Obviousness reversed because Examiner merely asserted that combination provided a benefit, without explaining how (Ex parte UTC)

Takeaway: The BPAI reversed an obviousness rejection because the Examiner did not explain how a combination provided an alleged benefit.  The Examiner merely asserted that modifying the reference would produce a benefit. The Board held that the Examiner had failed to make a prima facie case.


Details:
Ex parte United Technologies Corporation
Appeal 2009006732, Appl. No. 10/899,886, Tech. Center 3700
Decided November 18, 2009


The claim at issue was to a process for machining blade slots in a turbine.  The limitation at issue was  forming a rectangular slot having multiple rectangular areas. Those areas had walls that formed a perpendicular angle with a surface.  For purposes of the obviousness discussion, the general idea is more important than the specific claim language, so here's an illustration of the claimed slot and walls:

The Examiner rejected under § 103, using a primary reference that taught multiple areas. However, the Examiner admittedly the walls in the reference did not include an angle perpendicular to the surface:

The Examiner then asserted that :

It would have been obvious to one of ordinary skill in the art at the time of invention to make the first and second surfaces of Yazdzik et al. perpendicular to the first and third [walls], and second and fourth walls because such a configuration would have been far easier to machine than the angled first and second surfaces of Yazdzik et al.

The Board held that such a mere assertion does not amount to a prima facie case for obviousness.

The Examiner, however, does not explain why making the noted surfaces perpendicular would be “far easier” or point to any factual support for that determination. The initial burden is on the Examiner to provide a factual basis to support an obviousness conclusion. In re Warner, 379 F.2d at 1017. No such basis has been provided. Moreover, even if making the surfaces perpendicular is in fact easier, the Examiner has not articulated why that knowledge would have been known to one with ordinary skill in the art.

My two cents: When an Examiner asserts that the combination provides a particular benefit, think hard about whether that makes sense.  And if not, argue on the basis that the Examiner has not provided an explanation of how the alleged benefit flows from the combination. You might also question whether the feature that the Examiner asserts to be a benefit really is beneficial. Finally, even assuming the combination does result in the alleged behavior and the alleged behavior really is a benefit, consider whether a POSITA would realize it was a benefit. 

As a side note, the Applicant didn't rely solely on the motivation-to-combine argument. The Applicant also argued that the reference did not teach, and won on this point. And this was a relatively rare instance where the argument really was about what the reference taught.  (The vast majority of arguments are really about how broadly to read the claims.)

The claimed process for forming a slot included two steps, using two different grinding wheels. The Examiner alleged that the slot shown in the reference (the second graphic above) was formed by two different wheels. The Applicant successfully argued, by pointing to specific portions of the reference, that the reference did not teach that the slot was formed using the second wheel. The reference taught instead that the second wheel was used for finishing the slot already formed.

BPAI finds not obvious to select one direction from infinite number of perpendicular directions (Ex Parte Sato)

Takeaway: In Ex Parte Sato, the BPAI reversed an obviousness rejection to a claim to a transmission belt. after finding an infinite number of choices existed for the limitation at issue. The claim required fibers oriented along the width of a transmission belt. The Board found the reference did not disclose this orientation, but merely fibers oriented in a direction perpendicular to longitudinal. The Board noted there are an infinite number of directions perpendicular to longitudinal, and the Examiner did not explain why a person of ordinary skill in the art would have selected the width direction from all these possibilities.

Details:
Ex Parte Sato
Appeal 2009005955, Appl. No. 10/523,708, Tech. Center 3600
Decided August 16, 2020

Here is the dependent claim at issue, with the language at issue emphasized.

2. A transmission belt according to claim 1, wherein said chopped aramid fibers and said chopped polyester fibers are oriented in a width direction of said belt body.

Though both the parent claim and this dependent claim were rejected under § 103, the Examiner relied solely on the primary reference, Ito, as teaching the emphasized feature. The Examiner alleged that the claimed width-oriented fibers were disclosed by Ito's teaching of fibers "aligned in a direction orthogonal to a longitudinal line L of the belt." The Examiner explained that width is a direction orthogonal to the longitudinal line.

Ito's belt, with line L, is shown below:

In the Appeal Brief, the Applicant argued:

However, paragraph [0053] of Ito '226 does not state that the fibers should be aligned in the width direction of the belt, but rather that they are aligned "... to be orthogonal to a longitudinally extending line L." "Orthogonal" means perpendicular. Ito '226 is saying that the fibers could be aligned in any direction perpendicular to the line L (depicted in Fig. 1 of the-reference). Thus, the fibers could be aligned, for instance, vertically in the sense of the cross sectional drawing shown in Fig. 1 of the reference. This would not be in the direction of the width of the belt, as called for in claim 2. Indeed, the locus of all lines perpendicular to a line (L) would be a plane perpendicular to line L. There would thus be an infinite number of directions in which the fibers could be oriented, and still be orthogonal to line L.
(Emphasis added.)

The Board agreed with the Appellant:

[T]here are an infinite number of directions that are orthogonal to the longitudinal line, including vertical. The Examiner does not adequately explain why one of ordinary skill would have found it obvious to select the width direction from all the possible orthogonal orientations. We cannot sustain the rejection.

My two cents:  I think the infinite-number-of-choices is a great rebuttal to an obviousness argument, and I'm glad to see the Board bought it — but was misapplied to these facts. A belt has three axes – longitudinal, transverse and vertical – each of which is perpendicular to the other two. The reference disclosed fibers oriented in perpendicular-to-longitudinal, which covers transverse (i.e., width) or vertical. So I see two choices, not an infinite number. It's true that there are an infinite number of lines in a particular plane. But the claim was for fibers are oriented in a width direction, so essentially claimed one plane (transverse) and wasn't limited to fibers oriented along one particular line.

Failure to overcome rejection in original prosecution estops argument in reexamination (Ex parte Smith)

In a decision which may greatly impact patentees who find themselves in reexamination, the BPAI held in Ex parte Smith that an Applicant in reexam was estopped from arguing a priority claim based on failure to overcome a written description rejection in the earlier prosecution of the issued patent. Specifically, during the original prosecution the Applicant chose to make a claim amendment to distinguish over a reference rather than to appeal the Examiner's finding that the claim didn't deserve priority to the parent. During reexamination, the Applicant did appeal on this very issue, and the BPAI held that "Appellant’s silence during the original prosecution creates an estoppel for the Appellant to deny the Examiner’s repeated priority findings thereby impliedly conceding their correctness."

You can find a full discussion of the decision here on the Patents Post Grant blog. Thanks to Scott McKeown of the Patents Post Grant blog for bringing this decision to my attention.

BPAI uses superfluity doctrine to interpret a claim limitation (Ex parte Walpole)

Takeaway: In Ex parte Walpole, the BPAI applied the superfluity doctrine, i.e., a claim construction should not render a phrase superfluous. The independent claim recited “a magnet” and “an opposing magnet.” The Applicant argued that “opposing” meant the two magnets repelled each other. The Board noted that a dependent claim recited “wherein poles of the opposing magnet are generally aligned with poles of the magnet such that the magnet and the opposing magnet repel one another.” The Board said that this dependent claim would be superfluous under the Applicant's interpretation, and therefore adopted the Examiner's interpretation: “spatially opposed.”

Details:
Ex parte Walpole
Appeal 2009001235, Appl. No. 11/057,770, Tech. Center 3700
Decided Feb. 19, 2010

The claims were directed to a compressor valve which included two magnets: “a magnet coupled to the valve member” and an “opposing magnet.” The Examiner found this feature to be taught by one magnet placed above another, i.e., in opposite locations.

The Applicant argued that “opposing magnet” meant “having a magnetic pole which repels the other magnet.” In support of this argument, the Applicant pointed to the spec:

[T]he specification favors construing this term as referring to repelling magnets. The specification explains that a “magnet 40 is mounted to the button 38 in such a manner that the orientation of magnets 34 and 40 is such that like poles face each other creating a repelling force.” Application, paragraph 10. That is, the specification teaches repelling magnets. Although Appellant does not suggest that the Board read the specification into claim 18, Appellant stresses that one of ordinary skill in the art would construe the phrase “opposing magnets” to refer to repelling magnets if this phrase is read in light of the specification.

The Applicant also tried arguing what term meant to a person of ordinary skill in the art:

One of ordinary skill in the art of magnetism would readily appreciate that magnets either repel or attract one another depending on the orientation of their poles. Thus, in context of magnetism, the term “opposing” as recited in the claims would be understood to mean “repelling” by those of ordinary skill in the art.

The Applicant  acknowledged that the dependent claim explicitly recited that the opposing magnet repelled the first magnet, but argued that claim differentiation did not apply:

The Examiner's claim-differentiation argument is inapt because claim 27 does not have to further limit the term “opposing” for this claim to be different in scope from claim 1: claim 27 adds other limitations, such as “a guard,” and “a shoe.”

The Board said claim differentiation did apply, and that the doctrine dictated that “opposing” could not refer to the magnetic property, since this would render superfluous the dependent claim language “wherein poles ... are generally aligned ... such that the magnet and the opposing magnet repel one another.” The Board then held that the Examiner's interpretation of “opposing” as “spatially opposing” was reasonable.

My two cents: The Board got this one right. In particular, I agree that the specification did not support the Applicant's interpretation. While the spec clearly described two magnets that repel each other, it didn't use the adjective “opposing” to describe this feature.

Also, the Applicant should have argued the dependent claim which explicitly spelled out “the magnet and the opposing magnet repel one another.” The Applicant clearly thought the “repelling” feature distinguished over the references. Therefore, the Applicant should argued the claim that specifically included the feature: the dependent claim. That way, if the Examiner/Board agreed that this feature distinguished over the art, the dependent claim would be allowable. As it was, the Board didn't decide (or need to decide) whether or not the reference taught the “repelling” feature. 

Appellant loses argument that anticipatory reference is not enabling (Ex parte Given Image Ltd.)

Takeaway: In the reexamination appeal Ex parte Given Imaging Ltd., the Applicant argued that a reference with a short description and one figure wasn't enabling and thus wasn't anticipatory. Despite the presence of declaration evidence, the BPAI affirmed the anticipation rejection, finding that the reference was enabling for what the Applicant actually claimed. So if your claim is high-level, without a lot of detail, don't be surprised when the reference used against you is also high-level, or when your "reference isn't enabling" argument isn't found persuasive.

Details:
Ex parte Given Imaging Ltd.
Appeal 200900064, Reexam Control No. 90/006,898, Patent No. 5,604,531

This was an appeal during reexamination of a medical imaging patent. Claim 1 recited:

1. An in vivo video camera system comprising:
a swallowable capsule comprising:
a camera system;
an optical system for imaging an area of interest onto said camera system; and
a reception system which receives said transmitted video output.

Claim 11 recited a different preamble – "autonomous video endoscope" – but was otherwise the same with respect to the issues discussed here.

The Examiner issued two different anticipation rejections, using Yamazaki and Saito.  The Applicant submitted declaration evidence to show neither reference was enabling, and thus could not anticipate.

The Applicant used the declarations to argue that Yamazaki disclosed a lens and a light source inside a gastric capsule, but did not enable "a functioning optical system," for various technical reasons explained in the declaration.The Applicant characterized Yamazaki's sparse description and single figure as "nothing more than an abstract idea."

With respect to Saito, the Applicant used the declarations to argue that while the application purported to disclose an endoscope, the disclosed device would not function properly as an endoscope, for various technical reasons explained in the declaration.

The declaration further stated that because of those technical deficiencies, neither reference "could have provided desired medical images without extensive redesign." Therefore, the Applicant argued, the references did not anticipate. "[I]nvalidity based on anticipation requires that the assertedly anticipating disclosure enabled the subject matter of the reference and thus of the patented invention without undue experimentation." Elan Pharms. v. Mayo Found. For Med. Educ. Research, 346 F.3d 1051 (Fed. Cir. 2003). 

The Examiner's Answer reiterated that both Yamazaki and Saito disclosed each element of independent claims 1 and 11. With respect to the alleged lack of enablement, the Examiner maintained that the references did disclose a functioning optical system because they did produce images of some kind. While acknowledging that the "systems may not produce the desired medical images," the Examiner noted that arguments about "desired medical images" were outside the scope of the claims, which did not refer to image quality.

The Board affirmed both anticipation rejections, finding that both references disclosed each claim element. In doing so, the Board found that both references were enabling for what the Applicant actually claimed.

With respect to claim 1, the Board interpreted an “in vivo video camera system” as "a system capable of taking video pictures inside a body." The Applicant acknowledged in oral arguments that the systems disclosed in the references could produce some type of image. Therefore, the Board found that the references were enabling for claim 1. The Board said the Applicant's argument that the disclosed systems were not capable of producing images suitable for medical diagnosis was irrelevant, since the claim specified neither the type of image nor a particular image quality.

Where claim 1 recited "an in vivo video camera system," claim 11 recited instead an "autonomous video endoscope." The Applicant argued that the term "endoscope" implied and necessitated something capable of providing diagnostic images. The Board disagreed, finding that "Appellant’s Specification provides no such definition of an endoscope and uses the term to describe various types of devices." The Board interpreted "an autonomous video endoscope” to be "an independent capsule that captures in-body images." Using the same analysis applied to claim 1, the Board then found the disclosed systems were enabling for claim 11.

My two cents: The Applicant did one thing right here: submitted evidence to show the references weren't enabled. "Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes ... inoperability of the prior art ..." (MPEP 716.01(c).)

That couldn't make up for the fatal mistake committed by the Applicant here: arguing outside of the claims. Or, as the Board often puts it, "Applicant's arguments are not commensurate with the scope of the claims." Another way of looking at this decision is that it turned on claim construction: the Applicant interpreted "in vivo video camera system" and "endoscopic system" as producing images suitable for medical diagnosis; the Board said that interpretation was too narrow.

The Applicant also made an interesting argument about the presumption that a reference is operable – interesting, but unsuccessful. The Applicant acknowledged that issued patents are entitled to the presumption of operability, but argued that unexamined patent applications are not. The Board held that since the filing of a patent application is considered constructive reduction to practice, the presumption still applies. The concurrence in this opinion went much further, holding that any type of reference – including a newspaper article – should be presumed operable.

BPAI issues informative opinion about broadest reasonable interpretation

The BPAI recently marked the 2009 opinion Ex parte Givens as "informative." As I noted in an earlier post (here), the BPAI marks certain opinions as informative in order to "explain best practices ... [and] address recurring problems."

In Ex parte Givens, the BPAI enforced the "reasonable" part of "broadest reasonable interpretation," the claim construction standard used in prosecution. The technology in Givens was digital signal processing, and the claim term at issue was "sub-band spectral subtractive routine." You can find a quick summary of Ex parte Givens here at The 271 Patent Blog. But here's the part you want to use as reasoning in your next argument over broadest reasonable interpretation: "Any interpretation that fails to give weight to “sub-band,” “spectral,” “subtractive,” and “routine” deprives the words in this claim term of their normal meaning."