Guest Post by Richard B. Belzer, Ph.D.
The Federal Circuit has before it an unusual petition for rehearing en banc. It involves an issue that, to my knowledge, has never before been heard by this court, and it's one that hardly anyone who practices patent law even knows about. Indeed, the reason that this issue is arising now is the U.S. Patent and Trademark Office has made an extraordinary (and heretofore successful) effort to prevent inventors and the patent bar from understanding it.
For this reason, my nonprofit organization has filed an amicus brief asking the Court to uphold statutory rights that, until recently, possibly no patent lawyer knew how to defend. If the Court acts favorably, it can undo decades of rogue agency practice at the PTO.
In In re Lovin, the key issue is whether an examiner's failure to state a prima facie case of obviousness, as required by MPEP Chapter 2100, is sufficient ground for the Board of Patent Appeals and Interferences to vacate or reverse a rejection. Lovin's brief alleges that the Board abandoned its longstanding practice of vacating rejections when the examiner had not made this case, and instead required the appellant to make a substantive showing of patentability in their appeal brief—that is, to prove a negative. The amicus brief of CFPH, LLC, a business unit of Cantor Fitzgerald, offered a complementary explanation of why the Board's interpretation of PTO Rule 41.37 was incorrect.
Regulatory Checkbook, the nonprofit I manage, seeks leave to intervene because the PTO lacked any legal authority to compel Lovin to provide this information. In fact, until December 22, 2009, the PTO had no legal authority to require any appellant to comply with any of the material information collections contained in 37 C.F.R. Part 41.
How could that be? To understand why, let's take a short trip to the Office of Management and Budget, which occupies the tall red brick building across Lafayette Park from the tall red brick building housing the Court of Appeals for the Federal Circuit.
The Paperwork Reduction Act
All federal agencies are required by the Paperwork Reduction Act (44 U.S.C. §§ 3501 et seq.) to obtain prior approval from OMB for every "collection of information" they direct to the public. OMB promulgated implementing regulations that agencies must follow (5 C.F.R. Part 1320). OMB's regulations place procedural requirements on agencies to provide OMB with sufficient information for OMB to evaluate and balance the "practical utility" of the information the agency wishes to collect (i.e., benefits) against the "burden" (i.e., costs). If OMB disapproves, the agency is forbidden from collecting the information.
Everyone reading this post knows well the Board's 2008 attempt to prescribe evermore arcane rules for appeals, including even font size and page numbering for briefs. Briefs are information "collected" under the Paperwork Act (44 U.S.C § 3502(3)), and the PTO is required to obtain OMB approval before seeking that information. If PTO failed to do so, by law it is forbidden from imposing any penalty for a person's failure to comply (44 U.S.C. § 3512).
This may seem weird, but actually there's nothing unusual about it. Every year, OMB approves over 6,000 requests for approval submitted by federal agencies. Agencies comply because they know they can't enforce their regulations if they don't. Congress wrote the law this way so as to not-so-subtly encourage agency compliance. It's been very effective for most agencies, but not the PTO.
The PTO's Persistent Violation of the Paperwork Reduction Act
For almost 30 years the PTO systematically failed to obtain OMB approval for the Board's information collection requirements. What the PTO did instead was masterfully disingenuous. At the end of every proposed and final rule notice, the PTO published a statement correctly acknowledging that the information it sought to collect was covered by the Paperwork Act. Then it made two egregiously false statements: first, that OMB had already approved this information; and second, that the proposed or promulgated regulatory changes would have no effect on public paperwork burdens.
To someone familiar with the Paperwork Act, these statements were easily disprovable. OMB had never reviewed, much less approved, the information collections contained in the Board's rules of practice. Why? Because the PTO had never submitted them to OMB for review. As for the notion that the Board could amend its rules of practice without altering paperwork burdens on the public, this is simply impossible. Every time an agency issues or amends a rule, or publishes a guidance document, or changes the way it interprets an existing procedure, it alters paperwork burdens. Only changes that reduce burden don't need prior OMB approval.
A few of us discovered these false statements in the Board's 2007 notice of proposed rulemaking. We alerted the PTO to the problem in public comments so that it could do the right and proper thing: restart the rulemaking procedure in compliance with the Paperwork Act. We treated the matter as honest error that could be easily corrected.
But the PTO ignored us. Worse, it tried to execute a cover-up in hopes of bamboozling OMB and the public. First it quietly published a low-ball estimate of the never-before acknowledged paperwork burdens for the Board's appeal rules—more than $250 million per year!—and invited 60 days' public comment on its accuracy. To compete its deceit, the PTO promulgated the final rule the very next day.
I reported these machinations to OMB, which is responsible for ensuring agency compliance with the Paperwork Act. Remember when the PTO inexplicably stayed indefinitely the effective date of the Board's revised rules of practice on December 10, 2008—the very date these rules were scheduled to go into effect? Now you know why.
I wish I could tell you that the PTO has repented from such misconduct and now treats the Paperwork Act and the public with proper respect. I can't. In every subsequent public notice taken with respect to the Board's rules of practice, the PTO has chosen to misrepresent the law and its history of noncompliance. And it has hidden from the public a deeply inconvenient truth: if you submitted an appeal brief or reply brief before December 22, 2009, the PTO was prohibited from rejecting your claims for any failure on your part to supply information.
The Paperwork Reduction Act Contains an Explicit Remedy for Agency Misconduct
Fortunately, this is not the end of the story. The Paperwork Act provides extraordinary protection from misbehaving federal agencies. It says "no person shall be subject to any penalty for failing to comply with a collection of information" for which an agency lacks a valid OMB approval. (The definition of "penalty" includes the "denial of a license, privilege, right, grant, or benefit" (§ 1320.3(j)), which clearly includes patents.)
Moreover, lest readers wonder, the Paperwork Act says this public protection applies "[n]otwithstanding any other provision of law." That means the Paperwork Act trumps the PTO's regulations in 37 C.F.R. Part 41.
When can a person claim this right? It's never too late. The Paperwork Act says the protection from an illegal information collection "may be raised in the form of a complete defense, bar, or otherwise at any time during the agency administrative process or judicial action applicable thereto."
This turns out to be a huge blessing just in the nick of time for Lovin. Had he known about the Paperwork Act years ago, he could have raised it at any time before the Board, or in the Federal Circuit where they appealed the Board's adverse decision. But it's clear that he didn't know about his rights, for two reasons. First, the PTO systematically misled the public, saying that it was in compliance with the law when it was not. Second, the Board affirmed the Examiner's rejections on the ground that Lovin had failed to provide information the Board knew it had no legal right to demand.
Our Amicus Brief Asks the Court to Enforce the Public Protection Provisions of the Paperwork Reduction Act
Lovin seeks a rehearing en banc to clarify the PTO's procedural obligations for examination, but also because they now know that the PTO acted illegally in their specific case. Our amicus brief speaks solely to the latter issue. In the public interest, Regulatory Checkbook has asked the Court to rehear the case specifically to ensure that Lovin's statutory rights under the Paperwork Reduction Act are upheld and validated. It's unfortunate that Lovin did not know about his rights earlier, and in that there is a lesson to everyone who practices patent law.
Still, no one should have to see past an agency's repeated false statements to learn about his legal rights. And no agency should be allowed to abuse the public the way the PTO did to Lovin, and to countless others on whom it has imposed penalties for failure to comply with unenforceable rules. Fortunately, the Paperwork Act contains strong public protections that give Lovin the unambiguous right to be heard on this crucial issue, even at this late stage of proceedings. It's now up to the Federal Circuit to enforce the law.
Attachments
- Download FINAL Petition for Rehearing en banc
- Download FINAL Brief of Amicus Regulatory Checkbook
- Download FINAL Brief of Amicus CFPH
______________________
Richard B. Belzer earned his Ph.D. from Harvard in 1989. From 1988 to 1998, he was a staff economist in the Office of Information and Regulatory Affairs, the statutory office within the Office of Management and Budget that implements the Paperwork Reduction Act. Since 2001, he has directed Regulatory Checkbook, a nonprofit organization dedicated to maximizing the quality of scientific, technical, and economic information used in regulatory decision-making. A major part of its work involves monitoring federal agencies' compliance with the procedural laws and presidential directives that were enacted to advance these same goals. Dr. Belzer can be reached at Belzer@RegulatoryCheckbook.Org.
The Man, “Clinton era.” Pushing patents? Perhaps. But you do have to give some nod to the Republican-appointed judges of the Federal Circuit who gave us Alappat and State Street Bank.
Rich, Rader, Newman, Lourie.
The usual culprits. Even though Rich has now assumed “legend” status, Rader, Newman and Lourie remain and are committed Kool Aid drinkers. They even have the ear of the Supreme Court Republicans, save, perhaps, for Scalia.
Interesting on the politics here.
Thank you for your response. I have your contact information. Please give me a bit of time to organize things.
Pacifist —
You’re right, the PTO’s scoff at law in the area of restriction practice is especially breathtaking.
Give me a call, if you have a good case and are willing to pursue it, I’ll help you. Even better if it’s a small business within the scope of the Equal Access to Justice Act.
I have been wondering if there is a Constitutional Law theory that can be use to force the USPTO to comply with the Statutes and Regulations. It seems like there should be…
It would be nice to have the PTO stop imposing non-statutory and non-regulatory requirements on applicants.
The ones I see the most are:
“…these inventions listed in this action are independent OR distinct…”
However, 35 USC states, “If two or more independent AND distinct inventions are claimed in one application…”
It is just not reasonable to say that the word “and” means “or”.
Also, there is no requirement I am aware of which states that an applicant has to indicate in the record which claims read on the elected species. Why would anyone want to make such an admission in the record?
These are not show stoppers, but it is just annoying to think that the USPTO believes they can do as they please. Perhaps they do this on purpose to collect the additional fees… But that would be unseemly.
Section 1983 won’t work. It’s only for state actors, not federal.
Dear Richard Belzer,
I really must say I’ve enjoyed your work on Law & Order: SVU.
Thanks!
I have totally had it. I have wanted to sue the PTO for takings under the Fifth Amendment and Examiners for violating the civil rights of applicants under Section 1983 when they fail to follow the law. However, I think it is easy to simply change practice areas. It is clear that the push in patents was a Clinton era achievement to foster economic growth. Now it is being used to suppress freedom of action much in the same way that the Copyright Act is being used to suppress free speech.
There are times I think that the USPTO operates to foster applicants to file while preventing issuance of patents.
anon
You really just don’t get it, do you?
Don’t worry, sockie. I get it. The USPTO is an evil patent-hating organization that must constantly be attacked for its failure to grant more patents. This is especially important now, when the PTO is issuing patents at a greater rate than ever before. Also, even though it’s cheaper to obtain patent protection in the US than just about any other developed country in the world (provided that you’ve actually invented something), the US patent system is rigged against those “poor” “small” entities whose average wealth and annual income is at least in the top 5% percentile (prove me wrong).
So, yes, I definitely get it.
MM, Mal, Malcolm, Malcolm Mooney,
You really just don’t get it, do you?
I’m sure Gene will let you post a couple of times before deleting your blubbering and blathering.
Like I said: it’s an echo chamber.
Patent Txxbxgger Central.
Cripes, one of his regular guest posters tried to defend the “Nicholas Cage’s fictional character infringed my patent” lawsuit. Pitiful, really.
start naming some processes that are performed without the use of a computer and have even marginal relevance is today’s society.
How many processes do I have to list before we can all agree that you are a total dweeb, sockpuppet?
Would ten be enough? Let me know.
We want rigorous examination.
BWAHAHAHAHAHAHHAAHAHAHAHAHAHAHA!!!!!!!!!!! Please. You’re killing me.
I read that thing, but, I can assure you, I was about the same way online (and offline as a matter of fact) as I am today way before I got leet powaz. And I really do try to control being an ars e to the attorneys.
“C’mon, sockie. Surprise us for a change.”
Don’t worry, I’m sure Gene will let you post a couple of times before deleting your blubbering and blathering. After that, good luck.
Wow nice – I can practically read
Let us know when you achieve 100% competence. We’ll put a shiny gold star next to your name.
“And while you are facepalming and calling Mr. Boundy a Tool, just remember the substantive effect of his actions in defeating the power grab of the Office.”
Did he appoint Kappos?
Because that’s the only reason anyone prevailed in Tafas. Well, except for that small grounds that were upheld by the panel.
“This is exactly the type of area that his expertise should be respected, and yet you continue to ignore what he has to say.”
I’ve given him more respect than anyone making such an outrageous claim deserves, he should be happy with that. Overjoyed even.
Try to use your brain, Shillysockie.
I don’t care about Lovin’s claims or the manner in which those claims were tanked.
I do care about PRA trolls who pretend that they are performing a “public service” by helping the likes of Cantor Fitzgerald obtain gxrbxge patents.
Now, please run along to GQ’s blog and fxrt in the echo chamber with the rest of your sockpuppets.
“Congrats. You’ve just won the award for Longest Goalpost Move of the Year AND the award for Most Obvious Goalpost Move of the Year.”
Dude, start naming some processes (besides your patented process of picking your nose with your toes) that are performed without the use of a computer and have even marginal relevance is today’s society. This means you can exclude those famed methods of “swinging on a swing” or “excercising your cat with a laser.” We live in 2012, not 1952. Computers are ubiquitous.
“that’s why the sockpuppets engage in sockpuppetry.”
So says that longest running sockpuppet on this blog. Nice try, grow a set and use your real name, and maybe we’ll be impressed.
“There’s no doubt that the USPTO could examine patents with greater rigour and adherence to the rules.”
Hello???? That’s what we want. We want rigorous examination. Any attorney who is looking out for their client’s best interest wants better examination. A more rigorous examination = a stronger patent. A more rigorous examination = less guessing about what the Examiner means and either specifically directed argumnts and/or claim amendments. These are not possible when the Examiner simply blows off an explanation of the art being cited and why it is being cited.
“the way that employees are trained and managed, that is going to be the case for many, many years.”
FYI 6 — that was a shot against you and your ilk.
Wow nice – I can practically read the “I know you are but what am I” intonation resonating in this “above 65% of us who post with consistent pseudoynms” piece of g_arbage reply.
How F_reaking typical.
tag fix
Recommend Gene Quinn’s IPWatchdog
C’mon, sockie. Surprise us for a change.
NI: almost every modern industrial process
Congrats. You’ve just won the award for Longest Goalpost Move of the Year AND the award for Most Obvious Goalpost Move of the Year.
I’d say that the average IQ of the sockpuppets here is about 65% that of those of us who post with consistent pseudoynms. Of course, that’s why the sockpuppets engage in sockpuppetry: it’s much harder to write someone off as a dissembling f ool when they are constantly switching IDs.
Returning to my original point, the Lovin patent is a computer-implemented process/system. CFPH’s IP is pure dewdew.
There’s no doubt that the USPTO could examine patents with greater rigour and adherence to the rules. Unless here is a major change in the way the USPTO is funded and the way that employees are trained and managed, that is going to be the case for many, many years. Unfortunately for whiners like Belzer and Boundy, that lack of rigour nearly always works in the applicant’s favor and not the other way around. The evidence for this can be viewed every Tuesday morning at 12:00 am.
Belzer:
I have to say that I am disheartened by the childish tone and lack of substance in so many of them. I attribute this to anonymity.
How do you explain your own childish views then?
Paul/David: In my opinion, the application of 37 CFR 1.105 in Star Fruits is a terrible example of an agency overreaching its authority. That the Federal Circuit approved the use of 37 CFR 1.105 in this manner still boggles my mind in how this provision could be abused and the applicant is put on the “horns of a dilemma” of complying with what is an “abusive” request or risk losing the application through abandonment for refusal to comply. I frankly detest the mere existence/availability of 37 CFR 1.105.
Many of Judge Dyk’s opinions puzzle me as to his proffered reasoning to support them, 7. Witness, for example, his lame reasoning in the Marine Polymer Technologies to support “intervening rights” applying to unamended claims based on statements made during reexamination which is squarely in conflict with the express words of the reexamination statute (35 USC 307(b)), as well as the views he expressed in Intervet Inc. v. Merial Ltd. doubting the patent-eligibility of “isolated” nucleotide sequences (an issue that wasn’t even raised in the appeal). He, along with Judges Bryson and Moore, just make me wonder sometimes.
Thanks for the post, anon. I almost fell over in uncontrollable laughter at your comments! Humor is definitely good for my soul. And have a nice weekend, anon.
If you had performed some due diligence, you would have noticed this prior to your particular posting.
Be that as it may, I will take issue with your attribution to anonymous commenting. Some of the most egregious gamesmanship, immaturity and lack of substance also come from those who use their real names.
I respect your choice of limiting response to comments attached to real identities, but be aware that you will have both type I and type II errors with your response pool.
Recommend Gene Quinn’s IPWatchdog.
link to cnn.com
They nailed it.
“In the interest of conducting a responsible conversation with those interested in having one, I will endeavor this weekend to respond to thoughtful questions and comments.”
Richard, you should have known better to try to attempt an intelligent conversation with this group. Between 6 and MM being the trolls they are, you’ll never get a real conversation going. There are other forums to use that are better than patently-o. Since Dennis has failed to reign in this blight, I usually go elsewhere. I suggest you do as well.
This morning before breakfast I read most of the comments that had been posted. I have to say that I am disheartened by the childish tone and lack of substance in so many of them. I attribute this to anonymity. The ability to post anonymously has certain benefits, such as eliciting useful information that otherwise would not be disclosed. It also entails costs, such as permitting people to write things they would never say if they knew they would be held responsible. In the anonymous comments I read this morning, the costs clearly outweigh the benefits.
In the interest of conducting a responsible conversation with those interested in having one, I will endeavor this weekend to respond to thoughtful questions and comments, provided that they are attached to a real identity. If you have a question or comment that deserves confidentiality, please use the email address at the bottom of my post.
EG,
This is the type of “critical thinking” that exemplifies MM.
A primary example of why he is considered a nuisance and has nothing of consequence to add to most any thread.
The fact that he is a prolific poster only highlights the “empty wagon” syndrome. A full wagon tends to be quiet – an empty wagon tends to be loud and raucous.
The lack of ability to stick to the actual topic instead of going off on a typical frolic only exemplifies his lack of rational control.
He is only too proud to tell you that he has continued in this manner for years on end. There is no hope of changing him or his style of posting, so the options include:
– mocking him
– making an example of him
– showing the ridiculousness of his positions
– letting him play the fool
– goading him to be even more of a joke
– outright ignoring the more extravagant larks and lastly,
– trying to urge him to maybe join a thread that he may possibly add some minor value.
“Patenting is a game for the elites, much like “bond trading”, and while it may attract the usual skimmers and grifters who professionally or habitually sniff out opportunities for windfalls wherever they may lie, the practice is completely irrelevant to the lives of the overwhelming majority of the public. And rightfully so. Most people are too busy trying to put food on the table and pay their rent to worry about such nonsense.”
Hey, MM, you’re mentally hyperventilating again. The subject under discussion is whether what the Board is doing in the Lovin case is playing fast and very loose with the procedural rules. Belzer and Boundy make a strong case that they are. You may not agree with their point of view (I do agree with it), but please do stick to the subject being discussed on this thread.
“But as you attorneys should know all too well, your chances of winning are slim and none.”
Funny that – they said the same thing about Tafas.
And while you are facepalming and calling Mr. Boundy a Tool, just remember the substantive effect of his actions in defeating the power grab of the Office.
This is exactly the type of area that his expertise should be respected, and yet you continue to ignore what he has to say.
So sorry that it doesn’t fit your views.
Thanks again, Mr. Boundy.
And the single largest Red Flag is the Dates are on the Faked Patent (Oath) for 08,677,556. The USPTO would not allow an Oath to not be cleaned up.
Miss Turner are you FOS or do “YOU” have FAS?
o m g… /facepalm.
Courts gonna white wash this till it’s a shiny shiny shiny white.
Well, at least I understand the argument. I probably picked up on it awhile back and then promptly forgot about it, but I’ve picked it up again. It is truly lulzworthy.
“Read Belzer’s brief, then read the statute and regulations.”
I did read his brief. I’m not going to bother to read the statutes, because, even IF, that were to be correct, congress would pull something like they did with the retroactive problem with the APJ appointments that happened a few years ago. Something about them not being appointed by the actual secretary of commerce or something iirc. And that’s IF the courts do not whitewash it.
In any case, gl you guys. I’m one to fight against the government on these crazy theories myself. But as you attorneys should know all too well, your chances of winning are slim and none.
I suspect rehearing denied as well. Surely they can find another appellee who was recently Lovin-ized by the Board and try again.
“Is that what you guys are talking about and trying to argue with regards to the PRA? That [before December 2009] there is no way for [an appellant before] the board to have waived any arguments at all?”
That’s EXACTLY what the PTO’s failure to obtain PRA clearance means. Any information, at “any time,” in “any reasonable manner.” Non-waiver extends through proceedings at the Federal Circuit.
It’s not absurd. Congress passed the original PRA in 1980, and found that agencies were not following it. So Congress strengthened the PRA in 1995 to make sure agencies would follow it. Read Belzer’s brief, then read the statute and regulations.
Then read 5 U.S.C. § 552(a)(1).
Actually you know what 9, I just reread the petition for rehearing and read it in depth this time instead of skimming. And I think that they’re actually arguing something different than I had thought they were originally arguing with regards to the PRA. I thought at first they were arguing that the PTO had required them to submit some info that is required under new rules but not under old rules and then penalized them for not doing so. It seems like they’re arguing that, since the BPAI instituted new rules, they now get to make these new arguments (i.e. the arguments are not waived) about a failure to provide notice. And they get to do that merely because there was a change in the rule, not because the old rule would have done them different. To that I say:
L u L z
Is that what you guys are talking about and trying to argue with regards to the PRA? That during the 2008-2009 period there is no way for the board to have waived any arguments at all?
I see that argument getting about as far as nowhere. What did the previous rules at the Board require? The ones that were in place in 2008 were substantially the same as the ones we have now in this particular section were they not? If they want to be judged under the old rules because of the PRA that is no problem. But they can’t simply cite the PRA and say “hah, you can’t waive any of our arguments because you made a new rule even though it would have been waived under the old rule too!” That is absurd. I can 100% assure you courts will white wash the sht out of that.
Then what? Conspiratize 4th?
You know, the PTO is headed by a lawltard these days, if you have some valid legal argument, you would think that a straight shooter like him would not oppose you.
Or do you suppose Davi K is the mastermind of this conspiracy?
The PRA governs information. § 3512 and § 1320.6 permit you to submit “information” “at any time,” “in any reasonable manner.”
All the relevant statutes, etc. are linked in Dr. Belzer’s article. Suggestion: read first, think second, fulminate third.
Courts take these things much more seriously than the PTO does. Don’t confuse the standard that’s trained into PTO personnel with the standard that is used everywhere else.
“There is no Federal Circuit case law stating otherwise.”
Try reading the briefs in the PDF links above. You’ll find plenty of Federal Circuit case law.
“Are you EFN serious?”
Unfortunately, he is. Not because he knows better, he doesn’t.
Unless we are talking PURELY hand made products, almost every modern industrial process involves some type of automatation which invariably involves some type of computer. To MM, that is enough to make it a “software claim.”
10/924,633 is the app number for in re lovin’.
And actually 7 after re-reading the entirety of the petition for rehearing it does appear that now, after appeal to the BPAI the applicant does want to argue that there was no notice. Too bad that argument is now waived 🙁 Additionally, it appears that the dissent picked up on the fact that this all might have been a simple misunderstanding of the arguments. The dissent feels as I would have had the overly concise argument made not been so clearly something which is not what the applicant wanted to argue.
All in all, this is a simple case of a lame attorney argument which was too concise, that wasn’t specific enough to get his point across, and then other bodies misinterpreting his argument to be something other than he perhaps intended it to be, but never bothered to make it.
Meh, like I said, loser attorneys and all that. It isn’t that fking hard to make a note of a lack of notice. It takes like 3 words. No notice given. Or… “insufficient notice given”. Instead he argued something which is technically different and is petitionable. His bad.
“most modern processes involve a computer somewhere
Evidence, please.”
Are you EFN serious?
Name one power generation system that feeds any industrial plant that does not involve a computer somewhere.
Name one midsized business in any art area that can opeate without a computer somewhere.
You are a F_reakin joke.
For someone who “doesn’t care,” MM, you are posting quite a few comments…
“Well, Dave is a well known tool”
BINGO – consider the source and award Dave the prize!
“First of all, no such argument was made.”
False.
“because an explanation is present in the Exam Ans.”
False.
What case are you looking at 6?
I did not say that the argument about the paperwork reduction act was waived tard. Did you see that I was responding to a specific argument being made by someone that was not related at all to the PRA argument? I guess not, because you tardedly posted that post.
It may well be that the PRA is totally violated on, and it may well be that there is tots a conspiracy on the part of the PTO to make such occur (despite them spending millions of dollars each year trying to comply with such nonsense).
But, it there is, the courts will probably white wash it. In a similar vein, tax analysts will totally try to collect taxes from income that they have 0 evidence that you ever received. They do it by extrapolating your income from the previous years on record. Insane isn’t it? But, the courts whitewash this lack of evidence. Such is the nature of the corrupt monstrosity we call government in this day and age.
“That is the same argument. There is no requirement for the arguments on appeal to be verbatim the same arguments before the examiner.”
Nah bro, not the same argument. Even David Boundy will tell you that you are in error, as he did down below. Note that this is DAVE MO FIN BOUNDY, YOUR CHAMPION IN THIS ARENA. As Dave correctly notes, the issue that was explicitly argued is petitionable, not appealable. Although he has a wacky theory about how arguments should be the same in some circumstances, and perhaps even in this situation. Well, Dave is a well known tool, and will come up with some crazy nonsense theory to help out his fellow attorneys anytime he can, but, to be sure, it isn’t that frakin hard to simply note that you do not feel as if you were put on notice. Then the board can note that you were, and affirm the rejection np. Or, on occasion, they may hold that you were not and reverse, also np. There is no need to have people cluttering up the system trying to make things complicated by trying to argue one thing whilst explicitly arguing something else. And even less reason to tolerate it.
But even if it was (intended to be) “the same argument”, the examiner and the board interpreted the argument differently. If they have a problem with that interpretation of the argument, then they could bring that misunderstanding up. To date, they have not. Note the specific language they use in their request for rehearing. They are very careful to avoid making that argument even after they lost on appeal. They specifically appear to NOT WANT to make the argument you want them to make.
“How do you get “applicant’s rep was satisfied” from “appealing to the Federal Circuit”?”
No substantive reply in the reply brief. He did not acknowledge the explanation that he just noted was missing. Indeed, he does not say “the office is just now providing an explanation in the Examiner’s Answer and it wasn’t presented before and I wasn’t on notice to reply! WAH WAH WAH!” or anything of the sort. He simply says he has no comment. In other words, he is appeased by the added explanation.
From the perspective of the board, he 1. did not argue what you want him to have argued, and 2. had ample opportunity to do so. That argument is waived sir.
Now if you’ll be so kind as to excuse me I have one more applicant to hunt before the end of the fiscal year.
“that argument was waived sir”
Not a big fan of statutes, huh? 44 U.S.C. § 3512 and 5 C.F.R. § 1320.6 provide “Notwithstanding any other provision of law, no person shall be subject to any penalty [if the agency failed to comply with its obligations] … The protection provided by this section may be raised in the form of a complete defense, bar, or otherwise at any time during the agency administrative process or judicial action applicable thereto.”
The D.C. Circuit stated, in Center for Auto Safety v. NHTSA, 244 F.3d 144, 150 (D.C. Cir. 2001), “[B]y explicitly allowing parties to raise a Paperwork Reduction Act claim at any time during ongoing proceedings, the [PRA] ‘prevents an agency or court from refusing to consider a [PRA] argument on the ground that it is untimely.’”
In the patent context, the PRA holds the door open for any argument for substantive patentability or procedural lapse — anything that could have been raised during agency proceedings — for appeals briefed before December 2009.
Congress was pretty definitive in stating its wish that agencies comply…
Sadly, unless the ABA/AIPLA/IPO filed an amicus – and I have not heard of any of them doing so – the request will likely be denied.
Newman dissent would be nice.
“USPTO rules don’t trump Federal Circuit case law. When you grow up to be a real attorney, you’ll understand that.”
There is no Federal Circuit case law stating otherwise. Federal Circuit case law, as a matter of fact, supports my position.
See In re Lovin.
L u L z
Mega L u L z. Sockpuppet FAIL.
My prediction, request for rehearing denied.
With a Newman dissent! 😉
“It might not [satisfy 132], but that argument was waived sir 🙁 That issue is not on appeal. In its place applicant argued a lack of explanation.”
That is the same argument. There is no requirement for the arguments on appeal to be verbatim the same arguments before the examiner.
“The examiner even obliged the applicant’s rep and the applicant’s rep was satisfied it appears.”
How do you get “applicant’s rep was satisfied” from “appealing to the Federal Circuit”?
My prediction, request for rehearing denied.
“HOWEVER, an appeal brief that complains that an examiner was silent is enough to move the ball into the Board’s substantive court. ”
First of all, no such argument was made.
Second of all, not really bro. What you need is an argument of insufficient notice.
“But the Board can’t do what it did to Lovin, affirm when neither the examiner nor the Board explain all elements of a rejection.”
First of all, sure they can.
Second of all, that isn’t the instant case because an explanation is present in the Exam Ans.
most modern processes involve a computer somewhere
Evidence, please.
this isn’t a software claim
Right. It’s a “system” for welding … that requires a POWERFUL COMPUTER BRAIN to do some calculations. Completely different!
“No – it doesn’t even satisfy the 35 USC 132 standard in Jung.”
It might not, but that argument was waived sir 🙁 That issue is not on appeal. In its place applicant argued a lack of explanation. The office obliged.
From page 2 of the OA:
1. Claims 1-24 and 30-34 are rejected under 35 usc 103(a) as being unpatentable over blah blah.
Blah blah shows blah blah.
^That’s your grounds bucko. Item to item matching is not required, save by the PTO itself, by its employees. The examiner using a short form rejection does not mean that no grounds of rejection were provided. I know, I know, I’m blowing your mind, and you’re coming to terms with being re tarded, but, such is life.
Now, that is not to say that all recitations of a grounds of rejection are sufficient to put applicant on notice. And applicant can argue such is not the case for any given recitation of a notice of grounds of rejection. That is not at issue in this case. Applicant could have raised that issue, but apparently chose not to.
“OK genius – how do you argue against the examiner’s silence?”
You say you do not feel as if you received sufficient notice. Je sus son, it isn’t that hard. Notably, in this case, the applicant did not feel that way. Probably because the relevant portions were all right around the already cited parts and that argument would be technically false for the applicant’s attorney to make. Instead, he argued no explanation. Which was technically true, but substantively irrelevant. The examiner even obliged the applicant’s rep and the applicant’s rep was satisfied it appears.
“Great – you and Dyk should live on an island somewhere where you can hunt applicants for sport”
I already hunt them! Except I do it from the side of I-95.
“You’re forgetting two things:”
Nah I didn’t forget. I just noted that the applicant neglected to argue such.
“PTO not being able to interpret the rules THAT THEY MADE. Ridiculous on its face.”
Just curious – who made up the Patent Term Adjustment rules?
“You didn’t read correctly. Read the briefs.
The examiner was absolutely silent on the dependent claims in the last Action. Lovin’s appeal brief complied with “the rules” (at least the plain text of the rules, and as the Board has interpreted the rules for at least 10 years).”
Alright I just looked over the case. This is what I see.
1. an after non-final argument by applicants not directed specifically to the deps.
2. A final that sets forth a notice of a grounds of rejection of all claims. The examiner lumps them all up, and perhaps has neglected some item to item matching (I think this later is true but did not confirm it). This is bad practice on the examiner’s part but not insufficient to make a rejection. Notice of the grounds of rejection is, specifically, given.
3. Applicant argues, for the first time, in the appeal brief that the office did not explain some things, but specifically declines to argue that a notice of a grounds of rejection was not given or was insufficient to put them on notice of the grounds of rejection. (this being because notice was given, even though it was shty and PERHAPS OR PERHAPS NOT insufficient).
4. Instead of holding applicant’s arguments with respect to the deps to be spurious on the merits and thus the reply non-responsive on the merits, as would have been proper (lack of “explanation” is not a substantive issue), Examiner is courteous and takes time out of his day to oblige applicant’s representative and provides an “explanation”.
5. Applicant declines to file anything of substance in reply, indeed contending that everything on the record has been responded to.
6. Case goes to the board, all appears in order, case is affirmed as is proper.
7. Case goes to the Fed Circ and is affirmed as is proper.
In short, applicant’s rep, rocket scientist that he is, fed up, purposefully or not, by failing to argue that insufficient notice was given to properly put applicant on notice of the grounds of rejection for the deps. You’ll note that he SPECIFICALLY did not argue that. Not only that, but he did it in at least two whole responses. He ck, he does not even object to the office having included more explanation in his reply brief. Indeed, probably done to further avoid engaging on the merits, which is what all this is really about, and which is specifically all but required by the interplay between rules IF the applicant wants to separately argue deps.
In short, loser attorneys are loser attorneys. Surprise, surprise.
There is nothing at all that particularly stands out about this case other than the attorney having taken time out of his day to argue some nonsense about the PTO not being able to interpret the rules THAT THEY MADE. Ridiculous on its face. And not only that, but the rule in question is quite clear on the point that the office is “interpreting” such that little if any “interpretation” is needed. Sanctions are in order, nothing more. Frivolous arguments backing up our court system.
In even shorter, just another pingerdoodle “jer k off” with a side of outrageous argument thrown in.
Why do you require me to set you straight on this? I’m sorry, are you a pingerdoodle wannabe wantin’ to get his appeals affirmed?
“I think you mean it eviscerates the imaginary portion of the prima facie case requirement which you dreamed up one day whilst high.”
No – it doesn’t even satisfy the 35 USC 132 standard in Jung.
“The examiner did provide explanation. The only question is whether or not it was all that great of one.”
No, read the file wrapper. The OA did not contain any discussion of the dependent claims AT ALL. The dependent claims were only discussed in the Examiner’s Answer, after two office actions, a notice of appeal, and an appeal brief.
“However, if I read correctly, the applicant didn’t separately argue the deps until appeal, where, you’ll notice, there are special rules that govern the proceedings before the office. If you don’t follow the rules, you’re not going to get the board to hear your args.”
OK genius – how do you argue against the examiner’s silence? Shoot arrows into the dark, as Plager said in Oetiker? Do you think that Bd.R. § 41.37(c)(1)(vii) trumps In re Jung? Do you think that, as a practical matter, it makes any sense to force an applicant to argue against a rejection that has never been discussed or explained?
“Theoretically yes, but applicants can stop that quite easily. Theoretically I could also reject every single dependent claim (indeed ind too) there ever was under only the grounds of 102 with my having taken official notice that the sky is blue. And then applicants would be required to respond using the reply brief if they explicitly chose not to discuss those deps prior to the answer.”
Great – you and Dyk should live on an island somewhere where you can hunt applicants for sport.
“Did you already have notice of the grounds of rejection? If yes, then cool. If not, then appeal it under those grounds.”
You’re forgetting two things:
1. Jung: “35 U.S.C. § 132 […] is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).”
2. Leithem: “Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”
It is “insufficient” to “mere[ly]” provide “the same statutory basis and the same prior art references”, because then “rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”
“There’s this thing called a telephone that the applicant may use if he is confused. This service is provided as a courtesy to the applicant.”
Telephone interviews are not a crutch to enable and encourage examiners to fail to make a complete and proper office action.
See 37 CFR 1.2.
“If he is confused, it means that the rejection wasn’t written clearly enough (i.e., the examiner was hurting for a count and slapped together a rejection in an afternoon and the primary rubber stamped it because he was too busy with his fantasy football league to care).”
Maybe, or maybe he’s just a tard. There’s lots of them running around. The question is: was he put on notice of the grounds of rejection?
“USPTO rules don’t trump Federal Circuit case law. When you grow up to be a real attorney, you’ll understand that.”
There is no Federal Circuit case law stating otherwise. Federal Circuit case law, as a matter of fact, supports my position.
See In re Lovin.
L u L z
My predicition – J. Newman writes a majority opinion that puts J. Dyk and the BPAI in its place.
Careful David,
Your careful and thoughtful posts may well earn you that horrific (although honoric is more apt considering the source) label of “Tool.”
BTW – nice job David, nice job Richard. Those of us actually in the trenches appreciate this high level and high potency work done on behalf of the patent bar.
You correctly note that there’s a ghastly bureaucratic shell game going on between the Board and the Petitions Office. A lot of the chaos at the PTO arises from this mutual refusal of both sides of the PTO to supervise examiners.
The Board is correct, a failure to explain is a non-appealable procedural issue. The Board, unlike an Article III court, has no Mandamus Act, Administrative Procedure Act, or All Writs Act to give it jurisdiction. See several of my Notice and Comment letters, e.g.,
/media/docs/2007/11/boundy.pdf Attachment E starting at page 67
HOWEVER, an appeal brief that complains that an examiner was silent is enough to move the ball into the Board’s substantive court. As Lovin’s brief explains, when the examiner didn’t do his/her job, the Board can vacate/remand, or the Board can put on its hat of first instance and examine from scratch. But the Board can’t do what it did to Lovin, affirm when neither the examiner nor the Board explain all elements of a rejection.
There’s a nice article on this at
link to allthingspros.blogspot.com
Paul —
Star Fruits didn’t invoke the Paperwork Reduction Act. Just because an agency action passes muster under one statute doesn’t mean the agency gets a pass on all others!
Let’s look at an analogy. Suppose that the PTO had just skipped the procedures required by § 552(a) and § 553 of the Administrative Procedure Act when it promulgated the appeal rules in 37 C.F.R. Part 41. Suppose the PTO had just popped a bunch of guidelines for appeal briefs into the MPEP using the word “must”, and then started demanding that applicants comply with those “rules.” You’d easily point to § 552(a) and say “the PTO can’t enforce those rules!”
Same here. 44 U.S.C. § 3512 and 5 C.F.R. § 1320.6 say that if an agency tries to promulgate rules governing submission of information to the agency without following the procedures mandated by 44 U.S.C. §§ 3506 and 3507 and 5 C.F.R. Part 1320, then you can ignore the agency’s rules, and the agency may not impose any penalty.
That’s generally the way the various administrative law statutes work: Congress can’t send an agency to jail or fine an agency that cheats. The only reasonable penalty is to forbid the agency from enforcing its rule.
If he is confused, it means that the rejection wasn’t written clearly enough
Because people who apply for patents are invariably reasonable and fair-minded.
Thanks for the laugh, Shillywilly.
“Yup.”
So the process nominally includes a computer … hello, most modern processes involve a computer somewhere … this isn’t a software claim (i.e., a “humongeious computer brain”).
6 –
“The examiner did provide explanation. The only question is whether or not it was all that great of one. However, if I read correctly, the applicant didn’t separately argue the deps until appeal, where, you’ll notice, there are special rules that govern the proceedings before the office. If you don’t follow the rules, you’re not going to get the board to hear your args.”
You didn’t read correctly. Read the briefs.
The examiner was absolutely silent on the dependent claims in the last Action. Lovin’s appeal brief complied with “the rules” (at least the plain text of the rules, and as the Board has interpreted the rules for at least 10 years).
“Did you already have notice of the grounds of rejection? If yes, then cool. If not, then appeal it under those grounds.”
At the time of the appeal brief, Lovin had no notice of the grounds of rejection. Lovin appealed on that ground. The Board changed the rules on the fly, and demanded that Lovin try to read the examiner’s mind to find the “substantive” basis for patentability.
“There’s this thing called a telephone that the applicant may use if he is confused. This service is provided as a courtesy to the applicant.”
There’s also this thing called the law, in particular the burden of going forward. The examiner has to go first.
“a failure to explain a CORRESPONDENCE, prima facie or otherwise is a non-appealable procedural issue.”
Except that the petitions branch will say its a substative issue … but you argue at the BPAI, they’ll say it is a procedural issue.
The petition branch is right in this instance, but regardless, no one at the USPTO wants to enforce 37 CFR 1.104(c).
Re only: “In fact, until December 22, 2009, the PTO had no legal authority to require any appellant to comply with any of the material information collections contained in 37 C.F.R. Part 41.”
? What about 37 CFR 1.105 and the Fed. Cir. Star Fruits decision sustaining it? Star Fruits S.N.C. v. U.S., 280 F.Supp.2d 512 (E.D.Va. 2003), aff’d, 393 F.3d 1277 (Fed. Cir. 2005).
“There’s this thing called a telephone that the applicant may use if he is confused.”
If he is confused, it means that the rejection wasn’t written clearly enough (i.e., the examiner was hurting for a count and slapped together a rejection in an afternoon and the primary rubber stamped it because he was too busy with his fantasy football league to care).
Also, let me direct you to 37 CFR 1.2 about business being conducted in writing. If the rejection was so deficient as to require a phone call, then you haven’t met that rule.
“there are special rules that govern the proceedings before the office. If you don’t follow the rules, you’re not going to get the board to hear your args.”
USPTO rules don’t trump Federal Circuit case law. When you grow up to be a real attorney, you’ll understand that.
QQ QQ – pass the tissues please
“It is difficult to describe how crazy Dyk’s reasoning here. It eviscerates the prima facie case requirement, whereby the examiner must go first, and then the applicant must respond. ”
I think you mean it eviscerates the imaginary portion of the prima facie case requirement which you dreamed up one day whilst high.
“It doesn’t even satisfy the examiner-friendly standard of In re Jung. Instead, in Dyk’s world, for dependent claims, the applicant must go first, and only then must the examiner provide any explanation. ”
The examiner did provide explanation. The only question is whether or not it was all that great of one. However, if I read correctly, the applicant didn’t separately argue the deps until appeal, where, you’ll notice, there are special rules that govern the proceedings before the office. If you don’t follow the rules, you’re not going to get the board to hear your args.
“In Dyk’s world, the PTO could routinely provide NO EXPLANATION WHATSOEVER until the examiner’s answer, and then applicants would be required to respond using the Reply Brief.”
Theoretically yes, but applicants can stop that quite easily. Theoretically I could also reject every single dependent claim (indeed ind too) there ever was under only the grounds of 102 with my having taken official notice that the sky is blue. And then applicants would be required to respond using the reply brief if they explicitly chose not to discuss those deps prior to the answer.
“Of course – the examiner’s answer is way, way, way to late for the examiner to explain any rejection. ”
Did you already have notice of the grounds of rejection? If yes, then cool. If not, then appeal it under those grounds.
“Why should the applicant go through all of that trouble just to finally learn how the examiner is rejecting most of the claims in the application?”
There’s this thing called a telephone that the applicant may use if he is confused. This service is provided as a courtesy to the applicant.
Also I’d like to take a minute to tell the CAFC they did a good job in this case.
It is as if Pingerdoodle and Dave Boundy got together and had an evil confused lovechild. His name? Dr. Belzer.
Not that I don’t think that the paperwork reduction act is the best thing evar and/or do not think that the PTO may have flubbed compliance in this or any other case, but I do doubt that there was a conspiracy to support this massive conspiracy theory.
Also, just fyi, a failure to explain a CORRESPONDENCE, prima facie or otherwise is a non-appealable procedural issue.
Seriously? D shouldn’t let just any jackwagon post whatever nonsense as the main article.
In this thread I see nothing more than a petition to submit a conspiracy theory for review and an application upon which justice was swiftly delivered.
In sum, I wish you cooky bas tards luck with your conspiracy theory.
MM – what problem do you have with that CFPH claim? The problem (101, 102, 103, 112?) isn’t apparent on its face.
What too few people realize – even in the amici briefs that I have read – is that Dyk’s opinion essentially justifies the PTO’s late explanations of rejections in the Examiner’s answer due to:
A. the fact that the applicant didn’t previously argue the dependent claims during prosecution
B. the fact that the applicant can file a reply brief
It is difficult to describe how crazy Dyk’s reasoning here. It eviscerates the prima facie case requirement, whereby the examiner must go first, and then the applicant must respond. It doesn’t even satisfy the examiner-friendly standard of In re Jung. Instead, in Dyk’s world, for dependent claims, the applicant must go first, and only then must the examiner provide any explanation. In Dyk’s world, the PTO could routinely provide NO EXPLANATION WHATSOEVER until the examiner’s answer, and then applicants would be required to respond using the Reply Brief.
Of course – the examiner’s answer is way, way, way to late for the examiner to explain any rejection. At that point, the applicant has received two office actions, filed an expensive notice of appeal, and filed an expensive Appeal Brief. Why should the applicant go through all of that trouble just to finally learn how the examiner is rejecting most of the claims in the application?
(surprised that he wrote it?)