Patent Law

Junk Examination

By Gary Odom and Jordan Kuhn

To characterize USPTO examination quality over the past 20 years as uneven would be a complimentary understatement. 'Good enough for government work' would be more like it, with 'shoddy' pithily on-point. In the 1990s the PTO granted reams of junk patents, creating a political firestorm as the junk hit the litigation fan. In the past few years, the reaction by a politicized patent office has been a sphincter of parsimony: not granting patents for deserved inventions. Herein a case in point.

In re Robert Skvorecz (CAFC 2008-1221) precedential

The Skvorecz invention is a wire chafing stand, such as is used for supporting a chafer (a device for maintaining hot food outside the kitchen). The specification explains that wire chafing stands are transported and stored nested together in multiple units, and that the nested stands tend to wedge into one another and are then difficult to separate. The invention is an improved structure whereby nested stands are readily separated.

Skvorecz got 5,996,948, but the drawings were wrong, apparently by PTO mistake. The PTO wouldn't let him fix the drawings. There the trouble started, but got a momentum of its own.

Mr. Skvorecz's patent application was filed on January 12, 1998 as a continuation-in-part, and after due examination, on August 12, 1999, the examiner issued a notice of allowability and examiner's amendment. On October 14, 1999 Mr. Skvorecz filed an amendment under 37 C.F.R. §1.312 to correct Figures 12 and 13 in the patent application, for which the PTO had prepared final drawings, as the rules provide. He explained: "The offsets 42 were drawn backwards by the Examiner in Figures 12 and 13 and therefore need to be corrected to properly conform to the specification so as to facilitate the nesting of one wire chafing stand into another." Mr. Skvorecz stated that "[t]he correction is necessary to conform the drawings to the description and claims," but that "this is an error limited only to the way the offsets 42 in the upper rim are shown facing the opposite direction" and does not affect the claims or require any changes in the specification. The '948 patent was issued on December 17, 1999 with Figures 12 and 13 unchanged.

On January 20, 2000, the examiner denied Mr. Skvorecz's request to correct the drawings, with the explanation: "Proposed new figure changes appear to include new matter not originally disclosed."

So Skvorecz filed a reissue application.

No changes were made in the specification or drawings. During the reissue examination, claim 6 was allowed and is not before us. The reissue examiner rejected claims 1-5 and 7 as being an improper recapture of surrendered subject matter; the Board reversed this rejection, which is not before us.

The reissue examiner rejected claims over prior art (Buff). The appeals board gratuitously tacked on indefiniteness (§112 ¶2) and failing the written description requirement (§112 ¶1) for some claims. Hence Skvorecz had to take it the CAFC.

The PTO gets the benefit of the doubt.

The PTO is governed by the Administrative Procedure Act (APA), and the rulings of its tribunals receive the APA standard of judicial review. Dickinson v. Zurko, 527 U.S. 150, 155 (1999) (applying the APA to the PTO). Thus on appeal we give plenary review to the Board's legal conclusions, and review its findings of fact to determine if they are arbitrary, capricious, or unsupported by substantial evidence. 5 U.S.C. §706(2). Substantial evidence is "such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consolidated Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).

Anticipation, 35 U.S.C. §102

A rejection for "anticipation" means that the invention is not new. Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference. See Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (anticipation requires that the identical invention is described in the reference); Glaverbel Societe Anonyme v. Northlake Mktg. & Supply, Inc., 45 F.3d 1550, 1554 (Fed. Cir. 1995) (same). Anticipation is a question of fact, and is reviewed accordingly. Glaverbel, 45 F.3d at 1554.

Supreme stubbornness at the patent board. Familiar to patent prosecutors nationwide as an inflamed version of examiner stubbornness.

Mr. Skvorecz argues that his device is not the same as that of Buff, and that his claims require that each wire leg has a laterally displacing offset, while the Buff wire leg 48 does not have an offset that laterally displaces the leg from the rim. The Board agreed that "Buff's offset in the rim was not shown to be 'for laterally displacing each wire leg relative to said upper rim' as required by claim 1," but nonetheless maintained the rejection. On rehearing the Board stated that Buff's wire 48 is a "transverse member" and not a wire leg, and therefore that it need not have a displacing offset. Mr. Skvorecz states, and we agree, that Buff's wire 48 is a leg of the Buff structure. The Board's contrary statement is unsupported by any evidence.

It gets worse. The patent board feigned ignorance of the legal definition of "comprising."

The PTO now presses the theory that claim 1 is anticipated because it can be construed to include wire legs without offsets, because the claim uses the open-ended transition term "comprising."2 The PTO argues that because the signal "comprising" is open-ended, not every wire leg is required by claim 1 to include offsets. The PTO states that the usage "comprising" permits the Skvorecz structure to include legs without offsets, although claim 1 states that "said wire legs" and "each wire leg" have offsets. Thus the PTO argues that even if claim 1 were construed to require that every wire leg has an offset, the Buff patent shows offsets 52 that laterally displace wire leg 49, apparently arguing that it is irrelevant whether Buff's wire leg 48 has an offset. Thus the Board held that claim 1, when given its broadest interpretation, reads on the Buff structure and thus is anticipated.

The PTO has not correctly construed the signal "comprising." This signal simply means that the device may contain elements in addition to those explicitly mentioned in the claim. See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007) ("In the patent claim context the term 'comprising' is well understood to mean 'including but not limited to.'"). The Board erred in holding that some wire legs of the Skvorecz device, as claimed, need not have an offset, when the claims state that each wire leg has an offset.

The protocol of giving claims their broadest reasonable interpretation during examination does not include giving claims a legally incorrect interpretation. This protocol is solely an examination expedient, not a rule of claim construction. Its purpose is to facilitate exploring the metes and bounds to which the applicant may be entitled, and thus to aid in sharpening and clarifying the claims during the application stage, when claims are readily changed. See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007); In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). As explained in the Manual of Patent Examining Procedure (MPEP) at §2111, entitled "Claim Interpretation; Broadest Reasonable Interpretation," "Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified."³ This practice may also be useful in reissue examination. See In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983).

³ Although, the MPEP "does not have the force of law or the force of the rules of Title 37 of the Code of Federal Regulations," MPEP Foreword (8th ed., rev. 7, Aug. 2008), it "is made available to the public and . . . describe[s] procedures on which the public can rely." Patlex v. Mossinghoff, 758 F.2d 594, 606 (Fed. Cir. 1985).

The signal "comprising" does not render a claim anticipated by a device that contains less (rather then more) than what is claimed. Here the examination expedient of "broadest reasonable interpretation" was incorrectly applied to interpret "comprising" to mean that not all the Skvorecz wire legs need have offsets, despite the claims that state that "each wire leg" has an offset. The Buff device does not have an offset located in each wire that serves as a leg to support the device... Anticipation cannot be found, as a matter of law, if any claimed element or limitation is not present in the reference. The "anticipation" rejection is reversed.

Indefiniteness, §112 ¶2

35 U.S.C. §112 ¶2 states:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

The MPEP at §2173.02 ("Clarity and Precision") states that the "focus during the examination of claims for compliance with the requirement for definiteness of 35 U.S.C. [§]112, second paragraph is whether the claim meets the threshold requirements of clarity and precision, not whether more suitable language or modes of expression are available."

The MPEP states:

Definiteness of claim language must be analyzed, not in a vacuum, but in light of:
(A) The content of the particular application disclosure;
(B) The teachings of prior art; and
(C) The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made.

Id.

The Board found lack of antecedent basis in a phrase, rendering a claim indefinite.

Mr. Skvorecz points out that reissue claim 5 is identical to claim 5 as issued in the original patent, and that the terms now criticized by the Board were not deemed indefinite by any examiner.

Further, the phrase had specification support, Skvorecz argued.

MPEP §2173.05(e), entitled "Lack of Antecedent Basis," states: "There is no requirement that the words in the claim must match those used in the specification disclosure," and "Obviously, . . . the failure to provide explicit antecedent basis for terms does not always render a claim indefinite." MPEP §2173.02 states: "Some latitude in the manner of expression and the aptness of terms should be permitted even though the claim language is not as precise as the examiner might desire." We agree with Mr. Skvorecz that the clause "welded to said wire legs at the separation" does not require further antecedent basis in claim 1, for a person skilled in the field of the invention would understand the claim when viewed in the context of the specification.

[T]he rejection on the ground of indefiniteness is reversed.

Written Description, §112 ¶1

The written description requirement is set forth in 35 U.S.C. §112, ¶1:

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

A purpose of the written description requirement is to provide the public with knowledge of the patented technology, thereby to advance the useful arts. The description of the invention provides the foundation for the scope and content of the claims, and serves to demonstrate that the applicant is in possession of the invention that is claimed. In fulfillment of these purposes, the applicant may employ "such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention." Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). The form and presentation of the description can vary with the nature of the invention; compliance with the written description requirement is a fact-dependent inquiry. In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996).

PTO spite in full flower.

The PTO argues that the claim element "a plurality of offsets located . . . in said first rim" is not described in the specification, and is described only in the proposed correction to Figures 12 and 13, which the examiner refused to enter.

Mr. Skvorecz states that his unsuccessful request to change Figures 12 and 13 was not new matter but merely to correct an immaterial feature of offset orientation.

Figures 12 and 13 do show such offsets in the rim. However, the PTO argues that Figures 12 and 13 are partial figures, and do not show every leg's offsets and their displacement. However, the full structure is shown in other drawings of the various embodiments, in full structure (such as Figures 1 and 7) and partial structure (such as Figures 10 and 11). See In re Wright, 866 F.2d 422, 426 (Fed. Cir. 1989) (the specification as a whole must be considered). A skilled artisan would readily understand Figures 12 and 13 as partial structures showing detail of the offsets. "An applicant's disclosure obligation varies according to the art to which the invention pertains." In re Hayes Microcomputer Products, Inc. Patent Litig., 982 F.2d 1527, 1534 (Fed. Cir. 1992). A person skilled in the mechanical arts would understand the specification including the drawings as showing the offsets and the lateral displacement of each wire leg. The Board's finding that the written description requirement is not met is unsupported by substantial evidence, and is reversed.

Reversed and remanded.

Full post as published by The Patent Prospector on September 04, 2009 (boomark / email).