Does the examiner need to provide a copy of the reference for it to be “on the record” before the PTAB?

The new petition for certiorari in Samaranayake v. Iancu (Supreme Court 2021) has little chance of being granted, but it does offer some insight on USPTO procedure.  I mentioned 35 U.S.C. § 144 in a prior post this week.  This case also focuses on Section 144 and asks whether the Federal Circuit exceeded its statutory jurisdiction by creating its own record rather than relying solely on the record before the USPTO. The statute:

[T]he Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. . . .

35 U.S.C. § 144. The question presented to the Supreme Court stems directly from the statute:

Whether, in creating the required evidentiary record de novo rather than merely reviewing the agency Record below, … the Federal Circuit exceeded its statutory jurisdiction under 35 U.S.C. § 144.

Petition for Writ of Certiorari.

Haritha Samaranayake is the first listed inventor on U.S. Patent Application No. 13/877,246 along with several other Finland-based inventors who were apparently working under Prof. Seppo Ylä-Herttuala.   The application claims a 2011 UKIPO priority filing date and is now owned by a Gliotherapy Limited.  As the company-name suggests, the patent here claims a method for treating malignant gliomas.

1. A method of treating cancer in a human patient, said method comprising:

diagnosing a cancer in a human patient,

administering to said human patient a viral gene therapy vector having a transgene, and

within about 30 days of said administration of said viral gene therapy vector, administering to said human patient a cytotoxic agent other than gancylovir.

The basic procedural setup in the case:  

  • Examiner twice rejected claims as obvious and Applicant appealed to PTAB.
  • In her Answering Brief, Examiner conceded that the Evidence of Record did not support the rejection, but offered a new rejection based upon new prior art (not previously of record in the case).  Of note, the Examiner provided a citation to the cited non-patent-literature, but did not actually provide a copy of the references in the record.
  • The PTAB agreed with the examiner and found the claims obvious.
  • On appeal to the Federal Circuit, and now before the Supreme Court, the Applicant argued/argues that those references were never made of-record, and thus cannot serve as the basis for Affirmance on Appeal.  For its part, the Federal Circuit affirmed the rejection without opinion (R.36); and denied the en banc rehearing petition without opinion.

This case comes down to the basic question of what counts as the USPTO’s “record” when handling an appeal.  Although we lack a decision from the Federal Circuit, the USPTO Solicitor’s Office makes the simple argument that prior art becomes “of record” if the full scientific citation is provided by the examiner and the reference is reasonably (or actually) available to the applicant.  Likewise, the PTAB concluded in its rehearing decision that the reference “was made of record in the Examiner’s Answer because the Examiner provided a full citation to it.”

Not mentioned here, the patentee did not properly raise the full record issue until after-the-fact and also clearly had the references in-hand when drafting its reply brief.

 

79 thoughts on “Does the examiner need to provide a copy of the reference for it to be “on the record” before the PTAB?

  1. 6

    One of my clients told me to file an appeal. It was actually at the EPO.

    I told them that I thought it was frivolous and refused. The client said he wanted it because he was selling his company and wanted the illusion that the appeal might be won. This seemed like improper purpose to me.

    The client fired me.

    1. 6.1

      “I told them that I thought it was frivolous and refused. The client said he wanted it because he was selling his company and wanted the illusion that the appeal might be won. This seemed like improper purpose to me.

      The client fired me.”

      Seems like everything that should have happened. Though you may have forgotten to remind him that you and all lawlyer kind are officers of a court somewhere and do have professional/ethical obligations or you can get in big trouble. Don’t just at them with the ol frivolous line.

    2. 6.2

      Morals over money. The right call NW.

    3. 6.3

      Night, I have to say that I’m surprised at your assessment that to appeal would be “frivolous”. That would suggest to me that you had been, up to that point, asking the EPO examining division for issue of a claim that you yourself knew to be devoid of patentability. Hmmmmmmh.

      1. 6.3.1

        Don’t be ridiculous Max.

        It was an Art. 52 (2) and (3) issue. It was clear there was no way out.

        1. 6.3.1.1

          OK. Eligibility then. Art 52. Technical “character”. But if so, to whom was the inescapable hopelessness “clear”?

          Hopeless, even with a judicious scrivening amendment to the claim, to bless it with some non-zero inherent “technical character”? Like “computer-implemented”.

          As of now, I remain unconvinced, open-minded. Ridiculous? I think not.

          1. 6.3.1.1.1

            MaxDrei remaining unconvinced (about anything)….

            About one of the most worthless items ever posted.

    4. 6.4

      Night, like 6, I’m intrigued by your use of the word “frivolous”. Perhaps you meant “futile”? But was there ever a time when a European patent attorney could declare with 100% certainty that the prospects of success in appealing an ED decision at the EPO are no higher than zero?

      I can quite well imagine that the trenchant language of the written ED decision would make the task of substantiating a notice of appeal a gruesome and personally deeply embarrassing prospect, but that’s altogether a different matter entirely.

      1. 6.4.1

        Fortunately, I don’t have to answer to you Max.

        Frivolous is certainly the right term given the situation. And, at the time I was quite the expert in this area at the EPO having worked with some of the top tech companies in the US getting patents allowed. I also had an excellent network of European patent attorneys that were also experts in this area, which I consulted for this application. They agreed that given the case law it was hopeless and would not be received well.

        Frivolous is the correct term from the perspective of the board but perhaps one could say futile from the perspective of the applicant. But at the EPO what rules is the case law and there were simply no arguments in view of recent cases.

        1. 6.4.1.1

          Thanks for all that, Night. But none of it displaces my suspicion that the obstacle was Art 56, EPC and the absence from your patent application of an enabling disclosure of a technical feature combination to solve an objective technical problem. The established case law on that issue is crystal clear (as you imply) and not undefined as anon would assert. Indeed futile to go on to appeal if the issue is “technical effect”.

          On eligibility, Art 56 EPC, by contrast, I rather suspect, to the contrary, that you had the “technical character” to establish eligibility. I mean, somewhere in your patent application you surely included the word “computer” (or words to that effect).

          With all the experience you have, I’m surprised you didn’t draft the original specification accordingly, to establish the delivery of technical effects. But perhaps you took over the case only after the end of the Paris Convention year, too late to cure the drafting failure?

          1. 6.4.1.1.1

            That is correct I took over a portfolio of applications from a start-up company based in the UK.

            As to your comments regarding technical character and whether they are fixed or not at the EPO, I do not agree.

            I still deal with this issue today and, in fact, I am working on a patent application now and trying to figure out how to file a continuation to get by some of these issues.

            But the problem is what is included as “technical” doesn’t really make a lot of sense and is case based and typically based on the application. I note that software that improved the operation of computers used not to be included as part of the technical solution but now are.

            There are actually whole articles and many of them about how to try to get features included as part of the technical solution. It is by no means fixed and by no means consistent.

            1. 6.4.1.1.1.1

              Night, on the one hand you assert that the EPO has not defined “technical” and that its ambit gets ever-wider. On the other hand, you told your client that to appeal whether his invention was “technical” was “frivolous”. I’m still not convinced of your assessment. If “technical” is as vague as you assert, well then, al is still to play for.

              You tell us that the case was drafted by a UK Start Up, then taken over by your client. That suggests to me that the Start Up wrote its patent applications in the UK but primarily with the USPTO in mind, and succeeded in attracting investment from the USA. That the US investor, in turn, sees business value in the modest expense of taking the EPO Examining Division’s Decision to appeal strikes me as reasonable, not frivolous.

              1. 6.4.1.1.1.1.1

                Max come on. Stop it.

                Did you not read what I wrote? The portions of claims that are considered part of the technical solution or solving the technical problem is vague and shifting. But, if you get cases that are directly on point to your client’s application, then you are lost.

                And, again and again, it is case based at the EPO based on the area the claims are directed to.

                And stop worrying about my client. It was a UK start-up with patent applications that were written by a European patent attorney. Not focused on the USA.

                1. I have to reconcile your statement that it was at the EPO a case with the fact that the patent application was written by a European patent attorney. I do this by supposing that the drafter, mindful of the business interests of the client, had in mind the prospects of success at the USPTO. An unremarkable, even bog standard situation, not “ridiculous” at all.

                  But, OK, I’ll stop now.

                2. MaxDrei,

                  Your “have to” is decidedly impolite as you attempt merely to have your view preserved solely in your own mind.

                  There was not hint of “US” in the story and you are simply not at liberty to insert one just to attempt to placate your preconceived world view.

                  That’s not being reasonable – that’s being delusional.

                3. The comment from anon about my “world view” reveals more about his than mine. There is a difference between drafting in the US for a US Start Up and drafting in the UK for a UK Start Up. It is this.

                  UK patent attorneys are required to prove by examination, before they get a Certificate of Registration to Practise, that they can advise competently on patent law outside the United Kingdom. That’s because patent rights confined to the UK are not worth much, these days. What is worth more is a patent issued by the USPTO or the EPO. They are competent to draft for the USPTO.

                  How is it in the USA, anon? Just the same “world view”?
                  Do Start Up’s in the US see a patent in the UK as vital? Or is the enormous home market what they (and their drafters) focus on, pretty much exclusively?

                4. I call your response pure BS MaxDrei, as you are the one trying to insert something into someone else’s story that just is not there in order for you to maintain your own personal views.

                  My calling out your actions cannot “say more about me” because there is NO “me” here in view of what is being inserted.

                  YOU are the one attempting something not present.
                  YOU have been called out for that.

                  Stop kicking up dust to try to cover what you have been called out for. The conversation simply is NOT about any difference between writers of US patents (for US and/or other markets) and writers of UK patents (for UK and/or other markets).

                5. anon, Night’s original comment at #6 used the words “frivolous” and “improper”. The “conversation” since then has not deviated from this one point. It goes to what standards of ethics an attorney in private practice is bound by. This might be of no interest for you, but it is for me.

                6. It is very much of interest to me — and has NOTHING to do with your frolic, to which I have called you out for.

                  Again – you are NOT at liberty to insert YOUR facts just to make YOU feel better about YOUR beliefs.

                  This last ‘reminder’ of yours changes nothing.

                  It does not change YOUR actions
                  It does not change my calling out YOUR actions

          2. 6.4.1.1.2

            and not undefined as anon would assert.

            Would I now? Try again without the spin.

      2. 6.4.2

        personally deeply embarrassing

        MaxDrie has shown by his own posts that he is impervious to any such “calamity.”

  2. 5

    All this effort to get a 2nd action nonfinal. I mean, okay.

  3. 4

    Possibly a minor separation of powers question? If an appeals court concludes that some item of information raised in papers from either side should be properly construed as part of a case record, can Congress say otherwise by general statue, or is the construction of a case record for the purpose of appeal inherently a judicial power?

  4. 3

    Truly terrible lawyering. Just UFB.

    As for whether the examiner is required to provide a copy of the reference, it’s typical of the PTAB to cite the MPEP to justify their own terrible practices. The idea that “there’s nothing in MPEP 707.05 that requires a copy be provided for the reference to be ‘of record’ (huh huh, aint we so clever?)” is typical nonsense from the “judges” of the PTAB. Section 132 is pretty clear that the reference(s) has to be provided. That’s the law. Not the MPEP. And whatever “negative implication” a bunch of phony “judges” think they can give a wink and nod to.

    But again, the lawyering was beyond bad. And being doubled down on. Just awful.

    1. 3.1

      Not my art, but doesn’t this negative limitation “a cytotoxic agent other than gancylovir” make the claim extremely broad?

      1. 3.1.1

        Yes. Extremely broad. Vanishingly unlikely to get to allowance without considerable amendment.

    2. 3.2

      and yet, 37 CFR 1.2…. The action of the Patent and Trademark Office will be based exclusively on the written record in the Office

      If the words of the reference (as opposed to a citation to the reference) are NOT there, how is action to be based exclusively therefrom?

      /s

      1. 3.2.1

        Rule 41.30 defines the “record.” If the APJ’s felt that the cited, but unsupplied, NPL reference was “of record” then why did they cite to the MPEP, and not Rule 41.30 or Section 132? Because they’re complete hacks. Whenever I see a PTAB decision that cites to the MPEP I know 1) the decision is garbage and 2) the APJ’s who decided it are garbage. Complete garbage.

        Of course the APJ’s doing their usual garbage work doesn’t excuse the garbage work done by Applicant’s rep.

      2. 3.2.2

        Rule 41.30 defines “the record.” That the APJ’s didn’t cite it, but cited the MPEP instead for some magical “negative implication” speaks volumes.

        1. 3.2.2.1

          The Image File Wrapper doesn’t include any US pgpubs at all. It only includes the citations to those pgpubs. So how is a proper citation to NPL different from a proper citation to a PGPUB vis-a-vis the image file wrapper?

          I agree that the office provides a teaching and allows people to get PGPUBs from it, but the definition defines the record as being the IFW. So by your standard, there hasn’t been a proper record in ANY application that cites US Pats and Pubs, right?

          1. 3.2.2.1.1

            You do know that actual access to NPL is very different than access to patents and patent publications, right?

          2. 3.2.2.1.2

            When the PTO decided to stop supplying actual copies of US patents and PGPUBS there was an OG and/or FR notice to that effect. I don’t recall what was in the notice(s) and how they squared the decision to stop providing copies with Section 132.

            Regardless, if the applicant’s argument is the reference isn’t of record, wouldn’t you think that a panel of APJ’s, people of supposed legal competence, would at least address the rule that defines the “record”? Why didn’t they? Why are the saying, “Well, gee, MPEP 707.05(a) says…” WTF what MPEP whatever section says? And how much does the PTAB love reminding Applicants that they are not bound by the MPEP? (While ignoring that Applicants aren’t bound by it either.)

            Why didn’t the APJ’s address whether the NPL was “of record” as the definition of that term would require?

    3. 3.3

      35 U.S.C § 132(a)

      Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application;…

      You read “such information and references as may be useful” as clearly requiring that the reference be provided, right?

      1. 3.3.1

        Its not really that clear from the statute, because the operative action word in the sentence is “notify.” In this case, the applicant was notified of the references, and actually obtained copies of the references in time to write a full-and-complete reply brief.

        I see the appellant here asking for pennoyer v neff style notice; while the PTO follows international shoe.

        1. 3.3.1.1

          Is not the operative action word clearly constrained or modified?

          Are you suggesting that operative action words be read in a vacuum?

  5. 2

    Can someone explain what the actual point of this is? I mean lets say the Supreme Court actually agrees. They can’t order issuance, they can only remand. At that point the examiner HAS to provide the reference and issue a non-final rejection (I would make the argument its proper to make it a final rejection, btw) – they have the Board upholding the rejection based on that reference so they are bound and it would be clear error to not make the rejection, it’s no longer subject to their own judgement.

    The examiner’s answer was filed 10/23/2017. The board partially affirmed 5/30/2019, and denied reconsideration 9/4/2019. On the unlikely chance the Supreme Court hears it and issues its opinion by when? Fall?

    So Applicant will have lost somewhere between 2 – 4 years, spent clearly more money than if they just reopened prosecution, and can’t possibly even be looking at an issuance. Worse, imagine if they win, get a remand, and the examiner DID just allow. This is a wonderful example of how terrible it would be if applicant got what they wanted. What good is a patent where you have both the PTAB and the CAFC finding anticipatory prior art out there?

    How can this possibly help the applicant? Why do this?

    1. 2.1

      Could be a gambit hoping that the relevant TC director will insist on allowing rather than going to appeal again.

      1. 2.1.1

        Not seeing that – given that said TC Director had to give permission for the new ground of rejection to have been made in the examiner’s answer (37 CFR 41.39(a)(2)), it does not make much sense to expect such a reversal, especially on a non-substantive ‘technicality’ (if that were the path that the court directed the proceedings down).

      2. 2.1.2

        I think Ben nailed it.

        That is the only reason in the world that I can think of why you would to go to so much trouble.

    2. 2.2

      For a patent attorney in private practice, the business decisions of clients are often a mystery, an enigma, baffling. One simply concludes that the client must know better than I, what’s best for their business. So I just concentrate on setting out for the client all the options that I can conceive, try to paint each of these options as accurately as I can, and then trust that client will choose the one that’s best for their business. I have a fear of any client ever asking me afterwards “Max, why didn’t you tell us that?”. Watchword: For one’s client, no Nasty Surprises. Ever.

      1. 2.2.1

        Meh, one need not conclude that the client “knows better” (have a little confidence in your advocacy, MaxDrei); rather, one merely needs to recognize that it is ALWAYS the choice of the client that prevails.

        A client will always have their reasons. It just does not matter whether those reasons result in the “right” decision or not, whether it is “better” or not.

        Your position as you stated is both annoyingly lacking in assuredness of your faculty and condescendingly “too polite.”

        If you cannot tell a client that it made an error, you are in the wrong business.

        As to “why didn’t you tell me that?” Meh again, as that rather depends on the “that” involved. If you think that all court decisions (or executive agency decisions) have been reasonable or even reasonably foreseeable, then you are either engaging in falsehoods, or you are simply operating in such a shallow “experience pool” that your advice is suspect.

    3. 2.3

      What is the applicant fighting for:

      After losing at the PTAB, the patentee petitioned for rehearing and, at that point, submitted additional evidence to support its case, including a expert testimony. The PTAB refused to consider the additional evidence during the rehearing. The gambit here is to get the PTAB to consider the additional evidence.

      1. 2.3.1

        “The gambit here is to get the PTAB to consider the additional evidence.”

        Thanks Dennis for clearing that important question up.

        But — this is most assuredly not something SCOTUSis going to bother with.

        As others have recommended, the better path here was to reopen prosecution.

      2. 2.3.2

        I see. But that is ridiculous. The whole thing is fishy as heck.

        A new reference in the reply brief? It should have been brought back into prosecution at that point.

        And new evidence to refute the new reference to be considered after final by the board? The whole thing is improper.

        1. 2.3.2.1

          A new reference in the reply brief? It should have been brought back into prosecution at that point.

          Applicant has the option to reopen prosecution in response to a new ground in an examiner’s answer. Applicant chose to continue appeal.

          1. 2.3.2.1.1

            Agreed – these are critical points.

      3. 2.3.3

        The gambit here is to get the PTAB to consider the additional evidence.

        Then isn’t the challenge to the rule that the affidavit was not timely? All sides agree the examiner put in a new ground of rejection. All sides agree Applicant opted to continue appeal. All sides agree that an affidavit wasn’t filed until after the decision.

        The only question is whether Applicant was required to file the affidavit before the decision (in response to the new grounds in the answer) or if they could wait until after the decision (Applicant argues the decision “invited” Applicant to submit new evidence). There’s no real question here – obviously you have to submit evidence as to how a term should be construed before the decision, not after the decision. There’s not even a mechanism for the examiner to respond after the decision, there’s only mechanisms for reopening prosecution or further appeal.

        That reads the “copy of a reference” question entirely out of the discussion, since the same issue would arise in any appeal: Is post-decision an appropriate time for new evidence? That’s not even plausible – the only grounds for new evidence deal with (1) a holding in a different app, (2) the board making a new ground of rejection or (3) an argument that the ground of rejection should be designated as new. At least the “copy of a reference” argument has some sort of due process issues involved, this is just straight correct application of federal rules.

    4. 2.4

      It is important to notice that this is a pharma application. In our industry, the most commercially valuable portion of the patent term comes at the very end. By the end of the LIPITOR patent’s term, for example, the drug was bringing in ~$1 billion of revenue per day. Each day of extra patent term, therefore, was worth millions in profits.

      If the Court takes this case and if the applicant wins, that amounts to years worth of C category PTA tacked on the the end of the term of the patent that eventually issues. This is true even if the patent as issued is considerably narrowed in scope by the time it reaches allowance.

      I doubt that the Court will take this case, so I correspondingly doubt that the gamble will pay off. If, however, they can persuade the Court to take and reverse, it could be worth billions.

      1. 2.4.1

        Ahhh. Thanks Greg. That makes a little bit more sense.

        Seems unsporting of the examiner to add a reference in the reply brief.

        I actually have never seen that in one of my appeals. I didn’t even know they could do that.

        1. 2.4.1.1

          “Seems unsporting of the examiner to add a reference in the reply brief.”

          I had an examiner cite a new reference, Reference X, in his Examiner’s Answer. It wasn’t even prior art. No designation of a new ground and TC Director approval. I filed a petition to designate a new ground of rejection. The SPE had the examiner issue a new Examiner’s Answer (clearly not proper as noted in the MPEP) and the TC Director designee dismissed my first petition as “moot.” The new Examiner’s Answer cited a second new reference, Reference Y, that was actually prior art. Still no designation of a new ground and TC Director approval. I filed a second petition. The TC Director designee denied it. Said there was no new ground. Filed a third petition that was decided by the Commissioner’s office (probably somebody in OPLA or Office of Petitions) and granted. Re-opened. Added one or two words to the independent claim and the examiner allowed it.

          You have to make the Office follow the law and the rules. They are not going to do it if you don’t. And the court is not going to help you out if you don’t.

          1. 2.4.1.1.1

            You have to make the Office follow the law and the rules. They are not going to do it if you don’t.

            It probably goes without saying that the overwhelming majority of my interactions with the PTO are fairly routine and professional. When you do get an examiner gone rogue, however, I definitely agree with the above. The TC is fairly well committed to telling applicants to buzz off. You need to be prepared to chase your petition up to the more senior level to get the case back on track if the examiner runs off the rails. The good news is that the very senior levels of petitions play it straight when deciding these matters.

          2. 2.4.1.1.2

            Thanks for telling us that AAA JJ.

            I don’t know if I will ever have to deal with a new reference or not, but good to know.

            So far my biggest problem is the examiner brining it back into prosecution and wasting all the money of an appeal brief.

            1. 2.4.1.1.2.1

              “So far my biggest problem is the examiner brining it back into prosecution and wasting all the money of an appeal brief.”

              That’s what I would think is the largest problem.

          3. 2.4.1.1.3

            “Added one or two words to the independent claim and the examiner allowed it.”

            A lot of time and effort to get your failure from the beginning on the record. Keep on keepin’ on AAA.

            1. 2.4.1.1.3.1

              So “from the beginning” I was supposed to amend around a reference that the examiner didn’t cite until the second examiner’s answer?

              If it’s so easy, how come you’re still at the PTO?

      2. 2.4.2

        Greg, your general point – that the numbers in pharma can be big, that the end of pharma patent life is usually when the patents are most valuable, and that therefore the thinking in pharma prosecution can differ from thinking in other contexts – is spot on. But I think the numbers you gave for Lipitor are off. I don’t think any drug in history has done a billion dollars a day – that would mean $365 billion annually, and that’s way beyond what even today’s biggest drugs are doing. I was involved in some Lipitor oppositions in Israel around 2001-2002, and at the time it was doing something like $12 billion annually worldwide, which is over $30 million a day, with a significant chunk of that coming in the USA. Those numbers are nothing to sneeze at, of course, but they are two orders of magnitude smaller than a billion bucks a day.

        1. 2.4.2.1

          Sure enough, you are right. I do not remember where I heard that billion-a-day figure. A Google search shows that my numbers (as you suggest) are two orders of magnitude off.

          In any event, the broader point that the extra PTA could be worth millions still stands.

  6. 1

    ? MPEP “1214.01 Procedure Following New Ground of Rejection by Board [R-08.2017]” ?

    1. 1.1

      The board didn’t enter a new ground of rejection, the Examiner did in the answer brief. The relevant section is 1207.03, and applicant continued appeal which waived reopening prosecution.

      1. 1.1.1

        Thanks Random.

        Above you mentioned that a re-opening on the basis of the adjudged action NOT being sufficient would properly be made “final” (which of course is not logical, and would be a contradiction of the very decision that you would insert as the foundation) – I think the better supposition is that the Ends simply need be arrived at through proper Means (even when all parties can see the Ends).

        Here, I presume that the applicant’s reply brief suffices for providing Means (and as Prof Crouch notes, here that chance was blown).

        Bottom line was that this messy on all sides, and probably not a great case to continue pursuing (down either option of reopening prosecution or continuing with the appeal).

        As the full story is not available, it’s not worth getting too deep here.

        1. 1.1.1.1

          Above you mentioned that a re-opening on the basis of the adjudged action NOT being sufficient would properly be made “final” (which of course is not logical, and would be a contradiction of the very decision that you would insert as the foundation) – I think the better supposition is that the Ends simply need be arrived at through proper Means (even when all parties can see the Ends).

          That’s not granular enough to be accurate. I agree that when an examiner makes a new ground of rejection in the answer brief and the applicant immediately elects to reopen prosecution, the action must be designated non-final. That unquestionably could have been an outcome here. I assume we agree on this.

          But in the fact pattern above, where Applicant elected to continue appeal, the ground of rejection ceases to be new as soon as the reply brief is filed. The standard for a “new” ground of rejection is largely a due process one (the MPEP standard is if Applicant has had fair opportunity to react to the thrust of the rejection). By opting to continue appeal, Applicant has had due process and has demonstrated he had fair opportunity to react to the thrust of the rejection. So by the time it comes back down after appeal, the rejection is no longer “new” and therefore it’s proper to make the rejection final, because every action after the first that does not contain a new ground of rejection may properly be designated as final.

          706.07(a) – Second or subsequent actions are final except when certain new grounds are included

          1207.03(a) – Grounds of rejection are not new if applicant has had opportunity to respond to the thrust

          Since applicant was able to, and actually did, respond to the new rejections in the reply brief to the board, Applicant had opportunity; contrast with applicant opting to reopen prosecution, which presents no opportunity. Or put another way – Applicant was given the option to reopen to present new evidence. Applicant cannot waive that right and argue solely on the record before them, and when they lose later complain that they should get the chance to submit new evidence or raise new arguments. Electing to waive was a strategic decision that constituted the due process owed to applicant. It is functionally no different than reopening and responding to the non-final solely on argument with unpersuasive argument (Applicant just changed who the deciding entity was) – something which routinely results in final rejections. The ground of rejection shouldn’t be new, and it should be a final rejection.

          1. 1.1.1.1.1

            I just realized I missed an important feature in my own response: Assuming the supreme court says the lack of a copy meant the rejection was improper, the first rejection the examiner makes (assuming it provides the copy) would properly not be defined as “new” and therefore the action would properly be final, for the reasons stated in the above post.

            In other words, I have noticed that attorneys view the office’s due process as “making the same rejection twice, unless the changes are necessitated by the applicant” when in reality the correct way to think about it is “the office is taking an action. does the action contain things that would prevent it from being labelled as final?” As 1207.03 shows, you could make an entirely new rejection (a 102 rejection where none existed before) based on no claim amendments at all, and the action may still properly be final. That’s why its improper to think about this as “the supreme court reversed, so obviously something was wrong in the initial rejection/action and therefore the next action cant be final.” The question is never whether the initial action was wrong. The question is only if it is proper to make the next action final or not. Examiners routinely screw up non-finals and yet can go final on a second action (most commonly because applicant elects to amend the scope) all the time.

            1. 1.1.1.1.1.1

              In the unlikely event that the case somehow gets remanded to the examiner the rejection that appeared in the examiner’s answer (i.e. the rejection with the “new” NPL reference) could be issued in a final rejection.

              There is no downside to re-opening prosecution in response to a new ground of rejection (either designated or undesignated) in an examiner’s answer. Re-open. Take the two months to re-assess the claims. File a response with whatever new arguments and/or evidence that you have. The PTA will be there when the case is allowed.

            2. 1.1.1.1.1.2

              You are simply way way off here, Random.

              What you omit in the “new final” are caveats not at play (amendments, IDS and such).

              1. 1.1.1.1.1.2.1

                … in other words, move the goal posts back — nothing here was indicating an absence of a proper ‘going final’ and your attempt to read THIS discussion as if any of the amendment/other as not only present, but driving is just not so HERE.

                (I would add, the “oh, you made an amendment, here’s your final pure reflex is a (strong) remnant of the RCE gravy train days.

                Amendments at non-final arrive in two flavors: when an examiner has demonstrated that they can be trusted and when the applicant is desparate.

                1. More than a month after a last response – on a thread in which you had no prior interaction – and a thread about to slip down to page 3…

                  Your gameplaying and 0bsess10n with me is noted.

                  Awwwwww, did you (yet again) fail to even get a ‘last word’ (as all along I have been putting to you that it is not just a last word, but a last and best word?

                  link to patentlyo.com

                  Your choice of not even trying to be on point, not even trying to advance ANY point of law, much less a point of patent law, and ONLY trying to get a ‘last word in’ is very much an item that I have monetized.

                  You seem blithely determined not to understand this, and the fact of this situation shows that your mindless chatter is but a sad tell of what remains of your rather insignificant time on this sphere in your waning days of retirement from the patent office. But hey, if I can make money off of your continued banal choices, why not?

                2. …and before you get carried away on this thread as some continuation of your quixotic fetish, some facts that you (and the moderator) may wish to consider:

                  On the linked thread, there were a total of 254 comments, of which 109 came after the initial discussions on days January 12-14.

                  All comments after January 14 were by you and I – exclusively.

                  Of the comments (total) made by you and I, exactly 100% (ALL 57) of your comments were to or about me, and lacked ANY on-point or meaningful attempt to engage in a conversation.

                  Exactly ZERO percent meaningful posts from you.

                  Notwithstanding this level of obsess10n from you, and having both the best and last answers to your game playing, I ALSO had 44.6 % of my posts engaging others.

                  One may want to consider what “cyber-stalking” entails.

                  When 100% of your posts are nothing more than game-playing and directed entirely to one person, and entirely NOT geared to ANY point of law, or remotely on target to anything other than hara ss ment, one should consider that your intent is not a helpful one.

                  For anyone.

                3. same old same old from you…

                  You do realize that this has long been established as one of the ways I get a pay-out, right?

          2. 1.1.1.1.2

            That’s not granular enough to be accurate

            Actually, it is entirely “granular” enough and it is entirely accurate.

      2. 1.1.2

        But the Board then affirmed the new grounds from the Examiner’s answer, and on petition for rehearing in which the owner submitted expert evidence, the Board refused to hear the rebuttal evidence and affirmed again, and then CAFC affirmed under R.36. Correct? Ergo, the owner is now collaterally estopped from those claims (is that a think with PTAB/Examiner issues)? Correct? And the owner is saying basically remand and enter our expert testimony? Correct?

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