Ex parte Catan (BPAI 2007).
Catan’s invention involves using a bioauthentication device (e.g., fingerprint scanner) to authorize credit-account orders. On appeal, the Board of Patent Appeals & Interferences (BPAI) affirmed the Examiner’s finding of obviousness based on a combination of references.
As we know, a combination of familiar elements used according to known methods is probably obvious unless it yields unpredictable results. Obviousness determinations at the PTO are, at least theoretically, made easier by giving claim terms “their broadest reasonable construction.” In Catan’s case, for instance, the claimed ‘consumer electronic device’ could reasonably include a combination of base and remote stations communicating over a wireless network. (no “local” requirement).
Two pieces of prior art were presented: Nakano disclosed everything except that a password was used instead of the bioauthentication device, and Harada disclosed a fingerprint scanner. A third reference, Dethloff, taught that bioauthentication can substitute for a password.
This really is an easy example of obviousness:
“The claim is to a structure already known in the prior art that is altered by the mere substitution of one known element for another element known in the field for the same function. The facts themselves show that there is no difference between the claimed subject matter and the prior art but for the combination itself.”
The Board goes-on to say that the linking-reference (Dethloff) was not necessary, but it makes the case against the applicant even tighter. Motivation for the combination is also found in Harada, which also discusses various types of authorization techniques.
Notes:
- This case would probably have been affirmed before KSR.
- Reasons for combining prior art must still be explained.
- Winners provide at least some “unpredictable results.” (What could this applicant have argued? – some potential credit users are fearful of losing their password and others are especially prone to forgetting their password. . . the invention opens protected credit transactions to a whole new segment of the population. A $20k study could probably support this theory…)
The judicial pronouncements are putting extra burden on the interpretation of the claims where again the intrinsic resources are being relied upon. This is definitely creating an ambit of INTERPRETERS where a single word has the power of invalidatig(or validating) a claim.
>>I skimmed through the decision, and it appears that the critical issue is not one of obviousness, but one of claim interpretation, and in particular, what does the word “A” mean.
The applicant claims “A consumer electronics device, comprising…a memory …a bioauthentication device …a communication link; and a processor…”.
The prior art discloses the processor being located remote of the other elements. >>The applicant argued that “A…device” means that all of the parts were in a single unit. The board disagreed citing the fact that that consumer electronic “devices” often come as different units packaged together (e.g. computer + monitor = single “device”). The board further cited the specification where the applicant discloses an embodiment where the processor is located remote of the other elements.
All of this could be potentially be solved if the applicant filed an RCE to amend the claim to recite a “unitary device”.<< And then the examiner will come back with standard language that it is obvious to combine multiple devices into a single device, using a very old case, Howard v. Detroit Stove Works, 150 U.S. 164 (1893). The Supremes have since held that this is not a per se rule, but depends on the facts.
You have only to read claim 1 to realize that the claimed invention is not very exciting.
KCB:
How is the exceutive order you cited, that seems to be irrelvant in the first instance to patent law, a Bill of Attainder? I thought a Bill of Attainder was a law that punished a specific person in a retroactive manner akin to an ex post facto law, and is this a violation of a fundamental right under the Constitution. No where in that order does it direct the arrest of any specifically named person(s).
I read that hoping to read something like “Bill Gates, as the biggest thief known to mankind of others patents, especially during the early 90’s” is to be arrested. Now that would be a relevant executive order.
If an invention is based on the combination of the two or more known function which creates a revolution in that particular field of technology then we consider it novel and invention would have no ? on obviousness. Very nice predicted by the decision makers.
Thanks
Ay dios mio! Es un milagro! The readers of PatentlyO finally admit that an invention is obvious! There’s a first time for everything!
FYI – Odiorne v. Winkley is from 1814. And FWIW, perhaps the earlies reported case in the U.S. wherein something akin to the DOE was used is Reutgen v. Kanowrs (CCDPa 1804).
John, you are incorrect. The Graver Tank decision actually formulated the tripartite test using two and three “substantiallys”. For example, Graver Tank not only includes the test in the manner you stated, but also includes the following: “The theory on which it is founded is that ‘if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape’.” quoting Machine Co. v. Murphy, 97 U.S. 120, 125 (1878).
Ironically, the Court in Machine Co. also formulated the tripartite test with and without the third “substantially.” However, it is clear that the Machine Co. Court intended there to be three “substantiallys” in the test. In particular, the Machine Co. Court stated: “one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result, always bearing in mind that devices in a patented machine are different in the sense of the patent law when they perform different functions or in a different way, or produce a substantially different result.” In other words, the Machine Co. Court stated that an accused infringer can only escape the tripartite test if their machine produces “a substantially different result.”
And the tripartite test had its origins much earlier than the Machine Co. case. For example, in Odiorne v. Winkley, Justice Story instructed a jury: “The material question, therefore, is not whether
the same elements of motion, or the same component parts are used, but whether the given effect is produced substantially by the same mode of operation, and the same combination of powers, in both machines. Mere colorable differences, or slight improvements, cannot shake the right of the original inventor.” While Odiorne is the earliest case I am aware of which uses language similar to the tripartite test of Machine Co., Sanitary Refrigerator, Graver Tank, etc., I suspect that it was used even before the Odiorne case.
Of course the DOE also is not defined by the tripartite test, as you seem to suggest. That was cleared up in the Hilton Davis case. While the tripartite test may be used to determine equivalence, it is not the only way to evaluate equivalence.
Since the people who read this blog are patent lawyers, agents or wannabees; and since people of this ilk make their living using carefully crafted language with due reverence for accuracy, I suggest a couple items for your consideration.
1. Prior to 1952 Patent Act, applications were rejected or patents were invalidated for “lacking in invention”. After the 1952 Patent Act, the terminology changed (and for the better). Each claim is a separate invention and each claim is either a patentable invention or a non-patentable invention depending on whether each claim meets the requirements of 35 U.S.C. §101 et seq.
2. The correct recitation of the DOE is … substantially the same function in substantially the same way to obtain the same result…. There are only two “substantiallys” in the DOE. See Graver Tank, quoting from Sanitary Refrigerator Co. v. Winters. And don’t forget the other part of the Graver doctrine: “Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.”
Did anyone else notice “the” Functional Approach type language? It also shows up in Ex parte Smith, another BPAI precedential opinion. Both opinions say the same thing: “The operative question in this ‘functional approach’ is thus ‘whether the improvement is more than the predictable use of prior art elements according to their established functions.'” To me this looks like a substitute analysis for TSM.
“Why did they appeal this case?”
It looks like they were using appeals as RCEs.
nonfinal
final
appeal brief
nonfinal
final
appeal brief
examiner’s answer
appeal brief
examiner’s answer
appeal brief
examiner’s answer
reply brief
BPAI decision
The process started in ’03
Why did they appeal this case?
Whether that device is “unitary” or not would (and should) not have made a bit of difference. Claims that broad are DOA in the 21st century unless you get a real mouthbreather for a Judge or Examiner.
Mark: In the absence of an explicit definition in the spec, its fair to force the applicant to amend the claim to explicitly recite the definition. Otherwise, there is a risk that the patentee will choose to waste judicial resources by arguing a broader definition in litigation. (And you know litigators would try.)
I do apologize; however, since most of us are attorneys here I have to set this forth. On the 17th of July 2007 President Bush effective suspended the Constitution of The United States of America. This is not a drill . . . I am not joking. The Executive Order promulgated yesterday amounts to a Bill of Attainder. Even King George of 18th Century England knew enough to have Parliament issue Bills of Attainder. But not our great President. I leave it to you to read. I can think of no power that the President has to issues such an Executive order. In fact, from my Constitutional education, Executive Orders are merely tolerated and are, in actuality, extra constitutional powers assumed by the President. I think it is high time to shut this charade down. Executive Orders are meaningless and should be treated as such.
The offending Executive Order may be found here. link to whitehouse.gov
What I don’t quite understand (and perhaps someone can help me out), is if the applicant states in correspondence with the office that “A….device” means a unitary device, why doesn’t the Board accept that as the definition? Hasn’t the applicant specifically disclaimed the embodiment where the invention had remotely located components?
I skimmed through the decision, and it appears that the critical issue is not one of obviousness, but one of claim interpretation, and in particular, what does the word “A” mean.
The applicant claims “A consumer electronics device, comprising…a memory …a bioauthentication device …a communication link; and a processor…”.
The prior art discloses the processor being located remote of the other elements. The applicant argued that “A…device” means that all of the parts were in a single unit. The board disagreed citing the fact that that consumer electronic “devices” often come as different units packaged together (e.g. computer + monitor = single “device”). The board further cited the specification where the applicant discloses an embodiment where the processor is located remote of the other elements.
All of this could be potentially be solved if the applicant filed an RCE to amend the claim to recite a “unitary device”.
Hey Dennis:
They could have argued secondary considerations. I have some ideas. However, my clients pay good money for my ideas. I feel it would be unethical to provide them to the blog for free. Shall we discuss compensation? Then we can haggle about attribution should you use the same in lectures to your students 🙂
What could this applicant have argued?
Nothing meaningful…That is the point. The invention is obvious. Inventors go back to the drawing board and invent something…
Don’t blame the lawyers, the patent trolls, lobbyist, Bill Gates, Big pharma, etc.
It just wasn’t an invention.
Next application…See the backlog is already reduced…!
… “than” their fingers.
“perhaps that credit users are especially prone to forgetting their password. . . thus the invention opens protected credit transactions to a whole new segment of the population”
Would it be unpredictable that people are more likely to lose their passwords then their fingers?
Seems like they took a little too much verbiage to espouse the tenants of Hotckiss v. Greenwood. A mere subsitution of materials to perform the substantially same function in substantially same way to obtain the substantially same result (that’s right people the Doctrine of Equivalents is nothing more than the substantial novelty test of Hotchkiss) is not patentable. That is all they had to say. I suspect this is indicative of the lack of training of the Examining Corps. I mean if the Examiner did not know of this case I believe we should start entertaining changes to the patent academy curriculum. You know I think the Supremes write opinions so that we can read them and learn from them.
As we know, a combination of familiar elements used according to known methods is probably obvious unless it yields predictable results….”unpredictable”
Liked the 20k joke!
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