Monday, November 17, 2014

Board affirms obviousness and refers to Applicant specification for advantages of adding secondary reference


Takeaway: The Applicant appealed an obviousness rejection of claims directed to a process of manufacturing stents. Though the Final Office Action relied on advantages taught by the secondary reference, the Advisory Action also mentioned advantages disclosed in the Applicant's specification. The Appeal Brief argued that these Applicant-known advantages actually showed that the secondary reference was non-analogous art. The Board affirmed the obviousness rejection. Though the Decision mentioned advantages taken from the secondary reference, the Board also appeared to impermissibly rely on the Applicant-known advantages as a reason to combine. (Ex parte Sciver, PTAB 2014.)

Details:

Ex parte Sciver
Appeal 2012011728; Appl. No. 12/748,271; Tech. Center 1700
Decided:  October 31, 2014

The application was directed to systems methods for coating a stent with a drug.
A simplified system diagram from a related application is shown below. Stent 10 rotates about mandrel 24 via motor 340. Print head 210, 220 uses acoustic pulses to eject droplets of a coating onto the stent 10.
An independent method claim on appeal read:
     11. A method of depositing a substance on a stent, comprising:
     positioning the stent 10 on a mandrel 24 for supporting the stent 10, the mandrel 24 comprising an elongated body for insertion into a longitudinal bore of the stent, the body comprising carbide;
     depositing a substance on the stent; and
     imaging the stent or the substance being deposited,
     wherein the stent is light-colored and the elongated body is dark-colored or black.
(Numbers and emphasis added.)
This independent claim was rejected as obvious over Teichman and Hopkins. Teichman taught a method of coating stents, and the Examiner relied on Teichman for all limitations except the material of the mandrel body. The Examiner relied on Hopkins "Carbide mandrel for micro extrusion of metals" for the carbide mandrel body. As a reason for the combination, the Examiner pointed to an advantages of carbide taught in Hopkins: "sufficient hardness to be practically wear resistant." The Examiner asserted that using this material would be "similarly useful and applicable to [Teichman's] analogous device."

In an Advisory Action, the Examiner expanded upon the rationale for the combination by referring to the Applicant's own specification, as follows:
The Examiner notes that page 7, lines 10-15 of the instant specification recites "carbide is used as the mandrel material to provide the mandrel with precise dimensions and dimensional stability over time and temperature. Since a carbide mandrel generally does not bend (it breaks instead of bending), the dimensional stability of an intact mandrel can be ensured. Additionally, a carbide mandrel can be machined without warping; this is difficult to do with many other materials because the mandrel is relatively thin and long."
(Emphasis added.)
On appeal, the Applicant made several arguments against the combination. First, the references were in different fields: coating a medical device and microextrusion of metals. Next, the problem of Hopkins – softening of the mandrel resulting from the high temperatures of extrusion – was not relevant to Teichman, since Teichman did not indicate that softness is bad or hardness is important. Also, Hopkins' focus was a specific geometry for carbide mandrels to avoid a problem with thermal expansion during the extrusion process, and this geometry was irrelevant to Teichman, which did not relate to metal extrusion.

The Applicant summarized these points as follows:
There would not, therefore, have been any reason (such as teaching, motivation or suggestion) why one of ordinary skill would have combined the mandrel of Hopkins into the device of Teichman. Likewise, there would not have been any reason (such as teaching, motivation or suggestion) why one of ordinary skill.
The Appeal Brief then went on to rebut the Examiner's position that wear resistance, as taught by Hopkins, would be an advantage in Teichman's mandrel. According to the Applicant, wear resistance in Hopkins referred to "an increased resistance to the flow of liquid metal" during a metal extrusion process. Teichman's mandrel was used to form a stent and did not involve the flow of liquid metal. Therefore, a POSITA would not view Hopkins' teaching as desirable or beneficial for forming the stent in Teichmans.

The Appeal Brief also commented on advantages of carbide mandrels which the Examiner had quoted from the Applicant's own specification:
This evidence from Applicants' own specification strengthens Applicant's position that Hopkins is not analogous to the present application. Indeed, there is no evidence that the alleged mandrel of Hopkins is "relative thin and long" or that Hopkins is trying to avoid warping during manufacture [as described by Applicant]. Nor is the dimensional stability of the mandrel [as described by Applicant] a concern in Hopkins ... Accordingly, Hopkins is non-analogous and not pertinent to the problem.

In the Answer, the Examiner reiterated his previous positions, but also responded to Applicant's characterization of Hopkins as non-analogous. After first citing to "reasonably pertinent" test for analogous art, the Examiner explained as follows:
Hopkins is pertinent to the particular problem with which the Applicant was concerned, since Hopkins clearly discloses [in the Abstract] the carbide mandrel is made from sintered carbide material which has a softening temperature significantly higher than the temperatures experienced during the extrusion process and sufficient hardness to be practically wear resistant.
No Reply Brief was filed.

The Board affirmed the obviousness rejection, referring to the hardness and wear properties taught in Hopkins and relied on by the Examiner as a rationale for combining. However, the Board's rationale also referred to advantages taught in the Applicant:
Appellants have not provided persuasive technical reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used a conventional carbide material for a mandrel as exemplified in Hopkins for the supporting mandrel of the prior art process stent coating process of Teichman, for the same/similar advantanges as discussed by Appellants to achieve a dimensionally stable mandrel (e.g., Ans. 6–8; Br. generally). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). 
My two cents: The Board's mention of advantages taught by the Applicant was sloppy and confusing at best, impermissible hindsight at worst.

Did the Board view an advantageous property of a carbide mandrel in the Brief as an admission of a property known to a POSITA? If so, the Board was wrong, since the Brief made it clear these properties were taken from the Applicant's Detailed Description.

If the Board knew it wasn't an admission, why bring it up at all? Advantages disclosed by the Applicant are not relevant to obviousness. So the mention of Applicant-known advantages in the Decision either muddied the waters or it was impermissible hindsight.

149 comments:

  1. Panel of 3 lifers. Hardly a surprising result.

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  2. I agree. Essentially all patent examiners and judges at the board have worked for the USPTO since undergraduate days. They have no practical experience of any field of technology.

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    1. >all patent examiners and judges at the board have worked for
      >USPTO since undergraduate days. They have no practical
      >experience of any field of technology.

      Most prosecutors don't have *work* experience in technology, so I'm guessing that "practical experience" refers to experience as a patent prosecutor.

      Note that the topics raised in this post -- Applicant admissions and rationale to combine -- are purely legal issues, nothing to do with the technology.

      I don't have any statistics about the make-up of the APJ corps, but I do know they have been hiring a lot in the past couple of years and many of those new hires have come from law firms. So if you're right that ALJs are mostly PTO lifers at this time, that is definitely changing.

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    2. I would say 95+% of the new APJ hires in the past 2+ years have been from outside. This is simply because there were not anywhere near enough qualified applicants from within the PTO to meet their hiring goals. And not too many that were qualified wanted to go from their do-nothing GS-15 jobs with zero production requirements to the production treadmill of the BPAI/PTAB.

      I was simply remarking that this particular panel is composed of lifers.

      I get plenty of rejections that say, "It would have been obvious to do it for the same reasons applicant did" and usually just chuckle. Having a panel of APJ's say that though isn't so amusing.

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    3. >I get plenty of rejections that say, "It would have been obvious
      >to do it for the same reasons applicant did"

      Huh. I don't often encounter this borrowing of Applicant reasons -- probably because many of the apps I prosecute deliberately avoid talking about advantages.

      What surprises me is that 7 years after KSR, most of my 103s still rely on an explicit teaching from the reference as a rationale for combining. Even when that seemingly random teaching really doesn't amount to a good rationale (related to a feature not claimed, a benefit only in limited inapplicable circumstances, etc),

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    4. "Even when that seemingly random teaching really doesn't amount to a good rationale (related to a feature not claimed, a benefit only in limited inapplicable circumstances, etc),"

      I'm not following. Why is an explicit teaching from a reference to make the combination, even assuming the teaching is related to a feature not claimed, not a "good' rationale?

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    5. "Huh. I don't often encounter this borrowing of Applicant reasons -- probably because many of the apps I prosecute deliberately avoid talking about advantages."

      I don't use the word "advantage" in my apps either. I explain the technical effects the features of the technology achieve. What I usually get from the examiners is, "Ref. A discloses everything claimed except a diffuser. Ref. B discloses a diffuser. It would have been obvious to provide Ref. A with a diffuser as shown by B for the same reasons Applicant uses a diffuser." That's usually because Ref. B provides no reason whatsoever to provide a diffuser to Ref. A.

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    6. >Why is an explicit teaching ... to make the combination,
      >even assuming teaching is related to **feature not claimed**
      >not a "good' rationale?

      Claim to a widget coupled to an elongated foobar. Ref A teaches widget. Ref B teaches a flexible elongated foobar. Ref B also explains an advantage of foobar being flexible: fits into small spaces.

      Examiner asserts POSITA would modify A to use B's foobar because it would fit into small spaces. I say this is NOT a rational reason for using an *elongated* foobar, which is what's claimed. An advantage of the unclaimed flexible foobar is irrelevant to the claimed combination.

      Agree? Disagree?

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    7. >[My spec] explains the technical effects achieved by the
      >features of the technology. [Examiner says] "obvious to
      >provide Ref. A with a diffuser as shown by B for the
      >same reasons Applicant uses a diffuser."

      Wow. You said you chuckle. I'd be infuriated. I'm guessing you get nowhere arguing with the Examiner on this point. Do you get anywhere with SPE, or with conference of Examiners during the appeal process?

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    8. As an example, I'd be handling a case claiming a respiratory apparatus. A claim would include a diffuser diffusing a flow between components 1 and 2. Examiner acknowledges Ref. A doesn't disclose a diffuser at all, and will cite Ref. B that discloses a diffuser between components 3 and 4. When I point out that the combination wouldn't result in the invention, because Ref. B doesn't disclose putting a diffuser between components 1 and 2, the examiner will respond it's obvious to put the diffuser between components 1 and 2 for the same reason Applicant put it there. Literally using the words, "for the same reason Applicant."

      Yeah, pretty infuriating.

      Sometimes I get traction. Sometimes I don't. Like any other issue at the PTO I guess.

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    9. "Examiner asserts POSITA would modify A to use B's foobar because it would fit into small spaces. I say this is NOT a rational reason for using an *elongated* foobar, which is what's claimed. An advantage of the unclaimed flexible foobar is irrelevant to the claimed combination.

      Agree? Disagree?"


      I very much disagree. This is hindsight analysis on the applicant's part - it amounts to saying that one has to look to the application for the reason for combine the features rather than consider what the prior art has to say about why to combine the features.

      This hypothetical claim encompasses a widget coupled to a flexible elongated foobar. A widget coupled to a flexible elongated foobar is obvious in light of the prior art. Thus the claim encompasses obvious subject matter. Seems like that should be the end of the analysis.

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    10. it amounts to saying that one has to look to the application for the reason for combine the features rather than consider what the prior art has to say about why to combine the features
      No ... not even close. Stop trying to force fit boilerplate paragraphs from the MPEP into your analysis.

      Using Karen's example (i.e., "Examiner asserts POSITA would modify A to use B's foobar because it would fit into small spaces"), the advantage of "would fit into small spaces" is accomplished by the footbar alone. There is no reason to modify A to achieve that benefit (i.e., it can be obtained by B alone). Moreover, the fact that A is modified by B doesn't necessarily mean that A can also fit into a small space, it just means that the A portion can fit into a small space.

      Let me explain it this way, nearly every non-trivial feature (B) has some specific benefit (X). If all it took was to say it would have been obvious to modify A to include B so as to provide X than nearly 99% of all combinations would be obvious.

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    11. "Stop trying to force fit boilerplate paragraphs from the MPEP into your analysis."

      Someone woke up on the wrong side of the bed. Start acting like the "professional" you patent attorneys like you think you are.

      "There is no reason to modify A to achieve that benefit (i.e., it can be obtained by B alone)."

      Wow someone missed out on logical reasoning in law school. The benefit is -imparting- that feature to A.

      "If all it took was to say it would have been obvious to modify A to include B so as to provide X than nearly 99% of all combinations would be obvious."

      SCOTUS agrees. See KSR rationale A in MPEP 2143.

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    12. Wow someone missed out on logical reasoning in law school. The benefit is -imparting- that feature to A.
      Someone doesn't think through their analysis AT ALL. If that was acceptable, then 99% of all combinations would be obvious. E.g., it would have been obvious to one skilled in the art to add a titanium nitride to a rubber ducky in order to make the rubber ducky more wear resistant.

      See KSR rationale A in MPEP 2143
      I suggest you read that rationale again -- my example does not neatly fit into it.

      You must be an examiner, your inability to pay attention to the details is telling.

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    13. You're going to have to try harder - pay attention here. It is indeed obvious to add titanium nitride to a rubber ducky in order to make it more wear resistant.

      You must be a patent attorney. Your inability to think critically is telling.

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    14. It is indeed obvious to add titanium nitride to a rubber ducky in order to make it more wear resistant.
      Case closed ... Examiner 6K has spoken.

      On the QT, I hear 6K has introduced a suggestion (which is receiving serious consideration) to upper management to replace the entire USPTO with a giant machine into which is fed patent applications and out of which spits the patent applications stamped All claims rejected under 35 USC 103 -- See KSR rationale A in MPEP 2143. In the suggestion, 6K has included the recommendation that he still be retained in order to re-ink the stamp pad in the machine.

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  3. What surprises me is that Applicant specifically referred to the TSM test in PTAB proceedings. That alone was probably sufficient to make the panel look askance at the appeal. Similar facts presented in post KSR language might have fared differently. We will never know.

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    Replies
    1. That alone was probably sufficient to make the panel look askance at the appeal
      Why? The TSM test is still valid -- it just isn't the sole test. Moreover, if the Examiner is employing that type of analysis, then it is perfectly acceptable to argue that the Examiner did not meet the standard.

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    2. It certainly shows *error* in the Examiner's rejection, which is what's required for reversal by the PTAB. So I think if you have good facts/technical analysis for why the Examiner's application of TSM is wrong, you *could* argue this and stop there.

      OTOH, you'd better be damn sure that there's nothing in the record that suggests the Examiner was using something other than a pure teaching from a reference, Something like substitution, predictable results, etc. If such a rationale is present and it comes out obvious under that rationale, the Board can use it to affirm, and you won't even get a new ground.

      Plus, even if there isn't anything else in the record besides TSM, you're still vulnerable to the Board affirming under a different rationale. Hopefully as a new ground so that you don't have to pay for an RCE if you wish to continue prosecution.

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    3. you'd better be damn sure that there's nothing in the record that suggests the Examiner was using something other than a pure teaching from a reference, Something like substitution, predictable results
      I've seen hundreds (thousands?) of rejections since KSR, and most Examiner do the bare minimum and rarely ever meet all the requirements to employ any of the rationales mentioned in MPEP 2143. That being said, the Board typically uses a hand grenade test -- if it is close, it is enough for them.

      you're still vulnerable to the Board affirming under a different rationale
      See my comment above ... the lack of a complete analysis by the Examiner is certainly no guarantee of a reversal.

      Hopefully as a new ground
      LOL ... the Board wouldn't know a new ground if it bit them in the butt.

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  4. >Applicant specifically referred to the TSM test in PTAB proceedings

    Yeah, that certainly can be a problem, and I've dinged Applicants before for arguing no-TSM. OTOH, in this particular case the Examiner explicitly relied on TSM. So IMHO all the Applicant needed to do to show error is attack the TSM.

    Do you think the Applicant should have gone further and explain how the Examiner's combination wasn't rational?

    Or are you saying that the Applicant should have made the same argument but couched it in post-KSR terms: the Examiner failed to articulate a rationale with rational underpinnings.

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  5. "Claim to a widget coupled to an elongated foobar."

    Disagree. There's a line of cases that follow In re Dillon (e.g., In re Kemps) that make clear the reason for combining prior art elements does not have to be the same as applicant's. And the ordinary artisan would be expected to use the structure taught in the prior art, rather than.modifying to remove the "elongated" feature. The claim does not distinguish over a flexible elongated fobar (but there's your amendment).

    There's the further problem that a claim that reads on both non-obvious subject matter and obvious subject matter is obvious, as restated in KSR. That makes the "benefit only in limited circumstances" argument also a bit suspect.

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    1. There's a line of cases that follow In re Dillon (e.g., In re Kemps) that make clear the reason for combining prior art elements does not have to be the same as applicant's
      That wasn't the counter-argument.

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    2. >That wasn't the counter-argument.

      Correct. That is, in my "flexible elongated foobar" example, I didn't mention anything about the Applicant's RtC.

      I attacked the Examiner's stated RtC ("fits into small spaces") by arguing this was not a rational reason for adding an "elongated foobar" as claimed. IOW, it's a rational reason for adding a flexible foobar, but that's not what's claimed.

      I think TP's more relevant point is his statement that In re Dillon/Kemps says a POSITA takes the reference as-is in making the combination. Here, that's flexible as well as elongated. Where advantages of the *unclaimed* piece of the reference structure (flexible) can serve as a RtC.

      Anybody else familiar with this line of cases? Haven't had time to review yet.

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    3. "Correct. That is, in my "flexible elongated foobar" example, I didn't mention anything about the Applicant's RtC."

      Maybe I misunderstood what it was you thought was wrong with the combination.

      In re Kemps and the related cases are about having a different reason for combination. Not about combining existing structure. It's amazing that the concept of combining the structures as they are disclosed would be controversial. You can bet that on the flip side there would be a counsel arguing how non-obvious it would be to depart from the prior art and remove the "elongated" feature. Making modifications to the prior art is something that an inventor might do, not what the ordinary artisan would do.

      Think about it this way. When there's a teaching or motivation in the prior art to make a combination, the resultant structure belongs to the public because it is an obvious structure. One cannot claim an invention of a scope that embraces a structure that belongs to the public.

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  6. Thanks for the cite to Dillon/Kemps. I'll have to check them out. My understanding of this is different than yours.

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    1. "My understanding of this is different than yours."

      Agree.

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    2. I agree with your reasoning, Karen, especially in view of the fact that many Examiners are oblivious that the alleged motivation for combining the references would have rendered the primary reference unsuitable for its intended use. Suitable for another use perhaps but not the use it was intended for.

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    3. "Suitable for another use perhaps but not the use it was intended for."

      So, how does adding a flexible elongated foobar to a widget make the widget unsuitable for its intended use?

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    4. Because the widget is no longer able to whatchamacallit in the thingamabob which was its intended use.

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    5. >TP said:
      >And the ordinary artisan would be expected to use the structure taught in
      >the prior art, rather than.modifying to remove the "elongated" feature.

      TP, I'm pretty sure you said that this use-reference-as-is rule came from In re Kemps. I've now read In re Kemps, and I don't see a discussion of this.

      Unless you're talking about the "intermediate scarifying step" discussed in Kemps?

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    6. "TP, I'm pretty sure you said that this use-reference-as-is rule came from In re Kemps. I've now read In re Kemps, and I don't see a discussion of this."

      Don't fight the record. On November 19, 2014 at 3:22 PM there were two different concepts in two separate sentences. When I saw those sentences had been misinterpreted I clarified at November 24, 2014 at 3:46 PM. In re Kemps and the related cases are about having a different reason for combination. Not about combining existing structure.

      Now clarified, twice. But you never clarified why the statement "An advantage of the unclaimed flexible foobar is irrelevant to the claimed combination" has nothing to do with the applicant's reason to combine.

      More to the point, I appreciate that your focus is on "winning" arguments, not necessarily correct arguments. But ultimately, however you frame it, the argument based on the examiner improperly picking and choosing from the teachings of the references goes to the Rule 36 graveyard at the Federal Circuit. Why? Because what a reference teaches is a question of fact. It's not a weighing of the "preponderance" of the evidence like AAA JJ is selling. The question is -- is there substantial evidence? If there's more than a mere scintilla of evidence in support of the finding of what the reference teaches, the examiner (or PTO) wins.

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    7. >I clarified at November 24, 2014 at 3:46 PM. In re Kemps and the
      >related cases are about having a different reason for combination.
      >Not about combining existing structure.
      >Now clarified, twice.

      Gotcha. I'm sure I read your first clarification, but it didn't take when I read Kemps at a later time. Thanks for the second clarification.

      >I appreciate that your focus is on "winning" arguments, not necessarily
      >correct arguments.

      Hmm. Hadn't thought in those terms. I do tend to differentiate between approaches that win before the Examiner vs those that win before the Board. Most "correct" arguments have a decent chance of winning at the Board, since they are (by definition) grounded in the law. But many of these do not work with Examiners.

      For example, Rationale-to-Combine *rarely* works with an Examiner, but can win at the Board. Where "too many references combined" won't win at the Board but seems to convince some Examiners.

      But I wonder if when you say "correct" arguments, you mean "win at the Fed Cir"? Nah, I don't think about this aspect much. Not a litigator, much less one handling appellate cases. One of the things I like about Ryan Alley's blog is that he does discusses issues like the substantial evidence standard.

      Plus, there's a difference between burden at the Board and burden at the Fed Cir, right? The burden before the Board is indeed "preponderance," while the standard for appellate review is, as you point out, the higher standard "substantial."

      Sure, my post saying the Board's treatment of Ex parte Sciver was misplaced could have also mentioned the Applicant is unlikely to win at Fed Cir. I'll give this idea some thought in future posts.

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    8. "Because what a reference teaches is a question of fact. "

      Correct.

      "It's not a weighing of the 'preponderance' of the evidence like AAA JJ is selling. The question is -- is there substantial evidence? If there's more than a mere scintilla of evidence in support of the finding of what the reference teaches, the examiner (or PTO) wins."

      Incorrect. The burden on the examiner in resolving all of the factual questions is a preponderance of the evidence. See In re Warner, In re Caveney, Ethicon v. Quigg, etc., etc., ect.

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    9. "But I wonder if when you say "correct" arguments."

      I mean correct as a matter of law.

      "The burden before the Board is indeed "preponderance."

      No. There's no one standard for everything. That would be unworkable. It depends on the issue.

      Some practitioners confuse the evidence that is required to establish a fact with the weighing of the evidence to determine unpatentability. They can cite pre-Zurko cases like Warner, Caveney, Ethicon, etc. etc. ect to newby examiners (and maybe even newby APJs) and it might maybe could sometimes work. No harm, except perhaps to the patentee and the public.

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    10. "The burden on the examiner in resolving all of the factual questions is a preponderance of the evidence."

      Of course it is.

      "In considering the PMA, the examiner made multiple factual findings relevant to our obviousness inquiry. . . . Based on our review of the PMA reference, we find that these factual findings are supported by substantial evidence." In re Morsa (post-Zurko).

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    11. Your argument that Zurko overruled Warner, Caveney, Ethicon, et al. Is funny. Unintentionally on your part I'm sure but still pretty funny. Even funnier still is your "it depends on the issue."

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    12. "funny."

      Yeah. Maybe when you quit laughing you can explain how Morsa supports your premise that the "burden on the examiner in resolving all of the factual questions is a preponderance of the evidence."

      "In considering the PMA, the examiner made multiple factual findings relevant to our obviousness inquiry. . . . Based on our review of the PMA reference, we find that these factual findings are supported by substantial evidence." In re Morsa (post-Zurko).

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    13. You clearly don't understand the difference between burdens of proof and standards of review. That's going to make any meaningful discussion with you impossible. If or when you ever figure it out, please come back and join the conversation.

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    14. Why is AAA JJ changing the subject?

      Oh, I see, Morsa. Now _thats_ funny.

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    15. I am still waiting for your explanation of how Zurko overrruled Warner, Caveney, and Eticon. Feel free to do a search of the PTAB site for how many decisions cite those cases for the exact same reason i cite them: because they clearly state that the burden on the examiner for all findings of fact is a preponderance. And you will find decisions citing those cases from both lifer and newbie APJ's.

      You really should read Caveney. It clearly explains the differences between burdens of proof and appellate standards of review. That section even has its own heading. And it's so clear even you should be able to understand it.

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    16. I admire people who can look reality straight in the eye and deny its existence.

      "You clearly don't understand the difference between burdens of proof and standards of review."

      We were discussing standards of review so that's what I assumed you were trying to comment about. Silly me.

      "Feel free to do a search of the PTAB site for how many decisions cite those cases for the exact same reason i cite them: because they clearly state that the burden on the examiner for all findings of fact is a preponderance."

      No, I won't do your legal research for you. Cite one PTAB case that says that the burden on the examiner for all findings of fact is a preponderance. One.

      Or, of course, change the subject yet again.

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    17. The following PTAB decisions all explain that the findings of fact relied upon are supported by a preponderance of the evidence, and then cite Ethicon for "explaining the general evidentiary standard for proceedings before the Patent Office."

      10144260 - (D) 2012005712 NONE 20030065788A1 04/02/2003 NONE NONE 11/18/2014 Ex Parte Salomaki NONE
      10894382 - (D) 2012006548 NONE 20060015137A1 01/18/2006 NONE NONE 11/18/2014 Ex Parte WasDyke et al NONE
      12345212 - (D) 2012005798 NONE 20090171312A1 07/01/2009 NONE NONE 11/16/2014 Ex Parte Moubayed et al NONE
      10999325 - (D) 2012004374 NONE 20060116162A1 05/31/2006 NONE NONE 11/09/2014 Ex Parte Desai et al NONE
      12025103 - (D) 2012004088 NONE 20090198503A1 08/05/2009 NONE NONE 11/04/2014 Ex Parte Marcoux-Norton et al NONE
      10313761 - (D) 2012005710 NONE 20040064363A1 03/31/2004 NONE NONE 10/29/2014 Ex Parte Mostad et al NONE
      11747678 - (D) 2012002488 NONE 20080281980A1 11/12/2008 NONE NONE 10/26/2014 Ex Parte Del Regno et al NONE
      11833790 - (D) 2012003307 NONE 20090037533A1 02/04/2009 NONE NONE 10/26/2014 Ex Parte GILFIX et al NONE
      12045780 - (D) 2012004962 NONE 20090234948A1 09/16/2009 NONE NONE 10/26/2014 Ex Parte Garbow et al NONE
      10557502 - (D) 2012005767 NONE 20070010397A1 01/10/2007 NONE NONE 10/22/2014 Ex Parte Goto et al NONE
      10394619 - (D) 2012001054 NONE 20050142215A1 06/29/2005 NONE NONE 10/20/2014 Ex Parte Kling NONE
      12048758 - (D) 2012009078 NONE 20090230140A1 09/16/2009 NONE NONE 10/16/2014 Ex Parte Weissbrod NONE
      10856704 - (D) 2012003473 NONE 20060004861A1 01/04/2006 NONE NONE 10/14/2014 Ex Parte Albanese et al NONE
      11790885 - (D) 2012004727 NONE 20080265512A1 10/29/2008 NONE NONE 10/13/2014 Ex Parte Beckman et al NONE
      12200903 - (D) 2012005587 NONE 20100057583A1 03/03/2010 NONE NONE 10/13/2014 Ex Parte Jeffs et al NONE
      12227123 - (D) 2012009826

      And those are just the decisions issued between October 1, 2014 and November 20, 2014. I'm sure if we went back a few months, or years, we'd find a couple more.

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    18. "We were discussing standards of review so that's what I assumed you were trying to comment about."

      No. We were discussing the burden on the examiner when resolving questions of fact during examination. And then you came in with your off the wall discussion of Zurko. Which has nothing to do with the examiners' burden of proof.

      "Silly me."

      Yes.

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    19. You couldn't find even one?

      "The following PTAB decisions all explain that the findings of fact relied upon are supported by a preponderance of the evidence, and then cite Ethicon for "explaining the general evidentiary standard for proceedings before the Patent Office.""

      Ok. Let's assume that to be true. Fascinating. So how do you get from that to your contention that "the burden on the examiner for all findings of fact is a preponderance."

      Show your work.

      Delete
    20. "No. We were discussing the burden on the examiner when resolving questions of fact during examination."

      I admire people who can look reality right in the eye and deny its existence.

      Karen G. Hazzah, November 30, 2014 at 10:50 AM: "The burden before the Board is indeed "preponderance," while the standard for appellate review is, as you point out, the higher standard "substantial."

      Delete
    21. "The following PTAB decisions all explain that the findings of fact relied upon are supported by a preponderance of the evidence, and then cite Ethicon for "explaining the general evidentiary standard for proceedings before the Patent Office.""

      I knew this was going to be good. So we do not actually read Ethicon v. Quigg (who has the time), we take boilerplate from PTAB decisions, add the words "examiner" and "burden," and viola! There we have it.

      Brilliant!!!

      Delete
    22. If the burden of proof on the examiner for all findings of fact is not a preponderance of the evidence, what is the burden? You might want to keep in mind when answering the question that preponderance is the lowest burden of proof there is.

      Delete
    23. "If the burden of proof on the examiner for all findings of fact is not a preponderance of the evidence, what is the burden?"

      I can't help you there, pardner. You're the one who made up this "burden of proof" for "all findings of fact." Why not set it at "beyond a reasonable doubt?"

      Delete
    24. "I can't help you there, pardner."

      Well, considering that you apparently don't understand that there is no lower burden of proof than preponderance, I would have to agree with you.

      Delete
    25. "You're the one who made up this 'burden of proof' for 'all findings of fact.'"

      You funny. Actually you may want to read J. Plager's concurrence in Oetiker. The part where he cites Caveney.

      Let me guess, you're going to respond with some cryptic quote from some garden variety case like Morsa.

      Delete
    26. "Actually you may want to read J. Plager's concurrence in Oetiker."

      I can't believe you want to start over. Is this like an RCE?

      Let's assume that Judge Plager says "the burden on the examiner for all findings of fact is a preponderance." You do understand that a concurrence is not law. Right? You understand that, right? Don't you?

      First Action Final.

      Delete
    27. Caveney is law.

      Reversed.

      Delete
    28. Still hard to believe.

      "Caveney is law."

      Ok. Let's assume Caveney is law. Where does Caveney say ""the burden on the examiner for all findings of fact is a preponderance."

      Advisory Action.

      Delete
    29. You do understand that the court's discussion in Morsa as to the standard of review they apply to PTO findings of facts is not the same as the burden of proof on the examiner (PTO) on factual determinations, don't you? You understand that, right? Examiners cannot resolve factual questions with "substantial evidence." You understand that? I don't think you do, but I'll give you the opportunity to unconfuse (for lack of a better word) yourself.

      Delete
    30. You also understand that this little gem from you is ridiculously wrong:

      "No. There's no one standard for everything. That would be unworkable. It depends on the issue."

      Don't you?

      Delete
    31. "Let's assume Caveney is law."

      You seem to be the only one having difficulty with that concept. Nobody on the PTAB or Fed. Cir. seems to be under any delusion, as you are, that it's not.

      But since you asked, here's J. Meyer from Caveney:

      "The three standards of proof generally recognized are proof by a preponderance of the evidence, proof by clear and convincing evidence, and proof beyond a reasonable doubt. SSIH Equipment S.A. v. U.S. International Trade Commission, 718 F.2d 365, 380, 218 USPQ 678, 691 (Fed.Cir.1983) (Nies, J., additional views). Because it is the only standard of proof lower than clear and convincing, preponderance of the evidence is the standard that must be met by the PTO in making rejections..."

      I told you that you should read it.

      Delete
    32. J. Miller from Caveney.

      Delete
    33. "preponderance of the evidence is the standard that must be met by the PTO in making rejections"

      So, how do you go from that to ""the burden on the examiner for all findings of fact is a preponderance."

      Show your work.

      Second Advisory.

      Delete
    34. "Show your work."

      I'm going to give you the benefit of the doubt and assume you're being deliberately obtuse in an effort to shift attention away from your silly argument that In re Morsa says examiners can resolve factual questions with substantial evidence.

      You're welcome.

      Delete
    35. "Show your work."

      So, you did understand what was needed.

      A wise person once said that some practitioners confuse the evidence that is required to establish a fact with the weighing of the evidence to determine unpatentability. I would suggest those practitioners read cases such as Rambus v. Rea to begin to understand the difference between a finding of fact and the preponderance of the evidence that is necessary to show unpatentablity.

      But you're never going to get there.

      Here we are where we began.

      Failure to prosecute.

      Notice of Abandonment.

      Delete
    36. "A wise person once said that some practitioners confuse the evidence that is required to establish a fact with the weighing of the evidence to determine unpatentability."

      The examiner has the burden to "establish" all "facts" required for making a case of unpatentability. Preponderance of the evidence is the lowest burden of proof there is. If you have some novel legal theory as to how an examiner can "establish" a "fact" with evidence that does not preponderate, I need a laugh and would really like to hear it.

      "I would suggest those practitioners read cases such as Rambus v. Rea to begin to understand the difference between a finding of fact and the preponderance of the evidence that is necessary to show unpatentablity."

      Read it. Didn't find anything in it to support your silly theory that examiners aren't required to establish every fact relied on by a preponderance. If there's a particular passage you think does, feel free to cite it.

      Delete
    37. Wow. Still here.

      "The examiner has the burden to "establish" all "facts" required for making a case of unpatentability."

      You seem to be infatuated with the word "burden." But it appears that what you're trying to talk about is the "standard" of proof. Let's assume that an examiner's finding of fact should satisfy the preponderance-of-the-evidence standard of proof. Even if so, for practical reasons one cannot say the finding "must" satisfy that standard. That's because on appellate review the deferential standard of review for the finding is "substantial evidence," which is less than preponderance of the evidence.

      Suppose the Board thinks a rejection should be affirmed. When you argue that the examiner's finding does not meet the "preponderance of the evidence" standard you're not demonstrating that the examiner's rejection would be anything other than affirmed by the Board's reviewing court. Appellate counsel might even convince the Federal Circuit that the finding does not meet the preponderance standard ---- and lose.

      Do you really think that it's a smart (and persuasive) thing to do, to tell the Board the examiner's finding does not meet the preponderance-of-the-evidence standard?

      Delete
    38. You're even more confused than I thought. Which is astonishing.

      I'm not infatuated with the word "burden." Because that's exactly what the examiner has. Read any of the cases I mentioned, Warner, Caveney, Oetiker, etc., and a slew of others, if you don't believe me. Applicants are entitled to a patent, unless the examiner proves otherwise. The examiner has the burden of proof. Yes, it is also referred to as the standard of proof. In fact, that's exactly what J. Miller discusses in heading 1 of Caveney: standards of proof and review.

      Standards/burdens of proof and standards of review are not the same. J. Miller explains why in Caveney (hint: in appeals from PTO rejections, the Federal Circuit does not find facts de novo, but, instead, reviews PTO findings). Your attempt to equate standards/burdens of proof and standards of review is simply wrong.

      For example, an accused infringer defending itself on the grounds that the patent is invalid has a burden of clear and convincing evidence to establish invalidity. (And yes, it's a burden. But if it makes you feel better we can say that the standard of proof for invalidity is clear and convincing evidence.) However, on review of the evidence and findings of fact the Federal Circuit will apply the clear error standard of review. In other words, the findings and the decision will only be reversed if "facts" that are established at trial are clearly erroneous. So can the accused infringer argue that he/she is not required to establish invalidity by clear and convincing evidence because on review the Federal Circuit is going to review the findings only for clear error. Can the accused infringer say, "Well, I don't have to establish invalidity by clear and convincing evidence, as long as my evidence and facts are not clearly erroneous I've established invalidity because that's the standard of review that's going to be applied by the appellate court."

      Can an accused infringer win that argument?

      Of course not.

      "Do you really think that it's a smart (and persuasive) thing to do, to tell the Board the examiner's finding does not meet the preponderance-of-the-evidence standard?"

      Yes. I've been doing it for 15+ years. And to their credit, every APJ that I've received a decision from has understood that examiners' findings must, yes must, meet the preponderance of the evidence standard/burden of proof.

      Delete
    39. This may help alleviate your confusion. Pages 33-36 are particularly helpful.

      http://www.stradley.com/library/files/krc-standards.pdf

      Delete
    40. And finally, J. Nies (a great judge to be sure) explains it all very clearly for you. Read her "additional comments" at the end of the decision. And yes, I know her additional comments "are not the law!!!!!" but they've been cited frequently with approval.

      Bon appetit. And happy holidays.

      http://scholar.google.com/scholar_case?case=15515942153874848860&q=718+f.2d+365&hl=en&as_sdt=3,33

      Delete
    41. "[gotta say something, gotta say something]"

      I'm almost sorry I asked you to "show your work." You've established beyond a reasonable doubt that you have no idea how standards of proof and standards of review interrelate.

      Go read Morsa (for the first time) and explain to us how the Federal Circuit said that the examiner's findings were supported by substantial evidence but really meant the preponderance of the evidence.

      You can say the examiner "must" include a sketch of a giraffe in all the office actions. But if it makes no difference on appeal whether there are any giraffes at all, how is the giraffe a "must," exactly? Show your work. (Uhh, never mind.)

      If you've actually presented your wacky theories to the Board, I can see there's no reason for the Board to correct them because you are not the one who decides what standards and burdens apply, nor whether they have been met. Are you contending that silence is consent? But it does harm your credibility to include the wacky because your real arguments might get a bit more scrutiny.

      The smart thing to do -- stick to the facts. If you're contesting a finding of fact, demonstrate (1) that it is wrong or (2) that it is not supported by the particular evidence that is relied upon for the finding. If scenario (2), use the words "not supported." Do not put in writing whatever dressing you might have for the word "supported." The result would normally be the same, and sometimes better.

      BTW, there's a new hiring of patent attorneys at the Board (check USAJobs). You might see if you qualify.

      Delete
    42. This is an interesting discussion.

      Let me write this out, to see if I have it straight in my head. There are two standards at play involving the USPTO: substantial evidence and preponderance of the evidence.

      The "substantial evidence" language comes from 5 U.S.C. § 706, which states that "a reviewing court shall ... hold unlawful and set aside agency ... findings ... found to be unsupported by substantial evidence." This language was the subject of Dickinson v. Zurko.

      The Ethicon v. Quigg language is "returns essentially to that present in an initial examination ... at which a preponderance of the evidence must show nonpatentability before the PTO may reject the claims of a patent application."

      The way I read these is the following:
      If I present evidence and the Examiner presents evidence, then the Board is to conclude unpatentability only when the weight of the Examiner's evidence > the weight of my evidence (from Oetiker, "In reviewing the examiner's decision on appeal, the Board must necessarily weigh all of the evidence and argument.")

      Referring to Gechter v. Davidson, "we hold that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review." Thus, the Board is required to make findings of fact.

      At this point, on appeal to the Federal Circuit, the review standard of Zurko/APA kicks in which the Board's findings are reviewed for substantial evidence. Here, the evidence isn't necessarily "reweighed." As stated by SCOTUS in Zurko, "This Court has described the APA court/agency 'substantial evidence' standard as requiring a court to ask whether a 'reasonable mind might accept' a particular evidentiary record as 'adequate to support a conclusion.'" I take this to essentially asking -- does the agency's findings pass the sniff test? For example, the reviewing court may have weighed the evidence differently and came out with a different result, but that may not be enough for reversal under "substantial evidence" review if the agency's findings were, in some sense, supportable. Put differently, "substantial evidence" requires that the agency's finding be supportable -- not necessarily correct.

      Thoughts?


      Under Zurko (and based upon the APA), the Board's findings/conclusions are to be reviewed for substantial evidence.


      Delete
    43. Skip that last line starting "Under Zurko ..." -- it was an artifact that I intended to delete.

      Delete
    44. "You've established beyond a reasonable doubt that you have no idea how standards of proof and standards of review interrelate."

      You funny. Here's your take on how standards of proof and standards of appeal interrelate:

      "Even if so, for practical reasons one cannot say the finding 'must' satisfy that standard. That's because on appellate review the deferential standard of review for the finding is 'substantial evidence,' which is less than preponderance of the evidence."

      Your argument essentially is that the standard of proof at the examination level collapses into or defaults to the standard of review at the appellate level. As J. Nies explained in her additional comments in the SSIH Equipment case, that is wrong. Dead wrong. Wrong to the infinite power. Go ahead and read it. For the first time. But as I know you won't, here's the explanation, from a judge who knew the law:

      "It was in the definition of that burden--in the degree of proof required--that the Commission faltered grievously. Its decision on disciplinary action was, in its words, to 'be based on substantial evidence of record.' 'Substantial evidence,' the Commission said, was not 'the 'preponderance' of the evidence'; but 'something less than the weight of the evidence'; it was, the Commission declared, 'such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.' In adopting that formulation as the criterion by which Charlton's conduct was to be gauged, the Commission hopelessly confused two legal canons designed to serve entirely distinct purposes."

      Hopelessly confused two legal canons designed to serve entirely distinct purposes. That's exactly what you've done. And are. Hopefully confused.


      Delete
    45. Here's some more J. Nies for you:

      "To be sure, on judicial review of agency action, administrative findings of fact must be sustained when supported by substantial evidence on the record considered as a whole. But that rule implicates only the reviewing court; the yardstick by which the agency itself is to initially ascertain the facts is something else again. We need not pause to elaborate on the differing norms for treatment of the evidence in administrative and reviewing tribunals, respectively. It suffices for present purposes simply to recall that in American law a preponderance of the evidence is rock bottom at the fact finding level of civil litigation. Nowhere in our jurisprudence have we discerned acceptance of a standard of proof tolerating 'something less than the weight of the evidence.'"

      And then there's this:

      "While the standard of review and the standard of proof are distinct concepts, nevertheless, the degree of proof below affects the appellate decision whether to affirm or reverse, regardless of what standard of review is applicable. For example, in reviewing whether the evidence supports a finding of fact on a 'clearly erroneous' standard, the decision might be affirmed if the standard of proof below were 'weight of evidence' and might be reversed on the same record if the standard of proof were 'clear and convincing' evidence. Thus, the appellate court must first focus on what support is needed for the trial court determination and then review, in accordance with the standard of review permitted in the type of case, whether that finding is properly supported. For example, in applying the substantial evidence standard of review (i.e., the reasonableness of the lower decision), the appellate court in Whitney v. SEC, 604 F.2d 676, 681 (D.C.Cir.1979), correctly, in my view, stated its function to be: 'We review the Commission's findings only to ascertain whether ... there is evidence which a reasonable person might find clear and convincing.'"

      So the Fed. Cir. has to consider the standard of proof below (i.e. at the PTO) when applying the substantial evidence standard of review. The question the Fed. Cir. will ask is whether there is evidence that a reasonable person might find preponderating (i.e. outweighing the evidence in opposition).

      "Go read Morsa (for the first time) and explain to us how the Federal Circuit said that the examiner's findings were supported by substantial evidence but really meant the preponderance of the evidence."

      I read it. Told you that. Pay attention. And I asked you if you had some particular cite from it that supports your theory that the examiner (PTO) can establish facts with something less than the weight of the evidence (i.e. a preponderance), go ahead and cite it. You didn't. Because you can't. The Fed. Cir. affirming because the substantial evidence standard of review determined that the findings were supported is not the same as the Fed. Cir. saying that findings may be established by evidence that is less than a preponderance.

      "BTW, there's a new hiring of patent attorneys at the Board (check USAJobs). You might see if you qualify."

      I was offered that job three years ago and turned it down. As you amply demonstrate, working at the PTO has bad effects on one's thinking ability.

      Delete
    46. Anonymous,

      Read J. Nies's "additional comments" from the SSIH Equipment case (718 F.2d 365) that I posted a link to. She explains how the standard of review considers the standard of proof very clearly and concisely.

      And when our hopelessly confused colleague jumps in with his "additional comments are not the law!!!! you know that right???!!!!" just ignore him.

      Delete
    47. As you amply demonstrate, working at the PTO has bad effects on one's thinking ability.

      TP's comments perhaps explain the affirmance rates at the Board if some APJs are applying a "substantial evidence" standard. I think part of the problem stems from the PTAB's failure (at least by some APJs) to know what it is. The PTAB is not a reviewing court -- it is an administrative tribunal that is part of the agency (i.e., the USPTO). Thus, the PTAB cannot escape the requirements placed on the agency. In this instance, the USPTO is subject to a preponderance of the evidence standard in rejecting claims, and therefore, the PTAB is also subject to the same requirement.

      Delete
    48. "Under Zurko (and based upon the APA), the Board's findings/conclusions are to be reviewed for substantial evidence."

      That is correct. But what is the practical difference if the finding by the examiner is the same as that of the Board's? Or the Board adopts the examiner's findings?

      Should the examiner say anything about the "substantial evidence" standard? Absolutely not. Should the Board say anything about the "substantial evidence" standard? Absolutely not. But step back and look at the realities.

      Delete
    49. "The question the Fed. Cir. will ask is whether there is evidence that a reasonable person might find preponderating (i.e. outweighing the evidence in opposition)."

      HAaaaaHAAAaaa!!! Stop it!! You're killing me!!!!

      Delete
    50. "TP's comments perhaps explain the affirmance rates at the Board if some APJs are applying a "substantial evidence" standard."

      Perhaps. But what is to explain the overwhelming majority of decisions that are affirmed at the Federal Circuit, with the majority of those issued without opinion?

      Delete
    51. "Under Zurko (and based upon the APA), the Board's findings/conclusions are to be reviewed for substantial evidence."

      Before AA JJJ has more graphorrhea, the above quote should not contain "/conclusions." There was so much muddled nonsense I didn't notice that. Not referring to anon at 1:18 pm -- he/she gets it better than AAAA JJ ever will.

      Delete
    52. But what is to explain the overwhelming majority of decisions that are affirmed at the Federal Circuit, with the majority of those issued without opinion?
      Uh ... the substantial evidence standard is a hard one to overcome. Don't confuse a hard standard to overcome with institutional competence. Also, the fact that the Board's analysis may pass muster under a substantial evidence standard doesn't mean that the Board necessarily performed the correct analysis and reached the correct result.

      Also, the USPTO has institutional knowledge of what cases to take to the Federal Circuit and what cases not to take to the Federal Circuit. We never hear about the appeals that never got a panel decision. By way of example, the district attorney that has a "100% conviction rate" is not necessarily one that is always correct but one that knows to be selective as to what cases to take to a jury.

      But what is the practical difference if the finding by the examiner is the same as that of the Board's? Or the Board adopts the examiner's findings?
      The finding is the finding ... whether the Board presents it anew or takes it from the Examiner. However, that doesn't matter in this discussion. If you think it does matter, please explain.

      But step back and look at the realities
      What are these "realities" you speak of?

      Delete
    53. "I was offered that job three years ago and turned it down."

      Before you said it was an APJ position you turned down.

      Anyhow, that's interesting. I was offered the nomination for Chief Justice of the US Supreme Court. I turned it down because it would cut into my time being entertained by wacky patent law theories.

      Delete
    54. "...if some APJs are applying a "substantial evidence" standard."

      Don't worry, Anonymous, the APJ's understand that the standard of proof during examination is preponderance.

      Delete
    55. "Should the examiner say anything about the 'substantial evidence' standard? Absolutely not."

      Well, if the examiner is going to say that the standard of proof is substantial evidence then I agree. Why? Because as I've explained to you like a billion times now, substantial evidence is not a standard of proof. It's a standard of review. The examiner cannot "prove" or "establish" any "fact" or anything else by substantial evidence. Why? Because substantial evidence is not a standard of proof. It is a standard of review.

      You accuse me of establishing beyond a reasonable doubt that I have no idea how standard of proof and standard of review interrelate, but it's very clearly you who has no idea. How do we know you have no idea, well because of this claptrap you posted (verbatim), which is so utterly ridiculous I'll be getting laughs from it for like the next 20 years, easily, so here we go, you posted:

      "Let's assume that an examiner's finding of fact should satisfy the preponderance-of-the-evidence standard of proof. Even if so, for practical reasons one cannot say the finding 'must' satisfy that standard. That's because on appellate review the deferential standard of review for the finding is 'substantial evidence,' which is less than preponderance of the evidence."

      Substantial evidence is "not less than" preponderance. Why is that? Do you know? Do you? Well, one more time so that even you may be able to get it: SUBSTANTIAL EVIDENCE IS NOT A STANDARD OF PROOF, IT IS A STANDARD OF REVIEW.

      As J. Miller and J. Nies in SSIH explained, and as I cited and quoted from those cases, the lowest standard of proof we have in our legal system is preponderance of the evidence. There is no standard of proof below that. There is no standard of proof that is "less than" preponderance. And yet you keep insisting that examiners can make factual findings with "substantial evidence" that is "less than" a preponderance. You are wrong. In fairness, you are hopelessly confused, but unfortunately triumphantly and willfully so.

      Substantial evidence is not a standard of proof. An examiner, or an APJ, cannot "prove" or "establish" or "resolve" any required finding of fact required to establish a case of unpatentability with substantial evidence. It cannot be done in our legal system. Preponderance of the evidence is the lowest standard of proof that we have. As J. Nies said in SSIH Equipment, "Nowhere in our jurisprudence have we discerned acceptance of a standard of proof tolerating 'something less than the weight of the evidence.'"

      Delete
    56. AAA JJ: I like your comments about the standard of proof versus standard of review -- I believe it helps in clarifying the issue. Not to defend anybody, but Judge Nies did preface the "additional comments" as follows: "These additional comments are added because this author perceives a recurring confusion, as in this case, between standards of proof at the trial level and standards of review at the appellate level with respect to the facts in the case." Given this confusion (even among those that practice at the appellate level), I'm not going to come down hard on anybody because they are having troubles understanding it.

      Still, your point stands which is that there is a difference between a standard of review and a standard of proof. As you've correctly noted, the lowest standard of proof is preponderance of the evidence (think of the mischief if there was a standard lower than that). When the Examiner and Board make their findings, preponderance of the evidence is what they have to meet.

      Based upon my readings (thank you for the links), the court's review of the agency's findings must account for the underlying standard of proof. If the underlying standard of proof is clear and convincing, then the review must take this account, which could result in a different outcome (even if the standard of review was the same, e.g., substantial evidence) had the standard of proof been preponderance of the evidence.

      Delete
    57. "HAaaaaHAAAaaa!!! Stop it!! You're killing me!!!!"

      Not sure what you find so funny. As J. Nies said in SSIH Equipment, "the appellate court must first focus on what support is needed for the trial court determination and then review, in accordance with the standard of review permitted in the type of case, whether that finding is properly supported."

      The appellate court must first focus on what support is needed for the trial court determination. So the Federal Circuit, in applying the substantial evidence standard of review, is going to first focus on what support is needed at the PTO. And what support is needed from the PTO? A preponderance of the evidence. And how do we know that? Because there is no lower standard of proof than preponderance of evidence. J. Miller told us so in Caveney, and J. Nies told us so in SSIH.

      Delete
    58. "But step back and look at the realities."

      Lamest. Internet. Concession. Ever.

      "What are these 'realities' you speak of?"

      Yes, Thomas, please let us all know what these "realities" are. The hilarity will be worth whatever wait we have to endure.

      Delete
    59. "Before you said it was an APJ position you turned down."

      I did turn down the APJ position. Would you like me to prove it to you.

      "BTW, there's a new hiring of patent attorneys at the Board (check USAJobs). You might see if you qualify."

      Why don't you see if you qualify? Or did you already try. :-(

      Delete
    60. "Don't worry, Anonymous, the APJ's understand that the standard of proof during examination is preponderance."

      I never said that any APJs are applying the "substantial evidence" standard. Another poster suggested that.

      "Substantial evidence is "not less than" preponderance. Why is that? Do you know? Do you?"

      This is going in circles. The problem is you do not acknowledge precedential cases and, from prior conversations, you do not even know what a precedential case is.

      Consider precedential cases such as In re Kotzab, In re Gartside, In re Rambus. Let's assume those precedential cases mean something. Let's assume "substantial evidence" is defined as something less than the weight of the evidence but more than a mere scintilla of evidence. What do you think "weight of the evidence" means? Do you think an appeal somehow changes the evidence? Do you?

      Delete
    61. "Also, the USPTO has institutional knowledge of what cases to take to the Federal Circuit and what cases not to take to the Federal Circuit. We never hear about the appeals that never got a panel decision. By way of example, the district attorney that has a "100% conviction rate" is not necessarily one that is always correct but one that knows to be selective as to what cases to take to a jury."

      Bingo!!!! Winner, winner, chicken dinner!!!!!

      Very astute observation. The Solicitor's office is not going to let any case appealed to the Fed. Cir. go up if they know it's a loser. The really funny thing is when they let cases like In re Klein, In re Leithem, and In re Stepan go up and the court hands them their heads on a silver platter. Too funny. Even funnier still is when they run around crowing about winning the case that ruled a tooth brush is analogous prior art to a claim for a hair brush.

      Heckuva job!!!!!

      Delete
    62. "This is going in circles."

      Uh, only because you're stuck chasing your tail.

      Is substantial evidence a standard of proof? Is it? Answer the question. Can a fact finder that has a burden to resolve certain factual questions (e.g. all of the claimed features within the scope and content of the prior art, a reason to modify/combine the prior art, a reasonable expectation of success, etc.) "prove" or "establish" the existence of any of those "facts" with substantial evidence? Can they?

      "I never said that any APJs are applying the 'substantial evidence' standard." What standard do they apply? Or probably more to the point, what standard do you think it is they are applying?

      "The problem is you do not acknowledge precedential cases..."

      Really? What precedential cases haven't I "acknowledged"? I responded to your silly take on Morsa. I read Rambus v. Rea (when it came out and again when you argued it). I asked you to cite any portion of Rambus v. Rea that you think supports your argument that examiners can resolve factual questions with "substantial evidence" and your response was...?

      "...and, from prior conversations, you do not even know what a precedential case is."

      Again, really? I'm pretty sure I know what a precedential case is. I cited Warner, Caveney, and Ethicon, all precedential cases cited regularly with approval in PTAB decisions for the exact propositions I cited them to you here. I asked you to explain your theory that Zurko overruled or had some impact on those cases, and your response was...?

      "What do you think 'weight of the evidence' means?" If you would just read J. Nies's comments from SSIH equipment, you would understand that it clearly means a preponderance of the evidence. Here's the quote from J. Nies again: "It suffices for present purposes simply to recall that in American law a preponderance of the evidence is rock bottom at the fact finding level of civil litigation. Nowhere in our jurisprudence have we discerned acceptance of a standard of proof tolerating 'something less than the weight of the evidence.'" So it's very clear from J. Nies's explanation, which she so helpfully provided to clear up the confusion so many seem to be suffering from, that "the weight of the evidence" means "by a preponderance of the evidence."

      "Do you think an appeal somehow changes the evidence?"

      I never said it did.

      I have explained to you like a hundred times in this discussion that the lowest standard of proof in our legal system is preponderance of the evidence. There is no lower standard of proof. As J. Nies explained, it is the rock bottom standard of proof in our legal system. I've cited you the PRECEDENTIAL decisions of Caveney and SSIH Equipment in support. I've asked you straight up if it's possible for an examiner to "prove" or "establish" fact with evidence that is less than a preponderance and you've refused to answer.

      So I'll ask one more time: can an examiner "establish" or "prove" a "fact" with evidence that is less than a preponderance? (Again, I'll remind you that preponderance of the evidence is the absolute rock bottom lowest standard of proof that we have in our legal system.)

      And your answer is?

      Delete
    63. "The problem is you do not acknowledge precedential cases and, from prior conversations, you do not even know what a precedential case is."

      BTW, feel free to Shepardize any of the cases I cited (Warner, Caveney, Ethicon, SSIH Equipment) and let us know the results.

      Delete
    64. "I'm not going to come down hard on anybody because they are having troubles understanding it."

      There are none so blind as those who refuse to see. And I've led him to the water, but I can't make him drink.

      Delete
    65. Do you think an appeal somehow changes the evidence?

      "I never said it did."

      Substantial evidence is defined as something less than the weight of the evidence but more than a mere scintilla of evidence.

      "What do you think 'weight of the evidence' means?" If you would just read J. Nies's comments from SSIH equipment, you would understand that it clearly means a preponderance of the evidence."

      Therefore, substantial evidence can also be defined as something less than a preponderance of the evidence but more than a mere scintilla of evidence.

      Thank you. That shouldn't have taken 3 days.


      Delete
    66. "I was offered the nomination for Chief Justice of the US Supreme Court."

      BTW, it's just "the Chief Justice of the United States." I took a comparative constitutional law class taught by the late CJ Rehnquist and he made it quite clear that it irked him when he was called the Chief Justice of the Supreme Court.

      Delete
    67. There are none so blind as those who refuse to see. And I've led him to the water, but I can't make him drink.
      You tried, and he didn't drink -- let's just leave it at that. However, thanks to your comments, I feel much better about my understanding of the issue.

      Delete
    68. "Substantial evidence is defined as something less than the weight of the evidence but more than a mere scintilla of evidence."

      and

      "Therefore, substantial evidence can also be defined as something less than a preponderance of the evidence but more than a mere scintilla of evidence."

      SFW. That still doesn't mean that examiners can "establish" or "prove" facts with it.

      Delete
    69. "...thanks to your comments, I feel much better about my understanding of the issue."

      You're welcome. Glad to help.

      Delete
    70. And if I don't have the results of that Shepardizing on my desk by Friday COB I'll just take that as another concession from you.

      Delete
    71. "That still doesn't mean that examiners can "establish" or "prove" facts with it."

      Never said they could. But you've taught yourself over these three days more than you knew before.

      "I took a comparative constitutional law class taught by the late CJ Rehnquist."

      Must have been a very quiet class.

      Delete
    72. "Never said they could."

      Most. Pathetic. Internet. Lie. Ever.

      And here's the proof (beyond even a shadow of a doubt):

      "Because what a reference teaches is a question of fact. It's not a weighing of the "preponderance" of the evidence like AAA JJ is selling. The question is -- is there substantial evidence? If there's more than a mere scintilla of evidence in support of the finding of what the reference teaches, the examiner (or PTO) wins."

      What I'm selling is gospel truth. What you're selling is examiner nonsense.

      "But you've taught yourself over these three days more than you knew before."

      I already knew everything I just schooled you in. Now you know it. The question is are you going to actually use it. Given your triumphant, willful, gleeful ignorance on the issues, I seriously doubt it. But as Anonymous said, it's your choice not to drink.

      "Must have been a very quiet class."

      We actually had some very lively discussions.

      Delete
    73. I read Caveney and the other cases -- they say the Federal Circuit reviews PTO findings under the clearly erroneous standard. Now I understand. The Supreme Court (Zurko) cannot change that.

      Delete
    74. "I did turn down the APJ position. Would you like me to prove it to you."

      Sure. Just post a link to the offer letter. You can redact the name if it's not AAA JJ.

      Delete
    75. the late CJ RehnquistDecember 3, 2014 at 11:29 PM

      AAA JJ. Who?

      Delete
    76. Judge Nies. Didn't she write In re Travato?

      Delete
    77. No, it was Trovato.

      "Trovato does not claim to have invented a new kind of computer which the recited mathematical algorithm controls. Nor do they claim that the recited mathematical algorithm has been combined with a new memory controlling a computer known to the art. Putting Trovato's claims in their most favorable light, the most they provide is a systemic way in which to compute a number representing the shortest path. A new way to calculate a number cannot be recognized as statutory subject matter."

      Delete
    78. "Judge Nies. Didn't she write In re Trovato?"

      Yes, she did. But please, don't bring that up. It could cause another bout of graphorrea.

      Delete
    79. "The Supreme Court (Zurko) cannot change that."

      Are you saying the Supreme Court cannot overrule the Federal Circuit? Where did you go to law school?

      Delete
    80. "Substantial evidence is "not less than" preponderance. Why is that? Do you know? Do you?"

      That is a faulty premise. There is no "why."

      Delete
    81. I think this topic is setting an "All Things Pros" record for cryptic comments from the examiner peanut gallery.

      Delete
    82. "I think this topic is setting an "All Things Pros" record for cryptic comments from the examiner peanut gallery."

      I agree. I've never heard of this "Federal Circuit" I do know there's a Supreme Court in Washington, DC.

      Delete
    83. And it's got a chief justice!!!

      Delete
    84. "Also, the USPTO has institutional knowledge of what cases to take to the Federal Circuit and what cases not to take to the Federal Circuit."

      Fair enough. So something slightly less than the overwhelming majority of the appeals to to the Fed Cir are Rule 36.

      Delete
    85. Substantial is less than preponderance. Even AA JJJ understands it now.

      Delete
    86. "So something slightly less than the overwhelming majority of the appeals to to the Fed Cir are Rule 36."

      You got any data to back that up? You got any numerical value you'd like to assign to "slightly less than the overwhelming majority"? Is that 85%? 75%?

      Just curious.

      "Substantial is less than preponderance."

      And examiners and APJ's still can't resolve the required factual determinations with substantial evidence. Even hopelessly confused Thomas, and you Anonymous, understand that now.

      Class dismissed.

      Delete
    87. I periodically review all Fed Cir decisions of PTO-originated appeals. I haven't done an actual calculation, but yeah, I'd characterize Rule 36 disposals as "the overwhelming majority". North of 75%, as a guesstimate.

      Delete
    88. Karen,

      Thanks. But as was pointed out above, as the PTO has total discretion over which appeals can actually go to the Fed. Cir., I'm not impressed. Especially when they think that cases like Leithem, Klein, and Stepan are winners that they let go up, and then get smacked upside the head by the court. Those are hugely embarrassing fails on their part considering that they had every opportunity to prevent the court from hearing those cases.

      Delete
    89. "the PTO has total discretion over which appeals can actually go to the Fed. Cir.,"

      That's interesting. And wrong. But it really helps your argument, doesn't it?

      35 usc 141: "An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit."

      Would you like to try again?

      Delete
    90. You funny.

      The solicitor's office can always request a remand from the court for any case they want to "reevaluate." See, for example, U.S. Application 10/190,039.

      Delete
    91. 35 USC 134(a) - An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.

      Does that mean that the examiners and SPE's and QAS's and TC Directors and all the other useless GS-15 know-nothings-do-nothings have to send every appeal up to the PTAB? Or do the examiner, the SPE, the QAS, etc. get to decide which cases go up to the PTAB?

      Hard to believe anybody could be so delusional. You're such a lifer apologist for the PTO that you can't think straight.

      Delete
    92. "The solicitor's office can always request a remand from the court for any case they want to "reevaluate.""

      I don't understand what it is you think you're trying to say.

      One of the following statements is true. Select the true statement.

      (A) The PTO has total discretion over which appeals can actually go to the Federal Circuit.

      (B) The PTO does not have total discretion over which appeals can actually go to the Federal Circuit.

      Delete
    93. "I don't understand what it is you think you're trying to say."

      Probably because you're besotted from the massive jug of PTO lifer kool-aid you drink every day.

      The true statement is (A).

      Delete
    94. (A) The PTO has total discretion over which appeals can actually go to the Federal Circuit.

      "The true statement is (A)."

      35 usc 141: "An applicant dissatisfied with the decision in an appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the decision to the United States Court of Appeals for the Federal Circuit."

      I admire a person who can look reality straight in the eye and deny its existence.

      Is there any reason why we should believe any of your other pontifications about patent law?



      Delete
    95. Did the applicant in 10/190,039 get her appeal heard by the Fed. Cir.?

      Put the kool-aid down. You'll be glad you did.

      After you sober up, maybe you'll tell us all about these "practical realities" you were alluding to, but would never discuss any further.

      Here's a "practical reality" for you, my hopelessly confused friend: the solicitor can always, ALWAYS, admit that the rejection and affirmance were sh!tty and ask the Fed. Cir. "Can we haz do over pleeze???!!!!" And the Fed. Cir. will grant a remand.

      Do you deny that?

      Delete
    96. "Is there any reason why we should believe any of your other pontifications about patent law?"

      That's pretty funny coming from the clown who posted this:

      "Because what a reference teaches is a question of fact. It's not a weighing of the 'preponderance' of the evidence like AAA JJ is selling. The question is -- is there substantial evidence? If there's more than a mere scintilla of evidence in support of the finding of what the reference teaches, the examiner (or PTO) wins."

      Even the editors of the MPEP know you're full of sh!t. See, for example, MPEP 2142 ("The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.")

      Keep staring reality straight in the eye and deny its existence. It's clearly working for you.

      Delete
    97. Gone for a few hours, and it appears the discussion has moved on to another issue, but I want to revisit because I've lost track of the relevance

      AAA JJDecember 10, 2014 at 2:25 PM wrote:
      >the solicitor can ALWAYS admit that rejection and affirmance
      >were sh!tty and ask Fed. Cir. "Can we do over ???!!!!" And
      >Fed. Cir. will grant a remand.

      And the reason we're discussing the Solicitor's discretion to remand back down to the Board rather than getting a decision by the Fed Cir is ... because this discretion overstates / inflates the affirmance rate?

      IOW, you're saying it's only as ~ 75% because the Solicitor cherry picks by dropping losers?

      Hopefully we now all agree the Solicitor *can* choose to drop loser cases. I'm curious if there is any reason to think the Solicitor actually does so. Maybe the answer is simply that pulling loser cases from appeal is good lawyering?

      Delete
    98. "And the reason we're discussing the Solicitor's discretion to remand back down to the Board rather than getting a decision by the Fed Cir is .."

      What? You've been fooled by somebody making stuff up? Being turned down for a patent attorney position at the PTAB does not make one an expert.

      Read the statutes (35 usc 141 et seq.). When an applicant files a notice of appeal to the Federal Circuit, jurisdiction passes to the Federal Circuit. The Solicitor does not have "total" discretion. The Solicitor has _zero_ discretion "to remand back to the Board." Repeating "total discretion" over and over does not make it so. Just read the statutes.

      Delete
    99. Let's recap, shall we?

      After being taken to the woodshed on the law of the examiner's standard (i.e. burden) of proof, our hopelessly confused friend responds with, "Well, there are practical realities that must be considered."

      When asked to explain these "practical realities" our ever cryptic colleague responds with, "The overwhelming majority of appeals from the PTO to the Fed. Cir. are Rule 36 affirmances." (Still waiting to hear some explanation of the relevance of that.)

      When it's pointed out that the PTO has total discretion over what appeals are actually heard by the Fed. Cir., with the very real example of 10/190,039 being provided, in the saddest whimpering tones the internet has ever hear our buddy responds with, "But, but, but the statute says...."

      PA. THE. TIC.

      Ask the appellant in 10/190,039 how helpful the statute was.

      "The Solicitor has _zero_ discretion 'to remand back to the Board.'"

      I never said the solicitor did. I said the solicitor can always admit that the rejection and the affirmance are wrong and the Fed. Cir. will grant a remand.

      Does that really lame tactic (i.e. totally misstate the opponent's argument and then respond to the misstatement) really work for you in your OA's? I guess it must have a decent success rate for you because it's your go to routine.

      Keep up the record breaking outstanding quality work you're doing over there.

      Delete
    100. Still here? Incredible. And I see you've fooled at least one person.

      "The PTO has total discretion over which appeals can actually go to the Federal Circuit."

      So, he selects a case from eight years ago to prove his point. AA JJJ gets in the most trouble when he gets specific (rarely) and there's a written record that anyone can verify. Unfortunately for JJ, the case appealed to the Fed. Cir. in 10/190,039 was vacated and remanded by the panel. The panel even wrote an opinion. Judgment was entered December 19, 2006, with the mandate issuing February 23, 2007. The vacate and remand was a decision on the merits, just like any vacate and remand. The rejection was set aside and the case was returned to the jurisdiction of the PTO. It counted as one of the 3 per cent of the cases from the PTO in 2006 that were reversed on appeal.

      The Director wanted to replace an anticipation rejection with one for obviousness. (It's the Director's call; not the Solicitors.) The case was under Federal Circuit jurisdiction; disposition was entirely up to the Fed. Cir. The panel returned the case to PTO jurisdiction with the understanding that a new rejection would be entered. When the case returned, the examiner entered an obviousness rejection that was later affirmed by the Board. The application went abandoned. No patent issued.

      So, that case does not support your contention that "the PTO has total discretion over which appeals can actually go to the Federal Circuit." But just keep repeating it. Maybe somebody else will get fooled.

      Delete
    101. "Still here?"

      Yeah. BTW, switching between the Thomas and Anonymous screen names isn't fooling anybody. You've been here the whole time.

      "It's the Director's call; not the Solicitors."

      Right. Because the Director makes that decision in a vacuum. Without any input from the solicitor. You might want to read Ms. Gongola's brief in 10/190,039.

      "The vacate and remand was a decision on the merits..."

      Then why did Ms. Gongola argue in her brief that there was nothing on the merits for the court to decide?

      "It counted as one of the 3 per cent of the cases from the PTO in 2006 that were reversed on appeal."

      Decisions that are vacated are not reversed. If they were, we would use the same word for it. But we don't. So that's your first clue.

      "So, that case does not support your contention that 'the PTO has total discretion over which appeals can actually go to the Federal Circuit.'"

      Actually, it does. Go and read Ms. Gongola's brief.

      "So, he selects a case from eight years ago to prove his point."

      It's one more case than you've cited to prove your argument that there are nebulous and mysterious "practical realities" to consider regarding the law of the examiner's burden of proof.

      You're welcome to cite even one case in support of that wacky theory of yours. I'd be glad to review it.

      Delete
    102. "Unfortunately for JJ, the case appealed to the Fed. Cir. in 10/190,039 was vacated and remanded by the panel."

      BTW, I never said it wasn't. You're doing that whole "misstate the opponent's argument and respond to the misstatement" thing again. Unfortunately for you, you haven't been able to fool even a single person with that. I'd tell you to just keep repeating it, but you're going to do that anyway so why bother?

      Delete
    103. Excellent!!! "Denial ain't just a river in Egypt."

      One small, constructive criticism. You forgot to repeat your basic tenet. Really, it might not sound so ridiculous after a time.

      "The PTO has total discretion over which appeals can actually go to the Federal Circuit."

      Delete
    104. So I guess that means you can't find even one case in support of your "practical realities" theory.

      I didn't expect that you would.

      Delete
    105. "So I guess that means you can't find even one case in support of your "practical realities" theory."

      I already presented the "one case." Not surprising that it was missed by those who use simple, ordinary words like "appeals," "total," and "discretion" without knowing what they mean.

      Delete
    106. That quote from Morsa? You're even more hopelessly confused than I originally thought.

      Wow. Simply wow.

      Delete
    107. If any of you contributors to this thread are interested in a guest post on my blog, send me an email and we can discuss. Use an anonymous email address if you don't want to out yourself.

      Delete
  7. "Yeah, that certainly can be a problem, and I've dinged Applicants before for arguing no-TSM. OTOH, in this particular case the Examiner explicitly relied on TSM. So IMHO all the Applicant needed to do to show error is attack the TSM.

    Do you think the Applicant should have gone further and explain how the Examiner's combination wasn't rational?

    Or are you saying that the Applicant should have made the same argument but couched it in post-KSR terms: the Examiner failed to articulate a rationale with rational underpinnings."

    The only thing you should argue is: whether there exists a reason to modify/combine the prior art is a question of fact that the examiner must establish by a preponderance of the evidence.

    See, for example, the PTAB decision issued today (11/21/2014) in 11/965,883 where the panel clearly states on pages 9-10 of the decision that the evidence cited by the examiner (the specific portions of the primary and secondary references) don't support the conclusion of obviousness. In other words, the articulated reasoning provided by the examiner was not supported by a preponderance of the evidence.

    I don't categorize my arguments as either TSM or any of the other "KSR rationales" in the MPEP. I identify the reason the examiner proffers for the modification/combination and the evidence cited in support of that reason and if the evidence doesn't meet the burden (preponderance), I argue that.

    ReplyDelete
    Replies
    1. AAA JJ, Confident and competent enough. If you actually work in the industry, assuming you do. Our company would very much like your help. Can you hit me up at luke.landgren@gmail.com ?

      Delete
    2. Sorry, I'm not available. Somebody has already paid for all of my time.

      Delete
  8. >I don't categorize my arguments as either TSM or any of the other
    >"KSR rationales" in the MPEP.

    Gotcha. My mind seems to work by categorizing.

    >I identify the reason the examiner proffers for
    >the modification/combination

    Me too. I think that's an important part of the structure of a good
    argument -- identify the Examiner's position.

    >if the evidence doesn't meet the burden (preponderance),
    >I argue that.

    I think I'm following you here ... I think we're talking about framing the issue.

    In your earlier comment, you dinged the Applicant in Sciver for "specifically referring to the TSM test". I now read that as the Applicant should have framed the issue differently -- as "the examiner did not establish, by a preponderance of the evidence, a reason to modify/combine the prior art."

    ReplyDelete
    Replies
    1. "the examiner did not establish, by a preponderance of the evidence, a reason to modify/combine the prior art."

      I am now going to add this phrase to my obviousness rejection replies, along with there being no reasoning with a rational underpinning.

      Delete
    2. "I am now going to add this phrase to my obviousness rejection replies, along with there being no reasoning with a rational underpinning."

      It might be helpful if the examiner did not actually provide any reasoning with a rational underpinning.

      Delete
    3. "It might be helpful if the examiner did not actually provide any reasoning with a rational underpinning."

      No worries, Captain Obvious. The vast majority don't provide anything more than the usual circular reasoning slapped down in In re Chaganti, 2014, WL 274514, *4 (Fed. Cir. 2014) (“It is not enough to say that . . . to do so would ‘have been obvious to one of ordinary skill.’ Such circular reasoning is not sufficient–more is needed to sustain an obviousness rejection.").

      Delete
  9. I presume I'm not the only one who is troubled by the text of the "Reason to Combine" section of the decision, which reprimands the Board for giving no reason, but then imputes to the Board the reason "common sense" and declares that to be reason enough.

    But I'm looking in from Europe, and cannot imagine an EPO Examiner writing such unsubstantiated, pull it out of your pocket tosh. EPO Examiners work under a mandatory TSM rubric. What do readers in the USA think of "common sense" as a reason to combine?

    ReplyDelete
  10. It seems to me that it's common sense for examiner to consider what the skilled artisan would have thought was common sense. Otherwise obviousness is relegated to only those things that an automaton can find verbatim in a reference.

    ReplyDelete
    Replies
    1. >consider what the skilled artisan would have thought was common sense.

      Yeah, but how do you decide what a POSITA "would have thought was common sense" ?

      Common sense is a slippery slope. (As is Official Notice.) Allowing Examiners to make assertions not supported explicitly by the record gives Examiners carte blanche to assert whatever they want.

      Sure, sometimes the Examiner is right, the claim shouldn't be allowed. But sometimes the Examiner is wrong. A regime that allows Examiners to pull stuff out of nowhere, label it "common sense" and get away with it, is flawed. Fundamentally unfair.

      The good thing about TSM is that it grounds the Examiner in the references. The weakness of TSM is that it doesn't easily account for the background knowledge of a POSITA, and as a result, can often let obvious stuff through.

      Delete
    2. This is MaxDrei. Good reply Karen, thanks.

      The EPO's DG1 operates a TSM regime under which obvious stuff gets routinely and predictably filtered out, if not by the Examining Division then by the Opposition Division. At the EPO it is mandatory to factor in the background knowledge of the skilled addressee. The regime seems to me to be easy to operate, in a way that is fair to both the patent owner and the opponent.

      So can you say more about why, in the USA, it is not easy to operate a TSM regime that takes account of the background knowledge of the POSITA? It's an evidence thing, I suppose.

      It's a shame, I think, because TSM takes the hindsight out of the obviousness determination (unlike deciding it according to what is "common sense").

      Delete
    3. >EPO [requires] factor in the background knowledge of POSITA.
      > why, in the USA, it is *not* easy to operate a TSM regime
      >that takes account of the background knowledge of the POSITA?
      >It's an evidence thing, I suppose.

      Exactly. If it's not found in a written reference, how do we know that it really *is* part of the "background knowledge of a POSITA"?

      So are you saying that EPO Applicants aren't generally concerned with Examiner overreach in accounting for background knowledge?

      Delete
    4. Examiner over-reach? Concerned? Well, Karen, yes and no, says MaxDrei. Mainland Europe runs the civil (Roman) system of law, like Japan, Korea, China, most of the world, in fact. They don't understand the system of English common law. So they don't understand what you mean by "over-reach".

      An EPO tribunal thinks itself capable of "donning the mantle" of the PHOSITA, without any need for evidence.

      When it makes the wrong assessment of the cgk (common general knowledge) the litigant who thinks it wrong will endeavour (by filing evidence) to disabuse it of its misguided stance.

      Does the EPO system work? After a fashion. I don't get many complaints.Perhaps that is because the Examiners are in general quite knowledgeable in their rather narrow technical specialisations.

      Delete
    5. Interesting. Thanks for the perspective.

      Delete
  11. Common sense? Tis! Tisnt! Tis! Tisnt! Ad Infinitum.

    ReplyDelete
  12. Just handed Topce (aka Thomas Pain and whatever other sock puppets he was using above) his head over at Patently-O. At least over there he explained his theory. It was hilariously wrong, but he seems to have seen the light. Finally.

    http://patentlyo.com/patent/2015/10/applicant-admissions-application.html

    ReplyDelete