Hot Topics Before the BPAI

William F. SmithOf CounselWoodcock Washburn LLP 1180 Peachtree Street, NE, Suite 1800 Atlanta, GA 30309-3531Phone:  404.256.6691 Fax: 404.459.5734 Email: wsmith@woodcock.comwww.woodcock.com

Should you appeal?

Why the drop?• Allowance rate now includes phantom

abandonments for RCEs• Over 50% of examiners have less than 3 years

experience– No in depth knowledge of the technology

being examined– No in depth knowledge of law and procedure

• Supervisors are not as experienced as in the past

Why the drop?• “Quality” crackdown

– Myriad opaque layers of “quality review”• RCE churn

– Cases are not being allowed but neither are they being abandoned

Cases likely to need an appealCases involving rejections such as:• Utility• Subject matter eligibility, especially after Nuijten and Bilski• Written description, especially biotech and pharma cases• Significant legal issues including declarations under 37 CFR §

1.131 and 132• Business methods, especially after Comiskey• Obviousness; especially after KSR

Resources• 35 U.S.C. §§ 6 and 134• 37 CFR § 41.1 et seq., new rules are delayed• FAQs for new rules issued December 2009• MPEP Chapter 1200

– To be extensively revised by PTO if new rules become effective

• Board web site -http://www.uspto.gov/web/offices/dcom/bpai/index.html

• Board opinions are available at the website and may be searched to some degree

New rules

The new rules are onerous and will significantly increase the cost of preparing an Appeal Brief if they come into effect. The rules are one-sided as the examiners are not bound by similar provisions in either the final rejection or examiner’s answer.

Should you appeal?Old advice – Not every case that is eligible for appeal under the statute and rules is necessarily ready for appeal.

New advice — Appeal early and often. Response to first Office action can be seen as the beginning of an Appeal Brief.

Board Workload and OutcomesAs of March 31, 2009, the number of ex

parte appeals awaiting decision at the Board is 7,295, up from 3,956 on October 1, 2008.

As of March 31, 2009, the Board had affirmed 55.5%, affirmed-in-part 13.5% and reversed 22.4% in FY 2009.

An AppealIs All About Claim Scope

In reaching the decision of whether to appeal, you must have a realistic view of the scope of each claim based upon the correct standard for construing claims in the USPTO.

An AppealIs All About Claim Scope

“Analysis begins with a key legal question—what is the invention claimed?...Claim interpretation…will normally control the remainder of the decisional process.”

Panduit Corp. v. Dennison Manufacturing Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987)

Claim Construction in the USPTO

“[A]s an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)

Claim 1— Eats shoots and leaves.

Claim 2— Eats, shoots and leaves.

Claim 1— Eats shoots and leaves.

Claim 2— Eats, shoots and leaves.

Claim 1. An abrasive composition comprising soap.

Pre-Appeal Brief Conference?

Procedures governing pre-appeal brief are found at:

http://www.uspto.gov/web/offices/com/sol/og/2005/week28/patbref.htm

Pre-Appeal Brief Conference?Pros:• Two conferees review

case with examiner• Conferees are being

trained by the Board

Cons:• If unsuccessful, will

appeal conference be pro forma?

• No specific feed back as to why arguments were not persuasive

• Over 70% of requests are ineffective

Proposed Rules

The format for the Appeal Brief in an ex parte appeal will significantly change if the new rules become effective.

The PTO posted FAQs regarding the proposed rules at http://www.uspto.gov/web/offices/dcom/bpai/rule/faq_121008.html

What remains the same• Real Party In Interest• Related Proceedings/Related Cases• Status of Claims• Status of Amendments After Final Rejection• Rejections to be Reviewed

What is new• Jurisdictional statement• Table of contents• Table of authorities• Statement of facts• Presumption of examiner correctness and BPAI review

for examiner error• Characterization of arguments as new or previously

presented• A revised and expanded appendix• Sanctions

What is new• Format requirements

– Page numbering– Double spacing except in headings, Table of

contents, Table of authorities, signature blocks and certificates of service

• Block quotations must be indented and can be spaced 11/2

– Font is to be 14 point– Page limits– Signature block

What was removed• Summary of claimed subject matter in lieu of

new claims analysis section• Parallel citation to USPQ no longer required• Examiner can no longer make a new ground of

rejection

FAQs• A “fact” used in the argument need not appear in

the Statement of facts.– Why require a Statement of facts?

• Any argument not identified as previously made will be assumed to be “new” by the Board.– Why require characterization of arguments?

Appeal Brief-Argument

Only those arguments set forth in the briefing will be considered. Arguments which appellant could have made but chose not to make in the briefing will not be considered. See 37 C.F.R. § 41.37(0)(2) (proposed rule). Existing rules contain similar provision.

Board’s Error Standard of Review

Most Board panels cast the issue as “Has appellant established the examiner erred or reversibly erred….”

This standard silently adopts the presumption of examiner correctness codified in the new rules.

Board’s Error Standard of Review

“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.

After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.

If examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent.”

In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (citations omitted)

How Do Examiners Err?

• Construction of claim under review using standards appropriate for claims under review before the USPTO. Broadest unreasonable construction?

• Non-application or misapplication of the correct legal standards for the section of the statute the rejection is based upon. Cite relevant precedent and relate facts of case to the precedent.

How Do Examiners Err?

• Making facts of record that are relevant in determining the patentability of the claim under review. Is fact finding complete and correct?

• A fact-based statement of rejection from the examiner setting forth the reasons why the facts relied upon, using the correct legal standard, render the claim under review unpatentable. Is the statement of rejection complete, coherent and legally correct?

Post-Bilski Board Decisions

• Ex parte Nawathe, Appeal No. 2007-3660 (Feb. 9, 2009)

• Ex parte Mitchell, Appeal No. 2008-2012 (Feb. 23, 2009)

• Ex parte Van Beek, Appeal No. 2008-2003 (Jan. 16, 2009)

• Ex parte Mazzara, Appeal No. 2008-4741 (Feb. 5, 2009)

Ex parte NawatheClaim 1--A computerized method comprising:

inputting multiple extensible Markup Language (XML) documents;

creating a data representation of said multiple XML documents; and

reducing redundancy across said multiple XML documents via a fixed set of tables.

Ex parte Nawathe“The body of the claim merely recites that upon inputting XML documents, creating a data representation thereof to reduce redundancy across the documents via fixed tables. We note that the recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose

processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method.”

Ex parte NawatheClaim 25 (from pre-grant pub.) An apparatus comprising:

means for creating a graph based data structure representing a standard XML tree structure; and means for transforming the graph based data structure to a fixed set of tables.

Ex parte Nawathe“As to independent claim 25, Appellants argue that the recited apparatus refers to the general purpose computer depicted in Figure 2. (App. Br. 33.) Further, Appellants submit that the different means recited in the claim correspond to the different modules in the computer for performing the recited functions. (Id. at 12.) We find that since the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea.”

Ex parte MitchellClaim 10. A computer readable medium for identifying co-evolving regions in the memory of a target application, comprising instructions for:

receiving information identifying a set of data structures that are evolving; and classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.

Ex parte Mitchell“We see no reason why a ‘computer

readable medium’ containing ‘instructions’ for the otherwise ineligible method should be treated any differently from the non-statutory method recited in instant claim 1. Although a ‘computer readable medium’ may nominally fall within the statutory class of ‘manufacture,’ claim 10 would effectively pre-empt the abstract idea represented by instant claim 1.” (footnote omitted)

Ex parte Van Beek1. A digital file stored on a computer-readable medium, said digital filecomprising:(a) a plurality of boxes containing data arranged in a

manner consistent with the JPEG2000 specification and suitable to render an image when read by a computer;

(b) at least one of said boxes being a metadata box; and

(c) including information within said metadata box describing the content of said image.

Ex parte Van Beek“It has been the practice for a number of years that a ‘Beauregard Claim’ of this nature be considered statutory at the USPTO as a product claim. (MPEP 2106.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). The claims at issue recite a digital file stored on a computer readable medium. This has been found statutory under In re Lowry, 32 F.3d 1579. In view of the totality of these precedents, we reverse the Examiner’s rejection under 35 U.S.C. § 101.”

Ex parte Mazzara17. A computer usable medium including a program for storing an alert message request for a mobile vehicle communication system into a queue comprising:

…………

Ex parte Mazzara“The Examiner has not cited any legal authority for the proposition that a claim to a computer usable media should be barred under 35 U.S.C. § 101 merely because it may incidentally read on nonstatutory subject matter. In fact, if this were the law, all claims to computer readable media would be presumed nonstatutory unless the associated Specifications clearly and unambiguously defined the term ‘computer readable medium’ to be limited to only statutory subject matter.”

Ex parte Mazzara“Such a bright-line default rule would be contrary to established precedent. See Warmerdam, 33 F.3d at 1359 (holding that ‘[t]he fact that the claim covers methods which are essentially mathematical in nature…is not dispositive [of whether the claim is directed to statutory subject matter]. Claims should be evaluated by their limitations, not by what they incidentally cover.’).”

Ex parte Mazzara“In the present case, there is no express

statement in the Specification, nor any other indication in the record, that the term “computer usable medium” is intended to include non-statutory subject matter such as signals or paper. Accordingly, we find that the term ‘computer usable medium’ is limited to only tangible manufactures. As such, claim 17 is directed to statutory subject matter.”

Ex parte Mazzara“Appellant’s use of ‘computer usable medium’

instead of the more commonly used term, ‘computer readable medium,’ does not change our analysis. While the term ‘usable’ is broader than ‘readable,’ this distinction does not affect our analysis regarding whether the claim as a whole recites statutory subject matter under § 101. Further, the Examiner has not explained why the former expression of claim 17 should be interpreted any differently than the latter expression.”

New Grounds of Rejection Under 37 CFR 41.50(b) are discretionary

1. A computer-based interactive medical training system comprising

a case study presented in a computerized display in a virtual patient chart format for a patient exhibiting a given medical condition,

wherein the virtual patient chart format simulates realistic aspects of a patient chart of medical records.

New Grounds of Rejection Under 37 CFR 41.50(b) are discretionary

A method of providing customized billing services, comprising the steps of:providing a plurality of software objects…;configuring a subset of the software objects…;repetitively invoking the software objects of the subset, and any software objects that they access or create, until all of the objects have completed the data acquisition and processing actions required to generate the customized bill content; andproducing a bill by formatting the customized bill content for the particular bill recipient.

Bilski?A digital watermarking method comprising:embedding a digital watermark in a media signal, the digital watermark being designed to be lost or to degrade upon at least one form of signal processing;determining a metric for the embedded digital watermark, the metric comprising a benchmark for the embedded digital watermark;embedding the metric in the media signal; andembedding data in the media signal, the data indicating how the metric was determined.

Bilski issuesThe Board is now remanding pending appeals that are seen to have a Bilski issue to the examiner for a Bilski analysis.

Hot Topics Before the BPAI

William F. SmithOf CounselWoodcock Washburn LLP 1180 Peachtree Street, NE, Suite 1800 Atlanta, GA 30309-3531Phone:  404.256.6691 Fax: 404.459.5734 Email: wsmith@woodcock.comwww.woodcock.com