Patent bloggers at AIPLA in DC

The AIPLA Annual Meeting will be held in October, in Washington DC. One of the programs is a panel discussion of patent bloggers. I'll be one of the panel speakers, joined by fellow bloggers Dennis Crouch (Patently-O) and Donald Zuhn (PatentDocs). You can find more information about the meeting here.

Indefiniteness rejection for claims that are inconsistent with spec

Takeaway: The BPAI has affirmed indefiniteness rejections under § 112, 2nd paragraph when a claims is inconsistent with the specification, citing In re Cohn, 438, F.2d 939, 993 (CCPA 1971)(sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, as being indefinite, where the claims were inherently inconsistent with the description, definitions, and examples appearing in applicant’s specification).

Details:

In two cases, the claims described the shape of an element, but the Board found that the word used to describe the shape didn't match the drawings. In one case (Ex parte Sazy), the claim recited "banana shaped unitary body" and the drawings depicted a shape which suggested a banana. However, the Board noted that the dictionary definition of banana included "tapering" : "elongated often curved and usually tapering fruit of the banana plant." The Board found that the shape in the Applicant's drawing was elongated and curved, but not tapering. The Board affirmed the indefiniteness rejection because of this inconsistency between drawings and claims.

In another case involving a shape (Ex parte Sabbagh), the claim recited "kidney shaped shield" and the drawings depicted a shape which suggested a kidney. (See Applicant's Fig. 1 below.)

The Applicant argued that "a kidney-shaped object generally is round or oval and indented at one side like a kidney organ or a kidney bean," and provided images of a kidney organ and a kidney bean. However, the Board found that the shapes were different: 

After comparing the shape of Appellant’s claimed shield body (as per Figure 1 of Appellant’s Drawings) with the examples provided by Appellant of kidney-shaped objects (as per Figures 1A and 1B of the  Amendment), we do not find that Appellant’s illustrated oral shield 100 is kidney-shaped ...

One case involved an inconsistency between a claim limitation and the teachings of the spec. The claim in Ex parte LaSalle recited "a support structure ... not providing resistance to the opposed clamping forces." But the Board found that the description of the support structure, and the structure's interaction with the other claim elements, "must inherently result in the support structure providing some amount of resistance to the force." The Board affirmed the indefiniteness rejection because of this inconsistency between spec and claims.

Another case involved a claim that was internally inconsistent. The claim in Ex parte Choe recited "a heat resistant layer formed on the surface of the cover heater" and "a reflective layer between the cover heater and the heat-resistant layer." The Board found that the plain language of the first limitation required the heat resistant layer to be in surface-to-surface contact with the cover heater. However, the Board also found that this requirement contradicted the plain language of the second limitation ("layer between"). The Board entered a new ground of rejection under § 112, 2nd paragraph holding that the claim was "inherently inconsistent with [itself] and with the descriptions, definitions, and examples appearing in Appellants’ Specification."

My two cents: I don't think I've ever seen this sort of rejection before. In my experience, when the Examiner thinks the claims don't match the spec, the result is a rejection under  § 112, 1st. 

In all the cases discussed above, the BPAI cites to In re Cohn, which is really about inconsistency claim limitation and the teachings of the spec.

As used and defined in the specification, and unmodified by other terminology, an "opaque finish" is a flat-appearing finish which is not obtained when an alkali metal silicate is used as a sealant.... The claims, on the other hand, specifically call for sealing the oxide surface with an alkali silicate in order to ultimately obtain an "opaque appearance."
In re Cohn, 438, F.2d 939, 993 (CCPA 1971)

Of the four cases discussed above, In re Cohn seems on point for two of them. In re Cohn seems clearly on point for the the layer case (Choe), and still on point for the support structure case (Salazar). But I'm not convinced that In re Cohn really speaks to the banana case (Sazy) or the kidney case (Sabbagh).

List of daily BPAI decisions

I found a great resource for those of you interested in BPAI opinions: a list of daily BPAI opinions. This list is much more useful than going to the BPAI site, because the list includes basic information for each opinion. This basic information includes:

• the technology center; 
• the outcome (reversed, affirmed, affirmed-in-part);
• the type of appealed rejections;
• the name of the law firm; 
• the name of the Examiner; and
• case law cited by the BPAI.

This great resource is compiled by James Long, a registered U.S. patent attorney who currently works for the Jianq Chyun Intellectual Property Office in Taiwan.

Trade secrets or patents?

I ran across an interesting discussion on the IP Biz blog about trade secrets versus patents: "The Case Against a Case Against Patents."

The IP Biz post by blogger Lawrence Ebert is a response to the post "A Case Against Patents" on the MarkiMicrowave blog. In that post, microwave engineer Christopher Marki makes the argument that "for small tech companies like Marki Microwave, patents do not provide as many benefits as is often assumed." 

BPAI finds swear-behind insufficient for lacking details of diligence

Takeaway: In Ex parte Brown, the BPAI discussed evidence of due diligence in a § 1.131 (swear-behind) declaration. Despite the Applicant's submission of 32 exhibits of evidence, the Board found that the declaration was deficient in showing either actual reduction to practice or conception plus due diligence. "We have no evidence that the specific details of any of the claims were conceived prior to the applied art, no specific details of development activities of the claimed subject matter or of the drafting activities of the patent application, and no evidence that the attorney was diligent in constructive reduction."

Details: 
Ex parte STEPHEN JAMES BROWN
Appeal 2009002452, Appl. No. 09/237,194, Tech. Center 3600
Decided April 20, 2010

With regard to evidence of actual reduction to practice, the Board had this to say:

Many of the activities detailed in the declaration and exhibits bear little direct relation to actually reducing the invention to practice. Many of the activities are directed to establishing intellectual  property protection measures, obtaining speaking engagements, and planning for staffing needs. Others, such as proposing development timetables, are tangentially related, but show no actual reduction itself.

Next, with regard to diligence:

The period from  September 3 to 30 is unaccounted for. Further, no activity is shown between October 7 and October 27. To establish diligence for constructive reduction to practice, the attorney’s diligence must be shown.

The Board quoted the law for excusable lapses in diligence:

[I]t may not be possible for a patent attorney to begin working on an application at the moment the inventor makes the disclosure, because the attorney may already have a backlog of other cases demanding his attention. Thus, the courts have recognized that reasonable diligence is all that is required of the attorney. [] Generally, the patent attorney must show that unrelated cases are taken up in chronological order, thus, the attorney has the burden of keeping good records of the dates when cases are docketed as well as the dates when specific work is done on the applications.
Bey v. Kollonitsch, 806 F.2d 1024, 1028 (Fed. Cir. 1986).

The Board then applied the law of diligence to the facts: 

But there is no evidence of such a backlog or that if there was a backlog that it was taken up in chronological order. There is also no evidence showing that the period subsequent to the last documented attorney activity on October 29 up to the date of filing was excused activity. We are left with a large number of days in which no documented attorney activity occurred and no evidence that those days were excusable.

My two cents: This is a good teaching case of what not to do in a swear-behind.

Interestingly, the Board had no reason to even consider the swear-behind. The reference was filed in 1992. The application on appeal was a continuation-in-part filed in 1999, with the parent filed in 1992. Yet the Board found that the Applicant did not present any evidence whatsoever that the application was entitled to the parent's filing date. Without a valid claim to priority, the swear-behind is useless.

Boilerplate with attitude

Check out this boilerplate from U.S. Pub. 20080087720:

[0037]The present invention includes several independently meritorious inventive aspects and advantages. Unless compelled by the claim language itself, the claims should not be construed to be limited to structures that incorporate all of the inventive aspects, or enjoy all of the advantages, disclosed herein.

[0038]It is well established that the claims of the patent serve an important public notice function to potential competitors--enabling them to not only determine what is covered, but also what is not covered--by the patent. And a number of Federal Circuit decisions have emphasized the importance of discerning the patentee's intent--as expressed in the specification--in construing the claims of the patent.

[0039]But defendants in patent infringement suits--while arguing the importance of this public notice function--often seek strained and uncharitable constructions of the claims that would render them either nonsensical, too narrow to have any significant value, or so broad that the claim is anticipated by the prior art. Counsel for defendants routinely flog minor grammatical, typographical, or syntactical flaws, if any, in the claims or specification, forgetting that patents are generally written by--and for--engineers and technicians, not by and for grammatical perfectionists and English language PhD's. Furthermore, defendants frequently misconstrue the specification and prosecution history in claim construction briefs and hearings in an effort to import contrived and novel limitations into the construction of the claims. They also frequently strive to--in essence--rewrite the claims so that they do not cover the accused device.

[0040]Accordingly, I wish to make my intentions clear--and at the same time put potential competitors on clear public notice. It is my intent that the claims receive a liberal construction and be interpreted to uphold and not destroy the right of the inventor. It is my intent that the claim terms be construed in a charitable and common-sensical manner, in a manner that encompasses the embodiments disclosed in the specification and drawings without incorporating unrecited, unnecessary limitations. It is my intent that the claim terms be construed as broadly as practicable while preserving the validity of the claims. It is my intent that the claim terms be construed in a manner consistent with the context of the overall claim language and the specification, without importing extraneous limitations from the specification or other sources into the claims, and without confining the scope of the claims to the exact representations depicted in the specification or drawings. It is also my intent that not each and every term of the claim be systematically defined and rewritten. Claim terms and phrases should be construed only to the extent that it will provide helpful, clarifying guidance to the jury, or to the extent needed to resolve a legitimate, good faith dispute that is material to the questions of validity or infringement. Otherwise, simple claim terms and phrases should be presented to the jury without any potentially confusing and difficult-to-apply definitional construction. 

My two cents: I don't expect a statement of the drafter's intent to affect how a court interprets claims. The law already allows for things like construing terms in accordance with the spec while not importing limitations from the spec, construing to avoid invalidity in some situations, etc.  I don't think the patentee gets better treatment by asking for it in the spec, nor worse treatment if you don't ask.