The Board... reversed the examiner's rejection of claim 5, which included the further limitation that the well-charge-level controller include "a processor configured to control said first charge pump utilizing at least one of a proportional, integral, or derivative control," because "[t]he examiner has not sufficiently explained how [Kalnitsky's disclosure] amounts to proportional control, as that term is used in the control art."

Jung requested a rehearing, "asserting that the Board erred in failing to address whether the examiner had set forth a prima facie rejection." Denied. 

The Board rejected Jung's argument, noting that the prima facie case requirement is merely a procedural mechanism of allocating the burden at different stages of the prosecution, and that the ultimate disposition on anticipation was properly addressed by the Board's initial decision.

In Re Edward K.Y. Jung and Lowell L. Wood, Jr. (CAFC 2010-1019) precedential

Jung was on a crusade without a cause. Jung's first loose screw was that the examiner's rejection was procedurally deficient by failing to provide a reasoning for rejection. Never mind that the examiner had the goods.

If English as a second language was a violation for patent examiners, the examiner penalty box would be stuffed, and the backlog mountain would reach to the moon. The more ordinary case is that the examiner has lousy prior art that s/he can't explain. Now, that is vexation.

Jung frames this appeal much as he framed the appeal to the Board, as a challenge only to the existence of a prima facie case of invalidity, as distinct from the ultimate conclusion of invalidity. Jung admitted at oral argument that if this court finds that the examiner properly made out a prima facie case, then the decision of the Board should be affirmed. In other words, Jung does not challenge the substance of the prima facie rejection, but only the procedure.

As this court has repeatedly noted, "the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and Trademark Office ("PTO") satisfies its initial burden of production by "adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond." Hyatt, 492 F.3d at 1370. In other words, the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in "notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 35 U.S.C. § 132. That section "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).

Jung contends that establishing a prima facie case requires more than just notice under § 132, and that whatever else may be required is part of the examiner's burden in rejecting any claim. According to Jung, until that burden is met by the examiner, the rejection need not be challenged on the merits by the applicant. This court disagrees and sees no reason to impose a heightened burden on examiners beyond the notice requirement of § 132.

There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. "[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. As the statute itself instructs, the examiner must "notify the applicant," "stating the reasons for such rejection," "together with such information and references as may be useful in judging the propriety of continuing prosecution of his application." 35 U.S.C. § 132. Here, the examiner's discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.

Jung's other loose screw was the BPAI picking up on examiner slack.

Jung also argues that the Board's review was improper. After accusing the Board of improperly framing the issues before it as questions of claim construction and the reasonableness of the examiner's decision, Jung himself frames the issue as whether the "examiner failed to reasonably construe the claims and failed to adduce any evidence or syllogistic argument in support of Kalnitsky's alleged teachings, as opposed to Kalnitsky's bare disclosure." Br. of Jung, at 33-34. This court is at a loss to identify the distinction between these two framings of the issue. What a reference "teaches" is reflected in its "disclosure," and, as discussed above, the extent to which the examiner fails to provide "syllogistic argument" to fill the gaps between the prior art and the rejected claims is dependent upon a substantive showing that such gaps exist in the first place. Moreover, whether the examiner "reasonably construe[d] the claims"--which this court agrees is the true issue in this case--is without doubt a substantive issue, which the Board properly addressed in its opinion.

In no way do the Board's actions here put applicants in a position in which they are "required to speculate as to the full nature and scope of the rejection and put on a full substantive rebuttal even if the full nature and scope of the rejection remains unformed and unclear." Br. of Jung, at 38-39. Such concerns only arise where the examiner has failed to meet the notice requirement of § 132. Here, as discussed above, Jung was on notice of the full basis for the examiner's rejection.

It is well-established that the Board is free to affirm an examiner's rejection so long as "appellants have had a fair opportunity to react to the thrust of the rejection." In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). See also In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) ("In calculating the overlapping values, the Board found facts not found by the examiner regarding the differences between the prior art and the claimed invention, which in fairness required an opportunity for response.").

Affirmed.

To their great credit, the CAFC is generous in taking pro se appeals, which often amounts to airing the airheads out, as in this case.