Monday, January 3, 2011

Mistake #1 when arguing at the BPAI: Conclusory assertion rather than argument with explanation

In a previous post I listed my Top 10 Mistakes in Arguing on Appeal to the BPAI. Now I'll provide some explanation about Mistake #1: Conclusory assertion rather than argument with explanation.

Perhaps the most damaging mistake is not actually making a real argument. A surprising number of arguments in Appeal Briefs look like this:
Claim 1 recites a widget. Reference A does not teach a widget. Therefore the rejection should be overturned. 
I don't find that convincing, and the BPAI isn't usually convinced either. Here's what the BPAI has to say about "arguments" like that one:
Appellants’ contention that the references do not teach each limitation of the claim is supported by a summary of the references (Br. 11-14) and quotation of claims 4, 21, 41, and 61 (Br. 15-16). Appellants’ summary of the references and quotation of the claims contains no explanation of how the claim language patentably distinguishes over the references, and thus fails to identify a basis for concluding that any of the Examiner’s findings are erroneous.
(Ex parte Candy.)
For his part, the Appellant does not address these findings. Instead, he merely alleges that "[n]o such generation of suggested edits is taught by Microsoft Excel 2000" (Appeal Br. 11) and that "[t]here is absolutely no teaching whatsoever in Excel 2000 of such hierarchical log of edit regions." (Id. at 12.) These allegations "do not . . . explain why the Examiner's explicit fact finding is in error."
(Ex parte Poynor.)
Sometimes the argument provides a tiny bit more explanation:
Claim 1 recites a widget. Reference A teaches a blodget. A blodget is not a widget. Therefore, the rejection could be overturned.
But WHY is a blodget is not a widget? The BPAI wants to know:
Appellant argues that the combination of Angell and Orr does not teach or suggest "a stenocaptioning device configured for transcribing audio from an audio event simultaneously with an occurrence of the audio event." First, it is argued that the transcribed text in Angell is "synchronized." Br. 7-10 § A.1. This argument is not helpful because it does not explain why synchronized text cannot meet the limitation.
(Ex parte Pettinato.)
The only time you're going to win with conclusory assertions is when the subject matter of the claim is worlds apart from the subject matter of the reference, so that the assertion "does not teach" is almost self-evident. Say, a claim to a chemical compound and a reference describing a mousetrap.

Now, I understand there are valid reasons why prosecutors would rather not make "real" arguments. The first one that comes to mind is prosecution disclaimer (also referred to as argument-based estoppel). If I thought I could get allowances with nothing but conclusory assertions, then I'd be tempted too.

Another reason for avoiding "real" arguments might be a fear of an inequitable conduct charge for mischaracterizing the reference. But based on the case law I've seen, I think this fear is overblown.

8 comments:

  1. Karen,

    I agree with your comments mostly, with one comment of my own: for the Board to affirm the rejection because the applicant did not "explain" why the examiner's "finding(s)" is(are) in error is improper. Applicants do not have to explain why the examiner's "finding(s)" is(are) "in error." (There is absolutely no requirement for applicants to demonstrate "error" in the rejection. The applicant only has to demonstrate, by argument and/or evidence, that the examiner has not established a prima facie case, or if the examiner has established a prima facie case, why the argument/evidence of secondary considerations rebut it. Why APJ's continue to insist on this "error" nonsense is a mystery. Mr. Kappos still has a lot of work to do on some of these legal ignoramuses.) The applicant only has to explain why the examiner's "finding(s)" is(are) not supported by substantial evidence. It's not even clear to me that you have to "explain" why, it should be sufficient to argue it. The Board is required to review the decisions of the examiner, including the examiner's "finding(s)" anew, without any deference or any presumption that the examiner's "finding(s)" is(are) correct. So in your example of applicant arguing (explaining?) that "A blodget is not a widget" the Board can't simply dismiss the argument (explanation?) because applicant didn't hold their hand. The Board has an obligation to determine: does the blodget of the reference cited by the examiner correspond to the widget of the claim?

    Having said that, I agree with you that "explanations" will get you further than "arguments." Never rely on the APJ's understanding their statutory duty to win your appeal.

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  2. As a law student, it is interesting to hear that practicing lawyers/agents still don't "get" some of the skills they teach you as a 1L. Whether that's discouraging as a profession or encouraging (since they may perhaps be my competition) I can't yet decide...

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  3. "Appellants’ contention that the references do not teach each limitation of the claim is supported by a summary of the references (Br. 11-14) and quotation of claims 4, 21, 41, and 61 (Br. 15-16). Appellants’ summary of the references and quotation of the claims contains no explanation of how the claim language patentably distinguishes over the references, and thus fails to identify a basis for concluding that any of the Examiner’s findings are erroneous. "

    Practically the same thing I find myself typing all the time in response to amendments.

    "Claim 1 recites a widget. Reference A teaches a blodget. A blodget is not a widget. Therefore, the rejection could be overturned. "

    Slightly more persuasive, but hardly the best route, especially if you just paid 10k.

    "The only time you're going to win with conclusory assertions is when the subject matter of the claim is worlds apart from the subject matter of the reference, so that the assertion "does not teach" is almost self-evident. "

    You try to tell people this, but they're all worried about pros history crp etc. to be bothered to make a real argument.

    "It's not even clear to me that you have to "explain" why, it should be sufficient to argue it."

    You say that, but when it comes time for a review and you get left out in the cold, don't come crying to me, the board, or Kman.

    "The Board has an obligation to determine: does the blodget of the reference cited by the examiner correspond to the widget of the claim? "

    Yes, but when they're left in the dark as to why it would not be, and it appears to be, then they recite something like the above quoted text and go about their day.

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  4. "Yes, but when they're left in the dark as to why it would not be..."

    You have a point there. The ignorance of the APJ on matters technical and legal is stunningly depressing. Hold their hands and spoon feed it to them. Even then they're capable of botching it.

    Sigh.

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  5. And even more depressing is the persistent failure of the Board to grasp "burden of proof."

    If the examiner gave a cogent explanation, then of course the appellant has to meet it head on, and rebut it.

    But if the examiner didn't -- depressingly frequent in the business methods art units -- then an appellant doesn't have to read the examiner's mind to figure out what the examiner might have meant and respond to that imaginary position. It should be entirely sufficient to appeal that "the examiner has to go first."

    Yeah right.

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  6. Right. As a practical matter, counsel often has to provide some argument for the Board to chew on.

    But as a legal matter:

    1. the Board generaly reviews rejections de novo - examiners are not given deference (Frye)

    2. the examiners must put forth a prima facie case - if the examiner has not put forth a prima facie case, applicant is under no duty to put forth rebuttal arguments or evidence

    Perhaps instead of elaborating on unnecessary arguments (creating prosecution estoppel and disclaimer), counsel would do better to elaborate on both Frye and the prima facie case requirement, to remind the Board that it can't give examiners deference and that it must enforce the prima facie case requirement.

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  7. "And even more depressing is the persistent failure of the Board to grasp "burden of proof."

    If the examiner gave a cogent explanation, then of course the appellant has to meet it head on, and rebut it.

    But if the examiner didn't -- depressingly frequent in the business methods art units -- then an appellant doesn't have to read the examiner's mind to figure out what the examiner might have meant and respond to that imaginary position. It should be entirely sufficient to appeal that "the examiner has to go first."

    Yeah right. "

    Look on the bright side, the business method arts are artificially kept low for your own good. So long as the world does not become polluted overly much with them, congress might not take action. If it does, you can kiss them all goodbye.

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  8. "Slightly more persuasive, but hardly the best route, especially if you just paid 10k"

    I'll be happy to give you a full-blown, winning brief for less than half that. I sometimes wonder about prices that get thrown out in blog comments - are people just trying to move up the perception on reasonable prices or are there actually clients out there who routinely pay these sums?

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