[MPEP 2144.05] Obviousness of ranges

https://mpep.uspto.gov/RDMS/MPEP/print?version=E8r8&href=d0e211255.html

https://www.oblon.com/news/not-always-obvious-to-optimize-claimed-variables

A recent BPAI decision in Ex parte Collison (Appeal 2010-002734, in application serial no. 11/284,178, decision issued February 29, 2012) illustrates deficiencies to look for when evaluating an obviousness rejection supported by an optimization rational.

Non-Technical Description of the Patented Invention

All non-technical descriptions of the patents herein are presented to give a general background of those inventions. Such statements are not intended to be used, nor should be used, for purposes of patent claim interpretation. [Complainants] present these statements subject to, and without waiver of, their right to argue that claim terms should be construed in a particular way, as contemplated by claim interpretation jurisprudence and the relevant evidence.

[103] Graham factors & KSR

MPEP 2141

Graham (1966)

• (A) Determining the scope and content of the prior art;
• (B) Ascertaining the differences between the claimed invention and the prior art; and
• (C) Resolving the level of ordinary skill in the pertinent art.

Once the Graham factual inquiries are resolved, Office personnel must determine whether the claimed invention would have been obvious to one of ordinary skill in the art.

KSR
The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:

• (A) Combining prior art elements according to known methods to yield predictable results;
• (B) Simple substitution of one known element for another to obtain predictable results;
• (C) Use of known technique to improve similar devices (methods, or products) in the same way;
• (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
• (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
• (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
• (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

[IPR] Standard - Preponderance of the evidence (different from the clear and convincing standard in district courts)

35 U.S.C. 316 (e) states that the PTAB determined that a petitioner in an inter partes review proves unpatentability by a preponderance of the evidence (, which is different from the standard used in the district courts).

What's the impact of this difference? In Novartis AG v. Noven Pharm. Inc., 853 F.3d 1289 (Fed. Cir., 2017), the Federal Circuit disagreed with the patent owner's arguments that its patent should not be invalidated by the PTAB because the same patent was not invalidated by the district court.

The Federal Circuit cited the Supreme Court's Cuozzo Speed Techs., LLC v. Lee, ___ U.S. ___, 136 S.Ct. 2131, 2146, 195 L.Ed.2d 423 (2016):

[a] district court may find a patent claim to be valid, and the [USPTO] may later cancel that claim in its own review.... This possibility, however, has long been present in our patent system, which provides different tracks — one in the [USPTO] and one in the courts — for the review and adjudication of patent claims. As we have explained ..., inter partes review imposes a different burden of proof on the challenger. These different evidentiary burdens mean that the possibility of inconsistent results is inherent to Congress'[s] regulatory design.

Then, the Federal Circuit held that the prior decisions were not controlling on the PTAB.

Schulhauser issue - Method claims (two conditions) under BRI

MPEP § 2111.04(II) explains:

The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B.

The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The system claim interpretation differs from a method claim interpretation because the claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed.

See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential) for an analysis of contingent claim limitations in the context of both method claims and system claims. In Schulhauser, both method claims and system claims recited the same contingent step. When analyzing the claimed method as a whole, the PTAB determined that giving the claim its broadest reasonable interpretation, “[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed” (quotation omitted). Schulhauser at 10. When analyzing the claimed system as a whole, the PTAB determined that “[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur.” Schulhauser at 14. Therefore "[t]he Examiner did not need to present evidence of the obviousness of the [ ] method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met);" however to render the claimed system obvious, the prior art must teach the structure that performs the function of the contingent step along with the other recited claim limitations. Schulhauser at 9, 14.

Understanding High Efficiency Video Coding (HEVC) - Resources

"High Efficiency Video Coding (HEVC) is a video compression standard developed jointly by ITU-T VCEG and ISO/IEC MPEG through their Joint Collaborative Team on Video Coding (JCT-VC)." White paper.

https://mpeg.chiariglione.org/standards/mpeg-h/high-efficiency-video-coding

White Paper on HEVC (link)

White paper on HDR and WCG in HEVC

Wiki Definition

PPT

August 2019 - Virginia CLE online class - PTAB-Structure, Decision Making, and Ex Parte and Inter Partes Proceedings

Today, I just listened to the CLE online class presented by an attorney from Stern and a PTAB judge.

Hon. James T. (Jay) Moore, U.S. Patent Trial and Appeal Board / Alexandria

Jason D. Eisenberg, Sterne, Kessler, Goldstein & Fox PLLC / Washington, DC

Dynamic Drinkware issue

https://patentlyo.com/patent/2019/06/solicitor-provisional-applications.html

MPEP § 2136.03(III) says:

In addition, the reference date under pre-AIA 35 U.S.C. 102(e) of a U.S. patent may be the filing date of a relied upon provisional application only if at least one of the claims in the patent is supported by the written description of the provisional application in compliance with pre-AIA 35 U.S.C. 112, first paragraph. See Dynamic Drinkware, LLC, v. National Graphics, Inc., 800 F.3d 1375, 116 USPQ2d 1045 (Fed. Cir. 2015).

Dae-Gunn Jei.

Dae-Gunn Jei

Professional Experience

Dae-Gunn Jei focuses his practice on patent prosecution, procurement and litigation in the electrical and mechanical arts.

Dae-Gunn began his patent career at Samsung Electronics in Korea where he spent more than eight years working as a mobile telecommunications engineer and subsequently as an IP manager for patent matters related to Samsung’s telecommunications and network businesses. His patent experience at Samsung included negotiations prior to litigation, U.S. and European litigation, procurement of patents, patent prosecution and standard-setting activities regarding wireless communication technologies.

He also has experience working in the IP practice of an AmLaw 100 law firm and was previously a research fellow at the American Antitrust Institute, an independent nonprofit education, research and advocacy organization.

He earned his undergraduate and master’s degrees in electrical communication engineering and is fluent in Korean.

Professional Activities

American Bar association

American Intellectual Property Law Association

Bar and Court Admissions

District of Columbia

Virginia

U.S. Patent and Trademark Office

Flow chart, diagram

https://www.websequencediagrams.com/

https://www.draw.io/

English verbs

http://www.uefap.com/accuracy/proof/verbexs.htm

So educational.

[802.11] PS-Polling (Power Save Polling)

http://www.summitdata.com/Documents/Glossary/knowledge_center_p.html#psp

.

Database Journal

https://www.databasejournal.com

Ex. MS Access.


https://www.databasejournal.com/features/msaccess/article.php/3077791/Delete-Duplicate-Records-From-Access-Tables.htm

At least one of .... or

http://www.adamsdrafting.com/at-least-one-of-x-and-y-superguide-corp/

802.11

http://www.wirelesscommunication.nl/reference/chaptr01/wrlslans/80211_page2.htm

[Book] Principle of Semiconductor Devices (and others)

https://ecee.colorado.edu/~bart/book/book/chapter2/ch2_1.htm


http://www.electronics-tutorials.ws/

https://www.youtube.com/watch?v=Bine_PbyFSQ

Ensnarement Defense - Jang v. Boston Scientific Corp

https://dlbjbjzgnk95t.cloudfront.net/0976000/976807/16-1275.opinion.9-27-2017.1.pdf

""  Law360

[Paper] Putting Yourself in the Shoes of a Patent Examiner

http://repository.jmls.edu/ripl/vol17/iss1/2/

The USPTO examiner's "count" system is explained.

How to respond 103 (obviousness) rejections.

Base your argument on the claim language.
•Demonstrate how the prior art does not satisfy the claim language:
-Elements missing from the prior art;
-No reason for the combination of references;
-No reasonable expectation of success in the combination - why?
-Avoid paraphrasing;
-Avoid “lumping” arguments.
Do not argue anything that is not in the claims.
•Consider an Examiner Interview instead.

Festo (535 U.S. 722 (2002)) - PHE for narrowing amendments

Supreme Court: a patentee's decision to narrow claims through amendment in order to comply with the Patent Act automatically assumes surrender of the territory between the original claim and the amended claim.
•a presumption of surrendering all equivalents for the particular claim limitation that was narrowed by the amendment.
•Burden is on the applicant as to showing what equivalents were not surrendered.

Patentee can overcome surrender if the equivalent was “unforseeable” at the time of the application.