Patently-O Bits and Bytes No. 53

  • Late Requests for Patent Term Extension: An earlier post noted that the PTO had rejected AstraZeneca’s request for a patent term extension because it was filed one day late. Interestingly in its filing, Astra found 14 other PTE requests that were filed on the 61st day and were still granted: 5,827,937 (RESTYLANE); 5,639,639 (Luveris); 5,532,221; 5,441,745; 4,941,093; 4,874,749; 4,836,217 (ALLERGEN PATCH); 4,830,010; 4,702,253; 4,513,006; etc.
  • The following histogram shows the distribution of patent term extensions granted by the PTO. The average extension is just over 2 1/2 years. The PTE list includes about 100 patents that would have expired already, but are still in force due to the extension. See http://www.uspto.gov/web/offices/pac/dapp/opla/term/156.html.

PatentLawPic387

  • Question: The CAFC reviews BPAI factual findings for substantial evidence. If an applicant appeals a Board ruling to a district court, how does that court treat the BPAI’s facutal findings? (Please cite a case or give your experience)
  • SC Law Review: When I was born, my dad was attending USC — that’s right the Gamecocks of South Carolina.  The South Carolina Law Review transforming to a a peer review journal and is looking for help & comments. http://www.sclawreview.org/peerreview/index.php.

77 thoughts on “Patently-O Bits and Bytes No. 53

  1. Sorry to have confused you, pds, with Lowly. I have to say that I’m more interested in what people write, than in who writes it. Can’t remember our previous dialogue denting my faith in PSA (but then it wouldn’t have done, would it?). Thanks for explaining your contribution on obviousness. I see now that it’s for use when the gathering doesn’t know what the invention is. But what we need is a practical tool, isn’t it. One that works still, when the members of the gathering do already know what the invention is.

  2. “So which is it, pds? I’m giving you a chance to be honest. Don’t disappoint.”

    To be honest???? The office action and the applicants’ response stand for themselves. BTW, when did you stop beating your wife?

    Just go look at the Graham factual findings. link to uspto.gov

    An obviousness analysis isn’t just about the combination of the art or the modification to the art, it is about everything, which includes whether or not the art teaches all of the claimed limitations. As such, your question is flawed from the outset.

    However, we are getting off track … which, of course, is exactly what you want.

    The challenge was to “come forward with an example of an office action taken from Public PAIR.” This was done, as this office action is a clear example of an examiner failing to establish, with substantial evidence, the underlying facts to support a conclusion of obviousness.

    If you are bored with this example, I also included other examples as well. It is very easy to find examples as most examiners fail to meet their burden in establish a prima facie case of obviousness. Granted, the references cited may render a particular claim obvious, but that doesn’t mean that the examiner established a proper prima facie case.

    There may be some attorneys that will argue this failure, but the vast majority with not, which is why examiners don’t bother. For me, if I think the invention is obvious based upon the cited art but the examiner failed to establish a prima face case, I’ll almost always amend. If not, the examiner will almost always go final and I’ll have to file an RCE to get the claims I want since I’m not going to take a loser argument to the BPAI.

    The problem with the system, however, is this cavalier attitude by the examiners in establishing a prima facie case reinforces sloppy work habits. They think that “close enough” is good enough, and if there are tricky limitations to deal with, they just ignore them and/or construe them to mean nothing. I’ve seen it, no exaggeration, hundreds of times.

    The examiner in the office action we are discussing simply decided that one halogen could be substituted for another halogen and, voila, that was the extent of his obviousness analysis. The examiner got “close enough” with most of the claims (although he apparently ignored most of the other dependent claims) and presented a throw-away argument with this one dependent claim (now incorporated into the independent claim).

  3. “pds: I’m sorry that your chosen EPO counsel has a little brain.”

    That was Lowly that talked about his counsel’s brain … not me.

    “Your old Simkins List ‘thought’ on obviousness don’t impress me much. Don’t see in it any avoidance of hindsight. Maybe you can enlarge on that?”
    My “thought” on obviousness presupposes that the person looking at the art doesn’t know of the claimed invention. Without knowledge of the claimed invention, there can be no hindsight.

    We’ve already discussed PSA at great lengths awhile back.

  4. pds: I’m sorry that your chosen EPO counsel has a little brain. Shouldn’t you now be looking for one with a bigger brain? Or is a little inventive step brain congenital, amongst European patent attorneys? I’m sorry that you find my boring little song one that you’ve heard a hundred times. Recently, I have tried to explain why EPO Examiners are so inflexible (the English as a foreign language point). Was that something I have already written 99 times before? I think not? Was it within the last 2 years? I think so. Your old Simkins List “thought” on obviousness don’t impress me much. Don’t see in it any avoidance of hindsight. Maybe you can enlarge on that? And while you’re at it, give me some of that “substantial analysis” which you find so lacking in my posts, as to what’s wrong with EPO-PSA.

  5. “Applicant’s arguments are found on pages 17 and 18 of the amendment dated December 7, 2007.”

    Is that where they argued that bromine and chlorine are not interchangeable and they achieved unexpected results? That would be taking the obviousness argument “head on.”

    Or did they argue that there were other limitations in their claims? That’s not taking the obvious argument “head on.”

    So which is it, pds? I’m giving you a chance to be honest. Don’t disappoint.

  6. “pds: you suggest I don’t recognise sarcasm when I read it? When some write “Max, where are you?” you think I don’t realise they just want something from me they can then laugh at. But I post anyway, because I can then learn from the reactions to my posts.
    Lionel: is that honest and earnest enough, do you think?”

    Max … I’ve lived in and traveled to Europe many times. I both enjoy the culture, the many countries, and the people. There are many things about Europe that I enjoy over the States, but there are a great many things I enjoy about the States over Europe. Regardless, I’m not adverse to considering change in the States.
    That being said, I find your incessant cheerleading of the European patent system to be monotonous and lacking in substantial analysis. You are like a singer who knows only a single song. You are very well practiced at your song, but after hearing it a couple of times, I really don’t need to hear it 100 hundred times again. Not only do you sing this single song on this website, you are singing the same song in at least 4 or 5 other blogs.

    If this board ever allows an ignore feature, it would be easy to put you on ignore. Because you haven’t said anything new in a couple of years, I wouldn’t be missing anything.

    Regarding the EPO’s take on obviousness, I dislike the mechanical approach (which you find so simple and intuitive). My thought on obviousness is that if one having ordinary skill in the art, when faced with two (or more) references, can read those references and while making a list of the obvious variations of either reference (based upon the teachings of the other) come up with the claimed invention, then it is obvious.

  7. “Apparently not. What was the argument and evidence, pds, that they used to overcome the prima facie case?”

    It seems you do not seem to understand the concept of “prima facie” case. Simply put, the examiner did not make one for lack of substantial evidence to support the examiner’s assertion of obviousness. Applicant’s arguments are found on pages 17 and 18 of the amendment dated December 7, 2007. If the Examiner has not established a prima facie case, all applicants need to is point out that failure.

    The examiner withdrew the particular rejection to which the applicant responded.

    Seems to me, the examiner tried to make an assertion that wasn’t based in fact, applicants called them on it, and then the examiner tried a different tact …. happens ALL THE TIME. Then again, if you were actually prosecuting applications, you would know this.

  8. Max,

    For some reason, your post reminds me of a conversation I had with my EPO counterpart in an application. We had a phone conversation to discuss a couple points and then bs’ed at the end for a few minutes. He asked me what arguments I use in the US that work to overcome 103′s, as he was having some problems with US apps he was prosecuting. He was incredulous when I told him the best argument is to simply point out an element of the claims not disclosed by the combination. His little inventive step brain couldn’t wrap around that…

  9. “Take Lowly, above. He replies to my 103 point with an interesting 112 point. I take that as confirmation of my point, that EPO examining mindset is percolating into the USPTO. I gather that EPO 112 points are seen as “ridiculous” by US attorneys. That is useful info, when next I formulate my commentary to a US client, about an EPO 112 objection.”

    You are correct — we do see your EPO “112″ points as ridiculous.

    If the spec says “X may communicate wirelessly with Y,” to me, that discloses that X may also NOT communicate wirelessly with Y. Therefore, X may also communicate with Y via a wired connection. Yet this would never fly before the EPO and I wouldn’t be able to amend a claim to say that X and Y are to communicate via a wired connection.

    It really seems to me that, unless the exact words that you want to include in an amendment are in the spec, most EPO examiners will object.

    Of course, since I deal with plenty of EPO applications, I know this and it never surprises me. Therefore, comments from an EPO practitioner don’t need to explain how strict ya’ll are about this. I know. ;)

    I also know that it’s almost impossible to get an EPO examiner to withdraw a clarity objection without amending, even when the objection is something like “it is not clear with part of the housing of the mobile wireless device is the upper portion and which is the lower portion.” (yes, it is. i asked my 7 year old son and he knew instantly. the upper portion goes by your ear. the lower portion goes by your mouth. craziness!) Thus, I need to amend to say “a housing having, when the mobile wireless device device is in an upright position, an upper portion and a lower portion.” The EPO examiners can’t figure out what upper and lower are… but they CAN figure out when a cell phone is in an upright position? huh?
    ;)

    Max, if the EPO mindset is percolating into the USPTO… why isn’t the sense of professionalism that I see in EPO examiners being copied by USPTO examiners? :( (don’t take me as being some EPO lover. plenty of things about EPO practice bug me to no end, although I can also see some of the good things, ie. quality first actions)

  10. pds: you suggest I don’t recognise sarcasm when I read it? When some write “Max, where are you?” you think I don’t realise they just want something from me they can then laugh at. But I post anyway, because I can then learn from the reactions to my posts.
    Lionel: is that honest and earnest enough, do you think?

    Take Lowly, above. He replies to my 103 point with an interesting 112 point. I take that as confirmation of my point, that EPO examining mindset is percolating into the USPTO. I gather that EPO 112 points are seen as “ridiculous” by US attorneys. That is useful info, when next I formulate my commentary to a US client, about an EPO 112 objection.

  11. “Apparently, they did take the 103 rejection head on and WON.”

    Apparently not. What was the argument and evidence, pds, that they used to overcome the prima facie case?

    “Moreover, I think you are entirely incapable of”

    Zzzzzzz…. Your falling back into your bad habits, pds.

  12. “Most high school seniors would also agree that the properties of bromide and chloride are very similar.”
    Really … most high school seniors would be smart enough not to make such a statement. Did you even pass chemistry?

    “The latter is not ‘taking the 103 rejection head on’ in my book.”
    Then stop readying Dr. Suess. Really, I doubt very much you would know how to traverse a 103 rejection. Moreover, I think you are entirely incapable of prosecuting an application … unless you call “prosecution” rolling over like a puppy with your belly in the air anytime an examiner says “boo.” No wonder why you are stuck trying to invalidate patents … I doubt your clients ever get anything allowed with your prosecution prowness.

    The funny part of the whole story is that the applicant SUCCESSFULLY traversed the 103 rejection since the examiner withdrew it in the second office action. Apparently, they did take the 103 rejection head on and WON.

  13. “something that most high school seniors would agree upon)”

    Most high school seniors would also agree that the properties of bromide and chloride are very similar. Thank you very much for underscoring my point, pds. I can tell that you get it. It’s okay if you don’t want to admit it.

    “I’m guessing you are a litigator working for one of the manufacturers of generic drugs … always looking to invalidate what somebody else invented.”

    LOL. As if only generics are interested in watching crap patents die.

    “if you are caving on every rejection you get based upon this type of analysis from the examiner”

    Try to focus, pds.

    “they took on the Examiner’s 103 rejection head on.”

    Really? So, uh, they argued that substituting bromine for chlorine was taught away in the art and yielded unexpected results? Or are they arguing that there are other limitations in the claims that the Examiner is not recognizing. The latter is not “taking the 103 rejection head on” in my book.

  14. “I’m guessing you are a litigator working for one of the manufacturers of generic drugs … always looking to invalidate what somebody else invented.”

    That was my guess too and with very little prosecution experience.

  15. “We’ve been down this road before. Apparently it is a violation of some law for an Examiner to assert, without citation, that room temperature water is a liquid at 1 atmosphere and pressure.”

    Sucking face with Sandy Strawman again I see … your strawman argument is to state some proposition (i.e., water is liquid at room temperature at 1 atmosphere of pressure … something that most high school seniors would agree upon) to support your belief that asserting “Since chloride and bromide are well know species of halogen, the skilled artisan would have expected chloride and bromide substituted derivatives to work equally well as catalyst components” does not require any supporting evidence.

    Let me make an suggestion to you MM … if you are caving on every rejection you get based upon this type of analysis from the examiner, one of the partners who periodically reviews your work is going to take you into their office and give you a good tongue lashing.

    BTW. Your analysis evidences that you don’t even understand the facts, eventhough I laid them out pretty clearly. The “amendment” was simply to place a dependent claim into independent form. The dependent claim included the limitations were the ones that were allegedly obvious. As such applicants DID NOT “[amend] its broad claims rather than fight the Examiner on bogus procedural grounds that would get it nowhere fast,” as you asserted. Instead, they took on the Examiner’s 103 rejection head on.

    I’m beginning to think that you really don’t prosecute claims. If you did, you wouldn’t make silly errors such as this. Also, your past comments over the years reflect outright ignorance of the patent prosecution practice. Instead, I’m guessing that you are litigator. More specifically, I’m guessing you are a litigator working for one of the manufacturers of generic drugs … always looking to invalidate what somebody else invented.

  16. “Indeed, more than once the cry has been heard ‘Max, where are you, on this one?’”

    You need better sarcasm-dar.

  17. “Lowly, I’m thinking that the 103 position in the parallel app at the EPO is these days more often soon clear within a few months of the end of the Paris year, now that the EPO is getting its EESR’s out soon after the app is filed. Do you think an Applicant at the USPTO can get any traction out of an EESR that sees the claims as allowable? I have a feeling that USPTO management is teaching its examiners EPO practices (one halogen is reasonably likely to be not so different from another), and that USPTO Exrs are increasingly stealing a look at the EPO file, online, before they issue their FAOM. I wonder whether the positions that USPTO Exrs take, on 103, will gradually get more reasonable, with increasing convergence between the USPTO and the EPO.”

    I hope to god USPTO examiners are looking at the EPO file before issuing a FOAM. EPO examiners actually know how to perform a decent search.

    I do not particularly want other EPO practices making their way into the USPTO, however, although I do note that on more than one occasion I have had to smack down an examiner for making a 112 rejection as though he were an EPO examiner.

  18. Lowly, I’m thinking that the 103 position in the parallel app at the EPO is these days more often soon clear within a few months of the end of the Paris year, now that the EPO is getting its EESR’s out soon after the app is filed. Do you think an Applicant at the USPTO can get any traction out of an EESR that sees the claims as allowable? I have a feeling that USPTO management is teaching its examiners EPO practices (one halogen is reasonably likely to be not so different from another), and that USPTO Exrs are increasingly stealing a look at the EPO file, online, before they issue their FAOM. I wonder whether the positions that USPTO Exrs take, on 103, will gradually get more reasonable, with increasing convergence between the USPTO and the EPO.

  19. Lionel, I’m hurt that you categorize my posts as not “honest” and not “earnest”, but thanks for the feedback and I will try to be more honest and earnest, from now on. You’re right. Sometimes I aim to provoke, because I want a response. I’m European, with American clients. I want to know what makes them tick. This blog helps me, especially when people are fired up enough to bother to respond. As many have said before, nobody’s forced to respond, and blog trolls lose interest and go away, when nobody rises to the bait. Actually, some readers have said that they have sometimes found what I write to be of passing interest. Indeed, more than once the cry has been heard “Max, where are you, on this one?”

  20. Step Back,

    What is the point of calling out the examiner on these issues? Those arguments have failed to get me anywhere.

    Most of the time when I beat a 103, it is by either demonstrating that the combination of references still fails to disclose all the elements of the claims or demonstrating a clear teaching away in the references from being combined with one another.

  21. JAOWR(tm)

    Thanks for the Buffalo Speed (can’t use acronym) theory. LOL.
    Many an Office Action that I get rely on it.

  22. pds,

    Thanks for your notes.
    I’m not a chem major, so this one (11/300,002) went over my head a bit. It was the first in the series that had something that looked worthy of commenting on & I stopped looking there.

    It seems to me that both the examiner and the prosecutor are ping ponging over questions that are not the main issues. The main issues are: 1) What is the most pertinent art? 2) Who is PHOSITA at the relevant time? 3) How would this PHOSITA have interpreted the cited references? What inferences or suggestions would this PHOSITA have drawn from the applied references and/or from other relevant teachings of the time (time of invention)?

    The examiner appears (to this non-chem person) to simply make things up out of thin air: It would have been obvious to do this, to do that; substitute any halogen for any other halogen. (Sure. Next time you get a cut Mr. Examiner, don’t use iodine, use fluorine.) The prosecutor appears to be letting the examiner get away with it and appears to reward the examiner with an RCE.

    Applicant’s response to the first OA did not “necessitate” the 2nd action. The examiner was supposed to have found the best art available in the first round. Clearly he didn’t. So it was the examiner’s failure to find the later cited art that led to the second search and 2nd OA. What’s this “necessitated” business? (P.S. I get those all the time too.)

  23. Here’s one for the road: I am reminded of what Cliff Clavin said one afternoon at Cheers explaining the Buffalo Theory to his buddy Norm.

    Here’s how it went:

    “Well ya see, Norm, it’s like this… A herd of buffalo can only move as fast as the slowest buffalo. And when the herd is hunted, it is the slowest and weakest ones at the back that are killed first This natural selection is good for the herd as a whole, because the general speed and health of the whole group keeps improving by the regular killing of the weakest members.

    In much the same way, the human brain can only operate as fast as the slowest brain cells. Excessive intake of alcohol, as we know, kills brain cells. But naturally, it attacks the slowest and weakest brain cells first. In this way, regular consumption of beer eliminates the weaker brain cells, making the brain a faster and more efficient machine. That’s why you always feel smarter after a few beers.”

  24. pds: “The 103 rejections simply suggest that the “Since chloride and bromide and well know species of halogen, the skilled artisan would have expected chloride and bromide substituted derivatives to work equally well as catalyst components.” Let’s see … absolutely no factual support provided for this assertion”

    We’ve been down this road before. Apparently it is a violation of some law for an Examiner to assert, without citation, that room temperature water is a liquid at 1 atmosphere and pressure. Just how dumb are patent applicants presumed to be? Moderately retarded or severaly retarded or brain dead?

    This Applicant apparently could breathe through its mouth at least because it simply amended its broad claims rather than fight the Examiner on bogus procedural grounds that would get it nowhere fast.

  25. Hutz: “If your posts were more honest and earnest, people would not be so bent out of shape.”

    I highly doubt that. The commenters that tend to get “bent out of shape” by Max’s posts are at least halfway bent to begin with. If Jerk Police and AllSeeingEye aren’t one and the same, I’ll eat Werner Herzog’s shoe.

  26. Max,

    I can offer a critique. It’s that you often write in the Mooney style of sarcasm and condescension. If your posts were more honest and earnest, people would not be so bent out of shape.

  27. “Max, you are wrong casting PTO Examiners as your “enemy.”
    That’s just absurd. Some may be just as some may be in the EPO.
    You are not funny or friendly – you come off as an offensive and a mistaken blogger with an personal agenda.
    And No, I’m not “your most benevolent friend.””

    PTO Examiners of late ARE the enemy. They ignore the law and simply follow the Dudas mentality of “reject, reject, reject.” They game the system to get bonuses and, in the process, cost my clients thousands of dollars.

    They *SHOULD* work together with us to carve out the protection available to the invention but that’s not what most of them do.

  28. “I can’t comment on the merits, but did the examiner really do anything procedurally improper? The finality of the 2nd office action was ostensibly necessitated by the amendments in the 1st response; the applicant doesn’t appear to dispute this. AFTER FINAL, the applicant submitted (1) amended claims, (2) ten pages of arguments, and (3) a twenty-four page affidavit. Looks “untimely” to me.”

    Hmmmm, let me count the ways …. starting with the first OA

    The 102 rejections basically reject a little over 30 claims in under 30 words. Definitely a failure to establish a prima facie case of anticipation. These claims, for all I know, could be anticipated, but the examiner’s rejection is procedurally deficient.

    The 103 rejections simply suggest that the “Since chloride and bromide and well know species of halogen, the skilled artisan would have expected chloride and bromide substituted derivatives to work equally well as catalyst components.” Let’s see … absolutely no factual support provided for this assertion, and no substantial evidence provided to support a finding of a reasonable expectation of success (see KSR guidelines I referenced in a prior post).

    The claims were basically amended to include the limitations found in the 103 rejected dependent claims (e.g, independent claim 3 includes the limitations of claim 9).

    In the final rejection, the examiner rejected claim 3 under new art. Since claim 3 is essentially an old claim (i.e., claim 9 written in independent form) and the examiner cited new art, the examiner should not have made the office action final. Again, procedurally deficient.

    The new 103 rejection (based upon one reference) of claim 3 is also lacks factual support to support the exminer’s obviousness analysis. As with the prior rejections, the Examiner essentially ignores the dependent claims. Procedurally deficient.

    To me, this is a classic case of the examiner shooting from the hip without any factual support with which to base the Examiner’s obviousness analysis. Also, the Examiner appears to completely ignore the dependent claims.

    FYI: I cannot say one way or another whether or not the claims are anticipated and/or obvious over the applied prior art, but from simply reading the office action, I can tell that the examiner has not made the proper findings necessary to establish a prima facie case of anticipation of obviousness.

  29. step back,

    I’d give anything to see Office Actions like that. It’s articulate, the examiner expressly acknowledged that Applicant’s arguments were persuasive, rather than simply calling them “moot”, and the examiner apparently specifically responded to a particular point made by the Applicant in the first response. In my art, I almost never see actions that read this well.

    I can’t comment on the merits, but did the examiner really do anything procedurally improper? The finality of the 2nd office action was ostensibly necessitated by the amendments in the 1st response; the applicant doesn’t appear to dispute this. AFTER FINAL, the applicant submitted (1) amended claims, (2) ten pages of arguments, and (3) a twenty-four page affidavit. Looks “untimely” to me.

  30. I suggest that MM focus on 11/300,002 since that one includes an interesting Rule 132. The examiner ruled that Applicant’s first amendments overcame the first OA. Examiner issues a 2nd final OA with new art. Applicant files a 132. Examiner says it’s untimely. (Hmmm. How could Applicant have filed it any earlier, before the newly cited art? Not physically possible.) Applicant cozys up to the examiner by feeding him an RCE. Rest of story is yet to unfold on Public PAIR.

    (The Rule 132 is “interesting” because it refers to “those of us in the ___ art”. What does that have to do with PHOSITA?)

    What say you MM, anything to whine about here?

  31. The quote I misremembered (upthread) was from Lao Tzu, in the book by Tavris and Aronson, and reads:

    A great nation is like a great man:
    When he makes a mistake, he realises it.
    Having realised it, he admits it.
    Having admitted it, he corrects it.
    He considers those who point out his faults as his most benevolent teachers.

    I like a patent law blog that is peopled by benevolent teachers.

  32. 11/300,000 … Yes
    11/300,001 … Yes
    11/300,002 … Yes
    11/300,003 … Yes
    11/300,004 … not available
    11/300,005 … no 103 rejection
    11/300,006 … Yes
    11/300,007 … not available
    11/300,008 … Yes
    11/300,009 … no 103 rejection
    11/300,010 … not examined

    Randomly selected, based upon large round number, to find applications currently being examined.

    Since the request was only to find an Office Action, this request has been satisifed … now the burden shifts to MM to show that the 103 rejections were properly made under KSR/Graham.

  33. and here i thought jerk referred to the people being policed. won’t make that mistake again

  34. I’ll make a prediction: nobody will come forward with an example of an Office Action taken from Public PAIR (and not already the subject of an appeal) that contains a clear example of what a literal handful of whiners here are complaining about.

    Some problem! Truly pathetic.

  35. Thanks Jerk. Hyperbole. It’s a legitimate writing device, that I’m perhaps over-partial to. It upsets some people. And, yes, you’ve sussed me out. Upsetting people is my agenda. You’re not the first to be upset. BTW, hope you’re not a real policeman. I wouldn’t want to upset one of those.

  36. Max, you are wrong casting PTO Examiners as your “enemy.”
    That’s just absurd. Some may be just as some may be in the EPO.
    You are not funny or friendly – you come off as an offensive and a mistaken blogger with an personal agenda.
    And No, I’m not “your most benevolent friend.”

  37. The sequence of the last five posts is a nice example of the different motives bloggers have. Thanks for the back-up, Lowly. To answer your question Jerk: Nobody. (And it’s precisely because what I write is NOT paid for by anybody, that you can rely on it). There’s a nice book I just started reading, called “Mistakes were made (but not by me)”. Two eminent California psychologists wrote it. They quote some ages-old Chinese guy, who observed that he who helps you to the realisation that you made a mistake is “your most benevolent friend”. I just try to be friendly. Why don’t you try it sometime? For a start, tell me WHY what I write is so cr_ppy.

  38. JerkPolice,

    ““Put simply, in Europe the Examiner is your friend but in the USPTO your enemy.””

    That’s a fairly accurate statement, actually, given how litigation in europe works. Max can give details far better than I ever could, but this really isn’t too far out there to state.

    Max, stop making me have to defend you. ;)

  39. Max, who pays you to write all the crappy stuff you do?

    Like this crap: “Put simply, in Europe the Examiner is your friend but in the USPTO your enemy.”

  40. “I’m not sure what we would really need to get something issued–perhaps a full-time laboratory churning out data solely to respond to Examiner’s rejections, but I don’t believe that even that would work because I think the Examiners are just looking for some excuse to shoot the claims down. Perhaps putting in a declaration or some data might put you in a better position for appeal, since you can argue the Examiner didn’t fully consider it, but it’s not getting us anywhere at this point. Very frustrating.”

    I feel your frustration. Most of the rejections we see combining references are sheer nonsense, with no explanation for the basis or motivation for the combination. Often, I attack these for formal deficiencies, including failure to satisfy TSM (which contrary to some folk’s belief, isn’t dead, just not as high now on the argument list)

    This apparent refusal to consider contrary data showings is inconsistent with the recent In re Sullivan case where the Federal Circuit specifically said such refusal to consider is grounds for reversal. As you’re unfortunately finding out, the only way to get such improper refusals overturned is to appeal. That’s the sad state of affairs we now have where low allowance rates are equated with quality examination. Good luck.

  41. Indeed, frustrating. Because one is used to the idea that the Exr is the one thing that stands in the way of the glorious Presumption of Validity, and the comforting thought that, absent Clear and Convincing evidence, the issued patent makes a very swingable heavy baseball bat indeed. No wonder the USPTO examiners are valiantly responding to the public interest by formulating obviousness objections in EPO style. If it is not working, that might be because the validity environment in Europe is more hostile to patents in inter partes proceedings after issue than it is in ex Parte examination before issue. In Europe, prosecution at the PTO is your one chance to build a position on obviousness tough enough to hold off post-issue attacks from competitors as big as you and as well-informed on technology as you. Put simply, in Europe the Examiner is your friend but in the USPTO your enemy. BTW, the stats on outcomes of inter Partes re-exam proceedings are very revealing.

  42. curious said,
    “Jim H. writes ‘more and more OAs cite KSR as supporting 103 rejections without the examiner providing an adequate explanation of how a PHOSITA would find a combination of prior art references to be obvious.’

    “I have experienced the same problem. The examiner just finds claim elements in diverse references (presumably from word searches) and cobbles them together (with the benefit of the application’s teachings) and rejects the claims.”

    I have been seeing this a lot more lately too. Like others, I am working on my own cases and so don’t want to discuss particulars, but I don’t agree with many obviousness rejections I’ve gotten lately because the Examiner hasn’t explained (at all) why one of skill would have combined the references to arrive at the claimed invention.

    In some cases, because it seemed like we weren’t making progress just arguing, we have submitted declarations from an inventor explaining why one would not have had motivation to combine the references (for example, because the cells from one reference would be incompatible with the method used in another reference) and the Examiner dismisses the evidence in the declaration by saying that it is inappropriate to compare the references in this way because they were performed in different laboratories and used different reagents. Got that? So the Examiner can combine the references to make an obviousness rejection, but we effectively can’t argue against a combination.

    In other cases, we’ve submitted supporting data, but what ends up happening is that the Examiner finds something “wrong” with it–speculating that the samples were treated differently in some way (beyond the test variable) or saying that the data doesn’t provide full support for the full scope of the claims when they’re already pretty narrow.

    I’m not sure what we would really need to get something issued–perhaps a full-time laboratory churning out data solely to respond to Examiner’s rejections, but I don’t believe that even that would work because I think the Examiners are just looking for some excuse to shoot the claims down. Perhaps putting in a declaration or some data might put you in a better position for appeal, since you can argue the Examiner didn’t fully consider it, but it’s not getting us anywhere at this point. Very frustrating.

  43. “I have never seen practitioners do the things that you suggest are going on.”

    LOL. I guess the CAFC and District Courts just make the inequitable conduct facts up. It never really happens. Geez, do you read the stuff you write?

  44. “So they wind up combining a secondary reference to a sewing invention with a primary reference to a metal bone mending device, because both had the word “pin.”"

    Oh, so you have an actual Office Action to show us? Great. Let’s see it. Then we discuss an actual situation instead of listening to babies crying about their garbage inventions that they can’t patent.

  45. MM …. practicing his intellectual dishonesty again.

    MM has probably been asked a number if times (probably approaching 3 digits) over the past years on this board to provide evidence for one of his assertions. However, like a well-practiced troll, he rarely (if ever) even responds to such questions.

    However, when someone makes an assertion that he doesn’t like, he is the first one to jump up on his soap-box exclaiming that no evidence has been provided and that the person making the assertions needs to provide evidence.

    MM … BTW, you keep referring to all these practitioners allegedly performing all these nefarious deeds before the PTO. As I’ve noted before, I only opine upon what I know and/or seen personally (and I assume most others do as well), and I have never seen practitioners do the things that you suggest are going on. Are you trying to tell us somethig about your practice or about the people you practice with?

    BTW: for anybody who thinks that an examiner isn’t making the findings that should be made regarding KSR, I recommend taking another look at the following:

    link to fr.com

    I cannot recall (since the issuance of these guidelines) an examiner ever performing the factual inquiries that are discussed therein. The operative phrase I like to refer to is the following: “Office personnel MUST then articulate the following: …. [factual inquiries].”

  46. Mooney’s salient comment “Uh…so” shows how little he understands.

    The simple underappreciated fact, that the CAFC knew all too well when it was established to clean up the messy state of affairs in patent law precedent, is that by creating a word search of the art the Examiner is necessarily engaging in hindsight reconstruction of the art. Apparently Mr. Hindsight himself, “Everything is Obvious”, Mooney, doesn’t “get” this rather subtle point, which is understandable given his limited powers.

    By making searching of the art more easy (some recall when Examiner were forced to search manually through “shoes” of art), the CAFC decided that putting together the easily found art should be a little more difficult than “uh…so” thus the TSM test was designed to force Examiners to do what they had been doing under the manual search system, which is to actually take a look at the reference and see if it was actually relevant.

    Now, it seems that examiners just do a computer search using claim terms (by definition, application of improper hindsight), which in itself is “uh…so” fine, but then they don’t even look at the references. So they wind up combining a secondary reference to a sewing invention with a primary reference to a metal bone mending device, because both had the word “pin.”

    I understand your limited mental capacity to understand all this Mooney,…

    “Uh…so” indeed.

  47. I’ve nothing to add to your last sentence, Jim. ;)

    I’m glad that the Board is citing KSR. As the leading Supreme Court case on obviousness, it is probably worth citing whenever the issue arises.

    I don’t doubt that Examiners occasionally make improper obviousness rejections. That is to be expected. It happened prior to KSR as well.

    But I highly doubt there is anything remotely approaching a systematic misapplication of the law to reach a finding that a claim is obvious. Again, if that were the case, it should be trivial to find examples merely by randomly pulling files from Public Pair and looking at the first Office Actions.

    My prediction is that you won’t find what you’re looking for. Instead, you’ll find what I know is there: bogus, plainly obvious claims being shot down with at least as much intellectual honesty as went into the drafting of those claims.

  48. Malcolm,

    I don’t know if this provides a gauge of KSR, but I just performed a few quick-and-dirty queries on the Final Decisions stored in the BPAI database between 5/1/2007 and 7/31/2008. (Please note that this was my first visit to this web page link to des.uspto.gov and first attempt to derive numbers from any database of the PTO):

    The BPAI has issued a total of 4526 opinions, wherein 1525 of them have the term “reversed” appearing (33.69%).

    Within the total number of decisions, 2162 of them have the term “KSR” appearing, wherein 661 have been reversed (30.57%).

    Although the “Final Decisions” database appears to include “Decisions,” “Judgments,” “Orders,” and other categories stored in the database, the use of KSR appears to result with fewer BPAI rejections.

    DISCLAIMER: This analysis is likely worth the amount you paid for it and the hour or so playing around with the queries.

  49. “The examiner just finds claim elements in diverse references (presumably from word searches) and cobbles them together (with the benefit of the application’s teachings) and rejects the claims.”

    Uh … so?

  50. Jim H writes:”one of the elements was addressed by the examiner applying the “common sense” of a PHOSITA argument of KSR.”

    And I’ll bet that that missing element was the point of novelty too.

  51. USC 145 last line: “All the expenses of the proceedings shall be paid by the applicant.”

    I’m sure the pto can scrounge up some attorneys to sit in court on your applicant’s dime while you have your de novo review. Someone with a similar name has been bringing up for some time now that you guys could always simply go to the district court to get your patents. IMO it would be a good thing if this was popular, because 1. The courts wouldn’t do another search, they would just say the app is allowable over the art of record and that’s that (no opqa also), and 2. the courts would get a heaping helping of the ridiculousness examiners see at the PTO on an everyday basis really quickly. And when they start to get overworked/in over their heads from that, good caselaw tying up random bs will fly from their fingertips faster than you can say bob’s your uncle.

    That said, how many DC judges do you think there are in the US that know anything about organic chemistry/whatever other “expert” subject?

  52. Malcolm,

    This isn’t a widespread problem that I know of, and I don’t personally know of an aggrieved party faced with a 103 rejection affirmed by the BPAI. My passion has been induced vicariously through their frustration.

    However, discussions on another message board of practitioners have been directed to new challenges not experienced pre-KSR. For instance, a practitioner on a group board has stated that a 103 rejection was made by the examiner but not all of the elements were taught between the prior art references. Rather, one of the elements was addressed by the examiner applying the “common sense” of a PHOSITA argument of KSR. I can only sympathize with their grief from the disruption made possible by KSR and the expanded lattitude provided to the PTO by KSR.

  53. Jim H. writes “more and more OAs cite KSR as supporting 103 rejections without the examiner providing an adequate explanation of how a PHOSITA would find a combination of prior art references to be obvious.”

    I have experienced the same problem. The examiner just finds claim elements in diverse references (presumably from word searches) and cobbles them together (with the benefit of the application’s teachings) and rejects the claims.

  54. “Expert witness with PhD in the art, 10 published peer-reviewed articles, and 20 years experience”

    LOL. Have you ever worked with these experts? My experience is that, like any good attorney, they can be trained to believe and advocate for just about anything. The key is to have a lot of carrots handy.

  55. “I will check with other practitioners who have been facing the same issue of obviousness rejections citing KSR, but I would prefer to keep the identity of my clients confidential.”

    Perfectly reasonable. But if this is a widespread problem, it should be easy for you to find examples by randomly pulling up ten or twenty first office actions on PAIR.

    While you’re doing that, check out the independent claims pending in those ten or twenty cases and ask yourself if they seem a tad broad to you.

  56. Jim H,

    You write:

    “[B]ut if the BPAI affirms the 103 rejection, the applicant is stuck with the facts of the record and faced with having to argue against a “substantial evidence” review on appeal to the CAFC which benefits the PTO **because all the PTO needs to show in the record “is evidence** that a reasonable mind might accept as adequate to support a conclusion.” Not a very high burden to sustain with a proper factual basis in the record.” [asterisks added]

    Not true. Even under KSR, the PTO must show a rational underpinning. Moreover, re-read 5 USC 706. Administrative agency determinations cannot be arbitrary and capricious. The PTO must weigh the countervailing pieces of evidence and explain why it chose one piece of evidence over another.

    So let’s see. Expert witness with PhD in the art, 10 published peer-reviewed articles, and 20 years experience working with ordinary artisans on this side of the scales versus examiner with no higher level degree, no credentials, NO expereince working with ordinary PHOSITA at the relevant time on the other side. Hmmm. Yup. The weights on the scales of justice seem to balance clearly in favor of the examiner and the PTO will have no problem demonstrating this to a reviewing court.

  57. Malcolm,

    I will check with other practitioners who have been facing the same issue of obviousness rejections citing KSR, but I would prefer to keep the identity of my clients confidential.

    Clive,

    A § 145 action means that the BPAI has acted and affirmed an examiner’s rejection. I believe that the BPAI would have to revoke (rescind? vacate?) its opinion and reverse the examiner before the PTO could re-open the application. I don’t know if the Commissioner has the authority to order the BPAI to take such action or the BPAI has the authority to act sua sponte.

    My guess is that an examiner cannot issue a new action without some action taken against the BPAI’s opinion.

    If such action is taken and the application once again undergoes prosecution, however, then I would agree that the issue is moot, and the formerly aggrieved applicant would not attain standing.

  58. Jim H. and JohnDarling,

    Given the facts of your two posts, does the USPTO not have the option of withdrawing the challenged rejections (thereby mooting the controversy) and issuing a new Action with new rejections?

    I’m unsure how much/little the USPTO wants to spend its money in litigation (GSK aside, of course); seems they’d be likelier to just bail on the district court with a reopen-type strategy. Or is that not an option once the complaint is filed?

  59. “The only reason why I am interested in the subject in the first place is because the more and more OAs cite KSR as supporting 103 rejections without the examiner providing an adequate explanation of how a PHOSITA would find a combination of prior art references to be obvious.”

    Hey Jim, how about an example from the public record? You know, because there’s so many of them out there it would help if you pointed to just one so we could all know exactly what you’re talking about.

  60. curious,

    Writing on article and having it published on Patently-O would be fun — fun because I have found myself passionately against the liberties taken by the PTO when issuing 103 rejections in our post-KSR patent world. It would take some time away from my prosecution activities as a solo practitioner, but it would be worth it.

    The only reason why I am interested in the subject in the first place is because the more and more OAs cite KSR as supporting 103 rejections without the examiner providing an adequate explanation of how a PHOSITA would find a combination of prior art references to be obvious. KSR has expanded the breadth of the examiner’s ability to reject under 103 beyond TSM.

    An applicant who disagrees with the examiner’s rejection can appeal, but if the BPAI affirms the 103 rejection, the applicant is stuck with the facts of the record and faced with having to argue against a “substantial evidence” review on appeal to the CAFC which benefits the PTO because all the PTO needs to show in the record “is evidence that a reasonable mind might accept as adequate to support a conclusion.” Not a very high burden to sustain with a proper factual basis in the record.

    The § 145 review allows the applicant to directly challenge the PTO’s findings with his own evidence in a DE NOVO setting. I cannot overstate the importance of the aggrieved applicant having an opportunity for a de novo review of factual findings versus a substantial evidence review. Because live testimony can be heard from an expert in front of a neutral trier of fact for a determination of patentability, items can be stressed in a manner that cannot be easily conveyed by an expert in the field in the cold, written form of a Rule 132 affidavit. Also, the examiner can be forced to testify and make his case in front of the neutral trier of fact. Although the ultimate question is obviousness is a question of law for the court to decide, it is based on the factual underpinnings, and a de novo determination of facts is the best that an aggrieved applicant can hope for.

    In the district court, the PTO must prove — not conclude.

    In the post-KSR patent world, the § 145 district court action is an appealing (no pun intended) alternative to those who believe the the PTO has it wrong, think the possession of a patent is worth it, and can absorb the expenses of litigation.

    DC – Just say the word.

  61. Jim H,

    Excellent discussion of 35 USC 145 !!!
    I’ve saved a copy to disk for future reference. Thanks.

    (These kinds of discussions –as contrasted with flame wars– makes reading Patently-O worthwhile. Jim H please contribute more often.)

  62. BTW Dennis, 35 USC 145 does not allow appeal to “a” district court, it allows appeal to USDC for DC only.

    Section 145 also authorizes the Director of the PTO to issue the patent if the court adjudges that the patent should issue. It does not require, direct, or order the PTO to issue the patent. So even if the USDC for DC finds for the applicant, if the PTO decides it doesn’t want to issue the patent, it can pull the old re-opening of prosecution if it chooses to.

    In that situation, I guess you’re stuck filing for a writ of mandamus.

    Anybody got a copy of Marbury v. Madison handy?

  63. V,

    From your comment, I have looked into the issue a bit more. Based upon my discussion below, I believe that the D.C. District Court’s inclusion of the “negligent” standard applied for the introduction of “new evidence” by the aggrieved applicant is inconsistent with Supreme Coourt and Federal Circuit case law.

    To begin, here is a full paragraph cite from Takeda which adds the “negligent” limitation for the introduction to new matter and cites Zurko:

    “[W]hen a patent applicant seeks ‘direct review of a Board decision in the federal district court’ pursuant to 35 U.S.C. § 145, the applicant may ‘present to the court evidence that the applicant did not present to the PTO.” Dickinson v. Zurko, 527 U.S. 150, 164 (1999) (citation omitted). See also Mazzari v. Rogan, 323 F.3d 1000, 1004 (Fed. Cir. 2003) (‘A section 145 review is distinct from a section 141 appeal in that it affords the applicant an opportunity to present additional evidence. . . .’). ‘While the evidentiary record before the Board serves as the “evidentiary nucleus” of the district court proceeding in a section 145 action, the parties are entitled to submit additional evidence.’ Gould v. Quigg, 822 F.2d 1074, 1076 (Fed. Cir. 1987). Parties are, however, ‘precluded from presenting new issues, at least in the absence of some reason of justice put forward for failure to present the issue to the Patent Office.’ DeSeversky v. Brenner, 424 F.2d 857, 858 (D.C. Cir. 1970). And ‘the plaintiff may not submit for the first time evidence that he was negligent in failing to submit to the Patent Office.’ MacKay v. Quigg, 641 F.Supp 567, 570 (D.D.C. 1986)(citation omitted).”

    A few points of interest. First, the “negligent” limitation to the introduction of new evidence is not a limitation made by the Supreme Court in Zurko. Here is the relevant paragraph from Zurko:

    “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.”

    Second, the 1987 Federal Circuit opinion in Gould interpreted § 145 as providing an “entitlement” to the aggrieved applicant submit additional evidence, and that the evidentiary record before the BPAI is treated merely as an “evidentiary nucleus.”

    Third, the more recent 2003 Federal Circuit opinion in Mazzari provides the aggrieved applicant a de novo review by 1) submitting additional evidence, 2) submitting new evidence, 3) supplementing previously submitted evidence, and 4) introducing the same evidence through live testimony that disputes or conflicts with the evidence submitted before the BPAI. Mazzari states the following:

    “A section 145 review is distinct from a section 141 appeal in that it affords the applicant an opportunity to present additional evidence or argue the previous evidence afresh, either by simply relying upon the record below or by reintroducing the same evidence through alternative means such as live testimony. ‘While the evidentiary record before the Board serves as the “evidentiary nucleus” of the district court proceeding in a section 145 action, the parties are entitled to submit additional evidence.’ Gould v. Quigg, 822 F.2d 1074, 1076, 3 USPQ2d 1302, 1303 (Fed. Cir. 1987) (citing Fregeau v. Mossinghoff, 776 F.2d 1034, 1037, 227 USPQ 848, 850 (Fed. Cir. 1985)). If new evidence, or evidence that was previously submitted is supplemented or introduced through live testimony, the district court takes on the role of fact-finder and may need to make factual findings. Gould, 822 F.2d at 1077, 3 USPQ2d at 1303-04, citing, Fregeau, 776 F.2d at 1038, 227 USPQ at 851. (‘[I]f new evidence is presented on a disputed question of fact, a de novo fact finding is made by the district court.’). Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1346, 53 USPQ2d 1580, 1585 (Fed. Cir. 2000) (stating that if the parties choose to present the same evidence but do so through the use of live testimony, the district court also makes factual findings de novo.) (citing Burlington Indus. Inc. v. Quigg, 822 F.2d 1581, 1584, 3 USPQ2d 1436, 1439 (Fed. Cir. 1987)).”

    After discussing Zurko, the Federal Circuit in Mazzari continued:

    “If the parties choose to present additional evidence to the district court, as they did here, the district court would make de novo factual findings if the evidence is conflicting. We then would review the district court’s legal conclusions without deference and its de novo factual findings under the traditional court/court standard of review, clear error. Zurko, 527 U.S. at 164 (‘[N]onexpert judicial factfinding calls for the court/court standard of review.’).”

    Finally, the D.C. District Court in MacKay applies the “negligent” standard for the introduction of new evidence in that “the plaintiff may not submit for the first time evidence that he was negligent in failing to submit to the Patent Office.” This is not a limitation mentioned in either Zurko or Mazzari. Furthermore, the “negligent” limitation imposed by the district court cannot be reconciled with the ability of the aggrieved applicant to “submit additional evidence” or “present the same evidence” through the use of live testimony to “supplement previously submitted evidence” — evidence which disputes or contradicts the evidence submitted before the BPAI.

    Given the 1999 Supreme Court opinion of Zurko and the 2003 Federal Circuit opinion of Mazzari, the earlier 1987 D.C. District Court opinion in MacKay applying the “negligent” standard for the introduction of new evidence is an improper limitation which, if continued, denies the aggrieved party an opportunity for a de novo finding of fact entitled under § 145.

  64. Re query about treatment of factual findings – I’m pretty sure the district court gets to do its own fact finding de novo – see Dickenson v Zurko

  65. Follow up — Question re treatment of factual findings when aggrieved applicant appeals an adverse BPAI holding to the USDC instead of the CAFC

    One caveat with respect to a § 145 review affording the opportunity to present additional new evidence. Although new evidence may be presented, the applicant cannot be negligent in failing to raise the new evidence before the BPAI. A plaintiff in the district court “may not submit for the first time evidence that he was negligent in failing to submit to the Patent Office.” The Court found that Takeda was not negligent in submitting new evidence.

    Takeda presented new evidence in the form of an expert’s declaration. The declaration made reference to the two prior art patents that ultimately defeated the PTO’s double-patenting rejection and won the case for Takeda. In finding no negligence, the Court noted that Takeda submitted one of the prior art patents to the BPAI, but the BPAI decided not to review on procedural grounds. As for the second prior art patent, Takeda did not learn of it until after the briefing before the BPAI was complete. “In these circumstances, the Court finds that Takeda’s failure to submit evidence contained in the [declaration] is not negligent.”

  66. Dennis — this is probably off-topic for a patent blog, but the USC law review transition has me wondering. Why would a law review switch to “peer review”, given that USC has defined “peers” to be not only other professors, but also practitioners and judges. That seems to include pretty much everyone in the law business except students. I’ve known some really flaky professors, judges, and — big surprise — practitioners. Do professional academics believe that the judgment of students (as a whole) is inferior to the judgment of everyone else (as a whole)?

    By the way, I’m not speaking as a student — I’m just a middle-aged lawyer, who has never understood society’s condescension toward youth. Students have a certain intellectual purity that the rest of us don’t. That would seem to be of value in an academic journal, rather than something to “transition” away.

  67. Response to Question re treatment of factual findings when aggrieved applicant appeals an adverse BPAI holding to the USDC instead of the CAFC

    As a preliminary matter, please note that this is not an “appeal” to the district court; rather, it is a civil action to obtain patent under 35 USC § 145.

    The poster “somebody” (in another post on this blog earlier today) cited a recent case Takeda Pharma. v. Dudas (1:06-cv-01640-TFH) (USDC, District of Columbia). The Takeda case addressed a BPAI re-exam rejection of Takeda’s patent covering a process to make certain cephem compounds. Takeda prevailed in its action. The Court found that Takeda was entitled to a re-exam certification confirming its rights to the patent; in other words, the PTO lost in district court after “winning” before the BPAI.

    In the case, the district court states the following:

    “An action under 35 USC § 145 is not merely a form of judicial review. Rather, it is a ‘hybrid of an appeal and a trial de novo.’ Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1345 (Fed. Cir. 2000) (citation omitted). See also Newman, 877 F.2d at 1579 (‘A district court action under 35 U.S.C. § 145 is a de novo determination of patentability.’). As more fully explained below, § 145 review ‘affords the applicant an opportunity to present additional evidence.’ Mazzari, 323 F.3d at 1004. To the extent the applicant presents new evidence challenging particular factual findings, the Court review the Board’s factual findings de novo, and the Court applies the substantial evidence standard to the Board’s factual findings as to which the applicant presents no new evidence. Mazzari, 323 F.3d at 1005.”

    In the post-KSR patent world where the breadth of examiner obviousness rejections has been expanded beyond TSM, a de novo determination of factual findings by the district court seems like a good way to challenge the factual findings of the PTO if you can afford it. Also, a de novo findings of fact beats having to deal with the “substantial evidence” standard of review applied by the CAFC.

    DC — Thanks.

  68. Hi DC. From your link to patentlyo.com post, I set up an automatic note to look at patent term adjustment for a matter if more than 600 days have passed between the deposite date and the notice of allowance date. The 600 days is based on your Days of Prosecution scatter plot. It seems to me that if there is a likelihood of term adjustment, you gotta go for it even if the extension is less than one year. Those six to seven year term extensions must be some silly cases with some crazy facts. Any change you can write about those.

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