Sunday, March 3, 2013

Board says claim term, as defined in the specification, reads on the reference

Takeaway: The Applicant appealed claims to a meat processing system. The claim included the limitation "a wash station where at least one antimicrobial agent is applied to a hide." The Examiner relied on a reference that disclosed water applied to a carcass, and the Applicant presented evidence that a POSITA would not consider water to be an antimicrobial at the temperature disclosed in the reference. The Examiner noted that the claim did not recite a temperature, and that the Applicant's specification disclosed lower water temperatures and was thus was inconsistent with the evidence. The Board affirmed the rejection, finding that "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." (Ex parte Osborne, PTAB 2012.)

Details: Ex parte Osborne
Appeal 2011011685; Appl. No. 11/084,785; Tech. Center 3600
Decided  Aug. 28, 2012

A representative claim on appeal read:
35. A meat processing system comprising a series of stations in order:
     A first station for stunning an animal;
     A second station for exsanguinating the animal;
     A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
     A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
     wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.
The dispositive issue for the independent claims on appeal was the meaning of the term "antimicrobial agent."

The Examiner rejected system claim 35 as obvious over Lawler, Norrie, and Simon, relying on Norrie for teaching the "antimicrobial agent is applied ..." limitation. During prosecution, the Applicant argued that Norrie disclosed the application of high temperature water to soften the hair of the carcass. The Examiner explained in an Advisory Action that Norrie's high temperature water was considered antimicrobial because Applicant's specification taught "the use of water by itself as an antimicrobial agent and therefore the high temperature water of Norrie can be construed as an antimicrobial agent."

The Applicant appealed, and in the Appeal Brief introduced evidence to show that Norrie's high temperature water was not an antimicrobial agent:
Norrie's water temperature is not sufficient to act as antimicrobial in the context of the present invention. Norrie provides that the [applied water] may be in temperature zones of 45-60, 55-65 and 50-60 degrees C. This temperature is not high enough to provide antimicrobial action. See, for example, the Williams reference [Appendix XI], which provides evidence that when water is used as an antimicrobial intervention, the temperature of the water is 165 degrees F, 73 degrees C.
The Examiner replied to this argument in the Answer by noting that "Appellant's arguments are not consistent with the antimicrobial agents detailed in Appellant's specification," since the specification listed "water by itself." The Answer then commented on the Williams reference offered as evidence by the Applicant
[T]his Williams et al. evidence does not state the temperature of the water is critical in view of other water temperatures and as seen in para. 0054 of Applicant's specification, the water temperature detailed by Applicant is between 100-190 degree F and therefore the Williams evidence is not consistent with Applicant's disclosure and it is noted that the temperature of the water is not found on any of the claims on appeal.
The Board affirmed the rejection. The Board first looked to the following sentences in Applicant's Specification:
The antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
(Finding of Fact 1, emphasis in PTAB opinion.)
Based on this finding, the Board went on to find that "antimicrobial agent" encompassed water at the temperatures taught in Norrie. The Board explained its claim construction as follows:
The Specification defines an antimicrobial agent to be any “chemical or substance capable of killing, neutralizing or removing microorganisms.” (FF1.) The Specification further discloses that water is an antimicrobial agent. (FF1.) Thus, the limitation of ‘at least one antimicrobial agent” is interpreted to include water. The limitation of “a wash station where at least one antimicrobial agent is applied to the hide of a hide on animal,” as recited in claim 35, is interpreted to encompass applying water to the hide of an animal. ... As noted by the Examiner, Norrie uses water in the washing steps, and water is encompassed by the definition of an antimicrobial agent as provided in the Specification. (FFs 1, 2, 4.)
The Board explained that this definition trumped the evidence offered by the Applicant to that show water did not in fact act as an antimicrobial at the temperatures used in Norrie:
[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism. See Serrano v. Telular Corp., 111 F.3d 1578, 1582 (Fed. Cir. 1997)(“The inventors’ definition and explanation of the meaning of the word … as evidenced by the specification, controls the interpretation of that claim term).

My two cents: I had a lot of trouble understanding the Board's opinion. It's clear to me that the Board relied on a definition of antimicrobial agent in the Applicant's spec. ("[Applicant] expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism.") But how does the Board get from antimicrobial-means-killing-neutralizing-or-removing to water-is-an-antimicrobial-even-at-temperatures-that-don't-kill?

I do read the Specification statement "antimicrobial agent may be any chemical or substance capable of ..." as a definition of microbial agent. As such, the Applicant is bound by this definition, even it's different than what a POSITA would understand. But the Board went further, saying that the Applicant had defined antimicrobial in such a way that temperature was irrelevant. How so?

Surely the question of what chemicals or substances meet the kills-neutralizes-or-removing definition, is one of fact. Does water kill microorganisms at any temperature? This is not my area of expertise, but I think I know enough about science to say No.

In the Answer, the Examiner noted that "the temperature of the water is not found on any of the claims on appeal." This is a red herring, because the claim didn't say "water is applied to the hide". If it did, then sure, any teaching of applying water would anticipate the element, regardless of temperature. But since the claim instead said "antimicrobial agent is applied to the hide", we have to ask what a POSITA knows about water as an antimicrobial.

The Williams reference submitted by the Applicant said No, that "when water is used as an antimicrobial intervention, the temperature is 165° F." Whereas Norrie disclosed applying water at temperatures of 113-149° F.

The Examiner countered this argument by pointing to additional statements in the Spec:
[0054] The heater 108 may heat the wash solution to a temperature ranging from about 100 to about 190 degrees Fahrenheit. In a further embodiment, the heater 108 may heat the wash solution to a temperature ranging from about 140 to about 150 degrees Fahrenheit. Alternatively, the heater 108 heats the wash solution to another temperature known to kill microbes.
According to the Examiner, these statements showed that "the Williams evidence is not consistent with Applicant's disclosure." Wrong. Let's assume for the sake of argument that if the Applicant misstates a technical fact, he's bound by it. So if the Spec really did say that water has an antimicrobial effect at 100° F, then the reference anticipates.

But wait ... the Spec didn't say that. The Spec disclosed various embodiments that heat water to different temperatures. Not an admission that water is antimicrobial at these temperatures. In fact, you could argue that the last sentence ("Alternatively ... to another temperature known to kill microbes") means that water does not kill microbes at the other listed temperatures.

So I say the Examiner is wrong, and the rejection is in error.

However, I suspect that the Board affirmed the rejection based on entirely different reasoning -- and did a terrible job of explaining this. I'll discuss this in my next post.

38 comments:

  1. "However, I suspect that the Board affirmed the rejection based on entirely different reasoning -- and did a terrible job of explaining this. I'll discuss this in my next post."

    Waiting with baited breath here, Karen.

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  2. I don't have the Specification in front of me. So I'll be relying on only the facts in Karen's post.

    It sounds like the Board allowed the Applicant to be his own lexicographer and redefine the term "antimicrobial agent" as an agent that does not necessarily kill microorganisms.

    The Specification defines water as one embodiment of antimicrobial agent. The reference discloses applying water to animal hides. The Applicant's evidence suggests that water cannot kill microorganisms at the temperature disclosed in the reference. So under the BRI in light of the Specification, the claim limitation "antimicrobial agent" must include non-microorganism killing property, otherwise there would be an enablement issue (the Specification says water is antimicrobial, yet the Applicant says water isn't [at the temperature disclosed in the reference]; so how does this work?).

    It seems like the Applicant should have argued (and the Board should have realized/considered) that the water in the Specification inherently or obviously has a temperature of at least 73 degrees C for it to have microorganism killing property (i.e., antimicrobial).

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  3. The spec states that the "antimicrobial agent" may be any chemical or substance capable of --removing-- microorganisms. Water, at the temperatures disclosed by Norrie, is capable of removing microorganism - that is, by merely washing them away from the surface. The application of such water to a hide at a wash station is therefore the application of an "antimicrobial agent" within the scope of the term's meaning as it is defined by Applicant's specification.

    ReplyDelete
    Replies
    1. The spec states that the "antimicrobial agent" may be any chemical or substance capable of --removing-- microorganisms.

      The interesting question is what does "removing" mean in the context of the art? Based upon my limited research, I don't think the ability to wash away meets the definition of "antimicrobial agent" as would be understood by those skilled in the art (i.e., destroy and/or inhibit growth). Regardless, the use of sloppy language opened the door, and the PTAB is always more than willing to walk through that door.

      Water, at the temperatures disclosed by Norrie, is capable of removing microorganism - that is, by merely washing them away from the surface
      Is this speculation or were their findings of fact, supported by substantial evidence, made regarding this assertion? I don't know.

      Delete
  4. "But how does the Board get from antimicrobial-means-killing-neutralizing-or-removing to water-is-an-antimicrobial-even-at-temperatures-that-don't-kill?"

    Because the specification does not say that an antimicrobial agent must "kill." The specification teaches that an antimicrobial agent may be any substance capable of removing microorganisms, including water.

    I agree that the examiner's observations about what the spec. says about temperature is essentially irrelevant. But I don't see where the Board relied on those findings.

    Another problem with the evidence that appellant provided -- appellant is not claiming an antimicrobial "intervention."

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    Replies
    1. Another problem with the evidence that appellant provided -- appellant is not claiming an antimicrobial "intervention."

      I don't see the importance here. You need to better explain your position.

      Delete
    2. "I don't see the importance here. You need to better explain your position."



      (1) What, specifically, is claimed as happening at the "wash station?"

      (2) What, specifically, did appellant allege that the evidence showed?

      Be specific.

      Delete
    3. I asked for an explanation ... not to engage in a typical USPTO let's play "hide the reasoning" game.

      Let me give you some pointers:

      (I) Start by reciting the rule of law. A case cite is usually helpful then as well.
      (II) Briefly discuss the facts in the particular case you cite.
      (III) Identify the particular facts in this application that you think are relevant and
      (IV) Explain why these facts are analogous to the facts present in the case you cited.
      (V) Finally, you can present your conclusion as to how the law of the case you cited applies to the facts of the present situation.

      When you do it like that, we don't have to play the guessing games the USPTO is so fond of. Capiche?

      Delete
    4. Ah, yes, the unsophisticated patent solicitor's tired ploy of "let's ignore the facts and argue about something else. Maybe nobody will notice." As when one tries to make an appeal seem to be all about temperature, when it's not.

      Just saying. Capiche?

      Delete
    5. let's ignore the facts and argue about something else
      What are the facts? What is the proper claim construction of the term antimicrobial agent?

      As when one tries to make an appeal seem to be all about temperature, when it's not
      The issue is over the proper claim construction of the term antimicrobial agent. As best I can tell, the temperature of water is one factor that determines whether water is an antimicrobial agent or not.

      We had a discussion about guessing in the other thread. This is what happens with applicants are forced to guess as to the Examiner's reasoning. It appears that applicants guessed that the Examiner was asserting that the water of the prior art became an antimicrobial agent when it was at a certain temperature. Applicants responded by saying that the water temperature of the prior art didn't reach the proper temperature for the water to be considered antimicrobial. However, this apparently wasn't what the Examiner was driving at.

      The Examiner's reasoning was unclear, and applicants were forced to guess as to the reasoning. As it turns out, applicants guessed wrong about the Examiner's reasoning. Had the Examiner been clearer, Applicants could have more directly addressed this claim construction by arguments and/or amendments.

      Moreover, look at the non-final and final office actions and explain to me how applicants could have even remotely guessed as to the Examiner's reasoning behind the claim construction for the term antimicrobial. When you explain to me how applicants could have figured out the Examiner's claim construction after reading the final rejection, then I'll concede that the Examiner did a good job in explaining the rejection.

      Delete
    6. "What are the facts?"

      "blah blah blah, yada yada yada."

      Getting back to the facts --

      (1) What, specifically, is claimed as happening at the "wash station?"

      (2) What, specifically, did appellant allege that the evidence showed?

      Be specific.

      Delete
    7. Getting back to the facts
      Questions are not facts. Capiche?

      Be specific.
      You are the one with the point to make (e.g., "Another problem with the evidence that appellant provided -- appellant is not claiming an antimicrobial 'intervention'"). Why don't you first explain your point, as I asked you yesterday, and then we can move on from there.

      If you are having troubles articulating your reasoning, just say so. No need for this song and dance routine of yours.

      Delete
    8. I can see how you might be confused.

      (1) What, specifically, is claimed as happening at the "wash station?"

      Be specific.

      Delete
    9. Still avoiding explaining your point?

      Delete
    10. Do not be intimidated.

      (1) What, specifically, is claimed as happening at the "wash station?"

      Be specific.

      Delete
    11. Sorry dude. You are the one that produced the conclusory statement Another problem with the evidence that appellant provided -- appellant is not claiming an antimicrobial "intervention."

      For the fifth time, please explain further. I know the USPTO confuses conclusions with analysis, but please try ... it isn't that hard. I gave you an outline to follow.

      Do not be intimidated.
      Yeah ... right. I've been taking on all comers on both threads ... a sure sign that I'm been intimidated. LMFAO

      Delete
    12. Focus. Remember, facts.

      This question of fact is not difficult. I showed the claim and the question to a sixth grader and she answered immediately (and correctly). Nothing to be afraid of.

      (1) What, specifically, is claimed as happening at the "wash station?"

      Be specific.

      Delete
    13. For the sixth time, please explain your analysis further.

      This question of fact is not difficult.
      Why don't you explain why it is relevant first. Then, since it is YOUR ANALYSIS, why don't you answer your "question of fact"?

      I have had no problems raising issues, citing case law, making findings of fact regarding my own analysis, and presenting conclusions based upon my analysis and findings. I know examiners like to have their hands held, but since its your analysis, perhaps you should explain it rather than have somebody else explain it for you.

      I have no ownership in YOUR analysis, so asking me questions isn't going to get you anywhere -- it isn't going to get you anywhere. I have zero interest in formulating your analysis for you.

      Delete
    14. Analysis? No, facts. Focus.

      (1) What, specifically, is claimed as happening at the "wash station?"

      Be specific.

      Delete
    15. Analysis? No, facts.

      You've described your position perfectly. Try to improve upon it.

      Delete
    16. Focus.

      (1) What, specifically, is claimed as happening at the "wash station?"

      Be specific.

      Delete
    17. "Join the USPTO, most people do more by 9 in the morning than we do in an entire day."

      (1) What, specifically, is claimed as happening at the "wash station?"

      Be specific.

      Delete
    18. Do you believe in anarchy? Will you do what it takes to demolish the patent system? Would you ignore any law to get your way? If you've answered "yes" to any of those question, then we may have a job for you. Please direct all job inquiries to the Chief Administrative Patent Judge at the Patent Trial and Appeal Board.

      (1) What, specifically, is claimed as happening at the "wash station?"

      Be specific.

      Delete
  5. "However, I suspect that the Board affirmed the rejection based on entirely different reasoning -- and did a terrible job of explaining this."

    As they are very fond of doing recently. The opinions are getting further and further away from the Examiner's rejections.

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    Replies
    1. Isn't that the truth, I just got a decision back and they apparently completely ignored the actual grounds of rejection, evaluated the reference on their own and came up with a factual finding that couldn't be supported, and then had the gall to say that the factual finding that ONLY THEY EVER MADE wasn't support by evidence or explanation so they were forced to reverse.

      Perhaps a request for rehearing will remind them of the actual grounds of the rejection on appeal, and the specific facts, that are different than what they're talking about out in left field somewhere, which do happen to be supported easily by evidence. But who knows? Apparently the actual rejection on appeal is somewhat of a secondary matter these days. They will simply try their best to reject the claim, and if they can't then they'll note where they themselves fall short.

      Delete
    2. But then, what can you expect with a bunch of bio people reviewing a case from the useful arts?

      Delete
    3. Geez, too bad nobody else can see the case. If only applications had something like serial numbers. . . .

      Delete
  6. Karen, as per usual, you miss the examiner's and the board's point. Water is an anti-microbial agent. Period. "when" it "acts" or doesn't "act" as a anti-microbial agent is not at issue. Water is an anti-microbial agent, forever, and always, period. That is, in the genus, anti-microbial agents water is a species. Not only water at x temp. The reason(s) for this is many and varied, but suffice to say that so long as water is running over the garment, some microbes will be removed.

    Now, reevaluate your ta rd ation.

    If the applicant wishes to put in his claim that the anti-microbial is killing the microbes then they can hash that out later.

    ReplyDelete
    Replies
    1. Your point is, essentially, "anti-microbial" = "some microbes will be removed." That's too broad (it would even include adding microbes that would eat/kill/remove a single other microbe). Karen is pointing out that the spec demonstrates that this is too broad with respect to water.

      Instead of accusing her of missing a point, why not just admit that you have a different concept of BRI from her and the panel (and most humans).

      Delete
    2. "Karen is pointing out that the spec demonstrates that this is too broad with respect to water."

      Two errors, one sentence.

      When you remove gross contaminants, you remove microbes. As a concrete example, you slip on a moderately fresh cow patty and get some on your hand. You use water from a garden hose to remove the cow manure. And you are not removing microorganisms -- how?

      Delete
    3. "Karen is pointing out that the spec demonstrates that this is too broad with respect to water."

      Karen never points out such a nonsensical thing. And if she tried, then she tried and failed miserably.

      And this has nothing to do with the BRI, we're using the applicant's OWN FU CKING DEFINITION. If the applicant had so choosen to define the term in another way, then so be it. But he didn't, and here we are, with Karen arguing about nonsense out in left field divorced from the actual proceedings and you bringing in BRI for no apparent reason.

      Delete
    4. Water is an anti-microbial agent. Period.

      Wrong. Water could be an antimicrobial agent. It is not necessarily an antimicrobial agent. The applied prior art taught using water, which is not necessarily an antimicrobial agent. Thus, you cannot argue that it inherently teaches an antimicrobial agent (inherency requires that the prior art necessarily teaches the missing limitation).

      suffice to say that so long as water is running over the garment, some microbes will be removed
      That all depends upon what the definition of "removed" is in the context of the prior art and consistent with the meaning one skilled in the art would give the term "anti-microbial agent." Under that definition, a sharp knife would be an anti-microbial agent, yet I doubt those skilled in the art would see it that way. Perhaps "removal," in the context of those skilled in the art, means destroy.

      If you look at the specification, they wrote in paragraph [0037]
      The agent applied to the animal hide can include any additive known to kill or remove bacteria or other kinds of microbes. For example, in one embodiment, the antimicrobial agent includes bases or caustics, acids, esters, oxidizers, or enzymes. Other examples include treated water, such as electrolytic water, ozonated water, or charged water, which includes hydrogen ions added to or removed from the water. In various embodiments, the antimicrobial agent includes one or more of sodium hydroxide, chlorine, trisodium phosphate, sodium metasilicate, phosphoric acid, fatty acid monoesters, organic acids, and hydrogen peroxide. In another aspect of the invention, the fluid is a probiotic agent. A probiotic agent is a non-harmful bacteria or other microbial that competitively prevents growth of microbial pathogens.

      While they mention certain types of water may be an antimicrobial agent, they didn't teach that all types of water are an antimicrobial agent. Given the specific examples described in the disclosure, I think it is a reasonable argument to say that plain, untreated, unheated water would not be considered by those skilled in the art as an antimicrobial agent. As I noted in a previous post, the loose language in the specification opened up a door that the PTAB walked through, but the argument presented is certainly not a 100% all-the-time losing argument.

      Now, reevaluate your ta rd ation.
      Why do you have to be so rude all the time 6? Do you get your jollies acting like a 5th grader?

      Delete
  7. I did enjoy your first commentator's mention of "baited" breath. What visions that conjures up. More, more.

    ReplyDelete
  8. "The antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
    (Finding of Fact 1, emphasis in PTAB opinion.)"

    Water removes microorganisms.

    They appealed this? More sh!tty advocacy. Sad.

    ReplyDelete
  9. "Surely the question of what chemicals or substances meet the kills-neutralizes-or-removing definition, is one of fact."

    True dat.

    "Does water kill microorganisms at any temperature?"

    That's irrelevant. Water removes microorganisms at any temperature.

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  10. Still avoiding explaining your point?

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    1. Your "taking on all comers" concerning the Osborne case has thus far consisted of either (1) ignoring the facts or (2) making up your own. Before we can have any kind of rational discussion about what it is that you do not understand, we have to agree on a set of very simple facts. No analysis, no conclusions, just facts. Very. Simple. Facts.

      Delete
    2. we have to agree on a set of very simple facts

      Start making your findings of fact .... I'll be waiting, but I won't be holding my breath.

      And while you are at, explicitly identify:

      (1) the facts I have ignored; and
      (2) the facts I have made up.

      Again, I'll be waiting, but I won't be holding my breath. No one supporting the USPTO position seems to be able to put together a standalone analysis. Instead, they give it the typical USPTO examination treatment ... take tiny little bites and slowly dole out the analysis/findings.

      It must be grounds for termination at the USPTO to provide all your explanation the first time around.

      Delete