Monday, July 18, 2011

BPAI reverses Enablement rejection when Examiner confuses § 101 Non-Statutory Subject Matter with § 101 Lack of Utility

Takeaway: The BPAI reversed a § 112 First Paragraph Enablement rejection in a computer software application because the Examiner's rationale for the Enablement rejection related to lack of utility under § 101. The BPAI agreed that an Enablement rejection appropriately accompanied a lack of utility rejection under In re Kirk. However, here the outstanding § 101 rejection involved the non-statutory subject matter prong of § 101 rather than the lack of utility prong.


Details:
Ex parte Sun
Appeal 2009008503; Appl. No. 11/171,388; Tech. Center 2100
Decided  May 31, 2011

The invention related to "multimedia user interfaces that provide an intelligent interaction paradigm to help analysts better formulate, validate and manage analyses hypotheses." A representative claim on appeal read:
1. A computer implemented method supporting competitive intelligent analyses of information, comprising the steps of:
     generating, on a computer display device, a display of a hypothesis in a hypothesis space;
     generating, on said computer display device, a display of accumulated information in an information space that helps to evaluate the hypothesis;
     in response to user input, linking a hypothesis to relevant information in the information space;
in response to user input, linking information displayed in the information space to a particular hypothesis and its state; and
     if a particular hypothesis stands rejected or confirmed, generating, in the hypothesis space, a description of the state of the hypothesis as rejected or confirmed.

A first Office Action (issued in 2006) included a § 101 non-statutory subject matter rejection and a § 112 First Paragraph Enablement rejection, but no prior art rejections. In explaining the § 101 rejection, the Examiner asserted that "none of the claims are limited to practical applications," citing AT&T v. Excel Communcations, Inc. Furthermore, according to the Examiner, MPEP 21071.01 directed that an Enablement rejection should accompany a § 101 rejection:
Courts have also cast the 35 U.S.C. 101/ 35 U.S.C. 112 relationship such that 35 U.S.C. 112 presupposes compliance with 35 U.S.C. 101. See In re Ziegler, 992 F.2d 1197, 1200-1201, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993) ("The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. 101 that the specification disclose as a matter of fact a practical utility for the invention. ... If the application fails as a matter of fact to satisfy 35 U.S.C. § 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. § 112."); In re Kirk, 376 F.2d 936, 942, 153 USPQ 48, 53 (CCPA 1967) ("Necessarily, compliance with § 112 requires a description of how to use presently useful inventions, otherwise an applicant would anomalously be required to teach how to use a useless invention.").
(MPEP 21071.01.)

In the first response, the Applicant amended the method claims to include the phrase "on a computer display device" and argued that the amendment overcame both rejections. But the final Office Action maintained both rejections, and the Applicant appealed.

In the Appeal Brief, the Applicant explained how "the claims on appeal in this application are clearly directed to practical applications" and were thus directed to statutory subject matter as interpreted by In re Warmerdam, State Street Bank, and AT&T. The Applicant argued for reversal of the § 112 First Paragraph Enablement rejection because it explicitly relied on the § 101 rejection.

The Examiner maintained both rejections in the Answer, and explained that the Enablement rejection was appropriate because
... current case law (and accordingly, the MPEP [Manual of Patent Examining Procedure]) require such a rejection if a §101 rejection is given because when Applicant has not in fact disclosed the practical application for the invention, as a matter of law there is no way Applicant could have disclosed how to practice the undisclosed practical application.
(Emphasis in original.)

The application did not reach the BPAI until 2011. The Board affirmed the § 101 rejection under Bilski v. Kappos, finding that the method claims were not tied to a particular machine and also failed to transform  an article to a different state or thing.

However, the Board reversed the § 112 First Paragraph Enablement rejection, finding that the Examiner had confused a § 101 Non-Statutory Subject Matter rejection with a § 101 Lack of Utility rejection:
     The Examiner’s statement of the rejection of claims 1-25 under § 112, first paragraph appears to be couched in terms of the claims lacking enablement. However, the Examiner offers no analysis with respect to how the disclosure fails to enable the subject matter, other than reference to MPEP § 2107.01(IV) and In re Kirk, 376 F. 2d 936, 942 (CCPA 1967). See Ans. 10.
     MPEP § 2107.01(IV) and In re Kirk relate the statutory grounds of § 101 and § 112, first paragraph to a rejection for lack of utility. Although the Examiner rejects the claims under § 101 as being directed to nonstatutory subject matter, the Examiner does not show that the claims are deficient under the utility prong of 35 U.S.C. § 101.
     Accordingly, as the § 112 rejection appears to be based solely on a § 101 “lack of utility” rejection that has not been made, we do not sustain the rejection of claims 1-25 under 35 U.S.C. § 112, first paragraph.

My two cents:  I admit I've sometimes used the phrase "utility rejection" when I really mean a § 101 non-statutory subject matter rejection. I further admit that this usage is sloppy and incorrect. But I do know the difference between a non-statutory subject matter rejection – quite common in computer cases – and a rejection for lack of utility (sometimes referred to as a "specific utility" rejection) – which typically occurs in in a biotech case and is almost never appropriate in a computer case. So if an Examiner relied on In re Kirk to throw in an Enablement rejection in a computer case, I'm confident I'd know something was very wrong.

I found three other applications where this same Examiner has made this type of inappropriate Enablement  rejection in the past few years. In two of them, the issue went to appeal and the BPAI reversed (Ex parte Mitchell and Ex parte Griffith). In the third, the Examiner withdrew the Enablement rejection in the Answer without comment (Ex parte Aklilu).

How did I find other appeal decisions involving the same Examiner? I used the list of BPAI decisions available at the JIANQ CHYUN Intellectual Property Office blog. The list, which is compiled daily by James Long, includes the names of the ALJ, the Examiner, and the legal representative, as well as the rejections on appeal. So if you know the Examiner's name then you can use the blog's search box to search for other decisions involving the same Examiner. Same for law firm name. This blog is a great resource!

24 comments:

  1. Nice detective work, Karen.

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  2. Really a well written Article. It would be interesting to further research on a non-statutory subject matter rejection and a utility rejection. The examiner withdrawing the enablement rejection in the third issue wasn't much of a shock though.

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  3. Lulz, 3x appeals guys signed off on those bogus enablement req rejections. Seriously, does anyone know wtf is going on over here?

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  4. Karen, how did you find the cases involving this same examiner? The BPAI decision search tool at the PTO website does not allow for searching by examiner? Do you keep your own database of decisions searchable by examiner?

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  5. >how did you find the cases involving this
    >same examiner?

    Good question. Short answer: the list of BPAI decisions at http://jianqchyun.blogspot.com/.
    I updated my post to explain this.

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  6. "Short answer: the list of BPAI decisions at http://jianqchyun.blogspot.com/."

    I thought that might be the case. I'm sure the PTO dreads what would happen if the BPAI decisions on the PTO website were searchable by examiner. I think that Requests for Pre-Appeal Conferences would have a lot more impact if you could name several cases where the Examiner was reversed by the BPAI for the same/similar Office Action deficiency.

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  7. "I thought that might be the case. I'm sure the PTO dreads what would happen if the BPAI decisions on the PTO website were searchable by examiner."

    Lulz, what would happen? Practically nothing.

    "I think that Requests for Pre-Appeal Conferences would have a lot more impact if you could name several cases where the Examiner was reversed by the BPAI for the same/similar Office Action deficiency. "

    Presumably that wouldn't happen save once every blue moon. Most examiners do pay attention to why they lost at the board whether you choose to believe that or not. Indeed, it appears this examiner here saw the error of his ways slightly before the BPAI clarified the matter for him.

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  8. http://dl.dropbox.com/u/22398979/2007/reversed/TEMPLETON.pdf


    We enter a new grounds of rejection because this sht is a business method and encompasses all uses of x concept.

    That is a pretty good decision Karen, you should feature it.

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  9. "Practically nothing."

    You wish. It would give much more meat to Petitions to Invoke Supervisory Review. You get to show a pattern of conduct that supervisors can't ignore. And, if the SPE is willing to look the other way, Director Kappos doesn't display the inclination to ignore examiner failings the way the previous administration did.

    "Presumably that wouldn't happen save once every blue moon."

    The blue moons happen a lot more frequently than you believe. I've been waiting for a decision on an appeal I filed two years ago. During that time, I've found five decisions involving the examiner whose rejections are being appealed. The examiner has been reversed in four out of those five decisions (in the fifth case, the BPAI gave the examiner the benefit of the doubt because the applicant didn't file a reply brief to traverse arguments raised by the examiner in the Answer). In those four decisions where the examiner was reversed, the examiner used the same 'style' of rejection that the BPAI found wanting.

    Making BPAI decisions searchable by examiner should make bad examiners afraid...they should be very afraid.

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  10. "In those four decisions where the examiner was reversed, the examiner used the same 'style' of rejection that the BPAI found wanting.

    "

    Ok, but is he still using that "style"?

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  11. "Ok, but is he still using that "style"?"

    Today? Who knows. Hopefully not. But the examiner was using that same 'style' when the examiner rejected the applicant's claims in the case I appealed, which was around the same time frame that the examiner rejected the claims in those five decisions I found. It's too bad that there is no incentive for examiners to review and, after further consideration, withdraw the cases that have already been docketed to the BPAI

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  12. "It's too bad that there is no incentive for examiners to review and, after further consideration, withdraw the cases that have already been docketed to the BPAI "

    I don't even think there is a procedure for that.

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  13. But just fyi, I meant was he still using that "style" at the time which you reviewed the cases, i.e. did he send you another action after he got word back from the board about that being a bad rejection. I'm guessing that you don't know.

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  14. >[no incentive or procedure for]
    >Examiners to withdraw the cases that have
    >already been docketed to the BPAI

    Don't know of any procedure for an *Examiner* to withdraw an appeal. Though according to 41.35, "the *Director* may sua sponte order the proceeding remanded to the examiner."

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  15. "did he send you another action after he got word back from the board about that being a bad rejection."

    I haven't received any communications from this examiner since I received the Examiner's Answer and I don't have any other applications pending with this examiner. The case has been docketed for nearly two years and it will probably be close to a year before I get a decision given the BPAI's backlog.

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  16. So then in other words this is probably an example of a situation where no supervisory review is even needed (except on the front end before those bad rejections were sent out which would be director review of the supervisor's having supervised the examiner) much less needs to be requested by you.

    But, hey, great example.

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  17. "probably an example of a situation where no supervisory review is even needed"

    Probably? What makes you assume that? Unless there is any evidence that this examiner has changed his/her ways, then supervisory review is very much needed.

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  18. "Most examiners do pay attention to why they lost at the board whether you choose to believe that or not."

    I choose not to. I see the same examiners getting reversed on the same lame rejections. And I see the same SPE's and QAS's signing off on the garbage rejections that get reversed.

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  19. >>Most examiners do pay attention to why they
    >>lost at the board whether you choose to
    >>believe that or not.
    >
    >I choose not to. I see the same examiners
    >getting reversed on the same lame
    >rejections.

    Seems like part of the problem here is the feedback isn't immediate enough to be useful, because of the huge lag time between appeal and decision.

    So even when an Examiner does change his behavior as a result of losing at the Board, that only helps with *new* rejections. Doesn't help at all with the dozens/scores of rejections that went to the Board after the Examiner made the first "bad" rejection (leading to reversal) but before the BPAI decision.


    Also, how is an Examiner going to connect the kind of rejection he was reversed on with cases on his current docket? He's supposed to look at the BPAI decision and say "Gee, that reminds me of the kind of rejection I sent to the Board in a case last month?" That seems like an unreasonable expectation.

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  20. ""Gee, that reminds me of the kind of rejection I sent to the Board in a case last month?" That seems like an unreasonable expectation."

    I think it would be unreasonable to expect the examiner to review all outstanding office action rejections but it would be quite reasonable to require the examiner to review all pending appeals.

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  21. I have a written description (and enablement) rejection under the first paragraph in a reissue where the claims and spec were driected to a method of generating data for display, and in which only in one place (the summary) is the word device mentioned. It is an ecg device, and method for analyzing ecg signals. New claims were rejected as they introduced beuaregard (did I spell that correctly?) limitations in an attempt to comply with Bilski.
    Is there a post-Bilski case that might allow one to introduce computer readable media limitations as within the skill in the art.

    The enablement rejection states that "it is not known from the specification the type of computer readable medium or processor, as discussed above, the specification fails to enable one of ordinary skill in the art to make or use the invention."

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  22. I think winning the *Enablement* rejection should be easy. After all, a POSITA surely does know how to *make* a disk containing software.

    But you're gonna have an uphill battle on the *Written Description* rejection. I know of several BPAI decisions that have affirmed WD rejections for situations like this, and can't think of a single one that reversed.

    I you really want to win, introduce declaration evidence from a POSITA that says "I understand electronic device executing software to mean that the software is stored on a CRM."

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  23. Karen,
    Sort of unbelieveable with the amount of work that went into the application that nowhere does it use any of "processing," "software," "processor," or the like (but it does use "storing XYZ signal").

    I agree with your comments 100% and will act accordingly. Was just hoping there was a case out there, post Bilski, that said these kinds of application, filed pre-Bilski, can be fixed in view of the skill in the art.

    Thank you so much for taking the time and efort.

    ReplyDelete
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