Friday, October 17, 2014

Broadest Reasonable Interpretation does not allow broadening from a dictionary definition

Takeaway: In today's post I'll discuss two cases where the Board found that Broadest Reasonable Interpretation does not mean the Examiner can start with a dictionary definition and broaden from there.

In Ex parte Butler, the application was directed to a positioning control system for lithographic printing, and the claim term at issue was "a partial order filter". The claim was rejected as anticipated by a reference (Yuan) teaching a photolithography system. The reference system used a filter and listed notch, low pass, and high pass filters as examples.

The Applicant argued that Yuan did not disclose a filter of the claimed type ("partial order"). In the Answer, the Examiner provided a Wikipedia definition of a mathematical filter as "a special subset of a partially ordered set." The Examiner then reasoned, based on the definition, that "in the broadest sense, the filter of Yuan can be considered as a 'partial oder filter' as broadly claimed." As additional support for his interpretation, the Examiner explained "Yuan’s filter is a partial order filter because, like the Appellants’ filter [as described in the specification), it can be a low pass filter."

The Board found the Examiner's interpretation to be unreasonable. Addressing the Examiner's definition, the Board explained that "the Examiner has not established that those of ordinary skill in the photolithography art to which Yuan pertains would have considered a partial order filter to be defined by the definition of a mathematical filter." (Emphasis added.) Addressing the Examiner's comment on a statement in the Applicant's specification, the Board referred to the teachings of the specification a whole:
The specification "does not indicate that every low pass filter is a partial order filter but, rather, indicates that a partial order filter differs from a first order filter in that a first order filter provides a -90º phase shift whereas a partial order filter provides a lesser phase shift (-60º for a 2/3order filter and -45º for a half order filter)
(Emphasis added.)
The application in Ex parte Xu was directed to network routing, and the claim terms at issue were "hashing" and "hash function". The Examiner asserted that these terms read on mapping as described in Lu: "The current geographic position of the node is converted to a zone of the network based on a mapping function or table.” As support for his assertion, the Examiner provided a definition of "hash" from a technical dictionary:
hash2 vb. To be mapped to a numerical value by a transformation known as a hashing function. Hashing is used to convert an identifier or key, meaningful to a user, into a value for the location of the corresponding data in a structure, such as a table.
On appeal, the Applicant focused on the phrase “by a transformation known as a hashing function” in the definition, and reasoned that the “mere mapping of data in Lu” could not be characterized as “hashing”.  In the Answer, the Examiner maintained the rejection and provided this additional explanation:
[T]o hash is to be mapped to a numerical value by a formula (a transformation known as a hashing function). . . .When a value is mapped to another value, the two values are made equal to each other. For example, f(x)=x [is a mapping]. The formula pt=h(pt,dp,dz,z) [in Applicant's specification] is of a form similar to f(x)=x, but involves multiple variables and has no real disclosure of what h(pt,dp,dz,z) is ... As x=y and f(x)=x (which are both functions that simply map the value of x to either y or f(x), respectively) are both both formulas they meet the definition of hashing function
(Examiner's Answer, emphasis added.)
The Applicant countered by arguing, in the Reply Brief, that the Examiner had improperly interpreted the phrase “[t]o be mapped to a numerical value by a transformation known as a hashing function” (in the definition) to read hashing as the use of any mathematical function to map to a numerical value.

The Board agreed with the Applicant:
[T]he definition defines hashing as a particular way of mapping to a numerical value, namely, as using a transformation known as a hashing function to map to a numerical value. Because Lu does not describe the mapping function as a hash function or provide any details suggesting that the mapping process employs a hash function, we agree with Appellants that the Examiner has failed to demonstrate anticipation of the “hashing” claims.

My two cents: I view these two cases as ones where the Examiner decided that Broadest Reasonable Interpretation allowed him to broaden from a dictionary definition, and the Board said No. It's not clear whether the Board was influenced by teachings in Applicant's spec. The Board certainly didn't say it was, nor did it cite to any case law describing use of the spec to interpret claims. However, perhaps the spec did help these Applicants: Butler's spec did explain what was meant by "partial order filter" and Wu's spec did include an example of a specific hashing function.

Tuesday, October 14, 2014

Board affirms obviousness when Applicant misunderstands Examiner's combination

Understanding the Examiner's position is key to advancing prosecution. Before appeal, it's best that the Applicant understands what the Examiner is saying, and that the Examiner understands what the Applicant is saying. Certainly a misunderstanding was at the root of the appeal of an obviousness rejection in Ex Parte Sudhardja. Sometimes the Examiner doesn't explain clearly, sometimes the Applicant just doesn't get it, and sometimes both forces are at work. What happened here?

Ex Parte Sudhardja
Appeal 2010-004119; Application No. 11/196,651; Tech. Center 2100
Decided  November 5, 2012

The application on appeal was directed to a "self-repairing" graphics processing unit (GPU) that included redundancy features. The application was a Continuation-In-Part. The parent application described redundant functional units in an integrated circuit; the CIP added GPU-specific details.

A representative independent claim on appeal – unchanged from the original filing – read:
     11. A self-reparable semiconductor including a graphics processing unit (GPU), comprising:
      M pixel processors that perform a first function, where M >= 1;
     at least one spare pixel processor that performs said first function and that is functionally interchangeable with said M pixel processors; and
     switching devices that communicate with said M pixel processors and said at least one spare pixel processor and that can selectively replace any of said M pixel processors with said spare pixel processor when said one of said M pixel processors is inoperable.
In the first Office Action, the Examiner rejected all claims as obvious over a combination of Adamovits and Gordon. According to the Examiner, Adamovits disclosed a telecommunications switch having redundancy features as claimed. The Examiner did acknowledge that the Adamovits device used network, rather than pixel, processors, then turned to Gordon (entitled "Pixel Processor"), which described implementing specific boolean functions on a pixel processor.

The Examiner explained the combination as follows:
Adamovits et al. does not teach the processor being a pixel processor. Gordon teaches of a pixel processor (Fig. 3, 303, col. 4 lines 60-67). It would have been obvious to modify Adamovits et al. sparing system by adding Gordon pixel processor.
As a rationale for combining, the Examiner asserted "[the combination] would provide redundant equipment to ensure acceptable and/or safe operation for the pixel processor."

In a first Response, the Applicant argued that the Examiner's combination did not produce the claimed invention. Since the Examiner specifically relied on "adding Gordon pixel processor" (emphasis added), the Applicant reasoned that the resulting combination included only "a single pixel processor" rather than M pixel processors as claimed. "The Examiner fails to provide any evidence in support of the allegation that modifying Adamovits et al. with the device of Gordon would result in multiple pixel processors" (emphasis added). 

In addition to attacking the combination itself, the Applicant also attacked the Examiner's rationale for combining, by highlighting differences in the types of devices: one related to switching network telecommunication data; and one graphics processing. Because of these differences, the Applicant concluded that "there is no suggestion to combine the teachings of Adamovits et al. and Gordon."

The Examiner provided more information in the Final Office Action.
Even though Adamovits et al. teach of a sparing system for processors, Adamovits et al. does not explicitly teach of a pixel processor. Gordon teaches of a pixel processor and [a POSITA] would conclude that it is obvious for Adamovits et al. to include pixel processors in the sparing configuration. Because Adamovits et al. taught of n pieces of equipment to at least one spare piece of equipment, examiner equate that as equal to applicant's M pixel processor where M> 1.
The Applicant appealed. The Appeal Brief reiterated that the Examiner's combination produced a sparing system with only a single pixel processor. The Applicant also elaborated on the no suggestion to combine argument (telecommunications data is unrelated to graphics processing) by noting that "adding a pixel processor [to a telecommunications switch] would provide no forseeable advantages."

The Examiner's Answer reiterated earlier positions, and also and re-stated the combination as: "combine the sparing system for n pieces of equipment of Adamovits with Gordon pixel processor for the sparing of pixel processors in a critical system." (Emphasis added.) Commenting on the unrelatedness of telecommunication switches and pixel processors, the Examiner noted that Adamovits specifically disclosed "the applicability [of sparing techniques] for critical equipment in a wide variety of applications and environments."

The Board affirmed the obviousness rejection, explaining that the Applicant had misunderstood the Examiner's combination:
While perhaps not described in the clearest manner, the Examiner's proposed rejection does not suggest only modifying one processor in Adamovits for a pixel processor as taught by Gordon. The Examiner proposes "combining the sparing system for n pieces of equipment of Adamovits with GOrdon pixel processors for the sparing of pixel processors in a critical system. (Emphasis in original.) Additionally, the Examiner finds that Adamovits teaches using one sparing piece of equipment for each n pieces of equipment in the system, suggesting that this spare equipment substitutes for each n pieces of equipment. 
The impact of these statements made by the Examiner signifies that the combination would substitute each of Adamovits sparing processors with a pixel processor as taught by Gordon, predictably yielding multiple spare pixel processors. Thus, looking at the rejection as a whole, combining Gordon with Adamovits, as proposed, also suggests substituting Adamovits' multiple processors with multiple pixel processors such that the substituted spare pixel processors are spare processors for M processors discussed in Adamovits.

Postscript: Upon losing this appeal, the Applicant filed a continuation with narrower claims and successfully prosecuted it to issuance.
My two cents: There are always two angles to attack in an obviousness rejection: Examiner's combination does not teach the claim elements; and rationale to combine. The Applicant here attacked both. The Applicant's does-not-teach argument was based on a faulty understanding of the Examiner's combination. Not sure how that happened, because I understood the combination asserted by the Examiner from the very first Office Action.

I was also spectacularly unpersuaded  – at first glance – by the Applicant's rationale-to-combine argument: "adding a pixel processor [to a telecommunications switch] would provide no forseeable advantages." Unpersuaded because my initial reaction was: "the advantage is the redundancy features."

But as I thought about it more, I started wondering if the Applicant was on to something. For one thing, the switch already had redundancy features, so that can't be the reason for using the pixel processors in the switch.

In fact, if you take the Applicant's argument a bit further, seems like you have a good argument for inoperable / unsuitable for intended purpose. Doesn't the telecommunications switch stop working when you replace its network processors with pixel processors? This isn't a case where a little re-work is all that is needed ... network processors have specific design features, useful for packet processing in a switch, that pixel processors don't.

What does seem to make sense is the inverse of the Examiner's combination. Take the redundancy features used in the telecommunications switch of the primary reference, and apply them to the graphics processor environment of the secondary reference.

Is this a different combination? I say it is. It's true there is case law that says the order of references doesn't matter (In re Mouttet, 686. F.3d 1322, 1333 (Fed. Cir. 2012, citing In re Bush, 296 F.2d 491, 496 (CCPA 1961)). But I'm not quibbling about which reference is labeled primary and which is labeled secondary. I'm talking about the fundamental question of how the references are combined to produce the claimed invention. 

This Applicant probably loses on the inverse combination as well. So you could say it doesn't matter. But stuff like this does matter.

It matters that the Examiner clearly explains his claim construction. It matters that the Examiner clearly explains how he's combining the references. It matters that the Examiner acknowledges that some limitations aren't present in the combination and he's relying on KSR's "creative inferences" to bridge the gap. And finally, it matters that the Examiner explains his rationale for combining.

Simply put, you can't effectively fight a rejection that you don't fully understand. Until the Federal Circuit rules that a prima facie case requires a complete explanation of the rejection, Applicants should work to extract this complete explanation from the Examiner over the course of prosecution.

Wednesday, October 8, 2014

Board reminder that Federal Circuit appeal, not PTAB Rehearing, is the appropriate forum to reargue issues already decided by the PTAB


The PTAB Rehearing decision Ex parte Brozell criticized an Applicant for filing a Request for Rehearing in order to argue that the Board had erred on claim construction and on the conclusion of obviousness:
[A] request for rehearing is not an opportunity to express disagreement with a decision. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review, not to file a
request for rehearing to reargue issues that have already been decided.
(Emphasis added.)
C.F.R. 41.52(a)(1) requires the Request for Rehearing to "state with particularity the points believed to have been misapprehended or overlooked by the Board." According to the Board, the rehearing arguments did nothing more than criticize the Board's analysis in the Original Decision.  "Despite how these sections of the Request are titled, Appellant does not identify particular evidence or arguments from the briefing and demonstrate that they were misapprehended or overlooked."

The Rehearing Request also argued that the Original Decision had included a new ground of rejection that was not designed as such. The Federal Circuit has explained new grounds in the context of a PTAB decision as follows:
The Board may not “rel[y] on new facts and rationales not previously raised to the applicant by the examiner.” Of course, the Board is not required to “recite and agree with the examiner’s rejection in haec verba” in order to ensure that the PTO has provided adequate notice. And the Board may elaborate on the examiner’s findings, so long as the appellant had an adequate opportunity to respond to the Board’s findings during the PTO proceeding. The ultimate criterion is whether the appellant has had before the PTO a “fair opportunity to react to the thrust of the rejection.”
Rambus, Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (internal citations omitted).
According to the Applicant, this statement in Original Decision amounted to "a new finding that changes the thrust of the rejection": “We note that Boots discloses that the container can be injection molded to form a monolithic, one-piece structure."

However, the Board concluded this was not a new finding, pointing to this statement in the Examiner's Answer: “Boots discloses a package comprising a container of one-piece integrally molded plastic construction.” The obviousness rejection affirmed by the Original Decision was therefore not a new ground of rejection.

Tuesday, September 30, 2014

Blogs covering AIA Inter Partes Review, Post Grant Review and Covered Business Method Review

My blog covers the A in PTAB – meaning that I discuss cases where the Applicant has appealed an Examiner rejection during prosecution. The T in PTAB stands for Trials, and it looks like these Trials proceedings are big business, because I've found quite a few blogs that cover PTAB activity.

Here's a quick list:

US PTO Litigation Alert
Patents Post Grant
Reexam Link
IPR-PGR
PTAB Trial Blog
IPR Petition Denied
Post Grant AdvocATor

A bit more background for those of you that aren't familiar with PTAB Trials. The jurisdiction of the Board was enlarged significantly by the AIA. The PTAB still handles appeals of Examiner rejections during prosecution  and appeals during ex parte reexamination. But the PTAB now also handles Inter Partes Review, Post Grant Review and Covered Business Method Review.

Inter Partes Review (commonly abbreviated as IPR) is analogous to old inter partes reexamination – though there plenty of differences. Post Grant Review is like Inter Partes Review, but is limited to patents filed under AIA rules and to a 9-month period after issuance. Covered Business Method Review is like Post Grant Review – except that filing date is irrelevant and it is limited to "covered business methods." This link summarizes the differences in chart format.

In the past, I've found a lot to learn from reexamination appeal. Applicants tend to go into more detail in their arguments, as reexamination is an expensive process with higher stakes. This is even more true for IPR and its brethren, so I'll be blogging about IPR, PGR and CBM decisions from time to time, if I see some good stuff.

Monday, September 29, 2014

PTAB affirms anticipation of tourniquet by cable tie since tie is capable of "safe occlusive pressure"

Takeaway: The Applicant appealed a claim to a tourniquet including "the block body and cuff cooperate to provide safe occlusive pressures to both sides of the target digit." The Examiner rejected as anticipated by a cable tie used with telecom cable: the range of pressures exerted by the cable tie  included "safe" pressure, and this capability was enough for anticipation. The Applicant argued that the reference cable tie was made of high-tensile thermoplastic and had a loop tensile strength over 250 pounds. The Applicant entered expert affidavits by two surgeons attesting that this cable tie "was not suitable for use as a digit tourniquet." The Board adopted the Examiner's reasoning and affirmed the rejection.

Details:
Ex parte Warburton
Appeal 2011-011302; Appl. No. 11/222,956; Tech. Center 3700
Decided  January 18, 2013

The application on appeal was directed to a tourniquet for a finger or toe. The application included several independent apparatus claims of differing scope, as well as a method-of-use claim.

One of the independent claims on appeal read: 
     1. A single-use disposable digital tourniquet, comprising:
a substantially rigid block support body defining a curved digit contact outer surface and an opposing outer surface ...the support body comprising first and second spaced apart cuff channels sized and configured to receive a cuff therethrough,
     wherein the first and second cuff channels extend ... such that, in position, a cuff extends out of the first and second channels of the block body ...
     wherein the block body and cuff cooperate to provide safe occlusive pressures to both sides of the target digit ...
(Emphasis added.) 
In the early rounds of prosecution, the Examiner used a series of prior art tourniquet references to reject the claims. The Applicant amended the claims several times to distinguish over these tourniquet references.

In the fifth Office Action, a new reference, Dyer, appeared. Dyer described a cable tie assembly used to space apart a telecom cable and a metal support. The Examiner used Dyer to reject all the claims, including some that had been indicated as allowable in previous Office Actions.

Dyer's cable tie is shown below left, and an embodiment of the Applicant's claimed torniquet is shown on the right.
The Examiner asserted that Dyer's cable tie anticipated all the independent apparatus claims. Dyer was also used as a primary reference in a § 103 rejection of the sole independent method claim.

The Applicant amended independent apparatus claim 1 to recite "wherein the block body and the cuff cooperate to provide safe occlusive pressures to both sides of the target digit." The specification taught that "the minimum finger occlusion pressure is a function of the circumference of the finger and the patient's systolic blood pressure." The specification also included a table of target pressures vs. cuff widths, and incorporated by reference a journal article about finger tourniquets. The Applicant argued that Dyer did not teach "desired target/safe occlusive  pressures and/or [is] simply not configured to support the digit in the manner required for appropriate digit tourniquet use."

Along with the response, the Applicant filed § 1.132 Declarations by two surgeons. The surgeons asserted that Dyer's cable tie was not suitable for use as a digit tourniquet, and that they would not look to the field of cable ties for information about a medical instrument.

The Examiner maintained the anticipation rejection and provided further explanation:
[T]he amount of pressure provided by the device of Dyer depends solely on the amount of tension applied to the strap as it is pulled through the cable tie head and how far the strap is pulled through the cable tie head. Therefore, the device of Dyer is capable of providing various amounts of pressure to an object held between the cable tie head and the strap ... Simply because the material provides a large loop tensile strength ... does not render the strap incapable of providing a safe occlusive pressure as the strap could be left more or less slack around an object to provide a desired pressure.
(Emphasis added.)
In response to the Applicant's argument that Dyer did not "teach" the safe occlusive pressure limitation, the Examiner noted Dyer (an issued patent) was presumed to be enabled. Finally, the Examiner critiqued the declarations, contending that their statements about the maximum pressure the device is capable of applying "does not factually prove that the device is incapable of producing a smaller pressure."

The Applicant appealed. Elaborating upon earlier arguments, the Applicant explained that Dyer taught a tie wrap made of high-tensile thermoplastic and having a loop tensile strength over 250 pounds. In fact, Dyer suggested a particular crystalline plastic (DELRIN®) described as having "metal-like" properties. Thus, "this would not appear to be a material that forms a cuff for providing safe occlusive pressures to a target digit (i.e., without causing nerve or tissue damage." (Emphasis in original.)

Responding to the Examiner's point about presumed enablement, the Applicant argued that enablement in Dyer should be assessed with respect to cable ties, not tourniquets.
Dyer does not describe any mechanism that could provide this [safe occlusive pressure] feature; rather, Dyer teaches that the strap is inserted without any regard to the degree of tension of the objects held under the strap, and that the strap cannot be "backed out" or withdrawn to reduce this tension.  Thus, Appellant strongly asserts that Dyer does not contain adequate disclosure such that a person of ordinary skill in the art could make and use the claimed digital tourniquet having block body and cuff that cooperate to provide safe occlusive pressure to both sides of a target digit.
The Examiner's Answer focused on the capability of Dyer's structure. According to the Examiner, the "safe occlusive pressures" limitation was intended use, meaning Dyer's cable tie did anticipate because it was capable of applying the claimed pressures. Furthermore, the Answer noted that "the Rule 132 affidavits do not discuss the claimed invention providing 'safe occlusive pressures' and only discuss the block and strap providing occlusive pressure." (Emphasis added.)

The Applicant filed a Reply Brief with extensive rebuttal of the Examiner's positions. With regard to affidavits, the Reply Brief indicated specific paragraphs in the affidavits that referred to "safe, even and/or controlled occlusive pressure." The Reply Brief then asserted that the "Examiner's blanket statements that cable ties ... can provide a safe, even and/or controlled pressure cannot outweigh evidence to the contrary in the form of statements by expert surgeons."

Addressing intended use, the Reply Brief asserted that "safe occlusive pressures ... are provided by structural aspects of the claimed tourniquet such as the geometry of the support body and the cuff and the cooperating nature of these two components." (Emphasis added.)

Finally, commenting on the capabilities of Dyer's cable tie, the Reply Brief quoted from selected passages in Dyer to show that Dyer's "strap is inserted without any regard to the degree of tension on the objects" and "cannot be backed out or withdrawn to reduce this tension." As a result, Dyer does not "adequately describe" the claimed structural features that cooperate to function in the claimed manner.

The Board affirmed the anticipation rejection of claim 1 and explained as follows:
We note that the term “safe” is a relative term that is not otherwise defined by the Specification. In this regard, we agree with the Examiner’s logic that “the pressure provided by the strap of the device of Dyer depends solely upon the tension applied to the strap and the amount of strap pulled through the cable tie head” and that the device of Dyer is capable of applying pressure that would fall  within the range of pressure deemed safe for use as a digit tourniquet. Evidence supplied by Appellant in the form of expert opinion does not prove that the device of Dyer is incapable of supplying safe pressures. Accordingly, we conclude that the Examiner did not err in concluding that claim 1 is anticipated by Dyer.
My two cents: Imagine the Applicant's frustration at overcoming three tourniquet references, only to be blocked by a cable tie! Now, the Applicant did win on some other claims, but that's a topic for another post.

I give points to the Applicant for an organized prosecution. With each round, the Applicant elaborated on his own previous arguments and also addressed points brought up by the Examiner in the last paper. However, the Applicant loses points  – and more importantly, loses the appeal – for not hearing the Examiner on the most important issue: the claim language read on the cable tie's capability of generating a "safe" pressure. This issue was identified early on, and both sides generated a lot of paper discussing it. Even so, it appears that at some level, the Applicant just didn't get it.

Turning now to what might have been rather than what did happen, I wondered how the Applicant could have overcome the Dyer rejection. Is the root issue the meaning of "safe occlusion pressure"? The Board did suggest "safe" is broad. Or is intended use the root issue?

One way of looking at this is that the Dyer's high-strength cable tie strap can be used to apply a range of pressures, with Applicant's "safe" pressure in between. The reference therefore anticipates. If that's the issue, language about limiting the pressure should overcome. But I can't tell if this limiting aspect is how the Applicant really understood his invention, because the spec doesn't use the word limit or anything like it.

I've also thrown by the semi-structural "cooperate" limitation. Does the block body really have anything to do with the limit or safe pressure function? It's just the cuff, isn't it?

I might try something like "cuff adapted to safely limit," then argue it's not intended use, and instead conveys information about the type of structure. And the structure in Dyer – a high-tensile strap – is simply not one that operates to limit pressure to a safe value.

If the Examiner/Board insists on reading "adapted to" as intended use (satisfied by mere capability in the reference structure), I think maybe you're still okay. The high-tensile strap isn't really even capable of limiting pressure to a safe value. Sure, it's capable of producing safe pressure. Sure, it's capable of limiting pressure, since it will break at some point – but that's way past the safe value. 

The spec did mention "safe", "even", and "controlled" pressures, but didn't focus on this aspect, and didn't even use the word "limit." Probably because the Applicant focused on distinguishing over other tourniquets, not cable ties. And that's clearly a challenge with rejections like this: amending to describe a feature that's implicit in the description when read in context by a POSITA – yet isn't specifically described in any detail in the spec.

What does appear to be important is a related feature: structure to let the user know when the target pressure has been reached. This function is provided by a deformable member extending across the cuff channel. The material and specific design of the deformable member is chosen to yield or break when particular target is reached, producing tactile or audible feedback. This feedback tells the user to stop pulling on the cuff.

This deformable member was recited in some of the original dependent claims, and was also in two of the claims that had rejections reversed by the Board.

Tuesday, September 23, 2014

Board considers subcomponent of integrated assembly and finds subcomponent is "to be attached to" the final assembled structure


Takeaway: A claim to an aircraft mounting structure recited a "mount portion ...to be attached to a pylon". The Examiner read the mount portion on a pyramid structure that was part of the assembled pylon. The Applicant argued that because the pyramid structure was already part of the pylon, it would no be understood as a component "to be attached to" the pylon. The Examiner explained that "integration (combining multiple into one) is a form of 'attachment'. " The Board agreed with the Examiner. (Ex parte Cloft,  PTAB 2014.)


Details:
Ex parte Cloft
Appeal 2012-005061; Appl. No. 12/016,234; Tech. Center 3600
Decided  June 9, 2014

The application was directed to structures for mounting an aircraft engine. Where prior art arrangements used multiple bolted joints to attach the engine to a pylon structure on the wing, the invention used engine mount beams that were integrally formed with the pylons. 

A representative claim on appeal read:

     1. A mounting arrangement for a gas turbine engine comprising:
     a pylon mount structure having a first mount portion and a second mount portion positioned aft of said first mount portion,
          said first and said second mount portions comprising separate components to be independently attached to a pylon;
     a first engine mount beam integrally formed with said first mount portion as a single-piece component ... ; and
     a second engine mount beam integrally formed with said second mount portion as a single-piece component ...
The Examiner rejected as obvious over a combination of two references. In the rejection, the Examiner asserted that a POSITA would have used the teaching, in the secondary reference, of a pylon mount portion integrally formed with a mount beam, and combined that with the remaining claim elements taught in the primary reference (Marche).

The Applicant appealed. One argument on appeal concerned the limitation that the first pylon mount portion "be independently attached to a pylon". The Examiner specifically asserted that the first mount portion corresponded to structures 14/16 in the primary reference Marche, and that the pylon corresponded to structure 4. (See figure below.)


The Applicant argued that Marche did not teach that the mount portion was "to be independently attached to" the pylon because the reference taught instead that the triangle structure 14 was “already part of” the rigid structure 4. (Emphasis added.)

In the Answer, the Examiner provided this additional information:
The first portion 14/16 and the second portion 18 are distinct components joined to the pylon at separate locations (fore and aft of pylon 4). As such, they are separate components to be "independently" attached from each other (i.e. one's joining does not depend on the other) to the pylon. It is further noted that integration (combining multiple into one) is a form of "attachment." The claims do not specify the type of attachment to be obtained.
(Emphasis in original.)

The Applicant filed a Reply Brief to address this new information.
Pyramid 14 is the pylon itself (see paragraph [0076]). Specifically, the pylon comprises lower 12 and upper 20 stringers and the pyramid 14. The aft mount 18 is attached to the pylon stringer 12. As such, the examiner's first [mount portion] and second mount portions cannot be considered as "separate components to be independently attached to a pylon."
(Emphasis added.)
The Board was not persuaded by the Applicant's argument.

The Board found that pyramid 14 was indeed "attached to" pylon 4during assembly of the pylon. That is, the Board adopted the Examiner's reasoning that combining stringer 10, stringer 12, and pyramid 14, to produce an integrated pylon 4, involved attaching the stringer 12 to the pylon 4. The Board explained as follows:
     To be clear, Marche discloses that “rigid structure 4 is globally made by the assembly of lower stringers 12 and upper stringers 10 connected to each other.” Marche para. 76. This same paragraph also discloses that “a forward part of this rigid structure 4 is composed of a pyramid 14.” Marche para. 76. Hence, Appellants’ argument is understood that as item 14 is already part of item 4, then it is not clear how this item 14 can also be independently attached to item 4.
      The Examiner clarifies “that integration (combining multiple into one) is a form of ‘attachment.’ The claims do not specify the type of attachment to be obtained.” Ans. 9. The Examiner further finds that as Marche’s corresponding first portion 14/16 and second portion 18, “are distinct components joined to the pylon at separate locations (fore and aft of pylon 4),” that “they are ‘separate components’ to be ‘independently’ attached from each other (i.e., one’s joining does not depend on the other) to the pylon.” Ans. 9.
     Appellant disagrees, contending that “[p]yramid 14 is the pylon itself” and references Marche paragraph [0076] for support (Reply Br. 2), but as stated above, this paragraph only states that pyramid 14 is a “forward part” of “rigid structure 4” which itself is described as being an “assembly” made from different stringers 10 and 12 that are “connected to each other.” Hence, there is no indication in Marche that the construction of rigid structure/pylon 4 is monolithic but instead, Marche describes item 4 as an assembly of multiple components connected together. Marche para. 76. Consequently, Appellant’s contention that Marche’s item 14 is not “independently attachable to a pylon as claimed” is not persuasive. App. Br. 6.
(Emphasis added.)

My two cents: The Board tried to be to clever, and in doing so, got this one wrong.

First, I do agree that the process of producing an integrated component sometimes involves attaching subcomponents – as was the case here. However, here the subcomponents were attached to each other: stringers 10 and 12 are attached to pyramid 14 to form pylon 4.  I do not agree that pyramid 14 was attached to pylon 4, as there was no pylon 4 until all three pieces were attached together.

Second, the claim is to an apparatus not a method. Once Marche's pylon 4 was formed, the pyramid 14 can't be considered a "separate component to be independently attached to a pylon [4]". Right? You can't, on the one hand, rely on the fully assembled pylon 4 as the claimed pylon and, at the same time, rely on the pyramid subcomponent 14 as a structure attached.

Perhaps the Applicant's use of the phrase "to be attached" rather than "attachable" weakens my argument. Perhaps "to be attached" can be read as referring to the time of assembly? But note that neither the Board nor the Examiner appeared to rely on this.