Monday, August 29, 2011
Applicant requests BPAI rehearing and receives new Office Action because Request introduced new evidence
Takeaway: In Ex parte O'Neill, the Board "procedurally reversed" the Examiner's obviousness rejections and instead entered a new ground of rejection for indefiniteness. The Applicant filed a Request for Rehearing by the BPAI under § 41.50(b)(2). The Request included arguments against the new indefiniteness rejection and was accompanied by an expert declaration under § 1.132 to "provide evidentiary support" for these new arguments. However, the BPAI did not act on the Request. Instead, the Examiner responded by issuing a non-final Office Action which included the Board-entered indefiniteness rejection as well as the previously-entered obviousness rejection. The Office Action noted that a Rehearing by the BPAI was not appropriate, since a Rehearing is limited to the same record, while the Applicant had submitted new evidence.
My two cents: The rules which cover post-appeal processing (37 CFR § 41.50) are complicated, so you should read them carefully when you get a BPAI decision back. A Rehearing by the BPAI is strictly limited to the existing record — unless the Board enters a new ground of rejection, in which case arguments against the new rejection are allowed. But new evidence supporting those arguments is not allowed in a Rehearing.
Subscribe to:
Post Comments (Atom)
Point 1 -- it is up to the BPAI to determine whether or not the Request for Rehearing was proper -- not the Examiner. The BPAI could choose to ignore the declaration and focus on the remainder of the arguments.
ReplyDeletePoint 2 -- this is an increasingly-used tactic by the BPAI -- introduce a new ground of rejection (either 112 2nd or 101) to avoid making a decision on the appealed prior art rejections. Basically, they are shirking their statutory duty.
>up to the BPAI to determine whether or not
ReplyDelete>the Request for Rehearing was proper -- not
>the Examiner.
Maybe. The rules don't really cover this specifically.
And I guess it depends on what you mean by "proper". I see Rehearing Decisions all the time which are "improper" in the sense that new arguments are made. The Board issues a Rehearing Decision and notes that the new arguments are ignored as improper.
In this particular case I say the Request was procedurally improper and the Examiner followed the rules:
41.50(b)(1) Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.
>introduce a new ground of rejection (either
ReplyDelete>112 2nd or 101) to avoid making a decision on
>the appealed prior art rejections.
Agreed that this happens too often, and is annoying to the Applicant -- who waited *years* and then doesn't get a decision on the merits.
"Point 2 -- this is an increasingly-used tactic by the BPAI -- introduce a new ground of rejection (either 112 2nd or 101) to avoid making a decision on the appealed prior art rejections. Basically, they are shirking their statutory duty."
ReplyDeleteI don't know how often the BPAI does this, but I personally have never had it happen to me.
Unfortunately, sometimes the BPAI does have to do the examiner's job because the examiners are so poorly trained. This is one of those cases. The examiner should have done as instructed by the MPEP: make a 112, 2nd rejection, tell the applicant how the claims were being interpreted, and then given an art rejection on that interpretation.
What is really needed is a way for applications like this to be forwarded to the front of the line in the event the applicant re-appeals.
If the claims are so indefinite as to prevent a reasonable construction, deciding the merits of the art rejection would be a bigger disservice to the applicant than what was done.
"Maybe. The rules don't really cover this specifically."
ReplyDeleteThe Examiner cannot touch it because it officially is still with the BPAI. Once docketed, it is with the BPAI unless they send it back down.
"the Examiner followed the rules."
These particular rules are for the BPAI to follow, not the Examiner. Again, not the Examiner's call.
"I don't know how often the BPAI does this, but I personally have never had it happen to me."
ReplyDeleteJust search BPAI opinions of James Thomas and "new grounds." You'll find loads. Do a random search of "new grounds" and you'll find them.
The CAFC, in In re Aoyama (decided Aug. 29, 2011), basically did the same thing as happened here. They reversed the art rejection because the claim was indefinite and not properly interpreted. They then effectively rejected the claim as indefinite (from which Judge Newman dissented as she, I think, would have found the claim definite. It's a little hard to tell if she would have found the claim anticipated or not).
ReplyDeleteIt is pretty clear in Aoyama, at least, that the Fed. Cir. thinks the Board should have vacated the art rejection and instituted a new indefiniteness rejection.
"If the claims are so indefinite as to prevent a reasonable construction."
ReplyDeleteI am familiar with this art, and the language at issue is not indefinite. Broad -- yes, but not indefinite.
The BPAI complains that "there is no description of what process variables or film characteristics are desirable or acceptable." So what -- the particular process variables and film characteristics are not be claimed. On page 7 of the Decision, the BPAI lists a bunch of things that aren't disclosed, but all of these are well within the knowledge of one skilled in the art.
The BPAI concludes that "the Specification provides no description of specific desired electrode properties or how to produce such electrodes." First, what the BPAI complains about is common knowledge to those skilled in the art. Second, what the BPAI complains about, for the most part, isn't even recited in the claims. Third, the BPAI looks more like a 112 1st rejection than a 112 2nd rejection.
I also love the comment, "[t]he claimed invention is sufficiently broad to emcompass the application of any type of material layer suitable for deposition to form an electrode." Again, so f-n what? They weren't claim a particular type of material because the invention wasn't directed to a particular type of material since it was applicable to any type of material.
I also love this comment: "Appellants have no directed us to portions of the Specification that adequately apprise one skilled in the art of the conditions required for selecting the desired electrode properties." One ... that issue was never raised so Appellants had no need to. Second, the selection of a desired electrode property is a design choice that is unimportant to the invention being claimed. The BPAI is simply creating nonsense issues out of thin air.
"from which Judge Newman dissented"
ReplyDeleteOne of Newman's big complaints was that since the issue was never raised by the Examiner or the BPAI, the Appellants never had an opportunity to present any evidence in rebuttal. Although definiteness is a legal conclusion it is based upon underlying findings of fact. Without the facts being developed on this issue, how could the Federal Circuit reasonably conclude that the claims were indefinite?
"I am familiar with this art, and the language at issue is not indefinite. Broad -- yes, but not indefinite."
ReplyDeleteUpon further consideration, I agree with you. This looks like one of those 112, 2nd rejections along the lines of "it's so broad that it's indefinite."
Must be a lifer APJ who wrote the decision.
"I am familiar with this art, and the language at issue is not indefinite. Broad -- yes, but not indefinite."
ReplyDeleteI'm more familiar with this art than you are, because you are necessarily a tard based solely upon your comments here, and the terms referred to are indefinite.
The rejection that needed to be made can be summed up as: "desired" is a subjective determination and we don't allow subjective determinations in claims. Period. 112 2nd.
They simply failed to recite that properly, instead telling us about how there is no discussion in the spec about what "desired" characteristics might be. Apparently the board members thought, erroneously, that if the applicant set forth some exemplary desired characteristics then he'd be fine.
He wouldn't be. It's still a subjective determination.
In other words, the right result was reached, using the right statute, but for the wrong reasons.
"One of Newman's big complaints was that since the issue was never raised by the Examiner or the BPAI, the Appellants never had an opportunity to present any evidence in rebuttal. Although definiteness is a legal conclusion it is based upon underlying findings of fact. Without the facts being developed on this issue, how could the Federal Circuit reasonably conclude that the claims were indefinite? "
ReplyDeleteIn that case the facts were developed below. Amazingly enough. The office went through all the trouble to explicitly note all the facts needed to find indefiniteness in that case and then failed to make the 112. I presume because they're lazy and/or thought they'd be generous.
"...and we don't allow subjective determinations in claims. Period. 112 2nd."
ReplyDeleteLulz
You are so stoopit.
Yeah I'm so stoopit and the Federal Circuit is too.
ReplyDelete"I'm more familiar with this art than you are, because you are necessarily a tard based solely upon your comments here, and the terms referred to are indefinite"
ReplyDelete6-tard ... if you think the terms are indefinite, you need to go back to your tech-school or whatever they pass off as an engineering school in Arkansas and ask for a refund. The claim language is simple and so easily understand that I picked up what they were claiming in about 15 seconds.
Just because your skills are lacking doesn't mean that those skills are lack to those of ordinary skill in the art.
"desired" is a subjective determination. So what? Subjective doesn't mean indefininte. What the variable "desired" or random? A desired variable is different than a random or a calculated variable. In this sense, "desired" could simply mean "predetermined." FYI, there are over 700K issued patents with the phrase "predetermined."
"there is no discussion in the spec about what 'desired' characteristics might be."
Not important to the invention.
Here is an example that even 6-tard could understand. Suppose we claim a method of PECVD coating titanium nitride on a layer of silicon, and the invention involves the thickness of the layer. What the BPAI is complaining about is "this methodology doesn't explain what settings to use on the PECVD coater? or what brand of PECVD coater?" "How is one skilled in the art going to know what gas precursors somebody is going to use?" Again, who f'n cares. Not important. A patent application doesn't have to disclose aspects that aren't needed to make/use the invention.
"Subjective doesn't mean indefininte"
ReplyDeletesubjective is pretty close to the definition of indefinite. what is "desired" by one may not be "desired" by another. and "desired" and "predetermined" have way different connotations
whats gonna happen when this patent gets asserted? how are you gonna tell someone how they feel? and the defense could say "this wasnt desired/I never asked for this". how can you even begin to do claim construction for infringement with that
"so easily understand that I picked up what they were claiming in about 15 seconds."
ReplyDeleteI know precisely what they're claiming as well. Inter alia, anything that fits their subjective opinion in one specific limitation.
I know, I know, you're a tard, so you have a hard time with these things, but try to set that aside for a second.
"So what?"
So public notice tard. Do you provide it? No. You do not.
"In this sense, "desired" could simply mean "predetermined." "
So you think the claim says "pre-detemined predetermined electrode characteristics"? Note that the claim already includes "predetermined" once. You're a tard, just give it up man, seriously.
"FYI, there are over 700K issued patents with the phrase "predetermined.""
"Predetermined" in no way requires one to conduct a subjective inquiry. Tard.
The fact that this rejection is easily avoided or that there are other words they could have used in no way means that it is not a valid rejection. The fact that they could likely strike "desired" and be fine is also irrelevant.
Put it this way tard, what if a company developed a deposition profile based on some electrode properties that were not desired? What if they desired to use some kick arse properties but determined that all they could use were some sux ones that they'd really rather not have to use. Do they magically not infringe where another company using the same electrode properties but thinking they were the cat's meow does infringe? Is that all the company has to argue in court to avoid infringement? Or does the fact that they developed the profile necessarily mean that they "desired" the properties as a given?
Even if people had an argument against the whole subjective elements prohibition Miyazaki ends that so fast it makes your head spin. Subjective claim elements always have more than one reasonable interpretation.
I'm not discussing it further, the BPAI (mis)spoke, and the courts would find fault with the case as well. You tards can wallow around in your own ridiculousness all you want. Tell yourselves about it and make yourselves feel good. Spare me and the rest of the reasonable people here on the planet listening to you.
"Here is an example that even 6-tard could understand. Suppose we claim a method of PECVD coating titanium nitride on a layer of silicon, and the invention involves the thickness of the layer. What the BPAI is complaining about is "this methodology doesn't explain what settings to use on the PECVD coater? or what brand of PECVD coater?" "How is one skilled in the art going to know what gas precursors somebody is going to use?" Again, who f'n cares. Not important. A patent application doesn't have to disclose aspects that aren't needed to make/use the invention. "
I'm aware that what they were complaining about is completely irrelevant and I said as much above.
"A patent application doesn't have to disclose aspects that aren't needed to make/use the invention. "
Supposedly they're supposed to tell us about the best mode, but I doubt if they do very often in this type of space. Which leads to a lot of confusion. The best mode req needs more teeth, not less.
"what if a company developed a deposition profile based on some electrode properties that were not desired?"
ReplyDeleteNo ... if they achieved the electrode properties they set out to achieve, then they were desired.
You are right in that the "desired" in this instance is redundant. However, the fact that it is redundant doesn't render the claim indefinite. Sloppy language isn't necessary indefinite.
" I'm aware that what they were complaining about is completely irrelevant and I said as much above."
This is the point – the BPAI was b'chn about things that aren't important, which raises a question as to their competence and their underlying motivation (i.e., were they attempting to get a cheap "count" by refusing to decide the prior art rejections).
"Supposedly they're supposed to tell us about the best mode"
Maybe applicants didn't identify a "best mode." It seems to me that "best" is a SUBJECTIVE determination that is INDEFINITE. What is meant by best?
"Spare me and the rest of the reasonable people here on the planet listening to you."
Go find someplace else to spout your BS then. Nobody is forcing you to read this blog. Frankly, I don't care what an Examiner thinks about patent law. I would say the same thing about the opinion of a tort's lawyer. You don't have a solid enough background to understand what are blathering about.
"Miyazaki ends that so fast it"
Miyazaki is an illegal decision. The PTO and the BPAI doesn't have substantive law-making authority and they cannot create a new standard that conflicts with Federal Circuit precedent. Hold onto that case all you want, but that case means nothing to me except as a reminder of the Dudas reign of terror.
"Subjective claim elements always have more than one reasonable interpretation."
Most words in the English language have multiple meanings – that is the mushy nature of the English language, which is why Miyazaki is such an inane decision because it doesn't think through just how badly it can be applied. Remember the recent case that revolved around the meaning of the term "laminate." Is "laminate" indefinite because you can have multiple definitions?
". Frankly, I don't care what an Examiner thinks about patent law."
ReplyDeleteOf course you don't, because you're a tard.
"I'm not discussing it further..."
ReplyDeleteOh if that were true, what a glorious day this would be.
Your insistence on parading your willful, gleeful, and invincible ignorance all over the internet got tiresome about 2 years ago.
It appears to be true.
ReplyDeletehey i am johnsam. I am working on blogs.that why i am searching the diffrent blogs,i like your blog because your blog is so attractive.its useful for me.
ReplyDeletespin coating