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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.

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.”



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.

Fixing the proposed attributable ownership rules April 4, 2014

Posted by Brian Schar in General, USPTO.

I still believe the best thing to do with the proposed attributable ownership rules is to let them die a quiet death.  I could not agree more with Courtenay Brinckerhoff in this regard, and her recent blog post is critical reading on this topic.

Commenter Bryan and I have had a fruitful and collegial discussion in the comments section of a previous post.  I wanted to pull that out of the comments, and also use that discussion to propose a change to the rules – to the extent that the USPTO insists on maintaining them.

To avoid mischaracterizing Bryan’s argument, this is a cut-and-paste of his comment:

“I think the key point here is that the proposed rules (at 1.271(b)) incorporate the definition of 16 CFR 801.1(a)(3), but don’t explicitly incorporate the definition of 16 CFR 801.1(b). I could see asking the PTO to explicitly incorporate 16 CFR 801.1(b) into 1.271(b). Solely from the rules, my take was that this was the intention all along. (See, e.g., the proposed rules at p. 4111, col. 2, ¶ 2, which specifically cites the definition of “control” as requiring 50% or more holding of shares, etc.) Since some definition of “control” is necessary to interpret the rules, I would make a guess that the definition discussed in the rulemaking publication would be persuasive.”

My response:

“By leaving out the ‘control’ aspect of an ultimate parent entity, as set out in 16 CFR 801.1(3)(b), but incorporating other antitrust definitions expressly, the Office has shown a clear intent that the “ultimate parent entity” is not to be limited to an entity that has “control.” That is what worries me.  Courts don’t always pay much, if any, attention to the nonbinding verbiage in the rulemaking publication, so I don’t count on that as limiting the “ultimate parent entity” provisions at all.”

This dilemma actually lends itself to a simple solution: just state expressly in the rules that only entities with a controlling share can be “ultimate parent entities.”  Or, expressly add the limitation of 1.271(a)(2) to 1.271(b) or (c).  That gets private companies out from under the impossible task of providing a shareholder list and then chasing down details about each and every shareholder.

Even with the change I proposed, it would still be impossible for some companies to comply, for the reasons I set forth in previous posts.  For example, an exclusive licensee in a particular field – where that licensee is a privately held entity – has every incentive not to cooperate, and indeed to actively refuse to cooperate.  Prospectively, one can solve these problems contractually, for example, by requiring in a license that the exclusive licensee must fully cooperate in the ultimate parent entity rules.  One can also solve these problems contractually with regard to stock ownership, by adopting some kind of terms of sale of the stock that require such cooperation as well.  (The SEC-compliance types will have to figure out the details of that on their own.)

Therefore, another necessary change would be that these rules would not apply to any application filed before the adoption of the rules, and indeed some amount of grace period would be necessary.


Life During Wartime: The “Pre-Markman” Hearing March 28, 2014

Posted by Brian Schar in USPTO.
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Imagine it is February 2015 and the attributable ownership rules, as currently proposed, have gone into effect.  Also imagine that the Green Bay Packers are playing in yet another Super Bowl, although that may be a topic for a different blog.

A fast-track application filed after the rules went into effect issued in January, and the owner is now suing on that patent in district court.  It’s the case scheduling conference.  Let’s listen in!

Experienced Judge: Let’s set the Markman hearing for June.

Plaintiff’s Attorney: That’s fine with us.

Defendant’s Attorney: Hold on a minute, your honor.  Before we have a Markman hearing, we need to find out if the patent is even valid.

J: The validity phase is after discovery closes.  How long have you been at this?

D: Long enough to pay attention to the rules.  The patent goes abandoned if the owner did not make the proper submissions under the attributable ownership rules.

P: Which we did, at great expense and time.  The file history shows multiple 100-page submissions that chase down an impossible number of people.

D: But we don’t know if it’s complete.  Or accurate.  We need to verify that you didn’t commit inequitable conduct, or even a simple error.  Before there’s even any thought of a Markman hearing, we need to get discovery on those submissions.

J: What kind of discovery?

D: We need the shareholder list at the time of filing the patent application, and records of every share transfer since then, including option grants.  I’m going to need every lease to real property and every financing agreement, to see if the plaintiff pledged its patent to anyone as collateral, and if it reported that.  I’m going to need the name of every spouse of every shareholder, the names of their children, and the shareholders’ wills.

P: All of that stuff is in our filings.  (Note to the reader – this would never happen because it is impossible.  Please bear with the hypothetical.)

D: But we don’t know that for sure.  While I’m at it, I will need every document and email in your possession relating to any financing agreement and any IPO preparation documents.

J: Are you insane?

At this point in our hypothetical glimpse into the future, I suspect that the judge’s head would explode.  Judges hate discovery.  But the new rules dump another giant truckload of discovery into each and every patent case – cases that already are overburdened with colossal amounts of date.  Judges also hate delay.  The Markman hearing has become a mainstay of patent litigation, and judges like to get those out of the way early to encourage settlement – indeed, the Markman ruling as to claim construction is often dispositive of the case.  However, the defendants of the future will rightly (and in my view legally correctly) challenge the patent’s validity itself, pre-Markman, to (1) throw all of the early discovery costs onto the plaintiff, and (2) knock out the patent early.

Will judges push back on this?  Almost certainly.  I suspect the reality is that very early in the life of these rules, if they were to be adopted in their present form, a judge would invite briefing as to whether the rules should be invalidated, or interpreted narrowly, and that judge would rule in a way to reduce the new burden dropped in his/her lap.

Next week, I’ll look at the likely response by the startup community to these rules, once it becomes understood they are a machine for destroying private company IP.

Attributable ownership and family law March 27, 2014

Posted by Brian Schar in USPTO.
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If you’re a patent person, you’re almost certainly an engineer or scientist first.   With a background like that, it would be almost inconceivable that you’d get into something all touchy-feely like family law, where you might have to reassure someone or even figure out their feelings.  Yeah, no.  Maybe some of you would be good at that, but that’s just not me.

Well, guess what?  With the proposed attributable ownership rules, you will get to dive head first into the morass of family law.

Why?  Because spouses, kids, and heirs have property rights under the proposed rules.

An inventor or shareholder, as an individual, is not the “ultimate parent entity” of his or her ownership rights of IP.  That’s because spouses have rights to marital property, either through community property or similar doctrines in non-community-property states.  You own a patent (as a solo inventor) or shares in a privately-held startup that owns IP?  If you die, that spouse will often get the entirety of your interest in the IP – meaning that he/she is an attributable owner.

What’s that?  Your spouse gets nothing when you die, because you’re giving it all to your kids?  Well, you’re a terrible person.  And you’ve just made your kids attributable owners as well.  Does your will establish a trust or give any interest in your estate to some kind of organization, whether for-profit or not?  They are attributable owners as well.

Now imagine that ex-spouses have property rights via a divorce settlement.  You’ll need to get a copy of that too!  And people love giving a total stranger a copy of their divorce settlement – especially a patent attorney.

So imagine the fun of prying the shareholder list out of the hands of your CFO.  Then imagine the order of magnitude greater pain when you have to contact each and every individual shareholder, find out if they’re married, get their spouse’s name, find out if they’re divorced, get a copy of the divorce settlement, find out if they have a will, and get a copy of the will.

Do you think you’ll be able to do that, successfully, for each and every one of the hundreds of individual shareholders of your privately-held venture-backed startup?  Me either.  Or, do you think that every single one of the investors you call is going to tell you what to do with your request for their personal information, slam down the phone, and then call your CFO and insist he/she fires you?   This is why the proposed rules are a machine for destroying startups that depend on IP.

The further you go down this rabbit hole, the more awful it is.