Wednesday, December 8, 2010

Arguments guaranteed to lose: "but look at these similar claims in other issued patents"

Takeaway: Occasionally Applicants make an argument which amounts to "the rejected claims are similar to claims that appear in these issued patents, so the Board should reverse the rejection." The BPAI ignores these arguments, relying on CCPA precedent: "In reviewing specific rejections of specific claims, we do not consider allowed claims in other applications." In re Gyurik, 596 F.2d 1012, 1016 n. 15 (CCPA 1979).

Details: Applicants often use this argument in § 101 rejections (see, e.g., Ex parte Ward and Ex parte Kelkar.) and occasionally for indefiniteness (see, e.g., Ex parte Cochran).

My two cents: Applicants seem to use this as a general appeal to fairness rather than as a legal argument. After all, if dozens of patents issued the week before you file your appeal brief with the phrase "computer implemented method", it hardly seems fair that your claim with the same preamble is rejected under § 101. Perhaps this type of fairness argument is really aimed at the Examiner — after all, the Appeal Brief is your last chance to persuade the Examiner. I have no idea whether this works with Examiners. But it doesn't work with the Board.

A much more creative argument appeared in Ex parte Haines, where the Applicants made a constitutional equal protection argument in fighting a § 101. (Seriously.) The Board ignored that one too, noting that "Appellant has not cited any authority in support of the novel legal argument." For more details, see this post at The Florida Patent Lawyer Blog.

20 comments:

  1. From the blog you cited: "The Applicant didn't provide any good reasons why the aforementioned interpretation was unreasonable."

    As always, the BPAI prematurely shifts the burden to Appellants to show why the Examiner's position was wrong instead of reviewing the issues de novo. I'm sure that the Examiner didn't provide a claim construction of "one pane," and if the Examiner/BPAI did provide a claim construction, I'm sure they didn't explain why it is reasonable or why that claim construction is consistent with the meaning that one having ordinary skill in the art would reach.

    The BPAI and Examiner are fond of interpreting language in a manner entirely inconsistent with how one having ordinary skill in the art would interpret the same phrases.

    Just another way the BPAI flouts the law. If the Examiner stated that the "moon is made of swiss cheese," the BPAI would ask does Appellant provide any evidence that proves otherwise. In the absence of a moon rock not made of swiss cheese, Examiner affirmed.

    Once you know how the BPAI will try to &^$# with you, you will be in a better position.

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  2. Indeed, appealing on the grounds that some other examiner treated someone else more favorably is sure to lose - particularly since the odds are that the other examination was probably flawed!

    RE: "the BPAI prematurely shifts the burden to Appellants to show why the Examiner's position was wrong instead of reviewing the issues de novo".

    I don't believe the BPAI is expected to re-examine the application, which would be the "de novo" review. Although "appeal" is in the name of the BPAI, in reality it is not a court of appeals wherein you are appealing a decision in a dispute between equals (viz., a plaintiff and a defendant).

    Instead you are appealing the decision of a functionary whose decisions have a presumption of validity (when your patent is challenged in an infringement suit).

    Like going before your zoning board of appeals, the burden is on you to show where the functionary has erred - the functionary does not have to prove s/he is correct.

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  3. Well, if the BPAI does NOT review the question de novo, you can hang the with their own words:

    -----------
    We disagree. Claim construction is a question of law which is reviewed de novo. In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir.
    1994) (en banc).
    ------------------
    http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009006032-12-07-2010-3

    might be useful in the future...

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  4. " After all, if dozens of patents issued the week before you file your appeal brief with the phrase "computer implemented method", it hardly seems fair that your claim with the same preamble is rejected under § 101. "

    It hardly seems fair that you got a competent examiner?

    C'est la vie.

    "A much more creative argument appeared in Ex parte Haines, where the Applicants made a constitutional equal protection argument in fighting a § 101. "

    Yeah that's the one where they cited the "jackass" holding against them iirc. I lulzed. Most heartily.

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  5. >Claim construction is a question of law which
    >is reviewed de novo. In re Donaldson Co., 16
    >F.3d 1189, 1192 (Fed. Cir.1994) (en banc).
    >[Ex parte Gilbert, Request for Rehearing]
    >
    >this might be useful in the future.

    Interesting. But weird.

    I read the Fed Cir statement in In re Donaldson as saying that claim construction is reviewed de novo *by the Fed Cir*. Not sure that In re Donaldson says anything at all about the claim construction standard of review applied by the BPAI.

    The particular BPAI panel in the case you refer to, Ex parte Gilbert, used the statement to imply that *the BPAI* reviews de novo. Not sure where this comes from. I took a quick look and can't find any other cases where the BPAI takes this position.

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  6. "The particular BPAI panel in the case you refer to, Ex parte Gilbert, used the statement to imply that *the BPAI* reviews de novo. Not sure where this comes from. I took a quick look and can't find any other cases where the BPAI takes this position.
    "

    You didn't hear about Ex Parte Frye? I thought you did a post about it. Quite a ridiculous decision, by the director no less.

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  7. "Instead you are appealing the decision of a functionary whose decisions have a presumption of validity..."

    Not so. The examiner's findings of fact and legal conclusions enjoy no presumption during the Board's review.

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  8. >>can't find any other cases where the BPAI
    >>takes this position.
    >
    >You didn't hear about Ex Parte Frye?

    I think we're talking about two different things. I was referring to the BPAI position in Gilbert that claim construction is reviewed de novo. Frye says nothing about the standard of review for claim construction.

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  9. "Like going before your zoning board of appeals, the burden is on you to show where the functionary has erred..."

    Wrong again. Appellant is not required to show that the examiner erred. Appellant only has to show that the examiner has not established a prima facie case.

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  10. Like obviousness, claim construction is a question of law. However, like obviousness, you cannot make a legal conclusion without first making some findings of fact (which are reviewed for substantial evidence). In the context of the claim construction, this is the plain and ordinary meaning of the terms, intrisince evidence (e.g., the specification), extrinsic evidence (e.g., dictionary definition), etc. However, what I see ALL the time is claim construction pronouncements that aren't even real claim constructions -- e.g., "we construe X as being disclosed by Y."

    Like hello .... do you have any supporting evidence for that non-claim construction?

    Of course, the answer is "no." They are the BPAI, they can make &^%$ up. That is what they do.

    Also, saying X is disclosed by Y is not a claim construction. The meaning of X is not Y. However, it is a lot easier for them to say that because you cannot explain (afterwards) why their claim construction is wrong (e.g., not reasonable, not consistent with the specification, not consistent with the meaning one skilled in the art woudl reach, or not the plain and ordinary meaning of that term) because they RARELY provide a claim construction in the first place.

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  11. BTW

    Juicy new case out of the Federal Circuit on 101 ... I'll be citing that sucker pretty soon.

    http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1037.pdf

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  12. Anonymous at 5:49 writes

    However, like obviousness, you cannot make a legal conclusion without first making some findings of fact (which are reviewed for substantial evidence).

    No. At BPAI, facts are reviewed de novo for preponderance of evidence (well, that's what Frye says, that's not what the Board does). Only after you leave the Board and go up to Fed. Cir. does PTO get "substantial evidence" deference, and then only if the PTO didn't compromise procedure along the way (wrong standard of review strips the Board of that deference).

    Anonymous 5:49 is right in identifying the all-too-common display of lack of "competent legal knowledge" in far too many Board opinions -- skrummich up the two steps of Markman, state wrong standard of review, apply MPEP and "informative" opinions as if they had any authority against appellants, refuse to follow MPEP when it binds the Board (citing pirates in Walt Disney movies as authority), fail to designate clear "new grounds of rejection," games like "reverse pro forma" to get production counts for decisions not made, ... Dudas/Doll/Toupin screwed up the Board as badly as they screwed up everything else, and it'll take more time to get that mess cleaned up.

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  13. Frye says you weigh all evidence and argument. To me, an argment is, for example, a finding of fact. However, before that finding of fact can be put onto the scales of justice, there must be a determination that this finding of fact is supported by substantial evidence. Otherwise, your weighing of the evidence and the arguments can be misleading because the arguments may be unsupported.

    For example, if the Examiner argues "reference Y teaches limitation B." This is one of those "arguments" that gets weighed. It also is a finding of fact, and findings of fact must be supported by substantial evidence.

    Otherwise, what happens if the Examiner asserts "reference Y teaches limitation B" and Appellant argues that it does not but neither Examiner nor Appellant explains why? What if Y does not teach limitation B. Under the preponderence of the evidence, it is a tie. Who wins?

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  14. Man, this site needs to update way more often. It's not like Karen has better and more lucrative things to do, oh, wait...

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  15. Anonymous at 5:43 -

    "To me, an argment is, for example, a finding of fact."

    Nope. "evidence" that gets weighed in de novo review, "argument" by advocate explaining that evidence, and "finding of fact" stating an adjudicator's conclusion are three entirely separate things. Neither examiner argument nor attorney argument is "evidence."

    Now that you see that, the evidence is the evidence is the evidence. On de novo review, the Board has to read the evidence for itself (always true whether examiner asserted or not). The Board is to make its own independent judgment, untipped but hopefully (counter to your example!) enlightened by both examiner and appellant. If the evidence is in equipoise (0 to 0 in your hypothetical), the burden of proof favors the applicant. The examiner's "finding of fact" is not evidence, so it weighs zero.

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  16. "...the evidence is the evidence is the evidence"

    My vote for quote of the year.

    Thanks to David for all that he does on our behalf.

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  17. >Thanks to David for all that he does on our
    >behalf.

    Absolutely! I'm thrilled to know David is reading my blog, and even more excited to learn from his comments.

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  18. "The examiner's "finding of fact" is not evidence, so it weighs zero. "

    However, the fact underlying the finding of fact is evidence, so it weighs 1 fact.

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  19. ?

    reread the hypothetical...

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  20. Anonymous - Here's why I found your post to be a non-sequitur: "preponderance of evidence" weighs "evidence," not facts. So a weight of "1 fact" is kind of like "the weight of one tooth fairy."

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