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[dab2d]

Some of you may remember that I was having an issue with an Examiner. The analogy went that I claimed a "screwdriver" and he found a knife, and since the "knife could perform the functions of a screwdriver, the limitation was met."

I wrote a long request for reconsideration, citing Ruskin and Ex parte Kershaw (BAPI, February 2010) http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009009308-02-05-2010-1.

The response I got from the Examiner was short and sweet.... "the prior art [knife] anticipates all of the structural limitations of the claims, and the use of the word 'screwdriver' or 'surgical screwdriver' does not incorporate any specific structure limitation to the claims."

I am planning on filing a pre-appeal conference request. I think it is funny how they use the term 'screwdriver' in the claim to define a function that can be met by a knife. However, when that is debunked, they say that the "word 'screwdriver' or 'surgical screwdriver'' lacks structure. If a well know element does not incorporate structure that it is known to have, what does.

   Any suggestions on how to move forward on this.   
 

[klaviernista]

To play devil's advocate, I can see why the Examiner was not persuaded by your citation of Kershaw.  As I read Kershaw, the Board overturned the examiner because it found that there was a structural distinction between a claimed component (I beleive it was a memory controller) and the "nebulous" circuitry relied on by the examiner and recited in the prior art.  In sum, the examiner didn't map the prior art structure to the claimed structure, preferring instead to map the functions of certain prior art components to the claimed structure.  Ruskin applies only in the latter scenario (function /= structure).  In your case, the Examiner believes (perhaps correctly, depending on the claims) that the former scenario (structure capable of performing function = claimed structure w/recited function) applies. 

I think you essentially have four options at this point:

1.  Amend the claims to positively recite structure of your screwdriver that would not be met by a knife;
2.  Optionally in conjunction with #1, find a way to persuasively argue that the structure of your claimed/disclosed screwdriver is not read on by a knife;
3.  Conduct an interview with the Examiner and his/her supervisor
4.  Initiate the appeals process, optionally with a PABRFR.

As to 1 and 2, what exactly is structurally different between a knife and your claimed/disclosed screwdriver?  I'm sure it is not the case that your screwdriver simply comprises an elongated handle with a tip configured to turn screws.  Perhaps incorporating the "well known" elements of the screwdriver/surgical screwdriver into the claims would help?

[Robert K S]

If this were my case, I would probably (a) go straight to appeal, as the examiner is being unreasonable and (b) if it is called for and the facts of the case make it appropriate, enter a 1.132 affidavit from a person skilled in the art attesting that a person skilled in the art would not confuse the screwdriver-analog of your case with the knife-analog of your case.

The BPAI usually does not put up with an examiner who interprets terms unreasonably broadly in order to reject a claim.  If they do, you can try your luck at the CAFC.

[dab2d]

Klaviernista, I appreciate your analysis. I go back and forth with what you have suggested. However, I have had an interview with the EX and he told me to stick it. Not sure how to request an interview including the SPE (the Ex is not a primary). My thought is that I am going to go to Pre-appeal and see what happens. One of my issues with amending is that I really did not go into any real detail about the screwdriver in the spec. I asked the Ex If I could add descriptions and he said it would be new matter. But if I could add to the SPEC to better define screwdriver, isn't anything i add inherent and thus should already be covered by the claimed limitation. I appreciate your feedback and letting me bounce my thoughts off of you.

I mainly used Kershaw to explain to the examiner that a functionality test was improper in any case to define structure.It states "we note that functional equivalence is not enough to show anticipation of a structural component." If a structure is claimed, the examiner must meet those limitations. There is a real danger in saying that a functionality test can be used to define structure. As mentioned before, a thumbnail can be used to drive screws. But no one would ever confuse the two.

My understanding of 102 is that there must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention. In the surgical field, it is well known what is a screwdriver, what is a knife, and they are different. If the Ex wants to reject, then they should do so under 103. How do you argue that a claim requiring a screwdriver can only be rejected under 102 by a reference disclosing a screwdriver, as understood by POSIA of the invention. It is so clear to me and a POSIA that a knife is not a screwdriver. It seems so elementary it is hard to argue except with a conclusion. Would you suggest an affidavit from POSIA that the reference is not a screwdriver? 

The reason for 103 is that 102 is supposed to be very narrow. If the Ex wants to say that it would be obvious to XYZ in view of the knife... then so be it. By why use 102 to anticipate a screwdriver with a knife. To me this is an improper use of 102.

 

 

[JimIvey]

Not sure how to request an interview including the SPE (the Ex is not a primary).

You simply ask the examiner to have the SPE present at the interview.  It's customary to do that when the examiner can't sign her own papers.

If an underlying issue is that the "screwdriver" part is in the preamble, there's been a lot of discussion about that recently, including some discussion of caselaw.

I'd appeal, with review.  You need to really hit the argument hard.  I suggest writing it, step away, re-reading it trying to imagine how the other side will hear it, editing, and repeating a few times.  The argument has to be tight, light, solid and leave no room for specious silliness.

Good luck.

[klaviernista]

Dab2d:  I agree you are in a tough situation.  At my old firm, I used to run into this problem all the time and it was rarely the case that an easy solution could be found.

You stated:  "We note that functional equivalence is not enough to show anticipation of a structural component."  I 100% agree with you, as does the case law (see Ruskin and Kershaw).  But the examiner has taken the position that the term, "screwdriver," in and of itself, does not define an implement that is structurally different from a knife, per se.  That is different from your contention that the examiner has equated the functional capabilities of a knife with the functional capabilities of a screwdriver and said, voila! A knife is a screwdriver.  Is the examiner's position unreasonable?  Possibly.  Heck, probably.  The problem is how to convince him or someone else of that fact.

Absent a claim amendment, to position yourself so that the case law supports your position, you need to convince the examiner (or another adjudicative body) that the term "screwdriver" necessarily imputes structure that is different from the structure of the knife recited in the prior art.  Once you do that, my guess is that your chances of success on the merits are quite high.

Some options for attacking the examiner's position:
- Consider filing a 1.132 declaration from one of the inventors, articulating that one of ordinary skill in the art would not consider a surgical screwdriver as being structurally the same as a knife. Talk with the inventor about why one of ordinary skill would understanf the two to be different.  As you noted a simple conclusory statement is not likely to get you anywhere.  Note that you should be very careful  about what is said ina  1.1.32 dec.  They are prime targets for inequitable conduct and prosecution history estoppel.  Don't be overzealous.


- Argue against the reasonableness of the examiner's interpretation of the term "screwdriver."  Examiner's are obligated to give the claim language its broadest reasonable interpretation, but that interpretation has to be consistent with the prior art.  Moreover, as the test states, the interpretation has to be "reasonable."  There are many cases out there where the Board or the CAFC have thrown out an examiner's interpretation of claim language as being unreasonable.  You could also try supporting your arguments by pointing to U.S. patents in the surgical arts where the applicants use the terms "screwdriver" and "knife" to define distinct elements.  Such evidence directly supports how one of ordinary skill in the art would interpret your claimed "screwdriver."

- Again, consider interviewing the case with the Examiner's SPE present. Call the examiner and flat out state that you want to have an interview with his SPE present, because you feel that his claim interpretation is unreasonable.  Since he is a junior examiner, he doesn't have the authority to bind the office, and you should be able to push your way into an interview with the SPE, though I caution you to be as gentle as possible.  If the examiner refuses, inform him that you understand and respect his decision, but that you will be contacting his SPE directly to request an interview with someone who has the authority to bind the office.

-  File a pre appeal brief request for review, but do so after you have lodged all possible arguments against the reasonableness of the examiner's claim interpretation.   The only exception would be the 1.132 declaration.  If you can;t file a 1.132 declaration without risking misrepresentation or overgeneralizing, then I would not file one.

-  Appeal the case to the board, either directly or through a PABRFR

[LivingItUp]

Here is a link from 2004 from the "Plastic and Rconstructive Surgery"

http://journals.lww.com/plasreconsurg/Citation/2004/08000/Using_A_Scalpel_As_A_Screwdriver.75.aspx
 
about how a scapel (knife) can be used as a screwdriver.

Apparently, it is known in the medical field that knives can be used as screwdrivers.

[khazzah]

I have had an interview with the EX and he told me to stick it. Not sure how to request an interview including the SPE (the Ex is not a primary). My thought is that I am going to go to Pre-appeal and see what happens.

Strongly disagree about the Pre-Appeal route. I reserve Pre-Appeal for absolutely ridiculous rejections. "Clear error".

The amount of discussion on this board shows that reasonable minds can differ on this issue. To me, that means it's not clear error, and is therefore not a good candidate for a Pre-Appeal.

That said, I wouldn't be surprised to hear that other practitioners use Pre-Appeal even for close calls. Nor would I be surprised to hear that some of them even "win" the Pre-Appeal.

[khazzah]

examiner has taken the position that the term, "screwdriver," in and of itself, does not define an implement that is structurally different from a knife, per se.  

Obviously, I haven't read the Examiner's arguments in your case. But based on the dicussion here, I think klav has nailed it. The term "Screwdriver" implies a certain structure to a POSITA. The term "knife" implies a certain structure to a POSITA. The Examiner says the implied structure of the "knife" contains all the structure of your claimed "screwdriver". Which is anticipation.

To win, you have to attack these inferences. You have to argue about that the structure implied by your claim term "screwdriver" is the set X. And that the structure implied by the Examiner's term "knife" is the set Y, where the X contains something Y doesn't. Your best chance of winning on appeal is to introduce evidence on one or more of these points. I've seen plenty of BPAI decisions saying "attorney argument is not evidence" [the implication being that the issue demands evidence not argument].

Though klav used the phrase "necessarily imputes structure", I'd stay away from this, because that's inherency. I see the issue of what a POSITA understands a screwdriver to include as slightly different as what a screwdriver must include.

[khazzah]

- Argue against the reasonableness of the examiner's interpretation of the term "screwdriver."  

Absolutely. Most appeals are all about claim construction, but neither the Examiner nor the attorney addresses this issue head-on. Once I realized this, I changed my strategy so that I make explicit arguments about Broadest Reasonable Interpretation.

[khazzah]

How do you argue that a claim requiring a screwdriver can only be rejected under 102 by a reference disclosing a screwdriver, as understood by POSIA of the invention.

You do it by arguing claim construction. If you don't win on claim construction, you'll end up with a Board finding that a computer anticipates a calculator.

Something very similar happened in In re Joachim. Read my blog post on it at http://allthingspros.blogspot.com/2010/01/ex-parte-joachim-mobile-phone-is-pda-is.html.

[dab2d]

Obviously, I haven't read the Examiner's arguments in your case. But based on the dicussion here, I think klav has nailed it. The term "Screwdriver" implies a certain structure to a POSITA. The term "knife" implies a certain structure to a POSITA. The Examiner says the implied structure of the "knife" contains all the structure of your claimed "screwdriver". Which is anticipation.

This is where it gets me... could a sword, as we all understand 102, anticipate a screwdriver? I appreciate all of the discussion and advice, but I am having a hard time stepping away from the idea,that regardless of how similar they are, POSITA is not going to confuse the two. Thus, if there is a clear understood difference, 102 cannot apply. One of the cited legal standards is "there must be no difference between the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the invention."

To me it is clear that no POSITA would confuse a screwdriver with a knife. Regardless if the structure is similar and they can perform similar functions, they are not confused by one of skill in the art. If there must be no difference, then any difference should take 102 off the table. Maybe this is too simplistic. 

Apparently, it is known in the medical field that knives can be used as screwdrivers.

     I agree, but would you consider them the same elements under 102? 

I also am having issues with the competence of the Examiner. First he told me that the knife equals a screwdriver because it can perform all of the functions of a screwdriver. He maintained this all the way until the advisory. This is why i used the citations to explain that Function does not equate to structure. Then he said that the understanding of screwdriver by POISTA has no bearing on the claims. Now in the advisory, he is saying that "the use of the word 'screwdriver' or 'surgical screwdriver' does not incorporate any specific structure limitation to the claims." To me claims clearly require what a POSITA would consider to be a screwdriver.

Thanks for all the help on this. Being a solo, it is nice to have a place to bounce ideas off of and bring up points of view i have not considered.

[Robert K S]

What you're noticing is the typical examiner gambit progression--use up a series of incorrect arguments and see if any of them forces the applicant to narrow or abandon.  Once the 102/103 arguments are exhausted, watch the examiner turn to 112, first or second paragraph or both.  You didn't define screwdriver in your spec, so how would a person skilled in the art know what a screwdriver is?  You didn't describe how a screwdriver operates to screw in a screw in your specification, so your spec doesn't enable your claim.  While this behavior can be frustrating and exasperating and unnecessarily eats up billable hours responding, it is usually overcome with perseverance and shrewdness.

And, I second your remarks about this forum.  I'm lucky enough to have very good real-life colleagues, but it's still splendid to have this forum as a place to turn to for a quick preliminary answer or an insightful second opinion.  I love that examiners participate, and that some really bright, experienced practitioners donate hours of their time to answering others.

[LivingItUp]

 

To me claims clearly require what a POSITA would consider to be a screwdriver.

For 102 it does not matter what a phosita thinks. And ask 100 different phosita what they think a screwdriver is, and get 200 different answers. Search on google and see thousands of different screwdrivers. I know some phosita would enjoy pulling and showing off their Swiss army knife and say see this knife is my emergency screwdriver.

[DogDayPM 9er9er9er]

For 102 it does not matter what a phosita thinks.

Maybe in some circumstances it does.  What if a claim to a certain composition calls for water, and the examiner uses a reference calling for milk?  Milk is, after all, 90+% water, right?  Therefore, in a normal "comprising" type of claim, does the claim read on a similar composition but which uses milk instead?  Does it matter whether (or not) a phosita thinks milk and water are interchangeable in this sort of circumstance?