not explain the basis for the assertion that a pad with absorbed urine is “unusable.” The argument amounts simply to speculation by the Appellant that is unsupported by the prior art or any other objective evidence, such as declaration testimony. Mere argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).

My two cents: In most of the file histories I've read, the Examiner never said "evidence is required." It was only in the decision on appeal that the Applicant learned his "mere attorney arguments" weren't entitled to consideration. All is not completely lost, since you can re-open the case after appeal in order to introduce evidence. But clearly it's better to know this the first time, to avoid a second trip to the BPAI.

Another good rule of thumb: if your inventor gives you information about how the technology works, or what a reference teaches, you should probably introduce this as declaration evidence rather than pasting this into your response.

Examiner uses admissions in a long felt need declaration to provide a rationale for combining

Takeaway: During an ex parte reexamination, the Examiner used statements in a secondary considerations declaration as a rationale for combining references. "The admissions by the applicant in his declaration and remarks show that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call." We won't know if the Examiner's position was tenable, since the issue before the BPAI was not the obviousness rejection itself, but whether the Examiner had presented a substantial new question of patentability.


Details:
Ex parte Muzzy Products Corp.
Appeal No. 2009-011350, Reexam 90/008,081, Tech. Center 3900
Decided September 1, 2010

Muzzy Products obtained a patent with claims directed to a device for calling game. A reexamination request was filed on the patent during litigation. The Examiner adopted the requester's position that the claims were obvious over a previously considered reference, in combination with admissions made during prosecution of the original patent.


Specifically, the Examiner contended that the reference taught all limitations except for a "one piece construction." The Examiner further asserted that the Applicant's statements in a declaration of long felt need were admissions showing that a one piece design was desirable and provided specific benefits, as follows:

3. During the earlier concluded examination, a declaration was presented to show that the claimed invention satisfied a long-felt need. As noted by the requester, the inventor admitted in this declaration "I developed the present game call device after noting several complaints by others in the art that a separate game call and holding device was disadvantageous."
4. The inventor makes an admission as to those of ordinary skill in the art: "those using my father's '091 game call holder." In a response, the applicant further admitted that customers, i.e., those using the '091 game call holder, apparently recognized that having separate game calls and holders was disadvantageous. Since those using the '091 game call holder are also of ordinary skill in the art, it appears that the itemized explanations in the remarks also relate to the knowledge of those skilled in the art.
5. Thus, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the game call device of Musacchla '091 to a one-piece game call and elevating device because the admissions by the applicant in his declaration and remarks show that a one-piece design was considered desirable by those of skill in the art for the purpose of preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.

The patentee appealed, but not on the obviousness rejection. Instead, the patentee appealed on an issue specific to reexam – whether the Examiner had shown a substantial new question (SNQ) of patentability, which as of June 2010 is an appealable issue.

The Applicant argued that the question presented in reexam was not a new question, because prosecution of the original patent involved the same issue: a single reference obviousness rejection using the same reference.

The Examiner contended that original prosecution considered the 1.132 declaration only as evidence of long felt need, used to rebut the prima facie case. The original Examiner did not appreciate the admissions in the same declaration as a motivation to combine. This new appreciation cast the reference in a "new light," and thus raised a new question in reexam.

The Board held that a substantial new question was not presented:

[T]he CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a "new light" (Ans. 14), the CRU Examiner's position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.

The Board remanded the application back to the Examiner for termination of reexamination proceedings.

My two cents: What caught my attention was not the reexam-specific SNQ issue, but instead the idea that declarations can be used against an applicant. Statements about what the inventors understood as deficiencies in the prior art can't be used as a motivation to combine. However, statements about long felt need must be about what POSITAs perceive as a deficiency, in order to be effective. In re Gershon, 372 F.2d 535, 538 (CCPA 1967) (in order to show a long-felt but unmet need for the claimed invention, the objective evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art). Therefore, I think that the Examiner's use of the declaration admissions was proper.

A problem in the prior art can usually act as a rationale for combining, if the Examiner can also show that the claimed combination solves the problem in a predictable manner. Here, the Examiner used the admissions in the declaration to show both. The declaration said that POSITAs recognized shortcomings of a two piece game caller: easy to lose, expensive to manufacture. Isn't that a reason to combine? The declaration also said that the claimed one piece design would address these problems, making it harder to lose and cheaper to make. Doesn't that show that the result of modifying the reference to use one piece rather than two piece construction would be predictable? Isn't that an articulated rationale under KSR?

Maybe admissions that can be used to build a prima facie case of obviousness aren't so bad in this particular scenario. After all, maybe an Applicant resorts to a declaration of long felt need only when the prima facie case can't be beat – when the Examiner already has a strong rationale for combining. The lesson here is to simply think about what you're doing, and realize that you may be giving up your prima facie case – and in fact, giving it to the Examiner on a silver platter – by using a declaration of long felt need.

Finally, it doesn't seem like this danger is limited to reexam. Though the Examiner waited until reexam to switch from a weak rationale to the strong one found in declaration admissions, seems like he could have switched his position as soon as the declaration was filed (in the original prosecution).

Overview of 1.132 expert declarations

A few weeks ago the Reexamination Alert blog ran a story (here) about a Tivo patent which survived an ex parte reexamination. (Details in PAIR, Reexam Control No. 90/009329). Though a great many reexams go to appeal, that wasn't needed here because the Examiner was persuaded by expert declarations filed in response to the final Office Action. The Reexamation Alert put it like this:

TiVo’s present success is the result of an interview with Examiners followed by two very powerful declarations. TiVo was represented at the interview by counsel, but also by TiVo co-founder and ‘389 patent co-inventor Jim Barton, as well as UCLA Professor John Villasenor. Barton’s declaration, and presumably his presentation at the interview, established a critical nexus between the substantial commercial success enjoyed by TiVo’s digital video recorder and the “automatic flow control” required by claims 31 and 61. Dr. Villasenor’s declaration detailed the technical distinctions between the ‘389 claims and the prior art, which he asserted “simply reacts to the flow and does not control it.”  Villasenor also argued that one skilled in the art would have no reason to combine the references in the manner proposed in the final rejection.

The use of expert declaration evidence is patent prosecution is a topic of particular interest to me, so I reviewed some of the file history, and in particular the declarations and responses which relied on this evidence. I've reviewed many Board decisions dealing with expert declarations, and in doing so have learned about some of the common problem areas with declarations. From what I can see, the expert declarations in this Tivo reexam skillfully handled several areas which Applicants often have trouble with.


Here's a few of the things that Tivo got right in its use of expert declarations -- along with the case authority for why I say each is "right":

1. Most importantly, Tivo used a declaration to explain technical facts, rather than simply putting this in a response as "mere attorney argument." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)(attorney argument without factual evidence will not rebut prima facie obviousness).
2. The declaration includes credentials and those credentials are relevant to the art. For a discussion of the relevant case law, see my post here.
3. The declaration explains the relationship of the declarant to the assignee. Failure to do so can implicate inequitable conduct. An undisclosed business relationship between a patent applicant and a declarant is material if "(1) the declarant's views on the underlying issue are material and (2) the past relationship is a significant one." Ferring B.V. v. Barr Labs, Inc., 437 F.3d 1181, 1188 (Fed. Cir. 2006).
4. The declaration itself gives facts and then draws technical conclusions, rather than conclusions unsupported by fact. The Board has broad discretion to accord little weight to declarations expressing an opinion as to fact when there is a lack of factual support for the opinions expressed. In re Am. Acad. of Sci. Tech. Ctr. , 367 F.3d 1359, 1368 (Fed. Cir. 2004).
5. The declaration itself doesn't make legal conclusions. This is the proper role of attorney argument: to make a legal conclusion such as"not obvious." “An expert’s opinion on the ultimate legal conclusion is neither required nor indeed ‘evidence’ at all.” Mendenhall v. Cedarapids Inc. , 5 F.3d 1557, 1574 (Fed. Cir. 1993) (quoting Nutrition 21 v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991))

In future posts I'll discuss some of these requirements in more detail. In the meantime, you can see a few posts which touch on expert declarations by selecting the label "1.132" in the list of Labels on the right-hand side of the blog.

BPAI says Applicant who argues "own lexicographer" waives ordinary meaning

Takeaway: In the ex parte reexamination Ex parte Three-Dimensional Media Group, an Applicant referred to the "own lexicographer" rule in arguing for a narrower meaning of the claim term "3-D image." The Board found that the specification did not clearly establish a definition contrary to the plain meaning, so the Applicant lost the claim construction argument. Furthermore, the Board found that the Applicant waived argument on plain and ordinary meaning by invoking the "own lexicographer" rule.

Two takeaways here, one for the drafting stage and one for the prosecution stage. First, if you really want to be your own lexicographer, you gotta be thinking about that when you draft the spec, so you can make sure that you do in fact provide a special definition. Second, when you get to prosecution, before you trot out own lexicographer," check to make sure that your spec really does have a clear definition that's contrary to ordinary meaning. If you don't, you're unlikely to win the "own lexicographer" argument, so consider instead arguing that a reasonable interpretation must be consistent with the specification.

Details:
Ex parte Three-Dimensional Media Group
Appeal 2009004087, Reexam. Control No. 90/007,578, Tech. Center 3900
Decided July 30, 2010

The disputed claim term on appeal was "3-D image." The Examiner took the position that the term covered images which used shading, texturing, and perspective projection to give the impression of depth. The Applicant argued that the term covered only stereoscopic images, and excluded images which gave only the appearance of depth.

In arguing for a narrower meaning, the Applicant said that “an applicant may be his own lexicographer.” The Applicant filed declaration evidence in which the expert declarants referred to specific passages in the patent. The declarants opined that the patent clearly refers to stereoscopically created images:

As used in the ‘294 patent, it is unambiguous to anyone skilled in the art that the terms “3D” and “three-dimensional” refer to the stereographic imagery, where a different view is presented to each eye of the viewer. It is clear that, as used in the ‘294 patent, the terms do not refer to the use of shading, texturing, perspective projection, or other techniques employed to give the impression of depth (but no true stereoscopic depth effect) in a two-dimensional image when that single image is viewed by both eyes.

The Examiner responded in the Answer that the specification did not provide a special definition of "3-D image" so as to limit the meaning. The Examiner cited to MPEP § 2111.01: “[w]hen a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” (quoting from Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005))

The Board found that the "entire specification of the ‘294 patent does not support Appellant’s argument (or the experts’ opinions) that 3-D always means stereographic." The Board then spent eight pages analyzing the specification and the declarations to explain its conclusion. For example:

• "The ‘294 patent does not consistently interchange '3-D' with 'stereoscopic 3-D.' "
• "Neither of the experts opines that the term 3-D always means stereoscopic 3-D in the ‘294 patent."
• "These arguments demonstrate, at most, that the ‘294 patent discloses a preferred embodiment wherein some frames in a video are converted by stereoscopy."
• "The ‘294 patent nonetheless specifically disavows any 'limiting' effect based on the 'illustrative' 'description' [in the specification, which reads:] 'It is intended that all matter contained in the above description or shown in the accompanying figures shall be interpreted as illustrative and not in a limiting sense.' "

Finally, the Board explained that the Applicant's invocation of the "own lexicographer" rule implied that the Applicant did not dispute plain and ordinary meaning and had waived such an argument.

By failing to clearly argue that the plain meaning of 3-D (or three-dimensional, or three-dimensional image) is in dispute in the opening Brief, Appellant has waived that potential argument.

My two cents: I find that the "own lexicographer" rule is one of the most misunderstood doctrines in patent pros. It seems to me this Applicant didn't understand it either. Most of the arguments under the heading "Applicant May Be His Own Lexicographer" relate to interpreting terms in light of the spec.

However, the "own lexicographer" doctrine is really about redefining a term in the spec:

When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent in the written description.” Merck & Co., Inc. v. Teva Pharmaceuticals, 395 F.3d 1364, 1370, 1379 (Fed. Cir. 2005).

I've read a lot of specs, and most don't redefine a term or provide a special definition. So what you probably want is the "broadest reasonable construction" doctrine, which is about being consistent with the spec:

“During reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). 

The Board said that if you don't clearly argue ordinary meaning consistent with the spec on appeal, then you've waived your right to do so. Without more, you could read this as allowing for arguing both approaches in the alternative. But the way I read the opinion, the Board went further to say special meaning forecloses ordinary meaning.

In the Reply Brief, Appellant on the one hand maintains the “right to be his own lexicographer” but on the other hand, says that “Appellant is not attempting to read the limitation of stereoscopic into his claim from the specification” because the term “‘stereoscopic’ is not found in the disclosure” and “3-D” always refers to imagery where different images are presented to each eye of the viewer.” (Reply Br. 13.) This argument is confounding since a lexicographer typically seeks to establish a contrary meaning by reliance on the specification.

Finally, if you do decide to invoke the "own lexicographer" rule and argue special meaning, I strongly suggest you read this opinion to see one example of an Appellant that put in a lot of effort to do so – and still lost.

Postscript: The patentee has appealed to the Federal Circuit. I haven't seen the briefs – the Federal Circuit hasn't joined the new millenium yet by making briefs available on PACER – but I'd be surprised if they get the decision reversed.The Board's reasoning looks sound to me.

Related Posts: Bruce Horwitz of the Intellectual Property Directions blog offers his insight on this case here. Though my original version of this post mentioned only the lesson for patent prosecutors, it was Bruce who first pointed out the case also offers a great lesson in patent drafting. I updated my Takeaway to include this second point in response to Bruce's insight.