One of the benefits of reading BPAI decisions is that occasionally I see the Board citing specific case law supporting an argument that makes sense to me, but which I can't find addressed in the MPEP. For example, I cite In re Arkley for the proposition "the Examiner can't pick and choose from unrelated embodiments in an anticipation rejection." I couldn't find anything in the MPEP about this, but when I saw the Board refer to it in a decision, I started using this argument and citing the case. (See my discussion of In re Arkely here.)
Now that I'm reading lots of BPAI decisions, I'm making a concerted effort to capture these great case law quotes. And when I find a good one, I'll be posting about it as "Case law you can use."
The first "Case law you can use" post will be later this week, and I'll be adding this as a tag to enable readers to quickly find these posts.
Sunday, February 7, 2010
Thursday, February 4, 2010
BPAI remands without deciding prior art rejections
From what I've seen, it's quite common for the BPAI to issue a new rejection under § 101. Not too surprising, since many claims now on appeal are obviously vulnerable under Bilski. But I just read a BPAI decision from a couple of weeks ago (Ex parte Lancefield) where the Board raised a § 101 rejection without deciding on the prior art rejections. Technically, they "vacated" the outstanding rejections and remanded back to the Examiner with both the old and the new rejections.
Apparently the BPAI is taking a cue from the Federal Circuit in In re Comiskey, which also refused to reach the prior art grounds of rejection "because we conclude that many of the claims are 'barred at the threshold by § 101'."
I'm really hoping this isn't the start of a trend. The main reason I appeal is to get someone from outside the Examiner corp to decide on the prior art rejection, and vacate-plus-remand puts yet another roadblock in front of me. The thought of having to spend another 12+ months in the cycle of Office Action, Brief, Answer, Reply, wait-for-BPAI decision is infuriating.
Now, perhaps there really *is* no point in deciding on the prior art grounds if the claim has fatal problems under § 101. I'm not sure the vacated Ex parte Lancefield case is fixable by a minor amendment. Here's the only independent claim in the case:
Apparently the BPAI is taking a cue from the Federal Circuit in In re Comiskey, which also refused to reach the prior art grounds of rejection "because we conclude that many of the claims are 'barred at the threshold by § 101'."
I'm really hoping this isn't the start of a trend. The main reason I appeal is to get someone from outside the Examiner corp to decide on the prior art rejection, and vacate-plus-remand puts yet another roadblock in front of me. The thought of having to spend another 12+ months in the cycle of Office Action, Brief, Answer, Reply, wait-for-BPAI decision is infuriating.
Now, perhaps there really *is* no point in deciding on the prior art grounds if the claim has fatal problems under § 101. I'm not sure the vacated Ex parte Lancefield case is fixable by a minor amendment. Here's the only independent claim in the case:
1. A computer system implementing an object oriented data processing schema configured to store objects and to store definitions of relations between the objects, the system being configured so as to support definitions of relationships of two types, the two types including:As long as the BPAI limits its vacating to these types of claims, I won't be too upset.
a first type of relationship whereby one object in a hierarchy related to another object by a relationship of the first type is deemed to belong to a set defined by the other object; and
a second type of relationship distinct from the first type of relationship and whereby a child object related to a parent object by a relationship of the second type is deemed to inherit characteristics of the parent object and, to an extent specified in the relationship of the second type, a proportion of a characteristic of a further object related to the said parent object by a relationship of the first type:
whereby the system uses the schema to process the objects in accordance with the defined relationships.
Wednesday, February 3, 2010
New blog: Florida Patent Lawyer
I find most of BPAI decisions that I blog about through various random methods. But in the case of Ex parte Denison, credit goes to the Florida Patent Lawyer blog -- he discussed the Denison decision here.
I've added this newcomer blog to my blog reader. Not only does it discusses patent prosecution topics (rare), Florida Patent Lawyer covers a nice mix of other topics too, including TTAB decisions and ITC decisions. In short, stuff that you won't find on every other patent blog.
I've added this newcomer blog to my blog reader. Not only does it discusses patent prosecution topics (rare), Florida Patent Lawyer covers a nice mix of other topics too, including TTAB decisions and ITC decisions. In short, stuff that you won't find on every other patent blog.
Examiner cannot rely on arbitrary delineation of structure (Ex parte Denison)
Takeaway: The Examiner isn't allowed to just pick
random pieces of a drawing and read it on parts of your claim. The Board put it like this: "[T]hat “structure” identified by the Examiner results only from an arbitrary delineation of Berry’s structure, made in order to meet the claim limitations. "
Ex parte Denison
(Appeal 2009-004110; Appl. No. 10/158,362; Tech. Center 3700)
Decided: January 19, 2010
This application is about a medical device: a stent to hold open a blood vessel. As claimed, the stent includes cylindrical elements with a specific shape. Here's a 3D view of the stent reference used by the Examiner, to give you some perspective.
One of the claim elements at issue was: "each cylindrical element has a plurality of alternating valley portions and peak portions, the valley portions including alternating double-curved portions and Y-shaped portions..." The Examiner used overlapping portions of the reference stent to read first on the double-curved and then on the Y.
The Applicant argued that the Examiner's interpretation is unreasonable because it "requires the viewer to first visualize one shape and then completely disregard portions of that shape in order to visualize a second, distinctive shape.” The Applicant contended that the claims instead require “[c]omplete and distinct structural shapes depicting both the double-curved shape and Y-shape.”
The Board found that a POSITA wouldn't recognize the portions, as claimed, in the reference:
Related Posts: Here are two other posts on arbitrary structure:
Ex parte Denison
(Appeal 2009-004110; Appl. No. 10/158,362; Tech. Center 3700)
Decided: January 19, 2010
This application is about a medical device: a stent to hold open a blood vessel. As claimed, the stent includes cylindrical elements with a specific shape. Here's a 3D view of the stent reference used by the Examiner, to give you some perspective.
One of the claim elements at issue was: "each cylindrical element has a plurality of alternating valley portions and peak portions, the valley portions including alternating double-curved portions and Y-shaped portions..." The Examiner used overlapping portions of the reference stent to read first on the double-curved and then on the Y.
The claims require "double-curved portions" and "Y-shaped portions", but the claims are silent as to whether or not the two portions partially overlap in a sense (in other words, whether part of the double-curved portion forms part of a Y-shaped portion).You can see this overlap here, where the claimed "double curve" looks like the letter "W".
The Applicant argued that the Examiner's interpretation is unreasonable because it "requires the viewer to first visualize one shape and then completely disregard portions of that shape in order to visualize a second, distinctive shape.” The Applicant contended that the claims instead require “[c]omplete and distinct structural shapes depicting both the double-curved shape and Y-shape.”
The Board found that a POSITA wouldn't recognize the portions, as claimed, in the reference:
However, that “structure” identified by the Examiner results only from an arbitrary delineation of Berry’s structure, made in order to meet the claim limitations. Even giving the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood the claim terms requiring “double-curved portions” and “Y-shaped portions” to include the arbitrary portions of Berry defined only by the Examiner.Seems like "arbitrary delineation of structure" is a great argument to use in mechanical applications. But in the art units I deal with, almost everything is described in functional, rather than structural terms. So I don't know how useful this argument will be for such cases.
(Decision, p. 5.)
Related Posts: Here are two other posts on arbitrary structure:
Monday, February 1, 2010
Claim indefinite for variables with no meaning attached (Ex parte Nishioka)
Ex parte Nishioka
(Appeal 2009-001507; Appl. No. 10/046,224; Tech. Center 2400)
Decided January 12, 2010
This patent application is related to encryption, so I would expect math to be involved. But look at the claim — it appears to me to be nothing but math:
I'm not afraid of math, but this is too much for me to think about (at least in my free time). So I'm not going to discuss the substance of these claims. But I thought the indefiniteness rejection might be a good lesson for those who deal with math-intensive applications from time to time.
The Examiner viewed the claims as a laundry list of elements, with no relationship. Worse, the elements themselves were "undefined."
The Board affirmed the indefiniteness rejection, noting that variables are not definite unless they have meaning:
You can see that while variables are used, so are descriptions of the variables. Also, even mathematical functions are described in words (i.e., product of first base-group-number raised to the power of a first monotone function of said first exponent-number).
I think the lesson here is that when dealing with math-intensive subject matter, you should think carefully about simply pasting equations into the claims.
(Appeal 2009-001507; Appl. No. 10/046,224; Tech. Center 2400)
Decided January 12, 2010
This patent application is related to encryption, so I would expect math to be involved. But look at the claim — it appears to me to be nothing but math:
The Examiner viewed the claims as a laundry list of elements, with no relationship. Worse, the elements themselves were "undefined."
[The independent claims] recite the limitations "a key generation step of generating a secret-key" and "a public-key" with a list of undefined elements in between without a relation of how are they being used to generate a key or how are they obtained/selected. The relationship between the elements listed and how they are used to produce a key is not clear. Examiner contrasts the language found in the instant application with the language found in the prior art's claims, where the variables are clearly defined. A clear definition of the variables would overcome this 112 rejection.In response, the Applicant simply asserted that the elements in the claim are well known to one of ordinary skill in the art, then "invite[d] the Board to provide a statement of how to overcome this rejection."
(Examiner's Answer, p. 25.)
The Board affirmed the indefiniteness rejection, noting that variables are not definite unless they have meaning:
This is an art of very high complexity (FF #3), and the practitioner in such an art is assumed to have advanced math skills. But the attachment of meaning to the variables expressed in the equations of the claims, either through definitions in the specification or in the claims themselves, adds necessary clarity to the claims to be able to properly appreciate the metes and bounds of the protected invention. Appellants have not done this. The Examiner’s contrast of the instant claims to those in the prior art was insightful.Although the Board didn't come right out and say it, I'd say the reference to the claims in the prior art was a strong hint to the Applicant as to the type of claims that would comply with §112 ¶2nd. I've reproduced the claims from the prior art reference below.
(Decision, p. 9.)
I think the lesson here is that when dealing with math-intensive subject matter, you should think carefully about simply pasting equations into the claims.
PTO memo on acceptable computer-readable medium claims
A new memo on acceptable language in computer-readable medium claims is available on the PTO website at http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf
The memo, signed by Director Kappos himself, is "an effort to assist the patent community in overcoming a rejection or a potential rejection under §101." The memo suggests amending the claims to state that the computer-readable medium is “non-transitory.” The PTO is taking the position that such an amendment is not new matter even if the word "non-transitory" is not in the spec — as long as the spec did describe the medium as *something* other than a signal.
It doesn't appear to me that this memo has yet been officially published to the outside world. Although it's on the PTO website, it's not on the page with all the other examination guidelines (here).
I suspect this is an internal memo that has been leaked, and that the memo will be made official in the near future. I found out about the memo from the IP Spotlight blog.
The memo, signed by Director Kappos himself, is "an effort to assist the patent community in overcoming a rejection or a potential rejection under §101." The memo suggests amending the claims to state that the computer-readable medium is “non-transitory.” The PTO is taking the position that such an amendment is not new matter even if the word "non-transitory" is not in the spec — as long as the spec did describe the medium as *something* other than a signal.
It doesn't appear to me that this memo has yet been officially published to the outside world. Although it's on the PTO website, it's not on the page with all the other examination guidelines (here).
I suspect this is an internal memo that has been leaked, and that the memo will be made official in the near future. I found out about the memo from the IP Spotlight blog.
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