Tuesday, December 31, 2013

Biofuel work at Montana State

MSU research into algal biofuels keys larger study

Robin Gerlach is the MSU professor coordinating research into the production of oil-producing algae, as well the feasibility of commercial-scale biofuel production based on microbes discovered in Yellowstone National Park. Part of a multi-institutional project funded by a grant through the Sustainable Energy Pathways program at the National Science Foundation, it is one of many algal biofuel research projects at MSU in the labs of MSU professors Keith Cooksey, Matthew Fields, Brent Peyton and Gerlach.

The project, which also includes the University of North Carolina and the University of Toledo, is part of a federal effort to tackle some of the fundamental problems in developing enough biofuels fuels to provide up to 50 percent of the nation’s transportation fuel. The U.S. Department of Energy funding the project (...)

Typically, people think algae consume carbon dioxide but under alkaline conditions, most of the inorganic carbon in the water is in the form of bicarbonate, Gerlach said.

“But in these highly alkaline environments, that carbon becomes soluble in water and it can be used,” said Gerlach, whose research team includes post-doctoral students, graduate students and undergraduates. (...)

Additionally, the fact that these microbes thrive in a highly alkaline environment lessens the contamination that can complicate efforts to extract commercially viable oils.

The work at the University of North Carolina is taking a holistic look at the future of algal biofuels. That portion of the project is being conducted by Gregory Characklis, who grew up in Bozeman and is the son of the late Bill Characklis, the MSU professor who founded the Center for Biofilm Engineering.

Characklis, a professor in UNC’s Department of Environmental Sciences and Engineering, is compiling data to build computer models that will test the economic feasibility of producing algal biofuels on a commercial scale, while also assessing some of the environmental impacts of the production process.

Examiner reversed in Ex parte KUDELA

Ex parte KUDELA

Because a claim term should be construed consistently wherever it appears in a patent or application’s claims, see, e.g., Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997) (“[W]e are obliged to construe the term ‘elasticity’ consistently throughout the claims.”), we determine that the term “coupled” as used in the ’029 application’s claims means “joined” or “connected.”
The ’029 application’s independent claims use the phrase “directly coupled.” Based on our review of the ’029 application’s Specification, we conclude that a person of ordinary skill in the art would have understood the adverb “directly” as having been used in its normal sense of meaning “in immediate physical contact.” See Directly, MERRIAM-WEBSTER.COM, http://www.merriam-webster.com/dictionary/directly (last visited Dec. 17, 2013).
Accordingly, we construe the phrase “directly coupled” as meaning “joined by immediate physical contact.” Each of the ’029 application’s independent claims, therefore, requires that the RF choke have a plurality of ferrite disks joined or connected to a metallic gas feed tube by immediate physical contact. For the reasons set forth below, we determine that the Examiner’s finding that the combination of Sorensen and Hettiger describes or suggests an RF choke with such as structure is incorrect.

Monday, December 30, 2013

Pasteur gets mixed result from CAFC appeal of re-exam 95/000,443

Pasteur won on the '545 and '252 patents.

For the ’605 patent, we dismiss Pasteur’s appeal as moot, because Pasteur presented only substan- tively amended claims to the Board and to this court, and amended claims cannot be entered now that the patent has expired. For the ’545 patent, we reverse the Board’s conclusion as based on factual findings unsupported by substantial evidence and an erroneous obviousness analysis, including an improper discounting of Pasteur’s objec- tive indicia of non-obviousness. For the ’252 patent, we vacate the Board’s decision and remand for consideration of what motivation, if any, a skilled artisan at the rele- vant time would have had to pursue the claimed inven- tion.

link: http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1485.Opinion.12-23-2013.1.PDF

Robert Bryce takes on New York Times over jatropha

In a piece in the National Review, Robert Bryce rips a NYT article by Todd Woody on jatropha and SGB.

Bryce hits on low values of power density, for example energy per ( time-area).
Others simply discuss cost.

The Latest Biofuel Nonsense: Jatropha
The most recent miracle plant would need vast areas of land to produce relatively little energy.

Saturday, December 28, 2013

On bacteria producing ethanol from sugar

Quote from Cui Qiu, a researcher with the Chinese Academy of Sciences' Qingdao Institute of Bioenergy and Bioprocess Technology on rdmag

I don't think the technology is a problem. Scientists have turned numerous microorganisms into impressive producers of biofuel that are highly efficient from the perspective of energy conversion. The biggest issue today is cost. The price for a ton of ethanol, for instance, is less than 5,000 yuan (HK$6,332). If ethanol is produced from sugar using traditional methods, the sugar alone would cost more than 6,000 yuan. Our new method with Clostridium could reduce the sugar requirement and bring the total cost close to ethanol's market price. But then there is no profit. A biofuel must be able to compete with fossil fuels, such as petrol. But there is hope. Fossil fuel resources are declining and leading to more and more complaints about pollution and the price rises are basically irreversible. The higher the cost of fossil fuel, the more demand there is for various biofuels.

Elsewhere, the text:

“Cost is the big roadblock for algae-based fuel,” Douglas Elliott, the lead scientist on the algae project, said in a written statement. “We believe that the process we’ve created will help make algae biofuels much more economical.”

from Biofuel scientists making headway on cheaper algae-based crude

See previous IPBiz post: http://ipbiz.blogspot.com/2013/12/hydrothermal-liquefaction.html

Facebook on the way out?

A report on NBC Nightly News on Dec. 28, 2013 suggests that Facebook is on the way out and things like
Instagram, Tumblr, Twitter are trending up.

Also from Uncool Facebook dead...

Young people now see the site as "uncool" and keep their profiles live purely to stay in touch with older relations, among whom it remains popular.

Prof Daniel Miller of University College London, an anthropologist who worked on the EU-funded research, wrote in an article for the academic news website The Conversation: "Mostly they feel embarrassed even to be associated with it.

"This year marked the start of what looks likely to be a sustained decline of what had been the most pervasive of all social networking sites.

"Young people are turning away in their droves and adopting other social networks instead, while the worst people of all, their parents, continue to use the service.

"Where once parents worried about their children joining Facebook, the children now say it is their family that insists they stay there to post about their lives. Parents have worked out how to use the site and see it as a way for the family to remain connected.

Friday, December 27, 2013

Biofuel producer Aina Koa Pono receives set-back from Hawaii Public Utiliities Commission

The developer of a proposed biofuel production facility on Hawaii island said today it will proceed with its plans despite being told by regulators that Hawaii Electric Light Co. will not be allowed to buy the company's fuel for power generation.

The state Public Utilities Commission on Monday for the second time in two years rejected a plan by HELCO to buy 16 million gallons of locally produced biofuel a year from Aina Koa Pono, saying the cost of the alternative fuel was too high when compared with the fossil fuel that it would replace.

HELCO and its parent Hawaiian Electric Co. had proposed recovering the higher cost of the biofuel through a surcharge that would have added 90 cents a month to a typical residential on Hawaii island and $1.08 a month for a typical residential bill on Oahu.

The PUC's three commissioners in a unanimous decision said their ruling was supported by several conclusions, including "the contract price for the AKP-produced biofuel is excessive and not cost-effective at present and for the foreseeable future, and thus, is unreasonable and inconsistent with the public interest."

The commissioners wrote that the biofuel contract with Aina Koa Pono would have potentially displaced "more economical, existing renewable energy resources or restrict the addition of other new low-cost, fixed price renewable energy projects." The commissioners did not mention specific projects, but Hawaii island is home to a major geothermal energy plant, and HELCO is close to awarding additional contracts for more geothermal development.

link Biofuel firm says HELCO contract not needed for plan to work

CAFC reviews "exceptional case," Brooks Furniture Manufacturing v. Dutailier in Kilopass v. Sidense

The case Kilopass v. Sidense is about exceptional cases and attorneys' fees, and the outcome was

In sum, we vacate the district court’s decision denying the motion for attorneys’ fees and remand for consideration of whether Kilopass’s doctrine of equivalents theory was objectively baseless, and then, whether the totality of the circumstances demonstrates that Kilopass acted with subjective bad faith. If the district court determines that the case is exceptional after applying the correct legal standards, it should then determine, in its discretion, whether to award attorneys’ fees under § 285. Alterna- tively, the trial court may, in its discretion, award fees based on alternative grounds for doing so, if such grounds exist.

Because the district court’s decision was premised on an incorrect legal standard, the decision of the district court is vacated and remanded.

Thus, the appellant Sidense "won" against the plaintiff-patentee Kilopass (represented by Durie Tangri, LLP ). The discussion of "exceptional case" (35 USC 285) is lengthy and begins around page 11.

Of note to technology people is the discussion of "how" this case came about. Kilopass is the patentee-plaintiff in the matter, and sought outside counsel advice on the strength of their infringement claims:

Despite that advice from its Perkins patent counsel that Sidense did “NOT infringe [the] claims literally,” and that Kilopass’s case was “much tougher,” Kilopass re- tained the law firm of Morrison Foerster (“MoFo”) to conduct another analysis. (...)

MoFo then immediately began its “more detailed investigation” in order to meet Kilopass’s deadline. However, eight days later, on March 27, 2008, Kilopass instructed MoFo to stop all work on the project. The reason is unclear, but MoFo subsequently sent Kilopass an invoice for 44 hours of work “relating to Kilopass’s investigation of potential infringement claims against Sidense.” J.A. 11490. The invoice was accompanied by “a preliminary infringement chart for the ’751 patent reflect- ing [MoFo’s] analysis.” Id.
The infringement chart provided an analysis concern- ing the doctrine of equivalents and concluded that “Kilopass appears to have a reasonable argument that Sidense’s field oxide region is equivalent to the doped region in claim 1 of the ’751 patent, and therefore satisfies this limitation.” J.A. 11497. With regard to literal in- fringement, the MoFo counsel opined:
[I]f “doped region” is defined as an area on the semiconductor where the electrical properties have been changed, it may be difficult to argue that the field oxide region is a doped region . . . . If, however, “doped region” could reasonably be defined more broadly as simply an area to which a dopant is applied, then we may be able to argue that the field oxide region is a “doped region.” De- termining the potential viability of this argument will require additional investigation, technical feedback from Kilopass and possibly input from an independent expert.
Although MoFo’s preliminary infringement chart opined favorably to Kilopass regarding the doctrine of equivalents, there is no evidence in the record that MoFo’s analysis was complete at that time, nor is there any evidence that Kilopass considered MoFo’s preliminary infringement chart in deciding to bring suit against Sidense. Kilopass retained MoFo to conduct an infringe- ment analysis but terminated that relationship only eight days later. (...)

In other words, it appears that Kilopass officials had already set their mind prior to learning of MoFo’s infringement analysis.
In 2008, a team of engineers led by Kilopass’s CTO sent an exemplary Sidense memory device to a third- party for reverse-engineering. After receiving the results, the CTO created a slide presentation for a meeting of Kilopass’s board noting that Kilopass had retained the law firm SNR Denton to investigate potential infringe- ment against Sidense. The CTO also stated that Denton “[a]ttorneys don’t have a conclusion yet as to the reading of 1st doped region and STI region” and that their “formal analysis [was] in progress.” J.A. 11296. However, in the CTO’s opinion, “[f]rom an engineer’s perspective,” Sidense infringed under the doctrine of equivalents. Id. (...)

On May 14, 2010, Kilopass filed suit against Sidense in the United States District Court for the Northern District of California, alleging both literal infringement and infringement under the doctrine of equivalents.
During the course of the proceedings, the district court discovered that Kilopass was making claim con-struction arguments to the United States Patent and Trademark Office Board of Patent Appeals and Interfer- ences (the “Board”) that were directly contrary to those being made to the court in order to distinguish over a key piece of prior art during a concurrent inter partes re- examination. Kilopass, 2012 WL 3545286, at *6. The district court admonished Kilopass for engaging in “gamesmanship.” J.A. 5990–91. (...)

After ruling that Kilopass had disavowed claim scope and striking evidence relating to Kilopass’s theory of equivalence, the district court granted Sidense summary judgment of noninfringement. Id. at *10. The district court reasoned that Kilopass ignored “numerous differ- ences” between the patent claims and Sidense’s accused products and that Peng, a named inventor on all three patents in suit, admitted before Kilopass filed suit that Kilopass had actually considered using Sidense’s design but chose not to because it resulted in a larger cell size. Id. at *9.

As to attorneys' fees:

While that appeal was pending, Sidense filed a motion in the district court for an award of attor- neys’ fees pursuant to 35 U.S.C. § 285. Relying on the standard set forth by a panel of this court in Brooks Furniture Manufacturing v. Dutailier, Inc., 393 F.3d 1378 (Fed. Cir. 2005), the district court denied the motion

The arguments

Sidense argues that the district court erred in not finding this case “exceptional” under Brooks Furniture because Kilopass’s claims were objectively baseless and brought in subjective bad faith. In the alternative, Sidense urges us to change the standard for assessing exceptionality under § 285 as set out in Brooks Furniture and cases that followed. Kilopass responds that, as the trial court found, it had a good faith basis for bringing and pursuing its infringement claims against Sidense’s prod- ucts. Kilopass also argues that we should not alter our exceptional case standard.

Tuesday, December 24, 2013

Nonfunctional descriptive material discussed in Ex parte Sen

from Ex parte Sen

Thus, Appellants’ arguments urging patentability are predicated on nonfunctional descriptive material (i.e., rules stored within a memory). See Answer 16; See 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); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) Nonfunctional descriptive material cannot render nonobvious an invention that would have otherwise been obvious. In re Ngai, 367 F.3d at 1339.


“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). Although “[s]uch statements often . . . appear in the claim’s preamble,” In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id.

As to attorney argument

Although Appellants argue that the spam filter of Goodman is not
equivalent to the claimed alert monitor and does not provide a reason why they are not equivalent, mere arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).

1969 "common sense" case cited in Ex parte Barrus

from Ex parte Barrus

“Having established that this knowledge was in the art, the [E]xaminer could then properly rely . . . on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’” In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969).


It is the Appellants’ burden to traverse the Examiner’s notice. “We did not mean to
imply . . . that a bald challenge, with nothing more, would be all that was needed. . . .We feel it to be perfectly consistent with the principles governing procedural due process to require that a challenge to judicial notice by the board contain adequate information or argument so that on its face it creates a reasonable doubt regarding the circumstances justifying the judicial notice.” In re Boon, 439 F.2d 724, 728 (CCPA 1971). That has not been done here by the bald assertion that “the Examiner has erred in taking Official Notice without any substantial evidence” (App. Br. 15).


In evaluating Bandini, it is proper to take into account not only the specific teachings therein but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).

Appellants lose in Ex parte BEHR

PTAB affirmed the examiner in Ex parte BEHR

In re Thorpe is cited

We are not persuaded of Examiner error on this basis because if the product in the product-by-process claim is the same as, or obvious from, a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).


This argument is not persuasive as Appellants have not pointed to, and we do not see, a claim limitation requiring the gear teeth to be cast with the crankshaft and drive gear wheel. Unclaimed limitations cannot impart patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

BRI arose

However, during examination, “the PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).


Nonobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., Inc. 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981)).


Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.”) (citation omitted).

The correspondence in the case was to Patent Central of Hollywood, Florida.

PTAB reverses examiner on obviousness in Ex parte Konefal

The appellants in Ex parte KONEFAL won a reversal of obviousness rejections.

For example

The Examiner has not established, by evidence or technical reasoning, a sufficient factual basis to reasonably support the conclusion that a skilled artisan would have had a reason to add an extra wall to the cap of Akers or reduce the size of the cap so that it is insertable in the container when Akers teaches that container caps with large, radial-overhanging skirts produce an awkward and aesthetically displeasing appearance of the assembled package and the cap dome 35 is sized to provide an inner wall of the same general diameter as the inner diameter of the container at the mouth for aesthetic reasons instead of using a prior art inner plug-in arrangement as in Figure 6. Akers, col. 4, l. 60 to col. 5, l. 3; figs. 5, 6. An object of Akers’ invention is to provide a package with a clean-cut, aesthetically pleasing appearance that requires a minimum amount of material to fabricate the container and cap. Akers, col. 1, ll. 30-47. We do not sustain the rejection of claims 16 and 21.

Sunday, December 22, 2013

CBS Sunday Morning on December 22, 2013

Charles Osgood introduced the stories for December 22, 2013. Three days to Christmas. Lee Cowan at the Mormon Tabernacle Choir. 360 voices. Martha Teichner on fake wine vintages. Vintage crime. Counterfeiting.
Michelle Miller on Jonah Hill. David Pogue on Techno-Claus.

Headlines. Warm temp in east. Cold in Midwest. Clare Davis died. Service about Pan Am attack in Scotland.
Homicide charge in Pakistan. Space walk. Charges over Short Hills Mall attack. Discounts at Target.

Weather. Warm in east. Storms in Midwest.

First up. Cover story by Martha Teichner. Begins with Bill Koch. 421 bottles of fake wine. Counterfeit wine.
Maureen Downey: wine detective. Somebody took a 1964 and made it a 1961. A faker was arrested.
Last Wednesday, Rudy was convicted. 1787 wine from Thomas Jefferson. Hardy Roudenstock. Sale in 1985 made CBS evening news. Bottle sold for $157,000. Koch spent $25 million on lawsuits against fraud steers.
Counterfeiting has discouraging wine sales. OpusOne is taking steps.
Koch has 40,000 bottles of wine but has stopped buying.

Second up. almanac. Dec. 22, 1882. Edward Johnson turned on electric Christmas tree lights. In 1923 Calvin Coolidge: 2500 lights on White House tree. Christmas Vacation. Now LED lights. Utah display.

Third up. David Pogue of yahoo. Belkin WeMo (see www.belkin.com) Trigger trap cable. Flips audio headphones.
Beats pill Bluetooth. Mini jambox. Chrome cast remote. Gtech aircam.

Fourth. Tuba. Michael Salzman. Bill Geist on sounds of Christmas. Distressed whale. 278 tuba Christmas concerts.
Euphonium. Wichita tuba concert. 39 tubists. Harvey Phillips, NYC, 1974.
376 tubists at Kennedy Center in DC. Philip Black. Taylor Tracy, student.

Fifth. 92% will celebrate Christmas. 79% will have tree.

27,632 dollars for gifts of 12 days of Christmas.

Sixth. Jonah Hill. Moneyball. Michelle Miller interviews.
The Wolf of Wall Street. Donnie Azoff. Refusing to take no for answer.
Father was accountant for Guns N Roses. Black and White Bar in NYC.
Dustin Hoffman gave him a break. Superbad. Under promise / over deliver. Island of misfit toys.
21 Jump Street. 22 Jump Street. I don't have a job and that's ok.

Seventh. Steve Hartman. Jacky
Turner. William Jessup University in Rocklin, CA.
I want to rent a mom and dad. For $8. People are hurting and broken.
Pair up needy with needed.

Eighth. Lee Cowan on Mormon Tabernacle Choir. 110 piece orchestra.
20 tv cameras. Nearly everyone is a volunteer. A choir that speaks to people.
166 years. Richard Elliott, organist. 1847. Ronald Jerritt. James Taylor.
Charles Osgood in 1996. 2002 winter Olympic Games. Retire after 20 years of service or 60 years of age.
Sept. 11, 2001. Share beautiful music.

Ninth. David Martin on feeding an army. Samuel Jones. Soul food day. Scott Duggan discussed color
Coding of food. Red code. Culinary Institute of America.
Master chef Brad Barnes. Stealth health. Quinoa ( Keenwah ). Buckwheat.
Turkey sausage. 13,000 overweight of 535,000 total. Eggs over turkey sausage.

Week ahead. Monday. Deadline for Obamacare. Aca. Tuesday. NORAD. Thurs. Boxing Day.

Friday zillow. Sat. Long term unemployment benefits run out.

Bill Flanagan. Christmas services. Third Crusade. Special room in purgatory for fur coat lady.
No room at the inn. Sharing your pew. Good seat at Christmas but lose your soul?

Next week. Hail and farewell on Sunday morning.

Osgood. Mel Torme song. Chestnuts roasting on a fire, done by Osgood.

Moment of nature. Java (pronounced Jayva ) New York not far from Buffalo.

Friday, December 20, 2013

Ex parte Mewherter (BPAI 2013) cited against appellant in Ex parte Bump

In Ex parte Bump the appellant won reversal of the examiner's rejections but got new
101 rejections under Mewherter [ Ex parte Mewherter, 107 USPQ2d 1857 (2013) ].

PTAB repeats “anticipation is the epitome of obviousness.”

from Ex parte O’SULLIVAN

Accordingly, Doss satisfies all of the limitations of claim 12. The Examiner’s conclusion that Doss renders obvious the subject matter of claim 12 thus is correct. It is well settled that “anticipation is the epitome of obviousness.” In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002)(quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).

As a separate matter:

The conclusion that the subject matter of dependent claims 4, 5, 11, 12, 14, and 15, supra, would have been obvious necessarily is also a conclusion that the subject matter of independent claims 1, 8, and 13, from which claims 4, 5, 11, 12, 14, and 15 depend, would have been obvious. See Ormco Corp. v. Align Tech., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (when a dependent claim is “found to have been obvious, the broader claims . . . must also have been obvious”).

**Of anticipation and obviousness, from PatentHawk on October 9, 2008: Anticipation Without Obviousness

While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) ("Succinctly put, the various unenforceability and invalidity defenses that may be raised by a defendant--inequitable conduct, the several forms of anticipation and loss of right under § 102, and obviousness under § 103--require different elements of proof.") Obviousness can be proven by combining existing prior art references, while anticipation requires all elements of a claim to be disclosed within a single reference. Compare MEHL/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) ("To anticipate, a single reference must teach every limitation of the claimed invention."), with Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1577 (Fed. Cir. 1991) ("If it is necessary to reach beyond the boundaries of a single reference to provide missing disclosure of the claimed invention, the proper ground is not § 102 anticipation, but § 103 obviousness."). Moreover, obviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. Compare King Instrument Corp. v. Otari Corp., 767 F.2d 853, 857 (Fed. Cir. 1985) ("In a § 103 obviousness analysis, Graham [v. John Deere Co., 383 U.S. 1 (1966)] requires that the trier assess certain underlying facts: (1) the scope and content of the prior art, (2) the level of ordinary skill in the art, (3) the differences between the claimed invention and the prior art, and (4) the so-called 'secondary considerations.'"), with Hakim v. Cannon Avent Group, PLC, 479 F.3d 1313, 1319 (Fed. Cir. 2007) ("'Anticipation' means that the claimed invention was previously known, and that all of the elements and limitations of the claim are described in a single prior art reference."). And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness. See Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005) ("[A] prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency."); Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002) ("[O]bviousness is not inherent anticipation."). Thus, "it does not follow that every technically anticipated invention would also have been obvious." In re Fracalossi, 681 F.2d 792, 796 (CCPA 1982) (Miller, J., concurring).2

2 The dissent claims categorically that "every anticipated claim is obvious." Post at 3. But this is not correct. Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention--there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.

[LBE has also written on this topic.]

PTAB affirms 35 USC 101 rejection in Ex parte McCANNE

There was a 101 rejection in Ex parte McCANNE

“Abstract software code is an idea without physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). A claim that recites no more than software, logic, or a data structure (i.e., an abstraction) does not fall within any statutory category. See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). A reasonable interpretation of claims 16 and 36 consistent with Appellants’ Specification is that the claims recite no more than software per se which does not fall within one of the four categories of subject matter that are eligible for patent protection under § 101: (1) processes; (2) machines; (3) manufactures; and (4) compositions of matter. 35 U.S.C. § 101. Rather, claims 16 and 36 are directed to an abstract idea. See Bilski v. Kappos, 130 S.Ct. 3218, 3230 (2010); see also Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada, 687 F.3d 1266, 1281 (Fed. Cir. 2012).

Accordingly, we find no error in the Examiner’s rejection of claims 16 and 36 as being direct to non-statutory subject matter.

PTAB reversed the examiner on a 102(e) rejection, but misstated the ultimate result:

Based on the analysis above, we conclude that the Examiner erred in
rejecting claims 16, 18-24, 26, and 28-39 for anticipation under 35 U.S.C. § 103(a), but did not err in rejecting claims 16 and 36 as being directed to non-statutory subject matter under 35 U.S.C. § 101.

PTAB draws attention to In re Nuijten in Ex parte Curtis

Note footnote 3 of Ex parte Curtis

Should there be further prosecution with respect to claim 25, the Examiner’s attention is directed to In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), Subject Matter Eligibility of Computer Readable Media, 1351 OFFICIAL GAZETTE U.S. PAT. & TRADEMARK OFF. 212 (Feb. 23, 2010), and Ex parte Mewherter, 107 USPQ2d 1857 (2013) (“the broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent.”)

Thursday, December 19, 2013


Note Algae to crude oil: Million-year natural process takes minutes in the lab but note also the unfavorable international search report for PCT/US2013/041214.

AstraZeneca loses to Hanmi on omeprazole case

The case AstraZeneca v. Hanmi presents a written description issue:

This appeal presents a single issue: whether the written description limits “alkaline salt” in the ’504 patent to certain specifically named salts. We hold that it does. The written description describes the invention clearly and narrowly as including only those salts, and Astra- Zeneca points to nothing in the intrinsic record that is sufficient to overcome that disclaimer.

Of background

AstraZeneca discovered that certain salts of an omeprazole enantiomer, as opposed to the racemate, have “improved pharmacokinetic and metabolic properties which will give an improved therapeutic profile such as a lower degree of interindividual variation.” ’504 patent, col. 1, lines 51-54. Its original application for the ’504 patent, filed in 1995 as a continuation-in-part of a 1994 application, described and claimed particular salts, de- fined by six identified cations: Na+, Mg2+, Li+, K+, Ca2+, or N+(R)4, where R is an alkyl with one to four carbons. Id. col. 1, line 1, to col. 6, line 35; J.A. 82-85. (The last formu- la denotes a class of ammonium cations, but for present purposes we may refer to it with the singular “cation”— making six cations in all.)
During prosecution, AstraZeneca conducted experi- ments that led it to conclude that one of the two enantio- mers gave particularly good results. J.A. 312-25. The preferred enantiomer is known as “(-)-omeprazole” or “(S) omeprazole,” sometimes written as “esomeprazole.”

The new claims, now at issue, are all limited to pharmaceutical compounds that contain certain esomeprazole salts as an active ingredient; but the independent claims no longer express- ly refer to the originally identified six cations, instead claiming an “alkaline salt” or “pharmaceutically accepta- ble salt.” See ’504 patent, col. 14, lines 5-49; ’192 patent, col. 7, line 17, to col. 8, line 54.

AstraZeneca argued that both terms have the same broad meaning: any “basic” salt of esomeprazole that is suitable for use in a pharmaceutical formulation. Hanmi argued that both terms are limited to the disclosed “Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salts of the single enantiomers of omeprazole.” ’504 patent, col. 2, lines 42-44.


And because the court held that the ’192 patent incorporates the ’504 patent’s disclosure, it construed “pharmaceutical- ly acceptable salt” the same way.

An argument based on claim differentiation failed:

Finally, AstraZeneca presses an argument based on claim differentiation, noting that each independent claim reciting an “alkaline salt” has a dependent claim that differs only by the addition of “wherein the alkaline salt is a Na+, Mg2+, Li+, K+, Ca2+ or N+(R)4 salt.” See ’504 patent, col. 14, lines 14-15; id., col. 14, lines 48-49. But “the doctrine of claim differentiation does not ... override clear statements of scope in the specification.” The Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1302 (Fed. Cir. 1999). Here, what otherwise might be an inference from differences in claim language cannot override the unmistakable limitation of “alkaline salt” set out in the written description.

See also
When the taste of salts is bitter - AstraZeneca loses appeal in Nexium case

Tuesday, December 17, 2013

CAFC affirms ITC in Cognex

Opinion by Judge Linn.

CAFC in Motorola Mobility: court does not have task of divining defense

Motorola lost its appeal of an ITC decision. Chief Judge Rader wrote the CAFC opinion.

Sunday, December 15, 2013

"60 Minutes" on December 15, 2013: NSA and Coptic Church

"60 Minutes" gains access to the National Security Agency.

John Miller reports on "Inside the NSA." NSA stands for "never say anything"? Keith Alexander leads the NSA, and is a four star Army general. NSA can only target a US citizen with probable cause and a court order. The headquarters of the NSA is in Ft. Meade, Maryland. We need to help the American people understand what we are doing and why we are doing it.
The NSA is collecting the phone records of 300 million Americans. Metadata. The number dialed, the day and date, and the frequency. "Chain him out." A number in the US can be a protected number. You don't hear the call; you don't get the name. That number is talking to someone who is very bad. Two 9/11 hijackers were in touch with terrorist in Yemen; they were calling from California. PRISM collection details as to email. FISA court. Rick Legend of the NSA. Snowden did scraping. Roadmap of what we know and what we don't know.

Edward Snowden's desk was in Hawaii. Snowden cheated on his test to get a job at the NSA. Snowden worked under a hood covering himself and his screen, while at home. Cyber Operations Center. BIOS plot. Firmware. The NSA has hired 3000 analysts to defend against such things. Black Chamber. kardexremstar. Chris Inglis, deputy director. NSA monitored Merkle's cell phone calls. Letter from 8 CEOs of internet service providers. See also 60MinutesOvertime.com.

The Copts elect a Pope in Cairo's Grand Cathedral. A blindfolded boy picks from among three names. Copts believe Jesus came to Cairo. Eastern desert next to the Red Sea. Saint Anthony. Red Monastery. 8.5 million Copts; only 10% of MidEastern population. Saint Simon. Public exorcism. Tatoo crosses on wrists.

Saturday, December 14, 2013

CAFC concludes a § 337(a)(1)(B)(i) violation may not be predicated on a theory of induced infringement in these circumstances

from Suprema v. ITC

We vacate the cease and desist order, vacate the limited exclusion order in part, and remand so that the order can be revised to bar only a subset of the scanners at issue. Resolution of this appeal turns in part on our conclusion that an exclusion order based on a violation of 19 U.S.C. § 1337(a)(1)(B)(i) may not be predicated on a theory of induced infringement under 35 U.S.C. § 271(b) where direct infringement does not occur until after importation of the articles the exclusion order would bar. The Com- mission’s authority under § 1337(a)(1)(B)(i) reaches “articles that . . . infringe a valid and enforceable United States patent” at the time of importation. Because there can be no induced infringement unless there has been an act of direct infringement, however, there are no “arti- cles . . . that infringe” at the time of importation when direct infringement has yet to occur. The Commission’s exclusion order must be revised, accordingly, to bar only those articles that infringe a claim or claims of an assert- ed patent at the time of importation.

CAFC on 28 USC 1920

From CBT Flint vs. Return Path :

CBT Flint Partners, LLC, sued Return Path, Inc., and Cisco IronPort Systems, LLC, in the Northern District of Georgia for patent infringement. After deciding the merits of the case against CBT, the district court ruled that CBT should have to pay the defendants their “costs,” which the clerk taxed at $49,824.60 for Return Path and $268,311.12 for Cisco. In the present appeal by CBT, we hold that the district court erred in its interpretation of the statutory provision governing the taxation of costs here, 28 U.S.C. § 1920(4). We reverse in part, vacate in part, and remand.

Metadata is mentioned in footnote 2:

The term “metadata” may encompass different types of data associated with a particular document. In a glossary that is relied on extensively in Race Tires Ameri- ca, Inc. v. Hoosier Racing Tire Corp., 674 F.3d 158 (3d Cir. 2012), the Sedona Conference defines metadata generally as follows:
Data typically stored electronically that describes characteristics of ESI [electronically stored infor- mation], found in different places in different forms. Can be supplied by applications, users or the file system. Metadata can describe how, when, and by whom ESI was collected, created, accessed, modified, and how it is formatted. Can be altered intentionally or inadvertently. Certain metadata can be extracted when native files are processed for litigation. Some metadata, such as file dates and sizes, can easily be seen by users; other metadata can be hidden or embedded and una- vailable to computer users who are not technically adept. Metadata is generally not reproduced in full form when a document is printed to paper or electronic image.

The Sedona Conference, The Sedona Conference Glossary: E-Discovery & Digital Information Management 34 (Sher- ry B. Harris et al. eds., 3rd ed. 2010). The Sedona Con- ference provides additional definitions for specific types of metadata, including Application Metadata, Document Metadata, Email Metadata, Embedded Metadata, File System Metadata, User-Added Metadata, and Vendor- Added Metadata.

Digital copies are mentioned in footnote 4

On the nature of a modern digital copier, see, e.g., Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1296 (Fed. Cir. 2002).

Of 1920(4)

The general approach outlined above, and most of the applications we have set out, are consistent with the analysis of other circuits that have interpreted section 1920(4) to allow for only limited recovery of the costs of electronic-document production. See, e.g., Country Vint- ner, 718 F.3d at 260 (allowing costs of converting electron- ic files to non-editable formats and burning the files onto discs); Race Tires, 674 F.3d at 171 (allowing costs of scanning hard-copy documents, converting file format to production format, and transferring of VHS tapes to DVD); Hecker v. Deere & Co., 556 F.3d 575, 591 (7th Cir. 2009) (allowing costs of converting computer data into a readable format); BDT Prods., Inc. v. Lexmark Int’l, Inc., 405 F.3d 415 (6th Cir. 2005) (allowing costs of electronic scanning and imaging).

Our application of section 1920(4) apparently differs from two circuits in one way—regarding the stage-one costs of imaging source media and extracting documents in a way that preserves metadata. In Race Tires, the Third Circuit put hard-drive imaging and metadata extraction in the same category as unrecoverable prepara- tory activities such as searching, reviewing for respon- siveness, and screening for privilege. Race Tires, 674 F.3d at 169-70; see also Country Vintner, 718 F.3d at 260 (adopting Fourth Circuit’s reasoning in Race Tires). As between “making copies” and “attorney and paralegal review,” Race Tires, 674 F.3d at 170, we think that the former better describes imaging a source drive and ex- tracting requested data where the extracted data are included in the discovery request. It seems to us that there is no good reason, as a default matter, to distinguish copying one part of an electronic document (i.e., the part that is visible when printed) from copying other parts (i.e., parts not immediately visible) when both parts are re- quested. More precisely, we think that this is the better application of the principle that governs in the Eleventh Circuit, suitably adjusted for the 2008 amendment of section 1920(4). We emphasize, however, that a default rule can be altered by agreement of the parties.

Friday, December 13, 2013

"If the claim extends to what is obvious, it is invalid under 103"

The CAFC found an unexpected results argument lacking in Galderma v. Tolmar.

The district court was reversed and obviousness found.

Analysis of apparatus claims

Rejections of apparatus claims are discussed in Ex parte Karpf. Schneider and Masham are cited.

See also Ex parte Bae.

Double patenting issue not reached in Ex parte Braun

Ex parte Jerg is cited in Ex parte Braun.

Obviousness affirmed in Ex parte Gulli

Chore-time and Okajima are cited in Ex parte Gulli.

Interference 105,955

PerkinElmer, represented by Fish & Richardson, lost an interference contest vs DH Industries.

Wednesday, December 11, 2013

PTAB enters 112 P 2 rejection in Ex parte Nielsen

PTAB found the claims too indefinite to review an obviousness rejection in Ex parte Nielsen.

The 1971 case In re Moore was cited. The 1962 case In re Steele was also cited.

Intel loses in Ex parte Shankara

Arguing dependent claims separately

Ex parte Hochmuth is an example of "why" one should argue dependent claims separately.

But In re Lovin, 652 F.3d 1349 (CAFC 2011) does get cited.

IBM loses on obviousness in Ex parte Bodin

At least the examiner withdrew a 112 P 2 rejection in Ex parte Bodin.

Obviousness of a novolac photoresist affirmed in Ex parte Park

Failure to provide evidence of "unexpected results" was fatal to appellant in Ex parte Park.

PTAB cited In re Geisler, 116 F.3d 1465, 1470 (CAFC 1997) and In re Scarborough, 500 F.2d 560 and In re Boesch.

As to placing burden on applicants to show some element in the prior art is NOT equivalent, PTAB cited In re Mulder, 716 F.2d 1542 (CAFC 1983).

PTAB cites Gorman, whacks GoDaddy in Ex parte Chadwick

In Ex parte Chadwick, PTAB used a number of references to find obviousness, cited In re Gorman, 933 F.2d 982, 987 (CAFC 1991) and affirmed that GoDaddy's claims were obvious.

Yes, KSR was also cited.

Sapphire does deal with Phillips 66 on "green crude"

From Green oil? Phillips 66 strikes a deal to develop it

Sapphire said Tuesday [10 Dec. 2013] it has signed a contract with Houston refining giant Phillips 66 to blend green crude with regular crude in products like gasoline, diesel and jet fuel. They’re not going to sell it, yet. First, they’re going to study it further in a Phillips 66 lab in Oklahoma.

The two companies hope to get the crude certified under Environmental Protection Agency fuel standards next year, which would enable the crude to be churned at traditional refineries, said Tim Zenk, vice president of corporate affairs for Sapphire, in an interview Tuesday.

Biofuels company Gevo trying to raise capital

From the Minneapolis Star Tribune on December 10, 2013

Gevo Inc., a biofuels company that has been burning through cash trying to produce a higher-value alcohol at a plant in Luverne, Minn., said Tuesday [Dec.10] that it will sell stock and senior notes to raise capital.

The Englewood, Colo.-based company said proceeds from the offering will be used to help ramp up production and to repay $5.1 million in long-term debt.

See earlier IPBiz post:
Overreaching in patent claims dooms Gevo in district court. No infringement because of estoppel and invalidity through lack of enablement.

Tuesday, December 10, 2013

Ariad cited in Ex. parte Gerber

Medtronic won on written description in Ex parte Gerber, with the Board citing Ariad. There was a mixed decision on anticipation, with Perricone cited.

Monday, December 09, 2013

Procter & Gamble loses case on zinc/air depolarized cell

In Ex parte Gibbons , Procter & Gamble lost on an In re Best issue:

See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” (footnote omitted)). Appellants have not directed us to evidence to refute the Examiner’s determination.

A claim related to battery technology:

A zinc/air depolarized cell comprising an anode casing and a cathode casing; an anode mixture comprising zinc particles and aqueous alkaline electrolyte within said anode casing; a cathode within said cathode casing; an electrolyte permeable separator between said cathode and anode; and
a glue comprising a crosslinked polyvinylalcohol, said glue located between the separator and a side of said cathode to adhesively bond the separator to the cathode.

Yes, Papesch was also cited:

Absent evidence to the contrary, polyvinylalcohol compositions crosslinked with boron-containing compounds would be expected to share the same properties. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“a compound and all of its properties are inseparable”). Appellants have not directed us to any objective evidence in this appeal that the separator coating of Malinski would not possess an adhesive property to adhesively bond the separator to the cathode as required by claim 1.

The decision was authored by Donna Praiss.

Loss under 35 USC 101 dooms appellant in Shaper

In Ex parte Shaper, all 20 claims were found not patentable under 35 USC 101, even though appellant prevailed on 112 P2 issues.

We note that claim 1 does not require that the computer perform the guaranteeing step. Therefore, we find that this recitation of a “computer” is, at best, a nominal recitation of a machine and provides no meaningful limits on the scope of the claim. See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972) and Parker v. Flook, 437 U.S. 584, 590 (1978).

Second, Appellant argues that transforming transaction data into predictive data satisfies the transformation test. However, “[t]he mere manipulation or reorganization of data . . . does not satisfy the transformation prong.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).

The appellants prevailed on the rejection under 112 P 2:

A claim is considered indefinite under 35 U.S.C. § 112, second paragraph, if it does not reasonably apprise those skilled in the art of its scope. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005). Only when a claim remains insolubly ambiguous, without a discernible meaning after all reasonable attempts at construction, must a court declare it indefinite. ExxonResearch & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).

As to obviousness:

At the crux of these arguments, is a dispute as to whether one of ordinary skill in the art would have found it obvious to use a third-party to guarantee against the risk of non-payment in card-not-present transactions, given the teachings of the prior art. (...)

Given this, we agree with the Examiner that one of ordinary skill in the art would have found it obvious to use a third-party guarantor of card-present transactions in a card-not-present transaction. We note that the Appellant’s own Specification describes that third-party guarantors for checks (another type of payment method) were previously known in the art. Spec. 1:19-23. We find that the Examiner has established a prima facie showing of obviousness.

To rebut the Examiner’s prima facie showing of obviousness, the Appellant submits evidence of secondary considerations of unexpected results or unpredictability.


To be given substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore we must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). Here, inventor Mr. Shaper’s Affidavit merely asserts, in pertinent part, that:

1) “the level in risk involved in accepting “card not presented” transactions for a merchant is at least an order of magnitude beyond that for card presented transactions;”
2) “it was not obvious that my invention would work for its intended purpose;” and
3) “it was necessary to test prototypes of my invention to prove to myself, and to commercial entities interested in implementing the invention, that the invention would work for its intended purpose.”
Evidence Appx. Attachment F, p. 2. Mr. Shaper’s Affidavit does not provide any details regarding the
tested prototypes or invention mentioned in the Affidavit in order to establish a nexus with the claimed invention.

As to teaching away

Finally, as to the Appellant’s numerous arguments that the prior art teaches away from the Examiner’s combination (for example see App. Br. 17),

A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (explaining that when the prior art teaches away from a combination, that combination is more likely to be nonobvious). We see nothing in Nair, Weller, or Gopinathan that discourages or criticizes the Examiner’s proposed modification of Nair to include card-not-present transactions.

Appellant prevails in Ex parte NOGUCHI

from Ex parte NOGUCHI

A number of elements and steps are discussed in the twenty three paragraphs cited by the Examiner. It is not apparent to us what particular elements of Yasuhiro the Examiner considers the above-quoted portion of claim 19 to read on. Without any identification of where each limitation of the rejected claims is shown in the prior art reference, we cannot provide any meaningful appellate review, nor can we conclude that Appellant had a fair opportunity to react to the thrust of the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (discussing 35 U.S.C. § 132). Thus, this rejection cannot be sustained.

Bottom line: The Examiner’s rejections are reversed.

Mixed decision in Ex parte May

from Ex parte May

As to teaching away

Appellants’ argument does not persuade us that the Examiner’s conclusion is unfounded. A reference is said to “teach away” from a claimed invention when it “suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). That is not the case here. If anything, these references merely illustrate the trade-offs that those of ordinary skill in this art recognize and routinely consider in designing prostheses.

But appellants do win on some "missing elements" rejections:

The Examiner concludes that it would have been obvious for one of ordinary skill in the art “to modify the . . . tibial tray with the porous coating of Incavo in view of Bernero with the inferiorly extending walls of Barnett in order to provide fixation without the use of a threaded screw as taught by Barnett” (id.).
Nevertheless, as Appellants correctly point out, Barnett’s elements 150 are not on the tibial tray at all (see Figures 5 and 6). Rather, they “are provided on a bearing component and are used to interlock with a tibial tray” (App. Br. 10-11).
As the Examiner has not addressed this deficiency in the references, we are constrained to reverse this rejection.

KiOR CFO John Karnes resigned on December 1, 2013

See the post KiOR's CFO Takes a Hike With No Advance Notice

KiOR was pushing something called Biomass Fluid Catalytic Cracking (BFCC) , stated to be related to fluid cat cracking.

KiOR announced a $100 million investment back in November 2013 [The funding from the Silicon Valley venture capital firm run by Vinod Khosla (U$85 million) and Bill Gates fund (U$15 million) ]

See also Cellulosic was the biofuel of the future. What happened?

CBS Sunday Morning on Dec. 8, 2013

CBS Sunday Morning on Dec. 8, 2013 included How Nelson Mandela became the man we knew

Almanac: Diego Rivera born Dec. 8, 1886.


Ethan Hawke

Moment of Nature: Elephants in Kruger National Park.

CD California affirmed by CAFC in Futurewei v. Acacia

From Futurewei v. Acacia

The district court dismissed count 11 for failure to state a claim. Noting Huawei’s “conclusory allegation” that the parties to the license agreement intended Huawei to benefit from it, the court explained that the agreement, which was attached to the complaint, must prevail over a general allegation where they conflict. Id. at 10 (relying on Sprewell v. Golden State Warriors, 266 F.3d 979, 988 (9th Cir. 2001), and Northern Ind. Gun & Outdoor Shows, Inc. v. City of South Bend, 163 F.3d 449, 454 (7th Cir. 1999)). Here, the court concluded, section 11.3 of the license agreement “clearly expresses the contracting parties’ intention that the license not create any third-party beneficiaries.” Id. at 10.
The district court then dismissed counts 12-15 and, for separate reasons, count 16. As to count 16, which seeks a declaration that SmartPhone and Acacia Research are alter egos, the court reasoned that, under Federal Rule of Civil Procedure 13(a), this count is a compulsory counterclaim to the claims in the Texas case and therefore must be brought in that case. Id. at 13. The court noted that the parties contested whether a cause of action even exists to seek a freestanding declaratory judgment of alter-ego status. Id.
Having dismissed all of Huawei’s claims, the district court denied Huawei’s request for discovery to help estab- lish jurisdiction, explaining that discovery “would not affect the Court’s reasoning regarding the first-to-file rule or Plaintiffs’ failure to state a claim, and would thus be futile.” Id. at 13. And the court denied Huawei’s request for leave to file a third amended complaint, explaining Huawei “‘could not possibly cure the deficien[cies]’” of the dismissed complaint.

The outcome

It is not disputed that the district court properly invoked the first-to-file rule to dismiss counts 1-10, which request declaratory judgments of non-infringement and invalidity of the five patents already in litigation in Texas. The analysis that supported that result applies as well to count 11. We assume, for present purposes, that count 11 requests some relief, namely, a declaratory judgment that Huawei is a third-party beneficiary of the license agreement entitled to enforce its provisions. We have no doubt that it would be both just and efficient to have Huawei’s third-party-beneficiary status litigated, if necessary, in Texas. See Genentech, 998 F.2d at 938. (...)

Finding an exception to the first-to-file rule here is unsupported by any substantial countervailing considera- tions. Huawei has not shown that judicial or litigant interests in economy favor allowing count 11 to proceed in this second-filed declaratory-judgment action. Indeed, Huawei is a Texas corporation and has its principal place of business in Texas. At this point, moreover, with the dismissal of counts 1-10 no longer disputed, the non- infringement and invalidity issues will be litigated in the Texas case, unless that case is transferred. Separating the third-party-beneficiary issue cannot serve the objec- tive of efficiency. (...)

Although we rely on the first-to-file rule in affirming dismissal of count 16, our conclusion is indirectly support- ed by the district court’s conclusion that count 16 is a compulsory counterclaim under Federal Rule of Civil Procedure 13. The Ninth Circuit applies a “the logical relationship test” to determine whether or not a claim is compulsory. In re Pegasus Gold Corp., 394 F.3d 1189, 1195-96 (9th Cir. 2005). “This flexible approach . . . attempts to analyze whether the essential facts of the various claims are so logically connected that considera- tions of judicial economy and fairness dictate that all the issues be resolved in one lawsuit.” Pochiro v. Prudential Ins. Co. of Am., 827 F.2d 1246, 1249 (9th Cir. 1987) (in- ternal quotation marks omitted).

A logical relationship exists when the counter- claim arises from the same aggregate set of opera- tive facts as the initial claim, in that the same operative facts serve as the basis of both claims or the aggregate core of facts upon which the claim rests activates additional legal rights otherwise dormant in the defendant.

Pegasus Gold, 394 F.3d at 1196. Here, the logical rela- tionship is strong: the license agreement gives rise to Huawei’s alter-ego claim, to SmartPhone’s affirmative right to enforce the patents in the Texas case, and to Huawei’s defense in that case that it may practice the patents as an Access customer—a defense that undergirds Huawei’s standing to seek a declaratory judgment on the alter-ego issue in the first place. Rule 13 analysis thus bolsters the first-to-file conclusion here.
Because counts 11 and 16 are properly dismissed un- der the first-to-file rule, we need not address Huawei’s motion to amend its complaint and its request for addi- tional discovery to establish jurisdiction.

As a footnote, as to the citation to the Sprewell case, recall the facts of that case:

In 1997, Latrell Sprewell, a player on the Golden State basketball team, attacked his head coach P.J. Carlesimo when competitive tensions arose by method of choking him. Sprewell verbally threatened to kill his coach twice before leaving practice, and once again later after accosting him a second time with a punch that grazed Carlesimo. Sprewell was suspended by the Warriors, and then is terminated two days later. He is then suspended by the NBA for a full year. Sprewell then attempts to vacate the arbitration under multiple claims.

from: http://aladidy.wordpress.com/2012/08/29/title-sprewell-v-golden-state-warriors-266-f-3d-979-u-s-court-of-appeals-ninth-circ-2001/

Monday, December 02, 2013

Mixed decision in Ex parte Kendrick

There is a mixed decision in Ex parte Kendrick with appellants winning on 112 P 2 and on some obviousness rejections. Appellants lost on some obviousness rejections.

Appellant loses on obviousness in Ex parte Kenoyer

Within Ex parte Kenoyer , the PTAB sustains an obviousness rejection, citing to Leapfrog, 485 F.3d at 1162 as to not "uniquely challenging or difficult for one of ordinary skill in the art."

The appellant is criticized for attacking the references singly, with a citation to Merck, 800 F.2d at 1097.

The examiner's rejection is affirmed.

Sunday, December 01, 2013

Bezos: We like to pioneer, we like to explore, we like to go down dark alleys

Bezos on "60 Minutes" on December 1, 2013:

I would define Amazon by our big ideas, which are customer centricity, putting the customer at the center of everything we do, invention. We like to pioneer, we like to explore, we like to go down dark alleys and see what’s on the other side.

Of Amazon and invention:

There has never been a company quite like Amazon. Conceived as an online book seller, Amazon has reinvented itself time and again, changing the way the world shops, reads and computes. Amazon has 225 million customers around the world. Its goal is to sell everything to everyone. The brainchild of Jeff Bezos, Amazon prides itself on disrupting the traditional way of doing things. A few weeks ago the company announced it was launching Sunday delivery.

Jeff Bezos: You gotta earn your keep in this world. When you invent something new, if customers come to the party, it’s disruptive to the old way.

Of the cloud

It’s called Amazon Web Services, AWS, and may soon become Amazon’s biggest business. To keep track of its massive online orders, Amazon built a large and sophisticated computing infrastructure. Amazon figured out it could also expand that infrastructure to store data and run websites for hundreds of thousands of outside companies and government agencies on what is known as the cloud.

Charlie Rose: How much of the Internet, do you run?
Jeff Bezos: It’s a good question. It’s a lot though. And people…


Jeff Bezos: Because doing so would erode trust. And that erosion of trust would cost us much more in the long term.

That long view, Bezos believes, gives Amazon a distinct edge.

Jeff Bezos: The long term approach is rare enough that it means you’re not competing against very many companies. 'Cause most companies wanna see a return on investment in, you know, one, two, three years.

link: http://www.cbsnews.com/news/amazons-jeff-bezos-looks-to-the-future/

CBS Sunday Morning on December 1, 2013

Charles Osgood introduced the stories on CBS Sunday Morning for December 1, 2013. Erin Moriarity on making ends meet. Second, Palmer on super star chefs in London.
Lee Cowan interviews Bruce Dern. Rita Braver on OJ Brigance, Ravens. Richard Haas.

Headlines. Obamacare. Healthcare.gov. Spending on Black Friday down 13%. Commuter passenger train derailed in Bronx. Actor Paul Walker died. Auburn beat Alabama. Weather. Storm in Pacific Northwest.

Making ends meet. Nancy Salgado in fast food industry. Makes 8.25 per hour. No benefits. Protest in Cicago over low pay. Robert Reich on new low wage workers. Inequality for All documentary. Only 7% of workers are now unionized. Fight for 15. National Restaurant Association.
Sample Monthly Budget. Sarah Stanich. California requires minimum of $10 per hour. David Tovar of Walmart. Tipping point on productivity if worker stays in entry level job too long. Need to be safe and living well.

Almanac. Dec 1, 1913. Birthday of Mary Martin.
My heart belongs to daddy. South Pacific. 1954 in Peter Pan.
Cyril Richard played Captain Hook, also born on Dec 1.
I will always be Peter Pan.

(Walmart ad appears after Almanac and discusses jobs at Walmart.)

A taste of Jerusalem. 5th night of Hannakah.

Just the Recipes. Elizabeth Palmer in London. Our whole kind of ethos. Ottolenghi.
Palestinian and Jew working together in London.

Rita Braver on 44 year old OJ Brigance. ALS. Played for Rice University. Joined Ravens in 2000.
Retired in 2003. Ravens called him back to be spokesman. In 2007, noticed weakness in arm. Doctors diagnosed ALS.
Ray Lewis: because of your mindset you can live through anything. John Harbaugh: the way he attacks every day. Pro football players more likely to die from Als than general population. Strength of a Champion. Computer issues in writing a book. Ray Rice clip. You can never count him out. Obama mentioning Brigance. Harbaugh: Sunday afternoon is a battle.

Stores open on Thanksgiving Day in 2013. Norman Marcus retractable tv for 1.5 million.
Harrods whiskys 1.5 million. Submarine for over 3 million.

Serena Alschul on the work of Richard Haas. 1211 North LaSalle.
Paul Goldberger has followed Richard's work. First job in 1975 in Soho.
A mural can change a neighborhood. Trompe l'oile.
I didn't invent something; I reinvented something.
Now age 77. Now working in Homewood, Illinois. Making enough work that some of it will stick around.

Taking pictures of food. Faith Salie. Duck tacos. Foodstagramming.
Food photography. Your pork belly is a food hog. Life like food is meant to be savor end, not preserved.

Lee Cowan Sunday Profile on Bruce Dern. Woodrow T. Grant. Norfolk, Nebraska. Elia Kazan to Bruce Dern. Rarely was Dern the star. Black Sunday. Big Love. Guys that live just outside where the buses run. Archibald MacLeish.
The king of Marvin Gardens. Coming Home. I got an at-bat in a crucial situation.

Ohio state 42-41 over Michigan. Grant reed. Ohio State football. Cat is named Buckeye.
Grant named his cancer "Michigan". Make it a disease you can fight.

Announcement of upcoming events including American Kennal Club in Orlando.

Dec 2: same sex in Hawaii. Dec 3 us Christmas tree lighting. Dec 7 72nd anniversary.

Joshua Seftel. IPad. FeastTime software. Joshua filmed his parents.
My mom on movies.

Next week. Ethan Hawke.

Moment of nature. Redwoods in and around Los Gatos, California.