Wednesday, June 1, 2011

BPAI reminder that silence in one reference as to what another teaches is not "teaching away"

Takeaway: In Ex parte Greve, the Applicant presented technical reasons why a POSITA would not combine the references. The Applicant concluded the argument by explaining that because the reference didn't mention a claimed feature, a POSITA would understand that the feature should be avoided. "Therefore, Gross et al. clearly teaches away from the presently claimed invention." The Board affirmed the obviousness rejection, stating that "silence in one reference as to what another teaches is not 'teaching away'. "

Details:
Ex parte Greve
Appeal 2010002433; Appl. No. 10/984,628; Tech. Center 1600
Decided April 4, 2011

The claims on appeal were directed to a drug for treating rhinitis or inflammation of the nasal cavity. A representative claim on appeal read:

18. A pharmaceutical composition for the curative topical treatment of rhinitis, comprising in combination and in each case based on the pharmaceutical composition
     (a) 0.001 to 1% by weight of at least one sympathomimetic selected from the group consisting of oxymetazoline hydrochloride and xylometazoline hydrochloride;
     (b) 0.01 to 5 % by weight of hyaluronic acid in the form of its physiologically acceptable salts; and
     (c) 0.01 to 15 % by weight of at least one of pantothenol or its esters and/or pantothenic acid or its physiologically acceptable salts,
     wherein the pharmaceutical composition is formulated as a solution, a dispersion, a paste, a spray, an ointment, a cream or a gel.

The Examiner rejected as obvious over a combination of three references.The Examiner found that Greve taught a composition including (c) and a sympathomimetic in the claimed range, though not one of the two specific compounds named in (a). Moreover,  Castellano taught a composition including (b) and one of the specific compounds named in (a). Furthermore, Gross taught (c) and (b). Finally, each of the compositions found in the references was described as a treatment for rhinitis or a rhinological condition. 

The Examiner found that the references themselves provided the motivation to combine:
The skilled artisan would have been motivated to do so with an expectation of success because Gross et al. teach a synergistic effect with the combination of pantothenic acid [c] and hyaluronate [b] for the treatment of rhinitis; Greve et al. teach a synergistic effect with the combination of a sympathomimetic [a] and pantothenic acid [c] for the treatment of rhinitis; and Castellano et al. teach a combination of a sympathomimetic [a] and hyaluronic acid [b] for the treatment of rhinitis.

During prosecution, the Applicant argued that:
[T]he prior art documents do not teach the use of the compositions described therein each for the same purpose. Rather, each reference has its own technical solution for its own specific object, each being readily distinguishable and different, respectively, from the others. Thus, it is not believed to be obvious in any way that the ordinarily skilled person would take a combination of these documents into consideration in coming up with the present claims.
The Applicant buttressed this argument by submitting an expert declaration which explained why a POSITA would not modify Gross to add sympathomimetic [a] (the compound missing from Gross).
The specific use of a sympathomimetic would be even disadvantageous with respect to the treatment of ophthalmological malfunctions especially since this reference [Gross] focuses on the treatment of the so-called "dry eye" which is linked to disturbances to wetting of the cornea and conjunctiva of the eye. Furthemore, this document also deals with the treatment of dry mucous membrane of the nose. Thus, the use of a sympathomimetic would strongly counteract these treatments since sympathomimetics as such even enhance the drying out of tissues treated therewith. Thus, it is absolutely clear to the skilled practitioner to explicitly avoid the addition of a vasoconstrictor with respect to the teaching of this reference. Consequently, the skilled practitioner would never consider this reference with
respect to the claimed invention.
The Applicant reiterated this same argument on appeal, concluding with:

To bring this clearly to the point, if the addition of a vasoconstrictor [such as a sympathomimetic] would be evident with respect to why is the complete document silent to do so? The answer for this is quite simple. The use of a vasoconstricting agent is to be completely avoided in Gross al. since it would even intensify the drying out. Therefore, Gross et al. clearly teach away from the present claimed invention as is and would be consequently not considered relevant or obvious by the ordinarily skilled person in the way alleged by the Examiner in this Action.
(Emphasis added.)
The Board found the "teaching away" argument was misplaced:
The fact that one reference is silent as to what another reference teaches is not a “teaching away” within the meaning of 35 U.S.C. § 103(a). See 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 … alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.…”).
The expert declaration also asserted that the claimed ternary composition provided unexpected results:
[T]he surprisingly found  synergism is mainly based on the fact that the combination of the hyaluronic acid, on the one hand, and the pantothenol and/or pantothenic acid component, on the other hand, leads to a significant diminishing of the side-effects induced by the vasoconstrictor [such as a sympathomimetic].  
However, the Board found the evidence to be unpersuasive:
Dr. Greve provides no evidence that the result is “unexpected.” See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference”). Dr. Greve does not provide, either in the Declaration or in the Specification, a comparison of the results of the ternary composition with the closest prior art with a showing of an actual difference other than an asserted “synergistic effect” (see Greve Dec. 4 ¶ 7; Spec. 13-14). See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”).
My two cents: I don't do chemical cases, but the Board's comment about teaching away caught my eye.

The Board appeared to ignore reasons why a POSITA would not combine the references – reasons presented in the form of expert evidence -- simply because the Applicant mischaracterized this as "teaching away." The Board should have instead weighed the expert evidence (pointing away from a combination) against the teachings of the references themselves (pointing toward a combination) to decide on obviousness/non-obviousness.

This case highlights the danger of improperly characterizing arguments. The Board should have looked beyond the label the Applicant put on the argument – but you should make their job easy, not hard.

34 comments:

  1. Just another instance of the BPAI latching upon a bad argument (e.g., teaching away) while ignoring everything else presented.

    ReplyDelete
  2. Agreed. The Board appears to be incapable of actually weighing evidence and arguments and addressing substance, rather they are slaves to form.

    They also have no qualms about shoring up a weak rejection with proper argumentation, but will punish any argument from appellants that does not fit into the form they recognize or respond to.

    They're hardly an impartial body.

    ReplyDelete
  3. "Just another instance of the BPAI latching upon a bad argument (e.g., teaching away) while ignoring everything else presented. "

    Well that sht happens. You and I both know it, so the lesson here is to not make bad arguments that cloud the issue. In other words, don't suc k at your job.

    ReplyDelete
  4. "In other words, don't suc k at your job."

    You are missing the point. Everybody makes a bad argument every so often (some more than others -- I'm looking at you 6). However, the fact that 1 bad argument is made shouldn't mask the other arguments that are made.

    Appellants need only win on one argument -- not on all arguments.

    That being said, I don't have a lot of sympathy for attorneys making "teaching away" arguments. That doctrine has been emasculated for years. The fact pattern need to show "teaching away" is extremely rare yet attorneys still keep using it.

    Also, to the point about "shoring up a weak rejection," if you want to look for a reason for the backlong at the BPAI, that it is the root cause.

    Weak rejections are shored up (all the f'in time), so Examiners reject to that and keep producing weak rejections because it is less work. Applicants, seeing the weak rejections, are inclined to appeal because weak rejections should always be appealed. This creates more appeals at the BPAI. Additionally, because the BPAI is spending time shoring up those weak rejections instead of just finding the first blatant error in the Examiner's rejection and reversing, their productivity is descreased.

    Combine lower productivity and giving Examiner's incentive to create appealable rejections and you now have a 3+ year backlog at the BPAI.

    ReplyDelete
  5. Last post, "reject to that" = "react to that"

    Also, I just checked the latest BPAI statistics. They are on pace to dispose of 6700 appeals this year. However, they received 6800 appeals after the first 6 months (which means they are only doing about 1/2 of the appeals that come in the door). By the end of the FY (09/30/11), there should be a backlog of about 25K appeals.

    Also, despite the new atmosphere that Kappos brought, the pace of appeals is significantly greater this year than last.

    ReplyDelete
  6. "Also, I just checked the latest BPAI statistics. They are on pace to dispose of 6700 appeals this year. However, they received 6800 appeals after the first 6 months (which means they are only doing about 1/2 of the appeals that come in the door). By the end of the FY (09/30/11), there should be a backlog of about 25K appeals."

    Imagine what the backlog would be if 80% of the cases in which a pre-appeal request or appeal brief is filed and prosecution re-opened.

    The PTO needs to double the output of the Board simply to prevent the backlog from growing any bigger. With post grant opposition a real possibility with passage of patent reform, and it's a train wreck waiting to happen.

    ReplyDelete
  7. "You are missing the point. Everybody makes a bad argument every so often (some more than others -- I'm looking at you 6). However, the fact that 1 bad argument is made shouldn't mask the other arguments that are made."

    It shouldn't but it does. A lot of the time. You are dealing with human beings. Human beings have a finite amount of attention. Spend the attention they give you well.

    I find myself all too often these days basically having to say in my reply to applicant's arguments: STAY ON TARGET! STAY ON TARGET! STAY ON TARGET! Why? Because they're off in lala land not addressing the rejection before them. This happens disproportionately on their dependent claim arguments (when they even attempt them). The issue, it seems, is that they aren't paying attention to the action anymore. Their attention is spent.

    So it happens on both sides, and it is primarily due to the nature of the beast at hand, prosecution amongst human beings with finite attention.

    For those few of us that bother to even try to pay attention to everything it is a rather super human effort to do so. This sht is boring, there is no sugar coating that.

    ReplyDelete
  8. "Applicants, seeing the weak rejections, are inclined to appeal because weak rejections should always be appealed."

    Lulz, only retar ds believe that. The good lawlyers know that if they can see the "good rejection" right around the corner then they're wasting their time. And there are a few of them out there.

    Appealing all weak rejections is a waste of time and A LOT of money. Do you even know how many strippers you can get for 10k? DO YOU EVEN KNOW? You should look into it.

    Trust me when I tell you that an entire room full of women will make you happier than appealing a weak rejection that you know is about to get shored up.

    ReplyDelete
  9. "Lulz, only retar ds believe that. The good lawlyers know that if they can see the 'good rejection' right around the corner then they're wasting their time."

    Only bad attorneys proactively amend & file RCEs after final, thereby cutting of their Type B patent term adjustment. With the changes to how PTA is being calculated, the filing of an unnecessary RCE borders on gross incompetence. The better approach is to file the appeal, wait until the Examiner reopens (presumably with a better rejection, but often-times, with worse art) and then file your amendment (if necessary).

    File a RCE when it isn't necessary and you can easily lose 2-4 years work of patent term adjustment. On a valuable patent, the value of those extra years makes your 10K look like pocket change. Besides, it doesn't take 10K to write a good appeal brief.

    Again 6, your analysis is superficial, at best. You don't understand the consequences of what occurs in patent prosecution because you don't care what happens with the application after it is allowed. Many actions taken during prosecution are not for the sake of prosecution itself – in fact, some may be detrimental to the actual prosecution. This may seem confusing to your, but the goal of the exercise isn't just to get a patent – it is to get a valuable patent that is valid, broad in scope, and easily infringed. Don't worry, most of your brethren don't understand this either given the type of examiner's amendments I have seen proposed to me over the years.

    ReplyDelete
  10. "Only bad attorneys proactively amend & file RCEs after final, "

    Well of course. The good ones simply persuade the office to allow their claims.

    "With the changes to how PTA is being calculated, the filing of an unnecessary RCE borders on gross incompetence. "

    Lulz, that depends on who you're prosecuting for and what the purpose of that particular patent would be. They may not even be planning on maintaining it for the full term.

    You're entitled to your opinion of course, but once you begin to become a better attorney yourself it'll change.

    "Besides, it doesn't take 10K to write a good appeal brief."

    I don't care if it's 1k. 1k can still buy a lot of strippers!


    But of course if your application is the most valuable thing evar and you think people will be infringing on it for the next 25 years or so then sure, file the appeal.

    "You don't understand the consequences of what occurs in patent prosecution because you don't care what happens with the application after it is allowed. "

    Now now, my analysis was only for your run of the mill application. If it's the most important app evar then sure, pull all the plugs, spend all the money, oh and also, you could try learning to be persuasive. If you're not right now it is well worth your money to spend 500$ to spend a weekend with me learning how to be.

    ReplyDelete
  11. "but the goal of the exercise isn't just to get a patent – it is to get a valuable patent that is valid, broad in scope, and easily infringed."

    Well that of course depends on the application. Some applications aren't that way of course. You know that, and you also know that I was talking about your run of the mill application that is just going to be one of the 90% of patents that do jack but sit unused, perhaps, and supposedly helping a business by simply existing.

    ReplyDelete
  12. "you also know that I was talking about your run of the mill application"

    You see, a GOOD attorney treats every patent as something that could be valuable down the road because you never know where technology is going to be 10 years from now.

    Also, your proposed proactive approach to amending is based upon knowledge that the Examiner will subsequently "bolster" the rejection. Are you saying that I should just assume that the Examiner did not do their job correctly the first time? Certainly not something surprising to most of us, but I'm glad you admitted it.

    "They may not even be planning on maintaining it for the full term."
    That decision is made AFTER the application has issued, at which point, it is a little too late to try to recapture patent term adjustment that could have been had. I see your long-term vision ends at what you are going to over the weekend to blow your ill-gotten gains … err, I mean hard-earned money.

    "also, you could try learning to be persuasive"
    Interestingly enough, I find that my arguments are far more persuasive when put into an Appeal than in an Amendment. They are almost always the same arguments – although I will add in something extra to address the weak response I get when the Examiner goes final. My guess is that when the Examiner actually has to defend the Examiner's arguments during the appeal conference, does the Examiner actually take notice of what I have written.

    The Examiner could have saved time, reduced the backlog, save the applicant money, and deprived me of a billing opportunity by reading my argument the first time, but Examiner's love to put money in my pocket.

    Although I am occasionally frustrated by the incompetence at the USPTO, I have pondered what would happen if the USPTO actually did their job. My clients would certainly be happier, but I would be much poorer.

    ReplyDelete
  13. "You see, a GOOD attorney treats every patent as something that could be valuable down the road because you never know where technology is going to be 10 years from now."

    I lulzed.

    "Are you saying that I should just assume that the Examiner did not do their job correctly the first time?"

    Um, no, you're already presuming that by taking issue with his rejection. Otherwise your claim is allowed and we're not having this conversation.

    ""They may not even be planning on maintaining it for the full term."
    That decision is made AFTER the application has issued, at which point, it is a little too late to try to recapture patent term adjustment that could have been had. I see your long-term vision ends at what you are going to over the weekend to blow your ill-gotten gains … err, I mean hard-earned money."

    Lulz. Idk about that. If it was a patent that I figured might be worth something then I might take your approach. You can say that nobody knows where tech will be 10 years down the road, but if you don't have that vision today then you have no business filing for a patent in the first place since the odds are overwhelmingly against whatever you're filing on being worth anything unless you're planning to sell the product at your business.

    Your "lets play the patent lottery" outlook is stup id and a huge waste of money. Just buy 1000 lottery tickets and you have a better chance of making $$$.

    Like I said, this all depends on what you or your client wants to do with the patent. If you're nothing but a speculator, sure thing, take the re tards approach and watch your money go down the drain.

    "Interestingly enough, I find that my arguments are far more persuasive when put into an Appeal than in an Amendment. "

    Not really, the examiner just doesn't want to go through the bother of dealing with you. It's the same thing someone told me a long time ago, don't presume the applicant amended because your rejection was good, or he thought it was applicable. He may have just amended to move prosecution forward. Same goes for examiners. Don't presume that your arguments were persuasive just because he reopens prosecution. He may have just done it to not have to deal with the appeal.

    Now, if you have, on the record, the examiner stating that your arguments are persuasive and they state why then you be sure to get back to me :)

    "The Examiner could have saved time, reduced the backlog, save the applicant money, and deprived me of a billing opportunity by reading my argument the first time, but Examiner's love to put money in my pocket."

    You should tell your clients that :) Your inability to be persuasive until after they spent a lot of money on appeal might start to look a bit more suspicious from more angles than just that of an incompetent examiner.

    But let me rephrase, it is totally worth your client's 500$ to have them send you to study under me for a weekend.

    ReplyDelete
  14. IMHO, the Applicant's big mistake was in presenting evidence that a PHOSITA would not have combined the references WITHOUT challenging the Examiner to explicitly define the skill level of a PHOSITA, and challenging the Examiner's basis for the conclusion that the Examiner's PHOSITA determination was correct and/or would have defined a person who would have had reason to combine the references..

    ReplyDelete
  15. "I lulzed."
    I've noticed many people laugh or giggle when they are uncomfortable. It must be some kind of defense mechanism.

    "Um, no, you're already presuming that by taking issue with his rejection. Otherwise your claim is allowed and we're not having this conversation"
    No … doing their job right means finding the best reference so we don't have piecemeal prosecution and expand the backlog and further than it happens to be. If I'm appealing, I should assume that the Examiner has given me their best rejection (right??), and if I win on appeal, then the case should be allowed.

    "You can say that nobody knows where tech will be 10 years down the road, but if you don't have that vision today then you have no business filing for a patent in the first place since the odds are overwhelmingly against whatever you're filing on being worth anything unless you're planning to sell the product at your business."
    Says somebody who knows nothing about the business of inventing. You know the phrase "the shotgun effect" (i.e., the concept you use to try to find your next date)? It works well in the business of inventing because no one KNOWS what will happen in 10 years. If they did, they could make a trillion dollars investing. You can make educated guesses, but they are little more than guesses. As such, you have to cover all your bases if you want to play it smart. Then again, playing it smart has never been your forte.

    "Not really, the examiner just doesn't want to go through the bother of dealing with you."
    Oh yeah … so instead of writing up an Examiner's Answer and getting a count, they are going to reopen and not get a count. As is easy to see, Examiner "logic" is easy to cut through.

    "You should tell your clients that :) Your inability to be persuasive until after they spent a lot of money on appeal might start to look a bit more suspicious from more angles than just that of an incompetent examiner."
    Again, your paper thin logic is easy to cut through. I go to the client and say "I appealed and the Examiner reopened." In that situation, do you think the client is going to think my skills of persuasion are insufficient? No … they say "great job." My clients are sophisticated to know bad rejections when they see them – and they see the ALL the time. The client would never let me appeal as much as I do if my track record was poor. On the other hand, an Examiner who rejected all applications (regardless of the merits) is slapped on the back for doing a good job (at least under the old administration).

    You see, in the real world, if you cannot produce, you don't have a job for long – which is why you've decided to stay at the USPTO because so long as you keep pumping out those rejections, they really don't care.

    ReplyDelete
  16. >Applicant's big mistake was in presenting
    >evidence that a PHOSITA would not have
    >combined the refs WITHOUT challenging the
    >Examiner to explicitly define the skill
    >level of a PHOSITA

    Hmm. I suppose it wouldn't hurt to point out in your responses and Appeal Brief that the Examiner failed to determine the ordinary level of skill.

    But I can't recall a case where this argument actually mattered. The BPAI usually says that the references themselves are evidence of the level of skill. I think you have to explain why/how the level of skill is different than that shown in the references and maybe how this determination affects the obviousness analysis.

    ReplyDelete
  17. "I've noticed many people laugh or giggle when they are uncomfortable. It must be some kind of defense mechanism."

    I lulzed.

    "No … doing their job right means finding the best reference so we don't have piecemeal prosecution and expand the backlog and further than it happens to be. If I'm appealing, I should assume that the Examiner has given me their best rejection (right??), and if I win on appeal, then the case should be allowed."

    Did I say that was not their job? I think I said something different.

    "Says somebody who knows nothing about the business of inventing."

    Lulz, I know enough. I especially know enough to know that the shotgun method isn't for everyone because it requires a rather humongous pocket book. Again, there are different methods for different clients/applications.

    Oh, and btw, I know what will happen in 10 years. And, I'm on track for making a fortune investing. Let me clue you in on what will happen. Competent people are going to make a lot of money, slightly less competent people, like yourself, will make some money, and even more incompetent people will make even less money. That's what will happen.

    "Oh yeah … so instead of writing up an Examiner's Answer and getting a count, they are going to reopen and not get a count. As is easy to see, Examiner "logic" is easy to cut through."

    Lulz, idk how hard to cut through their logic is, but they have their reasons. I'm telling you what happens irl, not what my "theory" is you tard. Most of them cite not wanting to have to schedule meetings and defend their work against not only whatever shty arguments you filed, but against better arguments that can be made by appeals guys. They can kick you out another shty action in 2 hrs. So, which one is more worth their time and bother? Spending 2 or so hours scheduling and maybe missing a meeting or three, spending another hour or two addressing the arguments the applicants made in prep for the meetings after having reaquainted themselves with the case, having said meetings and then possibly reopening anyway, (re)learning how to fill out all the forms and which forms to use, or just simply reopening? Well, I personally take the time and trouble to have the meeting and all and I can assure you that it isn't really worth it unless the case is interesting to you intellectually (like say, a 101).

    ""I appealed and the Examiner reopened.""

    Yeah I know that's what you say. Try telling him sometime something like:

    "I appealed and the Examiner reopened but if I had been persuasive before then we wouldn't have had to file an appeal and I wouldn't have had this awesome opportunity for billiing you guys!"

    See how the room lights up with understanding. Report back, I'd really like to know how it goes when your supposedly sophisticated clients start to realize that maybe there is more than office incompetence behind their large bills. Maybe they're paying for incompetence on both sides. Of course, if they're really sophisticated this won't be news to them I suppose.

    ReplyDelete
  18. "But I can't recall a case where this argument actually mattered. The BPAI usually says that the references themselves are evidence of the level of skill. I think you have to explain why/how the level of skill is different than that shown in the references and maybe how this determination affects the obviousness analysis."

    Because the BPAI mangled the Chore-Time case to come out with the proposition that Examiners don't have to explicitly determine the level of skill while ignoring that the Fed Cir still requires that the Examiner explain why the prior art defines an appropriate level of skill. The Examiner should also explain why the implicit determination has no impact on the ultimate conclusion of obviousness but the Applicant should address this anyway with the simple argument that the Examiner is using the prior art to define the level of skill and then claiming that one of skill would have selected that art for combination, rendering the claimed invention obviousness. The applicant points out that this is circular reasoning. The determination of skill is supposed to provide an objective view of the prior art. The Examiner's use of the prior art to define the level of skill is the ultimate in hindsight.

    ReplyDelete
  19. "The Examiner's use of the prior art to define the level of skill is the ultimate in hindsight."

    The examiner is permitted to use hindsight in determining the prior art pertinent to the subject matter sought to be patented, i.e. to perform a search.

    One of ordinary skill in the art is presumably somebody with knowledge of all the prior art that is pertinent to the subject matter sought to be patented(which is not limited to the prior art in the applicant's field of endeavor, but is rather expansive in view of the decision in KSR), but who does not seek to innovate, i.e. to introduce something new. So, if the claimed invention would have been obvious, i.e. "lying in the road," to somebody who knows all of the prior art, including all of the prior solutions to all of the known needs and/or problems, the invention is not patentable.

    Attacking the examiner's prima facie case for failing to provide explicit analysis of the level of ordinary skill in the art is a non-starter, IMO, unless your argument is that the proposed modification/combination would have been beyond the level of ordinary skill in the art. But at that point the burden is on applicant to establish the level of ordinary skill in the art and provide arguments and/or evidence why the modification/combination is beyond that level of skill.

    ReplyDelete
  20. "Examiner is using the prior art to define the level of skill and then claiming that one of skill would have selected that art for combination, rendering the claimed invention obviousness. The applicant points out that this is circular reasoning."

    Unless the examiner simply states that one of ordinary skill would pick that reference for combining and then simply note as an aside that the art is indicative of the level of ordianry skill rather than 'defining" it. And then lulzing because the applicant's rep is a tard.

    ReplyDelete
  21. It's not clear that the examiner has to explain why one of ordinary skill in the art would "pick" a particular reference, or references. That was one of the big disappointments for me in the KSR decision. There was simply no discussion of whether the identification/selection/ of the prior art that is modified/combined is part of the obviousness analysis. The failure of the patentee's "Supreme Court counsel" to defend the TSM standard was a total let down. I guess that's to be expected when you choose a lawyer who's supposed to be an expert in arguing to the Supreme Court, but doesn't know jack sh!t about patent law.

    When a retard like Scalia calls TSM gobbledygook, it's because the patentee's idiot counsel could not answer the very simple question, "What is teaching, suggestion, or motivation?"

    The answer to that question is simply: teaching, suggestion or motivation is the reason(s) why one of ordinary skill would modify/combine a reference(s) to arrive at the claimed invention. I think part of that reasoning may be, should be, but I don't know, the answer to the question: why would one of ordinary skill in the art choose this/these particular reference(s). But as one of ordinary skill in the art is aware of all of the prior art, I'm not sure you can make much headway in establishing non-obviousness by attacking the examiner's choice of some particular reference(s), even if there's the temptation to argue that the examiner used hindsight in the selection (which is a loser argument as I noted above).

    If an invention is obvious, presumably it's not obvious from a single modification of a single reference, or a single combination of very particular references. It is likely obvious from several possible modifications of a several possible references, or from several possible combinations. That's why Rule 104 requires the examiner to cite the best references, and make the best rejection, not each and every possible.

    I still think the only real use of evidence of the level of ordinary skill is by the applicant to establish that a particular modification/combination is beyond the level of ordinary skill. Spending pages of arguments noting the examiner's failure to make explicit findings is not going to get you anywhere. Most likely you'll just end up looking like the dopes who prosecuted and appealed In re Jung.

    Pick your battles carefully.

    ReplyDelete
  22. "The examiner is permitted to use hindsight in determining the prior art pertinent to the subject matter sought to be patented, i.e. to perform a search"

    The Examiner is permitted to use SOME hindsight, not complete hindsight. Using the applicant's spec and claims to find prior art that is then cited as the basis for determining the level of skill in the art is hindsight abuse. There is no objectivity for viewing the prior art, which is the entire point of making the determination of skill.

    "Unless the examiner simply states that one of ordinary skill would pick that reference for combining and then simply note as an aside that the art is indicative of the level of ordianry skill rather than 'defining" it. And then lulzing because the applicant's rep is a tard."

    And that Examiner would have their butt handed to them by the BPAI, if not their SPE or TC Director, since the Examiner failed to provide reasoning with a rational underpinning to support the Examiner's BS.

    "Attacking the examiner's prima facie case for failing to provide explicit analysis of the level of ordinary skill in the art is a non-starter"

    Only if you fail to present arguments that are more than just conclusory statements that the skill level determination should be explicit. The Examiner MUST explain why the references being used to 'implicitly' determine the level of skill reflect an appropriate level of skill. The vast majority of Examiners lack any training or knowledge of how to go about doing this. Even if they attempt it, they have now given the applicant's representative enough rope to hang the Examiner with.

    ReplyDelete
  23. "The Examiner is permitted to use SOME hindsight, not complete hindsight. "

    Even some hindsight is 20/20.

    "Using the applicant's spec and claims to find prior art that is then cited as the basis for determining the level of skill in the art is hindsight abuse. "

    And I spank it like I did your mom last night. And it likes it even more.

    "There is no objectivity for viewing the prior art, which is the entire point of making the determination of skill."

    Amen to that bro.

    "And that Examiner would have their butt handed to them by the BPAI, if not their SPE or TC Director, since the Examiner failed to provide reasoning with a rational underpinning to support the Examiner's BS."

    Lulz, u wish bro.

    "The Examiner MUST explain why the references being used to 'implicitly' determine the level of skill reflect an appropriate level of skill. "

    Lulz, you wish bro. We might do it for you if you ask nice. But probably not if you're going to be an arse.

    "The vast majority of Examiners lack any training or knowledge of how to go about doing this."

    And you know why? Because it isn't required. You might try reading some cases on this subject sometime.

    "Even if they attempt it, they have now given the applicant's representative enough rope to hang the Examiner with. "

    Maybe, if they're a tard. Like you. So yeah, probably.

    ReplyDelete
  24. "http://www.intelproplaw.com/ip_forum/index.php?topic=11033.0"

    O look, it looks like JD went ahead and answered that question.

    ReplyDelete
  25. "Only if you fail to present arguments that are more than just conclusory statements that the skill level determination should be explicit. The Examiner MUST explain why the references being used to 'implicitly' determine the level of skill reflect an appropriate level of skill. The vast majority of Examiners lack any training or knowledge of how to go about doing this. Even if they attempt it, they have now given the applicant's representative enough rope to hang the Examiner with."

    Not sure what that gets you. The level of ordinary skill in the art is a question of fact. If the examiner presents substantial evidence of the level of skill, even if it's implicit, the Board is going to give the examiner the edge on that issue. I don't think it gets you anything to argue, "The examiner didn't explain why this reference(s) establishes an appropriate level of skill in the art." You're then in an In re Jung situation. The judge, whether it's an APJ from the BPAI or a J from the Fed. Cir., is going to tell you, "Anybody with a cursory command of patent prosecution can figure out what the level of skill is from the teachings of the reference(s) cited by the examiner." The examiner provided substantial evidence of the level of skill in the art. There's really no obligation on the examiner to hold your hand and explain why the prior art cited evidences the level of skill in the art.

    "The Examiner is permitted to use SOME hindsight, not complete hindsight. Using the applicant's spec and claims to find prior art that is then cited as the basis for determining the level of skill in the art is hindsight abuse. There is no objectivity for viewing the prior art, which is the entire point of making the determination of skill."

    I don't agree. The examiner may use complete hindsight when searching. There's no other way to search. Keep in mind that one of ordinary skill in the art is presumed to be aware of all of the pertinent prior art, the examiner is merely searching for "the best" to determine the obviousness or non-obviousness of the claimed invention.

    The check on the examiner's use of hindsight in searching is the requirement that the prior art selected must be pertinent, i.e. analogous, to the subject matter sought to be patented.

    Of course, if you're willing to take a case to the Fed. Cir. on this issue, I will follow the proceedings with interest. I just think you're gonna end up like the guys from In re Jung. I don't think you want that really.

    ReplyDelete
  26. "You're then in an In re Jung situation."

    You have to remember, you're probably talking to an Oetikertard that just won't die.

    "The check on the examiner's use of hindsight in searching is the requirement that the prior art selected must be pertinent, i.e. analogous, to the subject matter sought to be patented."

    Oh, come on, don't spoil it for him! I was hoping he'd file an appeal and we'd get to see him crash and burn! Oh, the spectacle!

    "I just think you're gonna end up like the guys from In re Jung. I don't think you want that really. "

    Don't put it past him! Being a tard runs deep, indeed, down to fundamental levels!

    ReplyDelete
  27. "And you know why? Because it isn't required. You might try reading some cases on this subject sometime."

    Actually, it is required. Graham requires the determination of skill. KSR affirmed that Graham is still the law of the land. The PTO took a litigation case, Chore-Time, and mangled it to try to use it at the PTO to justify Examiners failing to determine the level of skill. The fact that the PTO was able to get away with this is a testament to the strength of the TSM test for so many years. Speaking of cases, try reading Ex parte Jud, the PTO informative opinion on determination of skill. It is chock full of circular reasoning which reflects the fundamentally flawed logic in the way that the PTO turned the litigation exception into the prosecution rule. For example, the BPAI said that an enabling disclosure can serve as a 'floor' for skill level, with the proviso that an enablement rejection undermines this. What makes that laughable is that an enablement rejection inherently requires that skill level be determined so as to be able to demonstrate the one of ordinary skill would have ascertained the lack of enablement. Now, 9 times out of 10, enablement rejections are made because the level of ordinary skill is above that of the Examiner reviewing the application.

    "Oh, come on, don't spoil it for him! I was hoping he'd file an appeal and we'd get to see him crash and burn! Oh, the spectacle!"

    Now, speaking of crash and burn, a case you should read is In re Klein, No. 2010-1411, Decided: June 6, 2011, where the Federal Circuit slammed the BPAI and the Examiner soundly upside the head with the analogous arts test (which most Examiners wrongly thought was dead). The Federal Circuit didn't even bother with getting to the prior art rejections since the prior art was kicked out. I do have a case on appeal where a determination of skill argument is made but since there are so many other issues in that case where the Examiner was deficient, it is likely that the BPAI will not want to address the skill level determination issue since even the BPAI has limits on how far it goes to provide cover for Examiner deficiencies, as the BPAI learned the hard way in In re Klein.

    ReplyDelete
  28. Lulz, I read Klien.

    The examiner made a shty argument and the feds said so. Whooptie.

    "I do have a case on appeal where a determination of skill argument is made but since there are so many other issues in that case where the Examiner was deficient, it is likely that the BPAI will not want to address the skill level determination issue since even the BPAI has limits on how far it goes to provide cover for Examiner deficiencies, as the BPAI learned the hard way in In re Klein. "

    Standard lawlyer hiding the good argument eh? Yeah, figured we'd see as much from ya.

    "as the BPAI learned the hard way in In re Klein. "

    I lulzed.

    ReplyDelete
  29. "The examiner made a shty argument and the feds said so. Whooptie."

    The Examiner said his/her argument was superb, the Examiner's SPE and the Primary who sat in on the Pre-Appeal Conference thought the argument was just swell, the Soliciter who argued the case presented the argument to the Court as if there was no question whether the art was analogous. The Federal Circuit handed them their behinds.

    The next feature to be installed on the BPAI's webpage is to be able to search BPAI decisions by the Examiner's name. Good luck to the Examiner who tries to pull the same stupid stunt they were reversed on several times before.

    ReplyDelete
  30. "the Examiner's SPE and the Primary who sat in on the Pre-Appeal Conference thought the argument was just swell, "

    You were there?

    "the Soliciter who argued the case presented the argument to the Court as if there was no question whether the art was analogous. "

    You were there? Also, you're 100% sure that on remand they don't just change around the "problem to be solved" and affirm the examiner anyway? Because that's what leading tards are predicting so I'd expect you to be right there with them.

    ReplyDelete
  31. "You were there?"

    You and I both know that Pre-Appeal conferences are held behind closed doors like a dirty little secret, without the presence of the Applicant or his/her representative. According to your logic (or rather your lack of logic), cases proceed to appeal over the objections of the SPE and Primary who conduct the conference with the Examiner being appealed. Are you under the belief that the SPE will allow the appeal to go forward even if the SPE does not stand 100% behind the Examiner's rejections? Because that's the way things work in your little slice of reality...Examiners have all the power and SPEs have no say in whether the appeal will go forward.

    "You were there?"

    Unlike the BPAI, the Federal Circuit actually has oral arguments before it that are open to the general public.

    "Also, you're 100% sure that on remand they don't just change around the "problem to be solved" and affirm the examiner anyway?"

    Assuming the PTO doesn't try to appeal the case to the US Supreme Court (like they tried in In re Vaidyanathan, another case where the Federal Circuit slapped the Examiner, BPAI and Solicitor silly for their fundamentally flawed arguments), the easiest thing for the BPAI to do is kick the case back to the Examiner to beef up the record. This is far easier than the BPAI wasting time trying to turn this sow's ear into a silk purse. In my experience, when a case like this is remanded to the Examiner, the case is quietly allowed without further examination. After all, a SPE may be willing to be reversed once in a case, but there is no way they are going to risk a second reversal in the same case because that puts way too many eyes on them and the last thing any SPE wants is for PTO management to start questioning their judgement.

    Now, feel free to vent that impotent rage of yours by getting in the last word. I know how important that is to your kind.

    ReplyDelete
  32. " I do have a case on appeal where a determination of skill argument is made..."

    I would like to read your arguments. I think you're tilting at windmills, but as a practitioner, I'm always interested in seeing approaches that I haven't considered or tried before.

    ReplyDelete
  33. "You and I both know that Pre-Appeal conferences are held behind closed doors like a dirty little secret, without the presence of the Applicant or his/her representative."

    Lulz, I wouldn't mind if we cut you guys in on it. In fact, I enjoy very little more at my job than watching an attorney squirm once my position is made clear. The only downside is that my spe gets all concerned when I start lulzing at the attorney's incompetence to the attorney's face.

    "According to your logic (or rather your lack of logic), cases proceed to appeal over the objections of the SPE and Primary who conduct the conference with the Examiner being appealed."

    I never presented that "logic".

    "Are you under the belief that the SPE will allow the appeal to go forward even if the SPE does not stand 100% behind the Examiner's rejections?"

    Not so much under a "belief" so much as having seen it happen on occasion.

    "Because that's the way things work in your little slice of reality...Examiners have all the power and SPEs have no say in whether the appeal will go forward."

    I don't believe I ever said that.

    "Unlike the BPAI, the Federal Circuit actually has oral arguments before it that are open to the general public."

    So were you there? Or did you listen online?

    "This is far easier than the BPAI wasting time trying to turn this sow's ear into a silk purse. "

    So then in other words you're not 100% sure. K, gotcha.

    "Now, feel free to vent that impotent rage of yours by getting in the last word. I know how important that is to your kind. "

    Lulz.

    ReplyDelete
  34. BPAI hearings are, in general, open to the public. Go to http://www.uspto.gov/ip/boards/public_hearing_info.jsp for more information.

    ReplyDelete