Patent Prosecution Timing for Recently Issued Patents

I looked at the filing and issued dates of 15,000 utility patents issued in April and May of 2008 and created a statistic "Months in Prosecution." To create a histogram, I rounded up to the nearest whole month to plot the chart. The median time in prosecution is 39.5 months while the average is 41.8 months. This graph lumps together all the utility patents – A serious consideration of this data needs to separate out at least two major factors in the applicant's control that have a large impact the time in prosecution: (1) Is the application a continuation application or a new "original" application? As a general matter, continuation applications issue much more rapidly do than original applications. (2) What is the area of technology of the invention? The PTO examiner corps is divided by area of technology. Some have a large backlog of cases waiting prosecution while others have very few.

212 thoughts on “Patent Prosecution Timing for Recently Issued Patents

  1. O, pds took care of that did he? Seems his arguments were on their last leg. But I figured I’d drop you this pds, we see from here:

    link to ftc.gov

    Footnote 1 is where my investigation will lead further, if I can obtain this vol. Even if I cannot, the footnote itself is quite telling, as the observation is made that administrative agencies operating under the APA enjoy broader discretion to take notice of contested material facts than do courts operating under the FRE.

    Hmm, perhaps those are the rules of evidence you’re refering to JD? Federal rules of Evidence? These?

    link to law.cornell.edu

    The rules that administrative agencies operating under APA specifically enjoy broader discretion as to what constitutes evidence than? You mean the ones specifically more restrictive than the ones that the PTO is to operate and be reviewed under?

    Surely you remember

    http://www.law.cornell.edu/uscode/5/usc_sec_05_00000556—-000-.html

    part d sentence 2.

    J e s u s C h r i s t, just spell out where you’re getting your evidenciary rules from. 28 USC? I sure as heck don’t see any rules of evidence in laws under 35 USC.

    Sure doesn’t seem to be here under 115 117 or 119.

    link to access.gpo.gov

    I can hardly believe that there are this many attorneys mouthing off about standards or rules of evidence and/or what a “fact or “evidence” is that wont even show and tell the parts they feel are relevant portions of the law by now. Seriously, if you want to teach examiners something about evidence JD prepare your lesson plan. Post it. Post it again as the first post under one of d’s topics and you’ll have lurking examiners everywhere exposed. Instead of teaching a class of 20, you may just reach 100 or more. Stop thinking you need mgmts permission to teach examiners. Go ahead, you have a whole generation of examiners coming up that will be googling “official notice” “Obviousness” and etc. Get yourself up there at no. 1 and start watching the examiners change by themselves.

    But watch it, say something ridiculous and we may have to call you on it.

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  2. “Serious and deeply practical question from that last commentator, for which I for one in Europe am grateful. The lawyer’s cry “prove it” should not be allowed to frustrate the objective of a patent system that meets the needs of the US public. BTW, never really understood the unique advantage the USA gets from having drafting and prosecuting done by attorneys at law. In ROW, patent practitioners struggle to pass the tough qualifying exams of a profession in its own right, and thereafter take pride in top professional standards, in a profession of their very own, in which we argue on Monday for allowance and, on Tuesday, in another case before the same tribunal, for revocation of the claim we say is invalid.”

    In the US, you don’t need to be an attorney to be licensed to practice before the USPTO. You just need to meet certain educational standards, pass the registration exam, and pass a background check.

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  3. JohnG,

    Before PTO (mis)management tries to teach the examiners evidence, the first thing they need to do, as I mentioned upstream a little bit, is explain to the examiners that they are not PHOSITA.

    There’s no training, no classes, they can offer (force the examiners to attend?) that is going to be of any value until they drill that into the collective head of the corps.

    Wouldn’t hurt if there were some courses taught by outside practitioners. A group I belong to (I think you belong(ed) too) offered to have practitioners come in and teach the examiners and PTO (mis)management refused. They have no interest in any message other than “quality = reject, reject, reject” getting through.

    RQ, it’s not really that telling. PTO (mis)management has been telling the examiners for the past 4 years or so that 1) the law doesn’t matter and the PTO is not bound to obey the law; and 2) quality = reject, reject, reject. Given those two messages, 6k’s “approach” is entirely understandable. When in doubt, just make up some nonsense and send it out. Maybe you’ll get some RCE counts out of it.

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  4. I remember the PTO used to have a course in evidence available to the examiners, but it was never required. Maybe that is one of the things that should change.

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  5. e6k said: “if I say a fact which is true for the record as the examiner, it is substantial evidence if a reasonble person would believe it to be a fact”

    That is a pretty telling statement from an examiner.

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  6. I should not speak so glibly. There were plenty of people back then who thought exterminating the Indians was a bad idea. They may not have objected to stealing their land, but there is a difference between conquering and a belief that the only good injun was a dead injun.

    I can forgive manifest destiny and slavery, but I have a hard time forgiving active proponents of genocide.

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  7. 6k,

    How are those Ivy league law school applications coming? You better get them in soon. Your brain is starting to shrivel. If you don’t get out soon, it will soon be as small as some of the mid-level (mis)management stooges who post nonsense.

    Examiner arguments as to what constitutes the scope and content of the prior art are no more substantial evidence than an attorney’s argument as to what does not constitute the scope and content of the prior art. Both are arguments, not evidence. pds went over this with you. I’ll defer to his excellent explanations.

    “Thus we have that the official notice must have been a fact of record or it could not be subject to supporting evidence.”

    You clearly don’t understand the difference between evidence and facts. They’ll cover that when you get to Harvard.

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  8. If I assert *a fact* for the record then it is a fact of record.

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  9. “knowledge and intelligence IP people”

    How can you be percieved as being pompous when you write that?

    JD has rejoined the fight with renewed vigor no doubt due to the weekend passing. It seems he has joined the camp that believes that somehow, incredulously, facts, whether they be known to be true by the applicant at hand or not, that have been added to the record magically are not facts of record. Guess what? If I assert for the record then it is a fact of record. Heck, if I even mistakenly assert a fact which I believe to be an undeniable fact, but then evidence is presented the contrary, which I then find better evidence in support of then I had made the fact of record in the first action, thus why I am able to make my final final. Even, even I say, in the event that I assert something that seems true to me (and is in fact true) when I write it, which then later is shown to perhaps not be true (maybe due to argument), and the case issues, then the fact has still been made of record.

    In the end it boils down to if I say a fact which is true for the record as the examiner, it is substantial evidence if a reasonble person would believe it to be a fact, and what I say is for dam sure “of record”, and any true facts are “facts of record”. Perhaps you missed the part in the Zurko that was before the SC Zurko where the examiner’s official notice was taken as a fact of record? Heck, perhaps you missed the whole of Zurko? If you choose to not refute it (which is different than not conceding it), are then finaled, and you then choose to appeal to BPAI then their hands are free to further substantiate the fact asserted with supporting evidence. This is because the rejection they are maintaining is based on sustantial evidence provided by the examiner, that is now further supported. Or the BPAI can merely affirm if it feels the official notice is already supported enough, and have the CAFC decide the issue where the office’s representatives hands are then untied to present evidence to support the fact noticed without having to make a “new grounds of rejecton”. You notice, that was what the later Zurko was about, the tieing of the office’s (read commissioner) and BPAI’s hands to make a new grounds of rejection, or add completely new evidence during the appeal process that results in new evidence being relied on as the basis of the rejection instead of any substantial evidence already in the record being relied on. As you well know, finding and applying support for an officially noticed fact does not constitute a new grounds of rejection nor does it make the rejection based on anything but the evidence that was put forth already, it merely means the evidence that the rejection is based on is further supported. Thus we have that the official notice must have been a fact of record or it could not be subject to supporting evidence.

    I cannot believe that you would even bother to take such a position JD, it’s beneath you. What now, do I need to dredge up the history of what makes a fact “of record” to show the error of this outlandish belief? I can make anything I want “of record”, including but not limited to, my birth certificate, by college degree, what I had for dinner last night and what I daydreamed last week. And then what next, am I going to have to dig up the history of what a “fact” is? Surely you have better points to make than this, put them forward already and stop overworking the red herrings. You’ll have PETA looking for you soon if you don’t.

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  10. Dear Lionel,

    And George Washington had slaves.
    And women have only recently been given voting rights (the 19th Amendment in 1919).

    And look where America is today – a world leader in civil rights having spread democracy to 60% of the world, double in less than half a century.

    If we step back and consider human nature, one might consider that to be blistering progress –

    But, a word of caution about complacency; unless we check International Big Business’ concerted effort to infect and control our government from inside each of the three branches, We the People will become mere grist for its global mill —

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  11. “Common sense tells you where the burden should lie then.”

    I think most agree that “official notice” is “official terminology” for “common sense.”

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  12. Andrew Jackson also supported genocide against American Indians

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  13. Some readers would do well to learn from you.

    I have to say, it’s been a long time since I heard “this one takes the biscuit.” I found it refreshing.

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  14. Dear Eurodisnae,

    Apology accepted, thank you. It takes a big man to apologize.
    I could never figure out why, but some people simply find it impossible to apologize.

    Old Hickory, Andrew Jackson, our 7th President, said:
    “Any man worth his salt will stick up for what he believes right, but it takes a slightly better man to acknowledge instantly and without reservation that he is in error.”

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  15. JAOI, sorry if I sounded “pompous”, but there are some “regulars” here at Pat-O who do seem to love arguing just for the sake of it, to the extent of re-stating each others’ positions in a way that is so blatantly selective and misrepresentative that if not purely mischevious must be pathological. A large part of the job of any patent professional is (or should be) to do with constructing rigorously logical technical arguments (and if that sounds pompous then I’m not sorry at all, because it’s a fact – official notice, whatever). That’s why the level of debate seen here too often is particularly annoying. I thought it was pretty clear that my remark wasn’t aimed at the general Pat-O community, but if not then I apologise.

    My statement “That is just so wrong-headed … that I have to do something about it, but I haven’t decided what yet” was not directed at anyone here – it referred to the fact that I felt a professional obligation to raise the EPO issue I was discussing through some official channel.

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  16. JAOI,

    Thanks. I’ve been in plenty of personal interviews with examiners where I’ve told them, in no uncertain terms, “You are not PHOSITA.” They all look at me like I have snakes crawling out of my eye sockets. The fact that none of them have ever been trained that their job is to determine PHOSITA, not just assume PHOSITA’s role, tells you all you need to know about PTO (mis)management’s “training” of its examiners.

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  17. Dear Eurodisnae,

    I haven’t been following this thread, but, while you may think, “this one takes the biscuit” – if you don’t mind my saying so, and I say so with all due respect, I think your further remark is a bit beyond the pale. You wrote:
    “How can any people with the knowledge and intelligence to even take an interest in this blog be capable of repeatedly missing a point? It doesn’t surprise me any more but it’s getting really tiresome.”

    Regarding your last remark:
    “That is just so wrong-headed … that I have to do something about it, but I haven’t decided what yet.”

    I’m sure we who have repeatedly been missing the point will all wait with bated breath for your next shoe to drop (õ¿0).

    * * * * *

    Dear John,

    Thank you for your comment.
    You managed to express your frustration, which is shared by knowledge and intelligence IP people, without being pompous, if you catch my drift.

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  18. “Official notice: examiner asserts something to be a well known fact. Such mere assertion doesn’t make it a fact of record.”

    A challenger appears … as always.

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  19. “Is that it? Am I missing something?”

    That’s it. And you’re not missing anything.

    It’s the mid-level (mis)management stooge from the PTO who is missing it. But as he doesn’t follow the PTO’s clearly incorrect policy anyway, it’s not a big deal.

    “That is just so wrong-headed (while also explaining a lot that had been bothering me about EPO examination recently) that I have to do something about it, but I haven’t decided what yet.”

    Substitute “USPTO examination” for “EPO examination” and you’ll have a pretty good idea of the nonsense we put up with every day. If I had a nickel for every OA that contains “analysis” to the tune of: “Well, I’m the examiner and I’m of ordinary skill in the art and I think it’s obvious” I’d be comfortably retired and would gladly delete my tiresome posts from this thread. But until there are renumerations to those of us who have to suffer such garbage on a daily basis, I’ll be here along with you.

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  20. Came into this thread late thinking “145 comments about prosecution timing? I wonder what that’s all about.” Well, you know, Pat-O threads are worse than soap operas – you get sucked in and just have to know what happens next. But this one takes the biscuit. How can any people with the knowledge and intelligence to even take an interest in this blog be capable of repeatedly missing a point? It doesn’t surprise me any more but it’s getting really tiresome.

    Official notice: examiner asserts something to be a well known fact. Such mere assertion doesn’t make it a fact of record. If applicant concedes it’s a fact, it becomes a fact of record. If applicant doesn’t concede it’s a fact, it doesn’t become a fact of record unless the examiner does *something* to substantiate it.

    Is that it? Am I missing something?

    If applicant refuses to concede that grass is often green, should some sanction be available, or is it not easier just to substantiate the fact? If a stated fact can’t easily be substantiated, is the applicant not right not to concede it?

    That whole Bigfoot/proving a negative riff is beside the point. The only time that’s likely to be an issue at the PTO is official notice to the effect of “claimed trans-dimensional hyperdrive does not exist and is not enabled by the disclosure”. Common sense tells you where the burden should lie then.

    “The examiner is not the PHOSITA” is a very good point, because I recently had a senior EPO examiner telling me that EPO examiners are so specialised that they actually are the PHOSITAs in their fields of specialism. That is just so wrong-headed (while also explaining a lot that had been bothering me about EPO examination recently) that I have to do something about it, but I haven’t decided what yet.

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  21. “You may think an examiner taking official notice is substantial evidence, but like I mentioned earlier, any competant (or even incompetant) litigator would reveal the flaws in the notion that an examiner’s opinion qualifies as substantial evidence.”

    Come come pds, I never said it wasn’t flawed. You hardly need a litigator to spell it out. It’s hugely flawed imho. Never the less we live in a flawed world and we need to do the best we can.

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  22. It was established, so far as I know, with the founding of the agency as many agencies seem to have this power, and they had it before the founding of the “PTO” as such. If you’d like a specific reference to at least its existence then you can look at the quotes from the APA above. I wouldn’t be half surprised if the APA itself mentions it being established. But, then again, iirc the article above discusses its creation and I don’t recall what specifically it was. So, I guess for its formal establishment you’ll have to tune in next week for “e6k does your hw for you”.

    You really should read through that article, it reads like a great history lesson for all. It touches on a wide variety of issues of potential interest to you pds. One I recall had to do with how gov. functions that were once definitely a privilege, to be revoked at the whim of an agency, became fancied as being more of a right. How I do wish he would have gone into that topic further. It seems that many of our topics of conversation are indeed older than the hills, I wish the history were more widely available and easily accessible. Perhaps you guys know of some truly excellent law history sources, even in old school library form around DC?

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  23. “No, the only problem is that you’re attempting to overrule a properly established administrative tool that was specifically implemented to allow the office to serve the public more efficiently and prevent it from achieving its goal. Even when it was properly utilized it seems.”

    Funny that … could you point to me where this “properly established administrative tool” is found in the CFR? Also, could you explain how this tool was “properly established”?

    You may think an examiner taking official notice is substantial evidence, but like I mentioned earlier, any competant (or even incompetant) litigator would reveal the flaws in the notion that an examiner’s opinion qualifies as substantial evidence. Granted some examiners might be able to survive a good cross-examination without looking like a fool. However, most won’t.

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  24. “Is the agency deemed to have “expertise” in all the technologies being examined? No.”

    Unfortunately, that’s a yes. But I agree that we fall far short of the mark in a huge number of instances. None the less, the gov is doing the best it can with what it is given. Iirc, the goal is to have a bunch of 15 yr+ examiners working in every AU and having been in that AU the whole time and to have them doing the majority of the work and looking over all the rest of the work. They’d have to try pretty hard to not be an expert in their field by that time. Believe it or not, even as is we at least try to have someone with the necessary expertise look over the app before allowance. As far as I’m aware, even primaries do this quite often if they know there is a good chance the app is outside their expertise. Remember, expertise is a big reason for applications being routed to the proper AU via transfers. Anyone can classify an application in anyone of the classes, but sending it to the right AU results in better examination. I can tell you this much, applications I go over are 95% of the time after all the transferring is done and it is my area of expertise. Also, you could put any primary from my unit on the stand as an expert any day of the week and I’m confident they’d do just fine.

    “Let’s look at this from another point of view … if the PTO were experts, as you imply, then all examiners would ever have to do is prepare an affidavit, say that all the claimed elements were anticipated/obvious, and we would be done with examination.”

    Remember, we’re not all experts, the office is fallible, but we try. Besides, we’re not “allowed” to view your case as an expert in that art would, especially in determining obviousness, and except in instances of wholly common knowledge instances. If we did that then we’d rofl our mao on nigh on every case (not that I don’t anyway). We have to view it as though we feel a POSHITA would. And, as you have rightly pointed out many times, we are Not POSHITA. Apparently even I, a recent grad, am far and away above a POSHITA in my art.

    “I don’t have to disprove it, I just have to disagree.”

    True, but best to explain that to the extent that it makes any sense beyond just being “I don’t agree”, or even “I don’t agree that’s instantly recognizable etc.”. That would be because, so far, all I’ve seen is law that states that substantial evidence must be something that a reasonable person would hold as a fact based on the “evidence” being presented to them. There may be a case talking about the instantly recognizable etc. being proper but that doesn’t preclude other instances of it being used being proper so far as I can tell.

    “As for “why I’m disagreeing,” all I would ever write is that “Applicant disagrees that the Examiner’s assertion of X is capable of instant and unquestionable demonstration as being well-known.”

    Heck, even that might suffice. But, then again, if you don’t say why you feel that way then it’s up to the examiner to decide what to do with you since that may or may not be kind of weak depending on the circumstance. And of course, if you said that, and the court deemed that you did not say that in good faith come litigation time … well, gl.

    “If the fact is capable of “instant and unquestionable demonstration as being well-known,” then that shouldn’t be the problem.”

    No, the only problem is that you’re attempting to overrule a properly established administrative tool that was specifically implemented to allow the office to serve the public more efficiently and prevent it from achieving its goal. Even when it was properly utilized it seems.

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  25. “I agree with most of what you say PDS, except that you must remember, the agency was established with the intent to create an agency with the expertise to treat the matters before it. That is, they were specifically created to be an expert institution. While attorneys may very well be experts, they are not entrusted with any sort of federal authority as the agency has been. Thus, the office’s word is specifically taken to be coming from an expert agency with authority. The attorney’s lack of authority is what kills his arguments being able to be substituted for factually supported objective evidence.”

    I don’t have a problem with much of what you say but you import the agency’s expertise into too much. Is the agency deemed to have expertise in searching and examination? The answer is yes and yes. Is the agency deemed to have “expertise” in all the technologies being examined? No. Some examiner’s have expertise in certain technologies, but as an institution, the PTO is far from experts in the technology. What we are talking about is being an expert in the technology.

    If I was to put the average examiner on the stand as an expert witness in a patent litigation trial, do you really think that the jury is going to believe that the examiner is an expert in the technology. I could imagine the field day that opposing counsel would have during cross. After opposing counsel got done, the average examiner would be reduced to a quivering mass of protoplasm.

    Let’s look at this from another point of view … if the PTO were experts, as you imply, then all examiners would ever have to do is prepare an affidavit, say that all the claimed elements were anticipated/obvious, and we would be done with examination.

    “I agree with this as well, except for the use of the word “object”. A more proper word would be refute. And, if my official notice is refuted I will withdraw it and find a ref.”
    Refuse or object … regardless or the term … I don’t have to disprove it, I just have to disagree. The fact that I’ve disagreed means that a prima facie case has not been made, and thus, the burden has not been shifted to applicant.

    “I agree with this, but they must say why they disagree. If they do, fine. To date, I have not had one app have the balls to even merely say they disagree with my official notice. I might even let them off with doing that. But they tip toe around it.”
    When you say “they must say why they disagree,” you are making the assumption that the burden has shifted to applicant to rebut. I’m saying that the burden has not been shifted, which means that no explanation from applicant is necessary. As for “why I’m disagreeing,” all I would ever write is that “Applicant disagrees that the Examiner’s assertion of X is capable of instant and unquestionable demonstration as being well-known.” I haven’t asserted that the fact isn’t true, I’ve just asserted that I don’t believe that the officially noticed fact is of such a character that it is capable of being officially noticed.

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  26. “The applicant can object to these pronouncements but is the burden then on the office to “prove” to the applicant that the office’s “official notice” is reasonable? To whose satisfaction?”

    Of course the burden is on the PTO to prove that the official notice is reasonable by producing evidence. Also, once the evidence is produced, there is no need for official notice. If the fact is capable of “instant and unquestionable demonstration as being well-known,” then that shouldn’t be the problem. It is to the applicant’s satisfaction … but once the evidence has been produced, it is evaluated like all the other evidence that has been presented.

    “e6k, I’m talking about the situation where the Office takes official notice that “bigfoot does not exist.” If the applicant says “prove it,” then what is the Office to do?”
    I see where you are taking this … saying that PTO has failed to produce evidence that “bigfoot does not exist” does not necessarily lead to the conclusion that “bigfoot does exist.”

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  27. “e6k, I’m talking about the situation where the Office takes official notice that “bigfoot does not exist.” If the applicant says “prove it,” then what is the Office to do?”

    If the applicant says “prove it” then the office would stick with the official notice being substantial evidence and move ahead. If the applicant said “I don’t think that a reasonable person would believe that, and here’s why…” then the office would at least have to find some news article stating bigfoot doesn’t exist.

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  28. Serious and deeply practical question from that last commentator, for which I for one in Europe am grateful. The lawyer’s cry “prove it” should not be allowed to frustrate the objective of a patent system that meets the needs of the US public. BTW, never really understood the unique advantage the USA gets from having drafting and prosecuting done by attorneys at law. In ROW, patent practitioners struggle to pass the tough qualifying exams of a profession in its own right, and thereafter take pride in top professional standards, in a profession of their very own, in which we argue on Monday for allowance and, on Tuesday, in another case before the same tribunal, for revocation of the claim we say is invalid. Over here, we would be embarrassed to come out with all this absurd “Prove it” stuff. Any answers?

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  29. e6k, I’m talking about the situation where the Office takes official notice that “bigfoot does not exist.” If the applicant says “prove it,” then what is the Office to do?

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  30. can the applicant simply demand that the examiner provide support for his official notice without saying anything more?

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  31. I agree with most of what you say PDS, except that you must remember, the agency was established with the intent to create an agency with the expertise to treat the matters before it. That is, they were specifically created to be an expert institution. While attorneys may very well be experts, they are not entrusted with any sort of federal authority as the agency has been. Thus, the office’s word is specifically taken to be coming from an expert agency with authority. The attorney’s lack of authority is what kills his arguments being able to be substituted for factually supported objective evidence.

    “Once applicant objects, however, the gig is up and the examiner has to rely upon factual evidence, not upon the examiner’s subjective belief as to what is a fact.”

    I agree with this as well, except for the use of the word “object”. A more proper word would be refute. And, if my official notice is refuted I will withdraw it and find a ref.

    “you, the examiner, have failed to establish a prima facie case because I disagree with your official notice.”

    I agree with this, but they must say why they disagree. If they do, fine. To date, I have not had one app have the balls to even merely say they disagree with my official notice. I might even let them off with doing that. But they tip toe around it.

    “What about the situations where the official notice relates to negative opinions that can’t be proven in the strict sense? e.g., “there are no such things as ghosts,” “bigfoot does not exist,” “third party prayer is not therapeutic” or “homeopathic dilutions are not active”?”

    The applicant can refute the official notice and assert a reasonable person would not necessarily believe such things. I would say a SPE should be sufficient to get the examiner to get a reference in any of those situations. Indeed, I would think nearly all examiners would get a ref anyway as the off notice was not properly taken in the first place.

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  32. “The examiner’s officially noticed fact becomes “substantial evidence” only AFTER applicant has not objected.”

    What about the situations where the official notice relates to negative opinions that can’t be proven in the strict sense? e.g., “there are no such things as ghosts,” “bigfoot does not exist,” “third party prayer is not therapeutic” or “homeopathic dilutions are not active”?

    The applicant can object to these pronouncements but is the burden then on the office to “prove” to the applicant that the office’s “official notice” is reasonable? To whose satisfaction?

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  33. A nice little riddle for 6K and MVS …

    If an examiner’s pronouncement as to facts (i.e., official notice) is (allegedly) substantial evidence, shouldn’t an attorney’s pronouncement as to facts should also be considered substantial evidence? Unlike an examiner, a patent attorney is subject to 37 CFR 10.85(4). This means that a patent attorney’s pronouncement as to a fact (which is knowingly false) has a serious consequence to the patent attorney.

    After you’ve thought about this for awhile, I’ll direct your attention to MPEP 2145. The first paragraph is reproduced below:

    >If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).

    You’ll notice that last part about “arguments of counsel.” The reason why arguments of counsel cannot take the place of factual evidence is the same reason why arguments of the examiner cannot take the place of factual evidence … because the law treats these subjective pronouncements as to facts with skepticism. However, if the examiner takes official notice as to a fact that is capable of instant and unquestionable demonstration as being well-known and applicant doesn’t object, then that official notice will be taken as a fact. Once applicant objects, however, the gig is up and the examiner has to rely upon factual evidence, not upon the examiner’s subjective belief as to what is a fact.

    Getting back to my earlier-made point (which nobody addressed) is that the burden of establishing a prima facie case has not been made (and thus the burden to respond has not been shifted to applicant) until applicant accepts the examiner’s pronouncement as to official notice. If the applicant does not accept the examiner’s pronouncement as to official notice, then the prima facie case has not been made. Thus, there is no requirement for applicant to say anything other than “you, the examiner, have failed to establish a prima facie case because I disagree with your official notice.”

    Let me distill this down even further.

    The examiner’s officially noticed fact becomes “substantial evidence” only AFTER applicant has not objected.

    Reply
  34. I don’t plan to but I need $$$ for school you know. Make that $$$$$$$$$$$$$$$. Or find a firm I want to indentured servent my soul out to for ~8 years. I’m quite sure you know seeing as you spent quite some time here before making the switch yourself.

    Reply
  35. “you seem to think you have something up your sleeve”

    I do. It’s called the law.

    6k, come to the light. You’ve seen what being a lifer will do to your brain. Don’t let it happen to you.

    Reply
  36. Come on JD, you’re so cavalier, you seem to think you have something up your sleeve.

    This is ludicrous, one resigning and one calling me names and resigning, all in the middle of the game apparently before you’ve even got your queen out. I’ve never seen such.

    Here you have the perfect opportunity to drive the sword into the belly of the beast, I can pass any convincing information you have right straight on to the people in charge of this section and rid you of this injustice forever, but you shy away.

    Ludicrous.

    Reply
  37. So basically you say that all cases of official notice taken by the office require an affidavit because they rely on personal experience. Unless you have some citation for such an astounding, , incredible, and contrary to the entire history of the taking of official notice I will have to say that your statement is no more than an assertion of an opinion, perhaps a good one, and perhaps based on specific cases/holdings, but an opinion none the less, and one that appears not well backed by the judiciary unless you can cite your cases.

    You seem to think this is such basic knowledge no citation is needed. I assert that you can’t provide any evidence for your position because it doesn’t exist. Whereas, I have plenty of evidence and can cite it easily. Good luck making a case in such a fashion. It’s really convincing. But thanks for not arguing, now that you’re shown to be wrong, or at least have evidence against you. Reminds me of attorneys I work with. I just wish you’d save me the trouble of showing you and yours to be wrong in the first place when you know you’re wrong already, or should.

    Reply
  38. “So, we seem to have JD on one side stating that the office has the burden of proof, and on the other we have me stating that ANY oral or documentary evidence may be received.”

    Sorry 6k, but I gotta agree with digit. Examiner pronouncements are not oral or documentary evidence. Examiners are fact finders. They are not witnesses.

    My sincere thanks to you on being open to actually learning something. Don’t stay too long at the PTO or your brain will be set in concrete like some of your compatriots.

    When you get truly educated, look me up. We’ll have a beer and share a good laugh at the expense of those you left behind.

    Later. :-)

    Reply
  39. 6k – Sorry to have tried to help you out. You are apparently unable to engage in civil discourse or learn from someone who has specialized in this area for decades.
    My statements were not opinions, they are simple old fashioned laws of evidence and administrative law. Anyone who has trained in these knows them. Same thing for the burden of proof discussions I’ve seen elsewhere.

    It takes much more than a superficial reading of a few articles on these topics to understand them. Note for example, that Lionel caught me glossing over the subtle distinction between “admissible evidence” and “evidence.”

    As another example, taking notice of a fact is recognizing one, not actually providing one. In taking notice you are acting as a fact finder, not a fact provider. You are finding the fact in your brain, not in any evidence of record. Lionel’s statement about the impact of requesting an affidavit is a consequence of this.

    These are not the kinds of things you will pick up arguing with a closed mind and making grandiose claims like “win the day.” And, you will continue to misunderstand things such as when and to what extent opinions, such as expert opinions (or agency pseudo-expert opinions) are admissible or the need for them to be based on facts.

    I won’t waste time arguing with you. I’ll just leave you to your “novel” interpretations of well-accepted legal principles. Good bye.

    “Never argue with a fool, onlookers may not be able to tell the difference.” – unknown origin – sometimes attributed to Mark Twain

    Reply
  40. “In fact, the lawyers haven’t answered this because it is so ingrained, they skip right over it. The non-lawyers are missing the principle that derives from evidence and administrative law underlying Zurko.

    It is a basic evidentiary principle that a statement ABOUT facts is not evidence unless it meets the proper criteria. For example, hearsay is not admissible evidence. Opinions are not evidence (in most cases).”

    Interesting. First I would note that “The examiner takes official notice that lightbulbs are well known to be used in flashlights in the field of illumination” does not appear to be a statement ABOUT a fact, but rather it seems to be a statement OF a fact. However, you can feel free to correct me. Especially since I must be wrong in order for your position to stand since if it is a statement OF a fact then it is evidence. Right? I’m wondering why you haven’t supported some citations for this basic underlying principle. I mean sht, you’re taking “unofficial notice” of the basic things in the art lol.

    However, disregarding that minor issue that potentially destroys your position, we would still need to address in what instances opinion is admissible as evidence. Perhaps one of those instances is where the opinion is coming from an excecutive agency with regards to matters that are within its established area of authority? I would like to hear more on that particular subject, or perhaps be directed to some materials that discuss it.

    To be honest, I always took “Opinions are not evidence” from JD to be mostly his opinion, and specifically opinion he was likely deriving from Zurko or similar. Glad to clear that up. Perhaps now we can further explore if you’re correct or not. Perhaps we can deal specifically with the official notice taken by the examiner in Zurko. Perhaps you could point out to me how his statement is about a fact rather than of a fact.

    Finally, you rightly bring up that the PTO called down the APA standard of review down upon itself. Now perhaps you can clear up whether or not it is a necessity that they brought down the whole of APA law upon itself, rather than perhaps only the relevant portions of standard of review as was determined by the SC.

    As an aside, I’m a bit confused, the APA was made in the 40′s, why was it just now being brought up in 1999? What was the standard of review that was presumed prior to SC Zurko? Nothing formal? Perhaps just a mishmatch of caselaw? It seems as if the PTO was presuming APA before Zurko, so it seems as if everything that went prior to it must have been in agreement with the APA standard being applied. Can anyone clear up for me why that wouldn’t be so? *Actually nevermind I just cleared that up myself, the SC ruled that it was not settled which standard should be applied because both had been used prior*. I notice that the more strict is the “clear error” standard.

    Also JD, I understand why you were calling it circular reasoning above. We must turn to additional sources to find out what qualifies as “evidence” in agency hearings and review thereof. I still suspect that agency assertions within their area of expertise are well supported in non-criminal matters. So, I shall investigate.

    Here’s a dated but good article: link to jstor.org

    Better found here: link to heinonline.org

    Read page 5: “Consequently, the technical common law rules barring the admissibility of evidence have generally been abandoned by the administrative agencies.” Now that’s from the 70′s but still interesting.

    Further, he goes into the APA’s treatment of official notice on page 6. He makes a citation at the bottom of the page which I will address at the end.

    He touchs on the subject that the later Zurko is directed to on page 7 where appellate review may not bring more information into consideration since the respondent has no chance to rebut the evidence, and thus the evidence is not competent and therefore NOT SUBSTANTIAL. There we have what the people in the later Zurko were talking about.

    On page 8 we find that the SC had ruled in 1941 that absent a specific requirement for evidence rules to apply to an agency proceeding as they would a jury proceeding then there must be a statutory requirement that they do. And that “with the adoption of the APA, Congress cofified this case law by providing that “any oral or documentary evidence may be received in an administrative hearing” but that specific statutes may override the application of the APA to agency hearings.

    Page 14 deals with hearsay.

    Page 22 and 23 are particularly daming of your positions. Legally incompetent evidence being relied upon for substantial evidence. I do believe we have a case of many trained attorneys not being very well versed in their history.

    Page 24 deals with a legal residuum rule that is close to what you guys are trying to apply.

    Page 26 deals with “opinion” by non-experts and experts alike. Notably both are admitted.

    Page 27 is perhaps the most daming thing I’ve ever seen professionally written against your point of view. “In rejecting these contradictory appeals to ignorace, courts now recognize legislative intention to establish expert agencies. Therefore, agency decisions which rely on the agency’s own expertise are upheld when the respondent offers no contrary expert testimony or when expert testimony offered by staff members and outside experts conflicts. Some courts have gone even further and given excessive deference to the knowledge of the administrative agency by upholding its decisions in the face of uncontradicted expert testimony to the contrary. However, the demands of fairness are now generally accepted, and an agency seeing to rely on its expertise must present expert testimony subject to cross-examination on the record or give the respondent fair notification that official notice will be taken of such “facts”.” Man, that’s good reading. The bottom of the page gets even better. Even if it is old, I see no special amendment to the APA in 96′ that took place to countermand his writing.

    page 35 talks of burden of proof

    pages 42 onward specifies what Official notice is, and should be copied into the MPEP nearly verbatim.

    Ok, now we come to it, I found the relevant portions of the APA.
    http://www.law.cornell.edu/uscode/5/usc_sec_05_00000556—-000-.html

    “(d) Except as otherwise provided by statute, the proponent of a rule or order has the burden of proof. Any oral or documentary evidence may be received, but the agency as a matter of policy shall provide for the exclusion of irrelevant, immaterial, or unduly repetitious evidence.”

    and in (e):
    “When an agency decision rests on official notice of a material fact not appearing in the evidence in the record, a party is entitled, on timely request, to an opportunity to show the contrary.”

    So, we seem to have JD on one side stating that the office has the burden of proof, and on the other we have me stating that ANY oral or documentary evidence may be received. And then we have 556 stating specifically what is to happen when official notice is being relied upon and implicitly that it is allowed. And I have the good fellow from Duke backing me up on its meaning by establishing the entire history of the law up to the 70′s and the terms under which it has been interpreted from day 1. None of which have been shown to have changed since the 70′s and likely have not in any way meaningful to this dispute.

    In conclusion, the good sir from Duke had presented the case for official notice being used under the APA, and no significant relevant changes appear to have occured to the APA in the interm. Thus this paper appears relevant even in today’s time since the SC has ruled there shall be no change in the level of review and that the lower of the two possibilities will be used. Specifically, the SC ruled the APA shall apply to the office, thus the office switched its procedure from the “all you have to do is say give me some evidence” to the “you must rebut the official notice taken”. On the day of SC Zurko the office officially obtained the ability to enact current MPEP procedure and the later Zurko was not even directed to the issue. Thus examiners may make official notice and applicants get the chance to cross examine the assertions of facts presented against them, including official notice, and all is well.

    At the risk of counting my chickens, I believe I have won the day, and indeed the field, gentlemen. I thank JD et al. for making this possible, for without them I would not have had the motivation, nor the direction, to dig into the subject far enough to expose the roots. I’ve got to say though JD, on the whole, it seems that bringing the rich history of the APA evidenciary standards into the dispute was the worst possible thing you could have done for your position. You will have to promise me to stop making fun of the mis-authors of the MPEP ok? Also, if you could stop incorrectly traversing official notice your examiners will appreciate it.

    Btw, pds, page 45 talks about shifting the burden through official notice. Also, page 49 talks about the cases where official notice is simply used as a procedural device to avoid the requirement of the burden of proof. However, it should be noted that these were cases where the gov admitted for the record that they were merely using official notice to avoid the burden of proof rather than it’s proper purpose. It’s proper purpose being to bring extra record facts onto the record and make a decision based thereon. I would advise that if your examiner ever admits for the record that he used official notice solely to circumvent his burden then you should argue and appeal it. If not, well, you’re on your own it would seem.

    Quite a memo:
    link to liebertonline.com

    Hey, good to have Hutz in the convo.

    Reply
  41. Zurko has nothing to do with patent prosecution by the way.

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  42. I always thought the proper response to an Examiner’s official notice was to ask them to back it up with an affidavit or withdraw it. The Examiner’s usually withdraw them if they have to swear to it.

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  43. Thanks everyone for the lessons on official notice! And have a plonkin’ good weekend.

    Reply
  44. “Opinions are not evidence”

    I stated that in numerous posts. Not sure how much more principled analysis you require.

    “However, here is where the sides are speaking past each other – in taking official notice, the examiner is not a fact witness. He is acting as an evaluator/recognizer of facts.”

    In another entirely too lengthy thread on this topic a couple months ago, I LOL’ed 6k’s “theory” that an examiner’s role in prosecution is similar to an expert witness’s role in litigation. And I’ve stated over and over and over and over that examiners are (supposed to be) fact finders.

    “So, in the context of Zurko (and in administrative law in general) notice of facts is not evidence.”

    I’m pretty sure I said this too. Maybe a little more sarcastically and caustically, but I’m pretty sure I said it.

    BTW, I would quibble with your characterization of hearsay. Hearsay is evidence. But as you correctly note, it is not admissible evidence (due to its potential bias and the law’s preference for having the actual speaker be examined, if possible), unless it meets one of the exceptions, or is not offered to prove the truth of the matter asserted.

    But I’m a quibbler. :-)

    Thanks for the support, but as you don’t provide an EXACT quote from Zurko where the court explicitly states “examiners taking official notice is improper,” you’re not going to un-cement any “minds” over at the PTO.

    Don’t worry though, they don’t follow their own policy anyway.

    Reply
  45. The actual issue that has not really been addressed at the basic level:

    **Whether an examiner’s official notice is actually evidence for purposes of review. **

    Lots of conclusory statements. No real basic principled analysis. Lots of excerpts from Zurko, none directly on point.

    In fact, the lawyers haven’t answered this because it is so ingrained, they skip right over it. The non-lawyers are missing the principle that derives from evidence and administrative law underlying Zurko.

    It is a basic evidentiary principle that a statement ABOUT facts is not evidence unless it meets the proper criteria. For example, hearsay is not admissible evidence. Opinions are not evidence (in most cases).

    One type of statement that can be evidence is a declaration of a fact witness. However, here is where the sides are speaking past each other – in taking official notice, the examiner is not a fact witness. He is acting as an evaluator/recognizer of facts.

    In this role, under the principles of administrative law, such statements ABOUT facts are not statements OF facts. So, taking official notice does not provide any “evidence” as that is used in the context of Zurko.

    The examiner can become a fact witness by submitting a declaration stating that he/she is personally aware of the facts. This converts a statement about facts into a statement of facts. The examiner then can rely upon his declaration. Of course, this is a can of worms most examiners are clever enough to leave closed.

    So, in the context of Zurko (and in administrative law in general) notice of facts is not evidence.

    Interestingly, this is a case of “be careful what you ask for.” The PTO asked for the more lenient standard of review in Zurko by positioning itself as a(n almost) classic administrative agency for APA purposes. When the SCt agreed, the PTO got its way along with all of the other baggage that goes along with the APA. Notice and hearing; procedural vs. substantive; evidentiary standards; etc.

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  46. “3 We have repeatedly asked you guys to QUOTE exactly where from the Zurko decision that an ‘examiner’ (i.e., one of those creating the record, not those reviewing an already existing record) taking official notice is improper.”

    There you go again with the misquotes. Neither I nor pds said that the court ruled in Dickinson v. Zurko that “an examiner taking official notice is improper.”

    What we said was the court ruled that PTO fact finding must be supported by substantial evidence.

    Please keep up your good work of requiring your examiners not to follow PTO policy. By this time next year, when 6k is your boss, I’m sure he’ll give you an outstanding rating.

    Reply
  47. 6k’s response was better. Equally wrong, but lots more flair. Yours is a pale imitation. Are there any other GS-15′s reporting to GS-9′s, or are you the only one?

    BTW,

    MVS

    *PLONK*

    See, I can use baby talk too.

    Reply
  48. pds, I have read & considered your post. There a few things you & others appear to be missing & points I want to make:

    1 Zurko is not directly about an examiner taking notice. It is about the standards of review. Show me where that is wrong. And it is about the Board adding in material that was not in the record rather than making their ruling based on the record before them. Correct? If not, again, please point out exactly where in the decision you find your support.

    2 706 of APA that you quote IS about abuses by the agency. From that I can see where you MIGHT get your reasoning. But not from Zurko, which is where you all point for your support.

    3 We have repeatedly asked you guys to QUOTE exactly where from the Zurko decision that an “examiner” (i.e., one of those creating the record, not those reviewing an already existing record) taking official notice is improper. From what I read, it is not there. And no one here has yet posted a QUOTE from the decision stating such.

    4a Official notice, when taken properly (emphasis on properly), is supposed to be for things that are NOT esoteric in the art and not the inventive feature.
    For these instances (e.g., claims & invention are to a computer processing system and a dependent claim adds in that the system includes a CD reader/writer. No more specifics added or disclosed. Just a throw in (or throw-away) feature.) why would taking official notice be improper? The use of a CD reader/writer as a conventional part of a computer system has been known by most anyone who has used a computer for the last decade. At this point, it is almost an obsolete feature, having mostly been replaced by DVD & soon Blu-ray. Is this NOT a feature, in this type of example, that notice SHOULD be given and is is also not worthy of a challenge?

    4b In instances where official notice is improperly taken, such as details not known to the common person or details that are “at the point of invention” or are important to the actual invention, then the rebuttal is very easy by applicant. It would simply have to be a statement like “The applicant disagrees with the examiner that the feature of XXX is well known and/or conventional in this art because XXX is not something that a common person or a person of ordinary skill in the art would readily be aware of because this is one of the features that distinguishes our device from the prior art. Therefore the examiner is requested to supply prior art that shows this feature.” Or “because this is an esoteric feature in a complex art and in accordance with MPEP 2144.03 is not a proper feature to be taken notice of by the examiner.” Or similar recitations. It isn’t necessary to write a whole dissertation on the point. If an examiner wants that much, they are wrong.

    5 Going back to 4a for a moment, to rebut the proper taking of notice as in 4a would require substantially more than the examples of 4b.

    6 When taking notice, the examiner STILL must provide the required motivation etc for making the combination. Just saying it is well known & obvious is not enough.

    7 Something I pointed out earlier, but everyone choose to ignore, even before the change to 2144.03 the MPEP still required a the applicant to “rebut” the taking of notice. See my earlier definitions of “rebut”. Why was there no problem back then? What the rewritten version now adds is largely a more rational for taking notice and a more detailed explanation what “rebut” is. Really, very little has changed.

    8 If you get an improper taking of notice, I agree that you should make them supply references. Because they are wrong in taking that kind of notice.
    What I have done & have had my examiners do is only take notice of things that an ordinary person on the streets (not the lesser standard of ordinary skill) would know. That way you don’t have to deal with petty side issues (traversal of the notice, determining if it is sufficient, etc.) and can deal with the real meat of the case. That way it is better for the examiner AND the applicant (and less for the attorney to argue and bill :) ) And, if the attorney tries to argue something like in 4a isn’t common and well known you can slap them down & make them look bad in front of their applicant’s.

    That’s it on the subject from me. Unless you come up with some QUOTES to support your position from Zurko, you won’t convince me and it doesn’t look like anything we say can convince you all. So, let’s move on, already.

    Done…

    MVS

    Reply
  49. I answered your questions.

    You won’t answer mine because you can’t. But as you don’t even follow the PTO policy, that’s all the answer I need.

    Next time you have a petition on your desk, why don’t you give 6k a call and see if he can provide a more detailed and eloquent decision than you can write. He shouldn’t have too much trouble with that.

    I’m not familiar with that term. But I’m sure you’re going to tell me what it means.

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  50. oh, and john-boy,

    I won’t answer your “question” now because

    1) 6k already spelled it out &

    2) You STILL didn’t answer mine. You just used a lot of circular “reasoning” saying I don’t have to do it because I said I don’t have to do it. Real good there.

    BTW, you familiar with the term “PLONK”?

    MVS

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  51. hey, johnydarling,

    you asked “Tell me MVS, is it true that all COMPETENT examiners go on to law school and progress to private practice, and those that can’t cut it stick with examination?”

    Obviously that isn’t true. Many INCOMPETENT examiners go to law school & go to private practice. You are a prime example. I don’t kid ;)

    MVS

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  52. “If an examiner’s opinion qualifies as substantial evidence, what is to prevent some harried examiner, trying to make his/her count, taking official notice of some fact that he/she was positive he/she read in a college text some 5 years ago? Nothing. However, what happens if he/she remembered incorrectly and took official notice of a property that was discovered by applicant? How is applicant going to disprove this? Sure … some assertions as to a fact can be disproved, but not every assertion.

    There is a reason why the term is called “fact finder” with emphasis on the “finder.” Facts are to be found, not created. The drafters of 5 USC 706 were smart enough to know that not everybody in the government can be trusted to do his/her job correctly and without bias. As such, agency decisions had to be based upon substantial evidence and not opinion evidence. Now if an examiner is relying upon knowledge within his/her own expertise, this can be done, but applicant can request that the examiner supply an affidavit.

    Now MVS and 6K may live in a world where every patent examiner does his/her job perfect and always abides by the rules. As such, they believe that a government employee should always be trusted. However, there are those of us who know that the ideal world that MVS and 6K inhabit is the exception rather than the rule. The simple reason why the examiner’s opinion is, in most instances, not substantial evidence is that the examiner is an interested party. Although the examiner should not be, I don’t think any of us are naive enough to believe that examiners don’t slant their examinations towards rejecting claims rather than allowing claims. An examiner’s opinion is a self-serving statement, and like most self-serving statements, the law treats them skeptically.”

    What is to prevent the examiner from taking notice to make production? Nothing, in fact, that is what it is there for. Provided that everything taken notice of is something a reasonable person would consider fact. You’re right, an examiner could botch this up. This is where you come in, you traverse the notice. You assert that there are some false assertions that cannot be disproven. I submit that examiners/judges are not unreasonable people, so you hardly have to disprove anything, a mere convincing argument is sufficient. If you can’t make a convincing argument, then you have a problem. A reasonable person would not take your position. That my friend is a problem.

    And frankly pds you’re right, facts are to be found. However, that does not preclude the examiner relying on what is common knowledge, as common knowledge is already apparent to nearly everyone. To “find” common knowledge, one needs to only look to what one knows.

    As to if you can trust an examiner, well, you could be right that we’re not to be wholly trusted, but the fact remains that we have been given authority over our area. We are the executive branch. The court approaches overturning our decisions with caution. Read SC Zurko again. Pay attention during the relevant parts.

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  53. “There’s nothing to stop tax collectors from making up assertions about various things one tiny bit, and the reason is because a reasonable person would very often agree with them that a 2000 chevy is worth 8k$ or so and should have its tax deduced therefrom.”

    There you have it. Unassailable logic.

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  54. “However, if an examiner’s opinion (or anybody else in the government) is substantial evidence, what is to prevent the examiner (or anybody else in the government) from “creating” facts rather than finding facts? Try rebutting, e.g., an assertion that spaghetti grows on trees. You could argue that spaghetti is made use flour, eggs, salt, and water; however, such a rebuttal doesn’t disprove that spaghetti can also be grown on trees. It is a silly hypothetical, but it gives a glimpse as to how official notice can be abused.”

    Nothing but judicial review. As always, the courts are your remedy. There’s nothing to stop tax collectors from making up assertions about various things one tiny bit, and the reason is because a reasonable person would very often agree with them that a 2000 chevy is worth 8k$ or so and should have its tax deduced therefrom. A reasonable person might also often agree that if I filled out a registration then I actually own a chevy. Nobody in the gov knows if I actually have a chevy. They’ve never seen my truck.

    I will try rebutting spaghetti growing on trees: “A reasonable person does not, and would not believe that spaghetti grows on trees.” Simple as that, a fine rebuttal. Your only problem is when the examiner asserts that spaghetti is made by cooks by special methods (methods which I do not know btw) and you cannot rebut that because it is fact.

    PDS, I believe it might be you who is mistaken about why the APA was enacted. As specifically stated in SC Zurko the APA was not intended to create a different standard of review for the office than was previously being applied. The Fed. Circ wanted one, the PTO won and the Fed. Circ. did not get it. What the APA WAS enacted to do, according to the SC, was to bring regularity to REVIEW of agency actions. Making a special exception for the PTO is not necessary under the APA. That’s their understanding, not mine. I can cite it if you need a repeat. Perhaps you have some citations from other cases that support your view?

    I’m not sure how you can come in here an say that official notice being substantial evidence when properly taken is circular reasoning JD. You have an assertion (by examiner, or by attorney) in the record. It is either one of two things: 1. Something a reasonable person would not hold as a fact or 2. it something a reasonable person would hold as a fact. If the later then you have substantial evidence. Keep in mind that substantial evidence is not unassailable, it can be rebutted with evidence the contrary, or, in particularly outrageous cases such as pds’s, it can be rebutted by a mere argument that it is not something a reasonable person would hold as fact. The evidence rebuttal was done in the later Zurko as a matter of fact.

    Oh, and to your credit, when you look at the case out of context of what was going on, and extract some sound bytes it does look as if the court is saying what you’re asserting.

    Lay off MVS etc., from what I understand they stay at the office because they don’t want to be troubled with the life of a lawyer. Including 4 years of law school.

    PDS, go back and read SC Zurko, you might find it enjoyable, and enlightening. After you read it, read the later Zurko with the knowledge that the board added in “common sense” in the middle of its review to make up for the shortfalls of the examiners rejection, then affirmed the examiner. In other words, they found a big hole in the examiners rejection, then affirmed because they asserted the “hole” was common sense. Doing so is contrary to the appellate nature of the Board’s function. Especially when there was evidence that it was not common sense. That was the issue in the later Zurko, and even if the Fed. Circ. did want to redefine what was substantial evidence (which it would seem it cannot do anyway since the SC, and quite a bit of controlling precedent has already defined it) then them doing so would be dicta since the issue was not whether or not the examiners assertion was substantial evidence, but rather that the board’s findings were not based on substantial evidence in the record at the time the case was put before them. Why were they not? Because the additional “common sense” used to fill holes lacked concrete evidence AND there was concrete evidence the contrary.

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  55. “Notably, official notice qualifies as evidence because it is ‘substantial evidence’.”

    Nice circular reasoning. But you’re gonna easily pass the LSATS, amirite? LOL

    “This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support.”

    Seems to me the court is telling us that BPAI’s “assessment of basic knowledge” is not supported by substantial evidence and is not part of the evidentiary record.

    You are funny, 6k. Unlike some of your compatriots over there, you may have a bright future.

    MVS,

    Still waiting for your answer.

    “Thank-you. You hit on some of the same points I was trying to point out, but you did it in much more detail & more eloquently than I did.”

    So a GS-9 examiner with a year and a half experience made your argument in much more detail and more eloquently than you could?

    Tell me MVS, is it true that all COMPETENT examiners go on to law school and progress to private practice, and those that can’t cut it stick with examination? idk, that’s what I hear anyway.

    ROFLMAO!

    Reply
  56. 6K:

    You have a propensity for writing a lot but not saying much. I skipped over most of your post (even not knowing it was you who wrote it) because as soon as I started reading it I knew it was an unfocused rambling.

    Perhaps the reason you don’t understand the APA, the requirement for agency decisions to be based upon substantial evidence, and why the traversal of official notice doesn’t require showing the examiner was wrong is your (and MVS’s) failure to understand why these laws were enacted and the concept of who has the initial burden.

    Let’s first go to the initial burden. As we all (should) know, the examiner has the initial burden of establishing a prima facie case of anticipation/obviousness. Upon a prima facie case being made, then the burden shifts to applicant. However, if the examiner is relying upon official notice to make the prima facie case, all applicant has to do is say “I disagree with the official notice for lack of substantial notice.” Once this happens, the examiner cannot rely upon the official notice and if the examiner’s prima face case relies upon the official notice, the prima facie case has not been made, which means that the burden has NOT been shifted. Since the burden has not been shifted, Applicants don’t have the burden of proving anything (i.e., the ball is still in the examiner’s court).

    The reason for an agency decision to be based upon substantial evidence is based upon the well-founded belief that the government is not to be trusted. The following is from 5 USC 706(2):
    (2) hold unlawful and set aside agency action, findings, and
    conclusions found to be–
    (A) arbitrary, capricious, an abuse of discretion, or
    otherwise not in accordance with law;
    (B) contrary to constitutional right, power, privilege, or
    immunity;
    (C) in excess of statutory jurisdiction, authority, or
    limitations, or short of statutory right;
    (D) without observance of procedure required by law;
    (E) unsupported by substantial evidence in a case subject to
    sections 556 and 557 of this title or otherwise reviewed on the
    record of an agency hearing provided by statute; or
    (F) unwarranted by the facts to the extent that the facts
    are subject to trial de novo by the reviewing court.

    All of these listed “transgressions” are examples of abuse of power that can be perpetrated by the government. What is so bad with lack of substantial evidence you may ask? Facts (i.e., evidence) is what decisions are based upon. However, if an examiner’s opinion (or anybody else in the government) is substantial evidence, what is to prevent the examiner (or anybody else in the government) from “creating” facts rather than finding facts? Try rebutting, e.g., an assertion that spaghetti grows on trees. You could argue that spaghetti is made use flour, eggs, salt, and water; however, such a rebuttal doesn’t disprove that spaghetti can also be grown on trees. It is a silly hypothetical, but it gives a glimpse as to how official notice can be abused.

    If an examiner’s opinion qualifies as substantial evidence, what is to prevent some harried examiner, trying to make his/her count, taking official notice of some fact that he/she was positive he/she read in a college text some 5 years ago? Nothing. However, what happens if he/she remembered incorrectly and took official notice of a property that was discovered by applicant? How is applicant going to disprove this? Sure … some assertions as to a fact can be disproved, but not every assertion.

    There is a reason why the term is called “fact finder” with emphasis on the “finder.” Facts are to be found, not created. The drafters of 5 USC 706 were smart enough to know that not everybody in the government can be trusted to do his/her job correctly and without bias. As such, agency decisions had to be based upon substantial evidence and not opinion evidence. Now if an examiner is relying upon knowledge within his/her own expertise, this can be done, but applicant can request that the examiner supply an affidavit.

    Now MVS and 6K may live in a world where every patent examiner does his/her job perfect and always abides by the rules. As such, they believe that a government employee should always be trusted. However, there are those of us who know that the ideal world that MVS and 6K inhabit is the exception rather than the rule. The simple reason why the examiner’s opinion is, in most instances, not substantial evidence is that the examiner is an interested party. Although the examiner should not be, I don’t think any of us are naive enough to believe that examiners don’t slant their examinations towards rejecting claims rather than allowing claims. An examiner’s opinion is a self-serving statement, and like most self-serving statements, the law treats them skeptically.

    Reply
  57. Oh, and hey, maybe you’re right. You, and further investigation, convinced me. “Evidenciary record” can be taken as “record” here. Doesn’t change anything. The evidenciary record is what is put before the board, official notice and all. Notably, official notice qualifies as evidence because it is “substantial evidence”.

    Anyway, yw, gn.

    Reply
  58. Man it’s getting almost too late I can’t type. I took quite awhile to put that above together. But, since I’m on top of what I’m talking about right now and I’m not doing work, let me finish up. JD asserts that examiners aren’t poshita. I agree. They can determine what, in their view, a reasonable person would find convincing enough to be fact.

    JD then requests a citation for my assertion that the Fed. Circ. affirms that substantial evidence is not limited to concrete evidence. I will supply one.

    “Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. v. NLRB”

    This states, without a doubt what substantial evidence is. There is no, “further defining it” going on in this case. And to show why this is I will square your other two concerns.

    “”And they state that the board must find some concrete evidence already in the record, at the time that the appeal goes up to them, to support their findings. And further that to hold otherwise would negate the entire point of appellate review which the board provides, i.e. to decide, based on the record that left the examiner whether or not the issues before them are correct.”

    I am stating, as is stated in the case: “We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, 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.”

    that the board, should it want to make a finding of fact *that is not already on the record when the case arrives to them*, must find it in the concrete evidence, or presumably there must at least be some support in the concrete evidence for their finding of fact. I.e. they cannot add things that are not in the concrete evidence to the record to make their decision, they must make their decision ONLY based on what is presented to them.

    Finally you wish this squared: “Accordingly, we cannot accept the Board’s unsupported assessment of the prior art.”

    That is to say, the board cannot accept, the board’s unsupported assessment of the prior art in it’s entirety, because part of it was just added during their review. And that part did not have any concrete evidence.

    Reply
  59. Oh, sorry forgot to address the rest of your post JD. I’ll get to you in the morning and we’ll square this all away.

    Reply
  60. Nope, sorry JD, “evidenciary record” /= record. Sorry, try again. I can add Holla holla hupla to the record and it is not the evidenciary record, but it is still of record. Of course, holla holla hupla might not be a good basis for some substantial evidence.

    Reply
  61. Stats,

    Thank-you. You hit on some of the same points I was trying to point out, but you did it in much more detail & more eloquently than I did.

    From my POV, this is the last on the topic from me.

    thanks again, Stats!!

    ‘nite, johndarling :)

    MVS

    Reply
  62. Sorry about that, posted under “stats” where I was garnering support for a game I found during lunch from some people lol.

    Yes, it is e6k here. Yes, I “mugged” some of you today for my own purposes that was pretty funny.

    Reply
  63. “Substantial- More than a scintilla (legal definition)? As in, a person of ordinary skill stating what is commonly known perhaps? Could be … but let’s go to what the SC thinks it is.”

    You then conclude: “This Court has described the APA court/agency ‘substantial evidence’ standard as requiring a court to ask whether a ‘reasonable mind might accept’ a particular evidentiary record as ‘adequate to support a conclusion.’”

    The key word in that conclusion is, of course, record. As in evidentiary record. Examiner pronouncements as to what is commonly known are not evidence in the record.

    Here’s where your argument breaks down and fails horribly:

    “As in, a person of ordinary skill stating what is commonly known perhaps?”

    Examiners are not PHOSITA. They are fact finders. Their job is to determine the scope and content of the prior art and the level of ordinary skill in the art, not simply substitute their “expertise” for those required findings. You should know that. An examiner can not find a fact simply by stating, “X is well known.” Fact finding requires a little more than that.

    “There is in fact an instance where the Fed Circ reaffirms that substantial evidence is not limited to ‘concrete evidence’.”

    Care to give us a cite? And then square it with this?

    “And they state that the board must find some concrete evidence already in the record, at the time that the appeal goes up to them, to support their findings. And further that to hold otherwise would negate the entire point of appellate review which the board provides, i.e. to decide, based on the record that left the examiner whether or not the issues before them are correct.

    And maybe this too?

    “Accordingly, we cannot accept the Board’s unsupported assessment of the prior art.”

    You must be one of the best and brightest. My crack may have been a wee bit over the line. But you did get your head handed to you at USDC. The Fed. Cir. will hand you what’s left.

    Reply
  64. n v. Zurko can not be more clear. PTO findings of fact must be supported by substantial evidence.

    Substantial- More than a scintilla (legal definition)? As in, a person of ordinary skill stating what is commonly known perhaps? Could be … but let’s go to what the SC thinks it is.

    “Examiner pronouncements of what is “common knowledge” or “notoriously old and well known” are not substantial evidence.”

    Unfortunately this is where your argument really breaks down and fails horribly, the decision does not say that and you have read it for yourself, you merely like to put words into their mouths. Let’s start at the beg. Particularly relevant is “Indeed, it apparently remains disputed to this day (a dispute we need not settle today) precisely which APA standard–“substantial evidence” or “arbitrary, capricious, abuse of discretion”–would apply to court review of PTO factfinding.” That is to say “We, the SC, would not like to decide if a PTO action must be “arbitrary/capricious” or lacking in “substantial evidence” in order for it to be reversed or set aside even though it may appear that section A and section E of 5 USC 706 can be applied in order to set aside a PTO finding”. Notice, this is the SC saying that it has not been decided as of Zurko whether or not A or E is to be applied to the PTO, or both are to be applied to the PTO. Then the Fed circuit settled that in a subsequent case (that E applies) that very well could be overturned by the SC at any time. But let’s assume that it is not, and E stands as applicable.

    Now we go to SC Zurko. We see that a battle of wills it taking place, PTO v Fed Circ. In fact, we see that the PTO itself was the party WANTING the APA standard rules under 706 to be the one(s?) governing it, RATHER than a special exception to those as the Fed Circ wanted.

    A quick refresher from link to law.cornell.edu

    “The Court of Appeals for the Federal Circuit believes that it should apply the “clearly erroneous” standard when it reviews findings of fact made by the PTO. In re Zurko, 142 F.3d 1447, 1459 (1998) (case below). The Commissioner of Patents, the PTO’s head believes to the contrary that ordinary APA court/agency standards apply. See e.g., In re Kemps, 97 F.3d 1427, 1430—1431 (CA Fed. 1996); In re Napier, 55 F.3d 610, 614 (CA Fed. 1995); In re Brana, 51 F.3d 1560, 1568—1569 (CA Fed. 1995).

    The case before us tests these two competing legal views. Respondents applied for a patent upon a method for increasing computer security. The PTO patent examiner concluded that respondents’ method was obvious in light of prior art, and so it denied the application. See 35 U.S.C. § 103 (1994 ed., Supp. III). The PTO’s review board (the Board of Patent Appeals and Interferences) upheld the examiner’s decision. Respondents sought review in the Federal Circuit, where a panel treated the question of what the prior art teaches as one of fact, and agreed with respondents that the PTO’s factual finding was “clearly erroneous.” In re Zurko, 111 F.3d 887, 889, and n. 2 (1997).

    The Federal Circuit, hoping definitively to resolve the review-standard controversy, then heard the matter en banc. After examining relevant precedents, the en banc court concluded that its use of the stricter court/court standard was legally proper. The Solicitor General, representing the Commissioner of Patents, sought certiorari. We granted the writ in order to decide whether the Federal Circuit’s review of PTO factfinding must take place within the framework set forth in the APA.”

    That is to say that the Fed. Circ is arguing that they should apply the “clearly erroneous” standard, whereas THE PTO believes that ordinary APA rules apply. The federal circuit rests its claim on the fact that there must be an exception to the general APA rules in favor of a MORE STRICT review:

    “The Federal Circuit rests its claim for an exception upon §559. That section says that the APA does “not limit or repeal additional requirements . . . recognized by law.” In the Circuit’s view: (1) at the time of the APA’s adoption, in 1946, the Court of Customs and Patent Appeals (CCPA), a Federal Circuit predecessor, applied a court/court “clearly erroneous” standard; (2) that standard was stricter than ordinary court/agency review standards; and (3) that special tradition of strict review consequently amounted to an “additional requirement” that under §559 trumps the requirements imposed by §706.”

    Thus, the FC argues that 559 requires that there be a stricter requirement than 706 does and it trumps 706. (706 is notably where your support about “unsupported by substantial evidence” comes from http://www.law.cornell.edu/uscode/5/usc_sec_05_00000706—-000-.html NOTE THAT THIS IS WHAT THE PTO IS ARGUING FOR AND NOT AGAINST).

    “See App. to Brief for New York Intellectual Property Law Association as Amicus Curiae 1a—6a (collecting cases), and we conclude that those cases do not reflect a well-established stricter court/court standard of judicial review for PTO factfinding, which circumstance fatally undermines the Federal Circuit’s conclusion.”

    However the SC says the fed circ’s argument is fatally undermined. Because they are the sux and pto is the rox amirite? (x=k for you old timers).

    Going down a bit we get to:

    “But this is something more than a mere appeal. It is an application to the court to set aside the action of one of the executive departments of the government.
    . . . A new proceeding is instituted in the courts . . . to set aside the conclusions reached by the administrative department … . It is . . . not to be sustained by a mere preponderance of evidence. . . . It is a controversy between two individuals over a question of fact which has once been settled by a special tribunal, entrusted with full power in the premises. As such it might be well argued, were it not for the terms of this statute, that the decision of the patent office was a finality upon every matter of fact.” Id., at 124 (emphasis added).

    The Court, in other words, reasoned strongly that a court/court review standard is not proper; that standard is too strict; a somewhat weaker standard of review is appropriate.”

    Where the SC comes to the conclusion that another court had already argued strongly in favor of a less strict review of agency findings because they had been entrusted with full power in the premises and were it not for statute then every PTO decision would be final, period, end of story final, no appeal.

    The SC then goes on to distinguish the difference between what I take to be BPAI (or lower dis court) and Fed Circuit review standards.

    ““Patent Office [decision] must be accepted as controlling upon that question of fact . . . unless the contrary is established by testimony which . . . carries thorough conviction… . [I]f doubtful, the decision of the Patent Office must control.” Id., at 125 (emphasis added).

    It added that the testimony was “not . . . sufficient to produce a clear conviction that the Patent Office made a mistake.” Id., at 129 (emphasis added). But the Court did not use the emphasized words today; it used those words more than 100 years ago. And its reasoning makes clear that it meant those words to stand for a court/agency review standard, a standard weaker than the standard used by “an appellate court in reviewing findings of fact made by the trial court.” Id., at 123.”

    The SC then goes on to remind us that previous courts overwhelmingly felt the PTO deserved defference:

    “In nearly half of the cases, the CCPA explains why it uses its “manifest error” standard by pointing out that the PTO is an expert body, or that the PTO can better deal with the technically complex subject matter, and that the PTO consequently deserves deference. In more than three-fourths of the cases the CCPA says that it should defer to PTO factfinding because two (and sometimes more) PTO tribunals had reviewed the matter and agreed about the factual finding. These reasons are reasons that courts and commentators have long invoked to justify deference to agency factfinding. See Universal Camera, 340 U.S., at 496—497 (intraagency agreement); NLRB v. LinkBelt Co., 311 U.S. 584, 597 (1941) (expertise); Rochester Telephone Corp. v. United States, 307 U.S. 125, 145—146 (1939) (expertise); ICC v. Louisville & Nashville R. Co., 227 U.S. 88, 98 (1913) (expertise); Stern, 58 Harv. L. Rev., at 81—82 (expertise); 2 Davis & Pierce §11.2, at 178—181 (intraagency agreement). They are not the reasons courts typically have given for deferring to fact-finding made by a lower court judge. See, e.g., Concrete Pipe & Products of Cal., Inc. v. Construction Laborers Pension Trust for Southern Cal., 508 U.S. 602, 623 (1993); Stern, supra, at 82—83 (trial court advantages lie in, e.g., evaluation of witness, not comparative expertise). And we think it also worth noting, in light of the pre-APA movement toward standardization discussed above, supra, at 6—7, that the CCPA began to refer more frequently to technical complexity and agency expertise as time marched closer to 1946. Out of the 45 cases in our sample decided between 1929 and 1936, 40% (18 of 45) specifically referred to technical complexity. That percentage increased to 57 (25 of 44) for the years 1937 to 1946.”

    Ultimately, PTO wins the fight against a more strict standard:

    “Given the CCPA’s explanations, the review standard’s origins, and the nondeterminative nature of the phrases, we cannot agree with the Federal Circuit that in 1946, when Congress enacted the APA, the CCPA “recognized” the use of a stricter court/court, rather than a less strict court/agency, review standard for PTO decisions. Hence the Federal Circuit’s review of PTO findings of fact cannot amount to an “additional requiremen[t] . . . recognized by law.” 5 U.S. C. §559.”

    The court then goes on to talk about various other things the Fed circ cited and how they were clearly fallacious arguments and were indeed arse backwards.

    AND THEN, here’s the absolute kick in the teeth for JD et al.’s little proposal about how “substantial evidence” must be some, presumably prior art, “written document” or such.

    “This Court has described the APA court/agency “substantial evidence” standard as requiring a court to ask whether a “reasonable mind might accept” a particular evidentiary record as “adequate to support a conclusion.” Consolidated Edison, 305 U.S., at 229. It has described the court/court “clearly erroneous” standard in terms of whether a reviewing judge has a “definite and firm conviction” that an error has been committed. United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948). And it has suggested that the former is somewhat less strict than the latter. Universal Camera, 340 U.S., at 477, 488 (analogizing “substantial evidence” test to review of jury findings and stating that appellate courts must respect agency expertise). At the same time the Court has stressed the importance of not simply rubber-stamping agency fact-finding. Id., at 490. The APA requires meaningful review; and its enactment meant stricter judicial review of agency factfinding than Congress believed some courts had previously conducted. Ibid.”

    According to this, in order for something to be substantial evidence then a reasonable person would need to accept it as fact. Now, if a reasonable person (say, a jury member) would not accept my official notice as fact the I would happily withdraw it. If however, they would, then I say it stands and is substantial evidence.

    Then the court tells us when applying A is appropriate and when applying E is appropriate:

    “Moreover, if the Circuit means to suggest that a change of standard could somehow immunize the PTO’s fact-related “reasoning” from review, 142 F.3d, at 1449—1450, we disagree. A reviewing court reviews an agency’s reasoning to determine whether it is “arbitrary” or “capricious,” or, if bound up with a record-based factual conclusion, to determine whether it is supported by “substantial evidence.” E.g., SEC v. Chenery Corp., 318 U.S. 80, 89—93 (1943).” (that is to say the fed circuit felt like if standard apa were to be applied it would immunize the PTO from review, but the SC disagrees and finds that it is still subject to review, though a less strict one that the fed circ. felt was needed).

    The court then notes that there are two paths that an appeal can take pto>district>fed circ or pto>fed circ. It notes that in the district path that the fed circ reviews the decision of the district court under “clearly erroneous”:

    “Second, the Circuit and its supporting amici believe that a change to APA review standards will create an anomaly. An applicant denied a patent can seek review either directly in the Federal Circuit, see 35 U.S.C. § 141 or indirectly by first obtaining direct review in federal district court, see §145. The first path will now bring about Federal Circuit court/agency review; the second path might well lead to Federal Circuit court/court review, for the Circuit now reviews Federal District Court factfinding using a “clearly erroneous” standard. Gould v. Quigg, 822 F.2d 1074, 1077 (1987). The result, the Circuit claims, is that the outcome may turn upon which path a disappointed applicant takes; and it fears that those applicants will often take the more complicated, time-consuming indirect path in order to obtain stricter judicial review of the PTO’s determination.”

    Then they explain how they do not feel that the two paths being different creates anomoly and/or hurt the applicant:

    “We are not convinced, however, that the presence of the two paths creates a significant anomaly. The second path permits the disappointed applicant to present to the court evidence that the applicant did not present to the PTO. Ibid. The presence of such new or different evidence makes a factfinder of the district judge. And nonexpert judicial factfinding calls for the court/court standard of review. We concede that an anomaly might exist insofar as the district judge does no more than review PTO factfinding, but nothing in this opinion prevents the Federal Circuit from adjusting related review standards where necessary. Cf. Fregeau v. Mossinghoff, 776 F.2d 1034, 1038 (CA Fed. 1985) (harmonizing review standards).”

    In conclusion, two things. One, the SC has stated that they have not determined (as of Zurko in 1999′) whether A or E applies to the PTO’s examination reviews, though they suggest perhaps both do and the fed circ later rules that E was appropriate, and that’s fine. Second, the SC has set forth in no uncertain terms what the “substantial evidence” requirement is, and it is not what JD purports it to be, nor will it ever be, no matter if Fed Circ had said it was something different (which they have not). I take it that your position stands/falls with that determination JD. If you’d like it again, I will provide it, since this has been a long fought battle.

    “This Court has described the APA court/agency “substantial evidence” standard as requiring a court to ask whether a “reasonable mind might accept” a particular evidentiary record as “adequate to support a conclusion.” Consolidated Edison, 305 U.S., at 229. It has described the court/court “clearly erroneous” standard in terms of whether a reviewing judge has a “definite and firm conviction” that an error has been committed. United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948). And it has suggested that the former is somewhat less strict than the latter. Universal Camera, 340 U.S., at 477, 488 (analogizing “substantial evidence” test to review of jury findings and stating that appellate courts must respect agency expertise). At the same time the Court has stressed the importance of not simply rubber-stamping agency fact-finding. Id., at 490. The APA requires meaningful review; and its enactment meant stricter judicial review of agency factfinding than Congress believed some courts had previously conducted. Ibid.”

    Now that such a question as to what constitutes substantial evidence has been settled by the SC we turn our attention to the more recent Zurko.

    link to caselaw.lp.findlaw.com

    Right off the bat we see why Zurko is still held to be reversed by the Fed Circ.

    “We now revisit the merits of our decision in Zurko I, applying the proper APA standard of review. In doing so, we conclude that the outcome of this case does not change with the application of this new standard of review. Because the factual findings underlying the Board’s decision are not supported by substantial evidence, we reverse.”

    In other words, in the Fed Circ’s opinion, the Office did not present evidence that a reasonable person would consider convincing. I agree, the case in ZURKO is clear error, lack of substantial evidence, and arbitrary and capricious all rolled into one. The evidence is woefully lacking, it is a slightly “esoteric” art question, and the other side has evidence the contrary (though I think they produced that at trial and not before appeal). And the assertion that it is common sense to send “trusted” signals along “trusted” paths, with the “trusted paths” not even in the art supplied, nor having notice taken of being in existence, is so off base it makes my mind reel. Be aware here that the board DID NOT take notice that the trusted paths existed in the prior art and were obvious to use there, they took the position that trusted paths are INHERENT or IMPLICIT. Then the examiner asserted that “it is basic knowledge that communication in trusted environments is performed over trusted paths.”. This is not a taking of notice of the existence of “communication with the user over a trusted pathway” in the prior art, but is rather an assertion that something else, that was very close to the limitation, but was not the limitation, is basic knowledge. The board then confirmed that it was obvious to combine the “references” in a specific manner that makes up for the ‘holes” in the official notice that was taken by the examiner because of common sense, after the examiner had omitted that in his analysis.

    The Fed circuit first holds that the inherency/implicit argument was plainly false sense neither reference (this EXCLUDES the assertion by the examiner) teaches “communication with the user over a trusted pathway”, which even when compared to the examiners assertion of basic knowledge (not even common knowledge) that “it is basic knowledge that communication in trusted environments is performed over trusted paths” which fails to address communication with the user over trusted paths.

    We then find again that even the Fed Circ knows “Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”” And that VERY IMPORTANTLY “A review under this standard “involves an examination of the record as a whole, taking into consideration evidence that both justifies and detracts from the agency’s decision.”” i.e. that if there is evidence the contrary then it must be considered when determining if the evidence is substantial or not (and this is relevant in this case as there was evidence the contrary). Then, again they say “The substantial evidence standard has been analogized to the review of jury findings, and it is generally considered to be more deferential than the clearly erroneous standard of review. Zurko III,”

    Finally they address directly the issues and say “As to this first issue, the Commissioner apparently concedes that neither the UNIX IDS disclosure nor FILER2 teaches communications between the user and the trusted environment along a trusted path.” and then they say that it is impermissible to allow the support by alternative reference (which I assume the PTO dug up after the BPAI decision, since the board based the decision only on the two references). And to this issue they say “The Commissioner also cannot now mend the Board’s faulty conclusion of obviousness by substituting these alternative references for those relied upon by the Board.” Because the commissioner was trying to help out the rejection even after it left BPAI (look it up in the original Zurko appeal to the CAFC).

    Finally, we arrive at the crux of the matter “Finally, the deficiencies of the cited references cannot be remedied by *the Board’s* general conclusions about what is “basic knowledge” or “common sense” to one of ordinary skill in the art. As described above, the Board contended that even if the cited UNIX and FILER2 references did not disclose a trusted path, “it is basic knowledge that communication in trusted environments is performed over trusted paths” AND, moreover, verifying the trusted command in UNIX over a trusted path is “nothing more than good common sense.” Ex parte Zurko, slip op. at 8. We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support.” Where the Fed. Circ. has stated in no uncertain terms that this particular assessment of basic knowledge AND common sense (these two terms are not used separately but are used in combination), and perhaps presumably all particular assessment of basic knowledge made by the examiner when combined with common sense added by the board, are not based on substantial evidence that was in the case at the time of the first BPAI review. Though, to be sure, what we have is a specific holding, specific to the case. “*This assessment* of …” is indicative of its specificity to only this case, but even if it weren’t, it doesn’t matter because the holding is not relevant to the examiner asserting basic knowledge. They are addressing the situation when an assessment, properly made by the examiner, of what is basic knowledge has been supplemented impermissibly by the board with some “common sense”.

    And then, we see that the Fed. Circ. affirms that the board’s use of expertise may provide sufficient support for conclusions as to peripheral issues, but that with respect to the core findings the board cannot simply reach a conclusion as it did when it stated things about it being common sense, nor can it rely on ITS OWN assertion of basic knowledge that is added to the record during the board proceedings. Notice here that the only thing that the board did was make an assertion that something was common sense, the board did NOT make the assertion that the examiner made as to what was basic knowledge. And they state that the board must find some concrete evidence already in the record, at the time that the appeal goes up to them, to support their findings. I.e. that they need something to base their common sense addition on. And further that to hold otherwise would negate the entire point of appellate review which the board provides, i.e. to decide, based on the record that left the examiner whether or not the issues before them are correct.

    Nowhere in this entire statement:

    Finally, the deficiencies of the cited references cannot be remedied by the Board’s general conclusions about what is “basic knowledge” or “common sense” to one of ordinary skill in the art. As described above, the Board contended that even if the cited UNIX and FILER2 references did not disclose a trusted path, “it is basic knowledge that communication in trusted environments is performed over trusted paths” and, moreover, verifying the trusted command in UNIX over a trusted path is “nothing more than good common sense.” Ex parte Zurko, slip op. at 8. We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, 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. Baltimore & Ohio R.R. Co. v. Aderdeen & Rockfish R.R. Co., 393 U.S. 87, 91-92 (1968) (rejecting a determination of the Interstate Commerce Commission with no support in the record, noting that if the Court were to conclude otherwise “[t]he requirement for administrative decisions based on substantial evidence and reasoned findings — which alone make effective judicial review possible — would become lost in the haze of so-called expertise”). Accordingly, we cannot accept the Board’s unsupported assessment of the prior art.”

    is anything directed to what the examiner must put forward to have substantial evidence, but rather, there is a long statement speaking to what the board must do. Namely, that is to not add stuff to the record (or more specifically that they cannot add their own assertion of common sense to any assertion already in the record of what is basic knowledge).

    In conclusion, it is no wonder the PTO interprets the decision the way it does, since what is being decided is the conduct of the board, specifically the conduct of adding common sense to a rejection made by the examiner, and doing it right in the middle of their review. This is being held because it would detract from the appellate nature of the court, that is, to decide on the issues as they were when the decision to appeal was made. It would detract from that because adding grounds to the rejection may very well change the entire case for the appellant. There is none, zero, discussion about an examiner not being permitted to make assertions of what is basic knowledge, or common knowledge and there is nothing stating that their use in a proper obviousness rejection would be erroneous. Further, there is no discussion about such an assertion that is made not being substantial evidence. There is in fact an instance where the Fed Circ reaffirms that substantial evidence is not limited to “concrete evidence”.

    I will address only limited replies since this might balloon into even more than what I have here, which is obviously more than I wanted at the outset of this reply.

    This of course is all ignoring any impact that KSR would have on the board using common sense in combination with an asserted fact from the examiner. And frankly, it may even overturn the last Zurko in its entirety. But I doubt it, first because the court held there was evidence the contrary, and then because of the part directed to the board’s impermissibly adding common sense in to support the examiner’s rejection, and doing so without having anything to support the addition coming the record as it was at time of BPAI appeal (perhaps if that common sense had been in the record somewhere, asserted by examiner, or in a ref somewhere then Zurko would have gone another way).

    As an interesting aside:

    “When the CCPA decided many of these cases during the 1930’s and early 1940’s, legal authorities had begun with increasing regularity to use the term “clearly erroneous” to signal court/court review, Fed. Rule Civ. Proc. 52(a) (adopted in 1937), and the term “substantial evidence” to signal less strict court/agency review. Stern, Review of Findings of Administrators, Judges and Juries: A Comparative Analysis, 58 Harv. L. Rev. 70, 88 (1944) (describing congressional debates in which members argued for and against applying the “clearly erroneous” standard to agency review “precisely because it would give administrative findings less finality than they enjoyed under the ‘substantial evidence’ rule”).” Which is very instructive, but is not quite the case in all cases of that time.

    Additionally, it appears that the folks prosecuting the case, after having just won at the CAFC appeal promptly submitted a preliminary amendment. Just for LULZ I’m sure. Or maybe because they knew what would come next if they didn’t. The examiner would say it was common sense to do what the board said was common sense and then the BPAI would affirm and so would the CAFC. Funny enough, they did exactly what the examiner wanted them to do in the first place, amend the claims, at the end of a 5-6 year appeal. Gj imo lol.

    *************

    There we are. A bit cleaned up.

    Reply
  65. ffs, here, just have a totally revised edition. It’s way too hard to edit a document of that size on here.

    Reply
  66. Sorry about that the part in

    ******

    ******’s needed to be removed. It’s hard to edit on here, I should put it in word.

    Reply
  67. Dickinson v. Zurko can not be more clear. PTO findings of fact must be supported by substantial evidence.

    Substantial- More than a scintilla (legal definition)? As in, a person of ordinary skill stating what is commonly known perhaps? Could be … but let’s go to what the SC thinks it is.

    “Examiner pronouncements of what is “common knowledge” or “notoriously old and well known” are not substantial evidence.”

    Unfortunately this is where your argument really breaks down and fails horribly, the decision does not say that and you have read it for yourself, you merely like to put words into their mouths. Let’s start at the beg. Particularly relevant is “Indeed, it apparently remains disputed to this day (a dispute we need not settle today) precisely which APA standard–“substantial evidence” or “arbitrary, capricious, abuse of discretion”–would apply to court review of PTO factfinding.” That is to say “We, the SC, would not like to decide if a PTO action must be “arbitrary/capricious” or lacking in “substantial evidence” in order for it to be reversed or set aside even though it may appear that section A and section E of 5 USC 706 can be applied in order to set aside a PTO finding”. Notice, this is the SC saying that it has not been decided as of Zurko whether or not A or E is to be applied to the PTO, or both are to be applied to the PTO. Then the Fed circuit settled that in a subsequent case (that E applies) that very well could be overturned by the SC at any time. But let’s assume that it is not, and E stands as applicable.

    Now we go to SC Zurko. We see that a battle of wills it taking place, PTO v Fed Circ. In fact, we see that the PTO itself was the party WANTING the APA standard rules under 706 to be the one(s?) governing it, RATHER than a special exception to those as the Fed Circ wanted.

    A quick refresher from link to law.cornell.edu

    “The Court of Appeals for the Federal Circuit believes that it should apply the “clearly erroneous” standard when it reviews findings of fact made by the PTO. In re Zurko, 142 F.3d 1447, 1459 (1998) (case below). The Commissioner of Patents, the PTO’s head believes to the contrary that ordinary APA court/agency standards apply. See e.g., In re Kemps, 97 F.3d 1427, 1430—1431 (CA Fed. 1996); In re Napier, 55 F.3d 610, 614 (CA Fed. 1995); In re Brana, 51 F.3d 1560, 1568—1569 (CA Fed. 1995).

    The case before us tests these two competing legal views. Respondents applied for a patent upon a method for increasing computer security. The PTO patent examiner concluded that respondents’ method was obvious in light of prior art, and so it denied the application. See 35 U.S.C. § 103 (1994 ed., Supp. III). The PTO’s review board (the Board of Patent Appeals and Interferences) upheld the examiner’s decision. Respondents sought review in the Federal Circuit, where a panel treated the question of what the prior art teaches as one of fact, and agreed with respondents that the PTO’s factual finding was “clearly erroneous.” In re Zurko, 111 F.3d 887, 889, and n. 2 (1997).

    The Federal Circuit, hoping definitively to resolve the review-standard controversy, then heard the matter en banc. After examining relevant precedents, the en banc court concluded that its use of the stricter court/court standard was legally proper. The Solicitor General, representing the Commissioner of Patents, sought certiorari. We granted the writ in order to decide whether the Federal Circuit’s review of PTO factfinding must take place within the framework set forth in the APA.”

    That is to say that the Fed. Circ is arguing that they should apply the “clearly erroneous” standard, whereas THE PTO believes that ordinary APA rules apply. The federal circuit rests its claim on the fact that there must be an exception to the general APA rules in favor of a MORE STRICT review:

    “The Federal Circuit rests its claim for an exception upon §559. That section says that the APA does “not limit or repeal additional requirements . . . recognized by law.” In the Circuit’s view: (1) at the time of the APA’s adoption, in 1946, the Court of Customs and Patent Appeals (CCPA), a Federal Circuit predecessor, applied a court/court “clearly erroneous” standard; (2) that standard was stricter than ordinary court/agency review standards; and (3) that special tradition of strict review consequently amounted to an “additional requirement” that under §559 trumps the requirements imposed by §706.”

    Thus, the FC argues that 559 requires that there be a stricter requirement than 706 does and it trumps 706. (706 is notably where your support about “unsupported by substantial evidence” comes from http://www.law.cornell.edu/uscode/5/usc_sec_05_00000706—-000-.html NOTE THAT THIS IS WHAT THE PTO IS ARGUING FOR AND NOT AGAINST).

    “See App. to Brief for New York Intellectual Property Law Association as Amicus Curiae 1a—6a (collecting cases), and we conclude that those cases do not reflect a well-established stricter court/court standard of judicial review for PTO factfinding, which circumstance fatally undermines the Federal Circuit’s conclusion.”

    However the SC says the fed circ’s argument is fatally undermined. Because they are the sux and pto is the rox amirite? (x=k for you old timers).

    Going down a bit we get to:

    “But this is something more than a mere appeal. It is an application to the court to set aside the action of one of the executive departments of the government.
    . . . A new proceeding is instituted in the courts . . . to set aside the conclusions reached by the administrative department … . It is . . . not to be sustained by a mere preponderance of evidence. . . . It is a controversy between two individuals over a question of fact which has once been settled by a special tribunal, entrusted with full power in the premises. As such it might be well argued, were it not for the terms of this statute, that the decision of the patent office was a finality upon every matter of fact.” Id., at 124 (emphasis added).

    The Court, in other words, reasoned strongly that a court/court review standard is not proper; that standard is too strict; a somewhat weaker standard of review is appropriate.”

    Where the SC comes to the conclusion that another court had already argued strongly in favor of a less strict review of agency findings because they had been entrusted with full power in the premises and were it not for statute then every PTO decision would be final, period, end of story final, no appeal.

    The SC then goes on to distinguish the difference between what I take to be BPAI (or lower dis court) and Fed Circuit review standards.

    ““Patent Office [decision] must be accepted as controlling upon that question of fact . . . unless the contrary is established by testimony which . . . carries thorough conviction… . [I]f doubtful, the decision of the Patent Office must control.” Id., at 125 (emphasis added).

    It added that the testimony was “not . . . sufficient to produce a clear conviction that the Patent Office made a mistake.” Id., at 129 (emphasis added). But the Court did not use the emphasized words today; it used those words more than 100 years ago. And its reasoning makes clear that it meant those words to stand for a court/agency review standard, a standard weaker than the standard used by “an appellate court in reviewing findings of fact made by the trial court.” Id., at 123.”

    The SC then goes on to remind us that previous courts overwhelmingly felt the PTO deserved defference:

    “In nearly half of the cases, the CCPA explains why it uses its “manifest error” standard by pointing out that the PTO is an expert body, or that the PTO can better deal with the technically complex subject matter, and that the PTO consequently deserves deference. In more than three-fourths of the cases the CCPA says that it should defer to PTO factfinding because two (and sometimes more) PTO tribunals had reviewed the matter and agreed about the factual finding. These reasons are reasons that courts and commentators have long invoked to justify deference to agency factfinding. See Universal Camera, 340 U.S., at 496—497 (intraagency agreement); NLRB v. LinkBelt Co., 311 U.S. 584, 597 (1941) (expertise); Rochester Telephone Corp. v. United States, 307 U.S. 125, 145—146 (1939) (expertise); ICC v. Louisville & Nashville R. Co., 227 U.S. 88, 98 (1913) (expertise); Stern, 58 Harv. L. Rev., at 81—82 (expertise); 2 Davis & Pierce §11.2, at 178—181 (intraagency agreement). They are not the reasons courts typically have given for deferring to fact-finding made by a lower court judge. See, e.g., Concrete Pipe & Products of Cal., Inc. v. Construction Laborers Pension Trust for Southern Cal., 508 U.S. 602, 623 (1993); Stern, supra, at 82—83 (trial court advantages lie in, e.g., evaluation of witness, not comparative expertise). And we think it also worth noting, in light of the pre-APA movement toward standardization discussed above, supra, at 6—7, that the CCPA began to refer more frequently to technical complexity and agency expertise as time marched closer to 1946. Out of the 45 cases in our sample decided between 1929 and 1936, 40% (18 of 45) specifically referred to technical complexity. That percentage increased to 57 (25 of 44) for the years 1937 to 1946.”

    Ultimately, PTO wins the fight against a more strict standard:

    “Given the CCPA’s explanations, the review standard’s origins, and the nondeterminative nature of the phrases, we cannot agree with the Federal Circuit that in 1946, when Congress enacted the APA, the CCPA “recognized” the use of a stricter court/court, rather than a less strict court/agency, review standard for PTO decisions. Hence the Federal Circuit’s review of PTO findings of fact cannot amount to an “additional requiremen[t] . . . recognized by law.” 5 U.S. C. §559.”

    The court then goes on to talk about various other things the Fed circ cited and how they were clearly fallacious arguments and were indeed arse backwards.

    AND THEN, here’s the absolute kick in the teeth for JD et al.’s little proposal about how “substantial evidence” must be some, presumably prior art, “written document” or such.

    “This Court has described the APA court/agency “substantial evidence” standard as requiring a court to ask whether a “reasonable mind might accept” a particular evidentiary record as “adequate to support a conclusion.” Consolidated Edison, 305 U.S., at 229. It has described the court/court “clearly erroneous” standard in terms of whether a reviewing judge has a “definite and firm conviction” that an error has been committed. United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948). And it has suggested that the former is somewhat less strict than the latter. Universal Camera, 340 U.S., at 477, 488 (analogizing “substantial evidence” test to review of jury findings and stating that appellate courts must respect agency expertise). At the same time the Court has stressed the importance of not simply rubber-stamping agency fact-finding. Id., at 490. The APA requires meaningful review; and its enactment meant stricter judicial review of agency factfinding than Congress believed some courts had previously conducted. Ibid.”

    According to this, in order for something to be substantial evidence then a reasonable person would need to accept it as fact. Now, if a reasonable person (say, a jury member) would not accept my official notice as fact the I would happily withdraw it. If however, they would, then I say it stands and is substantial evidence.

    Then the court tells us when applying A is appropriate and when applying E is appropriate:

    “Moreover, if the Circuit means to suggest that a change of standard could somehow immunize the PTO’s fact-related “reasoning” from review, 142 F.3d, at 1449—1450, we disagree. A reviewing court reviews an agency’s reasoning to determine whether it is “arbitrary” or “capricious,” or, if bound up with a record-based factual conclusion, to determine whether it is supported by “substantial evidence.” E.g., SEC v. Chenery Corp., 318 U.S. 80, 89—93 (1943).” (that is to say the fed circuit felt like if standard apa were to be applied it would immunize the PTO from review, but the SC disagrees and finds that it is still subject to review, though a less strict one that the fed circ. felt was needed).

    The court then notes that there are two paths that an appeal can take pto>district>fed circ or pto>fed circ. It notes that in the district path that the fed circ reviews the decision of the district court under “clearly erroneous”:

    “Second, the Circuit and its supporting amici believe that a change to APA review standards will create an anomaly. An applicant denied a patent can seek review either directly in the Federal Circuit, see 35 U.S.C. § 141 or indirectly by first obtaining direct review in federal district court, see §145. The first path will now bring about Federal Circuit court/agency review; the second path might well lead to Federal Circuit court/court review, for the Circuit now reviews Federal District Court factfinding using a “clearly erroneous” standard. Gould v. Quigg, 822 F.2d 1074, 1077 (1987). The result, the Circuit claims, is that the outcome may turn upon which path a disappointed applicant takes; and it fears that those applicants will often take the more complicated, time-consuming indirect path in order to obtain stricter judicial review of the PTO’s determination.”

    Then they explain how they do not feel that the two paths being different creates anomoly and/or hurt the applicant:

    “We are not convinced, however, that the presence of the two paths creates a significant anomaly. The second path permits the disappointed applicant to present to the court evidence that the applicant did not present to the PTO. Ibid. The presence of such new or different evidence makes a factfinder of the district judge. And nonexpert judicial factfinding calls for the court/court standard of review. We concede that an anomaly might exist insofar as the district judge does no more than review PTO factfinding, but nothing in this opinion prevents the Federal Circuit from adjusting related review standards where necessary. Cf. Fregeau v. Mossinghoff, 776 F.2d 1034, 1038 (CA Fed. 1985) (harmonizing review standards).”

    *****

    Further, you won’t concede that anything that they say extraneous to the issue immediately at hand (does 559 exclusion or regular ol’ 706 apply? or in the more recent Zurko link to caselaw.lp.findlaw.com whether or not office say so trumps evidence the contrary) in the previous case is mere dicta, but you are quick to dismiss anything in another case not directly related to the issue in the case as dicta. And you do this EVEN when the SC went out of its way to tell you that they were specifically not deciding if A or E applies to the PTO.

    *****

    In conclusion, two things. One, the SC has stated that they have not determined (as of Zurko in 1999′) whether A or E applies to the PTO’s examination reviews, though they suggest perhaps both do and the fed circ later rules that E was appropriate, and that’s fine. Second, the SC has set forth in no uncertain terms what the “substantial evidence” requirement is, and it is not what JD purports it to be, nor will it ever be, no matter if Fed Circ had said it was something different (which they have not). I take it that your position stands/falls with that determination JD. If you’d like it again, I will provide it, since this has been a long fought battle.

    “This Court has described the APA court/agency “substantial evidence” standard as requiring a court to ask whether a “reasonable mind might accept” a particular evidentiary record as “adequate to support a conclusion.” Consolidated Edison, 305 U.S., at 229. It has described the court/court “clearly erroneous” standard in terms of whether a reviewing judge has a “definite and firm conviction” that an error has been committed. United States v. United States Gypsum Co., 333 U.S. 364, 395 (1948). And it has suggested that the former is somewhat less strict than the latter. Universal Camera, 340 U.S., at 477, 488 (analogizing “substantial evidence” test to review of jury findings and stating that appellate courts must respect agency expertise). At the same time the Court has stressed the importance of not simply rubber-stamping agency fact-finding. Id., at 490. The APA requires meaningful review; and its enactment meant stricter judicial review of agency factfinding than Congress believed some courts had previously conducted. Ibid.”

    Now that such a question as to what constitutes substantial evidence has been settled by the SC we turn our attention to the more recent Zurko.

    link to caselaw.lp.findlaw.com

    Right off the bat we see why Zurko is still held to be reversed by the Fed Circ.

    “We now revisit the merits of our decision in Zurko I, applying the proper APA standard of review. In doing so, we conclude that the outcome of this case does not change with the application of this new standard of review. Because the factual findings underlying the Board’s decision are not supported by substantial evidence, we reverse.”

    In other words, in the Fed Circ’s opinion, the Office did not present evidence that a reasonable person would consider convincing. I agree, the case in ZURKO is clear error, lack of substantial evidence, and arbitrary and capricious all rolled into one. The evidence is woefully lacking, it is a slightly “esoteric” art question, and the other side has evidence the contrary (though I think they produced that at trial and not before appeal). And the assertion that it is common sense to send “trusted” signals along “trusted” paths, with the “trusted paths” not even in the art supplied, nor having notice taken of being in existence, is so off base it makes my mind reel. Be aware here that the office DID NOT take notice that the trusted paths existed in the prior art and we obvious to use there, they took the position that trusted paths are INHERENT or IMPLICIT. Then the examiner asserted that “it is basic knowledge that communication in trusted environments is performed over trusted paths.”. This is not a taking of notice of the existence of “trusted paths” in the prior art, but is rather an assertion that something is basic knowledge. The board then confirmed that it was obvious to combine the “references” because of certain reasons.

    The Fed circuit originally held that the inherency/implicit argument was plainly false sense neither reference (this EXCLUDES the assertion by the examiner) teaches “communication with the user over a trusted pathway”, which even when compared to the examiners assertion of basic knowledge (not even common knowledge) that “it is basic knowledge that communication in trusted environments is performed over trusted paths” which fails to address communication with the user over trusted paths.

    Then we find again that even the Fed Circ knows “Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”” And that VERY IMPORTANTLY “A review under this standard “involves an examination of the record as a whole, taking into consideration evidence that both justifies and detracts from the agency’s decision.”” i.e. that if there is evidence the contrary then it must be considered when determining if the evidence is substantial or not (and this is relevant in this case as there was evidence the contrary). Then, again they say “The substantial evidence standard has been analogized to the review of jury findings, and it is generally considered to be more deferential than the clearly erroneous standard of review. Zurko III,”

    Finally they address directly the issues and say “As to this first issue, the Commissioner apparently concedes that neither the UNIX IDS disclosure nor FILER2 teaches communications between the user and the trusted environment along a trusted path.” and then they say that it is impremissible to allow the support by alternative reference (which I assume the PTO dug up after the BPAI decision, since the board based the decision only on the two references). And to this issue they say “The Commissioner also cannot now mend the Board’s faulty conclusion of obviousness by substituting these alternative references for those relied upon by the Board.”

    Finally, we arrive at the crux of the matter “Finally, the deficiencies of the cited references cannot be remedied by *the Board’s* general conclusions about what is “basic knowledge” or “common sense” to one of ordinary skill in the art. As described above, the Board contended that even if the cited UNIX and FILER2 references did not disclose a trusted path, “it is basic knowledge that communication in trusted environments is performed over trusted paths” AND, moreover, verifying the trusted command in UNIX over a trusted path is “nothing more than good common sense.” Ex parte Zurko, slip op. at 8. We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support.” Where the Fed. Circ. has stated in no uncertain terms that this particular assessment of basic knowledge AND common sense (these two terms are not used seperately), and perhaps persumably all particular assessements of basic knowledge made by the examiner when combined with common sense added by the board, are not based on substantial evidence. Though, to be sure, what we have is a specific holding, specific to the case. “*This assessment* of …” is indicative of its specificity to only this case, but even if it weren’t, it doesn’t matter because the holding is not relevant to the examiner asserting basic knowledge. They are addressing the situation when an assessment, properly made by the examiner, of what is basic knowledge has been supplemented impermissibly by the board with some “common sense”.

    And then, we see that the Fed. Circ. affirms that the board’s use of expertise may provide sufficient support for conclusions as to peripheral issues, but that with respect to the core findings the board cannot simply reach a conclusion as it did when it stated things about it being common sense, nor can it rely on ITS OWN assertion of basic knowledge that is added to the record during the board proceedings. Notice here that the only thing that the board did was make an assertion that something was common sense, the board did NOT make the assertion by the examiner as to what was basic knowledge. And they state that the board must find some concrete evidence already in the record, at the time that the appeal goes up to them, to support their findings. And further that to hold otherwise would negate the entire point of appellate review which the board provides, i.e. to decide, based on the record that left the examiner whether or not the issues before them are correct.

    Nowhere in this entire statement:

    Finally, the deficiencies of the cited references cannot be remedied by the Board’s general conclusions about what is “basic knowledge” or “common sense” to one of ordinary skill in the art. As described above, the Board contended that even if the cited UNIX and FILER2 references did not disclose a trusted path, “it is basic knowledge that communication in trusted environments is performed over trusted paths” and, moreover, verifying the trusted command in UNIX over a trusted path is “nothing more than good common sense.” Ex parte Zurko, slip op. at 8. We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, 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. Baltimore & Ohio R.R. Co. v. Aderdeen & Rockfish R.R. Co., 393 U.S. 87, 91-92 (1968) (rejecting a determination of the Interstate Commerce Commission with no support in the record, noting that if the Court were to conclude otherwise “[t]he requirement for administrative decisions based on substantial evidence and reasoned findings — which alone make effective judicial review possible — would become lost in the haze of so-called expertise”). Accordingly, we cannot accept the Board’s unsupported assessment of the prior art.”

    is anything directed to what the examiner must put forward to have substantial evidence, but rather, there is a long statement speaking to what the board must do. Namely, that is to not add stuff to the record (or more precisely they cannot add their own assertion of common sense to any assertion already in the record of what is basic knowledge).

    In conclusion, it is no wonder the PTO interprets the decision the way it does, since what is being decided is the conduct of the board, specifically adding common sense to a rejection made by the examiner. This is being held because it would detract from the appellate nature of the court, that is, to decide on the issues as they were when the decision to appeal was made. It would detract from that because adding grounds to the rejection may very well change the entire case for the appellant. There is none, zero, discussion about an examiner not being permitted to make assertions of what is basic knowledge, or common knowledge and there is nothing stating that their use in a proper obviousness rejection would be erroneous. Further, there is no discussion about such an assertion that is made not being substantial evidence. There is in fact an instance where the Fed Circ reaffirms that substantial evidence is not limited to “concrete evidence”.

    I will address only limited replies since this might balloon into even more than what I have here, which is obviously more than I wanted at the outset of this reply.

    This of course is all ignoring any impact that KSR would have on the board using common sense in combination with an asserted fact from the examiner. And frankly, it may even overturn the last Zurko in its entirety. But I doubt it, because this ruling is directed moreso to the board’s impermissibly adding common sense in to support the examiner’s rejection, and doing so without any support from anything in the record (perhaps if that common sense had been in the record somewhere, asserted by examiner, or in a ref somewhere then Zurko would have gone another way).

    As an interesting aside:

    “When the CCPA decided many of these cases during the 1930’s and early 1940’s, legal authorities had begun with increasing regularity to use the term “clearly erroneous” to signal court/court review, Fed. Rule Civ. Proc. 52(a) (adopted in 1937), and the term “substantial evidence” to signal less strict court/agency review. Stern, Review of Findings of Administrators, Judges and Juries: A Comparative Analysis, 58 Harv. L. Rev. 70, 88 (1944) (describing congressional debates in which members argued for and against applying the “clearly erroneous” standard to agency review “precisely because it would give administrative findings less finality than they enjoyed under the ‘substantial evidence’ rule”).” Which is very instructive, but is not quite the case in all cases of that time.

    Additionally, it appears that the folks prosecuting the case, after having just won at the CAFC appeal promptly submitted a preliminary amendment. Just for LULZ I’m sure. Or maybe because they knew what would come next if they didn’t. The examiner would say it was common sense to do what the board said was common sense and then the BPAI would affirm and so would the CAFC. Funny enough, they did exactly what the examiner wanted them to do in the first place, amend the claims, at the end of a 5-6 year appeal. Gj imo lol.

    Reply
  68. “Mooney, don’t encourage him.”

    Sorry, boss.

    Reply
  69. “1) “So, if you all are convinced that THIS ruling supports the assertion that all that is needed to respond to the taking of official notice is simply saying “No, it’s not.”, please point out that language to me.
    Honest request. I will wait for your quotes from the decision.”

    I pointed it out. Agency (e.g. PTO) findings that are not supported by substantial evidence are unlawful and must be set aside.

    Hello???!!!!!!

    BTW, I never said all that is needed to respond to the taking of Official Notice is simply saying, “No, it’s not.” What I said was all that is required to traverse the Official Notice is a request/demand for substantial evidence support.

    Maybe when you stop serially misquoting me, I’ll be able to provide you an actual response.

    I already explained to you that I’m not required to rebut your “finding” when you take Official Notice. The law places the burden on you to find the facts. Your opinion as to what constitutes the facts are not facts. Until you support your findings with substantial evidence, there is nothing to rebut. So there is no burden to put in writing some rebuttal of the taking of notice. No rebuttal is required at all. Again, do you seriously not understand that, or are you just being difficult?

    Okay, I’m DYING to hear your explanation as to where the substantial evidence is.

    Can you wait for me to make some popcorn before answering my question and posting your “interpretation”? This is gonna be good.

    Reply
  70. JohnDarling, same crap, from you ,different post.

    Still waiting for for answers to MY questions. I’ll repeat them so you don’t strain yourself trying to find them.

    1) “So, if you all are convinced that THIS ruling supports the assertion that all that is needed to respond to the taking of official notice is simply saying “No, it’s not.”, please point out that language to me.
    Honest request. I will wait for your quotes from the decision.”

    2) “WHY is it a burden on the attorney to actually put into writing SOME rebuttal of the taking of notice?”

    You answer mine, I’ll answer yours, grasshopper.

    MVS

    Reply
  71. Examiners are fact finders. They do not have magic powers to establish facts just by pronouncing, “The examiner takes Official Notice that X is well known.”

    Do you seriously not understand that?

    As you’ve acknowledged, Dickinson v. Zurko clearly requires PTO fact finding to be supported by substantial evidence, i.e. evidence IN THE RECORD. Findings that are not supported by substantial evidence are unlawful and must be set aside.

    “IFF one interprets ‘official notice’ as being ‘unsupported by substantial evidence’.”

    MVS, here’s a little test for you: “The examiner takes Official Notice that X is well known.” Please point to the substantial evidence in this “finding.” (Here’s a hint: don’t spend too much time looking for it.)

    Your pronouncements about what is well known are nothing more than your opinion, until they are supported by substantial evidence. Graham requires the examiner to resolve four factual inquires. One of those factual inquires is the scope and content of the prior art. Resolution of that factual inquire requires substantial evidence support. Again, evidence in the record. Your opinion of what the scope and content of the prior art is not evidence, and I don’t have to rebut your opinion as to what the facts are. I have to rebut the facts. Your opinion is not a fact. The burden is on you to establish the facts and support them by substantial evidence. One more time, substantial evidence is evidence in the record.

    Glad to hear that you’re up on all this stuff like stipulations. However, had you bothered to get off YOUR high horse and go to law school and study such things as civil procedure, and evidence, and administrative law, etc., you would understand that a stipulation requires the agreement of the parties. So when the examiner says, “I take Official Notice that X is well known,” what the examiner is really saying is, “Can’t we agree to stipulate to the fact that X is well known?” When applicant responds, “Provide some documentary evidence pretty please,” then applicant is saying to the examiner, “No, we can’t stipulate to the fact that X is well known.”

    In the world of litigation, if you unreasonably refuse to stipulate to certain facts, the judge can smack you upside the head (e.g. sanction you or require that you pay the other party’s cost to establish the fact). But you’re an expert on litigation, right, so what am I telling you for? I’m sure your experiences in responding to requests for admission are legion.

    In the world of patent prosecution, where the burden is clearly on the PTO, and that burden clearly requires findings of fact supported by substantial evidence, and the determination of obviousness requires consideration of the subject matter as a whole, applicants are perfectly within their rights to demand substantial evidence.

    Here’s how I really know that the “adequate traversal” requirement of MPEP 2144.03C is horsesh#t: even you don’t follow it.

    I’ll be waiting for your answer to the test. Your “interpretation” as to where the substantial evidence is should be quite hilarious.

    Mooney, don’t encourage him.

    Reply
  72. “So, if you all are convinced that THIS ruling supports the assertion that all that is needed to respond to the taking of official notice is simply saying “No, it’s not.”, please point out that language to me. …Second honest question that I want answered: WHY is it a burden on the attorney to actually put into writing SOME rebuttal of the taking of notice?”

    Good questions, MVS.

    Reply
  73. OK, I have (again) read the Dickinson v. Zurko decision. I still do not get where you all are coming from. If it is so plain, it should be very simply for you to do (& do not refer back to that Bey article; 23 pages of wondering drivel)

    What I get out of reading the decision is the following points:

    1) The case is directed to what level of review to apply – court/agency or court/court. And it extensively goes over the history from pre-APA onward of the various language and standards used to make reviews for the agency.

    2) The only mention of what the rejection was is that the claims were rejected over “prior art”. And there was apparently a question as to what standard of review of the rejection should be applied (“clearly erroneous” or the standards of the APA).

    3) The ruling stated “Absent an exception, a reviewing court must apply the APA’s court/agency review standards to agency factual findings.”

    4) The closest that I found to anything about the topic of our interest (official notice) was on page 152 where the decision cites & quotes section 706 and it’s discussion of the scope of review of the agency factfinding. It (706) states a “reviewing court shall … hold unlawful and set aside agency … factfindings … found to be … (E) unsupported by substantial evidence in a case subject to sections 556 and 557 …”

    5) No where in the decision is “official notice” EVER explicitly mentioned. The term “notice” does not appear in the decision.

    6) There is a dissenting opinion and the ruling was a 6-3 decision.

    Based on the preceding, the only way I can see that this can maybe be used to support your positions is item 4.
    IFF one interprets “official notice” as being “unsupported by substantial evidence”.
    And IFF one interprets that saying “No, it’s not.” as sufficient to make the original assertion as “unsupported”. (And, I DO understand that “facts” can be stipulated (i.e., uncontested) or can be not stipulated and are then rebutted, and the differences between.)
    And this interpretation really has nothing to do with this decision but is an interpretation of 706 from the APA.

    However, this ruling, based on the plain words in the decision, does not make this connection. It is something that is taken and then used to try to support a position.

    So, if you all are convinced that THIS ruling supports the assertion that all that is needed to respond to the taking of official notice is simply saying “No, it’s not.”, please point out that language to me.

    Honest request. I will wait for your quotes from the decision.

    Second honest question that I want answered: WHY is it a burden on the attorney to actually put into writing SOME rebuttal of the taking of notice?

    MVS

    Reply
  74. “However, by doing that you never offer the board, Fed. Circuit, and beyond an opportunity to rule on the legality of the office’s position.”

    Red Dog,

    As I explained previously, PTO (mis)management is never going to let one case like that slip through because they know the “inadequate traversal” nonsense would get shot down. And if such a case did manage to find its way onto BPAI’s docket, they would simply remand with orders to provide the documentary evidence that was requested.

    The whole “inadequate traversal” requirement is made up gobbledygook. It is there to give the examiners some device to waste applicant’s time and money in the hopes they give up and go away. It works. Sometimes. But when it’s tried on somebody like me, and I call shenanigans on them, they say, “Oh, okay, here’s what you asked for” (which is usually something completely non-analogous, but hey, I appreciate the effort).

    PTO (mis)management is never going to allow such a convenient little device like that get taken away by exposing it to review by a group of legally educated individuals.

    Keep citing the requirement. And smile when you frustrate somebody into giving up. And back down when it’s me.

    Very simple.

    Reply
  75. “Red Dog”, you are right. And maybe we will if we (I) find a good test case.

    Just like if we could get some applicant to decide to fight some of the weird & stup1d 101 interpretations & rejections we are forced to make under the “guidelines” (e.g., making the claims say “computer readable” rather than “machine readable” and others as worthless). Unfortunately, most applicant’s case & make the change rather than fight it to the board & beyond. We (examiners, anyhow) would LOVE to see one go up. Nothing that clear gone up yet that I have heard (and I don’t mean things like Bilski etc.)

    MVS

    Reply
  76. MVS,
    I understand why you add the references and why it is a good thing (helping the applicant, not losing an appeal, etc.) However, by doing that you never offer the board, Fed. Circuit, and beyond an opportunity to rule on the legality of the office’s position. By letting one case slip through to the board without adding the reference, this debate would be settled once and for all. I submit that the benefit of having this question firmly decided by a body with authority would be of greater weight than the harm to one applicant by not throwin in the reference.

    Reply
  77. JohnG,

    I know. I get you. I am familiar with arguing before the Board as well. I have gone up there for 4-5 cases & presented arguments when the appellant requested oral arguments. We were affirmed. It was enjoyable in its way.

    MVS

    Reply
  78. It is what it is MVS. I was just kidding. I also had to argue (in oral arguments as an agent) two losing cases before the Board. They had a chance before KSR, which is when we wrote the appeal, but now each had very little no chance at all for allowance. We did our best, but there wasn’t much left. I wish I hadn’t written those appeals (in light of KSR), so right now it is weighing heavy on my mind. Okay, now I’m over it :)

    Reply
  79. “From my point of you it is (yes) partly a CYA position. If you get a board member that does not agree with the MPEP interpretations you have the back-up position & can not have the appeal decided on a technicality (bad for everyone and a waste of time for everyone. I don’t want to get a reversal back because of a ruling counter to the MPEP and then to have to supply the reference & reopen. Waste of time & money.)

    And, 2ndly (though some of you may not believe this, it is true), I do it as a help for the applicant. Make the reference of record. It will make clear that the element IS conventional and not worth arguing (thus taking an issue out of play & making my life easier in the process). And, if that is the main argument (which I have seen), it makes the attorney look somewhat foolish in the applicant’s eyes.”

    ROFLMAO!!!!!!

    Is it possible that the APJ doesn’t agree with the “MPEP interpretation” because the interpretation is legally incorrect? BTW, failing to meet your burden of finding facts supported by substantial evidence is not a “technicality.”

    Dickinson v. Zurko can not be more clear. PTO findings of fact must be supported by substantial evidence. Examiner pronouncements of what is “common knowledge” or “notoriously old and well known” are not substantial evidence.

    Nobody who understands the law can dispute that. Unfortunately, PTO (mis)management is utterly devoid of people who understand the law. Exhibit 1: the final rules on continuations and claim examination.

    Your best and brightest wrote those. And got their teeth kicked in in USDC. And will suffer the same fate at the Fed. Cir.

    Still think your “MPEP interpretation” is anything but a pile of doo doo?

    Reply
  80. “JohnG”,

    Personally, while I generally agree with a lot of the sentiments in KSR, I think that way too much has been made of it.

    When you really get down to it, the biggest change (from an examination POV) was that the motivation did not have to come from the references. So, now you can argue, as motivation, things like “common sense” or “obvious to try” (personally leery of that one being badly abused). Thing is, the decision will just make things a little easier for good examiners but will make bad examiners work even worse. So, over all, it really isn’t a net plus for the “system” as a whole. My opinions, anyhow.

    Now, if you want to talk about fighting the various rules packages, I am with you all the way. Bad rules AND bad rule making. They MUST go away for good.

    MVS

    Reply
  81. “That is some of what has led to the downfall of many civilizations in the past (& looks like where we may be headed).”

    It sounds like you’re reading too many of those “end of the American empire” books that are all the rage now.

    You might want to switch to something a little more light hearted. I can lend you some of my wife’s Dorothea Benton Franks books. They’re real pick-me-ups.

    Reply
  82. “Red Dog”,

    I really am not interested in being an attorney at this point in my life. More important things to do personally. And, I do not have the personality to be a political appointee/hack. I tend to speak my mind. And have, at various meetings, asked Doll & Dudas & Love & Rolla some very pointed (and not politically expedient) questions.

    As for the argument, in posts like this, I do tend to ramble rather than take my time to really lay out everything. And I don’t tend to proof read a lot when I write this out (unlike at work). Get it written & get back to work (though working at home does allow a little more flexibility :)

    Really, he keeps changing his argument and tries to say he said or didn’t say something before. And, my point earlier is that I did not agree with his (or Bey’s) reasoning. After that, he went into attack mode & I returned in kind.

    He does not seems to accept that a couple of points (1) people CAN interpret things differently, particularly when almost every case will be arguable as to what the “real” meaning of the decision was, which is the case here with the way the MPEP interprets the decision & the way he does (there are very few decisions that are clear-cut, black-and-white decisions). He can not accept that there CAN be an opinion different than his; and (2) from an examiner POV, you can either follow the MPEP or go off on your own. Following the MPEP gives you some backing in your decisions. Going on your own puts you on a limb with someone having a saw in their hand.

    As for the position on my “belts and suspenders approach”, I would have to disagree with you.

    From my point of you it is (yes) partly a CYA position. If you get a board member that does not agree with the MPEP interpretations you have the back-up position & can not have the appeal decided on a technicality (bad for everyone and a waste of time for everyone. I don’t want to get a reversal back because of a ruling counter to the MPEP and then to have to supply the reference & reopen. Waste of time & money.)

    And, 2ndly (though some of you may not believe this, it is true), I do it as a help for the applicant. Make the reference of record. It will make clear that the element IS conventional and not worth arguing (thus taking an issue out of play & making my life easier in the process). And, if that is the main argument (which I have seen), it makes the attorney look somewhat foolish in the applicant’s eyes.

    That clear up my position on that any?

    MVS

    Reply
  83. “That only shows no moral conviction and no beliefs of your own..” says the guy who claims to follow PTO (mis)management policy regardless of its clear illegality.

    Lucky for us though, as you acknowledged, you don’t really follow PTO policy.

    Thanks again for that.

    Reply
  84. “And blind adherence to what has been done before (call it ‘tradition’ or ‘precedence’ or what you will) without questioning what was done & why is for those of very narrow minds. That is some of what has led to the downfall of many civilizations in the past (& looks like where we may be headed).”

    If you went to law school, you would understand that our common law jurisprudence, which is the envy of the world, does not rely on “blind adherence.”

    Alas.

    Reply
  85. Darn MVS, I with you if you want to fight KSR! That is a bad decision and I believe you examiners should ignore it! Ha ha

    Reply
  86. Sorry to but in here Red Dog, but I had a conversation today with an SPE friend of mine where we discussed such an exchange. I explained to him that about two years ago I called the personnel guy at the PTO and asked if there was a training position that I might be able to fill there. I explained my background and experience and even offered to examine half the time.

    He said the best he could give me was a GS-11 junior examiner position, which would have been about a 100K drop in salary (not to mention the outright insult – I was a good primary examiner). My SPE buddy said that we would have to go to Congress to allow them to hire someone like me as a manager/trainer/examiner.

    Meanwhile, someone like Margret Peterlin, who had absolutely no patent experience, is hired as an Assistant PTO Director!

    Reply
  87. “JohnDarling” asked “amirite?”

    Answer: NO!

    I don’t listen/read the types of garbage you cite (“the evening news or read some snippet in the “News of the Weird” section of the local, free, weekly newspaper”). Waste of my time.

    And blind adherence to what has been done before (call it “tradition” or “precedence” or what you will) without questioning what was done & why is for those of very narrow minds. That is some of what has led to the downfall of many civilizations in the past (& looks like where we may be headed).

    Questioning the decision of a judge (or even the whole Supreme Court) is both reasonable and a positive thing.

    If they were infallible, where would all the descendents (literal and figurative) Dred Scott be?
    Or why not question the rational behind Roe v Wade?
    And should we just accept every questionable or later overruled court decision like good little automatons? Only to change our position 180 degrees when the decision is later changed. That only shows no moral conviction and no beliefs of your own. Just that what you are told is right and don’t ask questions. Sorry, I DO NOT buy that idea.

    Now, what couple words are you going to try to pull out & twist this time?

    MVS

    Reply
  88. MVS,
    JD may be a bit coarse, but he is right. (In this case about your belts and suspenders approach being a cop-out for not truly believing in the MPEP traversal of notice position.) His logic is clear, concise, and superior to your argument. This is likely due to his training in.. you guessed it.. law school. With your inside knowledge, you could be a real asset to the patent community by going to law school and learning the correct way to think, practicing a few years on the dark side, and then heading into PTO management with an understanding of correct legal reasoning and perspective of where those of us working on the “other side” are coming from. I know… wishful thinking.

    Reply
  89. “The Mad Prosecutor”,

    I do know that there is a definite difference between an agent & an attorney with a reg #. And there is a big difference in their training (never said their wasn’t; was responding to someone’s b$). He11, if I was going to obtain a patent, I would want to get the best patent prosecutor attorney I could afford. One that also was very knowledgeable about litigation (even if they don’t actively litigate). If they do not know what is likely to come up in litigation, their prosecution experience will only go so far. The two disciplines are obviously linked.

    Most of what I said above was directed SOLEY at one “attorney” (don’t want to say “person”; too dignified) and any slight towards you, pds, SF, and others is not intended. You all are more reasonable and willing to listen to others & their opinions. He is little more than a very little attack dog (chihuahua?) and should be treated as such. And be given as much as any other that has a loud bark & no bite.

    MVS

    Reply
  90. I hear you guys, and no offense taken. But, please put “most” before “patent agents” for a more accurate statement:-). I have been in this business for about 15 years now, and learned from the best of the lawyer prosecutors. I even trained new attorneys about patent law as well as Office procedure. I know there are boundaries (lawyer vs. agent territory), but I do know what is inside mine and a lot of that intersects with the lawyers.

    Funny thing is that I too worked on litigation cases. Obviously I couldn’t stand in court, but teams work on these things and I was part of that from time to time. It was a good learning experience and I highly recommend working on at least one. However, it always got in the way of prosecution deadlines and such.

    Reply
  91. “And I am far from ‘uneducated’ just because I didn’t attend a law school to twist my mind to believe things like a burglar in my house has a right to sue me if he gets her while stealing my property.”

    No, you’re uneducated because you watch the evening news or read some snippet in the “News of the Weird” section of the local, free, weekly newspaper about such a case that is written by a legally ignorant “journalist” and conclude that you “know what the law is.”

    If you’d bothered to go to law school, rather than pat yourself on the back for doing such an excellent job of retaining your bed rock moral principles, you would have learned about a property owner’s duty, including those to trespassers.

    But that would require you to actually learn something. And to consider pesky things like facts. And then try to understand how the case law develops over the hundreds of years that courts have been deciding cases such as these.

    You don’t want to do any of that. Because you already know everything. As 6k would say, “amirite?”

    I’m having a hard time believing that you’re as capable of impartially considering evidence and arguments as you claim to be.

    Reply
  92. As a lawyer, I have an understanding of case law, infringement, enforcement, etc. – so much and so many issues that are not known or understood by a patent agent. It is pretty ridiculous, in my opinion, to not understand that there will be a huge difference (in general) in the worth of a patent prosecuted by a lawyer as compared to a patent agent.

    Reply
  93. “Oh, and is true that most COMPETENT IP lawyers become litigators. And that it is only the ones that can not cut litigation stick with prosecution?”

    I don’t think so. I do patent prosecution, and went to law school. I have seen many incompetent patent litigators, who have the bill by the hour mentality and no real understanding of efficiency, and do an adequate job simply because they have all the time in the world in which to do it. They lack any real understanding of what it takes to obtain patent protection.

    I also think that the best patent prosecutors did attend law school/are not patent agents. You could represent yourself in a divorce or bancruptcy without going to law school. But the practicing lawyer does a better job.

    Reply
  94. “Really a sad, sad response, JohnDarling. I expected better from you.”

    You really are a slow learner. :-)

    You said “as for being an attorney.” An agent is not an attorney. Sorry. (And no offense JohnG, luv ya man!). I use the term “practitioner” to mean one who practices. Law that is. There’s more to law than patent prosecution. But you wouldn’t know that. Passing the patent bar is not going to make you an attorney. Or give you any understanding of administrative law, evidence, etc. Sorry. Reading cases, no matter how many, with no training isn’t doing you much good, as evidenced by your posts. Do you Sheperdize all those cases your read? (“Shep, er, huh, what?” LOL) Keep reading though.

    “I just do not believe in the ways all too many attorneys will twist the laws in unscrupulous ways. And they get those ideas from where? Law school.”

    Your fantasies about what is “taught” in law school are hilarious. Keep ‘em coming. It’s always funny to hear somebody dismiss several hundred years of Anglo-American jurisprudence based on their misunderstanding of one aspect of one common law principle.

    “And, JohnDarling, you are the arrogant type that give all attorney’s a bad name.”

    Wow! I didn’t know I was that influential. I’m not sure I’m prepared to take all the credit though. I’m not that greedy!

    “Oh, and is true that most COMPETENT IP lawyers become litigators. And that it is only the ones that can not cut litigation stick with prosecution?

    Actually, there are lots of “IP litigators” who are not qualified for the patent bar (i.e. cannot get a registration number). (Not that those folks can’t be excellent attorneys, but they are not patent attorneys.)

    And those that can’t stick with prosecution stick with what? Examination? LOL

    Nice try though.

    “Just what I have heard from those that have gone out there & progressed to litigation. And that is the way it seems based on what I see a lot. :)”

    Really? What do you see a lot? Do you see a lot of responses written by “litigators”? How do you know they are “litigators”?

    You’re not as funny as 6k. But you are running a really close second.

    6k, you better jump in here before MVS takes the crown of most ridiculous poster.

    Reply
  95. “Oh, and is true that most COMPETENT IP lawyers become litigators. And that it is only the ones that can not cut litigation stick with prosecution? ”

    Ruh-roh.

    Reply
  96. Really a sad, sad response, JohnDarling. I expected better from you.

    I KNOW the MPEP is not law. I even basically SAID it verbatim (“I know they do not have the force of law)”) See above. I never said the MPEP was “law”. Again, picking one line out of context. Typical. REAL typical.

    And, yes, you actually do not need to have gone to law school to be a practitioner. Just pass a test & you get your #. And really not that hard of a test when you get down to it. You actually do not need to go to law school to prosecute.

    And, you seem to forget, examiner’s are not ANYONE’S “advocate”. We are here to find & evaluate the evidence IMAPRTIALLY. You seem to forget that. Personally, I do not care if the applicant gets their patent or not. If they are entitled to it, based ON THE EVIDENCE, I pass it out. If not, it gets rejected. BY THE BOOK. ;)

    And, I am VERY good at finding & evaluating IMPARTIALLY. UNlike some people that have an axe to grind.

    And I am far from “uneducated” just because I didn’t attend a law school to twist my mind to believe things like a burglar in my house has a right to sue me if he gets her while stealing my property. If that is what law school teaches you to believe, or worse, what our legal system has become, I want no part of being one of “them”. You can learn an awful lot by simply reading (court decisions, books on law, where our legal system evolved from, etc.) without the formal classes. & I like to read a lot. And do!

    I DO believe in evidence, right to FAIR trial, patent protection (legal monopoly), that those that break the law should be punished accordingly, and the rest. I just do not believe in the ways all too many attorneys will twist the laws in unscrupulous ways. And they get those ideas from where? Law school.

    Oh, you you mean law classes like (lack of) “ethics”? :)

    And, JohnDarling, you are the arrogant type that give all attorney’s a bad name. You always KNOW that you are right and all else are wrong. Get off you high horse, already.

    Oh, and is true that most COMPETENT IP lawyers become litigators. And that it is only the ones that can not cut litigation stick with prosecution? Just what I have heard from those that have gone out there & progressed to litigation. And that is the way it seems based on what I see a lot. :)

    MVS

    Reply
  97. “Until then, we go “BY the book” which is EXACTLY what you always say you want :)”

    Never said that. That’s a figment of your imagination. Said I wanted you to obey the law. The MPEP is not the law. The fact that you can’t understand that is simply puzzling. It makes any attempt at dialog with you rather pointless.

    “And your statements that ‘As a practitioner, I make all of the arguments that I think I need to make. I don’t throw in every possible argument, and I use my practice experience to evaluate the strength of each of my arguments and which order to present them.’ is absolutely NO different from what I said. You just don’t think that someone else should do the same as you. Well, junior, too bad.”

    Sorry, but no. You admitted that you don’t follow PTO policy. PTO policy is supposedly that if the applicant’s traversal of the examiner’s reliance on Official Notice is not “adequate,” then the examiner is supposed to explain why the traversal is not adequate and consider the facts taken notice of as admitted by applicant. You clearly stated that you supplied the evidence if applicant requested it, regardless of whether the traversal was “adequate.” So you don’t follow PTO policy. Thank you for not being so silly.

    “And, as for being an attorney, that [sic] God that I am not! (Could have if I wanted. Thought about it. Even easily passed the LSATs.”

    Uhm, it takes a little more to become a practitioner than “passing the LSATs” (whatever that means).

    The fact that you revel in remaining uneducated in areas that would clearly help you do your job better, e.g. administrative law, evidence, etc., speaks volumes about you. And what it says isn’t good.

    Had you gone to law school, you would have found that it teaches you to evaluate evidence objectively and draw conclusions that you can persuasively advocate. But you “saw the light” and chose to remain ignorant. Oh well.

    I really wish I practiced in your area too. I would have enjoyed mopping the floor with you.

    Reply
  98. JohnDarling, I REALLY wish you practiced in the area I work. Could have been fun. Had one attorney act like you indicate you do (above) and I called him on his garbage when he tried to push around me & a junior examiner. After that he became very meek & mild. Like about any bully. And that is exactly like what you come off here.
    Whether you like it or not, if the examiner follows the guidelines of the MPEP (and Yes, I know they do not have the force of law) the examiner is perfectly in the right from a PTO POV. Those are our guidelines. When they change, we will change accordingly! Until then, we go “BY the book” which is EXACTLY what you always say you want :) (Or is it “by the book” when it suits your purposes?)

    And your statements that “As a practitioner, I make all of the arguments that I think I need to make. I don’t throw in every possible argument, and I use my practice experience to evaluate the strength of each of my arguments and which order to present them.” is absolutely NO different from what I said. You just don’t think that someone else should do the same as you. Well, junior, too bad.

    Now, to quote Johnny Storm “Flame on”: :)
    With every post your credibility drops. You have gone from someone that usually seems somewhat reasonable to the Mooney/6K level. I think 6K has had a bad influence on you.

    And, as for being an attorney, that God that I am not! (Could have if I wanted. Thought about it. Even easily passed the LSATs. Saw the light soon enough, thankfully.) I have seen how law school has corrupted the minds of too many people. From being reasonable people (particularly with engineering degrees and understanding things like a scientific method) that can reason out problems with evidence to people that twist things to meet their own ends with no care as to how extreme & tortuous the “logic” really is.

    And your responses are SOOOO typical of attorney B$. Pull a few words or a phrase out of context, twist it to fit you own twisted ideas, and throw it back on the original person even though what you picked out now no longer has any real resemblance to the original statements. Is you picture in the dictionary next to “stereotypical attorney”? It should be! Next time try reading the WHOLE post and IN CONTEXT b4 responding with more of you garbage!
    “Flame off”

    That felt gooood! :)

    Now back to work…

    MVS

    Reply
  99. MVS,

    Your comments are hilarious. Dickinson v. Zurko is the final word on the burden on the PTO. I hardly need to latch onto it. You also seem to have missed Ms. Bey’s discussion of Oetiker and Deuel and all of the other cases that clearly state the burden of proof to establish a prima facie case is on the PTO.

    I had never read Ms. Bey’s article until 6k posted it. But your argument that I just concluded the “adequate traversal” requirement is BS is BS. :-)

    I’ve cited Oetiker and Dickinson v. Zurko to examiners many times. I have actually studied the law (i.e. the APA and the case law) and as a practicing attorney (9+ years and still going) was able to conclude on my own that the “adequate traversal” requirement had zero basis in the law. And I told examiners as much in responses. I recall a conversation I had with a friend who is an SPE. I was talking to him about one of my case’s one of his junior’s was handling and he told me he would need to check my response to see if my response was “adequate.” I laughed and told him I requested some documentary evidence and that I expected to see it in the next OA.

    Ms. Bey’s article was well written and a pleasure to read, but I’d already reached the same conclusion she did. But no, I don’t read every law review/journal article that gets published. Not enough time.

    No offense, but like 6k, you’re in way over your head on this one. Unless you’ve actually taken the time to study the APA and the case law, in particular the case law as it applies to the PTO, you really don’t have a leg to stand on. Your argument, “well, it’s in the MPEP” is beyond weak. Your admission that you would never send a case up to BPAI on the basis of “inadequate traversal” is all we need to know.

    As a practitioner, I make all of the arguments that I think I need to make. I don’t throw in every possible argument, and I use my practice experience to evaluate the strength of each of my arguments and which order to present them.

    Reply
  100. SF, as for your last post, the extra explanation at least makes more sense.

    If every attorney actually did like you say, there would be less of a problem. (And, b4 anyone says it, I DO agree with you all that some examiners (probably way too many) use official notice as a crutch and not as it is intended. They are wrong & should be called on it.)
    Unfortunately, all too many attorneys (won’t name names here, but I think one has initials the same as the singer of “County Roads”) believe that ALL takings of notice are wrong and that EVERY one needs to be challenged no matter how trivial or meaningless to the real scope, meaning and intent of the claims. It is because of attitudes like that which has caused the changes to the MPEP & all the arguments.

    If BOTH sides were reasonable about things, it would not be an issue. Unfortunately, it reflects o the sad, sad state of the legal profession in this country (and not just in IP).

    Time to call it a night b4 the lights go again….

    MVS

    Reply
  101. “johnDarling”,

    I did not “miss” Dickinson v. Zurko. Even Bey did not say that this explicitly states what you WANT it to say. And, in previous discussions YOU had nothing to say about her or her article (even though it is 4 years old). You probably didn’t even know about it until 6k brought it up. NOR did you have anything to say about Dickinson v. Zurko until this article was being discussed. Basically, you just argued that the MPEP was wrong because you disagreed with it. THAT WAS IT! No facts before.

    Now, you are, like Bey, trying to latch on to Dickinson v. Zurko and take the decision and make a series of concatenations to make it say what you want it to say. Which is the same thing that you accuse the editors of the MPEP of doing. Start at A. Say that it leads to B. And that leads to C, etc. until you get to what you want. Typical…

    At times I “thought” that you were at least capable of being reasonable and having a reasoned discussion with. It appears that you are not much different from6K, after all.

    And, as to your comment that “Your ‘belt and suspender’ approach is your admission that the ‘adequate traversal’ is nonsense.”, the earthy response is “Bu11$h1t”!!

    The more civil response is “Do you just argue YOUR best point when you respond to an rejection? Or, do you also cover your bases (like a competent attorney should) and also argue secondary points and alternatives in case the examiner does not agree with your 1st position?” I am just doing the same thing. To do less is both $tupid and arrogant.

    MVS

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  102. “With respect to the parenthetical, pds, that is utterly false. Go ahead and be bully on patenting and skeptical of the PTO, but don’t pretend that there aren’t heaps of claims being filed (and issueD) on stuff that’s older than the hills or just plain silly (i.e., methods of “providing” “updated” sports rankings following a tie game, where the rankings are calculated in one’s head).”

    What does your strawman argument about sports rankings have anything to do with taking official notice as to facts that are capable of instant and unquestionable demonstration as being well-known? Stop mixing apples and oranges. What is allegedly obvious and what can be legitimately the subject of official notice are entirely two different things.

    Reply
  103. “You must have a drastically different faith than the rest of us.”

    Yes I do. Any lawyer can come up with some reason to traverse, but the question is whether they have a good reason to traverse and can do so in good faith. If they can make a good faith argument that’s relevant to the patentability of the claims, so be it. If they can articulate why the boiling point isn’t a particular value and if it’s relevant to the claims, great. I can’t imagine how the boiling point argument could be made in good faith, but there are a lot of creative thinkers out there.

    Most of the time, I’ll traverse vague/overly broad Official Notices, such as ones that say items “are known” or “are known in the art” without specifying the particular art or who knows the items. As the saying goes, only God works from nothing, man must work from old elements. Thus, if the examiner is merely making the point that a particular element existed, a traversal is warranted to clarify that. If the examiner makes a narrower, more specific Official Notice (e.g., an element has been used in a particular content), it’s often much harder to traverse.

    Reply
  104. I have no objection to an examiner taking official notice. “The sun rising in the east,” etc.

    However, if the applicant contradicts the official notice, then the examiner should provide additional support for the official notice in the next office action.

    Official notice is meant as a short-cut to avoid fact finding when fact finding is not necessary because everyone agrees. It is not meant as a substitute for fact finding when fact finding is necessary because the two sides fundamentally differ on the facts.

    When in doubt, use your phone to call the other person.

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  105. “As for the article, you say that ‘MPEP 2144.03C fails to cite even one case in support of the ‘inadequate traversal’ nonsense set forth in that section’. However, you nor she actually cite (nor can cite?) ‘even one case” that specifically overrules any “of the ‘inadequate traversal’ nonsense set forth in that section’.
    Until there is a clear decision, it will still be a matter of opinion.”

    Did you miss Dickinson v. Zurko? Where you out sick that day.

    Every single case the MPEP discusses in 2144.03 addresses whether applicant’s traversal (i.e. demand for evidence) was seasonable/timely. There are no cases that address whether an applicant’s traversal/demand is “adequate” because there is no such requirement.

    Your “belt and suspender” approach is your admission that the “adequate traversal” is nonsense. And that you know it’s nonsense.

    Reply
  106. I’m with MVS on this one.

    pds: “The problem is that examiner’s don’t take Official Notice on the real ridiculous things (and applicant’s don’t claim them either)”

    With respect to the parenthetical, pds, that is utterly false. Go ahead and be bully on patenting and skeptical of the PTO, but don’t pretend that there aren’t heaps of claims being filed (and issueD) on stuff that’s older than the hills or just plain silly (i.e., methods of “providing” “updated” sports rankings following a tie game, where the rankings are calculated in one’s head).

    We see the crap claims here and on the other blogs all the time. A few months ago PatentDocs even headlined the issuance of some claim that looked like it was written by a first grader on crack.

    Applicants had fun sowing the wind. Nobody predicted they would reap the whirlwind? But for Dudas’ horrifying decision to promulgate a set of incredibly poorly drafted and ill-advised rules, the PTO’s blowback would be entirely warranted even if it was ten times more extreme. As it is, there’s still no reason to pretend that applicants aren’t routinely attempting to claim giant generic swaths of the landscape.

    Reply
  107. “Take 6K, he has claimed in the past that he could reject an entire application based upon Official Notice.”

    ??? Which e6k are we discussing? Maybe you’re referring to me saying that it is within my intellectual capabilities to say that some of the claimed inventions set before me are common knowledge before I even search, but not that I could off notice (sans affidavit at least) a complete ind. much less inds and deps too. Either that or you’ve been hitting the bottle early.

    “FYI: As been pointed out before, the MPEP has NO force of law.”

    Doesn’t need it in this case as long as we have laws and rules open for interpretation.

    I agree there are lots of shoulds etc. and that not all of the MPEP is perfect, but this particular subject is rehashed at every other presentation that the people who review our work, OPQA, gives. There is very little doubt in my mind that this part has been hand crafted to exactly the specifications the admin wants it to have, and wishes to have followed. We follow their lead. Usually.

    In any case, pds’s little slip about me saying I can run amok with off notice being addressed, I’m now out of the discussion.

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  108. “In particular, I would think that KSR can be used to support the taking of official notice for any of those of you that still think that the taking of notice is improper.”
    This is why arguing with non-attorneys can be very frustrating. Any competent attorney would immediately recognize that KSR applies to 35 USC 103 and NOT the duties imposed upon the USPTO under the APA.

    “I have seen attorneys here admit that they rebut EVERY taking of notice, and would do so even for things like: the boiling point of regular water at sea level & 1 atmosphere; or the speed of light in a vacuum; or that the sun rises in the east. Really ridiculous things.”
    The problem is that examiner’s don’t take Official Notice on the real ridiculous things (and applicant’s don’t claim them either). Take 6K, he has claimed in the past that he could reject an entire application based upon Official Notice.

    “without any evidence is clearly counter to the intent of the court decisions she cites, the APA and the MPEP.”
    FYI: As been pointed out before, the MPEP has NO force of law.

    “We all know that a huge portion of SPE’s follow the MPEP verbatim. JD in fact already knows this.”
    Hardly … besides being a very poor treatise on patent law, the MPEP discusses many things that examiners should do, but I rarely see done. Let’s see, how about 707.07(f), 707.07(g), 707.07(i), 707.02. I could go on, but I don’t have all night.

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  109. “The reason for that is also simple” there are no cases needed to cite to because there is a RULE.

    I’m through discussing it, the sides have made their points clear, I’ll let you know when any cases I have go to the board. JD you can feel free to show me up with cases as they come along with examiners capitulating, or not, whatever you like. In the mean time, I’ll keep making rejections the way they get results, based on proper office policy.

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  110. SF, but attorney’s here have explicitly stated that they would challenge things like the boiling point of regular water at sea level and 1 atmosphere. How can THAT be “in good faith”?? You must have a drastically different faith than the rest of us.

    MVS

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  111. 6K & johndarling,

    I never said that I was a SPE. I “have” said that I used to be one & moved (voluntarily) to another position because I was sick & tired of the b$ they put the SPEs thru. I wasn’t worth the aggravation. & I am one that despises dealing with “politics” & in that position you have to one way or another. So, I moved. Where I am I am trying to get examiners back to doing things the “right way” rather than the easy way. Not easy, but worth the challenge.

    As for the article, you say that “MPEP 2144.03C fails to cite even one case in support of the ‘inadequate traversal’ nonsense set forth in that section”. However, you nor she actually cite (nor can cite?) “even one case” that specifically overrules any “of the ‘inadequate traversal’ nonsense set forth in that section”.
    Until there is a clear decision, it will still be a matter of opinion.

    And, as for how I would treat your hypo, I believe in the “belt and suspenders” approach. Give them 2 correct positions and the bored board “may” get it right. Why limit yourself when you can go both ways ;)

    ‘nite all.

    MVS

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  112. “[D]oes it make ANY sense that the rebutting of that taking would only need to be a simply ‘No, it’s not’?”

    Yes, it makes sense … if the PTO has the burden to provide evidence for its rejection, but you want to provide a way for the PTO to avoid that burden where the applicant waives its right to demand evidence. As a practical matter, applicants may not wish to make such waivers, except where the official notice is so glaringly true that the applicants cannot traverse in good faith. However, that’s really the kind of things that official notice was intended for.

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  113. “We all know that a huge portion of SPE’s follow the MPEP verbatim.”

    LOL. I’d be glad to meet one that’s actually heard of the MPEP.

    Reply
  114. “That said, they’ll lose.”

    Seems to me you predicted a big loss for GSK when the PTO appealed J. Chacheris’s grant of the PI.

    Your prognostication skills are rather feeble.

    MVS,

    KSR has no effect on Official Notice. PTO (mis)management thinks it does, but it doesn’t. Of course, PTO (mis)management thinks Bogese and Symbol Technologies IV give it the authority to prevent applicants from filing more than two continuations. And we all know what a great job of case law interpretation they did there.

    LOL

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  115. MVS,

    Dicta is a statement by a court in a decision that is not necessary to the decision. Or something like that. :-)

    Your arguments about “rebuttal” are incorrect as the APA requires rebuttal when the fact finding is done in an adjudication or hearing. As Ms. Bey clearly explained in her article, those sections of the APA don’t apply.

    You also seemed to have missed Ms. Bey’s correct analysis of the cases cited by the (mis)editors of the MPEP in MPEP 2144.03. For example, Chevenard was decided in 1943, 19 years before SCOTUS set forth the four factual inquiries necessary for the obvious determination in Graham. Chevenard could not possibly have decided the question of what the standard was for PTO fact finding in the obviousness factual inquires.

    She also correctly points out that MPEP 2144.03C fails to cite even one case in support of the “inadequate traversal” nonsense set forth in that section. The reason for that is also simple: there are no such cases. And as I said, there never will be. PTO (mis)management will not allow it. They know it will get smacked down the minute it’s challenged. In the meantime, every time some applicant gets frustrated and throws in the towel, the “inadequate traversal policy” works. PTO (mis)management would never allow such a tool to be taken away by allowing it’s clear illegality to be established.

    Your answer to my question tells me everything I need to know. You would find the art and cite it for BPAI’s edification. You know darn well that you ain’t sending any case to BPAI in which the examiner simply “holds” the traversal “inadequate” and “takes the noticed facts as admitted” without doing exactly what you were required to do in the first place. You’re too smart to do something that stoopid.

    As for any perceived slander, you’re part of the (mis)management machine over there. You can’t escape that fact. Sorry. :-)

    6k, you are hilarious.

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  116. Of course they aren’t supported MVS, JD et al. here just keeps blowing hard on the issue to make it seem as if they have support and they get it past many examiners. And really, that’s fine with me, since they’ll just get a google 103 anyway. But let’s be clear, you’re not even nearly the only SPE that will back the use of the MPEP on this matter, as even if it is a misinterpretation, it is the office’s interpretation until someone makes it be different. We all know that a huge portion of SPE’s follow the MPEP verbatim. JD in fact already knows this. And any assertion of this being ridiculousness is merely lawyers doing what they do best, casting doubt on extraneous things when the situation looks bleak for them. They’re just going on and on about their opinion because they know they’ll fight it, and I agree, they should fight it, people v. Gov. happens all the time.

    That said, they’ll lose.

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  117. Oh, one more point I forgot to add to my “opinion”.

    Ms. Bey’s article is 4 years old. How do more recent decisions effect things?

    In particular, I would think that KSR can be used to support the taking of official notice for any of those of you that still think that the taking of notice is improper.

    Further, just as from a common sense position, if the taking of notice is OK (which even Bey seems to admit), does it make ANY sense that the rebutting of that taking
    would only need to be a simply “No, it’s not”? Makes no sense what-so-ever. Particularly if we are talking about a proper taking of notice.

    I have seen attorneys here admit that they rebut EVERY taking of notice, and would do so even for things like: the boiling point of regular water at sea level & 1 atmosphere; or the speed of light in a vacuum; or that the sun rises in the east. Really ridiculous things.

    There is a reason that the taking of notice is proper in some instances. See her citations which spell out those reasons. You attorneys just challenging even proper takings of notice for notorious things, without any evidence is clearly counter to the intent of the court decisions she cites, the APA and the MPEP.

    MVS

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  118. Hey, “johndarling”, it takes a while to actually read all 28 pages of her article (she really does need an editor to tighten things up a bit).

    And, you still owe me that apology. I just asked for citations for your position. I didn’t say you were wrong or argue your position. Read it AGAIN. I’ll wait….

    And you owe me another one for calling me a “mid-level (mis)manager”. That is at least slander ;)

    As for your “hypothetical”. What I would have done (& have done with my cases & had others do), is short circuit it by 1st telling the applicant that they didn’t meet their burden AND explain WHY it didn’t meet it, and maintain the notice. I would then cite (NOT apply) some prior art to show him how notorious the feature is, preferably with very old art and/or text books (and implicitly pointing out to his client that he is wasting his money on extraneous things. It can be done very politely and effectively and I can be very good at it when I want to :) )

    Now, if the examiner did not actually cite art earlier, I would do the same thing on appeal. I would maintain notice, but cite art “for the board’s convenience and edification” (or such language) of what was taken notice of.

    Actually, years ago, I had a similar case where I took notice on the 1st action, they did not “rebut” until after final (in their Brief, actually), I pointed out that it was not timely, didn’t meet the burden, and cited supporting art. I was affirmed. Not sure if they threw out the arguments as not timely or not sufficient (it was a while ago), but there was not complaint about citing the art with the Answer.

    Now, where are the apologies??

    MVS

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  119. OK, “johndarling” & the rest, I have read ALL 28 pages of Ms. Bey’s article. Before getting to my opinions of her opinions, I want to quote a few relevant sections of the article, as well as a quote from the “unrevised” MPEP 2144.03 (which she relies upon as evidence to to support her conclusions that the current MPEP is improper. The quotes, with pertinent page #s, are:

    Page 7

    But continuing with the example above, there are special cases wherein one of the limitations (D, for example) is asserted by the Patent Office to be so notoriously well known that it would be a waste of all parties’ resources to require the Patent Office to search for a reference that teaches limitation D prior to completing and sending an Office Action containing a rejection of claim 1 under 35 U.S.C. § 103. Referring to Table 2, in such an Office Action the Patent Office would reject claim 1 as being obvious over reference X in view of reference Y and take official notice that limitation D is notoriously well known. First, this type of rejection should be used sparingly and in rare circumstances.35 Second, in this example the Patent Office has not established a prima facie case of obviousness such that the burden to present evidence of non-obviousness necessarily shifts to the Applicant.

    MY NOTE: last sentence – is this just her opinion? No citation is provided & it appear conclusionary.

    Page 14

    As emphasized, section 556 is applicable to hearings required by sections 553, “Rule Making,” and section 554.62 And as described above, the Federal Circuit has determined that Patent Office adjudications are not “adjudications” within the meaning of section 554.63 Thus, it would seem that any “official notice” requirements stemming from section 556 may not necessarily be applicable to Patient Office adjudications. Setting this question aside, section 556 does little to define with any particularity the metes and bounds of “official notice.” Instead, section 556 focuses on the right of rebuttal when “official notice” has been relied upon in an agency decision.64 Consequently, courts have undertaken to define when agencies may take official notice, and more particularly, what facts and factual contexts are conducive to takings of official notice.

    60 Kenneth Davis, An Approach to Problems of Evidence in the Administrative Process, 55 HARV. L. REV. 364, 402 (1942). Mr. Davis states: When a court or an agency finds facts concerning the immediate parties—who did what, where, when, how, and with what motive or intent—[it] is performing an adjudicative function, and the facts are conveniently called adjudicative facts. When a court or an agency develops law or policy, it is acting legislatively; the courts have created the common law through judicial legislation, and the facts
    which inform the tribunals’ legislative judgment are called legislative facts . . . . Legislative facts are ordinarily general and do not concern the immediate parties.

    Page 17

    More recently still, in Dayco Corporation v. FTC, the Sixth Circuit aptly noted that a party need not invoke the APA’s right to rebuttal of an officially noticed fact until official notice has been properly employed.75 And although the court recognized that “properly employed official notice may assist an agency in meeting its burden,”79 the court employed the following rationale of a well-known treatise to support its reasoning that the FTC’s burden was not met in this case: It needs no argument to demonstrate that agencies may not take notice of the ‘litigation facts’ involved in a particular case; to do so would be to shift the burden of proof and make a mockery of the hearing procedure. The doctrine of notice should be limited to facts of a general nature, representing generalizations distilled from repeated demonstrations.80

    MPEP 2144.03 (unrevised)

    If applicant does not seasonably traverse the well known statement during examination, then the object of the well known statement is taken to be admitted prior art. In re Chevenard, 139 F.2d 71, 60 USPQ 239 (CCPA 1943). A seasonable challenge constitutes a demand for evidence made as soon as practicable during prosecution. Thus, applicant is charged with rebutting the well known statement in the next reply after the Office action in which the well known statement was made. This is necessary because the examiner must be given the opportunity to provide evidence in the next Office action or explain why no evidence is required. If the examiner adds a reference to the rejection in the next action after applicant’s rebuttal, the newly cited reference, if it is added merely as evidence of the prior well known statement, does not result in a new issue and thus the action can potentially be made final. If no amendments are made to the claims, the examiner must not rely on any other teachings in the reference if the rejection is made final.

    MY opinions, based on her article, is that most of it is conclusions that are her opinions and are a her interpretations of the various cited decisions. While she may disagree with the writers of the current version of MPEP 2144.03, there is nothing cited or quoted in the article that makes her opinions any more right or wrong than what is stated in the MPEP.

    She often takes things out of context or from decisions that are not actually on point for the taking of “official notice”. Some of what she cites is based on decisions that are directed to motivations/reasons to combine and are NOT directed to taking of notice.

    Those decisions that are on point of taking notice make it clear that it can be proper to take notice of facts that are notoriously well known. She dismisses as dicta statements in one decision that indicate that the taking of notice of the whole invention was proper as done by the court while she relies heavily on a concurring opinion in another decision. (You attorneys want to explain when what is in a decision is dicta and when a concurring opinion is NOT dicta? Seems like it is usually based on which you agree with to me.)

    On page 7, she states “Second, in this example the Patent Office has not established a prima facie case of obviousness such that the burden to present evidence of non-obviousness necessarily shifts to the Applicant.” However, this is simply her opinion. There is no citation for this opinion and she puts it in there like it was handed down from the Mount. This line is simply her opinion based on the facts she decided to use. It is not binding on anyone. Not even her if she changes her mind.

    On page 17 she states “ in Dayco Corporation v. FTC, the Sixth Circuit aptly noted that a party need not invoke the APA’s right to rebuttal of an officially noticed fact until official notice has been properly employed.” and “the court recognized that ‘properly employed official notice may assist an agency in meeting its burden,’” Again, this makes it clear that COURT DECISIONS have again upheld the right to take official notice. And, again, her citation, while relevant, was not directed to the specific issue of the PTO taking notice in a rejection. It is directed to actions taken by an agency, so it is relevant and applicable, but not 100% on point.

    Finally, MPEP 2144.03 (unrevised), upon which Ms. Bey puts much emphasis as the more correct interpretation of how official notice should be applied, does not really support her position. Of particular note, is the line:

    “applicant is charged with rebutting the well known statement”

    Simply saying “No, it’s not.” is not a rebuttal”. Rebuttal, as defined by Merriam-Webster is “the act of rebutting especially in a legal suit; also : argument or proof that rebuts”. The “legal dictionary” on-line defines “rebuttal” as “evidence introduced to counter, disprove or contradict the opposition’s evidence or a presumption, or responsive legal argument” Another easily found definition is “the speech act of refuting by offering contrary contention or argument”.

    Thus, it is very clear that the meaning and intent of the old (unrevised) MPEP 2144.03 clearly was that applicant needed to supply some evidence that the feature taken official notice of was not “notoriously well known”. This evidence would satisfy the requirement of “rebutting”. Simply stating “No, it’s not” would not satisfy the old requirements. The updated MPEP 2144.03 appears to make explicit what the “rebuttal” should consist of and cited decisions to support this position.

    Therefore, based on all of this, I would have to say that I disagree with Ms. Bey’s opinions, as they are not actually supported by the facts presented. None of her citations of court decisions, the APA, or the unrevised MPEP support her decision and the current 2144.03 appears reasonable in view of the court, APA and old 2144.03.

    Until we actually get a decision on the point, all we have is a bunch of opinions.

    MVS

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  120. “Ladies and gentlemen of the jury, it is well known that the defendant murdered that guy. The defense is going to get up here and demand “evidence.” They might not even bother to argue the well known fact of the defendant’s guilt unless we show this so-called “evidence.” Don’t let them get away with it!”

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  121. Could be right checking I didn’t look into it.

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  122. You can’t get around the patent office having the discretion to interpret it’s own rules (well established) by saying that there is law that in some round about fashion restricts the office from making such an interpretation but does not directly say that they cannot make such an interpretation.

    In any case, there are many examiners that peruse this board as well as lawyers, I say to them, try it out, follow the policy, and let’s get a case somewhere to the board, there are a lot of spe’s and a lot of appeals specialists one will make it. If it’s remanded, tough luck, send a nonfinal with a googled 103 and continue onwards, don’t forget to send a copy to your QAS’s. Nothing hardly to lose, especially if you’re new, and looking for another job soon anyway you have nothing to lose and everything to gain. Two extra non-finals going out is a very small price to pay for a tool such as this being approved by the courts.

    The real problem is, I’ll probably never find someone as petty as pds and JD pretend to be on here irl to send something like this to appeal, instead of dropping the stupd limitations and moving on with important prosecution where the case can achieve much broader coverage by changing a few words around in the ind.

    It hit me awhile back JD, nobody hardly knew about that article I cited before because nobody cares enough to do anything about this terrible injustice.

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  123. Re the application cited as prior art against itself. Looking at the action, it appears that the cited Figure numbers & text paragraph citations do not correspond to the cited pgpub. Probably a legitimate prior art reference was found & mapped to the claims, but the application’s pgpub number somehow got substituted for it in the rejection heading. Still a mistake, but presumably the action will be reissued with the right number, and they’ll take it from there.

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  124. All indications that I know of point to an unconstitutionally appointed judicial administrative body within the office. But that question is still out. From what I’ve seen I would say that if the board disagrees with a specific examiner/spe’s position then they are to overrule it, if they disagree with the entire office’s policy then that I do not know but it would seem ridiculous if they did not uphold it.

    See here about BPAI

    link to papers.ssrn.com

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  125. “How exactly you feel holding that official notice is valid would be ‘sticking its neck out’ is beyond me.”

    First of all, I didn’t say BPAI would be sticking its neck out if it held the use of Official Notice to be valid. What I said was BPAI would be sticking its neck out if it held that an “adequate traversal” required anything more than a seasonable challenge (i.e. a timely request/demand for substantial evidence) by the applicant. If you think that BPAI is going to require anything more from applicant than a seasonable challenge, you are beyond help or hope.

    “So the case may get overturned by the CAFC, doesn’t mean that the BPAI is risking anything. They risk zero, zilch, nada lol.”

    Unlike you, the APJ’s of BPAI are educated legal professionals and presumably have legal ethics. In other words, as members of the bar, they understand they are required to obey the law. They can’t decide whether they want to obey the law on a case by case basis, as you do. Getting reversed by the Fed. Cir. would be embarrassing. And unlike you, they are required to follow binding case law precedent. They don’t have the option of ignoring the law and saying, “I’m gonna do whatever I want and I don’t care if it’s improper. Let them appeal if they don’t like it.”

    “If they don’t ‘stick out their neck’, then it’s the same thing as the board not even supporting the office to which they belong. It would be folly of them to not adhere to the policies of the office. The CAFC on the other hand, they might be sticking their necks out.”

    BPAI’s role is to review the decisions of examiners when those decisions are appealed. Their role is not to “support” any ill-conceived, legally wrong and incompetent policy of PTO (mis)management.

    The “adequate traversal” requirement of MPEP 2144.03C is PTO (mis)management’s attempt to “expedite” prosecution by giving the examiners something to mindlessly and robotically cite to applicants and practitioners in the hope that applicants and practitioners will just get frustrated at having even more inapplicable boilerplate nonsense stuffed into the Office Action and eventually give up. Some do. So it serves it’s purpose. But trust me when I tell you that they will never, ever allow the legality of the “adequate traversal” requirement to be decided by BPAI and/or that BPAI will never agree to decide its legality. Again, the reason is simple: it’s bullsh#t.

    MVS, still waiting to hear if you’re gonna green light that appeal. When, or should I say if, you do, please let us all know if BPAI cc:’s you on its remand order directing the examiner to supply some evidence.

    Reply
  126. “the board not even supporting the office to which they belong” That is an interesting issue, e6k. What is the relationship of the board and the office? If the board disagrees with an office position are they suppose to overrule it?

    Reply
  127. “Do you actually believe that BPAI is gonna stick its neck out for PTO (mis)management?”

    How exactly you feel holding that official notice is valid would be “sticking its neck out” is beyond me. So the case may get overturned by the CAFC, doesn’t mean that the BPAI is risking anything. They risk zero, zilch, nada lol. If they don’t “stick out their neck”, then it’s the same thing as the board not even supporting the office to which they belong. It would be folly of them to not adhere to the policies of the office. The CAFC on the other hand, they might be sticking their necks out.

    In either event, do you really believe that saving countless hours of attorneys responding to “newbie” or “stubborn” examiners and taking them to the board would not justify the BPAI issuing one precedent, or likewise from the CAFC? Or do you feel like the MPEP (and policy) is changed to how it is now and will just stay that way for all time, spewing what is, according to you, nonsense.

    Reply
  128. “However, if my arguments were correct (which is apparently the real case here), you can’t simply avoid admitting that by saying the issue is “moot.””

    Why not?

    Reply
  129. MVS,

    You and I have had this discussion about Official Notice before. I’ve explained that the MPEP’s “adequate traversal” requirement is bullsh#t many times. I really don’t think an apology is required. Well maybe you owe me one for rehashing your old and tired, and wrong, arguments about MPEP 2144.03C. But I’m a forgiving soul, so I’ll let this one go. :-)

    Please read Ms. Bey’s article. I’m not a law professor so I really don’t have time to teach you a semester’s worth of administrative law in a couple of blog postings. If you would like to peruse the APA (that’s 5 USC) and voluminous case law regarding administrative law (you can start with Zurko), and then explain to all of us how the “adequate traversal” requirement is supported, be my guest. I would suggest to you though that Ms. Bey has already made that effort for you, and all of us, and concluded, correctly, that the “adequate traversal” requirement of MPEP 2144.03C has ZERO support in the APA and/or case law. Taking Official Notice that claimed features are “notoriously old and well known” does not satisfy the examiner’s burden of making findings of fact supported by substantial evidence. Never has. Never will.

    It really is that simple.

    It’s not 5:00 yet. But it’s close.

    BTW, you never told us if you’re gonna green light that hypothetical case I laid out.

    You seriously gonna send a case to BPAI on the grounds of “inadequate traversal” of Official Notice?

    Reply
  130. article posted while I wrote. Let’s see what it says…

    MVS

    Reply
  131. Hey, “JohnDarling”,

    What’s with the j***a$$ response?!?!?

    I did not argued any of the b$ that you imply I did. Nor did I say you were right or wrong! I simply asked what was the support for your position. What is so offensive about that? I didn’t even imply or suggest that you were wrong.

    I simply asked for your legal supporting. Is that too hard to understand?? It is the same kinds of things you always ask. Maybe you should reread what I wrote?

    As for the article by Bey, the link is not in this thread and there was no clear link to where it is. You want to provide it? If so, I will read it.

    And, if your only support is what some article says that is not convincing at all UNLESS that article itself supplies the necessary cited to “annoying little things like the APA and binding Fed. Cir. precedent” that you were asking us to cite. Without those pesky citations, it will be just opinion and have less weight than the MPEP.

    I’ll wait for my apology from “JohnDarling” (if he isn’t into his drink already :)

    MVS

    Reply
  132. “I look forward to getting this all cleared up by the BPAI”

    Keep looking. PTO (mis)management is never going to allow its “adequate traversal” requirement to be challenged at BPAI because it will get shot down. And if PTO (mis)management is foolish enough to let the issue get to BPAI, BPAI ain’t gonna be foolish enough to decide it. Like I said, BPAI will simply remand the app to the examiner with instructions to provide the required substantial evidence.

    Do you actually believe that BPAI is gonna stick its neck out for PTO (mis)management? You and MVS should get together in fantasy land and set up your own little patent office. It would be so cute.

    “Hardly, show me your basis in the law/caselaw for that.”

    Uhm, have you ever heard of the APA? Did you actually read Ms. Bey’s article?

    I’ll make a deal with you, 6k. I’ll post the serial numbers of some of my cases when you post some of yours.

    Deal?

    ROFLMAO

    Reply
  133. MVS,

    Go read the article by Ms. Bey. 6k provided a link to it. Ms. Bey hits the nail right on the head. The “adequate traversal” requirement of MPEP 2144.03C is a complete fabrication of the MPEP (mis)editing staff. It has no basis in law whatsoever. None. Nada. Zilch. Zero.

    Of course you’re not going to argue if the MPEP is correct or not (about Official Notice). It’s not. The MPEP has no force of law. We’ve been over that too. The random musings of whomever is assigned to (mis)write the MPEP after the Fed. Cir. smacks the PTO around are not the law. Do you really not understand that?

    Unfortunately for you, there are these annoying little things like the APA and binding Fed. Cir. precedent. I realize that nobody over there in PTO (mis)management wants to be bothered with all that legalese mumbo jumbo, but the law (i.e. the APA and binding precedent) trumps the MPEP.

    So you’re telling all of us in a case where 1) the examiner takes Official Notice, 2) applicant’s traversal consists of nothing more than a request/demand for documentary evidence, 3) the examiner “holds” the traversal “inadequate” and maintains the reliance on Official Notice, and 4) applicant appeals, you, as a mid-level (mis)manager, are going to green light that case to BPAI?

    I’m having a hard time believing that you are that delusional.

    Reply
  134. “There are no BPAI cases that deal with the issue of whether an applicant’s traversal of Official Notice is “adequate” because PTO (mis)management would never allow such an appeal to get to the BPAI.”

    We’ll see.

    “it’s gobbledygook.”

    I’ll give you that it may be, but it’s the policy and you’re well aware that it is.

    “”Provide some substantial evidence.” End of argument.”

    Hardly, show me your basis in the law/caselaw for that. Bottom line is, there isn’t any that supports it, and there is the freedom for the pto to interpret the laws and especially rules (see 1.111) how it wishes until the judiciary rules on it.

    “The reason for that is very simple, the only traversal that is required is a request (demand?) for substantial evidence.”

    Well, that’s not the way I read the policy. And neither is it the way you, or mgmt reads it either, as is plainly evidenced by your above comments. Any attempt by my personal mgmt to stop it going to the board would be ludicrous after having the MPEP plainly cited, as they are firm believers in following the word of the book. Going out a limb I would say that you are dealing mostly with primaries accustomed to the old ways of doing things, and/or people that don’t have “backbone”, or just don’t want to fool with it and find it easier to google it and 103. I personally would only do it as a matter of principle, not convenience, though it would lead to convenience in the furture. Clearly, even that lady knows that the office’s official position is to be, so any deviation therefrom is up to the examiner. Please, cite us a few cases that you’ve traversed in the last ~year and had the examiner capitulate. If there’s more of them than you can count, it must be a simple thing to show.

    If you don’t want to believe me that my case went, and was affirmed when and if it does/is then that’s up to you, but you’re right, I probably won’t provide ser., not that you couldn’t find it…

    I look forward to getting this all cleared up by the BPAI etc, if for no other reason than to set the MPEP straight and not have all our new examiners confused. You have to remember, they’re our future. In any event, citing the MPEP has worked out just fine for me (and others I know) so far, as making presumably very courteously worded “requests” has for you, and that’s what counts irl, isn’t that right? I might even be inclined to provide a ref it if there was a nice enough request without a bunch of bs for me to read through about affidavit this and zurko that. So far I haven’t recieved any.

    pds, I’ve responded to you, but it doesn’t seem to have posted.

    Reply
  135. JohnDarling,

    You say that the only necessary challenge to official notice that is required “is a request (demand?) for substantial evidence.”

    As you admit, this interpretation is not supported by the MPEP. Now, I am not going to argue if the MPEP is correct or not (been over that before). What I DO want to know: “What is your support for your interpretation?” If you (or pds) has something clear in writing, please give it to us. Otherwise, it quickly reduces to the examiners saying the MPEP says “X” & you all saying “well, it’s wrong”. That’s no more useful or constructive than 2 5 year-olds arguing “yes it is” “no it’s not”.

    So, please give us what you all rely upon for your interpretation. We (or at least some of us) would appreciate seeing it.

    MVS

    Reply
  136. “And you’ll get loled right out of the board/courtroom. Just like I’m loling at you now. If it’s so easy, then where are all your cases getting the MPEP/policy changed?”

    There are no BPAI cases that deal with the issue of whether an applicant’s traversal of Official Notice is “adequate” because PTO (mis)management would never allow such an appeal to get to the BPAI.

    The article you posted by Ms. Bey got it exactly right. That “adequate traversal” nonsense in MPEP 2144.03C has absolutely no basis in law. In the words of J. Scalia, it’s gobbledygook. It was made up by the MPEP (mis)editing staff. If the examiner takes Official Notice, all applicant has to say is, “Provide some substantial evidence.” End of argument.

    “I’ll probably be sending one up very shortly that has improperly contested off notice in the deps, I’ll be happy to share the results. That one might not go for awhile though, I’ll keep you posted if it goes.”

    Two reasons why this is never going to happen: 1) you would never post a serial number of one the applications that you are examining (and nobody reading/posting on this site is gonna believe anything that you say goes on in any of your cases unless they see it in IFW); and 2) none of the mid-level (mis)management lackeys who have control over your cases is going to let the case go to BPAI with your “inadequate traversal of Official Notice” nonsense.

    And even assuming such a case managed to slip past the air-tight quality controls of mid-level (mis)management, BPAI would simply remand the application to you with instructions to provide some substantial evidence. (That will be your cue to conduct one of your famous, 5 second, google searches that produces the knock-out, killer, all world reference that you should have found the first time around.)

    I’ve challenged the taking of Official Notice too many times to count simply by requesting the examiner provide documentary evidence. I’ve never had an examiner tell me that my traversal wasn’t adequate. The reason for that is very simple, the only traversal that is required is a request (demand?) for substantial evidence.

    Reply
  137. It’s interesting how closely the distribution appears to fit the Weibull distribution [1], which is used for modeling failure rates over time. In this case, the final disposition might be viewed as the PTO’s failure to keep putting things off! :-)

    [1] See link to en.wikipedia.org. Note the curve for k=2.

    Reply
  138. Alan,

    I’d imagine that prosecution time is so long in Canada because you our canuck buddies don’t seem to believe in issuing final rejections and tend to give you a patent if you argue long enough. There isn’t a lot of incentive to roll over and amend like there is in Europe.

    Reply
  139. “Let me share with you my response if I’m actually saying it’s implicit. The examiner stated x is implicitly included in structure y, therefore the applicant’s argument is moot.”

    e6k, you (and many of your Examiner brethren) apparently don’t know what “moot” actually means. Its proper meaning in the patent prosecution context is usually “deprived of practical significance : made abstract or purely academic.” Thus, it’s sometimes appropriate to say, “Because I’ve changed the grounds of rejection, your previous argument is moot.” It’s incorrect to say, “You’re wrong, therefore your argument is moot.”

    A related pet peeve – I’ve traversed several 101 rejections recently and received responses that say “Your [101] arguments were considered, but are moot in view of the new grounds of rejection.” The 101 rejections are not repeated. That’s just wrong. A dispute over 101 can’t be rendered abstract or academic by other grounds of rejection – if the claims are unpatentable subject matter, they are unpatentable. However, if my arguments were correct (which is apparently the real case here), you can’t simply avoid admitting that by saying the issue is “moot.”

    Reply
  140. “I sent her an email, since she, just like you and JD, gloss right over the recitation of 1.111? that says what a reply needs to be complete.”
    Complete??? You don’t think it is complete because you are one defining “complete.” However, as you have time and time again shown, you don’t understand the concept of “burden,” who has it, and when it is shifted. After a semester of law school (maybe a little more, maybe a little less), you are going to smack yourself on the head and exclaim “danm … I’m an i diot … now I understand what those attorneys were trying to tell me for 8 years.”

    “Maybe your 5 year art was showing something inherent in another piece of art or a scientific principle? You’ll have to be more specific if you want to show it off as being ridiculous, especially since it seems like you might not have won that one.”
    You aren’t too smart are you? Can you think of a reason why art older than the filing date cannot be relied upon? Let me paint this OBVIOUS scenario … company Y files a patent application on A+B+C …. company X sees the patent and has one of their employees write an article that says A+B+C was known in the art 2 years prior to the filing of company Y’s patent application (except it isn’t true). Can you see the problem that would occur if one relied upon articles that were written post-filing date that allegedly describe actions that occurred pre-filing? Come on, one doesn’t have to be an attorney to see the potential mischief there?

    Anyway, to satisfy your curiousity, there has been no final decision rendered (yet) on this issue. In the very unlikely situation that the BPAI agrees with the examiner on this one, I’m prepared to take this one to the Fed. Cir.

    “You can blab on and on about me not knowing what ineq conduct is, or what is required to show it, but I’ve read more than a few cases on the subject here lately, I’m starting to get a handle on it.”
    Read all you want … the reading part you seem to do OK at, the understanding part is where you fall down.

    “I’ll cite the article for you so you can copy/paste her arguments”
    As I said, you do well on the reading part. However, the comprehension part is really lacking. How did you think I knew about the article in the first place? …. because you already posted the link!!

    “Maybe it’ll take a man with real appeal balls to set this right, right pds?”
    Likely … I don’t have a high opinion of many of my attorney bretheren either. Too many spineless souls that flop on the ground with their bellies in the air at even the hint of examiner pushback. In case you didn’t know this, patent prosecutors have bad reputations among the big GP firms. They aren’t even called patent attorneys … more like “patent scribes.” The reason is pretty obvious to those in the business … many patent attorneys don’t act like attorneys. They don’t know the law well, and they are spineless (engineers, as a whole, tend to be a spineless group).

    As I’ve mentioned to you in the past, I can only hope that some attorney who knows what he/she is doing gets a hold of you one day. You’ll be crowing for years about how this stu pid attorney just doesn’t get it and is taking you to the Board on issues that you KNOW they are wrong on … only that when the BPAI finally issues their decision, they smack you down. Either that or your SPE finally decides to teach you something at the Appeal conference and smacks you down then.

    Reply
  141. I should add, that so far nobody has even brought up the off notice after seeing my response, and I’ve gotten 3 or so responses back so far. Maybe it’ll take a man with real appeal balls to set this right, right pds? I’ll cite the article for you so you can copy/paste her arguments, they’re really the best ones, very nicely laid out with very good citations that only leave the smallest of gaping holes that is possible.

    Reply
  142. “Any examiner that wants to try out any those BS “you didn’t properly traverse my official notice” arguments on me will get appealed. The law didn’t change on Official Notice or 101 so the USPTO “reinterpreting” what is and is not allowable is all BS to me.”

    And you’ll get loled right out of the board/courtroom. Just like I’m loling at you now. If it’s so easy, then where are all your cases getting the MPEP/policy changed? I’ll probably be sending one up very shortly that has improperly contested off notice in the deps, I’ll be happy to share the results. That one might not go for awhile though, I’ll keep you posted if it goes.

    Fact of the matter is your “challenge” procedure that was observed up until recently was based on an INFERENCE of some caselaw that addressed what would happened in the opposite situation to that of your challenging the PTO (i.e. you not challenging it will result in it not being considered). Did you notice anything that wasn’t said there? What wasn’t said was what will necessarily happen if you do challenge it.

    There’s an even more interesting article on the subject that I found the other day by a lady that laid it all out very nicely. Of course she made all your points and then some, basically point for point of the discussion we had awhile back. I sent her an email, since she, just like you and JD, gloss right over the recitation of 1.111? that says what a reply needs to be complete. Waiting to hear back from her, certainly she has some great high and mighty explain it away rhetoric that you and JD et al. just can’t seem to come up with. I’m sure you’ll get an official notice here soon and I can’t wait for you to post the results of your board/CFC/Supreme decision(s) since you’ll be going up pretty high if it’s properly done.

    Maybe your 5 year art was showing something inherent in another piece of art or a scientific principle? You’ll have to be more specific if you want to show it off as being ridiculous, especially since it seems like you might not have won that one.

    You can blab on and on about me not knowing what ineq conduct is, or what is required to show it, but I’ve read more than a few cases on the subject here lately, I’m starting to get a handle on it.

    Alan- that’s really interesting, I did not realize that canadia land took even longer, can you tell us why that likely is?

    Reply
  143. 6k …. I see you are babbling again. Funny, you cite that interesting article (which I happened to print out) yet you didn’t take much out of it.

    Your “implicit disclosure” is discussed here:
    link to uspto.gov

    First off, it is a 103 rejection. Also, as evident by how it was applied, you need to have some solid rationale that leads from what was actually disclosed to what was implicitly disclosed. I doubt your example of a piece made by x material would qualify as an implicit disclosure.

    As been noted before, you don’t have a f’ing clue as to what constitutes inequitable conduct. As for the new official notice “rules,” as I think a recent case pointed out, the USPTO doesn’t have the power to write substantive rules. Any examiner that wants to try out any those BS “you didn’t properly traverse my official notice” arguments on me will get appealed. The law didn’t change on Official Notice or 101 so the USPTO “reinterpreting” what is and is not allowable is all BS to me.

    “Just saying that it is improper should in fact suffice, no case citation needed, everyone in power at the office knows what you’re talking about”
    Hah … just like the examiner who cited art dated against my application with filing date about 5 years earlier than the cited art? You should have read the convoluted argument that supported their argument. You would be surprised as to what passes as legitimate arguments these days.

    The difference between inherent and implicit …. with inherent, the teaching must necessarily be present (possible isn’t good enough) … with implicit, the teaching is not explicit but implied, however you still need to show that the limitation is obvious. The problem with using with art cited in the background comes when the invention claims something that replaces the implicit teaching.

    Reply
  144. For those that are interested, I have put together a similar chart of prosecution time for Canadian patents issued so far this year: link to ippractice.ca

    Prosecution time is almost 10 months longer in Canada.

    Alan

    Reply
  145. Ah, look, some people advise going with the inherency argument.

    Let me share with you my response if I’m actually saying it’s implicit.

    The examiner stated x is implicitly included in structure y, therefore the applicant’s argument is moot. This is presuming that when the background cites those extra patents it also includes some detail about what is in those cited extra patents, and perhaps a picture, not just the patent no..

    Reply
  146. “That doesn’t surprise me. I have an office action in front of me saying “Fig. 3 of [reference] discloses X.” When you look in the reference, it says “FIG. 3, NOT ASSOCIATED WITH THE PRESENT INVENTION, shows how X is avoided by the exemplary methods herein.””

    Yes, this situation arises quite a bit for me. The prior art section in the reference shows some stuff I need for, perhaps, a dependent or something, and then they fail to show it in the invention. I have two options depending on the specific situation. I can either a. do a 103 (usually done) or b. do an implicit rejection (where the prior art shows a piece made of x material for example, with it being well known as a material to make those kinds of parts, but the detailed desc doesn’t specify). Notice, I’m using IMPLICIT and not INHERENT. This fact seems to be lost on 50% of the people I use it on until they recieve a final/call. Be careful that your examiner is not using implicit as well.

    PDS I believe there is a case that states that it is not enough to have all elements shown, but there must be some reason to combine them. You probably know that case, I don’t remember off hand. That would suffice imo, even though they didn’t make a 103. Just saying that it is improper should in fact suffice, no case citation needed, everyone in power at the office knows what you’re talking about.

    Though, again, watch out for “implicitness” in the disclosure as a whole. Would one of ordinary skill very likely imply that x part is made like x part in the prior art when you take the reference as a whole? Maybe, maybe not, but if you reply and that’s what the examiner is saying then you’ll end up with a final. And if my actions are any indication, it’s hard to fight a valid implicit disclosure. I know you’re keen to point out technicalities like these situations, but be aware, I get people coming back in re to implicit disclosures like this quite often, and they always end up with a final that they end up RCEing. Why? Two reasons, one, because they usually traverse it as if I said “inherent” and two, because valid implicit disclosures are kind of like the new official notice in that to even try to adequately traverse it you’d usually have to commit Ineq Conduct if you’re not a mo ron.

    Better imo to avoid the traversal of implicit disclosure if you feel it would be a reasonable assumption at all. That is, unless you’re just including that traversal as a “throw in the kitchen sink” argument along with other arguments. In those cases I’d just state “The applicant does not feel that x is implicit to one of ordinary skill because x could be made by y method as done here in “new reference” that I’m citing.

    Besides, what’s a little implicit disclosure between friends? Just amend and get on with life if that’s the only thing you could argue. Is five months (and 1k dollars) of response time worth traversing it? Probably not, but maybe.

    Reply
  147. “I don’t have any good case law to cite, so if someone has some, I would like to see it.”

    pds, in that instance (and we’ve all seen this before), I think it’s best to characterize the Examiner’s argument as a failed inherent anticipation argument and cite In re Bond:

    “The identical invention must be shown in as complete detail as is contained in the … claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). *****The elements must be arranged as required by the claim*****, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990)”

    Emphasis on the asterixed terminology. Of course, one should be prepared to argue non-obviousness next …

    Reply
  148. “If the fig teaches X, then commentary in the rest of the application on avoiding X may help for a teaching away argument (for a 103 rejection), but such commentary cannot be used to say that X is not taught (i.e., to overcome a 102 rejection).”

    I’ve seen this situation before … the problem is that it isn’t a true 102 rejection. If all it took was to show all of the individual elements in a single reference, you could cite to a good technical dictionary as 102 art.

    This happens sometimes when a background of the invention of a patent metions several other patents and the examiner cites to those patents in a 102 rejection. What I’ve argued is that it isn’t 102 art, but instead, the examiner is citing to more than a single reference reference, and thus should be rejecting the claims under 103.

    I don’t have any good case law to cite, so if someone has some, I would like to see it.

    Reply
  149. GG.

    I doubt this is the first time this has happened though.

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  150. An office action citing Fig. 3 of a reference for disclosing X may not be unreasonable, even if the rest of the Fig. 3 reference says how X of Fig. 3 is being avoided.

    If the fig teaches X, then commentary in the rest of the application on avoiding X may help for a teaching away argument (for a 103 rejection), but such commentary cannot be used to say that X is not taught (i.e., to overcome a 102 rejection).

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  151. E6k,

    You don’t get responses in 10 days because we have to report the office action to the client then wait for the client to approve proceeding in most cases. I’d like to write the response right when I took the time to review the action and everything is fresh in my head, but it usually doesn’t work like that.

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  152. That doesn’t surprise me. I have an office action in front of me saying “Fig. 3 of [reference] discloses X.” When you look in the reference, it says “FIG. 3, NOT ASSOCIATED WITH THE PRESENT INVENTION, shows how X is avoided by the exemplary methods herein.”

    My god. It’s one thing when an Examiner takes the broadest unreasonable interpretation of a claim term. When an Examiner flat out doesn’t even read the reference, that’s shameful.

    Reply
  153. Sorry to interupt but there is quality copypasta going around, good for laughs anytime.

    Examiner cites patent application as prior art against itself

    A few weeks ago, Nokia received an Office Action on one of their patent applications, where the examiner used the patent application itself as prior art AGAINST the patent application. A PDF of the Office Action is at:
    link to bustpatents.com

    The application is titled “Multiple antenna portable handheld electronic device”, number 2006/0099993 (Ser. No. 10/982,469), filed in November 2004.
    On May 16th of this month, they received an Office Action, well, as a PATNEWS reader put it:

    Take a close look at the attached PTO office action recently issued.
    The patent examiner cites as prior art the very patent application
    undergoing examination (same filing date, same inventor, identical
    disclosure) to make various claim rejections.

    More amusing is the fact that the examiner concluded that the subject
    matter of some of the claims was not disclosed by this “prior art”.
    Apparently the examiner overlooked the fact that the original claims
    as published disclosed the supposedly missing features.

    This should serve as a reminder when responding to office actions:
    confirm that all “prior art” cited by the examiner is in fact
    legitimate prior art.

    _________

    To my knowledge nobody has informed the examiner. Also note that the response only took 10 days. Why can’t I get responses in 10 days I wonder?

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  154. I would like to see the data without continuations and I would also like to see the data where the time is taken from the priority dates. For cases where multiple patents issue out of an original filing, I would use the date of the first issued patent for that family.

    Continuations and RCE’s are part of the prosecution process.

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  155. I handle classification and transfers for my AU, so I can give a little insight into how this works…

    OIPE does indeed give an initial classification to every case (new, divisional, continuation etc) that comes in, which routes it to a specific art unit; however, this is not necessarily where it stays. OIPE doesn’t know the details of every art and class, so when it arrives at an AU, the examiner who recieves it can try to transfer it if it belongs somewhere else. A factor that comes into play here is that divisional and continuation applications are typically routed to the examiner that examined the parent; if this doesn’t happen, a common courtesy is for the recieving examiner to offer to transfer it to the examiner of the parent. This practice has ingrained itself into some examiner’s minds as a “rule” that even supercedes proper classification (i.e. a divisional for an entirely different apparatus with a different classification than the parent being sent to the examiner of the parent regardless). So slanting your claims to try to get a continuation or divisional into a certain AU (i.e. to get it away from the examiner of the parent, whom you disliked) is a strategy that has a good chance of failing. Speaking of slanting to aim for a certain classification – classification is determined by the claims (specifically, by the “most comprehensive” claim); the title and abstract are not supposed to be a factor. I have noticed, however, that most of the times that I have had to correct OIPE’s classification of a case, it has appeared that they classified the application solely based upon the title.

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  156. Scrambly type guy,

    I understand what you’re saying. However, I note that many inventors and practitioners believe the second factor (art group) to be at least somewhat within our control based on how we slant the claims, the title, and the abstract … any comments from examiners on this question?

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  157. p.d: I think you’re reading “control” too literally. For the purposes of this data, I believe what Prof. Crouch means is that certain variables can be separated out that are determined by the applicant or application itself, rather than by the Office. In other words, the Office merely examines what it is given – it is not able to decide how many cases go into each art, or how many of its applications are con/div/etc. rather than originals (although perhaps it would like to, as shown by the con rules package). Whether or not these factors are strictly under the applicant’s “control” or “choice” is, in this instance, irrelevant.

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  158. Prof. Crouch,

    How can you seriously maintain that the “choice” between continuation or original appl’n is “in the applicant’s control”?

    Either you’re just fleshing out a structure that you already disclosed years ago – or you have come up with a new structure for the first time. If it’s the latter, you have no “choice” to file a continuation.

    Could you please clarify?

    Thanks!

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  159. First Y-Axis: Cumulative Distribution 0% – 100%.
    Second Y-Axis: Frequency distribution 0 – 480 patents.
    X-Axis: Each bucket is one month wide, but the marks on the axis are every three months.

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  160. Noah, it appears to be years on the horizontal axis, and groups of about 4000 applications on the vertical axis.

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