BPAI ignores Applicant arguments about commercial embodiment when not clear that embodiment actually corresponds to reference

Takeaway: In fighting an anticipation rejection based on a issued patent, the Applicant introduced evidence of a commercial embodiment of the system shown in the reference patent. The Applicant used this evidence to argue that a feature was not present in the anticipatory system. The BPAI discounted the evidence on appeal because the Applicant had not shown that the commercial embodiment described in the product brochure evidence was the same embodiment described in the reference patent.(Ex parte Perchak.)

Details:

Ex parte Perchak
Appeal 2007001607; Appl. 10/242,829; Tech. Center 2800
Decided:  January 8, 2008

The technology on appeal involved an optical lens. A representative claim on appeal read:

     6. An axicon comprising a light transmissive body including a cylindrical outer surface having first and second ends,
     a first light transmitting surface at one end of said body, and
     a second light reflecting surface at the other end of said body from said first light transmitting surface;
     said body being constructed and arranged such that a beam of light received by said light transmitting surface is redirected to said light reflecting surface and
     the light reflecting surface will transform the input beam into an exiting beam comprised of rays differently arranged from the received light rays and exiting the end of the body at the location of the reflecting surface.

The Examiner finally rejected independent claim 6 as being anticipated by the vision correction apparatus in Wrobel, alleging that Wrobel's item 10a included first and second reflecting surfaces having the claimed functional limitations. The Examiner further explained his reasoning as follows:

[R]eflection will occur at the second surface since this surface forms an interface between two media. Such reflection will be directed out through the outer (side) surface of the body. Likewise, due to the reversible nature of optics, light entering through the side of element 10a will be reflected off the conical surface and will exit through the outwardly curved first (left) surface.

In the Appeal Brief, the Applicant argued that a POSITA would understand that the second surface of Wrobel's vision correction apparatus did not reflect. The Applicant explained that stray reflections of a laser beam from an opthmalogical instrument would be "extremely dangerous, and totally unacceptable to ophthalmalogy instrumentation, not to mention various government regulations and insurance requirements."

The Applicant also introduced evidence on appeal to show that Wrobel's vision correction apparatus did not reflect. This evidence was a product brochure which described an alleged commercial embodiment of Wrobel's apparatus. According to the Applicant, "[t]he illustrations and printed description in this Exhibit leave no doubt that this apparatus is based on the Wrobel patent disclosure." The Applicant then used the details in this product brochure to explain how this commercial embodiment allowed for "no possibility for 'reflection' of part of the laser beam in any direction around and outward of the optics."

In the Answer, the Examiner responded to Applicant's evidence as follows:

[T]he claimed article must be distinguished structurally over the prior art and not merely in the manner it is used. ... Appellant argues that additional structure (e.g. a housing) shown in this [brochure] eliminates the possibility of reflection outside of the optics. However, use of any additional structure is not seen to negate the fact that the structural features of the claimed axicon are met by Wrobel.

The Board agreed with the Examiner. The Board found that Wrobels' conical surface is reflective ("in accordance with physical principles"), and that "there is no structural difference between optical element 10a of Wrobel and the axicon defined by claim 6."

The Board discounted Applicant's evidence completely, commenting as follows:

First, it is not at all clear that the MEL 80 Excimer Laser described in the brochure of Exhibit A corresponds to the apparatus of Wrobel, as Appellant asserts (App. Br. 6). The brochure of Exhibit A is devoid of any patent markings, and does not show the optical system in any detail. For example, Exhibit A does not show a system such as that shown in Fig. 3a of Wrobel. We also note that page 13 of Exhibit A states "[n]ot for sale in the United States." Therefore, we do not find Exhibit A to be probative of the issues presented here.

The Board then affirmed the anticipation rejection of independent claim 6.

My two cents: The Applicant's argument was creative. Examiners are allowed to use multiple documents describing the same embodiment in 102 rejection. The Applicant attempted to use multiple documents describing the same embodiment to show the reference did not teach. And it looks like to me the Applicant was on the right track – the Board did not say "you can't introduce evidence related to the reference that is outside the four corners of the reference."

But the Applicant's evidence had some holes in it. The Applicant needed to show that the apparatus in the product brochure was the same as the apparatus in the reference. I'm not sure how often you'll have the proof you need to show this.

The Board wanted similar drawings, but patent drawings are often quite different than product drawings. On the other hand, many products do have patent marking on a product, and the Board's comments suggested this would have been enough. Finally, make sure the reference commercial embodiment is actually prior art. Here, the Applicant tripped up by relying on a commercial embodiment that didn't qualify under either 102(a) or 102(b).

The Board discounted the evidence on substantive grounds, but could have dismissed it on procedural grounds. The rules are clear that you can't include evidence in an Appeal Brief. In cases like this, where the Applicant doesn't realize the evidence is needed until a Final rejection, the rules allow for introducing evidence in an After Final response or even after Notice of Appeal, as long as you show good cause. However, if the Examiner chooses not to enter the evidence, the Board simply won't consider it, and you're forced to fight the issue of non-entry with a petition. 

For an example of a multiple reference 102 in a litigation context, see my post "Public use anticipation allows multiple references that explain how single system functions".

Mistake #10 when arguing at the BPAI: Arguing about issues that aren't appealable

It took me half the year, but today marks the end of my list of Top 10 Mistakes in Arguing on Appeal to the BPAI. The last one is: Arguing about issues that aren't appealable.

Not all issues that arise in patent prosecution are appropriate for appeal. The BPAI has a very specific jurisdiction: claim rejections. That leaves a large number of issues that are outside of the BPAI's jurisdiction, which means you must petition rather than appeal. A long list of these can be found in Chapter 1000 of the MPEP, including:

• Restriction requirement
• Objections to the drawings
• Objections to the specification
• Objections to the claims
• Refusal to enter claims after final
• Refusal to enter evidence after final
• Finality of Office Action
• Refusal to enter appeal or reply brief
• Formal sufficiency and propriety of declarations
• Refusal to give priority date for failure to satisfy conditions in 35 USC 119 or 120

Bringing up these issues in an appeal brief is not damaging per se. The Board will simply refuse to decide on the issue. The damage occurs in cases where waiting until after appeal to resolve the issue is too late. 

Not all issues need to be resolved. Maybe you don't think it was proper for the Examiner to make the Office Action final – but you can usually live without a ruling to that effect. Maybe you think the Examiner's objection to the specification for a purported misspelling is improper – the spec really should use the word "discrete" rather than "discreet" – but I'll bet you'd be willing to amend the spec if you win on appeal. (The misspelling objection is, sadly, a true story.)

Some issues can be resolved after appeal, but doing so will cost a great deal of time and money. Suppose your chances of winning on appeal are low unless your declaration evidence is entered. If you think the Board will rule on this in your favor and consider your evidence, you're wrong, and your misunderstanding may result in the Examiner's rejection being affirmed. You can reeopen prosecution after losing on appeal, and enter the evidence then – but this is obviously a big waste of the client's time and money. So if you really want that evidence entered, and you have good facts, you should petition simultaneously with the appeal.

Finally, if you really need a petition to be decided in your favor to get allowable claims, waiting until after appeal can be fatal. That's because almost all the petitions discussed in this post are petitions under 37 C.R.F. § 1.181, which says that petitions "not filed within two months of the mailing date of the action or notice from which relief is requested may be dismissed as untimely." Given that the appeal process takes on the order of years, not months, it's safe to say that the appeal will not be decided within two months of the Office Action that you're petitioning. While it's possible that the petition decision-maker will have mercy and not dismiss as untimely, clearly you don't want to depend on that.

The petition you need a favorable decision will most likely be related to new matter. Imagine winning on substantive issues at the Board, then having a new matter issue blocking you from a Notice of Allowance. Maybe you can deal with the new matter issue by withdrawing the spec amendment that's causing the problem -- only to get a "no antecedent basis in the spec" objection in the next Office Action. Maybe you can deal with the new matter issue by withdrawing the drawing amendment that's causing the problem – only to have the Examiner reinstate the "every feature of the claims must be illustrating in the drawings" objection that prompted your drawing amendment. Therefore, you really should petition the objection as soon as possible.

There is an exception to that: a new matter objection to the spec or drawings that is actually related to the claims should be accompanied by a claim rejection under § 112 First. The new matter objection then becomes an appealable matter rather than a petitionable one. MPEP 608.04(c). In such cases, I think it's best to address this in the Appeal Brief, asking the Board to consider the issue on appeal. Then you can get a decision disposing of both the § 112 rejection and the new matter objections. Though I would probably file a timely petition and pursue the issue on appeal, in case the Board didn't see it as an appealable issue.

For more on the interplay between spec objections and 112 rejections, see my post here and the Board's decision in Ex parte Popp.

I'll be blogging about petitions from time to time. Petitions aren't searchable like BPAI decisions, so it's not as easy to research petition issues. But I read a lot of file histories in my blog research, and sometimes I do come across interesting issues related to petitions, which may lead to a blog post.

Mistake #9 when arguing at the BPAI: Arguments that ignore relevant case law

Mistake #9 of my "Top Ten Mistakes Applicants Make at the BPAI" is making arguments that clearly go against existing case law. Here are the most common examples I've observed.

• Ignoring KSR. Obviousness doesn't require a motivation to combine from the references. After KSR, the test is instead "articulated reasoning with some rational underpinning" to combine the references. See my previous post "Mistake #6 when arguing at the BPAI: Arguing the TSM test for obviousness".
• Using the wrong standard for "teaching away."  The Federal Circuit has said that disclosure of an alternative to X is not teaching away from X.  In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of thesealternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”)
• Making obviousness arguments in an anticipation rejection. Non-analogous art is irrelevant to anticipation (see previous post here). Teaching away is irrelevant to anticipation (see previous post here). Secondary considerations such as unexpected results are irrelevant to anticipation (see previous post here).
• Bringing up the number of references when arguing obviousness. The Federal Circuit has said that the number of references is not an indicator of non-obviousness. In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) ("The large number of cited references does not negate the obviousness of the combination, for the prior art uses the various elements for the same purposes as they are used by appellants, making the claimed invention as a whole obvious in terms of 35 U.S.C. § 103.") 
• Bringing up the age of the references when arguing obviousness. The Federal Circuit's predecessor has said that the age of the references is not an indicator of non-obviousness. "The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem." In re Wright, 569 F.2d 1124 (CCPA 1977)(citing In re McGuire, 416 F.2d 1322 (CCPA1969)). 
•  Bringing up another that patent issued with similar claim language. The patentability of other applications is legally irrelevant. See my previous post "Arguments guaranteed to lose: 'but look at these similar claims in other issued patents'."
• Making arguments about due process and equal protection. The BPAI has no jurisdiction over these issues. For the Board's response to a due process argument, see the inter partes reexam decision here in Meadwestvaco v. Graphic Packaging Int'l.  See the post here at The Florida Patent Lawyer blog for the Board's response to an equal protection argument.

Mistake #8 when arguing at the BPAI: Using a declaration that amounts to opinion without factual support

Today I'll return to my list of Top 10 Applicant Mistakes on Appeal. The last post in this series was Mistake #7: "Using attorney argument when evidence is required". (Split into two parts: Mistake 7.0 and Mistake 7.5.)

The most common form of evidence is an expert declaration under § 1.132. Today's post on Mistake #8 is also about declarations: "Using a declaration that amounts to opinion without factual support."

Ex parte Norman was an extreme example of a § 1.132 declaration with no factual support whatsoever. The declaration, which was submitted to overcome an obviousness rejection, merely stated:

I am a co-inventor of the above-identified Application. I am familiar with the Official Action dated September 24, 2003 and have thoroughly studied the prior art used to reject the claims in the Application. As a result of my long experience in the toy industry, I can unequivocally state that the prior art utilized to reject the claims in the Application does not render those claims obvious. Rejection of the claims is based on the use of hindsight, not actual teachings or suggestions gleaned from the prior art.

The Board found that "this conclusory assertion is of little or no value because Mr. Norman fails to set forth any facts underlying the opinion."

The Applicant in Ex parte Pruitt filed a § 1.132 declaration to overcome an obviousness rejection. The declaration discussed the teachings of the prior art, and even contained references to specific passages in the prior art:

16. In the BACKGROUND portion of the Elliott et a1 patent (Col. 1, lines 44-48), the inventors confirm that a single pair of rubber conditioning rolls with a herringbone rib pattern has problems feeding extremely thick or wet hay. When the rubber rolls get wet, they become slick and can't grip the hay as well. Therefore, the inventors in this patent state that one of the objects of their invention is "to provide a hay cutting machine which is less prone to plugging than others presently available" (Col. 1, lines 66-68). These inventors suggest solving this problem by providing a second pair of rubber rolls with a herringbone rib pattern and setting the tension lighter than in a "single-roller" conditioner to accomplish the same degree of conditioning (Col. 2, lines 1-4). This patent does not disclose the use of metal conditioning rolls of any kind.

However, the Board found the declarant's statement about rubber rolls to not be credible because it contradicted the plain teachings of the prior art, and because the declarant did not explain the discrepancy:

[W]e cannot ascertain the basis for Mr. Pruitt’s statement in paragraph 16 of the declaration that Elliott discloses the use of rubber rolls. We have reviewed the passages of Elliott cited by Mr. Pruitt and find no mention that the rolls are made from rubber. Mr. Pruitt does not provide any further explanation in his declaration for the basis for this assertion.

Ex parte Tydings was a reexamination appeal with claims directed to a urine drug screening system. The patentee submitted a § 1.132 declaration to overcome an obviousness rejection, but the Board found the statements were not supported by facts:

The declarants testify that the claimed assay assembly and the assembly claimed in the 620 patent function differently. Tydings, ¶¶ 13, p. 3; Hipple, ¶ 11, p. 3. Hipple also testifies that it would not have been appreciated that the up the wick flow would function and be operable. Hipple, ¶ 11, p. 3. The declarants, however, have not provided an explanation of how the claimed and 620 assemblies in fact function differently or why one skilled in the art would not have appreciated that arranging the contact point so the urine generally flows in an upward direction would not be operable. We do not give weight to the unsupported opinions on these points. Opinions unsupported by facts are entitled to little or no weight. In re Etter, 756 F.2d 852, 860 (Fed. Cir. 1985) (en banc).
(Emphasis added.)

Ex parte Early Childhood LLC was another reexamination appeal. The patentee filed a § 1.132 declaration to show the secondary consideration of commercial success. The declarant stated that “[t]he cot which is patented in the 6,345,400 patent . . . is a principal product of ELC . . . and comprises a significant portion of the $180,000,000 annual revenue and has been a huge commercial success.” The Board found the declaration insufficient because it did not "provide a detailed analysis of how the features of the cot enjoying these sales compares to features of the claimed cot." The Board further noted that "[m]erely stating that a product, even if it is the claimed product, is a 'significant portion' of annual revenue does not establish any of these factors [required to show commercial success]." The patentee offered as additional evidence an email "which states that cot covers with Velcro® enclosures have become 'standard' in Asia," but the Board found that this email did not address the commercial success factors either.

Arguments guaranteed to lose: the Examiner changed his position

Takeaway: The BPAI is not impressed when Applicants bring up the fact that the Examiner changed position during prosecution. The Board has ignored such arguments, citing to a decision from the Federal Circuit's predecessor court holding that the PTO is allowed to change its position. In re Ruschig, 379 F.2d 990, 993 (CCPA 1967)

I'll discuss three BPAI decisions which illustrate this point.

In Ex parte Ferri, the Applicant "complained" in the Appeal Brief that claims had been amended "in reliance on an interpretation offered by the Examiner, which was then withdrawn in a subsequent Office Action." The Board noted that

[This complaint] has been made by many applicants over the years and was answered many years ago by Judge Rich, who observed that "[t]here is nothing unusual, certainly, about an examiner changing his viewpoint as to the patentability of claims as the prosecution of a case progresses, and, so long as the rules of Patent Office practice are duly complied with, an applicant has no legal ground for complaint because of such change in view. The life of a patent solicitor has always been a hard one." In re Ruschig, 379 F.2d 990, 993 (CCPA 1967) (citation omitted).

In Ex parte Joos, the Examiner had withdrawn a rejection using a particular reference, then reapplied the same reference in a later round. The Appeal Brief characterized this behavior as "unreasonable, costly, and counterproductive." The Board was unsympathetic:

Reapplying references after both the Examiner and the Applicants had earlier thought them distinguished can be appropriate when, for example, the Examiner has a reason to think that a mistake was made. Mistakes may be costly and counterproductive to the Applicants and to the Office, but a good faith effort to correct the mistake is not unreasonable. Appellants’ objection here is not a legal ground for complaint. See Ruschig, 379 F.2d at 993; see also, Blacklight Power, 295 F.3d at 1273-74 (explaining that the Office may withdraw a notice of allowability to revisit an earlier patentability decision before a patent issues).

Ex parte Haley involved a method of gene therapy. In the first Office Action, the Examiner issued an enablement rejection, asserting that "the state of the art for gene therapy was highly unpredictable" at the time of filing. The Applicant got past the enablement rejection, but appealed an obviousness rejection in which the Examiner used the "predictable results" rationale from KSR.  In the Appeal Brief, the Applicant argued that this rationale was inappropriate, since the Examiner had admitted in the first Office Action that "the state of the art for gene therapy was highly unpredictable." The BPAI dismissed the argument, noting that "[w]hile ideally the Examiner’s position would remain consistent throughout prosecution, the Examiner is permitted to change his viewpoint regarding the patentability of the claims as prosecution progresses."

Mistake #7.5 when arguing at the BPAI: Using attorney argument when evidence is required

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." (Complete list here.) Today I'll finish my discussion of Mistake #7: Using attorney argument when evidence is required. My previous post in this series  – Mistake #7.0 – covered some of the scenarios where you may need evidence rather than attorney argument:

• Whether a specification is enabling
• Whether a reference is enabling
• Meaning of a claim term
• Knowledge of a POSITA

The remaining two scenarios, covered in today's post, are:

• Teachings of a reference
• Modifying or combining references

The first four BPAI decisions in today's post show that when you stray from the explicit teachings of the reference, the Board may find that attorney argument is not enough.

Ex parte Matsushita involved writing servo information to a disk drive. One of the claims required a control mechanism adapted to "enable writing ... during a subsequent revolution using the WORF data." The patentee argued that the prior art "is believed to only use WORF data obtained before servowriting for that track begins" and “in Schmidt, the WORF data used to write to a target track is apparently produced before any writing to the target track is enabled.” (Emphasis added.) The Board dismissed this as speculative argument rather than evidence:

Matsushita’s argument is not persuasive. Matsushita does not explain why it believes that Schmidt obtains WORF data only before servowriting to a track begins. Matsushita’s belief amounts simply to speculative argument by its counsel as to how Schmidt’s system may operate which is unsupported by objective evidence, such as expert testimony. Argument of counsel cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A. , 129 F.3d 588, 595 (Fed. Cir. 1997).

The Board then went on to explain how the reference did disclose the claimed limitation.
 
The Applicant in Ex parte Jacquot made an argument which the Board saw as being contradictory to the teachings of the reference. The reference disclosed "device emulation" while the claims recited "device simulation." The Applicant argued that the two were not functionally equivalent. But the Board noted that, to the contrary, the reference "apparently uses the two terms interchangeably and even explicitly describes that the computing device, e.g, S/390 can be simulated." The BPAI further explained that "the Applicant has not directed us to evidence to support its argument that emulation and simulation are not the same as far as Shmid is concerned." (Emphasis added.)

An Applicant statement about the teachings of reference which is merely conclusory may lead the Board to say that evidence is required. Ex parte Mayer involved clams to a chemical composition. The Applicant argued that "thermoplastic vinyl polymer B is dissolved in and reacted with polyisocyanate A to produce the composition of claim 1," whereas the "references disclose polymer/polyisocyanate dispersions." "One skilled in the art would readily appreciate that there is a difference between modified polyisocyanates and dispersions, particularly in view of the teachings in Appellants' specification." The Board found this statement to be "without evidentiary support" and stated that "attorney argument and conclusory statements, absent evidence, are entitled to little, if any, weight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003); Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977)."

The technology in Ex parte Intel Corp. related to a method of manufacturing a microsensor. The claim at issue included the step "forming said backside cavity while maintaining a portion of said substrate in said cavity to act as strengthening strips that extend completely across said backside cavity."  The Examiner asserted that the reference taught the "strengthening strip" element by disclosing a layer and a rim which operate to provide mechanical support for the sensor diaphragm. In The Applicant argued that the layer in the reference was a "tiny bit of material" which was "too thin" to perform any support or strengthening function. The Board found that this statement lacked evidentiary support:

We reject Intel's characterization. At the outset, Intel's bare assertion that a structure is too "tiny" if it is 5 microns thick to provide support or strength to a component is unpersuasive. The size or thickness of a structure cannot be taken in a vacuum, without explanation, in evaluating its feasibility as a strengthening strip. Intel also does not support its assertion with any objective evidence, such as declaration testimony. The assertion is simply argument of counsel. Such argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588,595 (Fed. Cir. 1997).

The remaining BPAI decisions in today's post show that attorney argument can be insufficient when explaining how references would, or would not, combine. Once again, it seems that straying from the explicit teachings can be viewed as mere speculation.

Ex parte Jarrell involved a collapsible wall hanger, and the Applicant appealed an obvious rejection using a combination of two references. The Applicant attacked the rationale for combining, arguing that "since Bierman’s scaffold has fixed brackets to render the scaffold rigid, it would not have been obvious to modify these fixed brackets to pivotal members in view of Thomas." But the Board dismissed this argument since "Appellant has provided no evidence that replacing Bierman’s welds with pivotal connections would render Bierman’s structure insufficiently rigid." (citing In re Pearson).

The application in Ex parte Doery related to a mail stacker. The Applicant appealed an obviousness rejection and argued that the combination would render one of the reference inoperative. Specifically, the Applicant argued that "if the insert of Caporali were incorporated along the platform of Beauchamp a Z-shaped drop profile between mailpieces could not occur,” which meant that “sufficient time and separation would not be available to dry the printed ink.” The Board dismissed this argument because "Appellant has not provided any evidence to show that the insert block of Caporali is not capable of working with the device of Beauchamp" (citing In re Pearson). The Board then went on to explain why the combination was not inoperative.

My two cents: When explaining the teachings of a reference, the line between what is acceptable attorney argument, and what is not, can be hard to discern. The cases I've read suggest that you're most likely to get into trouble when you make bald assertions and don't tie them to teachings in the reference. If you have support in the reference for your assertions, point to it. If you don't, you should consider submitting a 1.132 affidavit from a person who is more qualified to interpret the reference, i.e., a person of ordinary skill in art.

Mistake #6 when arguing at the BPAI: Arguing the TSM test for obviousness

This post continues with my series of "Top 10 Mistakes in Arguing on Appeal to the BPAI." Today I'll discuss Mistake #6: Arguing the Teaching, Suggestion or Motivation test for obviousness.

More than three years after KSR, Applicants continue to file Appeal Briefs that respond to obviousness rejections with "There is no teaching, suggestion or motivation to combine the references." As the Board is quick to point out, KSR makes it clear that this is not the proper test for obviousness:

Appellant additionally argues throughout the Appeal Brief that the prior art does not teach, suggest, or motivate the proposed combination of the teachings of Ohayon and Watanabe. The correct standard, however, is whether the Examiner has articulated a reason with rational underpinning to support the proposed combination. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") (cited with approval in KSR, 550 U.S. at 419 (holding a rigid insistence on teaching, suggestion, or motivation [TSM] is incompatible with its precedent concerning obviousness)).
(Ex parte Diamond.)

Under KSR, TSM is one rationale for combining references, but is not the only one:

Appellants also argue that the Examiner has not set forth a proper obviousness rejection because the Examiner has not articulated all of the findings “require[d]” by Manual of Patent Examining Procedure (MPEP) § 2143(G). This cited section of the MPEP pertains to the discussion of a Teaching, Suggestion, or Motivation (TSM) as one of several exemplary rationales that may be used to support a conclusion of obviousness  – but the Examiner does not rely on such a rationale. See  KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (characterizing the TSM test as a helpful insight, but rejecting the rigid requirement of a TSM).
(Ex parte Lyons.)

Here are a few cases in which the Applicant attacked TSM but didn't attack the rationale actually provided by the Examiner:

   Appellants then rely on outdated case law in arguing that "[t]he motivation to combine these references is not found in any of the references." Appeal Br. 16. The Examiner, on the other hand, has provided reasoning articulating why it would have been obvious to combine the references as proposed. Ans. 9-10 (Grandey discloses materials used for noise/sound attenuation (col. 1, ll. 20-21), Brown discloses a noise/vibration absorbing media used in turbine applications (paras. 17 and 31)). The Examiner's proposed combination thus appears to merely select a suitable material according to its intended use.
(Ex parte Hardwicke.)

    The underpinning of the Examiner's conclusion of obviousness is premised on a teaching of Matsuno to suspend a diagnosis under certain conditions that may lead to a misdiagnosis. While the Examiner does not explain in detail all of the underlying bases supporting this rational underpinning, one of ordinary skill in the art, reviewing the record before us, would recognize the support.  As we have discussed above, the references describe a great desire to accurately diagnose the various components in the powertrain. ... As such, the Examiner's proposed combination is nothing more than predictably applying known techniques to a device ready for improvement. ...
   The Examiner need only provide a reason with rational underpinning, which, as we have identified, the Examiner has done. The background knowledge, inferences, and creative steps that a person of ordinary skill in the art would employ need not always be explicitly laid out by the Examiner. Appellants have not provided any evidence, nor articulated any explanation, as to why the Examiner's reason is lacking rational underpinning. Instead, Appellants focus on the outdated TSM test. As such, we are not persuaded that the Examiner erred in concluding that the disclosures of Eich and Matsuno render obvious the subject matter of claim 9.
(Ex parte Langer, internal citations omitted.)   

   The Examiner first concludes that it would have been obvious to select an elastomer with an appropriate hardness. Appellants merely state that the art does not teach or suggest a vulcanized polymer having a Shore A hardness of 90 or less. However, a teaching or suggestion is not required to support a conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ...
    The Examiner articulates that one of ordinary skill would recognize the range of hardness values that would be suitable for oral brushes. This appears to be supported by similar statements in Libby and Coleman that we noted in our fact findings above. Appellants give no explanation why the Examiner's reason is lacking rational underpinning.
(Ex parte Roberts.)

My two cents: I don't think that mentioning teaching, suggestion or motivation is itself fatal. Nor is attacking the motivation relied on by the Examiner. But focusing too much on TSM may lead you to ignore the bigger picture: whether or not the Examiner provided "articulated reasoning with some rationale underpinning."

To increase your chances of winning on appeal, don't stop at TSM, but instead look carefully at the Examiner's rejection to see if he used a rationale like substitution, predictable results, or finite number of predictable solutions. If so, argue against that rationale. Even if the Examiner didn't use one of those rationales, you should think carefully about appealing if one of the rationales is appropriate. It's not unusual for the Board to fill in a rationale that the Examiner merely hinted at but didn't expound on. Though less common, it's not unheard of for the Board to discover such a rationale themselves. 

Guest Post: Burden of Proof at the BPAI

[Guest Post by David Boundy. David is a Vice President and Assistant General Counsel for Intellectual Property for a prominent Wall Street brokerage firm. The views he expresses here are not those of the firm or any other clients. David is a co-author of the book Patent Prosecution, to be published in 2011 by Oxford University Press.]

“On appeal, the Applicant must persuade the BPAI of reversible error.”^[1] A number of recent, post-Frye^[2] Board decisions start with this statement, or a similar allocation of burden of proof. These Board decisions are just plain wrong.

The burden of persuasion only shifts to the appellant after an examiner presents evidence (or at least argument) on every element of a prima facie case, following required procedure. On appeal, as throughout ex parte proceedings, the burden is on the Board to establish prima facie unpatentability to a preponderance of evidence. Before the Board, the examiner is just an advocate, not a lower-tribunal fact-finder, and has no claim to deference. While the appellant has the option to simply take “pot shots” against the examiner’s prima facie case, the examiner cannot create a prima facie case through mere conclusory statements. The Board must evaluate the evidence as a neutral and let the evidence speak for itself.^[3] “Demonstrate reversible error to the Board” may be good practical advice, but the Board itself has committed reversible error when it states this as the foundation for a decision.^[4]

That’s the legal requirement. However, good tactical practice may counsel that an appellant go further.

An examiner must meet both components of the legal burden

Everything starts with the examiner. An examiner has two burdens, one substantive, one procedural. The examiner has a substantive obligation to find a good reference, and a separate procedural obligation to explain the correspondence between the claim and the reference.

The procedural obligations arise under 37 C.F.R. § 1.104, MPEP Chapter 2100, the Administrative Procedure Act, and the like. The most important (and frequently-breached) elements of the examiner’s procedural burden—referred to as “the prima facie case”—include:

• When a reference is complex or shows or describes inventions other than that claimed by the applicant [that is, in any § 102 rejection where the reference shows anything more than the claim, and in all § 103(a) rejections], the particular part relied on must be designated as nearly as practicable.

• The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. Note the word “apparent”—“open to view, clear or manifest to the understanding.” Office Actions are not IQ tests for applicants or guessing games. The examiner has an obligation to clearly and unambiguously communicate the basis for the rejection.^[5]

• The examiner must make each showing on each legal element of the prima facie case specified in Chapter 2100 of the MPEP. To meet this procedural obligation, the examiner doesn’t have to be right, but the examiner can’t be silent or substitute a different test.

• Like all other decisions of all other federal agencies, “At a minimum, [an agency decision must] ‘examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.”^[6] MPEP § 707.07(f) incorrectly states that an examiner “should” answer all material traversed; it’s a statutory “must.”

• On appeal, the Examiner’s Answer must “point out where all of the specific limitations recited in the rejected claims are found in the prior art,” and should compare the claim feature-by-feature with the prior art, with a reference to the specific page, line number.^[7]

The practical burden on an appellant depends on whether the examiner did or didn’t address all procedurally-required prima facie elements

Mistake #5 when arguing at the BPAI: Failing to address the combination

Moving through my list of Top 10 Mistakes when arguing at the BPAI, it's on to Mistake #5: Failing to address the combination. I've actually blogged about this one several times before, so take a look at these earlier posts for examples of how things can go wrong if you don't address the combination.

Don't forget to address the combination
Another reminder to address the combination
How to respond when the Examiner says "Can't attack the references individually"

In this post, I'll discuss one more instance where the BPAI chastised the Applicant for failing to address the combination.

The technology in Ex parte Nelson involved paving asphalt roads. The Examiner rejection claim 22 as obvious over a combination of three references.

22. A screed assembly comprising:
at least one screed section that includes a screed plate that
defines an upper surface and a lower surface; and
a screed heating arrangement that includes a thin sheet electric
heater bonded to the upper surface with an adhesive bonding material.

In the Appeal Brief, the Applicant discussed the deficiencies of each of the three references:

With regard to claim 22, the Williams et al. reference does not even include specific teachings as to any type of electrical heater being attached to the screed plate, or merely somehow attached to the paving machine in a position to radiate heat onto the screed plate, or some other method of heat transfer. Borrup fails to teach bonding a thin sheet electric heater to the upper surface of a screed plate, or any analogous machine, with an adhesive bonding material. Raymonds' bolted liquid tanks are flatly not disclosure of bonding thin film heaters to anything. Therefore, even when combined, the cited references do not teach all of the limitations of claim 22.

According to the Board, the Applicant failed to consider how the Examiner had applied the references in combination. The Board elaborated on where the Applicant had gone wrong:

The Examiner's proposed combination starts with Williams' device, designed to address heat control problems associated with screed heaters. This device is ready for improvement because Williams does not describe specifically how the electric heater is connected to the screed. Raymond teaches that screed heaters can transfer heat by conduction, and Borrup teaches a particular, flexible heat conduction device attached via bonding. Thus, the proposed modification merely fills in the gaps in the teachings of Williams, specifying that the heater is a conductive heater that is bonded directly to the metal screed, as taught in Raymond and Borrup. The Examiner finds that one of ordinary skill in the art would have an expectation of success combining the identified teachings and would also avoid the known problems in the art such as damaged screeds and poor asphalt finish. Ans. 12. Appellant has not argued, much less shown, that the Examiner's proposed combination would be beyond the level of ordinary skill in the art.

Mistake #4 when arguing at the BPAI: Not recognizing that the real issue is claim interpretation.

In this second week of the new year, I'll continue with my list of Top 10 Mistakes in Arguing on Appeal to the BPAI. (See the full list here.) Today is Mistake #4: Not recognizing that the real issue is claim interpretation.

I'll start off by saying that since Examiners are not required to – and usually don't – discuss claim construction, this issue is really easy to miss.

A lot of Appeal Briefs include various passages from the reference and then conclude with "But the blodget discussed in the reference is not the same as the claimed 'widget'." Even though claim construction is not discussed, the Applicant must have some sort of claim construction in mind. Implicit in the argument is that under the Applicant's interpretation, the claims don't read on the reference.

Applicants might get better results by thinking about how the Examiner could possibly be interpreting the claim term "widget" so that it does read on the "blodget" in the reference. Then, if the issue is an unreasonable claim construction, you can hit that issue head on rather than focusing on the reference. Or if you decide that the Examiner's construction is not so unreasonable, you can decide not to appeal.

Ex parte White involved a system to implement distinctive ringing for a telephone. The claim included the limitation "implemented without installing additional hardware at a subscriber's premises." The Applicant pointed out that the distinctive ring in the reference was produced by a locally implemented wireless centrex. The Applicant argued that this locally implemented component was "additional hardware at a subscriber's premises."

You can see that if the wireless centrex could be viewed as residing somewhere other than "at a subscriber's premises," then the Applicant's argument falls apart. And that's exactly what the Board found: that the components were placed in a central office, which is "relatively locally placed" but is still "remote from each subscriber’s premises and equipment (i.e. remote from mobile station 101 and/or its associated office) as claim 1 requires." Using this claim construction, the BPAI affirmed the rejection.


In one of the cases I blogged about previously, the Examiner brought up claim construction, but the Applicant didn't do anything with it. The case is Ex parte Fleming, and the Applicant appealed a claim to a stent which included a lattice with a closed (unexpanded) configuration and an open (expanded) configuration. The claim also defined the lattice as "made of a material that is normally prone to crushing, deformation or recoil."

The Applicant explained in some detail why the stent in the reference would not function properly if made of a material that was prone to crushing, deformation or recoil. However, the Applicant's argument assumed that the the "normally prone to" language in the claim referred to the expanded state. Yet the Examiner explained – in the final rejection, and then again in the Answer – that he was interpreting "normally" as referring to the unexpanded state, before the loops in the lattice interlocked. The Board found the Examiner's interpretation to be reasonable, and affirmed the rejection.

The most frustrating cases may be those where the Applicant makes it's claim construction clear, then the Board decides on a different claim construction. The claim in Ex parte Iwamura recited "at least one component configured for communicating with the server along a wired path and also being configured for communicating with the server along a wireless path." The Applicant focused on the "and also" language, arguing that the claim required communication over both wired and wireless links, while the reference taught communicating over one or the other, but not both. The Examiner didn't disagree, and instead relied on modifying the reference to use both.

The Board, however, found that the "configured for" language did not require actual communication over both links, merely that the component support both wired and wireless communications. Using this construction, the Board affirmed. If the Applicant had predicted at least the possibility of this interpretation, the Applicant may have chosen not to appeal.

Notably, the Iwamura Board did not marks this as a new ground of rejection. The Examiner didn't put an explicit claim construction on record, so maybe the Board didn't view this as a different claim construction? Though I say the first claim construction on the record should be a new ground.

Applicant mistakes may result in losing at the BPAI, but is the BPAI following the law?

Last week I posted my list of "Top 10 Mistakes in Arguing on Appeal to the BPAI," and followed up with posts to elaborate on the first 3 of those mistakes.

This topic has drawn more comments than usual. A number of the comments say the BPAI isn't following the law for prima facie case, burden of proof, standard of review, etc.

This series of posts is about what approaches don't seem to work at the BPAI, practically speaking. Not about whether the BPAI is performing a proper review as required by administrative law.

David Boundy has graciously agreed to do a guest post soon to explain the topic of burden of proof and standard of review at the BPAI. David is very knowledgeable about administrative law as it applies to the PTO. David is well known in the patent community for insisting that the PTO follow the law. David assembled and led the teams that made presentations at the White House Office of Management and Budget to show that the Patent Office's Continuations, 5/25 Claims, IDS and Appeal rules violated many provisions of administrative law. This effort led OMB to direct the PTO to withdraw these rules in January and December 2008!

Mistake #3 when arguing at the BPAI: Failing to address Examiner's specific findings

I'm starting off 2011 with my "Top 10 Mistakes in Arguing on Appeal to the BPAI." In this post I'll elaborate on Mistake #3: Failing to address Examiner's specific findings.

In discussing Mistake #1 – Conclusory assertion rather argument with explanation – I noted that Applicants often fail to make a real argument on appeal. One reason may be that the Examiner hasn't given the Applicant much to work with, so that there's nothing specific to rebut.

But by the time you reach appeal, the Examiner has probably made specific findings about how the reference teaches your claim elements. If so, you need to pay attention to exactly what the Examiner said, and deal with it. Here are a few examples where the Applicant failed to do this and lost:

This passage suggests that the functional circuit design, on which the Examiner reads the recited "initial IC device design" (Answer 3), contains information indicating which structures (e.g., transistors and interconnect lines) are connected to each other, which would appear to be enough to satisfy the claim. Appellants have not explained why the Examiner's reliance on paragraph [0118] is misplaced, instead simply asserting that "[t]here is no language in the cited passages that teaches that the initial IC device design includes a desired relationship between at least two structures within the IC device design" (Reply Br. 6). The rejection of claim 7 is therefore affirmed.
(Ex parte Lukanc, emphasis added.)

The Examiner’s uncontested finding that Yamamoto’s figure 4(c) depicts the locking member 4A (the “connecting member”) having an “abutment section” (the upper right section of U-shaped intermediate portion 41) engaging the lower face of main portion 30 (the “corresponding section of said main holder member”) belies Appellants’ arguments (see App. Br. 8, Reply Br. 2-3) that  Yamamoto’s locking member 4A does not have a front abutment section which engages the holder main member 3. See Facts 1 and 4. 
(Ex parte Yanagita, emphasis added.)

With respect to Appellants’ argument that Franchere does not teach the “wells for containing a fluid sample therein” feature required by claims 1, 12, 27, and 35, Appellants’ argumennt is unpersuasive of reversible error because it fails to address the Examiner’s stated case, which is based on, inter alia, Franchere’s test tubes and the corresponding openings in Franchere’s modular units, as meeting the “wells” feature required by claims 1, 12, 27, and 35. In this regard, the Examiner finds and Appellants do not specifically dispute that Franchere’s test tubes are capable of containing a fluid sample therein. (Compare Ans. 3 and 4 with App. Br. 6-10 and Reply Br. 2-5). On the present record, the term “well” is any depression that can hold a fluid sample. Accordingly, Appellants’ argument is unpersuasive of reversible error.
(Ex parte Blouin, emphasis added.)

Don't forget to see if the Examiner has specifically addressed claim construction, and to contest the interpretation if your argument implicitly relies on a different interpretation of that term.

Next, we turn to the Appellants' argument that neither Carmody nor DeWolf teaches systematically updating the detailed record. Br. 2-5. In response the Examiner construes the term systematical to be "methodical in procedure or plan;" ... then finds that paragraph [0081] of Carmody and paragraph [0008] of DeWolf teach this limitation. Answer 10. The Appellants do not challenge the reasonableness of the Examiner's construction nor do they address the Examiner's specific finding above that Carmody and DeWolf teach this limitation.We are not persuaded by this argument of the Appellants.
(Ex parte Capotosto, emphasis added.)

Finally, you should specifically look for new findings, reasoning, or claim interpretation in the Examiner's Answer. Then you need to file a Reply Brief to address any new stuff, as noted in this BPAI decision:

[The Appeal Brief] argument overlooks the fact that the process depicted in Figure 5 is performed at each data rate. ... Furthermore, as pointed out by the Examiner in the Answer, Pinard specifically describes using the data rate as a basis for selecting an AP ... Appellants, who did not file a reply brief, have not addressed, let alone shown error in, the Examiner’s reliance on these column 2 passages.
(Ex parte Backe.)

Since I've started this series on Mistakes when arguing at the BPAI, I've heard from several readers who ask how to square the BPAI decisions I've cited with the BPAI's own precedential opinion Ex parte Frye. After all, doesn't Frye say that the BPAI should not give deference to the Examiner's findings? 

It seems to me that Frye clearly limits that deference to contested findings.

     ... Specifically, the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.
     Filing a Board appeal does not, unto itself, entitle an appellant to de novo review of all aspects of a rejection. If an appellant fails to present arguments on a particular issue – or, more broadly, on a particular rejection – the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection. For example, if an appellant contests an obviousness rejection only on the basis that a cited reference fails to disclose a particular limitation, the Board need not review the other, uncontested findings of fact made by the examiner underlying the rejection, such as the presence of uncontested limitations in the prior art.

Mistake #2 when arguing at the BPAI: Arguing outside the claims

Continuing with my Top 10 Mistakes in Arguing on Appeal to the BPAI, in this post I'll discuss Mistake #2: Arguing outside the claims.

In discussing Mistake #1, I said that the Board is not often persuaded by conclusory assertions and you're more persuasive with a real argument with explanation. However, your argument should stay close to the claim language. Otherwise, the Board may ignore the argument as being outside the scope of the claim.

   Appellants argue (App. Br. 10) that, in contrast to the claimed invention requiring that the processor monitor a stored version of the video transmission, the Spehr reference monitors the actual transmission. According to Appellants (id.; Reply Br. 2), the claimed invention, by monitoring the stored information rather than the actual transmission, makes it easier to adjust another channel.
   We find Appellants' argument to be unpersuasive as it is not commensurate with the scope of claim 1. It is our opinion that Appellants’ argument improperly attempts to narrow the scope of the claim by implicitly adding disclosed limitations which have no basis in the claim. See In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). We find nothing in the language of claim 1 which requires monitoring the stored version of the video transmission. 
(Ex parte Cormack.)

   Appellants merely contend that Folegnani fails to disclose “to dynamically adjust the size of the monitoring period” without providing and supporting reasoning why. Furthermore, the Examiner found that this argument is not commensurate with the scope of claim 33. We agree. Claim 33 recites “wherein said period of time comprises a cycle window that is variable and controllable.” There is no requirement that the monitoring period be dynamically adjusted. Instead, the period of time must be variable and controllable.
(Ex parte Buyuktosunoglu.)

Arguing outside the claims is a bad idea for a second reason: if your patent is asserted, such an argument limits the claim scope through the doctrine of prosecution disclaimer.

Prosecution disclaimer is sometimes referred to as prosecution history estoppel. See my previous post here for an explanation of the difference between the two.

Mistake #1 when arguing at the BPAI: Conclusory assertion rather than argument with explanation

In a previous post I listed my Top 10 Mistakes in Arguing on Appeal to the BPAI. Now I'll provide some explanation about Mistake #1: Conclusory assertion rather than argument with explanation.

Perhaps the most damaging mistake is not actually making a real argument. A surprising number of arguments in Appeal Briefs look like this:

Claim 1 recites a widget. Reference A does not teach a widget. Therefore the rejection should be overturned. 

I don't find that convincing, and the BPAI isn't usually convinced either. Here's what the BPAI has to say about "arguments" like that one:

Appellants’ contention that the references do not teach each limitation of the claim is supported by a summary of the references (Br. 11-14) and quotation of claims 4, 21, 41, and 61 (Br. 15-16). Appellants’ summary of the references and quotation of the claims contains no explanation of how the claim language patentably distinguishes over the references, and thus fails to identify a basis for concluding that any of the Examiner’s findings are erroneous.
(Ex parte Candy.)

For his part, the Appellant does not address these findings. Instead, he merely alleges that "[n]o such generation of suggested edits is taught by Microsoft Excel 2000" (Appeal Br. 11) and that "[t]here is absolutely no teaching whatsoever in Excel 2000 of such hierarchical log of edit regions." (Id. at 12.) These allegations "do not . . . explain why the Examiner's explicit fact finding is in error."
(Ex parte Poynor.)

Sometimes the argument provides a tiny bit more explanation:

Claim 1 recites a widget. Reference A teaches a blodget. A blodget is not a widget. Therefore, the rejection could be overturned.

But WHY is a blodget is not a widget? The BPAI wants to know:

Appellant argues that the combination of Angell and Orr does not teach or suggest "a stenocaptioning device configured for transcribing audio from an audio event simultaneously with an occurrence of the audio event." First, it is argued that the transcribed text in Angell is "synchronized." Br. 7-10 § A.1. This argument is not helpful because it does not explain why synchronized text cannot meet the limitation.
(Ex parte Pettinato.)

The only time you're going to win with conclusory assertions is when the subject matter of the claim is worlds apart from the subject matter of the reference, so that the assertion "does not teach" is almost self-evident. Say, a claim to a chemical compound and a reference describing a mousetrap.

Now, I understand there are valid reasons why prosecutors would rather not make "real" arguments. The first one that comes to mind is prosecution disclaimer (also referred to as argument-based estoppel). If I thought I could get allowances with nothing but conclusory assertions, then I'd be tempted too.

Another reason for avoiding "real" arguments might be a fear of an inequitable conduct charge for mischaracterizing the reference. But based on the case law I've seen, I think this fear is overblown.

Top 10 Mistakes in Arguing on Appeal to the BPAI

I've been blogging about BPAI decisions for about a year and a half, and I definitely see some common themes about which arguments win on appeal and which ones don't.

So I'll start off 2011 with this list of "Top 10 Mistakes in Arguing on Appeal to the BPAI" :

1. Conclusory assertion rather than argument with explanation
2. Arguing outside the claims
3. Failing to address Examiner's specific findings
4. Not recognizing that the real issue is claim interpretation
5. Failing to address the combination
6. Arguing the Teaching, Suggestion or Motivation test
7. Using attorney argument when evidence is required
8. Using a declaration that amounts to opinion without factual support
9. Arguments that ignore relevant case law
10. Arguments about issues that aren't appealable

This ranking is not based on anything fancy like a statistical study. Instead, this is my overall impression, based on reading many BPAI decisions, of which tactics are commonly used yet unwise.

Also, I won't address the question of whether or not the BPAI is legally correct in treating these actions as mistakes that are damaging to the Applicant. For example, whether the BPAI is properly allowed to affirm simply because the Applicant didn't address an Examiner finding.

I'll follow up this list with other posts that go into more detail on each of these mistakes.

Arguments guaranteed to lose: "but look at these similar claims in other issued patents"

Takeaway: Occasionally Applicants make an argument which amounts to "the rejected claims are similar to claims that appear in these issued patents, so the Board should reverse the rejection." The BPAI ignores these arguments, relying on CCPA precedent: "In reviewing specific rejections of specific claims, we do not consider allowed claims in other applications." In re Gyurik, 596 F.2d 1012, 1016 n. 15 (CCPA 1979).

Details: Applicants often use this argument in § 101 rejections (see, e.g., Ex parte Ward and Ex parte Kelkar.) and occasionally for indefiniteness (see, e.g., Ex parte Cochran).

My two cents: Applicants seem to use this as a general appeal to fairness rather than as a legal argument. After all, if dozens of patents issued the week before you file your appeal brief with the phrase "computer implemented method", it hardly seems fair that your claim with the same preamble is rejected under § 101. Perhaps this type of fairness argument is really aimed at the Examiner — after all, the Appeal Brief is your last chance to persuade the Examiner. I have no idea whether this works with Examiners. But it doesn't work with the Board.

A much more creative argument appeared in Ex parte Haines, where the Applicants made a constitutional equal protection argument in fighting a § 101. (Seriously.) The Board ignored that one too, noting that "Appellant has not cited any authority in support of the novel legal argument." For more details, see this post at The Florida Patent Lawyer Blog.

Arguments guaranteed to lose: non-analogous art when classifications are different

Takeaway: In evaluating non-analogous art arguments, the BPAI considers evidence that references are in different PTO classification to be "weak." The Board has cited two different Federal Circuit decisions as support for this proposition:

Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).

While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the similarities and differences in structure and function of the inventions carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

Details: I found four decisions in which the BPAI rejected non-analogous art arguments based on classification evidence.

The claims in Ex parte Gargiulo were directed to a postage metering system which could be controlled through voice commands received through a telephone interface. The claimed system also converted the voice commands to text and printed the text. The Examiner combined three references: a postage metering system having voice recognition; a text-to-speech converter having a telephone interface; and a postage metering system which printed non-voice messages.

The Applicant made a very cursory non-analogous art argument:

The rejections should be reversed because the references are not in an art analogous to that of the invention as presently claimed. Appellant respectfully submits that the cited references are in extremely non-analogous art areas and that there is absolutely no motivation to combine the references. See Wang Lab., Inc. v. Toshiba Corp., 993 F. 2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993.)

The Board affirmed the rejection, noting that it was obvious to include known elements and techniques from the text-to-speech system in the voice-controlled postage metering system to yield predictable results. The Board also dismissed the non-analogous argument:

While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the similarities and differences in structure and function of the inventions carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

The claims in Ex parte Mittleman were directed to luggage with a towing handle. The Examiner combined a portable cooler with a multipurpose cart. The Board dismissed the Applicant's classification argument:

Appellants contend that the USPTO classification system places baggage and coolers in different classes, illustrating that the USPTO considers coolers and pieces of baggage “as representing different fields of endeavor.” Reply Br. 8. In this attack on the definition of “baggage,” Appellants appear to be arguing that a cooler is not analogous art to baggage. Regarding analogous art, evidence of  classification in different categories by the PTO “is inherently weak ... because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.” In re Mlot-Fijalkowski, 676 F.2d 666, 670 n. 5 (CCPA 1982). Appellants’ argument fails to demonstrate that coolers are nonanalogous art to baggage.

The claims in Ex parte Nelson were directed to an electrically heated asphalt paving system having a bounding layer and an outer insulation layer. The Examiner combined an asphalt paving system reference without the claimed layers with a reference teaching a thin sheet electric heater having the claimed layers. The Applicant made a spirited non-analogous art based on classification:

The record in this application has finally been clarified by the Examiner conceding that Borrup (U.S. Patent 4,384,401) is not analogous art based upon the fact that Borrup is directed toward solving a problem that is different from the particular problem with which the Applicant was concerned. This should come as no surprise as Borrup is directed to a method of mass producing heater elements in class/subclass 29/611, whereas the parent patent to the present application is classified in class/subclass 404/118. But the Examiner now holds that Borrup is analogous art because "Borrup appears to be in the field of endeavor" of Applicant since "Borrup teaches the use of an electric heater, bonded to a metallic substrate to form a heated plate to warm various materials." The Examiner has misapplied the law in reaching the conclusion that Borrrup is analogous art based upon it being supposedly in the same field as Applicants' endeavor. Based upon the Examiner's flawed reasoning, a determination of whether a reference is in an Applicants' field of endeavor relates to what it discloses without any regard to where that disclosure is hidden away in the vast sea of information constituting the U.S. Patent database.
(Emphasis added.)

The Board dismissed the non-analogous art argument:

Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982). Thus, Appellant's argument directed to the USPTO's classification of Borrup is not persuasive. 

The claims in Ex parte Matus were directed to a plasma torch cutting system with a control system. The control system for the torch included a serialization circuit. The Examiner combined one reference teaching a plasma torch with another reference teaching a serialization circuit as used in a plasma coating system. The Applicant made a detailed non-analogous argument:

Second, despite the assertion that serialization merely comprises common experience in plasma cutting torch control, the Examiner has provided no examples of the commonality of or use of a serialization circuit with a plasma cutting system. Instead, the Examiner relies upon the disclosure of a serialization circuit in a coating system, which as stated above, is very different from cutting systems and has very little in common with a plasma cutting system. A review of the divergent classification of the two cited references is evidence of such. That is, Schneider et al. (similar to the present application) is classified under the broad class of "219 - Electric Heaters" whereas Schutz is classified under the broad class of "250 - Radiant Energy." Thus, the cited references are not merely different in respect to their subclasses, but in regard to their much broader class, and as such, the search of one class of for one patent would not be likely to uncover the other patent. Merely because the references have a common word (i.e., "plasma"), they are not necessarily in the same art ...

The Board summarily dismissed the argument, noting that "evidence of classification of prior art in different categories by the PTO 'is inherently weak . . . because considerations in forming a
classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.' In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982)."

My two cents: Looking to classifications seems like a creative argument against obviousness, but it's simply not supported by case law. You're better off dealing with the two prong test for analogous art: 

Two criteria are relevant in determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the art is not within the same field of endeavor, whether it is still reasonably pertinent to the particular problem to be solved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed.Cir.1992) (citations omitted).
Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed.Cir.1993)

Is it necessary to point out every mistake in an Office Action?

Is it a good idea to point out every time the Examiner makes a mistake in an Office Action? I don't think Applicants do this to be snide. I think some Applicants really are worried that failing to address every incorrect statement in the Office Action somehow damages their case.

I came across a file history in which the Examiner issued a § 103 rejection, and prefaced it with the standard form paragraph from MPEP 706.02. The paragraph starts with "This application currently names joint inventors" and then goes on to say that if any claims are not commonly owned, the Applicant has a duty to let the Examiner know since that opens up more prior art under 103(c)/102(e). Turns out the form paragraph was inappropriate because the application named only a single inventor. The Applicant made this point in the next response, carefully stating for the record that the application was filed with a single inventor, inventorship had not changed, and "Appellant is unaware of any other circumstances leading to the conclusion that there are multiple inventors."

Now, the Applicant was very polite in correcting the record. So the Examiner shouldn't have felt  insulted – if he even noticed this paragraph buried after all the other arguments. But still ... is this necessary? What possible harm can come from just letting this slide?

Is it simply that some incorrect statements do need to be addressed? [And I agree that some do.] So that if you address all the errors, you don't need to think about which ones matter?

Arguments guaranteed to lose: not obvious because the references are old

Takeaway: The BPAI has held in a number of decisions that the mere fact that the references used in an obviousness rejection are old does not indicate non-obviousness. Federal Circuit precedent requires actual evidence of a long felt need.

• Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1324-25 (Fed. Cir. 2004) (absent a showing of long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of nonobviousness); and
  
• In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (the mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem).

Details:

In Ex parte West, the Applicant argued that the two references had been around for nearly 40 years without being combined as proposed by the Examiner “militates against the Examiner’s conclusion.” The Board found the argument "not persuasive, as the record is devoid of evidence showing a long-felt need or unsuccessful efforts by others to solve the problem." (Emphasis added.)

In Ex parte A.L.S. Enterprises, Inc., the Applicant argued that "the relative age of these references suggests that these references were not so easily combined as suggested by the Examiner." The Board disagreed, stating that "[t]he present record lacks the required persuasive evidence that establishes previous attempts and failure in providing a bag for garments that absorb odor."

In Ex parte Bourhis, the Applicant even explained why the age of the reference should have been considered an indication of non-obviousness:

No motivation would have existed to use Kim’s compositions in Curry’s two compartment devices. Specifically, Kim was filed about 26 years after Curry. Thus, Curry’s two compartment devices were well-known at the time Kim filed his application. Yet, Kim neither teaches nor suggests using his compositions in a two-compartment device.

The Board was not persuaded, because the Applicant did not provide any evidence of long-felt need or failure by others.

Examiner did not explain relevance of questions in enablement and indefiniteness rejections (Ex parte Morooka)

Takeaway: In Ex parte Morooka, the BPAI reversed an enablement rejection because the rejection amounted to a general allegation that inadequate information was disclosed rather than a "reasonable explanation as to why the scope of protection provided by claims required undue experimentation." An indefiniteness rejection was also reversed because the rejection contained a series of questions rather pointing to "any particular language in the claims that a person skilled in the field of the invention would not reasonably understand when read in the context of the Specification."

Details: The Applicant's claims included “an adhesive whose total quantity of gas detected when analysis using gas chromatograph mass spectrometry is conducted under test conditions of 180 °C and 10 minutes is 100.5 μg/g or less in n-tetradecane.” The Examiner's enablement rejection alleged that the Applicant had not provided adequate information about the molecular structure of adhesive or enough comparative data for other adhesives under the claimed test conditions.

The Board reversed the enablement rejection. The Board found that the Examiner's concerns about molecular structure and comparative data were either addressed by the spec or could be determined without undue experimentation using spectrometry. The Board further noted "none of the Examiner’s above-noted questions and allegations addresses the Wands factors," which is the appropriate framework for enablement analysis.

Turning to the indefiniteness rejection, the rejection consisted of a general allegation "it is far from clear or certain what the scope or metes and bounds of the claimed invention are" followed by a series of question:

• what are the molecular weight distributions of the polymeric materials that can be used?
• what is the average molecular weight of the polymer which can be used?
• what is the sample size of the material that is used?
• what is the moisture content of the sample size?
• what actually is the Appellants’ definition of the term ‘adhesive’?
• what comprises n-tetra-decane?
• what are some of the specific adhesives (by common or IUPAC names) which would be excluded and why?

The Board reversed because the Examiner did not explain why answers to those any of questions are necessary for a POSITA "to reasonably understand the scope of the claim when read in light of the Specification," which is the appropriate standard for indefiniteness. The Board also found that the last three questions were either answered by the specification or were understood by a POSITA.

My two cents: Since the Board made a factual finding that the spec did enable the claims, the Board's comments about the deficiencies in the Examiner's rejection could be considered dicta. Even so, the next time I get a vague enablement rejection, I'll definitely consider traversing with a statement that the appropriate standard is a "reasonable explanation as to why the scope of protection provided by claims required undue experimentation." Similarly, if I get an indefiniteness rejection which is nothing more than a series of questions, I'll probably traverse by insisting that the Examiner apply the appropriate standard for indefiniteness.