Bob Brill patent IP lawyer with business sense | Brill IP Law Office

Apr/12

24

How Appeals Board Is Viewing Prior Art Anticipation for Patent Claims

This post may especially interest people who seek protection of inventions through application to patent offices.

Upstream Handling of Patent Applications

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. Looking at patent applications as “upstream” work, one may compare “downstream” work as potentially involving assertion, enforcement, and/or litigation. As a further basis of comparison, litigation matters involve the court system, outside the patent office.

Primers on Prosecution (Handling) of Patent Applications

For my earlier primers on prosecution (handling) 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?”

Board of Patent Appeals and Interferences (BPAI)

The patent applicant may appeal a patent examiner’s final rejection while a patent application remains pending in the patent office, to the Board of Patent Appeals and Interferences (BPAI). Review of decisions by the BPAI may shed light on current directions and parameters for patent examiners in general for negotiation of prospective allowance of patent claims.

Patenting by Words of Distinction

Briefly reviewing the decisions of the BPAI dated April 24, 2012, I thought to share with you a pointer from Ex Parte Caddell, Appeal No. 2010000810. In the illustrative claims on page 2 of the decision, appeared the following patent claim 1, where the corresponding application was earlier published as US Publication No. 20060163970A1 of Caddell:

1. A rotary machine comprising:
a hollow stator which defines an elliptical rotor path;
a longitudinal rotor mounted within said elliptical rotor path, said longitudinal rotor extending arcuately along said elliptical rotor path; and
a magnet system mounted about said stator to drive said longitudinal rotor along said elliptical rotor path.

The BPAI presented the following analysis on pages 5-6 of the decision in connection with US Patent No. 3,927,329 to Fawcett et al., the prior art reference that had been applied by the patent examiner for rejection of claim 1:

35 U.S.C. § 102(b) Rejection—Fawcett
Claims 1 and 30

We find error in the Examiner’s anticipation rejection of independent claims 1 and 30. Independent claim 1 recites, inter alia, “a longitudinal rotor mounted within said elliptical rotor path, said longitudinal rotor extending arcuately along said elliptical rotor path[.]”

At best, Fawcett discloses configuring the spheroids or pistons such that they move freely about the torus or closed loop passageway. Col. 7, ll. 47-49; figure 1. However, we find that Fawcett does not describe configuring the pistons such that they are bent or curved along the loop, as required by independent claims 1 and 30. While Fawcett’s pistons may be capable of bending or curving along the loop, mere probabilities and possibilities fall short of demonstrating that Fawcett necessarily describes the claimed “longitudinal rotor” as required for an anticipation rejection. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Consequently, we find that the Examiner improperly relied upon Fawcett to describe the disputed claim limitation. It follows that the Examiner has erred in finding that Fawcett anticipates independent claims 1 and 30.

Prior Art’s Mere Probabilities and Possibilities Fall Short in Claim Rejection

Taking a lesson from the decision’s language at face value, without digging into details of the further file history of the appealed patent application, we may appreciate the BPAI gave weight to claim 1′s language as sufficiently distinguishing the prior art reference. In reversing the anticipation rejection of claim 1, the BPAI characterized:

[M]ere probabilities and possibilities fall short of demonstrating that Fawcett [the prior art reference applied by the patent examiner] necessarily describes the claimed “longitudinal rotor” as required for an anticipation rejection.

The BPAI took note of claim 1′s recitation “said longitudinal rotor extending arcuately along said elliptical rotor path” as detail not anticipated by the prior art reference applied by the patent examiner.

Text Copyright © 2012 Bob Brill

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