MBHB Snippets

My former law firm MBHB just released its quarterly snippets Review of Developments in Intellectual Property Law. A group of new associates started snippets around the time I started at the firm nine years ago (hard to believe). I have a short article in the newest volume discussing “Patent Data, Prior Art, and Operational Transparency at the USPTO.” Kevin Noonan of Patent Docs has written an interesting discussion of the advantages of trade secret protection (in certain situations). Other articles include (1) an international comparative analysis of software patents and (2) a discussion of some limits of KSR.

snippets 9:1, Table of Contents:

  • Considerations for Software Patent Claims in the United States, Europe, and Canada by Michael S. Borella, Ph.D., Daniel R. Bestor and Alan W. Krantz
  • Where (and Even When) Does KSR Belong in Obviousness Arguments? by Daniel P. Williams and Christopher D. Butts
  • While Not Right for Every Invention, Trade Secret Protection Has Its Appeal by Kevin E. Noonan, Ph.D.
  • Patent Data, Prior Art, and Operational Transparency at the USPTO by Dennis D. Crouch

Download it while it’s hot (PDF). You can fill-out a form to receive a hard copy.

65 thoughts on “MBHB Snippets

  1. Go d Ned, you play in the little leagues.

    …says the boy who cant even get into law school.

    O teh chuckles.

  2. The examiner does not determine the BRI

    Absolutely correct.

    However…

    The examiner does determine the (B)roadest (U)nreasonable (I)interpretation.

    Sunshine seeing this in only 1 of 50 cases only means that he only prosecutes extreme picture claims – and Iza dont care which art field that be.

  3. And you think that you are one of teh best articulaters, Sunshine – that be a prime source O chuckles.

    You couldnt ignore me if ya wanted to. That sharp stick O mine makes you dance on command like a cheap circus monkey. A monkey in a fancy suit who thinks way way too much O himself.

    Now go and try to find some poor cancer survivor to make fun of, m’k?

  4. 6-tard,

    our burden of persuasion is TOTALLY going to turn this case on its head

    Um, no. But that be kinda the point of my observations above abouts bad facts make bad law.

    Your logic skills are diminishing – something I did not think possible.

  5. And less amusing

    You be messin up the roles here Sunshine – it be you that provide the amusement.

    Off to the rye fields with ya.

    I never said that…

    Once again, I never said that you said that…

    fluffy insinuations right back atcha.

  6. 6, you have to have a reasonable basis for the letter in the first place.

    The notice sets off a series of events that forces the manufacture to respond in detail, else the customer is on notice and is in a willful infringement position. Very ugly.

    The manufacturer may well tell you to go pound sand, but they will not tell their customer that.

  7. So Ned, I buy a car, and in that car are some fuses.

    You think that the manufacturer used a patented process to make those fuses.

    You send me a letter stating that you believe the fuses used in my car are made by a patented process. You have no real reason to believe this other than that they are a fuse and your patent covers a method of making a fuse.

    I say you’re cr azy and don’t do ja ck.

    What do you do?

    Alternatively, you have some reason to believe that the patented process was used because your method is special and produces special fuses.

    I say I don’t know w tf you’re talking about and take your business elsewhere, still, I don’t do ja ck.

    What do you do?

    Or let’s say you give me good enough instructions and I’m scare enough to send the letter to Ford.

    Ford never replies.

    What do you do?

    Or let’s say I send the letter as above, Ford replies but says in its reply “we don’t think we infringe, also, we’re not telling you ja ck about how we make our fuses and/or who makes our fuses”.

    What do you do?

    Finally, let’s say I forward the letter as above, Ford replies and says that FusesRUs makes their fuses and you’ll need to talk to them about their fuses. You send a letter to FusesRUs who replies that they don’t believe they infringe and they aren’t telling you ja ck about their processes.

    What do you do?

    There’s you a few questions, just go down the list. And note that the boys that play in the big leagues would skip straight to the FusesRUs people but still would have trouble enforcing their patents because their patents don’t make a specific product, they are broad enough to make the generic product which has been made for decades with the only changes being to the method itself, not the product produced, so what basis are they going to present as a reasonable belief that the manufacturer is infringing?

    Oh? What’s that? They need someone who has actual knowledge of what goes on inside the company FusesRUs? Hmmm, funny how that works, since that’s exactly w tf I just got through telling you.

  8. 6, please reconsider your remarks in view of Section 287:

    (b)(5)(A) For purposes of this subsection, notice of infringement means actual knowledge, or receipt by a person of a written notification, or a combination thereof, of information sufficient to persuade a reasonable person that it is likely that a product was made by a process patented in the United States.
    (B) A written notification from the patent holder charging a person with infringement shall specify the patented process alleged to have been used and the reasons for a good faith belief that such process was used. The patent holder shall include in the notification such information as is reasonably necessary to explain fairly the patent holder’s belief, except that the patent holder is not required to disclose any trade secret information.
    (C) A person who receives a written notification described in subparagraph (B) or a written response to a request for disclosure described in paragraph (4) shall be deemed to have notice of infringement with respect to any patent referred to in such written notification or response unless that person, absent mitigating circumstances -
    (i) promptly transmits the written notification or response to the manufacturer or, if the manufacturer is not known, to the supplier, of the product purchased or to be purchased by that person; and
    (ii) receives a written statement from the manufacturer or supplier which on its face sets forth a well grounded factual basis for a belief that the identified patents are not infringed.

  9. “They then have to ask the manufacturer whether they are using the process, at which time, it is put up or shut up time for manufacturer. ”

    Oh really? The customer “has” to ask the manufacturer that? And the manufacturer is somehow obligated to answer a mere customer? Oh yes, I can see that one work out every single time. lulz.

    “They have to support their customer, and they cannot deny the truth. ”

    They do? And they can’t? Hmmmm. Idk about either of those statements.

    I should think though that a patentee gone rogue could be an issue though. That’s why major corps have these things called contracts complete with provisions in them that obligate would be inventors to assign their rights to the corp.

    Go d Ned, you play in the little leagues.

  10. Malcolm, are you suggesting that commenting on cases and the arguments by attorneys is the stuff of lawsuits? I don’t think so.

    I recall a skit by Rob Sterne some years ago at an AIPLA meeting. It had to do with some topic or the other. But all I can remember from the skit was just how funny Sterne was. He could be a comedian if he chose to do something else. But, as part of the skit, his firm was called “Dewey, Cheetam and Howe.”

    ….

  11. Malcolm, I suspect you practice in arts where there is less ambiguity. But, where I come from, computer and related arts, BRI is a problem.

    Much of my practice involves reexaminations. I can assure you that here, BRI, is the major issue. In reexaminations, we try very hard not to amend the claims. But at times, we are forced to do so just to combat BRI.

    You might want to take a look of some appeal briefs involving reexaminations. They are almost always about claim construction, at least in significant part. Again the reason this becomes so important in reexaminations is the desire to avoid amendments.

    During the original ex parte prosecution, though, the problem is still present. But, since amendments are not as painful, they are readily made to clarify the claims. But, as I said, this does result in a lot of RCEs.

    Circling back to your situation, I again suspect the arts you deal with require more precision with claim language at the outset. Am I close?

  12. No doubt. But if the patentee is or becomes a competitor, watch out. They can pretty much figure out if you are using the patent process and fairly put you in a willful infringement position by a simple stratagem:

    Notify one of your customers that the product they are using/selling was made by the patented process. They then have to ask the manufacturer whether they are using the process, at which time, it is put up or shut up time for manufacturer. They have to support their customer, and they cannot deny the truth.

    They are up sh * t creek without a paddle.

    Then will the walls of Jericho come a-tumbling down.

  13. Ned I’m pretty sure Noonan presumes the audience will have some clue as to the basics of trade secrits.

    Also, if a company has successfully kept a trade secrit and then someone patents it that company does then have some liability, but, presumably, may be able to keep its infringement a secrit as well. A lot of attorneys in my art are concerned quite often that method claims can’t be enforced. Why? Because they don’t have a man on the inside of their competitor’s factory to tell them what the competitor is doing in their factory.

  14. Ned : Often, probably most often, the examiner’s construction is totally unexpected.

    If this is true in your experience, then you need to work harder at drafting both your claims and your specification.

    In my experience, unexpected construction by an Examiner occurs maybe one in every fifty applications filed. And it’s easily fixed.

  15. pingaling my main man’s writing abilities

    Of all the commenters here, pingaling, you are easily the least articulate. Even worse, your obtuseness appears to be intentional. That is why you are increasingly ignored.

  16. Regarding Noonan’s article, I don’t have a link or missed it, but did he mention the risk of keeping an invention secret if a later inventor discovers and patents it? We do not have prior user rights in the US. Further, private commercial use is not prior art to the second inventor’s patent. The result is, the first inventor puts his first use at risk of the second inventor’s patent.

  17. MUAHAWHAWHAWHAW!

    Pingerdoodle is still defiant after he gets a beatdown directly on top of what he has been arguing for a long time. Try listening to the oral arguments tard.

    Yeah, your burden of persuasion is TOTALLY going to turn this case on its head. LULULULULULULULULULULLULULLU LZ.

    Pinger of the clan doodle, you will never understand the lawl, just stop trying.

    Now whares my insolent little friend Broje?

  18. I just Googled the English Rule. The Jackson report of today is addressing the area of small claims below GBP15k, and CFA agreements usual in medical negligence and personal injury cases in the English courts. I am not aware that, in English patent litigation, CFA arrangements play a significant role. I am not aware of many patent cases going to trial, where the amount in dispute is less than USD20k. New rules on CFA agreements strike me as falling short of abolishing the English Rule.

    Tell me, ping (I know you will, if you can), what am I not understanding here?

  19. I never said that “lawsuits aren’t threatening”, pingaling, and I never threatened to file one.

    Once again: yr dxmber than a rock. And just as predictable. But more paranoid. And less amusing.

  20. Why do you think this philosophy is any way at odds with the commonsense “English rule”, that the loser pays the winner’s costs?

    You tell me sunshine. Oh, you havent seen the news then. Lolz – get back to me when it reaches you.

  21. Or who are ignorant of the prior art that will be chosen or butchered or both

    There – corrected for ya wtvlfdt.

  22. You know what the BRI of the claims is. You wrote them.

    Um, no. World of difference between an examiner and an advocate.

    Really, do we need to explain this to you, O high N mighty?

    It’s like reading my own comments

    Lolz! – Ya might be inthe same posse, but there be worlds apart from my main man’s writing abilities and your donk ey’s windmill crusades.

    But the comparison does bring the chuckles.

  23. What, may I ask you to read In re Morris and then read the patent they were discussing? In my view, no one could have misconstrued “integrally formed as a portion of” to read on the prior art sandwich structure. Even though the result was affirmed by the Feds, a read of the patent application itself is instructive.

    Here is a link to a patent that eventually issued on the application or a continuation of it:

    link to patft.uspto.gov

  24. The problems caused by BRI are caused by dumb prosecutors who don’t give any advanced thought as to how their claims are going to interpreted. Or who are ignorant of the prior art. Mr. Kappos has no control over that.

  25. I guess you are alluding to a current debate about whether costs are recovered per issue, or per win. That debate is all about balancing between the parties, in order to do justice between them. What do you do about a big rich bully who raises every issue under the sun, loses on all of them but one, and then demands costs on all of them? Perhaps give him his costs on the successful issue, but make him pay the other side on all the issues on which he lost?

    Why do you think this philosophy is any way at odds with the commonsense “English rule”, that the loser pays the winner’s costs?

  26. “To the contrary, we do not know. Often, probably most often, the examiner’s construction is totally unexpected.”

    Then you’re doing a lousy job of drafting claims. You’ve probably heard the advice that when drafting a patent application you should draft the claims first. The reason for that is so that after you’ve drafted the claims, you can determine how they should be interpreted. If you want certain claim terms to be interpreted in a specific manner, you provide an explicit definition in the spec, which you draft after the claims. If you want claim terms to be interpreted according to their ordinary and customary meaning, then you don’t have to provide an explicit definition. But you need to be careful about giving them an implicit definition. And you better have some evidence of what their ordinary and customary meaning is.

    You are laboring under the misunderstanding that the examiner determines the BRI by examining the application. The examiner does not determine the BRI. The applicant/attorney/agent determines the BRI. By choosing terms, and the mechanism by which the terms will be interpreted (i.e. explicit definition or ordinary and customary meaning), the applicant/attorney/agent determines the BRI.

    If the interpretation of the claims by the examiner is not in accordance with the BRI determined by the applicant/attorney/agent, then the applicant/attorney/agent should explain to the examiner where/how the interpretation is incorrect. If the examiner’s interpretation is in accordance with the BRI, and the examiner’s art, which the applicant/attorney/agent was ignorant of, reads on the BRI, you better be able to amend around the art. Otherwise you end up looking like an id!ot like Mr. Jung and Mr. Cook.

    Don’t be an id!ot.

  27. Not sure what needs explaining, pingaling. Oh wait: you’re just dxmber than a rock. I forgot.

    Anybody else need an explanation? Or just pingaling?

  28. “You know what the BRI of the claims is. You wrote them.”

    To the contrary, we do not know. Often, probably most often, the examiner’s construction is totally unexpected.

    The problem is this: the claim drafter drafts the claims from the point of view of one totally familiar with the specification. He is drafting them from the point of view of a “proper” construction, the construction one gets in court. Because of this, the practitioner is simply unable to see just how his claims can be misconstrued, which is the reaction of most practitioners to the examiner’s BRI construction.

    Most attorneys believe the problem is routed in the examiner not reading the specification before construing the claims. I think the problem is more in the court of the scrivener as I described above. But, regardless of the source of the problem, there is a problem.

  29. This nonsense of “Well, gee, I didn’t know how the examiner was going to interpret my claims so I should get another non-final OA so I can figure out what to do” is just that, nonsense.

    You know what the BRI of the claims is. You wrote them.

    It’s like reading my own comments, recited back at me. Almost like a IANAE, but with a shxttier attitude.

  30. Snippet page is good as any for me to ask Maxie – what’s up with the rumor that UK courts are getting rid of the winner take all fee arrangements in order to crack down on excessive litigation?

    I thought ya proclaimed that stuff as a cure for US’s excessive litigation.

    What gives?

  31. clammed up as I predicted it would be, you, Ned and ping should be very very afraid of a lawsuit

    Um, OK – then perhaps ya should explain this a little better. Unless O coourse, this just be more of your handwaivy stuff.

    Mmmmmm, fluffy.

  32. Dennis: Regarding the USPTO dashboard:

    It would be useful if the dashboard also displayed the user-desired target value(s)for particular parameters. The target values might be determined by online voting by registered USPTO users.

    For example, the “time to issue” would be shown relative to its target value on a time graph. Congress and the public would have an immediate view of how the USPTO is doing.

  33. “But we all know that Kappos has really screwed things up and disrupted normal prosecution by requiring RCEs be accorded the same status in the queue as continuations.”

    How is docketing a Request for “Continued” Examination with continuation applications a screw up?

  34. “At this stage, the claims are in their state and scope the applicant intended. This is where the real search is necessary.”

    There supposed to be in that state on the filing date.

    If the examiner finds some really good prior art that you weren’t aware of, that’s on you. The examiner shouldn’t have to conduct a second search because of the applicant’s ignorance of the prior art. Applicant is fully entitled to be ignorant of the prior art. But applicant is not entitled to get two bites at the apple when exercising the right to be ignorant.

    If the examiner is simply doing the customary BUI, interview the examiner, explain why the interpretation is unreasonable, possibly throw the examiner a bone with a cosmetic amendment, and be prepared to appeal if the examiner demands that you buy him/her a ticket on the RCE gravy train.

    This nonsense of “Well, gee, I didn’t know how the examiner was going to interpret my claims so I should get another non-final OA so I can figure out what to do” is just that, nonsense.

    You know what the BRI of the claims is. You wrote them. You know if terms in the claims are defined in the spec, or are relying on the ordinary and customary meaning. If you think the examiner isn’t giving the claims the BRI, interview the examiner, ask the examiner to explain their interpretation, if it’s unreasonable, explain why and be prepared to appeal if the examiner doesn’t agree. If the examiner’s interpretation is arguably reasonable, but something you didn’t foresee, be prepared to amend around it if you can. But don’t expect to get a free pass if your attempt fails.

  35. Simply arguing the specification by itself is normally not sufficient as most patent attorneys and every examiner knows.

    Might be an advocacy skill thingie here, but I normally be very sufficient at simply arguing the specification by itself, even on specifications that I inherit.

  36. …or maybe ya just try ta make some sense once in a while there Sunshine.

    It seems like ya be threatenin again. Who knows (and who cares) why.

    Maybe ya wanna threaten poor nameless cancer victims some more…?

  37. WHAT, just in case you didn’t understand my point, and thank you ping for your assistance here, but I think it is important for the examiner to conduct a search after the claims have been clarified in some fashion. I fully expect the applicant to figure out the examiner’s claim construction position after the first action, through an interview or otherwise. But the applicant will then have to clarify the claims in some fashion, more often than not by clarifying amendments. Simply arguing the specification by itself is normally not sufficient as most patent attorneys and every examiner knows. Limitations will have to be added.

    At this stage, the claims are in their state and scope the applicant intended. This is where the real search is necessary. But this is also where the examiner normally, in almost every case, says something to the effect that the clarifying amendment raises new issues that require a new search. We are then into an RCE.

    But we all know that Kappos has really screwed things up and disrupted normal prosecution by requiring RCEs be accorded the same status in the queue as continuations. The examiner may not pick them up immediately as before. Delay and expense are involved.

    Now, I am not complaining here about whether we should pay for an additional search. We should. But we should not pay the full boat filing fee for that privilege. And, we should not be required to wait a year in addition for the examiner to again take up the case.

    Rather, instead, we should recognize the facts of life caused by BRI and drafting mistakes by the applicant. A second search is NORMAL, not extraordinary. We should restructure the prosecution mechanics accordingly.

  38. pingaling Very afraid? – Huh what?

    I dunno, pingaling. You read every one of my comments so you’ve surely seen the pearl-clutching here when I’ve suggested that some professional isn’t doing his job.

    Or maybe (really going out on a limb here) you’re just a hypocritical dxpxht playin stoopit.

  39. wtvlfdt,

    Dont get me wrong – I not be complaining. I likes interviews. I wouldnt dream of prosecuting an app like this one here. I just be sayin that what Ned-O-gram be dayin aint what you be sayin.

    Just an observation.

  40. But in this instance we’ll just listen to the crickets.

    By golly, by Jiminy…

    Med Check, Med Check for Sunshine.

  41. Chuckle city (at ya, not with ya)

    when I presented him with a mental picture of his hero’s lady behaving in an unladylike manner.

    What the sam hill are you talking about?

    In any event, since the peanut gallery is clammed up as I predicted it would be, you, Ned and ping should be very very afraid of a lawsuit. And you should be ashamed of yourself.

    Predicted? – Huh what?

    Very afraid? – Huh what? – Geesh, another internet tough guy, what next, the he-man woman ha_ ters club founded by 6?

    And you should be ashamed of yourself – is that like the shame that comes from insulting strangers with cancer that come looking for simple information? A different kind of shame?

    ROTFLMAO” – no doubt, but ya look kinda funny doin it.

  42. The file wrapper is text book “What not to do during patent prosecution 101.”

  43. Oh man, the wrapper is a joy to behold in so many respects. I don’t want to spoil your fun, but have to share at least one.

    Appellant’s representative calls in for the BPAI oral hearing, explains that he’s at his house in Tacoma instead of at the office because they got confused and didn’t realize when the PTO set the hearing for 9 a.m. that it actually meant it’d be 9 a.m. Eastern Time.

    SERIOUSLY???

  44. View from the Txilet: Because you never post anything with the intent of getting ping and the rest of the peanut gallery in an uproar.

    In case you haven’t noticed, pingaling is permanently tweaked. Dude/dudette went over the cliff some time ago when I presented him with a mental picture of his hero’s lady behaving in an unladylike manner.

    In any event, since the peanut gallery is clammed up as I predicted it would be, you, Ned and ping should be very very afraid of a lawsuit. And you should be ashamed of yourself.

    ROTFLMAO

  45. Some interviews are more productive than others. But don’t complain that you’re at a final rejection before you fully understand the examiner’s position if you didn’t at least try to conduct an interview. If the examiner tells you during the interview that your claimed “well-charge-level controller” is being interpreted as any device for controlling the charge level in the well you can argue and/or amend around that. Otherwise you end up going to appeal, making arguments the examiner’s never heard before, and generally coming off looking like an arse.

  46. wtvlfdt,

    The PTO already provides this. It’s called an interview. Try one sometime. You might like it.

    Um, no.

    Good luck in actually having an examiner prepare as indicated for an interview.

    Now mind you, an interview after the first round of examination is a different story – but that aint what Ned-O-gram be suggestin.

  47. Sides which – I done already noted the poor advocacy (albeit I thought it was pro se), so Sunshine’s comments are (once again) all nice and fluffy.

    Shockers.

  48. “Of course, if I said anything like this, pingaling and the rest of the peanut gallery would be apoplectic.”

    Right. Because you never post anything with the intent of getting ping and the rest of the peanut gallery in an uproar.

    Good lord you’re a bore.

  49. “Right now, we have to figure out the construction by implication, and often are at a final rejection before both the applicant fully understands the examiner’s position. I have previously suggested adding one more round of office actions essentially for claim construction purposes, with this next round existing primarily so that the examiner can explain his position by rejecting the claims and citing chapter and verse where the claim element appears in the reference, and the applicant can react by explanation or amendment if the claims are not be interpreted as he intended. After this first round, the examiner then can conduct a second search with the claim scope the applicant’s intended.”

    The PTO already provides this. It’s called an interview. Try one sometime. You might like it.

  50. Of course, if I said anything like this, pingaling and the rest of the peanut gallery would be apoplectic. You wouldn’t be able tell the sock from the froth.

    But in this instance we’ll just listen to the crickets.

    Oh, and my LOLs.

    LOL!

  51. I had three impressions reading the Jung case:

    1) No good deed goes unpunished. Back in the day, examiners listed the references then said claims 1-x are rejected under statute y, A v. B — very much as we get in the bare bones leading paragraph of rejections today. No explanation whatsoever.

    The words of explanation were added as a courtesy only in the last few years.

    2) There was a lot of argument about what claim element “X” was or was not, but nothing of the argued structure or function was in the claim. If there was a failure here, it clearly was on the applicant.

    3) The position of the appellants was so ludicrous as to be laughable. One wonders on the reasoning of the person who brought the appeal and/or the skill of the attorneys making the argument.

    All that said, the Director would be wise to consider doing something about claim constrution. Right now, we have to figure out the construction by implication, and often are at a final rejection before both the applicant fully understands the examiner’s position. I have previously suggested adding one more round of office actions essentially for claim construction purposes, with this next round existing primarily so that the examiner can explain his position by rejecting the claims and citing chapter and verse where the claim element appears in the reference, and the applicant can react by explanation or amendment if the claims are not be interpreted as he intended. After this first round, the examiner then can conduct a second search with the claim scope the applicant’s intended.

  52. “Here, bad facts in the hands of a pro se advocate makes the law weep.”

    You need to stop reading Patent Hawk’s summaries.

    This was not a pro se litigant. The applicant is one of the “inventors” of the troll Intellectual Ventures and the application (10/770,072) was prosecuted by an in-house dope (originally from Searete LLC, now with Intellectual Ventures). The Fed. Cir. appeal was argued by Rob Sterne of Sterne Kessler.

    This was really sh!tty advocacy no matter how you look at it.

  53. They say “Bad facts makes bad law.” Here, bad facts in the hands of a pro se advocate makes the law weep.

    Someone should also remind the illustrious CAFC panel that the prima facie burden has two components: production and persuasion. And while 132 is a notice provision which is satisfied by one of the two prongs (production), the need to satisfy the other is evident in that an applicant can, without any changes, put the examination back into the examiner’s court: “and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined.”

    The ancient trio here waxes poetic about the job of the examiner, but if their position is taken at face value, the mere pronouncement of any general reading of law (akin to the Sunshine-throw-the-kitchen-sink approach combined with a zero-persuasion stance eviscerates any need for examination quality as any notice – even blatantly errant notice – satisfies the notice provision of 132.

    Ya have ta be correct in your notice (here the pro se applicant failed ta see that and thus we get bad law from the trio who do not state teh law correctly in their opinion).

    It’s time these three retire.

  54. Oh my pleasure, my pleasure indeed. I like to share the lols.

    Rich rich lols.

    This case is so great because it hits this issue so squarely on the head. I can’t wait until they petition for en banc review and it is denied.

  55. Also note how the court is coming into the information age by including links to the decisions upon which it is relying. Je sus fin chr ist, THANK YOU CAFC!

  56. Here, here, let me cite you guys some gems.

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

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

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

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

    And another issue:

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

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

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

    But don’t take it from me, go read the case yourself and pay your due to Hawk for bringing this to the fore! Oh wait, you can’t leave him a comment, but send him a mail telling him you would have if you could :)

  57. By the by guys, the house hearing on their bill for patent reform is tomorrow and is open to the public. The info on where it is held and all is on IPwatchdog in the relevant article and you can google more info about the building where it will be.

    Specifically I can tell you that it is to be held at 2141 Rayburn House Office Building Washington DC 20515.

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