More opinions coming; and Patenting the Patenting Process

The Federal Circuit has an internal practice of only issuing R.36 affirmances-without-opinion in cases where the court holds oral arguments.  Most of the oral arguments have been cancelled for the court’s April sitting. The result then is that either (1) the court is going to write a lot more opinions or (2) the court will shift its practice to now start issuing no-opinion judgments even without oral arguments.

Todays short decision in In re Thomas (Fed. Cir. 2020) (per curiam) suggests to me that the court will be writing the opinions. Douglass Thomas is a patent attorney and his claimed invention is a “computer-implemented method for notifying users having patents of subsequent publications that reference the patents.”  The examiner rejected the claimed invention as ineligible and that decision was upheld by the PTAB (along with finding the claims anticipate/obvious).

The Federal Circuit has now affirmed the rejections — offering the following 1-paragraph analysis:

Applying the two-step framework set forth in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Board found that the claims are directed to the abstract idea of “alerting by notification message notice of a new publication indicated as relevant to the notifiee.” The Board also found that the claims do not contain an inventive concept beyond the abstract idea. We agree with the Board on both points. We therefore adopt the Board’s reasoning in its decision and its decision denying rehearing.

Slip Op.

Despite being short and lacking depth of analysis. The decision is helpful in a number of ways — most importantly has to do with the potential alternate reasons for affirmance. If the case had been simply affirmed without opinion then we would not know if the court affirmed eligibility or instead on obviousness/anticipation. That would allow Thomas to avoid issue preclusion and potentially raise the same arguments again in this or a different case.  The court’s 1-paragraph will foreclose that avenue.

21 thoughts on “More opinions coming; and Patenting the Patenting Process

  1. 3

    “The Federal Circuit has an internal practice of only issuing R.36 affirmances-without-opinion in cases where the court holds oral arguments.” Where did you hear that?

    1. 3.1

      Judge Prost said so at a panel at the 2019 Federal Circuit Bench & Bar conference in Colorado Springs.

  2. 2

    . . . and yet another in a long line of extrajudicial “the ends justifies the means” 101 / eligibility rejections.

    Mr. Thomas was robbed, plain and simple.

    If Congress sits on their collective hands any longer while American innovation continues to be unconstitutionally destroyed . . . they’re going to find deep finger prints on their behinds.

    Permanent ones.

    1. 2.1

      What was Mr. Thomas robbed of? or were you being sarcastic? It’s hard to tell base on just a written post.

      1. 2.1.1

        No sarcasm Dvan — he was (101; no opinion offered on the 103 / 103 rejections) robbed of his invention.

  3. 1

    To “Shepardize” patents for their cites in later patents of others is a well know [and discredited*] method of supposedly evaluating patent “importance” or “valuation” [or potential infringers?] by companies selling that service for years.

    *because that falsely assumes that examiners cite the pioneer patent in a field in their application search cites. They are actually more likely to cite later [and narrower claim] patents with more specification details.

    1. 1.1

      A puzzle. One can see patent attorneys collecting client money for appeals like this often enough, but this was a pro se patent attorney wasting his own time and money, and ignoring Abe Lincoln’s famous advice about attorneys representing themselves. There must be a good reason, and I think one may be that this patent attorney has been successful in sliding similar applications of others past other examiners? Not a comforting thought.

      1. 1.1.1

        I was going to guess that a patent attorney might pursue this claim purely for bragging rights…

        But after looking at US 6,216,235, I think the inventor may have developed a taste for this type of “innovation” years ago.

    2. 1.2

      And yet, but for the 101 rejection these claims would likely have issued.

      It’s enough to make one wonder about our standard for “obvious”. At least for those who aren’t financially invested in the current standard for “obvious”.

      1. 1.2.1

        I wouldn’t assume that just because 101 was the only grounds of rejection that the claims were considered non-obvious.


          PTAB reversed the 102 and 103 rejections.

          I would agree that such a reversal should be understood as ‘the claims are not obvious in view of the particularly cited references’, but we both know that’s not how the Office was going to treat the claims.


            Oh. App not available in public PAIR.

            The PTO was never going to allow this application. Ever. Their strategy, had the PTAB reversed all the rejections, would have been to “wear down” the applicant until he gave up. At least one Deputy Assistant Vice Associate Commissioner for Re-Opening and Holiday Party Planning made his bones doing that as a TC Director.


              Not only is the application not available in public PAIR, the immediate decision references the Board decision below at several points (i.e., “J.A. 36, J.A. 27, J.A. 4-9,…), but does not actually provide the demarcation of that Board decision by any traceable nomenclature.

              One may fully allow for such in the blogosphere. One should expect more in an actual court decision.

              ‘We agree with below’ is still meaningless if that ‘below’ is not provided.

              Probably the only good thing here is the phrase at the top of the decision:

              “NOTE: This disposition is nonprecedential.”


                The JA references are to the Joint Appendix. The Board decision(s) are always the first items in the JA. The JA is available on Pacer.

                My guess is that the app is unavailable in PAIR because it has not published; I assume a nonpublication request was filed.

                This type of decision is infinitely better than a R.36, as the applicant now knows the Fed. Cir. adopted the Board’s reasoning. I hope the Fed. Cir. relies on this type of decision far more in the future and moves away from R.36 judgments. The most frustrating cases are those where the Board’s reasoning is clearly flawed, but the Fed. Cir. affirms anyway on a R.36 judgment and an appellant is left having to guess at why. Without R.36, this type of situation will be avoided. I have had a couple of cases where in retrospect I found myself wondering whether I would have been better off if I had waived oral argument so the panel would have at least articulated their reasoning.


              Was this application one in which publication was withheld by the applicant, so that it should not be in Public PAIR?
              Or, could this be another example of problems with Public PAIR that have been previously noted here?

                1. Thanks IamI.

                  That makes this even less exciting for any actual ‘progress’ than my low expectations had been.

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