To Combine or not to Combine
| April 16, 2018
Ex parte Tesseir et al.
October 2, 2014
Before PTAB APJ Panel: Kerins, Staicovici & Woods.
Summary: The Board affirmed many of the rejections in this appeal of a Final Rejection. But the Board found that there was no motivation to support the obviousness rejection of claim 13 and therefore reversed the rejection of that claim.
要旨:
米国特許庁審判部は、最後の拒絶に対する本件アピール(拒絶査定不服審判に相当)に関し、審査官の拒絶理由の大部分を認めた。その一方、クレーム13に関する自明性の拒絶については、拒絶理由をサポートするだけの十分なモチベーション(動機付け又は理由付け)が存在しないと判断し、クレーム13に関する拒絶を覆した。具体的には、いわゆる後知恵を利用しなければ、審査官が主張するような引例の組み合わせを行なうだけの合理的な理由が存在しないと判断された。より具体的には、主引例は、既にリモート制御という構成要件を利用しており、特段の理由もなく、第2引例のリモート制御技術を組合わせるのは不合理であると判断された。
The CAFC Finds the Board’s Claim Construction to Be Unreasonably Broad
| April 13, 2018
In re Power Integrations, Inc.
March 19, 2018
Before Moore, Mayer, and Stoll. Opinion by Mayer.
Summary
Power Integrations, Inc. (“Power Integrations”) appeals a remand decision of the Patent Trail and Appeal Board (“Board”) rejecting claims 1, 17, 18 and 19 of US Patent No. 6,249,876 (the ‘876 patent) as anticipated under 35 U.S.C. §102(b). On appeal, the CAFC found the board’s claim construction to be unreasonably broad. Because the Board’s anticipation rejection was based on an unreasonably broad claim construction, the CAFC reversed.
要旨:
連邦巡回控訴裁判所(CAFC)の判決である。先に米国特許庁審判部へ差し戻され、米国特許庁審判部が再度判断を下したその判断の適否が争われた。米国特許庁審判部が広いクレーム解釈に基づいて「新規性なし」と判断した審決をCAFCは覆した。CAFCは、米国特許庁審判部のクレーム解釈はいわゆるBRI(Broadest Reasonable Interpretation)ではなく、Unreasonably(不当)に広いと判断した。そのような不当に広いクレーム解釈に基づいて引例の開示が当てはめられた新規性の判断が覆された。
Tags: 35 U.S.C. §102 > anticipation > broadest reasonable interpretation > claim construction
A Non-Overlapping Prior Art Range May Still Render a Claimed Range Obvious
| April 12, 2018
In re Brandt
March 27, 2018
Before Lourie, Reyna and Taranto. Opinion by Reyna.
Summary:
Brandt’s patent application (U.S. Application No. 13/652,858) is to high density polyurethane or polyisocyanurate construction boards. The claims recite a coverboard having a density greater than 2.5 and less than 6 lbs/ft3. In rejecting the claims, the Examiner cited Griffin (US 2006/0096205), which discloses a coverboard having a density of “between 6 lbs/ft3 and 25 lbs/ft3 and preferably a density of at least 8 lbs/ft3” and stated that the claimed range would have been an obvious design choice. The Patent Trial and Appeal Board (“PTAB”) agreed with the Examiner stating that even though the prior art range does not overlap the claimed range, the difference in the ranges was “virtually negligible.” The CAFC agreed that the ranges are “so mathematically close that the examiner properly rejected the claims as prima facie obvious and affirmed the PTAB’s rejection of the claims.
Words of limitation that can connote with equal force a structural characteristic of a product or a process of manufacture are interpreted as structural limitations by default.
| April 10, 2018
In Re Nordt Development Co., LLC
February 8, 2018
Before Moore, Taranto, and Stoll. Opinion by Stoll.
Summary:
The Federal Circuit vacates and remands a decision of the Patent Trial and Appeal Board (“Board”) affirming the Examiner’s rejection of claims 1 and 14 of U.S. Patent Application No. 13/241,865 (the ‘865 application). Specifically, the Federal Circuit held that the Board erred in construing “injection molded” limitations in claims 1 and 14 of the ‘865 application as process limitations with no patentable weight.
CAFC relies on extrinsic evidence to define a claim term and to demonstrate inherency
| February 23, 2018
Monsanto Technology LLC v. E.I. Dupont de Nemours & Co.
January 5, 2018
Before Dyke, Reyna and Wallach. Opinion by Wallach.
Summary
In this case, the CAFC affirmed a PTAB decision which relied on two pieces of extrinsic evidence. First, a journal article referred to by the specification was used to define the bounds of “about 3% or less.” Second, a Declaration submitted in the course of inter partes reexamination was used to demonstrate that claimed features are inherent in an anticipating reference. The CAFC explained that both were appropriate, and the claims are invalid as being anticipated by the cited art.
CAFC looks to complete disclosure of patent at issue and its related patents to counter patent owner’s arguments based on cherry-picking.
| February 8, 2018
Paice LLC v. Ford Motor Company
February 1, 2018
Before Lourie, O’Malley, and Taranto. Opinion by O’Malley
Summary
Due to error in the PTAB’s interpretation of incorporation by reference, the CAFC vacated the PTAB’s obviousness determination with respect to claims that relied on the incorporation by reference for their written description, and found substantial evidence to affirm the PTAB’s findings of obviousness of all other claims.
Tags: claim construction > Incorporation by reference > obviousness > written description
The USPTO cannot refuse registration of immoral or scandalous marks
| January 31, 2018
In re Erik Brunetti
December 15, 2017
Before: Dyk, Moore, Stoll. Opinion by Moore; Concurring opinion by Dyk
Summary:
The §2(a) bar on registration of immoral or scandalous marks violates First Amendment. While the CAFC opinion finds the use of immoral or scandalous marks in commerce to be discomforting, the First Amendment protects private expressions, including those that may be offensive. In this instance, the government does not have substantial interest that would justify its suppression of immoral or scandalous trademarks.
Matal v. Tam, 137 S. Ct. 1744 (2017)において、ランハム法第2(a)条に基づき、最高裁が誹謗的（disparagement）な商標を拒絶することは憲法違反であると判断したのと同様に、米国特許商標庁が、ランハム法第2(a)条に基づき、不道徳的又は中傷的（immoral or scandalous）な商標を拒絶することは、憲法修正第1条違反であるとCAFCは判決を下した。
Another “key” decision on joint/divided infringement
| January 16, 2018
Travel Sentry, Inc. v. Tropp (Precedential)
December 19, 2017
Before Lourie, O’Malley and Taranto. Opinion by O’Malley.
Summary:
Recent developments in the joint/divided infringement case law allow David Tropp to revive his patent infringement lawsuit against Travel Sentry and various other luggage manufacturers. Tropp’s patents claim a method for luggage inspection, where the luggage manufacturer supplies special locks on luggage and a master key, and TSA uses the master key to inspect the luggage.
The Broadest Reasonable Interpretation Must Be Consistent with the Specification
| December 7, 2017
Mexichem Amanco Holding S.A. de C.V., Appellant v. Honeywell International Inc., Appellee
November 17, 2017
Before Prost, Dyk and Chen. Opinion by Prost
Summary
This non-precedential opinion provides an important reminder that the broadest reasonable interpretation does not mean the broadest possible interpretation. The decision also highlights (indirectly through the decisions on appeal rendered by the PTAB) that a limitation contained in the preamble can carry weight. In unpredictable arts, an Examiner’s assertion of inherency may not necessarily shift the burden of proof to show otherwise.
Claims directed to an abstract idea without specifying an inventive concept would fail the Step Two of Alice
| December 6, 2017
Two-Way Media Ltd. v. Comcast Cable Communications, LLC
November 1, 2017
Before Lourie, Reyna and Hughes. Opinion by Reyna.
Summary
This is a case appealed from a decision of district court that asserted that the claims of the patent are directed to patent ineligible subject matter under 35 U.S.C. § 101.
United States Court of Appeals for the Federal Circuit (the “Court”) applied Alice’s two-step framework to analyze whether the claim in question is eligible subject matter. In the first step, the Court ruled that the claims are directed to an abstract idea of “gathering and analyzing information of a specified content, then displaying the result.” In the second step, the Court decided that the claims do not have an inventive concept sufficient enough to transform the nature of the claim into a patent eligible application. Therefore, the decision of district court is affirmed.
Chinese Summary
这是一个从地区法院上诉上来的案件，该地区法院判决本案涉及专利的权利要求不符合35 U.S.C. § 101中关于专利适格性的要求规定.
美国联邦巡回上诉法院（下称“法院”）运用了爱丽丝的两步法框架来分析本案涉及的权利要求是否为专利可授权主题。在爱丽丝第一步中，法院裁定，这些要求是针对“收集和分析指定内容的信息，然后显示结果”的抽象思想.而爱丽丝第二步时，法院裁定，这些权利要求没有足够的创造性概念使权利要求转化为符合专利可授权主题要求规定的权利要求。因此，法院肯定了地方法院的判决。
Details
The subject patent 5,778,187 describes “a system for streaming audio/visual data over a communications system like the internet.” The invention is described as “an improved scalable architecture for delivering real-time information.” It also provides for a control mechanism to manage and administrate users. Figure 1 below shows the architecture of the system provided by the patent.
Figure 1
Claim 1 of the patent which is agreed by both parties as the representative claim of the patent recites:
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol,
for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users, wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.
(emphasis added).
The Court reviewed de novo whether claim 1 contains patent eligible subject matter by applying the two-step frame work. The Court held that claim 1 is directed to an abstract idea and does not contain an “inventive concept” sufficient to “transform the nature of the claim into a patent-eligible application.”
Alice Step One
Although Two-Way Media argued that claim 1 is tied to particular scalable network architecture, the Court ruled that claim 1 only recites conventional computer components to manipulate data in an abstract way.
For example, the Court adopted Two-Way Media’s proposed claim construction. The proposed construction construes “controlling the routing of the stream of packets in response to selection signals received from the users” as “directing a portion of the routing path taken by the stream of packets from one of a designated group of intermediate computers to the user in response to one or more signals from the user selecting the streams.” The Court held that this construction did not indicate how the claim is directed to the particular scalable network architecture. The Court also noted that, the construction did not provide “any parameters for the “signals” purportedly dictating how the information is being routed.”
Overall, the Court held that claim 1 is “directed to the abstract idea of gathering and analyzing information of a specified content, then displaying the result, and not any particular asserted inventive technology for performing those functions.”
Alice Step Two
The Court held that the claim as opposed to something purportedly described in the specification is missing an inventive concept, thus it cannot save the claim in Alice Step Two. The Court agreed with what is found by district court that although the specification described a system architecture as a technological innovation, the claim itself is missing an inventive concept.
For example, the Court noted that claim 1 refers to certain data “complying with the specification of a network communication protocol” and the data being routed in response to one or more signals from a user. However, claim 1 does not contain details of the “rules forming the communication protocol or specifying parameters for the user signals” which preclude their contribution to the inventive concept determination.
Two-Way Media argued that the claim solves technical problems including excessive loads on a source server, network congestion, variation in delivery times etc. However, the Court notes that the claim “only uses generic function language to achieve these purported solutions.”
Two-Way Media also argued that the district court did not include its proffered evidence to the purported technological innovation. Whereas, the Court held that the proffered material is relevant to a novelty and obviousness analysis which is not relevant to eligible subject matter.
Takeaways
- A claim uses functions of gathering and analyzing information of a specified content, then displaying the result will be directed to an abstract idea when there is no any particular asserted inventive technology for performing those functions specified in the claim
- When a claim is directly an abstract idea, it needs to contain details of the inventive concept of the invention in the claim in order to be qualified as a patentable subject matter under 35 U.S.C. § 101
- More particularly, when the technological invention is an improvement of communication system architecture, it would be helpful to contain details of the inventive concept of the invention such as the rules forming the communication protocol used in the system architecture, specifying parameters for the user signals etc.
