Sunday, June 16, 2013

Board affirms obviousness even when Applicant explains why primary reference does not benefit by substitution

Takeaway: The Examiner relied on a substitution rationale in rejecting claims to a vertebral disc prosthesis. The rejection replaced circumferentially oriented radiopaque markers in the primary reference with radially oriented marker from the secondary reference. The Applicant explained that the primary reference was radially symmetric, and thus has no use for radial markers. However, the Board affirmed, noting that the secondary reference used radial markers to position as well as orientation. (Ex parte De Villiers, PTAB 2013.)

Details:
Ex parte De Villiers
Appeal 2011008377; Appl. No. 11/982,431; Tech. Center 3700
Decided:  May 9, 2013

The application on appeal was directed to a prosthesis used in vertebral disc replacement. A representative claim on appeal read:
     18. An intervertebral prosthesis for insertion between adjacent vertebrae, the prosthesis comprising:
     upper and lower prosthesis plates locatable against respective vertebrae and having bearing surfaces thereon;
     a rigid preformed core located between the plates,
     the core having opposed bearing surfaces configured to cooperate with the bearing surfaces of the plates to allow the plates to slide in articulated manner over the core; and
     wherein the core is preformed with angularly spaced, radial passages and radially oriented pins located in the radial passages serving as radiographic markers.
In a Final Office Action, the Examiner rejected all the independent claims, and several dependents, as being obvious over Keller in view of Ray. According to the Examiner, Keller taught a prosthesis having the claimed plates and a core as claimed, with one difference: the radiographic marker in Keller was located in a passage extending around the circumference of the core. The Examiner then relied on Ray's teaching of a vertebral disc core for placement between adjacent vertebrae, where the core included radially oriented radiopaque markers.
Keller
Ray
In the body of the rejection, the Examiner explained the rationale for the combination as follows:
[It would have been obvious to] change the orientation of the circumferential marker/passage of Keller to a radially orientation as taught by Ray et forming preformed radial passages with radially oriented pins to allow radiographic viewing of said core to check location and orientation including radial orientation with predictable results.
On appeal, the Applicant did not dispute the Examiner's assertions about the disclosure of Keller or Ray, but instead attacked the Examiner's proffered reason to combine. First, Keller already included radiopaque markers. Second, the Office Action had provided no reason for modifying Keller to have markers that show rotational orientation of Keller's rotationally symmetric core:
   The rotational orientation of Keller's core 1 relative to it's retaining plates is irrelevant to the practitioner and patient, because the core 1 is a disc: any one angular orientation of the core is identical to any other angular orientation. [Thus,] the practitioner has absolutely no use for knowing the rotational orientation of the core. [In any event,] the exposed ends 10, 11 of the wire 9 would provide sufficient detail of the rotational orientation [under fluoroscopy].
   In stark contrast, the performance of Ray's disc nucleus prosthesis absolutely depends on its rotational orientation relative to the anatomical structures in which it is implanted. ... [T]he practitioner would have an intense need to know the rotational orientation of the prosthesis, so that it can perform its functions, e.g., "restore the natural pumping action of the disc space" [citing Ray].
In the Answer, the Examiner did not specifically address the Applicant's arguments, but instead noted similarities of the two prostheses:
Both Keller and Ray teach intervertebral prostheses for replacing an injured or malfunctioning nucleus. Both prostheses are mobile; note that the nucleus prosthesis of Ray is free to move within the disc space. Both prostheses use radiographic markers. Keller teaches, "A metal wire 9 is fitted in the groove 3, 4 is visible on X-rays and makes it possible to check the position of the sliding core 1 and to assess the articulation with the opposite bearing." Ray teaches "the spinal disc nucleus includes a radiopaque marker for indicating a location and orientation. Both Keller and Ray teach the marker is for the exact same purpose: to check position/location of the nucleus prosthesis.
The Examiner then defended his use of the substitution rationale:
 According to the MPEP [2141], this provides examplary rationale for substitution motivation, "simple substitution of one konwn element for another to obtain predictable results.". Note that the rejection is substituting the orientation and not adding additional markers as argued by  Appellant.
The Board affirmed the rejection and suggested that the Applicant had focused too much on Ray's use of markers to show rotational orientation:
While the placement of markers according to Ray may be used to define the orientation of an implant, the markers may also be used to simply define the location of the implant (FF4), which is how the markers are used in Keller (FF2). Claim 18 does not limit the use of markers to defining implant orientation. We agree with the Examiner’s rationale and adopt is as our own. KSR Int’l Co. v. Teleflex Inc ., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”)
My two cents: In this and many other cases, the Board seems to think that substitution is a reason in and of itself.  But did the Board get this one wrong? Here, the Examiner relied on a specific advantage and the Applicant explained why this was not an advantage.

More specifically, the Examiner used the benefit "check location and orientation including radial orientation" as a reason to combine. But the Applicant rebutted by asserting that POSITA had no need to check orientation, and explained why this was the case.

The Board then seemed to fall back on the reasoning that a POISTA could have substituted Ray's markers as just a different way of marking location, not orientation, relying on this statement in Ray: "the radiopaque wires 38 further provide an indication of a location of the prosthesis spinal nucleus 20 upon implant."

This statement about location seems like a red herring to me, as that wasn't really in dispute. Certainly Ray's wires show where the implant is. But many wire arrangements could perform this function. Ray's wires were radial precisely because orientation as well as location was important. Why would a POSITA modify Keller's circumferentially arranged wires – which work just fine in Keller's implant  – to use Ray's radially arranged wires – which have no use in Keller's implant.

Sometimes a nail and a screw are equivalent substitutes, as both work as a fastener. But usually there's a reason why you use a nail rather than a screw, or vice versa. Isn't that the case here? Didn't the Applicant successfully rebut the Examiner's substitution rationale?


67 comments:

  1. The Board's key finding was "While the placement of markers according to Ray may be used to define the orientation of an implant, the markers may also be used to simply define the location of the implant." However, defining the location of the implant can be obtained via the already existing wire 9 in Keller. Keller already provided the benefit supposedly provided by Ray. As described in paragraph [0022] of Keller, "A metal wire 9 fitted in the groove 3, 4 is visible on X-rays and makes it possible to check the position of the sliding core 1."

    Thus, the PTAB's analysis has devolved into it would have been obvious to substitute the marker of Keller with the marker of Ray because they did the same thing. This begs the question of why replace one with the other if all they did was the same thing?

    Put differently, as a matter of common sense, why would one skilled in the art deviate from a pre-existing design when no additional benefit is provided by the deviation? The reason why is simple – the PTAB will bend over backwards to affirm any obviousness rationale presented by an Examiner.

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    1. "Put differently, as a matter of common sense, why would one skilled in the art deviate from a pre-existing design when no additional benefit is provided by the deviation?"

      Umm, maybe because the Supreme Court is superior to the Federal Circuit?

      "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp." KSR, 550 US at 421.

      Try to keep up, JS. It's 2013.

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    2. "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp."

      6 ... try to learn the case law (hint: read the MPEP) before proceeding to make a fool out of yourself. The rational employed by the PTAB was "B" (i.e., "Simple Substitution" -- see MPEP 2143). What you are quoting is Rationale "E" (i.e., "Obvious to Try").

      What was the design need or market pressure? What was the problem? Oh wait, you cannot make any findings of fact regarding design need or market pressure. Also, the problem was already solved. Yet another patent law fail by 6.

      Try to keep up, JS. It's 2013.
      Don't worry, the PTAB/BPAI has been playing fast and loose with KSR for a long time -- nothing has changed.

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    3. Relying on the MPEP, are we? Where has the Supreme Court quoted the MPEP as the authority on patent law?

      You've established that it takes you a few days to learn a new concept. Before speaking again, read KSR (maybe for the first time). Or better yet, read a simple explanation of KSR. Maybe "KSR for dummies." In re Gordon is dead. Let go of the past. Concentrate on real ways to show non-obviousness.


      The problem was "already solved"? You serious? Try to keep anticipation and obviousness separate. Try to keep up. Give it a few days.

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    4. Where has the Supreme Court quoted the MPEP as the authority on patent law?
      If you actually opened up the MPEP, you would notice that they cite cases from both the Federal Circuit and SCOTUS. Are you saying that when the MPEP discusses the Federal Circuit and SCOTUS cases that they don't count anymore?

      You've established that it takes you a few days to learn a new concept. Before speaking again, read KSR (maybe for the first time). Or better yet, read a simple explanation of KSR. Maybe "KSR for dummies." In re Gordon is dead. Let go of the past.
      or put differently -- "blah, blah, blah." Next time, try to say something.

      Concentrate on real ways to show non-obviousness
      Which is what? I would really like to hear this one. I'm just waiting for you to tell me it was a trick question.

      The problem was "already solved"? You serious? Try to keep anticipation and obviousness separate.
      What the F are you talking about? I said nothing about anticipation. This was a 103 case -- in which the problem to be solved is usually relevant. Moreover, the "problem" to be solved is a key part of the "design need or market pressure to solve a problem," which you initially cited. Try to keep your own case cites straight.

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    5. And here I thought you were educable, but just a little slow. Ok, do it your way. In the fullness of time you'll find that the "why replace one with the other if all they did was the same thing?" approach won't get you anywhere with the PTAB, Fed. Cir., or USSC. If it works on a newby examiner, more's the pity. It'll just take you that much longer to understand the law.

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    6. In the fullness of time you'll find that the "why replace one with the other if all they did was the same thing?" approach won't get you anywhere with the PTAB, Fed. Cir., or USSC
      Oh really?

      Thus, we find the problem proffered by the Examiner is already solved by Savill. We note that the U.S. Supreme Court recently reaffirmed that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of argument reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d at 1397. See also Graham v. John Deere Co., 383 U.S. at 36, 148 USPQ at 474. Nevertheless, in KSR the Supreme Court also qualified the issue of hindsight by stating that “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d at 1397. In the instant case, we conclude that a person of ordinary skill in the art having common sense at the time of the invention would not have reasonably looked to Wu to solve a problem already solved by Savill. Therefore, we agree with Appellants that the Examiner has impermissibly used the instant claims as a guide or roadmap in formulating the rejection. Ex parte Rinkevich

      When you are replacing one piece for another piece that has the same function -- you are NOT solving any problem, you are NOT improving anything. You are making a modification solely for the sake of making a modification -- if this was "obvious" pusuant to 35 USC 103, then everything would be obvious. Sure, it fits with the USPTO motto of "everything is obvious," but has no basis in either case law or common sense. Of course, you are welcome to prove me wrong, but you have NEVER been up to that challenge.

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    7. Ex parte Rinkevich?

      How convenient. JS left out the Examiner's rationale for the combination.

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    8. This was an interesting case also:

      http://americanipa.wordpress.com/2012/09/17/another-argument-against-obviousness/

      Looks like the argument might get you somewhere with a USDC J.

      Thomas

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    9. "How convenient. JS left out the Examiner's rationale for the combination."

      The Board said the examiner's "rationale for the combination" was, essentially, bullsh!t hindsight reconstruction of the claimed invention. Not really all that inconvenient to leave it out of JS's post.

      Thomas

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    10. "This was an interesting case also:"

      Don't keep us in suspense. What does the case have to do with In re Gordon, KSR, and the cluelessness of "why replace one with the other if all they did was the same thing??

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    11. So, why did you leave the Examiner's rationale out, too, Pain?

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    12. "Don't keep us in suspense."

      Not sure there is any "suspense" to be kept in. When the examiner's "rationale" for combining Ref. A with Ref. B is to solve a problem that Ref. A already solves, there seems to be near unanimous agreement amongst people who actually understand the law that such a "rationale for combination" is made up bullsh!t.

      "So, why did you leave the Examiner's rationale out, too, Pain?"

      Answered immediately above.

      Thomas

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    13. “Because each device independently operates effectively, a person having ordinary skill in the art, who was merely seeking to create a better device to drain fluids from a wound, would have no reason to combine the features of both devices into a single device.”

      "When the examiner's "rationale" for combining Ref. A with Ref. B is to solve a problem that Ref. A already solves, there seems to be near unanimous agreement amongst people who actually understand the law that such a "rationale for combination" is made up bullsh!t."

      So, what does "no reason to combine the features of both devices into a single device" have to do with "combining Ref. A with Ref. B to solve a problem that Ref. A already solves."?

      The suspense is killing us, Pain. Where did the Examiner say it would have been obvious to keep both markers of Keller and Ray? I see, just change the facts if they don't fit your pontifications on the law.

      And by the way, neither of the above was the Examiner's rationale in the Rinkevich case. Why can't you say what it was?

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    14. "I see, just change the facts if they don't fit your pontifications on the law."

      Lulz. That's pretty funny coming from you, 6tard. We're all in suspense waiting for you to explain the relevance of that "design need or market pressure" qoute from KSR. Oh I see, just pull random quotes form prior court decisions and paste them into your OA/internet post.

      BTW, I said the case was interesting, not that it was exactly on point. Your reading comprehension still s#cks. But it still matches your writing ability.

      "And by the way, neither of the above was the Examiner's rationale in the Rinkevich case. Why can't you say what it was?"

      Not sure why you're so hung up on this. But from the examiner's answer in In re Rinkevich, page 5, second full paragraph, "It would have been obvious to...combine the teaching of Wu within the system of Savil because (a) Wu's reference resolves the problem presented by Savil to avoid logoff existing user application account prior to logon to a new user application account (Savil: Page 1 Line 4)..."

      And the Board found that "the problem proffered by the Examiner is already solved by Savill" on page 9, lines 7-8, of their decision. In other words, the examiner's "rationale" was bullsh!t. Exactly like JS pointed out.

      Are you still in suspense?

      Thomas


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    15. No longer in suspense, Pain. You didn't actually read Ex parte Rinkevich. And you don't deny changing the facts to suit your pontifications. And I agree, unreservedly, that your pontifications are not exactly "on point," as you put it.

      KSR is an interesting case, too. Maybe read it sometime. Or get the Cliff notes. Or maybe JS can explain to you in a few days what KSR says about obvious substitutions.

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    16. "And you don't deny changing the facts to suit your pontifications."

      Lulz. Classic examiner nonsense. I cited that USDC as being of interest. I didn't need to "change the facts to suit my pontifications" as I never alleged that the facts were on point, or that the case had, or would have, any persuasive effect on the appeal Karen posted about.

      I read enough of Rinkevich to understand that Board found the examiner's "rationale for the combination" to be bullsh!t. If you think the Board got it wrong, you can attempt an explanation. Otherwise you're just bloviating, incorrectly by the way, that neither JS nor I can say what the examiner's rationale was. We've both said what it was. And we've both noted that the Board found the rationale to be bullsh!t.

      I've read KSR numerous times. And I actually cite that "design need or market pressure" quote you used above quite often when I'm slamming examiner's for making up bullsh!t reasons to combine. I probably cite KSR to the examiners as often as they cite it to me. The difference of course is that I actually understand the case. It's clear from your postings that you don't.

      Thomas

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    17. Pain, sorry if I misunderstood whatever point you thought you were trying to make. But I have still have no idea what it is you think you're saying. Except the "not exactly on point" part.

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    18. Or maybe JS can explain to you in a few days what KSR says about obvious substitutions.
      .... or maybe 6 can tell us what kind of findings are necessary to use the different rationales described in KSR. The MPEP lays this all out ... all based upon different case law.

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  2. "In this and many other cases, the Board seems to think that substitution is a reason in and of itself."

    99+% of examiners think that, and a sizable majority of the APJ's think that.

    Just saying, you are wasting your time with 6tard. He doesn't understand evidence, facts, law, precedence, etc. Never has, never will.

    ThomasPaine

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    1. He doesn't understand evidence, facts, law, precedence, etc. Never has, never will.
      Oh ... I know that. However, he is a good tool (pun intended) through which I can present my POV.

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  3. 6tard reminds me of Susan Sarandon's character Annie Savoy (I think that was her name) from "Bull Durham." Crash tells her that she's got it all wrong about what he (Crash) told Nuke about his winning streak and she quotes William Blake, and then just repeats "William Blake" over and over as if it proves her point, or even means anything at all. "I mean William Blake." Lulz.

    Great movie.

    Thomas

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  4. "The Examiner then defended his use of the substitution rationale:
    According to the MPEP [2141], this provides examplary rationale for substitution motivation, "simple substitution of one konwn element for another to obtain predictable results."."

    Where is the Examiner's finding of fact that the results were predictable or that they were even obtainable in this situation?

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    1. "Where is the Examiner's finding of fact that the results were predictable or that they were even obtainable in this situation?"

      Lulz. 6tard can tell you that anything an examiner types into an OA is a finding of fact simply by virtue of it being typed into an OA by an examiner. A lot of APJ's will tell you the same thing.

      6tard thinks that all that's necessary to make a rejection under 103 is to pull some KSR quote out of his arse and paste it into his OA. Ditto with a lot of APJ's. What is this "design need" or "market pressure" that the combination supposedly addresses, and what evidence is supplied to establish it? In about 999 out of 1,000 103 rejections the answer is none. Just conclusory bullsh!t. Exactly like what 6tard has supplied here.

      So what are these "design needs" and "market pressures" that the combination in this case would have addressed, 6tard? Please enlighten us all.

      Thomas

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    2. >Where is Examiner's finding of fact that the results were
      >predictable or even obtainable?

      So what does "predictable results" mean in this context? What are the "results" here?

      That using radial markers in Keller's prosthesis results in the prosthesis being visible to x-ray? That using radial markers in Keller's prosthesis results in a doctor being able to locate the prosthesis under x-ray? That using radial markers in Kelller's prosthesis results in a doctor being able to see orientation as well as position under x-ray?

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  5. Actually, the key quote from KSR is the following: "rejections on obviousness grounds cannot be sustained by merely conclusory statements; instead there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." What is oftentimes missing is the rational underpinning ... i.e., making sh1t up just doesn't cut it.

    Unfortunately many Examiners and APJs merely think that writing the magic words "simple substitution" and "predictable results" are enough. These are people who are either willfully ignorant or wouldn't make it 30 days in a real law practice.

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    1. So, JS, reference A does it this way. Reference B does it this way. Same result. Both predictable. References tell you what happens. Right there in black and white. What more do you want, exactly? Think about it a few days.

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    2. What is the rational underpinning for the substitution? I.e., why would one having ordinary skill in the art substitute one feature for another feature?

      BTW ... 6, you should research what the "predictable results" came from -- I don't think it means what you think it means.

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    3. You should have thought about it longer, JS. The rational underpinning is right there in black and white.

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    4. "The rational underpinning is right there in black and white."

      Are you referring to this post of yours? "So, JS, reference A does it this way. Reference B does it this way. Same result. Both predictable. References tell you what happens." That's not an articulated reasoning with rational underpinning for combining references.

      Maybe try again.

      Thomas

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    5. 6 writes: "The rational underpinning is right there in black and white."

      what 6 means is "I don't know where the rational underpinning is so I'll just throw out some BS response."

      Read my KSR cite again ... the Supreme Court talks about an articulated reasoning with some rational underpinning. Just because you can articulate a reasoning doesn't mean there is a rational underpinning for that reasoning.

      Regardless keep flailing away and saying nothing in your responses -- you aren't fooling anybody (except perhaps yourself).

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    6. So, JS, I ask again. What more do you want, exactly? Don't say "rational underpinning" or "rational underpants" or some other trite phrase. Give a concrete example of what would work for you. Take your time.

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    7. So what does "predictable results" mean in this context? What are the "results" here?

      That using radial markers in Keller's prosthesis results in the prosthesis being visible to x-ray? That using radial markers in Keller's prosthesis results in a doctor being able to locate the prosthesis under x-ray? That using radial markers in Kelller's prosthesis results in a doctor being able to see orientation as well as position under x-ray?

      Delete
  6. "What more do you want, exactly?"

    Uhm, maybe an articulated reasoning with rational underpinning as to why one of ordinary skill in the art, who is aware of all relevant prior art but does not seek to innovate, would combine the references. Can you provide that?

    Thanks.

    Thomas

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    1. Making a career of being "not exactly" on point, Pain? Topic is "simple substitution" and "predictable results."

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    2. You still have to have an articulated reasoning with rational underpinning as to why one of ordinary skill in the art, who again is somebody who knows the relevant prior art but does not seek to innovate, would make the simple substitution. Any time you want to provide that articulated reasoning in the case Karen posted, please feel free to do so. Please don't keep us in suspense.

      Maybe go read In re Scott, 323 F.2d 1016, 139 USPQ 297 (CCPA 1963).

      Thomas

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    3. BTW, feel free to also provide some design need and/or market pressure, and some evidence in support thereof, for your reliance on that quote from KSR.

      Thanks.

      Thomas

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    4. Try to stay on point, Pain. "Simple substitution" and "predictable results" relates more to KSR's discussion of what results from the predictable use of prior art elements according to their established functions. You say you've read KSR? Or only 50 year old CCPA cases? Why not cite In re Gordon? At least it's more recent.

      Delete
    5. I'm exactly on point. "Simple substitution" is not an articulated reasoning with rational underpinning for combining references.

      "Or only 50 year old CCPA cases? Why not cite In re Gordon?"

      Are you referring to In re Gordon from the Fed. Cir. in 1984? If so, what is the relevance of that case to the case Karen posted about?

      "At least it's more recent."

      In re Scott is as precedential as In re Gordon.

      Thomas

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    6. "In re Scott is as precedential as In re Gordon."

      Finally, exactly on point. Both subrogated by KSR.

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    7. Subrogated? Lulz. You have no idea what that word means.

      Why don't you Shepardize In re Gordon and In re Scott and report back to us the results.

      Thanks.

      Thomas

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    8. "Lulz. You have no idea what that word means."

      I think it has something to do with laughing out loud.

      Can you make a good living at being "not exactly" on point?

      Delete
    9. Finally, exactly on point. Both subrogated by KSR.

      6 doesn't realize that the only effect KSR had on the old cases is to say that the TSM test isn't the only test. Thus, when old cases discuss what is required to make a certain finding, they are still good law.

      Delete
    10. Got it. In re Fox (CCPA) still good law.

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    11. Got it. In re Fox (CCPA) still good law.
      See what Thomas wrote below. While Gordon/Scott is not inconsistent with KSR, Fox is inconsistent with Zurko.

      This is what separates those that understand law and precedent and those that dabble -- the ability to read different cases and understand what cases are still good law and what cases are not. Personally, I don't find it to be that hard -- then again, 3 years of law school did help.

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    12. So, JS, I ask again. What more do you want, exactly? Don't say "rational underpinning" or "rational underpants" or some other trite phrase. Give a concrete example of what would work for you. Take all the time you need.

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    13. Lay off of JS. Last time, it took him 5 days to wrap his brain around a concept. It's only been 2 days.

      Delete
    14. "then again, 3 years of law school did help."

      Explains a lot. Most of the people I work with did it in 2.

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    15. "Explains a lot. Most of the people I work with did it in 2."

      I doubt there's a single ABA accredited law school that you could graduate from in 2 years. Given the requirements of generally about 84-88 credites for a degree, the residency requirements, and the limits on credits even full time students can take in a semester, even assuming you max out summer school credits in lieu of taking a summer associate position, the quickest you can graduate is 2.5 years.

      Of course, you can't ever graduate from law school if you can't even get in.

      Lulz

      Thomas

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    16. I doubt there's a single ABA accredited law school that you could graduate from in 2 years.

      6's ignorance shows ever time he types something on this blog (or any other blog). He has no idea how hard law school can be ... at least to get decent grades. I worker far harder in law school than I did engineering school.

      Law school in 2 years? The people he is probably working with are paralegals -- not attorneys.

      Delete
    17. If it were possible to finish law school in 2 years, nobody who did it would be working at the PTO.

      Thomas

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  7. "Can you make a good living at being 'not exactly' on point?"

    Yes. In fact, you can make a great living at it.

    Unfortunately, you have a long way to go from non-sequiturville to not exactly on point. Keep plugging away though, you may actually get there some day. You can work on that while Shepardizing the subrogation of In re Scott and In re Gordon with KSR.

    Keep the laughs coming. I am enjoying them.

    Thomas

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    1. In re Scott, Pain? Really? Ok. I'll Shepardize In re Scott in due course. When you explain and accept the "precedential" CCPA case of In re Fox. The Examiner CITED NO PRIOR ART and rejected under 35 usc 103 for the reason that THE INVENTION WOULD HAVE BEEN OBVIOUS to those of ordinary skill in the art at the time it was made IN VIEW OF PRACTICES SO WELL KNOWN THAT JUDICIAL NOTICE MAY BE TAKEN thereof.

      AFFIRMED.

      Try to explain why the "precedential" case is not controlling, without being non-exactly on point, so much.

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    2. Try to explain why the "precedential" case is not controlling, without being non-exactly on point, so much.

      Zurko -- like shooting fish in a barrel.

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    3. I've read all the Zurkos -- none even mention In re Fox. As KSR does not mention In re Scott.

      You are correct -- like shooting fish in a barrel.

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    4. "Try to explain why the 'precedential' case is not controlling, without being non-exactly on point, so much."

      I haven't Shepardized In re Fox, but as far as I know it hasn't been overruled, either expressly or sub silentio, by any decision of the CCPA or Fed. Cir. Or SCOTUS.

      Not sure what you want to me "explain" as to In re Fox not being "controlling." Controlling as to what? The case Karen posted about. I don't see any similarity in the facts of In re Fox and the case Karen posted about that would make me believe that In re Fox had any binding, or even persuasive, precedential value to the case Karen posted. In Fox, the examiner rejected the claims as obvious from the admitted prior art, the Board affirmed, taking judicial notice of some additional facts, and the CCPA affirmed. Pretty garden variety case as far as I can see.

      "I've read all the Zurkos -- none even mention In re Fox. As KSR does not mention In re Scott."

      It's very clear that you have absolutely no understanding of the way precedent in a common law system works.

      CCPA decisions are binding on the Fed. Cir. as precedent, and a panel of the Fed. Cir. cannot expressly overrule CCPA precedent (as the Fed. Cir. adopted the CCPA's decisions as binding precedent when the court was formed in 1982). Only the en banc Fed. Cir. can expressly overrule prior CCPA precedent.

      Of course, you're always free to argue that a more recent precedent overruled sub silentio (or subrogated apparently in your parlance) an older precedent, but that's a tough argument to make and have a judge accept it clearly on the written record. A judge may agree with you, but it's highly unlikely that the judge will write his/her acceptance into the decision, instead finding some other way to accept your argument and phrase the decision so that it doesn't appear that the judge is expressly overruling the older precedent (which of course trial court judges cannot do, and as I explained above panels of appellate judges at the Fed. Cir. cannot do).

      If you're trying to argue that KSR overruled sub silentio In re Scott, you're doing a really lousy job of it. There's nothing in the facts and holding of In re Scott that's at odds with the decision in KSR.

      Thomas

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    5. BTW, JS's arguments that In re Fox has been overruled sub silentio by Zurko is fairly convincing. Prior to Zurko, Board hand waving as to what was "commonly known" or "common sense" was pretty much pro forma affirmed by the CCPA, and then the Fed. Cir. After Zurko such affirmances would clearly receive more scrutiny from the court.

      Thomas

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    6. Good. Very good. Your understanding of the law is evolving. You admit that lower court decisions can be overruled sub silentio by USSC decisions. Soon, you'll admit that cases like Dembiczak can be abrogated by cases like Gartside. Soon, maybe soon, maybe not so soon (there's that "not exactly" problem you have) you will understand that cases can be abrogated without some court connecting the dots for you.

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    7. Not Exactly On Point Pain pontificated, "Of course, you're always free to argue that a more recent precedent overruled sub silentio (or subrogated apparently in your parlance) an older precedent."

      Somebody tell him that the earlier CAFC panel decision controls over a later CAFC panel decision. Please.

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    8. "Your understanding of the law is evolving."

      Lulz. I'll take that as high praise coming from somebody who talks about precedent being subrogated, er, uhm, ah, I mean abrogated. Figured that out all on your own huh? Congratulations. Please do keep evolving.

      "Somebody tell him that the earlier CAFC panel decision controls over a later CAFC panel decision."

      Wrong. Appellate court panels are not bound by earlier panel decisions. That's why confusion, and sometime outright conflict, develops in an appellate court's precedent. It is then resolved by en banc decisions. Think Dana, Philips, etc.

      The sheer depth of your ignorance is stunning. What's even more stunning though is your apparent pathological need to flaunt your ignorance and embarass yourself day in and day out, even if only anonymously. Please do all of us, but more importantly yourself, a favor and get some help.

      Good luck.

      Thomas

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  8. Not Exactly On Point And Frequently Wrong Pain Confirmed To The World His Ignorance Of The Law By Pontificating:

    "Wrong. Appellate court panels are not bound by earlier panel decisions. That's why confusion, and sometime outright conflict, develops in an appellate court's precedent. It is then resolved by en banc decisions. Think Dana, Philips, etc."

    "This court has adopted the rule that prior decisions of a panel of the court are binding precedent on subsequent panels unless and until overturned in banc. See UMC Elecs. Co. v. United States, 816 F.2d 647, 652 n. 6, 2 USPQ2d 1465, 1468 n. 6 (errata) (Fed.Cir.1987), cert. denied, 484 U.S. 1025, 108 S.Ct. 748, 98 L.Ed.2d 761 (1988). Where there is direct conflict, the precedential decision is the first." Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed. Cir. 1988).

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  9. "Where there is direct conflict..."

    If later panels are bound by earlier panels, how can their decisions ever be in conflict?

    Think about it.

    Thomas

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    1. And Then Underscored His Ignorance To The Universe By Trying:

      "If later panels are bound by earlier panels, how can their decisions ever be in conflict?

      Think about it."

      No need for those of at least normal intelligence to "Think about it," Pain. It's right there in black and white. Where there is direct conflict, the precedential decision is the first. Think about it this way. When there is direct conflict, the precedential decision is the first.

      Never say die, Pain. You are ... amazing. Not in a good way. But in an amusing way.

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    2. "No need for those of at least normal intelligence to 'Think about it,' Pain. It's right there in black and white. Where there is direct conflict, the precedential decision is the first. Think about it this way. When there is direct conflict, the precedential decision is the first."

      That's nice, but that's not the question I asked. Very typical examiner tactic. State another question entirely and then answer that question. It works to get your .25 counts for a FR, but not really anywhere else. Not even on this blog.

      I didn't ask, "if there's a direct conflict which is the controlling precdent?" I asked, "If later panels are bound by earlier panels, how can their decisions ever be in conflict?"

      If you'd thought about it, which you clearly didn't, but then again you are examiner so we can't expect too much, you'd have figured out that the only way there can be a "direct conflict" between an earlier precedent and a later precedent is if the panel in the later precedent didn't follow the earlier precedent, i.e. didn't abide by the court's own rule. Appellate court judges are, even more so than examiners, result oriented. They decide the result they want and then write whatever they have to write to obtain the result, stare decisis, adopted court rules, etc. be d#mned.

      Here's an idea for you, the next time you find yourself arguing at the Fed. Cir. (lulz), cite some prior precedential panel decision to the panel you're arguing in front of and remind them that by their own rules their bound to follow it. Let us know how far that gets you.

      Thomas

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  10. Your faith in the lip service appellate court judges pay to their own rules is kinda cute. Naive, for sure, but kinda cute.

    Tell us, Mr. Itsrightthereinblackandwhite, what is the controlling Fed. Cir. precedent for whether the following claim recites patent eligible subject matter.

    1. A data processing system to enable the exchange of an obligation between parties, the system comprising: a data storage unit having stored therein information about a shadow credit record and shadow debit record for a party, independent from a credit record and debit record maintained by an exchange institution; and a computer, coupled to said data storage unit, that is configured to (a) receive a transaction; (b) electronically adjust said shadow credit record and/or said shadow debit record in order to effect an exchange obligation arising from said transaction, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and (c) generate an instruction to said exchange institution at the end of a period of time to adjust said credit record and/or said debit record in accordance with the adjustment of said shadow credit record and/or said shadow debit record, wherein said instruction being an irrevocable, time invariant obligation placed on said exchange institution.

    I'm sure your answer will be most enlightening.

    Thomas

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    1. You are . . . amazing.

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    2. So you can't answer the question? You coulda just said so.

      Thomas

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