Thursday, April 21, 2016

Obviousness Reversal Roundup for March 2016

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Countering obviousness rejections can be both the most quotidian and the most challenging task of the patent practitioner or pro se applicant. For those who enjoy feeling hopeless, the decisions of the PTAB are fraught with examples of losing arguments. But not here. Please enjoy this review of six of last month's PTAB decisions reversing obviousness rejections.

Ex parte Sewell
Appeal 2013-008463; Appl. No. 11/847,474; Tech. Center 2600
Decided: March 7, 2016

In this case, the Board found no prima facie case of obviousness where the examiner did not rationally articulate the how or why of the allegedly obvious combination. The appealed final rejection alleged as a "suggestion/motivation" for combining the teachings of cited references, to arrive at the claimed printing system having a GUI, a desire "to eliminate the need for a personal computer as disclosed by [one reference] in the Background [section]." The panel "concur[red] with Appellants’ assertions . . . that the Examiner has not rationally articulated how/why one of ordinary skill in the art at the time of Appellants’ invention would combine the [references'] collective teachings and/or suggestions . . . as claimed . . . ." It is tough to determine what "assertions" the Board was referring to, since a review of the briefs shows that the appellants' arguments were directed more toward showing that the proposed modification would have rendered the prior art device unsatisfactory for its intended purpose. Although this can be a winning argument (as discussed below with respect to Ex parte Hager), it doesn't seem to be what won here. The panel appears to have reinterpreted the appeal arguments and reversed the rejections on a different basis than what had been argued. Although the Board rarely takes it upon itself to fashion un-argued grounds for reversal, it is the Board's prerogative. The application has subsequently been allowed.

This decision serves as a reminder that it is always incumbent upon the examiner to adequately establish not just that different references show different elements of the claims, but also that a person skilled in the art would have had reason to combine or modify the references. A lack of adequate explanation as to what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination should lead the Board to infer that the examiner selected the references with the assistance of hindsight. See In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).

Ex parte Kuijper 
Appeal 2014-000569; Appl. No. 12/515,963; Tech. Center 3700
Decided: March 18, 2016
The Board reversed here because a "broad general statement" of motivation is impermissible use of a per se rule. The final rejection alleged that "it would have been obvious to one of ordinary skill in the art, at the time of the invention, to have provided [one reference] with the corrugation shape, as taught by [another reference], because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results." The rejection further cited to In re Dailey, 357 F.2d 669 (C.C.P.A. 1966) for the proposition that a "change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results." The appeal brief complained that the alleged motivation offered "no rational reason as to why a person of ordinary skill in the art would substitute the single-cutter structure . . . for one of the cutters in the multiple cutter structure of [the base reference]. Not only is this illogical, but also the results of such a substitution, if even possible, would not be predictable to one of ordinary skill in the art." The Board agreed that the examiner's "overly broad, general statement" was insufficient, and quoted In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995): "This method of analysis is founded on legal error because it substitutes supposed per se rules for the particularized inquiry required by section 103. It necessarily produces erroneous results. . . . [E]liminat[ing] the need for fact-specific analysis of claims and prior art may be administratively convenient for PTO examiners and the Board . . . But reliance on per se rules of obviousness is legally incorrect and must cease."

Here, like in Sewell, the Board's reasoning did not exactly mirror the arguments presented by the appellants, inasmuch as the appellants did not cite Ochiai and did not identify the rejection as being grounded only in a "per se rule". Even so, this decision shows that general statements that references would have been combinable is insufficient grounds for an obviousness rejection, where such allegations do not show how or why a person skilled in the art would have been led to select and combine the particular prior art features from different references to arrive at the appealed claims. Such is the burden of the examiner in order to make a prima facie case of obviousness. See In re Vaidyanathan, 381 F. App'x 985, 993 (Fed. Cir. 2010) (nonprecedential).

Ex parte Elder
Appeal 2014-004233; Appl. No. 12/818,592; Tech. Center 1700
Decided: March 23, 2016

Like in Sewell and Kuijper, the Board reversed here because the examiner did not identify a sufficient reason for a person of ordinary skill to have modified the base reference in the proposed manner. Independent claim 7 was finally rejected as obvious over two references. The action set out detailed factual findings and concluded that "[o]ne of ordinary skill in the art . . . would have been motivated to provide the [first reference device] with a [second reference's filter having a particular flow passage configuration] since [the second reference] states . . . that such filters 'have a very high mechanical stability and a relatively high insensitivity to impact, as can happen during transport and assembly,' 'remain operative for a considerably longer period, before cleaning is required,' and also have 'very good rejection properties for the washing off of the sediment in rewashing operations.'" The applicant argued that the cited "reasons" for motivation were with reference not to the particular claimed configuration, "but rather the overall filter". As such, "[t]here is no reason disclosed why the [first reference's] openings would benefit from having" the particular claimed flow passage configuration. The reply brief noted that "it is still unclear why one would bring the opposed first/second openings and the third/fourth openings together" [as in the proposed modification]. The Board agreed, concluding that "the modification proposed in the rejection is the result of hindsight and would not have been obvious at the time of the invention."

The examiner fought this case about as hard as I've seen, going so far as to provide marked-up drawings comparing the filter structures in the cited references. Valid factual findings necessarily underlie every obviousness rejection under Graham, but they are insufficient to make the case where the references do not make clear why the combination would have been motivated and no other supporting reasoning is supplied.

Ex parte Metz 
Appeal 2014-002549; Appl. No. 12/598,492; Tech. Center 3600
Decided: March 24, 2016

The appealed rejection cited to In re Japikse, 181 F.2d 1019 (C.C.P.A. 1950), for the proposition that "rearranging parts of an invention involves only routine skill in the art", in support of a rejection based on a single reference. Independent claims required a "disk having an outer lateral area defining a ring shaped circumferential surface with a knurled section". The reference was alleged to show the claimed disk, but with knurls elsewhere than on the circumferential surface. ("Knurl" is a great word to Google image search.) The rejection alleged that it would have been obvious to provide the knurls on the circumferential surface to "provid[e] a better frictional surface to prevent unwanted sliding". The applicants countered that moving the knurls wouldn't have worked to solve the problem (a problem that didn't actually exist to begin with), would have been contrary to the functioning of the reference device, and besides, "'the mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellants specification, to make the necessary changes in the reference device.' Ex parte Chicago Rawhide Mfg. Co., 455 F. 2d 563 (Bd. Pat. App. & Inter. 1984)," MPEP § 2144.04 (VI)(C). The Board agreed that "it is not apparent why it would be desirable to . . . to increase friction of the cam member" by moving the knurls in the reference device since the reference already addressed unwanted torque rotation, the problem allegedly solved by the proposed knurl relocation. The Board thus found that the modification reasoning lacked rational underpinnings and appeared to be the result of hindsight analysis.

The record shows that multiple telephonic interviews and a pre-appeal conference were expended without persuading the examiners of the fault in the rejection. Applicant tenacity prevailed, likely in part because there were multiple good arguments, factual as well as legal, deployed to counter the rejection. Examiners frequently make use of boilerplate citation to legal precedent to support spurious rejection rationales (MPEP § 2144.04 provides a big list, where both Dailey and Japikse appear), but these citations can be rebutted by showing how the cited cases are not applicable to the facts and circumstances of the case at hand.

Ex parte Tatarka
Appeal 2014-007414; Appl. No. 13/066,118; Tech. Center 1700
Decided: March 28, 2016

This decision in a chemical composition case in part stands for the proposition that a prior art reference that includes a "laundry list" of candidate features does not make any particular one of those features "obvious to try" (within the meaning of KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)) where the cited reference does not present a finite number of identified, predictable solutions. On appeal, the rejection hinged on whether or not the single reference in the obviousness rejection taught or suggested the claimed cycloolefin containing modifiers with a crystalline content of 0-10%. The appellants complained that the examiner's "insistence that it is obvious to pluck norbomene from the disclosure of [the reference] which includes 8 Columns of cyloolefin structures involving thousands of potential monomers is conclusory". The panel concurred, noting that the rejection failed to "provide any specific rationales for why a person of skill in the art would choose a norbornene/ethylene elastomer as the flexible polymer among the many possibilities" offered in the reference. "Because of [the reference's] lack of guidance towards selecting norbornene/ethylene over other possibilities in [the reference's] broad disclosure," the rejections were reversed.

Examiners love to rely on "laundry list" references, and not just in the chemical arts, because they seem to throw in everything and the kitchen sink. But just because a reference provides in a single document all the building blocks of a rejected invention does not mean that it would have been obvious, in view of the reference, to put together the building blocks in the same way as in the claims. An examiner is not necessarily free to pick and choose from among myriad possibilities that a reference might offer in making a rejection; a valid motivation for doing so must still be articulated. The Board may have been more sympathetic to the applicants in this case because the record showed the lengths to which they had gone to demonstrate the differences in the optical properties of their invention versus the prior art, even providing samples in an interview, which they photographed for the record.

Ex parte Hager 
Appeal 2014-000978; Appl. No. 13/014,796; Tech. Center 1700
Decided: March 29, 2016

The decision in this case reiterates the "teaching away" lesson of In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), that a proposed modification would not have been obvious if it would render the device or method of the reference unsatisfactory for its intended purpose. Representative claim 1 related to a silicon semiconductor wafer production method. However, one of the three references relied upon in the rejection required conducting its respective chamber etch and coating steps without a wafer, "so that all parts of the chamber, including the susceptor, are etched and then coated". The appellants recognized that the primary reference required the absence of the wafer, and cited W.L. Gore v. Garlock, 721 F.2d 1540 (Fed. Cir. 1983), and DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) for the respective "teaching away" holdings of those cases. The examiner responded with the following remarks: "The mere fact that [the primary reference] teaches that the cleaning and pre-coating are performed without a wafer present on the susceptor does not preclude the implementation of an improvement to the process of [the primary reference] by, for example, utilizing a dummy wafer as per the teachings of [the secondary reference]. If appellant's 'teaching away' logic were followed, then any modification to the teachings of any primary reference would not be valid as the reference implicitly 'teaches away' from making such modifications. This logic does not hold unless the reference clearly and specifically states that the proposed change would render the disclosed process untenable or unworkable." The Board helpfully recognized that "teaching away" doctrine doesn't require a reference to expressly shoot down not-yet-invented modifications, and noted that the examiner ignored that the primary reference required the absence of a wafer in making rejections that modified the primary reference by adding a dummy wafer. Thus, the Board reversed the rejections.

This is another instance of the Board showing largesse, in conjuring up Gordon to support the appellants' position, even though the appellants did not themselves cite to that case. "Teaching away" is not always a winning argument, but it's always good to keep Gordon and the other "teaching away" cases in mind when considering the propriety of obviousness rejections that rely on a combination of references.

Thursday, April 14, 2016

Board reverses 101 rejection of a method claim reciting particular machine components

Takeaway:  A PTAB panel found that the Examiner failed to establish a prima facie case of unpatentability in reversing an Examiner’s § 101 rejection relating to hardware/software technology for establishing credit on an automatic vending machine.  In part, the panel found that the Examiner did not establish that the claims were directed to an abstract idea.  Even if the Examiner had established that the claims were directed to an abstract idea, the claims were tied to particular machine (allowing this panel to reiterate that the machine-or-transformation test remains a useful investigative tool for § 101 analysis).  (Ex parte Krampe, No. 2013-010784, PTAB Mar. 31, 2016)


Ex parte Krampe
Appeal 2013-010784; Appl. No. 12/653,741; Technology Center 3600
Decided: March 31, 2016
In a recent decision, a PTAB panel reversed an Examiner’s rejection that the claims at issue were directed to an abstract idea.  The PTAB began its decision by framing the claims at issue as relating “to establishing credit on an automatic vending machine . . . using a cellular telephone, or other personal wireless communication device, using an applet placed on the personal communication device that can communicate with a vending universal wireless device placed on the vending device.”  Claim 1, which was illustrative of the subject matter on appeal, recited:
A method of establishing credit on a vending device by a consumer comprising: 
coupling a vending universal wireless interface to a vending device controller; 
activating an applet on a personal wireless communication device to establish a wireless link with said vending device controller; 
communicating between said personal wireless communication device and said vending device to acquire the vending device’s identification number and vending information; 
establishing a wireless link between said personal wireless communication device and a remote computer server; 
transmitting information acquired from said vending device from said personal wireless communication device to said remote computer server along with a request for credit approval for use on said vending device; 
determining credit availability for said through said remote computer server;
generating a transaction record from the transmitted request; 
transmitting a response from said remote computer server to said personal communication device authorizing a predetermined credit for use on said vending device when such credit is authorized; 
transmitting said credit approval from said personal wireless communication device to said vending device; and 
activating said vending device to dispense a product therefrom; 
thereby eliminating the need for currency or the surrendering one’s credit card for swiping by a third party, or of a dedicated connection between a vending device and a remote computer server to activate a vending device is eliminated.
The panel began its analysis by determining whether the claims at issue were directed to a patent-ineligible abstract idea (Mayo step 1).  In quick order, the panel found that the Examiner failed to establish that claim 1 was directed to an abstract idea.  Instead, the Examiner merely argued that claim 1 “do[es] not involve a general concept.”  As such, the panel concluded that the Examiner failed to establish a prima facie case of unpatentability.
However, the panel did analyze the claims at issue under Mayo step 2 (whether the claimed subject matter included an "inventive concept."  Under this analysis, the panel was not persuaded that the Examiner considered “all of the claim elements both individually and in combination to assess whether the claim amounts to significantly more than an abstract idea.”  Instead, the Examiner found “that the step of determining credit availability … is ‘a significant solution step,’ but is not recited as being ‘performed by an automated programmed computer, thus failing to make method claim 1 statutory.'”  The Examiner then concluded that the remaining elements of claim 1 “have no explicit or inherent recitation of a machine nor qualifying transformation.”
The panel agreed with the Appellant that the claims at issue were tied to a particular machine.  The panel reiterated that the machine-or-transformation test, while not dispositive of a section 101 inquiry, remains a useful investigative tool.
In supporting its decision, the panel identified that the claims at issue were directed to establishing credit on a vending device (e.g., a machine). Claim 1 recited ten steps and many of these steps/elements referenced “particular components of a vending device, information associated with the vending device, and/or communications established and exchanged between the vending device and other devices.”
The panel then found that the Examiner did not address the Appellant’s arguments.  Instead, the Examiner merely repeated the Examiner’s earlier assertions that “the finding that the “claimed significant solution step [(i.e., the step of determining credit availability)] is not automated, thus making insignificant use of the machine.”
Based upon the above reasoning, the Board reversed the § 101 rejection.

My two cents:  This is a case where the Board could have ended its analysis at Mayo step 1 since the Board found the Examiner's argument that claim 1 "do[es] not involve a general concept" suggested the claim was not directed to an abstract idea.  However, the Board went to provide potential additional guidance in overcoming § 101 rejections insofar as the Board finding that a majority of the method steps included recitation of a particular machine components (in this case particular machine components of a vending machine) and the use of the machine-or-transformation test remaining a useful investigative tool. 

Monday, April 4, 2016

Board finds that using input device from stowed location renders unsatisfatory for intended purpose

Takeaway: The Applicant appealed an obviousness rejection of a claim to a personal portable storage device (PPSD) with simultaneous wireless access to host devices. The limitation at issue was "said PPSD remaining in a stowed location during said access." The primary reference was an input device "incorporating additional devices or functionality." The Examiner added a reference teaching a cardiac/lung function monitor that could be carried in the hand, on a belt, or in a pocket. The Applicant argued that stowing the computer input device would render it inoperable for its intended purpose. The Examiner explained that a trackball device (one of the devices mentioned in the primary reference) could be used in a pocket since motion of the device itself wasn't required to manipulate the cursor. The Board agreed with the Applicant and reversed the rejection under § 103. (Ex parte Chen, No. 2013-000463, PTAB Mar. 4, 2015)


Ex parte Chen
Appeal 2013-000463; Appl. No. 11/170,655; Tech. Center 2100
Decided:  March 4, 2015

The application on appeal described "a portable device which may wirelessly interface with other personal electronic devices in order to provide increased data storage capacity." A representative claim on appeal read:
     1. A personal portable storage device (PPSD) comprising:
     a storage medium;
     a wireless component coupled to said storage medium, said wireless component having multiple simultaneous connection capabilities;
     a transfer management electronics coupled to said storage medium for allowing a plurality of host devices to access said PPSD simultaneously through said wireless component, without requiring physical connections between said PPSD and said plurality of host devices,
     said PPSD remaining in a stowed location during said access;
     a self-contained energy source coupled to said transfer management electronics; and
     a housing of a size and shape well-suited to being carried on a person, said housing at least partially enclosing said storage medium, said wireless component, said transfer management electronics, and said self-contained energy source,
     such that said PPSD is easily transported.
(Emphasis added.)
The Examiner rejected this claim as obvious over Ram, Gurevich, and Sackner. The primary reference, Ram, was directed to a computer peripheral (e.g., a mouse) with additional I/O devices contained within the peripheral's enclosure. Gurevich taught the simultaneous access without physical connections feature, and Sackner was used for the "stowed" feature. Sackner was directed to a cardiac/lung function monitor, "possibly hand-held, [and] it may also be carried on an individual normal clothing, for example, on a belt, or may be placed in a pocket provided on garment." The Examiner's rationale for combining Sackner with Ram and Gurevich was "it is easy to situate a PPSD [personal portablestorage device] on a belt."

The Applicant argued that the combination was improper because it rendered the prior art being modified unsatisfactory for its intended purpose (citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984)). More specifically, "keeping the computer apparatus of Ram stowed" would mean it wasn't available for use, "which is directly away from Applicants understanding of the intended purpose of Ram (a mouse apparatus)."

Maintaining the rejection, the Examiner noted that in addition to a mouse, Ram also taught a keyboard containing memory and a wireless adapter. "Since keyboards do not typically need to be in a constant state of motion to be used properly," the combination of Ram's keyboard as modified by Gurevich and Sackner could be stowed "without affecting the ability to use the device." In response, the Applicant asserted that operating a stowed keyboard would be difficult, then attacked the Examiner's statements as "extremely speculative and not supported by a preponderance of evidence." The Applicant requested that the Examiner provide an affidavit in support of his findings. 

The Examiner kept the rejection, and in response to the Applicant's argument about the difficulty of using a stowed keyboard, the Examiner noted that the Applicant's own FIG. 6 depicted the storage device stowed in a pocket. The Applicant repeated the same render-inoperable argument and noted that no Examiner affidavit had been provided to support the Examiner's findings.

This time the Examiner maintained the obviousness rejection but switched focus once again. Sackner disclosed a heart monitor that was "stowable on one's belt or pocket," plus Ram disclosed a trackpoint or trackball "as part of the keyboard or mouse." Since a trackpoint/ball moves the cursor without moving the device around, it "can easily be manipulated to move the cursor while stowed, and keys can still be manipulated on a device that is in one's pocket or on a belt."

In the last response filed before appeal, the Applicant characterized these Examiner statements as "purely speculative and not supported by a preponderance of evidence." The Applicant also questioned the Examiner's new focus on Sackner. The Examiner's rejection modified Ram with Sackner (not vice versa), so whether or not Sackner was stowable was "not the question being raised or the argument being addressed." The Applicant restated the § 103 argument as follows:
     [I]t is the utilization of Ram from a stowed location that is properly being addressed in Applicants arguments. With respect to Ram, the Office Action has not provided a prima facie case that overcomes Applicants arguments that keeping the computer apparatus (a mouse apparatus or a keyboard) of Ram stowed would result in Ram not being available for PROPER or INTENDED purpose of Ram.
     [W]hether the computer apparatus of Ram can be manipulated while in one's pocket or on a belt is irrelevant and erroneous. It is merely a straw­ man argument to that does not provide any factual evidence to support the prima facie case for obviousness. That is, Applicants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.
     In contrast, Applicants submit that a proper prima facie rejection of obviousness must be supported by evidence rather than speculation and opinion. Specifically, Applicants note that attempting to utilize the computer apparatus of Ram from a stowed location would adversely affect the ability to use the device.
The Examiner issued one more Office Action before the Applicant appealed. The Examiner's position wasn't speculative, since a trackball or keyboard was easily manipulated "as long as it is reachable by the user." And although the Applicant characterized manipulation of Ram's device while stowed as "irrelevant and erroneous," "it is well-known that a keyboard or trackball can be manipulated on a device that is stowed in a fixed position."

At that point, the Applicant appealed. The Applicant did a quick traversal of the obviousness rejection by arguing that the Examiner's modification of Ram by Sackner rendered Ram inoperable for its intended use. The remainder of the Appeal Brief focused on the Examiner's failure to make a prima facie case supported by evidence, as opposed to subjective opinion.

To this end, the Applicant attacked several assertions made by the Examiner in prosecution, including a trackball or keyboard is easily manipulated when in reach, and "it is well-known  that  a keyboard or a trackball can be manipulated  on a device that is stowed in a fixed position." According to the Applicant, such statements were speculative and not supported by any actual evidence.

The Applicant then cited to several administrative law cases mentioned in the MPEP.
The "assessment of basic knowledge and common sense that is not based on any evidence in the record lacks substantial evidence support" (MPEP 2144.03(a); In re Zurko, 258 F.3d  1379, 1385, (Fed. Cir. 2001)). Moreover, "the examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge" (MPEP 2144.03(B); see In re Soli, 317 F.2d 941, 946, (CCPA  1963); see also In re Chevenard, 139 F.2d 711, 713 (CCPA  1943)).
The Applicant concluded the Appeal Brief with:
Appellants submit that the above well-known statement lacks any factual evidence to support the prima facie case for obviousness. In contrast, Appellants submit that the prima facie case improperly hinges on a purely subjective opinion that a trackball and/or a keyboard could be manipulated on a device that is stowed.
In the appeal decision, the Board first summarized the positions of the Applicant ("the mouse would not be available for its intended use as an input device if stowed in a pocket or a belt as in Sackner") and the Examiner ("being stowed would not inhibit the mouse from communicating with other devices"). The Board then reversed, explained its reasoning as follows:
Although the mouse includes a storage device, the Examiner has not shown that the storage device is capable of being accessed by host devices outside of the mouse for storing or retrieving data. Therefore, on this record, the sole intended use of the mouse does not depart from its conventional purpose as an input device. Thus, we agree with Appellants modifying the mouse with Sackner’s teaching to be stowed would not comport with its intended use as an input device, and would thereby render the mouse unsatisfactory for its intended purpose.3
3 In the event of further prosecution, the Examiner should consider modifying Sackner’s microprocessor (3) with the teachings of Gurevich and Ram to reject claim 1.
My two cents: First off .... why so long to appeal? The Applicant filed a total of 9 responses and 3 RCEs before appeal. And 4 of these 9 responses argued the very issue that went to appeal. Sure, the Applicant got more information each time (generally a good thing) but it also allowed the Examiner to switch position. Should have appealed much earlier. Definitely a bad idea to RCE without amending or entering evidence.

But kudos to the Applicant for recognizing a good rationale-to-combine argument, and sticking to it. It's rare to appeal when the only issue is rationale-to-combine, as opposed to combination-doesn't-teach.

The Applicant's focus on Examiner evidence seemed to be unnecessary in this particular case. The way I read it, the Board reversed because it was persuaded by the Applicant's combination-unsatisfactory-for-intended-purpose argument, and not because the Examiner didn't provide evidence about manipulation of a trackball stowed in a pocket. The Board simply looked at the conventional purpose of an input device and found that stowing it away would frustrate this purpose. The Board then concluded that, since this was the case, a POSITA would not modify Ram's input device to be stowed away like Sackner's monitor.

In other words, the Applicant and Examiner focused on whether an input device could be used while stowed, but the Board focused on whether a POSITA would do this in the first place. And rightly so, as rationale/motivation to combine isn't about what a POSITA could do, but about what a POSITA has a reason to do. The Board didn't see a reason to stow the input device away.

This reasoning sidesteps the issue of whether or not the Examiner needed evidence. But say the Board did reach that issue ... isn't this question one that can be understood by any one with common knowledge and common sense? Neither side went into a lot of explanation as to why a trackball was or was not usable in this manner. The Examiner gave a couple of sentences explaining why usable, while the the Applicant made a naked assertion "not usable." Neither side offered evidence, but maybe evidence is overkill for this particular technology and use case.

Or is the Applicant right, and as a matter of administrative law, the Examiner needs evidence to support his position? Usually, the references themselves are used as evidence. I doubt Ram had anything to say about using the device while stowed, and the Examainer didn't cite to any such teachings in Ram.

Does it make a difference whether the combination uses Ram's keyboard, trackball, or mouse? Note that the Board's opinion said "render the mouse unsatisfactory for its intended use."

Was the Examiner's thinking colored by the fact that it's now common (in 2016) to use a smart phone without looking at the keyboard?  Not such a stretch to envision texting on a smart phone that's stowed in a pants pocket.

Did you catch footnote 3 at the end of the Board's opinion? The Board suggested that using Sackner (the heart monitor) as the primary reference would be a better obviousness rejection. Looks like Sackner's heart monitor meets the storage, housing, stowed, and energy source limitations. Ram provides the transfer electronics and wireless, and Gurevich provides the simultaneous connections. I haven't thought about it enough to know what the two rationales for modification would be, but the combination certainly doesn't have the same weakness that the Examiner's combination did, since the base device is stowable.

Friday, April 1, 2016

Busy Board bounces appeal of statutory rejections when provisional rejection matures during appeal

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Takeaway: At the time applicants filed their notice of appeal, fewer than all the pending claims had nonprovisional obviousness rejections associated with them, but all the pending claims were provisionally rejected under non-statutory obviousness-type double patenting over applications that had not yet matured into patents.  Applicants appealed only the nonprovisional § 103 rejections  A provisional rejection was made nonprovisional in the Examiner's Answer, an application underlying the rejection having matured into a patent after the filing of the notice of appeal.  Citing the need to timely consider other appeals on it's docket, the Board disposed of the appeal by affirming the non-appealed, nonstatutory rejections, without considering the § 103 rejections that had been appealed.  (Ex parte Palmer, No. 2014-002277 (P.T.A.B. Mar. 10, 2016).)


Ex parte Palmer
Appeal 2014-002277; Appl. No. 11/429,850; Tech. Center 1700
Decided: March 10, 2016

In a final Office action issued December 18, 2012, the application was provisionally rejected on grounds of nonstatutory obviousness-type double patenting, based on then-unissued co-pending applications. Some of the pending claims were also rejected on statutory obviousness grounds under § 103. In an after-final response filed February 18, 2013, the applicants averred that they would "address the need to file one or more terminal disclaimers to overcome the aforementioned obviousness-type double patenting rejections" "[u]pon indication of allowable subject matter". The applicants appealed on March 12, 2013, and their appeal brief, filed May 8, 2013, addressed only the § 103 rejections.

Unfortunately for the applicants, one of the co-pending applications that was basis for a provisional nonstatutory obviousness-type double-patenting rejection matured to patent on April 13, 2013, while the applicants were busy writing their appeal brief.  The applicants failed or declined to address the provisional rejection-made nonprovisional in the October 11, 2013 Examiner's Answer-in either the appeal brief or a reply brief. Deeming the applicants' February 2013 vow to "address" the then-provisional rejections upon maturation insufficient as a promise to file a terminal disclaimer, the Board opined that "the time to present arguments on the merits-and therefore resolve the question of whether a terminal disclaimer is needed-was in the Appeal Brief in this appeal". The Board therefore affirmed the application's rejection without reaching the § 103 rejections that had been the only basis of the appeal.

The Board made its decision with the understanding that, post-appeal, it will not suffice for the applicants to file a terminal disclaimer to be granted allowance.  Prosecution closed with the appealed § 103 rejections left unreviewed, and these standing rejections will impede the application's advance toward issuance. The decision also cost the applicants their appeals fees, which they will have to pay a second time if they want to have the § 103 rejections reviewed. The Board noted that the applicants could still keep their patent rights alive with an RCE or continuation, but that may be cold comfort. The applicants will suffer years of delay on their path to issuance, and the decision potentially robs the applicants of valuable PTA days (depending on whether a terminal disclaimer is ultimately filed).

The panel in this case was not shy about disclosing the reason for its declining to consider the appealed issues: the Board is too busy to be bothered.[1] "In managing the ex parte appeal docket, we are not only concerned with this appeal, but other appeals on the Board's ex parte appeal docket.  Affirmance of the double patenting rejection disposes of the appeal.  Under the circumstances, and in deference to a need to timely consider other appeals, we exercise discretion to not reach the remaining rejections." Apparently acknowledging that the decision could be perceived as mean-spirited, the opinion deflects blame by stating that any hardship suffered as a result was "self- imposed" by the applicants.

My take:

This decision might serve as a lesson to applicants and their counsel not to ignore provisional rejections, and to read carefully the Examiner's Answer on appeal to check for changed conditions affecting rejections. It also raises questions as to what obligations applicants have to address rejections that are, at least at first, only provisional in nature, and at what points in the proceedings such obligations arise.

The reasons to side against the applicants are many. First, they attempted to "hold in abeyance" the provisional rejections, rather than addressing them immediately. See 37 C.F.R. § 1.111(b). Then, the applicants missed or ignored the issuance of the double-patenting reference application in the month leading up to the filing of their appeal brief, and missed or ignored the examiner's notification of the rejection having become nonprovisional in the answer brief. Finally, the applicants failed to file a reply brief addressing the nonprovisional rejections and showing good cause for doing so (per 37 C.F.R. § 41.41).

On the other hand, applicants generally have neither the obligation nor the incentive to file a terminal disclaimer-and pay the accompanying fee-to overcome rejections that are only provisional in nature. If a co-pending reference application ultimately fails to issue, or issues only with claims upon which an obviousness-type double patenting rejection would not be well founded, any terminal disclaimer fee paid will have been wasted, and the value of the patent portfolio may be needlessly diminished by the term-limiting and enforcement-coupling effects of the disclaimer. How could it be just for the USPTO to require applicants to submit traversal arguments or a signed terminal disclaimer, each expensive in its own way, before the ripening of the issue? [2]
From this perspective, Applicants' counsel can scarcely be faulted for (in effect) asking the PTO to hold the provisional rejections in abeyance, especially when, at the time it was made in February 2013, the request was in accordance with PTO policy, policy that did not change until October 2015, when MPEP § 804(I)(B)(1) was amended to instruct that a filing of either a terminal disclaimer or a showing of patentable distinction over the reference application's claims "should not be held in abeyance" once a provisional double patenting rejection has been issued (for the dubious reason that one or the other filing "is necessary for further consideration of the rejection of the claims").[3]

If an applicant has no obligation to counter a provisional rejection until the applicant receives notice that it has been made nonprovisional, then the applicants in this case were not obligated to traverse or otherwise overcome the nonstatutory rejections here until the Examiner's Answer-by which point it was likely too late to do anything about it.[4] From this perspective, it is not clear that the applicants in this case did anything blameworthy. The decision twice intimates that merely committing to filing a terminal disclaimer would have been as good as actually filing a terminal disclaimer to obviate the double patenting rejection and have the § 103 rejections reviewed. But, despite this decision, is not clear why mere committal would have been effective to obviate the rejections, or how it could have prevented the Board from taking the same action it did in this case.

The decision raises the issue of whether the Board has the prerogative to affirm on uncontested grounds, or even if it does not, whether it ever should, even in the interest of expedient disposal. The decision cites to 37 C.F.R. § 41.37(c)(l)(iv), but the rule does not require an appellant to show examiner error in uncontested grounds of rejection. As a matter both of equity and properly incentivized appellate administration, an appellant who pays to appeal certain grounds should generally have the benefit of review of those grounds unless the review would be unusually burdensome. Otherwise, the Board could become incentivized to dispose of appeals cheaply as a means of generating appeals fees revenue.[5]

Finally, the decision raises the issue as to whether, as a practical matter, the strategy taken by the Board is more likely to reduce the examination and appeal backlogs or increase them. Having gotten no answer on the issues they brought to the Board, the dissatisfied applicants are likely only to get right back in line for another appeal decision. What was a three-year appeal pendency in the Board's statistics effectively became a six-year pendency.

Was the Board's punt in this case efficient docket management, or obnoxious parsimony? Pipe up in the comments.

[1]. The Board is presently dealing with an appeal backlog of about 20,000 cases.
[2]. For some creative, but losing, arguments against obviousness-type double patenting tried by applicants who couldn't or wouldn't file a terminal disclaimer, see Karen's earlier blog post on the subject.
[3]. The policy might be challenged as arbitrary or capricious, since overcoming provisional rejections can hardly be said to be "necessary" for consideration of any outstanding nonprovisional rejections, since Rule 111(b)'s reference to "rejections" is probably best interpreted to mean nonprovisional rejections, and since the courts have held that provisional rejections exist to benefit, rather than harm, the applicant with early notice, In re Wetterau, 356 F.2d 556, 558 n.2 (C.C.P.A. 1966), and, at least in some circumstances, cannot be made final, In re Mott, 539 F.2d 1291, 1295-96 (C.C.P.A. 1976) ("Once the provisional rejection has been made, there is nothing the examiner and the applicant must do until the other application issues. We see no undue burden here.").
[4]. Would notice of a nonprovisional rejection in an Examiner's Answer be a "new ground of rejection" under 37 C.F.R. § 41.39(a)(2) that would entitle an applicant to reopen prosecution under 37 C.F.R. 41.39(b) (see MPEP § 1207.03)? The case law teaches that the ultimate criterion of whether a rejection is considered "new" is whether the applicant has had a fair opportunity to react to the thrust of the rejection. In re Kronig, 539 F.2d 1300, 1302 (C.C.P.A. 1976). The particular situation where, by dint of a patent grant, a provisional rejection matures into a nonprovisional rejection is not listed among the "factual situations that do not constitute a new ground of rejection" in MPEP § 1207.03(a), but this likely means only that the courts have not considered the question.  This issue may have been waived in the present case because of the applicants' failure to petition the examiner's decision not to designate the nonprovisionality of the rejection as a "new ground" in the Examiner's Answer (see 37 C.F.R. § 41.40(a)).
[5]. Although appeals fees collected in 2015 were almost $77 million, they were still 16% below what was anticipated in the budget.See page 159 of the USPTO Fiscal Year 2017 Congressional Justification.)

Wednesday, March 23, 2016

Scanning System For Generating a Prosthesis Model Not Invalid Under § 101

Takeaway:  In denying a motion to dismiss, a district court in the SD of TX found the claimed subject matter was not directed to an abstract idea.  While the court did find that the claimed subject matter employed "software to process images and perform 3D modeling," the court also found that the claimed subject matter did involve substantial tangible components that included generating models to create a breast prosthetic as well as the use of "alignment markers placed on the breast and captured in the image to aid in computer modeling" such that the claimed subject matter was not an abstract idea. ContourMed Inc. v. American Breast Care LP, 4-15-cv-02769 (TXSD March 17, 2016, Order) (Miller, J.)

Details:  ContourMed Inc. (the plaintiff) owned U.S. Patent No. 7,058,439 (the "'439 Patent") and sued American Breast Care L.P. (the defendant) for patent infringement in the Southern District of Texas. The defendant moved to dismiss the lawsuit asserting that the '439 Patent claimed ineligible subject matter directed to the abstract idea of generic computer for modeling data collected from a generic scanner. The plaintiff countered that the scanning system was not generic, and that even if the court considered the patent as directed to an abstract idea, "the use of novel, non-abstract components transforms the invention into patent-eligible subject matter." The district recently denied this motion to dismiss by finding that the claimed subject matter was directed to patent-eligible subject matter.

Claim 1 of the '439 Patent recites:
     1.  A method of forming a model of a breast prosthesis for a patient who has had one breast at least partially removed, comprising:
     providing a scanning system comprising one or more imaging devices and one or more alignment markers, wherein at least one of the alignment markers comprises a tangible object, wherein the tangible object is noticeable in a scanned image and may be used to manipulate a scanned image as a reference point;
     arranging at least one of the alignment markers in the middle of the body of the patient and within the field of view of at least one of the imaging devices;
     determining a first set of data elements using the scanning system is based on a shape of the patient's intact breast;
     determining a first computer model of the intact breast based on the first set of data elements;
     using at least one of the alignment markers in the middle of the body of the patient as a fixed reference point relative to the patient to determine alignment of the first computer model of the intact breast;
     applying a reflection transformation to the first computer model of the intact breast to form a second computer model, the second computer model comprising a second set of data points that represents a mirror image of the first computer model;
     determining a third set of data elements using the scanning system based on a surgical site at which the breast was at least partially removed;
     determining a third computer model based on the third set of data elements; and
     combining the third computer model and the second computer model to form a breast prosthesis model,
     wherein the second computer model defines an anterior portion of the breast prosthesis model that mirrors the intact breast and the third computer model defines a posterior portion of the breast prosthesis model that is custom fit to the surgical site.
The court began its analysis of whether the claims at issue were directed to an abstract idea (Mayo Step 1). In its analysis, the court found that the claims at issue differed from Alice and Bilski because the claims were not directed to a "building block of the modern economy."

The court then distinguished the other cases cited by the defendant as lacking "physical components, merely beginning with data collection and ending with data storage." The court reasoned that "[w]hile the process claimed in the '439 Patent does employ software to process images and perform 3D modeling, the underlying concept involves substantial tangible components." More specifically, the claims at issue were directed to imaging a breast for the "ultimate end of creating a breast prosthetic, using alignment markers placed on the breast and captured in the image to aid in computer modeling."

The court did note that caution should be used against the approach that focuses only on physical or tangible results since this type of analysis "inappropriately focuses on the result of the claimed invention rather than the invention itself." However, the court still found that the claims were not directed to an abstract idea because "the concept of the invention involves substantially more than mere data collection and storage and does not threaten to pre-empt the use of scanners and computer modeling in other fields."

Based upon this analysis, the court did not move to Mayo Step 2 to determine whether the claims included an "inventive concept."

In some ways, this decision feels like the outcome was a result of the claims producing "a useful, concrete and tangible result."

Thursday, March 17, 2016

Would Diehr and Morse Be Invalid Under the §101 Mayo Test?

As most patent practitioners are aware, the Supreme Court set forth a two-part test for determining patent eligibility under 35 U.S.C. § 101 in Alice Corp. v. CLS Bank International under the framework set forth in Mayo v. Prometheus Laboratories (e.g., the Mayo test). The Mayo test requires that (1) determine whether the claims at issue are directed to a patent-ineligible concept; and if so, (2) determine whether the claims at issue include an “inventive concept.”  In other words, a determination is being made of whether the claims at issue merely recite “well-understood, routine, and conventional activity” or whether an element or combination of elements within the patent recite an “inventive concept” that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.

If one were to apply the Mayo test to patents previously held to be patentable (e.g., the Diehr patent, the Morse patent, etc.) by the Supreme Court, those patents may very well be found to be invalid as being directed to patent ineligible subject matter.

Recent trends during Patent Office examination, patents in post-grant proceeds, and decisions by federal courts have resulted in a determination of claims that are directed to patent ineligible subject matter.  Typically, a patent examiner, a Patent Trial and Appeal Board (PTAB) panel, or a federal court will find the claim is directed to an abstract idea under step one of the Mayo test and then distill or dissect the ordered combination into individual claim elements to find each of the individual claim elements are directed to “well-understood, routine, and conventional activity” at step two of the Mayo test.

Additionally, patent examiners, PTAB panels, and courts (see Ariosa v. Sequenom) will look to the applicant’s or patent owner’s specification to support a finding under step one or step two of Mayo.  For instance, the Federal Circuit found that the method steps set forth in Sequenom’s patent did not support patentability because the specification stated “[t]he preparation of serum or plasma from the maternal blood sample is carried out by standard techniques.” In other words, the Federal Circuit found that “the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful.”

One particularly famous Supreme Court case upholding that the technology claimed in the patent application was directed to patent eligible subject matter is Diamond v. Diehr.  The Diehr patent was directed to “accurate and automatic control of the molding time for rubber compounds and the automatic opening of rubber-molding presses when the cure is calculated to be complete.”  Claim 1 of the Diehr patent recited:

A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

providing said computer with a data base for said press including at least,
natural logarithm conversion data (1n),
the activation energy constant (C) unique to each batch of said compound being molded, and
a constant (x) dependent upon the geometry of the particular mold of the press,

initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

constantly providing the computer with the temperature (Z),

repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is 1n v=CZ+x

where v is the total required cure time,

repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

opening the press automatically when a said comparison indicates completion of curing.

If one were to apply step one of the Mayo test, one could argue the abstract idea is controlling molding times for rubber compounds.  In fact, the Supreme Court stated in its decision to find that the claims were directed to patent eligible subject matter “We view respondents’ claims as nothing more than a process for molding rubber products…”  

Transitioning to step two of the Mayo test, one could find that each claim element was “well-understood, routine, and conventional activity.”  One of the claim elements recites a well-known mathematical formula.  The Diehr specification states the “invention uses computers of well-known type with data storage banks containing the time-temperature cure data for the compound or compounds being used” and that “the relatively simple system of FIG. 1 is easily expanded within the capability of many present-day computers.”  As such, the specification of Diehr illustrates that the technology being utilized was already present. 

Finally, treating each claim element as being well-understood and conventional, one could then find that the claims, as a whole, do not amount to anything other the sum of the well-understood and conventional claim elements.

Most patent practitioners remember the Supreme Court case O’Reilly v. Morse as holding that an abstract idea, apart from its implementation, is not directed to patent eligible subject matter when the Supreme Court invalidated claim 8 of the Morse patent.  However, the Supreme Court also held that claim 1 of the Morse patent to be directed to patent-eligible subject matter.  More specifically, the Supreme Court stated “[t]he first seven inventions, set forth in the specifications of his claims, are not subject to exception.”
Claim 1 of the Morse patent recites:

Making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner, for the purpose of telegraphic communication at any distances.

In essence, Morse disclosed the use of repeaters in between a transmitter and receiver to restore the signal transmitted by the transmitted to substantially its initial level.  Morse admitted in his specification that “it had been essayed to use the currents of electricity or galvanism for telegraphic purposes” prior to his invention.  Additionally, the individual components utilized by Morse had been previously available.

Applying the Mayo test to claim 1 of the Morse patent may also result in the claimed subject matter being found to be directed to patent ineligible subject matter.  For example, applying step one of the Mayo test, one could find the abstract idea to be utilizing magnetism to provide “communication at any distances.”

Applying step two of the Mayo test, one could find that each of the individual components were “well-understood, routine, and conventional activities.”  Again, treating each claim element as being well-understood and conventional, one could then find that the claims as an ordered combination do not amount to anything other the sum of the well-understood and conventional claim elements.

Thus, application of the Mayo test to patents previously held to be directed to patent eligible subject matter by the Supreme Court would likely result in a contradicting decision that those patents are instead directed to patent ineligible subject matter.  However, a solution may reside in this statement from then Justice Rehnquist in Diamond v. Diehr: “when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of 101.”  In other words, the claims need to be considered as a whole during application of step two of the Mayo test.  It is too simple to distill each claim into its individual claim elements to state that each element is “well-understood, routine, and conventional activity” and then consider that the ordered combination does not amount to anything other than the sum of those well-understood, routine, and conventional” claim elements.