Florida Patent Lawyer Blog

Do you want to know how to beat an Examiner's 35 U.S.C. §103 obviousness rejection at the the Patent Trial and Appeal Board (PTAB)? Then it helps to read decisions where the PTAB reversed an Examiner's obviousness rejection. Today the PTAB did exactly that in the Ostrovsky decision, which involved catheters.

In today's Ex Parte Issac Ostrovsky (Appeal No. 2011-009091) decision, the claims involved an imaging catheter having distal and proximal ends and a lumen. The Examiner's argument went as follows: The Examiner asserted that the Ben Hain reference "discloses an imaging catheter for use in intracardiac drug delivery including an imaging element at the distal end." The Examiner also noted that Ben-Haim "fails to disclose the use of a coaxial cable for running the system in parallel with the sensor." Furthermore, the Examiner found that Sieben "teaches the use of a coaxial cabling, wherein the sensor and the imaging transducer are electrically coupled in a parallel configuration." The Examiner went on to conclude that "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to have included the connection components of Sieben with the system of Ben-Haim et al for the purpose of providing the best signal and clearest diagnostic image possible with very little loss or distortion from noise or crosstalk."

The Appellant argued that "Sieben does not teach or suggest a sensor adapted to communicate with a medical positioning system and an imaging transducer in a parallel electrical configuration with respect to the sensor as recited in claim 1." The Appellants also asserted that the "CCD arrays of Siben are not 'adapted to communicate with a medical positioning system' as recited in claim 1," but are "used to receive the signals from the ultrasound transducer. Appellants thus asserted that the "CCD arrays do not correspond to the claimed sensor and any teaching regarding them is irrelevant to the invention of claim 1."

The Board agreed with the Appellants that the Examiner had failed to set forth a prima facie case of obviousness. Specifically, the Board held:

"Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).

Here, the Examiner points to two disparate teachings in the Sieben reference, but does not explain how the coaxial cable relates to the CCD array relates to the coaxial cabling, or how the teaching of the CCD array by Sieben relates to "a sensor adapted to communicate with a medical positioning system, wherein the sensor and the imaging transducer are each electrically coupled, in a parallel electrical configuration with respect to each other, to the center wire and the outer shield at the distal end of the coaxial cable," as required by claim 1. The rejection is thus too cursory to pass the Kahn test, and it is thus reversed. (Emphasis added

Lessons Learned: Read an Examiner's 35 U.S.C. §103 obviousness rejection carefully to make sure he or she has met the Kahn test. Has the Examiner explained how one references related to the other reference? Has the Examiner provided some rationale or logic as to how the references would be combined? Has the Examiner simply stated a conclusion that it would be obvious to combine references? These are the questions you should be asking yourself when determining whether to attach a 103 obviousness rejection for failing to meet the Kahn test. If you feel the Examiner has not met this test, then you may have grounds for a reversal at the PTAB.

Continue reading "How to Beat an Obviousness Rejection at the Patent Trial and Appeal Board" »

Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's rejection based on the "well-known prior art" argument. This Quick Post highlights the obligations that must be met by an Examiner when utilizing this form of rejection.

Recall that M.P.E.P. §2144.03 states:

"Official notice without documentary evidence to support an examiner's conclusion is permissible only in some circumstances. While 'official notice' may be relied on, these circumstances should be rare when an application is under final rejection or action under 37 CFR 1.113. Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known."

Thus, "official notice" should only be used in certain, well-defined circumstances. Note the requirement that the "well known prior art" must be capable of instant and unquestionable demonstration as being well-known. As a comparison, see my blog post from last year regarding the obligations that must be met by an Examiner when using an inherency rejection.

In today's Ex parte Chapman (Appeal No. 2009-010238) decision, the claims involved a web browser related invention. With regard to one claim element pertaining to information that is communicated via telephone or email, the Examiner's 35 U.S.C. §103 obviousness rejection included the statement:

"it is well known in the art that a customer contacts a customer service representative via telephone or email."

That's all the Examiner had to say about that claim element. He did not cite to a patent, an article or any other tangible prior art reference. He simply stated it was well known prior art.

The Board did not agree with the Examiner's use of the "well known prior art" rejection. The Board decided:

"we find that simply asserting that 'it is well known in the art that a customer contacts a customer representative by phone or email' is unsupported speculation by the Examiner, which does not amount to a finding supportive of the Examiner's obviousness conclusion."

And thus, the BPAI reversed the Examiner's 103 obviousness rejection. I agree with this decision, especially in light of the In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) decision. On that topic, M.P.E.P. §2144.03 states:

It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known ... It is never appropriate to rely solely on 'common knowledge' in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 ("[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.").

What does this mean for practitioners? This decision means that when you encounter rejections that include "official notice" or "well known prior art," you must ask yourself: Is the claim element being "officially noticed" or deemed "well known" capable of instant and unquestionable demonstration as being well-known? Note the bar is quite high. In the Ex parte Chapman case, the simple idea of a customer using a phone to deliver information to a customer service rep was deemed not to pass muster. This tells me it's difficult for an Examiner to defend "official notice" and "well known prior art" rejections. My advice is to challenge "official notice" and "well known prior art" rejections and demand that the Examiner provide some evidence to support his argument, as is required under In re Zurko and M.P.E.P. §2144.03. If no such evidence is provided, you may have good grounds for an appeal.

Continue reading "Quick Post: Board of Patent Appeals Chimes In on "Well-Known Prior Art"" »

In its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner's 103 obviousness rejection based on the Examiner's faulty inherency logic. I like this reversal because it highlights the Examiner's burden and the consequences of not meeting that burden - i.e., a win for the Applicant.

With regard to inherency, recall M.P.E.P. 2112 states that where an Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make an inherency rejection under both 35 U.S.C. 102 and 103, expressed as a 102 or 103 rejection. See my post last year regarding the use of inherency in 103 obviousness rejections.

The case of Ex parte Smith (Appeal No. 2010-008057) involved an industrial resin. The claims recited a filler that covalently bonds with another element. The Examiner rejected the claims based on 35 U.S.C. 103(a) stating that the cited prior art discloses the same chemical structure and that the claimed covalent bonding aspect was inherent to the chemical structure disclosed in the prior art. Specifically, on the issue of the covalent bonding, the Examiner stated solely the following: "providing a workable amount of covalent bond forming coupling agents would have been obvious ... and coupling agents forms strong covalent bonds." (verbatim). That's all the Examiner had to say on the issue of inherency.

The Applicant responded with attorney argument that the cited prior art is silent on the issue of covalent bonding and that, in fact, the cited prior art could result in other types of bonding, such as ionic bonding, not necessarily covalent bonding.

The Board found:

"an inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)."

The Examiner simply concluded that Applicant's claimed chemical structure would inherently result in a covalent bond and stated nothing more.

"The Examiner has not established with any evidence or provided any explanation on this record why the use of the ... agents ... in the prior art ... would inevitably, or necessarily, result in a direct covalent bond as claimed."

The Board continued:

"the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness."

And thus, the Board reversed the Examiner's rejection.

What does this mean for practitioners? This means that you should closely analyze an Examiner's 103 obviousness rejection based on inherency to determine whether the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. It is not enough for the Examiner to conclude that the cited art could potentially result in the Applicant's claimed device, composition or method. In order to meet his burden, the Examiner must cite evidence that the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. If the Examiner does not meet this burden, then you may have grounds for reversal.

Continue reading "Board of Patent Appeals Reverses Examiner's Inherency Finding" »

In a quick decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner's 103 obviousness rejection in two sentences (Analysis section only). Quick work for a usually wordy Board.

The case of Ex parte Erhan (Appeal No. 2011-008127) involved a method of making fatty acid ester derivatives. The claims involved processes of production of a ketal product in combination with the hydroxyl ester product. The Examiner rejected the claims based on 35 U.S.C. 103(a) for obviousness but wrote a sparse explanation of where the claim elements were found in the prior art.

The Board began by reciting the relevant principles of law:

When determining whether a claim is obvious, an Examiner must make "a searching comparison of the claimed invention - including all its limitations - with the teachings of the prior art." In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).

The Board finished with its Analysis section, which is reproduced below verbatim:

After reviewing the facts and arguments, we conclude that the evidence and rational set out in the rejection are insufficient to establish a prima facie case of obviousness for the method of claim 22. In particular, although the rejection identified prior art teachings concerning the production of a hydroxyl ester product, the rejection did not identify prior art teachings concerning the production of a ketal product in combination with the hydroxyl ester product, and did not resolve that difference between the prior art methods and the claimed method.

And in two sentences the Board reversed the Examiner's rejection.

What does this mean for patent practitioners?This means that much like a 35 U.S.C. 102(b) rejection, a 103 rejection must provide the equivalent of an element-by-element analysis of the elements of the claims being rejected. That is, every element of every claim must be found in the prior art cited. If you suspect that the Examiner missed, or gave little attention to, a claim element, then the Examiner is violating In re Ochiai, which may be grounds for a reversal, as in the case of Ex parte Erhan. This is in line with a previous posting I wrote about how the single most effective way to reverse a 103 obviousness-type rejection is to argue that the prior art does not disclose a claim element.

Continue reading "Quick Post: Board Reverses Examiner's Rejection in Two Sentences" »

In a decision today at the Board of Patent Appeals and Interferences (BPAI), the Board reversed an Examiner's 103 obviousness rejection based on the unreasonableness of the Examiner's interpretation of the word "on."

The case of Ex parte Goruganthu (Appeal No. 2010-005235) involved a method of making lenses. The claims involved methods for forming solid immersion lenses on a resist film. One of the central issues was the meaning of the claim term "on." What does the term "on" mean?

The Board began by first contruing the claim term:

We begin by noting that while the term "on" is not expressly defined in the Specification, the broadest reasonable meaning of this term in its ordinary usage is a function word to indicate direct or indirect physical contact. See, e.g., pages 1574 and 1575 of WEBSTER'S THIRD NEW WORLD INTERNATIONAL DICTIONARY (G. & C. Merriam Webster, 1971) (on defined as "used as a function word to indicate contiguity or dependence.").

Based on the dictionary definition of the term "on," the Board followed by construing the Applicant's claim:

Thus, the claim requires forming an array of solid immersion lenses in direct or indirect physical contact with the resist film. This is a reasonable interpretation in light of the Specification as it teaches that its solid immersion lens array 36 may be formed directly on (i.e., in direct physical contact with) the underlying resist film.

Then, the Board went on to define what the Examiner found in the prior art:

"the Examiner maintains that Hugle teaches the disputed claim feature because Hugle' s Figure 4 illustrates a lens array 34 that is spaced above photoresist 35 (corresponding to the claimed resist film feature required by the claims) such that the lens array 34 is on the photoresist"

So the Examiner found a prior art reference that showed a lens array located over, but not touching, a photoresist. Was the Examiner correct in concluding that since the prior art showed A spaced above B, this would obviate a claim reciting A "on" B? The Board did not think so.

"Given the proper construction of the term "on" discussed above, we determine that the Examiner's interpretation of the term "on" to include a position that is spaced above the photoresist 35 is unreasonably broad. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). ... nowhere does Hugle teach that the lens array is formed 'on the resist film' as required by the claims.

The Examiner simply directs us to no credible evidence to support the position that a person having ordinary skill in the art would have understood Appellants' disclosure to support this broader interpretation."

In short, the Board found that a prior art reference showing a lens array space above, but not touching, a photoresist, was not the same as, and does not obviate, a claim reciting a lens array "on" a photoresist. Consequently, the Examiner's rejection was reversed.

What does this mean for patent practitioners? It means that when dealing with claims terms that comprise everyday language, you should challenge claim rejections that interpret that language too broadly. The BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). In cases involving everyday language that is not defined in the specification, the dictionary definition is used to construe that claim language. So get your dictionary out and make sure the Examiner didn't go beyond the dictionary definition. If he did, you may have grounds for a reversal, as in the Ex parte Goruganthu case.

Continue reading "Board of Patent Appeals Decides Broadest Reasonable Interpretation of Term "On"" »

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Knox confirms what I've always thought about a "no motivation to combine" argument after the decision of KSR Int'l Co. v. Teleflex, Inc, - it's a narrow argument that doesn't have much punch.

The case of Ex parte Knox involved a computer program invention. The Examiner rejected the claims for being obvious in light of two prior art references - Lai and Bradshaw - under 35 U.S.C. § 103(a). Appellants presented a standard "no motivation to combine" argument.

The Board rejected this argument, first reciting case law that is often recited in BPAI decisions:

[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). The test of non-obviousness is not whether one reference can be bodily inserted into another, but, rather, what the references, when considered together, would have suggested to one of ordinary skill in the art, In re Keller, 642 F.2d 413, 425 (CCPA 1981), who is a person of ordinary creativity and not an automaton, KSR, 550 U.S. at 421, and whose inferences and creative steps we may consider, id. at 418.

If you ask me, this is pretty strong language that negates just about any "no motivation to combine" argument. The In re Keller holding appears to eliminate the need to show that two references can even be combined in a technical sense.

In light of the case law cited, the Board concluded the following:

We find that a person of ordinary skill in the art would have recognized that Bradshaw's technique of comparing first checksums with second checksums would improve Lai's file version recording ... We find that a person of ordinary skill in the art, using no more than ordinary skill and creativity, would have recognized that the calculation of a checksum ... could be performed using a checksum algorithm that is insensitive to the ordering of data, such as that taught by Lai

.
The lesson learned from this case is that "no motivation to combine" arguments are not among the strongest arguments you can make at the BPAI. Seeing as the case law on combining prior art references is heavily weighted on the side of combining, I would leave this argument at the bottom of your toolbox along with the "non-analogous art" argument. Of course, every practitioner runs into tough situations at some point, and if you have nothing else, digging to the bottom of your toolbox is sometimes necessary.

Continue reading "Board of Patent Appeals Rejects "No Motivation to Combine" Argument Once More" »

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Lin reveals a common patent prosecution error -especially before the BPAI - failing to properly address a rejection.

The case of Ex Parte Lin involved a photolithography invention. The Examiner rejected the claims under the 1st paragraph of 35 U.S.C. § 112 for failing to comply with the enablement requirement. According to the Examiner, the Specification disclosure would not enable a person with ordinary skill in this art (POSITA) to make or use, without undue experimentation, a "photomask with wavelength-reducing material throughout the full scope of the claimed refractive index range."

Appellants argued that an artisan could make or use the photomasks because a paragraph of their specification disclosed specific wavelength-reducing materials which are known in the art to have a refractive index larger than 1.

The Board rejected this argumment, stating:

The deficiency of this argument is that it fails to address with any reasonable specificity the issue raised by the Examiner's rejection. Contrary to Appellants' belief, the issue under consideration is not whether specific wavelength-reducing materials disclosed in the Specification have a refractive index larger than 1. ... Rather, the issue before us is whether the Specification would enable an artisan to make and use, without undue experimentation, a photomask with wavelength-reducing materials throughout the claimed refractive index ... See In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (the specification must teach those of skill in the art how to make and how to use the invention as broadly as it is claimed). Appellants' argument does not address this issue and therefore does not reveal any reversible error in the § 112, 1st paragraph, rejection.

The lesson here is that you must address an Examiner's rejection head-on. Don't respond to a rejection with a tangential or side-issue. And specifically, when dealing with a § 112, 1st paragraph, rejection, the issue you must confront head-on is the issue of whether the specification teaches POSITA how to make and how to use the invention. Addressing anything else will only serve to draw attention away from the central issue.

Continue reading "Common Patent Prosecution Mishap: Failing to Address a 35 U.S.C. 112 Rejection" »

Today's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Michelle illustrates just how useless the non-analogous art argument really is.

Not to beat a dead horse, since much has been written about the uselessness of this argument by my fellow patent prosecution bloggers (see Karen H.'s blog posting about this subject here), but seriously, don't use this argument anymore. I have yet to see it succeed even once.

The Ex Parte Michelle case involved a telecommunications network claim rejected under 35 U.S.C. 103(a) for being obvious. The Appellant tried his hand at the "non-analogous art" defense. The Board summarily dismissed this argument in one sentence:

"Further, we find that the references Xu, Huitema and Sollee are in the same field of endeavor, involving middleboxes across multiple address realms on a network. They are thus properly combinable."

That's all the Board wrote. They didn't even offer to explain.

The law on non-analogous art is rather straightforward. References within the statutory terms of 35 U.S.C. § 103 qualify as prior art for an obviousness determination only when analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA 1979) and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).

The moral of the story here is that the non-analogous art argument is pretty much dead and should be removed from every patent practitioner's toolbox.

Continue reading "Stay Away From the Non-Analogous Art Argument" »

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Peng highlighted the most effective way of reversing a Patent Examiner's 103 obviousness type rejection - contesting the presence of one of the claim elements in the cited prior art. I, a Patent Lawyer practicing in the City of Miami, am always interested in reading about how other attorneys have gotten rejections reversed at the BPAI.

The Ex Parte Peng case involved a method claim performed by a GPS receiver. The claim element at issue involved the storage of certain data in sample RAM, followed by a reallocation of purpose of certain memory spaces. The Examiner issued an obviousness type rejection under 35 U.S.C. 103(a), asserting that the claim element at issue as found in the cited prior art. The Appellant appealed and argued that the claim element was in fact NOT disclosed by the cited prior art.

In a short, one and a half page analysis section, the Board agreed with the Appellant and reversed the rejection. Namely, the Board stated:

"We agree with Appellants that the results of the accumulators are stored in the RAM latch, and not the sample RAM, ... we do not find any teaching or suggestion in the cited reference of a re-allocation for purposes ... there is no indication that some of these time slots ... have been re-allocated in a second mode ... To somehow conclude that the cited re-allocation of the time slots could be accomplished in the RAM latch disclosed in Baranyai would require us to stretch the reference beyond reasonable limits."

It seems like a simple argument - "the prior art does not disclose the claim element" - and it lacks the complexity and depth of standard non-obviousness arguments such as "no articulated reasoning" and "no motivation to combine." But it so happens that this simple argument is the single most successful way to reverse a 35 U.S.C. 103(a) rejection (in electrical cases) on appeal before the BPAI. According to data provided by Michael Messinger, Esq. at the 2010 Board of Patent Appeals conference, 57% of the obviousness reversals in electrical cases were reversed using this argument. The next most successful argument was the "rationale/underpinning", which accounted for 37% of the obviousness reversals in electrical cases.

The lesson here is that if you want to increase your chances of reversing a 35 U.S.C. 103(a) rejection (in electrical cases) on appeal before the BPAI, you would be wise to use "the prior art does not disclose the claim element" argument. This argument is favored by the BPAI, according to the statistics.

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Zurcher highlighted the problems associated with using functional language in claims, especially when claiming an apparatus. I, a Patent Lawyer in Miami, have written about this before in my article about intended use claim language.

The Ex Parte Zurcher case involved an electrical-type socket invention. The claim element at issue included functional language. The Examiner asserted a prior art reference that included structure that performed the same function as described in Appellant's functional language. I.e., the Examiner found the claimed functional language inherent in the prior art reference. The ensuing arguments can be separated in three types:

Argument #1

First, the Appellant argued that the structure of the prior art was not the same as the structure disclosed by Appellant in the specification. Nice try, but even a 1st year knows that's a losing argument. You should only be arguing about what's in the claims, not the specification. The Board disagreed with the Appellant and found:

"The fact that the structure of the prior art is structurally different from the structure of the 'disclosed embodiment' Appellant described in the Specification and depicts in the Figures is of little moment. The name of the game is the claim. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed.Cir.1998)."

Argument #2

Second, the Appellant argued that one of ordinary skill in the art must recognize that the prior art's structure would be capable of performing the functional language of Appellant's claim. The Board disagreed once more and stated:

"There is no such requirement. See Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) ("Continental Can does not stand for the proposition that an inherent feature of a prior art reference must be perceived as such by a person of ordinary skill in the art before the critical date."); In re Imeprazole Patent Litig., v. Andrx Pharms, Inc., 483 F.3d 1364, 1373 (Fed. Cir. 2007) (recognition in the prior art is not necessary when the claimed characteristic or function is inherently present in the prior art)."

Argument #3

Lastly, the Board identified the central issue as one of simply determining whether the prior art structure performed the same function as the functional claim language. Period. The Board decided :

"[a] patent applicant is free to recite features of an apparatus either structurally or functionally." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). "Yet, choosing to define an element functionally, i.e., but what it does, carries with it a risk." Id. "Where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id., (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) and further citing In re Hallman, 655 F.2d 212, 215 (CCPA 1981); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971).)"

The Lesson

If you use functional language in your claim, the Examiner must only find structure in a prior art reference that performs the same function. The Examiner is NOT required to find the same structure you disclose in your specification and the Examiner is NOT required to prove that a POSITA would know the prior art structure can perform the function at issue. Additionally, the Examiner does NOT have to show that the intended use of the prior art structure is the same as that of the Appellant. Again, the Examiner must only show the prior art structure can perform the functional claim language.

In conclusion, beware of functional claim language, especially when claiming an apparatus. It is more desirable to use structural claim language, which would require an Examiner to find the same structure in the prior art - often a more difficult task.

Last week's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Roher affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, thereby rejecting the Appellant's commonly used non-obvious argument. As a Patent Lawyer in Miami Florida, the Ex parte Roher decision was educational in that it highlighted a common losing non-obviousness argument.

The case of Ex Parte Roher involved packaging for hair color products. The disputed claim limitation included a recitation about alternative hair colors shown on the packaging. The Examiner asserted this claim limitation was obvious in light of the cited prior art, which was also directed to packaging for hair color products. The Appellant asserted the prior did not disclose this claim limitation and further the prior art did not hint or suggest this claim limitation.

The Board rejected the Appellant's argument, and recited the well-known "ordinary creativity" argument with regard to the person of ordinary skill in the art (POSITA). Specifically, the Board stated: "Appellants' argument that [the prior art] ... does not disclose warmer, cooler and natural color fails to account for what the art would have suggested to and the creativity of one of ordinary skill in the art. KSR Int'l Co. v. Teleflex, Inc., 550 US 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). Clearly demonstrating variations in tone of a color or even providing different hair color blends for the consumer to view is a desirable feature as taught by [the prior art]."

This decision teaches us that a proper 35 U.S.C. 103 obviousness rejection need not disclose the exact or identical claim limitation at issue. The prior art of record may recite an element that is close to the claim limitation, as long as it would be obvious to a POSITA, who is assumed to have ordinary creativity, to make the leap to the claim limitation. This poses an additional obstacle the patent practitioner must overcome when fighting an obviousness rejection - not only must he support his argument that the prior art of record does not disclose the claim limitation at issue, he must also support his argument as to why it would NOT be obvious to a POSITA to make the logical leap to the claim limitation.

Last week's Board of Patent Appeals and Interferences (BPAI) decision of Ex Parte Lim , which affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, teaches an important lesson - obviousness rejections must address both references - not just one. As a Miami Patent Attorney that reads BPAI decisions frequently, I'm surprised that any practitioners even try this argument anymore.

The case of Ex Parte Lim involved a mobile communications network, such as those used by cell phone providers. The Examiner issued a 35 U.S.C. 103 obviousness rejection based on two references - Lipsanen and Siren. The Appellant argued that Lipsanen did not disclose the claimed subject matter. The Appellant did not address Siren and did not address the combination of the two references.

The Board decided: "Appellants' argument [regarding] Lipsanen ... is unpersuasive as it attacks the disclosure of Lipsanen individually, rather than addressing the combination with Sirén described by the Examiner. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) and In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).

The lesson here is a simple one. When attacking a 35 U.S.C. 103 obviousness rejection, it doesn't help to attack references individually. You must focus on the central concept behind the Examiner's rejection - the combination of the references. This means you must focus on why the combination - not the individual references - fail to disclose the claimed invention. For example, if your argument involves a claim element that is missing from the prior art, then you must argue that the combination - not the individual references - fail to disclose the claim element.

Today's Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Nakamura et al , which reversed a Patent Examiner's 35 U.S.C. 103 obviousness rejection, was remarkable because it illustrated a method for reversing an obvioounsess rejection. As a Miami Patent Lawyer with a large patent docket, the Ex parte Nakamura was educational because it showed me where I might find a hidden structural limitation in an apparatus claim.

Ex parte Nakamura involved a box-like positioning apparatus that included various moving parts. The claim element at issue stated that the amount or distance a particular moving member can be moved was limited to a particular distance. The Examiner gave this claim element short shrift, likening it to a non-existent limitation. But the Board disagreed and found this to be a tangible, structural claim limitation. The Board stated: "as a matter of claim construction, in giving the claim terms thereof the broadest reasonable interpretation consistent with the specification, we agree with Appellants that claim 1 specifies ... thus specifying a structural configuration." See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374,1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).

The moral of the story here is that when it comes to apparatus claims, every claim limitation need not be a positively recited, physical structure. Claim limitations, even structural ones, can be inferred from claim language that indicates what a physical element is capable or not capable of doing. The example in the Nakamura case is a claim limitation stating how far a physical element may be moved.

Last week's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Byers discredited a flawed 1.132 Affidavit presented by the Applicant and affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection. As a Miami Patent Lawyer, I found the Ex parte Byers decision interesting because it showed a common pitfall when using 1.132 Affidavits.

The case of Ex parte Byers involved an online marketplace for selling healthcare products. The Applicant submitted a 1.132 Affidavit in support of its arguments and the Board found it insuficient to rebt the Examiner's prima facie case of obviousness. Specifically, the Board stated: "the conclusory statements in the Declaration are merely factual representations of his opinions."

The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)("[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.") cf. Ashland Oil, Inc. v. Delta Resins & Refactories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)("Opinion testimonytestimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination." (citations omitted)). Although there is "no reason why opinion evidence relating to a fact issue should not be considered by an examiner," In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir. 1996). The Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations. See Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294. In re American Academy of Science, 367 F.3d 1359, 1368 (Fed. Cir. 2004).

The lesson here is simple. The focus of a 1.132 Affidavit should not be opinion. It should be a recitation of the facts. Let the Examiner and the Board reach its own conclusion based on the facts recited in the 1.132 Affidavit. Otherwise, the affidavit will look like a paid endorsement of the Applicant's arguments, and it won't be given much weight.

Today, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's 35 U.S.C. 103 obviousness rejection of a commonly-used "product-by-process" claim, supporting my theory that product-by-process claims are useless. As a Miami Patent Lawyer, I found the Ex parte Lockemeyer decision interesting because it confirmed my own abandonment of product-by-process claims in the course of patent prosecution.

Ex parte Lockemeyer involved a product-by-process claim of a chemical composition made using a new process. The Examiner issued a 35 U.S.C. 103 obviousness rejection of the product-by-process claim based on a prior art reference that disclosed the chemical composition, but did NOT disclose the Applicant's process. This begs the question - can you properly reject a product-by process claim using a prior art reference that discloses the product but NOT the process? Apparently, you can.

It is well settled that the patentability of a claim in product-by-process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process."). In light of this precedent, the Board affirmed the rejection of the Applicant's product-by-process claim.

As a side note, it should be noted that the Applicant did argue that Applicant's composition possessed characteristics not held by the composition of the prior art reference. Other than attorney argument, the Applicant offered no other evidence. This argument was, of course, shot down by the Board. When Appellants' product and a product of the prior art appear to be identical or substantially identical, the burden shifts to Appellants to provide evidence that the prior art product does not necessarily or inherently possess the characteristics of Appellants' claimed product. See Thorpe, 777 F.2d at 698; In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745 (CCPA 1974).

The affirmation of the rejection of the product-by-process claim illustrates the uselessness of these types of claims. The "process" portion of a product-by-process claim clearly has little or no limiting value and is virtually ignored as a claim limitation. Consequently, there is no good reason to add a "process" to a "product" claim. For expediency, product-by-process claims should be avoided and standard chemical composition claims should be used.