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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 20, 2020by Matthew Barnet

Patent claims often recite structural limitations in combination with one or more properties. In the chemical arts, for example, a claim might recite a copolymer comprising certain monomer components, where the copolymer has certain rheological properties (e.g., melt flow rate, die swell).

In such cases, U.S. examiners often rely on the theory of inherency to fill gaps in the prior art. If the prior art describes the claimed structural limitations, but not the claimed properties, examiners often take the position that the claimed properties would be inherent in the structure of the prior art, even though the properties are not explicitly described in the prior art (see, e.g., here and here).

Alternatively, U.S. examiners sometimes take the position that the claimed properties would result from an obvious optimization of a different property in the prior art. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Isaka.

Claim 1 recited (in part):

A tetrafluoroethylene/hexafluoropropylene copolymer having a melt flow rate measured at 372°C of 35.0 to 45.0 g/10 minutes and a die swell of -8.0% to 5.0%…

Claim 1 also recited a detailed method by which die swell was measured.

The examiner rejected claim 1 as obvious over a combination of two references. The primary reference (“Burch”) described a tetrafluoroethylene/hexafluoropropylene copolymer having a melt flow rate overlapping the claimed range. However, Burch was silent regarding the die swell of its copolymer.

The examiner relied on a second, evidentiary reference (“Krevelen”) for the property of die swell. The examiner found that Krevelen taught a correlation between the molecular weight of a polymer and its swelling properties. The examiner found that it would have been obvious to modify the molecular weight of the copolymer in Burch to optimize the melt flow properties of the copolymer. The examiner took the position that “[i]n modifying the melt flow properties…one would also be optimizing the die swell properties, as these properties are related through the polymer weight average molecular weight.” Thus, the examiner concluded that the die swell in claim 1 would result from an obvious optimization of melt flow properties in the prior art.

The Board disagreed with the examiner. Instead, the Board agreed with the applicant that “optimizing melt flow rate and molecular weight is not equivalent to optimizing die swell properties.”

In particular, the Board found that Krevelen taught that “die swell is modified by both molecular weight and molecular weight distribution.” The Board was not convinced that modifying the molecular weight by itself (i.e., without also accounting for the molecular weight distribution) would result in optimized die swell properties reading on claim 1.

The Board concluded that the examiner “did not sufficiently explain why a person of skill in the art would have had reason to adjust molecular weight distribution or why a person of skill in the art would otherwise have reason to adjust process variables in a manner that would reach claim 1’s recited die swell of -8.0% to 5.0%.” Accordingly, the Board reversed the obviousness rejection.

Takeaway: If an examiner takes the position that a claimed property would result from an obvious optimization of a different property in the prior art, it can be helpful to argue that optimizing the property in the prior art would not necessarily optimize the claimed property. As with arguments against inherency rejections, arguments in this situation are strengthened by technical explanations, optionally supported by experimental data.

Judges: Owens, Baumeister, Range


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November 13, 2020by Richard Treanor

On November 9, 2020, the Patent Trial and Appeal Board issued a decision in Ex parte Tramontano et al. (Appeal 2020-002413) in which a misplaced claim interpretation/35 U.S.C. 112 argument distracted the Board from finding clear error in the Examiner’s obviousness rejection.

In Tramontano Claim 25, relating to the formation of a gel at a tissue treatment site, was the representative claim:

25. A process for forming a gel comprising:

forming an oxidized cellulose solution;

forming a precipitating composition; and

contacting the oxidized cellulose solution and the precipitating composition at a tissue treatment site thereby precipitating oxidized cellulose from the oxidized cellulose solution and forming the gel.

As explained in the Tramontano specification, the claimed gel may be used as an adhesive to seal tissue and/or to provide for the delivery of bioactive agents ([0274]).

During prosecution, the Examiner concluded that it would have been obvious to a person of ordinary skill in the art to substitute the cellulose ether used as the polymer in the cross-linked gels taught by Gehrke, with oxidized cellulose as taught by Blaskovich, at a tissue treatment site, as taught by Hubbard. In their Appeal Brief Appellants argued, among other things, that none of the cited references disclosed their claimed “precipitating composition” and, in response to a statement made by the Examiner in the Advisory Action (“it is not clear what the precipitation composition ….comprises”) argued to the Board that the lack of a 35 U.S.C. 112 rejection meant that the claim term “precipitation composition” was definite. Appellants further provided the Board with a legal framework for determining the meaning of a claim term, and argued that the references did not disclose the use of a “precipitating composition” as properly understood under their framework.

In affirming the rejection the Board first felt “obliged to make several initial points,” constituting over four full pages of their nine page analysis, the first of which was to correct Appellants’ legal framework for determining the meaning of a claim term, and the second of which was to apply the correct standard and find that the Blaskovich reference did indeed disclose the use of a “precipitating composition.” In coming to this conclusion and affirming the rejection, the Board characterized Appellants’ arguments regarding definiteness as “largely irrelevant” in view of the acknowledged fact that no 35 U.S.C. 112, second paragraph, rejection was at issue.

In Tramontano, the Board was clearly distracted (and perhaps irritated) by Appellants’ unnecessary arguments regarding definiteness to the point that Appellants’ other, stronger, arguments were ignored. In this regard, one of the applied references, Hubbard, was cited as teaching the delivery of oxidized cellulose, in gel form, to a tissue site. However, while Appellants argued that the combined references failed to suggest contacting an oxidized cellulose solution and a precipitating composition at a tissue treatment site, thereby forming the gel at the treatment site as claimed, this argument was not specifically addressed by the Board. Instead, the Board emphasized the presence of a “precipitating composition” and “oxidized cellulose solution” in the Gehrke and Blaskovich references.

Takeaways:  The Tramontano case illustrates the importance of leading with the best arguments and focusing the Appeal Brief on issues of clear error in the rejections of record. In addition, the Tramontano case provides us with a reminder to review claims for the presence of unnecessary steps, such as the “forming” steps in Claim 25 above. Such unnecessary steps can provide infringers with the possible defense of “divided infringement” if third parties perform certain steps within a claimed method.

25. (Amended) A process for forming a gel comprising:

forming an oxidized cellulose solution;

forming a precipitating composition; and

contacting the an oxidized cellulose solution and the a precipitating composition at a tissue treatment site thereby precipitating oxidized cellulose from the oxidized cellulose solution and forming the gel.

Judges: Prats, Katz, New


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November 10, 2020by Christopher Bayne

In assessing obviousness rejections, a threshold issue is whether the cited reference(s) qualify as prior art. A reference qualifies as prior art for an obviousness determination only when it is “analogous” to the claimed invention.  See M.P.E.P. § 2141.01(a).

Two separate tests define the scope of analogous prior art: (1) whether the art is from the same “field of endeavor,” regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is “reasonably pertinent” to the particular problem with which the inventor is involved.  M.P.E.P. § 2141.01(a), para. I (citing In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)).

On October 28, 2020, the Board issued a decision in Ex parte Taskinen reversing obviousness rejections, because the examiner did not establish that a cited secondary reference was analogous to the claimed invention. This case illustrates that care should be taken to ensure that cited references are analogous under at least one of the two applicable tests.

The claimed inventions were drawn to “adjustable massage apparatuses,” and the examiner rejected the claims as being obvious over Taskinen (US 2008/0200778) in view of Khen (WO 2008/063478) and Lockwood (US 2003/0014022).

However, the rejection did not explain why Lockwood—describing “wound treatment apparatuses”—was analogous to the claimed massage apparatuses.

The applicant argued that a person of ordinary skill in the relevant art would not rely upon the teachings of Lockwood to modify the device of the primary reference, because the structure and purpose of the apparatuses in this reference are different with respect to the claimed inventions. As explained in the Reply Brief:

Even though Lockwood describes a device utilizing low pressure suction, the structure and purpose of the Lockwood device are different with respect to the present application.

In this sense, the skilled person would not turn to Lockwood when developing the device according to Taskinen.

Furthermore, the skilled person would not try to combine features of Lockwood to Taskinen because they are not easily, if at all, combinable with Taskinen (or with Taskinen in view of Khen).

Although the examiner argued that Lockwood is in the same “field of endeavor” as the claimed inventions, the examiner did not explain why this reference was “reasonably pertinent” to the particular problem faced by the inventors.  As explained in the Examiner’s Answer:

Appellant argues . . . that Lockwood does not appear relevant.  Examiner respectfully disagrees. Lockwood is in the same field of endeavor of vacuum treatment devices for a user.  Thus, Lockwood is relevant.

The Board disagreed that Lockwood is in the same “field of endeavor” as the claimed inventions, because “massage devices” are not “vacuum treatment devices for a user.”

In rendering its decision, the Board explained that the “field of endeavor” test is not a “subjective call” by the Examiner.  Instead, this test requires the examiner to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.  As explained by the Board:

‘[T]he field of endeavor test . . . requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’ In re Bigio, 381 F.3d at 1325. ‘This test does not make the assessment of the field of endeavor a wholly subjective call for the examiner.’ Id. at 1326. Rather, ‘[t]he examiner and the Board must have a basis in the application and its claimed invention for limiting or expanding the scope of the field of endeavor.’ Id.

The Examiner makes no findings regarding whether Lockwood is analogous art and, instead, simply concludes that ‘Lockwood is in the same field of endeavor of vacuum treatment devices for a user,’ and ‘[t]hus, Lockwood is relevant.’ Ans. 10. We are left with no finding supported by evidence to support this conclusion.

Moreover, we find that Appellant’s field of endeavor is, in fact, not ‘vacuum treatment devices for a user’ generically. Rather, Appellant’s field of endeavor is massage devices. This is evidenced by the characterization of the Application’s technical field, the discussion of the prior art, the description of the invention, the figure, the detailed description, and the claims. Indeed, there is no reference to any application of the purported invention to anything other than a massage device.

Because the Examiner made no assertion regarding the “reasonably pertinent” test, the Board declined to make any findings about whether Lockwood is analogous under the second test.

Judges:  J.C. KERINS, J.M. PLENZLER and C.M. DEFRANCO (Opinion by PLENZLER).


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November 6, 2020by Beau Burton

On September 30, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Drozdenko (Appeal No. 2020-001293) reversing an Examiner’s obviousness rejection for its erroneous applications of In re Rose, 220 F.2d 459 (CCPA 1955) and “design choice.”

Claim 1 at issue in Drozdenko is representative and stated:

A blade comprising:

an airfoil … including a body formed of an aluminum containing material;

a sheath … with a sandwich … including an outer adhesive layer adjacent the sheath, an intermediate [fabric] layer and an inner adhesive layer adjacent the body;

wherein said fabric layer is a woven fabric layer; and

wherein said woven fabric layer has holes that are less than .001 inch on average.

Decision on Appeal, Appeal No. 2020-001293, at 2 (P.T.A.B. Sept. 30, 2020) (non-precedential) (emphasis added).

Although the Examiner admitted that the prior art failed to disclose a fabric layer with holes less than 0.001 inch on average, the Examiner argued that “it would have been an obvious matter of design choice … to have [the] hole size claimed … such a modification would have involved a mere change in size of a component. A change in size is generally recognized as within the level of ordinary skill in the art.” Final Rej., at 4 (citing In re Rose) (emphasis added).

The Examiner’s rejection suffered two critical deficiencies. First, a finding of obvious design choice is precluded when the claimed structure and the function it performs are different from the prior art. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992). And in this case, the Appellant’s specification differentiated its woven fabric from the prior art scrim having larger holes.

Second, In re Rose applies to a change in the overall size of an article rather than the size of an individual component as explained by the Board below:

In Rose, the appellant argued that the claimed “lumber package” was large and required a lift truck for handling; whereas, the prior art packages (a package of relatively small pieces of lumber and a package of window screen frames) could be lifted by hand. The court held that “this limitation [(i.e., size and weight of the package)] is [not] patentably significant since it at most relates to the size of the article under consideration which is not ordinarily a matter of invention.

Here, in contrast, the Examiner does not propose a change in the overall size of the article under consideration (i.e., a blade (claim 1); an engine (claim 11)). Instead, the Examiner proposes changing the structure of Parker’s woven fabric (a scrim) to that of a tightly woven fabric having holes less than .001 inch on average, even though the Specification describes the tightly woven fabric as performing differently from a scrim.

Decision, at 3. Having failed to provide any other reason to substitute a woven fabric having holes that are less than 0.001 inch on average for the scrim described in the prior art, the Board declined to sustain the Examiner’s obviousness rejection.

Takeaways: The court in Rose did not address a modification in which the size of a particular component of an article is modified without a respective size change in the remaining components. Nevertheless, Rose is routinely misapplied to argue the obviousness of changing the size of a particular component analogous to Drozdenko. Thus, when Rose is applied in a rejection, the first step is to determine whether the resizing in question is for the entire article or only a component thereof. If it is the latter, then the Examiner’s reliance on Rose is misplaced.

Finally, to the extent that “design choice” may apply, the specification should be consulted to determine whether the change in size results in a difference in performance or function. A more detailed example of the “design choice” doctrine can be found here.

Judges: P. Kauffman, A. Reimers, T. Hutchings


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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 15, 2020by Beau Burton

On September 29, 2020, the Patent Trial and Appeal Board (“Board”) issued a decision in Ex parte Brinhaus (Appeal No. 2019-006794) and reversed an Examiner’s obviousness rejection for failing to consider the prior art as a whole.

At issue in Ex parte Brinhaus were the requirements in independent claims 1 and 11 for “a bismuth nitrate crosslinking catalyst consisting of a water-insoluble basic bismuth nitrate” and “wherein the water-insoluble basic bismuth nitrate is the only metal nitrate.”

The prior art relied on by the Examiner mandated the presence of “at least one water-soluble metal nitrate” and differentiated prior compositions that included water-insoluble organic nitrates and/or nitrates. See U.S. Patent No. 7,211,182 (“the ‘182 patent”), col. 2, ll. 14–40. Thus, the prior art was clearly focused on the use of water-soluble nitrates and their benefits relative to water-insoluble nitrates.

Paradoxically, when describing the preferred water-soluble metal nitrates, the prior art apparently included a water-insoluble metal nitrate– Bi5O(OH)9(NO3)4:

The metal nitrates are selected from among the water-soluble nitrates of metals from the group consisting of metals of atomic numbers 20 to 83, wherein chromium, arsenic, rubidium, ruthenium, rhodium, palladium, cadmium, antimony, caesium, osmium, iridium, platinum, mercury, thallium and lead are excepted.… Preferred nitrates are those of titanium, vanadium, iron, zinc, yttrium, zirconium, tin, cerium, neodymium or bismuth, in particular of yttrium, neodymium or bismuth, especially of bismuth. Examples of bismuth nitrates are Bi(NO3)and Bi5O(OH)9(NO3)4.

The ’182 patent, col. 3, l. 55–col. 4, l. 3 (emphasis added). According to the Examiner, this was sufficient to present a case of obviousness despite the claims stating that “the water-insoluble basic bismuth nitrate is the only metal nitrate.”

On balance, the Board found the Examiner’s position untenable because the prior art “as a whole, so strongly emphasizes use of a water-soluble nitrate … that a person of ordinary skill in the art would not have understood the last sentence of this paragraph as teaching or suggesting use of water-insoluble Bi5O(OH)9(NO3)4 as a sole metal nitrate.” Consequently, the Board reversed the Examiner’s obviousness rejection.

Takeaway: It is important to confirm that the portions of the prior art cited by the Examiner are not taken out of context and are consistent with the prior art as a whole. Occasionally, an isolated passage of a prior art reference may be inconsistent with its broader teachings. This is why a basic tenet of patent law is that the prior art must be considered in its entirety, including any portions that diverge from the claimed invention. See, e.g., In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988) (“One cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.”); In re Dow Chemical Co., 837 F.2d 469, 473 (Fed. Cir. 1988) (“The full field of the invention must be considered … including that which might lead away from the claimed invention.”); W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (“In its consideration of the prior art, however, the district court erred … in considering the references in less than their entireties, i.e., in disregarding disclosures in the references that diverge from and teach away from the invention at hand.”).

Judges: T. Ownes, J. Snay, B. Range


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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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October 9, 2020by Matthew Barnet

U.S. patent claims usually contain the term “comprising.” This term indicates that an item in the claim must include certain specified components, but that the item also may include other, unspecified components. Alternatively, patent claims sometimes contain the term “consisting of.” This term indicates that an item in the claim is closed to unspecified components.

In between the open term “comprising” and the closed term “consisting of” is the term “consisting essentially of.” This semi-closed term indicates that an item in the claim is limited to the components specified in the claim “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. In re Herz, 537 F.2d 549, 551-52 (CCPA 1976) (emphasis in original).

The semi-closed nature of “consisting essentially of” sometimes is attractive during patent prosecution. For example, if the prior art discloses the combination of components A, B and C, it might be difficult to distinguish a patent claim with an item comprising components A and B since the item is open to the unspecified component C by virtue of the open term “comprising.” Amending the claim so that the item consists of components A and B (rather than comprises components A and B) might distinguish the claim from the prior art, if the prior art requires component C. However, such an amended claim might be easy for a competitor to design around, simply by adding component D to components A and B in the competitor’s product. The term “consisting essentially of” can provide a middle ground, allowing a patent applicant to distinguish a claim from prior art without excessively narrowing the scope of the claim.

However, when using the term “consisting essentially of,” the patent applicant often must explain to the examiner what the “basic and novel characteristic(s)” of the claimed invention are, and why they would be “materially affect[ed]” if the claimed invention were to include an additional component from the prior art. This issue is illustrated in the recent Patent Trial and Appeal Board (“Board”) case of Ex parte Nakajima.

Claim 1 in Nakajima recited:

A method of modifying starch, comprising subjecting a powdery mixture consisting essentially of starch and water-soluble hemicellulose at a weight ratio of 95:5 to 80:20 to moist-heat treatment at 100 to 200°C.

The examiner rejected claim 1 as obvious over two references, Yoshino in view of Narimatsu. The examiner relied on Yoshino for a method of subjecting starch to moist-heat treatment. The examiner acknowledged that Yoshino did not disclose water-soluble hemicellulose, and relied on Narimatsu for this component. Narimatsu described mixing water-soluble hemicellulose as a powder with wheat flour and starch. The examiner took the position that it would have been obvious to combine the water-soluble hemicellulose of Narimatsu with the starch of Yoshino, and then to treat the mixture of hemicellulose and starch with moist heat.

The applicant argued that the combination of Yoshino and Narimatsu would require the presence of wheat flour along with water-soluble hemicellulose and starch. Because of this, the applicant argued that the combination of these references would not satisfy the requirement that the powdery mixture consist essentially of starch and water-soluble hemicellulose.

In particular, the applicant argued that the presence of wheat flour would materially affect the basic and novel characteristics of the claimed invention. The applicant identified the basic and novel characteristics of the claimed invention as suppression of swelling or disintegration of starch granules. The applicant explained that including wheat flour with starch and water-soluble hemicellulose would not lead to such suppression. This explanation was supported by experimental data, submitted in a declaration, showing that samples containing wheat flour did not show the same inhibitory effect on swelling and disintegration of starch granules that was observed in samples without wheat flour.

Since the presence of wheat flour would materially affect the basic and novel characteristics of the claimed invention, the applicant argued that wheat flour should be excluded by the “consisting essentially of” phrase.

In response, the examiner contended that it would have been obvious to combine the water-soluble hemicellulose of Narimatsu with the starch of Yoshino, without including the wheat flour of Narimatsu.

The Board sided with the applicant. The Board found that Narimatsu taught adding water-soluble hemicellulose to a mixture of wheat flour and starch, but did not teach or suggest adding water-soluble hemicellulose to starch alone. The Board agreed that the applicant had provided sufficient evidence that including wheat flour in the powdery mixture of claim 1 would materially affect the basic and novel properties of the claimed invention. Accordingly, the Board found wheat flour to be excluded by the “consisting essentially of” phrase, and reversed the obviousness rejection.

Takeaway: The transitional phrase “consisting essentially of” provides a middle-ground between the open “comprising” and the closed “consisting of” phrases. When using the phrase “consisting essentially of,” applicants should be prepared to identify, on the record, what the basic and novel characteristics of the claimed invention are. Applicants also should be prepared to provide a technical argument, possibly supported by experimental data, explaining why the basic and novel characteristics would be materially affected if the claimed invention were to include an additional component from the prior art.

Judges: Franklin, Snay, Ren


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September 24, 2020by Beau Burton

The term “comprising,” when used in the preamble of a claim, permits the inclusion of other elements or materials in addition to those specified in the claim. However, “‘comprising’ is not a weasel word with which to abrogate claim limitations.” Dippin’ Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed.Cir.2007).

Ex parte Martino involved a claim that required “[a] hand held olfactory tester comprisinga single odorant chamber.” Decision on Appeal, Appeal No. 2020-001003, at 2 (P.T.A.B. Sept. 11, 2020) (non-precedential).

In rejecting the claim, the Examiner only presented prior art having a tester with a plurality of chambers. Yet, the Examiner argued that the claim was obvious because “the plurality of containers shown [in the prior art] also include a single container.” Id. at 6. According to the Examiner, the claims needed to recite that the tester consists of only a single chamber because the term “comprising” allowed for additional, unrecited elements.

The Applicant disagreed, because the claim explicitly required a single chamber. The Board sided with the Applicant.

The Board noted that “[t]he presumption raised by the term ‘comprising’ does not reach into each of the [elements] to render every word and phrase therein open-ended,” and must be read in view of the specification. Id. at 4. The Board then applied a two-step analysis. First, the Board found that the ordinary and customary meaning of the term “single” is “one and only one.” Next, the Board confirmed that the specification was consistent with this meaning. Here, the Board highlighted, among other things, that the specification differentiated prior art testers having a number of odorant chambers, described a housing  with “an odorant chamber,” and depicted a device with only one chamber. Consequently, the Board found that the term “comprising” in the preamble did not negate the meaning of “single” as understood by one in the art.

Without any prior art disclosing or otherwise suggesting a tester comprising a single chamber, the Board reversed the Examiner’s obviousness rejection.

Takeaway: The scenario in Martino is quite common because of the presumption to construe the term “comprising” to be nonexclusive and the tendency for some examiners to play wordsmith. Martino also shows that even when there is no ambiguity in the claim language, the Board may still consult the specification for consistency with the ordinary and customary meaning of a term like “single.” So, what other options are available if you want to claim a limited number (e.g., one) of an element but the specification permits a plurality? One option is to add a wherein clause that states, “wherein the [device, article, composition, etc.] comprises no more than one element.”

Judges: A. Fetting, U. Jenks, A. Shah