Wednesday, December 1, 2010
Responding to new case law after an appeal brief is filed
Takeaway: If you have a case on appeal to the BPAI and new case law comes out that affects arguments made in your Appeal Brief, you can file an updated brief to address the new case law. For example, the Applicant in Ex parte Ahluwalia filed a "Letter Brief" to discuss In re Vaidyanathan, and the BPAI did consider the new arguments.
The Applicant in Ex parte Candy tried a different tack and didn't fare so well. After the BPAI affirmed the Examiner's rejections, the Applicant used a Request for Rehearing to ask for permission to file a new Appeal Brief, to present "new arguments responding to the extensive changes in patent law and in the rules and procedures of the BPAI." The Board denied the request because the Applicant didn't point out any specific changes in the law that would "render the Board's decision in error."
Details:
The Letter Brief in Ex parte Ahluwalia referenced In re Vaidyanathan, a decision in which the Federal Circuit reversed an obviousness rejection that had been affirmed by the BPAI. In doing so, the Federal Circuit stated that while the Examiner may rely on common sense as providing a reason to modify, "the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious." The Letter Brief argued that the rejection was deficient under In re Vaidyanathan because the Examiner didn't explain but merely made conclusory statements. The BPAI disagreed, and explained why the Examiner had provided articulated reasoning with some rational underpinning.
The Applicant in Ex parte Candy referred vaguely to "extensive changes" in the law and BPAI rules. I'm not sure what he had in mind. KSR had been out for about a year when the Applicant filed the Appeal Brief. Bilski v. Kappos was just out, but was irrelevant because no § 101 rejections were present. And the BPAI rules had not changed – the extensive BPAI rules package from December 2008 was never put into effect.
My two cents: MPEP 1205.02 makes reference to filing a "supplemental paper", but no details. So it's useful to have Ahluwalia an example application to look at. The Letter Brief is available in Public PAIR.
This supplemental filing might be useful in some cases. For example, there are tons of applications pending before the BPAI that are affected by Bilski v. Kappos. You can do nothing and take your chances with machine or transformation test arguments in an already filed Appeal Brief. But the BPAI might decide that your claim involving a machine is still abstract. A Letter Brief would give you the opportunity what this isn't so – perhaps using some of the factors from the PTO's Bilski guidelines. Something to consider.
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See MPEP 1205.02 ("This sentence is not intended to preclude the filing of a supplemental paper if new authority should become available or relevant after the brief or reply brief was filed. An example of such circumstances would be where a pertinent decision of a court or other tribunal was not published until after the brief or reply brief was filed.")
ReplyDeleteand
MPEP 1214.07 ("(C)When the decision of the Board is based on a practice, rule, law, or judicial precedent which, since the Board’s decision, has been rescinded, repealed, or overruled.")
Thanks, Kip! I missed that section of the MPEP. I updated my post to refer to it.
ReplyDeleteIf anybody wants to take advantage of the opportunity to cite new case law, they should cite Ex parte Frye, which is a precedential Decision issue by the BPAI on February 26, 2010.
ReplyDeleteI cannot overemphasize the need, by anybody prosecuting patents, to deeply consider the case law found in the very first sentence on page 8 of the Frye Decision in the section entitled "Standard of Review." Another passage to deeply consider is lines 2-4 on page 10 of the Frye Decision, where it is stated that "the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue."
I'm going to quote from Kappos' blog:
Today, in a precedential opinion that I was pleased to join as a panel member, the Board of Patent Appeals and Interferences clarified its standard of review of examiners’ rejections. The opinion makes clear that “the Board reviews the particular finding(s) contested by an appellant anew in light of all the evidence and argument on that issue.” ["anew" is underlined] This means that the Board does not give deference to positions taken by the examiner when considering an appellant’s argument specifically challenging the examiner’s findings.
While you are at it, take the time to read Dickinson v. Zurko, 527 U.S. 15 (1999), and consider what the Supreme Court said about "substantial evidence" and how findings by the Patent Office must be supported by "substantial evidence."
Read enough Decisions from the BPAI and you will come across, time and time again, statements to the effect that "Appellant did not overcome the burden of establishing Examiner error." This is burden shifting – however, the Examiner's position is not to be given deference. Therefore, before the BPAI can shift the burden, the BPAI must first review anew the evidence and argument on that issue and then conclude that the Examiner has at least established a prima face case. However, whatever findings that are made (or relied upon by the BPAI) must be supported by substantial evidence.
The terms "no deference," burden," "prima facie case," "substantial evidence" should be included in every appeal that goes to the BPAI. These are 'magical' terms that the BPAI cannot ignore – but they will ignore these terms (and the concepts underlying these terms) if you let them. The BPAI presumes that a prima face case has been made. The BPAI presumes that the findings of fact are supported by substantial evidence and gives deference to the positions taken by the Examiner. Challenge these presumptions and you have a much better chance of prevailing on appeal.
One last thing, deeply consider lines 3-7 on page 15 of the Frye Decision. Don't let the BPAI render its Decision based upon findings that were not before it for review (i.e., new grounds of rejection). The BPAI is notorious for affirming rejections for reasons/findings/etc. that are raised, for the first time, by the BPAI. These are new grounds of rejection and should be designated as such. The new proposed Appeal Rule package recently published by the Patent Office includes a lengthy discussion on new grounds of rejection – become very familiar with the case law. If the BPAI affirms a rejection on new grounds, challenge them to designate it as a new grounds (your options for responding are greatly expanded once so designated). Once you've gotten the BPAI to designate the new grounds, remember the terms of "burden," "prima face case," and "substantial evidence." Also, when one of the new grounds is a rationale for a 103 rejection that is different than what the Examiner relied upon, remember that each rationale requires certain findings of fact beyond those required by Graham. These findings of fact are almost NEVER made by the BPAI.
Learn to speak "administrative law legalese" and you'll have much greater success at the BPAI.
>"no deference," burden," "prima facie case,"
ReplyDelete>"substantial evidence" should be included in
>every appeal that goes to the BPAI.
...
>Challenge these presumptions and you have a
>much better chance of prevailing on appeal.
Better chance at the BPAI? Or on appeal to the Federal Circuit?
>If the BPAI affirms a rejection on new grounds,
ReplyDelete>challenge them to designate it as a new grounds
>(your options for responding are greatly
>expanded once so designated).
The "challenge" comes in the form of a Request for Rehearing, right?
>Once you've gotten the BPAI to designate the
>new grounds, remember the terms of "burden,"
>"prima face case," and "substantial evidence."
Why?
If your Request for Rehearing is successful, you'll get a Decision Affirming on New Grounds, right? You *don't* get a chance to go back immediately before the BPAI and argue those new grounds. Instead, you can reopen prosecution and argue those new grounds before the Examiner.
>new proposed Appeal Rule package recently >published by the Patent Office includes a
ReplyDelete>lengthy discussion on new grounds of rejection
>– become very familiar with the case law.
I absolutely agree that Applicants going to appeal should fully understand case law for New Grounds. It applies to Examiner's Answers as well as BPAI decisions.
I don't find the discussion of New Grounds in the new proposed rules to be very helpful, because it of the 10 "fact situations" (hypos) discussed, 9 of them are either clearly New or clearly Not New.
What Applicants need to know about is the case law for the hypo that will be the most contested: Not a New Ground #1 "Citing a different portion of a ref which goes no farther than, and merely elaborates upon, what is taught in the previously cited portion."
What does "merely elaborates on" mean?
David Boundy wrote a great summary of New Grounds case law and submitted it as a comment to the *last* BPAI rules package. There are a lot more cases in Boundy's paper, many of which take a more expansive reading of New Ground than the PTO seems to.
"Better chance at the BPAI? Or on appeal to the Federal Circuit?"
ReplyDeleteBoth
"If your Request for Rehearing is successful, you'll get a Decision Affirming on New Grounds, right? You *don't* get a chance to go back immediately before the BPAI and argue those new grounds. Instead, you can reopen prosecution and argue those new grounds before the Examiner"
Au contraire mon amie
You cannot file under 37 CFR 41.50(b)(2) unless the BPAI first designates the new grounds. Thus, you'll first file under 37 CFR 41.52. Then, assuming the new grounds are designated in the BPAI's response, you'll get to file under 37 CFR 41.50(b)(1) or (b)(2).
"What does 'merely elaborates on' mean?"
My post was already bordering on being pretty long to begin with, but I was going include a statement that one should never rely upon the USPTO's characterization of case law – one should read it oneself. The case you are referring to is a situation in which the Examiner first relied upon an English-language translation of an Abstract of a foreign-language reference and then the BPAI relied upon a translation of the entire document. The Federal Circuit stated "the Board’s use of the example in the translation goes no farther than, and merely elaborates upon, what is taught by the abstract." This is one of those factual situations you'll never again see repeated, so make sure that it isn't cited against you based upon a fact pattern that isn't remotely related.
I would stick to In re De Blauwe, 736 F.2nd 699 n.9 (Fed Cir. 1984), which states: "[w]here the board makes a decision advancing a position or rationale new to the proceedings, an applicant must be afforded an opportunity to respond to that position or rationale by submission of contradicting evidence."
"David Boundy wrote a great summary of New Grounds case law"
I am a big fan of his work.
It would do all of you some good to remember that "the law" hasn't changed in quite some time (decades for most statutory grounds of rejection?). As such, you shouldn't have needed to file such supplemental papers.
ReplyDeleteIf you didn't already understand the law very well and some caselaw came along and changed your viewpoint, like KSR, Bilski etc. then that is on you. But what you should have been doing was arguing your view on the law from the getgo.
"It would do all of you some good to remember that 'the law' hasn't changed in quite some time."
ReplyDeleteAu contraire. There is statutory law and case law. Although statutory law changes infrequently, case law changes all of the time.
>Thus, you'll first file under 37 CFR 41.52.
ReplyDelete>Then, assuming the new grounds are designated
>in the BPAI's response, you'll get to file
>under 37 CFR 41.50(b)(1) [re-open pros] or
>(b)(2)[request for rehearing]
Ah, I stand corrected. Cool.
I don't recall seeing anyone file a Request for Rehearing to address New Grounds raised by the Board. Perhaps because getting the Board to agree that the grounds are new is an uphill battle (from what I've seen).
>one should never rely upon the USPTO's
>characterization of case law – one should read
>it oneself
Good point.
>I would stick to In re De Blauwe ...
>"decision advancing a position or rationale
>new to the proceedings"
Yep, that's on point. Too general, though. I'm afraid the BPAI will say that switching from a teaching in the ref about widgets to a teaching about blodgets is not a new position -- it's just a clarification. And that taking the Examiner's conclusory one sentence reason to combine and expanding it to a 5 page substitution rationale is ... not a new position -- just a clarification.
Whereas I view of these as new grounds. I can't fight what the Examiner didn't say. When the Board says it instead, I deserve an opportunity to respond to the Board, not to the Examiner.
Thanks for your comments. Very enlightening.
"Yep, that's on point. Too general, though."
ReplyDeleteToo general is good, for us. Let them explain away the law, and if the BPAI doesn't indicate it is a new grounds, then petition. See In re Oku, 25 USPQ 2d 1155.
Things are changing at the BPAI. You would have NEVER seen a discussion of new grounds of rejection in the old BPAI rule package. Although the old guard (and some of the new guard trained under the old regime) may resist, the new sheriff in town is sympathetic to our cause.
With the BPAI backlog like it is, it isn't time efficient for the BPAI to make the Examiner's case for the Examiner when the Examiner's finding/analysis is deficient. However, this is what the BPAI has been doing for years. When the BPAI finally chooses to affirm decisions, mostly on the findings/analysis made by the Examiner, and not their own findings/analysis, both the backlog will come down and applicants will get better results.
FYI -- to answer one of your points, you just have to look a little harder. ;-)
These are some amazing comments! Thank you, anonymous poster!
ReplyDelete"This means that the Board does not give deference to positions taken by the examiner when considering an appellant’s argument specifically challenging the examiner’s findings."
ReplyDeleteI frequently read BPAI decisions where the APJ states that they "adopt" the examiner's findings. Would you argue that is improperly giving deference to the examiner's findings, and failing to review the examiner's finding anew in light of applicant's arguments/evidence?
I also frequently see the APJ's stating that they are "amplifying" the examiner's findings of fact. In reality, this is the APJ's way of relying on a different portion fo the reference and tidying up the examiner's rejection. How successful will you be in arguing that "amplified" findings are a new ground?
Couldn't agree more on the PTO's reliance on case law. Terrible.
The BPAI can "adopt" the Examiner's findings. However, the BPAI must first review these findings anew, and these findings of fact are to reviewed to determine if they are supported by substantial evidence.
ReplyDeleteIf you've argued in your appeal that certain of these "positions" are not accurate (i.e., another way of saying "not supported by substantial evidence"), then call the BPAI out if they adopt the Examiner's position without first reviewing it. Tell them that they are not to give deference to the Examiner's findings, they are to review the findings anew, and any findings of fact must be supported by substantial evidence. No substantial evidence = no adopting the Examiner's findings.
Read some of David Boundy's work -- the practice of patent law before the USPTO is the practice of administrative law. The BPAI and Examiners alike flout well-estalished administrative law (e.g., APA) all the time -- don't let them. They'll try to weasel out of any argument you throw out -- just make sure you use the magic words and understand their legal importance, and you'll be better of.
Read the decisions on Request for Rehearings by the BPAI for a good feel for how the BPAI will smack down just about every argument you make. Argument style that may cut it with an Examiner doesn't work with the BPAI. They are masters at dodging the issues and ignoring your arguments because they "weren't properly presented."
Once you know what the BPAI is supposed to do, the review standard that is to be employed, and the burden placed on them, you are in a much better position to fight.
If you get a "not properly presented" on a brief you filed before December 22, 2009, then give me a call.
ReplyDeleteFor decades, the PTO had neglected to get clearance under the Paperwork Reduction Act. The PTO's first clearance for anything relating to appeals was granted on December 22, 2009.
In that situation, 5 CFR 1320.6 gives you the right to present information "in any reasonable manner" even if there was an omission before Dec. 22, 2009. The White House, in granting a going-forward clearance, set that forth very clearly in its letter to the PTO.
If the Board enforces any provision above the plain text of the 2004 version of 37 CFR 41.37 etc. (like some baloney about "mapping" or "every limitation" in the Summary), or enforces *any* provision for form or content for any paper filed before December 22, 2009, please let me know. The Board is the one part of the PTO that must be populated by "persons of competent legal knowledge" and the ultimate guardians of procedural law. If the Board is ignoring the law, even after getting a personal engraved invitation from the Executive Office of the President, I have ways to get this fixed. But only if I know about it.
David Boundy
David, great to hear from you. Just to clarify ...
ReplyDelete>If you get a "not properly presented"
>on a brief you filed
Are you referring to a Notice of Non-Complaint Brief?
*Any* pushback (Notice of Non-Compliant brief, an attempt by the Board to dodge an argument, any complaint about new arguments in a Reply Brief or at oral argument, *anything*) from the PTO relating to *any* requirement for form or omission bottomed on any brief filed before Dec. 22, 2009, or
ReplyDeleteany pushback going above the text of the 37 CFR rules after Dec 22, 2009, or
any attempt to treat the MPEP as if it had any binding effect on applicants (other than as a restatement of, or interpretation of, a 37 CFR rule) at any time.
David, thanks for clarifying. Good stuff.
ReplyDeleteSee In re Swanson, 540 F. 3d 1368 - Court of Appeals, Federal Circuit 2008.
ReplyDeleteYou will find the standard of evidence is "preponderance" as pertains to PTO examinations and reexaminations.
The Swanson case reiterates In re Caveney, 761 F. 2d 671 - Court of Appeals, Federal Circuit 1985.
Some anonymous person wrote:
ReplyDelete>the standard of evidence is "preponderance" as
>pertains to PTO examinations and >reexaminations.
Are you disagreeing with other statements made here about standard of review, ie, statements made about Frye?
Frye's section titled "Standard of Review" actually talks about two different things. Burden of proof for a prima facie case and Board review "in light of all the evidence and argument on that issue."
I haven't thought about this a lot, but I don't view either of those statements as being in tension with In re Swanson.
Do you?
There is no tension between Swanson and Frye.
ReplyDeleteFrye requires that the BPAI review the findings anew, and findings of fact are reviewed for substantial evidence. If there is substantial evidence presented by the Examiner, then the all the evidence is weighed for preponderance of the evidence. However, this doesn't happen until the Examiner's prima facie case is supported by findings of fact for which substantial evidence has been presented.