PTAB interprets "searching only a solutions data store" to allow a search of another database due to comprising

Takeaway: On appeal, the Applicant argued that the claim language "searching only a solutions data store" wasn't disclosed by the reference, which taught that both the "potential solutions" and the "approved fix" databases were searched. The Board disagreed, noting Applicant's use of the transition term "comprising" in the method claim. The reference system performed a first search in one database, and conditionally performed a second search on a different database. The scenario where no second search occurred was clearly covered by the claim language. An additional search of a second database wasn't excluded ("comprising") so the second scenario was also in the scope of the claim. (Ex parte Fisher, PTAB 2015.)

Details:

Ex parte Fisher
Appeal 2013-002943; Appl. No. 11/833,949; Tech. Center 3600
Decided:  November 24, 2015

The application on appeal dealt with automated technical support. A client application generated a system configuration profile and transferred it to a server. The server searched a knowledge base for relevant problem resolution information, using the profile to narrow the search. This problem resolution information was sent to the client in the form of a hyperlink to a web pages "instructive of" a problem solution.

A representative claim on appeal read:

1. A method for obtaining customer support, the method comprising:
[1] transmitting parameters specific to an end user product
    to a network–based application
          operable to dynamically generate a web page
               instructive of a solution to a problem associated with the end user product
          based on the parameters
          by searching only a solutions data store
               that stores a plurality of solutions
                    which were moved to the solutions data store from a predisposition solutions data store,
                         the predisposition solutions data store storing a plurality of potential solutions
                              that are accessible by technical support center agents
                              but inaccessible to an end user,
                    when each of the plurality of solutions
                         was validated and approved for use
                              based on implementation of the potential solutions
                                    by the technical support center agents;
[2] receiving an interactive link to the dynamically generated web page; and
[3] browsing the dynamically generated web page by selecting the interactive link.
(Emphasis added.)

The claim language on appeal was that emphasized above. The Examiner used a combination of four references to reject as obvious, and relied on Wing for the above-emphasized feature. The Applicant argued that the claims require searching only one data store – one having solutions moved from another store of solutions inaccessible to an end user.” The Applicant argued that in Wing, "both the ‘potential solutions’ (those not formally approved) and the ‘approved fix’ databases are searched ... regardless of where they are from.”

In the Answer, the Examiner maintained the rejection. The Examiner explicitly mapped the claimed "predisposition database" to Wing's attention file and the claimed "solutions data store" to Wing's dynamic disposition database. The Examiner characterized Wing's teachings as follows:

• "searching only a solutions data store that stores a plurality of solutions which were moved to the solutions data store from a predisposition solutions data store"
  [Wing: content developer can consider moving potential fixes from attention files to dynamic disposition database that stores approved fixes]
• predisposition solutions data store storing a plurality of potential solutions that are accessible by technical support center agents but inaccessible to an end user
  [Wing: attention files are only accessible by content developer/technician and not inaccessible by enduser]

The Applicant filed a Reply Brief to make several points. One, the Examiner equated Wing's dynamic disposition database with the claimed solutions data store, but "nowhere does Wing teach that only the disposition database is searched." Two, the "Examiner is incorrect that the 'attention files' of Wing are only accessible by content developer/technician." Wing merely stated that these files are accessible by a content developer, but "mentions nothing about others (e.g., end users) not being able to access the potential solutions therein.

The Board affirmed the obviousness rejection and discussed three different sub-issues. First, the method claim included only three steps, and almost all of step [1] related to activity after the transmitting, with language describing how the transmitted parameters affect a remote database. All this language was non-functional descriptive material, and thus given no patentable weight (citing King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)). Second, the Board found it "predictable to narrow the domain of a search in general," since it is "predictable to delete a step for the purpose of removing its function."

Finally, even giving patentable weight to the "searching only a solutions data store," limitation, the Board found that the Wing reference disclosed this feature. Wing's system performed a first search in one database, and conditionally performed a second search on a different database, depending on the results. A scenario where only the first search occurred was clearly covered by "searching only." And the use of "comprising" meant an additional search of a second database wasn't excluded, so the second scenario was also in the scope of the claim.

Here's the Board's full explanation:

     Wing describes searching only its solutions set database and that after making that search, only of that database, [when] an approved fix for a reported problem does not appear in the database of approved fixes, a potential solution, i.e. a solution that has not been formally administered and added to the database of approved fixes, may be provided to the end-user, to resolve their issues based on the live creation of a solution set.
     This second step may or may not occur by Wing’s wording. In the instance where it does not occur, the search only of the approved database is clear on its face. In the instance where it does occur, Wing does not say another database is searched, but rather that the technician himself creates a potential solution set. Even if the technician performs a search to create that solution set, Wing describes this as occurring subsequent to searching only the approved fixes. As the claim uses the transition phrase “comprising,” additional unrecited steps will not remove art from the scope of the claim.

My two cents: Oh, where do I begin ... Here's my biggest beef with this decision: it's a leap to characterize narrowing a search ("searching only") as removing a step. OK, there were two databases here. If you understand "search" to mean "search both" or "search all" then, yeah, "search only one" is narrowing. But who says a POSITA understands plain old search in this context to mean "search all" ? The Board offered no explanation, evidence, or reasoning about this, just the sweeping generalization that narrowing a search is analogous to removing a step, which is generally predictable and thus obvious. Note that the Examiner didn't use this rationale, and instead cited a specific benefit mentioned in the Wing reference.

Moving on to the "searching only" limitation. The Applicant understood Wing to teach searching two databases, and argued that the claim language excluded this. The Examiner never explained how "searching only a solutions data store" read on two searches. The Board came up with a clever (devious?) explanation involving additional steps and "comprising." To me, that explanation reads "only" out of the claim. "`Comprising' is not a weasel word with which to abrogate claim limitations." Spectrum Int'l, Inc. v. Sterilite Corp., 164 F.3d 1372, 1380 (Fed.Cir.1998).

Unless you look at it another way ?? The Applicant characterized Wing as a search of two databases – to me, clearly excluded by "searching only a solutions data store." Is the Board instead characterizing Wing as two searches? The first search is covered by the claim, because it is indeed  limited to the particular database recited in the claim (approved fixes = "solutions data store"). The second, separate, search of the potential fixes database is simply an extra step not excluded by the claim.

Is that a fair reading of Wing ... two separate searches, as compared to one search of two databases? Assuming there is a difference to a POSITA, which would a POSITA understand Wing to teach? I'd be surprised if the patent attorney writing the Wing spec meant to make such a distinction. In fact, the drafter of Wing would want his description to read on both implementations, right?

How do you craft a claim that avoids Wing? Do you need "consisting of" rather than "comprising"? Do you need to completely re-think the claim strategy? (Which can be very difficult to pull off when you're stuck with the spec that was filed.)

This post is about the Fisher decision and "searching only." But what if you're drafting Wing and want to cover both implementations: two separate searches; one search of two databases. Is there a way to craft a claim that covers both? Or maybe it's a good idea to have different claim sets directed to different implementations. Sometimes we patent attorneys get hung up on having one claim that captures everything.

Finally, Applicants should take heed of the Board's warning about including receiver behavior in a sender claim (or vice versa). Same goes for including server behavior in a client claim (or vice versa). I see this mentioned a lot in appeal decisions.

PTAB decisions involving computer vs. user distinctions

I reviewed quite a few 2015 ex parte appeal decisions in which the distinction made by the Applicant related to actions performed by a computer rather than a user. I'll discuss a few of these in today's post, with more to follow in a future post.

In Ex parte Furlong (Appl. No. 10/769,117, PTAB 2015), the Board found that "automatically" in a computer claim covered user input that led eventually to computer action. The Furlong application was directed to software for generating expense reports. The user tracked daily activities and tasks using the software, and the software associated these daily activities and tasks with expenses, then generated an expense report. One of the limitations at issue on appeal read: "in response to the identification of the activity item being expensable, automatically associating, by the processor, at least one expense item with the activity item." The Applicant argued that in the reference, the user does the association, not the computer:

Vance's new trip is not (and will not be) associated with a car rental until Vance's user associates the new trip with the car rental. Since Vance's act of associating is not automatic, Vance's act of associating fails to teach the claimed act of automatically associating at least one expense item with the activity item. 

The Board found that "automatically associating" was broader than the Applicant's reading:

No implementation for such automation is recited or narrowed, and no degree of automation is recited either. Thus, even were Vance to do no more than automatically record an association after a user matched an expense item with an activity item, this creation of an association by the computer following the user’s input would be within the scope of the claim.

Similarly, in Ex parte Ren (Appl. No. 12/582,142, PTAB 2015) the Board found that a particular claim limitation covered computer input originating from a user. The application was directed to a vehicle navigation system. One of the claims on appeal ("a method of displaying a navigation map") involved rendering a nonphotorealistic image based on three-dimensional data associated with buildings surrounding the vehicle. The limitation argued on appeal was "modifying a viewing angle of the nonphotorealistic image based on feedback from the user." The Applicant argued that in the reference, the viewing angle was modified based on feedback from the system/vehicle, rather than user feedback as claimed. The Board was not persuaded, and adopted the Examiner's finding that "because a user operates the system/vehicle, Herbst’s feedback is based on the user."

In Ex parte Blythe (Appl. No. 11/965,946, PTAB 2015), the Board found that the claim language did not exclude human action. The claims were directed to detecting unauthorized changes to ATMs by comparing the ATM's electromagnetic "fingerprint" to a stored reference fingerprint. The Applicant appealed a § 103 rejection and argued the limitation "receiving, with the detection device, an electromagnetic profile emitted from the financial terminal, said received electromagnetic profile including radio wave activity if present." The Examiner relied on Yuzik ("Surveillance of Suspects of ATM Fraud") for this, pointing to an "RF listening device" in the surveillance system that "listened for suspicious RF signals transmitted from the vicinity of the ATM to a nearby receiver operated by a suspect." The Applicant argued that a combination using Yuzik's RF listening device required a person to actually hear radio activity, which was "a different approach from that provided by the subject invention." In the appeal Decision, the Board noted that "nothing in the claim excludes a person from actually hearing radio activity for detecting as well."

Similarly, in Ex parte Schimpf (Appl. No. 12/647,965, PTAB 2015), the Board found that the claims did not exclude manual entry of database fields. The application was directed to a system that dynamically constructed a new database query, allowing the user to directly specify which field contents in the current record were important. The Applicant argued the reference required a user to "manually enter desired values into fields when generating a search query." In contrast, the Applicant argued that the claims required the search query to be populated from database record field values. The Board disagreed and said the Applicant's manual field entry vs. computer populated distinction wasn't present in the claim:

Those claims recite a database record contains field values (“fields in said currently active database record contain values retrieved from said database”) and a search query uses field values (“a search query requesting all records having values in said at least one user selected field”), but the claims do not recite, and therefore do not require, using database record field values as search query field values. Moreover, the claims do not restrict the source of search query field values or the manner by which search query field values are obtained.

Ex parte Granda (Appl. No. 12/651439, PTAB 2015) is an instance where the Board found that the claims did not require a particular method step to be performed by a computer. The application was directed to a resolving cell phone connectivity problems "while avoiding audible ringing and or inadvertent user pick-up during error diagnosis and correction." The claimed method on appeal involved: receiving an error message at an autonomous probe in response to a data call placed by the probe; mapping the error message to an array of corrective actions. The method also included "executing at least one corrective action from the array of corrective actions." In arguing this limitations on appeal of an obviousness rejection, the Applicant asserted that the feature relied on by the Examiner was carried out by a user:

Shabalin merely discloses directing users to articles containing instructions that a user may follow in order to resolve an application error and fails to describe executing at least one correction action as recited by Appellants’ claim 1.

In construing the claim, the Board found that the Applicant had read too narrowly:

[C]laim 1 does not require that the executing at least one corrective action be performed by any particular unit, but merely recites executing at least one corrective action from the array of corrective actions (see claim 1). Thus, We find that Appellants’ contention that Shabalin"s executing is carried out by the user, (i.e., suggesting that it must be performed by the autonomous probe) is not commensurate with the scope of the claims.

Finally, Ex parte Rys (Appl. No. 12/111,877, PTAB 2015) is an example where the Board found that the claim language allowed for intermediate steps performed by a user. The application described techniques for renaming multiple files. The limitation at issue on appeal in the "computer-implemented method" read: "on detecting that the name is changed, automatically placing a next file in the specified collection in the rename state; [and] displaying a computer-generated name for the next file, the computer generated name based on the changed name of the single file." The Examiner mapped this claim limitation to the "Rename and Copy function with a serialization option" described in Kaplan. Kaplan's software presented the user with a series of dialog boxes, where the user provides and initial destination filename. The filename was then automatically incremented as additional files are copied, but for each filename the user was required to take action to either accept or change the filename. One of the distinctions made on appeal by the Applicant was this user interaction with Kaplan's dialog box. The Board was not persuaded.

With regard to those additional features which Appellant argues are explicitly required, we note Appellant’s claim utilizes the transitional word “comprising.” We therefore find that the possible inclusion of certain windows or dialog boxes within the process described by Kaplan does not preclude the Examiner’s reliance on Kaplan’s description of an automated serialized renaming process.
(Emphasis added.)

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

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

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

The application on appeal was directed to a process of manufacturing a multi-phase liquid composition. A representative claim on appeal read:

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

One of the issues on appeal was the meaning of "blender."

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

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

The Examiner didn't point to any text description in Tanaka, but here is the single sentence in Tanaka that mentions how structure 1 interacts with the other components in the system:

In the multiple charging nozzle 3, as shown in FIG. 1, the charging nozzle 1 is connected to one charger 5, and the sub-nozzle 2 is connected to the other charger 6 so that the transparent gel base and the coloring material are forced into the charging nozzle 1 and the sub-nozzle 2 from hoppers 7, 8 by piston cylinders 9, 10, respectively.

Thus, the structure 1 which the Examiner mapped to the "blender" is referred to in Tanaka as "charging nozzle."

On appeal, the Applicant argued that Tanaka did not disclose a "blender:"

Element 1 of Tanaka is a charging nozzle. The Office Action fails to provide any teaching in Tanaka, or otherwise, as to how a charging nozzle could be a blender.
(Emphasis added.)

The obviousness rejection also asserted – in the alternative – that structure 5 in Yamakazi (labeled "mixing pipe") corresponded to the claimed "blender." The Applicant did not argue the Examiner's alternative reliance on Yamazaki's mixing pipe. However, the Applicant did make a "teaching away" argument as to the combination:

Tanaka found that [the mixer] wouldn't work because it didn't form a three dimensional pattern. Additionally, as the method described in Yamazaki is also related to producing a pattern on the surface (para. 21), not a three dimensional pattern as discussed in Tanaka, Applicants submit there is no motivation from the disclosure of Tanaka to modify its method to include a blender from Yamazaki as stated in the Office Action. In fact, Applicants submit it teaches away from the addition of the blender in Yamazaki as Tanaka desires a three dimensional  pattern.

In the Answer, the Examiner asserted that this teaching away argument (i.e., Tanaka found the mixer wouldn't work) did not take into account the combination actually relied on by the Examiner. The Examiner's combination used a blender (not a mixer) from Yamakazi:

The blender of the Yamazaki reference specifically does not act as a mixer. In paragraph 21 Yamazaki describes designing the blender to avoid mixing the two fluid streams in order to preserve the visual pattern formed  by the separate materials. Therefore the applicant's argument that the Tanaka reference teaches away from mixing is not of any consequence to the proposed combination.

In the Final Office Action, the Examiner had profferred this rationale for adding Yamazaki's blender to the exit pipe in Tanaka's process: "to increase the number of different patterns which the Tanaka apparatus can produce." The Applicant attacked this rationale on appeal, arguing that the purported benefit to the combination was not supported by evidence:

The Office Action provided no support for why one of skill in the art would believe the addition of the Yamazaki blender for surface patterns would increase the number of three dimensional patterns of the Tanaka apparatus.
(Emphasis added.)

The Examiner addressed this argument in the Answer, contending that the Applicant had not fully appreciated Yamazaki:

The fact that the pattern is visible on the surface of the product [as taught in Yamakzai para. 21] is not an indication that the pattern does not extend into the body of the product, merely that the materials in question are opaque; more of the pattern becomes apparent as the surface of the product is worn away by use. The applicant's argument that the Yamazaki blender forms a two dimensional pattern only and is therefore not fit to combine with the Tanaka apparatus is based on an erroneous interpretation of Yamazaki, which clearly extrudes material in a three dimensional pattern.

The Board reversed the obviousness rejection. The Board first summarily agreed with the Applicant's argument about Tanaka: "We fail to understand how charging nozzle 1 of Tanaka constitutes a 'blender.' " Notably, the Board did not make explicit findings as to whether Yamakazi disclosed the claimed "blender," but merely noted (without comment) the Examiner's alternative reliance on Yamakazi's mixing pipe. The remainder of the decision focused on the rationale for combining.

The Examiner's rebuttal in the Answer focused on the Applicant's mention of surface patterns vs. three dimensional patterns. According to the Board, the Answer did not address the thrust of the Applicant's argument. The real issue was the number of patterns, since an increase in this number of patterns was the Examiner's reason for combining. However, the Examiner did not explain why a POSITA would expect such an increase:

More specifically, the Examiner does not identify how many patterns Tanaka discloses. However, it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds Tanaka discloses discharging a spiral pattern (see Ans. 6 (citing Fig. 4)). Similarly, the Examiner does not identify how many patterns Yamazaki discloses, but it is clear that the Examiner finds Tanaka discloses at least one pattern because the Examiner finds that Yamazaki discloses "extrud[ing] material in a three dimensional pattern" (Ans. 7). Hence, the Examiner's findings evidence that Tanaka discloses one pattern and Yamazaki discloses one pattern. Additionally, the Examiner does not identify how many patterns Tanaka's device, as modified by Yamazaki's teaching of blender (5), would produce.

My two cents:  I'm not familiar with the term "charging nozzle," and was curious as to whether its meaning is anything close to blender, as alleged by the Examiner. In patents originally filed in English, the most common usage of "charging nozzle" seems to be in context of electrostatics, where "charging" refers to electric charge. However, when "charging nozzle" shows up in patents translated from Chinese or Japanese, it seems to mean "nozzle for filling with gas or liquid." I think this is the sense used in the Tanaka reference. In fact, the machine translation of Tanaka's Japanese language priority document refers to structure 1 as a "filling nozzle." So what could the Examiner have been thinking, asserting that Tanaka's filling/charging nozzle mapped to the claim term "blender"? 

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

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

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

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

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

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


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

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

PTAB reverses when Examiner interprets "each pixel of a color image" as referring to pixels in different images

Takeaway: The Applicant appealed the obviousness rejection of claims to digital image processing. The claim language at issue was: "for each of multiple given pixels of a color image, determining ..." The Examiner read this on pixels in different images, and the Applicant argued it was limited to processing pixels in the same image. The Examiner relied on Baldwin Graphic Systems, Inc. v. Siebert, Inc., The Applicant considered the context of the determining step as a whole, including the term "local neighborhood." The Board agreed with the Applicant and reversed the rejection. (Ex parte Staelin, PTAB 2013)

Details:
Ex parte Staelin
Appeal 2012000632; Appl. No. 11/280,097; Tech. Center 2600
Decided:  February 28, 2013

The application on appeal was directed to digital image processing. A representative claim on appeal read:

     A method, comprising:
     for each of multiple given pixels of a color image having multiple color channels, determining a respective local difference measure value from a value of the given pixel and a respective value of at least one other pixel in a local neighborhood of the given pixel for each of multiple of the color channels;
     for each of the given pixels, ascertaining a respective color correlation value measuring deviation of the respective local difference measure values determined for the multiple color channels  from a reference: and
     calculating a level of noise in the color image from one or more of the ascertained color correlation values;
     wherein the determining, the ascertaining, and the calculating are performed by a machine.
(Emphasis added.)

The claim limitation at issue on appeal was the "respective local difference" step emphasized above.
This independent claim was rejected as obvious using a combination of two references.

The Examiner asserted that this step corresponded to the SAD (Sum of Absolute Differences) calculation in the primary reference. Applicant argued that the SAD (Sum of Absolute Differences) measure disclosed in the reference did not correspond to the claimed step because it used pixels in different frames. Thus, according to the Applicant, "the SAD measure does not constitute 'a respective value of at least one other pixel in a local neighborhood of the given pixel' " as claimed.

In a later Office Action, the Examiner gave this additional explanation:

However, the Examiner notes that "determining a respective local difference measure value [...] " is taught by Hamosfakidis by virtue of the fact that Hamosfakidis finding difference between pixels in a local neighborhood be it for a single image or of different frames as the Applicant argues.

The Applicant appealed. In the Appeal Brief, the Applicant picked up on the Examiner's explanation and asserted that as properly construed, the "local difference" is determined based on pixels in the same color image. The Applicant made a detailed claim construction argument, using dictionary definitions and focusing on the plain meaning of "local" and of "neighborhood." The Applicant concluded that "the plain meaning of the 'determining' element of claim 1 does not support the Examiner's position that the measurement of differences between  pixels of different frames."

The Examiner responded in the Answer as follows:

The examiner notes that the applicant does not claim that the determining step is done for the "same color image"... [T]he applicant does claim "a color image" but the examiner notes that in for example  in KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) and in Baldwin Graphic Systems, Inc. v. Siebert, Inc., the court confirmed that the use of the indefinite articles "a" or "an", in an open-ended claim containing the transitional phrase "comprising", carries the meaning of "one or more."

The Board found the Examiner's claim construction to be unreasonable:

We agree with Appellants that the Examiner's construction is unreasonable. The language of claim 1 recites ''for each of multiple given pixels of a color image having multiple color images." Therefore, we interpret the claim language of the "determining" step to require that the local distance measure be determined in the same color image. As noted by Appellants, Hamosfakidis teaches measuring differences between different frames,  i.e. different color images. Therefore, Hamosfakidis cannot teach taking a local difference value between a given pixel and a one other pixel  in a local neighborhood  of the given pixel, in a color image.
(Emphasis in original.)

The Board then reversed the obviousness rejection based on the Examiner's unreasonable construction.

My two cents: This decision makes sense to me, but I wish the Board had given a better explanation. The Board's phrasing suggests that it's the presence of "each of" that leads to the conclusion that "image" is limited to a single image – despite the presence of "a." Which makes sense to me, although perhaps my thinking is colored by my background as a programmer.

The Applicant emphasized the terms "local" and "neighborhood" in concluding that the repeated pixel processing ("for each") was performed on the same image. The Board didn't comment on how persuasive this piece of the argument was.

Though I think the Board got this one right, I wouldn't be surprised to see other panels apply the "A means one or more" rule and affirm the rejection. Amending to "a single color image" would have forced the Examiner to change his rejection.

PTAB finds Examiner's interpretation of "lamp assembly" unreasonable when read on a bumper surrounding a headlight

Takeaway: The Applicant appealed an anticipation rejection of claims to an auto light assembly with a charging port. The reference disclosed a vehicle with a charging port and a headlight, both located in the front fascia / bumper. The Examiner read the claimed "exterior lamp assembly including an illumination source and an electrical port" on the fascia / bumper. The Applicant argued that the bumper wasn't a "lamp assembly" even though it surrounded the components included in the claimed assembly. The Board found the Examiner's interpretation to be unreasonable. "Although Figures 20 and 22 of Austin show a headlamp adjacent to electrical connector 170, there is no disclosure in Austin, either in the Figures or description, that an electrical port be included as part of an exterior lamp assembly of an automotive vehicle, as required by Appellants’ claims."

Details:
Ex parte Grider
Appeal 2013-003930; Appl. No. 12/493,514; Tech. Center 2800
Decided:  January 22, 2015

The application on appeal was directed to an auto light assembly with a charging port. A representative claim on appeal read:

     1.  An  automotive vehicle capable of receiving  power from an electrical power grid, the vehicle comprising:
      a battery charger; and
     an exterior lamp assembly including (i) an illumination source and (ii) an electrical port configured to be electrically connected with the electrical power grid, wherein the electrical port is electrically connected with the battery charger.

The dispositive issue on appeal was the meaning of "exterior lamp assembly." The Examiner rejected claim 1 as anticipated by Austin. The Examiner mapped the claim's "electrical port" to electrical connector 170 in Austin's Fig. 22, the "illumination source" to the "headlamp in Fig. 22," and the "exterior lamp assembly" to reference number 172 in Fig. 22.

During prosecution the Applicant argued that Austin's 172 was not properly understood as an "exterior lamp assembly." The Applicant pointed out that Austin described 172 as a "front or rear surface." ("The electrical connector 170 [can be] located in a front or rear surface [fascia] 172, 174 of the vehicle.") According to the Applicant, 172 was best understood as a fascia or a surface of the vehicle's bumper cover.

In a Final Office Action, the Examiner responded that this surface "clearly includes an exterior lamp, thus making interpreting item 172 as an exterior lamp assembly reasonable."

On appeal, the Applicant reiterated the earlier argument, and elaborated as follows:

The examiner argues that because Austin's front fascia 172 at least partially surrounds Austin's exterior lamp assembly, that front fascia 172 is somehow part of the exterior lamp assembly. This logic, however, is flawed. By analogy, a tire can surround the wheel on which it is mounted. This does not mean that the tire is somehow part of the wheel. Similarly, a shoe can surround a foot. This does not mean that the shoe is somehow part of the foot.  Hence, Austin's fascia is not part of Austin's exterior lamp assembly.
(Emphasis added.)

The Examiner maintained this position on appeal. The Examiner responded to the Appeal Brief arguments by asserting that "front surface (172) of Austin is clearly an exterior device, which includes a headlamp/illumination source  (Fig. 22), therefore reading on an exterior  lamp assembly." The Examiner then explained that while the Applicant had argued for a narrowed interpretation, no such features were present in the claim. Finally, the Examiner noted that the Applicant had not provided any evidence that reading the claimed feature on Austin's surface 172 was unreasonable.

The Applicant filed a Reply Brief to rebut points raised in the Examiner's Answer. The Applicant first argued that the Examiner's interpretation was inconsistent with the interpretation of a person of ordinary skill.

Austin's "front or rear surface" language does not refer to the clear surface covering Austin's headlamps. Instead ... one of ordinary skill would interpret "front or rear surface 172, 174" as referring to Austin's fascia, which as known in the art do not include headlamp assemblies. Austin's windshield is an "exterior device" in as much as Austin's headlamp assembly is an "exterior device." One of ordinary skill upon reading Austin's "front or rear surface 172, 174" language and referring to Figure 22, however, would not conclude that Austin is suggesting that the power cord could be plugged into Austin's  windshield  for  obvious  reasons.

Finally, the Applicant presented additional technical reasoning as to why a POSITA would not understand  Austin to disclose a lamp assembly included in the bumper surface 172:

Moreover,  locating  Austin's  electrical  connector   170 in the clear surface covering Austin's headlamps would present challenging issues related  to, among other things, packaging the electrical outlet components in and around the headlamps of the assembly (e.g., the electrical connector and associated wiring would have to be placed such that it does not obstruct the light output by the headlamps and is properly sealed to prevent water and debris from entering the headlamp cavity, etc.) If Austin had intended to disclose such an arrangement, he would at least have made some mention of these issues to provide an enabling disclosure.

The Board found the Examiner's interpretation to be unreasonable, and reversed the anticipation rejection. The Board explained as follows:

Although Figures 20 and 22 of Austin show a headlamp adjacent to electrical connector 170, there is no disclosure in Austin, either in the Figures or description, that an electrical port be included as part of an exterior lamp assembly of an automotive vehicle, as required by Appellants’ claims. The Examiner does not direct us to any disclosure in Austin that teaches that front surface 172 or rear surface 174 is part of an exterior lamp assembly. Nor does the Examiner direct us to evidence in Appellants’ Specification or elsewhere in the intrinsic or extrinsic record that would support a construction of “exterior lamp assembly” that is broad enough to encompass either front surface 172 or rear surface 174 in Austin’s Figures 20–23.
(Emphasis added.)

My two cents: Broadest Reasonable Interpretation is often a dispositive issue, but not all Applicants realize this early enough in prosecution. Here the Applicant did hit the BRI issue head on, and kept arguing about it until the very end (Reply Brief). Surprisingly, although the focus was BRI, nobody brought in dictionary definitions or other evidence of meaning to a POSITA. The Applicant's argument instead used analogies.

I thought the Applicant made a compelling argument, and the Board was persuaded in this case. However, I think arguing by analogy is risky, as the Board is sometimes dismissive of analogies or hypotheticals.

Neither the Applicant nor the Board focused on this, but I think "assembly" is the heart of the argument. The Examiner's position seemed to be: the lamp was within / part of / included in the fascia;  the fascia was therefore a lamp assembly; the fascia was on the outside; the fascia was therefore an "exterior lamp assembly."

But I say "assembly" implies more than just physical surrounding. To me, "assembly" implies a collection of parts that are recognizable to the POSITA as being part of a whole thing. So an LED, an electrical socket, a surrounding frame, and a bracket might all be part of a "lamp assembly". Sure, we can argue about exactly which parts are included in a particular assembly. But here, how can you say, with a straight face, that a fascia/bumper is understood by a POSITA as the entire collection of parts that together make up a "lamp assembly"?

PTAB picks Broadest definition of "secured" among those offered by Examiner and Applicant, but was it Reasonable?

Takeaway: In an ex parte reexamination of a patent on a rolling tool cabinet, both the Applicant and the Examiner made extensive use of dictionary definitions to interpret the claim term "secured." The Applicant asserted the prior art structure was not "secured" because it was not “fixed,” “attached,” or “fastened.” The Board disagreed, finding that "at least some of the definitions encompass a broader meaning." The Board adopted the Examiner's interpretation, under which a container “inserted” into a compartment is considered “secured” in the compartment "because it had to be placed in the compartment and would therefore be unlikely to come loose or give way." (Ex parte 500 Group, PTAB 2010.)

Details: 
Ex parte 500 Group
Appeal 2010-010428; Appl. No. 90/008,998; Patent 6,601,930; Tech. Center 3900
Decided:  October 26, 2010

One of the independent claims on appeal read:

     1. An apparatus for transporting articles between working locations, comprising:
     a base container having an interior space in which articles to be transported can be stored,
     one or more rotatable ground engaging wheels mounted to the apparatus toward the bottom of said apparatus ...
     at least one removable container having [four elements]...
     said at least one removable container being removably secured above said base container when said apparatus is at a working location ...

The Patentee appealed the Examiner's final rejection as obvious over Spielhoff in view of Kennedy. Spielhoff was a German patent, and the Examiner included a PTO translation with the Final Office Action. One of the issues on appeal was the meaning of the language highlighted above.

The Examiner alleged that FIG. 3 of Spielhoff disclosed the base container as 4' and removable container as 8'. The Examiner also provided annotated FIG. 3 (below) bearing the added label "removably secured region for removable container."

Spielhoff Fig. 3

In the Appeal Brief, the Applicant first described the cabinet of Spielhoff and then extensively discussed the proper interpretation of "secured." According to the Applicant, the Figures showed that Spielhoff's cabinet had an upper bin structured to enclose a container such as a toolbox, and the upper bin included a lid but not a latch. Furthermore, the English language translation of the text for Fig. 4 mentioned that multiple cases could be "inserted" (double arrow) into a common frame.

Spielhoff Fig. 4

Moving on to the proper interpretation of "secured," the Applicant introduced multiple definitions for the term "enclosed" used in Spielhoff and for the term "secured" used in the claim. The Applicant asserted, based on these definitions, that "enclosed does not mean secured" and elaborated as follows:

In this rejection, the Examiner has used such a colloquial and overly broad interpretation of the word "secured" as used in the present claims. That is, as set forth in detail above, "secured" means "fixed," "attached" and "fastened." Two objects that are "secured" to each other may not be separated absent the removal/separation of that which is "securing" the two objects together. ... [T]he broadest reasonable interpretation of "securing" elements together, as recited in the claims, requires that the elements be "fixed," "attached" or "fastened" together.

The Applicant's claim construction argument also mentioned various securing mechanisms disclosed in the specification, but explicitly stated that these features should not be read into the claims.

The Examiner's Answer specifically explained how Spielhoff's cabinet was encompassed by various definitions of "secure" provided by the Examiner and by the Applicant:

• One definition of "secured" proffered during reexamination by the Examiner is "to relieve from exposure to danger: act to make safe against adverse contingencies" (Merriam-Webster's  Collegiate  Dictionary, 10th ed., page 1056).  Under this definition  the toolbox is relieved from exposure when placed in the region defined by the Examiner.
• Further, another definition of "secured" supplied by Appellant is "firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way" (Brief at top of page 8). Under this definition the toolbox is firmly placed in position and unlikely to give way when placed  in the region defined by the Examiner.
• Further, another definition of "secured" supplied by the Appellant is "to make firm or tight; fasten" (Brief at top of page 8).  One definition of "tight" is "strongly fixed or held: secure" (Merriam-Webster's  Collegiate  Dictionary, 10th ed., page  1234).  Under this definition  the toolbox is made tight by being strongly held when placed in the region defined by the  Examiner.

Finally, in addressing the Applicant's discussion of embodiments in the specification, the Examiner noted another embodiment: "tool case 212 is secured to the organizer 214 in any manner, for example, by a frictional fit as shown." The Examiner explained that Spielhoff's mechanism for securing – placing the toolbox in to an (Examiner-defined) region above the base container – was "within the ambit of 'any manner' and 'frictional fit' " since the toolbox would be held in this region by the force of friction in conjunction with the compartment's sides.

The Board agreed with the Examiner's interpretation. The Board first noted that Specification did not expressly define the claim term ("secured"), nor did it use the other terms (“fixed,” “attached,” fastened”) to describe the relationship of the removable container and the base container. To the contrary, the Specification states that the securing function can be accomplished “in any manner, for example, by a frictional fit.” Thus, the Specification "makes it clear that the term is being used, and should be construed, broadly."

Moreover, while the Applicant asserted that every definition of "secure" uses the word "fasten," the Board found that some of the definitions had a broader meaning. The Board elaborated as follows:

For example, one of the definitions of “secured” relied upon by Appellant is “firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way.” (App. Br. 8, Ex. 9 (emphasis added)) Thus, a container that is “inserted” into a compartment, as in Spielhoff, would be “secured” in the compartment because it had to be placed in the compartment and would be unlikely to come loose or give way. In this respect, we further note the provision of a lid (not numbered) for the compartment in the tool cart of Spielhoff, which furthers securing of the removable case. 

The Board then concluded that the Applicant's interpretation (fastening required) was too narrow. Instead, "the arrangement of Spielhoff, where the container is inserted into the top compartment, is encompassed by Appellant’s claims."

My two cents: The Board got this one wrong. I'll agree with that the Broadest definition here – firmly fixed of place in position and unlikely to come loose  – is also Reasonable. But I say the Board overreached in applying the reference to the claims.

Simply put, there was zero evidence in the record that a toolbox placed in Spiehoff's compartment would be unlikely to come loose due to friction along the sides of the compartment. The crude drawings in Spielhoff's suggest that the container is roughly the same size as the compartment, but there isn't enough detail to say that the sizes are close enough to achieve the function implied by "secure."

I give the Applicant points for making claim construction the heart of the argument, but unfortunately Applicant didn't sieze on this particular issue that is implicated by the broadest definition.

The way I see it, the Board improperly speculated about the teachings of the reference. But this could have gone another way.

The Board could have treated the claim language "secured ... when said apparatus is at a working location" as intended use, and then taken the position that the compartment need only be capable of fixing a container in place. Under that theory, the reference anticipates if there exists a hypothetical compartment and a hypothetical container having relative sizes such that friction fit keeps the container in place. Right? Or is hypothetical not good enough?

Board ignores qualifier "discrete" and interprets "connected to" to allow indirect connections

Takeaway: In an appeal of claims to a memory controller, the Board gave no weight to the qualifier "discrete," and interpreted "connected to" as allowing indirect connections rather than requiring direct connections. (Ex parte Morrow, PTAB 2008.)

Details:
Ex parte Morrow
Appeal 2007-3972; Appl. No. 10/027,978; Tech. Center 2100
Decided: May 8, 2008

The application on appeal was directed to a memory controller for a computer system. Two of the independent claims on appeal read:

     14. An apparatus, comprising:
     a memory controller; and
     a table walk device connected to the memory controller and externally located from a memory management unit (MMU).

     23. A system, comprising:
     a processor;
     a discrete memory controller adapted to perform a table walk operation and coupled to the processor; and
     a volatile memory device coupled to the discrete memory controller.

Broadest Reasonable Interpretation does not allow broadening from a dictionary definition

Takeaway: In today's post I'll discuss two cases where the Board found that Broadest Reasonable Interpretation does not mean the Examiner can start with a dictionary definition and broaden from there.

In Ex parte Butler, the application was directed to a positioning control system for lithographic printing, and the claim term at issue was "a partial order filter". The claim was rejected as anticipated by a reference (Yuan) teaching a photolithography system. The reference system used a filter and listed notch, low pass, and high pass filters as examples.

Board considers subcomponent of integrated assembly and finds subcomponent is "to be attached to" the final assembled structure

Takeaway: A claim to an aircraft mounting structure recited a "mount portion ...to be attached to a pylon". The Examiner read the mount portion on a pyramid structure that was part of the assembled pylon. The Applicant argued that because the pyramid structure was already part of the pylon, it would no be understood as a component "to be attached to" the pylon. The Examiner explained that "integration (combining multiple into one) is a form of 'attachment'. " The Board agreed with the Examiner. (Ex parte Cloft,  PTAB 2014.)

Details:
Ex parte Cloft
Appeal 2012-005061; Appl. No. 12/016,234; Tech. Center 3600
Decided  June 9, 2014

The application was directed to structures for mounting an aircraft engine. Where prior art arrangements used multiple bolted joints to attach the engine to a pylon structure on the wing, the invention used engine mount beams that were integrally formed with the pylons. 

PTAB assumes any verb phrase using "to" signals intended use

Takeaway:
Sometimes Examiners ignore claim language – give it no patentable weight – by characterizing a phrase as "intended use." However, not every verb phrase using "to" signals intended use. In many types of claims – computer-implemented ones in particular – the word "to" denotes the result of an action.

Consider this simple example: searching a document to find a match on a search term. The match is the result of the search. The result is not inherent – not every search produces a match – but neither is the result an intended use of the search.

In today's post, I'll review some cases in which the PTAB ignored verb phrases introduced by the word "to" because the Board concluded that the phrase was intended use.

Analysis:
The Board considered the phrase "to analyze costs" in Ex parte Liebich (PTAB 2013). The claim language at issue was "performing, using a processor, a value chain analysis by evaluating the attributes ... to analyze costs associated with the costed entities." Because no analyzing step was positively recited, the Board found intended use and gave the phrase no patentable weight.

Furthermore, we note that claim 1 merely requires that the “chain analysis” is performed “to analyze cost” by a processor. That is, claim 1 does not positively recite any step of analyzing cost. Instead, we find such “to analyze cost” language merely represents a statement of intended use or purpose (intended result) of the evaluated data which does not limit the claim. Particularly, an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Accordingly, we conclude that claim 1 merely requires ... performing, using a processor, an analysis by evaluating the data.

This issue was dispositive, since the Applicant had admitted that the reference taught data analysis by a processor, which was all that was required by this portion of the claim.

The application in Ex parte Teichman (PTAB 2013) involved power control. The method claim recited the step “controlling a grid-side converter . . . to regulate the voltage and frequency of the grid via scheduling power flow to a compensating circuit.”

We note that the portion of the limitation – “to regulate the voltage and frequency of the grid” – argued by Appellant fails to distinguish the claimed invention from the prior art either structurally or functionally. Specifically, the recited feature essentially consists of a statement of intended use or purpose for the controlling functionality. Such statements of intended purpose “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).

The phrase at issue in Ex parte Kreichbaum (PTAB 2013) was "transmitting the inputs to a second body part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters."  Once again relying on Boehringer, the Board construed the phrase that began with "to enable" as "represent[ing] the intended use of the inputs which provide tactile feedback." (Emphasis added.) As a result, the Board concluded that "claim 1 merely requires transmitting data to a second body part of the user that is capable of enabling the user to identify the different alphanumeric characters or symbols input onto the pressure-sensitive area of the entry device."

The application in Ex parte Kim (PTAB 2013) dealt with a power control system. The portion of the claim at issue read:

a control system . . .
     to calculate a decreased residual amount of the battery based on a difference between the determined residual amount and a previous residual amount, and
     to control the power supply to the system part based on comparing the calculated decreased residual amount and the residual amount to a predetermined value,

The Board treated the limitations "to calculate ..." and "to control ..." as intended use, giving them no patentable weight because they were not "positively recited as actually occurring."

The application in Ex parte Khayrallah was directed to a multiple antenna receiver. The Board considered a method claim having the limitation "selectively assigning an first one of the receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal." The Once again citing Boehringer, the Board found that the "to receive" phrase was intended use. As such, it did not limit the claim "because it merely defines a context in which the invention operates."

To bolster its conclusion, the Board noted the presence of a separate receiving step in the claim:
Additionally, we note further that the claim positively recites a “receiving” step where two or more receive antennas receive the entire wideband signal including all of the multiple sub-signals prior to a first one of the receive antennas being selectively assigned to receive a sub-signal. Thus, we give “selectively assigning a first one of said receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal” its broadest reasonable interpretation as merely assigning a first antenna that is capable of receiving a signal at a first discrete frequency component of the wideband signal.

In Ex parte Lippincott a video decoding system that included "a plurality of processors, each ...  arranged to execute the certain instructions stored in the instruction memory to decode a frame of the video information"and "a control processor to determine a subset of instructions needed to process a
particular frame of the video information from the type information."

We find Appellant’s argument that the Gove reference fails to teach “any kind of decoding” and “determining a subset of instructions” to be unpersuasive. App. Br. 11. Claim 24 merely requires memory for storing instructions for decoding and a processor for executing instructions. It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition.”); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

My two cents: Among the cases reviewed today, there's no question in my mind that the following phrases deserve patentable weight, since they express results not intention

• controlling a grid-side converter . . . to regulate the voltage
• evaluating the attributes ... to analyze costs associated with the costed entities
• selectively assigning one of the receive antennas to receive ...

For this one, I'm inclined to rewrite to have a separate identification step that is tied to the transmitted inputs.

• transmitting the inputs to a second part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters

The remaining cases are different in that the "to X" phrases express an action rather than a result. 

• a control system . . . to calculate [an amount] ... and to control the power supply
• a control processor to determine a subset of the instructions needed to process a particular frame.

In each case, the Examiner (and the Board) viewed the phrasing "a [structure] to [action]" as intended use. So I would ask the Examiner what format he wants to see order to give it patentable weight ... operable to calculate ... that calculates?

When does "a" mean "the"?

Claims use "a" and "the" in ways that are at odds with plain English usage, which can lead to some strange results.

Let's say I'm describing a text processing algorithm which counts how many times a pattern is found. In plain English, it's perfectly natural to express this as "THE number of occurrences". However, claim drafting reserves "the" for previously-introduced elements. So a claim would probably use "a" instead, to read "A number of occurrences".

Note that in plain English this construction has a completely different meaning: "a number of" often means "some" or "several" (e.g.,"a number of widgets were defective"). Even so, usually no one makes an issue of using "A" to mean "THE" even though it's counter to the plain English meaning. Our brains have been trained to apply a sort of patent filter when reading claims, and we intuitively understand that the drafter really meant "THE number of occurrences even though the claim reads "A number of occurrences."

But what if you don't assume the drafter was using patentese rather than plain English? What if you instead take the position that "a number of" has two different meanings. Then isn't the claim indefinite?

In the recent decision Ex parte Whitney (PTAB 2013), the Board said Yes, it is indefinite. The claim language at issue was: "comparing a number of occurrences of a text pattern in the collection of text at one moment in time with numbers of occurrences of the text pattern in the collection of text at other moments in time.” The Board explained as follows:

     Applicant's arguments ... focus on the failure of the prior art to disclose or suggest comparing an actual numerical count of occurrences, i.e., “a number of occurrences,” of a text pattern in a collection of text at one moment in time with the actual numerical count of occurrences of the text pattern in the collection of text at other moments in time. However, it is equally proper to interpret the phrase, “a number of occurrences,” as the Examiner does, to refer to an indefinite group of occurrences of a text pattern, e.g., some occurrences or several occurrences of the text pattern that are compared at different points in time based on some unspecified criteria.
     Because the claim language is susceptible to two equally reasonable interpretations, the claim language is ambiguous, and, thus, indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). Therefore, we will enter a new ground of rejection of claims 1-50, 53, and 54 as indefinite under 35 U.S.C. § 112, second paragraph.

The Examiner did not raise this issue. And because the claim was indefinite, the Board refused to decide on the prior art rejection. (In re Steele, 305 F.2d 859, 862 (CCPA 1962)(A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.)

A few months earlier, the Board reached the opposite result in Ex parte Qu (PTAB 2013). The limitation at issue read "wherein an arithmetic sum or difference of twice a number of stator teeth and a number of the stator poles equals a number of rotor poles." The Examiner asserted that it was unclear whether "a number of" ... "intended to refer to the total number of teeth or poles or some subset thereof.” The Examiner then interpreted the phrase to mean "subset of teeth" in the prior art rejection. The Examiner explained as follows: 

[T]he devices disclosed in Qu satisfy equation (1) because any number of rotor poles, stator poles, and stator teeth can meet the claimed limitation since ‘a number’ can be any integer, up to the maximum number of poles/teeth disclosed by Qu.

The Board found the claim was not indefinite in view of the specification:

In determining whether a particular claim is definite, the claim’s language must be analyzed in light of the content of the particular application, the prior art’s teaching, and the interpretation that would be given to the claim’s language by a person of ordinary skill in the art at the time the invention was made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009).

The Board found that an equation in the specification made clear that "A number of" meant "THE number of":

The number of the rotor poles, the number stator poles and the stator teeth are configured to satisfy: 2 * S_teeth ± S_pole = R_pole, wherein STEETH refers to the number of stator teeth 30, SPOLE refers to the number of stator poles and RPOLE refers to the number of rotor poles.

Using this construction, the Board then reversed the prior art rejection.

I think these two decisions are outliers. In the first place, I think most Examiners use the same "patentese" rules of antecedent basis that claim drafters do. Most don't reject as indefinite, and most don't take the position that "A number of" means "SOME of". So the Board probably doesn't see this issue raised by the parties very often. I also looked for other decisions where the Board raised the issue, and didn't see any.

But these decisions do highlight how very different claim language is from plain English.

Board finds that "band of frequencies" does not require range and reads on single clock frequency

Takeaway: The Applicant appealed claims to a memory controller using two frequency bands to communicate with a memory device. The Examiner rejected as anticipated by a reference that taught the use of two clock frequencies (X and X/2). The Applicant appealed and argued that "band of frequencies" implies a range, and thus does not read on a single frequency. The Board affirmed the rejection because the Applicant's specification discussed an embodiment using a "zero band of frequencies", which the Board interpreted as a single frequency.

Details:

Ex parte Alon
Appeal 2010008694; Appl. No. 11/021,514; Tech. Center 2600
Decided: Feb. 19, 2013

The application was directed to a memory controller with a simultaneous bi-directional link to the memory. A representative claim on appeal read:

     1. A memory system, comprising:
     a controller;
     a memory device; and
     a set of signal lines, coupled to the controller and the memory device,
     wherein, on each of the signal lines, the controller is to communicate to the memory device using a first band of frequencies while the memory device is communicating to the controller using a second band of frequencies, and
     wherein the controller is configured to dynamically adjust the first band of frequencies based on a predetermined data rate from the controller to the memory device
and to dynamically adjust the second band of frequencies based on a predetermined data rate from the memory device to the controller.

The Examiner asserted that Koroodi's teaching of a clock rate of X Mhz and a clock rate of X/2 MHz read on the "first band of frequencies" and "second band of frequencies". The Applicant appealed and argued that reading "band of frequencies" on a single clock frequency was an unreasonably broad interpretation of "band".

The Applicant made several points related to Broadest Reasonable Interpretation. According to the Applicant, "the clock rate of a controller is a distinct technical concept from frequency bands for communication, such as for communication from a controller to a memory device or a memory device to a controller", and the Examiner violated the BRI requirement by equating these "distinct concepts".

Moreover, the Applicant argued, "band of frequencies" means a range of frequencies, and does not read on a single frequency as asserted by the Examiner. As support for this argument, the Applicant referred to Fig. 3's depiction of "first band of frequencies 364" as encompassing a range of frequencies 368. According the Applicant, this would teach a person of ordinary skill in the art (POSITA) that "band of frequencies" included multiple frequencies. The Applicant then referenced other uses of the term "band" in the art, asserting that "a band-pass filter passes a specified range of frequencies while filtering out frequencies outside the specified range." According to the Applicant, this shows that a POSITA would understand "band" as "range", even without consulting the specification.

Neither party disputed that Kuroodi taught a single clock frequency rather than a range. Thus, the Applicant concluded that under a reasonable interpretation, Kuroodi did not teach the claimed "range of frequencies."

In the Answer, the Examiner responded to the Appeal Brief arguments by stating that "the Examiner is not limited to Applicant's definition, which is not specifically set forth in the claims. In re Tanaka et al. 193 USPQ 139, (CCPA) 1977.

The Board found the Examiner's interpretation to be reasonable, and affirmed the anticipation rejection. After explicitly adopting the Examiner's finding and reasoning, and concurring with the Examiner's conclusions, the Board offered this additional explanation.

The Board first indicated that the Examiner's requirement for a definition to be incorporated into the claims was improper. The Board then noted that the claim term should be afforded its plain meaning since the Applicant's specification did not provide a definition for the term.

The Board was not persuaded by the Applicant's first BRI argument – that clock rate and communication frequency – are different, and instead concluded that a clock rate may be expressed as a frequency.

As for the second BRI argument  – that "band" did not encompass a single frequency – the Board found that the specification taught to the contrary. More specifically,  para. 044 of the Applicant's specification "provides an example in which there is a 'zero band of frequencies' ". ( "The memory system 200 may have a mode of operation in which the control logic 210 allocates a substantially zero band of frequencies to the first band of frequencies 368 (FIG. 3) and a maximum band of frequencies to the second band of frequencies 370 (FIG. 3) ..."

The Applicant made other arguments as well, but the Board was not persuaded by these either, and affirmed the anticipation rejection.

My two cents: The Board interpreted "zero band" as a single frequency. But it seems to me that the discussion of "zero band" in Applicant's spec was really saying that one embodiment allocated NO frequencies to one direction, and all of the frequencies to the other. In fact, I'd say this is how a POSITA would understand the spec as written.

Perhaps if the drafter had used this more straightforward phrasing, instead of "zero band", the Board would have ruled differently. This embodiment was captured in an original dependent claim. Perhaps the drafter was taught to avoid claiming a negative ("allocate no frequencies")? Could the Applicant have covered this embodiment by simply claiming "allocate all of the frequency band" to the other direction?

Board finds use of "only a first wire set and a second wire set" trumps transition "comprising" to exclude other wire sets

Takeaway: The Examiner asserted that a claim reciting "only a first wire set and a second wire set" read on a prior art structure having three wire sets. The Examiner explained that the third wire set was not excluded because the claim used the transition "comprising." The Board found this construction unreasonable because the use of "only" inside the body of the claim limited the claim to two wire sets. The Board cited two Federal Circuit decisions in support of its reasoning, In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009) and Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279 (Fed. Cir. 1986).

Details:

Ex parte King
Appeal 2011009265; Serial No. 11/317,551;  Tech. Center 3700
Decided  August 15, 2013

The application on appeal was directed to an apparatus for sectioning a plastic drum container, often used for shipping liquids. A representative claim on appeal read:

     1. A drum sectioner comprising:
     only a first wire set and a second wire set, wherein the first wire set includes at least one longitudinal wire and the second wire set includes only a first lateral wire and a second lateral wire, the first and second lateral wires and the at least one longitudinal wire cooperating with each other to support a
drum; and
     at least one power supply supplying electrical current through the at least one longitudinal wire,
     the first lateral wire and the second lateral wire to section the drum in multiple pieces.

The Applicant appealed an anticipation rejection of the above claim. The Applicant argued that the Wilgus reference disclosed three sets of wires, where the claim recited "only a first and second wire set." The Applicant also argued Wilgus disclosed more than two lateral wires, where the claim recited "second wire set includes only a first lateral wire and and second lateral wire".

In the Answer, the Examiner acknowledged that Wilgus disclosed three wires but asserted that the use of "comprising" did not exclude additional structures. Therefore, according to the Examiner, "the wire grid formed by frames 10 and 11 of Wilgus reads on the limitations of claim 1."

The Applicant did not file a Reply Brief.

The Board found that the Examiner had misconstrued the transitional phrase "comprising", and as a result, improperly ignored the term "only."

In this case, the first use of the word “only” applies to the first and second wire sets, and to the first and second lateral wires of the second wire set, and elements outside of those clauses are not limited. Thus, the Examiner has erred by finding that third wire set (attached to the frame 12) is not excluded from the claimed invention, and additional wires from the first and second lateral wires are not excluded from the second wire set. 
(Emphasis added.)

The Board cited two cases to explain its reasoning. The first case relied on by the Board was In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009). The Federal Circuit in Skvorecz held that the Examiner was unreasonable in interpreting ‘comprising’ to allow some wire legs without offsets, despite limitations that "each wire leg" has an offset. The Board also relied on Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986), which discussed construction of "consisting of" as used in the body of a claim. Mannesmann held that when a limiting term “appears in [a] clause [of the body of a claim, rather than immediately following the] preamble[, it] limits only the element set forth in [that] clause; other elements are not excluded from the claim as a whole.”

My two cents: In my experience, Examiners often use the presence of the transition "comprising" as an excuse to ignore other limiting qualifiers within the claim. If you encounter this, try using the same reasoning as the Board did here to show the Examiner his error. 

Applicant petitions when Examiner says claims do not read on elected figure

Takeaway: In response to a Restriction requiring restriction between species/figures, the Applicant elected the species of Fig. 4 and asserted that all claims (1-11) read on the elected species. The Examiner issued another Action indicating that the phrase "linear series of at least three [brushes]" did not read on elected Fig. 4. The Applicant petitioned the Examiner's decision, explaining why claim 1 did read on Fig. 4. The Technology Center Director found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable, and that the Restriction Requirement was therefore proper. (Appl. 11/507,367.)

Details:

Application of Alfano
Appl. No. 11/507,367
Tech Center 3700
Petition Decision January 26, 2009 (available through Public PAIR)

 The Applicant filed an application directed to a therapeutic body brush, with one independent claim and ten dependents. (View published application here.)

As a first action, the Examiner issued a species restriction, naming Figs. 3, 4, and 5 as distinct species. The Restriction required the Applicant to elect one of these species and to identify "the claims encompassing the elected species."

The figures (shown below) were described in the Application as follows:

FIG. 3 is a perspective view of the preferred long handle version of the body brush.
FIG. 4 is a perspective view of the preferred short handle version of the body brush.
FIG. 5 is a side view of the flexible handle portion and telescoping handle portion body brush ...

In a Response to Restriction, the Applicant elected Fig. 4 and specified that all the claims (1-11) read on the species of Fig. 4.

The Examiner then issued a Miscellaneous Action indicating that the Response was non-responsive.

Applicant's response is non-responsive since Applicant has elected the species of Fig. 4 and claim 1 fails to read on the elected species of Fig. 4. Specifically, claim 1, lines 4-5 recite "a linear series of at least three brush head mounting structures" (emphasis added) which is not readable on elected Fig. 4. Moreover, the specification never describes such an arrangement for elected Fig. 4.

The Action indicated that the Applicant had one month to file a responsive reply, with extensions of time available for a fee.

The Applicant filed a "Miscellaneous Paper" arguing that the Response to Resriction was fully responsive. The Applicant explained how the embodiment of Fig. 4 fell within the scope of claim 1. First, the Applicant asserted that the claim term "linear series" included both rectilinear series and and curvilinear series. The Applicant then asserted since "[t]he series of mounting structures in FIG 4 is curvilinear," elected claim 1 read on the species of FIG. 4. This paper was filed at the three-month mark, but without an extension of time fees.

The PTO next sent a Notice of Fees due, essentially treating Applicant's last filed paper as responding to the outstanding Miscellaneous Paper, but being two months late.

The Applicant then filed a Petition Under § 1.181 requesting Supervisory Review by the Technology Center Director. The Petition requested, as relief, withdrawal of the Examiner's holding of non-responsiveness. The Petition also requested that the associated extension fees be waived.

In the Petition, the Applicant made several substantive arguments. First, the Response to Restriction was fully responsive. Second, the Examiner's position (as clarified in an Examiner Interview) made it "logically impossible" to select Fig. 4 and corresponding claims reading on that Figure. Third, the Examiner's standard for "fully responsive" was improper.

The Applicant's argument that the Response to Restriction was fully responsive hinged on the meanings of "linear," "curvilinear," and "rectilinear." The Applicant contended that "rectilinear" and "curvilinear" are both subsets of "linear." As evidence, the Applicant presented definitions of all three words that referred to "line." Under this interpretation, claims 1-11 did read on Fig. 4, and the Response to Restriction was thus fully responsive.

The Applicant then explained why the Examiner's position was a "logical impossibility." During an Examiner Interview, the Supervisory Examiner indicated that none of claims 1-11 read on Fig. 4. However, claims 1-11 were the only claims in the application – thus the "logical impossibility" of electing Fig. 4, even though the Restriction Requirement identified Fig. 4 as one of three species.

As a final point, the Applicant argued that the Examiner had applied an improper standard for responsiveness.

The examiner and his supervisor have taken the position that identifying claims believed to read on an elected species is responsive only if those claims happen to match the ones the examiner believes read on that species. In other words, an answer is not an answer at all unless he happens to agree with it.

According to the Applicant, "a response is responsive if every demand for a reply receives an answer."

The Technology Center Director dismissed the petition. The Petition Decision first disposed of the issue of extension-of-time fees, noting that the Examiner's refusal to consider the late reply was proper. Turning to the propriety of the Restriction Requirement itself, the Decision noted that claim 1 "does raise a question as to what 'linear' means with respect to the elected Fig. 4." The Decision found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable.

The term "linear" is typically applied to mean "straight" in everyday language. It is clear that is how the examiner understood the term "linear." In this regard, the Examiner also questioned whether there was any support in the specification in regard to the elected species of Fig. 4 ... Under the circumstances, the examiner's Office action of Dec. 7, 2007 is deemed proper since the understanding of "linear" came to light.

The Decision indicated that the basis of the Petition was essentially that the Examiner's position was unreasonable. As such, the appropriate procedure was a Request for Reconsideration.

This argument is proper in a request for reconsideration before the examiner. If the examiner had erred upon reviewing applicant's arguments, it would be appropriate for the examiner to draft a corrected election requirement or, alternatively, in agreeing with applicant's argument, move forward, in the examination of what has been elected.

The Decision then explained that the Applicant's "Miscellaneous Paper" was essentially a Request for Reconsideration, but one filed after the one-month reply period.

The miscellaneous letter of Mar. 10, 2008, is essentially a request for reconsideration in that it presents arguments to support the applicant's position in the election and is in direct response to the Office action of Dec. 7, 2007. Therefore, the requirement for an extension of time is correct before the examiner can consider the paper. It is not properly filed until the fee has been paid - including additional fees to cover for the continuing running the period for response.

Thus, the Examiner's holding of non-responsiveness was proper, and the requirement for extension of time fees was correct.

The Application went abandoned after the Petition Decision.

My two cents: See, I told you: it's always about claim construction. While the issue decided in this Petition Decision was non-responsiveness of an Applicant's Reply, the underlying issue was claim construction.

The TC Director decided that the Examiner's interpretation was not unreasonable. However, I didn't see any analysis of Broadest Reasonable Interpretation, only a brief mention of "everyday language." And I note that it's very unusual for the TC Director to rule on claim construction. This is a strange intersection of restriction practice (decided via petition) and claim construction (decided via appeal).

If the Applicant really wanted to fight for examination of claims 1-11, I suppose the next step would be to file a Request for Reconsideration of the Petition Decision, this time with the Petitions Office. That's how you "appeal" a petition decision and take it up to the next level.

The attorneys at the Petitions Office may not be familiar with the law of Broadest Reasonable Interpretation. On the other hand, the are attorneys, so should be equipped to handle BRI, especially if the Applicant does a good job of briefing the issue. The PTAB is better equipped to deal with BRI, since they deal with it every day. But procedurally, I can't see a way to get this before the PTAB. The Rules are clear that the PTAB only reviews rejections, and there aren't actually any rejections here.