PTO must interpret claims in light of specification and as they would be interpreted by PHOSITA

In re Wheeler (Fed. Cir. 2008) (non-precedential).

Wheeler’s patent application covers a fishing pole with an illuminated transparent rod. A light in the handle illuminates the whole rod. The BPAI found the invention anticipated by another illuminated fishing rod patent. On appeal, however, the Federal Circuit reversed.

The difference is one of claim construction. The BPAI held that the claim only required a portion of the rod be illuminated, but the Federal Circuit interpreted the claims to require that the entire rod be illuminated. Since the prior art only disclosed a partially illuminated rod, the question of anticipation turned on this claim construction issue.

PTO Claim Construction: As with district court decisions, BPAI claim construction decisions are reviewed de novo on appeal. However, the law of claim construction allows the PTO to construe claims much more broadly than would a district court. In particular, during prosecution, claims are given their “broadest reasonable interpretation to facilitate precision in claiming.” Of course, even at the PTO “claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.”

Here, Wheeler’s patent claims “an illuminated fishing poleā€¦made from a transparent, flexible material.” The specification also states that the entire fishing rod is transparent and lighted along its length. Applying its interpretation, the Federal Circuit found that the claim required that the entire rod be transparent and lit. Because that limitation was not found in the prior art, the claim is considered novel.

52 thoughts on “PTO must interpret claims in light of specification and as they would be interpreted by PHOSITA

  1. 52

    Malcolm writes:

    “”Examiners often cite references against an application without fully understanding the subject matter of the application they’re dealing with”

    LOL. Applicants often file applications without fully understanding the subject matter they’re dealing with.”
    ————————

    Like a broken record. Thank you for re-inforcing my previous comment MM.
    ————————
    “Rather, it’s about money.”

    Wait, it’s about money? Stop the presses! Seriourly MM, of course it’s about money – money is the carrot that is supposed to provide the incentive. And where there’s money to be made, there will always be those that will try to push the boundaries for their benefit. Like I said, you can put away your drum, it’s old news.

    The discussion on this board is not about that though. What’s being discussed here are the occasions when the Examiner drops the ball. The fact that applicants aren’t perfect does not excuse the USPTO from its responsibility. Two wrongs don’t make a right.

  2. 51

    LOL – so Malcolm is not about the money. Let me guess, deep down he feels that any property right is anathema and believes a socialist or communist state is truly ideal as well.

  3. 50

    “openly point at the PTO’s refusal or inability to grant MORE patents more quickly as a root cause of the PTO’s problems”

    Malcolm, you have confused a symptom for the disease. The root cause deals with the “why” of the PTO’s refusal and its desire to make the Law as it sees it for its own agenda instead of following the law and executing to it. The “more patents more quickly” would simply be a benefit of the Office spending its time doing its job rather than power-grabbing.

  4. 49

    Malcolm:

    What is the “root cause” of the PTO’s problems?

    And when was the work of a patent attorney not about money?

  5. 48

    “Malcom, your inability to admit the shortcomings of the USPTO”

    Except anyone who reads this blog regularly understands that I readily admit the shortcomings of the USPTO, at least where the shortcomings are genuine and not some variation on “these criminals won’t give teh patent to this guy who filed 2000 claims without any written description support, WAAAAAAH!!! WAAAAAH!”

    “Examiners often cite references against an application without fully understanding the subject matter of the application they’re dealing with”

    LOL. Applicants often file applications without fully understanding the subject matter they’re dealing with. Or if they do understand it, they pretend they don’t. Moreover, any attorney who prosecutes regularly has handled plenty of applications that they don’t “fully understand.” In many instances, that’s useful and also a money saver for clients who don’t want to be told that their invention is obvious doo-doo. They just want the crap filed so they can find a naive licensee to fund the dream.

    At the end of the day for most applicants at the PTO, this is the unspoken truth: filing patent applications and prosecuting them is a business unto itself that exists independently of “inventing” or “progress” as those terms are commonly understood. Rather, it’s about money. Money, money, money, money, money.

    Modern day patent law has far more in common with hedge fund investing than it does with, say, drafting up a description of a parcel of real property and submitting it to the government for approval prior to its sale, lease or enforcement. The USPTO’s problems arise from the same historical failures that the PTO’s clients are struggling to deal with: unchecked greediness, combined with a shocking lack of foresight and a an enlarged sense of self-entitlement.

    The fact that there are applicants and prosecutors out there who openly point at the PTO’s refusal or inability to grant MORE patents more quickly as a root cause of the PTO’s problems is as absurd as it is transparently self-interested.

  6. 47

    “but trying to justify the Examiner’s position in UTEX’s “resolution” case is just pointless ”

    I’m not justifying it. And UTEX knows I’m not justifying it. I’m telling him what to do to get around his problem and specifying what the problem is.

    “Examiners often cite references against an application without fully understanding the subject matter of the application they’re dealing with, nor of the references they cite against it.”

    They force me to do chemistry heavy cases occasionally. I have to cite references that are full of subject matter I don’t understand.

  7. 46

    Malcom writes: ” “I’m not stating that this Wheeler claim is well drafted or even patentable, but it’s the examiner’s job to give a good examination, which this anticipation rejection was not.”

    Whose job is it to write a patentable claim that clearly defines the scope of the alleged invention?”
    —————————-
    Malcom, your inability to admit the shortcomings of the USPTO is as amusing as it is harebrained – and your comments are just plain childish. It is well-known that there are applicants out there who like to obscure the scope of their applications (you can stop drumming about it, no really, please). But that doesn’t change the fact that the USPTO has it’s very own problems to deal with, some of which are starkly illustrated in this comment board (UTEX, thank you for sharing your anecdote, it’s a classic).

    e6k – you don’t seem as inflexible nor as irritating as MM, but trying to justify the Examiner’s position in UTEX’s “resolution” case is just pointless – there is only one way to slice that one. It is a fact that many Examiners often cite references against an application without fully understanding the subject matter of the application they’re dealing with, nor of the references they cite against it. Can’t really blame them, given the constraints within which they work.

  8. 45

    Erez “I cannot understand why this case was taken to the CAFC, wasting precious USPTO resources”

    If your concern is “wasting precious USPTO resources,” then your gripe lies with Mr. Wheeler and other wankers who created the backlog by filing reams of silly patent applications.

    Bubble time. It’s over. It’ll take a while for the densest and most addicted members of society to adjust, but it’ll sink in eventually. Maybe when we hit the 10% unemployment mark.

  9. 44

    Malcolm:

    I could not find the file wrapper so I can’t comment whether or not Wheeler surrendered the equivalents by argument.

    I was referring to the amendment you suggested Wheeler make during prosecution. At that time, Wheeler had presumably surrendered nothing and had to decide how to overcome the bizarre rejection.

    That said, you still do not address the real question.

    I have always advocated giving Examiners better work conditions, increased pay and more time per case to make good searches and solid rejections because I imagined them to be overworked people trying to do a good job under difficult conditions.

    However, I cannot understand why this case was taken to the CAFC, wasting precious USPTO resources that could have been used to get rid of the backlog, when a junior examiner like e6k can find much better 102b art in a 10 second informal search. Can you explain?

  10. 43

    “A third reason is the DOE. The claim as written now covers a fishing pole with a rod that is illuminated along most of its length. If the Applicant added your limitation, a competitor who would want to steal Wheeler’s idea could copy Wheeler’s pole, add a 1 inch piece of duct tape near the reel to avoid literal infringement and would be insulated from the DOE by Festo.”

    As I noted above, Wheeler has surrendered those equivalents by argument (and will surely end up amending his claim anyway) so what difference did it make? Somebody just spent a lot of money for nada. Or maybe someone was forced to spend a lot of money on Wheeler’s behalf for drafting a jacked up claim …?

  11. 42

    “What can be claimed under 112 1st is what was taught.”

    Fair enough, so I’ll rephrase – I don’t think that the claim at bar could have been claimed based on the disclosure of the prior art. The prior art disclosure talks about a light transmission to the tip – not a transparent rod. Now, arguably, you could say that the transmissive conduit is the entire pole, like fiber optics, but I think that is a pretty broad reading of the teaching. Indeed, you would have to say that it is the broadest reasonable construction of the prior art, which is distinctly at odds with an enablement requirement for anticipation (another issue I talk about in my article).

    I am just not buying the view (and neither did the CAFC) that a reasonable but broad reading of the claim (especially in light of the specification) means that just a transparent handle is enough because it is part of the pole.

    That said, it looks like a strong obviousness case (or even anticipation if the prior art discussed in the Kelly patent is applied – maybe that’s what you found in your google search).

    I also think that the terms rod and pole seem to be used interchangeably here (perhaps due to a prior amendment to get over prior art) and definiteness is a reasonable rejection. This answers the Mooney question about who has the responsibility to write a clear claim – the patentee, obviously, but you should get there by rejecting indefinite and undescribed claims, not by making up prior art. This is a core point I make in my article.

  12. 41

    6k in an earlier post you said “Regardless, I would smack such an argument down. The issue of a claim limitation being satisfied when it is actually satisfied instead of when the spec wants it to be satisfied is a ridiculous one. This is a routine issue in my art, making it so that a piece of material that was specified to be 100% copper in the spec, but having been claimed as “a copper x” is still anticipated by copper + 5% Al. W T F. It is a dam good thing this is nonp. ”

    I am going to stroke your ego and solicit your advice. What if the claim preamble used comprising, but the element that described the pole were wrote with a “consisting of” phrase e.g., The pole consisting of copper – rather than expressly define the pole as 100% copper. Would that satisfy you? As practicioners, if we put in a 100% limitation, you and I both know that nothing is ever 100%. Therefore, an infringer could just say that my copper pole is not pure copper,ie. not 100% copper.

    With a 100% limitation, the claim might be allowed, but in practice, its useless. With a consisting of phrase, as long as the added material or impure copper didn’t materialy effect the basic and novel characteristics of the invention, I could still claim the impure copper pole infringers my claim.

  13. 40

    “It’s not what could have been claimed by the prior art, but what is taught (and enabled). ”

    What can be claimed under 112 1st is what was taught.

    “Under any interpretation standard, there is no way that a transparent bulb at the tip of a fishing rod teaches an entire pole made of transparent material with the bulb at the handle.”

    It’s a good thing for the BPAI and the examiner that no such thing was even allegedly invented. That however, is a bad thing for you and the CAFC.

    The question at hand is: Does a pole with a flexible rod, a bulb in the handle and at the tip teach a FISHING POLE (not a rod) which is made of a transparent, flexible material and also has a bulb in the handle?

    The answer is yes.

    “the light-bulb on a stick of 5,644,864 has nothing to do with claim 1 and the Applicant expected either the Examiner or the BPAI to admit this.”

    except that the light bulb can be considered part of the fishing POLE (not rod). And is thus the transparent part of the material comprising the pole. The BPAI and the examiner both admitted this.

    “It could be that the Applicant did not understand that such an added limitation would put the claim in condition for allowance.”

    It doesn’t.

    “There was nothing preventing the Examiner, the SPE or the members of the BPAI to take the 10 seconds that it took e6k (December 28 8:00 PM) and give Wheeler what he paid for.”

    Except they did. They gave him a 102b that reads blatantly on his claims. Just because I found a reference that reads on the way he wants his claims to read doesn’t mean the SPE etc wasn’t justified.

  14. 39

    Hey 6, I appreciate the advice. I actually believe in prosecuting that way. If I think the examiner has a point, even if it’s one that is a huge stretch, then I’m generally willing to amend to clarify claim language (depending on how huge that stretch is and how reasonable it is to make that stretch). The reason why I’m going on about this case is that my claim language was already pretty darned narrow. The phrase from my claims read “… a display resolution of a computer monitor …” which is modified in some manner. The phrase in the reference cited by the examiner that I referenced earlier was actually the figure introduction from the Brief Description of the Drawings. It stated something along the lines of “Figure [X] illustrates a system that provides a resolution to the problems encountered by transmitting” some message signal over a communication network. When I spoke with the examiner to point out that the reference was disclosing that particular system which “resolves” the transmission problem, and not a display resolution of a computer monitor, as claimed, he, of course, didn’t admit his mistake, but did say he would have to look at that reference again. In my own word search of the reference, that was the only use of the word “resolution,” and there was no disclosure that involved computer displays, display resolutions, etc. So, hopefully, you can appreciate my frustration in this particular case, which I’ll likely have to take up on appeal. I believe my claim language regarding the “display resolution of a computer monitor” is abundantly clear and could only be made unclear if I tried to (unnecessarily) add verbiage to it.

  15. 38

    “That is to say, the pole in the reference could be claimed: A fishing pole comprising a flexible, transparent material. ”

    It’s not what could have been claimed by the prior art, but what is taught (and enabled).

    Under any interpretation standard, there is no way that a transparent bulb at the tip of a fishing rod teaches an entire pole made of transparent material with the bulb at the handle. It’s two different inventions, and if the prior art tried to make the claim at bar, it would fail for both description and enablement. Of course, 103 might apply if there are other references out there, but not anticipation.

  16. 37

    Malcolm:

    The answer to your question of December 28 at 2:10 PM is Applicant and Examiner together, just like in the EPO.

    I believe that the differences of opinion here stem from the difference in view that you and other Examiners have compared to Applicants and Patent Attorneys.

    I would like to mention that I haven’t found a copy of the application or file wrapper so anything I write is based on some assumptions.

    You write that you worry about lack of clarity of the scope of the claims. However, as the CAFC ruled, there is no lack of clarity: no one, be it a judge, a Phosita, a fisherman or a man on the street would have any problem excluding the the light bulb on a stick of 5,644,964 from the scope of Wheeler’s claim 1.

    You ask why the Applicant did not add the limitation “along the entire length of the rod”. There could be any number of reasons.

    For instance, it could be that the Applicant was trying to draw out a better rejection before amending: the light-bulb on a stick of 5,644,864 has nothing to do with claim 1 and the Applicant expected either the Examiner or the BPAI to admit this.

    It could be that the Applicant did not understand that such an added limitation would put the claim in condition for allowance. I doubt anyone could have realized that this limitation is what differentiates Wheeler’s rod from the light bulb on a stick. The question that should be asked is why the Examiner didn’t suggest this in one the three Office Actions or call the Patent Attorney.

    A third reason is the DOE. The claim as written now covers a fishing pole with a rod that is illuminated along most of its length. If the Applicant added your limitation, a competitor who would want to steal Wheeler’s idea could copy Wheeler’s pole, add a 1 inch piece of duct tape near the reel to avoid literal infringement and would be insulated from the DOE by Festo.

    What really should concern you is my first posting. The USPTO forced Wheeler to expend a significant amount of time money for nothing. All this case proves is that at least in one case the USPTO pocketed $270 for work that takes 10 seconds and gave nothing in return. There was nothing preventing the Examiner, the SPE or the members of the BPAI to take the 10 seconds that it took e6k (December 28 8:00 PM) and give Wheeler what he paid for.

  17. 36

    “to my knowledge, most of the examiners read only the claims and in only rare case that the examiner will look into the specification”

    RIIIIIIGHHHTTTTT.

  18. 35

    “However, after informing the examiner of his mistake by pointing out the totally misplaced context of the reference’s use of the term “resolution” and still receiving the same rejection in the next office action with the examiner stating that the arguments were not persuasive, I will, at least in a public forum, presume that the examiner did not understand the difference, instead of saying either (1) that he unethically resubmitted a rejection that he knew was completely bogus (i.e., the examiner is dishonest), or (2) that he “forgot” a critical deficiency in his sloppily-cobbled-together 103 rejection (i.e., the examiner is incompetent).”

    What more likely happened is that he still believes that he successfully read the limitation out of the claim, when in reality he failed to. Pointing out the “difference” is not going to be persuasive because he already knows the difference and feels as if the claim limitation is met in a different way. Call him out on reading the limitation out of the claim by making your point more clear in the claim. A few words as an amendment can cure this problem nearly every time. Bite the bullet and make them unless you want to appeal.

    What he is essentially telling you is that your claim limitation isn’t tight enough for his liking since he believes he can read it more than one way, so he would like you to tighten it up. How hard is it for people to read between the lines? I personally abstain from this practice usually, barring extraordinary circumstances, but it is easy to see when others are doing it.

  19. 34

    to my knowledge, most of the examiners read only the claims and in only rare case that the examiner will look into the specification. Therefore, it is NOT fair to ask the examiner to read on the support from the Spec. when trying to interpret the claim term. Good Lord, how lucky I am that I am not dealing with this GAU.

  20. 33

    “You sir actually believe that the examiner did not understand the difference? Give me a break. He knows exactly what the difference is and failed at reading that limitation out of the claim.”

    6, if an examiner uses a straight word search to build a 103 rejection without actually reading the context of those words in the various references, that’s a sloppy way to examine an application, but I can understand that this guy may have been under pressure to get something out on this case. However, after informing the examiner of his mistake by pointing out the totally misplaced context of the reference’s use of the term “resolution” and still receiving the same rejection in the next office action with the examiner stating that the arguments were not persuasive, I will, at least in a public forum, presume that the examiner did not understand the difference, instead of saying either (1) that he unethically resubmitted a rejection that he knew was completely bogus (i.e., the examiner is dishonest), or (2) that he “forgot” a critical deficiency in his sloppily-cobbled-together 103 rejection (i.e., the examiner is incompetent). So, I’m not sure if I actually believe that the examiner did not understand the difference, but I think that statement gives you guys the benefit of the doubt.

  21. 32

    “The light source at the tip of the rod, which is not in the handle, as required by the claim, does not teach the identical invention arranged or combined in the exact same way as described in the claim. ”

    See, he’s picking up on the other issue which I was bringing up, and is also blatantly addressed by the prior art. Look at the reference you will see.

    6k tried to post a google link here but typepad insists it is sp am.

    There is clearly a light source in the handle as well. ” (a) a substantially hollow handle having a light transmissive portion near one extremity, a handle light source inside the handle that illuminates the light transmissive portion when energized, an electric power source, and a manually operated main electric switch; ”

    This is why your avg joe reading these decisions is ridiculous. This issue is between the examiner and the CAFC. Two parties that allegedly should both know wtf is going on.

    “The examiner did not understand the difference in meaning between the two uses of “resolution” meaning a display resolution and “resolution” meaning something that resolves a problem. ”

    You sir actually believe that the examiner did not understand the difference? Give me a break. He knows exactly what the difference is and failed at reading that limitation out of the claim.

    In the end, the bottom line is this: The CAFC read the rod and the pole to be the same thing. They also imported limitations. Read the decision and you will see this. They are blatantly not the same thing. And limitations SHOULD NOT be imported from the spec under any circumstances except perhaps those most dire ones requiring giving 112 difference after issue of a patent to preserve the lolpresumption of validity.

  22. 31

    “On a side note, I agree that the claim should be amended to recite the highest precice boundary, but the claim should have been amended to recite a boundary of some sort to begin with and not have the Federal Circuit read one in. ”

    F in thank you. You and all the other irl attorneys believe the same thing. I ROUTINELY get claims amending around things like this because it pops up all the time. I have never once even had an argument made arguing such ridiculousness as was presented by the CAFC in this case, and I hope it does not spark a bunch. And guess what happens after the amendment? Usually a 103.

  23. 30

    “If the USPTO had allowed the claim (but stated in the reasons for allowance that the claim required the entire rod to be illuminated and transparent), I wonder whether applicant’s attorney would have traversed with a comment on the reasons for allowance. ”

    If he was worth his salt f yes he would have.

    “As if it would make a difference? Serious question.

    Now we can all wonder what “entire fishing rod” means. Isn’t the fair conclusion (assuming the claim is valid as it stands — LOL) that “entire” means 100.00%?”

    Rest easy MM, 102b art preceding this case by about 8 years is googled in 10 sec. And it indeed has a rod that is 100%. The CAFC can’t let them import imaginary limitations saying that the handle and reel must also be flexible and transparent since even the applicant’s were not.

  24. 29

    “6k’s comments on this case are proof that (a) a reading comprehension test should be required of examiners before they’re hired and (b) the PTO’s current QA regime is an abysmal failure. I am infinitely grateful that I don’t practice in his art group and thus I avoid dealing with his s-t-u-p-i-d-i-t-y. ”

    I’m the only one arguing for NOT transplanting limitations into the claim from the spec and I”M THE ONE WHO”S MISTAKEN? You sir are off your rocker. I cannot believe this is NEWMAN speaking. Her old school interpretation HAS to be not to import limitations from the spec. I have a feeling this whole case was just them granting the little guy a break and then calling it nonp so they could disclaim this ridiculousness later.

  25. 28

    “e6k – I’m not an examiner, but I don’t quite get your vehement objection here. The claim says: “said elongated fishing pole being made from a transparent, flexible material”. I think this is an easy call under the PHOSITA standard, as the specification makes clear what this claim means.”

    Yes I already went over the issue at phawk. There are two possible issues in the claim at issue. One about where the light goes and from where, and one about what the “pole” is comprising.

    Blatant anticipation of elements is blatant. The pole must be made of a material that is both transparent and flexible. The material the pole is comprised of in the reference is a. a flexible rod and b. a transparent light bulb. That is to say, the pole in the reference could be claimed: A fishing pole comprising a flexible, transparent material.

    Anyway, like I said, I googled the examiner some art that I listed at phawk. I forget what it was, it should take care of 1-5.

    FYI:

    “But even under the broadest reasonable construction standard, I would think that the broadest construction of this term is that the entire pole (indeed, if pole is more than rod, then this includes the reel) ”

    The “pole” blatantly includes anything that could be called a “pole” and is certainly different from the “rod”. Just like you saying the pole includes the reel shows off the fact that the pole includes the ENTIRE fishing pole, including reel, and handle, and any other little attachments (see light bulb). That’s why the CAFC putting the [sic] after the board’s “pole” was ridiculous. They in essence made the board hold that the whole pole must be transparent and flexible. OUTRAGEOUS.

    Were I an examiner irl, the only reasonable response would to purge this application with the holy fire that is prior art.

    Plus, to all you people arguing for a 103, wtf, why even bother with the 103, this is 102 territory boys. This is anticipation and you don’t want to weaken your case blathering on about obviousness when you have a statutory bar. He’s free to make a 103 when the loljudgement gets returned to him. Mske them pony up the 1k for an lolappeal before you weaken your 102 position.

    “”said elongated fishing pole being made from a transparent, flexible material”. does that mean the entire pole?”

    f no.

    “Is it that it is broader because it allows for different materials and thus more prior art? Fair enough, but that’s like saying that a nail made of steel really means a nail made of steel with a copper head – that’s a broader interpretation, but it also adds a limitation – a nail made of steel and something else, and it’s also not terribly reasonable, especially if the specification specifically says the nail is made 100% of steel.”

    Yes, it might be a reasonable argument then, provided the applicant argued it and made estoppel. But this application did NOT say that the pole was 100% flexible and transparent, it made it clear that it was NOT 100% flexible and transparent.

    Regardless, I would smack such an argument down. The issue of a claim limitation being satisfied when it is actually satisfied instead of when the spec wants it to be satisfied is a ridiculous one. This is a routine issue in my art, making it so that a piece of material that was specified to be 100% copper in the spec, but having been claimed as “a copper x” is still anticipated by copper + 5% Al. W T F. It is a dam good thing this is nonp.

    Besides, even a POSHITA would read the claim as not requiring the whole pole to be 100% transparent and flexible.

    “Is it that it is broader because it allows for different materials and thus more prior art? Fair enough, but that’s like saying that a nail made of steel really means a nail made of steel with a copper head – that’s a broader interpretation, but it also adds a limitation – a nail made of steel and something else, and it’s also not terribly reasonable, especially if the specification specifically says the nail is made 100% of steel.”

    Oh and also, this has di ck to do with “broadest reasonable” it has to do with “the only reasonable” interpretation.

    I cannot believe the people advocating for blatant transplantation of limitations from the spec to the claims.

    ” if I talk about “Java” to PHOSITA in the computer arts, yes, he should perhaps interpret it as the Sun programming language…does this prevent him from interpreting it as coffee or the island? I’m new to this stuff, and just wondering whether PHOSITA means “a person having ordinary skill in the art” alone, while being unskilled in reality.”

    That would depend on the context of the claim. I doubt you could write a computer program claim that encompasses a cup of java.

  26. 27

    “The BPAI needs some serious and direct oversight. They seem to have become a political agenga tool for the power-grabbing USPTO and the USPTO top brass’s desire for remaking patent law in their own image.”

    Somebody from the Solicitor’s office should have prevented this dog from going up.

    Two problems with that though. 1) The Solicitor’s office is a tool of PTO (mis)management and 2) nobody in the Solicitor’s office knows anything about patent law either.

    Oh well.

  27. 26

    “I’m not stating that this Wheeler claim is well drafted or even patentable, but it’s the examiner’s job to give a good examination, which this anticipation rejection was not. ”

    Whose job is it to write a patentable claim that clearly defines the scope of the alleged invention?

  28. 25

    NON-PRECEDENTIAL?

    I thought the trend these days was to do away with non-precedential decisions. Everything the CAFC (and any court, federal or state) should be “of record.”

    Posted by: John Roethel | Dec 26, 2008 at 11:09 AM

    You can cite this case in the Federal Circuit. According to Fed Circ Rule 32.1, you can cite to non-precedential opinions that were issued after January 1, 2007. Actually, the rule doesn’t actually say its ok to cite non-precedent cases – it says that parties are “not prohibited” from citing to them. So it means almost the same thing.

  29. 24

    UTEX,

    Thank you for highlighting the critical problem that should be the focus here.

    The BPAI needs some serious and direct oversight. They seem to have become a political agenga tool for the power-grabbing USPTO and the USPTO top brass’s desire for remaking patent law in their own image.

    UTEX stated well that while the claims at point may not be well drafted, the REAL issue is how the examiner and the BPAI simply pursued their own agenda instead of doing their job with the law as we have it. Such contortions to make a 102 stick only leave a history of idiocy.

  30. 22

    I don’t see what all of the fuss is from the examiners here. They should (re-)read the October CAFC decision NetMoney In v. Verisign (which is a reaffirmation of longstanding 102 caselaw (e.g., Richardson v. Suzuki CAFC 1989)). This case should never have gotten to the BPAI with a 102 rejection. The light source at the tip of the rod, which is not in the handle, as required by the claim, does not teach the identical invention arranged or combined in the exact same way as described in the claim. That’s the standard for upholding an anticipation rejection. It’s ridiculous that this case had to go to appeal, and even more ridiculous that the BPAI upheld the ridiculous anticipation rejection. At the very least, the examiner in this case could have issued a bogus 103 rejection using the cited art and an assertion of official notice. At least then he or she would have been closer to being on the right track.

    The examiners here who are scoffing at the claim for whatever reasons should, instead, be complaining about the job done by the examiner in this Wheeler case. It gives other examiners a bad rap. Of course, there’s the other examiner who twice maintained a rejection in one of my cases in which the claim limitation described something to do with the “display resolution of a computer monitor” whereas the reference cited by the examiner disclosed a particular figure “illustrating a system that provides a resolution” to a particular problem that did not involve display resolution. The examiner did not understand the difference in meaning between the two uses of “resolution” meaning a display resolution and “resolution” meaning something that resolves a problem. Our claim term was well defined in the specification and there’s no way a PHOSITA would have thought the cited art even mentioned display resolution. I could add a few similar frustrating anecdotes, but that one should suffice. It would be like the comment above where a supposed PHOSITA could reasonably interpret JAVA to be coffee in a computer-arts case discussing the JAVA programming language.

    I’m not stating that this Wheeler claim is well drafted or even patentable, but it’s the examiner’s job to give a good examination, which this anticipation rejection was not. The rejection that the examiner stuck with (unreasonably) was no good. A good patent attorney or agent should amend if the examiner gives a good rejection. However, even if the attorney or agent doesn’t amend, that doesn’t excuse the examiner from giving a good examination in the first place.

  31. 21

    When oh when will some litigant challenge a 103 PTO rejection or court/judge holding based on the opinion of person(s) who are clearly not of ordinary skill in the art.

    Or do we just continue to permit persons with no skill (or experts with more-than-ordinary skill) make obviousness decision despite the plain language of 103?

  32. 20

    “”I wonder whether applicant’s attorney would have traversed with a comment on the reasons for allowance.”

    As if it would make a difference? Serious question.”

    I’m just wondering how hyprocritical, if at all, the applicant’s attorney would be–that is, apparently willing to argue for a limitation found nowhere in the claim (“entire”) when on appeal, but not willing the examiner to state the same in a reasons for allowance. Based on what you’re observed in patent practice, what do you think the typical patent attorney would do?

    On a side note, I agree that the claim should be amended to recite the highest precice boundary, but the claim should have been amended to recite a boundary of some sort to begin with and not have the Federal Circuit read one in.

  33. 19

    “I wonder whether applicant’s attorney would have traversed with a comment on the reasons for allowance.”

    As if it would make a difference? Serious question.

    Now we can all wonder what “entire fishing rod” means. Isn’t the fair conclusion (assuming the claim is valid as it stands — LOL) that “entire” means 100.00%?

    Surely the applicant is on notice now that if he/she wishes the claim to include any less than 100.00% of the rod, then he/she should amend the claim accordingly. Otherwise, one skilled in the art would understand that rods that are transparent for any amount less than 100.00% of their length are dedicated to the public. What possible public policy reason exists for allowing the applicant in this scenario to assert the claim against an infringer who makes a rod that is transparent only for 99% of its length? How is the “entire rod” defined anyway?

    Because this invention is plainly so incredibly valuable to the applicant, we can rest assured that there was plenty of written description support built into the specification supporting a wide range of values. Right?

  34. 18

    If the USPTO had allowed the claim (but stated in the reasons for allowance that the claim required the entire rod to be illuminated and transparent), I wonder whether applicant’s attorney would have traversed with a comment on the reasons for allowance.

  35. 16

    “claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.”

    That would require examiners to read the specification ;)

    The real way examiners read claims is to give them the broadest possible interpretation (even if highly unreasonable), without reading the specification, without regard to how one of ordinary skill in the art would interpret them.

    I really wish the PTO would actually have to follow the law.

  36. 15

    6k’s comments on this case are proof that (a) a reading comprehension test should be required of examiners before they’re hired and (b) the PTO’s current QA regime is an abysmal failure. I am infinitely grateful that I don’t practice in his art group and thus I avoid dealing with his s-t-u-p-i-d-i-t-y.

  37. 14

    Claim 1 at issue says that the light source is located in the handle of the fishing rod and projects like therethrough. According to the decision, the cited prior art teaching a fishing rod a with a light bulb located at the tip of the pole – outside the handle, and at the opposite end thereof. Wheeler shouldn’t have had to amend to recite “through the whole rod” because the claim as written wasn’t anticipated. I’m with Erez and Paul on this – this appeal was a completely unnecessary waste of time foisted on the inventor by an intransigent PTO that couldn’t even be bothered to couple a 103 rejection with the 102. What’s next, another baseless 102 and another round of appeal?

  38. 13

    Question:

    When PHOSITA must interpret something, does he have to throw his “reasonableness” out of the window?

    e.g.: if I talk about “Java” to PHOSITA in the computer arts, yes, he should perhaps interpret it as the Sun programming language…does this prevent him from interpreting it as coffee or the island? I’m new to this stuff, and just wondering whether PHOSITA means “a person having ordinary skill in the art” alone, while being unskilled in reality.

  39. 12

    “said elongated fishing pole being made from a transparent, flexible material”.

    does that mean the entire pole?

  40. 11

    “Mr. Wheeler was forced to go through examination, an appeal, and get to the CAFC just to discard a 102 rejection based on unrelated prior art.”

    Mr. Wheeler could have just amended his claim to recite “entire length” and saved himself a whole boatload of money. Any guesses why he wasted all this time and money?

    Hint: the answer has nothing to do with the doctrine of equivalents.

  41. 10

    e6k – I’m not an examiner, but I don’t quite get your vehement objection here. The claim says: “said elongated fishing pole being made from a transparent, flexible material”. I think this is an easy call under the PHOSITA standard, as the specification makes clear what this claim means.

    But even under the broadest reasonable construction standard, I would think that the broadest construction of this term is that the entire pole (indeed, if pole is more than rod, then this includes the reel) must be transparent. As I read it, saying that some of the pole is NOT transparent would be adding to the claim. Nothing in the claim says that any part of the pole is not transparent.

    Is it that it is broader because it allows for different materials and thus more prior art? Fair enough, but that’s like saying that a nail made of steel really means a nail made of steel with a copper head – that’s a broader interpretation, but it also adds a limitation – a nail made of steel and something else, and it’s also not terribly reasonable, especially if the specification specifically says the nail is made 100% of steel.

    I suppose reasonable minds can differ, but I will note that this is a problem with broadest reasonable construction – one that I address (shameless plug) in my “Failure of Public Notice in Patent Prosecution” article – link to papers.ssrn.com

  42. 9

    Read the claim, there is no reason for a ordinary skill person to read a limitation into the claim such as:

    “1. An illuminated fishing pole comprising:
    an elongated hollow fishing rod having a free end and a fixed end, said elongated fishing pole being made from a transparent, flexible material;
    an elongated hollow handle having a forward end secured to the fixed end of said rod, and a bu tt end; and
    a light source contained within said elongated hollow handle projecting light toward and through the ENTIRE LENGTH of said elongated hollow fishing rod.
    5. The illuminated fishing pole of claim 1 wherein said elongated hollow fishing rod further comprises a reflective material being located along the interior side of its walls and proximate said free end of the fishing rod to facilitate the illumination of THE ENTIRE LENGTH of said rod when the rod is bent due to pull by a fish.”

    The art applied straighforwardly anticipates the actual claim. The rod in the prior art IS illuminated and that is all that the claim requires. The rod may even be entirely illuminated, but that would be left up to inherency and is not alleged.

    The other issue which D doesn’t bring up is that there no reason for the CAFC to have put the [sic] in where they did, it was blatantly obvious that the BPAI meant what it said and changing the word the way the CAFC wanted it to be read was outrageous and uncalled for.

    Like I said though this claim is gone, yet another victim of ten second google. MM can rest easy.

  43. 8

    Morgan: Because this wasn’t technically challenged. The only thing challenged in this case is the judge’s mental view of the case.

  44. 7

    This is Nonp because it is ridiculous to read such a limitation into the claim. Absolutely ridiculous.

    Regardless the examiner now has 102b art for that ridiculous interpretation.

  45. 6

    Paul F. Morgan writes” “Why doesn’t the Board avoid this kind of waste of time and money by simply adding a 103 rejection to a technically-challenged 102 rejection?”

    My response is: why doesn’t the Examiner add the 103 rejection.

  46. 5

    1. Why doesn’t the Board avoid this kind of waste of time and money by simply adding a 103 rejection to a technically-challenged 102 rejection?
    2. Also, the claim called for “a light source contained within said elongated hollow handle projecting light toward AND THROUGH said elongated hollow fishing rod. [emphasis supplied]. Why could not “and through” have supported this CAFC decision’s reversal of the 102 rejection from that claim language itself, instead of confusingly resorting to specification-narrowing of the scope of a claim still pending in the PTO and thus amendable to avoid any infringement ambiguity? [As the “broadest reasonable intepretation” test is intended to foster.]

  47. 4

    NON-PRECEDENTIAL?

    I thought the trend these days was to do away with non-precedential decisions. Everything the CAFC (and any court, federal or state) should be “of record.”

  48. 3

    Wow! I guess the CAFC has determined that Claim 1 requires the entire fishing pole be made of transparent material even though the claim language doesn’t require “entire”. So much for any DOE arguments against the competitor who mounts the light in the pole half way up the length.

  49. 1

    Mr. Wheeler was forced to go through examination, an appeal, and get to the CAFC just to discard a 102 rejection based on unrelated prior art.

    Now Mr. Wheeler is a few years older, a few tens of thousands dollars poorer and has to start prosecution from the beginning.

    great.

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