Prouse's appeal focused on overcoming a 102(b) rejection of certain pending claims. Claim 1 recited:
1. A system in an electronic device for emitting light from a light-emitting diode (LED) at a variable brightness, comprising:
a waveform generator for generating an LED signal waveform comprised of a plurality of LED signal values; and
a processing unit operable to determine a scaling value for one or more LED signal values in the plurality of LED signal values, wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness.
The BPAI stated that "speculation and conjecture must be utilized by us and by the artisan inasmuch as independent claim 1 on appeal does not adequately reflect what the disclosed invention is." In analyzing the claims, the Board compared the "processing unit operable to determine" against the method claim that positively recited determining the scaling values. They stated:
In direct contrast to the positive statement of determining in independent claim 9, a processing unit is merely recited in independent claim 1 to be “operable to determine a scaling value.” Thus, it is merely capable of performing the recited or desired function of determining a scaling value. In other words, there is no present tense, positively recited determination of a scaling value in claim 1. Thus, since the scaling values are not actually determined, they cannot be used to scale the LED values as recited in the claim. This situation clearly renders the entire subject matter of independent claim 1 and its respective dependent claims 5-8 indefinite within the second paragraph of 35 U.S.C. § 112.
In view of the above, the Board reversed the Examiner's anticipation rejection of claims 1 and 9 and those claims depending from the independent claims. However, the Board issued a new ground of rejection with respect to claim 1 under the second paragraph of 35 U.S.C. § 112.
I don't think the use of "operable to" was the problem here. Rather, it was "operable to" in combination with the clause "wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness."
The question is, how can the scaling value do any scaling when its existence isn't certain?
I would try to fix this by saying something like "wherein the processor is further operable to scale the one or more LED signal values based upon a percentage of a particular LED brightness using a determined scaling value."
From http://bpaiwatchdog.blogspot.com/2009/04/processor-operable-to-peform-function.html#comments
Wednesday, April 29, 2009
Friday, April 17, 2009
103 patent drafting
• Unexpected results more important
– Stress this in specification
– Describe how invention surpasses ordinary innovation
/ common sense
• Avoid discussing “the problem” in the
background
Emphasize in specification the new functionality
that is not achieved by prior art
• Capture new functionality in claims
– Avoid list of elements that may be considered old
individually
• Submit objective evidence of nonobviousness in
a declaration under 37 CFR §1.132 by an
inventor or other witness
– Show evidence of unexpected results, commercial
success, long-felt need, failure of others, copying by
others, licensing, and skepticism of experts.
– Stress this in specification
– Describe how invention surpasses ordinary innovation
/ common sense
• Avoid discussing “the problem” in the
background
Emphasize in specification the new functionality
that is not achieved by prior art
• Capture new functionality in claims
– Avoid list of elements that may be considered old
individually
• Submit objective evidence of nonobviousness in
a declaration under 37 CFR §1.132 by an
inventor or other witness
– Show evidence of unexpected results, commercial
success, long-felt need, failure of others, copying by
others, licensing, and skepticism of experts.
103 strategies
Effective Response Tactics
• (1) Combining prior art elements according
to known methods to yield predictable
results
– One or more element not in prior art
– Combination not according to known methods
– Results not predictable
(2) Simple substitution of one known
element for another to obtain predictable
results
– One or more element not in prior art
– Substitution not “simple”
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of one or both references
– Results not predictable
(3) Use of known technique to improve
similar devices
– Technique is not known
– Devices not similar
– Technique not applicable to this device
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of reference
(6) Known work in one field of endeavor may
prompt variations of it for use in either the same
field or a different one based on design
incentives or other market forces if the variations
would have been predictable to one of ordinary
skill in the art
– Work not actually known
– No recognition of problem to prompt variation
– Application of known work to different field
contravenes common sense in context of proposed
combination / modification of prior art
– Variations not predictable
(7) Some teaching, suggestion, or motivation in
the prior art that would have led one of ordinary
skill to modify the prior art reference or to
combine prior art reference teachings to arrive at
the claimed invention (similar to old test)
– Modification / combination contravenes common
sense
– Modification / combination destroys intended purpose
of prior art
– No TSM shown in prior art, and examiner provides no
convincing line of reasoning to support
(4) Applying a known technique to a known
device ready for improvement to yield
predictable result
– Device is not known
• At least one element missing
– Technique is not known, or
– Application of known technique to this device
contravenes common sense
– Result not predictable
• (5) “Obvious to try”—choosing from a finite
number of identified, predictable solutions,
with a reasonable expectation of success
– Number of solutions not finite
– Solution not identified
– No reasonable expectation of success
• Solution contravenes common sense in the context
of the proposed combination/modification of prior
art
Prima facie obviousness still requires showing
apparent reason for combination
– Contest this if not shown by examiner
– Do not accept conclusory statements of obviousness
• Dispute all un-supported assertions by examiner
– Legal conclusions
• Existence of TSM
• Common sense
• Level of skill in the art
– Factual conclusions
• Finite number of known solutions
• Known work in field
• Predictability of results
• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action
• (1) Combining prior art elements according
to known methods to yield predictable
results
– One or more element not in prior art
– Combination not according to known methods
– Results not predictable
(2) Simple substitution of one known
element for another to obtain predictable
results
– One or more element not in prior art
– Substitution not “simple”
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of one or both references
– Results not predictable
(3) Use of known technique to improve
similar devices
– Technique is not known
– Devices not similar
– Technique not applicable to this device
• Requires inventive activity; modification of other
elements
• Contrary to common sense
• Destroys intended purpose of reference
(6) Known work in one field of endeavor may
prompt variations of it for use in either the same
field or a different one based on design
incentives or other market forces if the variations
would have been predictable to one of ordinary
skill in the art
– Work not actually known
– No recognition of problem to prompt variation
– Application of known work to different field
contravenes common sense in context of proposed
combination / modification of prior art
– Variations not predictable
(7) Some teaching, suggestion, or motivation in
the prior art that would have led one of ordinary
skill to modify the prior art reference or to
combine prior art reference teachings to arrive at
the claimed invention (similar to old test)
– Modification / combination contravenes common
sense
– Modification / combination destroys intended purpose
of prior art
– No TSM shown in prior art, and examiner provides no
convincing line of reasoning to support
(4) Applying a known technique to a known
device ready for improvement to yield
predictable result
– Device is not known
• At least one element missing
– Technique is not known, or
– Application of known technique to this device
contravenes common sense
– Result not predictable
• (5) “Obvious to try”—choosing from a finite
number of identified, predictable solutions,
with a reasonable expectation of success
– Number of solutions not finite
– Solution not identified
– No reasonable expectation of success
• Solution contravenes common sense in the context
of the proposed combination/modification of prior
art
Prima facie obviousness still requires showing
apparent reason for combination
– Contest this if not shown by examiner
– Do not accept conclusory statements of obviousness
• Dispute all un-supported assertions by examiner
– Legal conclusions
• Existence of TSM
• Common sense
• Level of skill in the art
– Factual conclusions
• Finite number of known solutions
• Known work in field
• Predictability of results
• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action
Thursday, April 9, 2009
Supreme court cases
http://www.kashalaw.com/inrebilskiflowchart2
Important Cases
Supreme Court
KSR
Rationales for arriving at a conclusion ofobviousness suggested by the SupremeCourt’s decision in KSR include:
(A)
Combining prior art elements accordingto known methods to yield predictableresults;
(B)
Simple substitution of one known elementfor another to obtain predictable results;
(C)
Use of known technique to improve
similar devices in the same way
Gottschalk v. Benson - On November 20, 1972 the Supreme Court found a method for converting numerical information from binary-coded decimal numbers into pure binary numbers to be unpatentable even though this method recited a reentrant shift register.
Parker v. Flook- On June 22, 1978 the Supreme Court found a method for updating alarm limits during catalytic conversion processes to be unpatentable under 35 U.S.C. § 101.
Diamond v. Diehr - On March 3, 1981 the Supreme Court found a process for molding raw, uncured synthetic rubber into cured precision products to be patentable subject matter under 35 U.S.C. § 101. The Federal Curcuit in Bilski said, "[t]he process claimed in Diehr, for example, clearly met both criteria [machine and transformation]. The process operated on a computerized rubber curing apparatus and transformed raw, uncured rubber into molded, cured rubber products."
Federal Circuit
In re Abele - On August 5, 1982 the Federal Circuit's predecessor court found that claims directed to displaying data were unpatentable, while dependent claims specifiying X-ray data were patentable.
In re Schrader - On April 13, 1994 the Federal Circuit found that a method for competitively bidding on a plurality of related items, such as contiguous tracts of land or the like was patentable under 35 U.S.C. § 101.
State Street v. Signature Financial - On July 23, 1998 the Federal Circuit found that a system claim involving managing a financial services portfolio was patentable under 35 U.S.C. § 101. 5,193,056
In re Bilski - On October 30, 2008 the Federal Circuit found a method for managing the consumption risk costs of a commodity unpatentable under 35 U.S.C. § 101. This case also overruled all tests for patentability other than the machine-or-transformation test. In re Bilski blog entry
Classen Immunotherapies v. Biogen IDEC - On December 12, 2008 the Federal Circuit found a method of determining whether an immunization schedule affects the incidence or severity of a disorder. Claim 1 of U.S. Patent 5,723,283
In re Comiskey - On January 13, 2009 the Federal Circuit found claims directed to "the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator" to be unpatentable under 35 U.S.C. § 101.
BPAI
Ex parte Bo Li - This November 6, 2008 decision was the first decision from the Board of Patent Appeals and Interferences to address a computer readable medium claim after the ruling in In re Bilski. The Board found that the claim should no longer be rejected under the In re Bilski test. Ex parte Bo Li blog entry
Ex parte Cornea-Hasegan - On January 13, 2009 the Board of Patent Appeals and Interferences found that "the recitation of a 'processor' fails to impose any meaningful limits on the claim's scope" and, therefore, "is insufficient to establish patent-eligibility under 35 U.S.C. § 101," according to the In re Bilski decision. Ex parte Cornea-Hasegan Flowchart
Ex Parte Gutta - On January 15, 2009 the Board of Patent Appeals and Interferences found that "the recitation in the preamble of '[a] computerized method performed by a data processor' adds nothing more than a general purpose computer that is associated with the steps of the process in an unspecified manner." They also found that step of "displaying" the result to a target user in claim 1 is a post-solution activity insufficient to impart patentability.
Ex parte Barnes - On January 22, 2009 the Board of Patent Appeals and Interferences found that the claims "call for the gathering, analyzing and displaying of data without any details as to how the data is gathered, analyzed or displayed." This case is interesting because a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. U.S. Publication No. 20060133206
Ex parte Becker - On January 26, 2009 the Board of Patent Appeals and Interferences found that "Appellants’ claimed 'method for creating a hierarchically structured automation object and embedding said automation object into an engineering system' (see preamble, claim 7) does not require a particular machine or apparatus, nor do these claims transform any article into a different state or thing." In this case also a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. This case is interesting because claim 7 included modules, but was still rejected. U.S. Publication No. 20020072819
Ex parte Atkin - On January 30, 2009 the Board of Patent Appeals and Interferences found that a method and system for converting a unidirectional domain name to a bidirectional domain name were unpatentable under 35 U.S.C. § 101. The Board found that a "domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web." The Board reasoned that the ruling in Bilski was also applicable to a system claim, because the "term 'system' in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus."
Ex Parte Motoyama - On February 27, 2009 the Board of Patent Appeals and Interferences found that a method for a monitoring device to obtain an identifier of a monitored device was unpatentable under 35 U.S.C. § 101. The Board found that while "the preamble of claim 1 recites a method 'for a monitoring device,' the method of claim 1 is not recited in terms of hardware or tangible structural elements. In this case as in Barnes and Becker, a § 101 rejection was not before the Board, but they entered it as new grounds for rejection.
Important Cases
Supreme Court
KSR
Rationales for arriving at a conclusion ofobviousness suggested by the SupremeCourt’s decision in KSR include:
(A)
Combining prior art elements accordingto known methods to yield predictableresults;
(B)
Simple substitution of one known elementfor another to obtain predictable results;
(C)
Use of known technique to improve
similar devices in the same way
Gottschalk v. Benson - On November 20, 1972 the Supreme Court found a method for converting numerical information from binary-coded decimal numbers into pure binary numbers to be unpatentable even though this method recited a reentrant shift register.
Parker v. Flook- On June 22, 1978 the Supreme Court found a method for updating alarm limits during catalytic conversion processes to be unpatentable under 35 U.S.C. § 101.
Diamond v. Diehr - On March 3, 1981 the Supreme Court found a process for molding raw, uncured synthetic rubber into cured precision products to be patentable subject matter under 35 U.S.C. § 101. The Federal Curcuit in Bilski said, "[t]he process claimed in Diehr, for example, clearly met both criteria [machine and transformation]. The process operated on a computerized rubber curing apparatus and transformed raw, uncured rubber into molded, cured rubber products."
Federal Circuit
In re Abele - On August 5, 1982 the Federal Circuit's predecessor court found that claims directed to displaying data were unpatentable, while dependent claims specifiying X-ray data were patentable.
In re Schrader - On April 13, 1994 the Federal Circuit found that a method for competitively bidding on a plurality of related items, such as contiguous tracts of land or the like was patentable under 35 U.S.C. § 101.
State Street v. Signature Financial - On July 23, 1998 the Federal Circuit found that a system claim involving managing a financial services portfolio was patentable under 35 U.S.C. § 101. 5,193,056
In re Bilski - On October 30, 2008 the Federal Circuit found a method for managing the consumption risk costs of a commodity unpatentable under 35 U.S.C. § 101. This case also overruled all tests for patentability other than the machine-or-transformation test. In re Bilski blog entry
Classen Immunotherapies v. Biogen IDEC - On December 12, 2008 the Federal Circuit found a method of determining whether an immunization schedule affects the incidence or severity of a disorder. Claim 1 of U.S. Patent 5,723,283
In re Comiskey - On January 13, 2009 the Federal Circuit found claims directed to "the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator" to be unpatentable under 35 U.S.C. § 101.
BPAI
Ex parte Bo Li - This November 6, 2008 decision was the first decision from the Board of Patent Appeals and Interferences to address a computer readable medium claim after the ruling in In re Bilski. The Board found that the claim should no longer be rejected under the In re Bilski test. Ex parte Bo Li blog entry
Ex parte Cornea-Hasegan - On January 13, 2009 the Board of Patent Appeals and Interferences found that "the recitation of a 'processor' fails to impose any meaningful limits on the claim's scope" and, therefore, "is insufficient to establish patent-eligibility under 35 U.S.C. § 101," according to the In re Bilski decision. Ex parte Cornea-Hasegan Flowchart
Ex Parte Gutta - On January 15, 2009 the Board of Patent Appeals and Interferences found that "the recitation in the preamble of '[a] computerized method performed by a data processor' adds nothing more than a general purpose computer that is associated with the steps of the process in an unspecified manner." They also found that step of "displaying" the result to a target user in claim 1 is a post-solution activity insufficient to impart patentability.
Ex parte Barnes - On January 22, 2009 the Board of Patent Appeals and Interferences found that the claims "call for the gathering, analyzing and displaying of data without any details as to how the data is gathered, analyzed or displayed." This case is interesting because a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. U.S. Publication No. 20060133206
Ex parte Becker - On January 26, 2009 the Board of Patent Appeals and Interferences found that "Appellants’ claimed 'method for creating a hierarchically structured automation object and embedding said automation object into an engineering system' (see preamble, claim 7) does not require a particular machine or apparatus, nor do these claims transform any article into a different state or thing." In this case also a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. This case is interesting because claim 7 included modules, but was still rejected. U.S. Publication No. 20020072819
Ex parte Atkin - On January 30, 2009 the Board of Patent Appeals and Interferences found that a method and system for converting a unidirectional domain name to a bidirectional domain name were unpatentable under 35 U.S.C. § 101. The Board found that a "domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web." The Board reasoned that the ruling in Bilski was also applicable to a system claim, because the "term 'system' in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus."
Ex Parte Motoyama - On February 27, 2009 the Board of Patent Appeals and Interferences found that a method for a monitoring device to obtain an identifier of a monitored device was unpatentable under 35 U.S.C. § 101. The Board found that while "the preamble of claim 1 recites a method 'for a monitoring device,' the method of claim 1 is not recited in terms of hardware or tangible structural elements. In this case as in Barnes and Becker, a § 101 rejection was not before the Board, but they entered it as new grounds for rejection.
Bilski examples -- Claim Drafting
Include unique hardware to enhance the likelihood of being assigned to a different patent group.
Illustrate a hardware device in the first drawing.
Describe the hardware device in the abstract.
Draft the first patent claim so that it is directed to the hardware device.
If possible, make your first patent claim narrow and easy to understand.
Many Examiners do not read the patent application in detail. Instead, the Examiners tend to focus on the first patent claim.
Draft a first claim that is narrow and is in plain English.
In the patent claims consider using the phrase “one or more computer processors.”
In the first patent claim consider also using the phrase “transforming data X into data Y.”
Ex Parte Dickerson: (BPAI Opinion)
6. Claim 23 recites:
assessing impacts of applications of the set
of solutions on the operational metrics for the
specific industry, wherein the assessing includes
determining which of the set of solutions has a
negative impact on an operational metric and
determining which of the set of solutions has a
positive impact on the operational metric.
Claim 23 in its entirety:
23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising:
first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day;
assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service;
assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric;
after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry;
identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and
outputting the solution from the computer system.
(found in Patently Defined)
Joe Sixpack says these forms worked:
1) This language overcame a Bilski rejection at the appeals board.
Appeal 2009-1485
A computer-readable medium having stored thereon instructions that, when executed, direct a printer to…
2) This language was offered by an examiner in 11/423,538:
Suggested change: “A computer readable storage medium storing instructions which, when executed on a programmed processor…”
In practice I think you’re really limited by the type of specification you’ve inherited or created. I’ve seen a few Bilski rejections in software applications I’ve inherited. I’ve been able to overcome them using language similar to that found above. These rejections, however, were first office actions, not appeals. Bottom line is that you need some support in the specification to overcome these rejections. I’m giving myself more support now that Bilski was grated certiorari.
From commenter Dr. Sinai Yarus
generic Example:
A method to satisfy the Bilski machine or transformation test, the method comprising:
A) Receiving a data input at a data reception module;
B) Transferring the data to a processing module;
C) Processing the data to produce transformed data.
Each of the three steps is linked to the machine.
C explicitly states there is a transformation.
Most Examiners are looking at 101 as an “easy way out”. Writing a good 101 rejection for a claim in this style is generally too much work and they don’t bother.
From commenter Aristo:
Returning to the wild variability in applications of Bilski by staff at the USPTO, and the uncertainty as to how a general purpose computer may be treated by the Federal Circuit, a stronger strategy than arguing a tie to a particular machine alone may be to argue both prongs of the Bilski test, including an argument with respect to a transformation. In the case of software, memory (registers, cache, RAM, etc.) must naturally undergo physical transformations when a processor runs since the physical semiconductor material changes state. While the Federal Circuit discussed transformations of data in Bilski, the physical transformations to matter that occur when running software on a machine were not specifically addressed. Accordingly, bolstering 101 arguments with such language may be beneficial and in my practice has worked in a handful of cases on its own when clients would not agree to amend method claims to include structure.
All comments above found on string Here.
"An electronic device comprising:
a housing;
a display carried by said housing; and
a processor carried by said housing and cooperating with said display, said processor configured to:
perform software step a,
perform software step b, and
perform software step c."
Illustrate a hardware device in the first drawing.
Describe the hardware device in the abstract.
Draft the first patent claim so that it is directed to the hardware device.
If possible, make your first patent claim narrow and easy to understand.
Many Examiners do not read the patent application in detail. Instead, the Examiners tend to focus on the first patent claim.
Draft a first claim that is narrow and is in plain English.
In the patent claims consider using the phrase “one or more computer processors.”
In the first patent claim consider also using the phrase “transforming data X into data Y.”
Ex Parte Dickerson: (BPAI Opinion)
In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc).
Claims 23, 29, and 30 are drawn to processes (FF 1-10) which are
statutory if they meet the machine-or-transformation test. “A claimed
process is surely patent-eligible under § 101 if: (1) it is tied to a particular
machine or apparatus, or (2) it transforms a particular article into a different
state or thing.” Id. at 954, citation omitted. We find that claims 23, 29, and
30 recite a computerized method which includes a step of outputting
information from a computer (FF 7 and 9-10) and therefore, are tied to a
particular machine or apparatus.
6. Claim 23 recites:
assessing impacts of applications of the set
of solutions on the operational metrics for the
specific industry, wherein the assessing includes
determining which of the set of solutions has a
negative impact on an operational metric and
determining which of the set of solutions has a
positive impact on the operational metric.
7. Claim 23 recites “outputting the solution from the computer
system.”
8. Claim 29 recites a method including “first identifying a plurality of
operational metrics for the specific industry, wherein the
operational metrics include a factor used to measure health or
viability of a generic company in the specific industry, wherein the
specific industry is a grocery store industry.”
9. Claim 29 also recites “outputting the value proposition from the
computer system.”
10. Claim 30 recites a method including the same two steps recited in
claim 29 above.
Claim 23 in its entirety:
23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising:
first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day;
assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service;
assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric;
after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry;
identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and
outputting the solution from the computer system.
(found in Patently Defined)
Joe Sixpack says these forms worked:
1) This language overcame a Bilski rejection at the appeals board.
Appeal 2009-1485
A computer-readable medium having stored thereon instructions that, when executed, direct a printer to…
2) This language was offered by an examiner in 11/423,538:
Suggested change: “A computer readable storage medium storing instructions which, when executed on a programmed processor…”
In practice I think you’re really limited by the type of specification you’ve inherited or created. I’ve seen a few Bilski rejections in software applications I’ve inherited. I’ve been able to overcome them using language similar to that found above. These rejections, however, were first office actions, not appeals. Bottom line is that you need some support in the specification to overcome these rejections. I’m giving myself more support now that Bilski was grated certiorari.
From commenter Dr. Sinai Yarus
generic Example:
A method to satisfy the Bilski machine or transformation test, the method comprising:
A) Receiving a data input at a data reception module;
B) Transferring the data to a processing module;
C) Processing the data to produce transformed data.
Each of the three steps is linked to the machine.
C explicitly states there is a transformation.
Most Examiners are looking at 101 as an “easy way out”. Writing a good 101 rejection for a claim in this style is generally too much work and they don’t bother.
From commenter Aristo:
Returning to the wild variability in applications of Bilski by staff at the USPTO, and the uncertainty as to how a general purpose computer may be treated by the Federal Circuit, a stronger strategy than arguing a tie to a particular machine alone may be to argue both prongs of the Bilski test, including an argument with respect to a transformation. In the case of software, memory (registers, cache, RAM, etc.) must naturally undergo physical transformations when a processor runs since the physical semiconductor material changes state. While the Federal Circuit discussed transformations of data in Bilski, the physical transformations to matter that occur when running software on a machine were not specifically addressed. Accordingly, bolstering 101 arguments with such language may be beneficial and in my practice has worked in a handful of cases on its own when clients would not agree to amend method claims to include structure.
All comments above found on string Here.
"An electronic device comprising:
a housing;
a display carried by said housing; and
a processor carried by said housing and cooperating with said display, said processor configured to:
perform software step a,
perform software step b, and
perform software step c."
Wednesday, April 1, 2009
Epo 2 year deadline on filing divisionals
There have been mutterings and papers for some time about the EPO restricting the filing of divisional applications. They were viewed by some at the EPO as a thorn in the side of 3rd party rights.
It is now official – the EPO Administrative Council met 26 March 2009 and considered the filing of divisional applications to be “abusive” so they have signed off on an EPC rule change to Rule 36 severely limiting the opportunities to file divisional applications.
Under present Rule 36 EPC, a divisional application can be filed at any time before grant, abandonment or withdrawal of the parent case.
The new rule will restrict this deadline in two ways:
1. If the EPO do not raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the examining division; and
2. If the EPO do raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the EPO (not when acting as the International Search Authority) which identifies that there is more than one invention.
Here are some examples of how the new rule will work: An applicant can voluntarily file a first divisional from an original parent application, and a second divisional, from the first divisional. However both divisionals must be filed in the 2 years after the first examining division communication on the original parent application.
If the EPO identifies 3 different inventions in a search report on an original application, then the applicant must file divisional applications to each of the 2 additional inventions within two years of that search report. However, if one of those divisionals provokes a new lack of unity objection, then the new objection starts a fresh 2 year term for filing divisional applications for the newly-identified inventions.
There will be clarification to this proposed system in the year before the new rule takes effect. In the meantime, if you have any specific questions on how the new system will operate, please let us know.
The new rule will come into force on April 1, 2010. There will be a 6 month grace period, until October 1, 2010, for filing divisional applications outside the new two year periods.
Copied from patent baristas, here.
It is now official – the EPO Administrative Council met 26 March 2009 and considered the filing of divisional applications to be “abusive” so they have signed off on an EPC rule change to Rule 36 severely limiting the opportunities to file divisional applications.
Under present Rule 36 EPC, a divisional application can be filed at any time before grant, abandonment or withdrawal of the parent case.
The new rule will restrict this deadline in two ways:
1. If the EPO do not raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the examining division; and
2. If the EPO do raise an objection of unity of invention. Any divisional application(s) can only be filed within 2 years of the first communication from the EPO (not when acting as the International Search Authority) which identifies that there is more than one invention.
Here are some examples of how the new rule will work: An applicant can voluntarily file a first divisional from an original parent application, and a second divisional, from the first divisional. However both divisionals must be filed in the 2 years after the first examining division communication on the original parent application.
If the EPO identifies 3 different inventions in a search report on an original application, then the applicant must file divisional applications to each of the 2 additional inventions within two years of that search report. However, if one of those divisionals provokes a new lack of unity objection, then the new objection starts a fresh 2 year term for filing divisional applications for the newly-identified inventions.
There will be clarification to this proposed system in the year before the new rule takes effect. In the meantime, if you have any specific questions on how the new system will operate, please let us know.
The new rule will come into force on April 1, 2010. There will be a 6 month grace period, until October 1, 2010, for filing divisional applications outside the new two year periods.
Copied from patent baristas, here.
Amendment Support boilerplate
Applicant has amended claim 1. Support for this amendment may be found at least at, for example, paragraph [0025] of the Specification as originally filed. Thus, no new matter has been added.
Inherency general rules
In rejecting claim 1 under 35 U.S.C § 102, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a widget. (Office Action, page 3). Nonetheless, the Office rejects claim 1, contending that the feature of a widget is inherently taught by Smith. Applicant respectfully traverses this rejection at least because the Office has not met its burden to fully develop reasons supporting its reliance on the doctrine of inherency.
The Office always bears the initial burden to develop reasons supporting a reliance on inherency. (MPEP 2112 (IV)). To satisfy this burden, the Office must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitability) flows from cited art. Indeed, the MPEP expressly instructs that:
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Further, since a basis in fact and technical reasoning is required when inherency is invoked, a failure to provide such evidence or rationale is fatal to the reliance on this doctrine. This is only logical since evidence “must make clear” that the allegedly inherent subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art. (MPEP 2112).
A review of page 3 of the Office Action reveals the absence of the required rationale or evidence at least tending to show that the feature of a widget inevitably flows from the disclosures of Smith patent. Indeed, the Office Action merely asserts that a red widget is inherently present in the Smith patent. (Office Action, page 3). This naked assertion, a mere conclusory statement, cannot reasonably be said to be a development of any reason supporting the Office’s reliance on inherency. Consequently, the Office Action’s reliance on inherency is unsupported and thus improper.
In sum, the Office Action concedes that the Smith patent does not teach the feature of claim 1 of a widget and any reliance on the doctrine of inherency to provide this necessary teaching is improper.
2. A Substantive Response
In rejecting claim 1, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a red widget. (Office Action, page 3). Nonetheless, the Office rejects claim 1 under 35 U.S.C. § 102, contending that a red widget is inherent from the disclosures of the Smith patent. This contention is respectfully traversed, at least because express teachings of the Smith patent preclude reliance on the doctrine of inherency, as a matter of law.
It is well settled that subject matter is inherent only when extrinsic evidence makes it clear that the subject matter necessarily (i.e., inevitably) flows from a disclosure of cited art. (MPEP 2112). This requirement is a prerequisite to invoking the doctrine of inherency and cannot be avoided. Consequently, inherency may never be established by mere probabilities or even possibilities and the mere fact that a certain thing may be present (or may result) is always insufficient. (MPEP 2112).
A review of the Smith patent reveals no less than three separate teachings that the Smith widget cannot be red. Applicant respectfully submits that these express teachings so heavily weigh against the inevitable presence of a red widget that they preclude reliance on the doctrine of inherency as a matter of law. Stated another way, the presence of these express teachings means that the subject matter alleged by the Office Action to be inherent can never reasonably be said to necessarily flow from the Smith patent. Thus, the Office’s current reliance on inherency can never satisfy the standard set forth in MPEP § 2112 for proper reliance on inherency.
From Patently Defined, date: Sept. 17th, 2008. Here.
The Office always bears the initial burden to develop reasons supporting a reliance on inherency. (MPEP 2112 (IV)). To satisfy this burden, the Office must identify some basis in fact or articulate some reasoning at least tending to show that allegedly inherent subject matter necessarily (i.e., inevitability) flows from cited art. Indeed, the MPEP expressly instructs that:
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Further, since a basis in fact and technical reasoning is required when inherency is invoked, a failure to provide such evidence or rationale is fatal to the reliance on this doctrine. This is only logical since evidence “must make clear” that the allegedly inherent subject matter is necessarily present in (i.e., necessarily flows from) the disclosure of cited art. (MPEP 2112).
A review of page 3 of the Office Action reveals the absence of the required rationale or evidence at least tending to show that the feature of a widget inevitably flows from the disclosures of Smith patent. Indeed, the Office Action merely asserts that a red widget is inherently present in the Smith patent. (Office Action, page 3). This naked assertion, a mere conclusory statement, cannot reasonably be said to be a development of any reason supporting the Office’s reliance on inherency. Consequently, the Office Action’s reliance on inherency is unsupported and thus improper.
In sum, the Office Action concedes that the Smith patent does not teach the feature of claim 1 of a widget and any reliance on the doctrine of inherency to provide this necessary teaching is improper.
2. A Substantive Response
In rejecting claim 1, the Office Action concedes that the Smith patent does not expressly or impliedly teach the aforementioned claim feature of a red widget. (Office Action, page 3). Nonetheless, the Office rejects claim 1 under 35 U.S.C. § 102, contending that a red widget is inherent from the disclosures of the Smith patent. This contention is respectfully traversed, at least because express teachings of the Smith patent preclude reliance on the doctrine of inherency, as a matter of law.
It is well settled that subject matter is inherent only when extrinsic evidence makes it clear that the subject matter necessarily (i.e., inevitably) flows from a disclosure of cited art. (MPEP 2112). This requirement is a prerequisite to invoking the doctrine of inherency and cannot be avoided. Consequently, inherency may never be established by mere probabilities or even possibilities and the mere fact that a certain thing may be present (or may result) is always insufficient. (MPEP 2112).
A review of the Smith patent reveals no less than three separate teachings that the Smith widget cannot be red. Applicant respectfully submits that these express teachings so heavily weigh against the inevitable presence of a red widget that they preclude reliance on the doctrine of inherency as a matter of law. Stated another way, the presence of these express teachings means that the subject matter alleged by the Office Action to be inherent can never reasonably be said to necessarily flow from the Smith patent. Thus, the Office’s current reliance on inherency can never satisfy the standard set forth in MPEP § 2112 for proper reliance on inherency.
From Patently Defined, date: Sept. 17th, 2008. Here.
Disclosure Meeting Checklist.
Remind inventors:
Never criticize claims in an email. Call to make the criticisms.
Never criticize claims in an email. Call to make the criticisms.
Once the process is explained, I have one warning: do not criticize my claims in an email. Most of my inventors are tech savvy and use email for everything. I stress to them that even though out conversations may be protected by attorney/client privilege, there is no need to generate unnecessary problems.
I paint them a picture of their competitor’s attorney standing in front a big easel with their email blown up to giant size, explaining to a jury “The Inventor himself said that this claim is not patentable” or “Look, the Inventor said this limitation is too broad”.
I implore them to call me or send an email requesting a telephone call. We can talk about the claims all we want, beat them around, get other people’s opinions, or argue about them, but please do not write those kind of comments and send them to me.
Office action steps.
1. Check that the dates of all cited references qualify as prior art.
2. Check if patent entity owns any of the references.
Words to check--Refer to "cited publication" not "prior art."
Check that there are no occurances of the words "must," "Prior art," "invention" or "reference."
From http://www.krajec.com/index.php?/weblog/prohibited_words_in_a_patent_must/
2. Check if patent entity owns any of the references.
Words to check--Refer to "cited publication" not "prior art."
Check that there are no occurances of the words "must," "Prior art," "invention" or "reference."
A recent litigated case involving a Colorado inventor hinged on the fact that the patent drafter stated “the benefit is…” rather than “a benefit is…” or “a potential benefit is …”. The entire case hinged on the fact that the court read the phrase to mean that the claimed invention must have the limitation. Literally millions of dollars were on the line because of an inadvertent error during patent drafting.
From http://www.krajec.com/index.php?/weblog/prohibited_words_in_a_patent_must/
Official Notice -- from Patently Defined, mostly
Whole post from Patently Defined is here.
Example 1 - An Improper Taking of Official Notice
Applicant respectfully traverses the rejection of independent claim 1 at least because the Office has failed to establish a prima facie case of obviousness.
In rejecting independent claim 1 under 35 U.S.C § 103, the Office Action contends:
It would have been obvious to one having ordinary skill in the art at the time the invention was made to replace the printer of Smith with the plotter of Jones since the Examiner takes Official Notice of the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.
Applicant respectfully traverses this attempted use of Official Notice as improper. Consequently, a necessary element of a prima facie case is absent.
Firstly, it is to be appreciated that the Office Action attempts to officially notice legal conclusions, –namely “the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.” Official Notice, however, is only proper for facts. (MPEP § 2144.03). Indeed, Official Notice is only permissible for those few facts that are of a “notorious character” and that are “capable of instant and unquestionable demonstration”. (MPEP § 2144.03(A)). It is improper to use Official Notice for conclusions of law.
Secondly, the Office Action relies on Official Notice as the “principal evidence” upon which the rejection of claim 1 is based. Official Notice cannot be used in this manner. As Section 2144.03(A) of the MPEP expressly warns, it is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based. Instead, Official Notice is only appropriate for facts and that serve to “fill in the gaps” in a rejection. (MPEP § 2144.03(A)). This is why official notice is to be judicially applied. (MPEP § 2144.03). It is unreasonable to conclude that the Office has used Official Notice to “fill in” a gap in this rejection.
Thirdly, the Office attempts to take Official Notice of matter that is not “capable of instant and unquestionable demonstration”, as expressly required by section 2144.03(A) of the MPEP. Indeed, even assuming arguendo that the equivalence of the subject printer and plotter is a fact, this fact would be neither of notorious character nor instantly and unquestionably demonstrable. Moreover, courts have long rejected the notion that official notice can be taken on the state of the art. (See Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy regarding Procedures for Relying on Facts Which are Not of Record as Common Sense or for Taking Official Notice, n.6, citing In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973)). Thus, the Office’s attempt to officially notice the level of ordinary skill in the art is improper as a matter of law.
In sum, the Office’s attempts at Official Notice are improper and traversed. Consequently, there are evidentiary gaps in the rejection of independent claim 1 that are fatal to a prima facie case of obviousness.
Example 2 - An Ambiguous Taking of Official Notice --e.g., Well Known or the like.
Lastly, Applicant notes, at page 4 of the Office Action, an apparent attempt to officially notice a fact. If the Office has intended to take Official Notice, such an attempt is traversed, at least because it is not in compliance with the Office’s own procedures.
Proper use of Official Notice requires compliance with several obligations expressly set forth in the Manual of Patent Examining Procedure. The Office has failed to meet these obligations. Specifically, the Office has failed to satisfy its obligations under MPEP § 2144.03. MPEP § 2144.03 (B), for example, expressly requires the Office to provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. The MPEP goes on to explain that this means that the Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)). Naked assertions about what is allegedly known in the art, like those made at page 4 of the Office Action, cannot satisfy these requirements.
In the event that the Office is not attempting to take Official Notice, Applicant respectfully requests confirmation of this fact.
Also:• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action
Example 1 - An Improper Taking of Official Notice
Applicant respectfully traverses the rejection of independent claim 1 at least because the Office has failed to establish a prima facie case of obviousness.
In rejecting independent claim 1 under 35 U.S.C § 103, the Office Action contends:
It would have been obvious to one having ordinary skill in the art at the time the invention was made to replace the printer of Smith with the plotter of Jones since the Examiner takes Official Notice of the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.
Applicant respectfully traverses this attempted use of Official Notice as improper. Consequently, a necessary element of a prima facie case is absent.
Firstly, it is to be appreciated that the Office Action attempts to officially notice legal conclusions, –namely “the equivalent use in the art and the selection of any of these known equivalents to write information on a plastic card would be within the level of ordinary skill in the art.” Official Notice, however, is only proper for facts. (MPEP § 2144.03). Indeed, Official Notice is only permissible for those few facts that are of a “notorious character” and that are “capable of instant and unquestionable demonstration”. (MPEP § 2144.03(A)). It is improper to use Official Notice for conclusions of law.
Secondly, the Office Action relies on Official Notice as the “principal evidence” upon which the rejection of claim 1 is based. Official Notice cannot be used in this manner. As Section 2144.03(A) of the MPEP expressly warns, it is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection was based. Instead, Official Notice is only appropriate for facts and that serve to “fill in the gaps” in a rejection. (MPEP § 2144.03(A)). This is why official notice is to be judicially applied. (MPEP § 2144.03). It is unreasonable to conclude that the Office has used Official Notice to “fill in” a gap in this rejection.
Thirdly, the Office attempts to take Official Notice of matter that is not “capable of instant and unquestionable demonstration”, as expressly required by section 2144.03(A) of the MPEP. Indeed, even assuming arguendo that the equivalence of the subject printer and plotter is a fact, this fact would be neither of notorious character nor instantly and unquestionably demonstrable. Moreover, courts have long rejected the notion that official notice can be taken on the state of the art. (See Memorandum to Patent Examining Corps from the Deputy Commissioner for Patent Examining Policy regarding Procedures for Relying on Facts Which are Not of Record as Common Sense or for Taking Official Notice, n.6, citing In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973)). Thus, the Office’s attempt to officially notice the level of ordinary skill in the art is improper as a matter of law.
In sum, the Office’s attempts at Official Notice are improper and traversed. Consequently, there are evidentiary gaps in the rejection of independent claim 1 that are fatal to a prima facie case of obviousness.
Example 2 - An Ambiguous Taking of Official Notice --e.g., Well Known or the like.
Lastly, Applicant notes, at page 4 of the Office Action, an apparent attempt to officially notice a fact. If the Office has intended to take Official Notice, such an attempt is traversed, at least because it is not in compliance with the Office’s own procedures.
Proper use of Official Notice requires compliance with several obligations expressly set forth in the Manual of Patent Examining Procedure. The Office has failed to meet these obligations. Specifically, the Office has failed to satisfy its obligations under MPEP § 2144.03. MPEP § 2144.03 (B), for example, expressly requires the Office to provide specific factual findings predicated on sound technical and scientific reasoning to support taking Official Notice. The MPEP goes on to explain that this means that the Office should present an Applicant with the explicit basis on which Official Notice is based so that the Applicant is able to challenge the assertion in the next reply after the Office action. (MPEP §2144.03(B)). Naked assertions about what is allegedly known in the art, like those made at page 4 of the Office Action, cannot satisfy these requirements.
In the event that the Office is not attempting to take Official Notice, Applicant respectfully requests confirmation of this fact.
Also:• Rule 1.104(d)(2)
– Allows applicant to request affidavit from Examiner in support of
statements made based on personal knowledge
– Often forces Examiner to find additional prior art and issue new,
non-final office action
Factors in determining enablement--the Wands factors
Copied from Patently Defined
The Basis for the Enablement Requirement
The enablement requirement arises from the first paragraph of 35 U.S.C. § 112, which states in relevant part:
[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .
The purpose of the enablement requirement is to ensure that patented inventions are communicated to the public in a meaningful way.
Fundamentals of the Enablement Requirement
1. The USPTO’s guidelines for examination of patent applications for compliance with the enablement requirement are found in Section 2164 of the MPEP. This should be an Applicant’s primary resource for authority when articulating responses to enablement rejections.
2. All questions of enablement are evaluated against claimed subject matter. (MPEP 2164.08).
3. The test for enablement is whether one of ordinary skill would need to engage in undue experimentation to practice the claimed invention. (MPEP 2164.01).
4. Whether experimentation is “undue” is determined based on the following eight Wands factors:
1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.
(MPEP 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).
5. A proper analysis of whether any experimentation is undue requires an analysis of all of the Wands factors. (MPEP 2164.01(a)). It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. (Id.).
6. The amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. (MPEP 2164.03). Thus, the question of enablement is one of predictability in view of what is known in the art.
Additional Points
1. The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation. (MPEP 2164.01).
2. A patent need not teach, and preferably omits, what is well known in the art. (MPEP 2164.01). Further, an Applicant need not “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” (MPEP 2164).
3. Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein. (MPEP 2164.01, citing Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005)(discussion of problems with a prior art feature does not mean that one of ordinary skill in the art would not know how to make and use this feature)).
4. The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without undue experimentation. (MPEP 2164.02).
5. As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied. (MPEP 2164.01(b)).
6. Claims must be enabled as of their filing date. (MPEP 2164.05(a)).
7. Enablement is judged from the perspective of an ordinarily skilled artisan. (MPEP 2164.05(b)).
The Office’s Burden
1. It is always incumbent on an Examiner to fully develop the reasons for a technical rejection (enablement, written description, etc.).
Section 706.03 of the MPEP warns Examiners that “[w]here a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.” Thus, mere conclusory statements are insufficient to support a rejection under Section 112. Consequently, the Office must arguably provide a reasonable basis to reject a claim for failing to satisfy the enablement requirement, and this requires “a full development” of the reasons for the rejection.
This obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U.S.C. § 112. (See, e.g., MPEP § 2163 (III)(A) (written description); MPEP § 2164.04 (enablement)). A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2164.04).
In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible. (MPEP 2164.04).
2. An Examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application. (MPEP 2164.04). Thus, if a rejection is made based on the view that the enablement is not commensurate in scope with the claim, the examiner should identify the subject matter that is considered to be enabled. (MPEP 2164.08).
3. The Examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. (MPEP 2164.01(a)).
4. Only after the Examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, does the burden fall on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide. (MPEP 2164.05). The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. (Id.).
5. The MPEP instructs Examiners that they must assume compliance with the enablement requirement when an application includes a teaching of how to make and use invention “in terms which correspond in scope to the claims.” This mandate may be only ignored when there is a basis to doubt the objective truth of the teaching. (MPEP 2164.04).
So, unless a rejection articulates “evidence or some technical reasoning” that either (i) an enabling teaching does not correspond to the claims or (ii) a reason to doubt the objective truth of such a teaching, the mere presence of a teaching requires that the Office assume that this requirement is satisfied.
The Basis for the Enablement Requirement
The enablement requirement arises from the first paragraph of 35 U.S.C. § 112, which states in relevant part:
[t]he specification shall contain a written description of the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same . . .
The purpose of the enablement requirement is to ensure that patented inventions are communicated to the public in a meaningful way.
Fundamentals of the Enablement Requirement
1. The USPTO’s guidelines for examination of patent applications for compliance with the enablement requirement are found in Section 2164 of the MPEP. This should be an Applicant’s primary resource for authority when articulating responses to enablement rejections.
2. All questions of enablement are evaluated against claimed subject matter. (MPEP 2164.08).
3. The test for enablement is whether one of ordinary skill would need to engage in undue experimentation to practice the claimed invention. (MPEP 2164.01).
4. Whether experimentation is “undue” is determined based on the following eight Wands factors:
1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.
(MPEP 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).
5. A proper analysis of whether any experimentation is undue requires an analysis of all of the Wands factors. (MPEP 2164.01(a)). It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others. (Id.).
6. The amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. (MPEP 2164.03). Thus, the question of enablement is one of predictability in view of what is known in the art.
Additional Points
1. The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation. (MPEP 2164.01).
2. A patent need not teach, and preferably omits, what is well known in the art. (MPEP 2164.01). Further, an Applicant need not “enable one of ordinary skill in the art to make and use a perfected, commercially viable embodiment absent a claim limitation to that effect.” (MPEP 2164).
3. Any part of the specification can support an enabling disclosure, even a background section that discusses, or even disparages, the subject matter disclosed therein. (MPEP 2164.01, citing Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 77 USPQ2d 1041 (Fed. Cir. 2005)(discussion of problems with a prior art feature does not mean that one of ordinary skill in the art would not know how to make and use this feature)).
4. The specification need not contain an example if the invention is otherwise disclosed in such manner that one skilled in the art will be able to practice it without undue experimentation. (MPEP 2164.02).
5. As long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied. (MPEP 2164.01(b)).
6. Claims must be enabled as of their filing date. (MPEP 2164.05(a)).
7. Enablement is judged from the perspective of an ordinarily skilled artisan. (MPEP 2164.05(b)).
The Office’s Burden
1. It is always incumbent on an Examiner to fully develop the reasons for a technical rejection (enablement, written description, etc.).
Section 706.03 of the MPEP warns Examiners that “[w]here a major technical rejection is proper (e.g., lack of proper disclosure, undue breadth, utility, etc.) such rejection should be stated with a full development of the reasons rather than by a mere conclusion coupled with some stereotyped expression.” Thus, mere conclusory statements are insufficient to support a rejection under Section 112. Consequently, the Office must arguably provide a reasonable basis to reject a claim for failing to satisfy the enablement requirement, and this requires “a full development” of the reasons for the rejection.
This obligation to establish a prima facie case is affirmed by the MPEP in its discussions of each requirement of the first paragraph of 35 U.S.C. § 112. (See, e.g., MPEP § 2163 (III)(A) (written description); MPEP § 2164.04 (enablement)). A prima facie case requires a reasonable basis to challenge the adequacy of the written description. (MPEP § 2164.04).
In accordance with the principles of compact prosecution, if an enablement rejection is appropriate, the first Office action on the merits should present the best case with all the relevant reasons, issues, and evidence so that all such rejections can be withdrawn if applicant provides appropriate convincing arguments and/or evidence in rebuttal. The principles of compact prosecution also dictate that if an enablement rejection is appropriate and the examiner recognizes limitations that would render the claims enabled, the examiner should note such limitations to applicant as early in the prosecution as possible. (MPEP 2164.04).
2. An Examiner should always look for enabled, allowable subject matter and communicate to applicant what that subject matter is at the earliest point possible in the prosecution of the application. (MPEP 2164.04). Thus, if a rejection is made based on the view that the enablement is not commensurate in scope with the claim, the examiner should identify the subject matter that is considered to be enabled. (MPEP 2164.08).
3. The Examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. (MPEP 2164.01(a)).
4. Only after the Examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, does the burden fall on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide. (MPEP 2164.05). The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. (Id.).
5. The MPEP instructs Examiners that they must assume compliance with the enablement requirement when an application includes a teaching of how to make and use invention “in terms which correspond in scope to the claims.” This mandate may be only ignored when there is a basis to doubt the objective truth of the teaching. (MPEP 2164.04).
So, unless a rejection articulates “evidence or some technical reasoning” that either (i) an enabling teaching does not correspond to the claims or (ii) a reason to doubt the objective truth of such a teaching, the mere presence of a teaching requires that the Office assume that this requirement is satisfied.
Bilski Transformation, claims that didn't make it
Claim 16 and Claim 18 were the focus of the Appeal and stated, respectively:
16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of:
generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and
synthesizing said additional information and content data for said digital content; and
wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.
18. An additional content detection method, for detecting additional information added to a digital content in order to determine whether said digital content has been processed, comprising the steps of:
detecting, from content data for digital content, multiple sets of additional information that are correlated with each other, but that in robustness differ from each other;
evaluating relationships dependent on a data string, the data string forming a predetermined message, existing between said multiple sets of additional information; and
determining, based on said detected additional information and the evaluation of said relationships, whether said content data has been processed, and determining the type of processing performed when said content data has been processed.
In explaining their Bilski analysis, the BPAI said that the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps. Thus, the claims fail the "particular machine requirement."
The BPAI's discussion of the "transformation requirement" is more interesting. They said that:
[h]ere we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world. These steps describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic "abstract idea." See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). As a whole, the claim involves no more than the manipulation of abstract ideas. See id.
The BPAI went on to say in other words that the claims were directed to merely looking at transforming one digital representation into another digital representation. As such, they are not within the scope of 101.
Copied from BPAI Watchdog.
16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of:
generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and
synthesizing said additional information and content data for said digital content; and
wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.
18. An additional content detection method, for detecting additional information added to a digital content in order to determine whether said digital content has been processed, comprising the steps of:
detecting, from content data for digital content, multiple sets of additional information that are correlated with each other, but that in robustness differ from each other;
evaluating relationships dependent on a data string, the data string forming a predetermined message, existing between said multiple sets of additional information; and
determining, based on said detected additional information and the evaluation of said relationships, whether said content data has been processed, and determining the type of processing performed when said content data has been processed.
In explaining their Bilski analysis, the BPAI said that the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps. Thus, the claims fail the "particular machine requirement."
The BPAI's discussion of the "transformation requirement" is more interesting. They said that:
[h]ere we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world. These steps describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic "abstract idea." See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). As a whole, the claim involves no more than the manipulation of abstract ideas. See id.
The BPAI went on to say in other words that the claims were directed to merely looking at transforming one digital representation into another digital representation. As such, they are not within the scope of 101.
Copied from BPAI Watchdog.
Appeal grounds, ideas
Successful appellants have proven factual errors including claim and reference interpretation errors. Similarly, successful appellants have proven legal errors including (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application. Finally, successful appellants included (a) thoughtful definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness. However, even if successful in overcoming the patent examiner’s rejection, appellants must consider the chance the Board will assert sua sponte rejections for claims that (i) do not recite patentable subject matter, (ii) are indefinite Hybrid claims reciting two statutory classes, (ii) lack enablement, and (iii) lack written description even for patentable claim features added in amendments during prosecution.
An applicant should appeal when properly interpreted claim language recites features that distinguish over properly applied references. In the heat of prosecution, Applicants sometimes lose sight that the pending claims need to clearly recite what is argued. If the pending claims can be amended to better support the arguments, a request for continued examination should be filed with claim amendments instead of an appeal. However, if the applicant believes that the invention has been optimally claimed and that the claims are distinguishable over the applied references, continuing prosecution is usually an inefficient use of resources. Rather, appealing the application is necessary.
Take Aways
Appeal to the Board is worthwhile since after successful appeal to the Board 80% of applications issue as patents.
Factual errors include claim and reference misinterpretations by the patent examiner.
Legal errors include (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application.
Success on appeals can increase when appellants include (a) definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness.
Appellants must balance success on appeal with the risk of narrow claim interpretations and sue sponte rejections for claiming non-patentable subject matter or amended claims that, although allowable over art, fail written description requirements.
In the end, Appealing final rejections from "hard-line" patent examiners may be an applicant’s only chance for reversing improper obviousness rejections to obtain an allowance for their application.
Copied from BPAI Watchdog, here. http://bpaiwatchdog.blogspot.com/
An applicant should appeal when properly interpreted claim language recites features that distinguish over properly applied references. In the heat of prosecution, Applicants sometimes lose sight that the pending claims need to clearly recite what is argued. If the pending claims can be amended to better support the arguments, a request for continued examination should be filed with claim amendments instead of an appeal. However, if the applicant believes that the invention has been optimally claimed and that the claims are distinguishable over the applied references, continuing prosecution is usually an inefficient use of resources. Rather, appealing the application is necessary.
Take Aways
Appeal to the Board is worthwhile since after successful appeal to the Board 80% of applications issue as patents.
Factual errors include claim and reference misinterpretations by the patent examiner.
Legal errors include (a) non-analogous art cited by the patent examiner, (b) impermissible hindsight by the patent examiner, (c) inoperable combination of references, and (d) references cited by the patent examiner that taught way from the patent application.
Success on appeals can increase when appellants include (a) definitions of a person having ordinary skill in the art (PHOSITA) and (b) records having evidence of secondary indicia of non-obviousness.
Appellants must balance success on appeal with the risk of narrow claim interpretations and sue sponte rejections for claiming non-patentable subject matter or amended claims that, although allowable over art, fail written description requirements.
In the end, Appealing final rejections from "hard-line" patent examiners may be an applicant’s only chance for reversing improper obviousness rejections to obtain an allowance for their application.
Copied from BPAI Watchdog, here. http://bpaiwatchdog.blogspot.com/
Software per se--arguing against 101
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20082854-02-27-2009-1
Above is aBPAI decision stating that "a component executing on a computer" in the body of the claim means that the claim is not software per se.
"Regarding the non-statutory test, while the storage of information in independent claim 1 could arguably be done as a mental process, the recitation of a structured relationship between multiple stores that requires 'path information' inherently implies that this information must be stored on a computer or database. This 'particular' computer or database is sufficient structure to meet the machine prong of the machine-or-transformation test of In re Bilski."
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20083475-03-28-2009-1
Ex parte Borenstein.
Above is aBPAI decision stating that "a component executing on a computer" in the body of the claim means that the claim is not software per se.
"Regarding the non-statutory test, while the storage of information in independent claim 1 could arguably be done as a mental process, the recitation of a structured relationship between multiple stores that requires 'path information' inherently implies that this information must be stored on a computer or database. This 'particular' computer or database is sufficient structure to meet the machine prong of the machine-or-transformation test of In re Bilski."
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20083475-03-28-2009-1
Ex parte Borenstein.
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