Ex parte Tanaka on appeal at the Federal Circuit

Recently I posted (here) about Ex parte Tanaka, the precedential BPAI decision that held that reissue is not proper for adding dependent claims when issued claims remain in the application, since merely adding new dependents is not a "defect" that is curable by reissue.
  
According to this post at RFCExpress, Ex parte Tanaka is being appealed to the Federal Circuit.

Claim to "circuitry" covers software implementation of same function

Takeaway: Kernius v. International Electronics, Inc., 2007 WL 1040571 (D.Md., 2007), which is a claim construction opinion, found that a claim to "circuitry" performing a specific function did cover a software implementation of the same function, because the specification clearly stated that this function was performed by a programmed microcontroller. Under these facts, the Court found that the patentees had acted as their own lexicographer to redefine the ordinary meaning of "circuitry."

More Details: The patent in suit was U.S. 6,628,771. Several independent claims included the following element: "circuitry to recognize a first signal with a duty cycle or cadence coupled with frequency and level indication of a call waiting SAS signal." During claim construction, the parties focused on whether or not "circuitry" included " 'software based implementations', e.g., programmable microcontrollers."

After examining two Federal Circuit decisions which involved the term "circuitry" (Linear Tech. and Abacus Software), the Court found that neither addressed this precise issue. The Court decided that even if "circuitry" wouldn't usually be understood by a POSITA to cover software based implementations, it was in this case. Here, the specification clearly described the function of the claimed "circuitry to recognize" as being performed by a microcontroller, and more specifically by a programmed microcontroller.

[T]he principal function of [microcontroller 412] is to receive call progress signals, specifically for the preferred embodiment of the present invention, it is the call progress signal (SAS) alerting signals for CW and DCW.
[T]he microcontroller 412 is programmed with timing algorithms, which provide the flexibility for recognition of CW and a plurality of DCW signals.

The Court also noted that interpreting circuitry so as to exclude a microcontroller would exclude the preferred embodiment. A claim construction which excludes the preferred embodiment requires evidentiary support (Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)), and there was no such evidence presented here.

In summary, the Court found that the patentees had, through the written description and prosecution history, redefined "circuitry" to cover a microprocessor or microcontroller programmed to perform the claimed function.

My two cents: A mere footnote in the decision also noted that the spec contained broad language suggesting that "circuitry" covered software implementations: “[W]hile the disclosed embodiments of the present invention utilize programmed processors, and special-purpose integrated circuits, and digital processors these devices can be implemented using discrete devices, or any analog or hybrid counterpart of any of these devices." Since the Court put this in a footnote, and focused mostly on the other stuff mentioned above, I'm not sure that this broad language alone would be enough to move software into the area of coverage.

Presumably the patent drafter was focused on covering a software implementation, since the only embodiment described in detail was a software implementation. If so, calling it "circuitry" is a really odd way to go about it. By doing so, the patentee virtually guaranteed a fight with any defendant that used software to implement the function – which is exactly what happened here. Why not write a claim that more clearly covers the preferred embodiment?

On the other hand, maybe the patent drafter found a really clever way to cover both a hardware implementation and a software implementation with a single element. You might think means-plus-function is the perfect technique to do just do this, but it's not. Invoking § 112 ¶ 6 in the software realm heightens the disclosure requirement considerably. Imagine that instead of simply saying something like "suitable structures for fastening include a screw, a rivet, and a bolt," you had to explain in some detail how each of these items worked in order to claim "means for fastening." That's what the Federal Circuit requires when the structure performing the function is a processor: disclosure of a specific algorithm for each claimed function. (See Aristrocrat v. IGT.)

The patentee won an important victory at claim construction, since the accused infringer's device did use software. But you'll see in a future post that the patentee lost the war on infringement.

BPAI determines that reference's X teaches claimed "pseudo-X" (Ex parte Martinez)

Takeaway: In Ex parte Martinez, the Board agreed with the Examiner that generating a "nonmaskable interupt" was anticipated by the reference's generating a "nonmaskable pseudo interrupt." The Appellant argued that a "pseudo interrupt" was not the same as an actual interrupt, since "pseudo" means "fake". But the Board said that since the reference's "pseudo interrupt" caused the processor to operate in the same manner as an actual interrupt, it was irrelevant that the reference referred to the interrupt as "pseudo".

More Details:
Ex parte Martinez
(Appeal 2009-002619, Appl. No. 10/781,477, Tech. Center 2100)
Decided: February 22, 2010

The independent claim at issue was directed to a method of reporting computer reboots, and the feature at issue was "generating at least one non-maskable interrupt signal." The Examiner took the position that the feature was taught by this sentence in the reference: "Test equipment is connected to the processor-to-bus bridge through a three pin serial port, the test equipment able to set a bit in the critical interrupt register for requesting the nonmaskable pseudo-interrupt." (Emphasis added.) In the Appeal Brief, the Appellant argued that the rejection was improper because the reference "unequivocally states that nonmaskable interrupts are not used." The Appellant then referred to a dictionary definition of "pseudo" to show that the meaning was "false or counterfeit; fake." Though the Appellant didn't make the argument explicit, I think the implicit argument was this: "a fake X isn't the same as an X."

How did the Examiner get around this "fake interrupt isn't the same as an interrupt" reasoning? In short, by showing that the pseudo NMI in the reference operated exactly the same as a POSITA understood an actual NMI to operate. Namely, that the pseudo NMI transferred control to an interrupt routine and could not be disabled (masked) by the processor's interrupt disable instruction.

The Board summarily adopted the Examiner's reasoning:

We agree with the Examiner that "[t]he fact that Murthy called these non-maskable interrupts non maskable pseudo interrupt[s] is irrelevant . . . because an interrupt when implemented is an interrupt whether it is called pseudo or something else." (Answer 16.) "In other words, a result of implementing interrupts or pseudo interrupts within a processor is the same. The result is to call an exception, and execute an exception routine . . . ."(Id.)

I actually agree wholeheartedly with the Board's decision. [Disclaimer: I happen to know a lot about this particular area of technology, because I used to be a software developer and have a lot of experience with interrupts. It's possible that this colors my thinking here.]

The way I see it, "nonmaskable interrupt" could be understood in two ways. One, as a functional description. This is how the Examiner interpreted it: an NMI transfers control to an interrupt routine and cannot be disabled (masked) by the processor's interrupt disable instruction. The other interpretation is structural: an NMI is the signal that is connected to the processor's NMI pin.

If you choose to claim only function, then any implementation of that function will anticipate. To distinguish function, you must show that the claimed function operates differently than the reference's function. Here, the Appellant should prevail if he could show that the pseudo NMI did not transfer control to an interrupt routine, or that the pseudo NMI could be masked. But what doesn't matter is that the reference calls the function something else, or uses different words to describe it – if a POSITA would understand the reference to teach that function, it anticipates.

Here, it seems like the Appellant could have claimed some structure along with the function, something like "generating an non-maskable interrupt signal connected to the NMI input line of a processor." Because the reference explicitly taught that the pseudo NMI was connected to a different processor input, that claim would have distinguished over the reference.

I realize there may be good reasons to avoid claiming structure, perhaps reasons related to infringement. In my mind, that's the toughest part of claim drafting: coming up with claims that get over the art and are still infringed.

Patent prosecution resources: free claim construction dictionary through PUBPAT

PUBPAT is a non-profit organizaton affiliated with the Benjamin N. Cardozo School of Law. PUBPAT's mission is "to protect freedom in the patent system." PUBPAT announced that it is making several claim construction dictionaries available in PDF form. See the press release here for the download links.

If you ever want to know how a particular claim term has been interpreted in litigation, this is the resource to use. For example, the term "coupled" appears over 30 times in PUBPAT's dictionary, and you can see not only the construction used by the court, but also the relevant text of the decision.

I downloaded the Electronics, Computer and Business Methods dictionary and gave it a quick test drive. Be aware that each dictionary is about 50 megabytes in size, so I recommend downloading to local storage rather than trying to interact with the PDF over the Internet. The PDF contains hyperlinks for each letter of the alphabet, so you can find a word quickly by jumping to its first letter, and browsing from there. Or you can use the PDF search feature, but this will take several minutes because of the huge number of pages (over 4000). I wanted to study the chunk of pages discussing a particular term, and was admittedly disappointed to find out that the Print functionality, and even Copy to Clipboard functionality, of the PDF has been disabled. But you can hardly blame the author or PUBPAT for reducing the feature set of a free resource.

I think PUBPAT did us a great service. The next time I can't choose between two words when drafting a claim, I'll probably use the PUBPAT dictionary.

Case law you can use: functional equivalent not enough for anticipation

Takeaway: When structure is claimed, a reference used for anticipation must disclose the claimed structure, not merely a structure that performs the same function. See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965).

I first came across the "no functional equivalents" doctrine in the Appellant's brief for a mechanical case, Ex parte Konstant. One of the claim elements at issue in Konstant was a "flange ... with the entire upper width that defines an upper support for at least one cross bar." Citing to a dictionary, the Examiner asserted that a flange was "a projection used for strength or attachment," then asserted that "the 'steps' or 'lips' of [the reference] perform this function." The Appellant cited Suzuki v. Richardson for the proposition "for anticipation, 'almost' is not enough; there is no such thing as 'anticipation by equivalents'."

I thought it was an interesting argument, though the Board in Konstant didn't mention the doctrine and instead reversed on other grounds. (Namely, it's improper for Examiner to rely on the same structure to disclose two separate claimed elements; see my Ex parte Konstant post here).

I was excited to see the BPAI using what seems to be the same "no functional equivalents" doctrine in Ex parte Kershaw. I found out about this decision on the Florida Patent Lawyer blog. You should read Mike Terry's post (here) for the details, but here's my take on it. The Appellant claimed a memory management unit, and the Board found that the Examiner's reliance on software components that perform memory management was misplaced since the claimed unit was a structure (i.e., hardware):

[T]he Examiner appears to be relying on certain memory management function performed by various software components in Ledebohm (e.g., Driver Program 136, and/or Resource Manager 138). (See FF2.) We agree that Ledebohm is directed to performing management functions. However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) (“the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant.”)
(Ex parte Kershaw, p. 8.)

While most of the applications I work on involve a lot of function rather than structure, when I do have a structural element I'm definitely going to watch out for an opportunity to apply In re Ruskin.

BPAI requirements for Examiner consideration of declarations

Takeaway: If you submit evidence during prosecution and the Examiner dismisses the evidence without a proper explanation or even ignores it outright, consider an appeal. Although an Examiner is allowed to be unpersuaded by evidence presented by an Applicant, evidence must nonetheless be given proper consideration. Evidence often takes the form of a § 1.132 declaration, though it can also include information in the specification itself — but evidence is something other than mere attorney argument.

Here is a sample of BPAI decisions finding the Examiner did not properly consider the evidence.

Ex parte Malone: The claims in Malone were directed to a lamp housing including a substrate and a conductive layer of a specified thickness. The Applicant submitted a § 1.132 declaration discussing each of the references used the obviousness rejection and explaining why the claimed subject matter was not obvious in view of specific teachings in each reference. In the Advisory Action, the Examiner found that the declaration was insufficient to overcome the rejections because it stated only conclusions. In the Appeal Brief, the Applicant argued that the declaration did not state only conclusions, but instead explained in detail why a POSITA would not understand the prior art to teach or suggest the claim elements at issue. The Board chastised the Examiner for a "largely dismissive" response to the Applicant's § 1.132 declaration which presented evidence of non-obviousness. The Board then reversed the obviousness rejection "since the Examiner did not properly consider the submitted evidence."

Ex parte Rapp: The claims in Rapp were directed to a food product. The Applicant submitted a § 1.132 declaration as evidence of long-felt need and commercial success. The Examiner's Answer did acknowledge that the Appellant had presented rebuttal evidence, but then stated: "However, the claimed composition and process has been shown and would have been obvious to make such a product as shown above." The Examiner's treatment of the declaration led the Board to reverse the obviousness rejection, characterizing the Examiner's response to the declaration as "largely dismissive."

Ex parte Ramdsen: In this chemical case, the evidence took the form of experimental results in the Appellant's specification. The Appellant used this data as evidence of unexpected results, rebutting the Examiner's prima facie case of obviousness. The Examiner did not comment on the evidence in the Advisory Action or Examiner's Answer. The Board reversed the obviousness rejection because "the Examiner has provided no statement that this evidence has been considered, much less identified reasons as to why the Examiner believes that the evidence of obviousness when considered anew in light of all of the Appellants’ evidence of nonobviousness weighs in favor of obviousness."

Ex parte Donnelly Corp.: The claim element at issue in this case was an adhesive compound. To rebut a prima facie case of obviousness, the Appellant submitted several § 1.132 declarations as evidence of unexpected results and commercial success. The Examiner's Answer acknowledged the declarations then went on to state "Appellant did not show unexpected results over silicone resins." The Answer also criticized the evidence as not being commensurate in scope with the claims. The Board reversed the rejection because the Examiner did not explain why the evidence was insufficient:

[T]he Examiner states that Appellant did not show unexpected results over silicone resins. But this conclusory statement does not explain why the relied-upon evidence, which included test results comparing epoxy resin with silicone resin, is insufficient. The Examiner further argues that the evidence must be commensurate in scope with the claims. Again, however, it was incumbent upon the Examiner to explain, in a meaningful way, why the evidence offered in support of nonobviousness was not sufficient to reasonably support the scope of the claims. Indeed, it is not entirely clear from the Examiner’s position what additional experimentation would have been necessary to address the Examiner’s concerns. In a similar fashion, the Examiner dismissed Appellant’s evidence offered in support of commercial success without any meaningful discussion based on facts. Thus, the actual bases for the Examiner’s perceived deficiencies in the evidence are left to speculation.
(Ex parte Donnelly Corp, pp. 1415.)