MARCH
UMBARGER 103
The difference between using ROM to store a fixed memory of graphics to be displayed by the gaming machine versus downloading the graphics to be displayed on the gaming machine from a remote location (e.g., server) does not affect the overall principle of operation of Ozaki’s gaming machine. See In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969) (finding In re Ratti, 270 F.2d 810, 813 (CCPA 1959) inapplicable where the modified apparatus will operate “on the same principles as before.”).
LIGHTING WORLD, CCS, Flo Healthcare, MIT 112(6)
When an inventor has not signaled an intent to invoke § 112, sixth paragraph, by using the term “means,” the presumption against its invocation is strong but can be overcome if “the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002) (internal quotation marks omitted) (citation omitted)). A claim limitation that “essentially is devoid of anything that can be construed as structure” can overcome the presumption. Flo Healthcare, 697 F.3d at 1374. The presumption may be overcome by a claim limitation that uses a nonstructural term that is “simply a nonce word or a verbal construct that is not recognized as the name of structure” but is merely a substitute for the term “means for” associated with functional language. Lighting World, 382 F.3d at 1360. Claim language that further defines a term that otherwise would be a nonce word can denote sufficient structure to avoid construction under § 112, sixth paragraph, MIT v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006), as can a claim limitation that contains a term that “is used in common parlance or by persons of skill in the pertinent art to designate structure,” Lighting World, 382 F.3d at 1359.
NASH 103
See In re Nash, 230 F.2d 428, 431 (CCPA 1956) (“[I]t is well settled that the drawings of patent applications are not necessarily scale or working drawings....”); In re Olson, 212 F.2d 590, 592 (CCPA 1954) (“Ordinarily drawings which accompany an application for a patent are merely illustrative of the principles embodied in the alleged invention claimed therein and do not define the precise proportions of elements relied upon to endow the claims with patentability.”) ...
ICON 103
In Icon the court found that:
an inventor considering a hinge and latch mechanism for portable computers would naturally look to references employing other "housings, hinges, latches, springs, etc.," which in that case came from areas such as "a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes." citing Paulsen, 30 F.3d at 1481-82.
In re ICON Health and Fitness, Inc., 496 F. 3d 1374, 1380 (Fed Cir 2007)
FEBRUARY
It has long been held that an intermediate product or article can anticipate a claimed article even if the intermediate product is merely a stage in the final production of a non-anticipatory article. See In re Mullin, 481 F.2d 1333, 1335-6 (CCPA 1973) (an article that is intended and appreciated is no less anticipatory be it an intermediate structure rather than an end use item) (citing In re Herbert, 461 F.2d 1390, 1394 (CCPA 1972)).
“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharmaceutical Inc., 694 F.3d 1344 (Fed Cir. 2012). An express intent to confer on the claim language the novel meaning imparted by the negative limitation is required, such as an express disclaimer or independent lexicography in the written description that provides support for the negative limitation. Omega Engineering, Inc, v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003) (citations omitted).
As such, the Specification does not set forth a definition of “a copy-protection template” to limit the claim term. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (Claim terms are properly construed to include limitations not otherwise inherent in the term when the Specification “clearly set[s] forth a definition of the disputed claim term.”). The exemplary embodiment is, however, an informative example of how to practice their invention.
See also, In re McGuire, 416 F.2d 1322, 1327-28 (CCPA 1969) (“Appellants argue the century-old status of the references but this argument does not impress us, absent some showing that the art tried and failed to solve some problem notwithstanding its presumed knowledge of the references. For aught that appears, as soon as the need for an inside tubing cutter was perceived it was produced out of the accumulated skill of the art.”).
On the evidence of record, we affirm, as the Examiner’s reasoning is consistent with precedent:
While the omission of an element in a combination may constitute invention if the result of the new combination be the same as before, yet, if the omission of an element is attended by a corresponding omission of the function performed by that element, there is no invention if the elements retained perform the same function as before.
Richards v. Chase Elevator Co., 159 U.S. 477, 486 (1895).
In re Heyna, 360 F.2d 222, 228 (CCPA 1966) ("It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected property."). See also McClain v. Ortmayer, 141 U.S. 419, 429 (1891) (conclusive evidence needed to establish new function)
It is Appellant’s responsibility to provide the Board with argument, facts, and reasoning sufficient to justify reversing the Examiner. Cf. OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 707 (Fed. Cir. 2012). The requirement that appellant provide sufficient reasoning applies with equal force to issues of law and issues of fact. See Nazomi Commc’ns, Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1371 (Fed. Cir. 2005).
We disagree with Appellants and note that more than mere silence is required. Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.") Appellants have not identified any reason to exclude the identified limitation.
"When different words or phrases are used in separate claims, a difference in meaning is presumed." Nystrom v. TREX Co., Inc., 424 F. 3d 1136, 1143 (Fed. Cir. 2005)
Appicant's rely upon a holding from Playtex Products, Inc. v. Procter & Gamble Co., 400 F. 3d 901, 908 (Fed. Cir. 2005), wherein the court held that "[t]he disputed claim term [flatten] is clearly a comparative term. Comparison requires a reference point. Therefore, to flatten something, one must flatten it with respect to either itself or some other object."
However the court in Playtex also stated that, "[t]he issue is whether the patentee properly claimed an oval as a "substantially flattened" circle, or more specifically, an elliptical cylinder as a "substantially flattened" cylinder." Playtex v. P.G. 400 F. 3d 901, 909 (Fed. Cir. 2005). We are faced with a similar issue here, and that is did appellants properly claim the "flatten metallic free air ball" in a manner that would distinguish it from the product by process based claim. We find that Appellants did not.
The collection of a blood sample from a patient is a “well-understood, routine, conventional activity previously engaged in by researcher in the field” that is insufficient to transform an abstract idea into an eligible concept. See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S.Ct. at 1294-1298 (“Purely conventional or obvious‟ „[pre]-solution activity‟ is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”); accord Perkinelmer, Inc. v. Intema Ltd., 2012 WL 5861658, *5 (Fed. Cir. 2012) (purely conventional “measuring” steps insufficient to make the claims reciting mental processes and natural laws patent-eligible).
The prior art structure must be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed.Cir.2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id.
The doctrine of claim differentiation "create[s] a presumption that each claim in a patent has a different scope." Comark Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1187 (Fed.Cir.1998). The difference in meaning and scope between claims is presumed to be significant "[t]o the extent that the absence of such difference in meaning and scope would make a claim superfluous." Tandon Corp. v. United States Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed.Cir.1987).
JANUARY
Free Motion Fitness, Inc. v. Cybex Intern., Inc., 423 F. 3d 1343, 1351 (Fed. Cir. 2005)
Contrary to Appellant's argument, "[a] recognition in the prior art that a property is affected by the variable [in question] is sufficient to find the variable result-effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012).
Appellant's argument is further undermined by the legal principle that the discovery of optimum values for recognized result effective variables is ordinarily within the skill of the art. See Applied Materials at 1295.
In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests to one of ordinary skill in the art.”).
In fact, these claims are ambiguous hybrid claims that the Examiner should review for definiteness. See Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d 1331, 1339 (Fed. Cir. 2011) (“reciting both an apparatus and a method of using that apparatus renders a claim indefinite under section 112, paragraph 2”) (internal citation and quotations omitted).
The facts of the present case are not like those in ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344-45 (Fed. Cir. Feb. 2012), in which there was no allegation of criticality or any evidence demonstrating any difference across the prior art range, and in which the prior art contained an example at a point within the prior art range approaching the claimed range.
Providing evidence that is commensurate in scope with the claims
does not mean that an applicant is required to test every embodiment within the scope of his or her claims. If an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is commensurate with [the] scope of the claims.
In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011).
“Enablement of prior art requires that the reference teach a skilled artisan to make or carry out what it discloses in relation to the claimed invention.” In re Antor Media Corp., 689 F.3d 1282, 1290 (Fed. Cir. 2012).
Our reviewing court has on several prior occasions interpreted the term “integral” to cover more than a unitary construction. See, e.g., In re Dike, 394 F.2d 584, 589, (CCPA 1968) and Advanced Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1074 (Fed.Cir.1989) (nothing of record limited “integral” to mean “of one-piece” construction).
The Federal Circuit recently reiterated the well-established principle that “it is not proper to import from the patent’s written description limitations that are not found in the claims themselves.” Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367, 1375 (Fed. Cir. 2012).
“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009).
Although it is acknowledged that patent eligibility under § 101 is a course filter and that disqualifying abstractness of a claim must be manifest, that does not compel a conclusion that there is never a valid basis to hold that a claim is simply too abstract to qualify as patent eligible. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011); see also Research Corp. Techs, Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) and Classen Immunotherapies, Inc. v. Biogen Idec et al., 659 F.3d 1057 (Fed. Cir. 2011).
Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) (“Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.”).
See In re Huai-Hung Kao, 639 F.3d 1057, 1072-73 (Fed. Cir. 2011) (“Just as in King Pharmaceuticals, the informing step does not ‘transform[ ] the process of taking the drug.’” (quoting King Pharm., 616 F.3d at 1279)).
Rather, "[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." GENENTECH, INC v. NOVO NORDISK, A/S, 108 F.2d 1361, 1366 (Fed. Cir. 1997) accord Automotive Technologies International v. BMW of North America, 501 F. 3d 1274, 1283 ("Although the knowledge of one skilled in the art is indeed relevant, the novel aspect of an invention must be enabled in the patent.")
“An expert opinion is no better than the soundness of the reasons supporting it.” Perreira v. Secretary of the Dept. of HHS, 33 F.3d 1375, 1377 (Fed. Cir. 1994);
“Section 112 requires that the patent specification enable ‘those skilled in the art to make and use the full scope of the claimed invention without ‘undue experimentation”’ in order to extract meaningful disclosure of the invention and, by this disclosure, advance the technical arts. Koito Mfg. Co., Ltd. v. Turn-Key-Tech, LLC, 381 F.3d 1142, 1155 (Fed. Cir. 2004) (quoting Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed.Cir.1997) (citation omitted)).
However, post-filing evidence may be used to demonstrate unexpected results.
Genetics Institute v. Novartis Vaccines, 655 F. 3d 1291 - Court of Appeals, Federal Circuit 2011 cert. denied, 132 S.Ct. 1932, 182 L.Ed.2d 775 (U.S. 2012)