Look at the Context, Sometimes “A” means “A”

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In In re Varma, [2015-1502, -1667] (March 10, 2016) the Federal Circuit reversed the PTAB’s cancellation of claims of U.S. Patent No. 6,349,291 in two inter partes reexamination proceedings. in one of the proceedings, the construction of ““a statistical analysis request corresponding to two or more selected investments” was at issue.  The Board held that this phrases embraces a request that calls for a statistical analysis of a single investment.  The Federal Circuit noted that the Board relied on the claims’ use of “comprising” as the transitional term, but found that this did not support the Board’s construction.  The Federal Circuit said that although the transitional term “comprising” indicates that the claim is open-ended, the term does not render each limitation or phrase within the claim open-ended.  The Federal Circuit explained:

“Comprising” means that the claim can be met by a system that contains features over and above those specifically required by the claim element, but only if the system still satisfies the specific claim-element requirements: the claim does not cover systems whose unclaimed features make the claim elements no longer satisfied.

 

The Federal Circuit also noted that the Board cited the indefinite article “a” before “statistical analysis request” to support its interpretation. However the Federal Circuit said that while “a” sometimes is non-restrictive as to number, permitting the presence of more than one of the objects following that indefinite article, context matters even as to whether the word has that meaning.  The Federal Circuit said the question is not whether there can be more than one request in a claim-covered system: there can. Rather, the question was whether “a” can serve to negate what is required by the language following “a”: a “request” (a singular term) that “correspond[s]” to “two or more selected investments.” The Federal Circuti said that it cannot. The Federal Circuit observed “For a dog owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs, each able to perform just one of the tasks.

The Federal Circuit held that the Board applied an unreasonably broad interpretation, and remanded the applications to be reconsidered in light of the proper claim construction.

Know When to Fold ‘Em — Games are Unpatentable Abstract Ideas

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In In re Smith, [2015-1664] (March 10, 2016) the Federal Circuit affirmed the rejection of claims in Smiths’ application for claiming patent-ineligible subject matter under 35 U.S.C. § 101, because the claims cover only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards.

The Federal Circuit applied the now-familiar two-step test introduced in Mayo, and further explained in Alice, first determining whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea, and second examining the elements of the claim to determine whether it contains an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.  On the first step, the Federal Circuit concluded that the claims, directed to rules for conducting a wagering game, compare to other fundamental economic practices found abstract by the Supreme Court.  The Federal Circuit agreed with the Board that a wagering game is, effectively, a method of exchanging and resolving financial obligations based on probabilities created during the distribution of the cards, and the Supreme Court has held that a method of exchanging financial obligations was drawn to an abstract idea.  The Federal Circuit also noted its own cases have denied patentability of similar concepts as being directed towards ineligible subject matter.

As to the second step, the Federal Circuit noted that abstract ideas, including a set of rules for a game, may be patent eligible if they contain an “‘inventive concept’ sufficient to transform the claimed abstract idea into a patent-eligible application.  However, appending purely conventional steps to an abstract idea does not supply a sufficiently inventive concept.  The Federal Circuit rejected that shuffling and dealing physical playing cards were not sufficient to bring the claims within patent eligible territory.

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If You Can’t Say Something Nice . . .

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In Bamberg v. Dalvey, [2015-1548] (March 9, 2016), the Federal Circuit affirmed the PTAB’s decision in an appeal from a consolidated interference proceeding refusing to allow the claims of four patent applications because the specification failed to meet the written description requirement of 35 U.S.C. § 112.  The involved claims disclose a method for the transfer of printed images onto dark colored textiles by ironing over a specialty transfer paper. The transfer paper generally contains: (1) a removable substrate coated with silicon, (2) a hot-melt adhesive, (3) a white layer, and (4) an ink-receptive layer.  During the interference proceeding, Dalvey alleged that Bamberg’s claims were unpatentable for lack of written description, because the claims recite a white layer that melts at a wide range of temperatures, while Bamberg’s specification discloses a white layer that does not melt at ironing temperatures (i.e., below 220°C).

The Federal Circuit agreed that the contested claims are properly construed to encompass a white layer that melts above and below 220°C, and thus Bamberg’s specification must also support a white layer that melts above and below 220°C to satisfy the written description requirement.  The Federal Circuit concluded that substantial evidence supports the Board’s determination that Bamberg’s specification fails to meet the written description requirement.  Bamberg’s specification stated that the white layer “comprises or is composed of permanently elastic plastics which are non-fusible at ironing temperatures (i.e. up to about 220°C) and which are filled with white pigments—also non-fusible (up to about 220°C),” and that the “elastic plastics must not melt at ironing temperatures in order not to provide with the adhesive layer . . . an undesired mixture with impaired (adhesive and covering) properties.”  The Federal Circuit found that Bamberg did not possess a white layer that melts below 220°C because it specifically distinguished white layers that melt below 220°C as producing an “undesired” result.  This criticism effectively limited the scope of the disclosure.

In patents, as in life, Mom was right:  If you can’t say something nice about the prior art, don’t say anything at all.  Otherwise, your criticism may be treated as a disclaimer of claim scope.

The Privileged Few

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In Queens’s University at Kingston, [2015-145] (March 7, 2016) the Federal Circuit granted a writ of mandamus directing the district court to withdraw its order compelling the production of Queen’s University’s communications with its non-attorney patent agents.  The Federal Circuit said:

To the extent Congress has authorized non-attorney patent agents to engage in the practice of law before the Patent Office, reason and experience compel us to recognize a patent-agent privilege that is coextensive with the rights granted to patent agents by Congress. A client has a reasonable expectation that all communications relating to “obtaining legal advice on patentability and legal services in preparing a patent application” will be kept privileged.

Whether communications are directed to an attorney or his or her legally equivalent patent agent should be of no moment — to hold otherwise would frustrate the very purpose of Congress’s design: namely, to afford clients the freedom to choose between an attorney and a patent agent for representation before the Patent Office.