Board finds disclosure that memory access time period exists is not enough to anticipate decision based on this time period

Posted by: Karen G. Hazzah

Takeaway:  At issue in this appeal was the limitation "threshold defining both a number of times a segment is accessed and a given time period for the number of times." The Applicant did not dispute that the counter in the secondary reference tracked page accesses exceeding a threshold, but did argue that the reference did so without regard to a time period. The Examiner asserted that the threshold in the reference implicitly defined a time period, in that "when the threshold is reached the amount of time it took to reach it is also defined." The Board found this interpretation to be unreasonable. The Board acknowledged that the threshold determination "inevitably involve[d] a period of time to count those events," which was "simply the time elapsed during the counting process." However, the Board found that the reference "does not measure, let alone account for [this time period] as a factor for migration" as claimed. The Board reversed the rejection. (Ex parte Jones, PTAB 2011.)

Details:

Ex parte Jones
Appeal 2009011684; Appl. No. 11/066,038; Tech Center 2100
Decided:  August 9, 2011

The application on appeal was directed to a multiprocessor memory system that caches frequently used data in a centralized switch memory.

     1. A system comprising:
     a plurality of nodes, each node comprising a processor coupled to a memory; and
     a switching device coupled to the plurality of nodes and containing
          migration logic configured to migrate segments of each memory to a memory of the switching device so that segments are accessible to each of the processors. 

To overcome an obviousness rejection, the Applicant amended claim 1 to pull in dependent claim 4, as follows: 

migration logic that is configured to identify segments of memory that are each accessed above a threshold number of times over a given time period and that is configured to migrate segments of each memory so identified to a memory of the switching device.

The Applicant distinguished the secondary reference by arguing that Schonias did not teach tracking memory access "over a threshold number with regard to a given time period." (Emphasis in original.)

The Examiner maintained the rejection, explaining that the claim language "does not require that the threshold must be met within a specific time period instead it just requires that the threshold is met over some time period, which of course is true." (Emphasis added.)

In response, the Applicant amended again as follows:

migration logic that is configured to identify segments of memory that each accessed above a threshold, said threshold defining both a number of times a segment is accessed over and a given time period for the number of times, and that is configured to migrate segments of each memory so identified to a memory of the switching device"

The Applicant again argued that Schonias tracked page accesses that exceed a threshold, but without regard to a time period.

The Examiner maintained the rejection and took the Applicant final. According to the Examiner, the claim "merely states that 'a time period' is defined by the threshold" but not "how the time is defined by the threshold or what variable the time is defined with respect to, or that the time can't vary." The Examiner then explained that in Schonias, "the time period is defined by how long is takes to reach the count threshold of the counter, therefore the threshold being reached defines the amount of time it took to reach it."

The Applicant appealed and argued that the Examiner's claim construction was erroneous:

The Examiner apparently takes the position that because it will take some finite period of time for the counter threshold in Schoinas to eventually be reached, that the count threshold reaches does define an amount of time. However, the claim requires the migration logic to implement a threshold which defines both the number of times and the time period. Schoinas' counter threshold only defines a number of accesses, not a corresponding time period. The Examiner's reading of the claim is disingenuous and counter to what one ordinary skill in the art would understand upon reading Appellant's disclosure.

In the Answer, the Examiner first noted that the claim does not require a predefined time period, since neither the claims nor the specification provided "any specific explanation as to how the time period of these claims are defined." The Examiner then explained that the broadest reasonable interpretation covered a time period defined in terms of a number of memory accesses – which does read on a time period, even if that period is not predefined. Applying this to Schoinas, "when the threshold is reached the amount of time it took to reach it is also defined."

The Applicant filed a Reply Brief and again distinguished the claim from Schoinas:

In Schoinas, it will not matter whether it took 5 minutes or 5 hours to reach the terminal count for accessing a given memory area. In claim 1, it will matter. In Schoinas, a memory area that is accessed, say, 50 times is migrated even if it took a week to be accessed that number of times. The number of accesses alone is not enough for claim 1; the corresponding time period is also considered.

The Board reversed the rejection. The Board framed the dispositive issue as whether Schoinas' threshold defines a time period that is associated with the number of times a memory segment is accessed. The Board found that the Examiner had acknowledged that Schoinas' threshold did not explicitly define the time period. The Board further found that the Examiner relied on a defined time period that was "implicit in the length of time take to reach the specific count threshold." The Board found this reading of Schoinas was unreasonable in light of the specification:

     To be sure, counting discrete events, such as memory accesses, to determine whether those events reach a predetermined threshold amount will inevitably involve a period of time to count those events. But that hardly means that this inexorable passage of time is accounted for in this determination. It is simply the time elapsed during the counting process – a period of time that Schoinas does not measure, let alone account for as a factor for migration.
     By specifically defining both a count and a time period, the claimed threshold sets particular limits on the rate at which counts occur (i.e. their frequency) – a key temporal restriction that Schoinas simply does not contemplate.

My two cents: The Board recognized the Examiner's flawed logic, which boils down to what I call a "mere existence" analysis. The Examiner took a teaching of the existence of X (here, a time period) and asserted that the mere existence of X satisfied the claim limitation. Here, the claim as properly interpreted required not simply the existence of a time period during which memory was accessed, but also an action – identifying a segment – based on this property.

Feature that "would be understood" from the disclosure not enough for 112 First (Ex parte Kaye)

Takeaway: The BPAI upheld a written description rejection based on the Applicant's arguments that the claimed element would be obvious to a POSITA reading the disclosure and that a POSITA would understand that the pages should and would be secured to the front and back cover as claimed. In arguing written description, stay away from what a POSITA "should understand" and what is "obvious," and focus on what the disclosure actually teaches to a POSITA.

Ex parte Kaye
(Appeal 2000-006050, Appl. No. 10/459,764, Tech. Center 3700)
Decided January 13, 2010
Rehearing May 19, 2010

The claim on appeal was directed to an "interactive storybook." The claimed book included a binder interconnecting the front and back covers, and pages of an exposed story. The claims also required the binder to secure the pages to the front and back covers.

These claim limitations were added during prosecution, along with a corresponding amendment to the specification. The Examiner rejected the amended claim under § 112 1st, written description. The Examiner found that the originally filed spec/drawings showed an element connecting the front and back cover, but this same element did not secure the pages to the cover. Instead, the pages were stacked upon the element.

Having no literal support in the spec for the claim limitation, the Applicant tried to argue implicit support:

Here the original specifications, in addition to the drawings, disclosed by text enough to convey to a person skilled in the art that the pages were secure ... Read together, a person skilled in the art would surely understand that "pages'' in a "storybook" disposed between the book covers were secured to the covers. Likewise, a person skilled in the art would understand that "a story part in a traditional location" of a "storybook" would mean the pages secured to the book's covers. In short, a person skilled in the art - or any person with a passing familiarity with books, for that matter - would assume that the pages of a book are attached the covers.
...
Perhaps the Examiner is suggesting that the additions are new matter because the originally-filed specifications did not show "any way" that the pages were secured. But, in fact, as discussed in detail in Section 2.2.2, below, the original drawings and specification did adequately show how such pages were secured. Alternately, the Examiner may be indicating that the fact that the pages are secured was not disclosed in the originally-filed specification and drawings. However, it would be obvious to one skilled in the art from reading the originally-filed specifications and drawings that the pages should and would be secured to the front and back cover. 

The Board pounced upon the "it would be obvious" language, and noted that this is not the proper standard:

"It is not enough to satisfy the written description requirement that the claimed subject matter would have been obvious to a person of ordinary skill in view of the written description. See ICU Medical, Inc. 558 F.3d at 1377; see also Regents of the Univ. of Cal., 119 F.3d at 1566–67."

The Applicant asked for a rehearing, arguing that the Board had misapprehended the "it would be obvious" argument:

Appellant was not contending that the securing of the pages by a binder would be obvious to one skilled in the art in light of the originally-filed specifications, or that the specifications rendered the page binding "obvious" under a 35 USC 103 analysis. Rather, it would be "obvious" to a person skilled in the art that the securing of the pages by a binder was in fact disclosed by the originally-filed specification.

In the Decision on Rehearing, the Board upheld the rejection, this time focusing on the "would and should" language of the original argument:

Looking to the purportedly misapprehended statement, Appellant is arguing that a person of ordinary skill in the art would understand that “the pages should and would be secured to the front and back cover,” as contrasted to arguing that a person of ordinary skill in the art would understand from Appellant’s Specification that the pages are secured to the front and back cover. Appellant’s argument fairly implies that the written description requirement does not require actual disclosure, but rather may be met by the perception of a person of ordinary skill in the art of what the disclosure “should and would” include.

My two cents: Maybe the Applicant was reading too much into the spec and would have lost anyway. But it seems that the Applicant gave the Board something to find fault with by couching the argument in terms of obviousness and using the modal verb "would."

Related posts: The reasoning used by the Board to uphold a written description rejection reminds me of that used in Ex parte Abdel-Hafez, where the Applicant said the claim element was "implied" by the disclosure.

BPAI cases on silence in a reference

Takeaway: Case law from the BPAI suggests that when a POSITA could draw one of two different inferences from the implicit teachings of a reference, but not enough information is present to determine which one, then this is not enough for anticipation. However, case law also suggests that when the number of inferences a POSITA could draw from the implicit teachings is relatively small, the feature may still be obvious.

Details: There seems to be something about negative limitations that leads to a rejection even when the reference is silent. In Ex parte Mallis, the negative limitation at issue was "wherein is a torque is applied such that plastic deformation of the positive stop torque shoulder does not occur upon final makeup." The Applicant argued that the reference was silent about deformation, but did teach bending of the shoulder, and that a POSITA would understand this bending to include plastic deformation, which was prohibited by the claim. The Examiner conceded that the reference was silent as to plastic deformation, but argued that the Applicant's inference that the reference taught the opposite of the claim was wrong. The Examiner said a POSITA would not conclude that plastic deformation would occur. The Board characterized both assertions as speculative, and found no anticipation: "If Klementich lacks adequate disclosure to determine whether plastic deformation occurs, then it also lacks adequate disclosure to determine that plastic deformation is avoided."

Ex parte Bar-Sadeh involved a claim with a negative limitation: "A diaphragm comprising: a sheet of material formed on a substrate having a hole, the sheet of material covering the hole and including one or more corrugations that are substantially free of defects." The Applicant's position on appeal was simple: the references did not discuss defects, and so did not teach "free of defects." The Examiner's Answer agreed that the reference was silent about defects, then explained why features taught in the reference would "further contribute to corrugations having substantially no defects." The Board said the proper inference to draw from the reference's silence was no defects (as claimed), because the reference was an issued patent with a presumption of operability. Given this legal presumption, case law shifts the burden to the Applicant to show that the corrugations in the reference were defective. [Comment: I think the Board confused operable with defect-free. Surely the diaphragm in the reference could have defects and still operate.]

Several cases show that you can lose on obviousness even when the Board agrees that the silence in the reference would defeat anticipation. Ex parte Bett related to a method of controlling a manufacturing line, and the limitation at issue was storing a digitized image of workpieces in permanent memory. The Board agreed that the reference was silent as to the memory being permanent, but found the claim was obvious since "artisans would have known about permanent as well as volatile memories and the choice of one over the other is dictated by many well known factors."

The Board used similar reasoning in Ex parte Choo. The claim was very concise: "An Internet Key Exchange method, comprising performing an IDE Main Mode in hardware in parallel with system software loading." According to the Examiner, every computer has system software that runs at power up, and because the reference taught that key negotiation occurs at power up, that reference also implicitly taught that key negotiation was performed "in parallel with the system software loading" (as claimed). The Applicant argued that the reference was silent about the timing of the session key negotiation, and that the Examiner had "leapt to a conclusion that was unsupported by the reference." The Board agreed that the reference was silent as to whether the negotiation and the system software load occurred sequentially or concurrently. However, the Board found that it would be obvious to try both options.

In another case involving a negative limitation, the Board not only agreed the limitation wasn't taught, but also found the claim not obvious. The claim in Ex parte Gragg involved coordinating access to a storage device through an "uncoordinating communication protocol," negative because the Applicant argued this meant "protocols that do not provide notice of access to other protocols or devices." The Examiner's position was that the primary reference taught clients with different protocols, and that these clients could complete for access without notifying other clients. The Applicant's position is that different doesn't mean uncoordinating, and these protocols could be coordinating protocols.

As a preliminary matter, the Board found that the reference was silent about whether protocols coordinated or not. Notably, the Board specifically rejected the idea that the silence in the reference taught the limitation "by negative implication. The Board's obviousness analysis was interesting. The Board noted that if the issue was viewed as a choice between two protocols (coordinating and uncoordinating), the claim was obvious under KSR's "finite choices" rationale, assuming there was a design need or market pressure to solve the problem. But the Board framed the issue differently:

[T]here may be other types of protocols that could include attributes of both coordinating and uncoordinating protocols. As such, we cannot say that there would be a finite number of identified, predictable solutions, let alone that it would have been obvious to try them to arrive at the claimed invention.

Related posts: I first discussed this topic in a post about Ex parte Grath, a case in which I strongly disagreed with the inference that the Board drew from silence in a reference. I followed up on the topic in this post, in which I discussed two Federal Circuit cases that seem to be the most relevant to silence in a reference. Note that one of those cases (Upsher-Smith Labs., Inc. v. Pamlab) discusses multiple inferences. But in Upsher-Smith, the POSITA had enough information to infer that both options are taught, as opposed to not having enough info to know which inference to draw.

Silence in a reference can sometimes be anticipation

Takeaway: Can a reference that is silent about a limitation can nonetheless anticipate the limitation? It is possible. It depends on how the reference would be understood by a POSITA, and specifically, what inferences a POSITA would draw from the silence. This usually comes up in the context of a negative claim limitation, e.g., a reaction occurring "without application of heat." The mere fact that the reference is silent about the application of heat, or even silent about temperature, is not enough. However, if a POSITA reading in between the lines understands the reference as a whole to describe a reaction at room temperature, then the reference does indeed anticipate "without application of heat."

Details: In the general topic of anticipation by silence in a reference, there are two lines of cases. One deals with inherency, and the other with implicit teachings. For purposes of this post, I'm not interested in inherency. Once you realize that the Examiner's position on the silent reference is based on inherency, you can deal with that by applying inherency case law.

I'm interested instead in cases where the reference is silent as far as an explicit teaching goes, but where the real issue is the implicit teachings. Several Federal Circuit cases that discuss "silence" in a reference boil down to the same general principle: whether a reference that is silent on a point nonetheless anticipates depends on how the reference would be understood by a POSITA, and specifically, what inferences a POSITA would draw from the silence.

One case that is often cited in discussions about silence in a reference is Upsher-Smith Labs., Inc. v. Pamlab, 412 F.3d 1319, 1322 (Fed.Cir.2005). Upsher-Smith holds that a teaching that a step is optional anticipates a claim that specifically excludes the step. The way I see it, the reference in Upsher-Smith is best understood as teaching two embodiments: one that includes the step; and one that excludes the step. Far from being completely silent on the claimed limitation, the reference in Upsher-Smith comes close to an explicit teaching of the claimed element.

The Federal Circuit case that I think best explains how silence in a reference can nonetheless anticipate is In re Baxter Travenol Labs, 952 F.2d 388 (Fed. Cir.1991). In Baxter Travenol, there was no express teaching of the claimed limitation, but the court found that a POSITA would have nonetheless understood the reference as implicitly teaching the limitation. The claim in Baxter Travenol recited two bags for collecting and storing blood, each bag made of a different specific material. Instead of specifically stating the material for the donor bag, the reference instead described the bags as compared to existing technology. A POSITA could draw an inference about the material of the donor bag from this comparison:

In describing its blood bag system, the Becker document makes two references to then-available commercial blood bag systems. The most significant reference is on page 49, where Becker describes his double blood pack system design as "very similar to [Baxter] Travenol's commercial, two bag blood container. The exception is that the secondary transfer pack was a 350 ml Teflon container...." ...

Testimony ... established that Baxter's commercial systems during this time period all contained a primary bag plasticized with DEHP. Therefore, since Becker referred to Baxter's commercial system and Baxter's commercial systems utilized a DEHP-plasticized primary bag, it is clear that one skilled in the art would have known that Becker was referring to a DEHP-plasticized primary bag. That fact, coupled with Becker's disclosure that the second bag was made of Teflon®, leads to the unmistakable conclusion that the claims at issue were anticipated.

In a district court case on this topic, the court cited Upsher-Smith and In re Baxter Travenol and then found that the reference, though silent, implicitly disclosed the claimed limitation.

Innovatit also argues that it limits its process by requiring that it be conducted "without application of heat," a claim limitation absent from JP '156. ... Here, there is no indication that JP '156 contemplates the addition of heat, and indeed, when the inventor of the Innovatit process himself tried to recreate the results of the process taught in the Japanese reference, he performed his trial at ambient temperature. The Board thus concluded that one skilled in the art would have understood the process in JP '156 to have been carried out at ambient-temperature, and there is substantial evidence to support that factual finding. The negative, ambient-temperature limitation of the Innovatit application thus cannot create patentable novelty.
Innovatit Seafood Systems, LLC v. Commissioner For Patents, 573 F.Supp.2d 96
(D.D.C. Aug 29, 2008) (NO. CIV.A.06-0822 JR, CIV.A.06-0825 JR)

These implicit disclosure cases shows that, in some fact situations, a POSITA would draw an inference that a claimed limitation is disclosed, despite that the fact that the reference is silent about the limitation. However, these cases also show that the explicit teachings must be such that the POSITA can draw inferences to fill in the gap and thus get to the missing limitation.

Related Posts: In a future post, I'll discuss some BPAI cases dealing with silence in a reference. I commented that Applicants need to deal with implicit teachings of a reference in an earlier post here. And today's post was inspired by comments from an Examiner in response to my earlier post about the BPAI decision Ex parte McGrath. That particular Examiner thought the Board's finding in McGrath – the claim limitation of an instruction executable "without interruption" was taught by a reference that failed to mention interruption – was unexceptionable and was based on commonly known case law. [Despite the lack of a case law cite by the Board.] So I researched the issue to be sure I hadn't missing something important. I'm still convinced that the Board considered the right issue in McGrath (what inference would a POSITA would draw from the lack of a discussion in the reference about interruptibility), but reached the wrong result.

Implicit teachings of a reference

When arguing that a reference doesn't teach, some practitioners focus exclusively on the explicit or literal teachings of the reference, and ignore what a POSITA would understand the reference to teach implicitly. There are some good reasons for doing this — prosecution history estoppel and the danger of mischaracterizing the reference come to mind. But be aware that MPEP 2144.01 states that the Examiner is allowed to use implicit teachings too:

[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.
In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).

Sometimes reading between the lines means simply recognizing that a reference is using a different term than the one that appears in the claim. Other times, it means putting together several explicit teachings to draw an inference. And sometimes it means recognizing that the absence of a teaching is evidence that something wasn't important enough to discuss rather than evidence that it wasn't known.

Here are a few instances where the BPAI affirmed a rejection based on implicit teachings.

Ex parte Nawathe: "While Lee's system specifically discloses loading data for a single XML document into the relational database, it is not necessarily so limited. In other words, the ordinarily skilled artisan would have recognized that loading multiple XML documents in a relational database to be within the purview of the prior art as evidenced by Lee's disclosure that metadata is generally known to describe information about more than one of such documents."

Ex parte Symbol Technologies, Inc.: "All that is required by these claims is that the keys be capable of being individually engaged by the thumb or fingers of the hand holding the housing ... As articulated by the Examiner, the size of Gombrich's pocket terminal is sufficiently small to allow users to hold the pocket terminal in the user's palm and reach the keys with their thumb without pressing other keys. We find that one of ordinary skill in the art reasonably would infer that the keys of Gombrich are capable of being individually engaged by the thumb of the hand holding the housing in view of the specifically disclosed dimensions of the pocket terminal and the teachings in Gombrich that the pocket terminal is 'pocket-sized', 'portable' and allows for 'one handed' operation.”

Ex parte Zybura: "We find that the ordinarily skilled artisan would have readily recognized that Thatcher's disclosure of inconsistencies that arise between the replicas of a namespace due to the propagation delay in the updates teaches or suggests the claimed determination that modification to a namespace results in conflicting information between the replicas. Similarly, we find that Thatcher's disclosure of all the replicas having identical objects at the end of the update teaches the claimed removal of the identified conflict before the update takes place in the second namespace."

Ex parte McCormack: "We find that Jiang's storage of device preferences and service preferences teaches storing the claimed digital identity for a wireless user device. While Jiang does not particularly disclose the user device to be a DTV, it suggests that the WPM would provide seamless access to information without regard to the type of device available to the user. In other words, the ordinarily skilled artisan would readily appreciate that regardless of the type of device available to the user, the WPM's database or repository would still store digital entity or preference data for whatever device that it identifies."

Claims implied by specification not enough for 112 First (Ex parte Abdel-Hafez:)

Ex parte Abdel-Hafez
Decided March 30, 2009
(Appeal 2002-3826; Appl. No. 10/691,696; Tech. Center 2100)

I view this case as a warning to avoid the word "implied" in your arguments against a § 112 rejection. The Applicant argued that a claim element was "implied" by the disclosure, and Board read "implied" as "renders obvious":

... the question of written description support should not be confused with the question of what would have been obvious to the artisan ... Whether Appellant's proffered provisional application support "implies" and thus renders obvious the later claimed "global" limitations is not relevant to the inquiry before us.
(Decision, p. 10.)

I think the Board was confused about written description vs. obviousness, since I do not read the Applicant's argument (a claim element was implied by the disclosure) as an argument that the claim element was obvious in view of the disclosure. Instead, I view the Applicant's argument as a reliance on the implicit teachings of the specification. And there's nothing wrong with that: an Applicant is entitled to rely not only on the explicit teachings of the specification, but also on the implicit teachings, since the specification is viewed not from the standpoint of a layman, but from the standpoint of a person of ordinary skill in the art.

 Although [the applicant] does not have to describe exactly the subject matter claimed, ... the description must clearly allow persons of ordinary skill in the art to recognize that [he or she] invented what is claimed.... The test for sufficiency of support in a parent application is whether the disclosure of the application relied upon reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter. 46 Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed.Cir. 1991).

Okay, sometimes there's a fine line between saying that something not explicitly described in the spec is rendered obvious by the spec, and saying that something not explicitly described is implicitly disclosed. But the line exists, and I don't understand why the Board thought the Applicant crossed this line. After all, the Applicant said the claim element was "implied" by the spec, not that the element was "obvious" in view of the spec.

It's not clear whether the Board relied on this finding alone to uphold the §112 rejection, since the Board went on to indicate that "Appellants have not provided any meaningful analysis explaining how the pertinent portions of the provisional application meet the written description and enablement requirements under §112, first paragraph."(Decision, p. 10.)

It's true that the Applicant here did nothing more than point to two paragraphs of the provisional and make this statement:

While the word "global" is not used, taken with the provisional drawings, these all imply that the scan-enable SE signals and the set-reset enable SR_EN signals are global in nature in that provisional application.
(Brief, p. 11.)

So another takeway from this case could be: if you're relying on implicit rather than explicit disclosure, explain your reasoning. In this particular case, the argument might go something like this:

The provisional application discloses: “[t]he present invention uses A scan enable (SE) and and/or gate to disable the asynchronous set/reset signals of ALL scan cells. A new set/reset enable (SR_EN) signal is introduced to propagate the faults of asynchronous set/reset signals in a dedicated capture cycle.” (Capitalization and italics added for emphasis.) Although the provisional uses the article A rather than the adjective ONE, when used in ordinary English and outside of a claim, “A scan enable” is understood to mean “ONE scan enable.” Thus, the provisional discloses that one scan enable disables set/reset for all scan cells. Since "global" means "of, relating to, or applying to a whole," ONE signal that disables something for ALL scan cells is understood to be a “GLOBAL scan enable signal,” as is recited in claim 83. Thus, the provisional does “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The written description rejection of claim 83 should therefore be overturned.

I won't say that Ex parte Abdel-Hafez holds “using 'implied' in reference to the disclosure is inapplicable to a § 112 argument” — that would go too far. However, I do think this case shows that if you rely on implicit disclosure, you should explain the inferences that a POSITA draws from the disclosure.