tag:blogger.com,1999:blog-6733236595417664807.post593613207753643979..comments2024-03-05T06:00:22.338-05:00Comments on All Things Pros: BPAI reverses obviousness rejection after finding combination was "more than the predictable use of a prior art element according to its established function"Karen G. Hazzahhttp://www.blogger.com/profile/14864564225463528630noreply@blogger.comBlogger141125tag:blogger.com,1999:blog-6733236595417664807.post-3793410098236705282012-12-01T12:27:29.683-05:002012-12-01T12:27:29.683-05:00d0c87888 is a cowardly swine!d0c87888 is a cowardly swine!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-64710375225679760032012-11-29T16:28:20.927-05:002012-11-29T16:28:20.927-05:00"it's entirely possible that the CAFC won...<br /><br /><br />"it's entirely possible that the CAFC won't do that, and that Jung will mark the beginning of eroding procedural rights based on the prima facie case"<br /><br />Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007), did far more to erode applicants' procedural rights based on the prima facie case than Jung did, or ever will. Another case of a really sh!tty applicant and a really sh!tty appeal. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-24286434579708869852012-11-29T15:53:00.746-05:002012-11-29T15:53:00.746-05:00And, on that note, I think we've argued enough...And, on that note, I think we've argued enough. We know where the other stands, and we're not going to much progress from here. Thanks for the feedback.Kipnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-476895954837740252012-11-29T11:13:19.414-05:002012-11-29T11:13:19.414-05:00"it's entirely possible that the CAFC won..."it's entirely possible that the CAFC won't do that, and that Jung will mark the beginning of eroding procedural rights based on the prima facie case"<br /><br />It's entirely possible that Judge Newman will meet a patent she doesn't like ... but I'm not betting on it.<br /><br />"What I have said is that Jung and earlier case law are inconsistent."<br />Only when you interpret inconsistently ... I can harmonize them.<br /><br />"You've said that they would limit Jung to its facts."<br />Exactly, the facts of Jung didn't apply so they found a better case. The probem with your analysis is that the facts of Jung lend themselves to few issues ... and less issues that I care about.<br /><br />"Here, they cited Jung against applicants, twice, in cases with very different facts."<br />So what ... they haven't expanded Jung beyond its facts ... which is the important part.<br /><br />BTW -- I'm not sticking my head in the sand ... it is you that is making a mountain out of a mole hill.<br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-72058888096750444552012-11-29T00:57:28.643-05:002012-11-29T00:57:28.643-05:00It seems our cryptic friend, d0c87888, gave up on ...It seems our cryptic friend, d0c87888, gave up on trying to defend his lame theory about how the KSR decision addresses the issue of analogous art. <br /><br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-77241819533546935332012-11-28T12:24:41.229-05:002012-11-28T12:24:41.229-05:00"You are predicting that the CAFC will interp..."You are predicting that the CAFC will interpret Jung to complete eviscerate all of their other case law on the prima facie case – I'm saying … "BS … that isn't happening."<br /><br />No. I am not making any predictions about what the CAFC will do. I acknowledge that the CAFC might interpret Jung narrowly, as you suggest, to protect future inventors. But it's entirely possible that the CAFC won't do that, and that Jung will mark the beginning of eroding procedural rights based on the prima facie case.<br /><br />What I have said is that Jung and earlier case law are inconsistent. To do the right thing, the CAFC should resolve that inconsistency en banc. Or disavow Jung in a future precedential decision. But there is no guarantee that the CAFC will do that, that the CAFC will do the right thing. So I can't predict what they will do.<br /><br />" As such, they gave a perfunctory nod to Jung while relying upon older case law as to the specifics – exactly what I thought they would do. Antor Media gives a little more lip service to Jung but relies upon another case to addresses the raised issue (i.e., whether a prior art reference is enabling)."<br /><br />No, that's not "exactly what I thought they would do." You've said that they would limit Jung to its facts. Here, they cited Jung against applicants, twice, in cases with very different facts. The fact that the citation was "perfunctory" (if true) is irrelevant - the applicant still got kicked in the teeth by that "perfunctory" citation. The fact the CAFC cites additional cases is also irrelevant. You predicted X (distinguish Jung on its facts); X didn't happen. You were wrong. You have no crystal ball. You don't like what Jung plainly says. You can stick your head in the sand all you want; you can make hopeful predictions that the CAFC will limit Jung's holding; none of that will change the reality of what really happened. Wake up.Kipnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-4423014562092470662012-11-28T12:23:31.555-05:002012-11-28T12:23:31.555-05:00"Hardly, we've gone over point B time and..."Hardly, we've gone over point B time and time and time and time again. I keep asking you to explain, in plain language what 132 requires and you say "it requires what it says it requires" (i.e., you have no helpful answer)."<br /><br />As I said before, we just disagree about how ambiguous 132 is.<br /><br />Imagine if I said that a square requires four sides at right angles. You could come back and say, "oh, but what does it mean to have 4 sides?" You could demand a further, narrower test for a square. If I didn't give you one, then you would say that the "four sides" test is meaningless. But you would be wrong.<br /><br />Remember, I've given you answers for every case that you sent me. I have no difficulty applying 132. Give me a fact pattern, I'll tell you if 132 is satisfied. If it's a close/border case, then I'll say that too.<br /><br />Your problem with 132 isn't that it's ambiguous - it's that it's clear, but you don't like what it clearly says. That's why you keep complaining that, if I'm right, then the Examiner can get away with X. But notice: "If you're right, then the Examiner can do X, and I don't like X" is *not* an argument against my interpretation. It's simply an observation that one CAFC holding results in policy that you find inconvenient.<br /><br />" It is not an en banc decision and the facts don't require the expansive interpretation you are giving it. Jung will get folded up into the rest of the case law and will be distinguishable … on its facts."<br /><br />That's one possibility. Another possibility (which I think is more likely) is that we'll simply see a drift in the case law. And that drift will drift toward an inventor-unfriendly standard, which sets a low bar for the prima facie case. Whenever Dyk or any other judges sees an inventor they don't like, they will be able to apply Jung and 132 against them - and they will do so in ways that Newman (author of Spada, Oetiker, and Piasecki) would not.<br /><br />Now, you don't have a crystal ball, and neither do I, so we can be sure what will happen. So we can't be sure that the CAFC will harmonize Jung and earlier case law to prevent Examiners from doing what you find inconvenient.Kipnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-17728368377946835252012-11-28T12:00:59.901-05:002012-11-28T12:00:59.901-05:00"Not every Fed. Cir. obviousness case cites G..."Not every Fed. Cir. obviousness case cites Graham v. John Deere Co."<br /><br />Cite a recent one that does not cite Graham or its progeny.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-76254843877700571652012-11-28T10:55:36.346-05:002012-11-28T10:55:36.346-05:00Maybe PTO SPREs or the folks in OPLA read cases bu...Maybe PTO SPREs or the folks in OPLA read cases but the rest just copy-and-paste the form paragraphs they're given without any real understanding of case law interpretation or how to properly apply case law in the context of a rejection.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-43006300488595454892012-11-27T23:58:13.421-05:002012-11-27T23:58:13.421-05:00So only people at USPTO read cases? Interesting.So only people at USPTO read cases? Interesting.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-42224088784600455032012-11-27T23:38:39.005-05:002012-11-27T23:38:39.005-05:00"[different poster here]
As I have suspected ..."[different poster here]<br />As I have suspected in the past, you are definitely at the USPTO"<br /><br />You are 100% correct as evidenced by his resort to Wyers, which appears in PTO guidelines regarding analogousness.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-21597745272941379152012-11-27T23:10:04.764-05:002012-11-27T23:10:04.764-05:00Agreed. Sobriety is not a prerequisite whenever y...Agreed. Sobriety is not a prerequisite whenever you have to say "Judas Priest."Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-79787394399988405552012-11-27T22:50:53.211-05:002012-11-27T22:50:53.211-05:00"Judas Priest"
By the way, we started a..."Judas Priest"<br /><br />By the way, we started a drinking game where every time you posted "Judas Priest", we took a drink. Thanks to you, we've all gotten right proper snockered.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-15850168489400552472012-11-27T22:44:51.451-05:002012-11-27T22:44:51.451-05:00"Of course not."
Explain."Of course not."<br /><br />Explain.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-1216680287933592602012-11-27T22:15:48.167-05:002012-11-27T22:15:48.167-05:00"You can hammer your point about A all day lo..."You can hammer your point about A all day long - but you're still ignoring B"<br /><br />Hardly, we've gone over point B time and time and time and time again. I keep asking you to explain, in plain language what 132 requires and you say "it requires what it says it requires" (i.e., you have no helpful answer). I can read all the Federal Circuit jurisprudence on this issue consistently by stating that all of the previous cases discussing the prima facie case were merely expounding upon the requirements in 132 … which has been on the books for decades and decades. Unless you can show me case law that says 132 requires less than what is found in these other Federal Circuit cases you have no inconsistency.<br /><br />"Now, it's conceptually possible that the statutory language of 132 reflects, exactly, the same standard set forth in Spada, Oetiker, and all the earlier case law."<br />Bingo … we have a winner. The Federal Circuit is not going to ditch all of its previous jurisprudence because of Jung. It is not an en banc decision and the facts don't require the expansive interpretation you are giving it. Jung will get folded up into the rest of the case law and will be distinguishable … on its facts.<br /><br />"Hindsight, or non-analogous art, those kinds of substantive arguments would not prevent the Examiner from satisfying 132"<br />Wrong. Establishing obviousness and establishing analogous prior art REQUIRES findings of fact. An applicant cannot judge the propriety of continuing the prosecution of this application unless the Examiner at least supplies some substantial evidence to support these assertions. 132 does not permit the Examiner to make s__t up (MSU) but that his how you are interpreting it. I'm sorry … but that line of reasoning isn't going to fly.<br /><br />"The court in Jung announced that all the Examiner has to do is satisfy 132"<br />Except you cannot tell me what that means beyond "it means what it says it means." The next time 132 gets invoked, the Federal Circuit is going to ask the same question … "What does 132 require?" The most satisfactory answer they'll get … and the one they'll go with is "it means what the Federal Circuit has required for a prima facie case the last 30 years"<br /><br />"You don't know what the CAFC will do."<br />Sure I do, and I certainly know better than you. You are predicting that the CAFC will interpret Jung to complete eviscerate all of their other case law on the prima facie case – I'm saying … "BS … that isn't happening."<br /><br />"The CAFC already cites Jung against applicants in cases with very different facts. The CAFC cited Jung against applicants In re Hillis (2012), a case about enablement. The CAFC also cited Jung against applicants in In Re Antor Media (2012)"<br />Man … did you read these cases? I doubt it. In Hillis, they cited the non-specific language in Jung about proper notification of the shortcomings and then turns to In re Wright as to the specifics. As such, they gave a perfunctory nod to Jung while relying upon older case law as to the specifics – exactly what I thought they would do. Antor Media gives a little more lip service to Jung but relies upon another case to addresses the raised issue (i.e., whether a prior art reference is enabling).<br /><br />One of the citations from Jung within Antor Media is "(“[A]ll that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.”). Sufficiently articulate and informative manner?? WTF is that? I'm sorry, if you are looking to Jung to hail some new outlook as to what the prima facie case requires, that language isn't going to cut it.<br /><br />"You say this as if CAFC case law never implicitly diverged over time."<br />Until you show me the divergence, that point is moot.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-84349120334957732752012-11-27T21:29:59.976-05:002012-11-27T21:29:59.976-05:00"It's your position that ...."
Of c..."It's your position that ...."<br /><br />Of course not.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-51552405265929903092012-11-27T20:55:16.680-05:002012-11-27T20:55:16.680-05:00"Cites?"
Just so we're clear. It..."Cites?"<br /><br />Just so we're clear. It's your position that if there's a Federal Circuit panel decision prior to Wyers that discusses analogousness without reference to KSR, that controls over Wyers, correct?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-21071609694547633992012-11-27T20:46:26.958-05:002012-11-27T20:46:26.958-05:00"Grasping at straws, are we?"
You certa..."Grasping at straws, are we?"<br /><br />You certainly are.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-44912645341973682472012-11-27T19:22:10.810-05:002012-11-27T19:22:10.810-05:00Klein cited Graham v. John Deere Co., but the late...Klein cited Graham v. John Deere Co., but the later K-Tec case did not. Maybe Graham is no longer good law. . . .Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-75669333730284298652012-11-27T16:45:53.335-05:002012-11-27T16:45:53.335-05:00"That completely cuts the legs out of the arg..."That completely cuts the legs out of the argument that Wyers is precedential."<br /><br />Grasping at straws, are we?<br /><br />Not every Fed. Cir. obviousness case cites Graham v. John Deere Co. So we conclude from the silence that Graham does not apply to an obviousness determination?<br /><br />Judas Priest.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-83730400620103542012012-11-27T15:40:12.084-05:002012-11-27T15:40:12.084-05:00"You're assuming that CAFC case law is co..."You're assuming that CAFC case law is consistent - but it often isn't. This is basic legal reasoning"<br /><br />So "basic legal reasoning" results in all of these "rules" made by judges being inconsistent?<br /><br />Sounds like a pretty sh!tty system to me.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-14675100406446760712012-11-27T15:36:00.062-05:002012-11-27T15:36:00.062-05:00"Arguendo, what about other post-KSR Federal ..."Arguendo, what about other post-KSR Federal Circuit panel decisions prior to Wyers that, like Klein and K-Tec, did not cite any aspect of KSR in the context of analogous art determinations?"<br /><br />Cites?Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-9662081630535483292012-11-27T14:58:05.550-05:002012-11-27T14:58:05.550-05:00"You don't specify what "case" ...<br />"You don't specify what "case" you think it is that I've failed to make."<br /><br />One can see why you'd conveniently try to forget given that you alleged that the KSR decision addressed the issue of analogous art. You failed to state your case. All you did was cite a Federal Circuit panel decision where Judge Dyk referred to a portion of KSR. Where is the Supreme Court case mandating the application of the KSR reasoning with respect to rationale for combining references to "particular problem" prong of the analogous art test?<br /><br />Arguendo, what about other post-KSR Federal Circuit panel decisions prior to Wyers that, like Klein and K-Tec, did not cite any aspect of KSR in the context of analogous art determinations? That completely cuts the legs out of the argument that Wyers is precedential. <br /> <br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-68141383654233685402012-11-27T13:44:30.223-05:002012-11-27T13:44:30.223-05:00"Are you daft? We are arguing about the prima..."Are you daft? We are arguing about the prima facie case. You are citing Jung for the proposition that if the Examiner sneezes and accidentally gets some snot on the paper, it is sufficient to establish a prima face case. Glatt speaks to what is enough to establish a prima facie case – good reasoning is NOT ENOUGH."<br /><br />Give me a break. Whenever case law is inconsistent, you can always selectively pick cases that support one side. That doesn't show that the case law is consistent. It shows that you found one case on one side. Just because Glatt says X, doesn't mean that Jung also said X. You're assuming that CAFC case law is consistent - but it often isn't. This is basic legal reasoning (are *you* daft?).<br /><br />"Jung as just prohibiting a very high standard."<br /><br />You're exclusively focusing on one major holding in Jung. But there were (at least) two major holdings:<br /><br />A. The Examiner does not have to make an on-the-record claim construction for every element<br />B. All the Examiner has to do is satisfy section 132.<br /><br />You can hammer your point about A all day long - but you're still ignoring B. Jung defined the prima facie case test in terms of 132. Without reference to Spada, Oetiker, Piasecki, or anything else.<br /><br />Now, it's conceptually possible that the statutory language of 132 reflects, exactly, the same standard set forth in Spada, Oetiker, and all the earlier case law. But you can't just *assume* that it does. And, in fact, when you look at the language of 132, it is very broadly worded. Hindsight, or non-analogous art, those kinds of substantive arguments would not prevent the Examiner from satisfying 132. So there is at least a strong argument that these are two different standards.<br /><br />You can't assume that they are the same standard, just because you find the earlier case law convenient. Sterne Kessler thought the earlier case law was convenient too - that's why it based its entire argument on the earlier case law, and lost, getting hit in the face with the plain language of the statute.<br /><br />"facts of Jung"<br />Jung is not limited to its facts, even if you wish it was. The court in Jung announced that all the Examiner has to do is satisfy 132. That's all the Examiner has to do in every case, not just in Jung. That's how legal precedent works. We've gone over this before.<br /><br />"BTW, that's what any future panel on the Federal Circuit will do."<br /><br />Oh really? Do you have a crystal ball? I remember before Thereasense, everyone thought that the CAFC wouldn't adopt a fraud-based standard for IC. Then the CAFC did exactly that. You don't know what the CAFC will do.<br /><br />The CAFC already cites Jung against applicants in cases with very different facts. The CAFC cited Jung against applicants In re Hillis (2012), a case about enablement. The CAFC also cited Jung against applicants in In Re Antor Media (2012), a case about whether a prior art reference is enabled. These fact patterns are very different than the facts in Jung. So your crystal ball is already broken.<br /><br />"If Jung didn't explicitly state it, it didn't happen – particularly if such a holding would overrule prior precedent."<br /><br />You say this as if CAFC case law never implicitly diverged over time.Kipnoreply@blogger.comtag:blogger.com,1999:blog-6733236595417664807.post-11597940555424096812012-11-27T13:09:47.470-05:002012-11-27T13:09:47.470-05:00"A Prime Example being d0c87888 who is under ..."A Prime Example being d0c87888 who is under the warped belief that a single panel decision defines precedent for the entire Federal Circuit."<br /><br />Judas Priest.<br /><br />"This court has adopted the rule that prior decisions of a panel of the court are binding precedent on subsequent panels unless and until overturned in banc. . . . Where there is direct conflict, the precedential decision is the first." Newell Companies Inc. v. Kenney Manufacturing Co., 864 F2d 757 (Fed. Cir. 1988).Anonymousnoreply@blogger.com