I'll discuss three BPAI decisions which illustrate this point.
In Ex parte Ferri, the Applicant "complained" in the Appeal Brief that claims had been amended "in reliance on an interpretation offered by the Examiner, which was then withdrawn in a subsequent Office Action." The Board noted that
[This complaint] has been made by many applicants over the years and was answered many years ago by Judge Rich, who observed that "[t]here is nothing unusual, certainly, about an examiner changing his viewpoint as to the patentability of claims as the prosecution of a case progresses, and, so long as the rules of Patent Office practice are duly complied with, an applicant has no legal ground for complaint because of such change in view. The life of a patent solicitor has always been a hard one." In re Ruschig, 379 F.2d 990, 993 (CCPA 1967) (citation omitted).
In Ex parte Joos, the Examiner had withdrawn a rejection using a particular reference, then reapplied the same reference in a later round. The Appeal Brief characterized this behavior as "unreasonable, costly, and counterproductive." The Board was unsympathetic:
Reapplying references after both the Examiner and the Applicants had earlier thought them distinguished can be appropriate when, for example, the Examiner has a reason to think that a mistake was made. Mistakes may be costly and counterproductive to the Applicants and to the Office, but a good faith effort to correct the mistake is not unreasonable. Appellants’ objection here is not a legal ground for complaint. See Ruschig, 379 F.2d at 993; see also, Blacklight Power, 295 F.3d at 1273-74 (explaining that the Office may withdraw a notice of allowability to revisit an earlier patentability decision before a patent issues).
Ex parte Haley involved a method of gene therapy. In the first Office Action, the Examiner issued an enablement rejection, asserting that "the state of the art for gene therapy was highly unpredictable" at the time of filing. The Applicant got past the enablement rejection, but appealed an obviousness rejection in which the Examiner used the "predictable results" rationale from KSR. In the Appeal Brief, the Applicant argued that this rationale was inappropriate, since the Examiner had admitted in the first Office Action that "the state of the art for gene therapy was highly unpredictable." The BPAI dismissed the argument, noting that "[w]hile ideally the Examiner’s position would remain consistent throughout prosecution, the Examiner is permitted to change his viewpoint regarding the patentability of the claims as prosecution progresses."
I take issue with your header "Arguments guaranteed to lose."
ReplyDeleteThe fact you've found isolated instances in which these arguments were not successful. As presumably an engineer with some type of scientific background, I would expect that before you engage in these types of statements, you would perform some type of extensive data gathering and analysis. You need to find a substantial number (20, 100, 500?) instances in which these arguments were made and then determine whether or not the arguments were successful. Only after this type of data collection (and with sufficient support from analysis of the data) can you assert that these arguments are "guaranteed" to lose.
Patent law is full of seemingly contradictory case law. Just look at any arguments involving claim construction or obviousness. Depending on what case law the BPAI cherry picks, the decision can go either way.
Also, you have to take into account how the BPAI butchers the case law when it fits their purpose. In your first example, Appellants argued that the Examiner changed a claim construction and the BPAI responded with a statement that there is "nothing unusually, certainly, about an examiner changing his viewpoint as to the patentability of the claims." However, the facts of the cited case are not even remotely similar. Ruschig involved a situation in which a claim in a divisional case was rejected and affirmed on enablement grounds and the Examiner subsequently rejected a similar claim in the parent case on enablement grounds (relying on the prior affirmance of the enablement rejection). However, in this situation, the Examiner made an interpretation that "X means …." and then contradicted it. To me, very different fact patterns.
There is a difference between the Examiner changing his/her "viewpoint as to the patentability of the claims" and the Examiner changing his/her viewpoint as to a particular finding of fact.
Personally, I would have no problem arguing to the BPAI that the Examiner has "changed his/her tune," particularly if you can combine that with an argument that the Examiner's first finding was reasonable and the Examiner's second finding was unreasonable.
Great post, Karen.
ReplyDeleteI'm sympathetic to the commentator above: perhaps, at other times, the BPAI is influenced by the fact that the examiner has treated applicants unfairly or unreasonably shifted the grounds of rejection throughout prosecution.
In general, though, I think that it is a common mistake for applicants to complain about the examiner's procedural missteps. The BPAI is well aware of the shortcomings of the examining corps - many or most judges there are former examiners. What matters, in the eyes of the Board, rightly or wrongly, is whether any proper rejection can be salvaged from the messy record that the examiner provides. Even though the Board only reviews rejections, and not allowances, the Board doesn't want the Office to allow invalid claims.
"Only after this type of data collection (and with sufficient support from analysis of the data) can you assert that these arguments are "guaranteed" to lose."
ReplyDeleteOr she could make a rhetorical point with an attention grabbing headline that only a pedant would object to.
Lighten up.
"Personally, I would have no problem arguing to the BPAI that the Examiner has "changed his/her tune," particularly if you can combine that with an argument that the Examiner's first finding was reasonable and the Examiner's second finding was unreasonable."
I wouldn't either, but if I'm not persuasive on the 'second finding was unreasonable' argument, my whining about the examiner isn't going to help.
"The life of a patent solicitor has always been a hard one. - Judge Rich"
ReplyDeleteI think if you just added a lawl at the end, 6 would have a new sig.
"Or she could make a rhetorical point with an attention grabbing headline that only a pedant would object to."
ReplyDeleteThe use of "a rhetorical point with an attention grabbing headline" is fine when you are extolling the virtues of using Michelin tires over Dunlap tires or explaining why Tropicana orange juice is better than Florida's Natural orange juice – I don't expect precision. However, I expect better from an engineer, an attorney, and a professional.
"my whining about the examiner isn't going to help."
It isn't whining to point out inconsistent and/or incompatible assertions by the Examiner. Arguments oftentimes turn on who is more believable. Poke a hole in the Examiner's credibility, and you are a leg up.
"However, the facts of the cited case are not even remotely similar."
ReplyDeleteThat's the whole point: the argument that "the Examiner has changed his position" is bogus from a legal point of view. No amount of factual differences is going to change that.
Obviously the applicant will win if the Examiner's new position is untenable in view of the facts, but that's another issue entirely.
"Arguments oftentimes turn on who is more believable."
That's when you're fighting over facts, not when you're fighting over a legal point the outcome of which is determined by well-established case law.
"That's when you're fighting over facts, not when you're fighting over a legal point the outcome of which is determined by well-established case law."
ReplyDeleteAn obviousness rejection is based on conjecture as to what would have been obvious. When an examiner can't make up his/her mind as to what a reference actually teaches, it certainly speaks to what those of ordinary skill would have found obvious...
At the end of the day, a patent should only be granted if it satisfies the statutory requirements regardless of what an examiner has said or whether the examiner has changed his/her view points or rational. Would it make sense to hold an examiner accountable for what (s)he said to acquire a patent that will be subject to de novo review by the court?
ReplyDeleteExaminers have an unlimited number of opportunities to get it wrong. That's just a fact of life.
ReplyDelete"When an examiner can't make up his/her mind as to what a reference actually teaches, it certainly speaks to what those of ordinary skill would have found obvious... "
ReplyDeleteIt says they would find everything obvious since the reference is indefinite and describes everything? Or what specifically does it say?
"At the end of the day, a patent should only be granted if it satisfies the statutory requirements regardless of what THE APPLICANT has said or whether the APPLICANT has changed his/her view points or rational. Would it make sense to hold an APPLICANT accountable for what (s)he said to acquire a patent that will be subject to de novo review by the court? "
ReplyDelete^^^fixt^^^
And yet, Applicants' feet get held to fire over every little thing.
When I amend claims in reliance on the position taken by the Examiner, I explicitly state that is why I am amending the claims, that I still believe that the prior art does not anticipate/render obvious the claims and that I reserve the right to change the claims back to their pre-amended form should the Examiner change his or her position.
ReplyDelete