Wednesday, January 28, 2015

PTAB picks Broadest definition of "secured" among those offered by Examiner and Applicant, but was it Reasonable?

Takeaway: In an ex parte reexamination of a patent on a rolling tool cabinet, both the Applicant and the Examiner made extensive use of dictionary definitions to interpret the claim term "secured." The Applicant asserted the prior art structure was not "secured" because it was not “fixed,” “attached,” or “fastened.” The Board disagreed, finding that "at least some of the definitions encompass a broader meaning." The Board adopted the Examiner's interpretation, under which a container “inserted” into a compartment is considered “secured” in the compartment "because it had to be placed in the compartment and would therefore be unlikely to come loose or give way." (Ex parte 500 Group, PTAB 2010.)

Ex parte 500 Group
Appeal 2010-010428; Appl. No. 90/008,998; Patent 6,601,930; Tech. Center 3900
Decided:  October 26, 2010

One of the independent claims on appeal read:
     1. An apparatus for transporting articles between working locations, comprising:
     a base container having an interior space in which articles to be transported can be stored,
     one or more rotatable ground engaging wheels mounted to the apparatus toward the bottom of said apparatus ...
     at least one removable container having [four elements]...
     said at least one removable container being removably secured above said base container when said apparatus is at a working location ...
The Patentee appealed the Examiner's final rejection as obvious over Spielhoff in view of Kennedy. Spielhoff was a German patent, and the Examiner included a PTO translation with the Final Office Action. One of the issues on appeal was the meaning of the language highlighted above.

The Examiner alleged that FIG. 3 of Spielhoff disclosed the base container as 4' and removable container as 8'. The Examiner also provided annotated FIG. 3 (below) bearing the added label "removably secured region for removable container."
Spielhoff Fig. 3
In the Appeal Brief, the Applicant first described the cabinet of Spielhoff and then extensively discussed the proper interpretation of "secured." According to the Applicant, the Figures showed that Spielhoff's cabinet had an upper bin structured to enclose a container such as a toolbox, and the upper bin included a lid but not a latch. Furthermore, the English language translation of the text for Fig. 4 mentioned that multiple cases could be "inserted" (double arrow) into a common frame.
Spielhoff Fig. 4
Moving on to the proper interpretation of "secured," the Applicant introduced multiple definitions for the term "enclosed" used in Spielhoff and for the term "secured" used in the claim. The Applicant asserted, based on these definitions, that "enclosed does not mean secured" and elaborated as follows:
In this rejection, the Examiner has used such a colloquial and overly broad interpretation of the word "secured" as used in the present claims. That is, as set forth in detail above, "secured" means "fixed," "attached" and "fastened." Two objects that are "secured" to each other may not be separated absent the removal/separation of that which is "securing" the two objects together. ... [T]he broadest reasonable interpretation of "securing" elements together, as recited in the claims, requires that the elements be "fixed," "attached" or "fastened" together.
The Applicant's claim construction argument also mentioned various securing mechanisms disclosed in the specification, but explicitly stated that these features should not be read into the claims.

The Examiner's Answer specifically explained how Spielhoff's cabinet was encompassed by various definitions of "secure" provided by the Examiner and by the Applicant:
  • One definition of "secured" proffered during reexamination by the Examiner is "to relieve from exposure to danger: act to make safe against adverse contingencies" (Merriam-Webster's  Collegiate  Dictionary, 10th ed., page 1056).  Under this definition  the toolbox is relieved from exposure when placed in the region defined by the Examiner.
  • Further, another definition of "secured" supplied by Appellant is "firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way" (Brief at top of page 8). Under this definition the toolbox is firmly placed in position and unlikely to give way when placed  in the region defined by the Examiner.
  • Further, another definition of "secured" supplied by the Appellant is "to make firm or tight; fasten" (Brief at top of page 8).  One definition of "tight" is "strongly fixed or held: secure" (Merriam-Webster's  Collegiate  Dictionary, 10th ed., page  1234).  Under this definition  the toolbox is made tight by being strongly held when placed in the region defined by the  Examiner.
Finally, in addressing the Applicant's discussion of embodiments in the specification, the Examiner noted another embodiment: "tool case 212 is secured to the organizer 214 in any manner, for example, by a frictional fit as shown." The Examiner explained that Spielhoff's mechanism for securing – placing the toolbox in to an (Examiner-defined) region above the base container – was "within the ambit of 'any manner' and 'frictional fit' " since the toolbox would be held in this region by the force of friction in conjunction with the compartment's sides.

The Board agreed with the Examiner's interpretation. The Board first noted that Specification did not expressly define the claim term ("secured"), nor did it use the other terms (“fixed,” “attached,” fastened”) to describe the relationship of the removable container and the base container. To the contrary, the Specification states that the securing function can be accomplished “in any manner, for example, by a frictional fit.” Thus, the Specification "makes it clear that the term is being used, and should be construed, broadly."

Moreover, while the Applicant asserted that every definition of "secure" uses the word "fasten," the Board found that some of the definitions had a broader meaning. The Board elaborated as follows:
For example, one of the definitions of “secured” relied upon by Appellant is “firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way.” (App. Br. 8, Ex. 9 (emphasis added)) Thus, a container that is “inserted” into a compartment, as in Spielhoff, would be “secured” in the compartment because it had to be placed in the compartment and would be unlikely to come loose or give way. In this respect, we further note the provision of a lid (not numbered) for the compartment in the tool cart of Spielhoff, which furthers securing of the removable case. 
The Board then concluded that the Applicant's interpretation (fastening required) was too narrow. Instead, "the arrangement of Spielhoff, where the container is inserted into the top compartment, is encompassed by Appellant’s claims."

My two cents: The Board got this one wrong. I'll agree with that the Broadest definition here – firmly fixed of place in position and unlikely to come loose  – is also Reasonable. But I say the Board overreached in applying the reference to the claims.

Simply put, there was zero evidence in the record that a toolbox placed in Spiehoff's compartment would be unlikely to come loose due to friction along the sides of the compartment. The crude drawings in Spielhoff's suggest that the container is roughly the same size as the compartment, but there isn't enough detail to say that the sizes are close enough to achieve the function implied by "secure."

I give the Applicant points for making claim construction the heart of the argument, but unfortunately Applicant didn't sieze on this particular issue that is implicated by the broadest definition.

The way I see it, the Board improperly speculated about the teachings of the reference. But this could have gone another way.

The Board could have treated the claim language "secured ... when said apparatus is at a working location" as intended use, and then taken the position that the compartment need only be capable of fixing a container in place. Under that theory, the reference anticipates if we can imagine a compartment and a container having relative sizes such that friction fit keeps the container in place. Right?

Friday, January 23, 2015

Taking allowable subject matter during the appeal process

At any time during appeal, an Applicant with an indication of allowable subject matter can accept the allowable subject matter and back out of the appeal. To do this, the Applicant should file an Amendment under § 41.33 that rewrites the allowable dependent claims as independents, and cancels the existing independent claims. The Amendment should be filed as a separate paper, not as part of a Brief.
The Applicant in Ex parte Riley (PTAB 2014) went to appeal in 2012 with all claims rejected. In the Appeal Brief, the Applicant argued each of the three independent claims, as well as dependent claims 3, 4, 10, 15, 16-17, and 20. The Examiner found the argument for dependent claims 15 and 20 to be persuasive, and withdrew these rejections in the Answer. The Answer also stated that claims 15 and 20 would be allowable if rewritten into independent form. In response, the Applicant filed a Reply Brief that cancelled the independent claims and rewrote the indicated dependent claims into independent form.

The PTAB issued its decision more than two years later. The Board first noted that 37 C.F.R. § 41.41 doesn't allow amendments in a Reply Brief. The Board then treated the Reply Brief as "an indication that Appellants do not desire to present arguments as to the remaining rejections" and therefore "summarily sustained" the rejections of all claims except the allowable subject matter.

Instead of trying to amend claims in a Reply Brief, the Applicant should have skipped the Reply Brief and filed an Amendment under § 41.33.  As explained in MPEP 1206, amendments at this time (after the Appeal Brief and before jurisdiction has passed to the PTAB) are limited to: 

  • (1) To cancel claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, or
  • (2) To rewrite dependent claims into independent form.
This procedure for taking allowable subject matter once an appeal is underway is unaffected by the appeal "forwarding fee" that became effective in March 2013.

In the Riley case, the Examiner's Answer had good news, in the form of allowable subject matter. But sometimes the news is not so good. Sometimes the Applicant reviews the Examiner's Answer and realizes that the arguments for the pending claims are not as strong as once believed. The best course of action may then be to pull the case from appeal and amend the claims. To do that, you'll need to file an RCE. As explained in MPEP 1215:
Prior to a decision by the Board, if an applicant wishes to withdraw an application from appeal and to reopen prosecution of the application, applicant can file a request for continued examination (RCE) under 37 CFR 1.114, accompanied by a submission (i.e., a reply responsive within the meaning of 37 CFR 1.111 to the last outstanding Office action) and the RCE fee set forth under 37 CFR 1.17(e).

Wednesday, January 21, 2015

PTAB decisions involving failure to specify a limit in a claim

Today's post will consider various non-prior art issues that might arise when a claim fails to include either an upper or lower limit. In some of these cases, I'm not sure the Applicant even realized a range or limit was implicated.

Ex parte Akers (BPAI 2010) involved an enablement rejection for "at least one" with no upper limit in the claim. (Essentially a recap of a post from 2012, see the full post here:
The claim in Akers was directed to using radiation to test various materials, and the language at issue read "detecting at least one emitted prompt gamma ray." The Examiner gave an enablement rejection, asserting that "[i]t is a notorious scientific fact that statistically meaningful data requires collection of information from not one but from a plurality of events and nuclear interactions." The Applicant argued on appeal that the specification need not enable every embodiment, and the Examiner must show that all multiple ray embodiments were inoperative or not enabled.

The Board affirmed the rejection in Akers, in part because the Applicant admitted that detection did require more than one ray: "As such, Appellant has conceded that the disclosure of the present application does not provide an enabling description for the full scope of Appellant’s claims. Appellant, having chosen the broad claim language, must make sure that the broad claims are fully enabled."

The claim in Ex parte Yamazki (PTAB 2011) recited “a channel length of said semiconductor device is 0.3 m or less." The Examiner issued rejections for inoperability (a type of § 101 rejection) and indefiniteness, used the same rationale for both: the claim did not recite a lower limit for the channel length. The Board reversed both rejections, treating this as a mater of claim construction. The Examiner interpreted the claim to cover embodiments with a zero (or infinitesimally close to zero)  channel length, which would be inoperative according to the Examiner. The Board looked to the specification, which described the channel length as "typically from 0.1 to 0.3 μm." According to the Board, a POSITA informed by the specification "would not have viewed the claim as reading upon non-working embodiments." Similarly, a POSITA informed by the specification would not have found the claim indefinite.

Semiconductor devices were also the subject of the application in Ex parte Lin (PTAB 2011). A dependent claim recited "the photomask of claim 1 wherein the wavelength reducing material has a refractive index larger than 1." The Examiner rejected this claim under § 112 First Enablement, asserting that a POSITA would not know how to make a photomask having a refractive index with no upper limit. On appeal, the Applicant pointed to a section of the Specification which described materials having a refractive index ranging from about 1.3 to 3.5. The Board noted that the issue was not whether the specification described some materials with a refractive index larger than 1, but was instead enablement through the entire scope of the claim (citing In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993)). The Board affirmed the rejection because the Applicant did not address this specific issue on appeal.

 The technology in Ex parte Drzal (PTAB 2011) was graphite composites. The claim language at issue was "expanded from a graphite ... by boiling the intercalcant with radio frequency or microwaves for up to five minutes." The Examiner rejected the claim under § 112 First Written Description, alleging that the specification failed to provide support for the entire range "for up to five minutes." On appeal, the Applicant pointed to these teachings in the specification:
     Heating for 3 to 5 minutes removes the expanding  chemical. ... The intercalant heats up past the boiling point and causes the graphite to expand to many times its original volume"
     In example 1, expanded graphite was prepared by exposing intercalated graphite flakes ... to microwave energy, typically at 2.45 GHz frequency, for a few seconds to a few minutes in an oven.
The Applicant then argued that since the claims did require "boiling," which must necessarily take some period of time, the claims did not encompass zero minutes.

The Board in Drzal interpreted "boiling for up to five minutes" as encompassing a fraction of second, though not zero. "Appellants have not identified, nor do we find, any basis in the Specification or claims which supports a narrower interpretation of the claimed range." Since the Specification did not disclose at what point during the exposure the intercalcant begins to boil (emphasis in original), the Board found the Applicant had not demonstrated possession of a compound as claimed.

Sunday, January 11, 2015

PTAB reverses obviousness when Examiner's rationale amounts to results of combination rather than reason for making it

Takeaway: The Examiner rejected as obvious a claim to an electrode cooling device. As a reason to modify the primary reference to add a frame from which the electrodes were suspended, the Examiner proffered: "for the purpose of suspending the holder". When the Applicant challenged this rationale in the Appeal Brief, the Examiner elaborated by adding this statement:  "Foyn reference and Hardin reference are related to the same technical field; therefore, one skill in the art would combine these references." The Board reversed, finding the Examiner's rationale was conclusory. "At best, [the rejection] describes the results of the proposed combination, as opposed to articulating a reason for making it. [T]he fact that references relate to the same technical field does not, without more, demonstrate the obviousness of their combination." (Ex parte Borgwardt, PTAB 2014.)


Ex parte Borgwardt
Appeal 2012-009099; Appl. No. 11/990,325; Tech. Center 3700
Decided:  October 14, 2014

The technology on appeal related to a metallurgical furnace. An independent claim on appeal recited:
     14. A cooling device for electrodes of a metallurgical furnace, comprising
     a suspension frame; and
     a plurality of individual segments arranged adjacent to each other
for surrounding the electrodes and suspended from the suspension frame,
     at least one of the plurality of individual segments is formed with at least one hinge provided at an upper edge thereof
     for pivotally suspending the at least one of the plurality of individual segments from the suspension frame.
The Applicant added claim 14 as a new independent claim in response after an anticipation rejection using Foyn of originally filed claims 1-13. When the Examiner rejected claim 14 as anticipated by Kongsgaarden and went Final, the Applicant appealed. In response to the Appeal Brief, the Examiner reopened prosecution with a Non-Final Office Action.

In that Non-Final Office Action, the Examiner rejected independent claim 14 as obvious over Foyn (previously cited) and Hardin (newly cited). The rejection also used Kongsgaarden (previously cited) as an alternative secondary reference. The Examiner relied on Foyn for the segments and hinge, and on Hardin / Kongsgaarden for segments suspended from a suspension frame. The Examiner explained the rationale for combining as follows:
It would have been obvious ... to utilize in Foyn, a suspension frame and the segments suspended from the suspension frame, as taught by Hardin or Kongsgaarden, for the purpose of suspending the holder.
The Applicant appealed and traversed several assertions about the teachings of Hardin. The Applicant also attacked the Examiner's rationale as being deficient, as follows:

There is no suggestion in either of Foyn or Hardin for combining their teachings. Nor does the Examiner present any evidence that the generally available knowledge makes the combination obvious. Further, the Examiner failed to state what advantages are achieved by combining Foyn and Hardin. 
After quoting from pre- and post-KSR Federal Circuit cases on obviousness, the Applicant concluded with:

The Examiner failed to cite any evidence that would support the finding that the combination of Foyn and Hardin would make the present invention, as defined by claim 14, obvious.
In a Response to Arguments section of the Answer, the Examiner elaborated on how Hardin disclosed the suspension frame with these quotes from Hardin:
[S]lipping clamp is provided with suspension means, including a plurality of outwardly projecting clevis bracket ... adapted to receive horizontal pivots. The lower ends of tension members are secured to the pivots ... The pivots and the tension members provide flexibility, so that the electrode can deviate appreciably from its normal vertical position, without producing excessive stresses in the electrode and the suspension device 10.
After repeating the original rationale ("[obvious to combine] for the purpose of suspending the holder"), the Examiner elaborated by adding this statement:  "Foyn reference and Hardin reference are related to the same technical field; therefore, one skill in the art would combine these references."

The Applicant filed a Reply Brief that cited to two pre-KSR cases for the proposition that obviousness required a suggestion in the prior art for modifying a reference. The Applicant then argued:
It is respectfully submitted that the Examiner failed to identify support for his conclusion that it would have been obvious to combine Foyn and Hardin or Foyn and Kongsgaarden. It is respectfully submitted that the mere fact that Foyn Hardin (and Kongsgaarden) are related to the same technical field is not a sufficient motivation. Further, the Examiner failed to indicate what advantages are achieved by such combination.
Finally, the Applicant argued that "modifying Foyn in view of Hardin or Kongsgaarden would require a substantial redesign of the Foyn structure" which defeats a prima facie case of obviousness under In re Ratti, 270 F.2d 810 (CCPA 1959). 

The Board reversed the obviousness rejection. The Board started with a discussion of relevant case law:
[I]it is not enough to simply show that the references disclose each element of a claim; in addition, it is important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements in the manner set forth in the claim. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F. 3d 1296, 1303 (Fed. Cir. 2010) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”)); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).

The Board then found that the Examiner's rationale for combining ("for the purpose of suspending the holder") was "conclusory." The Board elaborated as follows:
At best, it [the rejection] describes the results of the proposed combination, as opposed to articulating a reason for making it. Reply Br. 5. As Appellants correctly point out, the fact that references relate to the same technical field (Ans. 9) does not, without more, demonstrate the obviousness of their combination. The relevant technical field relates to the scope and content prong of the Graham analysis. Graham v. John Deere Co. 383 U.S. 1, 17–18 (1966). Concluding references are within the same technical field does not conclude that analysis. Rather, it forms part of the background, upon which the obviousness or nonobviousness of the subject matter must be determined. Id. As the Examiner’s rejections fail to articulate reasoning with rational underpinnings supporting the Examiner’s determination of obviousness, the Examiner’s rejections cannot be sustained. See In re Kahn, supra.
My two cents: The Examiner made it easy for the Board to reverse: a rationale that was clearly expressed as the resulting combination itself rather than a reason to make the combination in the first place. The Examiner just dug the hole deeper with his statement in the Answer "references are in same field, therefore obvious to combine."

Perhaps the Examiner had what he needed in record to make a compelling rejection? The quote from the secondary reference appeared to discuss a benefit of adding suspension ("electrode can deviate appreciably from its normal vertical position, without producing excessive stresses").

Maybe so, but the Examiner didn't clearly articulate this line of reasoning. So kudos to the Applicant for challenging the Examiner's failure to make a prima facie case. I think a lot of Applicants feel Rationale-to-Combine is always a losing argument, but it would be a real shame to leave the argument on the table under these facts.

I view Ex parte Borgwardt as another example of the circular reasoning I blogged about in 2014:
Is it circular reasoning when an obviousness rejection says the reason for adding a feature is to get that feature?
Nice to see the Board once again recognizing this as deficient reasoning. Though as I mentioned in that earlier post, I have seen plenty of cases with a sloppy Examiner rationale yet the Board affirms.

Wednesday, December 10, 2014

Board finds no inconsistency with relying on Official Notice for a claimed feature while also asserting that this feature isn't supported by Applicant's sparse description

Takeaway: The Examiner denied the Applicant's priority claim to a provisional, for failure to adequately describe a claim limitation. According to the Examiner, some description was present, but not in the context claimed. The Examiner then used Official Notice for this same feature in an obviousness rejection. On appeal, the Applicant argued the "facial inconsistency" of these two positions: "asserting the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature." The Board was not persuaded by the inconsistency argument, and cited to Vas-Cath Inc. v. Mahurkar to explain that "a claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application." (Ex parte Timbadia, PTAB 2013.)

Ex parte Timbadia
Appeal 2010002877; Appl. No. 10/712,938; Tech. Center 3700
Decided: March 25, 2013

The application was directed to automated test-taking. During prosecution, the Applicant amended to add these limitations:
     delivering a changed state object at the same time that a triggering event occurs on the testing station;
     upon failure of the testing station, the [state objects] ... are used to recreate the examination on the testing station ... and
     wherein the user will not be penalized for the time that questions are not available.
(Emphasis added for limitations at issue.)
In response, the Examiner switched to a different secondary reference in the obviousness rejection (Ashley)of all independent claims. The Examiner relied on this secondary reference for the "at the same time" feature, and took Official Notice of the new "not penalized" feature. At the same time, the Examiner denied the priority claim because the newly added "at the same time" and "not penalized" features were allegedly not present in the provisional. However, Examiner did not reject any claims under written description or enablement.

In an After Final response, the Applicant argued that the Ashley reference was not prior art because the Applicant's provisional did provide an enabling disclosure for the newly claimed features. In support of this argument, the Applicant pointed to to specific passages in the provisional and explained their relevance. The Applicant also traversed the Official Notice as follows:
Applicants cannot fail to note that this portion of the claims so evidently and precisely enabled by the provisional application is also the same portion of the claims for which the Examiner has relied upon official notice. Per MPEP 2144.03, Applicants thus traverse such taking of official notice as improper as lacking sufficient documentary evidence. Citation of a post-dated alleged prior art reference by the Examiner is erroneous not only for the obviousness rejection presented, but also as grounds for taking official notice that the claimed feature is of such notorious character as capable of instant and unquestionable demonstration as to defy dispute. See In re Zurko, 258 F.3d at 1386.
The Applicant appealed. In the Brief, the Applicant specifically traversed the issue of the priority claim. The Applicant explained that the provisional application described using a test state to recover an exam after testing station failure, and this test state includes an elapsed test time that takes into consideration the amount of time that a test is unavailable to the user. Thus, Ashley was not prior art. In the obviousness section of the Brief, the Applicant also argued that Ashley did not teach the "at the same time" limitation. Notably, this section did not discuss the "not penalized" claim limitation or the Examiner's reliance of Official Notice for this feature.

In the Answer, the Examiner maintained the obviousness rejection of all independent claims. The Examiner discussed the denial of priority in the obviousness rejection. The Examiner acknowledged that the "not penalized" claim language was present in the provisional, but noted this was in the context of accounting for transmission latency rather than in the context of a recovery function (as claimed). In a Response to Arguments section, the Examiner noted there were "significant modifications" and "stark differences" between the provisional and the application on appeal. Also, the Applicant had failed to adequately traverse the Official Notice during prosecution, thus admitting that the "not penalized" feature was well-known.

The Applicant filed a Reply Brief which included a section titled "the Examiner's use of Official Notice was properly traversed, is improper and is Squarely Inconsistent with the Office's Contention that Subject Matter at Issue is Not Supported by Applicants'Own Provisional Application." The Applicant argued that the traversal was proper, as follows:
[T]he traversal highlighted the facial inconsistency in the examiner's logic of asserting that the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature.
On appeal, the Board made findings with regard to "Claims 1 and 13 – Written Description Support" since this issue was contested and impacted the obviousness rejection. The Board found that all features recited in claims 1 and 13 were adequately described in the provisional, so that Ashley was not prior art. With regard to the "not penalized feature," the Board found that the Examiner’s interpretation of what the provisional application describes was "unreasonably narrow." The Examiner incorrectly focused on the provisional's teachings about accounting for transmission latency, but a person of ordinary skill reading the document as a whole "would conclude that recreating the test based on the state of the test at the time of a testing station failure would require not penalizing the user for time lost due to this failure."

Since Ashely was not prior art for claims 1 and 13, the Board reversed the obviousness rejection of these claims. However, claim 20 used slightly different language to describe the "initial state object" feature, which the Board found was not adequately described in the provisional. The Board therefore considered the obviousness rejection of claim 20 on the merits, and affirmed.

With regard to the "at the same time" feature, the Board found no error in the Examiner's finding that Kershaw taught this feature. With regard to the "not penalized" feature, the Board found that the Applicant had not properly traversed the taking of Official Notice because it did not "explain why the noticed fact is not considered to be common knowledge or well-known in the art" (citing In re Boon, 439 F.2d 724, 728 (CCPA 1971)).

The Board also commented on the Applicant's inconsistency argument – that the Notice'd feature was completely missing in the reference yet textually supported by Applicant's provisional:
Appellants have not provided persuasive argument as to why the Examiner’s findings are inconsistent. A claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991).
Finally, the Board noted that any alleged inconsistency was resolved by the Board's finding that the subject of the Official Notice ("not penalized" feature) was indeed properly supported in the provisional application.

My two cents: The Applicant's inconsistency argument has intuitive appeal, but is ultimately flawed. The argument goes like this: "Surely the Examiner's characterization of a feature as 'well-known' indicates that very little description is needed, in which case a sparse description of the same feature by the Applicant shouldn't result in a denial of the priority claim." However, this argument is flawed because it confuses enablement and written description.

A reference has only to enable. Since this can take into account the background knowledge of a POSITA, a sparse description may indeed be enough for enablement. On the other hand, the Applicant's spec has to comply with both the enablement and the written description requirement. And written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." (Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (en banc)).

Unfortunately, when you have a sparse description of a particular embodiment that falls within the claim scope, then try to argue that a POSITA can fill in the rest, the case law on written description goes against you:
The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.
Lockwood v. American Airlines, Inc., 107 F. 3d 1565 (Fed. Cir. 1997).
Or, put another way:
A description of one method . . . does not entitle the inventor . . . to claim any and all means for achieving that objective."
LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005).

Monday, November 17, 2014

Board affirms obviousness and refers to Applicant specification for advantages of adding secondary reference

Takeaway: The Applicant appealed an obviousness rejection of claims directed to a process of manufacturing stents. Though the Final Office Action relied on advantages taught by the secondary reference, the Advisory Action also mentioned advantages disclosed in the Applicant's specification. The Appeal Brief argued that these Applicant-known advantages actually showed that the secondary reference was non-analogous art. The Board affirmed the obviousness rejection. Though the Decision mentioned advantages taken from the secondary reference, the Board also appeared to impermissibly rely on the Applicant-known advantages as a reason to combine. (Ex parte Sciver, PTAB 2014.)


Ex parte Sciver
Appeal 2012011728; Appl. No. 12/748,271; Tech. Center 1700
Decided:  October 31, 2014

The application was directed to systems methods for coating a stent with a drug.