Combining References in Novelty; Slack in New Matter; No Decision on Injunction for NPE

CSIRO v. Buffalo Technology (Fed. Cir. 2008)

CSIRO is a nonpractising patent holder. It is also an arm of the Australian government. After winning an infringement suit against Buffalo Tech, CSIRO was awarded permanent injunctive relief to protect its spread spectrum WLAN technology.

On appeal, more than a half-dozen amici filed briefs arguing for and against injunctive relief in this situation. On appeal, however, the Federal Circuit vacated the infringement holding – leaving the discussion of injunctive relief for another day. The vacatur came from the district court’s pre-KSR strict requirement for a motivation to combine references.

Combining References For Novelty: On novelty, Buffalo asked the court to combine two references in its analysis because one of the reference cites the other in a footnote. The Federal Circuit rejected that argument — finding that the footnote discussion was insufficient to concatenate the two references. “In particular, the reference to Bingham does not ‘identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.’ Advanced Display Systems, (Fed. Cir. 2000).”

New Matter: 35 USC 132 bars an applicant from presenting new matter once a patent application has been filed.  In litigation, the written description requirement of Section 112 serves as the basis for invalidating patents with added new matter.  The new matter limitation is not strict. Rather, when the claims are amended, the patent will only be invalidated if the original specification is not “sufficient to allow persons of ordinary skill in the art to recognize that the inventor invented the subject matter that is claimed in the asserted claims.”  Further, the PTO’s decision to allow an amendment provides a patent with “an especially weighty presumption of correctness.”

Here, CSIRO changed its claim limitation from “frequencies in excess of 10 GHz” to simply “radio frequencies.”  On appeal, the Federal Circuit affirmed the lower court’s factual finding that the amendment did not impermissibly add new matter. (No clear error). In particular, neither party suggested a technical distinction between handling lower frequencies. Further, the court found that the original specification was not limited to frequencies in excess of 10 GHz.

On remand, the lower court will reevaluate obviousness.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

41 thoughts on “Combining References in Novelty; Slack in New Matter; No Decision on Injunction for NPE

  1. “LOL. Especially weighty? That’s real helpful. As certain commenters here are fond of noting, nearly EVERY Office Action contains a mistake.

    So much for the presumption”

    And I guess applicant’s responses don’t contain errors?!!? Gimme a break.

  2. Your claims are likely worthless as written. It may be very easy for someone to design around your claims, release a very similar product and steal your sales, but not infringe your patent. At the very least, have your attorney read over them in detail. Perhaps file a continuation if there is still time, having your attorney draft the claims this time.

    It sounds like your attorney did mess up a bit 😮

  3. He did not write the spec and claims to cover the alternative embodiments that needed and should have been included. I can’t get into detail-he reads this blog- he’s already apologized so we will move forward. My patent is not worthless as written-they’re only a deterence to theft anyway. It will serve its purpose. You will be able to buy it at Sears Hardware and Autozone in about a year, Sexy. About $20 U.S.

  4. Is “Anonymous Patent Attorney Who Wants Sexy Time With E6k” code for John Darling (seems to follow e6k around a lot)?

  5. So who wants to break it to Renegade Pro Se that his claims are about 99.9999% likely to be completely worthless, especially if “tweaked” by an examiner.

    Renegade, how did your attorney screw up your CIP? I’m curious. I’ll give you the benefit of the doubt and assume that he really did screw it up, as I’ve never had an inventor say such a thing to me.

  6. I, probably not unlike a lot of pro ses, made the mistake of claiming my best mode in the application while not unlike a number of inventors, came up with a superior best mode after I was on file. Luckily, I did such a $hitty job, language wise in the claims, that the claims were rejected on that account only by the examiner,thereby giving myself the opporunity to broadly claim not only the ‘old’ best mode, but the ‘new’ best mode as well in the amended claims- the examiner tweaked that language as well… getting me to issue stage where I am now. Oh, the new best mode is supported in my spec, in a general sense. I don’t ever see it being invalidated because of that. I hired a pro to write my CIP for nore coverage and he screwed it up- he’ll have to do it all over again. I’m paying my issue fee this week, so he’s got about month-6 weeks to get it done and filed. I’m not upset, he’s only a patent attorney-not an inventor.

  7. “You refused to change a 102 to a 103 in response to their arguments?”

    I felt since it was disclosed in one reference and was pertaining to one embodiment…live and learn.

    “I think Examiners ought to give more 102/103 combination rejections than they do”

    I do many 102/103, since I see a lot of property and product-by-process based limitations. PEIT (I’ve been examining just a bit longer than the PTA’s been around–but not much), frowned on 102/103 and my instructors almost derided it. Not ’til a few years later was I directed to the MPEP and the six reasons for 102/103 (sorry, I’m at home and don’t have access for the citation).

  8. “Parsed like a bad wanna be attorney – e6k, do you really really think that “why not” wants rejections at all, but rather, if he receives rejections, that the rejections are desired to be of better quality than a “103 transformed from a 102″ type?”

    jk?

  9. “You threw a best mode rejection that you knew was flimsy (at best) at a pro se inventor? You’re a real prince.”

    Well, it just so happens he’s the no. 1 pro se ever. He’s famoose. I figure he can handle it, and he did. He took care of it, amended the limitation out of the claim so I let it go. But you’re right JD, it was probably improper.

    Fact is I come up against this “simultaneous” stuff all the time, 90% of the time they’re referring to a well known process, but some apps find that so special. The thing I don’t understand in this case is, the app says “Well, one of ordinary skill would know to do x process to do this simultaneously”. I mean, does he not expect me to 103 him over the exact thing he is alleging using the motivation “to perform the steps simultaneously and save time”? Da ng, that’s practically AAPA.

  10. “You threw a best mode rejection that you knew was flimsy (at best) at a pro se inventor? You’re a real prince.”

    Leo,

    The (un)official policy of PTO (mis)management is to drive pro se applicants away. Frustrate them until they just give up, run out of money, etc.

  11. The Request for Information would be requesting all facts known to the applicant relevant to a determination that the applicant violated the best mode provision?

  12. Feel free to peruse MPEP 2165.03.

    Given the limited facts you’ve supplied, if the inventor disclosed in the application as originally filed that the two steps are/can be performed simultaneously, but didn’t initially claim it, and then amended the claim to include the “simultaneous” feature, there’s no best mode issue, assuming it was known to those of ordinary skill in the art how to perform the steps simultaneously (if it wasn’t known, there would be enablement issues).

    From the Dana Corp case you cite:

    “The “Wilson report,” the in-house letter cited above, and the testimony concerning Dana’s first sales of the patented seals are the only pieces of evidence in the record that are probative concerning what the inventor, Mr. Wilson, thought constituted the best mode of his invention. The two documents present uncontroverted and corroborating evidence that, at the time the application for the ‘621 patent was filed, Mr. Wilson believed that the best way of carrying out his invention included fluoride treating the surface of the valve seals. That this was the best mode at the time is confirmed by the fluoride-treated seals based on the Wilson design first sold by Dana. Having no evidence to the contrary to consider, reasonable minds could not have differed as to whether Mr. Wilson believed that fluoride surface treatment was part of the best mode of carrying out the claimed invention.
    Other surface treatments were set out in the specification as useful “in some instances” as follows: As previously shown, the Wilson report concluded that “[s]urface treatment is necessary to satisfactory performance of seal.”
    In some instances, the sliding sealing surfaces, such as the internal wall, may be coated with a lubricating material, such as molybdenum disulfide, graphite, or the like, to provide a more slippery surface on the elastomeric material and decrease friction between the seal and the valve stem. The methods of applying such surface coatings are well known and widely used for elastomeric seals.
    Nowhere in the specification, however, does the inventor disclose that a fluoride treatment must or even should be applied to the surface of the patented seals as indicated in the “Wilson report”. The established facts clearly show that fluoride surface treatment was the best mode contemplated by the inventor at the time the application for the ‘621 patent was filed, and that it was not disclosed in the specification.”

    Unless you have pretty similar facts, your best mode rejection is most likely improper.

    Please feel free to get your SPE to sign off on a request for information. You can bring it up while you, your SPE, and Mr. Dudas are having lunch together.

    Then please post the serial number so we can all marvel at your ground breaking legal work.

    BTW, don’t you have some end loading to do?

  13. Parsed like a bad wanna be attorney – e6k, do you really really think that “why not” wants rejections at all, but rather, if he receives rejections, that the rejections are desired to be of better quality than a “103 transformed from a 102” type?

  14. “My only pro se. Files 1 page long responses, I like him.”

    You threw a best mode rejection that you knew was flimsy (at best) at a pro se inventor? You’re a real prince.

  15. What I figured, but his statement was puzzlingly almost evidence enough. He was like “well, all you’d have to do is x…”.

    The best mode requirement was violated because an inventor failed to disclose whether
    to use a specific surface treatment that he knew was necessary to the satisfactory
    performance of his invention, even though how to perform the treatment itself was known
    in the art. The argument that the best mode requirement may be met solely by reference to
    what was known in the prior art was rejected as incorrect. Dana Corp. v. IPC Ltd.
    Partnership, 860 F.2d 415, 8 USPQ2d 1692 (Fed. Cir. 1988)

    This guy failed to disclose whether to use x method as opposed to another one and that he knew had a certain benefit. The only prong of the analysis that might be missing is evidence that he knew that at the time of the invention. A simple request for information should clear that up, eh JD? He’s a really cooperative app though, he even dutifully disclosed that the peice of his own work that is prior art that was being used against him didn’t contain x feature of his amended claim. My only pro se. Files 1 page long responses, I like him.

    “I want new rejections, not modifications of a previous rejection.”

    I take it you are an attorney. See what’s wrong with our system? People WANT rejections. No wonder the allowance rate is so low.

  16. Re 102 rejections, I think Examiners ought to give more 102/103 combination rejections than they do. Of course, I don’t know what training is given at the PTA. If you have what you think is a 102 rejection, why can’t the Examiner just write an additional paragraph along the lines of “if the applicant argues that any given limitation is not disclosed, then that limitation would be obvious.” I know when I respond to 102 rejections, I make 103 arguments as well so they don’t just give me a 103 on the next office action. I want new rejections, not modifications of a previous rejection.

  17. “I have been reversed by the BPAI for just this issue.”

    You refused to change a 102 to a 103 in response to their arguments? I’m nearly always willing to make the rejection a 103 (103c notwithstanding). I just realized the other day I did that one time and still went final. “Grounds of rejection are still the same”. Improper=>RCE.

  18. Did the applicant say that when the application was filed that “simultaneously” was the best mode?

    If he did not say that, then a bm rejection is improper.

    (Maybe a new matter or written rejection is proper)

  19. The other day I had an applicant amend to include performing a step “simultaneously” with another step, they then proceeded to tell me how one of ordinary skill would perform the step. It was one of many ways that one of ordinary skill would know. I rejected under concealment of best mode as well as art. Proper? T/F?

  20. “On remand, the lower court will reevaluate obviousness.”

    Anybody think this case is going anywhere? I think it’s dead in the water.

  21. “the PTO’s decision to allow an amendment provides a patent with “an especially weighty presumption of correctness.”

    LOL. Especially weighty? That’s real helpful. As certain commenters here are fond of noting, nearly EVERY Office Action contains a mistake.

    So much for the presumption.

  22. “I would be interested to hear others experiences/comments on an Examiner’s 102 rejection over 2 references in which one has been incorporated-by-reference into the other.”

    I have been reversed by the BPAI for just this issue. The main reference didn’t use the magic “incorporated by reference” words but said “made by the process of Smith in Patent n” (they were both JPO documents). The judge suggested a 103 over the two references.

    My training is that if the magic words are used, its 102, except, per Blaise Mouttet, I have also been trained to make a single-reference 103 over two non-overlapping embodiments within the same reference. The rationale being that it affords applicant the opportunity to make a secondary consideration (unexpected results for example) argument.

  23. Regardless whether an individual EPO Examiner has or has not got English as first language, the entire building/organisation/culture/jurisprudence of the 34 member State EPO is founded on using English (Globish?) as a foreign language. Right up to the highest levels. An English native speaker soon tunes in, but then loses any academic or abstruse English lawyerly style. Imagine you are seconded to the Japanese PO and have to decide whether an Applicant amendment has, or has not, added subject matter, and then communicate your views to colleagues, in Japanese. Wouldn’t you also be inclined (to be on the safe side) to require verbatim support from the words in the original reservoir of disclosure? Not sure an Exr at the USPTO, struggling in English, has the same EFL environment in which to work.

  24. Thanks Max and Leo.

    Leo, I hear what you say, but still find it hard to reconcile with personal experience. But what the hey, it’s very nearly the weekend in GB (already is at the EPO!), and the malt, the malt is calling…

    Slainte/cheers/prost/skol/kampai

  25. “So given that the original spec must be ‘sufficient to allow persons of ordinary skill in the art to recognize that the inventor invented the subject matter that is claimed in the asserted claims’, what is the minimum that is needed in the original spec to support a claim comprising a combination of elements not clearly identified as constituting an invention in its own right, or to support a generalisation from a specific example?”

    Eurodisnae, you have to be careful with the quoted statement (‘sufficient to allow …’), as it is a paraphrase of a previous opinion’s paraphrase of the language of the statute. Nothing in Section 112 suggests that the description must clearly point out that a particular combination of elements constitutes an invention “in its own right.”

    However, your actual question includes the loaded phrase “a combination of elements not clearly identified …” If the original specification in fact doesn’t make a combination of elements apparent to a person of ordinary skill, then that combination can’t be claimed. Further, your question suggests that generalizations by amendment of a specific example in the original disclosure are routinely allowed. Again, if the original specification doesn’t make that generalization apparent to the person of ordinary skill in the art, then it can’t be claimed later.

    But the courts allow the question of new matter to be judged on the basis of what a person of ordinary skill would understand, not on the basis of whether the exact words were used, or whether a particular combination from among those that are taught is expressly recited.

  26. Mr Bloom, Eurodisnae, Teschemeacher (of the EPO) comments on Decision T_1269/06, downloadable from the EPO website, in which the Board reminds that 1) the burden of proof is on the Opponent and 2) to win in a “new subject matter” attack the opponent has to show exactly what subject matter it is, that is in the amended version but not in the docs before amendment. That’s the correct test. At last.

  27. Leo: – “If there is nothing in the specification as filed to indicate that a particular combination of features was considered by the inventor to have any special merit, can he be said to have invented that combination?”

    – No, he can’t. See, we’re not that different from you. –

    I have to say I find that difficult to square with my experience given, (a) the way that US practitioners seem to be free to re-draft independent claims from the ground up during prosecution, without any clear support from the as-filed spec, particularly in view of (b) the virtual absence of any meaningful discussion of the “invention” or its advantages in the as-filed spec.

    So given that the original spec must be “sufficient to allow persons of ordinary skill in the art to recognize that the inventor invented the subject matter that is claimed in the asserted claims”, what is the minimum that is needed in the original spec to support a claim comprising a combination of elements not clearly identified as constituting an invention in its own right, or to support a generalisation from a specific example? It has always appeared to me that the mere fact that the elements are disclosed at all is enough for the USA, although I’ve always been told that this isn’t actually the case. I’ve never been able to get a handle on what limits there might be on generalising from embodiments.

    – “U.S. law is not quite so hung up on requiring that only the “magic words” from the specification are used in amended claims.”

    The EPO is very strict on added subject matter, to be sure. Amendments based verbatim on the description are the path of least resistance, but cogent argument based on what the PHOSITA would glean from the disclosure can often win the day. Broad generalisations from limited examples will always be problematic.

  28. Thanks, Max. I wasn’t despairing. Complexity doesn’t really get me down. Thanks for the tip on Teschemacher. Unfortunately, my German’s a little weak. :( What’s the gist?

    By the way, your assertion, “the EPO, alone of all Patent Offices in the world, is staffed by people who are working in EFL (English as a foreign language),” suggests that you believe that the USPTO is staffed by native speakers of English. You might want to ask your US peers whether they believe that this is generally true of the examining corp.

  29. As a former US Examiner I was taught that when a single reference contained multiple embodiments and a combination of separate elements contained within the embodiments were needed for rejection a one reference 35 USC 103 would be necessary (i.e. obvious over embodiment 1 of X in view of embodiment 2 of X).

    Similarly when a first reference incorporates a second reference the two references may be considered different to the extent that a 35 USC 103 rejection would usually be required (unless there is an explicit identification of how elements from the second reference are used in the first reference).

  30. I would like to throw a question out there regarding the attempted 102 rejection on the basis of two references. It seems pretty preposterous in this case, considering the mere reference in a footnote.

    But what about in cases where a second patent has been incorporated-by-reference into the first/primary reference? Technically the patent incorporated-by-reference should be considered part of the disclosure of the patent. However, I have seen situations where the Examiner essentially refuses to acknowledge an incorporation-by-reference.

    I would be interested to hear others experiences/comments on an Examiner’s 102 rejection over 2 references in which one has been incorporated-by-reference into the other.

  31. …..which is because the EPO, alone of all Patent Offices in the world, is staffed by people who are working in EFL (English as a foreign language). And it’s no bad thing, because, after issue, judges using their first language, and NOT English, will adjudicate patents that have English as the definitive text. Anyway, Mr Bloom, don’t despair, even that rigidity in the EPO is changing. Suggest to read Teschemacher in this month’s Mitt. (But it’s in German, mind).

  32. “If there is nothing in the specification as filed to indicate that a particular combination of features was considered by the inventor to have any special merit, can he be said to have invented that combination?”

    No, he can’t. See, we’re not that different from you. But U.S. law is not quite so hung up on requiring that only the “magic words” from the specification are used in amended claims.

  33. “US District Court judge, fresh from sorting out motoring and family disputes…”

    I gather not in Europe, but in the U.S. anyway, these matters are routinely handled in state courts and family courts within the state court systems.

  34. Disnae, I offer an explanation. What do you think of this:

    In the EPO what Examiners decide is reviewed by 1) the other two in the examining division 2) a different two expert colleagues in the opposition division and then 3) three (or even 5) different expert colleague judges in the TBA. So, any idea of “deference” would seem, to all concerned, rather quaint.

    Conversely, to a US District Court judge, fresh from sorting out motoring and family disputes, the idea of giving the PTO Examiner “an especially weighty presumption of correctness” might seem anything but quaint, in fact, it might seem to be the only practicable way of getting to a decision.

  35. Re: “The new matter limitation is not strict. Rather, when the claims are amended, the patent will only be invalidated if the original specification is not “sufficient to allow persons of ordinary skill in the art to recognize that the inventor invented the subject matter that is claimed in the asserted claims.””

    – OK, but what does “invented the subject matter” mean? If there is nothing in the specification as filed to indicate that a particular combination of features was considered by the inventor to have any special merit, can he be said to have invented that combination? That is certainly an issue for added subject matter at the EPO.

    Re: “Further, the PTO’s decision to allow an amendment provides a patent with “an especially weighty presumption of correctness.” ”

    – Is that true whether or not the prosection history explicitly shows that the examiner gave the question due consideration?

    Addition of subject matter is a very popular line of attack in EP opposition proceedings, which can be fatally incurable by amendment: no addition of subject matter pre-grant/no broadening of claims post-grant.

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