Tuesday, July 21, 2015

PTAB reverses when Examiner provides no explanation for why claimed "blender" reads on "charging nozzle"

Takeaway: The Applicant appealed an obviousness rejection of claims to a process of manufacturing a multi-phase liquid composition. The method claim recited a transferring and a blending step involving a "blender," and the Examiner mapped the blender to a "charging nozzle" in Tanaka, a US patent reference. The Examiner gave no further explanation for the mapping, and one of the arguments made by the Applicant on appeal was: "The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender." The Board reversed the obviousness rejection. The Board first (summarily) agreed with the Applicant about Tanaka: "We fail to understand how charging nozzle 1 of Tanaka constitutes a 'blender.' " The Board also agreed with the Applicant that the purported benefit to the combination was not supported by evidence: "[T]he Examiner does not explain through evidence or technical reasoning how Tanaka's device, as modified, 'would increase the number of three dimensional patterns of the Tanaka apparatus.' "

Ex parte Wei
Appeal No. 2013-001316; Serial No 10,837,214; Tech. Center 3700
Decided:  January 30, 2015

The application on appeal was directed to a process of manufacturing a multi-phase liquid composition. A representative claim on appeal read:
     25. A process for making patterned multi-phase liquid compositions wherein upon dispensing said multi-phase liquid compositions from a container, phases of said multiphase liquid compositions are dispensed evenly from said container, said process comprising:
     placing a plurality of liquid phases in separate vessels equipped with supply lines for transferring said phases from said vessels;
     transferring, via said  supply lines, predetermined amounts of each of said liquid phases from each of said separate vessels into a combiner which aligns each  of said liquid phases in at least one of the following: one of said liquid phases is aligned within another of said liquid phases, said liquid phases are aligned side by side along a common line, or said liquid phases are combined into one line;
     transferring said liquid phases from said combiner to a blender;
     blending said liquid phases together, via said blender
, to produce a multiphase liquid composition having equal volume ratios of one phase to another;  and
     transferring said multi-phase liquid composition to an individual product container via a delivery nozzle,
     wherein said individual product container is received at a bottle holding device and secured to a rotating platform attached to said bottle holding device, and
     wherein said individual product container is rotated, via said rotating platform, when said multi-phase liquid composition is transferred to said individual product container via said delivery nozzle.
One of the issues on appeal was the meaning of "blender."

The Examiner rejected the method claim as obvious over Tanaka in view of Yamazaki. Tanaka was a US patent claiming priority to a Japanese application. Yamazki was a published Japanese application. Both were cited in an IDS, and the Applicant provided a translation of Yamazaki.

The Examiner relied Tanaka for everything except the "equal volume ratios" limitation, and on Yamakazi for that. The rejection as applied to Tanaka consisted of a recitation of the claim language, with a reference number from Tanaka next to each structure in the claims. Here is Tanaka's FIG. 1, annotated by me with the Examiner's mapping of structure to claim terms. 

The Examiner didn't point to any text description in Tanaka, but here is the single sentence in Tanaka that mentions how structure 1 interacts with the other components in the system:
In the multiple charging nozzle 3, as shown in FIG. 1, the charging nozzle 1 is connected to one charger 5, and the sub-nozzle 2 is connected to the other charger 6 so that the transparent gel base and the coloring material are forced into the charging nozzle 1 and the sub-nozzle 2 from hoppers 7, 8 by piston cylinders 9, 10, respectively.
Thus, the structure 1 which the Examiner mapped to the "blender" is referred to in Tanaka as "charging nozzle."

On appeal, the Applicant argued that Tanaka did not disclose a "blender:"
Element 1 of Tanaka is a charging nozzle. The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender.
(Emphasis added.)
The obviousness rejection also asserted – in the alternative – that structure 5 in Yamakazi (labeled "mixing pipe") corresponded to the claimed "blender." The Applicant did not argue the Examiner's alternative reliance on Yamazaki's mixing pipe. However, the Applicant did make a "teaching away" argument as to the combination:
Tanaka found that [the mixer] wouldn't work because it didn't form a three dimensional pattern. Additionally, as the method described in Yamazaki is also related to producing a pattern on the surface (para. 21), not a three dimensional pattern as discussed in Tanaka, Applicants submit there is no motivation from the disclosure of Tanaka to modify its method to include a blender from Yamazaki as stated in the Office Action. In fact, Applicants submit it teaches away from the addition of the blender in Yamazaki as Tanaka desires a three dimensional  pattern.
In the Answer, the Examiner asserted that this teaching away argument (i.e., Tanaka found the mixer wouldn't work) did not take into account the combination actually relied on by the Examiner. The Examiner's combination used a blender (not a mixer) from Yamakazi:
The blender of the Yamazaki reference specifically does not act as a mixer. In paragraph 21 Yamazaki describes designing the blender to avoid mixing the two fluid streams in order to preserve the visual pattern formed  by the separate materials. Therefore the applicant's argument that the Tanaka reference teaches away from mixing is not of any consequence to the proposed combination.
In the Final Office Action, the Examiner had profferred this rationale for adding Yamazaki's blender to the exit pipe in Tanaka's process: "to increase the number of different patterns which the Tanaka apparatus can produce." The Applicant attacked this rationale on appeal, arguing that the purported benefit to the combination was not supported by evidence:
The Office Action provided no support for why one of skill in the art would believe the addition of the Yamazaki blender for surface patterns would increase the number of three dimensional patterns of the Tanaka apparatus.
(Emphasis added.)
The Examiner addressed this argument in the Answer, contending that the Applicant had not fully appreciated Yamazaki:
The fact that the pattern is visible on the surface of the product [as taught in Yamakzai para. 21] is not an indication that the pattern does not extend into the body of the product, merely that the materials in question are opaque; more of the pattern becomes apparent as the surface of the product is worn away by use. The applicant's argument that the Yamazaki blender forms a two dimensional pattern only and is therefore not fit to combine with the Tanaka apparatus is based on an erroneous interpretation of Yamazaki, which clearly extrudes material in a three dimensional pattern.
The Board reversed the obviousness rejection. The Board first summarily agreed with the Applicant's argument about Tanaka: "We fail to understand how charging nozzle 1 of Tanaka constitutes a 'blender.' " Notably, the Board did not make explicit findings as to whether Yamakazi disclosed the claimed "blender," but merely noted (without comment) the Examiner's alternative reliance on Yamakazi's mixing pipe. The remainder of the decision focused on the rationale for combining.

The Examiner's rebuttal in the Answer focused on the Applicant's mention of surface patterns vs. three dimensional patterns. According to the Board, the Answer did not address the thrust of the Applicant's argument. The real issue was the number of patterns, since an increase in this number of patterns was the Examiner's reason for combining. However, the Examiner did not explain why a POSITA would expect such an increase:
More specifically, the Examiner does not identify how many patterns Tanaka discloses. However, it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds Tanaka discloses discharging a spiral pattern (see Ans. 6 (citing Fig. 4)). Similarly, the Examiner does not identify how many patterns Yamazaki discloses, but it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds that Yamazaki discloses "extrud[ing] material in a three dimensional pattern" (Ans. 7). Hence, the Examiner's findings evidence that Tanaka discloses one pattern and Yamazaki discloses one pattern. Additionally, the Examiner does not identify how many patterns Tanaka's device, as modified by Yamazaki's teaching of blender (5), would produce.
My two cents:  I'm not familiar with the term "charging nozzle," and was curious as to whether its meaning is anything close to blender, as alleged by the Examiner. In patents originally filed in English, the most common usage of "charging nozzle" seems to be in context of electrostatics, where "charging" refers to electric charge. However, when "charging nozzle" shows up in patents translated from Chinese or Japanese, it seems to mean "nozzle for filling with gas or liquid." I think this is the sense used in the Tanaka reference. In fact, the machine translation of Tanaka's Japanese language priority document refers to structure 1 as a "filling nozzle." So what could the Examiner have been thinking, asserting that Tanaka's filling/charging nozzle mapped to the claim term "blender"? 

The Examiner gave zero explanation for the mapping – didn't even point to a particular portion of Tanaka's description. But I wonder if the Examiner simply looked at Tanaka FIG. 1, saw that the transparent gel from hopper 7 meets the coloring material from hopper 8 in nozzle 1, so concluded that this meeting of two materials constituted "blending" and the structure in which this action occurred was therefore a "blender." 

Maybe that's the Broadest Reasonable Interpretation, and maybe it's UNreasonably Broad. I'll assume that any structure that effects "blending" is considered a "blender." Even if that's true, this interpretation is reasonable only if a meeting of two liquids in a confined area is considered "blending" -- and UNreasonable if that involves more vigorous action. 

Because the Examiner didn't explain his interpretation, the Applicant didn't have much to argue against – unless the Applicant chose to engage in pure speculation, as I did above. This Applicant chose not to, and instead threw it back on the Examiner: "The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender."

Often when neither side explicitly raises claim interpretation as an issue, the Board takes it upon itself to determine the Broadest Reasonable Interpretation. I was surprised that didn't happen here. Instead, the Board essentially agreed with the Applicant that the Examiner didn't provide enough explanation.

Though it wasn't framed this way, the Board's adoption of the Applicant's position  – the Examiner didn't explain  – makes me wonder if the Board was thinking in terms of Examiner burden. In other words, perhaps the terms "blender" and "charging nozzle" are different enough that a mere assertion by the Examiner that the claim term reads on the reference term isn't enough? Such that all the Applicant has to do is challenge the Examiner's assertion, rather than explaining why the claim term does not read on the reference term?

I wish this decision was one in which the Board imposed an Examiner requirement to put an explicit claim interpretation on the record. But I'm not all sure that's what's happened here. Nor do I recall ever seeing a discussion of burden as it relates to claim interpretation at the Board. In fact, it's fairly common for the opposite to happen: for the Examiner to offer no interpretation at all for a claim term, and still have the Board adopt the Examiner's "findings" and ding the Applicant for not explaining why the claim term doesn't encompass the reference term. So as a practical matter, the Board seems to put the burden on the Applicant to put forth a claim construction, or at least to explain why the Broadest Reasonable Interpretation of the claimed "widget" does not read on the "blodget" in the reference.

Here, the Examiner should have connected the dots by saying "charging nozzle 1 is where two liquids meet, so they undergo some degree of blending, and thus charging nozzle 1 is a 'blender.' " Since he didn't, I would probably raised this issue myself, either in a response or in an Examiner Interview.  Usually, the Examiner will either acknowledge that my understanding of his position was correct, or will correct my misimpression and tell me what he was thinking. Once I understand the Examiner's position, I can better evaluate whether I should stick to my arguments or amend.

Failure to address claim construction is a huge driver of prolonged prosecution. And failure on the part of Applicants to take into account Broadest Reasonable Interpretation explains most of the high rate of affirmance at the Board. So until there's a requirement for the Examiner to put claim construction on the record, Applicants should consider raising the issue of BRI, even if the Examiner doesn't. 

Friday, July 10, 2015

Examples of abandonment after failure to handle drawing requirement

In this post, I'll discuss some applications that went abandoned because the Applicant didn't properly handle drawing objections or requirement that occurred at the last stage of prosecution. The takeaway I see here is that even if you disagree with the drawing requirement/objection itself, or with the PTO's handling of something, you can't just ignore it. You should instead respond as required, and if you think the Examiner is wrong, handle it via petition, as required by the rules. And yeah, fighting it always means extra effort and sometimes real money (EOT fees, petition fees). But those are the rules. 

Application 11/776,390 (history available on Public PAIR) went into appeal with several drawing objections present in the last Office Action before appeal. The Board reversed the Examiner's rejection of one independent claim, and the Applicant filed an RCE to take the allowable subject matter. However, the Applicant did not address the outstanding drawing objections in this reply. The Examiner sent a Notice of Abandonment and indicated that the RCE was improper and thus "any time period running was not tolled by the filing of the improper request." The Applicant's reply "did not address the outstanding objection in the Miscellaneous Action mailed 11/15/2013, as required, and therefore is improper."

Application 11/461,132 (history available on Public PAIR) received a Notice of Allowance, but the Examiner's Notice of Allowability indicated outstanding issues with the drawings. The summary sheet of the Notice of Allowability checked the box "Corrected Drawings must be submitted, including changes required by the attached Examiner's Comment." The Detailed Action explained that formal drawings in compliance with 37 CFR 1.121(d) were required because the originally filed drawings "are not formal (i.e, uniformly thick numbers and lines, etc.)." The PTO sent a Notice of Abandonment after the Applicant paid the issue fee but did not submit new drawings. 

In Application 11/461,084 (history available on Public PAIR) , the very first Examiner communication was an Ex Parte Quayle Action indicating all original claims were allowable. However, no drawings were filed with the application, and the Action also required the Applicant to submit a drawing since "the subject matter admits of illustration by a drawing." Two months after the Ex parte Quayle Action, the Examiner sent a Notice of Abandonment, indicating a failure to reply to the Ex parte Quayle Action. Two weeks later, the Applicant filed a Petition to Withdraw the Holding of Abandonment, arguing that extensions of time under 1.136 were available for an Ex parte Quayle Action, so that the application was not in fact abandoned at the two-month mark. The Petition also requested that that the period for reply to the Action be reset "in order to place the Applicant in substantially the same position as he was when this Petition was filed." Notably, the Applicant did not submit the drawings along with this Petition. The Petition Decision withdrew the holding of Abandonment, but did not reset the reply period. With no drawings submitted and the clock on the Ex parte Quayle still running, the Applicant filed a 3-month extension of time with a Response arguing that no drawings were necessary. The Examiner withdrew the drawings requirement and issued a Notice of Allowance.

In Design Application 29/356,231 (history available on Public PAIR), the Applicant filed a Preliminary Amendment about six weeks after filing to amend the drawings "to provide proper indication, in Fig. 1, of the longitudinal sectional view show in Fig. 2." Only four days after those drawings were filed, the Examiner sent a Notice of Allowance. The Notice of Allowability indicated that "corrected drawings must be submitted including changes described in the attached Examiner's Amendment/Comment."  In that attachment, the Examiner indicated that the drawings were objected to because Fig. 7 cross-sectional view wasn't referenced in any other figure. "That is, there are no directional arrows with numerals at the end that shows from which the view is cut."  The Applicant paid the Issue Fee but did not file drawings in response to Notice. The PTO sent a Notice of Abandonment, which the Applicant petitioned. In the Petition, the Applicant pointed out that drawings addressing the objection were in fact filed, four days before the Examiner's action. The Petition Decision upheld the abandonment, noting that the Notice of Allowance "clearly required drawings" and that the Applicant did not file a reply to this Notice as required by the statute. 

The Applicant filed a Request for Reconsideration arguing that the drawings did in fact comply with the outstanding requirement, and it was irrelevant that this submission was made before the Notice. However, the Petitions Office maintained its position, explaining that "it is clear that the Examiner made a requirement for drawings after these drawings [in the Preliminary Amendment] would have become part of the official application." The Applicant then revived the application for unintentional abandonment, including the drawings with the revival petition, and the patent issued.