PTAB interpretations of "integral" in various mechanical applications

Today's post will take a look at how the Board has interpreted the claim term "integral", and variations thereof, in a few different mechanical applications. In these decisions, the Board has read "integral" to be broader than unitary construction – thus covering parts that are welded together – but not so broad as to cover parts that are held together by friction fitting or that are merely interconnected.

PTAB assumes any verb phrase using "to" signals intended use

Takeaway:
Sometimes Examiners ignore claim language – give it no patentable weight – by characterizing a phrase as "intended use." However, not every verb phrase using "to" signals intended use. In many types of claims – computer-implemented ones in particular – the word "to" denotes the result of an action.

Consider this simple example: searching a document to find a match on a search term. The match is the result of the search. The result is not inherent – not every search produces a match – but neither is the result an intended use of the search.

In today's post, I'll review some cases in which the PTAB ignored verb phrases introduced by the word "to" because the Board concluded that the phrase was intended use.

Analysis:
The Board considered the phrase "to analyze costs" in Ex parte Liebich (PTAB 2013). The claim language at issue was "performing, using a processor, a value chain analysis by evaluating the attributes ... to analyze costs associated with the costed entities." Because no analyzing step was positively recited, the Board found intended use and gave the phrase no patentable weight.

Furthermore, we note that claim 1 merely requires that the “chain analysis” is performed “to analyze cost” by a processor. That is, claim 1 does not positively recite any step of analyzing cost. Instead, we find such “to analyze cost” language merely represents a statement of intended use or purpose (intended result) of the evaluated data which does not limit the claim. Particularly, an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Accordingly, we conclude that claim 1 merely requires ... performing, using a processor, an analysis by evaluating the data.

This issue was dispositive, since the Applicant had admitted that the reference taught data analysis by a processor, which was all that was required by this portion of the claim.

The application in Ex parte Teichman (PTAB 2013) involved power control. The method claim recited the step “controlling a grid-side converter . . . to regulate the voltage and frequency of the grid via scheduling power flow to a compensating circuit.”

We note that the portion of the limitation – “to regulate the voltage and frequency of the grid” – argued by Appellant fails to distinguish the claimed invention from the prior art either structurally or functionally. Specifically, the recited feature essentially consists of a statement of intended use or purpose for the controlling functionality. Such statements of intended purpose “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).

The phrase at issue in Ex parte Kreichbaum (PTAB 2013) was "transmitting the inputs to a second body part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters."  Once again relying on Boehringer, the Board construed the phrase that began with "to enable" as "represent[ing] the intended use of the inputs which provide tactile feedback." (Emphasis added.) As a result, the Board concluded that "claim 1 merely requires transmitting data to a second body part of the user that is capable of enabling the user to identify the different alphanumeric characters or symbols input onto the pressure-sensitive area of the entry device."

The application in Ex parte Kim (PTAB 2013) dealt with a power control system. The portion of the claim at issue read:

a control system . . .
     to calculate a decreased residual amount of the battery based on a difference between the determined residual amount and a previous residual amount, and
     to control the power supply to the system part based on comparing the calculated decreased residual amount and the residual amount to a predetermined value,

The Board treated the limitations "to calculate ..." and "to control ..." as intended use, giving them no patentable weight because they were not "positively recited as actually occurring."

The application in Ex parte Khayrallah was directed to a multiple antenna receiver. The Board considered a method claim having the limitation "selectively assigning an first one of the receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal." The Once again citing Boehringer, the Board found that the "to receive" phrase was intended use. As such, it did not limit the claim "because it merely defines a context in which the invention operates."

To bolster its conclusion, the Board noted the presence of a separate receiving step in the claim:
Additionally, we note further that the claim positively recites a “receiving” step where two or more receive antennas receive the entire wideband signal including all of the multiple sub-signals prior to a first one of the receive antennas being selectively assigned to receive a sub-signal. Thus, we give “selectively assigning a first one of said receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal” its broadest reasonable interpretation as merely assigning a first antenna that is capable of receiving a signal at a first discrete frequency component of the wideband signal.

In Ex parte Lippincott a video decoding system that included "a plurality of processors, each ...  arranged to execute the certain instructions stored in the instruction memory to decode a frame of the video information"and "a control processor to determine a subset of instructions needed to process a
particular frame of the video information from the type information."

We find Appellant’s argument that the Gove reference fails to teach “any kind of decoding” and “determining a subset of instructions” to be unpersuasive. App. Br. 11. Claim 24 merely requires memory for storing instructions for decoding and a processor for executing instructions. It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition.”); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

My two cents: Among the cases reviewed today, there's no question in my mind that the following phrases deserve patentable weight, since they express results not intention

• controlling a grid-side converter . . . to regulate the voltage
• evaluating the attributes ... to analyze costs associated with the costed entities
• selectively assigning one of the receive antennas to receive ...

For this one, I'm inclined to rewrite to have a separate identification step that is tied to the transmitted inputs.

• transmitting the inputs to a second part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters

The remaining cases are different in that the "to X" phrases express an action rather than a result. 

• a control system . . . to calculate [an amount] ... and to control the power supply
• a control processor to determine a subset of the instructions needed to process a particular frame.

In each case, the Examiner (and the Board) viewed the phrasing "a [structure] to [action]" as intended use. So I would ask the Examiner what format he wants to see order to give it patentable weight ... operable to calculate ... that calculates?

New resource for searching and analyzing PTAB decisions

There's a great new resource available for practitioners interested in PTAB decisions: the Patent Board Ferret.

The Ferret includes both search and analysis tools. On the search side, you can search not only by text in the decision, but also by rejection type, disposition, art unit, Examiner, and decision date. On the analysis side, you can generate charts which answer questions like:
do some judge panels introduce new 101 rejections more than others?
do some Examiners have a high reversal rate for section 112?
do cases with oral hearings have a higher rate of reversal?

While the Ferret hasn't processed every single one of the decisions on the PTAB's official site, it does include almost 13000 decisions, and continues to grow. So the Ferret is now my default search engine for PTAB decisions.

I do still use ptab.us to quickly look at recent decisions of interest to me. ptab.us shows me all decisions issued on a particular day, along with Examiner name, Correspondent Name (i.e. law firm or sometimes corporation), issues decided, and disposition. ptab.us has some analysis features too: it can generate spreadsheets for decisions by judge, law firm, tech center, etc.

Federal Circuit rules on indefiniteness standard and on "adapted to"

The recent Federal Circuit decision In re Packard looked at the standard for indefiniteness used by the PTO. During prosecution, the PTO applies the "two or more plausible interpretations" standard, per the precedential Board decision Ex parte Miyazaki. The standard applied by the courts for an issued patent is instead "insolubly ambiguous." The court in In re Packard declined to reach the larger question of whether the PTO can use this different standard, and decided the narrower question of whether the indefiniteness rejection was proper. The court affirmed the rejection because the Applicant (pro se inventor) didn't substantively respond to the indefiniteness rejection.

In re Giannelli from earlier this year was also a review of a PTAB decision, this one involving claim construction of "adapted to." The PTAB affirmed an obviousness rejection of a claim to an exercise machine, taking the position that the prior art chest press was "capable of" performing the function recited in the claim. The Federal Circuit reversed, after finding that in this particular case, "adapted to" required more than mere capability. The court relied on the specification's disclosure of embodiments that were specifically designed for rowing.

Ryan Alley's blog has thoughtful coverage of both decisions:
   In re Packard – Claim Drafting and Prosecution Lessons
   In re Giannelli – Claim Drafting and Prosecution Lessons

Ryan's blog is my favorite Federal Circuit blog because it offers many practical lessons for prosecutors. 

When does "a" mean "the"?

Claims use "a" and "the" in ways that are at odds with plain English usage, which can lead to some strange results.

Let's say I'm describing a text processing algorithm which counts how many times a pattern is found. In plain English, it's perfectly natural to express this as "THE number of occurrences". However, claim drafting reserves "the" for previously-introduced elements. So a claim would probably use "a" instead, to read "A number of occurrences".

Note that in plain English this construction has a completely different meaning: "a number of" often means "some" or "several" (e.g.,"a number of widgets were defective"). Even so, usually no one makes an issue of using "A" to mean "THE" even though it's counter to the plain English meaning. Our brains have been trained to apply a sort of patent filter when reading claims, and we intuitively understand that the drafter really meant "THE number of occurrences even though the claim reads "A number of occurrences."

But what if you don't assume the drafter was using patentese rather than plain English? What if you instead take the position that "a number of" has two different meanings. Then isn't the claim indefinite?

In the recent decision Ex parte Whitney (PTAB 2013), the Board said Yes, it is indefinite. The claim language at issue was: "comparing a number of occurrences of a text pattern in the collection of text at one moment in time with numbers of occurrences of the text pattern in the collection of text at other moments in time.” The Board explained as follows:

     Applicant's arguments ... focus on the failure of the prior art to disclose or suggest comparing an actual numerical count of occurrences, i.e., “a number of occurrences,” of a text pattern in a collection of text at one moment in time with the actual numerical count of occurrences of the text pattern in the collection of text at other moments in time. However, it is equally proper to interpret the phrase, “a number of occurrences,” as the Examiner does, to refer to an indefinite group of occurrences of a text pattern, e.g., some occurrences or several occurrences of the text pattern that are compared at different points in time based on some unspecified criteria.
     Because the claim language is susceptible to two equally reasonable interpretations, the claim language is ambiguous, and, thus, indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). Therefore, we will enter a new ground of rejection of claims 1-50, 53, and 54 as indefinite under 35 U.S.C. § 112, second paragraph.

The Examiner did not raise this issue. And because the claim was indefinite, the Board refused to decide on the prior art rejection. (In re Steele, 305 F.2d 859, 862 (CCPA 1962)(A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.)

A few months earlier, the Board reached the opposite result in Ex parte Qu (PTAB 2013). The limitation at issue read "wherein an arithmetic sum or difference of twice a number of stator teeth and a number of the stator poles equals a number of rotor poles." The Examiner asserted that it was unclear whether "a number of" ... "intended to refer to the total number of teeth or poles or some subset thereof.” The Examiner then interpreted the phrase to mean "subset of teeth" in the prior art rejection. The Examiner explained as follows: 

[T]he devices disclosed in Qu satisfy equation (1) because any number of rotor poles, stator poles, and stator teeth can meet the claimed limitation since ‘a number’ can be any integer, up to the maximum number of poles/teeth disclosed by Qu.

The Board found the claim was not indefinite in view of the specification:

In determining whether a particular claim is definite, the claim’s language must be analyzed in light of the content of the particular application, the prior art’s teaching, and the interpretation that would be given to the claim’s language by a person of ordinary skill in the art at the time the invention was made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009).

The Board found that an equation in the specification made clear that "A number of" meant "THE number of":

The number of the rotor poles, the number stator poles and the stator teeth are configured to satisfy: 2 * S_teeth ± S_pole = R_pole, wherein STEETH refers to the number of stator teeth 30, SPOLE refers to the number of stator poles and RPOLE refers to the number of rotor poles.

Using this construction, the Board then reversed the prior art rejection.

I think these two decisions are outliers. In the first place, I think most Examiners use the same "patentese" rules of antecedent basis that claim drafters do. Most don't reject as indefinite, and most don't take the position that "A number of" means "SOME of". So the Board probably doesn't see this issue raised by the parties very often. I also looked for other decisions where the Board raised the issue, and didn't see any.

But these decisions do highlight how very different claim language is from plain English.

Is it circular reasoning when an obviousness rejection says the reason for adding a feature is to get that feature?

Takeaway: Sometimes the Examiner asserts that the reason to add a feature from a secondary reference is to obtain that very same feature. Is this circular reasoning and thus an improper rationale for obviousness? Today's post highlights a few cases where the PTAB said this logic was insufficient to support a conclusion of obviousness.

Discussion: In many obviousness rejections, the Examiner's rationale for combining amounts to "add feature X from reference B to reference A in order to get feature X." Yet obtaining the added feature X is only a reason to combine if having X provides an undisputed advantage, right? Otherwise, it's If the mere presence of X doesn't provide such an advantage, then the Examiner still hasn't shown why a POSITA would combine A and B.

In today's post, I'll discuss a few cases where the Examiner used this sort of reasoning and the Board reversed. Now, I'm not saying that this argument is a winner. In many of the decisions that I review, I end up convinced that X does convey an undisputed advantage, and thus does serve as a proper reason to combine. But if you have a case where you think "add X to get X" doesn't adequately motivate a POSITA to combine the references, you may find the Board's reasoning in these three decisions to be helpful in framing your argument.

The claim in Ex parte Banna (PTAB 2014) involved a multi-stage receiver including a delay controller. The claim limitation at issue required the controller to "select the delay value for the delay block by calculating a processing delay associated with the generation of the one or more processing parameters." The Applicant appealed an obviousness rejection that used a single reference. The Examiner acknowledged that the single reference (Sendyk) did not teach calculating a processing delay, but asserted that it would have been obvious “to modify the invention of Sendyk, and to obtain the time difference between the two delay control signals to have the delay value.” (Emphasis added.) The Applicant argued that “the Examiner has failed to identify any valid reason to modify Sendyk.” (Emphasis in original.)

The Board agreed that the Examiner did not provide a reason with rational underpinning, and reversed the rejection. The Board cited In re Chaganti, 2014, WL 274514, *4 (Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been obvious to one of ordinary skill.’ Such circular reasoning is not sufficient–more is needed to sustain an obviousness rejection.")

In Ex parte Foxenland (PTAB 2013), the claim at issue related to ordering a call list of party identifiers (i.e., phone numbers) based on call frequency, where two or more communication identifiers correspond to a single party identifier. More specifically, the claim required that "the call frequency information for the single party identifier includes the call activity related to each of the at least two of the plurality of communication identifiers." The Examiner relied on Kreitzer's arrangement of a call list in order of call frequency based on communication identifiers, and Levy's use of multiple phone numbers associated with a single party. As a reason for incorporating Levy into Kreitzer, the Examiner offered "for the purpose of managing a plurality of communication identifiers that correspond to a single party identifier by storing these data in the communication terminal."

The Board reversed the obviousness rejection. The Board found that the Examiner had concluded obviousness without giving a "specific reason why the ordinary artisan would have had any incentive to incorporate multiple different numbers associated with a single individual as taught by Levy into the hotlist of Kreitzer." (Emphasis added.) Thus, although the Examiner had shown that each claimed feature was known, he did not provide a sufficient reason for combining them. 

The reexamination appeal LG Electronics v Whirpool (PTAB 2013) involved ice dispensing in a bottom mount refrigerator, which purportedly "presented a unique challenge because the freezer compartment is located lower than desired for an ice dispensing location." The Board framed the obviousness issue as whether the Examiner provided a sufficient reason to "incorporate both an ice dispenser and a separate door in the same ice compartment" as required by the claim. 

The Examiner combined a primary reference showing a door providing access into a refrigerator ice making/storage compartment with a secondary reference showing a refrigerator ice dispenser. The rejection used the "predictable result" rationale, asserting that "such a combination would apply known features, such as an ice compartment door, to achieve a predictable result of providing a user access to the ice in the ice compartment." The Board reversed. The Board assumed that "such a combination would apply known features to achieve a predictable result" – but this is true only after the decision is made to combine these features. The rejection failed because the Examiner did not explain "why one would have chosen to combine both a prior art access door and a dispenser in a single refrigerator in the first place." (Emphasis in original.)