Tuesday, March 31, 2015

PTAB affirms indefiniteness when CRM claim recites human action ("subscribe")


Takeaway: In an application for a computerized valuation platform, the Examiner rejected a computer-readable medium claim as indefinite. The Examiner took issue with the phrase "subscribing to the web-based valuation service," asserting that the word "subscribe" implied a human action, which conflicted with the claim's recital of a method performed by computer instructions. The Applicant argued that the action was done through computer instructions, at the request of a user. In support of this argument, the Applicant presented a dictionary definition ("to obtain a subscription") which did not mention performance by a human. The Board found that the definition offered by the Applicant did involve human activity, and thus affirmed the rejection. (Ex parte Allaway, PTAB 2014.)

Details:
Ex parte Allaway
Appeal 2012-006215; Appl. No. 11/009,547; Tech. Center 3600
Decided:  December 15, 2014

The application on appeal described a computerized valuation platform for intellectual property assets. During prosecution, the Applicant presented a system claim and a comupter-readable medium (CRM) claim. The CRM claim on appeal read:
     35. A computer-readable medium encoded with computer executable instructions .... , the instructions perform a method comprising:
      publishing at least one portable formula module defining one or more valuation formulas associated with an intellectual property asset at a network server that offers a web-based valuation service;
      subscribing to the web-based valuation service from a client device to access the at least one portable formula module;
      acquiring one or more values associated with variables of the one or more valuation formulas from a network database utilizing an automated acquisition that pulls information from the network database in response to a subscriber request;
      determining one or more valuation results associated with the intellectual property asset by executing the one or more valuation formulas using the acquired values; and
      displaying the determined one or more valuation results of the intellectual property asset valuation on an information presentation interface of the client device.
(Emphasis added.)
The Examiner rejected all claims under § 101 and § 103. The Examiner also rejected CRM claims 35 and 37 as indefinite. The Examiner explained that independent claim 35 was indefinite since "it is unclear how [a CRM] subscribes to a web-based valuation service (a human user activity)." (Emphasis added.) The Examiner used the same rationale for dependent claim 37, which recited "the client device further subscribing to ..."

During prosecution the Applicant argued against the indefiniteness rejection of independent claim 35. The Applicant first noted that the Examiner seemed "seem[ed] to rely on the notion that 'subscribing' is a human activity by its very definition." But according to the Applicant, the term was not given this meaning by the Applicant's disclosure, by the prior art, or by a POSITA (citing MPEP 2173.02). The Applicant also introduced a definition ("to obtain a subscription," from Dictionary.com), which did not mention performance by a human. Thus, the Applicant concluded that the indefiniteness rejection was improper.

The Applicant also addressed the indefiniteness rejection of dependent claim 37 by explaining that the " 'subscribing' is done at the behest of a user (presumably human) through a computer-readable medium encoded with computer-executable instructions." The Applicant asserted that the term was consistent with usage by a POSITA, and gave a specific example ("digital video recording device subscribing to a show at the behest of the user or having a server push content to a user's device or computer at the behest of a user.") The Applicant also referenced a portion of the Specification to support this interpretation.
In the next Office Action, the Examiner did not address the dictionary definition proffered by the Applicant. The Examiner did respond to the arguments for dependent claim 37 by commenting on the portion of the Specification mentioned by the Applicant. According to the Examiner, the Specification taught that "the subscribing is not directed to a system or set of computer instructions, but rather to actions of the individual user. This creates confusion as to when direct infringement or the claim limits occurs."

The Board affirmed the indefiniteness rejection. The Board first explained the requirements of a prima facie case of indefiniteness, as explained by the Federal Circuit's In re Packard decision:
When the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b) 
The Board noted that all of the meanings in the Applicant's proffered dictionary definition (from Dictionary.com) involved human activity, as did the Applicant's own examples offered in the Appeal Brief (TiVo and iTunes). The Board then found that the Examiner had presented a "well-grounded rejection" which the Applicant's arguments had not overcome, and thus ffirmed.

My two cents: The Board got this one wrong. When read in the context of the claim, publish and subscribe are not human actions. A POSITA would recognize these as computer actions that are part a well-known design pattern. (See this Wikipedia entry for "Publish-subscribe pattern".)

The CRM claim at issue recited "publishing" as well as "subscribing." Interestingly, the Examiner did not assert that "publish" was indefinite. Whatever led the Examiner to conclude that "publish" was
understood by a POSITA should also apply to "subscribe."

To make a much stronger case, the Applicant should have offered evidence of the technology-specific meaning of "subscribe." I did a cursory web search and found a Wikipedia entry as well as several technical articles discussing the Publish-Subscribe pattern (e.g., Oracle® Database Application Developer's Guide, Microsoft Patterns and Practices).

12 comments:

  1. A POSITA would recognize these as computer actions that are part a well-known design pattern. (See this Wikipedia entry for "Publish-subscribe pattern".)
    Exactly. This is an EXTREMELY common and well-known technology. Anybody who thinks the "subscribe" portion is a "human activity" quite clearly doesn't understand the technology. Then again, this came out of 3600 -- so this should be expected.

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  2. The independent claim reads "computer executable instructions...the instructions perform a method comprising...subscribing...." From the claim it is clear that subscribing is not a human user activity.

    However, dependent claim needs to further limit the independent claim.

    Dependent claim 37 requires "requires a user... further subscribing...." Therefore, "subscribing" in claim 35 is indefinite because it can be human or machine. Why is this logic not reasonable ?

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    1. Therefore, "subscribing" in claim 35 is indefinite because it can be human or machine. Why is this logic not reasonable ?
      Claims are to be given their broadest reasonable claim construction consistent with the meaning attributed to them by those skilled in the art. Those skilled in the art understand what is meant with the terms publish and subscribe. Only one unskilled in the art would think that subscribing would be done by a human alone.

      A lot of terms would be indefinite if we let those unskilled in the art construe them. However, that is not how it works.

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    2. Bluesky123 wrote:
      >Dependent 37 requires "requires a user... further subscribing...."
      >So "subscribing" in claim 35 is indefinite because it can be
      >human or machine

      So Bluesky says that the meaning assigned to "subscribe" in the dependent is inconsistent with the meaning assigned to "subscribe" in the parent. And that as a result, the parent is indefinite.

      Not sure it works this way. Maybe the result of the inconsistency is not indefiniteness of the parent, but a problem with the dependent. Namely, rejection under 112 4th for failing to limit.

      Bluesky, do you have some case law handy that says inconsistent meaning in the dependent makes the independent indefinite?

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    3. If a claim term is amenable to two or more plausible claim constructions, thereby justifying requiring Appellants to more precisely define the meets and bounds of the claimed invention by holding the claims unpatenable under 112, second paragraph, as indefinite. Miyazaki, 89 USPQ2d at 1211.
      10/799,961 and your analysis on http://allthingspros.blogspot.com/2011/08/bpai-new-rejection-indefinite-miyazaki.html

      More importantly:

      On 6/20/2008 applicant submitted, Claim 6: "...a subscription controller configured to restrict the valuation engine from loading any portable formula to which the valuation engine is not subscribed." There was no 112 rejection.

      On 11/6/2008 applicant submitted, Claim 6: "...a subscription controller executing on the one of more processors and configured to restrict the valuation engine from loading any portable formula module to which the valuation engine is not subscribed...." There was no 112 rejection.

      On 7/12/2010 Claim 35: “...subscribe to the web-based valuation service to access the at least one portable formula module....” and Claim 37: contained user requires language. There was a 112 rejection for Claims 35 and 37.

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    4. >More importantly ... There was no 112 rejection.

      Not sure what lack of a 112 (2nd?) rejection indicates.

      >If a claim term is amenable to two or more plausible claim constructions

      Sure, Miyazaki is the overarching standard of indefiniteness applied by the PTAB. And we can argue about whether either claim -- the independent or the dependent -- is amenable to more than one plausible construction.

      But it seemed to me that you were making a different argument ... that the independent was indefinite *because* it was inconsistent with the dependent. So I wondered if you knew of case law specific to this issue.

      As for Miyazaki anaysis, it seems like in some cases you could choose to characterize a claim term as broad ("subscribe" covers human and computer) OR you could choose to characterize it as having two different meanings (human action or computer action) and thus indefinite.

      To me, the quintessential example of Miyazaki indefiniteness is something like the term "nail" which has two very different meanings: nail-as-fastener; and nail-on-digit. If "nail" appears in a claim, and you can't distinguish between the two meanings, then THAT's indefinite under Miyazaki. In my mind, those are two *different* meanings rather than just a broad term (ie, genus-species).

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    5. With reference to my previous comment, claim 6 used "subscribed" language but did not receive a 112 second paragraph rejection. Therefore, the Examiner did understand "subscribed" in claim 6 was performed by a computer.

      However, since the language in the dependent claim 37 required subscribing to be performed by a user, such language impacted the interpretation of the term "subscribing" in claim 35. Which led to the 112 second paragraph rejection. An independent claim must not be interpreted in a way that is inconsistent with a claim that depends from it. Wright Med. Tech. Inc. v. Osteonics Corp, 122 F. 3d 1440, 43 USPQ 2d 1837. Also usage of claim term in one illuminates the meaning in another. American Piledriving Equip v. Geoquip 637 F. 3d 1324, 98 USPQ 2d 1001, 1006 (2011).

      Thank you.

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    6. >independent claim must not be interpreted ... inconsistent with
      >a claim that depends from it. Wright Med. Tech. Inc. v. Osteonics Corp,
      >Also usage of claim term in one illuminates the meaning in another.
      >American Piledriving Equip v. Geoquip

      Thanks for the cites. I note that both of those are about claim construction, and don't say anything specifically about indefiniteness.

      So couldn't this case law could be applied in one of two ways, as a matter of claim construction? Keeping a consistent claim construction for the Parent and Dependent could result in either a) Dependent being invalid under 112 4th or b) Parent being invalid under 112 2nd indefinite?

      applying them may well result in the independent claim being indefinite.

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  3. How is it that, again and again and again, Examiners get away with arguing they are interpreting a claim using the "broadest reasonable interpretation", all the while ignoring yet arguments pointing out that their 'broadest reasonable interpretation' is completely divorced from the understanding that a POSITA would have of the term in view of the Applicant's specification?

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    1. How is it that, again and again and again, Examiners get away with arguing they are interpreting a claim using the "broadest reasonable interpretation", all the while ignoring yet arguments pointing out that their 'broadest reasonable interpretation' is completely divorced from the understanding that a POSITA would have of the term in view of the Applicant's specification?
      One explanation is that the PTAB blesses those unreasonable claim constructions again and again and again. I cannot tell you the number of times I've seen the PTAB bless a claim construction that is not only unreasonable but completely unsupported (i.e., no evidence presented in support whatsoever).

      What I advise clients is that you are going to the Board based upon a claim construction issue, you better have your definition locked down tight as a barrel because the Board will bend over backwards to agree with any claim construction presented by the Examiner. Case in point, I've got a case recently decided by the Board that hinged upon the meaning of a term that has been a term-of-art for decades (the term is so well known that you don't have to be one skilled in the art to have been exposed to the term). We littered the appeal with far more evidence than I would normally provide to support a claim construction. In the Decision, the Board picked a nit as to one piece of evidence an proceeded to ignore all the other evidence we provided -- Examiner affirmed.

      To go back to your question, when Examiners get back a Decision on Appeal in which even their most outlandish claim construction gets blessed by the Board, this is only going to prompt the Examiner to do more.

      I've always seen the Board's role, besides rendering Decisions on Appeal, as dictating the minimum level of examination needed to reject a claim. From my experience, the Board sets a very, very, very, very low bar for Examiners. As a result, we get very poor examination from many Examiners.

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    2. >[Examiners are] ignoring yet arguments pointing out that their BRI is
      >completely divorced from the understanding that a POSITA would have
      >of the term in view of the Applicant's specification?

      I see very few Applicants make this specific argument.

      Most Applicants ignore claim construction completely and simply repeat the same "reference doesn't teach my claim limitation" assertion throughout prosecution.

      Most of those that do bother to argue claim construction merely point to the spec and essentially ask the Examiner to read limitations in from the spec. If you're going to point to the spec, at least make it clear that you're not characterizing this information as a definition, and instead, that you're showing what a POISTA understands the term to mean.

      Better yet, explicitly argue that the Examiner's interpretation is unreasonable *as viewed by a POSITA*. And explain why this is so.

      In all but the most egregious cases, I think you're going to need *evidence* on this point rather than mere attorney argument.

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    3. In all but the most egregious cases, I think you're going to need *evidence* on this point rather than mere attorney argument.
      Funny that ... an examiner gets to pull a definition out of thin air, but an attorney needs evidence.

      While justice (should) be blind, don't expect blind justice from the PTAB who supposedly weighs the evidence for and against a particular position. The PTAB and examiners both work for the same team, and it shows.

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