Recent BPAI Decisions

  • Chief Judge FlemmingPrecedential:
  • Ex parte Ghuman, Appeal No. 2008-1175 (BPAI May 1, 2008)(rejected claims that are not appealed are considered withdrawn and subject to cancellation by examiner).
  • Ex parte Fu, Appeal No. 2008-0601, 2008 WL 867826 (BPAI March 31, 2008) (applying KSR to find it obvious to substitute one species for its genus where the genus contains a limited number of species).
  • Ex Parte Nehls, Appeal No. 2007-1823, 2008 WL 258370 (BPAI January 28, 2008) (“substantial” and “specific” utility).
  • Ex parte Letts, Appeal No. 2007-1392, 2008 WL 275515 (BPAI January 31, 2008) (applicant may not conditionally withdraw a claim on appeal).
  • Informative:
    • Ex parte Wasynczuk (BPAI June 2, 2008) (Computer method claims were patentable subject matter because they “recite a process that employs one of the other statutory categories.” On the other hand, the “computer implemented system” claims were not patentable subject matter because they did not recite a “particular machine implementation”.)
    • Ex parte Langemyr (BPAI May 28. 2008) (mathematical manipulations of data do not become eligible subject matter even when performed on a computer and outputted to a display).
    • Ex parte Kim (BPAI May 29, 2008) (indefiniteness rejection affirmed; PTO will not assume a particular meaning of claim terms without some factual or rational basis).

    14 thoughts on “Recent BPAI Decisions

    1. 14

      Regarding the large but finite genus, is it possible this has to do with the way some discoveries are made nowadays? For example, you come up with possible drug candidates by making literally millions of compounds, each with small variations, and testing each one to find promising ones. In these kinds of circumstances, perhaps the BPAI wants to be able to say the drug candidate that was found is obvious.

    2. 13

      There’s an In re Jones (potentially infinite genus”) which may have been lurking in the back of their minds.

    3. 12

      –There are two conclusions in this statement. (1) the genus is “large but finite” and (2) Yamamoto provides “no preference for a particular class [of surfactants]”. If they were distinguishing Baird because there was no “preference” in the Yamamoto reference, fine. But then why is there a need to make the first half of the statement?–

      Conclusion (1) is made to show the decision is within the scope of KSR.
      Conclusion (2) is made to distinguish Baird.

      –Where in In re Icon does it support your statement: “’pick this species’ is not the same as stating ‘don’t pick that species.’?”–

      This is paraphrasing the idea, not an actual statement in the case. The MPEP lists various cases in Sections 2123(II) and 2141.02(VI). Paraphrasing their content, preferred embodiments do not teach away from nonpreferred embodiments.

    4. 11

      Ticky washy – Where in In re Icon does it support your statement: “’pick this species’ is not the same as stating ‘don’t pick that species.’?”

      pointillist – I agree that the BPAI distinguished the facts in Fu from Baird by on the basis that “the disclosure [in BAIRD] indicates a preference leading away from the claimed compounds” (and the disclosure in In re Fu does not).

      I also agree that the BPAI in In re Fu didn’t characterize the prior art in In re Baird as disclosing a “finite” genus.

      My point is, at page 17 of In re Fu, the BPAI makes this statement: “Yamamoto discloses a genus of perfluoroalkyl surfactants constituting a large but finite number of surfactants with no preference for a particular class.” There are two conclusions in this statement. (1) the genus is “large but finite” and (2) Yamamoto provides “no preference for a particular class [of surfactants]”. If they were distinguishing Baird because there was no “preference” in the Yamamoto reference, fine. But then why is there a need to make the first half of the statement? This language will only lead to mischaracterizations.

      I am just waiting to get a rejection from an Examiner, in response to my argument with citation to Fujikawa v. Wattanasin, that uses In re Fu to stand for the proposition that a “large” genus can be “finite”. I can see a rejection where “The prior art genus may encompass millions of compounds. A large genus, however, can still be finite thus rendering obvious applicant’s selection of its claimed species even without a preferential disclosure of specific species. See In re Fu.”

    5. 10

      “Ex parte Nehls (101 Biotech) Unlike other people on this board, I won’t pretend to be knowledgeable on a subject when I not.” pds

      This comment prompted me to look at the finding (since I am in biotech)
      IMHO:
      – This finding is consistent with Fisher, which is good because the compounds are similar (‘short’ nucleotide sequences obtained by high-throughput means); and,
      – Re: 101 both Fisher & Nehls look like good findings, the applicants basically tried to argue utility using the basic qualities/characteristics/functions all nucleic acids have (i.e., not specific).

    6. 9

      pds:

      The difference between the claims in Langemyr and Wasynczuk is that both example claims in Langemyr (determined to be non-statutory) only recite physical limitations in the preambles, whereas Wasynczuk’s claim 9 (determined to be statutory) recites physical limitations in its body. Wasynczuk’s claim 1 (determined to be non-statutory) only has physical limitation(s) in its preamble.

      FWIW

    7. 8

      –How does the Board reach its conclusion that in In re Baird, the “large number of different phenols” was not ‘finite,’ but the perfluoroalkyl surfactant genus constitutes a “large but ‘finite’ number” when the Board didn’t bother to identify how many surfactants would be part of the perfluoroalkyl genus?–

      It doesn’t look like they made the conclusion that the number of phenols in Baird was not finite. Rather, they distinguished Baird on the basis that the reference in Baird taught away, so that it would not be obvious to try.

    8. 7

      “Do I understand the Board’s logic correctly?”

      No. The BPAI and Federal Circuit have generally said that “teaching away” occurs when the reference tells you not to pick the species. Stating “pick this species” is not the same as stating “don’t pick that species.” See e.g. In re ICON Health and Fitness Inc., 83 USPQ2d 1746 (Fed. Cir. 2007).

      One problem with the BPAI’s reasoning is that I think they took the word “finite” literally. So if your genus is, say 2 billion compounds, it’s a finite genus, even though in reality there’s no way that reference teaches or suggests every single one of the members of that genus.

      Interestingly, case law says that even naming every member in a genus will not constitute a written description of each member. Fujikawa v. Wattanasin, 39 USPQ2d 1895 (Fed. Cir. 1996). This seems like it should somehow count against the reference, but it doesn’t.

      That being said, I can see how the result may have been proper in this case. The reasoning is just too broad.

    9. 5

      “Do I understand the Board’s logic correctly?”

      Don’t try too hard to understand the Board’s logic … I understand being able to understand the Board’s logic can get you committed in 23 States and the Dictrict of Columbia.

    10. 4

      How does the Board reach its conclusion that in In re Baird, the “large number of different phenols” was not ‘finite,’ but the perfluoroalkyl surfactant genus constitutes a “large but ‘finite’ number” when the Board didn’t bother to identify how many surfactants would be part of the perfluoroalkyl genus? See pgs 16 and 17. Oh, becuase they said so.

      I also might add, according to the Board, if the reference disclosure indicates a prefence leading away from the species, the species might not be obvious. So if my reference lists a large (using the Board’s relative term) genus and it also states a preferred species of the genus. By the Board’s definition, the non-preferred species may be patentable.

      Do I understand the Board’s logic correctly?

    11. 2

      Some random comments:

      Ex parte Kim (112 2nd): Looks like it was properly decided. However, I see no reason for the BPAI to label this informative.

      Ex parte Langemeyer (101). Another 101 rejection from the Board that doesn’t mention AT&T when the claim at issue recites a process.

      “As explained supra, the limitation that the method is “executed in a
      computer apparatus” does not tie the method to a “particular machine.” Any
      and all computing systems will suffice, indicating that the claim is not
      directed to the function of any particular machine.”

      Apparently, a computer doesn’t qualify as a “particular machine.” Do they actually think about what they write?

      Ex parte Wasynczuk (101). This time, the BPAI holds that the claims meet 101. If someone could provided a good explanation why Wasynczuk’s claims were OK under 101 but Langemeyer’s claims were not, I would like to see it.

      Ex parte Ghuman … who cares?

      Ex parte Fu (103) obvious to try with finite number of identified, predictable solutions. This is the key finding: “While Yamamoto’s genus of surfactants is arguably broad, it nevertheless consists of only a finite number of known perfluoroalkyl surfactants that predictably solve the dispersion problem of the charge transport agent into the binder resin.”
      I guess that unless the number of possible solutions is infinite, the number is finite. However, I doubt the examiner made the factual finding that the finite number of solutions are capable of predictably solving the problem. A common problem I see with the Board … making findings that aren’t based upon substantial evidence. Instead, the Board’s finding appears to be conclusory.

      Ex parte Henls (101 Biotech) Unlike other people on this board, I won’t pretend to be knowledgeable on a subject when I not.

      Ex parte Letts – The link isn’t right … but I don’t think I would really care about conditionally withdrawing claims on appeal

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