Thursday, November 11, 2010

BPAI reverses rejection of "configured to move" because Examiner's statement that reference "could move" was speculation

Takeaway: In Ex parte Tipley, the claims described physical parts "configured to" move in a specified manner. The Examiner acknowledged that the reference did not teach parts configured to move as claimed. The Examiner insisted that the reference nonetheless anticipated by treating "configured to" as "capable of" and further insisted that the parts in the reference could move as claimed. The Board treated this as an inherency argument. The Board then found that the Examiner's understanding that the parts could move was simply speculation. Since speculation is not enough to support inherency, the Board reversed the anticipation rejection.

Details:

Ex parte Tipley
Appeal 2009000300, Appl. No. 11/108,338, Tech. Center 2800
Decided September 18, 2009

The claims were directed to an arrangement of circuit boards in a computer. Two of the appealed claims are shown below, with the limitations at issue being highlighted:

5. A computer system comprising:
a first circuit board comprising a first connector;
a second circuit board ... having a second connector couplable to the first connector, wherein the second circuit board is configured to move in a first direction along the first circuit board to generally align the first and second connectors;

18. A computer system comprising:
a first circuit board comprising a first connector;
...a second circuit board coupled to the housing, wherein the second circuit board comprises a second connector; and
a biasing mechanism coupled to the housing, wherein the biasing mechanism is configured to bias the second circuit board along a curved path to connect the first and second connectors in the second position of the module.

The Examiner rejected all independent claims as being anticipated by the same reference.

With regard to the "configured to move in a first direction" limitation, the Applicant argued in the Appeal Brief that the limitation was not present in the reference because "housing end 70 blocks the daughter board 8 from moving along the mother board at one end, and surface 34 of housing end 72 blocks the daughter board from moving along the mother board 14 at the other end." [See Fig. 2 below.]


In the Answer, the Examiner further explained the rejection as follows:
[P]lease note that the recitation that an element is "configure to" perform a function is not a positive limitation but only requires the ability to so perform. In this case, Grabbe discloses that the second circuit board (8) can move in a first direction along the first circuit board (14), as shown in the following figure. (Emphasis added. See Fig. 1 below.)
 
The Board noted that the Examiner did not point to an express teaching of the limitation, and therefore analyzed under an inherency theory:
[W]e note that the Examiner’s finding, portrayed in the figure on page 8 of the Answer that allegedly shows the daughter board moving in a direction along the mother board via a directional line added by the Examiner, is based on the mere possibility of such movement and thus is speculative and insufficient to establish the inherency of such movement. The Examiner does not provide any reasoning to support such a determination.
The Board therefore reversed the rejection of the claim (claim 9).

With regard to the "configured to bias the second circuit board along a curved path" limitation, the Applicant argued in the Appeal Brief that the limitation was not present in the reference because:
the daughter board 8 is in contact with a ledge 68, it is impossible for the daughter board 8 to move along a curved path. See Grabbe Fig. 5. As such, the daughter board 8 moves laterally in a straight direction along the surface of the ledge 68 until the engaging surface 38 couples with the connector. [See Fig. 5 below.]

In the Answer, the Examiner further explained the rejection as follows:
[I]t is again noted that the recitation that an element is "configure to" perform a function is not a positive limitation but only requires the ability to so perform. In this case, the second connector (4) of  Grabbe can rotate around a pivot structure and along a curved path, as shown in the following figure. (Emphasis added. See Fig. 3 below.)
Once again, since an express teaching was missing, the Board analyzed under an inherency theory, and found the Examiner's rejection to be in error:
In this regard, we note that the Examiner’s finding portrayed in the figure on page 10 of the Answer that allegedly shows the daughter board 8 moving in a curved path via a curved line added by the Examiner is mere speculation. The Examiner does not provide any reasoning to support a finding that Grabbe’s circuit board inherently moves in a curved path. (Emphasis added.)

My two cents: I don't view this case as being about inherency, at least not in the classic sense. The Examiner's position seems to be that there is no difference between "capable of" and "configured to". The parts in the reference were not designed to move in the claimed manner – but could move a micrometer or two if enough force was applied.

I have two objections to the Examiner's argument. First, even if the claims used the phrase "capable of", this is a strained interpretation of that phrase "capable of". It's akin to saying that one piece glued to another is "capable of being released" simply because the pieces come apart with a pry bar. Second, the claims didn't even use "capable of", they used "configured to." The Examiner's interpretation of "configured to" is simply unreasonable in my opinion.

It's been a long time since I saw a "creative" rejection like this. I wish the Board had hit the Examiner's argument head on rather than shoehorning it into an inherency framework.

8 comments:

  1. "I have two objections to the Examiner's argument. First, even if the claims used the phrase 'capable of', this is a strained interpretation of that phrase 'capable of'. It's akin to saying that one piece glued to another is 'capable of being released' simply because the pieces come apart with a pry bar. Second, the claims didn't even use 'capable of', they used 'configured to.' The Examiner's interpretation of 'configured to' is simply unreasonable in my opinion."

    Of course it's unreasonable. Once again, an idiotic claim construction smacked down by the Board. But the next time this examiner gets a claim with "configured to" in it, do you think the examiner is going to properly construe it, or do you think it's going to get the same idiotic construction as it was given in this case? My bet is the latter. And the "quality assurance" types that review this garbage will sit in the appeal conference and say, "Yup, looks reasonable to us. Hur, send it up!"

    "It's been a long time since I saw a 'creative' rejection like this."

    Then you are indeed lucky. I get creative, i.e. garbage, rejections like this routinely.

    "I wish the Board had hit the Examiner's argument head on rather than shoehorning it into an inherency framework."

    Agreed. The examiner plainly stated that the "configured to" language was not being given patentable weight, not that the feature was allegedly inherent in the reference. It's bad enough that the examiners, and the idiot "quality assurance" types who rubber stamp the garbage rejections issued by the examiners, don't learn anything from the Board's decisions without the Board actually addressing the examiner's actual rejection. If the examiners are ever going to learn anything from a reversal, the Board has to actually tell them why their position is wrong, not make up some other rejection and then knock that rejection down.

    What a mess.

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  2. >>"It's been a long time since I saw a 'creative'
    >>rejection like this."
    >Then you are indeed lucky. I get creative, i.e.
    >garbage, rejections like this routinely.

    Maybe I mis-spoke. What I should have said is: It's been a long time since I saw *this sort* of creative rejection, ie, configured to. I do get plenty of garbage rejections.

    >Board has to actually tell them why their
    >position is wrong, not make up some other
    >rejection and then knock that rejection down.

    Yep, I agree. I see plenty of decisions where the Board bends over backwards to take a terse and confusing rejection and make some sense out of it -- or turn it into something else, as happened here -- rather than reversing because the Examiner didn't make a prima facie case. As well as many others where the Board does substantial fact finding about what the reference teaches when all the Examiner did is cite to 4 columns. Again, should be reversed for lack of a prima facie case instead of a ruling on the merits.

    I do see a few, every now and then, where the Board rejection remands for additional fact finding. Not a good outcome for the Applicant. Back to square one after 3 years and thousands of dollars.

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  3. >plainly stated that the "configured to"
    >language was not being given patentable weight,

    That part of the Examiner's position doesn't make sense to me. He wasn't truly *ignoring* the movement limitation -- he explained why the reference could move. To me, if the limitation truly had no weight, then all the Examiner would need to address is the two circuit boards. Movement would be completely irrelevant.

    The way I see it, the Examiner gave the "configured to" limitation patentable weight, but read it in a strained way.

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  4. "In the Answer, the Examiner further explained the rejection as follows:

    [P]lease note that the recitation that an element is 'configure to' perform a function is not a positive limitation but only requires the ability to so perform."

    Generally speaking, when I see this nonsense from examiners that a particular claim recitation is not a "positive limitation" I take it to mean that no "patentable weight" is being given to the recitation, i.e. the examiner is ignoring it. You may be right that the examiner gave it weight, but read it in a strained way, but from my perspective giving it weight but such a strained interpretation as to make the recitation all but disappear really isn't all that different from giving it no weight.

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  5. >not a "positive limitation" I take it to mean
    >that no "patentable weight" is being given to
    >the recitation

    Yep: "not a positive limitation" and "not positively recited" and "not giving it patentable weight" are all the same.

    >giving it weight but such a strained
    >interpretation as to make the recitation all
    >but disappear really isn't all that different
    >from giving it no weight.

    The difference doesn't affect the outcome with the Examiner. But this sort of mischaracterization muddies up the record and obfuscates the real issue -- claim construction. The confusion then makes it easier for the Board to avoid the real issue -- claim construction -- and instead go off on an inherency tangent.

    One of my goals in prosecution is to get the Examiner to clearly state his position on the record. I can't effectively fight a rejection that I don't really understand.

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  6. "One of my goals in prosecution is to get the Examiner to clearly state his position on the record. I can't effectively fight a rejection that I don't really understand."

    Well, good luck with that. Many of the rejections that I get are deliberately obtuse because it's clear that the examiner is embarrassed to be making the rejection, but feels the need to reject because "the claim is too broad," which is examiner-speak for "the claim is not long enough for me to allow" without a hassle from some do-nothing-know-nothing quality assurance type or the QR boogey man.

    Add to that the hope that some hopelessly lame rejection will somehow be tidied up by the BPAI, which may "amplify" the "findings of fact" made by the examiner (lulz) and substitute its own reasoning in place of the examiner, and the goal of a clearly articulated rejection remains a pipe dream.

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  7. Meh, should request rehearing and ask them to kindly address the actual rejection.

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  8. "Meh, should request rehearing and ask them to kindly address the actual rejection."

    Hur, the applicant can't request rehearing of a reversal.

    ReplyDelete