Federal Circuit to PTAB: New Factual Findings Required Following Amended Claim Construction

By Dennis Crouch

Tempo Lighting, Inc., v. Tivoli LLC (Fed. Cir. 2013)

The rules of patent trial proceedings continue to develop. One issue that is continually shocking for parties are the short and hard deadlines in the various post-issuance review proceedings and the strong pushback against parties who look to shift their position during the proceedings. Folks are learning that the first-punch in the post grant review proceedings should be at full power and fully thought through. Here, the Federal Circuit pulls the PTAB back somewhat from that approach and finds that the Board improperly found that Tempo had waived certain arguments during the proceedings.

The case itself stems from an inter partes reexamination but is relevant to the new post-issuance review proceedings. The case may also be relevant and important for patent applicants involved in ex parte appeals because of what appears to be an increase Board decisions that implicitly turn on new grounds of rejection offered by the Board.

Tivoli first sued Tempo for patent infringement in 2004 and Tempo responded with the inter partes reexamination request. The district court was then stayed (and has been stayed up to now). Tivoli’s patent at issue here covers a reflective strip that is configured to mount on the “nose” of a stair-step. U.S. Patent No. 6,554,446. Both parties compete in the industry selling lighting products.

As the reexamination plodded along, the Examiner received input from each party and closed prosecution in 2009. The Board then heard the appeal in 2010 and finally issued a decision in 2012. In that final decision, the Board rejected the Examiner’s construction of the claim term “inert to light” but then relied upon the Examiner’s determination that the primary prior art reference lacks the “inert to light” limitation. In the rehearing, Tempo argued that, under the new construction, that the primary references now teach the inert to light limitation. However, the Board procedurally rejected that argument – finding that it was an attempt to argue for an alternative ground for unpatentability being brought in the rehearing.

On appeal, the Federal Circuit found it improper for the Board to directly rely upon the examiner’s factual finding regarding whether the prior art taught the inert to light limitation after it had modified the claim construction. “On remand, the PTO will have the opportunity to make new factual findings under the proper construction.”

A major difference here from traditional ex parte examination is that the reexamination examiner here expressly determined the claim construction. In the ordinary patent application situation, examiners do not spell-out their construction. At times, it may be advantageous to push for an explicit claim construction in the process of setting-up appeal.

98 thoughts on “Federal Circuit to PTAB: New Factual Findings Required Following Amended Claim Construction

  1. As Malcolm observed, what is really important about this case is that the Office was bound by the examiner’s claim construction in the original ex parte prosecution. This is new and important.

    The critical language from the case:

    “This court also observes that the PTO is under no obligation
    to accept a claim construction proffered as a
    prosecution history disclaimer, which generally only binds
    the patent owner. However, in this instance, the PTO
    itself requested Tivoli rewrite the “non-photoluminescent”
    limitation in positive terms. Tivoli complied, and then
    supplied clarification about the meaning of the “inert to
    light” limitation. J.A. 1216. For all these reasons, this
    court affirms the Board’s construction of ‘inert to light.’”

    Really, really important case.

  2. “In the ordinary patent application situation, examiners do not spell-out their construction. At times, it may be advantageous to push for an explicit claim construction in the process of setting-up appeal.”

    A real benefit to non-troll patentees and to practitioners of every kind as well as judges and juries would be for applicants and examiners to spell out claim construction before patents can issue at all.

    There is no reason for the actual meaning, limits, and coverage of a government privilege to remain a secret or indeterminate until a quarter million dollars can be spent trying to influence a judge to re-interpret it in favor in interested parties.

    1. Owen, I have seen many a litigation decided by the claim construction the examiner gave in his NOA.

      So, I agree that encouraging the examiner to tell us how he interpreted the disputed language in the claim, if that really was at issue, is important.

    2. Owen -

      If one must spell out the claim construction beyond the claim, then what would be the point of the claim?

      If one can go beyond the claim to explain the intended construction, then applicants DO spell out the claim construction. That’s what the specification does.

      1. See les brings up the real rub. The claims are supposed to do the job of putting the public on notice but instead we have a nonsensical system setup allowing for “construction” after the fact. Most ordinary people would be astonished and appalled that this is allowed. And of course the weak 112 2nd req compounds this problem to epic purportions. The applicant could and likely should bear the burden of being very clear in what they’re talking about. But the courts and the congress consent to the modern scheme even if they don’t bless it.

        1. The irony is that 6 keeps railing on and on about clarity, and at the same time consistently shows lack of clarity in a ‘mayi mayi mayi what’ manner with his posts on these boards.

          This, no doubt, is due in no small part to his lack of understanding (or refusal to understand) the ladders of abstraction and how real language works.

          He wants his ‘wiggle room’ of “subjective-in-the-mind,” and he wants an “objective fixed language means one and only one thing” status at the same time, but just does not recognize when to apply the subjective and when to apply the objective attributes. He remains clueless in his march up the lemming hill.

          It also fits with the anti’s latest attack flavor of the day: “breadth.” It appears that anything less than a fully detailed out picture claim (which, btw, would be the more worthless the more detailed out) will do for these anti’s. But as I messed 6 up with the simple word ‘table,’ it is quite easy to see that such over-obsessiveness simply is not supportable and is quite in fact counter-productive.

          Another case of a policy-wish being disassociated from the realities of fact and law.

          Pound away anti’s, pound away.

        2. I would respectfully submit that what the reformers characterizes as a lack of clarity is instead breadth.

          The “reformers” are frustrated because they are prevented from making “me too” products because someone else patented the invention.

          Sometimes the reformers claim that the claimed subject matter is obvious and should not have been patented. However, as 6 can attest, Examiners do their damnedest to present a case of obviousness in almost every application. 98 percent of the time, if a Patent issues, the claimed invention was not obvious at the time of the invention.

          Sometimes the reformers claim the claim is not clear. However, the claim is clear enough to them for them to know it blocks them from making what they want to make. What they really mean is the claim is broad. Breadth is judged against 35 USC 102 AND 103. As 6 can attest, Examiners do their best to build a case that claims are too broad in almost every application. 98 % of the time, if a patent issues, the claims are not too broad.

          1. Les,

            Even Leopold admits to (paraphrasing) making the mistake between breadth and indefiniteness is a child’s mistake.

            That – as we see – will not stop those with an agenda from purposefully making that mistake and kicking up dust over the distinction.

            As AAA JJ termed it: there are some that simply want nothing else but to be triumphantly willful ignorant.

            There are none so blind as those that refuse to see.

          2. “The “reformers” are frustrated because they are prevented from making “me too” products because someone else patented the invention.”

            Well I can’t speak for all of the “reformers” but as for myself I’m not particularly concerned about the breadth or the ability to make “me too” products. Though to the extent that specifically functional language takes away any ability for people to invent around the patent and develop their own specific solution to come to the functionality claimed yes, I’m a bit concerned about that.

            “98 percent of the time,”

            I think you’re inflating that number by quite a bit there Les. Probably by a good 40% at least. Maybe 98% of the time what you said holds true just over the art of record. But as we all know, it’s a big ol world of art out there and the PTO barely scratches the surface.

            “However, the claim is clear enough to them for them to know it blocks them from making what they want to make.”

            That may or may not be, I can’t speak for all instances of “reformers” looking at claims. I think the claims are, in many cases, clear enough to them for them to know that the claims could arguably be used to block them from making what they want to make. But that’s just arguably. Which is why we end up with litigation over the issue on occasion.

            “What they really mean is the claim is broad. ”

            Um nah bro. Stop trying to put words in their mouths for a minute and listen to them express their subjective take on the situation. If they wanted to rail against breadth then they could just as well do that.

            1. “I think you’re inflating that number by quite a bit there Les. Probably by a good 40% at least. Maybe 98% of the time what you said holds true just over the art of record. But as we all know, it’s a big ol world of art out there and the PTO barely scratches the surface. ”

              If that be true, then that’s where the reform should be focused.

            2. (sigh)

              6, to invent around means that you would not fall under the claim scope.

              express their subjective take

              LOL – in 6′s mind, the subjective take is always correct and accords with 6′s views. He is indeed a legend in his own mind.

            3. “If that be true, then that’s where the reform should be focused.”

              Well what exactly do you propose? Add “omniscient” to the job reqs for examiners that are hired? Are we to build an omniscient computer to know the prior art for us? What’s your proposal?

            4. “6, to invent around means that you would not fall under the claim scope.”

              Obviously, but I’m talking about inventing around the actual x that was invented, not just inventing around some recitation of the function of the x that was invented.

            5. “Well what exactly do you propose? Add “omniscient” to the job reqs for examiners that are hired? Are we to build an omniscient computer to know the prior art for us? What’s your proposal?”

              The whole system is predicated on the Office finding the relevant art. If it can’t, we have a serious problem that wont be fixed by forcing applicants to add a glossary to applications.

              Omniscience isn’t required. Just knowledge in the area of the invention being examined and an ability to search beyond the PTO patent database.

              …anyway… IBM has that computer that won on Jeopardy…maybe Watson could find relevant art.

              Someone would still have to read the applications and the documents found by Watson though….I dunno who they could get to do that.

            6. “The whole system is predicated on the Office finding the relevant art. ”

              I can’t agree with that Les. The whole system is predicated on the office doing a good enough job finding the relevant art for an initial take on patentability to be made by the government in administering an entitlement program started by the congress to promote the dissemination of information in the useful arts.

              And that is all it is about. Nothing further.

              “If it can’t, we have a serious problem that wont be fixed by forcing applicants to add a glossary to applications.”

              Yeah, we’ve had that problem since the beginning. Don’t tell me that you think Tommy J in his one library was accounting for all art existing in the US when Tom J was the original examiner. I mean seriously bro.

              “Just knowledge in the area of the invention being examined and an ability to search beyond the PTO patent database.”

              Well you say that, but it would take a lot more than that to truly get you that 98% number you want over all art everywhere. There are too many old school libraries of art, not enough publicly available digitized searchable books on the art. At least in my art anyway. Some arts may not face this issue.

              “IBM has that computer that won on Jeopardy…maybe Watson could find relevant art.”

              I support that happening but it isn’t going to put a dent in the 40%.

        3. Well, 6, what is “claim construction?” In my experience, it is not needed for most claim terms. But some terms are simply ambiguous. What do they mean. What are their limits?

          A lot of times patent attorney do not intend ambiguity, but it is there. Examiners are good at spotting ambiguity in reading the claims broadly. They give a construction that at times is so unexpected, that clarification is needed.

          In an ideal world, the examiners would examine for clarity just as much as a would examine for prior art. Hopefully, the Supreme Court case now on certiorari, Nautilus v. Biosig, will provide tools for the courts and for the PTO that will allow better policing of indefinite claims.

          But, one more word on functional claims: We have to distinguish at all times that this is a doctrine not so much of indefiniteness but of scope. With a functional claim, the claim itself might be clear but its scope is far beyond the disclosure. A fundamental aspect of patents is that they cover the invention disclosed and equivalents, and no more. Thus a claim that covers more than equivalents is too broad. The Supreme Court has cited indefiniteness as the statutory basis for holding such claims invalid. They could equally as well have relied on written description and/or enablement.

          We also have to be careful not to throw into the bucket of functionality a claim that in truth is a method claim. A method claim is a series of steps that describes what something does. The particular hardware for doing so is unimportant, and typically is entirely old. The vice of functionality typically occurs when one is trying to claim structure, or a composition, in terms of its properties, or by what it does, and not by what it is. In this case structure or composition is the invention and it cannot be claimed or should not be claimed functionally. The structure being claimed must be clearly articulated. This is not to say that functional terms and explanations cannot appear in apparatus claims. All one has to do is look at the Continental Paper Bag case to see what I mean. But it does mean that the claims must do more than simply claim any structure that achieves a certain novel function.

          1. “But some terms are simply ambiguous”

            Then 112 them and be done with the proceedings. Oh no, wait, I forgot, the federal circuit put in place a rule that we can’t just 112 them and be done. Which is, as I noted above, magnifying the problem instead of helping solve it.

            “A lot of times patent attorney do not intend ambiguity, but it is there.”

            Then they need to get their sht together, people pay them enough I hear.

            “Examiners are good at spotting ambiguity in reading the claims broadly.”

            Attorneys will be even better if you make patentability hinge on their finding it and eliminating it.

            “We have to distinguish at all times that this is a doctrine not so much of indefiniteness but of scope.”

            k.

            “We also have to be careful not to throw into the bucket of functionality a claim that in truth is a method claim. A method claim is a series of steps that describes what something does. The particular hardware for doing so is unimportant, and typically is entirely old. The vice of functionality typically occurs when one is trying to claim structure, or a composition, in terms of its properties, or by what it does, and not by what it is. In this case structure or composition is the invention and it cannot be claimed or should not be claimed functionally. The structure being claimed must be clearly articulated. This is not to say that functional terms and explanations cannot appear in apparatus claims. All one has to do is look at the Continental Paper Bag case to see what I mean. But it does mean that the claims must do more than simply claim any structure that achieves a certain novel function.”

            Yeah idk about that.

  3. This is a truly miserable claim:

    1. A lighting apparatus comprising:

    a first extruded portion shaped to mount on
    the nose of a stair step; and,

    a second extruded portion coextruded with
    said first portion and mounted on top of the first portion so as to be above the nose of the stair step, said second portion comprising a material inert to light and selected to have a reflectance factor greater than or equal to light gray polyvinyl chloride.

    But the use of “broadest reasonable interpretation” is not the problem here. The problem is that the construction given by the examiner was not reasonable in view of the original prosecution history. And the original prosecution was (surprise!) a complete joke, at the public’s expense.

    Instead of the term “inert to light,” the original claims recited the limitation of a “non-photoluminescent material”. The Examiner objected to the term under 112 as failing to recite a positive limitation that would distinctly describe the claimed subject matter.

    In response, this “inert to light” language was substituted, without any written description support for the term in the specification. The best part: on re-exam the language was construed by the Board (correctly, according to the Federal Circuit) to mean (wait for it) “non-photoluminescent”.

    The Federal Circuit writes: However, in this instance, the PTO itself requested Tivoli rewrite the “non-photoluminescent”
    limitation in positive terms. Tivoli complied

    How is the term “inert to light” viewed as compliance with the rejection when the meaning of that term is indistinguishable from the term it is replacing?

    This is where the construction given by the original examiner starts to make more sense. Specifically, if the substitution of terms during original prosecution was deemed by the applicant and the Examiner to address the Examiner’s rejection, then it can’t be the case that the two terms have identical meanings.

    The good news for everyone is that these claims are dead as a doornail. They should never have been granted in the first place and I don’t see how they escape the re-exam unless someone drops the ball for the tenth time.

    1. “The Examiner objected to the term under 112 as failing to recite a positive limitation that would distinctly describe the claimed subject matter.”

      It wasn’t a rejection under 112. It was a baseless objection (i.e. no statutory basis was cited for the objection). It was the typical nonsensical “objection” or 112, 2nd rejection examiners puke out all the time. There’s nothing “indefinite” or “unclear” or “ambiguous” about the term “non-photoluminescent.” There’s no requirement in the law that claims must “recite positive limitations to particularly point out features of the invention” as the original chucklehead examiner alleged. A simple cite to the law (112, 2nd) and/or the appropriate MPEP section (e.g. 2173+) and a polite request to reconsider and withdraw the “objection” were all that was required to overcome the “objection.” But no, this is a classic example of the “why don’t you just amend?” mentality that some on this site are so proud to advocate as signs of their “intelligence” when dealing with examiners.

      Don’t amend when you don’t have to amend. It is literally that simple.

      1. I just read the examiner’s stuff, looks to me like he just objected. It had nothing to do with 112. And yeah in this instance there doesn’t appear to have been any need to amend the claim for this. To be clear though the examiner just said that the claims “should” use such language. All the attorney/applicant had to do was say “yeah I agree, please remove the objection” and move on with his life sans amendment.

            1. It is amazing how much they learn when they re-open prosecution, re-search the entire application, and write a whole new OA. For no counts. And then end up allowing the claims as appealed anyway. I’m teaching them bibles of truth.

            2. “It is amazing how much they learn when they re-open prosecution, re-search the entire application, and write a whole new OA. ”

              Boy, sounds like you sure schooled them!

              Or not!

              Either way!

            3. AAA JJ errs with “Training the triumphantly willful ignorant ain’t easy” in assuming that training is actually possible in all cases.

              6 shows that sometimes it is simply impossible to train the triumphantly willful ignorant.

              You can lead a horse to water… ;-)

          1. “Training the triumphantly willful ignorant ain’t easy.”

            That’s because you’re doing a terrible job of it, and because you’re doing it wrong ta rd.

      2. this is a classic example of the “why don’t you just amend?” mentality that some on this site are so proud to advocate

        It’s more like a classic example of “junk in, junk out, and junk all the way through.”

        It doesn’t appear that the applicant understood the issues it was creating for itself, or perhaps it understood that the patent was so junky it didn’t matter much either way.

        Don’t amend when you don’t have to amend. It is literally that simple.

        Simple to say, far less simple in practice. The instant situation isn’t representative of the typical situation in my experience, although it may be typical for those who present poorly written claims to the office.

        More typically one is faced with the option of amending the claim or creating a prosecution history that has a substantial likelihood of coming back to bite one in the behind.

        1. “Simple to say, far less simple in practice.”

          You must be doing something wrong. Responding with, “The examiner is respectfully requested to provide a basis for the objection, or withdraw it” is pretty simple.

          “The instant situation isn’t representative of the typical situation in my experience,…”

          We know. You’re an examiner churning out these silly, baseless objections.

          “…, although it may be typical for those who present poorly written claims to the office.”

          In my experience, examiners who are ignorant of the law, and there are a lot of them, typically make “objections” that have no basis. We could pull a 100 OA’s from PAIR and easily find numerous examples.

          “More typically one is faced with the option of amending the claim or creating a prosecution history that has a substantial likelihood of coming back to bite one in the behind.”

          Well, when you’re from the “why not just amend to appease the examiner and show everybody on Patently-O how smart you are?” camp, that is a typical situation you might be faced with. But if you actually know what you’re doing, when the examiner “objects” to your claim without any statutory basis, you just politely request the examiner to provide a basis, or withdraw the objection. Works every time. Never had it fail in my 15 years in practice. You should try it some time. Of course, you won’t be able to tell everybody how “smart” you are for “just amending” and “working with” the examiner to get your claims allowed, but you might end up learning something.

          1. We know. You’re an examiner churning out these silly, baseless objections.

            And you’re a pathetic m0r0n who never passed the patent bar but pretends that he did.

            Fun game!

            How are the impeachment proceedings going AAA JJ? Did you and Eric Guttag call your Congressmen yet to get rid of those nasty judges who use the term “monopoly” in their decisions?

            As to the rest of your swill, I wasn’t talking about responding to baseless objections.

            But you knew that. Tool.

      3. I agree – it was a BS objection and a really dumb amendment.

        “Inert” means “non-reactive.” It’s no less of a “negative limitation” than “non-photoluminescent” and certainly a lot less clear. The objection should have been argued – in my experience these are usually pretty easy to overcome.

        1. “Inert” means “non-reactive.” It’s no less of a “negative limitation” than “non-photoluminescent” and certainly a lot less clear.

          No doubt. Possibly it was that diminished clarity that made the amendment attractive to the applicant. After all, as long as it’s not “insolubly ambiguous” ….

          1. Possibly it was that diminished clarity that made the amendment attractive to the applicant.

            I don’t think most prosecuting attorneys think that way. Some, yes, but not most. In any case, I don’t think that’s fair in this case – the original claim term was clear, and the examiner objected to it. Further, the prosecuting attorney clearly stated on the record that he meant no change by the amendment. This mess is the PTO’s fault.

            1. Not sure I understand how Leopold’s “Further, the prosecuting attorney clearly stated on the record that he meant no change by the amendment” squares with Malcolm’s “then it can’t be the case that the two terms have identical meanings.

              Since Ned apparently has x-ray vision into Malcolm’s post and sees things that mere mortals do not, maybe he can explain this incongruity.

      4. But, just keep in mind AAA JJ that your technique relies on the fact that there is a back stop of someone at the PTO that cares what the actual law is. Once that is gone we have nothing.

        Note the new Tarantula appointment that intentionally mischaracterized the use of abstract as an application of the law instead of a judicial exception. That should be enough to over turn the decision since he then applied the wrong standard.

        1. NWPA,

          I think you are relying too heavily on the notion that the judicial exceptions are not explicitly written laws.

          It is one thing to challenge the exceptions on the basis that the judiciary does not have authority to write law – even implicitly (how deep the rabbit hole of implicit?); but it is another to say that the application of the exceptions does not follow ‘the law.’

          Applying the exceptions is a natural step in applying the law. Review the MPEP to see the steps as outlined by the Office.

          This, on its face, does appear to be reasonable.

          I think instead that your issue is that the judiciary all too readily applies the exceptions, seeking a pre-determined result instead of realizing that the application of the exceptions may not be warranted on the facts of the particular case.

          I think that you are upset with the judicial jumping ahead and looking for a gist and in so doing, eviscerating the distinct elements of a claim, ignoring the elements that distinguish the distilled gist from the claimed application of that gist.

          Follow the links in the Benson file wrapper. Counsel there made it an explicit point – statements having the legal effect of clear estoppel – that the claim was not to FULLY mental steps. But the Court jumped ahead and rendered a decision based on a pre-determined agenda, ignoring the record before it.

          I understand you being upset. I really do. But the application of exceptions to the law is a natural progression in following the law. Aim more clearly in your acrimony that the exceptions are being applied incorrectly, not that applying them (at all) is incorrect.

          1. Anon, a judicial exception is supposed to be used LAST. It is supposed to be applied as narrowly as possible. That is different than applying a statute.

            My complaint is far simpler than you would make out. I don’t care what the MPEP says. And, I don’t have time this morning to cite to cases that discuss this issue. But, I am sure there are SCOTUS cases that discuss this issue. The standard is different. Full stop.

            And, “the new Tarantula appointment” is clearly an unethical judge. He knows the standard is different. And that is why he is trying to slip in abstract as an application of the statute rather than a judicial exception. He is clearly unethical. The reason I can predict the outcome of these cases is that I assess the character of these judges. After reading a few of Tranntula’s cases it is clear that he is policy oriented. That he doesn’t care a whit about the law. He is clearly unethical. He will be easy to predict. The scummy the judge the easier they are to predict.

            1. NWPA,

              Applying the statute does mean that when appropriate the exceptions are evaluated.

              That is all that I am saying. You may want to rephrase your posts to indicate that the exceptions are being misapplied rather than contest that they are applied at all. You over-reach with trying to claim different standards when there is but one standard. There is a difference between applying the one standard correctly and applying one of a multitude of standards.

          2. Anon, you perhaps have a point that I am being a bit sloppy. But, the important point is that abstract is a judicial exception. That is very important. That means that when determining whether or not to invoke the judicial exception the rules for when to use a judicial exception should be used. That is very different than a statutory construction of a term like abstract (if it were in 101, which it is not.)

            So, for example, because abstract is a judicial exception it is entirely appropriate to call into question the policy by which the judicial exception was created. And, it is entirely appropriate to call into question the use of the judicial exception when it is counter to the statute and when the statute can be used. The judicial exception should always lose. And, the underlying policy that created the judicial exception must still exist for the use of the judicial exception.

            So, you can see there are very big differences between saying that abstract is a matter of statutory construction vs. the use of a judicial exception.

            1. NWPA,

              I agree completely with “That means that when determining whether or not to invoke the judicial exception the rules for when to use a judicial exception should be used.

              This is part of the beatdown that I give to 6 regarding 6′s silly “abtraction” pet theory, and his avoidance of treating the ladders of abstraction with a sense of intellectual honesty.

              The clear (and fundamentally objective and incontrovertible) fact of the matter is that all but the most useless picture claim is “abstract” per 6′s pet theory.

              And I would wager that even most ‘typical’ picture claims can be found to be “abstract” in some manner.

              .

              And I would further agree with you that Lemley et al purposefully obfuscates the law with an aim at one particular art field, but does not fully recognize that such a NIMBY attack surely fails as it would eviscerate all patent law.

              Clearly, those who think that patents are far too freely granted anyway
              - those who believe in patents only for Flashes of Genius, or
              - that are only truly worthy if only BUT FOR the costs of development to be recaptured, or
              - of those that wish to ignore the Founding Fathers views on alienability of personal property, or
              - those that wish to ignore the controlling law of 1908 and that there is (in incontrovertible fact) no use requirement for patented items,
              - clearly, those would deny facts and law and only see a policy desired to be put in place,
              those will try to obscure a clear and reasonable view of law.

        2. “But, just keep in mind AAA JJ that your technique relies on the fact that there is a back stop of someone at the PTO that cares what the actual law is.”

          Not necessarily. When the application is otherwise in condition for allowance except for one of these tiresome baseless objections, I count on the examiner’s addiction to counts to carry the day. It happens all the time, I traverse some silly baseless objection (e.g. to claim language, absence of section headings in the application, etc.) and the examiner refuses to withdraw it. When the application is otherwise allowable, I’ll get a call from the examiner asking me to make some pointless, unnecessary amendment and I’ll respond that no, I’m not going to do that as I’ve already responded to the baseless objection, and invite the examiner to send me something in writing that I can further respond to. What invariably follows is a notice of allowance. I’m not really interested in currying favor with the examiner class on this site (e.g. Mooney, IANAE, etc.).

          Don’t amend when you don’t have to amend. It is literally that simple.

          1. Although, I suspect the examiners might not be so willing to comply if they didn’t know that there are still people at the PTO that care about the law.

            A few more appointments like the Tarantula and we can kiss the law goodbye.

            1. “A few more appointments like the Tarantula and we can kiss the law goodbye.”

              Huzzah.

              “that there are still people at the PTO that care about the law.”

              Oh, like the person I had to teach the law to the other day to send an appeal up? Took like 30 minutes to teach this guy “the law” where it should have taken 5 minutes. And the reason is because he “cared” about it. Yeah, their “caring” about the law is less important than some of them actually knowing something about it.

            2. “Yeah, their ‘caring’ about the law is less important than some of them actually knowing something about it.”

              Agreed. In my experience the examiners, SPE’s, QAS’s, SPRE’s, and other useless know-nothing do-nothing GS-15′s who “care most about the law” are the ones most ignorant of it. They are the worst to deal with. I’d much rather deal with the examiners who are blatantly shucking and jiving trying to score tickets on the RCE gravy train.

    2. “Instead of the term “inert to light,” the original claims recited the limitation of a “non-photoluminescent material”. The Examiner objected to the term under 112 as failing to recite a positive limitation that would distinctly describe the claimed subject matter.

      In response, this “inert to light” language was substituted, without any written description support for the term in the specification. The best part: on re-exam the language was construed by the Board (correctly, according to the Federal Circuit) to mean (wait for it) “non-photoluminescent”.”

      /facepalm
      /facepalm
      /facepalm

      This is what happens when people miss WD rejections :(

      “They should never have been granted in the first place and I don’t see how they escape the re-exam unless someone drops the ball for the tenth time.”

      After Ex Parte Frie issued I never say never when it comes to someone dropping the ball for the tenth time. Some folks appear determined to f up prosecution.

      1. a 112 MM, it was just an objection. The federal circuit is fine to construe the term thusly

        Thanks. It’s odd that the (im)propriety of the original objection wasn’t noted in the decision.

    3. ” if the substitution of terms during original prosecution was deemed by the applicant and the Examiner to address the Examiner’s rejection, then it can’t be the case that the two terms have identical meanings.”

      The rejection was absurd. First of all, negative limitations are allowed. Second of all, “non- photo-luminescent” is not a negative limitation. It is as meaningful photo-luminescent would have been. There are two classes of materials, the kind that glow and the kind that don’t. The claim specified the kind that don’t.

      Or course the replacement phrase would mean the same thing as the original phrase, there wouldn’t be support for any other kind of material and the Inventor would endeavor to claim what he considered to be the invention. In this case, the invention included a material that did not reach to light by giving off other light, i.e., material that is inert to light, if you are so silly as to require that I not use words with “non” in them.

      1. Sorry Les, but “Or course the replacement phrase would mean the same thing as the original phrase, there wouldn’t be support for any other kind of material and the Inventor would endeavor to claim what he considered to be the invention” is not accurate.

        Amendments that do not mean the same thing and that have support and that claim what the inventor endeavors to claim as his invention are routine.

          1. Les,

            I do not understand your comment. I was talking about claim amendments.

            Of course, if you are “replacing a material specification” you cannot add new matter – but I do not think anyone is talking about that.

            1. Malcom was.

              He said:

              ” if the substitution of terms during original prosecution was deemed by the applicant and the Examiner to address the Examiner’s rejection, then it can’t be the case that the two terms have identical meanings.”

              I found that a ridiculous assertion, especially given the ridiculous nature of the Examiner’s objection/rejection.

              If the applicant didn’t want to waste time and money arguing the point with the Examiner, the next best option is roll ones eyes and placate the Examiner by replacing the word/phrase with one that means the same thing but doesn’t have “non” in it.

            2. “If the applicant didn’t want to waste time and money arguing the point with the Examiner,…”

              Doesn’t take too much time, or money, to simply tell the examiner, “Provide a basis for the objection or withdraw it.” It took me about 3 seconds to type that full and complete response to that “objection.”

              “… the next best option is roll ones eyes and placate the Examiner by replacing the word/phrase with one that means the same thing but doesn’t have ‘non’ in it.”

              But as we’ve seen, that’s not really a good option, certainly not the “next best” option, and in fact is a terrible option.

              If there’s no reason to amend the claim, don’t amend the claim.

            3. Thanks Les,

              Clearly, it makes no sense to make a specification amendment that introduces new material. Since such a proposition is obviously asinine, I think I just gave Malcolm the benefit of the doubt and presumed he was talking about a claim amendment.

            4. AAA JJ

              Perhaps you deal with more reasonable or compliant examiners than I do. Of course it takes just a few seconds to type that.

              However, it takes longer to type something that would persuade an examiner that would make such a objection/rejection in the first place. Failing that, it takes even longer and costs more to prepare a pre-appeal request for review and/or an appeal brief.

            5. anon

              no one, not even I, suggested amending the specification.

              Instead, I used the phrase “material specification” referring to claim language that specifies a type of material.

              I believe we are talking about an amendment to claim 1. I assume therefore that original claim 1 specified the material as broadly as possible (non-photoluminescent). While the spec might have identified particular example, the examiners complaint about negative claiming would not have justified limiting the claim to only the enumerated examples that might have been identified in the specification. Accordingly, I dismissed such amendments and asserted that an applicant would therefore of course look for a replacement term that had the SAME meaning as the objected to alleged “negative” limitation.

            6. “Perhaps you deal with more reasonable or compliant examiners than I do. ”

              No. I deal with the worst of the worst (i.e. TC 3700) quite a bit. I also deal with some of the best (i.e. TC 1700).

              Examiners love to make these ridiculous “objections” because they don’t cost the examiner anything. And when the “just amend and placate the examiner” crowd does just that, the examiner gets to say, “See, I’m doing record breaking outstanding quality work here because they amended in response to my objection. Can I haz bonus now?”

              I don’t play those games. If the examiner wants to make silly, baseless objections like that, I force the examiner to pay. No examiner is going to give up a count for an allowance to maintain an objection that has no statutory basis. I’m very clear with them: they can have their objection, or they can have their count. Their choice. They always, and I mean always, choose their count.

            7. Well then Les, I would say that you are not correct in so far as my comment fully allows “material specification” types of changes in claims.

              If the ‘material specification’ is covered in the body of the application without any introduction of new matter concern (and the rest of my post applies), an amendment to the claim for such a ‘material specification’ change does not run afoul of the law.

              Your attempt to indicate otherwise cannot hold.

        1. Anon –

          You are talking about what is theoretically possible generally.

          I am talking about Malcom’s false logic that any amendment must change the meaning of a claim. In the present case, where an Examiner objects or rejects a claim alleging that non-luminescent or non-caloric or non-alcholic is not a “positive recitation”, anyone that amends a claim to placate the Examiner would do their best to do so in a way that maintains the original meaning of the claim. Maybe they would have to go so far as to coin a phrase such as teatotolic (the opposite of alcoholic) or skinneyific (the opposite of caloric). Malcom is wrong. It is not necessary to change the meaning of a claim to address an objection requiring a positive recitation.

          1. Thanks for making the distinction Les.

            Yes, as I pointed out, a discontinuity has arisen between the views of Malcolm, Ned, and Leopold that remains un-addressed.

            As is often the case with simple questions and honest answers, the silence screams volumes.

  4. I’m actually kind of surprised the board would hold this way. I mean obviously if you change the claim construction then you’re going to have to do the whole thing over again. That’s pretty basic.

  5. “Here, the Federal Circuit pulls the PTAB back somewhat from that approach and finds that the Board improperly found that Tempo had waived certain arguments during the proceedings.”

    This is a favorite tactic of the lazy APJ class. Ignore arguments and/or claimed that the arguments are waived and cross their fingers in hope that they don’t get called out on it.

    “The Board then heard the appeal in 2010 and finally issued a decision in 2012.”

    In other words, the typical “expedited” handling the PTO gave to all re-exams.

  6. Indeed, in my experience, the vast majority of disputes in re-examinations involve claim construction issues just as they do in court. A critical problem in claim construction in the patent office is, of course, the patent office’s insistence on using broadest reasonable interpretation with respect to an issued patent that can send the re-examination off into bizarre paths where something other than the actually claimed invention is being examined.

    If the patent office were attempting to fix their rules, they would fix this. Stop using broadest reasonable interpretation with respect to issued patents in re-examinations and other post grant reviews.

    1. the patent office’s insistence on using broadest reasonable interpretation with respect to an issued patent that can send the re-examination off into bizarre paths where something other than the actually claimed invention is being examined.

      Competent patent attorneys are useful in such situations. As Dennis noted upthread:

      Folks are learning that the first-punch in the post grant review proceedings should be at full power and fully thought through.

      Who would have thought?

    2. “If the patent office were attempting to fix their rules…”

      They aren’t.

      “…, they would fix this.”

      So they won’t.

    3. If the PTO were to abandon BRI during re-exam, you would then have to have one of these: 1) collateral estoppel applies based on the result of claim construction during the PTO’s re-examination proceedings, or 2) collateral estoppel does not apply to the inter partes filer with respect to offering the re-exam references afterwards in an invalidity defense in court.

      Now, personally, I think that claim construction should be part of the PTO’s package deal: get one patent, we’ll give you your claim construction for free. But I can imagine most folks around here cringing, in part because having claim construction be a part of prosecution drastically increases the malpractice risk to prosecutors as compared to litigators.

      1. Mixed reactions to APOTU’s “Now, personally, I think that claim construction should be part of the PTO’s package deal: get one patent, we’ll give you your claim construction for free. But I can imagine most folks around here cringing, in part because having claim construction be a part of prosecution drastically increases the malpractice risk to prosecutors as compared to litigators.

        I actually like the initial idea of the examiner putting on the record: this is what he claim terms mean. Applicants of course would be able to respond – on the record.

        The part I did not like was the ASSumed part that “most folks around here [would] cringe[]“.

        1) such would do nothing with malpractice risk. Items on the record already have that risk – and it is minimal,

        2) it’s a lazy jab at applicants and their representatives with no apparent basis in fact, and

        3) it has been the Office that has fought to have such proceedings put into place.

        In a sense. 3) is a bit understandable given that doing so would mean the end of the cut-and-paste examination that so often takes place. Lemley wrote a piece associated with the sense of just how much effort is put into examination versus the overall increased cost that such increased effort would entail. Seeing as the fact remains that far less than 2% of all active patents actually see the courtroom (a fact which works to water down the rapid “Troll”-mania dust-kicking), Lemley’s view that a less-than-perfect examination may make economic sense may (just may) carry some weight.

        1. No, it really wasn’t meant to be a dig at prosecutors. Having a fixed and complete claim construction formulated during prosecution of a patent, of the sort that carries over into every suit filed on that patent, would shift all of the risk associated with botching a Markman hearing and move it into prosecution. Since a lot of prosecutors don’t do litigation, this could be a risk they’re unwilling to assume, since they generally wouldn’t get the big bucks for prosecuting a case to issuance that a litigator gets for a successful lawsuit.

          And that’s completely understandable. It would mean a pretty big shift for everyone in terms of how things get done.

          1. APOTU,

            You do realize that almost always the people litigating are not the same people prosecuting, right?

            Yes, litigating can involve big bucks, but pay attention to the actual rate of live patents that are litigated: far less than 2%. Moving the process into prosecution simply does not carry the ‘threat’ that you are imagining.

            1. That’s why I said, “Since a lot of prosecutors don’t do litigation…”

              And I think there’s more of a risk than you anticipate. With a complete claim construction to go along with the patent, it makes it a lot easier for people to discern the worth of the patent before entering litigation. If a patentee tries to sell the patent and is told by potential buyers that the claim construction renders the patent on a worthwhile invention nearly worthless, that inventor probably won’t be happy. Possibly enough to take his former counsel to court.

            2. APOTU,

              You do not seem to understand how a response is developed.

              A lawyer does not operate in a vacuum. A lawyer operates at the direction of his client. Before a reply is sent back to the Office, clients are informed.

              The fact that a more detailed response would be developed in the path of prosecution simply does not entail the fear-response that you want to see. ANY response during prosecution has the same limiting effect. This simply is not a change in kind from what exists today. Sure, there is always risk. But not the heightened level of risk that you are portraying.

            3. “You do not seem to understand how a response is developed.”

              None of the examiners do. They all think that the only person who reads the silliness they write is the person who signs the response. Of course, this is not unexpected as the entire time they are junior examiners their SPE and/or primary will sign off on any piece of garbage they produce without actually reading it as long as the OA summary indicates every claim is rejected.

            4. “anon, will do. APOTU is head and shoulders above the rest of the examiners (Mooney, IANAE, 6, etc.) that post here.”

              In other words he suffers from the same brand of ta rdation as AAA.

            5. Yes, 6, on this world reasonableness and straight-forwardness do seem equivalent to your label of “ta rdation”

              That ‘politicking’ style of yours svcks every bit as much as Malcolm’s “this is only a blog so intellectual dishonesty is OK” style.

        2. far less than 2% of all active patents actually see the courtroom (a fact which works to water down the rapid “Troll”-mania dust-kicking

          As best I can tell, nobody is asserting or relying on the belief that every active patent “sees the courtroom”, so your fact doesn’t “water down” much of anything.

          1. Malcolm’s “As best I can tell,” pretty much says it all.

            If that’s your best, your best just won’t do.

            (said in the best Twisted Sister tones)

      2. A plurality of thresholding units, collateral estoppel of the patent owner should apply where the issue was litigated and decided in court in a final decision, or if the issue was decided by a prior examination to which the patent owner acceded.

        Collateral estoppel should also apply to a requester to the extent that the requester was involved in a prior court proceeding where the issue was litigated and decided and the court case is final.

        Collateral estoppel should apply to the PTO in ex parte prosecutions to the extent that the PTO has been party to a prior dispute over the term and the term was given a construction either explicitly or implicitly. Successive examinations or re-examinations should never adopt different instructions from one to another. The present case is an example where the office was held to the prior construction in an earlier examination.

        But of course, the main reason that the office should not try to construe the claims as broadly as possible with respect to issued patents is that this causes real damage to patent owners and every potential infringer knows this and is a main reason they invoke reexaminatons. Construing claims broadly is almost malicious because it is quite unnecessary.

        1. APOTU, regarding later reexams and litigation,

          any claim construction adopted and acceded to by the patent owner should be binding on the patent owner — as a form of disclaimer. If the PO does not concede, ever, then even if the Federal Circuit affirms, he still should have a right to his day in court on this issue.

          Ditto the requestor. If he concedes — disclaimer or waiver should apply. If he does not, he has his right to a day in court.

          Regardless, the issue or proper claim construction ultimate has to be decided by a court, not by the PTO.

          1. APOTU, and if you think that I think the PTO should not have any right to hold a patent invalid or to cancel claims against the will of the patent owner, you got me right. I think the whole reexamination system is unconstitutional and will continue to raise this issue until we get it to the Supreme Court.

            1. “I think the whole reexamination system is unconstitutional and will continue to raise this issue until we get it to the Supreme Court.”

              What would it take to get this issue in front of the Supreme Court?

            2. AAA JJ, regardless that two panels have already decided that a patent is a public right without giving any consideration to the Supreme Court cases that lay out what a public right is and what is not, I think that no Federal Circuit panel will overturn these prior cases, and it is improbable that the Federal Circuit would take the issue en banc, which means that we would have to take the issue up from a summary refusal to reconsider prior panel decisions. The SC has already denied cert. once. Joy Technologies, Inc. v. Manbeck, 959 F.2d 226, 228 (Fed.Cir.), cert. denied, ___ U.S. ___, 113 S.Ct. 90, 121 L.Ed.2d 52 (1992)

              But Stern v. Marshall makes it abundantly clear that Patlex was wrongly decided. Moreover, since Lockwood held, post Joy, that there is a 7th Amendment right to a jury trial for validity, the two issues might now be ripe for review.

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