(Fed. Cir. Mar. 28, 2011)
At issue in this case: what is the minimum that an Examiner must provide to make a prima facie rejection?
On appeal from the BPAI, the Applicant asked the Federal Circuit to require a rejection to do more than simply put the Applicant on notice as to the nature of the rejection as required by § 132. According to the Applicant, the Examiner should be required to first perform claim construction under the broadest reasonable interpretation, and then to provide enough explanation to bridge the gap between the claim and the bare teachings of the reference. According to Jung, if these two requirements aren't met, the burden hasn't shifted and the Applicant is not required to provide argument or evidence to overcome the rejection.
The Federal Circuit did not agree, and refused to require anything more than § 132 itself. The courte noted that the plain language of § 132 says the examiner must "notify the applicant," "stating the reasons for such rejection," "together with such information and references as may be useful in judging the propriety of continuing prosecution of his application." In Jung's particular case, the Examiner met these requirements and more:
Here, the examiner's discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden. ...
There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection.
My two cents: I wrote about this case last year (here). Not much to say about this decision. I didn't expect the Federal Circuit to buy Jung's arguments.
These were terrible facts to use in asking for the prima facie requirement to be retooled. First, the Examiner did a fine job of explaining his position. The Examiner even performed explicit claim construction. So in my opinion the rejection actually met Jung's own definition of a prima facie case.
Second, the policy aspect of Jung's argument amounted to "it's not fair to ask Applicant to put a position on the record if Applicant doesn't know what the Examiner is thinking." Yet the record in this case clearly shows that Jung did understand the Examiner's position, and the Applicant went on to argue the merits of the rejection.
As a patent prosecutor of course I'm personally disappointed that the Federal Circuit didn't give the prima facie case requirement more teeth. Prosecution would go much faster if the Examiner was required to explain how the claim elements map to features in the references (not to columns and line numbers). To be fair, prosecution would go much faster if Applicants actually explained how they were interpreting the claims and then made arguments that actually explained how references were different. The difference between the two sides is that when an Applicant puts this stuff on the record, it can adversely affect the patent in litigation. There is no analogous downside to the Examiner explaining his position on the record.