Judge Moore Opinions: Short, Focused, and To-The-Point

PatentlyO2006018In re Hays (Fed. Cir. 2006) (Nonprecedential)

New Circuit Court Judge Kimberly Moore’s first opinion is likely to be predictive of her future work — short, focused, and to-the-point. 

This case involves a pretty neat invention of a tissue holder for an automobile visor. The BPAI had rejected the claims as anticipated, but the PTO later conceded that the cited reference (relating to a golf-tee holder that clips to a lapel) was not anticipatory.

The PTO is fully expected to present a new grounds of rejection.  In all likelihood, the patent will never issue because another round of appeal would be prohibitively expensive for this type of invention.

Vacated and Remanded.

  • This does not really count as Judge Moore’s first opinion because it is a non-precedential opinion. In a few weeks, we’ll get the real one.

11 thoughts on “Judge Moore Opinions: Short, Focused, and To-The-Point

  1. 11

    Has anyone ever heard of a case disappearing off Final Decisions of the Board of Patent Appeals and Interferences Website? My case was decided (examiner affirmed 🙁 ) on 31 AUG 06 and was on the site and is now gone. I have filed an RCE and was curious if that has anything to do with it. Here’s a link to me PAIR portal:
    link to portal.uspto.gov

    Patent re-exam of 5,602,905


    Rick Mettke

  2. 10

    link to portal.uspto.gov

    From the Public PAIR copy of the Board of Appeals Decision:

    “Suffice it to say that we are quite confident that a tissue would pass through the opening in Smith’s device [(the 102 reference)] much easier than a camel would pass through the eye of needle.”

  3. 9

    I wouldn’t put much stock in this assessment. Nonprecedential opinions are typically short and to the point precisely because they are nonprecedential.

  4. 7

    anonymous asked “What would be the legal basis for the CAFC instructing the PTO to allow a patent?”

    Maybe the legal basis for the CAFC telling the PTO to do their job is because the examiner is required to cite the best art in the first rejection and not to cite something, lose, cite something else, lose, cite something else, ad naseum. See 35 USC 132, as implemented by 37 CFR 1.104. In particular 37CFR1.104(c)(2) “the examiner must cite the best reference at his or her command.”

    If the PTO is following the law and rules, there should not be any better art out there.

  5. 5

    The flipside, of course, is that patent attorneys can browbeat a patent out of the PTO through persistence.

    Thus, the fact that a patent is issued relates in part to its patentability (novelty, usefulness, nonobviousness, etc) and in part to the resources and skill of the patentee’s lawyers.

    It could be that when the PTO is suspicious of the patentability of an application, it should just put up as much resistance as possible to ensure that any patent that issues that isn’t the next Segway has a lengthy prosecution history that pins the inventor down on the meaning of the claims and precludes to the extent possible any frivolous arguments that might otherwise be made in litigation or licensing negotiations.

    Or maybe the PTO should admit its inability to distinguish between good and bad applications, let most of ’em through, and ask Congress to get rid of the presumption of patentability.

    What would be the legal basis for the CAFC instructing the PTO to allow a patent?

  6. 4

    For low-profit margin inventions like the one in this case, examiners have the leverage because repeated appeals are not cost effective and because they know they can simply cite new art to create new rejections, even if the new art and rejections fail for the same reasons that the old art and old rejections were overturned on appeal.

    Just once I’d like to see the Board or the Federal Circuit instruct the examiner to allow the case, rather than giving the examiner another shot to create another equally bogus rejection.

  7. 1

    I suppose we also have her dissent in Amgen, which fits the above decision.

    And it’s probable that she wrote at least one of the following:

    Vaughn v. MSPB (12/13/06, No. 06-3272)
    Miller v. MSPB (12/6/06, No. 06-3185)
    Zellars v. Air Force (12/6/06, No. 06-3321)
    US v. Ross (11/2/06, No. 07-1009)
    Mene v. Marriott (11/2/06, No. 07-1013)

    All per curiam decisions in which Judge Moore was on the panel.

    I’ll be very interested to see her work in difficult cases.

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