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August 2, 2009

Sop

6,310,269 claims a tampon with a solid fiber core denser than radially projecting ribs, the ribs being narrower at their base at the core than at their distal ends. McNeil, the patent holder, requested reexamination based upon an uncited Japanese patent application. The examiner rejected the claims over the prior art, and the BPAI agreed. McNeil appealed to the CAFC.

In re McNeil (CAFC 2008-1546) precedential

There was an issue of whether McNeil timely appealed. The PTO has the nasty habits of not notifying applicants on the date which they mark a paper, and on denying applicants based on any bureaucratic detail they can latch onto.

The PTO argues that both 35 U.S.C. § 142 and 37 C.F.R. § 1.304(a)(1) state that the time to appeal runs from "the date of decision," and the opinion says "Decided: May 30, 2008," so it would be contrary to the language of the statute and the regulation for us to deem the date of decision to be the date the order was mailed. While this argument has some superficial appeal, the inner workings of the agency are far more important than the PTO admits. Based on the evidence before us, it appears that only when an opinion is released to the public (or at least the parties) is it truly decided--until then, it is possible for the Board to decide to revise it.

The nut of the problem with the patent office, in this instance, and far too often for the office to be considered competent -

It is not entirely clear, however, that the Board understood McNeil's claim.

Then again, there is a yawning difference between competent and "good enough" for government work. The USPTO has a long-standing tradition of the latter, something no patent "reform" can ever fix.

Reversed.

Posted by Patent Hawk at August 2, 2009 6:41 PM | Prior Art

Comments

Hey Noise, btw, I just got done reading your latest publication. Not too bad.

I appreciate all the face time you gave mah boy Miyazaki.

Posted by: 6000 at August 3, 2009 7:43 AM

I encourage all to read the requests for rehearing the patentee filed with the BPAI in this reexam. (That's correct, I said requests. They filed two.) It is wonderful advocacy. They called the BPAI out on its new routine of completely ignoring what the examiner did, conducting their own "fact finding" and then chiding applicant for not pointing out why the "facts" are wrong. (Uhm, maybe because the applicant didn't know what "facts" BPAI "found" until the decision was sent out.)

Read the Fed. Cir. decision too. Wonderful.

This is what advocacy at the BPAI and the Fed. Cir. is supposed to be: straight forward, complete, and brutally honest when it comes to PTO incompetence.

This is the second case in less than a year where the Fed. Cir. has reversed BPAI affirmances of anticipation rejections. Given the rather low level needed to satisfy the "substantial evidence" standard, that strikes me as an indictment of the "quality" of BPAI decisions.

But I'm sure the PTO is going to release another report telling the world that they've met every single one of their goals, and done so at record breaking quantity and quality.

Right. And if you believe that, I got some beach front property in Kansas maybe I could interest you in.

Posted by: JohnDarling at August 3, 2009 10:10 AM

As a follow up, it's clear that the Appeal Brief and the Requests for Rehearing were written by a former APJ now working at the firm representing the patentee. I'm sure he enjoyed ripping his former colleagues a new one.

Posted by: JohnDarling at August 3, 2009 10:19 AM

Shouldn't the examiner in his/her Final Rejection set forth the "fact finding?"

Posted by: John Prosecutor at August 3, 2009 12:15 PM

"Shouldn't the examiner in his/her Final Rejection set forth the 'fact finding?'"

LOL

That would indeed be nice. A concise, enumerated findings of fact section in an Office Action. That way the BPAI can't substitute their own "findings" for the examiner, affirm, and claim it's not new ground.

Of course, as actually putting in findings of fact would severely slow down the usual production of final rejections, which consists of nothing more than inserting the "attacking the references individually", "the examiner recognizes that hindisight cannot be used" and/or "bodily incorporation" form paragraphs, it's unlikely the PTO will adopt your suggestion.

Posted by: JohnDarling at August 3, 2009 12:24 PM

I couldn't agree with you more, JohnDarling. As long as THE BOARD can make a prima facie case on the cited art, it doesn't matter to them that the examiner didn't.

Posted by: anonymous at August 3, 2009 12:34 PM

... it doesn't matter to THE BOARD ITSELF ...

Posted by: anonymous at August 3, 2009 12:36 PM

anonymous,

I agree. However, in this case, the Board couldn't make a prima facie case. The patentee argued that. Twice. In two requests for rehearing. In their arrogance, the Board refused to acknowledge the utter crappiness of their decision. Until they got the smack down from the Fed. Cir.

Let this be a lesson to all the nay sayers out there who claim you can't get a BPAI decision overturned on factual errors. You can. It's harder than getting their decision overturned on a legal error, but it can be done.

This case is also a prime example of the disease that is rampant in the mechanical arts. It's the "well, gee, the pictures kinda sorta look the same, so it's not patentable" disease that afflicts so many over at the PTO. This "examination" by doing nothing more than looking at the pictures is a scourge over there. One would think/hope the APJ's of the BPAI were immune to it, but one would be wrong/sorely disappointed.

Posted by: JohnDarling at August 3, 2009 12:46 PM

JD,
The sad thing is that applicants lacking the financial resources to go up to the CAFC on this kind of thing are too many times being disposed of by the BPAI with this level of "substantial evidence" (level=0).

Posted by: step back at August 4, 2009 3:02 AM

step back,

I agree 100%. The APJ's all have the same mindset as the examining corps: pump out crap and hope you don't get called on it.

In this case, they did get called on it. And they looked as stupid as they really are.

But here's a tip: when the examiner, or the Board, tells you that your claim is anticipated/obvious because "the drawings reasonably convey" the limitations, you can call bullsh!t on that and be certain that the Fed. Cir. is gonna agree with you. It may be expensive, but winning ain't cheap.

Posted by: JohnDarling at August 4, 2009 5:21 AM

"because "the drawings reasonably convey" the limitations, you can call bullsh!t on that"

what, more specifically, should your response be, JD?

Posted by: John Prosecutor at August 4, 2009 8:00 AM

If the examiner, or the Board, is telling you that claimed features are "reasonably conveyed" by the drawings of the reference(s), your response should be that such a "finding of fact" is not supported by substantial evidence. Anticipation is a question of fact. PTO fact finding must be supported by substantial evidence. If the "finding of fact" that a reference anticipates (i.e. discloses the identical invention in as much detail as is recited in the claim) is premised upon the supposition that the drawings "reasonably convey" the claimed features, you should call bullsh!t on the examiner, or the Board.

For the factual inquiry of the scope and content of the prior art in an obviousness rejection, you simply argue that the examiner failed to resolve that factual inquiry correctly, and as the underlying factual inquiry(ies) are unsupported by substantial evidence, the legal conclusion (i.e. obviousness) is also incorrect.

I admit that winning the case on the facts is harder than winning it on the law. But when the "findings of fact" are weak assertions that the "drawings reasonably convey" the claimed subject matter, your chances are greatly improved as this case demonstrates.

Posted by: JohnDarling at August 4, 2009 8:37 AM

"If the examiner, or the Board, is telling you that claimed features are "reasonably conveyed" by the drawings of the reference(s), your response should be that such a "finding of fact" is not supported by substantial evidence."

JD,

Agree with you 100%. The Board isn't the only one who has trouble with "factual support." I've seen many an Examiner argue in an Office Action that a feature of the Claim is "implicitly taught" (i.e, inherent) from the reference, but fail completely to explain why this is so. MPEP 2112 is pretty clear that the feature must "necessarily flow" from what is taught by the reference, or else the inherency argument will fall flat.

Posted by: EG at August 4, 2009 10:15 AM

I deal frequently with a junior examiner who loves to tell me that claimed features are "intrinsic" in the reference. Also frequently acknowledges that certain features aren't in a reference, but are "well known" (but won't actually take Official Notice). I'm sure this examiner is being coached by somebody who thinks of themself as quite clever, but is really a dope.

Posted by: JohnDarling at August 4, 2009 10:42 AM

" being coached by somebody"

the senior examiners are hoteling these days, thereby not very available for one-on-one coaching and side-by-side mentoring

Posted by: John Prosecutor at August 4, 2009 11:56 AM

"Of course, as actually putting in findings of fact would severely slow down the usual production of final rejections, which consists of nothing more than inserting the "attacking the references individually", "the examiner recognizes that hindisight cannot be used" and/or "bodily incorporation" form paragraphs, it's unlikely the PTO will adopt your suggestion."

Maybe if you stopped attacking references individually, asserting some broad bs about hindsight, and/or some other mess about "bodily incorporation" (I'm not even aware of wtf this is dealing with) then maybe the PTO would stop sending you those FP's.

"when the examiner, or the Board, tells you that your claim is anticipated/obvious because "the drawings reasonably convey" the limitations, you can call bullsh!t on that and be certain that the Fed. Cir. is gonna agree with you. It may be expensive, but winning ain't cheap."

That isn't what this case showed. And I'd say that your assertion is only true where the drawings don't reasonably convey the limitations.

Posted by: 6000 at August 4, 2009 12:05 PM

"Maybe if you stopped attacking references individually"

LOL. I see you're familiar with that form paragraph. Probably haven't cranked out a single final that didn't include it.

100% of the time I get that form paragraph I know the examiner has zero reading comprehension because I always clearly state that the combination fails to establish a prima facie case.

"asserting some broad bs about hindsight"

Right. Because no examiner has ever alleged that "It would have been obvious to modify...for the same reason as Applicant."

"..and/or some other mess about 'bodily incorporation' (I'm not even aware of wtf this is dealing with)"

Don't sweat it, 6. It's a run of the mechanical thing. You wouldn't understand.

Posted by: JohnDarling at August 4, 2009 12:12 PM

"That isn't what this case showed."

It's not?

LOL

You're getting even funnier. Wasn't sure that was possible, but you've topped your ownself.

Bravo!

Posted by: JohnDarling at August 4, 2009 12:13 PM

"LOL. I see you're familiar with that form paragraph. Probably haven't cranked out a single final that didn't include it. "

I actually never use that FP responses in my responses. Exceptions might exist, from my very earliest days, but if they do they are rare. Now I just sit down and write a response along the same lines. Takes about a minute for someone attacking a reference individually, and I never say it quite like that. I say that the applicant failed to address the rejection, which is based on a combination of two references under USC 103 as opposed to a single reference. That is, his response is non-responsive. If that is his only response, which it usually isn't, then I say that I'm going to give him the benefit of the doubt that it is responsive and thus am not going to hold his response non-responsive.

I have to say though, I deal with real professionals in my day to day, so attacking the reference individually is usually just a lead in to making a bigger point on the same subject in their next paragraph.

The only other thing I'll tell you is to be careful about merely tacking on something about the combination and the prima facie case where your actual argument deals not with the combination, but only with the shortcomings of one reference, and then bases an argument to the combination off of that shortcoming. For instance, amongst the very few times that I do find someone attacking the ref individually roughly 50% will have stated something like: But X reference doesn't show "blah blah blah". Therefore, the combination doesn't show it, and therefore there is no prima facie case. That may very well be true, but you're still attacking only the one reference. What needs to be argued, to validly make this type of argument is: Reference X doesn't show "blah blah blah", reference Y deosn't show "blah blah blah" and the combination of the two does not result in "blah blah blah" either. Therefore, the combination doesn't show it, and therefore there is no prima facie case. Occasionally someone will send something like that in. I could just FP them away into final. But usually I try to make some sense of what they were trying to convey and put on the record that if they were perhaps trying to say that the later were the case then here is my response to that argument as well as the one they made.

"topped your ownself."

Funny, I believe you just topped yourself lol.

Posted by: 6000 at August 4, 2009 2:16 PM

As to the case, I still don't see anything about what drawings reasonably convey. Perhaps you can include page no.

The decision, so far as I can understand, states taht the Board seems to have done a poor job understanding/construing the claim.

See:
"It is not entirely clear, however, that the Board understood McNeil's claim. In its initial decision, the Board stated, "We find that Sasaki's Figures 8 and 10 reasonably appear to depict the ribs of its tampon as being compressed less at their distal ends than at their ends proximal to the drawstring at the center of the drawn fiber strips." Id. at *3 (emphasis added). McNeil's claim, however, states that the ribs are less dense than the core, not that the distal ends of the ribs are less dense than the proximal ends."

Besides, from what I can tell, the compression of the blank in Fig. 6 should lead to a more dense core it would seem to me like. So, obviously, this decision holds no more than: If the figure does not reasonably show x then one cannot presume it to show x. In other words one cannot make things up contrary to the figure without any support.

However, the decision goes on to state that the board relied on some language from a claim to show that the outside parts were compressed, and they thus relied on the fact that the reference did not say that the insides were compressed to give the relative comparison. However, it would seem implicit to one of ordinary skill that the insides would be compressed, instead of them not being compressed, and then you're left with a question of "well how much are they compressed?". The board doesn't know that answer and shouldn't have relied on those teachings then.

The Fed. Circ, as an aside, appears dense enough to not understand that where the ribs come together is the "core" of the tampon. Ridiculous that they want such buffonery put on the record. It's like saying Fig. 1 shows a road where Fig. 1 specifically shows a road and some surrounding area, and the Fed. circ. pitching a fit because the board didn't say "Fig. 1 shows a road in the very middle of the figure, right in front of your face you moron". I get this kind of dmbsht from appeals people sometimes. You really have to watch out for it in an appeal. Anything blatant needs to be spelled out 2x as blatantly just to make sure a moron in a hurry doesn't miss it.

Same probably goes for your briefs.

All in all, from what I can see, if I were the board, and I wanted to make this rejection then I would have followed a certain path.

First I would have laid out what the problems with the reference were as shown in the Circ decision, namely that there is no relative comparison between the outsides and core of the tampon and the spacing from adjacent ribs (from his brief actually). Then I would have stated that it appeared inherent that the compression of the ribs on the outskirts would compress each of the ribs by an amount which appears from the drawings to be approximately equal, and thus that the center of the tampon would see a combination of all of that compression, thus the compression would be greater than any of the individual portions making up the sume, and that all of this appears to be inherent with that being the scientific reasoning behind it. Then I would say that the office is not equipped to make such a device and test it to see, so that falls to the applicant as per whatever MPEP section touches on that, which is supported by us being able to throw a 112 at them (distinctly claim) in such a case should we so choose. Then app can either make one, test it, and send in the results, or he can amend.

Then, as to the spacing between ribs I would designate the middle portions of each rib as being the outermost part of the "proximal end" and state that they are further apart from the far side of the proximate end of the adjacent rib (using for instance the middle rib and the top rib, and specifically the middle of the right hand side of the middle rib, and the middle of the left hand side of the top rib) and then using the distance between the distal end of the middle rib and the top rib to satisfy the later portion of that clause. (Specifically you designate the outsidemost portion of the right hand side of the middle rib and the outsidemost portion of the right hand side of the top rib)

That last limitation is a tricky designation, but one that the claim is open to, and one that would have to be made of record or the board/CAFC would never find it.

In any event, the CAFC did its standard job of not going out of its way to look at the reference and instead merely relying on the board/examiner to hold their hand through the rejection, and, as usual, failed to see a prima facie case before them.

I also must disagree with the Circuit on the issue of the date of appeal, not that I wouldn't have given him the extra time as the director, were I the director. The statute clearly says from the date decided and them making it the day it is mailed is completely contrary to statute. The statute is completely capable to take into account the mail date if that was what was intended. I believe that there are probably further facts that are relevant in this situation, perhaps by making a request to the board to have the decision issued in person as it is decided or some such, and that is probably the exact kind of thing the statute takes into account. The fact that we generally mail out decisions nowadays doesn't change that you probably could get it before it was mailed. Or at least that you could have in 1900, though that practice may have died long ago.

Sounds like result oriented nonsense to me.

Oh and JD, when you see what happens in the Wheeler case you will be (or should be) appalled. Remember that I sent the examiner a copy of a certain reference a long time ago, that is a matter of public record in re the matter of public record In Re Wheeler. If someone, such as yourself, was interested in the case, as present in the appeal, and perhaps decided to mail the attorney a copy of a certain reference you would be doing the world a favor. That's all I can say about that case.

Posted by: 6000 at August 4, 2009 3:12 PM

Oh, and I almost forgot to mention, it seems that from the claim, "thereby having a coarser capillary structure than the fibre core" is just a result of the compression being less on the ribs than it is on the core. In other words, it is merely a consequence of the previous limitation.

I could be wrong about that last part though, it would take some looking into that I don't feel like doing atm.

Posted by: 6000 at August 4, 2009 3:21 PM

BTW, this case is exemplary of the current problems facing the office. In order to actually make a prima facie case, it takes FOREVER sometimes, even in the simplest of kinds of cases (tamponslol).

P.S. They should have used a short form lol.

Posted by: 6000 at August 4, 2009 3:28 PM

Mah boys on the circuit really have their heads on their shoulders when it comes to the overall issues in patent law, but their work product in the day to day leaves a lot to be desired.

Posted by: 6000 at August 4, 2009 3:43 PM

"Then I would have stated that it appeared inherent that the compression of the ribs on the outskirts would compress each of the ribs by an amount which appears from the drawings to be approximately equal, and thus that the center of the tampon would see a combination of all of that compression, thus the compression would be greater than any of the individual portions making up the sume, and that all of this appears to be inherent with that being the scientific reasoning behind it. Then I would say that the office is not equipped to make such a device and test it to see, so that falls to the applicant as per whatever MPEP section touches on that, which is supported by us being able to throw a 112 at them (distinctly claim) in such a case should we so choose. Then app can either make one, test it, and send in the results, or he can amend."

As your boy Mooney would say: BWWWAAAAAAHHHHHAAAAAAAHHHHAAAAAAAAAHHHHHHAAAAAAA!!!!!!!!!

Keep 'em coming. We need the laughs.

Posted by: JohnDarling at August 4, 2009 4:24 PM

"...which is supported by us being able to throw a 112 at them (distinctly claim) in such a case should we so choose."

Your "theory" that you can enter a 112, 2nd rejection because you're unable to determine if a prior art reference anticiptes/renders obvious the claim is certainly interesting. Dead wrong. But interesting.

Like I said, keep 'em coming.

Posted by: JohnDarling at August 4, 2009 4:52 PM

JD says "Bwahawhawhaw" and then prepares to make the prior art tampon.

"“[T]he PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his [or her] claimed product.
Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie
obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the
same...[footnote omitted].” The burden of proof is similar to that required with respect to
product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596
(CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977))."

Your burden. Catch.

In this case it is pretty clear that the ends are compressed, and that the compression proceeds to the middle (core) portion. Fig. 7, pieces 14 come in and compress ends 11 such that they all intersect at what appears to be designated 12 which appears to be the core. Fig. 8 is probably what the rejection should be based on, but, I can't see much from Fig. 8.

The CAFC's review is little more than matching pictures up with no regard to what is going on in the reference. And you complain about examiners doing a piss poor job. Just look at the guys at the top of the review chain.

"There is no evidence that this compression at the center of the tampon blank leads to a finished product with a core denser than the ribs."

Just wtf does compression from all sides do to the part in the middle compared to the parts on the outside? Clearly, a mechanical engineer should be able to sort this issue out. Tell us JD. Will all the forces contribute to the forces acting on the middle? Yes/no/Not necessarily? Is an object under more compression not compressed more than an object under less compression?

As another aside, the CAFC believes that there is some "density" requirement in the claim. Clearly, I must be reading a different claim than they are.

"There is no evidence that this compression at the center of the tampon blank leads to a finished product with a core denser than the ribs."

So fin what? Where is some density requirement in this claim? The ribs are compressed less than the core. That is all that is required. A standard forces analysis reveals such is the case.

"Your "theory" that you can enter a 112, 2nd rejection because you're unable to determine if a prior art reference anticiptes/renders obvious the claim is certainly interesting. "

Your ability to misstate my "theory" is unsurpassed by all except perhaps Noise herself. And it is hardly my "theory" it is a paraphrase of what the court said in some of those decisions throughout the MPEP, I looked a few of them up, and no I don't remember which one it was because I don't really care, you're submitting evidence if I want to make a techincal case establishing the inherency of the last remaining missing element against you. You can eat me if you don't like it, or you can buy a 2nd, 3rd and 4th pair of eyes review praying that you get s sympathetic ear to your "plight". One thing is for sure, my spe is all about doing it. I want to do it less than he does.

I personally wouldn't reject the claim over this reference I don't believe. Without further analysis at least. None the less, a prima facie case exists to be made, should the office choose to require the inherency technical argument be rebutted to pass the burden.

Nice article from the POSHITAs with love:

http://copyfight.corante.com/archives/2009/07/07/do_patents_really_promote_useful_progress.php

Posted by: 6000 at August 4, 2009 6:22 PM

Feel free to post this 112, 2nd you think you could enter.

The laughs just keep coming.


"Your burden. Catch."

I have an application on appeal on just this issue. When the examiner is reversed, I'll e-mail you the serial number.

Posted by: JohnDarling at August 5, 2009 2:45 AM

BTW, here's a little snippet from In re Fitzgerald:

The appealed claims appear to be product claims.

However, appellants state:
There is no other way to produce the patch-type fasteners defined in the appealed claims except by the use of [the] specific process which is defined in the claims of U.S. patent 3,784,435 --the parent application to the present divisional application. For all intents and purposes, the present claims have exactly the same meaning which they would have had if the claims had defined appellants’ patch-type fasteners in terms of the steps used in the process for making the fasteners.

Therefore, the suggestion of the Solicitor that product-by-process principles be applied to the facts of this case is well taken. In a discussion of product-by-process claims, this court has said:
[W]hen the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.

I don't see any indication in this tampon case that the patentee in reexam argued that their claims should be treated as product-by-process claims. So In re Fitzgerald doesn't apply.

Nice try though. Keep citing that case law. We'll keep shooting it down.

Posted by: JohnDarling at August 5, 2009 5:24 AM

"Mr. Taylor sought redress in the amount of $1 billion, his estimation of the worth of his intellectual property “in the U.S. and world market.”"

LOL

Man, this whole decision is full of lulz.

He petitioned in forma pauperis in order to be able to pay 4 grand to keep his patent going? COME ON.

Posted by: 6000 at August 5, 2009 1:10 PM

wrong thread mah bad

Posted by: 6000 at August 5, 2009 1:11 PM

"I have an application on appeal on just this issue. When the examiner is reversed, I'll e-mail you the serial number."

Appreciate it, my spe is just now wanting me to do one of these types of rejections in a case of my own. Frankly I'd just as soon allow it, it is one of the pre-appeals that the conferees pulled some bs out on. I got an amendment out of them on some new art, and their current arguments for the new claims are sht, but the new rejection has other issues which I'm sure the board or conferee will be happy to pick up on for the applicant since applicant bought their second pair of eyes review. In any event, that'll be the second reopening (me and the spe want to reopen) because this spe definitely wants to do things differently than my old spe wanted to do, specifically shifting the burden for inherent features.

How long do you expect it will take the decision to issue forth? Are we talking about a case that just now went up or has it been brewing for awhile? Is this going to the board or the CAFC?

"I don't see any indication in this tampon case that the patentee in reexam argued that their claims should be treated as product-by-process claims. So In re Fitzgerald doesn't apply."

I agree that the case is perhaps distinguishable from In Re Fitz, but that doesn't mean that a similar rationale won't win the day over a claim that shouldn't be treated as a PbP. You can distinguish over prior caselaw and still lose the war JD. For a man of your years I would expect you to see the light much more easily.

Let's have a copy of In re Best shall we? Just where does "T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[" That quote come from? It doesn't appear to be Fitz, although it might be. I presume that it is Best. Fitz just used the rationale from Best to support its conclusion about the wacky PbP=normal product claim conversion it was allowing.

I have very little faith in your ability to win on this issue. The PTO simply cannot confirm inherency in all apps before it, and scientific reasoning must be substitutible in order to allow the pto to fulfill its mandate to issue valid claims. Watch that previous sentence be nearly verbatim what you get in your appeal.

This doesn't even begin to scratch the surface of cases like Ex Parte Levy etc. Face it JD, you're not just facing down the precedents themselves, you've got to beat the rationale on which the PTO is relying to present such cases to the CAFC.

Posted by: 6000 at August 5, 2009 1:43 PM

It's from In re Best. Here's the quote:

"Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludtke, supra. Whether the rejection is based on 'inherency' under 35 USC 102, on 'prima facie obviousness' under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972)"

Still have to show they are identical or substantially identical, or produced by identical, or substantially identical processes.

"...specifically shifting the burden for inherent features."

You still don't understand what is required to shift the burden. Anticipation requires identity of invention. You have to establish that the features that are not explicitly disclosed are necessarily present in the prior art reference. Arguments that "the drawings reasonably convey" that the features are present ain't gonna cut it.

The burden is on you to establish that the features are inherent. That's a fairly high burden. It's not simply declaring, "The features are inherent. The burden is shifted to applicant."

Your "reasoning" has to establish that the features are necessarily present in the reference. Any argument for applicant that is reasonably persuasive that the features are only possibly present kills your attempt to shift the burden. Patents are full of language to the effect of "it should be appreciated that other arrangements/values/etc. may be provided/used/etc." are all applicant needs. One of my colleagues killed an inherency argument just the other day using such throw away boilerplate from the applied reference. It's that easy.

"I have very little faith in your ability to win on this issue. The PTO simply cannot confirm inherency in all apps before it, and scientific reasoning must be substitutible in order to allow the pto to fulfill its mandate to issue valid claims. Watch that previous sentence be nearly verbatim what you get in your appeal."

My case is a slam dunk reversal. I expect a Board decision sometime by the end of the year (it's been pending at the Board for a couple months now).

Actually I have two such cases in the same AU (different examiners). The second one I filed the brief about 2 months ago. The examiner hasn't responded yet. But he's gonna re-open because I blew his inherency arguments right out of the water. When he re-opens, and he will, I'll e-mail you that serial number.

I haven't read Ex parte Levy in awhile, but I do remember citing it for reasons favorable to applicants.

"...you've got to beat the rationale on which the PTO is relying to present such cases to the CAFC."

If the "rationale" the PTO is relying on is that "the drawings reasonably convey" then I'll beat that every time. Like a rented mule.


Posted by: JohnDarling at August 5, 2009 2:09 PM

"Still have to show they are identical or substantially identical, or produced by identical, or substantially identical processes."

In mine that won't be a problem. I don't know about your case, or the specific factual assertions underlying it.

I will say though that the case in this thread could have that identical product assertion made quite easily. And my rationale above would probably be sufficient, though it might be good to look up the force analysis at work.

"Any argument for applicant that is reasonably persuasive that the features are only possibly present kills your attempt to shift the burden."

Yeah but that "reasonably persuasive" is going to be dam hard for the applicant to make in the case in this thread or my case irl. If they can present me with some argument then fine, it is allowed, but I don't see that happening.

"Arguments that "the drawings reasonably convey" that the features are present ain't gonna cut it."

I never said they would. But the drawings do reasonably convey a lot about the claims in this thread. Such as the presence of a core. I still don't see wtf the circuit was blowing steam about on that subject.

"That's a fairly high burden."

Imma have to disagree, if it is inherent then it isn't all that difficult to explain why unless it is technically complex. And of course it'll be a high burden if it is technically complex.

"My case is a slam dunk reversal. I expect a Board decision sometime by the end of the year (it's been pending at the Board for a couple months now).

Actually I have two such cases in the same AU (different examiners). The second one I filed the brief about 2 months ago. The examiner hasn't responded yet. But he's gonna re-open because I blew his inherency arguments right out of the water. When he re-opens, and he will, I'll e-mail you that serial number.
"

I appreciate it but if your arguments are merely that he hasn't established that the features would be inherent, or that you have some awesome argument against his then I don't even need to see the cases. I already know that drill and the first part isn't that hard for me to do in my cases. And if they have the second part then fine, that rejection won't fly. It simply isn't going to happen easily in my art though. Either the science says or suggests that one thing will happen or it doesn't.

I thought your arguments were going to be that the PTO couldn't make this requirement either way.

"Patents are full of language to the effect of "it should be appreciated that other arrangements/values/etc. may be provided/used/etc." are all applicant needs. "

That kind of stuff isn't the kind of thing I'm concerned with. My art routinely deals with intrinsic properties of materials. It's the material science limitations that are usually at issue, and the art suggests that X happens when Y is made in Z manner. Of course, it'll be some kind of conclusion that some researcher concluded from the results of his experiments usually, and that will be from a reference other than the references which the rejection is based upon. Obviously, there is the argument that it is bad science, or that there is a possibility that the researcher was wrong, but I just don't see those arguments flying. Sure there is a possibility that the experimental results were all fraudulent/mistaken, but come on, the board isn't going to buy that crp.

For example. Here is how it goes.

1. A bicycle comprising: an aluminum alloy frame, wherein the aluminum has an elasticity of 63GPa.

Situation 1: Ref A shows a bicycle with an aluminum alloy frame made by x process. Reference C states that in doing experiments in creating aluminum alloys by process x then aluminum alloys with an elasticity of 63GPa are obtained because of the nature of the process which is explained.

102.

Situation 2: Reference A shows a bicycle having an aluminum frame. Reference B shows a method of making aluminum by process X. Reference C states that in doing experiments in creating aluminum alloys by process x then aluminum alloys with an elasticity of 63GPa are obtained because of the nature of the process which is explained.

There is motivation to combine etc. for A+B. 103.

The board/CAFC isn't going to accept that the guy in Ref C was possibly bsing or what possibly mistaken.

Bottom line is, it is pretty easy to establish these types of inherent things in my art, and they should be even easier to establish, if for instance a rationale is relied upon instead of reference C, where the examiner simply explains the process mechanics of process X and why that leads to 63GPa being formed.

I daresay that finding a forces analysis book for the claims in this thread probably isn't going to be all that terribly difficult.

I tell you, if the PTO had some independent experts from whom we could draw upon for expert testimony I could have taken quite a few cases dealing with inherent properties out a lot faster. We should consider a new pilot program called "hire an expert to testify as to properties present in the case", at applicant's expense of course (lol). That would resolve a lot of these issues pretty quickly.

Posted by: 6000 at August 5, 2009 3:24 PM

"I will say though that the case in this thread could have that identical product assertion made quite easily. And my rationale above would probably be sufficient..."

Probably not. Your rejection would have been reversed by the Fed. Cir. also. Though not as bad a beat down as the Board got. But then again, you put more thought, creativity, and effort into your post than the Board put in its decision. That's a sad, but true, commentary on the state of things over there.

Posted by: JohnDarling at August 5, 2009 5:21 PM