Florida Patent Lawyer Blog

Today I came across a nice little Board of Patent Appeals case that outlines an additional tool that can be used to fight 102 anticipation rejections, especially when procuring software patents. Specifically, this case addresses a common situation: you receive a 102 rejection where the Examiner appears to have done a simple text search for each of your claim elements and found them all in disparate parts of one reference.

The case of Ex parte Putnam (Appeal No. 2010-001668) involved a software process for migrating databases. The Patent Examiner found all of the elements of claim 1 in one patent reference. The elements, however, were not arranged the same way as claimed by the Appellant. I see this a lot in the software art - Examiners will find one huge prior art patent, and cherry pick places in the reference that describe the steps that your claimed invention takes. Apparently, this does not meet the Examiner's burden under § 102.

The Board decided:

To anticipate under § 102, the prior art reference "must not only disclose all elements within the four corners of the document, but must also disclose those elements arranged as in the claim." Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (citation and internal quotation marks omitted). "Thus, it is not enough that the prior art reference discloses part of the claimed invention, which an ordinary artisan might supplement to make the whole, or that it includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention." Id. at 1371.

Lesson Learned: When you receive an anticipation rejection under § 102, it's not enough that the Examiner found all of your claim elements in one reference. Review the reference carefully to make sure that the claim elements (as pointed out by the Examiner) are arranged the same way as in your claim. If they are not, then you may have a case for reversal of the Examiner's rejection.

This case also highlights the importance of writing your claims (especially in software cases) in such a way that your claim elements are linked or related. This further emphasizes the duty of the Examiner to show the link between the claim elements, as claimed by the Appellant. For example: reading data X; executing a digital signal process using data X; displaying the result of the digital signal process.

Continue reading "Tools for Fighting a 102 Anticipation Rejection" »

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 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" »

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.

Yesterday's Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Chin reversed a Patent Examiner's 35 U.S.C. 102 anticipation rejection, thereby rejecting the Examiner's inherency argument. As a working Patent Lawyer in Miami Florida, I like reading BPAI decisions that show me how to reverse a Patent Examiner's rejection.

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.

On Friday, the Board of Patent Appeals and Interferences (BPAI) rejected the well-known "intended use" argument in favor of a Patent Examiner's 35 U.S.C. 102 anticipation rejection. As a Miami Patent Lawyer, I found the Ex parte Crabtree decision interesting because it confirmed my own abandonment of the "intended use" argument in the course of patent prosecution.

The Ex parte Crabtree decision involved a claim for a mattress spring that performed a specific task. Specifically, the mattress spring "deflects debris." The Appellant found a prior art reference that had the same structure as Appellant's claim, but did not disclose a "deflecting debris" function. Appellant argued that since the prior art reference did not perform the "intended use" of Appellant's claimed invention, there was no anticipation under 35 U.S.C. 102.

For the patent practitioner, this Board decision highlights a common pitfall in claim construction. We often want to describe elements of a physical apparatus using claim language that includes functionality and intended use of the elements and apparatus. This type of language, however, does not always belong in claim language and is risky (see above). When claiming a physical apparatus, we must focus on the structure of the apparatus and how that structure is different from the prior art. When writing claims for a physical apparatus, I like to think in terms of patent prosecution. Ask yourself, "can I point to one or more physical elements of this apparatus and say - 'the prior art does not disclose this element'?"

In the last decision of this past Thursday, the Board of Patent Appeals and Interferences (BPAI) reiterated the rule that attorney argument is not enough to meet certain burdens in course of patent prosecution. As a Board Certified patent lawyer in Miami with a sizable docket of cases, I'm constantly staying abreast of the current state of the law on issues relating to patent prosecution.

The Patent Examiner in the Ex parte Zechlin case asserted that a characteristic of the claimed chemical process was found in a prior art patent. Specifically, the Patent Examiner found the claimed cyclic ketone removal characteristic was "inherent" in the chemical process shown in the Forlin (U.S. Pat. App. No. 2004/0092773) prior art reference. On appeal, the Applicant presented his arguments as to why the Examiner's assertion was incorrect. The Applicant, however, provided no other evidence, such as affidavits, extrinsic evidence, etc.

What does the law say about an inherency rejection and the burden of proof? Read on ...

When the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke, [441 F.2d 660 (CCPA 1971)]. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 459 F.2d 531. . . ([CCPA]1972). In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

The applicant has the burden of coming forward with evidence in rebuttal, when the prior art includes a method that appears, on its face, to be capable of producing the claimed composition. This burden may be met by presenting sufficient reason or authority or evidence, on the facts of the case, to show that the prior art method would not produce or would not be expected to produce the claimed subject matter. In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005).

In Ex parte Zechlin, the Examiner presented a legitimate inherency rejection and the Applicant responded using only "attorney argument" and did not present any 1.132 affidavits, references to text books, scientific treatises, etc. That was a bad move by the Applicant's attorney, since he carried the burden of proving the inherency rejection was not accurate. As a result, the Board in Ex parte Zechlin found the Applicant did not meet his burden in rebutting the Examiner's finding of inherency.

The moral of the story here is that once the Examiner makes a finding of inherency, the burden is moved to the Applicant to properly rebut the Examiner's finding. And it's a high burden. You wont get off with a few paragraphs of attorney argument. In order to properly rebut a finding of inherency, the patent practitioner should err on the side of caution and get a professor or creditted engineer to provide a 1.132 affidavit and/or provide a good bibliography of textbooks, scientific journals and academic articles that support his position.

Today's first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a claim that turned on the construction of the claim term "embedded." As a Patent Attorney in Miami with a full docket of patent cases, BPAI decisions that involve claim construction are highly topical for me.

In Ex parte Benson, the BPAI explored the issue of how the claim term "embedded" should be construed. The Applicant argued the claim term should be given the more narrow ordinary dictionary meaning. And the Examiner, as usual, argued it should be given a broader meaning that supported the 35 U.S.C. 102 anticipation rejection. The Applicant argued the Examiner's claim construction was over-broad and unreasonable.

The lesson here is that when you launch an "unreasonable interpretation" attack on an Examiner's rejection based on an "ordinary dictionary meaning" premise, you must make sure your specification didn't broaden the scope of the claim term at issue. If your specification did, in fact, broaden the scope of the claim term, then you would be wise to use another claim term that explicitly limits its scope to the ordinary dictionary meaning you assert. This is yet another reason why a precisely drafted claim is so important in patent prosecution. I had previously expounded on the issue of precise claim drafting in a blog post here.

In doing legal research today, I came upon this Board of Patent Appeals and Interferences (BPAI) decision that illustrates the importance of precise claim drafting. The case of Ex parte Allen Berger involves a 35 U.S.C. 102 rejection of a claim for a window panel invention. As a Patent Attorney in Miami with a full docket of patent cases, I'm constantly scanning for BPAI decisions that support my client's arguments at the Patent Office.

When the examiner rejects a claim, an applicant seeking a narrower construction must either show why the examiner's broader construction is unreasonable or amend the claim to state expressly the scope intended. In re Morris, 127 F.3d 1048,1057 (Fed. Cir. 1997). The BPAI focuses on the construction of the disputed limitation. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991).

The lesson here is that when you launch an "unreasonable interpretation" attack on an Examiner's rejection, you must: a) make sure the language of your claim limitation truly limits your claim as specified in your arguments and b) make sure you have a good, explicit reason why the Examiner's claim interpretation is unreasonable. Namely, providing a passage from Applicant's specification that supports your argument about why your claim is limited so as to exclude the scope of the Examiner's interpretation. This is why a precisely drafted claim is so important in patent prosecution.

How do you reverse a Patent Examiner's 35 U.S.C. 103 rejection of your design patent application based on obviousness? That was the issue in the Ex parte Kellerman (BPAI 2009-009310) decision at the Board of Patent Appeals and Interferences (BPAI) where a Patent Examiner was reversed. As a Miami Patent Attorney with a sizable docket of design patent cases, this case taught an important lesson on the anatomy of an obviousness rejection in a design patent case.

This teaches us two things with regard to a 35 U.S.C. 103 obviousness rejections in a design case: 1) the shape of orifice can be a significant distinction that affects an obviousness determination and 2) modifying a prior art reference to meet the ornamental characteristic of a claimed design must be obvious to one of ordinary skill in the art. Thus, when appealing an Examiner's obviousness rejection in a design case, it is important to discuss the significance of any difference in shape - especially if it pertains to the shape of an orifice. Second, it is important to contest the Examiner's assertion that modifying the prior art to meet the ornamental characteristic of the claimed design is obvious. This can be done many ways, but one of my favorites is to use a 37 C.F.R. 1.132 Affidavit.

Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner's rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others.

At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an "interconnected network". The applicant argued that the terms "interconnect network" and "wireless network" are not synonymous as pertains to a prior patent issued to Elliott (US 6,859,135 B1) in 2005. Unfortunately, the applicant failed to clearly make this distinction in the claims.

In the analysis section of the decision, the BPAI indicated comments made by the Patent Examiner, such as, "Appellant (applicant) seems to suggest that Elliott's network is a wireless network and not an interconnected network because it is not a combination of wired and wireless network," and that," the issue of the interconnected network being wireless or wired is not at all claimed." Oops! The BPAI further points out that the applicant's primary claim "merely requires that data is received from an 'interconnected network' which does not preclude a cellular network."

The lesson here is that the BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004), and that a BPAI analysis will not read limitations into the claims from the specification, In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because the primary claim made in Ex parte Tosey failed to recite a distinction between "interconnected network" and "wireless network", the BPAI was compelled to find that there was no such distinction and therefore rejected the claim. It also didn't help that the patent application contained some typographical errors - a general indication of overall sloppiness in preparing the application.

As I have previously discussed in this blog, when prosecuting a patent application in a crowded field of competitors (such as the wireless networking industry) it is absolutely crucial to point out - in the claims - the limitations and distinctions of your invention as compared to those that are already patented. A twisted version of an old adage reads "Ready, Fire, Aim!", which is a very poor strategy for successful patent prosecution.

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).

Yesterday, the Board of Patent Appeals and Interferences (BPAI) affirmed a Patent Examiner's anticipation rejection, citing the Applicant's attempt to claim a new benefit of an old process. As a Miami Patent Attorney that handles anticipation rejections on a weekly basis, Ex parte Satoshi Matsubara, et al. is an interesting case because it illustrates the law surrounding the concepts of inherency and claiming a new use or benefit of a prior art process.

At issue were claims involving a therapeutic method for improving bone density of a human or animal having decreased bone density by administering fermented soy milk. The Patent Examiner rejected representative independent claim 17 under 35 U.S.C. §102(b) as being anticipated by an academic paper by Kikuchi-Hayakawa. The Examiner found that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats with removed ovaries. Since ovariectomized rats have decreased bone densities, and soy milk increases bone density in rats, the Examiner concluded that Kikuchi-Hayakawa disclosed administering fermented soy milk to rats to improve their decreased bone densities. The Appellants, however, argued the rats of Kikuchi-Hayakawa were not selected for their decreased bone densities but for other reasons (to determine the effects of soy milk on lipid metabolism), and therefore Kikuchi-Hayakawa did not disclose every element of claim 17.

For patent practitioners, the educational aspect of this case rests in the classification of a claimed invention as novel, as opposed to an old process. Beware of an Examiner's determination that your claimed process is old or well-known. Further, be wary of an Examiner's finding that your claimed new benefit naturally flows from the allegedly old process. These findings, if not properly rebutted, will hurt your chances of a reversal on appeal.

Yesterday, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 102(e) anticipation rejection of a key ARM Ltd. microprocessor invention. As a Miami Patent Lawyer that deals with the BPAI frequently, this case is instructive because it illustrates the patent law related to functional equivalents in a hardware device.

At issue in ARM's claimed invention was the existence of a memory management unit (i.e., a physical hardware component referred to as an MMU), which the Examiner asserted was found in the cited patent. The BPAI decision disagreed and stated: "the Examiner paints with a broad brush by reading the claimed memory management unit on nebulous "logic/circuitry that manages indirect and direct access to the Graphics Memory 116" without clearly specifying in the record which particular component in [the cited patent] corresponds to Appellants' claimed memory management unit." The BPAI went on to state: "since the Examiner does not identify the specific hardware component in [the cited patent] that corresponds to the claimed MMU, the Examiner appears to be relying on certain memory management functions performed by various software components in [the cited patent] ... However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) ("the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant."). Consequently, the Examiner's 35 U.S.C. sec. 102(e) anticipation rejection was reversed.

In this case, the Examiner erred in asserting that the functions described in the cited patent were equivalent to a claimed structural component. This legally erroneous finding of "functional equivalence" is something I see often in dealing with Patent Examiners. It is all too common for a Patent Examiner to point to "nebulous" logic in a cited patent and assert that it's equivalent to a structural component in your claim. When pressed to point out exactly which component in the cited patent corresponds to the claimed component, I rarely get a straight answer. This BPAI decision is important and a precedent I will surely cite in the future.

The practice pointer illustrated in this case is the following: when prosecuting computer hardware or general mechanical claims, for each claimed structural component, the Patent Examiner must point to a specific component in the cited art. It is not enough for the Examiner to point to a "nebulous" or general area of the cited art and claim that it performs the same function as the claimed component. That would be painting with a "broad brush." The Examiner must point to a specific component in the prior art AND it must perform the same function as the claimed component. If the Examiner fails to do this, you have a good premise for reversing on appeal to the BPAI.