BPAI affirms obviousness when Applicant admits "probably enough routines in the 600 page reference to build the system of the invention"

Takeaway: In Ex parte Daks, the Applicant appealed an obviousness rejection using a 600 page user manual as a primary reference. The Applicant acknowledged the breadth of teachings in the reference: "Admittedly, there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built." But the Applicant argued that these teachings were too general, and did not provide a POSITA "with the specific guidance necessary to combine the diverse [features in the reference] to develop Applicant's claimed invention." The Board used the admission to affirm the obviousness rejection. "We find no error with the Examiner’s conclusion that, in view of Appellants’ admission that all claimed limitations are taught by Project, one of ordinary skill in the art would have found it obvious to apply the claimed limitations.

Details:
Ex parte Daks
Appeal 2009007621; Appl. No. 09/966,004; Tech. Center 2100
Decided  March 11, 2011

The application involved software for tracking development. of software products. A representative claim on appeal read:

   8. A method for tracking the development of software products having a plurality of developmental lines on a computer controlled display comprising:
     setting in each of said plurality of developmental lines, a sequence of checkpoints;
     tracking each of said developmental lines to determine the reached checkpoints; and
     simultaneously displaying said plurality of developmental lines and indicating said reached checkpoints.

During prosecution, the Examiner rejected the independent claims as obvious over the book "Using Microsoft Project 98" in view of a U.S. patent to Song. The Examiner relied on the Microsoft Project book for everything except "plurality of developmental lines." The Examiner then alleged that Song disclosed defining checkpoints for "components or developmental lines" during project execution. The Examiner further alleged that the motivation to combine was the book's teaching of "organizing a project activity or task list into phases."

The Applicant appealed, and in the Appeal Brief argued that the combined references did not disclose simultaneous display of multiple developmental lines. The Applicant acknowledged that Project 98 described a planning tool which simultaneous displayed tasks at the same level in a task hierarchy, but argued that these teachings about task hierarchies are "too vague and unspecific to lead one skilled in the art" to apply them to developmental lines.

The Applicant also argued that the Examiner used hindsight to piece together a rejection from general teachings in a 600 page user guide:

The Examiner has cited sections from the large publication. The Project text does provide a user with software tools for the management of business or manufacturing projects including scheduling, assignment of tasks, allocating resources, and even bench marking which for the purpose of this discussion will be considered as check pointing. The Examiner has picked general elements from the Project text book and proposed combining such general elements, not based upon any suggestion the Project text, but based primarily on Applicants' own teaching. Admittedly, there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built. However, Applicants submit that the cited Project text does not provide one skilled in the art with the specific guidance necessary to combine the diverse tools and routines in Project to develop Applicants' claimed invention.
(Emphasis added.)

 In the Answer, the Examiner revised the rejection to explain that Song was "largely cumulative to the evidence contained in Project." The Examiner then explained how the teachings in "Using Project 98" about tasks corresponded to simultaneous display of multiple developmental lines:

The additional cited teachings of Project shown that has been known to break up large projects into separate phases of functional groups, which form tasks that are individually managed as part of overall project management. These separate tasks and associated resources may be considered developmental lines. .... Project further describes simultaneous display of multiple tasks in the Gantt chart and displaying multiple milestones.
(Internal citations omitted.)

The Examiner attacked the hindsight argument by noting that:

[E]verything disclosed in the Project reference pertains to features found in a single software product, namely the Microsoft Project 98 software product. Thus, the elements of the Project reference relied upon were not combined based on applicant's own teachings through impermissible hindsight as applicant alleges but were instead already combined (by Microsoft Corporation) prior to applicant's filing date.
(Emphasis added.)

The Examiner then seized upon a statement made by the Applicant in the Appeal Brief:

Appellants' admission that, "there are probably enough tools and routines disclosed in the cited over 600 page Project text through the use of which the system of the invention could be built," is itself an apparent concession that the claimed invention would have been obvious in view of the Microsoft Project 98 software product described in the Project reference.
(Emphasis added.)

The Applicant filed a Reply Brief attacking the motivation to combine. Even if "each of the individual elements could be found in the 600 page Project 98 reference," the Examiner "has failed to show any teaching in this reference that the individual elements could be combined."

The Board affirmed the obviousness rejection. The affirmance appeared to be at least partly based on the Applicant's admission in the Appeal Brief:

We agree with the Examiner that “[A]ppellants’ admission … is itself an apparent concession that the claimed invention would have been obvious in view of the Microsoft Project 98 software product described in the Project reference” That is, we find no error with the Examiner’s conclusion that, in view of Appellants’ admission that all claimed limitations are taught by Project, one of ordinary skill in the art would have found it obvious to apply the claimed limitations.
(Emphasis added.)

The Board also noted that the KSR rationale "combination of familiar elements according to known methods ... [to] yield predictable results" was applicable here: a POSITA "would have found it obvious to combine Project’s teaching of tracking and displaying of project development with Song’s teaching of tracking and displaying software development."

My two cents: Everything you say can and will be used against you. Not just in litigation, but as this case shows, also during prosecution.

The Applicant's main focus was "not enough reason to combine these disparate teachings from a really big reference" rather than on the specific elements. And I think the damaging statement made by the Applicant was simply meant to highlight the lack of reason to combine. But the Applicant shot himself in the foot by making what comes very close to an explicit admission that all the elements were taught.

Was it an admission? The only thing that keeps the statement from being a bright line admission is the qualifier "probably." I would have qualified more carefully, with "even if" or "assuming for the sake of argument."

Actually, I wouldn't have made the statement in the first place. While the statement may be an attempt to bolster the no-motivation argument, it does so at the expense of does-not-teach. And we all know that does-not-teach, rather than no-reason-to-combine, is your best chance of winning an obviousness argument.

BPAI says Background discussion of prior art deficiencies is not admission that feature exists

Takeaway: In Ex parte Burdgick, the Applicant appealed in a case related to steam turbines. The Applicant's background stated that "Conventional turbine casing design techniques were not particularly helpful in identifying those key pipe connections that distort the turbine casing (seals) or in establishing load limits for pipe connections." The Examiner asserted that this Background statement disclosed the method step "identifying a plurality of the pipe connections as key pipe load connections on the turbine casing." The BPAI disagreed, finding that the Background instead taught a "lack of ability to identify" connections as claimed.

Details:
Ex parte Burdgick
Appeal 2009004835; Appl. No. 10/317,192; Technology Center 2100
Decided  November 19, 2009

Method claim 1 recited:

1. A method for establishing load limits for pipe connections to a turbine casing comprising:
a. identifying a plurality of the pipe connections as key pipe load connections on the turbine casing, wherein the key pipe load connections is a subset of all pipe load connections on the turbine casing;
b. developing transfer functions to model deformation of the turbine casing based on loads applied to the key pipe connections;
c. establishing individual load limits for each of the key pipe connections by optimizing solutions to the transfer functions, and
d. establishing a cumulative load limit for the key pipe load connections by optimizing solutions to the transfer functions.

The Examiner asserted the claim was obvious. The primary reference allegedly taught "finite element analysis and optimization of structural designs including turbine housings", but "did not provide much detail about the loading of pipes on turbine". The secondary reference allegedly taught "FEM analysis of pipe loading on pressure vessels including deformation failure and load limit determination." The Examiner then filled in the remainder of the claim using Applicant's background as Admitted Prior Art (APA), as follows:

It would have been obvious to one of ordinary skill in the art at the time of invention to modify the teaching of Oi et al. with the pipe loading analysis teachings of Meier et al. for the following reasons. Applicants have admitted (page 2, specification) that it was known to obtain pipe load limits on turbines:

[0005] Excessive piping loads can also distort the turbine casing during turbine transient operations. Piping loads during transients, especially when cooling occurs in the pipes, tend to distort the turbine casing to reduce the clearances between the seals and buckets. If these clearances become too small, the stationary seals may "rub-out" as they scrap against the rotating buckets. Seals that rub-out do not provide effective sealing as they allow excessive steam leakage during steady state turbine operating conditions. Accordingly, excessive piping loads may damage and distort the seals between the casing and the buckets such that turbine performance is degraded.
[0006] Piping load limits are imposed on the turbine design to avoid excessive piping loads that unduly distort the casing. In the past, these limits have been based on empirical and historical information regarding prior piping loads on similar turbine casing. It was common for piping load limits to be developed using simple calculations of the loads on the casing. Conventional turbine casing design techniques were not particularly helpful in identifying those key pipe connections that distort the turbine casing (seals) or in establishing load limits for pipe connections. Accordingly, there is a long felt need for methods to establish pipe load limits on turbine casings that avoid excessive casing distortion.

On appeal, the Applicant argued that APA did not disclose "identifying key pipe connections":

Applicant's Admission are statements in the application describing problems associated with excessive piping loads (para. 0005) and the prior art practice of developing piping load limits based on "empirical and historical information regarding prior piping loads on similar turbine casing[s]". [Para. 00061. These prior art techniques do not suggest the above highlighted steps of claim 1. Instead of suggesting the obviousness of the invention, Applicant's Admission indicates that persons of ordinary skill determined acceptable pipe loads using techniques starkly different than those recited in the method claims of this application. Applicant's Admission indicates that persons of ordinary skill would have not viewed the invention as being obvious.

In the Answer, the Examiner put forth a lengthy defense of his rationale as follows:

   Note that in claim 1 that "identifying key pipe connections" is an arbitrary 'identification' of some of the connections as more important ('key') than others. This depends upon the particular design, common sense and experience of the mechanical engineer (or possibly a program written by the engineer - the claim does not specify), and intended use.
   The first limitation of claim 1 only requires that certain of the pipe connections be 'identified' as key pipe connections. There is no requirement that the identification be carried out using any program or special technique; allowing for a skilled artisan to arbitrarily choose the connections based upon experience, for example, satisfies the limitation in the context of the claim.
   The engineer in 'identifying' the key connections is 'identifying' the pipes which will cause the most deformation. Since the claim does not require any special technique (at least prior to step 1), the 'identification' appears to be based upon experience, and in fact is satisfied by par. 6 of the specification .... Applicants have admitted (par. 6, as specified in the rejection) that it was known to impose load limits, and that there was a long felt need to establish better techniques to identify connections. Therefore, by Applicant's admission, it was known to identify key pipe connections and pipe load limits on turbines, in the same context using, at the least, a less than better technique.

The Board reversed the obviousness rejection, finding that the Background did not teach "identifying" as claimed, and in fact taught the lack of this ability to identify:

However, we find that Appellants’ statement, although found in the Background of the Invention section, is not an “admission” but rather a statement regarding the need to identify key pipe connections. Defining a need suggests something that does not yet exist. While the above-noted statement is in the Specification’s Background section, we find that this is not enough to launch such a statement into an admission of prior art. Thus, the record does not contain evidence that supports the Examiner’s position that Appellants’ Specification admits that it was known to identify key pipe
connections. As such, we find that Appellants’ disclosure does not teach the claimed identifying step, but instead stresses the need to develop such a step. Therefore, we disagree with the Examiner that AAPA teaches identifying key pipe connections as a subset of all pipe connections. Given that the Examiner also has not shown, and we do not readily find, how the Oi, Meier, and Tsai references teach the “identifying” limitation, we cannot sustain this rejection.

My two cents: I found the Examiner's rejection to be a little unclear, because he didn't map to the claim language.

The Board treated the rejection as relying on AAPA for teaching the "identifying" feature. And it's true that the rejection didn't clearly assert that one of the other references taught that feature. So maybe that's the most plausible reading.

But the final rejection kinda reads like AAPA is used as a rationale for combining: "would have been obvious to modify .. for the following reasons. Applicants have admitted it was known". Then the Answer made it sound like the rejection relied on the knowledge of a POSITA: "engineer in 'identifying' the key connections is 'identifying' the pipes" ; "allowing for a skilled artisan to arbitrarily choose the connections based upon experience, for example, satisfies the limitation".

In the Appeal Brief, the Applicant treated the rejection as alleging that AAPA disclosed the identifying step. Guess that was the right reading, because it convinced the Board that the Examiner's rejection was flawed.

Maybe there's another takeaway here: be aware that everything you say in your Background can, and probably will, be used against you by the Examiner.

Examiner uses admissions in a long felt need declaration to provide a rationale for combining

Takeaway: During an ex parte reexamination, the Examiner used statements in a secondary considerations declaration as a rationale for combining references. "The admissions by the applicant in his declaration and remarks show that a one piece design was considered desirable by those of skill in the art and would predictably result in preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call." We won't know if the Examiner's position was tenable, since the issue before the BPAI was not the obviousness rejection itself, but whether the Examiner had presented a substantial new question of patentability.


Details:
Ex parte Muzzy Products Corp.
Appeal No. 2009-011350, Reexam 90/008,081, Tech. Center 3900
Decided September 1, 2010

Muzzy Products obtained a patent with claims directed to a device for calling game. A reexamination request was filed on the patent during litigation. The Examiner adopted the requester's position that the claims were obvious over a previously considered reference, in combination with admissions made during prosecution of the original patent.


Specifically, the Examiner contended that the reference taught all limitations except for a "one piece construction." The Examiner further asserted that the Applicant's statements in a declaration of long felt need were admissions showing that a one piece design was desirable and provided specific benefits, as follows:

3. During the earlier concluded examination, a declaration was presented to show that the claimed invention satisfied a long-felt need. As noted by the requester, the inventor admitted in this declaration "I developed the present game call device after noting several complaints by others in the art that a separate game call and holding device was disadvantageous."
4. The inventor makes an admission as to those of ordinary skill in the art: "those using my father's '091 game call holder." In a response, the applicant further admitted that customers, i.e., those using the '091 game call holder, apparently recognized that having separate game calls and holders was disadvantageous. Since those using the '091 game call holder are also of ordinary skill in the art, it appears that the itemized explanations in the remarks also relate to the knowledge of those skilled in the art.
5. Thus, it would have been obvious to one of ordinary skill in the art at the time of invention to modify the game call device of Musacchla '091 to a one-piece game call and elevating device because the admissions by the applicant in his declaration and remarks show that a one-piece design was considered desirable by those of skill in the art for the purpose of preventing the loss of game calls, maintaining a true sound, and reducing the cost of the game call.

The patentee appealed, but not on the obviousness rejection. Instead, the patentee appealed on an issue specific to reexam – whether the Examiner had shown a substantial new question (SNQ) of patentability, which as of June 2010 is an appealable issue.

The Applicant argued that the question presented in reexam was not a new question, because prosecution of the original patent involved the same issue: a single reference obviousness rejection using the same reference.

The Examiner contended that original prosecution considered the 1.132 declaration only as evidence of long felt need, used to rebut the prima facie case. The original Examiner did not appreciate the admissions in the same declaration as a motivation to combine. This new appreciation cast the reference in a "new light," and thus raised a new question in reexam.

The Board held that a substantial new question was not presented:

[T]he CRU Examiner does not apply the statements in the Declaration to gain any new understanding as to the teachings of the Musacchia reference, but rather, uses the statements merely to reach a different legal conclusion as to obviousness. While the CRU Examiner asserts that the statements in the Declaration casts Musacchia in a "new light" (Ans. 14), the CRU Examiner's position suggests that the CRU Examiner is viewing the Declaration, not the Musacchia reference, in a new light.

The Board remanded the application back to the Examiner for termination of reexamination proceedings.

My two cents: What caught my attention was not the reexam-specific SNQ issue, but instead the idea that declarations can be used against an applicant. Statements about what the inventors understood as deficiencies in the prior art can't be used as a motivation to combine. However, statements about long felt need must be about what POSITAs perceive as a deficiency, in order to be effective. In re Gershon, 372 F.2d 535, 538 (CCPA 1967) (in order to show a long-felt but unmet need for the claimed invention, the objective evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art). Therefore, I think that the Examiner's use of the declaration admissions was proper.

A problem in the prior art can usually act as a rationale for combining, if the Examiner can also show that the claimed combination solves the problem in a predictable manner. Here, the Examiner used the admissions in the declaration to show both. The declaration said that POSITAs recognized shortcomings of a two piece game caller: easy to lose, expensive to manufacture. Isn't that a reason to combine? The declaration also said that the claimed one piece design would address these problems, making it harder to lose and cheaper to make. Doesn't that show that the result of modifying the reference to use one piece rather than two piece construction would be predictable? Isn't that an articulated rationale under KSR?

Maybe admissions that can be used to build a prima facie case of obviousness aren't so bad in this particular scenario. After all, maybe an Applicant resorts to a declaration of long felt need only when the prima facie case can't be beat – when the Examiner already has a strong rationale for combining. The lesson here is to simply think about what you're doing, and realize that you may be giving up your prima facie case – and in fact, giving it to the Examiner on a silver platter – by using a declaration of long felt need.

Finally, it doesn't seem like this danger is limited to reexam. Though the Examiner waited until reexam to switch from a weak rationale to the strong one found in declaration admissions, seems like he could have switched his position as soon as the declaration was filed (in the original prosecution).

Admitted Prior Art

I've learned to draft patent applications with Background sections that are really short and really general, with the basic rationale being "the Examiner can use statements in the Background as Admitted Prior Art."

Recently I looked into the topic of Admitted Prior Art (APA). Here's what I found. First, I'll discuss the treatment of Backgound statements as APA, and then I'll discuss the treatment of statements outside the Background as APA.

APA and the Background section 
Surprisingly, the MPEP contains no discussion of APA at all. Also, I found no per se rule in the case law that statements in the Background are prior art. However, the case law does say: when the Specification as a whole implies that a particular statement is prior art, then the Examiner has a prima facie case for the statement being APA. 
Ex parte Shirley (Appeal 2009-2352) has an in-depth discussion of Background-as-APA. In that case, the specification used the word "related art" rather than "prior art," and also contained a disclaimer that background statements are not intended to be admission of prior art. The BPAI said that it wasn't the form of the statements that mattered, but the "substantive content of the Specification as a whole" (Decision, p. 22). The BPAI then provided an in-depth explanation of the rule for determining whether statements in the specification are APA:

      When a review of the record as a whole reasonably implies that—or at least raises a reasonable question of whether—a particular disclosure or statement constitutes a prior-art admission, an Examiner may use such a disclosure or statement in formulating prior-art rejections of claims under 35 U.S.C. §§ 102 or 103. This is so even if the specific words “prior art” are not expressly used verbatim. In such circumstances though, the Examiner must set forth the underlying facts and reasoning leading to the conclusion that a disclosure or statement constitutes a prior-art admission.
      Such prior-art rejections, when supported by sufficient facts and reasoning, establish prima facie evidence of the claims’ unpatentability and shift the burden of rebuttal to the Applicant. An Applicant cannot then rebut the rejection by merely arguing that the term “prior-art” was never used verbatim. Similarly, an Applicant’s noting of the fact that the Specification includes a prior-art disclaimer, may not alone be sufficient to rebut such a rejection in those situations where an Examiner has previously provided a rationale for why the disclaimer is ineffective or unpersuasive. Of course, an Applicant may still rebut such a prior-art rejection with credible and sufficient evidence that the disclosure or statement upon which the Examiner relies does not constitute a prior-art admission. For example, an Applicant can still affirmatively state that the disclosure in question was Applicants’ own work, not publicly disclosed more than a year prior to the application’s filing.
   ...  [W]e are merely noting that the use of alternative characterizations like “related art” and prophylactic prior-art disclaimers, such as the one included in the present Specification, are commonplace in patent prosecution. We are further clarifying that these alternative characterizations and prior-art disclaimers must be reviewed on a case-by-case basis, and in light of the record as a whole, to determine which disclosures and statements, if any, actually constitute prior-art admissions.
(Ex parte Shirley, pp. 22-23 and 25.)

APA and Statements outside the Background

The rule as explained in Ex parte Shirley says the Specification must be looked at as a whole. Therefore, it's not surprising to find that statements from the Specification that are not in the Background can be used as Admitted Prior Art, depending on the circumstances. For example,

• A product described by vendor and model number was found to be APA. (Ex parte Barr, Appeal 2006-0963.)

• A component described as "commonly known in the industry" was found to be APA. (Ex parte Reinert, Appeal 2007-2399.)

• A method described as "traditional" is APA, but the resulting product may not be. In Ex parte Vineis, (Appeal 2008-5873), the specification stated:

Substrate 10 may be provided with a rough edge 20, having a roughness greater than that of an edge polished substrate...The roughness of rough edge 20 is inherently present in substrate 10 when, for example, substrate 10 is cut from a boule traditionally formed by the Czochralski method, and is subjected to the conventional mechanical edge shaping process described above.

The Board said:

Although Appellants rely on techniques that are “traditionally” used or “conventional” in the course of forming their substrate, Appellants do not identify the semiconductor substrate recited in the claims as the work of another. (See FF 12). Thus, the recited semiconductor substrate is not admitted prior art.

This information about APA wasn't easy to find. However, now that I've found it, this case law provides a framework for arguing against APA, if the facts support it.