Applicant fights hard to get Examiner to provide translation of foreign reference

Takeaway: The Examiner rejected using a Japanese language reference. The rejection specifically referred to a drawing in the reference, but the Examiner did not provide a translation of the text that appeared in the drawing. The Applicant raised this issue several times in prosecution. The Applicant also filed a Petition under § 1.181, requesting the TC Director to compel the Examiner to act. After the fourth request, the Examiner finally provided a translation of the text in the relied-upon drawing. The Applicant later appealed. (Appl. No. 11/474,530 to Arjomand, "Window Refrigerator," available on Public Pair.)

Details:
Appl. No. 11/474,530 to Arjomand "Window Refrigerator"
(file wrapper available on Public Pair)

The application was directed to a "refrigerator for home use having its front indoors and its condenser coil outdoors to save electricity whenever the outdoors is colder than indoors."

In the first Office Action (mail date July 16, 2009), the Examiner rejected the claims as anticipated by patent publication JP 063000416A. A machine translation of the reference specification was included with the Office Action. A few weeks after the Office Action was mailed, the Applicant filed a paper requesting the Examiner to provide a translation of the entire reference. (This scenario is covered by MPEP 710.06 "Situations When Reply Period is Reset or Restarted.") The request explained:

The Examiner provided a machine translation accompanied by a single Figure which does not appear to be the one relied on by the Examiner. Applicant could only find the published abstract online. Applicant requests that all figures be supplied and that new a response period be set.

Five weeks after the Office Action mail date, the Examiner had not complied with the Applicant's request, so the Applicant filed a Petition under 1.181. The Petition asserted that it was PTO policy to supply "clear" translations of foreign language references (citing Ex parte Rudd, Appeal 2007-3775). The Applicant requested the Technology Center director to compel the Examiner to take the following actions:

• supply the drawings from the cited reference
• if the drawings include text in Japanese, supply an English translation of such material
• set a new 3-month response period, as of mailing date of the drawings

Five days after the Petition was filed, the Examiner sent a copy of the entire reference – including figures – in Japanese. The Examiner also reset the period for Response, to start from August 31 rather than July 25.  The Applicant then filed a paper specifically requesting the Examiner to provide an English translation of foreign-language subject matter found in FIG. 5 (the sole figure relied upon by the Examiner). The Applicant also requested a new 3-month response period.

On Sept. 25, the Examiner sent a "Miscellaneous Action" with this explanation:

   The rejection based on the JP patent is solely for teaching "ref/freezer (fig. 5) that has a separate freezer compt (8) and a fridge comp (9) where a damper (18) is disposed adjacent the fridge compartment (fig. 5) and dependent on a reference frame of view, the damper is disposed ... (fig. 5.)"
    Therefore no additional English translation of fig. 5 is deemed necessary in view of the computer translation sent earlier. The response period for the outstanding Office Action mailed 8/25/2009 remains UNCHANGED.

The Applicant filed a Response to Office Action a few weeks short of the six month date of the new reply period. The Applicant amended claims but also brought up the issue of the missing translation for the drawings. According to the Applicant, the Examiner's refusal to provide a full translation left the Applicant unable to determine whether the Examiner was impermissibly picking and choosing from the teachings of the reference. (In re Wesslau, 353 F.2d 238, 241 (C.C.P.A. 1965)). This refusal denied the Applicant the "possibility of presenting an educated response to the Office Action." The Applicant also noted the pending Petition to the TC Director.

The Examiner issued an Office Action, which was Final because of the claim amendments. The Office Action used the same Japanese reference in the rejection, and said nothing about Applicant's renewed request for a translation.

The Applicant filed a After Final Response within the two month date, and once again brought up the Examiner's failure to provide a full translation. This time the Applicant made arguments about the level of skill in the art. The Applicant took the position that the poor translation of the Japanese language reference made it impossible to determine the level of skill in the art. As a result, the third Graham factor had not been resolved and the rejection was deficient.

The Examiner issued an Advisory Action and indicated that he would request a full translation. He nonetheless maintained that it was proper to rely on a translated abstract of a foreign reference. The Examiner also asserted that a POSITA would know that the abstract is accurate. Furthermore, since the abstract was sufficient, the level of skill has been established.

Three weeks after the Advisory Action, the Examiner sent the translated figures. The Applicant filed an RCE with all new claims and thanked the Examiner for supplying the translation. The Applicant appealed after the next Office Action, which used a new primary reference (also Japanese). The original reference remained.

My two cents: I think reasonable minds can differ about whether fighting about a missing translation is a good idea. I do think it's important to try to make some forward progress on the merits of the case, rather than getting stuck solely on the translation issue.

I like the idea of filing a petition while at the same time continuing raise it with the Examiner. Here, looks like the Applicant worn the Examiner down before the petition was decided.

I'm generally in favor of appealing early. But failure to provide a translation is a petitionable, not appealable, matter. So appealing early would be a bad idea if you wanted to limit your arguments to failure to provide a full translation. In other words, I think you need to address the Examiner's assertions about the reference, even if you don't have all the information you need to make a great argument.

You could say, as the Applicant did, that the insufficient translation means the Examiner failed to make a Prima Facie case. And, sure, Prima Facie case is certainly something you can raise on appeal. Still, the interaction of these issues – Examiner requirements during prosecution, level of skill, foreign language reference – is complex. So I wouldn't bet my appeal on the Board holding that incomplete English translation means no level of skill means no Prima Facie case.

Finally, the Applicant could have bypassed the Examiner and gotten its own translation. Could be that costs actual money. But maybe not a lot. After all, it was only the Japanese text on the figures themselves that the Applicant was fighting about at the end. The Examiner had already provided the English language text of the entire specification. (After a specific request by the Applicant, that is.) 

PTAB dings Applicant for citing to cases without analogizing facts

Takeaway: An Applicant appealed claims that described structure in terms of segments with joined endpoints, along with profiles for each segment. The Applicant argued that the Examiner had interpreted geometric features shown in the reference drawings in an arbitrary manner, in order to read on the claims. In making that argument, the Applicant cited to two prior Board decisions involving reference were also at issue. The Board dismissed this portion of the argument because the Applicant didn't compare facts in the cited cases to facts in the case on appeal. (Ex parte Justin, PTAB 2014.)


Details:
Ex parte Justin
Appeal No.: 2012008703; Appl. No. 12/784,824; Tech. Center 3700
Decided:   December 30, 2014

The Applicant appealed two anticipation rejections of claims to a "punch for cutting tile from a workpiece". The claims recited a cutting blade and further described the structure of the cutting blade in terms of segments with joined endpoints, along with spline profiles for each segment. (See Applicant's Fig. 14, below.)

The Examiner rejected as anticipated by the cutting die in Copeland. The Applicant traversed, arguing that Copeland's die did not have a cutting blade formed by four joined segments as required by the claims. The Examiner had added lines to Copeland's figure as axes to identify segments, but those lines "cross the punch shape at intermediate locations" and thus were not joined segments.

Examiner's Annotated Figure from Final Rejection

When the Examiner maintained the rejection, the Applicant appealed. The Appeal Brief argued that the Examiner had used arbitrary segments. In support of this argument, the Applicant cited to language in two ex parte PTAB decisions:

The  Examiner's interpretation of the drawings in Copeland and Spengler is unreasonable  because he uses arbitrary portions of the drawings that were "defined only by the Examiner" to meet Applicant's claim limitations. Ex parte Denison, Appeal 2009-004110,  p. 5 (BPAI  2010) (Exhibit A) ("However, that 'structure' identified by the Examiner results only from an arbitrary delineation of Berry's structure, made in order to meet the claim limitations. Even giving  the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood  the  claim  terms  requiring  'double-curved  portions'  and  'Y-shaped  portions'  to include the arbitrary portions of Berry defined only by the Examiner"); See also, Ex parte Richardson, Appeal 2009-003991, p. 11 (BPAI 2009) (Exhibit B)  ("The Examiner appears to have arbitrarily set the axis of the cited references with no consideration as to the relationship with other claimed features").

The Applicant mentioned one of these PTAB decisions again, later in the argument section:

Here, as in Ex parte Richardson, the interpretation of the claim by the Examiner is not consistent with the description of  the invention in the specification. The Examiner has arbitrarily added annotations consistently of two axes added to the prior art figures with no consideration as to the relationship with the other claimed  features. Ex parte Richardson, p.11.

The Examiner's Answer included the same figure with additional annotations, though no further explanation:

Annotated Figure from Examiner's Answer

The Applicant filed a Reply Brief and expanded on the argument, as follows:

     The Examiner's Answer completely ignores and flies in the face of the [BPAI] respected authority relied upon in Applicant's Appeal Brief. Ex parte Denison, Appeal 2009-004110, p.5 (BPAI 2010) and Ex parte Richardson, Appeal  2009-003991, p. 11 (BPAI 2009). The Examiner cites no authority for relying upon axes hand drawn by the Examiner on a cited prior art reference to support the assertion that the claims are anticipated ...
     The Examiner's Answer is devoid of any support in the prior art for his  construction of the claims and so the Examiner just sketches some lines on the prior art drawings and concludes that the claims are anticipated. In conclusion, the Examiner is wrong on the law and wrong to torture the prior art references by arbitrarily sketching lines that are defined only by the Examiner.

The Board affirmed the rejection. The Board essentially dismissed the Applicant's "arbitrary" argument for two reasons. First, the cited PTAB decisions were not precedential. Second, the Applicant did not "provide a persuasive line of reasoning analogizing the facts in those cases with facts in the presently appealed case."

Turning to the merits, the Board found that the Examiner's annotations were not arbitrary.   The axes which the Examiner added to the figure served as a system to identify joined segments, with the center point of the punch acting as the center of the coordinate system." The Board found this system of identifying segments to be reasonable. Furthermore, the Board found that the Examiner's findings about how the claims read on the reference were supported by a preponderance of the evidence.

My two cents: Patent prosecutors rely on case law far less than many other types of attorneys. Success in patent prosecution is commonly understood to depend far more on technical distinctions than on purely "legal" arguments. But if you're going to rely on case law for more than simply a basic legal proposition (e..g, the elements of a prima facie case of obviousness), you need to do what we learned in law school.

The Applicant did the first part, which is finding cases relevant to the issue at hand. Both cases involved Examiner annotation of a reference figure to show claimed geometric features. Then go the extra mile by showing how the facts in the relied-upon case are similar to or different from your facts. If you simply cite to the holding and use some quotes, you're essentially asking the Board to do the analysis for you.

Examples of abandonment after failure to handle drawing requirement

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

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

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

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

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

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

PTAB finds Applicant arguments about misleading terms in translated reference were not supported by evidence

Takeaway: An Applicant argued on appeal that a German patent reference didn't disclose the claim limitation "helically extending" despite the presence of "setscrew," "grub screw," and "screwed in" in the English translation. According to the Applicant, the terminology used in the reference could also be used to describe a twist-and-lock structure which did not include helically wound threads. The Applicant also pointed to the lack of a clear illustration of helical threads, the fact that the drawing was "poorly described" with only a paragraph of text, and the fact that the reference was translated from German to English. The Board affirmed the Examiner's rejection. The Applicant's arguments about the drawings were contradicted by the express teachings of the text. The arguments about the terms used by Schraber were presented as attorney argument and were not supported by evidence. The Board cited In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) for the proposition that "argument by counsel cannot take the place of evidence)." (Ex parte Jackson, PTAB 2012.)

Details:

Ex parte Jackson
Appeal 2010-011356; Appl. No. 10/784,066; Tech. Center 3700
Decided:  March 16, 2012

The application on appeal was directed to a bone screw used in spinal surgery. A portion of a representative claim on appeal read:

     1. A closure for setting engagement with a structural member and comprising:
     (a) a substantially cylindrical body having an outer cylindrical surface ...
     (b) a guide and advancement flange extending helically about said outer cylindrical surface ....
     (c) at least one of said leading surface or said trailing surface [of the flange] being compound in contour and including an inward anti-splay surface component facing generally toward said closure axis...

Claim 1 was rejected as obvious over Schafer (a German patent) in view of Jackson (same inventor as application on appeal). The Applicant identified Schafer in an IDS, and provided a full translation with the IDS.

The main dispute in prosecution revolved around the teachings of Schafer with respect to the claim limitation "a guide and advancement flange extending helically." The Examiner took the position that this feature was disclosed in Schafer's FIG. 2 (below).

Three lines of argument developed during prosecution. One argument focused on the meaning of "helically wound" (although this precise language wasn't in the claim). A second argument focused on what a POSITA would understand from Schafer's drawings. The third argument related to Schafer's textual description, as translated into English from the original German.

In the first response, the Applicant explained that the perspective view of Schafer's FIG. 2 made it "hard to determine if it has a pitch of any kind," but "comparing the flange shaped openings in comparative spacing from the edge of the seat, indicates that there is no conventional thread positive pitch present on the flanks of the structure" (emphasis added). The Applicant concluded that Schafer's flange was a "twist screw in and lock structure" rather than a helical structure.

Although the Applicant's initial response didn't explicitly discuss claim construction, the Examiner addressed claim construction in the next Office Action. The Examiner explained that "any angular movement in the structure satisfies 'helically wound' as the claims don't set forth a minimum amount of winding." Further, "pitch need not be 'conventional' to be present and 'conventional' is not recited in the claims."

In a Response to the second Office Action, the Applicant argued that even though pitch wasn't in the claims, the phrase "helically wound" nonetheless implied something about pitch. The Applicant used an annotated Schafer FIG. 2 (below) to explain that Schafer's flange would be helically wound only if D2 > D1 and D4 > D3. But since these conditions did not hold, Schafer's flange was not helically wound.

The Applicant also discussed the text description of FIG. 2 that appeared in the of-record translation of Schafer (supplied earlier by the Applicant with an IDS), which read:

In the exemplary embodiment shown in Figure 2, the bifurcated head 4 of the bone screw 1 likewise has a thread, which, however, has a top flank 11 and a bottom flank 10 embodied in a stepped fashion. The shoulder of the bottom flank 10 is shaped such that it forms an undercut 17. This undercut 17, particularly by means of the shoulder 18, prevents the legs 5 from being bent radially outward while the grub screw 3 is being screwed in. A positive lock is thus produced in the radial direction between the bifurcated head 4 and grub screw 3. This positive lock prevents, as previously mentioned, any slippage of the leg 5.
(Emphasis added.)

Based on the drawing and this text, the Applicant urged that FIG. 2 was a "twist and lock" structure in which "projections are screwed or rotated ninety degrees into the receiver," rather than a "structure that will helically rotate into the receiver" as claimed.

The Examiner maintained the rejection in the next Office Action. The Examiner explicitly discussed claim interpretation: "helically wound just means it progresses in a spiral or helical fashion, i.e. is threaded (as opposed to 'twist-lock' designs)." The Schafer text actually relied on by the Applicant "teaches not only that the device has threads but that the anti-splay grub screw is screwed in" (emphasis in original). Thus, "it is quite clear that Schafer discloses a 'threaded' structure (i.e., a helically wound flange structure)."

The Applicant filed one more response before appeal and addressed the Examiner's latest contentions.
According to the Applicant,

There is nothing that requires a "grub screw," as it is translated from German, to be helically wound. Such a screw can have mating portions that rotate, for example, 90°, into each other and such are well known. It is believed that this is what is shown in the German [Schafer] reference.

When the Examiner maintained the rejection, the Applicant appealed. In the Appeal Brief, the Applicant noted that FIG. 2 was "only a partial cross section of the receiver" and the corresponding text was limited to "a single paragraph." The Applicant characterized the embodiment of FIG. 2 as "poorly described" and "apparently added as a quick afterthought." According to the Applicant, a POSITA would see in FIG. 2 that all 7 tiers of the receiver were equally spaced from front to bottom on front and back and essentially horizontal, i.e., did not have a pitch. This was contrary to the meaning of "helically wound," which implied that each tier has a pitch going from one tier to the next with each 360° revolution.

The Applicant then made this point by including FIG. 2 next to a FIG. 2 modified to be helically wound). The juxtaposition allowed a POSITA to "immediately see" that Schafer's FIG. 2 was a twist-and-lock structure rather than a helically wound structure.

Moving from drawings to text, the Applicant acknowledged that the German Schafer patent, as translated, referred to a grub screw "screwed into" a thread in describing FIG. 2. The Applicant also briefly acknowledged that Schafer used the phrase "screwed in" in describing the embodiment of FIG. 1. But according to the Applicant, this terminology wasn't dispositive:

[T]he term screw can mean simple rotation into something. ... A structure that mates upon rotating 90° can be called a grub screw and rotation or twisting can be interpreted and translated from the German into English as being "screwed in" in the Schafer disclosure to distinguish from the closures that are slid in sideways without rotating.

A POSITA looking at Schafer, as a whole and in context, would understand that the FIG. 2 receiver was not helically wound. Furthermore, a POSITA would also understand that Schafer's "closure and receiver are aligned and the closure twisted or rotated 90° to secure them together." 

In the Answer, the Examiner first reiterated that the Schafer translation relied on by the Applicant used the terms "threads and "screw." The Examiner then referred to a full translation provided with the Answer, and pointed to additional mentions of "threading" and "screwing in the setscrew." (This document was identified as "Full translation of Schafer (DE 298 10 798 U1), Schreiber Translations, Inc., May 2010.")

Moving on to address the Appeal Brief arguments, the Examiner asserted that the Appellant's "opinion" that Schafer disclosed a non-threaded design was "irrelevant since it overlooks or misconstrues what the reference explicitly says, namely, that the design shown in Fig. 2 includes a threaded set screw that is screwed in." (Emphasis added.) And although the closure itself wasn't illustrated, the text of Schafer said that the "closure is 'setscrew 3' and that it forms a friction-lock with the undercut 17 and lug 18 of the thread of the head 4 (translation, page 10, lines 5-7)."

The Examiner also criticized the Applicant's "exaggerated" side by side drawings: 

[G]iven the very small portion of the entire circumference of the threads that is actually shown, the purported pitch imagined by Appellant is unnecessary for a helical thread and implausible in a single-start thread design (only one helical thread ridge). The angle that is necessary for the threads of Fig. 2 would not be extreme (as in Appellant's sketch) in the very small portion of the circumference that is shown in the basic drawing of Fig. 2.

In the appeal decision, the Board found that Schafer did disclose the limitation at issue. The Board first addressed the text of Schafer, and its use of terms such as "screw" and "screwed in." The Board acknowledged Applicant's argument that the context of Schafer would lead a POSITA to understand these terms differently from normal English usage. However, the Board agreed with the Examiner's reading of Schafer and further noted that "argument by counsel cannot take the place of evidence, citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).

Turning to the Applicant's arguments about Schafer's drawing, the Board first found these arguments ran counter to Schafer's express teachings in the text (i.e., "grub screw," "screwed in"). Moreover, the Board was not persuaded by the Applicant's side-by-side comparison. Instead, the Board agreed with the Examiner that "given the 'very small portion of the entire circumference of the threads' illustrated in Schäfer‟s figure 2, a conclusion cannot be drawn as to the pitch of the threads."

Finally, the Board considered an argument about the secondary reference and found it not persuasive. As a result, the Board affirmed the § 103 rejection.

My two cents: There are several lines of argument at play here.

• Inferences made from a drawing. 
• Overcoming literal teachings of a reference by arguing that the reference really doesn't mean what it says. 
• Attorney argument.
• Translation errors.

Considering the point of whether the FIG. 2 drawing alone showed a helically wound thread, I think the Board got this one wrong. According to the Board, the Applicant made unsupported inferences about thread pitch. Maybe so, and maybe the Applicant overreached with the side-by-side drawing. But the Examiner didn't convincingly show that the FIG. 2 drawing itself illustrated helical winding.  So I think the Applicant won that round.

Even so, the linchpin of the Applicant's argument was overcoming the literal teachings of a reference. Words like "screwed in" and "setscrew" and "grub screw" strongly suggested helically wound threads. The Applicant fought hard to convince the Board that, despite these terms, Schafer's closure structure actually twisted or rotated into alignment with the receiver, and this twist-lock behavior did not require helical threads.

I thought the Applicant did a good job of marshaling facts to put together an argument against ordinary meaning. But in the end, this amounted to nothing but attorney argument. The Applicant should have entered evidence in the form of definitions, technical articles, or an expert declaration. I see no bright line rule for when it's appropriate for the attorney to expound upon the teachings of the reference, and when evidence is needed. But when the core of the argument is what a term means, I think you need evidence.

Finally, the Applicant may have held back the strongest argument. To me, the Appeal Brief statement "rotation or twisting can be interpreted and translated from the German into English as being 'screwed in' " was a hint that the translation from German to English was in error. But the Applicant didn't make this point explicit. And this making this argument would certainly require evidence.

If you wanted to argue translation error, what sort of points would you make and what sort of evidence would you submit? Are machine translations more vulnerable here?

Board okays Examiner's reliance on drawings alone, despite silence as to scale

Takeaway: The Applicant appealed an obviousness rejection In an application directed to a semiconductor structure. The Examiner relied solely on prior art figures to teach relative dimensions as claimed. The Applicable argued that such reliance was improper as a matter of law because the reference did not mention scale. The Board disagreed, finding "sufficient detail and precision [in the drawings] to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written description supports those findings and conclusions." (Ex parte Sato , PTAB 2014.)

Details:
Ex parte Sato
Appeal 201201276; Appl. No. 11/686,892; Tech .Center 2800
Decided:  March 20, 2014

The application on appeal was directed to an LED. The limitations at issue involved the relative dimensions of structures within the LED.

During prosecution, the Examiner rejected originally filed claim 9 as obvious over Kwak in view of Applicant Admitted Prior Art (AAPA).

     9. A method of manufacturing a semiconductor light-emitting device, the semiconductor light-emitting device including a semiconductor layer and a first electrode (24) on a first surface (11) of a semiconductor substrate (10) and a second electrode (40) on a second surface (12) of the semiconductor substrate (10), the semiconductor layer including a light-emitting  region (22A), the method comprising the steps  of:          
     after forming the semiconductor layer on the first surface (11), forming the first electrode (24) on the first surface (11) so as to correspond to at least the light-emitting region (22A);  
     arranging a recessed section (12A) with a depth larger than the thickness of the second electrode (40) on the second surface (12) so as to form a step section (12B) projected from the recessed section (12A) in a region other than the recessed section (12A) in the second surface (12);
     forming the second electrode (40) on at least the recessed section (12A) of the second surface;          
(Emphasis added.)

For the "depth" limitation highlighted above, the Examiner relied solely on the figures in Kwak – not on the specification of Kwak. In analyzing Kwak Fig. 17, the Examiner mapped via hole h3 to the claimed recessed section and conductive layer 175 to the claimed projection.

The Applicant argued only the dimensional ("depth") limitation of claim 9. However, the Applicant did not distinguish Kwak, instead merely traversing the Examiner's sole reliance on Kwak's drawing. Citing to a variety of cases from the Federal Circuit and CCPA, the Applicant asserted that reliance on the drawings was improper under case law because the specification of the reference was silent on dimensions (absolute and relative). The Applicant further asserted that the specification "fails to indicate that the drawings are to scale" so that "apparently the proportions shown in FIG. 17 are apparently the result of the draftman's selection rather than the embodiment of an intention to represent the device to scale." 

The Examiner maintained the rejection in another Office Action, and continued to rely solely on the drawings. In response to Applicant arguments, the Examiner pointed to MPEP 2125 ("the description of the article pictured can be relied on, in combination with the drawings, for what they would reasonably teach one of ordinary skill in the art"). The Examiner further explained his reading of Kwak:

... Kwak clearly discloses in figure 17 that the depth of the recessed section h3 is larger than the thickness of the second electrode 175, and the one of ordinary skill in the art would easily recognize this relationship from the figure of Kwak. Furthermore, if the second electrode 175 was thicker than the recess h3, then it would be level with the bottom of, or even protrude from the bottom of, layer 150. However, Kwak clearly shows second electrode 175 to be recessed within the recessed section h3. The Examiner submits that one of ordinary skill in the art would easily recognize that the depth of the recessed section is larger than the thickness of the second electrode 175.

Later in prosecution, Applicant added another claim with relative dimensions. This one involved width rather than depth:

     13. A method of manufacturing a semiconductor light-emitting device, the method comprising the steps of:
     forming a first electrode on a projection section, said projection section being a contact layer on a first conductivity type cladding layer;
     forming a second electrode in a recessed section of a substrate, the width of said recessed section being larger than the width of said projection section.
(Emphasis added.)

The Examiner rejected claim 13 as anticipated by or (in the alternative) obvious over Romano. Once again the rejection relied solely on drawings. In analyzing FIG. 15 of Romano, the Examiner mapped area 516 to the claimed recessed section and layers s574 and 576 to the claimed projection.

The Applicant filed an After Final Response and handled the claim 13 rejection similar to the previous handling of claim 9. Namely, the Applicant argued that case law prohibited the Examiner from relying solely on the figures of the reference. In the Advisory Action, the Examiner responded to the claim 13 argument by once again referring to MPEP 2125 and explaining what inferences a POSIA would draw from the figure alone. The Advisory Action concluded with this statement

[O]ne of ordinary skill in the art would easily recognize this [relative width]structural limitation . Hence, it would have been obvious to one of ordinary skill in the art at the time the invention was made to make the width of the recessed section larger than the width of the projection section since Romano clearly suggests this structure in figure 15. (Emphasis added.)

The Applicant appealed the pending claims. Once again, the only argument made for independent claims 9 and 13 was improper reliance on the drawings. For claim 9, the Applicant merely repeated the arguments made in the Response to Final. For claim 13, the Applicant repeated previous arguments but added additional arguments.

One of the arguments newly added for claim 13 addressed two cases cited in MPEP 2125. The Applicant first distinguished In re Aslanian, arguing that Aslanian dealt with a design patent rather than utility patent. The Applicant then addressed In re Mraz by quoting sections in which the appellate court had approved of use of a drawing showing the features at issue "with great particularity," while contrasting this with an "enlarged section of a small drawing obviously never intended to show the dimensions of anything." The Applicant asserted that Romano, like the disapproved drawing in Mraz, "fails to proffer an intent that the width of cavity (416)(516) is larger than the width of layers (474,476)(574,576)."


In contesting the rejection of claim 13, the Applicant also used a teaching of the width limitation in Applicant's own specification to argue that the Examiner had used hindsight:
In the absence of any disclosure within Romano [of the width limitation] or any other objective supporting evidence, the line of reasoning within the Office Action appears to have been merely an extraction from the Appellant's own specification.


The Examiner's Answer basically repeated the earlier rejection of claim 9, but did add an annotated version of Kwak's Fig. 17. The Answer varied the rejection of claim 13 by also relying on an annotated Fig. 14 of Romano.

The Answer also explicitly stated (first the first time) a rationale for the obviousness rejection of claim 13: "in order to maximize the heat dissipation from device, as discussed in Romano [citation to section omitted]." The Examiner also responded to the Appeal Brief arguments of hindsight by asserting (again) that "one of ordinary skill in the art would easily recognize" in Romano's drawing, the width relationship recited in claim 13.

After receiving the Examiner's Answer, the Applicant filed an Amendment cancelling independent claim 9. Independent claim 13, added during prosecution, remained on appeal as obvious over Romano.

The Board framed the issue as "... whether Romano 'describes' [under § 102] or suggests [under § 103,] the claimed relative widths." The Board affirmed and explained as follows:

     [W]e look to the drawings, but consider them in light of the disclosure as a whole to determine what Romano would have disclosed and suggested to one of ordinary skill in the  art. ... The Examiner here is not attempting to use the drawings of Romano to establish precise dimensions, but is citing the drawings for showing generalized proportions. While we agree with Appellants that the drawings are not disclosed by Romano as being to scale, the drawings are drawn with a sufficient detail and precision to allow some findings and conclusions with regard to the relative size of the depicted structures. Moreover, Romano's written  description supports those findings and conclusions. ....In explaining Figure 9, Romano states that the cavity 216 has a length and width larger than that of the p-contacts 240 situated above it. (Internal citations omitted) .... 

... Romano's Figures 10-14 show the progressive steps of forming a semiconductor device with a filled cavity 416. All of the figures depict the various layers and structures within the device with different thicknesses. It is, therefore, reasonable to believe that Romano intended to convey relative differences in thickness even if not exactly to scale. Figures  11-14, like  Figure 9, include multiple p-contacts (440) over cavity 416. Therefore, it is reasonable to believe that, like the p-contacts of Figure 9, the p-contacts 440 of Figures 10-14 are intended to be of smaller width than the width of the cavity 416.

My two cents: Weak Applicant argument. It was clear from the prosecution history that the Examiner did not rely on dimensions, measurements, or values, which means In re Wilson and In re Wright were inapposite. Similarly, the Examiner relied on general rather than precise proportions, so In re Olson and Hockerson-Halberstadt v. Avia were inapposite.

Still, this decision is a good review of the case law governing drawings as prior art.

Follow-up to Ex parte Cogdill - Examiner introduces "equivalent" circuit diagram

Last week I posted here about Ex parte Cogdill, a case in which the Examiner relied on an "equivalent' circuit diagram for anticipation. My post resulted in a fair amount of reader comments, and the issues brought up in the comment thread inspired me to do this follow-up post. I don't have a strong opinion about the right answer to most of these issues. (Many of those who commented did have strong opinions about the rightness of their position.) I do think the issues are interesting to explore.

Though the Applicant in Ex parte Cogdill didn't identify it as such, the threshold legal issue here is whether or not an Examiner-introduced diagram can be used in a rejection – even if is equivalent. As commenters pointed out, such a diagram is not prior art under § 102 or § 103.

I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. Is this sort of annotated drawing also prohibited because it's not prior art? I don't see it that way. I view this drawing-plus-added-text as the Examiner's assertions about the teachings of the reference.

I've also seen a few cases where the Examiner annotates with something like a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42. Once again, I see this as an Examiner assertion about the teachings of the reference. 

So maybe what happened in Cogdill's equivalent circuit drawing is analogous to the Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It's well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram that much different than substituting the term "lever" in the reference with the word "member"?

That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, an Examiner writes something like

Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1);  ...

Is the Examiner-created Fig. 3B in the Cogdill case just a way for the Examiner to better illustrate how he was reading Johnson's Fig. 3? In other words, is Fig. 3B an Examiner finding about the teachings of the reference rather than a type of evidence that is inadmissible because it doesn't qualify as prior art?

Could the Examiner have introduced Fig. 3B as evidence through a personal affidavit? Surely an Applicant could introduce an equivalent circuit diagram as declaration evidence, along with an explanation of how the claim limitation at issue is not disclosed by the diagram. So could the Examiner do the same thing through a personal affidavit?

If we get past the threshold legal issue, then the next issue might be the burden of proof on the equivalence of the circuit diagrams. Does a mere assertion of equivalence by the Examiner shift the burden to the Applicant to explain why they are not equivalent? Can the Applicant attack the asserted equivalence with attorney argument, or is real evidence required?

If we get past all that, we reach the questions of fact as to whether Figs. 3 and 3B in Ex parte Cogdill really were equivalent and whether the limitation at issue was disclosed. I'm not a EE, so I'll refrain from expressing an opinion on that ultimate question. I will, however, ask a few questions about the issue. 

As far as circuits go, the claim and the diagrams in Cogdill look pretty simple. You have to understand the difference between parallel and serial. But that's covered in a basic physics class, so I'm not convinced you need to be a EE to interpret this aspect of the circuit. (And yeah, you also have to understand what impedance is, but that doesn't appear to be at issue).

The rest of the claim appears to describe how the impedance elements are connected, using terms such as "between," "one end" and "branch points." With all this talk about connections, it this more of a mechanical-type claim? Or do we need to understand something about circuits in order understand what those positional relationships mean in a circuit context?

Board affirms anticipation rejection based on an Examiner-provided circuit diagram that was equivalent to reference diagram

Takeaway: In an anticipation rejection of a claim to an electrical circuit, the Examiner relied on a circuit diagram and asserted it to be equivalent to the diagram used in the reference. The Applicant appealed and argued that the Examiner's reliance on this figure was improper. The Board affirmed the anticipation rejection after finding that the Examiner's diagram was equivalent and disclosed the claim limitation at issue. (Ex parte Cogdill, PTAB 2010.)

Details:
Ex parte Cogdill
Appeal 2010005510; Appl. No. 10/655,964; Tech. Center 2800
Decide  June 27, 2010

The application was directed to circuitry for memory modules. A representative claim on appeal read:

     1.  A circuit for a memory module address bus comprising:
     a transmission line comprising a dampening impedance between a driver and a branch point of said transmission line; and
     a parallel termination impedance having one end coupled to said transmission line between said series dampening impedance and said branch point,
     wherein said parallel termination impedance is on the same side of any memory module as said driver;
     said transmission line having branches from said branch point,
     wherein ones of said branches are coupled to at least one memory module interface.
(Emphasis added.)

The Examiner rejected the originally filed claims as anticipated by Figure 3 of the Johnson reference (shown below).

Johnson Fig. 3

In response, the Applicant amended to further describe the two claimed impedance element as "series"  and "parallel" and also added the "same side" limitation. The Applicant argued that Fig. 3 of Johnson did not disclose the parallel impedance as claimed.

The Examiner maintained the rejection in a Final Office Action, and provided a "Fig. 3b" (shown below) which the Examiner described as an "equivalent circuit."

"Fig. 3B"

According to the Examiner, "it is irrelevant how these schematics are drawn as long as the connections/nodes are the same, since it is merely a matter of drawing choice." The Examiner then explained the rejection as follows: 

The parallel termination impedance (326) is between the series dampening impedance and the branch point (star node) and the parallel termination impedance (326 - where 326 is parallel in reference to Vtt and star node) is on the same side (below memory modules 302-308) as the driver (312).

The Applicant appealed. In the Appeal Brief, the Applicant acknowledged that the rejection was based on the Examiner's "Fig 3b," allegedly an equivalent circuit. But the Applicant's argument addressed only Johnson's Fig. 3.

More specifically, the Applicant argued that Johnson's Fig. 3 disclosed a termination impedance that was NOT located as claimed, since that diagram showed "a parallel terminal impedance 326 having one end coupled to a branch point, while the other end is coupled to the termination voltage" (emphasis in original). In contrast, the Applicant argued, the appealed claim required the parallel termination impedance to have "one end coupled to a transmission line between said series dampening impedance and said branch point, wherein said parallel termination impedance is on the same side of any memory module as said driver" (emphasis in original).

In the Answer, the Examiner maintained his position. He also noted that the rejection relied on the Fig. 3b equivalent circuit rather than Fig. 3 in Johnson.

The Applicant filed a Reply Brief. In the Reply Brief, the Applicant argued that the Fig. 3b used by the Examiner was not part of the Johnson reference, and was also missing lead-in transmission line 314. The Applicant also pointed to statements in Johnson about an advantage of the relative position of the series impedance and the terminating impedance's branch point. The Applicant then argued that the configuration in the Examiner's Fig. 3b would defeat Johnson's objective.

The Board affirmed the rejection, based on a finding that the Examiner's reliance on the "equivalent circuit" of Fig. 3b was appropriate.

We agree with the Ex that this depiction of Johnson's Fig 3 is electrically equivalent to Johnson's description. Appellant's argument that Fig. 3b is not part of Johnson's disclosure may be literally accurate but is not relevant. Fig 3b is merely another way of drawing the components of Johnson's  invention, electrically connected identically to the manner shown in Johsnon Fig 3. Electrical circuit diagrams are intended to illustrate the manner in which electrical and electronic components are connected to one another. They are not necessarily intended as an exact, to-scale representaiton of the layout of the actual circuit.

My two cents: I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. I've seen a few cases where the Examiner draws a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42.

Maybe what happened here with the "equivalent" drawing is more like an Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram much different than substituting the term "lever" in the reference with the word "member"? That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, the Examiner writes something like
Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1);  ...
Was the Examiner's made up Fig. 3B just a way for him to better explain how he was reading Johnson's Fig. 3?

In the end, the Applicant here didn't hit the Examiner's findings/assertions head on, and would have been better served by clearly taking one of three positions. One, argue that, as a point of law, the Examiner is not allowed to introduce his own "equivalent" drawing. Two, explain why the Examiner's figure was not in fact equivalent. Three, argue why the equivalent circuit did not teach the claimed element. Not hitting the Examiner's position head on was a fatal mistake here.

Perhaps the Applicant's argument in the Reply Brief about Johnson's objective was meant to be an argument against equivalence. If so, the Applicant should have made that more clear, because an argument about objectives of the reference may go to non-obviousness, but is irrelevant to an anticipation rejection.

Color Drawing Petitions, Part II

My last post (When are color drawings acceptable? ) discussed a few Decisions on Color Drawing Petitions. Today I'll discuss a few more.

13/143,209 - Color Drawings Petition DENIED: In Jul. 2011, the Applicant filed a Petition for Color Drawings in 13/143, 209 ("Electromagnetic Radiation Mapping System"). The Petition stated:

Applicant asserts that the color found in the attached Figures is significant to the understanding of the invention. The necessity for the Color Drawings is to clearly show the maps and graphs of the figures.

In Mar. 2012, before an Art Unit was assigned, the Petition was Decided by a Petitions Examiner in the Office of Petitions. The Petition was denied, and the decision summarily stated that "the Office has determined that color drawings and photographs are not necessary for an understanding of the invention."

13/031,293 - Color Drawings Petition DENIED: In Feb. 2011, the Applicant for 13/031,293 ("Method and System for Detecting Light") filed the application and a Color Drawings Petition.The petition included the following explanation:

Applicant asserts that the color found in the attached Figures is significant to the understanding of the invention. The necessity for the Color Drawings is to distinguish the different lines.

In Mar. 2012, after being assigned to an Art Unit (1735) but before being docketed to an Examiner, a Petitions Attorney in the Office of Petitions denied the petition. The Decision explained as follows:

The Office has determined that color drawings or photographs are not the only practical medium by which to disclose in a printed utility patent the subject matter to be patented. As such, color drawings or photographs are not necessary for an understanding of the invention sought to be patented.

13/200,784 - Color Drawings Petition GRANTED: In Aug. 2007, the Applicant filed application 13/200,784 ("Method And System For Dynamic, Three-dimensional Geological Interpretation And Modeling"). The specification described one of the drawings, FIG. 16, as "exhibit[ing] integrating stratigraphic erosional rules into the present geological interpretation system."

The Applicant filed a Petition for Color Drawings two years later, though before the application was docketed to an Examiner. The Petition stated:

Applicant believes the detail contained within the drawings cannot be fully captured using black and white drawings ... The present disclosure allows the analyzing and interpreting of geological information associated with a geologic region [and] creation of three-dimensional graphic displays [of the information]. Accordingly, the color figures support properly conveying the form of the graphical displays.

At Notice of Allowance, the Petition was undecided. After the issue fee was paid, the Petition was granted by a Quality Control Specialist in the Publications Branch. The Decision indicated that "the petition was accompanied by all of the required fees and drawings" and "the specification contains the appropriate language."

13/200,784 - Color Drawings Petition GRANTED: The Applicant for 13/200,784 ("Interferometric Modulation Devices Having Triangular Subpixels") filed the application and a Color Drawings Petition in Sep. 2011. The petition included the following explanation:

The color drawings are believed to be the most practical method (and may be the only practical method) of accurately illustrating the different subpixel colors, groupings of subpixel colors, etc. Some of these drawings (Figs. 11A through 11C) not only depict different subpixel colors and groupings of subpixel layers, but also depict different groupings of subpixel colors underneath an "M1" layer.

In Feb. 2012, after being assigned to an Art Unit (2873) but before being docketed to an Examiner, a Senior Petitions Attorney in the Office of Petitions granted the petition. The Decision did not comment on the Applicant's explanation, but noted that the petition was accompanied "by all of the required fees and drawings" and that the specification included "the appropriate language."

My two cents: I'm not surprised to see Applicants filing Color Petitions for graphs and charts. The use of color can certainly make complicated graphs and charts easier to understand. However, color isn't the only way to convey that information. For example, I've seen black and white charts that use different types of dashed lines for different data series, or Xs and Os for the data points, etc.

Maybe this was the reason why the Petition in the first and second xamples above were denied. Hard to say, as no explanation was given.

The third example would be a little harder to do in black and white, but you could still use different types of fill instead of color. I think the last example comes closest to "only practical medium" standard set out in the CFR. Yes, you could distinguish the subpixels with different type of fill. But this particular drawing has a lot of different regions close together, so that would probably be a mess. So, color makes sense.

However, as I read the Petition Decision on this subpixels application, the Petition wasn't really granted on the merits. That is, the Petition doesn't say "the Office has determined that color is necessary." It just says the Applicant checked all the right boxes.

These eight Color Drawing Petition Decisions (this post and the last) are such a tiny sample size that it's hard to draw any real conclusions about what it takes to get Color Drawings accepted. That said, I wonder if one factor is the branch of the PTO that looks at the Petition. A Petitions Examiner looked at 3 of these 8 Petitions, and 2 of those 3 were denied. And the single one granted by a Petitions Examiner was the drawing with the most persuasive reason for color. In contrast, all 5 of the Petitions processed by something other than the Petitions Office were granted with virtually no explanation.

When are color drawings acceptable? A review of some Petition Decisions

The patent rules in 37 CFR §1.84 provide for color drawings "on rare occasions" when "necessary as the only practical medium by which to disclose the subject matter sought to be patented." I've always wondered how the PTO interprets this requirement. The answer isn't readily available, since color drawings require a petition, and there is no database of petition decisions equivalent to the database of Board of Appeals decisions. But I do run across Color Drawing Petitions from time to time, so in today's post I'll discuss an admittedly very small and random subset of decisions on Color Drawings Petitions. Later I'll follow up with another post discussing a few more of these decisions. 

 11/925,065 - Color Drawings Petition GRANTED Jun. 2010: The Applicant for 11/925,065 filed an application with a petition to accept 3 of the 6 drawings in color. The application was titled "Transmitting Information Effectively in Server/Client Network". The black & white version of one of the color drawings, from from the patent publication, is shown below:

As an explanation for why color was necessary, the Applicant stated:

...the use of color drawings is necessary to differentiate the information and the direction of travel of the information in the server/client network. The use of color drawings for these features of the present invention is considered essential.

After being assigned to an Art Unit, but before examination began, a Quality Assurance Specialist in T.C. 2400 granted the petition. The Decision did not comment on the sufficiency of the Applicant's explanation,  noting only that conditions (i), (ii), and (iii) of §1.84(a)(2) were met.

12/288,158 - Color Drawings Petition GRANTED Aug. 2010: The Applicant for 12/288,158 filed an application ("NLP-Based Entity Recognition and Disambiguation") with a petition to accept several user interface screen shots as color drawings. The black & white version of one of these drawings, from the patent publication, is shown below:

The petition did not include any explanation for why color was necessary. A few months after the Petition was filed, a Quality Assurance Specialist in TC 2100 denied the petition for this reason. The Applicant filed another Petition, and this time explained that "the color drawings are necessary to particularly point out and support Applicants' claimed invention." The same Q.A. Specialist granted the second petition, noting only the petition did contain the explanation required by §1.84.

11/495,229 - Color Drawings Petition Granted Jun. 2007: The Applicant for 11/495,229 filed an application ("Interactive Computer Simulation Enhanced Exercise Machine") with a petition to accept color photographs. The black & white version of one of these photographs, from the patent publication, is shown below:

As an explanation for why color was necessary, the Petition stated:

Color drawings are the only practical medium by which to disclose the simulated environment developed and generated by the disclosed subject matter of to the patent... Such details and contrast between the environment objects are only provided in color and would be lacking in a black & white photograph.

Six months after filing, the Petition was granted by a Supervisory Patent Examiner in T.C. 3700. The SPE treated the Petition as one to accept Color Photographs, since it referred to both §1.84(a) and §1.84(b) and included copies of the photographs in both black & white and color. The Decision did not comment on the sufficient of the Applicant's reason for color. Instead, the SPE simply noted that the Applicant had complied with the color photograph requirements of §1.84(b) by submitting the appropriate fee, a statement in the spec referring to color drawings, three sets of color drawings, and "a black and white photocopy accurately depicting, to the extent  possible, the subject matter shown in the color drawing."

13/033,384 - Color Drawings Petition GRANTED Mar. 2011: The Applicant for 13/033,384 filed an application ("Method for Embedding Secret Message into PNG Image") with a petition to accept several drawings in color. The specification described two of the color drawings as showing "an image before a secret message is embedded" and "the same image ... after the secret message is embedded." The black & white version of these drawings, from the patent publication, is shown below:

The Petition explained that "color drawings are believed to be the only practical medium by which to disclose the subject matter sought to be patented." Only a month after the Petition was filed, a Quality Assurance Specialist in T.C. 2400 granted the Petition. The Decision did not comment on the sufficiency of the Applicant's explanation,  noting only that conditions (i), (ii), and (iii) of §1.84(a)(2) were met.

My two cents: Seriously? You really think you need color drawings for a block diagram, a run-of-the-mill user interface, and a screen shot of a exercise simulation? The only one of these four for which color seems necessary is the last one, the one illustrating embedding a secret message. Although I can't see any difference in the publication between before and after the embedding, I can imagine that such a difference could only be expressed in color.

But there's no way you need color for the block diagram of the computer network -- the drawing already
uses different dashed lines to distinguish the difference in direction! As for the second example, not only is color not strictly necessary for the user interface, I don't even think it adds anything useful over a line drawing. Finally, the screen shot of the exercise simulation looks terrible, and line drawings would have shown the features much better.

What's the thinking here? Do patent practitioners submit color drawings simply because the drawings provided by the client are in color? Or is the rationale to save money? Note that the petition fee is only $130, and it wouldn't surprise me that a complicated user interface or screen shot would cost more than $130 to prepare as a line drawing. 

I think the PTO should provide some guidance on what is an acceptable reason for color drawings. Is the bar for the "necessary as the only practical medium" requirement of §1.84 really this low?

Applicant wins petition and avoids labeling figure as prior art

Takeaway: During prosecution of an application for a fuel cell system, the Examiner objected to FIG. 1 because it was not designated as prior art, yet "only that which is old is illustrated." The Applicant filed a Petition in response to the objection. The TC Director granted the Petition, apparently based on assertions in the Petition that FIG. 1 included "part of the claimed invention" and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26 ... forms part of the invention."

Details:
Application of Kolodziej
Appl. No. 10/948,402
Tech Center 1700
Petition Decision  January 26, 2009
(available through Public PAIR)

The application was directed to a fuel cell system. The (single elected) independent claim included various system components and a controller. Specifically, the claim recited "a controller for controlling the bypass valve and the pump based on the temperature of the cooling fluid, said controller controlling the bypass valve and the pump in combination."

In a first Office Action, the Examiner objected to FIG. 1 (shown below) because it was not designated as Prior Art. The Examiner required this designation because "only that which is old is illustrated."

Rather than amending FIG. 1, the Applicant instead argued that "Figure 1 is not prior art in that the design of the controller 28 controls the pump 20 and the bypass valve 26 makes the controller 28 novel and unobvious." The Applicant elaborated on the inventive concept by explaining that the claim required controlling the pump and valve in combination rather than independently.

The Examiner maintained the drawing objection in a Final Office Action, and gave this additional explanation: "[T]he discussion of the Related Art [in Applicant's specification] fully describes FIGURE 1 (See paragraph [0009])."

The Applicant appealed the prior art rejections and simultaneously filed a Petition under § 1.182 to fight the drawing objection. In the Petition to the TC Director, the Applicant asserted that "figure 1 includes more than what is old, and particularly includes part of the claimed invention." The Applicant acknowledged that FIG. 1 was described in the background, but explained that operation of the controller 28 depicted in FIG. 1 was part of the invention described in the detailed description. The Applicant asserted that "how a controller operates structurally defines that controller." (The Applicant relied on In re Noll (CCPA 1976) for this proposition.)  Thus, the Applicant argued, FIG. 1 is not prior art, since how the controller operates the pump and valve "is part of the invention."

Shortly after the Examiner's Answer, the Director of TC 1700 granted Applicant's Petition and withdrew the requirement to label FIG. 1 as Prior Art. The Petition Decision provided no explanation, and merely referred to Applicant's assertions that FIG. 1 included "part of the claimed invention," and that the invention included the pump 20, the bypass valve 26, and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26."

My Two Cents: I too would think twice before labeling something Prior Art, since a litigator would probably try to broaden that admission into something never intended by the drafter/prosecutor. Yet if FIG. 1 is a block diagram of known components, maybe it is Prior Art. What in FIG. 1 itself distinguishes the controller 28 over a prior art controller? Sure, it's programming ... but is that programming really shown in any way in FIG. 1? Maybe a better approach is to have a FIG. 1 that includes a block inside the controller that represents the novelty – maybe call it "control algorithm X" – and then have the flow chart of FIG. 2 reference numeral X.

The Applicant petitioned on final and simultaneously pursued an appeal of prior art rejections. Separate issues meant the Applicant could pursue both in parallel. Petitions are less useful when you really want a petition decision before you respond to other issues in the Office Action.

Finally, I wish petition decisions were searchable, because I think petitions are a good tool to have in the toolbox. But until they are, I'll be limited to posting about petitions that I come across randomly while looking at other things.

Applicant files computer application without drawings and loses petition arguing "drawings not required"

Takeaway: The Applicant filed a software patent application which referred to drawings, but the filing did not actually include the drawings. The PTO sent a Notice of Incomplete Application. In response, the Applicant filed a Preliminary Amendment with drawings, and a Petition to request that the application be granted a filing date as of the original filing date. The Petition argued that drawings were not required to comply with § 113, and cited  MPEP § 608.02.III, which says that a drawing is not required if the application contains a process claim ("process" or "method" in the preamble). The PTO denied petition, stating that "A review of the specification indicates that drawings are required." (Serial No. 12/362,457, available through Public PAIR.)

Details:
Application of Cornwall
Serial No. 12/362,457; Tech. Center 2800
(Available on Public PAIR)

On January 29, 2009, the Applicant filed an application titled "Endpoint Classification and Command Processing" (classified by the PTO as Communications: Electrical). No drawings were included with the filing.

On February 19, 2009, the PTO sent the Applicant a Notice of Incomplete Application. The Notice indicated that "a filing date has NOT been accorded ... for the reasons indicated below" and also included this statement:

Application was deposited without drawings. 35 U.S.C. 113 (first sentence) requires a drawing "where necessary for the understanding of the subject matter sought to be patented." Applicant should reconsider whether the drawings are necessary under 35 U.S.C. 113 (first sentence).

On April 20, 2009, the Applicant responded to the Notice by filing a preliminary amendment with drawings. The Amendment to the Drawings section read: "Five replacement drawing sheets including Figures 1-5 are included herewith."

On the same day, the Applicant filed a petition with the Office of Petitions to request that the application be granted a filing date as of the original filing (January 29, 2009). The petition argued that drawings were not necessary to the understanding of the invention since "all of the claims ... are directed to a method for 'identifying the features of an endpoint' and 'a method operative to collect packet data.' In support of the argument, the Applicant cited to MPEP § 608.02.III:

An OPAP formality examiner should not treat an application without drawings as incomplete if drawings are not required. A drawing is not required for a filing date under 35 U.S.C. 111 and 113 if the application contains: (A) at least one process claim including the term "process" or "method" in its introductory phrase;

Six months later, the PTO issued a Petition Decision which denied the request. The Petition stated:

A review of the specification indicates that drawings are required. Drawings are required under U.S.C. 113 for the understanding of the subject matter sought to be patented. The filing date will be the date of the submission of the drawings.

Two months after the Petition Decision, and ten months after the original filing, the PTO issued a Filing Receipt granting a filing date of April 29, 2009 (the date of the Preliminary Amendment with drawings). 

My two cents: It's pretty clear what happened here. This was a computer case, and the original specification referred to figures. So clearly the intention was to file with drawings, but the drawings were inadvertently omitted. (Unlike a chemical case, which I'm told are routinely filed with drawings.)  So the attorney was forced to argue "drawings not required." And even found an MPEP section that directly supported his position.

It seems weird that the MPEP specifically says you can get away with no drawings if you have a method claim yet the Petitions Office summarily denied the petition with the conclusory statement "a review of the spec indicates that drawings are required". [I know the MPEP isn't law, but still.]

Whether drawings are "required" is actually only part of the inquiry, because § 113 has two parts. The second sentence "addresses the situation wherein a drawing is not necessary for the understanding of the invention, but the subject matter sought to be patented admits of illustration by a drawing and the applicant has not furnished a drawing." (MPEP § 608.02.IV.) The MPEP goes on to explain that in such cases, the application should be granted a filing date, but the Examiner should require drawings under 37 CFR 1.81(c) or 1.83(c). 

That's the Applicant's scenario, exactly. Perhaps the petitions attorney was confused about the two prongs in § 113. In hindsight, maybe it would have helped if the Applicant mentioned this in the petition. "My app complies with the first sentence of § 113. And if it doesn't comply with the second, well, then, I still get a filing date." 

As an aside, I find it amusing to hear that a method claim in a software case requires a drawing "for the understanding of the invention." A flowchart depicting a sequence of three boxes with text mirroring the claims just doesn't do much to help me understand the invention. And I think I could write a perfectly enabling software patent application with no figures that should win on a petition like this. I would never do this in the real world, since there is no upside and a lot of downside. But from a purely intellectual point of view, I simply don't think all software applications require drawings to understand the invention.

BPAI finds "single unitary computer program" reads on two programs in reference based on Applicant's minimal description of claimed program

Takeaway: On appeal, the Applicant argued that the reference's teleconferencing feature did not anticipate the limitation "single unitrary conference program" because the reference required two separate programs in order to provide the teleconferencing feature. The BPAI found that "single unitary computer program" read on two programs in the reference because the Applicant had almost no description of the program: merely a single rectangle in a figure. "Absent a description of the details of what might be contained in [Applicant's] rectangle 106, we do not see how the present limitations might distinguish over Nakayama ... We fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) [in the reference] cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication." (Ex parte Ditzik , BPAI 2012.)

Details:

Ex parte Ditzik
Appeal 2009014097; Appl. No. 11/023,361; Tech. Center 2600
Original Decision:  November 30, 2011
Decision on Rehearing: April 30, 2012

A representative claim on appeal read:

23. A data conferencing system comprising:
a first conferencing computer
...
wherein the first conferencing computer is configured to a personal computer configured to run an operating system, a single unitary computer conferencing program adapted to real-time communication, and a plurality of personal computer application programs ...
(Emphasis added.)

 The Examiner rejected the independent claims as being anticipated by Nakayama. The Applicant amended to add the qualifier "single unitary," and argued that the conferencing function in Nakayama required two programs on a computer: an interlocution object program and an interloction conrol program. Thus, Nakayama did not satisfy the "single unitary" limitation, according to the Applicant.

The Examiner maintained the rejection and disagreed with the Applicant's characterization of the reference. The Examiner asserted that "the only functionality required of Applicants conferencing program is to achieve real-time communication," which Nakayama achieved with the interlocution control program alone. Thus, the "interlocution object program is not necessary for real-time communication."

The Applicant repeated the argument on appeal. The Examiner maintained his position and elaborated on it, explaining that while the did recite a "single unitary computer conferencing program," it did not require that the entire conferencing operation be accomplished with a single program -- only that it be "adapted to real-time communication". The Examiner again asserted that Nakayama's control program performed real-time communication, cited to several specific sections of the reference.

The Board affirmed the rejection, focusing on what "single unitary computer conferencing program" meant in the context of Applicant's disclosure. The Board noted that the claimed program was barely described at all:

The only description of the "realtime tele-writing conferencing program 106" in the written description consists of the words "realtime tele-writing conferencing program 106."
...
Appellant’s disclosure does not describe the actual components that make up the “conferencing
program” 106. A practical application of the “conferencing program” might include various other “programs” that make up the overall conferencing program (e.g., a program for data acquisition and a program for data transfer). Absent a description of the details of what might be contained in rectangle 106, we do not see how the present limitations might distinguish over Nakayama, even if we were to accept all of Appellant’s arguments concerning the operation of the interlocution “control” and “object”
programs of the reference.

The Board further noted that the phrase "single unitary" did not appear at all in the specification, and the Applicant relied solely on one of the figures as the basis for the limitation.

Appellant’s argument reduces to the contention that instant Figure 4B shows one rectangle for program 106 and Nakayama shows two separate rectangles [designated Interlocution Control Program and Interlocution Object Program]. ... [W]e fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication.

My two cents: The argument between the Applicant and the Examiner boils down to a "where do you draw the box" argument. The Examiner drew a box around the control program and mapped that to the claimed "conferencing program," then said the reference anticipates because the box meets the limitation "single unitary". The Applicant drew a box around the control program AND the interlocution program and mapped that to the claimed "conferencing program," and said no anticipation because the box does not meet "single unitary."

The Board refused to play this game and said: It doesn't matter where you draw the box in this case. The Applicant did nothing more than label a box with the text "conferencing program." Doing so doesn't give the program a "single unitary" structure.

The Board essentially ignored found the "single unitary" qualifier meaningless given the lack of detail in the Applicant's disclosure.

I see "where do you draw the box" issues in mechanical cases too, but there is usually a lot less room for maneuvering by either side. And I've definitely seen the Board reverse when the Examiner drew the box in a completely arbitrary or nonsensical way. Many computer cases are definitely vulnerable to this sort of rejection.