Florida Patent Lawyer Blog

Do you want to know how to beat an Examiner's 35 U.S.C. §103 obviousness rejection at the the Patent Trial and Appeal Board (PTAB)? Then it helps to read decisions where the PTAB reversed an Examiner's obviousness rejection. Today the PTAB did exactly that in the Ostrovsky decision, which involved catheters.

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.

Continue reading "How to Beat an Obviousness Rejection at the Patent Trial and Appeal Board" »

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" »

Today, the Patent Trial and Appeal Board (PTAB) upheld an Examiner's 35 U.S.C. §103 obviousness rejection in light of the KSR v. Teleflex case. This blog post highlights those fundamental elements of an obviousness rejection that the PTAB seeks when upholding an Examiner's decision.

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.

Continue reading "Attacking References Individually: Obviousness Rejection Upheld by the Patent Trial and Appeal Board" »

A lot has been written about the new Patent Office forms that must be filed with new patent applications after Sept. 16, 2012. You could spend a few hours reading about it on Karen Hazzah's site here, on Oblon's web site here, and on the PharmaPatents web site here. But if you only have a few minutes to figure out what you absolutely need to file with the your patent application after Sept. 16, 2012 in order to comply with the new American Invents Act (AIA) rules and look competent to your client, then read this blog posting.

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.

Continue reading "New USPTO Forms - After Sept. 16, 2012" »

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" »

In an interesting decision yesterday, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner's obviousness rejection of a software invention, partly based on the Appellant's improper use of the common "teaches away" argument. This post highlights hot to use use the "teaches away" argument when responding to an Examiner's 103 obviousness rejection, especially when procuring software patents.

The case of Ex parte Ruiz (Appeal No. 2012-00970) involved a GoDaddy software invention used to register domain names. In responding to a 103 obviousness rejection, the Appellant argued that the cited references - Fellman and Gardos - could not be combined because one of the references taught away from doing so. In short, the Appellant provided a standard "teaches away" argument.

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.

Continue reading "How to use the "teaches away" argument against a 103 obviousness rejection" »

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 a straight forward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner's obviousness rejection of a software invention based on a common prosecution mistake - the Appellant arguing limitations that are not in the claim. This post highlights a basic requirement of responding to Examiner rejections, especially when procuring software patents.

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.

As a patent practitioner, it's not often that anyone, including the Patent Office, says that you have or have not met the evidentiary standard. Tough it is a phrase often read in civil and criminal cases in courts of law, it has not made it into the vernacular at the USPTO. So it may surprise some practitioners to know that there is, actually, an evidentiary standard at the USPTO.

In today's Ex parte Torrens (Appeal No. 2010-007811) decision, the claims involved a computer program for use in editing video. At issue was an Examiner's 35 U.S.C. §103 obviousness rejection, which the Board actually reversed. But what is more interesting is that the Board cited the evidentiary standard that an Examiner's findings of fact must meet.

On that issue, the Board stated:

"the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence ... See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office)."

Preponderance of the evidence, also known as balance of probabilities, is the standard required in most civil cases. This is also the standard of proof used in grand jury indictment proceedings.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. This is also the standard of proof used when determining eligibility of unemployment benefits in civil employment cases.

What does this mean for practitioners? The evidentiary standard of a preponderance of the evidence means that in the course of making arguments before the Patent Office, you should aim to prove your point in a manner that is "more likely than not." You don't need a rock-solid argument and evidence during prosecution, but at a bare minimum, you do need an argument and evidence that makes it more likely than not that your argument is correct. So present as much as evidence as you can, and make sure there is more evidence and more arguments in your favor than not.

Continue reading "Pop Quiz: What is the evidentiary standard at the USPTO?" »

Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's obviousness rejection under 35 U.S.C. § 103, but issued a new grounds of rejection under 35 U.S.C. § 101. This Quick Post highlights the need to continue "prosecuting" your patent application, even after you've gone to Appeal.

Recall that 37 C.F.R. § 41.50(b) states:

"Should the Board have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement constitutes a new ground of rejection of the claim. A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review."

Thus, even if you've never received a particular rejection by a Patent Examiner during prosecution, the Board of Patent Appeals can, sua sponte, issue that rejection on appeal.

In today's Ex parte Nickell (Appeal No. 2010-008158) decision, the claims involved a computer password protection related invention. At issue was an Examiner's 35 U.S.C. §103 obviousness rejection, which the Board actually reversed. But, the Board went beyond that rejection, without any urging request by any party, and evaluated the claims at issue for compliance with 35 U.S.C. §101.

On that issue, the Board decided:

"Claim 1 does not recite any computer or other machine. For example, the claim does not recite that the steps of randomly selecting and providing the requirements must be performed by a computer, that the steps of receiving characters for the password must be performed by a computer, or that the step of determining whether the characters satisfy any requirements must be performed by a computer. As such, claim 1 is broad enough to read on two human beings communicating verbally, with the first person performing all of the recited steps. ... We, therefore, conclude that claim 1 is not tied to a particular machine or apparatus, and claim 1 does not transform a particular article to a different state or thing. That is, claim 1 fails the so-called 'machine-or transformation test.' The claim, instead, wholly embraces the judicially recognized exception of abstract ideas. Specifically, the claim is directed to a set of mental processes and communications that can be performed solely by a human being."

And thus, the BPAI issued a 35 U.S.C. §101 that was first seen by the Applicant on Appeal. See my earlier post about 35 U.S.C. §101 rejections.

What does this mean for practitioners? This decision means that before going to appeal, you should make sure your claims constitute patentable subject matter under 35 U.S.C. §101. It doesn't matter that a Patent Examiner has not issued this type of rejection or that no one ever brought it up during prosecution. The Board can bring up these issues on Appeal, which would then require you to re-open prosecution to clear the rejection - a major prosecution setback. Thus, it's best to take care of these 35 U.S.C. §101 issues earlier than later.

Continue reading "Quick Post: Board of Patent Appeals Can Issue a New Grounds for Rejection on Appeal" »

Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner's rejection based on the "well-known prior art" argument. This Quick Post highlights the obligations that must be met by an Examiner when utilizing this form of rejection.

Recall that M.P.E.P. §2144.03 states:

"Official notice without documentary evidence to support an examiner's conclusion is permissible only in some circumstances. While 'official notice' may be relied on, these circumstances should be rare when an application is under final rejection or action under 37 CFR 1.113. Official notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known."

Thus, "official notice" should only be used in certain, well-defined circumstances. Note the requirement that the "well known prior art" must be capable of instant and unquestionable demonstration as being well-known. As a comparison, see my blog post from last year regarding the obligations that must be met by an Examiner when using an inherency rejection.

In today's Ex parte Chapman (Appeal No. 2009-010238) decision, the claims involved a web browser related invention. With regard to one claim element pertaining to information that is communicated via telephone or email, the Examiner's 35 U.S.C. §103 obviousness rejection included the statement:

"it is well known in the art that a customer contacts a customer service representative via telephone or email."

That's all the Examiner had to say about that claim element. He did not cite to a patent, an article or any other tangible prior art reference. He simply stated it was well known prior art.

The Board did not agree with the Examiner's use of the "well known prior art" rejection. The Board decided:

"we find that simply asserting that 'it is well known in the art that a customer contacts a customer representative by phone or email' is unsupported speculation by the Examiner, which does not amount to a finding supportive of the Examiner's obviousness conclusion."

And thus, the BPAI reversed the Examiner's 103 obviousness rejection. I agree with this decision, especially in light of the In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) decision. On that topic, M.P.E.P. §2144.03 states:

It would not be appropriate for the examiner to take official notice of facts without citing a prior art reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known ... It is never appropriate to rely solely on 'common knowledge' in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based. Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697 ("[T]he Board cannot simply reach conclusions based on its own understanding or experience-or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.").

What does this mean for practitioners? This decision means that when you encounter rejections that include "official notice" or "well known prior art," you must ask yourself: Is the claim element being "officially noticed" or deemed "well known" capable of instant and unquestionable demonstration as being well-known? Note the bar is quite high. In the Ex parte Chapman case, the simple idea of a customer using a phone to deliver information to a customer service rep was deemed not to pass muster. This tells me it's difficult for an Examiner to defend "official notice" and "well known prior art" rejections. My advice is to challenge "official notice" and "well known prior art" rejections and demand that the Examiner provide some evidence to support his argument, as is required under In re Zurko and M.P.E.P. §2144.03. If no such evidence is provided, you may have good grounds for an appeal.

Continue reading "Quick Post: Board of Patent Appeals Chimes In on "Well-Known Prior Art"" »

I'm honored to be speaking at ITEXPO today at the Miami Beach Convention Center. ITEXPO is a telecommunications industry conference billed as "The World's Communications Conference and Expo." The conference is the largest and longest telecommunications industry trade show.

I will be speaking today at various SUITS (Synopsis Under IP/Patents Telecom Sourcing Conference) panel discussions. Some of the topics I'll be discussing are telecom industry patents, defending patent suits and patent trolls.

I look forward to seeing you there!

In an homage to John Welch's well-known TTAB Blog, today we ask "Would you have appealed this 35 U.S.C. § 101 rejection?

In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner's 35 U.S.C. § 101 rejection of a computer program product claim based on the disclosure of a transitory medium in the specification. This blog post highlights a very common rejection for software-related claims.

Recall that "A transitory, propagating signal . . . is not a process, machine, manufacture, or composition of matter [under 35 U.S.C. § 101] and, therefore, does not constitute patentable subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Claims that are so broad that they read on nonstatutory as well as statutory subject matter are unpatentable. Cf. In re Lintner, 458 F.2d 1013, 1015 (CCPA 1972) (citation omitted) ('Claims which are broad enough to read on obvious subject matter are unpatentable even though they also read on nonobvious subject matter.'). See my previous post regarding 35 U.S.C. § 101 rejections.

The case of Ex parte Castaneda (Appeal No. 2009-013594) involved a software application that provided calendaring services. The Examiner rejected a "computer useable medium" claim because it encompassed carrier waves. Thus, the Examiner found that the claim was directed to non-statutory subject matter under 35 U.S.C. § 101 (In re Lintner notwithstanding).

The Appellant's specification clearly disclosed that a computer usable medium may include propagation mediums, such as electronic, magnetic, optical, electromagnetic, or infrared signals. Still, the Appellant decided to appeal and simply argued that the computer usable medium "could" encompass statutory subject matter and that sufficed in overcoming a non-statutory subject matter .

In light of Appellant's disclosure in the specification, the Board decided:

"... we find that the claimed "...computer useable medium embodying computer usable program code..." can be broadly, but reasonably construed to encompass a transitory, propagating signal, which is non-statutory subject matter. Further, since the claim is not limited to a non-transitory, tangible medium within one of the four statutory classes of 35 U.S.C. § 101, we agree with the Examiner that independent claim 13 is directed to nonstatutory subject matter."

I would not have appealed this 35 U.S.C. § 101 rejection. Mainly because it would have been so easy to amend the specification or the claim to eliminate non-statutory subject matter. It would have taken no time to delete the non-statutory language from the specification or insert the phrase "wherein computer usable medium does not include transitory subject matter" in an amendment. This often happens when the patent attorney misses the time frame for amending the claim before the Notice of Appeal or Appeal Brief was due and then is stuck having to assert a bogus argument against the 101 rejection. If the due date for filing an Appeal Brief has arrived, it's too late to enter a substantial amendment.

What does this mean for practitioners? This means that if you define your claim term, such as "computer usable medium," to include transitory media, such as carrier signals, then you can expect a 35 U.S.C. § 101 rejection. It doesn't matter that your claim term "could possibly" include statutory subject matter. If the claim term's ascribed meaning includes non-statutory subject matter, then a 35 U.S.C. § 101 rejection will survive appeal.

Further, watch your docketing due dates and make sure that if you have to amend the specification or claims to avoid a 35 U.S.C. § 101 rejection, it is done as soon as possible. Specifically, the amendment should be completed within a month of the Final Rejection, so it will most likely be entered. Don't wait until the date the Appeal Brief or Notice of Appeal is due. Otherwise, you could find yourself in the same predicament as Ex parte Castaneda, which resulted in a full affirmation of the Examiner's rejections - a total loss.

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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 its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner's 103 obviousness rejection based on the Examiner's faulty inherency logic. I like this reversal because it highlights the Examiner's burden and the consequences of not meeting that burden - i.e., a win for the Applicant.

With regard to inherency, recall M.P.E.P. 2112 states that where an Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make an inherency rejection under both 35 U.S.C. 102 and 103, expressed as a 102 or 103 rejection. See my post last year regarding the use of inherency in 103 obviousness rejections.

The case of Ex parte Smith (Appeal No. 2010-008057) involved an industrial resin. The claims recited a filler that covalently bonds with another element. The Examiner rejected the claims based on 35 U.S.C. 103(a) stating that the cited prior art discloses the same chemical structure and that the claimed covalent bonding aspect was inherent to the chemical structure disclosed in the prior art. Specifically, on the issue of the covalent bonding, the Examiner stated solely the following: "providing a workable amount of covalent bond forming coupling agents would have been obvious ... and coupling agents forms strong covalent bonds." (verbatim). That's all the Examiner had to say on the issue of inherency.

The Applicant responded with attorney argument that the cited prior art is silent on the issue of covalent bonding and that, in fact, the cited prior art could result in other types of bonding, such as ionic bonding, not necessarily covalent bonding.

The Board found:

"an inherent characteristic must be inevitable, and not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)."

The Examiner simply concluded that Applicant's claimed chemical structure would inherently result in a covalent bond and stated nothing more.

"The Examiner has not established with any evidence or provided any explanation on this record why the use of the ... agents ... in the prior art ... would inevitably, or necessarily, result in a direct covalent bond as claimed."

The Board continued:

"the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness."

And thus, the Board reversed the Examiner's rejection.

What does this mean for practitioners? This means that you should closely analyze an Examiner's 103 obviousness rejection based on inherency to determine whether the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. It is not enough for the Examiner to conclude that the cited art could potentially result in the Applicant's claimed device, composition or method. In order to meet his burden, the Examiner must cite evidence that the cited art would inevitably, or necessarily, result in the Applicant's claimed device, composition or method. If the Examiner does not meet this burden, then you may have grounds for reversal.

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