Details:
Ex parte Heller
Appeal 2010002978; Appl. No. 10/354,842; Tech. Center 2600
Decided: April 17, 2012
The invention related to an automotive brake light using an illuminated trademark or logo. One of the claims on appeal read:
37. A vehicle symbol illumination apparatus operable in conjunction with a vehicle braking or lighting system consisting essentially of:
one or more light sources;
one or more light-transmissive portions;
one or more non-light transmissive portions;
wherein said one or more light-transmissive portions are encased by said one or more non-light transmissive portions so as to form a logo, symbol or trademark associated with a vehicle model or vehicle manufacturer;
wherein said one or more light transmissive portions illuminate in conjunction with the activation of the vehicle braking system;
wherein said apparatus is to be located upon production substantially in the center of the trunk, spoiler, air dam or roof of the vehicle;
wherein said one or more light transmissive portions illuminate upon the braking of the vehicle simultaneously performing the function of the mandated high-mounted stop lamp and as a logo, symbol or trademark associated with a vehicle or vehicle manufacturer now merged together to form a single component of original manufacturer's automotive
equipment; and
wherein said light transmissive portion is a lens allowing illumination upon braking of the vehicle.
(Emphasis added.)
The Examiner rejected claim 37 as obvious over a single patent reference, Lee. The Examiner acknowledged that Lee did not disclose the "trunk" limitation, but asserted that brake lights are "typically" placed on trunks, and thus it would be obvious to modify Lee to use this location in order to intensify the illuminated appearance of the vehicle. The Examiner also acknowledged that Lee did not disclose the "lens" limitation, but asserted that "it is conventional in the art to use lens means to allow brake light illumination to pass in high mount brake light systems."
On appeal, the Applicant argued that Lee did not teach the "encased" limitation. The Applicant then argued that modifying Lee to use a trunk location would require "extensive tooling and redesign," so that a POSITA would not be motivated to use the claimed location. Finally, the Applicant attacked the Examiner's findings about a "typical" location and a "conventional" use of a lens, on the basis that these findings did not take into account the relevant timeframe, which is the time of the invention rather than the time of the rejection. "Further, to the extent the Examiner is considering what is typical [or conventional] now, he has overlooked the fact that the obviousness inquiry focuses on the time period of when the invention was made." (Citing W.L. Gore & Assocs. Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983).)
The Board affirmed the rejection. The Board first found that the Applicant's interpretation of "encased" was too narrow, and that Lee disclosed this limitation under a proper interpretation. The Board was not persuaded by the redesign argument, instead finding that a POSITA "can choose the specific location merely depending on the style of vehicle and aesthetic effect desired by a vehicle manufacturer," making such a choice obvious. Finally, the Board was not persuaded by the Applicant's obviousness timeframe argument:
We ... adopt the Examiner’s finding that the use of a lens would be obvious because lens have been employed for many decades, including the relevant time period, in brake light devices. (Ans. 7). Appellant has not offered any further explanation to rebut the Examiner’s assertion that the use of a lens would have been obvious.
(Emphasis added.)
My two cents: I know some practitioners who view the timeframe for obviousness as a weak point in most rejections. Some would probably say the Examiner hasn't actually made a prima facie case without a showing that the missing feature and/or the rationale-for-combining was known at the time of the invention.
Yet I never see this argument made. And this case seems to illustrate why not. While it may be true that the Examiner did not make a showing that lens were known and used in brake lights in 2003, who's going to go on record and actually say that they weren't? Nobody. So the best you can do is make the Examiner shore up his case with evidence, or perhaps an explicit taking of Official Notice. Perhaps that's all the attack-the-obviousness-timeframe-finding argument is meant to do.
In the end, the Board seemed to treat the Examiner's statement about the lens as quasi-Official Notice. Not surprisingly, the Applicant didn't bother to refute the statement that lens were known in 2003, nor that it was obvious in 2003 to employ a lens for a light transmissive portion of an illumination apparatus.
The claim appears to be to the apparatus not the apparatus and the car. This reads as an intended use limitation to me "wherein said apparatus is to be located upon production substantially in the center of the trunk, spoiler, air dam or roof of the vehicle" especially the 'is to be'
ReplyDeleteI am surprised the board allowed him to to say that this and the other feature were 'conventional' without another reference.
An examiner
"Appellant has not offered any further explanation to rebut the Examiner’s assertion that the use of a lens would have been obvious."
ReplyDeleteApplicants are not under any obligation to rebut any "assertions" made by examiners. Applicants are only obligated to rebut prima facie cases, i.e. legal conclusions based on facts that are supported by substantial evidence.
The number of APJ's that need remedial training in evidence and administrative law is very high. Might as well send all of them back to school.
>reads as an intended use limitation to me
ReplyDelete>"wherein said apparatus is to be located
Absolutely. The BPAI's treatment of intended use seems very arbitrary.
>surprised board allowed him to say [features]
>were 'conventional' without another
>reference.
Well, except that they so clearly are, right? And were so at the time of the invention.
As I said, it's almost as if the Examiner took Official Notice and the Applicant didn't bother to traverse. Would you agree these facts are something the Examiner could properly take Official Notice of?
"Would you agree these facts are something the Examiner could properly take Official Notice of?"
ReplyDeleteThere are no "facts" that an examiner "could properly take Official notice of." If you allow an examiner to take Official notice of any "fact" you are not doing your job correctly. Examiners are fact finders, not fact-maker-uppers. Make them do their jobs.
>There are no "facts" that an examiner "could
ReplyDelete>properly take Official notice of."
So you're saying the entire doctrine of Official Notice is ... what ... legally unsound?
Or are you saying instead that a practitioner should always challenge Official Notice?
That's hard to do under the current PTO requirements for traversal, which requires you to explain "why the noticed fact is not considered to be common knowledge or well-known in the art."
So ... suppose the Examiner takes Official Notice that the speed of sound at sea level is 761 m/hr, or that I=V/R. Are you gonna traverse either of those?
"While it may be true that the Examiner did not make a showing that lens were known and used in brake lights in 2003, who's going to go on record and actually say that they weren't? Nobody."
ReplyDeleteBecause most attorneys (and almost everybody at the USPTO) either don't know the law or willfully ignore it.
Let's start with obviousness. The scope and content of the applied prior art is one of the Graham findings of fact. Remember, this is a FINDING OF FACT. Federal Circuit case law requires that the USPTO findings of fact be reviewed to determine whether or not they are supported by substantial evidence (substantial evidence means "more than a mere scintilla").
To properly argue this issue, you must point out the lack of evidence supporting the Examiner's position. Without ANY evidence (i.e., not more than mere scintilla), the Examiner's findings are unsupported by substantial evidence. Therefore, these findings cannot be properly relied upon.
You do NOT have to prove the Examiner is wrong until the Examiner provides he/she is right. This is all about the burden of proof. The Examiner has not made out a prima facie case for the lack of findings of fact supported by substantial evidence. With no prima face case, the burden has not been shifted, and Appellants do not have to provide rebuttal evidence.
Far too many patent attorneys argue like engineers instead of attorneys. Know the law people!!!!!
"the Board seemed to treat the Examiner's statement about the lens as quasi-Official Notice"
No, the BPAI ignored the law because Appellants did not make the proper arguments. The BPAI will only consider arguments made by Appellants and will not consider arguments that could have been made but were not.
"So you're saying the entire doctrine of Official Notice is ... what ... legally unsound?"
I wouldn't call it unsound … just badly misused. You take Official Notice that there are 7 days in a week or that Christmas falls on the 25th of December. As stated by the MPEP, "[o]fficial notice unsupported by documentary evidence should only be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known."
"That's hard to do under the current PTO requirements for traversal, which requires you to explain "why the noticed fact is not considered to be common knowledge or well-known in the art.'"
You mean the USPTO requirements set forth during the Dudas administration that have ABSOLUTELY NO SUPPORT in case law? – an administration that went out of its way to do anything possible to (improperly) shift the burden of proof to applicants (just look at all the rule packages they tried to promulgate). Those requirements are a clear violation of Federal Circuit case law. It is burden shifting without substantial evidence. The MPEP is NOT law. If the BPAI is citing a passage in the MPEP (that does not have a corresponding cite to case law, regulation, or statute), the appellant needs to point that out to the BPAI.
"That's hard to do under the current PTO requirements for traversal, which requires you to explain 'why the noticed fact is not considered to be common knowledge or well-known in the art.'"
ReplyDeleteThere is no such requirement to traverse the examiner's use of Official notice. All PTO findings of fact must be supported by substantial evidence. See In re Gartside. If the examiners spouts bullshirt to the tune of, "The use of a lens is old and well known" or even if the examiner "takes Official notice that the use of a lens is old and well known..." it is a perfectly acceptable response to say, "Prove it."
The examiner is required to establish facts that support the conclusion. The examiner is required to provide substantial evidence for those facts. The examiner cannot shift the burden to applicant by "taking Official notice" and certainly cannot shift the burden AND require applicant to prove a negative (i.e. that the "noticed fact" is not common knowledge or well known).
That "proper traversal" garbage from the MPEP is exactly that: garbage. It is based on the PTO's inability to correctly analyze the relevant case law. Every case cited in the MPEP is from court review of BPAI decisions, IOW court/agency review. There is absolutely no requirement that applicant explain/prove that a "noticed fact" from an examiner's Office Action is not common knowledge or well known. Anybody who thinks that (including the MPEP editorial staff, the APJ's, the staff of the Deputy Commissioner for Patent Examination Policy, etc.) needs a remedial class in evidence and administrative law. Heavy duty remedial.
BTW, the speed of sound is the square root of the ratio of the bulk modulus to the density of the medium. And if an examiner takes Official notice that I=V/R, then I probably wouldn't traverse. But examiner's don't take Official notice of that. What I usually see is, "The examiner takes Official notice that it would be obvious to use a lens." Should I explain why that's bullshirt, or should I explain why it's not common knowledge or well known to use a lens? Which would you rather do?
"Far too many patent attorneys argue like engineers instead of attorneys. Know the law people!!!!!"
ReplyDeleteThis is good advice. Far too often the response to no-evidence-provided conclusory bullshirt "No it's not" from the examiners is "Yes it is, and here's why" from practitioners. If you respond like that, please do us all a favor and switch your practice to ambulance chasing.
Thanks DB!
DeleteYou're welcome, AH!
Delete"We ... adopt the Examiner’s finding that the use of a lens would be obvious because lens have been employed for many decades, including the relevant time period, in brake light devices. (Ans. 7)."
ReplyDeleteI went back and looked at the pros history. The examiner never made any "finding" with respect to the lens. What the examiner did on page 7 of the answer was make a bald faced conclusory statement, completely unsupported by substantial evidence, or any evidence, that "lens means have been employed for many decades." All conclusion, zero facts.
Applicant did challenge this "finding." In particular, the applicant noted that the term "lens" did not appear anywhere in the Lee reference, the sole reference relied upon.
These APJ's are the pits.
"Not surprisingly, the Applicant didn't bother to refute the statement that lens were known in 2003, nor that it was obvious in 2003 to employ a lens for a light transmissive portion of an illumination apparatus."
ReplyDeleteWasn't required to refute it. The applicant's attorney responded correctly on page 12 of the brief: clearly stated that the examiner provided zero support for the "finding" that lens were used for "many decades" and clearly pointed out that the sole reference, Lee, made no mention of a lens.
"Let's start with obviousness. The scope and content of the applied prior art is one of the Graham findings of fact. Remember, this is a FINDING OF FACT. Federal Circuit case law requires that the USPTO findings of fact be reviewed to determine whether or not they are supported by substantial evidence (substantial evidence means "more than a mere scintilla")."
ReplyDeleteDon't forget that the Determination of Level of Skill in the Art is also a Graham requirement but ignored by both Examiner and Applicant. Requiring the Examiner to determine skill level provides Applicant with ammunition to refute positions taken by the Examiner that don't jibe with its skill level determination.
Not PTO-made, but a judge-made rule that traversing official notice takes more than pointing out that no evidence has been supplied (i.e., requires more than a demand for evidence). See, e.g., In re Boon, 169 USPQ 231 (CCPA 1971)(challenge to judicial notice by the board must contain adequate information or argument so that on its face it creates a reasonable doubt regarding the circumstances justifying the judicial notice). It's a waste of time to find a reference that lens means have been used for many decades or that water is wet.
ReplyDelete>In re Boon, 169 USPQ 231 (CCPA
Delete>1971)(challenge to judicial notice by
>the board
Thanks for the cite. That was indeed the rule I was referring to.
Boon is, I suppose, distinguishable in that it's about *judicial notice by the BPAI* rather than Examiner notice. Not sure if that's a distinction without a difference.
I don't know enough about Fed Cir precedent or about admin law to say whether the BPAI is out of line in applying In re Boon as it does.
In comments on other posts, I've seen talk about findings of skill in the art. Similarly, I don't know whether the BPAI's refusal to require the Examiner to make findings about skill in the art comports with Fed Cir precedent or not.
My focus on this blog is what works in appealing to the Board. Someone else will have to go to the Fed Cir and get the BPAI to change their practices.
First off, the issue raised within In re Boon regarded the "use [by the Board] of facts judicially noticed." As characterized by the CCPA, to allow "a bald challenge, with nothing more" to justify the reopening of prosecution "would effectively destroy any incentive on the part of the board to clarify or justify a position taken by an examiner through the artful use of facts judicially noticed." Therefore, the issue within In re Boon is the sufficiency of the traversal needed to establish that the Board raised a new grounds of rejection through the use of facts judicially noticed. In short, In re Boon is not on point.
DeleteRegardless, the CCPA only required that "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." They emphasized the phrase "on its face," which is legal shorthand for "prima facie" and is presumed to be true unless disposed. Therefore, the CCPA implemented a very low threshold for traversing.
Another point lost upon the BPAI is that Boon was decided before Zurko, which establishes that the USPTO be bound by the Administrative Procedure Act. Therefore, Boon is overruled to the extent that it conflicts with Zurko.
"My focus on this blog is what works in appealing to the Board. Someone else will have to go to the Fed Cir and get the BPAI to change their practices."
No Karen … your blog appears to be mostly focused on sniping on what didn't work for other attorneys. What works with the BPAI is knowing Federal Circuit precedent and knowing administrative law. Granted, few patent attorneys have a solid grounding in both, but if you want to be a zealous advocate for your clients at the BPAI, you should take the time to learn.
I'll repeat what I stated earlier which is that the BPAI only considers those arguments raised by Appellants – not those that could have been raised but were not. When the Examiner says reference A teaches X, Y, and Z but the reference actually teaches X, Y, and Z, you can argue reference A teaches G not A, but you leave too many outs for the BPAI.
Assume, for sake of argument, it is a 103 rejection. In no particular order you argue that (i) the Examiner has failed to explicitly present an explicit claim construction for Z; (ii) the Examiner has failed to explain why G corresponds to Z; (iii) the Examiner has failed to present any substantial evidence to support a finding of fact, under Graham, that scope and content of A includes Z. The magic words include burden of proof, substantial evidence, findings of fact, scope and content, Graham, evidence, explicit claim construction. If you (or any other attorney) understand the meaning (and case law) behind these magic words, you'll be able to write better arguments before the BPAI. Granted, simply arguing A doesn't teach Z may work, but I've seen the BPAI play too many games, and the better arguments you make, the less games they'll play.
Ultimately, if more attorneys make better arguments before the BPAI, they'll be less inclined to skirt the law. However, if no one is holding their feet the fire, they have no incentive to change. Also, like many examiners, a lot of them just don't know the law. They crib from other Decisions (with misapplied law) and never know that what they are doing is wrong. One of the biggest mistakes you can make is to assume that the BPAI knows the law and that they will faithfully apply it – you need to make sure that they know it and they know you won't take sht from them.
"Similarly, I don't know whether the BPAI's refusal to require the Examiner to make findings about skill in the art comports with Fed Cir precedent or not."
DeleteIn a way it does, but in a way it doesn't. The BPAI has taken the holding of the Federal Circuit's Chore-Time case and twisted it to stand for the proposition that Examiners are essentially never required to explicitly determine skill level on the basis that the cited references inherently determine skill level. Chore-Time involved a litigation and the issue was whether the failure to explicitly determine skil level was reversible error, requiring re-trial. In subsequent cases, the Federal Circuit clarified that explicit determination was not required where the cited art reflects an APPROPRIATE level of skill and where the finding, or lack thereof, does not have an impact on the ultimate conclusion of obviousness. Those last two points give Applicants ammunition to use against the Examiner.
In re Boon. That's court/agency review as I noted above. It is not board/examiner review. Another poster also thoroughly discredited your application of the case.
DeleteYou apply case law like somebody who works at the PTO. Probably because you do.
Zurko? Zurko? Where a Fed. Cir. panel tried to overrule the CCPA precedent of In re Bozek? Common sense has no part in an analysis for obviousness? How did that work out for you? (Hint: think KSR.)
DeleteI don't see anything in Dickinson v. Zurko that is inconsistent with official notice by the PTO. Mere uncoroborated hearsay can be "substantial evidence." Richardson v. Peralis, 402 U.S. 389 (1971).
Since we seem to have a gathering of Zurko experts, please explain how Zurko followed the law when the en banc Fed. Cir. determined that the standard of review made a difference in the case, the Supremes said the more deferential standard applied, the en banc Fed. Cir. sent the case back to the panel, and the panel said the case came out the same under the more deferential standard of review.
What does any of that have to do with the fact that Boon is inapposite to the situation of an examiner taking Official notice and an applicant demanding substantial evidence?
DeleteHint: it doesn't have anything to do with it.
"Another point lost upon the BPAI is that Boon was decided before Zurko, which establishes that the USPTO be bound by the Administrative Procedure Act. Therefore, Boon is overruled to the extent that it conflicts with Zurko."
DeleteThere was no need to respond to the "inapposite" part because it cites no authority.
Lulz. I wasn't aware that you needed to cite "authority" to distinguish a prior precedent with the facts of the case at hand. Probably because you don't.
DeleteBTW, Bozek doesn't help you either.
Examiners have to provide substantial evidence to suppor their findings of fact. Reliance on Official notice, common knowledge, or whatever bullsh!t short cut they wanna take, doesn't cut it. And the only response required from applicant is, "Prove it."
"In short, In re Boon is not on point."
DeleteThat's the extent of the analysis as to why Boon is "inapposite."
Feel free to cite controlling authority which holds that legal principles in any case apply only the the facts of that case.
"Examiners have to provide substantial evidence to suppor their findings of fact. Reliance on Official notice, common knowledge, or whatever bullsh!t short cut they wanna take, doesn't cut it. And the only response required from applicant is, "Prove it.""
DeleteIn this thread, JD clings to his old-timer's view of official notice. That never really was the official view of official notice but he <3's it anyway because he grew up with it.
And trust me guys, JD is no expert on Zurko, when me and him threw down on this subject not 4 years ago he hadn't even bothered to read the case. I doubt if he has since.
I remember that exchange. Your position was that the examiner's taking of Official notice was "the statement of a government official on the written record which is substantial evidence."
DeleteLulz.
You still don't know anything about evidence, facts, law, or much of anything else.
Sure you do. And I lifted that from someone more knowledgable than myself (and you apparently) obviously I didn't dream it up out of the ether.
Deletethis is a de facto Official Notice, and Appellant should have challenged on those grounds instead of what he did, aruguing that "these assertions improperly considered knowledge at the time of the rejection rather than the time of the invention", i mean really, what IS that?
ReplyDeletebut in reality that probably wouldnt have gotten him too far either, come on, lens is a no brainer. nonetheless, it is counsels responsibility to challenge unsubstantiated assertions
and further on this point, the response to almost any unsubstantiated assertion should not be "nuh uh", but rather, "prove it"
Delete"Boon is, I suppose, distinguishable in that it's about *judicial notice by the BPAI* rather than Examiner notice. Not sure if that's a distinction without a difference."
ReplyDeleteIt's a distinction that makes all the difference.
"I don't know enough about Fed Cir precedent or about admin law to say whether the BPAI is out of line in applying In re Boon as it does."
You went to law school, no? Did you learn about standards of review? Did you learn that in order to rely on a prior decision as binding precedent the facts of the prior decision have to be substantially similar to the facts of the case at hand? Did you participate in any moot court competitions in law school? Did you learn that if you cite a case to a judge that your opponent can easily distinguish you're gonna look like an idiot?
Don't be an idiot. Leave the idiotic case law distortion to the true professionals: the PTO.
"It's a distinction that makes all the difference."
DeleteNot really. You're just really bad at admin lawl. Just like you were 4 years ago. Strangely your views on nearly every other topic have since changed. Where is your old-school TSM requirement now bro?
"You're just really bad at admin lawl" says the examiner who can't even get into law school.
Delete"It's a waste of time to find a reference that lens means have been used for many decades..."
ReplyDeleteIt is? The claims recite it but the sole reference applied doesn't even mention it.
You must be an examiner. Or worse, a lifer APJ.
"That's the extent of the analysis as to why Boon is 'inapposite.'"
ReplyDeleteUh, no, I think this is the extent as to why Boon is inapposite:
"First off, the issue raised within In re Boon regarded the 'use [by the Board] of facts judicially noticed.' As characterized by the CCPA, to allow 'a bald challenge, with nothing more' to justify the reopening of prosecution 'would effectively destroy any incentive on the part of the board to clarify or justify a position taken by an examiner through the artful use of facts judicially noticed.' Therefore, the issue within In re Boon is the sufficiency of the traversal needed to establish that the Board raised a new grounds of rejection through the use of facts judicially noticed. In short, In re Boon is not on point.
Regardless, the CCPA only required that '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.' They emphasized the phrase 'on its face,' which is legal shorthand for 'prima facie' and is presumed to be true unless disposed. Therefore, the CCPA implemented a very low threshold for traversing.
Another point lost upon the BPAI is that Boon was decided before Zurko, which establishes that the USPTO be bound by the Administrative Procedure Act. Therefore, Boon is overruled to the extent that it conflicts with Zurko."
You must have skipped over that. In a rush to get those counts in I guess.
"Feel free to cite controlling authority which holds that legal principles in any case apply only the the facts of that case."
Ah yes, the old "completely misstate what was said" examiner trick. Didn't say prior precedent applies "only" to the facts of that case. I did say there has to be some substantial similarity between the facts of a prior precedent and the case at hand in order for the holding of the precedent to have some binding authority on the court.
The "legal principles of any case" (i.e. the PTO) approach to case law. I seem to remember that. Wasn't it the PTO's position that the "legal principle" of In re Bogese allowed the PTO to use its "inherent authority" to limit the number of continuations that could be filed? How'd that work out for ya?
It does get confusing when there are more than one "Anonymous"es to reply to. Not misstating, just answering.
DeleteLet's make it simple. Anyone "Anonymous" please cite a CCPA, Fed. Cir. or S.C. case which holds that a taking of Official Notice by the PTO, which has not been properly traversed by the applicant, fails to qualify as "substantial evidence."
Of course, there is none. Why is that? Might have something to do with the fact that every current Federal judge knows that cars have had lenses over brake lights for many decades. And that water is wet.
What is "a taking of Official Notice by the PTO"? All of the cases you cited are cases of the standard involved in court/agency review (i.e. a taking of Official notice by BPAI). Of course, what we're talking about is BPAI review of examiner findings.
DeleteWhat is "properly traversed by applicant"? In the context of an examiner's Office Action, the only traversal required is imposed by Rule 111, which requires applicant to point out the supposed errors in the Office Action. Examiner findings of fact that have no substantial evidence support are errors. Therefore, the only response required, by Rule 111, is pointing out the lack of substantial evidence support. There is no requirement, in 37 CFR, 35 USC, or any precedent of any court, that requires applicants to explain why "noticed facts" are not considered to be well known (or whatever nonsense the MPEP says). That entire section of the MPEP is premised on cases that deal with the standard of court/agency review, and are inapposite (i.e. not pertinent) to the burden of proof that is, and remains, on the examiner throughtout the prosecution, and to the review of examiner findings required by BPAI.
"Of course, there is none."
Lulz. Of course, if there was even one case that "held" that applicants are required to explain why noticed facts are not considered to be well known, you would think that case would be cited in the MPEP. But there isn't any such case cited in the MPEP.
Hm, I wonder why that is?
(sigh)
DeleteAnybody Anonymous --
Please admit or deny: "A statement can be evidence."
" Please admit or deny: 'A statement can be evidence.'"
DeleteMust be an examiner or APJ – there is far more nuance involved in answering that question such that a simple "yes" or "no" requires some explanation.
Some case law to consider:
From the MPEP:
The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.").
Another thing to consider is 37 CFR 1.104(d), which states "[w]hen a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons."
When read together, neither the applicant (i.e., via applicants' attorney) nor the examiner can make "statements of fact" without some evidentiary basis (e.g., through the use of a declaration/affidavit). As a matter of common sense, you cannot have any side making "statements of fact" that are to be relied upon when a decision of the agency is being reviewed. If so, either side could simply make up facts that are not true. As a matter of due process, each side must present substantial evidence to support their positions.
As a matter of practicality, however, both the USPTO and applicants make statements all the time that do not find factual support in the record and are relied upon by the BPAI. However, to the extent that one side calls other side's "factual statements" into question, the burden is on the other side to put up or shut up. You don't have to prove that the statement is false, because to do so improperly presumes that the statement is true.
Thus, to answer your question …. yes, until the other side calls that statement into question.
"Must be an examiner or APJ"
DeleteNah. Em's even dumber than that. Probably a QAS, or a TQAS, or an RQAS, or a SPRE, somebody from OPQA, or, lulz after unending lulz, somebody from the MPEP editorial staff. But clearly a typical know-nothing-do-nothing-useless GS-15 middle-(mis)management stoogetard. There's lots of those over there.
No, there's no nuance in the yes or no question as to whether a statement can be evidence. Thought it would be simpler to introduce one concept at a time as opposed to the arguments that start and conclude with a conclusion. We have made progress. No one has denied that a statement can be evidence.
DeleteWe did? MPEP 2144.03 and all of the Case law interpretations in it are still bullish!t. But you got an admission!!!! Yay for you!!!!!
DeleteSo what was your point anyway?
Boys and girls, let this be a lesson to you: if you work at the PTO too long you end up like this poster - nothing left but silly little exercises in sophistry.
ReplyDeleteYes, in a contested case, for example a criminal or civil suit, a statement may be evidence. However, in the ex parte prosecution of a patent applications, statements are not evidence. The "statement" of an examiner as to what is "common knowledge" or "well known" is not evidence. It's nothing. An examiner cannot establish facts simply by "stating" them. The examiner has to provide substantial evidence to establish facts. Examiner "statements" are not substantial evidence. If you think that they are, you've got a lot of remedial education to get through.
Enjoyed your cite to Richardson vs. whoever. I'm sure its "holding" as to the admissibility/probative value/whatever of hearsay statements is entirely apposite to patent prosecution. You might just be that a$$hat lifer APJ who cites the Supreme Court case "that holds that silence equals assent." If so, do us all a favor and get some help. You need it.
So yes, I've "admitted" that statements may be evidence. Congratulations. Now go get yourself some help.
Translation for those playing the game at home:
Delete(1) Yes, I admit that a statement can be evidence.
(2) I do not know that the BPAI hears contested cases.
(3) I will cite nothing in support of my rants, but I will "distinguish" a case that I have not read.
Unsupported assertions -- no cost.
Arguments that can never win on judicial review -- priceless.
Even if the Applicant gets the case law right, if the BPAI doesn't get it right, your only recourse is appeal to the Federal Circuit and the BPAI plays the odds that appeals to the Fed Cir ain't gonna happen all that often.
ReplyDeleteThe cheapest course of action, and the speediest, is to win over the Examiner. That is best accomplished through courtesy and reason. When that fails and the Examiner is so intransigent, then the gloves come off. Research the Examiner you're dealing with and know their weaknesses. Examiners like to surprise applicants by citing the applicant's own prior art against them but priceless is the face of an Examiner who has a BPAI decision where they were reversed cited to them with an explanation as to why the reasons behind their reversal are applicable to the rejections in the case before them.
Anonymous, you echoed the point I tried to make earlier but you much did a better job.
DeleteMy goal is to win at the BPAI, because very few clients will appeal to the Fed Cir. I try to convince the Examiner first, but if that doesn't work I take it to the BPAI.
>Examiner who has a BPAI decision where
>they were reversed cited to them
Hmm. Interesting tactic. As you suggest, throwing this in the Examiner's face might piss him off. So I like your strategy, but might save it for the Appeal Brief, when I've already decided to go past the Examiner.
>appeals to the Fed Cir [from BPAI]
Delete>ain't gonna happen all that often.
As an aside -- and a completely new topic -- I'm really surprised by how many *weak* cases get appealed to the Fed Cir. There are quite a number of Rule 36 affirmances that an experienced practitioner would realize have no chance at all of winning.
"I'm really surprised by how many *weak* cases get appealed to the Fed. Cir."
DeleteI'm not. Whether to appeal or not to appeal involves several factors besides your chances of success. Sometimes, you have a deep pocketed client that wants to take it to the Supreme Court because they "know" they are right. Other times, you know that the payoff is so high (e.g., the patent is worth $10M if issued) that even if your chance of success is only 10% that it is worth it to spend $200K on an appeal to the Federal Circuit.
As such, there are many reasons why you might take a potential loser to the Federal Circuit.
https://dl.dropbox.com/u/22398979/year2012/1807/affirmed-in-part/TREND.pdf
ReplyDeleteStart reading on the bottom of page 4 through the end of page 5 of the BPAI decision in 90/011,022 and then get back to me as to whether examiner "statements" are evidence.
Review the applicant's arguments on pages 18-19 of their appeal brief, and review the oral hearing transcript beginning on page 3, line 16 through the end of page 4. Concise arguments that the examiner didn't present any substantial evidence that the reference was a printed publication. No attempt to "refute" the examiner's "statement" that it was a printed publication, no "explanation" of why it wasn't a printed publication. (Note also that the APJ invited counsel to skip that argument as her brief had already thoroughly demolished the examiner's "statements" that the Norman reference was a printed publication.)
I'd insert a really lame and tired joke using MasterCard's "priceless" ad campaign, but you set the bar so high on that so I'll just concede that you're much wittier than me.
You need to be explicit about what it is you're trying to show with the linked opinion. The relevance is not apparent. The topic is "Official Notice" at the PTO.
DeleteI thought I was explicit. And yes, we were discussing Official notice, but I think we kinda got sidetracked by somebody's attempt to argue that "statements" by examiners are evidence in ex parte prosecution of patent applications. The BPAI opinion I cited is pretty explicit on what probative value examiner "statements" have: none. I don't know about you, but in my evidence class I was taught that something with zero probative value is not evidence.
DeleteI'm beginning to understand your confusion, and perhaps that of some of the other commentators here. First, you have to understand that saying "a fox can have rabies" is not the same as saying "all foxes have rabies."
DeleteI wasn't confused until your post. Now I am confused. Are you saying that I'm confusing "an examiner's statement can be evidence" with "all examiner statements are evidence"?
DeleteNo "statement" by an examiner with respect to the factual inquiry into the scope and content of the prior art is evidence. None. An examiner's "statement" on any factual inquiry is never evidence. Do you disagree?
"So I like your strategy, but might save it for the Appeal Brief, when I've already decided to go past the Examiner."
ReplyDeleteCiting a prior decision of a different panel reversing the examiner of the application you're appealing would be beyond a pointless exercise. It has zero probative value and no persuasive effect. What, you think the APJ's are gonna go, "Gee, this examiner got reversed before, so I guess he/she is wrong in this case too"? The insulting implication of your argument would be enough to turn many of the APJ's against you. And as most of the lifer APJ's are of the affirm-at-all-cost mentality and looking for any reason, no matter how tenuous, to affirm, why give them any extra motivation?
I disagree. I haven't done it before, but if I have an examiner that constantly argues that limitation "A" shouldn't be given patentable weight because it is "optional" and he/she has been reversed on that point several times at the BPAI, I wouldn't hesitate to cite those prior decisions.
DeleteWhether it is the BPAI or Fed. Cir, you want cite cases that have similar facts/legal issues to the one you are facing.
"Gee, this examiner got reversed before, so I guess he/she is wrong in this case too"?
Must be a USPTO-lifer ... cannot read what is written. The original poster, who suggested the idea, wrote "with an explanation as to why the reasons behind their reversal are applicable to the rejections in the case before them."
I'm not at the PTO. I'm a practitioner. The argument will be dismissed out of hand by the BPAI, and rightly so, as totally lacking in merit. The issue is: in the case under appeal, did the examiner improperly refuse to give patentable weight to limitation "A". Whether the examiner had done so in another application, and been reversed, has absolutely no bearing on the analysis required to determine the propriety of the rejections under appeal. That's exactly what you'll find in the BPAI's decision. And they'll be correct.
Delete>zero probative value
DeleteAgreed it's not legally relevant and will be seen as such by the BPAI.
>no persuasive effect.
Dunno about that. I would hope it would be persuasive to at least some Examiners and to at least some Appeal Conferees.
Not so much for the res judicata effect (none). More that we're adding more explanation ("reasons behind [the BPAI's] reversal [and why they] are applicable to the rejections in the case before them").
I could see it having some res judicata or collateral estoppel effect. For example, you're on your second continuation and you need to appeal. In your original priority application the BPAI determined that the examiner was giving a particular claim term the BUI, or was insisting that some feature was inherent, etc. and the examiner is still pressing those lost issues. But arguing that "In totally unrelated app XX/YYY,YYY the examiner was reversed for failing to give limitation A patentable weight and should be reversed in this case for the same reasons" isn't going to get you squat from the BPAI.
DeleteI had an examiner tell me that the term "downstream end" was a functional limitation and not entitled to patentable weight. I cited numerous patents where that term appeared in the claims, including patents that he'd issued. He wasn't persuaded. Of course, he's an idiot. Hint: he's in what was AU 3663 (now 3646 or something) and probably has more posts written about him at the usptoexaminers cite than any other examiner at the PTO. He's the classic blowhard examiner: "Go ahead and appeal, I've never lost." Of course, when you appeal he re-opens.
"I would hope it would be persuasive to at least some Examiners and to at least some Appeal Conferees."
Appeal conferees?! Lulz. Those are the cream of the crop of the know-nothing-do-nothing-useless-GS-15-middle-(mis)management-stoogetards. If you argued in a pre-appeal or a brief that the examiner was reversed on the same issue in another application, their reaction would be, "Ah, so what, those APJ's don't know anything anyway."
The argument's a loser. Don't waste your time on it.
How do you know it's a loser argument if you've never tried it? You have four BPAI decisions where the panel reversed because the Examiner misapplied Official Notice. You're appealing based on the Examiner misapplying Office Notice. You're showing that this Examiner has a history of not knowing how to apply Office Notice. It's some ammunition to back up your argument on the facts of the instant appeal that the Examiner misapplied Official Notice.
DeleteYou use the previous rejections not for proving that the Examiner screwed up in the instant case, but that the Examiner screwed up on the same issue in the past and it's more likely than not that the Examiner did so again on the same issue in the instant case.
.
How do I know it's a loser argument? Because I understand the law.
DeleteThen please cite which statute, regulation or case law from which you draw your understanding of the law with regard to citing an Examiner's own previous adverse BPAI decisions in a current case because your position seems to be based more on opinion than law.
Delete"You use the previous rejections not for proving that the Examiner screwed up in the instant case, but that the Examiner screwed up on the same issue in the past and it's more likely than not that the Examiner did so again on the same issue in the instant case."
DeleteDo they really?
Firstly, keep in mind that in all likelihood the prior BPAI decisions you're going to cite are non-precedential. That doesn't necessarily mean they are not evidence, or that they have no persuasive effect, but it does mean that their persuasive effect is rather limited. I would argue their persuasive effect on any particular BPAI panel is essentially zero.
Secondly, have you considered your duty of candor to the PTO? So you're gonna cite 4 prior BPAI panel decisions to show "that this Examiner has a history of not knowing how to apply Office Notice" and "screwed up on the same issue in the past and it's more likely than not that the Examiner did so again on the same issue in the instant case." Are you gonna cite any prior BPAI panel decisions of the same examiner where his/her reliance on Official notice was affirmed? You are aware that if you're citing "authority" (binding or not) that allegedly supports your position, you also have an obligation to cite "authority" that contradicts your position, are you not?
Now extrapolating on that thought a bit, are you going to go back and review every Office Action that examiner ever issued and determine in which ones the examiner relied on Official Notice? Are you going to check to see if the examiner relied on it and wasn't challenged, which would, arguably, tend to show that it's more likely than not that the examiner does know how to rely/apply Official notice? Are you going to find those Office Actions where the examiner relied on Official notice, was challenged, and then provided the evidence, which again would, arguably, tend to show that it's more likely than not that the examiner does know how to rely/apply Official notice? Once you find all that evidence, are you gonna cite it to the BPAI in your appeal brief, or are you just gonna cite the 4 decisions where the examiner was reversed?
continued...
DeleteExtrapolating a little further, let's say you're appealing a 102 or 103 rejection. Hey, let's cite 4 prior BPAI where the examiner was reveresed on 102/103 issues as evidence that it's more likely than not that the examiner has a history of not knowing how to apply 102 and/or 103 and screwed up again in this case. Think that's gonna work? And again, are you gonna fulfill your duty of candor by citing prior BPAI decisions where the examiner was affirmed on 102 and/or 103? Are you gonna review every Office Action the examiner ever issued with a 102 and/or 103 rejection and determine in which ones applicant amended in response to the rejection, which would, arguably, tend to show that it's more likely than not that the examiner does know how to apply 102 and/or 103?
Thirdly, I've attended enough bar association meetings where APJ's spoke on panels about what they find persuasive and unpersuasive to form an opinion on this little scheme you're so enthusiastic about. I also have many former colleagues (at least a dozen), from my time at the PTO and my time in private practice, who are APJ's. I'm pretty confident all of them, and all of the APJ's that I wouldn't know from Adam, would all find this "evidence" to be completely worthless. But don't take my word for it, the next time there's an IPO, AIPLA, ABA IP section, etc. meeting where APJ's are going to be on a panel, feel free to attend and during the Q&A session hop up to the microphone and ask any one of them what they think of this kind of "evidence."
Lastly, I know it's a loser argument for the same reason that you do. "You use the previous rejections not for proving that the Examiner screwed up in the instant case." That's your quote, is it not?
One more thing: although it's a remote possibility, maybe even too remote to worry about, let's say you cite your 4 prior BPAI decisions, and nothing else. One of the APJ's, maybe a lifer a$$hat, gets a bee in his/her bonnet, and finds some prior decisions where the examiner was affirmed on the particular issue. Prior decisions that you didn't cite. That APJ picks up the phone and calls OED. No matter how remote that possibility, do you really want to even bring it about?
DeleteIn other words, you can't cite any statute, regulation or case law from which you draw your understanding of the law with regard to citing an Examiner's own previous adverse BPAI decisions in a current case.
DeleteYou simply could have said so.
Do I really need to cite whatever section of 37 CFR that defines your duty of candor to the PTO, or whatever section of FRE or APA that is applicable to what I posted?
DeleteI don't think the "evidence" you want to cite is relevant, i.e. I don't think it tends to prove that the rejection is more likely improper than not for the reasons I posted above. Insert whatever cite to FRE or APA or whatever precedent you want.
Here's an idea, why don't you respond to the substance of what I posted rather than fixate on whether I can cite "any authority or statute or regulation or case law"? Do you think my criticism of your little scheme is incorrect, regardless of whether it's merely my opinion or whether it's based on some "authority" that I can happen to cite, and if you do think I'm incorrect, what is your response?
If you need a cite to some "authority" to allow you to evaluate the merits of what I posted I can understand why you think citing this "evidence" is such a good idea. It's a loser argument, you're going to look like a loser if you cite it, but because there's no "authority" that I might bother to cite you that you can run to for confirmation, then by all means go ahead and cite this "evidence" in your next appeal brief. Please post the serial number of the case so we can get a laugh when the BPAI tells you what a loser argument it is.
As it's clear that whatever partner or senior associate assigned to mentor you is doing an awful job (though I can understand the frustration they must be experiencing and wouldn't fault them for concluding you're a hopeless case), here's some "authority" for ya:
Delete37 CFR sections 41.30, 41.33(d), 41.37(c)(1)(ix), 41.12(b) and arguably 10.89(b)(1).
Wow! You are extremely defensive!All you had to say was that you couldn't cite any statute, regulation or case.
DeleteInstead, you launched into a rambling, mutli-post diatribe including, but not limited to, an ad hominen attack.
Do you need me to cite some authority that you're not entitled to the entry and consideration of new evidence after the filing of a Notice of Appeal, or can you find it yourself? (Hint: it's in 37 CFR 41+.)
Delete"All you had to say was that you couldn't cite any statute, regulation or case."
Your reading comprehension is terrible.
So do you still not understand that the idea to cite prior BPAI decisions is a loser, or should I cite some more authority for you?
You remind me of the Black Knight from Monty Python and the Holy Grail. You've got no arms or legs to stand on, but claiming it's just a flesh wound.
DeleteGiven the insightfulness of your posts, I can understand how you might think that.
DeleteGiven the defensiveness of your posts, it's understandable why you act like that.
DeleteYet you keep responding. Not getting enough face time with the partners?
DeleteI pull your strings and you dance. You are just way to easy to manipulate.
DeleteBy the way, even first year practitioners are aware that citation of a non-binding BPAI decision in an appeal brief is not new evidence. It's actually rather common practice to cite a case in an appeal brief that wasn't previously cited to the Examiner during prosecution.
DeleteFrom one of the posters below:
Delete"Practice tip: it's better to cite no evidence at all than evidence that is clearly irrelevant. Hurts credibility."
When you get to your second year of practice you may find that citing non-binding, inapposite BPAI decisions in your appeal brief makes you look dumb and desperate.
Live and learn though.
Again, all you had to do was admit that even first year practitioners are aware that citation of a non-binding BPAI decision in an appeal brief is not new evidence and that it's actually rather common practice to cite a case in an appeal brief that wasn't previously cited to the Examiner during prosecution.
DeleteAll your defensiveness and ad hominen attacks exhibit all the signs that you've undergone career burnout.
Seek help.
I pull your strings and you dance.
DeleteAwwww! You're so cute when you try to imitate the grown-ups. Lulz!
DeleteKeep dancing. I'll keep grinding the organ.
DeleteYes, it's quite clear that you spend all day playing with your organ, easily spotted as the Blind Guy with Hairy Hands.
DeleteAn extra banana for you for that incredibly original response.
DeleteYou checked back at least three times since that last post to see if I responded. As I said, I pull your strings and you dance.
DeleteFeel free to get in the last word. I know how important that is to your kind.
No help over at the greedy ip site either, huh?
DeleteI would have liked something substantive in response from you. But as all you're seemingly capable of is illogical circular reasoning, I guess I'll settle for what's offered.
IEEE provided a sound discussion of the flaws in the PTO's understanding of Official Notice in a recent notice and comment letter:
ReplyDeletehttp://www.uspto.gov/news/fedreg/comments/0651-0031_IEEE_Comment.pdf
starting at page 43
The master has spoken.
DeleteThe master of tomtar dery. And what's worse, him and his ta rd gang appear to have pulled the good IEEE into their tomtar dery.
DeleteResolved: A statement can be evidence.
ReplyDeleteAnybody Anonymous: please admit or deny --
"A statement that consists of uncorroborated hearsay can be 'substantial evidence' under the APA."
(yawn)
DeleteHow about getting to the point that thus far you've been fantastically unsuccessful in making.
Enjoyed your comments on Zurko. Let me quote them:
"Zurko? Zurko? Where a Fed. Cir. panel tried to overrule the CCPA precedent of In re Bozek? Common sense has no part in an analysis for obviousness? How did that work out for you? (Hint: think KSR.)"
The issue in Zurko wasn't the use of "common sense" in the analysis of obviousness. The issue in Zurko was the BPAI's reliance on "common knowledge" without pointing to something concrete in the record to support its conclusion. And whether Federal Circuit review of BPAI findings of fact was subject to clear error review (as advocated by the Federal Circuit) or the substantial evidence review of the APA.
Did you even read the case?
There were several "Zurkos." Are you talking about the one that the Supremes reversed? Are you talking about the Supreme Court case, which said nothing about "basic knowledge and common sense." Or the later panel decision that (illegally) refused to follow the earlier en banc determination that the outcome in that particular case turned on the standard of review? And which of these Zurkos, exactly, even mentioned Official Notice at the PTO?
DeleteI don't think our PTO poster has read any of them. But as I wasn't the one that brough up Zurko, I don't particularly care.
DeleteAnonymous (yawn) is confused but probably talking about the illegal panel decision, which addressed "basic knowledge and common sense" but not "common knowledge."
DeleteJD has apparently lost his marbles. The PTO nor the person appealling was arguing against the official notice being taken in that case, or it being substantial evidence. Indeed, the thing which the office took official notice of went unchallenged.
DeleteYou need to refresh your memory old timer. Go reread the case, slowly this time.
The other guy is right about there being lots of Zurkos, but they're all a big ol part of the Zurko puzzle.
"...the illegal panel decision..."
ReplyDeleteLulz. Keep tilting at the windmill, Don.
Are you ever going to get to the point with your "uncorroborated hearsay" line of questioning, or are you going to continue to bore us?
"...the illegal panel decision..."
DeleteI was only identifying which Zurko. Is "the rougue panel decision that was abrogated to the extent that it conflicts with KSR" more acceptable?
I'm still waiting for you to get to whatever point you're trying to make with your lame interrogatories. But I guess you don't actually have one, so I'll stop now and move onto some actual work. Feel free to do the same.
DeleteDon't hint at your deep understanding of Zurko and then just leave. COME......BACK...!!!!
DeleteLulz. You must have been involved in Zurko somehow. Like some flunky in the solicitor's office or something.
DeleteSo you pressed your case for more deferential review all the way to the Supremes. And they agreed with you!!! But you still lost under the more deferential standard.
You can let it go now. It's been 10+ years. It's too late to put J. Archer back on your Christmas card list, but I'm sure J. Newman and Mr. Michel would love to hear from you.
Yes, isn't it strange that when you parrot a case name to stand for some proposition people here seem to expect you to know something about the actual case.
DeleteAnonymous (Lulz) -- you'll find that all the information is in the published cases of Zurko I through Zurko IV, if you ever bother to actually read them.
Delete"Or the later panel decision that (illegally) refused to follow the earlier en banc determination that the outcome in that particular case turned on the standard of review?"
ReplyDeleteYou got a cite from the earlier en banc determination (i.e. Zurko II) that "the outcome in that particular case turned on the standard of review"?
"the rougue panel decision that was abrogated to the extent that it conflicts with KSR"
From Zurko IV (i.e. the "illegal or rogue panel decision"): "This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support." 258 F.3d at 1385.
Nothing in KSR relieved the PTO of supplying substantial evidence when relying on "common sense" in a 103 rejection. There is no "conflict" between Zurko IV and KSR.
"Concluding that the outcome of this appeal turns on the standard of review used by this court to review board fact finding, we accepted the Commissioner's suggestion that we rehear the appeal in banc so that we could consider the following question: 'Should this court review Patent and Trademark Office fact-findings under the Administrative Procedure Act standard or review instead of the presently applied 'clearly erroneous' standard?" In re Zurko, 142 F.3d 1447, 1449 (Fed. Cir. 1998)(en banc).
ReplyDelete"Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it." KSR Int'l v. Teleflex, 550 US 398, 421 (2007).
I don't see anything in your cite from 142 F.3d at 1449 (Zurko II) that indicates that the Federal Circuit stated that the outcome would be different under a different standard of review. They said the outcome of this appeal "turns on" the standard of review used by the court to review board fact finding. And in Zurko IV they used the more deferential standard (i.e. substantial evidence) and the outcome turned out to be the same: BPAI reversed. Get it? The outcome did turn on the standard of review. It turned out to be the same outcome. So what's your problem? I mean other than the fact that you're clearly giving the "turns on" language from Zurko II a meaning that it doesn't really have?
DeleteAs for your cite to KSR, I don't see anything in that cite, or any other portion of KSR, which I re-read on a pretty much weekly basis, that says that the PTO is entitled to rely on common sense without any substantial evidence support. But if clinging to the belief that there's a "conflict" between Zurko IV and KSR helps you ease the pain of that grudge you're still holding, by all means go for it.
No, I guess I don't "get it." I don't see any other way to interpret that "the outcome" turns on the standard of review, since "the outcome" is affirm or reverse. Especially in view of earlier cases such as In re Kemps and In re MacDermid, Inc.
ReplyDeleteAs for ignoring the effect of KSR, I acknowledge and respect your right to cling to your guns and religion. You seem to be reading KSR once a week for the same reason that the dying W.C. Fields said he was reading the Holy Bible: "Looking for loopholes."
Given the generally sh!tty work product of the examining corps, there's no need to find any loopholes. If you ever actually prosecuted a patent application you would know that the "big change" from "teaching, suggestion, motivation" to "articulated reasoning with rational underpinning" was nothing more than the replacement of one gobbledygook requirement with another. It wasn't really that difficult to amend all of my form paragraph responses from, "...because there's no teaching, suggestion, or motivation..." to "...because there's no articulated reasoning with rational underpinning..." A couple seconds to make the change. Sometimes I'll accidentally dictate, "...there's no teaching, suggestion, or motivation..." but fortunately my secretary is a superstar and she knows to transcribe it as, "...there's no articulated reasoning with rational underpinning..."
ReplyDeleteAs far as your belief that KSR somehow removed the requirement that all PTO findings of fact be supported by substantial evidence, I acknowledge and respect your right to live in a fantasy world of your own creation. That's probably where you been since the crushing disappointment of Zurko IV. I do truly hope that someday you can move on. Maybe you could find a support group or something.
BTW, I don't own any guns (I got kids not of arms bearing age yet) and I fluctuate somewhere between being an agnostic to a deist in the tradition of Paine and Jefferson. I guess it depends on my mood on any particular day.
Any time you want to get around to actually making a point about uncorroborated hearsay testimony being evidence under the APA, let us know. Until then I'll consider the matter closed.
I've read back and I have not expressed "the belief that KSR somehow removed the requirement that all PTO findings of fact be supported by substantial evidence." Should we rely on your reading comprehension for the meaning of Zurko II?
DeleteBut to the point, do you admit or deny that a statement that consists of uncorroborated hearsay can be "substantial evidence" under the APA?
You're of the opinion that somehow Zurko IV is in conflict with, and thus abrogated in some manner, by KSR. Maybe if you explained that a little more I'd be able to understand your position. Your position would still be incorrect, but at least I'd understand where you're coming from.
DeleteAs for Zurko II, if it's your position that somehow the panel in Zurko IV was bound or required to reverse the panel decision in Zurko I and affirm the BPAI's decision, I think you and I both know that's a rather silly thought. The panel in Zurko IV reviewed the record, found that under the substantial evidence standard of the APA that the BPAI's decision was lacking in substantial evidence support and reversed the BPAI's decision. What did you think they were going to do, say, "Well we reviewed the BPAI's decision under the substantial evidence standard, and even though there's no substantial evidence, because we said in Zurko II that the outcome 'turns on' the standard of review, we're gonna go ahead and affirm BPAI's decision despite the complete lack of substantial evidence"? That wasn't gonna happen. You shoulda known that wasn't gonna be the result.
But to the point? Lulz. You haven't made any point yet. Maybe if you skipped to the end and just told us what point it is you are trying to make we could speed this process along.
Seems that Seth Waxman (fn 1) shares my interpretation of Zurko II. What's the substantial evidence in support of your interpretation?
Deletehttp://www.justice.gov/osg/briefs/1998/2pet/7pet/98-0377.pet.rep.pdf
So somebody else got it wrong too, huh? Misery loves company I guess.
DeleteMy substantial evidence is that JJ. Archer, Newman, and Michel (the panel in Zurko IV) reviewed the record and found that BPAI's reliance on "basic knowledge" and "common sense" without pointing to something concrete in the record is the exact type of magic wand waving bullsh!t rejection that wasn't gonna fly with the Federal Circuit.
DeleteThe rejection of "common sense" in Zurko IV that KSR corrected has nothing to do with the language at issue in Zurko II. Practice tip: it's better to cite no evidence at all than evidence that is clearly irrelevant. Hurts credibility.
Delete"The rejection of 'common sense' in Zurko IV that KSR corrected"
ReplyDeleteLulz. Zurko IV didn't "reject" common sense, it rejected reliance on common sense that has no substantial evidence support. KSR did nothing to change that.
I'd offer you a practice tip, but it's likely that you're at the PTO and have never practiced a day in your life.
. . . said the lawyer with no credibility . . .
DeleteI do secretly crave the credibility of the associate solicitors from the PTO who got to argue that BPAI got in right in cases like Stepan, Leithem, and Klein. How wonderful it must be to have dog crap cases like that dumped in your lap and spin them into gold. And all of those PTA cases that people keep filing against the PTO. Credibility over there is at an all time high! All of us in private practice can only look on in envy as the PTO's best and brightest show us how it's done.
DeleteLulz
Oh, and who can forget that fishing rod and/or reel appeal from a year or so ago? Genius lawyering by the PTO.
Deletehttp://www.cafc.uscourts.gov/images/stories/the-court/statistics/Appeals_Filed_Term_Pend_2011.pdf
DeleteI remember going to IPO's PTO day several years back and the then solicitor of the PTO gave his yearly summary of cases. He could barely contain his pride at having won the "a tooth brush is analogous art to a hair brush" case. That was some damn fine lawyering.
DeleteThat same solicitor told a meeting of the BADC PTC section in May 2006 that the PTO had considered the possibility that the continuation rules would be challenged in court. He told the practitioners at the meeting that the PTO'd considered that and thought they had a 50-50 chance of winning. He then told the practitioners to go ahead then and take their best shot.
Thank you Dr. Tafas. Thank you GSK.
Lulz