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This One Weird Trick Isn’t Reasoned Analysis to Support a Combination Under 103 March 7, 2017

Posted by Brian Schar in Federal Circuit, General, Patent prosecution, USPTO.
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Particularly after the recent In re van Os, the portion of KSR cited therein about the requirement to provide reasoned analysis to combine references is an important bit of precedent to remember.

In re van Os states that “the flexibility afforded by KSR did not extinguish the factfinder’s obligation to provide reasoned analysis.  Instead, KSR specifically instructs that when determining whether there would have been a motivation to combine, the ‘analysis should be made explicit.'”  (page 4, citation omitted).

Note that the “reasoned analysis” has to do to the motivation to combine the specific references cited by the Examiner.

The “one weird trick” referenced in the clickbaity headline refers to a practice favored by some Examiners, in which the Examiner performs a quick search of one or more references and picks out of at least one reference purported advantages over that reference’s prior art.  The Examiner then cuts and pastes into the Office Action those purported advantages over the reference’s prior art, and relies on those cut & pasted statements as being the “reasoned analysis” as to why that reference should be combined with one or more other references.  See the switch?

A key tipoff is when your claims are directed to particular subject matter, and the purported reasoned analysis to combine references has nothing to do with that subject matter, the Examiner has utilized this One Weird Trick to combine references without actually performing any analysis at all as to why those references should be combined.

When you have an office action with an obviousness rejection that includes gobbledygook that is completely irrelevant to the claims, do a quick word search on that gobbledygook inside the reference, and usually you’ll find it at the end of the Background or somewhere in the summary.  Cut and paste that right back in your Office Action response and call it out as improper under MPEP 2143 and In re van Os.  At worst, you’ll get to repurpose that in your appeal brief.

Words matter! April 22, 2016

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.
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In patent prosecution, the specific word choices made in both the specification and the claims are critical to the validity and enforceability of those claims.

The Federal Circuit confirmed this in In re Man Machine Interface Technologies LLC.  The claims included “adapted to” limitations, such as “a body adapted to be held by the human hand.”  The drafter may have thought that “adapted to” was equivalent to the more-common “configured to.”  However, the Federal Circuit pointed out that, according to its precedent, “the phrase ‘adapted to’ generally means ‘made to,’ ‘designed to,’ or ‘configured to,’ through it can also be used more broadly to mean ‘capable of’ or ‘suitable for.'”  (In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).

Indeed, this language is lifted almost directly from In re Giannelli, which in turn lifted that language almost directly from Aspex Eyewear, which utilized dictionaries to construe the phrase “adapted to.”  (Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012).

The Federal Circuit clearly considers “capable of” to be a broader construction than “configured to.”  That makes sense.  For example, the tip of a butter knife might be “capable of” turning a conventional slotted screw, but that butter knife is not “configured to” be used for that purpose.

However, anyone who has prosecuted patents at the USPTO knows that the Office tends to apply a “capable of” construction to every claim limitation, whether the applicant has chosen to limit his or her claims with an “adapted to” or “configured to” phrase, or in some other manner.

Here, the patentee was saved by the “reasonable” prong of the broadest reasonable interpretation standard, just as happened in In re Giannelli.  The specification made it clear that “adapted to” had its narrower meaning of “made to” or “designed to.”  Further, the specification expressly distinguished the type of device disclosed in the key reference cited by the Examiner.  As the Federal Circuit stated,” [t]he broadest reasonable interpretation of a claim term cannot be so broad as to include a configuration expressly disclaimed in the specification.”

There are two lessons here.  First, make sure you fully understand the meaning of terms like “adapted to” before using them in a patent claim.  There are hidden pitfalls in virtually every approach to claim drafting, and it takes time to learn them, but you must learn them.  Second, the Federal Circuit continues to emphasize that the broadest reasonable interpretation of claim language must in fact be reasonable.  While it may be difficult to convince Examiners of this at times, hold fast to this argument, and emphasize it on appeal.


A thought about “patent reform” April 1, 2015

Posted by Brian Schar in Federal Circuit.
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To the extent that there is a perceived problem in the business community regarding patents, a perennial complaint has to do with uncertainty.  If a manufacturer gets sued, it’s expensive, and damages can be huge.

However, isn’t this more of a problem with damages than a problem with patents themselves?  Having just attended a very information CLE class centered on the VirnetX case and its progeny, the Federal Circuit has inserted a lot more rigor into the damages analysis – which is something that reduces damages uncertainty.  Still, if a legislative solution to the uncertainty problem is sought, it would seem more productive to come up with a statutory formula for patent damages, rather than yet another set of statutes that deal with patents themselves.

A mortal wounding of McKesson January 31, 2013

Posted by Brian Schar in Federal Circuit, General, Patent prosecution.
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After the McKesson decision, many patent attorneys, including myself, thought the IDS armageddon would soon arrive.  McKesson arguably required the applicant to submit in a particular application references from all related applications, as well as office actions from those cases if the claims therein were sufficiently similar to those in the particular application.   At a minimum, related applications would include any case (US or foreign) that claims priority to the particular application at issue.

As time progressed, I was surprised to find that this particular rationale for finding inequitable conduct – failure to submit office actions from related applications – was not applied routinely by the Federal Circuit.  My position evolved to one in which McKesson was limited to its facts.

Now, post-Therasense, last fall’s precedential Federal Circuit decision in 1st Media v. Electronic Arts may have slain McKesson without mentioning it by name.  In 1st Media, the applicant’s attorney failed to submit art in a US application that had been cited as “Y” art (that is, obviousness art) in the corresponding application pending at the European Patent Office.  The attorney also failed to cross-cite art among different pending US applications in the same family.  The reason given was that the attorney had recently set up a solo practice out of his home, which was “very active,” and the citations were missed.

The Federal Circuit assumed that the art that was not cross-cited within the family was material.  (p. 14).  Turning to the second prong of Therasense, the Court then stated:

Knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive. Moreover, it is not enough to argue careless-ness, lack of attention, poor docketing or cross-referencing, or anything else that might be considered negligent or even grossly negligent. To sustain a charge of inequitable conduct, ‘clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.'”  (pp. 12-13).

Thus, even under facts very similar to those of McKesson, absent proof of a deliberate decision to withhold a known material reference, the failure to cross-cite references and office actions within a family is not inequitable conduct.

While the Federal Circuit did not even mention McKesson, by addressing the second, intent prong of Therasense1st Media has declawed the fierce beast that McKesson used to be.

Another argument against obviousness September 17, 2012

Posted by Brian Schar in Federal Circuit, Patent prosecution.
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As I catch up on recent Federal Circuit precedential decisions, I was struck by this piece of analysis in Kinetic Concepts v. Smith and Nephew:

“Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.” (at page 46)

The Federal Circuit seems to be saying that, if the prior art teaches two devices that are effective for a particular purpose, there is no rationale for combining those devices in order to accomplish a different purpose.  That is, if A and B are equally effective at solving problem X, then there is no reason to combine them to solve problem X, or a different problem Z not mentioned in either reference.  I need to think about this one some more, but nevertheless I do think that this Kinetic Concepts argument against combining references may be just as useful as the major MPEP 2143.01 arguments.

An anticipating reference must be enabled February 28, 2012

Posted by Brian Schar in Federal Circuit, Patent prosecution.
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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.
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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.
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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.
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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.

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.