Tuesday, February 22, 2011

BPAI says Background discussion of prior art deficiencies is not admission that feature exists

Takeaway: In Ex parte Burdgick, the Applicant appealed in a case related to steam turbines. The Applicant's background stated that "Conventional turbine casing design techniques were not particularly helpful in identifying those key pipe connections that distort the turbine casing (seals) or in establishing load limits for pipe connections." The Examiner asserted that this Background statement disclosed the method step "identifying a plurality of the pipe connections as key pipe load connections on the turbine casing." The BPAI disagreed, finding that the Background instead taught a "lack of ability to identify" connections as claimed.

Details:
Ex parte Burdgick
Appeal 2009004835; Appl. No. 10/317,192; Technology Center 2100
Decided  November 19, 2009

Method claim 1 recited:

1. A method for establishing load limits for pipe connections to a turbine casing comprising:
a. identifying a plurality of the pipe connections as key pipe load connections on the turbine casing, wherein the key pipe load connections is a subset of all pipe load connections on the turbine casing;
b. developing transfer functions to model deformation of the turbine casing based on loads applied to the key pipe connections;
c. establishing individual load limits for each of the key pipe connections by optimizing solutions to the transfer functions, and
d. establishing a cumulative load limit for the key pipe load connections by optimizing solutions to the transfer functions.

The Examiner asserted the claim was obvious. The primary reference allegedly taught "finite element analysis and optimization of structural designs including turbine housings", but "did not provide much detail about the loading of pipes on turbine". The secondary reference allegedly taught "FEM analysis of pipe loading on pressure vessels including deformation failure and load limit determination." The Examiner then filled in the remainder of the claim using Applicant's background as Admitted Prior Art (APA), as follows:
It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teaching of Oi et al. with the pipe loading analysis teachings of Meier et al. for the following reasons. Applicants have admitted (page 2, specification) that it was known to obtain pipe load limits on turbines:
[0005] Excessive piping loads can also distort the turbine casing during turbine transient operations. Piping loads during transients, especially when cooling occurs in the pipes, tend to distort the turbine casing to reduce the clearances between the seals and buckets. If these clearances become too small, the stationary seals may "rub-out" as they scrap against the rotating buckets. Seals that rub-out do not provide effective sealing as they allow excessive steam leakage during steady state turbine operating conditions. Accordingly, excessive piping loads may damage and distort the seals between the casing and the buckets such that turbine performance is degraded.
[0006] Piping load limits are imposed on the turbine design to avoid excessive piping loads that unduly distort the casing. In the past, these limits have been based on empirical and historical information regarding prior piping loads on similar turbine casing. It was common for piping load limits to be developed using simple calculations of the loads on the casing. Conventional turbine casing design techniques were not particularly helpful in identifying those key pipe connections that distort the turbine casing (seals) or in establishing load limits for pipe connections. Accordingly, there is a long felt need for methods to establish pipe load limits on turbine casings that avoid excessive casing distortion.

On appeal, the Applicant argued that APA did not disclose "identifying key pipe connections":
Applicant's Admission are statements in the application describing problems associated with excessive piping loads (para. 0005) and the prior art practice of developing piping load limits based on "empirical and historical information regarding prior piping loads on similar turbine casing[s]". [Para. 00061. These prior art techniques do not suggest the above highlighted steps of claim 1. Instead of suggesting the obviousness of the invention, Applicant's Admission indicates that persons of ordinary skill determined acceptable pipe loads using techniques starkly different than those recited in the method claims of this application. Applicant's Admission indicates that persons of ordinary skill would have not viewed the invention as being obvious.

In the Answer, the Examiner put forth a lengthy defense of his rationale as follows:
   Note that in claim 1 that "identifying key pipe connections" is an arbitrary 'identification' of some of the connections as more important ('key') than others. This depends upon the particular design, common sense and experience of the mechanical engineer (or possibly a program written by the engineer - the claim does not specify), and intended use.
   The first limitation of claim 1 only requires that certain of the pipe connections be 'identified' as key pipe connections. There is no requirement that the identification be carried out using any program or special technique; allowing for a skilled artisan to arbitrarily choose the connections based upon experience, for example, satisfies the limitation in the context of the claim.
   The engineer in 'identifying' the key connections is 'identifying' the pipes which will cause the most deformation. Since the claim does not require any special technique (at least prior to step 1), the 'identification' appears to be based upon experience, and in fact is satisfied by par. 6 of the specification .... Applicants have admitted (par. 6, as specified in the rejection) that it was known to impose load limits, and that there was a long felt need to establish better techniques to identify connections. Therefore, by Applicant's admission, it was known to identify key pipe connections and pipe load limits on turbines, in the same context using, at the least, a less than better technique.

The Board reversed the obviousness rejection, finding that the Background did not teach "identifying" as claimed, and in fact taught the lack of this ability to identify:
However, we find that Appellants’ statement, although found in the Background of the Invention section, is not an “admission” but rather a statement regarding the need to identify key pipe connections. Defining a need suggests something that does not yet exist. While the above-noted statement is in the Specification’s Background section, we find that this is not enough to launch such a statement into an admission of prior art. Thus, the record does not contain evidence that supports the Examiner’s position that Appellants’ Specification admits that it was known to identify key pipe
connections. As such, we find that Appellants’ disclosure does not teach the claimed identifying step, but instead stresses the need to develop such a step. Therefore, we disagree with the Examiner that AAPA teaches identifying key pipe connections as a subset of all pipe connections. Given that the Examiner also has not shown, and we do not readily find, how the Oi, Meier, and Tsai references teach the “identifying” limitation, we cannot sustain this rejection.

My two cents: I found the Examiner's rejection to be a little unclear, because he didn't map to the claim language.

The Board treated the rejection as relying on AAPA for teaching the "identifying" feature. And it's true that the rejection didn't clearly assert that one of the other references taught that feature. So maybe that's the most plausible reading.

But the final rejection kinda reads like AAPA is used as a rationale for combining: "would have been obvious to modify .. for the following reasons. Applicants have admitted it was known". Then the Answer made it sound like the rejection relied on the knowledge of a POSITA: "engineer in 'identifying' the key connections is 'identifying' the pipes" ; "allowing for a skilled artisan to arbitrarily choose the connections based upon experience, for example, satisfies the limitation".

In the Appeal Brief, the Applicant treated the rejection as alleging that AAPA disclosed the identifying step. Guess that was the right reading, because it convinced the Board that the Examiner's rejection was flawed.

Maybe there's another takeaway here: be aware that everything you say in your Background can, and probably will, be used against you by the Examiner.

12 comments:

  1. Simply more idiocy from the examining corps and the know-nothing management that oversees them.

    I frequently have examiners alleging that an "admission" was made, either in the spec or in the arguments. They are so ignorant it's painful. They don't what an admission is, they don't understand the difference between evidence and facts, and so on.

    Now let's all wait for this site's resident examinertard to chime in about how he understands it oh so well. Of course, the dolts that green lighted this appeal are basically the same dolts that taught examinertard about "admissions" but I'm sure he figured it all out on his own after one or two altlaw.org searches.

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  2. "In the Appeal Brief, the Applicant treated the rejection as alleging that AAPA disclosed the identifying step. Guess that was the right reading, because it convinced the Board that the Examiner's rejection was flawed."

    Brilliant laywering, no doubt. Bravo.

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  3. "Simply more idiocy from the examining corps..." This sounds a little one-sided (and no, I'm not an Examiner.)

    "Maybe there's another takeaway here: be aware that everything you say in your Background can, and probably will, be used against you by the Examiner." Suppose that is what I want. Suppose there is a conventional way of doing things, and I want to put that art before the examiner, though I don't have a reference that describes it. I don't want to lose my presumption of validity if a future litigant finds such a reference later. How effective, do people think, would it be to describe it in the Background?

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  4. "1. A method for establishing load limits for pipe connections to a turbine casing comprising:
    a. identifying a plurality of the pipe connections as key pipe load connections on the turbine casing, wherein the key pipe load connections is a subset of all pipe load connections on the turbine casing;
    b. developing transfer functions to model deformation of the turbine casing based on loads applied to the key pipe connections;
    c. establishing individual load limits for each of the key pipe connections by optimizing solutions to the transfer functions, and
    d. establishing a cumulative load limit for the key pipe load connections by optimizing solutions to the transfer functions.
    "

    Is this not a 101 waiting to happen? I can't comment on whether or not it is of course, but I would be interested in knowing other people's positions and why they feel that way.

    Seems like an abstract idea in this case could be said to be:

    1. An abstract idea comprising:
    a. identifying a plurality of pipe connections as key pipe load connections on a turbine casing, wherein the key pipe load connections is a subset of all pipe load connections on the turbine casing;
    b. developing transfer functions to model deformation of the turbine casing based on loads applied to the key pipe connections;
    c. establishing individual load limits for each of the key pipe connections by optimizing solutions to the transfer functions, and
    d. establishing a cumulative load limit for the key pipe load connections by optimizing solutions to the transfer functions.

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  5. I do say that based on what I see here though there was no admission of such a step being taken. Although, that might not have even been what the examiner was trying to say in the rejection. I'm not going to bother reviewing it.

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  6. "Suppose there is a conventional way of doing things, and I want to put that art before the examiner, though I don't have a reference that describes it. I don't want to lose my presumption of validity if a future litigant finds such a reference later. How effective, do people think, would it be to describe it in the Background?"

    What would be the effect of a future litigant finding a reference that discloses a conventional way of doing things? I mean, presumably the claim covers a non-conventional, i.e. non-obvious, way of doing things, right?

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  7. >"Maybe there's another takeaway here: be aware
    >that everything you say in your Background can,
    >and probably will, be used against you by the
    >Examiner." Suppose that is what I want.

    Surely you don't want the Examiner to use it *against* you.

    >there is a conventional way of doing things,
    >and I want to put that art before the examiner,
    >....
    >how effective would it be to describe it in
    >the Background?

    Effective as to what? Effective in avoiding a 1.56 Duty of Disclosure issue? Effective in explaining to the Examiner what the differences are? Effective in explaining what the diffs are without admitting prior art?

    I'll comment on the second two.

    If you discuss something in a way that makes it clear that the something is known, that's an admission. I don't know of a way around that except to not discuss the thing in that manner.

    The background discussion in this case clearly didn't make the Examiner see the diffs. I think that it's a good idea in theory to use the Background as a way to explain your diffs, but that in reality the Examiner doesn't see the diffs and instead jumps on admissions which let him avoid finding a ref and/or a rationale for combining.

    That's my take on it, but I run across apps every day which have an extensive background. So obviously others have a different view.

    >don't want to lose my presumption of validity
    >if a future litigant finds such a reference
    >later.

    You'll always have a presumption of validity. You're thinking the presence of absence of a mention of the general state of the art in the application's background affects the presumption in some way?

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  8. >Is this not a 101 waiting to happen?

    Yeah, that occurred to me also. There are no non-method claims either. So the patentee could lose the whole patent to 101 invalidity.

    Another potential problem: who is the infringer and how will the patentee know it's being infringed?

    I'll assume all steps are implemented in software. I'm not sure about that -- could be that some are performed by a human. But let's assume.

    With only a method claim, you can't go after the seller of the software, even if it's shrink-wrap software. The way the claim is written, you have go after the company *using* the software to design the turbine? How are you gonna know about the internals of another company's design process?

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  9. >there is a conventional way of doing things,
    >and I want to put that art before the examiner,
    >....
    >how effective would it be to describe it in
    >the Background?

    Disclosing prior art in the background does not fuflill the duty of candor nor get the art considered on the record. You are shooting yourself in the foot by creating a paper trail that you were aware of prior art and did not submit it in an IDS. The IDS has a section where you can put the admission of prior art and get it considered on the record. Use that.

    Practically every patent professional I know agrees that nothing good can come from having a background section, except that your client or boss may expect one and be happier if there is at least something that looks like a background section. But you can be accused of mischaracterizing any prior art you discuss there, and any discussion of the disadvantages of the prior art or objects of the invention or unfilfilled needs can be used as motivation to combine references. Even discussing the problem to be solved or hinting at what the invention is going to address can be used as an admission that the problem to be solved was known. Sometimes recognition of the problem IS the contribution made by the inventors, especially where the solution is obvious once the problem is recognized.

    I think it's best to either not have a background section at all (it's optional), or just kind of have a fake one that sets a context, but doesn't even come close to talking about anything important.

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  10. "How are you gonna know about the internals of another company's design process? "

    Someone brought up something similar in an interview the other day regarding method claims in a manufacturing setting. How are they going to be able to see what goes on inside the factory? I was thinking, though I didn't tell them: Corporate espionage. I was then going to pitch my services for this occupation. Apparently everyone at my first "job" or "internship" thought I was an expert spy when I first got there, and maybe some of them still suspected me after I'd been there awhile. Of course I was actually nothing more than a college kid who fell asleep during meetings about things which I did not have any clue about.

    But I do think that I could handle the job.

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  11. "You'll always have a presumption of validity."

    If only Microsoft didn't have something to say about section 282...

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  12. "The IDS has a section where you can put the admission of prior art and get it considered on the record."

    IDSs do not admit that references are prior art. 37 CFR 1.97(h) (MPEP 2001.04). Why the hell would you ever admit that anything is prior art anyway?

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