All Things Pros

Board affirms anticipation of balloon catheter after interpreting "circumferentially extending"

noreply@blogger.com (Karen G. Hazzah) — Tue, 30 Apr 2013 02:30:00 +0000

Takeaway: On an appeal of a claim to a balloon catheter, the dispositive issue was claim interpretation relating to a scraper cord carried along outer surface of the balloon. The claim recited that the cord had "a circumferentially extending intermediate portion." The Examiner mapped the cord to the guide wire of a reference catheter. The Applicant argued that the guide wire was so thin that it was unreasonable to say it extended in a circumferential direction. The Examiner took the position that because the guide wire had some width, it did indeed extend circumferentially. The Board agreed and affirmed the rejection. (Ex parte Shekalim, PTAB 2012.)

Details:

Ex parte Shekalim
Appeal 2011009757; Appl. No. 11/885,158; Tech. Center 3700
Decided July 5, 2012

The application was directed to a balloon catheter with an external scraper cord. When the balloon expands, the cord comes into contact with the blood vessel walls. As the balloon is moved along the vessel, the cord scrapes deposits from the vessel walls.

A representative claim on appeal read:

     1. Apparatus for removing deposits from a selected location on the inner surface of a tubular structure, comprising:
     an expansible device constructed such that in its non-expanded condition, it is introducible into the tubular structure, manipulatable therein to said selected location of the tubular structure, and radially-expansible therein to engage the inner surface of the tubular structure and the deposits to be removed; and
     at least one elongated scraper cord carried on the outer surface of said expansible device,
     said scraper cord being of a flexibility and a thickness to engage the inner surface of said tubular structure upon the expansion of said expansible device, and
     having a circumferentially extending intermediate length axially movable with respect to and along the outer surface of said expansible device in its expanded condition to scrape away said deposits from the inner surface of the tubular structure.
(Emphasis added.)

During prosecution, the Examiner rejected an earlier version of claim 1 as as anticipated by the balloon catheter in FIG. 5 of McMurtry (shown below).

The Examiner mapped the "expansible device" element to McMurtry's balloon 14 and the "scraper cord" element to McMurtry's guide wire 15. The Examiner noted that the guide wire was movable along the outer surface in two ways: proximally/distally, through ports 21 and 22; and rotatably, via its proximal end through opening 20 (not shown in FIG. 5).

The Applicant argued that McMurtry's element 15 was not a "scraper cord" but instead was a "guide wire" that acted to guide the catheter into the artery and hold the balloon after expansion. According to the Applicant, McMurtry's guide wire was "certainly not constructed to serve as a 'scraper cord' to scrape away deposits from the inner surface of the artery.

Nevertheless, Applicant amended to further describe the scraper cord as "having a circumferentially extending intermediate portion axially movable." The Applicant then asserted that "such a structure is clearly not present in McMurtry, and to modify it to provide such a structure would render the device of that patent unworkable to perform its intended guiding function."

The Examiner maintained the rejection on final. With respect to the "circumferentially" limitation, the Examiner explained that "since the cord 15 has a thickness/is three dimensional, it extends circumferentially." With respect to the "axially movable" limitation, the Examiner repeated the same comments about proximal/distal movement and rotational movement. Finally, the Examiner found "no structural limitations that distinguish the claimed 'scraper cord' over the cord/guidewire in the McMurtry et al. reference that would deem the cord/guidewire incapable of scraping within a vessel."

The Applicant filed an After Final Response. The Applicant argued that the Examiner's interpretation of the claimed scraper cord was unreasonable, and that the guidewire in the reference was not capable of scraping.

[O]ne skilled in the art would not construe the above-quoted recitation from claim 1 as "reading on" the thickness of the guidewire of McMurtry et al., nor that the guidewire of McMurtry et al. is capable of performing the function of the scraper cord in Applicant's construction, namely to scrape away deposits from the inner surface of the tubular structure. Particularly in this case, where the guidewire is of small circular diameter, both its "circumferentially-extending intermediate portion", which produces the scraping action, and the scraping action produced thereby, would not be significant especially since its movement is constrained to a linear, axial movement.
(Emphasis added.)

The Examiner issued an Advisory Action that essentially repeated the earlier assertions.

On appeal, the Applicant made the same arguments: that the Examiner's construction of the claimed structure of the scraper cord was unreasonable; and that the guide wire wasn't capable of the claimed scraping function. The Examiner maintained the same position in the Answer. The Applicant filed a Reply Brief alleging that the Answer "failed to reference Appellant's arguments in the Appeal Brief."

The Board affirmed the anticipation rejection. The Board agreed with the Examiner’s finding that McMurtry’s guide wire had the capabilities of the scraper cord recited in claim 1. More specifically, the Board agreed that since a guide wire does have some thickness, "its width or diameter necessarily extended circumferentially with respect to the balloon’s outer surface." The Board further elaborated on this point:

That is, some portion of the balloon’s circumference is necessarily covered by the width of the guide wire, even if less than a degree of the circumference. McMurtry’s guide wire satisfies the first of the disputed requirements.

The Board also addressed the "axially movable" limitation. After first noting that the claim itself didn't specify a reference axis, the Board looked to the specification or drawings. The phrase "axially movable" was not found in the specification, and no annotations were present in the drawings to specify an axis. However, movement along the longitudinal axis of the balloon was illustrated in Applicant's Figs. 1a-c, and this met the ordinary meaning of "axially." Since McMurtry’s guide wire also moved parallel to the longitudinal axis of the balloon, McMurtry taught this limitation.

My two cents: The Applicant's catheter clearly had structure which was distinguishable from McMurtry. Compare McMurtry's guide wire 15 (left) with Applicant's scraper cord 4c (below right):

Applicant's top view of the balloon in FIG. 1b shows that the cord's intermediate portion 4c
surrounds a much larger portion of the circumference of the balloon, due to its multiple segments that snake back and forth. In contrast, McMurtry's guide wire 15 covers only an insignificant portion of the circumference of the balloon, though since the guide wire 15 has a width it does cover some of the balloon.

I suspect it was this aspect that the Applicant tried to express through the "circumferentially extending" limitation. But the Applicant's choice of language didn't quite do it for the Examiner or for the Board.

I'm not an expert in drafting mechanical claims, so I won't opine on how best to express this distinction. Maybe you need to at least add in the notion of multiple segments, if "circumferentially" only make sense when there are multiple segments to go around the circumference. Note that this aspect was captured in dependent claim 4. On appeal, dependent claim 4 was rejected as obvious, but The Examiner withdrew this rejection in the Answer.

I will say that the Examiner's interpretation of "circumferentially extending" seems devious to me, but not ridiculous. Maybe the Applicant fully appreciated this yet appealed the independent claim anyway, knowing that claim 4 (which better expressed the distinction) was allowable.

Board reverses anticipation rejection which relied on secondary reference incorporated into Background of primary reference

noreply@blogger.com (Karen G. Hazzah) — Thu, 11 Apr 2013 03:48:00 +0000

Takeaway: The Applicant appealed an anticipation rejection. The Examiner relied not only on the anticipatory reference, but also on an issued patent incorporated into the anticipatory reference. The incorporated reference was discussed in the Background section of the anticipatory reference, rather than in the Detailed Description. The Board reversed on the grounds that the Examiner's reliance on the incorporated reference was improper under these facts. "The Examiner has not provided a link between Martin’s embodiments and Table I in Beaverstock.Nor do we see such a link in Martin. Rather, the Examiner has simply selected various disparate features from the references in arriving at the claimed invention which is improper under § 102." (Ex parte Laub, PTAB 2009.)

Details:
Ex parte Laub
Appeal 2009004880; Appl. No. 10/869,070; Tech. Center 2100
Decided December 18, 2009

The application was directed to an online transactional processing (OLTP) system for a production line that makes a product. A representative claim on appeal read:

     13. A method of calculating a value of work in progress on the basis of reporting data received from a set of reporting points of work centers of a production line for producing a product, the production line being logically divided into shop areas, one reporting point of each shop area being an exit point corresponding to an intermediate production step, the method comprising the steps of:
...     generating a first table comprising aggregated quantities of intermediate products and aggregated scrap quantities reported from the exit points on the basis of the reporting data stored in the database;
     ... and
     calculating a total value of work in progress by means of the first and second tables by the server computer.

In a first Office Action, the Examiner rejected independent claim 13 as anticipated by Martin, which described real-time accounting of plant performance at a sub-plant level. In particular, the Examiner relied on the following two sentences in Martin for the "generating a first table" step.

The plant can also purchase electricity from a local utility and can sell excess electricity to the utility ... For the purposes of this example, it is assumed that the power plan consists of two boilers and a generator. Steam from the two boilers is used both to drive the generator, which in turn, provides electricity to the plant, and to provide steam directly to a number of process units in the plant."

The Applicant argued the "generating" limitation was not taught by Martin as alleged. More specifically, the Applicant argued that the Martin's statements that a power plant uses boilers and a generator did not teach generating a table, and did not teach aggregated quantities as reported from exit points, as recited in claim 1.

In the next (final) Office Action, the Examiner changed the rejection of claim 13 to anticipation by Martin "with incorporated reference Beaverstock." The rejection mapped the "generating" step to Beaverstock's Table 1, a block of code showing calculations from variables.

The Applicant filed an After Final Response. Applicant noted that Beaverstock taught an incurred resource cost that was calculated from the variables catalyst usage, energy cost, and materials cost, and that the calculation was implemented by six functions implemented by code in Table 1. The Applicant argued that these did not correspond to aggregated quantities as reported from exit points, as recited in claim 1. An Advisory Action did not comment on the Applicant's arguments on claim 13.

On appeal, the Applicant repeated the same arguments in the Appeal Brief. In the Answer, the Examiner further explained which variable in the code block corresponded to the claimed aggregate scrap quantity.

The Board reversed on the grounds that the Examiner had combined the unrelated teachings of Martin and Beaverstock in a manner not permitted in an anticipation rejection. Beaverstock was discussed in Martin's Background, and was therefore a distinct disclosure not directly related to the portions of Martin relied on for the other claimed elements.

The Examiner has not provided a link between Martin’s embodiments and Table I in Beaverstock. Nor do we see such a link in Martin. Rather, the Examiner has simply selected various disparate features from the references in arriving at the claimed invention which is improper under § 102. See Net MoneyIn, 545 F.3d at 1369; see also Arkley, 455 F.2d at 587.

My two cents: There are a few scenarios in which it's proper for the Examiner to use multiple references in an anticipation rejection -- see MPEP 2131.01 for a list. But these scenarios are pretty limited, so be ready to challenge if the Examiner steps outside of these bounds.

The Applicant got a lucky break here, since the Applicant did not argue the particular issue which the Board used to reverse the rejection.

Follow-up to Ex parte Cogdill - Examiner introduces "equivalent" circuit diagram

noreply@blogger.com (Karen G. Hazzah) — Fri, 05 Apr 2013 15:37:00 +0000

Last week I posted here about Ex parte Cogdill, a case in which the Examiner relied on an "equivalent' circuit diagram for anticipation. My post resulted in a fair amount of reader comments, and the issues brought up in the comment thread inspired me to do this follow-up post. I don't have a strong opinion about the right answer to most of these issues. (Many of those who commented did have strong opinions about the rightness of their position.) I do think the issues are interesting to explore.

Though the Applicant in Ex parte Cogdill didn't identify it as such, the threshold legal issue here is whether or not an Examiner-introduced diagram can be used in a rejection – even if is equivalent. As commenters pointed out, such a diagram is not prior art under § 102 or § 103.

I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. Is this sort of annotated drawing also prohibited because it's not prior art? I don't see it that way. I view this drawing-plus-added-text as the Examiner's assertions about the teachings of the reference.

I've also seen a few cases where the Examiner annotates with something like a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42. Once again, I see this as an Examiner assertion about the teachings of the reference.

So maybe what happened in Cogdill's equivalent circuit drawing is analogous to the Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It's well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram that much different than substituting the term "lever" in the reference with the word "member"?

That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, an Examiner writes something like

Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1); ...

Is the Examiner-created Fig. 3B in the Cogdill case just a way for the Examiner to better illustrate how he was reading Johnson's Fig. 3? In other words, is Fig. 3B an Examiner finding about the teachings of the reference rather than a type of evidence that is inadmissible because it doesn't qualify as prior art?

Could the Examiner have introduced Fig. 3B as evidence through a personal affidavit? Surely an Applicant could introduce an equivalent circuit diagram as declaration evidence, along with an explanation of how the claim limitation at issue is not disclosed by the diagram. So could the Examiner do the same thing through a personal affidavit?

If we get past the threshold legal issue, then the next issue might be the burden of proof on the equivalence of the circuit diagrams. Does a mere assertion of equivalence by the Examiner shift the burden to the Applicant to explain why they are not equivalent? Can the Applicant attack the asserted equivalence with attorney argument, or is real evidence required?

If we get past all that, we reach the questions of fact as to whether Figs. 3 and 3B in Ex parte Cogdill really were equivalent and whether the limitation at issue was disclosed. I'm not a EE, so I'll refrain from expressing an opinion on that ultimate question. I will, however, ask a few questions about the issue.

As far as circuits go, the claim and the diagrams in Cogdill look pretty simple. You have to understand the difference between parallel and serial. But that's covered in a basic physics class, so I'm not convinced you need to be a EE to interpret this aspect of the circuit. (And yeah, you also have to understand what impedance is, but that doesn't appear to be at issue).

The rest of the claim appears to describe how the impedance elements are connected, using terms such as "between," "one end" and "branch points." With all this talk about connections, it this more of a mechanical-type claim? Or do we need to understand something about circuits in order understand what those positional relationships mean in a circuit context?

Board affirms anticipation rejection based on an Examiner-provided circuit diagram that was equivalent to reference diagram

noreply@blogger.com (Karen G. Hazzah) — Wed, 03 Apr 2013 13:01:00 +0000

Takeaway: In an anticipation rejection of a claim to an electrical circuit, the Examiner relied on a circuit diagram and asserted it to be equivalent to the diagram used in the reference. The Applicant appealed and argued that the Examiner's reliance on this figure was improper. The Board affirmed the anticipation rejection after finding that the Examiner's diagram was equivalent and disclosed the claim limitation at issue. (Ex parte Cogdill, PTAB 2010.)

Details:
Ex parte Cogdill
Appeal 2010005510; Appl. No. 10/655,964; Tech. Center 2800
Decide June 27, 2010

The application was directed to circuitry for memory modules. A representative claim on appeal read:

     1. A circuit for a memory module address bus comprising:
     a transmission line comprising a dampening impedance between a driver and a branch point of said transmission line; and
     a parallel termination impedance having one end coupled to said transmission line between said series dampening impedance and said branch point,
     wherein said parallel termination impedance is on the same side of any memory module as said driver;
     said transmission line having branches from said branch point,
     wherein ones of said branches are coupled to at least one memory module interface.
(Emphasis added.)

The Examiner rejected the originally filed claims as anticipated by Figure 3 of the Johnson reference (shown below).

Johnson Fig. 3

In response, the Applicant amended to further describe the two claimed impedance element as "series" and "parallel" and also added the "same side" limitation. The Applicant argued that Fig. 3 of Johnson did not disclose the parallel impedance as claimed.

The Examiner maintained the rejection in a Final Office Action, and provided a "Fig. 3b" (shown below) which the Examiner described as an "equivalent circuit."

"Fig. 3B"

According to the Examiner, "it is irrelevant how these schematics are drawn as long as the connections/nodes are the same, since it is merely a matter of drawing choice." The Examiner then explained the rejection as follows:

The parallel termination impedance (326) is between the series dampening impedance and the branch point (star node) and the parallel termination impedance (326 - where 326 is parallel in reference to Vtt and star node) is on the same side (below memory modules 302-308) as the driver (312).

The Applicant appealed. In the Appeal Brief, the Applicant acknowledged that the rejection was based on the Examiner's "Fig 3b," allegedly an equivalent circuit. But the Applicant's argument addressed only Johnson's Fig. 3.

More specifically, the Applicant argued that Johnson's Fig. 3 disclosed a termination impedance that was NOT located as claimed, since that diagram showed "a parallel terminal impedance 326 having one end coupled to a branch point, while the other end is coupled to the termination voltage" (emphasis in original). In contrast, the Applicant argued, the appealed claim required the parallel termination impedance to have "one end coupled to a transmission line between said series dampening impedance and said branch point, wherein said parallel termination impedance is on the same side of any memory module as said driver" (emphasis in original).

In the Answer, the Examiner maintained his position. He also noted that the rejection relied on the Fig. 3b equivalent circuit rather than Fig. 3 in Johnson.

The Applicant filed a Reply Brief. In the Reply Brief, the Applicant argued that the Fig. 3b used by the Examiner was not part of the Johnson reference, and was also missing lead-in transmission line 314. The Applicant also pointed to statements in Johnson about an advantage of the relative position of the series impedance and the terminating impedance's branch point. The Applicant then argued that the configuration in the Examiner's Fig. 3b would defeat Johnson's objective.

The Board affirmed the rejection, based on a finding that the Examiner's reliance on the "equivalent circuit" of Fig. 3b was appropriate.

We agree with the Ex that this depiction of Johnson's Fig 3 is electrically equivalent to Johnson's description. Appellant's argument that Fig. 3b is not part of Johnson's disclosure may be literally accurate but is not relevant. Fig 3b is merely another way of drawing the components of Johnson's invention, electrically connected identically to the manner shown in Johsnon Fig 3. Electrical circuit diagrams are intended to illustrate the manner in which electrical and electronic components are connected to one another. They are not necessarily intended as an exact, to-scale representaiton of the layout of the actual circuit.

My two cents: I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. I've seen a few cases where the Examiner draws a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42.

Maybe what happened here with the "equivalent" drawing is more like an Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram much different than substituting the term "lever" in the reference with the word "member"? That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, the Examiner writes something like
Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1); ...
Was the Examiner's made up Fig. 3B just a way for him to better explain how he was reading Johnson's Fig. 3?

In the end, the Applicant here didn't hit the Examiner's findings/assertions head on, and would have been better served by clearly taking one of three positions. One, argue that, as a point of law, the Examiner is not allowed to introduce his own "equivalent" drawing. Two, explain why the Examiner's figure was not in fact equivalent. Three, argue why the equivalent circuit did not teach the claimed element. Not hitting the Examiner's position head on was a fatal mistake here.

Perhaps the Applicant's argument in the Reply Brief about Johnson's objective was meant to be an argument against equivalence. If so, the Applicant should have made that more clear, because an argument about objectives of the reference may go to non-obviousness, but is irrelevant to an anticipation rejection.

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

noreply@blogger.com (Karen G. Hazzah) — Fri, 29 Mar 2013 16:24:00 +0000

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

noreply@blogger.com (Karen G. Hazzah) — Wed, 06 Mar 2013 16:08:00 +0000

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

noreply@blogger.com (Karen G. Hazzah) — Mon, 04 Mar 2013 04:00:00 +0000

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

noreply@blogger.com (Karen G. Hazzah) — Thu, 14 Feb 2013 14:21:00 +0000

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

noreply@blogger.com (Karen G. Hazzah) — Thu, 07 Feb 2013 11:48:00 +0000

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)

noreply@blogger.com (Karen G. Hazzah) — Tue, 29 Jan 2013 15:53:00 +0000

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.

Board reverses 101 "transitory" rejection because specification amendment removed reference to signals

noreply@blogger.com (Karen G. Hazzah) — Thu, 17 Jan 2013 12:43:00 +0000

Takeaway: The Patent Trial and Appeals Board reversed a § 101 rejection of a "computer program product tangibly embodied in an information carrier" because the Applicant had amended the specification during prosecution to remove references to signals and carriers. Although recognizing that In re Nuijten required a rejection under § 101 "when the broadest reasonable interpretation of a claim covers a signal per se," the Board determined that the broadest reasonable interpretation should take into account the specification amendment that removed the reference to signals and carriers.

Details:
Ex parte Pyka
Appeal 2010005667; Appl. 11/025,686; Tech. Center 2100
Decided: Dec. 31, 2012

The application on appeal was directed to computer searching using global agreed-upon data structures. A representative claim on appeal read:

     14. A computer program product tangibly embodied in an information carrier, the computer program product comprising instructions that, when executed, cause at least one processor to perform operations comprising:
...
     wherein the request broker is configured to receive the search request and to transmit the search request to one or more non-local servers for execution of the search request; and
     wherein the standardized data structure is a globally agreed-upon data structure.
(Emphasis added.)

During prosecution, the Examiner rejected claim 14 under § 101 as being directed to non-statutory subject matter. Based on a particular paragraph in the specification, the Examiner noted that "Appellant intends the information carrier to include signals as such the claim is drawn to a form of energy." However, the Examiner further noted that "energy is not one of the four categories of invention."

In response, the Applicant amended the specification to delete the sentence upon which the § 101 rejection was based: "Optionally, further carriers and further signals embody computer program products (CPP) to be executed by further processors in computer 901 and 902." In the Remarks section, the Applicant stated that the amendment overcame the rejection "by narrowing the scope of the claim to statutory subject matter."

In a Final Office Action, the Examiner maintained the § 101 rejection and added an objection to the specification, alleging that the amendment by deletion introduced new matter.

The Applicant appealed the § 101 rejection and various prior art rejections. In the Appeal Brief, the Applicant first addressed the new matter objection. According to the Applicant, "a change does not equate to an addition" and "narrowing a specification's disclosure by deleting material is .... the antithesis of adding matter." Turning to the § 101 rejection, the Applicant argued that claims should be interpreted in light of the amended specification; without the carriers and signals language in the specification, the claim was statutory.

The Examiner elaborated on his reasoning in the Answer:

The question here is given Appellant's specification would one of ordinary skill in the art interpret "information carrier" to include signals which are not statutory subject matter. The deletion of the phrase does not change what is meant by "information carrier". Appellant's specification states "Generally, carrier 970 is an article of manufacture having a computer-readable medium with computer-readable program code to cause the computer to perform methods of the present invention. Further, signal 980 can also include computer program product." Given this statement information carrier is would generally (most of the time) be a computer readable medium (as defined on pages 11 and 12 of the specification). However, an information carrier could also include the signal that holds the computer program product as stated.

The Applicant filed a Reply Brief. After noting that "removing material from the specification is specifically permitted by the [C.F.R.]", the Applicant explained that the Examiner's insistence that only originally filed matter be considered led to nonsensical results.

For example, if the reasoning in the Examiner's Answer were applied to the interpretation of claims, then the claims as originally-filed would indicate an intention on the part of an applicant to broadly claim his or her invention, any amendments to those claims would not and could not overcome that original intention, and the amended claims might never be allowed based solely on the original claiming intention of an applicant. The Appellant respectfully submits that this simply cannot be what the Patent statute and the rules of the Patent Office dictate ...

The Board reversed the § 101 rejection. The Board first noted that In re Nuijten required a rejection under § 101 "when the broadest reasonable interpretation of a claim covers a signal per se." However, the broadest reasonable interpretation should take into account the specification amendment that removed the "carriers and signals" sentence.

Thus, the broadest reasonable interpretation of claim 14's preamble ("[a] computer program product tangibly embodied in an information carrier") only covers a computer program product embodied in physical media (i.e., a nontransitory tangible media). When the scope of the claim language is considered in light of Appellants' amended Specification, we conclude that the claimed "tangibly embodied in an information carrier" means "materially or physically" embodied in a physical media (non-transitory tangible media), and not embodied in non-physical media (transitory propagating signals).

My two cents: Not sure why the Applicant deleted from the spec rather than amended the claim to add "non-transitory." The appeal was filed back in 2009, and I don't think adding "non-transitory" was in vogue back then like it is now.

I've seen many Board decisions that affirmed § 101 rejections when the spec was silent about signals, so it's interesting that the Board used the absence of signals in the amended spec to reverse the rejection. The PTO's current position is that silence in the spec about signals and computer readable media means signals are covered:

The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent.
(PTO 2010 Memo "Subject Matter Eligibility of Computer Readable Media.")

Says who? How did the PTO decide that the ordinary and customary meaning of CRM covers signals?

The Applicant's blanket statement that deleting from the spec can't possibly be new matter ignored Federal Circuit precedent. When the Appeal Brief was filed in 2009, the controlling law was Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008). In Baldwin, the Federal Circuit held:

The examiner rightly refused to allow the applicants to amend the specification to remove references to `heat' as the way of sealing the sleeve," for the change "would have broadened the patent and introduced impermissible new matter" and rendered the reissue claims "invalid for lack of support in the initial disclosure."

The Federal Circuit reiterated this position more recently in Anascape, Ltd. v. Nintendo of America, Inc., 601 F. 3d 1333 (Fed. Cir. 2010).

Board reverses anticipation based on inherency when Applicant provides counterexamples

noreply@blogger.com (Karen G. Hazzah) — Thu, 03 Jan 2013 06:20:00 +0000

Takeaway: An Applicant appealed claims to a user interface and argued the limitation "determining a distance between the focus of attention and the display event." The Examiner relied on a drawing in an Excel user manual showing "tracer arrows," in conjunction with an inherency argument. Though the Examiner went to some effort to explain how one could draw inferences about what Excel was doing from the screen shot, the Applicant used counterexamples to demonstrate that Excel wasn't necessarily determining distance. (Ex parte Mackinlay, PTAB 2012.)
Details:
Ex parte Mackinlay
Serial No. 10/687,486; Tech Center 2100
Decided: June 18, 2012

The claims were directed to aspects of a user interface. A representative claim on appeal read:

     1. A method of shifting attention comprising the steps of:
     determining the location for a focus of attention;
     determining a display event;
     determining the location of the display event;
     determining an attention shifting display element based on the display event, the determined location of the display event and the focus of attention; and
     determining a distance between the focus of attention and the display event;
     wherein the attention shifting display element is determined based on the determined distance, such that different types of attention shifting display elements are determined for different distances.
(Emphasis added.)

The Examiner rejected the independent claim as anticipated by the printed publication "User's Guide Microsoft Excel, Version 5.0 1993" (Excel). The Examiner read the "determining an attention shifting element" on Excel's "tracer arrows to show the flow of data into a formula, based on the starting active cell within a worksheet, and the users choice of tracing precedents or dependents." The Examiner asserted that FIG. 4 of Excel taught "determining the distance 'length of the tracer arrow', from beginning active cell to the point of the arrow."

The Examiner elaborated on his reasoning in an Advisory Action:

Excel teaches a tracer arrow starting in one cell and ending in another cell, which is acknowledge by the Applicant. One of skilled art has to infer that some sort of calculations of the "length of the tracer arrow" has to be taken into consideration by the system in order to draw the arrow accordingly. Knowing the relative number of pixels between the two cells, as the Applicant states, provides measurements to the system for calculating how long to create the tracer arrow to achieve the goal of the arrow starting in one cell and ending in another.

On appeal, the Applicant argued the "determining a distance" limitation. The Applicant first explained that the reference did not explicitly teach the limitation:

The applied reference makes no indication or reference to the length of the tracer arrow, but instead discloses tracers that "track data flow by drawing arrows connecting the active cell with related cells on your worksheet. Tracer arrows point in the direction of data flow." See page 668, section "About Tracer Arrows" from Excel. Thus, Excel merely discloses that a trace arrow will originate in one cell and terminate in another cell.

The Applicant then attacked the Examiner's inherency argument by explaining how Excel could draw the tracer arrows without using distance:

[T]he graphic generating software used by Excel need only know the relative pixel coordinates between the two cells, not the distance. The arrow can then be drawn by many methods not requiring a calculation or determination of distance, for example determining the slope of the trace arrow and subsequently generating the trace arrow graphic starting at one cell and using the slope and horizontal range. In this example[,] no distance is calculated.

In the Answer, The Examiner elaborated on his inherency argument

In order for Excel to automatically draw the "tracer" lines and arrows, the software application makes at least three determinations: 1) the location of the "active" cell; 2) the location of each "related" cell; and 3) the direction of the flow of data between the "active" cell and the "related" cells.
Because Excel automatically makes these determinations and then automatically draws the "tracer" lines and arrows between the "active" cell and the "related" cells, Excel discloses determining a distance between the ''focus of attention" (i.e., the active cell) and the "display event" (i.e., the drawing of the "tracer" lines and arrows between the "active" cell and the "related" cells).

The Board agreed with the Applicant, finding that the reference did not disclose the feature at issue. With regard to inherency, the Board explained:

As pointed out by Appellants, there are at least two alternative ways to connect cells in a spreadsheet with tracer arrows, such as by connecting the respective cell coordinates, or by using a slope and horizontal range. In both alternatives proffered by Appellants (App. Br. 12-13), we agree that no distance determination is necessary.

The Board then reversed the anticipation rejection.

My two cents: A good example of the best way to beat an inherency argument: prove that the feature at issue is not actually required by demonstrating an alternative. The next time you make an inherency argument, spend a few minutes and see if you can come up with a counterexample. Your argument will be much more persuasive.

I do have one nitpick with the decision, in that I don't read the Applicant's inherency argument as offering two alternatives. Yes, the slope/range discussion is clearly one counter-example. But I'm not sure what the Board is referring to by "connecting respective cell coordinates". That sounds to me like the Applicant's characterization of the reference's explicit teachings. But hey, you only need one counterexample to win on inherency.

Board explains proper determination of whether prior art controller is "capable of" performing claimed function

noreply@blogger.com (Karen G. Hazzah) — Tue, 27 Nov 2012 04:28:00 +0000

Takeaway: In several appeals from Technology Center 1700, the Patent Trial and Appeal Board has reversed rejections when the Examiner asserted that a controller would have been "capable of" performing functional language. In doing so, the Board cites to precedent dealing with mechanical apparatuses, such as In re Schreiber, but also to more recent cases dealing with electronics, such as Typhoon Touch Techs., Inc. v. Dell.

One of the claims in Ex parte Fischer was directed to a plasma deposition apparatus, and included "a controller ... adapted for changing a sense of direction of said flexible substrate in said chamber ..." The Examiner asserted that the "adapted for" language was intended use, and found that the controller in the reference would have been capable of performing the function. On appeal, the Applicant argued that "adapted for" was not intended use, and that the reference must teach a controller that is programmed to support the claimed function. The Board agreed. The Board looked to the Applicant's specification and found it described a controller that was programmed to control the valves in relation to the substrate direction. The claimed controller thus becomes "a special purpose computer structured via programming to perform the control ... recited in the claims" (citing In re Alappat). Comparing that controller to the prior art controller, the Board explained that the "capable of" test was a much higher bar than that used by the Examiner:

While it might be possible to install software that would allow Lu's controller to control the valve opening based on the sense of direction of the substrate, the "capable of" test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a "controller", see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) [*22] (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir. 2010)), that is not the case here.
(Emphasis added.)

Ex parte Stengelin included claims to a fuel cell system, including a cell voltage monitoring sub-system "configured to" perform various recited functions such as "determine if a wire connection has failed by measuring the voltage of each fuel cell in the fuel cell stack". The Examiner dismissed the functional language as not adding any structure to the monitoring sub-system, finding that neither the specification nor the claims themselves explain "what in the fuel system actually performs said function." The Board found error in the Examiner's application of the "capable of" rule.

The Board first noted that the Applicant's specification described an algorithm for determining whether various components in the fuel system have failed. The Board then explained the proper standard for determining whether a prior art apparatus is "capable of" performing a claimed function.

Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to establish such capability recited in claim 1, the Examiner must demonstrate that the prior art cell voltage monitoring sub-system possesses the necessary structure, hardware or software, for example, the programming, to function as claimed. The prior art structure must be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed.Cir.2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id.

The Board then reversed, because the Examiner admitted that "neither reference is programmed or otherwise structured to function as claimed," nor did the Examiner "rely upon any reasoning why one of ordinary skill in the art would have configured the cell voltage monitoring subsystem to function as
claimed."

The claims in Ex parte Wheat were also directed to a fuel cell system, including "a controller that controls said hydrogen supply and said air supply to power said heater to warm said fuel cell stack and said water supply when said vehicle is not running" (emphasis added). The reference taught using a programmable logic controller to maintain the temperature of the fuel cell at its optimum operating temperature while the vehicle is running. Examiner took the position that the controller in the reference nonetheless satisfied the limitation at issue, because the structure of the controller did not depend on whether the vehicle is running. The Board found error in the Examiner's position.

The Board discussed the line of case law that requires an apparatus to be distinguishable on structure, then explained how this case law is applied to controllers, where algorithms define structure:

The concept behind the “capable of” test is that an apparatus that is inherently capable of performing the function recited in the claim is an apparatus no different in structure from the apparatus of the claim. For instance, a parachute defined as opening in a certain functional way, does not have a different structure than one not disclosed as so opening if the prior art parachute is inherently capable of opening as claimed. See In re Ludtke, 441 F.2d 660, 664 (CCPA 1971). A funnel-like structure that functions to control the flow of oil is really no different in structure from a funnel-like structure defined as shaped to dispense popcorn kernels if the oil funnel is capable of dispensing popcorn in the same way. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Defining a structure in terms of its function does not necessarily distinguish it structurally from a prior art structure capable of performing the function.
However, the situation is more complicated when what is being defined by the claim limitation is a controller. The function of a controller serves to define structure by defining software and/or hardware for performing the function.

Therefore, to be "capable of" performing the recited functions, the prior art controller must "contain some mechanism or software program for performing the required control". Since it did not, the Board reversed. Moreover, the Board explained that the “capable of” test requires that the prior art structure be capable of performing the function without further programming, so it is irrelevant to anticipation that "it might be possible to install software that would allow the prior art controller to warm the fuel cell stack and the water supply when the vehicle is not running."

The claims in Ex parte Kamihara were also directed to a fuel system, including "a control unit configured to control the electric power or electric current extracted from the fuel cell stack in accordance withas not adding any structure." The Examiner dismissed the "configured to" phrase as not adding any structure, asserting that “nothing in the disclosure . . . is drawn to being programmed or having programs” and that “only a general purpose computer is supported by the disclosure.” On appeal, the Applicant argued that the claimed control unit was a special program computer “programmed or otherwise configured to perform” the claimed functions. The Board reversed the rejection, citing In re Schreiber and using the same reasoning found in Ex parte Wheat:

Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the control unit must possess the necessary structure, hardware or software, for example, the programming, to function as claimed. The Examiner indeed de facto admits that neither reference nor their combination is programmed or otherwise structured to function as claimed, nor does the Examiner rely upon any reasoning why one of ordinary skill in the art would have configured the control unit to function as claimed.

The Examiner in Ex parte Dewey was similarly reversed. The claims were, once again, directed to a fuel cell system, and included "a controller for controlling the amount of heat provided by the heater ... " The Examiner asserted that the functional language did not distinguish over the prior art apparatus since the reference taught "a fuel cell stack, a heater circuit including a heater and a controller, which are the same structural features as those claimed by Applicant." The Board reversed, explaining as follows:

However, contrary to the Examiner's apparent belief, the mere fact that Breault's fuel cell system includes a controller is not an acceptable reason to believe that the controller inherently possesses the capability of performing the function required by Appellant's claim 1 controller. For the reasons detailed in the Appeal Brief and Reply Brief, the claim 1 controller is patentably distinct from a controller which is not programmed or otherwise designed to perform the claim 1 function. (Internal citations omitted.)
Similarly, as correctly argued by Appellant, the record provides no acceptable reason for the Examiner's above presumption "that [in Breault's system] the current and voltage flow through the heater are also being monitored by the controller."

My two cents: Good stuff for Applicants. This sort of broad brush treatment of the "capability" of a reference isn't common in the art units where I do most of my work. But it appears to be all too common in Tech. Center 1700. I realize that none of these decisions are precedential. Even so, if faced with such a rejection, I would borrow the reasoning used by the Board in these cases. It's a good way to school the Examiner in how case law such as In re Scheiber is properly applied to computer or controller limitations.

Note that the Typhoon and Microprocessor Enhancement cases are infringement suits. However, the stuff about capabilities and functional language relates to claim construction, not infringement analysis. And while a different standard is used for claim construction standard during prosecution, I say the "capabilities" rule used by the Federal Circuit in these cases applies equally to prosecution.

Guest Post: A Cautionary Tale Relating to Use of Declarations Under 37 C.F.R. § 1.132

noreply@blogger.com (Karen G. Hazzah) — Wed, 21 Nov 2012 03:45:00 +0000

[Guest Post by Tracey Harrach, a registered patent attorney at Maschoff Gilmore & Israelsen. Tracey's practice includes all aspects of trademark and patent prosecution. She practices in a variety of technology areas, including: chemical formulations, processes, and syntheses; semiconductor processing and fabrication; biotechnology; and material science.]

Takeaway: In a post-Therasense decision, a district court granted summary judgment on inequitable conduct stemming from declarations submitted in a reexamination proceeding (Reexam Control No. 90/010,874). Therefore, before submitting a declaration to the PTO, ensure: (1) any past or present financial relationships between the declarant and the patentee are fully disclosed, (2) declarations are provided only by individuals having skill in the relevant art, and (3) representations relating to distinctions over prior art are based on the personal knowledge of the declarant. (Caron et al. v. QuicKutz, Inc., 2:09-cv-02600-NVW (D.Ariz. Nov. 13, 2012.)

Details:

Declarations can provide an expeditious way to advance prosecution; however, declarations may also be fertile ground for charges of inequitable conduct. While Therasense has significantly raised the bar for a party asserting inequitable conduct based on the patentee’s failure to submit a prior art reference, Therasense recognizes an exception to the “but-for” standard of materiality in connection with the filing of a “false affidavit.” Therasense, Inc. v. Becton, Dickinson & Company, 649 F.3d 1276, 1292-93 (Fed. Cir. 2011).

A scathing opinion entered by the District Court in Arizona provides a reminder of the dangers associated with the use of declarations in practice before the PTO. In Caron et al. v. QuicKutz, Inc., Case No. 2:09-cv-02600-NVW, the Court granted summary judgment of unenforceability due to inequitable conduct relating to U.S. Patent No. 7,469,634. The Court identified three separate acts of inequitable conduct involving declarations submitted to the PTO by the plaintiffs.

First, the Court found that plaintiffs committed inequitable conduct by submitting three declarations under 37 C.F.R. § 1.132 by individuals who had undisclosed prior financial relationships with the plaintiffs. Order, at page 15. See Declarations under 37 C.F.R. § 1.132 submitted on July 5, 2011 in Reexam. Control No. 90/010,874 (available on Public PAIR). These declarations were submitted by the plaintiffs in order to establish that the plaintiffs’ products were unique in the marketplace. Specifically, the plaintiffs argued to the PTO that “each declarant identifies that these die features and benefits are novel in their opinion and have never been commercialized in the scrapbooking industry before Spellbinders introduced this invention.” See Office Action Response dated July 5, 2011, submitted in Reexam. 90/010,874.

The Court cited Ferring B.V. v. Barr Laboratories, Inc. for the proposition that “the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.” 437 F.3d 1181, 1187 (Fed. Cir. 2006). The Court rejected the plaintiffs’ arguments that the prior relationships were minimal, and accordingly, did not need to be disclosed. Specifically, the Court found:

Although Plaintiffs contend that the compensation each received was minimal, the evidence shows a basis for possible bias by each declarant. Clear and convincing evidence shows each declarant had motivation to provide an opinion favorable to Plaintiffs’ patent application. The PTO was deprived of evidence that it needed to determine the weight it should give to the declarations….
Order, at page 15.

This issue can be avoided by directly communicating to a declarant the importance of full disclosure of prior and current relationships and ensuring that those relationships are clearly recited in the declaration. The PTO does not prohibit submission of declarations by declarants with relationships with the patentee. On the contrary, the Federal Circuit explained in Ferring:

In coming to this conclusion, we fully recognize that inventors often consult their colleagues or other persons skilled in the art whom they have met during the course of their professional life. Accordingly, when an inventor is asked to provide supportive declarations to the PTO, it may be completely natural for the inventor to recommend, and even contact, his own colleagues or people who are, or who have been, affiliated with his employer and to submit declarations from such people. Nothing in this opinion should be read as discouraging such practice. Rather, at least where the objectivity of the declarant is an issue in the prosecution, the inventor must disclose the known relationships and affiliations of the declarants so that those interests can be considered in weighing the declarations.
437 F.3d at 1194-95.

Second, the Court found that the plaintiffs committed inequitable conduct by submitting declarations from two individuals who based their declarations solely on experience with the plaintiffs’ product as end users. Order, at pages 14-15. The Court found “[h]ad the PTO known that [the declarants] did not have professional experience in the relevant industry, it would have given little or no weight to their opinions, particularly regarding the novelty of Spellbinders’ dies.” Id., at page 15. In reaching this conclusion, the Court noted the plaintiffs’ representation that the declarations were provided by individuals with “experience in the arts and crafts and scrapbooking industry that are familiar in some way with the [plaintiffs’ products].” Id., at page 14. The Court found that the two individuals “[b]oth provided opinions using technical language that implied professional experience in the relevant industry rather than merely experience as a customer….” Id.

A practical way to avoid this issue is to have a declarant prepare his or her own declaration and to include in the declaration a description of the declarant’s relevant experience. This approach ensures that the language used by the declarant is commensurate with the declarant’s experience. Further, by relying on the declarant to describe his or her qualifications, the PTO will have relevant information available to gauge the declarant’s competence to reach the conclusions recited in the declaration.

Third, the Court found that the submission of a declaration by the inventor and one of the plaintiffs, Jeff Caron, constituted “an affirmative act of egregious misconduct” due to unfounded and unsupported characterizations in the declaration of the prior art reference upon which the PTO relied. Id., at page 21. The declaration in question was filed by the Plaintiffs on October 24, 2011, in Reexam. 90/010,874, and purported to describe the teachings of International Publication No. WO 03/016035. The Court found that the declarant lacked personal knowledge relating to the assertions made in his affidavit.

The Court’s finding that the declaration constituted “an affirmative act of egregious misconduct” was based upon a finding that the declaration “misrepresented that it conveyed information that the declarant knew to be true and was submitted to the PTO with the misrepresentation that the declarant had firsthand knowledge about the subject of the declaration.” Id. The Court also found that Mr. Caron’s deposition testimony was inconsistent with his declaration. According to the Court, “his deposition testimony was more than evasive; it was false or misleading. If his deposition testimony was true and responsive, then his 2011 representations to the PTO are, at the least, misleading.” Id., at page 20.

A similar scenario could plausibly occur when an attorney, and not the declarant, formulates the content of the declaration and presents the finished declaration to a declarant for signature. In such a scenario, the declarant may not take the time to fully understand an argument prepared by the attorney, believing that the attorney’s understanding is sufficient. As noted by the Court, however, declarations must be based on declarant’s personal knowledge. In other words, it may not be sufficient to merely have sound technical arguments. Rather, the arguments must be sound and the arguments must be based on personal knowledge of the declarant. Again, this issue may be avoided by having a declarant prepare his or her own declaration.

Blog Posts of Interest

noreply@blogger.com (Karen G. Hazzah) — Tue, 20 Nov 2012 16:03:00 +0000

If you're not a regular reader of Ryan Alley's blog, you should be. Ryan covers Federal Circuit cases, with a sharp focus on the aspects that interest patent prosecutors. For example, his recent post on
In re Abbott Diabetes examines how the Federal Circuit limited the Board's expansive view of Broadest Reasonable Interpretation. And his recent post on Apple v. Samsung discusses the ramifications of using "each" in the context of "plurality."

I've always thought the Federal Circuit's application of 112P6 to software claims was illogical, but never sat down to write a cogent article about why. Kip Werking did a great job of explaining why the Federal Circuit's position is nonsense in his post The Illogic of the Algorithm Requirement for Software Claims at IP Watchdog.

Property, Intangible, a blog written by in-house counsel Pamela Chestek, covers ownership of IP. Her recent post Assignment of a Continuation-In-Part discussed some tricky issues that can arise in drafting assignments to cover CIPs.

Later this week I'll have a guest post about a post-Therasense district court case involving declarations and inequitable conduct.

BPAI reverses obviousness rejection after finding combination was "more than the predictable use of a prior art element according to its established function"

noreply@blogger.com (Karen G. Hazzah) — Wed, 31 Oct 2012 14:53:00 +0000

Takeaway: The BPAI reversed an obviousness rejection of a claim to a mail processing system after finding that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." (Ex parte Ryan, Jr., BPAI 2009.)

Details:

Ex parte Ryan, Jr.
Appeal 2009004014; App. No. 09/777,592 ; Tech. Center 3600
Decided: September 25, 2009

The application on appeal was directed to a mail processing system. A representative claim on appeal read:

     2. A mail piece verification system for processing mail pieces, the mail pieces having associated therewith respective mail piece data, the system comprising:
     a data center in operative communication with a plurality of mail processing centers,
the data center including a plurality of account files corresponding to a plurality of postage metering systems;
     the data center being adapted to
          store reset data in each of the plurality of account files representative of reset activity associated with the plurality of postage metering systems, respectively;
          receive respective mail piece data corresponding to the mail pieces from the plurality of mail processing centers;
     store empirical data in each of the plurality of account files representative of mailing activity associated with the plurality of postage metering systems, respectively;
     conduct a forensic accounting analysis of the empirical data and the reset data associated with a selected postage metering system using a previously defined time period over which to conduct the forensic accounting analysis; and
     download graphic data to the selected postage metering system to be included in the mail piece data of mail pieces subsequently prepared by the selected postage metering system if the forensic accounting analysis reveals that the empirical data is not consistent with the reset data for the selected postage metering system.
(Emphasis added.)

The Examiner rejected claim 2 as obvious over Hunter, Moore, and Connell. The issue on appeal was whether the combination of Hunter and Connell taught the elements emphasized above.

Specifically, in the Final Office Action the Examiner relied on Hunter for the "conduct a forensic accounting analysis" action, for the claimed "if" condition, and for taking an action – further investigation of possible fraud – in response to the claimed "if" condition. Since Hunter's responsive action was not the claimed "download graphic data" action, the Examiner then relied on Connell as teaching the "download graphic data" action in response to detection of fraud. In explaining how and why these features were combined, the Examiner used the following reasoning:

     To paraphrase in order to explain the rejection in a more simple manner, Hunter detects potential fraud by keeping track of postage value added to a meter, as well as mail pieces from that meter that pass through the postal system. If the postage having been purchased for a meter differs too much from the amount of postage on mail pieces from that meter that have been mailed, this is an indication of potential postage fraud. When such fraud is detected, Hunter initiates a responsive action to deal with the situation. In Hunter, that responsive action is to initiate an investigation (see Hunter, column 5, lines 31-39).
     Of course, claim 1 requires that the responsive action be not an investigation, but a download of graphic data into a meter that gets incorporated onto mail pieces for the purpose of identifying mail pieces originating from suspect meter users. It is necessary to turn to Connell et al. for this portion of the claim limitation.
     Connell et al. is a postal security system that also functions in response to possible postal fraud (see Connell et al., column 1, lines 30-52). Connell et al. works by incorporating graphic data onto mail pieces that indicates whether or not the postage on the mail pieces is legitimate. At any given point in time, there is a particular item of graphic data that is designated as indicating that a mail piece's postage is valid. This designated graphic data changes periodically. In order to keep their "designated graphic data" up-to-date so that their mail pieces are indicated as having valid postage, meter users in Connell et al. must occasionally download the latest version of the designated graphic data. Individuals who are not authorized to be metering mail pieces will not have access to up-to-date designated graphic data, and thus will mail mail pieces with out-of-date graphic data that indicate the mail pieces as potentially fraudulent. Therefore, Connell et al. provides the needed disclosure of graphic data on mail pieces that is used to identify potentially fraudulent mail pieces in response to meter fraud concerns.
     Since the out-of-date graphic data used by a potentially fraudulent user was at one point up-to-date graphic data that was downloaded validly to that user, the out..:of-date graphic
data in Connell et al. that identifies potentially fraudulent data is disclosed as being downloaded
to user meters.

On appeal, the Applicant did not argue the teachings of the individual references, but instead challenged the manner in which the features were combined. Specifically, the Applicant argued that the trigger for Connell's download action was much different from the trigger for Hunter's further investigation action:

[T]he system in Connell selects one of a plurality of stored indicia images [for download] based solely on the date that the indicia will be printed. ... The date has nothing whatsoever to do with whether or not a forensic accounting analysis reveals that the empirical data is not consistent with the reset data. ... Without using the present claims as a road map, it would not have been obvious to make the multiple, selective modifications needed to arrive at the claimed invention from these references.

In the Answer, the Examiner maintained the rejection and also provided additional explanation.

The use of graphic data to identify postal fraud, as can be seen in the above passages from Connell et al. is a responsive action to the overall problem of postage indicium fraud. While the responsive action in Connell et al. is not a responsive action in the same specific and immediate way that the responsive action in Hunter is, the responsive action in Connell et al. is still a responsive action.
(Emphasis added.)

Also, while the Answer continued to rely on a specific motivation in Connell, the Answer brought in one of the KSR rationales, asserting that the claims “only unite old elements with no change in their respective functions and which yield a predictable result.”

The Board reversed the obviousness rejection. Noting the Examiner's reliance on the "predictable results" rationale from KSR, the Board instead found that the combination used by the Examiner was "more than the predictable use of a prior art element according to its established function." The Board explained this statement as follows:

The Examiner states, “. . . the responsive action in Connell et al. is not a responsive action in the same specific and immediate way that the responsive action in Hunter is . . ..” Answer 26. We agree. While the overall invention in Connell may be directed to the prevention of postage indicia fraud, Connell describes the “responsive action” (i.e. the downloading of an address of a newly authorized indicia) relied upon by the Examiner functions to detect the postage indium fraud. The Examiner’s “responsive action” of Connell is not a response to a detection of an occurrence of postage indicia fraud but is a means that functions to detect an occurrence of the fraud. Connell’s “responsive action” performs the same function as the Hunter’s description of comparing purchased postage with used postage and not the further investigation of Hunter, as the Examiner seems to assert (see Answer 23). Further, Connell’s “responsive action” performs the same function as the claimed forensic analysis and not the claimed downloading of graphic data. ... Therefore, we find that the Appellant has shown the Examiner erred in rejecting claim 2.

My two cents: First, I give credit to the Examiner for providing a detailed explanation of the rejection. Second, I'm glad to see a successful attack on the common "predictable results" rationale. However, I think this fact pattern better fits a proposed-combination-does-not-teach-the-claim argument. That said, I think I figured out how to make the fact pattern fit the predictable results rationale. (Or, more precisely, the UNpredictable results rationale.)

The way I see it, the Examiner's combination rejection takes the form

Claim includes action A (forensic analysis), result B (data not consistent) of action A, and action C (downloading graphic data) in response to result B.
Hunter teaches action A, result B of action A, and action C' (initiate fraud investigation) in response to result B.
Connell teaches action C in response to result B.
Combination results in action A, result B of action A, and action C.

The Board disagreed with the Examiner's reading of the reference. That is, the Board found that Connell's downloading graphics data was not properly understood as action C in response to result B, but was instead action D (fraud detection). Thus, the Board found that the Examiner's combination did not produce the claim, which required action A, result B of action A, and action C in response to result B.

That's why I see the Board's reasoning as a natural fit for a proposed-combination-does-not-teach-the-claims argument, rather than an unpredictable-results argument.

But after thinking about this decision for a while, I think I see how to map this very same reasoning to the lack-of-predictable-results rationale. You could say that the predictable combination of Hunter and Connell is A, B as a result of A, C' in response to B, and D. But the claims require A, B as a result of A, and C in response to B. So the claim is not a predictable result of the combination, and the Examiner didn't make a prima facie case of obviousness.

As a side note, you'll recall that the Examiner mentioned the predictable results rationale in the Answer, but also used an explicit motivation to combine from the secondary reference. The Board didn't address this alternative rationale.

Finally, I note that the Applicant also used a hindsight argument during prosecution and in the Appeal Brief, and the Board also found hindsight. Personally, I find hindsight to be a particularly UNhelpful way of viewing obviousness. Hindsight is the conclusion reached when the prima facie case isn't made ... the Examiner must have used hindsight because he hasn't made a prima facie case. Hindsight is not itself a standalone argument against obviousness.

BPAI finds "configured to be housed within or detached from the bay" requires both configurations, despite use "or"

noreply@blogger.com (Karen G. Hazzah) — Wed, 17 Oct 2012 12:45:00 +0000

Takeaway: In an application directed to a replacement battery pack for an electronic device, the issue on appeal was the phrase "a replacement battery pack configured to be housed within or detached from the battery pack receiving bay" (emphasis added.) The Examiner took the position that since the claim used the word "or" in describing the battery pack configuration, only one of the configurations was required to be found in the prior art. The Applicant argued that the proper interpretation of the claim required both configurations. In particular, the Applicant argued that the phrase "detached from" implied that the battery pack was previously "housed within," and thus the claim required both configurations. The Board found the Examiner's claim interpretation to be unreasonably broad in view of Applicant's specification, which made it clear that "the claim term “or” [was used] to mean that the replacement battery pack is configured to provide some functionality, both when the battery pack is disposed in the bay as well as when it is detached from the bay." (Ex parte Godovich, BPAI 2010.) Details:

Ex parte Godovich
Appeal 2009004289; Appl. No.. 11/139,851; Tech. Center 2800
Decided: November 15, 2010

The application on appeal disclosed a replacement battery pack for an electronic device (below).

A representative claim on appeal read:

     10. A portable electronic device comprising:
     a main body;
     a battery pack for supplying power to the portable electronic device;
     a battery pack receiving bay (120) formed in the main body for removably-housing the battery pack,
     the battery pack receiving bay (120) having a connector electrically connectable to the battery pack; and
     a replacement battery pack (200) configured to be housed within or detached from the battery pack receiving bay,
     the replacement battery pack comprising
          a power storage section having a secondary battery,
          a power input section having at least one power connector for receiving electric power for charging the secondary battery, and
          a power output section having an output terminal for receiving electric power from the power input section and for electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay to power the portable electronic device.
(Emphasis and reference numbers added.)

Claim 10 was rejected as obvious over Applicant's Admitted Prior Art and a patent reference, Shoji. The rejection relied on AAPA for teaching the main body, battery pack and receiving bay, and on Shoji for teaching the claimed replacement battery pack. The rationale supplied for combining the references was substitution of AAPA's battery with Shoji's battery "in order to use the battery for a variety of applications with high power capacity."

With respect to the "configured to" clause of the replacement battery pack, the Final Office Action alleged that "Shoji discloses a replacement battery pack (A) configured to be housed within or detached from the battery pack receiving bay (mounted or inserted in Second bay)." In a Response to Final, the Applicant argued that the Shoji's auxiliary battery A was not configured as recited in the claim. The Applicant explained that, rather than being "configured to be housed within or detached from the bay," "[Shoji's] auxiliary battery A is an external battery which is connected to the electronic device externally via a connection cable between the power output section 3 and the electronic device." The Applicant also argued the "output terminal" element of the replacement battery pack.

The Advisory Action noted only that "the teaching and elements are both shown in the prior office communication, and the arguments presented by the applicant are not persuasive." The Applicant filed a Pre-Apeal Brief Request, then an Appeal Brief, each of which repeated the same arguments for claim 10.

The Examiner provided new information in the Examiner's Answer. Specifically, the Answer explained (for the first time) that "the claim recites, '– housed within or detached from –' so examiner is required to show one of the two not both" (emphasis added). The Answer then explained that Shoji disclosed one of the limitations – "detached from the [bay]" – by disclosing a power supply cable between the auxiliary battery and the electronic device, such that the "auxiliary battery is detached from the battery pack-receiving bay when the power supply cable is disconnected."

The Applicant filed a Reply Brief to challenge the Examiner's claim interpretation:

[A]ppellant respectfully disagrees with the Examiner's interpretation of the alternative expression in lines 9-10 of claim 10. The second part of the alternative expression in claim 10 explicitly recites that the replacement battery pack is configured to be "detached from the battery pack receiving bay." The term "detached" in claim 10 relates to the replacement battery back being "removed" or "taken out of" the battery pack receiving bay. This is the context in which the term"detached" should be read because the recitation "detached from the battery pack receiving bay" is prefaced by "housed within or", which corresponds to the part of the alternative expression in which the replacement battery pack is housed within (i.e., inserted into) the battery pack receiving bay. Stated otherwise, the expression "detached from the battery pack receiving bay" in claim 10 corresponds to the part of the alternative expression in which the replacement battery pack is removed or taken out from the battery pack receiving bay from the configuration in which the replacement battery pack is "housed within" the battery pack receiving bay, as recited in claim 10.
(Emphasis added.)

The Board agreed with the Applicant, finding the Examiner's interpretation to be unreasonable in view of the specification:

The Examiner does not find that the cited art teaches both configurations. Rather, the Examiner takes the position that because these noted claims employ the word “or,” the cited prior art only needs to disclose a replacement battery pack that possess one of the recited configurations – not both.
We find the Examiner’s interpretation to be unreasonably broad. Read in light of the Specification, it is more than reasonably clear that Appellant used the claim term “or” to mean that the replacement battery pack is configured to provide some functionality, both when the battery pack is disposed in the bay as well as when it is detached from the bay.

Based on this unreasonable claim construction, the Board reversed the obviousness rejection of claim 10.

My two cents: The board got this one right. Sometimes OR means AND. That is, while OR can be used to signal a list of alternatives, sometimes OR requires the presence of all the alternatives. In my mind, that's usually the case with "configured to X, Y, or Z." That was definitely the case here. Here's the only description in the spec relating to detaching the battery pack from the receiving bay.

[0051] The structure and function of the connector 116 of the replacement battery pack 100 are the same as for a conventional battery pack used for portable computers. When the replacement battery pack 100 is housed in the battery pack receiving bay 120 of the portable computer 105, the connector 116 is electrically connected to a connector provided in the battery pack receiving bay 120 to form appropriate electrical connection and functions as an output terminal for providing power to the portable computer 105. When the replacement battery pack 100 is detached from the battery pack receiving bay 120 of the portable computer 105, the connector 116 of the replacement battery pack 100 can be electrically connected to corresponding connectors of a charging station and functions as an input terminal for charging the replacement battery pack in a conventionally known manner.

The spec clearly describes two configurations and in no way suggests that either is optional.

The Board focused on the narrow issue of interpreting "configured to X or Y". The Board reversed because the claim required both X and Y and the Examiner found only Y ("detached from").

However, the claim language went further that that, since it also included this specific recitation:

the replacement battery pack comprising ... a power output section having an output terminal for ... electrical connection to the connector of the battery pack receiving bay when the replacement battery pack is housed in the battery pack receiving bay

The Applicant should have argued this particular point, since the Examiner did not allege that Shoji taught a replacement pack housed in the bay.

I note that the claim uses "for" ("an output terminal ... for electrical connection"). Some Examiners like to ignore any phrase following "for" as intended use. Some Examiners treat "when" the same way. It's best to find this out early in prosecution so you can either amend so that the Examiner gives the phrases patentable weight, or persuasively argue why the language is not intended use.

Finally, though I do think the Board was right to reverse, the Applicant might have been better off amending during prosecution so that the claims used AND rather than OR. Seems like the claim could easily have been structured to recite something like "a first configuration AND a second configuration."

Related posts:

Careful when using OR in a claim to modes
In a claim to "A" or "B", is B always optional

Does the BPAI require a definition from the time of filing?

noreply@blogger.com (Karen G. Hazzah) — Tue, 09 Oct 2012 14:34:00 +0000

If you read this blog regularly, you'll know that claim construction is often the dispositive issue on appeal. Claim construction arguments are, in the end, arguments about the meaning of claim terms. I've posted several times about using dictionary definitions to make persuasive arguments about the meaning of a claim term. (See this list of posts tagged with "definition"). But what source should you use for a definition? And since claim terms are to be interpreted according to meaning at the time of filing, do you need to show a date for the definition?

Today's post will address the second question. I plan to cover the first question in a later post. (In the mean time, check out the post "What does the BPAI think of Wikipedia definitions?" at the Florida Patent Lawyer blog.)

The Board has on several occasions refused to consider a definition that is undated. For example:

[The Applicant's] citation lacks a date to ensure that it reflects knowledge as of the time of their invention.
Ex parte Hyland, BPAI 2011.

However, both the Examiner and Appellants failed to provide corresponding dates indicating that such definitions come from dictionaries that precede the effective filing data of the present patent application. We therefore decline to adopt the respective dictionary definitions offered by the Examiner and Appellants.
Ex parte Raith, BPAI 2012. See also Ex parte Hicks, BPAI 2011 and Ex parte Moran, BPAI 2011.

Though I don't know of a case in which the Applicant provided a dated definition that postdated the Applicant's filing date, I suspect the Board would refuse to consider such a definition for the same reason.

The Board often introduces a definition of its own when the parties do not. When doing so, the BPAI is inconsistent about whether its definitions have dates before Applicant's filing date. See Ex parte Beer (dictionary dated 1971); Ex parte Raith (dictionary dated 2000); Ex parte Schmitz (dictionary dated 1996); Ex parte Reiter (citation with copyright 2012); and Ex parte Gerards (citation to online dictionary "visited Apr. 21, 2012").

Does the meaning of claim terms change so rapidly that we really need to introduce dated definitions? Would it make more sense to presume that a definition reflects the meaning at the relevant date, and let either side rebut the presumption?

The Board recently took this approach in the reexamination appeal Nike v Adidas (PTAB 2012). In the Nike reexam, the parties argued over the meaning of "inflection." In deciding the issue, the Board introduced a dictionary definition of this word. However, instead of noting the date of the definition, the Board instead applied a presumption about the date:

The definitions of general terms cited herein are believed to accurately reflect the meanings of those terms as of the effective filing date(s) of the rejected claims.

I think this approach makes sense during prosecution. After all, most applications and even issued patents are appealed within 10 years of the time of filing, and I doubt that many dictionary definitions change much in that period. So this seems like a reasonable presumption.

I wonder if this presumption is available to Applicants? Maybe. But don't rely on this. Instead, you should provide the date of any definition you rely on. And better yet, provide some evidence of this date rather than a mere assertion.

Applicant wins petition and avoids labeling figure as prior art

noreply@blogger.com (Karen G. Hazzah) — Tue, 25 Sep 2012 03:12:00 +0000

Takeaway: During prosecution of an application for a fuel cell system, the Examiner objected to FIG. 1 because it was not designated as prior art, yet "only that which is old is illustrated." The Applicant filed a Petition in response to the objection. The TC Director granted the Petition, apparently based on assertions in the Petition that FIG. 1 included "part of the claimed invention" and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26 ... forms part of the invention."

Details:
Application of Kolodziej
Appl. No. 10/948,402
Tech Center 1700
Petition Decision January 26, 2009
(available through Public PAIR)

The application was directed to a fuel cell system. The (single elected) independent claim included various system components and a controller. Specifically, the claim recited "a controller for controlling the bypass valve and the pump based on the temperature of the cooling fluid, said controller controlling the bypass valve and the pump in combination."

In a first Office Action, the Examiner objected to FIG. 1 (shown below) because it was not designated as Prior Art. The Examiner required this designation because "only that which is old is illustrated."

Rather than amending FIG. 1, the Applicant instead argued that "Figure 1 is not prior art in that the design of the controller 28 controls the pump 20 and the bypass valve 26 makes the controller 28 novel and unobvious." The Applicant elaborated on the inventive concept by explaining that the claim required controlling the pump and valve in combination rather than independently.

The Examiner maintained the drawing objection in a Final Office Action, and gave this additional explanation: "[T]he discussion of the Related Art [in Applicant's specification] fully describes FIGURE 1 (See paragraph [0009])."

The Applicant appealed the prior art rejections and simultaneously filed a Petition under § 1.182 to fight the drawing objection. In the Petition to the TC Director, the Applicant asserted that "figure 1 includes more than what is old, and particularly includes part of the claimed invention." The Applicant acknowledged that FIG. 1 was described in the background, but explained that operation of the controller 28 depicted in FIG. 1 was part of the invention described in the detailed description. The Applicant asserted that "how a controller operates structurally defines that controller." (The Applicant relied on In re Noll (CCPA 1976) for this proposition.) Thus, the Applicant argued, FIG. 1 is not prior art, since how the controller operates the pump and valve "is part of the invention."

Shortly after the Examiner's Answer, the Director of TC 1700 granted Applicant's Petition and withdrew the requirement to label FIG. 1 as Prior Art. The Petition Decision provided no explanation, and merely referred to Applicant's assertions that FIG. 1 included "part of the claimed invention," and that the invention included the pump 20, the bypass valve 26, and "the operation of the controller 28 for controlling the pump 20 and the by-pass valve 26."

My Two Cents: I too would think twice before labeling something Prior Art, since a litigator would probably try to broaden that admission into something never intended by the drafter/prosecutor. Yet if FIG. 1 is a block diagram of known components, maybe it is Prior Art. What in FIG. 1 itself distinguishes the controller 28 over a prior art controller? Sure, it's programming ... but is that programming really shown in any way in FIG. 1? Maybe a better approach is to have a FIG. 1 that includes a block inside the controller that represents the novelty – maybe call it "control algorithm X" – and then have the flow chart of FIG. 2 reference numeral X.

The Applicant petitioned on final and simultaneously pursued an appeal of prior art rejections. Separate issues meant the Applicant could pursue both in parallel. Petitions are less useful when you really want a petition decision before you respond to other issues in the Office Action.

Finally, I wish petition decisions were searchable, because I think petitions are a good tool to have in the toolbox. But until they are, I'll be limited to posting about petitions that I come across randomly while looking at other things.

BPAI affirms anticipation based on reasoning that performing action on whole implies peforming action on all parts

noreply@blogger.com (Karen G. Hazzah) — Wed, 19 Sep 2012 04:02:00 +0000

Takeaway: In a reexamination appeal, the BPAI considered the Patentee's arguments that a reference did not disclose "monitoring the operating system for an event". The Board first found that the reference taught monitoring a computer system for an event and also taught that the computer system included an operating system. The Board then affirmed the rejection since "Appellant does not sufficiently demonstrate any differences between ... continuously monitoring the computer system (including the operating system contained therein) for an event ... and the claimed feature of monitoring the operating system for an event. Nor do we identify any differences since in both cases, a computer system and operating system of the computer system are being monitored for an event." The Board's reasoning thus appeared to be that since the whole (computer system) was monitored, any included component (operating system) was also monitored.

Details:

Ex parte Finjan, Inc.
Appeal 2011003035; Reexam 90/008,684; Tech. Center 3900
Decided June 6, 2011

The patent under ex parte reexamination involved virus protection software. A representative independent claim read:

1. A computer-based method, comprising:
     monitoring the operating system during runtime for an event caused from a request made by a Downloadable;
     interrupting processing of the request;
     comparing information pertaining to the Downloadable against a predetermined security policy; and
     performing a predetermined responsive action based on the comparison, the predetermined responsive action including storing results of the comparison in an event log.
(Emphasis added.)

During the reexam, the Examiner rejected claim 1 as anticipated by a non-patent reference (Rx PC - The Anti-Virus Handbook) which described a software package ("Virex PC") containing two anti-virus programs, VPCScan and VirexPro. The Patentee responded by arguing that several of the claim elements were not taught by the reference – and submitted declaration evidence to supplement these arguments.

One of the elements argued on appeal by the Patentee was the "monitoring" element. The Patentee argued in the Appeal Brief that Virex monitored a user-selected target file rather than the operating system. More specifically, the Patentee argued that Virex "sat in front of" a user-selected target file to intercept all requests associated with this file – regardless of which executable made the request. The Patentee contrasted this with claim 1, which described "monitoring all requests from Downloadable [files] to the operating system, not just requests to particular files." (Emphasis in original.) The Patentee then referred to the expert declaration to provide more technical detail about the workings of Virex:

In order to monitor the operating system for events caused by requests from Downloadables as required by the claims, requests to both selected and non-selected files and file types must be monitored. Per the expert affidavit of Dr. Giovanni Vigna (Paragraph 4), file-based Virex and VirexPRO did not and could not monitor an entire operating system for a requested action or resulting event from a requesting file or program (hereafter "virus file"), the Virex programs could only monitor actions to be taken on pre-determined target files. More particularly, the Virex programs hijack the response routine of specific software interrupts. By doing this, they are able to monitor only a subset of the operations that can be performed by a program (that is, those that are associated with the software interrupt), and, as a result, they are not capable of monitoring the operating system in a comprehensive fashion.

In the Answer, the Examiner responded to the Patentee's arguments. In response to the Patentee's assertion that Virex did not monitor the operating system, the Examiner cited to teachings in the Handbook that Virex monitored requests for disk formatting and requests for disk reads and write. According to the Examiner, "detecting these activities requires that Virex monitor subsystems of the operating system such as the file system, memory system, network system, and run-time execution system." In response to the Patentee's assertion that Virex monitored only user-selected files, the Examiner clarified that the rejection relied on teachings about installation. The Examiner explained that Virex's installation options allowed the user to select all files (via a wildcard ). With this option chosen, Virex would then monitor all files, i.e. "an entire operating system", at runtime.

The Patentee filed a Reply Brief to rebut points in the Examiner's Answer. According to the Patentee, "protecting every file on the computer is not the same as monitoring the operating system." Having the user "manually select every file or extension" is "incredibly inefficient and substantively different from monitoring the operating system" since "if any new files or extensions are added to the computer then the user would need to manually select those files."The Patentee then characterized user selection of every file on the computer as "a construction of the Examiner" that is "not mentioned in [the Handbook]." As for the Examiner's reliance on the teachings about disk formatting and disk reads/writes, "the 'features' are never described in any detail and [the Handbook] does not disclose anything about how these features are performed."

The Board affirmed the anticipation rejection. With regard to the Patentee's "monitoring" argument, the Board referred to the Handbook in making these findings of fact: Virex continuously monitored a computer system which included an operating system; and Virex created an alert when an attempt was made to perform tasks such as executing a program. The Board then drew the following conclusion:

Since [Virex] continuously monitors a computer system that includes an operating system for an “event” (e.g., an attempt to run a program or an attempt to terminate and stay resident – the attempt being a “request” for an event), we agree with the Examiner that Endrijonas discloses monitoring the operating system of the computer system for the event as recited in claim 1.

The Board explained why the Patentee's arguments were unpersuasive:

Appellant does not sufficiently demonstrate any differences between the [Virex program] continuously monitoring the computer system (including the operating system contained therein) for an event (e.g., an attempt to run a program or an attempt to terminate and stay resident) and the claimed feature of monitoring the operating system for an event. Nor do we identify any differences since in both cases, a computer system and operating system of the computer system are being monitored for an event.

Postscript: The Patentee appealed to the Federal Circuit. But the appeal involved another issue (whether or not the Virus Handbook was an enabling reference) so that Fed. Cir. stayed the appeal pending decision on another case on the presumption of enablement for non-patent references, In re Antor Media. Antor was decided in Aug. 2012, but no decision has been issued yet in In re Finjan.

My two cents: Right result. Bad reasoning.

The Board's simplistic reasoning was based on the unsupportable premise that performing an action on a whole implies performing the action on the components of the whole. Probably true in some contexts, but it's hardly a general truth. Does "painting a house" mean painting: 1) the exterior; 2) the exterior and the interior; 3) exterior, interior, and contents of the house; 4) exterior including the window panes and shingles on the roof? Generally, we mean #1. Maybe #2. #3 and #4 are unlikely choices.

In this case, "monitoring a computer system" might mean monitoring only the hardware components, or might mean monitoring only the software application components, or might mean monitoring only the operating system. I'm inclined to say that the Virus Handbook was talking about monitoring the operating system, since the entity that provides services for detecting actions like file access and program execution is usually referred to as an "operating system." But my point is that I reached that conclusion from the specific teachings of the reference, as understood by a POSITA –not from a premise that actions on a system applying to all components of the system.

New rules for inventor declaration and power of attorney

noreply@blogger.com (Karen G. Hazzah) — Fri, 07 Sep 2012 13:04:00 +0000

Heads up: Big changes to patent practice starting September 16, 2012. Several new rules packages to implement various provisions of the America Invents Act (AIA) take effect on that date. The only rules package I'll talk about here relates to inventor declaration and power of attorney. The Federal Register Notice can be found here. PharmaPatents has a nice overview of these rules here. IP boutique Oblon Spivak has a FAQ here.

The new rules affect both the procedures for filing declarations and the substance of the declaration itself. Carl Oppedahl, an experienced practitioner who has studied the new rules extensively, says "it is not much of an exaggeration to say that they change everything about the Oath and Declaration of the inventor."

Carl's guest post on Patently-O explains the importance of using the "old" declaration for "old" applications and the "new" declaration for "new applications". Sounds like transitional practice in the days leading up to September 16 changeover will be tricky -- you don't want to send out the old declaration for signature before September 16 and then end up filing it after September 16. To get all the gory details without reading the 52 page notice in the Federal Register, you can purchase Carl's webinar "What will change about the oath or declaration on September 16?"

One far-reaching change in the AIA is that inventors are no longer required to be “applicants” on patent applications. To implement this change, the same rules package taking effect on September 16 allows assignees to not merely prosecute applications, but to actually file in the name of the applicant.

Assignees will probably be glad to hear that the onerous procedures for handling missing or non-signing inventors have been replaced by a much simpler procedure. Under the new rules, you file a much simpler "substitute statement."

AIPF Annual Meeting October 1 and 2: "Intellectual Property as a Corporate Asset"

noreply@blogger.com (Karen G. Hazzah) — Thu, 06 Sep 2012 02:58:00 +0000

If you're interested in learning about using IP as a corporate asset, and in getting your CLE at the same time, check out the upcoming program put on by the AIPF (Association of Intellectual Property Firms) on October 1 and 2 in Washington, D.C.

The theme of this year's Annual Meeting is "Intellectual Property as a Corporate Asset", and the program includes presentations on theme topics such as "Models for Monetizing Patents in the 21st Century," "Asset Valuation," and "Tech Transfer after the Obama Technology Objective." The program also includes various IP law topics such as the AIA and the Patent Prosecution Highway, as well as practice development topics like "In-Person and Online Strategies for Networking" and "The Paperless Office".

This year will mark the third time I've attended this event. More info at AIPF 2012 Annual Meeting and Program Schedule.

BPAI affirms indefiniteness when claim positively recites "at least one flooring panel" and then refers to "panels of the least one flooring panel"

noreply@blogger.com (Karen G. Hazzah) — Tue, 04 Sep 2012 02:05:00 +0000

Takeaway: During prosecution, the Examiner rejected a claim to a flooring system as being indefinite. The claim positively recited "at least one flooring panel" but then referred to "lips configured to overlap ... a joint between panels of the at the least one flooring panel and the connecting element". The Examiner found that the inconsistency between "at least one flooring panel" (singular) and the "panels" (plural) rendered the claim indefinite. The Board affirmed, finding that the broadest reasonable interpretation of "at least one panel" encompassed a single panel, yet the reference to panels implies multiple panels. (Ex parte Grafenauer, BPAI 2012.)

Details:

Ex parte Grafenauer
Appeal 2010009906; Appl. No. 11/533,634; Tech. Center 3600
Decided: February 29, 2012

The application on appeal disclosed flooring panels with connecting elements. Claim 15 read:

15. A system, comprising:
      at least one flooring panel with a decorative layer top layer, the at least one flooring panel comprising a tongue and a groove on side edges lying opposite one another; and
      a connecting element comprising a groove and a tongue on side edges corresponding to the tongue and the groove of the at least one flooring panel,
      the connecting element further comprising, in an area of the side edges, lips configured to be a sole sealing mechanism and to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.

During prosecution, the Examiner objected to claim 15, which used the phrase "at least one" with the plural term "panels."

As applicant is only claiming one panel, it appears the claim should be directed to --at least one flooring panel-- rather than "at least one flooring panels".

In response, the Applicant amended to consistently refer to "at least one flooring panel" (singular), so that the claim read:

A system comprising:
      at least one flooring panel ...; and
      a connecting element comprising ...
      the connecting element further comprising ... lips configured to ... bear on a top side of the at least one flooring panels and configured to overlap a butt joint between panels of the at least one flooring panel and the connecting element.

However, the claim did still refer to "panels of the at least one flooring panel." Because of this inconsistency, the Examiner rejected claim 15 as indefinite, taking issue with the "overlap" limitation:

Further, the limitation "overlap a butt joint between panels of the at the least one flooring panel and the connecting element" renders the claim indefinite (lines 8-9 of the claim). It appears the limitation should be directed to more than one panel as the claim recites the lips of the connecting element bearing on the top side of the panels (see fig. 1 of disclosure). However, the claim as presented, only positively recites a singular "at least one flooring panel" as previously noted.
(Emphasis added.)

The Applicant appealed the indefiniteness rejection of claim 15, along with several prior art rejections. Claim 15 is repeated below:

15. A system, comprising:
      at least one flooring panel ... ; and
      a connecting element
      the connecting element further comprising ... lips configured ... to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.
(Emphasis added.)

In the Appeal Brief, the Applicant referred to Figure 1 (shown below) to explain how a person of ordinary skill in the art would understand claim 15.

More specifically, Figure 1, clearly shows lips (9) configured to bear on a top side (8) of an adjacent panel (2) and configured to overlap a butt joint between panels (1,2) of the at least one flooring panel and the connecting element (7).
(Additional numbers added.)

The Examiner's Answer reiterated that the claim recited a singular panel with lips bearing on the singular panel, yet the figures showed each lip bearing on a separate panel. The Answer also stated that "it is unclear if the claim is reciting a singular flooring panel or more than one flooring panel."

The Applicant filed a Reply Brief with a lengthy rebuttal. The Applicant explained why a claim to a single panel nonetheless recited plural panels.

     Claim 15 recites, in part:
... the connecting element further comprising, in an area of the side edges, lips configured to be a sole sealing mechanism and to bear on a top side of the at least one flooring panel and overlap a butt joint between panels of the at least one flooring panel and the connecting element.
... That is, a lip on each panel can overlap with an adjacent panel. This language is clearly described in the specification. The claims do not recite that more than one lip is configured to bear on the singular at least one flooring panel. The Examiner is misreading the claims and taking the claim language out of context.
     Also, Appellants submit that although one lip is shown in FIG. 1 and FIG. 2 for each panel, ... two lips can be required so that the lips can provide the sealing mechanism for two, adjacent panels. Additionally, in the context of the claims, the lips are used so that they can provide sealing between at least one panel (e.g., "singular"). ...
     Lastly, for claim 15 to read correctly and for it to be understandable, it is necessary to place the claimed elements in the proper environment. For this reason, although claim 15 is directed to at least one panel, the claim uses the terminology "panels" in order to show how the lips are used with adjacent panels. This is clear from the record and the specification.

The Board affirmed the indefiniteness rejection, focusing on the inconsistency between "at least one panel" and "panels of the at least one flooring panel."

The broadest reasonable interpretation of the term “at least one panel” is that the term is sufficiently broad to encompass a single panel. On the other hand, the recitation of “panels of the at least one flooring panel and the connecting element” implies that the at least one flooring element must include a plurality of panels. The use of two different terms to identify the “at least one panel” and the “connecting element” implies that the connecting element is not a panel.
Therefore, the broadest reasonable interpretation of claims 15-20 and 23 is indefinite. Depending on which interpretation of the term “at least one flooring panel” one adopts, claims 15 and 23 may be sufficiently broad to encompass systems having only a single floor panel or may be limited to systems each having a plurality of panels. The disclosure of paragraph [0016] and Figure 1 of the Specification, cited by the Appellant at page 6 of the Appeal Brief, does not resolve this ambiguity.
(Emphasis added.)

My two cents: The Applicant really stuck to his guns here, and seemed unwilling to claim two panels – even though the novelty seemed to lie in the interactions between the connector and the two panels (i.e., tongue and groove). I don't get this reluctance.

What infringement scenario was the Applicant concerned about giving up by claiming two panels? Sure, such a claim would require a flooring manufacturer to sell two panels and a connecting element, even though the connector did provide a benefit (sealing) when used with only a single panel. But is that really giving up that many infringers? Won't a large number of flooring systems be sold with pairs of panels and a connector in between? Yeah, it's great to have a claim that catches every infringement scenario. But the Applicant here put the entire patent at risk by refusing to rewrite the claim in a way that made sense.

This very issue was explored a bit during oral arguments. The Applicant's representative stated that "a flooring system would ordinarily have more than one panel" and that the tongue and groove of the connecting element would be "connected to a groove and a tongue of respective flooring panels." The judge then asked: "If that's the case, then why not just recite flooring panels?" To which the Applicant's representative responded: "The client had decided that we want to say 'at least one' in this particular case to make it broader."

BPAI affirms obviousness of substituting parallel connector for serial even if reference did not teach equivalence

noreply@blogger.com (Karen G. Hazzah) — Tue, 28 Aug 2012 02:45:00 +0000

Takeaway: A Patentee in an inter partes reexamination appealed an obviousness rejection of a dependent claim. The Examiner used the substitution rationale from KSR, substituting a Firewire connector for a USB connector. The Applicant argued that "[the reference] does not disclose that the pin configuration, the wiring scheme required or operation of the two [connectors] are equivalent." The Board affirmed the rejection since the Examiner made the requisite findings of fact discussed in MPEP § 214(B), and the Patentee did not show error in these findings. The Board explained that a teaching of equivalence is not required support a rejection under the KSR substitution rationale. (Milan v. Apple, BPAI 2012.)

Details:

Milan v. Apple
Appeal 2012008569; Reexamination No. 95/001,083; Tech. Center 3900
Decided Aug. 7, 2012

The patent under reexamination described a flash memory device designed for use with a set of converter plugs. As shown in the figures below, the pin configuration (416) on the flash memory device (400) was configured to mate with several different converter plugs, including a 4-pin USB plug (FIGs. 12A-C) and a 5-pin mini-USB plug (FIGs. 12A-C).

The Patentee appealed various rejections, including independent claim 1 as obvious over two non-patent references ("Palm V Handbook Travel Kit" and "Handbook for Palm Tungsten Handhelds"), and dependent claim 3 as obvious over Palm, Tungsten, and Sirichai.

     1. A flash memory device comprising:
     a housing having opposed first and second ends;
     a flash memory drive enclosed in said housing; and
     a quick connector mounted in said housing and having a plurality of pins exposed at said second end, said pins being configured for electrical connection to a selected one of at least a first interchangeable connector and a second interchangeable connector ...

     3. The flash memory device according to claim 1 wherein said plurality of pins is six female pins arranged in two parallel rows of three pins each.

After rejecting independent claim 1 as obvious over the combination of Palm and Tungsten, the Examiner added Sirichai and used the substitution rationale to reject dependent claim 3. In rejecting claim 3, the Examiner made several findings of fact, including the ones discussed in MPEP § 2143(B) for the substitution rationale:

One type of Firewire connector is known to have a six pin configuration arranged in two parallel rows of three pins each.
The prior art (Palm combined with Tungsten) contained a device which differed from the claimed device by the substitution of one component (Sirichai's connector) for another component (Palm's connector).
Sirichai disclosed USB connectors and Firewire connectors, and described them as known equivalents.
A POSITA could have substituted one known element (Sirichai's Firewire connector) for another (Palm's USB connector), and the results of the substitution would have been predictable.

The Patentee attacked the obviousness rejection of claim 3 by disagreeing with the Examiner's finding that Sirichai taught the equivalence of USB and Firewire connectors. According to the Patentee, Sirichai's discussion of lighted electrical connectors instead taught that:

... the connector tip is a USB connector tip and in another embodiment the connector tip may be a firewire connector tip. The connector tip 150 of Sirichai is simply referring to "an opaque metal shell[.]" Sirichai only provides that both USB and firewire connector tips could utilize the light source disclosed; it does not disclose that the pin configuration, the wiring scheme required or operation of the two are equivalent.
(Emphasis added.)

The Patentee then concluded that "simply substituting the USB connector of Tungsten with the connector body for a firewire connector will not result in functionality of the resulting connector" and as a result, the combination would not result in claim 3.

The Board was not persuaded by the Patentee's "no equivalence" argument. According to the Board, "a teaching of such equivalence is not required" to support the substitution rationale described in KSR. The Board found that the Examiner had made the requisite findings of fact for a substitution rationale, and the Patentee had not demonstrated error in these findings. The Board therefore affirmed the rejection of dependent claim 3.

My two cents: The Board reached the right result -- at the level of detail expressed in the claim, it is obvious to substitute a USB (serial) connector for a Firewire (parallel) connector. Yes, the operation of a serial bus and a parallel bus is different. But none of those differences have anything to do with what's in the claims. Yes, the pin configurations and wiring schemes are different. Nonetheless, substituting one connector for the other is within the knowledge of a POSITA, and the Applicant didn't argue otherwise.

I do have a problem with the Board's statement about findings of equivalence, because I think it's misleading. Of course the claimed feature and the substituted feature from the reference aren't required to be equivalent in every way. But the two must be equivalent at some level, otherwise you couldn't substitute one for the other, right?

And you can fight an obviousness rejection on this point, i.e., by explaining the differences and why the reference feature wouldn't act as a substitute for the claimed feature. Maybe the lesson here is not to characterize such an argument as being about equivalence, but instead to couch it in terms of "results would not have been predictable" (i.e., the third finding mentioned in the MPEP discussion of substitution)?

I have a problem with this too, however, as the results of a badly-conceived substitution are probably quite predictable: the combination doesn't work as intended, or work as well, or too many modifications are needed to consider it obvious.

So to me, it is about equivalence, not predictability. Because it makes sense to argue that a POSITA would not substitute a blodget for a widget because they are not equivalent in these specific ways which relate to what is claimed. The Patentee here didn't win because he didn't (or couldn't convincingly) explain why the differences matter for what is claimed, and/or why the differences were too great for a POSITA to handle.

BPAI decides whether limitation refers to final state of disconnection or action of disconnecting

noreply@blogger.com (Karen G. Hazzah) — Tue, 21 Aug 2012 04:07:00 +0000

Takeaway: An Applicant appealed a written description rejection of a claim for a device used in rock drilling. The rejection hinged on the interpretation of "device is loaded .... only when said rock bolt is disconnected from said coupling sleeve by rotation of the rock drilling machine." The Examiner interpreted this to exclude loading after disconnection, while the Applicant asserted that the phrase excluded loading during disconnection. The Board found that the proper interpretation was "during disconnection," since "disconnected" must be read in conjunction with the modifier "by rotation." (Ex parte Kanflod, BPAI 2012)
Details:

Ex parte Kanflod
Appeal 2012005389; Appl. No. 10/539,148; Tech. Center 3600
Decided August 14, 2012

The application on appeal related to drilling machines. The independent claim on appeal was directed to a sleeve that couples a rock bolt (1) to a rock drilling machine (2). (See figure below.)

The limitation at issue read:

a locking device (7) ... said locking device is loaded to retain the rock drilling machine connected to the coupling sleeve only when said rock bolt is disconnected from said coupling sleeve by rotation of said rock drilling machine in a direction for disconnecting said first part of said coupling sleeve from said rock bolt for reinforcing a rock with said rock bolt.
(Emphasis added.)

During prosecution, the Applicant added the qualifier "only" in response to a prior art rejection. The Examiner then rejected the amended claim under § 112 First ¶, as lacking written description. The Office Action explained the problem with the phrase "only when ... disconnected" as follows:

[T]here is no structure to prevent the loading of locking device (7) to retain the rock drilling machine (2) connected to the coupling sleeve (3, 5) regardless of whether or not rock bolt (I) is connected or disconnected, since rock bolt (I) has no contact with either of locking device (7) or drilling machine (2) (even when the bolt is installed) and thus cannot prevent relative loading between device (7) and machine (2).
(Emphasis added.)

The Applicant submitted an expert declaration from the inventor to address the written description rejection. The declaration also explained the meaning of the limitation at issue. Referring to this declaration, the Applicant argued that the "only when ... disconnected" phrase should be read in conjunction with the "rotation" phrase:

[T]he locking device is loaded (locked) to lock the drilling machine to the coupling sleeve only when the drilling device is rotated in a direction to separate the rock bolt from the coupling sleeve, and not during a percussion operation.

The declaration, and the argument, then went on to reference portions of the specification that described this loading behavior in conjunction with the rotating.

The Applicant went to appeal on the written description, indefiniteness, and prior art rejection, with both sides essentially repeating the above written description arguments.

The Board found that the written description rejection was based on an improper claim interpretation, one which read the first portion of the wherein clause in isolation from the remainder of the claim.

A person skilled in the art would understand the above limitation to mean that the locking device is loaded just prior to disconnection of the rock bolt from the sleeve, i.e., when the rock bolt is still connected to the coupling sleeve. The Examiner improperly interprets the limitation to mean that the locking device is loaded only after disconnection of the rock bolt from the sleeve.

The Board reversed the written description rejection, finding that the Applicant's specification did convey possession of the properly interpreted claim.

The specification as originally filed explains that (1) during drilling the locking device 7 is unloaded (Spec. at 2:13-14) and (2) after drilling the locking device is loaded to disconnect the rock bolt from the coupling sleeve (Spec. at 2:14-19).

My two cents: Once again, the real issue is claim construction. It seemed to me that both sides recognized this, but could have done a better of job of explaining exactly how they were interpreting the claim. I had to keep reading the claim, and the arguments, over and over again.

The Examiner apparently read "disconnected" as referring to the bolt's final state, so that the phrase "only when" was interpreted to exclude loading with the bolt disconnected. On the other hand, the Applicant apparently read "only when ... disconnected" to refer to the action of disconnecting the bolt, or perhaps the bolt's intermediate state of being disconnected.

The choice of tense in "when disconnected" definitely sounds like a state rather than an action. It's only when the "by rotation" portion of the claim is considered that it even becomes possible to understand "disconnected" as an action. Still, I think the phrasing "only when said rock bolt is being disconnected" does a better job of conveying the Applicant's apparent intent.

My sense is that the issue of what tense to use comes up more in mechanical cases where you focus on describing structure first, and then on associating actions and states with the structure. Whereas action and state are more central to the claims I deal with every day in computer and electronics applications. Even so, I can think of instances where I've had to think about how to properly convey state, action, or a combination of the two – and it can be a challenge.