Busy Board bounces appeal of statutory rejections when provisional rejection matures during appeal

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

Takeaway: At the time applicants filed their notice of appeal, fewer than all the pending claims had nonprovisional obviousness rejections associated with them, but all the pending claims were provisionally rejected under non-statutory obviousness-type double patenting over applications that had not yet matured into patents.  Applicants appealed only the nonprovisional § 103 rejections  A provisional rejection was made nonprovisional in the Examiner's Answer, an application underlying the rejection having matured into a patent after the filing of the notice of appeal.  Citing the need to timely consider other appeals on it's docket, the Board disposed of the appeal by affirming the non-appealed, nonstatutory rejections, without considering the § 103 rejections that had been appealed.  (Ex parte Palmer, No. 2014-002277 (P.T.A.B. Mar. 10, 2016).)

Details:

Ex parte Palmer
Appeal 2014-002277; Appl. No. 11/429,850; Tech. Center 1700
Decided: March 10, 2016

In a final Office action issued December 18, 2012, the application was provisionally rejected on grounds of nonstatutory obviousness-type double patenting, based on then-unissued co-pending applications. Some of the pending claims were also rejected on statutory obviousness grounds under § 103. In an after-final response filed February 18, 2013, the applicants averred that they would "address the need to file one or more terminal disclaimers to overcome the aforementioned obviousness-type double patenting rejections" "[u]pon indication of allowable subject matter". The applicants appealed on March 12, 2013, and their appeal brief, filed May 8, 2013, addressed only the § 103 rejections.

Unfortunately for the applicants, one of the co-pending applications that was basis for a provisional nonstatutory obviousness-type double-patenting rejection matured to patent on April 13, 2013, while the applicants were busy writing their appeal brief.  The applicants failed or declined to address the provisional rejection-made nonprovisional in the October 11, 2013 Examiner's Answer-in either the appeal brief or a reply brief. Deeming the applicants' February 2013 vow to "address" the then-provisional rejections upon maturation insufficient as a promise to file a terminal disclaimer, the Board opined that "the time to present arguments on the merits-and therefore resolve the question of whether a terminal disclaimer is needed-was in the Appeal Brief in this appeal". The Board therefore affirmed the application's rejection without reaching the § 103 rejections that had been the only basis of the appeal.

The Board made its decision with the understanding that, post-appeal, it will not suffice for the applicants to file a terminal disclaimer to be granted allowance.  Prosecution closed with the appealed § 103 rejections left unreviewed, and these standing rejections will impede the application's advance toward issuance. The decision also cost the applicants their appeals fees, which they will have to pay a second time if they want to have the § 103 rejections reviewed. The Board noted that the applicants could still keep their patent rights alive with an RCE or continuation, but that may be cold comfort. The applicants will suffer years of delay on their path to issuance, and the decision potentially robs the applicants of valuable PTA days (depending on whether a terminal disclaimer is ultimately filed).

The panel in this case was not shy about disclosing the reason for its declining to consider the appealed issues: the Board is too busy to be bothered.[1] "In managing the ex parte appeal docket, we are not only concerned with this appeal, but other appeals on the Board's ex parte appeal docket.  Affirmance of the double patenting rejection disposes of the appeal.  Under the circumstances, and in deference to a need to timely consider other appeals, we exercise discretion to not reach the remaining rejections." Apparently acknowledging that the decision could be perceived as mean-spirited, the opinion deflects blame by stating that any hardship suffered as a result was "self- imposed" by the applicants.

My take:

This decision might serve as a lesson to applicants and their counsel not to ignore provisional rejections, and to read carefully the Examiner's Answer on appeal to check for changed conditions affecting rejections. It also raises questions as to what obligations applicants have to address rejections that are, at least at first, only provisional in nature, and at what points in the proceedings such obligations arise.

The reasons to side against the applicants are many. First, they attempted to "hold in abeyance" the provisional rejections, rather than addressing them immediately. See 37 C.F.R. § 1.111(b). Then, the applicants missed or ignored the issuance of the double-patenting reference application in the month leading up to the filing of their appeal brief, and missed or ignored the examiner's notification of the rejection having become nonprovisional in the answer brief. Finally, the applicants failed to file a reply brief addressing the nonprovisional rejections and showing good cause for doing so (per 37 C.F.R. § 41.41).

On the other hand, applicants generally have neither the obligation nor the incentive to file a terminal disclaimer-and pay the accompanying fee-to overcome rejections that are only provisional in nature. If a co-pending reference application ultimately fails to issue, or issues only with claims upon which an obviousness-type double patenting rejection would not be well founded, any terminal disclaimer fee paid will have been wasted, and the value of the patent portfolio may be needlessly diminished by the term-limiting and enforcement-coupling effects of the disclaimer. How could it be just for the USPTO to require applicants to submit traversal arguments or a signed terminal disclaimer, each expensive in its own way, before the ripening of the issue? [2]
 
From this perspective, Applicants' counsel can scarcely be faulted for (in effect) asking the PTO to hold the provisional rejections in abeyance, especially when, at the time it was made in February 2013, the request was in accordance with PTO policy, policy that did not change until October 2015, when MPEP § 804(I)(B)(1) was amended to instruct that a filing of either a terminal disclaimer or a showing of patentable distinction over the reference application's claims "should not be held in abeyance" once a provisional double patenting rejection has been issued (for the dubious reason that one or the other filing "is necessary for further consideration of the rejection of the claims").[3]

If an applicant has no obligation to counter a provisional rejection until the applicant receives notice that it has been made nonprovisional, then the applicants in this case were not obligated to traverse or otherwise overcome the nonstatutory rejections here until the Examiner's Answer-by which point it was likely too late to do anything about it.[4] From this perspective, it is not clear that the applicants in this case did anything blameworthy. The decision twice intimates that merely committing to filing a terminal disclaimer would have been as good as actually filing a terminal disclaimer to obviate the double patenting rejection and have the § 103 rejections reviewed. But, despite this decision, is not clear why mere committal would have been effective to obviate the rejections, or how it could have prevented the Board from taking the same action it did in this case.

The decision raises the issue of whether the Board has the prerogative to affirm on uncontested grounds, or even if it does not, whether it ever should, even in the interest of expedient disposal. The decision cites to 37 C.F.R. § 41.37(c)(l)(iv), but the rule does not require an appellant to show examiner error in uncontested grounds of rejection. As a matter both of equity and properly incentivized appellate administration, an appellant who pays to appeal certain grounds should generally have the benefit of review of those grounds unless the review would be unusually burdensome. Otherwise, the Board could become incentivized to dispose of appeals cheaply as a means of generating appeals fees revenue.[5]

Finally, the decision raises the issue as to whether, as a practical matter, the strategy taken by the Board is more likely to reduce the examination and appeal backlogs or increase them. Having gotten no answer on the issues they brought to the Board, the dissatisfied applicants are likely only to get right back in line for another appeal decision. What was a three-year appeal pendency in the Board's statistics effectively became a six-year pendency.

Was the Board's punt in this case efficient docket management, or obnoxious parsimony? Pipe up in the comments.

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[1]. The Board is presently dealing with an appeal backlog of about 20,000 cases.

[2]. For some creative, but losing, arguments against obviousness-type double patenting tried by applicants who couldn't or wouldn't file a terminal disclaimer, see Karen's earlier blog post on the subject.

[3]. The policy might be challenged as arbitrary or capricious, since overcoming provisional rejections can hardly be said to be "necessary" for consideration of any outstanding nonprovisional rejections, since Rule 111(b)'s reference to "rejections" is probably best interpreted to mean nonprovisional rejections, and since the courts have held that provisional rejections exist to benefit, rather than harm, the applicant with early notice, In re Wetterau, 356 F.2d 556, 558 n.2 (C.C.P.A. 1966), and, at least in some circumstances, cannot be made final, In re Mott, 539 F.2d 1291, 1295-96 (C.C.P.A. 1976) ("Once the provisional rejection has been made, there is nothing the examiner and the applicant must do until the other application issues. We see no undue burden here.").

[4]. Would notice of a nonprovisional rejection in an Examiner's Answer be a "new ground of rejection" under 37 C.F.R. § 41.39(a)(2) that would entitle an applicant to reopen prosecution under 37 C.F.R. 41.39(b) (see MPEP § 1207.03)? The case law teaches that the ultimate criterion of whether a rejection is considered "new" is whether the applicant has had a fair opportunity to react to the thrust of the rejection. In re Kronig, 539 F.2d 1300, 1302 (C.C.P.A. 1976). The particular situation where, by dint of a patent grant, a provisional rejection matures into a nonprovisional rejection is not listed among the "factual situations that do not constitute a new ground of rejection" in MPEP § 1207.03(a), but this likely means only that the courts have not considered the question.  This issue may have been waived in the present case because of the applicants' failure to petition the examiner's decision not to designate the nonprovisionality of the rejection as a "new ground" in the Examiner's Answer (see 37 C.F.R. § 41.40(a)).

[5]. Although appeals fees collected in 2015 were almost $77 million, they were still 16% below what was anticipated in the budget.See page 159 of the USPTO Fiscal Year 2017 Congressional Justification.)

Scanning System For Generating a Prosthesis Model Not Invalid Under § 101

Takeaway:  In denying a motion to dismiss, a district court in the SD of TX found the claimed subject matter was not directed to an abstract idea.  While the court did find that the claimed subject matter employed "software to process images and perform 3D modeling," the court also found that the claimed subject matter did involve substantial tangible components that included generating models to create a breast prosthetic as well as the use of "alignment markers placed on the breast and captured in the image to aid in computer modeling" such that the claimed subject matter was not an abstract idea. ContourMed Inc. v. American Breast Care LP, 4-15-cv-02769 (TXSD March 17, 2016, Order) (Miller, J.)

Details:  ContourMed Inc. (the plaintiff) owned U.S. Patent No. 7,058,439 (the "'439 Patent") and sued American Breast Care L.P. (the defendant) for patent infringement in the Southern District of Texas. The defendant moved to dismiss the lawsuit asserting that the '439 Patent claimed ineligible subject matter directed to the abstract idea of generic computer for modeling data collected from a generic scanner. The plaintiff countered that the scanning system was not generic, and that even if the court considered the patent as directed to an abstract idea, "the use of novel, non-abstract components transforms the invention into patent-eligible subject matter." The district recently denied this motion to dismiss by finding that the claimed subject matter was directed to patent-eligible subject matter.

Claim 1 of the '439 Patent recites:

     1.  A method of forming a model of a breast prosthesis for a patient who has had one breast at least partially removed, comprising:
     providing a scanning system comprising one or more imaging devices and one or more alignment markers, wherein at least one of the alignment markers comprises a tangible object, wherein the tangible object is noticeable in a scanned image and may be used to manipulate a scanned image as a reference point;
     arranging at least one of the alignment markers in the middle of the body of the patient and within the field of view of at least one of the imaging devices;
     determining a first set of data elements using the scanning system is based on a shape of the patient's intact breast;
     determining a first computer model of the intact breast based on the first set of data elements;
     using at least one of the alignment markers in the middle of the body of the patient as a fixed reference point relative to the patient to determine alignment of the first computer model of the intact breast;
     applying a reflection transformation to the first computer model of the intact breast to form a second computer model, the second computer model comprising a second set of data points that represents a mirror image of the first computer model;
     determining a third set of data elements using the scanning system based on a surgical site at which the breast was at least partially removed;
     determining a third computer model based on the third set of data elements; and
     combining the third computer model and the second computer model to form a breast prosthesis model,
     wherein the second computer model defines an anterior portion of the breast prosthesis model that mirrors the intact breast and the third computer model defines a posterior portion of the breast prosthesis model that is custom fit to the surgical site.

The court began its analysis of whether the claims at issue were directed to an abstract idea (Mayo Step 1). In its analysis, the court found that the claims at issue differed from Alice and Bilski because the claims were not directed to a "building block of the modern economy."

The court then distinguished the other cases cited by the defendant as lacking "physical components, merely beginning with data collection and ending with data storage." The court reasoned that "[w]hile the process claimed in the '439 Patent does employ software to process images and perform 3D modeling, the underlying concept involves substantial tangible components." More specifically, the claims at issue were directed to imaging a breast for the "ultimate end of creating a breast prosthetic, using alignment markers placed on the breast and captured in the image to aid in computer modeling."

The court did note that caution should be used against the approach that focuses only on physical or tangible results since this type of analysis "inappropriately focuses on the result of the claimed invention rather than the invention itself." However, the court still found that the claims were not directed to an abstract idea because "the concept of the invention involves substantially more than mere data collection and storage and does not threaten to pre-empt the use of scanners and computer modeling in other fields."

Based upon this analysis, the court did not move to Mayo Step 2 to determine whether the claims included an "inventive concept."

In some ways, this decision feels like the outcome was a result of the claims producing "a useful, concrete and tangible result."

Would Diehr and Morse Be Invalid Under the §101 Mayo Test?

As most patent practitioners are aware, the Supreme Court set forth a two-part test for determining patent eligibility under 35 U.S.C. § 101 in Alice Corp. v. CLS Bank International under the framework set forth in Mayo v. Prometheus Laboratories (e.g., the Mayo test). The Mayo test requires that (1) determine whether the claims at issue are directed to a patent-ineligible concept; and if so, (2) determine whether the claims at issue include an “inventive concept.”  In other words, a determination is being made of whether the claims at issue merely recite “well-understood, routine, and conventional activity” or whether an element or combination of elements within the patent recite an “inventive concept” that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

If one were to apply the Mayo test to patents previously held to be patentable (e.g., the Diehr patent, the Morse patent, etc.) by the Supreme Court, those patents may very well be found to be invalid as being directed to patent ineligible subject matter.

Recent trends during Patent Office examination, patents in post-grant proceeds, and decisions by federal courts have resulted in a determination of claims that are directed to patent ineligible subject matter.  Typically, a patent examiner, a Patent Trial and Appeal Board (PTAB) panel, or a federal court will find the claim is directed to an abstract idea under step one of the Mayo test and then distill or dissect the ordered combination into individual claim elements to find each of the individual claim elements are directed to “well-understood, routine, and conventional activity” at step two of the Mayo test.

Additionally, patent examiners, PTAB panels, and courts (see Ariosa v. Sequenom) will look to the applicant’s or patent owner’s specification to support a finding under step one or step two of Mayo.  For instance, the Federal Circuit found that the method steps set forth in Sequenom’s patent did not support patentability because the specification stated “[t]he preparation of serum or plasma from the maternal blood sample is carried out by standard techniques.” In other words, the Federal Circuit found that “the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful.”

One particularly famous Supreme Court case upholding that the technology claimed in the patent application was directed to patent eligible subject matter is Diamond v. Diehr.  The Diehr patent was directed to “accurate and automatic control of the molding time for rubber compounds and the automatic opening of rubber-molding presses when the cure is calculated to be complete.”  Claim 1 of the Diehr patent recited:

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

providing said computer with a data base for said press including at least,

natural logarithm conversion data (1n),

the activation energy constant (C) unique to each batch of said compound being molded, and

a constant (x) dependent upon the geometry of the particular mold of the press,

initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

constantly providing the computer with the temperature (Z),

repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is 1n v=CZ+x

where v is the total required cure time,

repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

opening the press automatically when a said comparison indicates completion of curing.

If one were to apply step one of the Mayo test, one could argue the abstract idea is controlling molding times for rubber compounds.  In fact, the Supreme Court stated in its decision to find that the claims were directed to patent eligible subject matter “We view respondents’ claims as nothing more than a process for molding rubber products…”  

Transitioning to step two of the Mayo test, one could find that each claim element was “well-understood, routine, and conventional activity.”  One of the claim elements recites a well-known mathematical formula.  The Diehr specification states the “invention uses computers of well-known type with data storage banks containing the time-temperature cure data for the compound or compounds being used” and that “the relatively simple system of FIG. 1 is easily expanded within the capability of many present-day computers.”  As such, the specification of Diehr illustrates that the technology being utilized was already present. 

Finally, treating each claim element as being well-understood and conventional, one could then find that the claims, as a whole, do not amount to anything other the sum of the well-understood and conventional claim elements.

Most patent practitioners remember the Supreme Court case O’Reilly v. Morse as holding that an abstract idea, apart from its implementation, is not directed to patent eligible subject matter when the Supreme Court invalidated claim 8 of the Morse patent.  However, the Supreme Court also held that claim 1 of the Morse patent to be directed to patent-eligible subject matter.  More specifically, the Supreme Court stated “[t]he first seven inventions, set forth in the specifications of his claims, are not subject to exception.”

Claim 1 of the Morse patent recites:

Making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner, for the purpose of telegraphic communication at any distances.

In essence, Morse disclosed the use of repeaters in between a transmitter and receiver to restore the signal transmitted by the transmitted to substantially its initial level.  Morse admitted in his specification that “it had been essayed to use the currents of electricity or galvanism for telegraphic purposes” prior to his invention.  Additionally, the individual components utilized by Morse had been previously available.

Applying the Mayo test to claim 1 of the Morse patent may also result in the claimed subject matter being found to be directed to patent ineligible subject matter.  For example, applying step one of the Mayo test, one could find the abstract idea to be utilizing magnetism to provide “communication at any distances.”

Applying step two of the Mayo test, one could find that each of the individual components were “well-understood, routine, and conventional activities.”  Again, treating each claim element as being well-understood and conventional, one could then find that the claims as an ordered combination do not amount to anything other the sum of the well-understood and conventional claim elements.

Thus, application of the Mayo test to patents previously held to be directed to patent eligible subject matter by the Supreme Court would likely result in a contradicting decision that those patents are instead directed to patent ineligible subject matter.  However, a solution may reside in this statement from then Justice Rehnquist in Diamond v. Diehr: “when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101.”  In other words, the claims need to be considered as a whole during application of step two of the Mayo test.  It is too simple to distill each claim into its individual claim elements to state that each element is “well-understood, routine, and conventional activity” and then consider that the ordered combination does not amount to anything other than the sum of those well-understood, routine, and conventional” claim elements.

New contributor to All Things Pros: Tyson Benson

Last week featured a guest post by Tyson Benson. I'm pleased to announce that Tyson will be joining All Things Pros as a regular contributor. Tyson's initial focus will be the topsy-turvy world § 101 in the Alice-Mayo regime.

Tyson Benson is a registered patent attorney and partner at Advent, LLP. Tyson's practice includes all aspects of patent prosecution and has experience drafting and prosecuting patent applications relating to integrated circuitry, electronics, medical devices, telecommunications, geographic information system technologies, graphics processing, computer networking, communications protocols, and computer architecture.

PTAB interprets "searching only a solutions data store" to allow a search of another database due to comprising

Takeaway: On appeal, the Applicant argued that the claim language "searching only a solutions data store" wasn't disclosed by the reference, which taught that both the "potential solutions" and the "approved fix" databases were searched. The Board disagreed, noting Applicant's use of the transition term "comprising" in the method claim. The reference system performed a first search in one database, and conditionally performed a second search on a different database. The scenario where no second search occurred was clearly covered by the claim language. An additional search of a second database wasn't excluded ("comprising") so the second scenario was also in the scope of the claim. (Ex parte Fisher, PTAB 2015.)

Details:

Ex parte Fisher
Appeal 2013-002943; Appl. No. 11/833,949; Tech. Center 3600
Decided:  November 24, 2015

The application on appeal dealt with automated technical support. A client application generated a system configuration profile and transferred it to a server. The server searched a knowledge base for relevant problem resolution information, using the profile to narrow the search. This problem resolution information was sent to the client in the form of a hyperlink to a web pages "instructive of" a problem solution.

A representative claim on appeal read:

1. A method for obtaining customer support, the method comprising:
[1] transmitting parameters specific to an end user product
    to a network–based application
          operable to dynamically generate a web page
               instructive of a solution to a problem associated with the end user product
          based on the parameters
          by searching only a solutions data store
               that stores a plurality of solutions
                    which were moved to the solutions data store from a predisposition solutions data store,
                         the predisposition solutions data store storing a plurality of potential solutions
                              that are accessible by technical support center agents
                              but inaccessible to an end user,
                    when each of the plurality of solutions
                         was validated and approved for use
                              based on implementation of the potential solutions
                                    by the technical support center agents;
[2] receiving an interactive link to the dynamically generated web page; and
[3] browsing the dynamically generated web page by selecting the interactive link.
(Emphasis added.)

The claim language on appeal was that emphasized above. The Examiner used a combination of four references to reject as obvious, and relied on Wing for the above-emphasized feature. The Applicant argued that the claims require searching only one data store – one having solutions moved from another store of solutions inaccessible to an end user.” The Applicant argued that in Wing, "both the ‘potential solutions’ (those not formally approved) and the ‘approved fix’ databases are searched ... regardless of where they are from.”

In the Answer, the Examiner maintained the rejection. The Examiner explicitly mapped the claimed "predisposition database" to Wing's attention file and the claimed "solutions data store" to Wing's dynamic disposition database. The Examiner characterized Wing's teachings as follows:

• "searching only a solutions data store that stores a plurality of solutions which were moved to the solutions data store from a predisposition solutions data store"
  [Wing: content developer can consider moving potential fixes from attention files to dynamic disposition database that stores approved fixes]
• predisposition solutions data store storing a plurality of potential solutions that are accessible by technical support center agents but inaccessible to an end user
  [Wing: attention files are only accessible by content developer/technician and not inaccessible by enduser]

The Applicant filed a Reply Brief to make several points. One, the Examiner equated Wing's dynamic disposition database with the claimed solutions data store, but "nowhere does Wing teach that only the disposition database is searched." Two, the "Examiner is incorrect that the 'attention files' of Wing are only accessible by content developer/technician." Wing merely stated that these files are accessible by a content developer, but "mentions nothing about others (e.g., end users) not being able to access the potential solutions therein.

The Board affirmed the obviousness rejection and discussed three different sub-issues. First, the method claim included only three steps, and almost all of step [1] related to activity after the transmitting, with language describing how the transmitted parameters affect a remote database. All this language was non-functional descriptive material, and thus given no patentable weight (citing King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)). Second, the Board found it "predictable to narrow the domain of a search in general," since it is "predictable to delete a step for the purpose of removing its function."

Finally, even giving patentable weight to the "searching only a solutions data store," limitation, the Board found that the Wing reference disclosed this feature. Wing's system performed a first search in one database, and conditionally performed a second search on a different database, depending on the results. A scenario where only the first search occurred was clearly covered by "searching only." And the use of "comprising" meant an additional search of a second database wasn't excluded, so the second scenario was also in the scope of the claim.

Here's the Board's full explanation:

     Wing describes searching only its solutions set database and that after making that search, only of that database, [when] an approved fix for a reported problem does not appear in the database of approved fixes, a potential solution, i.e. a solution that has not been formally administered and added to the database of approved fixes, may be provided to the end-user, to resolve their issues based on the live creation of a solution set.
     This second step may or may not occur by Wing’s wording. In the instance where it does not occur, the search only of the approved database is clear on its face. In the instance where it does occur, Wing does not say another database is searched, but rather that the technician himself creates a potential solution set. Even if the technician performs a search to create that solution set, Wing describes this as occurring subsequent to searching only the approved fixes. As the claim uses the transition phrase “comprising,” additional unrecited steps will not remove art from the scope of the claim.

My two cents: Oh, where do I begin ... Here's my biggest beef with this decision: it's a leap to characterize narrowing a search ("searching only") as removing a step. OK, there were two databases here. If you understand "search" to mean "search both" or "search all" then, yeah, "search only one" is narrowing. But who says a POSITA understands plain old search in this context to mean "search all" ? The Board offered no explanation, evidence, or reasoning about this, just the sweeping generalization that narrowing a search is analogous to removing a step, which is generally predictable and thus obvious. Note that the Examiner didn't use this rationale, and instead cited a specific benefit mentioned in the Wing reference.

Moving on to the "searching only" limitation. The Applicant understood Wing to teach searching two databases, and argued that the claim language excluded this. The Examiner never explained how "searching only a solutions data store" read on two searches. The Board came up with a clever (devious?) explanation involving additional steps and "comprising." To me, that explanation reads "only" out of the claim. "`Comprising' is not a weasel word with which to abrogate claim limitations." Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed.Cir.1998).

Unless you look at it another way ?? The Applicant characterized Wing as a search of two databases – to me, clearly excluded by "searching only a solutions data store." Is the Board instead characterizing Wing as two searches? The first search is covered by the claim, because it is indeed  limited to the particular database recited in the claim (approved fixes = "solutions data store"). The second, separate, search of the potential fixes database is simply an extra step not excluded by the claim.

Is that a fair reading of Wing ... two separate searches, as compared to one search of two databases? Assuming there is a difference to a POSITA, which would a POSITA understand Wing to teach? I'd be surprised if the patent attorney writing the Wing spec meant to make such a distinction. In fact, the drafter of Wing would want his description to read on both implementations, right?

How do you craft a claim that avoids Wing? Do you need "consisting of" rather than "comprising"? Do you need to completely re-think the claim strategy? (Which can be very difficult to pull off when you're stuck with the spec that was filed.)

This post is about the Fisher decision and "searching only." But what if you're drafting Wing and want to cover both implementations: two separate searches; one search of two databases. Is there a way to craft a claim that covers both? Or maybe it's a good idea to have different claim sets directed to different implementations. Sometimes we patent attorneys get hung up on having one claim that captures everything.

Finally, Applicants should take heed of the Board's warning about including receiver behavior in a sender claim (or vice versa). Same goes for including server behavior in a client claim (or vice versa). I see this mentioned a lot in appeal decisions.

Guest Post: Beware – Patent Prosecution Arguments Can Be Utilized as Evidence of Patent-Ineligible Concept Under §101

[Guest Post by Tyson Benson, a registered patent attorney and partner at Advent, LLP. Tyson's practice includes all aspects of patent prosecution and has experience drafting and prosecuting patent applications relating to integrated circuitry, electronics, medical devices, telecommunications, geographic information system technologies, graphics processing, computer networking, communications protocols, and computer architecture.]

In a recent decision handed down by the Patent Trial and Appeal Board (PTAB), PTAB introduced a new grounds for rejection under 35 U.S.C. §101 and supported this new ground for rejection with the Appellant’s arguments made during prosecution.

In Ex parte Hoitsma (Appeal 2014-003035 – decided March 4, 2016), the Appellant appealed the final rejection of a number of claims under 35 U.S.C. § 103(a). The patent application at issue was directed to methods and apparatus for determining probability distribution functions and/or cumulative probability distributions. Claim 1 of the patent application is reproduced below:

     1.  A method comprising:
     receiving a plurality of values of an input variable at an input to a processor, wherein the input variable is representative of a physical characteristic of a component or system; and
     using the processor to implement a physics model to produce an estimate of an output for each of the input values;
     wherein the processor
          maps the output estimates to the input values by fitting the estimates to a plurality of curves;
          selects values from corresponding points on the curves to produce an output probability density or cumulative distribution function for the physical characteristic at a future time; and
          outputs the probability density or cumulative distribution function.

The technology could be utilized to predict the occurrence of defects such as cracks in components of an aircraft and the estimated crack lengths could be used to determine the probability that a crack length would exceed a predetermined threshold at some future time.

PTAB affirmed-in-part the final rejection under 35 U.S.C. § 103(a). However, as mentioned above, PTAB also introduced a new rejection under 35 U.S.C. § 101. After reciting the current state of the law (e.g., Alice, Mayo, etc.), PTAB applied the Mayo framework to the claims at issue.

The interesting part of this decision is that PTAB utilized the Appellant’s arguments during prosecution as evidence that the claims at issue were directed to a patent-ineligible concept (Mayo step 1). More specifically, PTAB held that the claims were directed to “a mathematical algorithm in the form of a probability distribution mapping function” and pointed to portions of the Applicant’s specification. Additionally, PTAB stated:

Our conclusion ...is reinforced is reinforced by Appellants’ arguments directed to the Examiner’s rejection of claims 1 and 11 under 35 U.S.C. § 103. Appellants’ arguments are focused solely on the probability density or cumulative distribution function (mathematical algorithm) encompassed by claims 1 and 11. For example, Appellants argue “Barajas et al. does not disclose or suggest that a probability density or cumulative distribution function for a physical characteristic at a future time can be produced by selecting values from corresponding points on a plurality of curves.”

PTAB went on to hold that there was no “inventive concept” under Mayo step 2. For instance, PTAB indicated that the processor was generic and purely conventional and that the inputs “encompass purely theoretical (made-up) input values to produce theoretical predictions of a theoretical component or system.”

As such, Applicants/Appellants should be mindful that arguments made during prosecution to differentiate claim language from the prior art may be utilized as evidence to support a rejection under 35 U.S.C. § 101.