Wednesday, February 3, 2010

Examiner cannot rely on arbitrary delineation of structure (Ex parte Denison)

Takeaway: The Examiner isn't allowed to just pick random pieces of a drawing and read it on parts of your claim. The Board put it like this: "[T]hat “structure” identified by the Examiner results only from an arbitrary delineation of Berry’s structure, made in order to meet the claim limitations. "

Ex parte Denison
(Appeal 2009-004110; Appl. No. 10/158,362; Tech. Center 3700)
Decided: January 19, 2010

This application is about a medical device: a stent to hold open a blood vessel. As claimed, the stent includes cylindrical elements with a specific shape. Here's a 3D view of the stent reference used by the Examiner, to give you some perspective.

One of the claim elements at issue was: "each cylindrical element has a plurality of alternating valley portions and peak portions, the valley portions including alternating double-curved portions and Y-shaped portions..." The Examiner used overlapping portions of the reference stent to read first on the double-curved and then on the Y.
The claims require "double-curved portions" and "Y-shaped portions", but the claims are silent as to whether or not the two portions partially overlap in a sense (in other words, whether part of the double-curved portion forms part of a Y-shaped portion).
You can see this overlap here, where the claimed "double curve" looks like the letter "W".

The Applicant argued that the Examiner's interpretation is unreasonable because it "requires the viewer to first visualize one shape and then completely disregard portions of that shape in order to visualize a second, distinctive shape.” The Applicant contended that the claims instead require “[c]omplete and distinct structural shapes depicting both the double-curved shape and Y-shape.”

The Board found that a POSITA wouldn't recognize the portions, as claimed, in the reference:
However, that “structure” identified by the Examiner results only from an arbitrary delineation of Berry’s structure, made in order to meet the claim limitations. Even giving the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood the claim terms requiring “double-curved portions” and “Y-shaped portions” to include the arbitrary portions of Berry defined only by the Examiner.
(Decision, p. 5.)
Seems like "arbitrary delineation of structure" is a great argument to use in mechanical applications. But in the art units I deal with, almost everything is described in functional, rather than structural terms. So I don't know how useful this argument will be for such cases.

Related Posts: Here are two other posts on arbitrary structure:

7 comments:

  1. I'd resubmit a hypothetical case to the board for reconsideration and remind them that POSITA has no business up in my 102 analysis.

    Then I would hypothetically remind them in that hypothetical case that I am not making the delineations to meet the claim limitations. I'm hypothetically simply looking at the reference and reading what it teaches.

    Oh, and hypothetical "portions" leaves claims wide open to "arbitrary" designations since they are "arbitrary" designations in the hypothetical application at hand.

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  2. >POSITA has no business up in my 102 analysis.

    I'm not sure what you mean by this. I agree that what-a-posita-would-find-obvious is not relevant to anticipation. But claims are interpreted from the viewpoint of a POSITA. As are teachings of a reference.

    Anonymous, do you disagree with either of these statements?

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  3. >Oh, and hypothetical "portions" leaves claims
    >wide open to "arbitrary" designations since
    >they are "arbitrary" designations in the
    >hypothetical application at hand.

    Designations by the Applicant aren't always arbitrary.

    If the Applicant's specification actually referred to valleys and peaks, and double-curved and y-shaped portions, then the designation of a particular portion as a "valley" is *not* arbitrary.

    Simiarly, if the reference used the word valley (or something synonymous) to refer to a portion of a structure, then it wouldn't be arbitrary for the Examiner to call that portion a valley.

    That's not what happened in Denison, at least not from reading the Board's decision. (I didn't read the Applicant's spec.)

    By stating that the Examiner in Dennison was using "arbitrary portions" that were "defined only by the Examiner", the BPAI implicitly found that the reference did not refer to these portions in the way that the Applicant did.

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  4. "But claims are interpreted from the viewpoint of a POSITA. As are teachings of a reference."

    Idk about that, I wouldn't say person of ordinary skill in the art. Perhaps person of skill in the art. The board used this "ordinary" person as the standard. He has no business up in my 102. I dam well skippy want an expert, or supreme master artisan, up in my 102 so that he may tell me truly what the reference states.

    Before KSR this ordinary guy would get fired from any company I ran. Even after KSR he'd be skating on thin ice. His technical knowledge and ability to understand references is rather POOR.

    "Designations by the Applicant aren't always arbitrary."

    No, but they were in a hypothetical instant application. And they are in hypothetical instant applications that I see quite often.

    "If the Applicant's specification actually referred to valleys and peaks, and double-curved and y-shaped portions, then the designation of a particular portion as a "valley" is *not* arbitrary. "

    Go ahead and try to explain why, I'll stop laughing for a minute while you attempt to explain.

    "By stating that the Examiner in Dennison was using "arbitrary portions" that were "defined only by the Examiner", the BPAI implicitly found that the reference did not refer to these portions in the way that the Applicant did."

    My point is: So what? References aren't read for how they refer to their content, they're read for their content. Either the content is there or it isn't, and I'm all too aware of these cases where applicants argue "the reference doesn't say it how I say it". Who gives two shts? Not the Fed Circ. and certainly not the USSC. Neither do I. Either the content is there or it isn't. The determination has nothing to do with the manner in which the reference presents its content.

    Now, don't get me wrong, in a hypothetical instant application perhaps this was the right call. But I'm betting that it wasn't, it's just another case amongst those like this, as you stated generally. And "portions" opens things up enormously. I have more than one case pending right now with this same issue and I'm more than willing to take any of them to a competent board in my art. These people in stints/computers/business methods are becoming infamous for their incompetence.

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  5. >KGH said: "Designations by the Applicant aren't
    >always arbitrary."
    >Anoymous said:
    >No, but they were in a hypothetical instant
    >application. And they are in hypothetical
    >instant applications that I see quite often.

    Hmmm. OK, so in your hypo, you stipulate that the Applicant *was* using arbitrary designations.

    >And [designations by the Applicant are
    >arbitrary] in hypothetical instant
    >applications that I see quite often.

    I don't find it helpful to discuss applications that you see but that I don't see, and we aren't actually talking about.

    I think your point is this: in applications where the Applicant *is* using arbitrary designations (making it up after the fact?), it's fair for the Examiner to *also* use arbitrary designations.

    If that's your point, then I agree.

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  6. >Either the content is there or it isn't. The
    >determination has nothing to do with the
    >manner in which the reference presents its
    >content.

    Agreed that it's basic patent law that a reference can disclose a feature even if the reference uses different words than the claim.

    I think we also agree that the relevant issue is how a person skilled in the art interprets the reference.

    It seems you disagree with me, and with the BPAI, about the Dennison case: whether or not a POSITA would interpret the pieces of the reference stent as peaks and valleys (or synonyms or those words). The Board said a POSITA would not, that the Examiner's view of those pieces as peaks/valleys was arbitrary.

    Do you agree that at some point, the designation [by either party] becomes arbitrary, and thus impermissible? Here's an extreme example. Say the reference includes this picture, which it describes as a random pattern:

    oooooo
    oooXoo
    oooXoo
    oooXXX

    The Examiner says there is an "L-shape" in this pattern.

    Isn't this an example of an arbitrary designation, since the reference said the pattern was random and thus attached no significance to the L?

    The Dennison case wasn't as exaggerated, since there was [I'm assuming] no disavowal of a peak/valley, only an absence of such a description. But I think this is the same principle illustrated in Dennison.

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  7. >I wouldn't say [claims and reference are >interpreted by a] person of *ordinary* skill.. >Perhaps person of skill in the art.
    >I want want an expert, or supreme master >artisan, up in my 102 so that he may tell me
    >truly what the reference states.

    I don't know a lot about "who is a POSITA" law, so I could be wrong about this ...

    But I think Person Of Ordinary Skill In The Art is always the standard. However, the level/kind of education/experience such a person has varies with the the art in question. Ie, a guy with an high school education might be a POSITA for a disposable razor blade unit, where a guy with a PhD might be a POSITA for a nanotech invention.

    ReplyDelete