Friday, November 30, 2012

Email mishap at Morgan State University

Sometimes university administrators come up with "dog ate my homework" replies to significant questions [e.g., Leeds University response detailed in IPBiz post
Ph.D. thesis: cited in 2003 but forgotten by 2009?

The email problem at Morgan State is of interest.
See Morgan State coach learns of a plan to fire him through an inadvertently forwarded email

CAFC gives mixed decision in ARCELORMITTAL FRANCE case

The conclusion of ARCELORMITTAL FRANCE v. AKSteel

On remand, the district court must address whether, under the correct claim construction, the asserted claims of the ’805 patent are obvious in light of any evidence of commercial success of hot-rolled steel that is also cold- rolled and that has the required nexus with ArcelorMittal’s claims. Additionally, as discussed above, the district court must address the issue of literal infringement under the correct claim construction. In remanding for a limited new trial addressing only infringement under the correct claim construction and whether ArcelorMittal has pertinent commercial success evidence sufficient to overcome the prima facie case of obviousness, we do not foreclose the district court from entertaining a motion for summary judgment on these issues that might obviate the need for a further trial.

A determination of anticipation went down the drain:

ArcelorMittal argues that the evidence cannot support the jury’s anticipation verdict. “Anticipation is a question of fact, reviewed for substantial evidence when tried to a jury.” Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). The jury’s finding of anticipation was based on Bano. The Bano article was written and presented by inventor Jean-Pierre Laurent and his col- league Xavier Bano during the development of the pre- coated steel claimed in the ’805 patent, and the parties agree that it discusses hot-stamping boron steel. AK Steel argued, and the jury found, that the article disclosed the entire invention. ArcelorMittal challenges that finding on the grounds that Bano disclosed neither coating the steel sheet before thermal treatment nor coating the steel sheet with aluminum or an aluminum alloy. We conclude that there is not substantial evidence that Bano disclosed coating with aluminum or aluminum alloy.

As to specifics:

However, the jury’s apparent conclusion that Bano disclosed coating with aluminum or aluminum alloy is more problematic. In denying JMOL, the district court relied on In re Petering, 301 F.2d 676 (C.C.P.A. 1962), to hold that “aluminum was a member of a very small class of metals suitable for use in coating boron steel,” and therefore inherent in Bano. ArcelorMittal, 811 F. Supp. 2d at 967–68. Petering establishes that when a prior art reference discloses a “definite and limited class” of suit- able members within a general formula, it may be read to disclose each member of that class. Petering, 301 F.2d at 681.

Without an explicit disclosure of aluminum coating or substantial evidence that aluminum belonged to a sufficiently definite and limited class of possible coatings, the jury verdict of anticipation based on Bano cannot stand. We therefore reverse the district court’s denial of JMOL as to anticipation.

Anticipation by a prior art range

As to anticipation in the matter of ranges, Ex parte Haese notes:

When the prior art discloses a range that overlaps a specified range, but no specific examples falling within the specified range are disclosed, a fact-dependent question arises as to whether the reference describes the claimed subject matter “with sufficient specificity to anticipate” the claim. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006) (holding that a reference’s temperature range of 100-500 degrees C did not describe the specified range of 330-450 degrees C with sufficient specificity to anticipate the claim); see MPEP § 2131.03 (Part II). In our opinion, the Examiner fails as a matter of fact to identify an anticipatory embodiment in Kauth, or to adequately explain why Kauth’s general disclosure of phosgene molar excess ranges (“12 to 22 %” and “14 to 20 %”) describes the specified range (“8 to 17 mol%) with sufficient specificity to anticipate claim 6.

There was a concurring opinion:

It is well settled that, during examination, product-by-process claims are rejected properly over prior art that discloses products, no matter how made, that are the same or substantially the same as the product claimed. See, e.g., In re Brown, 459 F.2d 531, 535 (CCPA 1972) (“when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable.”) As the court explained, “the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” Id.

Kimberly-Clark loses diaper printing case because of KSR

In Ex parte Costello, claims by Kimberly-Clark related to printing on diapers were found obvious via KSR. Some of the relevant text-->

Indeed, the applied prior art teaches that contact and non-contact printing methods were known methods to print graphics on absorbent articles. Therefore, combining a prior art contact printing method with Masaru’s non-contact printing method appears to be nothing more than the predictable use of a prior art printing method (i.e., contact printing) according to its established function (i.e., printing on an absorbent article). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

Therefore, the Examiner properly finds (id. at 12) that Appellants’ arguments are unpersuasive because they improperly attack the references individually instead of addressing what the combined teachings would have suggested to one of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).

Regarding Appellants’ argument that the Examiner has not shown that the claimed invention was within the level of ordinary skill in the art, we note that the references themselves establish the level of skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).

In other words, the particular change in shape of graphic affects the aesthetics of the image, but does not patentably distinguish the claimed method over the method of the prior art. After all, patentability of utility claims cannot be based on claim features which relate to ornamentation only. In re Seid, 161 F.2d 229, 231 (CCPA 1947). “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) quoting In re Gulack, 703 F.2d 1381, 1387 (Fed. Cir. 1983). As such, we agree with the Examiner that in light of the combined teachings, the method of claim 18 would have been obvious.

The Board affirmed the Examiner's § 103(a) rejection.

Thursday, November 29, 2012

Rutgers ends licensing deal with Adidas

The Philly Inquirer discussed the Rutgers/Adidas matter in the post Rutgers University severs ties with Adidas over working conditions in Asia.

NJ public television indicated the deal was worth $11,000.

Even university scientists have interrupted me to explain that natural products are not patentable.

See post by Myles Jackson titled Gene Patents.

One cannot patent a composition of matter AS IT EXISTS in nature. Some impact of the "hand of man" must be in the claim.

More on the Southern Utah University "plagiarism" problem

An account in the SUUNews titled
SUU investigating plagiarism complaints
illustrates how confusing the situation with Frost and Hansen has become.

Some text showing the problem:

SUU Police Chief Rick Brown hand-delivered the notice of trespass and a “theft of lost property” citation to Frost.

Brown was operating on information he had received from Hansen, who was acting as a private citizen, O’Driscoll said.

“We (the university) are not pressing any charges against Frost,” O’Driscoll said. “(People are) under the wrong impression.”

O’Driscoll said he had, “regretfully,” not been informed of Hansen’s decision to press charges until after the notice had been delivered to Frost.

HP loses at the Board

Hewlett-Packard appeal fails in Ex parte Ruhe

“[I]t is not necessary that the inventions of 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).
Here, the Examiner does not propose that the stepped face feature of Chang, be physically incorporated into the structure of Olson. Instead, the Examiner concludes that the combined teachings of the references would have suggested to one of ordinary skill in the art the Appellant's invention. Appellants’ argument overlooks “the relevant combined teachings of the . . . references.” Andersen, 391 F.2d at 958 (dismissing the argument that a combination would result in an inoperative structure).

Burden shifting at the USPTO

Note the discussion of burden-shifting in Ex parte Sakamoto

“[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). This flexibility in the burden of proof placed on the Patent Office is afforded because “[a]s a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535 (CCPA 1972). In order to shift the burden of proof, the Examiner must provide evidence or reasoning to establish a sound basis for the Examiner's belief that the missing descriptive matter is necessarily present in the reference. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Once the Examiner has done this, the burden to overcome, with argument or evidence, the apparent identity of Appellants’ claimed device and that of the prior art shifts to Appellants. Id.

Contemplate also In re Best.

Also in the Board decision:

The examiner bears the initial burden of setting forth a reasonable explanation as to why the scope of protection provided by the claims is thought to be not adequately enabled by the description of the invention provided in the specification. If that burden is met, the burden then shifts to the applicant to provide proof that the specification is indeed enabling. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993). “[T]he Patent and Trademark Office must substantiate its rejection for lack of enablement with reasons.” In re Armbruster, 512 F.2d 676, 677 (CCPA 1975) (emphasis in original).


“‘The enablement requirement is met if the description enables any mode of making and using the invention.’” Johns Hopkins Univ. v. Cellpro Inc., 152 F.3d 1342, 1361 (Fed. Cir. 1998) (quoting Engel Indus., Inc. v. Lockformer Co., 946 F.2d 1528, 1533 (Fed. Cir. 1991)).
“[E]nablement requires that the specification teach those in the art to make and use the invention without ‘undue experimentation.’ That some experimentation may be required is not fatal; the issue is whether the amount of experimentation required is not ‘undue.’” In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991) (citation omitted, emphasis in original). “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The factual considerations discussed in Wands are: (1) the quantity of experimentation necessary to practice the invention, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id.
The specification need not disclose what is well known in the art. Lindemann Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984).

Courts can't re-draft claims

Within Ex parte INTERACTIVE TELEVISION COMPANY, LLC. , Chef Am., Inc. v. Lamb-Weston, Inc. is cited:

Although the Examiner has interpreted the claims applying the “broadest reasonable interpretation” standard, Appellant submits that some other standard should apply. However, Appellant has not shown that the claim interpretation would be any different under another standard. Even in proceedings where the presumption of validity applies, our reviewing court has repeatedly and consistently recognized that “courts may not redraft claims, whether to make them operable or to sustain their validity.” Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (citations omitted). “[I]n accord with our settled practice we construe the claim as written, not as the patentees wish they had written it.” Id. Further, our reviewing court has repeatedly warned against confining the claims to specific embodiments described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc).

Raise it or waive it

From Ex parte Lemmers

“Any bases for asserting error, whether factual or legal, that are not raised in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). See also Optivus Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (“[A]n issue not raised by an appellant in its opening brief . . . is waived.”) (citations and quotation marks omitted).

Board reverses Examiner on double-patenting rejection

In Ex parte VAARTSTRA, the examiner lost on a double-patenting rejection:

We agree with Appellants that the Examiner has not adequately provided evidence to support the basis of the double patenting rejections. (App. Br. 7-8).
According to the Examiner,
[a]lthough the conflicting claims are not identical, they are not patentably distinct from each other because the sole difference between the instant claims and the prior art is the addition of the Group VB precursor. However, it would have been obvious to one of ordinary skill in the art to recite the specific second element in the compound semiconductor in order to grow and create the desired semiconductor.
Ans. 3. Appellants argue
[t]he disclosure of the parent [7,115,166] and grandparent application [6,730,164] does not disclose or suggest any precursor or resulting material or layer comprising tantalum or niobium. This subject matter was added at the time of filing the present Continuation-in-Part application and could not have been suggested by the earlier filed applications.
App. Br. 8.
The Examiner has failed to identify any specific evidence to support the basis for the addition of the Group VB (i.e., tantalum or niobium) precursor. Therefore, the Examiner has not established that the claims of the cited patents are obvious variations of the claims in the present application. Accordingly, the Examiner’s rejections are reversed.

Separately, see Ex parte Varaprasad

Intended use language not limiting

See the footnote within Ex parte Bennett :

See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention's limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.”).

Microsoft evades Microsoft prior art in Ex parte CUTSINGER


As to a claim such as

A method for browsing files comprising;

receiving a user request to view files meeting one or more criteria in a browser;
identifying a plurality of files that meet said criteria;
selecting one of a plurality of predefined browsers based on results of said step of identifying, wherein characteristics that differentiate the selected browser from other browsers of said plurality are characteristics based on the utilized criteria of said user request; and
displaying said selected browser with information regarding said plurality of files, wherein said information is based on said one or more criteria.

Microsoft dodged Microsoft art [ Bott et al., Microsoft Windows XP Inside Out, Microsoft Press, 2001 ] to evade an obviousness rejection.

CAFC split on invalidity via 102(g)

Fox Group v. Cree

As to invalidity under 35 USC 102(g)

Under § 102(g) a patent may be invalidated if “the in- vention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.” 35 U.S.C. § 102(g). This section “operates to ensure that a patent is awarded only to the ‘first’ inventor in law.” Apotex, 254 F.3d at 1035. “[A] challenger . . . has two ways to prove that it was the prior inventor: (1) it reduced its invention to practice first . . . or (2) it was the first party to conceive of the invention and then exercised reasonable diligence in reducing that invention to prac- tice.” Mycogen Plant Sci., Inc. v. Monsanto Co., 243 F.3d 1316, 1332 (Fed. Cir. 2001).

As to facts:

Since Cree reduced the invention to practice in 1995, Fox Group, 819 F. Supp. 2d at 532, it does not need to prove conception. Reduction to practice and conception are separate and distinct concepts and tests; we will not combine them.
The test for establishing reduction to practice requires that “the prior inventor must have (1) constructed an embodiment or performed a process that met all the claim limitations and (2) determined that the invention would work for its intended purpose.” Teva Pharm. Indus. Ltd. v. AstraZeneca Pharms. LP & IPR Pharms., Inc., 661 F.3d 1378, 1383 (Fed. Cir. 2011). Cree met both prongs to establish reduction to practice.

Footnote 3:

To show conception a prior “inventor must be able to ‘describe his invention with particularity.’ [Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228 (Fed. Cir. 1994).] This requires both (1) the idea of the invention’s structure and (2) possession of an operative method of making it.” Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1063 (Fed. Cir. 2005). Cree would also meet the requirements of prior conception since it had an embodiment of the claimed product prior to Fox.

One does not need to repeat an implementation of an invention for it to be reduced to practice:

However, Fox does not support its contention that Cree must prove repeatability to prove it had reduced the invention to practice. Furthermore, considering Cree’s statement within the context of the article, Cree never said that it could not make another SiC boule that met the claim limitations of the ’130 patent. Rather, Cree was describing the Kyoto Wafer which had very low micropipe density and describing plans to continue to reduce defects and grow even better quality wafers in the future. Cree proved that it had reduced the invention to practice; there is no requirement for it to have done so repeatedly, and therefore no genuine issue of material fact exists as to this issue.

As to disclosure:

However, our case law establishes that “although § 102(g) prior art must be somehow made available to the public in order to defeat another patent, a § 102(g) prior inventor is under no obligation to file a patent application.” Apotex, 254 F.3d at 1039. Commercialization has been relied upon as another way to prove public disclo- sure. See e.g., Dow, 267 F.3d at 1343 (“Here, [the prior inventor’s] public disclosure of its . . . invention occurred through commercialization.”); Checkpoint Sys. Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756, 762 (Fed. Cir. 1995) (“In cases in which an invention is disclosed to the public by commercialization . . . .”). Filing a patent application and commercializing a product are only two convenient ways of proving an invention has been disclosed to the public. There are other ways to prove public disclosure including, e.g., the use of a printed publications as prior art under 35 U.S.C. §§ 102(a), (b).4

There is no jurisdiction over unasserted claims:

There was no case or controversy with respect to the unasserted claims at the time of the summary judg- ment motions; therefore the district court did not have jurisdiction over the unasserted claims. Id. Accordingly, we vacate the district court’s declaration that the entire ’130 patent is invalid,6 but uphold the district court’s finding of invalidity of claims 1 and 19 under § 102(g). See id.; see also Dow, 267 F.3d at 1344 (finding only the claims at issue invalid under § 102(g)).

There was a dissent:

Because I agree that Cree established prior invention by clear and convincing evidence, the relevant questions are: (1) whether Fox produced evidence sufficient to create a genuine issue that Cree nonetheless abandoned, sup- pressed, or concealed that invention, and, if so, (2) whether Cree rebutted Fox’s evidence of abandonment, suppression, or concealment with clear and convincing evidence. The majority agrees with the district court that Fox failed to present any evidence that Cree abandoned, suppressed, or concealed the invention. I disagree. As discussed below, summary judgment was inappropriate because: (1) Fox presented evidence of both direct and inferential abandonment, suppression, or concealment; and (2) Cree’s written publication – a 1996 article entitled “Recent progress in SiC crystal growth,” which was pub- lished in the Kyoto Conference journal (“the Kyoto Arti- cle”) – was insufficient standing alone to rebut Fox’s evidence.

While citing to it in passing, the majority completely ignores Apotex, failing to address either its policy con- cerns or the analysis employed. It is difficult to ignore the fact, however, that Apotex makes clear that a prior inven- tor must show that the public was clearly given the bene- fit of an invention, via reverse-engineering, a detailed disclosure, or otherwise, if it wants to rely on § 102(g) to invalidate a patent.

Wednesday, November 28, 2012

UKentucky researcher Eric J. Smart snagged by ORI for fake research results

See post at Retraction Watch titled ORI sanctions former University of Kentucky nutrition researcher for faking dozens of images in 10 papers

Part of the "voluntary exclusion agreement":

To request that the following publications be retracted or corrected: J. Biol. Chem. 277(7):4925-31, 2002; Am J. Physiol. Cell Physiol. 291(6):C1271-8, 2006; Am J. Physiol. Cell Physiol. 294(1):C295-305, 2008; J. Lipid Res. 42:1444-1449, 2001; J. Biol. Chem. 275:25595, 2000; J. Biol. Chem. 277(26):23525-33, 2002; Proc. Natl. Acad. Sci. USA 101(10):3450-5, 2004; J. Biol. Chem. 280(33):29543-50, 2005; J. Biol. Chem. 273:6525-6532, 1998; Am J. Physiol. Cell Physiol. 282:C935-46, 2002.

A commenter at RetractionWatch wrote:

At present, if a reader points out something fishy with a publication, then, in many cases the editor/publisher/institution vigorously try to cover it up, which makes them associates in the conspiracy.

A commenter on a different theme:

Dr. R, please tell that to one of the many Ph.D. Scientists who, after 4-7 years as post-docs, were unable to secure positions on the faculty of R1 institututions. Many of them are teaching High School or trying to pay the rent with a patchwork of part-time Community College teaching jobs.

“Some adjuncts make less money than custodians and campus support staff who may not have college degrees.

from Federal Register Volume 77, Number 224

ESPN doesn't care about plagiarism?

On the theme of "the public doesn't care about plagiarism," see the post titled
Dan Okrent, Jack Shafer and David Carr weigh in on ESPN’s plagiarism tendencies concerning the lack of response as to charges made against ESPN entertainment writer Lynn Hoppes.

Tuesday, November 27, 2012

Kappos to leave as USPTO Director

Within Patent chief to step down :

"He and his team have set the PTO on course to implement the key provisions of the Act, which will improve the patent system for decades to come," Sen. Patrick Leahy (D-Vt.) said in a statement. "I was sad to hear of his decision to step down; the President and the Commerce Department have lost a valuable member of their economic team."

See earlier IPBiz post
IBM-Vermont, patent reform, and Senator Leahy


Kappos, IBM options, and the hearing for 29 July 09

OriginOil does licensing deal with LH Opportunity Group

From Daily Finance:

OriginOil has granted a non-exclusive license to LH Opportunity Group to bundle OriginOil's high-speed and chemical-free CLEAN-FRAC technology with systems that LH and Ensteel plan to develop. OriginOil will receive royalty payments based on a percentage of system sales revenue. (...)
OriginOil has developed an energy production process for harvesting algae and cleaning up oil & gas water. Operating at the first stage of extraction, this high-speed and chemical-free process can be embedded in other systems to improve performance. Originally invented to solve the biggest problem in algae production, it is now finding demand in oil and gas fracking and production water cleanup, an immediate and fast-growing market that desperately needs clean technology solutions.

Riggs Eckelberry is CEO.

Nicholas Eckelberry is a named inventor on published US patent application 20110308962 and on US 20120129244 titled SYSTEMS, METHODS AND APPARATUSES FOR DEWATERING, FLOCCULATING AND HARVESTING ALGAE CELLS. The first claim of US 20110095225 states:

A method for extracting non-polar lipids from microalgae in a flowing aqueous slurry, comprising: providing an aqueous slurry comprising microalgae; providing a lipid extraction apparatus having a body including a channel that defines a fluid flow path, wherein a cathode and an anode form at least a portion of the channel that defines the fluid flow path, the cathode and the anode being spaced apart to form a gap with a distance in a range from 0.5 mm to 200 mm within the channel; flowing the aqueous slurry through the channel and applying an electromotive force across the gap that compromises the microalgae cells and releases a lipid fraction having greater than 90 wt % non-polar lipids and less than 10 wt % polar lipids; and recovering at least a portion of the nonpolar lipid fraction.

keyword: biofuels

USPTO denies Dunkin' Donuts application for mark --"best coffee in America" --

Note the post in the Los Angeles Time Dunkin' Donuts coffee claim: Best in U.S.? Forget it, agency says

The LA Times, in turn, cites to the Boston Globe Dunkin’ Donuts loses best coffee trademark bid , which mentions the Sam Adams beer case:

The maker of Sam Adams beer, Boston Beer Co., tried to trademark a similar slogan, “The Best Beer in America.” But the trademark office turned down the request, and an appellate court upheld the decision in 1999. The Boston brewer has continued to use the phrase anyway, but without trademark protection.

Within the Sam Adams case before the TTAB, one finds the text:

In the same sense that “AMERICA’S BEST POPCORN!” and “AMERICA’S FAVORITE POPCORN!” were held to be only laudatory, comparative, descriptive designations, “THE BEST BEER IN AMERICA” immediately conveys to prospective purchasers that applicant claims its beer is superior to other beers in this country. See: In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978).(...)
In summary on this point, this record makes it clear that the designation “THE BEST BEER IN AMERICA” is simply a claim of superiority, i.e., trade puffery.


Our holding in the instant case is based on analysis which is essentially no different from that of the Court of Customs and Patent Appeals more than half a century ago in Burmel Handkerchief Corp. v. Cluett, Peabody & Co., Inc., 53 USPQ 369 (CCPA 1942). There the applicant sought to register the words “Handkerchiefs of the Year” for handkerchiefs. On page 372 of that opinion, the predecessor to our primary reviewing court noted with approval the conclusion of the examiner in that case that some terms or designations are “merely laudatory expressions, descriptive of the character or quality of the subject concerned ... and not registrable as trademarks, for the simple reason that they are inherently incapable of functioning as such.”

CAFC does preliminary injunctions/design patents in Revision Military v. Balboa

The CAFC addressed preliminary injunction standards in Revision Military v. Balboa :

The district court denied the preliminary injunction.1 On Revision’s appeal, we conclude that the district court erred in applying the Second Circuit’s heightened standard of proof of likelihood of success on the merits, instead of the Federal Circuit standard for consideration of whether to impose such relief. We thus vacate the denial of the preliminary injunction, and remand for redetermination of the request on the appropriate standard.


Substantive matters of patent infringement are unique to patent law, and thus the estimated likelihood of success in establishing infringement is governed by Federal Circuit law. Revision need not meet the Second Circuit’s heightened “clear or substantial likelihood” standard, but rather the Federal Circuit’s standard of whether success is more likely than not. In turn, the weight of the likelihood may be considered as an equitable factor, along with issues of the position of the parties with respect to the status quo, in the ultimate balance of equities.

Of design patent infringement:

The law of design patent infringement is stated in Gorham Co. v. White, 81 U.S. 511 (1871), as whether “in the eye of an ordinary observer, giving such attention as a pur- chaser usually gives, [the] two designs are substantially the same.” Id. at 528. In Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc) the court confirmed that “in accordance with Gorham . . . we hold that the ‘ordinary observer’ test should be the sole test for determin- ing whether a design patent has been infringed.” Id. at 678.
The en banc court’s purpose was to lay to rest the “point of novelty” test for design patent infringement, and to rein- force the principles established in Gorham. See id. at 672 (“we conclude that the point of novelty test, as a second and free-standing requirement for proof of design patent in- fringement, is inconsistent with the ordinary observer test laid down in Gorham”); id. at 677 (“we hold that the ‘point of novelty’ test should no longer be used in the analysis of a claim of design patent infringement”).

CAFC tackles a mixed patent/trademark issue

Chief Judge Rader in Superior v. Thor :

The United States District Court for the District of Minnesota dismissed with prejudice a patent infringe- ment complaint filed by Superior Industries, LLC (“Supe- rior”) against Thor Global Enterprises Ltd. (“Thor”) in part based on claim preclusion and in part for failure to state a claim under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Superior Indus., LLC v. Thor Global Enters. Ltd., No. 10-CV-2524, 2011 WL 3100335, at *3 (D. Minn. July 22, 2011). Because Superior’s prior trademark infringement action did not arise from the same operative facts, and because Superior’s patent infringement com- plaint meets the pleading requirements of Form 18 of the Federal Rules of Civil Procedure, this Court reverses and remands for further proceedings. This court affirms the dismissal of Superior’s claims of indirect infringement of U.S. Patent No. 7,618,231.

Of applicable law:

this court looks to Federal Circuit precedent to resolve underlying issues of substantive patent law, such as the operative facts involved in a claim for patent infringement. See, e.g., Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1323 (Fed. Cir. 2008) (applying Federal Circuit law to determine whether two claims for patent infringement are identical for claim preclusion purposes).


claim preclusion does not arise merely because the plaintiff was aware of independent facts that gave rise to a separate cause of action against the defendant at the time it brought suit. Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1325–26 (Fed. Cir. 2008).

Bottom line:

Because Superior’s First Amended Complaint meets the pleading standard of Form 18, this court reverses the district court’s dismissal of Superior’s claims for direct infringement of the ’231 Patent, but affirms the dismissal of Superior’s claims for indirect infringement.

Judge Mayer dissented:

I respectfully dissent. Res judicata bars the patent infringement claims asserted by Superior Industries, LLC (“Superior”) against Thor Global Enterprises Ltd. (“Thor”) because they arise from the same nucleus of operative facts that gave rise to its 2009 trademark infringement action.


The majority errs when it concludes that Superior’s
patent infringement action is not based upon the same
nucleus of operative facts as its earlier trademark in-
fringement suit. Factors important in determining
whether two claims arise from the same set of operative
facts include whether they “are related in time, space,
origin, or motivation” and “whether they form a conven-
ient trial unit.” Lane, 899 F.2d at 742 (citations and
internal quotation marks omitted). Here, Superior’s
patent and trademark claims both relate to Thor’s fully-
braced undercarriages for portable conveyer systems,
which were advertised and allegedly offered for sale in

Monday, November 26, 2012

Words "may be" as intended use

Within Ex parte Henninger:

We, however, find that “wherein a surveillance camera may be assembled” merely represents intended use of the group of camera heads, system controllers, and communication modules. That is, such “may be assembled . . . by selecting” language merely represents a statement of intended use of the camera heads, system controllers, and communication modules. An intended use will not limit the scope of the claim because it merely defines a context in which the invention operates. Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003).

Inherent storage in a database

A claim element in Ex parte MCGLYNN was

a solar tracker that stores solar angle data in a database, processes the stored solar angle data and transmits control signals to cause the platform to be continuously positioned by the drive both in azimuth and altitude angles so as to align the concentrator with the rays of the sun as the sun traverses the sky so that the rays of the sun are focused on the solar cell

As to prior art:

Appellants argue that Horton fails to disclose that the solar angle data is stored in a database (App. Br. 11; Reply Br. 4). Appellants contend that a “stored program” is not solar angle data stored in a database. App. Br. 11; Reply Br. 4. Appellants contend that Horton’s sun tracker may use photodetectors or other optical components to detect the position of the sun. App. Br. 11; Reply Br. 4. Appellants do not contest the Examiner’s reason for combining Horton’s sun tracker system with Lamb as modified by Wanlass and King. App. Br. 11; Reply Br. 4.

The Appellants lost:

The Examiner finds that Horton’s disclosure of transmitting sun angle data from the central computer means that the data must inherently be stored in a database in the central computer. Id. We agree.
The Examiner’s findings are reasonably supported by Horton’s disclosures. Horton’s disclosure that during “automatic” control mode the sun angle data is sent from the central computer, in our view, indicates that the data is stored as a collection of related data in the central computer for transmitting to the other components of the sun tracker system. While Appellants contend that the sun angle data in Horton may be provided by sensors, that does not change the fact that data is sent through a central computer which must organize the data for easy retrieval and transmission when requested (i.e., a database).

Appellants also lost on result effective variable:

Appellants do not respond to the Examiner’s finding that the band gap is a result-effective variable (Reply Br. 4-5). We understand the Examiner’s rejection to be that the composition of the graded layer would have been optimized to arrive at a suitable band gap for the graded layer, such as the claimed 1.5 eV, relative to the other layers as taught by Wanlass.

Proving "unexpected results" to negate obviousness

From within Ex parte Sodergard :

The Examiner finds that the evidence is not commensurate in scope with the claimed invention because the data includes specific ranges of the polycarboxylic acid and isosorbide while claim 1 is not limited to any particular range of these compounds (Ans. 8). Furthermore, the evidence provided in Table 1 of the Specification is limited to 1,2,3,4- butanetetracarboxylic acid (BTCA). However, the claims are not limited to this particular polycarboxylic acid such that the evidence is not commensurate in scope with the claim for this additional reason. The Examiner properly finds that claim 1 is broader than Appellants’ proffered evidence.

Moreover, missing from Appellants’ analysis is any comparison of their claimed invention with the closest prior art (i.e., Terado). Appellants allege that Terado exemplifies that the glass transition temperature (Tg) of compositions containing other diols, no diols, or no polycarboxylic acid have about the same Tg as each other so that there would have been no suggestion to use isosorbide in the composition (Reply Br. 11-12). But, such analysis does not address whether the increase in Tg achieved using isosorbide would have been unexpected. Appellants have not proffered any evidence that compares Terado’s composition using one of Terado’s diols with Appellants’ composition that uses isosorbide.

Without a comparison with the closest prior art, we cannot discern whether the resulting Tg obtained by Appellants using isosorbide would have been unexpected.

Sterne, Kessler rehearing request in Ex parte Carlson fails at Board

Within Ex parte Carlson

We note that “[T]he PTO gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184, (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).

Here, Appellant’s argument is not commensurate with the limitations of representative claim 1, or claims 2-22 which were not argued separately. Appellant argues limitations not recited in the claims. The claims do not recite the “formation of symbols constituting a varying number of bits depending on the data rate.” (Req. Reh’g. 5.) We decline to read the argued limitations into the claims from the Specification.

Impermissible hindsight

Note the text within Ex parte Budinkski :

While Yan does teach and claim that the decal material may be porous and/or non-porous as found by the Examiner (Ans. 9), we fail to see how such disclosure would have suggested forming a non-porous decal-electrode layer-porous decal structure as required by the claims absent impermissible hindsight reasoning. Rather, within the context of Yan such a disclosure reasonably means that porous and non-porous decals may be used to form different, individual electrode layers for attachment to a fuel cell membrane. Yan teaches that the multiple electrode layers with different ionomer gradients may be formed and transferred to a membrane with the different layers adjacent one another to form a particular ionomer gradient in the fuel cell (see, e.g., Yan, para. [0091]).
On this record, the Examiner has not established that the prior art would have suggested the proposed modification to Yan to arrive at the claimed non-porous-electrode material-porous decal structure. Rather, we agree with Appellant that the proposed modification of Yan is based on impermissible hindsight.

Appellant loses on obviousness in Ex parte Weik

Within Ex parte Weik is a discussion of analysis of claims to an apparatus:

Further, to the extent that Appellant is arguing that Parsadayan fails to disclose a control system that evaluates the sequence of actions to determine the direction of movement, Appellant’s argument is unconvincing. The Examiner correctly identifies these limitations as statements of intended use and reasonably finds that Parsadayan’s control system is capable of performing this function stating “by sensing that the gate has not returned to a closed position before a second vehicle is sensed by the loop detector, this constitutes a sequence of events as well as direction of travel.” Id. Appellant has not provided sufficient evidence or arguments to establish this finding is in error. See, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.

Within Appellant's brief:

Parsadayan does not disclose, either explicitly or inherently (i.e., not just possibly and not just probably, but necessarily), the following positively recited features of claims 4 and 5:

Board reverses rejection in Ex part Johns

The Board reversed the Examiner in Ex parte Johns based on a missing claim element, an issue of fact.

The key text:

The Examiner’s finding that Troutner describes a device in which the die assemblies are positioned at different elevations with respect to one another is not supported by the preponderance of the evidence of record.

Each of the die assemblies in Figures 1 and 3 of Troutner is positioned at an identical elevation with respect to its adjoining die assemblies. Accordingly, the elements are not arranged or combined in the same manner as in the claim, and anticipation does not lie.

Missing a claim element was fatal for both the anticipation and obviousness rejections.

As to law:

A reference is anticipatory under 35 U.S.C. § 102 only if it discloses each and every element of the claimed invention, either explicitly or inherently, and the elements are arranged or combined in the same manner as in the claim. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). Anticipation is a factual inquiry that we resolve by the preponderance of the evidence of record. E.g., In re Epstein, 32 F.3d 1559, 1564 (Fed. Cir. 1994).

Innovatio criticized in Forbes piece

Within a post at Forbes titled Patent Lawsuits: The Good, The Bad, And The Frivolous , there is text about Innovatio

Recently tech giant Cisco Systems Inc. (CSCO) along with Motorola Solutions Inc. (MSI) and Netgear Inc. (NTGR) filed suit against, in my opinion, an insidious Chicago based patent troll, Innovatio IP Ventures LLC. (...) So instead of suing Cisco, MSI, and NTGR directly, the troll [Innovatio] has chosen to attack its customer base. The lawsuit asserts Innovatio’s tactics to be “misleading, fraudulent, and unlawful.” Further it claims that the threatening letters “effectively amount to an extortion scheme” and as such violates federal antiracketeering laws. “When someone runs a racket we’re going to make them liable for racketeering”, announced Cisco general counsel Mark Chandler. The Cisco approach is novel and befitting of the axiom, “the best defense is a good offense.” Legal experts seem divided on the outcome but it sure seems to me like Innovatio has engaged in nothing more than a tawdry shakedown.

One can find a different discussion of Innovatio in a post written by Raymond Niro titled Setting the Record Straight on the Innovatio Patent Portfolio .

**As a footnote, there is a bit of hostility between the Niro firm and Cisco.
See for example
Hosteny's "The Cowardice of Anonymous Bloggers"

And IPBiz wrote on the anonymous blog written by then Cisco employee Rick Frenkel:

Frenkel and Yen: the Cisco Kid and Pancho, or the Lone Ranger and Tonto?

Intellectual property in the baked goods sector

A post at The Intangible Economy titled Twinkies versus cars includes the text:

The assets behind Twinkies are brand and recipe. As Hostess moves through liquidation, other companies can easily pick up the brand and the recipe and resume production. In fact, Hostess claims that there has been "a flood of inquiries" on purchasing the assets. That is the way the bankruptcy system is supposed to work.

** Some time ago, prior to the purchase of of Sunshine by Keebler, Sunshine produced Chocolate Nuggets, a favorite of LBE. After the purchase, they were discontinued, and no one took over production.

From the internet:

five well-known Sunshine brands were discontinued after the merger with Keebler: Chip-A-Roos, Hi-Ho Crackers, Chocolate Nugget cookies, Lemon Coolers and Golden Fruit Biscuits. Sunshine originated Vienna Fingers cookies, which are now sold under the Keebler brand

See [Some company should bring them back. There is no cookie like it on the market. ]

**Separately, another favorite of LBE, the original [green] Clairol Herbal Essence, vanished. However, another company now makes a similar product --Mirta de Perales --, although not easy to find.

**Separately, recall Hostess was involved in a trade secret case with Bimbo. See the IPBiz post
AP runs Bimbo story

Fischer-Tropsch and biofuels

In a 26 November 2012 post titled The New Syngas: New catalysts, opportunities for advanced biofuels , Biofuels Digest talks about the Fischer-Tropsch work of the New Zealand government:

it is less well known that the New Zealand government embarked on a unique program of its own. They fostered the building of the Motunui Synthetic Fuels Plant, which opened in 1986 with a goal of converting natural gas to gasoline, via an intermediate conversion steps into syngas and then methanol.

Combined with investments in liquefied petroleum gas and compressed natural gas, New Zealand at one point reduced its dependency on imported oil from 85 percent to under 50 percent. When crude oil prices dropped dramatically in the mid-1990s, the Synfuel plant stopped making gasoline from natural gas for economic reasons.

The bottom line: there’s a known path from syngas to gasoline, that makes sense economically in given price conditions.

As noted in the IPBiz post Sundrop Fuels Inc. to adopt ExxonMobil technology of the 1970s, the technology used in New Zealand was developed by Mobil [then separate from Exxon] and involved funding from the Fossil Energy Program of the USDOE.

The Biofuels Digest post mentioned Primus, of interest to IPBiz because of its location in Hillsborough Township, Somerset County, New Jersey:

Take Primus as an example. “a difference between us and FT,” notes CEO Robert Johnsen, one of the co-founders of Mascoma before moving to Primus last year, “is that we are competitive at 25 million gallon scale. Also, modularization could be an option.”

Last March in New Jersey, Primus announced that it has completed its third round of funding with the recent $12 million investment by IC Green Energy Ltd, the renewable energy arm of Israel Corp. Ltd. This latest investment brings the total of funds raised since 2007 to $40 million.

 Primus already has a pilot test plant in operation at its Hillsborough complex, and the company hopes to break ground in early 2013 on its first commercial plant.

The company says that, at scale, it can produce gasoline at a price competitive with gasoline produced from petroleum at $60-$70 per barrel, based on a scale of 25-27 million gallons for its first commercial plant, and designs for up to four units with a capacity of 100 million gallons.

IPBiz notes that Fischer-Tropsch ["FT"] is about the conversion of CO and hydrogen into molecules containing carbon and hydrogen, such as methanol. Yes, Fischer and Tropsch obtained patents, such as US 1,746,464. IPBiz has discussed Exxon work in the area of Fischer-Tropsch. See
Rationality in patent litigation? Probably not...
which includes the text:

In Johnson & Johnston: Disclosed, Never Claimed, Public Domain, (IPT, p. 44 (May 2002)), LBE wrote

On April 11, [2002] the Associated Press reported that the federal
government has admitted infringing an Exxon Mobil Corp. petroleum patent and agreed to pay the oil company $ 2,583. The AP report noted that Justice Department spokesman Charles Miller said Exxon Mobil had claimed that the patent was worth hundreds of millions of dollars and quoted Miller that the settlement amount, which was disclosed by the government but not by Exxon Mobil, "speaks for itself." The litigation was reported at 54 USPQ2d 1519 (Ct. Cl. 2000), reversed by the Federal Circuit at 265 F.3d 1371, 60 USPQ2d 1272 (CAFC 2001). n7

Sunday, November 25, 2012

"60 Minutes" on November 25, 2012

The first preview was about giving kids inspiration. "We day." Scott Pelley interviews the founder.

Second, Lesley Stahl on rehearsals for "The Nutcracker."

Third, Lara Logan on movies about lions.

First, "Children helping children." Craig Kielberger. 17 years ago. Kids are looking to get involved. Kids want to assert who they are. Iqbal Massi. Ed Bradley interviewed Craig for 60 Minutes in 1996. Started a charity "Free the Children." Craig went to Asia to bust child labor shops. The lowest moment: the first time in southeast Asia: freed children went back into slavery, years later. The first trip was before the interview with Ed Bradley, and the only promise was to share the stories with people who would listen. Attack hardship and ignorance. Now, "Free the Children" is a $30 million per year charity. Children helping children. If you give kids the inspiration, it will change their lives. There are as many as nine "We days" per year. Nelly Furtado; Jennifer Hudson; Desmond Tutu. Craig's older brother is Mark. St. Anne's School in Bridgeport, Connecticut. The average kid gives between $1 and $10 dollars. People walk by pennies; walk by kids, ignoring them. The Masai Mara in Kenya, East Africa. Each year 2400 kids lend a hand overseas. Scott interviews students going to the built school in Kenya. Magalena and Joey from St. Ann's School received a goat while in Kenya. Joey: poverty is a real thing. Not everybody can turn on a tap to get water.

Second, Lesley Stahl on the New York City Ballet. Stahl discloses that she has been on the Board of the New York City Ballet. Peter Martins has been ballet master since 1983. If the ballet were the Yankees, he would be both general manager and coach [?]. From the nycballet website:

Danish-born Peter Martins began his association with New York City Ballet in 1967, when he was invited to dance the title role in George Balanchine’s Apollo during the Company’s appearance at the Edinburgh Festival. He then performed as a guest artist with NYCB for three years before joining the Company as a Principal Dancer in 1970. Prior to retiring from dance in 1983, Mr. Martins danced a tremendous variety of roles with this Company, and as a guest artist with companies throughout the world, and was lauded for his outstanding partnering skills and noble stage presence.

Stahl notes that the audience for ballet is "graying." Martins talked about Russian defectors, who created big audiences in the US. Now, Martins commissioned Paul McCartney. Ocean's Kingdom. Leaps of fantasy and a happy ending. Critics on McCartney piece: a gimmick. Martins: you always think that they [critics] know better; what do you think?

Third, Lara Logan in Botswana. Akavango Delta. Derek does filming; Beverly records sound. Each film takes years to make. movie: The Last Lions. One cub was taken by a crocodile; another wounded by stampeding buffalo. Too sad. Crossing a bridge that has 4 meters of water and is filled with crocodiles. One picture showed a lion moving into the shade created by the vehicle. Spent 15 years documenting lions at night. Found out hyenas were making kills, and lions were scavengers. Lions attacking an elephant. Death begins in the eyes. The elephant survived. Documented lions ("super lions") living and hunting in water. Huge pectoral muscles and huge necks. Leopard caring for a baby baboon. Pushback from some scientists: "that's impossible." "Help save big cats." 450,000 to 20,000 lions. Last couple of generations of lions. Derek does the tracking. Identify lions by their whisker pattern. "This is our calling in life." Can't imagine living in New York.

Comments on last week's "The College Game". Banana Slugs of UC/Santa Cruz and the Rock of Slippery Rock.

Appellants lose on anticipation, obviousness in Ex parte Koh

The Appellants did not fare well in Ex parte Koh:

Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 64-69 for anticipation under 35 U.S.C. § 102(b), and
rejecting claim 63 for obviousness under 35 U.S.C. § 103(a).

Attorney argument does not substitute for evidence:

Lastly, we note that, aside from arguments of counsel, Appellants
have set forth no evidence which would overcome the Examiner’s stated
position. See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997) (“[A]rguments of counsel cannot take the place of evidence
lacking in the record.”).

KSR arises:

When there are a
finite number of known identified, predictable solutions (e.g., counter
incrementing or counter decrementing), ordinarily skilled artisans would
have had a good reason to pursue the known options within their grasp,
including incrementing, rather than decrementing, the stored program
correction counter in Suzuki. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007).

Obviousness reversed by Board in Ex parte KORNFALT

The Appellants in Ex parte KORNFALT did well in negating an obviousness rejection:

We agree with the Appellants. While Lindgren does teach the use of
decorative patterns in the laminate, there is no teaching of using matching
decorative patterns on a floor and a floor strip. Furthermore, the Examiner
has failed to provide an adequate articulation of a reason with a rational
underpinning to explain
how the resilient insert member 18 of Ruff could be
used as a carrier member for the laminate of Lindgren. See KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007) (holding that “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 obviousness.”).

The Appellants also prevailed on a substitution issue:

We agree with the Appellants. The Examiner has not set forth an
adequate articulation of a reason with a rational underpinning to show how
the destructible fiberboard of Lindgren could be substituted
for the
thermoplastic material of the insert member 18 of Ruff and survive in the
water and other elements found in a floor environment. See KSR at 418.
Thus, one skilled in the art would not be led to substitute the thermoplastic
of the insert member of Ruff with the fiber board of Lindgren.

KSR dooms appellants in Ex parte Bagga

The appellants in Ex parte Bagga did not fare well at the Board.

A combination of prior art features, each performing predictably, is obvious under KSR:

Accordingly, we find that the claim limitation of determining two or
more similarity measures using text and video similarities is a combination
of Dimitrova’s teachings of text comparison, Hershtik’s teachings of audio
comparison and Rui’s teaching of incorporating audio and text features into
the same framework that yields predictable results. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).

The Board was not impressed by Appellants' arguments:

Rather, Appellants merely restated the
claim limitations and presented conclusory statements that they could not
find any suggestion of the limitations in the prior art

Separately, of different rejections:

We also sustain the Examiner’s non-statutory subject matter rejection
of claim 30 and indefinite rejection of claim 21 pro forma because
Appellants did not set forth any argument relating to these rejections

Southern Utah Univ. VP: "The university doesn’t not allow or condone plagiarism."

See the post by Brian Maffley Is Southern Utah University tolerating plagiarism by ESL students? including the text

"The university doesn’t not allow or condone plagiarism. We’re disheartened to find that we have an instructor who didn’t abide by that policy," said Dean O’Driscoll, vice president for university relations.


SUU police cite plagiarism whistle-blower for theft

Bob Schieffer impressed by magic on "Face the Nation"

Bob Schieffer has Alex Stone do a magic trick on "Face the Nation" on November 25, 2012. Card trick. 6 of hearts. Bob signs "Bob" on the 6 of hearts. Alex talks about quantum tunneling. Bob refers to "fooling houdini" as the funniest book he has read.

See ‘Fooling Houdini’ by Alex Stone

David Baldacci was also on. Schieffer mentioned he knew a partner at Baldacci's (former) law firm.

Schieffer mentions that Thanksgiving is surrounded by a flotilla of lessor holidays. Wednesday is getaway day. Sunday is visitor leaving day.

CBS "Sunday Morning" for November 25, 2012

Charles Osgood introduced the stories for November 25, 2012. The Sunday morning after Thanksgiving. Anna Warner does the cover story on the department store of the future. What's in Store? Second, Tracy Smith on Kid Rock, who loves antiquing and interior decorating. Third, Mo Rocca doing "To the Point," on pencils. Fourth, Rita Braver interviews Richard Gere. Serena Alschuler on parade balloon; Alan Edelstein.
Headlines: Black Friday sales down a little over last year. No winner in PowerBall. Natural gas explosion in Springfield, MASS. 112 people died in Dhaka, Bangladesh. Larry Hagman died at age 81. 1/2 of BCS is decided: Notre Dame. Weather: northern part of country cold, or snowy and cold. Florida is sunny.

What's in store for shoppers this holiday season? Anna Werner notes it's the season for buying. Lost in the shopping shuffle is the venerable department store. An allusion to "Miracle on 34th Store." Michael Lisicky is a department store historian [e.g., Filene’s: Boston’s Great Specialty Store, released by Arcadia Publishing ]. Michael says the era of the department store has passed. Ron Johnson of J.C. Penney is interviewed. Johnson talks about earning loyalty. Johnson talks about JCP, with shops within each store. The new navigation path for shopping. The store has "streets." Johnson banished coupons. Johnson noted prices were raised when coupons existed. Sales at JCP stores dropped 20% in the first few months after coupons ended. Next, Eric Nordstrom. Last year, sales of 10.5 billion. Customer-centric. Piano player. Concierge. "Use your best judgment." We default to not having a return policy. 117 stories; on-line warehouse in Iowa. Wallin and Nordstrom started in Seattle in 1901. Nordstrom comments on Ron Johnson's effort: that's hard. Johnson: innovation is very hard and at the same time it's energizing. Failure is not an option. Not going to happen.

Almanac. November 25, 1940. The date Woody Woodpecker debuted in an Andy Panda film, Knock Knock. Mel Blanc recorded laugh before he signed a contract with Warner Brothers. Walter Lance's wife supplied Woody's voice. Lance shut down his animation studio in 1972. There is a Woody Woodpecker roller coaster at Universal in Orlando, FL.

Kaws the artist. Serena Alschuler on Macy's Parade. Balloon of "Companion," a gray and white creature. Kaws started with graffiti. Brian Donnelly grew up in Jersey City. A combination of letters that he liked. Signature: placed X's over figures eyes. Draws Smurfs. Ferrell Williams. In background, Michelin Man with X's for eyes. Modern Art Museum at Ft. Worth. Amy Kuhl is executive producer of events of Macy's. Kaws spent last year at Brooklyn studio doing work for Macy's. The Companion balloon was made in South Dakota. Polyurethane film. Papa Smurf led the Thanksgiving Parade.

The passing of Larry Hagman. J.R. Ewing. SouthFork. Beginning in 1978. In spring of 1980, J.R. shot. Astronaut Anthony Nelson, opposite Barbara Eden. 83 million tuned in to Dallas to see who shot J.R. The Dallas series ended in 1991. Dallas came back to TNT last year. Hagman died Friday at the age of 81 in Dallas.

Kid Rock and Sheryl Crow on Collide. Kid Rock interviewed by Tracy Smith. Musical chameleon. Self-taught musician. An estate north of Detroit. "At the end of the day, I am all that." Born Robert Ritchie in Michigan. Bobbie Ritchie moved to Detroit as a teen. "That white kid who rocks." 1998: Devil without a cause. Outlaw image. Actress Pamela Anderson. Touch a hot stove and get burnt. I don't even go near the stove anymore. The ever-present cigar. Ritchie song "Born Free" used by Mitt Romney. Rebel Soul. Drives around Detroit in former police cruiser. Did benefit for Detroit symphony. Robert Ritchie, Jr. is his son. California: ride skateboards and do drugs. Worked hard and built something. Would never bitch about how hard my life was.

David Edelstein on Life of Pi. Ravishingly strange. The central section is a flashback. Make us believe in God; but do we believe in Pi. Transcendentally in between. See the movie in 3D. The tiger is Richard Parker. Something soul killing has taken place on the sea. The film is splendid. Book: The Making of the Life of Pi. Edelstein: I don't care. Edelstein: I'm going to leave it wow. The magic of movies.

Mo Rocca on the humble pencil. David Rees, professional pencil sharpener. For $20, he will sharpen your pencil. Beacon, NY studio. He's done 600 pencils. No. 2 pencil as an engineered communication device. Middle school in Chapel Hill, North Carolina. Graphite. In about 1565, shepards discovered first naturally occurring graphite. Bind graphite in wood. They called it lead. Glue is put in grooves; then graphite is put in. Musgrave Pencil company in Shelbyville, Alabama. Hugh Lynn.

Sunday Profile by Rita Braver on Richard Gere starts with Officer and Gentleman. Inn: Bedford Post Inn restored by Gere. Movie: Arbitrage in which Gere plays a crooked hedge fund manager. Gere notes everybody in movie is morally challenged. Played lead in King and I in high school. Gere came from farming town in northeastern Pennsylvania. Late 60s, an incredibly vibrant time. 1978 film, Days of Heaven. My life had taken a leap. Officer: I got nowhere else to go. Next: Pretty Woman. We had a buzz going between us. American Gigolo. Chicago. Gere: I have a very simple straight-forward life. Gere married Kerry Lowell in 2002. I have a basic rule: if it's not within an hour of my family, I won't shoot it.

Allan Pizzi on gelato in Bologna, Italy. Food is an art form. Gelato was born here. Carpigiani Gelato University, an international center of learning dedicated to training entrepreneurs. Less than $2 to make a pound which can be sold for $15. Strachatella [In Europe ice cream with a vanilla base and chocolate shavings is also called stracciatella ]. Gelato is Italian for frozen. Gelato has only 7% fat content.[from : Whereas the typical ice cream has a fat content ranging from fourteen to twenty-five percent, gelato averages between five to nine percent butterfat, a significant difference. ] Flavored frozen treats go back to Mesopotamia. In 1903, a patent for device to make gelato available to everyone: ice cream cone.

Fast Draw. Mitch Butler. Josh Landis. on Thanksgiving. Jim Sturba. 400 million beaver in US down to only a few hundred thousand. Acre-for-acre suburbs can support more animals than wild forests. Now, 12 million beaver. Utah State University. 28 billion dollars in damage because of wild life.

Week ahead. Monday: US capital Christmas tree arrives. Wednesday: Hobbit premieres in New Zealand. Friday: official end of 2012 hurricane season.

Joel Sartore (of National Geographic) does "Opinion." Cancer in family. In history of humanity, never a better time to have cancer. Cancer death rates have fallen. We are all surrounded by survivors.

Bob Schieffer. Annual books and authors show. Gone Girl.

Next week. Ben Affleck on search for chocolate.

Moment of nature. Spiriva HandiHaler. Wild Turkeys in Sierra Diablo Mountains of West Texas.

Saturday, November 24, 2012


From RIM v. ITC (and Kodak) :

It is equally clear that when the judgment entered is that the patent asserted is invalid, there is no basis for the defendant to appeal from a ruling of infringement. This court addressed and rejected such an appeal in a district court case in TypeRight Keyboard Corp. v. Micro- soft Corp., 374 F.3d 1151, 1157 (Fed. Cir. 2004). There, we explained that because invalidity operates as a com- plete defense to infringement for any product, reversal as to infringement would not affect the scope of the judg- ment. See id. (citing Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1335-36 (Fed. Cir. 1998».

The same analysis applies in section 337 cases. When the ITC renders a final determination that a product is not in violation of section 337 because the patent is inva- lid, the importer or seller of the product has no standing to appeal since any adverse infringement or invalidity finding in the lTC's decision would not alter the scope of the lTC's final determination. See Surface Tech., Inc. v. Int'l Trade Comm'n, 780 F.2d 29, 30-31 (Fed. Cir. 1985); Krupp Int'l, Inc. v. Int'l Trade Comm'n, 626 F. 2d 844,846 (C.C.P.A. 1980) ("[F]indings associated with the ultimate determination that section 337 has not been violated are not final determinations within the meaning of subsection (c) and do not give standing to appeal to a respondent dissatisfied with those findings."). In view of the lTC's finding that they did not violate section 337, RIM is without standing to appeal. Accordingly, RIM's appeal must be dismissed.

Issues of waiver, disclosure to support structure, in ePlus v. Lawson

In the case ePlus v. Lawson , described as,

an appeal and a cross-appeal arising from an infringement suit brought by ePlus, Inc. against Lawson Software, Inc. (“Lawson”), in which a jury found that Lawson infringes ePlus’s method and system claims. Lawson appeals, arguing that the system claims are indefinite and that the evidence of infringement of the method claims does not support the jury’s verdict.

the defendant Lawson wins on several points of the appeal:

We agree with Lawson that the district court erred in finding that the system claims are not indefinite, and in that respect, we reverse the district court’s determination. We also reverse in part the district court’s denial of JMOL to Lawson and accordingly vacate the judgment of direct and induced infringement entered based on two of the asserted method claims.

Of the procedural matter of waiver:

First, we hold that Lawson has not waived its indefiniteness argument regarding the means for processing limitation. Prior to trial, Lawson moved for summary judgment, arguing that the specification does not adequately disclose a structure for the “means for processing” limitation. J.A. 7573-74. The district court rejected Lawson’s argument, and Lawson did not raise the issue again at trial. Nor did Lawson raise the issue in its first (pre-verdict) JMOL motion. See id. at 3851. At the hearing relating to that motion, however, Lawson’s attorney informed the district court that it sought a ruling that the system claims are indefinite. Id. at 3928-31. The district court responded that in its view, Lawson could not seek a JMOL based on indefiniteness because the issue was not raised during trial. After the jury verdict was delivered, Lawson again sought a JMOL. This time, Lawson argued (in writing) that the system claims are invalid for indefiniteness, yet it did not mention any particular limitation.

The reasoning for "no waiver":

when the arguments with respect to indefiniteness are not being raised for the first time on appeal, we do not readily find a waiver. See, e.g., Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1311 (Fed. Cir. 2012) (holding that because Noah had made the same indefiniteness arguments during claim construction before the district court, waiver did not apply); United Techs., 189 F.3d at 1344 (“A denial of a motion for summary judgment may be appealed, even after a final judgment at trial, if the motion involved a purely legal question and the factual disputes resolved at trial do not affect the resolution of that legal question.”); cf. Lisle Corp. v. A.J. Mfg. Co., 398 F.3d 1306, 1317 (Fed. Cir. 2005) (holding that A.J. had waived its indefiniteness defense where, in the Final Pretrial Order, A.J. merely reserved the right to appeal the defense contingent on this court’s adopting its proposed claim construction of “detachably cooperative,” which we re- jected). Moreover, the district court and ePlus were made aware of Lawson’s indefiniteness argument regarding the “means for processing” limitation—not just at the sum- mary judgment stage, but also at the JMOL stage.


In light of the specific facts of this case, Lawson was not required to ignore the writing on the wall and press the issue over and over again to preserve it for appeal. In sum, we reject ePlus’s waiver argument. See also Harris v. Ericsson, 417 F.3d 1241 (Fed. Cir. 2005) (“An appellate court retains case-by-case discretion over whether to apply waiver.”).

Relying on prior art to supply structure does NOT work:

The indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention. Aristocrat, 521 F.3d at 1337. To assess whether a claim is indefinite, therefore, we do not “look to the knowledge of one skilled in the art apart from and unconnected to the disclosure of the patent.” Id. (quoting Med. Instrumentation & Diag- nostics Corp. v. Elekta AB, 344 F.3d 1205, 1212 (Fed.Cir.2003)). We rather “look at the disclosure of the patent and determine if one of skill in the art would have understood that disclosure to encompass [the required structure].” Aristocrat, 521 F.3d at 1337 (quoting Med. Instrumentation, 344 F.3d at 1212). Here, the specifica- tion does not disclose any structure that is responsible for generating purchase orders. There is no instruction for using a particular piece of hardware, employing a specific source code, or following a particular algorithm. There is therefore nothing in the specification to help cabin the scope of the functional language in the means for process- ing element: The patentee has in effect claimed every- thing that generates purchase orders under the sun. The system claims are therefore indefinite.

The Typhoon case is distinguished:

Finally, contrary to ePlus’s argument, our decision in Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 1385-86 (Fed. Cir. 2011), does not compel a different result. There, the district court had found that the patent claim was indefinite because it did not disclose the source code or mathematical algorithm for a particular means plus limitation. We reversed, noting that “it suffices if the specification recites in prose the algorithm to be imple- mented by the programmer.” Id. That holding has no application here: The problem here is not the adequacy of the substance or form of the disclosure, but the absence of any disclosure at all. See also Aristocrat, 521 F.3d at 1337 (“The question . . . is not whether the algorithm that was disclosed was described with sufficient specificity, but whether an algorithm was disclosed at all.”). Unlike in Typhoon Technologies, there is not even a recitation in simple prose that can be deciphered as a structural limitation on the patent claims. Thus, ePlus’s reliance on Typhoon is unavailing. In sum, we hold that ePlus’s system claims are indefinite.

Of excluding an expert on damages:

The district court found that Dr. Mangum’s analytical method was flawed and unreliable. In particular, it found that the license agreements were not sufficiently proba- tive because they were obtained during litigation and included lump-sums received for multiple patents and cross-licensing deals. The district court also observed that Dr. Mangum had ignored the settlements that pro- duced smaller rates, even though one of them included a percentage rate rather than a lump sum.
ePlus argues that the district court erred and offers a number of justifications that purportedly support Dr. Mangum’s analysis. We need not explore each one of ePlus’s justifications, however, for the applicable abuse of discretion standard of review is highly deferential. It suffices to state that we are satisfied that given the district court’s observations about Dr. Mangum’s analysis, there is ample justification to arrive at the conclusion reached by the district court. ePlus’s arguments to the contrary, therefore, are not persuasive.

Tuesday, November 20, 2012

CAFC affirms Board find of obviousness in In re Sutton

In In re Sutton , the CAFC affirmed the Board's determination of obviousness.

The basics of the law:

Whether an invention would have been obvious to one of ordinary skill in the art is a legal determination based on underlying findings of fact. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). “The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact.” In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000). The PTO first must first carry its burden of demonstrating a prima facie case of obviousness. In re Mayne, 104 F.3d 1339, 1341 (Fed. Cir. 1997). Should the PTO succeed, the applicant must then rebut the PTO’s showing. Id. at 1323.

We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. In re Gart- side, 203 F.3d at 1316. Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Id. at 1312 (quoting Consol. Ed. Co. v. NLRB, 305 U.S. 197, 229-30 (1938)).

Of the arguments by applicant:

First, Sutton argues that the combination of Backderf and White requires both plasticizers and HALs as primary components and, thus, they fail to render the claimed invention obvious. Sutton further asserts that there was no motivation to combine Backderf and White at the time of the invention. Sutton also makes two broad arguments that the Board erred by finding that color stability and flexibility are intrinsically present in the combination of Backderf and White, and that the Board did not consider the invention as a whole.

Footnote. In this decision on November 20, 2012, the CAFC refers to the Board in the following way: Steven Sutton and Stephen Thorp (collectively “Sut- ton”) appeal from the decision of the Board of Patent Appeals and Interferences (“Board”) affirming the rejec- tion of claims 7-9, 14, 19, and 30 of U.S. Patent Applica- tion No. 12/190,101 (“the ’101 application”) as obvious under 35 U.S.C. § 103(a). Because the Board’s conclusion is supported by substantial evidence and not legally erroneous, we affirm.

The CAFC finds patent-ineligible matter in PerkinElmer v. Intema

The relevant legal point in PERKINELMER v. Intema concerns 35 USC 101:

The key distinction, which bears on our decision today, is between claims that recite ineligible subject matter, and no more, and claims to specific inventive applications of that subject matter. See Diamond v. Diehr, 450 U.S. 175, 187 (1981); see also Mayo, 132 S. Ct. at 1294. Unlike the former, the latter do not risk the broad preemption of “the basic tools of scientific and technological work,” Benson, 409 U.S. at 67, and therefore clear the threshold of section 101.

For a process claim to cover a patentable application of, for example, a natural law, it must “contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” Mayo, 132 S. Ct. at 1294. Process claims fail this requirement if, apart from the ineligible concept, they contain nothing more than “well-understood, routine, conventional activity previously engaged in by researchers in the field.” Id. Because they merely describe the ineligible concept, amounting to a claim on the concept, such claims run afoul of section 101. That is the case here.

Prometheus and Myriad come up:

The Supreme Court’s decision in Mayo and this court’s recent decision in Ass’n for Molecular Pathology v. PTO, 689 F.3d 1303 (Fed. Cir. 2012) [hereinafter Myriad], dictate the result we reach today. Those two cases dealt with process claims similar to those at issue here and, in both, the process claims were held ineligible under section 101. In Mayo, the claimed method was a diagnostic assay involving two steps: “administering” a thiopurine compound to a patient and “determining the level of 6-thioguanine,” a metabolite of thiopurine, in the patient. The claims contained two “wherein” clauses which did not dictate any step in the process, but disclosed the metabolite concentration range necessary for effective treatment—the purported discov- ery embodied in the claims. This correlation, i.e., that an effective dose of thiopurine produces a certain range of metabolite concentrations, was the result of the natural metabolic process. The claims in dispute thus were drawn to a law of nature and needed to “add enough to their statement of the correlation[] to allow the processes they describe to qualify as a patent-eligible processes that apply the natural laws.” Mayo,132 S. Ct. at at 1297 (emphasis in original). This they failed to do:

[T]he claims inform a relevant audience about certain laws of nature; any addi- tional steps consist of well-understood, routine, conventional activity already en- gaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. For these reasons we believe that the steps are not sufficient to transform unpatentable natu- ral correlations into patentable applica- tions of those regularities.
Mayo, 132 S. Ct. at 1298.

The Supreme Court emphasized the “inventive con- cept” requirement of section 101, stating that “simply appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Id. at 1300; see also id. at 1298 (“Purely conventional or obvious pre-solution activity is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”) (internal quotation marks omitted); id. at 1299 (explain- ing that in Parker v. Flook, 437 U.S. 584 (1978), “putting the [ineligible] formula to the side, there was no ‘inventive concept’ in the claimed application of the formula,” mak- ing the claims there ineligible since “‘[p]ost-solution activity’ that is purely ‘conventional or obvious’” “‘cannot transform an unpatentable principle into a patentable process.’”) (quoting Flook, 437 U.S. at 589); id. (“These instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously engaged in by those in the field.”); cf. id. at 1299 (explaining that the claims in Diehr were patent-eligible “because of the way the additional steps of the process integrated the [ineligible] equation into the process as a whole,” and the Diehr court “nowhere sug- gested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional.”).

The bottom line:

Because the asserted claims recite an ineligible men- tal step and natural law, and no aspect of the method converts these ineligible concepts into patentable applica- tions of those concepts, the claims cannot stand. Accord- ingly, we find the claims ineligible under section 101 and affirm the judgment for PerkinElmer.

CAFC affirms ND Ca in Ritz Camera v. SanDisk: Ritz can pursue Walker Process claim

The bottom line in the Ritz Camera case:

The certified question concerns the limits on standing to bring so-called Walker Process antitrust claims. The Supreme Court in Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), held that antitrust liability may attach when a party uses a patent to obtain or preserve a monopoly if the patent was procured through intentional fraud on the Patent and Trademark Office (“PTO”). The question in this case is whether an antitrust action against the owner of a patent, based on the Walker Process theory of liability, can be brought by a direct purchaser of goods that are protected by the patent, even if the purchaser faces no threat of an action for patent infringement and has no other basis to seek a declaratory judgment holding the patent invalid or unenforceable. We hold that the district court was correct to rule that a direct purchaser is not categorically precluded from bringing a Walker Process antitrust claim, even if it would not be entitled to seek declaratory relief against the patentee under the patent laws.

The underlying issue:

In June 2010, Ritz filed suit on behalf of itself and a class of direct purchasers of NAND flash memory, alleg- ing that SanDisk had violated Section 2 of the Sherman Act, 15 U.S.C. § 2. The complaint alleged that SanDisk had fraudulently procured two patents central to its flash memory business—U.S. Patent Nos. 5,172,338 and 5,991,517 (“the ’338 and ’517 patents”)—by failing to disclose known prior art and making affirmative misrep- resentations to the PTO. Ritz further alleged that San- Disk established its monopoly position by enforcing those patents against its competitors and by threatening the competitors’ customers. Ritz contends that those actions have caused direct purchasers to pay inflated, supra- competitive prices for NAND flash memory products.

The CAFC noted:

Nothing in Walker Process supports SanDisk’s argu- ment that the rules governing standing to bring patent validity challenges should be imported into an antitrust case simply because one element of the antitrust cause of action requires proof of improper procurement of a patent. In fact, the Supreme Court in Walker Process rejected an argument closely analogous to SanDisk’s argument here. The Court stated that it found no merit in the proposition that rules defining who may bring suit “to cancel or annul a patent” should also dictate the boundaries of antitrust standing. Walker Process, 382 U.S. at 175-76. Notwith- standing the fact that “one of its elements is the fraudu- lent procurement of a patent,” the Court explained, an antitrust claim under the Clayton Act is not a claim under the patent laws.


SanDisk argues that allowing direct purchasers to bring Walker Process claims would authorize an intoler- able end-run around the patent laws because parties unable to pursue invalidity claims could achieve the same result by way of a Sherman Act claim. We do not share SanDisk’s concern. A Walker Process antitrust claim is a separate cause of action from a patent declaratory judg- ment action. It is governed by principles of antitrust law, and there is nothing novel about the fact that it includes as one of its elements the need to prove a violation that is not independently actionable between the same parties. Walker Process explained that while one of the elements of the antitrust claim is the fraudulent procurement of a patent, the action “does not directly seek the patent’s annulment.” 382 U.S. at 176.

Bottom line:

In sum, Walker Process recognizes a clear distinction between claims that arise under the antitrust laws and those that arise under the patent laws. Because direct purchasers are generally permitted to bring antitrust actions, and because the Walker Process decision did not preclude purchasers from bringing this particular type of antitrust claim, we hold that Ritz’s status as a direct purchaser gives it standing to pursue its Walker Process claim even if it could not have sought a declaratory judg- ment of patent invalidity or unenforceability.

Monday, November 19, 2012

Prima facie obviousness in Ex parte Champion

Within Ex parte Champion

“In proceedings before the Patent and Trademark Office, the Examiner bears the burden of establishing a prima facie case of obviousness based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
“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.

Moreover, an “[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). 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. (...)

Kubin stated that “[r]esponding to concerns about uncertainty in the prior art influencing the purported success of the claimed combination, this court [in O’Farrell] stated: „[o]bviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success.”‟ In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re O'Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988)). (...)
We also do not find the teaching away argument persuasive. A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art‟s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed”). (...)

We summarily affirm the provisional obviousness-type double patenting rejection. See Manual of Patent Examining Procedure § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant‟s brief, that ground of rejection will be summarily sustained by the Board.”); See also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (in which the Board affirmed an uncontested rejection of claims under 35 U.S.C. 112, second paragraph, and on appeal the Federal Circuit affirmed the Board‟s decision and found that the appellant had waived his right to contest the indefiniteness rejection by not presenting arguments as to error in the rejection on appeal to the Board).

The Board contemplates 35 USC 101

The Board tackles 35 USC 101 in Ex parte NGUYEN :

The Supreme Court has made clear that a patent claim’s failure to satisfy the machine-or-transformation test is not dispositive of the § 101 inquiry. See Bilski, 130 S. Ct. at 3227. However we conclude that, absent other factors weighing either toward or against patent eligibility, the two machine-or-transformation factors both weighing against patent eligibility are alone sufficient to establish a prima facie case of patent-ineligibility. See Bilski, 130 S. Ct. at 3227 (the machine-or-transformation test is “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.”)

We conclude that the Examiner correctly determined that claims 1-20 fail to recite patent-eligible subject matter. Appellant has not pointed to any convincing factors that weigh towards patent eligibility, and we are unable to find any such factors. Therefore, we will sustain the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 101.

As to software:

Giving claim 21 the broadest reasonable interpretation in light of the Specification, the claim would appear to encompass software per se. Because a computer program per se is not patent-eligible subject matter, claim 21 is directed to subject matter that is non-statutory under § 101. See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Therefore, we will sustain the Examiner’s rejection of claims 21-40 under 35 U.S.C. § 101.


We agree with Appellant that independent claim 41 is written in a format commonly referred to as a “Beauregard claim” (App. Br. 16), which is statutory subject matter. See In re Beauregard, 53 F.3d 1583-84 (Fed. Cir. 1995). Therefore, we will not sustain the Examiner’s rejection of claims 41-60 under 35 U.S.C. § 101.


In our view, modifying Meyer to allow the transfer of the discount amount to a financial entity, as taught by Von Kohorn, would have been no more than the combination of known elements according to their known function, and yields a predictable result; therefore, it would have been obvious at the time Appellant’s invention was made. See KSR Int’l Co. v. Teleflex, Inc., 550 U. S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).

"In re Best" cited in Ex parte Olsen

In Ex parte OLSEN , a number of cases are cited:

Of written description:

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.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).

In re Best, and other cases are cited by the Board:

“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
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. . . . Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

One needs to compare to the closest prior art of record:

Assuming this is the evidence Appellants rely on for their argument, it is not evidence of nonobviousness because it does not make a comparative showing to the closest prior art of record, Randall‟s formulation of tapioca starch and fragrance. See Baxter Travenol, 952 F.2d at 392.