Creative, but losing, arguments against obviousness-type double patenting

What are your options for fighting an obviousness-type double patenting rejection when you don't want to – or can't – file a terminal disclaimer, yet you don't have good arguments for argue non-obviousness? Today's post will cover a half-dozen cases where Applicants came up with atypical arguments against double patenting ... but all were losing arguments at the Board.

The Applicant in Ex parte Germeyer (BPAI 2010) took the position that since the commonly owned reference was unavailable as prior art under §103, the reference was also "unavailable as a secondary reference to support an obviousness-type double patenting rejection." The Board disagreed. The Board stated that the double patenting rejection was not made under §103, even if the obviousness analysis is similar. "Rather than precluding patentability as under §103, nonstatutory double patenting rejections permit patenting conditioned by a terminal disclaimer. Thus, we find Appellants’ arguments based on §103(c) unpersuasive." 0).

The Applicant in Ex parte Stomp (BPAI 2012) appealed an obviousness-type double patenting rejection. The facts of this case were a bit unusual in that the application on appeal did not claim priority to the issued patent, and the application on appeal and the issued patent had different owners. The Applicant argued that neither of the policies addressed by double patenting rejections – extension of term and harassment by different assignees – was relevant to these facts. First, the Applicant noted that extension of term was not implicated because of the appealed application would expire several years before the patent used in the rejection. Second, the Applicant explained that the application and the patent "are owned and have always been owned by two separate entities”." The Applicant distinguished this from the In re Van Ornum line of cases, where the court dealt only with commonly owned patents that might subsequently be assigned or transferred to different parties. The Board agreed that term extension was irrelevant here, but was not persuaded by the argument about lack of common ownership. The Board discussed In re Fallaux, which endorsed the Ornum rationale.

     We note that the Fallaux court explicitly stated that its opinion “should not be read to decide or endorse the PTO‟s view” as to “whether a patent may be used as a reference for an obviousness-type double patenting rejection where the patent shares only a common inventor with the application, rather than an identical inventive entity or a common assignee.” In re Fallaux at 1315 (citing MPEP § 804 ¶ I.A.).
     ... [G]iven that the possibility of multiple assignee harassment is not avoided when the conflicting subject matter is separately owned at the time the applications are filed, we are not persuaded that an obviousness-type double patenting rejection is only proper when the claimed subject matter is potentially transferred to separate assignees after the applications are filed.

Two Board decisions dealt with Applicants who argued the impropriety of a provisional double patenting rejection. During prosecution, the Applicant in Ex parte Bolle (BPAI 2011) faced a series of prior art rejections and a provisional double patenting rejection. The Applicant fought the prior art rejections by arguing and/or amending. The Applicant repeatedly requested the Examiner to withdraw the provisional double patenting rejection, reasoning that since the prior art rejections had been overcome, and the instant application was filed the same day as the reference, "the Examiner must withdraw this provisional rejection." The Applicant repeated the same argument on appeal: the Board should reverse the provisional rejection in view of the identical filing date of the two applications, and the Applicant's position that "the sole rejection of [the claims on appeal] under 103 is improper. The Board affirmed the obviousness rejection and the double patenting rejection. The common filing date was not grounds for reversal because term extension was not the only policy behind double patenting. “[T]here is a second justification for obviousness type double patenting - harassment by multiple assignees.” (citing In re Fallaux, 564 F.3d 1313, 1319, (Fed. Cir. 2009)).

The Applicant in Ex parte Luu (BPAI 2011) made a purely procedural argument about a provisional double patenting rejection. The Applicant relied on MPEP 804(I)(B)(1), which directs the Examiner to withdraw a provisional double patenting rejection when no other rejections remain. The Applicant noted that the copending application used in the rejection could not be expected to issue first since it had not yet started examination. According to the Applicant, this fact in conjunction with the MPEP directive were grounds for the Board to reverse or vacate. The Board viewed this as an untimely request for procedural relief and refused, citing Ex parte Moncla, 2009-006448 (BPAI 2010) (precedential). The Board acknowledged that the Examiner did have the discretion to withdraw the provisional rejection, but noted that jurisdiction had since passed from the Examiner to the Board. The Board then explained that petition, rather appeal, was the appropriate mechanism to contest the Examiner's refusal to withdraw the provisional double patenting rejection. (Ex parte Luu, PTAB 2011)(Appl. No. 11/297,201).

Finally, the Applicant in Ex parte Lin (BPAI 2012) went to appeal with only a double patenting rejection. After losing at the Board, the Applicant filed a terminal disclaimer and then a Request for Rehearing at the Board. The Request asked the Board to reconsider the rejection "in view of the recently submitted terminal disclaimer," or in the alternative, to remand to the Examiner for consideration of the Terminal Disclaimer. The Board denied the Request because Rehearing is limited to arguments already made the Brief. The Rehearing Decision said nothing about remand. The Applicant then filed the Terminal Disclaimer again, this time with an RCE. In the Remarks submitted with the RCE, the Appilcant asked for speedy issuance, noting that the Application had already been in prosecution for five years and only six years of term remained because of the terminal disclaimer. PAIR shows that the Terminal Disclaimer was approved a few days after filing of the RCE – but as of today, more than six months have since elapsed with no further action on the case.

Follow up to Ex parte Osborne

In my last post (here) I discussed Ex parte Osborne and said I didn't understand the opinion the first time I read it. In this post, I'll discuss the reasoning behind the Board's decision. This reasoning wasn't apparent to me at first, but apparently quite a few readers did figure it out, and they've posted comments to explain. So if you've read the comment thread on the last post, you know the answer already.  


As discussed in my previous post, the main issue in the Brief and the Answer was whether water acted as an antimicrobial agent at the temperatures disclosed in the reference. The Board seemed to ignore that issue and instead affirmed based on a finding that the "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." I wondered why the Board felt it could ignore the temperature issue. After all, that's the point the parties argued on appeal.

As a reminder, here's the claim on appeal, with the limitation at issue emphasized.

35. A meat processing system comprising a series of stations in order:
     A first station for stunning an animal;
     A second station for exsanguinating the animal;
     A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
     A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
     wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.

The key to understanding the opinion is the first two words emphasized in one of the Board's Findings of Fact.

The Specification provides that "the antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
(Finding of Fact 1, emphasis in PTAB opinion.)

The Board found that the Applicant had defined the claim term "antimicrobial agent" in this first sentence. And after carefully re-reading the opinion, I realized that the Board ignored water temperature because they weren't relying on the first ("killing") prong of the definition. Instead, the Board apparently relied on the "removing" prong of the definition. The physical action of water applied to the hide removes microorganisms, regardless of the water temperature. Well, maybe not in all scenarios, but certainly when the Norrie reference specifically disclosed that "carcass is also subject to deluge flow of water for washing." (Finding of Fact 4.)

So yeah, I agree that Norrie teaches "at least one microbial agent is applied to the hide," because it's clear that a flood of water will remove microorganisms, regardless of water temperature.

I'm still annoyed that the Board's opinion wasn't written in a way that makes this more clear. After discussing the temperature issue argued by the parties, the Board should have said something like "The temperature of the water is irrelevant because Applicant's explicit definition covers 'removing microorganisms' which can be achieved by the physical action of a 'deluge flow' of water coming into contact with the hide." Instead, the Board made the cryptic statement "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." Without explaining why temperature was irrelevant.

Had the Board written that, I probably still would have written about the decision. But my post would have been about the dangers of getting stuck on one issue and not realizing there are other issues you need to address. Basically, the Applicant went down the wrong track, got stuck on it, and lost at the Board as a result. Perhaps the Applicant would have realized the error had the Examiner steered the Applicant back to the "removing microorganisms" aspect of the definition. It's not 100% clear to me that the Examiner relied on the removal aspect at any point in prosecution, though there are a few hints here and there that he did.

Is this a new ground of rejection? The Board relied on the very same sections of the Norrie reference that the Examiner did. I'm no expert on "new grounds" law, but perhaps it isn't a new ground for this very reason. If not a new ground, that seems a bit unfair. Basically, the Board decided the case on an issue that wasn't even briefed by the parties. Yes, the case law allows the Board to do this, but a new ground would remove some of the sting for the Applicant by saving him an RCE fee if he wanted to narrow his claims after appeal. On the other hand, the real sting of appeal -- win or lose -- is pendency before the Board.

Board says claim term, as defined in the specification, reads on the reference

Takeaway: The Applicant appealed claims to a meat processing system. The claim included the limitation "a wash station where at least one antimicrobial agent is applied to a hide." The Examiner relied on a reference that disclosed water applied to a carcass, and the Applicant presented evidence that a POSITA would not consider water to be an antimicrobial at the temperature disclosed in the reference. The Examiner noted that the claim did not recite a temperature, and that the Applicant's specification disclosed lower water temperatures and was thus was inconsistent with the evidence. The Board affirmed the rejection, finding that "[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism." (Ex parte Osborne, PTAB 2012.)

Details: Ex parte Osborne
Appeal 2011011685; Appl. No. 11/084,785; Tech. Center 3600
Decided  Aug. 28, 2012

A representative claim on appeal read:

35. A meat processing system comprising a series of stations in order:
     A first station for stunning an animal;
     A second station for exsanguinating the animal;
     A third station that is a wash station where at least one antimicrobial agent is applied to a hide of a hide-on animal carcass; and
     A fourth station that is a hide removal area configured to at least partially remove at least a portion of the hide from the hide-on animal carcass,
     wherein a conveyor system transports the hide-on animal carcass through at least the third and fourth stations.

The dispositive issue for the independent claims on appeal was the meaning of the term "antimicrobial agent."

The Examiner rejected system claim 35 as obvious over Lawler, Norrie, and Simon, relying on Norrie for teaching the "antimicrobial agent is applied ..." limitation. During prosecution, the Applicant argued that Norrie disclosed the application of high temperature water to soften the hair of the carcass. The Examiner explained in an Advisory Action that Norrie's high temperature water was considered antimicrobial because Applicant's specification taught "the use of water by itself as an antimicrobial agent and therefore the high temperature water of Norrie can be construed as an antimicrobial agent."

The Applicant appealed, and in the Appeal Brief introduced evidence to show that Norrie's high temperature water was not an antimicrobial agent:

Norrie's water temperature is not sufficient to act as antimicrobial in the context of the present invention. Norrie provides that the [applied water] may be in temperature zones of 45-60, 55-65 and 50-60 degrees C. This temperature is not high enough to provide antimicrobial action. See, for example, the Williams reference [Appendix XI], which provides evidence that when water is used as an antimicrobial intervention, the temperature of the water is 165 degrees F, 73 degrees C.

The Examiner replied to this argument in the Answer by noting that "Appellant's arguments are not consistent with the antimicrobial agents detailed in Appellant's specification," since the specification listed "water by itself." The Answer then commented on the Williams reference offered as evidence by the Applicant

[T]his Williams et al. evidence does not state the temperature of the water is critical in view of other water temperatures and as seen in para. 0054 of Applicant's specification, the water temperature detailed by Applicant is between 100-190 degree F and therefore the Williams evidence is not consistent with Applicant's disclosure and it is noted that the temperature of the water is not found on any of the claims on appeal.

The Board affirmed the rejection. The Board first looked to the following sentences in Applicant's Specification:

The antimicrobial agent may be any chemical or substance capable of killing, neutralizing, or removing microorganisms. In one embodiment, the antimicrobial agent is water or some combination of water and at least one other antimicrobial agent.
(Finding of Fact 1, emphasis in PTAB opinion.)

Based on this finding, the Board went on to find that "antimicrobial agent" encompassed water at the temperatures taught in Norrie. The Board explained its claim construction as follows:

The Specification defines an antimicrobial agent to be any “chemical or substance capable of killing, neutralizing or removing microorganisms.” (FF1.) The Specification further discloses that water is an antimicrobial agent. (FF1.) Thus, the limitation of ‘at least one antimicrobial agent” is interpreted to include water. The limitation of “a wash station where at least one antimicrobial agent is applied to the hide of a hide on animal,” as recited in claim 35, is interpreted to encompass applying water to the hide of an animal. ... As noted by the Examiner, Norrie uses water in the washing steps, and water is encompassed by the definition of an antimicrobial agent as provided in the Specification. (FFs 1, 2, 4.)

The Board explained that this definition trumped the evidence offered by the Applicant to that show water did not in fact act as an antimicrobial at the temperatures used in Norrie:

[Applicant's] Specification expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism. See Serrano v. Telular Corp., 111 F.3d 1578, 1582 (Fed. Cir. 1997)(“The inventors’ definition and explanation of the meaning of the word … as evidenced by the specification, controls the interpretation of that claim term).

My two cents: I had a lot of trouble understanding the Board's opinion. It's clear to me that the Board relied on a definition of antimicrobial agent in the Applicant's spec. ("[Applicant] expressly defines an antimicrobial agent as encompassing the washing steps disclosed by Norrie, even at temperatures that would not kill the microorganism.") But how does the Board get from antimicrobial-means-killing-neutralizing-or-removing to water-is-an-antimicrobial-even-at-temperatures-that-don't-kill?

I do read the Specification statement "antimicrobial agent may be any chemical or substance capable of ..." as a definition of microbial agent. As such, the Applicant is bound by this definition, even it's different than what a POSITA would understand. But the Board went further, saying that the Applicant had defined antimicrobial in such a way that temperature was irrelevant. How so?

Surely the question of what chemicals or substances meet the kills-neutralizes-or-removing definition, is one of fact. Does water kill microorganisms at any temperature? This is not my area of expertise, but I think I know enough about science to say No.

In the Answer, the Examiner noted that "the temperature of the water is not found on any of the claims on appeal." This is a red herring, because the claim didn't say "water is applied to the hide". If it did, then sure, any teaching of applying water would anticipate the element, regardless of temperature. But since the claim instead said "antimicrobial agent is applied to the hide", we have to ask what a POSITA knows about water as an antimicrobial.

The Williams reference submitted by the Applicant said No, that "when water is used as an antimicrobial intervention, the temperature is 165° F." Whereas Norrie disclosed applying water at temperatures of 113-149° F.

The Examiner countered this argument by pointing to additional statements in the Spec:

[0054] The heater 108 may heat the wash solution to a temperature ranging from about 100 to about 190 degrees Fahrenheit. In a further embodiment, the heater 108 may heat the wash solution to a temperature ranging from about 140 to about 150 degrees Fahrenheit. Alternatively, the heater 108 heats the wash solution to another temperature known to kill microbes.

According to the Examiner, these statements showed that "the Williams evidence is not consistent with Applicant's disclosure." Wrong. Let's assume for the sake of argument that if the Applicant misstates a technical fact, he's bound by it. So if the Spec really did say that water has an antimicrobial effect at 100° F, then the reference anticipates.

But wait ... the Spec didn't say that. The Spec disclosed various embodiments that heat water to different temperatures. Not an admission that water is antimicrobial at these temperatures. In fact, you could argue that the last sentence ("Alternatively ... to another temperature known to kill microbes") means that water does not kill microbes at the other listed temperatures.

So I say the Examiner is wrong, and the rejection is in error.

However, I suspect that the Board affirmed the rejection based on entirely different reasoning -- and did a terrible job of explaining this. I'll discuss this in my next post.

Color Drawing Petitions, Part II

My last post (When are color drawings acceptable? ) discussed a few Decisions on Color Drawing Petitions. Today I'll discuss a few more.

13/143,209 - Color Drawings Petition DENIED: In Jul. 2011, the Applicant filed a Petition for Color Drawings in 13/143, 209 ("Electromagnetic Radiation Mapping System"). The Petition stated:

Applicant asserts that the color found in the attached Figures is significant to the understanding of the invention. The necessity for the Color Drawings is to clearly show the maps and graphs of the figures.

In Mar. 2012, before an Art Unit was assigned, the Petition was Decided by a Petitions Examiner in the Office of Petitions. The Petition was denied, and the decision summarily stated that "the Office has determined that color drawings and photographs are not necessary for an understanding of the invention."

13/031,293 - Color Drawings Petition DENIED: In Feb. 2011, the Applicant for 13/031,293 ("Method and System for Detecting Light") filed the application and a Color Drawings Petition.The petition included the following explanation:

Applicant asserts that the color found in the attached Figures is significant to the understanding of the invention. The necessity for the Color Drawings is to distinguish the different lines.

In Mar. 2012, after being assigned to an Art Unit (1735) but before being docketed to an Examiner, a Petitions Attorney in the Office of Petitions denied the petition. The Decision explained as follows:

The Office has determined that color drawings or photographs are not the only practical medium by which to disclose in a printed utility patent the subject matter to be patented. As such, color drawings or photographs are not necessary for an understanding of the invention sought to be patented.

13/200,784 - Color Drawings Petition GRANTED: In Aug. 2007, the Applicant filed application 13/200,784 ("Method And System For Dynamic, Three-dimensional Geological Interpretation And Modeling"). The specification described one of the drawings, FIG. 16, as "exhibit[ing] integrating stratigraphic erosional rules into the present geological interpretation system."

The Applicant filed a Petition for Color Drawings two years later, though before the application was docketed to an Examiner. The Petition stated:

Applicant believes the detail contained within the drawings cannot be fully captured using black and white drawings ... The present disclosure allows the analyzing and interpreting of geological information associated with a geologic region [and] creation of three-dimensional graphic displays [of the information]. Accordingly, the color figures support properly conveying the form of the graphical displays.

At Notice of Allowance, the Petition was undecided. After the issue fee was paid, the Petition was granted by a Quality Control Specialist in the Publications Branch. The Decision indicated that "the petition was accompanied by all of the required fees and drawings" and "the specification contains the appropriate language."

13/200,784 - Color Drawings Petition GRANTED: The Applicant for 13/200,784 ("Interferometric Modulation Devices Having Triangular Subpixels") filed the application and a Color Drawings Petition in Sep. 2011. The petition included the following explanation:

The color drawings are believed to be the most practical method (and may be the only practical method) of accurately illustrating the different subpixel colors, groupings of subpixel colors, etc. Some of these drawings (Figs. 11A through 11C) not only depict different subpixel colors and groupings of subpixel layers, but also depict different groupings of subpixel colors underneath an "M1" layer.

In Feb. 2012, after being assigned to an Art Unit (2873) but before being docketed to an Examiner, a Senior Petitions Attorney in the Office of Petitions granted the petition. The Decision did not comment on the Applicant's explanation, but noted that the petition was accompanied "by all of the required fees and drawings" and that the specification included "the appropriate language."

My two cents: I'm not surprised to see Applicants filing Color Petitions for graphs and charts. The use of color can certainly make complicated graphs and charts easier to understand. However, color isn't the only way to convey that information. For example, I've seen black and white charts that use different types of dashed lines for different data series, or Xs and Os for the data points, etc.

Maybe this was the reason why the Petition in the first and second xamples above were denied. Hard to say, as no explanation was given.

The third example would be a little harder to do in black and white, but you could still use different types of fill instead of color. I think the last example comes closest to "only practical medium" standard set out in the CFR. Yes, you could distinguish the subpixels with different type of fill. But this particular drawing has a lot of different regions close together, so that would probably be a mess. So, color makes sense.

However, as I read the Petition Decision on this subpixels application, the Petition wasn't really granted on the merits. That is, the Petition doesn't say "the Office has determined that color is necessary." It just says the Applicant checked all the right boxes.

These eight Color Drawing Petition Decisions (this post and the last) are such a tiny sample size that it's hard to draw any real conclusions about what it takes to get Color Drawings accepted. That said, I wonder if one factor is the branch of the PTO that looks at the Petition. A Petitions Examiner looked at 3 of these 8 Petitions, and 2 of those 3 were denied. And the single one granted by a Petitions Examiner was the drawing with the most persuasive reason for color. In contrast, all 5 of the Petitions processed by something other than the Petitions Office were granted with virtually no explanation.

When are color drawings acceptable? A review of some Petition Decisions

The patent rules in 37 CFR §1.84 provide for color drawings "on rare occasions" when "necessary as the only practical medium by which to disclose the subject matter sought to be patented." I've always wondered how the PTO interprets this requirement. The answer isn't readily available, since color drawings require a petition, and there is no database of petition decisions equivalent to the database of Board of Appeals decisions. But I do run across Color Drawing Petitions from time to time, so in today's post I'll discuss an admittedly very small and random subset of decisions on Color Drawings Petitions. Later I'll follow up with another post discussing a few more of these decisions. 

 11/925,065 - Color Drawings Petition GRANTED Jun. 2010: The Applicant for 11/925,065 filed an application with a petition to accept 3 of the 6 drawings in color. The application was titled "Transmitting Information Effectively in Server/Client Network". The black & white version of one of the color drawings, from from the patent publication, is shown below:

As an explanation for why color was necessary, the Applicant stated:

...the use of color drawings is necessary to differentiate the information and the direction of travel of the information in the server/client network. The use of color drawings for these features of the present invention is considered essential.

After being assigned to an Art Unit, but before examination began, a Quality Assurance Specialist in T.C. 2400 granted the petition. The Decision did not comment on the sufficiency of the Applicant's explanation,  noting only that conditions (i), (ii), and (iii) of §1.84(a)(2) were met.

12/288,158 - Color Drawings Petition GRANTED Aug. 2010: The Applicant for 12/288,158 filed an application ("NLP-Based Entity Recognition and Disambiguation") with a petition to accept several user interface screen shots as color drawings. The black & white version of one of these drawings, from the patent publication, is shown below:

The petition did not include any explanation for why color was necessary. A few months after the Petition was filed, a Quality Assurance Specialist in TC 2100 denied the petition for this reason. The Applicant filed another Petition, and this time explained that "the color drawings are necessary to particularly point out and support Applicants' claimed invention." The same Q.A. Specialist granted the second petition, noting only the petition did contain the explanation required by §1.84.

11/495,229 - Color Drawings Petition Granted Jun. 2007: The Applicant for 11/495,229 filed an application ("Interactive Computer Simulation Enhanced Exercise Machine") with a petition to accept color photographs. The black & white version of one of these photographs, from the patent publication, is shown below:

As an explanation for why color was necessary, the Petition stated:

Color drawings are the only practical medium by which to disclose the simulated environment developed and generated by the disclosed subject matter of to the patent... Such details and contrast between the environment objects are only provided in color and would be lacking in a black & white photograph.

Six months after filing, the Petition was granted by a Supervisory Patent Examiner in T.C. 3700. The SPE treated the Petition as one to accept Color Photographs, since it referred to both §1.84(a) and §1.84(b) and included copies of the photographs in both black & white and color. The Decision did not comment on the sufficient of the Applicant's reason for color. Instead, the SPE simply noted that the Applicant had complied with the color photograph requirements of §1.84(b) by submitting the appropriate fee, a statement in the spec referring to color drawings, three sets of color drawings, and "a black and white photocopy accurately depicting, to the extent  possible, the subject matter shown in the color drawing."

13/033,384 - Color Drawings Petition GRANTED Mar. 2011: The Applicant for 13/033,384 filed an application ("Method for Embedding Secret Message into PNG Image") with a petition to accept several drawings in color. The specification described two of the color drawings as showing "an image before a secret message is embedded" and "the same image ... after the secret message is embedded." The black & white version of these drawings, from the patent publication, is shown below:

The Petition explained that "color drawings are believed to be the only practical medium by which to disclose the subject matter sought to be patented." Only a month after the Petition was filed, a Quality Assurance Specialist in T.C. 2400 granted the Petition. The Decision did not comment on the sufficiency of the Applicant's explanation,  noting only that conditions (i), (ii), and (iii) of §1.84(a)(2) were met.

My two cents: Seriously? You really think you need color drawings for a block diagram, a run-of-the-mill user interface, and a screen shot of a exercise simulation? The only one of these four for which color seems necessary is the last one, the one illustrating embedding a secret message. Although I can't see any difference in the publication between before and after the embedding, I can imagine that such a difference could only be expressed in color.

But there's no way you need color for the block diagram of the computer network -- the drawing already
uses different dashed lines to distinguish the difference in direction! As for the second example, not only is color not strictly necessary for the user interface, I don't even think it adds anything useful over a line drawing. Finally, the screen shot of the exercise simulation looks terrible, and line drawings would have shown the features much better.

What's the thinking here? Do patent practitioners submit color drawings simply because the drawings provided by the client are in color? Or is the rationale to save money? Note that the petition fee is only $130, and it wouldn't surprise me that a complicated user interface or screen shot would cost more than $130 to prepare as a line drawing. 

I think the PTO should provide some guidance on what is an acceptable reason for color drawings. Is the bar for the "necessary as the only practical medium" requirement of §1.84 really this low?

Board of Appeals discusses §1.132 derivation declaration and rejection under §102(f)

Takeaway: An Applicant attempted to disqualify, as prior art, a publication listing two of the four inventors as authors. In a §1.132 declaration, the four inventors stated that the publication was derived from the work of the two author inventors. The Examiner found the declaration insufficient to overcome the §102(a) rejection because it did not attest to derivation from all of the inventors. The Examiner then added a rejection under §102(f) ("did not invent"). The Applicant appealed, arguing that a derivation declaration was only required to attest to derivation from at least one inventor, and that the §102(f) rejection was in error since the Examiner had not identified an inventor not named on the application. The Board affirmed the §102(a) rejection, holding that the declaration must attest to derivation from the entire inventive entity in order to show the publication was not "by another." However, the Board reversed the §102(f) rejection, finding that the statement in the declaration which referred to "our invention" provided enough evidence of correct inventorship to overcome the rejection.

Details:

Ex parte Abe
Appeal 2010000029; Serial No. 10/128,474; Tech. Center 2400
Decided:  June 28, 2012

The Examiner rejected all claims under §102(a) by a publication ("XPath") authored by two of the four inventors and submitted in an IDS. The Applicant attempted to disqualify the Xpath publication as prior art by filing a derivation declaration under §1.132. The Examiner found the declaration insufficient, since MPEP §716.10 "requires that the relevant portions of the reference originated with or were obtained from applicant (i.e., inventive entity)" (emphasis added). However, the Applicant's declaration merely stated that the reference was derived from the work of only two out of the four inventor.

The Examiner also added a rejection under §102(f) ("did not invent"). The Examiner explained as follows:

Applicant has declared that only two of the four inventors have derived the relevant portions of the [Xpath reference]. Given the reference teaches all the claimed limitations, it is apparent that the inventive entity (Mari Abe, Scott D. Dewitt, Masahiro Hori, and Brad B. Topol) are not the sole inventors of the claimed invention.

In an Appeal Brief, the Applicant continued to argue that the §1.132 declaration had removed Xpath as prior art. The Appeal Brief also specifically addressed various dependent claims, arguing that the Xpath did not teach all the limitations of those claims. In explaining why Xpath had been removed as prior art, the Applicant asserted that a §1.132 declaration disqualified the reference as long as the reference was "derived from at least one Applicant," as opposed to the Examiner's requirement that the derivation be from the work of all inventors. The Applicant explained that the Examiner's reading led to the "anomalous result" that §1.132 declarations could be used when "all possible inventors (as described in the article) may not have been named as inventors" yet could not be used when "all possible inventors (as described in the article) have been named as inventors."

The Applicant turned to the §102(f) rejection. The Applicant first addressed the Examiner's statement implying the inventive entity must be incorrect by noting that inventorship was on record in the executed Declaration and Power of Attorney. According to the Applicant, the §102(f) rejection was in error because the Examiner had not identified any inventor not named on the declaration.

In the Answer, the Examiner handled the §102(a) rejection by simply stating that the declaration did not overcome the rejection. As to §102(f), the Examiner explained:

Example 2 of MPEP 716.10 requires that the relevant portions of the reference originated with or were obtained from applicant (i.e. inventive entity). Applicant has declared that the reference "A Visual Approach to Authoring XPath Expressions" is derived from the work of only two out of the four inventors. Therefore, it raises a question as to whether the inventive entity (i.e. Abe, Hori, Dewitt and Topol) are the sole inventors since the claimed subiect  matter was only derived from Abe and Hori. The Examiner requested it be made clear that Dewitt and Topol did not contribute to the claimed invention (e.g. they only contributed to a portion of the specification that was not claimed) in order to rule out the possibility that the inventive entity are not the sole inventors of the claimed subject matter.

The Applicant filed a Reply Brief noting that the Examiner's Answer amounted to a request to remove inventors, while inventorship is a question of fact and cannot be manipulated for the convenience of the Examiner. Moreover, the Applicant explained, inventorship is determined on a claim by claim basis:

Dewitt and Topol may be inventors of only some of the claims. Similarly, Abe and Hori may be inventors of only some of the claims. The fact that certain claims were not identically disclosed by the prior art article by Abe and Hori evidences that additional contribution was made to the claimed invention.

On appeal, the Board affirmed-in-part. The §102(a) rejection of the independent claims was affirmed, but the §102(f) rejection was reversed. The Board also reversed the §102(a) rejection of some of the dependent claims, finding that various features in dependent claims were not disclosed by the Xpath reference.

The Board clarified that attesting to derivation from a subset of the inventors was sufficient not remove the reference as "by another" under §102(a). "By another" means any difference in inventive entity, so the fact that only two inventors were listed as authors of the Xpath publication indicated that the publication was "by another." A §1.132 declaration attesting to derivation from all the inventors would thus disqualify the reference, by showing that the inventive entity is the same. However, derivation from only a subset of the inventors means the reference is still "by another" and is thus prior art. 

In reversing the §102(f) rejection, the Board explained that designation of the authors of a publication not raise a presumption of inventorship with respect to the subject matter disclosed in the article so as to justify a rejection under §102(f). (MPEP §715.01(c)). Such a rejection does require the Applicant to "provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct." (MPEP §715.01(c)). The Board found the Applicant did exactly that, by submitting a declaration signed by all inventor stating "the disclosure found in the [Xpath publication] is our own invention."

My two cents: Reading in between the lines, the Board's brief opinion suggests that the Applicant had simply misinterpreted the law on §1.132 derivation declarations. Yet the Applicant fought long and hard for its position, when it seems that the problem could be taken care of by rewording the declaration. Unless, factually, the Applicant simply couldn't make the statement that the two author inventors derived from the work of the other two (non-author) inventors? The Applicant's arguments suggested that inventorship may have varied from claim to claim. So maybe another approach would be to split the application into two, with different inventive entities? I gotta admit, I got a headache thinking about this one.

Was the Examiner off base in giving the §102(f) rejection? Essentially, the §102(f) rejection seemed to be the result of a discrepancy between Abe, Hori, Dewitt & Topol being named the inventive entity and a finding that a publication authored by Abe & Hori alone disclosed all claim limitations.