Federal Circuit: Board Must Explain its Decisions

by Dennis Crouch

In the non-precedential Cutsforth v. MotivePower decision, the Federal Circuit has vacated a PTAB inter partes review (IPR) final decision — holding that “the Board did not adequately describe its reasoning for finding the claims obvious.”

The patent at issue is directed to a brush-assembly used to maintain an electric current with a rotating mechanism. US Patent No. 7,990,018. 

The Federal Circuit requires that the PTAB “articulate articulate its reasoning for making its decision.” See In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002).  Along these lines, the board must explain the factual bases for its findings and must go well beyond “conclusory statements.”  Most PTAB decisions are related to the question of obviousness and the Federal Circuit particularly requires the Board to “explain why a person of ordinary skill in the art would modify the prior art references to create the claimed invention.” See In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000) and In re Rouffet, 149 F.3d 1350 (Fed. Cir. 1998).

Here, the Board apparently recited the challenger’s (MotivePower’s) arguments and the ultimate conclusion of obviousness, but did not “formally” adopt the arguments as its own conclusions. See MotivePower, Inc. v. Cutsforth, Inc., IPR2013-00274.  On appeal, the Federal Circuit rejected this approach. Some key quotes:

The Board’s decision appears to assume this combination is obvious. It offers no explanation for why a person of ordinary skill in the art would adjust Bissett and Kartman to create the claimed mounting block of the ’018 patent. The Board only states that MotivePower argued it was obvious to do so. Merely reciting MotivePower’s argument does not satisfy the Board’s responsibility to explain its own reasoning. The decision must explain why a person of ordinary skill in the art would find it obvious. The Board gives no such explanation. . . .

For claim 5, which requires that the mounting block include a spring, the Board explains that the placement of the spring on the mounting block is simply a design choice. . . . This statement alone is not enough to explain why the Board found claim 5 obvious. Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice to locate the spring on the mounting block. Here, it does not.

On remand, I expect that the Board will simply rewrite its 33-page decision – better explaining its holdings – but we shall see. [PTAB Final Decision: final decision-31].

To be clear, although the PTAB is held to this high standard, patent examiners are not.  Rather, examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation.  Update: I just looked at the comment section and note that a number of folks raise the important point that my off-the-cuff statement an examiner’s notice burden is limited to the introductory rejection and establishing a prima facie case as the Federal Circuit explained in Packard.  Once a prima facie case is established, the patent applicant has the opportunity to rebut that case. And, once rebutted, the examiner’s burden is then raised actually prove the case if possible.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

252 thoughts on “Federal Circuit: Board Must Explain its Decisions

  1. This basically just says that In re Sang Su Lee applies to the Board. Having cited that precedent to the Board myself (albeit in an Appeal, not an IPR), and thus getting a remand to the Examiner to write a new Office Action that actually complied with that decision, I was already pretty sure of that.

    Of course, some may say that In re Sang Su Lee is just a reiteration of Zurko, and there may be some truth to that.

    1. Alun,

      You are correct – within In re Snag Su Lee is this:

      Tribunals of the PTO are governed by the Administrative Procedure Act, and their rulings receive the same judicial deference as do tribunals of other administrative agencies.  D1ckinson v. Zurko, 527 U.S. 150, 119 S.Ct. 1816, 144 L.Ed.2d 143, 50 USPQ2d 1930 (1999).

  2. Boundy: in IPR/PGR/CBMs, throwing in curve ball grounds of rejection in final decisions when the patent owner has no realistic opportunity to rebut

    As if that’s some kind of major systemic problem.

    Does anyone have any idea how often that is happening, on a percentage basis?

    Out-and-out applicant lying and misrepresentation of the law probably exceeds the bona fide “curve balls” tossed by the PTAB by an order of magnitude or two. But I guess that’s something the public just has to live with.

    How many individuals has the PTO banned from participation in the patent system in the last, say, five years?

    1. As if that’s some kind of major systemic problem.

      Does it have to be some kind of major systemic problem?

      If the means are clearly wrong, does the ends desired somehow make it “OK”…?

      (that’s a rhetorical question, by the way)

      1. Court decisions once were fairly clear on separate “findings of fact” and “conclusions of law.” Adopting that paradigm at the examination level would go a long way to finding a resolution.

        Simply reciting references depicting each separate reference with hindsight conclusions on teaching, motivation and suggestion is incomplete. It is not just the elements, it is the arrangement, and that’s what many examiners don’t grasp.

          1. Richard,

            The jab I use at these people who attempt the “logic” that you see as deficient is the Big Box of Protons, Neutrons, and Electrons.

            These elementary particles are not eligible in and of themselves.
            Knowing these particles (and knowing the natural law of how they interact) simply does NOT make ineligible all of the configurations of these elementary particles.

            But what you see is the “logic” of those wanting to use that selfsame “logic” – with hindsight (or with ‘creativity’ [read that as inventive capability]) somehow baked in to PHOSITA.

            103 is NOT a law of “synergy.”
            103 is NOT a law of “could have.”

            1. “anon” Richard, The jab I use at these people who attempt the “logic” that you see as deficient is the Big Box of Protons, Neutrons, and Electrons.

              Richard, “anon” has been jabbing himself in the face for at least five solid years now. By all means feel free to join his “Big Box of Popcorns” chorus. That’ll make two of you (okay, three, if you count Les and his box of “wood, glue and canvas”).

              1. MM Since you want to get personal, it seems you are a bitter, bitter bureaucrat who for some reason can’t accept the law as it is. Justice Douglas hated patents, but loved copyrights probably because he was receiving royalties on his book publications.

                “inventive concept,” “unexpected results,” “synergism?” Nowhere do these criteria appear in statutory law, as far as I know.

        1. RP: Simply reciting references depicting each separate reference with hindsight conclusions on teaching, motivation and suggestion is incomplete.

          So is distinguishing a claimed device/composition from the prior art on the basis of its function.

          Let me know when the PTO starts kicking all that junk to the curb and I’ll start caring about “incomplete” rejections that, in most cases, are infinitely more atriculate and complete than the claimed “innovation” being rejected.

        2. It is not just the elements, it is the arrangement, and that’s what many examiners don’t grasp

          What many applicants don’t grasp is that the “arrangement” isn’t inventive if there aren’t any unexpected results.

          But go ahead and pretend otherwise. Then whine and cry when your junk gets tanked in a predictable fashion.

        3. >Simply reciting references depicting each separate reference with hindsight conclusions on teaching, motivation and suggestion is incomplete. It is not just the elements, it is the arrangement, and that’s what many examiners don’t grasp.

          See, the thing is, I’ve seen so many bad “improper hindsight” arguments from attorneys that I don’t know if you’re actually serious (disclosure: I have a doctorate and research experience in the field I examine in, so I can usually see through the BS pretty quickly).

          The other thing is attorneys often hate KSR-type rejections, and they routinely argue that “there isn’t motivation” even though you’re using one of the explicit rationales.

          I understand there are bad examiners at the PTO, and I understand the frustration they cause. But, based on who I know at the office, there are a lot of really good examiners with a ton of experience in their respective fields. And while I see bad office actions from unskilled examiners, I also see bad amendments that make it clear the attorneys didn’t read the prior art of record used in the grounds of rejection, don’t have even an elementary understanding of the basics of the field of the application. For example I see attorneys deliberately missing things from the prior art or misrepresenting the prior art (i.e. if the prior art gives options X and Y, saying the application doesn’t teach X, but instead teaches Y), wasting the applicants’ time and money.

          I see attorneys cross out the “found” elements of a list of “ors” one by one when it is obvious that they are equivalents (very often obvious over the prior art of record used in the grounds of rejection), wasting the applicants’ time and money.

          I’ve had interviews with attorneys where I’ve said “Listen, your applicant published this NPL two years prior to filing, and the NPL is pretty much your entire specification; I don’t think it makes sense to continue”, and they file an RCE with obvious modifications, wasting the applicants’ time and money.

          For most of the above listed scenarios, I can’t imagine the inventors are the ones wanting to continue/RCE (as opposed to the applicants, maybe under ), because the inventors would know better.

          Honestly, the process would be a whole lot easier and save a ton of money if I dealt with the applicant directly instead of most of the attorneys I’ve dealt with.

          Yes, I understand that “examining is our job”, and wastes the applicants’ time and money when you receive bad examination, but it’s not like we can call up your applicants and tell them to drop you guys for bad prosecution when you’re wasting the inventors/applicants time and money.

          1. patentcat,

            I hear you.

            To the extent that such behavior by the applicants’ representative is not in the interests of the client, your gripe is legitimate.

            I too would agree that there are quality examiners at the Office.

            But when you read the (typical) dross put forth by examiners on these boards, and you deal with the lack of quality examination at the levels that most (I daresay) applicants’ representatives DO deal with, it would appear that the scales are not tipped to what you see, but very much are tipped in the opposite direction.

            Further, when the discussion concerns changes to the law and the aim is to what the Office can (and necessarily conversely, cannot) control, the focus will be – and must be – on the relatively more abundant p00r examination.

            The problems you see are dealt with as a natural result of good examination, and on this side of the fence, clients do have the power of the market to choose their representatives. On the government side of the fence, there is NO such availability of choice.

            Yes, this does create a disparate system, and one that has seen examiner types whine to me about “the unfairness of it all,” but such whining does not, will not, and cannot change the fact that the mechanisms affecting one set of people (applicant’s representative) are different than those affecting another set of people (examiners).

            And lastly, but not as an excuse, do keep in mind that continuing prosecution – or not – is the call of the client – not the call of the representative. Every response is vetted to the client for their approval in one way or another.

            Are there “bad” representatives who may “churn” the client for extra fees? I am certain that there are – like in all professions – people of such nature. But can the response mechanism to such “bad people” be the same for attorneys as for examiners? Clearly, no.

            1. I think a lot of the problems are systemic with how the office is structured, and not just “bad examiners”. Lame responses that put the blame on the examiner don’t help, because examiners have no control over the systemic problems, which, in my opinion, contribute a lot to the problems attorneys complain about.

              Application transfer can be hit or miss; I know I’ve written a few bad actions when I get things that aren’t mine, and the art unit they belong in is not accepting transfers.

              Regardless of how good the examiner is at their own art, you’re going to get poorer quality examination if you’re not giving people cases in the same art area.

              They expect people to be generalists in many areas, which doesn’t work like it may have 20-30 years ago. Transitioning art units to CPC would help.

              For interdisciplinary applications, which are common, they need to have people work together like they do at WIPO, but would fall flat as soon as you group someone who doesn’t care mixed in with someone who does.

              1. There is nothing “lame” about responses that appropriately place the issue on the holder of the issue, patentcat.

                So while you may (and do) have some worthwhile points “about the other side,” such points cannot be used as any type of excuse of the shortcomings on the Office side.

                You just don’t get to not take notice as the providing of such notice is both accurate and meaningful.

                For example, when examiners attempt to make their problems into the problems of applicants, you have crossed the line. It really does not matter whether your problems are “systemic” or not, or as 6 wanted to put it: “too big to handle,” they remain your problems and it is up to you (you know, the notions of responsibility and accountability) to NOT try to shift them to someone else.

                Here you bring up a few more (strictly) internal problems that you should take the responsibility for and have your union make an issue: examining outside of one’s capability in the sense of working on an art field that you are not capable of.

                This lack of capability may arise both within one art field and as you have noted across several art fields, for those (it takes a village type of inventions). Hey – this impetus was only heightened by the Supreme Court in its KSR decision (you know, the jigsaw puzzle effect). Bottom line is that it simply matters not that it “is difficult” (akin to the almost fifty year whine from Malcolm related to the software arts). There is NO excuse – no legitimate excuse – that sounds in “but it’s difficult.”

                You do not have the option of “cherry-picking” only the non-difficult applications to examine. Even those selfsame difficult ones have been agreed to be examined fully and you are the agent of that deal that includes your job of examination.

                1. (…and oh yes, my not-required-but-volunteered ideas to help you with your problem – previously supplied – did include handling cross-art inventions in such a non-uniform-widget group examination mode).

                  You are welcome.

                2. You are not paying attention, patentcat.

                  A “you” problem is yours.

                  I do not need to deal with it, or even complain to the Office. The deal with the Office remains as I have pointed out.

                  I will complain TO you when you attempt to dodge YOUR problem.

                  You need to take ownership of that “you” problem, friend.

                  I appreciate that you have gone to POPA several times – at least you didn’t try the ineffectual “6-why-bother” route. Maybe you need to gather more voices in your dealings with POPA…

                  1. “Maybe you need to gather more voices in your dealings with POPA…”

                    He’s not a leader. And like I said, those that are have more pressing issues to deal with than such matters.

    2. …and in case MaxDrei (or anyone else) needs some irony…

      Out-and-out applicant lying and misrepresentation of the law probably exceeds the bona fide “curve balls” tossed by the PTAB by an order of magnitude or two. But I guess that’s something the public just has to live with.

      but such (by Malcolm) in this ec(h)osystem is celebrated by certain sAmeones that align with the desired Ends….

      “Go figure, Folks”

  3. Boundy: in IPR/PGR/CBMs, throwing in curve ball grounds of rejection in final decisions when the patent owner has no realistic opportunity to rebut/i>

    As if that’s some kind of major systemic problem.

    Does anyone have any idea how often that is happening, on a percentage basis?

    Out-and-out applicant lying and misrepresentation of the law probably exceeds the bona fide “curve balls” tossed by the PTAB by an order of magnitude or two. But I guess that’s something the public just has to live with.

    How many individuals has the PTO banned from participation in the patent system in the last, say, five years?

    1. MM I’m not sure of your point. After a second rejection which typically includes a new reference as an alleged result of the applicant’s amendment, the applicant has an opportunity to respond after final. In fifty years of practice, I’d say the odds of changing the examiner’s mind are one in a hundred. But because that one is so rewarding, should a practitioner forgo that opportunity, lost cause as it is?

    2. Also, maybe times have changed, but I believe that registered patent attorneys, steeped in science and technology are perhaps the most honest and pragmatic of all attorneys. Engineers feel real uncomfortable about lying. When we shift inventorship from inventors to enterprises we invite corruption.

      1. Do you wonder, Richard, why a certain phrase was stripped out of the statue with the AIA (at the same time making “enterprises” more capable of doing away with actual inventors)?

        Do you also wonder, Richard, that it was Mark Lemley advocating for this type of “it takes a village” change to the law?

        Do you wonder, Richard, that it was Ron Katznelson who took Mark Lemley to task for the “logic” that Lemley attempted to use?

  4. “Update: I just looked at the comment section and note that a number of folks raise the important point that my off-the-cuff statement an examiner’s notice burden is limited to the introductory rejection and establishing a prima facie case as the Federal Circuit explained in Packard. Once a prima facie case is established, the patent applicant has the opportunity to rebut that case. And, once rebutted, the examiner’s burden is then raised actually prove the case if possible.”

    The burden of persuasion is on the examiner. Always.

    1. AAA JJ, correct me if I am wrong on this, but is the PTAB bound or not bound by the record established by the examiner?

      This is that due process issue – that if the PTAB believes the examiner is wrong, but that the patent claims are nevertheless unpatentable on alternative theories, they have to remand the case back to the examiner.

      1. …Ned – once again the point that you wish to avoid raises its head.

        At initiation – critically separate from any further merits decision – your granted patent is no longer has its full bundle of sticks of property rights.

        Try (really really try) to grasp the separateness here.

        Once you do that, then you can see that the “normal” activities that the PTAB was accustomed to pre-AIA (and reaching back to the historical roots of being “Super-Examiners“) are – rightly or wrongly – what is in play.

      2. Since you ask about “record before the examiner, ” I assume that question 15.1 is about ex parte appeals (or appeals from inter partes reexams), not IPR/PGR/CBM (which is not the context of the Cutsforth case).

        On ex parte appeals, the PTAB is not bound in any respect by the examiner.

        PTAB can inject new evidence.

        PTAB can raise new grounds of rejection. (That’s not a remand.)

        Many PTAB members believe they can’t inject their own theories of patentability, only unpatentabilty. That view is simply wrong. The PTAB is not an Article III Court of Appeals. The PTAB is an administrative tribunal, and always has authority to act in favor of an applicant in the interest of justice. Administrative law procedural rules are asymmetric–they can almost always be bent in favor of the public, almost never against a party or in favor of the agency.

        MPEP 1200-something says that the only grounds for remand are to request additional information or clarification from the examiner, so that the Board can reach a final decision — remand can’t negate the Board’s obligation under 5 USC § 555(b) to “conclude the matter presented to it.”

        On the other hand, in IPR/PGR/CBMs, throwing in curve ball grounds of rejection in final decisions when the patent owner has no realistic opportunity to rebut (no opportunity to adduce new evidence, etc.) is wrong. It’s way beyond the pale. Basic principles of administrative law due process, constitutional right to notice of issues to be decided….

        1. I think, David, that the PTAB is finding it hard to separate its hats. With ex parte, it has a free hand. With the IPR, it does not.

          But the law on the latter is not well established — at least in the patent office.

          1. It’s well established in the administrative law that applies to all agencies.

            I’ve stated my opinion of the PTO’s basic competence and respect for the rule of law elsewhere. The deviation between the law and PTO practice that you note speaks for itself.

      3. ” but is the PTAB bound or not bound by the record established by the examiner?’

        They elected to voluntarily restrict themselves to the references of record (and presumably anything they’d be willing to take notice of). But they can modify the grounds of rejection using references made of record by the examiner.

        1. “the patent applicant has the opportunity to rebut that case”

          ^when they actually manage to do that.

          Such a rare thing these days. What I see in practice with rejections that originate from me is in the vast majority of times amendments, the occasional claim construction squabble (sometimes hidden) that I’m ultimately going to “win” via the magic of BRI or settlement of language if I so choose, occasional exclusion of references, people “rebutting” a case agin them that wasn’t actually ever made, and people off in la la land talking about something not even close to relevant (happens more than you might think).

          Actual rebuttals of the rejections themselves (factual 102 issues, legal 103 issues etc) that originated with me that I need to substantively address? Very rare. I’m not even sure if I’ve had one this year. Maybe a couple minor ones. But then, I can admit that’s probably not your standard prosecutions.

  5. Thank you for this addendum:

    Update: I just looked at the comment section and note that a number of folks raise the important point that my off-the-cuff statement an examiner’s notice burden is limited to the introductory rejection and establishing a prima facie case as the Federal Circuit explained in Packard. Once a prima facie case is established, the patent applicant has the opportunity to rebut that case. And, once rebutted, the examiner’s burden is then raised actually prove the case if possible.” (emphasis added)

    I chuckle at the likes of 6 – whose job it is to know this, and apparently, does not.

    1. Whereas I chuckle at anon, whose imaginary job it is to know this, but apparently doesn’t realize that his comment is very limited to a very particular case, where a valid rebuttal is actually made. I have seen barely hide nor hair of such a thing over the last few years. The vaaaast majority of things I see are amendments, and the remaining “arguments” are generally nothing but claim construction disputes or claim construction disputes in disguise. The occasional arguments I see that aren’t that noted above are out in la la land talking about something not yet claimed, a designation of parts not even made etc. and aren’t even pertinent to the rejection (this happens more often than you might think, especially with foreign applicants/attorneys). Setting aside technicalities like applicant excluding a reference or something with the new exclusions.

      1. Not sure why you would be chuckling at me – read again my posts (what I actually state).

        There is no error on my part.

        You on the other hand, are now dancing furiously to try to make it appear that only a tiny and inconsequential fraction exists outside of your statements and that that tiny and inconsequential fraction does not puncture your (wrong) statements of examination as a whole – as opposed to merely the first (prima facie) step in the process.

        So while you share a half truth that sometimes the prima facie case is not overcome, or is overcome with other steps, you quite miss the fact that everything that I said was indeed correct, and that your statements were indeed not correct for their (obvious) lack of completeness.

        But please, throw up some meaningless ad hominem and attack the person while what the person says is accurate – be par for the course with your additions to this “ecosystem.”

        1. “are now dancing furiously to try to make it appear that only a tiny and inconsequential fraction exists outside of ”

          That’s just reality bro. At least in my office. I don’t have to make it “appear” that way.

          “that everything that I said was indeed correct”

          Not in this entire thread.

      2. “…where a valid rebuttal is actually made. I have seen barely hide nor hair of such a thing over the last few years. ”

        A rebuttal is merely a showing of facts supporting the opposite conclusion. See Piasecki. So I’m sure you’ve seen many. The fact that you didn’t understand the rebuttal doesn’t mean it wasn’t a rebuttal.

        1. “A rebuttal is merely a showing of facts supporting the opposite conclusion. See Piasecki. ”

          Yeah, and I very rarely see such a thing. In the very very few instances I see of them showing facts supporting the opposite conclusion they’re usually addressing a grounds of rejection not even made, or are relying entirely on a different claim construction (in which case the issue is the claim construction, not the facts they’re spouting about). We can’t really count those as “rebuttals” as they’re not actually a showing of facts that support the opposite conclusion.

          “So I’m sure you’ve seen many.”

          No I can say with a straight face, not really. I don’t even see many fighting the claim construction or addressing a grounds of rejection not even of record.

      3. That speaks to the general deterioration of both the examination branch, and the patent bar. Why, using the same arguments, as in a response (not even in an after final) in the formality of an appeal brief to the board, does the applicant get and allowance of all claims on appeal? Waste of time and client’s money.

        (is everyone in D.C. still snowbound?)

  6. I should like to read comments on the following proposition, found below, at 11.2.1.3.2

    “…. what happens when you get a lazy examiner that just allows all the claims.

    Congrats! You just got your client an invalid patent. Now because you refused to file claims that accurately reflected the scope of the invention, you need to spend your client’s money on a reexam/reissue proceeding to ensure that the patent doesn’t get knocked out in litigation”

    In Europe, for sure, going to issue with claims that are all covetous or over-broad is doing your client no favours at all. But that is because of the nightmare ahead of you, if you want to amend, after the patent issues.

    Is that now the case also, in the USA, I wonder. So is IPR prompting those drafting claims for the USDA to include a nicely graded set of carefully thought-through dependent claims that exhibits a step-wise increasing degree of patentability (by which I mean, of course, non-obviousness) evidenced by a specification which matches each successive enhancement of non-obviousness to a technical effect enhanced in one or other respect? After all, as Paul Cole has said, novelty (a “difference”) isn’t enough to qualify for a patent. What you need is “a difference that makes a difference” ie a technical effect. Claim the difference, and complement it in the specification with a description of what difference the claimed difference makes.

    Or (I suspect more likely) is IPR having no effect at all on claim drafting?

    1. OK, let’s get theoretical for a moment. If you file two patents using the same disclosure and focused on the same subject matter, one with very broad claims and one with claims narrowly tailored to the “invention” (same invention in both), then where should both claims end up for both patents? They should be exactly the same. If they’re not exactly the same, then something is wrong with the patent office and its procedures.

      But that has nothing to do with filing over broad claims, and everything to do with the procedures at the patent office. To say that the claim scope for patents will somehow be better if attorneys, agents, and clients start filing narrower claims simply does not make sense to me, if the patent office actually works as it should. And if it doesn’t work as it should, then don’t blame the attorneys, agents, and clients — blame the patent office.

      1. The PTO is run be human beings. It is unreasonable to expect an office full of thousands of examiners to operate at that level of precision.

        So the attorneys do deserve some blame. They are operating on flawed idealistic assumptions about the capbilities of the office and refuse to adapt accordingly–to the detriment of their clients.

        1. One big Wah from you Ryan.

          Let’s get this straight: you do not want to be held accountable for YOUR job, AND you want to blame the applicants.

          That would be a sweet deal.

            1. Not sure that I agree with you, AAA JJ.

              That is, to do the job right, it is not necessarily easy. I have utmost respect for those examiners who are diligent (and yes, I have been fortunate to have dealt with a few).

              To game the job, to “get by” once entrenched and to avoid accountability, well, unfortunately, such is indeed possible, and yes, I have experienced this type as well.

              But, then to come on to blogs and whinge about things and try to make the internal employee/employer problems into problem of the applicants and their representatives, well, that clearly crosses the line.

              1. “Not sure that I agree with you, AAA JJ.”

                That’s fine. I did it for several years, and it was a piece of cake. From what I’ve seen the past 16+ years, nothing’s changed.

          1. “you do not want to be held accountable for YOUR job”

            What patentbob put in his comment is nowhere in the examiner’s job description. All we technically are required to do is to eval the claims before us and decide allowable or not. Maybe in some candyland version of the office more is required.

                1. Nice mis-characterization 6 – this is NOT an “only anon knows” thing – this is just a “6 does not know” thing.

                  Your ego and propensity to project are slipping through.

      2. Bob can you say more. I’m not following your thinking.

        Suppose you have invented an alloy of Al-Mg-Si that is great for car body panels. Open the Link below, and see all the Al-Mg-Si alloys already registered. You need to look for all the “6000” series alloys in the Aluminum Association’s industry standard Teal Sheets.

        How will you claim your dispersion-hardenable alloy so your claim is allowable? At what level of generality?

        Do you suppose you have no choice, in defining each range, of each alloying element in your “new” alloy?

        Now suppose your competitor in Japan also comes up with an improved 6000 series Al-Mg-Si alloy and files its patent application on the same day. You and your JP competitor are going after the same market so have more or less the same composition, to deliver more or less the same performance enhancements (paint bake response, for example) but the experiments you conducted , and included in your specification, were not identical with theirs in Japan.

        This is the real world. What you envisage (if I understand it right) is not real world so no help to real inventors, patent attorneys or PTO Examiners. Would you like to say more about the deficiencies in the patent granting system that you perceive?

        link to aluminum.org

        link to en.wikipedia.org

        1. MaxDrei,

          I think the hypo “from your own backyard,” has limited ability to make the legal point here.

          At least the point being advanced by PatentBob. Perhaps, though, a different point could be made.

          In such metallurgical arts (crowded as they are), your hypo seems to neglect the possibility that the Japanese invention is in fact nor the same as the claimant’s invention (and not just merely “not identical”).

          I do think that you are addressing the same thing that PatentBob addresses.

          However, we could take you example and explore the “popular” notion of “objective physical structure” if we add a few facets to the hypo.

          For example, let’s add the word “comprising” and let’s pay particular attention to your provided set of ranges of each alloying element.

          These of course provide breadth.

          But – of necessity – that very same breadth forestalls and prevents you from having a single patent on a single “objective physical structure.”

          Should you be forced to file different patent applications for each individual “objective physical structure,” and should the use of “comprising” be allowed (since using that phrase necessarily means that you have not supplied ANY complete objective physical structure)?

          1. THe sentence:

            I do think that you are addressing the same thing that PatentBob addresses.

            should read:

            I do not think that you are addressing the same thing that PatentBob addresses.

            1. You have the advantage on me here, anon. You know what Bob’s “thing” is, what his “point” is, but I don’t. Lucky you.

              Perhaps Bob could help me out here?

          2. “Should you be forced to file different patent applications for each individual “objective physical structure,” and should the use of “comprising” be allowed (since using that phrase necessarily means that you have not supplied ANY complete objective physical structure)?”

            Not if you can find some claims to generic recitations that are allowable over the art of record. That’s how the pros get multi-species in.

            1. And yet again, you quite miss the point here 6 – this one being a jab at the singular “objective physical structure” canard.

              When you want to claim more than one singular structure for your invention you have (gasp) climbed a rung on the ladder of abstraction.

              This directly flies in the face of certain sAmeones here that like to pretend that such an option as mere picture claims to singular “objective physical structure” are somehow de facto the only “real” legal way to claim an invention.

              1. “When you want to claim more than one singular structure for your invention you have (gasp) climbed a rung on the ladder of abstraction.”

                Not necessarily. You could have just used more generalized language to describe something still “on the same level, rung or whatever of abstraction anon is bsing about”. Especially if the “level of abstraction” is pretty much 0 throughout.

                1. Once again 6, your lack of understanding of what the ladders of abstraction are highlights the 1nanity of your posts.

      3. “They should be exactly the same. If they’re not exactly the same, then something is wrong with the patent office and its procedures.”

        Not at all and not at all.

        Some folks would be willing to accept the less broad patent and go about their business. And the people that came in with the less broad claims don’t get a chance to amend to make them broader if it goes straight to allowance without filing a CON etc.

        “To say that the claim scope for patents will somehow be better if attorneys, agents, and clients start filing narrower claims simply does not make sense to me,”

        I tend to think, personally, that merely being a shade more precise in how things are being said in the claim already under a broad drafting usually makes all the difference in my art.

        “To say that the claim scope for patents will somehow be better if attorneys, agents, and clients start filing narrower claims simply does not make sense to me, if the patent office actually works as it should. And if it doesn’t work as it should, then don’t blame the attorneys, agents, and clients — blame the patent office.”

        That’s ridiculous, the patent office isn’t magic. We could, in theory, improve what we give people in terms of patents by requiring examiners to present to the applicants the broadest manner of drafting they’d feel comfortable allowing that is somewhat near what the applicant appears to be attempting to claim. But even that would be hit and miss. Because again, the PTO is not magic. And that’s kind of against the spirit of the law requiring the applicant to claim his invention.

        1. Some folks would be willing to accept the less broad patent and go about their business. And the people that came in with the less broad claims don’t get a chance to amend to make them broader if it goes straight to allowance without filing a CON etc.

          This is true – to a point.

          I have previously shared that one tactic (among several optional tactics) is to start with the lowest possible hanging fruit of such a “picture claim,” – in order to obtain a grant – and then continue to develop the full legitimate scope of protection that an invention deserves.

          There are external factors that can be considered for the vantage point of the client that would make this optional path the better one to take.

          But I don’t think that such tactical moves were what PatentBob was getting at. Instead, I think that a premise of his (albeit unstated) was that at the end of the day, the applicant would obtain the proper and full scope of protection. Read again his post with this premise in mind to better understand what he is saying.

          So while it is true that picture claims will obtain protection, it is also true that for well over 95% of inventions, such picture claim protections come up short when it comes to protecting what was actually invented. This is exactly why the ladders of abstraction are used in nearly ALL art fields.

          You see, the logic in your own argument of “the PTO is not magic” applies equally to the applicants. That is why there is a back and forth. That is part of your task is to know and provide that state of the art that will constrain the claims. While in a small number of case it might be true that the applicant has the best knowledge of the state of the art and can draw his claims with the best precision, such is simply NOT a part of the patent system – and cannot be so – on the global basis. This is one of the reasons why Tafas prevailed. Your version of “spirit of the law” has been shown to be incorrect. Your version wants the applicant to be the magician and wants the applicant to be a type of self-examiner. Your version wants to offload an admittedly difficult part of examination. You don’t have to like that part of your task – but you do have to realize that it is a part of your task.

          1. Interesting, but topsy turvy. For administrative efficiency, shouldn’t a practitioner go with the broadest claim first, with multiple dependent claims, ending up with a “picture claim?” Even offering the “picture claim” is a submission, often granted, but with limited protectability.

            1. Richard, one needs to claim the invention as broadly as possible on initial filing, and retreat slowly in the face of prior art. But that does not mean that one should not include in the initial filing picture claims, and take those claims when they are initially allowed. The good practitioner files a continuation on the non-allowed claims and continues the argument.

              1. Ned,

                You are wrong.

                Sorry, but your thinking here is the thinking of a dinosaur, lacking agility. When was the last time you were actively engaged in prosecution?

                That one size simply does NOT meet the diversity of client needs, and you really need to be aware of optional tactics.

                Another aspect in your approach can be a messier written record. there are times where a quick first strike with a clean written record is much more preferable.

            2. Richard,

              This does at first glance appear to be topsy turvy.

              But that is only because it is a tactic different than the norm.

              My point is that there are occasions and for certain client needs, that a quick granted patent – even one with a known lack of full deserved coverage, is preferable to a longer “fight” to that first grant.

              Make no mistake, this tactic does include filing continuations and a well written initial application that supports the continuations.

              1. Unless your client list is all big companies that can afford not only the extended prosecution time of continuations (which was good practice when the parent patent was going to trial), but the expense for small companies and individuals to afford multiple maintenance fees on multiple issued patents for essentially the same invention.

                Let’s not even get to the issue of examiner election practice, which for a while seemed to be a business plan to enhance maintenance fees. Europe was always a patent forfeiture system by policy, now it seems, the US as adopted this policy system.

                1. Let’s not even get to the issue of examiner election practice,

                  Did you catch the excellent posts by David Boundy on that topic?

                2. Richard, if the client wants a patent to protect the invention/inventions properly, the use of continuations is the best route.

                  If they only need the patent to add to a large pile — well, even then, continuations do add to the numbers while keeping average cost down – good for the boss to the inside counsel.

                  But the small firm has no money, maybe they have no recourse but to accept what the examiner gives them in the first prosecution.

        2. What is particularly frustrating for a practitioner/litigator is when the examiner and the applicant reach a mutual understanding about the scope of a term in a back and forth, yet a district court judge ignores that understanding and resorts to an extrinsic meaning to allow an infringer to escape from its infringement.

            1. Rationally, it would be reversible error. However, the risks involved in an appeal for a small company can be high.

              In the parallel universe of employment discrimination, Ellen Pao, did not appeal because of the risk of substantial court costs Kleiner Perkins incurred. Given the inconsistent behavior of the CAFC, being correct is no guarantee of a reversal.

              1. Richard, the CAFC is somewhat predictable: they view a result they want to achieve and then justify it.

                Viewed in that light, I think the Feds are on an intrinsic evidence over extrinsic evidence crusade. You are going to win on appeal unless your patent is one of “those.”

                1. You’ve got to know when to hold ’em and when to fold ’em. It’s basic risk analysis. I’m disappointed, not bitter, to see where the IP system is heading.

                  Branding (trademarks), copyrights, and now trade secret law is the path to follow, not patents. So sad, too bad. My career is about over, but I do have more time to kvetch.

                  Our legislators have even less of a clue. Front page article in the SF Chronicle, “Firms team up to battle suits by patent trolls.” Has anybody looked at the anti-trust implications of such combinations?

                  1. has anyone looked

                    I’m still waiting for anyone to look at the bogus “Tr011” scare foisted by the White House.

                    But hey, Ron did share that the OMB will be a next stop.

                2. Richard, the USSC is somewhat predictable: they view a result they want to achieve and then justify it.

                  Fixed it for you Ned – and it does not go unnoticed that once again your predilection for “6-is-a-genius-because-he-believes-in-what-I-believe” infests your penchant for dissing the CAFC and ig noring exactly whom is training them.

  7. The Fed. Cir. reviews PTO BOARD decisions, under the APA, which is the subject here, not examiner decisions. And of course in IPRs there are never any examiner decisions below to begin with.
    Judging from the amount of heated comments here on an off-topic issue, too many patent people must still be snowbound?

    1. That is the general topic, for sure. But the concluding remark of the article was:

      “To be clear, although the PTAB is held to this high standard, patent examiners are not. Rather, examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation.”

      1. That statement is more right than wrong:

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

        IN RE EDWARD K. Y. JUNG and LOWELL L. WOOD, JR., 2010-1019, pages 11-12, from the CAFC (Sorry, don’t have another citation to this).

          1. PatentBob: “That statement is more right than wrong”

            Inasmuch as it argues that there is a difference between the burden of persuasion to explain the rejection placed on the examiner and the Board respectively, the statement is wrong. The Jung & Wood cite is inoposite on this matter and it definitely does not negate the examiner’s requirement to provide the reasoning which the Federal Circuit required of the Board here in this Cutsforth decision.

            1. Ron, I was only commenting on ” examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation”. Otherwise, I can’t comment.

              1. PatentBob,

                Any number of posts on this thread show that your view here is just too narrow (apparently you only want to capture the initial prima facia portion – and not complete (as is required) examination.

        1. Note what Jung argued for and the Federal Circuit rejected —
          — an on-the-record construction of every term
          — explain every possible difference

          What was not argued by Jung was the APA notice standard — which requires taht the examiner discuss every material point underlying the rejection — for § 102/§ 103, an element-by-element comparison of the claim to the reference, with an explanation of any “surprising” and material claim construction. The APA imposes a somewhat higher obligation than § 132, and Jung just plain surrendered his high ground.

          1. David, the APA imposes a somewhat higher obligation than §132…

            It would seem to me that the APA cannot control over a more particular statute that applies directly to patent law examination

            1. Ned,

              Take your statement of

              It would seem to me that the APA cannot control over a more particular statute that applies directly to patent law examination

              and compare it to the case provided by Alun:

              Tribunals of the PTO are governed by the Administrative Procedure Act, and their rulings receive the same judicial deference as do tribunals of other administrative agencies.”  

              In re Sang-Su Lee citing D1ckinson v. Zurko, 527 U.S. 150, 119 S.Ct. 1816, 144 L.Ed.2d 143, 50 USPQ2d 1930 (1999).

    2. Paul, in an ordinary prosecution, the PTAB is bound by the “record” — the reasoning and findings of the examiner. The review is of whether the examiner is correct – whether the examiner proved the claims unpatentable under the grounds alleged. If the PTAB thinks the claims are unpatentable, but on different grounds/evidence/reasons, the PTAB must remand back for further proceedings consistent with due process.

      Take the IPR. It effectively substitutes the petitioner for the examiner. The question the PTAB must answer is whether the petitioner, like the examiner, proved its case by a preponderance of evidence. If the PTAB thinks the claims are unpatentable, but on different grounds/evidence/reasons, the PTAB must remand back for further proceedings for due process purposes … but there are no further proceedings.

      So what the PTAB has been doing is deciding the case on grounds/evidence/arguments not produced by the petitioner but based upon its own independent review. Because there is no remand, the patent owner does not have an opportunity to respond to the new findings of the PTAB.

      This is what many patent owners are complaining about.

      1. Ned, a party in an IPR does have the right to request reconsideration of the Board IPR decision, although admittedly that is rarely successful. But IPR APJs cannot introduce any new art or evidence not presented by the petitioner or admitted in cross-examination of declarants in the APJ trial. Also, just as in an ex parte Board decision the APJs can read and cite from what the presented claims and prior art and declarations say in their opinions. But if they are wrong about that or about claim scope they can be reversed by the Fed. Cir.
        But yes, to the limited extent that there is no remand opportunity from the Board back to an examiner, you seem to have presented a VALID disadvantage of IPRs here. [One that is not based on incorrect statistics or inapplicable old Sup. Ct. cases. ]

        1. Paul, the reason that the PTAB must remand back to the examiner new grounds of rejection is to provide administrative due process to the patent applicant. I would think that if the PTAB formulates a new ground of rejection, a new theory of unpatentability, not presented by the petitioner, and for which the patent owner never had a full and fair opportunity to present evidence and argument in response, that the patent owner is being denied due process.

          This is why many patent owners are plainly upset with the PTAB coming up with its own theories about why the claims are unpatentable and presenting them for the first time in a final written decision without the opportunity by the patent owner to respond in sufficient fashion by presenting evidence, and argument, etc. When the PTAB does this, it becomes a prosecutor, not a judge. This might be acceptable practice when there is an examiner and further prosecution can take place. But is not acceptable if the procedures do not allow for the prosecution to take place.

          Why do you think so many are upset with the Federal Circuit when they do essentially the same thing – finding facts at the appellate level and not presenting the patent owner any opportunity to respond. At some point in time the en banc Federal Circuit is going to have to put a stop to the practice.

      2. Ned: Because there is no remand, the patent owner does not have an opportunity to respond to the new findings of the PTAB.

        If the patentee thinks it would make a difference, then appeal to the CAFC.

        The fact is that in nearly every case it doesn’t make a difference: the patent is invalid and the patentee’s arguments are predicated on made-up bal0ney.

        We all know the game: appeal! appeal! appeal! It doesn’t matter to the typical patentee who is so drunk on its own kool-aid that it can’t even wrap its head around the sunk cost fallacy. Find some procedural nit to pick at — any procedural nit — and try to make a Constitutional case out of it. The oral arguments at the CAFC are filled with that silliness. At the end of the day it comes out in the wash with a simple tagline: “we have considered the other arguments and they are without merit.”

  8. “To be clear, although the PTAB is held to this high standard, patent examiners are not. Rather, examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation”

    Ha…hahaha….BWHAHAHAHAHAHAHAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHA…….inhales…AHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHAAHAAHHAHAHAHA…..ha…whooo

    You’re….you’re serious? What planet do you live on Crouch? If anything the Examiners are the ONLY ones in the field who give any reasoning whatsoever.

    So to be clear, what you ACTAULLY meant to say was “Examiners are technically not required to give their reasoning for 102 rejections…PROVIDED all the elements are in the reference cited”. Which means, in practice, that the Examiners have to still explain how the reference reads on the claims or else people like anon will throw a hissy fit about their precious software patents.

    Seriously Crouch, it’s statements like yours that contribute to the decreasing quality of patent applications and responses by the “outside stakeholders”. You want to increase patent quality? Increase patent application quality.

    Besides, the Court made the right decision here. Many an Examiner has received a negative decision from PTAB only to look at the reasoning as “overturned” and nothing else. Perhaps the PTAB can now appreciate the taste of the, long overdue, application of their own medicine.

    As they say, the sting of truth has no salve.

    1. How would increasing patent application quality increase quality in patents that are being issued? And what does it mean to increase patent application “quality”?

      By the way, I think anytime the Examiner issues a 102 rejection without reasoning, no matter what the field, a patent practitioner is going to have an issue with that.

      1. “And what does it mean to increase patent application “quality”?”

        Well, Bob, let me answer that question with another question: Is “A light emitting module emitting electro-magnetic radiation within a predetermined wavelength range” as an independent claim, a “quality” claim in a “quality” application?

        Or maybe, juuuussstttt maybe, might that claim waste the Office’s time and be a claim that lacks “quality”?

        What’s good for the goose is good for the gander. And yes, that is a legit claim.

                1. That is a very broad definition of relevant.

                  Again, Tafas dealt with substantive rule making at the PTO. What does that have to do with “what the PTO is allowed to focus on”?

                  It doesn’t follow that because the PTO cannot make substatinve rules, that it can’t focus on substantive patent law.

                  1. You want to claim “broad” on those two very-near dots that you don’t want ot connect?

                    The ‘what to do” is unmistakably clear. Why the H would you focus on something outside of your control?

                    Do you even understand WHY the Office had its hands smacked in Tafas?

                    Think, son – T H I N K.

        1. Well, you should easily be able to find a reference against that.

          If the claims were narrower to begin with, how would that improve quality of the patents being issued from the Patent Office?

          Those seem like two different concepts: claim scope/”quality” of patents being sent to the patent office and claim scope/”quality” of patents being issued by the patent office.

          In your example, I see no reason why you would issue a patent based on that application (and I gather, neither do you).

          1. This is pure sophistry. If all applicants submit non-obvious claims, only non-obvious claims will be issued. If applicants submit overly broad claims, at least some overly broad claims will be issued.

            Yes. It’s your right to play the game as such. But we all know that this game reduces patent quality. Don’t play dumb.

          2. Bob. Your logic is pervasive among patent practitioners. It is also faulty.

            There are harms associated with filing overbroad claims even if it is “easy to find art”

            For one, these applications clog up the system and take away time from the examination of applications with more merit.

            Second, broad claims are more likely to be allowed incorrectly. If the applicant beats the examiner down with enough RCEs, the examiner will eventually just allow the case to get it off the docket.

            Finally, what happens when you get a lazy examiner that just allows all the claims.

            Congrats! You just got your client an invalid patent. Now because you refused to file claims that accurately reflected the scope of the invention, you need to spend your client’s money on a reexam/reissue proceeding to ensure that the patent doesn’t get knocked out in litigation

            1. “Second, broad claims are more likely to be allowed incorrectly.”

              Why?

              “If the applicant beats the examiner down with enough RCEs, the examiner will eventually just allow the case to get it off the docket.”

              Ah, the old “wearing down the examiner” fallacy. Talk about your zombie theories.

              “Finally, what happens when you get a lazy examiner that just allows all the claims.”

              Why is that examiner still employed?

            2. Ryan, I haven’t heard of put this way before, but I agree with you.

              I think that what we are talking about here is disclosing an island and claiming a continent. This idea of entitlement to a broad scope of anything that achieves a result based upon a disclosure of one example is what is causing a significant problem in the patent office, and in the patent system in general. Even if the claim is novel over the prior art, is not enabled for its full scope and is inherently indefinite to the extent that it covers in court only the island disclosed and equivalents.

            3. I never said I wrote claims like that. But shouldn’t the patent office be doing the job of finding art against such broad claims? Isn’t that what they do, what their job description is? And I don’t see the logical leap from filing initial claims that are less broad (more narrow) to increasing the quality of issued patents. The quality of issued patents (in terms of claim scope) shouldn’t change one iota whether claims are broadly written or more focused on whatever the “real” invention is. And if it does, then the PTO should be asking itself why and how to change that.

          3. Correct, there is no reason to issue said patent. The problem that you run into is 1) that you forget that that one patent isn’t the only one being examined (time wasted on that garbage app is time not spent on a less garbage one)

            And 2) more importantly, and this gets to the kernel of the issue, is that the “outside stakeholders” still want that claim to be rejected over the best prior art, NOT, as you put it “easily found references”. So the Examiners have to waste time going into the spec and finding out what the applicant really wants to get a patent on, which is, and this is what I find infinitely more interesting, akin to not only examining the application, but also prosecuting it.

            And yes, the Examiners do because the Office has kowtowed so far over to the “outside stakeholders” and so far away from the law/policy that it refuses to make the applicants actually earn a patent. So we might as well be a registration office we’ve been nerfed so much.

            As for claim scope/quality. You forget that the applicant has to sign an oath saying that at the time the invention was made they, as one of ordinary skill in the art, honestly believed they were the first to invent the invention AS CLAIMED. I’m at a loss as to why the Office removed the Examiner’s ability to hold the applicants to that oath….

            ….oh, wait….no I’m not, see above.

                1. Davis,

                  Your own writing here is an example of that which you seek to accuse.

                  Further, your accusation misses the mark.

                  What exactly is it that an applicant must do to “earn a patent?’ – In your mind? – such that you are seemingly implying that YOU are the one “prosecuting” rather than examining?

                  You are aware – or should be – that your job of examining INCLUDES looking at what else might be claimed, right? You are tasked to exam the entire application and NOT just the original claims, eh?

                  Your “writing style” here emulates the F A I L of AccuseOthersOfThatWhichMalcolmDoes. Such a style does not work for Malcolm – why in the world would you think that it would work for you?

        2. that claim waste the Office’s time

          No such thing – that claim is EASY to dispose of and actually should net the Office a positive cash flow.

          Your baseline assumptions are off, Davis.

              1. Yes. But the office still serves the public as part of the US government.

                It is corrupt for the agency to make decisions based on what raises revenue for the agency. It is a conflict of interest.

          1. Oh, I’m sorry anon, I thought we were talking about “compact prosecution”, “effective use of office resources”, or whatever else catch phrase the C-suite deems it necessary to use.

            See, the problem with people like you is you’re incapable of realizing your own role in the problems at the office.

            Yes, there are claims that waste the office’s time…or do you think an application to “godly powers” is a completely justifiable use of office recourse? Spoiler: If “no” is the answer then you’re going to have to seriously reconsider how you phrase what you actually mean. If “yes” is the answer then you’re just as guilty a party as the next person.

            Spoiler part2: You’re NOT paid to file garbage to the office and complain about the backlog, compact prosecution, etc… either. Or do you really think every argument/app you submit to the office is valid (and not in the presumption of validity way)? A continuing to evolve fantasy of mine that DOESN’T involve your kin is that one of your cases gets COPA’ed to me. Then you’d really know what it means to work for a living. The number of 112 2nds I’d hit you with would have your managing partner seriously reconsidering whether the amount of rain you bring to the firm justifies the exploding malpractice premiums your work is causing.

            So, in conclusion anon, unless you’ve got the stones to post some of your “work” here, I’d suggest you keep it down or else someone is going to notice you; and not in the way you wanted Debbie to when you were in 10th grade. And no, that doesn’t apply equally to me because I’m not the one pretending I’m the prosecution guru.

            1. See, the problem with people like you is you’re incapable of realizing your own role in the problems at the office.

              LOL – golf clap indeed.

              There is no such thing as “wasted time” as each applicant has PAID for their examination.

              THAT is reality.

            2. unless you’ve got the stones to post some of your “work” here, I’d suggest you keep it down

              LOL – the old “out yourself” ploy.

              Coming from someone who himself remains a mystery – quite the laugh.

              FURTHER, my identity is quite apart from the truth of my points. I need NOT share it – and yet the world STILL moves.

              1. “There is no such thing as “wasted time” as each applicant has PAID for their examination.
                THAT is reality.”

                -True. But then please stop complaining about the backlog or time to examine. If you think “paying for something” = “getting everything you want” then you’re just not living in reality.

                “This is meaningless coming from you.”

                -And also from you seeing that your main method of “doing your job” is demanding that the Office do more of it for you.

                “LOL – the old “out yourself” ploy.
                Coming from someone who himself remains a mystery – quite the laugh.
                FURTHER, my identity is quite apart from the truth of my points. I need NOT share it – and yet the world STILL moves.”

                -Maybe, then again, I’m not the one holding myself up to be a legal genius. Perhaps if you were the intellectual giant you hold yourself out to be you’d be 1 of 9 instead of 1 of 73,000+.

                So, please, spare us your righteous condemnation if you’re not going to have the common decency to back it up with more than bold text and sarcasm.

                1. Davis,

                  Stop with the strawman – as I have said all along, what I am pointing out is the fallacy of the error of conflating the measure of the task with the task itself.

                  There is NOTHING wrong with wanting better examination – more complete, more on point, and more in accord with what the result of your job should be.

                  Somehwo, you think that my wanting this forcloses <I.your wanting to shift YOUR problem onto me and my cllients.

                  That is just pure B$.

                  And THAT is the point that I am making. Put away all of the diversionary strawman arguments that YOU are bringing up and FOCUS on what I actually stated.

                  As to identity – there is NO “maybe.” As I have stated, what I say is the reality – not because I am the one stating it – but I AM stating it because it is – independently – the way it is. You need to put your focus – not on me as you seem to desire – but on what I say.

                  So no, there is no call for me to “spare my righteous condemnation” precisely because 1) I am correct and 2) your misattempt to invoke some “common decency” plank is just not appropriate.

                  The bold text and sarcasm is indeed extra – but you have not come to grips even with the basics.

                  1. (…you might be surprised at how the sarcasm and “bold text” abate if you did your part and simply resolve the “what” of what I am saying and not try to “spin” your way out of the reality that I present – you know, if you paid attention to the actual substantive points here)

      2. “By the way, I think anytime the Examiner issues a 102 rejection without reasoning, no matter what the field, a patent practitioner is going to have an issue with that.”

        That depends on whether or not the reference truly anticipates or not.

  9. Dennis: ”To be clear, although the PTAB is held to this high standard, patent examiners are not. Rather, examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation.”

    Dennis, for everybody’s sake, I hope your examiner readers do not follow this guidance and I hope you will acknowledge this error.

    First, under what logic would an agency’s independent administrative appellate tribunal bear a higher standard of explaining the agency officials’ decision than that borne by the officials themselves?

    Second, examiners’ office actions are agency actions under the APA, and as such, under 5 U.S.C. § 555(e), the examiner must “articulate a satisfactory explanation for [his] action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983).

    Thirdly, the examiner’s burden to give specific reasons for the rejection are also found in the Patent Act at 35 U.S.C. § 132. (“Whenever, on examination, any claim for a patent is rejected … the Director shall notify the applicant thereof, stating the reasons for such rejection … together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application.”). Thus, the Federal Circuit explained that: “The examiner cannot sit mum, leaving the applicant to shoot arrows into the dark hoping to somehow hit a secret objection harbored by the examiner. The ‘prima facie case’ notion, the exact origin of which appears obscure, seemingly was intended to leave no doubt among examiners that they must state clearly and specifically any objections (the prima facie case) to patentability, and give the applicant fair opportunity to meet those objections with evidence and argument. To that extent the concept serves to level the playing field and reduces the likelihood of administrative arbitrariness.” In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring, citations omitted). “Specifically, when obviousness is at issue, the examiner has the burden of persuasion and therefore the initial burden of production. Satisfying the burden of production, and thus initially the burden of persuasion, constitutes the so-called prima facie showing.” Id. (My emphasis).

    Finally, it is clear that if, as Dennis states, the “examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation,” this mere notice cannot be a basis for meeting the burden of persuasion. Indeed, the MPEP § 706.02(j) requires the examiner to provide “an explanation as to why the claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made.,” and “present a convincing line of reasoning as to why the artisan would have found the claimed invention to have been obvious in light of the teachings of the references.” Citing Ex parte Clapp, 227 USPQ 972, 973 (BPAI. 1985). (My emphasis).

    1. Ron,

      A bit OT, but I was curious as to your next step(s) with the attempted “Tr011” clarification from the Executive branch.

  10. Dennis reminds us that:

    Federal Circuit particularly requires the Board to “explain why a person of ordinary skill in the art would modify the prior art references to create the claimed invention.”

    in which for me the operative word is “would”.

    Or, as the established 103 caselaw of the EPO since 1978 has it:

    “not just “could” but “would”.

    This we can contrast with the lame and frustrating wording of a typical Office Action in Japan, that:

    “the PHOSITA could easily have combined” and so the claimed subject mater is deemed to be obvious.

    This facile “deemed to be” though. Is it not intensely frustrating? Does it not indeed bring the administrative authority into disrepute? If the judiciary succumbs to it, that’s even worse, isn’t it? Well done the Federal Circuit, with its reprimand and command, that the least the Board can do is to support its conclusions with decent reasoning.

    For the life of me, I cannot see what is so difficult about coming up with plausible reasoning, good enough to resist a “clear error” test for reversal on appeal. I hope that this reminder ought to be more than enough to eliminate forthweith all future Board decisions in which conclusory wording on 103 is unsupported by plausible reasoning. I like to think that the Boards know that much anyway, and that the shoddy drafting of this particular decision is atypical, and slipped through unnoticed.

    1. An interesting question:

      Does it not indeed bring the administrative authority into disrepute?

      A (perhaps) better one: Who cares?

      I do not ask to be flippant, but rather, I ask because soooo many on these boards seem to “partake” in that very self-same confusion and think that the US system is also a “could have” system. To this end, I tend to think the decision less one of “written shoddy” and more one of simply becoming wrapped up in the “evolving” zeitgeist.

      I would also note that this “would/could” confusion is attributable to the patent profanity created by our highest Court in their attempt to hold onto common law power of setting the term “invention” in the post-1952 world – Ned attributes this to the Deere case, and which case DOES include dicta from the Court as being the first major case post-1952 in which the Court had the opportunity to claw back power that was removed from it.

    2. Max, the PTAB is definitely overloaded with the considerably more than a thousand IPRs it is required to make final decisions on, all in only one year. But since remands of IPR decisions by the Fed. Cir., as here, have been extremely rare, this remand will certainly be noted well by the PTAB, and by the 3 APJs involved in this IPR particular. The Fed. Cir. itself may be getting a bit testy about the number of IPR appeals it now has to decide, even though it will be saving them some appeals from D.C. lawsuits some successful IPRs are eliminating.

      Since this is an inter partes proceeding, what the IPR petitioner [versus the patent owner] will be allowed to do on remand is an interesting question?

  11. The real significance of this Fed. Cir. decision is that out of the many appeals to the Fed. Cir. of IPR Board decisions, this is the first one I have heard of to find inadequate support for an IPR 103 claim rejection* and to remand to the Board [much less to actually reverse an IPR 103 decision]. Does anyone know of any other? Even non-precedential, as here?

    *Not to be confused with the [3 or 4?] Fed. Cir. remands for an new claim BRI.

    1. P.S. I find it shocking that this Fed. Cir. panel failed to even cite the controlling Sup. Ct. 6/10/99 Zurko decision on the proper, APA, test for Fed. Cir. review of PTO Board fact findings.

      1. Zurko applies to findings of examiners in administrative proceedings. What the PTAB does is find facts itself based upon preponderance of evidence. This legal standard is imposed by statute. A review of the findings of the PTAB is therefore whether the board was correct in finding that the petitioner prevailed based upon a preponderance of evidence. This is by statute.

        1. Ned, where does Zurko say that it does not apply Fed. Cir. appeals from the Board when that part of the PTO doing the fact-finding ?
          Also, is that not inconsistent with an earlier argument of yours that its application to the Board is a significant disadvantage in overturning Board fact-findings?

          1. Paul, it doesn’t. But the statute requires the petitioner to prove with a preponderance of evidence. The Board is not entitled to review the evidence itself and come up with its own view. That is not the role of any court.

            The issue is whether the petition proved its case.

            This is very much like Cuozzo where the board instituted trial on grounds it thought proper where the statute is specific that it cannot do that.

            1. While I agree with you, Ned. I also think you are both talking past each other.

              One is a question of fact finding – the other is a conclusion of law (sufficient evidence to prove with a preponderance).

              The PTAB must find some facts (as a Court must do when it sits as a jury or makes equitable decisions) and it must determine that the facts found are sufficient.

              I agree that there is a difference between institution and a final decision – but not much.

              1. I agree that there is a difference between institution and a final decision – but not much.

                I can (and have) point to at least one critical difference – having to do with constitutional protections of property rights.

                😉

            2. I hardly know how to respond to the incredible statement that neither the Board in an IPR or any court is ever “entitled to review the evidence itself and come up with its own view.” Also you are confusing the Boards IPR statutory requirements for its function with the Federal Circuits review requirements on appeals therefrom, which is the subject here.

              An article by Ken Adamo and some other experts that is specifically on the IPR notes, inter alia, that: “In Dickerson v. Zurko .. the U.S. Supreme Court held—because the PTAB is an administrative agency—that the APA mandates that the PTAB’s factual findings be given deference unless those findings are unsupported by substantial evidence, or are arbitrary and capricious. 23”

            3. The issue is whether the petition proved its case.

              ONLY if you think that the patent, once back in the Office, remains fully a U.S. patent with ALL of the sticks in the bundle of property rights intact.

              We both know that such is just not the case, Ned.

              And yet, your refuse to acknowledge both this point, and the necessary implications of this point.

              To that end, your “position” remains flawed (albeit, a flaw that is relatively easy to correct).

  12. “A court must ask whether the improvement is more than the predictable use of prio-art elements according to their extablished functions…. To determine whether there was an apparent reason to combine the known elements in a way a patent claims, it will often be necessary to look to interrelated teachings of multiple patents; to the effects of demands known to the design community or present in the marketplace; and to the background knowledge possessed by a person having ordinary skill in the art. To facilitate review, this analysis should be made explicit.” KSR 82 USPQ 1389

    I guess if the courts must make this analysis explicit, there is no reason why the examining branch shouldn’t make this analysis explicit. I can understand “teaching” and “suggestion,” but “motivation?” Never understood that. Necessity is the mother of invention. Motivation is inherent. Otherwise only frivolous patents are valid. I can understand “common sense,” but many of the new criteria are hindsight evaluations that occur long after an application has been filed.

    1. There is no law now. The idea is the judge can look at it and decide on their own. It is part of the bigger picture in the US of cowing us all. You can’t go into court demanding your rights, you have to go into court begging the lord judge not to execute you.
      There are so many laws on the books that almost everyone breaks the law many times each year. Alice is an equity test.

      Your observation about motivation is exactly right. I get OA with statements like motivated because it makes the circuit more efficient. Just keeps getting worse and with the Google judges (after O’Malley and before Bob’s sister), it is hard to imagine it getting better.

    2. Richard, assume two references are to pieces of known technology are in the same field. Their combination has no synergy – each piece of known technology performs it same function in the combination.

      I do not think we have to go any further and prove motivation. Do you agree or disagree?

      1. Ned,

        I do not think that your counter point here is directed to what Richard is talking about.

        Do you recognize the “trap” that Richard is pointing out?

        In essence, this aligns with the desired Ends of having a”Flash of Genius” type of system and making it so that only those things that are either worthy of a Nobel prize (Flash) or are completely accidentally stumbled upon can possibly merit a patent.

        This too goes to the problem of taking a Person of Ordinary Skill In The Art and imbuing that person with creative and inventive capabilities. When you do that, you necessarily invoke that “Flash of Genius” aspect because it is only then in “Genius” that rises above the unspecified “normal inventiveness” that now judges can pick out of the aether.

        That said, your point (not really a counter point, but a point for a different discussion) is indeed a valid one and can be seen to be “reasonable” with PHOSITAs without any sense of “normal inventiveness.”

      2. I think every practitioner is aware of the difference between aggregation and a new combination that advances the art and teaches something new. The new combination may not be patentable, but it has the potential of being arguably non-obvious on critical analysis.

        Typically, prior art patents at least represented disclosures of those skilled in the art. Once out, that is the foundation on which to build new contributions. Now with the world wide web, a new world of potential prior art is available. At one time even foreign patents were not accorded the same degree or weight as an issued U.S. patent. Now it is wide open.

        I’m not saying it is wrong, but the deck is stacked against the patentee/inventor. Courts on early summary judgment are now engaged in claim construction and adding terms that are not in the literal claim language to allow literal infringers to avoid infringement. It is a sign of the times.

        1. Richard, if the claim term is functional at all in that it does not state known structure, there is no alternative but to construe the claim term to cover the corresponding structure described in the specification or else the claim term is indefinite.

          1. Doctrine of equivalents is virtually dead. Functional? Is “handle” functional or structural. So many of our “structural” terms are inherently functional.

            Look at the garbage applications that attempt to include so many “equivalents” in the specification that being clear and concise is a lost art.

      3. Ned by your logic a pump would be obvious. Each valve is just performing its own function. It sounds like you want a new witch word–synergy. Come to us oh patent applicant and prove a synergy or we will not grant you a patent or we will invalidate all your claims. Abstract, synergy, pornography.

        Fact is that each element can perform its function but the function the device performs is new. A pump is an invention like that.

        And, Ned, why do you get on here and constantly spout the same nonsense over and over and over again.

          1. Now if you stated “air,” then it would be as obvious as the politicians running for the presidential election. But, don’t forget the words of Judge Learned Hand in the classic case, B.G. Corp. v. Walter Riddle & Co., 79 F.2d 20,22 (2d Cir. 1935:

            All machines are made up of the same elements: rods, pawls, pitmans, journals, toggles, gears, cams, and the like, all acting their parts as they always do and always must. All compositions are made of the same substances, retaining their fixed chemical properties. But the elements are capable of an infinity of permutations and the selection of that group which proves serviceable to a given need may require a high degree of originality. It is that act of selection which is the invention….

            1. LOL – that sounds quite a bit like my Big Box of protons, neutrons, and electrons.

              So it is not the protons, neutrons, and electrons themselves you want to “claim”but rather the configurations of said items….

              But what does Hand know?

              /off sardonic bemusement

    3. Richard, I agree. The motivation element can be as broad as to improve the known device. It is always there, and meaningless, unless, that is, one is required to demonstrate some motivation in the prior art.

      1. “motivation” versus “motivation in the prior art” are two different things.

        The more particular “…in the prior art” was thrown out by the judiciary, who also like to slide on the slippery slope of anything leading back to their [abrogated] Flash of Genius standard.

        As noted, the breadth of the motivation element is indeed “always there, and meaningless” especially when the court imbues PHOSITA with additional creativity and “normal” inventiveness [whatever that means].

        In essence though, this creates the logical paradox that “invention” prevents the reward for invention. And if “i>normal” inventiveness is included in PHOSITA, then granting of patents degenerates down to two extremes: the Flash of Genius mode (inventiveness above “normal”) – which was expressly rejected by Congress in the so-called “mere codification” of the Act of 1952, and pure serendipity (the “oops, I did it again”) total lack of thinking only accidental discovery mode.

        1. As “suggested,” “motivation” is inherent in the”useful arts.” Art that is not useful, may lack motivation outside the individual and be protectable, simply as art in copyright. Like a painting on a wall, that only increases the potential for a fire is protectable, whereas ugly asbestos shingles on the wall, that would be useful, is not. Even suggestion used to be explicit and practitioners would use it as a spoiler, to prevent the obvious next step to the implemented embodiment by reciting the vapor.

          This brings us back to the real question, how do we fairly reward our inventors, innovators and makers?

      2. I don’t understand the hairs you are splitting. Wouldn’t explicit “motivation” in the prior art be covered by “suggestion?”

        I agree with Anon, the abbynormal or the dufus discovery would only be patentable. The coulda, woulda, shoulda of KSR ain’t going to work. Imbuing the reasonable man of “ordinary skill in the art” with the hindsight evaluation that this man certainly of measured intelligence certainly “could” have invented “it.” John Deere may not be the distilled best, but it has certain old time purchase. Hindsight can always be rationalized by smart lawyers.

        1. As anybody can tell from reading office actions since KSR came down that motivation is something the examiners can make up – it is a form of common sense. All inventors try to improve things and therefore the motivation to improve is always there.

          The real question under KSR is whether every element of the combination was known and whether the functioning of the combination provides only expected results or whether it provides something more, and that something more has to be something more in terms of something unexpected.

          Motivation has nothing to do, or should have nothing to do, with the KSR test. It is a layer that seems to have been added by the patent office that is not really part of the question KSR asks.

          Thus if one is to argue that the combination is not obvious, one should argue that there is something about the combination that makes it work in a way that is better than what was expected – some synergism, some functional prove it actually occurs. When one shows this, one wins the obviousness argument.

          In contrast if one argues that there is no motivation to combine in the face of a KSR rejection, this is almost like saying that the two references are not in the same field of endeavor.

          There is always a motivation to make things better.

          1. Instead, consider the actual historical genesis of 103 – a direct retaliation against an anti-patent Court who had F A I L ed to coalesce the meaning of the term “invention,” even after being authorized by Congress to use the power of common law writing to do just that.

            Note (again) from the Cornell Law website: “This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

            Congress would not take authority from the Court and give it right back. This “to be worked out” was NOT in the domain of the judiciary. ANY writing of the law in this regard by the judiciary – through the use of common law – is ultra vires.

            It is only the judicial muckery of the Court, addicted to the power of “common law,” that is the reason we see the nose of wax of 101 being so mashed with the nose of wax of 103.

            And it is with utmost irony that you yourself are arguing a “separation of powers” case – and cannot see the plain fact that the separation of powers doctrine applies to MORE THAN just an executive/judicial separation.

            Here then, is yet another blindspot created by your ego. Another example of the illness of “6-is-a-genius-because-he-agrees-with-me.”

  13. The last sentence of this post is nonsense. It is not supported by either the Chester or Packard cases Dennis cites to, and it is contradicted by the innumerable Board reversals that hold that examiners must explain their reasoning. For a recent example, see, e.g., Ex parte Schiffrin, No. 2013-008519 (P.T.A.B. Jan. 21, 2016) (prima facie case not made when reasoning unsound). There is, in fact, no authority holding that examiners are held to a lesser standard than the Board as Dennis states.

  14. “Merely stating that a particular placement of an element is a design choice does not make it obvious. The Board must offer a reason for why a person of ordinary skill in the art would have made the specific design choice to locate the spring on the mounting block. Here, it does not.”

    Sad. One would have hoped that all of the new-from-the-outside-APJ’s hired in the past couple years would be above such lazy shortcuts that are the stock and trade of the RCE gravy train loving examining corps. But one would be wrong.

    Heckuva job.

    1. Have you seen the cases that are being affirmed without an opinion? At least this one sort of gave an opinion.

      But to your point, I don’t think the people from the outside that joined the PTO did so in order to work harder. Many I’ve seen see it as a pseudo retirement from their law firm careers.

  15. This is why bright(er) line rules such as TSM (pre-KSR) for obviousness and adherence to expressly recited statutory categories of invention (pre-Alice) for subject matter eligibility aren’t such a bad idea after all.

    1. If we were Examiners, given KSR + Alice, we could clear off our dockets on Monday morning and go skiing for the rest of the week by issuing the following rejections in every application:

      1. All claims are rejected under Section 101. The invention is directed to the abstract idea of [insert], and the claim elements add nothing more because they are routine and conventional. See Alice.

      2. All claims are rejected under Section 103. References A and B disclose all claim elements in combination. It would be obvious to combine these references because the PHOSITA has “ordinary creativity” and “the reference [B] is reasonably pertinent to the problem faced by the inventor”. See KSR.

      Then I would dare the applicant to appeal.

    2. This is why bright(er) line rules such as TSM (pre-KSR) for obviousness and adherence to expressly recited statutory categories of invention (pre-Alice) for subject matter eligibility aren’t such a bad idea after all.

      You guys are really hilarious. Meanwhile the Board is being affirmed left and right.

      But go ahead: “We need rules written for three year olds becuase we struggle with nuance. But our awesome inventions are super important. Hold my hand, I’m a genius!”

      Too funny.

      1. MM – I don’t doubt the board is being affirmed given the KSR and Alice decisions at the Supreme Court level. I’m not denying those decisions are on the books and currently “good” law. I just disagree with the decisions.

  16. “To be clear, although the PTAB is held to this high standard, patent examiners are not. Rather, examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation.”

    Just out of curiosity, what’s the authority for the above?

        1. Reminds me of a typical rejection in Japan: “The claims are obvious over any of RefA, RefB, and/or RefC”, with little to no explanation.

          1. But with the Japanese you can usually figure out why they’re making the rejection, then offer up an amendment and/or argument and make real progress.

            1. znutar: you can usually figure out why they’re making the rejection, then offer up an amendment and/or argument and make real progress.

              Or you can inform the client that he/she is wasting his time/money.

              That happens every day, by the way.

              1. You can’t possibly be this poor of an advocate for your clients. Do counsel all of your clients to abandon their applications unless you get a first office action NOA?

                1. Do counsel all of your clients to abandon their applications unless you get a first office action NOA?

                  Because it’s all or nothing in the simpleton world of Patent Luvvers Anonymous.

                  Please give everybody a break already.

                  1. S I G H

                    Malcolm, it is your posts that paint that “simpleton” world.

                    Once again (no real surprise), Malcolm and his favorite rhetorical tactic of AccuseOthersOfThatWhichMalcolmDoes is in play.

                    Please give everybody a break already.

                    Indeed.

                    It’s as if Malcolm knowingly posts in a b0nehead manner and then tries to “inoculate his b0neheadedness by accusing “the other side” of what he himself is doing.

                    And its not like this is a new thing, or a rare occurrence, this is a pandemic of 1nanity repeated ad nauseum ad infinitum.

              2. Was that really necessary, MM? I was making a qualitative comparison, based on my personal experience, between Japanese actions which I find to be sparse yet comprehensible vs. US which run for pages and are frequently obtuse, and that prosecution in Japan is straightforward but protracted here. Maybe you’ve had a different experience, but I don’t see how that has anything to do with your campaigns on ineligible subject matter and the standard for finding obviousness. My experiences have largely been in analog circuits, not ‘configured’ to do anything but defined by structure. I speak up here once every 5 months or so, but you rarely miss the opportunity to leap right in with a heap of snark when I do. Did you think my comment was coded talk for “I can’t get my software patents allowed in the US?” Do you read that into everything?

                1. Was that really necessary, MM?

                  Obviously, “NO.”

                  Was that unexpected – or in any way different than the blight that has festered nearing a decade now (as shown on Prof. Crouch’s most recent “ecosystem” thread)?

                  Sadly, “NO” is also the answer there.

          1. DC: I do think that there is a difference between the skills of identifying the best prior art and being able to cogently explain how that prior art leads to an obviousness conclusion.

            Writing well is a skill that requires substantial education and practice.

              1. anony – that is COMPLETELY up to the Office and outside the control of applicants.

                Don’t make your problems into my or my client’s problems.

                We pay for examination – NOT for a time meter running.

                1. Are you that disconnected from reality?

                  Say it takes you 10 hours to do a thorough response to an Office Action, but your client is only willing to pay for 6 hours? Do you work for free, or do the best you can with what they’re willing to pay for?

                  Same here. If thorough examination takes 16 hours, and they only credit us for 12, then we are going to do the best we can in 12. It isn’t a charity, I work primarily to pay the bills, not because it makes me feel good or whatnot.

                  It is as much your problem or your client’s problem if it affects you. Maybe you can petition the Office to give Examiner’s more time. If the Office isn’t spending your money effectively, that sure seems like your problem/concern, too.

                  Bottom line – you don’t work for free, and neither to Examiners.

                  1. anon is exactly that disconnected from reality.

                    He feels entitled to a idealized examination, while washing his hands of any responsibility that the bar has in the extant constraints of the examination process.

                2. Which basically means you’re advocating that we all work for free.

                  Here’s how that will work out. They good examiners will leave for other jobs where they can at least make more money for the extra work. The crappy examiners will stay, and not do the extra work you wanted anyway, or even if they do spend more time, you’ll still get crap.

                  So basically you’re advocating making the PTO a worse place to work, which will slow examination and reduce quality. I’m sure your clients thank you!

                  1. They probably will.

                    Given the zeal that anon defends functional claiming and derides Alice, he probably benefits directly from under-examination.

                  2. “So basically you’re advocating making the PTO a worse place to work, which will slow examination and reduce quality. I’m sure your clients thank you!”

                    That is literally anon’s dream.

                3. “that is COMPLETELY up to the Office and outside the control of applicants.”

                  Nothing of that sort is truly “outside the control of the applicants” at the office bro. It is literally always headed by someone that just got through repping applicants. It’s a captured agency, by statute.

                4. I see that each of my examiner friends jump (quickly) to the wrong conclusions.

                  Guys – pay attention. It is quite possible to be for strong examination AND point out the difference in what you (as examiners) want per your own INTERNAL metrics and what the Office has set up regarding what my clients pay for.

                  The plain fact of the matter is that the system IS set up such that we pay for a full and complete examination – and NOT merely a ‘clock running” examination only for “x” hours.

                  You really really really need to come to grips with the reality of what this means.

                  IF the system were different and the offer from the Office was based on “time allotted,” then the offer would be that offer.

                  It is not.

                  Hello?
                  Anyone in there with a basic understanding of the contracted deal?
                  Anyone in there with a basic understanding of the difference between reality and what you want?

                  Hey, I “get” that you want something different. You just don’t have that.

                  My attempt her to point out that difference should not be met with such scorn and false assumptions. I have been clearly and unequivocally steadfast in the fact that I think p1ss-p00r examination should be the primary focus of all attempts to fix the system. I have never been about “making it worse” – I have always been about you owning what is your own (internal) problem.

                  Your problem is an internal one. But not one that does not have a path to resolution. I have also indicated to you one possible path:

                  You guys do have a union right?

                  About time you guys (and your union) fix this internal driver. If you – in all good conscience – cannot do a reasonable job in the time allotted, convince your union of this and have your union fight for reasonable time.

                  I have also laid out a different system in great detail premised on moving away from a possible driver of the “bad” internal system: stop the “one sized widget” mentality.

                  And yet, my erstwhile naysayers and detractors F A I L to remember that. I laid out a system that involved a graduated first evaluation of the application for complexity and provided a non-widget time allotment per application. My suggestion also included a weighted throughput characteristic based on the varying complexity, and allowed for a better match-up of experience within the Office and the docket of applications.

                  But instead of this, this “ec(h)osystem merely promotes the types of attacks seen here: mindless and baseless accusations which F A I L to reflect my actual, consistent, and long known, views.

                  1. The contract is not with examiners. The contract is with the Office. You have a bone to pick with the Office, not Examiners. Examiners do what the Office asks. If that is not what you expect, then the Office, not Examiners, have let you down. Where do you not understand this?

                    If I pay a contractor to do my lawn, and the sod guys use the wrong grass because the contractor told them to, is it the sod guys fault, or the contractors?

                  2. anony – you are clearly wrong with the words of your own post.

                    YES – the “contract” is with the Office – AND what – exactly – does that contract state?

                    It is NOT “x” number of hours of examination.

                    It is ONLY your “contract” that is guided by the “x” hours – hence – ANY discussion of the “time-limits” is a “YOU” issue between YOU and the Office.

                    It is you attempting to insert a bone that has no place between the actual deal between the applicant and the Office. My post is simply calling out this mistake and telling you to stop making this mistake.

                    Where do YOU not understand this?

                  3. “YES – the “contract” is with the Office – AND what – exactly – does that contract state?

                    It is NOT “x” number of hours of examination.”

                    Then bi tch to management, not examiners and not on this board.

                    “It is ONLY your “contract” that is guided by the “x” hours – hence – ANY discussion of the “time-limits” is a “YOU” issue between YOU and the Office.”

                    You can bich and moan about the “sod” you’re receiving to the people laying the sod for ever and ever, but if the contractor (management) doesn’t change then all your biching is for naught. There’s literally nothing that examiners can do for you here, it is all management.

                    “My post is simply calling out this mistake and telling you to stop making this mistake.”

                    His post is simply a little bit of OCPD. As are most of his posts.

                    “Where do YOU not understand this?”

                    We understand bro. You got the OCPD.

                  4. Instead of any semblance of inte11igent response from 6, we have his baseless ad hominem of “meds”…

                    And the Prof sits idly by and wonders why he has the “ecosystem” that he has….

                    You do realize 6, that as an agent of the government that you are obliged to honor the deal the government has made with the applicant first – and it is only second that you are to “look at” your own deal with the government, right?

                    If the “time allotted” is not fair – you in your (yes YOUR) grievance do have a union to go to. That union is there to make sure that YOUR work conditions (including time allotments) are fair.

                    Instead of the baseless ad hominem, you should contemplate the reality of the situation, take responsibility for your own issues (don’t slough them off on me or my clients), and complete your tasks as the agents of the government that you are.

                    If your union is letting you down – you (not any applicant or applicant’s representative) can – and must – do something about it.

                  5. Anon – we have janitors in the government. Why don’t you complain that they, as “agents,” aren’t examining patents? And what about taxes and national defense? The patent examiners aren’t doing ANYTHING to help with those areas.

                    Oh, that’s right. As individual employees, it is NOT our responsibility to perform every government task. That is what leadership is for. They decide how to delegate and divide up the tasks. As an Examiner, I do my part as decided by management. If management has failed to properly divide up the tasks, that is NOT MY PROBLEM. I am not responsible for knowing what every other employee is doing. I assume that the tasks I don’t do are completed by someone else, based on management’s insights and control.

                    6 – preach on. I think we’re on the same page on this.

                  6. anony,

                    You are confusing task and measurement of task.

                    The one is part of the actual deal between applicant and office, while the other is the “deal” between you as an employee and your employer.

                    It is you that is attempting to make the employee/employer issue into an applicant/office issue.

                    Cheering on 6 does not help your case. Nor does your mindless “janitor” sideshow. Clearly the task at hand is examining. And just as clearly, your metric is an issues between you and your “boss.” My addition of ideas is a bonus for you – the plain fact of the matter is that what goes on between you and your boss is indeed separate from the task that is paid for.

                    You would be better off simply taking a step back and thinking about what I am telling you.

                  7. Anon – I understand you want better examination. I don’t have a problem with that. But you are going to a soldier and asking why we haven’t won the war. The soldier will let you know that he has followed orders, but he cannot do more or less than he is ordered to do (except in extreme circumstances). Examiners are examining as management sees fit.

                    You disagree with management about what constitutes “proper examination” that you have paid for. That is between you and management. Examiners cannot unilaterally decide what constitutes “proper examination.”

                    When you convince management to change their idea of what constitutes “proper examination,” and I’ll follow management’s guidelines as they evolve. Which is my job.

                  8. anony,

                    You are still off. Read again my posts. Understand the differences between task and measurement of task.

                    What about what I actually say is stumping you?

                  9. Anon – Nothing you say is stumping me. Other than that you can be so disconnected from reality.

                    Have you ever been to the DMV and been dismayed at the wait times? Did you complain to the workers there ad infinitum that they need to be faster? Did it work?

                    Or, from the private sector, gone to Best Buy and demanded the salesman provide better quality in the laptop you bought? How did that work out?

                  10. The “stumping ” thing anony, is that you somehow are NOT seeing reality.

                    You continue to conflate YOUR measure of a task with the task itself.

                    These are simply two very different things.

                    Point blank: the deal to the applicant is a full – untimed examination.

                    The deal YOU have is a timed quota.

                    To the external world, YOUR measure of time simply is of NO accord.

                    This really is basic stuff – and yet you continue to want to pretend otherwise.

                  11. Anon – I recognize the difference between my measured task and the task itself. I also agree with you that the deal with the Applicant doesn’t specify a time limit for hours spend examining. But, you fail to note that THE DEAL IS NOT WITH THE EXAMINER. Examiners are merely a tool that the Office has to complete its task of providing examining services. For example, there are classifiers, supervisors, quality assurance specialists, IT, APJs, etc. Each has their place, but none alone satisfies the “deal” you mention. But, together, the Office attempts to satisfy the “deal.”

                    You seem to be conflating “Examiner” with “Patent Office.”

                    For example, say you hire a janitorial service to clean your restrooms at work. Maybe the service employs a janitor who cleans the toilets, floors, and sinks. You walk in one day while the janitor is cleaning the restroom and demand that he clean the mirrors, too. The janitor replies “that’s not my job.” You reply, “yes, it is, we hired the janitorial service to clean the restroom, so it is your job.”

                    What if, though, the janitorial service also hires a cleaning lady who is responsible for cleaning the mirrors after the janitor is done? The janitor knows that the mirrors are not his job. He doesn’t care how the janitorial service cleans the remainder of the restroom, he just does his part. In this scenario, you would contact the janitorial service to figure out why the mirrors aren’t being cleaned to your satisfaction. The janitor has no idea, isn’t’ responsible, and has no authority to fix the problem.

                  12. But, you fail to note that THE DEAL IS NOT WITH THE EXAMINER.

                    You are most incorrect.

                    You – as the examiner – are indeed the proxy and agent of the Office – it is precisely why you have the task that you do have. Don’t like it? Get a different job.

                    You say that you recognize the difference between the task and the measurement of the task, but you remain blind as to what having that task actually means.

                    So yes, while there are indeed other people with other job titles involved, THAT is a distinction without a difference here.

                    You are STILL trying to make your problem (that of the employee/employer) into my and my clients’ problem.

                    Your janitor” hypo again misses the mark because I am NOT the one asking for more than what has been paid for. I am asking for examiners to examine. And to examine competently and fully. I did not pay for a “x” hours of examination – so don’t try to tell me that that is all that I get. IF you cannot do the job right in the given time, then YOU need to talk to your union and either have the time changed (again – completely outside the relationship with the external world) or you need to admit that you cannot do the job.

                    Hey, I am fully aware that there are no doubt times that for any particular application, your (internal) allotted time is just not reasonable for you to do a proper job. But that is a YOU problem – and most definitely NOT an applicant’s problem. As I understand the “widget” philosophy, it is KNOWN that this is the case and you are provided a number of applications at one time so that you can “balance” those that will need more time with those that will need far less time. This TOO is an internal decision.

                    You keep on barking up the wrong tree my friend.

                  13. “that you are obliged to honor the deal the government has made with the applicant first – ”

                    Lulz. And whom, precisely, holds examiners to account for that anon? Management. They’re already setting the terms. Btch to them.

                    “and it is only second that you are to “look at” your own deal with the government, right?”

                    Lulz.

                    This “order of operations” doesn’t seem to be set out anywhere. Feel free to cite your “authority”.

                    “If the “time allotted” is not fair – you in your (yes YOUR) grievance do have a union to go to. That union is there to make sure that YOUR work conditions (including time allotments) are fair.”

                    I somewhat agree with you anon, I truly do, but the grievance route is not valid here, consult the agreement between popa and the PTO for why. We’re already pre-agreed to agree to whatever terms POPA negotiates on our behalf or what management sees fit to grant us. It’s kind of a bum deal if you want something changed, but it is what it is. Grievances are not the right route. Grievances are for when management is not living up to its side of the contract between POPA (repping the workers) and the management. Nowhere in that deal is anything regarding providing adequate time to accomplish the imagined “deal” you have with the Federal Gov. Thus, grievances are not a valid way forward. Only negotiations between POPA and management would be the route for us to take. And since POPA is more or less on board with the status quo, and since many prominent POPA folks are management, meh, there is no route forward other than to first persuade them to negotiate how some would like.

                    You see anon, people who aren’t fulfilling the “deal” you want filled hold the key to agency personnel being able to effectively negotiate with the management. As such, it can practically speaking never be changed via POPA. Save maybe through years of concentrated leadership and effort. Lol, like anyone has a few years of time for that. And those people who do have that amount of time are already quite capable of making it within the current system, so why should they bother?

                    And besides, I’m not even all that worried about the “fairness” of the time alotted. The time is imminently “fair” in most AUs imo IF management fulfills the conditions in the agreement between popa and the office AND there is effective leadership AND if the law is solely stringently applied (I happen to be one of those people that thinks the time is sufficient, if we take for granted everything else falls into place). But those are big IFs. Many managers would like a bit more than what is bargained for. Many have agendas (search till the cows come home, search all dependents separately) or ideological ideas about what should be rejected (and have to be rejected regardless of the art of record). Many have other human failings, and so do many examiners. All of those failings trickle down to you.

                  14. “You – as the examiner – are indeed the proxy and agent of the Office – it is precisely why you have the task that you do have. ”

                    You’re talking maaaaaybe about a primary examiner. Non-sigs don’t have the authority to act as the “proxy/agent”. That’s why the spe or primary signs the case. signatory examiners already can uphold the “deal” to the satisfaction of management or they wouldn’t be signatories.

                  15. And whom, precisely, holds examiners to account for that anon? Management. They’re already setting the terms. Btch to them.

                    You see 6 – you again miss the point here with the conflation of measurement of a task (YOUR problem) and the task itself.

                    The one “Btching” here was an examiner. Read again this thread and realize that what is being Btched about, and who is doing the Btching.

                    This “order of operations” doesn’t seem to be set out anywhere. Feel free to cite your “authority”.

                    Wrong again 6. This is not “an order of operations” as it is a designation of task versus measurement of task. As such, no citation to authority is necessary. Eppur si muove.

                    “That union is there to make sure that YOUR work conditions (including time allotments) are fair.”
                    I somewhat agree with you anon, I truly do, but the grievance route is not valid here

                    Finally some movement of the discussion in the right direction! Now take a step back and think about what I am suggesting. Yes – the current system is what you as an examiner have agreed to (which makes the point about examiner’s Btching about what they agreed to particularly ironic). My suggestion is along the lines of if what you have agreed to is not in fact “fair” then your recourse is to your designated union representative to strike a better deal.

                    Yes, “grievance” may not be the right word. Use whatever word you want to use and follow the suggestion that I offered – and while doing so, note that I am under no obligation whatsoever to even offer any suggestion to begin with, and that my consistent position on this matter along with my willingness to offer suggestions – being met with the typical baseless ad hominem and attacks of the person while ig noring the substance of what I say is a blight here – and it is you and your sAmeone examiner friends contributing that blight.

                    And besides, I’m not even all that worried about the “fairness” of the time alotted.

                    Great – just realize that is was a whiny examiner that was “all that worried” that started this conversation.

                    Many have other human failings, and so do many examiners. All of those failings trickle down to you.

                    That is the B$ that needs to stop.
                    That is the point here.
                    Grasp it.
                    Understand it.
                    Integrate it.

                    You’re talking maaaaaybe about a primary examiner. Non-sigs don’t have the authority to act as the “proxy/agent”.

                    Wrong. The level of sig versus non-sig has nothing to do with your task as an examiner and being an agent. Nothing.

                  16. “(which makes the point about examiner’s Btching about what they agreed to particularly ironic)”

                    They only “agree” to it as a condition for employment. Like I said, you’re “pre-agreed”, you never really “agree” to it. The individual’s bargaining power is ziltch. Which is a real problem.

                    And yes, it is somewhat ironic, but that is because 95% of examiners don’t even know what they agreed to do, or at best have a somewhat abstract notion of it. Because there is no “training” on the actual agreement they have with management (managers no doubt prefer it that way so they don’t constantly get called out for not abiding the agreement). And that in turn is because managers generally speaking like to create small bargains “on the ground” that differ somewhat from the terms that everyone is technically agreeing to in order to actually run the AU. And to be sure, they do this for good reason, I don’t blame them for that.

                  17. “is along the lines of if what you have agreed to is not in fact “fair” then your recourse is to your designated union representative to strike a better deal.”

                    Yes, but as explained POPA is made up of many a management members (which seems strange I know because then it is management negotiating with itself) and people who are just fine with doing a shitty job for you in the current amount of time. That “recourse” is no recourse at all. Those are the very people holding the keys anon, and they’re pretty much all management. And, even if POPA was on board with negotiating more time, the agency would (at least in the past) fight tooth and nail against it because: backlog. So again, no recourse. Nowadays, things are somewhat different in the agencies wanting to fight hard against the time increases (see David K voluntarily granting one hour), but the structure of POPA remains somewhat the same, and it always will.

                  18. “is along the lines of if what you have agreed to is not in fact “fair” then your recourse is to your designated union representative to strike a better deal.”

                    Yes, but as explained POPA is made up of many a management members (which seems strange I know because then it is management negotiating with itself) and people who are just fine with doing a shi t ty job for you in the current amount of time. That “recourse” is no recourse at all. Those are the very people holding the keys anon, and they’re pretty much all management. And, even if POPA was on board with negotiating more time, the agency would (at least in the past) fight tooth and nail against it because: backlog. So again, no recourse. Nowadays, things are somewhat different in the agencies wanting to fight hard against the time increases (see David K voluntarily granting one hour), but the structure of POPA remains somewhat the same, and it always will.

                    “That is the B$ that needs to stop.
                    That is the point here.
                    Grasp it.
                    Understand it.
                    Integrate it.”

                    Integrate it into what r e r e? I already have “integrated it”. It doesn’t change anything. I cannot, nor can any one person in existence that I know of clean all that up. The reason is because nobody here is that great of a leader (though we have many top notch folks) and the things that need to be cleaned up are too complex and difficult to identify irl, coupled with that the agency is too large for any one person to handle it all. But yes, you’re absolutely right it does need to stop. I’m obviously in agreement and have been.

                    “Wrong. The level of sig versus non-sig has nothing to do with your task as an examiner and being an agent. Nothing.”

                    I didn’t say non-sigs aren’t agents r e r e . I said they don’t bear the “task” as in, let me explain this to you tiny baby, “the responsibility for the task being done precisely right”. If you need proof of this consult the PAP.

                  19. Read again what you have written 6 – your views are a logical mess and a p1t11ful excuse of not wanting to be held accountable for the very job that you have signed up for.

                    Do you think that your employment contract is a contract of adhesion such that the terms “don’t apply?”

                    Read again the conversation here: there is nothing that I have said refuting the examiners’ whining that is not at its heart incorrect.

                    Again, perhaps the word of “grievance” is not the right word – but that does not change ANY other point that I have made. Stop. Stop and think. Do not retreat to your typical empty ad hominem.

                  20. lol, damm autocorrect typo…
                    The sentence above should read:

                    there is nothing that I have said refuting the examiners’ whining that is not at its heart correct.

                    or

                    everything that I have said refuting the examiners’ whining is correct at its heart.

          2. It is difficult, which is why the Fed Ct. and PTAB lower the standard to the level of skill of the employee, not the other way around.

            1. The highest salary for an APJ is about 170k. That’s second year salary at a good firm. Yes, you heard me right, the most experienced APJs make what a doofus one year out of law school makes. I’m not saying it explains everything, but it is pertinent.

      1. I don’t believe the above statement is entirely accurate. See In re Packard:

        “The ‘prima facie case’ determination is a purely procedural device that operates at the examiner level to clarify how the interaction process proceeds. Thereafter any final rejection by the examiner, and any review of the rejection, whether by the Board or through appeal to the courts, turns on the substantive question of the merits of the rejection. In re Piasecki, 745 F.2d at 1472”

        I read that as requiring the Examiner to more fully explain the reason for modifying the prior art with the Final Office Action. Thoughts?

        1. “I read that as requiring the Examiner to more fully explain the reason for modifying the prior art with the Final Office Action. Thoughts?”

          Imma have to disagree. By statute. What is required is simply: ” the Director [or examiner acting on the directors behalf] shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application;” and that is done “Whenever, on examination, any claim for a patent is rejected” see 35 usc 132.

          There is no requirement that the office more fully explain its reasoning at the examiner level at final action. Though the director (directors) does require that examiners respond to arguments. And that being said, it would be a good idea if the reasoning previously was too skimpy to hold the board’s hand through the determination that was made below.

      2. The MPEP asserts the following on this subject:

        “In accordance with the patent statute, “Whenever, on examination, any claim for a patent is rejected, or any objection . . . made,” notification of the reasons for rejection and/or objection together with such information and references as may be useful in judging the propriety of continuing the prosecution (35 U.S.C. 132) should be given.

        Information useful in judging the propriety of continuing the prosecution may include, for example, the identification and a brief discussion of the particular figure(s) of the drawing(s), and/or page(s) or paragraph(s) of the best reference(s) cited by the examiner, the applicant, or a foreign office.

        In rejecting claims for want of novelty or for obviousness, the pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. See 37 CFR 1.104(c)(2). For rejections under 35 U.S.C. 103, the way in which a reference is modified or plural references are combined should be set out. ”

        “The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that “‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:

        (A) Combining prior art elements according to known methods to yield predictable results;
        (B) Simple substitution of one known element for another to obtain predictable results;
        (C) Use of known technique to improve similar devices (methods, or products) in the same way;
        (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
        (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
        (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
        (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

        1. ‘[R]ejections on obviousness cannot be sustained by mere conclusory statements

          Once again, there is more than “just notice” required when one looks at the entire examination cycle.

      3. Yes indeed. Anyone who has run up against a cryptic and vague rejection (as in long claim portions cited against pages of reference) and explored their options knows that this is unfortunately true. To their credit, most Examiners do a reasonable job. When rejections are not clear, there are ways to cabin the Examiner’s positions with respect to particular teachings, but it takes more time and money.

    1. KSR says examiner must provide “articulated reasoning with some rational underpinning why phosita to support the legal conclusion of obviousness”.

      To me this says examiner is held to same standard.

      1. “Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having 1741*1741 ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (C.A.Fed.2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”

        KSR at 1740-41.

        1. Two items Ned:

          1) Where does this “inferences and creative steps that a person of ordinary skill in the art would employ” come from?

          Specifically (see the Cornell website notes on 103**) Congress took away from the Courts the ability to set “invention” by common law judicial writing. It makes NO sense to then turn around and give back to the Courts this power.

          **”This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

          The Court is acting ultra vires in its attempt to take back power that Congress had removed. That part in the notes about “later working out” is for Congress – NOT the courts.

          2) there is an immediate “patent profanity” effect to what the Court attempts with its “super-empowering” of PHOSITA: as I have noted several times, what is required to be present in an application is ALSO a function of that legal term. When you super-empower PHOSITA, you necessarily LOWER the requirements of what must be in an application. You also necessarily make your version of “functional claiming” MORE pervasive.

          1. Anon, you and I both know that Graham v. John Deere directly addressed this issue in held that 103 was a codification of its own jurisprudence surrounding Hotchkiss v. Greenwood. Indeed, a significant portion of Federico’s remark talks about that case.

            Undoubtedly Judge Rich and others had other objectives. But the Supreme Court did not agree.

            1. Ned,

              Are you relying on the dicta in Deere that is merely a reflection of the addicts attempt to hold onto a power removed?

              I have shown you abundantly that the canard of “mere codification” is indeed a canard.

              Federico backs me on this.
              The explicit congressional record I provide from the Cornell website backs me on this.
              The other architect of the 1952 Act (Rich) backs me on this.

              PLEASE do not attempt your scapegoat character attack on Rich as your (usual) response. This ALL is what Congress enacted. Ye, Rich was an architect, and yes Rich – as judge – knew better than anyone else in the judiciary – including especially</b. the power-addicted Justices – what the Act of 1952 meant.

              Your "point" of whether the Supreme Court agreed presupposes your own error concerning which branch of the government is authorized under the constitution to write the statutory law that is patent law. Falling back to that error does not help you in this discussion.

  17. To be clear, although the PTAB is held to this high standard, patent examiners are not. Rather, examiners are only required to provide notice of their rejection/objection rather than a full-bodied explanation.

    Since “quality is all the r@ge,” maybe we SHOULD require a higher standard of examination and have more than “just notice.”

    (also, I am not sure that “just notice” fully captures the back and forth in examination and reply that yields a final decision on grant/no grant)

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