Thursday, August 21, 2014

PTAB interpretations of "integral" in various mechanical applications

Today's post will take a look at how the Board has interpreted the claim term "integral", and variations thereof, in a few different mechanical applications. In these decisions, the Board has read "integral" to be broader than unitary construction – thus covering parts that are welded together – but not so broad as to cover parts that are held together by friction fitting or that are merely interconnected.

In Ex parte Langan, the Board interpreted "integral extruded exterior metal panel" to cover multiple panels that were welded together.  The Board did not refer to a dictionary, instead citing to Advanced Cardiovascular Sys. and other earlier cases to find that "the term 'integral' covers more than a unitary, or one-piece construction." The Board then applied this construction to the prior art:
While Tsuruda discloses multiple extruded panels, these panels are welded together to completely fuse the panels together, thereby providing an integral structure that is sufficient ton cover either the sidewall or top of a railway passenger vehicle body described in Tsuruda (FF 1-4).
Ex parte Norcom interpreted "integrally attached" to require more than components held together by frictional force. The claim under review recited a container having a structure with sidewall and bottom wall portions, and "an upper portion integrally attached to the structure." The reference disclosed an outer transport container and a removable container within the outer container. The Examiner asserted that the removable container was “integrally attached” to the outer container because “Becker’s components are held integrally together by frictional forces” and “when the flaps on Becker’s container (12) are closed, the components are held integrally together.”

The Board found the Examiner's position to be unreasonable."One of ordinary skill in the art would recognize 'integrally attached' to mean more than simply a smaller container that is removable and separate (does not form a whole) from a larger, outer container." The Examiner "essentially consider[ed] 'integrally attached' to be any two items that are merely in contact, without being organically joined or linked to form a whole." The Board also noted that the Examiner's interpretation of "integral" was inconsistent with the Applicant's Specification and with a dictionary definition.

The Examiner in Ex parte Szweda took a similar position on "integrally formed" and was also reversed. The limitation at issue in was "fastener being integrally formed with a thumb ring formed along a proximal end of the handle". The Examiner cited to a dictionary definition of "integrally" to mean “of, pertaining to, or belonging as a part of the whole; constituent or component. The Examiner then reasoned that since all components were part of the handle, each component was therefore integral with each other. The Board found that this interpretation was unreasonable because it read "integrally formed" out of the claims:  
As noted by Appellants, “by using the open ended terms ‘comprising’ and ‘including’ in the pending claims, it is already understood that both the thumb ring and the fastener form part of the claimed handle” Moreover, Appellants’ interpretation is consistent with how “integrally” is used both in the Specification and by Gingrich.
Reviewing a claim to an extension arm for mounting electronic devices, the Board in Ex parte Oddsen interpreted "integrally formed" and found that the phrase required more than merely interconnected components. Adopting the definition provided by the Examiner (“formed as a unit with another part”), the Board found that " 'integral’ is sufficiently broad to embrace constructions united by such means as fastening and welding.” (Citing Advanced Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1072 (Fed.Cir. 1989.) However, the Examiner had gone too far, interpreting "integrally formed" to cover all interconnected components.
An overly broad interpretation, as the Examiner suggests, would eviscerate the meaning of the phrase integrally formed because it would mean that all components of APA’s channel 14 as modified by the boss of Matsubara or Schwartztrauber are integrally formed merely because they are interconnected to each other in some manner. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases in claims superfluous).

Friday, July 25, 2014

PTAB assumes any verb phrase using "to" signals intended use

Takeaway:
Sometimes Examiners ignore claim language – give it no patentable weight – by characterizing a phrase as "intended use." However, not every verb phrase using "to" signals intended use. In many types of claims – computer-implemented ones in particular – the word "to" denotes the result of an action.

Consider this simple example: searching a document to find a match on a search term. The match is the result of the search. The result is not inherent – not every search produces a match – but neither is the result an intended use of the search.

In today's post, I'll review some cases in which the PTAB ignored verb phrases introduced by the word "to" because the Board concluded that the phrase was intended use.

Analysis:
The Board considered the phrase "to analyze costs" in Ex parte Liebich (PTAB 2013). The claim language at issue was "performing, using a processor, a value chain analysis by evaluating the attributes ... to analyze costs associated with the costed entities." Because no analyzing step was positively recited, the Board found intended use and gave the phrase no patentable weight.
Furthermore, we note that claim 1 merely requires that the “chain analysis” is performed “to analyze cost” by a processor. That is, claim 1 does not positively recite any step of analyzing cost. Instead, we find such “to analyze cost” language merely represents a statement of intended use or purpose (intended result) of the evaluated data which does not limit the claim. Particularly, an intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Accordingly, we conclude that claim 1 merely requires ... performing, using a processor, an analysis by evaluating the data.
This issue was dispositive, since the Applicant had admitted that the reference taught data analysis by a processor, which was all that was required by this portion of the claim.

The application in Ex parte Teichman (PTAB 2013) involved power control. The method claim recited the step “controlling a grid-side converter . . . to regulate the voltage and frequency of the grid via scheduling power flow to a compensating circuit.”
We note that the portion of the limitation – “to regulate the voltage and frequency of the grid” – argued by Appellant fails to distinguish the claimed invention from the prior art either structurally or functionally. Specifically, the recited feature essentially consists of a statement of intended use or purpose for the controlling functionality. Such statements of intended purpose “usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).
The phrase at issue in Ex parte Kreichbaum (PTAB 2013) was "transmitting the inputs to a second body part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters."  Once again relying on Boehringer, the Board construed the phrase that began with "to enable" as "represent[ing] the intended use of the inputs which provide tactile feedback." (Emphasis added.) As a result, the Board concluded that "claim 1 merely requires transmitting data to a second body part of the user that is capable of enabling the user to identify the different alphanumeric characters or symbols input onto the pressure-sensitive area of the entry device."

The application in Ex parte Kim (PTAB 2013) dealt with a power control system. The portion of the claim at issue read:
a control system . . .
     to calculate a decreased residual amount of the battery based on a difference between the determined residual amount and a previous residual amount, and
     to control the power supply to the system part based on comparing the calculated decreased residual amount and the residual amount to a predetermined value,
The Board treated the limitations "to calculate ..." and "to control ..." as intended use, giving them no patentable weight because they were not "positively recited as actually occurring."

The application in Ex parte Khayrallah was directed to a multiple antenna receiver. The Board considered a method claim having the limitation "selectively assigning an first one of the receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal." The Once again citing Boehringer, the Board found that the "to receive" phrase was intended use. As such, it did not limit the claim "because it merely defines a context in which the invention operates."

To bolster its conclusion, the Board noted the presence of a separate receiving step in the claim:
Additionally, we note further that the claim positively recites a “receiving” step where two or more receive antennas receive the entire wideband signal including all of the multiple sub-signals prior to a first one of the receive antennas being selectively assigned to receive a sub-signal. Thus, we give “selectively assigning a first one of said receive antennas to receive one or more signals of interest on a first sub-signal of the wideband signal” its broadest reasonable interpretation as merely assigning a first antenna that is capable of receiving a signal at a first discrete frequency component of the wideband signal.

In Ex parte Lippincott a video decoding system that included "a plurality of processors, each ...  arranged to execute the certain instructions stored in the instruction memory to decode a frame of the video information"and "a control processor to determine a subset of instructions needed to process a
particular frame of the video information from the type information."
We find Appellant’s argument that the Gove reference fails to teach “any kind of decoding” and “determining a subset of instructions” to be unpersuasive. App. Br. 11. Claim 24 merely requires memory for storing instructions for decoding and a processor for executing instructions. It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition.”); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

My two cents: Among the cases reviewed today, there's no question in my mind that the following phrases deserve patentable weight, since they express results not intention
  • controlling a grid-side converter . . . to regulate the voltage
  • evaluating the attributes ... to analyze costs associated with the costed entities
  • selectively assigning one of the receive antennas to receive ...
For this one, I'm inclined to rewrite to have a separate identification step that is tied to the transmitted inputs.
  • transmitting the inputs to a second part of the user providing tactile feedback to enable the user to identify the different alphanumeric characters
The remaining cases are different in that the "to X" phrases express an action rather than a result. 
  • a control system . . . to calculate [an amount] ... and to control the power supply
  • a control processor to determine a subset of the instructions needed to process a particular frame.
In each case, the Examiner (and the Board) viewed the phrasing "a [structure] to [action]" as intended use. So I would ask the Examiner what format he wants to see order to give it patentable weight ... operable to calculate ... that calculates?

Monday, June 30, 2014

New resource for searching and analyzing PTAB decisions

There's a great new resource available for practitioners interested in PTAB decisions: the Patent Board Ferret.

The Ferret includes both search and analysis tools. On the search side, you can search not only by text in the decision, but also by rejection type, disposition, art unit, Examiner, and decision date. On the analysis side, you can generate charts which answer questions like:
do some judge panels introduce new 101 rejections more than others?
do some Examiners have a high reversal rate for section 112?
do cases with oral hearings have a higher rate of reversal?

While the Ferret hasn't processed every single one of the decisions on the PTAB's official site, it does include almost 13000 decisions, and continues to grow. So the Ferret is now my default search engine for PTAB decisions.

I do still use ptab.us to quickly look at recent decisions of interest to me. ptab.us shows me all decisions issued on a particular day, along with Examiner name, Correspondent Name (i.e. law firm or sometimes corporation), issues decided, and disposition. ptab.us has some analysis features too: it can generate spreadsheets for decisions by judge, law firm, tech center, etc.


Friday, June 13, 2014

Snapshot of 101 Patent Eligible Subject Matter Decisions in May 2014

Posted by: Adam Ellsworth

As the PTAB recently admitted, "the case law regarding 101 continues to evolve" (Ex parte Fickle, Appeal No. 2011-007587).

I thought it might be helpful to look at cases decided by the PTAB in the last month to see if there are any patterns in how the Board is deciding issues of patent-eligible subject matter under 35 U.S.C. 101. It turns out that the case law regarding computer-readable media has pretty-well settled at the PTAB, but it is harder to define clear patterns in decisions regarding the patent-eligibility of other types of methods and systems.

The Rejection of Computer-Readable Media

I considered 32 cases that addressed issues of patent-eligible subject matter under 35 U.S.C. 101. The majority of these cases (22 cases) involved computer-readable media. The takeaway from all of these cases is that in light of Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013 (precedential), do not expect to prevail at the PTAB by arguing that a "computer-readable medium," or even a "computer-readable storage medium," does not include transitory signals. The decisions were unanimous.  If a claim directed to a computer-readable medium omits the words "non-transitory" and lacks other structural limitations, then the computer-readable medium encompasses transitory signals and the claim is not patent-eligible.

Among the cases directed to computer-readable media, Ex parte Makkinejad (Appeal 2011-012801; Decided May 15, 2014) is interesting, because it was not directed to just a computer-readable medium, but rather to a computer-readable storage medium. The result, however, was the same.
Claim 19 of the application is directed to a "computer readable storage medium" and the claim was rejected by the Examiner under 35 U.S.C. 101 as being directed to patent-ineligible subject matter, since, the Examiner argued, the claim encompassed transitory signals. The Appellant argued that "the term 'storage media' would not include any embodiments in which the medium is merely a propagation medium, as opposed to a medium that actually stores data." The Board disagreed and cited as an example, "circulating memory," which uses a delay line to store information in the form of a pattern of pulses. (I'm not convinced by the Board's example, since circulating memory is in itself a physical structure, and the "pattern of pulses" cannot exist without the delay line, sensors, and amplifiers described by the Board. But the Board sustained the rejection of claim 19 under 35 U.S.C. 101.) 

The Rejections of Other Types of Claims (Not Computer-Readable-Media)

Among the non-computer-readable medium cases, two were cases involving biological processes, Ex parte Schatteman (Appeal No. 2011-013696) and Ex parte Cardwell (Appeal No. 2012-001657). In both of these cases, the Board reversed rejections under 35 U.S.C. 101. Among the remaining eight cases, the Board reversed 101 rejections in three cases and upheld 101 rejections in five cases.

101 Rejections Reversed

In the cases in which 101 rejections were reversed, the claims recited physical structures.

Processor and Memory: In Ex parte Cutlip, Appeal No. 2011-011658, rejected claim 7 recited a system comprising a processor and memory configured to provide instructions to the processor, and multiple "modules" to perform various functions. The modules are not explicitly tied to the processor and memory in the claim (such as by having the processor execute instructions of the module), but the specification described functions being performed by the processor. The Board reversed the Examiner's rejection of claim 7, stating that the Examiner had not established a prima facie case of non-statutory subject matter.

Data storage device: In Ex parte Bogues, Appeal No. 2011-013523, the Board held that a claim directed to a "data storage device" excludes transitory signals.

LAN and WAN: And in Ex parte Waites, Appeal No. 2012-000932, the Board held that claim elements "local-area network" and "wide-area network" include computers and associated devices, and therefore the claim did not encompass software per se.

101 Rejections Sustained

Computer program products: In the cases in which 101 rejections were sustained, one of the cases (Ex parte Arrasvuori, Appeal No. 2012-002671) included claims directed to computer program products, and the Board held that the claims could encompass software-only embodiments, and therefore were directed to patent-ineligible subject matter.

Hardware System: In one case, Ex parte Adam (Appeal No. 2012-002144), the claims recited a method in which requests are received, and messages published "by a publish/subscribe hardware system." However, the Board held that this recitation was insufficient to render the claims patent-eligible, stating that the "publish/subscribe hardware system" was merely a "nominal recitation of a computer."

Conclusion

While decisions directed to computer-readable media are consistent in stating that such media encompass transitory signals, other 101 decisions appear to vary on a case-by-case basis. Claims reciting physical structures that perform the steps of the claims are more likely to overcome 101 rejections at the PTAB, but a claim reciting a generic physical structure, such as a "hardware system," may not be patent-eligible.



Thursday, May 22, 2014

Federal Circuit rules on indefiniteness standard and on "adapted to"


The recent Federal Circuit decision In re Packard looked at the standard for indefiniteness used by the PTO. During prosecution, the PTO applies the "two or more plausible interpretations" standard, per the precedential Board decision Ex parte Miyazaki. The standard applied by the courts for an issued patent is instead "insolubly ambiguous." The court in In re Packard declined to reach the larger question of whether the PTO can use this different standard, and decided the narrower question of whether the indefiniteness rejection was proper. The court affirmed the rejection because the Applicant (pro se inventor) didn't substantively respond to the indefiniteness rejection.

In re Giannelli from earlier this year was also a review of a PTAB decision, this one involving claim construction of "adapted to." The PTAB affirmed an obviousness rejection of a claim to an exercise machine, taking the position that the prior art chest press was "capable of" performing the function recited in the claim. The Federal Circuit reversed, after finding that in this particular case, "adapted to" required more than mere capability. The court relied on the specification's disclosure of embodiments that were specifically designed for rowing.

Ryan Alley's blog has thoughtful coverage of both decisions:
   In re Packard – Claim Drafting and Prosecution Lessons
   In re Giannelli – Claim Drafting and Prosecution Lessons

Ryan's blog is my favorite Federal Circuit blog because it offers many practical lessons for prosecutors. 

Tuesday, May 20, 2014

When does "a" mean "the"?

Claims use "a" and "the" in ways that are at odds with plain English usage, which can lead to some strange results.

Let's say I'm describing a text processing algorithm which counts how many times a pattern is found. In plain English, it's perfectly natural to express this as "THE number of occurrences". However, claim drafting reserves "the" for previously-introduced elements. So a claim would probably use "a" instead, to read "A number of occurrences".

Note that in plain English this construction has a completely different meaning: "a number of" often means "some" or "several" (e.g.,"a number of widgets were defective"). Even so, usually no one makes an issue of using "A" to mean "THE" even though it's counter to the plain English meaning. Our brains have been trained to apply a sort of patent filter when reading claims, and we intuitively understand that the drafter really meant "THE number of occurrences even though the claim reads "A number of occurrences."

But what if you don't assume the drafter was using patentese rather than plain English? What if you instead take the position that "a number of" has two different meanings. Then isn't the claim indefinite?

In the recent decision Ex parte Whitney (PTAB 2013), the Board said Yes, it is indefinite. The claim language at issue was: "comparing a number of occurrences of a text pattern in the collection of text at one moment in time with numbers of occurrences of the text pattern in the collection of text at other moments in time.” The Board explained as follows:
     Applicant's arguments ... focus on the failure of the prior art to disclose or suggest comparing an actual numerical count of occurrences, i.e., “a number of occurrences,” of a text pattern in a collection of text at one moment in time with the actual numerical count of occurrences of the text pattern in the collection of text at other moments in time. However, it is equally proper to interpret the phrase, “a number of occurrences,” as the Examiner does, to refer to an indefinite group of occurrences of a text pattern, e.g., some occurrences or several occurrences of the text pattern that are compared at different points in time based on some unspecified criteria.
     Because the claim language is susceptible to two equally reasonable interpretations, the claim language is ambiguous, and, thus, indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1215 (BPAI 2008) (precedential). Therefore, we will enter a new ground of rejection of claims 1-50, 53, and 54 as indefinite under 35 U.S.C. § 112, second paragraph.
The Examiner did not raise this issue. And because the claim was indefinite, the Board refused to decide on the prior art rejection. (In re Steele, 305 F.2d 859, 862 (CCPA 1962)(A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.)

A few months earlier, the Board reached the opposite result in Ex parte Qu (PTAB 2013). The limitation at issue read "wherein an arithmetic sum or difference of twice a number of stator teeth and a number of the stator poles equals a number of rotor poles." The Examiner asserted that it was unclear whether "a number of" ... "intended to refer to the total number of teeth or poles or some subset thereof.” The Examiner then interpreted the phrase to mean "subset of teeth" in the prior art rejection. The Examiner explained as follows: 
[T]he devices disclosed in Qu satisfy equation (1) because any number of rotor poles, stator poles, and stator teeth can meet the claimed limitation since ‘a number’ can be any integer, up to the maximum number of poles/teeth disclosed by Qu.
The Board found the claim was not indefinite in view of the specification:
In determining whether a particular claim is definite, the claim’s language must be analyzed in light of the content of the particular application, the prior art’s teaching, and the interpretation that would be given to the claim’s language by a person of ordinary skill in the art at the time the invention was made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009).
The Board found that an equation in the specification made clear that "A number of" meant "THE number of":
The number of the rotor poles, the number stator poles and the stator teeth are configured to satisfy: 2 * Steeth ± Spole = Rpole, wherein STEETH refers to the number of stator teeth 30, SPOLE refers to the number of stator poles and RPOLE refers to the number of rotor poles.
Using this construction, the Board then reversed the prior art rejection.

I think these two decisions are outliers. In the first place, I think most Examiners use the same "patentese" rules of antecedent basis that claim drafters do. Most don't reject as indefinite, and most don't take the position that "A number of" means "SOME of". So the Board probably doesn't see this issue raised by the parties very often. I also looked for other decisions where the Board raised the issue, and didn't see any.

But these decisions do highlight how very different claim language is from plain English.