Institut Pasteur: Federal Circuit Takes Hard Look at USPTO Board Factual Conclusions

By Dennis Crouch

Institut Pasteur v. Focarino and Precision BioSciences, Reexam No. 95,000,443 (Fed. Cir. 2013)

The French non-profit Institut Pasteur holds several patents covering site-directed insertion of genes into eukaryotic chromosomes. See U.S. Patent Nos. 7,309,605, 6,610,545, and 6,833,252. Basically, Pasteur discovered that a set of naturally occurring enzymes that could cleave chromosomal DNA at particular recognition sites and also discovered that cells will naturally repair the cleavage through homologous recombination even when an additional gene sequence is added, so long as a proper recombinatory DNA template is also added. It turns out that this sequence of events occurs in mitochondrial DNA but Pasteur was able to make it work on chromosomal DNA as well. The patents all relate to creating the enzymes and method of using those enzymes to insert DNA.

This is old stuff and all happened in the early 1990′s The three patents all expired in 2012 while the case was pending appeal to the Federal Circuit, but companies may still be on the hook for past damages for what has become a basic tool of genetic engineering.

In 2009, Precision BioSciences filed for inter partes reexamination of the three patents. The examiner found the claimed invention obvious and that decision was affirmed by the USPTO’s administrative patent appeal board. On appeal, the Federal Circuit has come-out with three interesting rulings:

Hard Deadline on Amendments: First, for the ’605 patent, the claims were amended during the reexamination (and prior to the patent expiration date). For those claims, the court dismissed Pasteur’s appeal as moot because “[substantially] amended claims cannot be entered now that the patent has expired.” This result is obviously important for gamesmanship because it rewards delay tactics on the part of would-be infringers and also encourages patentees to work toward concluding any post-grant reviews.

No Substantial Evidence: Second, the Federal Circuit determined that the Board lacked Substantial Evidence for its factual conclusions that led to its obviousness decision of the challenged claims of the ’545 patent. The question of obviousness is a matter of law predicated upon a set of factual conclusions. A factual conclusion must itself be based upon evidence presented to the Court. Here, after reviewing the two key prior art references (the evidence), the USPTO Board concluded that the prior art showed that the claimed enzyme “cleaved yeast chromosomal DNA when expressed in yeast cells.” On appeal, the Federal Circuit rejected that factual conclusion after failing to find such a disclosure in either reference. One factor making the Federal Circuit’s decision easier was that the Board based its conclusion upon the text of the prior art references rather than relying upon factual or expert testimony that could have offered stronger conclusory evidence.

Motivation to Combine: Finally, with regard to the ’252 patent, the Federal Circuit found that the Board had failed to identify the “motivation, if any, a skilled artisan at the relevant time would have had to pursue the claimed invention.”

Opinion by Judge Taranto

112 thoughts on “Institut Pasteur: Federal Circuit Takes Hard Look at USPTO Board Factual Conclusions

  1. A fascinating issued arose in this case that was not discussed fully by the Federal Circuit. The two main references described the introduction into a bacteria cell of phage DNA that integrated into the bacteria chromosomes and an a plasmid that included endonuclease used to cut the phage. Both were restricted and were activated by temperature. The phage activation excised the phage DNA from the chromosomes where the phage DNA was then cut by the endonuclease. Phage proteins that were being produced by the excised DNA repaired the cut by integrating the substitute DNA.The lab director testified that as a matter of fact the endonuclease did not cut the phage DNA until after excision. Two workers on the experiment countered that it must have happened because the restrictors were leaky, allowing small amounts of endonuclease to be released that could operate on the phage DNA before excision.The issues was whether cleavage happened before excision as a matter of necessity. The Board held that this was not proved.But it was also clear that the experiment described did not intend that the phage DNA be cut while integrated, and that if this in fact did happen, it was completely unintended and accidental and not appreciated at the time. The reference made no mention of such.The Supreme Court in Tilghman v. Proctor, 102 U.S. 707, 26 L. Ed. 279, 8 S. Ct. 894 (1881) held accidental anticipation was not anticipation — that one of ordinary skill in the art must appreciate that a process produced the result. The Fourth Circuit in a number of case, including American Original Corp. v. Jenkins Food Corp., 696 F. 2d 1053 (4th Cir. 1982) held that even if an effect was present, it must be appreciated. (I suspect, the other circuits have considered the issue as well.)In Schering Corp. v. Geneva Pharmaceuticals, 339 F. 3d 1373 (Fed. Cir. 2003) the Federal Circuit held that if the effect was present, it need not be appreciated. Schering was criticized in Alfredo De La Rosa, “A Hard Pill to Swallow- Does Schering v. Geneva Endanger Research and Development within the Pharmaceutical Industry?” (June 6, 2006). bepress Legal Series. bepress Legal Series.Working Paper 1414. link to law.bepress.com…Ditto: Jeffery Coleman, NOTE: “UNDETECTED, UNSUSPECTED, AND UNKNOWN”: SHOULD WE ANTICIPATE PROBLEMS FOR SCIENTIFIC INNOVATION FOLLOWING SCHERING CORP. V. GENEVA PHARMACEUTICALS?, 82 Fordham L. Rev. 165 (Oct. 2013)Also consider an interference. X earlier conduct process A but does not appreciate that it produces B. Y is first to appreciate B. Under traditional law, Y gets the patent. Under Schering, neither gets it because X’s prior process produced B and anticipates Y under inherency. Something is amiss in Schering and there is a conflict in circuits.

  2. Taranto seems very heavy handed to me and formulistic.Here is a finding of fact that does not seem to supported anywhere but by his own reading of the references and is key to the decision:>Toxicity would bear heavily on whether a skilled artisan would have a >reasonable expectation of success in achieving that objective.>>The Board relied on its misreading of both references,Maybe he is right. I don’t know. But, why is a liberal arts major qualified to sit on the CAFC and read technical journals and draw conclusions of fact?Here is something that does not seem to be well supported: >rather than other technology described in the patent but not claimed or >claimed in related patents.” ’545 Board Decision>But that theoretical possibility does not undermine the strong>probative value of the licensing of the ’545 patentSo, the board was saying there is a group of patents licensed so we aren’t going to take that as objective evidence of non-obviousness because there is no way of knowing why they licensed the patents. But, Taranto says well, I am. But, there is no analysis of why. Or how many patents were in the group licensed. Seems again very heavy handed to me. And, again, a non-science non-patent lawyer probably with no understanding whatsoever of licensing drawing a factual conclusion. Certainly group licensing at the extreme does not offer objective evidence. Taranto’s opinions appear to me to be very goal oriented. So, I’d summarize this case as the CAFC saying the references don’t say what the board said they did and we are going to take their objective indicia of non-obviousness when you didn’t. So, really, your analysis should be did those two references say what the board said they did or not? It is not my technical area. The CAFC’s indicia part is very dicey at best.

    1. “Maybe he is right. I don’t know. But, why is a liberal arts major qualified to sit on the CAFC and read technical journals and draw conclusions of fact?”The judges aren’t doing all this in a vacuum, NWPA – they have the parties’ briefs and oral arguments to work with. My guess is that they tend to be persuaded by the briefs that rely on accurate cites to the record and clear reasoning, rather than being filled with ad hominem arguments and illogical and ideological rants. But that’s just a guess.

      1. You mean our new liberal arts judge that is reading arguments about patent law and science that he has no training to understand? That judge? So my guess is that hood winking such a judge is going to be pretty easy.And, gee, no kidding LB. Gee isn’t your post ironic. And, I noticed you skipped the part about licensing which as I said above is the most dicey part. Thinking about this a bit and reading some of the comments below it would seem the problem is that the board didn’t add some comment about common knowledge in the field and say why that lead them to their conclusion. Sounds like a typical examiner/board judge. They left out a step that they carried out in their head.

        1. What an f’n snob you are. You seem to think that those that made it with little or no education never existed. Stick a sock in your ignorance. Why would college make a difference if the professor was the only mind you drew from… That’s a big problem. I call you a Lemmhole.

        2. I’m telling you, there be some shinanigans that happened in a case like this.Also, based on what I see in the decision it sounds like the examiner may well have made a “more fully fleshed out” rejection but the board then fiddled with it.

          1. I don’t know about that 6, but it does seem like for someone that knows the art field they could tell us whether those two references show what the board said they showed or not. It boils down to a pretty simple question.

  3. The finding that the prior art disclosed cleaving yeast chromosomes “in yeast cells” when they only disclose cleaving such outside of yeast cells reflects recent pattern I’ve seen in Board decisions that find obviousness despite the references not showing all the critical limitations. It is good that the Federal Circuit called them on that.IIRC, after KSR, the PTO removed a reference to In re Royka, 490 F. 2d 981 (CCPA1974) that required the examiner to proof all limitations of a claim in making an prima facie case under 102/103. This case effectively restores Royka, a case that the PTO apparently wanted to toss into the ashcan and used KSR to do it.

    1. The finding that the prior art disclosed cleaving yeast chromosomes “in yeast cells” when they only disclose cleaving such outside of yeast cells reflects recent pattern I’ve seenI discussed this elsewhere in the thread but what you say here applies to only one of the prior art references. The other reference taught that the enzyme cleaved DNA “in the nucleus” of a yeast cell. That nuclear DNA was either yeast chromosomal DNA or the DNA of some vector (e.g., an artificial chromosome or a plasmid). But there’s no reason to expect the enzyme to care one way or the other. As long as the specific DNA sequence recognized by the enzyme is present, the enzyme will act upon the DNA. The enzyme doesn’t care about whether the DNA is “chromosomal” DNA or “plasmid” DNA. Nobody skilled in the art would read that reference and then wonder whether the enzyme could cleave chromosomal DNA in the yeast nucleus. Of course it could.Again, the issue here is obviousness, not anticipation. The Board had two references which showed (1) that the enzyme functioned to cleave DNA in the yeast nucleus in vivo and (2) that the enzyme could cleave isolated yeast chromosomes. Given those references and reams of similar experiments with similar enyzmes in the prior art, why would anyone skilled in the art not expect the enzyme to cleave yeast chromosomes in vivo?Following the pattern in this Opinion, if it wishes to ignore a prior art reference, the Federal Circuit could just as easily punish the Board for failing to “prove” that the DNA dicussed in a reference was “real DNA” or that the yeast chromosomes were “real yeast chromosomes”.

      1. Malcolm, I re-read he opinion at your behest. Well it appears that the Board made two factual findings that were not obviously true: first that both references disclosed cleaving chromosomal DNA in yeast cells. You appeared agree that this is correct with respect to the first reference, the Frey reference. Frey only disclosed cleaving yeast chromosomal the DNA outside of the cell.With respect to the second reference, you state that it discloses cleaving DNA inside yeast cell. That it does. But the board said as a matter of a factual finding that it disclosed cleaving yeast chromosomal DNA in the yeast cell. It did not clearly disclose this. Rather it disclosed that “GIIE endonuclease ‘can be expressed in the yeast nucleus from artificial constructs and the protein is able to cleave efficiently both its natural site within mitochondria and an artificially placed site within the nucleus.’” According to the Federal Circuit, the reference never explained what “an artificially placed site within the nucleus” was. Now if one of ordinary skill in the art would know that this passage meant cleaving chromosomal DNA, I suspect there would be a third reference available to show it. But the board skipped that step and simply stated that the reference disclosed cleaving chromosomal DNA in a yeast cell. Whether it did or did is the question.The examiner did not present a prima facie case nor did the board correctly establish the facts upon which to base a conclusion. The Federal Circuit was eminently correct in its holding.

        1. Rather it disclosed that “GIIE endonuclease ‘can be expressed in the yeast nucleus from artificial constructs and the protein is able to cleave efficiently both its natural site within mitochondria and an artificially placed site within the nucleus.’” According to the Federal Circuit, the reference never explained what “an artificially placed site within the nucleus” was.There are only two “explanations” and I’m not sure why either one matters much in the context of the obviousness argument. Either the “artificial site” is integrated into a yeast chromosome or the “artificial site” is not integrated into a yeast chromosome (but it’s still DNA and it’s still cleaved, demonstrating the critical point that the enzyme functions in a nucleus exactly as it functions in the mitochondria — that’s the point of the experiment!). As someone who’s done plenty of genetic engineering, I’d say the most reasonable reading of that passage is that the artificial site is integrated into the yeast chromosome. If the artificial site was extrachromosomal (e.g., on a plasmid) I think the authors would have said so rather than using the phrase “site within the nucleus.”I haven’t read the briefs or that particular reference but I’d be curious to know what else was said about this issue. The Federal Circuit seems to have buried its head in the sand (is there an ink shortage in DC?), perhaps because at the end of the day the judges were most impressed by the fact that the patent was licensed (perhaps the worst part of this decision).

          1. MM, If this were in an IPR, or in court, the proponent of invalidity would certainly have filled in the gap in evidence with an expert opinion if that were at all possible. What the examiner needed to do would have been to find a third reference to explain what an artificially placed site was so that a reader would know whether that was the same thing as cleaving a chromosome. But from the structure of the sentence, it appears that the author was talking about cleaving mitochondria.

            1. “find a third reference to explain what an artificially placed site was so that a reader would know whether that was the same thing as cleaving a chromosome”See? What Ned advocates for is the finding of another reference to explain to the ignorant that which a college educated person of ordinary skill already knows. It’s review by ignorance. They should just go ahead and make clear in string of judicial decisions that they want all rejections to come to them explained on the kindergarten level straight from the references for ease of review so that they do not have to read the references from the viewpoint of one of ordinary skill, but rather from the viewpoint of a wholly uneducated person. Note that this review by ignorance thereby nullifies the entire point of having the PTO, in its expert capacity, ever having reviewed the case or read the references at all. ” But from the structure of the sentence, it appears that the author was talking about cleaving mitochondria.”I think you mean mitochondrial DNA.

            2. 6, but the rules do require the examiner to support any rejection based upon the examiner’s own skill and knowledge with actual evidence supported by his own affidavit.”Rule 1.104(d)(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”

            3. For 1 millionth and last time, he’s not basing it on his own skill or knowledge, he’s basing it solely on the REFERENCE AS READ BY ONE OF SKILL IN THE ART. Now, if the courts voluntarily CHOOSE to read the reference from their own ignorant viewpoint, rather than the viewpoint of one skilled in the art, then that is their decision, and they should make it crystal clear to everyone that such is what they plan to do. Just so that everyone else can plan accordingly and/or challenge that method of review. For example, in this thread, MM has demonstrated what the REFERENCE tells him as one of skill in his art. The courts obviously take from the REFERENCE something different because they are ignorant and did not want to bother themselves to ascertain what the reference says to one of ordinary skill as did everyone else involved in the case. That’s the last time I’m posting about this. You’re just going to sit and tell me that we need to hold people’s hands through references so that ignoramuses can properly review the case. And I’ll sit and note that what you’re proposing is review by ignorance. And we may both be correct.

            4. 6, I am pretty sure if you simply explain your reasoning like MM did, most applicants will not put you to any proof. Real problems occur in reexaminations (and IPRs) where the stakes are high and amendments force intervening rights. Here, the examiners should in the ordinary case be expected to prove with evidence every limitation. Every one. (And it is a shame that so many reexaminations are ordered when petitions simply ignore limitations and the preliminary examiners or the Board in IPRs are not careful.)

            5. I quite agree on most of what you’ve stated. But if they’re going to make a big fuss about supposed ambiguity in a reference then they should bring it up before the examiner and make clear exactly what the issue is. Somehow I doubt the case would have proceeded like this had the examiner been put on notice of the issue the case would face at the CAFC. The examiner would have simply added a few references or explanation. What we end up with is a rejection that appears proper to a person of ordinary skill (who knows what the reference says) being reversed by someone to ignorant to make the call (because they don’t understand the reference). Generally this is because the examiner never even knew that such which the ignorant person is ignorant of needed to be expounded upon. Though that may not have been the case in the instant case.

            6. Well, the PTO should have argued that the issue was waived if the issue was NOT raised at the examiner level. I share with you your hunch that something fishy is afoot here. Did you have a chance to look at the underlying prosecution on this point?

            7. I haven’t reviewed the file history, but I’d be willing to bet that the patentee did bring up the “supposed ambiguity in a reference… before the examiner” and “make clear exactly what the issue” was before appealling the case to the Board and then to the Fed. Cir. I seriously doubt the patentee went through the expense of a Fed. Cir. appeal if they weren’t at least 50+% sure on whether they would prevail on the issue of the prior art failing to show the claimed features.” What we end up with is a rejection that appears proper to a person of ordinary skill (who knows what the reference says) being reversed by someone to ignorant to make the call (because they don’t understand the reference).”I love this. This is the classic dodge from losing examiners. “Well, yeah my rejections got reversed, but only because the Board (or the court) doesn’t understand the art.”Guess what, 6? The applicant understands the art. And when the examiner says, “Reference A discloses claimed feature X” and the applicant disagrees, the applicant tells the examiner so. If you’re so technically skilled, how is it that you have such a hard time explaining to somebody at least as technically skilled as you that you’re correct in determining what the reference discloses?”Generally this is because the examiner never even knew that such which the ignorant person is ignorant of needed to be expounded upon.”So examiners, including yourself (for what, like 5+ years now), are not aware that their rejections are subject to review by APJ’s, and possibly Fed. Cir, judges, who don’t spend day in and day out examining the exact technology that may be on that particular’s docket? How could you, or any examiner who’s been there long enough to have a case actually go to appeal, be unaware of that? Can you really be that ignorant?Here’s what’s really going on, 6. When there is a dispute between the examiner and the applicant as to what the prior art actually discloses, both sides get to provide their explanation and arguments and somebody else (i.e. panel of APJ’s or judges) decides who’s right. What you want to do is boast when they decide in your favor, but shift the blame when you’re wrong. “Oh, I’m still right, but these APJ’s and judges just don’t understand the art.” No, when they decide against you it’s because you’re wrong. It’s okay to admit it when you’re wrong. It’s actually a learning experience. You might want to try it sometime.

            8. Rule 1.104(d)(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”There is no way we can have a functioning patent system if Examiners are required to proivide specific affidavits for every fact simply because the applicant chooses to question that fact (for whatever reasons, including delay and obfuscation).Applicants do not and can not have an absolute right to demand affidavit’s on every imaginable point of dispute (there are an infinite number of such facts in any case, as I’ve mentioned elsewhere in the thread). If applicants had such a right, then it would surely be reasonable for Examiner’s to simply state that all statements made by the Examiner are true, to the best of the Examiner’s knowledge and based on the Examiner’s skill in the art, and satisfy the rule in that manner.

            9. “surely be reasonable for Examiner’s to simply state that all statements made by the Examiner are true”Malcolm’s wonderful, “because he says so” is supposed to benefit all examiners – because he said so.Oh, how so very Carroll of him.

            10. how so very Carroll of himDumpty, your pathetic and repeated attempts to fling your long-assigned and well-deserved name on others is noted. Let us know when you have an original thought, or one that you can articulate without drooling on your bib.

            11. ” … there are an infinite number of such facts in any case, as I’ve mentioned elsewhere in the thread.”If there are an infinite number of differences between the prior art and the claim then somebody is not doing it right.

            12. Malcolm, applicants have the right to have the examiner prove all claim limitations — that is what a prima facie case is. The examiner cannot cite a reference and simply say that it teaches a claim limitation X unless it does within its four corners. If the examiner is adding something that is not there based on his own skill and knowledge, the applicant has a right to have the examiner either explain himself or cite evidence or both. That argument or evidence is then subject to rebuttal.I see no problem with this in terms of clogging the PTO with unnecessary work. Most applicants will not put the examiner to his task if he simply explains his reasoning in his OA. I don’t know what happened here at the examiner level. But the Board’s findings are clearly erroneous because for the reasons we previously discussed.

            13. from the structure of the sentence, it appears that the author was talking about cleaving mitochondria.With all due respect, only a person with a very limited understanding of cell biology would come to that conclusion.For starters, a “mitochondria” is an organelle in a eukaryotic cell (by the way — you’re a eukaryote, and so is yeast). The organelles are responsible for generating most of the “power” in a eukaryotic cell (in the form of high energy chemical bonds, specifically a chemical called ATP).The enzyme doesn’t “cleave mitochondria”. There is no enzyme that “cleaves mitochondria.” The enzyme is a site-specific nuclease that cleaves DNA. Mitochondria, however, have their own genomes, composed of DNA, which encode proteins that are expressed (normally) specifically in the mitochondria. The mitochondria is where the enzyme discussed in this case is naturally found. That was all crystal clear in the prior art.The allegedly “unclear” statement we’re discussing refers to a distinct organelle in the eukaryotic cell known as the nucleus. The nucleus comprises the cell’s genome. As I noted already, one skilled in the art would reasonably interpret “artificial site in the nucleus” to refer to an artificial site (for recognitition by the enzyme) that has been inserted into the cell’s chromosomes.In this case, then, the Federal Circuit has (at least temporarily) allowed the inventors to completely avoid their own potentially damaging prior art by pretending that the art was insolubly ambiguous when, in fact, it was only sloppy writing with one interpretation that was very likely, and another interpretation that was equivalently damaging for the purpose of the argument being presented.

            14. “MM, If this were in an IPR, or in court, the proponent of invalidity would certainly have filled in the gap in evidence with an expert opinion if that were at all possible.”Ned, this was an IPR.

            15. You are correct, of course. My point was that there was an involved proponent of invalidity in an inter partes reexamination. Apparently there was no affidavit filed by the third-party requestor.

            16. LB, I am not sure an examiner can rely on the expert opinion of a 3rd party requestor. Have you ever seen that done?

            17. No, but I’ve never looked, either. The MPEP suggests that it is possible:”Any affidavit or declaration (or a clearly defined portion thereof) that contains opinon(s) of the affiant/declarant, or argument(s) that the art either does or does not anticipate or render obvious the claims, or specific claim elements, of the patent under reexamination, is considered to be part of the comments submitted by the patent owner, OR BY THE THIRD PARTY REQUESTER, and is subject to the page limit requirements of 37 CFR 1.943.”(MPEP 2667).

            18. Thanks. Should we take this a practice pointer for those representing 3rd parties in still pending inter partes reexams. If the examiner has not presented a prima facie case, should we consider filing an expert opinion that fills in the gap?BTW, procedurally, I wonder how this would work. I presume the patent owner would want to file counter-affidavits and cross examine the 3rd parties expert. But it is my understanding that one does not have the right to cross examine witnesses in such reexaminations. Am I wrong in this? The battle is fought between the examiner and the patent owner. I simply do not see how the examiner can rely on 3rd party expert testimony to present a prima case unless they allow cross examination.The bottom line, it may theoretically be possible, but I am not sure the PTO will permit it.

            19. LB, 6 and I have gone through the prosecution history. It turned out it mainly was a battle of experts as to what the references showed — the requestor relying on two junior members of a research team to demonstrate inherency, the patent owner relying on the leader and principle author of the reference in queston to show that what the requestor’s experts were saying was false. The Board found for the patentee based on this conflict of experts in 95/000490.

          2. “perhaps because at the end of the day the judges were most impressed by the fact that the patent was licensed (perhaps the worst part of this decision).”Indeed on both.

      1. “On appeal, the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board)”I think they’re just calling it the board since it says the old name on the old board decision.

  4. I’m not sure I agree with your interpretation in the “motivation to combine” section, which makes the Board sound like a bunch of rookie examiners. The court actually said that the motivation found by the Board in the ’252 patent was no longer valid in view of the court’s findings pertaining to the narrower ’545 patent, so they vacated and remanded to see if the PTO could come up with anything else.

  5. “the USPTO Board concluded that the prior art showed that the claimed enzyme “cleaved yeast chromosomal DNA when expressed in yeast cells.”"What an odd factual finding. It seems like you’re saying that there is an enzyme being claimed. And that board found that the enzyme being claim inherently cleaves yeast chromosomal DNA when expressed in yeast cells. Then you’re saying that the CAFC says they couldn’t make that factual finding because they failed to make it after failing to find a disclosure of such in the reference. Sounds to me like some shinanigans went on here. First of all, apparently the CAFC didn’t bother to simply make a factual finding that the enzyme itself was old, and then look over all the rest of the evidence as to the properties of the enzyme in a certain surrounding. Second of all, it appears that the CAFC, at least according to you, ascribes to the non-factual finding method of reviewing factual findings where you, the reviewer, simply fail to find a fact and thus determine that no such fact could be found. That is not how review of factual findings should take place. The reviewer should simply put forth what factual findings they have made and note which appear to be extraneous to those. Doing otherwise should be clear error in review since it leaves the lower body wondering just what facts the upper body was able to find, and why it made extraneous factual findings beyond those found, and what would need to be present to find such a fact (say, in this instance, you might need a tertiary reference to show the inherent qualities of the enzyme, which may well already be on the record and overlooked by the CAFC).

        1. “The reviewer should simply put forth what factual findings they have made and note which appear to be extraneous to those.” In other words, making your own findings of fact, spelling them all out, and then deciding whether or not the lower body was wrong based on whether your findings are the same as their findings.

          1. First you’re skipping the last part, but even if you’re somewhat trying to include it in your statement of what de novo review entails, the courts/board often skip the first part, opting instead to find no facts and declare those found improperly found. I’ve seen it done so many times it is embarrassing.

            1. That”s what the court is supposed to do. If the findings of fact are incorrect (i.e. the evidence supplied to support the factual findings does not meet the burden of persuasion), the court must reverse. Correct legal conclusions cannot follow from incorrect factual determinations. It’s literally impossible.

            2. “That”s what the court is supposed to do. If the findings of fact are incorrect (i.e. the evidence supplied to support the factual findings does not meet the burden of persuasion), the court must reverse.”I quite agree. But I do not agree with the manner in which they’ve been accomplishing this goal as all it does is leave the lower bodies questioning what went wrong in the factual finding that they performed and what their supposed superior took from the reference to come to their own factual findings.

            3. “But I do not agree with the manner in which they’ve been accomplishing this goal as all it does is leave the lower bodies questioning what went wrong in the factual finding that they performed…”The Fed. Cir. was pretty clear on pages 15-19 of the decision on what the examiner/Board got wrong in their fact finding. J. Taranto very clearly states in the first full paragraph of page 16 that “In fact, neither reference discloses a GIIE endonuclease cleaving yeast chromosones while those choromosones are in yeast cells.” (He then explains the deficiencies of both Frey and Dujon pretty clearly.) What is there for the examiner/Board to question about that? How can the examiner/Board not know “what went wrong in the factual finding they performed”? Neither reference discloses the claimed feature. Are you telling me that examiners and APJ’s can’t figure out what’s wrong with their fact finding when the references don’t disclose a claimed feature?As for whether there existed 1) a reason to modify/combine the prior art and 2) a reasonable expectation of success in modifying/combining the prior art, both questions of fact BTW, again J. Taranto is pretty explicit in why the examiner’s/Board’s fact finding wasn’t up to snuff.”…. and what their supposed superior took from the reference to come to their own factual findings.”The court didn’t make their own factual findings. What are you not getting about that? The court explained why the examiner’s/Board’s findings of fact failed to satisfy their burden.

            4. (He then explains the deficiencies of both Frey and Dujon pretty clearly.)Please reproduce Taranto’s “explanation” of the deficiencies of Dujon so we can all see what you mean by “pretty clearly.”

            5. The paragraph spanning pages 16-17 of the decision. You’re lazier than 6tard. Two examiners of a pod I guess.

            6. The only failure is that T thinks that the reference is unclear, so he expects the PTO to pick up the slack and make it crystal clear for his layman self what it means. For the time being, T is comfy with making no factual finding as to what the sentence in the reference means. Thus the PTO can sit and go around and around in circles until T would be satisfied, without ever knowing that they’ve satisfied him.

            7. “For the time being, T is comfy with making no factual finding as to what the sentence in the reference means.”That’s because “T” is not examining the application. Instead, T is reviewing the Board’s decision. Those are two completely different functions.

            8. Which I understand. And which I’m QUITE UNCOMFY WITH. If they think that the job should have been done differently then they should do it themselves rather than leaving those below hanging in the wind. There may be a thousand good reasons for the system to be set up the way it is, and I do hope to go d that there are. I for one find it rather disturbing that review bodies can simply declare there to be portions of references from which no factual finding can be drawn due to ambiguity that is only present to the layman. And I also think that if this is going to be the case then it should be the first thing taught to examiners when they’re being taught about references. It should be front and center since it seems to be the basis for a copious amount of reversals and is no doubt the reason for a difference of opinion in many respesponses filed to OAs. I vote that we dub it: the ignorance review principle. The ignorance review principle is simply that your factual findings must be supported by evidence substantial enough to support the fact being found by an ignoramus rather than a person of ordinary skill.

            9. “The ignorance review principle is simply that your factual findings must be supported by evidence substantial enough to support the fact being found by an ignoramus rather than a person of ordinary skill.”Sounds reasonable to me. It should be pretty easy to implement, as well. Best I can tell, there are a lot of facts being found by ignoramuses (ignorami?) over there.

            10. You are so incredibly ignorant it is simply astounding. You know who reviews the references you cite against the claims, you stoopit t#rd? THE INVENTORS. Remember them?So when you send out your OA and the agent/attorney who is preparing the response talks to the inventors and asks, “The examiner argues that the reference discloses this feature of the claim, is the examiner correct?” after patiently waiting for the inventors’ laughing to subside, the agent/attorney writes the response.You still don’t understand anything that happens outside your little bubble world, do you?Final newsflash of the week for you, genius: The agent/attorney who signed the Amendment is not the only person who read your OA and the references. The inventors read it too.

            11. I quite agree that it wasn’t laid out so badly in this case now that I have gotten to that part in the decision. As I noted before, I hadn’t made it through the entire decision just yet. This was because I was trying to read up on several of the topics involved as I was going through it so I would better understand the art. Though as you have brought to my attention it was laid out fairly well here. Of course where there is a problem between the board and court becomes readily apparent now that the court laid out what they find to be supported and what not. THAT kind of review is just fine with me. Too bad you don’t see it in every decision where there is a cursory treatment of that review at best. And that is what I’m against. That said, it appears fairly straightforward that the board (likely made up of bio guys) understood that the only type of DNA in the nucleus was, as MM stated, either the chromosomal DNA with an artificially placed site (most likely based on the refs wording “artificially placed site”) or an artificially placed little construct (like a plasmid) (an absurd interpretation). The board simply read the reference how one of ordinary skill in the art would have. The CAFC stepped in and said that it was ambiguous by adopting a stance no person of ordinary skill would take. Again, it’s review by ignorance that does this sort of thing. A couple of references I found helpful in understanding the reference at issue that might placate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.orglink to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…In either event, I think that it should be made clear that they expect, at the federal circuit, for people before them to hold their hand through the factual findings. Worse, the CAFC has the balsac to state that the board’s reading was a “misreading”. Lulz. It’s better than a reading wherein the statement in the reference is “read out of the reference” because the reviewer is too ignorant to understand it. In any event, that’s my peace, I have work to be busy with. I’ll check in later tonight.

            12. I quite agree that it wasn’t laid out so badly in this case now that I have gotten to that part in the decision. As I noted before, I hadn’t made it through the entire decision just yet. This was because I was trying to read up on several of the topics involved as I was going through it so I would better understand the art. Though as you have brought to my attention it was laid out fairly well here. Of course where there is a problem between the board and court becomes readily apparent now that the court laid out what they find to be supported and what not. THAT kind of review is just fine with me. Too bad you don’t see it in every decision where there is a cursory treatment of that review at best. And that is what I’m against. That said, it appears fairly straightforward that the board (likely made up of bio guys) understood that the only type of DNA in the nucleus was, as MM stated, either the chromosomal DNA with an artificially placed site (most likely based on the refs wording “artificially placed site”) or an artificially placed little construct (like a plasmid) (an absurd interpretation). The board simply read the reference how one of ordinary skill in the art would have. The CAFC stepped in and said that it was ambiguous by adopting a stance no person of ordinary skill would take. Again, it’s review by ignorance that does this sort of thing.

            13. A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.orglink to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…In either event, I think that it should be made clear that they expect, at the federal circuit, for people before them to hold their hand through the factual findings. Worse, the CAFC has the balsac to state that the board’s reading was a “misre ading”. Lul z. It’s better than a reading wherein the statement in the reference is “read out of the reference” because the reviewer is too ignor ant to understand it. In any event, that’s my pea ce, I have work to be busy with. I’ll check in later tonight.

            14. A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.orglink to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov

            15. A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. In either event, I think that it should be made clear that they expect, at the federal circuit, for people before them to hold their hand through the factual findings. Worse, the CAFC has the balsac to state that the board’s reading was a “misre ading”. Lul z. It’s better than a reading wherein the statement in the reference is “read out of the reference” because the reviewer is too ignor ant to understand it. In any event, that’s my pea ce, I have work to be busy with. I’ll check in later tonight.

            16. A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.orglink to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov

            17. A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. link to pnas.orglink to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…In either event, I think that it should be made clear that theyexpect, at the federal circuit, for people before them to hold theirhand through the factual findings.Worse, the CAFC has the balsac to state that the board’s reading was a”misre ading”. Lul z. It’s better than a reading wherein the statementin the reference is “read out of the reference” because the reviewer istoo ignor ant to understand it.In any event, that’s my pea ce, I have work to be busy with. I’ll check in later tonight.

            18. ” Neither reference discloses the claimed feature. Are you telling me that examiners and APJ’s can’t figure out what’s wrong with their fact finding when the references don’t disclose a claimed feature?”Actually that’s not what he said. What he said was that the reference was unclear by what it meant (meaning it was unclear to his layman self) and that since the PTO bears the burden of putting forth the prima facie case he thinks Dujon’s language is insufficient to establish that the endo targeted chromosomal DNA. In other words, since he himself doesn’t understand what the reference is saying, then the PTO hasn’t made a prima facie case. Nevermind that he is completely incompetent to read the reference and that it only takes a couple of hours of reading to make yourself competent enough to read what the reference is saying.”The court didn’t make their own factual findings. “I understand what you’re saying, but in effect he’s gone ahead and said that he finds that the sentence in Dujon is insufficient, legally, to make a factual finding period as to what it means. Preposterous. The sentence obviously means something to one of ordinary skill. It is up to the PTO, in its expert capacity, to read the reference from the point of view of a person of ordinary skill. The process of reviewing that reading from a point of view of complete ignorance does nobody any favors. The reference itself says plenty in that sentence to one of ordinary skill and it shouldn’t fall to the PTO to hold the reviewers hands through what it means to one of ordinary skill. Or, if you prefer, you can simply say that he felt the reference is “silent” and then explains his reasoning for feeling it is “silent”, where he explains that due to lack of clarity the reference doesn’t disclose anything. That is, in effect, a finding of fact. Or if you prefer, a finding of “silence” in lieu therof. I’d really like to read the brief on what they had to say re this though. I actually may can do that lol. Anyhow, got work. Cya for now.

    1. “That is not how review of factual findings should take place. The reviewer should simply put forth what factual findings they have made and note which appear to be extraneous to those.”Appellate courts are not fact finders. They should not be making any findings of facts. They should be reviewing the findings of fact made by the fact finder (e.g. jury, trial court).”Doing otherwise should be clear error in review since it leaves the lower body wondering just what facts the upper body was able to find, and why it made extraneous factual findings beyond those found, and what would need to be present to find such a fact (say, in this instance, you might need a tertiary reference to show the inherent qualities of the enzyme, which may well already be on the record and overlooked by the CAFC).”No. An appellate court finding facts is acting in error. Appellate courts are not fact finders.You’re as terrible at this as Examiner Mooney.

        1. The Federal Circuit’s review of PTO findings of fact (and anticipation is a question of fact) is for substantial evidence, not de novo.See Zurko, examinertard.

          1. And how does a court go about reviewing findings of fact for substantial evidence mssr tar d? What’s the procedure (if there is any)?

            1. Holymackerel you are a moron.Standards of review is a pretty simple concept that you would learn in first year civ pro if you got off your a$$ and went to law school. As you’re too lazy to do that, please don’t expect me to spoon feed it to you through blog postings. I can be as lazy as you.

            2. Standards of review may well be a pretty simple concept, but just how that review is carried out is a “concept” that I’ve seen very little on. Thought you may well be correct that they touch on it in Civ pro and that I’d benefit therefrom. I simply say that I’ve seen it done in such a slipshod manner so many times that it is embarrassing.

            3. If you don’t know how the “process” of the substantial evidence standard of review of PTO factual findings is done, or supposed to be done, by the Fed. Cir., how is it that you can conclude that you’ve seen it done in such a slipshod manner so many times? The process is fairly simple: the court looks at the findings of fact that the examiner/Board made in the record, and then reviews the evidence provided (e.g. the references, the portions of the references cited, any affidavits, declarations, exhibits submitted, etc.) and determines if that evidence is sufficient to allow a reasonable person to reach the conclusion that the examiner/Board reached. In other words, the court decides whether a reasonable person, having the evidence that the fact finder (i.e. the examiner/Board) had, could have reached the same conclusion as the fact finder. The court is not to review the evidence anew and decide for themselves what factual determinations they would have made with the evidence, or substitute their judgment in place of the fact finder’s judgment.You appear to be of the mindset that anytime the court finds that the evidence does not meet the substantial evidence burden, then the court has done a “slipshod” job of review. That is nonsense. I think a fairly safe estimate for the affirmance rate of PTO factual findings by the Fed. Cir. is 90+%. That is because the substantial evidence standard of review is fairly deferential. As you will recall, prior to Zurko, the standard of review of PTO factual findings by the Fed. Cir. was clear error, which is a less deferential standard. The PTO asked for, and got, the more deferential substantial evidence review in Zurko. So when they do a sh!tty job of fact finding, they shouldn’t b!tch and moan when they get called on it by the Fed. Cir.

            4. “The process is fairly simple: the court looks at the findings of fact that the examiner/Board made in the record, and then reviews the evidence provided (e.g. the references, the portions of the references cited, any affidavits, declarations, exhibits submitted, etc.) and determines if that evidence is sufficient to allow a reasonable person to reach the conclusion that the examiner/Board reached. In other words, the court decides whether a reasonable person, having the evidence that the fact finder (i.e. the examiner/Board) had, could have reached the same conclusion as the fact finder.”Yep, pretty much what I thought since I’ve seen it done correctly on occasion. Yeah a lot of problems arise from that. And doubly so when they give only cursory explanation as to their ultimate conclusion of the fact lacking substantial evidence. It gives the reviewer the easy out of stating there is no fact to be found with substantial evidence support in the instant reference due to his own inability to understand the reference. This is even more of a problem because no examiner who isn’t a lawyer (and not even many of the ones that are) would understand an appeal that came back stating that there wasn’t substantial evidence backing up the factual finding to simply mean that the reviewer was a bit confuzzled so they need another reference to clarify what the original reference meant. THEY THINK THAT THEY’RE SUPPOSED TO BE READING REFERENCES FROM THE POINT OF VIEW OF A PERSON OF ORDINARY SKILL. NOT AN ORDINARY TA RD THAT IS CONFUZZLED AND PUNTS BECAUSE HE CAN’T BE BOTHERED TO EDUCATE HIMSELF SO HE CAN READ COMPETENTLY. People around here don’t ordinarily presume ignorance/incompetence on the part of their fellows, especially those who are reviewing cases. Many (if not nearly all) folks don’t even have a clue as to what happens on review. That, all together, along with each individual piece, is a problem.But thanks for the explanation. And likewise, nah I don’t think a slipshod job is when they find no substantial evidence. I think a slipshod job is when they don’t explain themselves what so ever. At least T makes it clear that the only issue is his own inability to read a technical reference. That, in this case, can be cured by another reference explaining the term to him. Though he doesn’t go the extra mile and state for the person getting the case back that such is all that would be required. Little lazy of him since he already wrote like 20+ pages.

            5. “And doubly so when they give only cursory explanation as to their ultimate conclusion of the fact lacking substantial evidence.”J. Taranto provided more than a “cursory explanation” for why the prior art failed to 1) disclose all of the claimed features; 2) provide a reason for modifying/combining the prior art; and 3) provide a reasonable expectation of success for modifying/combining the prior art. Again, the fact that you don’t agree with his decision does not mean that he did a “slipshod” job or provided only a “cursory explanation.” He was very clear on what he regarded as the deficiencies in the fact finding related to all three of those questions of fact.”It gives the reviewer the easy out of stating there is no fact to be found with substantial evidence support in the instant reference due to his own inability to understand the reference.”Your ability to not get it is simply amazing. The patentee/appellant in this case certainly understood the references (e.g. Frey and Dujon) and when the examiner/Board stated that the references disclosed all of the claimed features, the patentee/appellant disagreed. And the patentee/appellant explained to the court why the references didn’t disclose all the claimed features. The court had patentee/appellant’s arguments and the examiner’s/Board’s arguments before them. And the court decided the patentee/appellant was correct that the references didn’t disclose all of the claimed features. And didn’t provide a reason to modify/combine. And didn’t provide a reasonable expectation of success.”People around here don’t ordinarily presume ignorance/incompetence on the part of their fellows, especially those who are reviewing cases. Many (if not nearly all) folks don’t even have a clue as to what happens on review.”Again, are you telling me that examiners don’t understand that their rejections are subject to review by APJ’s and Fed. Cir. J’s who don’t deal with the exact same technology that the examiner examines on a day in and day out basis? Are you really telling me that you, and most of your compadres over there, are ignorant of this very basic aspect of the whole process?”At least T makes it clear that the only issue is his own inability to read a technical reference. That, in this case, can be cured by another reference explaining the term to him. Though he doesn’t go the extra mile and state for the person getting the case back that such is all that would be required.”It’s not J. Taranto’s job to provide the evidence and explanation as to the scope and content of the prior art. That’s the examiner’s (i.e. your) job. So if the claim recites a widget comprising X and you produce a reference disclosing a widget comprising Y and you just want to get away with, “Well, everybody of ordinary skill in the art knows that X and Y are the same, or that Y always includes X” then you d#mn well better provide some support (i.e. some evidence) for that argument if you want to persuade an APJ and/or Fed. Cir. J. who doesn’t spend day in and day out searching widget applications and prior art that you are correct. It’s not their job. It’s your job. And if you don’t do your job and you get reversed it’s not because J. Taranto is lazy, it’s because you’re lazy.Your problem, 6, is that you, and basically all of the examiners, are living in a bubble. You think because you’ve “persuaded” or “convinced” your primary and/or your SPE and/or your QAS that your rejection is proper that you’re doing the job correctly. Here’s a newsflash for you: your primary/SPE/QAS isn’t even listening 90+% of the time your jabbering on and on about how totally awesome your rejection is. They’re sitting there thinking about heading over to Eisenhower Ave to catch a movie during their lunch two hour and they wake up from their daydream and say, “Huh, what’s that you were saying? Oh, you rejected all the claims? Great. Where’s my pen so I can sign and send this on up?”

  6. From the Opinion:Dujon is a two-page abstract that listssome of the ’545 patent co-inventors as authors. See J.A.11785-86. It teaches that a GIIE endonuclease “can beexpressed in the yeast nucleus from artificial constructsand the protein is able to cleave efficiently both its naturalsite within mitochondria and an artificially placed sitewithin the nucleus.” J.A. 11786. Nowhere else does thereference clarify what is meant by cleaving “an artificiallyplaced site within the nucleus.” There’s really only two possible “meanings” for that passage in Dujon (that I can think of anyway). I don’t see why it matters which meaning is chosen for the purpose of the prima facie obviousness argument based on Dujon. What’s beyond dispute is that Dujon teaches that the enzyme functions when it’s recombinantly expressed in the nucleus of a eukaryotic cell. Is there any reason to expect that the enzyme would not cleave yeast chromosomal DNA based on Dujon’s teaching? I can’t think of any.

    1. “What’s beyond dispute is that Dujon teaches that the enzyme functions when it’s recombinantly expressed in the nucleus of a eukaryotic cell. Is there any reason to expect that the enzyme would not cleave yeast chromosomal DNA based on Dujon’s teaching?”Yes, the reason is the CAFC’s ignorance of bio.Though I haven’t read through the whole opinion. I just note that I’m starting to see a pattern in decisions from review bodies where they simply fail to find facts. It’s basically review by ignorance.

      1. 6, the Board and the Examiner are proving limitations based on their own skill and knowledge. If they want to file expert opinion affidavits themselves, let them. But unless they do, they need real evidence to prove their case.

        1. No, they’re not “proving limitations” based on their own skill and knowledge. They basing it on what one of ordinary skill takes from the reference itself. There’s a difference between what one of ordinary skill takes from a reference and what a random ta rd judge who knows nothing takes from a reference.

          1. Well, 6, they are still proving limitations not found in any reference based on their own skill and knowledge. No matter how you cut it, they are not proving a prima facie case.If the examiner wants to rely on skill in the art to show missing limitations, he should have the decency to file an affidavit to that effect that can be rebutted, if possible, by other expert opinion.

            1. they are still proving limitations not found in any reference based on their own skill and knowledge.There is no limitation missing from the collectively cited references. And it’s ridiculous for the purpose of establishing a prima facie case to require that Examiners or the Board file affidavits to support common sense reasoning by the ordinary skilled artisan. If the Examiner or the Board’s reasoning is erroneous, then the applicant is free to challenge that reasoning.What is arguably missing from the Board’s obviousness argument is prior art teaching that would lead one to expect that the claimed method would not kill every cell treated according to the method. The Board made a fair point in response, I thought, when it pointed out that the claims did not recite any baseline survival rate of treated cells.

            2. “There is no limitation missing from the collectively cited references”Precisely the point. And one that goes entirely over Ned’s head. Though he’s apparently in good company in the courts.

            3. 6, even if one of ordinary skill would appreciate that the Dujon reference disclosed cleaving chromosomal DNA in a Yeast cell, it is also true that Frey did not. This alone would have justified a reversal.But, after several days of discussing this issue, do you now thing that the examiner or the Board, as the case may be, should have done something more in the case of Dujon than simply concluding that it disclosed cleaving chromosomal DNA in a yeast cell? BTW, have you looked at the underlying rejections of the examiner? Did he do his job properly in your view in light of this discussion?

            4. whew that is a lot to go over ned, I’m just now reading the brief to the CAFC by the patent holder. From what I’m seeing, this case is 1000x the cluster f it appears to be on the surface. Though with a record like the one they have, it is no wonder. Every time I read something new in the case my mind boggles at the people conducting the prosecution and the review. I may, by sometime late next week complete a review of all this (lulz, it’s sooooo long).

            5. Ned man, before I get into all that though, it appears we have 95000490 and 95000491 at issue in the CAFC decision. They are quite different in what is being put on the record and argued.Edit: we’re looking at 95000491 for the 545′ patent. Edit 2: Check page 10 of the amended appeal brief for a nice smiley face lol.

            6. Man a major scandal in 95000491 was the petition filed by requestor which was denied on 03/23/2011. That Fig on page 10 with the smiley face of the appellants brief is a preposterous introduction of new evidence since it is not clearly designated as mere argument of their point of view. Or at least it is masquerading as one. It presents, without explicitly noting so, the appellants version of what happens in the reference’s experiment. The other side has been disputing this the whole time. Having that figure there without an express disclaimer noting that the figure is according to their simplistic proposed version of events makes it blatantly misleading and it may even be accepted by some unwary person as evidence. And likewise yeah, unfairly prejudiced by page count inability to file other evidence etc. Thing is, the appellant could literally have not introduced that figure as evidence, because their position is explicitly well, hur, we don’t know exactly what happens, but we do know at least that what is in this figure happens. But that isn’t made clear in the brief, and they present the figure as if it is the god’s honest Truth with a capital T. Overall, the brief is misleading in that respect.

            7. Alright from what I’m seeing here we’re discussing the 545′ patent appeal because the first case mentioned, 605′ or something got dismissed and the other one I don’t give two shts about. The reexam no. is 95000491. Examiner made two main 103′s using refs Q, O and E92 or else Bell-Pedersen, Old and Eddy 92. Personally I’d focus on the Bell-Pederson rejection and so I will address that below. The Quirk ref is too filled with garbage to be of much use to anyone less than super genius in the art. The parties fight about Bel-Pederson and what happens therein, using lots of decs even, along with some other references like parker the whole time with the examiner siding with requester. As, I’m pretty sure, he is obligated to do. There is reasoning backed by evidence for him to believe that the recited cleavage of claim 7 is inherent to the method being performed in Bel-Pederson. He must make the rejection if he finds the reasoning reasonable. It really wasn’t even up to the examiner, someone above him would have may well have stepped in and made that decision for him if he didn’t. He could say that he believes the patentee’s evidence more, but that would be irrelevant since the patentee simply shrugs his shoulders and says “meh, I don’t know what happens at that time, therefor it isn’t shown in the reference since I wrote it and I lacked data to report on it at the time”. That may well be so, but that doesn’t mean that the rest of the evidence on the record isn’t sufficient for the office to have to make the rejection anyway. Once the technical reasoning has been put on the record, since the office does not have the capability of carrying out Bel-Pederson’s experiment, that sht needed to be carried out by patentee and let us fraking know. MPEP is pretty clear where the burden of proof goes once the office has technical reasoning, or better, evidence, backing inherency. Here that appears so. The patentee is then allowed to submit evidence the contrary. He has submitted none, instead submitting evidence that states “meh, idk”. Some of the expert dec’s appear to simply dance around the issue of whether or not cleavage happened necessarily in Bell-Pederson (and also Q) instead preferring to focus on the fact that they didn’t know it was, or whether or not it was, at the time of the BP/Q experiments. They simultaneously indicate that subsequent experiments under the same conditions indicate it is “possible”, though, if they’re done under the same conditions then it would stand to reason that what happened in the subsequent experiments would have happened previously as well in the previous experiments of BP/Q even though nobody confirmed it at the time. And that dancing is relied upon quite a bit by the appellant. If was the examiner I’d reopen prosecution and make some calls/requests for information to clarify exactly what everyone is saying and proceed to lay a smacketh down upon the correct party. Because it really sounds to me like both sides understand what happened in the BP experiment and only the requester is being forthcoming thereabout in their decs while the appellants decs dance around the issue while the attorney runs interference with arguments made up by himself. Note that I don’t say they’re doing this on purpose necessarily. Either way everyone prosecutes differently so that examiner didn’t have to. I likewise get the feeling that the appellants decs, and arguments to some extent, seem to not care so much about what actually happened in the BP experiment, instead worrying about the lack of anyone appreciating what happened in the BP experiment and how that would affect obviousness. Of course the examiner has to include any inherent happenings in the BP experiment as a part of the reference for purposes of the rejection. In any event, upon appeal, the board simply states they agree with the patent owner regarding the contents of Bel-Pederson’s experiment. They note that the issue was discussed in related appeal 2011-010572 regarding a patent by a man named Dujon. Checking that decision out is interesting because they affirmed some of the rejections, apparently including the ones over BP and Q (though that is weird and the decision is too long for me to confirm w t f they were doing regarding affirmance). In any event, they conclude on page 22 that the examiner did not present enough evidence to establish that the ordinary skilled worker would have recognized at the time of the invention that cleavage occurred in the chromosome before the little phage left the chromosome due to excision. Frankly I’d say the examiner agrees with that. He merely presented evidence that it occurred inherently, not the it was recognized at the time. The board apparently just skips over this distinction. In any event, getting back to our case, since they discard the BP and Q refs for insufficient evidence of cleaving at the right time, the board turns to Dujon90. Apparently right here they’re introducing a new grounds of rejection but nobody seems to care because they probably want the case done with or appealed to the CAFC. I will conclude by noting that the examiner never even got the chance to address the thing about which the CAFC concerned itself, the Dujon reference. Along with Frey but who cares about that one? The CAFC then brings up the issue which me and you have been discussing, the ambiguity in Dujon. The ambiguity of Dujon was never even talked about in front of the examiner and the board couldn’t add in new references (they barred themselves from doing that awhile back). In summary Ned, I will state for the record that I think it would have been a good idea to cite a reference or two to address any potential ambiguity in Dujon. But the board couldn’t do so and the examiner never even tried to use Dujon so had no reason to do so. Upon remand, the examiner needs to do so to make T happy. That said, if T’s quote is correct, it is not ambiguous to a person of ordinary skill. I note I do not appear to have a record of their brief to the CAFC and thus cannot tell if they argued ambiguity of Dujon or not. But on the other hand I do have a copy of the oral args at the board which is pretty sweet! Maybe they have one for the CAFC case too!Note in the oral args at BPAI at the very beginning they ask why nobody has just run the g d experiment yet and found out what happened. LOL that’s what I wanted to know the whole time. Turns out takes a lot of money and time to do it. Not to mention the people who have the plasmids like the patent owner so would withhold them. Oh and finally yes, the examiner did his job exactly correctly. He took a position based on the evidence and reasoning that he was obligated to take in fact. The board’s action of introducing Dujon is questionable. They’re entitled to do so, but they should have designated a new grounds and sent it to the examiner. I hereby wash my hands of this nonsense after I avail myself of the entertainment of the oral args.

            8. Oral args at CAFC website about 2012-1485 are interesting.I have to say Ned, after having listened to the oral args it appears that the no. 1 problem the PTO faced was putting that shrill person on the case. The other guy that came after the PTO’s rep was pretty decent and really laid out a case. All said, everyone seems convinced at oral args that Dujon either is or would be misread if read to be implying necessarily chromosomal DNA. I guess if everyone is agreed, then there is no argument to be made. I must concede if everyone on that side is going to concede such. It may nevertheless be an instances where it is easy to find evidence for the one reading of the reference or even to understand it from that perspective based on experience reading the art (which may have happened to the board), but then for that not to have been what the reference was talking about irl, and everyone irl that read it knew or would know that. This should have come out before the board since they seemed to have touched briefly on Fray and Dujon at oral args at the board. Those instances I just mentioned above though actually do occur, as I had one the other day. In such a situation, it is obviously advantageous for everyone to simply come together in agreement in the end as to what was being disclosed. According to the guy advocating tor obviousness, Dujon was in fact referring only to plasmids. I presume that he knows this based on his irl experience (along with the age of the ref etc) or having been told. If he’s convinced and part of his case rests on it going the other way, then surely I must be convinced. Why the CAFC didn’t simply note that there was no longer any argument as to Dujon showing chromosomal DNA cleavage is beyond me since the PTO obviously gave that up at oral args, I guess they just really wanted to stick to what they felt like the BPAI found even though everyone appeared to be agreed that the board didn’t even find that fact.

            9. In the appeal, did anyone explain where Dujon90 came from? It was not of record in the ’545 reexamination, it was not discussed by anyone for any reason. It appears in that reexamination out of the blue. The patent owner never had a chance to discuss the reference, enter expert testimony or anything. Just bizarre. How in the world?

            10. Thanks, 6. I still have not found where Dujon90 was introduced into evidence. The reference was not listed in the Evidence Appendix of the patent owner’s appeal brief. Neither is it discussed in the examiner’s RAN.On Frey, the examiner had what it taught right. It taught in vitro, not in vivo, cleaving. That point was heavily argued, but the examiner said this,”Patent owner’s arguments at pages 26-27 that Frey is not relevant because it shows chromosomal cleavage in vitro after removal of the chromosomes from the cell also argues against the references individually, where the rejections are based on a combination of references. In all of the rejections of record, Frey is used in combination either Quirk or Bell-Peterson, both of whom teach chromosomal cleavage and double-stranded break repair by a group I intron encoded endonuclease in vivo. Frey is cited as providing motivation to apply a group I encoded endonuclease to a eukaryotic cell. Based upon the combine teachings of both Quirk or Bell-Peterson with Frey and Old, a person of ordinary skill in the art at the time of the invention would have been motivated to use a group I encoded endonuclease, such as I-SceI, to cleave the chromosomal DNA in a eukaryotic cell in vivo.” RAN dated September 30, 2010, page 66.The Board got its facts wrong in discussing Frey.I am still looking as to where Dujon90 was first discussed. I am baffled at just how the Board could rely on a reference neither discussed nor relied upon by the examiner to affirm a rejection! They should have indeed returned the case to the examiner rather than forcing the Federal Circuit to look at it to see if they got it right. Smacks of lack of orderly process.

            11. I give up. I can find no mention of Dujon90 by anybody in the ’545 reexamination until the board decision. Perhaps it came out of a different one of the three related reexams?

            12. Found it. Reexam 95/000490 (’605 patent) at page 51 of the RAN. Dujon90 was submitted in an IDS filed on 8/31/2010. The RAN issued on 10/22/2010. The examiner did not use Dijon90 in any rejection, but used it to rebut a PO’s argument. Later, Dujon90 was not listed as an appeal exhibit by either the patent owner or the requestor, nor discussed, in any of the appeal briefs. Because of this posture, no expert testimony or comment on Dujon90 was of record.Note also, the examiners in the two reexaminations are not the same.

            13. Tbh I don’t think it ever was on this record unless it was just somewhere in the mountain of NPL. It may have been, I can’t recall from when I looked through. I think they just nabbed it from the sister prosecution where it was properly on the record. “I am still looking as to where Dujon90 was first discussed. I am baffled at just how the Board could rely on a reference neither discussed nor relied upon by the examiner to affirm a rejection! “I think it’s because the patent owner probably wanted to consolidate them all into one big prosecution so they could go to the CAFC all at once. The PTO sometimes bends the procedural rules to accommodate the applicant. But yeah, the whole thing is a huge mess.

            14. From the prosecution I see the two main references do not show cleaving chromosomal DNA. The Board agreed. The secondary references do not show the use of the claimed endonuclease. Frey shows only in vitro. Dujon90 is not discussed and does not even appear to be of record.How the Board affirmed given this is a wonder to behold.

            15. Whether or not the Q and bel-pederson refs have cleavage or not is quite disputed. Of course there is no explicit mention, the whole case is regarding whether cleavage would have happened inherently. There appears to be evidence that it did, and the board says so in oral args. But the board felt like the evidence was lacking as to whether insertion ever happened prior to excision. That I’m a little more iffy on, but on the other hand, I thought the whole point of this sort of experiment was that if you have those things floating around when the strand is cleaved they insert themselves? So meh, I can’t say either way.As to why they “affirmed” though, they seemed to think that the teachings of Dujon and Frey made up for the missing limitations more in “conceptual” terms than actual laying out of limitations. Shifty grounds imo.

            16. Regarding the main references, if the chromosomal DNA was cleaved, it was not an intended byproduct of the process and experiment actually conducted. This much is clear. A Supreme Court case controls the outcome here: Tilghman v. Proctor, 102 US 707, 711 – Supreme Court 1881″The accidental effects produced in Daniell’s water barometer and in Walther’s process for purifying fats and oils preparatory to soap-making, are of the same character. They revealed no process for the manufacture of fat acids. If the acids were accidentally and unwittingly produced, whilst the operators were in pursuit of other and different results, without exciting 712*712 attention and without its even being known what was done or how it had been done, it would be absurd to say that this was an anticipation of Tilghman’s discovery.”Schering Corp. v. Geneva Pharmaceuticals, 339 F. 3d 1373 – Court of Appeals, Federal Circuit 2003 seems to not fully get Tilghman, and its holding in that case seems to effectively overrule the Supreme Court.An essential aspect of any anticipation is that it be enabling. How can this be if the what the prior art is doing and how it is doing it is completely unknown and unappreciated?

            17. I’m afeared that the lawl on anticipation may have moved on beyond your 1800′s case Nedo. While you weren’t looking. Though I should note that iirc that case dealt with some de minimus fat acid production, not enough to actually produce it in quantity. That is the opposite of the facts in this case if we presume what you stated at the beginning of your comment. “An essential aspect of any anticipation is that it be enabling.”Agreed. I don’t think enablement is much of an issue here though. “How can this be if the what the prior art is doing and how it is doing it is completely unknown and unappreciated?”Because “what the prior art is doing” aka what actual physical steps the people running the experiment did, is known and appreciated. The only things not appreciated are the possible inherent effects.

            18. 6: “Because “what the prior art is doing” aka what actual physical steps the people running the experiment did, is known and appreciated. The only things not appreciated are the possible inherent effects.”Consider an interference where X proves steps A, B, and C, but does not know that these produce effect D. Y proves later steps A, B and C, but does know about effect D before X. As I understand this, Y is supposed to win and get the patent. But under the Fed’s “inherency” thinking, neither gets the patent. X loses because Y appreciated first. Y loses because X actually did it first.Something is really wrong here.Under the SC, unless someone appreciates what is going on, there is no anticipation. Thus, in the example, Y gets a valid patent because X didn’t know what he was doing.As to the Federal Circuit overruling the Supreme Court — or ignoring it, just look who wrote the opinion. Rader.

            19. “Consider an interference “No thank you.Though note ned that your hypo involves a lot of “proving”. Why are you so obsessed lately with “proving”? Just say they carried out steps a b and c. You’re wrong about whether or who gets “the patent”. If X submits a patent for steps a, b and c and that method is novel/unobvious/eligible then he gets a patent regardless of whatever inherent effects happen (note that this will change however if a b c is anticipated/obvious, even if he tacks on effect D that makes it novel/unobvious). When Y comes along after him and submits for a patent then so long as we know, from evidence or reasoning that effect D happens in the performance of method a b c then Y gets no patent. If however X submits for a b c D (D is an inherent effect required for novelty) and gets his patent then X will have his patent go down after Y comes along and notes that D is inherent in prior art reference Heller et al that predates X’s submission where Heller et al performed a b c. But that’s just the risk you take when you’re claimging an inherent effect as a limitation on your invention.

            20. At least as of the final action closing prosecution with regards to claim 10 and 12, the examiner had not yet cited either Frey or Dujon. Dujon is note even of record yet. Frey was suggested by the 3rd party to reject new claim 28. The 3rd party stated Frey disclosed “in vitro cleavage of a yeast … chromosome. The examiner merely adopted the 3rd party suggested rejection of claim 28 in toto.

            21. “There is no limitation missing from the collectively cited references.”The Federal Circuit concluded otherwise.”And it’s ridiculous for the purpose of establishing a prima facie case to require that Examiners or the Board file affidavits to support common sense reasoning by the ordinary skilled artisan.”If the examiner’s/Board’s “common sense reasoning” is based on facts that are supported by evidence that meets the burden (i.e. preponderance in patent prosecution/reexamination) then no affidavit is required. “Common sense reasoning” based on “facts” that are not established by evidence that meets the burden is nothing more than w#nking by the examiner/Board/you.” If the Examiner or the Board’s reasoning is erroneous, then the applicant is free to challenge that reasoning.”Or they are free to challenge that the “facts” that the examiner or Board is “reasoning” with don’t have the required evidentiary support.Keep s#cking, xxxhole Examiner Mooney.

            22. “There is no limitation missing from the collectively cited references.”The Federal Circuit concluded otherwise.They did that by treating several discrete limitations as one big limitation, which in the context of obviousness amounts to self-serving garbage. You could play the game according to those made-up rules and find pretty much any claim non-obviousness.

            23. “They did that by treating several discrete limitations as one big limitation, which in the context of obviousness amounts to self-serving garbage.”Lulz and lulz and lulz and lulz some more.”You could play the game according to those made-up rules and find pretty much any claim non-obviousness.”As opposed to what? the made-up rules you make up to find pretty much any claim obvious?

            24. As opposed to what? the made-up rules you make up to find pretty much any claim obvious?There is nothing “made-up” about a rule that recognizes the difference between obviousness and anticipation. I suppose at this point I should fling a couple personal insults your way, as that seems to be your preferred method of communicating. So, please try harder you moronic dipsht.

            25. Everybody’s well aware of the differences between anticipation and obviousness, Examiner Mooney. That still doesn’t relieve the PTO of making factual findings, supported by a preponderance of the evidence, that every feature claimed is within the scope and content of the prior art. The PTO failed to do that in this case. The fact that you personally want the standard of obviousness to be “oh well, it’s close enough for government work” is not really relevant to the discussion here.

            26. “Well, 6, they are still proving limitations not found in any reference”No, they’re not. They’re not “proving” limitations at all. They’re finding facts. And they’re finding facts based on reading the reference from the point of view of a person of ordinary skill rather than a random ta rd off the street/bench.”If the examiner wants to rely on skill in the art to show missing limitations”Again, he’s not relying on skill in the art, he’s relying on the reference.

  7. DC: the court dismissed Pasteur’s appeal as moot because “[substantially] amended claims cannot be entered now that the patent has expired.” This result is obviously important for gamesmanship because it rewards delay tactics on the part of would-be infringersNot sure I follow this. What’s the “delay tactic” and what’s the “reward”?

    1. I think Dennis is suggesting that challengers can try to slow down the inter partes reexamination so that it terminates after expiration of the patent, which cuts off the patentee’s ability to amend the claims. The reward seems pretty obvious – if amendments are needed to save the claim, then this “tactic” would eliminate any liability. That said, I don’t think this is that big a deal. Most amendments during reexamination are going to cut off liability for past “infringement” anyway, since the challenger was presumably not infringing a valid claim.

      1. This is an interesting tactic, but, of course, is only worthwhile if they need to amend the claims. And the cost may be infringing the whole time and racking up a big bill.

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