Ex Parte Barrego, APPEAL 2016-006527 (PTAB January 2018). Barrego’s claim is directed to a roofing underlay with a number of features including “a pattern having the appearance of a shingled roof printed on at least one surface of the underlayment.” Here, the PTAB affirmed the indefiniteness rejection — finding that “one of ordinary skill would [not] be able to determine definitely whether many particular underlayment patterns do or do not have the appearance of a shingled roof.” The patentee had referred the examiner to the submittted drawings:
In Ex Parte Limbert, APPEAL 2017-008680 (PTAB 2018), the Board sided with the applicant on an indefiniteness rejection – holding that the claimed range for squirting out hand-hygiene gel ‘generally limited to a predetermined zone of interest’ was sufficiently definite despite a lack of definition of how much leeway the “generally limited” provides.
Finally in Ex Parte Gibbons, APPEAL 2016-005386 (PTAB 2018), the examiner had applicants’ claim for a nursing cover-up because the requirement of “a length that extends to at least the mother’s waist” would vary depending upon the waist length of a mother – and thus is indefinite as a measure. For this principle, the examiner cited MPEP 2173.05 (b) II (“a claim may be rendered indefinite by reference to an object that is a variable”). On appeal, the PTAB sided with the applicants – holding (1) the variable => indefinite statement from the MPEP is not a per-se rule; and (2) in this case a person of skill in the art will know how to make garments “to accommodate various body types is known in the art.”
When one looks at the portion of the claim element of “appearance of,” one cannot help but think of the Juicywhip case (183 F.3d 1364).
Off topic. But reading Gorsuch here, link to supremecourt.gov, looks to me like Oil States is going to be decided on Robert’s vote. Gorsuch – totally gets it, and is a compelling writer and force of logic. He is going to be a “right angle” guy so far as separation of power is concerned. Robert’s is all mashup logic on the cabineting of power, e.g., forcing you to buy a product or get ‘taxed’ a non-participation fine.
Agreed.
I was encouraged by the points he was making during oral argument and dismayed when Oil States appeared to dissent, and argue against. Even though Oil State nominally opposed IPRs, they made the best possible argument on the other side as to why they were constitutional. It as if we, the people who raised the issue, had no one representing us at oral argument.
Totally. Worse oral argument ever. Makes you wonder who even mooted her. That ex parte is ok line – pure illogic and stupidity. You and i both know ex parte should be a case of first impression now that 35 usc 145 is not there to save it.
Presumably the rationale behind the requirement for “definiteness” is that the public must know when they are inside the ambit of the claim?
I think I know what “waist length” means, what “limited” means, but not what has “the appearance” of a roof that is “shingled”. It would be easier, of course, when I’m up there, sitting on the roof, wearing my spectacles. Is that perhaps what the claim means?
But even then, I’m not sure I could distinguish between the “appearance” of a shingled roof, the “appearance” of a slate roof and the “appearance” of a tiled roof. Should we ask an expert on appearances, say, somebody like Magritte?
What then is not to like, about this trio of PTAB decisions?
2173.02 Determining Whether Claim Language is Definite [R-07.2015]
During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude.
….
A decision on whether a claim is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.
shingles…:
BTW, a POSA (roofer or architect) understands the difference between roofing tiles and roofing shingles. (In the case of real slate, tile and shingle are generally used interchangeably.)
link to thespruce.com
Note that the PTAB upheld only the indefiniteness rejection of the Barrego application.
Really Max, you’re driving down a street and the child next to you says what kind of roof is that daddy? and you say, I don’t know the appearances of different kinds of roofs?
Really?
Les, for me, the defining characteristic of the “appearance” of a shingled room is its texture, in 3 dimensions.
However (unless I am much mistaken) texture is not a requirement of the underlayment claimed here. It’s a sheet with a pattern drawn on it. That’s the point, isn’t it?
Suppose I take an ordinary sheet of paper and draw on it two sets of evenly spaced parallel lines. One of my sets is arranged horizontal, across the page. The other set is at 45° to the first set. The patentee is looking over my shoulder and asserts that my piece of paper is an “underlayment” which indeed has “the appearance” of a shingled roof, exactly as shown in his patent drawings.
At what point does a sheet carrying two sets of parallel lines fall within the reach of this claim? People (some of them being blameless and totally honest citizens) need to know.
Talk about Magritte….
Appearance of texture is not texture.
As I pointed out below in the comment @ January 24, 2018 at 5:26 pm , claim 1 of the Barrego application was crap grammatically, and an examiner that arguendo is assumed to understand English grammar should have made an informality objection.
[A real USPTO quality assurance program would ascertain that examiners raise informality objections when they would be appropriate. An examiner found not to do so would be compelled to take remedial classes in English grammar until he achieves a sufficiently high rating in making formality objections.]
I further pointed out that I as claim drafter would have substituted a phrase like “a shingled roof pattern,” which is a term of the art, for “a pattern having the appearance of a shingled roof.
I have been advising on claim drafting since 1982. Even someone, who like me suffers from logorrhea , eventually learns to avoid a subset of pitfalls.
Max, at the very least you’re aaking the right sort of question. Les’s argument amounts to the claim being definite because there are some interior points of the claim that are clear. But claims are definite iff their boundaries are clear.
Ben,
You misunderstand the point presented by Les.
Further, you give more credit than what is due to MaxDrei. CLEARLY – MaxDrei is being obtuse and omits the important qualifier that the definiteness is viewed through the eyes of the PHOSITA (and seems intent on inserting his own lack of vision as somehow being a deciding factor).
Is it any wonder why you are so often tarred with the anti-patentists?
“At what point does a sheet carrying two sets of parallel lines fall within the reach of this claim? People (some of them being blameless and totally honest citizens) need to know.”
I would say never. Two sets of parallel lines would not give the required appearance. Moreover, an ordinary sheet of paper does not qualify as underlayment. Consider the claim as a whole.
Max – Further to my previous:
1. A lightweight roofing underlayment comprising a scrim reinforcement made from interwoven polypropylene tape within a thermoplastic olefin body wherein a pattern simulating a finished roof is printed on at least one surface of the underlayment.
link to patents.google.com
The last version of the claim can be found in PAIR and is at the end of this comment.
I looked over the Examiner’s Answer to the Appeal Brief. Canfield did a good job even if he was a lot more tolerant of informality than I would have been.
Thanks Joachim –
If you’d like to get a look at the actual product:
link to grip-rite.com
The claim is indefinite because potentially “appearance of a shingled roof” covers many embodiments not supported by the written description. The CAFC and the Board (whether PTAB or BPAI) have consistently adjudicated a written description that only describes one embodiment only to provide support for at most that one embodiment.
When I provide a written description, I always make sure to describe a preferred embodiment and at least one other embodiment unless the application is meant only to claim one embodiment. (Possession may become an issue in the non-predictable arts.)
In this case, the Applicant may have only wanted to claim the one embodiment described in the written description.
To do this properly the Applicant should have named that one embodiment in the written description and then used that name in the claim.
The Applicant seems to have tried to name his embodiment in the after final amendment, but such naming would have required an amendment to the written description. (The Applicant has the right to be his own lexicographer.)
Whether the naming were done correctly or not, the Examiner properly refused to enter that amendment to claim 1. The Applicant could have made an RCE and paid the fee to amend properly both the written description and also the claim.
Yet I have to reiterate that I qua patent agent would have refused to prosecute this application for reasons that I have already stated.
“The claim is indefinite because potentially “appearance of a shingled roof” covers many embodiments not supported by the written description”
I thought you said you were a patent agent?
I am a patent agent. What is your issue?
Joachim – you have confused different items that fall under 112.
Possession is different than indefiniteness.
I was pointing out that identifying other embodiments in the unpredictable arts may create a secondary issue of possession. (Ariad v. Lilly) That issue does not exist in roofing. The Applicant need only have added a few more shingle roof patterns to the drawings and have pointed out that his invention was not limited to this subset of possible embodiments.
What you were pointing out – and what you were calling it – were two different concepts under 101.
As noted – that was not indefiniteness.
I assume that anon means a 112 issue and not a 101 issue, and that the conflation was a simple typo.
I am just pointing that an applicant must avoid presenting a specification that eliminates a 112 (b) issue by creating a 112 (a) issue.
Once the Applicant clearly and definitely identifies what he considers to be his invention under 112 (b), an examiner may question adequate support, enablement, and possession, which are 112 (a) issues.
Thanks Joachim – yes that was a typo.
I see now that you wanted to talk about two issues under 112. That was not clear from your initial comments (and the ones that had Ben chiming in).
I hope that Ben is clear on this now as well, even though he has a bit of that “drive-by” habit that most all of the anti’s have.
I think that for the current discussion here, a “missing piece” is taking the claim in view of Person Having Ordinary Skill In The Art. For arts that are not that complicated, it may very well come down to having but even a single representative example in the specification.
Fold into that understanding, the lesson from Magritte’s “Treachery of Imagery” (This Is Not a Pipe) – which by the way, MaxDrei not only indicates, but then is tripped up with wanting something 3D when the claim only requires “appearance,” and you may come to realize that it is NOT the gamut of actual shingled roofs that are needed to satisfy definiteness, but merely what it takes to be definite about appearance. Granted, this is a bit of a “meta” distinction, but seriously, actual terms of art (your path) are NOT needed in US claims (the applicant can be her own lexicographer, and the US does NOT have an ipsis verbis requirement – which it is to be understood does sometimes become stressed in non-US patent law situations.
Joachim –
I disagree with regard to the written description issue. One set of drawings provide an example. The phrase appearance of a shingled roof encompasses all styles/types of shingled roof. You don’t have to draw every embodiment. Even if the spec were drafted with a preferred embodiment and one other illustrated, that wouldn’t be literal disclosure of every embodiment.
Do you link a second party whos underlayment had a wider or narrower shingle than that illustrated in the figures would/should be able to show non-infringment?
Do you really believe all shingle patterns are not enabled by this disclosure?
My opinion does not count. Only the opinions of the PTAB or a district court count. It’s a lot safer to add a few more embodiments in the drawings and then to add text to the effect that a POSA will understand that many other embodiments of the invention are possible.
From 2163 Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, “Written Description” Requirement [R-08.2017].
Are these decisions really applicable to the Barrego application? I have seen less apropos decisions used to justify limiting or invalidating claims. It is better to be safe.
Some possibly relevant claim construction decisions in cases pertaining to single-embodiment specifications include:
Abbott Labs. v. Sandoz, Inc.;
Gen. Am. Trans. Corp. v. Cryo-Trans, Inc.;
Netword, LLC v. Central Corp.;
Tanabe Seiyaku Co., Ltd. v. ITC; and
Sage Prods., Inc. v. Devon Indus., Inc.
The CAFC seems to look for any possible reason to use the presence of only one embodiment in the patent specification to justify a narrow reading of the claim.
The PTAB will attempt to invalidate a claim for indefiniteness under 112 (b) if the claim by BRI encompasses more embodiments than the single embodiment detailed in the written description. The PTAB will argue that the metes and bounds of the claim are not well specified and that it is unclear exactly what the inventor considers to be his invention.
For good measure the PTAB may also assert that some aspect of the claim lacks adequate support, the invention lacks enablement, or the applicant has not demonstrated possession, but really only the 112 (b) invalidation is important because the CAFC will defer to the PTAB under the doctrine of Chevron Deference.
Excellent work, Joachim.
And one should note that best practices are always, well, best.
But neither dissuade from the legal point at hand that “appearance” here may very well indeed be satisfied with but a single example. The matter of what PHOSITA derives from the single example remains a driver. (further, there is not a ‘other species’ in the particular case – such a factor reveals itself with even less than critical thinking.
Bad decisions remain bad.
THANKS Joachim
-
Now I have to agree with anon. The post above (I hope this gets placed where I think it will) is very close to what I was about to say.
link to tugwellroofing.com
Kinda looks like shingles.
Or maybe that pattern is covered by a separate utility (!) patent.
A roofer (a POSA) would not confuse Malcolm’s pattern of squares with a shingle pattern.
I have to admit that I would probably have refused to prosecute the Barrego application because I am skeptical of its allowability even if I had drawn the diagrams, composed the written description, and drafted the claims.
Because printed matter doctrine would assign no patentable weight to the pattern limitation, claim 1 might not be allowable although I must qualify that the CAFC has overruled claim rejections that make use of printed matter doctrine.
[Question: if no patentable weight is given the pattern limitation, can indefiniteness in the pattern limitation create grounds for a 112 (b) rejection?]
There is some possibility that a design patent might be allowable, but I find prior art from 1914 (D45,836) from which it would probably be possible to construct a 103 obviousness rejection.
The USPTO seems desperate to avoid supervision by the CAFC. (Yet another reason I suspect ongoing corruption at the USPTO.)
For such avoidance 112 (b) rejections work best because of the cutout that permits the USPTO its own claim construction that differs from Article III court claim construction. Under Chevron deference (hopefully soon to go away), the CAFC would not overrule but for either error in law or plain error of fact.
These are really good points. I have noticed a brazenness to some of the rejections I’ve seen where they are clearly wrong and the examiner doesn’t care.
(One tried to claim that a whole portion of my claim was printed matter and he was a primary.)
The claim does not require someone to “confuse” the underlayment with a shingle-roof. It requires the underlayment have an “appearance of” a shingle roof. What does that mean? That when I look in the underlayment under a microscope, it looks like exactly like shingle roof? That when I look from 2 feet away it looks exactly like a shingle roof? That in a picture taken with a 1MegaPixel telephone from 600 feet away at night, it looks like a shingle roof? That it shares at least one visual property with a shingle roof? This is so clearly indefinite its not worth discussion.
As I have twice pointed out, the claim put before the PTAB was crap and deserved an informality objection. A correctly drafted claim would not need the offending word “appearance,” which bothers you so much.
“Shingle-roof pattern” belongs to the epistemic jargon of architects and of civil engineers. It is a well understood phrase and can be applied to more than just roofing shingles.
I will try to put the snippet in the image above.
JJ,
Your “so clearly” is so clearly incorrect.
You are not an attorney, are you?
It means that at first glance, from a helicopter, 4 weeks after a hurricane, it looks like more like a shingled roof than it does a blue tarp and makes it clear that repairs are underway.
It is perfectly clear and is not indefinite at all. However, if you don’t want to discuss it. Feel free not to.
No. This is what underlayment with the appearance of a shingled roof looks like:
link to grip-rite.com
WRT Ex parte Barrego, as far as I can tell, citing Nautilis [sic], Inc. v. Biosig Instruments Inc. to the PTAB is like waving a red flag in front of a bull. The PTAB will invariably retort Ex parte McAward along with In re Packard and go out of its way to find indefiniteness.
I glanced briefly at the application. Because there seems to be only one example of a shingle pattern in the specification, the PTAB and the Examiner concluded that the specification only supports one embodiment and that “the appearance of a shingled roof” is indefinite.
If I had provided the specification, I would have added some more shingle pattern diagrams and more details of other embodiments in the text of the written description.
This application might still have been salvageable, but Claim 1 is grammatically hideous and verges on informality in all its versions. If I had been the Examiner, I would have made an informality objection and told the patent prosecutor to learn basic English grammar.
Here is the final version of Claim 1.
The claim drafter should have written something like the following.
[While this latter version is much better English, I know it’s not the standard patentese to which examiners are accustomed, and to make an examiner comfortable with the claim, I might have to work on it some more.]
If the prosecutor replaced “a pattern having the appearance of a shingled roof” with “a shingled roof pattern,” he could have tried to argue that “a shingled roof pattern” is a phrase in the terminology of the art and would have been understood by a POSA.
link to dreamstime.com
Unfortunately, the specification would still only provide support for alternating rows of rectangles, each succeeding row shifted right and then left by one half of a rectangle.
The problem with the claim is that, as far as I can tell, the disputed language (i.e., the “pattern”) is the entire “invention.” Not only is it subjective but it’s not inventive.
Roofing underlayments are old. What’s the concept here? You put a pattern on it that “kinda looks like shingles” and it’s “less unsightly” during the period prior to the actual roofing materials (e.g., shingles) being laid on top? Give us a break already.
How about sheetrock with images of hanging artwork printed on each slab?
Or about how roof underlayment with a jack o lantern or Santa printed on it? That way you can “express your holiday enthusiasm.”
They really should have just claimed “visually appealing” surface and been done with it.
link to e-foia.uspto.gov
That was funny.
What is your “which” referring to? The body? The scrim? Or the underlayment? Rookie mistake.
JJ @ January 26, 2018 at 8:55 am,
I admit that American English punctuation is often complex and not always — in my opinion — completely consistent.
For example, in German a relative clause is always set off by commas while in English there is more stylistic flexibility.
I have to admit that I did not spend as much time on my version of claim 1 as I would have if I were writing the claim for a client.
I did not sort out whether the participial adjective located correctly modifies the word tape or actually modifies the word reinforcement. If the latter modification had been meant, the word located should have been preceded by the word and.
Because I did not want to overuse commas, whose overuse can sometimes be confusing and can force the semicolon substitution rule, I was not surrounding a simple relative clause with two commas even though usually relative clauses whose relative pronoun is a paronym of the word which are usually so set off.
We know that I am using this alternate form of punctuating relative clauses because I did not place a comma between the word underlayment and the first instance of the word which.
[In parsing and interpreting legal documents, which include patents, one must apply the legal semantic parsing or interpretation rule noscitur a sociis.]
If the second instance of the word which modified the word body, the second instance of which would not have been preceded by a comma.
If the second which modified the word reinforcement, the modificand and the modifier would be separated by too many words, and that parsing would have to be rejected. (If I were the examiner and if an applicant tried to argue before me that the correct claim interpretation required a relative pronoun to modify a word separated from the relative pronoun by 11 words, I would make an informality objection and require that the applicant fix the claim.)
As I punctuated the three relative clauses, we can only parse out a list of three parallel relative clauses, each of whose relative pronouns modifies the word underlayment.
I am being polite in explaining how to parse, but I must point out that I have been writing claims for 35 years. I am not a rookie as JJ so rudely suggests. On the other hand, I have to agree with anon that JJ is clearly not an attorney, but I would go further and state that he is clearly neither a patent agent nor an examiner — not that either status implies much knowledge of grammar or of punctuation in 2018.
“I am not a rookie as JJ so rudely suggests.”
This is also merely a blog, and the precision that would be desired in legal documents is NOT a requirement here (heck, even Prof. Crouch has stated so).
JJ is merely being a Tr011 – and a rather inept one at that.
The PTAB is not so kind to issued patents. Which is completely backwards. After years of examination, thousands of dollars in fees, and millions of dollars in litigation expense, the USPTO continues to break its promise and instituted review of a third patent of mine for indefiniteness. On a term (“substantially filled” / “filled state”) approved by the examiner, the SPE, the OPQA, a magistrate judge, a district judge, a jury, and the Federal Circuit. PGR2015-00018, PGR2016-00031, PGR2017-00015. Will Iancu bring an end to this madness?
You haven’t made enough money yet?
Just as a real estate property developer has the right to make all the money he can from his real estate property, an intellectual property developer has the right to make all the money he can from his intellectual property.
In USPTO’s New Motto: “You Innovate – We Expropriate!” I analyze the USPTO’s pitiful and shame advocacy on behalf of the Telebrands intellectual property parasite.
In stealing IP and handling it over to patent pirates, the USPTO has become the metaphorical US government equivalent of a brain-eating parasite.
There is a different thing that has eaten Malcolm’s “brain”: cognitive dissonance.
He purports to be a patent attorney, and this working to create personal property that ostensibly is used to make money, all the while being of a Liberal Left mindset in which not only “making money” is B A D, but the notion itself of personal property is B A D.
The evident outpouring of this cognitive dissonance here on this blog is the guarantee that most any post of his at all will be geared to an anti-patent perspective.
OMG I just realized: you’re the bag-o-balloons whiner.
Look, folks! It’s a real live martyr right here in our midst.
Truly one of America’s most tortured citizens. Are you typing your comments from a public library computer, or borrowing a friend’s?
…or as 6 might say: “Until you are a ‘muh victim’ you are only whining”
“Will Iancu bring an end to this madness?”
I don’t know if he has the authority to do so brusef.
Nice to have you stop by though, pity about the stuff you’ve had to deal with.
In How Do I Hate Post Grant Review? Let Me Count the Ways I try to give an overview of the insanity to which Josh has been subjected.
I’m trying to imagine how incredibly awful these specifications are that they don’t include support for more definite language.
That Limbert application, in particular, is some genuine “do it on a computer” junk0la of the first degree. Good riddance and thank you PTAB for throwing another scrivener into the chamber of best forgotten dreams.
Malcom being Malcolm and (yet again) celebrating the demise of anything “patent.”
That cognitive dissonance in full bloom.
For all those “clients” of yours
do you share your views of patents? You know, in order to provide full informed consent and reflect the work product that you believe in (which – obviously – may not be in accord with the levels of permissible work product).
Nobody gets your mailroom humor, “anon.”
The PTAB reversed the indefiniteness rejection and affirmed the 103 KSR obvious rejection.
One of ordinary skill in the art of roofing underlayment wouldn’t know what a shingled roof looks like?
Really?
link to google.com
Mind you, this limitation appears to be key to the “inventiveness” of the claims. Relying on the subjective understanding of the appearance of things to support claim validity is a huge (rookie) mistake.
Yes, the claim is broad. There are a lot of patterns that could be printed that would give the underlayment an appearance of shingled roof. That’s not indefinite. It is broad. Note how even you, who I assume is not one of even ordinary skill in the art of underlayment, was able to identify appearances that would be encompassed by the claim. Note that the link you provided did not lead to a set of pictures of sock puppets, eggs, frogs or piano keys. It lead to photos of shingles.
It’s a patent and that’s enough for Malcolm to “sniff” it and not like it.
Would a pattern of shapes that are truly not associated with shingles, but could conceivably be unit of repeating shingle material, “give the appearance of a shingled roof”?
There are a lot of patterns that could be printed that would give the underlayment an appearance of shingled roof.
No doubt. How do you tell which ones “give the appearance” and which one’s do not “give the appearance”? Who’s the target audience?
That’s not indefinite. It is broad.
Actually it’s both.
even you, who I assume is not one of even ordinary skill in the art of underlayment
Is that the relevant art? Seems like the relevant art is “pattern appearance recognition” or something like that. Why would a skilled roofer give two shirts about what pattern is printed on the underlayment?
Note that the link you provided did not lead to a set of pictures of sock puppets, eggs, frogs or piano keys.
I can provide links to those if you like.
“Who’s the target audience?”
Do you need a target audience to understand what a shingled roof might look like?
As to RandomGuy’s post – what gibberish. Random’s post does not survive the meme that he would apply to Les.
hint: Les’s point about items not being shingles (eggs, frogs, piano keys and the like) is NOT a “single point within the scope” type of thing.
“How do you tell which ones “give the appearance” and which one’s do not “give the appearance”? ”
Well, as with any claim, that would ultimately fall to the judgement of a jury.
I’m confident that any jury would know it when they see it.
There are a lot of patterns that could be printed that would give the underlayment an appearance of shingled roof. That’s not indefinite. It is broad. Note how even you, who I assume is not one of even ordinary skill in the art of underlayment, was able to identify appearances that would be encompassed by the claim. Note that the link you provided did not lead to a set of pictures of sock puppets, eggs, frogs or piano keys. It lead to photos of shingles.
“There are a lot of [claims] that could be printed that would be [considered abstract]. That’s not indefinite. It is broad. Note how even you, who I assume is not one of even ordinary skill in the art of [patent law], was able to identify [the example in Alice] that would be encompassed by the [rule]. Note that the link you provided did not lead to a set of pictures of sock puppets, eggs, frogs or piano keys. It lead to [an example abstract claim].” – Les’ logic that identification of a single point within the scope renders the scope boundary clear, applied to himself.
Single point? I didn’t count them, but the link MM provided let to hundreds, if not thousands of “points.” Moreover, it showed that one of ordinary skill in the art would have understood the claim.
Les,
NONE of your critics here have displayed anything close to being reasonable on the matter.
Are you surprised?
“Relying on the subjective understanding”
LOL – and what exactly do you think the legal notion of a Person Having Ordinary Skill In The Art is?
Do you think that to be some singular “objective physical structure?”