Florida Patent Lawyer Blog

In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. § 112, first paragraph, rejection as failing to comply with the enablement requirement on the grounds that the Appellant provided sufficient "evidence" that the Examiner was wrong. As a Florida Patent Attorney that deals with § 112 rejections frequently, this BPAI decision illustrates a plan of attack for Appellants. See the BPAI decision in Ex Parte Schaefer here .

The Appellant, a chemical company, was appealing a 35 U.S.C. § 112, first paragraph, enablement rejection wherein the Examiner concluded that one of ordinary skill in the art would not have been able to construct the claimed invention, a fullerene molecule, based on the specification. The Appellant responded by submitting a Declaration, or Affidavit, from one of ordinary skill in the art stating that, in fact, one of ordinary skill in the art WOULD HAVE BEEN ABLE to construct the fullerene molecule based on the specification.

The BPAI decided: "We will not sustain this rejection because in our view, the Appellants have submitted evidence sufficient to establish that a person of ordinary skill in the art would have been able to make and use the claimed invention. The Second Declaration of Joseph Talnagi is evidence that a person of ordinary skill in the art would know how to ... Mr. Talnagi lastly states that a person of ordinary skill in the art would conclude that ... We conclude that the second declaration of Mr. Talnagi is sufficient to rebut the Examiner's case of lack of enablement."

The important lesson here is that a Patent Examiner's 35 U.S.C. § 112, first paragraph, enablement rejection can be successfully rebutted using a § 1.132 Affidavit. If you can provide an Affidavit from one of ordinary skill in the art stating that he/she WOULD HAVE BEEN ABLE to construct the claimed invention based on the specification, you've got a potential premise for reversal on Appeal.

Affidavits should be a part of every Patent Attorney's toolbox and can be used to fight other types of rejections, such as 35 U.S.C. § 103 obviousness rejections, as discussed in my previous blog post.

Last week, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office issued the In re Calera Corp decision, which deemed the term GREEN to be merely descriptive of an environmentally friendly product or service. As a Miami Trademark Attorney, I found this decision interesting in light of the increasing number of GREEN trademarks and service marks that I see in use in every day life.

At issue was an applicant's trademark GREEN CEMENT associated with an environmentally friendly brand of cement. The Trademark Office's examining attorney refused to register this mark under the premise that it was merely descriptive of the product sold by the applicant. Among other things, the applicant argued: "there are abundant meanings associated with the adjective 'green' (at least twenty), consumers must necessarily exercise mature thought or follow a multi-stage reasoning process in order to determine what product characteristics the term GREEN CEMENT refers to. For example, it is not clear whether the cement of Applicant's goods is: 1) freshly set and not completely hardened; 2) green in color; 3) newly manufactured or poured; 4) covered in foliage; or 5) environmentally beneficial."

The TTAB disagreed and found: "The term GREEN indicates that the product is environmentally beneficial. There simply can be no dispute today that the term green, ubiquitously used as an adjective with any good or service, will be perceived as an indicator that the good or service is environmentally friendly." Therefore, since the term GREEN was descriptive of the term CEMENT, the TTAB found the mark descriptive and affirmed the refusal by the examining attorney.

When two descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression. If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d1370 (Fed. Cir. 2004). This is exactly what happened in In re Calera Corp.

From a business owner's standpoint, the lesson is that you should stay away from overly descriptive trademarks. As illustrated above, merely descriptive trademarks are not registrable with the U.S. Patent and Trademark Office therefore offer reduced, if any, trademark protection.

What constitutes abandoning a trademark, thereby opening the door for someone else to use it? How long can you cease use of a trademark without losing trademark rights? These are common questions I field regularly as a Miami Trademark Attorney. And the answer depends on a few factors.

The landmark case often cited in trademark abandonment disputes is Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990), which involved the abandonment of a cigarette brand. We all know that two years of non-use of a mark is prima facie abandonment. The Imperial Tobacco Federal Circuit case stands for the holding that the trademark owner may rebut the presumption of abandonment arising from its non-use by presenting evidence showing that its non-use during that period was excusable, or evidence showing that, during the period of non-use, it maintained an intent to resume use of the mark. So what constitutes intent to resume and what constitutes an excuse?

The court in Imperial Tobacco set a high bar for proving intent to resume use. Even though the party claiming trademark rights took steps each year from 1981-1987 - the period of non-use - towards introduction of the cigarette brand bearing the mark, the court held this was not enough to prove intent to resume use. Specifically, the following activity was found to be inadequate: 1) developing a marketing strategy for the products bearing the mark, 2) seeking registration of the mark for the goods in question, and 3) making efforts to license the mark.

Similarly, in another case the registrant was found not to have the intent to resume use even though he took the following steps during the non-use period: 1) making trips abroad in an effort to establish stores under the mark 2) meeting with real estate agents and 3) visiting possible sites for the stores and examining stores of competitors. Richard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998).

The only acceptable excuse outlined explicitly in the Imperial Tobacco case was the pending resolution of trademark litigation, see, e.g., La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1274, 181 USPQ 545, 550 (2nd Cir.1974); New England Duplicating Co. v. Mendes, 190 F.2d 415, 418, 90 USPQ 151, 153 (1st Cir.1951). But the court in Imperial Tobacco did not agree that pending litigation was the cause of the non-use in that case.

In conclusion, the bar is pretty high when attempting to rebut a presumption of abandonment of a trademark due to non-use. A successful rebuttal requires a substantial factual showing of a concrete and uninterrupted series of actions to get the mark in use in commerce during the entire period of non-use.

Using strong words, today the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's 35 U.S.C. §102(e) anticipation rejection of a Tokyo Electron invention, claiming that the Appellant's attorney's arguments alone held no weight. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the subtle drama of this decision and also learned something.

At issue in Ex parte Willis , was a claim to a laboratory measuring device that measured spectral data. In response to the Patent Examiner's 35 U.S.C. §102(e) anticipation rejection, the Appellant's attorney, from the firm of Oblon Spivak, provided one particular argument, among many, about what a claim term meant to one of ordinary skill in the art. The attorney's particular argument did not include any references to the specification, the cited references, or any textbooks or authoritative works. Also, no §1.132 declaration was provided. This is what the BPAI had to say about this particular argument:

The Appellant's argument is not well taken because it is merely unsupported attorney argument, and arguments of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

Ouch! to the layperson, this may seem lightly worded - but to an avid reader of BPAI decisions, this is considered a smack down. Now for the educational moment:

When making statements about a person of ordinary skill in the art (POSITA), it helps to refer to an authority about what is considered known to a POSITA. You can refer to your own specification, the cited references, other patents in the same area from the same time, textbooks, science/engineering treatises, etc. Also, you can use a §1.132 declaration from your inventor or someone else in the field, IF their credentials are impressive enough to be considered a POSITA. Karen Hazzah has a great blog entry about the use of §1.132 declarations. And the best part of using these authorities, is that the Examiner must rebut this evidence. I wrote a blog entry recently about the Examiner's duty to respond to the evidence you've provided. He can't just dismiss it, he must consider it, rebut it with evidence of his own and provide substantive reasoning as to why your evidence does not overcome the rejection.

Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's 35 U.S.C. § 102(e) anticipation rejection of a key Macrovision patent application directed to watermarks for videos. As a Miami Patent Attorney who reads BPAI decisions almost daily, I enjoyed the Ex Parte Ryan decision because it showed a rare smack-down of a Patent Examiner (as far as BPAI smack-downs go).

At issue in this case was whether the cited reference, Collier, disclosed a method for inserting watermarks into a video. Collier, however, did not disclose inserting watermarks into a video but rather detecting watermarks in a video.

In a rare show of criticism of a Patent Examiner, the BPAI offered the following admonishment: "the Examiner has not shown and we do not readily find where Collier embeds watermarks ... as claimed. Instead, Collier is primarily concerned with detecting such watermarks and we are left to speculate on how such watermarks were embedded in the first place. But the scolding didn't end there: "it is impermissible to make guesses in an anticipation rejection. The Examiner has left it up to us to speculate." Consequently, the Board reversed the Examiner's 35 U.S.C. § 102(e) anticipation rejection.

I realize this doesn't exactly read like a scathing W. Safire Op-Ed piece, but this is what passes for excitement at the BPAI.

What can we learn from this? When asserting a 35 U.S.C. § 102(e) anticipation rejection, a Patent Examiner must provide you with a concrete explanation of where each limitation of your claim is found, either explicitly or inherently, in the cited reference. He cannot simply provide a blanket conclusory statement that the cited reference discloses the claim limitation, as Examiners are so fond of doing, leaving you to guess at how or where the limitation is disclosed. At the Examiner Interview, insist that the Patent Examiner point to exactly where you can find the claimed limitation in the cited reference. If he cannot, or doesn't put it on paper, then you have a good premise for reversal on Appeal.

In rejecting claims under 35 U.S.C. § 102, "[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation." Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005), citing Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1565 (Fed. Cir. 1992).

Earlier this month, the Trademark Trial and Appeal Board (TTAB) affirmed a likelihood of confusion refusal under Trademark Act Section 2(d) in the case of In re Plastic-Plus Awards . See the TTAB decision here. As a Miami Trademark Attorney with a sizable trademark prosecution docket, this case is interesting because it illustrates the law surrounding the comparison of marks in a likelihood of confusion comparison.

At issue was an existing trademark registration for MOTION TROPHY and Appellant's trademark application for MOTION XTREME. The Appellant appealed a likelihood of confusion refusal under Trademark Act Section 2(d). In regard to the comparison of the marks, the TTAB started off with a recitation of case law: "In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impressions that confusion as to the source of the goods offered under the respective marks is likely to result."

But then the TTAB hedged a bit when it stated: "Although likelihood of confusion must be determined by analyzing the marks in their entireties, 'there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.' In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)."

This illustrates that the legal criteria for comparing two marks in a likelihood of confusion inquiry is more complicated that just looking at two marks "in their entirety" and deciding if they are similar. Various other factors are considered during the determination. In this case, the dominance of certain parts of each mark was considered, and weights were placed on certain elements of each mark to reflect that dominance. The final determination, however, was a consideration of the marks in their entireties. Thus, the resulting likelihood of confusion inquiry in this case turned out to be a hybrid of considering the marks in their entirety AND comparing individual elements of each mark. This is one of the subtleties of federal trademark law and one of the main reasons you should consider hiring a Board Certified Specialist in the area of Intellectual Property Law to service your trademark law needs.

In an educational opinion today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §103 obviousness rejection on the grounds that the Examiner did not provide "evidence" of the obviousness of the combination of references. As a Florida Patent Attorney that deals with 103 obviousness rejections on an almost-daily basis, I found this decision of the BPAI illustrates a plan of attack for Appellants. See the decision in Ex Parte General Components Inc. HERE.

The Appellant, an electrical component manufacturer, was appealing a 35 U.S.C. §103 obviousness rejection where the Examiner combined two references and followed it up with the standard boiler-plate language we're accustomed to seeing as patent practitioners - it would have been obvious to have modified the first reference to produce the claimed feature.

The BPAI decided (I'll paraphrase here for simplification): "The Examiner did not provide sufficient evidence to support the determination that it would have been obvious to have modified [the first reference to reflect the claimed feature]." The BPAI continued: "There is no evidence that [modifying the first reference] would [produce the claimed feature] ... The substitution of one element for another is generally considered obvious when there is a reason to make the substitution and when the resulting combination yields a predictable result. See KSR, 550 U.S. 398 at 416, 418. In this case, the Examiner determined it would have been obvious to have substituted [a feature of the second reference for a feature of the first reference] but did not explain how [to do it]. Furthermore, the Examiner did not provide sufficient evidence that [the feature of the second reference], when substituted for [the feature of the first reference], would produce [a requirement of the first reference]. The rejection is therefore reversed."

The important lesson here is that a Patent Examiner must provide some evidence that it would have been obvious to modify a first reference to reflect a claimed feature. A standard, conclusory statement by the Examiner doesn't suffice. Ideally, he would provide literature from other patents, academic papers or from textbooks of the time that support his argument. But that is something I rarely see in 35 U.S.C. §103 obviousness rejections from the USPTO. In short, if an Examiner doesn't provide any evidence as to WHY it would have been obvious to modify a reference, you've got a premise for reversal on Appeal.

The other lesson is that a modification of a reference is NOT obvious if, after the modification, the reference is not able to perform its stated purpose. If the modification destroys or frustrates the purpose of the first reference, then the combination is not proper. This "frustration of purpose" argument is one I've made many times before the BPAI, and it provides yet another premise for seeking a reversal on Appeal.

In an interesting and somewhat comical opinion today, the Board of Patent Appeals and Interferences (BPAI) rejected an Appellant's argument that a 35 U.S.C. §101 rejection violated the Appellant's rights under the equal protection clause of the 14th Amendment of the U.S. Constitution. As a Florida Patent Attorney with an active patent prosecution docket, this is the first time I've ever seen the 14th Amendment brought up before the BPAI. See the decision in Ex Parte Haines HERE.

The Appellant, Hewlett Packard, was appealing a 35 U.S.C. §101 non-statutory subject matter rejection of a claim that recited propagated signals. HP argued the USPTO has issued patents to others that contain "propagated signal claims" and therefore the current rejection violated HP's rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution.

The BPAI responded: "Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 ("No State shall . . . deny to any person within its jurisdiction the equal protection of the laws."). We are not persuaded that the USPTO has violated Appellant's rights to equal protection of the laws under the Constitution." The footnote reads "absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003).

Frankly, I'm surprised the HP attorney would even advance the 14th Amendment argument. I am careful to avoid flimsy or meritless arguments when practicing before the BPAI, as any document with your name on it affects your professional reputation. I aim to have a reputation as an advocate that only presents solid arguments. Readers will take you more seriously and are more willing to consider your line of reasoning when you have an established history of sound argument-making.

What an illuminating decision! Today's Board of Patent Appeals and Interferences (BPAI) decision in Ex parte Harrison read like a veritable anatomy of a 35 U.S.C. § 101 non statutory subject matter rejection under In re Bilski. The highly educational decision in In re Harrison touches on many important issues surrounding § 101 non statutory subject matter rejection. It's not often that the BPAI issues a decision about a § 101 non statutory subject matter rejection, so two in one week is a real treat (see my posting from two days ago) for a practicing Florida patent attorney.

As an aside, I liked the BPAI's mention that "the [Bilski] court declined to decide under the machine implementation branch of the inquiry whether or when recitation of a computer suffices to tie a process claim to a particular machine." This confirms that it's still undecided whether reciting a computer or a computer readable medium satisfies the first prong of the machine-or-transformation test.

Yesterday, the Board of Patent Appeals and Interferences (BPAI) issued a ruling touching upon the "broadest reasonable interpretation" concept, resulting in a reversal of a Patent Examiner's 35 U.S.C. §103 obviousness rejection of an earphone invention belonging to French firm Technofirst. As a Miami Patent Attorney, this case was interesting because it illustrates another avenue for reversing a 35 U.S.C. §103 obviousness rejection on appeal.

The gyst of the BPAI decision can be read in the following excerpt: "the Examiner is correct that Appellant has not specifically defined that term therein. However, while giving claim terms their broadest reasonable interpretation is correct and proper, such interpretations need to be made in view of the specification. See Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). With such a standard, we do not find the Examiner's alternate interpretations to be consistent with the instant Specification ... We can find no support in the Specification for such an interpretation of 'complex polynomial function.'"

Lesson learned: As a patent practitioner, even if your case suffers from lack of definition of a key claim term, and the Examiner hits you with a broad reasonable interpretation of the claim term, his interpretation must be consistent with the specification. I.e., no matter how reasonable an Examiner's interpretation of a claim term, he cannot get away with the interpretation if it's not consistent with the specification. So always check the Examiner's interpretation against the specification.

See also the the following excerpt: "In addition, Appellant has proffered declaration evidence that one of ordinary skill in the art, at the time that the application was filed, would have understood 'complex polynomial function' to require a filter of order higher
than first. While Dr. Carme's opinion cannot be said to come from a disinterested party, we find that the Examiner has provided nothing to counter his opinion other than a finding of the plain meaning of the term. While 'complex' can certainly connote complex numbers, we find no support for such a contention in the Specification. As such, we do not agree with the Examiner."

The above excerpt highlights the value of 1.132 Declarations. I have rarely seen Examiners provide a substantive response to a 1.132 Declaration. Even though the Declaration comes from your inventor, who is admittedly an interested party, the BPAI does give the declaration weight and if the Examiner does not adequately rebut it, this weighs in the Appellant's favor. Lesson learned: use 1.132 Declarations whenever possible, as it provides another element that may weigh in your favor on appeal.

In one of its last decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §101 non-statutory subject matter rejection of a key Invatron Systems invention. As a Miami Patent Attorney, this case was interesting because I haven't seen any BPAI decisions regarding 35 U.S.C. §101, much less a decision that invokes Bilski, in a while.

At issue was an Invatron Systems claim pertaining to a scale for weighing items, wherein the scale included a computer that performed a series of steps, such as providing a coupon. The Examiner found the claims recite a method of purely mental steps, not tied to another statutory class. The Appellants contended the claimed method recites steps including providing a coupon to the customer and that these steps cannot be performed purely mentally since there is no way to provide a coupon without the coupon being physically inputted into the weigh station display.

The court explained the Bilski machine-or-transformation test as follows: "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The court explained that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility" and "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." In re Bilski, 545 F.3d 17 943 (Fed. Cir. 2008) (en banc), petition for cert. granted, 77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964).

The BPAI agreed with the Appellants. See the BPAI decision here. The BPAI stated claim 17 recited a method for providing information to a weigh station, where customer specific information is provided to the weigh station display. That is, claim 17 recited a manner of entering data to a weigh station and displaying the inputted information. As such, claim 17 required a specific structure that captures, stores, and displays specific data. This specific structure ties the recited method to a particular machine, in that the method recites how to operate a weigh station with a weigh station display. Since there is a particular machine required, claim 17 satisfies the machine prong of the machine-or-transformation test and the transformation prong need not be evaluated. As a result, the BPAI reversed the Examiner's 35 U.S.C. §101 non-statutory subject matter rejection under Bilski.

The lesson learned in this case is that although a claim may not explicitly and positively recite a structural element, the claim may require a specific structure to perform the steps of the claim. If that structure satisfies the machine prong of the machine-or-transformation test, an Examiner's 35 U.S.C. §101 non-statutory subject matter rejection may be reversed under Bilski.

Can you protect architectural drawings and constructed buildings using copyrights? As a Miami Copyright Attorney with an active copyright docket, this is a question I've been asked more than once.

Generally the answer is yes. An original design of a building created in any tangible medium of expression, including a constructed building or architectural plans, models, or drawings, is subject to copyright protection as an "architectural work" under 17 U.S.C. §102 of the Copyright Act. Protection extends to the overall form as well as the arrangement and composition of spaces and elements in the design but does not include individual standard features or design elements that are functionally required. The term "building" means structures that are habitable by humans and intended to be both permanent and stationary.

But here is the tricky part. Architectural designs created on or after Dec. 1, 1990 are subject to copyright. Also, unpublished architectural designs constructed between Dec. 1, 1990 and Jan. 1, 2003. are subject to copyright.

BUT any designs constructed or published BEFORE Dec. 1, 1990 are NOT subject to copyright. Also, any unpublished and non-constructed designs created BEFORE Dec. 1, 1990 but constructed between Dec. 1, 1990 and Dec. 31, 2002 are NOT subject to copyright. Additional works that are NOT subject to copyright include structures other than buildings, such as bridges, cloverleafs, dams, walkways, etc.

Protection for an architectural work created as a work made for hire on or after December 1, 1990, lasts for 95 years from the date of publication of the work or for 120 years from the date of creation of the work, whichever term is less. A work made for hire is one prepared by an employee within the scope of his or her employment, such as an architect employed by a firm.
Protection for an architectural work created on or after December 1, 1990, by an individual (not as a work made for hire) lasts for the life of the author plus 70 years.

To recap, architectural works are subject to copyright, but care must be taken to record the dates of important events, such as dates of publication and construction, in order to determine whether you are dealing with a work that may not be eligible for copyright.

In one of its first decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §103(a) rejection of a key Verizon invention. As a Miami Patent Attorney, this case was interesting because it illustrates how a 35 U.S.C. §103(a) obviousness rejection can be reversed on appeal to the BPAI.

At issue was a Verizon claim that disclosed software for an LDAP server that receives a request in first protocol format and then converts retrieved information from a second protocol format to the first protocol format. The Examiner rejected the Verizon claim under 35 U.S.C. §103(a) based on the Ma patent. See the BPAI decision here .

The Appellant argued that in Ma the request to and the response from the directory server have the same protocol format, as opposed to having first and second protocol formats as claimed. Appellant further argued that while another patent was cited for the proposition that "converting from one type of protocol format to another protocol format was known in the art at the time the invention was made," Ma does not disclose the need or desirability for any type of translation. Appellant asserted that Ma does not teach or suggest that messages formatted in accordance with a first protocol are converted, translated, or otherwise reformed into messages formatted in accordance with a second protocol.

Appellant pointed out that as described by the Ma patent, the mediation server may be conversant in multiple protocol formats and therefore is not described to have any need to convert there between with respect to a particular request. Appellant thus argued that the requisite motivation to combine Ma and the other patent was lacking. The BPAI agreed with Appellant's arguments and reversed the Examiner's 35 U.S.C. §103(a) obviousness rejection.

For patent practitioners, the lesson learned in this BPAI decision is the criteria a Patent Examiner must meet when asserting a 35 U.S.C. §103(a) obviousness rejection. First, it is not enough that a cited reference disclose the ability to perform a task. The task itself must be explicitly or implicitly disclosed in the reference - in this case, the task not disclosed was translating from one format to another. Second, when two references are combined, there should be some motivation to combine the two references. The lack of such a motivation opens the rejection to attack on Appeal.