Florida Patent Lawyer Blog

In one of its first decisions today, the Patent Trial and Appeal Board (PTAB) upheld an Examiner's 35 U.S.C. 103 obviousness rejection, citing, as it often does, the KSR v. Teleflex case. This blog post outlines the broadest reasonable interpretation standard and how it relates to 35 U.S.C. 103 obviousness rejections.

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.

Continue reading "The Board Chimes in on Broadest Reasonable Interpretation and Obviousness Arguments" »

It's an issue that often comes up. As the patent prosecutor, you think a claim term means one thing and the Patent Examiner thinks it means something else. When it comes to the meaning of a claim term, it is a common patent prosecution tactic to turn to the dictionary meaning of a claim term.

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.

Continue reading "What does the Board of Patent Appeals think of Wikipedia definitions?" »

In one of the more interesting decisions on this Friday, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner's rejection based on the Appellant forgetting to argue that the Examiner erred. This Quick Post highlights the basics of responding to Examiner rejections.

Recall that "the Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The allocation of burdens requires that the USPTO produce the factual basis for its rejection of an application under 35 U.S.C. § 102. In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)). See my post last year regarding the factual determinations in 102 rejections.

The case of Ex parte Gutierrez (Appeal No. 2009-009811) involved a viscous industrial fluid used as lubricating oil. In responding to a 102 rejection, the Appellants referred the Board to their previous arguments wherein Appellants argued that the prior art does not anticipate the claimed lubricating oil, and that the prior art does not describe the composition with sufficient detail to determine if it falls within the scope of Appellants' claims. Appellants, however, made no statement about the Examiner's factual determinations in his rejection.

The Board decided:

"Appellants do not argue that the Examiner's findings of fact ... are in error. Nor do Appellants argue that the Examiner's conclusions about the parameters that would have been considered obvious were made in error... Thus, Appellants do not argue that the Examiner erred in concluding the claimed lubricating oil and related methods would have been obvious. Accordingly, we affirm the Examiner's decision to reject the claims ..."

What does this mean for practitioners? This means that you should explicitly contest any adverse factual findings of an Examiner, or else those findings will be taken as true by the Board. You should explicitly state that the Examiner erred in making one or more factual findings and then provide evidence of why those factual findings are wrong. If you argue that the prior art doesn't anticipate a claim or that the claim is not obvious, but forget to assert the Examiner erred in his factual findings, then the Examiner's factual findings may be taken as true and you could lose your appeal.

Continue reading "Quick Post: Board Finds Appellant Must Argue That Examiner Erred" »

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

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

The Board began by first contruing the claim term:

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

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

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

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

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

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

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

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

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

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

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

In an interesting decision today at the Board of Patent Appeals and Interferences (BPAI), the Board found in favor of the Applicant with regard to a rarely used rejection based on res judicata.

The case of Ex parte Aggarwal (Appeal No. 2010-011553) involved error detection software for hypertext. There was an earlier appeal where the Appellant made a first patentability argument with regard to claims 1-5 and the Board affirmed the Examiner's rejection of claims 1-5. The result of the earlier appeal was that the Board remanded back to the Examiner with regard to other claims.

On remand, the Appellant did not amend claims 1-5 but made different patentability arguments for those claims. Since claims 1-5 did not change since the earlier appeal, the Examiner rejected claims 1-5 based on res judicata, stating that the Board already rejected claims 1-5 in a previous proceeding. This led to the second appeal, and this decision.

The Board framed the issue like so:

the dispute before us hinges on whether Appellants' failure to raise a particular patentability issue before the Board in the earlier appeal based on evidence that was entered and considered by the Examiner during prosecution before that appeal can be presented in a later appeal to effectively create a new record and thus present new patentability questions involving the same claims and rejections to avoid res judicata.

The answer to that question is yes. If an Appellant fails to raise a certain issue of patentability in an earlier appeal, he can still raise it in a later appeal of the same claims, even if the supporting evidence was present before the earlier appeal.

The BPAI noted the following case law:

"Res judicata" is "[a]n issue that has been definitively settled by judicial decision. . . . The three essential elements are (1) an earlier decision on the issue, (2) a final judgment on the merits, and (3) the involvement of the same parties, or parties in privity with the original parties." BLACK'S LAW DICTIONARY 1425 (9th ed. 2009) (citing RESTATEMENT (SECOND) OF JUDGMENTS §§ 17, 24 (1982)). When Appellants submit new affidavits not considered previously to make a new record, thus presenting different questions of patentability, the doctrine of res judicata does not apply "even if the claims are viewed as identical to those in the prior case." In re Russell, 439 F.2d 1228, 1230 (CCPA 1971).

The Board felt that the new issue of patentability was not previously heard, considered or decided upon, which is a required element of res judicata. The Board stated "Although the evidence on which this issue turns was previously entered and considered by the Examiner before the earlier appeal, it was simply not germane to the issues raised in the earlier appeal and, not surprisingly, not discussed by Appellants, the Examiner, nor the Board in connection with that appeal." As a result, the Board found that the res judicata doctrine did not apply to claims 1-5 and the rejection of claims 1-5 based on the res judicata doctrine was reversed.

What does this mean for practitioners? This means that you can get a do-over at the Board. Specifically, if you lose at the BPAI for a first set of claims, and you can somehow make it back to the Board, you can re-argue the rejection of the first set of claims, as long as you bring up new issues of patentability. Of course, this isn't the easiest route to get claims allowed. The wait time to get to the Board is at least 2 years for each round. But it's nice to know that you have the flexibility to bring up new issues in a later appeal. You are not locked out by the Board's previous unfavorable decision.

Post Script: the Board ended up rejecting claims 1-5 on obviousness grounds, leaving nothing for the Appellant.

Continue reading "Board of Patent Appeals Rules on Res Judicata Rejection" »

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

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

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

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

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

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

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

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

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

Much has been written about the Pfizer Viagra patent. Recently, a District Court held the patent to be valid. All the fighting about this patent is directly related to Pfizer's $1 billion a year in U.S. Viagra sales. The patent itself has been valuated somewhere in the neighborhood of $10 billion.

But have you taken a look at the famous Pfizer Viagra patent? I did, and following are some interesting observations. Click here to see Pfizer's Viagra patent.

First, I am surprised to see how short the detailed description is. At less than six columns, it's one of the shorter patents out there. This goes to show, being brief is a virtue - even when you're dealing with a $10 billion patent. Second, notice how many pages of cited references there are. At 6 pages, that's a lot of references, and no doubt led to a stronger and more valuable patent. Lastly, note there are only two inventors. Though the testing and development of this drug probably cost somewhere in the billions of dollars and involved hundreds or thousands of people, it was only two guys that invented this drug and only two guys that will go down in history.

As inventors and developers of technology, we can only hope to have successful inventions. But it is certain that in order to realize a return on R&D investment, individuals and companies must pursue patents for their inventions. Thus, my recommendation to inventors and technology companies is to seriously consider pursuing patents for their inventions with the U.S. Patent and Trademark Office, especially in cases involving inventions that may generate significant revenue.

Continue reading "The Famous Pfizer Viagra Patent" »

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

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

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

The Board rejected this argumment, stating:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Argument #1

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

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

Argument #2

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

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

Argument #3

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

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

The Lesson

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

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

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.

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.

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

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

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

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

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

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

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

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

In short, the answer is "by a preponderance of the evidence." The Board of Patent Appeals and Interferences (BPAI) decision of Ex parte Hochsmann did a good job of highlighting this axiom. As a Miami Patent Lawyer, I found the Ex parte Hochsmann decision interesting because it reminded me of the burden I must carry when I practice before the BPAI.

The case of Ex parte Hochsmann involved a chemical process including salt crystals. The principal issue in this appeal was whether Appellant had established that the Examiner erred in finding that the prior art reference would have disclosed a salt crystal. But how far must the Appellant go in showing that the Examiner erred?

The Board found: "We are of the opinion Appellant's arguments do not establish that the evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed procedure." The Board went on: " Accordingly, based on our consideration of the totality of the record before us, we have weighed the evidence of obviousness found in the combined teachings of [the prior art] with Appellant's countervailing evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention ... would have been obvious as a matter of law under 35 U.S.C. § 103(a)."

That pretty much says it: your burden of proof before the Board of Patent Appeals is a "preponderance of the evidence." What does that mean?

Preponderance of the evidence, which is one of the lower burdens to meet, is also known as balance of probabilities is the standard required in most civil cases. The standard is met if the proposition is more likely to be true than not true. Effectively, the standard is satisfied if there is greater than 50 percent chance that the proposition is true. It can be described simply as "more probable than not."

What does this mean to practitioners? This means that in order to reverse an Examiner's decision at the BPAI, you must present slightly more evidence than the Examiner. Technically, that should suffice. Of course, in practice, you probably want to show a bit more, to make it clear you have met your burden