Effect of BPAI claim construction in litigation

In an earlier post (here), I discussed the BPAI Ex Parte Jenkins decision, in which the Board construed the claimed "storage space" to be bigger than a rivet, given the teachings of Applicant's spec.

Would the Applicant have a hard time arguing in litigation that an accused product with a tiny storage space infringes? What about a storage space big enough to hold a couple of fishing flies? That's bigger than a rivet, but not by much.

Or is the Board's construction irrelevant in litigation? If so, why? Can't you say that the size of the storage space was what distinguished over the reference, so a sort of prosecution history estoppel applies, even though it was the Board that made the distinction? Or is the estoppel doctrine not relevant unless the Applicant argued the size of the storage space was a patentable distinction?

I don't know the answer to these questions. I'm just thinking out loud.

Res judicata in a rejection

If you get an adverse decision from the BPAI, you can continue prosecution by filing an RCE with claim amendments and/or new evidence. I came across an application (Appl. No. 10/023,117) in which the Applicant did this, and the Examiner invoked res judicata to reject a claim, even though amendments were made.

Although I've never come across res judicata in patent prosecution, the MPEP specifically provides for it in section 706.03(w). It does make sense to me that once the Board has affirmed a claim rejection, that rejection can be applied again with no further explanation because the issue has already been decided.

What struck me as strange is that the Applicant had amended the claims. But the Examiner took the position that the amended claim was not patentably distinct from the claim presented at appeal:

The sole change to claim 6 is changing the final clause from "outputting ... to a destination identified in the ... instruction" to "outputting ... to a destination register identified in the ... instruction". As it was shown in the examiner's answer to appeal mailed November 14, 2007 that Abbott output to a destination register, the claim is not patentably distinct from that affirmed by the Board of Patent Appeals and Interferences.

I think it's clear that "destination register" has different scope than "destination," such that the Examiner must make a new finding in the post-RCE Office Action that the reference discloses the added feature. Certainly it's not enough that the Examiner's Answer "shows" that the reference teaches the amended feature, because a statement in an Examiner's Answer is an allegation, not a judicially established fact.

In fact, I think the Board's decision implied that the claim on appeal ("outputting to a destination) was patentably distinguishable from the claim in the RCE ("outputting to a destination register"). This happened when the Board pointed out that the Applicant was arguing about a feature which was not present in the claim on appeal:

Initially, we note that although Appellants argue that Abbott does not teach that the output of the transposition circuit 410 is provided to a destination register that is specified in an instruction ... the Appellants have chosen to draft the claims, claim 1 in particular, far more broadly.

By pointing out that the claim on appeal did not specify "destination register", I think the Board in effect said that a claim without this feature is patentably distinct from a claim with this feature. Thus, res judicata does not apply to the amended claim.

I should note that the Examiner did not solely rely on res judicata. As recommended by the MPEP, a prior art rejection which was applied also, in this case, the same rejection which was appealed was "maintained and incorporated by reference."

"Portable" means "removable" (Ex parte Fabritius)

Ex parte Fabritius
(Appeal 2008-0068; Appl. No. 10/449,707; Tech. Center 2100)
Decided: May 29, 2008

The claim at issue was to a "method for handling data in a fixed memory associated with a portable electronic communication device ... and an operation of storing data in said fixed memory comprises ..."

The reference disclosed an automobile radar system. The Applicant argued that the system was not a "portable communication electronic device." The Board first found that this phrase in the preamble was not limiting. The Board should have stopped there, because the only other Applicant argument was "non-analogous art," which the Board noted was irrelevant for anticipation.

But the Board continued on, and shot itself in the foot. Here is the Board's strained reasoning as to why the automobile radar system was "portable":

At least a portion of the communication device described by Woll is removable, and thus “portable” within some meaning urged by Appellants. RAM card 20 (Woll Fig. 2) may be removed from the system so that the data may be read by a personal computer 60 (Fig. 6).

What's going on here? Did the Board confused "movable" with "removable"? I can see that "movable" is a synonym for "portable", but not "removable". Also, even if there is some overlap between removable and portable, why is the entire thing portable simply because a portion of it is removable? Is my house portable because the door is removable?

Claimed "storage space" evaluated relative to the preamble (Ex parte Jenkins)

Ex parte Jenkins
(Appeal 2009005028, Appl. No. 11/204,671, Tech. Center 3600)
Decided September 30, 2009

I don't deal with a lot of mechanical cases, though I do read a fair number of BPAI decisions for Technology Center 3600. The claim in this mechanical case was for "a carrying case for transporting a user's fishing equipment". The Board actually limited the broadest reasonable interpretation to the broadest reasonable in view of the specification.

Fraser does not teach a storage space as claimed. Although Appellant’s claim 1 does not include express limitations on the size or dimensions of the storage space claimed, Appellant’s specification explains that the storage space is provided for holding fishing tackle and knives (FF 4). The claims are directed to “[a] carrying case for transporting a user's fishing equipment.” In the context of Appellant’s specification and claims (which are part of the specification, see Merck & Co., Inc. v. Teva Pharm. USA, Inc., 347 F.3d 1367, 1371 (Fed. Cir. 2003)), it is not reasonable to construe “storage space” as including a space defined by the thickness of a rivet head. Thus, though Fraser teaches an external container and an insert for holding fishing rods, it does not anticipate the claimed carrying case because it does not teach a storage space.

I know there's a fine line between importing limitations from the spec into the claims, and perhaps this one crossed that line. Perhaps the Applicant should have put "the storage space sized to fit fishing equipment" as an explicit limitation. (Would this have had the intended limiting effect?)

That said, it was refreshing to see the Board pay attention to the second half of the BRI standard: broadest reasonable interpretation in view of the spec. Of the BPAI decisions I read, I feel that a significant number use a claim construction that does not meet this standard.

This was a case in which the Applicant won the battle but lost the war. The Board reversed the Examiner's §102 rejection based on this claim construction, but went on to find an appropriate-sized space in another reference, and so entered a §103 rejection.

Explanation of Examiner incentives

I've alluded to the Examiner count system a couple of times on this blog, but never bothered to explain it. I found a series of posts on the Patents 101 blog, titled "What is the Examiner's Motivation?", which has a good overview of the Examiner performance evaluation system. If you don't know much about counts and biweeks at the PTO, I think this would be good reading.

The posts are written by a patent attorney, and I'm not sure I agree with all the conclusions he draws about how the count system plays out. Nonetheless, I'm always interested in hearing different viewpoints, so these posts are worth reading for that reason too.

Implicit teachings of a reference

When arguing that a reference doesn't teach, some practitioners focus exclusively on the explicit or literal teachings of the reference, and ignore what a POSITA would understand the reference to teach implicitly. There are some good reasons for doing this — prosecution history estoppel and the danger of mischaracterizing the reference come to mind. But be aware that MPEP 2144.01 states that the Examiner is allowed to use implicit teachings too:

[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.
In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).

Sometimes reading between the lines means simply recognizing that a reference is using a different term than the one that appears in the claim. Other times, it means putting together several explicit teachings to draw an inference. And sometimes it means recognizing that the absence of a teaching is evidence that something wasn't important enough to discuss rather than evidence that it wasn't known.

Here are a few instances where the BPAI affirmed a rejection based on implicit teachings.

Ex parte Nawathe: "While Lee's system specifically discloses loading data for a single XML document into the relational database, it is not necessarily so limited. In other words, the ordinarily skilled artisan would have recognized that loading multiple XML documents in a relational database to be within the purview of the prior art as evidenced by Lee's disclosure that metadata is generally known to describe information about more than one of such documents."

Ex parte Symbol Technologies, Inc.: "All that is required by these claims is that the keys be capable of being individually engaged by the thumb or fingers of the hand holding the housing ... As articulated by the Examiner, the size of Gombrich's pocket terminal is sufficiently small to allow users to hold the pocket terminal in the user's palm and reach the keys with their thumb without pressing other keys. We find that one of ordinary skill in the art reasonably would infer that the keys of Gombrich are capable of being individually engaged by the thumb of the hand holding the housing in view of the specifically disclosed dimensions of the pocket terminal and the teachings in Gombrich that the pocket terminal is 'pocket-sized', 'portable' and allows for 'one handed' operation.”

Ex parte Zybura: "We find that the ordinarily skilled artisan would have readily recognized that Thatcher's disclosure of inconsistencies that arise between the replicas of a namespace due to the propagation delay in the updates teaches or suggests the claimed determination that modification to a namespace results in conflicting information between the replicas. Similarly, we find that Thatcher's disclosure of all the replicas having identical objects at the end of the update teaches the claimed removal of the identified conflict before the update takes place in the second namespace."

Ex parte McCormack: "We find that Jiang's storage of device preferences and service preferences teaches storing the claimed digital identity for a wireless user device. While Jiang does not particularly disclose the user device to be a DTV, it suggests that the WPM would provide seamless access to information without regard to the type of device available to the user. In other words, the ordinarily skilled artisan would readily appreciate that regardless of the type of device available to the user, the WPM's database or repository would still store digital entity or preference data for whatever device that it identifies."