Ex Parte PTAB Appeals

A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding

In a recently designated precedential decision (Ex parte Grillo-Lopez), the Patent Trial and Appeal Board (PTAB) explained the differences regarding what a printed publication is during inter partes review (IPR) and what a printed publication is during examination.     This decision centered on an FDA transcript that was the subject of an earlier IPR proceeding in which the PTAB held that the FDA transcript was not shown to have been a printed publication. To provide additional context, the FDA transcript was cited as prior art by a petitioner in the earlier IPR proceeding. The PTAB found that the petitioner did not provide adequate evidence that the FDA transcript was a prior art printed publication. More specifically, the PTAB explained that the Petitioner did not explain “how such persons may have known that the FDA transcript existed and was available, upon request, in the DDM Public Reading Room.” In other words, the Petitioner held the initial burden to show that the FDA transcript was a prior art printed publication in the IPR petition. In contrast to being cited in an IPR petition, the FDA transcript was cited by a Patent Examiner during prosecution of a patent application. As explained in the decision,… Read More »A Printed Publication in Patent Prosecution May Not be Printed Publication in an IPR Proceeding

Language From CIP Survives “New Matter” Challenge

Finding that the Patent Trial and Appeal Board failed to consider the entire record, the Court of Appeals of the Federal Circuit vacated and remanded for further analysis the Board’s decision affirming a rejection of claims for lack of sufficient written description support under 35 U.S.C. § 112. In re: David Tropp, 2017-2503, (Fed. Cir, Dec. 12, 2018.) The PTAB affirmed an Examiner’s rejection of claims 29-53 of U.S. Patent Application 13/412,233 for lack of sufficient written description support under 35 U.S.C. § 112. David Tropp, the inventor, appealed. Claim 29 was treated as representative and recites in part: A set of locks for securing travelers’ luggage while facilitating an entity’s authorized luggage-screening of luggage that the travelers have locked with said locks, without breaking the locks or the luggage, wherein the set comprises at least a first subset and a second subset each comprising plural locks, each lock in each of the first and second subsets having a combination lock portion for use by the travelers to lock and unlock the lock and in addition having a master key portion for use by the luggage-screening entity to unlock and re-lock the lock while the combination lock portion of the… Read More »Language From CIP Survives “New Matter” Challenge

Requiring Condition Can Overcome Art Resulting In Condition

A claim that required a specific condition overcame prior art that merely disclosed an embodiment resulting in satisfaction of the condition. In re Facebook, Inc., No. 2017-2524 (Fed. Cir. Aug. 14, 2018) (nonprecedential) (C.J. Prost, JJ. Moore, Stoll). Facebook filed Patent Application No. 13/715,636, Pub. No. 2014/0168272, which is directed to rendering an array of contiguous images, subject to ta rule requiring the condition that the images remain contiguous even when a user reshapes or moves one of the images. The relevant claim language of claim 1 is “determining, in response to an instruction to adjust the position or size of a first image element, a second position in the array for at least one second image element, the second position determined based on a rule requiring the image elements to be contiguous…” (emphasis added). The Office relied on U.S. Patent Publication No. 2013/0238964to Perrodin  to anticipate claim 1. Perrodin discloses moving images within a grid and reorganizing remaining images within the grid. One embodiment discloses that the images remained contiguous in the grid, and the Office relied on this disclosure to satisfy the recitation of “a rule requiring the image elements to be contiguous.” On appeal, the PTAB upheld… Read More »Requiring Condition Can Overcome Art Resulting In Condition

Reversal of Parts Not Obvious in the Absence of Supporting Evidence

The ex parte Appellant successfully argued that the Examiner had not established a prima facie case of obviousness by failing to adequately explain why one skilled in the art would have made the proposed modification in Ex parte Tisol (Appeal No. 2017-007929, decided April 25, 2018). The claim at issue is reproduced below with emphasis added: A system for manufacturing a two-part fastener, the system comprising: a fastener-molding housing including a fastener mold having a first mold section connected to a second mold section through a flash connection mold section, wherein the fastener mold is configured to receive fastener-forming material to form a pre-engaged fastener having a first fastener portion within the first mold section and a second fastener portion within the second mold section, wherein the first fastener portion is temporarily secured to the second fastener portion through a flash connection portion formed within the flash connection mold section; and an actuating assembly including a stripper plate, a connecting member having a distal beam within a retaining sleeve that is moveably secured to the stripper plate, and at least one ejection member, wherein the connecting member is configured to securely retain the first fastener portion, wherein the stripper plate… Read More »Reversal of Parts Not Obvious in the Absence of Supporting Evidence

Unpredictability, not Inherency, Important for Obviousness

In Honeywell International Inc. v. Mexichem Amanco Holding S.A. De C.V., No. 2016-1996, 2017 U.S. App. LEXIS 13909 (Fed. Cir. Aug. 1, 2017), the Federal Circuit vacated and remanded a PTAB decision, holding that an obviousness rejection based on inherent properties should be reconsidered where the patent owner presents evidence of unpredictability in the art and unexpected results. Honeywell International, Inc. (“Honeywell) owns U.S. Patent No. 7,534,366, which is directed to a combination of a refrigerant and a lubricant. Mexichem Amanco Holding S.A. (“Mexichem Amanco”) and Daikin Industries, Ltd. (“Daikin”) (together, “Mexichem”) filed requests for inter partes reexamination. During the reexamination, the Examiner rejected the claims of the ‘366 patent as obvious under 35 U.S.C. § 103. The PTAB upheld the rejection, noting that the primary reference teaching the refrigerant combined with the secondary reference teaching the lubricant and using similar (but not identical) refrigerants would have been known in the art. Honeywell submitted evidence that this particular combination of separately unstable ingredients was unexpectedly stable, and that this particular refrigerant was disfavored for its instability. The PTAB held that disclosure of the refrigerant rendered its inherent properties (namely, its ozone-friendliness) irrelevant to the obviousness analysis and could not confer… Read More »Unpredictability, not Inherency, Important for Obviousness

Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

The PTAB held that the claims in Ex parte Quimby, Appeal No. 2016-004681 (June 2, 2017) were directed toward unpatentable subject matter.  Of particular interest given the claim language, the Appellant was unsuccessful with arguments that 1) the claims do not disproportionately tie up the use of any underlying idea, 2) the claim provides an improvement in the technological field of mass spectrometry, and, 3) with respect to dependent claim 3, that the claims tied the mathematical formula with technological field of mass spectrometry analyte detection. (citing Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010)). The independent claim is as follows: A method for selecting a target ion and a plurality of qualifier ions for identifying an analyte by mass spectrometry, the method comprising: (a) obtaining a reference spectrum for the analyte; (b) identifying a retention time window for the reference spectrum; (c) extracting a matrix spectrum over the retention time window; (d) measuring the abundance of each of a plurality of matrix ions in the matrix spectrum to produce a noise value at each matrix ion; (e) calculating a signal-to-noise value for each of a plurality of analyte ions by dividing the abundance of… Read More »Mass Spectrometry Method Not Patent Eligible in Ex Parte Appeal

Patent-Eligibility Lessons from the PTAB (No. 1)

How is the USPTO’s Patent Trial and Appeal Board (PTAB) addressing patent-eligibility rejections under 35 U.S.C. § 101 in ex parte appeals?  What arguments work, and what arguments fail, when you are trying to persuade the PTAB judges that rejected claims pass the Mayo/Alice test?  How should you draft your claims to best condition them for an appeal to the PTAB? The answer to these questions is of ginormous relevance to patent prosecutors – even more relevant, in many aspects, that how the district courts, or even the Federal Circuit, are deciding Section 101 cases.  PTAB decisions in Inter Partes and Covered Business Method Review proceedings get a lot of attention these days.  PTAB decisions in appeals arising from patent-eligibility rejections in ex parte appeals, not so much.  Thus, today we begin what will be an occasional – but regular – series summarizing PTAB patent-eligibility decisions in ex parte appeals. On the theory that every good lawyer knows to look at cases reaching each possible result on an issue, below we summarize one case in which an Examiner’s Section 101 rejection was affirmed, and one case in which the Examiner’s Section 101 rejection was reversed.  Note that the USPTO classified… Read More »Patent-Eligibility Lessons from the PTAB (No. 1)

PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal

Citing KSR Inti Co. v. Teleflex Inc, the PTAB in Ex Parte Mattisson (Appeal No. 2016-004484, April 14, 2017) agreed with the ex parte Appellants and reversed the Examiner’s rejection based on insufficient rationale to support an obviousness rejection. Specifically, the PTAB held that the Examiner’s reasoning that “a person of ordinary skill would not be discouraged“ from the combination was insufficient. The patent application is related to the field of radio communications, and specifically, was drawn toward a passive mixer for minimizing signal distortion. The independent claim was rejected as being obvious over the combination of two references. The Examiner argued that the primary reference teaches several elements of the independent claim, but admitted that the primary reference fails to teach a “cancellation component” and a “cancellation signal.” The Examiner relies on the teaching of a secondary reference for such a teaching. The Appellant argued that the primary reference teaches unbiased terminals, but that the secondary reference teaches a method that requires biasing. Based on this distinction, the Appellant argued that the primary reference teaches away from such a modification. In the Final Office Action, the Examiner concluded, [H]aving the disclosure of [the secondary reference], a person of ordinary skill… Read More »PTAB Finds Reasoning for 103 Rejection Insufficient in Ex Parte Appeal

“Substantially” is a Definite Term in Recent PTAB Decisions

Many practitioners view words of approximation, such as “substantially,” as useful tools to broaden claim language. MPEP §2173.05(b) states that words of approximation are acceptable if one of ordinary skill in the art would understand what is claimed, in light of the specification. In fact, MPEP §2173.05(b)III discusses the acceptable use of various words of approximation, including “substantially.” Yet, it is not uncommon for an Examiner to reject a claim under §112(b) based on the use of a word of approximation. The pair of recent cases below highlight ex parte appeals in which words of approximation were viewed in favor of the Appellant. In Ex parte Bunting, Appeal No. 2014-006544 (March 13, 3017) the PTAB held that “a beam constructed substantially of mortar” was definite claim language. In this case, the specification did not provide a definition of “substantially.” The Appellant argued that many issued patents have claims that include words of approximation, and that many court cases affirm that this type of claim language is definite. The PTAB agreed with the Appellant and cited the dictionary definition of “substantially” in the Meriam-Webster dictionary. As another example, in Ex parte Ogura, Appeal No. 2014-009489 (March 21, 2017), the claim language included “substantially perpendicular” to… Read More »“Substantially” is a Definite Term in Recent PTAB Decisions

PTAB: Social Media Privacy Management Is Patent-Eligible

Claims to managing social media privacy survive the Mayo/Alice patent-eligibility test, says the PTAB, reversing an Examiner’s rejection under 35 U.S.C. § 101.  Ex parte Drake Sutton-Shearer, Appeal 2015-003977, Application 12/770,4711, Technology Center 3600 (PTAB Feb. 28, 2017).  Citing Federal Circuit decisions in Enfish, LLC v. Microsoft Corp. and Affinity Labs of Tex., LLC v. DIRECTV, LLC, the PTAB panel thought that the present claims improved the functioning of a computer, rather than simply implementing known practices in a conventional computer, and thus were more than an abstract idea under the familiar Mayo/Alice test. Pending independent claim 8 was taken as representative: A computer-implemented method of hosting a social network, wherein the method is implemented in a server configured to host webpages that define views of the social network, and to transmit the webpages to client computing platforms that request the webpages over a network, the server comprising one or more processors configured to execute one or more computer program modules, the method comprising: executing, on the one or more processors of the server, one or more computer program modules configured to assemble webpages defining views of a wall associated with a first entity; executing, on the one or more processors… Read More »PTAB: Social Media Privacy Management Is Patent-Eligible