Friday, November 4, 2011

BPAI finds Examiner improperly shifted the burden to Patentee to show date that material was added to standards document

Takeaway: In an inter partes reexamination proceeding, the Examiner relied on a product safety standard (UL 588) as a reference. The standard included several different copyright dates, the latest of which was in 2001, after the Patentee's effective filing date. The Examiner took the position that the post-filing date was "only the most recent update to otherwise older prior art content" and that "the entire contents of this reference clearly did not first appear in August 2000. The UL reference therefore cannot be dismissed as available prior art." The BPAI reversed, finding that the Examiner had improperly shifted the burden to the Patentee to show when the material relied upon by the Examiner was added to the standard.(Fiber Optic Designs v. Seasonal Specialties, BPAI 2011.)


Fiber Optic Designs v. Seasonal Specialties
Appeal 2011007195; Reexam. No. 95/000,137; Tech. Center 3900
Decided  July 29, 2011

This inter partes reexamination involved strings of LED lights. The Patentee appealed a number of prior rejections, including an obviousness rejection that used a product safety standard published by Underwriters Laboratory (UL), referred to as "UL 588." ("Standard for Safety for Seasonal/Holiday Decorative Products, Eighteenth Edition). UL 588 included several different copyright dates, including 1921, 1974, and 2001.

The effective filing date of the patent was in 1999. Thus, material in UL 588 dating back to 1921 or 1974 was properly prior art, but material with a date of 2001 was not prior art. The obvious rejection relied on a particular figure, Figure 7.2, which illustrated a set of LED lights connected in parallel.

Before appeal, the Examiner explained why Figure 7.2 of UL 588 was properly prior art, as follows:
The sixth page' of UL Standard 588 refers to "Copyright 1974" which indicates the presence of content within the standard dating back more than 20 years to 1974. Additional references on this page indicate that content in the standard date back to the year 1921. The date of August 21, 2000 and the Fig. 7.2 from this reference, showing nothing more than parallel light connections cannot be dismissed as having first been taught in August 2000. The UL reference is therefore retained as available prior art.

In response, the  Patentee argued that the publication date for Figure 7.2 could not be 1921 or 1974 because "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974, much less 1921." The Patentee offered several types of evidence to support the argument. One such piece of evidence was a Request for Comments (RFC) document which described the purpose of the UL 588 Standard. The RFC contained this statement:
The requirements in the Standard for Seasonal and Holiday Decorative Products, UL 588, were developed prior to the existence of light-emitting diode (LED) lamps and based on recent submittal of these products it has been determined that the requirements need to be revised to reflect this new technology.

Thus, according to the Patentee, "clearly this Underwriters Laboratories document shows that the UL Standard 588 cannot and does not disclose LED standards dating before August 1998 because the LEDs at issue did not exist in 1974 or prior to 2000."

As additional evidence as to why the LEDs discussed in UL 588 dated back to 2002 rather than 1974 or 1921, the Patentee offered declarations describing the UL approval process for the Patentee's LED light string product:
Patentee submitted its product for UL approval in 1999 and received UL approval in March 2001. Exhibit 2, David R. Allen Decl., 7 2. Exhibit 2 provides additional evidence that the invention of the '358 patent is new and non-obvious since even Underwriters Laboratories  recognized that LEDs used in seasonal lighting products were "new technology" in 2001 several years after the invention of the 758 Patent. Indeed, when the Patentee submitted the invention for approval to Underwriters Laboratories, UL tested this patented product as a "new and unusual'' product. Exhibit 2, David R. Allen Decl., 11.2. UL polled its offices worldwide and concluded that none of its employees had ever tested a product similar to the invention. Id.

In summary, the Patentee argued that the Examiner erred in relying on a date of 1974 for Figure 7.2 of UL 588.

On appeal, the Board found that the Examiner had improperly shifted the burden to the Patentee to show that the relied upon portion of the document was not prior art.
The page bearing Figure 7.2 lists a date of August 21, 2000. The Examiner‟s attempt to shift the burden to Appellant to show when Figure 7.2 was added as an update to UL Standard 588 under these facts is improper. It would constitute speculation to determine such a date. See In re Lister, 583 F.3d 1307, 1317 (2009) (“We surely would not view the mere existence of the reference . . . as prima facie evidence that it was available prior to the applicant‟s critical date.”).

Because the Examiner had not made a prima facie showing that the reference was prior art, the Board did not reach the issue of whether the Patentee's rebuttal evidence was convincing.

My two cents: A good illustration of how to handle a scenario where the Examiner relies on a copyright date as the publication date of a reference.

Seems like the Examiner was really overreaching here, since the particular page relied on (Figure 7.2) had its own date of August 21, 2000, a date after Patentee's effective filing date. So doesn't this, by itself, say that the Examiner had not made a prima facie case that Fig. 7.2 was prior art?

The Patentee's statement that "the LED lights as set forth in [Patentee's] '754 patent did not even exist in 1974" needed some sort of evidentiary foundation, since the basic LED was invented in the 1960's. The Patentee lucked out in finding a standards-related document which stated that the standards were developed before decorative LED light strings and were then updated to cover LED strings. Without this type of document, the Patentee could maybe offer evidence dicussing the history of LED products, showing when LED holiday lights became commercially available. The Patentee's evidence showing their product was UL tested as a "new and unusual product" was an interesting way of getting to the same conclusion.


  1. I've had a similar battle over a copyright date in a software user manual for a piece of Microsoft software. I was ready to go to appeal on it, but the client caved and we amended instead. I would have loved to have had this case then - or to have established the case law for this case. :-)

  2. Considering that the CRU is supposed to be the PTO's best and brightest, this is a pretty d#mning indictment of their "understanding" of a rather basic evidentiary standard. If the PTO is going to maintain this group, they need to give them some serious training in evidence and administrative law. When the general level of understanding of these concepts is no better than 6tard's ("The reference is prior art because I typed a statement on the record and therefore that's evidence that it's prior art"), there's a serious problem over there. It's even worse when you consider that all of these re-exams are being handled by teams of three. All three of the examiners are this ignorant? Not even one of them understands the burden and the evidentiary showing required to shift it?

    Send them all back to regular examining. This experiment is a failure.

  3. This is a pattern I see often. Examiner's are quick to provide arguments but are slow or unable to provide evidence. This is why I like to use 1.132 affidavits. They are so often not rebutted properly by Examiners.

  4. I wouldn't even characterize the nonsense examiners provide as "argument," it is most often conclusory bullsh!t, e.g. the examiner's "argument" regarding Fig. 7.2 of the reference. No evidence, no analysis, nothing.

    Argument is reasoning from facts that are demonstrably supported by evidence. As 99.9% of the examining corps, including the CRU, has zero understanding of evidence most of the "argument" you get from them is nothing but conclusory statements.

  5. I'm beginning to think that I should file a petition to invoke supervisory review every time I get something stupid like this from the Examiner. In response to an argument made in a reply that the entirety of the reference showed that a particular feature did not exist as set forth by the Examiner, the Examiner replied that the reference showed the CONCEPT of the particular feature and the Examiner was not relying on the actual structure disclosed by the reference.

  6. >file a petition to invoke supervisory review
    >every time I get something stupid like this
    >from the Examiner.

    I hear you. I think that most folks don't file petitions because the decisions aren't timely - which means you can't rely on the petition alone to take care of the problem. And of course a petition takes time to prepare, and clients may not be willing to pay for this.

    OTOH, if you make petitions a regular part of your practice, the experience you get should lead to reduced costs. And if you make a point to scan the OA as soon as it comes it and file the petition immediately, maybe a portion of them will be decided soon enough to make a difference. So I can see "petition early and often" as a strategy appropriate for some clients.

  7. I often offer to write petitions for free, just for the personal satisfaction of not letting examiners get away with bullying my client.

  8. "No inference should be made from the facts of record in favor of the Office Action when other reasonable conclusions are possible. In re Carreira, 189 USPQ 461, 463 (CCPA 1976)."

    An oldie but a goodie.