Wednesday, July 31, 2013

CAFC reverses ND CA in Plantronics v Aliph case

A decision of the Northern District of California is altered in the Plantronics v. Aliph case:

In this patent infringement case, Plantronics, Inc.
(“Plantronics”) filed suit alleging that Aliph, Inc. and
Aliphcom, Inc.’s (collectively, “Aliph”) products infringe
U.S. Patent No. 5,712,453, entitled “Concha Headset
Stabilizer” (the “’453 patent”). On March 23, 2012, the
district court granted-in-part Aliph’s motion for summary
judgment of noninfringement and invalidity, construing
certain disputed terms, finding in relevant part that the
accused products do not infringe claims 1 and 10, and
holding the asserted claims invalid as obvious. Plantronics,
Inc. v. Aliph, Inc., No. C09-1714BZ, 2012 WL 994636,
at *12 (N.D. Cal. Mar. 23, 2012) (“Summ. J. Decision”).
The district court’s decision is reversed in part, vacated in part, and remanded for further proceedings.

The terms concha and tragus are discussed in claim 1

Independent claim 1 is representative of the asserted
1. An apparatus for stabilizing a headset including
a receiver sized to fit between a tragus and an
anti-tragus of an ear, the apparatus comprising:
an ear cushion dimensioned to cover a portion of
the receiver disposed between the tragus and the
a resilient and flexible stabilizer support member
coupled to the ear cushion, and dimensioned to fit
within an upper concha with the ear cushion coupled
to the receiver and the receiver disposed between
the tragus and the anti-tragus; and
a concha stabilizer pad coupled to the stabilizer
support member, for contacting the upper concha.
’453 patent col. 5 ll. 10–22 (emphases added).

Within the district court:

On September 19, 2011, the district court issued a
tentative claim construction order, and held its Markman
hearing on September 21, 2011. On October 6, 2011, the
district court issued its claim construction order construing,
in relevant part, the terms “stabilizer support member”
in claim 1 and “concha stabilizer” in claim 10.
Plantronics, Inc. v. Aliph, Inc., No. C09-1714BZ, 2011 WL
4634066, at *4 (N.D. Cal. Oct. 6, 2011). On March 23,
2012, the district court granted summary judgment,
holding the asserted claims were invalid and not infringed.

Of limiting claims to preferred embodiments:

Hence, limiting the
“stabilizing support member” and “concha stabilizer” to an
“elongated” structure that is “longer than it is wide”
would improperly limit the broadly drafted claims to one
preferred embodiment (thereby excluding others) or would
be the result of improperly importing a limitation from
the specification into the claims. Kara Tech. Inc. v. Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009)
(“The patentee is entitled to the full scope of his claims,
and we will not limit him to his preferred embodiment or
import a limitation from the specification into the

Of species selection:

Accordingly, the PTO directed
Plantronics to elect “a single disclosed species for prosecution
on the merits to which the claims shall be restricted
if no generic claim is finally held to be allowable.” J.A.
380. The PTO also concluded that the application presented
no “generic claim” covering more than a single
species of the invention. In response, Plantronics
“elect[ed], without traverse, to prosecute” only the “Species
of Figures 1a and 1b.” J.A. 384. Plantronics indicated
that “[c]laims 1–6 and 9–12 read on the elected species . . .


Thus, when the patentee
unequivocally and unambiguously disavows a certain
meaning to obtain a patent, the doctrine of prosecution
history disclaimer narrows the meaning of the claim
consistent with the scope of the claim surrendered. Phillips,
415 F.3d at 1317. Plantronics’ election of species of
Figures 1A and 1B did not amount to such a surrender of
claim scope.
The PTO’s restriction requirement did not suggest
that the different inventions it found were based on
differences in structure (i.e., “elongated” versus an
“arch”). Indeed, the PTO found four patentably distinct
inventions in the figures of the ’453 patent without
providing any reasons why in its view the application
presented differing inventions.


The election of an invention in response to an
ambiguous restriction requirement in turn cannot be said
to provide any guidance forming a basis for narrowing a
broadly drafted claim. Omega Eng’g, 334 F.3d at 1325 (We
have “consistently rejected prosecution statements too
vague or ambiguous to qualify as a disavowal of claim
scope.”). Neither the PTO nor Plantronics made any
particular remarks regarding the differences (e.g., in
structure) of what the PTO found to be different inventions,
and while Plantronics elected without traverse the
invention of Figures 1A and 1B,


This case differs from LG Electronics and Acco
Brands. The PTO’s restriction requirement here did not
clearly demarcate the actual differences among the species of inventions, as was done in LG Electronics and Acco Brands. Regarding the restriction requirement imposed in LG Electronics, the PTO required the patentee to elect one of two identified inventions in the application, and the
limitation at issue (never using “valid/invalid bits”) was
found to be relevant only as to the first unelected invention
and not to the second elected invention. 453 F.3d at
1378. In Acco Brands, it was also made clear that certain
embodiments were claimed in other patents, and that the
patent at issue was directed to one particular figure/
embodiment. 346 F.3d at 1079.

As to obviousness:

The gravamen of the parties’ dispute here involved
whether a skilled artisan would have been motivated to
combine certain prior art references, an issue that focuses
heavily on the first and third Graham factors. Alza Corp.
v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006)
(“[T]he motivation to combine requirement entails consideration
of both the scope and content of the prior art and
level of ordinary skill in the pertinent art aspects of the
Graham test.”) (citation and quotation marks omitted).


“An invention may be a combination of old elements
disclosed in multiple prior art references.” Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
1293, 1321 (Fed. Cir. 2005). Applying a flexible approach
to the obviousness inquiry, the Supreme Court observed
that common sense can be a source of reasons to combine
or modify prior art references to achieve the patented
invention. KSR, 550 U.S. at 420. Therefore, motivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the
field of endeavor at the time of invention and addressed
by the patent”; and the background knowledge, creativity,
and common sense of the person of ordinary skill. Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29
(Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).

As to common sense

“An invention may be a combination of old elements
disclosed in multiple prior art references.” Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
1293, 1321 (Fed. Cir. 2005). Applying a flexible approach
to the obviousness inquiry, the Supreme Court observed
that common sense can be a source of reasons to combine
or modify prior art references to achieve the patented
invention. KSR, 550 U.S. at 420. Therefore, motivation to
combine may be found explicitly or implicitly in market
forces; design incentives; the “interrelated teachings of
multiple patents”; “any need or problem known in the
field of endeavor at the time of invention and addressed
by the patent”; and the background knowledge, creativity,
and common sense of the person of ordinary skill. Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29
(Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21).
why common sense compels a finding of obviousness.
See KSR, 550 U.S. at 418; In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (“Rejections on obviousness
grounds cannot be sustained by mere
conclusory statements; instead, there must be
some articulated reasoning with some rational
underpinning to support the legal conclusion of
In re Nouvel, 493 F. App’x 85, 92 (Fed. Cir. 2012). Where,
as here, the necessary reasoning is absent, we cannot
simply assume that “an ordinary artisan would be awakened
to modify prior art in such a way as to lead to an
obviousness rejection.” Id. It is in such circumstances,
moreover, that it is especially important to guard against
the dangers of hindsight bias.


Here, the district court concluded that the ’453 patent
was invalid as obvious before considering objective indicia
of nonobviousness. According to the district court, “[i]t
would have been obvious to one of ordinary skill in the art
to modify the Lieber device to reduce the size of the inthe-
ear receiver while pairing the receiver with a comfortable,
adaptable ear cushion that stabilized the device with
a flexible support member that invoked the ear anatomy
to avoid the use of headsets and earhooks.” Summ. J.
Decision, 2012 WL 994636, at *11. The district court
addressed Plantronics’ objective evidence of nonbviousness—
including copying and commercial success—only
after reaching this conclusion. It stated: “Even accepting
as true Plantronics’ assertions on these secondary considerations,
they do not save Plantronics from summary
judgment here since such secondary considerations simply
cannot overcome a strong prima facie case of obviousness.”
Id. To the extent the district court conducted a post
hoc analysis of objective considerations, it was improper.

This court has consistently pronounced that all evidence
pertaining to the objective indicia of nonobviousness
must be considered before reaching an obviousness
conclusion. See, e.g., In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063,
1076 (Fed. Cir. 2012). The significance of this fourth
Graham factor cannot be overlooked or be relegated to
“secondary status.” See id. at 1079.

Osram is cited:

This argument is without merit because “[i]t is
not our role to scour the record and search for something
to justify a lower court’s conclusions, particularly at the
summary judgment stage.” OSRAM, 701 F.3d at 707.
“[T]his court must be furnished sufficient findings and
reasoning to permit meaningful appellate scrutiny.” Id.
(citation and internal quotation marks omitted). The
district court’s opinion lacked such findings and reasoning.

Tuesday, July 30, 2013

Henry Ford and ethanol

Within US Patent 8,487,149, one finds the text:

Biofuels are renewable transportation fuels which have a long history ranging back to the beginning on the 20th century. As early as 1900, Rudolf Diesel demonstrated an engine running on peanut oil. Soon thereafter, Henry Ford demonstrated his Model T running on ethanol derived from corn. However, petroleum-derived fuels displaced biofuels in the 1930s and 1940s due to increased supply and efficiency at a lower cost.

The wikipedia entry titled Timeline of alcohol fuel has entries which include

In 1908, the Ford Model T is introduced. Early models had adjustable carburetors to run on ethanol with gasoline as an option.


In 1925, Henry Ford tells the New York Times that ethyl alcohol is "the fuel of the future" which “is going to come from fruit like that sumach out by the road, or from apples, weeds, sawdust -- almost anything. There is fuel in every bit of vegetable matter that can be fermented. There's enough alcohol in one year's yield of an acre of potatoes to drive the machinery necessary to cultivate the fields for a hundred years."

The wikipedia entry for the Model T notes:

The engine was capable of running on gasoline, kerosene, or ethanol,[14][15] although the decreasing cost of gasoline and the later introduction of Prohibition made ethanol an impractical fuel for most users.

Charles E. Duryea obtained US Patent 540,648 for a gasoline-powered vehicle on June 11, 1895.

Monday, July 29, 2013

In re Harry: the facts exist where are they?

PTAB cited In re Harry,333 F.2d 920, to criticize a 131 declaration in the case Ex parte Ramer

Attorney argument nixed in Ex parte Qi

PTAB in Ex parte Qi cites to In re Pearson ,494 F.2d 1399 , for the proposition : Attorney's arguments in a brief cannot take the place of evidence.

Nonfunctional descriptive material discussed in Ex parte Merriam

PTAB cites In re Ngai, In re Gulack, and In re Xiao in Ex parte Merriam.

Discussion of analogous art

Analogous art is discussed in Ex parte McNerney

Patentee wins in Kilopass re-examination

Judicial estoppel is invoked in the Kilopass re-examination

The requester cited to Minnesota Mining v. Chemque, 303 F.3d 1294, 1303 (CAFC 2002).

In re Swanson,540 F.3d 1368 is also cited.

Examiner reversed in Ex parte Bayliss; LexisNexis wins

Sunday, July 28, 2013

60 Minutes on July 28, 2013

First, Pope Francis and the nuns.

Second, Bill Gates.

Third, Lesley Stahl on Yale Infant Cognition Center.

CBS Sunday Morning on July 28, 2013

Lee Cowan did a special edition of Sunday Morning on the New Jersey shore. Susan Spencer does the cover story. Life's pleasures. The pursuit of pleasure. Second, Tracy Smith on tree houses. What is it about a tree house that everybody loves. Out on a limb. Third, Rita Braver on Nora Roberts. You want characters to have fabulous sex.
Fourth, Adam Levene and Maroon 5. A Summer Song. Fifth, Steve Hartman. Mo Rocca. Seth Doane.

Don Daylor in the news room. Crowds have gathered in Rio for Pope Francis. Egyptian security forces clashed with Morsi supporters. John Kerry comments. Obama on Korean War armistice. Bus crashed in Indianapolis. Lindy Boggs died. Retired from Congress in 1990. Chime fest for George. Sunday forecast. milder temperatures.

Rumson New Jersey shown on a map. Then, Susan Spencer introduced for the "pleasure" story. Professor Gregory Burns at Emory University. Sleep is on the top of the list.
Food, sleep, and sex are the pleasures. Yale's Paul Bloom. Book "How Pleasure Works." What's its real essence is. Experiment done by Stanford/Caltech. Wine tastes better if told it comes from expensive bottle. "Higher price tag" --> enjoy it more. Julien's and Michael Jackson's jacket. Sotheby's. George Clooney's sweater. Thoroughly washed sweater then value goes down. Washed away the Clooney cooties. Cheese is spoiled milk. Paul Rozen. Hot chile peppers. Why put in mouth. Benign masochism. Why we enjoy terror movies, sad songs. Mastering negative experience. Chiles: just below the limit of what they can't bear. "Monetary expected value." Gregory Burns: alternating drops of water and juice. Surprise yourself. First time is always the best. Best when a surprise. Good friends, beer, and summertime. Push the envelope.

Tracy Smith on tree houses. Jake Jacob shown cutting limbs for a tree house outside of Seattle. Eric Seeley. Bainbridge Island. Temple of the Blue Moon. Peter Nelson. Tree House Bed & Breakfast. Roderick Romero. Sting and Trudy tree house.
Julianne Moore and Val Kilmer. Perspective we all want is that of a child.

Lee Cowan at a grill. Hamburgrs. Danny Myer and Shake Shack. Josh on invention of burger. Schniffer Brothers. Personal experience. White Castle on burger take out. McDonalds made burger ubiquitous. 38% of men prefer burgers well done/ 46% of women.

Cowan with big house in background introduces Rita Braver on Nora Roberts. J.D. Robb. Angels Fall. "Why do I want to write about ugly people?" Home in rural Maryland. Decided to start writing in 1979. "I wanted it really really bad." Boonesboro, Maryland. Elizabeth and Darcy.

Seth Doane on flowers in Hawaii. Waimea. Ka Lei. Honopua.

Lee Cowan at The Meat Hook in Brookyln. 800 hot dogs consumed per second. Hot dog restaurant "Bark" owned by Josh Sharkey. The customer is the expert.

Cowan with a push mower to introduce Mo Rocca on manscaping. European Wax Center in NYC. Joe Dooley.

Lee Cowan introduces A Summer Song on Maroon 5. Kara's Flowers. Matt Flynn. Mickey Madden. Songs About Jane. Grammy in 2005. Moves Like Jagger.

Steve Hartman. Bicycle. Second Life Bikes in Asbury Park, NJ. 400 kids earned bikes.

Mark Hirsch in Plattville, WISC. 160 year old burr oak tree. Photographed oak tree every day for one year. SouthWest: That tree.

Next week: Carol Burnett.

Moment of nature. Cape Fear Island in North Carolina. Terns. Pelicans.

Ends with song "Groovin'" in the background.

Saturday, July 27, 2013

Method of playing a pathology board game in Ex parte Riley

The appellant won on 101 and 112 P 2, but lost on 103 in Ex parte Riley

The claim in question

23. A method of playing a pathology board game, comprising:

providing a colored game board having 1) an illustration of the human circulatory system comprising organs, vein, artery, and limbs; and 2) a colored circle or wheel comprising a pie chart having a plurality of diseases, each disease having its own color and a number to indicate how many spaces each player moves through the illustrated circulatory system;

As to 35 USC 101:

The Examiner also stated that Appellant’s claimed method is an attempt to claim a new set of rules for playing a board game, and “a set of rules qualifies as an abstract idea.” Ans. 7; see also Ans. 4. For these reasons, the Examiner concluded that independent method claim 23 is directed to non- statutory subject matter. (...)


The Examiner characterizes the process of claim 23 as an abstract idea. See Ans. 4. However, the method of claim 23 is carried out through steps that are tied to a particular apparatus (a game board with a particular illustration, and its associated pegs and cells). As such, this method does not preempt the abstract idea itself. See Reply Br. 2-3.
Accordingly, we do not sustain the rejection of claim 23 and its dependent claims 10-12, 14-20, 22.

As to the rejection under 112 P 2

The proper inquiry is “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In contrast, the rejection fails to make reference to the Specification. See Ans. 8.

The Specification states that the pathology board game includes an illustration of the human circulatory system, and that “[e]ach player chooses a cell for circulation throughout a human circulatory system comprising veins, arteries, and organs and illustrated on a colored game board.” Spec. paras. [0007]-[0008]. A person of ordinary skill in the art, interpreting claim 23 in light of the Specification would understand what is claimed.
Consequently, claim 233 is not indefinite for the reason that the phrase “choosing a cell” lacks an antecedent basis.

As to the rejection under 103:

Appellant argues that D’Antonio does not disclose a pathology
booklet as called for in claim 1. According to Appellant, the pathology booklet has a functional relationship with the other game elements, and for that reason is entitled to patentable weight. App. Br. 6-8. Similarly, Appellant contends, “the claimed at least one pathology booklet and its content depend on the game's other structural elements (wheel, board, cards), and the game’s structural elements depend on the at least one pathology booklet.” App. Br. 7-8 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983)); see also Reply Br. 4.

Appellant misapplies the test of Gulack. In Gulack, the printed matter was given patentable weight because the printed matter was functionally related to the substrate. In re Gulack, 703 F.2d at 1386 (in dealing with printed matter, “the critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate”).

Here, Appellant alleges a functional relationship between the printed matter on the pathology booklet and the other game pieces, and fails to address the critical question of whether there exists a new and unobvious relationship between the printed matter on the pathology booklet and its substrate. Nothing in claim 1 indicates there is a functional relationship between the substrate and the printed matter of the pathology booklet. The Specification states that the pathology booklet classifies diseases and provides an explanation of each disease, but provides no indication the pathology booklet substrate is functionally related to that printed matter. See, e.g., paras. [0039], [0040]. We agree with the Examiner that the printed matter on the pathology booklet does not serve to patentably distinguish the subject matter of claim 1 from the prior art. See Ans. 5, 8.

Rejection against "kit" claim reversed in Ex parte Murray

from Ex parte Murray

The claim at issue:

1. A kit for reducing muscle cramps comprising:

a collection unit configured to be dermally mounted onto the skin of a test subject to collect body fluid during physical exertion;
a table providing an estimate of a quantity of sweat secreted during physical activity based on a level of sweat and a weight of the user;
a tester including a test portion configured to be exposed to the body fluid after collection in the collection unit. Wherein the test portion is further configured to react with the body fluid for use in determining a result indicative of an estimated degree of ionic depletion from the test subject; and
dosage information for at least one beverage for ionic replenishment sufficient to substantially limit muscle cramping.

PTAB spoke favorably of appellants' position:

On this record, we agree with Appellants that Schoendorfer and Ellis would have disclosed different methods and purposes in monitoring an athlete’s activity, and in this respect, neither reference would have disclosed a table to estimate the quantity of sweat secreted based on the level of sweat and weight. We determine that, as Appellants point out, Schoendorfer discloses monitoring the presence of and an estimate of an amount of enzymes involved with cardiac and skeletal muscle activity using a patch which concentrates the analyte by evaporating water from perspiration. App. Br. 10; Reply Br. iii-iv. Indeed, contrary to the Examiner’s position, Schoendorfer would not have disclosed that the immunoassay method using the dermal concentration patch to determine the presence of and estimate the amount of enzyme analytes in perspiration can also be used to determine the presence of and estimate the amount of sodium therein.

The outcome

Accordingly, in the absence of a prima facie case of obviousness, we reverse the grounds of rejection of claims 1-10 under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is reversed.

Summary judgement partially vacated in Charles Machine v. Vermeer


Teva prevails in Copaxone case, but was the case correctly decided?

In Teva v. Sandoz, patentee Teva prevailed on infringement charges as to "group II" claims:

we affirm
the district court’s judgments of infringement and no
invalidity with respect to Group II claims, reverse its
judgment of no invalidity with respect to Group I claims,

The defendants argued that the claims were indefinite under 35 USC 112 P 2 because the
term "molecular weight" was ambiguous.

As to the group I claims, Teva had a problem because of arguments made in file histories. For one application, Teva argued molecular weight was Mp (peak average) but for another Mw (weight average). As the CAFC observed, Teva's two definitions cannot be reconciled. There was also an inconsistency within a figure as between the graph itself and the legend for the figure.
[The CAFC stated the peak average molecular weight Mp is the molecular weight of the most abundant molecule in the sample, so that it is not an "average" molecular weight." The CAFC also noted that Mn is the total mass of all molecules divided by the number of molecules, but did not give a definition for Mw. For completeness, Mw is the sum of the (square of molecular weight X number with that molecular weight) divided by sum of (molecular weight X number with that molecular weight).)

The group II claims survived because molecular weight was expressed differently than for group I. Within group II claims, the measure was a fraction of molecules falling within a certain molecular weight range.

There was separately an issue of lack of enablement of the ways to measure molecular weight.
Although the court rejected the appellants' arguments of nonenablement, it did appear that there were some issues with the calibrations. The CAFC cited Edwards v. Corevalue, 699 F.3d 1305 (CAFC 2012) , for the proposition that failure to enable a commercial embodiment does not constitute failure to enable.

Although not evident within the CAFC opinion, there is a relationship between the indefiniteness argument against group II claims and the enablement argument. If there were no molecular weight standards disclosed in the applications to unambiguously measure the exact molecular weights of the type recited in group II, then the group II claims are in fact insolubly ambiguous. Different standards will give different molecular weight values, and the skilled artisan could not determine the metes and bounds of group II claims. That is, 2kD and 20 kD are NOT precise points on a molecular weight axis, if the axis itself may move depending on what calibration is used to establish the axis. Although it is correct that methods to calibrate molecular weight scale were known, unless the precise calibrants are recited, the exact molecular weight scale is unknown.

The CAFC decision as to the group II claims would appear to be based on an incorrect scientific understanding, and ultimately legally incorrect.

As a small point, for legal precedent on obviousness, the Teva opinion cited Allergan v. Sandoz, (May 1, 2013) and not KSR. Separately, the Teva opinion might be in error in stating that asserting a preference for one range amounts to teaching away from a different range.

Note: “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).


To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” Mere disclosure of alternative embodiments is not a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

***from Infosint:

“A reference may be said to teach away when a person of ordinary skill, upon reading
the reference, would be discouraged from following the path set out in the reference, or would be
led in a direction divergent from the path that was taken by the applicant.” A reference, however,
does not teach away if it “merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”

Thursday, July 25, 2013

"I'm not an intellectual property lawyer but..."

A quote by Steven Strang related to possibly lifted text by Mitch Daniels, now Purdue prez.
Copyright infringement is more an IP thing than is plagiarism. One can plagiarize Shakespeare without exciting many IP lawyers.

The quote is in a piece by H. Colombo in the Courier-Journal. And the five pages copied by Joe Biden at Syracuse Law is a bigger deal than the Daniels thing.

Issue of availability of a reference in Re-exam appeal for US 7,840,678


Appellant contends that 3-DNS is not available as prior art because it “has not been established as being publicly available before the priority date of the ‘678 patent.”
Based upon a number of findings, the Examiner concludes that the totality of the evidence shows that 3-DNS was published more than one year before the critical date.

PTAB affirms the examiner on a preponderance of the evidence standard.

"Official notice" issue in Ex parte Lee

Official Notice comes up in Ex parte Lee

Statements articulating technical reasoning in support of combining references are not the kind of statements to which the MPEP Section on Official Notice is directed. Moreover, for completeness, we note that even if the Examiner’s statement that “filtering is a very common method/technique in signal process” was considered to be Official Notice, an adequate traverse to an Examiner’s finding of Official Notice must “contain adequate information or argument” to create on its face “a reasonable doubt regarding the circumstances justifying the ... notice” of what is well-known to an ordinarily skilled artisan. In re Boon, 439 F.2d 724, 728 (CCPA 1971). “To adequately traverse such a finding [of Official Notice], an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.” MPEP § 2144.03(C); see also 37 C.F.R. § 1.111(b); In re Chevenard, 139 F.2d 711, 713 (CCPA 1943). Appellants are challenging the statement as improper Official Notice, but have not alleged that filtering is not a “very common method/technique in signal processing.” Advisory Action, dated June 2, 2010. Indeed, both references, particularly Levi, discuss it. See, e.g., Levi, col. 3, ll. 51-67, col. 4. ll. 6, 48-53, et seq.

Accordingly, Appellants have not apprised us of any flaws in the Examiner’s reasoning.

Papesch cited in Ex parte SIMPSON

The appellant loes in Ex parte SIMPSON

Papesch is invoked:

The Appellants’ claim 1 requires that the indium attachment layer is sufficiently strong to keep the cylindrical target sections attached to the cylindrical backing tube during a sputtering process, but does not exclude additional attachment means such as mechanical fasteners. Because McLeod’s indium solder (col. 6, ll. 32-38) and Wityak’s indium adhesive (¶0027) are made of the same material as the Appellants’ indium attachment layer it appears that, like the Appellants’ indium attachment layer, McLeod’s indium solder and Wityak’s indium adhesive have the strength required by the Appellants’ claim 1. Compare In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing”)

Appellant loses in Ex parte STRZALKOWSKI


Of obviousness

As we noted in our Opinion, "[I]t is not necessary that the references be physically combinable to render obvious the invention under review." In re Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures. "). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted). We once again find that the combination of AAPA and Regan would have suggested the claimed invention to one of ordinary skill in the art.

As to invoking patentability determinations in other cases:

Further, it is well settled law that the fact that identical claims in the Chen patents had issued over the Regan reference is irrelevant to our decision here. “Each case is determined on its own merits. In reviewing specific rejections of specific claims, this court does not consider allowed claims in other applications or patents.” In re Gyurik, 596 F.2d 1012, 1017 (FN15), (CCPA 1979).

PTAB reverses examiner in TANIGUCHI case

The Board reversed the Examiner’s § 102(b) rejection in Ex parte TANIGUCHI

Schreiber is cited:

Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the output limiter must possess the necessary structure, hardware or software, for example, the programming, to function as claimed. The Examiner indeed de facto admits that Okura is not programmed or otherwise structured to function as claimed, and the Examiner does not rely upon any reasoning why one of ordinary skill in the art would have been motivated to have configured the output limiter to function as claimed (see generally Ans.).

PTAB cited other cases

the “capable of” test requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. While in some circumstances generic structural disclosures may be sufficient to meet the requirements of a “controller”, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the case here.

CAFC cites Ruschig, mentions blaze marks, in affirming PTAB on written description rejection in Bimeda case

In the case IN RE BIMEDA RESEARCH & DEVELOPMENT LIMITED the Court of Appeals for the Federal Circuit [CAFC] affirmed PTAB.

From the case:

The Board affirmed the examiner’s rejection on two grounds. First, it agreed with the examiner’s finding that the disclosure failed to demonstrate possession of a formu- lation that specifically excluded the acriflavine species of antiinfectives. Board Opin. at *5. Citing In Re Ruschig et al., 379 F.2d 990 (CCPA 1967), the Board held that where the patent’s disclosure describes the exclusion of a broad genus, claims to embodiments which exclude particular species are only supported if the disclosure offers some guidance or “blaze marks” to guide the skilled artisan towards excluding that particular species. Id. In the case of the ’400 patent, the Board found that the disclosure lacked such guidance because it did not con- template the exclusion of any single specific antiinfective, much less acriflavine. Id. Rather, the Board found, the ’400 patent described inventions that were free of entire classes of agents such as antibiotics. Id.

Of the written description issue:

Written description under § 112, ¶ 1,3 is a question of fact, and on appeal from the Board, we review such ques- tions for substantial evidence. Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000). Substantial evidence means “such relevant evi- dence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. v. Nat’l Labor Relations Bd., 305 U.S. 197, 229 (1938).

In this case, the Board found, inter alia, that claim 32 failed the written description requirement because the disclosure did not “describe[] a formulation excluding a specific species of the anti-infective genus, while permit- ting others to be present.” Board Opin. at *6. On appeal, Bimeda counters this finding by arguing that the disclosure broadly claims a teat seal formulation utilizing a physical barrier, yet does not expressly exclude any particular antiinfective agents. Bimeda interprets this as tacit indifference to the presence or absence of specific antiinfectives, and contends that the disclosure therefore supports a claim which excludes one particular antiinfec- tive (such as acriflavine) but permits the use of others (such as antibiotics).

The CAFC invoked the "substantial evidence" standard:

Substantial evidence supports the Board’s contrary interpretation because the disclosure is generally inconsistent with a formulation which, like claim 32, excludes acriflavine but could include antibiotics.


The ’400 patent’s disclosure is therefore inconsistent with a claim which “excludes acriflavine, but not the presence of other anti-infectives or antibiotics.”

The alternative grounds for rejection was not reached:

Because substantial evidence supports the Board’s finding that the patent’s disclosure does not convey possession of the literal scope of claim 32, we need not reach the merits of the Board’s alternative finding that the disclosure insufficiently led an artisan to target acriflavine for exclusion.

Wednesday, July 24, 2013

Borgata Babes lose case

Judge Nelson Johnson granted summary judgment against the Borgata Babes.

In this job, a weight gain of 7% can lead to termination.

Appellant wins Ex parte Lang

PTAB reversed indefiniteness and obviousness rejections in Ex parte Lang

Appellant loses in In re Licht; unexpected results discussed

PTAB in In re Licht cites to In re Young, 927 F.2d 588 (CAFC 1991) on treating conflicting references.

Licht cites to In re Klosak, 455 F.2d 1077 to illustrate that comparative data show unexpected results.

In re Burckel, 592 F.2d 1175 is cited as to closest prior art.

In re Boesch 617 F2d 272 is cited as to commensuration.

Tuesday, July 23, 2013

The CAFC cites Ruschig in Novozymes case on written description.

Novozymes lost on written description at the CAFC.

Plaintiffs - Appellants Novozymes A/S and Novozymes
North America, Inc. (collectively, “Novozymes”) and
Defendants - Appellees DuPont Nutrition Biosciences APS,
Genencor International Wisconsin, Inc., Danisco US Inc.,
and Danisco USA Inc. (collectively, “DuPont”) are competitors
in the market for enzyme preparations used in a
variety of commercial applications, including ethanol
On May 11, 2010, Novozymes brought suit
against DuPont in the Western District of Wisconsin,
alleging infringement of its U.S. Patent No
. 7,713,723 (the “’723 patent”)

. The ’723 patent claims particular modified
enzymes that exhibit improved function and stability
under certain conditions. DuPont defended on grounds of
noninfringement and invalidity and filed counterclaims
seeking a declaratory judgment that the claims of the ’723
patent are invalid for failing to satisfy the enablement
and written description requirements of 35 U.S.C. §


The case then went to trial before a jury, which
concluded that the ’723 patent’s claims are not invalid on
enablement or written description grounds and which
awarded infringement damages to Novozymes exceeding
$18 million . The district court, however, granted
DuPont’s post - trial motion for judgment as a matter of
law that the claims of the ’723 patent are invalid under
§ 112 for failure to satisfy the written description requirement.
Novozymes now appeal
s from the district court’s final
judgment of invalidity. For the reasons set forth below,
we affirm.

Footnote 3 mentions the AIA:

Paragraph 1 of 35 U.S.C. § 112 was replaced with
newly designated § 112 (a) when § 4(c) of the Leahy -
Smith America Invents Act (“AIA”), Pub. L. No. 112 -
29, took effect on September 16, 2012. Because this case was filed
before that date, we will refer to the pre - AIA version of
§ 112.

An issue in the case:

Addressing the written description requirement, the
district court stated that “[t]he concern is that a patentee
may attempt to use later filed claims, relying on more
recently discovered data, to expand the scope of his invention
or to complete an idea.” Id. at 6 (citing Billups -
Rothenberg, Inc. v. Associated Reg’l & Univ. Pathologists,
Inc. , 642 F.3d 1031, 1036 (Fed. Cir. 2011)). Turning to
the ’723 patent, the court noted that the 2000 application
disclosed a potentially enormous number of alpha -
amylase variants, encompassing all possible combinations
among the seven disclosed parent enzymes, the thirty-
three disclosed positions for mutation, the numerous
different mutations possible at each position, and the
various possible combinations of individual mutations.
The court also noted that the 2000 application did not
point out the specific variants later claimed in the ’723
patent. Id. at 6 – 7.


In the district court’s view, the problem in either
situation was that “the specification failed to inform the
reader which member of that group was the right one
Id. Accordingly, because “[t]he actual inventive work of
producing a [working variant] was left for subsequent
inventors to complete,” the district court held that the
2000 application provided insufficient
written description for the claims of the ’723 patent and that those claims
were therefore invalid under § 112. Id. at 17 – 18 (alterations in original) (quoting
Centocor , 636 F.3d at 1353) (internal quotation marks omitted).

The CAFC began with a reference to Ariad:

The written description requirement is set forth in the
first paragraph of 35 U.S.C. § 112. Ariad Pharm., Inc. v.
Eli Lilly & Co. , 598 F.3d 1336, 1343 – 45 (Fed. Cir. 2010)
(en banc).


To satisfy the written description requiremen
t, “the applicant must ‘convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or
she was in possession of the invention,’ and demonstrate
that by disclosure in the specification of the patent.”
Carnegie Mellon U niv. v. Hoffmann - La Roche Inc.
, 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas - Cath Inc. v. Mahurkar , 935 F.2d 1555, 1563 –
64 (Fed. Cir. 1991)).
Accordingly, claims added during prosecution must find
support sufficient to satisfy § 112 in the written de
scrip- tion of the original priority application.
See, e.g. , Anascape, Ltd. v. Nintendo of Am., Inc.
, 601 F.3d 1333, 1335 (Fed. Cir. 2010). Assessing “possession as shown in
the disclosure” requires “an objective inquiry into the four
corners of the specification.” Ariad , 598 F.3d at 1351.
Ultimately, “the specification must describe an invention
understandable to [a] skilled artisan and show that the
inventor actually invented the invention claimed.”
Id. A “mere wish or plan” for obtaining the claimed
invention does not satisfy the written description requirement.

Regents of the Univ. of Cal. v. Eli Lilly & Co.
, 119 F.3d 1559, 1566 (Fed. Cir. 1997). The written description
inquiry presents an issue of fact. Ariad , 598 F.3d at 1351.

DuPont cited Ruschig:

Citing In re Ruschig , 379 F.2d 990 (CCPA 1967),
DuPont argues that where a patentee adds claims during
prosecution that, as here, were not included in the origi-
nal priority application, courts require a detailed description
and identification of the later - claimed invention in
the original disclosure, particularly where the specific
ation discloses numerous possibilities with scan
t guidance on which to select . In this case, DuPont points out
that the 2000 application fails to disclose a single alpha -
amylase variant substituted at position 239 that actually
exhibits increased thermostability, noting that the only
disclosed substitution at that position (S239W) disclosed
in the 2000 application does not work as required by the
’723 patent’s claims. DuPont also asserts that the 2000
application’s undifferentiated disclosure was no more
than an “invitation to experiment” that failed to provide
guidance toward the later-claimed solution.

There was a reference to "blaze marks":

We have often applied those fundamental concepts to
hold claims invalid in cases where a patent’s written
description disclosed certain subject matter in terms of a
broad genus but its claims specified a particular sub-
genus or species contained therein. For example, in
Ruschig , our predecessor court affirmed the holding of the
Patent Office Board of Appeals that a claim to a specific
drug molecule, added after filing, lacked sufficient description
in the underlying application, which disclosed
only a generic structure that could yield the claimed
molecule given the proper selections at several variable
positions. 379 F.2d at 993–94. In that
case, the application’s undifferentiated description was deficient because it
failed to provide sufficient “blaze marks” to guide a reader
through the forest of disclosed possibilities toward the
claimed compound, which resided among the myriad
others that also could have been made. Id. at 994 – 95.

Sunday, July 21, 2013

CBS Sunday Morning on July 21, 2013

Charles Osgood introduced the stories for July 21, 2013. First up was the cover story by Cheryl Atkinson on LiveStrong. Michael Birdsong, once a donor to LiveStrong and a volunteer, is suing to get his money back. Second, Erin Moriarty on a movie about the shooting of Oscar Grant in Oakland, CA. Third, Lee Cowan on Bruno Mars. Fourth, a story on 1026 N. Beckley by Tracy Smith. Also, stories by Elisabeth Palmer, Steve Hartman. Story about Helen Thomas. Opinion by Nancy Giles.
Headlines: Fires in west. George Zimmerman. Arlington, Texas roller coaster Texas Giant. Three bodies discovered in Cleveland. Helen Thomas died at age 92.
Forecast: cooler in northeast.

Ov cover story, Livestrong supposedly helps 2.5 million cancer survivors and families. Livestrong is located in Austin, Texas. Birdstrong began to suspect issues in mid-2007-2008. An aisle of vs. Quote from Birdstrong: We were suckers. We got taken.

Almanac. July 21, 1875. The date Mark Twain took out a copyright on the adventures of Tom Sawyer. Based in fictional St. Petersburg, MO. Tom Sawyer was not a success until the publication ten years later of Huck Finn.

Next up, was a story by Elizabeth Palmer, Walking on Air, about StrandBeasts. Built of PVC pipe near Amsterdam. Animaris Vulgaris.

Next Bill Plante on Helen Thomas. Worked for UP for 40 years. In 1943 a writer for UP; big break, job to cover White House in 1960. Married Doug Cornell.

Next was a clip of John F. Kennedy with Lyndon Johnson in Dallas. Then, there was a clip of Walter Cronkite on the Warren Commission report of Sept. 1964.
Dallas boarding house at 1026 N. Beckly. Gladys Johnson was the owner of the boarding house.
Patricia Hall is the grand-daughter, and was 11 years old at the time. Scared, humiliated. Gladys destroyed the sign-in sheets. Oliver Stone asked to shoot a scene there. Lou Wood sought out Gladys Johnson. FBI inventory of effects. Claimed one of the pillow cases. The exterior is the same. Patricia Hall is now selling the house. 500K asking price. Oswald said: never, ever harm another human being. Last lines of story: history for sale in Dallas.

Next, the sound of emergency alert 3:51am on Wednesday morning. Authorized by Congress in 2006. A tip from amber alerted millions did lead to recovery of child. Emergency alerts authorized by President cannot be dialed.

Erin Moriarty on Fruitvale station and shooting of Oscar Grant III. New Years Day 2009. Cell phone video by spectators. Michael B. Jordan. Brian Kugler, film maker.

Steve Hartmann. Bushnell Park in Connecticut. "Joe the Barber" cuts hair of the homeless.
Like a grandparent to all of us.

Next, Bruno Mars.

Saturday, July 20, 2013

Appellant loses in In re Adler

The bottom line of the CAFC decision in In re Adler:

Because the Board did not err in rejecting the pending claims as obvious and did not rely on new grounds for rejection, we affirm.

Of the "substantial evidence" standard: A finding is supported by substantial evidence if a reasonable mind might accept it as adequate to support the finding. Consol. Edison Co. v. Nat’l Labor Relations Bd., 305 U.S. 197, 229 (1938).

Of the issue of "new ground of rejection":

While the Board’s explanation may go into more detail than the examiner’s, that does not amount to a new ground of rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).

Wednesday, July 17, 2013

AT&T/Bedminster loses in Ex parte Wright: the hazards of claiming too broadly

From within Ex parte Wright

We must conclude that the broadest reasonable interpretation of the term “coordinating” encompasses more than just monitoring or controlling content. Transferring the content or otherwise maintaining the communication link between peers are also activities that would have been reasonably considered “coordinating” in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Danieli is completely silent on, neither encouraging nor discouraging, such activity.

Also, observe footnote 1:

We note regarding claim 6, recent precedent reminds us that a means-plus- function claim element for which the only disclosed structure is a general purpose computer may not comply with the requirements of the second and sixth paragraphs of 35 U.S.C. § 112 if the specification fails to disclose an algorithm or other structure sufficient for performing the recited function. See e.g., Noah Systems, Inc. v. Intuit Inc., 675 F. 3d 1302, 1312-1313 (Fed. Cir. 2012) (discussing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F. 3d 1359, 1367 (Fed. Cir. 2008)); MPEP § 2181(II)(B). We note regarding claim 11, that claims which may be construed as encompassing a transitory signal (see, e.g., Spec. p. 4, para. [18]) have, in certain circumstances, been held to encompass non-statutory subject matter. See, e.g., In re Nuijten, 500 F. 3d 1346 (Fed. Cir. 2007); MPEP §§2106(I) & (II)(A). Finally, we note that we leave any such determinations based on the statements above for the Examiner’s consideration in any further prosecution. While the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02.

What is coherent light? Don't rely on attorney argument.

From Ex parte Jennings

That is, a multi-wavelength laser emits light at multiple wavelengths and the beams emitted from the laser. As discussed in our Decision, we agree with the Examiner that light emitted from a laser, regardless of the wavelength, is coherent light. Decision 4.

The Appellants contend that the Appellants have provided evidence that light emitted from lasers at different wavelengths is not coherent light. Request 2-3. However, the Appellants contention fails to cite to any specific evidence to support such an assertion. As such, the Appellants’ argument is tantamount to nothing more than attorney arguments and conclusory statements.

Attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value. See In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

Appellant wins on 112 issues, but still loses overall under 103

from within Ex parte Glydon

As to written description:

As our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983)3:

The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. . . . The content of the drawings may also be considered in determining compliance with the written description requirement. [Citations omitted.]
It is the Examiner’s burden to establish a prima facie case of non- patentability based on the written description requirement by presenting evidence or reasons establishing why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).

In an effort to carry that burden, the Examiner asserts that the application disclosure as originally filed does not provide adequate written descriptive support for claim 32.

The examiner was reversed:

In this regard, we observe that an ipsis verbis disclosure is not necessary to satisfy the written description requirement of § 112. Instead, the disclosure need only reasonably convey to persons skilled in the art that the inventor had possession of the subject matter in question. See In re Edwards 568 F.2d 1349, 1351-52 (CCPA 1978).
On this appeal record, we determine that the Examiner has not established that claims 32, and 35-39 lack written descriptive support within the meaning of 35 U.S.C. § 112, first paragraph in the subject Specification, as filed.

Of indefiniteness:

In this regard, “the indefiniteness inquiry asks whether the claims ‘circumscribe a particular area with a reasonable degree of precision and particularity.’” Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).

Related to obvious design choice:

In light of the above and contrary to Appellant’s arguments, the evidence of record reflects that one of ordinary skill in the art exercising routine skill would have recognized the option of organizing the arrangement of different types of multiple products in a package and have been led to correlate the population of the package compartments with the type of product, apertures, and surface markings in an organized manner so as to result in a packaged product corresponding to that claimed. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).

Common sense is mentioned:

Moreover, common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning." Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009).

Although the appellant won on 112 issues, the appealed claims were remained rejected under 103, and the examiner's decision was affirmed.

PTAB converts 102 rejection into 103 rejection; Papesch cited

Within Ex parte Gray, the appellant obtained reversal of a 102 rejection but was handed a 103 rejection.

PTAB cited In re Arkley, 455 F.2d 586, 587-588 (CCPA 1972), for not picking and choosing within an anticipation rejection.

Obiaya, Papesch and Kubin were cited.

"Argument of counsel" rejected in Ex parte Zhang

PTAB rejected argument of counsel in Ex parte Zhang.

Appellant defined the skilled artisan as "a chemist."

Appellant loses in Ex parte Gervais

The appellant did not fare well at the Board in Ex parte Gervais:

The Examiner has the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Once a prima facie case of obviousness has been established, evidence in support of unexpected properties may be provided by appellant; however, “[when an] advantage is not disclosed in appellant’s application” he is “not in a favorable position to urge it as a basis for the allowance of claims” In re Herr, 50 CCPA 705, 709 (1962) citing In re Lundberg, 45 CCPA 838 (1958). Further, evidence of undisclosed advantages must “‘inherently flow’ from what was disclosed in the specification” In re Davies, 475 F.2d 667, 670 (1973) citing In re Zenitz, 53 CCPA 746 (1964).

Genus/species issues were discussed:

Appellants argue “In re Baird"4 is dispositive of the no prima facie obviousness issue” where “the Federal Circuit held that the mere fact that a genus encompasses claimed subject matter is not sufficient to establish prima facie obviousness.” Appellants contend In re Baird is similar to the Examiner’s position in the case at hand.
We are not persuaded. In Baird, the Federal Circuit found that the generic formula encompassed “more than 100 million different diphenols, only one of which is bisphenol A [the compound at issue].” Baird, 16 F.3d at 382. In Baird, there was no direction to the specific compound, much less any indication that the specific compound at issue would function.
By contrast, the case at hand presents a very different situation where Kisilevsky specifically identifies the 3-amino-1-propanesulfonic acid as an exemplary compound which is taught to treat amyloid deposition (FF 1-4). See Perricone v. Medicis Pharm. Corp. 432 F.3d 1368, 1376 (Fed. Cir. 2005) (“This court rejects the notion that one of [14 listed] ingredients cannot anticipate because it appears without special emphasis in a longer list.”); see also Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art’s disclosure of a multitude of combinations failed to render any particular formulation less obvious).
In the instant case, the rejection is obviousness, not anticipation, so it is only necessary that the teaching of Kisilevsky render obvious the use of 3- amino-1-propanesulfonic acid as an exemplary compound which is taught to treat amyloid deposition (FF 1-5). In Gleave, the Federal Circuit expressly addressed the issue of lists of large numbers of compounds, where the “list includes more than 1400 sequences.” In re Gleave, 560 F.3d 1331, 1333 (Fed. Cir. 2009). The Court, found that “Wraight expressly lists every possible fifteen-base-long oligodeoxynucleotide sequence in IGFBP-2, and under our precedent, this list anticipates Gleave’s claims.” Id. at 1338.

PTAB reverses obviousness finding in Ex parte Nilsson

From the beginning of the PTAB decision in Ex parte Nilsson
The examiner did not fare well in Ex parte Nilsson.

We reverse all of the stated rejections. Our reasoning follows.
Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984). Here, the Examiner’s efforts at meeting this burden fall short.

Within the decision

In addition, the Examiner relies on the notion that “polymers are frequently named based on the monomers from which they are formed” (id.).

Hoisted on one's own petard?

In other words, the Examiner has failed to reasonably establish that the claim 57 topcoat of maleamide lacquer, given its broadest reasonable construction when read in light of the subject Specification as it would be understood by one of ordinary skill in the art, is consonant with the Examiner’s rejection position rather than being in accord with Appellants’ argued position (“the claimed top coat is maleamide” not the multi-component reaction product coating as taught by Hall (App. Br. 5)). In this regard and in tendering the rejection, the Examiner appears to attach an unreasonably broad construction to claim 57 based, in part, on the asserted notion about polymer naming that is applied to Applicants’ claimed maleamide lacquer without supplying any evidence supporting such construction while also coupling that notion to Hall’s coating in an attenuated manner with a forced reading of a possible precursor of a single component of the several components used in forming the coating of Hall.
Thus, we agree with Appellants that the Examiner has not carried the burden to establish that this argued top coat requirement of all of the appealed claims fails to differentiate the claimed laminate from the laminate product that would be expected to result if we otherwise agree with the Examiner’s proposed modifications of Ely based on Vein and Hall.

Monday, July 15, 2013

US Marine, trade secret case against US government

United States Marine, Inc. (USM) sued the United States in the United States District Court for the Eastern District of Louisiana under the Federal Tort Claims Act (FTCA), 28 U.S.C. §§ 1346(b), 2674. USM alleged that the United States misappropriated USM’s trade secrets. Specifically, USM claimed that the United States Navy, which had lawfully obtained USM’s proprietary technical drawings under a contract (to which USM was not a party), owed USM a duty of secrecy that it breached by disclosing those drawings to a rival private firm for use in designing military boats for the government.

The conclusion

The Fifth Circuit ruling that the case must be trans- ferred to the Claims Court is law of the case. Applying that doctrine, we affirm the resulting transfer order. In doing so, we necessarily hold that the Claims Court has jurisdiction over USM’s suit, with all that entails under this court’s precedents about the issues thereby resolved. At this point, this case presents even more than the usual reasons for litigation to proceed with expedition and with minimization of wasteful duplication.


Smart Options, Jump Rope (Braxton) and Erich Spangenberg

See the story interrelating Erich Spangenberg, who runs IPNav, and a Chicago entrepreneur named Peter Braxton.
How a Typical Patent Battle Took an Unexpected Turn

Patent expirations cause job loss

Genetic Engineering and Biotechnology News mentioned patent issues as reasons for the two largest employee cutbacks in the biotechnology area:

As to Eli Lilly:

Why the company did it: Adaption to “changing customer requirements, evolutions in the U.S. health care environment, and the upcoming loss in exclusivity” and projected drop in sales as patent protection expires in December on the antidepressant Cymbalta® (duloxetine hydrochloride) and, in March 2014, on the osteoporosis drug Evista® (raloxifene hydrochloride). The drugs accounted for a combined 20% of 2012 revenues.

As to AstraZeneca:

Why the company did it: Part of a comeback strategy by CEO Pascal Soriot following years of clinical setbacks involving drug candidates the company hoped would make up for sales revenues to be lost from “patent cliff” expirations through 2014, when the company will lose U.S. patent protection for two of its biggest selling drugs—its proton pump inhibitor Nexium, and its asthma and COPD medicine Symbicort.

See the story Top 15 Job-Cutting Companies of 2013 (So Far)

Sunday, July 14, 2013

CBS Sunday Morning on July 14, 2013

Charles Osgood noted they were pushing a fast forward button. First, Mo Rocca on cover story. Yesterday's vision of tomorrow. Second, Serena Alschul on 3D printing. Engineer human tissue.
Printing the human body. Third, Jeremy Irons interviewed by Tracy Smith. Global garbage problem. How we are trashing our future. Fourth, Barry Peterson on "our we really alone?" Is anybody out there? Fifth, Lee Cowan on "Meet the Jetsons." The year 2062. Our Jetsonian expectations. Don Dailor in the newsroom for headlines. Zimmerman not guilty in Sanford. Mark Strassman reports. Jury reached verdict after 16 hours of deliberations. Mark O'Mara was one of the defense lawyers and spoke. Bernie de la Rionda, prosecutor, was disappointed.. Also, Glee actor Cory Monteith dead. Gov. Perry will sign anti-abortion bill. Six year old in Indiana dune survived. Weather: hot to warm in northeast.

The July 14 show is a recycle of
CBS Sunday Morning on 28 April 2013

The cover story by Mo Rocca started with trains zooming via vacuum tube. Movie "2001" referenced. PanAm. Ron Miller dreamed of exploring space. Wolfgang Schroeder. John Criskevitch. The dominating impact of corporate sponsonship. James Banks of Popular Mechanics. 1954: FLAT SCREEN TV predicted. House of the future made of plastic. The Fabulous World of Jules Verne. Igor Sikorsky read Jules Verne. From the Earth to the Moon. Murray Leinster: two way television with a keyboard. Movie 1984. Movie Oblivion in 2013. Romanticize the past. Poll: 49% say America's best days are in the past. 35% say in the future.

Moment of nature was New Jersey's Great Swamp.

Next week: Bruno Mars. Lazy Song?

Monday, July 08, 2013

Ex parte Nirmel: pro se appellant gets remand

CHITTARANJAN N. NIRMEL of Hancock, MD represented himself in Ex parte NIRMEL.
A remand was necessary to decide about entering appellant's reply brief.

Bad day for applicant in Ex parte Simpkins

In Ex parte Simpkins the examiner's rejections were affirmed and PTAB added a rejection under 35 USC 101.

Also, PTAB cited MPEP 2144.04(II)(A) on the obviousness of deleting one element.

Sad error for applicant not to respond to double patenting rejection?

from within Ex parte Gregory

In the final Office action dated March 23, 2010, claims 1, 4-13, 15-24
and 26-31 were rejected under the judicially created doctrine of
obviousness-type double patenting over claims 1-25 of U.S. Patent No.
Gregory. Final Rej. 8. The Notice of Appeal filed July 23, 2010 is silent as
to the specific claims being appealed. In the Appeal Brief, Appellants state
that claims 1, 4-13, 15-24, and 26-31 constitute the subject matter of the
appeal (see App. Br. 5), but have not addressed, or even acknowledged, the
double patenting rejection
. In the Reply Brief, Appellants state that “[t]he
Examiner's Answer (pp. 7-8) also raises a double patenting rejection, which
was not an issue for appeal.” Reply Br. 1.
Since Appellants do not argue the ground of rejection of claims 1, 4-
13, 15-24 and 26-31 over claims 1-25 of U.S. Patent No. 7,325,753, we
summarily affirm the rejection.


The Examiner’s rejection of claims 1, 4-11, 15-19, 21-24 and 29-31 as
anticipated by Thompson is REVERSED.
The Examiner’s rejection of claims 1, 4-13, 15-24 and 26-31 under
the judicially created doctrine of double patenting is AFFIRMED.

Ex parte Owen: a second bite for the examiner?

Within Ex parte Owen, PTAB cited MPEP 706.01 and 1201 and observed the Board will not hear issues related to objections or formal matters.

As noted on page 4 of the decision, this is the second time these issues have come to the Board. The first time around, the examiner relied on only one reference, and lost at the Board; the second time around, the one reference was supplemented, and the examiner won.

Yes, KSR is cited.

Examiner misidentifies elements in figures; chocolate molder wins

Appellant in Ex parte Furlong wins on obviousness but loses under 35 USC 112

From Ex parte Furlong

A written description rejection under 35 USC 112 P1 is sustained:

The Appellants (App. Br. 7-10; see also Reply Br. 4-6) disagree, citing these passages from the Specification: [0057]; [0062]; [0063]; [0066]; [0068]; and, [0072]. We have reviewed all but [0068] and [0072] which do not appear in the copy of the Specification before us. We do not see in these passages any mention of “periodic access.” While the absence of these terms do not necessarily lead to the conclusion that there is inadequate written descriptive support (see “[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims . . . . ” Eiselstein v. Frank, 52 F.3d 1035, 1038 . . . (Fed.Cir.1995)), nevertheless, “[w]hat is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). (...)

Notwithstanding that the disclosure may suggest repeated accessing of content, the limitation at issue is “periodic access to the license-protected broadcast channel,” and not simply repeated accessing of content. “Periodic,” for example, means, ordinarily and customarily, occurring at regular intervals. It may be obvious to provide “periodic access to the license-protected broadcast channel,” given a disclosure of repeated attempts by the ST to access license-protected content, but “[o]ne shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. ” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). (Emphasis original).

As to obviousness of dependent claims:

This rejection is directed to claim 7 dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejection of claim 1 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.").

Even though the appellants prevailed on obviousness, they still lost the case:

The decision of the Examiner to reject claims 1-11 is affirmed.

Ex parte Islam: don't import limitations from the spec into the claim

From within Ex parte Islam :

See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”) It is the Appellants’ burden to precisely define the invention, not the Patent and Trademark Office’s (“PTO”). In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants always have the opportunity to amend the claims during prosecution, and broad interpretation by the Examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).

Buyouts at the Bayou

Related to a story on Bayou Corne on CBS Sunday Morning on May 5, 2013 , note the AP story Sinkhole forces hard choice on longtime neighbors.

Within the AP story:

"In a way, I guess we were lucky because we could have gotten swallowed up like that poor man in Florida did," Joanie Mistretta said, referring to 37-year-old Jeffrey Bush who was killed by a sinkhole last March. "And that's what we think could happen here."

Sunday, July 07, 2013

CBS Sunday Morning for July 7, 2013

Osgood started the July 7 show with a reference to the airline crash in San Francisco. Lee Cowan reported on the cover story "starting over." Second, Bill Geist on "diamonds," related to the movie "a league of their own." Third, Serena Alschul on Bradley Cooper. Fourth, "images of war" done by Martha Teichner. 150 years after the battle of Gettysburg. Mark Strassman; Rita Braver; the Mouse.

Headlines for July 7. Crash landing of flight 214 (a Boeing 777). 307 people on board. Lac Megantic, Quebec, fires due to freight train. Egypt remains in chaos following outster of Mersi. Edward Snowden still in transport lounge in Moscow.

Weather. Hot. 90s in east.

First, John Blackstone in San Francisco on the crash landing of the South Korean 777 airliner. Asiana flight 214. Injured passengers were sent to nine different hospitals. There were 291 passengers on board.

Lee Cowan in Lancaster, PA. Atheer Hameed, a photographer. Baghdad Symphony playing music. Baghdad Zoo. Anyone in the media was in danger in Iraq. Athir got refugee status because of threats. Why Lancaster? More than 1000 people killed in Baghdad in month of May alone.

Almanac. Bread. July 7, 1928. Chillicothe, MO: pre-sliced bread. Kleen Maid Bread. 40 loaves per minute. Toaster sales soared. Toaster fest with Bill Geist previously shown on Sunday Morning. Otto Frederick Rohwedder .

61 years ago today , SS United States broke speed record. Mark Strassman reports. Susan Gibbs. William Francis Gibbs was her grandfather. Gibbs was a Harvard drop out. Steven Ujifusa did a book. If war, SS United States could carry 14,000 troops. July 1952, 3 days 10 hours 14 minutes. 44 miles per hour. Marilyn Monroe; Marlon Brando. Roz MacPherson sailed in 1958. Jet travel 6 hours. SS United States mothballed in 1969. Charles Howland collects SS United States memorabilia. (recycled from Feb. 17, 2013)

Bill Geist on Donnie Schroeder and other female baseball players. League started in 1943 and ended in 1954. (recycled story from October 7, 2012)

Rita Braver on strokes. Mark Kirk , junior senator from Illinois. Blood supply to brain being cut off. January 2012. Stroke causes brain swelling. Rehabilitation Institue of Chicago. Mike Klinowski, lead therapist for Kirk. Stroke was on right side of brain. Kirk was five term member of House before being elected Senator. Kirk voted against Obamacare. Don't make promises you can't afford to keep. Kirk wants people to see his disabilities. See what people like him still have to offer.

Martha Teichner started with Fort Sumter. Damage photographed within hours. True likenesses remained as a record. Jeff Rosenheim at Met Museum of Art. Images of Civil War now at Metropolitan Museum, then goes to Charleston, SC. "How ferocious they tried to look." Posing stand. Stay still for up to 8 seconds. Sept. 17, 1862: 23,000 dead and wounded at Antietam. Pictures of wounded. Emancipated slaves. VBM: initials of plantation owner. Photo of Lincoln in 1860. Booth poster: first "wanted" poster illustrated with photographs. We are, as a nation, only as good as our memory. Sunday Morning Index: 78% say family photos are very important.

Inventor. Doug Engelbart died on July 2, 49 years after inventing mouse in 1964. "xy position indicator for display system." Showed it at a conference in 1968. Patent in 1970. We're just a little ways up the hill. Engelbart, a Berkeley Ph.D., once said: "SRI patented the mouse [US 3,541,531], but they really had no idea of its value. Some years later it was learned that they had licensed it to Apple Computer for something like $40,000."

Serena Alschul does Sunday Profile on Bradley Cooper.

Week ahead. Monday. Congress returns from recess. Tuesday: first day of Ramadan. Wednesday: arraignment of Boston Bomber.
Thursday: 60th ann. of Queen Elizabeth II. Friday: Jason Aldeen at Boston Sat. NAACP in Orlando.

News report from Egypt. Clarissa Ward in Cairo. Major Garrett discusses Face the Nation.

Next week on Sunday Morning. Journey to the Future.

Closed captioning sponsored by Citrical.

Moment of nature. At Mount Rushmore. Under the gaze of four former presidents.

Saturday, July 06, 2013

Buckyball, reprised

Within A Beautiful Theory is a Terrible Thing to Waste, Robert Holloway talks about the buckyball story and includes a reference to my book reviews in Carbon:

Actually, Baggott and Aldersey-Williams have done a fair job of describing the essential facts of the story, although Larry Ebert, one of the protagonists, has written a scathing denunciation [Carbon volume 33 no. 7 (1995) , pp. 1007-1010] of both books. The story though, is not just the facts in the books, and reading the accounts left me wanting to know how such a situation could have occurred.

For the record, LBE does not consider the reviews in Carbon in the genre of "scathing denunciation."

** Also, from LBE's May 1998 article in IPT [The Pfaff Case And Evaluating Technology ]

It's not as though it's all been silent on the commercial front as far as the fullerenes are concerned. In 1992, the US Patent Office saw more correspondence on fullerenes than on all other subjects combined. Away from the hype, there are several promising avenues for commercializing the fullerenes. These include the development of optical devices, hardening agents, photocopying toners, chemical sensors, gas separation devices, precursors for diamond production, batteries, catalysts, hydrogen storage media and polymers. n9

In brief comment, one observes that the existence of C60 was published in 1984 by workers at Exxon Research & Engineering Company, an environment that was commercially orientated. The proposal that C60 had the structure of a truncated icosahedron was made one year later, and, by 1986, buckyballs were proposed to be of relevance to soot formed in normal combustion processes. Although he briefly touches on the press/science interface, Baggott does not fully come to grips with the issue that the reason that expectations were greatly intensified was because of aggressive reporting of (potential) applications in the news media. n10 To date, none of the applications listed by Baggott have been commercialized.

**Separately, the buckyball is still in court. See the Estate of Buckminster Fuller v. Maxfield and Oberton, 906 F.Supp. 2d 997 (ND CA 2012), Judge Koh presiding.

Wednesday, July 03, 2013

The Tipsy Coachman Rule

From DePuy v. Waxman

The tipsy coachman rule provides that “ ‘if a trial court reaches the right result, but for the wrong reasons, it will be upheld if there is any basis which would support the judgment in the record.’ “ Malu v. Sec. Nat. Ins. Co., 898 So.2d 69, 73 (Fla.2005) (quoting Dade Cnty. Sch. Bd. v. Radio Station WQBA, 731 So.2d 638, 644 (Fla.1999)). The supreme court has explained the rule as follows:“[I]t follows that an appellee, in arguing for the affirmance of a judgment, is not limited to legal arguments expressly asserted as grounds for the judgment in the court below. It stands to reason that the appellee can present any argument supported by the record even if not expressly asserted in the lower court․[A]n appellee need not raise and preserve alternative grounds for the lower court's judgment in order to assert them in defense when the appellant attacks the judgment on appeal.”Id. (quoting Radio Station WQBA, 731 So.2d at 645).

Applicant defined term analyzed under Sunrace in Ex parte Beck

Sunrace v. Sram, 336 F.3d 1298 , is cited in Ex parte Beck

Translation issue in Ex parte LOSCH?

With the implementation of the AIA, translations of foreign language documents will become more important.

Note what happened in Ex parte Losch

On the effective use of a reply brief

from Ex parte HAVELIWALA

As to the use of a reply brief:

With respect to independent claim 20, Appellants provide a useful
overview of the claimed invention at page 4 of the Reply Brief. While the
specific illustration is not in the original Specification, we find the overview
to be well supported by the originally filed Specification and drawings and
illustrative of the claimed invention (see Reply Br. 4). We find Appellants’
arguments in the Reply Brief to be well founded, and we adopt them as our
own. (Reply Br. 3-7).

Appellant loses in Ex parte HERBACH

from Ex parte Heerbach

As to nonfunctional descriptive material

As such, the disputed limitation recites
nonfunctional descriptive material that is not entitled to weight in the
patentability analysis. See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI
2005) (informative), aff’d, No. 06-1003 (Fed. Cir. June 12, 2006) (Rule 36)
(“wellness-related” data in databases and communicated on distributed
network did not functionally change either the data storage system or the
communication system used in the claimed method). “[N]onfunctional
descriptive material cannot lend patentability to an invention that would
otherwise have been [invalidated] by the prior art.” Ex parte Mathias, 84
USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959
(Fed. Cir. 2006) (citing In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)).
See also Ex parte Nehls, 88 USPQ2d 1883, 1887–90 (BPAI 2008)
(precedential) (discussing nonfunctional descriptive material).

Appellant loses in Ex parte ROKUI

from Ex parte ROKUI

Lovin is cited:

Concerning dependent claim 4, Appellant quotes the claim language
and urges that the references fail to teach the recited subject matter. See
App. Br. 17. However, merely pointing out what claim 4 recites and then
asserting that the recited references fail to teach this limitation (see id.) is not
considered a separate argument for patentability. See In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011).

Appellant loses in Ex parte Yokota. In re Best is cited.

from Ex parte Yokota

Indeed, not only have Appellants failed to
persuasively rebut the Examiner’s inherency finding,2 reflection off the color
film of Wei is a predictable result which follows from common sense that
one of ordinary skill would appreciate. It is circumstances like this where
obviousness is found. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007). Once the Examiner has established a case for obviousness, it is the
burden of Appellants to overcome that finding with persuasive argument
based on evidence of record. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Appellants have failed to do so.

Footnote 2 cites to In re Best:

See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”)

On the meaning of "a"

from Ex parte Gatto

The Federal Circuit has repeatedly emphasized that, as a general rule, when an indefinite
article, such as “a,” is used with a term in an open-ended claim containing
the transitional phrase “comprising,” the article is properly construed to
mean “one or more.” See, e.g., Tate Access Floors, Inc. v. Interface
Architectural Res., Inc., 279 F.3d 1357, 1370 (Fed. Cir. 2002) (“It is well
settled that the term ‘a’ or ‘an’ ordinarily means ‘one or more.”’); KCJ Corp.
v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000).

101 issue arises in Ex parte Connell

from Ex parte Connell:

We reinstate the Examiner’s rejection of claims 1-17 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter as set forth at page 6
of the May 20, 2009 Office Action.


Without the “adjusting” step also being performed by the
processor, this transformation step is performed on a disembodied image
(i.e., an abstract data structure rather than an article in the form of a data
structure in a memory). This rejection may be overcome by deleting the
language “one or more of” from claim 1.

Applicants lose in Ex parte Harris

On the use of combined references, PTAB in Ex parte Harris cites to Para-Ordnance vs. SGS, 73 F.3d 1085, 1090 (CAFC 1995).

In re Fine, 5 USPQ2d 1596, is cited as to a prima facie case. Of declarations, PTAB cites In re Oelrich, 579 F.2d 86. And yes KSR is cited as to predictable results.

George Best was one of the judges.

Filing an RCE withdraws an appeal

From Ex parte Blatt : The RCE will be treated as a request to withdraw
the appeal.

Tuesday, July 02, 2013

Convolve/MIT lose on trade secret issue at CAFC

Of the case Convolve and MIT vs. Compaq and Seagate

Of background

In July 2000, Convolve and MIT sued Compaq and Seagate for, among other things, trade secret misappro- priation and patent infringement. Convolve was con- ceived and is owned by Dr. Neil Singer. While a graduate student at MIT, Dr. Singer set out to solve the general problem of moving equipment quickly while minimizing the resultant vibrations. The ’635 and ’473 patents grew out of that research. MIT owns the ’635 patent while Convolve owns the ’473 patent and all alleged trade secrets in this suit. Convolve contends that Seagate manufactured drives and tools that infringe the ’473 and ’635 patents and misappropriated Convolve’s trade se- crets. Convolve also asserts that Compaq incorporated the Seagate drives into its computers and provided tools, such as the “F10 BIOS,” that together infringe certain claims of the ’473 patent. Convolve further claims that Compaq misappropriated multiple trade secrets relating to the Quick and Quiet User Interface.

Of the non-disclosure agreement [NDA]:

In 1998, Convolve and Compaq began licensing nego- tiations regarding Convolve’s technology. To facilitate the discussions, Convolve and Compaq signed a non- disclosure Agreement (“NDA”) and agreed to share their respective confidential information for “furthering a business relationship.” J.A. at 820. The confidential information to be disclosed was described as “storage peripheral market information and technology infor- mation” from Compaq and “algorithms and processes for enhancing positioning systems” from Convolve. Id. The NDA states that, to trigger either party’s obligations, the disclosed information must be: (1) marked as confidential at the time of disclosure; or (2) unmarked, but treated as confidential at the time of disclosure, and later designated confidential in a written memorandum summarizing and identifying the confidential information. The NDA explic- itly excludes from its scope any information that: (1) the recipient possessed prior to disclosure; (2) was a matter of public knowledge; (3) was received from a third party without a duty of confidentiality attached; (4) was inde- pendently developed by the recipient; (5) was disclosed under operation of law; or (6) was disclosed by the recipi- ent with the discloser’s prior written approval. The NDA covered any confidential disclosures between August 13, 1998 and October 15, 2000.


With the NDAs in place, Compaq, Seagate, and Con- volve had a meeting on October 15 and 16, 1998, during which Convolve gave a presentation regarding its input shaping technology and its application to computer disk drives. After the meeting, the parties acknowledged in writing that any oral disclosure of confidential infor- mation during that meeting was covered by the NDAs. Convolve gave two other presentations to Compaq and Seagate, on February 10 and April 7, 1999. Although Convolve sent Seagate copies of the slides from the Feb- ruary presentation and a letter discussing the April demonstration, Convolve did not state in writing that any of the disclosures during or in connection with those later meetings were confidential. Despite these meetings and continued communications, Convolve never consummated a deal with Compaq and Seagate regarding the technology.

**Of the trade secrets

Convolve asserts three grounds for its belief that the district court improperly granted summary judgment on its trade secret claims: (1) that it presented sufficient evidence to create material issues of fact regarding Seagate and Compaq’s claims of prior knowledge and non- use of the trade secrets, as well as enough evidence that the trade secrets were disclosed in accordance with the NDA marking provisions; (2) that it presented evidence that would support a verdict that the parties, through their course of conduct, adopted a broad construction of the NDAs or waived their specific requirements for designating matters as confidential; and (3) that the Convolve- Seagate NDA did not govern the entire confidential relationship between the parties because trade secret misappropriation claims may also be analyzed as tort claims under California law. Each of Convolve’s arguments will be addressed in turn.

The CAFC began:

Trade secret misappropriation is a matter of state law. See Atlantic Research Mktg. Sys., Inc. v. Troy, 659 F.3d 1345, 1356 (Fed. Cir. 2011) (citing Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1355 (Fed. Cir. 2009)). The parties agree that California law applies to Convolve’s trade secret claims against Seagate. The district court concluded that New York law applies to the claims against Compaq. We apply our own law “to substantive and procedural issues ‘pertaining to patent law.’” Finjan, Inc. v. Secure Computer Corp., 626 F.3d 1197, 1207 (Fed. Cir. 2010) (quoting Aero Prods. Int’l, Inc. v. Intex Recreation Corp., 466 F.3d 1000, 1016 (Fed. Cir. 2006)). We review the district court’s grant of summary judgment under the law of the regional circuit. See IGT v. Alliance Gaming Corp., 702 F.3d 1338, 1343 (Fed. Cir. 2012) (citing MicroStrategy Inc. v. Bus. Objects, S.A., 4229 F.3d 1344, 1349 (Fed. Cir. 2005)).

Of the first point:

ATSIs 1B, 2A, 2C, 2E, and 3B–D were disclosed in the absence of the written confidentiality follow-up memorandum mandated by the NDAs. For this reason, barring waiver of the NDAs marking requirements (discussed below) we conclude that Seagate did not breach the NDA to the extent it may have appropriated the information disclosed. Because the disclosure of the information was not subject to the confidentiality obligations of the NDAs, moreover, barring some other basis upon which to predi- cate a promise of confidentiality (which we also discuss below) information relating to those ATSIs lost any trade secret status it might have had upon disclosure.

Of the language of the NDA:

The plain language of the Convolve-Seagate NDA unambiguously requires that, for any oral or visual disclosures, Convolve was required to confirm in writing, within twenty (20) days of the disclosure, that the information was confidential.

Of a separate claim under California statutory law:

Convolve next argues that, even if it failed to disclose or confirm its trade secrets in writing, such failure only warranted dismissal of its contract claims. Convolve also pled a separate claim for trade secret misappropriation; Convolve argues that its failure to comply with the NDA is irrelevant to that tort claim. Instead, Convolve contends that the California Uniform Trade Secrets Act (“CUTSA”) controls its misappropriation claims against Seagate. And, because CUTSA does not require trade secrets to be disclosed in writing, the NDA does not define the entirety of the parties’ relationship. According to Convolve, CUTSA provides that confidential relationships can be express or implied, and can depend on whether the defendant knew or should have known that disclosures were made under circumstances that compelled the receiving party to maintain confidentiality. As such, Convolve argues that it presented enough evidence to support a finding that the confidential relationship be- tween it and Seagate was either not governed by, or not fully governed by, the NDA.

The CAFC did not accept this argument:

As another panel from this court found, the most relevant authority is from the Ninth Circuit (applying Oregon law), that “a written non-disclosure agreement supplants any implied duty of confidentiality that may have existed between the parties.” Id. (citing Union Pacific R.R. Co. v. Mower, 219 F.3d 1069, 1076 (9th Cir. 2000)). This conclu- sion is fully consistent with general principles of California contract law. See Faigan v. Signature Grp. Holdings, Inc., 150 Cal. Rptr. 3d 123, 134 (Cal. Ct. App. 2012) (“There cannot be a valid express contract and an implied contract, each embracing the same subject, but requiring different results.”) (citing Shapiro v. Wells Fargo Realty Advisors, 199 Cal. Rptr. 613 (Cal. Ct. App. 1984)); see also Hill v. State Farm Mut. Auto Ins. Co., 83 Cal. Rptr. 3d 651, 663 (Cal. Ct. App. 2008) (“Express covenants abro- gate the operation of implied covenants so courts will not permit implied agreements to overrule or modify the express contract of the parties.”); Wagner v. Glendale Adventist Med. Ctr., 265 Cal. Rptr. 412 (Cal. Ct. App. 1989) (holding that there can be no implied contractual term at variance with an express term of a contract).


If the parties have contracted the limits of their confidential relationship regarding a particular subject matter, one party should not be able to circumvent its contractual obligations or impose new ones over the other via some implied duty of confidentiality.

The CAFC continued:

Indeed, the CUTSA itself compels such a result. The CUTSA states that misappropriation occurs when a trade secret is acquired under circumstances giving rise to a duty to maintain its secrecy. Cal. Civ. Code § 3426.1(b). Convolve disclosed its alleged trade secrets to Seagate pursuant to the provisions of the NDA. Therefore, the “circumstances” giving rise to a duty to maintain the secrecy of the disclosed information is dictated by the terms of the NDA. Convolve did not follow the procedures set forth in the NDA to protect the shared information, so no duty ever arose to maintain secrecy of that information. As such, Convolve’s argument must fail.

The conclusion:

For the foregoing reasons, we affirm the district court’s findings that Seagate and Compaq did not misappropriate Convolve’s trade secrets and that the ’635 patent is non-enabling and, thus, invalid under 35 U.S.C. § 112.