This post may especially interest people seeking insights on the protection of inventions through approval of patent applications filed in patent offices.

Refreshers

My Handling of Patent Applications

As a friendly reminder, my practice involves handling of patent applications, also referred to as “patent preparation and prosecution.” Please note these applications are addressed to government patent offices. I work with clients to file patent applications and negotiate with patent offices to obtain the issuance of patents.

Primers on Prosecution of Patent Applications

For my earlier primers on prosecution of patent applications within the US Patent and Trademark Office (USPTO), please see “Patent Prosecution – Live” and “University Students Patent Questions,” under the heading “How Does the Captain Navigate at the Helm?”

Appeals

An additional maneuver available during patent prosecution, with associated costs, may involve appeal to the Patent Trial and Appeal Board (PTAB), previously, the Board of Patent Appeals and Interferences (BPAI), as well as outside the patent office to the court system.

Should I Stay Talking with Patent Examiner, or Go Appeal

Various financial or strategic considerations of the client typically motivate directions at a given stage of the patenting process. Turning to the example for this post, the proponents (“Chevalier”) of the prospectively inventive disclosure of US Patent Application 11/407,778 have, as of recently, supported three separate paths of patent prosecution. The Chevalier patent application has been published as Publication Number 20060255482 and entitled “Device for Stirring a Liquid and for Injecting a Gas into This Liquid, Suitable for Shallow Basins.” A representative illustration follows.

Insisting on Original Position – “Or Not at All“

Chevalier established early in the prosecution history of US Patent Application 11/407,778, and has largely held through the recent Federal Circuit decision In re Chevalier (Fed. Cir. January 7, 2013) (nonprecedential), an argument against rejection by combination of prior art, without Chevalier showing accommodation of the countering suggestions presented by the patent examiner. An early offering of these countering suggestions occurred in the Final Rejection, page 5, as the examiner’s indication of claim limitations that could be added by Chevalier to connect with Chevalier’s argument against rejection by the examiner’s combination of prior art.

In response to applicant’s argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., the length of the shaft being such to effect desired operation in shallow or deep basins) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).

Please note the terminology “Final Rejection” indicates the status of work by the patent examiner. One approach to obtaining the examiner’s further consideration of significant claim amendments involves payment to the USPTO of a Request for Continued Examination (RCE) fee.

Intriguing

The following text in the Federal Circuit decision, pages 5-6, intrigued me and motivated my preparation of this blog post.

Chevalier contends that there is no motivation to combine the teachings of Kwak and Howk because the resulting combination would be inoperable. Chevalier bases his argument on his own interpretive drawings, which allegedly demonstrate that a literal physical combination of the Kwak and Howk devices would not effectively convert the axial flow of the gas-liquid mixture to radial flow. According to Chevalier, the combination device would direct the radial liquid flow into the wall of a tube wall found in the Kwak device, thus preventing the gas-liquid mixture from achieving suitable aeration. The examiner disagreed and explained that the length of the drive shaft could be easily modified by one of ordinary skill in order to avoid this alleged problem associated with physically combining the prior art devices. The Board reviewed Chevalier’s contentions and the examiner’s answer and chose to credit the examiner’s explanation. We find the Board’s determination both well reasoned and supported by substantial evidence.

Moreover, Chevalier’s arguments demonstrate that he misapprehends the nature of the obviousness inquiry. The obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (stating “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference”). Rather, in a case such as this where each of the elements of the claim are known to the art, the obviousness inquiry requires a finding that the combination of known elements was obvious to a person with ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).

Clarity

On the face of the Federal Circuit’s first paragraph of text quoted immediately above, I wondered why a purported inoperability in combination of the prior art appeared to be glossed over in support of an obviousness claim rejection.

Upon further review of the prosecution history, I saw apparent answers to my question:

• Chevalier has, so far in the prosecution of the original US Patent Application 11/407,778, refrained from presenting claim language convincingly tied to Chevalier’s argument against rejection by inoperability in combination of the prior art.
• Chevalier has subsequently filed two continuation patent applications, as further discussed below, in parallel with Chevalier’s appeal on the parent patent application 11/407,778 addressed by the Federal Circuit decision.

Chevalier’s Missing Claim Language

As stated in the appealed Patent Board’s Decision, page 5:

As correctly noted by the Examiner, the subject matter of claim 1 does not include limitations pertaining to the length of the shaft, depth of the reactor or proximity of the deflector to the rotor. Ans. 6. With this in mind, we agree with the Examiner’s reasoning that a person skilled in the art would have sufficient knowledge of the prior art and skill to utilize known techniques and adjust the shaft to a length that would maintain the mounted deflector at the bottom of the basin so as to retain the advantages of Kwak (scouring) and provide a quick and complete conversion of axial to radial flow within the basin. Id. The examiner has provided an adequate explanation of why one skilled in the art would not make a device that mismatches the reactor basin in which it would operate. Id. at 7. On this record, Appellants have not directed us to persuasive evidence to the contrary.

The Board’s citations in the text quoted immediately above, are directed to the numbered pages of the Examiner’s Answer to Appeal Brief.

Chevalier’s First Continuation Is Now a Patent

During the appeal for the parent patent application 11/407,778, Chevalier filed for and received US Patent 8,308,143 on method claims containing details that echo the examiner’s earlier suggestions, introduced further above.

Chevalier’s Second Continuation Is Pending

Also during the appeal for the parent patent application 11/407,778, Chevalier filed US Patent Application 13/401,421, which is, at present, not yet available for public inspection.

Text Copyright © 2013 Bob Brill

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