Monday, November 26, 2012

Board explains proper determination of whether prior art controller is "capable of" performing claimed function

Takeaway: In several appeals from Technology Center 1700, the Patent Trial and Appeal Board has reversed rejections when the Examiner asserted that a controller would have been "capable of" performing functional language. In doing so, the Board cites to precedent dealing with mechanical apparatuses, such as In re Schreiber, but also to more recent cases dealing with electronics, such as Typhoon Touch Techs., Inc. v. Dell.

One of the claims in Ex parte Fischer was directed to a plasma deposition apparatus, and included "a controller ... adapted for changing a sense of direction of said flexible substrate in said chamber ..." The Examiner asserted that the "adapted for" language was intended use, and found that the controller in the reference would have been capable of performing the function. On appeal, the Applicant argued that "adapted for" was not intended use, and that the reference must teach a controller that is programmed to support the claimed function. The Board agreed. The Board looked to the Applicant's specification and found it described a controller that was programmed to control the valves in relation to the substrate direction. The claimed controller thus becomes "a special purpose computer structured via programming to perform the control ... recited in the claims" (citing In re Alappat). Comparing that controller to the prior art controller, the Board explained that the "capable of" test was a much higher bar than that used by the Examiner:

While it might be possible to install software that would allow Lu's controller to control the valve opening based on the sense of direction of the substrate, the "capable of" test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a "controller", see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) [*22]  (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir. 2010)), that is not the case here.
(Emphasis added.)

Ex parte Stengelin included claims to a fuel cell system, including a cell voltage monitoring sub-system "configured to" perform various recited functions such as "determine if a wire connection has failed by measuring the voltage of each fuel cell in the fuel cell stack". The Examiner dismissed the functional language as not adding any structure to the monitoring sub-system, finding that neither the specification nor the claims themselves explain "what in the fuel system actually performs said function." The Board found error in the Examiner's application of the "capable of" rule.

The Board first noted that the Applicant's specification described an algorithm for determining whether various components in the fuel system have failed. The Board then explained the proper standard for determining whether a prior art apparatus is "capable of" performing a claimed function. 
Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to establish such capability recited in claim 1, the Examiner must demonstrate that the prior art cell voltage monitoring sub-system possesses the necessary structure, hardware or software, for example, the programming, to function as claimed. The prior art structure must be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed.Cir.2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id.
The Board then reversed, because the Examiner admitted that "neither reference is programmed or otherwise structured to function as claimed," nor did the Examiner "rely upon any reasoning why one of ordinary skill in the art would have configured the cell voltage monitoring subsystem to function as
claimed."

The claims in Ex parte Wheat were also directed to a fuel cell system, including "a controller that controls said hydrogen supply and said air supply to power said heater to warm said fuel cell stack and said water supply when said vehicle is not running" (emphasis added). The reference taught using a programmable logic controller to maintain the temperature of the fuel cell at its optimum operating temperature while the vehicle is running. Examiner took the position that the controller in the reference nonetheless satisfied the limitation at issue, because the structure of the controller did not depend on whether the vehicle is running. The Board found error in the Examiner's position.

The Board discussed the line of case law that requires an apparatus to be distinguishable on structure, then explained how this case law is applied to controllers, where algorithms define structure:
     The concept behind the “capable of” test is that an apparatus that is inherently capable of performing the function recited in the claim is an apparatus no different in structure from the apparatus of the claim. For instance, a parachute defined as opening in a certain functional way, does not have a different structure than one not disclosed as so opening if the prior art parachute is inherently capable of opening as claimed. See In re Ludtke, 441 F.2d 660, 664 (CCPA 1971). A funnel-like structure that functions to control the flow of oil is really no different in structure from a funnel-like structure defined as shaped to dispense popcorn kernels if the oil funnel is capable of dispensing popcorn in the same way. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Defining a structure in terms of its function does not necessarily distinguish it structurally from a prior art structure capable of performing the function.
     However, the situation is more complicated when what is being defined by the claim limitation is a controller. The function of a controller serves to define structure by defining software and/or hardware for performing the function.

Therefore, to be "capable of" performing the recited functions, the prior art controller must "contain some mechanism or software program for performing the required control". Since it did not, the Board reversed. Moreover, the Board explained that the “capable of” test requires that the prior art structure be capable of performing the function without further programming, so it is irrelevant to anticipation that "it might be possible to install software that would allow the prior art controller to warm the fuel cell stack and the water supply when the vehicle is not running."

The claims in Ex parte Kamihara were also directed to a fuel system, including "a control unit configured to control the electric power or electric current extracted from the fuel cell stack in accordance withas not adding any structure." The Examiner dismissed the "configured to" phrase as not adding any structure, asserting that “nothing in the disclosure . . . is drawn to being programmed or having programs” and that “only a general purpose computer is supported by the disclosure.” On appeal, the Applicant argued that the claimed control unit was a special program computer “programmed or otherwise configured to perform” the claimed functions. The Board reversed the rejection, citing In re Schreiber and using the same reasoning found in Ex parte Wheat:

Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the control unit must possess the necessary structure, hardware or software, for example, the programming, to function as claimed. The Examiner indeed de facto admits that neither reference nor their combination is programmed or otherwise structured to function as claimed, nor does the Examiner rely upon any reasoning why one of ordinary skill in the art would have configured the control unit to function as claimed.

The Examiner in Ex parte Dewey was similarly reversed. The claims were, once again, directed to a fuel cell system, and included "a controller for controlling the amount of heat provided by the heater ... " The Examiner asserted that the functional language did not distinguish over the prior art apparatus since the reference taught "a fuel cell stack, a heater circuit including a heater and a controller, which are the same structural features as those claimed by Applicant." The Board reversed, explaining as follows: 
     However, contrary to the Examiner's apparent belief, the mere fact that Breault's fuel cell system includes a controller is not an acceptable reason to believe that the controller inherently possesses the capability of performing the function required by Appellant's claim 1 controller. For the reasons detailed in the Appeal Brief and Reply Brief, the claim 1 controller is patentably distinct from a controller which is not programmed or otherwise designed to perform the claim 1 function. (Internal citations omitted.)
     Similarly, as correctly argued by Appellant, the record provides no acceptable reason for the Examiner's above presumption "that [in Breault's system] the current and voltage flow through the heater are also being monitored by the controller."

My two cents: Good stuff for Applicants. This sort of broad brush treatment of the "capability" of a reference isn't common in the art units where I do most of my work. But it appears to be all too common in Tech. Center 1700. I realize that none of these decisions are precedential. Even so, if faced with such a rejection, I would borrow the reasoning used by the Board in these cases. It's a good way to school the Examiner in how case law such as In re Scheiber is properly applied to computer or controller limitations.

Note that the Typhoon and Microprocessor Enhancement cases are infringement suits. However, the stuff about capabilities and functional language relates to claim construction, not infringement analysis. And while a different standard is used for claim construction standard during prosecution, I say the "capabilities" rule used by the Federal Circuit in these cases applies equally to prosecution.



91 comments:

  1. I think it's Patent Trial and Appeal Board. (Not AppealS.)

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  2. There are probably other typos in there if you want to point them out ass well.

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  3. Through the Examiners' reasoning, any processor would invalidate any software claim. Maybe that was their intention. Nice to see them shot down.

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    1. Shot down? lol, I think you mean that the board made a clear error in some cases, as it has in the past before these.

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    2. >any processor would invalidate any
      >software claim.

      Yes, that conclusion does seem to follow from this line of reasoning.

      Yet I don't see it much in other Tech. Centers that deal with software running on general purpose computers, as opposed to embedded systems. The Examiner thinking described in my post seems much more common in TC 1700 and 3700.

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  4. Somewhere, 6 is weeping and blubbering "... but Dudas told us we could reject claims like that .... my hero, did he lie to us??? ... I'm so confused"

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    1. Are you kidding? The nonsense of Alappat has been well known to me for awhile. The only thing sad is that nobody with a lick of sense presents these cases, or takes one above the Federal Circuit to get it straightened out to be in accordance with the law.

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    2. 6 writes ... "why doesn't the USPTO figure out that the Federal Circuit is wrong? why don't they appeal it to SCOTUS ... this is such an important issue ... QQ ... QQ ... QQ"

      I feel your pain .... hahahaha

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  5. Is there any reason why applicants pursue claims with "ctroller/processor configured to..." instead of "controller programmed to..." Seems like that could resolve a lot of issues.

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    1. Interesting question.

      IMHO, if you literally claim a processor, then "configured to" is probably no different than "programmed to". So yeah, might as well go with "programmed to" and avoid at least some of these types of rejections.

      OTOH, I view "controller" as slightly broader, to perhaps encompass both specialized hardware and a processor. Depending on the type of hardware controller, a POSITA may or may not view the hardware as being "programmed". (Is an ASIC programmed?)

      I'm not sure that most Applicants put a lot of thought into the choice of phrasing for this type of claims. Absolutely they think about the exact words used in the functional language. But I think a lot of Applicants have boilerplate phrasing for controller/computer/processor/logic, as well as the configured/adapted/for/-ing phrase.

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    2. I prefer "processor configured to" over "processor programmed to." Arguably, a "processor programmed to" might exclude a hard-coded processor. Maybe not ... but there is an argument to be made. Also, I try to avoid anything such as "computer program" or "software" in my claims. Certain (uninformed) examiners freak out when they see that language ... why provoke them.

      Finally, "configured to" implies a "configuration" (i.e., a particular structure) ... which got around the "intended use" arguments. Regardless, Typhoon Touch put an end to that nonsense.

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  6. BTW these are really great, helpful cases, Karen. Thanks!

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  7. What is funny about the clear error in both of these cases, and in Alappat itself, is that according to the director we don't treat software differently.

    "However, the situation is more complicated when what is being defined by the claim limitation is a controller."


    Lulz lulz lulz. Some claim limitations are "more equal" than others say the pigs.

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  8. "It's a good way to school the Examiner in how case law such as In re Scheiber is properly applied to computer or controller limitations."

    A good way to school the examiner in how the Federal Circuit has been misapplying the law? Mhmmm, I suppose so, everyone should have a chance to learn about it, indeed, it is starting to make mainstream news outlets now.

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  9. What would be interesting is for an examiner to reopen one of these cases on 112 1st grounds and give a rejection that since the claim simply must be construed to cover all structures which correspond to the algorithm, according to the board's reasoninglol then the applicant has not provided sufficient written description for even one such strucutre, much less the infinite amounts of physicsl configurations which are presumed to exist.

    Although it would be better if this were raised prior to the appeal.

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    1. >since Claim must be construed to cover
      >all structures which correspond to the
      >algorithm, according to the board's
      >reasoning, applicant has not provided
      >sufficient written description for even
      >one such structure

      Where in these decisions do you see "construed to cover *all* structures"?

      As I recall, the Board said that the App's spec disclosed a general purpose controller in conjunction with a specific algorithm. The Board then said (relying on Alappat) that the structure is therefore the controller plus the algorithm. I don't see any mention of *all* structures which "correspond" to the algorithm.

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    2. "The Board then said (relying on Alappat) that the structure is therefore the controller plus the algorithm. I don't see any mention of *all* structures which "correspond" to the algorithm."

      If you recall, the Alappat claims were in the form of "means plus function." The Supreme Court disallowed functional claiming at the point of novelty, but that was legislatively overruled by what is now 35 usc 112(f). However, the overrule was limited to claims "expressed as a means or step for performing a specified function," with the claim construed (limited) to cover "the corresponding structure, material or acts described in the specification and equivalents thereof."

      I haven't looked at these particular claims, but there are "configured to" claims that are invalid for lack of enablement because of functional claiming at the point of novelty -- think "software" -- or are "means plus function" claims in disguise (sec 112(b) indefiniteness then comes to mind). There can be big problems if they are indeed 112(f) claims, because of the rigid requirements about disclosure that the Fed. Cir. has developed when it comes to software in mpf claims -- sec 112(b) (indefiniteness) invalidates the claims if the algorithms are not sufficiently described.

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    3. "The Supreme Court disallowed functional claiming at the point of novelty"

      Cite please.

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    4. "Cite please."

      Halliburton v. Walker, as later modified by Faulkner v. Gibbs.

      Judas Priest, do we have any patent lawyers in the house?

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    5. "Judas Priest"

      THE DRINKING GAME CONTINUES!!!!!

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    6. "Judas Priest, do we have any patent lawyers in the house?"

      And a few trademark lawyers. By the way, Judas Priest called. They want you to start indicating the trademark status of their name whenever you post.
      http://tess2.uspto.gov/bin/showfield?f=doc&state=4006:k7vugm.2.1

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    7. "Where in these decisions do you see "construed to cover *all* structures"? "

      All "controller" structures, sorry, I was typing in a hurry.

      "As I recall, the Board said that the App's spec disclosed a general purpose controller in conjunction with a specific algorithm. The Board then said (relying on Alappat) that the structure is therefore the controller plus the algorithm. I don't see any mention of *all* structures which "correspond" to the algorithm. "

      "that the structure is therefore the controller plus the algorithm."

      No, not that the structure "is" "therefore" the controller plus the algorithm, that the structure is supposedly described by the controller plus the algorithm. Remember, claim limitations are words, and they describe things, they are not the things themselves.

      In other words, the board here chastised the examiner for not going the extra mile, construing the claim properly according to Alappat as being limited to controllers which are either described as having the functionality, or, in the alternative, and most importantly, have structure sufficient to provide such functionality. Then, in such a case the examiner needs to go the extra step in construing the claim to note what structure is fairly described by the controller + the algorithm description of "structure", which, here is a controller with at least one one or one zero stored thereon. The examiner must then find such a structure, and apply it properly. Or find a controller which implicitly would have at least one one or one zero stored therein.

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    8. d0c87888 gets PWND again!

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    9. "Halliburton v. Walker, as later modified by Faulkner v. Gibbs."

      Interesting ... horribly written ... and effectively dead.

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    10. What good are these cases when you have Examiners issuing 101 rejections on the basis that the word "programming" can be interpreted as referring to activities of the human brain.

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    11. "and effectively dead."

      Now that you have (ostensibly) read at least two cases (congrats), now spend some quality time with the legislative history of what was originally 35 usc 112, third paragraph, enacted in response to Halliburton, and report back. We assume that, to our benefit, the insightful analysis of legislative history will at least equal the stunning clarity of your unimpeachable elucidation of Supreme Court jurisprudence.

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    12. From Greenberg v. Ethicon Endo-Surgery, 91 F.3rd 1580 (Fed. Cir. 1996)

      As this court has observed, "[t]he record is clear on why paragraph six was enacted." In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1849 (Fed.Cir.1994) (in banc). In Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3, 71 USPQ 175 (1946), the Supreme Court held invalid a claim that was drafted in means-plus-function fashion. Congress enacted paragraph six, originally paragraph three, to overrule that holding. In place of the Halliburton rule, Congress adopted a compromise solution, one that had support in the pre-Halliburton case law: Congress permitted the use of purely functional language in claims, but it limited the breadth of such claim language by restricting its scope to the structure disclosed in the specification and equivalents thereof. See Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1041-42, 25 USPQ2d 1451, 1453-54 (Fed.Cir.1993); In re Fuetterer, 50 C.C.P.A. 1453, 319 F.2d 259, 264 n. 11, 138 USPQ 217, 222 n. 11 (1963).

      Did you notice the statement "[i]n place of the the Halliburton rule, Congress adopted a compromise solution …"

      What did I write? Let me remind myself … oh yes, "Halliburton … effectively dead."

      I'm not seeing the error in my statement. Any "unimpeachable elucidation" on your part that you would like to share with the rest of us?

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    13. "Any "unimpeachable elucidation" on your part that you would like to share with the rest of us?"

      Gee, I don't know. Maybe you can school us on whether the Federal Circuit or the Supreme Court is the ultimate authority on the law.

      Even from what you cut and pasted, you see that the "compromise" only applied to means plus function claims. So Halliburton is partly disabled, but definitely not dead.

      I'll lead the seminar after you go do what I suggested -- read the legislative history. We both know that will happen when pigs fly.

      Just keep arguing (to yourself).

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    14. "Gee, I don't know. Maybe you can school us on whether the Federal Circuit or the Supreme Court is the ultimate authority on the law."

      Gee ... I don't know ... maybe you should think about what happens once Congress steps in to speak on a topic. In that case, Supreme Court precedent doesn't mean a hill of beans. Congress makes the law -- not SCOTUS.

      "So Halliburton is partly disabled, but definitely not dead."
      Well, I'm sure you'll have no problem listing all the Federal Circuit or SCOTUS cases that cite the 'non disabled' portion of Haliburton.

      "Maybe you can school us on whether the Federal Circuit or the Supreme Court is the ultimate authority on the law."
      I can school you on who has interpretive authority regarding the law – that is the Courts (e.g., the Federal Circuit) and not the administrative branch (i.e., the USPTO). I can also school you on whether the USPTO can ignore the Federal Circuit – they cannot. I can also school you that CCPA precedent is binding on the Federal Circuit. As such, when the CCPA/Federal Circuit says Halliburton is dead … it's dead.

      FYI … you do recall In re Swinehart, 439 F.2d 210 (CCPA 1971)? This was a case in which a claim was rejected under 35 USC 112. The Board's statement was "Claim 24 stands rejected as improperly functional in that it distinguishes over the unsatisfactory material of appellants' figure 3 merely in the functional term "transparent to infrared rays." We agree with the Examiner in this respect, as transparency of the claimed material cannot be treated as an inherent, characteristic property, in view of the fact that the composition of appellants' Example V (figure 3) lacks this property, yet is made of the same materials as appellants' Example I. * * * This claim is not the type covered by a proper functional limitation pursuant to 35 U.S.C. 112, since the language in question does not define a means or a step, or a distinguishing ingredient."

      The CCPA stated "We are convinced that there is no support, either in the actual holdings of prior cases or in the statute, for the proposition, put forward here, that 'functional' language, in and of itself, renders a claim improper."

      You can start your seminar anytime now ...

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    15. What's that sound? Oh yeah, somebody arguing.

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    16. Wow! What a high caliber discussion between well-educated professionals who are the very embodiment of courtesy and respect.

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    17. The reason why the USPTO/PTAB types are clinging to Halliburton is that they cited it within Ex parte Miyazaki. It doesn't make them look good to cite "effectively dead" case law in a precedential Board decision -- particularly one in which they attempted to create substantive law.

      When will the PTAB learn that it is their job to review decisions of the examiner -- not act as a mini-Federal Circuit?

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    18. "When will the PTAB learn that it is their job to review decisions of the examiner -- not act as a mini-Federal Circuit?"

      It's only gonna get worse with all the new "trial" APJ's over there.

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    19. "It's only gonna get worse with all the new 'trial' APJ's over there."

      Quite possibly. However, maybe they've hired some people at the PTAB that actually understand case law. That'll be a refreshing change.

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    20. I saw a PTAB decision a few days ago where a new, non-lifer APJ cited the correct law on 112, 2nd (claims only indefinite if insolubly ambiguous) and not the nonsense, non-law Miyazaki. That was refreshing. Let's hope they hire a few more like that.

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    21. "I saw a PTAB decision a few days ago where a new, non-lifer APJ cited the correct law on 112, 2nd (claims only indefinite if insolubly ambiguous) and not the nonsense, non-law Miyazaki."

      Damn. And I thought _I_ was a wonk.

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    22. https://dl.dropbox.com/u/22398979/year2012/2611/affirmed-in-part/Golle.pdf

      New APJ Medlock. Clearly she's not buying the bullsh!t of the former regime of lifer Fleming and his cronies.

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    23. Sounds like a good candidate for an examiner request for rehearing for not following binding PTAB precedent.

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    24. The only thing with a lower success rate than an applicant request for rehearing is an examiner request for rehearing. So good luck with that. I'd give you full credit if you could even manage to get your useless, do nothing, know nothing SPE and/or TC Director to approve submitting the request.

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    25. "Sounds like a good candidate for an examiner request for rehearing for not following binding PTAB precedent."

      Except that the PTAB cannot make precedent on substantive law.

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    26. "Except that the PTAB cannot make precedent on substantive law."

      Not sure what you mean by "substantive law." Cannot the PTAB make precedent that is binding on the PTAB?

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    27. "Not sure what you mean by 'substantive law.'"
      Don't worry ... you and the USPTO both have problems there.

      "Cannot the PTAB make precedent that is binding on the PTAB?"
      This is where they try to get tricky .... "but, but, we can make binding precedent on ourselves." However, if that binding precedent involves substantive law, then it is a no-no. See Tafas v. Doll, 559 F.3d 1345, 1352 (Fed. Cir. 2009),

      The Board is NOT a court -- it is an administrative tribunal. Look at 35 USC 6:
      (b) Duties.— The Patent Trial and Appeal Board shall—
      (1)on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section;
      (2)review appeals of reexaminations pursuant to section;
      (3)conduct derivation proceedings pursuant to section; and
      (4)conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.

      There is nothing about making substantive law there. Moreover, to the extent that the USPTO makes rules/law that conflicts with Federal Circuit precedent, Federal Circuit precedent prevails and the USPTO's rules/law are set aside. See Koninklijke Philips Electronics N.V. v. Cardiac Science Operating Co., 590 F.3d 1326, 1337 (Fed. Cir. 2010).

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    28. "Not sure what you mean by 'substantive law.'"

      You must be one of the lifer APJ's.

      Lulz

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    29. It's not important that you explain what you think you mean by "substantive law," as long as you think you know what it means, I guess. Makes it easier for you to argue.

      However, the Tafas v. Doll cite you rely on says that the USPTO has been granted the authority to regulate the conduct of proceedings in the Office. It does not address what precedent is binding on the Board. Nor does it address internal operating procedures of the Board, other than to say that the USPTO can regulate the conduct of its own proceedings.

      Got another case?

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    30. You may want to read Marbury v. Madison. It's the case where CJ Marshall said, "[i]t is emphatically the province and duty of the judicial department to say what the law is." 5 U.S. 137, 177.

      BTW, here's the quote from Tafas v. Doll that you apparently missed (i.e. didn't read far enough down the page to get): "We agree with the district court that § 2(b)(2) 'does not vest the USPTO with any general substantive rulemaking power.'"

      The determination of what a claim must include to satisfy 35 USC 112, 2nd is a determination of "what the law is" with respect to 35 USC 112, 2nd. That is the province of the judiciary (i.e. the Fed. Cir. or Supreme Court), not the executive (i.e. the PTO).

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    31. That's all very interesting. You may now address whether the PTAB can make precedent that is binding on the PTAB.

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    32. Have you actually read Tafas v. Doll? Is it your theory that an internal board rule is a "general substantive rule" -- "substantive law" remains undefined -- because it forecloses an appellant's right to argue in federal court that the Board precedential decision is contrary to law? If that's not the theory, what, exactly, is?

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    33. "That's all very interesting. You may now address whether the PTAB can make precedent that is binding on the PTAB."

      It's hard to tell if you are really as dense as your posts suggest, or if you are simply being provocatively dense. I guess it doesn't really matter. You're as dense as they come, either naturally or by choice.

      Nobody is disputing that the PTAB may issue decisions that are precedential (i.e. binding on future panels). The issue we were discussing is whether their "precedential" decision in Miyazki is within the scope of their duties/abilities. It is clearly not, as new APJ Medlock clearly demonstrated in her recent decision, because the Miyazaki "precedent" is an attempt by the Board to make substantive law, which they have no authority to make. As such, Miyazaki, although designated as "precedential" by the tard APJ's who wrote it, is nothing. It is not binding on any future panel of the Board, on any applicant, or on any Article III court. It is what it always was, the blatherings of a circle jerk of ignorant APJ's.

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    34. According to the PTAB website --

      "All judges, including the Chief Judge, are bound by a published or otherwise disseminated Precedential opinion of the Board unless the decision supported by the opinion is (1) modified by the Court of Appeals for the Federal Circuit, (2) inconsistent with a decision of the Supreme Court or the Court of Appeals for the Federal Circuit, (3) overruled by a subsequent expanded panel, or (4) overturned by statute."

      The rule is a "general substantive rule" and thus invalid because ______________ [see how easy -- just fill in the blank].

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    35. Miyazaki falls under category (2) (inconsistent with decisions of the Supreme Court (e.g. Marbury v. Madison) AND the Fed. Cir. (e.g. Tafas)).

      You're right. That was easy.

      No APJ is bound by Miyazaki. Don't believe me? Then go ask APJ Medlock.

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    36. I'm beginning to understand your problem. You are confusing rules and law. Fact is, only Congress can make "substantive law."

      The rule is not invalid because you happen to disagree with a precedential decision. The rule is invalid because _______________ [just fill in the blank]

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    37. "Fact is, only Congress can make 'substantive law.'"

      You're naturally dense. Nobody could choose to be as dense as you are.

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    38. BTW, what "rule" are you talking about?

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    39. "BTW, what "rule" are you talking about?"

      "All judges, including the Chief Judge, are bound by a published or otherwise disseminated Precedential opinion of the Board unless the decision supported by the opinion is (1) modified by the Court of Appeals for the Federal Circuit, (2) inconsistent with a decision of the Supreme Court or the Court of Appeals for the Federal Circuit, (3) overruled by a subsequent expanded panel, or (4) overturned by statute."

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    40. I have to conclude that only Congress can make 'substantive law' because nobody has been able to define what they mean by 'substantive law.'

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    41. Uhm, that's not a "rule" it is one of the standard operating procedures of the Board. It is not a "rule" such as those included in the Code of Federal Regulations (i.e. the CFR). Maybe you've heard of those. You can find them in that MPEP thingy. That's the Manual of Patent Examining Procedure. Go to the index and look under "Patent Rules."

      I guess you missed what I posted above, as you are like all examiners and don't actually read anything, so I'll repeat it for you: Nobody is disputing that the PTAB may issue decisions that are precedential (i.e. binding on future panels).

      As you're clearly slow in the uptake, I'll repeat it again: Nobody is disputing that the PTAB may issue decisions that are precedential (i.e. binding on future panels).

      One more time: Nobody is disputing that the PTAB may issue decisions that are precedential (i.e. binding on future panels).

      Heck, it can't hurt to repeat it one more time, maybe it'll sink in: Nobody is disputing that the PTAB may issue decisions that are precedential (i.e. binding on future panels).

      Let's really go for maximum effect here: Nobody is disputing that the PTAB may issue decisions that are precedential (i.e. binding on future panels).

      Do you understand that? Nod your head up and down if you do, and shake it side to side if you don't. Go ahead, we'll wait.

      Delete
    42. BTW, Black's law dictionary has a very nice definitin of substantive law. Even you may be able to understand it.

      Delete
    43. So the answer to whether the PTAB can make precedent that is binding on the PTAB is -- YES!!!

      Judas Priest, that shouldn't have taken so long.

      Carry on.

      Delete
    44. Yes, but unfortunately that was never the question.

      Please do carry on though.

      Delete
    45. "Yes, but unfortunately that was never the question."

      See December 5, 2012 5:57 PM in this thread.

      Is it your normal practice to argue contrary to the record? Do examiners and judges find that sort of argument persuasive?

      Delete
    46. "See December 5, 2012 5:57 PM in this thread."

      That's the post where you first displayed your ignorance. So yes, when examiners demonstrate their cluelessness by introducing non sequiturs into the record, it is my normal practice to 1) correct them and then 2) refocus the discussion on the original question.

      Just like I did with you in this thread.

      Delete
    47. Nice change of subject. Do examiners and judges find that sort of thing persuasive?

      Non-sequitur? Do you own a dictionary?

      The answer to whether PTAB precedent can be binding on the PTAB is irrelevant to whether an examiner should request rehearing of a decision for not following PTAB precedent because ______________________ [go ahead. you can do it.]

      Delete
    48. "Nor does it address internal operating procedures of the Board, other than to say that the USPTO can regulate the conduct of its own proceedings."

      I never said anything about PROCEDURAL issues. There is a difference between procedural law and substantive law. I agree that the PTAB can govern their own procedures. However, when they step into the area of substantive law, they have stepped too far.

      I step away from a couple hours and look what shows up.

      Delete
    49. "The answer to whether PTAB precedent can be binding on the PTAB is irrelevant to whether an examiner should request rehearing of a decision for not following PTAB precedent because" there is no dispute as to whether the PTAB can issue precendential decisions. We all agree they can. The dispute is whether the Miyazaki decision is within one of the exceptions to the PTAB's ability to issue precedential decisions. Which it is. It is clearly inconsistent with Supreme Court and Fed. Cir. decisions, as I explained to you above.

      So congratulations on proving a point over which there was no disagreement, and winning an argument that you were having with no one but yourself. I assume you find that more enjoyable than actually knowing what you should know to do your job correctly.

      Delete
    50. "So the answer to whether the PTAB can make precedent that is binding on the PTAB is -- YES!!!"

      I don't think anybody disputed that. We didn't address that issue because it isn't as important as the real issue. The fact that the PTAB can issue a precedential opinion doesn't mean that the PTAB can issue a precedential opinion on all matters. Our comments were directed to the later (i.e., the real issue -- what the PTAB can or cannot issue precedential decisions on) rather than the former (whether the PTAB has the right to issue a precedential decision) because the later is the more important issue.

      Delete
    51. Let the trolling examinertard have his/her victory. He/she triumphed over the patent bar by proving that the PTAB may issue precedential decisions. Skillfully extracting an admission from us over such a hotly debated legal question. All we can do is acknowledge with humility his/her awesome legal talents.

      Delete
    52. "'The answer to whether PTAB precedent can be binding on the PTAB is irrelevant to whether an examiner should request rehearing of a decision for not following PTAB precedent because' there is no dispute as to whether the PTAB can issue precendential decisions."

      Socrates is a man. All men are mortal. Therefore, I own a Honda.

      Carry on. Really.

      Delete
  10. Fantastic cases. Thanks.

    ReplyDelete
  11. "Wow! What a high caliber discussion "

    Sorry if we offended your delicate sensibilities. Get out much?

    ReplyDelete
  12. It's called "professionalism." Something low-class scum like you know nothing about.

    ReplyDelete
    Replies
    1. "It's called 'professionalism.'"

      For an unmoderated, (mostly) anonymous internet blog, this is almost church-like behavior. You need to get out more. There are far more uglier things getting bandied about in other "legal" blogs.

      Delete
    2. Low-class scum is as low-class scum does.

      Delete
    3. Interesting ... calling someone "low-class scum" is the worst thing said by anybody on this thread.

      Delete
    4. Not really. I recall a post where it was stated that another poster performed an unnatural act on a portion of Osama Bin Laden's anatomy.

      Delete
    5. Not to mention all those posts where people are referred to as "tards."

      Delete
    6. "Not really."

      Notice the qualifier of "on this thread" -- not on this blog.

      "Not to mention all those posts where people are referred to as 'tards.'"
      That doesn't count because it is 6 saying it -- not a professional.

      Delete
    7. "That doesn't count because it is 6 saying it -- not a professional"

      It's not 6 referring to other examiners as examinertards so stop being such a tard.

      Delete
    8. 6 is the tardiest of the examinertards.

      Delete
  13. Hi Karen. This is great news in that the Board is being reasonable. Unfortunately, way too many Examiners still argue "configured to" = no patentable weight. You then are forced to go through the time and expense of appeal. Too many examiners don't care about board and court decisions.

    ReplyDelete
    Replies
    1. First, Karen, this is an extremely helpful collection of Board decisions. Thank you for your ongoing efforts to inform and educate. I have 20 years experience and you continue to inform and educate me.

      Second, regarding "configured to" language. In my experience, some Examiners are of the position that this language has magical properties to convert a claim element from something that is non-structral to structural. I am aware of no precedent that imparts these magical properties to "configured to". A recitation "a controller configured to [perform a function]" is no different in terms of the structure it defines from "a controller to [perform a function]" , "a controller for [performing a function]", "a controller that [performs a function]", " a controller which [performs a function]".

      In all cases, the controller (to, for, which, that, etc,) must implicitly or inherently be configured with the structure to perform the function because that is what the claim language calls for. The claim language calls for a device having a structure that performs the particular function.

      So, what's this fascination with "configured to"? It doesn't add or subtract any structure from the claim.



      Delete
    2. >no precedent that imparts these magical
      >properties to "configured to".
      >A recitation "a controller configured to
      >[perform a function]" is no different
      >in terms of the structure it defines from
      >"a controller to [perform a function]"

      I disagree. As most recently stated by the Fed Cir in Hulu, "a *programmed* computer contains circuitry unique to that computer". (Emphasis mine.)

      Hulu of course inherits that reasoning from Alappat. I acknowledge that both were about 101 rather than patentable weight. And Alappat was more narrowly about about 101 as applied to 112P6.

      Nonetheless, I read the "unique circuitry" statement as saying that a computer programmed with a particular functionality is structurally different than a computer programmed in another manner. At least, it's different at the time of execution.

      Delete
    3. >controller (to, for, which, that, etc,)
      >must implicitly or inherently be configured
      >with the structure to perform the function

      You're talking about the controller in the *reference*, right?

      >because that's what the claim language calls for.
      >The claim language calls for a device having a
      >structure that performs the particular function.

      I'm not following you. I think everybody agrees on that. The disagreement is to *how much* structure the reference must show.

      Suppose the claim recites "a controller configured to mix fuel and air in a predefined ratio".

      Are you saying the reference anticipates if it discloses a controller but no function whatsoever ... simply because the
      function gets no patentable weight?

      Are you saying the reference anticipates if it discloses a controller and the [different] function actuating a lever?

      Are you saying the reference anticipates if it discloses a controller and the [different but more simlar] function mixing air and water?

      Delete
  14. I see that the arguably worst APJ at the PTAB (Thu Dang) is up to her old tricks.

    https://dl.dropbox.com/u/22398979/year2012/2812/affirmed-in-part/Geng.pdf

    "'being configured to' language merely represents a statement of intended use of the light projector." I guess this APJ didn't get the message.
    It is a sad state of affairs when this APJ knows neither the law nor grammar.

    ReplyDelete
    Replies
    1. Yeah, even I can't defend her on that.

      Delete
    2. This is why I have little respect for the PTAB. You have APJ's that are blatently ignoring the law.

      Don't they have training sessions to go over Federal Circuit cases? Typhoon Touch came out 14 months ago. There isn't any excuse for the PTAB not to know the law.

      Delete
    3. APJ's are little more than glorified examiners. They know that they don't have to follow the law if following the law will lead them to a result they don't want or like. So if they want to affirm, even if the law is clear that they must reverse, they just make sh!t up to affirm. Same thing as when an examiner wants to reject but it's clear that rejection is improper. They then rely on the hope that they don't get appealed. APJ's know that appeals to the Fed. Cir. are relatively rare (relative to the volume of ex parte appeals decided every year), because they are expensive, so they just make up whatever they need to affirm and cross their fingers that applicant doesn't appeal. Even if they do get reversed, there are zero consequnces to them. So they have no supervision, and no consequences for getting it wrong, even if getting it wrong involves blatantly refusing to follow the law.

      Pretty sweet gig.

      Delete
    4. BTW, let's not let her fellow panel members off the hook either. They signed off on that decision too.

      Delete
    5. "So if they want to affirm, even if the law is clear that they must reverse, they just make sh!t up to affirm."
      Amen brother.

      "BTW, let's not let her fellow panel members off the hook either. They signed off on that decision too."
      I've seen a few dissents in my day. However, I suspect that most review the decision to make sure that they covered each claim/rejection and leave it at that.

      Delete
  15. "I've seen a few dissents in my day."

    Same here. But they are relatively rare.

    "However, I suspect that most review the decision to make sure that they covered each claim/rejection and leave it at that."

    Let's hope they are putting at least that much effort in.

    ReplyDelete
  16. Karen, great post. Any way you could list the application numbers for these decisions? The links you put have moved and it would be very helpful to have the application numbers.

    Thanks.

    ReplyDelete
    Replies
    1. I don't have the serial numbers easily available.

      The post includes links to all the decisions, and you can get the serial number from the decision. But I see the links are broken because of the recent reorg of the PTAB site. So ok, not as easy as it was before, but you can still search the PTAB database for the Applicant name, then go to the decision and grab the serial number from there.

      Delete