by Dennis Crouch
In re Steve Morsa (Fed. Cir. 2015) (Morsa II)
This is the return-appeal, a divided panel has now agreed with the patent office that its cited prior art is sufficiently enabling to serve as an anticipating reference.
In its 2013 Morsa decision (Morsa I) involving the same issues, the Federal Circuit ruled the PTO had applied the incorrect prior-art-enablement procedure and remanded. The disclosure in question is a short press-release from Peter Martin Associates that announces a product known as “HelpWorks” that allows folks to “use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.” Morsa’s claim in question – Claim Number 271 – is directed toward a “benefit information match mechanism” that requires (1) storing benefit registrations; (2) receiving a benefit request; (3) determining whether the request matches a registration; and (4) providing a benefit results — all “at least in part via a computer compatible network.”
Enabling Prior Art: A prior art reference being used for anticipation must be enabling. To be anticipating, the prior art must “teach a skilled artisan … to make or carry out what it discloses in relation to the claimed invention without undue experimentation.” However, during patent prosecution prior art cited by the USPTO is presumed to be enabling unless that issue is directly challenged by the patent applicant. In Morsa I, the Federal Circuit ruled that an applicant’s direct challenge shift’s the burden to the PTO if it is a “non-frivolous argument that cited prior art is not enabling.”
While an applicant must generally do more than state an unsupported belief that a reference is not enabling, and may proffer affidavits or declarations in support of his position, we see no reason to require such submissions in all cases. When a reference appears to not be enabling on its face, a challenge may be lodged without resort to expert assistance. Here, Morsa identified specific, concrete reasons why he believed the short press release at issue was not enabling, and the Board and the examiner failed to address these arguments.
On remand following Morsa I, the PTO particularly addressed Morsa’s enablement argument and ruled that the anticipating reference was enabled — finding that the reference taught everything that person with ordinary computing kills needed to know in order to make and use Morsa’s claimed invention. Now on appeal, the Federal Circuit has affirmed.
In the process, the court made a set of important findings. First, the starting point of this analysis is the level of knowledge of a skilled artisan as of Morsa’s critical date — and the question is whether the prior art reference enables that skilled artisan to create Morsa’s invention. Building upon this starting point, the court included a number of admissions from Morsa’s application. In particular, Morsa had indicated in his background section that several different aspects of the invention (processors, memory, search routines, etc.) were “within the knowledge of those of ordinary skill in the art.” The court next focused a bit on Morsa’s claimed invention — finding that in includes only four basic claim limitations and that “each of those limitations can be mapped directly onto the [prior art] reference.”
Writing in dissent, Judge Newman offers the following:
The Board recognized that some of the claim steps are not described in the press release. The Board solved this dilemma by taking what it called “Official Notice” of the missing subject matter. And my colleagues solve this dilemma by finding the missing subject matter in the Morsa specification by stating that since the specification states that a person skilled in the art would know how to “implement” the claimed system, that person would have “knowledge” to fill the gaps in the prior art. However, we are directed to no disclosure in the prior art of all the claim elements and steps. “Anticipation” is not established in accordance with law.
“Official Notice” is not anticipation. . . The applicant’s specification is not prior art . . . [Rather] Enablement of the prior art must come from prior art.
= = = = =
I have pasted below the entirety of the 1999 press release being used as prior art.
CHICAGO–(BUSINESS WIRE)–Sept. 28, 1999–
Peter Martin Associates is moving eligibility screening one step closer to public availability with the announcement that its expert screening solution, HelpWorks(TM) is now Web enabled.
The launch of HelpWorks Web Edition(TM) took place today at the APHSA-ISM (American Public Human Services Association – Information Systems Management Conference) in Columbus, Ohio. The talk at the conference was the Government’s migration to e-commerce empowering the public to avoid long lines and seemingly endless forms to secure government services.
HelpWorks(TM) is a state-of-the-art software program designed to help maximize the benefits and services that consumers receive from Government agencies. It can be configured to evaluate any or all benefits and programs required – Federal, State and/or local.
HelpWorks Web Edition(TM) supports both a professionally-directed deployment model – in which end users are professional caseworkers – or as stated above, a self-service model in which consumers use the Web to screen themselves for benefits, services, health risks, or anything else an agency wishes to implement via its eligibility library.
The power behind this unprecedented flexibility in application and access is PMA’s newly released Expert Eligibility Server(TM) (EES) technology. The EES engine allows an agency to utilize HelpWorks Web Edition(TM) as well as other applications that will leverage this dynamic technology. With EES as the backbone, agencies can rapidly deploy eligibility solutions for touch-screen kiosks, interactive voice response systems, the Web and many other platforms.
Peter Martin Associates is the premier provider of software designed to support public and private social service agencies, focusing on family centered case management, information and referral, and eligibility screening. Information about Peter Martin Associates may be found on the web at www.petermartin.com.
What disappoints me in this case is the wobbly way that novelty is explored in the US jurisprudence. I find the inherency doctrine unconvincing.
In England there are two and only ways a prior art reference can destroy novelty. Either it announces “clear and unmistakeable directions to do something within the scope of the claim” Or, the “inevitable result” of following the teaching in the reference is something within the scope of the claim. Of course it goes, almost without saying, that its teaching must be enabling.
The EPO does novelty by asking itself a different question: for the skilled person, studying the reference, is something within the scope of the claim “directly and unambiguously derivable” from the reference.
These are questions that provoke the litigating parties to file effective evidence and to support it with cogent argument. That in turn puts the tribunal or court in a position to decide the issue with authority. Here, does PMA give such “clear and unmistakeable directions”. Can you practise PMA at all, without falling within the claim? If that had been debated, I think the court would have found easier the ultimate question, Novel Y/N? I just think it’s a shame that the Higher Courts in the USA cannot lay down a roadmap that helps the lower courts to reach solid well-reasoned decisions on novelty.
And of course it goes. almost without saying, that there’s a “squeeze” between enablement and obviousness. You can’t avoid it, so you have to be aware of it when drafting your patent. To present your invention persuasively, and contrast its brilliance with mere routine, you often need to write in your application that the skilled person would be able without problem to put something or other into practice. But any such statement, if carelessly included, can come back to hurt you when you want to convince the court that the claimed subject matter wasn’t obvious. There’s an old saying “He who lives by the sword dies by the sword”. It has survived so long because it accords with common sense. To the extent that patent law fails to accommodate common sense, it will lose its audience. For me, the common sense outcome here would have been to declare the claim obvious. For me, it happens time and time again that the common sense outcome “The claim is obvious” cannot be got to. That the “right” outcome cannot be attained is, for me, is an indictment of the way obviousness is handled in the USA.
But the problem here, Max, is the statute. Read 103 — there is no room for enablement analysis in its formula.
Thanks for the thought Ned but I don’t see that as decisive. Consider Article 56 of the EPC:
“An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.”
Is there any “room” in that text “for enablement analysis”?
All I’m saying is that when an Applicant makes an admission in his patent application that some step or other was routine and requires no inventive activity, he shouldn’t be surprised if the court uses that admission against him, when it comes to assessment under 103 or 56.
Beware the fallacy if comparative analysis: here, once again, is the attempted insertion of EP law into US law.
Ned,
I find your “lynchpin” of enablement lacking legal basis.
For EITHER 102 or 103, science fiction is not permissible. All “enanblement” does is separate the real from the fantasy, and this applies to the very meaning of what “art” means.
Can you legally distinguish between science fiction being permissibly for 103 and not permissible for 102?
MaxDrei,
It is less how inherency is actually handled here, and more how you may have seen it discussed by those on this blog that you tend to “give weight” to.
It is NOT a coincidence that those very selfsame people have never picked up my call to discuss matters using the patent doctrine of inherency.
This is simply not an accident.
In view of disputes in the comments about taking “judicial notice” here it is in Federal Rules of Evidence Rule 201: “Judicial Notice of Adjudicative Facts
(a) Scope. This rule governs judicial notice of an adjudicative fact only, not a legislative fact.
(b) Kinds of Facts That May Be Judicially Noticed. The court may judicially notice a fact that is not subject to reasonable dispute because it:
(1) is generally known within the trial court’s territorial jurisdiction; or
(2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned.
(c) Taking Notice. The court:
(1) may take judicial notice on its own; or
(2) must take judicial notice if a party requests it and the court is supplied with the necessary information.
(d) Timing. The court may take judicial notice at any stage of the proceeding.
(e) Opportunity to Be Heard. On timely request, a party is entitled to be heard on the propriety of taking judicial notice and the nature of the fact to be noticed. If the court takes judicial notice before notifying a party, the party, on request, is still entitled to be heard.” …
One must also note the various statements in KSR about 103 analysis such as: “As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”
[Or, as expressed elsewhere in KSR, the 103 POSITA’s knowledge or common sense is not limited to just the text of prior art documents in the same field.]
Right, which is why when Judge Newman makes radical statements like “Official notice is not anticipation,” she is wrong.
Bless her heart. Fighting the good fight to “protect the law of anticipation”
Nothing in the FRE prohibits anticipation being based on official notice.
Also worth noting that the APA (and applicable case law) provides for substantial evidence review of adjudicatory facts as well.
Topce,
You are aware that anticipation is necessarily single source, right?
Your comment about “based on official notice” seems to indicate NO source is required.
Whatever that is, that’s not anticipation.
There needs to be a source. But officially noticed facts can be the source. Why not?
That’s not the same as what I am asking.
Think of it this way: what does it take to establish inherency? Why must one go to that degree?
Not even to mention that “anticipation” is a term of art for a 102 rejection [not 103] as even MPEP Section 2131 notes.
I think it is time for Judge Newman to retire.
Some statements she made in her dissent were just flat out wrong.
A specification can include admissions that something is prior art.
Also “official notice” can be used to fill in the gaps in a 102 analysis.
If a Euro patent uses the word “lift” can I not use that to reject an elevator?
It isn’t “anticipated” that one skilled in the art would understand dialect differences. Lol.
Also worth noting that her dissent wasn’t even on point.
“Also ‘official notice’ can be used to fill in the gaps in a 102 analysis.”
No it can not.
note how i put official notice in quotes.
Explaining anticipation is not “official notice”
So? And you meant what by doing that?
That Judge Newman doesn’t understand what Official Notice means.
Judge Newman is also out of touch with the standards of review in the APA.
The majority opinion correctly applied the substantial evidence standard.
The claim recites “A system comprising A, B, C, D, and E.”
The prior art reference discloses a system comprising A, B, C, and D. The examiner takes Official Notice that E is old and well known.
Is that a proper case of anticipation?
Very much looking forward to your answer.
It depends how well known E is. In prosecution the examiner is a fact finder, so he gets substantial evidence review of official notice of Element E under Zurko.
In litigation the judge can decide not to take this to the jury under the FRE.
So in certain cases, yes.
Not what you wanted to hear huh?
In the event of a case with a claim reciting a system comprising A, B, C, D, and E and a rejection under 35 USC 102 by a reference disclosing a system comprising A, B, C, and D and a taking of Official Notice that E is old and well known, I am 100% certain that the rejection would be reversed by the PTAB. 100%. As is every other practitioner. Slam dunk reversal. Not an iota of doubt about it.
“In prosecution the examiner is a fact finder, so he gets substantial evidence review of official notice of Element E under Zurko.”
Not sure why you’re so hung up on the standard of review. It wouldn’t matter. The burden of establishing unpatentability is on the examiner, and it’s a preponderance of evidence. In the case of anticipation, a question of fact, the examiner has to establish, by a preponderance, that the identical invention claimed is disclosed by a single reference, in as much detail as is recited in the claim. And the PTAB doesn’t review the examiner’s findings for substantial evidence, they review the examiner’s findings for a preponderance (i.e. does the evidence provided by the examiner establish the requisite facts more likely than not). So even if E is old and well known, the rejection for anticipation still fails as it doesn’t establish that a system comprising A, B, C, D, and E was identically disclosed by the prior art.
Not what you wanted to hear, huh?
“It depends how well known E is.”
BTW, no it doesn’t. How well known E is, or isn’t, is completely irrelevant to the issue of whether a reference disclosing a system comprising A, B, C, and D anticipates a claim to a system comprising A, B, C, D, and E.
Hint: the reference doesn’t anticipate the claim.
“In litigation the judge can decide not to take this to the jury under the FRE.”
Wrong again.
One more BTW, of course the chances of you actually getting such an anticipation rejection past your conference of SPE/QAS/otherknownothingdonothinguslessGS-15 and up to the PTAB are somewhere very, very, very, very, very, very close to 0%.
You are so clever.
I’m talking about taking official notice that E is inherent.
You should know that is what I mean.
And leave office politics out of it.
Topce,
No one can read your mind or read the arguments that you had wanted to (but did not) make.
To wit, your “I’m talking about taking official notice that E is inherent.” is nowhere evident in your posts, nor is it something that any reasonable person would give you credit for being in your posts.
“And leave office politics out of it.”
That’s far less “office politics” and far more merely an indicator that your views have been seriously warped by your time in the Office.
You want out? I seriously recommend simply getting up – right now – walking out, and just not coming back.
Official Notice that E is inherent? I should know that’s what you meant?
You are off the deep end. Way, way past the point of no return.
BTW,you can’t take Official Notice that a feature is inherent in a reference. Have your local SPE/QAS/otherknownothingdonothinguselessGS-15 explain why.
Do you have a case saying that anticipation cannot be based on a judicially noticed fact?
See MPEP 2142 (“The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.”)
“Not sure why you’re so hung up on the standard of review”
The correct standard of review is substantial evidence.
The Board is not following Supreme Court precedent if they are using a preponderance of the evidence standard.
the appeal success rate numbers should not be a coin flip, they should weigh against the applicant.
I claim a method to turn the sky from blue to green comprising A B C & D.
Can I make an anticipation rejection without a reference saying the sky is blue?
“the appeal success rate numbers should not be a coin flip, they should weigh against the applicant.”
Like,… why?
(sorry, I cannot read your mind ans see the “fabulous logic” at work on this point either)
You’re even more confused than I originally thought.
Unpossible.
Examiners should get deference like fact finders at every other agency except the PTO.
30% is substantial evidence.
Do you have any rebuttals?
Because merely saying I don’t know what I am talking about is not an argument.
Just because the PTO doesn’t apply the law properly doesn’t mean that the way they apply the law is correct.
Neither of you are arguing in good faith in my opinion. You are arguing to squash me because considering what I have to say and doing the work to rebut my points could require some introspection.
Topce,
Your views simply are NOT the law.
You are doing that “coming out of the weeds and show a case that disproves what I say” thing again.
I seriously doubt that you did attend law school as your “logic” here simply shows no appreciation for what law is or how it is made. IF you ever did get into a law school, I would greatly question any school that matriculate and PASS your “thinking skills” off as a bonafide law school graduate.
“your “not in good faith” when you CLEARLY have not made the arguments that you think that you have made (leaving things ONLY in your own mind) is not what “good faith” even means.
Your latest escapade here: where the H did you pull this “30%” from? Why would you think that less than a one third probability should garner ANY respect – anywhere?
Your views are simply bizarre and unconnected with any sense of reality.
Again. If my views are so wacky
1) why are you replying?
2) where is your rebuttal.
Easy to just shoot stuff down. You probably aren’t going to reply now which is good because now I can share my ideas without you sticking your neck in every one of my posts.
You leave me alone and I leave you alone. Cool?
Topce,
Your request is flat out denied.
I am not here to be “left alone.”
I want dialogue.
You , apparently, on the other hand, only want your monologue and to spread your “philosophy” as if it were law, and that to be uncontested.
I asked – and you replied directly – that you were an attorney.
No self-respecting attorney would treat the law as you do. No self respecting attorney would want to be unchallenged in treating the law as you do.
You are NOT an attorney.
Right I want a dialogue. Just not with you. You are incapable of having a dialogue with anybody on this board as your posts have illustrated.
You want to frame me as wanting a monologue and then when I don’t fold you go for the personal attacks.
I will unconfuse you when I have more time. Busy now.
Sure…I think I just disagree. But go for it.
With all due respect, it appears that you don’t understand the difference between standards (i.e. burdens) of proof and standards of review.
During patent prosecution, the Patent Office has the burden to prove that the claims are unpatentable. You can see any number of cases for this, e.g. In re Warner, In re Caveney, In re Oetiker. See the first sentence of 35 U.S.C. 102 for why the PTO has the burden.
All factual questions must be resolved by a preponderance of the evidence. See In re Caveney. So for anticipation, which is a question of fact, the examiner must establish, again by a preponderance (i.e. more likely than not, often thought of as 50.0000001%), that the claimed subject matter is identically disclosed by a single reference. See the first sentence of 35 USC 103 for the requirement for identity of invention. See MPEP 2131 too. For the requirement that the claim be identically disclosed by a single reference, see, for example, cases like Karsten Mfg. Of course, “secondary references” are permissible in anticipation rejections. See MPEP 2131.01.
Official Notice and inherency are entirely different concepts. Inherency requires that the evidence provided in support of the rejection makes it clear that the missing feature is necessarily present in the reference, just unstated. Official Notice is an acknowledgement that the reference(s) doesn’t disclose the feature, but that the missing feature is capable of instant and unquestionable demonstration as being well known. If requested by applicant, documentary evidence must be supplied to support the taking of Official Notice. So unlike inherency, the missing feature is clearly not “necessarily present” in the reference.
So you can’t take Official Notice that a feature is inherent in a reference.
The PTAB reviews the examiner’s factual findings to determine if they are supported by a preponderance of the evidence. See Ethicon v. Quigg. See also any number of PTAB decisions where they have a finding of fact section and note that all of the findings are supported by a preponderance (and almost always have a cite or footnote to Ethicon).
The “review” that the PTAB does to an examiner’s findings of fact is not the “standard of review” that a court does to the findings of a trial court or an administrative agencey (e.g. the PTO). The issue in Zurko was whether the Fed. Cir. was required to review the examiner/PTAB findings by the substantial evidence standard of review (which is often referred to as court-agency review) or the clear error standard of review (which was the standard of review prior to the APA, which was passed in 1949 IIRC, and which is often referred to as court-court review as it is the standard of review that appellate courts apply to trial court findings of fact). The Fed. Cir. alleged that an exception in the APA allowed them to continue using the clear error standard (which is less deferential than the substantial evidence standard), but the PTO argued they were entitled to the less deferential substantial evidence standard of the APA. The PTO won in Zurko. However, that had no effect on the standard (i.e. burden) of proof required at the examination stage. That standard of proof was, is, and remains preponderance of the evidence (the lowest standard of proof, as explained in Caveney).
See MPEP 2142 (“The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.”)
I knew and agreed with everything you stated until this point.
“However, that had no effect on the standard (i.e. burden) of proof required at the examination stage. That standard of proof was, is, and remains preponderance of the evidence (the lowest standard of proof, as explained in Caveney).”
Under 102 the PTO bears the initial burden of proof to show that all of the elements are disclosed in a single reference. However, the initial rejection does not have to meet a preponderance of the evidence standard. The burden of proof for inherency is the same for that of obviousness. (MPEP 2112).
So when the burden shifts back to the applicant, and the examiner finds that the evidence— that something is not well known in the art –is unpersuasive based on the preponderance of the evidence, what standard of review does the board use to determine this based on the record?
The PTAB is not a trial court. The examiner gets to determine whether the preponderance of the evidence justifies (un)patentability. Aka, if the examiner believes something is well known, then it is. The standard is meaningless for all practical purposes.
The PTAB is an ajudicative appellate body and can only rely on the record put before it.
So if there is more than a “mere scintilla” of evidence that something is well known in the art TO BE AN EQUIVALENT to a claimed structure, does the board have the authority to overturn the rejection? My position is that Zurko dictates– no– the PTAB does not have such authority.
So why am I hung up on the standard of review? Because it is the only thing that matters.
You should also read J. Nies’s additional comments from the SSIH Equipment case.
link to scholar.google.com
This article is also helpful, if a bit lengthy:
link to stradley.com
Pages 33-36 are helpful.
So no, the BPAI/PTAB have not been applying the law wrong since Zurko IV. They’ve been applying it correctly.
“The examiner gets to determine whether the preponderance of the evidence justifies (un)patentability.”
The examiner makes the determination, on the totality of the record (i.e. evidence and arguments for AND against patentability) meets the preponderance standard (i.e. it is more likely than not). But if the applicant disagrees, and appeals to the PTAB, the PTAB reviews and decides if the examiner’s decision is correct (i.e. if, on the totality of thre record the claims are more likely unptatentable than patentable).
” Aka, if the examiner believes something is well known, then it is.”
Uhm, no. The factual questions must be resolved with objective evidence. The opinion of an examiner of what is “well known” is not objective evidence.
“The standard is meaningless for all practical purposes.”
No, it’s very meaningful. Read J. Nies in SSIH equipment where she explains how standards (burdens) of proof and standards of review relate to one another.
‘The “review” that the PTAB does to an examiner’s findings of fact is not the “standard of review” that a court does to the findings of a trial court or an administrative agency (e.g. the PTO)’
This is not settled law. The PTAB (w/r/t examination) is an internal appellate body.
The examination process is an informal adjudication conducted ex parte.
It appears you are treating the PTAB as if it conducts appeals from examination as a formal adjudicatory process.
There is nothing other then two or three federal circuit cases justifying your position.
Zurko, decided afterward, leaves the question open.
“My position is that Zurko dictates– no– the PTAB does not have such authority.”
Again, Zurko had absolutely nothing to do with the Board’s review of examiner findings of fact. Nothing.
“So why am I hung up on the standard of review? Because it is the only thing that matters.”
No. The standard (burden) of proof matters. The outcome of the appellate review matters dependent on the underlying standard of proof. What constitutes a clear error, or substantial evidence, may change dependent on if the underlying standard of proof is preponderance, clear and convincing, or beyond a reasonable doubt.
As J. Nies noted in SSIH, “adopting a ‘standard of proof is more than an empty semantic exercise.'”
You have to understand that “substantial evidence” is not, repeat is not, a standard of proof. The examiner cannot resolve factual questions (i.e. establish facts necessary to support the rejection) with “substantial evidence.” The reason for that is clear: substantial evidence is not a standard of proof. As Caveney, and SSIH, clearly state, preponderance of the evidence (i.e. more likely than not) is the lowest standard of proof there is.
Your legal authority is getting shakier.
Now you are relying on conjecture and a journal article. I can throw 20 articles regarding the APA and the USPTO back at you from 3 years worth of research but I choose not to.
You said that the factual questions must be resolved with objective evidence. The opinion of an examiner of what is “well known” is not objective evidence.
A determination of the ‘state of the art’ is the first step in any obviousness or anticipation analysis.
You are reducing any opinion based on objective evidence to a MERE opinion. To say that it is well known that the sky is blue is an opinion? Must I provide a reference for that?
“This is not settled law.”
Yes, it is.
“The examination process is an informal adjudication conducted ex parte.”
I’m not sure what you mean by “informal adjudication.” There is a written record, and the requirements of the APA apply. The applicant by filing the application and meeting all of the statutory requirements is presumed entitled to a patent. Unless the Patent Office can establish, by a preponderance of the evidence, that the applicant is not.
“It appears you are treating the PTAB as if it conducts appeals from examination as a formal adjudicatory process.”
Again, not sure what you mean by a “formal adjudicatory process.” There’s a written record and the PTAB determines whether the examiner has carried his/her burden in establishing, by a preponderance of the evidence, that the claims are not patentable.
“There is nothing other then two or three federal circuit cases justifying your position.”
I’m sure there are more, but is it really necessary to cite for you every single case that says that the standard/burden of proof on the PTO during examination is preponderance?
“Zurko, decided afterward, leaves the question open.”
No, it does not.
I am not arguing that the PTO doesn’t need to prove by a preponderance of the evidence that something is not patentable.
I am saying that it is the examiner and not the PTAB that makes this determination.
The PTAB reviews this determination.
“Your legal authority is getting shakier.”
You think Warner, Caveney, and Oetiker are shaky? Ethicon and SSIH are shaky? Why don’t you Shepardize them? Why don’t you see how many PTAB final decisions cite Warner, Caveney and Oetiker for the exact same reasons I’ve cited them to you? Feel free to see how many PTAB decisions cite Ethicon for the preponderance standard during examination. It shouldn’t take you three years.
“Now you are relying on conjecture and a journal article.”
No conjecture from me. The journal article was for your edification. I wasn’t citing it as precedent or as any sort of authority. I think that’s pretty clear from my posts.
” I can throw 20 articles regarding the APA and the USPTO back at you from 3 years worth of research but I choose not to.”
Feel free to. I doubt even one will contradict the well settled law that the standard/burden of proof during examination is preponderance. That’s the standard. Has been for decades, if not longer.
“You said that the factual questions must be resolved with objective evidence. The opinion of an examiner of what is ‘well known’ is not objective evidence.”
Examiner’s “opinions” (by which I think you mean conclusions or determinations), that are not supported by objective evidence are not evidence, they’re not facts. They’re opinions.
“A determination of the ‘state of the art’ is the first step in any obviousness or anticipation analysis.”
Correct. And how does the examiner resolve the state of the art (by which I assume you mean the scope and content of the prior art)? By citing objective evidence (e.g. prior art references).
“You are reducing any opinion based on objective evidence to a MERE opinion. To say that it is well known that the sky is blue is an opinion? Must I provide a reference for that?”
This appears to be the favorite silly example provided by examiners (along with the boiling point of water) whenever the issues of Official Notice or inherency are discussed. If you want to take Official Notice that the sky is blue, be my guest. I seriously doubt that the number of cases where it’s required is very many, and the number of cases where it’s actually dispositive is even fewer, or none at all.
Back to your question of “I claim a method to turn the sky from blue to green comprising A B C & D.
Can I make an anticipation rejection without a reference saying the sky is blue?”
Sure. If you have a reference that discloses a method comprising A, B, C, and D. Then you have a very strong argument that the method would inherently change the sky from blue to green.
If your reference discloses a method comprising A, B, and C, can you take Official Notice that E is old and well known and thus the reference anticipates the claim?
You are trying to argue that the cases that say the PTO as a whole must prove unpatentability by a preponderance of the evidence means that the PTAB must do so as well.
I am saying that these cases do not extend to the PTAB and merely apply to examiner determinations.
The PTAB should, under Zurko, review the Examiner’s record and give substantial evidence to the findings in that record. This is all I am saying.
“Sure. If you have a reference that discloses a method comprising A, B, C, and D. Then you have a very strong argument that the method would inherently change the sky from blue to green.
If your reference discloses a method comprising A, B, and C, can you take Official Notice that E is old and well known and thus the reference anticipates the claim?”
No– but you can say that one skilled in the art would interpret E as equivalent to D.
Your authority on the point you think I am trying to make is strong.
Your authority on the point I am trying to make is weak.
“I am not arguing that the PTO doesn’t need to prove by a preponderance of the evidence that something is not patentable.”
Well, at least we’ve cleared that up.
“I am saying that it is the examiner and not the PTAB that makes this determination.”
Glad we agree on that.
“The PTAB reviews this determination.”
3 for 3. Yes, the PTAB does review this determination. And they review it to determine if the evidence provided by the examiner to resolve the required factual questions meets the preponderance standard. That’s Ethicon v. Quigg.
You appear to be advancing some novel theory that Zurko “left unsettled” the “standard of review” that the PTAB is (supposed to) apply to examiner findings of fact. There is nothing unsettled about it. The PTAB reviews the examiner’s findings of fact (whether they are outright questions of fact like anticipation or analogous art or field of endeavor or reasonable expectation of success) for whether they are supported by a preponderance of the evidence. If they are not, the PTAB reverses. It’s that simple. There’s nothing “unsettled” about it.
“The PTAB should, under Zurko, review the Examiner’s record and give substantial evidence to the findings in that record. This is all I am saying.”
What you are saying is wrong. Zurko had absolutely nothing to do with what standard of review the PTAB should apply to examiner findings. Nothing. Absolutely nothing.
That’s because the PTAB, under Ethicon, reviews the evidence relied upon by the examiner to resolve factual questions to determine if the evidence meets the preponderance of the evidence standard of proof. That’s the law. Sorry if you think me, the PTAB, the Fed. Cir., and every single member of the patent bar and every single APJ of the PTAB is incorrect about that, but you really should re-evaluate your theory.
“No– but you can say that one skilled in the art would interpret E as equivalent to D.”
Where do E and D come in? You said the claim was “a method to turn the sky from blue to green comprising A B C & D” If the reference discloses a method (for making chocolate chip cookies, as an example, or for treating toe nail fungus maybe), comprising A, B, and C, the reference doesn’t anticipate. Even if the examiner “takes Official Notice that E is old and well known” or “take Official Notice that the sky is blue.” What difference would that make?
Are you not really understanding that?
“You are trying to argue that the cases that say the PTO as a whole must prove unpatentability by a preponderance of the evidence means that the PTAB must do so as well.:”
The cases do say that. There is nothing in any of those cases that makes a distinction between the examiner’s findings of fact and the Board’s findings of fact. They are one in the same: they are the PTO.
“I am saying that these cases do not extend to the PTAB and merely apply to examiner determinations.”
Do you have any support from Warner, Caveney, Oetiker, Ethicon, etc. for that? Is there anything in all those journal articles and three years of research that you did that supports, or even suggests, that?
link to dl.dropboxusercontent.com
page 13
Why you put that in quotes is odd.
“Is” “that” “another” “bad” “habit” “you” “picked” “up” “from” “Malcolm?”
(Besides, you would have been better off putting “fill in the gaps” in quotes, as the reference to the MPEP by Paul points out the “gap-filling” instances in which more than one reference is used for an anticipation rejection.
For those of who write patents, can anyone identify a sensible reason why you would ever say that anything in your patent is “within the knowledge of those of ordinary skill in the art.” It seems like the reflex of an aged patent attorney that serves no purpose. If it comes up in prosecution, you can explain it then.
Patent profanity (induced by the courts) and such things as KSR (another Court inducement) inextricably lead to saying the minimal possible in patent applications.
This is not – and should not be – a surprise to anyone.
such things as KSR (another Court inducement) inextricably lead to saying the minimal possible in patent applications.
Only if your intent is to attempt to get a patent that you shouldn’t be entitled to. That’s the inherent premise of Crockett’s question though, isn’t it? The actual answer is “Because the applicant knew that the acts were within the knowledge of those of ordinary skill in the art.” If you’re asking why the applicant told a truthful detail in a document that is designed for both truth and detail it says more about you than the system.
“Only if your intent is to attempt to get a patent that you shouldn’t be entitled to. ”
Absolutely wrong.
There is a reason it is called patent profanity, son.
(And pointing to a broken scoreboard only means that you don’t understand that the scoreboard is broken – maybe you should actually listen to the discussions as to why the scoreboard is broken; just a thought)
Actually, RandomGuy, my premise was more honest than that. The premise is, reflexive incantations lead to confusion, and give examiner’s fodder for confused rejections, so why do it? And, sometimes, it is just not the case that the thing is known in the art, and sometimes, in the context of your invention, it is not known in the art.
I agree with your statement that if a claim recites a limitation, there are only possible outcomes. An incantation won’t change that.
In this Morsa case, the incantations led to an unexpected result, and were otherwise worthless. They established a high level of skill in the art. They established that an artisan “is capable of programming the invention” and thus, in combination with the reference, established that the reference was enabling. These consequences are pretty hard to predict while you are writing a patent application.
It’s like in baseball, when your own man say you were out: The fact that you beat the ball to first base becomes immaterial when the other team can point to your admission of prior arrival (APA).
The premise is, reflexive incantations lead to confusion, and give examiner’s fodder for confused rejections, so why do it? And, sometimes, it is just not the case that the thing is known in the art, and sometimes, in the context of your invention, it is not known in the art.
It’s not a confused rejection nor is this situation in some manner unique. If the admission was not textually made in this case, the only thing that would have changed is that the examiner would anticipate that a non-enablement argument was coming against his prior art, and would make an in-the-alternative 112a rejection against the claims as well.
Then the applicant would have to pick – do I argue the art couldn’t have done it? If so, it becomes simple to prove the claim isn’t enabled – the art couldn’t do it, and the spec is silent on teaching how to do it. If the opposite happens, and the applicant argues that the art could have done it, he has perfected the prior art rejection.
There was actually zero harm or confusion done by adding the words that something was previously known. Where the harm came in was in the failure to provide a teaching disclosure. The reason a teaching disclosure was not made in this case is the same reason that its not made in any other case – the inventor actually knows that it could be done by others, most likely because he got that part of the invention from somewhere else, because it is basic, or because he saw that someone else could do it.
The language in this case that makes it appear unique, about establishing skill and whatnot, is procedural – so that the board could be upheld without it being a new basis of rejection. Apply the same situation to a court case and the defense will just amend to add a 112 defense if it wasn’t present already. Either way if you’re arguing that something you personally didn’t teach is the novelty, your claim is going to fail, and you’re just quibbling over whether it fails the 103 statute or the 112.
In this case, you are likely correct. In the case I am writing today, I am not so sure.
Anybody still complaining about KSR has zero credibility and is a dinosaur.
And yet look at the incessant complaining about the Act of 1952…
Your aim, driven by your “philosophies,” remains woefully inadequate.