BPAI reverses obviousness when Examiner didn't explain how benefit was produced (Ex parte Rykowski)

Takeaway : In Ex parte Rykowksi, the Board reversed an obviousness rejection because the Examiner did not explain how the combination produced the alleged benefit which served as the Examiner's reason to combine.

Details:
Ex parte Rykowski
Appeal 2009003868, Appl. No. 10/455,146, Tech. Center 2600
Decided September 17, 2010

The application was directed to calibrating a display by measuring color values and then sending correction factors to the display. The portion of the claim at issue was:

(c) determining a chromaticity value and a luminance value for each registered subpixel;
(d) converting the chromaticity value and luminance value for each registered subpixel to measured tristimulus values;
(e) converting a target chromaticity value and a target luminance value for a given color to target tristimulus values;

The claim was rejected as obvious. The Examiner acknowledged that the primary reference, Greene, did not teach conversion of chromaticity and luminance values into tristimulus values as required by steps (d) and (e). The Examiner relied on a secondary reference, Cottone, for the conversion. On appeal, the Applicant's main argument was to attack the Examiner's rationale for combining.

The rationale for combining was explained in the Examiner's Answer as follows:

The reason provided for combining Greene with Cottone (i.e. to increase the precision of color/brightness values) is a valid motivation. Furthermore, the conversion of chromaticity and luminance values to tristimulus values is simply a conversion, like converting radians to degrees. Lastly, tristimulus values are more precise because the values are in one format as opposed to two (i.e. one luminance value and two chromaticity values).

The Board viewed this as two alternative rationale, and found both of them lacking.
The Board appeared to treat the first rationale as substitution – substituting the secondary reference's tristimulus values for the first reference's chromaticity and luminance values. However, the Board found that the Examiner did not explain why the combination would be expected to work better:

... the Examiner has [not] addressed or provided an explanation for how or why conversion to tristimulus values performs equally well as chromaticity and luminance values or another value conversion.

As for the second rationale – using tristimulus values from the secondary reference led to improved precision – the Board found that the Examiner had not provided an explanation for the conclusion that the combination would provide the alleged benefit.

Concerning the other rationale, i.e., precision of tristimulus values, the Examiner asserts that “tristimulus values are more precise because the values are in one format as opposed to two (i.e. one luminance value and two chromaticity values)” (Ans. 21). Again, we do not find that the Examiner has provided reasoning with rational underpinning to support the conclusion that conversion to tristimulus values increases precision for color/brightness values.

The Board reversed the rejection because the Examiner had not complied with the KSR standard by providing "articulated reasoning possessing an rational underpinning to support the combination."

My two cents: The Examiner's second rationale – increased precision – is a classic example of what I call "generic benefit." I see two ways to attack the generic benefit rationale: argue that the Examiner hasn't shown that the combination actually provides the benefit; and argue that the alleged benefit isn't really beneficial at all or is outweighed by drawbacks.

The Applicant here won on the first line of attack, and I use this type of attack frequently. Don't assume that just because the Examiner says the reference does something that it really does. I use the second line of attack less frequently – how do you say stronger/faster/cheaper isn't a benefit with a straight face? But be sure to look for drawbacks that outweigh the benefit.

I'd characterize this case as an example of the Examiner having a poor prima facie showing rather than the Applicant having a well reasoned argument. That is, I find the Applicant's argument "the Examiner didn't provide articulated reasoning" to be just as conclusory as the Examiner's reasoning, if not more.

Federal Circuit visits Atlanta

In the first week of November, the Federal Circuit will travel to my hometown of Atlanta to sit for oral arguments. The schedule, which includes a number of patent cases, can be found here at the 717 Madison Place blog. I'm particularly interested because the Atlanta arguments will include a BPAI case that I've been following, In re Jung.

On November 3, the IP Section of the Georgia Bar is co-sponsoring a reception and dinner to welcome the judges to Atlanta. A half-day CLE program will also be presented, as well as a case briefing on the cases to be argued. You can find information on the event here at the Atlanta Bar Association website. Note that you can register for each event separately. 

Update to Ex parte Sewald (indefiniteness rejection of "constructed in CMOS" )

Earlier this week I blogged about Ex parte Sewald, which involved an indefiniteness rejection of "constructed in CMOS." My post stated that I disagreed with the Board's affirmation of indefiniteness rejection.

After talking with a number of folks about this post – including commenters on this blog – I've changed my mind. I now agree that the rejection was proper. But I still the case is interesting, for another reason: would a claim to a "microelectronic" embodiment be better than the CMOS claim, and if so, how to draft a claim to capture that.

I've updated my post to reflect my new thinking. The updated post is available at the original link (here).

BPAI finds miniaturization of flashlight component to fit into watch to be obvious (Ex parte Rhine)

Takeaway: Obviousness analysis under KSR takes "account of the inferences and creative steps that a person of ordinary skill in the art would employ," so that routine modifications point toward obviousness. In Ex parte Rhine, the BPAI was not persuaded by the Applicant's non-obviousness argument "that it would not have been feasible to miniaturize the components of the [flashlight] mechanism taught in Mallory to put them into a wristwatch and still allow them to function."

Details:
Ex parte Rhine
Appeal 2010006734, Reexamination Control 90/005,694, Tech. Center 2800
Patent 4,910,652

The claim on appeal was directed to a wristwatch including a light source mounted in the watch case, and further including a timer delay means which turned off the light source after a delay.

The Examiner rejected under § 103, combining a watch having a light controlled by an external switch with a flashlight having a time delay switch. As motivation, the Examiner pointed to a teaching in the flashlight reference that the time delay switch saved battery power. The BPAI characterized this motivation as a "design incentive" or "other market force," citing to KSR.

The Applicant argued that "it would not have been feasible to miniaturize the components of the mechanism taught in Mallory to put them into a wristwatch and still allow them to function." The Board found this unpersuasive:

The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). Appellant does not provide sufficient evidence that those of skill in the art could not have made a smaller version similar to the mechanism of Mallory to work in a watch. Indeed, Wegner teaches using springs in a wristwatch. (Wegner col. 2, ll. 47-50; Fig. 1, element 22). Thus, the Examiner had a reasonable basis for considering that the mechanism of Mallory, which relies on springs and valves, could have been successfully used in a watch. (Ans. 9). Appellant does not point to evidence to the contrary. Thus, we are not persuaded that the Examiner erred.

My two cents: The Board's references to "smaller version" and "miniaturization" makes it sound like there were clear differences between two references — small watch, big flashlight — and that the obviousness rationale was basically "miniaturizing electrical components to fit in a watch is a routine modification." Sounds reasonable, and I agree that this is a prima facie case which shifts the burden to the Applicant to show why that's not a routine modification. [Or to offer some other reason why the combination isn't rational.]

However, I think the Examiner's position — as expressed in the Answer — may be even stronger than as characterized by the Board. According to the Answer:

Applicant's argument that the time delay cutoff switch of Mallory is too large and bulky to be used in a watch is more a matter of scale than function. This is especially true when one notices in Figs. 1 and 3 of Wegner '871 that the electrical switch assembly shown uses a bulky, mechanical spring in the same manner as that of Mallory's '282 automatic time delay switch.Clearly, if the examiner had relied upon the time delay switch feature of an electric toaster or an egg timer then applicant's argument of non-analogous art might have been more persuasive.

Here, the Examiner seems to be suggesting that miniaturization of the flashlight mechanism was unnecessary because the electrical switch in the watch already used a "bulky" spring, rather than the miniature spring one usually associates with watches.

If both the watch and the flashlight used a similar-sized spring for the electrical switch, this reduces the amount of difference between the two, and bolsters the conclusion of obviousness.

BPAI finds claim reciting structures "constructed in CMOS technology" to be indefinite (Ex parte Sewald)

Takeaway: The BPAI affirmed an indefiniteness rejection for a dependent claim which required two of the structures in the independent claim -- a container and electrodes -- to be "constructed in CMOS technology." The Board found that a POSITA "would not be able to readily ascertain the specific aspects of CMOS technology that are used to construct the container configuration and electrodes and how such technology is specifically implemented."

Details:
Ex parte Sewald
Appeal 200900658, Appl. No. 10/200,705, Tech. Center 1700
Decided March 30, 2009

The independent claim recited:

13. A device for identifying molecules in a carrier liquid, comprising:
a container configuration for holding the carrier liquid;
a tunable radio-frequency oscillator;
an evaluation circuit;
two electrodes disposed in said container configuration and connected to said tunable radio-frequency oscillator and said evaluation circuit.

The subject of the indefiniteness rejection was dependent claim 19:

19. The device according to claim 13, wherein said container configuration and said electrodes are constructed in CMOS technology.

When the indefiniteness rejection was first introduced, the Examiner used the "omitted essential steps" rationale: "[T]he claims do not positively recite any specific method steps. It is unclear as to how the device is fabricated using CMOS technology."

The Applicant responded by introducing a technical definition of CMOS ("a device formed by the combination of a PMOS and with an NMOS") and a discussion of the CMOS fabrication sequence from the textbook "VLSI Process Integration."

The Examiner maintained the indefiniteness rejection in the final Office Action, asserting that:

The metes and bounds of this claim are unclear in that the claim does not positively recite any specific structural limitations for the claimed device. Is the specific device structural configuration comprising a certain metal oxide semiconductor layered structure? The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. 

The Applicant simply repeated the previous argument in the Appeal Brief. The Examiner's Answer noted that the arguments about the meaning of the term CMOS were not based on limitations actually recited in the claim:

Claim 19 does not recite either a NMOS or PMOS transistor element. It is unclear as to how these additional elements are associated with the recited container configuration and the electrodes actually recited in the claim to form an operative device.

The Board adopted the Examiner's position, summarily stating that a POSITA "would not be able to readily ascertain the specific aspects of CMOS technology that are used to construct the container configuration and electrodes and how such technology is specifically implemented."

My two cents:  When I first read this case, I thought: "What's next – indefiniteness rejections for dependent claims which specify 'the network is Ethernet', because the app doesn't explain how to build an Ethernet network?" That is, I thought the rejection was completely off base.

But I don't work much with semiconductors, and it turns out that my analogy to network-is-Ethernet was misplaced. After discussing the case with various commenters on this blog, I've revised my stance. And as a consequence, I revised this post.


I see that "constructed in CMOS" means made using three specific layers (Metal, Oxide, Semiconductor). And I've been persuaded by folks with semiconductor expertise that the claim at issue in Sewald doesn't make sense because a POSITA wouldn't understand how the claimed elements electrode and container were "constructed in" those particular layers.

I'm still interested in this case, but for a different reason: I'm wondering how to get "microelectronic" in there as a limitation. Because from reading the spec, it appears that the invention was really directed a microelectronic implementation. This aspect was described as follows in the spec:

• [0004] Biosensors, in which the evaluation of electronic and physical quantities are employed as indicators in order to obtain the desired information, also seem to be very promising for this. In terms of process engineering, this may involve utilizing matricial configurations of microelectronically integrated sensors, which are used as an interface between the organic substances and various electronic measurement methods.
• [0025] Preferably, the container configuration and the electrodes may be produced in CMOS technology. The entire circuit, including the electronic components, can in this way be integrated particularly well on a single chip.
• [0054] Especially for a microelectronic embodiment of this method, transmission measurement is preferable because the sample containers can have very small dimensions. Moreover, better results may be expected from this type of measurement.
• 
  
• [0067] All the components of such an individual cell may be integrated on a chip in CMOS technology. Furthermore, a plurality of such individual cells may be integrated in a single configuration on a chip. The individual outputs 4 of the individual measurement cells are then fed to a multiplexer 22, which connects the individual outputs 4, 4' etc. to an analog/digital converter 5 that, in turn, is connected to a signal processor 6. The circuit components may also be integrated on the chip.
• [0068] CMOS technology is most suitable for the integration on the chip.

Without some sort of microelectronics limitation, you could easily envision a macro-scale container and electrodes when reading the independent claim. And I think there's value in having a claim which gets across "microelectronics" or "integrated circuit," in order to orient the Examiner, judge, jury, and/or licensee.

So how do you claim the microelectronic aspect?

What about this independent claim:

A microelectronic sensor comprising: [elements in independent claim].

Microelectronic appears only in the preamble, so it may not get patentable weight – but it might be enough to orient the reader.

What about this dependent claim:

...wherein the container configuration is a microelectronic structure.

Would that be considered a process limitation, and thus given no patentable weight?

Would this language be treated any differently:

13. A device for identifying molecules in a carrier liquid, comprising:
a microelectronic container configuration for holding the carrier liquid; ...

Federal Circuit says different claim elements are interpreted as distinct components

A new post "Two Separate Things Are Not One Thing" on the American IPA blog discusses annoying rejections for a "claim to A+B, where A and B are separate items, over a reference that only discloses A, the rationale being that 'A is both A and B.' "

American IPA points out that this summer's Becton opinion from the Federal Circuit includes a great quote to fight this sort of rejection:

Where a claim lists elements separately, "the clear implication of the claim language" is that those elements are "distinct components" of the patented invention.
(Becton Dickinson and Co. v. Tyco Healthcare Group, slip op. page 10, quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004 )).

I'll be watching to see if the BPAI starts using Becton. I blogged earlier (here) about several BPAI decisions that relied on the same rationale to reverse anticipation rejections. In those decisions, the BPAI cited to Lantech, Inc. v. Keip Machine Co (1994) and In re Robertson (1999) as Federal Circuit precedent. Actually, it seems that Gaus v. Conair, quoted in Becton, might be the clearest statement of the proposition.