Tuesday, July 30, 2013

Board notes differences in independent claims and reverses some rejections while affirming others

Takeaway: In an appeal involving disk drive controllers, the Board focused on differences between independent claims to reverse the obviousness rejection of several independent claims while affirming the rejection of another independent claim. The Board found that the primary reference did not disclose emulation of an ATA controller, and so reversed the rejection of claims that specifically recited such emulation. But for another claim that recited "interfacing with a [host] as through [a controller] were attached to the [host]," the Board found that the phrase "as though" did not exclude a controller actually attached to the host. Beacuse this feature was disclosed by the primary reference, the Board affirmed this rejection. (Ex parte Stolowitz, PTAB 2010.)

Details:

Ex parte Stolowitz
Appeal 2009006157; Appl. No. 10/885,960; Tech. Center 2100
Decided: October 24, 2010

The application on appeal was directed to disk drive controllers. Two representative claims read:
     1. A method of interfacing a RAID storage device controller to a PCI bus host without modifying existing host driver software, the method comprising the steps of:
     in the RAID controller, implementing a host interface for logical connection to the PCI bus host, the host interface emulating an ATA controller;
     in the RAID controller, emulating an IDE storage device as though it were connected to the emulated ATA controller, thereby forming a first logical IDE storage device interface;
...
     20. A RAID storage device controller comprising:
     a host interface compliant with ATA interface specifications for interfacing with a PCI bus host as though an ATA controller were attached to the PCI host bus;
     a drive interface comprising a plurality of drive port interfaces for attaching a plurality of disk storage devices to the RAID storage device controller;
...
The Examiner rejected all the independent claims as obvious over a combination of two references. The rejection relied on FIGs. 1 and 2 of Levy for teaching the above-emphasized limitations. The Examiner characterized Levy as follows:
Levy is teaching that the disclosed method and design provides for RAID functionality while emulating existing IDE/ATA functionality such that the existing software drivers and software applications can still be used, this is a description of a system and method for emulating existing hardware and software functionality.
(Emphasis in original.)
On appeal, the Applicant argued several limitations, including those emphasized above. With respect to claim 1, the Applicant argued that a PCI host controller is not the same as a RAID controller. The Applicant then addressed the emulating limitation as follows:
Simply disclosing "an existing controller ... around which all drivers and applications are installed" (Col.4, lines 32-34), as relied on by the Examiner in Levy, does not even suggest any sort of emulating, let alone specifically teaching that "in the RAID controller ... a host interface for logical connection to the PCI host bus [is implemented], the host interface emulating an ATA controller, as claimed.
(Emphasis in original.)
The Applicant treated claim 20 in a similar manner, arguing that "disclosing an intermediate adapter connected to an existing controller, as in Levy, simply fails to even suggest 'interfacing as though an ATA controller were attached to the PCI host bus'." (Emphasis added.)

In the Answer, the Examiner elaborated on the teachings of Levy with respect to emulation:
[C]learly Levey is teaching that the MIR-95 system is emulating a normal IDE ATA disk drive channel, while actually performing RAID level 1 mirroring with a plurality of ATA IDE disk drives.  ... Col. 8 lines 29-34 [teaches] more specifically, "...if the disk drive adapter MIR-95 determines that the system is in a mirror mode, then for each WRITE command it will cause the same data to be written to all of the hard drives rather than to only one hard drive ...", in other words, the MIR-95 emulates the behavior of a single disk drive, but actually performs RAID level 1 disk mirroring and performs a WRITE to more than one drive.
(Emphasis in original.)
The Answer also included a definition of emulate from a technical dictionary: "to represent a system by a model that accepts the same inputs and produces the same outputs as the system represented." The Examiner then tied this to Levy's teachings as follows:
The MIR-95 accepts the same inputs and produces that same outputs as the system represented, which is a single disk on an ATA IDE channel. However, the MIR-95 is in fact another system that simulates the functionality of a single ATA IDE channel, but actually provides the functionality of a RAID level 1 mirroring system.
(Emphasis in original.)
According to the Examiner, "this is description of emulation as it is defined by the IEEE." 

The Board reversed the rejection of claim 1, but affirmed the rejection of claim 20. With respect to claim 1, the Board found that the Examiner had mischaracterized the MIR-95 interface between the IDE controller and the physical drives:
This misses the point; Levy’s MIR-95 is not a host interface because it does not connect to the host computer. Levy’s host interface is an IDE controller, which generally is an ATA compatible controller. There is no emulation; there is identity instead.
(Emphasis added.)
While claim 1 actually recited "emulating an ATA controller," claim 20 did not. Claim 20 instead recited "interfacing with a PCI bus host as though an ATA controller were attached to the PCI host bus." The Board framed the issue for claim 20 as: "whether, as a matter of inferential logic, doing something as though A were true precludes A from being true."

According to the Board, the answer is No:
The Appellants’arguments appear to assume that the claim requires that an ATA controller was not attached to the PCI host bus. The claim contains no such limitation. As a matter of inferential logic, doing something as though A were true does not preclude A from being true. Levy has an ATA compliant IDE controller attached to a bus which may be a PCI host bus. The ATA compliant controller in Levy interfaces identically as though attached to a PCI host bus.
(Emphasis added.)
Because claim 20 did not exclude a configuration in which the ATA controller was in fact attached to the PCI bus, the Board affirmed the rejection.

My two cents: The Board got the rejection of claim 1 right. From my own cursory reading of the reference, it appears that Levy teaches emulation, just not the emulation that was claimed. That is, Levy teaches a redundant disk controller that emulates a single disk controller. And maybe it's obvious to go from that to what the Applicant claimed. But even if the Examiner understood Levy's limited teaching and was relying on obviousness to carry the rejection the rest of the way, he didn't explain his reasoning well enough to make a prima facie case.

The Applicant got lucky here with claim 1, because the arguments were not very persuasive. The Applicant's argument amounted to little more than a quote from each cited portion of the reference, followed by a corresponding assertion  that the particular quote did not amount to a teaching of the claim element at issue. That strategy doesn't usually work. This is one of those unusual cases where the gap between the reference and the claims was so large on its face that a mere assertion was all it took to convince the Board. In other words, the Examiner read way too much into the reference.

As for claim 20, I interpret it differently than the Board did. I read the phrase "as though attached" to exclude attachment. That is, I read the claim as expressing a counterfactual conditional rather than an indicative conditional. (If you're into linguistics, Wikipedia has more about conditionals here.)

The Board's affirmation of the rejection of claim 20 should have been designated as a new ground, because it definitely relied on a new claim construction, one not seen by the Applicant before the Board's decision. I say this not because the Examiner didn't make his claim construction explicit, but because at no point during prosecution did the Examiner treat claim 20 any differently than claim 1. So the only way it's fair for the Board to interpret the two claims differently on appeal is to designate an affirmed rejection as a new ground. 

Finally, an important lesson here is that sometimes small differences in claim language can have big results. Here, expressing the distinguishing limitation with exactly the same language in all claims – a very common tactic for patent prosecutors – would have resulted in either a complete win or a complete loss. Instead, some of the Applicant's claims made it through appeal, even though others did not.

9 comments:

  1. " a host interface compliant with ATA interface specifications for interfacing with a PCI bus host as though an ATA controller were attached to the PCI host bus"

    I assume that the "compliant with ATA interface specifications" should be understood as though it were set off by commas. This limitation looks awfully vague to me - should it be considered a means-for limitation? All it does is recite an extremely broad function - is the full scope enabled?

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  2. The Applicant's argument amounted to little more than a quote from each cited portion of the reference, followed by a corresponding assertion that the particular quote did not amount to a teaching of the claim element at issue. That strategy doesn't usually work.
    So why does reproducing language from the claims and producing little more than a quote from a referenced work for an Examiner?

    FYI ... it doesn't take a genius to look at a citation and see that the limitations aren't there. The Examiner has the burden of proof. If the Board looks at the cited reference, doesn't see the limitaiton, then the Examiner hasn't me his/her burden -- enough said.

    Granted, some members of the Board need hand holding of the type that, in essence, improperly shifts the burden of proof.

    an important lesson here is that sometimes small differences in claim language can have big results
    That should be the FIRST lesson that an aspiring patent professional should learn. I recall one Examiner who accused me (in an Office Action) of "playing word games" with the claims. Well duh …. EVERY word in a claim should be given meaning.

    at no point during prosecution did the Examiner treat claim 20 any differently than claim 1. So the only way it's fair for the Board to interpret the two claims differently on appeal is to designate an affirmed rejection as a new ground.
    The Board has an EXTREME aversion to designating new grounds of rejection -- it is what it is (unfortunately).

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  3. "So why does reproducing language from the claims and producing little more than a quote from a referenced work for an Examiner?"

    See 35 USC 132 and In re Jung.

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    1. In re Jung

      I see, like the average Examiner, you read waaaaaaaay too much into anything. In re Jung is pretty narrow.

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    2. I'm not an examiner. I'm a practitioner with 14+ years of prep and pros experience.

      I agree that Jung doesn't add much to the case law, and I've argued it's limited to its facts, but Karen is correct when she says that where "Applicant's argument amounted to little more than a quote from each cited portion of the reference, followed by a corresponding assertion that the particular quote did not amount to a teaching of the claim element at issue. That strategy doesn't usually work."

      As I've noted before, I think the examiner's burden of production (i.e. establishing a prima facie case of unpatentability) is fairly easily met. In fact, as I've said time and time again, pretty much all the examiner has to do is put something down on paper and mail it out and it's met.

      On the ultimate burden of persuasion (i.e. unpatentable by a preponderance) I'm in agreement with Karen: if your claim recites an apparatus comprising a widget and the examienr rejects it by citing col. 4, lines 28-29, of Smith which discloses an apparatus comprising a blodget, you're perfectly within your rights to respond, "a blodget is not a widget" but if that's all you do, and don't provide any explanation as to why a blodget is not a widget, your chances at the Board are pretty slim. The case Karen posted is one of these exceptions apparently.

      The Board is simply not going to help appellants out if they don't have to, or if they simply don't want to. They'll just cite section 132, Jung, Chester v. Miller, or whatever and affirm. And it's not just the lifer APJ's, of whom I know quite a few. The new APJ's from the outside are apparently of the same mindset. I've been reading quite a few decisions from these new APJ's, at least a half dozen of whom are former colleagues of mine from private practice, and they are not persuaded by bare bones arguments that "a blodget is not a widget." You have to give them more. You have to give them no choice but to reverse. Is it fair that appellants have to do that to get reversals, but examiners don't to get affirmances? No. But life's not fair and now you're on notice. Proceed accordingly.

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    3. if your claim recites an apparatus comprising a widget and the examienr rejects it by citing col. 4, lines 28-29, of Smith which discloses an apparatus comprising a blodget, you're perfectly within your rights to respond, "a blodget is not a widget" but if that's all you do, and don't provide any explanation as to why a blodget is not a widget, your chances at the Board are pretty slim.
      You claim A, the reference shows B. It is the Examiner's burden to get from A to B. All I should have to argue is exactly that --> "The Examiner has failed to explain why the teaching of B corresponds to A. A is not B and the Examiner has not shown otherwise."

      BTW ... few Examiners go to the length of just give me the pinpoint cite of "col. 4, lines 28-29." They'll cite column 3, line 40 through column 5, line 10 for a phrase with five or six different elements with no accompanying explanation. How do you give the Board "no choice but to reverse" when the Examiner's analysis is so ethereal that it is like trying to poke holes in a misty morning.

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    4. "You claim A, the reference shows B. It is the Examiner's burden to get from A to B. All I should have to argue is exactly that..."

      If your only argument is that the words of the reference don't match the words of the claim verbatim, you've got a weak argument. You claim an automobile comprising a muffler and the examiner cites you a reference disclosing an automobile comprising a sound attenuation device. Please feel free to argue that the examiner hasn't met his burden. Let us know how far that gets you.

      "How do you give the Board 'no choice but to reverse' when the Examiner's analysis is so ethereal that it is like trying to poke holes in a misty morning."

      Uhm, by doing your job maybe. If you can't get a reversal when the examiner's analysis is "so ethereal" then you're doing something wrong. Maybe time to consider a career change.

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  4. When the analysis of the claim goes into the metaphysical you know you're squarely in the middle of a claim that probably needs to be 101'd.

    "The Board's affirmation of the rejection of claim 20 should have been designated as a new ground, because it definitely relied on a new claim construction, one not seen by the Applicant before the Board's decision. I say this not because the Examiner didn't make his claim construction explicit, but because at no point during prosecution did the Examiner treat claim 20 any differently than claim 1. So the only way it's fair for the Board to interpret the two claims differently on appeal is to designate an affirmed rejection as a new ground. "

    Nah, no new construction is necessarily implied here. The examiner lumped them up, but I don't recall him ever saying the construction of the two was the same.

    As a final thought this case is simply the millionth example of the dangers of letting people distinguish their invention in terms of doing some math with some 1's and 0's or placing specific ones and zeros in a machine.

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    1. As a final thought this case is simply the millionth example of the dangers of letting people distinguish their invention in terms of doing some math with some 1's and 0's or placing specific ones and zeros in a machine.

      The danger is that some Examiners must be dragged, kicking and screaming as needed, into the 21st century. The latest and greatest technology doesn't involve buggy whips anymore.

      What a tool ....

      20 years from now (and all these comments will saved somewhere), some commentators will cite comments like yours as evidence that that even in 2013 people didn't understand the power of computers.

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