Details:
Ex parte Kislevitz
Appeal 2009009637; Appl. No. 10/770,344; Tech. Center 3700
Decided January 18, 2011
The sole independent claim on appeal read:
1. A hand-held controller configured to control an operation of an amusement device,
the controller comprising a multi-part housing including at least a left-hand grip portion and a righthand grip portion,
wherein the left-hand grip portion and the right-hand grip portion are substantially the same size and are pivotable with respect to each other to control the operation of the amusement device.
On appeal, the independent claim stood rejected as anticipated under § 102(b) by a press release describing a game controller called the NeGcon. The press release read, in its entirety:
NeGcon Goes Black:
The NeGcon, Namco's analog controller, will be rereleased in a brand-new color.
By Yutaka Ohbuchi, GameSpot / Posted Mar 6, 1998 4: 19 pm PT
On April 29, Namco will rerelease its NeGcon analog controller,which is used for racing titles like Rage Racer, Wipeout XL, and Ace Combat. It has the same features as the previous version, but it is smaller in size than the original and has a lower price (2,980 yen compared with the older 4,980-yen price tag). It's currently not know whether this new NeGcon color will be released in the US.
The same anticipation rejection also relied on an online publication, the Twist article, as "evidence" of various features included in the NeGcon.
In the Appeal Brief, the Applicant first argued that the press release was not prior art under the § 102(b) public use or sale prong, since the press release referred to Japan rather than the US. The Applicant then argued that even if the press release was treated as prior art under the printed publication prong, the press release did not disclose any of the claimed elements, since the only feature mentioned was the color. The Applicant further argued that the Twist article did not establish use or sale in the US because the article did not identify the location of the toy store where the author found a NeGcon controller in 1996.
In the Answer, the Examiner clarified that "the first [press release] reference was used to establish the simple fact the reference was released prior to the filing" and that "the second reference was provided to establish the structure and features of the controller." The Examiner then replied to points raised in the Appeal Brief:
However the applicant refuses to agree the article is evidence of the original NeGcon was in public use or sale in the United States. The Examiner is amazed by this argument when the article clearly states the controller is used for racing titles such as Rage Racer, Wipeout XL & Ace Combat which are video games that were on sale & in the public at the time.
...
The picture below was disclosed by the second reference [(Twist article)] and clearly demonstrates the twisting or pivotable motion with respect to the left and right portion that the NeGcon is capable of performing. However the applicant refuses to believe the reference since the blogger posted the article after the applicant's filling date. Furthermore, the applicant refuses to believe the picture below is the original NeGcon the first reference mentions, even though the controllers labels: Namco, NeGcon and PlayStation are clearly visible in the picture.
The Applicant filed a Reply Brief to respond to various points in the Examiner's Answer:
The Examiner relies on the identification of certain video games (Rage Racer, WipeOutXL, and Ace Combat) in the GameSpot article as proof the NeGcon controller was also on sale in the U.S. But the Examiner conveniently ignores the fact that NONE of these games REQUIRED the use of a Namco NeGcon controller (or that he has failed to even prove the games themselves to have been on sale or in public use in the U.S. before the critical date). ...
Applicants have not argued that the controllers shown in the various pictures [in the Twist article] are in some way mislabeled. What applicants argue is regardless of what is shown, the article does not prove that a Namco NeGcon controller was on sale or in public use in the United States prior to the February 2, 2003, 102(b) bar date. The article is dated 2007. The identity and location of author and those of the "local toy store" referred to in the Twist article are not identified and are simply unknown.
The Applicant then concluded the Reply Brief argument as follows:
The mere fact that people today in the United States are familiar with certain items is not proof that any of those items were on sale or in use in the United States before a specific date. The mere fact that some items might have been available or in use in the United States before the specific date is not proof that another article that might be optionally used with such item(s) was also on sale or in public use in the United States before that specific date. Finally, the mere fact that something is described in English on the internet is not proof that whatever is being described is occurring or has occurred or exists or has existed in the United States.
The Board reversed the anticipation rejection, finding that neither the press release nor the Twist article showed public use or sale in the US. With regard to the press release reference, the Board noted that the press release did not explicitly refer to sale in the US, and that a price expressed in yen suggests that the controller was expected to go on sale in Japan. Furthermore, mentioning that "the controller may be used for certain enumerated racing titles does not establish such use was within the United States." The Board further found that "while the [Twist reference] states that the author (unnamed) found a controller 'at a local toy store' in 1996, nothing in the reference establishes the location of that toy store as being within the United States."
My two cents: Looks to me like the Examiner got a little too fancy here with his rejection, without properly understanding the use/sale prong. Perhaps the Examiner was simply unfamiliar with the fine points of the use/sale rejection because they're relatively rare in prosecution. I don't see many of them on appeal. And those that I do see tend to be in reexamination, which is handled by a special reexam art unit.
I thought the Applicant did a great job in arguing, and in responding to each of the Examiner's points. Maybe the Board would have reversed even without such compelling arguments, because the Examiner's arguments were weak. But why rely on the Board to find these weaknesses – point them out yourself.
I notice that the Board didn't comment on the propriety of the Examiner combining multiple references into a single § 102, with the "Twist" article being used as "evidence" of NeGcon features. I suppose the Board didn't need to reach this question, since even when considered together the two references didn't show use or sale in the US.
"The Applicant then argued that even if the press release was treated as prior art under the printed publication prong, the press release did not disclose any of the claimed elements, since the only feature mentioned was the color"
ReplyDelete"I notice that the Board didn't comment on the propriety of the Examiner combining multiple references into a single § 102, with the "Twist" article being used as "evidence" of NeGcon features"
I don't get these, anticipation is based on the disclosure of a complete invention, explicitly or inherently. The fact that the publication didn't disclose all features shouldnt matter at all since the device is a particular model with particular name in which the features evidenced in the secondary are necessarily present. Two reference 102's are used a lot as evidence of a complete invention.
idunnolol why he went for a use or sale rejection though
This case once again demonstrates that the examiners have absolutely no understanding of evidence. The post above from the internet's most ubiquitous examinertard is merely confirmation.
ReplyDelete"However the applicant refuses to agree the article is evidence of the original NeGcon was in public use or sale in the United States. The Examiner is amazed by this argument "
ReplyDeleteThis language is the hallmark of the smarmy examiner. The humiliation of the BPAI reversing them is something that will no doubt expedite allowance of this application as examiners like this quietly make the case quickly disappear while also raking up an allowance.
"This case once again demonstrates that the examiners have absolutely no understanding of evidence."
ReplyDeleteTo be fair, there are many attorneys/agents who also demonstrate a lack of understanding of evidence.
"This language is the hallmark of the smarmy examiner."
ReplyDeleteNo doubt. The examiner is amazed that somebody who knows way more about evidence than the examiner does not agree with somebody who knows nothing about evidence.
Amazing.
"The humiliation of the BPAI reversing them is something that will no doubt expedite allowance of this application..."
A new rejection was actually issued in March, from what I see in PAIR. I think it's a new examiner though. The TC Director who approved the rejection has got to be the laziest single employee of the PTO. I have many cases pending in his TC and his SPE's and examiners are the worst in the PTO. TC 3700 has the worst reversal rate of any in the PTO, yet he just keeps approving rejections after reversals. He needs to be fired. Not reassigned or transferred, or promoted. Just fired.
"...as examiners like this quietly make the case quickly disappear while also raking up an allowance."
The examiner does not get a count for allowing an application after a Board decision. The examiner got the second count of the application for writing the examiner's answer.
Trust me when I tell you that there is no humiliation for an examiner being reversed. They simply don't care. They all sit around telling each other, "Meh, the Board doesn't know anything."
This past weekend a friend of mine who is an SPE told me that the last two decisions (both reversals) he received from a particular APJ were wrong. I know that particular APJ. That particular APJ was in private practice for about 10 years before going to the PTO. But she doesn't know anything, right?
My old SPE has been getting reversed for years using the same old per se boilerplate case law obviousness rejections over and over. He keeps getting reversed. He keeps making his examiners send these loser rejections up to the Board. There's no humiliation, there's no change in behavior or attitude, there's no learning process, there's no nothing.
Go check out 11/214,280. And then go to the usptoexaminers site and see how many posts there are for that examiner. I deal with that idiot frequently. And he continues to make the same idiotic rejections that got him summarily reversed in that application. He hasn't changed his attitude one bit.
Keep up the appeals.
"To be fair, there are many attorneys/agents who also demonstrate a lack of understanding of evidence."
ReplyDeleteI have to agree unfortunately. It's depressing to see how few agents/attorneys argue the evidentiary requirements of a prima facie case (of any rejection) and fail to explain/argue why the evidence provided by the examiner, if any!, fails to meet the required burden.
There's a lot of sh!tty advocacy from the patent bar to the BPAI. And as there are a lot of sh!tty APJ's, you have to hold their hands and lead them to those reversals, particularly the lifers whose natural inclination is to affirm.
>Two reference 102's are used a lot as
ReplyDelete>evidence of a complete invention.
It's not common in the file histories I read of appealed cases, or in my own practice.
>device is a particular model with particular
>name in which the features evidenced in the
>secondary are necessarily present.
Agree that the above scenario is one where it's appropriate to use multi-ref 102. And that it seemed to be appropriate here. [I hedge with "seemed" because I didn't actually see the refs, they weren't in PAIR.]
Nonetheless, because multi-ref 102 is unusual, and because it's appropriate in only a few scenarios, I thought the Board should have spelled out whether or not it was appropriate here.
>To be fair, there are many attorneys/agents
ReplyDelete>who also demonstrate a lack of understanding
>of evidence.
Agreed. Evidentiary issues simply don't come up everyday in run-of-the-mill pros. That is, you can properly issue (if you're Examiner) or respond to (if you're prosecutor) many, many 102s and 103s without thinking about evidence.
>how few agents/attorneys argue the
ReplyDelete>evidentiary requirements of a prima facie
>case (of any rejection)
Huh. I hadn't thought of this as being an evidentiary issue.
I have a different opinion than yours. I see plenty of attorney "arguments" that the Examiner hasn't made a PF case -- but it's not a real argument. It's simply a recitation of the Graham factors and pointing out that the Examiner didn't go through them. Dunno whether this stems from lack of understanding, fron taking shortcuts, from overuse of boilerplate, or all of the above.
Part of the problem is that the law about the "prima facie case" - whatever that means - is unsettled at the Federal Circuit. Consider:
ReplyDelete1. In Jung, Linn, Dyk, and Gajarsa said that a prima facie case only requires satisfaction of 132. Say what? That basically ignores the statutory basis for the requirement in 102 (see Application of Warner) - and a huge body of CAFC precedent on the prima facie case.
2. In In re Spada, Judge Newman defined a prima facie case as one that "compels" the rejection in the absence of rebuttal evidence. The "compels" language was incorporated into Rules 56(a) and 555(a), in the completely different context of duty to disclose. The language is nowhere found in the USC, CFR, or MPEP to define the Examiner's burden. The CAFC itself has never repeated the "compels" standard in the context of the examiner's burden.
3. A large body of precedent says that a prima facie case requires some sort of reason or motivation to make the claimed invention in an obviousness rejection. This was affirmed just this week in Genetics Institute v. Novartis Vaccines. But such a requirement is nowhere found in Jung or section 132.
4. In general, whoever wrote Jung (Linn's clerk?) appeared oblivious to a wide body of case law - much of it authored by Judge Newman - that made the standard for a prima facie case much higher. See Oetiker, Rinehart, Piasecki, Warner, Dillon, etc. (just look through MPEP 2142).
5. On top of it all - whether the examiner has made a prima facie case seems to be practically irrelevant. APJs have wide discretion to embellish findings of fact and law, and even to recommend and make new rejections. If the examiner doesn't make a prima facie case - but the APJ can - there is no real punishment for the examiner. In practical terms, it's a non-issue, because the PTO doesn't enforce the prima facie standard and has no mechanism to do so. The PTO is more concerned (with some justification) in preventing invalid patents from issuing, regardless of how the procedural ball gets tossed back and forth beforehand.
"This case once again demonstrates that the examiners have absolutely no understanding of evidence. The post above from the internet's most ubiquitous examinertard is merely confirmation. "
ReplyDeleteThe "post above" was not by me tardface. Just because he likes my lolstyle and emulates it doesn't mean it's me.
What's funny is something like this:
ReplyDeletehttp://meta.ath0.com/2002/05/03/2002-05-03-09-26/
Probably solves the entire debate. Or, they could simply email the guy that wrote that blog post and find out when he bought his controller in the US.
Here is an actual offer to sell, and they're making it to me, in the US lol:
http://www.granturismobynumbers.com/ubb/Forum6/HTML/001001.html
Why do examiners shy away from consulting their good friend google on these matters?
It was super hard to come up with this search string:
NeGcon on sale 2002
And I have plenty of hits.
"The 'post above' was not by me tardface. Just because he likes my lolstyle and emulates it doesn't mean it's me."
ReplyDeleteSomebody mentions the internet's most ubiquitous examinertard and 6 comes running.
Lulz
Out of the generousity of my heart I will explain for Kip what the situation is on the whole "prima facie case" requirement.
ReplyDeleteFirst Kip, you must understand that there are two parts to a prima facie case, a procedural part and a substantive part. This is because different courts use the term in different ways. To be sure, many courts refer to it as just a "procedural tool" and if one wishes to see it as that then absolutely, the standard is that set forth in Jung. However other courts have used the term in other contexts and thus there are two aspects to the tool.
If you require a discussion on this then you can look to Oetiker. There they discuss the ways the term has been used both in the context of procedure where one talks about a "prima facie case" and the "prima facie case standard" and in other contexts where one refers to a "prima facie case of obviousness" where one is referring to the substantive standard of obviousness rejections. For examples of the first see Jung and Oetiker and for an example of the second see Genetics Institute v. Novartis Vaccines.
But I promised to actually explain this to you, so here you go.
The first part, the procedural part, requires only satisfaction of 132. That is, applicant must be put on notice of the rejection so that he may responsd in substance else note that he feels insufficiently appraised of the rejection to be able to respond properly. Note that this is still a valid argument from attorneys if they do not feel that they have been put on notice of the grounds of rejection. Note however that the PTO is going to get substantial deferrence if they at least attempted to put you on notice.
^That is what Jung was about. I.e. the procedural "prima facie case" standard for all rejections.
Additionally the prima facie case has a substantive aspect to it. Here one may argue all the various substantive aspects of the rejection or you may argue that certain things (graham factors) are missing.
^That is what the other cases on the subject of "prima facie case of obviousness" is about.
Note that prior to Jung there were some people out there, known colloquially as "Oetikertards", who conflated their substantive issues with their procedural issues. They felt as if when the office made a substantive mistake it also was making a procedural mistake as well so all they needed to say was "you didn't make out a complete prima facie case against us" and the rejection would be improper. This of course absolved them from having to actually state what they felt was substantively wrong with the rejection. But there is no such getting out of it, as Jung noted, where the office did at least put you on notice of the grounds of rejection.
Dear August 27, 2011 5:00 PM:
ReplyDeleteI disagree with you 100%.
You draw a distinction between:
A. "prima facie case standard"
B. "prima facie case of obviousness"
You argue that A. is merely procedural, whereas B. is substantive.
What's even more amazing: you argue that Oetiker supports this distinction between A and B.
There are many, many problems with your analysis:
1. Where does Oetiker distinguish between A and B? You say that it does, but I can't find any text there supporting your view.
2. Where does any other case support this distinction? Does it originate anywhere other than you?
3. Do you really think the Federal Circuit would say, "In this case, the examiner made a prima facie case, procedurally, but did not make a prima facie case of obviousness, substantively"? Can you really say that with a straight face? There's not a hint of two different standards anywhere in Jung, Oetiker, MPEP 2142, etc.
4. You write that "'Oetikertards' [] conflated their substantive issues with their procedural issues." But the issues are conflated in the case law. The opposite result would be absurd: suppose that an examiner rejects claim 1 because "claim 1 recites the planet Jupiter, but the planet Jupiter has a purple color, as shown in the Jupiter reference, but purple colors cannot form the basis for a proper claim, therefore claim 1 is rejected." If we're not allowed to consider substance - and you say that we're not - then why hasn't the examiner made a prima facie case here? Hasn't the examiner "stat[ed] the reasons for such rejection, [...] together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application"? Or do you think that absurd rejections like this form a prima facie case? Do you think Judge Newman (author of Oetiker, Piasecki, and Spada) would agree that a prima facie case is made here? She wouldn't.
"1. Where does Oetiker distinguish between A and B? You say that it does, but I can't find any text there supporting your view."
ReplyDeleteI think it comes from that "universal applicability" of Oetiker. According to 6tard, prior precedents have "universal applicability" so that examiners can cite them for any reason, regardless of whether the case actually says anything even remotely relevant to the issue at hand or whether the examiner is just making sh!t up, which examiners like 6tard do pretty much every time they cite a case they don't understand (which is all cases actually).
"2. Where does any other case support this distinction? Does it originate anywhere other than you?"
See the above. Keep in mind that 6tard cites case law the way it's taught at the PTO: just cite some case and say it supports your delusions and don't worry about looking like an idiot. It's worked for so many others at the PTO. There's probably a promotion in it for 6tard if he keeps it up.
Karen, you should do a post on the recent BPAI decision in 11/270,377. Cites In re Jung. The examiner's rejection was found to be so uniformative that the applicant was prevented from recognizing and seeking to counter the rejection.
Lulz
Best of all, the examiner's answer was signed off on by the same SPE who signed off on the McQueer appeal. He needs to be fired. Immediately. But he'll probably be promoted to TC Director soon. His knowledge of the law is so great that he's really wasting his talents at the SPE level.
Lulz and lulz some more.
"You argue that A. is merely procedural, whereas B. is substantive."
ReplyDeleteJust to make this crystal clear in TLDR form, no, I "argue" (or moreso "explain") that people have been using it in that fashion, and that such use is imprecise, perhaps to the point of being improper. Although I will say that I may not have gotten in depth enough to explain this to you above, in the first post I simply went along with how I knew you used the words to explain it to you in terms you should have understood better. And indeed, I do believe that you at least have a firm grasp of how you should be making a distinction in how YOU use the term.
However, I'm not drawing a distinction. I belong to the class of elite people that know that "prima facie" merely refers to the procedural aspects of the case AND NOTHING MORE (in caps just for you). You do not belong to this class currently. You belong to a class of unenlightened conflating the use of the term in certain contexts to have it mean something different. Specifically you would have the word refer to purely procedural aspects AND "procedural aspects" based on the substance of the case, aka "substantive aspects". Ridiculous I know, but you and yours do it anyway. And there is a reason you do it, which I will explain.
But before I do, to be clear, I'm saying that other people (you) are inappropriately failing to draw a distinction in how THEY themselves are using the word. I do not draw a distinction in how I use the word because I use it properly. However, they have been using the words wrong for a long while and such a distinction must be made in the two contexts in which THEY (not me) are using the term. And that they've been doing it for so long that now one must understand how they've been fuc ing it up to understand the source of the current "confusion".
To me, and to courts who are being formal (Oetiker and Jung for example), the "prima facie case of obviousness" is merely a species of the "prima facie case" genus and it refers solely to the procedural aspects of the case. Loose tongued courts, and many folks (for instance, the BPAI in Oetiker), have been using the term more loosely on occasion and this is the source of the confusion. People, and some loose tongued courts, started using a term that should be reserved for referring to procedural aspects of a case to refer to obviousness cases in general. And they did so most egregiously in cases where they were concerned solely with the merits or substance thus leading people to believe the "prima facie" had something to do with the merits of the case at hand.
Now the term is so generally used that for purposes of discussion one must understand that people use it that way.
"Karen, you should do a post on the recent BPAI decision in 11/270,377. Cites In re Jung. The examiner's rejection was found to be so uniformative that the applicant was prevented from recognizing and seeking to counter the rejection."
ReplyDeleteA great example of a properly decided case.
"Do you really think the Federal Circuit would say, "In this case, the examiner made a prima facie case, procedurally, but did not make a prima facie case of obviousness, substantively"? "
No they would not say that, because they would go all formal on you and actually use the term correctly instead of loosely.
They would say: "In this case, the examiner made a prima facie case, procedurally, but did not properly resolve the question of obviousness, substantively".
Indeed, in Jung they would have done just that if the examiner had actually erred substantively. Iirc he did not.
"But the issues are conflated in the case law. "
Not really, they just used loose confusing wording.
"But the issues are conflated in the case law. The opposite result would be absurd: suppose that an examiner rejects claim 1 because "claim 1 recites the planet Jupiter, but the planet Jupiter has a purple color, as shown in the Jupiter reference, but purple colors cannot form the basis for a proper claim, therefore claim 1 is rejected." "
Word on the street is that examiners already make that kind of rejection, without the blatant admission inserted. And the proper response is to respond to the substance.
'If we're not allowed to consider substance - and you say that we're not - then why hasn't the examiner made a prima facie case here?"
Oh you're allowed to, it is just that you shouldn't really use the term "prima facie" in this context. You should merely talk about the case of obviousness. Also note, in the special case where the examiner made such an odd admission one might reasonably argue you don't understand the grounds of rejection and were not put on notice.
"Do you think Judge Newman (author of Oetiker, Piasecki, and Spada) would agree that a prima facie case is made here? She wouldn't. "
She may not, but not for the reason you think.
Finally I note that I'm kind of surprised that any lawlyer could be so confused on this subject, issues of procedure and substance are all too often divorced from one another in the law. Yet in this particular instance, otherwise trained lawlyers somehow lose sight of the traditional separation.
Let me sum that up for you.
ReplyDeleteYou can either use the term properly, where it only refers to the 131 notice requirement or you can use the term more loosely as has been commonly done of late.
If you choose the former then good.
If you choose the later then fine, but you must make a distinction in how you use the term otherwise you will have problems and think that there is a massive disconnect in the law. And you'll think this when there is no massive disconnect. It's simply you and some other people being sloppy.
And for some reason the post about Oetiker did not post.
ReplyDeleteLet's try again.
In Oetiker we had Oetiker trying to rely on the substance of his case to affect the procedural detemination of whether or not there was a case made against him:
Oetiker also argues that the concept of a "prima facie case of obviousness" has no role outside of the chemical arts. Oetiker refers to the origins of this term in the chemical practice, where properties may not be apparent from chemical structure. Oetiker distinguishes mechanical inventions, where the properties and workings of a mechanical device are apparent in the drawing of the structure. We think that the PTO is correct in treating the concept of the prima facie case as of broad applicability, for it places the initial burden on the examiner, the appropriate procedure whatever the technological class of invention. That a prima facie case may be established, or rebutted, by different forms of evidence in various technologies does not restrict the concept to any particular field of technology. "[T]he requirement of unobviousness in the case of chemical inventions is the same as for other types of inventions". In re Johnson, 747 F.2d at 1460, 223 USPQ at 1263. This procedural tool is recognized in fields outside of the chemical arts. E.g., In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed.Cir.1985); In re McCarthy, 763 F.2d 411, 226 USPQ 99 (Fed.Cir.1985); In re De Blauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir.1984).
In other words, he tried to use the fact that his case was about mechanics rather than chemistry (both issues of substance) to prevent the board from declaring a prima facie case obviousness had been established.
Newman herself corrected him noting that:
We think that the PTO is correct in treating the concept of the prima facie case as of broad applicability, for it places the initial burden on the examiner, the appropriate procedure whatever the technological class of invention. That a prima facie case may be established, or rebutted, by different forms of evidence in various technologies does not restrict the concept to any particular field of technology.
And she goes on to recognize that how the board used the term "prima facie" was imprecise: The Board's usage of the term prima facie was imprecise for, as discussed supra, the term "prima facie obvious" relates to the burden on the examiner at the initial stage of the examination (aka the burden under 131 for those tar ds reading), while the conclusion of obviousness vel non (aka the thing involving the graham factors for those tar ds reading) is based on the preponderance of evidence and argument in the record. However, it was clear that the Board did not make a new rejection.
In other words, people have been fin up the use of the term for quite some time now to simply refer generally to any case of obviousness properly made out rather than to the initial case being made procedurally by the examiner.
If you want to use the term thus, then fine, but you must draw a distinction between the contexts in which you use it if you want to do so.
The error you are making is quite sophisticated, you are taking courts having told you that prima facie cases are all about procedure, and then taking their holdings from cases where they judged based on substance but loosely used the words "prima facie case of obviousness" to mean that the purely procedual tool now magically involves substance but is still purely procedural. It does not.
*they do not
ReplyDeleteAnonymous:
ReplyDeleteYour posts are too lengthy and rambling to make replying easy or practical. But I will try.
1. You argue that you are not arguing for distinguishing between a procedural "prima facie case" and a substantive "prima facie case" - even though your original post did just that. Instead, you argue NOW that the procedural Jung/132 (maybe Oetiker, maybe not) rule is the only true "prima facie case."
2. I certainly agree that, in the context of examination, Jung states that all that is required for a prima facie case is satisfying 132.
3. Note that the relevant statute in Jung is 132, not 131, as you repeatedly state.
4. The problem with Jung, and these statements from Jung, as I explained in my original post is that they contradict a wide body of case law holding the "prima facie case" to be more demanding that Judge Linn and the panel in Jung did.
5. What is your response to my point 4? Well, you repeatedly state that the Federal Circuit and other "courts" (CCPA?) are merely "loose tongued":
"Loose tongued courts, and many folks (for instance, the BPAI in Oetiker), have been using the term more loosely on occasion and this is the source of the confusion. [...] And they did so most egregiously in cases where they were concerned solely with the merits or substance thus leading people to believe the "prima facie" had something to do with the merits of the case at hand."
To which I respond:
A. If only we could dismiss precedent so easily! On your view, if the Federal Circuit acts "loose tongued", and says that a prima facie case requires X, Y, and Z, and then later says that it only requires X, we can just ignore the earlier precedents at our convenience! After all, the court was just being "loose tongued."
We can call this the "loose tongue" defense. I imagine how it will work in oral arguments. "Solicitor, plaintiff in this case argues that Oetiker, Piasecki, and Spada place higher requirement for the prima facie case than Jung did?"
"They might have, your Honor, but Judge Newman was just being loose tongued in those cases. We can just ignore them."
"Oh, were those cases precedential and was Jung en banc?"
"Yes, those cases were precedential, and no, Jung was not en banc."
"So Jung cannot overrule them."
"No, Jung cannot overrule those cases or any other precedential opinion of this court. But since Judge Newman was being loose tongued, we can just ignore what she said."
"Oh, I see. Thank you. You can sit down now. I'm reporting you to the state bar for being incompetent."
B. To the extent that you are saying that Jung appears to conflict with precedent, like Oetiker, Piasecki, Spada, etc., because courts were being "loose tongued" - then you seem to be AGREEING with me, because my original point is that the jurisprudence on the "prima facie case" is an unsettled mess. If you think that "loose tongued" judges have used the term in different ways, resulting in "confusion", then you seem to be AGREEING with me, because I have been arguing for almost the exact same thing (I just think Newman was being more deliberate than "loose tongued").
"1. You argue that you are not arguing for distinguishing between a procedural "prima facie case" and a substantive "prima facie case" - even though your original post did just that. Instead, you argue NOW that the procedural Jung/132 (maybe Oetiker, maybe not) rule is the only true "prima facie case.""
ReplyDeleteWell, I tried to keep it simple for you in the beginning. Sorry if that has you confused now that I had to go in depth.
"2. I certainly agree that, in the context of examination, Jung states that all that is required for a prima facie case is satisfying 132."
Well then we're agreed and we can all move on with life? Oh no wait, you think Jung conflicts... even though it plainly doesn't.
"4. The problem with Jung, and these statements from Jung, as I explained in my original post is that they contradict a wide body of case law holding the "prima facie case" to be more demanding that Judge Linn and the panel in Jung did."
Not really, they're just using the term more formally.
". If only we could dismiss precedent so easily! On your view, if the Federal Circuit acts "loose tongued", and says that a prima facie case requires X, Y, and Z, and then later says that it only requires X, we can just ignore the earlier precedents at our convenience! After all, the court was just being "loose tongued.""
You need not dismiss anything. No court has said that prima facie cases require x y and z. You're relying on SEPARATE cases that require x, another case that require y and a third case that requires z. Only the first case was even really talking about the "prima facie" aspect of the case, i.e. the procedural aspect, and the other cases are talking about the substance of the case. You need only read the decisions correctly. Ask old hands in the field, nobody was surprised by Jung that knew what they were doing in the first place. Only people that were confused initially were surprised. (and david boundy because he's an arse that spread the confusion in the first place).
B. Jung does not conflict at all. The mere appearance of conflicting is what is deceiving you.
"Your posts are too lengthy and rambling to make replying easy or practical."
In other words you don't really understand what I'm saying. I understand. I should have been more concise. I tried. I will give it a shot in the next post and this time be concise.
And my bad, I had 131 on the brain from my discussions with a coworker irl.
Try this on for size for your oral argument though for lols:
"Solicitor, plaintiff in this case argues that Oetiker, Piasecki, and Spada place higher requirement for the prima facie case than Jung did?"
"Plaintiff might have so argued, your Honor, but they are mentally deficient."
"Oh, good that you reminded me, were those cases precedential and was Jung en banc?"
"Yes, those cases were precedential, and no, Jung was not en banc."
"So Jung cannot overrule them."
"No, Jung cannot overrule those cases or any other precedential opinion of this court. But since Judge Newman was being loose tongued, we can just ignore what she said."
"Oh, I see. Thank you. I'll have the decision in your favor in a minute."
"Thanks your honor"
"Np".
Before I post my other post I'd like to take a second to note that you've conveniently ignored the part about Oetiker above. If you would bother yourself to read and understand that, your long nightmare of ignorance may well be over.
ReplyDeleteAllow me to provide you with just an explanation, one which I will endeavor to set forth logically and understandably. The format will be:
ReplyDeleteThe Prima Facie Case
1. What is the prima facie case?
2. How has the term "prima facie case" or varients thereof been used in the past?
3. Which uses of the term "prima facie case" are proper and precise uses?
4. What about all the rest of the uses of the term "prima facie case"?
5. Which caselaw is relevant to the question of what the term "prima facie case" means.
6. Which caselaw is relevant to the other uses of the term "prima facie case" in the caselaw?
7. If the caselaw uses the term "prima facie case" outside of the context of the technical term what should we understand the term to mean?
Easy to understand exercises for the ignorant readers will be provided to help identify precisely where they are going astray in their understanding.
1. What is the prima facie case?
The prima facie case is a procedural tool of patent examination. It allocates the burden of going forward between the examiner and the applicant. The term technically only refers to the initial step taken by the examiner.
The examiner has the initial burden of making a presentation of a case, which is commonly known as a prima facie case, and the standard which must be met by this case is that set forth in 35 U.S.C 132. The standard is that the applicant must be appraised of the grounds of rejection, that is, put on notice of the grounds of rejection. If the examiner accomplishes the task of putting the applicant on notice of the grounds of rejection then the burden shifts to the applicant to come forward with evidence or argument. If the examiner does not, then a prima facie case has not been made and the applicant need do nothing but point that out.
Questions for the reader:
Does the prima facie case involve issues of substance or issues of procedure?
Does the prima facie case involve issues raised by the BPAI for the first time?
Where is the standard set forth for the prima facie case?
What is the standard for the prima facie case?
When is the prima facie case standard met by the examiner?
The above questions should be answerable in less than 4 minutes. If they take you longer, any questions unanswered you get wrong automatically and you need to review this document until you can get them all correct in under 4 minutes.
The Author thanks good Judge Newman for her help and support in the authoring of this work.
Part 2 will follow but ignorant readers can feel free to show their answers to the above questions.
Why users still make use of to read news papers when in
ReplyDeletethis technological world everything is available on web?
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