Thursday, October 31, 2013

Board affirmed by CAFC in Haase

From In re Haase

The ’849 application had an extensive prosecution history.
Before the application wound its way up to the
Board, it spent nearly six years in front of the Examiner.
During that time, in response to the Examiner’s rejections,
Mr. Haase filed numerous affidavits and declarations
from himself, experts, and people who work in the
industry. Collectively, the submissions purported to show
that Mr. Haase’s use of particular molecular-weight
ranges obtained unexpected results, that the prior art
taught away from his claims, or that his invention was
copied and met a long-felt need in the industry. Considering
this evidence, the Examiner nevertheless concluded
that the claims were unpatentable over prior art.

As to anticipation

All that is required to meet
claims 1, 2, 56, and 75 is one individual ammonium
polymer compound within the claimed range, no matter
what else is in the composition or how much of the molecular-
weight distribution disclosed in Hassick overlaps
with the claimed ranges. Because Mr. Haase’s claims 1,
2, 56, and 75 undoubtedly “cover[] several compositions,”
and because at least one such composition was disclosed
in Hassick for each of those claims, Hassick anticipates.
Titanium Metals, 778 F.2d at 782.


evidence supports the Board’s finding that Hassick
discloses polymers that come within the claim
limitations, and the only “result” required by Mr. Haase’s
claims is a reduction in turbidity—regardless of how large
that reduction is or how well it compares to other results
in Hassick. See Bristol-Myers Squibb Co. v. Ben Venue
Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001). The
anticipatory disclosure in Hassick shows a reduction in
turbidity. Nothing more is needed.

As to obviousness

The Board rejected the remaining claims at issue—
independent claims 3, 4, 22, and 76—on the ground of
obviousness. The PTO bears the initial burden of showing
a prima facie case of obviousness. E.g., In re Sullivan,
498 F.3d 1345, 1351 (Fed. Cir. 2007). If the relevant
comparison between disputed claim limitations and the
prior art pertains to a range of overlapping values, “we
and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie
case of obviousness.” In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003); see In re Geisler, 116 F.3d 1465, 1469
(Fed. Cir. 1997) (overlap only at the end points). Where a
variable is known to affect a particular desirable result,
i.e., is what has been called a “result-effective” variable,
the “overlap itself provides sufficient motivation to optimize
the ranges,” and “‘it is not inventive to discover the
optimum or workable ranges by routine experimentation,’”
because the desire to improve results would motivate
skilled artisans to experiment with, and improve
upon, known conditions in the prior art. In re Applied
Materials, Inc., 692 F.3d 1289, 1295-96 (Fed. Cir. 2012).

After a prima facie case of obviousness is established,
an applicant may present evidence to rebut it. Sullivan,
498 F.3d at 1351. Such rebuttal evidence comes in many
forms, but common-sense principles guide its persuasiveness.
For example, an applicant claiming a particular
range for a result-influencing variable may offer proof
that the claimed range leads to unexpected results, but
that evidence “must be commensurate in scope with the
claimed range.” Peterson, 315 F.3d at 1330; Geisler, 116
F.3d at 1469-70. The applicant may also try to show that
the prior art teaches away from the claimed invention.

But a prior-art reference that discloses alternatives does
not, simply by preferring some alternatives, “teach away”
from the non-preferred alternatives, In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004), and a particular reference’s
mere silence about a particular feature does not
tend to teach away from it, especially if it is disclosed
elsewhere in the prior art, Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). In addition, an
applicant may try to show non-obviousness based on
evidence beyond a comparison of claims with prior art,
i.e., through objective indicia (secondary considerations),
but any such evidence must, at a minimum, be tied to the
particular claims so as to be a sound indicator that skilled
artisans would not have found obvious what is actually
claimed. E.g., Wyers v. Master Lock Co., 616 F.3d 1231,
1246 (Fed. Cir. 2010). The Board’s factual findings on
these issues are reviewed for substantial evidence. See,
e.g., Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d
1363, 1372 (Fed. Cir. 2013); Geisler, 116 F.3d at 1469.

As to weak argumentation

Here, too, rather than systematically pointing out
where to find the information that the Board said was
missing, Mr. Haase just states that the data exist and
directs us back to the expert reports. We see no basis, in
such loose assertions or otherwise, for overturning the
Board’s detailed findings as unsupported by substantial


We discern no
error in the Board’s treatment of Mr. Haase’s evidence;
indeed, if Mr. Haase is right that Kigel’s turbidity results
were poor, that is all the more reason to think that a
skilled artisan would have tried to improve on those
using Simmsgeiger’s teachings about higher
molecular weights and polyacrylamides. See Haase, at
*31. Mr. Haase has not established that the Board’s
unexpected-results findings lacked sufficient evidentiary

CAFC reverses Board decision in Randall case as "infected by prejudicial error" ; common sense discussed

From Randall v. Rea, concerning an inter partes re-exam related to bulkheads for trucks:

On appeal,
the Board of Patent Appeals and Interferences (now
the Patent Trial and Appeal Board) reversed, unable to
discern any reason that one of ordinary skill in the art
would have been motivated to combine the cited references.
Randall appeals the Board’s determination to this
court. Because the Board failed to consider a wealth of
well-documented knowledge that is highly material to
evaluating the motivation to combine references to arrive
at the claimed invention, we vacate the Board’s decision
and remand the matter.

Background law

A claimed invention is unpatentable if the differences
between the claimed invention and the prior art are such
that the claimed invention as a whole would have been
obvious to one of ordinary skill in the relevant art. 35
U.S.C. § 103. Whether a claimed invention would have
been obvious is a question of law, based on factual determinations
regarding the scope and content of the prior
art, differences between the prior art and the claims at
issue, the level of ordinary skill in the pertinent art, and
any objective indicia of non-obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007); Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). On
appeal, we review the Board’s compliance with governing
legal standards de novo and its underlying factual determinations
for substantial evidence. In re Sullivan, 498
F.3d 1345, 1350 (Fed. Cir. 2007).

Common sense arises

In recognizing the role of common knowledge and
common sense, we have emphasized the importance of a
factual foundation to support a party’s claim about what
one of ordinary skill in the relevant art would have
known. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d
1372, 1377 (Fed. Cir. 2012); Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328 (Fed. Cir. 2009). One
form of evidence to provide such a foundation, perhaps the
most reliable because not litigation-generated, is documentary
evidence consisting of prior art in the area.
Randall relied on just such evidence in citing to extensive
references of record showing a familiar, even favored,
approach to bulkhead stowage. For instance, Randall
cited four U.S. patents (Nos. 1,148,382; 2,752,864;
2,866,419; and 4,019,442) that disclose bulkheads designed
to be lifted and stowed near the ceiling, three of
which (the ’382, ’864, and ’419 patents) describe such
stowage for movable, track-mounted panels.


The Board’s failure to consider that evidence—its
failure to consider the knowledge of one of skill in the art
appropriately—was plainly prejudicial.3 Once it is established
that a prevalent, perhaps even predominant,
method of stowing a bulkhead panel was to raise it to the
ceiling, it is hard to see why one of skill in the art would
not have thought to modify Aquino to include this feature—
doing so would allow the designer to achieve the
other advantages of the Aquino assembly while using a
stowage strategy that was very familiar in the industry.4
Moreover, although FG claims that, as depicted, the
panels of Aquino may have been impeded by the rails
from being raised all the way to the ceiling, there is no
dispute that it would have been well within the capabilities
of an ordinary bulkhead designer to adjust the geometry
(e.g., drop the hinge axis down a few inches) so that
the panels could be freely raised to the ceiling. There are
no apparent functional concerns that would have discouraged
a bulkhead designer of ordinary skill from attempting
the combination.


Particularly when viewed in the context of the background
references Randall provided, the evidence strongly
supports the notion that the bulkhead design FG claimed
was nothing more than the “combination of familiar
elements according to known methods,” “‘each performing
the same function it had been known to perform,’”
“yield[ing] predictable results.” KSR, 550 U.S. at 416-17
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)). In addition, neither FG nor the Board points to
any objective indicia of non-obviousness. On this record,
the Board’s finding of lack of motivation to combine is
infected by prejudicial error. We accordingly vacate the
Board’s reversal of the Examiner’s rejection of claims 11-
12, 38-40, 48-56, 75-79, and 83-91 for obviousness.

Wednesday, October 30, 2013

Appellants in Jakob win on missing element case

from Ex parte Jakob

We agree with Appellants that at best, “[a] combination of Skof[l]janec and Case would lead to a housing for an ECU, where an opening leading to the inside of the housing (see Fig. 8 of Skof[l]janec) would be covered by knockout plugs in the sense of Case.” Br. 8. Thus, as stated by Appellants, Skofljanec’s “openings that are used to fix the housing (in the sense of the ‘attachment places’ of the present invention) do NOT lead to the inside of the housing,” and “there is no indication to cover these openings.” Id.
Accordingly, we do not sustain the Examiner’s rejection of independent claims 3, 9, and 10, and claims 4, 5, and 11 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Skofljanec and Case.

General Motors takes a tumble in Ex parte MAIER

The issues in Ex parte MAIER

Appealed claims 1-21 stand rejected under 35 U.S.C. § 112, first paragraph, enablement requirement. Claims 14-21 also stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claim 10 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Kudou. Claim 11 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kudou in view of Bains, and claim 12 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Kudou in view of Bains and Johnson, Jr.
We have thoroughly reviewed each of Appellants' arguments for patentability. However, we find that the Examiner's rejections are free of reversible error.

As to enablement

The Examiner further explains that "[w]ithout any such description and without any definition of the variable a1, a2, or a3, one having ordinary skill in the art would not be able to make/use the equation, and, consequently, would not be able to make/use the claimed 'determine a desired pump speed based on the delivery head value and a predetermined volume flow set-point value of the fluid'" (Id.). Hence, the Examiner takes the reasonable position that without prior knowledge of a1, a2, and a3, "the specification does not give clear guidance on how the claimed process is to be carried out" (Ans. 17, first para.).

The appellants did not do well on enablement:

Accordingly, it is our view that the Examiner has effectively shifted the burden to Appellants to demonstrate that one of ordinary skill in the art would be able to practice the claimed invention of determining a desired pump speed based on the delivery head value and a predetermined volume flow set-point value of the fluid. Appellants, however, have not shouldered their burden but offer only the following conclusory remarks:
In the present case, one of ordinary skill in the art knows and understands how to evaluate a quadratic polynomial, and if necessary, how to solve for the constant coefficients, which as also understood by one of ordinary skill in the art, are application specific. Appellants respectfully submit that solving for constant coefficients is a basic skill that is well within the capabilities for a person of ordinary skill in the art without any undue experimentation.
(Reply Br. 3, penultimate para.).


Turning to the § 101 rejection of claims 14-21, we note that Appellants have not presented any substantive argument against the Examiner's rejection. Rather, Appellants argue that their amendment after final rejection should have been entered by the Examiner in order to place the claimed invention in statutory form. However, the Examiner's decision to not enter the amendment is a petitionable matter that is not properly before us for review. Accordingly, we will sustain the Examiner's § 101 rejection, pro forma.
We will also sustain the Examiner's §102 rejection of claim 10. Kudou, like Appellants, discloses a control system for a fuel cell system comprising a fuel cell stack wherein the controller is configured to determine a desired speed of a pump which controls the volume flow of a cooling fluid which controls the temperature of the stack.

General Motors strikes out:

In conclusion, based on the foregoing and the reasons well stated by the Examiner, the Examiner’s decision rejecting the appealed claims is affirmed.
The decision of the Examiner is affirmed.

"Undersea Warfare Center" loses on written description and obviousness

The appellant did not do well in Ex parte Dunn

The appellant seemed to make the wrong argument as to written description:

The Appellant’s arguments address the interpretation of “a passageway communicating with a source of exhaust gas and at a single point” and its support in the Specification but do not address the phrase “as an only point,” which is the basis of the Examiner’s rejection. Br. 7. Therefore, the Appellant’s arguments are not persuasive, and we sustain the Examiner’s rejection of the claim under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.

As to obviousness, part of appellant's arguments related to "loss of function"

The Appellant further argues that “if a prior art reference is cited that requires some modification in order to achieve what is claimed . . . yet if that modification destroys the purpose or function of the invention as disclosed in the reference and at a similar operating condition, one of ordinary skill in the art would not have found a reason to make the modification nor would it be obvious to try to make the modification.” Br. 10-11. The Examiner responds that the “propulsion unit and/or teachings of Kobayashi would not be destroyed by provision of a single inlet . . . as long as the mass flow and densities of the mixing exhaust gas and water remain the same” and “Kobayashi sets forth no criticality for any specific number of points of exhaust gas introduction.” Ans. 8. The Appellant’s argument is not persuasive because the Appellant has not shown how providing a single hole would destroy the purpose or function of Kobayashi.

Bottom line: For the above reasons, the Examiner’s rejections of the claim are

Lawyer is the bad guy in NCIS "Oil and Water" on Oct. 29

Naturally, the lawyer, here "Brett Creevy" (played by William Ragsdale), was the bad guy in the "Oil and Water" episode of NCIS. Not only depicted as greedy and conniving but also collapsing into a simpering mess when cornered. Creevy was headed for the Maldives, but got snagged because of his use of a sturgeon-leather brief case.

"Danielle Benton", an environmental activist, looked like the perp for most of the show.

The episode also mentioned an "annoyotron."

Appellants lose on 112 P2 in GAUSELMANN; examiner affirmed

from Ex part GAUSELMANN

As to written description

The test for sufficiency of the written description of a patent application “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991)). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). A negative claim limitation, such as the “without requiring the use of player tracking cards or other data about the players to identify players involved in the tournament and without requiring player intervention” limitation at issue here, is adequately supported “when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012). It is important to note, however, that “[s]uch written description support need not rise to the level of
disclaimer. . . . [and that] it is possible for the patentee to support both the inclusion and exclusion of the same material.” Id.
The entirety of the Specification’s discussion of player identification is contained in the two portions quoted above. Those portions clearly preface each mention of player tracking cards with the term “if.” “If,” in the context of the Specification, clearly conveys to one of ordinary skill in the art an optional feature. Further, we are unable to ascertain any portion of the Specification that requires, implicitly or explicitly, the identification of the players to either set up or carry out the tournament. Accordingly, we find that the phrase “without requiring the use of player tracking cards or other data about the players to identify players involved in the tournament and without requiring player intervention” as recited in independent claims 1 and 19, and by dependency claims 2, 3, 5-18, and 20-24, is adequately supported by such description as to reasonably convey to those skilled in the art that Appellants had possession of the claimed subject matter as of the filing date.

Accordingly, we do not sustain Rejection I.

As to the rejection for Indefiniteness under 35 USC 112 P2:

Appellants appear to raise two arguments in response to this rejection. First, Appellants contend that this rejection is overcome “if the objection to the specification under 35 [U.S.C. §] 112, first paragraph, was overcome.”
App. Br. 9. Second, Appellants assert that the phrase is not indefinite because it “conveys that the tournament is set up without any information whatsoever about the players.” Id. at 10. Appellants contend that the Specification makes clear that “the player does not supply any data whatsoever in order to set up or carry out the tournament.” Reply Br. 5.

In response to Appellants’ arguments, the Examiner explains that simply because the Specification discloses setting up the tournament without any information about the players, that does not clearly disclose what is encompassed by the phrase “other data.” Ans. 19.
Because there are potentially numerous reasonable interpretations of what might constitute “other data about the players to identify players,” many of which depend upon the subjective concept of recognition and other factors as discussed above, and because one interpretation does not necessarily encompass the other, this is not merely a question of choosing the broader of the two possible interpretations. Rather, we are confronted with an ambiguity that renders the scope of the claimed subject matter unclear. As such, we are “justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under
35 U.S.C. § 112, second paragraph, as indefinite.” See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008).

Accordingly, we sustain Rejection II.


Because the claims are indefinite, Rejections III and IV must fall, pro
forma, as they are necessarily based on speculative assumptions as to the scope of the claims. See In re Steele, 305 F.3d 859, 862-63 (CCPA 1962).

Bottom line: AFFIRMED

Tuesday, October 29, 2013

Appellant Synthes loses at CAFC on written description

Synthes v. Spinal Kinetics

The district court, at Synthes’ urging, broadly construed the phrase “third plate including a plurality of openings,” which appears in claim 29. The relevant claims, moreover, include broad language added during prosecution. Synthes amended the application that became the ’270 patent to add the concept of “openings” in claim 29 almost five years after the application was originally filed, and after SK’s M6 devices were already on the market. See J.A. at 20676; 25157–25179. The origi- nal disclosure claimed and disclosed a plurality of grooves and a plurality of channels, but did not describe “open- ings” generally. See id. While broadening claims during prosecution to capture a competitor’s products is not improper, the written description must support the broadened claims. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 909 n.2 (Fed. Cir. 2004) (“[I]t is not improper for an applicant to broaden his claims during prosecution in order to encompass a competitor’s prod- ucts, as long as the disclosure supports the broadened laims.”) (citing Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 874 (Fed. Cir. 1988)). After hearing the testimony of SK’s expert, Dr. Lee, and its research and development manager, Mr. Koske, indicat- ing that the as-filed disclosure did not demonstrate pos- session of an intervertebral implant that employed any sort of openings anywhere on the cover plates, the jury determined that the ’270 patent was invalid under § 112, paragraph 1. As the district court did before us, we find that substantial evidence supports that conclusion.
Section 112, paragraph one of Title 35 requires a pa- tentee to provide a written description that allows a person of skill in the art to recognize that the patentee invented what is claimed.3 See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562– 63 (Fed. Cir. 1991)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor ha[d] possession of the claimed subject matter as of the filing date.” Id. Determination of whether a patent satisfies the written description requirement is a question of fact. Id. (citing Capon v. Eshar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.

Synthes contends that the jury’s verdict of invalidity for a lack of adequate written description was not supported by substantial evidence. Synthes asserts that the ’270 patent’s written description does not limit the claimed “plurality of openings” to peripheral grooves. Synthes next argues that the testimony and evidence presented by SK via its expert and fact witnesses regarding the “plurality of openings” limitation did not support the jury’s verdict. Synthes also disputes the district court’s post-trial conclusion that SK produced evidence demonstrating that the field of intervertebral implants was sufficiently unpredictable such that a disclosure of one species of openings would not be enough to claim the entire genus. We disagree on all counts.


The written description, however, never discloses anything broader than using grooves to anchor the fiber system to the cover plates.

Taken together, Mr. Koske’s testimony is at least cir- cumstantial evidence that it would not be evident that peripheral grooves on the cover plates would disclose to skilled artisans that internal slots would serve the same function. Mr. Koske’s testimony and the exhibits used during it, coupled with Dr. Lee’s testimony, provided ample evidence for the jury to conclude that the written description did not support the broad claim limitations in the asserted claims.

And, even if Synthes’ cross-examination of Dr. Lee would allow us to draw a different conclusion, so long as substantial evidence supported the jury’s verdict, we must affirm its decision. See First Nat’l Mortg. Co., 631 F.3d at 1067–68; see also Guy v. City of San Diego, 608 F.3d 582, 588 (9th Cir. 2010) (“[I]t has long been held that a jury may properly refuse to credit even uncontradicted testimony.”) (cita- tions omitted); Watec Co. v. Liu, 403 F.3d 645, 651 n.5 (9th Cir. 2005) (“We will not weigh the evidence or assess the credibility of witnesses in determining whether sub- stantial evidence exists.”) (citations omitted).


First, SK had no higher burden than providing clear and convincing evidence that the ’270 patent does not satisfy the written description requirement on the “plurality of openings” limitation. Second, while we did state in Bilstad that the mechanical field was “fairly predictable,” we did not hold that all inventions that may be characterized as “mechanical” allow claiming a genus based on disclosure of a single species.
As we noted in Ariad, there are no “bright-line rules governing, for example, the number of species that must be disclosed to describe a genus claim, as this number necessarily changes with each invention, and it changes with progress in a field.” Ariad, 598 F.3d at 1351. In- deed, factual inquiries will, at times, create confounding results. But, whatever inconsistencies may appear “to exist in the application of the law, those inconsistencies rest not with the legal standard but with the different facts and arguments presented to the courts.” Id. at 1352. That is precisely the situation here.

The conclusion

Based on the foregoing, we affirm the district court’s denial of JMOL that claims 29–31 of the ’270 patent are invalid under 35 U.S.C. § 112, paragraph 1 for lacking an adequate disclosure to support the “plurality of openings” limitation. We also affirm the district court’s denial of SK’s request for attorneys’ fees under 35 U.S.C. § 285. Accordingly, we need not reach the other issues addressed by the district court and addressed by the parties in the briefing before this court.

From the dissent

The written-description challenge in this case is to structural claim language that is broader than the specific embodiments disclosed in the written description. This is not a case—such as some cases involving genetic or chem- ical inventions—in which the claim language at issue is functional rather than an identifier of structure. See, e.g., Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010); Regents of University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). Nor is it a case in which the claim language includes details that do not appear in the written descrip- tion. See, e.g., Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1327 (Fed. Cir. 2000). The written-description
question here is the familiar one involving whether the claim language is simply too broad given the disclosure— notwithstanding that claim language may be and com- monly is broader than described embodiments, as it identifies what aspects of the disclosed embodiments matter. See In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981) (“[T]hat a claim may be broader than the specific embodiment disclosed in a specification is in itself of no moment.”); Ronald Slusky, Invention Analysis and Claim- ing: A Patent Lawyer’s Guide at 32-33 (2007) (discussing claim drafting process of identifying what features of embodiment matter).

In a case like this one, the written-description requirement must focus on whether the way in which the (broader) claim term differs from the (narrower) disclo- sure is pertinent to fulfilling the identified purposes of the claims at issue. More specifically, for a challenger to prove insufficiency of the written description to support the claim language, the challenger must identify the respect in which the claim language differs from the disclosed embodiments.


Nothing else Dr. Lee said makes up for the irrele- vance of the foregoing testimony. He testified that he could not find the word “openings” in the specification, see Joint App. 20852 (Tr. 2453:1-13), but that is itself of no importance: the written-description requirement is about support in substance, not about labels. Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 967–68 (Fed. Cir. 2006).

That im- portation of functional requirements is incorrect, because the term “fiber system” is entirely a structural one. “Where a claim uses clear structural language, it is gen- erally improper to interpret it as having functional re- quirements.” Schwing GmbH v. Putzmeister Aktiengesellschaft, 305 F.3d 1318, 1324 (Fed. Cir. 2002); accord Toro Co. v. White Consol. Indus., Inc., 266 F.3d 1367, 1371 (Fed. Cir. 2001) (“An invention claimed in purely structural terms generally resists functional limitation.”). Spinal Kinetics offers no convincing reason to deviate from the general rule in this case.

Redaction issue in Ex parte Maclean ; 37 CFR 41.6

from within Ex parte Maclean

After all, Appellants continue to regard the Declaration and its Appendices as having been redacted from the public record including the Appeal Brief. Accordingly, such redacted evidence that is no longer part of the Application file is not considered as part of the record evidence before us.

However, Appellants’ redaction position as to the Appeal Brief content is not consonant with the general public availability of Board records pursuant to 37 C.F.R. § 41.6 (a) (1) and (b)(2) and the apparently deliberate inclusion of a copy of the Declaration in an Appendix to the Appeal Brief (Br. 11, n. 1). Moreover, Appellants have not filed a formal petition in a separate Paper seeking redaction of the copy of the Declaration submitted with the Appeal Brief.

KSR cited in Ex parte Paulus

The PTAB sustains "obvious improvement" rejection in Ex parte Paulus

Kaufmann wins appeal on obviousness

from Ex parte Kaufmann

There was a lack of a factual basis for a prima facie case:

Thus, the Examiner has not provided an adequate factual basis for supporting a prima facie case of obviousness of the Appellants’ claimed invention. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis”).

Albrecht loses on anticipation at PTAB

from Ex parte Albrecht

An issue with a generic class in a claim:

Further, the Decision explains:

Appellants’ assertion that neither Oto nor the Examiner’s reference Ul used sodium hyaluronate as a surfactant misses the point. The claimed invention recites a composition “comprising at least one anionic surfactant.” (App. Br. 26, Claims App'x.) To read on this composition claim limitation, the prior art need only disclose a composition comprising a component that is an anionic surfactant. The prior art does not, itself, need to identify or describe using the component as such a substance to be anticipated. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987)(“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”).


Thus, the Specification description of hyaluronic acid as thickener does not limit the broad claim term “anionic surfactant” so as to exclude hyaluronic acid. “During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).

Morris cited in "missing element" obviousness case

from Ex parte Budde

With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 1, Appellants argue (App. Br. 12-16; Reply Br. 2-4) that Kim does not disclose the claimed element in claim 1 of “wherein in
response to a user entering the desired device name in the mobile input unit and bringing the mobile input unit within the range, the desired device name is automatically transmitted from the mobile input unit to the device and the name memory of the device is overwritten with the desired device name” (hereinafter “disputed claim element”). Independent claims 9-11 recite similar subject matter.
The Examiner responds that Kim discloses a remote controller to change the name of a device. Ans. 12.

In the Reply Brief, Appellants argue that in

Kim, the name is changed in response to the user selecting a name from a displayed list, where the name selection is performed using a remote controller. That is, the remote controller is used to scroll through the displayed list of names and select a name. Once the name is selected, then the name of a device is changed.
Reply Br. 3.

According to Appellants’ Specification, the name of a device that is
stored in the name memory can be selected and/or changed. Spec. 2,
ll. 9-10. Also, if a user wishes to switch from one device to another device, he can select the new device by selecting its name from a list provided for the purpose. Spec. 7, ll. 2-5. Although this disclosure is not limiting of the claimed invention, it provides context for selecting the name of the device.

We agree with the Examiner’s explanation (Ans. 12) which finds that Kim’s selection of a name from a list of names meets the function of the disputed claim element because independent claim 1 does not preclude such a reading. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

Sunday, October 27, 2013

"The Mentalist" On October 27, 2013

Patrick to Ray Haffner (played by Reed Diamond ), now working for Visualize: You're a worse psychic than you were a cop. Murder victim, Chad Parkman: a successful Olympic gymnastic coach. Parkman's Gym, Marin, County.

Chad Parkman: trustworthy.

Devon Frost also murdered.

Patrick: The trick was there was no trick.

Red John has a tatoo on his left shoulder: three dots.

"The Good Wife" on Oct. 27, 2013. Episode 100.

"Alicia is leaving the firm and she's taking our top clients." Diane to Will. "Document everything."

Will: first of all you're fired. second, I'm taking your cell phone. Get out of here right now, you are fired.

Will tells IT guy to shut down the files. A vote of the executive committee to remove Alicia is taken.

By 9:13pm, Alicia is fired and escorted out.

Frantic phone calls to clients and mention of "tortious interference."

The restraining order against Alicia's firm is upheld, but Alicia gets a restraining order from Judge Winter against Will. There are references to Judas and thirty pieces of silver.

By 9:45pm, a sex scene between Alicia and Peter.

Quote from client ChubHum: "Politics leads, the law follows"

Will: I'm going to destroy the competition.

Peter: The pension problem is real. Taxation of internet commerce. [directed to ChumHum and Neil Gross]

Last scene: Peter asks Eli to prepare a list of other potential Supreme Court nominees.

"60 Minutes" on October 27, 2013

First, a story on the killings in Libya. Leave Benghazi or you will be killed. Lara Logan.

Second, damage assessment of Edward Snowden affair.

Third, Metropolitan. Backstage at the Met.

Lara Logan on Benghazi. "Morgan Jones" was a security officer who is interviewed. Jones went to an Alacaide controlled hospital, which had the body of Chris Stevens. Morgan was in charge of the Libyan guard force. "CIA Annex" attack took four American lives. Morgan Jones arrived at Benghazi four months earlier. Lt. Colonel Andy Wood met with Ambassador Stevens every day. Reports were made to the State Dept. and DoD three months before attack was made. "Shut down operations." You are being targeted. They are in the final planning stages of an attack on the Benghazi mission. Greg Hicks was Stevens' deputy. Lara Logan to Hicks: "Why didn't you get the help you needed?" "We're here to kill Americans, not Libyans." Final image of 60 Minutes piece: picture of schedule for Ambassador Stevens for September 12.

John Miller on "The Deputy Director" [Mike Morrell of the CIA] Damage assessment on Edward Snowden. Most serious leak in history. Feb. 2012 document on "the black budget." Handing over the playbook to the other team. Cell phones are not allowed in the CIA building. CIA Director's Conference Room. Mike joined CIA in 1980. Briefed Bush-II. Enhanced interrogation techniques, including water boarding, sleep deprivation.
Big change: drones became go-to weapon. 50 to 100 million to Prez Karzai. Dec. 2009 in Afghanistan, deaths of 7 CIA people.


On Nov. 26, 2013, after an internal review of the report found flaws in Logan's reporting, she and her producer, Max McClellan, were asked to take indefinite leaves of absence. However, Fager [ chairman of CBS News and executive producer of "60 Minutes" ]has said that he was ultimately responsible for the mistakes associated with the report.


Friday, October 25, 2013

PTAB discusses declarations comprising legal conclusions in Ex parte KLINGEMANN

As in Wu, PTAB in Ex parte Klingemann discusses declarations.

Of legal assertions in declarations, note

We note Appellant’s reliance
on the Klingemann Declaration, 6
which states that “there is no teaching, suggestion, or motivation
in Gong et al. that
would lead one skilled in the art to use the NK-92 cell line
in vivo to lyse tumor cells or as a cancer treatment,
much less successfully reduce such a
use to practice as a method of trea
ting mammals” (Decl. 7, ¶ 24c).
However, “Appellant’s opinion on the ultimate legal issue is not evidence in
the case.”
In re Lindell, 385 F.2d 453, 456 (CCPA 1967). In addition, we
conclude that Appellant has not provided adequate reasoning to persuasively
support this statement.
See id.


"long-felt need
is analyzed as of the date of an
articulated identified problem and evidence
of efforts to solve that problem.”
Texas Instruments, Inc. v. Int’l Trade Comm’n
, 988 F.2d 1165, 1178 (Fed.
Cir. 1993). Appellant has not provided
sufficient objective
evidence that the
method of claim 20 solves a long-felt but unresolved need.

In addition, “[m]ere recognition of latent
properties in the prior art does not
render nonobvious an otherwise known
In re Baxter Travenol Labs.
, 952 F.2d 388, 392 (Fed. Cir.

Obviousness affirmed in Ex parte Wu; Bulina cited on declarations

PTAB discusses the value of declarations in Ex parte Wu and cites Bulina, 362 F.2d 555. Note similar text in Ex parte Cattron. Note similar text in Ex parte Norlin.

Crish, Spada and Obiaya are also cited.

In re Kao is cited on secondary considerations.

Turmeric in Ayurvedic medicine as prior art

From Ex parte Berkson

According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the
invention was made to have combined
curcumin and nitroglycerin for thei
r known benefits since each was well
known in the art for treating wounds. (Ans. 10.)(citing
In re Kerkhoven , 626 F.2d 846, 850 (CCPA 1980) and
In re Sussman , 136 F.2d 715, 718 (CCPA

We agree with the Examiner that these applie
d references evince a prima facie case of obviousness for claim 1.
Appellants’ nonobviousness position is premised on their contention
that while “some healing effects would
be expected through the use of the
individual ingredients,”
, curcumin and nitroglycerin, the claimed
invention exhibits superior and unexpect
ed results over the cited art, as
evidenced by the declarations of Linds
ey Berkson and Jack Moncrief, M.D.
(App. Br. 6.)

While evidence of unexpected results
can be used to rebut a prima
facie case of obviousness,
Pfizer, Inc. v. Apotex, Inc.
, 480 F.3d 1348, 1369-
70 (Fed. Cir. 2007), it is well settled that
such results must
be established by
factual evidence,
In re Lindner
, 457 F.2d 506, 508 (CCPA 1972). Mere
argument or conclusory statements in
the specification does not suffice.

Rehearing attempt in ALBRECHT fails


The gist of appellants' arguments:

Appellants request rehearing, alleging first that
while Appellants do not dispute th
at the terms “wetting agent”
and “surfactant” can be synony
ms, Appellants do dispute that
each and every substance that
can be employed as a “wetting
agent” necessarily is a “surfactan
t” and in particular, do dispute
that the use of sodium hyalurona
te as a “wetting agent” for dry
eyes necessarily means that sodium hyaluronate is a
“surfactant” (as apparen
tly assumed by the PTAB).
(Req. Reh’g 3-4.)

Second, Appellants allege the
Decision describes Appellants’
argument that “there is no indication in
the instant specification that sodium
hyaluronate is to be considered to be
an (anionic) surfactant,” but does not
explain why the argument was not given any weight. (
. at 4-5.)

In response

The Specification description of
hyaluronic acid by one of its functions
does not provide evidence that
hyaluronic acid does not have
, or may not be used for its, other functions.
Thus, the Specification description of
hyaluronic acid as thickener does not
limit the broad claim term “anionic surfa
ctant” so as to exclude hyaluronic
acid. “During patent examination the
pending claims must be interpreted as
broadly as their term
s reasonably allow.”
In re Zletz
, 893 F.2d 319, 321
(Fed. Cir. 1989).

Thursday, October 24, 2013

Teresa Stanek Rea at AIPLA on bad patents

From Timothy B. Lee post Patent office to Congress: Please let us invalidate more bad patents

In remarks at the American Intellectual Property Law Association, acting USPTO director Teresa Stanek Rea called for the expansion of what is known as the "covered business method" program, which would allow defendants in patent cases to ask the patent office to give patents a second look.

"The White House and USPTO support legislation that expands the coverage of this program, for a similar period of time and with a comparable sunset, to include a limited range of software-related patents," she said. She argued that "the scope of reviewed patents should be carefully defined and appropriately limited so as not to run afoul of our obligations under trade agreements."

Wednesday, October 23, 2013

MIT Tech Review on KiOR and cellulosic biofuel

In a piece on KiOR titled A Lifeline for a Cellulosic-Biofuel Company , Kevin Bullis concludes:

But big challenges remain. If Kior hopes to break even and eventually turn a profit, it needs the economies of scale that come from even bigger refineries, and building those will require more funding. Funding for cellulosic plants has been particularly hard to come by, since investors are reluctant to take a risk on the new technology.

Bullis also quotes Mike Ritzenthaler, a senior research analyst at Piper Jaffray:

For example, he [ Ritzenthaler ] notes that production levels are increasing, and the company looks on track to produce a million gallons of fuel by the end of the year. Kior also has the advantage of making gasoline rather than ethanol, the market for which is saturated in the United States.

An October 7, 2013 Bloomberg report had noted

Denatured ethanol for November delivery was unchanged at $1.687 a gallon on the Chicago Board of Trade. Prices have dropped 23 percent this year.

Gasoline for November delivery rose 1.85 cents, or 0.7 percent, to $2.6261 a gallon on the New York Mercantile Exchange. The contract covers reformulated gasoline, made to be blended with ethanol before delivery to filling stations.

Note KiOR's US 20120101318, titled PRODUCTION OF RENEWABLE BIOFUELS with first claim:

A process for producing a renewable fuel, said process comprising: (a) providing a bio-oil having an oxygen content of less than 15 weight percent; (b) separating said bio-oil into at least a light fraction and a heavy fraction, wherein the mid-boiling point of said heavy fraction is at least C. greater than the mid-boiling point of said light fraction; (c) hydrotreating at least a portion of said heavy fraction to thereby provide a hydrotreated product; and (d) combining at least a portion of said light fraction and at least a portion of said hydrotreated product with a petroleum-derived gasoline to thereby produce a renewable gasoline, wherein said renewable gasoline comprises said petroleum-derived gasoline in an amount of at least 60 weight percent, said light fraction in an amount of at least 0.1 weight percent, and said hydrotreated product in an amount of at least 0.1 weight percent.

The case was docketed for examination on 4 April 2013.

Note the earlier US 20100105970, filed via Green Tech petition on Jan. 20, 2011 and leading to issued patent 8,003,835, with first claim

A process for the conversion of solid biomass to hydrocarbons comprising: a. contacting said solid biomass with a catalyst in a first riser operated at a temperature in the range of from about C. to about C. to thereby produce a first biomass-catalyst mixture and a first product comprising hydrocarbons; b. separating said first product from said first biomass-catalyst mixture; c. charging said first biomass-catalyst mixture to a second riser operated at a temperature in the range of from about C. to about C. to thereby produce a second biomass-catalyst mixture and a second product comprising hydrocarbons; d. separating said second product from said second biomass-catalyst mixture; e. charging said second biomass-catalyst mixture to a third riser operated at a temperature greater than about C. to thereby produce a spent catalyst and a third product comprising hydrocarbons; and f. separating said third effluent from said spent catalyst.

From the specification:

In various embodiments the invention includes methods, apparatuses, kits, and compositions for converting cellulosic (e.g., including ligno- and hemi-cellulosic) material in biomass (e.g., including edible and inedible portions) into fuels and/or specialty chemicals under conditions that can mitigate equipment cost, energy cost, and/or degradation or undesirable reaction of conversion product. Examples of fuels include light gases (ethane, propane, butane), naphtha, and distillates (jet fuel, diesel, heating oil). Examples of chemicals include light olefins (ethylene, propylene, butylenes), acids (like formic and acetic), aldehydes, alcohols (ethanol, propanol, butanol, phenols), ketones, furans, and the like. For example, the technology includes preparing solid biomass particles for catalytic conversion, which can improve conversion of the biomass into fuels and/or specialty chemicals in conventional petroleum refining processes (e.g., known petrochemical refining units). The technology also includes adapting existing refinery processes for processing biomass (e.g., change operating parameters, catalyst, and feedstock), retrofitting existing refinery process units for processing biomass (e.g., adding an extra riser for biomass catalytic cracking or adding a solid biomass feeder system to introduce biomass), and constructing new, purpose-built biomass reactors (e.g., employ commercially available conventional reactor components). Thus, the methods, apparatuses, kits, and compositions can reduce the cost and increase the availability of fuel and/or specialty chemicals derived from biomass. Preparation can have a synergistic effect, reducing the temperature necessary for catalytic or pyrolytic conversion of the biomass and/or increasing the conversion efficiency of the biomass, as well as facilitating processing in conventional refining units.

Appellant wins on 112 but loses on 103


As to 112 rejections:

Rejection under 35 U.S.C. §112,
first paragraph,
written description requirement
Appellant has persuasively argued the
Examiner reversibly erred in finding
the claim 30 limitation “said deoxidizing me
tal constituting at least about 1 weight
percent of said puck or briquett
e” lacks written descriptive support (
Ans. 5).
Appellant directs us to page 5, lines 6-
8 of the Specification (filed Feb. 16, 2007)
wherein, contrary to the Examiner’s contention (
Ans. 13), explicit support for
the phrase “at least
1 weight percent” (claim 30
(emphasis added)) appears.
App. Br. 7-8.) Accordingly, we do not
sustain the rejection of claims 30, 31,
and 36-49 under 35 U.S.C. §112,
first paragraph, as failing to comply with the
written description requirement.
Rejection under 35 U.S.C
. §112, second paragraph
Appellant has persuasively argued th
e Examiner reversibly erred in
determining claim 30 is indefinite due to the term “about” in the phrase “said
deoxidizing metal constituting at least about
1 weight percent of said puck or
briquette” (Ans. 5). A claim satisfies th
e definiteness requirement of 35 U.S.C. §
112, second paragraph, when one skille
d in the art understands the claim
parameters as read in li
ght of the specification.
BJ Servs. Co. v. Halliburton
Energy Servs.
, 338 F.3d 1368, 1372 (Fed. Cir.
2003). The Examiner has not
clearly explained why one of ordinary
skill in the art would not have been
reasonably apprised of the scope of the cl
aim as a result of th
e claim term “about.”
Cf. Accentra, Inc. v. Staples, Inc.
, 500 Fed.Appx. 922, 930
(Fed. Cir. 2013) (non-
precedential) (explaining the term “about” is not indefinite if it can be understood
in the context of the technology).
Appellant has also persuasively argued (
App. Br. 8) the Examiner
reversibly erred in dete
rmining dependent claims
55, 56, and 59 encompass a
lower limit of 0% for the liquid material
and calcium compound and, therefore, are
indefinite because they are broader in sc
ope than independent claim 52 wherein the
lower limits recited for the
same components exceed 0% (
Ans. 5). As argued
by Appellant (
Reply Br. 3), 35 U.S.C. § 112, fourth paragraph, provides that “a
claim in dependent form shall contain a re
ference to a claim previously set forth
and then specify a further limitation of
the subject matter claimed.”

Appellant wins on obviousness in Gelber

On inherency at the Board, from Ex parte Gelber

“In relying upon the theory of inhere
ncy, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
from the teachings of the applied prior art.”
Ex parte Levy
, 17 USPQ2d
1461, 1464 (BPAI 1990). In this case, the question raised is whether the
gaming terminal of Kelly is
capable of normalizing bonus tokens
received from another gaming terminal

Fine was cited:

Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independe
nt claims 1, 11, and 20 and their
respective dependent claims 2, 3,
5-10, and 12-19 under 35 U.S.C. § 103(a)
as unpatentable over Kelly
cannot be sustained.
See In re Fine,
837 F.2d
1071, 1076 (Fed. Cir. 1988).

IBM succumbs to 103 rejection in Diez

Appellants [from IBM] won on 101 but still lost on 103 in Ex parte Diez

There was a dissent in favor of maintaining the 101 rejection.

PatentlyO discusses PTAB ruling in St. Jude Medical v. Volcano Corp

See Interpreting the IPR Deadline; Conflicting PTAB Decisions; and Appealing Nonappealable Decisions concerning whether a counterclaim can be deemed a complaint, including the text

Rather, St. Jude sued Volcano for infringement and Volcano served an answer and counterclaim of infringement. The counterclaim was served more than one-year before the IPR request. Leaving the legal question of whether the filing of an answer with a counterclaim alleging infringement counts under the statute as a "complaint alleging infringement."

Tuesday, October 22, 2013

Patent trolls, again

from an article by Jeff John Roberts titled Troll sues New York Times with 1998 patent from Holocaust group

In this case, the patents in question were granted to the Shoah Foundation, a non-profit launched with the help of Steven Spielberg that is dedicated to recording testimony of Holocaust survivors.

A Shoah spokesman said by phone that the University of Southern California, where the Foundation is located, now controls the patents. As TechDirt reported last year, USC auctioned a license to the patents in 2010 to a private equity firm which created a series of subsidiaries — including Preservation Technologies LLC — to demand payouts from companies ranging from Google to Facebook. This month, it expanded the campaign to target the Times, Fox, CBS and video service Vimeo.

Patent troll litigation is a drain on a wide variety of industries, and raises ethical questions for universities like USC, which espouse a belief in research and innovation while simultaneously facilitating broad-based patent trolling. The University of Boston recently commenced a similar lawsuit campaign directly, filing suits against Apple and dozens of other companies over a 1997 patent.

See also BU Sues Leading Tech Firms for Patent Infringement including text

The University has filed a number of lawsuits against some of the brightest stars in the high-tech constellation—Microsoft, Motorola, Sony, and BlackBerry among them—to defend a College of Engineering professor’s patented material used in the production of blue LEDs (light-emitting diodes), which are components in many electronic devices.

Summary judgment of indefiniteness in 112 P6 claim affirmed by CAFC


The issue:

Ibormeith IP, LLC, the as
signee of U.S. Patent No.
6,313,749, appeals a district court’s
grant of summary judgment of indefiniteness
in favor of defendants Mercedes-Benz USA, LLC,
and Daimler AG
“Mercedes”). We affirm.


TO comply with
section 112(f),
the specification of
Ibormeith’s patent has to disclose a structure for perfor
ming the functions claimed in the “computational means”
limitation, (...)


Section 112(f) allows patentees
to put structural details in to
the specification and build
into the literal coverage of the claim
a certain scope for equivalents in
performing a defined function.
See Chiuminatta Concrete
Concepts, Inc. v. Cardinal Indus., Inc.,
145 F.3d 1303,1310 (Fed. Cir. 1998).

The result:

For a claim to bedefinite, a recited algorithm, or other type of structure for
a section 112(f) claim limitation, need not be so particularized as to
eliminate the need for any implementation
choices by a skilled artisan
; but it must be sufficiently
defined to render the bounds of the claim—
declared by
section 112(f)
to cover the particular structure and its
equivalents—understandable by the implementer.
See AllVoice Computing
PLC v. Nuance Comm’cns, Inc.
, 504F.3d 1236, 1245 - 46
(Fed. Cir. 2007).Here, we conclude,
the disclosed algorithm
does not adequately define the

Appellants win on indefiniteness, but lose on 101

Ex parte Weber

As to 112 P 2

In essence, the limitation with
respect to the graphical representation
is extremely broad
in scope. Merely
that a claim is broad does not
mean that it is indefinite.
See In re Johnson
558 F.2d 1008, 1016 n.17 (CCPA 1977).
We therefore do not sustain the Exam
iner’s rejection of claims 1-25
under 35 U.S.C. § 112,
second paragraph.


we affirm the
Examiner’s rejection of claims 1
and 26, and of their dependent claims
2-25 and 27, for which Appellants do
not assert any separate arguments,
under 35 U.S.C. § 101 as not being drawn
to patent-eligible subject matter.


While the Appeal
Brief cites examples of potential
manifestations of the tool of their
invention, Appellants’ Specification does
not describe any such manifestations.
An ordinary and customary meaning
of the term “tool” is “anything used as a means of performing an operation
or achieving an end:
he used his boss’s absence as a tool for gaining

This definition is consistent
with Appellants’ acknowledgement
of the essentially limitless manifestations
of the tool.

Monday, October 21, 2013

Appellant AUBRUN-SONNEVILLE wins obviousness case


As to anticipation

To achieve a composition meeting all of the limitations of claim 1,
however, a skilled worker would have to
choose parleam oil from the list of
preferred oils provided by Sonneville-A
ubrun. Anticipation does not allow
for such picking-and-choosing.

Net MoneyIN, Inc. v. VeriSign, Inc.
545 F.3d 1359, 1371 (Fed. Ci
r. 2008) (“[U]nless a [p
rior art] reference
discloses within the four corners of the document not only all of the
limitations claimed but also all of the
limitations arranged or combined in
the same way as recited in the clai
m, it cannot be said to prove prior
invention of the thing claimed and,
thus, cannot anticipate under 35 U.S.C.
§ 102.”).


In re Ochiai
, 71 F.3d 1565, 1572 (Fed. Cir.
1995) (A proper analysis under § 103 re
quires “a searching comparison of
the claimed invention – including all its
limitations – with the teachings of
the prior art.”).

Unexpected results argument fails in Ex parte Taylor

Ex parte Taylor

**As to teaching away

This argument is not persuasive. Wh
ile it is true that Anand states
that genetically modifying an antibody
to fuse it to an antigen overcomes
some disadvantages of chemically cross-linking these components, both
Anand and Yu demonstrate that chemical
ly cross-linking an antibody and an
antigen was known as one method of
successfully conjugating the two.
Anand’s characterization of chemi
cal cross-linking as a nonpreferred
embodiment does not teach away from
that approach, because it does not
cast doubt on whether chemical cross-
linking would successfully produce
the desired immunoconjugate.
In re Gurley
, 27 F.3d 551, 553 (Fed. Cir.
1994) (“[I]n general, a refe
rence will teach away if it suggests that the line of
development flowing from the referenc
e’s disclosure is unlikely to be
productive of the result sought by the applicant.”);
. (“A known or obvious
composition does not become patentab
le simply because it has been
described as somewhat inferior to so
me other product for the same use.”).

**As to comparative tests

In short, as Appella
nts have conceded, the results
shown in the Specification’s Figures 1
and 2 do not relate to the claimed
immunoconjugate, but only to particular
peptides derived from vIL18BP.
In re Fenn
, 639 F.2d 762, 765 (CCPA 1981) (“
Although it is well settled
that comparative test data showing
an unexpected result will rebut a prima
facie case of obviousness, the comp
arative testing must be between
claimed invention
and the closest prior art
.” (Emphasis added).)

Appellant wins at PTAB in WACHTFOGEL

The appellant wins in Ex parte WACHTFOGEL

Appellants raise several arguments
in response to the rejection,
including that one of ordinary skill in
the art would not have been motivated
by Koza to modify the teachings of Schn
eier such that the location of the
random number generator is within a subs
criber unit rather than the Central
Management Computer.
App. Br. 9-16.
We agree. First, as Appellants
contend, the Examiner’s reliance on
Koza as providing a reason prompting one
of ordinary skill in the art to
modify the location of the random number
generator within a subscriber unit
is misplaced.

Friday, October 18, 2013

Is the NSF funding alchemy, or does R&D Magazine need more careful editing?

A post at R&D Magazine titled Research grant seeks to reduce crops' fertilizer dependence asserts in the first sentence:

A research team including a Penn State chemical engineer was recently awarded a $3.9 million National Science Foundation grant to understand how blue-green algae convert nitrogen into oxygen.

One professor involved is Costas Maranas, the Donald B. Broughton Professor of Chemical Engineering at Penn State.

The grant probably involves the study of cyanobacteria such as Nostoc/Anabaena. These organisms do not, however, convert nitrogen into oxygen.

Lovin cited in Ex parte Jung

The need for solid arguments and supporting evidence is underscored in Ex parte Jung

Furthermore, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error regarding
the aforementioned disputed limitation. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted
Rule 41.37 to require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.”). We decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for [patentable] distinctions over the prior
art.”). See also Ex parte Belinne, No. 2009-004693, 2009 WL 2477843 at
*3-4 (BPAI Aug. 10, 2009) (informative).

Appellant Krebs wins in "non-functional descriptive material" case

Appellant, represented by Kenyon & Kenyon, prevails in Ex parte Krebs:

The Examiner asserts that this limitation is non-functional descriptive
material “because labeling the separate sections as a first or second section
does not provide any weight to the claims apart from the sections being
separate.” Ans. 17. This assertion does not coherently explain how the
proposed combination satisfies the claimed requirement that the preview be
presented in a section of the user interface separate from the section in which
the change is input.

For the above reasons, the Examiner fails to establish that the subject
matter of claims 1, 17, and 21 would have been obvious. Thus, we do not
sustain the rejection of claims 1, 17, and 21 and of their dependent claims 2,
3, 7-11, 16, 19, and 20 as unpatentable over Nunes and Elzinga.

"Unsatisfactory for its intended purpose" argument fails in Ex parte Gopal

In Ex parte Gopal , Gordon, 733 F.2d 900, is cited as "unsatisfactory for its intended purpose."

Appellant BIEDERMANN prevails over PTAB at CAFC

The appellant, represented by Kirkland & Ellis, , prevailed at the CAFC against the Board, in the case In re BIEDERMANN

The central question in the present case is whether
the Board and the examiner properly relied on the same
articulated reasoning and factual underpinnings in rejecting
Biedermann’s claims or whether the Board made new
findings and adopted different reasons to support a new
ground of rejection, thus depriving Biedermann of both
notice and an opportunity to respond.

Of law

The Patent and Trademark Office (“PTO”) is subject
to the Administrative Procedure Act (“APA”). See Dickinson
v. Zurko, 527 U.S. 150, 154 (1999). Under the APA,
the PTO “must assure that an applicant’s petition is fully
and fairly treated at the administrative level.” In re
Kumar, 418 F.3d 1361, 1367 (Fed. Cir. 2005). The APA
requires the PTO “to provide prior notice to the applicant
of all ‘matters of fact and law asserted’ prior to an appeal
hearing before the Board.” Stepan, 660 F.3d at 1345
(quoting 5 U.S.C. § 554(b)(3)); see also In re Leithem, 661
F.3d 1316, 1319 (Fed. Cir. 2011) (“Under the [APA], an
applicant for a patent who appeals a rejection to the
Board is entitled to notice of the factual and legal bases
upon which the rejection was based.” (citing 5 U.S.C.
§ 554(b)(3))).


Here, the examiner’s reasoning in support of combining
the square thread of Steinbock with the device of
Cotrel was that there were a limited number of threads
that could be used and that a square thread was the most
efficient. While the examiner in the Examiner’s Answer
made a passing reference to splaying in relation to the
gaps between the inner and outer threads, the examiner’s
rejection neither relied upon nor even noted the avoidance
of splaying as a factor. The Board, on the other hand,
found new facts as the basis for concluding that the
combination of Cotrel and Steinbock would have been
obvious: that Cotrel teaches avoiding splaying with sawtooth
threads; that saw-tooth threads are buttress
threads; that Steinbock groups together the square
threads and buttress threads; and that square threads
avoid splaying. The principal reason the examiner combined
the references was the efficiency of a square thread.
The principal reason the Board affirmed the combination
of the references was the avoidance of splaying by using
square threads. These are different grounds and form the
bases or underpinnings of different rejections. Even the
Board itself recognized that efficiency and avoiding splaying
were different. Decision on Rehearing, at *1. This is
analogous to Leithem in which the Board distinguished
fluffed pulp from pulp that could be fluffed. See 661 F.3d
at 1318, 1320.


The Board’s treatment of machinability in the Decision
on Appeal was also a new ground of rejection. The
Board treated machinability as another factor, in addition
to efficiency, that one of ordinary skill would consider in
selecting a threadform, making it part of the reason to
combine the references. See Decision on Appeal, at *2.
Identifying machinability as an additional reason to
combine does not mean that it is not a new ground of
rejection. See In re Waymouth, 486 F.2d 1058, 1061
(CCPA 1973) (“To attempt to deny appellants an opportunity
to provide a different and appropriate response to
the board’s rejection by saying that the board merely
advanced ‘an additional reason’ for affirming the examiner
begs the question and does not satisfy the administrative
due process . . . .”), modified, 489 F.2d 1297 (CCPA
1974). There is no apparent connection between machinability
and the examiner’s reason to combine based on

Bottom line

For the foregoing reasons, this court vacates the
Board’s decision and remands for further proceedings.

Thursday, October 17, 2013

Dealing with plagiarism at Kenyon

Concerning the background of incoming Kenyon College students:

[Associate Provost Jan ] Thomas cited “a growing concern [among the faculty] that students are not being prepared for” writing appropriate citations. To combat this, the changes will include “something like a workshop or module for first years once they get here to kind of give them an idea of what academic integrity entail[s].”

Emphasizing the same point, Thomas said “education is a big part of this and our idea is to have freshmen be required to do this tutorial before they can register for spring classes. In the past,” she added, “I think we’ve been willing to assume that most students have the background that they need. Now, however, it’s becoming more obvious that all students don’t have that [before they arrive] and we probably should not assume that they do.”


Keurig loses big time at the CAFC in coffee cartridge case turning on patent exhaustion

Keurig v. Sturm addresses patent exhaustion.

But that is not the case before us, which presents an a
fortiori fact situation in which the product sold by Keurig
was patented
. Keurig acknowledges that its brewers are
commercial embodiments of the apparatus claims of the
’488 and ’938 patents. Appellant Br. 27–28. Keurig did
not assert its cartridge patent against Sturm and does not
dispute that its rights in its brewers were exhausted with
respect to the apparatus claims of the asserted patents.
See generally Reply Br. Instead, Keurig alleges that
purchasers of its brewers infringe its brewer patents by
using Sturm cartridges to practice the claimed methods
and therefore that Sturm is liable for induced infringement.

However, as the Supreme Court long ago held,
“[W]here a person ha[s] purchased a patented machine of
the patentee or his assignee, this purchase carrie[s] with
it the right to the use of the machine so long as it [is]
capable of use.” Quanta, 553 U.S. at 625 (quoting Adams
v. Burke, 84 U.S. 453, 455 (1873))
. The Court’s decision in
Quanta did not alter this principle. Keurig sold its patented
brewers without conditions and its purchasers
therefore obtained the unfettered right to use them in any
way they chose
, at least as against a challenge from
Keurig. We conclude, therefore, that Keurig’s rights to
assert infringement of the method claims of the ’488 and
’938 patents were exhausted by its initial authorized sale
of Keurig’s patented brewers.

The CAFC amplified

To rule otherwise would allow Keurig what the Supreme
Court has aptly described as an “end-run around
exhaustion” by claiming methods as well as the apparatus
that practices them and attempting to shield the patented
apparatus from exhaustion by holding downstream purchasers
of its device liable for infringement of its method
claims—a tactic that the Supreme Court has explicitly
admonished. Id. at 630. “Such a result would violate the
longstanding principle that, when a patented item is ‘once
lawfully made and sold, there is no restriction on [its] use
to be implied for the benefit of the patentee.’” Id. (quoting
Adams, 84 U.S. at 457). Here, Keurig is attempting to
impermissibly restrict purchasers of Keurig brewers from
using non-Keurig cartridges by invoking patent law to
enforce restrictions on the post-sale use of its patented
product. Id. at 638.
We agree with the district court that a consumer’s potential
use of different types of cartridges, viz., cartridges
that would not infringe the claimed methods, cannot save
Keurig’s method claims from exhaustion. Such an outcome
would also be counter to the spirit of the doctrine of
patent exhaustion because Keurig could control use of the
brewers after it sold them. The claims of both the ’488
patent and the ’938 patent are directed to the brewers and
the use of the brewers; therefore, Keurig cannot preclude
an individual who purchased one of its brewers from
using a non-Keurig cartridge with that brewer.

Note also

Moreover, Keurig’s argument that patent exhaustion
must be adjudicated on a claim-by-claim basis is unavailing.
The Court’s patent exhaustion jurisprudence has
focused on the exhaustion of the patents at issue in their
entirety, rather than the exhaustion of the claims at issue
on an individual basis. See id. at 634–35; Univis, 316
U.S. at 249–50. Keurig’s decision to have sought protection
for both apparatus and method claims thus means
that those claims are judged together for purposes of
patent exhaustion.

Policy is invoked

The doctrine of patent exhaustion has the effect of
providing an efficient means for ensuring the termination
of the patent right. See Univis, 316 U.S. at 251 (“[T]he
purpose of the patent law is fulfilled . . . when the patentee
has received his reward . . . .”); United States v. Masonite
Corp., 316 U.S. 265, 278 (1942) (“The test has been
whether or not there has been such a disposition of the
article that it may fairly be said that the patentee has
received his reward for the use of the article.”). Permitting
Keurig to recover multiple times on its patented
brewers by holding Sturm or any other cartridge manufacturer
liable for direct, induced, or contributory infringement
based on the independent manufacture and
sale of cartridges for use in those brewers would be contradictory
to these policies and the law.

Appellant Spittle loses before PTAB; KSR cited

The appellant, represented by BRINKS GILSON & LIONE , lost in the case Ex parte Spittle

Of obviousness, KSR was cited:

For these reasons, an artisan would have considered the teachings of
Peng and Acker to complement one another and would have combined these
teachings in the manner proposed in order to obtain the predictable use of
prior art elements (e.g., a culture vessel, separate cuvette, and gripper
arrangement) according to their established functions (e.g., for continuous
measurement in a cell-growing and shaking environment). See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (in assessing the obviousness
of a claim to a combination of prior art elements, the question to be asked is
"whether the improvement is more than the predictable use of prior art
elements according to their established functions").

Wednesday, October 16, 2013

Appellants lose on obviousness in Ex parte Ban

KSR is cited in Ex parte Ban

“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.

AT&T wins on indefiniteness, obviousness rejections


Thus, the Examiner has not satisfied the burden of providing evidence
that the prior art taught or suggested the step of “querying a network
database,” nor has the Examiner satisfied the burden of providing evidence
that the prior art necessarily inherently relied upon a database. See
MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999) (“Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.”)

Appellant loses in Ex parte Nagy

Ex parte Nagy

As to an apparatus claim

Appellants have not shown by persuasive technical reasoning or credible
evidence that the structure set out in Fig. 1 and 2 of Braun does not perform
(or is not capable of performing) the recited functions in Appellants’ claims
as explained by the Examiner (id.). Furthermore, limitations related to the
functioning of a structural article (as claimed herein) do not directly limit the
scope of the claim; they can only serve to limit the structures performing the
functions. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) and
cases cited therein2. Appellants admit that the MEMS switch devices of
Braun are “switch devices that can be used in a self-structuring feed switch
system” (Br. 20).


Because the functional language may only serve to patentably differentiate
a claimed apparatus by means of further limiting its structure, and the
applicant is in a better position to provide evidence with regard to the
structural differences resulting from the functional limitation, our reviewing
court and its predecessors have developed a test for analyzing functional
limitations with an assignment of burdens: Where there is reason to
conclude that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981); In re Brown, 459
F.2d 531, 535 (CCPA 1972).

Attorney assertion of no predictability fails in Medoff case

Appellants lose on obviousness in Ex parte MARSHALL MEDOFF .

Attorney argument fails

Appellants argue that it is not predictable that lignocellulosic material
will behave the same way as cellulosic material described in the IAEA
reference. However, “[a]ttorney’s argument in a brief cannot take the place
of evidence.” In re Pearson, 494 F.2d at 1405. Appellants provide no
evidence to support the argument that it is not predictable that
lignocellulosic material will behave the same way as cellulosic material
described in the IAEA reference.

Merck is cited

Appellants further argue that “none of the reports in the IAEA
reference discuss irradiation followed by enzymatic treatment which is in
contrast to the instant claims.” (App. Br. 4.) However, Appellants err in
attacking the references individually, as the rejection is based on a
combination of references. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The references cannot be read in isolation, but for
what they teach in combination with the prior art as a whole. See id. The
Examiner indicates on page 17 of the record, that it is Medoff that teaches
the claimed order of steps, and that IAEA is relied on solely to support
thatapplication of electron beam radiation to cellulose containing material
results in reduction of the degree of cellulose polymerization, thus reducing
the recalcitrance of the lignocellulosic feedstock.

And, yes, KSR predictability is invoked:

“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

In re Dillon cited against appellant in obviousness-type double patenting case


Dillon is cited in an obviousness type double-patenting case:

We are not persuaded by Appellants’ argument. The Federal Circuit
has ruled that:

In brief, the cases establish that if an examiner considers
that he has found prior art close enough to the claimed
invention to give one skilled in the relevant chemical art the
motivation to make close relatives (homologs, analogs, isomers,
etc.) of the prior art compound(s), then there arises what has
been called a presumption of obviousness or a prima facie case
of obviousness. In re Henze, 181 F.2d 196, 37 C.C.P.A. 1009,
85 USPQ 261, (C.C.P.A. 1950); In re Hass, 141 F.2d 122, 127,
130, 31 C.C.P.A. 895, 60 USPQ 544, 548, 552 (C.C.P.A. 1944).
The burden then shifts to the applicant, who then can present
arguments and/or data to show that what appears to be obvious,
is not in fact that, when the invention is looked at as a whole.
In re Papesch, 315 F.2d 381, 50 C.C.P.A. 1084, 137 USPQ 43
(C.C.P.A. 1963). The cases of Hass and Henze established the
rule that, unless an applicant showed that the prior art
compound lacked the property or advantage asserted for the
claimed compound, the presumption of unpatentability was not

In re Dillon, 919 F.2d 688, 696 (Fed. Cir. 1990).

Tuesday, October 15, 2013

Another Rambus/Micron case; rehearing by PTAB leads to change

Rambus patent owner; re-exam 95/001,105

Rambus seeks relief in its Patent Owner’s Request for Rehearing, see
37 C.F.R. § 41.79, from the Patent Trial and Appeal Board Decision (Dec. 7,
2012) reversing the Examiner’s decision not to maintain the rejections of
claims 1 and 4 of the ‘696 Patent. (See Reh’g Req. 1.) In response to
Rambus’s Rehearing Request, Micron filed Third Party Requestor’s
Comments to Patent Owner’s Request for Rehearing Pursuant to 37 CFR §

The outcome

We modify the Decision, which reverses the Examiner’s decision not
to reject claims 1 and 4, to reflect an affirmance of the Examiner’s decision
not to reject claims 1 and 4.

This Rehearing Decision, is hereby designated, with respect to the
issues addressed here, “in effect, a new decision, . . . [and] any party may
within one month of the new decision, file a further request for rehearing of
the new decision under this subsection. Such request for rehearing must
comply with paragraph (b) of this subsection.” 37 C.F.R. § 41.77 (d).

Attorney argument issue in Ex parte Willauer

Appellant does win a missing element argument in Ex parte Christain

The appellant did win one "missing element" argument in Ex parte Christian

The Examiner found with regard to claim 5 that Oyama’s “housing 4
has a rectangular shape (as shown in Fig. 1) with two openings 12, 13 for
slidably receiving the rod 17.” Ans. 4.5 However, claim 5 calls for the foot
mechanism to have a rectangular shape and an opening for slidably receiving
the rod, not the housing. Cf. Br. 17, Claims App’x, Claim 3; see also Br. 13.

Consequently, the Examiner has not made a finding that Oyama
discloses a foot mechanism having a rectangular shape and an opening for
slidably receiving the rod as called for in claim 5. As such, we do not
sustain the rejection of claim 5.

In re Bond is cited:

Such a
distinction does not persuasively demonstrate the finding is in error because
the nomenclature is not controlling. Cf. In re Bond, 910 F.2d 831, 832 (Fed.
Cir. 1990) (“The elements must be arranged as required by the claim, but
this is not an ipsissimis verbis test”). Appellants’ conclusory assertion does
not cogently explain how the Examiner’s finding is in error.

The appellant also won on claim 19:

The Examiner found that Oyama’s lever (locking piece 55 and
integral lever 56) has a flat rectangular shape at top board 40. Ans. 6.
Oyama’s top board 40 is the upper part of locking piece 5 of Example 1,
while locking piece 55 and integral lever 56 are part of Example 2. In
Oyama’s Example 2, locking piece 55 replaces locking piece 5, and locking
piece 55 is not described nor depicted as including top board 40. Oyama,
col. 6, ll. 47-51; figs. 6, 7. Thus, this rejection mixes two embodiments
without proposing a modification
to incorporate the applicable portion of
each embodiment. Consequently, we do not sustain the rejection of claim

The final tally

We affirm the Examiner’s decision to reject claims 1-4, 6, 8, 10-13,
15-17, and 20, and we reverse the Examiner’s decision to reject claims 5 and

Appellant wins "missing element" case in Ex parte Nagasaka

Appellant wins "missing element" case in Ex parte DIMAGGIO


Thus, as Appellants point out, the record before us does not appear to
address the step of making a determination if the intervention is clinical or
non-clinical. See Reply Br. 2-3.
The cited prior art and the Examiner’s
explanation also do not appear to address the limitation regarding the course
of action that must be followed should the determination be made that the
intervention is “non-clinical.” Accordingly, we cannot sustain the
Examiner’s rejections.

Ocean Tomo and Patent Rankings

Patently O on 14 Oct 2013 has a post titled Ocean Tomo versus PatentRatings about the litigation between Ocean Tomo and Jonathan Barney / PatentRatings LLC.

There had been a discussion in 2011 on the IAM Blog titled Lawsuit follows departure of key Ocean Tomo partner which included the text

“The relationship has fallen apart and I simply cannot work for Ocean Tomo any longer,” Barney told me. “I am now going to focus my energies on defending PatentRatings LLC and expanding it internationally as a standalone business.” PatentRatings LLC, he explained, is an intellectual property holding company that receives royalties from Ocean Tomo for the use of patents, trade secrets and brands that underpin OTPR. Barney states that the allegations made by Ocean Tomo in its suit are “totally frivolous”, and he has no doubts that he will prevail in the litigation. “But,” he stated, “I am naturally concerned about the financial and human cost of fighting any case, and especially the potential disruption the spat may cause to our valued clients and partners.”

To that end, and despite the recent developments, Barney says he intends to: “Continue working hard fully supporting the OTPR business and the dedicated team we have built in Newport Beach under the capable leadership of Ocean Tomo’s Managing Director Steve Lee.”

Concerning Steve Lee, Law360 had a post in 2012 titled Ocean Tomo Settles Trade Secrets Suit With Ex-Director which included text

In its motion calling for a restraining order, Ocean Tomo claimed Lee had contacted it on Jan. 24 stating he intended to disclose confidential information to PR LLC in connection with an ongoing legal fight between the two companies. Ocean Tomo is currently involved in $2.5 million arbitration battle with PR over a 2004 patent licensing dispute, according to the motion.

Monday, October 14, 2013

Appellant wins at PTAB on missing element case

The appellant won Ex parte YUJI ISHIMURA on a "missing element" case:

However, we agree with Appellant that Simister does not teach that
the calculation of each of the intermediate states is deferred until receipt of a
corresponding one of the requests to update the display from the timing
means (App. Br. 15; Reply Br. 3). As the Examiner finds with respect to the
claimed calculation means (Ans. 5), Simister mentions, “[i]n alternate
embodiments, a view can dictate that a later called layout or animator
override a previous layout or animator or be queued behind the previously
called layout or animator.” Simister ¶ [0073]. However, Simister does
teach the claimed deferral of calculations until receipt of a request to update
the display from the timing means.

Thus, we are constrained by the record to reverse the Examiner’s
rejection of independent claims 1 and 6-8 under 35 U.S.C. § 103(a). Claims
2, 9, 12, 13, 15, 16, 18, and 19 depend from one of claims 1 and 6-8. Thus,
for the same reasons and because the Examiner has not shown that Tojo
would remedy the deficiencies noted above regarding Simister, we also do
not sustain the rejection of claims 2, 9, 12, 13, 15, 16, 18, and 19 under 35
U.S.C. § 103(a).

Appellant loses in Ex parte Hartwig

Ex parte Hartwig

As to the ordering of steps in a method claim

Appellants argue subsequent steps of claim 1, e.g., making a comparison and emitting an alarm, are rendered irrelevant if Preiss’s prior validation is followed. Appellants do not particularly argue the claim requires the steps be performed in any particular order. Absent such a claim requirement, we do not consider the method claimed as being so limited. See Baldwin Graphics Sys., Inc. v. Seibert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008).

As to obviousness

As to modifying Preiss by Mihai, the rejection relies on Preiss to give a warning and Mihai to make the warning audible. Ans. 16. Further, the Examiner cites to paragraph 0178 of Mihai as providing a “safety net of support” by emitting a sound alarm. Ans. 17. We find the combination of Preiss and Mihai to be supported by articulated reasoning with some rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).