Wednesday, September 17, 2014

New Federal Circuit decision reminds prosecutors to pay attention to entire chain in claim to priority

A new Federal Circuit decision, Medtronic Corevalve v Edwards Lifesciences, deals with priority claims and underscores the importance of making sure each application in the continuity chain has a proper reference to the entire chain. 

Ryan Alley covered this decision on his Federal Circuit blog. Read Ryan's post here: 
Medtronic Corevalve v. Edwards Lifesciences – Family & Priority Lessons

Ryan's blog is valuable to me because he always offers insight as to how a decision affects patent prosecutors. Here, Ryan suggests that in reviewing the chain of priority claims, we look at the actual specification and any amendments applied, and not rely on Filing Receipts or PAIR data. Ryan also reminds us that a defect can be cured during the application lifetime by a Petition to Accept Delayed Benefit Claim, or by reissue if the defective application has already issued.

Monday, September 15, 2014

Sample of Petitions to request republication

C.F.R. § 1.221 allows an Applicant to correct errors in published applications, by filing a petition that requests republication of specifically identified errors. This week I'll review a small sample of Petition Decisions for a Request for Republication. The interesting issues here are:
  • What's "material" ?
  • What's a "PTO mistake" ? 
These are important, since only mistakes that are both material and attributable to the PTO can be filed with no fees, under C.F.R.  § 1.221(b); otherwise, the filing is under C.F.R.  § 1.221(a) and a fee is owed. MPEP 1121 indicates that OCR errors are not considered PTO mistakes if caused by poor quality text in an Applicant submission. And the MPEP describes "material mistake" as one "that affects the public’s ability to appreciate the technical disclosure of the patent application publication or determine the scope of the provisional rights that an applicant may seek to enforce upon issuance of a patent." (MPEP 1130.A).

Today's post will discuss materiality in the context of a Request for Republication. A future post will consider source of the mistake – PTO or Applicant. 

Materiality wasn't discussed in some of the Decisions I reviewed, presumably because the issue was clear on its face. For example, in Petition Decision 03-12-09 in Appl. No. 11/976,414, the Office summarily denied a request to correct a missing "and" in the title. This Decision did note (in dicta) that the title error could have been avoided if the Applicant had filed a Request for Corrected Filing Receipt.

Petition Decision 01-07-2009 in Appl. 11/976,182 is another one without a discussion of materiality.  The Office summarily granted a request in which the published claim read "wherein the second RF device is protocol is one of Bluetooth ...". The PTO apparently failed to apply a Preliminary Amendment that deleted one of the duplicate noun phrases ("wherein the second RF device is protocol is one of").

Petition Decision 02-05-10 in Appl. No. 11/974,186 is yet another Decision lacking discussion of materiality. The Office granted a request to correct the published claim "binds to the serum protein at least one physiological pH value of less than 6.7..." when a Preliminary Amendment added another instance of the preposition "at" ("binds to the serum protein at at least one physiological pH value of less than 6.7").

In some of the other Decisions, materiality seemed to be a closer call and was discussed in the Decision.

Petition Decision 05-15-09 in Appl. No. 11/969,182 involved capitalization in a chemical compound. Specifically, the compound in the claim read SIHpRq rather than SiHpRq. The Office denied the request for republication after finding the mistake was not material. The Decision explained that "the public would recognize the proper formula from the context which describes the molecule as 'an organic silane'."

Petition Decision 04-06-2009, Appl. No. 11/972,654 involved a Preliminary Amendment which deleted a list of elements ("one or more halogen (F, Cl, Br, I) atoms") from a claim. The patent publication did not take this deletion into account. The Office denied the request for correction, finding that the mistake was not material. "The error is a typographical error, which is clearly understandable by one of ordinary skill in the art in reading the claim, as the listed atoms are halogens" (Emphasis added.)

Petition Decision 06-08-2010 in Appl. No. 11/968,925 involved an independent claim reciting "a polynucleotide selected from the group consisting of", followed by group members designated by lower case letters: (a), (b), ... (j). Each of dependent claims 2-11 then claimed one of the group members, identified by lower case letter. In the patent publication, dependent claim 11 referred to subpart (O) of claim 1, rather than subpart (j). The Office denied the request for republication as not material. Since the independent claim referred to subparts (a) through (i), and there was no subpart (O), a person of skill in the art "would recognize the (O) in claim 11 to be an erroneous printing and understand the intended reference to (j)."

My two cents: There isn't a lot of guidance here about materiality, but the focus seems to be on reading in context, and on the knowledge of a POSITA. Even if a POSITA is initially confused by two upper case letters in SI HpRq, the meaning would be understood because the spec described an "organic silane." Similarly, a POSITA wouldn't be confused by the presence of "Fl, Cl, Br, and I" after the word "halogen," since these elements are halogens. I'm not a chemist, but I'm persuaded by the PTO's reasoning on these two.

In my mind, the polynucleotide claim (the one using a lower case letter to identify a group member) is a closer call. OK, I can see that (O) in dependent claim 11 is a mistake, since the independent claim only refers to (a) through (j). But how does the reader figure out which lower case letter was really intended?

The Petition Decision expected the reader to figure out that the first set of dependent claims, when considered as a whole, covered all 10 polynucleotides. Dependent claims 2 through 10 referred to polynucelotides (a) through (i), so isn't it logical that dependent claim 11 should refer to (j)? Is this asking too much of the reader?

According to MPEP 1130.A, we look at materiality from the viewpoint of "the public." The public doesn't have much chance of understanding a patent, so I'll make things simple and assume that "the public" really means "POSITAs." Even so, while it only takes a casual reading by a POSITA to figure out that (O) is wrong, it takes more work to figure out that (j) is right.  So I think the PTO got this one wrong: this mistake is material.

One of the Decisions – Petition Decision 05-06-2010 in Appl. No. 11/968,527, denied for being untimely – notes that an explanation of materiality may be a good idea:
Relevant copies of application papers may facilitate processing it it is not readily apparent where the error occurs. If it is not clear why the error is a material error, then explanation may be warranted.
Applying this to the polynucleotide claim, maybe the Request for Republication would have been granted if the Applicant had explained materiality, discussing it in terms of the amount of work needed to figure out which polynucleotide was intended by the drafter. Or maybe in coming up with this explanation, the Applicant would be convinced that the mistake wasn't material after all. By the way, none of the petitions I reviewed included any real explanation of materiality.

As a side note, the PTO doesn't maintain a database of all Petition Decisions, so it's not easy to search for them. However, Google does index some Petition Decisions, and that's where I found these. See USPTO Bulk Data - Patent Petition Decisions for more info. Of course, once you have the application number from the Decision, you can get the entire file history on PAIR.

Monday, September 8, 2014

PTAB says "identifying a number of patients" requires identification of a group but not a specific number

In a post from earlier this year – When does "a" mean "the" – I  discussed the meaning of "A number of" as used in a claim. As I noted in that post, typical English usage would be "THE number of widgets" but because THE has a special meaning in claim language, drafters sometimes rephrase as "A number of widgets".

The earlier post was about two Board decisions that considered whether this phrase was indefinite, since the phrase was amenable to two interpretations. One decision said indefinite, one said not indefinite.

I've found another decision in which the Board came at this phrase from a different angle – claim construction rather than indefiniteness. In Ex parte Scherpbier, the claim limitation read "identifying a first number of patients at a particular location awaiting processing at a particular treatment process stage." The Applicant argued that the prior art did not identify the actual number in the phrase “a … number of patients.” The Board said the claim did not require this.

     ... The issue here is the proper interpretation of this phrase. Unfortunately, Appellants chose an English language idiom generally referring to an indefinite group of patients for this limitation. In the face of a limitation susceptible to plural reasonable interpretations, the Office may test each interpretation against the art, because “[i]t is the applicants’ burden to precisely define the invention, not the PTO’s.” In re Morris, 127 F.3d 23 1048, 1056 (Fed. Cir. 1997).
     Although it is possible to interpret the claim as identifying the actual numeric total of such patients, it is equally proper to interpret the claim as identifying some indefinite group of patients. [Indirect reference to definition from McGraw-Hill Dictionary of American Idioms and Phrasal Verbs.] The art clearly identifies such an indefinite group, and this is how the Examiner interpreted the claim phrasing.
     Given no clear exclusion of such an interpretation in the claim, we find the Examiner’s construction reasonable in view of the ordinary and customary idiomatic usage of this phrasing and the art describes such identification. 
The Board did not enter a new indefiniteness rejection.

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

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.

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 to quickly look at recent decisions of interest to me. 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. has some analysis features too: it can generate spreadsheets for decisions by judge, law firm, tech center, etc.