- Ignoring KSR. Obviousness doesn't require a motivation to combine from the references. After KSR, the test is instead "articulated reasoning with some rational underpinning" to combine the references. See my previous post "Mistake #6 when arguing at the BPAI: Arguing the TSM test for obviousness".
- Using the wrong standard for "teaching away." The Federal Circuit has said that disclosure of an alternative to X is not teaching away from X. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of thesealternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”)
- Making obviousness arguments in an anticipation rejection. Non-analogous art is irrelevant to anticipation (see previous post here). Teaching away is irrelevant to anticipation (see previous post here). Secondary considerations such as unexpected results are irrelevant to anticipation (see previous post here).
- Bringing up the number of references when arguing obviousness. The Federal Circuit has said that the number of references is not an indicator of non-obviousness. In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) ("The large number of cited references does not negate the obviousness of the combination, for the prior art uses the various elements for the same purposes as they are used by appellants, making the claimed invention as a whole obvious in terms of 35 U.S.C. § 103.")
- Bringing up the age of the references when arguing obviousness. The Federal Circuit's predecessor has said that the age of the references is not an indicator of non-obviousness. "The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem." In re Wright, 569 F.2d 1124 (CCPA 1977)(citing In re McGuire, 416 F.2d 1322 (CCPA1969)).
- Bringing up another that patent issued with similar claim language. The patentability of other applications is legally irrelevant. See my previous post "Arguments guaranteed to lose: 'but look at these similar claims in other issued patents'."
- Making arguments about due process and equal protection. The BPAI has no jurisdiction over these issues. For the Board's response to a due process argument, see the inter partes reexam decision here in Meadwestvaco v. Graphic Packaging Int'l. See the post here at The Florida Patent Lawyer blog for the Board's response to an equal protection argument.
Monday, May 16, 2011
Mistake #9 when arguing at the BPAI: Arguments that ignore relevant case law
Mistake #9 of my "Top Ten Mistakes Applicants Make at the BPAI" is making arguments that clearly go against existing case law. Here are the most common examples I've observed.
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"Obviousness doesn't require a motivation to combine from the references. After KSR, the test is instead 'articulated reasoning with some rational underpinning' to combine the references."
ReplyDeleteThis is why I hated the KSR decision. A teaching, suggestion, or motivation is a 'reason to combine.' Similarly, a rational underpinning is a 'reason to combine.' Ultimately, regardless of what case law you are citing, the question boils down to "did the Examiner present a sufficient reason to combine?"
That being said, I've seen attorneys make many of the same arguments you've stated above. IMHO, making those arguments is just incompetent lawyering … nothing more, nothing less. I do believe that the "teaching away" standard is one that is frequently misunderstood/misapplied.
However, definitely depending upon the circumstances, I would not hesitate to raise the allowance of different claims. Again, this is highly fact dependent. What I would try to argue is that a prior Examiner (or prior panel at the BPAI) made a particular finding as to X reference or as to Y limitation, and that same finding should apply to our claims. I wouldn't want to rely solely on it. For example, if I was building a case where part of my arguments were that the Examiner was consistently misconstruing the claim language and/or teachings of the art, I would feel comfortable raising this as evidence that the Examiner's analysis is inconsistent with how other people treated the same limitations/teachings (while also providing other extrinsic evidence that supported my position).
Not every argument you make needs to be of the type that if you prevail, you automatically win the case. Certainly, those are of the best kind, but there are times when an argument that goes to a tangential aspect (e.g., which illustrates the Examiner's unfair treatment of the claims or misunderstanding of the law) could prove effective. I believe that many cases are won or lost, not based upon the arguments, but based upon the first impression that the APJ (or Federal Circuit judge) gets. They then massage the law to get the result they want.
"This is why I hated the KSR decision. A teaching, suggestion, or motivation is a 'reason to combine."
ReplyDeleteA TSM is still a reaons to combine, and one of the strongest reasons for the asserted combination. It is just not a legal requirement. At the same time without TSM you have a lot of hindsight.
This is why just about every applicant should be arguing that the examiner did not determine the level of ordinary skill in the art. The determination of skill is supposed to provide an objective prism or lens through which the prior art may be viewed in order to prevent hindsight from controlling the analysis. However, as currently done, or rather, as currently not done, the determination is deemed to be implicitly determined by the examiner merely parroting what is disclosed in the references. However, examiners must still demonstrate via reasoning/evidence (but they don't since nobody challenges them on the issue) that the prior art represents an appropriate skill level and that there is no impact on the ultimate conclusion of obviousness. It's hard to say that an examiner using hindsight via a keyword based search for prior art references does not have an impact on the ultimate conclusion of obviousness.
ReplyDelete>applicant should be arguing that the examiner
ReplyDelete>did not determine the level of ordinary skill
>in the art.
I haven't seen Applicants do this. In fact, the few times I've run across this on appeal, the Board says the prior art reflects level of skill unless the Applicant shows the need for evidence on this issue See, e.g., Ex Parte Duffy (BPAI Appeal 2009002367).
Things to think about ... How would an Applicant show the need for evidence on level of skill? And how does an Applicant go about deciding the appropriate level of skill?
>how does an Applicant go about deciding the
ReplyDelete>appropriate level of skill?
Gee, that makes it sound like the Applicant is making up the facts. I'll rephrase:
How does an Applicant go about determining what the level of skill is for a particular application?
"Ex Parte Duffy (BPAI Appeal 2009002367)"
ReplyDeleteIt's not the Applicant's job to demonstrate the appropriate level of skill. That burden stays with the Examiner.
See MPEP 2141.03: If the only facts of record pertaining to the level of skill in the art are found within the prior art of record, the court has held that an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level. Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 218 USPQ 673 (Fed. Cir. 1983). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 2001).
Ex parte Jud (January 2010) is the BPAI's Informative Opinion on the subject and discusses the nature of and sources for skill level determination. There's a lot of circular reasoning in the case. For example, the BPAI states that the Applicant's enabled specification can serve as a floor on the level of skill. The BPAI cautions that an enablement rejection can undermine this. However, the BPAI seems to completely ignore the fact that a determination of whether or not the specification is enabled technically requires the Examiner to have already determined the level of skill well.
The Chore-Time case (Fed Cir 1983) was further clarified by AB Ruiz (Fed Cir 2000, 17 years after Chore-Time was decided). The cases make it clear that it needs to be demonstrated that the prior art reflects an appropriate skill level (and it seems that this must be done by the Examiner since the Examiner is the one 'determining' the skill level; thus the Examiner must provide some articulated reasoning) and that the 'implicit' determination of skill doesn't have an impact on the ultimate conclusion of obviousness. Now, IMHO, it's hard to an Examiner to argue that the Examiners hindsight-based keyword search of the prior art to find references to reject claims (those very references also being used to 'determine' the level of ordinary skill) doesn't have an impact on the ultimate conclusion of obviousness. The Examiner is essentially saying that the references define the level of one of ordinary skill, that the PHOSITA would have been aware of and selected these very references to reject the Applicant's claims.
That should have been:
ReplyDeleteHowever, the BPAI seems to completely ignore the fact that a determination of whether or not the specification is enabled technically requires the Examiner to have already determined the level of skill well before the Examiner searches the prior art and finds references to reject the claims, those very references later being cited by the BPAI as the basis for the skill level determination.
Commentator at May 17, 2011 10:17 AM - please email me at kip [dot] werking, which is a gmail account. I'm glad to see another person who recognizes that the BPAI and CAFC have drifted into effectively ignoring 1/3 of the Graham analysis - a situation that I think is ripe for eventual correction by the CAFC en banc (or Supreme Court).
ReplyDeleteThe BPAI's "informative" Jud case has a lot of bad logic in it. For example:
1. Jud says that, even if it's error for the Examiner to ignore the level of skill, it is harmless error unless the Applicant can show that the error would have affected the outcome. This improperly places the burden on the applicant, not the Examiner. It also turns one of the three primary Graham factors (to be analyzed by the examiner) into an affirmative defense (to be made by the Applicant), like "secondary considerations" - the level of skill factor is not "secondary."
2. Jud goes out of its way to identify declaration evidence that is considered too unhelpful to be given weight by the BPAI: evidence that merely states a level of education or experience of the skilled artisan. How can it be that the BPAI, citing Chore-Time, virtually always allows an examiner to get away with pure silence on this issue, but if the Applicant goes to the trouble of obtaining declaration evidence, then it must meet this ridiculously high standard? If the Examiner had paid an expert $400 for a declaration of the skilled artisan's level of education and experience, would the BPAI dismiss it for the same reasons, when the examiner usually just lets the art magically indicate the level of skill in the art?
You raise other deficiencies in Jud that I had not even considered earlier.
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