by Dennis Crouch
Nature Simulation Systems v. Autodesk (Fed. Cir. 2022)
We have an interesting split decision focusing on the doctrine of indefiniteness in the context of an “examiner’s amendment.” Judge Newman wrote for the majority and favored the patentee; Judge Dyk wrote in dissent and concluded that the patent claims were indefinite. The judges particularly differed on what level of deference should be given to USPTO examiners with the majority holding that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions.” The dissent argued instead that deference has no role in the definiteness inquiry:
The test …is whether the claims ‘inform those skilled in the art about the scope of the invention with reasonable certainty,’ Nautilus, not whether the claim language was added by a patent examiner or was not indefinite to the examiner.
Slip op. (Dyk, J. in dissent).
You likely know about Boolean logic operations such as AND, OR, and NOR. In CAD software, Boolean operators are similarly used to recognize intersection of geometric objects, using alternative terminology such as INTERSECT, UNITE, and SUBTRACT. Mathematical methods for performing these operators have been known for decades–as developed by “Watson.” NSS created a new version that it calls the “modified Watson method.”
During prosecution, the examiner rejected the claims as indefinite, but then withdrew the rejection based upon his own examiner’s amendment. The original claim required use of the “modified Watson method,” but the examiner suggested that was not definite enough, and suggested adding additional definitional requirements:
wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;
Exr. Amendment found in Notice of Allowance.
Later, NSS sued Autodesk for infringement, and the defendant responded that the language added by the examiner was actually indefinite and created confusion as to what is actually included within modified Watson. The parties consented to have the local Magistrate Judge (Sallie Kim) hear their case, and Kim sided with the defendant. The Magistrate opinion is notable in that it does not cite to the leading precedent on definiteness – Nautilus v. Biosig (2014). Rather, the court appeared to primarily rely upon Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938) or no precedent at all. The district court’s approach appears to be looking for “unanswered questions” of claim scope:
Thus, the question is thus: if the PTO issues a patent after amendment to clarify an indefinite term, but an expert later opines that a POSITA would not understand the term, how does the Court determine whether the term is indefinite? The only way to do so here is to look at each argument to see if Autodesk raises any unanswered questions.
[Nature_Simulation_Systems_Inc._62]. The Magistrate clearly missed the mark on its explanation and application of the law of definiteness. (Although Judge Dyk calls the opinion detailed and thorough).
Since indefiniteness is seen as a question of law, the court also took the second step of determining whether the erroneous application of law also led to an erroneous outcome. Yes it did. On this point, Judge Newman pointed to the specification’s offering of two algorithmic charts showing the modified Watson method and also the patent examiner’s specific determination on this very point.
The district court gave no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims. . . .
Actions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.
Slip Op (majority). The court has written on this very point in some prior cases — perhaps most pointedly in Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x 1011, 1020 (Fed. Cir. 2018) (“We presume that an examiner would not introduce an indefinite term into a claim” with an examiner’s amendment). Judge Newman cited Tinnus, but did not mention that the case was non-precedential.
For his part, Judge Dyk argues that the test for indefiniteness is an objective test based upon the understanding of those skilled in the art “not whether the claim
language was added by a patent examiner or was not indefinite to the examiner.” The majority responded to this criticism by noting that an examiner is presumptively a person of skill in the art.
Actually, in my practice, examiner’s amendments are almost always written by me.
We have an interview and discussion and the examiner and I come to an agreement on an amendment in principle and then I write the amendment, which is approved by the examiner.
I am surprised that the 101 pundits have not (yet) dropped in with their comments.
Sure, why not?
Here we have a process that results only in information. The information is an improvement in the ability of a computer to render geometric shapes. The information’s utility is non-abstract as a machine component. |
The fact that the method can be completed (but not with practical utility) without a computer is irrelevant to the analysis. The information is not used by human beings to make a decision or complete an action-it does not derive its utility as an abstract idea.
It’s properly an eligible method.
Others may argue that it’s simply math with “nothing more” to give it practical technologic application- that once you have the idea, computerizing the method is trivial.
It does seem to me that examiners should only be considered as PHOSITA once the invention is construed and if, in fact, they are skilled in the pertinent arts & that declaring them PHOSITA ex ante is problematic to the legal fiction of what skill in the art means for obviousness and WD.
“The information is not used by human beings to make a decision or complete an action”
You clearly have no idea about CAD.
The information here ONLY has value in the mind of human being.
“declaring them PHOSITA ex ante is problematic to the legal fiction of what skill in the art means for obviousness and WD.”
It is entirely improper to so declare them, and the legal fiction has been staked out (hint: Graham Factors). Some MAY be able to be at the same level of the legal fiction (and as Wt pointed out, such would need to be validated through formal affidavit).
Also just on claim interpretation experts: In Kyocera Senco Indus. Tools Inc. v. ITC (Fed. Cir. Jan. 21, 2022) (Moore, C.J.; Dyk, Cunningham, JJ.) Kyocera appealed the ITC Chief ALJ’s exclusion of its expert’s testimony on doctrine of equivalents, and Koki cross-appealed on the Chief ALJ’s decision to allow Kyocera’s expert to testify as to literal infringement and claim construction. The Federal Circuit reversed the ITC’s decision, holding that it was error to permit any infringement testimony from Kyocera’s expert and explaining that a witness must at least have ordinary skill in the art to offer testimony from the perspective of a skilled artisan for claim construction, validity or infringement, whether literal or under the doctrine of equivalents.
If followed, is this another ‘nail in the coffin’ for the use of “patent law experts” “testifying” as to patent law in patent litigation and/or against their testifying as to interpretation of specific claims?
I don’t see the reach that you are suggesting.
The District Court decision adds fuel to the suggestion that specialized judges should be hearing patent cases – those who are specialists in patent law and have at least some understanding of the technology at issue. Although Roberts talked about how District Court judges should be generalists in the all areas of law, this decision by the District Court should make him think twice about that. The judge got the legal standard wrong and completely failed to interpret the claims in light of the specification. Whether the specialized judges be at the USPTO (i.e., the PTAB) or in District Court (i.e., Article III courts) is a completely different issue on which there are strong feelings on both sides.
Big +1 Dvan.
Congress: Please bring back — and make permanent — the Patent Pilot Program.
It’s unreasonable — and indeed unfair — to expect all judges to know everything about everything.
The quote from Tinnus:
(“We presume that an examiner would not introduce an indefinite term into a claim” with an examiner’s amendment).
strikes me as equivalent to saying “If it’s good enough for the Examiner, it’s good enough for us”. This is real world and pleasingly pragmatic way to look at such issues, isn’t it?
As to Ben’s lament that within the USPTO Examiners increasingly know little about the subject matter allocated to them to examine, it seems to me (slightly tongue-in-cheek) that the less an Examiner knows, the more that Examiner will insist on a claim that’s clear, even to her/him. This will help a later reader of the claim, in the course of a patent dispute, who is also not one of skill in the art.
For once I agree with you! Think of it from the applicant’s side. Examiner says “claims are indefinite unless you add this phrase, then I will allow it.” Patent attorney reports to client: “Great news, if you accept this Examiner’s amendment, the case will be allowed.” Client,” Thanks! I accept.”
Let’s look at the alternative. Examiner says “claims are indefinite unless you add this phrase, then I will allow it.” Patent attorney reports to client, but says, “What the Examiner is suggesting is indefinite. So let’s not accept or let’s amend the language to…. We will probably have to file an RCE, it will cost more and take more time. Trust me, I know better than the Examiner.” Client thinks, “Wait what? My counsel is telling me that an Examiner purposely suggested an improper amendment to overcome his/her own rejection and my counsel wants me to pay for more of their time and gov’t fees to ‘correct’ the Examiner?”
Let’s take this one step further. What happens when an Examiner suggests an amendment/element to distinguish over the prior art? Will the courts/PTAB dismiss this amendment and give it no weight? Thus a challenger can use the same final rejection arguing, “Don’t look at what the Examiner’s said would overcome the final rejection that Examiner him/herself just issued. S/he didn’t know what they were doing when suggesting the amendment. The claim is still invalid!”
So why would an Examiner’s amendment be given no weight but the rejection from the same Examiner is valid?
xtian, your reply triggers off more thoughts in my head, ones (just for a change) very critical of the EPO. I should be grateful for thoughts from US practitioners to the difficulty I set out in the next para.
When prosecuting at the EPO, an Examining Division will often propose their own amendments, to get the case to issue. US attorneys are inclined to go along, for the very reasons you set out. But your European prosecutor will sometimes counsel against acceptance of the Examiner’s proposals, lest acceptance of them leads to complete loss of all rights in the patent. How that then? Because the amendment adds matter, and the patent has fallen into the notorious Catch 22 set up by the interaction of Art 123(2) and 123(3) EPC, the so-called “inescapable trap”.
It gets worse. Any presumption of validity is minimal. The petitioner for revocation needs only to reach a “more likely than not” burden of proof. In striking down the duly issued patent, later, in opposition proceedings, EPO judges are fond of reminding patent owners that it’s nobody’s fault but theirs, because the responsibility for settling the text going to issue is theirs, and theirs alone, 100%.
xtian, anybody else, have you ever had that painful experience? Or do you know anybody who has so suffered?
Client thinks, “Wait what? My counsel is telling me that an Examiner purposely suggested an improper amendment to overcome his/her own rejection and my counsel wants me to pay for more of their time and gov’t fees to ‘correct’ the Examiner?”
Hm, I am not really taken by this line of logic. I do not think that the courts should either give the patentee slack because an examiner proposed some of the claim language, nor should the courts given the patentee grief on this account.
The origin of the language in the claims is a matter of complete indifference to the skilled artisans working in the relevant industry (who are the ones who are supposed to be informed by these claims). The district judge here applied a flagrantly wrong standard when assessing clarity, and the appeals court rightly reversed. I do not think, however, that we should lean overmuch on the fact that in this case the allegedly unclear language came from the examiner. At the end of the day, the applicant accepted that language.
It is a bad idea for the applicant to proceed on the idea that examination is going to yield a valid claim, and that the examiner should be trusted to put the claim into valid shape. I can see why a naive applicant might think that, but those of us who have been around the block a time or two (yourself included) know from experience that this is not the case.
The applicant’s attorney should really be viewed as the one responsible for getting the client an enforceable claim. If the attorney thinks that the examiner is setting the client up for a problem down the line, then the attorney should definitely resist the proposed amendment. If the applicant does not trust the attorney’s judgment on that decision, you have to wonder why the applicant has hired that particular attorney.
“It is a bad idea for the applicant to proceed on the idea that examination is going to yield a valid claim, ”
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Do you charge extra for including the Vague Smiley Faces? Just asking for a friend.
Think about this statement. I’ll rephrase….Why shouldn’t the patentee proceed on the idea that examination is going to yield a valid claim?
Good luck xtian, but you have responded to my pal with the shifting historical pseudonyms.
He’s not much for actual on-point legal dialogue.
So that’s a no. Thank$$$. We’ll pass it along.
Love the false assertion in your question, and of course the context is that I do not charge at all for anything that I post.
This is of course entirely different than the set rates upon which I enterprise from YOUR choice of posting with YOUR inanities.
How much I bring in is entirely up to you and how p00rly you control that 0bsess10n you have with me.
So you are paid to post. Thanks$$$.
My pal Shifty – you do realize that this very type of “asked and answered” posts of yours is textbook ha ra$$ ment, eh?
I could not be more plain and direct in answering this question of yours. That you are intent on using it as some type of feeble ‘last word’ is and remains odd and in fact down right irrational.
It is a bad idea for the applicant to proceed on the idea that examination is going to yield a valid claim, and that the examiner should be trusted to put the claim into valid shape.
So we should amend 35 USC 282(a) (i.e., “[a] patent shall be presumed valid.”)?
Unlike validity regarding 102 and 103, in which validity can change based upon the introduction of newly-cited prior art, there should be no change in whether claims are invalid under 101 and 112 after examination. If the Examiner examines the claims under 101 and 112, a real presumption that these claims are valid regarding 101 and 112 should attach to the claims.
If one wonders why litigation is so expensive, one of the reasons is that the Federal Circuit has essentially ignored 35 USC 282(a) and allowed many of the same issues that should have been put to rest during prosecution to be unearthed during litigation. In particular, a strong presumption should attach when the Examiner proposes an amendment that address one of 101 or 112. In this instance, you have the Examiner clearly indicating in the written record that there is a deficiency and the proposed amendment addresses that deficiency. One cannot argue that perhaps the Examiner overlooked the issue and therefore the court should take it up.
Does the agency receive deference or not?
Some would like to have the standard that deference is due when the claims are rejected, and no deference is due when the claims are allowed.
Though bubble: Examiner’s amendment in a pro se case. Pro se applicant accepts the amendment. Case allowed. Pro se applicant hires law form to assert patent. Court finds Examiner’s amendment language indefinite/not to overcome the prior art. Does pro se applicant have recourse against the Examiner or USPTO?
Clearly, xtian, any “deference [ ] due when the claims are rejected” would be overcome during prosecution, as the point at hand is enforcement of a granted patent, and patents do not grant with (still) rejected claims.
“Does pro se applicant have recourse against the Examiner or USPTO?”
On what grounds – and on what grounds should ANY distinction be made vis a vis the applicant being pro se?
(legal grounds, that is — given that there is NO difference in substantive rights based on the status of the applicant)
So we should amend 35 USC 282(a) (i.e., “[a] patent shall be presumed valid.”)?
Nobody wants to believe this, but the presumption of validity and the common law requirement for clear & convincing evidence of invalidity really have nothing to do with examination. As Ron Katznelson has demonstrated in his i4i amicus brief, the SCOTUS has been applying the presumption of validity from even back before there was a patent examination system in the U.S.
Your point
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to reach – any such timing does NOT diminish what the law is NOW.
But (as usual), Greg is being Greg.
[A] strong presumption should attach when the Examiner proposes an amendment that address one of 101 or 112.
“Claim indefiniteness is a legal conclusion…” (slip op. at 3). Vanishingly few patent examiners have graduated law school. Why should we accord special status to the legal conclusions of a group of people (i.e., examiners) who—with all the good intentions in the world—lack both the training and experience to answer questions of law correctly?
You know who in the examination process does typically have both a lot of legal training and experience? The applicants’ attorneys do. I expect that you know this already, but you are in a much better position than the examiners to ensure that your clients get valid claims at the end of examination. Reliance on the examiner is misplaced in a manner that we all know from experience.
Greg seems to not understand the work of the examiner IS to pass judgement (… under the law …).
Greg really needs to take a break before he really craters his credibility beyond repair.
oops – too late.
Wt: “Does the agency receive deference or not?”
Well . . . these days, sadly, the CAFC is often willing to give or deny Examiner deference . . . depending on what’s needed to trash the patent.
Thankfully not in this case.
It is a bad idea for the applicant to proceed on the idea that examination is going to yield a valid claim, and that the examiner should be trusted to put the claim into valid shape. I can see why a naive applicant might think that, but those of us who have been around the block a time or two (yourself included) know from experience that this is not the case.
This is the only comment on this whole thread that seems to be related to reality at all. It’s simply not the examiner’s job to produce valid patents. The application is presumed valid and Examiner’s job is to protect the pubic by attacking the presumption using evidence and argument they think will carry a preponderance standard. I allow applications all the time that I don’t think are valid, because the question is not whether I think it’s valid, it’s whether I can prove it isn’t, and occasionally whether I think I can convince others of that conclusion.
The examiner didn’t find the language definite because they were not empowered to find the language definite. The most they could have done is conclude that the addition of the amended language was sufficient to withdraw an indefiniteness rejection based on a “reasonably clear and particular” standard determined using the information they had in front of them at the time. The MPEP construes the claims under BRI, the courts do not. The MPEP does not apply Nautilus’ reasonable certainty, the courts do. In fact, the words “reasonable certainty” appear exactly once in the indefiniteness section, under a header that reads “Claims under examination are construed differently than patented claims.” The reasonably clear and particular standard comes from In re Packard, which is a pre-Nautilus case, and is entirely focused upon the distinction between pre- and post- issuance indefiniteness. It’s nothing more than a fluke of timing that the patent being argued about was even examined in a post-Nautilus world.
There’s no logical nexus between “what the examiner did” and “whether the claims meet a current standard” when the office on its face tells its examiners to apply different standards. Don’t confuse the presumption of validity with a presumption that the examiner found the claims valid.
The applicant’s attorney should really be viewed as the one responsible for getting the client an enforceable claim. If the attorney thinks that the examiner is setting the client up for a problem down the line, then the attorney should definitely resist the proposed amendment. If the applicant does not trust the attorney’s judgment on that decision, you have to wonder why the applicant has hired that particular attorney.
This is good advice. To give two different examples – I had one application I just allowed because it was similar in scope to what another examiner allowed in the same family. I called up the attorney and told them I’m going to allow it but I’m going to write in the notice of allowance I have these concerns, and to see if they wanted me to address any concerns they had in the allowance remarks. The attorney asked if I would let them add dependent claims that might touch on my complaints. I did and they did, so now the client has the benefit of both the broader scope and protection against the type of argument I thought up that someone else was entirely capable of raising in the future.
I had a second application where I was reversed on appeals. I called the attorney up and asked if he wanted to make any amendments to accommodate my argument. He asked why he would possibly do that when he won, which I find to be a very…inept is the word I’ll use, answer. I suppose I understand that position, and I definitely understand it if there’s going to be a continuation, but if prosecution were to stop it would be a disservice to their client. I didn’t blunder into that rejection, and two other examiners signed off on going to appeals on it. The fact that he convinced the board means very little (that’s true in the other direction too, its just that few people appeal the board) because there is nothing stopping someone else who has infinitely more resources than I have from making the same argument. The only real question is whether the concern has merit and whether you want to insure against that merit, not whether you (temporarily) prevailed on the issue.
You are beyond being full (f00l) of yourself Random.
“If the applicant does not trust the attorney’s judgment on that decision, you have to wonder why the applicant has hired that particular attorney.”
You undermine the integrity of the Examiner and the USPTO with posts like these. Why have an examination process? You should be advocating for a patent registration system if there is no deference given to the job the Examiner has done.
I have pointed that out before – PLUS one could set up a first class registration system and keep it going for a couple Million a year – as opposed to the current (totally applicant funded) MULTI-Billion dollar annual USPTO budget.
Let’s look at the alternative. Examiner says “claims are indefinite unless you add this phrase, then I will allow it.” Patent attorney reports to client, but says, “What the Examiner is suggesting is indefinite. So let’s not accept or let’s amend the language to…. We will probably have to file an RCE, it will cost more and take more time. Trust me, I know better than the Examiner.” Client thinks, “Wait what? My counsel is telling me that an Examiner purposely suggested an improper amendment to overcome his/her own rejection and my counsel wants me to pay for more of their time and gov’t fees to ‘correct’ the Examiner?”
I mean – the lawyer could always say “The examiner suggests language X is needed to be definite, but I suggest language Y, and lets go to appeal on it.”
Are you seriously blaming examiners for your inability to convince your client to do the correct thing now?
Let’s take this one step further. What happens when an Examiner suggests an amendment/element to distinguish over the prior art? Will the courts/PTAB dismiss this amendment and give it no weight? Thus a challenger can use the same final rejection arguing, “Don’t look at what the Examiner’s said would overcome the final rejection that Examiner him/herself just issued. S/he didn’t know what they were doing when suggesting the amendment. The claim is still invalid!”
Applicants are incorrect when they argue amended language overcomes the cited art all the time. Examiner’s can’t be incorrect too?
So why would an Examiner’s amendment be given no weight but the rejection from the same Examiner is valid?
The issuance has a presumption of validity. The rejection has no presumption of validity when it is made. The burden is on the Examiner. The fact that the applicant acquiesced to the amendment suggests that the rejection might have been valid because they wouldn’t narrow their scope unnecessarily, but that doesn’t create a presumption either. What are you talking about?
“Examiner’s can’t be incorrect too?”
I literally fell over with laughter.
Random clearly misses the irony of his post.
xtian: “‘Great news, if you accept this Examiner’s amendment, the case will be allowed.’”
The best move is to have it both ways:
Accept the allowance . . . and file a con, a cip, or both . . . before paying the issue fee (at least in the US).
Have your cake and eat it, too.
+1
(this however, does require the applicant PAY MORE — and I think that one of the points here is that not all applicants can do so)
“This is real world and pleasingly pragmatic way to look at such issues, isn’t it?”
No.
On a patent law blog, (not EVEN considering this to be a US patent law blog), you should at least try to acquaint your reasoning to legal concepts.
“Judge Dyk wrote in dissent and concluded that the patent claims were indefinite.”
As Gomer Pyle used to say:
“Sur-prise! Sur-prise! Sur-prise!”
link to youtube.com
🙂
These judges on the CAFC are an f’ing joke.
Just filth.
Not surprisingly, Judge Newman got this one right. I do not say that these claims are valid. I do not even say that these claims satisfy §112(b). The majority here, however, are surely correct that the two limitations at issue are sufficiently clear when construed in light of the specification.
This decision itself states that: “Claim indefiniteness is decided from the viewpoint of persons skilled in the field of the invention. Personalized Media, 161 F.3d at 705.”
P.S. Dennis, in the penultimate paragraph above you accidentally gave Judge Newman a new and unusual title.
Since when is an Examiner presumptively one skilled in the art?
See also PowerOasis, Inc. v. TMobile USA, Inc., 522 F.3d 1299, 1304 (Fed. Cir. 2008) (stating that PTO examiners are “assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.” (quoting Am. Hoist & Derrick Co. v. Sonra & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984) (overruled on other grounds))).
As some of you already know, skill level determination by Examiners (more particularly, the lack thereof) is my pet peeve.
There’s a big difference between “assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art” and “an Examiner is presumptively one skill in the art”.
Judge Rich wrote in Am. Hoist that “When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents.”
Where did this go to Examiners are presumptively skilled in the art?
A presumption is an idea that is taken to be true, and often used as the basis for other ideas, although it is not known for certain. An assumption is a thing that is accepted as true or as certain to happen, without proof. My understanding is that the difference between the two is that “Assumption” refers to the act of taking for granted or supposing something while “Presumption” refers to a belief on reasonable grounds or probable evidence.
It is indeed an assumption that an Examiner is skilled in the art, and not a presumption. Even Judge Rich provided no citation to support his “assumption.”
There are no reasonable grounds or probable evidence to support that Examiners are skilled in the art. If an Examiner ever claims to be a person skilled in the art, the applicant should demand an affidavit from the Examiner explaining the basis for that claim.
I disagree. according to the internet definitions you used, presumption and assumption have the same essential meaning, i.e. “accepting something as fact without proof.” the difference is that a presumption is a default assumption taken as a practical necessity (such as assuming that a granted patent is valid), and creates the burden of disproving it. an assumption does not necessarily create any such burden (except for the burden of having to listen to some idiot throw around baseless assumptions).
There is indeed an important difference between presume and assume. One would hope that lawyers will always be clear in their heads about the difference between these two words and then select the right word, when they compose any utterance. As to the background technical knowledge of a Patent Office Examiner, for example, I personally always assume at the outset of prosecution at the Office that it is adequate but, years later, (if I understand it right) the court will presume that the Examiner, in the case at bar, had adequate knowledge, back then.
Internet definitions…
Bone Jurr
See link to youtu.be
ipguy,
Thank you for: “As some of you already know, skill level determination by Examiners (more particularly, the lack thereof) is my pet peeve.”
Let me add a slight wrinkle (and throw some additional shade at Greg to boot).
For nearly every first action with an obviousness rejection under 103, we invariably have a rejection that basically says the combination teaches [keyword] + [keyword] (based on simple mash from keyword searching).
First aspect (repeat): the legal phrase is not mere ‘motivation’ of each [keyword] separately, but rather the ‘motivation to combine.”
Second aspect (at point here): Examiners simply routinely
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to even bother with any sense of Graham Factor setting forth of what exactly constitutes the Person Having Ordinary Skill In The Art that would cobble together the various [keyword] search results.
There is NO “Art” out there for which the PHOSITA is a mere cobbling of [keywords]. And IF the Examiner would so attempt to imply, the (lack of) ANY Graham Factor basis readily WRECKS the notion of prima facie case of establishing a proper 103 rejection.
This is where Greg is taken to task: He has recently crowed that the 103 prima facie case is excessively easy to establish. As inside counsel, he must really be separated from any real prosecution, as he would see that a LARGE portion of Office Actions do not come close to his “excessively easy.”
Let us not forget that skill level determination is not just limited to obviousness as the knowledge held by a person having ordinary skill plays out whenever the Examiner invokes the magic phrase “person of ordinary skill in the art”, such as in 112 issues. It can even come up in 102 issues, for example, when an Examiner states that something not explicitly stated in a reference would be inherently known to a person of ordinary skill.
Agreed – and it even comes up (in its role) in 101..
Hint: Step Zero.
Absolutely correct.
The level of ordinary skill permeates through patent examination. That’s why it is ridiculous for the USPTO to define skill level implicitly through the prior art cited in obviousness rejections. What if there are no 103 art-based rejections, but only 112 rejections? How is the Examiner determining the level of ordinary skill to support a rejection that something is indefinite or not enabled?
Amen! One almost always sees the fact finder make a finding of fact about who is the “person of ordinary skill” (degree, years of experience, etc) in district court or IPR/PGR. In my whole career, however, I have never received an office action in which the examiner states on the record who the PHOSITA is. Not once. I usually throw out details in my first office action response, so that if this ever becomes an issue on appeal, mine will be the only mention of the subject in the record.
Greg, I recommend you (and all other patent practitioners) include an argument that the Examiner has failed to provide any explanation as to why the cited prior art reflects an appropriate level of skill in the art. Remember, the Federal Circuit itself has recognized that the failure to state the level of skill in the art is error.
This is routinely done – with reference to the citation and quote from the Supreme Court on the Graham Factors. Can you provide that Federal Circuit case cite? Would love to add that.
I’ve spent hours looking for that cite, anon. The quote said something along the lines of recognizing that the trial court not specifying the level of skill was error, but the question was whether it rose to the level of reversible error.
I’ll keep looking as it is driving me crazy not being able to find it.
much appreciated!
Whenever it started, it should not continue past October 1st 2020.
As of that date, the PTO has been docketing cases to examiners based on a similarity metric between their experience and the CPC’s associated with an unassigned application. It is inherent to, and expected with, this system that Examiners will be given cases that are on the periphery of, or outside, their areas of expertise.
If you are a car ignition examiner, and there are too few car ignition cases, you may be given car brakes cases. If there are too few car brakes cases, you may given pipe fitting cases. If there are too few pipe fitting cases, you may be given nucleophilic substitution reaction cases.
And after just 5 office actions (not applications! Office actions!) on a nucleophilic substitution reaction case, the Office considers you, a car ignition examiner, fully qualified for examining nucleophilic substitution reaction cases. Buckle up for the torrent of chemistry cases you’ll be examining!
So to presently assume that an examiner is of ordinary skill in a field based only of them examining an application in that field is completely detached from the reality at the PTO.
Thanks for the info Ben.
“So to presently assume that an examiner is of ordinary skill in a field based only of them examining an application in that field is completely detached from the reality at the PTO.”
Ouch. Double ouch. Triple ouch.
If you are a car ignition examiner, and there are too few car ignition cases, you may be given car brakes cases. If there are too few car brakes cases, you may given pipe fitting cases. If there are too few pipe fitting cases, you may be given nucleophilic substitution reaction cases.
This is ridiculously misleading that goes so far as to be incompetently stated. It is true that this describes the general idea – that the Examiner has a core competency and the system kind of radiates outward if the core competency doesn’t have enough applications to support the examiner – but the scale of the jump here is nowhere close to reality and it ignores other things.
An accurate example would be that when you were hired, you were competent to examine oranges and apples. You’re probably going to spend your entire career at the office examining oranges and apples, because the advancements keep coming in them. But if, for some reason, the art of oranges became stale and there were fewer advancements, you would just be examining more apples. If nobody retired in your field over the course of years and oranges and apples were not enough for the examiners examining them, you would occassionally be picking up grape applications, because those are also small round fruit and you learned about them during your years of orange and apple examining. Moreover, someone with your exact same background who was hired at the same time as you were was hired to examine grapes right out of the gate, so you are no less competent than they were. You would not jump into grapes, because you’re still the best examiner to examine oranges and apples, and there’s still a lot of them.
If oranges/apples/grapes applications waned (a process that would take many years) and orange/apple/grape examiners were not retiring in an equivalent pace, you might move on to large roundish fruit like watermelon. Over the course of decades you may even find yourself examining banannas. But you’d never find yourself examining vegetables, or animals. The only way you’d examine vegetables is if there were no applications in the entire genus of fruit. The odds of that are zero.
So to reapply this to the real world. There never was a “car ignition examiner.” There was a mechanical engineer, who was given a bunch of areas to examine, one of which included car ignitions. When car ignitions wane, the most likely outcome is that they are examining their other original fields, but it is true that at some point they may slowly transition (because the inventive process slowly transitions) to related mechanical engineering fields – fields that they were equally competent to examine purely by virtual of their mechanical engineering degree. But there would never be a point where one mechanical engineer was handling even distinctly different types of mechanical applications, because there are tens of thousands of mechanical engineers outside the office and they’re all doing work too. Now I suppose that if mechanical innovation fell off a cliff over a very short timeframe – say a meteor hit and wiped out every single private sector mechanical engineer, and the innovation in mechanical engineering went to zero, the mechanical engineer at the office would transition to chemical examining as the last mechanical engineering innovations in the world were resolved. Obviously that would never happen.
If you’re a mechanical engineer writing car applications based on work that other mechanical engineers working on cars did, you’re going to be examined by an examiner with a mechanical engineering degree familiar with cars. It is true that at some point there may come a time at which the car examiner may not be examining cars – and that point will be when there are no mechanical engineers working on cars and submitting their work to mechanical engineers writing car invention applications. My private sector’s counterpart employment will cease to exist before mine.
I examine computer software. At some point I may start examining different computer software than I was originally hired for – Artificial intelligence is hot right now – but you’d still rather have me examining your AI application than a new hire. I have examined software that tangentially touches upon chemical and DNA cases, so I theoretically have the 5 office actions to conceivably be assigned a pure chemical case. I will never be assigned a pure chemical case. I can’t imagine that I’m ever going to not be working on computer software, and if I did it would be something that electrical engineers do. I’d never get to mechanical, let alone chemical, and I know that because people keep teaching and hiring computer software engineers. If tomorrow computer software engineering stops being taught at colleges, I will set a reminder to brush up on my electrical engineering classes in 15-20 years time, as should every prosecution attorney/agent with similar training.
“The only way you’d examine vegetables is if there were no applications in the entire genus of fruit. ”
Sometimes there are opportunities to move around the office but they are almost always voluntary. The involuntary major moves are very very rare. Heard of it happening to a few people, but never actually known someone it happened to.
Sometimes there are opportunities to move around the office but they are almost always voluntary.
Sure, and that’s because the examiner feels they can examine in the new area. They’re subject to standard quality requirements in that case.
The involuntary major moves are very very rare.
My understanding is that they are nonexistent now after switching to the CPC system. UPC was broad enough that if you left your subclass maybe you got into new stuff, but CPC is so narrow that one could, e.g., swap out of their art unit to avoid a personnel conflict and still be examining the majority of the same stuff.
And we had to do COPA for awhile to help out other areas that were dissimilar to our own. I did some household goods type stuff for a tiny bit and some entertainment stuff for a tiny bit but that’s not my day to day. Now I do 90% all one tiny subfield.
“Now I suppose that if mechanical innovation fell off a cliff over a very short timeframe – say a meteor hit and wiped out every single private sector mechanical engineer, and the innovation in mechanical engineering went to zero, the mechanical engineer at the office would transition to chemical examining as the last mechanical engineering innovations in the world were resolved. Obviously that would never happen.”
You leave out another way the requisite gradient can occur: one technology has a significant decrease, and another technology has a huge increase. This situation has already occurred. If your C* qualification in chemical ever starts to have overflow while your mainstay areas are at low pendancy, you will get pure chemical actions, and if it those circumstances persist long enough you will become a chemical examiner. That is just how the system works.
Ben,
I do not think that your other examiners Random and 6 agree with you.
I was addressing stuff seen over 15 years here. He is talking about stuff new in the last year with the new system and he is likely correct about that. If your Cstars in one place are drying up and your Cstars in the other place are growing a bunch then your docket could ez shift from 10/90 to 90/10 etc.
If my sub-area I’m doing right now starts drying up I assure you the algorithm will shift me to my other Cstar groups (practically everything in my art, but emphasis will likely be on one other sub-art I deal with and was doing a bunch in which is unlikely to dry up in 10+years)
Random’s characterization of the new system is optimistic, and mine is pessimistic.
I think the pessimistic point of view is more appropriate for thinking about whether one should assume examiners are skilled in the art of the application they’re holding.
I’ve also seen people already be bit by the new system and are examining work that they aren’t remotely qualified for. I get that not everyone is seeing this happen yet.
“I assure you the algorithm will shift me to my other Cstar groups”
Another factor not mentioned is the density of people already in those C*s, and how well linked they are to adjacent groups. If the people in the band exterior to you are not “qualified” in the band exterior to them, you’re much more likely to get pushed out to that band exterior to them.
Random’s characterization of the new system is optimistic, and mine is pessimistic.
There’s no optimism/pessimism involved – when a docket needs new cases, it simply counts up how many actions you have done in each CPC class of each pending application and then selects the pending application that most fits the docket, repeating until the docket is full. I agree if you have an application that includes both “car ignitions” and “car-related chemical stuff” you will get points for the chemical class, and in a relatively short amount of time you will be *eligible* for examining that. But a pure chemical application will never be the *best fit* for your docket because it has a handful of chemical CPC classes and you have a low number of one chemical CPC class, and a high number of a huge amount of mechanical engineering CPC classes. You would need there to be no pending mechanical CPC cases before the low number of chemical cases you did becomes relevant in application selection. That won’t happen because the private sector still employs mechanical engineers and they are still innovating. And if – over a period of time – the capitalist system rendered innovation in your core competency not valuable, the market wouldn’t disappear it would dwindle. When its dwindling your docket will naturally be selecting CPC classes that are nearby your previous core competency (since you have done a lot of those, as opposed to the few random chemical cases) as the preferred cases. You will slide to the right, adding new CPC classes adjacent to this new core competency, not leap to the left by going completely into a field you barely examined.
It’s pure math. The only optimism/pessimism involved is whether the application is properly classified in the first place, as that is the only marginally subjective test. But that was true in the old system too – if someone misclassified the application you’d possibly get an application outside your field – and there is the same mechanism you had before to solve it: Effect a transfer.
Another factor not mentioned is the density of people already in those C*s, and how well linked they are to adjacent groups. If the people in the band exterior to you are not “qualified” in the band exterior to them, you’re much more likely to get pushed out to that band exterior to them.
Yes I agree this is a short term issue because the office did not track CPC over your career very well (since we weren’t a CPC-based system). That will work itself out in a year or two as the CPCs assigned to an action reinforce what your core competency is. But it still shouldn’t result in the mechanical engineer examining a chemical engineering application.