Monday, December 21, 2015

PTAB dings Applicant for citing to cases without analogizing facts

Takeaway: An Applicant appealed claims that described structure in terms of segments with joined endpoints, along with profiles for each segment. The Applicant argued that the Examiner had interpreted geometric features shown in the reference drawings in an arbitrary manner, in order to read on the claims. In making that argument, the Applicant cited to two prior Board decisions involving reference were also at issue. The Board dismissed this portion of the argument because the Applicant didn't compare facts in the cited cases to facts in the case on appeal. (Ex parte Justin, PTAB 2014.)

Ex parte Justin
Appeal No.: 2012008703; Appl. No. 12/784,824; Tech. Center 3700
Decided:   December 30, 2014

The Applicant appealed two anticipation rejections of claims to a "punch for cutting tile from a workpiece". The claims recited a cutting blade and further described the structure of the cutting blade in terms of segments with joined endpoints, along with spline profiles for each segment. (See Applicant's Fig. 14, below.)

The Examiner rejected as anticipated by the cutting die in Copeland. The Applicant traversed, arguing that Copeland's die did not have a cutting blade formed by four joined segments as required by the claims. The Examiner had added lines to Copeland's figure as axes to identify segments, but those lines "cross the punch shape at intermediate locations" and thus were not joined segments.
Examiner's Annotated Figure from Final Rejection
When the Examiner maintained the rejection, the Applicant appealed. The Appeal Brief argued that the Examiner had used arbitrary segments. In support of this argument, the Applicant cited to language in two ex parte PTAB decisions:
The  Examiner's interpretation of the drawings in Copeland and Spengler is unreasonable  because he uses arbitrary portions of the drawings that were "defined only by the Examiner" to meet Applicant's claim limitations. Ex parte Denison, Appeal 2009-004110,  p. 5 (BPAI  2010) (Exhibit A) ("However, that 'structure' identified by the Examiner results only from an arbitrary delineation of Berry's structure, made in order to meet the claim limitations. Even giving  the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood  the  claim  terms  requiring  'double-curved  portions'  and  'Y-shaped  portions'  to include the arbitrary portions of Berry defined only by the Examiner"); See also, Ex parte Richardson, Appeal 2009-003991, p. 11 (BPAI 2009) (Exhibit B)  ("The Examiner appears to have arbitrarily set the axis of the cited references with no consideration as to the relationship with other claimed features").
The Applicant mentioned one of these PTAB decisions again, later in the argument section:
Here, as in Ex parte Richardson, the interpretation of the claim by the Examiner is not consistent with the description of  the invention in the specification. The Examiner has arbitrarily added annotations consistently of two axes added to the prior art figures with no consideration as to the relationship with the other claimed  features. Ex parte Richardson, p.11.
The Examiner's Answer included the same figure with additional annotations, though no further explanation:
Annotated Figure from Examiner's Answer
The Applicant filed a Reply Brief and expanded on the argument, as follows:
     The Examiner's Answer completely ignores and flies in the face of the [BPAI] respected authority relied upon in Applicant's Appeal Brief. Ex parte Denison, Appeal 2009-004110, p.5 (BPAI 2010) and Ex parte Richardson, Appeal  2009-003991, p. 11 (BPAI 2009). The Examiner cites no authority for relying upon axes hand drawn by the Examiner on a cited prior art reference to support the assertion that the claims are anticipated ...
     The Examiner's Answer is devoid of any support in the prior art for his  construction of the claims and so the Examiner just sketches some lines on the prior art drawings and concludes that the claims are anticipated. In conclusion, the Examiner is wrong on the law and wrong to torture the prior art references by arbitrarily sketching lines that are defined only by the Examiner.
The Board affirmed the rejection. The Board essentially dismissed the Applicant's "arbitrary" argument for two reasons. First, the cited PTAB decisions were not precedential. Second, the Applicant did not "provide a persuasive line of reasoning analogizing the facts in those cases with facts in the presently appealed case."

Turning to the merits, the Board found that the Examiner's annotations were not arbitrary.   The axes which the Examiner added to the figure served as a system to identify joined segments, with the center point of the punch acting as the center of the coordinate system." The Board found this system of identifying segments to be reasonable. Furthermore, the Board found that the Examiner's findings about how the claims read on the reference were supported by a preponderance of the evidence.

My two cents: Patent prosecutors rely on case law far less than many other types of attorneys. Success in patent prosecution is commonly understood to depend far more on technical distinctions than on purely "legal" arguments. But if you're going to rely on case law for more than simply a basic legal proposition (e..g, the elements of a prima facie case of obviousness), you need to do what we learned in law school.

The Applicant did the first part, which is finding cases relevant to the issue at hand. Both cases involved Examiner annotation of a reference figure to show claimed geometric features. Then go the extra mile by showing how the facts in the relied-upon case are similar to or different from your facts. If you simply cite to the holding and use some quotes, you're essentially asking the Board to do the analysis for you.


  1. "If you simply cite to the holding and use some quotes, you're essentially asking the Board to do the analysis for you."

    Yet that's what examiners do 99.9999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999999% of the time. And never get "chided" by the Board.

    This decision is a new monument to hypocrisy. Not a surprise though. The "affirm at all costs" mentality of lifers like this APJ is a disgrace.

    1. I guess I should have said never get "dinged" by the Board. Whatev.

    2. >Yet that's what examiners do 99% of the >time

      Sure, the Board lets Examiners get away with sloppy rejections all the time. And let's assume the Board holds Applicants to a higher standard.

      If so, seems like Applicants have a choice between raising the bar on their arguments, or taking the issue up to the Fed Cir.

      The choice for me is clear. My clients don't generally appeal cases to the Fed Cir, so I'm going to work on making good arguments.

    3. I had a case like this a looooong time ago. The Examiner drew some lines on the reference and said ... "look, there are your limitations." We appealed, and the Board reversed. I forgot what case law we cited.

      Regardless, while I'm unable to access the decision (due to the USPTO's ongoing technical problem), I suspect that the Board employed a classic technique: nit pick at the Appellants' arguments while ignoring the evidence provided by the Examiner.

      The Board is to weight the evidence and arguments provided by the Examiner against the evidence and arguments presented by Appellants. Weighing necessarily requires that the evidence and arguments of both sides be reviewed and compared/contrasted.

      From my experience, giving a pass to the Examiner's deficient analysis/factual findings is the one thing that the Board EXCELS at.

  2. BTW, "Furthermore, the Board found that the Examiner's findings about how the claims read on the reference were supported by substantial evidence." is wrong. The PTAB reviews the examiner's findings and conclusion for a preponderance of the evidence. See, e.g. Ethicon v. Quigg.

    1. My bad, not the Board's. I revised my post to correct.

      Should have just said "supported by the evidence" since the point I was trying to make wasn't related to the weight of the evidence.