In re Jung (Fed. Cir. 2011)
Ed Jung is a co-founder of intellectual ventures and Dr. Lowell Wood is a world renowned technologist. In 2004, the pair filed a patent application for a photo-detector array system. The examiner rejected the claims as obvious and the BPAI affirmed. Jung appealed to the Federal Circuit arguing that “(1) the examiner failed to make a prima facie case of anticipation, and (2) the Board acted as a ‘super-examiner’ by performing independent fact-finding and applying an improperly deferential standard of review to the examiner’s rejections.”
Prima Facie Case: The patent office has the initial burden of presenting a prima facie case of invalidity. A prima facie case is adequately articulated by notifying the applicant of the reasons for its rejections so long as the explanation is not “so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990). This requirement comes straight from Section 132 of the Patent Act. 35 U.S.C. §132(a).
Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.
Once a prima facie case is presented, the burden shifts to the applicant for rebuttal.
In Jung, the Federal Circuit ruled that the examiner presented a prima facie case of invalidity based on his explanation that Jung’s broadly drafted claim encompassed the prior art.
Here, the examiner’s discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.
In the appeal, Jung argued that the articulation of a prima facie case should involve more than the notice of rejection outlined in § 132. Jung asked for a claim construction of the disputed claims – similar to what would be required of a court. The Federal Circuit rejected that argument – seeing “no reason to impose a heightened burden on examiners beyond the notice requirement of § 132.”
There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. “[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence.” Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. As the statute itself instructs, the examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and references as may be useful in judging the propriety of continuing prosecution of his application.” 35 U.S.C. § 132. Here, the examiner’s discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.
Jung’s argument was clearly a long-shot in this case and not well presented if the sole intent was to make sure that Jung gets this patent. Of course, Intellectual Ventures is now one of the largest patent holders in the world and its actions are almost always strategic in nature.
ohhh ohhh – he called me a name – must mean that his side O the argument is over.
That and without an answer on the burden O persuasion.
What a tool!
Pingertard, he can show me in any number of different ways. He can show me his fellow’s work. He can show me his own work. He can show me work of strangers. I don’t give a dam. Bottom line is, he doesn’t get OA’s like I posted above and he knows it.
The point I was making was that he was contorting what is going on in the cases which he raises as a hypo.
What is happening are mistakes of substance not procedure. That is, what is actually happening is the examiner either ignored/missed/falsely indicated a limitation in the claim or did not set forth the rejection sufficiently for you to be put on notice of the grounds of rejection. If they ignored it then the response is simple. Say they ignored it and that you see no reason why it would be ignored. When they come back explaining to your dum b arses that it was some intended use limitation or some nonsense like that then deal with your justly earned final accordingly. Say they missed it. Again, the response is simple. Point out that they missed it. Note you can even combine this response with the previous response for super duper awesome responses. Note also that for either of these responses you don’t even need to cite a page of caselawl citations. If the limitation is missing and it was a duly limiting structural limitation or whatever then fine, the pto will correct the issue or you can go to appeal and win. Say the PTO falsely indicated a limitation as being met by this or that element in the reference. Fine. The response is simple, state that you don’t think that limitation is met by x feature in the reference and explain why. Note, again, that you don’t even have to cite a page or so of caselawl. Finally, if they just didn’t write it out sufficiently for you to be put on notice then put that in your OA. When it comes back as a final because the office regardds you as a retard who needed extra hand holding then don’t blame me. But, most examiners will probably give you a non-final out of pity. If it comes back as final and you still think the first one was not sufficient after things have been clarified then petition the finality of the office action due to the first one being insufficient to put you on notice. When the director denies your petition then go cry in a corner because you’re a big fat loser. Or, alternatively, you can appeal, and probably have the board and Fed tell you to stfu or petition the finality.
End of mo fin’ story. Je sus.
I also note that sure, one time in a hundred thousand some new examiner will be confuzzled about what he needs to set forth to put the applicant on notice and shift on the burden and the spe will sign off on it and it will then be signed off on as being final. Those cases are also very easy to spot, they look something like the example I set forth in the previous post. And you can deal with them by stating that a reference which does not contain all elements does not make a prima facie case and that the examiner having mistakenly believed so is in err. You can also appeal these cases and WIN, both now and prior to this decision.
Saying it doesn’t make it so.”
Not relevant, pingaling, because in this instance I merely observed a fact: “6 just showed everyone exactly why your lover du jour BB is full of shxt.”
That was followed by another observation of a fact: my comment was directly related to your comment to 6.
And like I’ve been saying, pingaling, you keep denying these facts because: YDAAFR.
Keep clucking, chicken little.
“No, I think he has it just about right.
Um, no he dont.
Again with the improper use of “obtuse” Chowder boy.
No, I think he has it just about right.
“Uh…. no. I’ll say it again”
Let me throw a quote atcha from your new BFF:
“Saying it doesn’t make it so.”
Also let me point out that ya be copying your BFF and not answerin questions put to you, specifically:
soooo, my pointing out 6’s desire ta have BB out himself has… what relation to what ya say about me bein “full of shxt” exactly?
Let me guess – you gonna start copying me and my Homey dont do answers TOO?
Again with the improper use of “obtuse” Chowder boy.
And if you and Sunshine would actually take notice – my initial reply was in fact directly as to how you now have clarified things. I posted afterwards in order to check my assumptions – obviously something neither you nor your BFF Sunshine ever do.
Sorta like checking a record before blatently challenging someone on that record, eh Sunshine (talk abouts dxmb as a fxcking rock).
That aint blue – that be egg on your faces.
But hey, keep bringin the chuckles boys.
You were the only one who was confused, pingaling. And that’s because you’re dxmb as a fxcking rock.
pingaling 6’s desire ta have BB out himself
Uh…. no. I’ll say it again: you’re dxmb as a fxcking rock, pingaling.
So you’re incapable of reading the actual post and figuring out that the directive to grow up was directed to chicken littles such as yourself? You’re pretty obtuse.
“I was telling you and the rest of the chicken littles to grow up”
That might be more effective if ya then actually post in reply to the right person. As is evident above, ya replied ta 6.
Just an observation.
oooo kaaaay.
soooo, my pointing out 6’s desire ta have BB out himself has… what relation to what ya say about me bein “full of shxt” exactly?
Not only is it not “And for the same reason” – there be no reason.
Your desire ta have me “Keep digging” must only then be for me to try ta reach ya. That must be one deep hole ya be in there Pally.
But hey, keep the chuckles flowin there Sunshine.
I was telling you and the rest of the chicken littles to grow up. Of course, the fact that you’re so amused by your own baby talk probably means that’s an unlikely development.
pingaling, go right ahead and call up your imaginary “med check”.
what ya say has no relation at all to what I done say
Except that what I said is directly related to what you said, pingaling.
Keep digging.
ohhhh – handwaivy fluffy stuff – thanks Sunshine.
Cepts what ya say has no relation at all to what I done say, what 6 done say or what Babbles done say. Other than that, ya still be fluffy.
Shall we call yet another Med check for you?
“Talk about being deliberately obtuse”
How on God’s green earth is that obtuse? Ya be tellin 6 ta grow up and evidently that be a division between you and your new BFF.
Do you even know what “obtuse” means? Have ya succumbed to the Med trading practices of your new BFF? Methinks you may be beyond salvage.
Actually, ping, 6 just showed everyone exactly why your lover du jour BB is full of shxt.
And for the same reason, you are full of shxt.
Talk about being deliberately obtuse. Though I’m not sure it’s deliberate in your case.
Lolz at me – I didnt recognize that ya be tellin your new BFF 6 ta grow up.
Oh the divisions have started…
“Grow up.”
You first.
How about the OA that states, “Claims 1-20 are rejected as clearly anticipated by Smith”?
I can hear the chicken littles now, “The burden hasn’t been shifted!!! The sky is falling!!!! Somebody please explain everything to me!!!!! My command of prosecution practice isn’t even cursory!!!!!”
Grow up.
Ah yes, the Ol Out-Yourself-With-Specific-Example request.
6 copying Sunshine – how sweet.
6, Howza bouts you first? Post your real name so’z we all can look at your real work.
For some reason, I just dont see ya jumpin all over that opportunity.
“What I am saying is that Linn’s opinion appears to cut off purely procedural appeals, for instance where examiners enter 102 rejections on the grounds that a few but not all of the elements/limitations are met by the PA, i.e., no prima facie case.”
When have you ever received an OA where the examiner said something to the tune of:
Claims 1-10 are rejected under 35 U.S.C 102(b) by Patent et al. US XXXXXXX dated XX/XX/XX.
For claims 1-10 patent et al. shows in Fig. 3 and at col. 15, lines 50-60 a bicycle comprising a pedal 5, a seat 10 and a reflector 20 but does not show the reflector being shaped as a trapezoid as required by the claims.
SINCE WHEN DID YOU START RECEIVING SUCH A REJECTION FROM THE PTO BB? HMMM? AND SINCE WHEN DID LINN TELL YOU NOT TO APPEAL SUCH A REJECTION?
please to be showing.
“Linn is saying that the applicant does not have any right to challenge by appeal a lack of prima facie case before having to substantively respond to the merits.”
J. Linn never said that.
“And I’m saying that is outrageous.”
Saying it doesn’t make it so.
Babbles,
Dontcha get it? You’ve been labeled a “chicken little” so the debate is over and the other side aint gotta answer any questions.
Geesh, did ya lose your first grade manual of how to argue the Sunshine/6/wtvlfdt way?
BB Linn’s opinion appears to cut off purely procedural appeals
It “appears” to do so? Tell us more, Chicken Little. Maybe cite the passage you are referring to, where Linn “appears” to “cut off” “procedural appeals.” And please define these latter terms that I’ve put in quotes so we can all understand how dire the situation is.
Fact is, I can’t see why I should give a crxp about this case. Maybe it applies only to those art units where prosecution is nothing but procedural wankers gnashing their teeth because nobody (including the Examiner) cares to apply the facts.
You folks are not getting it.
As I clearly said, I am not arguing that it’s the wrong outcome. Try to think past the facts of this particular case and into the warped future this decision is taking us. Forget the freekin’ controller. The controller is not the problem; Linn is the problem.
What I am saying is that Linn’s opinion appears to cut off purely procedural appeals, for instance where examiners enter 102 rejections on the grounds that a few but not all of the elements/limitations are met by the PA, i.e., no prima facie case.
Linn is saying that the applicant does not have any right to challenge by appeal a lack of prima facie case before having to substantively respond to the merits. And I’m saying that is outrageous.
It’s like saying that if the prosecutor ignores 2 of the 4 elements of the crime, the defendant must nevertheless answer to the evidence that was never presented on elements that were never charged.
Under Linns’ opinion, the applicant has to answer to the merits of a rejection that is procedurally botched for lack of PFC.
This opinion is a wtdream come true for examiners the likes of 6.
“Particualrly, ya never seem ta come straight out and address the very thing I noted (in an original post mind you) was lacking in the CAFC opinion.”
Uhm, that’s because there’s nothing lacking in the opinion. J. Linn got it right. Only those who lack a cursory command of prosecution practice think there’s something lacking.
…and your moniker of choice be so approppriate for you, “late riser“.
I be the one with the pointy stick. I be the one chucklin at the Man Who Answers But Doesnt. I be the one who laughs at the one who is now BFF with 6 and Sunshine.
It be a splendid day. Anyone can see that. Try actually waking up first “late riser” and then join the chuckle brigade.
“sure, now that you two are BFF, I see ya loling at a lot of his inane stuff.
Shockers.”
I loled again.
“Rev up the chuckle wagons and here we go”
Me quoting me – one of my observations O gold.
Yet another long tirade here without and answer from the one who “gives answers“.
Yuck yuck yuck.
Chuckle city today baby!
You’ve never been more correct. But you were one of those kids who couldn’t tell the difference between being laughed with and being laughed at, aren’t you?
Yeps – here be another point well missed by Chowder Boy.
“Asked and answered. Go back and read any of my posts on this topic.”
Um, no. Ya never really get to the meat of the question as to what specifically does it take to establish a Prima Facie case.
Particualrly, ya never seem ta come straight out and address the very thing I noted (in an original post mind you) was lacking in the CAFC opinion.
Let’s see ya try to cliimb back to respectability and address these things, m’boy.
sure, now that you two are BFF, I see ya loling at a lot of his inane stuff.
Shockers.
“somebody else will quote you.”
Been there – done that.
Try again at reading my boy – I done shown that the boys with the i4i briefs basicly lifted many O my observations.
Let’s see – you ahve shown zilch and I have shown that you are zilch.
Chuckle city today baby!
“Uh, let me guess, somebody J. Linn described as lacking even a cursory command of prosecution practice?”
I loled.
Asked and answered. Go back and read any of my posts on this topic.
“thats right – me quoting me”
You do a lot of that. Maybe some day you’ll actually post something intelligible and somebody else will quote you.
“Now look at those in my camp – the esteemed HMS Boundy, EG and those that know that you dont know crrp.”
Haven’t heard from the HMS Boundy in awhile. I wonder if he’s sailing on the bottom o’ the ocean now?
“You’re describing yourself”
cepts one thing bucko – I’m not. That’s the beauty of the Homey dont do answers hook.
You dont have that hook.
Massive FAIL in your logic.
Try again.
Unless, you now be copying me and trying to institute such a hook for yourself…
…which O course, means that you yet again would be:
“Nice chowder head – cepts I havent changed my tune and you have.
Its okay to admit your mistakes.
Reply Apr 04, 2011 at 11:39 AM”
thats right – me quoting me slamming you. You be a regular chuckle factory today chowder boy.
O and by the by, let me point out that you still haven’t answered: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).”
I keep chuckling at your inability to answer.
“For someone to attempt a slam on non-answers, your lack thereof speak to a critical deficiency.”
You’re describing yourself.
“Uh, let me guess”
BZZZZT – wrong.
Thanks for playing.
“Clearly you do.”
BZZZZT – wrong.
Thanks for playing.
Ya see chowder boy, this be fun for me, making fun of you. And let me point out that you still haven’t answered: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).”
For someone to attempt a slam on non-answers, your lack thereof speak to a critical deficiency. As long as ya keep ignoring this, I get to keep chuckling at ya.
And you dont even have teh “Homey dont do answers” hook.
“I just dont care if you care or not.”
Clearly you do. That’s why you’re posting two responses to every one of mine.
“Dontcha know who ya be talkin too?”
Uh, let me guess, somebody J. Linn described as lacking even a cursory command of prosecution practice?
“You forgot to ask me if I care if you care.”
Um, no.
I just dont care if you care or not. Dontcha know who ya be talkin too? Are ya now inta the Med mixing parties with your new friends?
Kids, let this be a lesson to ya’ll – Just say No.
Lolz atcha chowder – look what ya been reduced to.
And still ya haven’t answerd: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).”
Hmmm, I wonders why that could be…?!
You forgot to ask me if I care if you care.
Ya forgot to ask me if I care what you think.
And still ya haven’t answerd: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).”
And you dont even have teh “Homey dont do answers” hook.
So what is your reason for not giving an answer, chowder?
Congratulations, you’ve surpassed Mooney as this site’s biggest bore.
Now I understand why you “don’t do answers.” You don’t have any.
“Whatever”
Chuckle city there pal – is that your way of actually addessing the question I done put to you?
Once again: “Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).”
And once again – ya be assumin things like gettin applications allowed – which aint nowherre relevant in the discussion on point. But ya be learning some nifty tricks from your new friends.
I be curious if ya be the windmill-in-the-head or the horse-hoofs-in-the-head type.
ps – ya gotta little blue stuff on ya there.
Whatever, Chicken Little. Keep running around yelling at the top of your lungs that the sky is falling. Those of us that know differently will carry on getting our applications allowed.
Will someone please find my main man IANAE?
The cabal of horsemen or growing increasingly restless with his absence.
Bite me.
Enjoy your company. Even you quibbled above with 6 – now you turn and sayhe was correct.
That aint flyin, chowder.
Note the typical move by Sunshine – projectiing his own “WAAAAAAHHHH! WAAAAAAHH!!!“.
Thems be your company.
Now look at those in my camp – the esteemed HMS Boundy, EG and those that know that you dont know crrp.
Come again with your points on what it takes to actually switch the burden and we will see just what you understand (or dont).
And by the by, I see you being obtuse again and claiming that “incapable of making your own independent” – Try again chowder – you be seein that my observations be like gold once again and that others be takin to my observations (not the other way around).
Like I done told Sunshine in the i4i brief writings – those following my views be golden.
I be too lazy to post this again in 13 minutes *the attention span of Sunshine, and most likey you too now that ya be all obtuse, so just come back again in a little bit and re read my observations.
“Why you’re not upset with the prosecutor is troubling.”
It is because that is how he likes to prosecute. Relying on the examiner’s unwillingness to go to the board to get an allowance or another piece of art.
Babel Boy, I endorse the comments of both 6 and wtvlfdh. The examiner met his burden by citing the reference against the claims (and the statute.) He actually doesn’t have to explain in detail.
The burden then shifts. The applicant here had to do more than just say the reference does not have an element, he has to explain why if it is not apparent on its face.
The later argument by the applicant on appeal that the claimed element had so and so features, none of which were actually in the claim, is justified, if at all, only as an argument about claim construction. Must the element be construed in this manner?
Obviously, under BRI, the examiner does not limit the claim to the corresponding structure. The applicants here seem to have assumed that BRI required that the claim be so limited. But, that is a court way of construing functional limitations, the kind we have here. It is not BRI.
Given the argument, I would have expected some argument from the applicant that the BRI required the construction they were proposing. Instead, I saw no such argument in this case.
Malcolm and 6 both understand the decision and the impact of this case. You do not.
The fact that you automatically assume that Malcolm and 6 are incorrect, and are incapable of making your own independent assessment other than, “Well, if Malcolm and 6 like it, therefore it must be bad” speaks volumes about you. And what it says isn’t very complementary.
View: Unfortunately, it doesn’t translate too well for the rest of us.
I can translate most of ping’s comments in this thread pretty well: “WAAAAAAHHHH! WAAAAAAHH!!!”
When “the rest of us” includes you, 6 and Sunshine – be afraid, be very afraid.
Like I done told you – step out of your new BFF reading club.
Try again chowder.
“O I have said plenty coherent…”
You’re the only one who seems to think so. I’m sure it’s all coherent to you. Unfortunately, it doesn’t translate too well for the rest of us.
“You haven’t said anything coherent yet.”
O I have said plenty coherent – you just need to stop hangin out with the reading club of 6 and Sunshine.
Try again chowder.
Nice chowder head – cepts I havent changed my tune and you have.
Its okay to admit your mistakes.
“Throw a little more detail into your explanantion of what this actually means and you be repeating what I already done said.”
You haven’t said anything coherent yet. But if you want to agree with what I’ve been saying all along this thread, then all I can say is: welcome to the light.
“perfectly free to respond that the examiner hasn’t presented a prima facie case”
Now you be coming around wtvlfdt.
Throw a little more detail into your explanantion of what this actually means and you be repeating what I already done said.
Btw – nice badge.
Badges? We don’t need no stinking badges
“In this case the gap, if there was one, was subtle — the examiner’s conclusory statement that the controller was met by the disclosed controller without saying how.”
There was no gap in this case. The dolt who prosecuted it added a limitation (“a well-charge-level controller operably coupled to…”) with ZERO limitation on the structure and/or function of the controller and he was told quite plainly that it was met by Kalnitsky’s controller 340. The dolt then proceeded to argue a boat load of limitations that weren’t actually claimed, he was told his arguments weren’t persuasive, which they weren’t, and he decided to appeal. Very sloppy and crxppy work.
Why you’re not upset with the prosecutor is troubling.
“…it’s that Linn’s new rule is a bllbuster for competent prosecutors and is honey for PTO sloths”
There is no new rule. If the examiner does not address every limitation/element/feature in the claim, you are perfectly free to respond that the examiner hasn’t presented a prima facie case, complied with section 132 or Rule 104, etc. If you are correct, the examiner will either have to redo the OA, or allow the application. You may have to appeal. You may have to petition. But faced with a slothful examiner you had to do those things before this decision, and you’ll stil have to do them after this decision.
If the examiner determines that you’re claimed “well-charge-level controller” is met by the “controller 340 of Kalnitsky” then you have to explain why it is not. Same as before this decision. Same as after this decision.
No change whatsoever in the law.
Here’s a tip: if you’re going to explain why the element/feature/limitation of a reference pointed out by the examiner doesn’t meet your claimed element/feature/limitation, make sure your claim actually includes something you can hang your hat on.
Same as before this decision. Same as after this decision.
Made it!
You are a work of art. . . in the same sense that my dogs see cow pies as perfume.
Oh, look, we’re coming up on a century.
“In at least two thirds of the 102 rejections I get, the dolt examiner has not entered a single comment or hint as to at least one element or limitation in the base claim. ”
And your point is what?
“Almost always, it’s a major discriminating limitation.”
Discriminating? The limitation discriminates against you?
“Even if the examiner has meticulously explained how 50 claimed elements are met by the reference, if he misses just one, there is no PFC”
Lulz, idk about that one bucko.
“Linn is wrong, and dangerously wrong, to set forth a rule that I do not have a right to appeal a botched rejection on procedural grounds.”
Should have asked to be able to petition. Since it is a procedural issue.
“I am entitled to appeal any purely procedural decision that adversely affects my client’s right to a patent without answering to any of the merits of the OA. ”
You’re entitled to appeal and have the board cite you this decision lulz.
“That is because a 102 rejection is not valid unless and until the PTO sets forth how each and every element/limitation has been met.”
Lulz, I doubt it.
“Les is also right about the compact prosecution.”
The most compact prosecution involves a rejection that is no more than a sentence long.
“In the old days (and currently in every other country in the world I know of) one could answer to the procedural flaws in an OA and the examiner could then revise the rejection so that it at least mentioned each and every element/limitation. ”
In the “old days” you got a one page form that generally pointed you to the right embodiment and maybe a few limitations.
“In practice, I find that when I respond to the FOAM on strictly procedural grounds because the examiner has ignored 25% of the claim, and when I make it clear I will appeal, I usually get a second non-final. ”
Well you’re pretty lucky. Thankfully now you’ll get a final! 🙂
“Linn’s misguided prescription changes that”
And thank god for that.
“It promotes examiner sloth and incompetence that is already too prevalent.”
What better decision could we have?
“Mind you, I am talking about instances where the gaps Linn is talking about are conspicuous. ”
Maybe you should appeal one of those cases all the way to the fed circ. Oh wait, looks like you can’t, because the PTO already fixes the problem for you prior to appeal, so you can stop your whining.
“But my point is not that the outcome of this case was bad; it’s that Linn’s new rule ”
It’s not a “new rule” it is the old rule laid out for you.
“and CAFC sloths who don’t want to deal with procedural issues.”
You could always sue them.
Careful Babbles, ya gonna get chowderhead wtvlfdt and his new BFFs 6 and Sunshine comin back atcha in an obtuse way (even though you done been up front and clear that this particular fact pattern aint worth a hill O beans).
Rev up the chuckle wagons and here we go.
Les is absolutely spot on correct.
The issue is not whether the prior art in this case meets the claim. The issue is procedural — whether the examiner has made a sufficient explanation of how each and every element of the claim is set forth in the prior art and in the same way as set forth in the claim. I call this the All Elements Rule II. It derives from the principle that what anticipates before infringes after.
This is a very pernicious and dangerous CAFC decision, it will muck the system up for years. More precisely, Linn’s assertion that the applicant does not have any right to procedurally challenge and appeal a lack of PFC before having to substantively respond to the merits is outrageous.
In at least two thirds of the 102 rejections I get, the dolt examiner has not entered a single comment or hint as to at least one element or limitation in the base claim. Zilch. Almost always, it’s a major discriminating limitation.
Even if the examiner has meticulously explained how 50 claimed elements are met by the reference, if he misses just one, there is no PFC. No burden has shifted to me, the case has not been made, and I have no obligation to address the 50 elements he did suss.
Linn is wrong, and dangerously wrong, to set forth a rule that I do not have a right to appeal a botched rejection on procedural grounds. I am entitled to appeal any purely procedural decision that adversely affects my client’s right to a patent without answering to any of the merits of the OA. That is because a 102 rejection is not valid unless and until the PTO sets forth how each and every element/limitation has been met.
Les is also right about the compact prosecution. In the old days (and currently in every other country in the world I know of) one could answer to the procedural flaws in an OA and the examiner could then revise the rejection so that it at least mentioned each and every element/limitation. Not so now.
In practice, I find that when I respond to the FOAM on strictly procedural grounds because the examiner has ignored 25% of the claim, and when I make it clear I will appeal, I usually get a second non-final. If I get a final, I file an appeal notice within a day, if possible, and I get the case re-opened 100% of the time.
Linn’s misguided prescription changes that. It promotes examiner sloth and incompetence that is already too prevalent.
Mind you, I am talking about instances where the gaps Linn is talking about are conspicuous. In this case the gap, if there was one, was subtle — the examiner’s conclusory statement that the controller was met by the disclosed controller without saying how. But my point is not that the outcome of this case was bad; it’s that Linn’s new rule is a bllbuster for competent prosecutors and is honey for PTO sloths — and CAFC sloths who don’t want to deal with procedural issues.
ping, “as a whole” is an obviousness concept, not a novelty concept.
If an element of a claim is defined in terms of what it does and not what it is, and that element is at the point of novelty, the claim is invalid per Halliburton.
Halliburton was never overruled except to the extent Section 112, p. 6, authorizes functional claiming in certain forms.
Deal with it.
The Office deals with the problem thru BRI, forcing the applicant to add novel structure to the claim. In court, however, courts simply construe such claim language to cover the corresponding structure. For some reason, defense attorneys never raise the “functional at the point of novelty” defense (invalid under Section 112, p. 2). One has to wonder why? (A partial problem could be whether the functionally defined element is the point of novelty.)
For you Sunshine – everything should be rhetorical.
pingaling Why do you keep falling back to some misguided notion that my work must be along the lines of the bad facts here
Is that a rhetorical question, pingerdoodie?
“Be clear, I sat on my arse and did nothing”
Yes, 6 did show his strongest skill set.
“at the point of novelty”
Iz that like Egyptian Goddess “point of novelty” or more like No Claim Dissection “point of novelty” ?
(and yes, I do know that Egyptian Goddess is a Design Patent case).
Do you guys even understand the whole point behind Section 112, p. 6? It is about functional claiming at the point of novelty.
Now, think about that for just a second.
Lulz, whatever on earth makes you think that I “can’t get hired”? The fact that I’m not? Lulz. JDtard, there is more to life than pursuing jobs in the legal field. I only went to the one interview because they came to me. Be clear, I sat on my arse and did nothing, they approached me. And they approached me under false pretenses. I think they looked into me because I just happened to update my resume on Monster.
“What will never cease to amaze me is that people like this can even get hired by firms in the first place.”
But you can’t get hired. So what does that say about you?
“LOL – what are the odds that “the tard” is one of the very same commenters who advocated the “PTO must hold my hand” approach to prosecution?
I’m thinking close to 100%.”
I know right? And he’s over at All things Pros too.
“And the best part is: more laughs are surely to come.”
I KNOW. Great isn’t it? IV plainly understands the importance of keeping me more than adequately entertained!
The question is though, will it be a denied request for rehearing or will it be another case? Whichever of the two it is, will they argue about their burden of persuasion so we can hear the court’s technical analysis of why that argument is just as much failsauce as the arguments here?
What will never cease to amaze me is that people like this can even get hired by firms in the first place. I mean sure they’re pros at whining, but wouldn’t a firm be a little more thorough in checking out how competent their attorney is?
Seriously. Go d Ned. How could you f up 112 6th so badly?
“Dewey Cheetam and Howe”
Everybody’s favorite CarTalk lawlfirm!