by Dennis Crouch
In American Axle, the Federal Circuit found the patented method of manufacturing drifeshafts to be patent ineligible. U.S. Patent No. 7,774,911. The claims “tuned” the shafts in order to reduce multiple forms of vibrational resonance, and the court held that the claims were improperly directed to “Hooke’s law, and possibly other natural laws.” The majority opinion was written by Judge Dyk and joined by Judge Taranto; while Judge Moore wrote a vigorous dissent identifying the majority opinion as “validity goulash” (and not the good tasting kind).
The majority worries about result-oriented claiming; I am worried about result-oriented judicial action.
Judge Moore writing in Dissent.
American Axle has now petitioned for en banc review and has the support of six amici briefs. Judge Moore largely wrote the brief here via her dissenting opinion, but the patentee does a good job of explaining (1) the “realness” of its invention and (2) how the accused infringer copied their approach.
- AAM Rehearing Petition.
- Amicus brief of 12 law professors. (The court’s opinion here does not fit with either Morse (1853) or the Bell patent case (1888).)
- BIO amicus brief. (“Nothing in the claims or specification of the ‘911 patent recites or implies that an application of Hooke’s law to a liner is necessary or sufficient to tune the liner in accordance with the claim.”)
- IPO amicus brief. (“The decision may open the floodgates to section 101 challenges to mechanical inventions, which have not been the subject of recent eligibility decisions of this Court or the Supreme Court.”)
- U.S. Startups & Inventors for Jobs. (“From the standpoint of many entrepreneurs, inventors and investors that comprise the Invention Community, the U.S. Patent System appears to be on life support.”)
- Michel amicus brief. (Former Chief Judge Michel argues that the decision here ignores core rules of summary judgment – disputed issues of material fact.)
- Doerre amicus brief. (Patent attorney Jeremy C. Doerre argues (inter alia) that the law-of-nature exception does not present a fruitful approach to eliminating broadly drafted claims — the better approaches rely upon written description.)
The petition itself raises three questions:
- Must the court identify the “precise ineligible concept the claims are allegedly directed to.”
- Must the court consider disputed facts regarding the invention when determining whether the claims are directed toward an inventive concept?
- Should the court interpret Section 101 narrowly in order to avoid “swallow the enablement [and written description] requirements of Section 112?”
Truthfully, these questions are rather weak because they they have all been addressed by most members of the court in some form. The strongest aspects of AAM’s arguments are the facts of the case.
With the ’911 patent, AAM invented novel and unconventional methods of manufacturing improved driveshafts that include “liners”—low cost, hollow tubes made of a fibrous material (such as cardboard).
Before the ’911 patent, it had only been well understood to use liners in driveshafts to attenuate a single type of vibration called “shell mode” vibration. Neapco admitted that prior art liners had only attenuated shell mode vibration, and “presented no argument or evidence to contradict that” fact on appeal. As explained in the ’911 patent, prior art liners were not suitable (let alone well understood) to attenuate another type of vibration called “bending mode” vibration. And liners certainly were not well understood to attenuate both bending and shell mode vibration.
AAM solved these problems. It was the first to discover that liners could be “tuned” to attenuate bending mode vibration, or the combination of both bending and shell mode vibration. The claims of the ’911 patent recite these solutions.
Petition for rehearing.
The difficulty for AAM is that the point-of-novelty for the method claims is specified as a result rather than as a process:
tuning at least one liner to attenuate at least two types of vibration transmitted through the shaft member; and positioning the at least one liner within the shaft member such that the at least one liner is configured to damp shell mode vibrations in the shaft member by an amount that is greater than or equal to about 2%, and the at least one liner is also configured to damp bending mode vibrations in the shaft member,
‘911 patent Claim 1. The real question here is whether these functional claim limitations should be seen as too abstract. Or, instead, are they effective at providing a clear and limited scope once coupled with the specification disclosure and the knowledge of a skilled artisan?
Judge Moore wrote a vigorous dissent identifying the majority opinion as “validity goulash” (and not the good tasting kind): “The majority worries about result-oriented claiming; I am worried about result-oriented judicial action.”
If anybody believes that Judge Moore is worried about “result-oriented judicial action”, then I’ve got a bridge to sell you.
Judge Moore isn’t worried about anything except being perceived as a “pro-patent” judge. There’s a lot more money in the “retirement package” for judges if you engage in hacktackular defenses of junk patents along the way. See, e.g., the debased disgrace that is Judge Paul “Shill” Michel.
Your feelings are noted.
You live in your own fantasy land.
I would have second thoughts with drafting a claim like the disputed claim, but it would not be that the claim recites a law of nature, it would be that the claim is not for a series of actions. Briefly looking at the specification, I don’t see what kind of action is involved with the “tuning” limitation.
Now, one can argue that Congress wanted the body of a method to be a series of “something … ING,” but it has been a while that a method must be a series of actions. “Something … ING,” like “tuning” here, is not an action.
Similarly “diagnosing” someone with a disease may not be an action either.
“… is not an action”
?
Not sure I follow you, PiKa, that “Tuning” is not an “Action”. My problem is that “Tuning” is such an abstract action. What does it mean? The way I see it, it embraces all design processes. As soon as some design work is involved in drawing up a manufacturing specification for the “liner”, the outcome is a tuned liner. So, the act of “tuning” is not enough to confer novelty over the prior art manufactured liners.
Objection arises under 101, 102, 103 and 112. PTO, take your pick.
Not all gerunds are an action. As you said yourself, tuning can be the outcome of an action, for example the action of pulling on a vibrating string, or moving a plate relative to another plate to change the capacitance between them. It is not the action itself. In the US, you could claim “a step for tuning,” which could have a definite meaning in some circumstances, or you could define tuning in the context of your invention. But by adding a tuning limitation to an otherwise good claim could place you claim outside of 101.
I agree that the claim could also have 102 and 103 problems.
I also agree that on this case, after reading the description, a step for tuning … would have had 112 problems.
PiKa,
You will have to do better to establish your notion that “not all gerunds are an action”
Your attempted explication at 9.2.1 of “It is not the action itself” is false. One may ‘label’ the result as a type of “noun,” but such in no way diminishes the same label as being the “verb.”
And please try NOT to conflate different sections of law as if the conflation is support to “crossover” from one section into a different section. While certainly, an item may fail to pass multiple sections, it is a logical fallacy to try to turn around and make the failure in one section be a de facto failure in another. That’s the type of sloppy Malcolm “whatever” that infects his “logic,” and you are much better than that.
I see your point. One performs an action in order to achieve the result of “tuning”. The claim fails to recite the action, merely states the result. Stating a result falls short of defining an action.
The evidence reveals that Neapco did not know what to do, to “tune” the liner to a plurality of frequencies. Did the patent teach what to do? I haven’t read the patent so I don’t know but I take it from your comment that it doesn’t.
Correct, PiKa.
“Optimizing” would be another term that is more descriptive of the desired result (and therefore not appropriate for a patent claim) than it is of a specific concrete action that results in the optimization.
Note for the m0-uth-breathers: I am NOT saying that the mere recitation of the term “optimizing” should be f@tal to a patent claim. I am saying that recitation of the term followed by nothing or only be a desired result (e.g., a result not taught in the prior art, such as “optimizing X so that efficiency of Y is greater than 98%) should be f@tal to the patent claim. On the other hand, if the term is followed in the claim by new, specific, physical steps (e.g., “the outer wall is between 2 and 5 millimeters of the inner wall”) then potential eligibility problems are going to be diminished.
Aren’t you just saying it should be interpreted with 112(f), “step for”? I think we are waiting for floodgates to open with “step for” claims, but so far courts have not yet applied the Williamson decision to method claims.
You may have more traction along this line (but be aware — and beware — that 112 is far more “difficult” to wield than the “At0m B0mb” of 101.
If only these patentees would just claim what they regard as their inventions, rather than trying to claim so broadly, they wouldn’t have this problem as often.
[AAM solved these problems. It was the first to discover that liners could be “tuned” to attenuate bending mode vibration, or the combination of both bending and shell mode vibration.]
Did they discover that this could be done (ineligible), or did they discover how to do this (apparently unclaimed)?
insig: “Did they discover that this could be done (ineligible), . . .”
Um, that would be incorrect, given:
“Anyone who ‘invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,’ subject to the conditions and requirements of the law.” § 101 35 U.S.C. 101
SCOTUS may not like it, but atents on new discoveries are eligible:
Is the discovery that this could be done a “process, machine, manufacture, or composition of matter, or … improvement thereof”?
Non: Yes; likely best claimed as a process, though a (physics / nature) machine should be possible.
To be clear, are you saying that one could claim the discovery that something can be done without claiming a way of doing that something? For example, if one could prove that it is possible to travel faster than the speed of light, they could get a patent on traveling faster than the speed of light without claiming a means of doing that? If not, I’m not sure how you disagree with this statement: “Did they discover that this could be done (ineligible), or did they discover how to do this (apparently unclaimed)?” If so, can you provide a hypothetical claim to the discovery that something can be done?
I will not pretend to speak for ProSay, but it seems to me that the answer to your question should be that—no—one may not “claim the discovery that something can be done without claiming a way of doing that something.” However, subject matter ineligibility should not be the reason why one may not do so.
Rather, one must describe and enable that which one claims. When one “claim[s] the discovery that something can be done without claiming a way of doing that something,” one is (99.9% of the time) extending the scope of the claim beyond that which one has described and enabled. Therefore, such a claim should fail, but for want of adequate written description and enablement, not for want of subject matter ineligibility.
Greg: However, subject matter ineligibility should not be the reason why one may not [claim something because it could be done without explaining precisely how you would do it].
Why not? If you can describe the problem with the claim in terms that accord with the statute, then who cares if it’s possible to describe the problem in some other way that accords with the terms in some other statute?
It fails BOTH 101 and 112. Why is that a problem? Is it too confusing for a person with a college degree?
“If so, can you provide a hypothetical claim to the discovery that something can be done?”
Non; yes, Greg has the answer.
A claim such as I claim E=mc2 would, as a discovery (and setting aside the single limitation problem for a moment), in fact be patentable . . . but if and only if the spec provided, as Greg says, adequate written description and enablement.
Despite what SCOTUS would most assuredly contend, it would not fail for want of subject matter ineligibility.
” . . . for want of subject matter eligibility.”
This goes to my original question, which is would “E=mc2” be a “process, machine, manufacture, or composition of matter, or … improvement thereof”? You seem to have concluded that ALL discoveries are patentable under § 101, but it is not that broad. While I agree that “E=mc2” is a discovery, I don’t see how it could be considered patentable.
I “get” that you are trying to make a point here with an admitted pro say person, NS II, but you could be more than just a little helpful in ADDING that the innovation OF a discovery can be written in at least one of the statutory categories (and most often IS written in more than one of the statutory categories).
NS II,
Again with your aims? If you had any experience at all, you would easily recognize that MANY innovations can — and are — claimed in a multiple of the statutory categories.
Instead, you trot on out here with a lame line like you are about to “trip someone up.”
As you have nothing to add, you could safe yourself some time by not providing a response. (While I have seen no evidence that you learn, I haven’t completely given up hope for you).
Give up hope.
You wanting “hope” for me when it is you that so desperately needs it is quite comical.
So maybe the point was simply too subtle for you:
Innovation may be claimed in more than one form (of the statutory categories).
In fact – as you should be well aware of, it most often is.
“If only these patentees would just claim what they regard as their inventions, rather than trying to claim so broadly, they wouldn’t have this problem as often.”
They are claiming what they think their invention is. Perhaps you mean:
“If only these patentees would just claim what they regarded as their inventions prior to speaking with a patent attorney, rather than trying to claim so broadly, they wouldn’t have this problem as often.
Ben,
Your anti-patent attorney bias is noted.
Ha!
From Dennis, on the “facts” of the case, I note the statement from the patent owner, that:
“Neapco admitted that prior art liners had only attenuated shell mode vibration, and “presented no argument or evidence to contradict that” fact on appeal.”
Can that really be so? It strikes me as a pretty good argument in defence of the claim.What does Neapco say in reply? Do we know yet?
Both the majority and the dissent are right here. It’s true that the majority did not identify a natural law, but the majority did identify an abstraction – the claim is directed to two results: “tuning” and “positioning” a liner in order to achieve a effect. A claim to a result absent a limitation upon the manner of achieving the result is an abstraction.
The issue comes to a head in their brief: The Majority Supplants Section 101 With Section 112 And Required The Claims As A Matter of Law To Recite How To Make And Use The Invention
This is not correct at all. The quotes from the brief about the majority are demands for the claim to limit to a *concrete means*. It’s not a requirement that the claim enables the functionality, it’s a requirement that the claims simply not dump building materials on the ground and then claim “all possible houses.”
It’s a problem that is certainly far more common in the computer arts, but it isn’t like the mechanical arts are categorically immune from the problem. One cannot invent one means of achieving a result, but then claim the abstract act of generating the result rather than the concrete means that are put forward. It’s true that this may *seem* like a 112a issue, but that’s only because the 112a scope of possession issue came about because the federal circuit wasn’t applying Morse 101 at all, so they had to reinvent the wheel, and they did so poorly.
“…it’s a requirement that the claims simply not dump building materials on the ground and then claim ‘all possible houses.’”
Such a claim would be similar to what they refer to in Europe as a “free beer” claim. My understanding is that such claims are rejected as lacking clarity, but not rejected as reciting patent ineligible subject matter.
The idea that it’s “too hard” to properly reject such a claim under 112 so just wave the 101 magic wand is troubling.
… in other words, the Ends do not justify the Means.
Are you advocating changing 112 here? Our case law doesn’t support rejecting this sort of claim under 112(b).
Why not?
Because the boundaries are broad but clear.
While breadth may not be indefiniteness there is a point where breadth is a failure to particularly point out and distinctly claim.
You’re just not trying hard enough, I guess.
“ there is a point where breadth is a failure to particularly point out and distinctly claim.”
Not.
Ever.
You are confusing breadth with indefiniteness — and it does not matter if the sentence before is an attempt to “inoculate” what you are doing.
Particularly pointing out and distinctly claiming is regardless of breadth of item so being pointed out and claimed.
“While breadth may not be indefiniteness there is a point where breadth is a failure to particularly point out and distinctly claim.”
I agree that this should be the law, but you are wrong that it is the law.
Would you mind providing caselaw that you believe supports breadth-induced-indefiniteness?
“breadth-induced” is a fallacy.
It is simply not the aspect of breadth that may cause the issue.
Ever.
“The difficulty for AAM is that the point-of-novelty for the method claims is specified as a result rather than as a process:”
Sorry, but no. Process is listed as the steps of
tuning
and
positioning”
You confuse the description of the process step (as provided) in the sense of “result,” but that description does not make the process step into a non-process step.
So you think they should just be able to claim “A process comprising constructing a drive shaft that has attenuated bending mode vibrations” and be done with it?
Well, first let’s not move the goal posts and insert a “single means” claim instead of the two separate step process claim.
For that two separate step process claim (then) meeting 101?
Absolutely.
The Alice / Mayo eligibility construct — and it’s widespread misapplication — has indeed swallowed all of patent law.
The result?
American innovation is left choking and gagging.
Congress: Where? Are? You?
What are you waiting for?
How much longer must this go on before you all stand up and proclaim, “Enough!”
How? Much? Longer?
What is the evidence for “choking and gagging” of so-called “American innovation”?
I’m more free to innovate than I would be in the absence of Mayo. I can correlate information and apply natural laws in new contexts (there are an infinite number of them, after all) and write instructions for a computer with less fear of being destroyed by a junk patent.
Meanwhile, record numbers of well drafted patent claims are being applied for by skilled artisans in the tangible arts, and those claims are being granted.
What exactly is your problem?
Where did Congress write about these “tangible arts”…?
MM
I completely agree with you. If the test was simply whether the claims were directed to something tangible, that would simplify everything. With our ever-increasing knowledge of physics and what is tangible, we will have a much more predictable test for patent eligibility.
BIO, IPO, and the lawprofs are well written, about what one would expect, and consistent with the viewpoints those groups typically express in other cases. BIO and IPO are pro-patent and generally have good lawyers writing their briefs. I see variations on this same group of law professors showing up as amici somewhat frequently, and usually on the pro-patent side, but their briefs are usually quite good.
The other three are just odd. The “US Inventor” group appears to be bunch of people who want to make money off of patents, and have filed this brief to say that they’re finding that task harder than they used to, and so it therefore follows that the law has to change to make it easier for them to make money. It’s unclear what cause-and-effect mechanism they’re positing, and the argument seems to be based on a lot of questionable assumptions. If good patents are getting invalidated more frequently, that’s a problem, but if bad patents are dying and people who used to make money off of bad patents can’t anymore, that’s a good thing. Similarly, if VC money is harder to come by in certain sectors than it used to be, there are a lot of possible explanations that have nothing to do with this case or the 101 standard.
I have my doubts about the persuasive force of an amicus brief from a retired judge who’s written in to scold his former colleagues about the summary judgment standard.
Doerre… I think this is the first time I’ve seen a brief where I found the table of contents difficult to follow. In any brief, it’s important to get to the point quickly and signal to the court that reading further will be worth their time. That’s doubly true in an amicus brief. I stopped at page 4 and couldn’t figure what the argument was.
dcl,
Both criticisms are legitimate.
Re the lengthy intro, the goal was to make clear that the brief is written with full recognition and appreciation of the concern raised by the Court that the “claim[s] [] encompass[] all solutions for achieving [the] desired result,” Op. at 16, of “damping two different types of vibrations.” Op. at 20. Spending a significant chunk of text outlining this at the beginning of the brief was definitely a trade off and a risk; as you note, one downside is that it is not immediately clear what the ultimate point being made is. The hoped-for upside was that the intro will convey an appreciation for the Court’s concerns vis-a-vis the claims and make clear that the brief is not intending to disregard or take lightly these concerns. I went through various formats, and I can’t claim that this approach is necessarily the best.
Re the table of contents and the lengthy headers, I understand and appreciate this concern. Unlike many of the other esteemed amici, there is no particular reason to give my thoughts any weight besides the strength of their logical reasoning. Accordingly, I tried to be very precise in outlining the logical reasoning, even in the headings, at the risk of eschewing concision. Again, I can’t claim that this approach is necessarily the best, but I was hoping to give a reader an accurate summary of the argument that is understandable after reading the brief.
J
I’m being overly critical while hiding behind a pseudonym, and you’re being commendably gracious. A significant piece of conventional wisdom on amicus briefs is that judges spend very little time reading them and that there’s a premium on concision. I think Justice Scalia has been quoted in an interview as saying that he has his clerks read the amicus briefs first and then tell him which if any are worth his time.
I honestly don’t quite follow the argument you’re making. It seems to be something like the following, but I’m honestly not sure:
(1) There’s a strand of reasoning in the caselaw that if a patent is to be invalidated under 101, the challenger and the decisionmaker should have to identify what the ineligible concept is.
(2) If that’s right, then 101 can be a poor fit in some cases where the court or the challenger’s concern seems to be, as here, that the claims are overbroad.
(3) In those cases, section 112 is a better fit for this sort of overclaiming/overbreadth problem.
Thanks for taking the time to read and for the thoughts!
I think that’s a fair characterization of the brief. I tend to agree with Dennis that “[t]he strongest aspects of AAM’s arguments are the facts of the case,” rather than the questions presented.
The reality is that I would have liked to more directly and clearly articulate why en banc consideration would be appropriate for one or more of the questions presented. Unfortunately, I was not able to figure out a way to do so without adding significant nuance (or delving into subjects that the parties chose not to raise). For example, although I do not believe that district courts can “find patent claims ineligible without identifying any precise ineligible concept the claims are allegedly directed to,” Pet. 1, it’s not clear that the Fed. Cir. is not able to. However, given that this is not the first time that a dissenting member of the Court has expressed concern that “[t]he majority avoids … even identifying what the underlying abstract idea is,” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1307 (Fed. Cir. 2016) (Reyna, J., dissenting) (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)), the Court might be interested in considering this issue. Ultimately, I ended up urging that rehearing would be advantageous to address this issue vis-a-vis patent challengers and district courts, but this obviously is not the strongest argument for rehearing.
The remainder of the brief (as well as the intro) is intended to try to leverage the Court’s difficult in articulating what law(s) of nature the claims are directed to as highlighting why 112 may generally be better suited to address overbreadth concerns (because there is no requirement for a patent challenger or district court to identify what ineligible concept is being utilized).
Re amicus briefs in general, that has always been my assumption. To be honest, was there not a dissent, I almost certainly would not have written this amicus brief (and if I did, I would have written it to be much more concise and direct).
That’s interesting. I’ve seen a lot of back and forth in the briefs where the patentee side accuses the challenger of conflating 101 with 112, and the challenger responds with the quotation from Mayo that some overlap is fine. But I don’t think I’ve seen any brief or opinion clearly delineating when a 101 argument is straying into 112-exclusive territory. The idea that if you can’t identify a patent-ineligible concept you’re probably in 112 territory is an intriguing one.
Jeremy the problem needs to be bifurcated. Abstract inventions are not the same thing as abstract claims if the statutory scheme of the Patent Act is to make any sense.
There must always be some reference to prior art, but at the eligibility stage that analysis must be used to locate the invention, not to determine obviousness are adequacy of description.
Courts should construe the results of methods as a matter of law- just as they do with the words in the claim. If the useful results of performing a method are only an item of information, or if the only novel element of a method is some item of information, it is possible to apply a reliable eligibility test.
A test of abstraction in claims requires that a court identify the pertinent PHOSITA and the actual state of the art.
This driveshaft method apparently only discloses that the liners can be tuned in two modes. It does not say how to accomplish that. If the patent did disclose algorithms and those algos were consumed by manufacturing equipment to produce a tuned assembly, I would think they could be eligible. The algo may be obvious or anticipated, but we have 150 years of understanding in how to approach those issues.
As claimed, the patent only tells PHOSITA that it can be done: an item of information consumed by a person, and therefore ineligible in my scheme.
Even Morse is handled in my scheme. The information that electromagnetism be manipulated at great distances was not sufficient to patent all future uses from a scope and description perspective, but it also was a simple factual discovery, consumed by persons, and therefore ineligible as well as not showing mastery of any particular invention.
Good write-up Dennis.
Another common problem here is a “shotgun” brief trying to raise three different issues.
Also, if they are arguing for 112 rejections instead of a 101 rejections [for only claiming an end result instead of a method for accomplishing that result] why not give 112 rejections in addition?
Is the prof’s amicus brief ignoring the “preemption” type of 1o1?
This patent could be reissued to claim the various embodiments shown in the patent drawings, and whatever they may have in common, if not claimed already.
Paul Morgan if they are arguing for 112 rejections instead of a 101 rejections [for only claiming an end result instead of a method for accomplishing that result] why not give 112 rejections in addition?
Don’t give away the game, Paul!
LOL
Also, if they are arguing for 112 rejections instead of a 101 rejections [for only claiming an end result instead of a method for accomplishing that result] why not give 112 rejections in addition?
Judicial Exception 101s come in two types – something which is ineligible regardless of how specific one gets about describing it, and stuff that would be eligible if it were properly described at sufficient specificity. This case represents the latter type, and I agree that they generally could also be taken care of under 112a.
But the question begs its own answer – Obviously the 112a standard isn’t the 101 standard, and there are additional hoops that one must jump through to succeed on a 112a attack. The question is if those hoops should even exist, i.e. When it is clear the specification only enables or describes part of a functionally claimed scope, why should the challenger rather than the patentee bear the burden of proof? Why not simply make pointing out that the scope fails to limit to the particular means in the spec be sufficient to shift the burden from the defendant to the patentee on the 112a issue?
“Obviously the 112a standard isn’t the 101 standard, and there are additional hoops that one must jump through to succeed on a 112a attack.”
Then jump through them.
“The question is if those hoops should even exist, i.e. When it is clear the specification only enables or describes part of a functionally claimed scope, why should the challenger rather than the patentee bear the burden of proof?”
In prosecution, under Hyatt v. Dudas the burden is shifted to Applicant by the examiner merely alleging that the claim, or a feature(s) thereof, lacks written description support. It is then up to Applicant to point out where support may be found. That’s a pretty easy “burden” for the examiner to shift to Applicant. But the burden is on the examiner in prosecution, and a challenger in IPR or lawsuit, because that’s our system. Ultimately the decision comes down to the standard of proof and the evidence and arguments on both sides. I doubt swapping who has the burden would change many outcomes. The claim is either supported or not. It’s either enabled or not. It’s either clear and definite or not. Present your best evidence and arguments and make your case.
“Why not simply make pointing out that the scope fails to limit to the particular means in the spec be sufficient to shift the burden from the defendant to the patentee on the 112a issue?”
That is already the law. See Hyatt v. Dudas, for example.
It appears you want to be able to just “point out” what you regard as the failure of the claim to meet the statutory requirement(s) and sit back and do the typical examiner “arguments not persuasive” form paragraph response. When you’ve shifted the burden to applicant and applicant responds the “burden” on the examiner requires a bit more than that.
I see it all the time with examiners in 103 rejections. I respond and rebut their “prima facie” case and what I get in response is, “Well, I’ve made a prima facie case so your arguments aren’t persuasive.”
It’s clear more training is needed.
You don’t tell us how you “respond and rebut” a prima facie case of obviousness but there may be a dis-connect between you and your examiner. One does not “rebut” a prima facie case but may provide evidence tending to show non-obviousness and ask for reconsideration of the ultimate conclusion. If only arguments are presented in response, those arguments _might_ be sufficient in showing that a prima facie case was not established in the first instance. It’s clear more training is needed.
I’m curious. I can see that once a prima facie case is achieved, mere argument in response is not going to carry the day. Evidence is going to be needed. But can you enlarge on what is the essential difference between i) “rebut” and ii) showing that Examiner’s argument fails to reach the level of a “prima facie case”? I mean, can you not “rebut” with argument alone? The dictionaries would suggest the answer is yes.
“I can see that”
No, you are not seeing.
This is clearly outside of your “round the block”
By dictionary definition, one perhaps could “rebut” a prima facie case with argument alone. But US case law requires a complete reconsideration of the record when evidence and argument are provided in response to a properly established prima facie case. There is not a “rebuttal” by evidence but a presentation of new evidence for re-weighing of the evidence by the examiner. And a “rebuttal” by argument would never be persuasive if a prima facie case is present because attorney argument is not evidence (with the exception of admissions against interest). Thus, one does not “rebut” a prima facie case but might (1) ask for reconsideration in view of new evidence or (2) persuade that a prima facie case never existed. My emphasis on the subtle difference between “respond” and “rebut” was not meant as a legal treatise but only to facilitate being understood by an (a US) examiner.
… your own words (emphasis added):
“… are provided in response to a properly established prima facie case.”
My shifting pseudonym friend, the examiner must FIRST properly establish a prima facie case.
Easily 70% of the first actions that I see, examiners
F
A
I
L
to properly establish such.
“There is not a ‘rebuttal’ by evidence but a presentation of new evidence for re-weighing of the evidence by the examiner. And a ‘rebuttal’ by argument would never be persuasive if a prima facie case is present because attorney argument is not evidence (with the exception of admissions against interest). Thus, one does not ‘rebut’ a prima facie case but might (1) ask for reconsideration in view of new evidence or (2) persuade that a prima facie case never existed.”
It’s clear you don’t understand what a prima facie case is. Read Spada. And Oetiker (especially J. Plager’s concurrence). And Piasecki. A prima facie case exists in the absence of evidence and/or argument from applicant. When it is rebutted by evidence and/or argument it dissipates. That doesn’t mean it “never existed.” It doesn’t “exist” after rebuttal.
I’ve seen you make that “attorney argument is not evidence” comment before and it’s clear you don’t understand that at all either.
Your “emphasis on the subtle difference between “respond” and ‘rebut'” is a meaningless distinction.
I have to wonder what line of work Shifty is in.
Me too. I, too, cannot identify a single precedential case where attorney argument alone overcame a prima facie case of obviousness.
Wow you are ign0rant.
“ One does not “rebut” a prima facie case but may provide evidence tending to show non-obviousness and ask for reconsideration of the ultimate conclusion.”
Clearly, our shifty pseudonym named friend has never been a patent prosecutor.
There is BOTH avenues available in response (depending on the facts of the situation).
The first is in fact showing that the examiner has failed to establish a prima facie case.
The second is to attack the propriety OF the prima facie case.
These are distinct.