Thursday, April 30, 2015

PTAB reverses indefiniteness rejection of claim using trademark Java

Takeaway: The Examiner rejected as indefinite the phrase "parsing the at least one Java annotation" on the grounds that Java was a trademark. The Examiner referred to MPEP 2173.05(u) , which directed the Examiner to reject a claim as indefinite when a trademark was used to identify a product. The Applicant appealed and argued that the relevant inquiry was whether a Person of Ordinary Skill In The Art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." According to the Applicant, the term was not indefinite because Java was understood by a POSITA to refer to "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.” The Board agreed with the Applicant and reversed the indefiniteness rejection.  (Ex parte Nikolov, PTAB 2015.)


Ex parte Nikolov
Appeal 20130000274; Appl. No. 12/314,706;  Tech. Center 2100
Decided:  March 25, 2015

The application on appeal was directed to web software that manipulated objects in a Service-Oriented Architecture (SoA) registry. The Specification acknowledged the existence of various application programming interfaces (APIs) that allowed programmatic access to an SoA registry. The same section mentioned one of these APIs: "the Java API for XML registries (JAXR). "

The Examiner rejected independent claim 1 as indefinite because the "trademark / trade name 'Java' [was used] to identify a programming language." The term "Java" appeared in the preamble ("accessible through a Java API for XML registries (JAXR)" and in the body ("parsing the at least one Java annotation").

The Examiner cited the (non-precedential) Board decision Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). According to the Examiner, Simpson meant that "when a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.”

 The Applicant traversed the indefiniteness rejection, and made five separate arguments:
  • Java identifies the product (the programming language) rather than the source of the product
  • the goods associated with the Java mark do not include "programming language"
  • the mark in Ex parte Simpson was indefinite since it did not adequately convey properties of the material, where "here there is no such uncertainty regarding what 'Java' conveys"
  • it's "illogical" to treat Java and C++ differently in a claim simply because the former is trademarked and the latter is not
  • thousands of issued patents include Java in the claims
In a Final Office Action, the Examiner noted that MPEP 2173.05(u) governed the use of trademarks and trade names in a claim: "if a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph.” Responding to the Applicant's mention of C++, the Examiner indicated that an amendment to C or C++ would result in "similar 112 2nd rejections of indefiniteness regarding the use of trademarks or trade names. Responding to another Applicant points, the Examiner considered the "thousands of issued patents with Java in the claims" to be an "interesting statistic," but noted that applications are examined on a case by case basis. The Examiner therefore invited the Applicant to analyze some of these patents and to "present any common facts that trigger an exception to the rules of trademarks in claims," then explain "why this case similarly triggers an exception."

In the same Final Office Action, the Examiner discussed Ex parte Simpson in further detail:
     [Simpson] specifically provides that questions regarding a well-known meaning / satisfactory definition in the literature are questions that resolve around a 35 USC 112 1st rejection for sufficiency of written description for a "name used in trade" ... "We have considered MPEP(v) and note that all address the issue of enablement of a written description under 35 USC, first paragraph."
     Similar to Ex parte Simpson, no enablement rejection has been made. Similar to the Ex parte Simpson court, the Examiner declines to extend the enablement prong of the test of proper use of a trade name to cover indefiniteness of a registered trademark.
On Appeal, the Applicant argued that the use of Java in the claim did not render the claims indefinite per se. The inquiry for indefiniteness was whether a person of ordinary skill in the art, considering the term Java in context, could "discern the metes and bounds of the claimed subject matter." The Applicant concluded that “a person of ordinary skill in the art would understand what is meant by ‘Java annotation’ and . . . ‘Java API for XML registries’”  because Java was "a popular programming language that was originally developed by Sun Microsystems in the early 1990s and released in 1995.”

The Board agreed with the Applicant and reversed the indefiniteness rejection. The Board found this scenario "closely analogous" to a different non-precedential PTAB decision, Ex Parte O’Farrell (PTAB 2014). The Board explained as follows:
The O’Farrell panel held that the recitation of the trademark “Java” was not indefinite because “ 'Java' is a well-known and widely-used term identifying a particular programming language.” Id. Similarly, we find one of ordinary skill in the relevant art would have understood “Java” in the context of the “Java annotation” and “Java API for XML registries” to refer to the programming language known by that name at the time of Appellants’ invention.
My two cents: There's no doubt in my mind that Java is understood by a POSITA. And since that's the ultimate question when resolving indefiniteness, I say the Board got it right. The name of a programming language is fundamentally different than the name of a chemical composition. Using the trademark of a chemical composition is a problem because the nature of the composition could changes, so you don't know if you infringe or not. On the other hand, as long as a newer version of Java includes the annotation feature, a POSITA still understands "Java annotation" and is thus put on notice of infringement. And if the annotation feature is removed in a future version of Java, yet a patentee asserted against an infringer using an annotation-less Java, well, the claim could be found indefinite at that later time. 

Some of the Applicant arguments made during prosecution dug into trademark specifics (product vs source of product, associated goods), and I give some points to the Applicant for getting creative here. On the other hand, the "other patents use this language" argument is weak, and I didn't find the Java vs. C++ consistency argument to be compelling either. I think both the Applicant and the Examiner got derailed with the lengthy discussion of the MPEP and it's use of Ex parte Simpson. Responding to every single point made by the Examiner is not always the best strategy. The Appeal Brief would have been stronger if the Applicant had demonstrated that a POSITA understood Java, briefly distinguished Simpson, and stopped there.

The Board's finding that the meaning of Java was tied to the time of the invention highlights an interesting issue, because programming languages do change over time. With literal claim scope limited to Java at the time of filing, it would seem Doctrine of Equivalents is needed to expand to future versions of the language. But of course all claim terms are interpreted as of the time of invention, which makes the Board's finding just a reminder of something we should already know.

The PTAB decision mentioned in the MPEP and relied on by the Examiner, Ex parte Simpson, doesn't appear to be freely available online. The 1983 decision date is far too old for the PTAB's own decision database, and even too old for the BPAI decisions archive maintained by Franklin Pierce School of Law

Tuesday, March 31, 2015

PTAB affirms indefiniteness when CRM claim recites human action ("subscribe")

Takeaway: In an application for a computerized valuation platform, the Examiner rejected a computer-readable medium claim as indefinite. The Examiner took issue with the phrase "subscribing to the web-based valuation service," asserting that the word "subscribe" implied a human action, which conflicted with the claim's recital of a method performed by computer instructions. The Applicant argued that the action was done through computer instructions, at the request of a user. In support of this argument, the Applicant presented a dictionary definition ("to obtain a subscription") which did not mention performance by a human. The Board found that the definition offered by the Applicant did involve human activity, and thus affirmed the rejection. (Ex parte Allaway, PTAB 2014.)

Ex parte Allaway
Appeal 2012-006215; Appl. No. 11/009,547; Tech. Center 3600
Decided:  December 15, 2014

The application on appeal described a computerized valuation platform for intellectual property assets. During prosecution, the Applicant presented a system claim and a comupter-readable medium (CRM) claim. The CRM claim on appeal read:
     35. A computer-readable medium encoded with computer executable instructions .... , the instructions perform a method comprising:
      publishing at least one portable formula module defining one or more valuation formulas associated with an intellectual property asset at a network server that offers a web-based valuation service;
      subscribing to the web-based valuation service from a client device to access the at least one portable formula module;
      acquiring one or more values associated with variables of the one or more valuation formulas from a network database utilizing an automated acquisition that pulls information from the network database in response to a subscriber request;
      determining one or more valuation results associated with the intellectual property asset by executing the one or more valuation formulas using the acquired values; and
      displaying the determined one or more valuation results of the intellectual property asset valuation on an information presentation interface of the client device.
(Emphasis added.)
The Examiner rejected all claims under § 101 and § 103. The Examiner also rejected CRM claims 35 and 37 as indefinite. The Examiner explained that independent claim 35 was indefinite since "it is unclear how [a CRM] subscribes to a web-based valuation service (a human user activity)." (Emphasis added.) The Examiner used the same rationale for dependent claim 37, which recited "the client device further subscribing to ..."

During prosecution the Applicant argued against the indefiniteness rejection of independent claim 35. The Applicant first noted that the Examiner seemed "seem[ed] to rely on the notion that 'subscribing' is a human activity by its very definition." But according to the Applicant, the term was not given this meaning by the Applicant's disclosure, by the prior art, or by a POSITA (citing MPEP 2173.02). The Applicant also introduced a definition ("to obtain a subscription," from, which did not mention performance by a human. Thus, the Applicant concluded that the indefiniteness rejection was improper.

The Applicant also addressed the indefiniteness rejection of dependent claim 37 by explaining that the " 'subscribing' is done at the behest of a user (presumably human) through a computer-readable medium encoded with computer-executable instructions." The Applicant asserted that the term was consistent with usage by a POSITA, and gave a specific example ("digital video recording device subscribing to a show at the behest of the user or having a server push content to a user's device or computer at the behest of a user.") The Applicant also referenced a portion of the Specification to support this interpretation.
In the next Office Action, the Examiner did not address the dictionary definition proffered by the Applicant. The Examiner did respond to the arguments for dependent claim 37 by commenting on the portion of the Specification mentioned by the Applicant. According to the Examiner, the Specification taught that "the subscribing is not directed to a system or set of computer instructions, but rather to actions of the individual user. This creates confusion as to when direct infringement or the claim limits occurs."

The Board affirmed the indefiniteness rejection. The Board first explained the requirements of a prima facie case of indefiniteness, as explained by the Federal Circuit's In re Packard decision:
When the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b) 
The Board noted that all of the meanings in the Applicant's proffered dictionary definition (from involved human activity, as did the Applicant's own examples offered in the Appeal Brief (TiVo and iTunes). The Board then found that the Examiner had presented a "well-grounded rejection" which the Applicant's arguments had not overcome, and thus ffirmed.

My two cents: The Board got this one wrong. When read in the context of the claim, publish and subscribe are not human actions. A POSITA would recognize these as computer actions that are part a well-known design pattern. (See this Wikipedia entry for "Publish-subscribe pattern".)

The CRM claim at issue recited "publishing" as well as "subscribing." Interestingly, the Examiner did not assert that "publish" was indefinite. Whatever led the Examiner to conclude that "publish" was
understood by a POSITA should also apply to "subscribe."

To make a much stronger case, the Applicant should have offered evidence of the technology-specific meaning of "subscribe." I did a cursory web search and found a Wikipedia entry as well as several technical articles discussing the Publish-Subscribe pattern (e.g., Oracle® Database Application Developer's Guide, Microsoft Patterns and Practices).

Monday, March 30, 2015

PTO takes 7 years to process Petition to Make Special (or Why you should use e-Petitions)

Takeaway: The PTO took seven years to process a Petition to Make Special Based on Age. The Petition Decision indicated that "the delay in rendering a decision is regretted." (Application of Dressler, Appl. No. 11/733,605, available on Public PAIR.) 

This particular petition was filed in 2007, before electronic processing of petitions was available. However, the PTO put such a system in place for Make Special - Age back in early 2008. The PTO expanded the system again in 2011. As of 2015, the "e-Petition" system handles seven different petitions. See the PTO's e-Petition Resource page for details.

With e-Petition, the petition is automatically granted as long as you fill out the form correctly and attach supporting documentation. Applicants should certainly be using e-Petition whenever possible. Doing so will prevent unbelievable delays like the one in the Dressler application.


Application of Dressler, Appl. No. 11/733,605 (available on Public PAIR)

An application was filed in April 2007, along with a Petition to Make Special based on age. The inventor was 67. Prosecution started in 2010. The Applicant appealed and jurisdiction finally passed to the PTAB in August 2012. The Board issued a Decision in March 2015.

The above pattern of prosecution is pretty typical. Several rounds of back and forth with the Examiner. IDSes filed along the way. A long wait at the Board. But what about the Petition to Make Special? Looks like prosecution was humming along, while the petition was, what ... stuck in limbo?

The Petitions Office finally granted the Petition to Make Special in January 2014. That's seven years after the Petition was filed. The Petitions Examiner apologized, noting in the decision that  "the delay in rendering a decision is regretted."

My two cents: So what's the best practice in scenarios like this one?

E-petition wasn't available at the time of filing (2007), so you can't fault the Applicant for the initial petition filing. But an early rudimentary e-petition became available in early 2008 for just this type of petition. Not having received a Decision on the earlier petition, this Applicant could have refiled using e-Petition. Fill out the special PDF fillable form made available by the PTO, upload it via EFS, and get an instantaneous Petition Decision. That would have meant Special status in 2008 when prosecution was still in progress, not in 2014 when it's too late because the application is on appeal.

The PTO revamped and expanded the e-Petition program in 2011. In this expanded program, several types of Petitions are handled by entering information directly into EFS rather than uploading special forms. Make Special - Age is still supported the old way, with the PDF fillable form. Still, all these  e-Petitions are automatically granted or denied. No more waiting on the Petitions Office. If this Applicant had availed himself of this program in 2011, the application would have been granted Special status during prosecution, when it still mattered. More info on the PTO's e-Petition Resource page.

Without an e-Petition, you're left with the unsatisfactory option of periodically checking status with the Petitions Office. Here, no query to the Petitions Office showed up in PAIR, ever. Perhaps phone calls were made – this wouldn't show up in the written record.

As all patent prosecutors are painfully aware, an Applicant has no real power to force the PTO to do anything. But if this Petition was simply "lost" or "stuck" somewhere in the PTO's workflow processing, I suspect a query would do the trick. So as a last resort, docket a periodic reminder every time a petition is filed outside of e-Petitions, and send a status inquiry and/or make a phone call to the Petitions Office (or Examiner, depending on the type of petition).

Wednesday, March 25, 2015

PTAB reverses when Examiner interprets "each pixel of a color image" as referring to pixels in different images

Takeaway: The Applicant appealed the obviousness rejection of claims to digital image processing. The claim language at issue was: "for each of multiple given pixels of a color image, determining ..." The Examiner read this on pixels in different images, and the Applicant argued it was limited to processing pixels in the same image. The Examiner relied on Baldwin Graphic Systems, Inc. v. Siebert, Inc., The Applicant considered the context of the determining step as a whole, including the term "local neighborhood." The Board agreed with the Applicant and reversed the rejection. (Ex parte Staelin, PTAB 2013)

Ex parte Staelin
Appeal 2012000632; Appl. No. 11/280,097; Tech. Center 2600
Decided:  February 28, 2013

The application on appeal was directed to digital image processing. A representative claim on appeal read:
     A method, comprising:
     for each of multiple given pixels of a color image having multiple color channels, determining a respective local difference measure value from a value of the given pixel and a respective value of at least one other pixel in a local neighborhood of the given pixel for each of multiple of the color channels;
     for each of the given pixels, ascertaining a respective color correlation value measuring deviation of the respective local difference measure values determined for the multiple color channels  from a reference: and
     calculating a level of noise in the color image from one or more of the ascertained color correlation values;
     wherein the determining, the ascertaining, and the calculating are performed by a machine.
(Emphasis added.)
The claim limitation at issue on appeal was the "respective local difference" step emphasized above.
This independent claim was rejected as obvious using a combination of two references.

The Examiner asserted that this step corresponded to the SAD (Sum of Absolute Differences) calculation in the primary reference. Applicant argued that the SAD (Sum of Absolute Differences) measure disclosed in the reference did not correspond to the claimed step because it used pixels in different frames. Thus, according to the Applicant, "the SAD measure does not constitute 'a respective value of at least one other pixel in a local neighborhood of the given pixel' " as claimed.

In a later Office Action, the Examiner gave this additional explanation:
However, the Examiner notes that "determining a respective local difference measure value [...] " is taught by Hamosfakidis by virtue of the fact that Hamosfakidis finding difference between pixels in a local neighborhood be it for a single image or of different frames as the Applicant argues.

The Applicant appealed. In the Appeal Brief, the Applicant picked up on the Examiner's explanation and asserted that as properly construed, the "local difference" is determined based on pixels in the same color image. The Applicant made a detailed claim construction argument, using dictionary definitions and focusing on the plain meaning of "local" and of "neighborhood." The Applicant concluded that "the plain meaning of the 'determining' element of claim 1 does not support the Examiner's position that the measurement of differences between  pixels of different frames."

The Examiner responded in the Answer as follows:
The examiner notes that the applicant does not claim that the determining step is done for the "same color image"... [T]he applicant does claim "a color image" but the examiner notes that in for example  in KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) and in Baldwin Graphic Systems, Inc. v. Siebert, Inc., the court confirmed that the use of the indefinite articles "a" or "an", in an open-ended claim containing the transitional phrase "comprising", carries the meaning of "one or more."
The Board found the Examiner's claim construction to be unreasonable:
We agree with Appellants that the Examiner's construction is unreasonable. The language of claim 1 recites ''for each of multiple given pixels of a color image having multiple color images." Therefore, we interpret the claim language of the "determining" step to require that the local distance measure be determined in the same color image. As noted by Appellants, Hamosfakidis teaches measuring differences between different frames,  i.e. different color images. Therefore, Hamosfakidis cannot teach taking a local difference value between a given pixel and a one other pixel  in a local neighborhood  of the given pixel, in a color image.
(Emphasis in original.)
The Board then reversed the obviousness rejection based on the Examiner's unreasonable construction.

My two cents: This decision makes sense to me, but I wish the Board had given a better explanation. The Board's phrasing suggests that it's the presence of "each of" that leads to the conclusion that "image" is limited to a single image – despite the presence of "a." Which makes sense to me, although perhaps my thinking is colored by my background as a programmer.

The Applicant emphasized the terms "local" and "neighborhood" in concluding that the repeated pixel processing ("for each") was performed on the same image. The Board didn't comment on how persuasive this piece of the argument was.

Though I think the Board got this one right, I wouldn't be surprised to see other panels apply the "A means one or more" rule and affirm the rejection. Amending to "a single color image" would have forced the Examiner to change his rejection.

Thursday, March 19, 2015

PTAB reverses § 103 when Examiner's combination adds feature already present in primary reference

Takeaway: An Applicant appealed claims to a zoned HVAC system. The Examiner rejected as obvious using a combination of two references, Kolk and Petite. The Examiner stated that Kolk did not disclose a remote temperature control function, and asserted that Petite disclosed this feature as  "[an] additional function from remote location beside the utility." "Additional function" then served as the rationale for combining Kolk's HVAC system with Petite's remote temperature control. The Board reversed after finding that Kolk did provide remote temperature regulation. The Board reasoned that since Kolk already provided this feature, a POSITA would not view Petite's remote control as a reason for modification. (Ex parte Tessler, PTAB 2014.)


Ex parte Tessler
Appeal 2012-006616; Appl. No. 12/700,643; l 
Decided:  October 2, 2014

The application on appeal was directed to a HVAC system with a wireless thermostat. "[A] remote source communicates with a wireless controller [to control energy usage] and sends signals to the wireless controller via a gateway located near or, in one implementation, forming part of the wireless controller." The originally filed claims generally captured the interaction between the local gateway, the wireless transceiver, and the thermostat controller which allowed the user to changecontrol parameter(s) from a remote location.
The first Office Action included multiple rejections of the independent claims, including a § 103 rejection using Kolk and Petite. Kolk disclosed a temperature regulating system utilizing energy price information, and the Examiner relied on Kolk for most of the claim elements. The Examiner noted that Kolk disclosed a module that used telephone lines or the Internet to communicate with an outside source, but did not disclose gateway communication with a wireless receiver. The Examiner asserted that Petite disclosed this feature "as an alternative suitable communication." Also, while Kolk did not disclose a remote temperature control function, the Examiner asserted that Petite disclosed this as "additional function from remote location beside the utility."

This "alternative suitable communication" and "additional function" then served as the Examiner's specific rationale for combining. The rejection also mentioned the "predictable results" rationale from KSR. Finally, the Examiner asserted that it was "well known in the art that a HVAC with single zone and single thermostat can be extended to a HVAC system with multiple zones and multiple thermostats," and cited several references as evidence of this finding.

The Applicant made various amendments resulting in independent claims of different scope. Independent claims 1 and 19 were amended so that control of the thermostat was "separate from any utility based control" and the wireless transceiver was located in a housing assembly. Independent claim 13 was amended differently, to explicitly recite dual zones, thermostats, and transceivers. Claim 13 then read:
     13. A zoned HVAC system having two or more zones, comprising:
     a local gateway;
     a first thermostat for controlling a first zone of the zoned HVAC system, the first thermostat having:
          a first wireless transceiver for wirelessly communicating  with the local gateway of the building or other structure, wherein the local gateway is located remotely from the HVAC controller;
          a first controller coupled to the first wireless transceiver ... [and] configured to allow a user to change one or more of the first control parameters from a remote location on the communications network via the local gateway and the first wireless transceiver [of the first controller] ;
     a second thermostat for controlling a second zone of the zoned HVAC system, the second thermostat having:
          a second wireless transceiver ...
          a second controller... configured to allow a user to change one or more of the second control parameter from a remote location on the communications network via the local gateway and the second wireless transceiver [of the second controller].
In addressing the § 103 Kolk / Petite rejection, the Applicant argued each independent claim separately but focused mostly on independent claim 1. For claim 13, the Applicant argued that the combination did not disclose "many elements of claim 13 including, for example, a zoned HVAC system having two or more zones comprising [first and second thermostats for controlling respective zones." (Emphasis in original.) Despite this assertion, Applicant did not specifically explain how claim 13 distinguished over the combination made by the Examiner.

In a Final Office Action, the Examiner maintained the § 103 Kolk / Petite rejection. As an additional justification for the conclusion of obviousness, the Examiner also added these additional statements about Petite:
Petite et al. disclose remote monitoring and control device can either for utility company (C-1, L-60 to C-2, L-6) or environmental or safety systems (C-2, L-7-14) in the same field of endeavor for the purpose of providing multiple usages of the apparatus. Petite et al. also disclose the transceivers are electrically interfaced with the thermostat (C-5, L-58-64). 
The Applicant filed an After Final Response and argued:
[C]laim 13 recites, for example, a local gateway, and first and second thermostats each having a respective first or second wireless transceiver for wirelessly communicating with the local gateway. While multiple zone HVAC systems may have been known, Applicants submit that the recited first and second thermostats, each capable of communicating with the same local gateway, particularly in combination with the other elements of claim 13, cannot fairly be considered to be taught, discloses or suggested by Kolk et al. or Petite et al.
(Emphasis in original.)
The Examiner issued an Advisory Action simply restating the KSR predictable results rationale. The Applicant appealed, filing a Pre-Appeal Brief Request and then an Appeal Brief. Both handled the § 103 Kolk and Petite rejection by repeating earlier arguments. 

The Examiner's Answer maintained all rejections and responded to several Applicant arguments. With respect to claim 13, the Examiner referred to the three patents cited earlier as evidence that "multi-zones associated with multi-thermostats is well known in the art." The Examiner then explained how Petite disclosed local gateway communication
Referring to Fig.2, Petite discloses the same one local gateway 220 communicates with sensor  / actuator / transceiver 222 and sensor / actuator/transceiver  224. The sensor / actuator  can be thermostat (C-5, L-63). Therefore, one local gateway 220 is able to communicate with multiple thermostats 222 and 224 and the rejection is valid.
The Applicant filed a Reply Brief and addressed claim 13 as follows:
... Kolk et al. and Petite et al.,even when combined with [evidentiary reference] Liebl et al., cannot be fairly said to teach first and second thermostats as recited in claim 13. The Examiner has not provided any articulated reasoning with rational underpinning [as required by KSR] to support the conclusion of obviousness. The Examiner appears to be asserting that one could modify Kolk et al. to achieve the claimed method, which is an improper ground for obviousness. The Court in KSR further stated: "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." The Examiner has not provided any objective reason to modify Kolk et al. in the manner recited in claim 13, other than relying on the instant specification, which is clear error.
On appeal, the Board reversed the obviousness rejection of Kolk in view of Petite, finding that the Examiner's rationale for combining was deficient.
     We find that the Examiner’s stated reasoning, “so as to have an alternative suitable communication and remote HVAC control as additional function from remote location beside for the utility,” is based on the use of impermissible hindsight reconstruction in view of the Appellants’ disclosure. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996).
     At the outset, we note that for the reasons set forth supra, the Examiner does not establish that the remote user in Petite is not the utility company. [The Examiner instead relies on Petite's remote use by "environmental or safety systems."] Furthermore, we note that Kolk’s system is already remotely controlled. See Kolk, Fig. 1. We thus find the Examiner’s rejection insufficient to explain what in the prior art would have prompted a person having ordinary skill in the art to include Petite’s remote system into Kolk’s remote temperature regulating system. The Examiner has not provided any findings that either Kolk or Petite recognized a problem with the remote technique used in Kolk. As such, absent hindsight, we fail to see why one having ordinary skill in the art would have been led by the teachings of Petite to modify the temperature remote system of Kolk in the manner claimed.
My two cents: I picked this decision because it illustrates a good way to attack an obviousness rejection: advantageous function X provided by reference B is not a proper reason to combine if reference A already has advantageous function X. Here, the Board reasoned that since Kolk already allowed remote temperature regulation, a POSITA would not view Petite's remote control as a reason for modification.

The Applicant didn't really make this specific argument. Yeah, the Applicant argued the Examiner didn't provide an "objective" reason to combine, but that was made in the context of the Examiner's "multi-zone HVACs are well-known" statement. The Applicant essentially argued that "could modify to add the feature" is not a proper § 103 rationale. And that wasn't the rationale used by the Examiner.

I'm actually surprised by the reversal here, since the Examiner did include KSR's "predictable results" as a rationale. (An alternative one? As a supplemental explanation?). The Board usually summarily affirms that rationale with nothing more than a bit of hand-waving as to the factual findings required for this rationale. Here, the Board reversed the § 103 based on the explicit motivation from Petite, and appeared to ignore the "predictable results" rationale.

Finally, I note that the Examiner's factually findings about one of the features at issue -- remote temperature regulation were actually inconsistent. In discussing Kolk, the Examiner explicitly found "thermostat 26 including a communication module communicating with a remotely located outside source 40." Which is arguably a teaching of remote temperature regulation. But then the Examiner proceeded to disavow this teaching, finding that "Kolk does not disclose ... remote temperature control function." The Board appeared to make their own finding about this feature, and didn't comment about the Examiner's inconsistent findings.

Here's an interesting question: since already Kolko disclosed the feature at issue, there really isn't a need to combine with Petite to obtain this feature. The Board took this and reasoned that the Examiner's rationale was therefore improper. But why doesn't it make the rationale irrelevant, as opposed to improper? Sure, you need Petite for the other features missing from Kolk, and you need a modification rationale for each of those features. But not for the remote temperature regulation feature found in Kolk, right?

Thursday, March 12, 2015

Board finds non-analogous art when Examiner mistakes advantage in reference with problem solved by reference

Takeaway: In appealing an obviousness rejection of a semiconductor device, the Applicant argued that one of the references was non-analogous art. The Examiner asserted that the anti-fogging film disclosed in the reference had the same purpose – excellent durability and wear resistance – as the claimed invention, and was therefore analogous. The Board found that the Examiner had erred in characterizing the problems. The Board found that the problem solved by the invention was "protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer". The Board found that reference solved a different problem: fogging of window glass, mirrors, and lens. The Board therefore reversed the § 103 rejection. (Ex parte Seo, PTAB 2013.)

Ex parte Seo
Appeal 2011-005820; Appl. No. 11/378,799; Tech Center 2800
Decided:  October 11, 2013

The application on appeal was directed to a semiconductor device for an LCD display. The independent claim on appeal read:
     1. A display device comprising:
     a substrate;
     a metal layer formed on the substrate and including a top surface and a side surface, wherein the metal layer comprises aluminum or an aluminum alloy;
     an insulating layer covering the metal layer; and
     an aluminum complex oxide layer disposed between the top and side surfaces of the metal layer and the insulating layer, wherein the aluminum complex oxide layer is formed by applying to the metal layer a coating solution that comprises at least one selected from the group consisting of zirconium, tungsten, chromium and molybdenum.
The Examiner rejected the originally filed independent claim 1 as obvious over Doushita in view of Applicant Admitted Prior Art. The Examiner relied on Doushita for the aluminum complex oxide layer element (location and composition), and AAPA for everything else. As a reason for combining, the Examiner asserted that Doushita's coating would provide "the structure of the admitted prior art with 'excellent durability, wear resistance, anti-fogging property and anti-fogging sustainability property'. "

During prosecution, the Applicant made various amendments, but the Examiner maintained the obviousness rejection using Doushita and AAPA. The Applicant also made one argument: that Doushita was non-analogous art. As a preliminary matter, the Applicant noted that Doushita and the invention were in different classifications: Class 428 "Stock material or miscellaneous articles" as compared to Class 438 "Semiconductor device manufacturing: process." Moving on to the test for analogous art, the Applicant first discussed the respective fields of invention. Doushita disclosed an anti-fogging article used for "buildings, vehicles, optical components, [etc.]," but this list did not include a semiconductor device (Applicant's field). The Applicant then discussed the purpose or problem solved: for Doushita, anti-fogging, with durability and wear resistance as secondary characteristics; for the Applicant, corrosion of aluminum, with secondary characteristics of electrical resistance, electrical conductivity, and adhesive strength. Therefore, "Doushita is not reasonably pertinent to the specific problem with which the Applicants were involved."

During prosecution, the Examiner did not directly respond to all of the Applicant's non-analogous art arguments. The Examiner did clarify that Doushita was "not used for the claimed structure but for the substitution of the conventional aluminum oxide layer formed on the line." The Examiner also explained that several of Doushita's applications for the anti-fog coating (i.e., "optical component," "medical equipment," "mirror," "lens") amounted to an application for semiconductor devices.
After several rounds of prosecution (including an RCE), the Applicant appealed. In the Appeal Brief, the Applicant reiterated the previously made non-analogous art argument, concluding with: 
Applicants fail to understand how the problem of anti-fogging of window glass, mirrors, and lens is reasonably pertinent to the problem of protecting a metal layer 212 of a semiconductor from corrosion with an aluminum complex oxide layer 213.
 The Applicant separately argued that the Examiner's rationale for combining was insufficient:
     Doushita simply discloses an aluminum oxide used as an anti-fogging article. Nowhere does Doushita disclose the structural relationship of the aluminum oxide layer relative to any other layer(s). Doushita fails to disclose the aluminum complex oxide layer is disposed between the top and side surfaces of the metal layer and the insulating layer. As such, without more structure specifics, Applicants submit the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer.
     Therefore, there is no suggestion to combine AAPA and Doushita with each other so as to obtain the technical features of Applicants' claimed subject matter.
Notably, the Applicant did not argue that the combination failed to disclose the claimed limitations.

The Examiner's Answer include (for the first time) a specific response to the non-analogous art argument. The Examiner asserted that Doushita's teaching of an aluminum complex oxide layer with "excellent durability and wear resistance" was "the same purpose as the claimed invention" and was therefore "reasonably pertinent and has enough motivation to be considered." Addressing Applicant's argument about classifications, the Examiner had "considered or cross referenced" the "miscellaneous articles" referred to in the title of Class 428. "Further, 'optical component' is a semiconductor device; and  Class 438 'Semiconductor device manufacturing: Process' deals with this device formation."

The Board  reversed the obviousness rejection. The Board first explained that the field of endeavor was determined by looking at "explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Board then characterized the problem solved by the reference (fogging of window glass, mirrors, and lens) and the problem addressed by the claimed invention (protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer).

The Board concluded that the anti-fogging properties of Doushita’s film "would not have logically attracted the attention of an artisan possessing knowledge of Appellants’ Admitted Prior Art." Despite Doushita's mention of "optical components" as a use for the disclosed anti-fogging article, the Board found that the anti-fogging properties "would have little utility on a semiconductor device."

As an independent basis for reversal, the Board agreed with the Applicant's second argument that the Examiner's rationale for combining was insufficient. Although Daushita taught the use of aluminum oxide as a coating and listed various advantageous properties of the coating, Daushita lacked the structural details of the oxide that were recited in claim 1. The Board agreed that "without more structure specifics, ... the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer."
My two cents: An important part of analogous art analysis is framing the problem. Here, the Examiner confused an advantage disclosed in the reference for a problem solved by the reference. Which seems to be related to focus. It's common for a reference to have a laundry list of advantages, Here, that list did include an advantage – wear-resistance – that overlapped with an advantage of the invention – corrosion protection.  But as suggested by the title ("Non-fogging article and process for the production thereof"), the problem solved by the reference was not susceptibility to wear, but fogging. Kudos to the Applicant for honing in on this winning argument.