Mr. IP Law | Your inside perspective on Intellectual Property
Articles about patent and prosecution issues at the United States Patent and Trademark Office regarding examiner behavior, rules and regulations, administrative law and responding to office action rejections.
Since being issued in 2007, the U.S. Supreme Court’s decision in the case of KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) (herein referred to as “KSR”) has made it more challenging to overcome rejections under 35 U.S.C. § 103. Prior to KSR, a test known as “TSM” (teaching-suggestion-motivation) required the Patent Office to prove some motivation to make a combination or changes to a reference.
In KSR, the Supreme Court held that the TSM test for obviousness was too rigid, and that “the obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by over emphasis on the importance of published articles and the explicit content of issued patents”.
Unfortunately however, in weakening the TSM test, the expanded another aspect of obviousness that has shown a great potential for overuse by Examiners . That aspect is known as “obvious to try.”. Specifically, the KSR decision held that:
“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation, but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103”.
Thus, the KSR decision has opened the door for the USPTO, who is all-to-read to apply the “obvious to try” rule by simply finding all elements of a particular claim in one or more pieces of prior art, and asserting the claim as being obvious to try to one skilled in the art.
Given the Supreme Court’s support for this type of rejection, and the ease with which an examiner can apply it to almost any claim, such rejections may be difficult to overcome. As an example, consider a situation where two or more actions are claimed in a method, and where the particular actions are claimed as being conducted at novel times or novel instances of other actions. For instance, a magnetic resonance imaging (MRI) scan, where an example claim states to conduct a first action during the scan, and conduct a second action after the scan. For illustrative purposes, assume the first action and the second action are taught in the prior art, but not at the specified times, and furthermore, no prior art is directed to “after the scan”.
In such a case, an examiner may state that, for an MRI scan, there can only be “scan” or “non-scan” conditions (in other words a finite number of identified, predictable solutions as held by the KSR decision), and thus for the two claimed actions, it would be obvious to try them during the scan and non-scan times, even though the most relevant prior art did not specifically disclose the non-scan limitation. What makes such a rejection so sinister is that in applying the “obvious to try” rationale, the examiner is using the applicant’s recognition of how to divide conditions against the inventor (e.g. dividing the MRI scan into scan and non-scan), even though it is that recognition that may be one of the novel and non-obvious aspects of the invention. In other words, while it may be obvious to try two actions (e.g. the first action and the second action) if those actions are known, it is not necessarily true that it would be obvious to break the universe of times to carry out those actions into two specific and different operations at specific times (e.g. “during” the scan and “after” the scan).
Fortunately, a recent non-precedential opinion may prove useful for providing guidance in overcoming such rejections. The case involved Google LLC (“Google”) vs. At Home Bondholders’ Liquidating Trust (“At Home”). Briefly, Google stated that a number of claims of U.S. Patents 6,286,045 and 6,014,698 to At Home were unpatentable as obvious. The claims at stake related to “non-blockable requests” issued by a user’s terminal over a network to retrieve banners commonly used for advertising purposes. For the obviousness claim, Google relied solely on U.S. Patent 5,933,811 (“Angles”) as teaching non-blockable requests by virtue of Angles disclosing an advertisement request that references a common gateway interference (CGI) script. According to Google, a person of ordinary skill in the art would understand that disclosing a request to execute a CGI script would also disclose a non-blockable request, because there are only two options – either the request is blockable or non-blockable Specifically, at oral argument, Google characterized a “request” as a genus consisting of two species: blockable requests and non-blockable requests. This looks much like the reasoning with obvious to try rejections where the Examiner cannot find a teaching of the specific times (before and after a scan), but alleges they are obvious to try because there are only two. The Court rejected this reasoning, as it should, noting that it was a “good try” but ultimately fails.
So, remember that absence of disclosure coupled with the obvious to try rationale should not be used as bootstrap by Examiner to nullify an inventor’s recognition of how to break something down into a limited number of options. KSR requires that there be “a finite number of identified, predictable solutions.” If the inventor is the one who recognized how to identify the limited number of options, then that those options would not be “identified” by the state of the art as in KSR.
Looking to the example of above, if the prior art does not recognize how to properly divide a genus (e.g. MRI scan procedure) into two specific species (e.g. scan and non-scan), then it cannot be rendered obvious to try, due to lack of disclosure. Stated another way, it is only the inventors who have recognized how to properly divide the genus, and such a division of genus cannot be obvious to try if prior art does not recognize such a potential division of genus.
Time will tell if such an argument will be persuasive in overcoming obvious to try rejections, but we think such an approach is worth considering in the right situation.
Actually the heading of the case is Match Group, LLC v. Bumble Trading Inc. The history between Bumble and Tinder has been documented in various articles, and the complaint (available here.) obviously puts Tinder's spin on, focusing on the idea of former employees leaving and unfairly creating a competing site/app that does the same thing. Of course, absent some form of intellectual property protection, there really is no other way to stop this kind of behavior.
The complaint alleges, among other things, patent infringement (both utility and design). Tinder is relying in part on a relatively recently issued patent (US 9,733,811). Looking at the prosecution history of the '811 reveals some interesting issues. The case was allowed after a first office action in which the rejection was overcome through the use of a Rule 1.31 affidavit. The examiner had cited a reference (Janssens, US 20140040368), which had a priority date of August 6, 2012. The '811 application had a filing date of Oct. 21, 2013 and claimed priority to a provisional application filed March 15, 2013 (as well as a much older previous application from 2008). Obviously unable to rely on the 2008 date, Tinder moved to disqualify the Janssen reference by proving earlier conception.
Thus, Tinder is required to prove conception prior to August 6, 2012 and diligence up through at least the provisional date of March 15, 2013 (assuming the provisional application supported the claims), or prior conception with an actual reduction to practice. Here, Tinder's affidavit alleged actual reduction to practice by provide example source code and screen shots of a working application that was developed prior to the August 6, 2012 date. Note that the screen shots do not appear to be from before August, 2012; rather, they appear to recent but generated from the prior-developed software.
While the Examiner accepted this evidence, it will for sure provide a rich source for discovery and future attacks in the litigation. Tinder will no doubt have to prove that the reduction to practice included every element in the issued claims, among many other issues. However, that is not all. It turns out the person that signed the declaration was not listed as an inventor, and Tinder had to amend inventorship. This too will be a potential point of attack for the defendants in the litigation.
Tinder will also likely attack the patent through an IPR, as well as alleging that the claims are invalid under Section 101 before the District Court judge. However, Tinder has wisely maintained multiple continuation applications (15/016,662 filed on 02-05-2016, recently allowed, and 15/676,773 filed on 08-14-2017, unavailable at present in PAIR) that should help reduce the negative impacts of an IPR.
It will be interesting to watch this case to see how it develops. But in any event, software companies who say they don't need patents should re-evaluate what they would if they find themselves in a similar situation where the "stuff" is hitting the fan and perhaps the company's future is at stake.
Most ex parte appeals at the PTAB are primarily determined by the judge designated to take the lead on the case. There are so many cases to handle, most judges do not take the time to dissent, even if they might disagree with the decision. So, when you see an actual dissent, it's probably worth reading.
A recent case illustrates disagreement over, you guessed it, Section 101. The case is SN 14/012,997 handled by Bay Area firm Wilson Sonsini. The decision affirmed the Section 101 rejection. The main claim on appeal recited a series of "modules" for various operations related to web pages.
The majority opinion reads like most Section 101 affirmances... the claims recite data gathering and other things could be performed by a human... affirmed. There really is nothing out of the ordinary about the decision and many claims that seem technologically more developed than this claim are also affirmed as rejected by the PTAB on a daily basis.
But here, one of the PTAB judges (judge Moore), dissented and wrote a clear, concise argument that, like many other cases on appeal, would seem to be quite convincing. From the dissent:
So, perhaps there is some hope if more judges at the PTAB can start to follow precedent and think about the technical solutions being claimed, rather than jump to the idea of mere data gathering for an easy affirmance. I'm not holding my breath.
The USPTO is gearing up for the historic issuance of the ten millionth U.S. Patent. A new patent cover design was just released, which is just the second time in a hundred years. According to the USPTO website, the new design "pays homage to the classic elegance of its predecessors" and was unveiled March 11, 2018 at the South by Southwest (SXSW) festival in Austin, Texas.
The USPTO expects to issue U.S. 10,00,000 sometime this summer. U.S. 9,000,000 was just issued back in 2015 for a system and method of collecting and conditioning rainwater and other moisture, such as dew, from a windshield of a vehicle and utilizing the collected fluid to replenish the fluids in the windshield washer reservoir. A collection funnel is positioned on a vehicle in order to collect rainwater and other moisture. Rainwater and other fluids from the collection funnel are directed to a conditioning cartridge where the water is de-ionized and windshield washer fluid is added. The cartridges are designed to be single replaceable units. The mixed fluid from the mixing cartridge is directed to the pre-existing windshield washer reservoir.
What is in store for 10,000,000 is anyone's guess.
As indicated in previous posts, we have been reviewing the results of our FOIA request regarding the out come of restriction petitions across the USPTO. Today we review an example of how to attack an "election by original presentation" restriction that examiners sometimes use to limit an applicant's ability to make amendments to avoid cited art. This can be an effective tool for the examiner and making it easy to maintain rejections. On the flip side, these restrictions can be game changers in terms of destroying an applicant's chances in overcoming rejections.
An "election by original presentation" restriction is simply a restriction requirement made sometime after substantive prosecution begins. Examiners typically cite 37 CFR 1.142(b) and MPEP 821.03. The rule confirms that "[i]f, after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered..." However, some examiners take this rule in isolation and believe that they can skip the fundamental elements of a proper restriction - namely establishing that the claims are independent and distinct, and that there is a serious search burden.
NXP had a case in point and properly petitioned the restriction straight away. Specifically, in US 14/645,198, related to an antenna tuning circuit, NXP filed an amendment responsive to the first office action to add an additional independent claim that was more specific than the other pending independent claim 1. The examiner objected, and refused to consider the new claims because they were allegedly restrictable. The examiner explained the restriction as follows:
Claims 1 and 10, as subsequently amended, illustrated a substantial overlap in elements:
The situation here is common, and NXP took the sensible step of petitioning the restriction. Even though the examiner is relying on election by original presentation, that does not relieve the examiner of the duty in establishing a proper restriction in the first place. NXP pointed out these issues in its petition and the Office agreed, granting the petition. The Office concluded that:
So, the next time an examiner improperly tries to limit your amendments by relying on election by origional presentation rationale, do not be afraid to petition and point out the examiner's failure to establish a proper restriction in the first place, such as by failing to establish a serious search burden, or failing to provide a proper explanation of how the claims are independent and distinct.
The United States Patent and Trademark Office, as of the end of FY 2017, had 8,147 patent examiners according to the PERFORMANCE & ACCOUNTABILITY REPORT. In my experience, a very large percentage of those examiners try their best to provide a fair examination - applying the rules and case law in a consistent and reasonable way.
But there are pockets of examiners that, unfortunately, do not follow the rules and are determined to reject. They employ numerous tactics in an attempt to wear down applicants and convince them to simply give up. It is important to recognize these tactics so that early action can be taken to minimize the damage cause by such examiners. Unfortunately, the USPTO currently tolerates (and perhaps even encourages) such tactics. It remains to be seen whether the new director will address any of these abuses.
Surely there are claim sets that require restriction. The Office as a whole is relatively restriction-prone (with some art mechanical art units as high as 50% on average), but some examiners take it to another level. When an Examiner restricts 75% of cases on their docket, for example, while the average in their unit is well below 50%, this should raise a red flag to the quality review professionals within the Office. It should also be a red flag to applicants if they draw a restriction-prone examiner as it could indicate the examiner is using the restriction to not only increase the applicant's costs, but to limit their ability to amend during prosecution (see a previous post on this point).
Tactic #2 - Asking Inane Questions
Another tactic used by examiners intent on rejecting is to make the applicant dance, so to speak. They try to create confusion and ask unanswerable and irrelevant questions. They invent contradictions when none exist. They try to get the applicant to meet an impossible level of specificity and clarity, and there is no end it. Sowing the seeds of confusion is their goal with the hope of wasting multiple office actions and RCEs without ever really getting to the substantive issues or completing an appropriate search. The downside for the examiner is low - even if the applicant eventually appeals and wins, then they will simply reopen prosecution at that point and start the "real" search and examination.
Tactic #3 - Never-ending Prior Art
A good examination starts with a good search. Unscrupulous examiners have learned, however, they they benefit greatly from poor searching. For example, an examiner can make a poor search and a poor rejection (with little time invested), and some applicants will nevertheless amend in the hopes of being reasonable and compromising with the examiner. However, examiners bent on rejections simply do more searching and make further rejections. This goes on and on. Since the examiner is not really concerned with performing a good examination, it is easy to constantly find more references and make new rejections with the hope that eventually they will find the right combination of prior art that will stand up on appeal, or the applicant will simply give up.
There are many more tell-tale signs, but we will leave those for another day and another post. In the remainder of today's post, a quick example is provided of how to handle some of these shenanigans. In this example, the invention is a fuel control system owned by Denso (sn 12/766,030). This case is a real doozy. Of course it had a questionable restriction, but the focus here is on the subsequent appeal.
The invention relates to a fuel pressure controller for a direct injection engine having both a high-pressure pump and a low-pressure pump. Such fuel systems are becoming ubiquitous in modern vehicles as the direct injection system allows improved fuel economy and more accurate fuel injection control in order to lower exhaust emissions.
The Denso invention provided a learning means for performing the low pressure fuel pump control when the high pressure pump stops discharging fuel. The Examiner complained that the claim was not clear by purposely confusing the set-point pressure with the actual pressure. The claim was quite clear on this point, referring to the situation where the target low fuel pressure is set to a specified value. In such a case, the system corrected to the control so that fuel pressure in the low pressure fuel passage was increased from a value lower than the specified value. The examiner contended that:
If this was not enough of a red herring, the Answer went on further:
The applicant had the good sense to appeal straight away without wasting more time and effort. This was especially true as the examiner effectively failed to perform a proper examination under Sections 102/103 alleging that such an examiner was not possible due to the (contrived) lack of clarity.
The board disposed of the appeal quickly and succinctly, noting that:
Continuing with the improper 103 rejection, the Board explained that they will not sustain rejections where the Examiner has not addressed explicit claim limitations by providing a citation to a reference that teaches the claim limitations. Merely relying on alleged claim inconsistencies does not render an applicant's argument that the rejection is improper moot. The Board concluded with an admonishment as follows:
So, the next time an examiner's actions or statistics indicate prosecution will be difficult, do not let them lead you down the primrose path. Develop a strategy early in prosecution like Denso and hunker down. Maybe some day the USPTO management will use the data they already have at their fingertips to cut down the wasted effort and unneeded expense caused by these pockets of examiners operating well outside the norm.
When an applicant appeals an Examiner's rejection, the applicant is bound to the record as it exists at the time of the appeal, meaning that generally no further substantive claim amendments are allowed, nor is further evidence allowed as a matter of right. At the same time then, it is only fair that the Examiner not be allowed to change the rejection in the Examiner's Answer. Yet, often, Examiners give additional explanation and details that do effectively change the basic thrust of the rejection.
The rules allow the Examiner to enter a new ground of rejection in an Answer, but require that the Examiner designate it as such. 37 CFR 41.39(a)(2), MPEP 1207.03. The rule states that while such action is permissible, the Examiner should either reopen prosecution or set forth the new ground of rejection in the Answer. Further, if the Examiner designates the new ground of rejection in the Answer, the applicant then has the option to re-open prosecution, or continue with the appeal and file a reply to maintain the appeal.
However, in many cases the Examiner effectively presents new grounds of rejection without designating them as such, denying the applicant the right to re-open prosecution without having to file an RCE. The rules governing whether a new ground actually exists are explained in MPEP 1207.03(a). The MPEP give several examples and explains that the issue:
... is a highly fact-specific question. See, e.g., Kronig, 539 F.2d at 1303, 190 USPQ at 427 (finding new ground entered based upon "facts of this case" and declining to find other cases controlling given "the distinctive facts at bar" ); In re Ahlert, 424 F.2d 1088, 1092, 165 USPQ 418, 421 (CCPA 1970) ( "[l]ooking at the facts of this case, we are constrained to hold" that a new ground was entered). If a situation arises that does not fall neatly within any of the following examples, it is recommended that the examiner identify the example below that is most analogous to the situation at hand, keeping in mind that "the ultimate criterion of whether a rejection is considered ‘new’ * * * is whether appellants have had fair opportunity to react to the thrust of the rejection." Kronig, 539 F.2d at 1302, 190 USPQ at 426.
So what do you do if you think you have a situation with a new ground not designated as such? The answer is you accept it an address the issue as best as possible in a reply brief, or petition.
The petition falls under 1.181 and is explained in MPEP 1207.03(b). To see how applicants fared in such petitions, we filed a FOIA request with the USPTO asking for the results of all such petitions over a 2 year period. The first interesting result of this request was that not many applicants petition in this situation, but when they do it is generally difficult to win (more on the statistics in future posts). One successful petition is illustrated in SN 13/483,015. Here, the Office agreed with the applicant that the Examiner's answer included a new ground of rejection when the Examiner's supporting rationale for why the reference showed the limitations of claim 1 changed. Specifically, the Office agreed with the applicant that the Examiner, for the first time in the Answer, presented a new argument citing a new teaching in the primary reference and thus changed the basic thrust of the rejection.
An interesting aside is that the deadline to file a reply brief is non-extendable as a matter of right, unlike almost every other paper an applicant files in response to a rejection (the application has 2 months to file a reply to the Answer). However, the filing of a petition alleging a new ground of rejection tolls the deadline. Thus, it could be that many of the petitions in this situation are filed in dubious circumstances with the goal of merely extending the deadline.
So, when you feel that you have a new ground of rejection in an answer not designated as such, consider a petition to preserve your right to re-open prosecution and have new amendments or evidence entered without the cost of an RCE.
Describing the components of a control system in a patent application can be challenging, especially as control systems grow increasingly complex.
One option to make life easier when describing such control systems may be to include a block diagram of the control system in addition to drawing and describing the specific sensors, controller, and actuators of the device.
For example, the block diagram may show a group of sensors communicating with a controller, and a controller communicating with a group of actuators. The relationship of actions between the sensors, the controller, and the actuators in the block diagram may then be described, noting that the block diagram components encompass the specific sensors, controller, and actuators of the device.
Including a block diagram in addition to drawing the specific components of the device can be useful during prosecution. For example, the block diagram may be used as support if Section 101 (Alice) issues arise. Or, if a specific sensor described in the specification was not drawn into the device, the group of sensors in the block diagram may be pointed to as showing this sensor in the drawings.
By taking just a little extra time to block out the control system in a patent application, you can effectively construct an extra layer of support for issues that may arise during prosecution.
An inventive method may have more than one step as part of the process. When a patent applicant claims an inventive method including multiple steps, the order listed is not a limitation of the claim, unless the explicitly or implicitly stated in the specification or claim itself. This is a well-settled principle, but one that becomes complicated in practice.
In in recent PTAB appeal decision in a Microsoft application (13/076,460), the issue was fundamental to the appeal. The application related to a method for revoking licenses to software. Microsoft's relatively short brief implicitly relied on a relationship between steps of the method in attacking the Examiner's rejection. Specifically, the PTAB addressed the issue directly in the decision affirming the Examiner's rejection noting that antecedent basis itself cannot overcome the presumption that method steps are not limited to the order in which they are recited.
Claim 1 of the application is listed below, and requires two sending steps (the last two steps in claim 1):
Microsoft implicitly relied on an argument that the sending of the replacement license credentials must be after the sending of the indication that the license credentials are revoked. Specifically, Microsoft argued that in the cited art, the activation (or re-activation) does not send license because it is performed during a purchase occurring before the activation. The PTAB found this unpersuasive as not commensurate with the scope of the claims. Namely, the PTAB found that reliance on antecedent basis was improper, and that the claim did not require a specific order. The mere fact that the second "sending" element referred to "replacement" was insufficient because the dictionary definition of replace (to take the place of) had no temporal aspect. From the PTAB's opinion:
So, when appealing to the PTAB, be careful that the arguments against the rejection do not rely (explicitly or implicitly) on an order between the steps that is not actually claimed.
Life Technologies Corporation is the owner of US 13/607,128, directed to methods for detection of analytes associated with or resulting from a nucleic acid synthesis reaction. Specifically, the invention provided a method for manufacturing a chemically-sensitive FET. The inventors recognized issues with known approaches aimed at reducing possible gate oxide degradation during plasma processing. The specification explained that:
one potential issue relates to trapped charge that may be induced in the gate oxide ... during etching of metals associated with the floating gate structure ..., and how such trapped charge may affect chemFET threshold voltage Vtit Another potential issue relates to the density/porosity of the chemFET passivation layer (e.g., see [ionsensitive FET] ISFET passivation layer ...) resulting from lowtemperature aluminum metal-based CMOS fabrication. While such low temperature processes generally provide an adequate passivation layer for conventional CMOS devices, they may result in a somewhat low density and porous passivation layer which may be potentially problematic for chemFETs in contact with an analyte solution; in particular, a low-density porous passivation layer over time may absorb and become saturated with analytes or other substances in the solution, which may in turn cause an undesirable time-varying drift in the chemFETs threshold voltage Vth . This phenomenon may in turn impede accurate measurements of one or more particular analytes of interest. In view of the foregoing, other inventive embodiments disclosed herein relate to methods and apparatuses which mitigate potentially adverse effects on chemFET performance that may arise from various aspects of fabrication and post fabrication processing/handling of chemFET arrays.
The inventive method included depositing an additional passivation material on the chemically-sensitive passivation layer to reduce porosity and/or increase density. Pending claim 1 is set forth below.
Life Tech. faced an examiner that took a common approach of reading the claim language of "connect" rather broadly. So, to get around the cited art, Life Tech. amended the claim to require a direct connection ("forming a diode to directly connect the floating gate structure to the semiconductor body"). This direct connection was clearly illustrated in the figures, but the specification did not use the word "directly."
And so the Examiner then turned to written description (and new matter). This is a common tactic used by examiners - take an unreasonably broad reading of the claim term (to facilitate a prior art rejection), and then when the applicant amends to claim to avoid the overly-broad interpretation, turn around and allege that the amendment is not supported. This is so common because it is virtually impossible to draft a specification with every word needed to negate an unpredictable overly-broad interpretation. And in most cases, the Examiner follows this approach since they are unable to find prior art showing the amended claim features and it is relatively little effort to maintain a rejection by turning to the malleable test for "possession" of the invention.
Here, on appeal, the Board recognized that the figures can be relied-upon to support the direct connection language since they did indeed show the direct connection as claimed.
So, watch out for 112 rejections that seem odd - they are likely hiding an underlying deficiency with the prior art. It is often the case that issues of clarity or possession are used to cover-up for loose interpretations and areas where the cited art is lacking.
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