PTAB dings Applicant for citing to cases without analogizing facts

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


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

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

The Examiner rejected as anticipated by the cutting die in Copeland. The Applicant traversed, arguing that Copeland's die did not have a cutting blade formed by four joined segments as required by the claims. The Examiner had added lines to Copeland's figure as axes to identify segments, but those lines "cross the punch shape at intermediate locations" and thus were not joined segments.

Examiner's Annotated Figure from Final Rejection

When the Examiner maintained the rejection, the Applicant appealed. The Appeal Brief argued that the Examiner had used arbitrary segments. In support of this argument, the Applicant cited to language in two ex parte PTAB decisions:

The  Examiner's interpretation of the drawings in Copeland and Spengler is unreasonable  because he uses arbitrary portions of the drawings that were "defined only by the Examiner" to meet Applicant's claim limitations. Ex parte Denison, Appeal 2009-004110,  p. 5 (BPAI  2010) (Exhibit A) ("However, that 'structure' identified by the Examiner results only from an arbitrary delineation of Berry's structure, made in order to meet the claim limitations. Even giving  the claims their broadest reasonable interpretation, one of ordinary skill in the art would not have understood  the  claim  terms  requiring  'double-curved  portions'  and  'Y-shaped  portions'  to include the arbitrary portions of Berry defined only by the Examiner"); See also, Ex parte Richardson, Appeal 2009-003991, p. 11 (BPAI 2009) (Exhibit B)  ("The Examiner appears to have arbitrarily set the axis of the cited references with no consideration as to the relationship with other claimed features").

The Applicant mentioned one of these PTAB decisions again, later in the argument section:

Here, as in Ex parte Richardson, the interpretation of the claim by the Examiner is not consistent with the description of  the invention in the specification. The Examiner has arbitrarily added annotations consistently of two axes added to the prior art figures with no consideration as to the relationship with the other claimed  features. Ex parte Richardson, p.11.

The Examiner's Answer included the same figure with additional annotations, though no further explanation:

Annotated Figure from Examiner's Answer

The Applicant filed a Reply Brief and expanded on the argument, as follows:

     The Examiner's Answer completely ignores and flies in the face of the [BPAI] respected authority relied upon in Applicant's Appeal Brief. Ex parte Denison, Appeal 2009-004110, p.5 (BPAI 2010) and Ex parte Richardson, Appeal  2009-003991, p. 11 (BPAI 2009). The Examiner cites no authority for relying upon axes hand drawn by the Examiner on a cited prior art reference to support the assertion that the claims are anticipated ...
     The Examiner's Answer is devoid of any support in the prior art for his  construction of the claims and so the Examiner just sketches some lines on the prior art drawings and concludes that the claims are anticipated. In conclusion, the Examiner is wrong on the law and wrong to torture the prior art references by arbitrarily sketching lines that are defined only by the Examiner.

The Board affirmed the rejection. The Board essentially dismissed the Applicant's "arbitrary" argument for two reasons. First, the cited PTAB decisions were not precedential. Second, the Applicant did not "provide a persuasive line of reasoning analogizing the facts in those cases with facts in the presently appealed case."

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

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

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

Mistake #9 when arguing at the BPAI: Arguments that ignore relevant case law

Mistake #9 of my "Top Ten Mistakes Applicants Make at the BPAI" is making arguments that clearly go against existing case law. Here are the most common examples I've observed.

• Ignoring KSR. Obviousness doesn't require a motivation to combine from the references. After KSR, the test is instead "articulated reasoning with some rational underpinning" to combine the references. See my previous post "Mistake #6 when arguing at the BPAI: Arguing the TSM test for obviousness".
• Using the wrong standard for "teaching away."  The Federal Circuit has said that disclosure of an alternative to X is not teaching away from X.  In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of thesealternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”)
• Making obviousness arguments in an anticipation rejection. Non-analogous art is irrelevant to anticipation (see previous post here). Teaching away is irrelevant to anticipation (see previous post here). Secondary considerations such as unexpected results are irrelevant to anticipation (see previous post here).
• Bringing up the number of references when arguing obviousness. The Federal Circuit has said that the number of references is not an indicator of non-obviousness. In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) ("The large number of cited references does not negate the obviousness of the combination, for the prior art uses the various elements for the same purposes as they are used by appellants, making the claimed invention as a whole obvious in terms of 35 U.S.C. § 103.") 
• Bringing up the age of the references when arguing obviousness. The Federal Circuit's predecessor has said that the age of the references is not an indicator of non-obviousness. "The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem." In re Wright, 569 F.2d 1124 (CCPA 1977)(citing In re McGuire, 416 F.2d 1322 (CCPA1969)). 
•  Bringing up another that patent issued with similar claim language. The patentability of other applications is legally irrelevant. See my previous post "Arguments guaranteed to lose: 'but look at these similar claims in other issued patents'."
• Making arguments about due process and equal protection. The BPAI has no jurisdiction over these issues. For the Board's response to a due process argument, see the inter partes reexam decision here in Meadwestvaco v. Graphic Packaging Int'l.  See the post here at The Florida Patent Lawyer blog for the Board's response to an equal protection argument.