Sunday, January 9, 2011

Applicant mistakes may result in losing at the BPAI, but is the BPAI following the law?

Last week I posted my list of "Top 10 Mistakes in Arguing on Appeal to the BPAI," and followed up with posts to elaborate on the first 3 of those mistakes.

This topic has drawn more comments than usual. A number of the comments say the BPAI isn't following the law for prima facie case, burden of proof, standard of review, etc.

This series of posts is about what approaches don't seem to work at the BPAI, practically speaking. Not about whether the BPAI is performing a proper review as required by administrative law.

David Boundy has graciously agreed to do a guest post soon to explain the topic of burden of proof and standard of review at the BPAI. David is very knowledgeable about administrative law as it applies to the PTO. David is well known in the patent community for insisting that the PTO follow the law. David assembled and led the teams that made presentations at the White House Office of Management and Budget to show that the Patent Office's Continuations, 5/25 Claims, IDS and Appeal rules violated many provisions of administrative law. This effort led OMB to direct the PTO to withdraw these rules in January and December 2008!

5 comments:

  1. He's gotta hate this opinion:
    http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2011000971-01-13-2011-1

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  2. >He's gotta hate this opinion:

    I presume you're referring to the Board's statement about the burden of showing error:

    The Appellant bears the procedural burden of showing harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders, 129 S.Ct. 1696, 1706 (2009) (citations omitted) (“Lower court cases make clear that courts have correlated review of ordinary administrative proceedings to appellate review of civil cases in this respect... [T]he party seeking reversal normally must explain why the erroneous ruling caused harm.”)

    The BPAI doesn't seem to cite to this administrative law case very often. Do you see this statement of the law as being much different than Frye's requirement to show error?

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  3. >Do you see this statement of the law as being much different than Frye's requirement to show error?

    If I understand Mr. Boundy's position on admin law, his view is that Applicants need only say "element X is missing from applied reference A" to carry the burden under Frye. The BPAI must then review de novo reference A for presence of element X. I think the caselaw cited above and in the opinion can be reconciled with this formulation.

    Where things go awry is later in the opinion, on pages 8-10, where the BPAI acknowledges that Applicant has stated an element is missing from the applied reference A, but the BPAI then seems to want even more from the Applicant by stating "Appellant has not adequately explained why the evidence relied upon by the Examiner does not render the claimed subject matter unpatentable" and "Appellant has not argued that the example relied upon by the Examiner does not contain a hypochlorite salt and an alkali metal hydroxide, the stain removing components required by the claimed method." That is, the BPAI takes the Examiner's position with regard to the allegedly missing element as true and requires the Applicant to overcome that position. They conduct no independent review of the Examiner's position for themselves. This does not seem consistent with a true de novo review of the raised issue "reference A is missing element X."

    Now, I'm still waiting with baited breath for Mr. Boundy's post, because I often think there is little difference in outcome between true de novo review and the "harmful error" approach taken in this case. Where an Applicant says little more than "element X is missing from reference A" (like in the linked case) and does not address *why* the element is missing or *why* the Examiner's accounting for the element is incorrect, the BPAI could repackage the Examiner's reasoning as their own and claim they did a de novo review without anyone really knowing whether the BPAI went through the reference for themselves to determine if the element was there. In the linked case, however, they didn't even pretend to do a de novo review, instead affirming because Applicant hadn't offered a counter explanation, not because they went through the reference and determined for themselves an element was missing. (I'm also baffled by the use of Applicant's specification to broaden a "consisting of" transition here - is that what they really did?)

    So yeah, I'd love for Mr. Boundy to explain why the different standards make a difference in cases like this with the bare "element A is missing" argument. I can see where the standards result in different outcomes when Applicants provide further explanation for missing elements.

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  4. >Where things go awry is later in the
    >[Ex parte Taylor] opinion, on pages 8-10,
    >where the BPAI acknowledges ...

    Well, I'm glad I asked what you were referring to in Taylor. You shoulda given that explanation rather than your initial cryptic comment.

    >the BPAI takes the Examiner's position with
    >regard to the allegedly missing element as
    >true and requires the Applicant to overcome
    >that position.

    I don't read the first statement you refer to by the Board as *clearly* saying "we take the Examiner's position as true and won't conduct our own investigation".

    The statement I refer to is: "Appellant has not adequately explained why the evidence
    relied upon by the Examiner does not render the claimed subject matter unpatentable."

    Couldn't this statement be read instead as "we weighed the Examiner's findings against the Appellant's [shoddy] argument and the Examiner won" ?

    I believe the BPAI's second statement that you refer to supports your position a little better. But it's still not definitive: "Appellant has not argued that the example relied upon by the Examiner does not contain a hypochlorite salt and an alkali metal hydroxide, the stain removing components required by the claimed method."

    Maybe all that means is that "we weighed the positions of the two parties, and though we might have been convinced if you used this stronger argument, we found the Examiner had the stronger position."

    I think it's hard to tell what the BPAI is doing in all of their decisions because they don't couch their explanations in terms of the burdens of proof.

    >why the different standards make a
    >difference in cases like this with the bare
    >"element A is missing" argument.

    I'm not sure the different standards do matter *if* the "BPAI repackage the Examiner's reasoning as their own and claim they did a de novo review." I mean, if the BPAI hides the ball, what are you gonna do?

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  5. >I'm not sure the different standards do matter *if* the "BPAI repackage the Examiner's reasoning as their own and claim they did a de novo review." I mean, if the BPAI hides the ball, what are you gonna do?

    Karen, I agree that, as far as proceedings at the USPTO, the different standards won't matter if the BPAI hides the ball. Their decisions are often final because of the expense of proceeding to the Fed Cir, not because they are correct.

    However, I think the two standards start to look different at the Fed Cir when the Applicant provides more than "this element is missing" but instead offers detailed reasoning as to why the element is missing. Under a de novo standard, the BPAI will likely engage in more explicit consideration of the reference(s) as a whole, of reasonable claim construction, and balancing of Applicants' vs Exameriner's reasoning - at least vis-a-vis the argued claim element. Under an error standard, the BPAI can say nothing more than "Applicants' arguments do not show reversible error in the rejection," by explaining why Applicant's position is wrong or by latching on to any uncontested aspect of the Examiner's reasoning to affirm (without explicitly considering how the Examiner's reasoning is correct).

    I think the more detailed, explicit discussion under de novo would be much more likely to get the decision correct and much more likely expose flaws in an incorrect opinion for appeal than the gotcha! error standard. As a practitioner, I know I would have much more confidence (and yes, personal satisfaction) in an opinion that went through a fuller de novo discussion of the appealed issues instead of only pointing out flaws in my arguments.

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