Thursday, September 9, 2010

BPAI finds that reading "end" on "midpoint" is unreasonable (Ex parte Szymbor)

Takeaway: The Applicant claimed two opposed ends of a bristle. The Examiner used a reference with a U-shaped bristle, and read one of the ends on the midpoint of the bristle, where it bent in half. The Board found that interpreting a midpoint as an "opposed end" was "unreasonable" and "contorts the ordinary and customary meaning as understood by a person having ordinary skill in the art." (Ex parte Szymbor.)

Details:
Ex parte Szymbor
Appeal 2009011926, Appl. NO. 10/104,337, Tech. Center 3600
Decided August 24, 2010

The subject matter of the patent application was a seal for a gas turbine engine, used to prevent gas from escaping through a gap between stationary and rotating parts. This type of seal, known as a "brush seal,"  includes packs of wire bristles sandwiched between plates.

One of the claims on appeal read:
12. A brush seal, comprising: a bristle arrangement, including:
a plurality of bristles, each of said bristles having a first end and an opposed second end; and
plates receiving said bristles therebetween, each of said plates having a first end and a second end;
wherein said first ends of said bristles extend past said first ends of said plates and said second end of said bristles resides between said first and second ends of said plates.

One of the Applicant's arguments was about the "first end" and "second opposed end" limitations. As is common, the underlying issue was really claim construction.

The reference used by the Examiner is shown below, where bristles 2 are bent in half around, and retained by, ring 8.

Specifically, the Examiner read the claimed "first end" on the portion of the bristle 2 which contacted the sealing surface 20. The Examiner read the "second end" on the portion of the bristle which is retained by the ring 8. The Examiner explained this interpretation as follows:
[E]nd is defined by a boundary marking extremities of something, the boundary of the bristles in Reisenger et al. is the second end marking the extremity of the bristle arrangement.
Having interpreted "ends" to be top and bottom portions of the bristle, the Examiner then found that the top portion ("second end") was "opposed" to the bottom portion ("first end").

The Applicant argued that the ends of the bristle were those portions that contact the sealing surface 20, and that these portions were aligned rather than opposed. The Applicant cited to a portion of the reference which read: "The ends of the wire bundle 2 extend in parallel and radially toward the inside to thus form a sealing element which slides on a sealing surface 20 ..."

The Board used dictionary definitions of "opposed" and "end" to interpreted "opposed second end" as "the extreme or last part of the bristle in opposition or contrary to its first end." The Board then found that the Examiner's interpretation of "second end" as the midpoint of the bristle 2 (where the bristle 2 wraps around the ring 8) was "unreasonable" and "contorts the ordinary and customary meaning as understood by a person having ordinary skill in the art."

My two cents: This seems like another case where the Examiner designated arbitrary portions of a structure to meet the claim limitation. The Examiner's definition of "end" closely tracked the Board's definition -- extremity. But a wire has two recognizable ends, and bending the wire in half doesn't make the midpoint into an end.

It occurred to me that the two real ends of the U-shaped bristle actually are opposed to each other. So why did the Examiner use this tortured reading of end as midpoint? My guess is using the natural interpretation of "ends" does meet the "opposed" limitation, but in doing so one or more of the other claim limitations isn't met.

Related Posts: Other posts discussing arbitrary delineation of structures by the Examiner are here and here.

14 comments:

  1. "The Board then found that the Examiner's interpretation of "second end" as the midpoint of the bristle 2 (where the bristle 2 wraps around the ring 8) was 'unreasonable' and 'contorts the ordinary and customary meaning as understood by a person having ordinary skill in the art.'"

    LOL

    More outstanding quality examination.

    But according to 6tard all you gotta do is make a 10 minute phone call. Cuz everybody knows that a 10 minute phone call with somebody who can't even reasonably interpret the word "end" without contorting it's meaning beyond recognition would save $10k and 2 years.

    Of course, what 6tard fails to appreciate is that 2 other "quality assurance" types at the PTO looked at this ridiculous interpretation and said, "Hur, looks reasonable to us."

    Pick up that phone, y'all!!! Start dialing!!!!!

    ROFLMAO

    Hey 6tard, how's that business plan of yours going? You know the one I mean. The one where you were going to get law firms to pay you $20k for each application that you recommended the client abandon.

    BWWWAAAAAHHHHHHAAAAAHHHHHAAAAAHHHHHAAAAA!!!!!!!!!!!!!!

    ReplyDelete
  2. pong, JD, or whoever you are, why don't you leave that nonsense over at Patently-O?

    ReplyDelete
  3. I did not say that it would work in every single situation JD. And it appears that in this particular situation there was a legitimate disagreement. Both sides fully understood what the other was saying and responded thereto.

    While I personally probably would not have made this rejection I don't see it as completely unreasonable. And just because they used the language "not reasonable in light of the specification" in the decision doesn't mean the board thinks it was completely unreasonable either. They just simply think that the more reasonable approach is to view it the other way. And that's fine. I probably do too.

    "Of course, what 6tard fails to appreciate is that 2 other "quality assurance" types at the PTO looked at this ridiculous interpretation and said, "Hur, looks reasonable to us.""

    One of the BPAI judges did not agree with the majority either, and thus it appears would have found that reasonable. He apparently had other reasons to object to the rejection but that's besides the point.

    "It occurred to me that the two real ends of the U-shaped bristle actually are opposed to each other"

    My thoughts exactly. Did you check if the application was public so you can see the appeal brief?

    I also note that an amendment that, according to these guys wouldn't change the scope of the claim as written would be easily inserted to overcome the examiner's "unreasonable" interpretation and have saved them 10k$ and a few years on at least claim 12. They likely knew that, but figured they were going to the board anyway for other claims may as well toss that one in.

    "Hey 6tard, how's that business plan of yours going? You know the one I mean. The one where you were going to get law firms to pay you $20k for each application that you recommended the client abandon. "

    That's my business plan? I think that sounds more like your characterization of a business plan I once suggested. Although, I do like your suggested business plan. If you can get me in on that action let me know.

    ReplyDelete
  4. >>"It occurred to me that the two real ends
    of
    >>the U-shaped bristle actually are opposed
    to
    >>each other"
    >
    >My thoughts exactly. Did you check if the
    >application was public so you can see the
    >appeal brief?

    Yeah, it's public. And I read the portions of the brief and answer relevant to the issue I blogged about.

    I just don't feel like reading the rest of the brief/answer and the references in order to answer the question "which limitation is not taught by the ref if end takes it's natural meaning".

    ReplyDelete
  5. >just because the Board used the language >"not reasonable in light of the
    >specification" in the decision doesn't mean
    >the board thinks it was completely >unreasonable either.

    Actually, it seems pretty clear to me that the Board found the Examiner's interpretation "completely unreasonable". Because they said the Examiner's interpretation "contorted the ordinary meaning". That sounds like "completely unreasonable to me".

    Regardless, the standard is Reasonable = Not Unreasonable. That is, the Examiner loses even when he's "merely" UNreasonable rather than "completely" UNreasonable.

    ReplyDelete
  6. >[amendment] could be easily inserted to
    >overcome the examiner's "unreasonable"
    >interpretation

    Yep, the Examiner did made his claim interpretation clear before appeal. So amending was an option.

    I contrast this with other cases I've seen where the Applicant doesn't figure out until the Answer that the real issue is claim construction. At that point, the extra cost of filing an RCE to make a claim amendment may be a factor. That, and telling your client that they paid for Notice + Brief + RCE rather than simply an RCE because you didn't realize until late in the game what the underlying issue was.

    ReplyDelete
  7. "Actually, it seems pretty clear to me that the Board found the Examiner's interpretation 'completely unreasonable'. Because they said the Examiner's interpretation 'contorted the ordinary meaning'. That sounds like 'completely unreasonable' to me."

    LOL

    Remember, you're trying to persuade 6tard. He reads a Board decision that finds the examiner's interpretation "contorts" the ordinary meaning of a term and he concludes, "Hur, just because they used the language 'not reasonable in light of the specification' in the decision doesn't mean the board thinks it was completely unreasonable either." He has the perfect reading comprehension level for the job he's in.

    6tard must not be one of those examiners you can persuade with a ten minute phone call. Is it even possible to persuade somebody who is so invincibly ignorant he thinks there's a sliding scale of unreasonable claim interpretation that is acceptable?

    ReplyDelete
  8. "Yep, the Examiner did made his claim interpretation clear before appeal. So amending was an option."

    And the option of amending around a completely unreasonable claim interpretation is...?

    You claim a flexible member. The examiner rejects with a reference having a rigid member and "reasons" that, "Meh, everything has some degree of flexibility."

    Your options are...?

    ReplyDelete
  9. >And the option of amending around a
    >completely unreasonable claim interpretation
    >is...?

    Oh come on, won't you agree that there are interpretations that, while unreasonable, can be easily overcome with an amendment?

    But yeah, Flexible = Rigid is not one of them. I'd appeal that one for that very reason. I haven't thought enough about End = Midpoint to know whether amending around that one makes sense.

    I thought of another factor to consider. If the Examiner is ridiculously unreasonable about Flexible = Rigid or End = Midpoint, I'd worry that he'll be equally unreasonable about interpreting the amended language.

    So maybe that's an argument for appealing, rather than amending, in the face of ridiculously unreasonable interpretations.

    ReplyDelete
  10. "Oh come on, won't you agree that there are interpretations that, while unreasonable, can be easily overcome with an amendment?"

    In an ideal world, no I would not agree. In a world populated by examiner 6tards, I'd grudgingly agree.

    ReplyDelete
  11. meh I don't know, I didn't read anything but part of your summary and a snippet of the decision itself. You guys like to go on and on about simple claim construction nonsense, 103's etc. I find them rather boring topics myself.

    In any event, like I said, the one APJ didn't agree with it being all that unreasonable, so I doubt if it is quite so clear as JDtard would like it to be.

    Besides, Broje seems to be saying at PO that this is her case. I see now why there is such an issue, an easy amendment was, she asserts, stonewalled by the examiner. If I had to guess, she just sucks at making up the right language because this case is roflbabycakes to fix to be completely unambiguously not be the "end" interpretation that the examiner is using.

    ReplyDelete
  12. "Oh come on, won't you agree that there are interpretations that, while unreasonable, can be easily overcome with an amendment?"

    Yes, when the reference is completely unlike the claimed invention, it's pretty easy to amend the claim to overcome a rejection based on an unreasonable claim interpretation. But if the invention is the slightest bit important to the client, I think it's usually a bad idea. Adding limitations and qualifiers obviously further narrows the claims, perhaps in unanticipated ways. Why do that when the Office's position is unreasonable. Then there's prosecution history estoppel. Because the examiner is being unreasonable (by definition), there's a good chance that you haven't seen the best art yet. I'm really loathe to amend the claims unless I'm really working against a plausible rejection.

    For what it's worth, I can get an appeal of a completely unreasonable construction to the Board for considerably less than $10K. Not much I can do about the 2 years. Sooner or later, though, PTO management is going to have to do something to convince the supervisory examiners to stop letting nonsense clog up the appeal process.

    ReplyDelete
  13. >Adding limitations and qualifiers obviously
    >further narrows the claims, perhaps in
    >unanticipated ways. Why do that when the
    >Office's position is unreasonable.

    I hear you. I wasn't *advocating* amending in the face of an unreasonable claim construction -- just pointing out that sometimes it's an easy option. Then again, sometimes it's not.

    >Because the examiner is being unreasonable
    >(by definition), there's a good chance that
    >you haven't seen the best art yet.

    Good point.

    In the end, the appropriate course of action comes down to what your client's goals are.

    ReplyDelete
  14. >You guys like to go on and on about simple
    >claim construction nonsense, 103's etc.
    >I find them rather boring topics myself.

    Huh. I'd say the most interesting lessons to learn in patent prosecution come in the areas of claim construction and obviousness. At least for prosecutors.

    Really, the main lesson to learn in claim construction is: it is an issue, and it's almost always dispositive of the particular rejection.

    From reading a ton of file histories since I started blogging, it's clear to me that a lot of Applicants don't realize claim construction is the real issue. They seem to think the Examiner is just dense about what the reference teaches. But that's usually not the case at all -- once you see what the Examiner's position is on claim construction, his reading of the reference makes sense.

    ReplyDelete