First, you should remove the allegedly offending material as soon as possible. Even if you believe you have every right to display or use the work, remove it until you and your attorney can further evaluate the situation. Better safe than sorry.

Second, find out who owns the work. The easiest way to find out the answer to this question is to determine where the work originated. Did it come from a stock photo bank? Did it come from someone else's web site? Did you or one of your employees create the work or photograph? How did it get on your web site? The answers to these questions should illuminate who owns the work.

Third, find out whether the aggrieved party has a copyright registration from the U.S. Copyright Office. This is important because a copyright registration from the U.S. Copyright Office will define the author of the work and the owner of the work. Thus, it will define the aggrieved party in the dispute. Also,a copyright registration will dictate the type of damages that are available to the aggrieved party.

All works are protected by copyright law, but registered works afford a copyright holder more damages. There are two types of damages for copyright infringement: statutory damages and actual damages. When a work has NOT been registered prior to infringement, the plaintiff may get actual damages. Typically, actual damages means the amount of the loss the plaintiff has suffered, or the profit the copyright infringer has gained. When a work HAS been registered prior to infringement, the plaintiff may get statutory damages. Statutory damages are defined in 17 U.S.C. § 504, which recites damages in the range from $750-$30,000 per infringement, and up to $150,000 per infringement when the court determines that the defendant acted 'willfully'.

Fourth, and last, if the three steps above reveal that you have infringed, determine the amount of damages you are potentially liable for (see 3rd step above), and make the other side a proportional offer. Of course, if the three steps above reveal that you have NOT infringed, then I would send the opposing party a brief letter stating that you have not infringed and your reasons why.

Although it can be scary to receive a copyright takedown notice, knowing your rights and taking the proper steps to deal with the situation can lighten the blow of such a letter and put you on the path to a final resolution.

The Appellant tried to argue that there was no reason or motivation to combine Chin and Barreto. But the PTAB didn't buy that argument. The PTAB decided:

"we find that the combination of Chin and Barreto involves nothing more than a simple substitution of well known, interrelated regression LS and LMS techniques to yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We agree with the Examiner that these teachings, all in the context of Appellant's invention, are properly combinable)."

The Board went on to cite Federal Circuit law on the issue of "no motivation to combine" and "teaching away":

"A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citing United States v. Adams, 383 U.S. 39, 52 (1966))."

I could have predicted the outcome in this case. The "no motivation to combine" and "teaching away" arguments are not statistically very successful. Further, the patent practitioner in this case did not provide any hard evidence in responding to the 35 U.S.C 103 obviousness rejection. That did not bode well for the Applicant's attorney, since he carried the burden of proving the obviousness rejection was not accurate.

Lessons Learned: Don't use the "no motivation to combine" argument unless there is clear and explicit language in the cited prior art stating that you shouldn't combine the teachings and a clear explanation of why. Further, rebutting a 35 U.S.C 103 obviousness rejection carries a high burden. Thus, you should come up with some hard evidence that supports your argument - not just attorney argument.

As a boy, I remember watching Ric Flair froth at the mouth, running around like a mad man and beating his opponents. It was a stunning display of energy, machismo and mayhem, all rolled into one. At some point, he would settle in front of a camera and going on long, screaming diatribes about who was the best, what he was going to do to his opponents and who he was going to demolish next week. It was wildly entertaining, especially for a skinny young lad growing up in the 80s.

Ric Flair's quote about the importance of beating the best applies directly to appealing Examiner decisions to the PTAB. Statistically, a Patent Examiner's best argument is a 35 U.S.C 103 obviousness argument. By that, I mean it is the argument that is least likely to be reversed by the PTAB. This is best illustrated by the Ex parte Chandrachood (Appeal No. 2012-007987), which was handed down today.

The Ex parte Chandrachood decision involved an appeal of a 35 U.S.C 103 obviousness rejection of a method claim involving a photolithography process. At issue was whether it was obvious that two particular gases were combined - an oxygen containing gas and CHF3. The Examiner claimed it was obvious because he found references disclosing the use of an oxygen containing gas and CHF3 to perform the process of the claimed invention. The Applicant argued that it was not obvious because one of the references disclosed that the use of CHF3 would produce a poor quality result.

Ultimately, the PTAB decided that:

"It is well settled that it is a matter of obviousness for one of ordinary skill in the art to combine two or more materials when each is taught by the prior art to be useful for the same purpose. In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)."

"Appellants base no argument upon objective evidence of nonobviousness, such as unexpected results."

Key to responding to a 35 U.S.C 103 obviousness rejection (which, recall, is the Examiner's best argument, statistically), is coming up with hard evidence. The Examiner presented a legitimate obviousness 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 obviousness rejection was not accurate. As a result, the Board in Ex parte Chandrachood found the Applicant did not meet his burden in rebutting the Examiner's finding of obviousness. Ric Flair would not have made this mistake - he would have pulled out all of the stops, submitted every piece of evidence he could get his hands on, requested an oral hearing with the Board and probably physically coerced the judges to rule in his favor.

Lessons Learned: Once the Examiner makes a finding of obviousness, the burden is moved to the Applicant to properly rebut the Examiner's finding. And it's a high burden. You won't get off with a few paragraphs of attorney argument. In order to be the best, you have to beat the best, so to rebut a finding of obviousness, the patent practitioner should be proactive and get a professor or professional engineer to provide a 1.132 affidavit and/or provide a bibliography of textbooks, scientific journals and academic articles that support his position.

A common phone call I receive from clients relates to the halting of goods at a port by Customs and Border Protection due to trademark issues. It usually sounds like this: "Mark, my goods were stopped at the port due to a trademark issue. Help!" Often, the problem relates to missing paperwork regarding permission or authorization to use a registered trademark, such as a certification mark, like HDMI. Without the proper paperwork, Customs and Border Protection will assume you have no permission to use the registered trademark and will stop your goods at the port. Today, along with colleagues Robert Becerra, Lenny Feldman and Santigao Cueto, I discussed preventative steps that one can take before importing or exporting goods bearing a registered trademark, steps that can be taken if goods are halted at the port by Customs and Border Patrol and steps that may be taken by an intellectual property rights holder to help enforce his trademark rights in the U.S. A copy of some of the slides I used today can be found here. And here is a photo at lunch showing Robert Becerra on the left and Santiago Cueto on the right.

Some of the preventative steps that can be taken prior to importation of goods bearing a registered trademark include reviewing the product for potential trademarks, including the packaging, any paper inserts, and the product itself. For computer devices, the device should be turned on and the most accessible screens should be scrolled through.

Subsequently, prepare a list of all potential trademarks found on product and perform a search of the trademarks, such as on the U.S. Patent and Trademark Office trademark database (http://tess2.uspto.gov) Trademark Electronic Search System (TESS), and the World Intellectual Property Office trademark database (http://www.wipo.int/madrid/en/romarin/) ROMARIN (International Trademark Information Database)

If no existing trademark registrations are found, then you are in the clear. If a trademark registration is found, then you determine whether the registered mark matches the trademark on your product you are importing and whether the description of goods in the trademark registration matches the product you are importing. If there is a match, the you should contact the owner of the registered mark for permission.

Often, permission to use a certification mark, such as HDMI or Bluetooth, involves obtaining a certificate of compliance froma third party (such as a laboratory), signing a usage agreement, paying a royalty according the amount and type of use and abiding by the usage policy. Here is a link to the HDMI web page that explains its usage policy and provides information on how to obtain permission to use its certification mark.

Like many other areas of life, when dealing with trademark issues relating to the import and export of goods bearing a registered trademark, an ounce of prevention is worth a pound of cure.

The value of the 6,632,248 patent is proportional to the e-commerce industry. According to research firm IDC, the size of total worldwide e-commerce, when global business-to-business and consumer transactions are added together, will equate to $16 trillion in 2013. IDate, another research firm, estimates the global market for digital products and services at $4.4 trillion in 2013. A report by Oxford Economics adds those two together to estimate the total size of the digital economy at $20.4 trillion, equivalent to roughly 13.8% of global sales.

What is the motivation for this lawsuit? Microsoft, the 800 pound gorilla, is obviously protecting its patent and its share of the worldwide e-commerce industry, which it routinely does by keeping a close eye on firms of any size that may pose a threat to their market share. Robocast, which has a single U.S. Patent No. 7,155,451 and other patents pending, may be validated by this lawsuit as it may indicate Robocast is on to something big enough - customization of internet searches - to attract Microsoft's attention. Thus, this lawsuit could affect Robocast's value both negatively, as well as positively,

In Microsoft's favor is the statistic that most patent cases (75.5%, to be exact) settle. When cases do go to final judgment, and almost 15% do, patentees win 989 out of 3,043, or 32.5%, of those cases. Thus, when you look at the general statistics, there is a good chance that Microsoft can either settle this case, or obtain a final judgment in its favor. Of course, these statistics can also be viewed as weighing in Robocast's favor, since it would be to their benefit, as Defendants, to settle this case and continue operating its business.

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.

In today's Ex parte White (Appeal No. 201100327) decision, the claims involved an ultrasonic consolidation process across the surface of a multi-layered object. At issue was the plain meaning of the disputed term "optimizing" in a claim and whether it encompasses making a process as effective or functional as possible. The Board contemplated whether the Examiner's finding that the prior art's process optimizes the lateral positioning of its sonotrode relative to the geometry of the object being worked upon was reasonable, and the Board further contemplated whether it was reasonable that the process of the prior art would have been as effective or functional as possible.

Appellant provided no evidence or any persuasive line of reasoning explaining why the Examiner's finding of reasonableness was in error.

The Board first explained the broadest reasonable interpretation standard:

It is well established that "the PTO must give claims their broadest reasonable construction consistent with the specification ... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.").

The Board further stated that:

The Examiner's determinations that one of ordinary skill would predictably optimize the location or position of an ultrasonic welder (Ans.7), and predictably desire to minimize bulk motion (id. at 9), are supported by a preponderance of the evidence and are unrefuted on this record. An improvement in the art is obvious if "it is likely the product not of innovation but of ordinary skill and common sense."KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,421 (2007). See also, Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) ("hold[ing] that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion").

And thus, since it was reasonable for one of ordinary skill to optimize the location or position of an ultrasonic welder, the Appellant's claims were obvious.

Lessons Learned: When attacking a claim construction in response to an Examiner's 35 U.S.C. §103 obviousness rejection, the savvy patent practitioner should cite evidence. In this case, the practitioner used attorney argument, which is cheap, to combat what he thought was an unreasonable interpretation of the claims. What he should have done was cite some solid evidence (textbooks, treatises, etc.) that supported his argument that one of ordinary skill would NOT have optimized the location or position of an ultrasonic welder. This would have created a higher bar for the Examiner to pass and may have resulted in a reversal at the PTAB.

In today's Ex parte Naoki Soejima (Appeal No. 2011-000339) decision, the claims involved a method of manufacturing a cover for a vehicle airbag. At issue was a claim element reciting a teaching line corresponding to a linear groove, wherein the teaching line is formed in an airbag cover supporting surface of an airbag cover supporting jig.

Appellant argued that the prior art did not teach or suggest the claimed invention, in part because the prior art did not disclose that its teaching line is formed in the surface of a supporting jig.

The Board held the Appellant's argument was "unavailing since they fail to consider the prior art as a whole." The Board cited In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). The Board further stated:

"For obviousness under § 103, all that is required is a reasonable expectation of success." In re O'Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Appellants have not specifically disputed the Examiner's determination that Bauer discloses teaching data by tracing a groove formed in a workpiece (Ans. 7-8; Reply Br. 2); or that Honma discloses "it is known to teach profiling data by tracing the workpiece support (i.e., jig) (column 2, lines 6-55)" as opposed to the workpiece itself (Ans. 4, App. Br. generally; Reply Br. 3). See also Honma, col. 1, ll. 45-57 (describing known use of an auto-teaching method in which a teaching operation is performed using a jig). In this regard, a preponderance of the evidence supports the Examiner's determination that the claimed invention merely applies a known alternative technique of using a supporting jig versus the workpiece for obtaining profiling data to yield predictable results (Ans. 5, 7). See KSR, 550 U.S. at 416 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."). Appellant has not adduced any persuasive technical reasoning or otherwise in response to the Examiner's reasonable determination ..." (Emphasis added)

Lessons Learned: When responding to an Examiner's 35 U.S.C. §103 obviousness rejection, it is not enough to argue that the cited references, individually, do not disclose your claim elements. This is a common tactic among patent practitioners and I, myself, am guilty of this. As explained above, In re Merck stands for the notion that "non-obviousness cannot be established by attacking references individually." Therefore, the best approach would be to both attack the cited references individually and attack the cited references in combination. In the case above, the Appellant would have been smart to include an explanation of why the two references combined would not have yielded the claimed invention. This would have satisfied the PTAB in providing an argument that responded to the Examiner's assertion that the combination of references rendered the claims obvious.

• You have 6 months to file a Notice of Appeal and an Appeal Brief in response to a final refusal to register a trademark. TMEP 1501


• Assuming you file a Notice of Appeal more than two months before the 6 month deadline (see above), you have 60 days to file an Appeal Brief after the Notice of Appeal. TMEP 1501.02(a)


• You have 6 months to file a Request for Reconsideration in response to a final refusal to register a trademark. TMEP 715.03. But keep in mind that the Request for Reconsideration does not affect the 6 month deadline above.
• If you timely file a Request for Reconsideration and a Notice of Appeal in response to a final refusal , then the 6 month deadline is halted. If the Examiner subsequently decides to deny your Request for Reconsideration, the TTAB will give you additional time to file your Appeal Brief. TBMP 1204
  

Lesson Learned: You should always file a Notice of Appeal along with the Request for Reconsideration, since there is no penalty for doing so and it will stop the 6 month Appeal Brief deadline. Subsequently, you will either get a Notice of Allowance from the trademark examining attorney (which will render the appeal moot) or you will receive a new refusal and the TTAB will give you additional time to file an Appeal Brief.

The only reason not to file the Notice of Appeal with the Request for Reconsideration, would be to save the $100 (per class) fee that goes with the Notice of Appeal. But that small benefit is outweighed by the halting of the deadline and the ease of which this process fits into a standard patent/trademark docketing program. Further, if you file a Request for Reconsideration without filing a Notice of Appeal, there is a possibility that you will run into the 6 -month deadline, without having received a response to the Request, thereby forcing you to file the Notice of Appeal without having the benefit of reading the examining attorney's last refusal. Thus, it's better to stop the 6-month deadline so you can receive a response to the Request and then have additional time to prepare and file an Appeal Brief.

If there is no Assignee at the time of filing, then file the following:

• Application Data Sheet (ADS) (PTO Form AIA/14)


• A Declaration for each inventor (PTO Form AIA/01)


• A Power of Attorney signed by each inventor (PTO Form AIA/82B)


• A Power of Attorney Transmittal (PTO Form AIA/82A)

If an Assignment is filed after the initial filing of the application, then file:

• Assignment for each inventor (a good Oblon Assignment)


• A Power of Attorney to Prosecute (PTO Form AIA/80)


• 3.73(c) Statement (PTO Form AIA/96)

If there is an Assignee at the time of filing, then file the following:

• Application Data Sheet (ADS) (PTO Form AIA/14)


• A Declaration for each inventor (PTO Form AIA/01)


• Assignment for each inventor (a good Oblon Assingment)


• A Power of Attorney signed by Assignee (PTO Form AIA/82B)


• A Power of Attorney Transmittal (PTO Form AIA/82A)

Note that the Fee Transmittal Form, Utility Transmittal Form and the Assignment Recordation Form are optional.

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.

The Board started by citing law:

"A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).

Then, the Board responded to the Appellant's arguments:

Appellants argue Gardos "teaches away from the concept of querying an internal database" (App. Br. 21). However, as set forth above and as indicated by the Examiner, Gardos discloses querying an internal database. Gardos cannot "teach away" from a disclosure that Gardos provides. Further, even assuming (without deciding) that Appellants' characterization of Fellman and Gardos is correct, Appellants' have not indicated how either Fellman or Gardos discourages one of ordinary skill in the art from "following the path" set out in either reference or would lead one of ordinary skill in the art in a "divergent" direction (i.e., querying a database). We therefore are not persuaded by Appellants' argument.

So apparently, the Gardos reference disclosed the very act - querying an internal database - from which the Appellant argued that Gardos was teaching away. Further, the Appellant could not adequately point out how Gardos taught away.

Lesson Learned? This decision teaches us two things about effectively using the "teaches away" argument. First, if you are going to argue that a reference teaches away from doing X, then you should make sure the reference itself doesn't mention X. If it does, the "teaches away" argument would not be appropriate in that case. Secondly, if you are going to argue that a reference teaches away from doing X, then you should be able to point to some convincing language in the reference that explicitly states the reference should not or cannot do X. If you cannot find such language in the reference, then again, the "teaches away" argument would not be appropriate in that case.

MPEP 2111.01 states that claim terms must be given their plain meaning, also known as the ordinary and customary meaning given to a term by POSITA. To this end, you are allowed to turn to a dictionary to illustrate a claim term's ordinary and customary meaning. Ferguson Beauregard/Logic Controls v. Mega Systems, 350 F.3d 1327, 1338, 69 USPQ2d 1001, 1009 (Fed. Cir. 2003) (Dictionary definitions were used to determine the ordinary and customary meaning of the words "normal" and "predetermine" to those skilled in the art. In construing claim terms, the general meanings gleaned from reference sources, such as dictionaries, ...).

And when it comes to dictionary meaning, there's nothing easier than using a Wikipedia definition. We've all done it. Often, the Wikipedia definition is the first result that comes up when a term is typed into a search engine. But have you wondered what the Board of Patent Appeals thinks of Wikipedia definitions?

Tuesdays decision of Ex parte Hoon-Jae Ki (Appeal No. 2010-005320) provides a glimpse of how the Board regards Wikipedia definitions. The case involved a claim for an electrical circuit that performed a particular function. The Appellant pointed to a Wikipedia definition to define the claim term "quantization." This is what the Board had to say:

Because Appellant and the Examiner agree on the definition of quantization, we do not address the reliability of the definition from the Wikipedia website. We note, however, that Wikipedia has been found to be an unreliable source of information. See e.g., Techradium, Inc. v. Blackboard Connect Inc., 2009 WL 1152985, at *4, n.5 (E.D. Tex. 2009); Badasa v. Mukasey, 540 F.3d 909, 910 (8th Cir. 2008).

Not exactly a ringing endorsement of Wikipedia definitions, huh? In fact, I get the feeling that this judge (Jennifer L. McKeown) doesn't give a Wikipedia definition a lot of weight. As an aside, I see the Board has cited both an Eastern District of Texas case and an 8th Circuit - a rare occurrence in a Board decision. Are District Court cases or non-Federal Circuit Courts of Appeals cases controlling on the Board of Patent Appeals? No, they are technically not controlling cases. But I guess they do have a place in Board decisions.

What does this mean for patent practitioners? This case tells me that you shouldn't rely on Wikipedia definitions for your claim terms. Yes, it is extremely convenient to turn to Wikipedia and saves a lot of time. But seeing as the Board says this may be an unreliable source of information, Wikipedia doesn't hold much sway. If you really want to give significant weight to your argument about what a claim term means, you should try going to a more authoritative source, like a text book, a scholarly treatise or an academic article.

The case of Ex parte Kreiner (Appeal No. 2010-004976)involved a software invention used to design circuits. The disputed claim included the following limitation: "a software-based development environment for designing circuits or systems." In responding to a 103 obviousness rejection, the Appellant argued that the cited reference was directed to software design tutorials and could not be used to design circuits, as claimed by the inventor. In short, the Appellant provided a standard "the cited reference does not teach the claim language" argument. The Appellant also asserted a standard "the proposed modification would render the cited reference unsatisfactory for its intended purpose" argument.

The Board decided:

"We do not see error with the Examiner's position that Wood discloses a software-based development environment for designing circuits or systems including a plurality of functional units. Wood's interactive tutorial software runs on a computer, includes tutorials on digital analysis for digital logic design, and has a demonstration of user interaction in which the user controls relevant parameters and then observes the effects of parameter changes on, for example, various filters that can be used in digital logic design, which the Examiner equates to circuit design."

I initially did not agree with the Board's decision, because as a former software developer, I know there is a significant difference between a circuit design software package and a tutorial for students. But I continued reading the Board's decision and they convinced me when they construed the claim language at issue:

The Board wrote:

"Appellant's Specification does not expressly define a software based development environment for designing circuits or systems; nor does Appellant's Specification otherwise narrow the definition of a software based development environment for designing circuits or systems to exclude interactive software tutorials on digital analysis for digital logic design."

The Appellant tried to argue that the claimed "software based development environment" meant a lot of things that were not listed in the claims, but were described in the specification. The Board responded:

"We decline to read limitations into a claim from preferred embodiments described in the Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Accordingly, a software based development environment for designing circuits or systems does not necessarily exclude interactive tutorial software on digital analysis for digital logic design."

And that is how it came to pass that the central issue in this case became one of claim construction. This is in keeping with fellow blogger Karen Hazzah's assertion that in the end, it's usually about claim construction.

What does this mean for practitioners? This decision means that if you're going to argue that your claim includes certain limitations, then you better make sure those limitations are embedded in the claims, especially when procuring software patents. Ideally, the limitations you argue should be explicitly spelled out in the claim language. And if not explicitly in the claim language, then the limitations should be explicitly spelled out in the specification in way that is directly tied to claim language. For example, if your claim term is a "signal processing module" and the specification states "the term signal processing module specifically refers to a digital signal processing unit." The Board prefers clear and concise claim language and is reluctant to read implicit limitations into your claim. Therefore, when you identify a winning argument on Appeal, make sure your claim explicitly states the limitations you are arguing.