Takeaway: Most of the BPAI decisions that are appealed to the Federal Circuit involve fairly routine reviews of prior art rejections. In re Jung is different: it's about the Examiner's requirement to make a prima facie case. As such, In re Jung has the potential to greatly impact patent prosecution. As elegantly put in Jung's brief, when the Examiner does put forth of a prima facie case, "applicants are sufficiently informed as to the full basis of the rejection ... and applicants can determine how to best proceed during initial prosecution." But if the BPAI doesn't provide an independent review of the prima facie case requirement, "applicants are all but required to prophylactically submit rebuttal evidence against uncertain and shifting grounds of rejection."
I've been following this case since the appeal was filed, and have read the briefs to the Federal Circuit (available from Westlaw or Lexis) as well as most of the file history (on PAIR: Appl. No. 10/770,072). Oral arguments took place a couple of weeks ago. Here are my thoughts on this interesting case.
Summary:
In Jung's brief, he asks the Federal Circuit to decide an issue of first impression: whether the BPAI properly ruled on the merits of an anticipation rejection instead of ruling on the appealed issue of whether the Examiner had made a prima facie case of anticipation. Jung's brief further defines the prima facie case of anticipation as having two requirements: (i) the Examiner must construe the claims under the broadest reasonable interpretation standard; and (ii) the Examiner must "adduce sufficient evidence to bridge any facially apparent 'teachings' of the applied reference."
The PTO doesn't see it this way. In the PTO's brief to the Federal Circuit, the Solicitor frames the issue as a routine review of a BPAI decision: "whether a reasonable claim construction and substantial evidence support the Board's conclusion that the prior art, Kolinksy, anticipates Jung's claim 1."
I don't know how much leeway the Federal Circuit has in choosing between issues. As a patent prosecutor, I hope the Federal Circuit does take up the issue of a prima facie requirement. But if the Federal Circuit wants to avoid the issue, I think it can do so on the grounds that Jung didn't properly raise the issue below. The PTO makes a convincing case that Jung did not challenge the prima facie case before the Examiner or before the BPAI, but instead substantively responded to the merits of the rejection. Thus, it seems to me that Jung may have waived his right to argue the prima facie requirement issue on appeal to the Federal Circuit.
Moreover, I think that Jung loses even if the Federal Circuit takes up the issue. That is, I think the Examiner did present a prima facie case. The claim term at issue was "well-charge-level controller." The Examiner explained that he gave each of the words their ordinary meaning, and explained how the reference taught a device that controlled the level of charge in a well.
That said, I am thrilled that Jung, even with these bad facts, took this issue up to the Federal Circuit. Because the PTO's idea of prima facie case – as expressed in the Solicitor's brief – is not enough. The way I read the brief, the PTO has taken the position that the Examiner produced a prima facie case of anticipation merely by: i) asserting that every claim limitation was disclosed by the reference; and ii) clearly designating what part of the reference was relied on. I dunno about you, but I need more than that to mount a good attack on a rejection. I want what Jung wants – explicit claim construction and an explanation of how the words used in my claim are met by the words used in the reference.
Wrap-up: I'll post again when the court releases its decision. The court may choose not to provide a full opinion. I'll be very disappointed if the opinion is nothing more than a bare Rule 36 affirmance. This case deserves at least a Rule 36 affirmance with a short explanation of the grounds of decision, since there is such a discrepancy between how the two parties framed the issues.
"The way I read the brief, the PTO has taken the position that the Examiner produced a prima facie case of anticipation merely by: i) asserting that every claim limitation was disclosed by the reference; and ii) clearly designating what part of the reference was relied on. I dunno about you, but I need more than that to mount a good attack on a rejection. I want what Jung wants – explicit claim construction and an explanation of how the words used in my claim are met by the words used in the reference."
ReplyDeleteI would like that too. But we're not going to get it. Even assuming the Fed. Cir. does address Jung's argument, I think they will side with the PTO.
Think about Hyatt's 112, 1st paragraph (written description) case that the Fed. Cir. decided a couple of years ago. They concluded that all the examiner had to do to present a prima facie case, and shift the burden to applicant, was simply question whether the claim(s) had written description support.
I think in the anticipation context, if the examiner reproduces the claim(s) and provides substantial evidence for each featue (e.g. a cite to a column/line/figure, etc.), that would be found to be sufficient to present a prima facie case.
Think about the precedent that could be set by this case. If the Fed. Cir. addresses the issue, and decides the examiner doesn't have to provide an explicit BRI construction of the claim, do you ever think you're going to get one from the examining corps ever? They will simply cite In re Jung: Presentation of a prima facie case of anticipation does not require the examiner to provide an explicit construction of the claim(s).
The form paragraph writes itself. If the Fed. Cir. addresses the issue, and rules against Mr. Jung, plan on seeing that form paragraph in a WHOLE LOTTA final rejections.
It would be a help if the examiner was even held to the minimum standard of citing the lines from the reference in which the claim terms were actually used! I have seen so many first office actions in which the examiner repeats the claim (prefaced with "reference X discloses") and then cites a block of lines which may not even include major parts of the claim.
ReplyDeleteKaren,
ReplyDeleteI too will be disappointed if the CAFC does not comment on the prima facie case requirement. I had not even realized that was a possibility.
I also agree that the Examiner presented a prima facie case of anticipation. Still, this is an excellent opportunity for the CAFC to give the prima facie case requirement teeth. It is unfortunate that this is not an appeal from a case with better facts, because so many Office Actions are far more egregious than this one.
>It would be a help if the examiner was even
ReplyDelete>held to the minimum standard of citing the
>lines from the reference in which the claim
>terms were actually used!
Absolutely.
Surely it's not too much to ask the Fed Cir to spell out a bare minimum which requires not just cites to the reference, but cites to a relevant portion of the reference.
A Fed Cir ruling saying this is an appealable issue would at least give Applicants the option to appeal in really egregious scenarios such as the one you describe.
>If the Fed. Cir. addresses the issue, and rules
ReplyDelete>against Mr. Jung, plan on seeing that form
>paragraph in a WHOLE LOTTA final rejections.
Sure, Jung might lead to a new form paragraph to go along with those not-even-a-minimum-PF-case rejections. Won't impact my practice.
If you're suggesting that those Examiners who now present a PF case will use such a ruling to stop presenting a PF case because it's less work -- no, I don't see this happening.
The way I see it, some Examiners do their job professionally and some don't. Both types will continue on their respective paths, regardless of In re Jung.
Of course, our discussions presume that In re Jung would be communicated to the Examining corps. If management doesn't make a big deal out of it, how will the Examiners even know about it?
I unfortunately smell a Rule 36 affirmance. But I agree there are huge problems with both the standard and consistency with which the standard is applied for what an Examiner must produce for non-103 rejections. I personally love the obviousness-type double patenting rejections that simply state "claims 1-20 are not patentably distinct over claims 1-20 in copending application XX/XXX,XXX." Anticipationn rejections that point to just a Figure without anything further are fun too.
ReplyDelete"Surely it's not too much to ask the Fed Cir to spell out a bare minimum which requires not just cites to the reference, but cites to a relevant portion of the reference."
ReplyDeleteI think you're asking for too much. Look at the Hyatt v. Dudas case again (from 2007). The requirement for making a prima facie case of lack of written description support is for the examiner to establish, by a preponderance, that the applicant was not in possession of the claimed invention as of the filing date? Have you ever had an examiner even come close to meeting that?
So along comes Mr. Hyatt, and he appeals a case with bad facts, and the Fed. Cir. rules that a PF case of lack of written description can be made by the examiner just making a statement that certain claims, or certain claim features, appear to lack support. That's all that's needed to shift the burden to applicant. Do you really think the Fed. Cir. is going to rule that the examiner has to provide an explicit BRI of the claim to make a PF case of anticipation/obviousness? That is simply not going to happen.
"The way I see it, some Examiners do their job professionally and some don't. Both types will continue on their respective paths, regardless of In re Jung."
No disagreement from me on that. But do we really need the ones that don't do their jobs professionally to have one more dodge? An examiner that is professional may respond to your request that you provide an explicit BRI for a claim or claim recitation, but one that isn't professional is just going to tell you that he/she is not required to provide it. See In re Jung.
"Of course, our discussions presume that In re Jung would be communicated to the Examining corps. If management doesn't make a big deal out of it, how will the Examiners even know about it?"
I think if the Fed. Cir. actually addresses Jung's (apparently late) argument, it's entirely possible the case could find its way into the next MPEP revision.
I also don't see the need for the Fed. Cir. to make a ruling that the examiner is required to provide an explicit BRI of the claim. It's enough that the examiner cites to the relevant portion of the reference, and applicant gets an opportunity to traverse. You can always cite Oetiker ("examiner can't sit mum while applicant shoots arrows into the dark" or whatever that quote is), and if the examiner doesn't further explain the rejection, let the BPAI or Fed. Cir. take whatever inference it wants from that.
I just don't see the Fed. Cir. adding a procedural requirement to a PF case (e.g. an explicit BRI from the examiner) when the current rules/case law work reasonably well in the vast majority of the cases.
Why do people keep citing the original Hyatt decision for its harsh treatment of the prima facie case rule?
ReplyDeleteWasn't the original decision VACATED by the en banc opinion, which OVERRULED the first decision?
Even the new PTO proposed rules today cite the first decision!
Am I taking crazy pills or what?
"Why do people keep citing the original Hyatt decision for its harsh treatment of the prima facie case rule?
ReplyDeleteWasn't the original decision VACATED by the en banc opinion, which OVERRULED the first decision?"
I don't think that's what happened. The 2008 decision only addressed the interpretation of "ground of rejection" and didn't disturb the 2007 decision's ruling of what constitutes a PF case of lack of written description.
This Jung case strikes me as another Hyatt. Bad facts making bad law. I wish this applicant or his counsel had chosen a better case to appeal this issue, or had brought this issue to the BPAI's attention and gotten a ruling there first, and then appealed that.
I'm thrilled as well Karen, perhaps the CAFC will seal the deal on the PTO's interpretation and we'll never again have to provide you with what you need to mount a good attack on a rejection.
ReplyDelete"I dunno about you, but I need more than that to mount a good attack on a rejection. "
lulz, you're a bad lawlyer. All you should need is the references and what you know in your brain.
"I want what Jung wants – explicit claim construction and an explanation of how the words used in my claim are met by the words used in the reference. "
No, what you want is for the backlog to jump by a couple thousand cases while examiners spend all day prattling on about your inane claim. All for what? To make up for your own failings as a lawlyer.
If it's a particularly hard case, you can always take 5 minutes and ask the examiner.
"I'll be very disappointed if the opinion is nothing more than a bare Rule 36 affirmance. "
I won't be disappointed or surprised.
November 15, 2010 4:23 PM -
ReplyDeleteWhat 2007 and 2008 decisions are you referring to?
I'm referring to the *2010* EN BANC decision, which I presume vacated the entire three-judge CAFC decision below (from which en banc rehearing was requested).
See http://www.patentlyo.com/patent/2010/11/hyatt-v-kappos-federal-circuit-opens-door-to-post-bpai-civil-actions.html
"I'm referring to the *2010* EN BANC decision, which I presume vacated the entire three-judge CAFC decision below (from which en banc rehearing was requested)."
ReplyDeleteI don't think the Fed. Cir.'s vacating and remanding for the USDC DC to consider Hyatt's Declaration affects the ruling on what the examiner has to provide to make a PF case of lack of written description support.
It certainly affects it to the extent that the decision is no longer precedential and cannot be cited as precedent.
ReplyDelete"It certainly affects it to the extent that the decision is no longer precedential and cannot be cited as precedent."
ReplyDeleteI don't think that's going to stop the editors of the MPEP from throwing in a little parenthetical "(vacated and remanded on other grounds)" into their reliance on the 2007 decision.