BPAI not persuaded by Applicant attack on timeframe of allegedly "conventional" features

Takeaway: An Applicant appealed a single reference obviousness rejection of claims to an automotive brake light. During prosecution, the Examiner asserted that two claimed features not disclosed by the reference were "typical" or "conventional." The Applicant attacked the obviousness rejection by arguing that the these assertions improperly considered knowledge at the time of the rejection rather than the time of the invention. In the Answer, the Examiner went further with regard to one of the features, asserting that "lens means have been employed for many decades in brake light devices." The Board adopted the Examiner's findings and affirmed the rejection, noting that the "many decades" time period included the time of the invention and that the Applicant did not offer any further explanation to rebut obviousness. (Ex parte Heller BPAI 2012.)

Details:
Ex parte Heller
Appeal 2010002978; Appl. No. 10/354,842; Tech. Center 2600
Decided: April 17, 2012

The invention related to an automotive brake light using an illuminated trademark or logo. One of the claims on appeal read:

37. A vehicle symbol illumination apparatus operable in conjunction with a vehicle braking or lighting system consisting essentially of:
     one or more light sources;
     one or more light-transmissive portions;
     one or more non-light transmissive portions;
     wherein said one or more light-transmissive portions are encased by said one or more non-light transmissive portions so as to form a logo, symbol or trademark associated with a vehicle model or vehicle manufacturer;
     wherein said one or more light transmissive portions illuminate in conjunction with the activation of the vehicle braking system;
     wherein said apparatus is to be located upon production substantially in the center of the trunk, spoiler, air dam or roof of the vehicle;
     wherein said one or more light transmissive portions illuminate upon the braking of the vehicle simultaneously performing the function of the mandated high-mounted stop lamp and as a logo, symbol or trademark associated with a vehicle or vehicle manufacturer now merged together to form a single component of original manufacturer's automotive
equipment; and
     wherein said light transmissive portion is a lens allowing illumination upon braking of the vehicle.
(Emphasis added.)

The Examiner rejected claim 37 as obvious over a single patent reference, Lee. The Examiner acknowledged that Lee did not disclose the "trunk" limitation, but asserted that brake lights are "typically" placed on trunks, and thus it would be obvious to modify Lee to use this location in order to intensify the illuminated appearance of the vehicle. The Examiner also acknowledged that Lee did not disclose the "lens" limitation, but asserted that "it is conventional in the art to use lens means to allow brake light illumination to pass in high mount brake light systems."

On appeal, the Applicant argued that Lee did not teach the "encased" limitation. The Applicant then argued that modifying Lee to use a trunk location would require "extensive tooling and redesign," so that a POSITA would not be motivated to use the claimed location. Finally, the Applicant attacked the Examiner's findings about a "typical" location and a "conventional" use of a lens, on the basis that these findings did not take into account the relevant timeframe, which is the time of the invention rather than the time of the rejection. "Further, to the extent the Examiner is considering what is typical [or conventional] now, he has overlooked the fact that the obviousness inquiry focuses on the time period of when the invention was made." (Citing W.L. Gore & Assocs. Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).)

The Board affirmed the rejection. The Board first found that the Applicant's interpretation of "encased" was too narrow, and that Lee disclosed this limitation under a proper interpretation. The Board was not persuaded by the redesign argument, instead finding that a POSITA "can choose the specific location merely depending on the style of vehicle and aesthetic effect desired by a vehicle manufacturer," making such a choice obvious. Finally, the Board was not persuaded by the Applicant's obviousness timeframe argument:

We ... adopt the Examiner’s finding that the use of a lens would be obvious because lens have been employed for many decades, including the relevant time period, in brake light devices. (Ans. 7). Appellant has not offered any further explanation to rebut the Examiner’s assertion that the use of a lens would have been obvious.
(Emphasis added.)

My two cents: I know some practitioners who view the timeframe for obviousness as a weak point in most rejections. Some would probably say the Examiner hasn't actually made a prima facie case without a showing that the missing feature and/or the rationale-for-combining was known at the time of the invention.

Yet I never see this argument made. And this case seems to illustrate why not. While it may be true that the Examiner did not make a showing that lens were known and used in brake lights in 2003, who's going to go on record and actually say that they weren't? Nobody. So the best you can do is make the Examiner shore up his case with evidence, or perhaps an explicit taking of Official Notice. Perhaps that's all the attack-the-obviousness-timeframe-finding argument is meant to do.

In the end, the Board seemed to treat the Examiner's statement about the lens as quasi-Official Notice. Not surprisingly, the Applicant didn't bother to refute the statement that lens were known in 2003, nor that it was obvious in 2003 to employ a lens for a light transmissive portion of an illumination apparatus.

BPAI reverses anticipation rejection using trademark registration to support inherency theory

Takeaway: During a reexamination appeal, the BPAI reversed an anticipation rejection involving a trademark registration. The rejection was based on a print advertisement for a product in conjunction with the trademark registration for that product. The trademark registration listed four goods, only one of which corresponded to the claim limitation at issue ("wire glass"). The Board found that since the registration listed goods other than the claimed variety of glass, the trademark in the ad was not evidence that the publication necessarily described the claim limitation at issue. Therefore, the Board reversed the anticipation rejection. (Anemostat Products v. O'Keefe's, Inc., BPAI 2011.)

Details:

Anemostat v. O'Keefe's, Inc.
Appeal 2011005771
Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016
Patent US 7,090,906 B2
Technology Center 3900
Decided  September 29, 2011

A patentee with an independent claim to a "fire resistant safety glass" appealed a § 102(b) rejection in a reexamination. The limitation at issue was "a piece of wire glass."

The publication used in the rejection was a print advertisement in a magazine. The ad identified the product as FireLite NT, and described the product as "an impact safety/fire-rated window glazing material. Product is made with abrasion-resistant 3M® Scotchshield® Ultra Film." Since the ad did not include the "wire glass" limitation, the Examiner relied on an inherency theory, based on a US trademark registration for FireLite NT. Specifically, the Examiner relied on the description of goods in the trademark registration, listed as "fire-rated and impact safety-rated glazing material for building windows, doors and partitions; namely sheet glass, wire glass, laminated glass, and multiple glass."

The Board reversed the Firelite NT rejection, finding that the trademark's description of goods was not enough to show that the advertised product necessarily included "a piece of wire glass" as claimed.  While the trademark showed that the product was used for one of four different glass products (sheet glass, wire glass, laminated glass, and multiple glass), it did not show that the product mentioned in the ad was wire glass rather than one of other three varieties of glass. The Board then cited In re Robertson for the proposition that "[i]nherency is not established by probabilities or possibilities. (In re Robertson, 169 F.3d 743, 745, (Fed. Cir. 1999)).

My two cents: I thought this was worth blogging about because it's unusual to find a trademark registration used in a rejection. (Although all kinds of unusual prior art shows up in reexamination).

Nothing wrong, in theory, with a rejection based on a trademark registration. In fact, this would have been a slam dunk rejection had the only good listed been the claimed "wire glass."

More interesting question: could the Examiner/requester have turned this into an obviousness rejection? With the ad being a primary reference used to teach a generic limitation "fire-rated and impact safety-rated glazing material" and the registration used to one show that the specific limitation "wire glass" was one of merely four options for the type of glass?

Prosecution tip: Using an RCE to suspend prosecution

Takeaway: An Applicant filed an RCE to pull from appeal in order to file declaration evidence of non-obviousness. While doing so, the Applicant took advantage of a little-used rule (§ 1.103(c)) to request suspension of prosecution for three months, thus giving the Applicant time to obtain the declaration. The Applicant then filed expert evidence under § 1.132 before the close of the suspension period. (Application of Hermann, Appl. No. 09/817,797, Tech. Center 2800, available on Public PAIR.) 

Details: There are two mechanisms by which an Applicant can request suspension of prosecution. You can file a petition under § 1.103(a), which requires a showing good and sufficient cause. Or you can request suspension under § 1.103(c) by simply checking a box on the RCE transmittal. No reason for the suspension is required. However, note that the request for suspension does not itself serve as the "submission" required to be filed with an RCE. Therefore, you should also file a response to the Final Office Action or refer to a previously filed After Final.

My two cents:  I think this route sounds like a very useful option once you decide to file declaration evidence. Typically, you're at final when you realize that declaration evidence is what you need to beef up your position. That means you're already going to need to file an RCE. So for a relatively small fee (currently $130), you can buy yourself an extra three months to obtain the declaration from the inventor or other expert. That's way cheaper than paying EOTs.

Postscript: Unfortunately, the declaration evidence didn't work for the Applicant in 09/817,797.  The Examiner not only found the declaration unpersuasive, the Examiner stated that "the declaration fails to teach why the device recited in the claims of the instant application is workable" and then gave a new enablement rejection. The Applicant submitted another declaration to address both the enablement and prior art rejections. The application is currently on appeal.

BPAI affirms obviousness, finding that lots of of obvious choices does not make claimed choice non-obvious

Takeaway: The Applicant appealed an obviousness rejection of claims to a combination of a detergent and a container. In addition to teaching the claimed container, the secondary reference also taught that the container provided "customer friendly dispensing." According to the Applicant, the prior art included an infinite number of other containers that would be suitable for a detergent. Therefore, the Applicant said, the Examiner had used advantages of the container gleaned from the Applicant's specification, viewed in hindsight, to arrive at the claimed combination. The Board affirmed the rejection. The Examiner's rationale came from an express teaching of the reference, not hindsight. As for the Applicant's argument about the number of possible containers, "[t]he fact that it would have been equally obvious to use other containers for Gutierrez’s detergent does not make the use of Seifert’s container any less obvious." (Ex parte Buzzaccarini et al., BPAI 2011.)

Details:

Ex parte Buzzaccarini et al.
Appeal 2010009418; Appl. No. 11/799,800; Tech. Center 1700
Decided  July 13, 2011

The application on appeal involved laundry detergent.  The independent claims were directed to a combination of a detergent and a container.

1. An article of commerce for laundering comprising:
     (a) a shear-thinning, compact fluid laundry composition comprising a sum of water and non-aminofunctional solvent of from about 5% to about 45%, by weight of the composition; and
     (b) a water-insoluble container releasably storing said compact fluid laundry detergent composition;
     wherein said composition has a neat viscosity, Vn, of from about 1,000 cps to about 10,000 cps as measured at 20 s-l, and a diluted viscosity, Vd, that is less than or equal to about 0.5Vn, as measured at 20 s-1; and
     wherein the water insoluble container is selected from bottom dispensing containers that are capable of preventing olfactory access by a consumer to a head space co-located with the compact fluid laundry composition in the water-insoluble container during dispensing of the compact fluid laundry composition.

A final Office Action included an obviousness rejection for the independent claims. The obviousness rejection relied on: a primary reference for the claimed composition except for the specific viscosity values; a secondary reference for the claimed container; and a third reference as evidence that the claimed composition would inherently possess the claimed viscosity.

On appeal, the Applicant argued, at length, that a POSITA would not be motivated to combine the composition and the container since there are an infinite number of choices for each:

     The only motivation the Examiner provided for the employment of the container of Seifert et al. to hold the composition of Gutierrez et al. was to contain and dispense the liquid detergent in a customer friendly fashion.
     However, without further motivation, Applicants submit that there are an infinite number of containers, besides just the bottom dispensing containers as recited in Applicants' claim 1, that are suitable for customer friendly packaging of a sheer-thinning fluid laundry composition. Applicants further submit that there are an infinite number of fluid laundry compositions, besides just the particular sheer-thinning fluid laundry composition as recited in Applicants' claim 1, that are suitable for customer friendly packaging in a bottom dispensing container.
   In light of the endless number of possible combinations of fluid laundry compositions and containers, Applicants' specification provides the advantages of the particular article of commerce as recited in claim 1. Such advantages include the conservation of resources and the elimination of waste (through a more concentrated, and therefore viscous, composition that does not sacrifice performance), as well as packaging that provides improved ease of measurable dispensing and aesthetic appeal to consumers. Additionally, the creation of such an article of commerce requires an interdisciplinary collaboration between fluid laundry composition formulators and packaging engineers. Thus, Applicants contend that the Examiner's combination of Gutierrez et al. in view of Seifert et al. when taken with Kott et al. is a product of impermissible hindsight reconstruction, wherein the Examiner has improperly utilized Applicants' specification as a roadmap.

In the Answer, the Examiner maintained the asserted motivation to combine ("to contain and dispense the liquid detergent in a friendly fashion") and defended the motivation as follows:

In this case, certainly, applicant would agree that the cleaning composition of Gutierrez et al. is obviously offered to consumers in some form, or type, of container. All cleaning products come with a container inherently. The only question remains, is the type of container, and whether it is well known in the art or not. Therefore, the appellant's assertion (pages 10, 11, and 12) that examiner's rejection has impermissibly utilized the current application as a road map for hindsight reconstruction, is respectfully disagreed with.

The Board affirmed the obviousness rejection. The Board first found that the primary reference did teach the claimed composition, and that the combination was obvious because "Seifert expressly suggests the use of the container for laundry detergent." The Board then dismissed the Applicant's "infinite choices" argument as follows:

This argument is not persuasive, because Seifert expressly suggests the use of its bottom dispensing container for laundry detergents (FF 5). Thus, Seifert would have suggested using the container with any liquid detergent, including the detergent of Gutierrez. The fact that it would have been equally obvious to use other containers for Gutierrez’s detergent does not make the use of Seifert’s container any less obvious.
(Emphasis added.)

My two cents: This case really highlights the huge differences between how inventors and patent attorneys view obviousness and how the court sees obviousness. In the inventor view, even if all containers are known, the inventor evaluates each one to determine whether it makes sense to use. Such an evaluation takes time, so that the larger the number of choices, the less obvious it is to choose any particular one.

This case suggests to me that the way the courts view obviousness, all the possible types of containers and the advantages of each are not only available to the inventor, but are instantaneously available. Sure, the Seifert reference was one of many [hundreds? thousands?] containers for liquids, but it isn't as if the inventor had to read all of the references, one by one. The inventor already knows that Seifert's container is advantageous for detergents. And knows about all other types of liquid containers and their advantages. Simultaneously.

It seems like the courts think that in predictable arts, choosing among any finite number of options is obvious because the evaluation is cost-free.

Maybe I'm reading too much into the BPAI's reasoning.. Maybe the courts don't really feel that evaluating a finite number of options has no cost whatsoever. Maybe the courts only feel that evaluating options is part of the inventive process, which means we don't reward inventors for simply going through the process.

Except that in some scenarios, the cost of evaluating options must surely be prohibitive. And picking a particular one really is inventive.

Shouldn't the obviousness analysis take this into account? It seems like when the court chooses to use the "finite number of identified, predictable solutions" rationale, the court should look at the number of options, the cost of evaluating each one, and the benchmark used to determine whether the cost is prohibitive.

Maybe in some technology areas, thousands of options can be easily modeled via computer. Under those facts, maybe an inventor doesn't deserve a patent for merely selecting one option among thousands.

Maybe in other fields, evaluating even a dozen options has a high cost. Under those facts, maybe an inventor does deserve a patent for choosing one option.

BPAI finds "single unitary computer program" reads on two programs in reference based on Applicant's minimal description of claimed program

Takeaway: On appeal, the Applicant argued that the reference's teleconferencing feature did not anticipate the limitation "single unitrary conference program" because the reference required two separate programs in order to provide the teleconferencing feature. The BPAI found that "single unitary computer program" read on two programs in the reference because the Applicant had almost no description of the program: merely a single rectangle in a figure. "Absent a description of the details of what might be contained in [Applicant's] rectangle 106, we do not see how the present limitations might distinguish over Nakayama ... We fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) [in the reference] cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication." (Ex parte Ditzik , BPAI 2012.)

Details:

Ex parte Ditzik
Appeal 2009014097; Appl. No. 11/023,361; Tech. Center 2600
Original Decision:  November 30, 2011
Decision on Rehearing: April 30, 2012

A representative claim on appeal read:

23. A data conferencing system comprising:
a first conferencing computer
...
wherein the first conferencing computer is configured to a personal computer configured to run an operating system, a single unitary computer conferencing program adapted to real-time communication, and a plurality of personal computer application programs ...
(Emphasis added.)

 The Examiner rejected the independent claims as being anticipated by Nakayama. The Applicant amended to add the qualifier "single unitary," and argued that the conferencing function in Nakayama required two programs on a computer: an interlocution object program and an interloction conrol program. Thus, Nakayama did not satisfy the "single unitary" limitation, according to the Applicant.

The Examiner maintained the rejection and disagreed with the Applicant's characterization of the reference. The Examiner asserted that "the only functionality required of Applicants conferencing program is to achieve real-time communication," which Nakayama achieved with the interlocution control program alone. Thus, the "interlocution object program is not necessary for real-time communication."

The Applicant repeated the argument on appeal. The Examiner maintained his position and elaborated on it, explaining that while the did recite a "single unitary computer conferencing program," it did not require that the entire conferencing operation be accomplished with a single program -- only that it be "adapted to real-time communication". The Examiner again asserted that Nakayama's control program performed real-time communication, cited to several specific sections of the reference.

The Board affirmed the rejection, focusing on what "single unitary computer conferencing program" meant in the context of Applicant's disclosure. The Board noted that the claimed program was barely described at all:

The only description of the "realtime tele-writing conferencing program 106" in the written description consists of the words "realtime tele-writing conferencing program 106."
...
Appellant’s disclosure does not describe the actual components that make up the “conferencing
program” 106. A practical application of the “conferencing program” might include various other “programs” that make up the overall conferencing program (e.g., a program for data acquisition and a program for data transfer). Absent a description of the details of what might be contained in rectangle 106, we do not see how the present limitations might distinguish over Nakayama, even if we were to accept all of Appellant’s arguments concerning the operation of the interlocution “control” and “object”
programs of the reference.

The Board further noted that the phrase "single unitary" did not appear at all in the specification, and the Applicant relied solely on one of the figures as the basis for the limitation.

Appellant’s argument reduces to the contention that instant Figure 4B shows one rectangle for program 106 and Nakayama shows two separate rectangles [designated Interlocution Control Program and Interlocution Object Program]. ... [W]e fail to see how, for example, the combination of programs depicted in two rectangles (e.g., 100A, 120A) cannot be considered a “single unitary” or “integral” computer conferencing program adapted to real-time communication.

My two cents: The argument between the Applicant and the Examiner boils down to a "where do you draw the box" argument. The Examiner drew a box around the control program and mapped that to the claimed "conferencing program," then said the reference anticipates because the box meets the limitation "single unitary". The Applicant drew a box around the control program AND the interlocution program and mapped that to the claimed "conferencing program," and said no anticipation because the box does not meet "single unitary."

The Board refused to play this game and said: It doesn't matter where you draw the box in this case. The Applicant did nothing more than label a box with the text "conferencing program." Doing so doesn't give the program a "single unitary" structure.

The Board essentially ignored found the "single unitary" qualifier meaningless given the lack of detail in the Applicant's disclosure.

I see "where do you draw the box" issues in mechanical cases too, but there is usually a lot less room for maneuvering by either side. And I've definitely seen the Board reverse when the Examiner drew the box in a completely arbitrary or nonsensical way. Many computer cases are definitely vulnerable to this sort of rejection.

BPAI finds § 1.132 is improper mechanism for swear behind, even if some facts are within personal knowledge of attorney

Takeaway: In attempting to antedate (swear behind) a reference with a showing of conception then diligence, the Applicant first submitted a declaration under § 1.131 signed by the Applicant's attorney. When the Examiner indicated that a  § 1.131 declaration must be signed by the inventors, the Applicant refiled the attorney-signed declaration under § 1.132. The BPAI found both declarations to be insufficient, noting that the first was insufficient because it wasn't signed by an inventor, and the second because only a § 1.131 declaration is available for swearing behind a reference. (Ex parte Flynn, BPAI 2010.)

Details:

Ex parte Flynn
Appeal 2009008768; Appl. No. 11/550,050; Tech. Center 2100
Decided: March 11, 2010

The technology in the application on appeal involved a computer simulator for remote control locomotive systems. All claims were rejected as obvious. The Applicant attempted to remove a primary reference in one of the obviousness rejections by antedating, or swearing behind, the reference. One of the issues on appeal was whether the swear-behind declaration was effective.

In a first attempt to antedate the reference, the Applicant filed a § 1.131 declaration which purported to show conception "prior to 2002 and the March 2002 date of the Transport Technology reference" and diligence "from prior to 2002 to the filing of the parent application on June 25, 2002."  The declaration was filed with supporting documentation that included: a nine-page invention submission form; client correspondence authorizing the preparation of a patent application; and several more items of client correspondence with attached copies of a draft application, inventor comments, and a revised draft. Though the declaration was styled as a  § 1.131 declaration, it was executed by the Applicant's representative rather than the inventors.

In the next Office Action, the Examiner explained that the declaration was defective because a § 1.131 declaration must be executed by the inventors. The Examiner also found the evidence insufficient to establish conception or diligence.

In a second attempt to antedate the reference, the Applicant filed the same set of papers, once again executed by the Applicant's representative. But this time the declaration was styled as a § 1.132 declaration.

In the Answer, the Examiner found the § 1.132 declaration insufficient to swear behind the reference, explaining that § 1.131 is the only mechanism available for antedating. The Applicant did not file a Reply Brief.

The Board found both declarations to be ineffective in antedating the reference. The Board noted that plain language of § 1.131 requires an antedating declaration to be signed by all the inventors. Thus, the first declaration was ineffective. The Board found that the second declaration was also ineffective because § 1.132 is an improper mechanism for antedating:

A declaration under 37 C.F.R. § 1.132 is improper for antedating a prior art reference where such declarations are specifically provided for under 37 C.F.R. § 1.131. Rule 1.132 is essentially a default rule, allowing applicants to traverse rejections/objections where no other rule provides for a means (through declaration practice) to do so – “any evidence submitted to traverse the rejection or objection on a basis not otherwise provided for must be by way of an oath or declaration under this section.” 37 C.F.R. § 1.132 (emphasis added). Rule 1.131 specifically provides the means by which a prior art reference may be antedated, i.e., it is a basis that is “otherwise provided for.”

The Board further explained that a § 1.132 declaration could be used in conjunction with a 1.131 declaration. That is, the Applicant could have submitted a § 1.131 declaration executed by the inventors, along with a § 1.132 declaration of facts within the personal knowledge of the representative. Finally, the Board noted that the Applicant could have used a § 1.183 petition to request a waiver of the invention signature requirement.

My two cents:  It appears that the attorney stuck to § 1.132 because some of the facts relating to diligence were facts within the personal knowledge of the attorney rather than the inventor. Even so, the rules seem pretty clear that § 1.131 is what you use for a swear-behind. And as the Board noted, you can file the § 1.131 in conjunction with a § 1.132 signed by the attorney and attesting to the attorney's personal knowledge (e.g., diligence).

I suppose an inventor could attest to facts of receiving a draft, responding with comments, and receiving a revised draft. But here, the attorney attested to "due diligence" being exercised from conception to filing. It does seem that the attorney rather than the inventor is the right person to attest to the legal conclusion of due diligence. So file two declarations, one by the inventor and one by the attorney.

The Board's suggestion of  a § 1.183 petition for waiver of the inventor signature requirement doesn't seem to fit the facts here. That is, there was nothing to suggest that the inventor couldn't or wouldn't sign. But it is useful to know this avenue is available.

Getting signatures from all the inventors during prosecution is probably difficult in a lot of cases because of the long delay between filing and appeal. I wonder if one of the reasons swear-behind isn't very common is that attorneys figure it would be too much trouble to track down inventors.