by Dennis Crouch
Stoller holds several patents directed to a winterizing golf course greens. In particular, Stoller’s approach is to roll-out a rubber blanket over the turf. His most recent patent application was rejected by the USPTO examiner — with the broadest claim being anticipated and the dependent claims obvious. That decision was then affirmed by the PTAB. Now, the Federal Circuit has largely affirmed — finding that the anticipation finding was erroneous but that the obviousness findings were correct. The result then is that on remand the examiner should now also reject the broadest claim as obvious.
The broadest claim requires a layer of polyurethane “laminated” to a fabric layer and the primary dispute on appeal is the broadest reasonable interpretation of laminated clause. The importance of the construction comes up because the prior art uses for the anticipation rejection fastens its layers together by with strings going through a series of grommets at the cover’s perimeter. The USPTO took the position that be broadest reasonable interpretation of a laminated structure would require only that the structure have multiple layers while Stoller argued that laminated requires a fusing or bonding.
The application itself provides no definition of the term but it does provide an example that requires using a molten polymer to bond the layers and repeatedly explains the durability benefits of the laminate approach. [I should note here that I’m hard-pressed to understand how the Court’s broadest reasonable construction is different or any broader than the seemingly more narrow construction that would be used post-issuance.]
On appeal, the Federal Circuit sided with the patent applicant – finding that even a broad dictionary definition of the laminate terms requires “uniting” layers in a way that goes beyond simply stacking them together.
Because the cited anticipation reference did not disclose laminated layers, the rejection was improper. On the other hand, a number of additional references taught laminating in its ‘properly’ construed form and those references were included in the obviousness rejections of the more narrow claims. As such, the court found those obviousness rejections proper.
Thus, we’re left with the odd situation that the broader claim is not rejected while the narrower claims are rejected. Addressing that situation, the Federal Circuit refused to take the logical step of finding the the broader claim obvious as well. Instead, the court simply remanded with – I assume – the expectation that the USPTO will make that determination for itself.
We do not turn a blind eye to the many references in this record that demonstrate that laminating two (or more) layers together was well-known in the art. The only rejection of claim 35 before us, however, is a § 102 rejection based only on Sibbet. That rejection is not supported in the record. Accordingly, we reverse the rejection of claim 35.
What a completely avoidable waste of time by the prosecuting attorney (or, more likely, newbie agent who spends too much time reading the comic book publications of the Appeal Everything Club).
The term “laminated” is a broad term that includes “manufactured by placing layer upon layer.” When you use a term like in your claim — especially if the term represents your improvement over the prior art — then you need to be clear about how you are defining the term. If you don’t do that, then you have every reason to expect both Examiners and your potential defendants to question you on the meaning of the term. Part of that questioning will inevitably involve taking the broadest construction of the term and finding prior art that reads on your claim using that construction of the term. This is a costly endeavor to undertake and it’s especially costly when you consider how easily it can be avoided.
Define your terms. Better yet: whenever possible put the definitions that you are almost surely going to end up relying on in your claim before the Examiner forces you to argue the narrower definition or amend the claim. That way, if you’re lucky, you might end up with some equivalents at least.
It’s called “spotting the issue before it arises.” It’s what patent attorneys are hired to do. At least it’s what the good ones are hired to do.
As for the folks downthread throwing a party because the PTO got reversed on a claim construction, try to remember that for every one of these BRI’s that get reversed there are thousands that don’t and thousands more than end up forcing an amendment or argument on the record that narrows the claim. And that’s ignoring all the ridiculous claim construction arguments made by patentees during the assertion phase or during re-exam that are rejected after two seconds analysis. The same day this decision was handed down, in fact, you could listen to oral arguments in FenF v. Smartthings and hear a patentee in freefall, making the worst arguments in the world before a group of Federal appellate judges who undeniably have much, much better things to do than listen to self-serving baloney from a desperate patentee whose greed got the better of him.
You really need to get into a different profession Malcolm.–)”self-serving… greed…”(– sorry, but you of all people have no white horse to ride.
There is NO reasonable way to take the word “laminate” and extend it to mean mere layered.
If you think this falls under “issue spotting,” you need to join the real world and get out of your absolute picture-claim mentality.
Everyone knows what “laminated” means and to pretend now that that the patent drafter should have anticipated that the term would or could end up in dispute, much less that someone would allege that layers held together by with strings going through a series of grommets falls under “laminated” is beyond reprehensible.
link to youtube.com
I’m a big fan of providing definitions, but even I likely wouldn’t have provided a definition for “laminate”, as I think the definition is too well known. It’d be like defining pi or e in mathematics: who would even think to do that?
even I likely wouldn’t have provided a definition for “laminate”, as I think the definition is too well known.
If it is foreseeable that you may need to rely on a descriptive term for patentability or infringement (something that was certainly forseeable in this case for the term “laminate”) then you better know exactly what you want the term to include or exclude, or you better provide some alternate back-up language in case your “innovation” turns out to be something different from what you originally thought.
I wrote: The same day this decision was handed down, in fact, you could listen to oral arguments in FenF v. Smartthings and hear a patentee in freefall, making the worst arguments in the world before a group of Federal appellate judges who undeniably have much, much better things to do than listen to self-serving baloney from a desperate patentee whose greed got the better of him.
As expected, the CAFC has just issued (Feb 6) a clear, unanimous opinion throwing out the distrit court’s construction and remanding the case back to the district court (where the claim will very likely be invalidated).
The problem with the Broadest unReasonable Interpretation rule isn’t theoretical, it’s in the application. Too many examiners use it as an excuse to abstract terms to the point of being meaningless in order to apply prior art that doesn’t reasonably read on the claims and isn’t even relevant to the claims. I’d love to see the Courts slap down the USPTO on the rule, but I’m not sure how to get the Court to see the systemic problem appealing a single decision.
Scott, The goal of BRI is to assure that patents issue with claims that are clear and definite. I have no special problem with the use of BRI during the original ex parte prosecution because the goal of providing clear and definite claims is required by the statutes and by a wealth of case law.
But I do not believe that BRI should be used with respect to an issued patent where the only issue is whether the patent is “valid” over the prior art, not whether the claims are clear and definite. BRI is designed to read on prior art and is the ultimate undermining of the presumption of validity. It is fundamentally wrong when used with respect to an issued patent.
BRI is the very reason reexaminations and other postgrad proceedings are so popular with infringers.
Very much to the contrary Ned, “clear and definite” is not the goal of BRI per se.
The goal is that the scope of a granted patent is within the scope of examination, given the flexibility of language and other limitations of the examination process.
Language remains as fuzzy and flexible even with BRI.
You have the same “turtles all the way down” problem that you have with the attempt at having glossaries in patents (you just have another layer of words that can be manipulated).
anon, I think you are aware of In re Morris and perhaps In re Donaldson. They both “hold” that the purpose of BRI is for clarifying the claims.
Ned,
You are doing that over-reading thing again, as the conflux of Donaldson and Morris has to do with reasonable interpretation and NOT your “clear and definite” per se goal.
In both cases, the debate (and thus any holding coming from a decision on the debate) is just NOT what you are saying here. In those cases the focus is clearly on the issue of what is reasonable – not what the doctrine of BRI is for. Yes, there is a function of clarity involved in the give and take process (see the Morris paragraph starting with “It would be inconsistent…”), but that clarity is more in line with how I described the purposeful “maximum” reach of scope. The refinement of public notice discussed therein can – and fairly often is – reached with NO claim changes, and with wayward examiners rebuffed for being UNreasonable.
anon, since we both agree that this paragraph best represents the gravamen of why the PTO uses BRI, let us quote it in full.
“It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid. The process of patent prosecution is an interactive one. Once the PTO has made an initial determination that specified claims are not patentable (the prima facie case concept, see In re Oetiker, 977 F.2d 1443, 1448, 24 USPQ2d 1443, 1447 (Fed.Cir.1992) (Plager, J. concurring)), the burden of production falls upon the applicant to establish entitlement to a patent. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.Cir.1990); In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed.Cir.1986) (burden shifts to appellant after the PTO establishes a prima facie case of anticipation). This promotes the development of the written record before the PTO that provides the requisite written notice to the public as to what the applicant claims as the invention. As the Supreme Court recently affirmed, public notice is an important objective of patent prosecution before the PTO. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., ___ U.S. ___, ___, 117 S.Ct. 1040, 1051, 137 L.Ed.2d 146 (1997) (establishing a rebuttable presumption of prosecution history estoppel when the public record is unclear as to whether the prior art precipitated an amendment to the claims in order to give “proper deference to the role of claims in defining an invention and providing public notice.”).”
Now, it seems to be that BRI is all about clarifying just what it is that the patentee is claiming to be his invention. That is a requirement of Section 112(b).
But, with an issued patent, broader constructions that will result in the patent being held invalid are NOT justified on any grounds of clarifying the claims or the record because none of the statutes authorize reexamination or inquiries into validity on 112(b) grounds.
Perhaps BRI might be justified with respect to amended or newly added claims. But not with unamended, issued claims that ought to be construed the way any court would construe them: ordinary meaning to one of ordinary skill in the art in view of the specification. Philips and a wealth of cases before that case also construe claims to preserve their validity if there is a choice to be made between two alternatives equally reasonable.
But BRI always chooses the broader and the result is that an issued patent that is VALID under the LAW, may be declared invalid nevertheless due to the use of BRI in the PTO.
BRI and post grant proceeding are undermining the patent system as we once knew it, anon.
Ned,
Prosecution history estoppel simply is not JUST what is in the claim.
Do I need to whip out that reference that you yourself supplied detailing the danger of over-reading case law and using “holdings” that really are not there?
I recognize that you are attempting to set up the BRI position for your argument on post grant review, but you should read again the comments here as there is a subtle difference that you are missing in your haste.
I’m sorry anon, but BRI has no place in reexaminations and IPRs where the issue is validity over the prior art.
“because none of the statutes authorize reexamination or inquiries into validity on 112(b) grounds.”
35 USC 321(b)…?
Yes, the immediate post grant review has no limits. But that does not detract from my main point.
Actually Ned, not only does that “detract” from your main point, it eviscerates it.
(and yes, I noticed that you moved the goalpost with your 9:13 post, adding in the “issue is validity over the prior art.” You have to face the facts, Pandora’s lid has been opened)
Agreed. A small minority of examiners focus on “broadest” and forget “reasonable”, arguing for a particular construction despite dictionaries, experts, etc that say otherwise, and are evidence of what is a “reasonable” construction. Fortunately, the PTO usually fixes that problem on appeal, but it should not get to that.
link to hotelnewsresource.com
OT, but I wonder where these figures come from and what the actual figures are. Be interesting to actually get a fair way of evaluating this.
All knowledge and understanding proceeds from the divine Brahmin from here unto the next cosmic cycle.
Sister anon,
While you may have a point, can you explicate your musings a tad more here?
I do not think that “waiting until the next cosmic cycle” is an answer that works in this context.
I believe this is the propagation of the debunked Ivory Tower stats.
Those figures are worse than Zombies…
$80 billion.. sounds like a lot of fuel for the economy.
If American NPEs and American Law firms are making this kind of dough, and if they are not buying up foreign islands in the pacific, I would think economists would identify the $80 billion as remaining in the “economy”.
How is the money “lost”?
I also heard that the war on drugs, and tough stance on crime, has put a damper on the multi-billion dollar drug trade, car theft, and many other “home grown” businesses… shame really. Is that also “lost” money to the economy?
“The USPTO took the position that be broadest reasonable interpretation of a laminated structure would require only that the structure have multiple layers while Stoller argued that laminated requires a fusing or bonding.”
Why on earth don’t these re re’s just say here is x reference stating what laminated means in this context, fusing or bonding, and then amend the claim ivo such being what they were talking about? I swear to god. BRI cases are so easy to avoid with our not at all strict 112 1st standard.
“then amend the claim”
Um, you do realize that amending a claim when it is the examiner that is ‘wrong’ is generally not a good idea, right?
Yea just better to waste your client’s money by appealing all the way up to the Fed Circuit.
shhhh! don’t rock the boat!
That’s not really far. Reality is that part of serving our clients is keeping the examiners in line. Sometimes it is better to go along and let the examiner take a small piece of the rights of your client because it would be too expensive to get the examiner reversed, but sometimes we have to take a stand.
I disagree. What value is it to the client to keep the “examiner in line” in this specific instance? Here the attorney is trying to narrow the claims at the CAFC. Prosecution history estoppel already forces the narrow definition to be the one used in litigation anyway. So why not amend the claims to have “laminated” mean exactly what the attorney is arguing?
I would understand what you were saying if appealing at any benefit to the client here but it seems like there was only downside in terms of wasted money and patent term.
And additionally, the attorney already knew that the 103 rejection would have stood up on second non final anyway. So why not make efforts to actually move prosecution along rather than arguing every error for its own sake?
“So why not amend the claims to have “laminated” mean exactly what the attorney is arguing?”
The only possible reasons are:
a. someone prosecuting is ta rded (see anon’s comment above)
b. someone prosecuting is fearing 112 1st (and is likely ta rded to be afraid in this instance).
Either way, the examiner was at fault for not raising the issue of 112 2nd when the applicant started saying the term meant all sorts of things way different than the word used. This is a prime opportunity for 112 2nd to box the applicant into doing what needs to be done to move prosecution forward without any problems in the courts.
The trouble with an examiner making a 112 rejection on an unamended claim is the count system penalizes him for doing so. It is better for the examiner to defend a BRI that his spe will sign into appeal than to issue a 2nd non-final switching a 102 to 103. In this case i think the applicant is silly to waste money on appeal without challenging the 103s already in the case at the same time. This case should be denied standing for being a trifling matter.
“Either way, the examiner was at fault for not raising the issue of 112 2nd when the applicant started saying the term meant all sorts of things way different than the word used. ”
But was that what happened here? Did the applicant start saying that the word meant something (anything) than what a Person Having Ordinary Skill In The Art would say that word meant, or was it the examiner that applied an UNreasonable (and untethered) “it merely means layered” meaning to the word in question in the independent claim?
“The trouble with an examiner making a 112 rejection on an unamended claim is the count system penalizes him for doing so. ”
I’ve never been penalized for doing so. And I’ve been doing this a long time.
“than to issue a 2nd non-final switching a 102 to 103.”
Why on earth would you make the 2nd action a non-f? They amended the claim bro. That shizzle is going final or allowance. If your AU is overly committed to rejecting claims where the signatory is an arse then sure, there can be a problem if the signatory is simultaneously a person that doesn’t know when to go final properly. But that is more of a project to fix the spe/primary than to worry about the “penalizing” of sending 112’s.
“This case should be denied standing for being a trifling matter.”
As so many other cases should be. If there is such a condition for standing I think it should be applied much much much more often. It is these “trifling” matters that so often give us horrendous caselaw.
“But was that what happened here?”
That’s what is always happening in these sorts of tar ded situations anon. Person uses word x meaning y (and z etc in some cases). Office rejects the claims based on a broad reading of x. Applicant interjects but but but I meant y because an imaginary man thinks x means y! It happens a thousand times a day every day. 112 2nd ends that nonsense and encourages people to actually follow the later part of 112 and truly claim what they believe to be the invention (in other words just claim y in the first place).
“Did the applicant start saying that the word meant something (anything) than what a Person Having Ordinary Skill In The Art would say that word meant, or was it the examiner that applied an UNreasonable (and untethered) “it merely means layered” meaning to the word in question in the independent claim?”
Doesn’t matter. What matters is whether one of ordinary skill is reasonably certain.
I’m not sure a 112 2nd is proper here. The term laminated is definite. Attorney and applicant just dissagree over scope.
I meant in general Ryan in response to 6. I would tend to agree here–but I don’t know all the facts–that it may have been better to have found some other language.
“Reality is that part of serving our clients is keeping the examiners in line.”
There are cheaper ways brosef. Your failure to learn them is your failing at your “serving”.
Have you seen the Rob Lowe commercial yet with the guy who cannot stop saying “bro,” bro?
I don’t fail my clients. I filed appeals sometimes when needed and petitions too. I also go to the SPE and tech supervisor.
I think my appeal rate is 80%.
Your “appeal rate” is 80% and you don’t think you’re an abject failure?
Christ on sale. If my attorney told me his “appeal rate” was over 5% so that there was a pretty good chance I’d need to pay 10 grand to get myself a patent I’d tell him to take a hike.
6,
>I filed appeals sometimes
>I think my appeal rate is 80%.
I apologize it should have said my appeal success rate is 80% for decisions that reached the board.
Appealing is necessary sometimes 6. It is possible for their to be legitimate disputes that need to be resolved by a third part.
“Appealing is necessary sometimes 6. It is possible for their to be legitimate disputes that need to be resolved by a third part(y).”
Yeah I agree with that. Fact is though that situation is so rare (much rarer than the current appeal rates). Likewise, such a situation is so easily avoidable via different means so as to render the those rare situations almost never needed.
Ryan,
How much money do you think the Office lost in the pursuit of the Claims and Continuation a Rules debacle (See Tafas)?
Just being lazy/sloppy, or return to days before Phillips???
It is disturbing to note that neither the Opinion itself nor the analysis here recites the full standard to be applied when construing claims: broadest reasonable interpretation IN LIGHT OF THE SPECIFICATION AS INTERPRETED BY ONE OF SKILL IN THE ART. Although the Opinion does reference the disclosed embodiment for support of its conclusion, notably, it starts with resort to the dictionary definition. Is this just being lazy, or has the court forgotten all about Phillips???? (In this regard, I note that every time I have to “swat back” to the examiner one of their ridiculous interpretations — and frankly, the one at issue here did not, in my view, rise to the level of ridiculous, even if unreasonable in light of the specification — I start with the language of Phillips, which is mirrored in MPEP 2111.)
Lemley has mapped out a new way to burn the system down. He got his way with “abstract” and now he is trying to remove “one skilled in the art” from the interpretation of claims. If you include a person skilled in the art, then his entire functional claim nonsense falls apart.
The fed. cir. is towing the Lemley line that he outlined in his functional claim paper. The whole fed. cir. should be removed.
1) was there a disclaimer at the end of the specification, specifically stating that the claims are to be read without the specification providing a limit on the scope of the claims (so often the case these days)?
2) from a quick google search one can find this definition “To cover with a thin sheet of material, as for preservation” See link to thefreedictionary.com. Or here is another: “to cover (something) with a thin layer of clear plastic for protection” See link to merriam-webster.com. I don’t see fusing or bonding in either definition. Their choice of definition seems a little strange.
anyone notice that when these nonprecedential decisions come out, that there is usually something funny in the reasoning?
speaking of funny business, does anyone know the status of those documents under seal that were forwarded to the california state bar with regard to the rader issue? have they been unsealed yet, or are they to be lost in the fog of “private reprimand”?
whats a few sealed documents among friends?
I SAWS what you did there….
KenF, In re Morris is controlling law.
All the examiner has to do is provide support.
Read the case.
Ned,
I think that you are taking a tangent to the point being made by KenF.
See the sentence in the MPEP directly in front of the In re Morris citation:
“The court explained that ‘reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim…”
In re Morris is inapposite here, as KenF is NOT advocating the elimination of BRI as Morris attempted. Rather, it is simply axiomatic that there exists a difference between the words “layered” and “laminate” (as a noun), and that the examiner is unreasonable in ignoring that difference in the immediate claim, since PHOSITA would not read the given reference in the manner that the examiner attempted.
We all know that the PTO applies the broadest UNreasonable interpretation. Nice to hear the courts confirm it.
I’m willing to bet this came up because the office constantly pushes that 102s are “better” rejection than 103s. It leads to ridiculous rejections and arguments like this, where the applicant starts arguing over whether the particular document describes lamination rather than the actual issue of whether the art knew how to laminate.
What did he think would happen? He would win the case, the office would give him the patent out of laziness and then nobody over of the life of the patent would find a lamination reference? His arguments on obviousness weren’t even valid enough to warrant being mentioned apparently (not that I think that was particularly good for the CAFC to do).
Everyone here needs a teaching – the office for bad teaching, the examiner for bad rejecting, the attorney for bad logic and argument, and the CAFC for bad merits.
If you examine in the mechanical or electrical arts, 103 is always better. If you have the rare case with secondary considerations, you can deal with those as they arise. (This advice is not as applicable to chem/biotech, where accidental anticipation occurs and secondary considerations are more common)
Random, what you write strikes me as spot on. But I think it is fair enough, for an Office to strive for a novelty attack, to drive Applicant to clarify more exactly where the novelty lies. At the EPO, an Action might add that, once Applicant has clarified, then obviousness can be examined.
What does “laminated” encompass? Having lamellae? Two slices of bread with a slice of cheese in between? Is that a lamellar construction? Is it therefore “laminated”? If not, would it become laminated if you sealed it round the edges?
The classic laminated construction is plywood. Glueing the stacked sheets together renders the laminated construction extremely rigid against bending and flexing. It is not at all obvious to me, when a blanket or drape is what is needed, to make it like you make plywood.
Perhaps I should read the patent application, to find out what the inventive concept was, and what the “trick” is, that is to say, how it can be satisfactorily realised, in practice.
I suspect there is more in this than meets the eye!
What does “laminated” encompass? Having lamellae? Two slices of bread with a slice of cheese in between? Is that a lamellar construction? Is it therefore “laminated”? If not, would it become laminated if you sealed it round the edges?
After listening to the oral argument I am more sympathetic toward the Examiner, as the case had been appealed to the PTAB before this round, and in the prior round the board had construed the term and the art fits the board’s term, so I guess can no longer blame the examiner.
But it’s clear that laminate or even its definition is completely unimportant to the case because the Examiner cited in a dependent obviousness rejection PRIOR ART FROM THE APPLICANT HIMSELF which includes usage of laminate (i.e. not only the same concept but the same word, regardless of whatever meaning he wants to impose). There was no chance that the court would accept that using laminate for golf course winterizing wasn’t known.
A 103 will draw out novelty as well as a 102 does when the attorney tries to do it, but too often you see arguments like this one – full of sound and fury that a mistake was made without putting the mistake in the larger context. I would say the number one issue that causes slow down in patent prosecution once it begins examination is argument over whether a particular citation shows what any inventor of the art would know to exist. The attorney probably feels like he has to argue the point because its there and the examiner certainly has to push back because the result is giving someone unwarranted “free” prosecution (that “free” coming off the examiner’s back) and you have something like this escalate to the CAFC.
“After listening … can no longer bla me the examiner.”
I’ve dealt with the w ord “laminated” before. And it is no picn ic. Certa inly not a situ ation to bl ame an exa miner in. If they want to start saying “u nited into one piece” instead of lamin ated it would be he lpful to all involved.
“A 103 will draw out novelty as well as a 102 does when the attorney tries to do it, but too often you see arguments like this one – full of sound and fury that a mistake was made without putting the mistake in the larger context. I would say the number one issue that causes slow down in patent prosecution once it begins examination is argument over whether a particular citation shows what any inventor of the art would know to exist. The attorney probably feels like he has to argue the point because its there and the examiner certainly has to push back because the result is giving someone unwarranted “free” prosecution (that “free” coming off the examiner’s back) and you have something like this escalate to the CAFC.”
I don’t know if I’d make that the no. 1 slow down, but it is surely up there. Such is easily avoided by the examiner by correctly finding on facts in the first instance.
I should add that the new “matching limitations” game the PTO plays instead of simply setting out facts that are being found to reject a claim is what is likely at the heart of that slow down.
The general definition of lamina is unimportant.
The definition of “lamination” in the epistemic vocabulary of the person having ordinary skill in the art/technoloy under consideration gives the meaning of the limitation.
n lamination bonding thin sheets together
It would be worthwhile to have the application number so that we can check PAIR.
Prof. Crouch provided a link to the decision – from that link, the application numbe is 11/217,904.
This patent application unfortunately seems not be available for public inspection.
[…] USPTO Too Broad in its Broadest Reasonable Interpretation […]
IMO, this analysis doesn’t do justice to the CAFC’s decision.
The point was not just that Sibbet, the alleged anticipating PA, had two layers tied together at the edges and required grommets – which, mind you, no person in their right mind would consider “laminated.” The point was that Sibbet filled the space between the two layers with cut straw. IOW, the examiner and the Board were so far out in left field on this one that even Babe Ruth couldn’t have reached them had be been given a soft pitch.
Dennis: “I’m hard-pressed to understand how the Court’s broadest reasonable construction is different or any broader than the seemingly more narrow construction that would be used post-issuance.”
Sorry – I don’t follow Dennis’ problem. The court is pointing out that the broadest REASONABLE construction is narrower than the PTO’s construction, which was as broad as an opera diva’s rear end, but inane.
The question should be: Is the Court’s broadest reasonable construction MORE REASONABLE than the PTO’s construction? And the obvious answer would be that the grommets limitation and the straw limitation of Sibbet render that reference prima facie unreasonable as PA. The next question should be: Who’s gonna’ to take this examiner out to the woodshed?
Dennis: “Thus, we’re left with the odd situation that the broader claim is not rejected while the narrower claims are rejected.”
IMO, this outcome would only have been “odd” if both claims were rejected under the same statute. I don’t have the stats to back this up, but my gut feeling is that 102 rejections are always going to require a narrower analysis of both the claim and the PA, given how’s every element and limitation must be met by the reference.
Dennis: “Addressing that situation, the Federal Circuit refused to take the logical step of finding the the broader claim obvious as well. Instead, the court simply remanded with – I assume – the expectation that the USPTO will make that determination for itself.”
Again, I don’t get it. The proper thing to do is what they did: send it back for entry of a 103 rejection in a non-final OA in order to ensure the applicant has the right to fully respond. Flip this thing back to the beginning and do it right, IOW.
I can’t tell you how annoyed I would have been if I had to psss away my client’s money to make the point that two sheets tied at the edges with straw in between are not laminated.
You just know the Examiner used the following logic to discern the BRI: the applicant did not define “laminated” in the specification therefore the layers of the prior art are laminated.
The question should be: Is the Court’s broadest reasonable construction MORE REASONABLE than the PTO’s construction?
No it definitely shouldn’t. The more narrow construction will always be “more reasonable” than the broader one until you get to the exact example from the spec, which is the most reasonable. The question can’t be what is more reasonable, but what is the outermost interpretation that a court could give, i.e. what is the broadest one that passes the “reasonable” standard.
IMO, this outcome would only have been “odd” if both claims were rejected under the same statute.
If a spot within a scope is anticipated or obvious, the scope is obvious, because the scope is a claim to each point within it. There’s no need to remand to make a holding, as there’s no holding that could be made (given that they are bound by your obviousness holding to the dependent) that would result in a 103 not being made. If the office DIDN’T enter a 103, that would be legal error, and therefore it’s appropriate for the CAFC to enter the 103 itself.
I can’t tell you how annoyed I would have been if I had to psss away my client’s money to make the point that two sheets tied at the edges with straw in between are not laminated.
Indeed the money was psss’ed away, as the CAFC agreed that the invention is obvious. Novelty is insufficient to confer patentability.
RG: “The more narrow construction will always be “more reasonable” than the broader one until you get to the exact example from the spec, which is the most reasonable.”
You are conflating the concept of reasonableness with breadth. The phrase is “the broadest reasonable interpretation” not “the most reasonable broad interpretation.” It is a permissive rule — the broadest interpretation may be used so long as it is reasonable, given the teachings of the specification.
IOW, the examiner is required to determine what the reasonable interpretations are. If there are more than one, then he is at liberty to apply any of them, even the broadest, whereas after allowance there are limits as to how broad the interpretation can be, regardless of reasonableness.
In this case the examiner screwed the first step — no sane person would interpret “laminated” as two sheets stuffed with straw and tied at the edges. That is not a reasonable interpretation; it is inane. Consequently, it makes no difference how broad it may be.
There is no procedural rule or rule of logic that I know of that supports your position that the narrower the interpretation the more reasonable it is. There is no prohibition during prosecution in applying an interpretation that is not the broadest, but it has to be reasonable, based on the teachings of the specification.
RG: “If a spot within a scope is anticipated or obvious, the scope is obvious, because the scope is a claim to each point within it.”
I have no earthly idea what you are talking about. “A spot within a scope”??? “The scope is obvious”??? “The scope is a claim”???
Would love to see some CAFC cites.
RG: ” the CAFC agreed that the invention is obvious.”
Have a look at the actual case, RG. As Dennis points out, that is not what the CAFC found, that’s why they’re sending it back.
Moore did state the opinion that lamination is well known in the art. Lamination is one limitation of the parent claim, but a valid 103 rejection requires that the claim be considered as a whole, which is the examiner’s job, not the CAFC’s.
When the 103 rejection is entered in a new non-final OA, the applicant can flush all the claims if he wants and file new claims that are, perhaps, novel and non-obvious. IOW, you’re misstating the opinion when you say ” the CAFC agreed that the invention is obvious.”
Gotta’ wait until the diva with a bottom having a broad scope sings.
You are conflating the concept of reasonableness with breadth. The phrase is “the broadest reasonable interpretation” not “the most reasonable broad interpretation.” It is a permissive rule — the broadest interpretation may be used so long as it is reasonable, given the teachings of the specification.
I was under the impression that is what you were doing with your question: “Is the Court’s broadest reasonable construction MORE REASONABLE than the PTO’s construction?” A definition either meets the standard of reasonable or not. Of those that reach the standard, the broadest is selected, which is what you seem to be saying now. That is NOT the same thing as asking which construction is more reasonable – as that is the wrong inquiry.
In this case the examiner screwed the first step — no sane person would interpret “laminated” as two sheets stuffed with straw and tied at the edges. That is not a reasonable interpretation; it is inane. Consequently, it makes no difference how broad it may be.
Well the examiner didn’t do anything. The opinion isn’t clear about this (oral argument is) but this appeal is from a second round of appeals. The application went to the board a first time, where the board construed laminate as “a structure formed by several layers.” The examiner then used that definition in the rejection, which given that definition (which he was bound by) the rejection was proper. The applicant then appealed again, it went to the PTAB again and then to the CAFC. If there is fault (and CAFC says there is) it lies in the first PTAB board’s definition, not the examiner.
The characterization by the court (e.g. bean bags, scarecrow) are the court’s own statement on the definition set by the PTAB. It should be noted that the major distinction between the two is the word “bonded.”
I have no earthly idea what you are talking about. “A spot within a scope”??? “The scope is obvious”??? “The scope is a claim”???
Let’s say claim 1 is defined as a bus. Claim 2 depends from claim 1 and states wherein the bus is red. A court concludes that claim 2 is obvious. By definition, claim 1 is obvious. This is because the scope of claim 1 (“all busses”) by definition captures each point inside it (“red bus” “blue bus” etc). Thus showing a red bus is obvious shows that a bus would be obvious.
A similar example you’re probably more familiar with: Applicant claims a computer readable media. 9 out of 10 of those embodiments (hard drive, cd, data tape, flash drive, ROM) are statutory. One of them (transitory propagating signals) are not. The claim gets a 101 rejection because even though most embodiments are valid, at least one embodiment within the scope is invalid, and the scope encompasses all points within it. Same thing with obviousness – you’re not required to show the entire scope is obvious to issue a 103 rejection, just that at least a single point within the scope is obvious.
If the claim is “code that does X” I’m not required to show the art knows EVERY way of programming X, I’m just required to show a single programming of X.
Have a look at the actual case, RG. As Dennis points out, that is not what the CAFC found, that’s why they’re sending it back.
No, that IS what they found. Every obviousness rejection (which is every claim but the independent) was upheld. The court said the independent claim was not anticipated and refused to enter an obviousness rejection on it (as the office hadn’t made one). But by upholding the obviousness rejection to the dependents they have called it obvious for the reason I said above. That’s why it’s a “unique” situation that the dependents are rejected and the independent isn’t. It’s not that the independent isn’t rejectable (by definition it has to be) it’s just that it is not currently under rejection. It would be clear legal error by the office to not enter an obviousness rejection on claim 1.
When the 103 rejection is entered in a new non-final OA, the applicant can flush all the claims if he wants and file new claims that are, perhaps, novel and non-obvious.
And herein lies the point. Applicant shouldn’t be getting a new non-final (which means 20-40 hours of free examiner work, remembering that the examiner was just searching the previous PTAB’s definition). And the CAFC shouldn’t be taking the chance that the office might issue the claims you just determined are legally obvious. You know what I would do if I was examiner? Tell him I’m not reopening, and order him to either file a RCE or to cancel all his dependents if he wants an allowance. Then if he does take the allowance I would write a notice of allowance that makes it clear he’s not entitled to the subject matter because the CAFC called it obvious. I would make it clear he’s paying for a worthless document.
If the examiner happens to be reading: there is no provision to force an examiner to re-open rather than allow. Put it on the attorney to malpractice and he will RCE as he should have to start.
RG, You make some good points, but the last one isn’t one of them. The examiner would get sacked if he allowed that claim after what the CAFC found, and if he did allow it, he would be required to state for the record his reasons why. I don’t think so.
No, the attorney should not have RCE’d in the first place. He should have challenged that disaster of a 102 rejection and not let the examiner and the Board push him around.
But then again, this is the PTO. That claim was looked at — as I understand it — by two examiners and by the Board twice, and nobody cried “obvious!!” Pretty sad when you think about it. Makes me think of the Dudas-days.
Your point about the obvious dependents necessarily implies that the independent is obvious, too, is worth thinking about. Unfortunately, that’s not the way it works in practice.
Don’t know how many times I have had the independent rejected under 102 and the dependents under 103 — often a single reference 103 using the 102 reference. But the examiner never sets forth in rejecting the dependents why the limitations of the independent claim are obvious, having merely rejected them as anticipated.
While a claim that is anticipated may also be considered to be obvious, once the 102 rejection is defeated, there is no longer any automatic finding of obviousness of the independent to support the 103 rejections of the dependents as a whole.
So in those cases, attack the 102 rejection primarily because they are normally easy to rip apart. Then argue the dependents can’t be rejected as obvious b/c there is no evidence or allegation in the record of the independent claim being obvious and the dependents must be considered as a whole. That gets you a new non-final at least if the examiner then rejects the independent as obvious.
Sometimes examiners will enter both 102 and 103 rejections against the independent using the same sole reference. I think Hear-Wear pretty much put an end to that losing tactic. In fact, I feel Hear-Wear put an end to the single-reference 103 rejection, speaking of losing tactics.
6 will want a piece of me on this one. Let’s see if he’s takin’ Sunday off. . .