BPAI May Not Substitute its Engineering Expertise for Hard Evidence (In an Interference)

Brand v. Miller (Fed. Cir. 2007).

Both Capital Machine and Miller Veneers claim rights in a new method of cutting veneer from logs using a “tapered filch.”  Brand, the inventor on Capital’s application now works for Miller, and the two companies had a close-relationship at the time of the applications. Capital filed its patent first, but Miller argued that Capital’s invention had been entirely derived from a documents and information provided by Miller.

Derivation: In an interference, impermissible derivation requires a showing of prior conception by the junior party and communication of concepts to the senior party that would enable construction and operation of the invention.  These elements are questions of fact.

In an interference, the BPAI awarded priority to Miller, finding that Miller’s communications to Capital were sufficiently enabling. In its appeal to the CAFC, Capital argued that the BPAI had improperly relied upon its own experience instead of evidence in holding that the Miller communication was enabling.

Substantial Evidence of Factual Findings: Appeals from the BPAI interference decision are governed by Section 706 of the Administrative Procedures Act (APA). The CAFC’s interpretation of that section requires that “findings of fact by the Board must in all cases be supported by substantial evidence in the [four corners of the closed] record.” Thus, it is impermissible for the BPAI to base factual findings on its own experience as opposed to evidence on record.

 Here, the court found that the board had-indeed “substituted its own expertise for record evidence” of how the information communicated by Miller would be arranged to perform the claimed method. “Under such circumstances the Board’s decision was not supported by substantial evidence in the record.”

32 thoughts on “BPAI May Not Substitute its Engineering Expertise for Hard Evidence (In an Interference)

  1. 32

    Dennis – I’m working on an update, and would like to refer to some of your earlier postings. But they don’t seem to be available on this site. Can you tell me how to locate them? Jim

  2. 31

    Correction to second-last paragraph above…

    I think it can be argued that an appeal to the Board of a final rejection in the situation in which the Board does not “have knowledge of grounds not involved in the appeal for rejecting any pending claim” can be fairly characterized as an adversarial matter.

  3. 30

    Step back—

    I am not a litigator, and don’t want to go too far down the road, but a couple of things come to mind.

    The “hypothetical” juror was not mine, it was suggested by Thomas Dickey in the previous post, and I am not at all sure that the juror was hypothetical—I asked about this, but there has been no response from Thomas.

    And one small point, in Thomas’ story, the juror did apparently make the statement during jury deliberations, out of sight of the judge and counsel—“The jury had no sooner started deliberating than one juror piped up and said…”.

    I agree with your assessment of hearsay evidence—however, there are of course situations where hearsay becomes admissible, depending for instance on the purpose for which the evidence is used. Why are juries removed from the watchful eye of the judge, and even of counsel? There is no real-time opportunity to object to the introduction of such hearsay evidence. Presumably, this is a de facto exception to the inadmissibility of hearsay, because of the varying uses the other jury members can make of the statement. I have heard it argued that the very reason juries are sequestered out of sight of the judge and counsel is to encourage both the making of such statements, and the discussion that inevitably follows, without fear of interference in their open discussion.

    Here is a question: is there anything inherently wrong about the juror getting up and saying something like this in front of the rest of the jury? I don’t think so—for instance, whatever statements that juror makes could serve merely to trigger the memory of one or more of the other jurors, or to otherwise provoke independent thought by one or more of the other jurors, at least in the case where the juror making the statements does not pronounce upon the ultimate legal issue in the case. So in my view the important thing would be to reveal what the information was, and how it affected the decisions by other jurors.

    I don’t know that your solution to “kick the juror off” is a valid solution to the situation posed. Thomas’ scenario asked if I would “vote to set aside the verdict”, presumably meaning that a verdict had been delivered by the jury, but that the judge had not yet rendered a decision. Once a verdict has been delivered, is it even possible to move to set aside that verdict, have a juror removed, and have the jury re-instructed and re-sequestered to deliberate once again? On the other hand, if you found out about the statement before the verdict was delivered, then I would agree with you that the easiest course of action would be to move to have the juror excused, re-instruct the jury, and have them continue in their deliberations.

    Second part—

    I think that an argument can be made that the Board sometimes adjudicates a dispute when deciding an appeal from a final rejection.

    With regard to how to characterize the operations of the Board, I think it is important to keep in mind that the Board handles various types of cases. Since you have made no objection, you presumably agree that the Board is adjudicative in inter-partes proceedings, and plays the role of a “neutral arbiter”.

    When the Board considers appeals on the merits from final examiner rejections, I think that they play a dual role—on the one hand, they can act as examiner if they “have knowledge of any grounds not involved in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statements constitutes a new ground of rejection of the claim.” (37 CFR 41.50(b)). But note that when the Board effectively acts as an examiner, the appliant’s right to respond to or to appeal from their decision to reject on new grounds is preserved, as the section goes on to state that “A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” The applicant is thereafter able to reopen prosecution, or request a rehearing, and thereby presumably satisfy some due process and evidentiary concerns.

    On the other hand, when the Board does not “have knowledge of grounds not involved in the appeal for rejecting any pending claim”, the Board looks very much like an arbiter of a dispute between the examiner and the applicant.

    First, what the applicant is appealing from is a decision of an examiner—“Every applicant, any of whose claims has been twice rejected, may appeal from the decision of the examiner…” (37 CFR 41.31(a)(1)), and the applicant is directed to include in the appeal brief “A concise statement of each ground of rejection presented for review.” (37 CFR 41.37(vi)).

    Second, the primary examiner may submit an answer (37 CFR 41.39(a)(1), in response to which the applicant may file a reply brief pursuant to 37 CFR 41.41(a)(1), in response to which the examiner may withdraw the final rejection and reopen prosecution or supply a supplemental answer responding to the reply brief, pursuant to 37 CFR 41.43(a)(1).

    Third, pursuant to 37 CFR 41.50(a)(1), “The Board…may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner.”—that is, the Board’s role in this instance is derived from and framed by the opposing arguments made by the examiner and the applicant (among other provisions, 37 CFR 41.37(c)(1)(vii) explicitly and repeatedly discusses argument by the applicant, and if the examiner submits an answer, that should be seen as argument as well, as it is a response to issues raised by the applicant). Because the Board’s decision is based entirely upon “the grounds and on the claims specified by the examiner”, any proceeding in which the Board does not “have knowledge of grounds not involved in the appeal for rejecting any pending claim” seems to be limited “to the 4 corners of the record”, and evidentiary and due process rules seem to be thereby satisfied.

    I think it can be argued that an appeal to the Board of a final rejection can be fairly characterized as an adversarial matter. Like any “contested inter-partes proceeding”, each side is contesting the other side’s interpretation of the patent laws. Even if the examiner doesn’t provide an initial answer, his/her arguments are contained in the record of the rejections. The Board is left to choose between the examiner’s interpretation, or the applicant’s opposing interpretation, which Board activity seems to amount to the adjudication of a dispute, and therefore APA 706 should apply.

    Sorry again about being long-winded, and thanks for your commentary—any thoughts?

  4. 29

    Remember that UC vs. Genentech from a couple years back? There was a lesson there about how juries work (or don’t).

  5. 28

    StepBack have I got it right? When a juror “just says” something because “he likes one side more than the other”, “you” have a problem. It is a problem that falls to be solved: “you” solve it by “you ” kicking that juror off the jury. Only problem now is: there isn’t a juror in the world that doesn’t “just say” things because he “likes” one side more than the other. That’s inherently what you get, and even what you intend, isn’t it, when you opt for a jury system? In “your” juries, how many people do “you” have left, after “you” have completed your kicking out process, with all the due thoroughness that the law expects? But tell me again, because I am not a lawyer and not resident in the only country on earth that uses juries to decide patent litigations.

  6. 27

    Peter Papp,

    With due respect sir, you are incorrect on almost every count.

    1. The Board does not impartially adjudicate a dispute between the Applicant and the Examiner. Instead, the initial decision of the Examiner becomes the final decision of the Agency (the USPTO) if not contested to the BOPAI via appeal. If the initial decision is contested via appeal, the BOPAI steps into the shoes of the Examnier to review the record below in toto and to make a final decision on behalf of the Agency superceding that of the Examiner. Note that sometimes the BOPAI brings forth a new ground of rejection. So the BOPAI is not a neutral arbiter in the case of an ex parte proceeding. The BOPAI is one of the interested parties. By contrast, in an inter partes proceeding, the BOPAI is supposed to be a neutral arbiter.

    2. Your hypothetical juror who is making a statement not under oath about his alleged intimate knowledge of the intersection is infecting the entire proceedings with hearsay “evidence” and he is denying at least one side in the trial with a due process opportunity to cross examine (confront) the hearsay evidence that is being presented against them.

    Consider this slight alteration of the facts: Rather than standing up in open court to announce his intimate knowledge, the juror does it later inside the jury room, out of sight from the judge and from counsel for the opposed parties. Consider also this, the juror is lying through his teeth. He does not know the intersection at all. He just says so. He has decided he likes one side better than the other and he going to use the lie to manipulate the rest of the jury into siding with his belief regarding who should win. Do you see what is wrong with this process? So the answer should be that you have to kick this juror off and instruct the remaining jurors to disregard anything he said and start all over in their deliberations.

  7. 26


    It seems to me that the “highly knowledgeable juror” could use his/her particular knowledge to help the jury in assessing the weight to be accorded to the evidence presented at trial, but could not use it either as a substitute for evidence that was introduced, or as a substitute for evidence that should have been, but was not, introduced.

    To have it any other way would be to deprive the right of a litigant to a full and fair hearing, including the rights to assess witness credibility through cross-examination, to move to exclude evidence, to provide countervailing rebuttal evidence, etc..

    The same applies to every juror–one may have intimate knowledge of the intersection, passing it every day; one may pass it only once a month; one may have particular knowledge of meteorology or physics or anything else that could bear on the case. They are all the same, though–the decision made must be delivered only on the evidence properly accepted by the court.

    If I suspected that a jury decision was improperly influenced by what amounted to evidence supplied by a juror, I would definitely investigate the jury proceedings. Note that this amounts to having a heck of a lot more information to go on than simply the juror’s statement of intimate familiarity with conditions at the intersection, but such information can be had. For instance, if you have related a true story, how in fact did you gain the knowledge of the statement?

    In the case of Board decisions, de novo review of some issues is possible, if expensive. Clear error review for other issues would definitely lead me to examine the Board’s reasoning process, to discover if any similarly improper and impermissible introduction of evidence had occurred, that deprived my client of his right to a full and fair hearing.

    And yes, it is true that this was not a case pitting applicant against examiner. In fact, the court specifically stated that the decision was limited to contested (inter partes) cases: “We do not—and need not—decide here the extent to which the Board in ex parte proceedings is so limited.” (original emphasis). It seems to me that this statement hardly leaves the issue clearly resolved, however, especially with regard to appeal to the Board of a rejection on the merits.

    Remember, Brand cites Dickinson for the proposition that “adjudicatory proceedings before the Board are governed by the requirements of the APA.” So why would APA 706 not apply to appeals to the Board on the merits? It seems to me that the Board in those cases is effectively “adjudicating” a dispute between an applicant and an examiner.

    And even if APA 706 didn’t apply, I believe that it may be possible to make a convincing argument that something like an obviousness determination by the Board should in fact be subject to APA 556 and 557, because it is not in its entirety subject to de novo review–the factual predicates are subject only to review for clear error under a substantial evidence standard. Yes, I am aware of APA 554, but it refers to “proceedings”, not “issues”–but what about hybrid proceedings, the findings and conclusions of which are subject in part to de novo review, and in part to clear error review? I believe that “proceedings” in APA 554 should be read to mean something like “proceedings to resolve a particular issue”, of which there could be more than one in any particular case.

    To not have either APA 706 or APA 556 and 557, or some other APA provision, apply to the clear error issues, or any other Board proceeding other than an inter partes interference, would seem to be a denial of the very rights that the APA is designed to protect.

  8. 25

    Remember, folks, Brand v. Miller (the case you are commenting on) is not a case pitting Examiner against Applicant. This is a case between two Applicants, each of whom hopes to put on a convincing case for priority. It reminds me of a ordinary “interpartes” negligence case I heard about some years ago back when I hung around the DuPage County branch of the Illinois Circuit Court.
    A jury was sworn to be “finders of fact.” The dispute was about about a traffic accident at a certain intersection in Naperville. Each party put up about a day and a half’s worth of evidence.
    The jury had no sooner started deliberating than one juror piped up and said, “You know, I didn’t mention this during voir dire, but I am intimately familiar with conditions at the intersection in question.”
    In the “case of the highly knowledgeable juror,” would you vote to set aside the verdict? Why?
    Okay, in the case of the “highly knowledgeable Board,” what would you do?

  9. 24

    Analogous to other areas of law, the field of endeavor is a finding of fact based upon evidence. Other factual predicates to an obviousness determination would include things like the level of ordinary skill and the difference(s) between the invention and the prior art–has anybody ever come across a case that articulates these factual predicates, rather than articulating the test for obviousness?

    Alun–I’m curious if any of the examiner affidavits that you have extracted have been used in appeal to either the board or in court, and if so, how they were used and received. Also, have you ever had from an examiner either
    an unsatisfactory response or no response at all, and what, if anything, did you do about it? I have never come across any such affidavit in any of the file histories that I have reviewed.


  10. 23

    Here’s a question: what ARE the evidentiary facts underlying an obviousness determination? The court in Bigio seems to state that the PTO’s “assessment of the field of endeavor” is a fact–but to me it is clearly a reasoned conclusion, as I described previously. Remember that legal conclusions are reviewed de novo, whereas factual findings are given deference.
    If it is treated as a fact, what is the standard of acceptability for its introduction–substantial evidence? Since it is the end product of reasoning and articulation, that may be the case, which would suggest that it may be extremely important for applicants to seriously consider putting something in the spec that relates to what prior art the applicant wishes to be considered relevant.

  11. 22

    p.p.s.-‘Substantial evidence is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.”‘, from Kumar citing Consolidated Edison

  12. 21

    p.s.–note that Bigio cites Gartside for the proposition that “substantial evidence must support the PTO’s factual assessment of the field of endeavor”; the “factual predicates” of Gartside would appear to include the “reason to combine or modify”

  13. 20

    “Most Office Actions have more in common with children’s fiction – wishful fairy stories”

    Points to Ponder,

    If you want to be brutely honest about what we huffy puffy, pin striped attorneys do and what the bureaucratically-clothed examiners do most days; the truth is that we all play with a fictional action-hero doll. This doll goes by the fancy name of PHOSITA. But truth is he (or she) is a fictional doll that exists only in the past (at the time the invention was made).

    The Examiner gets to pick up the action hero doll first and dance it around a bunch of prior art references while casting a ventriloquist’s voice so as to make it seem as if this fairy tale puppet is real and alive:

    “Hi kids. I’m Mr. O’Phil, an Ordinary Practioner Having Incredible Luck finding just the right references without aid of hindsight. Why lookie here. Out of millions of possible documents I just found a perfect set of 103 documents to combine and to modify under a rule of “common sense” so as to recreate that which is claimed. Why this is all so clearly ‘obvious’ to me.”

    Next, the pin-stripe suited attorney picks up the doll and projects his voice into it:

    “Hi kids. Mr. O’Phil here again. What’s this? Oh no. Mr. O’Phil sees that reference A ‘teaches away’ from combining with B. Oh no. Mr. O’Phil nevers gets to combine and never gets to recreate the invention. The Examiner’s dance was a fairy tale kids, but this dance is the real deal. Don’t forget to tune in next time kids to the Fabled Fairy Land Show starring yours truly, Mr. O’Phil; your Ordinary Practioner Having Incompatible Life-styles of the super-smart and the super-slavish in abilities. It’s a beautiful day in the Innovation Neighborhood.”

  14. 19

    To metoo,
    “you may need to refresh the page, as the case is at dailylog.html (and was there shortly after 11am this morning).”
    Your advice “refresh the page” was the solution. It all makes sense now. I’ve been using PCs since the mid 80s and AOL almost exclusively for the Internet for 10 years, but I never knew about “refresh the page” (hold Control and hit F5 (or, hit the Refresh button on my Dell keyboard, but that doesn’t seem to work in AOL but does in Internet Explorer))! I feel a bit silly. Certain pages that I use, such as financial data, usually have a “Refresh Now” button built in; some also have a “Refresh Automatically” box to check (checking such a box will prevent AOL from signing you off of a dial-up connection if you leave your machine dormant for a while (I use dial-up as a back-up when my high speed service is not working properly)).
    Also, I’ll note specifically that, when connected to http://www.Patently-O.com and http://www.fedcir.gov (et al.), one may need to “refresh the page” for the latest articles, comments, Opinions etc.
    I think PCs and Macs and some software programs are like our brains – we only use a small percentage of their capacity, e.g., I been using word for 20 or so years, yet what I know about Word could only fill a small brochure while what I don’t know could probably fill a room full of tomes. You live and learn little by little.
    Thank you metoo.

  15. 18

    When the Examiner takes Official Notice, he has to supply evidence when asked to do so, or else make out an affidavit so as to enter his own knowledge into evidence. All of that is in the MPEP. Personally, I ask for evidence if they do anything that even resembles taking Official Notice, even if they specifically say that what they are doing doesn’t constitute taking Official Notice.

    I’m not sure whether Brand v Miller really affects prosecution, being based on an interference, but it does follow in the Dickinson v Zurko line of cases based on the APA, of which In Re Sang Su Lee appears to be a particularly useful example.

  16. 17

    Yes, traverse absolutely everything–if the client’s budget allows.

    The “official notice” of MPEP 2144.03 gets at the problem with which I have been grappling both before the KSR decision, and in the wake of the KSR decision.

    Here is my problem: it is recognized by the PTO and the FedCir that the motivation to combine may be implicit in the prior art, and some commentators have interpreted the KSR decision as doing little other than providing an acknowledgement of this fact–however, some people have interpreted the decision to mean that a finding of “implicitness” is one that does not have to be supported by evidence. This may not be an unreasonable interpretation, given that the PTO in MPEP 2144 distinguishes between cases where “the rationale may be expressly or impliedly contained in the prior art OR it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law”. This statement suggests to me at least that “implying” and “reasoning” are considered by the PTO to be two different processes.

    Put VERY coarsely, the process of reasoning is to proceed from a set of facts and assumptions to a conclusion or a postulate, which can then be tested for validity under particular conditions. It is predicated, at least in part, on the existence of facts from which the reasoning may proceed–as far as the PTO is concerned, assumptions seem to be excluded as a basis, because 2144 talks about “knowledge” only, which seems to me to exclude assumptions.

    What is the process of implying? Does it not proceed from a set of initial conditions, just as does the “reasoning” of 2144? The only difference that I can readily see between the two processes is that the result of “implying” is to reveal some condition that should (must?) have been present among the initial conditions, but that for some reason was not identified, articulated, or actively noticed. This is different than the process of “inferring”, which is a process of reasoning or reaching a conclusion that lies outside the initial conditions, as discussed above.

    Regardless, the process of “implying” requires an initial set of facts, combined with reasoning. One argues for or against the existence of an implication–it is a conclusion that is reached, not a fact in and of itself. So at a minimum, basic evidentiary facts (the “documentary evidence” of 2144.03) are required to support an implication.

    In this construction, the 2144 process of “implication” takes on the same requirements–evidence and reasoning–that are explicitly included in the 2144 process of “inference”.

    This appears to me to be specifically where the “substantial evidence rule” will come into play in the future.

    IMHO, the court may have been better off articulating a test requiring that the initial facts NECESSARILY REQUIRE the existence of the “implied fact”–the legal alternative to such “necessary implication” tests usually requires the imposition of the classic “reasonable man”. A “necessary implication” test would lead to certainty, and it would appear to me to be one step beyond the “explicit” TSM test.

    As it stands now, what is the standard? Is it a “reasonable man” standard, with the examiner representing that “reasonable man”?

    OK, I’ll shut up now.

  17. 16

    Peter Papp’s analysis and two questions are insightful. But why wait until litigation?

    Most Office Actions have more in common with children’s fiction – wishful fairy stories – than with any other kind of legal document. That’s why agency determinations can ONLY be affirmed if supported by “substantial evidence.”

    (Robert Bahr, John Doll, and others at PTO, Joe Miller and other law profs, THAT’s why there are so many continuations – there are a few scheming applicants, but they’re a tiny tiny fraction of all continuations. Abuse of continuations is 80% by the PTO, not applicants. When the PTO issues rules to deal with that 80%, then it will be time to deal with the other 20%.)

    I have trouble believing that any tribunal will give any weight to the poppycock in MPEP 2144.03 about facts established by waiving Official Notice. The Board is fairly skeptical – Ex parte Matthews, link to uspto.gov. The Board knows if they fall for this sucker bait, they’ll get reamed by the Federal Circuit. But examiners don’t know that. So as long as you’re before the examiner, you have to pretend that MPEP 2144.03 has some weight, and traverse everything.

    Put Peter Papp’s remarks in your appeal briefs.

  18. 15


    I recognize that the previous TSM requirement may have had an effect on rendering these arguments not compelling in a way, but there have nevertheless been many prosecutors lamenting that they have received 103 rejections based only on conclusory statements pre-KSR.

    One “determination” or “conclusion” that an examiner may be sufficiently qualified on which to offer a sort of “expert testimony” may be his/her determination or characterization of what the relevant art is–but again that finding or conclusion should of course never be considered as determinative, or be accepted without argument and rebuttal evidence. It should instead be another point of contention argued by prosecutors and litigators in furtherance of their client’s interests.

  19. 14

    Step back–

    Agreed that, of course, an applicant has to get important evidence on the record. I have heard some, with whom I find myself in increasing agreement, say that they treat examination primarily as a prelude to appeal. It should always be prudent at the board level to make all of the appropriate arguments, properly supported by evidence.

    However, what I am having difficulty understanding is why, in litigation, these 2 arguments do not seem to be frequently made:
    1) the examiner’s initial prima facie case was not based on evidence but on pronouncement, conclusion, argument, and opinion, and
    2) if the examiner’s pronouncements, conclusions, arguments, and opinions are accepted as evidence, then the petitioner has not had a chance to fully present his/her case, because the petitioner has not had the ability to examine the examiner’s qualifications as an expert, and the fact-finder (judge or jury) is therefore not able to assess the quality of the “evidence” presented and is unable to assign to it an appropriate weight.

    Disclosure–I am a prosecutor who provides much business advice, but who has never argued a patent case in court. I have however written numerous briefs and opinions, and draw my conclusion only from the court filings, pleadings, opinions and orders that I have personally reviewed. I have never seen these arguments articulated, but keeping a humble nature I assume that that is only a product of my admittedly limited experience in the area.

    Can anyone provide illumination?

  20. 13

    Neverrrrrr, ever let the examiner get away with taking “official notice” or otherwise injecting unsupported opinion into the record as “fact” with no supporting evidence. If you don’t make a record of your very clear objection, then the examiner’s opinion becomes a factual finding of the case and you may waive your client’s rights to contest the “fact” later, as in during infringement litigation. I’m not sure that even a CAFC de novo finding of facts could overcome such a waiver.

    If the examiner takes official notice that “George W. Bush is the greatest president the country has ever elected,” and you don’t object, that becomes a fact of the case. (This would be in an application for a method for counting chads.)

    Even if you are going to abandon and file a continuation, get your objections on the record first and then formally abandon.

    Do not let examiners get away with this nonsense.

  21. 12

    I had an examiner (unfortunately, for us, experienced in the field I was claiming in) repeatedly reject a claim as not enabled because of the “well-known” contaminant problem that would allegedly scupper our claimed method DESPITE empirical evidence in the specification that the method worked as claimed.

  22. 11

    P.S. Note also this repeated admonition from the Board of Appeals:

    “Once the Examiner has satisfied the burden of presenting a prima facie case of obviousness, the burden then shifts to Appellants to present evidence or arguments that persuasively rebut the Examiner’s prima facie case.”

    Note the word, “evidence” —taken from the conclusion of Ex parte JOAN C. TENG and THOMAS B. REMAHL (May 10, 2007):
    link to des.uspto.gov

  23. 10

    Peter Papp,

    I think the CAFC makes a clear distinction between inter partes “contested” adjudications and ex parte adjudications. In the former case, the USPTO is supposed to act as a neutral arbiter between two (or more) dueling parties regarding who was first to invent.

    In ex parte adjudications the USPTO can bring its expertise to bear in making the ultimate call as to obviousness or other issues of patentability. However, even there, the decision must be made on the record as a whole and under the preponderance of evidence rule. The PTO must articulate the “reasons” for its decision in order to preserve the Applicant’s right to appeal pursuant to 5 USC 706. If there are no articulated reasons, then the decision can be deemed as being “unreasonable”, arbitrary and capricious and thus in violation of APA section 706.

    One problem that many appelants run into when appealing to the BOPAI is their failure to put their evidence (if there is any) on the record. The “substantial evidence rule” (see 5 USC 706) can’t kick in if the losing party has put up no evidence whatsoever. See also my blog:
    link to patentu.blogspot.com

  24. 9

    “Capital filed its patent first, but Miller that Capital had derived its invention from Miller.”


  25. 8

    As Hal Wegner notes, the money quote seems to be “it is impermissible for the Board to base its factual findings on its expertise, rather than on evidence in the record, although the Board’s expertise appropriately plays a role in interpreting record evidence.” (slip op. pp. 10-11).

    This distinction makes sense to me.

  26. 7

    Funny thing!, I never connected the CAFC delayed postings and my intermittent ability to post on AOL before. I wonder if that difficulty in making the connection combination suggests that, at least for me, just an average inventor, combining two ideas (prior arts) is not too obvious after all?

  27. 6

    Further, I discovered some time ago that I cannot always post my comment on Patently-O using AOL. When that happened, I would use Internet Explorer to post.

  28. 5

    Thanks metoo,
    I finally got to the bottom of the problem which has perplexed me for a long time: If I go to CAFC using AOL, the cases do not show up as being posted for maybe hours or half a day later, but this delayed posting happens only intermittently. But if I go to CAFC using Internet Explorer, with or without then using AOL, then this case shows up (now) as you said (and it was available timely I suspect). I hate these machines — who would have thunk it. I wonder if Apples are less quirky than PCs?
    The story (so far as I now know) is, AOL has quirks on PCs.
    Thanks metoo.

  29. 4

    Lenny – you may need to refresh the page, as the case is at dailylog.html (and was there shortly after 11am this morning).

  30. 2

    An afterthought–

    Are PTO examiners to be considered as experts when it comes to the issue of the “level of ordinary skill”?

    I don’t think so. The process to be followed in an infringement analysis involves the step of “resolving” the level of ordinary skill in the art, which construction implies some lack of clarity on the issue. It also implies some investigation, fact-finding and subsequent conclusion, as opposed to an examiner “pronouncing” what is the level of ordinary skill in the art. “Resolving” the level of OSITA would seem to preclude “pronouncing”, or concluding based on no evidence, the level of OSITA.

    So I don’t think that examiners are recognized as being experts on the issue of the level of OSITA, but instead are recognized as NOT being experts on that issue. If an examiner pronounces on the level of OSITA, and that act of pronouncement is accepted by the board, the examiner should be available for deposition and examination concerning his/her qualifications as an expert on that issue, the same as presumably anybody else is subject when their testimony is offered as “expert evidence”.

    Apologies if any of the preceding is lacking in quality–no time…

  31. 1

    A comment on APA and evidentiary requirements…

    Although I have not yet read the case, it would appear from what Dennis has written that this case investigates the APA issue that I tried to raise in the previous KSR-related thread, Leapfrog.

    The requirement to base a decision on evidence should not apply only to the Board, but to examiners as well. Examiners reach conclusions and make decisions based on evidentiary findings–presumably, they could not substitute their own “engineering expertise” for evidence in reaching a conclusion of obviousness. Further, the board presumably could not rely upon or substitute an examiner’s “engineering expertise” for evidence, and a reviewing court presumably could not rely upon or substitute either the examiner’s or the board’s “engineering expertise” for evidence.

    Back to evidence 101, if I remember correctly, evidence is composed of facts that tend to prove a proposition, and has to pass tests of relevance and probative vs prejudicial value. A statement in support of a proposition that amounts to no more than a re-statement of the proposition itself (“it would have been obvious to combine A+B because it would have been common sense to combine A+B”) should be seen as having little to no evidentiary value.

    If it were otherwise, it seems to me that a sort of special exemption to the normal rules of evidence would have to be created to allow examiners, the board, and subsequently courts to dispense with the normal requirement of proof–sort of an “examiner notice” akin to the “judicial notice” concept. Judicial notice, for those who may not remember, can be used to introduce facts into evidence that are so self-evident (“obvious”) that they do not require proof–something like you don’t have to prove that Tuesday follows Monday (no international date line comments, please).

    With the supreme court talking about “common sense”, this may indeed be the concept that they are working toward–common sense being so self-evident that it is commonly understood as true by everyone under normal circumstances, and does not need to adhere to the normal standards of proof. The particular difficulty for me is that when this is applied to the patent area, the reasoning becomes circular–it is obvious because it is obvious. I am unaware of any other area of the law that invokes a concept of “obviousness” in the way that patent law does.

    TSM addressed this issue by introducing an evidentiary requirement. As I see it, that evidentiary requirement remains intact, which view seems to be supported by the Brand v Miller case comment by Dennis. The issue remaining is how that requirement may be satisfied–through normal standards of proof, or some newly-created examption thereto.

    Just some ramblings…

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