© 2009, Michael E. Kondoudis

Post Bilski, only methods “tied to a particular machine or apparatus” or that “transform a particular article into a different state or thing” remain patent-eligible.  One option to satisfy this “machine-or-transformation test” is to define a method so that it is tied to a device.

An efficient way to accomplish this is to tie a single operation of the claimed method to a device.  And, according to the BPAI, in the case of a computerized method, this may be accomplished merely by reciting the output of a solution from the system.  That’s right.  In Ex Parte Dickerson, a final decision issued by the Board earlier this month, a § 101 rejection of the following claim was reversed:

23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising:

first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day;
assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service;

assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric;

after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry;

identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and

outputting the solution from the computer system.

The Board’s rationale:

“We find that claims 23, 29 and 30 a computerized method which includes a step of outputting information from a computer (FF 7 and 9-10) and therefore, are tied to a particular machine or apparatus.”

My question to you, the readers of this blog, is could satisfying § 101 be this simple?  And, if not, what other strategies have you found effective?  Please leave a comment if you have a successful strategy to share in a follow up post.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Add this blog to your Technorati favorites

Share This

© 2009, Michael E. Kondoudis

As several patent blogs have recently discussed, the backlog at the Board of Patent Appeals and Interferences (BPAI) has topped 20 months and shows few signs of decreasing any time soon.  New appeals are being filed at a rate of about 2.5 times the disposal rate.  Also, new rules limiting continuing practice may still be put into effect, which would certainly increase the rate of future appeals.

One way to avoid further extending the time to have an appeal heard is to avoid having to submit an amended appeal brief because the original was deemed non-compliant.  Knowing the requirements set forth in the Rules and the MPEP may not be enough, however.  This is because an appeal brief may fully satisfy each and every requirement set forth in the Rules and the MPEP and still be returned as non-complaint.

Sections 1205 - 1205.03 of the MPEP address appeal briefs.  In those sections, one will find:

    1205 - the Rule governing appeal briefs, 37 CFR 41.37;

    1205.01 - the timing for filing the appeal brief;

    1205.02 - the required content for an appeal brief; and

    1205.03 -  how the Office deals with non-compliant appeal briefs.

Obviously, MPEP § 1205.02 is a good place to start when preparing an appeal brief.   Relying solely on the MPEP and Rule 37 CFR 41.37 may not be advisable, however.

Not widely known is that the USPTO Appeal Center uses an internal checklist to judge whether an appeal brief is compliant (and accepted) or is non-compliant (and returned to the appellant for resubmission).  Following this link to download the Checklist.


A review of the Checklist is illuminating.  For example, it instructs Appeal Center reviewers that an appeal brief should not be held non-complaint merely because:

     1.  the required sections are “not in the order indicated”;

     2.  there is no statement of the real party in interest (because the Office will assume the named inventors are the real part in interest;

     3.  there is no statement of related cases (because the Office will assume that there are no related cases; and

     4.  there is no evidence section (because the Office will assume that that there is no evidence.

The Checklist, however, does much more than just identify various minor deficiencies that do not alone rise to non-compliance.  In fact, a review of the checklist reveals possible additional requirements that are not found in 37 CFR 41.37 or in the MPEP.  The following are a few examples.

Status Identifiers in the Claim Appendix
Item 9 of the Checklist inquires about whether the claims listed in the Claims Appendix are accompanied by status identifiers. MPEP § 1205 and 37 CFR 41.37 only require a claim appendix that includes a clean, accurate version of all pending claims in numerical order, however.   Specifically, 37 CFR 41.37, subsection (c)(1)(iii)(“Status of claims”) only requires:

A statement of the status of all the claims in the proceeding (e.g., rejected, allowed or confirmed, withdrawn, objected to, canceled) and an identification of those claims that are being appealed.

Nonetheless, the Checklist instructs a reviewer to return to the appellant as non-compliant any appeal brief that lacks status identifiers in the Claims Appendix.

Table of Contents
Item 3 of the Checklist inquires about the presence of a table of contents and instructs the Appeal Center reviewer to hold an appeal brief non-compliant if a table or its heading is omitted.  But, neither Rule 41.37 nor the MPEP requires a table.  In fact, MPEP § 1205.02 actually characterizes tables of contents or authority as merely desirable and instructs that an appeal brief may comply with 37 CFR 41.37 even when those tables are absent.

Page Numbering
Item 13 of the Checklist inquires about the page numbering, which is a requirement not found in either the MPEP or Rule 41.37.  Nonetheless, according to the Checklist:

The pages of the appeal brief, including all sections of the appendix, shall be numbered consecutively … beginning  with the first page of the appeal brief, which shall be numbered page 1.

While admittedly imprudent to submit an Appeal Brief without consecutive page numbers, this is not the only formatting requirement that is found in the Checklist but not in the MPEP.

Conclusion
The bottom line, whether supported or unsupported, every appellant needs to be aware of the Checklist and the additional requirements that it appears to impose on appeal briefs.  Ignoring these additional requirements increases the chances that an appeal brief will be returned as non-compliant, which would extend the already lengthy wait for a BPAI decision.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Add this blog to your Technorati favorites

Share This

© 2009, Michael E. Kondoudis

Based on the number of requests I have received since my first post on enablement, I know that many of you have been waiting for this follow up.  The following are a few examples employing the principles I discussed in my earlier post.  A word of caution, as is the case with most technical (non-art) rejections, enablement rejections are usually highly fact specific.  Consequently, there are almost an infinite number of ways to respond to any single enablement rejection.  The following are examples of two basic responses.  

Examples Of Responses To Enablement Rejections

Example 1 - Failure to Make Out A Prima Facie Case – No Analysis of Wands Factors.

The Office Action rejected claim 2 for allegedly failing to satisfy the enablement requirement of the first paragraph of 35 U.S.C. § 112.  This rejection is respectfully traversed.

Applicant respectfully submits that the Office has, by only providing a mere conclusion of nonenablement, failed to satisfy its burden to articulate a prima facie case.  And, without adequate notice of the basis of this rejection, the burden to rebut with evidence and/or argument has not yet shifted to Applicant.

The MPEP repeatedly warns that the Office bears always an initial burden of establishing a prima facie case when making an enablement rejection. (See, e.g., MPEP §§ 706.03, 2164.04).  A prima facie case of nonenablement is only satisfied when the Office establishes a reasonable basis as to why the scope of protection provided by a claim is not adequately enabled by the disclosure. (MPEP § 2164.04)(emphasis added).  This requires that the Office make specific findings of fact, supported by evidence, and then draw conclusions based on those findings of fact.  (MPEP § 2164.04).  This requires, at a minimum, discussion of those Wands factors, reasons, and evidence that lead the Examiner to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (Id.).  Simply put, mere conclusory statements are insufficient to support an enablement rejection and must be based on evidence, not mere opinion.  (MPEP § 2164.05).

It is also well settled that the burden to respond only shifts to an Applicant after the Office has established a prima face case, which requires that the Office: (1) weigh all the evidence; and (2) establish a reasonable basis to question the enablement provided for the claimed invention.   (MPEP § 2164.05).

A review of the Office Action reveals only the mere conclusion that “there is no enabling disclosure of an incipient component”.  (Office Action, page 3).  Missing, for example, is any discussion of even a single Wands factor or any indication that any evidence has been weighed, as the MPEP expressly requires.  (MPEP § 2164.01(a)).  Indeed, the rejection is devoid of any evidence or technical reasons as to why the disclosure fails to enable the claimed invention.   Rather, the provided “reason” is a mere conclusion, which the MPEP expressly warns is insufficient to support this rejection. (MPEP §§ 706.03, 2164.05).

The Office’s failure to meet its burden to articulate a “reasonable basis” challenging the enablement of claim 2 alone is fatal to this rejection since Applicant is under no burden to rebut it. (MPEP §§ 706.03, 2164.05). For this reason, this rejection is traversed.

Accordingly, Applicant respectfully requests favorable reconsideration and withdrawal of the rejection of claim 2 under the first paragraph of 35 U.S.C. § 112.

In the event that the Office maintains this rejection, Applicant respectfully requests, in accordance with the principles of compact prosecution, that the Office fully develop the reasons for this rejection by articulating, on the record, those factors, reasons, and evidence that lead it to conclude that the specification fails to teach how to make and use the claimed invention without undue experimentation, or that the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims.  (See MPEP § 2164.04)(emphasis in original).

Example 2 - A Substantive Response

Claim 1 stands rejected under the first paragraph of 35 U.S.C. § 112 as allegedly not being enabled.  Specifically, the Office Action rejected this claim because of the recitation of an outer terminal that restricts an upper movement of a movable portion of a support structure.  (Office Action, page 2).  This contention is respectfully traversed for at least the following reasons.

The enablement requirement of § 112 is satisfied when an application describes a claimed invention in a manner that permits one of ordinary skill to practice it, without undue experimentation. (MPEP § 2164.01).   Thus, the mere fact that experimentation might be required is insufficient to support an enablement rejection.  Further, even complex experimentation is not necessarily undue.  (MPEP § 2164.01).

Applicant respectfully submits that no experimentation is required to make and use the invention of claim 1.  Nonetheless, even if experimentation might be required, it would not be undue.  In this regard, it is important to be mindful that the question of enablement is one of predictability in view of what is known in the art.  Consequently, the amount of guidance or direction needed to satisfy the enablement requirement is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art.  (MPEP § 2164.03).

The specific question of whether experimentation is “undue” is determined based on the following eight Wands factors:

1. Breadth of the claims;
2. Nature of the invention;
3. State of the prior art;
4. Level of ordinary skill in the art;
5. Predictability of the art;
6. Amount of direction provided in the specification;
7. Any working examples; and
8. Quantity of experimentation needed relative to the disclosure.

(MPEP § 2164.01(a), citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)).  Further, a proper analysis of whether any experimentation is undue requires an analysis of all of the pertinent Wands factors.  (MPEP § 2164.01(a))(emphasis added).  It is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.  (Id.).

Claim 1 is directed to a novel semiconductor substrate.  It is submitted that the level of ordinary skill in the relevant art, the scope of which is not addressed in the Office Action, is relatively high.  In addition, Applicant’s FIGS. 1-3 illustrate an example of the invention of claim 1.  Further, Applicant describes a method of manufacturing the substrate of claim 1, a fact evidenced by the Restriction Requirement imposed by the Office Action mailed on 02/15/2008.  As a result, at least the following Wands factors weigh in favor of enablement:

  • the state of the prior art;
  • the level of ordinary skill in the art; and
  • the presence of working examples.

These are not the only Wands factors weighing in favor of enablement, however.

Attention is respectfully directed to page 12, lines 13-24 of the present application, which in conjunction with FIG. 1(B), explains:

When it is not necessary to seal the movable structure 15 in a closed space, the first sealing portion 20 may be formed of a plurality of first sealing portions 20a arranged in a comb shape with gaps as shown in FIG. 2(B). In this case, each of the first sealing portions 20a has a mountain shape having slopes. Each of the first sealing portions 20a individually seals a set of the outer terminal 17, the wiring portion 17a connected to the outer terminal 17, and the electrode pad 18 connected to the wiring portion 17a. As shown in FIG. 1(B), the outer terminal 17 has a height E such that the movable structure 15 is adjustable in the arrow direction A to measure specific acceleration upon mounting.

(Emphasis added).  Thus, Applicant explains that the height of the outer terminal permits vertical adjustment of the movable structure (the A direction in FIG. 1(B)).  This at least implies restricting movement.  Consequently, the following Wands factors also favor enablement:

  • such as quantity of experimentation needed relative to the disclosure; and
  • the amount of direction provided in the specification also favor enablement.

In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would be able to make and use the claimed invention, despite any experimentation that might be required.  Applicant further submits that this conclusion is buttressed by the amount of knowledge in the state of the art as well as the predictability of the art, as well as the majority of Wands factors that weigh in favor of enablement.  Therefore, the present application adequately enables the claimed invention.

Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

Add this blog to your Technorati favorites

Share This