Board reverses enablement rejection for "computer readable medium" since specification discloses an integrated circuit embodiment

Takeaway: The Examiner issued a § 112 First, Enablement rejection after the Applicant changed "medium" to "computer readable medium." The Applicant appealed and pointed to the specification 's disclosure of "a processor such as a computer or an electronic data processor in accordance with code such as computer program code, software, and/or integrated circuits." The Applicant also argued that computer readable media are "so notoriously well known" that undue experimentation was not required. The Board reversed the rejection since specification did disclose "at least one embodiment of a medium as an integrated circuit coded to perform functions." (Ex parte Hofstee, PTAB 2011.)

Details:

Ex parte Hofstee
Appeal 2009006207; Appl. No. 10/763,079; Tech. Center 2400
Decided:  February 24, 2011

The Applicant was directed to secure electronic communications. Original claim 22 recited

     22. A computer program product for secure communications, the computer program product having a medium with a computer program embedded thereon, the computer program comprising: 

When this claim was rejected under § 101, the Applicant amended to add "computer readable":

      22. A computer program product for secure communications in a message source, the computer program product having a computer readable medium with a computer program embedded thereon, the computer program comprising: 

The Examiner then gave a § 112 First, Enablement rejection, alleging that "the Applicant fails to sufficiently point out or describe computer readable media." The Applicant appealed this rejection, along with prior art rejections.

In the Appeal Brief, the Applicant pointed to the following passage in the specification as evidence of enablement:

It is further noted that, unless indicated otherwise, all functions described herein may be performed in either hardware or software, or in some combinations thereof. In a preferred embodiment, however, the functions are performed by a processor such as a computer or an electronic data processor in accordance with code such as computer program code, software, and/or integrated circuits that are coded to perform such functions, unless indicated otherwise.

The Applicant also argued that:

[C]omputer readable media, such as floppy disks, magnetic tape, hard disk drives, random access memories, flash memories, optical disks, and the like are so notoriously well-known that a person of ordinary skill in the art would not require any undue experimentation to store computer code that performs the functions described in the instant specification onto a computer readable medium.

The Board reversed the rejection because the passage quoted above from the Applicant's specification disclosed "at least one embodiment of a medium as an integrated circuit coded to perform functions." The Board noted that enablement did not require a specification to disclose what is well known in the art (Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984)), and that "omission of minor details does not cause a specification to fail to meet the enablement requirement." Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).

My two cents: The Applicant was smart to focus on "undue experimentation," since the Examiner did reject under Enablement rather than Written Description. By its very nature, enablement is about what a POSITA knows and what a POSITA understands from Applicant's specification. In the computer and electronics arts, the amount of detail required about specific implementation mechanisms is relatively low. You don't need much detail about processors, logic circuits, memory, and storage. As long as enough detail is present about the claimed functions, a POSITA can generally figure out how to implement that functionality on the appropriate hardware or software platform. So it didn't surprise me that the Board reversed this Enablement rejection.

Now, had this been a § 112 First rejection under Written Description, the story would be different. In that case, the Board is less likely to be persuaded with arguments about what a POSITA knows, because the focus is instead on what the inventor possessed.

Examiners are sometimes sloppy about the distinction between Enablement and Written Description. (As is the Board ... see BPAI confuses enablement and written description.) For this reason, I read all § 112 First and Second rejections very carefully. I've even seen an Examiner throw in § 101, Enablement, Written Description, and indefiniteness, giving essentially the same explanation for all.

Board reverses obviousness of rejection involving Examiner affidavit of personal knowledge

Takeaway: Ex parte Moody was a rare case in which an Examiner relied on personal knowledge in a rejection. During prosecution of claims directed to a paper towel dispenser, the Examiner used, as prior art, photos of a dispenser shown alongside a tape measure. The Examiner asserted that that this dispenser had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Applicant traversed the rejection and demanded an affidavit of personal knowledge per CFR § 1.102(a)(d)(2). The Examiner produced two affidavits, one declaring the date of use and another attesting to the measured dimensions. On appeal, the Applicant argued that the dispenser in the photo did not disclose the claimed length of the dispensing aperture relative to the length of the paper towels. 

Details:
Ex parte Moody
Appeal 2008005114; Appl. No. 10/004,823; Tech. Center 3600
Decided:  December 1, 2009

The application was directed to a paper towel dispenser (shown below), and the limitation at issue was a shortened dispensing aperture, as emphasized.

     1. A modified gravity-feed towel dispenser for dispensing C-fold and interfolded towels,
     wherein said dispenser houses C-fold or interfolded towels having a transverse length, L,
     which are positioned to be dispensed through an elongated bottom dispensing aperture having a length of L or greater,
     said towel dispenser including means for defining a top portion, a front wall, a back wall and a pair of side walls of said towel dispenser, as well as a bottom portion collectively defining an interior for receiving a stack of C-fold or interfolded towels,
     said bottom portion of said towel dispenser defining said elongated bottom dispensing aperture,
     wherein an adapter plate is secured to said bottom portion of said towel dispenser and is configured to abridge the length of said dispensing aperture to a length L' of 80 percent to 90 percent of said transverse length, L, of said C-fold or interfolded towels.(Emphasis added.)

During prosecution, the Examiner rejected various claims using a combination of an issued patent (Gettelman) and a Bobrick 363 model towel dispenser. Bobrick was alleged to be prior art because it bore a "3/81 copyright date on the interior instruction panel" and had been "in use in the USPTO Crystal Park 5 restrooms since at least 1999." The Office Action included several photos of a tape measure along various parts of the dispenser. According to the Examiner, these photos showed that the Bobrick dispenser included a 9.75" dispensing slot and a towel magazine capable of holding 11" wide towels, which met the limitation of "a length L' of from about 80% to about 90% of transverse length, L, of C-fold or interfolded towels. The Examiner relied on the primary reference, Gettelman, for all other limitations.

The Applicant argued that the copyright date did not establish that the Bobrick dispenser was prior art, noted that the Examiner-supplied photographs were too blurry to accurately show dimensions, and demanded an affidavit of personal knowledge as to the dimensions measured by the Examiner:

     First, in order to be prior art, the dispenser must have existed in its current form as of that date. In this regard, the copyright date on the loading instructions do not establish that the aperture on a lower part of the dispenser existed in its current form before 2000. That part of the device may have been changed or modified at any time. The Examiner has not testified that he made any measurement of any device which existed before the priority date of this application.
     The rejections should also be withdrawn because the Examiner has not complied with [the personal knowledge requirement of] CFR § 1.102(a)(d)(2) ... Counsel cannot tell from the obscured photographs provided the length of the dispensing opening, nor can Applicant determine the length of towel placed therein. Other indistinguishable features include whether there are inclined terminal portions, what the angle of inclination is, the shape of the aperture, etc.
     Applicant requests that the rejections based on the PTO Bobrick model be withdrawn, or a detailed affidavit be provided with all relevant dimensions clearly labeled; this affidavit should also necessarily include relevant dates prior to Dec 2000 when the dimensions were observed.

In a Final Office Action, the Examiner acceded to the Applicant's demands for clear photographs and also provided two personal affidavits. One affidavit attested to the date of use of the Bobrick dispenser as being at least August of 1999 – though the Examiner nonetheless maintained that the copyright date "establishes by preponderance of the evidence a 1981 public sale/use date." The other affidavit attested as to various dimensions, and read as follows:

Examiner's Affidavit in Support of the Measured
Bobrick Model 363 Towel Dispenser Dimensions

I, Michael E. Butler, do hereby afftrm the following facts based on measurements made on the Bobrick Model 363 Towel Dispensers located in the USPTO Crystal Park 5 restrooms.
The dispensing slot has a length of 10 1/2  inches.
The dispensing magazine has a towel major axis length of 11"
The dispensing slot has a width of  2 1/2 nches in the middle
The dispensing slot has a width of  3/4 inches at the end of the straight base
The arcuate surface bearing the dispensing slot has a chord of 10.5 cm
The arcuate surface bearing the dispensing slot has an arcuate length of 11.7 em
The arcuate surface commences tangent to the horizontal back of the dispensing slot curving upward to a frontal non tangential termination relative the front panel with the following projections:
The arcuate surface has projection on the horizontal axis of 9.4 cm
The arcuate surface has a projection on the vertical axis of 6 cm

The Examiner provided the following rationale for obviousness:

It would have been obvious for the Gettelman et al. retrofit adapter to have dimensions selected from those used in the proven BOBRICK 363 towel dispenser because such dispenser has proven itself effective in minimizing multiple dispensed towels and fall through and come up with the instant invention.

The Examiner further explained that:

The magazine is well capable of holding towels exceeding the width by about 10-25% and would have been obvious to one of ordinary skill in the art to place towels of such dimensions in the dispenser ... The length of slot is sufficiently close to 90% of available towel length to obviate a slot about 80-90% of the towel length.

On appeal, the Applicant argued that the Bobrick Dispenser did not teach the claimed dimensions. Specifically, the Applicant argued that the Examiner's Affidavit did not support the rejection, and that the Examiner had mischaracterized the Bobrick dispenser:

     The commercial dispenser was asserted in the Final Rejection to have a 9.75 inch dispensing slot between 11 inch sidewalls (88%). That statement is clearly mistaken. The Examiner's Affidavit contradicts that assertion stating that the dispensing slot is 10-1/2 inches or over 95% of the distance between sidewalls; not at all suggestive of the claimed relative length of about 80-90%.
     Furthermore, upon examination of the photographs of the dispenser [provided by the Examiner], it appears that the dispensing slot actually extends from sidewall to sidewall, just as in Fig. 3 of  Gettner [the primary reference], and therefore does not at all suggest dispensing a towel through an aperture shorter than the towel.
(Emphasis added.)

The Applicant also attacked the Examiner's rationale for combining, arguing that there is no motivation to modify the adapter in Gettelman using the Bobrick dispenser (which did not use an adapter). According to the Applicant, "an adapter plate modifies a dispenser, not vice-versa."

In the Examiner's Answer, the Examiner disagreed with the Applicant about the width of the dispensing slot shown in the photos:

Contrary to applicant's assertion, the slot in the Bobrick '363 model dispenser and the Gettlemen et al. dispenser do not extend the entire magazine cavity distance.

On appeal, the Board agreed with the Examiner that Bobrick's dispensing aperture was not identical to the dispensing magazine's length, finding it to be slightly shorter (95%). The Board also found that in Gettelman, the transverse length of the aperture and of the adapter were nearly identical. The  Board reversed because the Examiner did not provide a rational reason why a POSITA would shorten Gettleman's adapter plate based on the dispensing aperture in Bobrick's towel dispenser. The Board found that the "extensive amount of modification needed to the adapter plate of Gettelman is suggested nowhere in the cited art," but was instead "born from the use of impermissible hindsight reconstruction in view of Appellant’s Specification."

My two cents: I included the Board's discussion of why the Examiner's obviousness rationale was deficient, but did so just to be complete. My real interest in this case is the Examiner Affidavit of personal knowledge – this is the only case I can recall where the Examiner provided one. I think this is a useful example of when to ask for an affidavit, how to do so, and what to look for in the Examiner's Affidavit when he provides it.

Here, it was crystal clear that the Examiner really was relying on personal knowledge. But from what I've seen, some Applicants request a personal affidavit as sort of a boilerplate response whenever the Examiner uses Official Notice, "well known", inherency, or even KSR's "creative inferences." It's usually abundantly clear from the record that the Examiner is not relying on personal knowledge, adn in such cases I'm not sure why Applicants bother with the request. See my post Examiner affidavit of personal knowledge for some of those.

And for an example of another case where the Applicant probably should have asked for an Examiner Affidavit, check out my blog post here about Ex parte Gray. In Gray, the Examiner asserted that a patent reference was really a Gillette Mach 3 razor. The Examiner then used his own measurements of a Mach 3 razor rather than the dimensions depicted in the patent drawing. The Applicant disputed the assertion, but did not ask for an affidavit of personal knowledge. The Board ignored the Examiner's unsupported assertion.

Board finds that specification contradicts interpretation of "file formats" argued by Applicant

Takeaway: The claims on appeal referred to storing files having different "file formats" in different directories. The Examiner interpreted this to mean storing video files in one directory and audio files in another. The Applicant argued that the claim required storing WAV files and MP3 files in different directories. The Board affirmed the rejection because the Applicant's specification contradicted the interpretation argued on appeal. (Ex parte Toyomura , PTAB 2012.)

Details:

Ex parte Toyomura
Appeal 2010000963; Appl No. 10/010,630; Tech. Center 2100
Decided:  August 8, 2012

The application on appeal was directed to a memory card that handled different types of files by storing files in different format-specific directories, and by storing all files of non-supported formats in a separate directory. The application claimed priority to several Japanese applications.

As originally filed, claim 1 read:

      1. Carryable memory media comprising
     at least one directory for storing specific format files, which files have a certain predetermined form, and
     a directory for storing non-specific format files, which files having any free form.

In the first response, the Applicant amended. In doing so, "form" was changed to "format":

     1. A memory media comprising
     a plurality of directories at a directory level, each of said directories limited to storing files of a respective one of a plurality of file formats, and
     a further directory at said directory level, said further directory for storing files in other than said plurality of file formats.

During prosecution, the Applicant further narrowed to overcome a § 101 rejection and to distinguish over the art:

      1. A memory media for storing data for access by an application program being executed on a data processing system, the memory media comprising
     a plurality of directories at a directory level, each of said directories limited to storing files of a respective one of a plurality of file formats, so that not more than said respective one of said plurality of file formats are permitted to be stored in each of said directories and
     a further directory at said directory level, said further directory for storing files in other than said plurality of file formats.
(Emphasis added)

The Examiner rejected several independent claims as being anticipated by Andro. By way of explanation, the Examiner noted that Andro stored all video files in a video subdirectory and all audio files in an audio subdirectory.

The Applicant appealed. The argument in the Appeal Brief was basically about the meaning of "file format":

[T]his means that each one of the plurality of directories is limited to storing files having one format. Example directories are shown [in the schematic below]
     Directory Level
     ---- doc
     ---- xls
     ---- xlm
     --- other
As shown, a a first directory can only store .doc files. A second directory can only store .xls files. ...

Then in the Reply Brief, the Applicant argued that the Examiner had confused the reference's file types with the claim's file formats:

Audio files, for example, have different formats. Exemplary formats include WAV files, MIDI files, WMA (Windows Media Audio) files, MP3 files, etc. Video files can also have different formats. Exemplary video files include Blu- ray, HD-DVD, MPEG3, MPEG4, etc. Appellants' claims are clear that each directory is limited to one format (e.g. MP3, MPEG4, etc.). Appellants' claim 1 does not claim that each directory is limited to one type of file (e.g. audio or video).

The Board found that that Applicant's interpretation of "file format" was not supported by the specification. The Board noted that the very portion of the specification referred to in the Appeal Brief "Summary Claimed Subject Matter" read:

The directory group 8 for storing specific format files comprises a directory 6 for storing music files, a directory 7 for storing still image files and other directories (not shown).
MP3 and the like files of music file format, for example, are stored in accordance with the directory 6 for storing music files in a corresponding data area. Exif and the like still image files are stored in accordance with the directory 7 for storing still image files in a corresponding data area. Meanwhile, no specific format files are stored in accordance with the directory 9 for storing non-specific format files in a corresponding data area.
(Emphasis added.)

The Board found that the specification was "more consistent with the Examiner's interpretation of the claimed invention and contradictory to Appellants' arguments in the Reply Brief." The Board therefore affirmed the rejection.

My two cents: I've seen plenty of cases where the Board doesn't adopt a claim term interpretation urged by the Applicant. But usually it's one where the Applicant tries to narrow based on stuff in the spec, and the Board refuses to "import limitations from the spec." I don't think I've ever come across this scenario before, where the specification so fundamentally at odds with the Applicant's position on appeal.

Based solely on plain meaning, the Applicant's description of "format" sounds about right to me: file format is WAV, MP3, Blu-Ray, etc. whereas file type is video or audio.

Yet when I read paras. 44 and 45 of the specification (relied on by the Board), I lean the other way and think: multiple formats of audio files are stored in a single audio directory.

At first I wondered if the Applicant's spec should have done a better job of distinguishing between file types and file formats. I see some overlap in the terms, so I can kinda see where the Examiner is coming from.

But then I looked at FIG. 1 of the Applicant's spec:

To me, FIG. 1 clearly shows that the inventor contemplated the Examiner's interpretation rather than the one advanced by the Applicant on appeal.

I see no way to reconcile FIG. 1 of the originally filed spec with the schematic directory representation submitted by the Applicant in the brief:

     Directory Level
     ---- doc
     ---- xls
     --- xlm
     --- other

Unless translation from Japanese to English caused the problem? After all, it was a translator who decided on the sentence "The directory group 8 for storing specific format files comprises a directory 6 for storing music files, a directory 7 for storing still image files and other directories (not shown). As is common with patent applications, the text in FIG. 1 corresponds almost exactly to that in the specification's description of FIG. 1.

Board affirms obviousness even though benefit described in reference not linked to claim element

Takeaway: The Examiner rejected claims to a method for context aware computing as obvious over a combination of three references. The Applicant attacked the Examiner's combination rationale, arguing that the benefit used by the Examiner as a reason to combine was not actually produced by the claimed feature. The Board did not discuss the benefit disclosed in the reference, but instead merely stated that the Examiner had found a motivation to combine in the purported benefit. (Ex parte Cutlip , PTAB 2013.)

Details:

Ex parte Cutlip
Appeal 2010007365; Appl. No. 11/847,298; Tech. Center 2100
Decided:  June 13, 2013

The application on appeal was directed to context aware computing. A representative claim on appeal read: 

     1. A method for ontologically driving context mediation in a computing system, the method comprising:
     collecting a plurality of events arising from a solution in a computing environment;
     loading operational meta-data for the solution;
     contextually mediating the collected events with the operational meta-data to produce context sensitive events; and,
     correlating the context sensitive events with corresponding symptoms in a display to an end user in the computing environment,
     wherein the events comprising both base events and also splunked events.

The Examiner rejected the claim as obvious over a combination of three references. The third reference, Chandrasekaran, was relied upon for the "base events and also splunked events" limitation. The Examiner cited the following statement as a reason for utilizing the base/splunked events feature in Chandrasekaran: "Based on the foregoing, techniques are clearly needed for efficiently processing sequences of events that may occur at different points in time." (Background of Chandrasekaran.)

In the Appeal Brief, the Applicant attacked the Examiner's reason to combine:

     The "technique" taught by Chandrasekaran is separate from the base events and compound events. Specifically, the techniques of Chandrasekaran are used for processing and evaluating base events and compound events. Therefore, to obtain the alleged benefit of "efficiently processing sequences of events that may occur at different points in time," classifying events as base events and compound events is not enough since the benefits are attributable to the technique and not just classifying events as base events and compound events to which the technique is applied. ...  Whether or not modifying the events of the applied prior art (i.e., the combination of Baudino and Zaner-Godsey) to include base events and compound events would result in the proposed benefit has not been established by the Examiner.
(Emphasis added.)

The Examiner did not address argument this in the Answer.

The Board affirmed the rejection. The Board briefly addressed the Applicant's rationale argument, but only to say that the Examiner was right, without explaining why:

     Appellant also contends that the combination of Baudino, Zaner-Godsey, and Chandrasekaran is improper. Reply Br. 6-7. In particular, the Appellant contends that “[w]hether or not modifying the events of the applied prior art (i.e., the combination of Baudino and Zaner-Godsey) to include base events and compound events would result in the proposed benefit has not been established by the Examiner.” App. Br. 18 (emphasis omitted). We disagree with the Appellant.
     The Examiner found that a person with ordinary skill in the art would have been motivated to combine Baudino, Zaner-Godsey, and Chandrasekaran in order to efficiently process sequence of events that may occur at different points in time. Ans. 8. As such, we find that the Examiner has provided an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.

My two cents: I agree that the Examiner articulated his reasoning. But I say that the Applicant showed that the reasoning was faulty, i.e., that it lacks a "rational underpinning." As a reason to combine, the Examiner proferred the benefit "efficient processing." But the reference which mentioned efficient processing did not disclose that this efficiency was a result of the feature relied upon in the combination.

The statement relied upon by the Examiner – "Based on the foregoing, techniques are clearly needed for efficiently processing sequences of events that may occur at different points in time" – was in the Background section of Chandrasekaran, following a list of shortcomings of the prior art. At most, this sentence shows that some combination of techniques disclosed in Chandrasekaran leads to efficient processing of sequences of events at different points in time. It does not show that efficient processing is produced by the feature which the Examiner took from Chandrasekaran – the use of base events and splunked/compound events.

In fact, other teachings in Chandrasekaran suggest that efficiency is a result of specific techniques such as the use of array operations to compare attribute values with constant values ([0100]) and splitting base event indices into parallel tracks based on a maximal composite partitioning key ([0114]).

So it's not the base and splunked/compound events that result in efficient processing. Then why would a POSITA be motivated to use these events to modify the primary and secondary references to produce Applicant's claims?

This rationale just doesn't stand up to scrutiny, which is why I'm convinced the Board got it wrong. And even if they didn't, I'm disappointed the Board didn't explain why the Examiner's rationale was rational, instead of just stating that the Examiner "found" that the reference taught a benefit. A "rational underpinning" requires more than merely putting "findings" on paper – it doesn't become rational until it's based on findings that are also established to be correct.

The Applicant clearly identified the issue – "whether or not modifying the events of the [asserted combination] to include base events and compound events would result in the proposed benefit." The Applicant also showed that Chandrasekaran did not link the benefit to the claimed feature. That should be enough. The Applicant shouldn't be required to spell out what other features in Chandrasekaran actually did produce that benefit (array operations, special keys, etc.).

Board affirms obviousness even when Applicant explains why primary reference does not benefit by substitution

Takeaway: The Examiner relied on a substitution rationale in rejecting claims to a vertebral disc prosthesis. The rejection replaced circumferentially oriented radiopaque markers in the primary reference with radially oriented marker from the secondary reference. The Applicant explained that the primary reference was radially symmetric, and thus has no use for radial markers. However, the Board affirmed, noting that the secondary reference used radial markers to position as well as orientation. (Ex parte De Villiers, PTAB 2013.)

Details:
Ex parte De Villiers
Appeal 2011008377; Appl. No. 11/982,431; Tech. Center 3700
Decided:  May 9, 2013

The application on appeal was directed to a prosthesis used in vertebral disc replacement. A representative claim on appeal read:

     18. An intervertebral prosthesis for insertion between adjacent vertebrae, the prosthesis comprising:
     upper and lower prosthesis plates locatable against respective vertebrae and having bearing surfaces thereon;
     a rigid preformed core located between the plates,
     the core having opposed bearing surfaces configured to cooperate with the bearing surfaces of the plates to allow the plates to slide in articulated manner over the core; and
     wherein the core is preformed with angularly spaced, radial passages and radially oriented pins located in the radial passages serving as radiographic markers.

In a Final Office Action, the Examiner rejected all the independent claims, and several dependents, as being obvious over Keller in view of Ray. According to the Examiner, Keller taught a prosthesis having the claimed plates and a core as claimed, with one difference: the radiographic marker in Keller was located in a passage extending around the circumference of the core. The Examiner then relied on Ray's teaching of a vertebral disc core for placement between adjacent vertebrae, where the core included radially oriented radiopaque markers.

Keller	Ray

In the body of the rejection, the Examiner explained the rationale for the combination as follows:

[It would have been obvious to] change the orientation of the circumferential marker/passage of Keller to a radially orientation as taught by Ray et forming preformed radial passages with radially oriented pins to allow radiographic viewing of said core to check location and orientation including radial orientation with predictable results.

On appeal, the Applicant did not dispute the Examiner's assertions about the disclosure of Keller or Ray, but instead attacked the Examiner's proffered reason to combine. First, Keller already included radiopaque markers. Second, the Office Action had provided no reason for modifying Keller to have markers that show rotational orientation of Keller's rotationally symmetric core:

   The rotational orientation of Keller's core 1 relative to it's retaining plates is irrelevant to the practitioner and patient, because the core 1 is a disc: any one angular orientation of the core is identical to any other angular orientation. [Thus,] the practitioner has absolutely no use for knowing the rotational orientation of the core. [In any event,] the exposed ends 10, 11 of the wire 9 would provide sufficient detail of the rotational orientation [under fluoroscopy].
   In stark contrast, the performance of Ray's disc nucleus prosthesis absolutely depends on its rotational orientation relative to the anatomical structures in which it is implanted. ... [T]he practitioner would have an intense need to know the rotational orientation of the prosthesis, so that it can perform its functions, e.g., "restore the natural pumping action of the disc space" [citing Ray].

In the Answer, the Examiner did not specifically address the Applicant's arguments, but instead noted similarities of the two prostheses:

Both Keller and Ray teach intervertebral prostheses for replacing an injured or malfunctioning nucleus. Both prostheses are mobile; note that the nucleus prosthesis of Ray is free to move within the disc space. Both prostheses use radiographic markers. Keller teaches, "A metal wire 9 is fitted in the groove 3, 4 is visible on X-rays and makes it possible to check the position of the sliding core 1 and to assess the articulation with the opposite bearing." Ray teaches "the spinal disc nucleus includes a radiopaque marker for indicating a location and orientation. Both Keller and Ray teach the marker is for the exact same purpose: to check position/location of the nucleus prosthesis.

The Examiner then defended his use of the substitution rationale:

 According to the MPEP [2141], this provides examplary rationale for substitution motivation, "simple substitution of one konwn element for another to obtain predictable results.". Note that the rejection is substituting the orientation and not adding additional markers as argued by  Appellant.

The Board affirmed the rejection and suggested that the Applicant had focused too much on Ray's use of markers to show rotational orientation:

While the placement of markers according to Ray may be used to define the orientation of an implant, the markers may also be used to simply define the location of the implant (FF4), which is how the markers are used in Keller (FF2). Claim 18 does not limit the use of markers to defining implant orientation. We agree with the Examiner’s rationale and adopt is as our own. KSR Int’l Co. v. Teleflex Inc ., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)

My two cents: In this and many other cases, the Board seems to think that substitution is a reason in and of itself.  But did the Board get this one wrong? Here, the Examiner relied on a specific advantage and the Applicant explained why this was not an advantage.

More specifically, the Examiner used the benefit "check location and orientation including radial orientation" as a reason to combine. But the Applicant rebutted by asserting that POSITA had no need to check orientation, and explained why this was the case.

The Board then seemed to fall back on the reasoning that a POISTA could have substituted Ray's markers as just a different way of marking location, not orientation, relying on this statement in Ray: "the radiopaque wires 38 further provide an indication of a location of the prosthesis spinal nucleus 20 upon implant."

This statement about location seems like a red herring to me, as that wasn't really in dispute. Certainly Ray's wires show where the implant is. But many wire arrangements could perform this function. Ray's wires were radial precisely because orientation as well as location was important. Why would a POSITA modify Keller's circumferentially arranged wires – which work just fine in Keller's implant  – to use Ray's radially arranged wires – which have no use in Keller's implant.

Sometimes a nail and a screw are equivalent substitutes, as both work as a fastener. But usually there's a reason why you use a nail rather than a screw, or vice versa. Isn't that the case here? Didn't the Applicant successfully rebut the Examiner's substitution rationale?

Dangers of treating all independent claims the same

Takeaway: When relying on the same argument for multiple independent claims, make sure the same argument actually applies to all the different claims.

Details:

The application in Ex parte Kotzin (PTAB 2012) was directed to "a presence attribute information server and manager." Claims 1 and 15 were system claims which essentially described storage of "user presence attribute information" and "associated access authorization information" with wherein clauses further describing this information. Claim 23 was a method claim directed to determining whether a user requesting presence attribute information is authorized to have access.

The Examiner rejected independent claims 1 and 15, and various dependent claims of 1 and 15, as obvious over Applicant's Admitted Prior Art (AAPA) and Raverdy. The Examiner then used AAPA, Raverdy, and a third reference, Wade, to reject several other dependent claims of 1 and 15, as well as independent claim 23.

The Appeal Brief contained a section for independent claims 1 and 15, arguing that AAPA did not teach the recited wherein clauses that described the "access authorization information," and that Raverdy did not cure the deficiency. The Appeal Brief contained another section for the rejection of independent claim 23 and several dependents of 1 and 15. This section did not make a specific argument for this set of claims, and instead merely stated that the rejection "continues to rely upon [mischaracterizations], an inappropriate combination with Raverdy and/or a misinterpretation" and then arguing that the third reference (Wade) "similarly fails to account for the claimed features" that were allegedly taught by AAPA.

The Board was persuaded by the Applicant's argument independent claims 1 and 15, and therefore reversed the first rejection. However, with respect to the second rejection, the Board noted that while Applicant relied on the same arguments for claim 23 that were made for 1 and 15, "claim 23 has different scope than claims 1 and 15" and "the Examiner combines different teachings in a different way to reject claim 23."  The Board then affirmed this second rejection since the Applicant did not show error.

The application in Ex parte Harris (PTAB 2012) was directed to aggregating individualized programs onto a single channel, and allocating the channel bandwidth "as-needed for provision of short video programs on an 'on demand' basis." The application was filed with five independent claims: a server device (claim 18);  a client device (claim 16); a method (claim 1) directed to a server-client combination; a system (claim 10) also directed to the combination; and a computer-readable medium (claim 20) directed to the combination.

The Examiner rejected all the independent claims as obvious over Dunn and Klosterman. The Examiner explained the rejection of claim 1 in detail, but the rejection of the other independent claims merely said "see the rejection of claim 1." The Applicant argued without amending, and appealed when the Examiner maintained the rejection.

The Appeal Brief contained a section for the first rejection of all the independent claims and some dependents. The Applicant first addressed method claim 1, which included a step of a server broadcasting modules to a client, but not in response to a client request. Claim 1 also included retrieving one of the broadcast modules at the client in response to a matching condition. The Applicant argued that Dunn did not teach the retrieving step since the modules retrieved in Dunn were sent in response to a client request, which contradicted the language of claim 1. In this same section of the Appeal Brief, the Applicant argued that "as each of independent claims 10, 16, 18, and 20 include similar features, each of these claims is believed patentably distinguished for similar reasons."

The  Examiner's Answer continued to reject claims 10, 16, 18, and 20 on the same basis as claim 1, though the claims had different scope.

The Board found the Applicant's arguments about Dunn to be persuasive, and so reversed the rejection of combination method claim 1. The Board also reversed the rejection of combination system claim 10, combination CRM claim 20, and client device claim 16.

However, the Board treated server claim 18 differently. The Board noted that although the Applicant contended that claim 18 was similar to claim 1, "we do not find [this argument] to be commensurate to be commensurate to claim 18 limitations." The Board then turned to the Examiner's Answer, which stated only that claim 18 was rejected for the same reasons as claim 1. But, the Board explained, claim 18 included server limitations not present in claim 1, namely, ones related to receiving a video request from the client, retrieving the requested video, and conveying it to the client. 

Accordingly, the statement of reasons for rejecting claim 18 (see Ans. 6) is problematically deficient because in order for us to sustain this rejection would necessitate our resorting to impermissible speculation or unfounded assumptions or rationales to supply deficiencies in the factual bases of the rejection. In re Warner, 379 F.2d 1011, 1017 (CCPA 1976).  We, accordingly, will not sustain the rejection of claim 18 nor the rejection of its dependent claim. 

My two cents: In both cases, the Applicant was sloppy in not addressing differences between claims. This problem was fatal in Ex parte Kotzin, where the feature relied on by the Applicant was simply  not present in one of the independent claims. The Applicant fared better in Ex parte Harris, and in fact, the Examiner got his hand slapped for a sloppy rejection. However, the burden is on the Applicant to point out error, and you certainly can't rely on the Board to look for weaknesses in the rejection.

Suppose the Board did not hand the Applicant this gift of (essentially) finding the rejection of server claim 18 deficient on procedural grounds. I think the Applicant in Harris unnecessarily weakened his argument by treating all independents exactly the same.

The Applicant did argue a feature present in all the independent claims -- broadcast but not in response to a client request. That's important. But not necessarily enough. By arguing this feature in the context of claim 1, the Applicant also mixed in client features of claim 1 – retrieving modules. What if the Board viewed this as an argument about the combined feature present in claims 1, 10, and 20? In that case, the argument would not have directly addressed the server-only feature, and the Board might have affirmed the rejection of claim 18.

Be very careful in grouping independent claims together.  If the limitations really are the same, maybe there's no harm in relying on the same arguments. But if the limitations are even slightly different – and I mean in a way that matters, not merely in verb tense – you should probably make separate arguments, even if the arguments are similar at some level.