Thursday, February 10, 2011

BPAI finds disclosure of two options for building a system is not selective disablement of options during system operation

Takeaway: In Ex parte Khayrallah, one of the claims at issue included "wherein selectively varying the gain of the secondary receiver comprises disabling one or more components of an analog-to-digital converter." The BPAI reversed an obviousness rejection because the reference relied on by the Examiner did not teach this feature. Instead, the reference taught two different receivers, one with a single A/D converter and another with two converters. Thus, disclosure of two options for building a system is not the same as selective disablement of those two options during operation of the system.

Details:

Ex parte Khayrallah
Appeal 2009007971; Appl. No. 10/427,872; Tech. Center 2600
Decided  October 15, 2010

15. A method for improving the performance of a portable wireless device in a wireless network, the portable wireless device comprising a front-end and a front-end controller, wherein the front-end comprises a primary antenna connected to a primary receiver and a secondary antenna connected to a secondary receiver, the method comprising:
    activating the primary antenna; and
    selectively varying the gain of the secondary receiver to maintain a desired performance and to reduce power consumption.

21. The method of claim 15 wherein selectively varying the gain of the secondary receiver comprises disabling one or more components of an analog-to-digital converter.

In the Appeal Brief, the Applicant didn't even make arguments to distinguish over the prior art for dependent claim 21. Instead, the Applicant argued that the rejection was legally deficient because the rejection didn't even address the specific limitations of the dependent claim. Instead, the Examiner discussed features in the prior art related to adjusting sampling rate. Those limitations were present in a different dependent claim. 

In the Examiner's Answer, the Examiner alleged for the first time that:
Schumutz teaches of using one of the A-D converter when there is no diversity capability is required (see column 6 and lines 60-64) in which means one of the A-D converter is disable when there is not need for it in which does make sense of power reduction.

The Applicant filed a Reply Brief, but did not address the Examiner's new argument. Instead, the Applicant referred to the deficient rejection in the last Office Action, and mistakenly stated that "the Examiner's Answer does not address this point."

The relied-upon section of reference disclosed:
This multichannel baseband signal is preferably coupled to high-speed A-D converters 52-1 and 52-2 operating in parallel for diversity receive capability. Where no diversity capability is required, a single A-D 52-1 could be utilized. 

The BPAI found that this section taught "design choices for different systems", but "does not teach disabling one or more components of an analog-to-digital converter for varying the gain of a secondary receiver."

Takeaway: The BPAI reached the right outcome, but only because the Board read the reference. This case could have easily gone the other way, because the Applicant did not actually address the grounds of rejection which appeared for the first time the Examiner's Answer.

A safer bet would be for the Applicant to use the Reply Brief to make the same point the Board did: that the reference merely disclosed two options for building a receiver(use two converters when diversity is desired and one when diversity is not required), which is not the same as selective enabling one or more components during operation of the receiver.

Perhaps you are thinking that selectively enabling converters during operation of a receiver is still obvious. What about this for a prima facie case ... Adding selective enablement of an A/D converter to a receiver produces a predictable result. Any required design modifications are within the skill of a POSITA. The motivation is to reduce power consumption, a benefit that would a POSITA would readily appreciate.  

Finally, one minor quibble. If you read the claim closely, it says disabling one or more components of an A/D converter. The reference described, and the Board discussed, options for building a receiver using one or two A/D converters. There's a difference, right?

Now, the reference certainly didn't teach disabling components of an A/D converter, so the Board properly reversed. But was that an accident? Did the Board go down the wrong track because they didn't read the claim carefully? Makes me wonder.

Related Posts:  This case says disclosing two alternatives for components when building a system is not the same as disclosing selective disablement of the components during operation. I blogged about another case, Ex parte Keller, and made a related point: a reference that discloses the presence of a particular feature in one embodiment along with the absence of the same feature in another embodiment does not teach selectively enabling the feature.

7 comments:

  1. Regarding this point:

    "Finally, one minor quibble. If you read the claim closely, it says disabling one or more components of an A/D converter. The reference described, and the Board discussed, options for building a receiver using one or two A/D converters. There's a difference, right?

    Now, the reference certainly didn't teach disabling components of an A/D converter, so the Board properly reversed. But was that an accident? Did the Board go down the wrong track because they didn't read the claim carefully? Makes me wonder. "

    I would expect an Examiner to reply that the claim literally reads on the case that all components of the converter are disabled by disabling the converter. The claim does not require the capability to disable only one component of the converter, or a subset of the components. Thus, a prior art device that has two converters, in which one of the converters can be selectively disabled, would still infringe the claim. That which infringes, if earlier, anticipates. That which is obvious at the earlier time, and would infringe, also invalidates. So if you agree that the ability to selectively disable one of multiple converters would be obvious, then the claim should still be obvious, because disabling the converter disables all components of the converter and fulfills the claim limitations.

    I think the critical point is that the reference relied upon teaches that one converter can be used instead of two when no diversity capability is required, and not to vary the gain of the receiver. Purpose matters. Causation matter. One cannot lift an element from the prior art without considering the purpose for which it was used. Otherwise you have impermissible hindsight reasoning.

    The MPEP instructs Exmainers to respond to Applicants' hindsight reasoning assertions as follows:

    "7.37.03 Unpersuasive Argument: Hindsight Reasoning
    In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971)."

    I read the McLaughlin case, and it specifically says that the hindsight reasoning was permisible because the prior art used those components used int he reconstruction for the same purpose. I don't think that it is the fault of Examiners that the MPEP instructs them to take a quote form a case out of context and use it willy nilly, but I think this point about the purpose for which the component was used in the cited reference is one that needs to be driven home in our responses.

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  2. >claim literally reads on the case that all
    >components of the converter are disabled by
    >disabling the converter.

    Yep. That's it, of course. I didn't think it through carefully enough.

    >claim does not require the capability to
    >disable only one component of the converter,
    >or a subset of the components.

    How *do* you claim capability of disabling 1-N, where N is the number of components?

    That is, how to exclude prior art that is *only* capable of disabling the entire converter, but also catch an infringer who has the capability of disabling all components.

    Does adding selectively get me there? "selectively disabling one or more components of an analog-to-digital converter."

    Or do I need an apparatus claim to more directly address capability?

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  3. "What about this for a prima facie case ... Adding selective enablement of an A/D converter to a receiver produces a predictable result. Any required design modifications are within the skill of a POSITA. The motivation is to reduce power consumption, a benefit that would a POSITA would readily appreciate."

    I don't think that's a proper rejection, Karen. That's hindsight reconstruction, since your only source for the "selective enablement of an A/D converter" is the claim itself. In my opinion, a correct use of the "predictable result" analysis would look more like:

    Reference A shows everything except selective enablement of an A/D converter. Reference B shows selective enablement of an A/D converter, in a different but related context. It would have been obvious to add selective enablement of the A/D converter, as shown in B, to A's similar system, since the results would have been predictable and the modifications were well within the skill of one of ordinary skill in the art.

    I know it's tempting when it just feels obvious, but I don't think you get to fabricate elements out of thin air, and then justify them because the results are predictable.

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  4. >don't think that's a proper rejection, Karen.
    >That's hindsight reconstruction, since your
    >only source for the "selective enablement of
    >A/D converter" is the claim itself.

    Ah, glad to see my fatally flawed analysis didn't fool everyone. Yet I often see Examiners make the mistake in reasoning that I illustrated.

    And yes, what the Examiner should do is perform the predictable results analysis you suggested. It would be a lot harder for an Applicant to beat.

    I've probably said this before, but I'm constantly surprised by how Examiners stick with flawed motivation-to-combine arguments (like the one I thew out) when there are substitution or predictable results rationales that fit much better.

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  5. >critical point is that the reference relied
    >upon teaches [using one converter when no
    >diversity capability is required] and not to
    >vary the gain of the receiver. Purpose matters.
    >One cannot lift an element from the prior art
    >without considering the purpose for which it
    >was used.

    I think I see where you're going with this. I think you're attacking the Examiner's reason for combining the secondary (disable A/D) ref with the primary (receiver) ref. Am I right?

    Or are you arguing instead that the secondary (disable A/D) reference does not teach the element in claim 15?

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  6. " think I see where you're going with this. I think you're attacking the Examiner's reason for combining the secondary (disable A/D) ref with the primary (receiver) ref. Am I right?

    Or are you arguing instead that the secondary (disable A/D) reference does not teach the element in claim 15? "

    I'm taking as a given the argument has already been made that the reference does not teach selectively disabling one or more components of an A2D converter.

    Then I am pointing out that, even if the reference did teach selectively disabling when diversity capability is not required, that's not the same thing as selectively disabling to vary the gain of the receiver. The Examiner can't take the teaching of selective disabling (even if it does exist in the reference) and use it to supply the selective disabling of the claim, because that is hindsight reasoning. He has to find another reference that provides the teaching of selective disabling of the A2D converter component(s) for the same purpose.

    As for this wisdom from our anonymous friend who speaks what everyone should know (but that some CAFC judges apparently don't know):

    "I know it's tempting when it just feels obvious, but I don't think you get to fabricate elements out of thin air, and then justify them because the results are predictable."

    I refer you to last weeks CAFC decision in Tokai Corp. v. Easton Enterprises, in which the panel did just that. The defendant couldn't present prior art that showed the claimed element, but presented art showing a different element that performed the same function in a different way. The CAFC held the claim obvious under summary judgement becase a "high school shop class" had the skill to make the different element that never existed before, and the results were predictable. They didn't care that the patentee's invention was wildly commercially successful and that everyone copied.

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  7. "didn't care that the patentee's invention was wildly commercially successful and that everyone copied. "

    I note that they never were able to present any evidence of all this copying. Instead, they tried to finangle their way into having such evidence by showing some evidence of something else. Sadly, the CAFC wasn't buying loads of horse sht that day.

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