BPAI criticizes Applicant for alleging a special meaning for claim term without explaining the meaning

Takeaway: The term "condition" was at issue on an appeal of an application related to microprocessor architecture, The Examiner's answer presented a dictionary definition for the claim term. The Applicant responded in the Reply Brief by arguing that "the Examiner's definition does not overturn the definition ascribed to the word by those of ordinary skill in the art in view of the present specification" and then giving a number of examples of conditions from the specification. The BPAI affirmed, noting that the "[Applicants allege the term has some (unidentified) special meaning in the art, but do not refer us to any evidence in support of the allegation, nor tell us what that the unsupported, unidentified special meaning may be." (Ex parte Watt, BPAI 2009.)

Details:
Ex parte Watt
Appeal 20085801; Appl. No. 10/714,483; Tech. Center 2100
Decided  March 31, 2009

The application on appeal related to microprocessor architecture. A representative claim on appeal read:

1. A method of controlling a monitoring function of a processor, said processor being operable in at least two domains, comprising a first domain and a second domain, said first and second domains each comprising at least one mode, said method comprising the steps of:
     controllably monitoring said processor operating in each of said at least two domains,
     setting at least one control value, said at least one control value relating to a condition and being indicative of whether said monitoring function is allowable in said first domain;
     allowing initiation of said monitoring function in said first domain when said condition is present if its related control value indicates that said monitoring function is allowable; and
     not allowing initiation of said monitoring function in said first domain when said condition is present and its related control value indicates that said monitoring function is not allowable.
(Emphasis added.)

The Examiner rejected the claims as obvious using a combination of two references. One of the issues on appeal was the claim term "control value relating to a condition".

The reference at issue, Angelo, taught a processor having a System Management Mode (SMM), and the Examiner equated entry into SMM with the controlled "monitor function" in a first (secure) domain. Angelo also taught that a System Management Interrupt (SMI) could cause the processor to enter SMM, and the Examiner equated the SMI with the claimed "control value ...being indicative of whether said monitoring function is allowable in said first domain."

The Applicant argued on appeal that Angelo's SMI (alleged "control value") did not meet the "related to a condition" limitation:

The SMIs which are asserted are a non-maskable interrupt having nothing to do with anything relating to a condition. There is no reference to a "condition" or suggestion that anything in Angelo is dependent upon recognition of a "condition." Additionally, there seems to be no stated indication by the Examiner as to how or why he believes the SMI is related to or discloses the claimed "condition."

In the Answer, the Examiner provided a dictionary definition of "condition": "a particular mode of being of a person or thing; existing state; situation with respect to circumstances." The Examiner noted that "this is a rather broad definition." The Examiner then explained how Angelo's SMI was related to several conditions:

1. An SMI timer can be used to assert the SMI. Completion of this timer is a condition.
2. A system request can be used to assert the SMI. The assertion of this system request is a condition.
3. The assertion of the SMI is used to toggle System Management Mode (SMM). This mode is a condition.

The Applicant filed a Reply Brief to respond to the Examiner's interpretation of "condition":

     The Examiner has not made any evidence from "Dictionary.com" of record in this application and therefore the Examiner's definition does not overturn the definition ascribed to the word by those of ordinary skill in the art in view of the present specification and the claims.
     Appellants' specification describes a number of embodiments in which the "condition" can comprise a "secure domain" (page 4, line 17)' a "secure user mode" (page 4, line 23)'" a "type of monitoring function" (page 4, line 29)," a "trace monitoring function" (page 5, lines 1-2)" etc. The term "condition" is believed to be well known to those of ordinary skill in the art. However, should the Examiner contend that it is not, he is obligated to apply the definition set out in Appellants' specification so as to incorporate the various examples set forth therein. Accordingly, Appellants dispute the Examiner's "rather broad definition" from "Dictionary.com" as completely unsupported.

The Board agreed with the Examiner, and sharply criticized the Applicant's Reply Brief arguments about the meaning of "condition".

   Appellants allege that the term “condition” has some (unidentified) special meaning in the art (Reply Br. 2), but do not refer us to any evidence in support of the allegation, nor tell us what that the unsupported, unidentified special meaning may be. Appellants also refer to a “number of embodiments” in the Specification and seem to assert that some (unidentified) special meaning of “condition” can be gleaned from the described embodiments (see id.), which, presumably, would distinguish over the conditions in Angelo that were identified by the Examiner. Thus, although Appellants allege (id.) there is a “definition” for the term “condition” set out in the Specification, Appellants not only do not tell us where the definition may be found, but also neglect to tell us what that the definition may be.
   We will not, and cannot, read any of the specific embodiments described in the Specification into instant claim 1.  [Citations omitted.]

The Board then explained in detail how Alverson disclosed the relied-upon claim limitations, and affirmed the obviousness rejection.

My two cents: The Board chastised the Applicant for not providing a definition. Do you have to provide your own definition to show that the Examiner's interpretation is unreasonably broad?

If the Examiner's interpretation is way off base, probably not. But if your facts are like these, where the Examiner's interpretation did seem reasonable, then yes, you should do more than throw the ball back by saying "The Examiner's definition is wrong."

The Applicant seemed to have a basic misunderstanding of broadest reasonable interpretation.
The Applicant argued that the Examiner was "obligated to apply the definition set out in Appellants' specification so as to incorporate the various examples set forth therein." Not true. While it is true that the claim is to be interpreted in a manner consistent with the spec, this does not extend so far as to read into the claims features that are clearly described as examples. As the Board noted in this case, "the scope of a claim cannot be narrowed by reading disclosed limitations into the claim." (citing In re Morris).

I think the Board was being a bit disingenuous by asking for a definition. The Applicant probably didn't offer a definition because a) the spec didn't have one and b) other dictionary definitions wouldn't have been any more favorable. It seems pretty clear to me that the Applicant was indeed relying on importing limitations into the claims.

Notably, the Applicants went to appeal with dependent claims that further narrowed the term at issue. But the Applicant didn't separately argue the dependents. Perhaps a further indication that the Applicant really did believe that the claim term deserved a more narrow interpretation.

Once the Examiner clearly explained how he was interpreting the reference to teach the claim condition, the Applicant should have pulled from appeal and amended the claims to further describe the condition. Better yet, if the Applicant had realized this before appeal, should have at least added dependent claims

Postscript: The Applicant filed an RCE after losing and appeal and eventually got a patent. The claims were narrowed to further define the condition:

said condition consisting of a respective one of (a) a domain that said processor is operating in, or (b) a mode that said processor is operating in or (c) a type of said monitoring function,
said control value being set to be an enable value for said related condition to indicate that said monitoring function is allowable in said first domain;

These three conditions essentially corresponded to the three "meanings" of condition that were argued in the Reply Brief.

Notably, the Examiner continued to apply the same art to these amended claims, and allowed them only after the Applicant filed another Pre-Appeal and then Appeal Brief.

A cautionary tale about extensions of time

I ran across an interesting post "Wait One Day, Lose Two Days " on the blog 12:01 Tuesday (a blog with interesting tidbits about just-issued patents).

The blog post is a cautionary tale about the dangers of taking extensions-of-time during prosecution of applications that have long claims to priority: an application with a priority claim back to 1999 expired before it issued, apparently due to Applicant delay.

BPAI not persuaded by evidence that authors of reference collaborated but did not find claimed composition obvous

Takeway: The Applicant appealed an obviousness rejection of claims to a chemical cleaning composition. The Examiner relied on a secondary reference to teach adding deionized water to a base composition. The Applicant attacked the rationale for combining by asserting that actual persons of ordinary skill in the art had worked on cleaning compositions but did not use deionized water. Specifically, the Applicant introduced evidence that the inventors of the two patent references had actually collaborated to invent cleaning compositions, but did not come up with a composition that used deionized water. The Board found this evidence unpersuasive because one of the many compositions disclosed in the primary reference did in fact disclose the use of deionized water. The Board did not otherwise comment on the collaboration argument. (Ex parte McClung, BPAI 2011.)

Details:

Ex parte McClung
Appeal 2010006202; Appl. No. 11/056,853; Tech. Center 1700
Decided  Dec. 8, 2011


The patent application was directed to a chemical composition said to be "effective in treating a wide variety of contaminants, such as organic compounds, from boiler systems, chiller systems, cooling tower systems." A representative claim on appeal read:

35. A process of treating contaminant in a system comprising:
(a) selecting a composition of hydrogen peroxide, glycolic acid, and low solids water,
wherein
(i) water is present in an amount of [sic] least about 50 weight percent based on the total weight of said hydrogen peroxide, glycolic acid, and water and
at most about 99 weight percent based on the total weight of said hydrogen peroxide, glycolic acid, and water to provide a composition,
(ii) the low solids water comprises less than about 10 ppm dissolved solids, and
(iii) the composition has a pH of at least about 1.9 and at most about 3.8; and
(b) contacting said contaminant with a concentration of said composition,
wherein said concentration treats at least some of said contaminant in said system, wherein said systems is selected from the group, consisting of boiler systems, chiller systems, cooling tower systems, and combinations thereof.

The Examiner rejected process claim 35 as obvious over the combination of three references: Lokkesmoe, Oakes, and Hei. At issue on appeal was the rationale for combining Lokkesmoe and Oakes to produce the claimed composition.
 
The Examiner relied on Lokkesmoe for teaching the composition as claimed, except for the low solids water in limitation [i]. Lokkesmoe taught that the cleaning composition could include additional ingredients such as alcohols, and any number of adjuvants could be added. The Examiner found that Oakes taught limitation [i] by disclosing the use of "deionized water (i.e., low solids content water)" to dilute concentrated compositions used "as soil removing agents in the food processing industry."
With respect to the rationale for combining Lokkesmoe and Oakes, the Examiner asserted:

It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to use deionized water in the composition taught by Lokkesmoe et al, with a reasonable expectation of success, because Oakes et al. teach the use of deionized water in a similar cleaning composition and further, Lokkesmoe et al. teach the use of water as a diluent in general. Additionally, ... deionized water would be desirable for use by one of ordinary skill in the art in the cleaning compositions taught by Lokkesmoe et al. to reduce contamination of the required components and the substrate on which  the composition will be used.

On appeal, the Applicant argued several points including the rationale for combining Lokkesmoe and Oakes.
The Applicant argued that "the circumstances underlying these references themselves demonstrate it was not obvious to utilize de-ionized water" in the Lokkesmoe process ... [T]his is the rare situation where the actual evidence reveals the invention was not obvious even to the inventors of the prior art references."
 
According to the Applicant, inventors Lokkesmoe and Oakes had collaborated with one another on related technologies and it never occurred  to them to use deionized  water in aqueous solutions comprising hydrogen  peroxide and carboxylic  acids. The Applicant concluded that the failure of Lokkesmoe and Oakes to make the combination weighed against any motivation to combine the references.

As evidence of the collaboration, the Applicant noted that the Lokkesmoe and Oakes references were commonly owned and shared two common inventors (Lokkesmoe and Oakes) . Also, Lokkesmoe was filed six months after Oakes issued. Furthermore, Lokkesmoe and Oakes were the only inventors on another patent for a cleaning composition, one which also didn't use de-ionized water.

The Applicant summarized the collaboration argument as follows:

Despite Messrs. Lokkesmoe and Oakes having collaborated with one another on these technologies, Lokkesmoe, Oakes, and Lokkesmoe/Oakes demonstrate that it did not occur even to them to use de-ionized water in aqueous solutions comprising hydrogen peroxide and carboxylic acids. Messrs. Lokkesmoe and Oakes were, by definition, persons of extraordinary skill in the art of Lokkesmoe and Oakes. And, if the combination was not obvious to such persons of extraordinary skill in the art, it necessarily follows that that the combination was not obvious to a person of ordinary skill in the art. See Okijima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, this is the rare situation where the actual evidence reveals the invention was not obvious even to the inventors of the prior art references.

The Board was not persuaded by the collaboration argument because it was undermined by an express disclosure in Lokkesmoe. While the Applicant maintained that the collaborating co-inventors did not contemplate using deionized water, Table 18 of Lokkesmoe disclosed the use of deionized water in an exemplary composition that also included the hydrogen  peroxide and glycolic acid ingredients of the rejected  claims. Furthermore, the Applicant was aware of this disclosure in Lokkesmoe, since the Appeal Brief had cited this very same Table 18 composition in arguing a different point, to establish that "the one example disclosed in Lokkesmoe utilizing glycolic acid, used significantly less than 50 weight percent of water."

My two cents: I don't practice in the chemical arts so I have no opinion on the technical merits of this decision. I'll have to assume the Board's interpretation of the prior art is accurate.

What drew my attention to the case was the Applicant's use of background information about the references (co-owned, same inventors, same time frame) to show collaboration, and the argument that despite such collaboration, these actual persons of skill in the art did not come up with the claimed composition. I thought this was a really creative argument.

Here, the Board wasn't persuaded by the collaboration argument, because they found other information in the references themselves that showed the collaborators had in fact used deionized water in their compositions. 
But without these additional facts, would the collaboration argument have been persuasive? Does evidence of what real POSITAs actually did in the real world matter to an obviousness analysis?

Maybe not. In another blog post about a reexam case (BPAI gives expert testimony little weight ...), I expressed my disappointment in seeing that when a patentee offered evidence from real people involved in product development, the Board didn't seem to be interested in this. Instead, in that case, as in this one, the Board focused way more on the teachings of the references than on evidence about actual persons of skill in the art.

BPAI finds Examiner assertion that reference describes a commercial embodiment to be unsupported by evidence

Takeaway: During prosecution of a patent application directed to a razor, the Examiner and the Applicant disagreed over the location of the finger pad on a razor depicted in an anticipatory patent. The Applicant argued that the finger pad was in the middle rather than at an end. The Examiner then asserted that the razor in the reference was actually a Gillette Mach 3. The Examiner asserted that he reference drawing was not drawn to scale because he had personally measured a Mach 3, and the finger pad was much closer to the end than the Applicant argued (20% rather than 50%). The BPAI ignored the Examiner's unsupported assertion about the location of the finger pad, and reversed because the reference disclosed a finger pad in the middle of the handle rather than at one end. (Ex parte Gray, BPAI 2010.)

Details:
Ex parte Gray
Appeal 2009002038; Appl. No. 10/798,541; Tech. Center 3700
Decided  October 24, 2010

A representative claim on appeal read:

2. A shaving razor comprising
   a housing having a primary guard at a front of said housing and a primary cap at an upper surface at a back of said housing, one or more primary shaving blades between said primary guard and said primary cap,
   a trimming blade mounted at the back of said housing having a trimming blade cutting edge oriented away from said upper surface, and
   an elongated handle having a first end secured to said housing,
   said handle having a finger pad at said first end on the same side as said primary blades.

During prosecution, the Examiner rejected the claims as anticipated by a patent to Rozenkranc. The assignee of Rozenkranc also owned the application, a fact that would become pertinent later. With respect to Rosenkranc's disclosure of the claimed location of the finger pad, the Examiner provided this annotated figure:



The Applicant argued this limitation by making an analogy:

   The finger pad is placed closer to one end of the handle versus the other. one were to place a football on the 45 yard line of a football field one would not say that the football is placed at one end of the field.
   The same can be said for the alleged finger pad of Rozenkranc. The finger pad is positioned in the middle of the handle and not at the first end. Thus, even if there is a finger pad in the area indicated by the Examiner, this cannot fairly be construed to be positioned "at the first end" of the handle.

The Examiner maintained the rejection, but changed the interpretation of the reference to include new information about the dimensions. In doing so, the Examiner accused the Applicant of mischaracterizing the commonly-owned Rozenkranc reference:

[T]he handle of Rozenkranc is a Gillette Mach 3 razor handle, and is not drawn to scale. I have personally measured a Gillette Mach 3 Handle, and the finger pad (as you, Gillette should know) starts much closer to the terminus having the primary blades than 45% as you continually allege. It is at the 20% mark that the finger-pad begins, which is unquestionably "at a first end" thereof. Your argument that the pad begins at the 45 yard line is misleading, and not in good faith.

The Applicant went to appeal, but did not address the Examiner's comment in the Appeal Brief. The Applicant did, however, contest the Examiner's finding in the Reply Brief:

First, the Office asserts that the handle of Rozenkranc is a Gillette Mach 3 razor handle. The Applicant, Gillette, has no idea where this notion came from but it is factually incorrect. Second, the position taken by the Office that the middle of an object constitutes an end is unreasonable.

The Board agreed with the Applicant, finding that the Examiner's interpretation of "end" to read on the middle was unreasonable. The Board also drew attention, in a footnote, to the Examiner's unsupported findings about the Mach 3 razor:

3 The Examiner notes in the Answer that he had stated previously in the Final Office Action of July 9, 2007, that the handle of Rozenkranc is a Gillette Mach 3 razor handle, and that he personally measured such a handle and found that the finger pad starts at the 20% mark from the terminus of the handle. Ans. 22. The Examiner fails to provide any basis for the assertion that the Rozenkranc handle is a Gillette Mach 3 razor handle, and Appellants deny the accuracy of this assertion. Reply Br. 1.

My two cents: When an Examiner makes a finding that relies on personal knowledge – as was clearly the case here – the rules require a "personal knowledge" affidavit under § 1.104. Here, the Examiner could easily attest to the measurements of a Mach 3 razor, but that alone wouldn't be evidence that the Rozenkranc reference described a Mach 3.

Here, the Applicant didn't ask for an affidavit, but instead specifically denied of the allegation. Should the Applicant have asked for an affidavit? Since the rule makes a requirement of the Examiner, not the Applicant, I don't see that the Applicant gave up anything by not asking.

On the other hand, this case caught my eye because it's one of the few I've seen where a personal knowledge affidavit really does apply. Applicants often ask for one in situations where it doesn't apply: statements that are really about Official Notice or an allegation of something being well known. (See my post Examiner affidavit of personal knowledge for a discussion of this misstep.) So I thought it was a little weird that in the one instance that seemed to cry out for a personal knowledge affidavit, the Applicant didn't ask for one.

What about the Applicant specifically denying, in the Appeal Brief, the Examiner's allegation as "factually incorrect"? Did the Applicant investigate the commonly owned Rozenkranc patent and make a determination that Rozenkranc did not describe a Mach 3 razor? If not, was it a bad idea to put this specific denial in the record? And if the Applicant did make such a determination about its commonly owned patent, was it a good idea to put that determination in the record? Did the Applicant come close to admitting that Rozenkranc doesn't cover a Mach 3 razor?

As you can see, this case turned out – as many do – to be mostly about claim interpretation. I'll discuss the claim construction issue in more detail in a future post.

BPAI says incorporation by reference requires "specific journal, volume, and page number for the citation"

Takeaway: A biotechnology patent application dealing with soluble protein mutants for treating melanoma referred to a non-patent article as "Ujvari et al., 2001." During prosecution, the Applicant amended the specification to include information from this article in order to overcome written description and indefiniteness rejections. The Examiner then objected to the amendment as new matter, finding that the specification's incorporation by reference was ineffective because the article was referred to only by author name and year. On appeal, the Board agreed, finding that the "original Specification failed to provide written descriptive support for a citation to a particular Ujvari reference by a specific journal, volume, and page number for the citation." The Board noted that the general statement “[a]ll of the publications and patent applications and patents cited in this specification are herein incorporated in their entirety by reference” was not sufficient. (Ex parte Petrescu, BPAI 2011.)

Details:
Ex parte Petrescu
Appeal 2010002359; Appl. No.10/959,600; Tech. Center 1600
Decided May 20, 2011

The biotechnology application on appeal related to soluble protein mutants and methods for treating melanoma with these proteins.

During prosecution, the Examiner issued a written description rejection for an amended claim, explaining that the specification was deficient in several ways. First, "the specification is unclear about the size of the transmembrane domain of the tyrosinase that is truncated." Next, the specification referred to position 81 rather than claimed position 86. Finally, the specification referred to "position 81" but lacked a reference to a sequence id number.

The Applicant filed an After Final response and addressed the rejection by asserting that both size and sequence number information were provided in a journal article, one that was incorporated by reference into the application.

With regard to the size of the transmembrane domain, applicants respectfully assert that human tyrosinase is a type I membrane glycoprotein that has 553 amino acids with one C-terminal transmembrane domain. This information is published in Ujvari et al., J. Biol. Chem., 276:5924-593 1 (2001), which is incorporated by reference in the present application. ... Furthermore, Ujvar ... provides GenBank accession number Y00819 as the sequence for the human tyrosinase gene.

When an Advisory Action indicated that the rejection was not overcome, the Applicant then filed an RCE. The Applicant maintained that the journal article provided written description support for new claims referring to position 86 in sequence number id 6 as well as for the previous amendments. The Applicant also amended the specification so that "the primers listed in Example 2 [now] refer to SEQ ID NOs," including claimed id 6.

In the next non-final Office Action, the Examiner maintained the written description rejection and also entered a new matter objection. According to the Examiner, the incorporation by reference was ineffective:

The complete reference of Ujvari et al., 3. Biol. Chem., 276:5924-5931 (2001) [discussed in the response] is not part of the original specification. The instant specification on page 6, paragraph 0026, recite the reference as Ujvari et al, 2001. There is no details of the reference in the instant specification as originally filed about the Journal. Vol. No. or Pages. Therefore, incorporating Ujvari et al., J. Biol. Chem., 2765924-5931 (2001), by reference introduces new matter. Further, the sequence of SEQ ID NO: 6 and 7 was never a part of the sequence listing, and incorporating these sequences via the incomplete reference of Ujvari et al. would be improper as well.

The Applicant filed a response arguing that the incorporation by reference was proper:

[T]he only Ujvari publication published in 2001 that relates to tyrosinase is Ujvari et al., JBiol Chem, 276(8):5924-3 (2001), and therefore, it is obvious that applicants' recitation of Ujvari 2001 in the specification refers to this JBC article.

When the final Rejection maintained the written description rejection and new matter objection, the Applicant appealed. The Appeal Brief argued that the incorporation by reference was proper because the specification included a citation to "Ujvari et al. 2001" coupled with the statement "All of the publications and patent applications and patents cited in this specification are herein incorporated in their entirety by reference." The Applicant then explained in detail why "Ujvari et al. 2001" amounted to a "full citation":

[E]ven a broad Google search reveals only one Ujvari et al, 2001 reference, and that is : Ujvari, Aron R, Eisenhaure T, Cheng E, Parag HA, Smicun Y, Halaban R, Hebert DN 2001 Translation rate of human tyrosinase determines its N-linked glycosylation level. J Biol Chem. 276(8):5924-3 1. In addition, search of the NCBI's PubMed database reveals that only one reference listing Ujvari as first author was published in 2001, and the reference relates to tyrosinase and is found in the Journal of Biological Chemistry (J Biol Chem, 276(8):5924-3 (2001)). Furthermore, the Ujvari reference describes that tyrosinase has 7 N-glycosylation sites, two copper binding domains and one C-terminal TM domain, as stated in the specification just before the Ujvari reference is cited. Accordingly, it is clear that the Ujvari  2001 reference cited and incorporated in the specification is Ujvari et al al., J Biol Chem, 276(8):5924-3 (2001). Therefore, the Ujvari reference was properly incorporated into the specification. Material is "in" the specification if it is incorporated by reference.
(Emphasis added.)

The Applicant's written description argument essentially relied on the specification as amended.

The Examiner's Answer commented on the arguments from the Appeal Brief as follows:

   The blanket incorporation by reference statement in the specification does not sufficiently point to which material was intented to be incorporated from which document. The complete and clear identity of the referenced patent, application, or publication is not uniquely identified as required bv 37 CFR 1.57(a) such that correction can be made.
   Moreover, 37 CFR 1.57 does not permit incorporation from references which need to be identified bv further searching for a partially described reference such as Ujvari et al. (2001 ) [without the Journal name, volume or page number] with a broad or narrow "Google Search" or "search of the NCBl's PubMed database" in order to determine which of the existing literature references by the same author to be most relevant, applicable and suitable for "incorporation by reference". 37 CFR 1.57 applies even if the authors publishing field is quite narrow.

As a threshold matter, the Board found that the Examiner's new matter objection rose to the level of an appealable rather than a petitionable matter, citing MPEP § 2163.06 (When “both the claims and specification contain new matter  either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable.”).

The Board found that while the specification did properly incorporate a U.S. patent by reference, "there is no specific incorporation of Ujvari by reference." The Board then dismissed Applicant's argument that “only one reference listing Újvári as first author was published in 2001” as an "unsupported contention of Appellant's counsel." Finally, the Board noted that while another published paper did refer to the full citation, this "falls short of suggesting that this specific reference is the only 2001 reference, available to the public, that lists Ujvari as first author."

The Board then affirmed:

Absent evidence to the contrary, we are constrained to find that the preponderance of evidence on this record supports a conclusion that the original Specification failed to provide written descriptive support for a citation to a particular Ujvari reference by a specific journal, volume, and page number for the citation.

My two cents: If there was ever any doubt, this decision emphasizes the need to fully specify a citation rather than to use a shorthand abbreviation. The Applicant made some creative arguments (Google search, PubMed), but it makes sense to me that the Board insisted on "specific journal, volume, and page number."

I don't see incorporation by reference a lot in the applications I prosecute. Perhaps it's more common in other technology areas such as biotech.

BPAI reverses obviousness based on "mere duplication" rationale, finding that "these modifications go far beyond mere duplication"

Takeaway: The Examiner rejected a claim to a gutter system as obvious, alleging that the difference between the combined references and the claims was nothing more than a duplication of parts. As support for this rationale, the Examiner cited to In re Harza. The Board reversed, saying that In re Harza is limited to a mere duplication of parts, and that the modifications in this case went far beyond simply duplicating parts. (Ex parte Rippolone, BPAI 2011.)

Details:
Ex parte Rippolone
Appeal 2009015057; Appl. No. 10/787,429; Tech. Center 3600

The application on appeal involved gutters. Claim 7 read:

7. A gutter thawing system section comprising:
     a first molded gutter section comprising a liquid passage and a first multiple of linear air flow passage adjacent thereto;
     a second molded gutter section comprising a second multiple of non-linear air flow passages which connect at least two of said first multiple of linear air flow passages; and
     a third molded gutter section comprising an input connector and a return connector, said input connector in communication with at least one of said first multiple of linear air flow passages, and a said return connector in communication with at least one of said first multiple of linear air flow passages.

In a first Office Action, the Examiner rejected as obvious over Bortugno in view of Bernardi. The Examiner relied on Bernardi for non-linear air flow passages, and Bortugno for a gutter thawing system having a gutter section with a liquid passage and an air flow passage and a hot air supply. The Examiner acknowledged that Bortugno did not disclose multiple air flow passages or multiple gutter sections. However, the Examiner alleged that it would be have obvious to duplicate the parts in the Bortugno, relying on the "mere duplication of parts" rationale from In re Harza, 274 F.2d 669 (CCPA 1960).

In the first Response, Applicant made several arguments, including one that the "mere duplication of parts" rationale was not sufficient as a reason why a POSITA would modify the cited reference. 

The Examiner maintained the obviousness rejection on Final and defended the "mere duplication" rationale as follows:

However, citing In re Harza (see MPEP §2144. 04 (VI) (B) the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. It is the examiner's position that no new and unexpected result is produced, therefore, the modification of duplicating parts is not a patentable feature for the invention as claimed. As a result, requiring a rationale for modifying a reference is moot because the modification is, under Harza, not a patentable feature.

The Applicant filed an After Final Response repeating the argument that mere duplication was insufficient.

The Advisory Action did not add any further explanation about the mere duplication rationale.

The Applicant appealed, making several arguments for claim 7. The Applicant attacked the "mere duplication" rationale by arguing that the reasoning from In re Harza was inapplicable, since the modifications to Bortugno were more than mere duplication. Specifically, the Applicant argued that the three gutter sections recited in claims 7 were different and not duplicates.

In the Answer, the Examiner defended the use of the "mere duplication" rationale as follows:

The examiner maintains that the rejection [citing duplication of parts] was proper. While noting that the gutter sections in claim 7 vary in structure, the first limitation addressed was that there are a multiple of sections. Bortugno did not specifically provide this limitation, so the examiner stated to have this limitation would be obvious because duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669 (CCPA 1960). The examiner further addressed the limitations relating to the varying gutter sections in the prior Office Action.

The Applicant filed a Reply Brief that addressed several points, but did not further address "mere duplication."

The Board found that In re Harza's "mere duplication" rationale was inapplicable and reversed the rejection. In explaining its reasoning, Board elaborated on the Applicant's basic argument that the claimed sections were more than duplicates:

The Examiner does not merely duplicate Bortugno’s gutter section to make multiples of that gutter section. The Examiner changes the structure of duplicated gutter sections. Bortugno’s original section lacks a non-linear air flow passage, yet the Examiner modifies a second gutter section to include a non-linear air flow passage. (See Ans. 7-8). Then the Examiner must further modify the duplicated second section to connect a first air flow passage in Bortugno’s original section with the duplicated section’s non linear air flow passage. The Examiner further modifies another duplicated section, a third section, in a different manner. The Examiner modifies the third section via Bernardi’s teaching to include a return connector. (See Ans. 8). This modification changes Bortugno’s system from a system without a return to hot-air type furnace 12 to a system with a return to the hot-air type furnace 12. The Examiner does not account for the modification the return to the hot-air type furnace 12 has on Bortugno’s exhaust ports 39. (See Reply Br. 2-3). These modifications are far beyond the holding in Harza, which is limited to a mere duplication of parts.
(Emphasis added.)

My two cents: According to the above-emphasized statement from the Board regarding Harza, you ought to be able to beat the mere duplication rationale any time the combination goes beyond mere duplication. But you're still vulnerable to an overall conclusion of obviousness. So I say don't stop at arguing that mere duplication/Harza doesn't apply. Instead, take a cue from the Board's reasoning, and explain in as much detail as possible what the differences are – i.e., what modifications are needed to go from the combined features in the references to the claimed invention. Seems to me that one or two major differences or even a bunch of tiny ones are indicia of non-obviousness.

Also see this post at Ryan Alley's blog for some suggestions in dealing with the mere duplication rationale. Ryan discusses the rationale in the context of the recent Celsis In Vitro v. CellzDirect decision.