Board Affirms-In-Part and Reverses-In-Part Based On Claim Construction and Design Choice

March 8, 2012 – Blog Post

In Ex parte Goettsch (Case No. 2011-006303, in Application Serial No. 12/134,270, decision issued March 3, 2012), the Board affirmed-in-part and reversed-in-part the Examiner’s rejections under 35 U.S.C. §§ 102(b) & 103(a), and in doing so highlighted important aspects of claim construction, and obviousness rejections based on design choice.  The issues included: (i) whether an industry-specific definition could be applied to a claim when the claim itself omits a specific industrial application; (ii) whether functional language (e.g., intended use) within an apparatus or a method claim imparts patentability; and (iii) the Office’s burden to establish obviousness based on design choice.

The application sought to patent casting apparatuses and a method of transferring a “molten material” to a casting mold.  The device claims were directed to “an apparatus comprising: a ladle . . . adapted to pivot about an eccentric axis when filled with [a] molten material and wherein the pivoting about the eccentric axis minimizes a drop of the molten material into said ladle during a filling thereof with the molten material; and . . . a mold . . . adapted to receive the molten material . . . .”  The method claim was directed to “a method of transferring a molten material to a casting mold, the method comprising: providing a ladle . . . adapted to rotate about an eccentric axis when filled with [a] molten material and wherein the pivoting about the eccentric axis minimizes a drop of the molten material into said ladle during a filling thereof with the molten material; providing a mold . . . ; filling the ladle with the molten material; positioning the aperture of the ladle adjacent the cavity of the mold; and rotating the mold and ladle to facilitate the pouring of the molten material from the ladle into the cavity of the mold.”

The Examiner rejected the majority of the claims (both the apparatuses and the method) under Section 102(b), and the remaining claims under Section 103(a), over a single prior art reference.

A.        On appeal the Applicants argued that the Examiner improperly interpreted the structure of the prior art device, because the term “ladle” is a term of art in the metallurgy industry and means “a bucket-like, refractory-lined container for receiving a transferring molten material.”  Op. at 5 (emphasis added).  Therefore, according to the Applicants, the “ladle” is a device “adapted to be dipped into a furnace[,]” and the Examiner erred because the prior art structure was incapable of being dipped into a furnace to receive molten metal.  Id. 

The Board disagreed with this construction and affirmed the rejection because neither the claims nor the Specification restricted the claimed apparatus to the “metallurgy field.”  As explained by the board, “[a]ll the claims recite molten material, not molten metal.  Further, the Specification indicates that the molten material ‘may be any molten material such as a metal or a polymer, for example, as desired.’”  Op. at 5.  The opinion reminds us that the Federal Circuit’s jurisprudence supports the broader construction of the term “ladle” in this context:

Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.

Op. at 6 (quoting In re Bigio, 381 F.3d 1320, 1325, 77 U.S.P.Q.2d 1209, 1211 (Fed. Cir. 2004)).  The Board sustained the Examiner’s rejection because “[t]here is simply no structural or functional feature contained within the claims or Appellant’s proffered definition that requires that the ladle be dipped into a furnace to receive molten metal rather than receiving molten metal by melting ingots in situ as [the prior art] teaches.”  Id.

B.         The Applicants also argued that the prior art did not read on the independent apparatus and method claims, which required that “said ladle is adapted to pivot about an eccentric axis when filled with the molten material and wherein the pivoting about the eccentric axis minimizes a drop of the molten material into said ladle during the filling thereof with the molten material.”  see Op. at 6 and Claims 1, 9 and 17 (emphasis added).

The Board disagreed because the above-underlined recitations “are functional and do not impart any structural features to the claimed casting apparatus.”  Op. at 7.  The Board explained that such “intended uses” do not impart any structural features in the apparatus claims.  Id.; see also M.P.E.P. § 2114.  The Board also added that the prior art device was likely capable of accomplishing the claimed purpose.  Id. 

Regarding the method claims, the Board explained that these functional features did not impart patentability because “this capability is not recited as a positive step of the method . . . .”  Id. (emphasis added).  As stated on page 7 of the opinion:

[A]s this capability is not recited as a positive step of the method, it is not necessary to show that the prior art actually pivots “during the filling thereof”.  Method claim 17 merely recites a step of “filling the ladle with the molten material”.  Instead, the entire “wherein” clause indicates that the ladle has the capability of pivoting during filling thereof to minimize drop of molten material into the ladle.  Contrary to Appellant's argument, this recitation does not require that the ladle must be free to pivot during filling, but that it must be capable of pivoting during filling.

(emphasis added).

C.        The Applicants also argued that the prior art failed to teach two features (a “no gate system” and a raised “mold feature”) recited in three dependent claims, and that the Examiner erred in concluding that these features were obvious design choices to one of ordinary skill in the art.  Op. at 8 and 12.  In rejected the dependent claims, the Examiner concluded without specific support, or reference to the specification, that the features were obvious design choices.  Id.

The Board disagreed and vacated the rejections because the Examiner failed to meets its burden for establishing obviousness on the basis of design choice.  Op. at 8-10 and 12-13.  After explaining that the Examiner has the initial duty of supplying a factual basis that is devoid of speculation, unfounded assumptions, or hindsight, citing KSR, 550 U.S. 398, 421 (2007), the Board laid out a two-step process for determining whether a rejection based on design choice is appropriate:

(1)        First, the Examiner must review the specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem; and

(2)        Second, the Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention.

Op. at 9 (citing Ex parte Clapp, 227 U.S.P.Q. 972, 973 (BPAI 1985)).  The Board added that these two steps help present a “convincing line of reasoning” for making an obviousness rejection based on design choice.  Id.; see 227 U.S.P.Q. at 973.

In both rejections, the Examiner had failed to articulate a “convincing line of reasoning” as to why the prior art teachings would account for the claimed limitations, so as to “perform equally as well” as the claimed invention.  Op. at 10 and 12-13.