In his petition for writ of certiorari, Gilbert Hyatt asks:
Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.
This section of the MPEP allows a patent examiner to “reopen prosecution to enter a new ground of rejection” in response to a patentee filing an appellate brief. Hyatt argues that this approach violates the right to appeal under 35 U.S.C. § 134 and § 6(b). When I previously wrote about the case, I noted a “remarkably parallel” case from 1904 where the Supreme Court authorized mandamus action where the examiner refused to forward cases to the Board. U.S. ex rel. Steinmetz v. Allen, 192 U.S. 543 (1904). The Supreme Court in that case also wryly spells-out the justification for restriction practice — “to obtain more revenue” for the Patent Office.
In its newly filed responsive brief, the USPTO agrees that after having its claims “twice rejected . . . the applicant is entitled to appeal that rejection. . . [However], contrary to petitioners’ assertion, that procedure does not deprive any patent applicant of his right to review by the Board.”
The PTO draws a distinction with Steinmetz because it was related to a refusal to allow an appeal with regard to restriction practice — rather than repeated reopening of prosecution.
= = = =
My take here is that the PTO should be able to reopen prosecution when it acts reasonably. A mandamus action or APA lawsuit should be available if the agency acts otherwise.
Pretty funny that random examiner completely disappeared after his “examiners have a presumption” post.
I’m sure he’ll be back with more nonsense that predictability is the reason PHOSITA combines references.
Standard Operating Procedure…
… otherwise known as “Drive-by Monologue” or in the case of the “come-back-later-and-repeat-the-same-nonsense”: Internet Style Shout Down.
It would actually BE something if people actually had to address the counter points presented to them before they were able to merely disappear and then return with the same claptrap as if no one had said “boo.”
TP: “PTAB decisions in contested cases such as IPRs do not contain standard of review terms, because those panels are not sitting as appellate tribunals.”
But often cited in IPR decisions is 35 USC 316(e) “Evidentiary Standards- In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”
Dear Paul —
Are you asking a question? It sounds like your simply confirming the observation.
“Preponderence of evidence” is a first instance standard of proof term. Appellate standard of review terms like “clear error,” “de novo,” “substantial evidence,” etc. would be out of place in the IPR and PGR statutes.
David
I’ve been trying to post this for 48 hours, and it keeps getting caught in some blocker. So it’s a little out of time sequence. Let me try breaking it into two parts.
The PTO is so far in the wrong in so many ways in the Hyatt case…
Preface: the Hyatt case is another instance of what I’ve been trying to teach the patent bar in my recent articles—there are lots of cases that are losers when argued on patent law grounds, that become winners when argued on administrative law grounds. Hyatt is another example.
1. No agency may use guidance to raise legal hurdles against the public. None. Never. The most an agency can do with guidance against the public is “interpret,” and that only vis-à-vis “genuine ambiguity” (I had used the term “active ambiguity” in my articles). The Supreme Court just reminded us of that again a few weeks ago, in Kisor v. Wilkie link to supremecourt.gov MPEP § 1207.04, the rule at issue in Hyatt, goes beyond any “interpretation.” The rule is entirely made up out of whole cloth. It has no antecedent “ambiguity” in any statute or regulation. MPEP § 1207.04 is therefor entirely invalid — not procedurally invalid, facially invalid. Instead of this simple, easy-winner administrative law argument, Hyatt raised only exotic patent law arguments. I don’t understand. Maybe he’s fonder of fighting than winning.
2. An agency may not enforce any rule (guidance or anything else) against the public until the rule is published in the Federal Register, as required by 5 U.S.C. § 552(a). The first time the PTO ever published anything plausibly relating to § 552(a) was in January 2018 (and even that notice didn’t comply with statute). Mr. Hyatt’s facts predate that publication, and therefor no provision of the MPEP can be cited against any applicant for anything the applicant did before January 2018. Another simple-dimple argument that Hyatt didn’t raise. (And the statute of limitations has never begun to run either—another issue that made the difference between winning and losing that Hyatt didn’t raise.)
3 Dennis said: “My take here is that the PTO should be able to reopen prosecution when it acts reasonably” Well, yes, of course. But absolutely NO in the sense Dennis means. “Reasonably” means “in conformance with the Administrative Procedure Act,” doesn’t it? (Dennis, you ought to know better.) The PTO is completely off base and self-interested here—as the PTO does in everything else relating to Gil Hyatt, or administrative law protections for all other applicants. I’ve talked to enough PTO senior lawyers to be able to report that not only is there no knowledge of the APA among the PTO’s senior lawyers or PTAB APJs, they truly do not care to know or learn about, let alone follow, any law that gets in the way of production counts.
Let’s see if I can get part 2 through.
David,
You might be running into the “George Carlin” filter: an unpublished list of “bad” words that have been enacted (somewhat unevenly at that) in order to “promote” civility in the comment section.
As you may witness, that effort fails in being both over-inclusive and under-performing.
At a minimum, the trigger list should be explained in enough detail to avoid the inadvertent tripping (as you can also witness, this is especially exasperating when the word is buried somewhere in a detailed post).
I have noticed that leading articles themselves do not face this filter (in the past, I have had cut and paste direct quotes from the lead article BE the tripping point).
Perhaps, you could have Prof. Crouch turn your considerations into its own lead article…?
Part 2 of 3 (or 21.2) —
4. The discussion between AAA JJ and RandomGuy @ 18.3 about burden of proof… In an ex parte appeal, the examiner stands in exactly the same evidentiary shoes as a petitioner in a PTAB IPR/PGR trial. The PTAB regularly screws this up (much more often than they get it right). I touch on this in the “Part 3” article cited below—search for “Quist.” I hope to fully develop the issue in an article about this, which I hope will publish around the end of the year.
5. Greg DeLassus writes @ 6.1.1.1.1.1.2 and 1.2.1, “The PTO’s bad faith is less egregious than Hyatt’s, but neither side is really covering itself in glory here.” I disagree. As I was working on an amicus brief for Hyatt at the Federal Circuit and cert at the Supreme Court, I read some of the Hyatt file histories that had became public. Hyatt is an inventor of some great inventions, but as a patent agent—to avoid triggering a filter, why don’t I let you pick your own favorite and most extreme word. In contrast, the PTO has run roughshod over the law, up one side and down the other. The PTO’s papers—including by the Chief APJ and Deputy Director—range between apparently-intentional, walled-off ignorance and willful defiance of law. If it weren’t for sovereign immunity, the PTO would be penalized, and several of its lawyers would be disbarred. The PTO’s explanations for its procedural improvisations against Hyatt are utterly preposterous. Incompetence is not commensurate with a “basically lawless agency meting out its own brand of justice in a vindictive manner” (to quote the Supreme Court in Oestereich v. Selective Service System Local Bd. No. 11, 393 U.S. 233, 237 (1968)).
The PTO should stop breaking the law. The PTO should hire at least one lawyer that combines a shred of ethical decency with a molecule of competence in the Administrative Procedure Act with power to override short term financial interests of individual PTO employees. The shortest path for the PTO is to just follow the law. Treat Hyatt like any other applicant—he’s got the same due process and equal protection rights as anyone else. Give Hyatt the well-founded rejections that he is entitled to, instead of giving him such a rich supply of opportunities for recreational litigation over truly evil abuses. Remove every source of frustration except his own actions. And for any claims that have no well-founded rejections, then allow the claims.
Part 3 coming after the filter calms down.
Summarizing your multi-part (and richly crafted) positions would make an excellent article in its own right for this blog.
A. Lincoln @ 18.3.1.1.ad infinitum —
Just to be clear, I am agreeing with your clown suit hypothetical (and disagreeing with your skepticism of your own hypothetical).
I need to refine my statement a little. A PTAB decision would not acquire binding authority against anyone except the very parties to the decision (including PTO employees) merely on the PTAB’s own authority. That happens only when that PTAB decision gets some kind of agency-wide vetting and consensus and issues with (at least apparent) authority of the Director — the authority to supervise PTAB employees is the Director’s (and that only when the Director acts as the Director, not as a member of the PTAB), not the PTAB’s.
And importantly, a PTAB decision can’t acquire force of law adverse to any member of the public, except for interpretation of a “genuine” ambiguity (the Supreme Court’s term of art). (No gap-filling, only interpretation of ambiguity.) Against the public, an agency must go through full notice-and-comment rulemaking (in many cases, because of a separate notice-and-comment provision of the Paperwork Reduction Act, which essentially fills in the “procedural” exemption in the APA). A number of PTAB decisions that are designated precedential — MasterImage 3D, Nehls, Miyazaki, McAward — are just plain illegal.
There are a lot of interacting laws that create exceptions-to-exceptions-to-exceptions-to-exceptions. I spent over a year trying to disentangle it all, and that’s my article at link to ssrn.com I was very gratified when, two weeks after that issue of AIPLA Q.J. mailed, the Supreme Court decided Kisor v. Wilkie, and did a wonderful job of agreeing with me. 🙂
My amicus brief on Proppant IPR2018-00914 paper 30 (or the article form at link to ssrn.com ) is instructive on the PTAB’s misunderstnding of POP.
Again, thanks David – your effort is indeed reflected in your writings and serve to contrast the Ends that our historical pseudonym friend appears to want (the bottom line point that AAA JJ was providing).
To that point, and distinct from the actual focus of your admin law focus, would you care to take a step back and “lift” the provisios that you added at 19 (taking into account Article III decisions and accepting at face value the fact that anew and de novo are synonyms)…?
Anon —
I don’t understand your question. Also recall that I have a day job. I gave you the URL so you could do your own work. It’s all very subtle, and it took a year of writing to get it all right, and I don’t want to think that hard about it again for this comment thread.
I have real skepticism about the assertion that “anew” and “de novo” are “synonyms” Courts are pretty persnickety with words! It seems to me that if the CCPA/FedCir really meant to lock down “de novo” they would have used the word “de novo.” I think I agree with AAA JJ that that’s what they probably meant, but it’s more than curious to me that that’s not what they wrote.
No probs – the URL is excellent, and this is not really a “my question” as much as it is resolving the difference between AAA JJ and A. Lincoln/T. Pain.
“Anon —”
“I don’t understand your question.”
“Also recall that I have a day job. . . [Y]ou could do your own work.”
Anon gets that a lot.
“A. Lincoln @ 18.3.1.1.ad infinitum —
Just to be clear, I am agreeing with your clown suit hypothetical (and disagreeing with your skepticism of your own hypothetical).”
I don’t think I expressed skepticism of my own hypothetical, but if I did, it was unintentional.
I’m sure you’re aware that under the current SOP the Director, acting as the Director, must approve the “precedential ” designation of any Board opinion. Also, under the current SOP, the Director may sua sponte “un-designate” any Board precedential opinion as no longer precedential. I’m guessing you would have a problem with that un-designating procedure.
Dear A Lincoln —
OK, I take you at your word about clown suits.
Read SOP2 again — page 4 couldn’t be clearer. When on POP, the Director acts in his role as a member of the PTAB panel, not as the Director. I discuss this in my “Precedential opinion” article, link to ssrn.com and my Proppant article link to ssrn.com
(And more importantly, who cares what that SOP2 POP nonsense says — it’s just guidance, promulgated without notice and comment. That kind of rulemaking authority can only be created by statute. SOP2 is as ultra vires and as brazen a display of agency disregard of law as an agency statement can be.)
Of course the Director as Director can freely undesignate — why not. Intra-agency housekeeping rules has been a power of any agency head since 1789.
“Of course the Director as Director can freely undesignate — why not. Intra-agency housekeeping rules has been a power of any agency head since 1789.”
That’s the part I thought you might have a problem with. It’s intra-agency, but hasn’t the public been put on notice?
“but hasn’t the public been put on notice?”
Are you purposefully using that phrase out of its context of notice and rule-making?
Or was your baiting obtuseness “unintentional?”
In view of the adage of old dog/new tricks, let me share the following vignette:
Person 1 (reaching down to pet a dog near person 2): Does your dog bite?
Person 2: No.
Person 1: Ouch! (As the mangy dog clenches down mightily on Person 1’s extended hand). Hey, you said that your dog does not bite.
Person 2: That is not my dog.
“Read SOP2 again — page 4 couldn’t be clearer. When on POP, the Director acts in his role as a member of the PTAB panel, not as the Director.”
But the _current_ SOP page 4 says “The Precedential Opinion Panel members are selected by the Director.” A mere member of a PTAB panel does not select who is on the panel. That would be the Director, acting as the Director.
Excuse the thinking in practical terms, but I don’t follow why a precedential opinion (under the current “ultra vires” SOP?) would not have at least apparent authority of the Director acting as Director and not a Board member. In the _extremely_ unlikely event the Director does not choose his panel in accordance with the result he wants, he would simply not make the opinion precedential (and could even “un-designate” the opinion the same day).
“And more importantly, who cares what that SOP2 POP nonsense says — it’s just guidance, promulgated without notice and comment. That kind of rulemaking authority can only be created by statute. SOP2 is as ultra vires and as brazen a display of agency disregard of law as an agency statement can be.”
So why am I being directed to read SOP2 again?
A. Lincoln —
@ 20.2.1.2 — the Director appoints panels, true. There are lots of areas of law where the power to appoint is entirely different than the power to act. This is one of them. Once the Director appoints himself to a panel, he’s just “one of the guys.” In re Alappat, 33 F.3d 1526, 1535 (Fed. Cir. 1994) (“[A]lthough the [Director] may sit on the Board, in that capacity he serves as any other member.”). All PTAB panels are created equal.
@ 20.2.1.2.1 — look at the statute (or the PTAB is Not an Article III Court Part 3 Article, which extensively footnotes this exact point). The PTAB has no rulemaking or policy making authority. Policy making is in the hands of the Director and Secretary of Commerce. When the Director puts on his PTAB hat, he takes off his rulemaking and policymaking hats.
@ 20.2.1.3 – Why should you read SOP2? Because you asked the question about it. Within the hypothetical counter-factual world posited by your question, SOP2 has some legal weight, and (once you understand the two previous points) the text of SOP2 answers your question.
@ 20.2.1.1 — I don’t understand the “notice” question. Can you ask it differently or provide some context? “Notice” is just one of many components of a valid rulemaking. Notice is a necessary condition for an agency to bind the public, but not a sufficient one (see my PTAB is Not an Article III Court Part 1 and Part 3 articles. link to ssrn.com “Notice” hasn’t been implicated by anything else we’ve discussed here, so I don’t understand the question.
David
“All PTAB panels are created equal.”
“Created” equal? Not really. Alappat is a case in point. As I’m sure you know, the panel was packed by the Commish to get a certain result. The Commish was on the panel. But Alappat did not concern a decision on whether or not to make a Board case binding authority on the Board.
“When the Director puts on his PTAB hat, he takes off his rulemaking and policymaking hats.”
That’s the point of 20.2.1.2.1. The Director may convene a PTAB panel and get a result. But then he’s no longer on a panel.
He puts on his “rulemaking and policymaking hats” when deciding whether to make the opinion precedential. Maybe he gets a little help (or not) in writing the opinion, but under the current SOP he’s the sole decider.
With respect to “public notice,” it seems a published, precedential Board decision would put the public on notice at least to the same extent as the MPEP, which gets used against the Office from time to time. I can imagine a few avenues for an unhappy appellant to explore if, for example, a Board panel did not follow the standard of review set forth in Frye (although it would probably be fixed in-house).
A. Lincoln —
On the effect of having the Director on a panel, if you want to dodge the issue, we can terminate the discussion. Until you put on your thinking cap and think about what I wrote, there’s no point in discussing it further. I responded to you directly. If you want to show reciprocal respect, I’ll continue to discuss. If you want to zig-zag off the topic you specified after I give you a cite contrary to your position, then this can be the last time I write to you. I operate on “three strikes you’re out” with people that don’t think clearly before writing — 20.2.1.3 was one, this is two.
“it seems a published, precedential Board decision would put the public on notice at least to the same extent as the MPEP” That analogy is pretty good. Which is to say, as a general rule, both are enforceable against the Office, and neither is enforceable against any member of the public (both with very narrow exceptions). The precise scope of which is which is much more complex than warranted in a blog comment, which is why I took the trouble to write it out in detail in the Precedential and Informative Opinions article, link to ssrn.com I commend that to your attention, and hope you’ll read it before asking me to respond again.
David
Dodging issues, being coy and playing games is what my shifty historical pseudonym friend is all about.
Fraud Iancu is a notorious li@r and makes up irrational b.s. so his Examiners can avoid the law. What does the David Boundy Employment Act say about that sort of thing?
Translating Malcolm:
“Wah, the Director has made the unassailable observation that the Common Law rewriting of 35 USC 101 has created as Gordian Knot of an irreconcilable contradictory mess.”
He is “bad” because he has told his examiners that they cannot join in and write Common Law.
(It’s a ‘one-bucket,’ cognitive dissonance thing)
Maybe, Malcolm, if you ever get control of your feelings, you may venture forth with a cognitive post concerning admin law that you might actually ask of David and learn something.
What are the chances that Malcolm has not bothered at all to read ANY of David’s admin law articles?
200%?
300%?
“I don’t think I expressed skepticism of my own hypothetical, but if I did, it was unintentional.”
You would have been more accurate if you stopped after the first three words, as your intention (clown suit) speaks for itself as to your own sardonic level.
And instead of trying to play “gotcha” with David and your musings of what the Director does (as Director) versus David’s point of when the Director appoints himself to act as PTAB judge (instead of appointing himself as Director on a panel of PTAB judges), why don’t you break your lay Z habits and read (and yes, I do mean read to understand) David’s links?
Case in point example of your “gotcha” gamesmanship: instead of not recognizing that David’s point of the role of the Director as self-appointed on a panel of PTAB judges (to deliberate on a case) is NOT as a Director, you could have pointed out that any panel of PTAB judges that are convened for a matter — not to adjudicate on any particular case, as judges — but rather, to meet and set policy, is more akin to the Director acting as Director and elevating the judges so convened to be his policy-making assistants.
With this distinction established, the point that the Director (on that type of panel) is very much still acting as the Director could be made without snark, and without the “gotcha” games.
…and (yet again) at a substantive point, I see that my shifty historical friend has done what he suggested I do and has slinked away.
AND he has (yet again) done so without recognizing the superiority of the counter points presented to him.
What an ungrateful wretch.
To wade into the dispute between AAA JJ and Thomas Pain @ 18.3.1.1 et seq —
OK, so let’s give Thomas his best position, that no Federal Circuit case uses the word “de novo.” And let’s pooh-pooh AAA JJ’s assertion of “synonyms.” Fair enough.
But Frye indisputably does speak of “de novo” and “burden of proof” favoring the applicant.
Whatever else, an agency statement that, by its terms, limits agency discretion and creates rights in favor of parties before the agency, issued with agency internal vetting (such as authority of the agency head), does bind agency personnel. There are at least a half-dozen Supreme Court cites on that point, many cited in David E. Boundy, The PTAB is Not an Article III Court: Precedential and Informative Decisions, 47 AIPLA Q.J. 1 (June 2019), available at link to ssrn.com
“The examiner has a presumption in his benefit when he’s being appealed on fact issues,…”
It’s statements like this that destroy any credibility you work so hard to establish with your lengthy posts and silly analogies. Not that I ever found you credible.
In response to the usual nonsense from Random Examiner at 8.2.1
Careful there AAA JJ, as you are going to offend the sensibilities of “I use my real name” Greg DeLassus, who holds Random out as some paragon of blog interaction virtuosos.
I think Greg is the best commenter on this site. His ability to ignore the ad hominem is admirable. Not that I agree with everything he posts, but his positions are well thought out, and he’s not afraid to reconsider his position or acknowledge mistakes in his posts. This blog would be better off with more Greg’s.
You are too kind. The late Ned Heller was the very best commenter on this site, and his erudite contributions are much missed. Ron Katznelson has the ability to take over Ned’s title, except that the good Mr. Katznelson so rarely participates.
“The late Ned Heller was the very best commenter on this site”
Perhaps.
“Ron Katznelson”
I unironically loled irl.
I unironically loled irl.
I am gratified to know that I brought that little bit of joy into the life of one of my fellow human beings today.
Remember that Ned Heller finally came around to my position that Mark Lemley is highly unethical. Why? Because Lemley took an opposing position to Ned’s and Ned had to delve into the details of Lemley’s unethical positions.
(* And we all know that I am the best commentator by far. *)
Mr. Heller was particularly pliable when it came to his interests being impugned.
Do you remember when he labeled 6 as a genius, just because 6 agreed with Ned?
But Ned’s biggest problem was that he would partake in a conversation only so far and then disappear – often at the point that he could not sustain his position (and noting that often his position was one of advocacy for an active client — which is a bit of a no-no if you take a gander at the posting rules available somewhere on this blog).
Well there goes your credibility…
There does go his credibility…
Chalk it up to the “Liberal Left” comment below.
“Destroy any credibility” seems too harsh to me, but I agree that 8.2.1 was not RandomGuy’s best work. Indignor quandoque bonus dormitat Homerus, as Horace observed.
According to the pontifications of AAA JJ: “There’s plenty of better precedent than Frye. The APA. Warner. Oetiker. Etc.”
The APA is not a “precedent” and the cases you cite do not concern internal PTO procedures as does Frye. You really want to talk about credibility?
You are correct, the APA is not precedent, it is statute. So it’s even better than precedent.
Muh bad.
As for your concern with whether the cases I cited “concern internal PTO procedures as does Frye,” all I can say is that when it comes to factual issues during examination, Warner and Oetiker and a list of precedents as long as your arm decided by the PTO’s supervising court, and not its internal board of review, all clearly state that the examiners, the Board, and the PTO get no presumption, and in fact have nothing but the burden. So while it certainly was nice of Mr. Kappos to assign himself to the panel it really wasn’t necessary. And if you’re citing Frye instead of Warner, Oetiker, et al. then you’re doing it wrong.
You’re right, you are bad. Cite a Supremes or Fed. Cir. precedential opinion that requires the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo. I assume it must be in Warner and/or Oetiker. Cite by page, please. Or quote the specific language. Or (even better!) cite a statute! By sub-section. Thanks.
“Cite a Supremes or Fed. Cir. precedential opinion that requires the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo.”
That’s your big take away from Frye? If you didn’t know that before Mr. Kappos held your hand and explained it to you, you’ve been doing it wrong for a long time. There was never any doubt before Frye that the Board was required to review all contested factual issues de novo. That’s why the paragraph spanning pages 9-10 of the Frye decision cites Oetiker for support.
Duh.
“I assume it must be in Warner and/or Oetiker. Cite by page, please.”
In reviewing the examiner’s decision on appeal, the Board must necessarily weigh all of the evidence and argument. Oetiker, 977 F.2d at 1445.
Did/do you not understand that is de novo review?
You may also want to read Piasecki, which J. Newman wrote in 1984, 27 years before Frye.
And Rinehart (35 years before Frye):
Though the tribunal must begin anew, a final finding of obviousness may of course be reached, but such finding will rest upon evaluation of all facts in evidence, uninfluenced by any earlier conclusion reached by an earlier board upon a different record.
You are aware that “anew” and “de novo” are synonyms, right?
Such a target-rich environment. Where to begin?
“That’s your big take away from Frye?”
You should take from Frye that the Board-precedential opinion requires more than does the law. That’s why it’s a Board-precedential opinion. Else, why not just follow the CCPA/Fed.Cir./Supreme cases?
“In reviewing the examiner’s decision on appeal, the Board must necessarily weigh all of the evidence and argument. Oetiker, 977 F.2d at 1445.”
What is that word you do not understand but use a lot? Oh, yeah, “preponderance.” The Board of course must weigh all the evidence and argument to ensure the preponderance standard has been met.
“Did/do you not understand that is de novo review?”
No, I did/do not. Do you have a cite for that?
“You should take from Frye that the Board-precedential opinion requires more than does the law.”
Really?
What does the law require?
What “more” than the law does Frye require?
“What ‘more’ than the law does Frye require?”
Requires that the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo.
Is that really more than the law?
Do you have a cite for that?
“Do you have a cite for that?”
Ex parte Frye.
Really? Frye says “Hey law, the PTAB requires more than the law requires”…?
What is the pin cite?
(The self-reference aught to be a hoot)
“What is the pin cite?”
Look it up. It’s getting pretty late in the US. I’m going to bed.
Oh,
Don’t run away, mr. “Give me a cite.”
Where is that self-referential cite that you claim exists?
Good morning from America, Green anon.
“Where is that self-referential cite that you claim exists?”
Huh? I claimed no such thing. It’s really quite simple. When a PTAB-precedential opinion is more restrictive than what is required by statute, regulation, or reviewing courts, that Board-precedential opinion requires more than does the law. And BTW, it restricts the Board and nobody else. Because you will not find those legal principles in Wikipedia, I understand your confusion.
“Requires that the PTO Board’s review of an examiner’s contested finding in an ex parte appeal to be de novo.”
Thank you for attempting to answer at least half my questions. I guess.
Let me rephrase: Before Mr. Kappos came down from Mt. Sinai with the stone tablets with Ex parte Frye inscribed on them, what did the law (e.g. the APA, 35 USC, controlling precedent) require the BPAI/PTAB to do when reviewing contested findings of fact?
And if the law (see above) required less than de novo review, how does Frye (which is PTAB precedent, which is less than CCPA/Fed. Cir. precedent) allow the APJ’s to ignore the controlling precedent (e.g. Piasecki, Rinehart, Oetiker, etc.) of its supervising court(s)?
“When a PTAB-precedential opinion is more restrictive than what is required by statute, regulation, or reviewing courts, that Board-precedential opinion requires more than does the law.”
Do you have a cite for that?
Bottom line, there was no controlling precedent before Frye that fixed the ex parte appeal standard of review at the Board. The law before and since (e..g., Piasecki, etc.) is not to the contrary of Frye, so the Board has freedom to operate within its own rules. Contrast that with the current Director, who is promulgating statutory subject matter guidelines that are contrary to law.
“Do you have a cite for that?”
As we speak, Green anon is diligently searching Wikipedia.
“Bottom line, there was no controlling precedent before Frye that fixed the ex parte appeal standard of review at the Board. The law before and since (e..g., Piasecki, etc.) is not to the contrary of Frye, so the Board has freedom to operate within its own rules.”
Piasecki is controlling. Rinehart (8 years before Piasecki) is controlling:
“When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over…. An earlier decision should not, as it was here, be considered as set in concrete, and applicant’s rebuttal evidence then be evaluated only on its knockdown ability. Analytical fixation on an earlier decision can tend to provide that decision with an undeservedly broadened umbrella effect. Prima facie obviousness is a legal conclusion, not a fact. Facts established by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached, not against the conclusion itself…. [A] final finding of obviousness may of course be reached, but such finding will rest upon evaluation of all facts in evidence, uninfluenced by any earlier conclusion reached by an earlier board upon a different record.” 531 F.2d at 1052.
Rinehart is very clear, “…the tribunal must begin anew,…”
As I noted above, “de novo” and “anew” are synonyms.
So your conclusion that the ex parte appeal standard of review was not fixed before Frye is wrong.
When applicant contests findings of fact, the Board must “begin anew.”
“The law before and since (e..g., Piasecki, etc.) is not to the contrary of Frye, so the Board has freedom to operate within its own rules. ”
Also wrong.
“Bottom line, there was no controlling precedent before Frye”
Do you have a cite for that?
It’s quite simple, you allege some affirmative holding without providing a citation. All that I am doing (and I see now that AAA JJ has joined me) is play your game and ask you for a cite to back up your affirmative statement.
This has nothing to do with me OR Wikipedia, as this has only to do with you.
Besides, as you recall on the specific and actual use of Wikipedia, I slammed you with a follow-up from with a direct citation from the Nobel web site. Your wanting to bring that up as some type of put-down is rather self-flagellating of you.
“As we speak, Green anon is diligently searching Wikipedia.”
I take it you don’t have a cite for your position.
Didn’t think so. But thanks for confirming.
“Contrast that with the current Director, who is promulgating statutory subject matter guidelines that are contrary to law.”
Lol – you want to jump from the frying pan into the fire, eh?
You are aware that the Common Law law scrivening of the courts is ITSELF contradictory, and thus contrary to itself, eh?