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May 19, 2010

Misguided Missile

Another patent applicant groans like Tom Jones: "Stop Breaking My Heart." Does this lyric sound familiar? "The applicant argues that these rejections were based on a misunderstanding of the [prior art] references, and lacked sufficient findings by the Board. The applicant states that the Board misinterpreted claims [], leading the Board to conclude erroneously that the additional limitations in these claims were taught by [the prior art]. The applicant complains that neither the examiner nor the Board made sufficient findings or adequately explained their reasoning. The PTO, through the Solicitor on this appeal, now seeks to substitute new reasoning for that supplied by the Board concerning how the asserted references should be interpreted." Business as usual at the PTO. But, like Tom Jones hammering home "Sixteen Tons," the CAFC lambasts the PTO for randy rejection.

In Re Ravi Vaidyanathan (CAFC 2009-1404) nonprecedential

Ravi Vaidyanathan came up with a brainy missile guidance system. Well, brainy for cockroaches.

The [10/259,203] application relates to a guidance and control method for controlling munitions such as missiles or unmanned aircraft, wherein an autonomous reflex response is based on a neural network model of a biological response. The method is designed for the "endgame" stage of flight when the munition is very close to the target, at which stage the system guides and controls the munition by calculating trajectory commands using a neural network that is trained using a genetic algorithm; the neural network provides "high level" guidance commands to an autopilot, which converts those commands to signals that direct the actual movement of the munition. The system is described as achieving substantial gains in accuracy, as compared with prior systems.

The '203 specification acknowledges extensive existing knowledge concerning guided munitions, the use of autopilots in connection with these munitions, and the development of neural networks. The '203 invention contemplates that known technologies are used to bring the munition within close range of the target, at which stage the neural network provides rapid-response trajectory commands for the final or endgame stage. The specification describes in mathematical detail a form of neural network that is modeled on the rapid neural response that is described as characteristic of the escape actions seen in cockroaches.

The patent Board reversed examiner rejection on claims 10-11, allowing the two claims. Obviousness rejection by the Board of claims 1-9, mainly over 6,473,747 ("Biggers") and 5,435,503 ("Johnson"), was appealed (singing Tom Jones "A Minute of Your Time"), because Vaidyanathan considered the Board like Tom Jones sang: "Not Responsible."

The obviousness inquiry is decided as a matter of law, based on four general factual inquiries as explained in Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966), and reaffirmed in KSR International, Inc. v. Teleflex, Inc., 550 U.S. 398, 406-07 (2007). The patent examiner is responsible for marshalling the references whose teachings are most relevant to the claimed invention, and evaluating the claimed invention against these teachings, from the viewpoint of a person of ordinary skill in the field of invention. See Graham, supra; In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009); see generally In re Oetiker, 977 F.2d 1443, 1445-47 (Fed. Cir. 1992).

Inspired by Tom Jones "Help Yourself"...

The applicant challenges the Board's legal and factual analyses. He argues that the Board committed legal error by failing to follow the Court's requirement that the factual findings on which the legal conclusion of obviousness rests should be set forth explicitly. See KSR, 550 U.S. at 418 ("To facilitate review, this analysis should be made explicit."); see also In re Gartside, 203 F.3d 1305, 1314 (Fed. Cir. 2000) ("We have expressly held that the Board's opinion must explicate its factual conclusions, enabling us to verify readily whether those conclusions are indeed supported by 'substantial evidence' contained within the record."); In re Grasselli, 713 F.2d 731, 739 (Fed. Cir. 1983) ("It is fundamental that rejections under 35 U.S.C. §103 must be based on evidence comprehended by the language of that section.").

The applicant points to the Board's interpretation of the Biggers and Johnson references as examples of the Board's failure accurately to ascertain the differences between the prior art and the claimed invention, as required by Graham. He also states that the Board failed to establish, or even to address at all, the level of ordinary skill in the field of the invention, as required by Graham. He also states that the Board erred in its interpretation of claims 8 and 9, further undermining the conclusion of obviousness. He contends that these errors so infect the Board's legal analysis of obviousness that the rejections cannot stand.

Something amiss when the examiner, patent Board, and PTO Solicitor have different interpretations of the prior art? Just like Tom Jones singing "This And That."

The applicant first argues that the Board's interpretation of the Biggers reference lacks support by substantial evidence. The applicant points out that the Board viewed Biggers differently than did the examiner, and that the PTO Solicitor has attempted yet a third interpretation on this appeal. We agree that the PTO has offered divergent views of what Biggers describes and means in relation to the '203 application.

Biggers is directed to the control of a guided missile using a neural network that processes information received from onboard sensors to determine desired trajectory commands. Unlike the '203 application's emphasis on the endgame stage of flight, Biggers uses the neural network at an intermediate stage of flight, and then switches to an independent guidance control system for the late-stage approach to the target.

The Board thus recognized that the relay of trajectory commands from the neural network to the autopilot is not described explicitly in Biggers, but stated that "a person of ordinary skill in the art of missile guidance would understand that trajectory angle of attack commands, by whatever means they are produced, are transmitted to a missile auto pilot, which specifies angle changes to the missile necessary to maintain the velocity vector of the missile along the specified trajectory and transmits these changes to an alignment/control system to effect the changes." Board Opinion at 9-10. The Board cited no other evidence indicating the level of ordinary skill in the relevant art, or explaining why a person of ordinary skill would view this autopilot aspect as an implicit teaching of Biggers.

The applicant states that Biggers teaches the use of three independent, discrete elements or systems to guide the missile in different stages of flight... The applicant states that when it is understood that Biggers teaches these separate and independent systems for guiding the missile at different stages, it cannot reasonably be concluded that Biggers teaches that the neural network sends its trajectory commands to the autopilot. He states that Biggers only refers to the autopilot in connection with the initial stage, before the neural network begins to control flight. He argues that the Biggers specification never states that the neural network sends its commands to the autopilot, and that this path would be incompatible with the purpose of the Biggers invention.

As a matter of professional practice, PTO bait-and-switch rejection bases are like Tom Jones sang, "It's Not Unusual."

The PTO Solicitor on this appeal simply states that "substantial evidence supports the Board's finding..." PTO Brief at 18. This statement is not tied to any description within Figure 3, or any language in the specification, or any other source of "substantial evidence." Apparently recognizing this gap, the Solicitor also presents an explanation of Biggers that differs from that provided by the Board... The PTO Solicitor now argues, for the first time, that Figure 4 is sufficient to show that commands from the neural network are input into the autopilot in at least one phase of the Biggers method.

The Solicitor, singing the antithesis of Tom Jones' "Puppet Man," took a different rejection tack than the examiner or Board.

The applicant addresses these new PTO arguments in his Reply Brief. He states that Figure 4 of Biggers and the general background knowledge of autopilots do not show what the Solicitor states is shown. The applicant points out that while the Solicitor states that in Biggers "the neural network sends a zero angle of attack to the autopilot" in step (72), nothing in either Figure 4 or the accompanying description states that it is the neural network that sends this zero angle of attack.

The Solicitor states that the applicant has not explained where else the zero angle of attack in step (72) could come from, but the applicant responds that he does not bear the burden of proving what Biggers teaches. The applicant points to the conflicting views of the Examiner, the Board, and now the PTO Solicitor as indications that the Biggers reference does not present the clarity of disclosure that the Solicitor now suggests.

 The Solicitor argued that the court had to defer to the PTO. Like Tom Jones, the CAFC sang to the PTO, not to be a "Daughter of Darkness."

Thus the PTO has now provided a third explanation of why Biggers teaches the input of trajectory commands from the neural network into the autopilot--one to which the applicant had no opportunity to respond or provide rebuttal evidence before the Board, although he has attempted to respond in his Reply Brief on this appeal. This third retooling of the PTO position, without additional development of the record, casts serious doubt upon the sufficiency of the support for any set of findings relating to the teachings of Biggers. Although the Solicitor argues that the court must defer to the PTO's latest position, the agency's contradictory findings of technological facts based on shifting perceptions of the prior art impeach the deference normally owed to administrative findings of fact. See Universal Camera Corp. v. NLRB, 340 U.S. 474, 496 (1951) ("evidence supporting a conclusion may be less substantial when an impartial, experienced examiner who has observed the witnesses and lived with the case has drawn conclusions different from the Board's than when he has reached the same conclusion").

Making it up at the eleventh hour was frowned upon (singing Tom Jones "Ain't No Sunshine"), even as the Solicitor warbled like Tom Jones "Even If I Knew."

Further, the PTO's new explanation cannot of itself provide substantial evidence for the Board's findings, for our review is constrained by the facts that were developed during the Board proceeding. While the PTO Solicitor's argument is new as to what portion of Biggers provides support for the Board's findings, we have occasionally permitted the Solicitor to support the Board, on appeal to the court, by reference to additional portions of the references of record, provided that the applicant has had a fair opportunity to respond. See In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986); see also In re Wesslau, 353 F.2d 238, 241 (CCPA 1965) (prior art reference should be considered in its entirety for what it fairly suggests to one skilled in the art). Nonetheless, the reviewing court must review the decision of the Board on the basis of the Board's findings, rather than on "post hoc rationalizations for agency action." In re Hounsfield, 699 F.2d 1320, 1324 (Fed. Cir. 1983) (quoting Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 168 (1962)).

Still, the CAFC cut the PTO slack, because, between government agencies, as Tom Jones crooned, "Without Love There Is Nothing."

We conclude, on the evidence and arguments presented, that the Board did not persuasively explain how a person of ordinary skill in the art would conclude that Biggers taught that the trajectory commands produced by the neural network are to be input into a separate autopilot function. The PTO's shifting positions do not assist in appellate review. See In re Thrift, 298 F.3d 1357, 1366 (Fed. Cir. 2002) (citing SEC v. Chenery Corp., 332 U.S. 194, 196 (1947)) ("a reviewing court, in dealing with a determination or judgment which an administrative agency alone is authorized to make, must judge the propriety of such action solely by the grounds invoked by the agency"). However, we are not prepared to hold that all three of the PTO's conflicting interpretations of Biggers and other teachings with respect to autopilot functionality are incorrect. We remand for further development of the record, and full reconsideration by the agency.

Vaidyanathan, singing Tom Jones "Looking Out My Window," argued that the rejections lacked the perspective of one of skill in the art.

The applicant next argues that the Board erred as a matter of law by failing to make any findings at all as to some aspects of the obviousness analysis. He stresses that the Board did not establish the level of ordinary skill in the field of the invention, a necessary Graham factor. He acknowledges that "the absence of specific findings on the level of skill in the art does not give rise to reversible error 'where the prior art itself reflects an appropriate level and a need for testimony is not shown,'" Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (quoting Litton Industrial Prods., Inc. v. Solid State Systems Corp., 775 F.2d 158, 163 (Fed Cir. 1985)), but he complains that the Board made repeated reference to what a "person of ordinary skill" would have understood or inferred, without ever explaining that level of ordinary skill or citing evidence to support these findings. As this court has observed, "Skill in the art does not act as a bridge over gaps in the substantive presentation of an obviousness case, but instead supplies an important guarantee of objectivity in the process." Id.

The PTO responds that the Board is not required to make express findings as to the level of ordinary skill in the field of the invention. The PTO states that reversal on this basis is appropriate only when the Board's failure to make an express finding on this factor reasonably may have distorted the ultimate conclusion on obviousness. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 963 (Fed. Cir. 1986) (vacating obviousness holding and remanding because the district court's failure to make specific findings on the level of ordinary skill, along with failure to address other Graham factors, suggested that the court had not properly applied the Graham analysis). The PTO argues that the applicant "has not attempted to show how the lack of an express finding influenced the Board's conclusion on obviousness, or that the prior art in the record is inadequate to demonstrate the appropriate level of skill." PTO Brief at 28.

The applicant replies that his argument is not simply that the Board failed to make express findings as to the level of skill; he states that the issue is uniquely relevant because the examiner's statements apparently reflect personal experience in the field of the invention, but are unaccompanied by explanation or reasoning. He states that the Board, like the examiner, made conclusory statements that it would have been obvious to a person of ordinary skill to select and combine certain parts of certain references.... The applicant argues that to support this conclusion it is necessary to explain how the knowledge and competence of the ordinary skilled person in this field would have led to this combination of previously uncombined elements.

We agree with the Solicitor that an explicit statement of the level of ordinary skill is not always necessary in evaluating the obviousness of a new technologic advance. But whether or not stated explicitly, the perspective of a person of ordinary skill must frame the obviousness inquiry, and assertions of what such a person of ordinary skill would have found to be obvious require sufficient explanation to permit meaningful appellate review. In this case, not only the Board but also the examiner announced their conclusions of obviousness without providing any evidentiary support or reasoning for why a person of ordinary skill in the field of the invention would have deemed it obvious to select and combine various steps from different references, in the manner of the applicant. This court explained in In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001), that the entry of the PTO into the deferential review of the Administrative Procedure Act requires the agency to provide support for its findings:

With respect to core factual findings in a determination of patentability, . . . the Board cannot simply reach conclusions based on its own understanding or experience -- or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings. To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise.

Id. at 1386.

The PTO Solicitor argues that the Court in KSR held that a combination of elements from different prior art references is likely to be unpatentable if it would involve nothing more than "the predictable use of prior art elements according to their established functions," KSR, 550 U.S. at 417, and that the Board applied this reasoning to the combination of Biggers and Johnson. KSR also clarified that recourse to "common sense," viewed through the perspective of a person of ordinary skill, is not barred in the obviousness inquiry. As the applicant states, while KSR relaxed some of the formalism of earlier decisions requiring a "teaching, suggestion, or motivation" to combine prior art references, it did not remove the need to anchor the analysis in explanation of how a person of ordinary skill would select and apply the teachings of the references. See, e.g., id. at 417 ("If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.").

The applicant complains that the Board simply reasoned from the hindsight knowledge of his successful invention; he stresses that, unlike the facts in KSR, the various steps that he combined were not known to be combinable, and the result of increased precision in missile guidance to the target was not previously known or predictable.

Obviousness is determined as a matter of foresight, not hindsight. See id. at 421 (citing Graham, 383 U.S. at 36). KSR did not free the PTO's examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion. Generally, the examiner cites prior art references to demonstrate the state of knowledge. See 37 C.F.R. §1.104(c)(2) ("In rejecting claims for want of novelty or obviousness, the examiner must cite the best references at his or her command."); Manual of Patent Examining Procedure (MPEP) §706.02 (8th ed., rev. July 2008) ("Prior art rejections should ordinarily be confined strictly to the best available art. [citing exceptions] Such rejections should be backed up by the best other art rejections available."). If it is not possible for the examiner to provide this type of information, the examiner might choose instead to provide an affidavit detailing the examiner's own personal knowledge (as a person approximating one of ordinary skill in the art) of the technology in question. See 37 C.F.R. §1.104(d)(2) ("When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons."). Where, as here, prior art references are cited to support an obviousness rejection, the references themselves need not in every case provide a "specific hint or suggestion" of the alteration needed to arrive at the claimed invention; the examiner's analysis "may include recourse to logic, judgment, and common sense available to a person of ordinary skill that do not necessarily require explication in any reference or expert opinion." Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). In these cases the examiner should at least explain the logic or common sense that leads the examiner to believe the claim would have been obvious. Anything less than this results in a record that is insulated from meaningful appellate review. Zurko, 258 F.3d at 1386. If the examiner is able to render a claim obvious simply by saying it is so, neither the Board nor this court is capable of reviewing that determination. See KSR, 550 U.S. at 418, citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.").

Because there is insufficient elaboration of the examiner's or the Board's reasoning in this record, we vacate the Board's rejection of claims 1-7. We remand for redetermination of the question of obviousness. On remand, the PTO should determine obviousness based on evidence of record or on the examiner's detailed and articulated reasoning. If there is neither record evidence nor detailed examiner reasoning, the Board should not conclude that Vaidyanathan's claims are obvious.

Claims 8-9 stood out, and were argued separately. Claim 9 was representative.

The applicant argues that claim 9, when properly construed in light of the specification, requires actual participation by the neural network until the point of intercept, unlike the Biggers method.

The PTO Solicitor responds that the broadest reasonable claim interpretation that is supported by the specification is adopted during examination, for the claims can readily be amended during examination, to impart precision if needed. We agree with this protocol as an examination expedient, for its purpose is to aid in sharpening the claims in order to avoid ambiguity or uncertainty in the issued patent. See e.g., In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009); In re Buszard, 504 F.3d 1364, 1366-67 (Fed. Cir. 2007); In re Prater, 415 F.2d 1393, 1396 (CCPA 1969). However, the PTO's "broadest" interpretation must be reasonable, and must be in conformity with the invention as described in the specification.

The Board's interpretation of claim 9 finds no support in the '203 specification, and is not a reasonable interpretation under the rules of claim construction.

And so, singing like Tom Jones "Do What You Gotta Do," rejection of all claims was vacated, and examination remanded.

With regret, the Solicitor sang, like Tom Jones, "Mama Told Me Not To Come."

Ruling penned by Judge Newman, joined by Chief Judge Michel and Judge DYK (somewhat like "Me and Ms. Jones", which was not sung by Tom Jones).

Nonprecedential ruling, because this repetitious pattern of PTO culpability and corruption is old news; but with some lovely case law quotes.

Nonprecedential cases issued since January 2007 may be cited under Federal Circuit Rule 32.1. The nonprecedential status as such should be noted.

Posted by Patent Hawk at May 19, 2010 4:18 PM | Prior Art

Comments

"Nonprecedential cases issued since January 2007 may be cited under Federal Circuit Rule 32.1. The nonprecedential status as such should be noted."

Cite me, baby!

Posted by: Pedantic Pete at May 20, 2010 3:20 AM

I don't remember the last time I actually received "articulated reasoning" with an obviousness rejection. I only get "common sense" and "predictable results" conclusory statements.

Posted by: John M. DeBoer at May 20, 2010 4:49 AM

Thanks, Hawk. My glasses fog up and I get a lump in my throat when I read these butt-kicking Newman opinions. The applicant's lawyers did a superb job and were not to be brow-beaten by the examiner or BPAI.

I would have argued this as a failure to make a prima facie case for obviousness because the examiner failed to set forth how each step and limitation are met by the art. That is precisely what was argued and what won the appeal, but I can find no reference to "prima facie." I wonder if it's becoming an outdated term.

As always winning a prima facie argument only gets you a remand and the examiner another bite of both your client's ass and the apple.

Also -- and I wonder if Max is around or out exchanging his Euros for USD -- Newman briefly touches on but does not resolve the claiming a result or outcome issue w/ respect to Claim 9. In EPO they will dip your genitals in hot oil for claiming anything that sounds anything remotely like a result.

The Board's argument -- one of about 50 -- was not that claiming a result is not allowed, but that the prior art disclosed the same result -- striking a target.

I don't really know whether a US claim that claims a result is invalid for that reason alone.

Posted by: Babel Boy at May 20, 2010 9:05 AM

"The patent Board reversed examiner rejection on claims 10-11, allowing the two claims."

The director just told you guys the other day that the board does not allow claims.

Posted by: 6000 at May 20, 2010 9:56 AM

This case is full of pithy quotable stuff by Newman for responding 102/103 rejections by Examiners which unsupported by reasoning, facts, or evidence or all three. Kudos to Judge Newman!

Posted by: EG at May 20, 2010 10:56 AM

"The director just told you guys the other day that the board does not allow claims."

Must have missed that memo - can you post a link?

Posted by: Pedantic Pete at May 20, 2010 1:23 PM

Yes I can.

http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd09006013.pdf

Our decision is limited to the finding before us for review. The Board
does not “allow” claims of an application and cannot direct an examiner to
pass an application to issuance. Rather, the Board’s primary role is to
review adverse decisions of examiners including the findings and
conclusions made by the examiner. See 37 C.F.R. § 41.50(a)(1) (“The
Board, in its decision, may affirm or reverse the decision of the examiner in
whole or in part on the grounds and on the claims specified by the
examiner”).2

Posted by: 6000 at May 20, 2010 5:22 PM

Thanks 6000 - precedential and with Kappos on the board.

Not sure if any of the lawyer-folk out there cam explain how is a quasi-judicial board can have the power to make anything precedential though...

Posted by: Pedantic Pete at May 20, 2010 6:31 PM

"Not sure if any of the lawyer-folk out there cam explain how is a quasi-judicial board can have the power to make anything precedential though..."

A lawlyer folk can explain to you that only the Director allows applications (or a proxy for him authorized by him) and how if he doesn't designate the board as a proxy then they aren't one.

Or you can just read 153.

Posted by: 6000 at May 20, 2010 6:41 PM

Thanks again 6000,

But that was not my question.

I am interested in the quasi-judicial nature of an executive branch aparatik cross-powering into the judicial branch and the use (misuse?) of the precedential nature of a court ruling to make a de facto rule outside the bounds of executive branch rule making.

Specifically, I am not asking you as you are an examiner and I am looking for input from someone that is trained in real law (no offense meant).

Posted by: Pedantic Pete at May 21, 2010 5:49 AM

This case should be made precedential because of its extremely signifcant importance to patent prosecution. Frankly, I can’t recall any other case that has so much to offer on why rejections by the PTO must have “rational reasoning” and be factually supported. In other words, no conjecture, speculation, conclusory statements, and similar rhetorical nonsense.

Posted by: EG at May 21, 2010 10:13 AM

"I am interested in the quasi-judicial nature of an executive branch aparatik cross-powering into the judicial branch and the use (misuse?) of the precedential nature of a court ruling to make a de facto rule outside the bounds of executive branch rule making.

Specifically, I am not asking you as you are an examiner and I am looking for input from someone that is trained in real law (no offense meant).
"

What you don't seem to understand is that the decision will not "make a de facto rule outside the bounds of executive branch rule making or executive branch anything, period" nor does it have such an ability. You don't need a lawlyer to know that. Which is what I was trying to explain to you, but apparently didn't get fully across. All you need to do is read the statute.

Posted by: 6000 at May 21, 2010 10:57 AM

6000,

You can ignore In re Vaidyanathan at your peril. Be prepared for us patent prosecutors to cite it repeatedly in responding to 102/103 rejections which we feel aren't supported by evidence, facts, logic, and/or any sort of "rational reasoning." And don't expect to find help from your "buddies" up stairs after Newman "trounced and toasted" the Board in this case.

Posted by: EG at May 21, 2010 12:22 PM

"You can ignore In re Vaidyanathan at your peril. Be prepared for us patent prosecutors to cite it repeatedly in responding to 102/103 rejections which we feel aren't supported by evidence, facts, logic, and/or any sort of "rational reasoning." And don't expect to find help from your "buddies" up stairs after Newman "trounced and toasted" the Board in this case."

HAHAHAAHHAHAHAHAHAHAHAHHAHAHAHAHAHAHHA, I ignore and will ignore just about everything Newman says, has said, or ever will say, save when it jives with what her intellectual superiors on the court have to say. Ever since her little stint in "you can import a method" land, I have trouble not laughing periodically while reading anything she writes. Let's not even discuss her blatant limitation importation smuggling ring she operates on the side. Either way, Newman didn't say anything special in this case. It's non-p for a reason. There was nothing new said, save for some blabbering on and on about how bad a job the PTO did in one of it's hundreds of thousands of cases. Cry me a river.

And just btw, the PTO doing a bad job on one app isn't going to help your pathetic citations have any more weight bucko. Which is precisely why, to the best of my recollection, no attorney has ever persuaded me in a response with a citation to caselaw. The fact of the matter is, when my position is good then I'll stand, no matter your cites. When it's bad, I'll usually see it myself once I reread it myself, especially when I have the benefit of them making some kind of actual on-topic comments in the response.

But I'm curious, what made you think I was going to ignore In re Vaidyanathan? What gave it away? I didn't mention it up thread.

P.S. I'll be sure to rub defeat especially hard in the faces of anyone who cites any of this malice-laden drivel she spewed in this non-p case to me. Especially if they play the "I'm so stu pid I can't understand the rejection" card when the rejection was simple and straight-forward. Cite any of this smartie-pants nonsense at YOUR own peril sir. Or pony up your 10 grand, and then get a little bit better worded rejection when you "win" on appeal. Keep on fighting that Pyrrhic War.

P.P.S. I haven't had time to look through this decision myself, but dollars to pennies the reference is actually fine and Newman was just blowing up a dust storm because she thinks everyone should be so eloquent and rational every day of the year as she is once or twice a decade.

Newman. L. O. L.

Posted by: 6000 at May 21, 2010 1:05 PM

6000,

The quote "The Board
does not “allow” claims of an application and cannot direct an examiner to pass an application to issuance.
" is not part of the rule.

If this is now a rule per the Board's decision (and this appears to be the thrust of your statement), then the the Board had made a new rule. Or perhaps you can provide a pincite to this rule, or point to the place in the statute where I can read this?

If you cannot provide the place where I can read this (it is not in 41.50), then please let a real lawyer answer.

Is that really so difficult?

Posted by: Pedantic Pete at May 21, 2010 1:30 PM

"I haven't had time to look through this decision myself"

6000,

About on par with Holder and Napolitano not reading the Arizona immigration law before testifying on it to Congress. It helps to read about the subject before you comment on it. Otherwise, the "last laugh" may be on you.

Your attitude is also typical of other examiners I've come across who cite the equivalent of a "headnote" from a case and never bother to read the facts. Not a good practice to fall into. You may wind up teh embarrassed circumstance of finding out the facts in the case support the patent attorney/agent position, not yours. And remember, "ignorance of the law is no excuse."

And like my patent attorney dad, never make a fight like this one personal with me. Newman is the one judge on the Federal Circuit who understands the case law, statutes, and technology better than any of the others. That you feel the need to hurl such verbal vitriol at this distinguished judge just tells how pathetic your thinking skills are. Go pound salt. Over and out.

Posted by: EG at May 21, 2010 6:26 PM

"is not part of the rule. "

Part of what rule?

"If this is now a rule per the Board's decision"

It is not now, has never been, and never will be a "rule". What the director stated was a REMINDER that the board doesn't allow apps. They never have and very likely never will.

You keep thinking in terms of "rules", there is no "rule" stating that they cannot allow an app, but there is also no "rule" that states that they can allow an app, and they haven't been empowered by the director to do such either. They therefore lack the authority to allow an app. You are therefore asking me to show you a rule stating that they lack the authority, but this is in essence you asking me to prove a negative as it were.

If that is too hard for you to understand, by all means, try to get a lawlyer to break it down for you more simply.

"It helps to read about the subject before you comment on it. "

Perhaps I should have been more clear. I haven't had time to look through it with a fine tooth comb and find all of Newman's errors. I did peruse it.

"You may wind up teh embarrassed circumstance of finding out the facts in the case support the patent attorney/agent position, not yours. And remember, "ignorance of the law is no excuse.""

I might would save for the fact that any case that I cite in my actions nowadays I've read at least 3 times.

"Newman is the one judge on the Federal Circuit who understands the case law, statutes, and technology better than any of the others. "

Oh stop it already, your nose is entirely too brown. I have yet to see her grasp any caselaw or statute "better" than any of her superiors on the court. Not even once. All she has is a jaundiced always pro-patent viewpoint that you really

And as to her alleged "understanding" of technology, the misstatement in Alappat speaks for itself. Programming a gen purpose computer makes a "new machine" lololololololol. Newman, please. Only a person living in abstracto "you can import a method" land could say such nonsense with a straight face. She may be good at chem, but computers have confused her. Badly.

"feel the need to hurl such verbal vitriol"

If she'll stop fin up the caselawl, fix what she alread fed, and shut down her importation limitation smuggling ring then I'll be more than happy to take it all back.

Also, if she were to try her hand at stand up comedy rather than srs business like lawl then I'd be more than happy to take it all back as well.

Posted by: 6000 at May 22, 2010 9:23 AM

6000,

We obviously don't see eye to eye on this subject and never will, so let's just "agree to disagree" and move on. And go pound salt.

Posted by: EG at May 22, 2010 9:41 AM

For instance, one rather easy to comb out problem with Newman is where she does things like construe words like "strike" to mean "intercept". WTF? The applicant themselves didn't even argue that nonsense.

Even accepting her nonsensical "strike" really means "intercept", which I'm sure the PTO has no problem doing because it doesn't change their position, as they were bringing up another issue. The issue that the PTO was bringing up was, unbeknowst to Newman, because she is patent claim construction challenged, that the word "target" is so open to allow for a construction where the target is merely a target during flight rather than, for instance, a tank or other "object" target at the end of flight.

And this is a problem, because she so grossly misses the actual issue that was presented before her and then the case is remanded with the EXACT SAME ISSUE STILL IN PLAY because she never bothered to address it.

Thankfully I take care of issues like these by making a 112 2nd when words get even a hint of these gobbledygook meanings. Furthermore, when applicant argues that the claim says something I don't think it does, or I should say, that it blantantly doesn't, I give them another 112 2nd citing their response as evidence that they have not claimed that which they regard as their invention. I have yet to see anyone argue against a rejection made in this manner. And I can't wait to see them try it.

Maybe Newman will be there to import them some limitations. But then again, maybe she won't.

Posted by: 6000 at May 22, 2010 9:54 AM

"They never have and very likely never will.

You keep thinking in terms of "rules", there is no "rule" stating that they cannot allow an app, but there is also no "rule" that states that they can allow an app, and they haven't been empowered by the director to do such either."


6000,

In at least in the area of interferences, the Board of Appeals has, by law, been given authority to make determinations of patentability. So you are wrong in your global nature of the comments you make. An while technically they are not the ones doing the "allowing", they can and do tell the examiner what to do - including to allow.

Much as my namesake indicates, your "it's not a rule" statement is meaningless. You can talk about either the reminder, or what is being reminded of, or both - they are "something" no?

What do you want to call the thing being reminded, if not a rule? The law? An order? An edict?

Any of these must flow with authority in order to be followed, as your post indicates, does it not? Then ask yourself if this is a substantive matter or not.

As I have said, I am looking for a real lawyer to answer this. I am looking for a legal basis for the hybrid monstrosity of quasi-judicial/executive branch wielding Board from some one with actual legal training. I know what you think is an "answer", and I am simply not interested in it. But thanks anyway.

Maybe EG will take a stab at it.

Posted by: Pedantic Pete at May 22, 2010 11:30 AM

"An while technically they are not the ones doing the "allowing", they can and do tell the examiner what to do - including to allow."

HAHAHAHAHAAHAHAAHAHAHA. Right.

I don't think you can read very well bucko.

Look Pete, sorry I couldn't help you understand this better.

"I am looking for a legal basis for the hybrid monstrosity of quasi-judicial/executive branch wielding Board from some one with actual legal training. "

If all you want is the basis for the existence of the board you can read the statutes, I've forgotten where it is provided for, although I saw it not long ago.

"I know what you think is an "answer", "

Actually you don't, because you're still not getting it. But that's ok. Gl trying to find a lawlyer that will explain it to you, again.

Posted by: 6000 at May 24, 2010 10:01 AM

Posted by: 6000 at May 24, 2010 10:05 AM

6000,

You have added nothing of value. I doubt you even understand the question of legality when it comes to a quasi-judicial/executive branch aparatik.

Not to be too blunt, but "Actually you don't, because you're still not getting it." is actually quite funny, because it is you that doesn't get it.

You keep giving me an answer that is not an answer to my question. "If all you want is the basis for the existence of the board..." is clearly not all I want.

Will some proper legal mind supply an answer so that this 6000 realize his error?

Posted by: Pedantic Pete at May 24, 2010 10:45 AM

"You have added nothing of value."

That's because there is nothing of value to add to your nonsensical question/request for explanation.

Maybe if you phrase your request in the form of a proper question then someone will answer you. I'm outta hea.

Posted by: 6000 at May 24, 2010 10:55 AM

If for no other reason than to shut up 6000, I will offer the following link:

http://docs.law.gwu.edu/stdg/gwlr/issues/pdf/Duffy-77-4.pdf

Now 6000, you have potentially biased my follow up questions to the legal minds out there.

What kind of examiner are you that you couldn't find this type of stuff? You are a disgrace to our profession.

Posted by: Pedantic Pete at May 24, 2010 11:03 AM

I read the Duffy paper like a year ago, I couldn't "find" it only because you didn't "ask" for it tardface. Don't address me any longer on this subject since you're obviously too stu pid to be able to ask a simple question and get an answer. And don't knock me for supposedly "not being able to find" a paper that I already knew about, that just happens to tell you the exact same things as I did. Although, I note again, that you apparently did not understand it when I told you.

Go ahead, ask your "follow-up" questions as you please. Don't let little ol' me stand in your way of being too st upid to be able to ask a question in the first instance. Also don't be surprised when no lawlyer bothers to answer your nonsensical drivel. You were lucky I stooped to your uninformed lower level to try to help you in the first instance.

Posted by: 6000 at May 24, 2010 12:05 PM

"Don't address me any longer"

Crap 6000, I keep on trying not to address you and you keep throwing in your stu pidity. Are you really that much of an A__hole?

Posted by: Pedantic Pete at May 24, 2010 1:46 PM

"Crap 6000, I keep on trying not to address you and you keep throwing in your stu pidity. Are you really that much of an A__hole?"

My stupi dity? LOLOLOLOLOLOLOLOL. You keep trying to beg something out of people that aren't going to help your dumarse.

I won't help you any longer. Bye.

Posted by: 6000 at May 24, 2010 2:23 PM

"I won't help you any longer"

You were never a help to begin with, DF.

Now that 6 is finally gone, are there any smart lawyers out there who want to open a discussion on the merits of the BPAI's F'd up judicial/executive standing?

Posted by: Pedantic Pete at May 24, 2010 6:50 PM

Pedantic,

I'll take a stab at answering your question once I understand exactly what you're asking for. Sorry, the "6000 static" has interferred. (BTW, I'm a patent attorney with almost 33 years of experience in case you're interested in my bona fides.)

Posted by: EG at May 25, 2010 4:04 AM

EG,

I have noticed your bonafides at other IP blogs (predominantly at IPWatchdog), and respect your opinion, although I may not always agree with you. I will even not hold being a patent attorney against you, as you obviously know something, given your direction to 6000 to pound salt.

The article by Prof. Duffy was to be a secondary follow-up, but since it is now out there, feel free to review it as it may help set the stage for a more full explanation.

A tenant to keep in mind is that examiners are represented by a union, but that representation does not mean that the examiners have a champion that represents the many possible viewpoints of examiners. As unions go, union representatives tend to represent themselves first, and then the rank and file. I’m not grousing about that – that’s the way of the world. What that means though is that the rank and file and Office management can sometimes (often?) have different viewpoints on things.

I am looking for a different perspective, a lawyer’s perspective on the power/authority of the BPAI. You may guess from my name that I can be a stickler for the letter of the law, but that is not to say that I cannot appreciate the spirit of the law. I will also share that I am also in law school, and know enough to know that I don’t know everything (and know enough to know that 6000 knows very little).

Given your length of experience you may even recall when the “BPAI” was not made up of administrative judges, but were called chief examiners. Prof. Duffy’s article doesn’t address this, so it may be a moot point.


What 6000 did do was present Ex Parte Frye, point out that the decision was “precedential”, and specifically point out the quote of:

The Board does not ‘allow’ claims of an application and cannot direct an examiner to
pass an application to issuance. Rather, the Board’s primary role is to review adverse decisions of examiners including the findings and
conclusions made by the examiner.


This quote cannot be found to have any direct basis in law or rule.


Now mind you, this quote also appears to conflict with the tale end of an actual rule, specifically Section 41.54 Action Following Decision, which states:

After decision by the Board, the proceeding will be returned to the examiner, subject to appellant’s right of appeal or other review, for such further action by appellant or by the examiner, as the condition of the proceeding may require, TO CARRY INTO EFFECT THE DECISION.” (emphasis added).

Prof. Duffy makes a strong point that such decisions theoretically can override even the Director’s wishes, although that in fact is not certain.

I had understood section 41.54 to mean that if a matter had arrived at the board after final rejection and the only matter to be resolved was the rejection at hand and that rejection was quashed – rejected without remand, then the claims at point in the application were allowed and that the only thing left for the examiner was to pass the application to issuance, per the decision of the Board.

I would suspect that such a written rule as 41.54 would have more force than “dicta”, even “dicta” in a precedential opinion, that seems to make up a rule (or call it what you will: You will notice that 6000 had no comment to the Rule/Edict/Order/Law pedanticism that I offered). that the Board cannot “allow” claims, much less direct an examiner to pass an application to issue.


Here’s the rub that I see given Duffy’s article. Since Kappos (at the moment – actually any Director) is himself a member of the Board, can nominate whomever he wants and chooses other members of any particular Board, and the Board nominatively has the force of law (in a judicial rather than legislative sense – e.g. the weight of a precedential opinion), there is nothing stopping the Director from abusing that power and influence to pass de facto rules outside the normal executive boundaries binding the Office. Keep in mind that the Board has the power to shape which cases appears before it by selectively choosing which cases can proceed and which cases can be kicked back. The power behind the scenes on both sides of the coin (the examination and the adjucation of that examination) both report back up to the same individual. With such a quasi-judicial and executive integration, there is a blatant lack of checks and balances. While Prof. Duffy’s article mainly looked at the legality of the appointment clause (a matter as he indicates is by no means settled just yet), I see potential legal pitfalls in the basic power set-up itself, which can work against either the examiner or the applicant.

So what exactly does a “precedential opinion” by the BPAI mean? Who exactly is bound by that precedent? Even if the only body bound is the BPAI itself, since this body has a substantive effect on an applicant’s right to a patent, this in spirit, if not in letter equates to substantive rule making – something the Office is not supposed to have.

Posted by: Pedantic Pete at May 25, 2010 11:36 AM

"I might would save for the fact that any case that I cite in my actions nowadays I've read at least 3 times."

But understood it 0 times.

Sigh.

Posted by: U R DUMM at May 26, 2010 3:24 AM

Love the cites to Zurko. I guess there's still nobody at the PTO that understands that precedent.

Posted by: pong at May 26, 2010 7:25 AM

Pedantic,

No problem in disagreeing, even my patent attorney brother and I don't always see eye-to-eye on legal issues. Let me take your question(s) under advisement and get back to you (it may be a few days as I've got other matters, including billable work, I need to attend to). Stay tuned, I'll get back to you in due course.

Posted by: EG at May 27, 2010 4:49 AM

Pedantic,

BTW, I forgot to mention that we can "disagree without being disagreeable." 6000 has yet to learn that lesson.

Posted by: EG at May 27, 2010 5:02 AM

Pedantic,

Having reviewed the current patent statutes and rules, the quote from Ex parte Frye is essentially correct in saying that the Board doesn't allow claims and can't specifically "order" the Examiner to pass the application to issuance. All that 37 CFR 41.77 (which governs actions that may be taken by the Board0 allows the Board to do is the following: (1) reverse (in whole or in part) the Examiner's decision/rejection; (2) affirm (in whole or in part) the Examiner's decision/rejection; and/or (3) make a new ground of rejection which the applicant gets an opportunity to respond to. Mind you, a "reversal" cannot be simply disregarded by the Examiner and may lead to an allowance/issuance of the claims/application appealed. But the Examiner is not restricted from making "new grounds of rejection" (just like the Board if the Examiner deems that proper.

What happens inside the USPTO regarding appeals to the Board and what actions the Board may take under 37 CFR 41.77 isn't unusual and is somewht similar to what happens when an appellate court (like the Federal Circuit) does in reversing, vacating, remanding, affirming (in whole or in part) a district court decision. But unlike the restricted actions the Board may take, an appellate court has a bit more latitude to instruct the district court to enter judgment in favor of one party or the other. Again, this is nothing unusual in American jurisprudence.

I can't point you to any precedent that says this (plus I don't have time now to get go looking for it), but this quote from Frye does make sense to me. I hope my explanation helps.

Posted by: EG at May 28, 2010 12:58 PM

EG,

Thanks - except there still seems a problem with "flow" whereas the BPAI is indeed a "last action" of the Office prior to the true judicial path. This is part of the undertones in the Duffy report that seems glossed over (as well as the rule I mentioned about only going back to the examiner in order to put into effect the Board's decision on those items that had no other open items to them. e.g. 37 CFR 41.54.

I will look forward to other comments from you on this as well as on the "precedential" issue.

Posted by: Pedantic Pete at May 28, 2010 3:12 PM

Pedantic,

What I provided is probably as far as I can go. Too much other stuff to deal with.

Posted by: EG at June 1, 2010 5:51 AM

Take your time EG - I can be as patient for thoughtful commentary as I am acidic towards non-thoughtful ruminations.

Posted by: Pedantic Pete at June 1, 2010 8:26 AM