An anticipating reference must be enabled February 28, 2012
Posted by Brian Schar in Federal Circuit, Patent prosecution.add a comment
Clearvalue, Inc. v. Pearl River Polymers, Inc., a recent precedential decision from the Federal Circuit, emphasized that a 102 reference must be enabled to be a proper reference. This is not new law, but Judge Moore stated it clearly: “To anticipate a patent claim under 35 U.S.C. §102, ‘a reference must describe…each and every claim limitation and enable one of skill in the art to practive an embodiment of the claimed invention without undue experimentation.’ Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).”
Given that there are significantly fewer avenues for challenging a rejection under 102 as compared to a rejection under 103, a key part of any response to a 102 rejection must include an evaluation of the allegedly-anticipating reference to determine whether that reference is enabled as to the claim limitations in question.
Definitions and strategy February 9, 2012
Posted by Brian Schar in Federal Circuit, Patent prosecution, USPTO.1 comment so far
Recently, the Federal Circuit decided Thorner v. Sony Computer Entertainment America LLC. That case clearly lays out the circumstances in which an applicant is considered to have acted as his or her own lexicographer with regard to a claim term. “It is not enough for a patentee to simply disclose a single embodiment or use a word in the same manner in all embodiments; the patentee must ‘clearly express an intent’ to redefine the term.” (slip op., p. 5, citations omitted).
While there are no magic words with which an applicant must “clearly express an intent” to define a term, there is no substitute for phrases such as “‘Term’ is defined to mean…”. After the applicant has acted as his or her own lexicographer for a claim term, “that definition will control interpretation of the term as it is used in the claim.” (MPEP 2111.01(IV)). While this can be limiting, it can also be powerful, as it removes claim interpretation from the Examiner and puts it in your hands.
There are interesting strategic implications that follow from acting as one’s own lexicographer. For example, one could expressly define a term “widget” to have a particular meaning, such as “a longitudinally extending bar with a polygonal cross section.” One independent claim might utilize the term “widget,” while another might claim in place of the term “widget” the actual definition of the term widget, or better yet a variant of that definition. For example, claim 1 might claim a widget, while claim 10 might claim a longitudinally extending bar with a closed cross-sectional perimeter. In this way, you can easily obtain claims of different scope, which has advantages both on offense and on defense. Further, one can have the benefit of expressly defining a term in one claim in order to control its interpretation, and the benefit of using different words in another claim such that one is not limited to an express definition set forth in the specification.
Boiled down to a one-sentence summary, defining a term doesn’t mean you have to use that term in each claim, but it gives you the power to control interpretation of that term and the opportunity to vary the scope of the independent claims within a single patent to prevent the interpretation of the claims from being unduly limited.
In re Klein and the “Field of the Invention” August 31, 2011
Posted by Brian Schar in Federal Circuit, Patent prosecution.add a comment
In re Klein has been discussed in various fora since it was decided a few months ago. The purpose of this post isn’t to add to that discussion, but rather to suggest a patent drafting approach that can help when oddball art gets thrown at you in a 103 rejection.
In re Klein relied largely on In re Clay (966 F.2d 656 (Fed. Cir. 1992)), which set out a two-part test for determining the scope of analogous prior art: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Klein primarily dealt with the second prong of this test. However, the “field of endeavor” is part of both prongs of the test. Happily, the drafter can take control of what exactly the field of endeavor is by using the “Field of the Invention” section of the application.
One does not want to be overly limiting in setting forth the “Field of the Invention.” However, one can limit that description in a useful manner that is not overly limiting as to claim scope. To provide an example from the medical device industry, consider a stent. A stent is a complex device that is costly to develop and get approved, and sells for significantly more money than plumbing supplies of the type one would find at Home Depot. The manufacturer will never compete with plumbing equipment, and will never sue a manufacturer of that equipment. In such a situation, a restriction of the “Field of the Invention” along the lines of “a structure implantable in a body lumen to facilitate fluid flow through that lumen” doesn’t alter the claim scope in any practical manner. The salutary effect of such a description of the field of the invention is that, when a reference from 1924 about washing machine hose is cited as prior art, one can point to the Field of the Invention and the first prong of the two-part test of In re Clay and knock out that reference. Even if you can’t knock it out entirely, it may force the PTO into the second prong of In re Clay, where it must make the more difficult showing that the disclosure of, e.g., an 1885 carpentry tool is “reasonably pertinent” to the field of the invention.
I have not battle-tested this strategy, but I plan to as appropriate. It may be a simple way to make it easier to knock out oddball references that pop up in the course of 103 rejections.
Therasense May 25, 2011
Posted by Brian Schar in Federal Circuit.1 comment so far
My first take on the Therasense opinion, released today, is generally positive. The Federal Circuit has set out a bright line rule as to what is material with regard to inequitable conduct, which is good.
However, Therasense is contrary to the “cite everything” requirement of McKesson, and the Therasense opinion acknowledges that a number of prior precedential Federal Circuit cases apply a different standard. The Court sat en banc, meaning that it could overrule prior inconsistent precedent. However, Therasense did not expressly overrule McKesson or other now-inconsistent cases. I need to find my litigator hat and figure out what this means with regard to earlier inconsistent precedential opinions, or better yet just ask a litigator if now we can finally stop the madness of McKesson.
Two separate things are not one thing September 24, 2010
Posted by Brian Schar in Federal Circuit, Patent prosecution, USPTO.3 comments
I have been absent from my blog for quite some time, first for vacation, then for catching up from vacation. Part of catching up is reading Federal Circuit opinions that I missed while I was gone. One of the more interesting, for me, has been Becton Dickinson v. Tyco Healthcare.
One of the more annoying, and lazy, rejections that I receive is of a claim to A+B, where A and B are separate items, over a reference that only discloses A, the rationale being that “A is both A and B.” It’s a veiled inherency rejection that I typically handle in the same manner as any unsupported inherency rejection. Happily, Becton Dickinson gives us another arrow in our quiver to combat those rejections. In that case, claim 1 claimed 4 separate elements. As the Federal Circuit said, “[w]here a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct components’ of the patented invention.” (Becton Dickinson, slip op. page 10). This is particularly true where the specification “confirms” that the separate claimed elements are in fact separate elements. (Becton Dickinson, slip op., page 11). This is even more true where the proposed construction “renders the…claims nonsensical.” (Id.). Of course, a nonsensical construction in litigation is necessarily unreasonable in prosecution, implicating the “broadest reasonable construction” guideline. Where you claim separate elements, and the specification confirms that such elements are separate, you are entitled to rely on an interpretation in which those separate elements are indeed separate.
Becton Dickinson also provides a great weapon against the unreasonable interpretation of the phrase “connected to” . I have had Examiners contend, with a straight face, that separate objects across the room are “connected to” one another. The argument goes something like this: if tool A is sitting on table B, which rests on floor C, from which wall D extends, and item E extends from the wall, then A is connected to E. I have also heard Examiners contend that a single unitary object – usually something simple like a rod or bar – is really two things “connected to” each other at an arbitrary point inside the unitary object. Usually when I hear one of these lines of “reasoning” at an interview I begin to compose the appeal brief in my head. Fortunately, the Federal Circuit brings some much-needed common sense to the issue, which may help prevent appeals on this issue. One asserted claim required two separate elements to be “connected to” one another. (Becton Dickinson, slip op., p. 11). However, those elements were separate and distinct, such that if those separate elements were instead ”one and the same,” then the claim would require that “one and the same” entity to be “‘connected to’ itself…a physical impossibility.” Score one for simple logic and common sense.
These are additional arguments for Office Action responses and appeal briefs in which the Office has taken an unreasonable stance in claim construction and gone far beyond the broadest reasonable interpretation of a claim.
First impression of Bilski June 28, 2010
Posted by Brian Schar in Federal Circuit, Patent prosecution.1 comment so far
At first blush, Bilski seems to be entirely consistent with KSR, in the sense that the Supreme Court prefers a vague, undefined morass to a clear, albeit flawed, standard. The money quote:
“[T]he patent law faces a great challenge instriking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.”
I thought that establishing that position was the point of the Supreme Court granting certiorari in this case. I think the justices realized this case wasn’t going to be as easy as they first thought, so they decided to punt.
Precedent, “arbitrary and capricious” decisions, and Zurko May 17, 2010
Posted by Brian Schar in Federal Circuit, General, Patent prosecution, USPTO.2 comments
Although proceedings in the USPTO of all kinds have their own idiosyncracies, they are all administrative proceedings governed by administrative law. The Supreme Court confirmed this in Dickinson v. Zurko, which applies to the entire PTO – both the Trademark Office and the Patent Office. Zurko requires that administrative reasoning behind particular actions not be arbitrary or capricious, and that such reasoning must be supported by substantial evidence.
Last week, the Federal Circuit handed down a decision in a trademark cancellation proceeding that has interesting implications for patent practice as well. The TTAB denied appellant Fred Beverages’ Motion for Leave to Amend Appellant’s Petition to state new grounds of cancellation and add new classes, without submitting a fee with that motion. The TTAB denied that motion on the grounds that no fee was submitted for the new classes to be covered by the amended Motion for Leave. However, as the Federal Circuit pointed out, the TTAB has no stated rule that a Motion for Leave that adds classes to a cancellation action requires payment of a fee corresponding to each added class. More importantly for our purposes on the patent side, the Federal Circuit looked to several cancellation proceedings that are freely available for public viewing via TTABVUE. In those cancellations, the TTAB granted similar Motions for Leave and then gave the successful petitioner a set period of time to pay for the additional classes. In the words of the Federal Circuit: “Where an agency departs from established precedent without a reasoned explanation, its decision will be vacated as arbitrary and capricious.” The Federal Circuit did so here, remanding the case to the TTAB.
So what does this mean for patent practitioners? Most significantly, the Federal Circuit did not hestitate to go to the documents available on the USPTO website for similar proceedings, and find the USPTO’s actions in those cases precedential with regard to the case at issue. With regard to issues of procedure rather than law, the entire database of BPAI final decisions and of publicly-available Image File Wrapper (IFW) documents are now clearly precedential. When appealing or petitioning a particular case, find two or more other applications in which an examiner or the Board ruled differently on a matter of procedure. That difference may rise to the level where the PTO departed from established precedent in your particular case. If so, that departure is arbitrary and capricious, and Zurko is clearly implicated.
Potentially more useful than the USPTO’s database of final decisions and IFWs is the practitioner’s own internal database of, and professional experience with, particular USPTO procedural actions. For example, the PTO may have treated a certain procedural matter one way in your applications for a number of years, where that suddenly changes without a corresponding change to the MPEP or USPTO. You will have personal knowledge of cases in which the PTO has acted differently in the past such that its new actions are a departure from established precedent, and at least one of those cases is likely to have published such that the IFW can be used to establish what that established precedent was.
Taking this tack in an appeal brief is confrontational, but an appeal is confrontational. One can make the argument of arbitrary and capricious departure from established precedent in a non-inflammatory manner. In addition, this argument is based in law, rather than technology, which increases the chances that the SPE and TC Director will simply pass your appeal brief up to the BPAI for a decision instead of mailing you back yet another final action in response to your appeal brief. I will be curious to see if a case similar to Fred Beverages makes it to the Federal Circuit from the patent side of the PTO in the near future.
Google Scholar, 1; LexisOne, 0 March 31, 2010
Posted by Brian Schar in Federal Circuit.add a comment
Years ago Lexis One was a reliable site for obtaining paginated Federal Circuit opinions free of charge – as long as you didn’t mind that being limited to cases only a few years old. For an in-house attorney at a small company with no budget for caselaw search, it was a godsend.
Just now, I spent about 20 minutes trying to log on to Lexis One; it let me log on to the splash screen, then asked me to log on again when I wanted to look at a particular case. The first logon wouldn’t work with the second request; I’d never had that happen before. While I was on hold with the well-intentioned but clueless tech support staff; I found the paginated case with Google Scholar, and while the tech was telling me why he couldn’t help me (because, heavens, I use IE, only the most common browser on Earth), I printed the case. Bye bye, Lexis One.
The TTAB loses again November 6, 2009
Posted by Brian Schar in Federal Circuit, General, Trademark.2 comments
The Federal Circuit has put the TTAB on a short leash this year. In this recently-decided case, Judge Moore slapped the TTAB for bureaucratic gamesmanship that “conflicts with the plain language of…regulation.” The TTAB had drawn an artificial distinction between a trademark “application file” and ”documents and other things filed in connection with the application.” That distinction was used to cancel a trademark, because the trademark holder had failed to resubmit evidence that was already in the trademark prosecution history. The Federal Circuit saw right through that, stating flatly, “[t]hat was error.”
Perhaps if we’re lucky the Federal Circuit will turn the same kind of attention to the BPAI in 2010.
MPEP 2143.01(II) October 13, 2009
Posted by Brian Schar in Federal Circuit, General, Patent prosecution, USPTO.add a comment
MPEP 2143.01(II) directs that, “where the teachings of the prior art conflict, the Examiner must weigh the suggestive power of each reference.”
This section of the MPEP describes a fact situation that does not arise often in practice, in my experience. In the cited case, In re Young, 927 F.2d 588 (Fed. Cir. 1991), the application was rejected as obvious over a patent to Carlisle. The applicant, Young, claimed a particular spacing of air guns in water to generate a seismic pulse. According the USPTO and the Federal Circuit, Carlisle disclosed the same spacing for chemical explosives in order to generate a seismic pulse in water.
Young challenged the Carlisle patent, based on a later-published article published in a peer-reviewed journal by Knudsen. Young claimed that the experiments conducted by Knudsen discredited the usefulness of the particular spacing of Carlisle, thereby teaching away from the use of Carlisle. The Federal Circuit held that it didn’t matter whether Knudsen contradicted Carlisle; Carlisle was still relevant “for what it disclosed in relation to the claimed invention.” Nevertheless, “[t]he Board must consider all disclosures of the prior art…to the extent that the references are, as here, in analogous fields of endeavor and thus would have been considered by a person of ordinary skill in the field of the invention. The Board, in weighing the suggestive power of each reference, must consider the degree to which one reference might accurately discredit another.” (emphasis added)
Turning to the substantive content of Knudsen and Carlisle, the Federal Circuit held that “Knudsen is not so credible or persuasive of a contrary teaching that it would have deterred the skilled artisan from using the teachings of Carlisle.” The conditions of the experiments of Knudsen were different enough from the content of Carlisle, and “did not accurately test Carlisle.” As a result, a skilled artisan would have dismissed Knudsen, not Carlisle. And with that, the applicant’s hopes were dashed against the unforgiving shoals of 35 USC §103.
The key takeaway from In re Young that didn’t make it into the MPEP is the “credible and persuasive” test. If you attempt to rebut a first reference with a second reference that purportedly discredits the first, you have to be sure that the second reference is “credible and persuasive.” If so, that second reference might be sufficient to overcome the first reference.
Even so, one has to be careful with this argument. In this fact pattern, what you’re really arguing is that the first reference is relevant to the claims, but that a second reference would have discouraged people from utilizing the teachings of that first reference. That argument essentially admits that the obviousness rejection would have been valid, but for the uncertainty introduced by the second reference. For that reason – the essential admission of the relevance of the first reference – the Federal Circuit set the bar pretty high with the “credible and persuasive” test. Even if you are successful, this argument opens the door for the Examiner to reject the claims under 102 instead, based on inherency.
Nevertheless, MPEP 2143.01(II) may be useful in a new and/or unpredictable art where there is significant controversy about a particular aspect of the claims. One or more references that contradict a cited reference may be produced to show that one of ordinary skill in the art would not have blinded followed the cited reference, but instead would have been just as likely to reject that cited reference and head down another path to the invention.
Next up, I will finish out my intermittent series on MPEP 2143.01 with a discussion of MPEP 2143.01(I).
