Wednesday, August 17, 2022

How easy is it to detect errors in scientific papers?

In a recent CAFC case, a panel voted 2-1 that an error in a graph would be apparent to ONE OF ORDINARY SKILL.

See for example

Pay attention to the dissent of Judge Newman.

SEPARATELY, the editors of PNAS accepted a paper (now retracted) with errors that were NOT apparent to one of EXTRAORDINARY SKILL.

Go figure.

Friday, August 12, 2022

The McDonald case at the CAFC

This appeal arises from the decision of the Patent Trial and Appeal Board rejecting claims 1–7, 10, 12–16, and 18–38 (“the reissue claims”) of the application for reissue of U.S. Patent No. 8,572,111 (“the ’111 patent”). The Board rejected the reissue claims as based on a defective reissue declaration and further rejected claims 1–7, 10, 12–14, and 29–38 as impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution. Ex parte McDonald, No. 2019-002063, 2020 WL 2990970 (P.T.A.B. May 29, 2020). The Board subsequently denied a request for rehearing of its May 29, 2020, decision. J.A. 23–37. Mr. McDonald’s appeal to this court followed. For the reasons below, we affirm. In 2008, a patent application was filed for methods and systems related to the display of primary and secondary search results in response to search queries. J.A. 1113, 1148–53. Mr. John Bradley McDonald was named as the inventor and Masterfile Corporation was named as the assignee.1 J.A. 1113. The application’s original claims 1–9 and 19–21 did not recite a “processor” for conducting the claimed searches. J.A. 1148–53. The examiner rejected those claims as being directed to patent-ineligible subject matter under 35 U.S.C. § 101. J.A. 1208 (...) Mr. McDonald contends that the Board erred in rejecting reissue claims 1–7, 10, 12–14, and 29–38 under 35 U.S.C. § 251 as being an improper recapture of surrendered subject matter. Appellant’s Br. 15. He also contends that the Board erred by rejecting all the reissue claims as being based on an Inventor Reissue Declaration that was defective for failing to identify an error that is correctable through reissue. Id. We consider each of Mr. McDonald’s arguments in turn. Whether the recapture rule applies to a particular set of facts—that is, whether the claims of a reissue patent violate 35 U.S.C. § 251—is a question of law, which we review de novo. In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011). The underlying factual findings are reviewed for substantial evidence. Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1370 (Fed. Cir. 2001). (...) Here, the facts are simple. By first adding the “processor” limitations during prosecution of the original claims, then removing the exact terms “using a processor executing” and “using the processor executing,” Mr. McDonald seeks to reclaim a broader claim scope related to the surrendered subject matter that has now crept back into the reissue claim. Cf. J.A. 73–89, 1345–53. Notably, the reissue statute’s error requirement contemplates “inadvertence or mistake.” In re Youman, 679 F.3d at 1343. However, Mr. McDonald made no mistake. “Deliberate withdrawal or amendment of claims to obtain a patent cannot be said to involve the inadvertence or mistake contemplated by 35 U.S.C. § 251 . . . .” MBO Lab’ys, 602 F.3d at 1313 (cleaned up). Mr. McDonald deliberately amended the claim scope during prosecution of the parent application, explaining that the new “processor” limitations overcame the § 101 rejection by tying “the methods recited in claims 1 and 19 to a particular machine (i.e.[,] the processor),” which “impose[d] meaningful limits in the scope of claims 1 and 19.” J.A. 1353. He cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.

The Kamstrup case at the CAFC

Kamstrup A/S appeals a final written decision of the Patent Trial and Appeal Board. The Board found claims 1–15 of Kamstrup’s U.S. Patent No. 8,806,957 unpatentable as obvious or anticipated. On appeal, Kamstrup challenges the Board’s claim constructions. In addition, Kamstrup challenges the Board’s anticipation and obviousness determinations largely on the basis that the Board erred in rejecting Kamstrup’s claim construction arguments. We affirm. Kamstrup owns U.S. Patent No. 8,806,957 (the “’957 patent”). The ’957 patent describes ultrasonic flow meters and housings. ’957 patent abstract. The specification discloses that the meters are used for “calculating a consumed quantity of water, heat, cooling, gas or the like.” Id. at 1:27–30. Ultrasonic flow meters include “housing” to protect electronic components, such as a display or battery. Id. at 1:32–38. The ’957 patent is directed to “an ultrasonic flow meter housing in the form of a monolithic polymer structure being cast in one piece.” Id. at 1:58–60. It explains that “the present invention can be fabricated with a reduced number of steps compared to existing meters, since only a single step is used to form the monolithic polymer structure.” Id. at 2:6–9. (...) We review the Board’s legal conclusions de novo and its factual findings for substantial evidence. See ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000) (citations omitted). Claim construction is ultimately a question of law that may be based on underlying factual findings. Teva Pharms. U.S.A., Inc. v. Sandoz, Inc., 574 U.S. 318, 332–33 (2015). Thus, we review the Board’s claim constructions de novo and review any underlying factual determinations for substantial evidence. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278 (Fed. Cir. 2017). (...) Kamstrup argues that the Board erred in construing “cast in one piece” as a product-by-process claim element. A product-by-process claim is one in which a product is claimed, at least in part, by the “process by which it is made.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Product-by-process claims “enable an applicant to claim an otherwise patentable product that resists definition by other than the process by which it is made.” Id. “In determining validity of a product-by-process claim, the focus is on the product and not the process of making it. That is because of the . . . long-standing rule that an old product is not patentable even if it is made by a new process.” Greenliant Sys., 692 F.3d at 1268 (citations omitted). “As we recognized in Amgen, if the process by which a product is made imparts ‘structural and functional differences’ distinguishing the claimed product from the prior art, then those differences ‘are relevant as evidence of no anticipation’ although they ‘are not explicitly part of the claim.’” Id. (quoting Amgen Inc. v. F. Hoffman-La Roche Ltd, 580 F.3d 1340, 1365–67 (Fed. Cir. 2009)). The specification, the prosecution history, and any extrinsic evidence may enlighten whether structural and functional differences exist. Amgen, 580 F.3d at 1365–67; Purdue Pharma L.P. v. Epic Pharma, LLC, 811 F.3d 1345, 1353–54 (Fed. Cir. 2016). (...) First, even if true, Kamstrup has not identified functional and structural differences between a structure “cast in one piece” and a structure manufactured using another method. Rather, the argument is merely that the claim element describes a manufacturing method with some inherent restrictions. Further, Kamstrup has not identified disclosure in the specification or prosecution history or extrinsic evidence evidencing structural and functional differences. Second, the alleged structural and functional difference that Kamstrup identifies is detached from the claims. The claims state that the structure should be “cast in one piece,” not cast in one mold. ’957 patent at 6:40–42 (emphasis added). The Board correctly found that the written description “focuses on reducing the number of steps required to fabricate the flow meter housing, not on casting in a single mold.” Axioma, 2021 WL 1235790, at *7 (citing ’957 patent at 1:55–57, 2:6–9). While certain figures of the written description, namely Figures 5A and 5B, depict a single mold, the Board correctly found that those embodiments are narrower than the claims—which do not require use of a single mold—and correctly declined to import narrower limitations from the specification to the claims. Id. Substantial evidence also supports the Board’s finding that the extrinsic evidence does not exclusively show that “cast in one piece” means “cast in one mold.” Id. at *8. Consequently, we hold that because Kamstrup fails to show that the process claimed imparts “structural and functional differences” distinguished from the prior art, it is not entitled patentable weight. Greenliant Sys., 692 F.3d at 1268.

Looking at UofC chemistry prof Lother Meyer in 2022; the Dembe story

While I was on a "zoon like" meeting comprised of former residents of Shorey House at the University of Chicago, the topic of UC chemistry prof Lothar Meyer arose. He had been an advisor to an undergrad member of our group.

Not fully appreciated was a "Lother Meyer" story that arose long after his death. The Chicago Maroon covered this story in 2019 with a headline

Grey City Seven Times Over: Life Along The Way to a Ph.D.
Not everyone who comes to the University of Chicago for a degree leaves with one.


One should read the full article, but the gist is that a (female) grad student finally got a Ph.D. more than 50 years after the work in the 1960s.

Here is a portion

Chemistry professor Philippe Guyot-Sionnest was one of the people tasked with this recommendation, along with Greg Engel, following Dembe’s most recent outreach to the University in 2018. He said that translating these notebooks of a doctoral candidate in 1971 into a recommendation for 2019 was a challenge, and he was initially skeptical that Dembe could get a Ph.D. 50 years after the fact. It wasn’t the lack of automation, he said—computers don’t generate knowledge—but Dembe had “no thesis, not even a manuscript of a thesis,” and besides, obtaining a doctorate in three years is virtually unheard of. “I expected there’s no way. I don’t believe anybody would give a Ph.D. to a person in two and a half years,” he said. But after finding that Lothar Meyer, Dembe’s adviser before his death, regularly graduated students in three years and looking at the work he and Dembe had pursued, Guyot-Sionnest’s skepticism began to fade. “It was an experiment that could be very, very cool. She was working on cooling liquid helium-3 to the lowest possible temperatures not knowing what they could expect to find but looking for the lowest temperature and some properties of magnetization. So they developed the technology and you could see in the notebook, the progression of the experiment, and it was clear they were making progress,” he said. A year after Dembe dropped out of UChicago, a Cornell team working on the same problem got what Guyot-Sionnest described as an “exciting result,” for which they later received the Nobel. Dembe wasn’t far off from the same result when she stopped her research.

Separately, as a "carbon" person, I note that Lothar Meyer also worked in carbon.


Nancy Colloquium on the Mechanism of Carbon Combustion, September 27-30, 1949


Saturday, August 06, 2022

Bradford loses to Smith at CAFC

From Smith vs. Bradford:

AOS Holding Company, which is wholly owned and controlled by A. O. Smith Corporation, owns U.S. Patent No. 8,375,897, titled “Gas Water Heater.” The two compa- nies (collectively, A.O. Smith), the only persons permitted to practice or profit from the invention embodied in the pa- tent, brought the present action against Bradford White Corporation in the U.S. District Court for the District of Delaware, alleging infringement of the patent’s claim 1 (the patent’s sole claim), which identifies a “method of in- terfacing a natural convection vent construction with a wa- ter heater.” ’897 patent, col. 6, lines 9–10. The district court held that Bradford White infringed claim 1 and that the claim was not invalid. Bradford White appeals both determinations. We affirm.

In its harmful-error argument, however, Bradford White contends that certain language in the district court’s findings and conclusions on the permitting limitation sug- gests a view—which Bradford White asserts is legal error, given the ’897 specification—that the “velocity or flow” of combustion products (in contrast to pressure) is simply im- material under the ’897 patent. Bradford White’s Br. at 36–38.We need not and do not decide whether Bradford White has adequately raised a legal argument along these lines, or whether it is correct in such an argument, for con- sideration independently of its challenge to the Category I venting claim construction, which we have rejected. Even if we so assume, we see no basis to set aside the court’s determination that the permitting limitation was met here. We read the district court’s opinion as relying inde- pendently on an evidentiary finding that reasonably as- signed little if any probative weight to the evidence regarding velocity presented in this case and instead found that the evidence based on pressure, together with the meaning of the Category I certification of the accused prod- ucts, proves satisfaction of the permitting limitation.

An inventor under US patent law must be a natural person

From Thaler v. Vidal:

This case presents the question of who, or what, can be an inventor. Specifically, we are asked to decide if an arti- ficial intelligence (AI) software system can be listed as the inventor on a patent application. At first, it might seem that resolving this issue would involve an abstract inquiry into the nature of invention or the rights, if any, of AI sys- tems. In fact, however, we do not need to ponder these met- aphysical matters. Instead, our task begins – and ends – with consideration of the applicable definition in the rele- vant statute.

The United States Patent and Trademark Office (PTO) undertook the same analysis and concluded that the Patent Act defines “inventor” as limited to natural persons; that is, human beings. Accordingly, the PTO denied Stephen Thaler’s patent applications, which failed to list any hu- man as an inventor. Thaler challenged that conclusion in the U.S. District Court for the Eastern District of Virginia, which agreed with the PTO and granted it summary judg- ment. We, too, conclude that the Patent Act requires an “inventor” to be a natural person and, therefore, affirm.

The CAFC did not reach Chevron deference.

The sole issue on appeal is whether an AI software sys- tem can be an “inventor” under the Patent Act. In resolv- ing disputes of statutory interpretation, we “begin[] with the statutory text, and end[] there as well if the text is un- ambiguous.” BedRoc Ltd. v. United States, 541 U.S. 176, 183 (2004). Here, there is no ambiguity: the Patent Act requires that inventors must be natural persons; that is, human beings.