Appeal brief, 112(b) rejections, and multiple dictionary definitions

Started by Vznr, 02-22-18 at 04:44 AM

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Vznr

Hi, Donner's "Patent Prosecution" says that the spec may be useful to distinguish which of several definitions in a dictionary is intended in the claims.

I'm writing an appeal brief which quotes the intended definition of a term from Merrrian Webster, then quotes the term in context from the claims, then says that comparing my context feature by feature with the MW alternatives shows that my quoted definition is the most consistent and therefor proper. Then I quote from the spec and say those quotes conform to my quoted definition. And I'm sending an appendix w/ copies of each dictionary page.

My question is this: Should I actually write my own feature by feature comparison?
What are the odds the PTAB would do their own comparison? (Or insist on doing their own and ignore mine?)

The examiner has rejected on the basis of 18 terms.
The work above would be formidable but I see no point in a brief doomed as incomplete.

Thanks for any experience or comments on this.

bluerogue

Quote
Hi, Donner's "Patent Prosecution" says that the spec may be useful to distinguish which of several definitions in a dictionary is intended in the claims.

I'm writing an appeal brief which quotes the intended definition of a term from Merrrian Webster, then quotes the term in context from the claims, then says that comparing my context feature by feature with the MW alternatives shows that my quoted definition is the most consistent and therefor proper. Then I quote from the spec and say those quotes conform to my quoted definition. And I'm sending an appendix w/ copies of each dictionary page.

This is a viable strategy.  There are also potential pitfalls.  Generally a battle of definitions is a loser for applicant.  The examiner gets the broadest reasonable interpretation, which means that if there are competing definitions that work with respect to both the spec and the claims, then the examiner's definition will win out.  The only exception is if applicant explicitly defines a term in the spec, but it requires some specialized language that are rarely found in specs.  For example, if a term has two definitions, a and b, and you want to exclude b, because a is your intent, you'll probably lose to an examiner's use of definition b if b is also a viable interpretation in view of the claims and spec.  I'm a bit hard pressed to come up with a good example at the moment though. 

Here's a slightly flawed one, however.  Say you use the term "cloud" in context of cloud computing.  It would be error for the examiner to interpret cloud as the fluffy thing in the sky because your spec talks about computers, not weather.  However, let's say cloud in the computing context means a) a network of servers on the internet where the location of the servers do not matter or b) a cluster of computers networked to perform a task.  It's easy to imagine that both a and b are viable definitions in your spec and claims.  Unless you specifically say that you mean a in your spec, you'll lose if the examiner uses b.

Quote
My question is this: Should I actually write my own feature by feature comparison?
What are the odds the PTAB would do their own comparison? (Or insist on doing their own and ignore mine?)

Not exactly sure what you mean here.  You should, if you don't think the references teach a particular feature, then, yes, do a comparison of the claimed feature (claim language) to the reference.  There is no need to do a feature by feature comparison for features you are not contesting.
The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

ThomasPaine

"Generally a battle of definitions is a loser for applicant.  The examiner gets the broadest reasonable interpretation, which means that if there are competing definitions that work with respect to both the spec and the claims, then the examiner's definition will win out."

This is it in a nutshell.  You can't win the argument that "applicant's BRI is more R that the examiner's BRI."  You have to explain, with evidence, why the examiner's BRI is in fact not the BRI, but rather a BUI.  Generally speaking, you need to explain why the examiner's BRI is not consistent with applicant's use of the term in the application AND not consistent with the interpretation that PHOSITA would give the term.

Robert K S

I once had a case where a person skilled in the art would know that X and Y are distinct structures used for different purposes, and a dependent claim specified that a part of the apparatus was a Y.  The examiner found a dictionary definition that defined Y in terms of X (e.g., something like "A Y is a small X used for A, B, and C") and used that to argue that an art reference that showed an X also taught a Y, since, in the examiner's view, a Y was an X.  False equivalency, bad logic, but I think the Board gave it to him if I recall correctly.  That was lousy.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

ChrisWhewell

Interpreting a word in a spec beyond its meaning in view of the spec as understood by a POSITA for the purposes of concocting a rejection is not a reasonable interpretation.  I was once faced with a 112 alleging certain claim term(s) as being not definite nor defined in the spec.   My answer ?   I located about 200+ issued patents examined by 200+ different examiners having the same terms in their claims, and in those 200+, the specs were also devoid of any definition for those term(s).  Since they're material to the prosecution, I cited them in a new IDS.   These heavily weigh in favor of the notion that scores of inventors and examiners in the past have had no trouble understanding the clear definite meaning of some well-know, art-recognized terms.  On top of it I had 3 experts swear out Declarations expressing their opinion that the terms are definite and well-known, and also located and cited publications evidencing same.   Declarations containing opinion evidence are not dispositive but certainly add to an existing preponderance or near-preponderance of evidence.  A blanket statement of 112 rejection is insufficient without an articulated reasoning, and if reasoning for alleging a 112 is articulated, then refuting it should be no problem using concise statements.   I would resist introducing new argument relating to claim term definitions in a Brief.  Maybe if your facts lend well to it, file a parallel con app in which the definitions are more clearly stated, with full support in the original spec so the clarifying words used can only be interpreted as narrowing that which was already present, and consistent to how the POSITA interprets it.  What is water ?   Is it ice, liquid or steam ?  The specification directed to the POSITA, and how the POSITA interprets it, is what controls, right ?  If the invention is a steam engine, it should be clear that if water is used in the claims its going to be either liquid or gaseous and not ice.  Hopefully some of the above is helpful, if I'm way off base, I apologize !!
Chris Whewell

www.patentsearcher.com

Robert K S

Quote from: ChrisWhewell on 02-22-18 at 08:19 PMSince they're material to the prosecution, I cited them in a new IDS.

A reference is not "material to prosecution" simply because the applicant cites it as evidence favoring patentability.  On the contrary, it must tend to present a question of patentability or, in other words, to suggest unpatentability.
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Toot Aps Esroh

Quote from: ChrisWhewell on 02-22-18 at 08:19 PM
.  I was once faced with a 112 alleging certain claim term(s) as being not definite nor defined in the spec.   My answer ?   I located about 200+ issued patents examined by 200+ different examiners having the same terms in their claims, and in those 200+, the specs were also devoid of any definition for those term(s). 

I've done this a couple of times, but settled both times on ~ 10 patents across a 20 year period.  Carefully not citing any by the current examiner, although the second time I did this, more than a few examples existed where she'd allowed claims with the same term meaning the same thing, and also not defined in the spec.  I didn't want to turn it into a finger-pointing exercise.
I got nothing to say here.  Y'alls all already know all this.


Le tigre n'a pas mangé la pellicule de plastique.

ChrisWhewell

Quote from: Robert K S on 02-22-18 at 08:25 PM
Quote from: ChrisWhewell on 02-22-18 at 08:19 PMSince they're material to the prosecution, I cited them in a new IDS.

A reference is not "material to prosecution" simply because the applicant cites it as evidence favoring patentability.  On the contrary, it must tend to present a question of patentability or, in other words, to suggest unpatentability.

I've had quite a few references of record which favor patentability, some even cited by the examiner wherein they didn't realize some passages in the reference taught away from applicant's invention.  Doesn't the rule read "material to prosecution" ?   I don't recall it reading "prejudicial to applicant's case".   In one instance when I provided a reference but did not cite it formally in an IDS, I kid you not, the ex. stated on the record they did not see the reference in the file wrapper, and that statement was made two office actions later !!   When faced with an allegation of indefiniteness of a claim term, I believe it material to prosecution that a large plurality of other issued patent examiners, applicants and their lawyers had no problem cognicizing the terms' meaning.  :)
Chris Whewell

www.patentsearcher.com

Vznr

I like all the comments, because since each case is different, the comments provide parallax, and ideas I hadn't thought of.
However let me add a few details:
This examiner has made no effort to explain anything. He has not mentioned BRI, nor any interpretation at all.
By not making the slightest attempt at a prima facie case of indefiniteness, he's left me with a nice quandary.
     a) I can simply argue his lack of PFC, in which case the PTAB will tell him to make a PFC, he'll make a skeleton effort,
         and drag me thru the mud another 3 years.
     b) I can try to make a prima facie case the terms are definite, on the outside chance the PTAB will tell the examiner
         to conduct a search of the art, which he has never done.
As I've mentioned in other posts, this examiner has over 25 years of experience, and I consider him cunning and ruthless,
based on many applications he's examined over the years.
     I will say he's lost approximately 2/3 of all appeals against him, eventually.

More comments are always welcome :-)

lazyexaminer

Quote from: Vznr on 02-23-18 at 01:49 AM
As I've mentioned in other posts, this examiner has over 25 years of experience, and I consider him cunning and ruthless,
based on many applications he's examined over the years.
     I will say he's lost approximately 2/3 of all appeals against him, eventually.

More comments are always welcome :-)

He is not particularly cunning then. Over half are affirmed I believe. Not much else to add.
I'm not your examiner, I'm not your lawyer, and I'm speaking only for myself, not for the USPTO.

Robert K S

Quote from: ChrisWhewell on 02-23-18 at 12:27 AMDoesn't the rule read "material to prosecution" ?   I don't recall it reading "prejudicial to applicant's case".

That's not right, either in letter or in spirit.  The easiest way to contradict that position is to point to MPEP § 609.05(c):

QuoteTo the extent that a document is submitted as evidence directed to an issue of patentability raised in an Office action, and the evidence is timely presented, applicant need not satisfy the requirements of 37 CFR 1.97 and 37 CFR 1.98 in order to have the examiner consider the information contained in the document relied on by applicant.  In other words, compliance with the information disclosure rules is not a threshold requirement to have information considered when submitted by applicant to support an argument being made in a reply to an Office action.

But let's dig into this a little bit.

MPEP § 609 covers information disclosure statements.  As it notes, Rules 97 and 98 provide the mechanism by which the Rule 56 duty of disclosure can be complied with.  Rule 56 states, "Each individual associated with the filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section."  (Emphasis mine.)  As the rule further notes, "[t]here is no duty to submit information which is not material to the patentability of any existing claim."  So what does it mean, "material to patentability"?  It's defined in subsection (b) of the rule:
Information is material to patentability when

Quoteit is not cumulative to information already of record or being made of record in the application, and
(1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or
(2) It refutes, or is inconsistent with, a position the applicant takes in:
  (i) Opposing an argument of unpatentability relied on by the Office, or
  (ii) Asserting an argument of patentability.
(3) A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability.

(Again, emphasis mine.)

"The ultimate question of materiality ... under the 37 C.F.R. § 1.56 standard, is whether ... a reasonable examiner, after he had become aware of the particular information, would consider it important in deciding whether to reject one or more claims."  Scripps Clinic & Research Foundation v. Genentech, Inc., 666 F. Supp. 1379 (N.D. Cal. July 20, 1987).

No discussion of the definition of materiality would be complete without at least mention of the en banc decision in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) and subsequent treatment by the trial court in Therasense, Inc. v. Becton, Dickinson & Co., 864 F. Supp. 2d 856 (N.D. Cal. Mar. 27, 2012).  But Therasense was about the definition of materiality at trial in the consideration of inequitable conduct, not whether information required submission in an IDS, so there's not much to be gleaned by delving into Therasense here, except to point out that even the Federal Circuit's ultimate holding buttresses the point, even if not in the same context: "materiality would henceforth use a but-for definition, meaning that submission of the withheld item would have led to a rejection."  864 F. Supp. 2d at 859, citing 649 F.3d at 1292.

The contours of the limitations of Rule 56 are further explored by implication in Star Fruits S.N.C. v. United States, 393 F.3d 1277 (Fed. Cir. 2005) (holding that Rule 105(a)(1), authorizing the PTO require production of any information that was either relevant to patentability under any nonfrivolous legal theory, or was reasonably calculated to lead to such relevant information, is of broader scope than Rule 56).  I note, although I am not sure the court did, that there is nothing in the rules that requires information supplied under a Rule 105(a)(1) demand to be presented in an IDS.  By that alone, it is clear that Rule 56 is not so broad as any information that could be said to be relevant to prosecution (even if not material to patentability).

It is true that information does not have to constitute prior art to be material information.  But that is a different question than the one you are raising.

Other discussions on this forum about this issue: [1] [2] [3] [4]
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

ChrisWhewell

Doesn't the rule read "material to prosecution" ?   I don't recall it reading "prejudicial to applicant's case".

That's not right, either in letter or in spirit.  The easiest way to contradict that position is to point to MPEP § 609.05(c):


My comment:    My statements can not be either right nor wrong.   The first sentence was a question, and the second statement was a statement of my lack of recollection at the time I wrote it.   

--------------

Lets pretend that there exists a client's case, and that the examiner states in a 112 that certain well-known, art-recognized terms are indefinite, even when the same exact terms are present in the claims, and lack definition in the specs of 500 issued patents.   What would you recommend to do, in order to ensure that the documents are of record in the case, in the event the client desires to appeal the examiner's position to the Board ?
Chris Whewell

www.patentsearcher.com

Robert K S

Quote from: ChrisWhewell on 02-24-18 at 01:16 PMWhat would you recommend to do, in order to ensure that the documents are of record in the case, in the event the client desires to appeal the examiner's position to the Board?

When I have done this in the past, I have simply listed the patent or publication numbers in an Office action response.  Rule 97(b) and (c) really limit when an applicant can put in an IDS.  In my experience, trying to enter an IDS out of rule will only get it ignored, even if to have the content considered as evidence in favor of patentability, as opposed to material to patentability (under the Rule 56 definition).
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

Vznr

In my case, I did file an IDS on my last RCE. It was 20 pages long because this examiner called into question every term in the claims. I'm not exaggerating.
I can tell you, I had some trepidation whether the examiner would enter it, but he did.
It seems the risk of rejection may have been even higher than I thought.
Rather than "luck", the reason may have been because in all prior OAs, the examiner had said the terms literally prevented his searching the prior art, while much of my RCE stated literal PatFT searches with my terms (and a few synonyms from Roget).
My IDS was the most relevant patents from my searches. 20 pages of patent numbers.

Btw, since no one has argued against my writing out the feature-by-feature comparisons which select each specific dictionary definition (versus expecting PTAB to do so), I am grinding thru them. "Grind" is exactly the word.

Robert K S

Quote from: Vznr on 02-25-18 at 02:18 AMI had some trepidation whether the examiner would enter it

Is entry of an IDS discretionary to an examiner when the IDS is within the rules?
This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.



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