Thursday, January 31, 2013

Plagiarism charge not substantiated

UC/Berkeley conducted an investigation of charges of plagiarism.

The university created a website with the following interesting text:

Consistent with our institutional responsibility as well as Federal regulation this web page will set the record straight regarding the background, the allegations, and the University’s investigation and findings.

The Federal regulation link is to 42 CFR 93:



(k) All reasonable and practical efforts, if requested and as appropriate, to protect or restore the reputation of persons alleged to have engaged in research misconduct but against whom no finding of research misconduct is made;

Will RIM/Blackberry succeed?

from a post by Jonathan Feldman on Blackberry/RIM :

Rather than ask the question "Will the company formerly known as RIM survive?" we need to ask a different question: "Would a startup succeed with what BlackBerry is bringing to the table?"

Only if it totally lets go of its failed legacy and disrupts the market and the balance of power with true innovation. But with new products that don't go beyond what's now leading the market, and a focus on "leverage your existing investment," I'm highly skeptical.

Product-by-process in Ex parte Yen

Ex parte Yen discusses product by process issues, and cites In re Thorpe, 777 F.2d 695 (CAFC 1985) and In re Marosi, 710 F.2d 799.

KSR cited to affirm obviousness in CLAUS-HERZ


KSR is cited as to predictable results:

“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).

As to ranges:

A prima facie case of obviousness exists where the claimed ranges “overlap or lie inside ranges disclosed in the prior art.” In re Wertheim, 541 F.2d 257, 267 (CCPA 1976); In re Woodruff, 919 F.2d 1575 (Fed. Cir. 1990).


“[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).


The test for obviousness is what the combined teachings of the references as a whole would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the combination of Trejo and Hoffman would suggest compositions comprising omega-3, omega-6, and zinc (FFs 1- 7, 9). Additionally, Trejo disclosed fatty acid compositions comprising gamma-linolenic acid (FF3), specifically, including a mixture of linoleic acid, gamma-linolenic acid, and arachidonic acid. We agree with the Examiner‟s position that arriving at the specific limitations recited in claim 8 would only require routine experimentation because the general working parameters were already disclosed in the combination of Trejo and Hoffman. In re Aller, 220 F.2d 454, 456 (CCPA 1955).

Appellant Coleman wins obviousness reversal in food bar case

From Ex parte Coleman:

KSR was cited in a way to "cut back" on obviousness:

During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

Appellants win:

Appellants argue, and we agree, that the Examiner has not adequately explained why one skilled in the art would modify the food bar of Manning to incorporate water-soluble dietary fibers in each of the components of the food bar. App. Br. 12-14. The Examiner has not adequately explained why the redistribution of water-soluble dietary fibers would lead to any organoleptic property that would offset the fibers’ off taste because, as argued by Appellants, the off flavors would still exist whether or not the fibers are in one layer or in multiple layers. Id. at 13. Thus, the Examiner’s proposed modification does not solve the problem of the fibers’ off taste.

KSR was cited as to hindsight:

Here, the Examiner’s proposed modification appears premised on using Appellants’ claimed invention as a road map rather than an articulated reasoning based on teachings derived from the applied references’ disclosures. The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)); see In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior art may be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification.”).

Wednesday, January 30, 2013

No unexpected results

No unexpected results found in Ex parte Dagle

A microchannel reactor is involved: In addition, the heat exchange capacity of the microchannel reactor permits a contact time of less than about 0.3 seconds, thereby reducing the formation of undesirable chemical products that “can result from secondary reactions or slow parallel reactions” (id. at col. 4, ll. 18-23).

Limits to the use of common knowledge

The examiner is reversed in Ex parte Su.

As to written description:

If a skilled artisan would have understood the inventor to be in
possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991); Martin v. Johnson, 454 F.2d 746, 751 (CCPA 1972) (stating “the description need not be in ipsis verbis [i.e., “in the same words”] to be sufficient”). See also MPEP § 2163.

Of "common knowledge":

As Appellants pointed out by citing MPEP § 2144.03(A), “[i]t is never appropriate to rely solely on ‘common knowledge’ in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based.” See MPEP § 2144.03(A).

Inadvertent error

The examiner is reversed in Ex parte Dow

Of note are the footnotes:

1 We take as inadvertent error the statement that only claims 9 and 10 are rejected under 35 U.S.C. § 103(a) over Hirni and Atsmon, because claim 11 is included in the analysis at Answer pages 10-11. We also take as inadvertent error the omission of Hayashi, upon which the rejection of claim 25, from which claims 9-11 depend, was based. Ans. 10.
2 We take as inadvertent error the omission of Hayashi, upon which the rejection of claim 14, from which claims 18 and 19 depend, was based. Ans. 11.

Finding a different solution is not teaching away

From Ex parte Beyda

Appellant lost on double-patenting. The Federal Circuit stated the appropriate procedure for a double-patenting rejection as follows: “we start by examining the claims of the . . . patent, and by assessing the prior art references in order to ascertain whether the PTO made out a prima facie case of obviousness.” In re Longi, 759 F.2d 887, 895-96 (Fed. Cir. 1985); see also In re Aldrich, 398 F.2d 855, 863 (CCPA 1968) (examining a secondary reference for its teachings in a double patenting rejection).

Of different solutions: Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find that Doss and Horvitz propose different solutions to similar problems in the same field of predicting user availability.

Mere attorney argument fails at the Board

From Ex parte Rits

That is, Appellants have not factually responded to the Examiner specific citations to the references nor to the reasons why the Examiner concludes it would have been obvious to combine the references. Arguments of counsel and discussions of caselaw, standing alone, cannot take the place of factually supported objective evidence. (In re Huang, 100 F.3d 135, 139- 40 (Fed. Cir. 1996)). Attorney argument is not evidence. (In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)). Lawyer’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. (In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)).

KSR invoked to defeat Samsung in Ex parte Yoon

KSR is cited in Ex parte Yoon but only for a general statement about obviousness.

Jail time for copyists?

In an account relating to Cissy Houston discussing her daughter Whitney (Nippy) Houston with Oprah Winfrey:

The parent [Cissy] claims she taught the megastar [Whitney] everything she knows and the family used to joke that she stole everything about her singing style from her mother.
She continued to Oprah: ‘I made her what she was. She had been watching me in sessions and onstage for years, picking up pacing, breathing, and microphone techniques, and then adding her own little nuances, too.

'My son Michael used to joke with me about Nippy’s technique—“ Ma,” he’d say, “Nippy should be in jail for stealing all your riffs and everything. You should sue her.”’

Tuesday, January 29, 2013

A123 goes to China

US approves A123 sale to Chinese firm despite security concerns

From within the post:

The move comes despite concerns from lawmakers on both sides of the aisle about a Chinese firm taking over a company -- and technology -- that U.S. taxpayers helped fund through $249 million in grants.


Originally developed by NASA's Jet Propulsion Laboratories, the technology behind the ultra-light lithium-ion phosphate batteries being bought will play a major role in modernizing the way electricity is generated and distributed. The new tech could also be used in key military operations and to power satellites and unmanned military drones.


Monday, January 28, 2013

Allergan prevails over Barr/Teva at CAFC

The appellants lost in Allergan v. Barr/ Teva/ Sandoz

The issue:

The only claim term disputed before the district court was –N(R4)2 as used in claim 5, on which asserted claim 10 depends. The parties disagree whether or not –N(R4)2 requires identical R4 substituents. If it does, bimatoprost’s use of nonidentical R4 substituents— hydrogen (H) and an ethyl group (CH2CH3)—would fall outside the protection of the ’819 patent.

Allergan got the nod at district court:

it ultimately found that Allergan had acted as its own lexicographer by defining –N(R4)2 to permit nonidentical R4 elements. Therefore, the district court held that, as used in the ’819 patent, the –N(R4)2 limitation did not require the R4 substituents to be identical. Allergan, Inc., 808 F. Supp. 2d at 726-27.

Reasoning by the district court had to be explained:

Barr and Sandoz nevertheless focus on the district court’s preliminary conclusion that the plain and ordinary meaning of –N(R4)2 required identical R4 elements. However, this preliminary conclusion was based on ex- trinsic evidence, such as expert testimony that “[t]he (X)y nomenclature” was “commonly used” to represent identi- cal substituents, Allergan, 808 F. Supp. 2d at 725, which failed to consider the –N(R4)2 term as it was used in the ’819 patent. Phillips, 415 F.3d at 1321 (“Properly viewed, the ‘ordinary meaning’ of a claim term is its meaning to the ordinary artisan after reading the entire patent.”) (emphasis added).

***The CAFC was oblique on "what" was going on as to the -N(R4)2 business.

One thinks back to Pfizer v. Ranbaxy, 457 F.3d 1284, 79 USPQ2d 1583 (Fed. Cir. 2006). Ranbaxy argued, and won on, failure to comply with
35 USC § 112, paragraph 4:

“Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”

If -N(R4)2 were construed according to the customary usage (both R4 entities the same), then dependent claim 10 (in allowing R4 to be different) is broader in scope than claim 5.

Also, with claim 5 referencing a "formula", dependent claims 6-10, speaking of a "compound" lack antecedent basis.

Claim 5, in pertinent part: A method of treating ocular hypertension or glaucoma which comprises applying to the eye an amount sufficient to treat ocular hypertension or glaucoma of the formula ##STR16##

Claim 6, in pertinent part: The method of claim 5 wherein said compound

Sunday, January 27, 2013

"60 Minutes" on January 27, 2013

The feature which ran till 7:30pm (eastern) was the interview with both President Obama and Secretary Clinton.

Clinton: We live in a very dangerous and very complicated world. (..) I'm older than the President and I remember speeches of Eisenhower. (...) It's not always easy to perceive exactly what must be done.

Obama: There are transitions and transformations that are happening across the world.
...Find opportunities where our involvement can make a difference and be opportunistic about it.

Second up, an interview with Travis Tygart done by Scott Pelley. The first text concerned the definition of cheater. Tygart of USADA, 1000 pages of evidence, in a report, a reasoned decision. Tygart talked about Armstrong's access to special information. Armstrong said he did not dope in 2009 and 2010. There is an issue of statute of limitations. The term "omertà" arose. Parts of this scheme were run like the Mafia. Hamilton: "People were afraid of Lance Armstrong."

Why did DoJ drop of the case? A Swiss lab director (Saugie) was told by UCI to meet with Armstrong and Johan Berneil and to describe testing. Oprah asked Armstrong about the 2001 test. Tygart talked about involvement of Armstrong with UCI. Tygart talked about a potential donation to USADA. Lance wants to make a financial donation to USADA. Influence and intimidation. Christian Van DeVeld. If he didn't dope, he'd be off the team. Frankie Andrieu was kicked off the team. Levi Leipheimer. Text: Run don't walk. Anonymous threats against Tygart. Putting a bullet in his head. Livestrong Foundation lobbied against USADA.

Armstrong is faced with a lawsuit brought by Floyd Landis, which has a potential liability of $90 million.

Armstrong has a deadline of Feb. 6, 2013 to respond to USADA.

"Cheat your way to the top, and if you get to be big, you could be too big to be accountable."

CBS Sunday Morning on January 27, 2013

The cover story, reported by Serena Altschuler , was Superbugs: A ticking time bomb Serena quoted Dr. Robert Moellering at Harvard's Beth Israel Deaconess Medical Center. Mentioned were ESKAPE organisms, the acronym coming from: enterococci, staphylococci, klebsiella, acinetobacter, pseudomonas, and enterobacter. MRSA, methicillin resistant staph aureus, was discussed.
One commenter wrote: Dr. Moellering should be required to wear gloves when he handles bacterial plates!

The Sunday Morning Almanac was on Tarzan. The first Tarzan movie, Tarzan of the Apes, was released on January 27, 1918. Elmo Lincoln played Tarzan, and the movie was filmed in Morgan City, Louisiana.

Rita Braver interviews 55 year old artist Ai Weiweh. He came to the US on a fellowship in 1983. He returned to China. He helped design the Birds Nest Stadium. NYU Law Prof Jerome Cohen commented on Chinese government response to criticism by Weiweh. Weiweh is now in China, and was not allowed to travel to the US to view Weiweh's show in the US. Of his art, his work is filled with questions.

Passage. Deathe of Linda Riss Pugach. Married in fall of 1974, Death of Larry Selmon. The Collector of Bedford Street.

Flower Power Hawaiian Style by Seth Doane about leis. Airport lei shops. Farmers market at Weimea. Rodylyn Rodrigues noted a kiss comes with a lei. Roen Hufford is a lei creator; leis were made to celebrate their being. Spiritual. Amy Mills and Marie MacDonald. Aloha spirit. 1000 tiny cigar flowers strung into one . Ka Lei. Honopua, which means flower place. [ Ken Hufford and his wife Roen own and operate Honopua Organic Farm, near Waimea ] The love in the lei never dies. Flower garlands. Lin's Lei Shop. Cindy Lau's Lei Shop. Footlong needle. Plumaria. So much for just a string of flowers.

Tracy Smith interviews Edward Albee. Begins with Elizabeth Taylor clip from Virginia Woolf. Yes is better than no, in all things. He berthed life into George and Virginia. There is a new staging on Broadway. More interesting than real people. Any play that can be described in one sentence should be one sentence long. Broadway is not doing plays that sell the most tickets. He won his first Tony in 1963. The play was going to be a little troubling to some people. The Pulitzer jury chose Woolf for a Pulitzer in 1962. The Columbia University Board turned it down. In 1967, Seascape did win. Reed and Francis Albee adopted. They gave him a first rate private school education. In 1948, Albee moved to Greenwich Village; Albee is openly gay. Jonathan Thomas was Albee's partner. To Albee: Do you want to have open heart surgery or not? Albee is 84 and doing a play "Laying an Egg." Prefer being alive to being dead.

Steve Hartman recycles a story from Jan. 25 on Shelby Grebenc, the egg farmer from the Denver area. Father John Michael. Mother Nancy contracted MS. Animal Welfare seal of approval. She makes $15,000 per year. See also

"Georgia on My Mind" clip by Michael Bolton, interviewed by Martha Teichner. Book: The Soul of it All. Born in New Haven in 1953. He hitchhiked to California. He signed a record deal at 15. He was saved by commercials; shaking the money tree. Cher, Kiss, began to record songs he was writing on the side. How was I supposed to live without you. Columbia told him: record your own songs. Time love and tenderness: Love is a wonderful thing. Isley Brothers law suits over title of song. Thus, intellectual property angle. Lady Gaga, Bob Dylan have been collaborators. Don't bore us, get to the chorus. "When a man loves a woman." "Five million fans can be wrong." Nessan dorm. Opera arias. Critics: Graceless. Divorced in 1991. Humana Challenge Golf tournament. Life now: the back nine. His absurd SNL appearance as Captain Jack Sparrow. Olivia and Amelia, grandchildren.

Academy Awards. French drama: Amour. Edelstein was gobsmacked. Bleak, arty, glacially paced. Two plus hours of an 80 something woman dying. Western European upper middle class. The light growing colder. Loss of movement; loss of language. The Piano Teacher. Pretentious punk? Antagonist: time. Higher form of compassion. The octagenarisn segment is not well represented in movies. End of text: That's Amour.

Pulse: presidential ratings at start of second term. Reagan better liked than Obama.

Coming week. Monday. military tribunals at Gitmo. Tuesday: UN Security Council meets on Syria. Thursday: final Thirty Rock. Friday: first Starbucks in Viet Nam. Sat. Groundhog day.

Opinion. Louis Michael Seidman of Georgetown University on US Constitution. Pernicious impact on our political control. Turn question over to lawyers. What did people think about gun control two centuries ago. This is our country; we have a right to make our country. Stop deferring to a two century old document. [As background, Seidman is a graduate of Harvard Law School, and holds a AB degree from the University of Chicago. Wikipedia states he was born in Pyongyang, Democratic People's Republic of Korea.

Next week: Tim McGraw.

Moment of Nature. Spiriva HandiHaler. Kona Coast off Hawaii's Big Island. Turtle swimming. Flounder on bottom. Sea Urchin.

Friday, January 25, 2013

Board gives examiner advice in Ex parte Hochsmann

Ex parte Braeken, 54 USPq2d 1110 (BPAI 1999) , is cited in Ex parte Hochsmann .

Scientific explanation lacking in Ex parte NAGAZUMI

In Ex parte NAGAZUMI, the appellant lost: We affirm the stated rejection for substantially the reasons set forth by the Examiner in the Answer.

Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
An appellant may attempt to overcome an examiner’s obviousness rejection on appeal to the Board by submitting arguments and/or evidence to show that the examiner made an error in either (1) an underlying finding of fact upon which the final conclusion of obviousness was based, or (2) the reasoning used to reach the legal conclusion of obviousness. Similarly, the applicant may submit evidence of secondary considerations of non-obviousness [(internal citation omitted)].

To overcome obviousness

In this regard, the burden of production rests with Appellants to establish that the reported tests provide results that are unexpected, that the comparisons are with the closest prior art, and that the showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).


Appellants have not proffered any persuasive scientific explanation articulating why the reported results for the limited examples presented would have been logically expected to accrue over the extensive scope of the representative claim 20 subject matter so as to discharge Appellants’ burden of establishing unexpected results that are reasonably commensurate in scope with the claimed subject matter (Ans. 12-14; see generally Br.). See In re Dill, 604 F.2d 1356, 1361 (CCPA 1979).

Board reaches back to in Ex parte Rogers to 1876 case

The Board in Ex parte Rogers cites the 1876 base of Dunbar v. Myers snd refers to writings of Thomas Jefferson.

KSR defeats appellant in Ex parte INGRAM

Within Ex part INGRAM

prima facie obviousness is supported by the undisputed facts mentioned earlier and by established legal precedent. In this latter regard, we assess the obviousness of a claim to a combination of prior art elements by asking "whether the improvement is more than the predictable use of prior art elements according to their established functions." KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, Nevin shows that the prior art included the claim 22 elements of an elongated structural member (e.g., a pole) comprising a plastic sleeve containing rubber particles and cement binder whereas Kvesic shows the prior art included the claim 22 elements of a product comprising bound rubber particles which do not contain steel components. Based on the record before us, the claimed combination of these prior art elements yields no more than the predictable use of such elements according to their established functions.


As correctly explained by the Examiner, the PVC referred to by Appellant is not required by Nevin, and the molding temperatures referred to by Appellant are not required by Kvesic (Ans. 10-11). Moreover, Appellant has not supported this argument with any evidence that PVC would be incapable of withstanding such molding temperatures. Finally, the argument is contrary to the established principle that "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR at 420-21. In combining Nevin with Kvesic in the manner proposed by the Examiner, such a person would have utilized a plastic for Nevin's sleeve which would be compatible with the processing temperatures required for Kvesic's resin binder.

As to result effect variables:

Contrary to Appellant's argument, "[a] recognition in the prior art that a property is affected by the variable [in question] is sufficient to find the variable result-effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).

Appellant's argument is further undermined by the legal principle that the discovery of optimum values for recognized result effective variables is ordinarily within the skill of the art. See Applied Materials at 1295. This argument is yet further undermined by the fact that the claimed particle size range overlaps Nevin's particle size range and concomitantly by the legal principle that a prima facie case of obviousness typically exists when the claimed range overlaps the prior art range. Id.

Trinidad government succeeds in re-exam of "steel pan [music] device"

The Board decision in MINISTRY OF LEGAL AFFAIRS, TRINIDAD, W.I. v. TREVOR KING was an appeal from re-examination 95/000,255, with the requestor Ministry of Legal Affairs, Trinidad, West Indies. The Board affirmed obviousness rejections.

Claim 1 from US 6,750,386 begins:

A cycle of fifths steel pan device comprising:

a first series of musical instruments bonded in a 360 degree circumference (...)

KSR was invoked:

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


Argument (b) is unsupported by objective evidence of record and is therefore merely conclusory. Attorney argument does not take the place of evidence where evidence is required. Even so, Appellant has not explained why a need to “remake the pan” would have rendered the modification unobvious nor that the modifications would have been so extensive as to require more than the “ordinary creativity” possessed by the person of ordinary skill. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”).

CADC overturns EPA's cellulosic biofuel mandate

The case is American Petroleum Institute v. U.S. Environmental Protection Agency, 12-1139

The Bloomberg story noted the mandate was 8.65 million gallons of cellulosic ethanol in 2012, [but] the actual U.S. production was 20,000 gallons -- and those were exported to Brazil.

Also in the Bloomberg story:

As a result of the ruling and uncertainty, investments in the nascent industry may fall, said Michael Frohlich, a spokesman for Growth Energy, which represents ethanol producers.

“It dampens any future investment, and creates a further level of vulnerability,” Frohlich said.

The judicial decision addressed the failure in EPA's predictions:

Intervenors’ invocation of Medical Waste is inapt. Here, unlike in Medical Waste, the petitioner attacks a methodology used for prediction, which can look more arbitrary the longer it is applied. The reasonableness of adopting a predictive methodology is not the same as the reasonableness of maintaining one in the face of experience; considering whether to maintain a methodology necessarily invites reflection on the success of earlier applications. API’s challenge to the 2012 RFS rule rests significantly on the complete failure of EPA’s prediction for 2011: 6.6 million gallons, as against zero in reality. See Regulation of Fuels and Fuel Additives: 2011 Renewable Fuel Standards, 75 Fed. Reg. 76,790, 76,793 (Dec. 9, 2010); EPA, Fuels and Fuel Additives, 2011 RFS2 Data, We agree with API that the 2011 failure colors the rationality of EPA’s decision to persist in 2012 and sheds light on the weight EPA gave to specific aspects of its approach. Accordingly we find API’s petition timely.

The court noted:

Viewed in this light, the most natural reading of the provision is to call for a projection that aims at accuracy, not at deliberately indulging a greater risk of overshooting than undershooting. Although as EPA notes the Act allows an obligated entity to carry over a deficit in renewable fuel purchases into the following year, see 42 U.S.C. § 7545(o)(5)(D); 40 C.F.R. § 80.1427(b)(1), that simply makes the controlling unit of time two years rather than one— hardly long enough to sharply reduce the risk of a penalty. As reflected in the chart, supra at 8, history suggests the opposite conclusion: a refiner forced to carry a deficit in 2010, when EPA projected five million gallons of cellulosic biofuel yet none was produced, would not have found relief in 2011, when the agency predicted 6.6 million and actual production was again zero.

The conclusion:

For the reasons set out above, we reject API’s challenge to EPA’s refusal to lower the applicable volume of advanced biofuels for 2012. However, we agree with API that EPA’s 2012 projection of cellulosic biofuel production was in excess of the agency’s statutory authority. We accordingly vacate that aspect of the 2012 RFS rule and remand for further proceedings consistent with this opinion.

UPDATE. From Biofuels groups downplay ruling’s impact on investment

“We are glad the court has put a stop to EPA’s pattern of setting impossible mandates for a biofuel that does not even exist. This absurd mandate acts as a stealth tax on gasoline with no environmental benefit that could have ultimately burdened consumers,” API Group Downstream Director Bob Greco said in a Friday statement.
Bad drafting of thought?

CAFC in Hall v. Bed Bath and Beyond mainly reverses SDNY; BB&B loses

The CAFC case Hall v Bed Bath and Beyond comes out badly for Bed Bath and Beyond.

One gets the gist of matter early on:

On March 20, 2009, while the ’439 patent application was pending, Mr. Hall contacted Bed Bath & Beyond (“BB&B”) to discuss whether BB&B would provide retail sales of the Tote Towel. At a business meeting, Mr. Hall left samples of his packaged Tote Towel with BB&B. Both the package and the towel were marked “patent pending.” BB&B then, through a supplier West Point Home, Inc., had copies of the Hall towel manufactured in Pakistan, for retail sale by BB&B. The patent duly issued, and Mr. Hall sued BB&B, West Point Home, and several executives of BB&B, for patent in- fringement, for unfair competition under the Lanham Act, and for misappropriation under New York statutory and common law.

The outcome

We conclude that the counts of patent infringement, unfair competition, and misappropriation were not subject to dismissal on the pleadings, but affirm the district court’s dismissal of the counts against the BB&B executives who had been sued in their personal capacity

The term "common sense" appears

“Determining whether a complaint states a plausible claim for relief [is] a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009).

The first year Civ Pro case of Conley v. Gibson appears:

The district court stated that the complaint should have included answers to questions such as: “What is it about Plaintiff’s towel that he claims is ‘new, original and ornamental,’ meriting the protection of a design patent?” Order at 16. The Federal Rules, and the Court in Twombly and Iqbal, do not so require. In Twombly the Court stated that “Federal Rule of Civil Procedure 8(a)(2) requires only ‘a short and plain statement of the claim showing that the pleader is entitled to relief,’ in order to ‘give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.’” Twombly, 550 U.S. at 555 (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). Here the defendants never stated that they were not apprised of Hall’s infringement claim and its grounds.

As to design patents

In addition, the district court erred in its view of design patent law, for, as confirmed in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), infringement of a design patent is based on the design as a whole, not on any “points of novelty.” As stated in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993), “[i]n conducting [infringement] analysis the patented design is viewed in its entirety, as it is claimed.” See Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871) (infringement is determined by visual comparison of the pictured design and the accused article).

False advertising arose

The Second Circuit has explained that “the text of the Lanham Act makes it clear that a false advertising claim can properly be brought against a defendant who misrepresents the quality of its own goods as well.” Société Des Hotels Meridien v. LaSalle Hotel Operating P’ship, L.P., 380 F.3d 126, 132 (2d Cir. 2004). (...)
Precedent guides that if BB&B’s advertising state- ment is literally false, it may be actionable “without reference to the advertisement’s impact on the buying public.” Tiffany, 600 F.3d at 112 (quoting McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1549 (2d Cir. 1991)). If the statement is not literally false but is merely misleading, remedy may still be available, but the evidentiary burden is higher. In Tiffany the court ex- plained that to prevail on a likelihood-of-confusion theory based on false advertising, the plaintiff must demonstrate through “extrinsic evidence” that a “statistically significant” portion of the consumer base would be confused.

Adverse possession in Boca Raton?

Back in first year property at the University of Chicago, a visiting professor asked the rhetorical question of "why" squatters could not benefit from adverse possession.

In the news in January 2013:

The neighbor of a Florida man invoking an obscure real estate law to stake a claim to an empty $2.5 million mansion said he believes that the man is a pawn in a attempt to cash in on the empty property.

Andre "Loki" Barbosa has lived in the five-bedroom Boca Raton, Fla., waterside property since July, and police have reportedly been unable to remove him. The Brazilian national, 23, who reportedly refers to himself as "Loki Boy," cites Florida's "adverse possession" law in which a party may acquire title from another by openly occupying their land and paying real property tax for at least seven years.
The house is listed as being owned by Bank of America as of July 2012, and that an adverse possession was filed in July.

After Bank of America foreclosed on the property last year, the Palm Beach County Property Appraiser's Office was notified that Barbosa would be moving in, according to the South Florida Sun-Sentinel.

from post Man Squatting in $2.5M Mansion Attempts 'Adverse Possession'

Thursday, January 24, 2013

"Person of Interest" theme in real life

CBS presents "Person of Interest" on Thursday nights. The show depicts resolution of potential crimes by information technology analysis of video cam outputs.

On Thursday, January 24, 2013, CBS KYW did an exclusive story on the breaking of the gruesome murder case of 35-year-old Dr. Melissa Ketunuti, who was strangled, with her body set on fire. High resolution video from a store near Ketunuti's home captured Jason Smith of Levittown following the doctor and later leaving the vicinity of the doctor's home. See Cops: Argument With Exterminator Led To Murder Of CHOP Doctor . Real life emulating art?

KYW noted Jason Smith had received favorable reviews on Angie's List.

Also, Todd Quinones did a story (with video by Jose Mora; Barbara Lou Jeffries) on a streaker hanging onto a SEPTA bus. The streaker went after one of the video takers and was video'd by the other.

Also on surveillance cameras:

A nearby business surveillance camera caught the entire ordeal as Safe can be seen walking down the stairs into the shopping center's plaza and then suddenly dropping into the chilly canal waters.

According to The Sun, a bystander called out to warn Safe that she was walking toward the frozen canal but it was too late. Businessman Neil Edginton was able to rescue Safe and pull her out of the water.

Edginton tells The Sun he "realized her focus was on her mobile phone and that she was going to walk straight into the water. I shouted to her to stop but it was too late. I dropped my phone and ran over to her. I had to lay down on the side with my arms in the water because she was submerged and pulled her out."

from Texting Woman Falls Into Icy Canal

Inescapably indefinite under 112 P 2

Readers interested in a patent case involving non-technical matter should view
Ernie Ball v. Earvana . A relevant claim is to a nut:

A compensated nut for a stringed instrument, the stringed instrument having one or more strings, a body and a neck, the nut comprising (...)

The patentee got a bad outcome (invalidity) but no one associated with this case fared well.

35 USC 112 P 2 is at stake:

While Earvana has not specifically pointed to the definiteness requirement of § 112, ¶ 2, it did challenge the asserted claims as invalid under § 112 in the district court, and it maintains that assertion on appeal. The definiteness requirement “is drawn from the court’s performance of its duty as the construer of patent claims.” Atmel Corp. v. Info. Storage Devices, 198 F.3d 1374, 1378 (Fed. Cir. 1999); see also Eplus, Inc. v. Lawson Software, Inc., 700 F.3d 509 (Fed. Cir. 2012) (“[I]ndefiniteness is a question of law and in effect part of claim construction.”). “The reviewing tribunal must determine whether a person experienced in the field of the invention would under- stand the scope of the claim when read in light of the specification.” Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1369 (Fed. Cir. 2006). We there- fore address definiteness as a pure legal question where, as here, in discharging our “duty as the construer of patent claims” we reach the inescapable conclusion that the claims at issue cannot satisfy the definiteness standard.

The following drafting caught the attention of IPBiz:

As is black letter law, the claims define the exclusive rights conferred by a patent, and the validity and infringement of those rights must be evaluated on a claim by claim basis. E.g.,, Inc. v., Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001); SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).

Separately, note

Before the district court, Earvana consistently argued that “the ’264 patent is invalid” pursuant to §§ 102, 103, and 112. Unfortunately, the dialogue on validity essentially ended there. The parties’ submissions never evolved beyond the most barren generalities, characterized by cursory recitations of statutory bases for invalidity and untethered debate about the LoJacono reference. As a result, the arguments on both sides lacked fundamental details at every turn—for example, which claims were challenged under each section, which limitations of those claims were in dispute, and which specific provisions of § 112 were at issue, to name a few—leaving the district
court to guess at which of many possible validity issues were material to resolving the dispute.
The parties’ lack of focus, not surprisingly, is reflected in the district court’s judgment on invalidity; its entire analysis spans only a single paragraph:

Defendant’s invalidity counterclaim is premised upon its contention that [LoJacono] and ’264 pa- tent disclose the same invention, and because the [LoJacono] patent was issued first, the ’264 patent should be invalidated for anticipation and obvi- ousness pursuant to 35 U.S.C. § 102, 103, 112. However, as previously discussed in the Court’s claim construction of “sinusoidal configuration,” [LoJacono] and the ’264 patent are distinct and cover different subject matter. [LoJacono’s] speci- fication and claims are limited to a guitar nut whose intonation portions have a defined sinusoi- dal configuration while the ’264 patent’s intona- tion portions do not form a sinusoidal arc. The Court therefore does not find Plaintiff’s ’264 pa- tent to be invalid for anticipation or obviousness.

Summary Judgment, slip op. at 16. Notably, the district court’s discussion fails even to address § 112, much less analyze the validity of any claim in view of that section’s multiple substantive requirements. Given the uncomplicated subject matter of the instant patent and the prior art patent, however, it is clear from the record that the asserted claims fail the definiteness requirement of § 112, ¶ 2.

Wednesday, January 23, 2013

Non-functional descriptive material in OKAMOTO

The claim element at stake in an article claim in Ex parte OKAMOTO :

a display unit operable to display the synthetic image.

But we conclude that the above-disputed limitation of a unit “operable” to generate a synthetic image including particular types of data is merely a statement of intended use or purpose regarding the recited unit in independent apparatus claim 1. “An ] intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Here, the disputed functional limitation “to generate” is not positively recited as actually being performed (see claim 1), but rather is merely a step that the unit is capable of performing.


The informational content of non-functional descriptive material is not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information content of a memory. . . . Nor does he seek to patent the content of information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (Federal Circuit Appeal No. 2006-1003, aff’d, Rule 36 (June 12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir. 2006).

KSR invoked against appellant in JOHANNESSON


Accordingly, the claim requirement of a sensor that includes two different regions that measure different information about an object with different resolutions is a combination of familiar elements from Leonard and Eberhard respectively that would have yielded predictable results. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

Board reverses obviousness rejection

The appellant won a reversal of obviousness rejections in Ex parte CHRISTISON .

The dispositive issue before us is whether the Examiner has erred in
determining that the combination of Aoki and Takada teaches or would have suggested “one of said barrel and said mount comprising a polycarbonate material and the other of said barrel and said mount comprising a liquid crystal polymer (LCP) material, said LCP material being self-lubricating so that the interface between said mount and said barrel is lubricated” (claim 19, emphasis added).

Newegg wins

The bottom line in Soverain v. Newegg was that Newegg wins:

The claims in suit of the ’314 and ’492 patents are invalid for obviousness over the CompuServe Mall system. The claims of the ’639 patent are invalid for obvi- ousness over Johnson in view of additional prior art, and the other evidence presented. The judgments of validity are reversed, and therefore the judgments of infringement and damages are vacated.

Newegg did lose on its jury trial argument:

Newegg argues that it was wrongfully deprived of a jury determination of the question of obviousness, pointing to the extensive testimony on this issue at trial. However, Federal Rule of Civil Procedure 50 “allows the trial court to remove cases or issues from the jury’s con- sideration ‘when the facts are sufficiently clear that the law requires a particular result,’” Weisgram v. Marley Co., 528 U.S. 440, 448 (2000) (quoting Wright & Miller, Feder- al Practice and Procedure (2d ed. 1995)). The Court has explained that the purpose of Rule 50 is “to speed litigation and avoid unnecessary retrials.” Neeley v. Martin K. Eby Const. Co., 386 U.S. 317, 326 (1967).

In passing, an Inventio case was cited:

Inventio AG v. Otis Elevator Co., No. 2011-1615, 2012 WL 5907489, at *5 (Fed. Cir. Nov. 27, 2012) (non-precedential) (reversing judgment of nonobvi- ousness when patent was “a clear example of a ‘combination of familiar elements according to known methods [yielding] no more than . . . predictable results.’” (citations omitted)).

Of experts:

Also, precedent does not require “expert” opinions on matters of law. In Nutrition 21 v. United States, 930 F.2d 867, 871 n.2 (Fed. Cir. 1991) this court observed that “[a]n expert’s opinion on the ultimate legal conclusion is neither required nor indeed ‘evidence’ at all.” Avia Group Int’l v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1573 (Fed. Cir. 1988) (“an expert’s opinion on the legal conclusion of obviousness is neither necessary nor controlling”).
We conclude that the prior art CompuServe Mall system, by clear and convincing evidence, rendered obvi- ous the “shopping cart” claims: claims 34 and 51 of the ’314 patent and claim 17 of the ’482 patent. These claims are invalid; the district court’s contrary ruling is reversed.

In Rexnord, CAFC affirms examiner, reverses Board

The outcome in Rexnord v. Kappos, in which Rexnord was the requestor of an inter parted re-exam against patent owner Habasit-->

Rexnord Industries requested inter partes reexamination of U.S. Patent No. 6,523,680 (the ’680 patent), owned by Habasit Belting, Inc. The United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) confirmed claims 1–14 of the ’680 patent. Rexnord appeals. We affirm that the claims are not anticipated, and reverse the Board’s determination that the claimed invention is not obvious in view of certain prior art.

The re-examined patent was directed to mechanical conveyor belt that is formed of rows of belt modules interlinked by transverse rods. Rexnord cited four references for the reexamina- tion: U.S. Patent No. 6,382,405 (Palmaer), U.S. Patent No. 6,471,048 (Thompson), U.S. Patent 5,372,248 (Hor- ton), and U.S. Patent No. 5,253,749 (Ensch).

The matter of obvious design choice arose:

The Board stated that “Rexnord’s reliance on ‘design choices’ . . . is more consistent with an obviousness analysis,” Dec. on Rehearing, at 4, but did not discuss Rexnord’s argu- ments for obviousness.

As to inherency:

The PTO responds that the Board correctly found that neither Palmaer nor Thompson states the size of the space between modules, and that the inherency argument fails because a space of less than 10 mm is not necessarily present in any reference belt. This court explained in In re Omeprazole Patent Litigation, 483 F.3d 1364 (Fed. Cir. 2007) that “anticipation by inherent disclosure is appro- priate only when the reference discloses prior art that must necessarily include the unstated limitation, [or the reference] cannot inherently anticipate the claims.” Id. at 1378. We agree with the Board that the precise less-than- 10 mm size limitation is not inherent in Palmaer or Thompson, for neither reference shows this limitation and that it would necessarily be recognized.

As to obviousness:

Thus we conclude that the Board erred in holding that it would not have been obvious to limit the space to the 10 mm maximum, and in reversing the examiner’s ruling of obviousness on this ground, without considering any of the other grounds of obvious- ness that had been raised for reexamination.

Of the timing of arguments:

The PTO brief states that “[t]he Board correctly declined Rexnord’s invitation to reject representative claim 1 as obvious over the com- bined teachings of Horton and Thompson under this new theory – presented by Rexnord for the first time in its request for rehearing.” Id. at 29–30.
However, the “new theory” was not new. These ref- erences had previously been presented to the examiner. See Request for Inter Partes Reexamination at 7 (“the ’680 patent teaches a design choice which allows pinching a small child’s finger having a diameter of less than 10 mm in the gap between adjacent links”; “the limitation of 10 mm is merely a design choice”; “A design choice was made by the Patentee in the ’680 patent”; “The Patentee clearly indicated that 10 mm is merely a design choice.”) The issue was fully raised before the examiner, and these references were not again a patentability issue until after the Board reversed the examiner.
When Habasit appealed the examiner’s decision, Rexnord was not barred from presenting this argument in defense of the examiner. The PTO states in its brief on this appeal:
Just as this Court does not entertain arguments made outside of appellant’s opening brief, see, e.g., In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004); In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997), the Board has a rule that similarly bars the presentation of new arguments outside appellant’s opening brief (absent circumstances not alleged here), see 37 C.F.R. § 41.79(b).
PTO Br. 24. We observe that Rexnord was not the appel- lant before the Board, and that the premise is an incorrect statement of the appellate process. On judicial review, the correctness of the decision appealed from can be defended by the appellee on any ground that is supported by the record, whether or not the appellant raised the argument. See Jaffke v. Dunham, 352 U.S. 280, 281 (1957) (“A successful party in the District Court may sustain its judgment on any ground that finds support in the record.”); Glaxo Group Ltd. v. TorPharm, Inc., 153 F.3d 1366, 1371 (Fed. Cir. 1998) (“an appellate court may affirm a judgment of a district court on any ground the
law and the record will support so long as that ground would not expand the relief granted”); Datascope Corp. v. SMEC, Inc., 879 F.2d 820, 822 n.1 (Fed. Cir. 1989) (“Ap- pellees always have the right to assert alternative grounds for affirming the judgment that are supported by the record.”); Bio-Rad Labs., Inc. v. Nicolet Instrument Corp., 807 F.2d 964, 969 (Fed. Cir. 1986) (“a court of appeals may affirm the judgment of a district court on any ground, including grounds not relied upon by the district court”).

Monday, January 21, 2013

Are generics bioequivalent?

From the Wall Street Journal on 3 October 2012:

In a statement posted on its website Wednesday, the FDA said it started receiving reports from patients who were experiencing reduced efficacy after being switched from Wellbutrin XL 300 mg to its generic counterparts. The agency said the problems appear to be associated with the Impax/Teva product.


The U.S. Food and Drug Administration said Wednesday the product, Budeprion XL 300 milligrams, which is manufactured by Impax Laboratories Inc. and marketed by Teva Pharmaceuticals USA Inc., "is not therapeutically equivalent to Wellbutrin XL 300 mg" or the extended-release version of Wellbutrin.

In a post titled A Drug Recall That Should Frighten Us All About The FDA

The People’s Pharmacy, a well-known syndicated radio and newspaper columnist husband and wife team, notified the FDA that hundreds of patients had logged their own complaints of side effects with the then-recently approved generic version of Wellbutrin XL. The FDA brushed off the People’s Pharmacy and others that raised the issue, stating that they had faith that the drugs were equivalent and that perhaps the patients, who had mental disease, were more prone to perceived problems with a change in the medication than others. This was seen by many as essentially telling patients “it’s all in their head.” After several more years and public outcry, the FDA was forced to take action.

Sunday, January 20, 2013

Brian Williams: "No two of these speeches are different, no two presidential administrations are different...."

Brian Williams seemed dopey and disoriented on NBC Nightly News with Lester Holt on Sunday, January 20, 2013.

"No two of these speeches are different, no two presidential administrations are different...." And on Obama's second term: "...second terms are for legacies, second terms can be fraught and problematic...."

Earlier Brian had mentioned an intelligent man talking to him about the second inaugural to the effect the highs won't be as high, the lows won't be as low. Inspection of the internet finds that quote, elsewhere: Terri Weijohn said, because with direct sales, "The highs are not going to be as high and the lows aren't going to be as low."

Speaking of copying, Brian talked about known copyist Kearns-Goodwin. "We're going to have Doris Kearns-Goodwin on hand tomorrow who wrote the book just in case...."

Meanwhile, Lester did no better, identifying Stan Musial as the shortstop for the St. Louis Cardinals. Musial was not a shortstop. There are very few lefthanded shortstops!

The News ended with an interview with Dr. Terence Roberts, one of the Little Rock Nine.
Separately, Pasadenan Dr. Terence Roberts, One of the Little Rock Nine, Inspires Students


Patents as opportunities to bargain

See the Boston Globe post You patented it, you own it? Not so fast including the text:

Patents become no more than a starting point for negotiation. A patent is a document that gives its holder an opportunity to bargain, a seat at the table—not an absolute right to everything that springs from an idea.

A patent right is a right to exclude others, not a right to make something. A patent gives the owner a right to negotiate with others.

Plagiarism by Bedminster, NJ Superintendent of Schools

See the post School board: We're satisfied superintendent accused of plagiarism 'understands her mistake' concerning Bedminster Superintendent of Schools Carolyn R. Koos.

CBS Sunday Morning on 20 January 2013

Charles Osgood introduced the stories for Sunday, January 20, 2013. By law, today is inauguration day. Sotomayor administered the oath to Biden today. The cover story is'Leading the Way', by Barry Petersen, and it will pose some questions around the topic of successful presidential leadership. Second, Lee Cowan does a story on the new Stingray. Third, Rebecca Jarvis visits the Sage of Omaha, Warren Buffet. A Sunday Drive. Fourth, Martha Teichner on Downton Abbey. The television series segment, gives the history of Highclere Castle and the PBS drama 'Downton Abbey, in 'The Real Downton Abbey'. Mo Rocca to offer an inauguration triptych, reporting on George Washington's bible. The 'Winners and Losers' segment to follow, as well as 'Sworn in Without the Hoopla', the passing of 'Dear Abby' for Passage. Opinion should be a commentary on Obama's second inauguration by Tavis Smiley; 'By the Numbers' to follow, related to the inauguration. Almanac should be an expose of Audrey Hepburn.

Bill Plante. President Obama begins the day at Arlington. At 5 minutes before noon, Roberts will administer the oath. Hostage crisis in Algeria ends. Guna across America rallys. Stan Musial died at 92. Earl Weaver died at 82 while on a cruise. 49ers vs. Falcons. Ravens vs. Patriots. Batmobile, 4.2 million dollars. Weather: Tale of two forecasts.

First, "Leading the Way" by Barry Petersen, beginning with Ronald Reagan's line on Walter Mondale. A clip including Michael J. Fox. Thomas Cronin: Mother Thereaa, Mandela, and Spiderman all rolled into one. David McCullough on John Adams. May none other than honest and wise men rule under this roof. Honesty is essential. Courage, integrity, patience, and determination. Roosevelt on Panama Canal. Tremendous cost and tremendous risk. TR first Prex to leave USA during office. Best lead not only with actions but also with words. David Gergen: advisor to four presidents. Unifier in chief. FDR: maps of Pacific. Persuader. Bring country along with him. @nd term: a year to 18 months before jockeying for a successor takes over. Thomas Jefferson faced inside the beltway partisanship. Jon Meachem: the art of power. Use the dinner table. David Gergen: socializing for political gain. Obama playing golf. McCullough on Gerald Ford. He seemed ordinary. Made one of the bravest decisions. An act of political courage that healed the country. Follow me, we're going to make that mountain.

January 20, 1993. Audrey Hepburn died of cancer at age of 63. Studied ballet in Holland. 1954: Roman Holiday. 1961: Breakfast at Tiffanys. 1963: Charade. 1964: My Fair Lady. Roaming ambassador for UNICEF. 8 missions to Ethiopia. Inoperable cancer.

Season 3 of Downton Abbey got under way. Martha Teichner on Highclere Castle. The 8th earl and Lady Carnvaron. The house in 1993 relied on weddings and conferences for revenue. The 5th earl and Almina (from de Rothchild). The 5th earl was a car driver. Almina turned home into a hospital. The 5th earl bankrolled Howard Carter; Nov. 1922, King Tut. April 5, 1923: death of 5th earl in Cairo. Castle built in 1840s, completely surrounding an earlier house. Dinner at Highclere Castle. 1200 visitors per day now visit Highclere.

President and VP at Arlington this morning. Mo Rocca looks at inauguration ways.
NYC, April 30, 1789. The inaugural inaugural. Four presidents would take oath on the same Bible. The nearest bible, St. John's Masonic Lodge Number 1. Fourteen presidents were Masons. Masonic Bible transcended denomination. A passage from Genesis: Jacob blessing his 12 sons. Random pick: Book of Job, disease, destruction, and death. Bible present at groundbreaking of White House and at death of Washington.

1953 Chevy Corvette shown. Lee Cowan mentioned Alan Shephards Corvette. 1963: Stingray. 2013: Stingray back. A firebreathing monster. Jean Jennings. Delivers a huge whack of fun. V8: 450 horsepower. Todds Jechter, engineer. 0-60 in less than 4 seconds. 190 miles per hour. Tom Peters, head of Corvette design. Looks too much like Dodge Viper. First unveiled at Motorama in 1953. Zorra Duntoff was chief engineer. Mention of Route 66. Dead Man's Curve by Jan and Dean. By the 1980s, sales stuck in low gear. On the road, it was a farm implement. Part of DNA of Chevrolet. Rick Hendrick. 427, 390 horsepower. Corvette was the ultimate car.
[Hot rod Lincoln music playing in background.]

Pauline Philips died on Wednesday, at age 94, about 10 years after her twin died. By 1958, she was on person-to-person. Most people just want someone to listen to them, without sermonizing. Rivalry was stuff of legend. Very big high heels to fill.

Mo Rocca. Constitution, noon on Jan. 20th. Lyndon Johnson took oath on Air Force One. Gerald Ford. Plymouth Notch, Vermont, Calvin Coolidge. At 2:47am in 1923. Oath of Office Room. No electricity in town. No telephone. General Store had telephone. Birdseye maple and cherry. Coolidge sworn in by notary public, his father.

Rebecca Jarvis, Sunday Profile, on Warren Buffet. Buffet drives his own Cadillac. McDonalds, sauaage McMuffin. His early home. No iPad, no iPhone. Bought his first stock at age 11. Five years to save $120. 1941. Now 82. Picture of year book at Rose Hill Elementary. Being rich = being independent. Carol Loomis. Tap Dancing to Work. Biggest strength: rationality. Most investors are swept up by emotions. 1000 in April 1966 to 6.5 million dollars. Luck begins at birth. Born in 1930. In 2011, NYT editorial: we mega-rich continue to get our tax breaks. Inequality of results ok. Debt itself is not a problem. 535 people are not going to mess up 315 million. We have had a system that has released the potential of human beings. This country just keeps chugging forward. The average person will not know enough. Buy an index fund. Overall they were do find over time. It's a big mistake to look back.

Notre Dame linebacker has broken his silence. Dean Reynolds. Narrative of pain and perseverance. His girlfriend: car accident and leukemia. Deadspin, a sports blog. Jack Dickey. 22 year old Stanford grad. No death notice. Highly unlikely he was duped in fashion he said. Triumph over tragedy. Elaborate, sophisticated hoax. Manti Te'o. Some Samoan man had pranked him. A story too good to be true.

Mo Rocca discusses losers. Arizona's Barry Goldwater. Winning by losing. Douglas Brinkley. Barry blazed the trail for Ronald Reagan. George McGovern was ahead of his time. Davis , loser in 1924, argued Brown v. Board. Grover Clevaland. Michael Dukakis, how not to look in a tank. Horatio Seymour, in 1868. The genius of Washington was he stepped aside. How to step from power gracefully. [Note: the remark there is no such thing as "Ford-ite" is not consistent with earlier remarks about how great Ford was.]

Looking ahead. Monday, Prez Obama. Tuesday: election day in Israel. Wed. Hillary Clinton testifies. Thurs. Senate Foreign Relation Fri. Geither down. Sat: Phantom.

Opinion by Tavis Smiley. MLK is the background of Obama's foreground. Table of brotherhood. Fulfillment. Poverty, militarism, racism. Obama should consider: random use of drones. Channel King: use of MLK's Bible. King being used symbolically but misused substantively. How serious we consider the legacy of MLK. The time is always right to do right.

Moment of nature (Volunteers of America). Among geysers of Yellowstone, America's first national park.

Friday, January 18, 2013

Bimbo Bakeries bagels bagged

IPBiz has followed various stories relating to the intellectual property of Bimbo Bakers, who own, among other things, the rights in Thomas' English Muffins.

Now, there's a problem with the bagels.

See the story from WINK News in Ft. Myers, FL Publix recalls bagels that may contain metal. Possibly included are certain lots of Thomas Cinnamon Raisin Bagels
and Thomas Plain Bagels.

More related to IP, see
AP runs Bimbo story
. From within the IPBiz post: n all, the Mexican company has 35 bakeries in the USA turning out national brands such as Entenmann's pastries, Boboli pizza crusts and Thomas' English Muffins to regional brands such as Brownberry bread and Mrs. Baird's snack cakes. About 43% of Bimbo's 2009 sales were in the USA.

Washington Post editor caught plagiarizing

From the wrap: In a story about the expansion of the Panama Canal, [William] Booth [of the Washington Post] took lines from the journal Environmental Health Perspectives, an ethical breach he called a "very serious lapse" but said in a public apology, released by the Post, that it was accidental.

As usual, an assertion of inadvertent plagiarism.

The author of the material copied by Booth was Andrea Hricko.

UPDATE. See also

The Post uses someone else’s words — again

Nonfunctional descriptive material

from within Ex parte VAN BERKEL

“[A] machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’” Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (quoting In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), reh’g denied en banc, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied, 129 S. Ct. 70 (2008)).

Nehls is quoted:

In a precedential Opinion, an expanded Board panel held that nonfunctional descriptive material (sequence data) did not distinguish the claimed computer-based system from a prior art system that was the same except for its sequence data. See Ex parte Nehls, 88 USPQ2d 1883, 1887-88 (BPAI 2008) (precedential).3 It follows that Appellants have not shown error in the Examiner’s rejection of claim 1 as being anticipated by Erdogan.


See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006) (stating if a claimed phrase cannot alter how the process steps are to be performed to achieve the utility of the invention or merely states an intended use or purpose for the data, it is not entitled to patentable weight)

Obviousness affirmed in Shepherd

from Ex part SHEPHERD

Of written description:

Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). One shows possession “by such descriptive means as words, structures, figures, diagrams, formulas, etc. that fully set forth the claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, we find that at least Appellants’ Fig. 2 sufficiently describes the use of a “normal” browser prior to transitioning to a secure browser and then returning control back to the original browser (i.e., the normal browser).

Keller is cited

Thus, Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted, emphasis added). This reasoning is applicable here and Appellants have failed to rebut the collective teachings.

Although the written description rejection was reversed, the ultimate finding of non-patentability was affirmed.

Retirement planning method found to be obvious


The claim concerned:

A method for using a desktop including a display for forecasting a likelihood that a customer’s assets held in a plurality of different types of customer accounts at retirement meet in-retirement goals, including, but not limited to, an annual income withdrawal goal, an estate goal, and a years in retirement goal ...

The art in question:

Claims 1, 2, 4, 5, 7, 9, 11-20, 36, 39-41, and 43-48 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Corrin (US 2002/0035527 A1, pub. Mar. 21, 2002) in view of Tracey Longo, The First Cut Is The Cheapest: Retirement distributions can come from many sources IRAs, 401(k)s, and so on. Knowing where to start can prolong earnings growth, Financial Planning. New York, 1-4 (Apr. 1, 1999) (hereinafter “Longo”).

As to descriptive material:

The United States Patent and Trademark Office (USPTO) need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983; In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); and In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994).

“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.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).


The decision of the Examiner to reject claims 1, 2, 4, 5, 7, 9, 11-20,
36, 39-41, and 43-48 is AFFIRMED.

This decision contains several new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.”

"In re Rose" not allowed to become per se rule

from within Ex parte WARBURTON

On naked assertions:

Although Appellant points out what claims 3, 4 and 6 recite and assert that the references do not teach those limitations (id. at 12-13), such conclusions are not considered a separate argument for patentability. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Dependent claims 3, 4 and 6 therefore stand or fall with claim 1. 37 C.F.R. §41.37(c)(1)(vii).

Concerning burden switching [as in In re Best]:

“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” Id.

[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.
Id. at 1478, quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971).

KSR is invoked:

A reference is analogous if it is reasonably pertinent to the particular problem with which the inventor is involved. See In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).
Obviousness analysis permits an examiner to rely upon “common sense” or the knowledge of the skilled artisan to bridge gaps in prior art’s explicit teachings. KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 420-21, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007) (“Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). The examiner’s reasoning “may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009).

On obviousness:

One “may rebut a prima facie case of obviousness by showing that the
prior art teaches away from the claimed invention in any material respect.” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003); citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). However, for a reference to teach away, it must state more than a general preference for an alternative invention. It must ‘“criticize, discredit, or otherwise discourage”’ investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009), quoting In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004).

...size of an article under consideration which is not a matter of invention,” citing In re Rose, 220 F.2d 459 (CCPA 1955).


The Examiner’s reliance on In re Rose does not explain why a skilled
artisan would have modified Dyer to arrive at the claimed dimensions as a matter of obvious design choice. Although we appreciate the Examiner's reliance on In re Rose for the proposition that size is not ordinarily a patentable feature, we note that jurisprudence when used in this manner amounts to a per se rule of unpatentability. However, our reviewing court has carefully cautioned against the use of such per se rules. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (“[R]eliance on per se rules of obviousness is legally incorrect.”). As such, we find the Examiner’s reliance on a per se rule to be inappropriate because the Examiner has not provided any evidence or reason that would have prompted a person of ordinary skill in the art to modify the cable ties of Dyer to the dimensions recited in the claim.

[Query: isn't obvious design choice "obvious"?]


The fact that none of the references individually disclose placing cables ties into a sterile package is not sufficient to establish that the Examiner erred in reaching a conclusion of obviousness based upon the combined teachings of the references. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Each reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”).

KSR: like pieces of a puzzle

from within Ex parte Hara

“Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 420 (2007).

Keller is also cited:

We do not find Appellant’s arguments to be persuasive. In particular, we observe that Appellant attacks the cited references in isolation. (Appeal Brief 11-26; Reply Brief 1-10). Appellant’s arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” (Emphasis added) (citations omitted)).

On including prior art in a patent specification

Ex parte Dacosta includes references to cases which might lead one not to include prior art in a background section.

HOWEVER, 102(b) prior art is usually readily identifiable, and admitting the obvious is not such a big deal. Making a clear distinction from prior art is usually helpful in moving prosecution along.

The cases

Constant v. Advanced Microdevices, 848 F.2d 1560, 1570 (CAFC 1988)

In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975)

Note from stratfordpub Obviousness Standard for Patents [by Paul Davis, Scott Szala] :

the AIA legislatively overrules the Nomiya line of cases, wherein admissions can make prior art out of non‐prior art. See In re Nomiya, 509 F.2d 566, 571 (CCPA 1975). Thus, admissions should remain as non‐statutory prior art.

Separately, on a "noticed fact"

MPEP 2144.03(C)
37 CFR 1.111(b)

Thursday, January 17, 2013

Chip Kelly as Cortes??

Note from wikipedia: There is a popular misconception that the ships were burned rather than sunk. This misconception has been attributed to the reference made by Cervantes de Salazar in 1546 as to Cortés burning his ships.

Also: Tariq ibn Ziyad

Appellant wins on 103, but loses on 102 in Ex parte Smalley

Within Ex parte Smalley

as to anticipation

The removal of Hoy’s strips 58, 60 creates a first opening capable of article removal when utilized with articles of appropriately configured sizes and shapes. See Ans. 4. The burden shifted to Appellants to show that removal of Hoy’s strips 58, 60 would not necessarily create a first opening that would allow for article removal. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (once the Examiner finds that the prior art structure would be capable of performing all of the functions claimed, the burden shifts to the applicant to show that this is not the case). Appellants’ arguments are not persuasive (...)

as to obviousness

[the examiner]concludes that “adding [the divider pad] would have been obvious because the selection of a known material based upon its suitability for the intended use is a design consideration within the skill of the art.” Id. (citing In re Leshin, 227 F.2d 197 (CCPA 1960)).

Appellants contend that the instant case is distinguishable from the facts of In re Leshin. Reply Br. 7-8. In particular, Appellants contend that “the question [in the present case] is not the selection of a known material [as in Leshin, but] rather . . . whether it would have been obvious to add the claimed additional structure to the Hoy carton.” Id. The reasoning to support a conclusion of obviousness may, in appropriate circumstances, properly come from legal precedent established by prior case law. See, e.g., In re Eli Lilly & Co., 902 F.2d 943 (Fed. Cir. 1990). However, we find that the facts in the prior legal decision of Leshin are not sufficiently similar to the instant case to support the Examiner’s sole reliance on legal precedent in making a conclusion of obviousness. “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious.” See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

Wednesday, January 16, 2013

If at first you don't succeed...

from WINK News on a story from Punta Gorda, FL on 16 Jan 2013

On June 30, 1993, officers responded to the 3700 block of Whippoorwill Blvd. for a report of a missing 64-year-old woman. Frances Hendrickson was last seen by a neighbor driving her 1987 light blue colored Buick station wagon.

Approximately two years ago, the case was reopened using sonar to search City canals for the missing woman's vehicle. Detectives teamed up with the Florida Department of Law Enforcement, Sarasota County Sheriff's Office, and the Lee County Sheriff's Office in the effort. Earlier today, using a new advanced sonar technology, a light blue colored station wagon was discovered in a canal behind the intersection of Whippoorwill Blvd. and Eider Street, just blocks from the missing woman's home. This area was previously searched by air and water numerous times. The Punta Gorda Police Dive Team has secured the location.

Parallel Networks loses its appeal at CAFC

In the case Parallel Networks vs. Abercrombies & Fitch and many others ,
Parallel lost its appeal at the CAFC.

The CAFC noted:

Despite the many issues raised on appeal, this case reduces, as the district court ruled, to a fairly simple analysis. First, as to claim construction, we agree with the district court that the data manipulation service (or functionality) and the particularized data are both neces- sary components of the applet as it is initially generated and before it is transferred to the client. Asserted claim 1 describes an “executable applet” that is both “dynamically generated by the server in response to the request” and “operable to be transferred over the communications link to the client device.” See ’111 patent, col. 17, ll. 54-65. The claim further describes the applet’s two “constituent” systems as the data and the functionality. Id. In other words, the claim teaches that the applet is “generated” in response to a user request, is “executable” and “operable,” is “associated with” the two “constituent” systems of particularized data and functionality, and is thereafter “to be transferred.”

Such a reading comports with the ordinary meaning of the patent’s key terms.

Parallel was doomed:

A finding of non-infringement follows directly from this analysis. Parallel concedes that, for each of the accused websites, “[i]t is undisputed that the client device must receive both the associated functional code and data to execute the applet.” And Parallel also concedes that each of the accused instrumentalities is missing at least one portion of the functional code or data when the applet is transferred to the client because the applet includes only a link. Those admissions doom Parallel’s claims because we construe the asserted claims of the ’111 patent to require that the applet be executable or operable when it is generated and before it is first transmitted to the client, which means it must include both the particular- ized data and the functionality. Because the accused websites do not contain every claim limitation, they do not literally infringe.

The CAFC would not re-write the patent:

If Parallel’s position were adopted, it would permit the broad term “associated with” to effectively rewrite the patent.

Parallel did not make out well in footnote 2:

We also reject Parallel’s related argument that the district court’s use of “combine” rather than “generate” was error because the specification notes that the applet can be generated in “a variety of ways,” including “by combining various predefined units.” Parallel’s argument is a non-sequitur, as it does not address the fact that generating the applet requires combining data and functionality, even if the generation may use predefined units of data or templates customized based on the data.

Figure 3 is invoked in footnote 3:

Parallel is clearly wrong to maintain that an applet can predate the client request. As the district court held, an applet cannot predate the request if it is to be generated “in response to” that request. Parallel’s attempt to sidestep that problem by arguing that the applet may be generated using templates or prewritten proce- dures does not change the fact that the applet itself must be generated at the time of or after the client request, even if some of its elements existed before the request was made. Figure 3 forecloses any argument to the contrary.

Parallel's expert did not make out well:

Indeed, the analysis of Parallel’s expert, Dr. Richard Cooper, highlights the fundamental problem with Parallel’s position. Dr. Cooper explained that, in each of the accused systems, the client device is instructed that “the combined data and the functional code are needed for the applet to execute and how to obtain that needed infor- mation.” The fact that the client needs to “obtain” information in order to execute, however, confirms that no “executable” or “operable” applet is generated and then transferred from the server to the client, as the patent requires. Dr. Cooper’s ipse dixit statements that, in his opinion, “it is irrelevant on this ‘combining’ issue whether the data and functional code are actually listed within the HTML or whether the data and functional code are listed by a link in the HTML,” are not sufficient to avoid sum- mary judgment. See, e.g., Arthur A. Collins, Inc. v. N. Telecom Ltd., 216 F.3d 1042, 1046-48 (Fed. Cir. 2000).

As to Rule 59(e):

We agree with the district court that Parallel is seeking to amend its infringement contentions in order to make arguments that could have been made before the entry of summary judgment, a tactic that the district court correctly held to be improper. See, e.g., Templet v. HydroChem Inc., 367 F.3d 473, 478-79 (5th Cir. 2004).


Requiring the formality of an addition- al sentence to that effect is unnecessary, and Parallel cites no Rule 59 cases in support of its argument. That is unsurprising, as courts frequently deny Rule 59(e) mo- tions without discussion, and such dispositions are not treated as legally erroneous because they are summary in nature. See, e.g., Boone v. Citigroup, Inc., 416 F.3d 382, 387 n.6 (5th Cir. 2005) (“The district court also summarily denied a rule 59(e) motion to reconsider the denial of remand.”); Hinojosa v. Brown, 129 F. App’x 915, 916 (5th Cir. 2005) (same).

Good news/bad news for GE in Ex parte BAUMGARTNER

Within Ex part BAUMGARTNER, General Electric overcame the Examiner's rejections but got new rejections courtesy of KSR.


“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421. (...) Applying the KSR standard of obviousness to the findings of fact, we conclude that the person of ordinary creativity would have predictably combined the load detecting circuit for detecting contact with the skin of Akisada with the ultrasonic transducer of Emery since Emery is interested in “determining if a probe is coupled to a body to be imaged” (Emery, col. 6, ll. 31-32; FF 10). Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.

Of written description

[T]he hallmark of written description is disclosure.... [T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).


While the Examiner is correct that the specific language of the claims was not disclosed ipsis verbis in the Specification, ipsis verbis support is not required. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996).

Zletz is cited

With regard to claims 8 and 10, we interpret these claims to require that the physical sensor is turned on using a manual power switch, but the claims do not require that the switch solely function to turn on the physical sensor, but may be a switch which activates the entire ultrasound system. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”).

The TSM is not a "sine qua non" requirement

The Board speaks to the TSM test in Ex part RADICH

As prescribed by the controlling case law, while it is often necessary
for an Examiner to identify a reason for combining the familiar elements obtained from the prior art in establishing a prima facie case of obviousness, the identification of such a reason is not a sine qua non requirement. So long as the Examiner provides an articulated reasoning with some rational underpinning to substantiate the obviousness rejection, such a conclusion is proper. (...) As noted above, the case law allows the Examiner to look to the state of the prior art, including the knowledge of the ordinarily skilled artisan to arrive at such a reason for combining the known elements of the prior art. Consequently, the Examiner’s reliance upon the cited references in order to arrive at an articulated reason with a rational underpinning to support the proffered combination is proper.

Yes, KSR is cited:

The U.S. Supreme Court has held that “[t]he 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). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated teachings of multiple patents; . . . and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason for combining the known elements in a the fashion claimed by the patent at issue.
Id. at 418.

Relying on patent figures to interpret patent claims

Within Ex parte TROUILLY, one has some arguments concerning the use of figures to interpret claims.

Appellants also argue that the Examiner may not use Becker’s
Figure 2 as a source of teaching that the middle chamber is shorter than the side chambers because “patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Reply Br. 3-4 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)). We agree that Becker does not indicate that its figures are drawn to scale. However, even when patent drawings are not drawn to scale, they may nevertheless be used to establish relative sizes and
relationships between the various components which are clearly depicted in those drawings. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir 1991). The Examiner merely relies on Figure 2 for its description of the relative sizes and relationships among the three chambers shown in the figure. The Examiner does not rely on “precise proportions” shown in Becker’s Figure 2. Instead, the Examiner finds that the figure discloses a middle chamber that is shorter than the side chambers. We agree that Becker’s Figure 2 discloses this relationship to a skilled artisan, and thus the Examiner’s reliance on the figure is permitted. In re Aslanian, 590 F.2d 911, 914 (C.C.P.A. 1979).

Appellants argue that the Examiner erred in finding that Becker’s Figure 1 discloses the claimed length ratios of claims 18 and 20. Reply
Br. 6-7. Appellants contend that the Examiner improperly relied on Becker’s Figure 1 to teach the claimed length relationships (Reply Br. 7), because “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Reply Br. 4 (quoting Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, (Fed. Cir. 2000)).   The Federal Circuit applied the principles of Hockerson in a later case even more relevant to the case before us. Nystrom v. TREX Co., Inc., 424 F.3d 1136 (Fed. Cir. 2005). In Nystrom, an accused infringer relied upon a computer model generated from Figure 3 in a prior art patent (“Zagelmeyer”) to prove anticipation of Nystrom’s claim 18 directed to a wooden plank with a convex top surface, which recited in pertinent part:
said convex top surface being manufactured to have a radius of curvature with a slightly rounded or curved configuration extending across the top surface from one side edge to the other, defining a difference in thickness between the longitudinal centerline and the opposite side edges, with the  ratio of said difference in thickness to the width of the board being about 1:40.
Nystrom, 424 F.3d at 1148 (emphasis in original). A Trex employee carefully measured Zagelmeyer’s Figure 3, which illustrated a plank with a convex top surface. The Trex employee used those measurements to generate a computer model of the plank to establish that the plank had a relevant thickness ratio of 1:39 or 1:37. Id. Based on the computer model, the district court concluded that Zagelmeyer anticipated claim 18. The Federal Circuit reversed the district court because “the district court erred in determining invalidity based on evidence improperly derived from a patent drawing” in violation of the principles of Hockerson and In re Wright, 569 F.2d 1124, 1127 (C.C.P.A. 1977) (rejecting PTO’s reliance on drawings not to scale to find that prior art taught “chime length of roughly 1⁄2 to 1 inch for a whiskey barrel”). Nystrom, 424 F.3d at 1149. 

Appellants correctly point out that Becker contains no written description of the length of chamber 16 in comparison to the lengths of chambers 12, 14. Reply Br. 7. We further agree with Appellants that Becker fails to disclose that its Figures are drawn to scale. Id. The Examiner thus relies solely upon Becker’s Figure 1 for his finding that Becker teaches the length relationships of independent claims 18 and 20. In doing so, the Examiner errs in the same way that the district court erred in Nystrom. Therefore, we reverse the rejection of claims 18-20 under § 103(a) as obvious over Becker.
Separately, of the appellants trying to import limitations from the specification into the claims -->

Appellants argue in response that the recitation of “substantially less” in claims 1 and 21 and “substantially greater distance” in claim 12 distinguish these claims from the container illustrated in Becker’s Figure 2. Reply Br. 2-3. Appellants contend that a skilled artisan understands “substantially” as claimed to mean “considerable in value, degree, amount or extent.” Id. at 3 (citing American Heritage Dictionary of the English Language, Fourth Edition, Houghton Mifflin Company). Appellants then attempt to quantify “considerable in value” by referring to the Specification, which discloses multi-chambered containers in which the middle chamber is “about two-thirds to about three-quarters” of the length of “either or both side chambers.” Reply Br. 3. The Specification describes this range of length ratios as being desirable. See, e.g., Spec., para. [0044]. However, independent claims 1, 12, and 21 do not recite these ratios.

The Federal Circuit recently reiterated the well-established principle that “it is not proper to import from the patent’s written description limitations that are not found
in the claims themselves.” Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1375 (Fed. Cir. 2012). Therefore, we decline to import this range of ratios from the Specification into claims 1, 12, and 21.