Wednesday, December 10, 2014

Board finds no inconsistency with relying on Official Notice for a claimed feature while also asserting that this feature isn't supported by Applicant's sparse description

Takeaway: The Examiner denied the Applicant's priority claim to a provisional, for failure to adequately describe a claim limitation. According to the Examiner, some description was present, but not in the context claimed. The Examiner then used Official Notice for this same feature in an obviousness rejection. On appeal, the Applicant argued the "facial inconsistency" of these two positions: "asserting the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature." The Board was not persuaded by the inconsistency argument, and cited to Vas-Cath Inc. v. Mahurkar to explain that "a claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application." (Ex parte Timbadia, PTAB 2013.)

Details:
Ex parte Timbadia
Appeal 2010002877; Appl. No. 10/712,938; Tech. Center 3700
Decided: March 25, 2013

The application was directed to automated test-taking. During prosecution, the Applicant amended to add these limitations:
     delivering a changed state object at the same time that a triggering event occurs on the testing station;
     upon failure of the testing station, the [state objects] ... are used to recreate the examination on the testing station ... and
     wherein the user will not be penalized for the time that questions are not available.
(Emphasis added for limitations at issue.)
In response, the Examiner switched to a different secondary reference in the obviousness rejection (Ashley)of all independent claims. The Examiner relied on this secondary reference for the "at the same time" feature, and took Official Notice of the new "not penalized" feature. At the same time, the Examiner denied the priority claim because the newly added "at the same time" and "not penalized" features were allegedly not present in the provisional. However, Examiner did not reject any claims under written description or enablement.

In an After Final response, the Applicant argued that the Ashley reference was not prior art because the Applicant's provisional did provide an enabling disclosure for the newly claimed features. In support of this argument, the Applicant pointed to to specific passages in the provisional and explained their relevance. The Applicant also traversed the Official Notice as follows:
Applicants cannot fail to note that this portion of the claims so evidently and precisely enabled by the provisional application is also the same portion of the claims for which the Examiner has relied upon official notice. Per MPEP 2144.03, Applicants thus traverse such taking of official notice as improper as lacking sufficient documentary evidence. Citation of a post-dated alleged prior art reference by the Examiner is erroneous not only for the obviousness rejection presented, but also as grounds for taking official notice that the claimed feature is of such notorious character as capable of instant and unquestionable demonstration as to defy dispute. See In re Zurko, 258 F.3d at 1386.
The Applicant appealed. In the Brief, the Applicant specifically traversed the issue of the priority claim. The Applicant explained that the provisional application described using a test state to recover an exam after testing station failure, and this test state includes an elapsed test time that takes into consideration the amount of time that a test is unavailable to the user. Thus, Ashley was not prior art. In the obviousness section of the Brief, the Applicant also argued that Ashley did not teach the "at the same time" limitation. Notably, this section did not discuss the "not penalized" claim limitation or the Examiner's reliance of Official Notice for this feature.

In the Answer, the Examiner maintained the obviousness rejection of all independent claims. The Examiner discussed the denial of priority in the obviousness rejection. The Examiner acknowledged that the "not penalized" claim language was present in the provisional, but noted this was in the context of accounting for transmission latency rather than in the context of a recovery function (as claimed). In a Response to Arguments section, the Examiner noted there were "significant modifications" and "stark differences" between the provisional and the application on appeal. Also, the Applicant had failed to adequately traverse the Official Notice during prosecution, thus admitting that the "not penalized" feature was well-known.

The Applicant filed a Reply Brief which included a section titled "the Examiner's use of Official Notice was properly traversed, is improper and is Squarely Inconsistent with the Office's Contention that Subject Matter at Issue is Not Supported by Applicants'Own Provisional Application." The Applicant argued that the traversal was proper, as follows:
[T]he traversal highlighted the facial inconsistency in the examiner's logic of asserting that the feature was unquestionably and notoriously known in the prior art (which was silent about the feature), while contending that the applicant's provisional application, which provided textual support for the feature, nevertheless was not sufficient to establish a priority for the feature.
On appeal, the Board made findings with regard to "Claims 1 and 13 – Written Description Support" since this issue was contested and impacted the obviousness rejection. The Board found that all features recited in claims 1 and 13 were adequately described in the provisional, so that Ashley was not prior art. With regard to the "not penalized feature," the Board found that the Examiner’s interpretation of what the provisional application describes was "unreasonably narrow." The Examiner incorrectly focused on the provisional's teachings about accounting for transmission latency, but a person of ordinary skill reading the document as a whole "would conclude that recreating the test based on the state of the test at the time of a testing station failure would require not penalizing the user for time lost due to this failure."

Since Ashely was not prior art for claims 1 and 13, the Board reversed the obviousness rejection of these claims. However, claim 20 used slightly different language to describe the "initial state object" feature, which the Board found was not adequately described in the provisional. The Board therefore considered the obviousness rejection of claim 20 on the merits, and affirmed.

With regard to the "at the same time" feature, the Board found no error in the Examiner's finding that Kershaw taught this feature. With regard to the "not penalized" feature, the Board found that the Applicant had not properly traversed the taking of Official Notice because it did not "explain why the noticed fact is not considered to be common knowledge or well-known in the art" (citing In re Boon, 439 F.2d 724, 728 (CCPA 1971)).

The Board also commented on the Applicant's inconsistency argument – that the Notice'd feature was completely missing in the reference yet textually supported by Applicant's provisional:
Appellants have not provided persuasive argument as to why the Examiner’s findings are inconsistent. A claimed feature that is common knowledge in the art must nevertheless have adequate written description support in the specification to demonstrate to a person of ordinary skill in the art that the inventors had possession of the claimed invention at the time of the filing of the application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir. 1991).
Finally, the Board noted that any alleged inconsistency was resolved by the Board's finding that the subject of the Official Notice ("not penalized" feature) was indeed properly supported in the provisional application.


My two cents: The Applicant's inconsistency argument has intuitive appeal, but is ultimately flawed. The argument goes like this: "Surely the Examiner's characterization of a feature as 'well-known' indicates that very little description is needed, in which case a sparse description of the same feature by the Applicant shouldn't result in a denial of the priority claim." However, this argument is flawed because it confuses enablement and written description.

A reference has only to enable. Since this can take into account the background knowledge of a POSITA, a sparse description may indeed be enough for enablement. On the other hand, the Applicant's spec has to comply with both the enablement and the written description requirement. And written description "must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." (Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.Cir.2010) (en banc)).

Unfortunately, when you have a sparse description of a particular embodiment that falls within the claim scope, then try to argue that a POSITA can fill in the rest, the case law on written description goes against you:
The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.
Lockwood v. American Airlines, Inc., 107 F. 3d 1565 (Fed. Cir. 1997).
Or, put another way:
A description of one method . . . does not entitle the inventor . . . to claim any and all means for achieving that objective."
LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005).

50 comments:

  1. This is in contrast to the European approach, according to which "Since the reader is presumed to have the general technical background knowledge appropriate to the art, the examiner should not require the applicant to insert anything in the nature of a treatise or research report or explanatory matter which is obtainable from textbooks or is otherwise well-known."

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    1. That maxim applies to the US Enablement requirement, but not really to Written Description. Does the European approach distinguish between Enablement -- how to make/use - and Written Description -- the inventor "possessed" the claimed invention ?

      Given this distinction, I think the rule that background knowledge helps with one but not the other makes sense. Simple hypo. If the spec describes only one specific type of fuel-efficient engine, background knowledge may enable the POSITA to apply those teachings to other variations of engines. But the limited description might NOT show that the inventor "possessed" claims to those other engines. So a broad claim might pass Enablement, yet not pass Written Description,


      Delete
    2. MaxDrei here. Yes Karen, Europe does. For me WD is like the EPCs "added matter" provision. Also in Europe, at the filing date, you have to enable (Art 83) and be in possession (Art 123,EPC) of the subject matter, exactly as it is claimed.

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    3. Max, thanks for the info. Can you offer any insight on the
      first Anon comment about "general background technical knowledge" and how that interacts with possession ?

      I read his statement to mean that the typical EPC Examiner would not have given a WD / possession rejection even if the disclosure was sparse because it takes into account "general background technical knowledge". Yet the heart of WD / possession isn't what *other people* know, it's about what the Applicant knew.

      As I noted, Enablement is different and does indeed take into account what POSITAs know.

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  2. "...the Board found that the Applicant had not properly traversed the taking of Official Notice because it did not 'explain why the noticed fact is not considered to be common knowledge or well-known in the art' (citing In re Boon, 439 F.2d 724, 728 (CCPA 1971))."

    Very disappointed to see that my friend Ed Brown misunderstands the law in such a manner.

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    1. So you're saying the Board mis-applied In re Boon? That Boon has no such requirement for such an explanation?

      That's my view too -- that the Board has stretched In re Boon way too far.

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    2. Bingo.

      The court in Boon said, "This will not be the case, however, where such a reference is a standard work, cited only to support a fact judicially noticed and, as here, the fact so noticed plays a minor role, serving only "to `fill in the gaps' which might exist in the evidentiary showing made by the Examiner to support a particular ground for rejection." Ibid. Under such circumstances, as we held in Ahlert, an applicant must be given the opportunity to challenge either the correctness of the fact asserted or the notoriety or repute of the reference cited in support of the assertion."

      Examiners attempting to meet their burden of proof by a preponderance that all of the claimed features are within the prior art cannot meet that burden by taking Official Notice that the features are well known. Such reliance on "facts" that are Officially noticed do not play a minor role serving to fill in the gaps in the examiner's evidentiary showing.

      The court in Boon also said, "We feel it to be perfectly consistent with the principles governing procedural due process to require that a challenge to judicial notice BY THE BOARD contain adequate information or argument so that on its face it creates a reasonable doubt regarding the circumstances justifying the judicial notice." (All caps emphasis added.)

      Neither of the cases, Boon and Ahlert, routinely cited by the PTO are applicable to the examiner's reliance on Official notice. The one case the PTO routinely cites regarding examiners is Chevenard, which is pre-APA, and which states, "In the absence of anything in the record to contradict the examiner's holding, and in the absence of any demand by appellant for the examiner to produce authority for his statement, we will not consider this contention."

      It's clear that the only thing required to "properly traverse" an examiner's reliance on Official notice is a demand that the examiner produce documentary evidence.

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    3. Wish someone would take *this* issue up to the Fed. Cir. Official Notice can be easily abused by Examiners, and is nigh impossible to traverse under the PTO's interpretation (MPEP blessed by the PTAB).

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    4. "Examiners attempting to meet their burden of proof by a preponderance"

      Chuckle.

      "It's clear that the only thing required to "properly traverse" an examiner's reliance on Official notice is a demand that the examiner produce documentary evidence."

      Appeal, discretion, total. Add to the list "traverse." A traverse is not a demand for evidence. A traverse is a denial of an allegation of fact.

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    5. "A traverse is a denial of an allegation of fact."

      Lulz upon lulz.

      An allegation of fact? What's that? Is it actually a fact, or just an allegation of one?

      Read Chevenard.

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    6. BTW, I did put "properly traverse" in quotation marks to indicate that the requirement that applicants "traverse" an examiner's reliance on Official notice is complete bullsh!t. There's no requirement that applicants "traverse" what you have so comically dubbed an examiner's "allegation of a fact."

      Delete
    7. "An allegation of fact? What's that? Is it actually a fact, or just an allegation of one?"

      Ok. We'll add "allegation of fact" to the list. I suspect "Official Notice" is on the list as well.

      "TRAVERSE a common law pleading that denies the opposing party's allegations of fact." Barron's Law Dictionary Third Edition 1991.

      "Traverse. In common law pleading, a traverse signifies a denial. Thus, where a defendant denies any material allegation of fact in the plaintiff's declaration, he is said to traverse it, and the plea itself is thence frequently termed a 'traverse.'" Black's Law Dictionary 1979.

      Thus, the legal definition of "traverse."

      I know you don't go by things like Supreme Court precedents, Federal Circuit precedents, Federal statutes, and (eeewwww!!) legal references. There's no use for any discussion of what constitutes a "traverse," or, more important, what constitutes a "proper traverse." You'll just change the subject and make stuff up.

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    8. Well, once you show me anything that even remotely suggests that examiners can meet their burden of proof by a preponderance by merely making "allegations of fact" then maybe we'll have something to actually discuss. Until then, the "requirement" that applicants "properly traverse" the examiner's taking of Official notice will remain exactly what I said it was: complete bullsh!t.

      I remember when 6 told me on Patently-O that Official notice was an examiner's request for an admission from the applicant. I lulzed and lulzed.

      You're even more confused than 6. A remarkable achievement in its own right I guess.

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    9. The self-anointed expert on the examiner's "burdens" did not know that Official Notice is an allegation of fact. Did not know what an allegation of fact is. Did not know what "traverse" means. No wonder you people have trouble with properly traversing a noticed fact.

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    10. "Wish someone would take *this* issue up to the Fed. Cir. Official Notice can be easily abused by Examiners, and is nigh impossible to traverse under the PTO's interpretation (MPEP blessed by the PTAB)."

      Somebody tried in an appeal from an ex parte reexam, but the solicitor used his total discretion to remand the appeal. :-) I'm looking through my notes for the case and will send it to you if/when I find it.

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    11. "The self-anointed expert on the examiner's 'burdens' did not know that Official Notice is an allegation of fact. Did not know what an allegation of fact is. Did not know what "traverse" means. No wonder you people have trouble with properly traversing a noticed fact."

      Again, let me know how the examiner satisfies the burden of establishing the factual basis for the rejection by a preponderance by making "allegations of fact."

      You understand that ex parte patent prosecution is not civil litigation, right? There's no "requests for admissions" and such in ex parte prosecution. Please let us all know that you understand this very basic distinction.

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    12. "There's no "requests for admissions" and such in ex parte prosecution. Please let us all know that you understand this very basic distinction."

      Judas Priest, can somebody please stop the expert from pontificating before anybody else gets hurt?

      37 cfr 1.105(a)(2) --

      Requirements for factual information known to applicant may be presented in any appropriate manner, for example:

      (i) A requirement for factual information;
      (ii) Interrogatories in the form of specific questions seeking applicant’s factual knowledge; or
      (iii) Stipulations as to facts with which the applicant may agree or disagree.

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    13. You're comparing Rule 105 requirements for information during ex parte patent prosecution with interrogatories and requests for admissions in civil litigation?

      Congratulations, you've officially past the point of no return on your journey to hopeless confusion.

      Here's a practical reality for you, because I know you like those: Rule 105 is essentially a dead letter.

      In my 15+ years of practice I've received one Rule 105 requirement. I very expertly "traversed" it (you like that, huh?) and received a fairly prompt notice of allowance in return.

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    14. "You're comparing Rule 105 requirements for information during ex parte patent prosecution with interrogatories and requests for admissions in civil litigation?"

      Why do you feel the need to make this stuff up? I'm comparing Rule 105 with your assertion that there's no "requests for admissions and such" in ex parte prosecution. I apologize for quoting your exact words.

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    15. "In my 15+ years of practice I've received one Rule 105 requirement. I very expertly "traversed" it (you like that, huh?) and received a fairly prompt notice of allowance in return."

      I'm not impressed, because at that time you did not know what the word "traverse" means.

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    16. "Rule 105 is essentially a dead letter."

      Why are you changing the subject? Oh, reading back in the thread, I understand. I would change the subject, too.

      But the Federal Circuit disagrees with your assessment of Rule 105. You seen ti have no knowledge of the law of the Federal Circuit law. So what else is new?

      Is Star Fruits cryptic to you? It would not be "cryptic" to an expert on patent examining procedure.

      "In my 15+ years of practice I've received one Rule 105 requirement."

      What a cutting edge practice you have!!!

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    17. >>In my 15+ years of practice I've received one Rule 105 requirement."
      >What a cutting edge practice you have!!!

      Really ??? You're going to ding AAA JJ because he admits he hasn't seen 1.105 much in his practice?

      I've reviewed hundreds of file histories, and 1.105 requirements are quite rare. So AAA JJ, you're in the same category as the rest of us, if it makes you feel any better.

      Plus, Anon, I don't see what the propensity for a randomly assigned Examiner to issue 1.105's has to do with whether an attorney's practice is "cutting edge" .

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    18. "I've reviewed hundreds of file histories, and 1.105 requirements are quite rare. So AAA JJ, you're in the same category as the rest of us, if it makes you feel any better."

      That's what you choose to defend? Really? AA JJJ would feel even better, much, much better if you could defend his contention that there are no requests for admission and such in ex parte prosecution. But, of course, you can't.

      "There's no 'requests for admissions' and such in ex parte prosecution. Please let us all know that you understand this very basic distinction." AAA JJ December 11, 2014 at 5:03 PM.


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    19. Karen,

      Thanks.

      Yes, our hopelessly confused multiple screen name disordered pal is beyond cryptic. What receiving a Rule 105 requirement has to do with having a "cutting edge practice" (whatever he thinks that is) is not ever going to be explained. He doesn't do explanations. Just cryptic blathering.

      If it makes him feel any better the application was for a nuclear fuel element. Not sure how "cutting edge" that is, it was just another application on my docket at the time.

      When faced with the stark, practical reality that Rule 105 is, as Karen confirms, essentially a dead letter, nothing even remotely like interrogatories or requests for admissions in civil litigation, all our poor confused poster can muster up is, "But, but, but, Star Fruits!!! Star Fruits!!!!!"

      HI.LAR.I.OUS.

      I'm aware of Star Fruits. It's impact is what? (Hint: I'm thinking of a big ROUND number.)

      Delete
    20. >>I've reviewed hundreds of file histories, and 1.105 requirements are quite rare. >>AAA JJ, you're in the same category as the rest of us
      >
      >That's what you choose to defend? Really?

      Well, yeah. I wasn't defending AAA so much as dinging you.

      I gotta say, I get distracted from the merits of the arguments by too many Anon contributors, and by ad hominem attacks.

      Delete
    21. AAA JJ, can you get us off this tangent -- 1.105 is rare in practice -- and bring us back around to why 1.105 is under discussion ?

      You started by stating:

      >how [does] the examiner satisfy the burden of establishing the factual basis
      >for a rejection by a preponderance by making "allegations of fact" ?

      and then brought up

      >patent prosecution is not civil litigation [because] there are no requests
      >for admissions and such

      So ... an Examiner's "allegation of fact" such as a taking of Official Notice can't *establish* a fact because ... the Official Notice isn't a request for admission and the "failure to traverse" isn't an admission?

      Delete
    22. "So ... an Examiner's 'allegation of fact' such as a taking of Official Notice can't *establish* a fact because ... "

      Because it's not supported by a preponderance of the evidence. The examiner saying, "Well, the prior art doesn't show that feature but I take Official notice that it's old and well known" has zero evidentiary support. Zero.

      "...the Official Notice isn't a request for admission and the 'failure to traverse' isn't an admission?"

      Bingo.

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    23. "I gotta say, I get distracted from the merits of the arguments by too many Anon contributors, and by ad hominem attacks."

      It's actually only one contributor: Thomas Pain.

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    24. "ad hominem attacks."

      Karen,

      Now I actually am confused. Do you ever read what AAA JJ writes?

      Delete
    25. "So ... an Examiner's "allegation of fact" such as a taking of Official Notice can't *establish* a fact because ... the Official Notice isn't a request for admission and the "failure to traverse" isn't an admission?"

      I think the question is, understandably, contaminated by expert analysis. But, in the very case discussed above (Timbadia), didn't the noticed fact become an established fact?

      Aside from that, you're asking an "expert" who did not know what the word "traverse" means? Who did not know that there are requests for admissions in ex parte prosecution practice? Who disregards yet another Federal Circuit precedent (i.e., Star Fruits) because it is contrary to his argument?

      Do you get that this kind of inbreeding is the principal reason for the Rule 36 graveyard at the Federal Circuit?

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    26. I thought it was the mysterious and nebulous "practical reality" that was the reason for the Rule 36 affirmance rate?

      You've confused yourself beyond hope.

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    27. "I thought it was the mysterious and nebulous "practical reality" that was the reason for the Rule 36 affirmance rate?"

      Right. We'll add "principal" to the list.

      Delete
    28. Why do you think everything in patent law is mysterious, nebulous, or cryptic? Hmmm??��

      Delete
    29. "You've confused yourself beyond hope."

      Well, I do agree with you that Boon was not overruled by Zurko and is thus still good law. Please expound. (That means to explain in detail; elucidate.)

      Delete
    30. TP wrote:
      >"ad hominem attacks."
      >Karen,
      >Now I actually am confused. Do you ever read what AAA JJ writes?

      If you're suggesting that AAA makes ad hominem attacks too, well, you may well be right. I just don't feel like jumping in every time someone here calls someone else a 'tard or suggests someone's practice isn't "cutting edge".

      I found a point I was interested in, noticed a personal attack along the way, and stepped in to both comment on the attack and to speak to the point of interest.

      Delete
    31. Not only is my practice cutting edge, it's razor sharp, yo!

      Delete
  3. Zurko > Boon
    See also In re Lee and K/S Himpp v. Hear-Wear Tech

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    1. Your arrow notation is too cryptic for me. Can you clarify what you're saying about the relationship between Zurko and Boon?

      I recognize K/S Himmp as a recent Applicant-friendly decision in which the Examiner characterized a claimed feature as “known in the art.”

      I recognize In re Lee as a pre-KSR case discussing common sense and the evidentiary record.

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    2. Your arrow notation is too cryptic for me.
      "-->" is an arrow. ">" is a greater than sign. Hence Zurko is greater than Boon and to the extent that Boon is inconsistent with Zurko, Boon is no longer good law.

      From Himmp: The Board’s decision was correct because an assessment of basic knowledge and common sense as a replacement for documentary evidence for core factual findings lacks substantial evidence support. Zurko, 258 F.3d at 1385–86."

      Assessment of basic knowledge ... what does that sound like?

      I recognize In re Lee as a pre-KSR case discussing common sense and the evidentiary record.
      evidentiary record .... hmmm ... what is lacking in the taking of "official notice"?

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    3. "Hence Zurko is greater than Boon"

      Our resident expert on patent examining procedure has already spoken to citation of Zurko in this context. He deems it "funny."

      Himpp v. Hear Wear Tech. did not address official notice. That case was about the record that a third party requester must make in order to demonstrate unpatentability in an inter partes reexamination.

      In re Lee was cited in the cert petition for Supreme Court review of the KSR case as one of two extreme examples of just how far the Federal Circuit had wandered from the law of obviousness. (Dimbiczak was the other.) For the Supreme Court's view of In re Lee, read KSR's discussion of "common sense."

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    4. Gee, your answers did show that I *figured out* what you were saying. It's still better for all of us reading the thread that you clearly state rather than using cryptic snippets and/or case names.

      Delete
    5. That's all you're going to get from hopelessly confused Thomas/Anonymous/whateverscreeennameheisusingthispost: cryptic nonsense.

      He believes Zurko overruled In re Warner, In re Caveney, Ethicon v. Quigg, and lord knows how many other cases. Even though Zurko stands for nothing more than the rather simple proposition that the Fed. Cir. has to apply the substantial evidence standard of review of the APA to PTO findings of fact, rather than the clear error standard of review. When asked how that decision impacts any prior precedential case on the examiner's standard/burden of review during examination, all you get is blatherings about "a wise man once said..." He cites garden variety cases like In re Morsa as if it overruled anything simply because the court said that based on its application of the substantial evidence standard of review the PTAB's findings were supported.

      That's all he's got: cryptic nonsensical blatherings. Take them for what they are worth.

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    6. "Hence Zurko is greater than Boon and to the extent that Boon is inconsistent with Zurko, Boon is no longer good law."

      Why don't you just Shepardize Boon and tell us the results? Or at least tell us to what extent you think Boon is inconsistent with Zurko.

      Sheesh.

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    7. "Why don't you just Shepardize Boon and tell us the results? Or at least tell us to what extent you think Boon is inconsistent with Zurko."

      I'm not sure what you're blathering about or to whom. Take a pill and understand that the "Zurko > Boon" fellow likes you and is trying to help.

      Delete
    8. I can haz sock puppets tooDecember 17, 2014 at 3:35 PM

      "I'm not sure what you're blathering about or to whom."

      I'm pretty sure he's responding to your sock puppet Anonymous. Or whatever multiple personalities you have rattling around in your head.

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  4. "Zurko > Boon"

    Your preoccupation with Zurko would be funny if it wasn't proof beyond any shadow of a doubt that you're hopelessly confused.

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  5. you're hopelessly confused
    The APA isn't implicated here?

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  6. What's missing from this conversation is the endless use of short cuts and end runs by Examiners in order to avoid having to account for each limitation in a the claim.

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    1. Nah, I did say that earlier, in my comment about abuse of Official Notice.

      IMHO, Official Notice is a preferable short cut to some other types, because at least it's clear that's what's going on. Much worse is when an Examiner leaves limitation(s) out of the obviousness analysis, and then you find out later that he's relying on common sense, design choice, etc. etc. to fill in the gap.

      If you find out before appeal, at least you have the chance to address. Sucks when the Board says that's what's going on, and affirms the obviousness rejection on that basis.

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    2. You should find that out before appealing. IMO of course.

      I had a case reciting a five step method. Step one the examiner cites to column and line number of the reference. Step two the examiner cites to a figure. Step three there's no cite to any portion of the reference. Step four cites to a figure. Step five cites to a column and line number.

      I point out that there's no evidence supporting a finding that step three is disclosed by the reference. The examiner responds that "it's inherent that the step is critical to the method of the reference" and makes the OA final.

      I did file an after final response asking, in the politest terms possible, "Are you kidding me?". Got an advisory.

      I'm on appeal right now. Same reference the examiner lost on appeal in the parent.

      I love PTA.

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