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November 23, 2020by Yanhong Hu

A threshold issue for the Patent Trial and Appeal Board (“Board”) to resolve is often claim interpretation.  It is well-settled that claims must be “given their broadest reasonable interpretation consistent with the specification” during patent examination.  In Ex parte Awad (Appeal 2019-005866), the Board reversed the Examiner’s obviousness rejection because the Board found the rejection was based on an unreasonably broad claim interpretation when the relevant claim language was read in light of the specification.

Claim 1 was illustrative and was drawn to a flexible solar panel, which contained a polymer matrix and a plant extract completely incorporated in the polymer matrix and “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”

The Examiner rejected the claimed solar panel as obvious over Ochiai in view of Pavokovic and Yang.  In particular, the Examiner found Ochiai taught a solar panel containing a PVA matrix and a plant extract completely incorporated in the polymer matrix wherein the extract included green-colored chloroplasts.  The Examiner admitted Ochiai did not disclose that the plant extract was “a green-colored extract of B. vulgaris subsp. cicla.”  However, the Examiner found Pavokovic taught that betalains, such as those from B. vulgaris subsp. cicla, were useful as “natural pigments” in solar cells and found Yang taught that incorporating chlorophyll-containing plant extracts in a PVA polymer matrix stabilized the extracts against light- and oxygen-induced damage.

In response to Appellant’s arguments that betalains described in Pavokovic were “classified in two groups: red-violet betacyanins and yellow betaxanthins” and that Pavokovic did not teach “the usage of a green, chloroplast-containing extract of B. vulgaris subsp. [cicla] in a [dye-sensitized solar cell],” the Examiner argued he did not rely on Pavokovic “for teaching the entirety of the claimed plant extract,” instead, he relied on Pavokovic “only to teach that betalain extracts of B. vulgaris subsp. cicla are useful as natural pigments in solar cells to convert radiant energy into electric energy.”  The Examiner argued “Ochiai teaches a plant extract that is green and includes chloroplasts” and further argued “even if the betalains of B. vulgaris subsp. cicla are colors other than green, the final product created from the combination of the prior art references still contains a plant extract comprising the green-colored chlorophyll chloroplasts taught by Ochiai because these betalains are added to Ochiai’s plant-extract composition.”

Therefore, as noted by the Board, the Examiner interpreted the claim limitation of the plant extract “being a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts” to encompass any combination of plant extracts “as long as the final combination (a) is green-colored, (b) includes a B. vulgaris subsp. cicla extract, and (c) includes chloroplasts.”

The Board found such interpretation was broader than what was reasonable when the claim language was read in light of the specification.  Specifically, the Board noted that the specification stated that the field of the invention related “particularly to a flexible solar panel including an extract of chard (B. vulgaris subsp. cicla)” and that at no point did the specification discuss extracts from any plant other than B. vulgaris subsp. cicla.  The Board further found the specification specifically taught “a green colored extract of B. vulgaris subsp. cicla” and each of the working examples used an extract from B. vulgaris subsp. cicla, not from any other plant and not mixed with any other plant extract.

The Board thus concluded that, when the claim language was interpreted in light of the specification, the broadest reasonable interpretation of the claim limitation required “an extract from B. vulgaris subsp. cicla that itself is green-colored and also contains chloroplasts; i.e., the chloroplasts are derived from B. vulgaris subsp. cicla.”  The Board further explained “‘being’ in the quoted limitation is construed to mean ‘consisting of’: the plant extract consists of a green-colored extract of B. vulgaris subsp. cicla, wherein the extract includes chloroplasts.”  The Board explicitly pointed out that “[to] interpret the quoted limitation to encompass a mixture of plant extracts would be inconsistent with the specification’s disclosure.”

With the correct claim interpretation, the Board further found none of the cited references disclosed a green-colored extract from B. vulgaris subsp. cicla that included chloroplasts as required by the claim limitation.  Because the Board did not find the Examiner had shown the plant extract as required by the claim would have been obvious over the cited references or that the prior art would have provided a reason to use such an extract in the claimed solar panel, the Board reversed the obviousness rejection.

Takeaway:  U.S. examiners are required to give claims their broadest reasonable interpretation in light of the specification.  However, in practice, they sometimes fail to consider whether their “broadest” interpretation of the claim language is “reasonable in light of the specification.”  Therefore, it is advisable to scrutinize an Examiner’s claim interpretation especially when there is a complicated claim limitation that includes multiple sub-features.  As illustrated by Awad, examiners sometimes fail to recognize that sub-features are related, instead treating them separately. This approach can lead to unreasonably broad interpretations.

JudgesE. B. Grimes, L. M. Gaudette, and L. Ren


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November 2, 2020by Yanhong Hu

An examiner sometimes raises an obviousness rejection under the “design choice” doctrine, alleging a claimed feature, such as a certain dimension, shape, or arrangement, is merely a “design choice” that would have been obvious to a person of ordinary skill in the art.  In Ex parte Elliott, the Patent Trial and Appeal Board (“Board”) considered the Examiner’s obviousness rejection based on “design choice” and reversed the rejection because the Board found the Examiner did not provide evidence or reasoning adequate to support such a determination and Appellant’s specification, on the other hand, presented evidence that the recited structure solved a stated problem.

Claim 1 was illustrative of the claims on appeal in Elliott and was directed to an edible animal chew that had a particular structure, including “an internal support structure comprising inner walls and at least three struts.”

The Examiner found the primary reference, Nie, disclosed an extruded animal chew and the secondary references, Heyman and Tintle, taught edible food products (such as ice cream cones and pasta) that included internal walls and struts.  The Examiner thus concluded it would have been obvious to provide Nie’s extruded animal chew with internal walls and struts as taught in Heyman and Tintle “as a manufacturing choice for the design of the pet chew.”

The Board, however, agreed with the Appellant that “there is no teaching or suggestion in [Heyman or Tintle] that it would be desirable to provide the support structures disclosed therein in a dog chew.”

Citing In re Kuhle, in which the court found the use of a claimed feature would be an obvious matter of design choice when it “solves no stated problem” and “presents no novel or unexpected result” over the disclosed alternatives, the Board noted that “[d]esign choice may serve as a basis for obviousness where alternative elements or configurations in the prior art perform the same function as the claimed aspects with no unexpected results.”  The Board further emphasized “[i]n the context of a rejection based on design choice, the relevant issue is whether the alleged differences between the claimed invention and the prior art ‘result in a difference in function or give unexpected results.’”

The Board found Appellant’s specification taught that the recited internal support structure had certain functions, such as increased chewing time and reduced calorie content, in that the specification explicitly described that the internal support structure within the edible chew “provides longer lasting time per gram of product.”  Therefore, the Board found Appellant’s specification presented evidence that the recited structure solved a stated problem.  By contrast, as noted by the Board, the Examiner failed to identify evidence or provide sufficient reasoning supporting his determination that the difference between Nie’s animal chew having no internal structure and Appellant’s claimed animal chew having the specified internal walls and struts would have been an obvious design choice.

Because Appellant’s specification presented evidence showing the claimed feature solved a stated problem while the Examiner merely presented a conclusory finding, the Board reversed the Examiner’s obviousness rejection based on “design choice.”

Takeaway:  A critical issue in addressing an obviousness rejection based on “design choice” is whether a claimed feature and the function it performs solve a stated problem or are otherwise different from the prior art.  As illustrated by Elliott, a disclosure in the specification of the benefits or results provided by a claimed feature of purported design choice could weigh against obviousness.  Therefore, when drafting a patent application, an applicant should consider including possible results, advantages, and benefits of every inventive feature, when applicable, to address a potential obviousness rejection based on “design choice.”

Judges:  D. M. Praiss, C. C. Kennedy, and J. R. Snay


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October 12, 2020by Yanhong Hu

It is well-settled that if a proposed modification or combination of prior art would change the principle of operation of the prior art invention being modified, the teachings of the references are not sufficient to render the claims prima facie obvious.  In Ex parte Binder (Appeal No. 2019-003108), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejection on the ground that the Examiner’s proposed modification changed the principle of operation of the primary reference.

The subject matter disclosed in the application at issue related to “electric shavers having electronic imaging functions.”  Claim 1 was illustrative of the claims on appeal and was drawn to a handheld device “for capturing and displaying images and for identifying an element in the images.”  The claimed device included, among other components, “a first digital camera for capturing a first image,” “a second digital camera for capturing a second image distinct from the first image,” and “a digital image processor coupled to the digital cameras for receiving the digital signals for receiving and processing the captured images.”  Further, the digital image processor identified the element in the captured images “using pattern recognition.”

The Examiner relied primarily on Oswald, which described a mobile communication device having two video cameras, for the claimed device.  The Examiner admitted that Oswald did not disclose the image identification was accomplished “using pattern recognition.”  However, the Examiner introduced Doughty, which described 3D image correlation photogrammetry, and argued it would have been obvious to “modify” Oswald to use Doughty’s pattern recognition technique to “determine strain fields on the skin surface” and to “quickly and conveniently apply a removable pattern.”

The Board disagreed.  The Board first found Oswald explicitly described in the specification and illustrated in the figures that the two video cameras were on opposite sides of the device and pointed in opposite directions.  The Board further noted Oswald taught the first camera was used to track the user “in real-time to determine their body and facial movement” while the second camera was pointing in the “direction as the movement of the user.”  Therefore, the two cameras of Oswald’s device not only were directed at opposite directions but were focused upon different objects. The mobile device described in Oswald thus could be used to “allow a reporter to capture a sequence of images of the scene, and simultaneously capture a sequence of images of himself or herself describing the scene.”  By contrast, as noted by the Board, the dual cameras’ focus in the technique depicted in Doughty was in the same general direction and was upon the same object to achieve a 3D representation of the object for strain measurement purposes.  Accordingly, the Board found combining Oswald’s apparatus with Doughty’s pattern recognition teachings “in order to determine strain fields on the skin surface” as alleged by the Examiner would require both of Oswald’s cameras to focus in essentially the same direction and upon the same object, which contradicted Oswald’s teaching that the two cameras faced in opposite directions and were upon different objects.

Therefore, the Board found the Examiner’s alleged modification would change the principle of operation of Oswald and agreed with the Appellant that the Examiner relied on an “improper rationale for combining [] the Oswald and Doughty references.”  Consequently, the Board reversed the Examiner’s obviousness rejection.

Takeaway:  When an Examiner relies on a secondary reference for a feature missing from a primary reference in an obviousness rejection, she tends to use the benefits or advantages described in the secondary reference to justify her reliance on the secondary reference.  Under such circumstances, it is important to investigate what is the underlying reason described in the secondary reference that leads to the identified benefits and to compare it with the principle of operation described in the primary reference.  As illustrated by Binder, if the underlying reason contradicts and thus would change the principle of operation of the primary reference, no prima facie case of obviousness is established.

Judges:  J. C. Kerins, M. L. Hoelter, and A. R. Reimers


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September 21, 2020by Yanhong Hu

A prima facie obviousness rejection combining multiple disclosures requires a reason to modify or combine the prior art to achieve the claimed invention with a reasonable expectation of success.  In Ex parte Liu (Appeal No. 2018-001645), the Patent Trial and Appeal Board (“Board”) reversed the Examiner’s obviousness rejections because the Board found teachings in the prior art references to be inconsistent such that there would not have been a reason to modify or combine the prior art in the manner as set forth in Appellant’s claims.


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August 10, 2020by Yanhong Hu

A product-by-process claim is a product claim that defines the claimed product in terms of the process by which it is made.  A product-by-process claim is proper and should not be rejected under 35 U.S.C. § 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as indefinite, as long as it is clear that the claim is directed to a product.


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July 20, 2020by Yanhong Hu

A rejection for obviousness must include “some articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006)).  In Ex parte Awanby reversing the Examiner’s obviousness rejection, the Patent Trial and Appeal Board (“Board”) reconfirmed the necessity of articulated reasoning with rational underpinning in an obviousness rejection. 


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June 29, 2020by Yanhong Hu

During patent examination, examiners must give claim terms “their broadest reasonable interpretation consistent with the specification.” MPEP 2111. The Patent Trial and Appeal Board (“Board”) emphasized the importance of correct application of the broadest reasonable interpretation standard in Ex parte Blum, reversing the examiner’s anticipation rejection because the examiner interpreted a key claim term in an unreasonably broad manner.