Recent PTAB Decisions Provide a Roadmap for Combating Broadest “Unreasonable” Interpretation

By Kim Jordahl
November 14, 2019

“Of the 24 appeals in October in which the PTAB reversed the examiner, several comments, supported by case law, will be useful to those laboring against ‘broadest reasonable interpretations’ that are, in fact, not reasonable.”

https://depositphotos.com/77358180/stock-photo-city-map-with-pin-pointers.htmlAs I have previously reported on KSJ Law, the Patent Trial and Appeal Board (PTAB) issued 80 decisions on appeals in October, and reversed the examiner in 24 of those. Claim construction was at issue in several, and the PTAB made several comments, supported by case law, that will be useful to those laboring against “broadest reasonable interpretations” that are, in fact, not reasonable.

Comparison Required

A good starting place for an argument that the examiner has failed to establish a prima facie case of obviousness is provided in Ex parte Pflueger, Appeal 2018-008802 in USSN 14/411,000, decided October 25, 2019 Ex parte Pflueger. In Pflueger, the claims at issue were directed to a battery having two cells in separate housings, the housings being force-fitted “in an interlocking manner to mechanically connect the two cells together.” The examiner and Appellant disagreed over the examiner’s construction of the claim term “force-fit,” and thus, whether the prior art taught such a force-fitting. The Board agreed with Appellant and held “The question of the obviousness of the subject matter of a claim requires comparison of the properly construed claims to the available prior art.”  Citing Oakley, Inc. v. Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003), emphasis added.

No Assumptions Allowed

The claims at issue in Ex parte Patton, Appeal No. 2018-000461 in USSN 13/590,892, decided October 10, 2019 Ex parte Patton, were directed to a fluid filled chamber for a shoe midsole, having a first fold with first and second portions joined at a first junction. The examiner rejected first and second portions, as well as the recitation of “first junction” as unclear and based on this indefiniteness analysis provided the following conclusion of obviousness: “[t]he terms are interpreted as arbitrary features with respect to the claimed invention, and Marvin et al. is viewed as meeting these limitations until further clarification is provided by the Applicant.”  The Board disagreed, stated that the Appellant had provided definitions with support in the figures for the disputed terms and found the examiner’s constructions to be strained. The Board further found fault with the examiner for not explaining why Appellant’s proffered definitions were faulty or misleading, and held: “The legal error in the examiner’s position, that the “terms are [properly] interpreted as arbitrary features with respect to the claimed invention”, was explained long ago by the predecessor to our reviewing court: “We think the examiner and the board were wrong in relying on what at best are speculative assumptions as to the meaning of the claims and basing a rejection under 35 U.S.C. 103 thereon.” Citing In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).

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No Adequate Explanation

Ex parte Cooper, Appeal No. 2018-005477 USSN 13/934256, decided October 7, 2019 Ex parte Cooper was an appeal of a final rejection of claims directed to a method of making a vacuum insulating glass window unit, one step of the method being focusing near infrared inclusive radiation via a parabolic mirror, onto a frit so as to partially melt it. The examiner applied a piece of prior art that disclosed a curved reflector that was not identified as being parabolic. The Board held: “Here we are persuaded by Appellant’s argument that not all curves are parabolas or parabolic. Rather, only certain curves appear to meet the geometric requirements of this art-recognized term in its ordinary usage and that understanding is consistent with how the term is used in the present disclosure. Because the Examiner fails to adequately explain how [the prior art’s] curved element meets such geometric requirements, or how modifying [the prior art’s] curved element to be parabolic would have been obvious, the obviousness conclusion is not factually supported and cannot be sustained.” Citing In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not…resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the cited references.”)

Adequate Weight

And finally, in Ex parte Yan, Appeal 2018-006228 USSN 14/705430, decided October 22, 2019 Ex parte Yan, the Board summarized the appeal as follows: “Resolution of this appeal depends on the interpretation of the relations required by the claim between three elements, namely, the ‘edge coupling ring,’ ‘the lifting ring,’ and the ‘at least one plate,’ recited in the claim. The examiner argued that “in the combination the bottom surface of the edge ring can be considered to be supported by the upper surface of the at least one place (note that the claim does not require them to be contacting).” After noting that “Claim 1 is not a model of clarity and precision,” the Board nonetheless reversed the examiner, stating:  “The examiner’s interpretation has a certain appeal of audacity, bearing in mind that the foundation of a house can reasonably be considered to ‘support’ every part of the house above it, including the roof.” Citing Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005), the Board held that the examiner’s interpretation did not give adequate weight to the terms “bottom surface” and “upper surface” and held that a construction that gave weight to every claim term was to be preferred.

A Roadmap for the Weary

Taken together, these recent decisions provide a road map for first arguing against a broadest reasonable interpretation that is overly broad and unreasonable, thereby supporting the conclusion that a prima facie case against the properly construed claims has not been made.

Let’s all hope that the “appeal of audacity” never wins.

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The Author

Kim Jordahl

Kim Jordahl has extensive experience in portfolio management and IP strategy, as well as in the preparation and prosecution of patent applications in the United States and internationally. She has conducted numerous freedom to operate searches and invalidity searches and counseled her clients in light of the same. Recognized as exceptional by her peers and colleagues, Kim has been named Rising Star in Intellectual Property, Top 40 under 40, and SuperLawyer in Minnesota Law and Politics. Kim is active in local and national bar associations and participates in local pro bono efforts.

For more information or to contact Kim, please visit her Firm Profile Page.

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Discuss this

There are currently 12 Comments comments. Join the discussion.

  1. Jam November 14, 2019 3:08 pm

    Each of these examples are to mechanical applications, which are generally a bit more cut and dry being concrete and tangible. More interesting would be a computer software related case, which tend to bring out the PTAB and CAFC’s biases against modern technology.

  2. Pro Say November 14, 2019 7:16 pm

    Excellent article and analysis Kim — a keeper for future apps.

    That said; and though computer software related inventions are indeed concrete and tangible (despite what the courts often maintain); I had the same thought as Jam @ 1.

  3. Lost In Norway November 15, 2019 5:30 am

    Thank you for this article. I am about to go to PTAB in a mechanical case where we believe that the Examiner overstepped a common meaning of what a viscous liquid is. These give me a little hope.

  4. Kip doyle November 15, 2019 7:00 am

    Thanks for this article. I try my best to follow but as an indie inventor with a simple invention and a real fear of words like PTAB and IPR i simple continue to thread needles and not pound on every “whack a mole” door of infringers at the same time for fear they all turn on me and ipr me for MY OWN INVENTION and MY OWN IP. To me thats obviousness the rest of this feels like semantics and yea its wearying for us small inventors.

  5. Daniel Hanson November 15, 2019 8:51 am

    “Broadest reasonable construction” and “broadest reasonable interpretation” are shorthand references for the standard. The standard reviewed by the Supreme Court in Cuozzo was: “broadest reasonable construction in light of the specification of the patent in which it appears.”

  6. TFCFM November 15, 2019 1:16 pm

    LiN: “I am about to go to PTAB in a mechanical case where we believe that the Examiner overstepped a common meaning of what a viscous liquid is.

    I’ll bite (mostly because I believe there may be a lesson for all): What is a “viscous liquid,” beyond what the specification says it is?

    (To save us one round, I’ll volunteer now:
    – “Doesn’t every liquid have a viscosity?”
    and
    – “What, beyond what the specification says, is the boundary between a ‘viscous’ liquid and liquids that aren’t ‘viscous’?)

  7. MaxDrei November 15, 2019 2:29 pm

    TFCFM: Exactly the same thoughts occurred to me. More than 40 years ago, in my first few weeks in a patent attorney firm, my trainer gave me a tutorial about the inadvisability of reliance on adjectives in claims. The word “viscous” for liquids is a bit like “resilient” for solids. Even a diamond is “resilient” to a certain extent. What slid is not resilient? What liquid is not viscous? What point is there then, in qualifying the “liquid” of the claim as one that is “viscous”?

    I am in Europe. It is a matter of regret, that in the USA qualification for would-be patent attorneys is not dependent upon competence in drafting claims.

    That said, of course, many “interpretations” by Examiners of the USPTO are “unreasonable”.

    But that’s the whole point. The purpose of making such objections is to draw out of Applicant a claim text that delivers a serviceably definite definition of the inventive concept, one that draws a sharp line between what is inside the claim and what is without.

  8. Anon November 15, 2019 4:59 pm

    MaxDrei @ 7,

    A relatively minor nit: An examiner who engages in unreasonable interpretations does NO ONE any favors.

    No one.

    Certainly not the applicant, and certainly not the public.

    On the other hand, interpretations that ARE reasonable AND draw out of Applicant a claim text that delivers a serviceably definite definition of the claimed invention — IF one is needed in view of prior art that is the responsibility of the examiner to locate and examine to (I will avoid the use of your “inventive concept” until you can provide a definition) — ARE beneficial to all involved.

    But is that NOT a crux of the problem, and what many — like I — have been complaining about for years now? That examination quality has been lacking and that THAT should have been the focus of Congress these many years past (as opposed to the nonsense of the AIA and its “captured” rendering of the value of patents, for example)…?

  9. MaxDrei November 16, 2019 5:31 am

    The debate here is about the line between “reasonable” and “unreasonable”. If I take a position about what a claim term means, and give reasons for my position, then my position is “reasonable” is it not? It can’t be “unreasonable” because I just finished reasoning it.

    Even taken within the context of the specification as a whole, does “viscous” adequately distinguish one liquid from another? Reasonable minds differ. Here, for example, LiN and TFCFM. And therein lies the problem. These days, people seem to have lost their capacity to debate an issue on reasonable terms. Either you agree with me, they shout, or you are self-evidently “unreasonable”.

  10. Anon November 16, 2019 8:18 am

    MaxDrei,

    Sorry but no. The fact that one may provide “reasons” does NOT de facto make any such provided reasons to be reasonable.

    For example, giving a reason to post something on a patent law blog would clearly BE unreasonable if the “reason” provided is: “because my refrigerator and stove both convinced me that the toaster was going to start a rebellion in Panama”

    Something very well can be unreasonable in the face of “reasons given.”

    As to: “ Even taken within the context of the specification as a whole, does “viscous” adequately distinguish one liquid from another? Reasonable minds differ.

    You offer “context of a specification” but without what that actual specification provides, so on its face NO conclusions can be verified. Your “example” is indeterminate and the notion of “reasonable minds may differ” cannot be reached.

    This is far less “lost capacity to debate on reasonable terms” as it is a loss of basic logic at the onset.

    To parlay this to a blog discussion, not all opinions are created equal, and informed opinions outweigh BOTH uninformed opinions and opinions suffering from unadultered bias.

  11. B November 16, 2019 1:58 pm

    Wonderful article. I wished you’d have published a week earlier. Seriously. However, I am surprised that In re Smith Int’l was not cited in any of the listed PTAB opinions.

  12. TFCFM November 19, 2019 9:51 am

    I can understand not wanting to publicly air a pending client matter (and so don’t fault LiN for not responding). Instead, I’ll simply jump to my point:

    If I’m a patent examiner considering an applicant claim that recites a “viscous liquid,” how do I consider otherwise-similar art that recites a liquid. How am I supposed to tell if the art’s liquid is a “viscous” one or not? What’s the boundary between a “viscous” liquid and one that isn’t “viscous”?

    If the specification specifies what the term means (ideally with a hard-and-fast definition), then fine – we’re good. If the meaning is disputed, I presume that isn’t the case. In the absence of some meaningful identification of the boundary in the specification (or some recognized special meaning for the term in the relevant field), I think a patent examiner would understandably find the term difficult to interpret.

    Ditto for a PTAB board member (e.g., in a PGR) or a court attempting to interpret the claim, either for infringement or validity purposes.

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