BPAI says magazine article "The Future of TV" is an enabling reference

Takeaway: The Examiner used a magazine article "The Future of TV" as a secondary reference in an obviousness rejection. The Applicant argued that the reference was not enabling, and pointed to statements in the reference explicitly stating that not all of the described features existed at the time of publication. The Board reversed the obviousness rejection after finding that the combination did not teach all the elements, but also found that the reference was enabling because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." (Ex parte Karaoguz, BPAI 2011.)

Details:
Ex parte Karaoguz
Appeal 2010004430; Appl. No. 10/667,036; Tech. Center 3600
May 9, 2011

The claims on appeal were directed to delivering media content.

The Examiner rejected all claims as obvious over a patent publication (Schein) and a magazine article ("The Future of TV"). The Examiner took the position that Schein taught every claim element except one, then relied on The Future of TV for the element "customizing content or wherein the at least one user defined media channel is pushed from the first home to other authorized users at locations that are separate and distinct from first home."

The Applicant appealed the rejection. In the Brief, the Applicant first argued that the combination did not teach creating user defined media channels which were pushed from one home to another. The Applicant also argued that "The Future of TV" was not an enabling reference, as it described a potential system rather than a system in existence at the time the article published.

To support this argument, the Applicant pointed to explicit statements in the article that "the future of television is just around the corner," "the pieces just have to be improved and linked together in the right way," and "connecting the chain will be no small feat" – admissions that the features did not exist at the time of publication. Moreover, the Applicant noted, the article specifically points out the deficiencies in existing systems:

What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers. ... We still won't have custom TV until companies find the best model for integrating digital content, distribution and the platform.

The Examiner's Answer contained this response to the Applicant's arguments:

Future TV teaches a detailed plan to customize television and push user defined channels. Future TV further states that this is the direction that television is moving since 1999 and discusses the ways in which companies may go about customizing access. The Appellant further argues that Future TV is forward looking and does not describe the technology as it existed at the time the article was written. In response, the Appellant's assertion is a conclusion, and there is no support on record to the contrary.

In a Reply Brief, the Applicant explained that rather than being conclusory, the assertion was explicitly supported by the reference itself. In contrast, "[t]he Examiner's Answer provides absolutely no evidence that the public was in possession of the 'future' technology discussed in The Future of TV at the time that reference was published."

The Board reversed the rejection, based on the finding that neither reference taught the feature of pushing a user created channel. "As the Appellants argue, Schein generally creates a channel selection database for controlling the selection of existing channels rather than creating and pushing a new channel."

The Board also commented about Applicant's argument about the lack of enablement in "The Future of TV." The Board said the argument was not persuasive because "Future TV explicitly states that the technology it describes was already in the possession of those of ordinary skill." This in turn was based on an underlying finding of fact made by the Board: "The technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill. Future TV 35."

My two cents: The Board completely mischaracterized the teachings of The Future of TV, and Finding of Fact #6 about Future TV is way off base! What the reference actually says about "existing technology" is this:

Much of the broadcast, reception and display technology needed to let you see whatever show you want, whenever you want, on whatever screen you want, exists. The pieces just have to be improved and linked together in the right way. Connecting the chain will be no small feat. ... What's missing is a commercial platform - a box in your home containing electronics and software that will let you receive the digital entertainment, interact with it and display it on any screen. Your TV, even a digital one, isn't powerful enough, and neither are the set-top converter boxes that receive signals from cable or satellite providers.

Because the article says that some of the technology exists, that means some of it doesn't. And I read the statement that "the pieces need to be improved" to really mean that the system won't work until the pieces are modified.

Given the above, how can you possibly say that "the technology to implement Future TV existed at the time of publication, and so was known to those of ordinary skill" ? Now, I'll admit that it's possible that a POSITA, at the time of invention, could have taken these few general statements which vaguely refer to existing features and modify them to produce the claimed feature. That is, it's possible the claimed feature was obvious in view of these teachings. But no such evidence was introduced! So there's no way the Board had enough evidence in the record to reach the conclusion that the reference enabled the claimed feature.

This is the most egregiously unsupported finding of fact that I've seen in a while.

Appellant loses argument that anticipatory reference is not enabling (Ex parte Given Image Ltd.)

Takeaway: In the reexamination appeal Ex parte Given Imaging Ltd., the Applicant argued that a reference with a short description and one figure wasn't enabling and thus wasn't anticipatory. Despite the presence of declaration evidence, the BPAI affirmed the anticipation rejection, finding that the reference was enabling for what the Applicant actually claimed. So if your claim is high-level, without a lot of detail, don't be surprised when the reference used against you is also high-level, or when your "reference isn't enabling" argument isn't found persuasive.

Details:
Ex parte Given Imaging Ltd.
Appeal 200900064, Reexam Control No. 90/006,898, Patent No. 5,604,531

This was an appeal during reexamination of a medical imaging patent. Claim 1 recited:

1. An in vivo video camera system comprising:
a swallowable capsule comprising:
a camera system;
an optical system for imaging an area of interest onto said camera system; and
a reception system which receives said transmitted video output.

Claim 11 recited a different preamble – "autonomous video endoscope" – but was otherwise the same with respect to the issues discussed here.

The Examiner issued two different anticipation rejections, using Yamazaki and Saito.  The Applicant submitted declaration evidence to show neither reference was enabling, and thus could not anticipate.

The Applicant used the declarations to argue that Yamazaki disclosed a lens and a light source inside a gastric capsule, but did not enable "a functioning optical system," for various technical reasons explained in the declaration.The Applicant characterized Yamazaki's sparse description and single figure as "nothing more than an abstract idea."

With respect to Saito, the Applicant used the declarations to argue that while the application purported to disclose an endoscope, the disclosed device would not function properly as an endoscope, for various technical reasons explained in the declaration.

The declaration further stated that because of those technical deficiencies, neither reference "could have provided desired medical images without extensive redesign." Therefore, the Applicant argued, the references did not anticipate. "[I]nvalidity based on anticipation requires that the assertedly anticipating disclosure enabled the subject matter of the reference and thus of the patented invention without undue experimentation." Elan Pharms. v. Mayo Found. For Med. Educ. Research, 346 F.3d 1051 (Fed. Cir. 2003). 

The Examiner's Answer reiterated that both Yamazaki and Saito disclosed each element of independent claims 1 and 11. With respect to the alleged lack of enablement, the Examiner maintained that the references did disclose a functioning optical system because they did produce images of some kind. While acknowledging that the "systems may not produce the desired medical images," the Examiner noted that arguments about "desired medical images" were outside the scope of the claims, which did not refer to image quality.

The Board affirmed both anticipation rejections, finding that both references disclosed each claim element. In doing so, the Board found that both references were enabling for what the Applicant actually claimed.

With respect to claim 1, the Board interpreted an “in vivo video camera system” as "a system capable of taking video pictures inside a body." The Applicant acknowledged in oral arguments that the systems disclosed in the references could produce some type of image. Therefore, the Board found that the references were enabling for claim 1. The Board said the Applicant's argument that the disclosed systems were not capable of producing images suitable for medical diagnosis was irrelevant, since the claim specified neither the type of image nor a particular image quality.

Where claim 1 recited "an in vivo video camera system," claim 11 recited instead an "autonomous video endoscope." The Applicant argued that the term "endoscope" implied and necessitated something capable of providing diagnostic images. The Board disagreed, finding that "Appellant’s Specification provides no such definition of an endoscope and uses the term to describe various types of devices." The Board interpreted "an autonomous video endoscope” to be "an independent capsule that captures in-body images." Using the same analysis applied to claim 1, the Board then found the disclosed systems were enabling for claim 11.

My two cents: The Applicant did one thing right here: submitted evidence to show the references weren't enabled. "Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes ... inoperability of the prior art ..." (MPEP 716.01(c).)

That couldn't make up for the fatal mistake committed by the Applicant here: arguing outside of the claims. Or, as the Board often puts it, "Applicant's arguments are not commensurate with the scope of the claims." Another way of looking at this decision is that it turned on claim construction: the Applicant interpreted "in vivo video camera system" and "endoscopic system" as producing images suitable for medical diagnosis; the Board said that interpretation was too narrow.

The Applicant also made an interesting argument about the presumption that a reference is operable – interesting, but unsuccessful. The Applicant acknowledged that issued patents are entitled to the presumption of operability, but argued that unexamined patent applications are not. The Board held that since the filing of a patent application is considered constructive reduction to practice, the presumption still applies. The concurrence in this opinion went much further, holding that any type of reference – including a newspaper article – should be presumed operable.