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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 reference that teaches away from X isn’t “capable of” X December 11, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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One of the more frustrating rejections to receive from the USPTO is one in which the Examiner waves his or her hands around and states, “the disclosure of this reference is capable of X, so, 103.”  There is usually very little technical reasoning that accompanies such a rejection.  Instead, there are quotes of random sections of the disclosure strung together, with no analysis accompanying that.  While these rejections are frustrating, at least they tell you the end is in sight, because if that’s the best the Examiner can do, you can just win on appeal and go to issue.

That is exactly what happened in Ex parte Henry.  Henry claimed a blood flow monitor that included, among other elements, a display configured to show a visual indication of blood flow rate between a threshold frequency down to a zero flow rate.  (Probably it’s important to know when a patient has a zero blood flow rate!)  The claims were rejected under 103 based on modifications to a US patent to Moehring.  The problem was that, as the PTAB pointed, out, “Moehring expressly excludes displaying low- and zero-frequency data.”  This didn’t stop the Examiner, who whipped up a word salad to justify the rejection: “one of ordinary skill in the art would have found it obvious to try a method of visually displaying data from a threshold frequency down to zero while ‘refining efforts to reduce the negative effects of tissue/probe motion and noise not indicative of blood flow’ that are described in Moehring, thus providing a ‘display of raw/unfiltered data from zero frequency to a defined upper threshold frequency.’”  Further, the Examiner found that “the low-frequency data deemed to be noise by Moehring are ‘not representative of blood flow but instead tissue motion, and therefore, the signal present fully represents blood flow.’”

The PTAB made short work of this.  “Moehring’s system…excludes all low-frequency signals, regardless of source,” and thus teaches away from displaying such signals.  The PTAB did not expressly hold that the Examiner provided insufficient technical reasoning, but it didn’t have to; the teaching away argument was sufficient.  Nevertheless, the PTAB did point out that the Examiner provided no support for certain aspects of the argument.

The rejected claims included functional language.  The PTAB pointed out that the “presence of functional language in an apparatus claim does not excuse the absence of a prima facie case of obviousness.”  Rather, “the prior art apparatus must be capable of performing the claimed function.”  Where the reference “teaches away from those very functions,” then there can be no valid rejection of the claim based on its inclusion of functional language.

To me, the first key takeaway of Ex parte Henry is that an solid “teaching away” argument demolishes a bad 103 rejection with poor or no technical reasoning.  It has to.  If the reference expressly says that the invention doesn’t include X, then no amount of technical reasoning can show that the reference taught an invention that required X.  The second key takeaway from Ex parte Henry is that a solid “teaching away” argument directed to a function in the reference obviates any “functional language” objection to the claims.

Carefully review the cited art when you receive a 103 rejection.  The “teaching away” argument is a powerful tool, when you can use it.

The house loses all pushes October 24, 2014

Posted by Brian Schar in General, Patent prosecution, USPTO.
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Ex parte Lucas is an interesting example of a situation that you don’t see that often – although it’s probably a situation that should arise a lot more often than it does.

Lucas claimed a “double throat pulsation dampener for a compressor.”  The PTAB opinion is short and does not go into detail about what, exactly, that is.  I used Google to find a web page from Flowguard USA that describes such a thing, in case you, the reader, are interested.  (I have no commercial or other relationship with Flowguard USA and did not even know they existed until I searched “pulsation dampeners.”)  Lucas claimed a dampener that, among other things, had airflow reversed compared to the prior art.

The Examiner rejected the claims under 102 and 103 on particularly flimsy grounds, and cited art; the PTAB found that the Examiner provided no evidence or technical reasoning for either rejection.

However, the PTAB also found that the Applicant provided no evidence or technical reasoning to demonstrate why the cited device may or may not work with the air flow reversed.

As a result, the PTAB held that “at most, the issue is in equipoise. As the Examiner bears the burden of establishing patentability, the Examiner’s rejection cannot be sustained on the record before us. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967)”

This PTAB decision is nonprecedential.  However, I think it would behoove appellants to essentially cut and paste the holding of Ex parte Lucas into their reply briefs, as a reminder in case of a push, the house loses.

The shortest PTAB opinion yet? July 30, 2014

Posted by Brian Schar in General, Patent prosecution, USPTO.
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Ex parte Daimer may set a record for the shortest PTAB opinion to date.  The actual opinion is a single paragraph and occupies about half a page of a document that is only 3 pages long.

Mr. Daimer claimed a carbothermic reduction furnace that has a “lining structure having a low Fe content of less than 0.1 % by weight.”  The Examiner cited a reference that was completely silent as to the presence or absence of Fe in a lining structure, so he interpreted that silence as meaning that Fe was present at a 0% level – “less than 0.1% by weight.”

In response, the APJ cited a single line from a precedential Federal Circuit case, which is also a logical truism: “Of course, the absence of evidence is not the same as evidence of absence.” Porter v. Secretary of Health and Human Services, 663 F. 3d 1242, 1264 (Fed. Cir. 2011) (O’Malley, J., concurring-in-part, dissenting-in-part)(internal quotations and citations omitted).  Therefore, the rejection was not supported by a preponderance of evidence, and was reversed.

This is a very useful opinion (as it its cite to Porter), because it provides another tool to use in those situations where an Examiner stretches a prior art reference too far to obtain a rejection.  Where a cited reference is silent as to a claimed term, that silence cannot be used against the applicant.


What “substantially” means July 29, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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Sometimes in the course of prosecution, either the applicant or the Examiner will proffer an argument about a claim term that is manifestly absurd. This was certainly the case in Ex parte Brosske. I am not even going to try to make the German “SS” letter or the umlaut on WordPress, so my apologies to him if he ever reads this.

One of the claims in Ex parte Brosske required that a blank be “substantially flat.”  The Examiner cited prior art that showed a blank having a 90 degree angle in it, and argued: “MPEP 2173.05 (b) states that the term ‘substantially’ is a broad term; therefore, the phrase ‘substantially flat’ is considered to include a blank that is not completely in a horizontal or vertical orientation. That is, a curve or bend in the blank still meets the claimed limitation.”

Fortunately, the PTAB applied common sense, and held that “a blank bent at a 90 degree angle does not constitute a “substantially” flat blank.”  I am a little surprised that the PTAB did not make note of the fact that the Examiner’s interpretation read the term “substantially” completely out of the claim.  I would be hard pressed to think of anything that wouldn’t be “substantially flat” if something bent at a 90 degree angle is considered “substantially flat.”



North Korean patent law June 6, 2014

Posted by Brian Schar in General, Patent prosecution.
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Apropos to my post a long time ago about North Korean patent law, I stumbled on this last night quite by accident.  It’s the Invention Law of the Democratic People’s Republic of Korea.  It’s current as of 2011.  Enjoy!

A de facto patent registration system May 2, 2014

Posted by Brian Schar in General, Patent prosecution, USPTO.

Somebody explain to me how it is that we don’t effectively have a patent registration system in the US.

After 3 or more years in USPTO hell, winning appeals, and obtaining a patent that is supposed to be presumed valid, the owner might want to assert it.  However, the infringer against whom the patent is asserted will immediately throw that patent into IPR for more examination, sending the patentee’s purportedly-valid patent back to USPTO purgatory.  A whopping _92 percent_ of the time the claims will be amended or canceled!  How is this not a slap in the face to the examining corps, and the entire idea of patent examination?  If patentees are losing patent rights 92 percent of the time, what was even the point of initial examination?  Doesn’t this process negate on a de facto basis (1) the entirely of the examination process, and (2) the presumption of validity?

What is really happening on a de facto basis is that you have to open “real” examination, with adult supervision, at the time you assert the patent.  That is the basic characteristic of a registration system – there is no examination, and no presumption of validity.

In my view we now live in a patent system with the worst of all possible characteristics, which of course is the American legislative way. Patentees have to endure the expense and time of a normal examination process, as in examination-based patent systems, but then have to have their claims confirmed in a later proceeding, as in a registration-based system.

Why not abandon the entire idea of examination as it currently stands, and simply allow registration of utility patents?  Or at least give patentees that money and time saving option?

Non-analogous art April 18, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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A bane of inventors, particularly in the mechanical field, is non-analogous art.  You know you’re going to go to appeal when in the first office action you get a 5-way 103 rejection where one of the references is an 1890 vintage carpentry tool, when your invention is related to a surgical tool.

Ex parte Bezek provides a concise summary of obviousness law, and also provides a great template for arguing bad 103 rejections to the PTAB.  Quoting Bezek, “A reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem, or it the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention….In order for a reference to be reasonably pertinent to the problem, it must ‘logically have commended itself to an inventor’s attention in considering his problem.'”  (citations omitted).

Bezek was directed to a container for storing potato chips to minimize their breakage.  The Sardam reference was an IV container for reconstituting antibiotic.  The PTAB found that these were two different fields (that’s a slam dunk) and that the Sardam reference was directed to a different problem as Bezek, and as a result was not “reasonably pertinent” to Bezek.  Therefore, the rejection was reversed.

The practice takeaway relative to non-analogous art is to argue the problem solved by the prior art reference is a different problem than that solved by the claimed invention.

What to do when the prior art has errors October 24, 2013

Posted by Brian Schar in General, Patent prosecution, USPTO.
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Anyone who’s been in the patent profession for any amount of time has run across the situation where the Examiner cites a piece of prior art that is simply wrong.  The cited portion may have a typo, may be badly written or translated to mean something different than context would indicate, or may in some other way be inoperative.  However, there is little case law concerning this situation.

A recent nonprecedential PTAB case provided excellent guidance to applicant as to how to handle that situation.  The appeal in Ex parte Darr centered on Table 3 of an issued patent cited as a prior art reference.  The claims at issue had a limitation of a specific length, and the cited Table 3 read on that length.  However,  Appellants contended that the units of length in Table 3 were obviously in error, and one skilled in the art would immediately know that those units should have been inches, rather than millimeters.  Appellants provided a declaration to that effect, as well as argument.

The PTAB noted that the presumption of operability of an issued patent flows from the presumption of validity, and provided some helpful citations.  (Lacking Lexis, however, I sadly cannot link you, the reader, to a 1935 D.C. Circuit case relied upon by the PTAB.)  However, that presumption is rebuttable by a preponderance of the evidence.  Here, the appellants did so, by providing a declaration and pointing out the clear-cut typographical error. 

Similarly, if the reference were not an issued patent, I would think the same holding would apply.  If the applicant can show by a preponderance of the evidence that there is error in a cited reference, that should overcome a rejection over that reference.

The next time you are faced with this situation, it’s worth taking 5 minutes and reading Ex parte Darr before responding to the Examiner.