Thursday, May 30, 2013

Appellant loses mass spec case on analysis of drilling fluid

from Ex parte ANNIE AUDIBERT

The issue in the case:

Did the Examiner reversibly err in concluding the claimed invention, in
particular controlling drilling based on the C13/C12 ratio measured from
continuously extracted constituents from continuously sampled drilling fluid,
would have been obvious over the combination of Aquilina, Bond, and Delaune?

We answer this question in the negative and affirm the Examiner’s decision
to reject claims 8-15 for the reasons expressed in the Answer.

Keller is cited:

Initially, we reiterate that one
cannot show nonobviousness by attacking references individually when the
rejection is based on a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Each reference cited by the Examiner must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). All of the features of the
secondary reference need not be bodily incorporated into the primary reference
(see Keller, 642 F.2d at 425) and the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of independent judgment
(see Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889
(Fed. Cir. 1984)).

KSR is cited:

In that regard, combining Bond’s isotopic C13/C12 data analysis from
drilling fluid samples with Delaune’s continuous drilling fluid sampling and
constituent analysis process, especially taken with Aquilina’s teaching that
continuous monitoring during drilling was conventional in the oil industry, appears
to yield, predictably, the claimed method of analysis and measurement of
constituents carried by a well fluid during drilling operations. KSR Int’l Co. v.
Teleflex Inc., 127 S.Ct. 1727, 1739 (2007) (“The combination of familiar elements
according to known methods is likely to be obvious when it does no more than
yield predictable results.”).

Also cited as to obviousness:

Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Contractors USA, Inc., 617 F.3d 1296, 1304 (Fed. Cir. 2010); In re Sovish,
769 F.2d 738, 742 (Fed. Cir. 1985). No evidence of secondary considerations to
overcome the prima facie case of obviousness has been submitted.

Of the risks of not making an argument:

Appellants do not
separately argue the patentability of independent method claims 8 and 13, or of
their dependent claims, or independent apparatus claim 12. Therefore, all the
claims stand or fall with independent method claim 8. See 37 C.F.R.
§ 41.37(c)(1)(vii); Hyatt v. Dudas, 551 F.3d 1307, 1311-14 (Fed. Cir. 2008). In
any case, the lack of a separate argument constitutes a waiver of such argument,
Hyatt v. Dudas, 551 F.3d 1307, 1311-13 (Fed. Cir. 2008), because an argument
never made cannot establish prejudicial error.

Wednesday, May 29, 2013

PTAB decision in re-exam 95/001,028; 37 CFR 41.77(b)

The final result in the re-exam of US 6,991,298:

the previous decision is modified in that the rejections of claims 1-9,
11-15 are overcome;
claims 17-30, 44-53, 58, and 101-114 are rejected under 35 U.S.C.
§ 112, first paragraph, and denominated as a new grounds of rejection
pursuant to 37 C.F.R. § 41.77(b);
claims 87-90, 93, and 95-100 would have been obvious over the
combination of Sargent and Olson; and
claims 31-43, 54-57, 59-86, 91, 92, and 94 are not rejected.


This is a decision under 37 C.F.R. § 41.77(f). On January 28, 2011,
we affirmed-in-part the Examiner‟s decision to reject claims 1-9 and 13-15
on various grounds. (Decision on Appeal, Appeal No. 2011-000454, mailed
January 28, 2011, hereinafter, “Decision” at 2, 17.) However, because our
rationale differed from that of the Examiner, we designated our affirmance
as a new ground of rejection under 37 C.F.R. § 41.77(b).

No chlorine in terephthalic acid

From the story titled Feds probe cause of freight train-garbage truck collision

Nick Materer, an Oklahoma State University chemist, said sodium chlorate, when combined with fuel, makes a more volatile mixture. "When you mix them together and add fire, they go boom," he said in a phone interview.

Materer said the chemical is usually shipped as a white powder but it can also be in a liquid solution. Either way, he said, the fumes can irritate the lungs if inhaled.

Exactly what triggered the explosion was being investigated, and Hohman said firefighters told residents of about 70 nearby homes that they could leave if they wanted to and shelter would be provided.

While one of the cars still burning late Tuesday was carrying terephthalic acid, the substance used in making plastics, another was carrying fluoroacetic acid, Hohman said. Although county officials played down the health risks posed by the burning rail cars, the National Institutes of Health website describes fluoroacetic acid as an "extremely toxic" constituent of many poisonous plants that is used to make products that kill rodents. It produces poisonous gases when burned, according to the NIH.

Materer said the gases contain chlorinated organics. He was less familiar with terephthalic acid but said it, too, contains chlorine.

IPBiz notes that terephthalic acid has chemical formula C6H4(COOH)2 and contains no chlorine.
Fluoroacetic acid has formula CH2FCOOH and contains no chlorine.

Charles Heidelberger did work on the biochemistry of fluoroacetic acid although he is better known for his work on fluorouracil [wikipedia: 5-FU was designed, synthesized and patented by Charles Heidelberger in 1957 ]

Tuesday, May 28, 2013

More review in Apple / Samsung smartphone case at ITC

Note post Apple Patent Case Against Samsung to Get More ITC Review
which states that the ITC is reviewing the determination by Judge Thomas Pender that three of the four patents were infringed.

Appellant loses on written description in Ex parte Gillis

From Ex parte Gillis

As to written description:

“[T]he written description requirement does not demand either
examples or an actual reduction to practice; a constructive reduction to
practice that in a definite way identifies the claimed invention can satisfy the
written description requirement” Ariad Pharmaceuticals, Inc. v. Eli Lilly and
Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010).

“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure, … or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement” Id. (citations omitted). (...)

“When no
such description can be found in the specification, the only thing the PTO
can reasonably be expected to do is to point out its nonexistence.” Hyatt v.
Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007).

Bottom line: The evidence of record supports the Examiner‟s conclusion that the
term “separate source” represents new matter.

Ex parte Sanders: argument in reply brief is too late

from Ex parte Sanders

Appellant contends that Figure 1 of Roth fails to disclose a database
engine that “applies the IDD to the document to generate a set of index keys
for the document.” Reply Br. 5. Appellant presents this argument for the
first time in the Reply Brief. Appellant’s new argument is untimely and has
not been considered. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative)
We sustain the rejection of claim 1 under 35 U.S.C. § 102. Appellant
has not presented arguments for separate patentability of claims 2, 3, 5-12,
and 14-22, which fall with claim 1.

Ex parte Wilcox: provisional application filing defeats the applied prior art

Ex parte Wilcox illustrates the benefits of filing a provisional application which satsifies 35 USC 112.

Yes, New Railhead, 298 F.3d 1290, is cited.

Appellant wins reversal of written description and obviousness rejections in Ex parte VAGHEFI

From Ex parte VAGHEFI

Of written description and genus/species:

In particular, Appellants contend that the written description
requirement for a claimed genus may be satisfied through sufficient
description of a representative number of species. Appellants cite to MPEP §
2163.05(b) for the proposition that a “representative number of species”
means that the species which are adequately described are representative of
the entire genus. Appellants contend that even where there is substantial
variation within the genus, disclosure of a sufficient variety of species that
reflect the variation within the genus would properly satisfy the written
description requirement for broadening the scope of the claims.

Of the details:

The Examiner finds that the disclosure of specific species of opioid
agonist supports the explicitly-disclosed compounds, but does not support
disclosure of the genus of opioid agonists. (Ans. 5.) The Examiner does not
reply to Appellants implied query (App. Br. 13) regarding how many species
must be disclosed to comprise a “representative number.”
Appellants contend that a “disclosure of a functional recitation of
known compounds in the specification may be sufficient as adequate
description for such compounds.” (App. Br. 13)(citing In re Herschler, 591
F.2d 693, 697 (CCPA 1979)). Appellants further contend that the Courts, in
certain circumstances, have held that disclosure of a single species supports
a genus claim. Appellants contend that in Smythe, the disclosure of a single
species, air, which was inert to a liquid, was sufficient to support a claim to
the genus “‟inert fluid media‟” because the description of the properties and
functions of the air or other gas would suggest to a person skilled in the art
that appellant‟s invention includes the use of “‟inert fluid‟” broadly. (App.
Br. 13)(citing In re Smythe, 480 F.2d 1376, 1383 (CCPA 1973)).

Bottom line:

We agree with Appellants that the disclosure of 68 species of
“pharmaceutically acceptable opiates and opiate-based derivatives that are
suitable for use as a therapeutically effective analgesic” (App. Br. 18; Spec.
7) is a “representative number of species” to suggest the genus “opioid
agonist” to the skilled pharmaceutical formulator.

Of negative limitations:

We agree with Appellants that the original disclosure in the
Specification p. 3, ll. 8-10 would reasonably support the negative limitation,
“wherein the composition does not include an antagonist of the water soluble
compound capable of abuse” in claim 1. We find that one having ordinary
skill in the pertinent art would recognize from the disclosure page 3 that
Appellants invented compositions including that limitation.

As to obviousness:

The burden is on the Examiner to set forth a prima facie case of
unpatentability. See In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002).
We do not find that the Examiner‟s evidence, Cain, is sufficient to support a
prima facie case of obviousness. “[O]bviousness requires a suggestion of all
limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
In particular, we do not find that the Examiner has provided evidence in the
prior art wherein each of a plurality of microspheres is wetted with a coating
of the water insoluble matrix material, as claimed.

Patentee loses in re-examination 95/001,362

On the use of "unexpected results" to rebut obviousness:

Whether an invention has produced unexpected results is a question of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). "[T]here is no
hard-and-fast rule for determining whether evidence of unexpected results is
sufficient to rebut a prima facie case of obviousness." Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re
Dillon, 919 F.2d 688, 692-93 (Fed.Cir.1990) ("[e]ach situation must be
considered on its own facts."). However, a party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). "[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Moreover, "when an inventor tries to distinguish his claims from the prior
art by introducing evidence of unexpected 'synergistic' properties, the
evidence should at least demonstrate 'an effect greater than the sum of the
several effects taken separately.'" Merck & Co., Inc. v. Biocraft Lab., Inc.,
874 F.2d 804, 808 (Fed. Cir. 1989).

Here, the PTAB notes of appellant's arguments on unexpected results:

The Examiner disagrees and finds the test evidence to be unclear and
insufficient to establish unexpected results (RAN 47-48). The Examiner
states that "[w]here the unexpected properties of a claimed invention are not
shown to have significance equal to or greater that [sic] the expected
properties, the evidence of unexpected properties may not be sufficient to
rebut the evidence of obviousness." (RAN 43). Having considered the
evidence and the arguments of the Patent Owner, we agree with the
Examiner that the Patent Owner has not demonstrated unexpected results.

The declarant and the evidence do not adequately establish that one of
ordinary skill in the art would expect interaction between a heat exchanger
and the bypass that would result in increasing the condensing pressure which
would dissuade one of ordinary skill in the art from providing both features
for their known benefits. It is unclear why the benefits of the bypass
recognized in the art (FF 3B, 4B, 5B, 7C) would teach or otherwise lead one
of ordinary skill to exclude pre-cooling the air by a heat exchanger, or viseversa.
The declarant does not persuasively establish that such provision of a
heat exchanger would be expected by those in the art to nullify the benefits
of a bypass recognized in the art, and vice-versa, so as to dissuade one in the
art from providing both features in a dehumidifier.(...)
The above tests and results described by the declarant clearly do
establish the performance and efficiency benefits of providing bypass in a
dehumidifier that includes a heat exchanger. However, such evidence fails
to establish that the observed benefits are "unexpected."
As discussed supra,
the prior art already establishes benefits associated with providing a bypass
in a dehumidifier (FF 3A-7C). The evidence does not establish what
performance gains would have been expected by one of ordinary skill in the
art from implementing a bypass in a dehumidifier with a heat exchanger. (...)
The Patent Owner has the burden of proving that the results are unexpected,
not merely that the results differ from the prior art.
In re Geisler, 116 F.3d at 1469-70; In re Klosak, 455 F.2d at 1080.(...)
The Patent Owner asserts that the Examiner erred by requiring the
Patent Owner to construct a hypothetical model for testing (Reb. Br. 5).
However, neither the Examiner nor the Board requires such construction,
and the Patent Owner misses the point. The Patent Owner is free to submit
evidence it deems appropriate in support of its assertions of unexpected
results. However, not all evidence is of the same quality and probative
value, and ultimately, it is the Patent Owner that has the burden of proving
unexpected results. In re Geisler, 116 F.3d 1469-70.

Of the issue of attacking references separately:

The Patent Owner also asserts that the rejections based principally on
Orion or APA should be reversed because the combinations do not
"demonstrate" that the fourth segment is perpendicular to the second heat
exchange path, and merges with the fourth subsegment downstream of the
second heat exchange path (App. Br. 23-24). However, this argument is
unpersuasive in that it attacks the references separately, and does not take
into account what the collective teachings of the prior art Lewis, Miyoshi,
Adachi or Wetzler would have suggested to one of ordinary skill in the art in
the context of implementing a bypass which provides ambient air via a
parallel flow to the condenser while bypassing the evaporator. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981); In re Merck, 800 F.2d 1091, 1097
(Fed. Cir. 1986). We agree with the Examiner that such recited flows would
have been obvious to one of ordinary skill in the art when the prior art
dehumidifiers of Orion or APA, which include heat exchangers, are
modified to include a bypass.

The examiner was affirmed.

Appellant prevails at PTAB in Ex parte Li

See Ex parte Li wherein a rejection under 102(e) was reversed.

AHG wins at CAFC: a best mode case

from AHG v. Broetje

Plaintiffs Ateliers de la Haute-Garonne and F2C2
Systems S.A.S. (collectively “AHG”) filed suit against
defendants Broetje Automation USA Inc. and Brötje
Automation GmbH (collectively “Broetje”), asserting
counts of patent infringement, trade dress infringement,
unfair competition, and intentional interference with
prospective economic advantage. Ateliers de la Haute-
Garonne is a French company whose employees include
Jean-Marc Auriol and Philippe Bornes, the inventors of
the patents in suit.

AHG appeals the judgment of invalidity on best mode
grounds. Broetje cross-appeals, stating that the patent
was abandoned. We reverse the judgment of invalidity,
affirm that the patent was not abandoned, and remand
for determination of the remaining issues.

Sunday, May 26, 2013

Sunday Morning for May 26, 2013

Charles Osgood introduced the stories for the Sunday of Memorial Day Weekend, May 26, 2013. We mark Memorial Day this weekend, with a two fold meaning: remembering and noting the unofficial start of summer.

The cover story is “Call of the Wild” by Serena Alschul. The Magee Marsh Boardwalk in northwestern Ohio. What’s in your backyard (birdwise)?
Second, Lee Cowan on “Time to Remember.” Photos from Vietnam.
Life is what happens when you are making other plans.
John Blackstone interviews David Copperfield.
Mo Rocca on “In the Swim,” swimming suits in style.
Anna Warner on World War II. Anthony Mason on Vampire Weekend. Steve Hartman.
News. Floods near San Antonio. 15 inches of rain. Obama in Moore, OK. Stabbing of French soldier in Paris (connection to London stabbing?). 97th running of Indy 500. In Boston, 3000 runners do final mile of Marathon. Forecast: cool but clear in the east. Monday warmer but wetter.

Serena Alschul reports the cover story “Call of the Wall.” Magee Marsh Boardwalk near Toledo, Ohio. Kim Coffman on the biggest week in American birding in May. Each year crowds flock to Ohio. Northern Bobwhite population is down 82%. There are about 47 million birders. Richard Crosly, British photographer, says birding is not big in the US compared to Europe. Mary Gray Bird Sanctuary in Indiana. May 3-5, 2013. Alexandra Forsyth found 60 different species of birds. Purple Finch, Indigo Bunting.
Oven Bird, Hooded Warblers. Major Randall Rogers. “Warbler Neck.” We flock together. Brian Kimberling in Yellow Wood State Forest. Drew Lanham: discovering the unknown. Canoe trip down Green Creek. Tom Cashmere. Kim Coffman: we want to focus on people; supporting habitat conversation.

Almanac. May 26, 1978. Atlantic City starts gambling. Diving horses at Steel Pier.
Miss America in 1921. LBJ nominated in 1964 in Atlantic City. By 1988, a dozen casinos opened. Last year, 7th straight year of declining revenues in Atlantic City. Miss America coming back after 8 years in Las Vegas.

1942 Ford Seep (sea going jeep). Anna Werner at WWII Museum in New Orleans. B-17 Bomber. 10,000 artifacts. Staff Sergeant Tom Blakey. Has logged 13,000 hours as a volunteer. Blackey is called “The Living Artifact.” Tom was with 82nd Airborne. Morning of June 6, 1944. I/505. Kept Germans from going over bridge to Utah Beach. Story of first man Blakey shot and killed. This man haunted Blakey. Blakey was angry for decades. Museum in New Orleans opened in 2000. One Wednesday morning, after four months at museum, Blakey noticed he did not see image of first man he killed. [Side note: By 2036, it is estimated there will be no living veterans of WWII.]

Song “Holiday” by band Vampire Weekend. Anthony Mason notes the band has a history of not being what they seem. Currently Vampire Weekend is number one album.
They met as undergrads at Columbia University. Alpha Delta Phi fraternity house. Film by Koenig gave name of band. Provocative preppy veneer. In 2008, Spin Magazine picked them for cover. Internet music culture. Putrescent stench of old money. Almost made preppiness radical. Koenig grew up in New Jersey. Modern Vampires of the City.

Osgood talked about the tornado in Moore, OK to introduce story by Steve Hartman about the Brown Brothers (Caleb ) and their sister Courtney. [Recycled from CBS Evening News.]

Winter is supposedly long gone. Mo Rocca on the treacherous waters of beachwear Valerie Steele of museum at Fashion Institute of Technology. By 1920’s a suntan was a status symbol. First bikinis in 1940s. Exposure of the belly button. Model “Amos.” Parke & Ronen. For men, show a little leg.

Soldiers returned from war want to forget experiences. Charlie Hoy in woodworking shop in Portland, Oregon. Lee Cowan interviews Hoy, who went to Viet Nam in 1967.
“This is a moral job.” Give guys in the field coverage. Battalion photographer. He had taken almost 2000 pictures during his tour. He put pictures in a shoe box. Places in my brain that I walled off. Chris Regenstein. Coping with war. Celebrating the guys in the pictures.

David Copperfield interviewed in Sunday Profile by John Blackstone. Now at MGM Grand. Most tickets worldwide by a solo performer. Now, he does 15 shows per week.
It’s a secret, not a trick. Trick belittles it. There’s a method behind it. “Now you see me.” Four magicians pull off a huge heist. Robert Houdan. International Museum and Library of the Conjuring Arts. David Piava. Thurston. Harry Blackstone of the 1930’s. Korby’s was the shop his father owned. Koffman of Metuchen, NJ. Statue of Liberty.
Great Wall of China. In 2006, he bought a string of islands in the Bahamas. Chloe Goslin.

Bill Flanagan of MTV. “No problem.” As “ you’re welcome.” Public service announcement: if you want to get good tips, only say “no problem” if task might be problematic. Graceful way of telling people you have gone out of your way to help.
Hold off on using “no problem” until all people born before 1980 are dead.

Sneak preview of summer. 31.2 million Americans driving on Memorial Day. 2.5 million flying. 11 million children attending camps. 309,000 public pools 5,426,000 million private pools. 150 million hotdogs consumed on July 4. 5.5 million gallons of ice cream. Vanilla number one flavor.

Week ahead. Monday Memorial Day. 3pm local time. Tuesday. Soyuz 35 rocket. Wed. 60th anniversary of Mt. Everest. Th Oprah at Harvard. Fr. Joseph Grimaldi Memorial day. Clown. Sat. start of hurricane season.

David Edelstein. Ironman. Boogerman III (made up). Star Trek 12 (into darkness, baby faced versions of old guys) Hangover III. Cynical effort to squeeze money. Fast & Furious 6. Vin Diesel. Michelle Rodriguez. Before Midnight 3 (Ethan Hawke) Triumph of naturalism. One movie around that does not seem “by the numbers.”

Next week. Lee Cowan with Adam Levene. Bette Midler on Broadway.

Moment of Nature. Volunteers of America. White Sands National Monument in New Mexico. “truly a national treasure.”

**Background information

from What Is A DUKW? :

A DUKW is an amphibious vehicle that was designed and built for use in World War II. They were originally built on the 2 1/2 ton CCKW Army truck sometimes called a "duce and an half". Now they are used mostly for commercial tours and adventure type rides on land and water. There are also some private collectors who keep and use them for their own use.

DUKWS are street legal to drive on the roads and are also legal to drive on water as recreational boats.

If a dukw is used for commercial "duck tours" depending on which waterways it is used on, the dukw may have to meet the commercial U.S. Coast Guard requirements for tour boats. We can provide those services.

There was also a smaller version of the dukw which was actually an amphibious Jeep called a GPA or Seep. Seep was a term used meaning sea going Jeep.

Supplemental information:

from wikipedia: The band consists of four members: lead vocalist and guitarist Ezra Koenig, guitarist/keyboardist and backing vocalist Rostam Batmanglij, drummer and percussionist Chris Tomson, and bassist and backing vocalist Chris Baio.

Thursday, May 23, 2013

CAFC in Douglas vs. Buyers, handling injunctions between non-direct competitors : the image of a Ford as a -- “Mercedes at half the price.”--

The case of Douglas v. Buyers involving snowplow makers,
has imagery directed to carmakers.

A summary of the events:

Douglas Dynamics, LLC (Douglas) sued Buyers Products
Co. (Buyers) for infringement of several patents
related to snowplow mounting assemblies. The United
States District Court for the Western District of Wisconsin
granted summary judgment of non-infringement of
U.S. Patent No. Re. 35,700 (’700 Patent) in favor of Buyers.
Douglas Dynamics, LLC v. Buyers Prods. Co., 747 F.
Supp. 2d 1063 (W.D. Wis. 2010). Following a jury verdict
that found U.S. Patent No. 5,353,530 (’530 Patent) and
U.S. Patent No. 6,944,978 (’978 Patent) valid and infringed,
the district court denied Douglas a permanent
injunction and assigned an ongoing royalty. Because the
district court applied an erroneous claim construction in
granting summary judgment of non-infringement of claim
45 of the ’700 Patent, this court reverses. This court also
reverses the denial of a permanent injunction against
continued infringement of the ’978 Patent, and remands
for entry of a permanent injunction consistent with this
opinion. This court also vacates the district court’s ongoing
royalty rate for the ’530 Patent and the ’978 Patent,
and remands to establish a new pre-injunction ongoing
royalty rate consistent with this opinion. Because the
‘530 patent has expired, any permanent injunction as to
this patent is now moot, and the ongoing royalty ceases to
apply after the date of expiration.

One claim of relevance:

Douglas asserted independent claims 1, 38, and 45 of
the ’700 Patent against Buyers’s SnowDogg Snowplows.
Claim 1 recites:
1. A vehicle mounted snowplow blade assembly

a vehicle having a frame member and a bumper,
a mounting frame fixed to the frame member and
located generally behind the bumper,
a snowplow blade assembly including an A-frame
and a snowplow blade fixed to the A-frame,
a lift frame supported by the A-frame, and
mounting means for selectively connecting the Aframe
to the mounting frame for pivotable movement
about a generally horizontally extending
pivot axis and for affording removal of the Aframe
and the lift frame from the mounting frame
as a unit so as to leave the mounting frame on the
vehicle and behind the bumper.

As to the law of summary judgment:

In this case, the law of the United
States Court of Appeals for the Seventh Circuit draws all
reasonable inferences in favor of the non-movant in
summary judgment cases and determines whether the
district court correctly concluded that no reasonable jury
could find in favor of the moving party. See Stoner v.
Wisconsin Dep’t of Agric., Trade & Consumer Prot., 50
F.3d 481, 484 (7th Cir. 1995).

As to an error of claim construction:

The district court erred, however, in construing the
term “connected to” in claim 45 to require a direct connection
between the A-frame and the mounting frame. The
plain language of the claim counsels against this narrow
interpretation. “[T]he words of a claim ‘are generally
given their ordinary and customary meaning’ . . . that the
term would have to a person of ordinary skill in the art in
question at the time of the invention.” Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)
(quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996)).
The ordinary meaning of “connected to” encompasses
indirect linkages. Indeed, the specification uses variations
of the term “connect” to describe indirect connections.
For example, the specification states that the
snowplow blade “is connectable to the mounting frame . . .
through an A-frame.” ’700 Patent col. 4 ll. 49–57

As to permanent injunctions:

This court reviews the denial of a permanent injunction
for an abuse of discretion. i4i Ltd. P’ship v. Microsoft
Corp., 598 F.3d 831, 861 (Fed. Cir. 2010). To be entitled
to a permanent injunction, a patentee must show: (1) it
has suffered an irreparable injury; (2) remedies available
at law are inadequate to compensate for that injury; (3)
considering the balance of hardships between the plaintiff
and defendant, a remedy in equity is warranted; and (4)
the public interest would not be disserved by a permanent
injunction. Id. (citing eBay Inc. v. MercExchange, L.L.C.,
547 U.S. 388, 391 (2006)). (...)
Simply because a patentee manages to maintain a
profit in the face of infringing competition does not automatically
rebut a case for irreparable injury. (...)
Here, the district court
likened Douglas’s snowplow to a Mercedes Benz S550 and
Buyers’s snowplow to a Ford Taurus. Id. Indeed, buyers
interested in purchasing the Mercedes, when presented
with both choices, would not likely switch to the Ford and
vice versa. However, if the Ford made its place in the
market by infringing on the intellectual property of the
Mercedes and capitalized on its similarity to the better
product, then the harm to the Mercedes product might go
beyond a simple counting of lost sales—some of which
would occur anyway if the Ford marketed itself effectively
as a “Mercedes at half the price.” The Mercedes would
lose some of its distinctiveness and market lure because
competitors could contend that they had “similar features”
without noting that those features infringe Mercedes’s
proprietary technologies.

Note the text

Furthermore, as Buyers’s
expert agreed, Douglas’s reputation would be damaged if
its dealers and distributors believed it did not enforce its
intellectual property rights. Lastly, the evidence shows
that Douglas had never licensed the infringed patents,
and intentionally chose not to, so that it could maintain
market exclusivity. Exclusivity is closely related to the
fundamental nature of patents as property rights. It is an
intangible asset that is part of a company’s reputation,
and here, Douglas’s exclusive right to make, use, and sell
the patented inventions is under attack by Buyers’s


While the general public certainly enjoys
lower prices, cheap copies of patented inventions have the
effect of inhibiting innovation and incentive. This detrimental
effect, coupled with the public’s general interest in
the judicial protection of property rights in inventive
technology, outweighs any interest the public has in
purchasing cheaper infringing products. In sum, the
public has a greater interest in acquiring new technology
through the protections provided by the Patent Act than it
has in buying “cheaper knock-offs.”

The 25% rule is mentioned:

First, the district court abused its
discretion by applying the infamous 25% rule of thumb,
which this court held in Uniloc was fundamentally
flawed. Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d
1292, 1317 (Fed. Cir. 2011).

Judge Mayer dissented:

I respectfully dissent. Because Douglas Dynamics,
LLC (“Douglas”) failed to meet the prerequisites for
injunctive relief set forth in eBay Inc. v. MercExchange,
L.L.C., 547 U.S. 388, 391 (2006), the district court properly
denied its request for a permanent injunction. The
trial court also correctly determined that the snowplow
assemblies manufactured by Buyers Products Company
(“Buyers”) do not infringe claim 45 of U.S. Reissue Patent
No. 35,700 (the “’700 patent”) because that claim requires
a direct connection between the snowplow frames. I
would affirm.

eBay is mentioned in the dissent:

eBay, however, rejected
this approach, making clear that a permanent injunction
should issue only if the traditional four-factor test for
injunctive relief is satisfied. 547 U.S. at 391. Under this
four-factor test, a litigant is entitled to a permanent
injunction only if he establishes that: (1) he has suffered
irreparable injury; (2) monetary damages are inadequate
to compensate for that injury; (3) considering the balance
of hardships between the parties, a remedy in equity is
warranted; and (4) the public interest would not be “disserved”
by the issuance of a permanent injunction. Id.

Of market share:

Given that Douglas and Buyers
are not direct competitors and Douglas was unable to
produce any credible evidence that it was likely to lose
profits or market share as a result of future sales of
Buyers’ low-end plows, the trial court was fully justified
in concluding that the failure to issue a permanent injunction
would not result in irreparable harm. See ActiveVideo
Networks, Inc. v. Verizon Commc’ns, Inc., 694
F.3d 1312, 1339 (Fed. Cir. 2012) (concluding that there
was no irreparable harm where the parties did “not share
a customer base”).

Wednesday, May 22, 2013

More plagiarism in science journals

From The Scientist:

Two journals appear to be involved in plagiarizing scientific articles that have been published elsewhere. In one case, a publisher called Science Reuters—which puts out the journal Pharmacologia—listed papers from PLOS journals and elsewhere in the table of contents of numerous issues of its Science Reuters journal. Another publisher, Insight Knowledge, also published parts of papers in Insight Biomedical Science that appeared in PLOS ONE and the African Journal of Biochemistry Research. Researchers whose papers were in Science Reuters's table of contents say they had no idea their work was being used by the journal.

“That is distressing, because we've never submitted an article to Science Reuters,” said Mark Johnson, an associate professor at Brown University. “I'm not even aware that Science Reuters is a journal.”

Of trademark matters, note the text Science Reuters, which is not affiliated with the news organization Reuters

Tuesday, May 21, 2013

Design patents on the upswing?

From Forbes on the value of design patents:

Now companies are seeking out design patents to go with their so-called utility patents to create a more impervious wall of protection around their successful products. It’s even conceivable that a company could lose a patent fight over some critical bit of technology that makes a product work, but win damages from a competitor that copied a completely non-functional aspect of the design.

Monday, May 20, 2013

Alexsam v. IDT at the CAFC

The outcome of Alexsam v. IDT

Defendant IDT Corporation appeals from the judgment
of the District Court for the Eastern District of
Texas determining that certain of IDT’s systems infringed
claims 57 and 58 of U.S. Patent No. 6,000,608 (“the ’608
patent”), and that these claims were not invalid. Plaintiff
Alexsam, Inc. cross-appeals from the court’s judgment
determining that certain other systems were licensed
under claims 57 and 58 of the ’608 patent.
We affirm the judgment of no invalidity. We reverse
the jury’s finding of infringement with regard to IDT’s
Walgreens and EWI systems, but affirm the judgment of
infringement with regard to IDT’s miscellaneous systems
based on the district court’s discovery sanction.

Bad news on the expert:

At no point did Baker testify, except in the cursory
manner described above, that no modifications were
actually made to the terminals’ software in order to allow
them to activate IDT’s cards. Indeed, Baker admitted on
cross-examination that his testimony was limited to what
was “required” in order to activate an IDT card, and that
he had not expressed an opinion as to whether the actual
POS terminals used in the IDT systems had been “reprogrammed,
customized, or otherwise altered” in any way.
See J.A. 13,901-03. He further testified that he had not
spoken with IDT’s retail or intermediary partners or with
POS suppliers about the terminals used in Alexsam’s
systems. Finally, when pressed further, he admitted that
he was “not an expert on terminals.” J.A. 13,924.


The district
court therefore erred in denying Alexsam’s motion for
JMOL of noninfringement as to the Walgreens and EWI

Fexofenadine case: "substantially pure" has different meanings within one patent

Aventis/AMR vs. Mylan concerning fexofenadine.
The decision is by a 2-1 vote.

The initial part of the decision:

Aventis Pharmaceuticals, Inc. and Albany Molecular
Research, Inc. (AMRI) (collectively “Appellants”) appeal a
stipulated judgment of noninfringement entered by the
U.S. District Court for the District of New Jersey. The
parties stipulated to noninfringement following the district
court’s Markman opinion of January 13, 2011, which
consolidated numerous patent infringement cases and
construed terms of AMRI’s U.S. Patent No. 5,750,703
(“the ’703 patent”), among others.1 Because we conclude
that the district court’s Markman opinion misinterpreted
claim terms of the ’703 patent
, we reverse and remand.

IPBiz notes the potential procedural relationship of this case
to Gevo v. Butamax. Parties can stipulate to an outcome and challenge
claim interpretation.

Of background in the Aventis case:

Dr. Thomas E. D’Ambra,
AMRI’s president, found the prior art processes for making
piperidine derivatives inefficient. Because one goal of
Dr. D’Ambra’s work was to obtain substantially pure
piperidine derivative compounds—ultimately required for
pharmaceutical-grade end products; that is, end products
with greater than 98% purity—he recognized that the
reduced purity achieved through known teachings meant
additional purification steps were required after the
piperidine derivative was fully formed, leading to low

The commercial relevance of this case is fexofenadine/Allegra.

Footnote 5 of the decision states:

Regioisomers are chemical compounds with the
same molecular formula, but with different bonding

In the case, the relevant isomers are meta and para substituted

The difference between these regioisomeric arrangements
of constituents on both the CPK intermediate and
piperidine derivative product appears slight, but is biologically
significant—the piperidine derivative produced
using the para-CPK structure is biologically active, while
the piperidine derivative produced using the meta-CPK
structure is biologically inactive. The ’703 patent extensively
criticizes the prior art processes because each stage
of the synthesis yields an impure mixture of meta- and
para-regioisomers. But the new process invented by Dr.
D’Ambra using a CPK intermediate means that the
para/meta CPK regioisomeric mixture is more readily
separable to obtain para-CPK, resulting in a substantially
pure para-piperidine derivative end product.

[ notes: Three categories of constitutional isomers are
skeletal, positional, and functional isomers.
Positional isomers are also called regioisomers. ]

Of case history:

The district court performed a tentative claim construction
in connection with a September 20, 2005 motion
for a preliminary injunction filed after Teva began marketing
a generic fexofenadine drug. Judge Greenaway’s
January 30, 2006 opinion denied the preliminary injunc
tion request, and set forth an initial claim construction of
the ’703 patent’s disputed claim term “substantially
pure.” See Aventis Pharms., Inc. v. Barr Labs., Inc., 411
F. Supp. 2d 490, 509 (D.N.J. 2006). The district court
found that the ’703 patent’s specification used the phrase
“substantially pure” to describe both the piperidine derivative
end products and the CPK intermediate
. Id. at 498-
99. The district court also relied on statements from the
prosecution history regarding the purity of the piperidine
derivative end products to reach a tentative claim construction
that the phrase “substantially pure” in the
asserted claims of the ’703 patent means “of greater than
95% purity.” Id. at 502–03.

[Judge Greenaway is believed to be currently on CA3.]

And the earlier outcome:

In light of this claim construction,
Appellants stipulated that they could no longer prove
infringement, and the district court entered final judgment
in favor of Appellees in both cases. Appellants
timely appealed the disputed claim construction of the
’703 patent to this court.

A sign of trouble for the earlier construction:

Claims 1, 6, and 7 of the ’703 patent explicitly include
the term “substantially pure regioisomer.” The district
court construed this language to require “at least 98%
purity with respect to all impurities.” This construction,
however, conflates the purity required for the piperidine
end product with that of the CPK intermediate.


We agree with both parties that the claims themselves
are insufficient to define the term “substantially
pure.” Therefore, we must turn to other sources of intrinsic
evidence to determine “what the inventors actually
invented and intended to envelop with the claim.” Renishaw
PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
1250 (Fed. Cir. 1998). The specification provides the “best
source” for construing a claim term and determining the
inventor’s intent regarding use. Multiform Dessicants,
Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir.
1998); see also Vitronics, 90 F.3d at 1582.


The “one-size-fits-all” construction adopted by the district
court incorrectly construes “substantially pure”
separate from the very next word--“regioisomer.” The
district court’s artificial truncation of the claim term for
the expediency of a single interpretation across different
contexts was error
. Outside of the description of the prior
art process from the ’129 patent, the specification almost
exclusively uses the term “regioisomer” to refer to the
CPK intermediate. Further, the full term, “substantially
pure regioisomer,” is used only in reference to the CPK


The district court reasoned that the
plain language of “substantially pure” must involve all
impurities, because “a solution of 25% para-CPK, 0.2%
meta-CPK, and 74.8% dirt would not be substantially
pure.” Joint App’x 55; see also Aventis, 2011 WL 2175928,
at *8. This flawed analysis again does not consider the
appropriate frame of reference for claim construction.


We hold that the modifier
“substantially pure,” when construed in light of a person
of ordinary skill in the art and in view of the claimed
improvements over the prior art, only applies regioisomeric
impurities, not all impurities.

Of the term "substantially"

With no explicit construction of the term “substantially
pure” in the claims, specification, or prosecution history,
we apply the “ordinary and customary” definition to
the claim term. In other contexts, this court has interpreted
“substantially” as a non-specific term of approximation
that avoids a numerical boundary. See, e.g.,
Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d
901, 907 (Fed. Cir. 2005); Liquid Dynamics Corp. v.
Vaughan Co., 355 F.3d 1361, 1368 (Fed. Cir. 2004)


Therefore, we adopt the Appellants’ proposed construction
of “substantially pure regioisomer of the following formula”
as used in the ’703 patent and construe the term to
mean “largely but not wholly the para regioisomer of the
intermediate of the structure shown, as compared to the
meta isomer.”

The decision is reversed and appellants Aventis/AMR win.

Judge Bryson dissented:

The majority embraces Aventis’s proposed construction,
holding that the patent gives the term “substantially
pure” different meanings when referring to the terms
“substantially pure regioisomer” and “substantially pure
piperidine derivative.” As the district court ruled, however,
the intrinsic evidence does not distinguish between the
way “substantially pure” is used with respect to those two
terms, and for that reason I would uphold the district
court’s claim construction.


However, general principles of claim
construction are instructive here. “[W]e presume, unless
otherwise compelled, that the same claim term in the
same patent or related patents carries the same construed
meaning.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d
1314, 1334 (Fed. Cir. 2003); see also Paragon Solutions,
LLC v. Timex Corp., 566 F.3d 1075, 1087 (Fed. Cir. 2009)
(“We apply a presumption that the same terms appearing
in different portions of the claims should be given the
same meaning unless it is clear from the specification and
prosecution history that the terms have different meanings
at different portions of the claims.”).


There is no basis for ignoring the intrinsic record and
the presumption that “substantially pure” is a discrete
claim term with a consistent meaning throughout the
patent. Aventis apparently believes that for “substantially
pure” to be construed to have the same meaning each
time it is used in the patent, the patentee would have to
explicitly “link” the purity of the para-CPK intermediate
to that of the end product. But Aventis has it backwards:
If the patentee wanted “substantially pure” to have different
meanings when applied to different elements, it
needed to explicitly “unlink” them.

Leading to

In sum, I conclude that “substantially pure” means “at
least 98% purity with respect to all impurities” and that it
has that meaning with respect to both regioisomers and
the end product. I would therefore affirm the district
court’s judgment.

Dey/Mylan win over Sunovion

From Dey and Mylan vs. Sunovion

Of an unusual aspect of the case:

When Dey sued Sunovion for patent infringement,
Sunovion argued, and the district court agreed, that some
of Dey’s patents were invalid because a Sunovion clinical
trial in which Sunovion tested its own product constituted
a prior public use of Dey’s inventions within the meaning
of 35 U.S.C. § 102(b).1 In that respect, this case is unusual.
To the extent the public use bar is raised in the context
of clinical trials, it normally entails a party defending
its own clinical trials against the charge that the trials
constituted a public use of the same party’s invention. (...)

Although the
parties’ dispute would seem to present a classic issue of
priority, it comes to us as a public use dispute, not a
priority contest, and we must apply public use principles
to resolve it. Doing so, we conclude that Sunovion has not
shown that it is entitled to summary judgment based on
its assertion that its use of formulations meeting the
limitations of Dey’s later-issued patents constituted a
public use of Dey’s inventions within the meaning of
section 102(b). We therefore reverse the grant of summary
judgment for Sunovion.

Of public use

An applicant may not receive a patent for an invention
that was “in public use . . . in this country, more than
one year prior to the date of the application for patent in
the United States.” 35 U.S.C. § 102(b) (2006). To decide
whether a prior use constitutes an invalidating “public
use,” we ask “whether the purported use: (1) was accessible
to the public; or (2) was commercially exploited.”
Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374,
1380 (Fed. Cir. 2005).

Common sense appears:

formulations are designed to capture the commonsense
notion that whether an invention is “accessible to the public”
or “reasonably . . . believe[d] [to be] freely available”
depends, at least in part, on the degree of confidentiality
surrounding its use: “[A]n agreement of
confidentiality, or circumstances creating a similar expectation
of secrecy, may negate a ‘public use’ where there is
not commercial exploitation.” Invitrogen, 424 F.3d at

Of third parties:

The same is true when an unaffiliated third party is
responsible for the allegedly public use. Although prior
uses are often carried out by or at the direction of the
inventor-patentee, we have held that “third party prior
use accessible to the public is a section 102(b) bar.” Eolas
Techs. Inc. v. Microsoft Corp., 399 F.3d 1325, 1334 (Fed.
Cir. 2005). But even in the case of third-party uses, being
“accessible to the public” still requires public availability;
secret or confidential third-party uses do not invalidate
later-filed patents. See, e.g., Woodland Trust v. Flowertree
Nursery, Inc., 148 F.3d 1368, 1371 (Fed. Cir. 1998)
(“when an asserted prior use is not that of the applicant,
§ 102(b) is not a bar when that prior use or knowledge is
not available to the public”);

Here, the CAFC reversed a summary judgment:

The district court held that Sunovion was entitled to
summary judgment of invalidity because Sunovion’s own
clinical trial constituted clear and convincing evidence of
a third-party public use of Dey’s inventions. We disagree.
Important issues of fact remain in dispute, principally
whether sufficient precautions were taken to exclude
members of the public from obtaining information about
the potentially invalidating prior art (i.e., Batch 3501A).
On the record of this case, we do not agree with the district
court that no reasonable jury could return a verdict
for Dey.


We have never required a formal confidentiality
agreement to show non-public use, e.g., Bernhardt, 386
F.3d at 1379-81; in the absence of such an agreement, we
simply ask whether there were “circumstances creating a
similar expectation of secrecy,” Invitrogen, 424 F.3d at
1382. The “public use” inquiry is replete with factual
considerations, such as the (disputed) extent to which
study participants were informed of and able to disclose
the pertinent details of the claimed prior art. See, e.g.,
W.L. Gore, 721 F.2d at 1549.

Yes, Egbert is cited:

particular, the district court cited New Railhead Mfg.,
L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1299 (Fed. Cir.
2002), for the proposition that “the core issue is not public
knowledge of the invention, but the public use of it.”
Sunovion likewise points to cases such as Egbert v. Lippmann,
104 U.S. 333 (1881), to contend that a “public use
need not be enabling in the sense of disclosing each laterclaimed
feature to the interested public.” According to the
district court and Sunovion, it was not especially important
whether test subjects knew or understood the
contours of the prior art alleged to anticipate Dey’s inventions,
because their at-home use of the formulation of
Batch 3501A without an affirmative confidentiality obligation
doomed Dey’s patents.

Of enablement:

Put another way, although Sunovion is
correct that we do not ask for an “‘enablement-type inquiry’”
under section 102(b), a court still must decide
whether the “claimed features of the patents [were placed]
in the public’s possession.” Konrad, 295 F.3d at 1323.
And here, a reasonable jury could conclude that if members
of the public are not informed of, and cannot readily
discern, the claimed features of the invention in the
allegedly invalidating prior art, the public has not been
put in possession of those features.


a reviewing court has the authority, on appeal from a
summary judgment in favor of the appellee, to direct the
entry of judgment in favor of the appellant, that course is
ordinarily followed only when the appeal involves issues
of law or when such a ruling would clearly entail no
unfairness to the appellee. See Fountain v. Filson, 336
U.S. 681, 683 (1949); Conoco, Inc. v. Dep’t of Energy, 99
F.3d 387, 394-95 (Fed. Cir. 1996); Turner v. J.V.D.B. &
Assocs., Inc., 330 F.3d 991, 998 (7th Cir. 2003)

Judge Newman's dissent begins:

I would reverse the district court’s judgment and hold
that Sunovion’s clinical trial does not constitute an invalidating
“public use” of Dey’s invention. There are no facts
to be found, no debate as to how the trials were conducted.
No sound reason appears for remanding for findings
or trial, when the matter is readily resolved on undisputed
facts. Nor is there any reason for casting judicial doubt
on the standard confidentiality procedures of clinical
trials, at this late date of decades of established practice.

Sunday, May 19, 2013

"60 Minutes" Special Edition on May 19, 2013 at 8pm Eastern Time

There were three stories previewed for the "special edition" show on May 19, 2013:

Massive migration out of Afghanistan.

Movies about lions in Africa. Water-loving super lions.

Taylor Swift as a role model.

Anderson Cooper does "A Long and Dangerous Journey." Massive migration out of Afghanistan by children. Afghan boys on Greek island. Pakistan, Iran, Turkey, Greece. "I didn't have any future." Alexandra Fassina has created on-going photographic record. Mittilini: several boys died. One survivor of incident. Sweden grants highest % of asylum to Afghan children. Last year, nearly 2000 children granted asylum.

Lara Logan on the Gilberts on African lions. title: "Lion Kings." Previous story in 2012. Botswana. Belief that the animals have untold stories. Initially, documented lions at night.
Battles between lions and hyenas. Hyenas making kills, and lions as scavengers. Lions attacking an elephant.

"60 Minutes" on May 19, 2013

Lesley Stahl talked about computer face-recognition. Second, camp 14 by Anderson Cooper, a recycled story from December 2, 2012. Third, Lara Logan on Michael Jackson's fortunes after death. Image resurrection. What Michael Jackson left behind.

First up "Face in the Crowd." with an allusion to the Boston event. Carnegie-Mellon. Mario Savitas: drone outfitted with facial recognition software. Surveillance technology. The concept of a faceprint. TVs have facial recognition technology. Facial recognition can be done surreptiously. Joseph Addick did software. In film "Minority Report" with Tom Cruise, commercial aspects. Digital billboards. New Towne Mall video of Intel. Mannikins with facial recognition. Hitachi of Japan is working on individual identification. Big Brother is Big Business. There are no rules for commerce in the US, but there are rules in Europe. If you have been tagged on FaceBook, chances are faceprint has been created. Linking faces on street to names, and to shopping history. Worry about privacy when one is merely walking around. Create patterns that interfere with facial recognition algorithms. David McMullan of Red Pepper at Jed's Bar. facedeals. Restaurant recognizes faceprint, mine shopping history, and send a coupon. A diet Coke. Electronic devices are tracking us. Alessandro Aquisti of Carnegie Mellon. He took photos of random students. Sort for facial recognition. He identified several, and got personal data, including in some cases social security number.
Needed: a picture with your name on it. 2105C is office for Alessandro. Facebook has bigger database than guv. But FBI is working on it: David Cuthbertson shows Lesley example of sort of 12.8 million mugshots. Pictures of people who have been arrested. No legal authorization to download from Facebook. This begins with information we feed onto the internet. Start with a face and predict social security number. There is no place to hide.

But, see also Why facial recognition software isn’t ready for prime time with summary

Opinions are divided on whether facial recognition technology helped or hindered the search for the Boston bombers. An expert tells us it wasn’t even used, and there are still hurdles to widespread, accurate deployment.

"Three Generations of Punishment" by Anderson Cooper about escape of Shin Dong-hyuk from Camp 14. 150,000 people in North Korea are believed to be doing time in these gulags. Cooper alluded to the earlier presentation of this story in December 2012. 15,000 people are believed to be in Camp 14. David Hawk, human rights investigator. In post World War II world, North Korea is the only country punishing later generations of political malcontents. Torture: hanging by ankles; fire. Public execution site. They hung his mother and shot his brother. "Escape from Camp 14" by Blaine Harden.

Wikipedia notes: On December 2, 2012, Shin was featured on 60 Minutes during which he recounted to Anderson Cooper the story of his life in Camp 14 and escape.

Shin worries about all the people still in the prison camps.

The third story about Michael Jackson has some IP relevance, such as "right of publicity" for deceased people. Michael Jackson is making more money after his death (in 2009) than he did when alive. Barcelona, Spain: Michael Jackson tour done by Cirque de Soleil. 190,000 people in Mexico City. John Branca, lawyer. Box office more than 300 million. Has sold 50 million albums since death. Look at the Michael we knew, the artistic genius. Very honorable person.
Challenge to Branca as executor. Series of wills, almost identical. 40% to children and 40% to mother. Accumulate principal . John McClain other co-executor. Jack O'Malley Greenburg.
Never stopped spending like it was the 1980's. Child abuse charge in 1993. Karen Langford is archivist for Jackson Estate. There are five warehouses storing Jackson stuff. Copyright value of 100 million for Jackson. But bigger value from other songs: Great Balls of Fire.
Beatles catalog. Paid 47.5 million for Beatles. Sony-ATV Music. Michael's half might be worth one billion. Jackson had borrowed $380 million. Sale of future rights for $250 million to Sony. Video footage of Jackson at 50. Movie "This is it" has made $500 million. First deals showed Michael Jackson was not radioactive. Billie Jean, Beat It, Thriller. People transported back to the 1980s. Jackson Estate/Cirque de Soleil are 50/50 partners in show.
"Michael Jackson One". Litany of claims against Jackson Estate. Most of the claims were absurd according to lawyer. Cavalry Safe has sequined glove. Since Jackson's death, the Estate of Michael Jackson has made over $600 million, which is more than any living artist has made over that time period.

CBS Sunday Morning 19 May 2013

The showing of "Sunday Morning" on May 19 was "By Design," with Charles Osgood in a red sports shirt and no bow tie coming from Miami, FL. Osgood noted that Miami is "capital of the Americas" and the new world center. Osgood noted the art deco hotels of Miami Beach and observed "what's new is old," setting up a theme for the May 19 show. The first previewed story was "What's new is old" the cover story done by Tracy Smith. A more perfect version of the past. Second preview was Susan Spencer on "Color Me Happy," about psychological impact of color. Third preview was Lee Cowan interviewing Jennifer Lopez. Fourth, Bill Geist on mini-golf courses, in particular Barnacle Bill's. Other stories were by Martha Teichner, Seth Doan, Erin Moriarty, and Richard Schlesinger. Don Daylon, not Osgood, did the headlines for May 19. First, the commuter train crash in Connecticut on Friday. Second, deaths in Damascus, VA. [see Dozens injured when car runs into Virginia parade ]. Third, the death of Andrea Rebello [see

Cops fired bullet that killed Hofstra student Andrea Rebello during botched robbery: authorities
]. Fourth, Oxbow wins Preakness. Fifth, ticket for 590 million dollar PowerBall sold in a Publix in Zephyrhills, Fla. Weather: rainy in northeast.

Making the old new again, the cover story done by Tracy Smith. Osgood previewed the story in a blue shirt, and no bow tie. Miami Beach, a former mangrove island known only as the Beach, was a vacation paradise by design. Fontainbleu opened in 1954. Miami is the capital of design. Tracy Smith started with Grand Central Station in New York. Kent Berwick noted that historic preservation is a tricky business. Paul Goldberger of Vanity Fair talked about the demise of the old Penn Station and the creation of Madison Square Garden. Robin Standefer and Stephen Alesch, of the design firm Roman and Williams. In 1998, did buildings meant to be torn down in the movie Practical Magic. At New York's historic Schemerhorn Building, the interior they designed for the brand new Lafayette Restaurant used the same materials that might have been found when the building was built in the 1880s. A more perfect version of the past. People want buildings that perform magic.

Susan Spencer started the second story with thehe Bacardi Building in Miami, designed by Enrique Gutierrez. Its blue and white ceramic tiles remind us of the importance of color. Putting a tree in a home. Design should hark back to favorite places. Played in woods as a child, says psychologist Israel. She says people should create worlds around them that have meaning, not follow routines of others, as does psychoanalyst Mark Gerald, also a photographer. Finding things that were there all along. A few psychoanalysts use color as a tool of the trade to elicit response. He uses Benjamin Moore "Sweet Innocence" paint on his walls. Blue is creative, red more vigiliant or sexy, green is calming, pink.... Drunk Tank Pink is a "magical" color that calms even most roudy of inmates according to experiments; Adam Alter. In college football, the University of Iowa has painted at opponent locker rooms in this particular pink -- possibly strong, healthy males may think of their softer sides and be rendered more calm, but analysts are not sure. What is on the walls may have an effect on what is on your mind.
A poll showed blue is the most popular color; yellow the least popular.

Richard Schlesinger did a story on Herman Miller and cubicles, past, present and future.
Brian Walker. Robert Propst. The action office. Walls easily movable. Propst idea was altered in implementation: cubicles as monuments to monotony. Laurie Gee, company VP.

Vizcaya, 35 rooms filled with antiques, was Dearings and is now a museum. Today's designers of multi-generational homes do with a lot less. In 2003, The Hererra's in CT built separate spaces for their multi-generation families. 50 million Americans live in multi-generation homes. Family is the most important aspect of life. Tom Moser, his wife and his father, Lee, live down the hall from one another in their 3100 square foot home with complete independence, yet very close proximity; for medical reasons, it works out very well. Lee's daughter, Diane, Tom's sister, liked the idea so well that they also moved in next door. 90 year old TW can also now stay with his wife, Millie, of over 70 years. Can spend his life with his beloved grandchildren and others and this makes families far closer, they feel.

FAMILY: Multi-generational homes
Contemporary designers of homes for extended families have to make do with much less. Anna Werner shows us how they do it. . 50 million now live in multigeneration homes. Tom Moser and father. Cost 200 to 400K.

Monticello, Falling Waters, Glass House, with Martha Teichner in segment entitled Feathered Nest. Bird houses made to look like the homes of the rich and famous, created and made by Thomas F. Burke. Martha Stewart's home is another. Many on display in Baltimore. Burke transforms many famous homes also including numerous Wyeth homes in and near Chadds Ford, Pa. Jamie Wyeth, also an artist, took one of the Burke's birdhouses from Delaware when he moved to another state. George Lucas' Burke birdhouse personalized from a movie. Burke's birdhouses are built for around $20,000; some who commission them do not want birds to live in them, so the openings must be blocked. One of the largest birdhouses ever built was around St. Petersburg for bald eagles: 9 feet by 20 feet!
One of Burke's birdhouses is at 995 Fifth Avenue, 17th floor.

Allen Pizzi on bells made in Italymostly made for Catholic churches through the centuries; must have perfect geometric proportions.

Gardens with Erin Moriarity showing gardens in the sky and others.

Moment of Nature. Spiriva. Peacocks in Davie, FL.

Thursday, May 16, 2013

Gunn relied upon in Forrester v. Wheelabrator; case goes to state court

From Forrester v. Wheelabrator

As to removal:

Under 28 U.S.C. § 1441(a), a defendant may remove
to federal district court “any civil action brought in a
State court of which the district courts of the United
States have original jurisdiction.” 28 U.S.C. § 1441(a). As
we stated in Jim Arnold Corp. v. Hydrotech System, Inc.:
The question we must answer . . . is whether federal
subject-matter jurisdiction would exist over
this case had it originally been filed in federal
court. If the answer is yes, then removal was
proper, and the matter is before us on the merits;
if the answer is no, then removal was improper
and federal courts are without jurisdiction to determine
the cause.
109 F.3d 1567, 1571 (Fed. Cir. 1997).

Colt is cited, followed by a cite to Gunn:

In Christianson
v. Colt Industries Operating Corp., the Supreme Court
held that a claim may “aris[e] under” the patent laws
even where patent law did not create the cause of action,
provided that the “well-pleaded complaint establishes . . .
that the plaintiff’s right to relief necessarily depends on
resolution of a substantial question of federal patent law.”
486 U.S. 800, 808–09 (1988). Thus, even a cause of action
created by state law may “aris[e] under” federal patent
law within the meaning of 28 U.S.C. § 1338 if it involves a
patent law issue that is “(1) necessarily raised, (2) actually
disputed, (3) substantial, and (4) capable of resolution
in federal court without disrupting the federal-state
balance approved by Congress.” Gunn v. Minton, 568
U.S. ___, ___, 133 S. Ct. 1059, 1065 (2013).2
In its recent decision in Gunn v. Minton, the Supreme
Court made clear that state law legal malpractice claims
will “rarely, if ever, arise under federal patent law,” even
if they require resolution of a substantive question of
federal patent law. 568 U.S. at ___, 133 S. Ct. at 1065,
1067. The Court reasoned that while such claims may
“necessarily raise disputed questions of patent law,” those
questions are “not substantial in the relevant sense.” Id.
at 1065–66. The Court emphasized that “[b]ecause of the
backward-looking nature of a legal malpractice claim, the
question is posed in a merely hypothetical sense” and that
“[n]o matter how the state courts resolve that hypothetical
‘case within a case,’ it will not change the real-world
result of the prior federal patent litigation.” Id. at 1066–

Within a footnote:

And in Christianson and
Gunn, the Supreme Court made clear that the same test
applies whether the district court’s potential jurisdiction
is premised on section 1331 or section 1338. Christianson,
486 U.S. at 808–09; Gunn, 568 U.S. at ___, 133 S. Ct.
at 1064.

Of Additive Controls:

In the past, we have concluded that similar state law
claims premised on allegedly false statements about
patents raised a substantial question of federal patent
law. For example, in Additive Controls & Measurement
Systems, Inc. v. Flowdata, Inc., we concluded that the
plaintiff’s state law business disparagement claims arose
under patent law for the purposes of 28 U.S.C. § 1338.
986 F.2d 476, 478 (Fed. Cir. 1993). We noted that under
state law, “a business disparagement claim requires [the]
plaintiff to prove . . . the falsity of [the] defendant’s allegedly
disparaging statements.” Id. There, the allegedly
disparaging statement was an accusation of patent infringement;
thus, we concluded that in order to prove the
falsity of that statement, the plaintiff would have to
“show that its product does not infringe the . . . patent.”
Id. Reasoning that the infringement issue presented a
substantial question of patent law, we concluded that the
claims arose under federal patent law for the purposes of
§ 1338. Id. at 478–79. Similarly in Hunter Douglas, Inc.
v. Harmonic Design, Inc., the plaintiff asserted a claim for
“injurious falsehood” on the theory that the defendant
falsely claimed to “hold exclusive rights to make or sell
window shades covered by one or more” patents. 153 F.3d
1318, 1329 (Fed. Cir. 1998)

In this case, Gunn controls:

In sum, we conclude that even if the allegations contained
in Forrester’s complaint necessarily raise a question
of patent law, the patent law issues are not
“substantial in the relevant sense” under Gunn. See 568
U.S. at ___, 133 S. Ct. at 1066.6 Because the district court
lacked subject-matter jurisdiction over Forrester’s claims,
we vacate the district court’s judgment and remand to the
district court. On remand from this court, the district
court shall remand the case to New Hampshire state

Wednesday, May 15, 2013

Christina Agapakis posts on Adrian Mackenzie paper: “Synthetic biology and the technicity of biofuels”

The first two sentences of the post Petroleum Replicas

The language of innovation often stresses disruption–eliminating inefficient industries and replacing them with more streamlined, technologically advanced versions. Nowhere is disruption more complex and important than in the energy industry, with implications for so much of the way that we live, affecting global industry, economics, and climate.

Pumping petroleum out of the ground less efficient, and less streamlined, than biofuels?
Don't think so. Agapakis tries to force-fit a view that does not apply.

Synthetic Genomics already had a significant staff cutback and changed its timescale.

Note the sentence: In thinking with biofuels and making visible the sources of the carbon molecules and the bond energy of fuel molecules we can ask new kinds of “what if…?” questions and begin to imagine new industrial ecosystems.

The bond energies within fuel molecules, like say ethanol, are well-worked out and are the same no matter what the source of the fuel molecule. No "what if" questions are needed.

No there there

Associated Press left to fight alone by major media

Scott Pelley, a CBS television entertainer, stated the news media is “getting the big stories wrong” during a speech at Quinnipiac University. The reason is clear. They do no work. If the “W” word offends your tender sensitivities, too bad. They do no digging, rooting, investigating, or double and triple fact checking. What difference does it make? They go along to get along. Move on. Forward.

Earlier, President Obama had remarked about one of the stories "There's no there there."

When Gertrude Stein wanted to visit her childhood home in Oakland, she could not find the house, and wrote :

What was the use of me having come from Oakland, it was not natural for me to have come from there yes write about it if I like or anything if I like but not there, there is no there there.

And recall:

In the first ruling, U.S. District Judge Garrett Brown in Trenton, N.J., ruled that Princeton University Professor Edward Felten and his research team failed to prove they had a legal reason to challenge the DMCA.

"We do not have an actual case or controversy," Brown said. The judge -- incorrectly attributing a Gertrude Stein quote -- added that, "As Dorothy Parker said, 'There is no there there.' "

ExxonMobil loses in appeal of re-exam 95/001,387; related to US 6,870,072

There was another chapter to the Exxon/Lubrizol saga in the PTAB decision related to re-exam 95/001,387.

This proceeding arose from a request by UOP for an inter partes
reexamination of U.S. Patent 6,870,072 B2 (“’072 patent”).4 The ’072
Patent is entitled “Heat Recovery in an Olefin Production Process,” issued to
David R. Lumgair and James Harding Beech (Mar. 22, 2005), and is
assigned to ExxonMobil Chemical Patents Inc.

As an AIA footnote:

The America Invents Act states that the provisions of 35 U.S.C. §§ 134 and
315 as in effect on September 15, 2012 shall continue to apply to inter
partes reexaminations that are requested before September 16, 2012. See
Pub. L. No. 112-29, §§ 6(c)(3)(C) and 7(e).

The bottom line: ExxonMobil lost.

A key claim element:

removing heat from the effluent stream while
maintaining the effluent stream above the dew point of the gas
phase; and

With discussion:

Patent Owner argues against the anticipation rejection “because
Kuechler does not disclose or enable the feature of ‘removing heat from the
effluent stream while maintaining the effluent stream above the dew point of
the gas phase.’” App. Br. 8. We disagree for the following reasons.
Although Kuechler does not expressly mention the dew point as
pointed out by Patent Owner (App. Br. 10), Kuechler expressly discloses a
temperature for its effluent stream that is, in fact, above the dew point. More
specifically, in Example 1, effluent stream (11) has a temperature of
407.9º C at a pressure of 275.8 kPa. (...)

Patent Owner argues that the dew point as calculated by Dr. Senetar
does not account for all variables, including the presence of the catalyst
fines, which can increase the dew point. App. Br. 12-13. However, Patent
Owner does not present persuasive evidence to support its position. For
example, Patent Owner does not present adequate evidence that such
variables would have affected the calculations made by Dr. Senetar, let alone
adequate evidence regarding the extent that such variables would have
affected the calculations made by Dr. Senetar. In short, Patent Owner does
not present adequate evidence that Dr. Senetar’s calculations were wrong.
Arguments of counsel cannot take the place of evidence lacking in the
record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997). (...)
Patent Owner also states:

while Kuechler does disclose removing heat from the effluent
stream, and strictly speaking the temperature is above a
calculated dew point, Kuechler does not disclose doing so
“while maintaining the effluent stream above the dew point of
the gas phase” enough so that fouling does not occur.

App. Br. 10 (emphasis added). This argument is not persuasive, as it is not
commensurate with the scope of claim 1, which only requires that the
effluent stream is maintained above the dew point of the gas phase, without
specifying a minimum amount by which the effluent stream must be above
the dew point (...)

Patent Owner relies on Figure 1 of the ’072 Patent, which is a graph
of water condensation versus temperature for the effluent stream of a
methanol to olefin reaction at 280 kPa to argue that the effluent stream of
Kuechler is not completely in a gaseous form. App. Br. 11; ’072 Patent col.
3, ll. 49-51, col. 15, ll. 49-50. The graph shows water condensation
beginning when the temperature drops below 250º F10 and then increasing
gradually to 100% condensation as the temperature drops to about 160º F.
Fig. 1. From this, Patent Owner argues that “[t]here is not a ‘bright line’
demarcation between the effluent being completely gaseous and being
completely condensed. . . . Hence, there is a need to bring the temperature
of the effluent stream high enough above the dew point to avoid such
condensation.” App. Br. 11.

We are not persuaded by Patent Owner’s arguments. The effluent
stream (11) of Kuechler is 407.9º C -- well above both the 120.1°C dew
point calculated by Dr. Senetar and the 250º F (~120º C) dew point shown in
Figure 1 of the ’072 Patent. (...)

Patent Owner argues that “one skilled in the art would have to assume
that the effluent in the heat exchanger (8) and stream (12) of Kuechler must
at least partially condense.” App. Br. 10 (bold and underlining added).

Of declarations:

Patent Owner also urges us to rely on a declaration of its witness,
Thomas H. Colle, Ph.D., instead of the declaration of Dr. Senetar submitted
by Requester, stating:
The only thing that Dr. Senetar opines on with respect to
dew point is to calculate the dew point of the effluent stream in
the Kuechler patent example. Dr. Senetar makes no comment
with respect to whether or not the dew point was of any
significance with respect to the oxygenation process. The
Senetar declaration does not support the Requester's or the
Examiner's theory as to why the Kuechler patent inherently
teaches the processes claimed in the '072 patent. . . .
On the other hand, Dr. Colle, Patentee's expert,
specifically opines on whether or not the Kuechler patent would
be understood by the ordinary artisan to contain an enabling
disclosure with respect to the importance of dew point vis a vis
catalyst fine fouling. Dr. Colle concludes that there is no
mention of such a concept in the Kuechler patent.
App. Br. 12. These arguments are not persuasive. Anticipation requires the
disclosure of all elements of a claim as arranged in the claim. SynQor, Inc.
v. Artesyn Tech., Inc., 709 F.3d 1365, 1375 (Fed. Cir. 2013). Kuechler does
this regardless of whether the Kuechler inventors recognized that practicing
their disclosure would prevent or reduce fouling. “Inherency is not
necessarily coterminous with the knowledge of those of ordinary skill in the
art. Artisans of ordinary skill may not recognize the inherent characteristics
or functioning of the prior art.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).

For the foregoing reasons, we sustain the rejection of claims 1-11, 17-
24, 26-43, 45-54, 56-58, 60-63, 66, 67, and 69-75 as anticipated by

IPBiz notes the following:

Since we sustain the rejection of claims 1-11, 17-24, 26-43, 45-54, 56-
58, 60-63, 66, 67, and 69-75 as anticipated by Kuechler, we also sustain
their rejection as unpatentable over Kuechler. See Structural Rubber Prods.
Co. v. Park Rubber Co., 749 F.2d 707, 716 (Fed. Cir. 1984) (“a disclosure
that anticipates under § 102 also renders the claim invalid under § 103, for
‘anticipation is the epitome of obviousness’”) (quoting In re Fracalossi, 681
F.2d 792, 794 (CCPA 1982)).

Of dependent claims:

Patent Owner does not present any arguments with respect to claims
12-16, 25, 55, 59, 64, and 65 beyond the unpersuasive arguments regarding
the independent claims from which they depend. App. Br. 15-19.
Accordingly, we also sustain the rejection of claims 12-16, 25, 55, 59, 64,
and 65 as unpatentable over Kuechler.

Also note:

Patent Owner does not present any arguments with respect to any of
the rejected claims beyond the unpersuasive arguments regarding the
independent claims from which they depend. App. Br. 19 (“Patentee
traverses this rejection for the same reasons as stated above with respect to
Kuechler . . . what is still not disclosed is the step: ‘removing heat from the
effluent stream while maintaining the effluent stream above the dew point of
the gas phase.’”) Accordingly, we sustain the rejection of claims 1-67, 69-
89, and 91-96 as unpatentable over Kuechler and Miller.

Even when ExxonMobil won on a point, the bigger battle was still lost:

Although Patent Owner persuades us that the stated rationale for
combining Mulvaney and Kuechler is insufficient, it has failed to persuade
us that the claims are patentable over Mulvaney and Jorgensen. The Board
may rely on less than all of the references applied by the Examiner in an
obviousness rationale without designating it as a new ground of rejection. In
re Bush, 296 F.2d 491, 496 (CCPA 1961); In re Boyer, 363 F.2d 455, 458
n.2 (CCPA 1966). Indeed, the Examiner presented two different rationales
for combining the references, and one of these rationales is sufficient to
establish obviousness of the claimed subject matter.

As to 112 P 2:

The Examiner rejected claims 76-84 as being indefinite in violation of
35 U.S.C. § 112, ¶ 2 (2002). RAN 10. The Patent Owner does not argue
that these claims are not indefinite. App. Br. 28. Rather, the Patent Owner
merely points out that it submitted amendments that it believes would
overcome the rejection that were not entered by the Examiner. App. Br. 28.
Thus, we summarily affirm the Examiner’s rejection of claims 76-84 under
35 U.S.C. § 112, ¶ 2.

Note footnote 7:

The Appeal Brief includes a section entitled “Separate Patentability of the
Dependent Claims” that provides brief arguments with respect to certain
claims, including claims 23, 24, 58, and 73-75 rejected as anticipated by
Kuechler. App. Br. 26. Because the arguments presented in that section are
not specific to any particular rejection, see App. Br. 26-27, we also address
these claims separately below.

112 rejections sustained in Ex parte BOUGHANNAM

In Ex parte BOUGHANNAM , appellant won on 102 but lost on 112, with the bottom line, the appellant lost.

Of "written description"-->

Appellants assert that these claim terms have literal claim support in the
Specification, and thus meet the written description requirement. As stated
by the Federal Circuit, however, “[a]lthough many original claims will
satisfy the written description requirement, certain claims may not.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en
banc), see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336,
1343-46 (Fed. Cir. 2005); Regents of the Univ. of Ca. v. Eli Lilly & Co., 119
F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in
the original disclosure does not satisfy the written description requirement if
it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350;
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002)
(holding that generic claim language appearing in ipsis verbis in the original
specification did not satisfy the written description requirement because it
failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d
1164, 1170 (Fed. Cir. 1993) (rejecting the argument that “only similar
language in the specification or original claims is necessary to satisfy the
written description requirement”).
In addition, original genus claims may fail to describe species. Ariad,
598 F.3d at 1349. In such a case, the claims fail to satisfy the written
description requirement when the specification fails to demonstrate that the
applicant has made a generic invention by showing that the applicant has
invented species sufficient to support a claim to the defined genus. Id. at
1349-50 (“[A]n adequate written description of a claimed genus requires
more than a generic statement of an invention’s boundaries.”) (citing Eli
Lilly, 119 F.3d at 1568).
Here, Appellants have admitted using broad terms such as “service
activation rules,” “obviation condition,” “Web service,” “execution agenda,”
and “marketplace” without setting forth any species to support these genuses
in the Specification. Without such species, Appellants have not shown
sufficient possession of the invention to satisfy the written description
requirement. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed.
Cir. 1991).
We sustain this rejection of claims 1-12.

The appellants PREVAILED on their arguments about the 102 rejections, but
because they lost on 112:

As all claims remain rejected under 35 U.S.C. § 112, first paragraph,
the decision of the Examiner to reject claims 1-12 is AFFIRMED.

General Motors loses at PTAB on re-hearing request

From Ex parte Watkins

We also agreed with the Examiner (Ans. 14 and 18), and continue to
do so, that “deactivating” does not requires that the vehicle telematics device
be entirely disable from receiving any communication, as disclosed in the
Specification. See Request 2-3. Limitations appearing in the specification
but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v.
3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

Appellant prevails against anticipation, obviousness rejections in Ex parte Beland

from within Ex parte Beland

As to anticipation:

The Examiner has not provided a basis in
fact and/or technical reasoning to reasonably support the determination that
Kato’s garment in the embodiment shown in Figure 18 necessarily
constitutes a “shirt,” as called for by independent claim 1. See Ex parte
Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).

As to a prima facie case of obviousness

Thus, the Examiner has not made the
initial factual findings required to demonstrate a prima facie case of
obviousness of claims 17-20 and 22-24. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis).

Bottom line:

The decision of the Examiner to reject claims 1-3, 12, 17-20, and 22-
24 is reversed

Case handled by Smart & Biggar, Montreal, Canada.

Invention disclosure forms as evidence discussed in Ex parte Kang

The appellant lost in Ex parte Kang. After dealing with some procedural irregularities as to the Advisory Action, the Board made some significant comments about the use of invention disclosure forms as evidence.

As to the Advisory Action:

The Final Office Action, from which this appeal is taken, included a
rejection of claims 1, 3, 5, 7-9, 11, 13-15, and 17 under 35 U.S.C. § 112,
second paragraph, as being indefinite based on an ambiguity identified by
the Examiner as being in the language of claim 1. Fin. Off. Act. dated Feb.
17, 2010 at p. 2. Appellants submitted an after final amendment to correct
the noted ambiguity. Amdt. After Final dated Apr. 5, 2010. The Examiner
entered the after-final amendment, but did not state in the Advisory Action
whether the rejection for indefiniteness had been overcome
. Adv. Act. dated
Apr. 16, 2010. In the Answer, the Examiner explicitly withdrew the
rejection of claims 1, 7, and 13 under 35 U.S.C. § 112, second paragraph,
stating that “the after final amendment was entered because it was agreed
that the 112 second paragraph rejection was overcome.” Ans. 3, 11-12.
While the Examiner did not explicitly withdraw the indefiniteness rejection
of claims 3, 5, 8, 9, 11, 14, 15, and 17, since the basis for the indefiniteness
rejection was noted in the record as having been overcome by the
amendment entered after-final, we understand there to be no outstanding
rejection of any of the pending claims under 35 U.S.C. § 112, second
paragraph. Id. at 3-4.4

Footnote 4:
The Examiner alludes to a new ground of rejection of claims 5, 8, 11, 14,
and 17 under 35 U.S.C. § 112, second paragraph, in the Response to
Arguments portion of the Answer (Ans. 12), but we see no presentation of
any such rejection under the New Grounds of Rejection portion of the

A topic which arises is evidence in the form of a "patent disclosure form" (known by some as an invention disclosure form):

The 131 Declaration, signed by the Appellants, attaches an exhibit
that consists of a copy of a redacted Patent Disclosure Form. 131
Declaration, para. 2. The 131 Declaration states that Appellants “have seen
the unredacted Patent Disclosure Form which indicates at 1.(a) a conceived
and 1.(b) a built/tested date before May 6, 2004.” Id. at para. 3. The 131
Declaration also states that Appellants “did simulate a system incorporating
the invention as described in the Patent Disclosure Form as indicated at
1.(b), at before May 6, 2004.” Id. at para. 4. The Patent Disclosure Form
consists of a questionnaire completed by Appellants that asks at 1.(a) when
Appellants conceived the invention and at 1.(b) whether the invention has
been successfully built or tested. Id. at Ex. A. Appellants checked “Yes”
on this form that the invention had been successfully built or tested, and
noted that it was by “[d]igital simulation and anlytical [sic] approach.” Id.
The Patent Disclosure Form also includes a seven page description entitled,
“System ID Based Air Filter Alarm Technique.” Id. The 131 Declaration
does not specifically point to descriptions or data within this seven page
document accompanying the Patent Disclosure Form to show evidence of
conception or reduction to practice of the control of claim 7 or the method of
claim 13. For example, the 131 Declaration does not explain where the
Patent Disclosure Form specifically evidences conception or reduction to
practice of changing a first variable “periodically.”

Rather, the 131 Declaration consists of vague and general statements
in the broadest terms as to what the Patent Disclosure Form shows along
with an assertion that the Patent Disclosure Form indicates conceived and
reduction to practice dates prior to May 6, 2004. These statements amount
essentially to mere pleading, unsupported by proof or showing of facts.
re Borkowski, 505 F.2d 713, 718 (CCPA 1974); In re Harry, 333 F.2d 920
(CCPA 1964). The 131 Declaration does not adequately explain what facts
or data Appellants are relying upon to show a completion of their invention
prior to the critical date. See Borkowski, 505 F.2d at 718.

The Patent Disclosure Form is not clear on its face and it is
Appellants’ burden to explain the content of this Patent Disclosure Form as
proof of acts amounting to reduction to practice. Id. at 719. Absent a clear
explanation pointing out exactly what facts are established in the Patent
Disclosure form and relied on by Appellants, the 131 Declaration based
thereon is of little assistance in enabling us to judge whether there was an
actual reduction to practice of the invention. Id. Rule 131 requires “not a
statement that facts exist” but an “oath to facts showing a completion of the
invention” and “[t]he showing of facts shall be such, in character and
weight, as to establish reduction to practice, etc.” In re Harry, 333 F.2d at
922 (internal quotations omitted). Appellants’ 131 declaration merely
asserts that facts exist but does not indicate what those facts are or how they
occurred. Id.

Further, Appellants have failed to point to the specific information in
the attached Patent Disclosure Form on which they rely to show conception
of the invention. Neither the 131 Declaration nor the arguments in the
Appeal Brief establish facts sufficient to tie the information found in the
Patent Disclosure Form to the claim limitations in a manner to show
conception of even the basic invention. As such, the attached Patent
Disclosure Form is of little assistance in enabling the Office to judge
whether there was conception of the invention and reduction to practice prior
to the effective date of the prior art.

Even if one were to find that the 131 Declaration provides sufficient
evidence of a simulation of the control, Appellants have not met their burden
to show the specifics of that simulation in sufficient detail to establish that
the simulation conditions were sufficiently similar to those of the intended
environment to evidence that the invention actually works for its intended
purpose. “[P]roof of actual reduction to practice requires a showing that ‘the
embodiment relied upon as evidence of priority actually worked for its
intended purpose.’” DSL Dynamic Sciences Ltd. v. Union Switch & Signal,
Inc., 928 F.2d 1122, 1125 (Fed. Cir. 1991), quoting Newkirk v. Lulejian, 825
F.2d 1581, 1582 (Fed. Cir. 1987). “On the other hand, tests performed
outside the intended environment can be sufficient to show reduction to
practice if the testing conditions are sufficiently similar to those of the
intended environment.” Id. at 1125. For these reasons, we agree with the
Examiner that the 131 Declaration is insufficient to remove Kang as a
reference. As such, we turn to the substance of the rejection.

KSR is cited:

This explanation provided
by the Examiner is based on rational underpinnings. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).

have not asserted or provided evidence to show that application of Nair’s
filter condition technique to a heat pump system such as the system of Gay
would have been beyond the level of skill of one of ordinary skill in the art.

In re Lovin is cited:

Rather, Appellants’ argument amounts to a recitation of
the claim elements and a “naked assertion” that the elements are not found in
the prior art. Such statements do not constitute a separate argument for
patentability of claim 11 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”). As such, claim 11 falls with claim 7.