Friday, April 5, 2013

Follow-up to Ex parte Cogdill - Examiner introduces "equivalent" circuit diagram

Last week I posted here about Ex parte Cogdill, a case in which the Examiner relied on an "equivalent' circuit diagram for anticipation. My post resulted in a fair amount of reader comments, and the issues brought up in the comment thread inspired me to do this follow-up post. I don't have a strong opinion about the right answer to most of these issues. (Many of those who commented did have strong opinions about the rightness of their position.) I do think the issues are interesting to explore.

Though the Applicant in Ex parte Cogdill didn't identify it as such, the threshold legal issue here is whether or not an Examiner-introduced diagram can be used in a rejection – even if is equivalent. As commenters pointed out, such a diagram is not prior art under § 102 or § 103.

I haven't run across this sort of "drawing equivalence" before. I have run across plenty of cases where the Examiner has annotated a drawing, but that's usually about further explaining what's already in the drawing, e.g., by adding the text "lever" to show that reference number 42 allegedly corresponds to the claimed lever. Is this sort of annotated drawing also prohibited because it's not prior art? I don't see it that way. I view this drawing-plus-added-text as the Examiner's assertions about the teachings of the reference.

I've also seen a few cases where the Examiner annotates with something like a box around something in the drawing in order to explain that, e.g., the components within the box allegedly correspond to claimed assembly 42. Once again, I see this as an Examiner assertion about the teachings of the reference. 

So maybe what happened in Cogdill's equivalent circuit drawing is analogous to the Examiner asserting that the "lever" in the reference corresponds to the "member" in the claim. It's well-settled law that the reference doesn't have to use the same terminology as the claim in order to anticipate. Is redrawing the circuit diagram that much different than substituting the term "lever" in the reference with the word "member"?

That sounds weird, because Examiners don't literally introduce paragraph [0043B] with the substituted text in order to make this point. Instead, an Examiner writes something like
Johnson anticipates claim 1 as follows: a member (lever 42 in FIG. 1);  ...
Is the Examiner-created Fig. 3B in the Cogdill case just a way for the Examiner to better illustrate how he was reading Johnson's Fig. 3? In other words, is Fig. 3B an Examiner finding about the teachings of the reference rather than a type of evidence that is inadmissible because it doesn't qualify as prior art?

Could the Examiner have introduced Fig. 3B as evidence through a personal affidavit? Surely an Applicant could introduce an equivalent circuit diagram as declaration evidence, along with an explanation of how the claim limitation at issue is not disclosed by the diagram. So could the Examiner do the same thing through a personal affidavit?

If we get past the threshold legal issue, then the next issue might be the burden of proof on the equivalence of the circuit diagrams. Does a mere assertion of equivalence by the Examiner shift the burden to the Applicant to explain why they are not equivalent? Can the Applicant attack the asserted equivalence with attorney argument, or is real evidence required?

If we get past all that, we reach the questions of fact as to whether Figs. 3 and 3B in Ex parte Cogdill really were equivalent and whether the limitation at issue was disclosed. I'm not a EE, so I'll refrain from expressing an opinion on that ultimate question. I will, however, ask a few questions about the issue. 

As far as circuits go, the claim and the diagrams in Cogdill look pretty simple. You have to understand the difference between parallel and serial. But that's covered in a basic physics class, so I'm not convinced you need to be a EE to interpret this aspect of the circuit. (And yeah, you also have to understand what impedance is, but that doesn't appear to be at issue).

The rest of the claim appears to describe how the impedance elements are connected, using terms such as "between," "one end" and "branch points." With all this talk about connections, it this more of a mechanical-type claim? Or do we need to understand something about circuits in order understand what those positional relationships mean in a circuit context?

56 comments:

  1. "If we get past the threshold legal issue..."

    Unfortunately we don't, because nobody has yet been able to identify under what paragraph of section 102 Fig. 3(b) qualifies as prior art, and provide a suitable explanation of how it does qualify. But as you insist on indulging the ignorant masses, I guess I'll continue to try to educate them.

    "...then the next issue might be the burden of proof on the equivalence of the circuit diagrams."

    The issue is always the burden of proof. It's on the examiner, and remains on the examiner throughout the entire prosecution. Thanks to Oetiker.

    "Does a mere assertion of equivalence by the Examiner shift the burden to the Applicant to explain why they are not equivalent?"

    No. But good luck getting a panel of APJ's who understand that. The lifer APJ's actually believe that anything the examiner types is a "finding of fact." Look at APJ Hoff's decision. He writes on page 7 of the decision, "The Examiner's 'Figure 3(b) is a representation of an equivalent circuit of Johnson Fig. 3. Ans. 11." Go look at page 11 of the Examiner's Answer and tell us what evidence the examiner provided. The answer, of course, is: none. The examiner doesn't point to any passage or portion of Johnson et al. that establishes, by a preponderance, that the newly concocted Fig. 3(b) is equivalent to Fig. 3 of Johnson et al.

    This is the point where all of the examinertards come in with, "Well, anybody who knows anything about EE and circuits would know that Fig. 3 and Fig. 3(b) are equivalent!" Right. And the evidence for that is what?

    This is a very common scenario at the Board. Examiner's make sweeping generalizations and conclusions about what is known, or equivalent, the APJ's accept them as "findings" and when applicants respond, "That's not well known" or "That's not equivalent" or "Prove it" the APJ's chide the applicants for not presenting any "evidence" and dismiss the response as "attorney argument."

    MPEP 2142 is crystal clear: The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence. In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).

    Applicant/attorney argument must be considered. It can not be dismissed. And when it is provided in response to assertions by the examiner that have ZERO evidentiary support, they are always persuasive. The only response necessary to overcome an examiner assertion as to what is "well known" or "equivalent" is: "No it is not" or (better yet) "Prove it."

    "Can the Applicant attack the asserted equivalence with attorney argument, or is real evidence required?"

    Of course you can attack it with argument. See page 10 of this recent Fed. Cir. decision.


    http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1609.Opinion.4-2-2013.1.PDF

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    1. >nobody has yet been able to find the
      >$102 paragraph that says Fig. 3(b)
      >qualifies as prior art

      Indeed. I have not found 102 case law that says Examiner-introduced drawings are prior art.

      I'm curious as to whether you have an opinion on the questions I raised in the follow-on post. That is, do you see a real difference between the Examiner-introduced equivalent circuit drawing and routine Examiner explanation of how the blodget in the reference corresponds to the widget in the claims? IOW, isn't is reasonable to view the Examiner's drawing as an explanation of the actual drawing?

      If not, what about this closer case ... do you see a difference between an existing-but-annotated mechanical drawing in a reference and an Examiner's explanation of reference blodget reading on claimed widget? I frequently see annotated drawings, and don't recall an Applicant traversing as not-prior-art. Would you?

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    2. "That is, do you see a real difference between the Examiner-introduced equivalent circuit drawing and routine Examiner explanation of how the blodget in the reference corresponds to the widget in the claims?"

      Not sure what you mean by "a real difference." To the extent that you're asking whether I think the circuit of Fig. 3 of Johnson et al. and the circuit of Fig. 3(b) concocted by the examiner are "equivalent" I don't know. But I also don't care. What I do know is that in the FAOM the examiner rejected claim 1 as anticipated by Johnson et al. The applicant responded by amending claim 1 to include the "on the same side" language, specifically noted that Fig. 3 of Johnson et al. failed to show that feature, and the examiner maintained the anticipation rejection, concocted the "equivalent" circuit by drawing Fig. 3(b), which just so happened to show what was added to the claim by amendment, and made the rejection final.

      "IOW, isn't is reasonable to view the Examiner's drawing as an explanation of the actual drawing?"

      No. It's not reasonable. If Johnson et al., including whatever is disclosed/suggested by Fig. 3 (the drawing actually in the reference) still anticipated claim 1 after it was amended, i.e. described in detail the nvention in as much detail as recited in the claim, why did the examiner have to draw Fig. 3(b)? Couldn't the examiner have simply explained how the four corners of the Johnson et al. reference met the claim? And as I asked above, what portions of the Johnson et al. reference did the examiner point to to support the "finding" that the circuit in made up Fig. 3(b) was "equivalent" to the circuit in Fig. 3? And of course the answer to that question is: none. The examiner simply stated a conclusion without providing any evidentiary support.

      Are you not the least bit suspicious, or even skeptical? An amendment is made to add a feature, the applicant argues specifically that the figure in the applied anticipatory reference doesn't show the feature, the examiner, instead of explaining how the reference does in fact actually disclose/suggest the feature, makes up a new drawing that is alleged to be equivalent to the drawing in the reference, and just so happens to show exactly the feature that was added by amendment, and makes the rejection final without supplying any evidence or explanation. That seem okay to you? It doesn't seem okay to me.

      "I frequently see annotated drawings, and don't recall an Applicant traversing as not-prior-art. Would you?"

      I would not. I frequently see annotated drawing figures in OA's that I receive. And I usually find them very helpful. What I've never seen in an OA is, in response to an amendment I've made adding a particular feature/limitation, the examiner redrawing what is actually shown in the reference drawings, telling me the new made up drawing is "equivalent" and then making the rejection final. That's never happened to me. But if it does, I know exactly how I'm going to respond.

      As I've noted before, if Johnson et al. disclosed the identical invention in as much detail as was recited in amended claim 1, there was no need for the examiner to make up Fig. 3(b). The simple fact that the examiner had to make up Fig. 3(b) means that the rejection was improper.

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    3. >Are you not the least bit suspicious,
      >or even skeptical?

      Skeptical that the Examiner introduced a new diagram showing the claim elements precisely because the actual reference diagram did not show the elements? I don't spend a lot of time thinking about the real reasons why Examiners do what they do. I generally assume they're responding to incentives.

      Or skeptical that the drawing was actually equivalent? Well, that's a question of fact. So I'd decide what I thought about equivalence and argue not equivalent if that was my conclusion.

      >I've never seen ... examiner redrawing
      >what's actually in the reference drawings
      >[in response to my newly added limitation]
      >then tell me the new made up drawing is
      >"equivalent" and go final.

      I've never come across it either, not in my own practice, and not in a file history. That's exactly why I blogged about it.

      The most interesting question to me is the narrow question of whether a new and asserted-to-be-equivalent drawing can be prior art. Whether the drawing is/not equivalent is a separate question. As is whether finality is proper.

      I've admitted that I don't have case law that says the answer to the question posed above is Yes. Some seem to think the discussion should stop there since we don't know of a case on point.

      Nonetheless, I think my drawing-as-explanation reasoning is worth exploring. And you haven't really addressed whether new-equivalent-drawing and annotated-drawing-as-explanation-of-reference are similar or dissimilar. Instead, you point to the suspicious circumstances under which the new drawing appears, ie, in response to amendment, on final, and with a bare assertion of equivalence.

      >Couldn't the examiner have simply
      >explained how the four corners of the
      >Johnson et al. reference met the claim?

      Probably. But perhaps the Examiner thought it would be simpler to explain with an equivalent diagram as compared to explaining with words. You and I seem to agree that rejections of mechanical claims can be explained better through annotated drawings. Again, I'm trying to understand how the new-equivalent-drawing is fundamentally different than existing-annotated drawing.

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    4. Figure 3(b) is not an annotated drawing, any more than it's an "excerpt" of Johnson et al. as EE examiner tried to allege in the previous topic. Under what definition of "annotated" is Figure 3(b) an annotated drawing?

      "Again, I'm trying to understand how the new-equivalent-drawing is fundamentally different than existing-annotated drawing."

      It's fundamentally different in this way: Johnson et al. was applied as anticipatory. The applicant amended the claim to include the "on the same side" feature and specifically argued that Figure 3 of Johnson et al. (the drawing actually in the reference) didn't disclose or suggest that feature, and the examiner whipped up Figure 3(b), alleged it to be "equivalent" to Figure 3, and concluded that Figure 3(b) did show the "one the same side" feature.

      WOW!!!!! Isn't that amazing?! A reference can fail to explicitly disclose, implicitly disclose, or even hint at a feature in a claim, but if the examiner simply redraws/annotates/excerpts the figure, the feature appears. It's like magic!!!!!!

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    5. "The most interesting question to me is the narrow question of whether a new and asserted-to-be-equivalent drawing can be prior art."

      I can't think of any way the new drawing could be prior art _unless_ the applicant admitted that it was prior art (which did not happen here).

      "Nonetheless, I think my drawing-as-explanation reasoning is worth exploring."

      I think that's exactly what the drawing represented. A graphical, rather than verbal, explanation -- whether right or wrong -- of how the prior art circuit was electrically equivalent and thus identical to what the claims read on. Arguing that the new drawing is not part of the prior art reference's disclosure reduces to the odd complaint that the examiner provided too much explanation.

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    6. "Arguing that the new drawing is not part of the prior art reference's disclosure reduces to the odd complaint that the examiner provided too much explanation."

      Huh?

      Delete
  2. You mean the decision where the CAFC makes the blunder of stating that the BPAI "allowed" some claims?

    "The Board allowed claims 193-
    95, 198, 199, 215-17, 220, 221, 237-39, 242, 243, 259-62,
    264, and 265 as patentable over the PMA."

    The Board does not "allow" claims.

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    1. Note also that the Fed. Circuit panel talks about a provisional application (60 series) as if it were the application being prosecuted. The panel did not spend much time or effort on this case.

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    2. "The panel did not spend much time or effort on this case."

      True. The Fed. Cir. treats pro se's even sh!ttier than the PTO does.

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  3. Nice non sequitur. I take it you have nothing of substance to add.

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  4. That's actually a good decision to cite where the CAFC upheld the taking of official notice as to finding facts.

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    1. The court found the PMA reference substantially supported the findings. Great reading comprehension you got there.

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    2. You may have missed the part about where they confirmed the examiner's factual finding about "paying for services" which was made via official notice. Maybe you should put your reading glasses on old man.

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    3. You may have missed the part where the applicant never requested documentary evidence in support of the taking of Official Notice.

      This pro se applicant did himself a disservice representing himself, but still managed to show that the panel of APJ's don't understand one of the most basic aspects of administrative law or how to correctly interpret their supervising court's precedent.

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    4. "You may have missed the part where the applicant never requested documentary evidence in support of the taking of Official Notice."

      There was no such part included, so no, I didn't "miss "that part"".

      "This pro se applicant did himself a disservice representing himself,"

      I don't know about that, he seems to have done just as well as most lawltards would have done for him.

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    5. "That's actually a good decision to cite where the CAFC upheld the taking of official notice as to finding facts."

      Really? Why is that? Because I reviewed the decision, and the pros history, and I can't see where this decision adds anything new to the body of precedent regarding Official Notice.

      Can you explain? Maybe provide an example of how you would cite this case.

      Thanks.

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  5. "Since both the Board...failed to engage
    in a proper enablement analysis, we vacate the
    finding of anticipation and remand claims 271 and 272 for
    further proceedings."

    It's a good thing the Board is composed of persons of competent legal knowledge. Wouldn't want to have a pro se applicant catch them getting the law wrong.

    Lulz

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  6. What is to add about that sht pile of a case she posted the other week?

    The amended claim that was being contested probably lacked written description from the get go of that round of prosecution, and obviously when the examiner makes a drawing the drawing itself is not evidence that may be relied upon to make a rejection, but it may well simply act as an explanation of how the examiner is applying the actual evidence for stupi d people to read so that they understand how the reference is being applied. Finally, the rejection itself was a sht pile if in fact there was WD for the claim limitations relating to the positioning, however I would hasten to add that if the applicant was relying on a schematic diagram like that in the reference to support his positioning limitations that sht is bogus because schematic drawings, as has been pointed out a number of times, do not relay, and pretty much never are meant to relay that type of information. Equivalent circuit or not, if the applicant had sufficient WD then it doesn't matter, the claim would not be anticipated. This part of the MPEP is poorly written to the point that people don't understand wtf it is talking about: http://www.uspto.gov/web/offices/pac/mpep/s2183.html and that leads to sht pile rejections like the one previously being discussed.

    Compare the difference between :

    http://en.wikipedia.org/wiki/Wiring_diagram

    And:

    http://en.wikipedia.org/wiki/Schematic_diagram

    If I had to guess, with near 100% certainty, but without looking in depth, the problem in that case was that the examiner did not give a 112 1st and instead just gave an art rejection rejecting the claim "in so far as it was supported" without telling anyone this is what he was doing. It happens like all the time and is nothing to get excited.

    That above is my contribution.

    Also, I don't really understand why the person that commented first even cited that decision. it doesn't seem to be relevant to determining or arguing against a determination of equivalence. Though I do like the decision itself for a number of reasons. Inherency, obviousness of computer related garbage related to the "information content" of a claim, and official notice having been taken all in one case.

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    1. You managed to read a post with 2 cites to Oetiker and not have your customary meltdown. Real proud of ya, 6.

      Lulz

      Delete
  7. "Also, I don't really understand why the person that commented first even cited that decision."

    It addresses Karen's questions regarding burden, shifting of the burden, evidence required (or not required), etc. It also illustrates how ignorant the APJ's who dismiss "attorney argument" are.

    That's why.

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  8. Yes, Karen. This is more a mechanical-type claim. It seems that may have been lost on the applicant and the USPTO. This technology requires knowledge of transmission lines—an area that all EEs are (or should be) taught, but many are weak on. The physical arrangement of the connections (transmission lines) is important. And it’s the real-world physical arrangement that matters, not the arrangement on a schematic diagram.
    The parallel termination impedance limitation in claim 1 of the application is coupled to the transmission line at a location that does not have a corresponding point in Johnson’s figure 3. It seems reasonable to correlate Johnson’s elements 314, 316, 318, 320, 322 to the claimed transmission line, Johnson’s 324 to the claimed series damping impedance, and Johnson’s 326 to the claimed parallel termination impedance. Then we need a “branch point.” The only possible corresponding point in Johnson’s’ figure 3 is the common connection to elements 318, 320, 326, and 324. But then Johnson’s element 326 (parallel termination impedance) is not coupled between element 324 (said series dampening impedance) and said branch point. The Examiner’s “equivalent circuit” has split the branch point of Johnson’s figure 3 into two points.

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  9. My two cents is that Anon of 6th April, 2:05 PM commenting on the previous post gave the best and simplest explanation, when comparing fig. 3 and 3B to 1+2 and 2+1.

    The circuit of Fig. 3B is a "graphically equivalent" but "technically identical" to the one shown in figure 3 of the prior art. If two nodes of a circuit diagram are connected by a straight line, this means that the two nodes are at the same potential and behave electrically as one; in practice, chances are that the components linked to both nodes are connected at the same soldering point on a PCB.

    A drawing may show two separate nodes which are supposed to be short-circuited to improve readability, but the "equivalence" between the two representations is clear to any 1st year student of EE or to anyone who likes to play with circuits as a hobby, in the same way that the sign "+" makes clear to most people with a basic education that the order of operands does not matter.

    For these reasons, I think that fig. 3b is no different from an annotated figure. If that is considered fine in the mechanical arts, questions about about burden of proof or statutory basis shouldn't be an issue here.

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    1. "If that is considered fine in the mechanical arts..."

      Annotated figures are fine. Made up new drawings done in response to amendments simply to maintain rejections are not. Not in the mechanical arts, the chemical arts, or the electrical arts. Only in the magical arts.

      "...questions about about burden of proof or statutory basis shouldn't be an issue here."

      Questions about burden of proof and statutory basis are always an issue.

      But thanks for playing.

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    2. I really would appreciate if any of those who objected to the use of the equivalent drawing provided a technical explanation as to why the drawing does not convey the same technical information as Fig. 3, albeit with certain parts of the diagram highlighted for their relevance (which is the same reason why diagrams are annotated). As I said before, Fig. 3b was simply the examiner's way of explaining the prior art; unorthodox as it may have been, it was nevertheless perfectly understandable by anyone with a minimal knowledge of the technical field.

      In view of the above, I don't see an issue with the statutory basis because rejections under 102 or 103 normally contain an explanation of what is disclosed by the prior art. As for burden of proof, it's arguable that the examiner could have cited any basic textbook to explain why his graphical elaboration of the circuit nodes is consistent to the way these diagrams are supposed to be interpreted. I am not going to make a definitive statement on this because I have not read the entire prosecution history; however, I would like to point out that it is necessary to draw a line in terms of the supporting evidence needed, to avoid the reductio ad absurdum of needing material proof for statements like "1+2=2+1" or "the sun rises in the east".

      For the sake of completeness, I would also like to say that the rejection does not seem to me justified on its merits: precisely because this sort of circuit diagrams do not describe positional relationships in detail, I think obviousness or possibly lack of support in the description would have been more appropriate as grounds for rejection. This is, in my opinion, the main issue at play in this case whereas all the fuss for the introduction of figure 3b seems, frankly, much ado about nothing.

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    3. And I really would apppreciate if any of those who approved of the use of the equivalent drawing provided a legal explanation as to why the drawing is prior art under any paragraph of section 102. And provide a suitable explanation.

      "This is, in my opinion, the main issue at play in this case whereas all the fuss for the introduction of figure 3b seems, frankly, much ado about nothing."

      A lot of fuss and much ado about nothing, huh? Maybe you're right. Maybe we should just dispense with all the legal mumbo jumbo and persnickety requirements about evidence and facts and just put in a system where examiners are allowed to reject any application that they just don't feel are worthy of a patent. That would just be so much easier, wouldn't it?

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    4. "And I really would apppreciate if any of those who approved of the use of the equivalent drawing provided a legal explanation as to why the drawing is prior art under any paragraph of section 102. And provide a suitable explanation."

      How, exactly, does approving of the "use" of the equivalent drawing mean that the drawing is "prior art," or believed to be "prior art?" Maybe you could draw a picture to help us understand your answer.

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    5. If you can't answer my question, which you clearly can not, you could just say so.

      Thanks again for playing.

      Delete
    6. Just for the sake of clarity, I am the opening poster in this comment thread, as well as the author of the 5:37 AM post. The comment at 9:46 AM is from another commenter.

      That being said, I think no one of those who saw no problems with Fig. 3B are saying that the figure is prior art. I for sure am not saying so. What I am saying - now repeating - is that the figure represents simply an explanation of the technical content of the prior art document. Such explanations are necessary in a system where decisions need to be justified and not, as you put it, "where examiners are allowed to reject any application that they just don't feel are worthy of a patent". Unless there is a specific legal reason why an argument cannot be supported by a graphical aid, I don't see the problem if the examiner decided to draw such a diagram, although I admit it is not commonly done.

      So my answer to your question is that Fig. 3B is not prior art for the patent application, and does not need to be, but rather it is part of the reasons for the rejection.

      I am mildly amused that you consider my comments as supporting a system where legal requirements are summarily dispensed, while I only pointed out that all this debate on the formal presentation of the examiner's reasoning ignores the more fundamental question of whether the reasoning is technically sound to begin with. I'd rather see a discussion of the technical merits of the rejection rather than lucubrations about a scribble used to illustrate a point, but maybe that's just me.

      I still haven't an answer to my previous question, but I guess it's fine that way. I have just one last thing to say:

      You are welcome.

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  10. "What I am saying - now repeating - is that the figure represents simply an explanation of the technical content of the prior art document."

    No it doesn't. The Johnson et al. reference speaks for itself, especially in the case of an anticipation rejection in which the reference is alleged to describe the invention in as much detail as is recited in the claim. If the "on the same side" feature that was added to the claim by amendment is described by Johnson et al. in as much detail as was recited in the amended claim, then there would have been no need whatsoever for the examiner to redraw Figure 3 of Johnson et al. into "equivalent" Figure 3(b). All the examiner would have had to do was point to the column and line number, and/or drawing number and appropriate reference numbers, to explain how the feature was described by Johnson et al. The examiner did not. I think the reason the examiner did not is pretty clear: Johnson et al. don't describe the invention in as much detail as is recited in the claim, i.e. don't anticipate. Furthermore, the examiner didn't provide any evidence (e.g. column and line numbers of the reference, cite to some circuits text book, etc.), or even explain, how Figure 3(b) was derived. Instead the examiner just stated the conclusion in the final rejection that Figure 3(b) was "equivalent" to Figure 3. Not good enough.

    "Unless there is a specific legal reason why an argument cannot be supported by a graphical aid..."

    I've already answered this. The examiner's "graphical aid" is neither evidence nor prior art. Figure 3(b) is not an "annotated" figure or an excerpt of Johnson et al. as I've already noted several times.

    "...I only pointed out that all this debate on the formal presentation of the examiner's reasoning ignores the more fundamental question of whether the reasoning is technically sound to begin with."

    Whether the reasoning is technically sound to begin with is not the more fundamental question. The truly fundamental question is: is Figure 3(b) evidence and/or prior art? There's this thing in the law, including administrative law such as that practiced before the PTO, called procedure. And it has to be followed. Every single time. Without exception. And one of the things that procedure requires is that before you start debating anything, you have to establish that the facts you're actually relying on to justify your position/decision are based on evidence. So the very first thing, and I mean the very first thing, that you have to do is lay a foundation for your evidence (i.e. establish that it is actually evidence).

    "So my answer to your question is that Fig. 3B is not prior art for the patent application..."

    Thanks. But I already knew that.

    "...and does not need to be..."

    Yes it does. The PTO has the intial duty of supplying the factual basis for its rejection. In re Warner, 379 F.2d 1011 (CCPA 1967). Facts have to be established by a preponderance of the evidence. See In re Caveney.

    "...but rather it is part of the reasons for the rejection."

    Reasons have to be supported by facts, and facts have to be established by a preponderance of the evidence. Figure 3(b) is not evidence.

    "I'd rather see a discussion of the technical merits of the rejection rather than lucubrations about a scribble used to illustrate a point..."

    Of course you would. Because on the law the rejection is improper. Unfortunately the cut rate hack that HP hired to prosecute this case was as ignorant of the law as the examiner who examined it and the APJ who decided it. A truly perfect storm of ignorance and imcompetence.

    "...but maybe that's just me."

    It's not just you. Every examiner who's commented on this topic thinks exactly as you do.

    "I have just one last thing to say"

    Promise?

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  11. >truly fundamental question is: is Figure 3(b)
    >evidence and/or prior art?

    Disagree. Because it ignores the a third category of stuff used by the Examiner in a rejection: explanation. *If* Fig. 3b is properly viewed as explanation, analogous to an annotated drawing, then there is nothing objectionable to it being in the record.

    >Reasons have to be supported by facts,
    >and facts have to be established by a
    >preponderance of the evidence. Fig 3(b)
    >is not evidence.

    But it's the fact-finder that determines whether the fact has been established, right? Here, the fact-finder determines whether the equivalence of Fig. 3b and Fig. 3 has been established.

    You seem to want to short-cut the fact finding and keep Fig. 3b out of the record entirely, apparently because "there's no need" for the Examiner to resort to a made-up drawing. Even if the Examiner could have made his point with words rather than a drawing, I don't see that as a valid reason for keeping the drawing out of the record.

    In the end, I'm still not convinced that Fig. 3b is qualitatively different than routine assertions made by Examiners all the time about what a reference teaches to a POSITA.

    Johnson Fig. 3 is evidence. The equivalence of Examiner's 3(b) and Johnson Fig. 3 is an assertion made by the Examiner. The fact-finder makes a determination as to whether the assertion is supported by the evidence.

    >Furthermore, the examiner didn't provide any
    >evidence (cite to reference, cite to text book)
    >or even explain, how Figure 3(b) was derived.
    >Instead Examiner just stated the conclusion...
    >that Fig 3(b) and Fig 3 were "equivalent"

    Certainly the Examiner was sloppy here. And maybe the Applicant wins for that reason.

    >Not good enough.

    Meaning the Examiner's conclusory assertion (that the diagrams are equivalent) doesn't rise to the level of a Prima Facie case? Or meaning that the Examiner loses because he's wrong on the factual question of equivalence?

    PF case is an interesting question in this context. If Fig. 3b is properly understood as explanation of the teachings of the reference, then looks like a PF case has been made. [Since the bar under Jung is low enough that a conclusory assertion along the lines of "ref teaches claim element" meets the PF threshold.]

    If the Examiner has made a PF case by using Fig 3b and asserting equivalence, then the Applicant should challenge the assertion and force the Examiner to provide evidence or explanation or technical reasoning as to the equivalence. And the Applicant wins if the Examiner doesn't do this when challenged.

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  12. "Disagree."

    So you think the question of whether something is even evidence that can be considered is less fundamental that what its "technical merit" (probative value?) is IF it is evidence? Good luck selling that to a judge.

    "Because it ignores the a third category of stuff used by the Examiner in a rejection: explanation."

    If by "explanation" you mean "reasoning" then I'm kind of with you. But Figure 3(b) is not an "explanation" of what Johnson et al. disclose. As I've noted before, an examiner's factual finding regarding what a reference discloses must be supported by a preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). So, even under your view, Figure 3(b) is not evidence, it is supposedly the examiner's explanation of what the actual evidence (i.e. the Johnson et al. reference) discloses. You seem now to be agreeing with me that Figure 3(b) is not evidence. I think I'm making progress.

    The problem with that, as I've also noted several times before, is that the examiner does not provide any "explanation" or "support" or, yes, actual evidence, for the "explanation" that Figure 3(b) is supposed to be. Go back and review the final rejection and the examiner's answer. Where in either of those "explanations" does the examiner point to anything that we all agree is evidence, i.e. the Johnson et al. reference, in support of the "explanation" that is Figure 3(b)? Does the examiner, for example, point to a particular column and line number of Johnson et al. and argue and/or reason that that particular column and line number "supports" or "explains" the examiner's assertion/conclusion that Figure 3(b) is "equivalent" to Figure 3 of Johnson et al.? Does the examiner cite to a well known circuits text book or design manual and argue/reason that? I reviewed the prosecution history and I'm pretty sure the answer to those questions is emphatically no.

    "*If* Fig. 3b is properly viewed as explanation, analogous to an annotated drawing, then there is nothing objectionable to it being in the record."

    Of course there is. Figure 3(b) is not itself actual evidence ("explanation" is not evidence, it is argument and/or reasoning, which last time I checked is not evidence) nor is it based on any actual evidence.

    "But it's the fact-finder that determines whether the fact has been established, right?"

    The examiner is the fact finder during examination. However, to channel W. a little bit, the examiner is not the fact decider. The examiner is supposed to resolve questions of fact and law. As I've noted before, anticipation is a question of fact. So the examiner is supposed to present evidence that establishes, by a preponderance (i.e. more likely than not) that the claimed invention is not novel. In obviousness, which is a question of law (based on underlying factual inquiries), the examiner is supposed to resolve the four factual inquiries set out in Graham (i.e. scope and content of the prior art, etc.) So for example, the examiner is supposed to present evidence, that establishes by a preponderance, that all of the claimed elements/features/limitations are in the prior art.

    In disputes as to whether the examiner's evidence establishes, by a preponderance, the facts the examiner is relying on to reject the claim, the Board decides. In disputes between the applicant and the Board, the Fed. Cir. decides.



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    1. continued...

      "Here, the fact-finder determines whether the equivalence of Fig. 3b and Fig. 3 has been established."

      No. As I noted above, the fact finder (i.e. the examiner) asserts that the equivalence of Fig. 3(b) and Fig. 3 has been established, but the Board determines/decides whether it is. And the Board got it wrong in this case because the asserted "equivalence" is completely unsupported by anything that is actually evidence. Assertions by examiners are not facts, they're not even evidence of facts.

      BTW, you seem to be overlooking the problem that the examiner rejected the claim as anticipated by a supposedly "equivalent" circuit of the reference, not the actual circuit of the reference. Completely improper.

      "You seem to want to short-cut the fact finding..."

      Actually, no. I want the fact finding done by the examiner to be much more rigorous.

      "...and keep Fig. 3b out of the record entirely, apparently because 'there's no need' for the Examiner to resort to a made-up drawing."

      Again, no. I want to keep it out because: 1) it is not evidence; and 2) it is not based on any evidence.

      "Even if the Examiner could have made his point with words rather than a drawing, I don't see that as a valid reason for keeping the drawing out of the record."

      Had the examiner been required to explain in words how Figure 3 of Johnson et al. (the drawing actually in the reference) still described the amended claim (to include the "on the same side" feature) in as much detail as was recited, the examiner would have had to rely on actual evidence (e.g. column/line number of Johnson et al., text book, etc.) to do so, rather than making up the supposedly "equivalent" Figure 3(b) and baldly asserting/concluding that it was "equivalent."

      "The equivalence of Examiner's 3(b) and Johnson Fig. 3 is an assertion made by the Examiner. The fact-finder makes a determination as to whether the assertion is supported by the evidence."

      With all due respect, this is the type of circular reasoning I see from examiners. The examiner, under your position, could simply say, "I assert that these are equivalent. And as I'm the one who determines whether they are equivalent, I determine/conclude that they are."

      While that would certainly make the examiner's job easier, I don't think it would work for applicants.

      "In the end, I'm still not convinced that Fig. 3b is qualitatively different than routine assertions made by Examiners all the time about what a reference teaches to a POSITA."

      Routine assertions by examiners about what a reference teaches that are not based on/supported by a preponderance of the evidence are meaningless and incapable of sustaining the examiner's burden.

      That's all for now. I'll try to get to your questions regarding PF case later.

      Delete
    2. One more quick thing: you seem hung up on this idea that Figure 3(b) is an "annotated figure." I've asked you, and others, several times, how is Figure 3(b) an annotated figure?

      Delete
    3. >you seem hung up on this idea that Figure 3(b) is an
      >"annotated figure."

      Assuming that the question is directed to me ...

      I'm actually undecided about *what* Fig 3b is. I've never come across anything like this before. I think the Cogdill case raises interesting issues that are worth discussing. I'm asking questions designed to elicit discussion.

      I do think Fig 3b is *like* an annotated figure in that the Examiner is using made-up Fig 3b to explain the rejection. It's also different, in that the Examiner rearranged things. And maybe that's the simple answer to what is wrong, at the core, with Fig 3b : by rearranging the position of elements in a figure, the Examiner has gone from permissible commentary or explanation about a figure to impermissible making stuff up.

      Which would mean my analogy is wrongheaded and misplaced. So what. Doesn't make me an idiot for thinking about these issues. Just means I don't have all the answers. I can live with that.

      Delete
    4. >Routine assertions by examiners about
      >what a ref teaches that are not based on
      >or supported by a preponderance of the
      >evidence are meaningless

      I wouldn't characterize them as meaningless. Such assertions are in the record and prosecutors respond to them. Sure, it's also true that in the end such statements don't amount to much, so they're meaningless in that sense -- precisely because you've stipulated that the assertions aren't supported by a preponderance of evidence.

      >and incapable of sustaining examiner's burden.

      Burden of proof? As in assertions not supported by preponderance of the evidence lose when presented to the fact finder? Well, yeah, that's true -- by definition.

      Or burden of production? As the Applicant doesn't even have to respond to assertions not supported by preponderance evidence? Surely that's not right. Examiners routinely make assertions and prosecutors routinely respond to them, because most of these assertions do constitute a Prima Facie case.

      But I think you said you plan to come back and talk about PF case later.


      Delete
    5. I used to argue "fails to establish a prima facie case" in almost every response, but have almost stopped doing that in favor of simply arguing what In re Caveney and In re Oetiker say: the burden of proof (i.e. of persuasion) is a preponderance of the evidence (i.e. more likely unpatentable than patentable) and remains on the examiner, and the Board too if they affirm, throughout the prosecution. As I'm obligated to respond in writing by section 132 and Rule 111, I just go right to the point and explain why the rejection ultimately fails. And as we all know from law school, and from Black's, the burden of persuasion remains on one party throughout the proceeding and never shifts. That's why I've started arguing it instead of PF case, which does shift the burden. To my mind, why bother arguing whether the PF case burden has been shifted when you can just argue the ultimate burden (which never shifts from the examiner) has not been met, and explain why of course.

      "Or burden of production?"

      Good point. I went back and read J. Plager's concurrence from Oetiker, which I think is an excellent explanation of the PF case, and goes like this:

      "Specifically, when obviousness is at issue, the examiner has the burden of persuasion and therefore the initial burden of production. Satisfying the burden of production, and thus initially the burden of persuasion, constitutes the so-called prima facie showing. Once that burden is met, the applicant has the burden of production to demonstrate that the examiner's preliminary determination is not correct. The examiner, and if later involved, the Board, retain the ultimate burden of persuasion on the issue."

      So a PF case is made when the examiner meets his/her burden of production. And as we all know from law school, a party meets its burden of production when it presents enough evidence to prevent the the entry of summary judgment against it. So I would submit that the failure to present a PF case occurs when no reasonable panel of APJ's (good luck finding one of those!) could affirm the rejection with nothing more from applicant than the filed application. In other words, to my mind, arguing the failure of the examiner to establish a PF case is essentially the same as arguing that you are entitled to summary judgment of patentability. As critical as I am of the examining corps' work product, even I think this is a relatively rare occurrence (although I have seen my share in 14 years of practice!). So as I'm obligated to respond in writing if I still want the patent, why not skip all that and just argue that the rejection fails the ultimate burden of persuasion? Cut to the chase, so to speak.

      Thanks for making me rethink this. I appreciated the exercise.

      BTW, this is ThomasPaine from that other site. I'll sign my posts at the bottom from now on.

      Regards,

      Tommy

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    6. "So as I'm obligated to respond in writing if I still want the patent, why not skip all that and just argue that the rejection fails the ultimate burden of persuasion? "

      As much as I agree with your overall approach and applaud you for taking this enlightened route one small thing you must remember is that the burden of persuasion initially is only for the examiner to convince himself. Until you're discussing transfer to the jurisdiction of the board you simply cannot rely on the examiner spontaneously being unpersuaded by his own initial reasoning. The only reason you're in the situation of having gotten a rejection is because the examiner was persuaded by his own reasoning.

      You can of course try to argue that the burden of persuasion shouldl be relative to whether or not a reasonable judge/jury/whatever other thing other than your patent examiner would make the same determination. But good luck with that one because as of that moment the responsibility lies with the examiner and nobody else.

      Delete
    7. This is why you, and so, so many examiners, are terrible at the job. Until you learn to reason objectively from the evidence, and write effectively to persuade others that your reasoning and conclusions are correct (i.e. supported by a preponderance of the evidence), you'll never be doing anythnig more than what you, and so, so many examiners, are doing right now: churning out garbage OA's to get your counts. But as the PTO rewards you for that, and not for doing actual quality work, I can't fault you.

      "The only reason you're in the situation of having gotten a rejection is because the examiner was persuaded by his own reasoning."

      This made me laugh out loud.

      Thanks.

      Delete
  13. "...the Examiner has gone from permissible commentary or explanation about a figure to impermissible making stuff up."

    Agreed. But examiners do that all the time without making up new drawings. I can't tell you how many interviews I've had with examiners where they blurt out, "But if the reference..."

    Here's a clue to all of the examiners out there: if your reasoning/argument/explanation starts with "But if the reference..." then you've already lost. Well, only if the applicant isn't using cut rate hacks to prosecute their applications. Which unfortunately far too many are.

    "Doesn't make me an idiot for thinking about these issues."

    I don't think you're an idiot for thinking about these issues. I appreciate your blog and the work you put into it and the issues you raise. I do think that you tend to be too deferential to the examiners and the PTO, but I also think a lot of practitioners are. I see a reluctance from a lot of practitioners to argue issues like burden of proof, evidentiary standards, and administrative law. With some I think it's because they either don't understand the issues themselves, or if they do understand them in the abstract manner the issues are taught in law school they don't understand them in the context of ex parte patent prosecution, or simply haven't thought about how they should be applied. I also get the sense that a lot of practitioners think it's not productive to get "too lawyerly" with examiners and that it's better to argue the "technical merits" of the rejection as a way to allowance. I disagree with this approach for a lot of reasons.

    But gotta go right now.

    ReplyDelete
  14. >I don't think you're an idiot for thinking about these issues.

    Good to hear. The comment thread was starting to feel a bit adversarial -- though perhaps my skin is too thin today.

    >you tend to be too deferential to the examiners and the PTO

    Hmm. Well, of course I'd like to think I'm not "too" deferential. But yeah, my aim is mostly to win at the Board, and I'm not focusing too much on the Fed Cir. It's important to me to understand how the Board interprets case law so that I can choose/craft arguments appropriately -- even if others are convinced the Board is wrong and would be overturned by the Fed.

    My overall take is that unless your client is prepared to go to the Fed Cir, admin law isn't going to help much. Although perhaps showing your knowledge of admin law is a signal to the Board they should take you seriously because you know your stuff and won't be trifled with? OTOH, I've seen a few Applicants try this tactic recently -- fill the Brief with *tons* of admin law stuff -- and it hasn't worked at the Board. Perhaps that's a topic for another post.

    ReplyDelete
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    1. "My overall take is that unless your client is prepared to go to the Fed Cir, admin law isn't going to help much. Although perhaps showing your knowledge of admin law is a signal to the Board they should take you seriously because you know your stuff and won't be trifled with? OTOH, I've seen a few Applicants try this tactic recently -- fill the Brief with *tons* of admin law stuff -- and it hasn't worked at the Board. Perhaps that's a topic for another post."

      Not gonna disagree with you. But like I said, half the Board is still lifer APJ's and even many of the new hires are former patent prosecutors who also aren't that familiar with the application of concepts like burden, evidentiary standards, admin law, etc. to the field of patent prosecution, and practice before the PTAB in ex parte proceedings is your, mine and our opportunity to educate them. It's also our obligation.

      Regards,

      Tommy

      Delete
    2. "But like I said, half the Board is still lifer APJ's and even many of the new hires are former patent prosecutors who also aren't that familiar with the application of concepts like burden, evidentiary standards, admin law, etc. to the field of patent prosecution, and practice before the PTAB in ex parte proceedings is your, mine and our opportunity to educate them. It's also our obligation."

      Thanks for taking the time to educate us. But the PTO already got quite a lesson about burden, evidentiary standards, admin law, etc. in In re Lovin and In re Jung. Wait, what? Never mind.

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    3. Whatever. In re Jung was a gift to the PTO from the greedy a$$holes at SKGF, and Lovin was another gift from a lifer examiner/SPE turned patent agent at BT. The patent bar has its hacks. I've been saying that for years.

      I was amused to see Steve Morsa, a pro se applicant, educate some willfully ignorant APJ's recently. Of course, I'm sure we're still gonna see a continuous stream of decisions citing In re Pearson flowing out of the PTAB. Yo know what they say, you can lead a horse to water...

      Some day you'll truly appreciate what an easy gig you've got. You can be as wrong as it's possible to be, but there are no consequences. Just ask those 3 APJ's who got it wrong on all five non-analogous references in In re Klein, and the APJ's who got it wrong in In re Stepan Co. and In re Leithem, etc.

      Keep up the record breaking outstanding quality work you're doing over there.

      Regards,

      Tommy

      Delete
    4. "Whatever. In re Jung was a gift to the PTO from the greedy a$$holes at SKGF, and Lovin was another gift from a lifer examiner/SPE turned patent agent at BT"

      I <3 those gifts.

      Delete
  15. "Whatever."

    Pithy, concise, powerful, persuasive. Obviously a great educator.

    "Keep up the record breaking outstanding quality work you're doing over there."

    Thank you. That's nice to hear from time to time. At least you seem to be aware of the PTO's affirmance rate at the Federal Circuit.

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    1. I'm aware of it. I'm also aware that more than quite a few people over there see it as cover for doing a sh!tty job. I'm also very aware that many over there wear their willful ignorance triumphantly as a badge of honor. Like the one idiot who cited a Disney movie for his decision.

      Keep up the great work.

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    2. "Like the one idiot who cited a Disney movie for his decision."

      Who was the idiot who cited Alice in Wonderland for his decision? Oh, yeah, it was Giles Rich. Maybe you can get rid of him too, while you're at it. Wait, what? Too late?

      Delete
    3. Comparing APJ's to Fed. Cir. judges? That's so adorable.

      Keep up the record breaking outstanding quality work.

      Delete
    4. "Comparing APJ's to Fed. Cir. judges?"

      Nope. Just exposing your logic for what it is.

      Delete
  16. "Just exposing your logic for what it is."

    With that ridiculous analogy?

    Lulz

    Keep up the record breaking outstanding quality work.

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    1. Just exposing your logic for what it is.

      All men are mortal.

      Socrates is a man.

      Therefore, all men are Socrates.

      Why all this vitriol against the PTO, pookie? The dolts just can't appreciate how brilliant you really are?

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    2. Also odd that you would use the "idiot" moniker in relation to a Board decision that was eventually affirmed by the Supreme Court. Moreover, the citation aptly illustrates the admin. law concept of the effect of "guidelines" as opposed to statutes or regulations. (But also relevant to when an attorney tries to invoke a rule he knows little about.)

      "From the movie Pirates of the Caribbean (Disney 2003):

      Elizabeth: You have to take me to shore! According to the Code of the Order of the Brethren.

      Barbossa: First, your return to shore was not part of our negotiations nor our agreement, so I 'must' do nothin'. And secondly, you must be a pirate for the pirate's code to apply, and you're not. And thirdly, the code is more what you call guidelines than actual rules. Welcome aboard the Black Pearl, Miss Turner."

      So your position is -- it's a bad movie? The Supremes didn't seem to think so.

      Delete
  17. Recent PTAB decision involving an "annotated" figure in 10/513,531.

    ThomasPaine

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  18. http://e-foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2011006769-07-03-2013-1

    See first full paragraph of page 5 of the decision.

    ThomasPaine

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    1. >See first full paragraph of page 5 of the decision.

      Which says:
      The Examiner’s reliance upon Fig. A is in error as it is a figure created by the Examiner which is not supported by Thompson’s disclosure and contradicts Thompson’s Figure 1.3

      This doesn't quite say Examiner's cannot "create Figures". Looks like the real issue is that the figure isn't accurate.

      So don't argue an annotated figure is "not prior art", and instead argue what's wrong with the Examiner's figure??

      Delete