Florida Patent Lawyer Blog

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 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.

The Ex Parte Chin case involved a safety syringe having a retractable needle. The disputed claim element recited a shoulder (of the needle) that was smaller than the hole in the cylinder (so the shoulder could be pulled into the hole). But the prior art of record, Crawford, showed a drawing of a shoulder that was larger than the hole.

First, the Examiner explained away the incongruency by pointing out that the Crawford drawings were not to scale - concluding that we shouldn't give much weight to the Crawford drawings. The Board disagreed and said: "While Crawford does not describe that the drawings are to scale, that does not mean 'that things patent drawings show clearly are to be disregarded.' In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972).

Next, the Examiner asserted that although the Crawford drawings did not point out the exact recited claim element, having a shoulder that was smaller than the hole in the cylinder was inherent. Again, the Board disagreed and stated: "[Crawford's] Figure 6 shows the relative sizes of the shoulder and aperture, and as the Examiner has not directed us to any disclosure in Crawford that supports the position the aperture is sized larger than the shoulder, we find that inherency has not been established. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency ... may not be established by probabilities or possibilities.")

What does this for the patent practitioner? Inherency is a factual determination and a Patent Examiner must come up with a good reason for this determination. Ideally, the Examiner would provide supporting evidence, such as textbooks, academic articles, etc., as well as convincing articluated resoing for this finding. If the Examiner only provides some weak "Examiner arguments," and has little or any evidence to make his case for inherency, then you have a good premise for reversing this finding at the Board of Patent Appeals.

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.