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 Cir. Aug. 14, 2018) (nonprecedential) (C.J. Prost, JJ.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 the rejection, and Facebook appealed to the Federal Circuit.

The Court disagreed with the PTAB, noting that while Perrodin discloses an embodiment that “happenedto result in continuity,” “[n]othing about Perrodin’s algorithm requiredcontiguity.” In re Facebookat *5. Perrodin disclosed another embodiment in which resizing one image element resulted in a grid that lacked images in one or more spaces in the grid, i.e., the image elements were not contiguous in the grid. Perrodin’s algorithm allowed noncontiguous image elements in the grid, so “Perrodin could not have disclosed the ‘rule requiring the image elements to be contiguous’” as recited in claim 1. Id.at *6. The Federal Circuit reversed the PTAB’s decision and remanded for further proceedings.

Lessons for Practice

While nonprecedential, this case shows that the Federal Circuit may interpret absolute language like “require” such that prior art would need similar absolute disclosure to support a rejection. This may help to overcome prior art that disclose several embodiments that happen to result in one or more desired conditions.