by Dennis Crouch
In re PepperBall Tech. (Fed. Cir. 2012) (non-precedential opinion)
In a non-precedential opinion, the Federal Circuit has affirmed a BPAI reexamination determination that PepperBall's patents are invalid as obvious. In reading the opinion, Hal Wegner wrote that the case serves as a "good teaching example of what will often be a futile appeal in future Inter Partes Review proceedings under the 'substantial evidence' standard of review." I agree with Hal that the low substantial evidence threshold required to sustain BPAI factual findings will make those difficult to overturn on appeal. However, as I discuss below, this case fails to be a good teaching example becaues it conflates review of the Board's factual findings with what should be de novo review of the ultimate question of obviousness.
The conclusion of obviousness (or non-obviousness) is a question of law that is reviewed de novo on appeal. However, substantial deference is given to the underlying factual determinations made by the Board. Those factual determinations will be upheld on appeal so long as supported by "substantial evidence." Thus, even if the appellate panel does not agree with the Board's factual finding, it can (and must) uphold the Board's factual finding so long as there is "more than a scintilla" of evidence in support. Although the Federal Circuit correctly recited the doctrine, my reading of the decision is that the court improperly applied the law and instead gave deference to the Board's legal conclusion of obviousness. In the end this may well be harmless error so long as the ultimate conclusion of obviousness is actually correct.
PepperBall Tech's invention relates to paintballs filled with peppery powder. A key feature of some claims was that the paintballs are only partially filled – 60% to 95% full. When stuffed over 95%, the powder clumps up and does not form a nice cloud around the victim's eyes. One prior art reference suggested adding weight to paintballs to optimize flight path. The Board held that the prior art's weight agent "was similar to PepperBall's modifying the fill percentage [and therefore] that it would have been obvious to modify the fill levels in a projectile within the recited range…"
On appeal, the Federal Circuit voiced some reticence with the Board's analysis – writing that "[t]his court in the first instance might not have reached the same conclusion as the Board on the similarity of PepperBall's differing fill levels and [the prior art's] weighting agent" because of the differing purposes explained above. The court went on to state that it, nevertheless, "does find substantial evidence to support the Board's finding of obviousness." That conclusion was based upon the court's own separate factual finding that the claimed range of 60% to 95% was "so broad in this context that a person of ordinary skill in the art likely would have tried fill levels within this range during routine experimentation."
The problem here, is that the Board's finding of obviousness is not supposed to be reviewed for substantial evidence, but instead reconsidered de novo on appeal. In the appeal, factual findings such as the similarity between the invention and the prior art need merely be supported by substantial evidence, but the appellate court must apply the much higher de novo standard when looking at the ultimate question of whether the invention obviousness. In reality, I have little faith in the current structure for determining obviousness. However, we do at least have a defined structure and procedure that the appellate court should follow.
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LOLZ Ned.
WHY is the key. “Why” IS PTA turned off.
Tell us why. Then tell us HOW this figures into the “normal” processing of an application. Better Yet, I will tell you the answer even before you give yours. The answer is that IT CAN’T. It can’t because it is NOT a normal part of the processing. It ONLY happens after prosecution is initially closed.
Little details like these are what you need to pay attention to before you dive into the swamp with your luny readings of law and exasperated “Kappos is wrong” whines.
People are not doing you any favors by trying to be nice to you. You need a 2×4 across the head after time you venture off the path.
Listen, sockie, turning off PTA during an RCE adds to the problem of delay, and does not excuse it. This makes it more important that ever that the PTO act promptly, not more slowly.
Had Kappos put his proposal to the public for its input, he surely would have heard an earful.
“as I read 114 as guaranteeing continued prosecution, not disruption of continued prosecution.”
Ned, not only can’t you read case law, but you can’t read legislative law either.
How is “disruption” a negation of continued prosecution? Where EXACTLY do you see some type, any type, of guarantee that your application will be picked up next when you go for an RCE? That’s right – YOU DON’T. Unless of course, you are making up law again.
‘Sides, you have now ignored poor James twice on his points about PTA. Why is that? Oh yeah, because how an RCE is treated in regards to PTA works against your insane notion that RCE is to be considered a part of normal prosecution. The clock is specifically turned off when an applicant goes the RCE route, even the first one. Why do you think this is so? Because an RCE is a “normal” part of prosecution? Really?
If you want to make up law, you should announce that you are doing so. Your current manner of “reading law as it is” when it clearly is not makes you to be quite the joke, and well deserving of some “abuse.” Oh I mean some swagger.
Hope you enjoy my swagger.
James, I think the new expedited procedure does in fact end after the first RCE.
Regardless of the reason for Kappos doing what he did regarding ordinary RCEs, the question is whether he should have gone back to the public and received approval through a rule change procedure. I think he should have, as I read 114 as guaranteeing continued prosecution, not disruption of continued prosecution.
However, I will agree, that 114 is not clear on this point and will not press the issue further.
Regardless of the union, and regardless of looking good to Congress regarding time to first action, delaying RCEs increases overall inefficiency and this is not something the PTO should be proud of. Quite the contrary.
Ned,
I believe you have an error in your logic.
Just because the Office has decided to write its new expedited examination procedure to include a first RCE does not mean that it is logical to conclude that a first RCE is part of normal prosecution. It only means that the writers of the new expedited examination procedure wanted to include a first RCE as part of the new process. Nothing more.
Logically, why stop at one? If a first RCE is a normal part of the process, then the need that generates a first RCE must be accepted as part of the process and an unlimited number of RCE’s logically should be allowed (as long as the need is there). Stopping at one is an arbitrary decision. I am not suggesting, and you should not take for granted, that a second RCE might be a bit much.
Now if Kappos decided to treat the first RCE as an exit from the expedited procedure, I do not think that there would be a hue and cry. I also do not think the program would find many participants.
There is a direct correlation in my comment above concerning Patent Term Adjustment. Are you suggesting that Patent Term Adjustment should be changed to allow an RCE to not toll the PTA? After all, by your logic, the first RCE must be considered merely a part of the normal prosecution.
Sorry for sounding “snippy,” but I think you are not seeing the picture clearly, and you are not helping me see what you are seeing (in case it is me that is not seeing the picture clearly).
The topic of disrupting is something we can agree on.
However, this disruption can be traced to an unfortunate compromise with the examiner union, rather than any desired effect. In order to make the count reduction palatable, Kappos had to provide increased flexibility for examiners to juggle their workload in order to meet the still required counts.
I would have preferred more of a hard line with examiners as to “aged receivables,” but I was not asked. Also, you have the political compromise of reducing the time to first action that was captured on a recent thread. That is a topic unto itself, and an executive decision was made as to which (a quicker first action or a full conclusion of actions already started) would receive a higher priority.
James, take the new expedited examination. The fee guarantees a few things in exchange for the money, such as continued rapid examination until appeal or a second RCE. This openly suggests that a first RCE is part of normal prosecution.
Now, what if Kappos were to decide to treat the first RCE in the expedited procedure the way he does ordinary RCEs — put them at the end of the line. There would be a hew and cry.
Now, we pay for examination just like we pay for expedited examination. We should get at least one RCE in exchange for THAT fee as at least one RCE is normal and expected. I will agree that a second RCE might be a bit much.
And, as many have observed here, disrupting normal prosecution has its costs in inefficiency. It is a remarkably un intelligent thing to do. No paid efficiency expert would ever recommend it.
Ned,
I am having genuine difficulty identifying which rule you think is violated.
How the Office decides to process an application, as long as that process does not affect substantive rights, is not a decision that invokes rule making.
Otherwise, you would have much bigger issues to contend with (like huge sections of the MPEP).
Can you be specific as to the violation? I just do not understand the spirit of the law that you are referring to.
Thanks,
ps. you mention Rule 114(d). What do you think of Rule 114(a), specifically, the comment about “prosecution… is closed” ? Also, the fact that Law 135(b) is separate from 135(a) also suggests an important difference.
Rule 114(d)/35 USC 132(b)
The rule and the statute make clear that the RCE provides for continued examination of the same application. A continuation is filed under 111(a), an entirely different statute. Treaty the two the same is unwarranted and a violation of the spirit of the law, if not its letter. Now one ever thought that the Director would treat RCEs as continuations. If they had, they would have insisted the rules be clearer to prevent the abuse Kappos has inflicted on the patent community.
Ned,
I don’t think it is that simple. Deciding to request an RCE has clear differences, starting with the fact that a submission must be made. Consider as well, the fact that an RCE stops the major form of Patent Term Adjustment.
What rule do you think is being violated?
James, the rule, in part, reads
"(d) If an applicant timely files a submission and fee set forth in § 1.17(e), the Office will withdraw the finality of any Office action and the submission will be entered and considered. "
This seems to imply to me that the "final" is changed to "a non final." But Kappos is treating RCEs like a new application. That seems to violate the rules, at least to me it does.
Thanks,
I thought (and I could be wrong) that internal treatment of queueing was not a rule change that would require notice and comment.
There are no substantive rights involved, merely timing management within the Office.
James, RCE’s should be simply a payment for further prosecution. It should not disrupt prosecution whatsoever.
From my understanding, Kappos has changed the rules regarding RCE’s. He has placed them at the end of the examining queue. In this he treats them like continuations.
Deliberately underfilling the capsule, in order to create a bigger better pepper cloud, strikes me as good inventive subject matter. To dismiss that contribution to the art as obvious because it is nothing more than “routine” experimentation strikes me as impermissible hindsight (especially when you have already combined two references and even then you still have a hole, which you plug with an unfounded catch-all “routine experimentation” plucked from the air.
I don’t mind the conclusion, I just find the reasoning unsound. For the reputation of the patent system amongst engineers and inventors, I’m just asking that the conclusion of obviousness be underpinned by reasoning which a reasonable inventor will grudgingly accept.
Bring back TSM (in its EPO form) I say.
??
How would you treat an RCE differently?
How is an RCE treated like a continuation?
“What about the lack of communication skills from the CAFC?”
Pretty sure they’re writing the decision for the people in the case, not for you personally.
“I’m not going to cry over the examiner’s lack of communication skills ”
What about the lack of communication skills from the CAFC?
Perhaps astonished can help everyone out. Of course, after he helps out poor MaxDrei. Where did astonished go?
“IMO, even though the ultimate decision might be reasonable, the rejection could have been drafted better”
Rejections can always be drafted better. I’m not going to cry over the examiner’s lack of communication skills especially since his case survived a trip to the CAFC.
“If one fills and then there is settling to <95% (as would be expected), I would say that that is NOT infringement"
Irrelevant, we're talking about invalidation here. The level at time of pouring is fine.
"(were the claims for a method of preparing the balls?"
Why don't you, like max, take time out of your day to read the decision?
"Also, the spec should discuss settling or the particles as anyone in the field knows this occurs."
Well maybe they weren't in the field.
“Help me out then: tell me how the claim achieves patentability over what Fetida teaches. ”
Fetida in isolation or Fetida in the combo of the rejection?
Fetida in isolation is easy, you don’t have all elements of THE CLAIM in Fetida. You need to go 103 and you need a better primary ref to start the rejection off. Then you bring in Fetida for the finisher except for the specific % that you fill up the thing. Then the court says “routine experimentation” and says cya later claim.
“Fun is that I’m the one saying it’s obvious and you are arguing against me on that.”
You seem to have forgotten that the PTO and the court judged it obvious and I went along with them. I swear to god max, you don’t even seem to have read what I wrote. I’m through discussing this with you, you literally seem to be in the dark about every single facet of this case.
I think that Dennis has also misunderstood this opinion, and has mistakenly mis-characterized the court’s actions.
There are, however, 2 things about the opinion that are significantly interesting IMHO:
1) the factual predicate underlying the issue was the limitation that “the fill material occupies 60-95% of the volume formed within the rigid frangible shell”. The actual issue was whether substantial evidence existed in support of the Board’s finding that said limitation was found in the prior art. Although the Board relied on the evidence of its own assessment that filling a ball less than 100% was equivalent in the 2 cases where the remainder of the volume was occupied by either air or a weighting agent, it appears clear that the evidence that can be relied upon by the CAFC is restricted neither to evidence that was actually used by the Board in their determination, nor to evidence that was actually before the Board (although IDK about this last one, I haven’t read all the transcripts), as the CAFC relied on the evidence of its own assessment that a fill level of 60-95% “would have been likely for a PHOSITA to have tried” during routine experimentation.
I don’t like the “obvious to try” stuff the CAFC pulled here. Anything that uses a conditional like “could” is a conditional conclusion, based on the necessary existence of factual predicates itself, and should not logically be considered a “finding of fact”. “Findings of fact” should contain definite language, such as “was” tried by a PHOSITA (i.e. “it is a fact that the fill level was tried by the PHOSITA”).
2) I think that the CAFC was just very sloppy in its use of language, rather than being flat-out wrong about the legal tests, as Dennis suggested.
When the panel said that “…this court does find substantial evidence to support the Board’s finding of obviousness…”, what it meant to say, in its fumblingly inarticulate way, was that “this court does find substantial evidence of the factual predicates supporting the Board’s finding of obviousness, because there is nothing in the opinion to indicate that the CAFC revisited the ultimate legal issue of non-obviousness, and everything in the opinion to indicate that they examined only the factual predicates thereto.
Well, at least they had the good sense to mark this “non-precedential”–which, as we all know, can be used “precedentially” nonetheless.
And the court already had precedent for publishing an opinion probably penned by a clerk, that was given insufficient review by the justices before its publication on the web–and that’s a best-case scenario, the alternative being that the inarticulate person was whatever judge wrote the decision, rather than a clerk.
Office Abuse, good points again.
I have argued before that we need 2 actions on the merits before a final can be given. That certain would help.
BTW, has anyone considered that treating an RCE as a continuation is essentially treating an RCE as a continuation? Kappos changed the rules without public notice.
“This does somewhat argue, does it not, for more use of RCEs to pay for extended examination”
I think that misses the point of RCE’s, or rather, the complaint against the Office in reaching the point of when an RCE is needed to preserve the applicant’s rights.
Squandering the examination on the first two go-arounds with poor quality examination and then forcing the applicant to pay more with the RCE is an abuse of process.
Especially in two very different conditions that are often found in RCE’s:
1) The examiner for the first time takes a serious look at the entire application. This is often the result of first exams consisting of key word searches from the claims without even reading the applications and early going final for any attempt by applicants to amend around the bogus first exam results.
2) The RCE process shows no new line of thought from the examiner, allowing something that could have easily been allowed pre-RCE, and are clearly evident of a milked count. This is the famous Gravy Train position that was so evident that Kappos forced a change in procedure to combat the abuse.
Come Back, your response has surface appeal to it. The constraints are imposed by the limited amount of time the examiner has to work on a case given their compensation scheme. This does somewhat argue, does it not, for more use of RCEs to pay for extended examination and for more examiner credit for each RCE?
But, good post and food for thought.
BB why did you switch to MAX and then 2 cents? talk about sockies
Sarah – talking about world peace is not novel in the least. An talking is far from enabling 🙂
right on Max !
6, you make some reasonable points, but you need an attitude adjustment. Max noting particles settling is relevant (and I AM an expert in that field – Material’s Engineer with MS-level coursework in particulates). IMO, even though the ultimate decision might be reasonable, the rejection could have been drafted better. If one fills and then there is settling to <95% (as would be expected), I would say that that is NOT infringement ... the balls were totally filled (were the claims for a method of preparing the balls? or only the result ?). What happens after filling is merely expected ... and using such logic the claim should have a range that does not get close to 95% or it is not novel, let alone obvious. Also, the spec should discuss settling or the particles as anyone in the field knows this occurs.
And the most amazing thing of all, the first File, the one that was stolen, there were a half a dozen attys that said no to filing my Trademark. And the one that did file my Trademark claims that if it were filed it could not be found? I bet she could find it.
I was looking at the pepper-filled powder dispenser capsules of Fetida US 5821450, that “explode” on impact whereby their content disperses widely (col4, line 40) thereby to disable.
You claim to be intimately familiar with Fetida, and you acknowledge that it discloses:
“you could use pepper powder as an irritant in a projectile”
Help me out then: tell me how the claim achieves patentability over what Fetida teaches.
The “<95% full" feature, would that be?
Or is it the "no ignitable substance used"?
Or is it the "without an intermediary" wording?
We differ over which arguments are cockamamie ones but never mind. Fun is that I'm the one saying it's obvious and you are arguing against me on that.
Did I ever tell you what H.F. told… I’m sure I have. She said? I’m sure I did. She said, oh, if there is another Trademark it has been erased… you’ll never find it! LOLOLOL, maybe I won’t, but I am sure they know all about it!
And that was right after I spoke with an atty in charge of the Patent case. And then PUFF he was removed from the Case!
A request for a reexamination can be filed by anyone at anytime during the period of enforceability of a patent. To request a reexamination, one must submit a “request for reexamination,” pay a substantial fee, and provide an explanation of the new reasons why the patent is invalid based on prior art. Copies of the prior art must be provided, and the party making the request has to let the owner of the patent know that a request has been filed. If the USPTO finds that the request does raise a substantial new question of patentability, the USPTO orders a reexamination.
This is no so easy to determine which is right and wrong. It is needed a further investigation and write ups.
“But, given the tendency of free-flowing particles to settle with time, I can’t imagine how, in the prior art, one ever did get above 95% full when flowing particles into a container until it is “full”.”
If you bothered yourself to read the prior art you’d know that this statement is wholly irrelevant. And if you paid attention to the rejections you’d be very clear why. There was no prior art that filled the cavity with PARTICLES and did get above 95%. The prior art had detailed embodiments of liquid filled paintballs filled to some level I don’t remember in two halved off sections of the paintball. They also mentioned you could use irritants and noted tear gas among them. A DIFFERENT reference noted that you could use pepper powder as an irritant in a projectile and didn’t say jack about how far up you fill up a cavity. The rejection is based on substituting the pepper irritant for the liquid irritant and then noting that the range recited was so broad so as to encompass embodiments that would surely be tried in routine experimentation by someone making such a combination. Now ffs, stop making up wholly irrelevant sht that has jack to do with the prior art applied or the rejection being made.
” I think the PTO Examiner might have questioned 95% at the point of novelty, on that thought alone”
If there had been some prior art such as that which you just took it upon yourself to make up out of thin air then yes, perhaps so.
Christ max, take 10 minutes of your day to read the prior art, or at least the decision, before coming up with these cockamamie arguments.
Ironic, no? Any suggestion to you that the invention might be old or obvious is greeted as “tard thoughts”. How many tard thoughts does one of your Office Actions contain, I wonder.
Well thanks 6. Given your remark upthread that:
“everyone involved at the PTO and court did everything nearly or exactly perfectly”
I ought not to have expected anything else. But, given the tendency of free-flowing particles to settle with time, I can’t imagine how, in the prior art, one ever did get above 95% full when flowing particles into a container until it is “full”. I think the PTO Examiner might have questioned 95% at the point of novelty, on that thought alone. I mean, at your local supermarket, for rigid shell containers containing powder, how many can you find that are more than 95% full?
I should add, even though it is irrelevant to your questions but is probably relevant to whatever tard thoughts you have flowing through your mind atm: powders don’t necessarily settle a whole 5% and they certainly don’t necessarily “settle” forever until there is nothing left.
1. Anytime
2. Nobody said it did.
“There is no “fix” for a deserving patent denied.”
An interview isn’t a fix? An RCE isn’t a fix? Idk bro.
And I would add that given the actual litigation rate of in force patents is south of 2%, the “scourge” of bad patents is vastly overstated.
Ned,
Actually, you do not need an office memo to know that the error is to favor allowance rather than rejection from a policy standpoint.
The first thing to note is that the law itself starts out as a right to patent, and then the onus is to find a reason not to award one.
The second thing to note is that if the bad over good relationship were reversed to be as you would have it, then time limits and cost for the Office would not be a driver. As it is, the Office knowingly operates on a fixed asset and limited time examination basis.
This necessitates the fact that patents will be allowed that should not be as no perfect search can ever be performed.
Clearly, such a view as yours does not align with the law, with policy, or with reality.
Ned, I think the Fed. Cir. statistics collected by the Houston Law Center will show that the Fed. Cir. does not reverse the [not all that common] JURY 103 obviousness determinations as much as you might think, even after the Supreme’s KSR decision. The Fed. Cir. is also, but differently, constrained in its review of jury decisions. But much less so for claim interpretations. D.C.’s make a lot more alleged reversible errors in claim intepretation that do not apply to PTO proceedings with their “broadest reasonable interpretation” claim interpretation. Missinterpreted claim scope is behind some of those reversals of D.C. invalidity decisions.
So I do not think the reversal rates on appeals from reexamination are comparable, and that they will be even less so from Board APJ trial decisions.
“Your analogy is not well placed.”
It was your analogy of criminal law. Do not put words into my mouth.
My statement is better. One error has a forum for correction (actually multiple), whereas the other has none.
I reject your notion of “It is better to deny a good patent than to allow a 1000 bad patents to issue is more apt.” Justice has no truck with that.
Perhaps if Dudas reject, reject, reject was not focused.
I don’t know exactly what he said. If you have a link to his internal memo, we could see.
But Dudas himself is not the issue here. Bad patents are. They are legion. This is not criminal law where we release 1000 guilty in order to protect the a single innocent. Your analogy is not well placed.
It is better to deny a good patent than to allow a 1000 bad patents to issue is more apt.
“I don’t what Dudas was trying to do, per se, with his “reject, reject, reject” orders”
This is reprehensible and downright repugnant.
A bad patent can be corrected in court. There is no “fix” for a deserving patent denied.
The two levels of mistakes are not even close.
Furhtermore, MM’s “for years” what-ever brand of legal thinking and the Dudas application of reject-reject-reject are BOTH to be avoided. Attempt to do the right thing by taking a shortcut and not applying the law properly is never the right thing.
Max, you do begin to wonder about the competence of the PTO, don’t you? This was a reeximination, for pity’s sake. The examiner had the benefit of a third parties comments. What happened here? How could everyone have missed the well know fact that powders clump when packed? Even 6, above, didn’t seem to understand this very simple concept when it was pointed out to him.
PTO?!
I really don’t get it.
MM has for years pointed out that the PTO issues patent after patent that is ludicrously obvious.
Something is really wrong in the city of Dodge.
I don’t what Dudas was trying to do, per se, with his “reject, reject, reject” orders. But if he was telling the examining corps that they were not getting it, and that they were bringing the USPTO and the whole patent system into disrepute, I think he was attempt to do the right thing.
Paul, if the rate of reversals is lower that appeals from the courts, it might suggest that the ALJ are getting it ultimate legal conclusion right.
But determining a date of invention and determining obviousness are two different things altogether. The Federal Circuit has shown it likes to second-guess on obviousness. This case is one example that illustrates that it will second guess even the Board even though they decided to affirm.
We we have all digressed enough that probably no one is still reading this thread. However, I want to respond to an erronious statement above that appeals from PTO decisions win most of their appeals. That is not even true for Board appeals, and is far less so at the Fed. Cir. That is especially so for the Board’s own trial decisions. Chico Gholtz has noted in prior articles that Fed. Cir. appeals from Board interference decisons only succeed about 10% of the time. [Usually, I think, on complex points of law relating to 102(g) issues?] The amended inter partes reexaminations that wlll replace the present ones [the actual subject of this post] will be Board trials similar to interferences, and without any confusing 102(g)legal issues. Given the Administrative Proceedures Act limitations on Fed. Cir. reversals of those Board inter partes trial holdings on facts, why one would expect appeals therefrom to the Fed. Cir. to be more successful than that 10% rate?
Dennis,
Are you saying that questions such as following are answered de novo:
“Would it have been obvious to a PHOSITA to combine the references?”
or
“Are the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious to a PHOSITA?” be answered
Why aren’t you discussing world peace, or how to make a better Engine? This is ridiculous. 1 oz. of Pepper Powder is still one ounce when the air dissipates. And filling it without allowing air flow is the problem.
That being said, some people can play a music score after hearing the score only once. Do you get it yet?
Never mind obviousness. USPTO, what about the following:
1. Given the universal tendency of powders in containers to settle over time, is 95% definite ie when am I to measure whether the 95% criterion is attained.
2. Given the universal tendency of powders in containers to settle with time, how does “95%” endow the claimed subject matter with novelty over any prior art container that has been filled with powder?
When parents say to their children “It is so because I say it is so. End of story” the kids aren’t satisfied. Equally so, when the parents flail around, using crxp logic to justify their stance. So here too. 6 I hope you do better, when you formulate your obviousness objections.
Obviously, this is something that Ned knows nothing about.
You do not have to have an opinion about everything sir.
6, you only get packing if you are near 100%,
I agree.
“complete conjecture”
Delicious conjecture.
“the problem of packing the powder into the paint ball was clumping; (see even Dennis summary);”
I’m not sure how you got that impression. It is only a “problem” if you fill/pack it right up to 100%. Read the decision.
The only “problem” “packing” it into a paintball according to the decision was that the “paintball reference” injected it’s inner components and did not put a powder in. Regardless, the board made the proper call in that circumstance.
Also note that there is no reason to “pack” this stuff into a paintball and I’m not sure where you got the impression that there was. Simply pouring it into an orifice and then closing the orifice should suffice as I’m pretty sure any country id iot of age 5 or above could tell you.
I’m through discussing this very simple case in which everyone involved at the PTO and court did everything nearly or exactly perfectly Ned, have whatever final say you wish.
6,
the invention involved powder;
the problem of packing the powder into the paint ball was clumping; (see even Dennis summary);
the solution:
avoid packing.
Now, 6, If I would give a class of 6th graders, and I choose that grade for a reason, the problem as stated above, but not the solution, and ask the 6th graders for a solution, I will bet a good number of them will give us the proper answer.
Further, I don't think this involves hindsight. The fact that powder clumps when packed was well known. The inventors here should have know that. The fact that they did not tells us something about the inventors but not something about people skilled in the art.
And, the fact that the PTO could not come up with a single reference showing that powder clumped when pack is also telling. What is the matter with you guys?
“Um,… the art.”
Which art specifically states such? Because I don’t see any such statement in “the art”. I see only a court paraphrasing what they believe the art to want.
“Unless you have changed the art to combusting pepper ball projectiles while no one was looking.”
I didn’t change the art at all, I’m simply pointing out that the art is completely silent as to whether or not they wish it to combust wholly or in part. The court seems to infer that they do not wish it to combust at all, but that is idle speculation at best, and it didn’t affect the decision so I’m not going to get all boo hooey over some dicta.
“It’s a better (and much higher) place to pull from in comparision to where you obtained your comments.”
Well it is much higher, but I doubt better. I get mine from real life right here near the face of the earth.
“Wasn’t difficult. ”
Yeah I know, all you did was type “a s s u m e”.
In any event, after reviewing the decision all this talk about old style cannon balls is not needed in the slightest. The one reference already teaches using amounts of material in a projectile sufficient to disperse the irritant effectively. The courts can just say “routine experimentation” for the rest and they’re home free because it literally is routine experimentation to determine how much powder in a projectile will result in the cloud which you desire. Indeed, these appellants got quite lucky by drawing Rader for their panel, the person at the CAFC most likely to give them a pro-patent bias for their work optimizing the powder amount besides perhaps Newman.
No you do not, but you do need to tell us why this clumping nonsense is in any way relevant to the instant case. You seem to have just forgotten to mention it to us.
After having read the decision in some detail I find that it is altogether appropriate. Indeed, even the “scandal” that was mentioned up thread appears to be just fine. They did not review the conclusion of obviousness itself for substantial evidence, they simply said that the conclusion was supported by it. And it is. Just like the factual findings are. The conclusion must be supported by facts found which in turn must be supported by substantial evidence. This is hardly the scandal people up thread are making it out to be.
There is nowhere in the decision that implies that they did not review the CONCLUSION de novo. They simply said that they may not have found the same facts as the board did if they were reviewing the case in the first instance. After the facts were found (for which they received the proper level of review) the court simply followed right along with the came conclusion which the board made while they were reviewing it de novo. All perfectly fine.
IVO of this prior art and the facts of record it is hard to say that it would not have been obvious. Although of course the end decision is one for a court.
Sarah, common sense has everything to do with skill.
It proves to me that the court should have said something like… why are you filling them all differently with different amounts? Can’t you find an amount that won’t clump and stick with it? That has nothing to do with Skill. That would be common sense. Is common sense obvious or no?
On the facts before them they should have reversed. Agreed.
But when one introduces common sense into the mix, together with what one of ordinary skill in the art would do, what is that? Findings of fact?
Besides, it was and is notoriously well known that powder will clump when packed.
That’s a perfect example of how you solve a problem to become a co inventor. You don’t take what was already done and put your name on it. See how easy that was. They just come to me puff…. Inventors solve Problems. Geniuses are a different breed. They create the things an Inventor improves on.
IBP, I am not sure you are saying this, but the line between fact and law in mixed questions is hard to draw.
I think in the end, the appellate court had only look to see if the reasoning of the Board was correct based on the evidence. Because this is a de novo review, the tribunal is entitled to no deference regarding its reasoning.
That is what actually happened in this case. The Feds found the board’s reasoning flawed and illogical. Perhaps they should have simply reversed and allowed the patent; but the problem is that the claimed invention was obvious regardless of the Boards reasoning.
So what is an appellate court to do?
Close call here, and the opinion is divided.
To good to share?
“This court in the first instance might not have reached the same conclusion as the Board on the similarity of PepperBall’s differing fill levels and Kotsiopoulos’ weighting agent. PepperBall’s differing fill levels are for the purpose of optimizing the size of the cloud upon impact, while, in contrast, Kotsiopoulos’ weighting agent is for the purpose of optimizing the flight of the projectile. Nevertheless, this court does find substantial evidence to support the Board’s finding of obviousness, because the claimed range of 60% to 95% is so broad in this context that a person of ordinary skill in the art likely would have tried fill levels within this range during routine experimentation.”
What utter rhetorical nonsense. Peppershell’s fill level recitation is for an entirely different purpose from that of the prior art (Kotsiopoulos). So saying that the “claimed range of 60% to 95% is so broad in this context that a person of ordinary skill in the art likely would have tried fill levels within this range during routine experimentation,” is complete conjecture on the Federal Circuit’s part. In fact, other than the Board “finding so,” where does the factual record provide “substantial evidence” to support this statement by the Federal Circuit panel?
Eibel Process, I take it you have never read the case, for that is what your post implies. And, if you haven’t read the case, what does that say about you as a patent attorney?
What, you have to have written description support for 60%.
In discussing this lower limit, they must have said something.
Max, good point.
They should have cited some evidence, even if it was well known.
Now it is known, and well known at that, that every powder will clump when packed. The Feds should have cited that knowledge in its affirmance.
Well, we could try lifting the edge of the machine up a couple of inches…
6, regardless of combustion, is it notorious and well known for thousands of years that any powder when packed will clump.
Do I have to cite the snowball?
AAA JJ–
I think you’re misunderstanding.
The similarity of PepperBall’s differing fill levels and Kotsiopoulos’ weighting agent was a factual predicate, and is reviewed for substantial evidence–it is not a legal conclusion.
You do realize that “promote” does not mean qualitatively better, right?
I hesitate even though you think that you are an expert on 18th century US legal terms (sorry, not as good as the dead horse jokes).
Promote is also accomplished with merely setting more and different roads. So in a sense, if the road immediately in front of you is blocked, then progress is made when the blocked person has to go around the blockage.
And if you are a real masochist, read the Golan v. Holder case, in which things not only obvia, but obvia a few miles back, were still allowed protection. Granted, it is a different type of protection, but that protection comes from the very same constitutional grant of power.
Something to think about.
Actually, it is notorious and well known that any powder will clump when packed. Take judicial notice here.
See, e.g., link to clavius.org
“Anything finely powdered, such as cornstarch or flour, will clump when packed.”
“BTW, what support did they have for claiming 60%?”
Felt like it?
Any percentage of the lightweight filler less than 60% made the projectile too heavy.
No wait….
“Who on earth told you that you don’t want it to combust”
Um,… the art.
Unless you have changed the art to combusting pepper ball projectiles while no one was looking.
“Did you pull that from the clouds?”
It’s a better (and much higher) place to pull from in comparision to where you obtained your comments.
“You just made an arse out of you and me.”
Wasn’t difficult. Must have just followed the path to the place of your pulling.
Obvious means “lying in the road” Are you going to allow patents to block the road of routine technical progress. Patents make sense only if they promote the progress more than they block it. Without an obviousnes filter, stagnation looms.