From Blog to Publication
I plan to start blogging again. I want to publish an article on obviousness of ranges. So I will focus this blog on that topic until I gather together enough material and inspiration to submit a publication on the topic.
I plan to start blogging again. I want to publish an article on obviousness of ranges. So I will focus this blog on that topic until I gather together enough material and inspiration to submit a publication on the topic.
Returning to the topic ("beyond reasonable claim interpretations"), I previously posted four decisions by BPAI including the words "beyond reasonable". Three of those decisions, Appeal No. 2007-2336, Appeal No. 2007-2147 and Appeal No. 2007-3516) relate to whether the rejection "would require (the Board) to resort to speculation and strain the reference's teachings beyond reasonable limits." Accordingly, they are off topic. The other decision, Appeal No. 2007-2463, relates to whether claim interpretations are "beyond reasonable".
Preliminarily, the previous post and corresponding research strayed off course. The purpose of the blog is to make the blogger a better patent practitioner. The method of becoming a better patent practitioner is to choose and research a topic. The chosen topic was "what claim interpretations are so broad that they are beyond reasonable". However, the first post instead dealt with the issue of interpretations of the prior art that were beyond reasonable. Accordingly, the course must be corrected. That said, lets stay off course for now because the purpose is more important than the plan.
First lesson relates to the Board surprisingly delving into the details to support the rejection. The Examiner's rationale was (1) Scholl teaches a diagnostics system that addresses component failures of a vehicle, (2) the vehicle of Scholl includes an information handling system, and (3) therefore, Scholl teaches diagnosing component failures of an information handling system. In contrast, the Board explained, although not clearly, that (1) Scholl teaches gathering computer-based model parameters, (2) that Scholl teaches producing a fault code in response to a parameter operating outside of its preset range, (3a) deducing that Scholl teaches producing a fault code in response to a computer-based model parameter operating outside of its preset range, or maybe instead (3b) determining that gathering computer-base model parameters would inherently include failures of the of the computer-based model parameters, and (4) concluding, but not expressly, that detecting failures of the computer-based model parameters would equate to detecting a hardware component failure of an information handling system.
In the past, the Office routinely issued rejections stating, for example, that claims 1-10 are anticipated by Smith, without any further explanation. Although that has changed, maybe the Board's standards for reviewing rejections haven't. Accordingly, due to my experience of reviewing this decision and my impressions from other Board's decisions, it seems the current Board's function is not to judge between the Examiner's position and the Applicant's position. If a rejection can arguably be supported by the cited prior art, then the rejection will be upheld even under a very different rationale.
This seems unfair but a remedy is available, 37 CFR 41.52 gives the Applicant a "single request for rehearing within two months of the date of the original decision of the Board," as happened in previous post. However, "(a)rguments not raised in the briefs before the Board and evidence not previously relied upon in the brief and any reply brief(s) are not permitted in the request for rehearing." 37 CFR 41.52. Although the Board can create a new rationale to support the Examiner's rejection, the Applicant cannot raise new arguments in response?
As for what might be the first lesson from all this... appeal when the claims overcome the prior art, not merely when the Examiner's rationale for applying the prior art is deficient.
Yet, that wouldn't have helped the Applicant in this case because the Board's reinterpretation of Shaw was not realistically foreseeable.
The Board upheld the Examiner's rejection of claim 1 of App. No. 10/365,855, determining that Scholl discloses "diagnostic failure of a hardware component of an information handling system". This one is a puzzle.
Shaw relates to remotely diagnosing hardware failures in information handling systems. Claim 1 recites a system comprising "a diagnostics module integrated with the information handling system and operable to detect a hardware component failure of the information handling system..."
Claim 1 was rejected as anticipated by Scholl. Scholl discloses a method and system for relaying information from a fleet of vehicles to a remote service support hub. Each vehicle includes a microprocessor-based monitor including sensors. Upon receiving data from sensors indicating that a component in the vehicle is not performing inside a preset range, the diagnostics module generates a fault code. The generated fault code is then communicated to a vehicle specialist at the remote service support hub, which then decides how to remedy the identified fault.
Accordingly, it's clear that Scholl discloses detecting a hardware component failure of a vehicle, wherein the vehicle includes an information handling system. The issue is whether Scholl discloses detecting a hardware component failure of the information handling system itself.
The Board latched onto a section of Scholl (col. 5 lines 7-22) which discloses gathering information from a number of sources, wherein the parameters gathered includes: date, engine speed, fuel rate, oil pressure pump, boost pressure, engine timing, atmospheric pressure, air filter D/P, intake manifold temperature, fuel temperature, exhaust temperature, computer-based model parameters, time vehicle speed, oil pressure rail, rack, collant temperature, inlet air pressure, intake manifold pressure, inlet air temperature, and brake temperature. And since Scholl teaches (col. 4, lines 5-17) producing a fault code in response to a parameter operating outside of its preset range, the Board deduced that "Scholl discloses that the detected fault may also include data pertaining to the performance of the computer-based data model. Thus, Scholl's diagnostics module not only detects faults in the components of the vehicle, which includes the computer-based monitor, it also detects faults in the components of the computer-based monitor itself."
I hope that was understood. Nothing in Scholl suggests the concept of detecting faults in the components of the computer-based monitor. Scholl gathers all the information from the list and stores the gathered info into a storage medium for later use. I'm guessing that the Board's rationale is that gathering computer-based model parameters would inherently include also gathering any faults in the computer-based model parameters. This was frustrating because the Board's creative argument supporting the rejection was entirely different than the stated position of the Examiner.
Regardless, even after stretching the reference, the Board's decision is still deficient. That Scholl arguable teaches detecting faults in the computer-based data model does not equate to detecting a hardware component failure of the information handling system. Conveniently, the word "hardware" was entirely left out of the Board's analysis. Therefore, the Board's position is wrong for at least that reason.
The BPAI decided Appeal No. 2007-2336 on January 4, 2008 for application No. 10/365,855 to Shaw.
The decision focused on three pivotal issues
The Board upheld the Examiner on the first and third issues, but reversed the Examiner on the second issue, stating that the construing Scholl as disclosing automatically initiating shipping would "require us to resort to speculation and strain the reference's teachings beyond reasonable limits."
The goal is to address the question:
Upon conducting a quick search for "beyond reasonable" at the BPAI database, four decisions were discovered. A quick reading revealed that in each of the four decisions, the Board disapproved of the Examiner's claim interpretations because they were "beyond reasonable".
Here is a link to the four cases: http://des.uspto.gov/Foia/DispatchBPAIServlet?Objtype=ser&SearchId=&SearchRng=decDt&txtInput_StartDate=07%2F01%2F1997&txtInput_EndDate=&docTextSearch=%22beyond+reasonable%22&page=60
My just conceived plan is
So, my readers, please post your suggested topics in the comments section below, and also please post your suggestions on how to improve my plan.
My next step will be to decide on a first topic.
Just conceived today, the purpose of this blog is hereby defined: "making the blogger a better patent practitioner through research of the past and the other's viewpoints of others of the blogger's research."
Accordingly, the blogger believes that merely researching the past without receiving the viewpoints of others would render the blogger vulnerable to his own false conclusions resulting from the research, and that merely receiving the viewpoints of others without researching the past would render the blogger vulnerable to everyone else's false viewpoints.
Hereafter, the blogger will attempt to operate under this purpose.
On Dec. 12th, 1999, Reexamination No. 90/005,589 of U.S. Patent No. 5,940,464 was requested by Westinghouse Electric Company. On May 12, 2006, the Board of Patent Appeals and Interferences decided Ex parte Framatome ANP, upholding rejections of claims 1-4 as being obvious over U.S. Patent No. 4,649,023 to Sabol et al. assigned to Westinghouse Electric Company.
Understanding claim 1 is sufficient. Claim 1 recited,
A tube of zirconium-based alloy for constituting all or the outside portion of cladding for a nuclear fuel rod or of a guide tube for a nuclear fuel assembly, made of a zirconium-base alloy containing, by weight,0.8% to 1.8% niobium, 0.2% to 0.6% tin, and 0.02% to 0.4% iron, plus inevitable impurities, and having a carbon content controlled to lie in the range of 30 ppm to 180 ppm, a silicon content in the range 10 ppm to 120 ppm, and an oxygen content in the range 600 ppm to 1800 ppm."
In comparison, Sabol disclosed a range of alloys having 0.5-2.0% Nb, up to 1.5% Sn and up to about 0.25 of a third element such as iron, and Sabol's only exemplary embodiment had 0.9-1.1% Nb, 0.9-1.1% Sn, 0.09-0.11% Fe, 120 ppm of carbon, 1000-1600 ppm of oxygen and 80 ppm of silicon. Accordingly, Sabol clearly anticipated each range of claim 1 except Sn.
In upholding the rejection of claim 1-4 as being obvious in view of Sabol, the Board reasoned at page 6,
Although Sabol does not expressly describe an example of a zirconium alloy comprising amounts of niobium, tin, iron, carbon, silicon and oxygen within the ranges recited in claim 1, Sabol does describe a zirconium alloy comprising amounts of niobium, tin and iron which overlap the claimed ranges. See In Re Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976) (where the difference between the claimed invention and the prior art is overlapping ranges, the appellant must show that the particular ranges are critical). Sabol also indicates that a zirconium alloy in accordance with the disclosed invention would contain amounts of carbon, oxygen and silicon within the ranges of carbon, oxygen and silicon recited in appellant's claim 1... The examiner correctly points out that the phrase "up to" includes zero. Answer at 4. This range (up to 1.5%) encompasses the range of tin recited in claim 1 (0.2% to 0.6%). However, the appellant argues that the teachings of Sabol as a whole would have led one of ordinary skill in the art away from the tin concentration recited in claim 1... The appellant argues that this passage would have suggested to one of ordinary skill in the art that an amount of tin below one percent should be avoided. We disagree... nothing in Sabol suggests that an amount of tin as low as 0.6% would not provide the desired corrosion resistance.
To summarize, (1) "up to 1.5%" includes zero, (2) prima facie obvious because 0 to 1.5% overlaps with 0.2 to 0.6%, and (3) Sabol does rebut prima facie obviousness because Sabol does not suggest that low tin content would not work.
Appellant then on July 12, 2006 filed a request for rehearing pursuant to 37 CFR 41.52, and argued,
According to the Board, the statement in Sabol that the amount of tin in the disclosed zirconium alloy may be "up to 1.5 percent tin" establishes a tin range of 0.0 percent to 1.5 percent and therefore is sufficient to establish a prima facie case of obviousness that is not rebutted by Sabol... With all due respect, the Board incorrectly read the phrase "up to 1.5 percent tin" when it agreed with the Examiner that such a phrase supports a Sabol alloy having no tin. However true as a general matter it may be that a statement "up to X," when interpreted in isolation, supports a range of 0.0 to X, that interpretation is inappropriate for the phrase "up to 1.5 percent" in Sabol. When viewed in light of Sabol as a whole, this phrase does not specify a specific lower limit of zero percent for the tin concentration; it instead merely specifies that the upper limit is 1.5 percent. Indeed, the contention by the Examiner in the Answer that, on account of this phrase, Sabol fully supports a zirconium alloy that completely omits tin is undermined... (T)he entire Sabol specification requires every Sabol alloy to include tin, and... tin, according to Sabol, must be present to improve corrosion resistance, it makes no sense to say that providing no tin in the alloy would achieve the desired corrosion resistance... Thus, the statement "up to 1.5 percent tin" cannot be rigidly interpreted in a way that ignores the context provided by Sabol.
Since Sabol does not support a lower tin limit of 0.0 percent, the question then becomes what lower limit is in fact supported by Sabol... Given that the phrase "up to 1.5 percent tin" does not established in Sabol a range of 0.0 to 1.5 percent tin, it is not the case that Sabol establishes a prima facie case of obviousness, since there is no evidence in Sabol establishing an overlap with the claimed tin range. Therefore, the burden in not on Appellants to show that Sabol does not suggest an amount of tin below 1.0 percent.
Unfortunately, on July 12, 2007, the Board declined to address the merits of this argument, stating "Appellant did not present this argument in its (Appeal) Brief. Therefore it is not entitled to consideration on rehearing."
Regardless, Appellants arguments are interesting. If successful, there would have been no overlapping ranges to establish obviousness, then there would have been no need for the Appellant to show that Sabol teaches away. Instead, the silence of Sabol would work for instead of against the Appellant.
In the original claims of U.S. Patent Application No. 10/314,993 (now U.S. Patent No. 6,946,097) is recited,
Claim 1. A soft magnetic Fe-Co alloy comprising, in weight %,
Fe and Co such that the difference between the Fe and Co is at least 2%,
at least 35% Co, and
2.5% =< (V+Mo+Nb), wherein 0.4% =< Mo and/or 0.4% =< Nb.
In the First Office Action, claims 1, 2, 4-11, 13-15, 19-21, 28 and 29 were rejected as being anticipated by JP 09-228007 to Nagasaki et al. Specifically, Nagasaki disclosed exemplary alloy no. 35 having the composition by weight %: 49% Co, 2% V, 0.1% C, 2% Al, 2% Si, 2% Ga, 2% Cr, 2% Mo, 2% W, 2% Ti, 2% Nb, 2% Ni and 2% Cu, with the balance of ~29% being Fe, thereby unarguably anticipating claims 1, 2 and 4-9. Accordingly, claim 1 was amended and eventually allowed and issued.
Suppose the following hypothetical. Suppose the Examiner never discovered Nagasaki and allowed and issued the original claims. Suppose the patentee sued an infringer and the opposing party discovered Nagasaki. Or suppose the patentee wished to sue an infringer and discovered Nagasaki before filing suit. In these instances, the invalidity of claims 1, 2 and 4-9 due to Nagasaki would significantly reduce the enforceable claim scope.
One possible solution to this problematic hypothetical would have been to draft additional claim(s) including the transitional phrase "consisting essentially of". {The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (emphasis in original).} Thereby, the patentee gains the opportunity to argue that the differences in the composition of alloy no. 35 somehow results in not achieving the basic and novel characteristics of the claimed invention. If the argument is successful, then the claim(s) including "consisting essentially of" would not be anticipated (although could still be deemed obvious, but at least the patentee may get to the jury).
It seems to me that with alloy composition claims such as in this case, the risk of anticipatory prior art not being discovered by the Examiner is high. At the very least, including one dependent claim including "consisting essentially of" seems well worth the excess claim fee and would not require much extra work on the part of attorneys.
Yet only approximately one quarter of applications to new alloy compositions filed this decade include "consisting essentially of" claims. {A first search in class 420 (Alloy and Metallic Compositions) for "inevitable impurities" (an indicator of patents with novelty relying on composition) resulted in 176 applications. A second search also including the term "consisting essentially" resulted in 33 applications. The USPTO Published Applications Database includes all applications published since March 15, 2001.}
Do you believe "consisting essentially of" claims would be helpful during litigation to overcome otherwise anticipatory prior art? Should "consisting essentially of" claims be included in every application directed to a new alloy composition? To every application directed to a new composition? What other types of applications should routinely include "consisting essentially of" claims?
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