Back to blogging

I've had less time to devote to blogging in the past few weeks, since I've been busy with a lot of end-of-year filing deadlines. I'll start ramping up my posts this week, and I hope that by next week, I can return to my normal blogging schedule of 3 posts per week.

Arguments guaranteed to lose: "but look at these similar claims in other issued patents"

Takeaway: Occasionally Applicants make an argument which amounts to "the rejected claims are similar to claims that appear in these issued patents, so the Board should reverse the rejection." The BPAI ignores these arguments, relying on CCPA precedent: "In reviewing specific rejections of specific claims, we do not consider allowed claims in other applications." In re Gyurik, 596 F.2d 1012, 1016 n. 15 (CCPA 1979).

Details: Applicants often use this argument in § 101 rejections (see, e.g., Ex parte Ward and Ex parte Kelkar.) and occasionally for indefiniteness (see, e.g., Ex parte Cochran).

My two cents: Applicants seem to use this as a general appeal to fairness rather than as a legal argument. After all, if dozens of patents issued the week before you file your appeal brief with the phrase "computer implemented method", it hardly seems fair that your claim with the same preamble is rejected under § 101. Perhaps this type of fairness argument is really aimed at the Examiner — after all, the Appeal Brief is your last chance to persuade the Examiner. I have no idea whether this works with Examiners. But it doesn't work with the Board.

A much more creative argument appeared in Ex parte Haines, where the Applicants made a constitutional equal protection argument in fighting a § 101. (Seriously.) The Board ignored that one too, noting that "Appellant has not cited any authority in support of the novel legal argument." For more details, see this post at The Florida Patent Lawyer Blog.

Responding to new case law after an appeal brief is filed

Takeaway: If you have a case on appeal to the BPAI and new case law comes out that affects arguments made in your Appeal Brief, you can file an updated brief to address the new case law. For example, the Applicant in Ex parte Ahluwalia filed a "Letter Brief" to discuss In re Vaidyanathan, and the BPAI did consider the new arguments.

The Applicant in Ex parte Candy tried a different tack and didn't fare so well. After the BPAI affirmed the Examiner's rejections, the Applicant used a Request for Rehearing to ask for permission to file a new Appeal Brief, to present "new arguments responding to the extensive changes in patent law and in the rules and procedures of the BPAI." The Board denied the request because the Applicant didn't point out any specific changes in the law that would "render the Board's decision in error."

Details:

The Letter Brief in Ex parte Ahluwalia referenced In re Vaidyanathan, a decision in which the Federal Circuit reversed an obviousness rejection that had been affirmed by the BPAI. In doing so, the Federal Circuit stated that while the Examiner may rely on common sense as providing a reason to modify, "the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious." The Letter Brief argued that the rejection was deficient under In re Vaidyanathan because the Examiner didn't explain but merely made conclusory statements. The BPAI disagreed, and explained why the Examiner had provided articulated reasoning with some rational underpinning.

The Applicant in Ex parte Candy referred vaguely to "extensive changes" in the law and BPAI rules. I'm not sure what he had in mind. KSR had been out for about a year when the Applicant filed the Appeal Brief. Bilski v. Kappos was just out, but was irrelevant because no § 101 rejections were present. And the BPAI rules had not changed – the extensive BPAI rules package from December 2008 was never put into effect.

My two cents: MPEP 1205.02 makes reference to filing a "supplemental paper", but no details. So it's useful to have Ahluwalia an example application to look at. The Letter Brief is available in Public PAIR.

This supplemental filing might be useful in some cases. For example, there are tons of applications pending before the BPAI that are affected by Bilski v. Kappos. You can do nothing and take your chances with machine or transformation test arguments in an already filed Appeal Brief. But the BPAI might decide that your claim involving a machine is still abstract. A Letter Brief would give you the opportunity what this isn't so – perhaps using some of the factors from the PTO's Bilski guidelines. Something to consider.

BPAI holds that claim which includes figure is not indefinite

Takeaway: In Ex parte Smotkin, the applicant appealed a claim to a fuel cell membrane including a coating having a thickness described in the claim as "in the range shown for Nafion 117 in Figure 10." Figure 10 was actually reproduced as part of the claim, rather than the claim referring to a figure in the spec. The BPAI found that the claim was not indefinite. The Board distinguished Ex parte Fressola, which generally prohibits a claim from incorporating by reference to the specification or drawings. The Board found that the appealed claim did not incorporate by reference, but rather "displays the figure and pinpoints the elements of the figure that relate to the limitations of the claim."

Details:
Ex parte Smotkin
Appeal 2009011268, Appl. No. 09/891,200, Tech. Center 1700
Decided January 22, 2010

The claim at issue is reproduced below:

84. A proton-conducting membrane designed to serve as an electrolyte in a fuel cell, which membrane consists essentially of
     a single metal or metal hydride support, wherein
     one or both faces of said support is coated with an electronically-insulating proton-conducting coating, which coating consists of an inorganic material that contains no liquid phase, said coating having a thickness such that the ASR for protons at at least one temperature between 220°C and 550°C is in the range shown for Nafion® 117 in Figure 10:

In the Final Rejection, the Examiner rejected claim 84 as indefinite, citing to MPEP 2107(s):

Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant's convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993) (citations omitted).
(Emphasis in original.)

The Examiner further explained that:

In this instance, it is pointed out that a first set of claims (i.e. claims 75-82) has been properly delineated and set forth without the use of said table/fimre. Accordingly, it is contended that is not imperative or necessary to specifically define the claimed subject matter by using the table/figure. The examiner is also concerned about the possibility that claim 84, as now amended, be technically inaccurate due to the use of a table/figure subject to multiple interpretations.

In the Appeal Brief, the Applicant noted a difference between claim 84 and the set of claims which did not use a figure:

[T]he range set forth in the graph of claim 84 is different from that mandated by claim 75; claim 75 mandates an area-specific resistance for protons (ASR) of 0.01-100 C2.cm2 whereas the range shown for NafionB in Figure 10 has a lower limit somewhat greater than 0.01 C2.cm2 and an upper limit clearly lower than 100 C2.cm2. As the figure is the only place where this range for NafionB is set forth in the specification, it is believed necessary to incorporate the figure into the claim in order to provide adequate support for this range.
(Emphasis added.)

The Applicant also distinguished Ex parte Fressola, arguing that Fressola involved an omnibus claim ("as disclosed in the specification and drawings herein") whereas the claim on appeal "sets forth the drawing and identifies the portion of the drawing that is relevant to the limitation of the claim."

The Board reversed the indefiniteness rejection:

In Ex parte Freessola we held that “[i]ncorporation into the claims by express reference to the specification and/or drawings is not permitted except in very limited circumstances.” Claim 84 "does not incorporate by reference a figure or table, it displays the figure and pinpoints the elements of the figure that relate to the limitations of the claim." (Appeal Brief 9.)

My two cents: The Board did not address the Examiner's concern with "use of a table/figure subject to multiple interpretations." Or the Applicant's characterization of Fressola as being about an omnibus claim rather than a figure in a claim. I checked out Fressola, and its facts really were about an omnibus claim: "as disclosed in the specification and drawings herein". But Fressola does contain a long discussion of other case law (going back to 1943) dealing with incorporation by reference of figures or tables.

The claim here literally included the figure, where Fressola prohibits incorporation of a figure by reference. But even if Fressola were applied here, it seems to me Fressola's exception might apply:

Incorporation by reference to a specific figure or table is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim.

PTO proposes new appeal rules

Last week the PTO released a Notice of Proposed Rulemaking for rules governing ex parte appeals before the BPAI. (Read the official notice here.)

Generally, these rules make the applicant's job easier. The PharmaPatents blog has a nice summary here, so I won't bother with one. I will also tell you my personal favorite among all the changes: Summary of the Claimed Subject Matter. The current rule requires an explanation of each limitation of each claim under appeal. The proposed rule requires only an explanation of "each limitation in dispute by appellant." Less work for me and a reduced file wrapper as compared to the current practice.

I'm also glad to see a detailed explanation – almost three pages – of what constitutes a new ground of rejection in an Examiner's Answer. Five examples of what does constitute a new ground and five examples of what does not. While I don't particularly like the "not a new ground" list, I'm happy to have guidance from the PTO rather leaving this up to the Examiner's interpretation. While this guidance is not part of the text of the rule itself, I would confidently refer to the Federal Register Notice when arguing that the Answer did contain a new ground, if it came to that.


Past History: As you may recall, the PTO suspended the last proposed package of appeals rules. That package was supposed to go into effect December 2008, but ended up suspended after significant comment from patent practitioners. The currently proposed rule package bears little resemblance to the last one –which is a good thing.

BPAI affirms obviousness because airbag inflatable to a graphically determined pressure does not structurally distinguish over any other airbag

Takeaway: In Ex parte Bayley, the BPAI affirmed an obviousness rejection because "an airbag inflatable to a first pressure  ...  determined from a graph that plots pressure versus thickness" did not distinguish the airbag from any other airbag. The BPAI found that the pressure determination limitation was not a structural limitation, and thus did not give it patentable weight.

Details:
Ex parte Bayley
Appeal 2009008110, Appl. No. 11/175,731, Tech. Center 3600
Decided October 21, 2010

The claims were directed to a vehicle airbag system. The limitation at issue (emphasized below) related to the pressure used to inflate the airbag.

19. A system for helping to protect an occupant of a vehicle ... said system comprising:
     an inflatable vehicle occupant protection device  ... ; and
     an inflation fluid source actuatable to provide a volume of inflation fluid to said inflatable volume sufficient to inflate said inflatable vehicle occupant protection device to at least a first pressure,
     said first pressure being determined from a graph that plots pressure in said inflatable vehicle occupant protection device versus said thickness of said inflatable vehicle occupant protection device ...

The Examiner rejected claim 19 as obvious. The Examiner relied on one reference to teach a relationship between inflation pressure and airbag thickness, and another reference to teach all the other elements.

The Examiner indicated that no patentable weight was given to using a graph to determine the inflation pressure. The Examiner characterized this use of a graph as merely “an intermediary step in a design process” and “not germane to the patentability of the apparatus because there is no structure that is imparted by the design step that distinguishes the airbag claimed from the prior art airbag.”

In the Appeal Brief, the Applicant argued that the graphically determined inflation pressure was a structural rather than a process limitation and should therefore be given patentable weight. Specifically, the Applicant argued that the limitation of a “graphically approximated pressure” should be interpreted as a structural limitation because it defines the pressure of the inflation device, which is “an objectively observable characteristic of the device.” According to the Applicant, the relationship embodied by the graph “imparts upon the protection device a particularized inflation pressure depending on the thickness of the airbag.”

The Applicant went on to explain similarities between the limitation of claim 19 and other types of limitations, all of which the Applicant said were structural:

     Claim 19 recites the structural limitation of a pressure that is determined graphically. More specifically, the structure recited in claim 19 is that of a protection device and an inflator that provides a volume of inflation fluid sufficient to inflate the protection device to at least a first pressure, the magnitude of which is approximated from a plotted point on a graph that plots the inflated thickness of the protection device versus the inflated pressure of the protection device. This structure cannot be described in any other way and therefore must be given patentable weight.
     The scope of this claim element is no less structural, and therefore no less germane to patentability, than a recitation of a specific pressure (e.g., 20 psi/g), a specific formula (e.g., pressure equal to a mathematical formula based on thickness), or a specific function (e.g., a pressure sufficient to prevent an object from striking through the inflated thickness of the protection device).

The Board was not persuaded, deciding that "an inflation pressure value determined from a plot of inflation pressure versus airbag thickness" was not a structural limitation. Referring to the Appeal Brief's list of alternative ways to express the function of inflating, the Board explained that:

Appellants have not provided any evidence to show that an airbag having an inflation pressure chosen from a plot of inflation pressure versus airbag thickness is any different structurally from an airbag having an inflation pressure chosen from a table of inflation pressures and airbag thicknesses or an airbag having an inflation pressure and airbag thickness derived experimentally. An attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).

The Board then affirmed the obviousness rejection.

My two cents: I think the Board's point – the airbag in the claim is not different than the airbag in the reference – is very important. But it's also subtle. The distinction (presumably) is the actual mechanism used to inflate to the desired pressure –  but that mechanism wasn't actually claimed.

What's going on here is what I call "inferential claiming." The Applicant claimed around the mechanism for inflating to a desired pressure, by referring to an inflation value that was determined in a specific way (a graph). But the claim did not expressly recite the mechanism.

How should the claim have been drafted? Let's assume that software running on a processor determined the desired inflation pressure based on airbag thickness. Then the claim should recite the processor as a structural element, and use functional language to describe how the processor controls the inflation. Maybe even throw in more structure, in the form or an actuator or valve, controlled by the processor. 

Now, I'm not suggesting that my improved claim is patentable over the references. If you throw in a reference that teaches processor-controlled inflation, the Applicant's inflation mechanism may well be obvious in light of the relied-upon reference that taught a relationship between thickness and pressure.

What I am saying is it's a really good idea to make sure the novel mechanism is actually expressed in the claim.

I'll mention one more criticism I have of the claim as written: the use of "a graph" in the claim. The way I see it, the software doesn't literally use a graph to determine inflation values. A table, maybe. A graph, no. So I'd stay away from "graph" and claim the software using a functional relationship between pressure and thickness.