No. 2010-1019
(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.
"These were terrible facts to use in asking for the prima facie requirement to be retooled. "
ReplyDeleteI don't know if I can agree with you there, under the toolbag interpretation espoused by your standard issue Oetikertard of yestermonth these were great facts, forcing the court to address the issue squarely as to smack them down fully instead of in part.
In the words of street fighter "PERFECT!"
"As a patent prosecutor of course I'm personally disappointed that the Federal Circuit didn't give the prima facie case requirement more teeth. "
As a person in the rest of the world we're glad.
"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). "
Well of course it would, and additionally you'd have a heightened ability to pull lawlyerly trix. Additionally, OA writing time would go up significantly.
"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. "
Yeah kind of like normal applicants outside the jerhkhof arts that rely heavily on lawlyerly trix do all the time.
"Applicant puts this stuff on the record, it can adversely affect the patent in litigation. "
That depends on what you mean by "adversely". Most of us see that as "positively".
"There is no analogous downside to the Examiner explaining his position on the record. "
Sure there is. The newly minted patentee can now writhe back and forth from interpretationlol to interpretationlol in litigation defeating the public notice function of patents nearly entirely.
J. Linn got this decision exactly right. For those who don't even have a cursory command of prosecution, go find something else to do. The examiners are not going to hold your hand.
ReplyDeleteI agree with your two cents, Karen.
ReplyDeleteComplete Tangent: Although it is not BPAI related, I would enjoy reading a discussion on your blog of the merits of responding (or not responding) to an Examiner's reasons for allowance. I was taught that one should always respond, but now I am beginning to question that instruction.
Keep up the good work...
"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)."
ReplyDeleteCan't disagree with this. There's a lot of weasels in the examining corps that won't explain that they are interpreting 2, 3, 4 etc. elements of the prior art reference as corresponding to one element of the claim, or who improperly decide that a totally arbitrary portion of one element of the prior art corresponds to one element of the claim.
There's a way to deal with these weasels though. It's called an interview. If you have any question about the OA, you should conduct one.
I agree with Karen that the examiner in the Jung case did a fine job. Not a weasel. However, the dolt who prosecuted the Jung application is worse than a weasel. He's wasted a lot of BPAI time and more Fed. Cir. than his crummy case deserves, and he got the chicken littles over at Patently-O clucking like mad.
Do a better job next time.
"Well of course it would, and additionally you'd have a heightened ability to pull lawlyerly trix. Additionally, OA writing time would go up significantly."
ReplyDelete6 -- I don't even have to see your name to know it is you, as your stink precedes you.
As for those "lawlyerly trix," I know you have a problem with things like explicit claim constructions and substantial evidence, but they are not "trix."
"OA writing time would go up significantly"
Wow … that means you would have to work to get your counts? Instead of wasting time on these boards posting your drivel?
In all seriousness, Examiners need more time to do their job properly. The low quality of OAs is a direct reflection of the time given Examiners to prepare them. Your everyday, grunt federal worker with more responsibilities than time is going to do what all everyday, grunt federal worker have done before them in the same situation –cut corners and do as little as possible to complete the job at hand.
Most Examiners realize that they aren't doing as good of job as they can – only a few 'tards actually think what they are doing follows the letter of the law.
To Karen's point, this was a terrible case to take to the BPAI on this issue. I've looked at the Office Action that was appealed, and it is as good as I've seen from the USPTO. IMHO, whoever was the attorney that recommended going to the Federal Circuit on this one was either looking to make bad law or simply incompetent.
Finally, with Linn and Dyk on the panel, this was a surefire loser to begin with.
"The examiners are not going to hold your hand."
Sorry, but that is their job. You may not like it, but we don't read minds. If you are employing a claim construction when comparing X to Z, then I want to know what that claim construction is and how you derived that claim construction. There is a whole host of case law that describes how claims are to be construed – I want to make sure you have some REASONABLE basis (i.e., broadest, reasonable construction) for your claim construction. Making s h i t up is not a reasonable basis.
Although the Federal Circuit relied upon section 132 of 35 USC, section 2 is also a good section to cite – "The action of the Patent and Trademark Office will be based exclusively on the written record in the Office." If a claim construction is missing, and the Examiner appears to be relying upon some (unwritten) claim construction in the analysis, then I'm going to nail them on that point. This will fly over the head of most Examiners and SPEs, this can gain traction at the BPAI or the Federal Circuit.
After reading a lot of BPAI and Federal Circuit decisions, it is painfully clear that many practitioners don't use the full arsenal of law available to them. Additionally, neither the BPAI nor the Federal Circuit are going to help them if the practitioner fails to make an argument they could/should have. Winning at the BPAI isn't about good facts and arguing those facts – it is also about making the proper arguments the right way.
Search recent BPAI decisions for Jung. They're already citing it. ...For something pretty harsh.
ReplyDelete"Search recent BPAI decisions for Jung. They're already citing it. ...For something pretty harsh."
ReplyDeleteI've already seen 'em. However, when it is mine they cite it against, (client-willing) I'll be more than happy to explain to the BPAI the difference between how the Examiner in Jung examined the claims versus how my Examiner examined the claims. I have not doubt that the difference will be night and day.
What is funny is that Research Corp Tech v. Microsoft, which was decided in December has only been cited twice. For those that don't remember, this was a case that overturned a 101 rejection on a computer-implemented method claim that didn't tie the claim to a machine or a manufacture. Somehow, in the last 5 months, I would have thought the BPAI would have seen more method claims rejected under 101 than the single reversal based upon this new case law.
"Sorry, but that is their job. You may not like it, but we don't read minds. If you are employing a claim construction when comparing X to Z, then I want to know what that claim construction is and how you derived that claim construction."
ReplyDeleteThen call up the examiner and schedule an interview.
"Then call up the examiner and schedule an interview."
ReplyDeleteIMHO, applicant-initiated interviews are mostly a waste of time.
Most times, the Examiner isn't able to allow the case on their own, and if a SPE/Primay is there, they will rarely have reviewed the application so as to be of any help. As such, I cannot get them to commit to anything we discuss.
Ultimately, these interviews always come down to the Examiner wanting you to amend the claims to "clarify" the limitations. However, once you do that, they add another reference, make the next action final, and you are forced to either appeal or file an RCE.
I stopped playing that game a long time ago. I prefer to appeal and let the Examiner explain his/her position to his/her compadres in the appeal brief conference -- more often than not, the Examiner will reopen, allow, or I'll get a call from the Examiner asking if I'll take some amendment to place the application in condition for allowance. In this instance, Examiner-initiated interviews are almost always productive.
>Then call up the examiner and schedule an
ReplyDelete>interview.
Makes sense. Sure, I've done that.
In fact, "I can't understand how you're interpreting my claims" seems like a *perfect* situation for advancing the case through an interview.
However, as often as not I still don't understand the claim construction after the interview. In the situations I'm referring to, the Examiner isn't able to explain, or isn't willing to explain, on the phone any better than he does on paper. So I'm left with another round of prosecution guessing what the Examiner's position is.
"However, as often as not I still don't understand the claim construction after the interview. In the situations I'm referring to, the Examiner isn't able to explain, or isn't willing to explain, on the phone any better than he does on paper. So I'm left with another round of prosecution guessing what the Examiner's position is."
ReplyDeleteThen put that in your summary of the interview. And in your brief. Just don't expect a lot of sympathy from the BPAI or the Fed. Cir. If the examiner's action is sufficient to put you on notice as to the reasons the claim is rejected, you have to come forward with your rebuttal. Only in those situations where the examiner's reasoning is so unclear or deficient as to not put the applicant on notice are arguments as to a lack of a prima facie case going to be successful.
"Complete Tangent: Although it is not BPAI related, I would enjoy reading a discussion on your blog of the merits of responding (or not responding) to an Examiner's reasons for allowance. I was taught that one should always respond, but now I am beginning to question that instruction. "
ReplyDeleteWell I can't speak to what you should do, but I always issue a reasons for allowance and to date I have never seen any response from the applicant. They might be responding, but I've never seen it. I've looked at the records of some cases of mine that issued and I've never seen anyone having responded.
I did have someone respond one time to a reasons of allowance I included in an OA complete with other rejections of other claims. And that is something I rarely do, but which I sometimes do if I think I might forget why I was allowing those claims when the case gets around to allowance.
"As for those "lawlyerly trix," I know you have a problem with things like explicit claim constructions and substantial evidence, but they are not "trix.""
ReplyDeleteNot really, I provide them rather often, but I do take rather unkindly to people all up ins because they think I should have had to have made one up front or whatever in terms of claim construction. And as to substantial evidence, well, bucko, I'm aware that you want to make what is really an issue of substance into a procedural issue that lets you not have to say jack and have the office magically figure out what your issue is substantively with the rejection but that isn't how things were ever set up around here and the Fed isn't about to change that. Sure, there might be a procedural issue in that there might not be substantial evidence for a certain point, but I'm sorry, as this system is setup you need to tell us just why there is not and that pretty much always involves getting into the substance. There are some instances of course where it doesn't, where plainly the reference isn't even talking about the same subject at hand etc. but those are rare. And yes, I understand your position as to why it shouldn't be this way. I'm sorry, but I just don't see how it is workable irl and I'm sorry if it prejudices your clients. Deal with it.
"Wow … that means you would have to work to get your counts? Instead of wasting time on these boards posting your drivel?"
I KNOW RITE? OMFG! But seriously, I really do think that if I hired a homeless man for 5 dollars a day to stand beside me and tell me to work I think I would get hundreds of dollars worth of work done more than I currently do per day. Either way, meh, this job already stresses me quite enough.
"Most Examiners realize that they aren't doing as good of job as they can – only a few 'tards actually think what they are doing follows the letter of the law."
Lulz. Says you, but not the people in the know. Look man, we know you're an Oetikertard like I mentioned above, just say gg and take the loss already.
"IMHO, whoever was the attorney that recommended going to the Federal Circuit on this one was either looking to make bad law or simply incompetent."
IMHO he was your standard issue Oetikertard. And just for the record my OA's are substantively as good or better than this OA. Not only will you be very well aware of precisely the elements of the PA I'm relying on, I'll give you a claim construction if you ask and I'll probably even say why I construed it that way. I'll even go so far to try to "bridge the gap" for you like they wanted this guy to do. Although I'm glad that this guy didn't because doing those things takes a lot of time to think through and put down on paper. A LOT. We're not professionals that have been to school to write nonsense like this, and who have been doing it for a decade. IF we do that sort of thing at all, we do it because we picked it up on the job, or in my case, on the interwebz. And frankly, our jobs having been properly done should not depend on this. The Graham factors and the all elements rule for 102 and other simple things like that are quite enough for your avg "grunt". Especially if they're not a GS-12 or whatever and have had all the more advanced training they get like patent lawl and evidence courses etc.
Sorry if you don't like reality, but if you want to fight against someone who is for all intents and purposes another lawlyer, then why not lobby congress to make all examiners be lawlyers? Please, be my guest.
"Sorry, but that is their job"
ReplyDeleteAnd see, no it isn't. That is going above and beyond our job to be persuasive to YOU, not the review body who actually is competent in patent prosecution. You're such an Oetikertard that you still don't understand the ruling or prosecution even now that it is spelled out for you.
"If a claim construction is missing, and the Examiner appears to be relying upon some (unwritten) claim construction in the analysis, then I'm going to nail them on that point."
Nail them all the way to being affirmed all the way through the USSC. Yeah. Good job. Great nailing.
"After reading a lot of BPAI and Federal Circuit decisions, it is painfully clear that many practitioners don't use the full arsenal of law available to them."
Yeah, because that part of the law is made up in your mind. It isn't actually the law.
That's all the time I'm going to waste on you today.
"Search recent BPAI decisions for Jung. They're already citing it. ...For something pretty harsh."
ReplyDeleteLULULULULULULULUz! I can't wait to hear about this stuff. Can you guys cite me a few?
"What is funny is that Research Corp Tech v. Microsoft, which was decided in December has only been cited twice. For those that don't remember, this was a case that overturned a 101 rejection on a computer-implemented method claim that didn't tie the claim to a machine or a manufacture. Somehow, in the last 5 months, I would have thought the BPAI would have seen more method claims rejected under 101 than the single reversal based upon this new case law."
That's probably because the lawl doesn't depend on a machine or transformation. At all. And they're just citing that decision on occasion for some other reason.
"However, as often as not I still don't understand the claim construction after the interview. In the situations I'm referring to, the Examiner isn't able to explain, or isn't willing to explain, on the phone any better than he does on paper. So I'm left with another round of prosecution guessing what the Examiner's position is."
ReplyDeleteSee Karen. This is a problem. And it is likely mostly related to your inexperience or sex. You must be proactive and forceful and you must engage the SPE. You might also try explaining to them the principles of the prima facie case and ask them to be nice enough to break it down for you in simpler terms. Even simpler than they've already made it for you. And ask that they stay in the interview with you until you are crystal clear instead of trying to run off to play some golf. Certainly the SPE will grant you that for no other reason that customer service.
"If a claim construction is missing, and the Examiner appears to be relying upon some (unwritten) claim construction in the analysis, then I'm going to nail them on that point. This will fly over the head of most Examiners and SPEs, this can gain traction at the BPAI or the Federal Circuit."
ReplyDeleteLulz. Have fun appealing every single one of your cases.
You must be a really good advocate if you can't formulate a single argument that is capable of being understood by the examiner and/or SPE.
"After reading a lot of BPAI and Federal Circuit decisions, it is painfully clear that many practitioners don't use the full arsenal of law available to them."
After reading your posts it's painfully clear that you'd rather impress yourself with the sound of your own legal arguments than make a clear, understandable point to the examiner and/or SPE that gets the case allowed.
Are you the dolt who prosecuted this Jung application?
"Are you the dolt who prosecuted this Jung application? "
ReplyDeleteNo, that's NAL in case you couldn't tell from her misplaced reliance on section 132 of 35 USC, section 2 and her noting the smell of her upper lip whenever she senses me nearby.
And man, the BPAI cases relying on Jung are some sht. You guys should check em out.
ReplyDeleteThis link should work:
http://des.uspto.gov/Foia/DispatchBPAIServlet?Objtype=ser&SearchId=&SearchRng=decDt&txtInput_StartDate=&txtInput_EndDate=&docTextSearch=in+re+jung&page=60
It looks like the CAFC's message was not lost on them at all. As of this writing the first three affirm, and the 4th one reverses using Jung. I checked out the prosecution history for the 4th case and man it is some funny stuff, basically the board reversed him because he didn't even address claim 10. Also he didn't do any graham factors relating to the subject matter of claim 10. Plainly it seems that here was a proper application of the prima facie case argument.
"...and the 4th one reverses using Jung. I checked out the prosecution history for the 4th case and man it is some funny stuff, basically the board reversed him because he didn't even address claim 10. Also he didn't do any graham factors relating to the subject matter of claim 10. Plainly it seems that here was a proper application of the prima facie case argument."
ReplyDeleteThe beat down APJ O'Neill gives the examiner in that case is quite hilarious. A classic example of garbage examination.