Dictionary Definintion of "Continously" Applied to Reverse Rejection

Ex Parte Timothy James Collin et al.
Decided: March 13, 2009

I find this decision interesting because the BPAI applied a dictionary definition for the term "continuously" because the applicant did not define that term in the specification. Also, I was happily surprised that there were no new grounds of rejection based on either Bilski or Nuitjen.

The subject matter of the Collins application was directed to a method and device for transmitting data on a channel within a given power range. The method and device begin transmitting data when a first condition has been met, such as a power level, a synchronization pulse, or a pseudo-random pause. The transmission stops when the power falls below the first power threshold or exceeds a second power threshold level.

Claim 1 of the application recited:

A method comprising the steps of:

receiving a carrier signal;

continuously monitoring the carrier signal for a first predetermined condition;

selecting a channel and continuously transmitting data on the selected channel if the first predetermined condition is satisfied and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition; and

ceasing the transmitting of the data on the selected channel if the second predetermined condition is satisfied during the transmitting of the data on the selected channel, wherein the first predetermined condition is satisfied based on one of, when a received power level exceeds a first threshold and a synchronization signal, and the second predetermined condition is satisfied based on the received power level.

The claims were rejected under 103. The term at issue was "continuously." The specification was silent as to the terms meaning. As a result, the Board referred to Merriam-Webster's Online Dictionary and defined "continuous" as "marked by uninterrupted extension in space, time or sequence." Using this definition, the Board determined that cited references did not teach "continuously transmitting data on the selected channel . . . and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition."

The Examiner had argued that the applicants narrowly construed the term “continuously." The Examiner found that a reference that repeated a loop pattern, when no acknowledgement was received, read on the above limitation. The Board disagreed and stated the reference included a delay period when no data is being transmitting within each loop, and thus the above limitation was not present. The Board also found another delay in the teachings of the reference.

Much to my surprise, there was no Bilski or Nuitjen analysis applied to the method claim.

Claim 6 was a system claim having elements such as:

a receiver for receiving a carrier signal;

a monitor ... for continuously monitoring the carrier signal;

a storage medium having data stored therein; and

a transmitter ...

The Board overturned the rejection of this claim using the same analysis above with respect to the term "continuously."

Again, there was no Nuitjen analysis. Also, there was no discussion of "storage medium." The specification did not define storage medium and we have seen the board apply both statutory and non-statutory definitions to this term on different occasions.

Congrats to the Applicants are in order.

New Poll Question

The new poll question is: "Will there be an en banc review of the Tafas decision?"

You can cast your vote on the right.

IS YOUR APPLICATION READY FOR APPEAL TO THE BOARD UNDER KSR?

To date, most of the focus on this blog has been on Bilski and 101. I thought it would be helpful to provide some insight into some other areas of interest at the BPAI. To get moving in that direction, I am happy to provide the first ever "guest post" on BPAI Watchdog. As the title shows, the focus of this post is obviousness (a.k.a. as 103).

The following post is by Jason D. Eisenberg. Jason is an associate at Sterne, Kessler, Goldstein & Fox, P.L.L.C.. This post contains content from a longer article on this subject, published March 11, 2009 by Law360. You can read that full article here.

The Supreme Court’s KSR v. Teleflex, 550 U.S. 398 (2007) decision dramatically impacted examination of patent applications by the U.S. Patent and Trademark Office. In our article, we outline the best way to structure an appeal to the Board of Patent Appeals and Interferences. In response to the KSR decision, patent examiners are increasingly denying patents asserting the protection sought is “obvious.” The increase in the number of rejections has led applicants to increasingly appeal the patent examiner's decisions to the Board.

As an example, the PTO reported the Board received about 6,385 ex parte appeals in the fiscal year 2008, almost double the 3,349 filed in fiscal year 2006, and concluding two consecutive years of 35% increases in appeals. The PTO reported that almost 950 ex parte appeals were filed per month at the Board since September 1, 2008. With this increasing workload, success at the Board requires careful groundwork in prosecuting the application and thoughtfully building the record for the appeal brief.

Over 200 post-KSR Board decisions that reversed the patent examiner were reviewed. Of these, emphasis was placed on the nearly 100 decisions in which the Board reversed the patent examiners’ finding of obviousness in the internet, software, circuits, and mechanical technologies (i.e., Technology Centers 2100, 2500, 2600, 2800, 3600, and 3700).

It was observed that a small group of 7-10 administrative patent judges appeared on many of the Board decisions reversing obvious rejections in the predictable arts.

In this post-KSR world, applicants have obtained reversals of the patent examiners rejections in only 25% of appeals in the predictable arts. The Board has provided glimpses into what the appellant needs to present to successfully challenge the patent examiner.

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.

The views expressed here are those of the author, and should not be attributed to Sterne, Kessler, Goldstein & Fox P.L.L.C., or to any of its present or former clients.

Applicant defines herself out of the realm of 101

Ex Parte Daniela Giacchetti
Decided: March 11, 2009

This decision continues the BPAI string of 101 rejections where the claims can cover both statutory and nonstatutory subject matter.

The claim at issue in this decision recited:

1. A method of enabling display of a simulated facial image, the method comprising:
[1] facilitating display,

• on a display device,
• of a plurality of templates,
• wherein at least some of the templates are representative of a portion of a face having a simulation of use of a beauty product;

[2] enabling selection of at least one of the displayed templates; and

[3] facilitating display,

• on the display device,
• of a simulated facial image
• including at least one displayed facial portion having a simulation of use of a beauty product,
• wherein the displayed facial portion having a simulation of the simulated facial image corresponds to a facial portion of the at least one selected template, and
• wherein the simulation of the displayed facial portion corresponds to a simulation of the at least one selected template.
  

The applicant provided the following discussion in her specification regarding certain words in the claims.

Enabling the image to be displayed may be accomplished in one or more of a variety of direct and indirect ways, including directly displaying the image on a display device, providing access to software that facilitates display, providing network access which enables display of the image on a user-controlled device, providing a dedicated use device, or cooperating with an entity who either directly displays the image or who helps the user to display the image.

As with the definition of "enabling display" above, the term "applying" and "selecting" are also to be interpreted as including direct and indirect actions, such as, for example, providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in applying and selecting.

The Examiner rejected this claim and those that depended from it as failing under 101. The Examiner reason, based on the above definitions, that the method steps of facilitating display and enabling selection did not require the actual display or selection step to be performed. Thus they could be understood as merely having an idea about how to arrange the selection of the information.

During the appeal, the applicant argued that the reference to direct activities made the claim statutory.

Not surprising, the Board agreed with the Examiner and confirmed the 101 rejection. They explained that during examination claims are given their broadest reasonable construction that is consistent with the specification. Relying on the above passages, the Board agreed that the applicant acted as her own lexicographer. They determined that the limitations of enabling and facilitating in the three steps of claim 1 to include indirect activity such as providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in what is enabled or facilitated. The BPAI concluded that broadest reasonable construction would not necessarily include that performance within the scope of the three steps in claim 1.

Using these definitions, the BPAI applied Bilski's machine or transform test. Their analysis stated that:

[t]hese process claims recite a series of process steps that are not necessarily tied in any manner to a machine, because the scope of the steps also reach activities that do no more than provide some access or aid. In other words, these claims do not limit the process steps to any specific machine or apparatus. Thus, the claims fail the first branch of the machine-or-transformation test because they are not tied to a particular machine or apparatus. The steps of these process claims also fail the second branch of the machine-or-transformation test because nothing must be transformed, not even data, when the steps are construed as encompassing no more than providing access or aiding. Thus, the process of claim 1 fails the machine-or-transformation test and is not patent-eligible under 35 U.S.C. § 101.

Poll Results

The BPAI Watchdog's first poll question was: "Are the BPAI and the PTO abusing Bilski?"

84% of those who responded said they were.

BPAI Remains Split on "Computer-Readable Medium"

Ex Parte Scott Alan Isaacson, Stephen R. Carter and Frank Allan Nutt
Decided: February 26, 2009

This decision, also from Technology Center 2100, continues on the Ex parte Mitchell path. The Board determined that "medium" when modified by "computer-readable" is not limited to only tangible embodiments.

The claims of the Isaacson et al. application were directed to for assembling or otherwise aggregating electronic identities. Representative claim 1 recited:

[a] method implemented in a computer-readable medium to aggregate an identity, comprising:

accessing one or more identity authorities and one or more identity stores with a schema to acquire identifiers and attributes associated with the aggregated identity, wherein the identifiers are information used to identify the identity; and

assembling the acquired identifiers and attributes to aggregate the identity.

Also, the preamble of independent claim 9 recited a “data store implemented in a computer-readable medium, residing in a computer-accessible medium.” Likewise, the preamble of independent claim 16 recited a “schema data structure used to aggregate an identity and implemented in a computer accessible medium.” Finally, the preamble of independent claim 22 recited a “system implemented in a computer-readable medium.”

Arguably, the specification did not include an express definition of "computer-readable medium." However, the specification included the following:

[o]f course, the invention can be implemented in a variety of applications, systems, schema conventions, programming languages, and data formats. Additionally, the invention is not limited to any particular network. Thus, any hardwired (direct or indirect), or wireless network can be used.

FIG. 1 is a flowchart representing one method 100 to aggregate an identity, according to one embodiment of the invention. The method is implemented in an electronic environment on a network. The network can be, without limitation, a Local Area Network (LAN), a Wide Area Network (WAN), or a combination of LANs and WANs interfaced together. Furthermore, as mentioned above, the network can be hardwired or wireless.

The examiner rejected all the claims under 101.

During prosecution, Isaacson et al. added the "implemented in a computer-readable medium" type limitations to the preamble. Also, they argued that those amendments recite structure and indicate that the claims are limited to computer implemented embodiments.

The Board discussed the limitations in the preambles. They said that:

to the extent that the preamble has any bearing upon the broad recitations in the body of representative independent claim 1 on appeal, the subject matter also appears to be proscribed by the reasoning in In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). The broadly claimed “medium” in the preambles of all independent claims on appeal is not necessarily required to be embodied in a tangible computer-readable medium. Indeed, the subject matter is so broadly disclosed that there is no discussion of what the claimed “medium” is supposed to be or otherwise be comprised of in the Specification as filed. As such, the medium appears to be a broadly definable wireless network that encompasses signals per se proscribed by Nuijten ...

Additionally, based upon the analysis in the previous and this paragraph at least, the data store broadly recited in the preamble of independent claim 9 is not positively stated to be embodied in a tangible device conventional in the arts since it is merely recited to be “implemented in a computer-readable medium, residing in a computer-accessible medium.” A similar observation is appropriate for the schema data structure of independent claim 16. We are not aware of any authority which permits the direct claiming alone of a data structure per se. With respect to the system of claim 22, it is not necessarily recited to be a tangible computer system since all the recited elements are inclusive of non-tangible embodiments or abstract concepts as already discussed with respect to independent claims 1, 9, and 16.

BPAI Confirms 101 Rejection of Method, Beauregard, and System Claim

Ex parte Nick M. Mitchell and Gary S. Sevitsky
Decided: February 23, 2009

This decision is interesting because the Board broadly applied Bilski to reject not only method claims, but also Beauregard and system claims. Also, the decision appears to conflict with aspects Ex parte Mazzara (see previous posting) regarding the BPAI's view of a "computer readable medium."

The claims of this appeal were directed to diagnosing memory leaks. The representative claims at issue on appeal included a method claim, a Beauregard claim, and a system claim. The Examiner rejected each of the claims under 101. The claims recite:

1. A method for identifying co-evolving regions in the memory of a target application, comprising:

receiving information identifying a set of data structures that are evolving; and

classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.

10. A computer readable medium for identifying co-evolving regions in the memory of a target application, comprising instructions for:

receiving information identifying a set of data structures that are evolving; and

classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.

11. An information processing system comprising:

a processor comprising logic for performing instructions of:

• identifying a set of data structures that are evolving; and
  
• classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner; and
  

a memory for storing the instructions.

The Board began their 101 analysis with the method claim and applied the "machine-or-transformation test.” In an attempt to pass the "machine" part of the test, the applicants argued that claim 1 was “clearly computer-implemented,” based on the allegation that the preamble “recites a memory wherein the co-evolving regions are identified.” The Board didn't buy it. They responded with:

[w]e find nothing in the steps of claim 1 that are specific to a computer. Nor do we find that the recitation of a “memory” in the preamble serves as antecedent for anything in the body of the claim, other than, inferentially, may evidence intent that the “memory” might contain the set of data structures that relate to “information” that is gathered and received in some unspecified manner.

The Board quickly addressed the "transformation" prong by finding that claim 1 did not require any kind of electronic transformation of data into a different state or thing.

The BPAI next addressed the Beauregard claim. As expected, the applicants argued that claim 10 was directed to the “manufacture” class of statutory subject matter as set forth in § 101. In response, the Board said that:

[a]lthough a “computer readable medium” may nominally fall within the statutory class of “manufacture,” claim 10 would effectively pre-empt the abstract idea represented by instant claim 1.

The Board's footnote discussing "manufacture" is interesting. The footnote states:

[a] computer readable “medium” that comprises “instructions” as recited in claim 10 does not necessarily fall within any statutory class. A computer, properly equipped, can receive instructions via electronic data transmission over a wired network or over the air. However, a carrier wave or signal does not fall within any of the four categories of statutory subject matter, and is thus not statutory subject matter. See In re Nuijten, 500 F.3d at 1357.

The panel in Ex parte Mazzara, decided on February 5, 2009, is in opposition with the above reasoning. The Mazzara panel found that the term "computer usable medium", when not defined in the specification, was limited to only tangible manufactures. The Mazzara panel relied on the the fact that there was no express statement in the Specification, nor any other indication in the record, that the term "computer usable medium" was intended to include non-statutory subject matter such as signals or paper. (Note that Technology Center 2600 decided Mazzara and Technology Center 2100 decided Mitchell)

In addressing system claim 11, the Board acknowledge that on its face the claim appeared directed at patentable subject matter (e.g., a “machine”). Despite this, the Board found that the claim was not 101 eligible. They reasoned that:

[t]he use of a “processor” and “memory” for storing and performing the broadly recited “instructions” of claim 11 would be, in practical effect, a patent on the abstract idea of “identifying” and “classifying constituents” of data structures as recited. Limiting the claim to part of a system comprising a “processor” and “memory” does not add any practical limitation to the scope of the claim. Similar to a field-of-use limitation in a process claim, the use of a general “processor” and “memory” is insufficient to render an otherwise ineligible claim patent eligible. See Bilski, 545 F.3d at 957