BPAI rejects dependent "computer usable medium" claims for failing to limit the independent claim

Takeaway: The BPAI entered two new grounds of rejection under § 112 for a set of dependent computer-usable medium claims. The Board rejected under § 112 Fourth Paragraph for failing to limit the independent claim, in that the preamble of independent claim 11 read "a computer-usable medium comprising a computer product" while the dependent claims read "the computer product of claim 11." The Board also rejected under § 112 Second Paragraph as being indefinite, finding that an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims." (Ex parte Buros, BPAI 2011.)

Details:

Ex parte Buros
Appeal 2009009738; Appl. No. 11/268,931; Tech. Center 2100
Decided  June 20, 2011

The application was directed to aggregation of data using policies. The Examiner finally rejected all independent claims as being anticipated and all dependent claims as being obvious. A set of "computer usable medium" claims were also rejected under § 101.

The computer-usable medium claims read as follows:

     11. A computer-usable medium comprising a computer program product and operable by a data processing system for managing data, the computer program product comprising:
     program code for identifying a policy for managing the data in a data storage system;
     program code for locating raw data in the data storage system for processing to form located data;
     program code for aggregating the located data based on the policy by summarizing the located data to form aggregated data such that the aggregated data is in a condensed form with respect to the located data by not including all of the located data in the aggregated data; and
     program code for storing the aggregated data in the data storage system.

     12. The computer program product of claim 11, wherein the program code for identifying a policy for managing the data in a data storage system comprises:
     program code for retrieving aggregation metadata from a server to identify the policy, wherein the aggregation metadata contains information used to aggregate the located data.

According to the Examiner, the medium claims were "drawn to a form of energy." The Examiner explained that energy is "not a series of steps or acts and thus is not a process," "is not physical nor an object and as such is not a machine or manufacture," and "is not a combination of substances and therefore is not a composition of matter."

The Board affirmed some of the prior art rejections and reversed others. The Board did not reach the § 101 rejection of the "computer usable medium" claims, instead entering a new ground of rejection of the dependent claims under § 112 2nd Paragraph and/or 4th Paragraph. 

According to the Board, each of dependent claims 12-15 and 17 "purports to provide further limitations with respect to the 'computer program product' of the independent claim." However, as written the dependent claims do not require the "computer usable medium" of the independent claim. Therefore, each dependent claim is broader in this respect than the independent claim, and thus fails under § 112 4th Paragraph to further limit the claim from which it depends.

As to the indefiniteness rejection, the Board found that the scope of dependent claims 12-15 and 17 is not readily ascertainable because "the dependent claims appear to be directed to only a portion of the invention as set forth in independent claim 11." Therefore, an infringer "would not reasonably be apprised as to whether the 'computer usable medium' is required for infringement of the dependent claims."

My two cents: I've seen at least a dozen ways of formulating what is commonly referred to as a "computer readable medium" (CRM) claim. In some cases, like this one, it can be hard to figure out what exactly is being claimed. Presumably the "medium" is claimed because case law has recognized this as an article of manufacture. But why claim the "product"? And do you claim "code" (as was done here) or do you claim steps, or .... what?

As this case shows, formulating dependent claims for CRMs can be even trickier than for independents. I don't think Examiners are picky about this, so perhaps you don't see any reason to be concerned. But I think the Board was right, and you might as well write your dependent CRM claims properly. This sort of problem is trivial to fix – in fact, the Applicant here fixed it after the BPAI decision. So why wait for the Board – or worse yet, an accused infringer – to bring up a 112 Fourth problem?

One unusual aspect of this case was that no independent claims went up on appeal. The Applicant filed an After Final amendment which cancelled all independent claims and rewrote various dependents into independent form. However, the Examiner refused to enter the After Final amendment, noting in the Advisory Action that it "raised new issues that would require further consideration and/or search" ! So the Applicant withdrew the independent claims and a number of dependent claims in the Appeal Brief, and thus only dependent claims were considered by the Board.

Why did the Examiner refuse to enter the rewrite-dependent-into-independent-form amendments? Such an amendment doesn't change the scope of the claim, so logically, how could it require further consideration, much less a new search? The Applicant argued that the amendment put the case into "better form for appeal", which is a category of amendment that is allowed under § 1.116. Even if § 1.116 doesn't require the Examiner to enter it, it does sound like that one that MPEP 714.13 suggests should be entered, namely, it requires only cursory review:

Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection.

Finally, from a practical standpoint, how much work could it possible be for the Examiner to enter this? Is the Examiner just hoping to push the Applicants into an RCE?

One more observation. As noted above, when the Examiner refused to enter the After Final amendments, the Applicant reacted by "withdrawing" the independent claims in the Appeal Brief. The other option would be to file an After-Notice-of-Appeal amendment that rewrites the dependents into independent form. The rules for entry of amendments after appeal (§ 41.33) are different than the rules for entry After Final (§ 1.116), such that the Examiner is required to enter this same amendment after appeal.

BPAI finds Applicant did not properly claim priority to a PCT application

Takeaway: An Applicant argued on appeal that a reference was not prior art because the application on appeal "asserted" priority to a PCT application. The BPAI found that the priority claim was ineffective because it did not specify a relationship between the application on appeal and the PCT application. (Ex parte Gidwani, BPAI 2011.)

Details:

Ex parte Gidwani
Appeal 2010-005181
Application 10/272,812
Technology Center 1600
Decided June 28, 2011

The application involved claims to metformin, a drug used to treat diabetes. The Examiner rejected the independent claims as obvious over Matharu in view of Igari or Timmins.

During prosecution, the Applicant argued the merits of the primary Matharu reference.  In a footnote, the Applicant also argued that Matharu was not prior art: "MATHARAU was filed 27 June 2002. In contrast, the instant application asserts priority from a PCT application Serial No. PCT/IB2000/01404, filed on 2 October 2000. MATHARU thus does not qualify as prior art."

The Examiner responded in an Office Acton by indicating that "a review of the application does not reveal any evidence of national stage filing other than the first sentence of the spec. It is not claimed in the oath." The Office Action then reproduced portions of the MPEP referencing a petition for a delayed benefit claim under § 1.78.

The Applicant appealed the obviousness rejection, and once again argued both the merits of Matharu and its status as prior art. In the Appeal Brief, the Applicant argued that the specification contains a "specific reference to the prior application" as required by § 120 and "accordingly asserts an October 2000 effective filing date." The Appeal Brief reproduced the first paragraph of the specification:

CROSS-REFERENCE TO RELATED APPLICATIONS
Serial No. 09/857,077, filed April 2, 2002, for SUSTAINED RELEASE PHARMACEUTICAL COMPOSITIONS CONTAINING METFORMIN AND METHOD OF THEIR PRODUCTION, now pending, which is a national phase entry under 35 U.S.C. § 371 of PCT/IB00/01404 filed October 2, 2000, now pending.

The Applicant also addressed the Examiner's comment that national stage filing was not claimed in the oath:

The Examiner, however, ignores applicant's priority assertion, arguing that the Applicant must include its priority assertion not the Specification, but in the Inventors' Oath. Applicant respectfully disagrees because the Office's own procedural manual merely requires the priority assertion be made in "the application" - that is, in the oath, or in the specification, or in an application data sheet. See 35 U.S.C. § 120; MAN. PAT. EXAM. PROC. § 201.11. Applicant did precisely what the statute and the Office's own procedural manual requires. Matharu is thus not eligible as prior art.

In the Answer, the Examiner responded to the issue of Matharu's prior art status by pointing out that the statement in the specification did not identify "the relationship between the instant application and the application over which the priority has been claimed."

The BPAI found that the Applicant's specification did not identify a relationship between the application under appeal and the application mentioned in the Cross Reference section, as required by § 1.78. "Contrary to Appellants' contention, without a relationship, the Specification does not 'assert' an effective filing date for the invention claimed other than the filing date of the Application on appeal." The Board concluded that the claim to priority was not perfected, so that Matharu was prior art.

The Board then found that the Examiner had presented a prima facie case of obviousness, and so affirmed the rejection.

My two cents: Not really a lesson about appeal, but about claiming priority. It appears that this Applicant simply didn't understand the rules for claiming priority. Didn't do it right in the specification as originally flied. Didn't do it in the application transmittal as originally filed. Didn't file an ADS at filing. Didn't file a petition for a delayed benefit claim, which is how you fix this error if you don't catch it right after filing.

It appears that the Applicant realized the mistake after filing the appeal, since an ADS with a priority claim was filed while the case was awaiting a Board decision. Unfortunately, it was way too late for correction via an ADS. The Applicant should have filed a § 1.78 petition to perfect the priority claim, then filed an RCE to pull from Appeal and to tell the Examiner about the perfected claim. I'll bet the Examiner would have removed the Matharu reference.

BPAI reverses anticipation when Examiner relies on multiple embodiments

Takeaway: The Applicant appealed an anticipation rejection, arguing that the figures relied on by the Examiner described two separate embodiments. The Examiner took the position that since the reference did not explicitly state that the two embodiments were separate and "non-combinable", "they are treated as a single embodiment." The Board agreed with the Applicant summarily reversed, noting that "Joy’s silence as to how the processor operates with the multithreaded cache can only show what Joy fails to describe or teach, as opposed to an inference of what it does." (Ex parte Lee, BPAI 2012.)

Details:
Ex parte Lee
Appeal 2011008999; Appl. No. 10/453,226; Tech. Center. 2100
Decided  March 21, 2012

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

1. A cache system for a multithreaded processor having a single processing core and a plurality of active threads, the cache system comprising:
   a first thread micro-cache directly coupled to the single processing core; and
   a second thread micro-cache directly coupled to the single processing core,
   wherein the first thread micro-cache is assigned a first active thread and the second thread micro-cache is assigned a second active thread.

The Examiner rejected the independent claims as anticipated by Joy. The Examiner relied on a processor in FIG. 3 of Joy as teaching the multithreaded processor having a single processing core. The Examiner relied on FIG. 7A of Joy as teaching the claimed micro-caches and the claimed thread assignments.

In an After Final Response, the Applicant that the Examiner had improperly used two different embodiments from Joy in making an anticipation rejection. In an Advisory Action, the Examiner took the position that "[Slince there is no clear mentioning in the Joy reference that Fig. 3 and Fig. 7 are separate non-combinable
embodiments, they are treated as the same embodiment."

The Applicant appealed, arguing once again that the anticipation rejection improperly relied on multiple embodiments:

It is improper to assume that Joy or any other reference teaches something merely because the reference does not state that such a feature is not included. In order for a reference to anticipate or render obvious the limitations of a claim the reference must explicitly or implicitly teach or suggest the feature. ...  The processor configuration of Figure 3 and the cache 700 of Figure 7A are not directed to a single embodiment, as the Examiner states on page 16 of the final Office Action and in the Advisory Action.

The Applicant then referred to several sections of the Joy reference and explained how these sections related to different embodiments.

In the Answer, the Examiner repeated his earlier statement that "since there is no clear mentioning in the Joy  reference that Fig. 3 and Fig. 7 are separate non-combinable embodiments, they are treated as the same
embodiment."

The Board reversed the anticipation rejection with little discussion, merely noting that "we find Joy’s silence as to how the processor operates with the multithreaded cache can only show what Joy fails to describe or teach, as opposed to an inference of what it does."

My two cents: A good reminder to take a close look at anticipation rejections to see if multiple embodiments are involved. Unlike a lot of cases that take several rounds for the real issue to develop, the flaw in the rejection was apparent early in prosecution. I suspect the Examiner's Answer conference let this one go to appeal only because this was not the only prior art rejection of the independent claims. Still, the Examiner looks bad by taking such an untenable position and refusing to let go.

I have another post here that summarizes a few cases about multiple embodiments in the context of anticipation. You can also view today's case Ex parte Lee as a "silence in a reference" case. I've blogged about this general topic several times-- you can find those posts by picking "silence in a reference" from the Labels list on the right side of the blog.

BPAI overrules the Federal Circuit's analogous art test

Takeaway: In Ex parte  Leimkuhler, the BPAI held that the Federal Circuit test for non-analogous art "was subsequently broadened by the Supreme Court in KSR". According to the BPAI panel in Leimkuhler, "a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which one of ordinary skill in the art is concerned." In contrast, the Federal Circuit test (most recently enunciated in In re Klein) requires a reference used in an obviousness rejection to be either "in the field of applicant’s endeavor” or “reasonably pertinent to the particular problem with which the inventor was concerned.” (Ex parte  Leimkuhler, BPAI 2012.)


Details:

Ex parte  Leimkuhler
Appeal 2010-003914; Appl. 10/920,721; Tech. Center 1700
Decided:  February 28, 2012

The application related to methods of food packaging. A representative claim on appeal read:

1. A method of packaging and cooking a vegetable where the package protects the vegetable and serves as a cooking container comprising the steps of:
   selecting a vegetable from a group of different types of vegetables;
   preparing the selected vegetable;
   providing shrinkable plastic film;
   modifying gas permeability of the film according to the type of the selected vegetable to be packaged, wherein the step of modifying includes making a plurality of about 0.02 inch diameter holes in said film;
   attaching an opening system to said film;
   sealing the modified film around the selected vegetable;
   shrinking the film to tightly envelop the selected vegetable;
   marketing the enveloped vegetable;
   cooking the enveloped vegetable in a microwave oven; and
   operating the opening system to release the vegetable from the film.

The Examiner rejected all independent claims, as well as a number of dependent claims, as obvious using a combination of 7 references.

The Applicant made several non-obviousness arguments on appeal, including non-analogous art. The Applicant began the argument by stating the analogous art test from In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992) which defines an analogous art reference as one that is either "in the field of applicant’s endeavor” or “reasonably pertinent to the particular problem with which the inventor was concerned.”

Next, the Applicant stated the field of the invention as "facilitating the packaging and microwave cooking of a fresh vegetable where the package protects the vegetable, and serves as a cooking container." The Applicant then analyzed the field of each of the 7 references, arguing that none of the references was in the field of the invention.

The Applicant further identified the problem with which the inventor was concerned as "providing an opening system for a packaging holding a vegetable for microwave cooking where the packaging (used for storage, transport and cooking as well as being conducive to vegetable respiration while controlling moisture loss during storage, transport and cooking) can be opened while still very hot."  The Applicant then analyzed the problem solved by each of the 7 references, arguing that none of these problems related to the problem addressed by the inventor.

The Board held that the Federal Circuit test was no longer valid because it had been superseded by KSR. The Board explained that:

The[Federal Circuit test from In re Oetiker], however, was subsequently broadened by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-420 (2007) which stated that: "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls…. The first error of the Court of Appeals in this case was… by holding that courts and patent examiners should look only to the problem the patentee was trying to solve." The Supreme Court explained that “[w]hen a work is available in one field of endeavor, design incentives and other market forces [(not the subjective intent of inventors provided in the Specification)] can prompt  variations of it, either in the same field or a different one.” KSR Int'l Co., 550 U.S. at 417. In other words, a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which one of ordinary skill in the art is concerned. This broadened analogous art test suggested by KSR is consistent with the language of 35 U.S.C. § 103 which requires us to focus on one of ordinary skill in the art, rather than the subjective reason given by inventors in the Specification, in evaluating the content of the prior art to determine the propriety of obviousness. While any advantages or problem solving intended by inventors as described in the Specification may be considered as relevant secondary evidence, they are not controlling in terms of evaluating the contents of the prior art references for the purpose of determining appropriateness of their combinability. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
(Emphasis added.)

The Board also found that all 7 references were analogous art under the Federal Circuit test, qualifying under either prong. For the first prong, he Board found that the field of the Applicant's invention was "packaging and/or cooking vegetables," as was that of all the references. As to the second prong, the Applicant's invention was "directed to solving problems associated with packaging vegetables for storage, cooking vegetables, and/or removing items, including cooked items, from packages." This problem "would have logically commended themselves to the inventors’ attention, who are considering storage, cooking,
and removal of vegetables in a package that are or will be subjected to heating in a microwave oven."

The Board went on to reverse the obviousness rejection after finding that the Applicant's expert evidence overcame the Examiner's prima facie case.

My two cents: From a procedural point of view, it's weird that the Board overruled the Federal Circuit without explicitly acknowledging that it did so. The Board should have at least said something like "We find that the Federal Circuit's most recent statement of the non-analogous art doctrine to be in conflict with the Supreme Court's KSR decision." (I'm assuming that Supreme Court precedent is the reason the BPAI felt it could overrule the Federal Circuit.)

From a substantive point of view, I think the Board got it wrong. First of all, the Supreme Court's discussion of the "problem" in KSR was in the context of the central question of TSM: 
[T]he Federal Circuit has employed an approach referred to by the parties as the "teaching, suggestion, or motivation" test (TSM test), under which a patent claim is only proved obvious if "some motivation or suggestion to combine the prior art teachings" can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. 

Second, the issue in KSR was not analogous art, but whether Teaching-Suggestion-Motivation is the only test for obviousness. The Supreme Court said the answer is No. The BPAI panel in Leimkulher was correct, of course, that  the Supreme Court went on to say that "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." But that applies to the overall determination of obviousness, not to the threshold question of whether a reference is analogous.

The universe of prior art allowed under the Federal Circuit's analogous art doctrine is broad enough. Under the doctrine used by the BPAI in Leimkuhler, the universe of prior art is almost infinite.

BPAI uses foreign patent by same inventor to determine field of the invention for non-analogous art analysis

Takeaway: The Applicant appealed an obviousness rejection of claims directed to floor panels and argued that two of the three references were non-analogous art to the claimed invention. In deciding the question of non-analogous art, the BPAI looked at statements in another foreign patent publication by the same Applicant to determine the problem with which the Applicant was involved.  (Ex parte Grafenauer, BPAI 2012.)

Details:
Ex parte Grafenauer
Appeal 2010001906; Appl. No. 11/533,634; Tech. Center 3600
Decided  February 29, 2012

The application on appeal was directed to floor panels. A representative claim on appeal read:

1.  A connecting element for connecting flooring panels with a core of wooden material, comprising
     a tongue on one side edge and a groove on an opposite side edge,
     wherein the tongue corresponds to a groove of a panel and the groove on the opposite side edge corresponds to a tongue of the panel, and
     two lips lying opposite one another embodied on a top side projecting beyond the one side edge and the opposite side edge,
     wherein the two lips are configured to provide a sole sealing mechanism.

The Applicant appealed an obvious rejection which combined three references. The Applicant argued that the two of the three references were not analogous art to the claimed invention. The third reference was a German patent publication to floor panels by the same Applicant, not a priority document for the application on appeal.

In deciding the issue on non-analogous art, the Board first stated the two-prong test, most recently summarized by the Federal Circuit as:

1. whether the art is from the same field of endeavor, regardless of the problem addressed and, 
2. if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.
   In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 6 2004))

The Board then turned to the problems addressed by the inventor and by the references. The Applicant's specification described one problem addressed by the inventor: "preventing moisture from penetrating through a joint into the core of a flooring panel."

Having discovered the problem addressed by the inventor, the Board turned to the first reference at issue, Foy. Foy was not directed to flooring systems, but did describe a resilient seal in contact with a window panel. The Board found Foy was analogous art because Foy's teachings were reasonably pertinent to the inventor's problem of preventing moisture from penetrating through a joint into the core of a floor panel. 

Turning to the second reference at issue, Andrzejewski, the Board noted that Andrzejewski described not merely a sealing strip, but one including an embedded metal carrier 8 designed to grip an edge flange or tongue." The Board found, by referring to the Applicant's German publication, that the inventor had more specifically addressed "the moisture problem by providing a tight connection on the top of the joined panels." The Board found corroborating statements in the Applicant's specification. Therefore, the Board reasoned, "Andrzejewski is reasonably pertinent to the Applicant's problem of locking connected panels in the transverse direction without the necessity of adding glue to the grooves or tongues used for locking the panels so as to tighten the connection on the top of the joint between a flooring panel and the connecting element."

The Board then distinguished In re Klein:

In Klein, our reviewing court criticized the Board for attempting to redefine in general terms the particular problem with which the applicant was involved. See id. at 1351 n.1. Here, the statements of the problems with which the Appellant was involved were taken from the Appellant’s Specification and from the Appellant’s statements in Grafenauer. In Klein, our reviewing court also criticized the Board because the cited references addressed a problem different from that with which the applicant was involved, namely, separating solid objects rather than “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” Id. at 1350-51. Here, the references address the same sealing and joint tightening problems addressed by the Appellant. The Appellant points to nothing in the holding of Klein inconsistent with finding that Foy and Andrzejewski are not non-analogous art.

My two cents: Wonder why the Board even brought up the Applicant's German patent publication? I say that because the Applicant's own spec discussed the problems addressed by the invention, so why bother to look elsewhere? Perhaps the Board read the German publication in order to evaluate it as a reference, happened to see some stuff about the problem solved, and decided to incorporate these statements into its reasoning. 

On the other hand, it wouldn't seem as weird if the Applicant's own spec was completely missing a discussion of problems solved by the invention. In such a case, how does one perform an non-analogous art analysis? Creative answer: look to other statements by the inventor.

I think this use of extrinsic evidence has to be circumscribed. Surely patents by the same inventor but directed to bird feeders won't help us learn about the problems this inventor was addressing in his floor panel application. In fact, I think the other application has to be really, really similar. Not just the field of floor panels, but about sealing between floor panels.

What other factors are relevant in deciding what sort of sources we can look to in understanding the inventor's problem? Does it matter than the application on appeal and the application used to learn about the problem have the exact same set of inventors? Here, that was the case. Does it matter that the two applications have the same assignee? Couldn't tell if that was the case here.

I can see a reexam requester using this sort of creative strategy.  Patents outside the US often contain lots of statements about problems and solutions. So suppose the patentee's own German patent publication is used in an obviousness rejection, and the patentee makes non-analogous art arguments. Then the reexam requester rebuts the non-analogous art argument by showing that the problems are similar. And if the patent under reexam doesn't describe the problem solved by the inventor, looks to related patents/pubs by the same inventor that do describe the problem.

The German reference published two years before the priority date of the application on appeal. The German reference never issued as a patent, and was instead revoked during an opposition.

BPAI not persuaded by Examiner's "design choice" rationale for door placed in rear wall of fireplace tray

Takeaway: In rejecting claims to a fireplace accessory as obvious, the Examiner found that the claimed placement of a hinged door was a "matter of design choice" and that "it would be obvious to place the hinged cover in any convenient location, including the rear of the fireplace tray." The Board disagreed with the Examiner's "any convenient location" rationale, explaining that the reference taught placing the door in a specific location, different than what was claimed. (Ex parte Brown, BPAI 2011.)

Details:



Ex parte Brown
Appeal 2009012485; Appl. No. 10/940,994; Tech. Center 3700
Decided:  August 25, 2011

The application on appeal related to a fireplace. A representative claim on appeal read:

1. A removable fireplace cleanout, comprising:
    a debris collection tray having a floor pan defining a periphery and a plurality of sidewalls extending upward from the periphery, including a front wall, a rear wall, and first and second lateral sidewalls, the rear wall having an opening defined therein;
    a debris dump door panel having an upper edge and a lower edge;
    a weight mounted adjacent the lower edge of said debris dump door panel; and
    at least one top-mounted hinge pivotally attaching the upper edge of the dump door to the rear wall of the tray,
    whereby the dump door closes the opening in the rear wall when the tray is level and swings open by gravity when the tray is tilted so that the rear wall is downward.

The Examiner rejected the claims as obvious over a combination of two references. The first reference, Taylor (see figure below) allegedly taught the claimed tray (20) having walls including a rear wall (26).

Taylor's fireplace tray

The secondary reference, Wagg (see figure below) disclosed an ash retaining apparatus. Wagg was relied on for teaching the claimed door panel (46), hinges (48) and weight (60).

Wagg's ash retainer

More specifically, the Examiner took the position that the door panel (46) in Wagg included a moveable handle cover (60) which operated as a weight. The Examiner also asserted that "the Wagg door is obviously capable of performing those functions [of opening and closing], as the door is hinged and disclosed to be movable." As a reason for adding Wagg's door panel to Taylor's tray, the Examiner offered the benefit of "guid[ng] ashes into the ash retaining enclosure, such as a garbage can."

The Applicant appealed and made several arguments against the combination. In one of these arguments, the Applicant addressed the Examiner's findings about Wagg's door handle acting as the claimed "weight." According to the Application, the arbitrary weight of the door handle would not "close the opening in the real wall when the tray is level" as claimed. Further, the person of skill in the art would have no reason to weight the door appropriately to achieve the claimed function since the only function of Wagg's door handle is to manipulate the door, and increasing the weight of the handle would make this task more difficult. Finally, the Applicant argued that the combination did not teach the specific claimed placement of the hinged door in the rear panel.

In the Answer, the Examiner took the position that the claimed placement of the hinged door was a "matter of design choice" and that "it would be obvious to place the hinged cover in any convenient location, including the rear of the fireplace tray."

The Applicant did not file a Reply Brief.

The Board disagreed with the Examiner's "any convenient location" rationale, explaining that Wagg taught a person of ordinary skill in the art to place the door in a specific location: "over an open end of an ash receiving chamber, in order to seal the ash retaining chamber from the external environment."

The Board also criticized the Examiner for not clearly explaining how Taylor's tray and Wagg's door would be combined. The Board addressed two possible variations of how the Examiner might have modified Taylor with Wagg, and found both of them deficient in either teaching the claimed elements or having a rational reason to combine.

The Board considered the first alternative, in which Wagg's door was placed over the top opening of Taylor's tray, in order to have the hinge top-mounted to seal the ash chamber. But the Board noted that such a modification did not satisfy the claim language of "a rear wall having an opening." Finally, the Board found that the Examiner had improperly treated the "whereby the dump door closes when ... and swings open when ..." as intended use so that Wagg's door need only be capable of performing these functions.

The Board then considered the second alternative, in which Taylor’s tray was modified by Wagg to have an opening in the rear wall, and to have a hinged door cover the opening. But in that case, the Examiner's articulated reasoning of “guid[ing] ashes into the ash retaining enclosure" made no sense, since Wagg did not teach that the door performed this function, and in fact taught a different component for guiding ashes.

My two cents: Is it really this easy to beat a design choice rationale? The Board implied that the design choice rationale was defeated by Wagg's teaching of a specific location for the claimed door panel. Yet almost all design choice rejections are based on modifying a specifically taught location/size/shape/ parameter to produce the claimed feature. So this reasoning surprises me.

I think the Applicant had strong arguments about the claimed weight element, and did a good job of explaining why this feature didn't make sense in the combination proposed by the Examiner.

The Board seemed to reverse using slightly different reasoning that used by the Applicant. That is, the Board didn't mention the weight element, and instead dealt solely with the position of door panel with respect to the rear wall. Here, too, the Board did a good job of explaining why it wouldn't make sense to have Taylor's opening in the rear wall covered by a door panel.

Seems like the Board bent over backwards to understand the Examiner's position on how Taylor's tray was combined with Wagg's door. Could have simply said "Examiner didn't explain how the combined features result in the claimed apparatus" and reverse on those grounds.

Postscript: Unfortunately for the Applicant, it took more than six months after the BPAI's reversal for the Examiner to issue a Notice of Allowance.