Details:
Ex parte Rasmussen
Appeal 2011012484; Appl. No. 11/998,532; Tech. Center 3700
Decided: July 31, 2013
The application on appeal was directed to an aortic implant. A representative independent claim on appeal read:
1. An aortic implant includingOne of the dependent claims on appeal read:
a graft portion,
a corrugated portion integral with and extending from the graft portion, and
a fixing ring substantially at the junction between the graft and corrugated portions, the fixing ring providing a volume into which fixing sutures can be made to pass.
6. An implant according to claim 1,wherein the fixing ring is made of a foam, rubber, or rubber like material.The Examiner rejected all claims as being obvious over a combination of two references, and maintained the rejection in a Final Office Action. The Applicant appealed, and argued several dependent claims for the first time.
In arguing dependent claim 6, the Applicant first noted that the Examiner had characterized the secondary reference, Brauker, as teaching that PTFE was a rubber like material. However, according to the Applicant, the Examiner's assertion was made "without any support," and "[this] disclosure is simply not present in either of the references."
The Examiner's Answer maintained the rejections. With respect to dependent claim 6, the Examiner noted that the Applicant's specification had no description of term "rubber like material". The Examiner then asserted that "PTFE is a flexible, stretchable material and is considered to be 'rubber like'."
The Applicant filed a Reply Brief to respond to this new information.
A person of ordinary skill in the art would understand the term "rubber like material" to have its common ordinary meaning. Merriam Websters 10th ed. defines rubber-like as "resembling rubber esp. in physical properties." The Examiner has not shown that any of the materials upon which he relies are rubber-like.The Board affirmed the rejection of dependent claim 6:
The Examiner made a reasonable finding that PTFE is a rubber like material (Ans.6). Having done so, Appellants have the burden of showing that it is not. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellants provide no evidence to establish that PTFE would not have been considered a rubber like material to a person of ordinary skill in the art.My two cents: The Board got this one wrong. Certainly in the Final rejection, the Examiner's "finding" was nothing more than a naked assertion. In the Answer, the Examiner provided a little more explanation of his thinking, which amounted to a claim construction for rubber-like ("flexible, stretchable") and a naked assertion that PTFE was flexible and stretchable.
So, there are actually two issues going to the PTAB: was the claim construction reasonable; and if so, did the Examiner provide enough technical reasoning to support his determination that PTFE possessed these characteristics.
The Applicant gave his own definition of "rubber-like" in the Appeal Brief – but not a particularly helpful one. The Applicant could have gone farther and gone on record with what those properties were. Sometimes the best way to beat the Examiner's unreasonable interpretation is to offer a reasonable one.
But let's assume that "rubber-like" is properly understood as "flexible, stretchable." The Board characterized this as a burden-shifting issue, stating the Examiner's assertions about the properties of Teflon® were enough to shift the burden to the Applicant.Yet the MPEP requires the Examiner to "provide a basis in fact and/or technical reasoning to reasonably support the determination [of an inherent characteristic]." (MPEP 2112.IV.) No such reasoning appears in the record.
If the Examiner had made the bare assertion that Teflon was "slippery" or "low-friction," I doubt I'd be blogging about this case. Sure, you could make arguments about burden shifting, no evidence, bare assertion, etc. But the truth is, once you know that the material in question is Teflon®, you also know it's slippery. That's probably common knowlege, worthy of Official Notice.
But the Examiner made the much more questionable statement that PTFE was "flexible, stretchable". That's not my everday experience with the Teflon® coating on my pan. And the Wikpedia article I read on the subject didn't mention these properties. So I say that before the burden shifts to the Applicant, the Examiner must provide a better explanation of exactly why a POSITA would consider Teflon® to be flexible and/or stretchable.
That said, I'm not sure I would appeal on the buden shifting issue alone. Instead, I'd consider putting my own evidence in the record about the properties of Teflon®. Probably not as far as an expert testifying that Teflon® was not flexible and/or stretchable. But how about some information about Teflon® from a materials science encylopedia, and then an argument that the evidence did not describe the material as having these properties?
<< ... I'd consider putting my own evidence in the record about the properties of Teflon®. Probably not as far as an expert testifying ... >>>
ReplyDeleteWhy would you hesitate using expert testimony? Is it because the extra cost does not justify the extra strength of the argument, or are there too many risks in using expert testimony that you avoid doing it for this reason?
To me, this boils down to a question of fact: is Teflon flexible/stretchable or not? Easily answered, on the cheap, by published reference materials, with no need to resort to an expert opinion.
ReplyDeleteI'm not particular worried about using expert declarations, though I know some folks who are concerned that decs expose you to Inequitable Conduct charges if the patent is asserted. In fact, I had a guest post on a district court case in which this came up:
http://allthingspros.blogspot.com/2012/11/guest-post-cautionary-tale-relating-to.html
Frankly, I'm surprised the Examiner didn't reject "rubber like" under 112 as being an indefinite term, even if the Applicant explained what was meant by the term since so many Examiners knee-jerk reject any "___-like" term.
ReplyDeleteBecause of its chemical inertness, PTFE cannot be cross-linked like an elastomer. Therefore, it has no "memory" and is subject to creep. This is advantageous when used as a seal, because the material creeps a small amount to conform to the mating surface.
ReplyDeletehttp://en.wikipedia.org/wiki/Polytetrafluoroethylene
http://en.wikipedia.org/wiki/Young's_modulus
Doesn't seem "rubber-like" to me -- and it took one unskilled in the art a few minutes to find this information. There may be an obviousness rejection to make. However, on the facts, Teflon is not "rubber-like."
Regardless, the gross error on the part of the Board was failure to recognize that findings of fact must be based upon substantial evidence. A blanket assertion by the examiner does not constitute substantial evidence -- not even close.
No substantial evidence = no finding of fact = no prima facie case made = no burden shifting. Why does the Board continually have so much trouble with these administrative law concepts?
The lesson to take from this is the following -- the Board will frequently believe ANYTHING stated by an examiner, no matter how wrong it seems. As such, don't rely upon the Board getting seemingly simple facts right -- you better provide evidence of your own (even though the burden should have never shifted). Fundamentally, it is unfair to Appellants and not consistent with administrative law, but that is the way the Board operates.
The opinion is pretty bad, overall. The ALJ uses quasi-legal phraseology throughout, but never addresses any of the disputed issues head-on. For instance, the opinion states that the examiner made a "reasonable finding" that Teflon is rubber-like. What the heck is that? The opinion also states, in addressing a 103 rejection, that the examiner "provided a rational basis for the proposed modifications," and follows up with "The motivation in the prior art to combine the references does not have to be identical to that of Appellants to establish obviousness." Not only is that a non-sequitur, in view of the Appellant's arguments, it's also kind of an obsolete rule of law, given KSR. This ALJ doesn't know what he's doing, in my humble opinion.
ReplyDelete"The Board got this one wrong. Certainly in the Final rejection, the Examiner's "finding" was nothing more than a naked assertion. In the Answer, the Examiner provided a little more explanation of his thinking, which amounted to a claim construction for rubber-like ("flexible, stretchable") and a naked assertion that PTFE was flexible and stretchable."
ReplyDeleteWould it make you happy if they took official notice of the flexible and stretchable characteristics of the teflon?
Note the top two on the young's modulus list:
http://en.wikipedia.org/wiki/Young%27s_modulus
Or check it's young's modulus here:
http://en.wikipedia.org/wiki/Polytetrafluoroethylene
See, here's the thing, your lawlyerly ignorance of common properties of common materials doesn't make the office need to make an official factual finding for every last property of routinely used polymers. The fact that Teflon was used is the fact found, and it is supported by substantial evidence. The claim construction is an issue of lawl, not fact.
http://www.hbsr.com/news_events/251-federal-circuit-reconsider-15-year-claim-construction-position-patent
As noted above the real issue here is probably a 112 2nd, just how "rubber-like" does the claim really limit the material to being? It's a wholly subjective term, even in the dictionary, with no objective standard to judge from.
"The Applicant filed a Reply Brief to respond to this new information.
A person of ordinary skill in the art would understand the term "rubber like material" to have its common ordinary meaning. Merriam Websters 10th ed. defines rubber-like as "resembling rubber esp. in physical properties." The Examiner has not shown that any of the materials upon which he relies are rubber-like."
And of course this is how they do, just to drag out prosecution being tar dly, and then the office doesn't allow the examiner to make any additional writings on the subject. That sht needs to be banned. Indeed, playing the ignorant card in general needs to be banned. And banned more directly than a round about "ban" implemented by an affirmance of the rejection. There used to be a thing called due diligence, kind of old fashioned, but I guess people don't really do that anymore before the PTO, maybe it should make a comeback, and be official required if it isn't.
"was the claim construction reasonable; and if so, did the Examiner provide enough technical reasoning "
Obviously it was reasonable and there was no "technical reasoning" to give, either you've seen some teflon in your life, or you have the interwebs and some knowledge about mechanics, or you're an ignoramus that shouldn't be practicing in an area in the first place and you haven't. Sure the examiner could dig up the Young's modulus, but that isn't going to satisfy the applicant, as his argument is a magical one, where he meant a certain thing by the "rubber-like" term, where he neglected to fill the rest of us in on what he meant. Likewise, there are people posting in this very thread that don't even understand what a low young's modulus means and thus still can't construe the term properly. It's because they're ignoramuses, not because of some fault on the examiner's part.
"The Applicant could have gone farther and gone on record with what those properties were."
If he did he would have talked himself out of being able to make a ta rded argument, like he wanted to do.
" But the truth is, once you know that the material in question is Teflon®, you also know it's slippery. That's probably common knowlege, worthy of Official Notice."
Actually everything about the general properties of Teflon, a very well known substance, is worthy of official notice since it takes 5 seconds to find the information on the wiki.
rubber-like ("flexible, stretchable")
DeleteNearly any material can be flexible and stretchable ... the question is to what degree. As such, merely alleging that some material is stretchable and flexible doesn't make it "rubber-like." Also, while Teflon is second on the list in the wiki article the values for rubber are SUBSTANTIALLY DIFFERENT than Teflon.
The claim construction is an issue of lawl, not fact
God ... you are bad at this. Claim construction is a question of law BASED UPON FACTS. See Markman.
And of course this is how they do, just to drag out prosecution being tar dly, and then the office doesn't allow the examiner to make any additional writings on the subject. That sht needs to be banned. Indeed, playing the ignorant card in general needs to be banned.
You crack me up. The Examiner doesn't do his job, and then you complain when the Appellant calls the Examiner out on it. Also, you are COMPLETELY WRONG about the Examiner not being allowed "additional writings on the subject." If the Examiner wants to do his/her job PROPERLY, all he/she has to do is reopen with new evidence. Regardless, Examiners put "additional writings" in their Examiner's Answers ALL THE TIME.
Obviously it was reasonable and there was no "technical reasoning" to give, either you've seen some Teflon
Really? You can tell the properties of a coating just by looking at it? You never cease to amaze me (in a bad way).
he meant a certain thing by the "rubber-like" term, where he neglected to fill the rest of us in on what he meant.
Make a 112, 2nd rejection then.
Actually everything about the general properties of Teflon, a very well known substance, is worthy of official notice since it takes 5 seconds to find the information on the wiki
Actually, you have identified a reasonable use of Official Notice. Congratulations. However, taking Official Notice of those properties don't explain how the Teflon is rubber-like since the Young's modulus of Teflon differs substantially from rubber.
Rubber: 1,450-14,503
Teflon: 75,000
"Also, while Teflon is second on the list in the wiki article the values for rubber are SUBSTANTIALLY DIFFERENT than Teflon."
DeleteSo what ignoramust ard? Do you know what a young's modulus as listed in the wiki means in real life? No? Do I have to explain it to you because you're an ignoramus? Yes, if I was involved in this case I probably would due to the "argument from ignorance" favored by patent attorneys. Where there's always more things to argue about about due to the attorneys own technical ignorance.
It's a sad state of affairs that this nonsense is allowed at all.
"Also, you are COMPLETELY WRONG about the Examiner not being allowed "additional writings on the subject." "
Um, I'm not "completely wrong", come get a job here and see just how often the SPE allows you to make a response on the record to a reply brief. It'll be somewhere around 1 out of ten thousand reply briefs. It is, in practice, a ban. When, funny enough, it should be standard practice to require such be made so as to hopefully save the Board the trouble of sorting out the case.
"However, taking Official Notice of those properties don't explain how the Teflon is rubber-like since the Young's modulus of Teflon differs substantially from rubber.
Rubber: 1,450-14,503
Teflon: 75,000"
First they don't need to "explain why they're rubber-like" ta rd. The examiner explained why the office considers them rubber-like. What those numbers do indicate though is that the material is stretchy as the examiner asserted, or rather, simply knew because he wasn't a technical ignoramus like you and the other attorney.
If you're that curious about the flexibility try asking your local walmart to show you some teflon, or home depot if they don't have any.
"Really? You can tell the properties of a coating just by looking at it?"
If it is flexed and bent over. Or if it is being handled. Or you get a chance to handle it. But if you're just trying to be pedantic, ok, be pedantic, but spare me reading your pedantry ok?
I'm not "completely wrong", come get a job here and see just how often the SPE allows you to make a response on the record to a reply brief
DeleteYou are in the wrong Tech Center then. Most Tech Centers give a wink and a nod to rules -- something you seem to be all too comfortable doing yourself.
Do I have to explain it to you
The floor is all yours. Of course, if you could have explained why they were the same, then you would have already.
First they don't need to "explain why they're rubber-like" ta rd
hahaha ... that's right, this is "we are the USPTO ... we don't do explanations."
If it is flexed and bent over. Or if it is being handled.
I can do the same thing to a sheet of plastic, a sheet of copper, or a sheet of paper ... doesn't make it "rubber-like."
you're just trying to be pedantic
The reasons why you'll NEVER be an attorney. An attorney is paid to sweat the small details. People don't like attorneys because they hate being told they missed things that attorneys pick up on. They hate been told that they don't have an eye for detail. They hate that every time they fudge a little detail, an attorney catches them on it.
Examiner 6000 ... after all these years, you still don't get it. The joke is on you every time you write something on this blog or any other. We all have a good laugh as our caricature of the bumbling, legally-incompetent, pompous, lazy examiner comes to life before our very eyes. You never disappoint. Don't ever mistake these conversations for what they are ... you are entertainment, nothing more.
"God...you are bad at this. Claim construction is a question of law BASED UPON FACTS. See Markman."
DeleteHuh? Ever hear of Cybor Corp? Maybe Lightning Ballast Control?
DeleteNote that the "Huh?" post was not by me, 6. But I do agree with its contents where it asks the tar d above if they're unfamiliar with Cybor and the ongoing attempts to make his currently legally wrong view into the law through Lightning Ballast Control.
"hahaha ... that's right, this is "we are the USPTO ... we don't do explanations." "
You misunderstand the quote you're responding to tar d, the USPTO, here the examiner did explain why, and yes, we'll explain why if the applicant makes an issue of it. In your quoted section I was explaining that certain facts do not "explain" a specific something, I will now tell you though that what does "explain" it is the examiner.
"Of course, if you could have explained why they were the same, then you would have already."
I never said they were the "same" tar dface. Rubber and teflon are not the "same". Teflon is simply rubber-LIKE it is not rubber-SAME. As to "why" they are of like kind see the examiner's EXPLANATION on the record. That either you or the applicant DISAGREE with the explanation is not at issue. The explanation was reasonble. If the applicant disagrees with it, then that is fine, he may disagree. If he wishes the claim to necessarily be construed differently though it will take more than his rank disagreement and stating that the office's REASONABLE CONSTRUCTION is, in his view, totally unreasonable BASED SIMPLY ON NOTHING MORE THAN THE OFFICE HAVING NOT PRODUCED FACTS TO SUPPORT THE CONSTRUCTION. I'm sorry, but it will always take more than that unless the examiner is magically persuaded and/or takes another fresh look at the construction and decides differently on his own. Sorry that you don't like this but that is just how it is with pure issues of lawl. I know your lack of legal understanding prohibits you from undersatnding this, but it's a simple thing, and something you would do well to eventually accept.
I have nothing further to say on this case, because whether the things are the "same" or whether they are "like" one another really isn't the base issue with your misunderstanding why this decision is proper. The baseline is your misunderstanding of what a claim construction is. And your tar dation prevents you from making any further progress on that. One day, probably far in the future, something will click for you and you will magically understand. I'm sorry, but I can't hold your hand any further of the way towards that than I already have.
"Examiner 6000 ... after all these years, you still don't get it. The joke is on you every time you write something on this blog or any other. We all have a good laugh as our caricature of the bumbling, legally-incompetent, pompous, lazy examiner comes to life before our very eyes. You never disappoint. Don't ever mistake these conversations for what they are ... you are entertainment, nothing more."
Said an incompetent toolface who can't even understand what a claim construction is. /facepalm. Yes, I'm sure you do get a lot of lols out of this, until you get to the board/CAFC and your sht gets reversed. And then I chuckle mildly, though your incompetence isn't quite as funny as it used to be for me, because it is so widespread. That makes it somewhat less funny.
"ou are in the wrong Tech Center then."
Meh, maybe for that one small issue, but I doubt it, if I had to guess most other TC's are the same way in the modern day. Appeals aren't handled the same as they were 20 years ago. And I'm certainly not in the wrong TC overall. My TC is, by and large, the shizzle.
I'm also beginning to think that the person carrying on this conversation is none other than "anon", my ever tar dfull personal troll that has no legal educatin' at all.
Huh? Ever hear of Cybor Corp? Maybe Lightning Ballast Control?
DeleteThis is what happens when the non-legally trained try to interpret law. Cybor Corp was about the standard of review at the Federal Circuit and the standard by which a District Court's claim construction is to be reviewed.
Let me cite from the Federal Circuit within Phillips v. AWH Corp., 415 F.3d 1303, 1322 (Fed. Cir. 2005) (en banc): "Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to "those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean." Innova, 381 F.3d at 1116. Those sources include "the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art."
All of this involves findings of fact.
Teflon is simply rubber-LIKE it is not rubber-SAME
DeleteBecause you said so? Stretchable and flexible? So is a sheet of copper – doesn't make it rubber-like.
Sorry that you don't like this but that is just how it is with pure issues of lawl
I'm sorry, but you wouldn't know a pure issue of law if it bit you in your scrotum.
I have nothing further to say on this case
A good man knows his limitations. You know it is silly to argue that Teflon is "rubber-like" so you don't want to lose what little credibility you have. Frankly, I think you lost it years ago.
Said an incompetent toolface who can't even understand what a claim construction is
Keep living in your dreamworld kid.
"This is what happens when the non-legally trained try to interpret law. Cybor Corp was about the standard of review at the Federal Circuit and the standard by which a District Court's claim construction is to be reviewed."
Delete[followed by yet more irrelevant ramblings]
Maybe you can show up at the Lightning Ballast Control arguments and tell the en banc court that they are non-legally trained. "In contrast, claim construction is a legal issue that we review de novo." In re Baxter International, Inc. (Fed. Cir. 2012)(citing Cybor Corp.).
You must be the guy who pontificated "Appellate court panels are not bound by earlier panel decisions." Throw that one in too.
Maybe he'll tell CJ Rader he's non-legally trained.
Delete"This court reviews the Board's claim construction de novo." Rambus, Inc. v. Rea (Fed. Cir. 2013) (citing Cybor Corp.).
"You must be the guy who pontificated 'Appellate court panels are not bound by earlier panel decisions.' Throw that one in too."
DeleteNo, that was me. If you actually think that any judge on the
Fed. Cir. feels personally bound by "prior precedential panel decisions" then you're either naive, not paying attention, or lying. I don't care what lip service those jokers pay to the rule they've allegedly adopted, every question of law gets decided by de novo review, which in the mind of every Fed. Cir. judge is basically, "I'll decide it how I think it should have been decided."
But the next time you're arguing in front of a panel, please do feel free to cite a prior precedential panel decision and tell the judges they're bound by it. Maybe the guy over at the 717 Madison Place site will post the audio of the judges' reaction so we call all share in on the lulz.
"If you actually think that any judge on the
DeleteFed. Cir. feels personally bound by "prior precedential panel decisions" then you're either naive, not paying attention, or lying."
"Even if Leviton's reading of the import of that statement were correct, this would not be a direct conflict of panel opinions as is necessary to invoke this court's rule of precedence. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 [9 USPQ2d 1417] (Fed. Cir. 1998)."
__ General Protecht Group Inc. v. Leviton Manufacturing Co. (Fed. Cir. 2011). __
"The court referred to the Scripps/Atlantic conflict, concluded that the earlier panel decision controlled under the Federal Circuit's rule, see Newell Companies, Inc. v. Kenney Manufacturing Co., 864 F.2d 757, 765 (Fed. Cir. 1988) (“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.”),"
__ Abbott Laboratories v. Sandoz Inc. (Fed. Cir. 2009). __
"[T]his court nonetheless has the rule that in the event of conflict between panels the earlier holding prevails until overturned en banc. Newell Companies v. Kenney Mfg. Corp., 864 F.2d 757, 765 (Fed. Cir. 1988) (“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… . Where there is a direct conflict, the precedential decision is the first.”). If there is to be a change from this court's prior rulings, it must be done en banc."
__ Abbott Laboratories v. Sandoz Inc. (Fed. Cir. 2008). __
"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). __
"But the next time you're arguing in front of a panel, please do feel free to cite a prior precedential panel decision and tell the judges they're bound by it. Maybe the guy over at the 717 Madison Place site will post the audio of the judges' reaction so we call all share in on the lulz."
DeleteNo need. Just go to the CAFC web site and listen to the arguments from just the other day in In re Solomon. Tell me, Pain, who's laughing. And look at the (Rule 36) result. Or just keep pontificating. That's what you're good at.
God...you are bad at this. Claim construction is a question of law BASED UPON FACTS. See Markman."
DeleteAnd now we'll hear from the non-legally trained Judge Lourie.
"See Cybor Corp. v. FAS Techs., Inc., 1455 (Fed Cir. 1998)(en banc) (concluding that claim construction is a pure issue of law.)" Bancorp Services LLC v. Sun Life Assurance Co. of Canada (U.S) (Fed. Cir. 2012).
Am I to understand that because claim construction is "a pure issue of law" it cannot be "a question of law based on Facts"? Is that the issue that separates you two?
DeleteNever mind what the claim means. First think on a preliminary question.
The meaning of the claim is based on "rubber like". The PHOSITA reader understands "rubber like", in the context of the specification, as having a meaning. What meaning? Is that an issue of fact or law? For me, an issue of fact.
I think the Client/Inventor/Applicant here wanted non-elastomeric "PTFE-like" covered by the claim. Otherwise, the Claim is not useful, commercially. What to do, given that the claim says "rubber like" and the prior art shows PTFE.
I know: argue with the PTO and hold out for "rubber like", so as to be able to assert after issue that the competitors are using fixing rings just like mine, that are "rubber like" (even though the competitors are in truth using rings that are, actually, PTFE-like).
"Am I to understand that because claim construction is "a pure issue of law" it cannot be "a question of law based on Facts"?"
DeleteIf you want to understand what the law has been at least since Cybor Corp., yes.
"Am I to understand that because claim construction is 'a pure issue of law' it cannot be 'a question of law based on Facts'? Is that the issue that separates you two?"
DeleteI'm not sure there is an issue separating me and whomever else you are referring to, but claim construction is a question of law, reviewed de novo by the Fed. Cir. The court gives no deference to either a USDC or the PTO on the issue. As to the underlying facts that are determined and taken into consideration in resolving the legal question of a claim's construction, the court owes whatever deference to the lower tribunal (e.g. substantial evidence to the PTAB), but to me that deference is meaningless. If the court can say, "Okay, we have to defer to you on these facts, but we don't have to give you any deference on the ultimate legal conclusion" than that permits the court to simply substitute its desired result for the lower tribunal's conclusion.
I seem to recall reading a dissent from a denial for en banc rehearing written by J. Mayer that called the whole "claim construction is a question of law" precedent to be either ridiculous or a fantasy or whatever, and him saying that until the court agrees that claim construction is a mixed question of law and fact that requires at least some deference to the lower tribunal, then claim construction is always going to be a 50-50 proposition at the Fed. Cir. He seemed to be frustrated, if not disgusted, at the actions of some of his colleagues in reviewing claim construction issues on appeal. Of course, if they were all following prior precedential panel decisions, there wouldn't be any problems. Right?
So Pain chose to just keep pontificating. Who woulda thunk it?
DeleteI do not see how the construction of a claim, a pure issue of law, can be anything other than based on facts.
DeleteTake a real case from England in the 1950's (because the point there was so clean and simple. The entire case turned on the meaning of "fluid". Some would say it includes both gases and liquids, while others might think it embraces liquids and not gases.
That point that was decisive to the outcome on validity.
The evidence adduced in the case proved that, in the technical field of the patent (bath taps), the word "fluid" means (to persons of skill in the art) exclusively liquids.
The English Court of Appeal could opine all day, on the pure question of law, what the claim means, but it would have to take into account that proven fact.
How would it shake down in the USA? Pure question of law, or question of law based on Facts?
"If you want to understand what the law has been at least since Cybor Corp., yes."
DeleteThis is the correct answer, unfortunately. I agree that claim construction should be a mixed question of law and fact and that some deference should be given to the lower tribunal's finder of fact, but that's not how it is. As I noted above, under the de novo review of questions of law, no deference is due. So the Fed. Cir. can nod their head and say, "Yep, uhm hmm, we agree they got the facts right, but we think they got the law wrong" and there's absolutely nothing to stop them from using that de novo review for substituting their judgment on how the construction should have turned out for the lower tribunal's, i.e. writing a totally result effective decision. Nothing can stop that. Not any supposedly "adopted rule" or "commitment to stare decisis", etc. Every single judge on the Fed. Cir. approaches the issue of claim construction with the mindset of, "I don't care what trial court or PTAB concluded the claim means, this is what I think it means and I'll write whatever I have to write to reach that result." If you don't believe that than you are, as I said above, naive, not paying attention, or lying.
So keep posting lip service case cites and I'll keep pontificating.
You're welcome.
Pain, you were the one who suggested listening to oral arguments. But you did not bother to listen to even one. So___ much easier to just keep pontificating.
Delete"Every single judge on the Fed. Cir. approaches the issue of claim construction with the mindset of, "I don't care what trial court or PTAB concluded the claim means, this is what I think it means and I'll write whatever I have to write to reach that result."
DeleteNot knowing the law has made Pain bitter and confused.
If you're telling us that you "know the law" of claim construction, I'm telling you you're full of sh!t.
DeleteLack of reading comprehension has made Pain bitter and confused.
DeleteWhat is really needed to rectify these types of mishaps is to take ta rd lawlta rds off of such cases and stick them in the usefullol "art" of softwaretomwankery where "arguments" about matters like this are routinely found persuasive because: MAGIC!
ReplyDelete"The ALJ uses quasi-legal phraseology throughout, but never addresses any of the disputed issues head-on. "
They practically never seem to, it's amazing how they're even considered a review body that supposedly is supposed to stick to the contentions raised.
"Doesn't seem "rubber-like" to me"
Because you're a ta rd and don't understand what the young's modulus is.
"Regardless, the gross error on the part of the Board was failure to recognize that findings of fact must be based upon substantial evidence."
Last I checked, the finding of fact, that the use of TEFLON in this piece of prior art was established by the substantial evidence of the reference itself. The matter of claim construction is a matter of law, not a finding of fact requiring substantial evidence.
"BWhy does the Board continually have so much trouble with these administrative law concepts?"
Because the "concepts" are not applied in the manner in which you think they're to be applied. Because you're a ta rd with no training at all.
I'm astonished that the PTO did not object that "rubber like" is meaningless. Every material, even diamond, is flexible and stretchable to a degree. Apart from diamond, which other materials are "rubber like"? All of them, right? How do I know which materials (if any) are definitely NOT "rubber like"?
ReplyDeleteSomewhere above there is a reference to "physical" properties. But which? Why should it be mechanical properties? If it is an implant the chemical (biocompatible) properties of the substance are at least as important. What substances are "rubber like" in their chemical properties? (Not diamond, I grant you).
Every material, even diamond, is flexible and stretchable to a degree. Apart from diamond, which other materials are "rubber like"? All of them, right? How do I know which materials (if any) are definitely NOT "rubber like"?
ReplyDeleteHave you ever thought that you aren't one skilled in the art? The fact that you don't know what something means doesn't establish that those skilled in the art don't know what it means. FYI -- a Google search for the exact phrase "rubber like materials" yields 774,000 hits.
6 ... still trolling for dates on patent blogs?
ReplyDeleteexaminer#6k said..."Speaking of dates, you live in DC anywhere near the PTO?"
http://www.patentlyo.com/patent/2006/02/website_compreh.html#comments
LMFAO .... priceless 6, absolutely priceless.
Anon suggests that "rubber like" might mean something definite to one of skill in "the art"? Well, perhaps. But I doubt it. In my experience, the more one knows about a particular art, the more picky one becomes about definitions. To my mind, the closer one gets to the art of rubber, the more indefinite the expression "rubber like" becomes, if only because rubber technologists know a lot about different performance aspects of rubber and so demand to know in what specific respect any given material is "like" rubber. Rubber gloves or rubber tyres? The rubber in my tyres doesn't stretch, thank you very much but I do want my rubber gloves to stretch, thank you. How much stretch do you want in the fixing ring of the implant for your aorta? Just how stretchable would you like it to be? Should it stretch a lot or a little? Or would you prefer your ring to be one of foam (another alternative to rubber like, in the claim). Follow the instructions in the patent. Build the aortic implant and get somebody to install it in your aorta. But best think carefully first how "rubber like" you want the fixing ring to be. It might be important to whether or not the thing works.
ReplyDeleteThanks for the challenge, allowing me to flesh out my thoughts.
Further thought: Rubber is the archetypal elastomer. Whether or not any material is an elastomer is a Y/N binary question. I do not understand why:
ReplyDelete1. The drafter did not write that the fixing ring should be made of an elastomer, for example, a natural or synthetic rubber.
2. The Applicant during prosecution did not define rubber like as elastomeric.
I conclude it was because Applicant during prosecution belatedly realised that it wanted cover for fixing rings that are NOT elastomeric, ones made of for example inert polymeric materials not unlike PTFE (TM TEFLON). He wanted his cake and to eat it too.