Friday, November 3, 2017

Procedural bait and switch: withdrawn rejections as undesignated new grounds in Examiner's Answers

As discussed in MPEP § 1207.03(b), 37 C.F.R. § 41.40 sets forth the exclusive procedure for an appellant to request review of an examiner’s failure to designate a rejection made in an examiner's answer brief on appeal as a "new ground of rejection": the appellant must file a petition under 37 C.F.R. § 1.181, which petition tolls the time period for filing a reply brief under the current rules.  If the appellant does not petition, the Board will not dismiss the new ground of rejection on appeal, but will affirm it if the appellant's arguments do not otherwise overcome the rejection.  This is because, absent such a petition, the Board's review is limited to whether the appellant identifies reversible error in the examiner's position.  In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).  37 C.F.R. § 41.40 thus permits a procedural trap for the unwary that can be set by an examiner to ensnare unwitting appellants.  And sometimes, the trap can be set without even the examiner realizing it.

More nefarious versions of the trap go something like this: an examiner may withdraw a ground of rejection during prosecution, luring the applicant into a false sense of security, only to reintroduce the rejection during appeal, after the appellant has not the opportunity to introduce evidence in rebuttal of the reintroduced rejection, and without designating the reintroduced rejection as a "new ground" of rejection or withdrawing the application from appeal back into prosecution to give the applicant an opportunity to address the renewed rejection.  Once the applicant complains to the Board about the procedural unfairness of the reintroduced rejection, perhaps futilely raising the specter of deprivation of due process or violation of the Administrative Procedure Act, rather than filing the required petition, the trap is sprung.  The appellant's election to proceed to the Board leaves the Board powerless to address whatever unfairness may inhere in the situation, since 37 C.F.R. § 41.40 deprives the Board of any such power by making the matter a petitionable one.

The trap may even be set by the examiner unwittingly, as where the examiner copies and pastes from the text of the final Office action without reference to any effect of a subsequent advisory action.  This would seem to be a plausible explanation for what happened in Ex parte Schultz, No. 2015-005690 (P.T.A.B. Sep. 26, 2017).  In that case, in an advisory action, the examiner withdrew a written description rejection made under pre-AIA 35 U.S.C. § 112, first paragraph, following the applicant's arguments after final rejection, and the applicant appealed the remaining obviousness rejection.  The examiner then re-introduced the written description rejection in the examiner's answer brief—despite the answer brief including an opening statement identifying the obviousness ground as the only remaining ground for rejection.  The appellant complained to the Board about the impropriety of the re-introduced rejection in a reply brief, but the Board considered the rejection as maintained on appeal, despite the advisory action and the inconsistent opening statement of the answer brief.  Fortunately for the appellant, even without substantive argument addressing the written description rejection in the reply brief, the Board exercised its discretion to take up the issue and reversed, finding no prima facie case of lack of written description had been made.  The appellant in Schultz lucked out.  Other appellants may find the Board not to be so accommodating in their own appeals.

To complicate matters, it may not always be easy for appellants to spot a "new" ground of rejection in an examiner's answer brief.  Taken together, 37 C.F.R. §§ 41.30 and 41.39(a)(2) provide that, for the purposes of the examiner's answer brief, any rejection that relies upon any evidence (not including dictionaries) not relied upon in the Office action from which the appeal is taken, as modified by an advisory action, is a new ground of rejection and must be so-designated, except that, as discussed above, any failure in designation is of no consequence to the examiner, despite being consequential to the appellant.  But what about where no new evidence is entered?  A position or rationale that does not change the "basic thrust" of a rejection and does not deprive the appellant a fair opportunity to respond generally does not give rise to a "new ground."  In re Kronig, 539 F.2d 1300, 1303 (C.C.P.A. 1976).  New motivations to combine references can constitute a "new ground".  Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013).  Reliance on a portion of a reference not earlier cited by examiner, even where the reference had been cited, can constitute a new ground of rejection.  Ex parte Rogers, No. 2014-000330 (P.T.A.B. June 9, 2016).  Even so, this blog previously discussed a PTAB decision in which a new reference citation was held not to amount to a new ground of rejection when the reference was in the priority chain of previously used references.

In the recent case of Ex parte Roussos, No. 2016-005524 (P.T.A.B. Nov. 3, 2017), the examiner relied upon five references, newly introduced in the examiner's answer, to prove the meaning of a claim term ("ethylene-alpha olefin copolymer").  While acknowledging that "[a]n examiner cannot . . . newly cite to patent documents not relied upon previously without designating the Answer as including a new ground of rejection" and that the examiner "failed to comply with the Office’s rules by failing to" make the requisite designation, the Board took the appellant's failure to petition to be an acquiescence to their procedural propriety and considered the substance of the appellant's arguments, on which the Board reversed the examiner ("it is clear from Appellant’s Specification that a broader unconventional definition [of the disputed claim term as urged by the Examiner on the basis of the five newly cited patents] was not intended").  Again, the appellant was lucky, but also smart, to have included at least something of a substantive rebuttal of the new grounds.

Board records are replete with instances where the appellants were not so lucky.  In Ex parte Snyder, No. 2017-004918 (P.T.A.B. Sep. 19, 2017), where the appellants argued that shifting examiner interpretations of how the cited art read on the claims constituted a new ground of rejection, the Board affirmed.  "We will not consider Appellants’ argument that the Answer includes an undesignated new ground of rejection.  This issue is addressable by petition to the Director, not appeal to the Board."  See also Ex parte Peltz, No. 2017000970 (P.T.A.B. Sep. 5, 2017) ("Appellant[s] did not avail [themselves] of the [petition] provision . . . .  Instead, Appellant[s] filed a Reply Brief in timely fashion without presenting substantive arguments addressing the disputed new issue (rejection).").

Usually, the Board dispenses with appellant arguments that examiner's answer arguments constitute new grounds with no more than a terse footnote.  See, e.g.Ex parte Baltes, No. 2016005613 (P.T.A.B. Sep. 19, 2017) ("We deem Appellants, by their presentation of arguments in the Reply Brief in rebuttal to the Answer, to have waived any argument that the rejection must be designated a new ground."); Ex parte Holtzman, No. 2016-001992 (P.T.A.B. Sep. 15, 2017) ("By filing a Reply Brief rather than filing a petition under 37 C.F.R. § 1.181, Appellants waived any argument that the Answer included a new ground of rejection."); Ex parte Chidambaran, No. 2017005099 (P.T.A.B. Aug. 23, 2017).  (The Board ultimately did reverse in Baltes.)

Once, the Board "declined" an "invitation to announce and apply a new legal rule" in denying a request for rehearing in Ex parte Kreiling, No. 2014-005850 (P.T.A.B. May 21, 2017), the requested "new rule" being: "when an examiner’s answer contains a new ground of rejection, the Board should ignore the examiner's new arguments and/or new findings of fact as untimely for purposes of determining patentability and consider the inclusion of the new grounds of rejection as a tacit admission that the rejections in the final office action are fatally flawed."  To back up the request, the appellants cited to Ex parte Yudoovsky, No. 2011-006238 at 5 n.3 (B.P.A.I. Feb. 16, 2012), in which the Board "decline[d] to consider [a] new [rejection] rationale because it implicitly constitutes an unauthorized new ground of rejection" and "[t]he 'Response to Arguments' section of the Answer is not an appropriate place to raise a new rationale for unpatentability", and Ex parte Haalck, No. 2010-002620 at 3-4 (B.P.A.I. July 14, 2010), where the Board decided that "[t]he Examiner’s Answer does not contain a statement that a new ground of rejection was entered into the record", so "the rejections relying on the full disclosures of [three cited references] are not properly before this panel."  Aside from finding the requested "new rule" in contravention of  37 C.F.R. § 41.40(a), and the two cited decisions non-binding, the Board also found that the

proposed rule represents poor policymaking. Were we to adopt the proposed rule, an applicant would be able to avoid addressing the merits of an undesignated new ground of rejection—whether by presenting evidence, amending claims, or presenting argument—merely by asking the Board to recognize the examiner's undesignated new ground of rejection as such. The public interest is not served by allowing an applicant to avoid addressing the merits of a new ground of rejection—whether or not it is so designated—presented for the first time in the examiner’s answer. Nor is treating the inclusion of a new ground of rejection in an examiner’s answer as a tacit admission by the examiner that the rejections in the final office action are fatally flawed consistent with the law.  As our reviewing court stated, "[p]atent examiners are quasi-judicial officials" and therefore do not make admissions, but rather make findings of fact and conclusions based on their factual findings. Western Elec. Co. v. Piezo Tech., Inc., 860 F.2d 428, 431 (Fed. Cir. 1988).

Although no serious fault can be found in this reasoning, it can scarcely be disputed that the procedural setup for responding to new grounds of rejection on appeal places multiple burdens on the appellant: the burden of catching the newly introduced or re-introduced ground; the burden of recognizing the rejection as an undesignated "new ground"; and the burden of making the strategic decision of whether to proceed to the Board in spite of the new ground, or if not, the burden of filing the petition to have the rejection denominated as a new ground and to return the application to prosecution to address it.  By contrast to the waiver imposed on the appellant who does not petition, there is no consequence for the examiner who violates the rules by not properly designating a new ground of rejection.  On top of these applicant burdens, costly appeal forwarding fees can be wasted if new grounds on appeal are not timely caught.  Appellants should never assume that a withdrawn ground reintroduced in an examiner's answer brief will be taken by the Board for the copy-and-paste error that it appears to be.

Doubtless many applicantseven those represented by experienced practitioners, in some caseshave fallen prey to various forms of the "undesignated new grounds" trap and will continue to do so as long as the rules favor examiner trickiness or carelessness over balance in procedural burdens.

Thursday, November 3, 2016

PTAB reverses obviousness based on inherency and design choice – but then enters new design choice rejection

Takeaway: In an obviousness rejection, the Examiner relied on several alternative theories for the range of values claimed for a material property of foam: inherency, design choice, and overlapping ranges. The Applicant appealed, and the Board reversed the Examiner's rejection. The Applicant's specification was persuasive evidence that the claimed property wasn't inherent, the Examiner's design choice rationale amounted to an impermissible per se rule, and the overlapping ranges theory relied on data in the Applicant's own specification. However, after finding that the claimed effusivity values weren't described by the Applicant as critical, the Board went on to enter a new obviousness rejection. On the basis of these additional factual findings, the Board found that "the mere selection of a known plastic material having the claimed ranges for effusivity and thermal conductivity to make Reinke's plastic container, as modified by Ishikawa, would have been an obvious design choice for a person skilled in the art." (Ex parte Gehring, PTAB 2016.)


Ex parte Gehring
Appeal 2014004556; Appl. No. 12/485,073; Tech. Center 3700
Decided:  June 10, 2016

The application on appeal was directed to a case for dispensing cleaning wipes. The specification taught that some consumers prefer a case that feels warm to the touch. This property of a material, known as effusivity, is calculated as the square root of the product of the material's thermal conductivity, density, and specific heat capacity. The originally filed claims recited a foam material with a specific effusivity range.

A representative claim on appeal read:
     1. A reusable container for storing and dispensing wipes, the wipes container comprising:
     a. an upper container shell hingedly joined to a lower container shell
such that the upper and lower shells can be configured in an open position and a closed position,
     wherein an interior storage space is defined by the upper and lower shells when the shells are in the closed position,
     the upper and lower shells being at least partially separable from one another to enable a user to replenish a depleted wipes supply in the container;
      b. an opening in the upper shell that enables a user to access at least one wipe stored in the interior storage space, and
     a lid connected to the upper shell and disposed over the opening;
     wherein the upper and lower shells are formed of a molded synthetic polymeric foam material
     wherein the synthetic polymeric foam has an Effusivity value at 23° C and 32° C of from 200-300, according to the Sensory Warm Test,  and
     the lid is formed of a different polymeric material than the shells.
(Emphasis added.)
The Examiner initially rejected the claim using a combination of Reinke and Guy. Guy taught a wipes container having a foam insulator, and the Examiner asserted "it appears that Guy's insulator would inherently have the claimed effusivity value." The Applicant amended to specify the foam's location (outer surface of the shell). The Examiner's next rejection used a new secondary reference Abramson, plus a third reference Lee. Abramson taught a wipes container with outer surface made of leather, and Lee taught foamed EVA as replacement for leather. According to the Examiner, it was obvious to substitute foam for leather, and "it would appear that the foamed EVA of Lee inherently has the claimed effusivity value." The Applicant amended again, adding a lid formed of a different polymeric material.

The next rejection added a third reference Ishikawa for the lid, and switched to a different secondary reference Miller ("Vascular Access Kits and Methods"). Miller disclosed a two part case made of EVA foam, and taught that "EVA may be generally described as a polymeric material with some of the characteristics of elastomeric materials and some characteristics of thermal plastic materials." The Examiner asserted the obviousness of making Reinke's case out of Miller's EVA foam "for the predictable result of obtaining good thermal characteristics." The Examiner further asserted that "it appears that the EVA of Miller would have the claimed effusivity value," and indicated that the burden of proof had shifted to the Applicant. (“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).)

In response, the Applicant amended the foam characteristics to narrow the claimed effusivity value, from "less than about 550" to "from 100 to 400." In addition, the Applicant traversed the Examiner's reliance on Miller by noting that while the Applicant's specification taught that EVA foams have differing effusivity properties, Miller did not discuss any reason to use materials with particular thermal conductivity or effusivity properties. According to the Applicant, the fact that containers formed of EVA foam were known did not amount to a suggestion to use a material with the particular property claimed.

The Examiner maintained the rejection. In the Response to Arguments, the Examiner asserted that it was "within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice" (citing to In re Leshin, 277 F.2d 197 (CCPA 1960)). The Examiner also explained that even if Miller didn't discuss the desirability of particular effusivity values, recognition by the Applicant of a different advantage that flowed naturally from the prior art doesn't confer patentability (citing to Ex parte Obiaya, 227 USPQ 58 (BPAI 1985)).

The Applicant once again narrowed the effusivity range (now "from 200-300"), and this time argued there was no suggestion or teaching in the references to both replace Reinke's material with Miller's EVA form and to "select and/or process such material such that it would have an Effusivity Value [as claimed]." The Examiner maintained the rejection, and addressed the narrowed effusivity range by reiterating his position that Miller's EVA foam was presumed to inherently have the claimed effusivity value.

The Applicant appealed. In the Appeal Brief, the Applicant first attacked the Examiner's rationale for combining as follows:
     Although Miller et al. mentions at [0055] that its molded case may be formed of compression molded EVA foam, it also states that it may be formed of any of a number of other materials "including, but not limited to, nylon, cordura type materials, various types of polymeric and plastic materials,'' and "relatively soft materials such as canvas, polyesters and similar materials,'' "materials such as lightweight aluminum alloys and similar hard materials," and "a wide variety of polymeric materials, elastomeric rnaterials and/or thermoplastic materials" including urethane and PVC. Contrary to the Office's assertion, Miller et al. contains no mention of "good thermal characteristics." Regardless, this phrase is undefined and ambiguous, and therefore, devoid of any suggestive content. Miller et al. provides no particular reason why compression molded EVA would be desired over any of these other materials in any particular circumstances.
(Internal citations omitted.)
The Applicant then attacked the Examiner's reliance on inherency:
     Here, the Office has not shown that the EVA foam mentioned by Miller et al. would necessarily have only a particular range of Effusivity (falling within the range of Applicant's claims), or that this would be recognized by a person of ordinary skill in the art. Further, data in Table l of Applicant's specification, and the associated explanatory text, show that compression molded EVA foam as taught by Miller et al. may have an Effusivity Value outside of the recited range. ... This [data] shows that the Effusivity of compression molded EVA foam is not necessarily 200-300, contrary to the Office's assertion of inherency.(Emphasis added, internal citations omitted.)
The Examiner maintained his position in the Answer. After reiterating the previously stated rationales (design choice; and Miller's brief mention that EVA has thermal characteristics), the Examiner then brought up a new benefit of an EVA foam liner, as taught by Miller: "protect the contents carried in the resulting kit from being damaged or crushed."

With regard to the Applicant's argument that the Office Action had failed to show inherency, the Examiner responded as follows:
It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. [Citing to In re Wertheim, In re Woodruff, and In re Geisler.] Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.
The Appeal Brief had referred to the specification as evidence that EVA foam doesn't necessarily have the properties claimed. In the Answer, the Examiner noted that "Miller et al. may also have an Effusively Value inside the recited range" and explained that prima facie obviousness exists when claimed ranges "overlap or lie inside ranges disclosed by the prior art." Finally, the Examiner stated again that the burden of proof on inherency had shifted to the Applicant.

The Board reversed the Examiner's rejection, finding several errors. First, the data in the Applicant's specification was "persuasive evidence" that Miller's EVA foam may have effusivity values outside the claimed range, which meant the Examiner's use of inherency was improper. Next, the Examiner had relied on the same Applicant data as evidence that some EVA foams have an effusivity value overlapping the claimed range. This was also error: "because sample 12C is part of Appellant's Specification, it does not constitute prior art against the claimed effusivity range subject matter. Finally, the Examiner's use of design choice was also in error:
... the Examiner's mere reliance on In re Leshin amounts to a per se rule that  eliminates the need for fact-specific analysis of claims and prior art and is legally incorrect. Our precedents do not establish any rules of obviousness, just as those precedents themselves expressly declined to create such rules. In re Ochiai, 71F.3d 1565, 1572 (Fed. Cir. 1995).  
The Board did, however, make a new ground of rejection that found the claim obvious over the primary reference Reinke in combination with the tertiary reference Ishakawa. (The Board's rejection did not rely on Miller.) Reinke disclosed upper and lower shells and a lid, and Ishakawa taught a lid made of a different material. And although neither reference taught the claimed effusivity range, the Board found that "the selection of a suitable material is a matter of obvious design choice."

The Board supported the rejection with additional findings, and provided additional explanation. First, the Board noted that the relevant issue for design choice is whether the alleged differences between the claimed invention and the prior art "result in a difference in function or give unexpected results" (citing In re Rice, 341 F.2d 309, 314 (CCPA 1965)). Next, the Board noted that the materials described in Applicant's Table I were commercially available, and found that the material properties of effusivity and thermal conductivity were well known. In making this "well known" finding, the Board relied the specification's characterization of effusivity as a "commonly known" property, as well as case law that "[a]n artisan must be presumed to know something about the art apart from what the references disclose." In re Jacoby, 309 F .2d 513, 516 (CCPA 1962).

The Board then found there was "no evidence of record to express the criticality of the claimed ranges." The specification merely identified any value less than 550 – whether inside the claimed range or outside –  as "suitable" for holding wipes. The effusivity and temperature ranges weren't critical, and did not "result in a difference in function or give unexpected results." "Accordingly, the mere selection of a known plastic material having the claimed ranges for effusivity and thermal conductivity to make Reinke's plastic container, as modified by Ishikawa, would have been an obvious design choice for a person skilled in the art."

My two cents:  It was clear from the very first Office Action that the Examiner wasn't relying on a specific teaching for the claimed effusivity range, but was instead relying on other rationales  – first inherency, then design choice, then overlapping ranges. Yet the Applicant narrowed the range not once, but twice, without even addressing these rationales.

Huh? If the Examiner took the position that "less than 500" was inherent in the reference, what reason did the Applicant have to think that a narrower range would not be viewed as inherent?

Seems to me the Applicant could have ended prosecution sooner and just gone to appeal on the claimed range. I think the Examiner's rejection had plenty of holes in it, so I'd probably appeal. Wouldn't have changed the end result – the Board fixes the Examiner's mistake by issuing a new rejection –  but would have saved an RCE fee and attorney fees for two responses.

It's also true that the claims were vulnerable to a properly articulated design choice rejection – which is exactly what the Board did. Was it wise to appeal such a vulnerable claim? Not a clear call. Sometimes the Board does the extra work to enter a new rejection, but sometimes the Board just reverses the Examiner. I think I would have appealed – but probably without narrowing the originally claimed range.

Wednesday, October 12, 2016

PTAB reverses indefiniteness for a "system" claim having a single (regulator) element

Takeaway: The independent claim on appeal was a "system" with a single "regulator" element in the body of the claim. The regulator was defined in the body of the claim with several structural elements and one functional limitation. The Examiner found it unclear as to whether the functional language was limiting or not, and so rejected the claim as indefinite. The Board reversed, finding that "['system'] simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' " (Ex parte Bell, PTAB 2016.)


Ex parte Bell
Appeal 2014-009335; Appl. No. 13/050,752; Tech. Center 3700
Decided:  September 28, 2016

The application on appeal was directed to a hydraulic pressure regulator. A representative claim on appeal read:
     1. A system comprising:
     a spring-loaded hydraulic pressure regulator having a maximum deadband of less than 200 pounds per square inch when coupled to a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch,
     the spring-loaded hydraulic pressure regulator comprising:
     a housing having first and second inner chambers;
     a spring disposed within the second chamber;
     a sensing piston disposed within the housing and responsive to pressure within the first inner chamber and to a biasing force generated by the spring; and
      at least one supply seal ring disposed within the first chamber.
The Examiner rejected claim 1 as indefinite. The Examiner explained that the only structural limitations of the claim were parts of the regulator. This indicated that the claim was drawn to a regulator, even though the preamble read "a system comprising." It was therefore unclear whether the functional language "having a maximum deadband ..." was part of the preamble (and thus non-limiting) or part of the body (and thus limiting).

On appeal, the Applicant argued that the deadband functional language was clearly part of the body, since it followed the preamble. The Applicant further noted the dependent claims included further elements in the system of the independent claim. Finally, the claim was definite because "it sets out and circumscribes a particular subject matter (i.e., a specific type of spring-loaded hydraulic pressure regulator) with a reasonable degree of clarity."

The Examiner responded in the Answer as follows:
[T]he claim includes two transitional phrases, and the argued limitation also precedes the second transitional phrase, under which logic the argued limitation should be considered part of the preamble, because it precedes a transitional phrase.
The Examiner summarized up his stance on indefiniteness as: "reasonable artisans could disagree as to the limiting effect of the argued limitation."

The Board reversed the indefiniteness rejection as not being supported by a "rational underpinning." Referring to a dictionary definition of "system," the Board explained that the word "simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as a combination of parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' "

My two cents: I suppose the Applicant could have avoided/overcome the rejection by using "regulator" in the preamble. But maybe using "system" instead avoided arguments in litigation about the meaning of "regulator" ?

Some of the Applicant's comments suggested that the use of "system" rather than "regulator" in the preamble was related to the dependent claims. "System" allowed dependent claims with additional elements (e.g., blowout preventer, fluid source) that were external to the regulator. 

Would the Examiner have given the same indefiniteness rejection if the preamble recited device or apparatus?

Tuesday, September 20, 2016

PTAB reverses 103 when secondary reference feature would not provide benefit if incorporated into primary reference

Takeaway: The Examiner rejected claims to a citrus reamer as obvious over a combination of three references, with two references disclosing the claimed features and a third providing a reason to combine. The Applicant successfully argued the the Examiner's reason to combine wasn't rational, by providing a technical explanation of why the feature from the second reference wouldn't work in the primary reference. The Board agreed and reversed. (Ex parte Hensel, PTAB 2016.)

Ex parte Hensel
Appeal 2014-006258; Appl. No. 13/306,946; Tech. Center 3700
Decided:  June 9, 2016

The application was directed to an electric citrus reamer. The only independent claim on appeal read:
     15. A citrus press device with a motor for rotating a citrus reamer comprising:
     a fruit dome that cooperates with the reamer;
     the reamer having primary ribs,
     each rib having an apex, the apex comprising an elevated projection;
     the elevated projections spaced from and surrounding a central pin that acts as a spacer between the reamer and the dome.
The Examiner rejected the claim as obvious using a combination of three reference. The Examiner found that the primary reference De Zarate (a utility patent) disclosed all limitations except for the projections. For that feature, the Examiner turned to the secondary reference Reinicke (a design patent). The Examiner proposed using Reinecke’s ribs in De Zarate’s reamer 25 so that the De Zarate’s protuberance 26 (mapped to the claimed "central pin") was "surrounded by ribs and was at a higher elevation than the ribs.” For a reason to combine, the Examiner turned to a teaching in the third reference Jakovicz (also a utility patent)   "... portions formed to grip the fruit section [would] prevent undue slipping during use of the device."

The Applicant made two arguments on appeal. One, the combination of the primary and secondary references did not suggest the claimed cooperation between ribs and central pin. Two,  the third reference did not provide a motivation to combine the first two references.

More specifically, the Applicant argued that the primary reference De Zarate taught a central pin but no ribs, while the secondary reference Reinicke taught ribs but no pin. In combining the two, the Examiner did not account for the claim language which required the projection at the apex of each rib to be spaced apart from the central pin, and also required these projections to surround the central pin. According to the Applicant, the Examiner had improperly isolated the pin and rib features and did not consider the claim as a whole.
Reinicke's ribs
De Zanate's reamer
The Applicant also traversed the Examiner's rationale for combining, by arguing that the advantage described in Jakovicz – prevention of undue slipping during use of reamer – didn't make sense when applied to De Zanate's reamer. De Zarate’s device extracted juice from a fruit section by pressing the fruit section between dome (33) and rotating reamer (25), whereas Jakovicz disclosed a fruit press juicer, which did not suggest inclusion of a rotating reamer. Based on this difference in operation, Jakovicz’s teaching of “rib-like parts being formed to grip the cut edge of the fruit section and prevent undue slipping thereof” was not a rational basis for modifying De Zarate’s reamer 25 to include the claimed ribs, since the principle of reamer 25 requires rotation relative to the fruit. The Applicant concluded this portion of the argument by framing the issue as "no reasonable expectation of success," and noting that "Reinecke is a design patent that provides little or no teaching in regards to any operation of the reamer" (emphasis added).

The Board reversed, finding that the Examiner's rationale for modifying De Zarate’s reamer to include ribs was not rational. The Board agreed that Reinecke extracted juice by relative rotation between the ribbed mound and the fruit section. This involved some slippage between the ribbed mound and the fruit section, so preventing slippage wasn't a reason to incorporate this feature into De Zarate’s. The Board then dug deeper into the teaching in  Jakovicz cited by the Examiner cited as a reason for using ribs – and found that this teaching applied to Jakovicz’s annular ribs, not radial ribs (as claimed).
It is not clear how the structure of Jakovicz’s annular ribs 24 would lead a person of ordinary skill in the art to modify De Zarate’s rotating reamer 25 to include Reinecke’s radial ribs to prevent undue slipping between reamer 25 and fruit during use. Jakovicz’s annular ribs 24 grip the outer edges of the fruit section as plunger 27 presses the fruit section into member 20, thereby providing a complete expressing of juice from the fruit section. That is a markedly different juicing operation than De Zarate’s rotating of reamer 25 within the fruit section, as the fruit section is pressed on to reamer 25 by cap 33. Due to the differences in structure and function between De Zarate and Jakovicz we determine the Examiner errs in determining it would have been obvious to modify De Zarate’s rotating reamer 25 to include Reinecke’s ribs, in light of Jakovicz, to prevent undue slipping between reamer and fruit during use of De Zarate’s device.
(Emphasis added, internal citations omitted.)

My two cents: This case caught my eye because the Examiner used a third reference only for a rationale for combining. Theoretically possible, I suppose, to find one reference teaching a feature (here, Reinecke’s ribs) but not an advantage, and another reference (Jakovicz) that taught an advantage for the feature. And of course Reinicke couldn't discuss any advantages or benefits, since it was a design patent, so the Examiner had to turn to a third reference.

But wait ... if the reference teaching the advantage of the claimed feature (Jakovicz) also taught the claimed feature, why use the intermediate reference (Reinicke) at all?

Maybe because the reference-with-advantage doesn't teach all the claimed structure. That's what got the Examiner into trouble here. Jakovicz’s statement about the advantage of ribs applied to annular ribs, not radial ribs as claimed (and as allegedly disclosed in Renicke). I think the Examiner's rationale was irrational for this reason alone.

The Applicant didn't dig that deeply into Jakovicz (and shouldn't have to), and instead focused more on why the combination of ribs and reamer wouldn't work. I might have framed this more narrowly as "change to principle of operation" rather than more general "motivation isn't rational." But the important thing is the technical explanation about why the combination didn't make sense, and kudos to the Applicant for focusing on that. 

Wednesday, August 31, 2016

PTAB reverses § 103 when secondary reference teaches image processing during capture where claim requires post-capture processing

Takeaway: The Examiner rejected claims to user-initiated post-capture zoom processing of facial images as obvious over zoom processing taught by a primary reference in view of user-initiated zoom during image capture. The Applicant appealed, arguing that the secondary reference relied on by the Examiner taught zoom before capture while the claims required zooming in a digital image that was already in existence. The Board agreed with the Applicant and reversed: "[the secondary reference] zooming by half-pressing a shutter button occurs before capture of an image with its 'image taking device,' whereas the claims are directed to post-capture processing of images with a computer system. (Ex parte Bhatt, PTAB 2016.)

Ex parte Bhatt
Appeal 2014-009532, Appl. No. 13/182,409, Tech. Center 2600
Decided:  June 13, 2016

The application on appeal was directed to image processing, and more specifically, to presenting zoomed views of multiple faces. Each particular zoom level maximizes the fraction of the image occupied by the face. As explained in the application:
... it would be desirable to present zoomed views of multiple human faces depicted in the images 350-A, 350-B, 350-C and 350-D to allow a user associated with the system 300 to determine one or more faces from among the multiple faces are in focus or otherwise desirable and the image(s) from among the images 350-A, 350-B, 350-C and 350-D corresponding to the determined faces. To this effect, the GUI 302 can also include a control 320 through which the user can request that the system 300 concurrently zooms to portions of the multiple images 350-A, 350-B, 350-C and 350-D depicting faces of several persons.
 ... Upon receiving user input via the arrows of the control 320, the system 300 can switch, based on a display index/order associated with an anchor image, from concurrently presenting zoomed views associated with the detected instances of a person's face to concurrently presenting zoomed views associated with the detected instances of another person's face.
A representative claim on appeal read:
     1. A method performed by one or more processes executing on a computer system, the method comprising:
     presenting, on a user interface viewable on a display coupled to the computer system, one or more digital images;
      receiving user input requesting to zoom to faces depicted in the one or more digital images, where the faces include either human faces or animal faces; and
     in response to receiving the user input and for each of the one or more digital images, automatically presenting on the user interface a zoomed view of the digital image
     that displays an enlarged representation of a portion of the digital image showing an instance of a face depicted in the displayed portion of the digital image,
     the zoomed view of the digital image covering an [entire] area of the user interface configured to present the one or more digital images,
      the zoomed view being presented at a zoom-level that is selected to maximize a fraction of the displayed portion of the digital image occupied by the face.
The Examiner rejected the independent claims as obvious. According to the Examiner, the primary reference Shiritani taught most of the zoom limitations. In discussing the feature "zoom level selected to maximize a fraction ... occupied by the face," the Examiner relied on Shiritani's teaching "... in the case of an upright full-length figure image or the like, because the face area is small, the user has to observe the face area by enlarging the full-length figure image to be full-screen."

The Examiner acknowledged that the primary reference did not teach zooming on multiple faces in response to user input, or doing so automatically. The Examiner turned to Nose for the zoom-in-response-to-user-input feature, the rationale for combining being "in order to allow users more flexibility in image zooming." Finally, for the feature of "automatically presenting ... a zoomed view," the Examiner relied on In re Venner, explaining that "it has been held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art." (MPEP 2144.04.III.)

The Applicant appealed and made multiple arguments against obviousness. With respect to the "maximize a fraction ... occupied by the face" limitation allegedly taught by the "full-screen" discussion in Shiratani, the Applicant argued that the reference did not teach making the face full-screen, but rather making the entire image full-screen. The Applicant then focused on the claim limitation "zoomed view covering an area of the UI configured to present the ... digital images," which the Examiner read on FIG. 9B of Shiratani.
The Applicant suggested that since Shiratani's UI included multiple images in the same window, the zoomed view did not cover the area presenting the digital image.

Finally, the Applicant traversed the Examiner's reliance on Nose for image zooming in response to user input. The Applicant pointed out that Nose described a two-step shutter button in a digital camera, where a half-press of the shutter button zoomed in on a face, and a full-press recorded the current image. Thus, zoom feature in Nose was a zoom before an image is captured, where the claim referred to zooming in a digital image already in existence.

In the Answer, the Examiner responded to the Applicant arguments with additional explanation. First, the Examiner reiterated that "Paragraphs 0017-0020 & Figures 9A/9B [of primary reference Shiratani] disclose maximizing or zooming an image which is already occupying an entire area of the user interface." The Examiner then explicitly explained how the combination was used to reject the claim: "Shiratani ... discloses enlarging the image after capture [while] Nose's contribution surrounds the ability to use the half-press [by the user] to zoom" (emphasis added.)

In a Reply Brief, the Applicant noted an inconsistency in the Examiner's position.
... [t]he Examiner has also made competing assertions with respect to Shiratani ... the Examiner has explicitly acknowledged that "[p]aragraphs 0017-0020  & Figures 9A/9B disclose an album with different faces being disclosed in two or more different images." ... In doing so, the Examiner has contradicted his previous assertion [in the Answer] that Shiratani's "[p]aragraphs 0017-000 & Figures 9A/9B discloses maximizes or zooming an image which is already occupying an entire area of the user interface.
(Emphasis in original.)
The Board agreed with the Applicant that the Examiner's reliance on Nose was in error.
Nose's zooming by half-pressing a shutter button occurs before capture of an image with its "image taking device," whereas the claims are directed to post-capture processing of images with a computer system.
Because the Examiner also admitted that Shiratani failed to teach this feature, the Board reversed the obviousness rejection.

My two cents: The Board got this one wrong: the Examiner's Answer clearly stated that it was the combination of Shiratani and Nose that taught the claimed feature. Nose provided a generic zoom-in-response-to-user-action, while Shiratani taught the claimed zoom details.

The Examiner made it easy for the Board to reach this conclusion, by presenting disjointed findings instead of a single coherent rejection. That is, the body of the rejection in the Answer explicitly stated that Nose taught the entire zoom limitation – and apparently that's the part the Board read. Then, the Response to Arguments section of the Answer contradicted the earlier statement, and explained instead that Nose taught zoom-in-response-to-user and Shiritani taught all other zoom details.

This habit – never revising a position, instead always piling on new stuff – is common practice by both Examiners and Applicants. I certainly appreciate it when the Examiner specifically responds to my arguments, but prefer that the Examiner do so by updating the rejection to take my arguments into account. If the Examiner instead reiterates the errored rejection then provides new information in a "Response to Arguments" section  – as he did here  – then the Applicant has two choices. One, file a response that goes point-by-point to address each contested Examiner statement as a separate argument. Alternatively, the Applicant could synthesize the total of all the Examiner's findings, resolving any internal contradictions, and make a coherent argument against this synthesized rejection.

Most Applicants take the first approach, even though it results in a disjointed argument – and IMHO a disjointed argument is by definition weaker than one that is coherently presented. I imagine there are a variety of reasons why Applicants don't incorporate multiple (and sometimes contradictory) Examiner findings into a single "synthesized" rejection. One, the Examiner contradicting himself is a good thing, right – highlight the contradiction and characterize it as error. Two, the Applicant's job is only to traverse the specific rejection on the record. I have a different viewpoint. As far as I know, an internal inconsistency or contradiction in a rejection isn't fatal error, so I don't see this as a strong argument. Moreover, assuming I'm confident about the "synthesized" rejection,* I am addressing the rejection on the record –I'm just doing a better job of explaining it than the Examiner did.

*I limit this "synthesized rejection" approach to instances where I am confident that I can resolve the internal contradictions/inconsistencies in the rejection. Ex parte Bhatt seems like a good candidate.

Tuesday, August 30, 2016

PTAB Finds Claims Directed to Point-of-Sale System for Printing Coupons for a Third Party to be Patent-Eligible Subject Matter

Takeaway: The PTAB reversed an Examiner's rejection under 35 U.S.C. § 101 of claims to a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services. In part, the PTAB focused on the specific limitations of the claims to find that the claims do not preempt the abstract idea as defined by the Examiner. (Ex parte Barous, Appeal No. 2016-003320, PTAB, August 1, 2016).

Ex parte Barous
Appeal 2016-003320; Application No. 10/397,778; Technology Center 3600
Decided: August 1, 2016
In Ex parte Barous, the PTAB reversed an Examiner’s rejection of claims that recited utilizing a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services  under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
The PTAB identified claims 14 and 43 as being representative of the claimed subject matter:
14. A system for distributing third-party coupons by a retailer on the Internet, the Internet including a computer with a monitor and a printer, the third-party coupons being associated with goods or services of a third-party retailer, which goods or services are unrelated to the goods or services of the retailer and wherein the third-party retailer purchases advertising from the retailer, the system comprising:

a server configured to:

cause a graphical user interface (GUI) to be displayed on the monitor;

display an advertisement associated with a third-party coupon of the third-party retailer;

display a threshold value in the GUI;

calculate a value of a transaction based on a purchase of goods or services made from the retailer by a consumer;

display the value of the transaction in the GUI; and

enable the computer to print the third-party coupon when the value of the transaction exceeds the threshold value;

wherein the third-party coupon is redeemable for the goods or services of the third-party
retailer; and

wherein goods or services of the third-party retailer are unrelated to the goods or services sold by the retailer and therefore are unpurchaseable from the retailer.

43. A checkout system for a retail outlet for distributing third- party discount coupons associated with one or more third-party retailers comprising:

a printer; and

a point-of-sale register having a processor configured to:

add prices of items purchased by a shopper to reach a total sale ST;

compare the total sale ST of the shopper to a threshold sale value T; and

print one or more third-party coupons for use with a respective third-party retailer to purchase goods or services unrelated to the goods or services offered by the retail outlet if the total sale ST of the shopper exceeds the threshold sale value T.
At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of distributing coupons by a retailer for the purpose of enhancing revenue, and the Appellant did not dispute the Examiner's characterization.  However, during its analysis, the PTAB disagreed with the Examiner and found that the Examiner's characterization of the abstract idea as being too broad.  Instead, the PTAB found that the claims were directed to "much more limited systems and methods distributing only coupons redeemable at a third-party retailer for goods that were unpurchaseable at the issuing retailer and/or are unrelated to the goods or services offered by the issuing retailer, and then only upon the occurrence of certain conditions."
Regarding step two, the Examiner stated "[t]he steps or acts performed (utilizing a processor) in independent method claims 27 and 50 are not enough to qualify as 'significantly more' than the abstract idea itself, since the claims are a mere instruction to apply the abstract idea. Furthermore, there is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment, and the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional."  The Appellant argued that, in the prior art, retailers commonly distributed coupons to enhance sales of goods or services provided by the retailer.  The Appellant contrasted the prior art with the claimed invention by stating the claimed subject matter:
entails systems and methods that enable a retailer to distribute coupons in a different way. For example, the retailer's point- of-sale (POS) register distributes a so-called third-party coupon that is redeemable for a discount on the goods or services sold by some other retailer. These goods or services of the third- party retailer are unrelated to the goods or services offered by the retailer distributing the coupon. The retailer's POS register is configured to print this coupon for a shopper when the register determines that the value of the goods or services purchased by the shopper from the retailer exceeds a threshold value. This enhances the retailer's revenue because the shopper increases his or her purchase from the retailer in order to receive discount coupons for a third-party retailer.
The Appellant further argued that the claims meet the specific threshold set forth in step two because the claims "add specific limitations to what is known in the art" because:
[i]t is unconventional for a retailer's POS register to print a coupon for the purchase of a third-party retailer's unrelated goods or services. It is especially unconventional for the retailer's POS register to condition doing this on a shopper's total purchase from the retailer exceeding a certain threshold sale value. None of this is routine or well understood. In fact, twelve years of prosecution reveals that nothing in the prior art teaches these additional features or even renders them obvious. Nothing of record demonstrates that this sort of activity has ever been previously engaged in by those in the field.
In its analysis, the PTAB relied upon the specific limitations of the claims to find that the claims do not preempt the "abstract idea" as defined by the Examiner.  To support this conclusion, the PTAB related upon the 2014 Interim Guidance on Patent Subject Matter Eligibility to identify that “specific limitations other than what is well understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application” qualify under the "significantly more" exception of step two.  The PTAB went on to state that these guidelines require that if an Examiner decides the limitations do not add "significantly more" to the claim, the Examiner must identify the limitations and explanations provided as to why this is the case.  The PTAB found that the Examiner failed to provide persuasive arguments or evidence as to why the limitations were not "significantly more" (i.e., the argument “are generic computer functions (e.g. adding, comparing and printing) that are well-understood, routine and conventional activities previously known to the industry” did not suffice.)
Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter finding that the claims did add "significantly more" to the abstract idea.
My two cents:  Appellants may look to contrast specific limitations within the claim with the prior art to illustrate that those claims limitations add "significantly more" to the alleged abstract idea.  Additionally, these types of limitations may be utilized to argue that the claimed subject matter is an "unconventional" arrangement of elements.