Earley’s application comes too Late

In re Earley (Fed. Cir. 2021)

In its December 2020 decision, the Federal Circuit sided with the PTO — upholding the PTAB conclusion that Mr. Earley’s claims were obvious based upon Earley’s own prior invention. The court has now also denied Early’s petition for rehearing. Earley represented himself pro se.  His filings at the Federal Circuit were not pretty, and I expect that sealed his loss — even if he had a good underlying argument on the merits.  Still his innovations are pretty interesting.

Earley’s pending application, APN No. 12/925,235, claims priority back to a 2009 filing date. His prior patent, PAT No. 6,949,842 reaches back to a 2001 provisional and issued as a patent in 2005 — so it was 102(b) prior art.

In looking at the history in the case, I suspect that Earley could have won by submitting his factual arguments to the Examiner / PTAB in the form of an affidavit (i.e., as evidence) rather than merely as arguments in the briefing. The PTAB had noted that Earley’s arguments regarding problems with the prior art carried no weight because they were based upon conclusory statements rather than “objective evidence (e.g., declaration evidence) providing detailed specifics.”

13 thoughts on “Earley’s application comes too Late

  1. 3

    Yet another unfair inventor beat-down by the CAFC.

    Matt, sorry I can’t provide you with any specific potential paths forward (and I haven’t reviewed your entire case), but what I can recommend is that you review other recent 103 / obviousness decisions / cases at the CAFC and PTAB.

    Also “Google” the various phrases the Examiner, PTAB, and CAFC used in their decisions to locate articles that address what you’ve been dealing with.

    That way you can see what others have done (utilizing professional help) . . . and what has worked as well as what hasn’t.

    Time consuming, yes. But free.

    Best wishes.

    1. 3.1

      Since (if you (still) are) pro se, you may also want to consider filing a Request for Examiner Claim Drafting Under MPEP 707,07(j).

      You can find a sample of one in application 11/031,878 (inventor Tormasi).

  2. 2

    Yikes. PTO: We ignored everything you wrote because it wasn’t on a form with the right heading.

    To a pro se inventor.

    1. 2.1

      “A form with the right heading” is not of course the distinction between a detailed substantive declaration by a technical expert made under oath [a Declaration exhibit] versus mere inventor or attorney argumentation.
      Spending some money on an expert could also help determine if an invention is commercially practicable enough to even be worth spending patenting legal costs on. That is not the job of a patent attorney.

    2. 2.2

      ” … on a form with the right heading”?

      The Board and the Examiner are bound by statute, regulation and case law. They cannot ignore the requirement for evidence — on the written record, an affidavit or declaration offered under penalty of perjury — established by those, even in the case of a pro se inventor.

      As explained in the opinion, upon (IMO generously) entering a new grounds for rejection, the Board explicitly told the applicant he could go back before the Examiner to present such evidence. Not sure the Board would have been as helpful to an applicant represented by counsel.

      But it certainly seems the Board tried. Is the law an arse? Perhaps. But tough to blame this one on PTO rigidity.

      1. 2.2.1

        Probably so. At the time I did not appreciate that the app and prior art had to be substantially identical for a 102 rejection ….. they did.

  3. 1

    Any next step ? Was surprised that they simply denied. Felt that my argument was more than sound. Matt Earley

    1. 1.1

      “Any next step ?” Yes, hire an experienced patent prosecution attorney who will give you proper and sound legal advice.

    2. 1.2

      Thanks Matt – I’m sorry that the patent system is structured so that it is really difficult for someone other than a patent law expert to navigate.

      You have a right to petition to the US Supreme Court. However, I don’t think that your case before SCOTUS is likely to succeed unless there are aspects of the case that I have not seen (there probably are).

      If you don’t do anything then the case will be deemed remanded. You may be able to restart prosecution — usually done by filing an RCE or Continuation Application along with amended claims. However, that will cost $$$ and have other potential implications (such as limited patent term).

      1. 1.2.1

        Dennis, Thanks for the advice. Did you have time to read my petition for panel rehearing and could a next step be petition en banc for rehearing ?


          Hi Matt – I only spent 2 minutes skimming your petition.

          I believe that you do


          get to file for en banc rehearing at this point. That deadline runs concurrently with the deadline for panel rehearing, which is 45 days when USPTO is a party. I have not fully researched this issue and so there may be some way to do it that I’m not aware of.


          Someone might want to share with Mr. Earley that any “advice” you read on a blog (even, or perhaps especially, from the blog master) may not constitute Legal Advice (with the concurrent client/attorney relationship being formed).

          I am not even sure if Prof. Crouch is still an active attorney (which may raise other issues – and perhaps a quick spot on the otherwise moribund Ethics portion of the blog).

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