Thursday, January 20, 2011

Guest Post: Burden of Proof at the BPAI

[Guest Post by David Boundy. David is a Vice President and Assistant General Counsel for Intellectual Property for a prominent Wall Street brokerage firm. The views he expresses here are not those of the firm or any other clients. David is a co-author of the book Patent Prosecution, to be published in 2011 by Oxford University Press.]

“On appeal, the Applicant must persuade the BPAI of reversible error.”[1] A number of recent, post-Frye[2] 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.[3] “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.[4]

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.[5]
  • 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.”[6] 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.[7]
The practical burden on an appellant depends on whether the examiner did or didn’t address all procedurally-required prima facie elements

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.[8] 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.[9] 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.[10]

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 [12] 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.[11] 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.[12] In some cases, the Board will correctly dismiss a purely procedural appeal for lack of subject matter jurisdiction.[13] 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.[14]

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,[15] 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,”[16] 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

Lukanc is easy. This is a November 20, 2008 decision, issued the month when the pendulum had swung farthest, before external oversight and a new administration began to force things to get better at the PTO in December 2008 and February 2009. In late 2008, the Board had misapprehensions that it was an Article III court rather than an “informal adjudication” tribunal under 5 U.S.C. § 555 of the Administrative Procedure Act. Under this misapprehension, the Board gave examiners “clear error” deference, and required applicants to “convince us of reversible error.” Three weeks after Lukanc, OMB instructed the Board that it was not to implement the 2008 Appeal rules. Lukanc is a better demonstration of what should not be happening any more (especially not post-Frye) than an object lesson for today.

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.[17] 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.


[1] Ex parte Rovira, at 6-9, 2010 WL 3827079 at *3-*4 (BPAI Sept. 29, 2010). I have no opinion whether Rovira is correctly decided on the merits, only that the statement of standard of review is incorrect, and it looks like the outcome could turn on the standard of review. A misstated standard of review – especially crossing the boundary from non-deferential standards on the reviewing tribunal’s reasoning (de novo or clear error) to a deferential standard on the underlying tribunal’s reasoning (substantial evidence, arbitrary and capricious, or “convince us of error”) – changes the evidence that is potentially relevant and the way the evidence is analyzed.


[2] Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (en banc, precedential).


[3] In the Administrative Procedure Act framework, the Board functions as a de novo initial fact-finder, not an appellate tribunal. It’s more meaningful to speak of the Board applying a “standard of proof” – preponderance of evidence—and less meaningful to speak of “standard of review.”


[4] Cooper Industries Inc. v. Leatherman Tool Group, Inc., 532 U.S. 424, 443, 58 USPQ2d 1641, 1649 (2001) (incorrect standard of review is reversible error); Dickinson v. Zurko, 527 U.S. 150, 165, 50; USPQ2d 1930, 1936–37 (1999) (same); Price v. Symsek, 988 F.2d 1187, 1194, 1196, 26 USPQ2d 1031, 1036, 1038 (Fed. Cir. 1993) (remanding because the Board used the wrong standard of proof).


[5] Ex parte Govindan, Appeal No. 2001-0758 at 5, 2002 WL 32334569 at *3 (BPAI Nov. 15, 2002) (unpublished) (“We would further emphasize what should be self-evident: the examiner must present a full and reasoned explanation of the rejection in the statement of the rejection, specifically identifying underlying facts and any supporting evidence, in order for appellants to have a fair and meaningful opportunity to respond,” emphasis in original).


[6] 5 U.S.C. § 555(e) (agency must give a “brief statement of grounds”); Tourus Records Inc. v. Drug Enforcement Admin., 259 F.3d 731, 736–37 (D.C. Cir. 2001) (citing Motor Vehicle Mfrs. Ass’n of United States, Inc. v. State Farm Mutual Auto. Ins. Co., 463 U.S. 29, 43 (1983)).


[7] MPEP § 1207.02(A)(9)(c) and (d)(i) (); Form Paragraph ¶12.157.01.


[8] That is, until the examiner has a fully-articulated, fully-supported prima facie case of obviousness, and patentability turns on Graham factors.


[9] In re Oetiker, 977 F.2d 1443, 1445–46, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. ... If examination at the initial stage does not produce a prima facie case of unpatentability, then without more the applicant is entitled to grant of the patent ... We think that the PTO is correct in treating the concept of the prima facie case as of broad applicability, for it places the initial burden on the examiner, the appropriate procedure whatever the technological class of invention,” emphasis added); In re Rouffet, 149 F.3d 1350, 1355, 1359, 47 USPQ2d 1453, 1455, 1459 (Fed. Cir. 1998) (“To reject claims in an application under section 103, an examiner must show an unrebutted prima facie case of obviousness. In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent. On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness.”)


[10] Ex parte Braeken, 54 USPQ2d 1110, 1112–13 (BPAI Dec. 21, 1999) (unpublished) (noting that the appeal is “not ripe” because of omissions and defects in the examiner’s analysis); Ex parte Govindan, Appeal No. 2001-0758, at 7, 2002 WL 32334569 at *5 (BPAI Nov. 15, 2002) (unpublished) (“[W]e find that the incomplete, inconsistent analysis of the claims, and the inaccurate analysis of the prior art, preclude meaningful review. Accordingly, we vacate the rejection of record and remand the case to the examiner”).


[11] See also the recently-published Notice of Proposed Rulemaking for Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals (RIN 0651‑AC37), 75 Fed. Reg. 69828 (Nov. 15, 2010), which has a number of “waiver” and similar provisions that operate against applicants, but expressly keep all options open for the Board to rule in favor of the examiner, no matter how incomplete the examiner’s half of the record.


[12] The Board lacks jurisdiction to hear issues that “dispute the administrative processing of [a rejection alleged to be procedurally improperly raised during] the prosecution.” The Board insists that “the proper procedure is to seek review by way of petition…” Ex parte Edwards, Appeal No. 98-1396 at 4, 1998 WL 1736081 at *2 (BPAI Apr. 27, 1999) (non-precedential); Ex parte Dutton, Appeal No. 2009-014442, http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009014442-09-10-2010-1 at 7, 2010 WL 3803762 at *3 (BPAI Sep. 10, 2010) (unpublished) (“Dutton complains that the Examiner failed to follow guidelines set out in the Manual of Patent Examining Procedure ('MPEP'). The MPEP, however, provides guidance for Examiners: … Failure to comply with guidance is not per se appealable to the Board, as the jurisdiction of the Board is limited to review of rejections. Relief regarding the conduct of the examination must be sought via the supervisory chain of authority over the Examiner.”)


[13] For examples, see cases cited in footnotes 10 and 12.


[14] For example, two weeks after the Executive Office of the President specifically instructed the Board to apply only the 2004 appeal rules and no more, the Board held that it would enforce a provision of the forbidden 2008 appeal rule. Compare Ex parte Borden, Appeal No. 2008-004312, 93 USPQ2d 1473, 1474-75 (BPAI Jan 7, 2010), to PTO's request for approval, amended to reflect OMB refusal to approve 2008 Appeal Rules and OMB approval conditioned on reversion to 2004 Appeal Rules and Precision Specialty Metals v. U.S., 315 F.3d 1346 (Fed. Cir. 2003) (replacing key language from a quotation with ellipses is sanctionable misconduct).

[15]Tourus; footnote 7, In re Vaidyanathan, 381 Fed. Appx. 985, 991, 96 USPQ2d 1507, 1512–13 (Fed. Cir. May 19, 2010)(unpublished)


[16] In re DeBlauwe, 736 F.2d 699, 706 n. 9, 222 USPQ 191, 197 n.9 (Fed. Cir. 1984); In re Kumar, 418 F.3d 1361, 1368, 76 USPQ2d 1048, 1052 (Fed. Cir. 2005) (“In calculating the overlapping values, the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response.”); Hyatt v. Dudas 551 F.3d 1307, 1312–13, 89 USPQ2d 1465, 1468–69 (Fed. Cir. 2008).


[17] Perhaps an analogy is useful: hearsay statements can be admitted for the fact that they were made, even if not admissible for the truth of the matter asserted. Likewise, an examiner’s statements are relevant on the procedural issue that the statements were made, but they are not “findings” at the Board to support the truth of the matter asserted.

24 comments:

  1. "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."

    Every APJ needs this explained to them.

    "See also the recently-published Notice of Proposed Rulemaking for Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals (RIN 0651‑AC37), 75 Fed. Reg. 69828 (Nov. 15, 2010), which has a number of 'waiver' and similar provisions that operate against applicants, but expressly keep all options open for the Board to rule in favor of the examiner, no matter how incomplete the examiner’s half of the record."

    So true.

    "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."

    Amen, brother David.

    Hallelujah!

    ReplyDelete
  2. What Dave doesn't understand he shows off in the first paragraph.

    "The burden of persuasion" /= persuasion of reversible error.

    To be clear, the examiner bears the burden of persuading the board that the rejection is proper, and the board must review the case. However, finding no issues on their own (note that the board will not spontaneously make up issues itself ordinarily) the applicant must show them the error that supposedly happened.

    "On appeal, as throughout ex parte proceedings, the burden is on the Board to establish prima facie unpatentability to a preponderance of evidence. "

    His mistakes continue, apparently believing that the board is responsible for making a rejection, rather than reviewing the case before them.

    "Before the Board, the examiner is just an advocate, not a lower-tribunal fact-finder, and has no claim to deference. "

    Citation needed.

    "The Board must evaluate the evidence as a neutral and let the evidence speak for itself."

    True, at least generally speaking in your everyday case. Who contests this? Nobody that I know of.

    "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.[4]"

    You might be right, except for the fact that this isn't really the "standard of review". It is entirely possible that they evaluated the evidence de novo and impartially and were convinced, without having been so explicit in their decision. So far as I'm aware, they're under no obligation to write down that they did their job. Just as examiners are not. If you have reason to believe otherwise do tell.

    "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."

    Or it results in the board filling in the procedural step for the uninformed examiner and you get a rejection which is not based on a new ground. Ala Karen's example case she brought up.






    One major thing of note, that goes totally untouched upon in all this nonsense Dave spews, is just why appeal, rather than petition, is the appropriate place to address all these procedural, rather than substantive, issues.

    Perhaps he could touch for a second on that. Why do we even have the board bothering with procedural issues? Shouldn't you just petition the director or go to the district court if that fails?

    "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. "

    See now that I don't know about. "limitations" are arbitrarily defined. Where you might find three limitations in a claim stating:
    a bicycle comprising:
    a seat
    handlebars
    a wheel.

    I might find but a single limitation, a bike. Bike's all have those things.

    Thus, it would be impossible for a procedural challenge based on an examiner supposedly not addressing a limitation to be successful. If a brand new huffy bicycle (complete with all standard parts) is shown in the reference, the limitations are met AND PROPERLY ADDRESSED.

    That is, the applicant can always try to make the case complicated, but perhaps the examiner considers it to be fairly simple subject matter. Something he sees everyday for example.

    ReplyDelete
  3. "then an appeal brief meets its legal burden by simply pointing out the procedural failure. This isn’t “conclusory,”"

    I think it probably can be conclusory. I can also be done in such a way as not having been done in a conclusory fashion. I think this is where you, and Karen (as well as the rest of the patent bar and patent professionals everywhere including myself) part ways. You think that just stating a mistake was made is sufficient. However, we believe you need to explain just wtf you're talking about before the board has any real burden to discuss it with you.

    "—“conclusory” is a criticism that can only be leveled at a party that bears the burden of proof. "

    I think that word is being used in more than one way in this discussion likely leading to the differing points of view.


    Everyone should note that Boundy supposedly being an expert on the matter is all well and good, but it is entirely possible that he is the one with the radical idea (that patent prosecutors everywhere <3 when they hear) that he has to explain to everyone because it isn't actually the right way of viewing what is going on.

    "A procedural error is still error, and it’s reversible. "

    Yes, but is it one that the board should be handling? I don't know about that one. We have petitions for procedural nonsense. They should simply make this a non-appealable matter and move on with substantive issues.

    "The benefit of a procedural challenge during examination is that it forces the examiner to think and to clarify"

    Actually all it does is make you spend time teaching the examiner and wastes the client's money. But whatevs.

    "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."

    Only if you're incompetent :( Sorry, but it is true! Also, that is a conclusory statement. See how I just used the word "conclusory" there? Yet I had no burden of proof.

    "several other APJs remain whose respect for the rule of procedural law is suspect."

    Maybe because they feel like some issues should go to petitions and others to appeal?

    "Anyone that spends any time reading Board decisions will be utterly shocked at the cavalier treatment that the Board gives to procedural law.[14]"

    I'm not, they have better things to do than be your personal TQAS to teach the young examiner how to designate limitations. By the time the case gets to the board the examiner will likely have learned how anyway.

    "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,” "

    Because the Fed. Circ. plays fast and loose with the law.

    "At that time, the PTO was closer to a Racketeering Influenced and Corrupt Organization than a federal agency seeking to apply the law “in a fair, impartial, and equitable manner.” "

    The ol' my position is correct because of a conspiracy theory of mine explanation eh?

    "Blouin is much like Yanagita. Demonstrating one of the risks I point out above, APJ Colaianni 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. "

    I'm not sure if you're aware, but I believe that I've heard several places that all members of the board are equally powerful, including the director to the other members (save for the director having the ability to stack the judge panel in any decision he wants to to have it turn out his way if he should decided to do so). I'm not so sure that Kappos making a proclamation, or clarificationlol, for De Novo review makes it so.

    ReplyDelete
  4. "What Dave doesn't understand he shows off in the first paragraph."

    And what 6tard doesn't understand he shows off in two lengthy, ramblingly incoherent posts.

    ReplyDelete
  5. >However, we believe you need to explain just
    >wtf you're talking about before the board has
    >any real burden to discuss it with you.

    *I* believe that you "need" to explain in the sense that you're more likely to *win* at the BPAI when you explain what you're talking about. Based on BPAI decisions like the ones I blogged about.

    Mine is purely a practical or tactical recommendation. Rather than what is "right" or what "should be".

    >Everyone should note that Boundy supposedly
    >being an expert on the matter is all well and
    >good

    We know something about Boundary's experience and qualifications. And he gives lots of cites. Using these two things, we can decide for ourselves whether what he says is accurate.

    In contrast, many anonymous posters here give little or no information about their qualifications, and offer nothing but unsupported opinion.

    Who am I gonna believe?

    >it is entirely possible that [Boundy] is the
    >one with the radical idea [which] he has to
    >explain to everyone because it isn't actually
    >the right way of viewing what is going on.

    Or maybe Boundy's views -- and even some of mine -- seem radical simply because they
    are unfamiliar.

    You can prosecute patents for a long time without ever hearing about "burden of proof" -- it's not in the MPEP, and most folks don't read BPAI decisions.

    I believe there are many patent prosecutors who are unfamiliar with the appeals process. Some prosecutors simply don't appeal, whether because of personal or client preference.

    >We have petitions for procedural nonsense

    Are you referring to petitionable stuff like
    like improper finality, improper restriction, refusal to enter evidence? As well as maybe-should-be-petitionable such as "Ex didn't lay out a prima facie case" ?

    It's easy for you to says it's "nonsense" to you because you don't have anything at stake.

    Some of my clients might even consider it nonsense, and prefer me not to fight about it.

    But other clients may want me to fight this "nonsense" rather than paying for endless cycles of RCEs, or endless cycles of Notice of Appeal followed by reopened prosecution.

    >They should simply make this a non-appealable
    >matter and move on with substantive issues.

    So you're suggesting that if an Applicant doesn't think the Examiner met the burden of proof (point out where each element is taught, etc.), then he petitions rather than goes to appeal?

    I'd love to have the option of getting a decision on the procedural error before addressing the substance of the rejection. [Not saying I'd exercise it every time, but I'd like the option.]

    But a petition isn't an option, since it doesn't stop the 6-month clock for reply to an Office Acion. What stops that clock is a Notice of Appeal.

    >I'm not so sure that Kappos making a >proclamation, or clarificationlol, for De Novo
    >review makes it so.

    De novo review isn't simply a proclamation from Kappos. It's part of a precedential decision, which is binding on all APJS. Right?

    ReplyDelete
  6. "Are you referring to petitionable stuff like
    like improper finality, improper restriction, refusal to enter evidence? As well as maybe-should-be-petitionable such as "Ex didn't lay out a prima facie case" ?"

    Sure, why not? It is all procedural mess. It has to do with the way the office went about doing its business, not with the business itself, as Boundy clearly articulates. Really all you're asking for is someone to tell the examiner he did a bad job at doing his job and to do it over and make sure it is done correctly this time. And making it a petitionable matter will help examiners to realize just wtf it is you're talking about when you make this type of argument.

    ""So you're suggesting that if an Applicant doesn't think the Examiner met the burden of proof (point out where each element is taught, etc.), then he petitions rather than goes to appeal? ""

    I don't see what would be wrong with this. It would seem to me to be a better system than what is supposedly in place now.

    "And he gives lots of cites"

    On everything that is non-controversial and isn't his main thesis. (or at least relatively non-controversial, I'm looking at Frye in that regard).

    /golfclap

    "Who am I gonna believe? "

    I don't care who you particularly believe Karen. I think you are more than qualified to make your own mind up without being blindly led around by anyone else.

    "You can prosecute patents for a long time without ever hearing about "burden of proof" -- it's not in the MPEP, and most folks don't read BPAI decisions. "

    That's because it probably doesn't exist in this non-court context, the Fed. Circ. and the board sometimes, just tosses lawl around however they please and it gives people like Dave a woody. They don't want the board to be an article III court but they sure want a lot of what article III courts have to put up with in terms of nonsense to apply to the board.

    If you look over the history of the board you'll see just why things are in such a constant state of F*%&ed up. I do agree with the recent effort to kind of standardize them a bit (Oetiker, Frye, etc.) but it seems like it should be congress doing the mandating in this area, not courts, and not the BPAI itself.

    "De novo review isn't simply a proclamation from Kappos. It's part of a precedential decision, which is binding on all APJS. Right? "

    I loled. Yeah, it is "binding" up until some judges decide "oh you didn't read that right" or "we misspoke" or the next director comes in and says "I want to do it different".

    "It's easy for you to says it's "nonsense" to you because you don't have anything at stake."

    Not at the current moment, but who knows what'll happen next week?

    "I'd love to have the option of getting a decision on the procedural error before addressing the substance of the rejection. [Not saying I'd exercise it every time, but I'd like the option.]"

    Then tell Kappos. If you think it is within the law, then tell him it'll let him shrink his board backlog. He'll be happy.

    ReplyDelete
  7. "You can prosecute patents for a long time without ever hearing about 'burden of proof' -- it's not in the MPEP, and most folks don't read BPAI decisions."

    Not so. See MPEP 2142, 2163.04, 2164.04, 2183, and 2184, at least.

    ReplyDelete
  8. >>You can prosecute patents for a long time
    >>without ever hearing about 'burden of proof'
    >> -- it's not in the MPEP,

    >Not so. See MPEP 2142, 2163.04, 2164.04,
    >2183, and 2184, at least.

    You're right, of course. I was too hasty.

    Despite the discussion of burden of proof in the MPEP, I do think that most practitioners think of prima facie/burden of proof only in the context of 103 and secondary factors. Since most practitioners don't argue secondary factors, I'd say they really don't think that burden of proof is relevant to their practice.

    And, as a practical matter, perhaps it's not. As a practical matter, perhaps you want the Examiner and the Board to get to the substantive issue so the case can move forward.

    ReplyDelete
  9. "And, as a practical matter, perhaps it's not. As a practical matter, perhaps you want the Examiner and the Board to get to the substantive issue so the case can move forward."

    I'd agree with that assessment. But I've always tried to explain the burden to the examiners when they've failed to meet it and then provided an "explanation" so to speak.

    For example, I frequently get written description and/or enablement rejections that are just woeful. The usual, "Claim 1 is rejected as not enabled because it is unclear how element A is connected to element B" or "Claim 1 is rejected as lacking written description because it's unclear what element A is." Just atrocious.

    I always explain to the examiner what the burden is for establishing a prima facie case for those rejections. And then I explain why the burden hasn't been met.

    What I get in response is usually a form paragraph, or silence. And the OA is a final rejection of course.

    To petition that is pointless. The know-nothing-do-nothing GS-15's they have over there are going to tell me to appeal, and even if they don't they are not persons of competent legal knowledge and are going to get the petition decision wrong. That's assuming they even get to my petition before the 6 month period runs out, at which point I'll have to file a notice of appeal anyway.

    We already have a process in which applicants can explain why the examiner hasn't met his burden, and to request that the examiner either meet the burden or allow the application. It's called Rule 111.

    It's the same thing with 103 rejections. You get the standard "It would have been obvious to combine reference A with reference B. See In re Inapposite-boilerplate-case-law-the-examiner-the-examiner's-SPE/primary-as-well-as-every-TC-QAS-TC-Director-has-never-actually-read" rejection and you respond that the examiner hasn't provided an articulated reasoning with rational underpinning based on the facts of the application under examination and hasn't established a prima facie case. What you get back is garbage form paragraphs or silence.

    You want to make that petitionable instead of appealable?

    That's gotta be the worst idea I've ever heard.

    So you're gonna have QAS's and SPRE's, who are nothing more than burned out SPE's and primaries with ZERO legal competence, decide these petitions? Those grossly overpaid, grossly underworked thumb twiddlers? Puh-leeze.

    BTW, the IPO's comments on the proposed Appeal rules (sent in last week) are a good read, and confirm pretty much everything David wrote in his post.

    But what does the IPO know, right? I'm sure the anonymous tard examiner who posts here knows much more than a bunch of actual lawyers.

    ReplyDelete
  10. One more thing, the IPO's comments are right on point when they discuss that the percentage of pre-appeal cases that get re-opened and the percentage of reversals demonstrate that the examining corps, and the useless management of the examining corps, is really not well trained when it comes to making determinations of patentability. That's stating it politely. When 56% of the rejections that are challenged by a pre-appeal request are found to not have even ONE rejection that is worth being decided by the BPAI, a lot more work needs to be done just getting the examining corps and the SPE's up to a bare minimum level of competence.

    ReplyDelete
  11. "So far as I'm aware, they're under no obligation to write down that they did their job. Just as examiners are not. If you have reason to believe otherwise do tell."
    37 C.F.R. § 1.2 states "[t]he action of the Patent and Trademark Office will be based exclusively on the written record in the Office." Gechter v. Davidson, 1167 F.3d 1454, 1460 (Fed. Cir. 1997). In sum, we hold that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review. In particular, we expect that the Board's anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings. Claim construction must also be explicit, at least as to any construction disputed by parties to the interference (or an applicant or patentee in an ex parte proceeding). While not directly presented here, obviousness determinations, when appropriate, similarly must rest on fact findings, adequately explained, for each of the relevant obviousness factors in the Supreme Court's decision in Graham.

    "Why do we even have the board bothering with procedural issues?"
    Because, for example, whether an Examiner meets the requirements of 37 CFR 1.104(c) goes a long way in determining whether the Examiner has set forth the basis for any rejection so as to put Appellants on notice of the reasons why Appellants are not entitled to a patent on the claim scope that Appellants seek – the so-called "prima facie case." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992);

    "I might find but a single limitation, a bike. Bike's all have those things."
    That is a finding of fact accompanied by an inherency argument. Produce evidence that all bikes (presumably shorthand for bicycle) necessarily have all the elements you have attributed to them. This is what the law requires. Look at MPEP 2112.

    "That is, the applicant can always try to make the case complicated, but perhaps the examiner considers it to be fairly simple subject matter. Something he sees everyday for example."
    If it is something they see everyday then it would be pretty simple to set forth proper findings of fact. Would it not?

    What I see is an Examiner who thinks that what is claimed is just like everything else they've seen before except in their haste, they miss the one twist that distinguishes the invention of the prior art. They gloss over it in the rejection and are shocked when the response comes back with no amendments to the claims and their final rejection gets appealed.

    "However, we believe you need to explain just wtf you're talking about before the board has any real burden to discuss it with you."
    No deference means no deference. If your original explanation isn't good enough to get you over the prima facie threshold, then you should lose. Granted it is nice to explain why the Examiner is wrong, and I do it all the time. However, when I have a 20 word phrase and the best the Examiner gives me is "See paragraphs [0014], [0078]," then what am I supposed to do? Make s___ up?

    ReplyDelete
  12. "What I get in response is usually a form paragraph, or silence. And the OA is a final rejection of course. "

    You're a bad teacher :( I never have that much trouble teaching my fellows about 112 1st etc. Sometimes they resist a tiny bit, but I usually win the day quite easily.

    "You want to make that petitionable instead of appealable?

    That's gotta be the worst idea I've ever heard"

    Alright alright. I hear what you're saying. Basically that nobody in the entire office knows wtf is going on because they're all so ignorant and nobody has bothered to go tell Kappos that his entire organization is ignorant to the point of often not even doing their jobs. Either that, or their jobs are actually different from what you believe, and that this is beyond your comprehension and thus cannot be what is actually happening.

    Ok. Maybe you're right. Assuming you're right, and that Boundy is right in so far as the board is equally, or nearly equally as ignorant, there still should probably be something other than appeal to turn to. I don't know, maybe it needs to be a special "petitions", or whatever, branch staffed by "process" lawyers.

    The fact is that apparently this is an argument you'd like to be able to make, but nobody here understands it at all, even after you *attempt* to explain it to them. Furthermore, you feel like this situation arises quite often. Obviously you need somewhere to turn to for such a mundane matter that simply cannot be resolved by underlings other than the board.

    "But what does the IPO know, right? I'm sure the anonymous tard examiner who posts here knows much more than a bunch of actual lawyers. "

    Hey man, I just call em how I see em. And so do they. I do not presume to know much more than them, but I do doubt if they know much more than me on such a simple issue. There is only so much to know.

    So where are these IPO comments?

    "Would it not?"

    Um no. You're talking about 10's-100's-1000's of these things that supposedly need to be made, according to you, per case. In that bike case for instance, what about the 50 dependent claims?

    In fact, the only specific limitations that technically need be put down are those that are found in a complex situation and/or are not readily apparent from glimpsing the reference.

    "That is a finding of fact accompanied by an inherency argument."

    Certainly not inherency. You could theoretically have a bicycle that doesn't have a handlebar, it might have a steering wheel or something. But it could be an "implicit" argument if the reference doesn't actually show the handlebar but you would imply one was there. Or, it could just be a factual finding if the handlebar is right there in the fin picture. The point is, the case is so simple that you don't need to point out the handlebar that is right there in the picture. And, furthermore, that many cases are that simple, even in more technically advanced arts. And finally that such cases could still be made more complicated by an applicant seeking to use one of these procedural hold ups and that such should not be permitted.

    ReplyDelete
  13. In any event, I wash my hands of the entire matter. It isn't my problem because I make a prima facie case every fin time if I go to make one. And if someone has a problem then they usually just call me and we sort it out, even though they admit they knew exactly what I was saying the vast majority of the time, even when they call. If you have examiners that don't do this, you know what? F it, you deal with it. Do your appeals or whatever and sit and btch because it takes so long. I try to help you out with perfectly reasonable ways of resolving the problem and all I'm met with is you guys being legalistic tards based on what you know are flimsy interpretations of flimsy interpretations of the law in "caselawl". Where you're hoping, apparently, to keep the problem a problem forever, just so you'll have something to btch about.

    You have a problem, maybe one day you'll try to actually solve the problem rather than sit and btch about woe is you, nobody helps you with your problem.

    But then, this is JD, the guy that, even though he seems to have implied that the office helped him out on his lawschool $$$ still can't afford to take a position of leadership in the office and try to do something good to fix the system he contstantly btchs about. Keeping in mind that said position pays quite handsomely. Either his house/car is costing him $$$, he has a gambling/womanizing problem, a couple of kids in Harvard, or some terrible disease (possibly greed).

    Of course, with his personality, JD might have a bit of a problem in leadership anyway I suppose, so I don't blame him.

    In any event, f it, I'm done. You guys fix it, if you can. Maybe I will deem you and this topic to be worth a comment some other day.

    "In sum, we hold that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review."

    Oh and just btw, before I go: exactly, all they need to do is put down their FF and conclusions in an adequate form that they can be reviewed. If the CAFC can't cipher out that the board presumptively did their required jobs though they didn't put them explicitly on the record and review that then that is a problem with the CAFC, not the board. It doesn't exactly take a rocket genius CAFC member to figure that out.

    "When 56% of the rejections "

    This is a different issue which I'm sort of interested in. But let's not talk in %'s which can be decieving. Was it in fact 56 out of a total of 100 pre-appeals filed? Let's talk absolute numbers. To be sure, I'd say the number was probably something more like 1600 out of 3000 (maybe 20000?). 3000 out of, oh wait, 400000.

    "What I see is an Examiner who thinks that what is claimed is just like everything else they've seen before except in their haste, they miss the one twist that distinguishes the invention of the prior art."

    Lulz nope. First it is a rare case where everything is just like what I've seen before, but it is a common case where everything save one or two limitations sometimes is just like what I find searching. I doubt if what you say has happened in the last three years. My applicants aren't exactly secret about their "twists". It isn't rocket science to figure them out. Well, in my art, it might be, but I'm the rough equivalent of a rocket scientist so it is ok. Let me say instead that it isn't string theory mathematics to figure them out.

    "Granted it is nice to explain why the Examiner is wrong, and I do it all the time. However, when I have a 20 word phrase and the best the Examiner gives me is "See paragraphs [0014], [0078]," then what am I supposed to do? Make s___ up? "

    Well I don't know, maybe you should look at 0014 and 0070? Then maybe you should decide what to do?

    ReplyDelete
  14. "Well I don't know"

    Never a truer statement has been uttered on this blog.

    ReplyDelete
  15. David Boundy said at 12:05 on Jan. 22, 2011
    >There are *only* two ways to show
    >anticipation, explicit and inherent
    >disclosure. If you try sneaking in something
    >from another area of law, it wastes
    >everyone’s time.

    Maybe it's a matter of semantics as to what "expicit" means, but I'm gonna disagree with David's statement.

    The law also allows for implicit disclosure, by which I mean the things a reference says to a POSITA. The BPAI often cites these Fed Cir cases in support of that position:

    [I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).

    The rule that anticipation requires that every element of a claim appear in a single reference accommodates situations where the common knowledge of “technologists” is not recorded in a reference, i.e., where technical facts are known to those in the field of invention. Continental Can Co., USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991).

    I blogged about implicit teaching of a reference here:
    http://allthingspros.blogspot.com/2010/01/implicit-teachings-of-reference.html

    ReplyDelete
  16. "it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom."

    That is a dressed up obviousness argument from a 40 year old case. You still need to provide proof as to "the inferences which one skilled in the art would reasonably be expected to drawn therefrom."

    Read the actual Preda decision and the CCPA actually found the limitation at issue within the disclosure. As the CCPA stated "we are only concerned with whether Thacker's total disclosure includes the subject matter of the appealed claims; we are not concerned with what he recommends as the best process."

    As is typical of the USPTO, they read decisions out of context and disregard the actual fact pattern that leads to the statement of law being relied upon.

    ReplyDelete
  17. One last thing, Judge Newman presented the following cautionay statement in Continental Can:

    "This modest flexibility in the rule that 'anticipation' requires that every element of the claims appear in a single reference accommodates situations where the common knowledge of technologists is not recorded in the reference; that is, where technological facts are known to those in the field of the invention, albeit not known to judges. It is not, however, a substitute for determination of patentability in terms of § 103."

    ReplyDelete
  18. "Implicit" and "official notice" are for obviousness, not anticipation.

    "Inherency" is for anticipation, and only in rare circumstances for obviousness.

    ReplyDelete
  19. Anonymous writes at January 20, 2011 5:05 PM:

    > What Dave doesn't understand he shows off in the first paragraph.
    > …
    > To be clear, the examiner bears the burden of persuading the board that the
    > rejection is proper, and the board must review the case. However, finding
    > no issues on their own (note that the board will not spontaneously make up
    > issues itself ordinarily) the applicant must show them the error that supposedly
    > happened.

    I’m not sure why you opened your post as you did. We’re in very close (if not perfect) agreement on this point.

    > Citation needed.

    The support you request in the body of the article, and cited in footnote 9.

    It looks you stopped reading at the end of the summary. So the right relief for your problem is—a do-over. Vacated and remanded.

    > Or it results in the board filling in the procedural step for the uninformed
    > examiner and you get a rejection which is not based on a new ground.

    Can’t happen, by definition. The definition of “new ground of rejection” is that any “filling in” of a gap, any reliance on new parts of a reference, any change in the reasoning for some element of a prima facie case, is a “new ground.” See footnote 16, In re Kumar, 418 F.3d 1361, 1368, 76 USPQ2d 1048, 1052 (Fed. Cir. 2005) (when the Board “found facts not found by the examiner,” that was a new ground that “required an opportunity for response”), and In re Wiechert, 370 F.2d 927, 933, 152 USPQ 247, 251–52 (CCPA 1967) (“[W]hen a rejection is factually based on an entirely different portion of an existing reference” the rules for new grounds kick in).

    Of course this gets us to the next problem – the deep reluctance of senior career staff in the PTO (both the Board and the Petitions Office) to accept the Federal Circuit’s definition of “new ground of rejection.”

    ReplyDelete
  20. Anonymous at January 20, 2011 5:06 PM writes

    >> "A procedural error is still error, and it’s reversible. "

    > Yes, but is it one that the board should be handling? I
    > don't know about that one. We have petitions for
    > procedural nonsense. They should simply make this
    > a non-appealable matter and move on with
    > substantive issues.

    > [The Board has] better things to do than be your
    > personal TQAS to teach the young examiner how to
    > designate limitations.

    I made an error here. Correction! I agree with the first two propositions, and so does the Board—procedural errors are not reversible by the Board. When the examiner is procedurally incomplete, often all the Board can do is vacate and/or remand. See footnote 12. The Board has held over and over that these issues are petitionable. The Petitions Office dissents, with no citation to authority.

    > [re Federal Circuit definition of “new ground”] Because the Fed. Circ. plays fast
    > and loose with the law.

    > I'm not so sure that Kappos making a proclamation,
    > or clarification lol, for De Novo review makes it so.

    We have a fundamental problem here, a disagreement at a constitutional level. Under the rule of law that applies in the United States, some people are either elected or appointed to the power to say what the law is, and the rest of us just have to accept that that’s the way things are. The “law” is what the law is because the Federal Circuit says so (until overruled by the Supreme Court or Congress). “It is emphatically the province and duty of the judicial department to say what the law is.” Marbury v. Madison, 5 U.S. 137 (1803).

    Appeals courts are like baseball umpires—it doesn’t matter where anyone else thinks the pitch was, it’s a ball or strike because the umpire says so. Once the Federal Circuit rules on the definition of “new ground,” we all have to live with that definition. The beauty and certainty of the common law is that once a court decides, we all know what the law is, and we don’t have to bicker over it any more.

    Similarly, Frye was an en banc decision of the Board. Frye simply restated clear Federal Circuit precedent, and corrected a misimpression held from 2006 to 2009. Because it’s en banc¸ Frye controls, and until the Federal Circuit changes its mind, no future Director can either. Unless invalidly promulgated, or reversed under the ordinary legal mechanisms of U.S. administrative law, Federal Circuit law and Board en banc decisions are “law” that bind the Board and examiners as much as any other.

    ReplyDelete
  21. Anonymous at January 20, 2011 7:45 PM said...

    > [re: "Ex didn't lay out a prima facie case" ?"] Sure,
    > why not? …. Really all you're asking for is someone
    > to tell the examiner he did a bad job at doing his job
    > and to do it over and make sure it is done correctly
    > this time. And making it a petitionable matter will
    > help examiners to realize just wtf it is
    > you're talking about when you make this type of argument.

    Exactly. The Board agrees, see footnotes 5, 10 and 12. If all SPEs, T.C. Directors, and Petitions Office Examiners agreed with the Federal Circuit and Board, the PTO would function so much better.

    > That's because it probably doesn't exist in this
    > non-court context, the Fed. Circ. and the board
    > sometimes, just tosses law around however they
    > please and it gives people like Dave a woody.
    > They don't want the board to be an article III
    > court but they sure want a lot of what article III
    > courts have to put up with in terms of nonsense
    > to apply to the board.

    > I loled. Yeah, it is "binding" up until some judges
    > decide "oh you didn't read that right" or "we
    > misspoke" or the next director comes in and
    > says "I want to do it different".

    I lost you on these two. If you reexplan, could you preface your remarks by telling us whether you’ve been to law school, whether you’ve ever practiced law outside the PTO, and what you do for work now? It’ll give us some context to understand your point of view.

    ReplyDelete
  22. Anonymous at January 21, 2011 11:32 AM said..

    > As a practical matter, perhaps you want the
    > Examiner and the Board to get to the substantive
    > issue so the case can move forward."

    Sometimes you do, sometimes you don’t. My article was directed to helping applicants know all the tools they have available in their toolboxes, and to give them some rules of thumb about which to use when, and what the risks are.

    > To petition that is pointless. The know-nothing-
    >do-nothing GS-15's they have [deciding petitions] are
    > going to tell me to appeal, and even if they don't they
    > are not persons of competent legal knowledge and are
    > going to get the petition decision wrong.

    That’s an understatement. The Petitions Office takes the absence of any statutory requirement for “competent legal knowledge” very seriously.

    ReplyDelete
  23. Anonymous at January 21, 2011 1:13 PM said...

    > Gechter v. Davidson, 1167 F.3d 1454, 1460
    > (Fed. Cir. 1997). In sum, we hold that the Board
    > is required to set forth in its opinions specific
    > findings of fact and conclusions of law adequate to
    > form a basis for our review. In particular, we expect
    > that the Board's anticipation analysis be conducted
    > on a limitation by limitation basis, with specific
    > fact findings for each contested limitation and
    > satisfactory explanations for such findings. Claim
    > construction must also be explicit, at least as to
    > any construction disputed by parties to the
    > interference (or an applicant or patentee in an
    > ex parte proceeding).

    > While not directly presented here, obviousness
    > determinations, when appropriate, similarly must rest
    > on fact findings, adequately explained, for each of the
    > relevant obviousness factors in the Supreme Court's
    > decision in Graham.

    Bingo. Gechter is a straightforward application of 5 U.S.C. § 555, and the Supreme Court’s State Farm (see footnote 6).

    >> [From Anonymous January 20, 2011 5:05 PM] the
    >> applicant can always try to make the case
    >> complicated, but perhaps the examiner
    >> considers it to be fairly simple subject matter.

    > What I see is an Examiner who thinks that what is
    > claimed is just like everything else they've seen
    > before except in their haste, they miss the one twist
    > that distinguishes the invention of the prior art. They
    > gloss over it in the rejection and are shocked when
    > the response comes back with no amendments to the
    > claims and their final rejection gets appealed.

    Bingo. A case is as complicated as every word in the claim, and every subcomponent in MPEP Chapter 2100 says it is, no less (and seldom more). When an examiner shortcuts, it’s at the least procedural error, and more often than not the procedural error masks an underlying substantive error. That’s why all tribunals in the United States have clear definitions of prima facie case and dismiss against the party that bears the burden of proof and fails to address all elements of that prima facie case—oops, with one counterexample, the United States Patent and Trademark Office. Procedural rules exist in large part to force the parties to think instead of wasting each other’s and the tribunal’s time with poorly-thought-out claptrap. Shortcutting to reject claims that oughtn’t be rejected is, in my view, the overwhelming cause of the PTO’s backlog. The PTO’s problems today are eerily similar to Detroit’s in the late 1970’s—when you let employees build in defects at the beginning of the assembly line and then try to fix the defects at the end of the line, it’s far more expensive than building it right the first time.

    ReplyDelete
  24. Some comments on this fascinating post:

    1. A lot of the discussion here relates to the prima facie case requirement. Hopefully, the CAFC will expand on exactly what the prima facie case entails in the pending In re Jung case. Karen has commented on that case before here.

    2. It is worth noting that the Office does provide a definition of a "prima facie case", but not in the context of Rule 104 or 111. Rather, the definition is found in current Rule 56:

    "A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burden-of-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability."

    If I remember correctly, the Appellant in Jung relied on Black's Law Dictionary and not rule 56 for the definition of a prima facie case.

    3. David is absolutely right that framing your argument in procedural terms prevents a lot of estoppel and disclaimer. It is virtually always better to say "Examiner has not shown that reference X discloses Y" than to say "reference X doesn't disclose Y."

    4. A major problem is that nothing at the PTO separately enforces the prima facie case requirement. The Board is tasked with determining whether rejections are right on the merits - that's why they can liberally make new findings of fact, conclusions of law, and new grounds of rejection. Thus, if the Examiner fails to make a prima facie case, the Board will just make it for the Examiner. Of course, if the Board routinely does this, then the prima facie case requirement has become pretty worthless. The only other way to enforce the prima facie case requirement is to file a petition, but there are a thousand reasons why that is problematic (the least of which is not that the petition decision-maker will likely consider it an appealable, and not petitionable, matter).

    What everyone needs to understand is that the prima facie case reqirement is a procedural safeguard that is valuable for reasons separate from its utility in reaching the ultimate conclusion of patentability. As a procedural safeguard, it is analagous to the 5th Amendment right to remain silent, or the 6th Amendment right to counsel. We should not be so concerned with "getting it right" on the merits that we trampel on the procedural rights of applicants. That would be like a police officer saying "yeah, I know that you have a right to remain silent, and a right to an attorney, but I'm more concerned with solving this homicide."

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