Tuesday, May 22, 2012

BPAI finds claim interpretations involving destructive force to be unreasonable

Takeaway: In a variety of cases involving claim terms like "removable" and "detachable," the BPAI has reversed prior art rejections when the Examiner has interpreted these terms to allow for destructive forces rather than the forces encountered during normal operating conditions.


In Ex parte Miles (BPAI 2011) the claim terms at issue were "legs adapted to be removably attached" and "legs adapted to be removably secured." The Examiner took the position that neither phrase was a positively recited limitation, and thus only required the ability of the reference structure to be removed. The Examiner then stated that “the legs 76 of Henriques are capable of being removed, even if it requires a blow torch.” (Emphasis added.) The Board found the Examiner's interpretation to be unreasonable since it read the word "removably" out of the claims:
Under the Examiner’s interpretation, because it is possible to remove anything using a blow torch, every means of attaching or securing two parts is removable. This interpretation is incorrect because it would effectively expunge the word “removably” from the claim language. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous).

The Board then found that the ordinary meaning of the word "removably" was consistent with the usage in the Specification, which described removable legs as being attached by screws. Finally, the Board concluded that:
An artisan would interpret that removably secured or attached legs are those that they may be removed in the ordinary sense of the word, such as by unscrewing a screw. ... Consequently, removal by means such as a blow torch is not within the scope of claims 2, 10, and 16. (Citations omitted, emphasis added.) 

Ex parte Bernard (BPAI 2011) involved claims to a cable duct coupler. The phrases at issue were "releasable locking mechanism" and "release mechanism." After noting that "[v]irtually any two objects locked together can be separated via destructive means," the BPAI found that interpreting the phrases "to embrace a so-called 'release' that results in the destruction of one or more of the locked objects" would be unreasonable, as it would fail to give appropriate weight to release/releasable (citing Bicon Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) and Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)).

In Ex parte Wilson (BPAI 2009), the BPAI considered claims to a steering wheel arm rest. The independent claim included the phrase "a second section ... deforming out of interference with the vehicular operator’s ability to operate the steering wheel when the pressure from the operator's body ...." According to the Examiner, this element was taught in the reference by an arm rest whose position could be changed after unscrewing. The Board found this interpretation to be unreasonable, noting that a structure that "requires disassembly and reassembly and permits the driver to push against cannot reasonably be considered a structure that is capable of deforming out of interference as has been claimed."

In Ex parte Mogensen (BPAI 2011), the BPAI considered claims to an injection device. In interpreting the claim limitation "part of said infusion set positioned removably from and within said device housing," the Examiner said that "removably" required that the reference structure "only need be capable of performing the recited function of being removable, [rather than actually] performing the function of being removed." According to the Examiner, the needle in the reference "is capable of being removed by cutting, snapping, breaking, etc." The Board found that this interpretation was unreasonable. "A person of ordinary skill in the art would not removably position Miskinyar’s needle 22 with respect to the housing 10 by cutting, snapping, or breaking the needle 22 because this might leave a piece of the needle in the patient thereby possibly harming the patient."

The claims in Ex parte Smith (BPAI 2012) were directed to a medical device. The claim term at issue was a "passive articulation joint for connecting an end effector to a control handle.." The Examiner asserted that this term read on the reference structure because "the end effector can be moved or articulated via a great enough external force, even if such an action would damage the device." The Board found this interpretation to be unreasonable: "Any joint would fail or yield under a great enough force. The
Examiner’s interpretation essentially disregards the term 'passive'. "

TechPharma Licensing v Novo Nordisk (BPAI 2012) was a reexamination appeal for claims to an injection needle. The claim term at issue was "a lock for irreversibly locking the safety shield in its biased position." The BPAI reviewed the Patentee's specification and several dictionaries to arrive at the following interpretation:
In view of these definitions, we interpret the limitation at issue as requiring a lock which cannot be "unlocked" so that the safety shield is locked in the extended position so that it can no longer be retracted (for example, without damaging the lock mechanism) and which lacks a structure or mechanism (including a special tool) to unlock it. With such interpretation, we give full weight to the term "irreversible" and the limitation "a lock for irreversibly locking" being mindful that operation of most mechanical devices such as locks can be reversed by force if damage thereto is acceptable.

My two cents: The Board puts "reasonable" back in "broadest reasonable interpretation." The approach taken by the Board in these cases is representative of most mechanical cases I've seen -- with an important stipulation. Namely, these are all cases in which the Board treated the claim language at issue as a limitation that affected structure,  rather than "capability" or "intended use" limitations. Which is interesting, because its not inconceivable that the Board could find "adapted to be removably secured" and "for irreversibly locking" to be capability/intended use. Yet the Board summarily concluded that those phrases were structural limitations.

Getting out of the realm of "capability" seems to be the key to getting an interpretation in which normal operating conditions are taken into account and blow torches are ignored. If you're in the realm of "capable" then you get results like Ex parte Stryker Endoscopy (blog post here). In that case, a "needle configured to drive a suture against tissue without severing the suture" was interpreted to cover a blunt tip because with enough force, such a tip would perform the claimed function.

Friday, May 18, 2012

Applicant is granted petition to stop Examiner from reopening prosecution, but Examiner ignores decision

Takeaway: An Applicant pursued an appeal, only to have the Examiner reopen prosecution not once, but twice. After the second reopening, the Applicant filed a petition requesting that the Examiner be ordered to respond with an Answer. The petition was granted, but the Examiner ignored it and reopened prosecution a third time. The Applicant petitioned again, the petition was granted, and this time the case went on to appeal. Three years after the Applicant filed the first Appeal Brief, the Board reached a decision that affirmed some rejections and reversed others. (Appl. 10/419,934, available through Public PAIR.)

Application of Torris
Appl. No. 10/419,934
Technology Center 3700

An Applicant filed a medical device application with claims directed to a needle assembly and methods of assembly. On the first Final Office Action, the Applicant filed a Notice of Appeal and Pre-Appeal Conference Request. In response, the Examiner reopened prosecution with a Non-Final Office Action and a new ground of rejection. The Examiner switched to from obviousness to anticipation (using the same base reference) and explained his claim interpretation.

The Applicant amended claims to distinguish ("neck adaptable to fixed retain a needle hub"), and the Examiner maintained the anticipation rejection in a Final Office Action. The Examiner explained that the reference was "capable of adapting (of becoming or being made suitable) to a particular situation or use."

The Applicant filed a Notice of Appeal, simultaneously filing an Appeal Brief. The Examiner reopened prosecution again with another Non-Final Office Action that included the same rejections. The Office Action indicated that prosecution was reopened in order to "greater explain Examiner's claim interpretation and rejection."

The Applicant filed another Appeal Brief to reinstate the appeal, along with a Petition to the Director under 1.181(a)(3) ("supervisory authority"). The Petition requested "the Group Director to order the examiner to respond with an Examiner's Answer so that this case may be forwarded to the Board of Appeals for adjudication" in light of the facts presented with the Petition. The Applicant then briefly laid out the prosecution history.

The Petition was granted in less than three weeks. The Petition Decision noted that the record showed "a prolonged prosecution in this case" and that the Examiner had reopened prosecution twice. The Petition instructed the Examiner "to timely set up an appeal conference" and "to conclude the examination of the application as soon as possible." The Petition forwarded the application to the SPE for consideration of Appeal Brief. The Petition indicated that the Applicant should direct any inquiry about the decision to a designated Special Programs Examiner.

The Examiner then reopened prosecution again. In another Non-Final Rejection, the Examiner indicated that prosecution was reopened "to place a new prior art rejection on the claims." In this case, another anticipation rejection, but using a different reference.

The Applicant responded by filing an Appeal Brief to reinstate the appeal, and another 1.181(a)(3) Petition. The Petition again requested the Group Director to order the examiner to respond with an with an Answer and to forward the case to the BPAI. Once again, the petition laid out the facts of the prosecution history.

In less than 30 days, the Director granted the second Petition. The Petition Decision repeated much of the same language before about prosecution being prolonged and reopened multiple times. The Petition once again instructed the Examiner "to timely set up an appeal conference". This time, the Petition specifically gave the Examiner a time limit, instructing him to "conclude the examination within three months of the date of the filing of the Appeal Brief."

This time the Examiner complied, mailing an Examiner's Answer within 15 days of the second petition. The Applicant did not file a Reply Brief.

The BPAI issued a decision almost two years after the Answer, affirming some rejections and reversing others. The Applicant took the allowable claims. The patent issued about 6 months after the appeal decision.

My two cents: I'm impressed that the Applicant went to the trouble of filing a petition. I'm also encouraged that the Petition office responded so quickly. And of course annoyed that the Examiner ignored the first petition decision.

Interesting that the Director characterized this as "prolonged prosecution". I've seen a lot worse, in my own cases and in others I blog about. My personal record for seeing reopened prosecution is four times: after my fourth appeal brief, the Examiner finally sent a Notice of Allowance. Endless rounds of non-final Office Actions is another a form of prolonged prosecution which I see from time to time. 

This sort of petition is not a lot of money, in fees or in attorney time. But there is a cost. And it doesn't stop the clock, so you have to pursue the appeal at the same time. And based on other types of petitions I've seen, the petition process is rarely useful because the decision usually doesn't come in time.

Still, a petition feels right on principle. If the finality of an Office Action is improper, you have to give in or petition. Same with refusal to enter evidence/amendment, restrictions, drawing objections, and a host of other improper Examiner actions. If you never fight these things, then it stands to reason that Examiners will keep doing them.

Monday, May 14, 2012

BPAI rejects dependent "computer usable medium" claims for failing to limit the independent claim

Takeaway: The BPAI entered two new grounds of rejection under § 112 for a set of dependent computer-usable medium claims. The Board rejected under § 112 Fourth Paragraph for failing to limit the independent claim, in that the preamble of independent claim 11 read "a computer-usable medium comprising a computer product" while the dependent claims read "the computer product of claim 11." The Board also rejected under § 112 Second Paragraph as being indefinite, finding that an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims." (Ex parte Buros, BPAI 2011.)


Ex parte Buros
Appeal 2009009738; Appl. No. 11/268,931; Tech. Center 2100
Decided  June 20, 2011

The application was directed to aggregation of data using policies. The Examiner finally rejected all independent claims as being anticipated and all dependent claims as being obvious. A set of "computer usable medium" claims were also rejected under § 101.

The computer-usable medium claims read as follows:
     11. A computer-usable medium comprising a computer program product and operable by a data processing system for managing data, the computer program product comprising:
     program code for identifying a policy for managing the data in a data storage system;
     program code for locating raw data in the data storage system for processing to form located data;
     program code for aggregating the located data based on the policy by summarizing the located data to form aggregated data such that the aggregated data is in a condensed form with respect to the located data by not including all of the located data in the aggregated data; and
     program code for storing the aggregated data in the data storage system.

     12. The computer program product of claim 11, wherein the program code for identifying a policy for managing the data in a data storage system comprises:
     program code for retrieving aggregation metadata from a server to identify the policy, wherein the aggregation metadata contains information used to aggregate the located data.

According to the Examiner, the medium claims were "drawn to a form of energy." The Examiner explained that energy is "not a series of steps or acts and thus is not a process," "is not physical nor an object and as such is not a machine or manufacture," and "is not a combination of substances and therefore is not a composition of matter."

The Board affirmed some of the prior art rejections and reversed others. The Board did not reach the § 101 rejection of the "computer usable medium" claims, instead entering a new ground of rejection of the dependent claims under § 112 2nd Paragraph and/or 4th Paragraph. 

According to the Board, each of dependent claims 12-15 and 17 "purports to provide further limitations with respect to the 'computer program product' of the independent claim." However, as written the dependent claims do not require the "computer usable medium" of the independent claim. Therefore, each dependent claim is broader in this respect than the independent claim, and thus fails under § 112 4th Paragraph to further limit the claim from which it depends.

As to the indefiniteness rejection, the Board found that the scope of dependent claims 12-15 and 17 is not readily ascertainable because "the dependent claims appear to be directed to only a portion of the invention as set forth in independent claim 11." Therefore, an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims."

My two cents: I've seen at least a dozen ways of formulating what is commonly referred to as a "computer readable medium" (CRM) claim. In some cases, like this one, it can be hard to figure out what exactly is being claimed. Presumably the "medium" is claimed because case law has recognized this as an article of manufacture. But why claim the "product"? And do you claim "code" (as was done here) or do you claim steps, or .... what?

As this case shows, formulating dependent claims for CRMs can be even trickier than for independents. I don't think Examiners are picky about this, so perhaps you don't see any reason to be concerned. But I think the Board was right, and you might as well write your dependent CRM claims properly. This sort of problem is trivial to fix – in fact, the Applicant here fixed it after the BPAI decision. So why wait for the Board – or worse yet, an accused infringer – to bring up a 112 Fourth problem?

One unusual aspect of this case was that no independent claims went up on appeal. The Applicant filed an After Final amendment which cancelled all independent claims and rewrote various dependents into independent form. However, the Examiner refused to enter the After Final amendment, noting in the Advisory Action that it "raised new issues that would require further consideration and/or search" ! So the Applicant withdrew the independent claims and a number of dependent claims in the Appeal Brief, and thus only dependent claims were considered by the Board.

Why did the Examiner refuse to enter the rewrite-dependent-into-independent-form amendments? Such an amendment doesn't change the scope of the claim, so logically, how could it require further consideration, much less a new search? The Applicant argued that the amendment put the case into "better form for appeal", which is a category of amendment that is allowed under § 1.116. Even if § 1.116 doesn't require the Examiner to enter it, it does sound like that one that MPEP 714.13 suggests should be entered, namely, it requires only cursory review:

Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection.

Finally, from a practical standpoint, how much work could it possible be for the Examiner to enter this? Is the Examiner just hoping to push the Applicants into an RCE?

One more observation. As noted above, when the Examiner refused to enter the After Final amendments, the Applicant reacted by "withdrawing" the independent claims in the Appeal Brief. The other option would be to file an After-Notice-of-Appeal amendment that rewrites the dependents into independent form. The rules for entry of amendments after appeal (§ 41.33) are different than the rules for entry After Final (§ 1.116), such that the Examiner is required to enter this same amendment after appeal.

Sunday, May 6, 2012

BPAI finds Applicant did not properly claim priority to a PCT application

Takeaway: An Applicant argued on appeal that a reference was not prior art because the application on appeal "asserted" priority to a PCT application. The BPAI found that the priority claim was ineffective because it did not specify a relationship between the application on appeal and the PCT application. (Ex parte Gidwani, BPAI 2011.)


Ex parte Gidwani
Appeal 2010-005181
Application 10/272,812
Technology Center 1600
Decided June 28, 2011

The application involved claims to metformin, a drug used to treat diabetes. The Examiner rejected the independent claims as obvious over Matharu in view of Igari or Timmins.

During prosecution, the Applicant argued the merits of the primary Matharu reference.  In a footnote, the Applicant also argued that Matharu was not prior art: "MATHARAU was filed 27 June 2002. In contrast, the instant application asserts priority from a PCT application Serial No. PCT/IB2000/01404, filed on 2 October 2000. MATHARU thus does not qualify as prior art."

The Examiner responded in an Office Acton by indicating that "a review of the application does not reveal any evidence of national stage filing other than the first sentence of the spec. It is not claimed in the oath." The Office Action then reproduced portions of the MPEP referencing a petition for a delayed benefit claim under § 1.78.

The Applicant appealed the obviousness rejection, and once again argued both the merits of Matharu and its status as prior art. In the Appeal Brief, the Applicant argued that the specification contains a "specific reference to the prior application" as required by § 120 and "accordingly asserts an October 2000 effective filing date." The Appeal Brief reproduced the first paragraph of the specification:
Serial No. 09/857,077, filed April 2, 2002, for SUSTAINED RELEASE PHARMACEUTICAL COMPOSITIONS CONTAINING METFORMIN AND METHOD OF THEIR PRODUCTION, now pending, which is a national phase entry under 35 U.S.C. § 371 of PCT/IB00/01404 filed October 2, 2000, now pending.

The Applicant also addressed the Examiner's comment that national stage filing was not claimed in the oath:
The Examiner, however, ignores applicant's priority assertion, arguing that the Applicant must include its priority assertion not the Specification, but in the Inventors' Oath. Applicant respectfully disagrees because the Office's own procedural manual merely requires the priority assertion be made in "the application" - that is, in the oath, or in the specification, or in an application data sheet. See 35 U.S.C. § 120; MAN. PAT. EXAM. PROC. § 201.11. Applicant did precisely what the statute and the Office's own procedural manual requires. Matharu is thus not eligible as prior art.

In the Answer, the Examiner responded to the issue of Matharu's prior art status by pointing out that the statement in the specification did not identify "the relationship between the instant application and the application over which the priority has been claimed."

The BPAI found that the Applicant's specification did not identify a relationship between the application under appeal and the application mentioned in the Cross Reference section, as required by § 1.78. "Contrary to Appellants' contention, without a relationship, the Specification does not 'assert' an effective filing date for the invention claimed other than the filing date of the Application on appeal." The Board concluded that the claim to priority was not perfected, so that Matharu was prior art.

The Board then found that the Examiner had presented a prima facie case of obviousness, and so affirmed the rejection.

My two cents: Not really a lesson about appeal, but about claiming priority. It appears that this Applicant simply didn't understand the rules for claiming priority. Didn't do it right in the specification as originally flied. Didn't do it in the application transmittal as originally filed. Didn't file an ADS at filing. Didn't file a petition for a delayed benefit claim, which is how you fix this error if you don't catch it right after filing.

It appears that the Applicant realized the mistake after filing the appeal, since an ADS with a priority claim was filed while the case was awaiting a Board decision. Unfortunately, it was way too late for correction via an ADS. The Applicant should have filed a § 1.78 petition to perfect the priority claim, then filed an RCE to pull from Appeal and to tell the Examiner about the perfected claim. I'll bet the Examiner would have removed the Matharu reference.