Florida Patent Lawyer Blog

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.

Continue reading "Would you have appealed this 101 Rejection?" »

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.

Continue reading "Board of Patent Appeals Reverses Examiner's Inherency Finding" »

In an interesting decision today, the Board of Patent Appeals and Interferences (BPAI) decided that dosages are, for the most part, obvious. The case of Ex parte Gillis (Appeal 2010-009318) involved method claims for administering a medical therapy. Fundamental to the claims was a recitation of the dosage necessary to appropriately treat the patient. Assuming the medicine itself is prior art, does specific dosage data give your invention enough novelty?

The BPAI provided the following recitation of case law:

It is well settled that "the discovery of an optimum value of a variable in a known process is usually obvious." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007). The rationale for determining the optimal parameters for prior art result effective variables "flows from the 'normal desire of scientists or artisans to improve upon what is already generally known.'" Id. (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)).

In general, however, "an applicant may overcome a prima facie case of obviousness by establishing 'that the [claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.'" In re Peterson, 315 F.3d at 1330 (quoting In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997).

That spells it out pretty clearly - discovery of a dosage value for a known medicine is obvious, unless you can show unexpected results. Consequently, the BPAI provided the following decision in the Ex parte Gillis case:

[G]iven the broad range of useful dosages described in Wappler, we are not persuaded that the Examiner has failed to provide an adequate evidentiary basis for concluding that an ordinary artisan practicing Wagemans' continuous delivery method would have optimized the sufentanil dosage. As Appellants point us to no evidence that the dosage recited in claim 28 provides an unexpected result, and is therefore critical, see Peterson, 315 F.3d at 1330, we are not persuaded that the claimed dosage would have been unobvious over the cited references, despite the fact that the two cited references do not appear to describe the same route of drug administration.

Therefore, the Examiner's rejection was affirmed. As an aside, note that even though the prior art disclosed a different drug delivery method, this was not enough to distinguish the claims from the prior art.

What does this mean for patent practitioners? It means that when prosecuting drug therapy patent applications, you should rely on more than dosage data to distinguish the invention over the prior art, unless you can show unexpected results. Without the proper evidence supporting unexpected results, dosage data does not, by itself, provide enough novelty to an otherwise known medicine or therapy.

Continue reading "Board of Patent Appeals Decides on Obviousness of Dosages" »

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.