By Dennis Crouch
Institut Pasteur v. Focarino and Precision BioSciences, Reexam No. 95,000,443 (Fed. Cir. 2013)
The French non-profit Institut Pasteur holds several patents covering site-directed insertion of genes into eukaryotic chromosomes. See U.S. Patent Nos. 7,309,605, 6,610,545, and 6,833,252. Basically, Pasteur discovered that a set of naturally occurring enzymes that could cleave chromosomal DNA at particular recognition sites and also discovered that cells will naturally repair the cleavage through homologous recombination even when an additional gene sequence is added, so long as a proper recombinatory DNA template is also added. It turns out that this sequence of events occurs in mitochondrial DNA but Pasteur was able to make it work on chromosomal DNA as well. The patents all relate to creating the enzymes and method of using those enzymes to insert DNA.
This is old stuff and all happened in the early 1990’s The three patents all expired in 2012 while the case was pending appeal to the Federal Circuit, but companies may still be on the hook for past damages for what has become a basic tool of genetic engineering.
In 2009, Precision BioSciences filed for inter partes reexamination of the three patents. The examiner found the claimed invention obvious and that decision was affirmed by the USPTO’s administrative patent appeal board. On appeal, the Federal Circuit has come-out with three interesting rulings:
Hard Deadline on Amendments: First, for the ‘605 patent, the claims were amended during the reexamination (and prior to the patent expiration date). For those claims, the court dismissed Pasteur’s appeal as moot because “[substantially] amended claims cannot be entered now that the patent has expired.” This result is obviously important for gamesmanship because it rewards delay tactics on the part of would-be infringers and also encourages patentees to work toward concluding any post-grant reviews.
No Substantial Evidence: Second, the Federal Circuit determined that the Board lacked Substantial Evidence for its factual conclusions that led to its obviousness decision of the challenged claims of the ‘545 patent. The question of obviousness is a matter of law predicated upon a set of factual conclusions. A factual conclusion must itself be based upon evidence presented to the Court. Here, after reviewing the two key prior art references (the evidence), the USPTO Board concluded that the prior art showed that the claimed enzyme “cleaved yeast chromosomal DNA when expressed in yeast cells.” On appeal, the Federal Circuit rejected that factual conclusion after failing to find such a disclosure in either reference. One factor making the Federal Circuit’s decision easier was that the Board based its conclusion upon the text of the prior art references rather than relying upon factual or expert testimony that could have offered stronger conclusory evidence.
Motivation to Combine: Finally, with regard to the ‘252 patent, the Federal Circuit found that the Board had failed to identify the “motivation, if any, a skilled artisan at the relevant time would have had to pursue the claimed invention.”
Opinion by Judge Taranto
A fascinating issued arose in this case that was not discussed fully by the Federal Circuit. The two main references described the introduction into a bacteria cell of phage DNA that integrated into the bacteria chromosomes and an a plasmid that included endonuclease used to cut the phage. Both were restricted and were activated by temperature. The phage activation excised the phage DNA from the chromosomes where the phage DNA was then cut by the endonuclease. Phage proteins that were being produced by the excised DNA repaired the cut by integrating the substitute DNA.The lab director testified that as a matter of fact the endonuclease did not cut the phage DNA until after excision. Two workers on the experiment countered that it must have happened because the restrictors were leaky, allowing small amounts of endonuclease to be released that could operate on the phage DNA before excision.The issues was whether cleavage happened before excision as a matter of necessity. The Board held that this was not proved.But it was also clear that the experiment described did not intend that the phage DNA be cut while integrated, and that if this in fact did happen, it was completely unintended and accidental and not appreciated at the time. The reference made no mention of such.The Supreme Court in Tilghman v. Proctor, 102 U.S. 707, 26 L. Ed. 279, 8 S. Ct. 894 (1881) held accidental anticipation was not anticipation — that one of ordinary skill in the art must appreciate that a process produced the result. The Fourth Circuit in a number of case, including American Original Corp. v. Jenkins Food Corp., 696 F. 2d 1053 (4th Cir. 1982) held that even if an effect was present, it must be appreciated. (I suspect, the other circuits have considered the issue as well.)In Schering Corp. v. Geneva Pharmaceuticals, 339 F. 3d 1373 (Fed. Cir. 2003) the Federal Circuit held that if the effect was present, it need not be appreciated. Schering was criticized in Alfredo De La Rosa, “A Hard Pill to Swallow- Does Schering v. Geneva Endanger Research and Development within the Pharmaceutical Industry?” (June 6, 2006). bepress Legal Series. bepress Legal Series.Working Paper 1414. link to law.bepress.com…Ditto: Jeffery Coleman, NOTE: “UNDETECTED, UNSUSPECTED, AND UNKNOWN”: SHOULD WE ANTICIPATE PROBLEMS FOR SCIENTIFIC INNOVATION FOLLOWING SCHERING CORP. V. GENEVA PHARMACEUTICALS?, 82 Fordham L. Rev. 165 (Oct. 2013)Also consider an interference. X earlier conduct process A but does not appreciate that it produces B. Y is first to appreciate B. Under traditional law, Y gets the patent. Under Schering, neither gets it because X’s prior process produced B and anticipates Y under inherency. Something is amiss in Schering and there is a conflict in circuits.
Taranto seems very heavy handed to me and formulistic.Here is a finding of fact that does not seem to supported anywhere but by his own reading of the references and is key to the decision:>Toxicity would bear heavily on whether a skilled artisan would have a >reasonable expectation of success in achieving that objective.>>The Board relied on its misreading of both references,Maybe he is right. I don’t know. But, why is a liberal arts major qualified to sit on the CAFC and read technical journals and draw conclusions of fact?Here is something that does not seem to be well supported: >rather than other technology described in the patent but not claimed or >claimed in related patents.†’545 Board Decision>But that theoretical possibility does not undermine the strong>probative value of the licensing of the ’545 patentSo, the board was saying there is a group of patents licensed so we aren’t going to take that as objective evidence of non-obviousness because there is no way of knowing why they licensed the patents. But, Taranto says well, I am. But, there is no analysis of why. Or how many patents were in the group licensed. Seems again very heavy handed to me. And, again, a non-science non-patent lawyer probably with no understanding whatsoever of licensing drawing a factual conclusion. Certainly group licensing at the extreme does not offer objective evidence. Taranto’s opinions appear to me to be very goal oriented. So, I’d summarize this case as the CAFC saying the references don’t say what the board said they did and we are going to take their objective indicia of non-obviousness when you didn’t. So, really, your analysis should be did those two references say what the board said they did or not? It is not my technical area. The CAFC’s indicia part is very dicey at best.
“Maybe he is right. I don’t know. But, why is a liberal arts major qualified to sit on the CAFC and read technical journals and draw conclusions of fact?”The judges aren’t doing all this in a vacuum, NWPA – they have the parties’ briefs and oral arguments to work with. My guess is that they tend to be persuaded by the briefs that rely on accurate cites to the record and clear reasoning, rather than being filled with ad hominem arguments and illogical and ideological rants. But that’s just a guess.
You mean our new liberal arts judge that is reading arguments about patent law and science that he has no training to understand? That judge? So my guess is that hood winking such a judge is going to be pretty easy.And, gee, no kidding LB. Gee isn’t your post ironic. And, I noticed you skipped the part about licensing which as I said above is the most dicey part. Thinking about this a bit and reading some of the comments below it would seem the problem is that the board didn’t add some comment about common knowledge in the field and say why that lead them to their conclusion. Sounds like a typical examiner/board judge. They left out a step that they carried out in their head.
What an f’n snob you are. You seem to think that those that made it with little or no education never existed. Stick a sock in your ignorance. Why would college make a difference if the professor was the only mind you drew from… That’s a big problem. I call you a Lemmhole.
I’m telling you, there be some shinanigans that happened in a case like this.Also, based on what I see in the decision it sounds like the examiner may well have made a “more fully fleshed out” rejection but the board then fiddled with it.
I don’t know about that 6, but it does seem like for someone that knows the art field they could tell us whether those two references show what the board said they showed or not. It boils down to a pretty simple question.
The finding that the prior art disclosed cleaving yeast chromosomes “in yeast cells” when they only disclose cleaving such outside of yeast cells reflects recent pattern I’ve seen in Board decisions that find obviousness despite the references not showing all the critical limitations. It is good that the Federal Circuit called them on that.IIRC, after KSR, the PTO removed a reference to In re Royka, 490 F. 2d 981 (CCPA1974) that required the examiner to proof all limitations of a claim in making an prima facie case under 102/103. This case effectively restores Royka, a case that the PTO apparently wanted to toss into the ashcan and used KSR to do it.
The finding that the prior art disclosed cleaving yeast chromosomes “in yeast cells” when they only disclose cleaving such outside of yeast cells reflects recent pattern I’ve seenI discussed this elsewhere in the thread but what you say here applies to only one of the prior art references. The other reference taught that the enzyme cleaved DNA “in the nucleus” of a yeast cell. That nuclear DNA was either yeast chromosomal DNA or the DNA of some vector (e.g., an artificial chromosome or a plasmid). But there’s no reason to expect the enzyme to care one way or the other. As long as the specific DNA sequence recognized by the enzyme is present, the enzyme will act upon the DNA. The enzyme doesn’t care about whether the DNA is “chromosomal” DNA or “plasmid” DNA. Nobody skilled in the art would read that reference and then wonder whether the enzyme could cleave chromosomal DNA in the yeast nucleus. Of course it could.Again, the issue here is obviousness, not anticipation. The Board had two references which showed (1) that the enzyme functioned to cleave DNA in the yeast nucleus in vivo and (2) that the enzyme could cleave isolated yeast chromosomes. Given those references and reams of similar experiments with similar enyzmes in the prior art, why would anyone skilled in the art not expect the enzyme to cleave yeast chromosomes in vivo?Following the pattern in this Opinion, if it wishes to ignore a prior art reference, the Federal Circuit could just as easily punish the Board for failing to “prove” that the DNA dicussed in a reference was “real DNA” or that the yeast chromosomes were “real yeast chromosomes”.
Thanks. I’ll reread the opinion on this point – the second reference.
Malcolm, I re-read he opinion at your behest. Well it appears that the Board made two factual findings that were not obviously true: first that both references disclosed cleaving chromosomal DNA in yeast cells. You appeared agree that this is correct with respect to the first reference, the Frey reference. Frey only disclosed cleaving yeast chromosomal the DNA outside of the cell.With respect to the second reference, you state that it discloses cleaving DNA inside yeast cell. That it does. But the board said as a matter of a factual finding that it disclosed cleaving yeast chromosomal DNA in the yeast cell. It did not clearly disclose this. Rather it disclosed that “GIIE endonuclease ‘can be expressed in the yeast nucleus from artificial constructs and the protein is able to cleave efficiently both its natural site within mitochondria and an artificially placed site within the nucleus.'” According to the Federal Circuit, the reference never explained what “an artificially placed site within the nucleus” was. Now if one of ordinary skill in the art would know that this passage meant cleaving chromosomal DNA, I suspect there would be a third reference available to show it. But the board skipped that step and simply stated that the reference disclosed cleaving chromosomal DNA in a yeast cell. Whether it did or did is the question.The examiner did not present a prima facie case nor did the board correctly establish the facts upon which to base a conclusion. The Federal Circuit was eminently correct in its holding.
Rather it disclosed that “GIIE endonuclease ‘can be expressed in the yeast nucleus from artificial constructs and the protein is able to cleave efficiently both its natural site within mitochondria and an artificially placed site within the nucleus.'” According to the Federal Circuit, the reference never explained what “an artificially placed site within the nucleus” was.There are only two “explanations” and I’m not sure why either one matters much in the context of the obviousness argument. Either the “artificial site” is integrated into a yeast chromosome or the “artificial site” is not integrated into a yeast chromosome (but it’s still DNA and it’s still cleaved, demonstrating the critical point that the enzyme functions in a nucleus exactly as it functions in the mitochondria — that’s the point of the experiment!). As someone who’s done plenty of genetic engineering, I’d say the most reasonable reading of that passage is that the artificial site is integrated into the yeast chromosome. If the artificial site was extrachromosomal (e.g., on a plasmid) I think the authors would have said so rather than using the phrase “site within the nucleus.”I haven’t read the briefs or that particular reference but I’d be curious to know what else was said about this issue. The Federal Circuit seems to have buried its head in the sand (is there an ink shortage in DC?), perhaps because at the end of the day the judges were most impressed by the fact that the patent was licensed (perhaps the worst part of this decision).
MM, If this were in an IPR, or in court, the proponent of invalidity would certainly have filled in the gap in evidence with an expert opinion if that were at all possible. What the examiner needed to do would have been to find a third reference to explain what an artificially placed site was so that a reader would know whether that was the same thing as cleaving a chromosome. But from the structure of the sentence, it appears that the author was talking about cleaving mitochondria.
“find a third reference to explain what an artificially placed site was so that a reader would know whether that was the same thing as cleaving a chromosome”See? What Ned advocates for is the finding of another reference to explain to the ignorant that which a college educated person of ordinary skill already knows. It’s review by ignorance. They should just go ahead and make clear in string of judicial decisions that they want all rejections to come to them explained on the kindergarten level straight from the references for ease of review so that they do not have to read the references from the viewpoint of one of ordinary skill, but rather from the viewpoint of a wholly uneducated person. Note that this review by ignorance thereby nullifies the entire point of having the PTO, in its expert capacity, ever having reviewed the case or read the references at all. ” But from the structure of the sentence, it appears that the author was talking about cleaving mitochondria.”I think you mean mitochondrial DNA.
6, but the rules do require the examiner to support any rejection based upon the examiner’s own skill and knowledge with actual evidence supported by his own affidavit.”Rule 1.104(d)(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”
For 1 millionth and last time, he’s not basing it on his own skill or knowledge, he’s basing it solely on the REFERENCE AS READ BY ONE OF SKILL IN THE ART. Now, if the courts voluntarily CHOOSE to read the reference from their own ignorant viewpoint, rather than the viewpoint of one skilled in the art, then that is their decision, and they should make it crystal clear to everyone that such is what they plan to do. Just so that everyone else can plan accordingly and/or challenge that method of review. For example, in this thread, MM has demonstrated what the REFERENCE tells him as one of skill in his art. The courts obviously take from the REFERENCE something different because they are ignorant and did not want to bother themselves to ascertain what the reference says to one of ordinary skill as did everyone else involved in the case. That’s the last time I’m posting about this. You’re just going to sit and tell me that we need to hold people’s hands through references so that ignoramuses can properly review the case. And I’ll sit and note that what you’re proposing is review by ignorance. And we may both be correct.
6, I am pretty sure if you simply explain your reasoning like MM did, most applicants will not put you to any proof. Real problems occur in reexaminations (and IPRs) where the stakes are high and amendments force intervening rights. Here, the examiners should in the ordinary case be expected to prove with evidence every limitation. Every one. (And it is a shame that so many reexaminations are ordered when petitions simply ignore limitations and the preliminary examiners or the Board in IPRs are not careful.)
I quite agree on most of what you’ve stated. But if they’re going to make a big fuss about supposed ambiguity in a reference then they should bring it up before the examiner and make clear exactly what the issue is. Somehow I doubt the case would have proceeded like this had the examiner been put on notice of the issue the case would face at the CAFC. The examiner would have simply added a few references or explanation. What we end up with is a rejection that appears proper to a person of ordinary skill (who knows what the reference says) being reversed by someone to ignorant to make the call (because they don’t understand the reference). Generally this is because the examiner never even knew that such which the ignorant person is ignorant of needed to be expounded upon. Though that may not have been the case in the instant case.
Well, the PTO should have argued that the issue was waived if the issue was NOT raised at the examiner level. I share with you your hunch that something fishy is afoot here. Did you have a chance to look at the underlying prosecution on this point?
Nah not just yet.Can we do it on public pair?
I haven’t reviewed the file history, but I’d be willing to bet that the patentee did bring up the “supposed ambiguity in a reference… before the examiner” and “make clear exactly what the issue” was before appealling the case to the Board and then to the Fed. Cir. I seriously doubt the patentee went through the expense of a Fed. Cir. appeal if they weren’t at least 50+% sure on whether they would prevail on the issue of the prior art failing to show the claimed features.” What we end up with is a rejection that appears proper to a person of ordinary skill (who knows what the reference says) being reversed by someone to ignorant to make the call (because they don’t understand the reference).”I love this. This is the classic dodge from losing examiners. “Well, yeah my rejections got reversed, but only because the Board (or the court) doesn’t understand the art.”Guess what, 6? The applicant understands the art. And when the examiner says, “Reference A discloses claimed feature X” and the applicant disagrees, the applicant tells the examiner so. If you’re so technically skilled, how is it that you have such a hard time explaining to somebody at least as technically skilled as you that you’re correct in determining what the reference discloses?”Generally this is because the examiner never even knew that such which the ignorant person is ignorant of needed to be expounded upon.”So examiners, including yourself (for what, like 5+ years now), are not aware that their rejections are subject to review by APJ’s, and possibly Fed. Cir, judges, who don’t spend day in and day out examining the exact technology that may be on that particular’s docket? How could you, or any examiner who’s been there long enough to have a case actually go to appeal, be unaware of that? Can you really be that ignorant?Here’s what’s really going on, 6. When there is a dispute between the examiner and the applicant as to what the prior art actually discloses, both sides get to provide their explanation and arguments and somebody else (i.e. panel of APJ’s or judges) decides who’s right. What you want to do is boast when they decide in your favor, but shift the blame when you’re wrong. “Oh, I’m still right, but these APJ’s and judges just don’t understand the art.” No, when they decide against you it’s because you’re wrong. It’s okay to admit it when you’re wrong. It’s actually a learning experience. You might want to try it sometime.
Rule 1.104(d)(2) When a rejection in an application is based on facts within the personal knowledge of an employee of the Office, the data shall be as specific as possible, and the reference must be supported, when called for by the applicant, by the affidavit of such employee, and such affidavit shall be subject to contradiction or explanation by the affidavits of the applicant and other persons.”There is no way we can have a functioning patent system if Examiners are required to proivide specific affidavits for every fact simply because the applicant chooses to question that fact (for whatever reasons, including delay and obfuscation).Applicants do not and can not have an absolute right to demand affidavit’s on every imaginable point of dispute (there are an infinite number of such facts in any case, as I’ve mentioned elsewhere in the thread). If applicants had such a right, then it would surely be reasonable for Examiner’s to simply state that all statements made by the Examiner are true, to the best of the Examiner’s knowledge and based on the Examiner’s skill in the art, and satisfy the rule in that manner.
“surely be reasonable for Examiner’s to simply state that all statements made by the Examiner are true”Malcolm’s wonderful, “because he says so” is supposed to benefit all examiners – because he said so.Oh, how so very Carroll of him.
how so very Carroll of himDumpty, your pathetic and repeated attempts to fling your long-assigned and well-deserved name on others is noted. Let us know when you have an original thought, or one that you can articulate without drooling on your bib.
” … there are an infinite number of such facts in any case, as I’ve mentioned elsewhere in the thread.”If there are an infinite number of differences between the prior art and the claim then somebody is not doing it right.
Malcolm, applicants have the right to have the examiner prove all claim limitations — that is what a prima facie case is. The examiner cannot cite a reference and simply say that it teaches a claim limitation X unless it does within its four corners. If the examiner is adding something that is not there based on his own skill and knowledge, the applicant has a right to have the examiner either explain himself or cite evidence or both. That argument or evidence is then subject to rebuttal.I see no problem with this in terms of clogging the PTO with unnecessary work. Most applicants will not put the examiner to his task if he simply explains his reasoning in his OA. I don’t know what happened here at the examiner level. But the Board’s findings are clearly erroneous because for the reasons we previously discussed.
from the structure of the sentence, it appears that the author was talking about cleaving mitochondria.With all due respect, only a person with a very limited understanding of cell biology would come to that conclusion.For starters, a “mitochondria” is an organelle in a eukaryotic cell (by the way — you’re a eukaryote, and so is yeast). The organelles are responsible for generating most of the “power” in a eukaryotic cell (in the form of high energy chemical bonds, specifically a chemical called ATP).The enzyme doesn’t “cleave mitochondria”. There is no enzyme that “cleaves mitochondria.” The enzyme is a site-specific nuclease that cleaves DNA. Mitochondria, however, have their own genomes, composed of DNA, which encode proteins that are expressed (normally) specifically in the mitochondria. The mitochondria is where the enzyme discussed in this case is naturally found. That was all crystal clear in the prior art.The allegedly “unclear” statement we’re discussing refers to a distinct organelle in the eukaryotic cell known as the nucleus. The nucleus comprises the cell’s genome. As I noted already, one skilled in the art would reasonably interpret “artificial site in the nucleus” to refer to an artificial site (for recognitition by the enzyme) that has been inserted into the cell’s chromosomes.In this case, then, the Federal Circuit has (at least temporarily) allowed the inventors to completely avoid their own potentially damaging prior art by pretending that the art was insolubly ambiguous when, in fact, it was only sloppy writing with one interpretation that was very likely, and another interpretation that was equivalently damaging for the purpose of the argument being presented.
“MM, If this were in an IPR, or in court, the proponent of invalidity would certainly have filled in the gap in evidence with an expert opinion if that were at all possible.”Ned, this was an IPR.
LB, hardly. Filed in 2009?No, these were inter partes reexaminations.
You are correct, of course. My point was that there was an involved proponent of invalidity in an inter partes reexamination. Apparently there was no affidavit filed by the third-party requestor.
LB, I am not sure an examiner can rely on the expert opinion of a 3rd party requestor. Have you ever seen that done?
No, but I’ve never looked, either. The MPEP suggests that it is possible:”Any affidavit or declaration (or a clearly defined portion thereof) that contains opinon(s) of the affiant/declarant, or argument(s) that the art either does or does not anticipate or render obvious the claims, or specific claim elements, of the patent under reexamination, is considered to be part of the comments submitted by the patent owner, OR BY THE THIRD PARTY REQUESTER, and is subject to the page limit requirements of 37 CFR 1.943.”(MPEP 2667).
Thanks. Should we take this a practice pointer for those representing 3rd parties in still pending inter partes reexams. If the examiner has not presented a prima facie case, should we consider filing an expert opinion that fills in the gap?BTW, procedurally, I wonder how this would work. I presume the patent owner would want to file counter-affidavits and cross examine the 3rd parties expert. But it is my understanding that one does not have the right to cross examine witnesses in such reexaminations. Am I wrong in this? The battle is fought between the examiner and the patent owner. I simply do not see how the examiner can rely on 3rd party expert testimony to present a prima case unless they allow cross examination.The bottom line, it may theoretically be possible, but I am not sure the PTO will permit it.
LB, 6 and I have gone through the prosecution history. It turned out it mainly was a battle of experts as to what the references showed — the requestor relying on two junior members of a research team to demonstrate inherency, the patent owner relying on the leader and principle author of the reference in queston to show that what the requestor’s experts were saying was false. The Board found for the patentee based on this conflict of experts in 95/000490.
“perhaps because at the end of the day the judges were most impressed by the fact that the patent was licensed (perhaps the worst part of this decision).”Indeed on both.
Focarino, Commissioner, not Lee, acting Director?
They’re also still calling it the BPAI.
“On appeal, the Board of Patent Appeals and Interferences (now the Patent Trial and Appeal Board)”I think they’re just calling it the board since it says the old name on the old board decision.
I’m not sure I agree with your interpretation in the “motivation to combine” section, which makes the Board sound like a bunch of rookie examiners. The court actually said that the motivation found by the Board in the ‘252 patent was no longer valid in view of the court’s findings pertaining to the narrower ‘545 patent, so they vacated and remanded to see if the PTO could come up with anything else.
“the USPTO Board concluded that the prior art showed that the claimed enzyme “cleaved yeast chromosomal DNA when expressed in yeast cells.””What an odd factual finding. It seems like you’re saying that there is an enzyme being claimed. And that board found that the enzyme being claim inherently cleaves yeast chromosomal DNA when expressed in yeast cells. Then you’re saying that the CAFC says they couldn’t make that factual finding because they failed to make it after failing to find a disclosure of such in the reference. Sounds to me like some shinanigans went on here. First of all, apparently the CAFC didn’t bother to simply make a factual finding that the enzyme itself was old, and then look over all the rest of the evidence as to the properties of the enzyme in a certain surrounding. Second of all, it appears that the CAFC, at least according to you, ascribes to the non-factual finding method of reviewing factual findings where you, the reviewer, simply fail to find a fact and thus determine that no such fact could be found. That is not how review of factual findings should take place. The reviewer should simply put forth what factual findings they have made and note which appear to be extraneous to those. Doing otherwise should be clear error in review since it leaves the lower body wondering just what facts the upper body was able to find, and why it made extraneous factual findings beyond those found, and what would need to be present to find such a fact (say, in this instance, you might need a tertiary reference to show the inherent qualities of the enzyme, which may well already be on the record and overlooked by the CAFC).
How is that different from de novo review?
How is what specifically different from de novo review?
“The reviewer should simply put forth what factual findings they have made and note which appear to be extraneous to those.” In other words, making your own findings of fact, spelling them all out, and then deciding whether or not the lower body was wrong based on whether your findings are the same as their findings.
First you’re skipping the last part, but even if you’re somewhat trying to include it in your statement of what de novo review entails, the courts/board often skip the first part, opting instead to find no facts and declare those found improperly found. I’ve seen it done so many times it is embarrassing.
That”s what the court is supposed to do. If the findings of fact are incorrect (i.e. the evidence supplied to support the factual findings does not meet the burden of persuasion), the court must reverse. Correct legal conclusions cannot follow from incorrect factual determinations. It’s literally impossible.
“That”s what the court is supposed to do. If the findings of fact are incorrect (i.e. the evidence supplied to support the factual findings does not meet the burden of persuasion), the court must reverse.”I quite agree. But I do not agree with the manner in which they’ve been accomplishing this goal as all it does is leave the lower bodies questioning what went wrong in the factual finding that they performed and what their supposed superior took from the reference to come to their own factual findings.
“But I do not agree with the manner in which they’ve been accomplishing this goal as all it does is leave the lower bodies questioning what went wrong in the factual finding that they performed…”The Fed. Cir. was pretty clear on pages 15-19 of the decision on what the examiner/Board got wrong in their fact finding. J. Taranto very clearly states in the first full paragraph of page 16 that “In fact, neither reference discloses a GIIE endonuclease cleaving yeast chromosones while those choromosones are in yeast cells.” (He then explains the deficiencies of both Frey and Dujon pretty clearly.) What is there for the examiner/Board to question about that? How can the examiner/Board not know “what went wrong in the factual finding they performed”? Neither reference discloses the claimed feature. Are you telling me that examiners and APJ’s can’t figure out what’s wrong with their fact finding when the references don’t disclose a claimed feature?As for whether there existed 1) a reason to modify/combine the prior art and 2) a reasonable expectation of success in modifying/combining the prior art, both questions of fact BTW, again J. Taranto is pretty explicit in why the examiner’s/Board’s fact finding wasn’t up to snuff.”…. and what their supposed superior took from the reference to come to their own factual findings.”The court didn’t make their own factual findings. What are you not getting about that? The court explained why the examiner’s/Board’s findings of fact failed to satisfy their burden.
(He then explains the deficiencies of both Frey and Dujon pretty clearly.)Please reproduce Taranto’s “explanation” of the deficiencies of Dujon so we can all see what you mean by “pretty clearly.”
The paragraph spanning pages 16-17 of the decision. You’re lazier than 6tard. Two examiners of a pod I guess.
The only failure is that T thinks that the reference is unclear, so he expects the PTO to pick up the slack and make it crystal clear for his layman self what it means. For the time being, T is comfy with making no factual finding as to what the sentence in the reference means. Thus the PTO can sit and go around and around in circles until T would be satisfied, without ever knowing that they’ve satisfied him.
“For the time being, T is comfy with making no factual finding as to what the sentence in the reference means.”That’s because “T” is not examining the application. Instead, T is reviewing the Board’s decision. Those are two completely different functions.
Which I understand. And which I’m QUITE UNCOMFY WITH. If they think that the job should have been done differently then they should do it themselves rather than leaving those below hanging in the wind. There may be a thousand good reasons for the system to be set up the way it is, and I do hope to go d that there are. I for one find it rather disturbing that review bodies can simply declare there to be portions of references from which no factual finding can be drawn due to ambiguity that is only present to the layman. And I also think that if this is going to be the case then it should be the first thing taught to examiners when they’re being taught about references. It should be front and center since it seems to be the basis for a copious amount of reversals and is no doubt the reason for a difference of opinion in many respesponses filed to OAs. I vote that we dub it: the ignorance review principle. The ignorance review principle is simply that your factual findings must be supported by evidence substantial enough to support the fact being found by an ignoramus rather than a person of ordinary skill.
“The ignorance review principle is simply that your factual findings must be supported by evidence substantial enough to support the fact being found by an ignoramus rather than a person of ordinary skill.”Sounds reasonable to me. It should be pretty easy to implement, as well. Best I can tell, there are a lot of facts being found by ignoramuses (ignorami?) over there.
Perhaps. link to grammar.about.com…
You are so incredibly ignorant it is simply astounding. You know who reviews the references you cite against the claims, you stoopit t#rd? THE INVENTORS. Remember them?So when you send out your OA and the agent/attorney who is preparing the response talks to the inventors and asks, “The examiner argues that the reference discloses this feature of the claim, is the examiner correct?” after patiently waiting for the inventors’ laughing to subside, the agent/attorney writes the response.You still don’t understand anything that happens outside your little bubble world, do you?Final newsflash of the week for you, genius: The agent/attorney who signed the Amendment is not the only person who read your OA and the references. The inventors read it too.
I quite agree that it wasn’t laid out so badly in this case now that I have gotten to that part in the decision. As I noted before, I hadn’t made it through the entire decision just yet. This was because I was trying to read up on several of the topics involved as I was going through it so I would better understand the art. Though as you have brought to my attention it was laid out fairly well here. Of course where there is a problem between the board and court becomes readily apparent now that the court laid out what they find to be supported and what not. THAT kind of review is just fine with me. Too bad you don’t see it in every decision where there is a cursory treatment of that review at best. And that is what I’m against. That said, it appears fairly straightforward that the board (likely made up of bio guys) understood that the only type of DNA in the nucleus was, as MM stated, either the chromosomal DNA with an artificially placed site (most likely based on the refs wording “artificially placed site”) or an artificially placed little construct (like a plasmid) (an absurd interpretation). The board simply read the reference how one of ordinary skill in the art would have. The CAFC stepped in and said that it was ambiguous by adopting a stance no person of ordinary skill would take. Again, it’s review by ignorance that does this sort of thing. A couple of references I found helpful in understanding the reference at issue that might placate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.org…link to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…In either event, I think that it should be made clear that they expect, at the federal circuit, for people before them to hold their hand through the factual findings. Worse, the CAFC has the balsac to state that the board’s reading was a “misreading”. Lulz. It’s better than a reading wherein the statement in the reference is “read out of the reference” because the reviewer is too ignorant to understand it. In any event, that’s my peace, I have work to be busy with. I’ll check in later tonight.
I quite agree that it wasn’t laid out so badly in this case now that I have gotten to that part in the decision. As I noted before, I hadn’t made it through the entire decision just yet. This was because I was trying to read up on several of the topics involved as I was going through it so I would better understand the art. Though as you have brought to my attention it was laid out fairly well here. Of course where there is a problem between the board and court becomes readily apparent now that the court laid out what they find to be supported and what not. THAT kind of review is just fine with me. Too bad you don’t see it in every decision where there is a cursory treatment of that review at best. And that is what I’m against. That said, it appears fairly straightforward that the board (likely made up of bio guys) understood that the only type of DNA in the nucleus was, as MM stated, either the chromosomal DNA with an artificially placed site (most likely based on the refs wording “artificially placed site”) or an artificially placed little construct (like a plasmid) (an absurd interpretation). The board simply read the reference how one of ordinary skill in the art would have. The CAFC stepped in and said that it was ambiguous by adopting a stance no person of ordinary skill would take. Again, it’s review by ignorance that does this sort of thing.
A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.org…link to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…In either event, I think that it should be made clear that they expect, at the federal circuit, for people before them to hold their hand through the factual findings. Worse, the CAFC has the balsac to state that the board’s reading was a “misre ading”. Lul z. It’s better than a reading wherein the statement in the reference is “read out of the reference” because the reviewer is too ignor ant to understand it. In any event, that’s my pea ce, I have work to be busy with. I’ll check in later tonight.
A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.org…link to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…
A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. In either event, I think that it should be made clear that they expect, at the federal circuit, for people before them to hold their hand through the factual findings. Worse, the CAFC has the balsac to state that the board’s reading was a “misre ading”. Lul z. It’s better than a reading wherein the statement in the reference is “read out of the reference” because the reviewer is too ignor ant to understand it. In any event, that’s my pea ce, I have work to be busy with. I’ll check in later tonight.
A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. The fella who argues that what we should really do is prepare a case for review by people who don’t care to read references as they would be read by one of ordinary skill and instead want to read them as a layman, or worse, a layman who hasn’t bothered to even do a cursory review of the art so he’ll understand the reference before him. link to pnas.org…link to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…
A couple of references I found helpful in understanding the reference at issue that might pla cate Mr. Ned is below. link to pnas.org…link to en.wikipedia.org…And probably best:link to ncbi.nlm.nih.gov…In either event, I think that it should be made clear that theyexpect, at the federal circuit, for people before them to hold theirhand through the factual findings.Worse, the CAFC has the balsac to state that the board’s reading was a”misre ading”. Lul z. It’s better than a reading wherein the statementin the reference is “read out of the reference” because the reviewer istoo ignor ant to understand it.In any event, that’s my pea ce, I have work to be busy with. I’ll check in later tonight.
” Neither reference discloses the claimed feature. Are you telling me that examiners and APJ’s can’t figure out what’s wrong with their fact finding when the references don’t disclose a claimed feature?”Actually that’s not what he said. What he said was that the reference was unclear by what it meant (meaning it was unclear to his layman self) and that since the PTO bears the burden of putting forth the prima facie case he thinks Dujon’s language is insufficient to establish that the endo targeted chromosomal DNA. In other words, since he himself doesn’t understand what the reference is saying, then the PTO hasn’t made a prima facie case. Nevermind that he is completely incompetent to read the reference and that it only takes a couple of hours of reading to make yourself competent enough to read what the reference is saying.”The court didn’t make their own factual findings. “I understand what you’re saying, but in effect he’s gone ahead and said that he finds that the sentence in Dujon is insufficient, legally, to make a factual finding period as to what it means. Preposterous. The sentence obviously means something to one of ordinary skill. It is up to the PTO, in its expert capacity, to read the reference from the point of view of a person of ordinary skill. The process of reviewing that reading from a point of view of complete ignorance does nobody any favors. The reference itself says plenty in that sentence to one of ordinary skill and it shouldn’t fall to the PTO to hold the reviewers hands through what it means to one of ordinary skill. Or, if you prefer, you can simply say that he felt the reference is “silent” and then explains his reasoning for feeling it is “silent”, where he explains that due to lack of clarity the reference doesn’t disclose anything. That is, in effect, a finding of fact. Or if you prefer, a finding of “silence” in lieu therof. I’d really like to read the brief on what they had to say re this though. I actually may can do that lol. Anyhow, got work. Cya for now.
“That is not how review of factual findings should take place. The reviewer should simply put forth what factual findings they have made and note which appear to be extraneous to those.”Appellate courts are not fact finders. They should not be making any findings of facts. They should be reviewing the findings of fact made by the fact finder (e.g. jury, trial court).”Doing otherwise should be clear error in review since it leaves the lower body wondering just what facts the upper body was able to find, and why it made extraneous factual findings beyond those found, and what would need to be present to find such a fact (say, in this instance, you might need a tertiary reference to show the inherent qualities of the enzyme, which may well already be on the record and overlooked by the CAFC).”No. An appellate court finding facts is acting in error. Appellate courts are not fact finders.You’re as terrible at this as Examiner Mooney.
Remind me ta rd, do they review factual findings like, say, anticipation, de novo or not?
The Federal Circuit’s review of PTO findings of fact (and anticipation is a question of fact) is for substantial evidence, not de novo.See Zurko, examinertard.
And how does a court go about reviewing findings of fact for substantial evidence mssr tar d? What’s the procedure (if there is any)?
Holymackerel you are a moron.Standards of review is a pretty simple concept that you would learn in first year civ pro if you got off your a$$ and went to law school. As you’re too lazy to do that, please don’t expect me to spoon feed it to you through blog postings. I can be as lazy as you.
Standards of review may well be a pretty simple concept, but just how that review is carried out is a “concept” that I’ve seen very little on. Thought you may well be correct that they touch on it in Civ pro and that I’d benefit therefrom. I simply say that I’ve seen it done in such a slipshod manner so many times that it is embarrassing.
If you don’t know how the “process” of the substantial evidence standard of review of PTO factual findings is done, or supposed to be done, by the Fed. Cir., how is it that you can conclude that you’ve seen it done in such a slipshod manner so many times? The process is fairly simple: the court looks at the findings of fact that the examiner/Board made in the record, and then reviews the evidence provided (e.g. the references, the portions of the references cited, any affidavits, declarations, exhibits submitted, etc.) and determines if that evidence is sufficient to allow a reasonable person to reach the conclusion that the examiner/Board reached. In other words, the court decides whether a reasonable person, having the evidence that the fact finder (i.e. the examiner/Board) had, could have reached the same conclusion as the fact finder. The court is not to review the evidence anew and decide for themselves what factual determinations they would have made with the evidence, or substitute their judgment in place of the fact finder’s judgment.You appear to be of the mindset that anytime the court finds that the evidence does not meet the substantial evidence burden, then the court has done a “slipshod” job of review. That is nonsense. I think a fairly safe estimate for the affirmance rate of PTO factual findings by the Fed. Cir. is 90+%. That is because the substantial evidence standard of review is fairly deferential. As you will recall, prior to Zurko, the standard of review of PTO factual findings by the Fed. Cir. was clear error, which is a less deferential standard. The PTO asked for, and got, the more deferential substantial evidence review in Zurko. So when they do a sh!tty job of fact finding, they shouldn’t b!tch and moan when they get called on it by the Fed. Cir.
“The process is fairly simple: the court looks at the findings of fact that the examiner/Board made in the record, and then reviews the evidence provided (e.g. the references, the portions of the references cited, any affidavits, declarations, exhibits submitted, etc.) and determines if that evidence is sufficient to allow a reasonable person to reach the conclusion that the examiner/Board reached. In other words, the court decides whether a reasonable person, having the evidence that the fact finder (i.e. the examiner/Board) had, could have reached the same conclusion as the fact finder.”Yep, pretty much what I thought since I’ve seen it done correctly on occasion. Yeah a lot of problems arise from that. And doubly so when they give only cursory explanation as to their ultimate conclusion of the fact lacking substantial evidence. It gives the reviewer the easy out of stating there is no fact to be found with substantial evidence support in the instant reference due to his own inability to understand the reference. This is even more of a problem because no examiner who isn’t a lawyer (and not even many of the ones that are) would understand an appeal that came back stating that there wasn’t substantial evidence backing up the factual finding to simply mean that the reviewer was a bit confuzzled so they need another reference to clarify what the original reference meant. THEY THINK THAT THEY’RE SUPPOSED TO BE READING REFERENCES FROM THE POINT OF VIEW OF A PERSON OF ORDINARY SKILL. NOT AN ORDINARY TA RD THAT IS CONFUZZLED AND PUNTS BECAUSE HE CAN’T BE BOTHERED TO EDUCATE HIMSELF SO HE CAN READ COMPETENTLY. People around here don’t ordinarily presume ignorance/incompetence on the part of their fellows, especially those who are reviewing cases. Many (if not nearly all) folks don’t even have a clue as to what happens on review. That, all together, along with each individual piece, is a problem.But thanks for the explanation. And likewise, nah I don’t think a slipshod job is when they find no substantial evidence. I think a slipshod job is when they don’t explain themselves what so ever. At least T makes it clear that the only issue is his own inability to read a technical reference. That, in this case, can be cured by another reference explaining the term to him. Though he doesn’t go the extra mile and state for the person getting the case back that such is all that would be required. Little lazy of him since he already wrote like 20+ pages.
“And doubly so when they give only cursory explanation as to their ultimate conclusion of the fact lacking substantial evidence.”J. Taranto provided more than a “cursory explanation” for why the prior art failed to 1) disclose all of the claimed features; 2) provide a reason for modifying/combining the prior art; and 3) provide a reasonable expectation of success for modifying/combining the prior art. Again, the fact that you don’t agree with his decision does not mean that he did a “slipshod” job or provided only a “cursory explanation.” He was very clear on what he regarded as the deficiencies in the fact finding related to all three of those questions of fact.”It gives the reviewer the easy out of stating there is no fact to be found with substantial evidence support in the instant reference due to his own inability to understand the reference.”Your ability to not get it is simply amazing. The patentee/appellant in this case certainly understood the references (e.g. Frey and Dujon) and when the examiner/Board stated that the references disclosed all of the claimed features, the patentee/appellant disagreed. And the patentee/appellant explained to the court why the references didn’t disclose all the claimed features. The court had patentee/appellant’s arguments and the examiner’s/Board’s arguments before them. And the court decided the patentee/appellant was correct that the references didn’t disclose all of the claimed features. And didn’t provide a reason to modify/combine. And didn’t provide a reasonable expectation of success.”People around here don’t ordinarily presume ignorance/incompetence on the part of their fellows, especially those who are reviewing cases. Many (if not nearly all) folks don’t even have a clue as to what happens on review.”Again, are you telling me that examiners don’t understand that their rejections are subject to review by APJ’s and Fed. Cir. J’s who don’t deal with the exact same technology that the examiner examines on a day in and day out basis? Are you really telling me that you, and most of your compadres over there, are ignorant of this very basic aspect of the whole process?”At least T makes it clear that the only issue is his own inability to read a technical reference. That, in this case, can be cured by another reference explaining the term to him. Though he doesn’t go the extra mile and state for the person getting the case back that such is all that would be required.”It’s not J. Taranto’s job to provide the evidence and explanation as to the scope and content of the prior art. That’s the examiner’s (i.e. your) job. So if the claim recites a widget comprising X and you produce a reference disclosing a widget comprising Y and you just want to get away with, “Well, everybody of ordinary skill in the art knows that X and Y are the same, or that Y always includes X” then you d#mn well better provide some support (i.e. some evidence) for that argument if you want to persuade an APJ and/or Fed. Cir. J. who doesn’t spend day in and day out searching widget applications and prior art that you are correct. It’s not their job. It’s your job. And if you don’t do your job and you get reversed it’s not because J. Taranto is lazy, it’s because you’re lazy.Your problem, 6, is that you, and basically all of the examiners, are living in a bubble. You think because you’ve “persuaded” or “convinced” your primary and/or your SPE and/or your QAS that your rejection is proper that you’re doing the job correctly. Here’s a newsflash for you: your primary/SPE/QAS isn’t even listening 90+% of the time your jabbering on and on about how totally awesome your rejection is. They’re sitting there thinking about heading over to Eisenhower Ave to catch a movie during their lunch two hour and they wake up from their daydream and say, “Huh, what’s that you were saying? Oh, you rejected all the claims? Great. Where’s my pen so I can sign and send this on up?”