Selecting means more than one choice (Ex parte Hemmat)

Ex parte Hemmat
Decided October 13, 2009
(Appeal 2009-003911; Appl. No. 10/429,615; Tech. Center 3600)

I ran across this case when reading the blog Gray on Claims. (I like this blog a lot because it covers BPAI cases in addition to Federal Circuit and District Court.) The subject matter of the application is a business method and several issues were on appeal, including 101/Bilski.  I'm going to discuss only the indefiniteness issue. In particular, I'm going to explore other ways of writing the claim  to avoid indefiniteness.

I've edited the claim to show the portion involved in the indefiniteness issue:

holding a meeting...wherein the meeting results in additions to the concept document identifying at least one proposed approach, ... ;

identifying impacted systems for each proposed approach by ...;

selecting a final selection from the at least one proposed approach with a view of the long-range plans and overall direction of an enterprise rather than to a specific problem.

The Board found that selecting requires more than one choice, and this was inconsistent with the use of "at least one", which allowed for only a single choice.

When I read this, my first thought was: "That's not inconsistent. A POSITA understands that if there's only one choice, the selection degenerates into selecting that one choice".

Give the Board some credit: the indefiniteness holding did not rest on this inconsistency alone. The Board also found that other parts of the claim were inconsistent with selecting the single choice. For further details on that, read the case summary on Gray's blog (here).

What I'm interested in is this: though here the Board did not find selecting-from-what-could-be-a-single-choice to be indefinite per se, I can definitely see an Examiner giving me such a rejection. And I wouldn't be surprised if, in another case, the Board did find indefiniteness for this reason alone.

So I'm wondering if there is a better way to claim this sort of thing, to avoid the specter of indefiniteness completely. The claim in Ex parte Hemmat is complicated, so I'm going to discuss this issue in the context of a much simpler hypo.

Here's the feature I want to claim, in plain English rather than claim language. The method performs a search which comes up with possible candidates, then chooses the best candidate as a match. The spec would explain that when the search results include only one candidate, that one candidate is the best match.

Using the style from Ex parte Hemmat, this translates to:

Approach #1
performing a search that produces at least one candidate;
selecting a best match from the at least one candidate.

But the lesson from Ex parte Hemmat  is that approach #1 is vulnerable to an indefiniteness rejection.

How about this instead?

Approach #2
performing a search that produces a plurality of candidates;
selecting a best match from the plurality of candidates.

I don't like approach #2 because no infringement occurs for those data sets that return only one candidate. While the accused infringer doesn't escape entirely — infringement still occurs whenever data sets return 2+ candidates — this does complicate damages and proof of infringement, doesn't it?

How about this?

Approach #3
performing a search that produces a group of candidates;
selecting a best match from the group of candidates

The idea behind "group" is that it allows for 1 or more without screaming "indefiniteness problem" like "at least one" does. But maybe not. Maybe it's got the same problem: since it allows for the possibility of only one, this conflicts with the verb "selecting."

Then the obvious solution is to get rid of the pesky verb "selecting," which means we can go back to "at least one". How about this:

Approach #4
performing a search that produces at least one candidate;
determining a best match from the at least one candidate.

Since determining doesn't carry the connotation of more-than-one, this one should be safe from the charge of indefiniteness. But determining isn't quite the same as selecting from a group of predetermined choices, and it's possible that you need to express this difference in order to avoid prior art.

Here's my last attempt. Does the following approach allow you to keep the determine-vs-select distinction yet avoid indefiniteness?

Approach #5
performing a search that produces a group of candidates;
determining a best match from the group of candidates by:
    if the group has more than one candidate, selecting the best match from the more than one candidate;
    if the group has exactly one candidate, appointing the exactly one candidate as the best match.

Certainly #5 is clunky, and wouldn't be my first choice. But maybe it's good to have as a backup.

Claiming "only" as modifying an action (Ex parte Webb)

Ex parte Webb
Decided March 21, 2009
(Appeal 2008-3006; Appl. No. 09/905,298; Tech. Center 2100)

The only real issue in Ex parte Webb was claim construction. The word at issue was "only".

I got several things out of this case. One, though patent drafters and prosecutors think a lot about narrow constructions that could lead to avoiding infringement, maybe we don't think enough about broad constructions that the Examiner and/or Board can use to say that claims read on prior art. Two, dictionary definitions often hurt as as much as they help. Three, word position really matters in a claim.

The claims at issue related to a GUI feature: a dialog window that is displayed in one of two states, collapsed and complete (uncollapsed), and the cursor movements that cause the dialog to switch between the two states. Here's what the dialog looks like in the complete (uncollapsed) state:

And here's what the dialog looks like in the collapsed state:

Here is the relevant portion of the claim on appeal — edited and formatted for clarity.

displaying the complete dialog window in response to the cursor moving only from outside of the collapsed version to within the title bar of the collapsed dialog window;

At issue: exactly what cursor movements cause the complete dialog window to be displayed?

According to the Applicant, the cursor must move into the title bar to result in display of the complete dialog window. Thus, "only" operates to exclude: no other cursor movement causes this result.

Under this interpretation, the reference used to reject the claim was distinguishable. The dialog in the reference has an invisible state, where only part of the dialog is visible yet the dialog reacts to cursor movements within the entire extent. Looks something like this, with the dashed lines representing the not-shown-yet-reacts-to-cursor portion:

The reference teaches that moving the cursor anywhere within the existing-but-not-shown portion of the dialog results in the complete dialog being visible.  Since the Applicant's claim construction requires the cursor to move into the title bar, the reference is distinguishable under this construction.

The Board summarily agreed with the Applicant's position, basically repeating the Applicant's argument and reading of the reference. In fact, this isn't an interesting case at all, if you read only the opinion, because the Board didn't explain the Examiner's position.

The Examiner agreed with the Applicant on the teachings of the prior art, but has a different interpretation of the claim limitation discussed above, and specifically, about "only". According to the Examiner, other cursor movements can also result in display of the complete dialog window.

Huh? Doesn't the claim say "the cursor moving only...into the title bar" ??

The Examiner did not interpret "only" as a word of exclusion. As the Examiner read it: the claimed cursor movement results in display of the complete dialog window "without further cursor movement or positioning necessary." The way I see it, the Examiner reads "only" as "merely": the cursor moving "merely" into the title bar causes display of the complete dialog.

Under the Examiner's reading, the reference teaches the limitation at issue. The complete dialog is displayed when the cursor moves to anywhere within the invisible dialog window (including a title bar) and no further cursor movement is necessary to produce the complete dialog.

Once I read the Examiner's argument, I understood his thinking. Though no dictionary definitions were trotted out during the arguments, or by the Board, Merriam-Webster seems to support both positions:

only
1 a : as a single fact or instance and nothing more or different : merely 
1 b : solely, exclusively

Here's where I come down on this: both interpretations were reasonable in the abstract, but "exclusively" is the better choice. Here's the single paragraph in the Applicant's specification that actually describes the behavior:

FIG. 4 illustrates a collapsed version of dialog window 300. As illustrated in FIG. 4, cursor 302 was moved outside of complete dialog window 300 thereby resulting in dialog window 300 collapsing into a smaller area. When cursor 302 is moved back into collapsed dialog window 300, the dialog window 300 will expand once again into the complete version as illustrated in FIG. 3.

No way can you get the Examiner's interpretation of "cursor needs to merely move into the title bar, no further" from that paragraph. The Examiner's broad construction is simply unreasonable in view of the spec. So I think the Board got this one right.

Note that the spec does not say that this behavior is the *only* one that results in the collapsed dialog going back to full size. Yet that's how any ordinary reader would interpret it — after all, that's the only behavior that's described as having that effect. And certainly a patentee that tried to enforce this claim on a dialog that went from collapsed to full size upon some *other* cursor action could expect an invalid-under-written-description argument from the accused. So I think the winning claim construction is supported by the spec, even though the word "only" isn't used.

I'll wrap this up by making my final point, that word position matters.

In the final Office Action before Appeal, the Examiner explained that "placement of 'only' within the phrase is significant to the scope and meaning of the claims". Examiner further states that moving the adjective — so that the claim reads "displaying the complete dialog window only in response to the cursor moving from outside the collapsed window into the title bar" — does require the cursor to move into the title bar in order to collapse the window. [I do think the claim is more clear when phrased this way.]

The Applicant seized on the Examiner's statement, and filed an After-Final amendment to move the word as suggested. But the Examiner refused to enter the amendment after final, since "as indicated in the last Office Action, such an amendment significantly changes the scope of the claim, and therefore a further search is required". Apparently the Applicant was unwilling to file a second RCE to get this amendment in, and chose to appeal instead.

Like I said, I think the Applicant had the better argument. And this time the Board agreed. But I think most practitioners would have filed that RCE instead. The Examiner had all but promised that an RCE with amendment will get over the current art, and I see no reason to worry that a "new search" would have turned up a better reference. After all, it's not like the Examiner was actually limiting the search to references in which a cursor "merely" moved into the title bar, right? On the other hand, perhaps the Applicant was concerned about spending two or three more response cycles on another devious claim interpretation.

Improper to take Official Notice of legal conclusion (Ex parte Yardley)

Ex parte Yardley
Decided July 21, 2009
(Appeal 2009-001146; Appl. No. 10/689,379; Tech. Center 3700)

Ex parte Yardley reminds us that Official Notice is limited to facts, and taking Official Notice OF a legal conclusion is improper.

Some of the claims at issue here were directed to a method of making a paper napkin, and included limitations for dimensions and weight. The Examiner admitted that the reference did not teach ranges of dimensions, nor the weight of the product, but took Official Notice that "it would have been obvious to one of ordinary skill in the art to apply the folding method of [the reference] to various sizes and weights of webs including those of claims 82 and 87." (Decision, pp. 15-16.)

The Board held that Official Notice of obviousness is improper:

[Here] the assertion of official notice is not directed to establishing evidentiary facts, but is rather an attempt to establish the ultimate legal conclusion of obviousness as to the rejected claims. The procedures setting forth the circumstances in which official notice may properly be taken do not recognize any basis for the taking of official notice of a legal conclusion (MPEP § 2144.03), nor do we believe that this would be proper under any circumstances.
(Decision, p. 16.)

The way I understand this, taking Official Notice of a fact is acceptable because a fact is a Premise from which a Conclusion is drawn. Thus, taking Official Notice is a merely a short cut to proving the fact with real evidence — a shortcut that is permissible in limited circumstances. On the other hand, short-cutting the entire analysis by taking Official Notice of the Conclusion itself is not acceptable. 

Based on my own experience, and the BPAI cases I've read, it's pretty hard to traverse an assertion of Official Notice in a way that convinces the Board that you've complied with the law (see MPEP 2144.03(c), for starters). But if you ever see the Examiner taking Official Notice of a legal conclusion, argue that the MPEP § 2144.03 does not provide for this.

Obviousness is probably the strongest form of an "ultimate legal conclusion". But I think other aspects of obviousness analysis could be described as legal conclusions.

For example, I think you could traverse the following statement on the same grounds: "Official Notice is taken that it would be an obvious design choice to use an LCD display instead of a CRT display".

Or even this one: "Official Notice is taken that it's merely a matter of design choice to use an LCD display instead of a CRT display".

New Patent Blog: Gray on Claims

I've discovered a relatively new patent blog which I've added to my list of favorites: Gray on Claims. It's a blog about claim construction case law, authored by an IP Litigation Attorney at Foley & Lardner. Though the initially blog focused on Federal Circuit decisions, more recent posts have included BPAI decisions.

Non-Patent Prior Art: Web Pages

Recently I posted (here) about the use of software screen shots of as prior art, under the "known or used by others" prong of 102(a). Web pages are another kind of prior art which I see a lot. Pages from a website are considered publications and thus also available under 102(b). What sort of evidence of a publication date is an Examiner required to provide for a web page?

In most of the cases I've seen involving a web page as prior art, the Examiner used an Internet archive website (such as www.archive.org) to obtain evidence of the publication date. An archive site works as follows: type in a website URL, and the archive provides a list of dates for which past pages from that site are available; choose a date, and the archive serves up the website as it existed on that particular date; thus, you can browse to a copy of a particular page as it appeared on the website in the past.

The MPEP does not mention Internet archives, but does state that the critical date is "the date the item was publicly posted:"

Prior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted. Absent evidence of the date that the disclosure was publicly posted, if the publication itself does not include a publication date (or retrieval date), it cannot be relied upon as prior art under 35 U.S.C. 102(a) or (b). 
(MPEP 2128.)

The BPAI appears to approve of the use of archived web pages as evidence of an electronic publication date. I found two decisions in which the Board found an archive date to be sufficient evidence, and I found no decisions to the contrary.

In Ex parte Shaouy, the Examiner indicated that the web page was available in "internet archive 'wayback machine' " and provided a copy of the web page as retrieved from the archive. The copy contained the following URL at the top of the page: "http://web.archive.org/web/20001209085500/http://www.forecastpro.com/". The Board noted that the numbers encoded in this URL correspond to the date the Examiner used as a publication date (December 9, 2000). The Board found that the Examiner's reference to "internet archive 'wayback machine' " in the Advisory Action, in combination with the date stamp encoded in the URL, was sufficient evidence of a publication date. 

Ex parte Molander contained a similar fact pattern. The Examiner referred to the archive site and the archive date in the rejection. The print out of the archived web page included the URL of the archive site, and that URL encoded the date relied on by the Examiner. The Board once again found that this was sufficient evidence of a publication date for the web page.

So if the rejection isn't very clear about the date relied on for a web page reference, it's probably a good idea to look at the print out of the archived web page, and to check the encoded archive date for yourself.

Non-Patent Prior Art: Screen Shots of Software

I prosecute a lot of software patent applications, and it's not uncommon in my cases for Examiners to use a screen shot of software as prior art. A screen shot isn't a publication, but it is evidence of "known or used by others" under 102(a).

Software typically has a copyright notice with a date, so it's not surprising that an Examiner might rely on that copyright date as the date of public use. But a given version of software has a range of copyright dates. Which date(s) can the Examiner use?

The BPAI discussed this issue in Ex Parte Martinez. The application in that case had a filing date in 2001, and the Examiner presented screen shots of Microsoft Word 2000. One of these screen shots include a copyright message "© 1983-1999". The Board ruled that this copyright notice "provides prima facie evidence that the features of [Microsoft Word] were at least known in the United States in 1999." (Decision, p. 7.)

Note that the Board used the latest date in the copyright range, and not the earliest. Though the Board didn't make this point explicit, it's important. The earliest copyright date tells us nothing, since a copyright date range provides no information  about which particular features of the software were present in which version/at which date.

So if an Examiner uses a screen shot as a reference, the first thing to check is that he/she is relying on the latest date in the copyright range. But you may want to dig further, because sometimes software is released without updating the copyright date. For example, it's common for intermediate releases of software to be updated via a download, and that update doesn't necessarily include a revision of the copyright string. In that case, it's possible that the feature relied upon by the Examiner was added (via the update) after the latest copyright date.

If you have reason to believe that an update was applied after the latest copyright date, does the burden shift back to the Examiner to provide evidence that the feature was present before the update? Another BPAI decision, Ex parte Chen, appears to say Yes.

In Ex parte Chen, the software at issue was Microsoft Word, and instead of deciding on the merits the Board remanded the application to the Examiner to find corroborating evidence of the relevant date of the Word feature at issue. 

We note that the figure 1 includes both copyright information and an indication of what “Service Pack” was present on the computer at the time of the screen shots. While difficult to read it appears that SP-3 (Service Pack 3) was in use at the time of the recordation of the screen shot. From our brief Internet search, Service Pack 1a (SR1a) was available on or about May 12, 2000, Service Pack 2 (SP-2) was available on or about November 14, 2000, and Service Pack 3 (SP-3) was available on or about October 21, 2002. Therefore, if the functionality was not added by Service Pack 3, then the date of the reference should make Microsoft Word 2000 prior art, and if Service Pack 3 added the disputed functionality described/shown, then the date is after the critical date in the instant application and is not prior art.
(Decision, p. 1.)

The Board appeared to say that because the version information indicated that an update had occurred, the burden shifts back to the Examiner. This position is consistent with the idea that a copyright date is prima facie evidence.

What if the screen shot did not indicate that an update had been applied? Could the Applicant still shift the burden back to the Examiner by simply providing evidence that updates were available for that software?

This appears to be the Appellant's position in this case, since the Appellant never mentioned the presence of the Service Pack 3 string in the screen shot. Instead, the Appellant basically argued that online updates to software are common, that the Examiner had not "fully documented the history" of the software relied on, and that the the Examiner bore the burden of establishing that a reference is prior art. (Reply Brief, pp. 15-16.)

The Board didn't comment on the Appellant's arguments, so we don't know the minimum showing required to shift the burden back to the Examiner for better evidence of a "known or used" date. Therefore, it's probably best to do a little digging on your own and see if you can find evidence that an update was applied after the copyright date. For example, the About box in my Mozilla Firefox® browser includes a version number, and the Mozilla® website has a list of all versions and their release dates.