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.' "

Details:
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. 

29 comments:

  1. So under your 2 cents of advice, the Applicant should have created a detailed prosecution history and likely undermined what now amounts to an allowance.

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  2. "Nor do I recall ever seeing a discussion of burden as it relates to claim interpretation at the Board."

    That's because Appellants don't correctly phrase their argument. The burden is on the examiner to establish, by a preponderance of the evidence, that all of the claim features are within the scope and content of the pertinent prior art, when the claim is given its broadest reasonable interpretation. That's what you need to argue. That the examiner has not met this burden of proof.

    "The 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."

    Well, arguably under the reasoning of In re Jung, the examiner meets the initial burden of production by simply identifying an element(s) that are alleged to correspond to the claimed element/feature. So if the examiner identified the charging nozzle as corresponding to the claimed blender, the examiner has "successfully shifted the burden" to Applicant. As you've noted many times, Karen, simply saying, "The widget identified by the examiner does not correspond to the claimed blodget" is not going to get you very far with the Board. And I don't think it should. Unless the situation is one in which the rejection is so uninformative as to prevent Applicant from making an informed reply. But the examiner bears the ultimate burden of persuasion of establishing that all of the claimed elements/features are within the scope and content of the pertinent prior art, and it never hurts to remind the Board of that.

    I think Applicant got lucky in this case. Admittedly, I only read your summary, but I wouldn't recommend traversing an examiner's "finding(s)" with nothing more than, "No it's not" but as long as In re Jung is on the books, you gotta do more.

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    1. "The burden is on the examiner to establish, by a preponderance of the evidence, that all of the claim features are within the scope and content of the pertinent prior art, when the claim is given its broadest reasonable interpretation."

      Overall, not bad advice except for the exposition. You're getting there. But you lose credibility with the Board by making stuff up and announcing you don't know the difference between a finding of fact and the weighing of evidence. And don't know much about Graham v. John Deere Co. (but it's such an old case, anyway, who cares?).

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    2. Do you use your right hand or your left hand to work yourself up waiting for me to post? Given how long it's been since I've posted, you must have had the worst case of blue b#lls in history. Glad I could help you relieve some of that "tension." Now use as much Kleenex as you need to clean up and resume typing with two hands.

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    3. >Well, arguably under the reasoning of In re Jung, examiner meets
      >initial burden of production by simply identifying element(s)
      >alleged to correspond to the claimed element/feature.

      Right, that's what In re Jung requires. Is that the *only* requirement? It doesn't matter how far off the claimed feature is from the reference feature?

      I suppose I'm looking for boundaries here. Say the Examiner uses some really ridiculous mapping like, I dunno ... a "bicycle component" mapped to the soap dish 1 in US 1,561,432. (True story.) Does the Applicant have to say more than "bicycle component is not a soap dish" ?

      The mapping in Ex parte Wei (blender = charging nozzle) probably isn't as far off as bicycle component = soap dish. But on its face, blender = charging nozzle certainly doesn't give the Applicant much to go on.

      >Unless the rejection is so uninformative as to
      >prevent Applicant from making an informed reply.

      And I guess this answers my question. The requirement is more than the bare bones "statutory basis, plus references relied on". Also "in a sufficiently articulate and informative manner" that avoids being "so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection."

      Seems pretty clear to me that mapping bicycle component to soap dish (without more) isn't informative enough, so if fails the In Re Jung threshold. Which means the Applicant is entitled to say no more than "the Examiner didn't present a Prima Facie case."

      >I wouldn't recommend traversing examiner's "finding(s)" with
      >nothing more than, "No it's not" but as long as In re Jung
      >is on the books, you gotta do more.

      So if you choose *not* to explain *why* a widget <> blodget, or blender <> charging nozzle, or bicycle component <> pipe ... then you're taking a big chance. The Board might find that the Examiner didn't provide enough notice [appears to have happened in Ex parte Wei], which means you're not required to explain. Or the Board might find that the Examiner did provide enough notice, and you didn't rebut the Examiner's findings ... so you lose. [But hey, at least you kept the prosecution history squeaky clean, something many prosecutors value above all else.]

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    4. I think that's the approach you have to take. If your argument is, "Hey, this is so far off base no further explanation of why the blodget of the reference does not correspond to the widget of the claim" then that's a perfectly acceptable response. But if you go back to Jung, as J. Linn noted, "Jung merely argued that the claims differed from Kalnitsky, and chose not to proffer a serious explanation of this difference. The examiner disagreed, and rejected the claims..." and then "...It was not until he arrived at the Board that Jung explained the difference more thoroughly... In response to this argument, the Board further explained the examiner's rejection, noting that nothing in the claims limited the controller to this embodiment. The Board's thoroughness in responding to Jung's delayed explanation did not change the rejection, and Jung had the fair opportunity to respond."

      Bottom line is: don't wait until you get to the Board to explain why the blodget is not a widget.

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    5. BTW, if you read the Jung decision more thoroughly than the snippets I posted here, you'll find that the reason Jung didn't "proffer a serious explanation of the difference" was because they were trying to have limitations from the spec read into the claim, for examination purposes, without actually putting the limitations in the claim, presumably for litigation purposes. That strategy didn't work. Nor should it have.

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    6. >Jung didn't "proffer a serious explanation of the difference" was
      >they wanted limitations from the spec read into the claim,
      >during examination, without actually putting the limitations
      >in the claim, presumably for litigation purposes

      The Applicant in Jung was in good company, in the sense that a great many Applicants want to have it both ways.

      The assignee of the Jung application does ex parte appeals in a lot of applications, and I suspect there's a bit more going on. I think this assignee wants the Fed Cir to re-think the Notice requirement of 1.132 and the burden stuff we've been talking about here, and is waiting on the right case to serve as a vehicle for that. Almost every one of their ex parte appeal briefs contains a lot of boilerplate about prima facie, notice, burden, Official Notice, fact finding, etc etc. Sometimes they hedge their bets by arguing that Examiner burden isn't met so nothing more needs to be said, but in case the burden was met, here's why the Examiner erred.

      Seems clear to me that the Ex parte Jung that became In re Jung was a *terrible* vehicle for this, with terrible facts. So not sure why they chose to use that one as the vehicle for a reinterpretation of the law. But I do hope another one of these Ex parte X becomes In re X, and that in reviewing this issue again, the Fed Cir imposes a higher burden on the Examiner than merely statute, col/line.

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    7. I would first look to Applicant's specification to find out what a "blender" means, then argue that Examiner's "blender" lacks the definition quality of a blender. If Examiner came back and said "it blends because the products from the combiner are squished together resulting in blending," Applicant is probably stuck filing an RCE to rebut.

      Putting a shoe on your head doesn't make it a hat, unless the definitional quality of a hat is that it covers your head. In which case, a shoe covering your head is by definition a hat.

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    8. "Definitional quality" ... I like that.

      Certainly many many nouns have a functional aspect to them ... you could say that blenders blend, hats cover heads, screwdrivers drive screws. The trick is figuring out when a particular term covers absolutely everything that performs the function, versus when a particular term connotes some amount of structure. And then figuring out what that structure is. (And this assumes that we've already figured out the meaning of the function verb itself, here "blend".)

      Screwdriver is an interesting case. Is a coin a screwdriver because it achieves the function of a screwdriver? Or does a screwdriver connote an elongated structure with one end shaped to fit a hand and the other end shaped to fit into the slot of a screw head?

      I say the term "screwdriver" does NOT cover a nickel, even though a nickel can be repurposed as a screwdriver. That's just not what a POSITA understands a screwdriver to mean. (Maybe that's what Anon above was getting at with "definitional quality"?)

      But if screwdriver *does* connotes the structure I mentioned above, what about the thingie I saw in the hardware store the other day? It looked a lot like a large coin, but with a flat edge protrusion at the other end which fits into the slot of a screw head. I wouldn't say it was elongated like a typical screwdriver. But it was designed to operate as, and was being sold as, a screwdriver.

      So it seems tricky to find a structural definition of screwdriver that includes all varieties of tools recognizable to a POSITA as such. Even so, I'm not yet persuaded that "screwdriver" is a purely functional term such that the term reads on absolutely anything that could turn some kind of screw.

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    9. > look to Applicant's specification to find out what "blender" means,
      >then argue that Examiner's "blender" lacks the definition quality of a blender.

      Many times the Applicant's spec won't have a *definition* of the term at issue (here, "blender"). Without a definition, pointing to portions of the spec that further describe the term is often a losing proposition ... all that case law about not importing limitations from the spec.

      Here's what this Applicant's spec said about "blender":
      [0068] The blender section 7 comprises a mixing element that comprises a series of obstructions for diverting the liquid phases entering, inducing turbulence and causing the phases to blend together in a way that contributes to forming the composition's eventual in-package pattern. In most cases a static mixer is utilized in the blending section. Static mixers are well know in the art and are generally in the form of a series of repeating or random, interlocking plates and, or fins.

      I don't think this rises to the level of a definition, but it does speak to me about what the drafter had in mind. I see several options for this Applicant. Maybe introduce other patents as evidence about what "blender" means in this art. Maybe amend to add structure. Or maybe amend to means-plus-function format.

      What the Applicant chose to do instead -- appeal without any discussion of what the claim term meant -- was very risky.

      >If Examiner came back with "it blends because products
      >from combiner are squished together resulting in blending," Applicant
      >is probably stuck filing an RCE to rebut.

      Disagree that Applicant would then need to file an RCE to rebut. You've already stipulated that Applicant specifically argued the meaning of "blender". So RCE is appropriate only if Applicant will be offering evidence (declaration or technical information) to rebut this point.

      Otherwise, since both the Applicant and the Examiner have, by your stipulation, already gone on record about the meaning of "blender," the Applicant could go straight to appeal and let the Board decide who is right.

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    10. "Seems clear to me that the Ex parte Jung that became In re Jung was a *terrible* vehicle for this, with terrible facts. So not sure why they chose to use that one as the vehicle for a reinterpretation of the law. But I do hope another one of these Ex parte X becomes In re X, and that in reviewing this issue again, the Fed Cir imposes a higher burden on the Examiner than merely statute, col/line."

      Yes, let's all once again thank Rob Sterne for taking a truly sh!tty case with sh!tty facts and sh!tty arguments to the Fed. Cir. not only so that he, his client, and his sh!tty firm could get b!tch slapped by the court, and so we can all get b!tch slapped with the sh!tty "precedent" he helped to set.

      Thanks, Rob.

      One can almost see the annoyance on J. Linn's face when reading the decision. Unfortunately, in his "lesson" to Rob Sterne about what a turd of a case he was bringing to the court, J. Linn let his pique get in the way of his role as a judge. Why do examiners get to provide mere "notice" and applicants have to offer a "serious explanation" of the differences between the claims and the prior art. The examiner has to establish that all of the features of the claim, when given the BRI, are within the scope and content of the prior art. Why doesn't the examiner have to offer a "serious explanation" of how the prior art's elements/features correspond to the claimed features and how that reading of the prior art is consistent with applicant's use of the terms and consistent with the interpretation one of ordinary skill in the art would reach?

      Because Rob Sterne is a self promoting jack a$$? Because J. Linn was cheesed that such a sh!tty appeal was taken?

      Thanks again, Rob.

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  3. Here MaxDrei:

    Consider a mixer tap for filling a bathtub. It is "nozzle" that "charges" the tub with water. It is fair to describe it as a "charging nozzle".

    It receives a flow of hot water and a flow of cold water. Inevitably, it blends them. It is therefore inherently a "blender".

    In Tanaka, the charging nozzle performs to colour the ttransparent gel with the colouring material. The only way to achieve that colouring is to "blend" the colouring material with the transparent gel. Personally, I don't see why any further explanation is needed from the USPTO Examiner, why the Tanaka charging nozzle is indeed a "blender". In mechanics, otherwise than in chemistry, different authors use different words to identify the self-same thing.

    Incidentally a "blender" in German is a bluffer or a phoney!

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    1. It receives a flow of hot water and a flow of cold water. Inevitably, it blends them. It is therefore inherently a "blender".
      I am reminded of an observation by a very astute patent attorney that "just because you can put your shoe on your head doesn't make it a hat."

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    2. Good point. But I am sceptical that the definition of a "hat" is "anything one can put on one's head" for then an object like a postage stamp would be a "hat" too, and that can't be right can it? Was your "very astute" patent attorney a man? And one who had a predilection for wearing carpet slippers on his giant-sized feet? That would explain his wise words.

      My point is that a mixer tap for a bath is inherently a "blender" of two fluid flows whereas a shoe is not inherently a hat. With a mixer tap, you can't help but blend. Conversely, only with a great feat of imagination can you perceive a shoe as a hat. Unless you're the unfortunate guy who thought his wife was a hat:

      https://en.wikipedia.org/wiki/The_Man_Who_Mistook_His_Wife_for_a_Hat

      Now you might want to tell me that a "blend" of two fluid flows is not the same as a "mix" of two fluid flows. But then we are into DIY lexicography, aren't we?

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    3. >I don't see why any further explanation is needed from Examiner,
      >why the Tanaka charging nozzle is indeed a "blender".

      So your reasoning is that you were able to figure out how the Examiner mapped charging nozzle to blender, by merely looking at how the nozzle operates in the reference. (Same reasoning I mentioned in my post). Since you figured it out without too much trouble, the Examiner met his "notice" requirement.

      Right?

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    4. Karen, I'm commenting from Europe. I'm not a US attorney. I see prosecution as an opportunity to carry through to issue something that will withstand validity attacks after issue. You see, in Europe, those attacking validity post issue need only reach a "more likely than not" standard to get the attacked claim declared invalid, and no judge after issue gives any deference to the work of the PTO prior to issue. So it behoves an Applicant to take any observations the Examiner and ask whether they reveal any validity attack that can be neutralised before the case goes to issue.

      The US way is different. I see that. Î refrain from any criticism of the US approach. I just try to understand it. Not sure I appreciate all the ramifications of the "Notice Requirement"

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    5. I'm in total agreement with MaxDrei, with further comments. First, charging a vessel (container) merely means filling it. In everyday English, probably the opposite act of discharging (emptying) a vessel is more commonly used. But if you have an empty propane tank, for example, you refill it by charging it. This fluid-mechanical terminology is analogous to the electrical terminology of charging and discharging a rechargeable battery. So a charging nozzle is merely a nozzle for filling a vessel. It does not inherently act as a blender.

      In MaxDrei's bathtub analogy, the faucet fills the bathtub with incoming water. If the incoming water is only a single stream (cold water only or hot water only), the faucet does no blending or mixing. It is the configuration of the faucet to simultaneously receive two incoming streams (hot and cold together) and output a single stream that causes the faucet to act as a blender.

      Referring to the diagram from Tanaka, there is a component 2 combiner that combines the streams from the two inlet vessels and the outlet of the combiner then flows through the common charging nozzle. Combiner 2 by itself could probably read on a blender. Regardless, between the combiner and the charging nozzle, the two streams are blended. The Examiner could simply have presented this explanation. The burden would then be on the Applicant to show how the claimed blender differs from Tanaka.

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    6. In Tanaka, the charging nozzle performs to colour the ttransparent gel with the colouring material. The only way to achieve that colouring is to "blend" the colouring material with the transparent gel. Personally, I don't see why any further explanation is needed from the USPTO Examiner...

      On the other hand, I do see why a further explanation is required and why the board probably took the position that it did.

      Tanaka abstract: The present invention relates to a method and apparatus for charging a cosmetic material which is capable of providing a transparent cosmetic material containing a three-dimensional pattern formed by a coloring material.

      Also, look at Tanaka's Fig. 4.

      The colorant is not blended into the gel as a dispersion -- it is laid in, surrounded by the gel, and the container below the charging nozzle spun so as to form a colored structure surrounded by transparent gel. In other words, Tanaka's structure functions as the "combiner" of the claims.

      The blender element must do more than merely combine the separate phases since that is what the combiner already has done. When read in context of the claim and according to the specification as interpreted by one of ordinary skill, you'd have to show some greater degree of mixing than simply a parallel stream of colorant inside a transparent gel. In addition, that blending cannot be via rotation of the individual container, which is again a separate element recited within the claims.

      Tanaka discloses the combining and rotating actions, but probably not anything that can be called "blending" -- laminar flow velocity gradients within the charging nozzle are probably outside the broadest reasonable interpretation of the "blending" term.

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    7. MaxDrei here again. Good contribution from that last anon.

      Even as I typed my earlier contributions, I had in mind a toothpaste which, in the UK, was called SIGNAL. Red stripes in a white base. Two streams of fluid merging. But no blending.

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    8. And if there are these fine nuances between combining and blending that DRJLaw refers to, then that is how the Applicant should have responded to rebut the 103.

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    9. >if there are fine nuances between combining and blending ...
      >that is how the Applicant should have responded to rebut the 103.

      Well, don't belittle "fine nuances" :-) Claim drafting / interpretation is all about fine nuances.

      I'm still on the fence about whether this particular scenario was one that demanded the Applicant to explain why Tanaka's structure did not blend.

      I'm definitely a big advocate of addressing claim construction head on, and have said countless times that arguing nothing more than "widget is not a blodget" is a bad idea. Yet I feel here that the bare assertion "blender => charging nozzle" didn't give Applicant much to go on, allowing the Applicant to wait for the Examiner to offer more. But only if the Applicant appreciated that this was a gamble, that the Board might say the Applicant didn't show any error in the Examiner's position.

      I think my stance here is a result of my unfamiliarity with this technology area and the terminology used ... like i said before, I just didn't get anything out of "charging nozzle."

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    10. I'm not belittling fine nuances. Both the Examiner and the Applicant messed up. The Examiner could easily have said that the combiner, or better still, the combination of the combiner and the charging nozzle, in the prior art reads on a blender. The Applicant could then easily have rebutted based on the degree of homogeneity produced by blending vs combining. If combining red paste and white paste to produce candy-cane paste is different from blending red paste and white paste to produce pink paste, then argue accordingly. OK, the Applicant won his appeal. But an appeal could easily have been avoided.

      Here's an analogy closer to your field. Suppose your claim recited an "encrypter", and the Examiner cited prior art that disclosed an "encoder". Would you appeal, or traverse, explaining why an encoder is not an encrypter?

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    11. >Both the Examiner and the Applicant messed up. ...
      >But an appeal could easily have been avoided.

      Absolutely. As you say, both could have better explained their position, and perhaps once the two sides understood each other, agreement could have been reached. Amendments, better art, whatever.

      >Would you traverse, explaining why encoder not an encrypter?
      > Or would you appeal *without first explaining* ?

      BTW, the above is a restatement of your question as I understand it.

      Before appealing, I *would* first try to understand why the Examiner is reading "encrypt" on "encode." This is my field, so it's not hard to me to can guess. I'll bet there is some overlap in the definitions, at least in general purpose dictionaries.

      So I'd respond by saying "assuming the Examiner thinks encrypt = encode" and then I'd discuss overlap in meaning, and explain why those meanings are inapposite. Maybe introduce definitions from a technical dictionary that support my position that encrypt != encode.

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    12. "So your reasoning is that you were able to figure out how the Examiner mapped charging nozzle to blender, by merely looking at how the nozzle operates in the reference. (Same reasoning I mentioned in my post). Since you figured it out without too much trouble, the Examiner met his "notice" requirement.

      Right?"

      That's exactly what J. Linn said to Rob Sterne. "You figured out what the examiner was saying. We can tell because your arguments that the examiner hadn't procedurally met his burden were the same as your arguments why the examiner hadn't substantively established that all of the claimed features were within the scope and content of the prior art." See the paragraph spanning 1362-63 of Jung.

      BTW, when the Fed. Cir. classifies your argument as "hollow" (1365 of Jung), that's a pretty good indication that you've done a sh!tty job.

      Great work, Rob. Hope you refunded the client's money after that POS effort.

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    13. "That's exactly what J. Linn said to Rob Sterne. "You figured out what the examiner was saying. We can tell because your arguments that the examiner hadn't procedurally met his burden were the same as your arguments why the examiner hadn't substantively established that all of the claimed features were within the scope and content of the prior art." See the paragraph spanning 1362-63 of Jung."



      That quote is not from Jung, and of course the Federal Circuit would say no such thing. They know what "scope and content of the prior art" means. See Bausch & Lomb v. Barnes-Hinds, Miliken Research Corp. v. Dan River, etc., etc. etc.

      But, signs of improvement. You wrote an entire paragraph without saying "preponderance."

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    14. You must have let loose a real gusher on that one. Hope your Kleenex supply was adequate.

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  4. Karen -- since you haven't posted in awhile, perhaps you might want to look at how the Board is (improperly) relying upon the "uniquely challenging" language within Leapfrog. Aside from Lowry and Keller, Leapfrog has to be one of the most misconstrued decisions by the Board.

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  5. Hazzah brings up a good point with this appeal in that it highlights the problems with BRI from both perspectives. Specifically, the examiner didn't actually engage in BRI because there was no interpretation. We *know* what he was doing "the tube is where the mixing occurs - eg. blending" however, without that explanation, legally, it is an educated guess, but a guess nonetheless.

    As an attny the LAST thing you should do is guess at the interpretation the Examiner is making. What should have happened here is that the attny should have called the Examiner to get the interpretation down.

    But it's also the attny/applicant's fault as well. Reciting "blender" and "blending" blurs the line. Any mixing is blending, however, by using "blender" and "blending" the attny obfuscated the method which simply was "blending". Arguing that there needs to be a specific device for their version of "blending" (which is basically what they did) in a method claim while not reciting the structure leads the Examiner to guess at what the applicant is getting at.

    This is a perfect example of two people being coy and not explaining their positions. I would expect better from both

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