Monday, May 3, 2010

Burden of proof when reference claims priority to a provisional

Takeaway: When an Examiner applies a § 102(e) reference as of its priority date, the precedential decision Ex parte Yamaguchi allocates the burden of proof for whether the priority document provides proper support under § 112. Specifically, Yamaguchi holds that "once the Examiner finds a factual correspondence between a U.S. patent or published application and its underlying provisional application, the burden shifts to Appellant to show why this finding is erroneous."

While the majority of the decisions which apply Yamaguchi enforce this "factual correspondence" requirement, a few rely on Yamaguchi to hold that there is no such requirement if the provisional is publicly available (e.g., Public PAIR).

More Details:

It's not clear exactly how much explanation must be included in the "factual correspondence." The Board has found the prima facie case met when the Examiner referred to a specific section of the provisional, then explained how this provisional section "describes similar if not exact subject matter" disclosed in the relied-upon § 102(e) reference. (Ex parte Olsen.) In another case, the Board described the Examiner's explanation of the correlation between publication and provisional as "in-depth" (Ex parte Parmelee.) However, in another case the Board characterized the Examiner’s explanation as "terse," but still found the prima facie case met because "the Examiner nonetheless found that both documents show the same subject matter." (Ex Parte Chawla.)

When the Applicant in Ex parte Chawla argued that the provisional wasn't identical to the § 102(e) reference, the Board explained that Yamaguchi did not require "identity of terms or figures."

In Ex parte Olsen, the Board explained that the Examiner's prima facie showing was unrebutted because the Applicant did not specifically address which of the relied-upon portions were not properly supported by the provisional.(Emphasis added.) Many Applicant attempts to rebut the Examiner's prima facie are criticized by the Board as "merely conclusory." For example, the Board in Ex parte Chawla criticized Applicant's statement that the identified portions of the provisional "make no mention whatsoever" of particular claim elements. As another example, the Board in Ex parte Billings explained that a statement "that is totally devoid of explanation or analysis hardly persuades us of error in the Examiner’s factual findings pertaining to Rawatand its prior non-provisional application."

While the cases above are a straightforward application of Yamaguchi, in two other cases the Board did not enforce the Yamaguchi requirement of "factual correspondence" between a § 102(e) reference and its provisional. 

In Ex parte Zheng, the Final Office Action did not refer to any particular portion of the provisional. In the Appeal Brief, the Applicant maintained that the reference was not prior art because the Examiner had not met his burden of demonstrating support in the provisonal.

Ignoring the Yamaguchi requirement, the Board summarily found that the Examiner had established a prima facie case, and that the Applicant had not rebutted this presumption because the Appeal Brief failed to identify which claim limitations were not supported the provisional. Finally, the Board noted that the same paragraph of the § 102(e) reference that was relied on by the Examiner was also present in the provisional  – thus making an implicit finding that the provisional did support the reference. What the opinion failed to note was the provisional was 53 pages long. Perhaps searching for a matching paragraph in a 53 page document is not too burdensome for the Applicant  – but what if the provisional was 500 pages long?

The Board also seemed to ignore the Yamaguchi requirement in Ex parte Hartigan. The Board criticized the Applicant for not obtaining the provisional through Public PAIR and determining whether the subject matter relied upon in the § 102(e) reference is supported by the provisional:
[T]he Appellant [does not] explain why the Appellant could not have performed this simple task during all this the time since the Appellant was first made aware of Aquila. Cf. Ex parte Yamaguchi, 88 USPQ2d 1606, 1613 (BPAI 2008) (precedential) (The Examiner had noted that the provisional application was readily available in the PAIR system.) Accordingly, we see no good reason to shift the burden now back to the Examiner to provide the argued-for showing.
My two cents: Don't bother appealing if the Examiner has pointed to particular portions of the provisional and you haven't yet reviewed those portions to determine whether the Examiner is right. It's a harder call if the Examiner has not met his burden by explaining which portions of the provisional correspond to the relied-upon portions of the § 102(e) reference.  You could appeal without saying more, and hope the Board applies Yamaguchi strictly.

I think the cases which ignore the factual correspondence requirement in Yamaguchi are wrongly decided, because I view the burden shifting requirement in Yamaguchi as clearly flowing from the Examiner's finding of a correspondence between reference and provisional, and unrelated to the dicta about public availability. (See Ex parte Yamaguchi, p. 18.) So if I lost at the Board because this "factual correspondence" requirement was ignored, I'd be inclined to file a Request a Rehearing with the Board. I'll be keeping an eye out for BPAI rehearings to see if anyone else does so.

9 comments:

  1. Thanks Karen for looking into this. It is quite annoying when an examiner merely reproduces a segment of a claim and cites a huge chunck of text as alleged support for a prior art teaching. It is even more infuriating when the Board backs it up ("The reference is not so voluminous that the applicant could not have found ..." Yeah,right, as if I didn't ever look for it.)

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  2. >examiner merely reproduces a segment of a claim >and cites a huge chunck of text

    Agreed its annoying. Yamaguchi doesn't really help this scenario, being limited to what an Examiner must do when the reference relies on a priority claim.

    I'm amazed at the extensive fact finding that the Board does generally. I've read plenty of file histories where the Appellant seems to have no idea what the Examiner is really saying about how the claims read on the reference, and yet the Board goes into lots of analysis, and then affirms the Examiner.

    Only rarely do I read a Board decision which says "we have no idea what the Examiner is saying about how the references teach so we revese the Examiner".

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  3. "Perhaps searching for a matching paragraph in a 53 page document is not too burdensome for the Applicant – but what if the provisional was 500 pages long? "

    Maybe it's too burdensome for the examiner to have to read 500 pages and we should call the entire patent system off.

    I can't believe you just talked about the burden of reading a reference. Give me a break sister.

    "Yeah,right, as if I didn't ever look for it.)"

    Boo hoo.

    "It's a harder call if the Examiner has not met his burden by explaining which portions of the provisional correspond to the relied-upon portions of the § 102(e) reference. You could appeal without saying more, and hope the Board applies Yamaguchi strictly. "

    Oh yes, the requirement in Yamaguchi'goo that the examiner state "both documents "clearly show the same subject matter"" must be STRICTLY enforced and if it isn't then all one would have to say to argue against it is to argue for a strict application of 'goo thus requiring that the examiner write in his next correspondence to you that "both documents "clearly show the same subject matter"". Whoa nelly, that'll sure get prosecution movin' right along!

    /facepalm Karen. You lawlyers would literally chop off your nose (pay for an appeal) to spite your face (your examiner on your application).

    The only thing of value from the 'goo case was one thing and one thing only Karen, whether or not the failure of the office to supply a copy of the provisional was grounds for applicant to argue that they hadn't been presented with the evidence since it is NPL. The board ruled that it wasn't. That's it, the rest of that show was supremely boring and didn't amount to a hill of practical beans.

    You're kind of bad at analyzing caselawl sometimes. And moreso at garnering takeaways.

    That said, I'll let anyone who wants to pay 10k$ to see me write "both documents "clearly show the same subject matter"" do so anytime. In fact, if they don't want to wait on the board, they could just pay me 10,000$ directly and I'll write it for them ten thousand times in cursive longhand, on a chalkboard if they want.

    http://www.penny-arcade.com/comic/2008/4/7/

    Play a card, tap a card, type in "both documents "clearly show the same subject matter"" meh, they're both pretty ez.

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  4. The "May 4, 2010 7:10 AM" post is what gives examiner's a bad name. I optimistically think that many examiners are not this bad, but whoever wrote that is really off (to put it politely).

    I know; the post may not have been written by an examiner. For examiners' sake, I would hope not.

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  5. >I can't believe you just talked about the
    >burden of reading a reference

    Not what I said. I said that the Examiner is supposed to point out particular portions of the reference that he/she is relying on in the rejection. In the specific scenario I talked about -- reliance on a provisional -- the Examiner is required to do so by Yamaguchi.

    When the Examiner doesn't do as required, the burden falls to the Applicant to search through the reference, trying to figure out what portions the Examiner might be relying on. And yes, that's a big burden if the document is 500 pages.

    >Maybe it's too burdensome for the examiner
    >to have to read 500 pages

    In my experience, it's apparently too burdensome for some examiners to read 10 page reference, and they prefer instead to match keywords in the reference with keywords in my claims. Resulting a rejection which is way off base, and lots of reopened prosecution.

    >You're kind of bad at analyzing caselawl
    >sometimes.

    The cases I discussed in the blog post were the *Board* analyzing and applying Yamaguchi. Based on those cases, the Board doesn't agree with your idea of "the only thing of value" in Yamaguchi.

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  6. APJ Torczon's concurrence in Yamaguchi is the correct view of secret prior art, in my opinion.

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  7. "Not what I said. I said that the Examiner is supposed to point out particular portions of the reference that he/she is relying on in the rejection. In the specific scenario I talked about -- reliance on a provisional -- the Examiner is required to do so by Yamaguchi. "

    Hardly. It holds exactly the opposite. It held that his blanket statement was plenty to tie his cites to the child to the prov.

    Stop crying about the 500 page "burden" already, seriously. This is patent lawl, you have to do some reading.

    "Based on those cases, the Board doesn't agree with your idea of "the only thing of value" in Yamaguchi. "

    You're absolutely right, the board has both misapplied and needlessly utilized portions of 'goo in places they hardly needed too.

    "The Board also seemed to ignore the Yamaguchi requirement in Ex parte Hartigan. "

    They didn't ignore it. There is no "requirement" like the one you want there to be from the 'goo case.

    "In Ex parte Zheng, the Final Office Action did not refer to any particular portion of the provisional. "

    Neither did 'goo. What of it?

    "Ignoring the Yamaguchi requirement, "

    Again, the supposed "requirement" is solely in your mind, not in 'goo. That's why it looks like it keeps being "ignored".

    "thus making an implicit finding that the provisional did support the reference"

    Exactly. And that's what you can look forward to everytime you hope for what you believe to be a strict application of 'goo.

    The Olsen case is just chock full of unneeded citations. Some clerk probably wrote it.

    Good luck with your supposed requirement in Yamaguchi.

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  8. "Hardly. It holds exactly the opposite. It held that his blanket statement was plenty to tie his cites to the child to the prov."

    Talk about having difficulty interpreting case law. 6tard still has no idea how to.

    "The Olsen case is just chock full of unneeded citations. Some clerk probably wrote it."

    And that clerk is still infinitely more qualified to be writing BPAI decisions than 6tard.

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