“On appeal, the Applicant must persuade the BPAI of reversible error.” A number of recent, post-Frye Board decisions start with this statement, or a similar allocation of burden of proof. These Board decisions are just plain wrong.
The burden of persuasion only shifts to the appellant after an examiner presents evidence (or at least argument) on every element of a prima facie case, following required procedure. On appeal, as throughout ex parte proceedings, the burden is on the Board to establish prima facie unpatentability to a preponderance of evidence. Before the Board, the examiner is just an advocate, not a lower-tribunal fact-finder, and has no claim to deference. While the appellant has the option to simply take “pot shots” against the examiner’s prima facie case, the examiner cannot create a prima facie case through mere conclusory statements. The Board must evaluate the evidence as a neutral and let the evidence speak for itself. “Demonstrate reversible error to the Board” may be good practical advice, but the Board itself has committed reversible error when it states this as the foundation for a decision.
That’s the legal requirement. However, good tactical practice may counsel that an appellant go further.
An examiner must meet both components of the legal burden
Everything starts with the examiner. An examiner has two burdens, one substantive, one procedural. The examiner has a substantive obligation to find a good reference, and a separate procedural obligation to explain the correspondence between the claim and the reference.
The procedural obligations arise under 37 C.F.R. § 1.104, MPEP Chapter 2100, the Administrative Procedure Act, and the like. The most important (and frequently-breached) elements of the examiner’s procedural burden—referred to as “the prima facie case”—include:
- When a reference is complex or shows or describes inventions other than that claimed by the applicant [that is, in any § 102 rejection where the reference shows anything more than the claim, and in all § 103(a) rejections], the particular part relied on must be designated as nearly as practicable.
- The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. Note the word “apparent”—“open to view, clear or manifest to the understanding.” Office Actions are not IQ tests for applicants or guessing games. The examiner has an obligation to clearly and unambiguously communicate the basis for the rejection.
- The examiner must make each showing on each legal element of the prima facie case specified in Chapter 2100 of the MPEP. To meet this procedural obligation, the examiner doesn’t have to be right, but the examiner can’t be silent or substitute a different test.
- Like all other decisions of all other federal agencies, “At a minimum, [an agency decision must] ‘examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” MPEP § 707.07(f) incorrectly states that an examiner “should” answer all material traversed; it’s a statutory “must.”
- On appeal, the Examiner’s Answer must “point out where all of the specific limitations recited in the rejected claims are found in the prior art,” and should compare the claim feature-by-feature with the prior art, with a reference to the specific page, line number.
The burden of proof has two subcomponents – the burden of going forward (that is to identify an issue), and the burden of persuasion. On appeal, Frye and dozens of Federal Circuit cases tell us that an appellant has only the burden of going forward, not the burden of persuasion – on prima facie case issues, the burden of persuasion always stays with the PTO, to a preponderance of evidence. The appellant can meet the burden of going forward by identifying an error in the examiner’s position, either procedural or substantive.
If the examiner failed to address an element of the prima facie case, the appellant fully discharges the burden of going forward by identifying a procedural failure. If the examiner addressed all elements of a procedural prima facie case, then the appellant must come forward with argument or evidence. A “prima facie case” procedural challenge is analogous to a Rule 12(b)(6) motion in court—it’s a procedural filter that does not test the truth or falsity of the statements, but does require a complete pleading. A plaintiff can usually defeat a 12(b)(6) motion with by an amended pleading – unless there really is no evidence to support an element of a prima facie case. In those cases, a 12(b)(6) motion results in dismissal of a case, usually with leave to replead. A procedural challenge on appeal to the Board results in withdrawal of a rejection, with leave to the examiner for a "do over" that is procedurally complete.
In a procedural challenge, the relevant difference is between the Office Action and law that says “the examiner must do such and so” – all you have to do is show that the examiner didn’t do such and so. The relevant facts are the written contents of the Office Action measured against the procedural law. A procedural challenge to a § 102/§ 103 rejection points out silence in the Office Action, or a non-MPEP test. A procedural challenge to a § 112 ¶ 1 rejection points out that the Action did not attempt to show the “burden on the examiner” set forth in MPEP §§ 2163.04 or 2164.04. The contents of the reference and the meaning of the claim are irrelevant in a procedural challenge.
If the examiner failed to address a claim limitation (as is the norm in the 3690s business methods art units) or neglected an element of the prima facie case set forth in MPEP Chapter 2100, then an appeal brief meets its legal burden by simply pointing out the procedural failure. This isn’t “conclusory,” it’s a fully adequate procedural rebuttal—“conclusory” is a criticism that can only be leveled at a party that bears the burden of proof. Under the law, it is entirely adequate to do what the appellant did in Lukanc, to simply point to claim language that the examiner did not address. A procedural error is still error, and it’s reversible. (The Board’s error in Lukanc is discussed below.)
A substantive challenge to a § 102/§ 103 rejection points out the difference between the claim and the reference: the claim says x, and the reference doesn’t have an x. A substantive challenge to a § 112 ¶ 1 rejection points out support in the specification for the claim: the claim says x, and the specification supports x at page y.
The Board has held on many occasions that when the examiner does a procedurally-incomplete job of examination, the ambiguity and incompleteness deprives the Board of justiciable ability to decide an appeal.
That’s the legal minimum. Tactical concerns may counsel going further!
A procedural challenge is only a sound tactic if the examiner truly is silent and the reference (to the degree you understand it—and for this to work you have to read it carefully) truly is silent (as opposed to teaching something that could be misinterpreted). There’s no point in making a procedural argument if you’re going to lose on the substantive point once the Board reads the reference. A procedural challenge is only worth doing when you could win on the substantive point, but you’ve reviewed the reference sufficiently to be confident that you don’t need to.
The benefit of a procedural challenge during examination is that it forces the examiner to think and to clarify—after all, if something is there and you missed it, you want to know about it! During examination and appeal, a procedural challenge creates almost no prosecution history estoppel. Furthermore, it’s relatively easy to write a appeal brief that points out an error in procedure. In contrast, it's really hard to write a persuasive brief that rebuts a position which the examiner didn't even state on the record.
The risk of a purely procedural challenge is that there might be something in the reference that you don’t see. If the Board sees it, you’re in deep trouble.
On the other hand, if the examiner completed the procedural requirements for rejecting a claim, but the claim and reference don’t match up the way the examiner says, then the examiner has met the procedural burden, and you have to make a substantive challenge. You must meet the examiner head on, and show the substantive difference. You either have to show that the examiner’s interpretation of the claim is overbroad, or that the examiner’s interpretation of the reference is wrong, that the examiner missed the § 112 ¶ 1 support, or that there’s another legal flaw.
You have to keep in mind that Board members are generally less familiar with the specific technology than examiners are. So if a reasonable person could misunderstand the technology, you should explain it.
The other tactical problem with procedural challenges is that they hit the Board in several institutional blind spots.
First, procedural issues are outside the Board’s jurisdiction  The Board only has jurisdiction to review issues of ultimate patentability, not procedural issues, and therefore is unaccustomed to them, and consequently gives them little or no weight.
Second, there’s the training and cultural problem that pervades all PTO proceedings. For private sector lawyers, shortcutting procedures that favor the other side, misquoting the legal sources you rely on, or taking extreme legal positions are penalized: inequitable conduct, lost cases, angry clients, scolding from the judge, sanctions, and the like. In contrast, there are very few settings in which the PTO rewards its employees for scrupulous application of legal care and procedural rules that protect applicants (indeed, for both examiners and the Board, breach is often rewarded as the shortest path to production counts). Consequently, the procedural standard that most PTO employees perceive as “normal” is pathologically below the standard that prevails in any other American legal setting that I know of—even divorce lawyers are more respectful of the procedures that keep things moving predictably than the typical PTO employee is, because even divorce lawyers are accountable to a judge who will discipline them if they get out of line. The level of procedural predictability that lawyers expect of each other, even as adversaries, cannot be taken as a given in any part of the PTO. While the Board is better than the average examiner, almost all Board members came of age professionally in a culture that does not give the feedback that forces young lawyers to be careful and attuned to the procedural protections that ensure fairness for all parties. Thus, procedural challenges are treated less carefully than you are used to in any other tribunal.
You just have to accept that procedure simply doesn’t reach conscious consideration at the Board—-breaches are seldom intentional, but through simple lack of awareness or attention or training in the importance of procedural protections and predictability, the effects can be indistinguishable.
What is the Board legally required to do after a purely procedural challenge?
If your appeal brief raises only a procedural challenge, the law is clear that the Board lacks jurisdiction to adjudicate either the procedural issue per se, or the substantive issue. In some cases, the Board will correctly dismiss a purely procedural appeal for lack of subject matter jurisdiction. A remand can be even better than a reversal, because now it’s clear that the examiner’s management must enforce procedural rules during § 131/§ 132 examination if the application is to make progress, and the can’t shrug initial examination off to the Board and its three-year appeal backlog. But as we’ll see, any thought that you can rely on procedural law is just as risky at the Board as it is before an examiner.Anyone that spends any time reading Board decisions will be utterly shocked at the cavalier treatment that the Board gives to procedural law.
What does the Board actually do, and what do you have to do to hedge risks?
However, in most cases, the Board will skip a procedural issue raised in the briefs, and fast-forward to the substantive issue, to evaluate the evidence for itself. If the Board can’t find support for the rejection, the Board will rule that you win on the merits, even if you didn’t raise a substantive issue.
However, now another risk comes into play. By jumping forward to evaluate issues that you didn’t raise, the Board is now adjudicating issues on the merits that you did not brief. Remember that Board members are necessarily broader generalists than examiners, and are likely less familiar with the basics of the technology in your area. When the Board goes beyond the technological discussion in your brief, the Board’s evaluation of facts can be rather unpredictable. Thus, regardless of whether make a procedural or substantive challenge, you may want to explain more than you are legally required to, in order to prevent this kind of error.
Board decision on the merits
If the Board finds the limitation in the reference (but the Action didn’t meet its procedural obligation), the Board is legally required to provide an explanation of how the claim meets the reference, even if you only raise a procedural challenge. If the Board “advance[es] a position or rationale new to the proceedings” or new finding of fact, or changes “the precise reason why the claim fails [a statutory] requirement,” the law requires that the Board designate its decision as a “new ground of rejection,” which gives you some procedural protections under 37 C.F.R. § 41.50(b).
However, I and several other practitioners have noticed that several APJs are very reluctant to follow Federal Circuit law as to the definition of “new ground,” and are reluctant to designate new grounds. So you have another risk here, and a prudent lawyer should hedge this risk too.
Comments on some of the cases discussed in Karen’s post last week
Yanagita illustrates Karen’s point well. Assuming that the Board is correct, that the examiner genuinely did state the attributed factual findings, then the appellant erred by not addressing them head-on. It looks like the appellant’s screw-up here was failing to address the “broadest reasonable interpretation” issue. But the Yanagita Board does make a procedural, and probably reversible error — in starting off the opinion by stating the examiner’s statements as if they were findings. That’s wrong. On appeal, the Board makes factual findings de novo, after independent study of the record. Presenting the examiner's statements as findings of fact reflects the Board’s confusion as to its role under § 555. The examiner’s statements are only statements of an advocate, helpful to direct the Board’s attention to evidence, but not “findings” of a lower tribunal analogous to a district court's on Federal Circuit review. The Board’s mischaracterization of the procedural relevance of an examiner's Answer places its substantive decision vulnerable to judicial challenge.
Blouin is much like Yanagita. Demonstrating one of the risks I point out above, the Board errs by applying a “unpersuasive of reversible error” standard. No, the Board is to reevaluate the evidence do novo. What the examiner did or didn’t say is irrelevant. (And again, this wrong standard of review exposes the Board to judicial challenge at the Federal Circuit.) Perhaps the case comes out the same way under the correct standard of review, perhaps not, and the Federal Circuit would almost certainly vacate and remand for this determination if asked to do so.
The lesson is that as of January 2011, you still have to include a fair amount of discussion in an appeal brief merely to prevent legal errors by the Board, even though this is not legally required.