by Dennis Crouch
Elekta Ltd. v. Zap Surgical Systems, Inc., — F.4th — (Fed. Cir. Sept 21, 2023)
The recent Federal Circuit decision in Elekta v. ZAP Surgical provides an interesting case study and also warning on how prosecution history can be used to support a finding of a motivation to combine prior art references, even when those references come from different fields. Here, the patentee claimed a radiation therapy invention, but included references to imaging devices in its IDS. That inclusion (along with some other evidence) led to an inference that PHOSITA would generally be motivated to combine art across these two fields.
Background on the Elekta Case
In Elekta, the patent-at-issue claimed a device for treating patients with ionizing radiation using a radiation source mounted on concentric rings. U.S. Patent No. 7,295,648. During an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB or Board) found the claims obvious based on a combination of two prior art references:
- Grady, which disclosed an X-ray imaging device with the X-ray tube mounted on a sliding arm connected to rotating support rings. This was an imaging device.
- Ruchala, which disclosed a radiation therapy device using a linear accelerator (linac) as the radiation source, where the linac rotates around the patient to deliver the radiation dose. This was a therapy device.
On appeal, Elekta argued that a person having ordinary skill in the art would not have been motivated to combine an imaging device like Grady with a therapy device like Ruchala. The Federal Circuit affirmed the Board, finding substantial evidence supported a motivation to combine, including the prosecution history.
Using the Prosecution History to Find an Implicit Motivation to Combine
A key dispute in Elekta was whether a person having ordinary skill would have been motivated to combine references from different fields – here, imaging and therapy. Elekta argued that a key difference made the imaging art inapplicable to therapy. In particular, the linear accelerator used for therapy is quite heavy and so support systems designed for imaging are typically will not work.
The Board disagreed with the patentee and found a motivation to combine the imaging reference with the therapy reference. A key factor for the Board was that the patentee had cited imaging references in its information disclosure statement.
The Board supported this conclusion by reviewing “the prosecution of the ’648 patent, [which demonstrated that] patents directed to imaging devices were cited, and were not distinguished based on an argument that imaging devices were not relevant art.”
Slip Op. Digging into the case history, I found that the patentee had cited an imaging device in its IDS filing and the examiner had cited the reference in an office action rejection. The patentee distinguished the reference based upon its particular mounting configuration. But, the patentee did not raise any written objection to the reference being an imaging system rather than a treatment system. Later, in the notice of allowance the examiner cited a different imaging system as state of the art for mounting radiation sources. Again, the patentee did not raise any express objection to that characterization and its applicability to the claimed therapy system.
On appeal, the Federal Circuit affirmed that it was proper for the Board to infer a motivation to combine based (in part) on this citation history:
We hold that the Board’s finding that a skilled artisan would have been motivated to combine the [imaging] device with Ruchala’s linac [therapy device] is supported by substantial evidence, including the prosecution history of the ’648 patent … Specifically, as explained above, during prosecution, the patentee notably did not argue that prior art references directed to imaging devices were not relevant art.
Id. The court found this prosecution history suggested an implied admission that both imaging and therapy references were relevant to the claimed invention, and thus established an implied motivation to combine the references.
I want to be clear on the holding here. The imaging references cited during prosecution are different from those relied upon in the IPR. But, citing those imaging references created an inference that PHOSITA would consider other imaging references and even have a motivation to combine them with the therapy prior art.
One note – neither the Board nor the FedCir distinguished the particular prosecution history acts that were sufficient to create the inference. When I first read the case, I assumed it was simply IDS citations, but learned of the rejection/NOA citations as I dug into the briefing. In the briefing, the challenger noted that the imaging patent was the first-cited-reference and therefore was important – but the tribunals did not appear to give credence to that particular statement. Bottom line, it appears that an IDS statement could be sufficient to trigger the inference, but the actual threshold is is unclear.
Takeaways from Elekta — Disclaimers
This case demonstrates the need for patent prosecutors to be very thoughtful and strategic when citing references, responding to rejections, and notices of allowance in order to avoid creating an unintended prosecution history record that could imply motivation to combine disparate references. The following are some specific steps prosecutors could take include:
- When citing a reference in an IDS, drafting an explicit statement that the citation should not be construed as an admission that the cited reference comes from an area that is analogous or directly applicable to the invention, and rather that the reference is being cited out of an abundance of caution.
- If an examiner cites a reference in a rejection from a separate area of technology, not remaining silent and instead actively responding on the record with an explanation of why the particular area of technology is not applicable or combinable due to key differences.
- Even if rejections are eventually overcome on other grounds, reiterating for the record (and especially in the face of a contrary reason-for-allowance) that no admission is made regarding the applicability of art.
- Drafting tailored disclaimers and statements to avoid implications of compatibility between disparate references, while balancing the need to prevent unintended admissions.
While it is important to avoid unnecessary concessions, applicants must be deliberate and strategic in crafting the intrinsic record, while also recognizing that these additional statements are contrary to substantial conventional wisdom advising applicants to avoid unnecessary statements in the prosecution history.
Since somebody from NAPP pointed me to this article, I went through the IPR decision and Fed Cir opinion.
I don’t see where this comes from. “A key factor for the Board was that the patentee had cited imaging references in its information disclosure statement.”
The IPR decisions notices, “Petitioner further points out that during the prosecution of the ’648 patent, patents directed to imaging devices were cited, and were not distinguished based on an argument that imaging devices were not relevant art.”
However, the board did not rely on that petitioner argument at all. In analyzing motivation to combine, the board was only concerned with expert testimony (see pages 33-36) not anything to do with prosecution.
The Fed Cir opinion mentions the prosecution history because an attorney brought it up in a trial brief, referring to the office action and the applicant’s remarks, not anything in an IDS.
This article includes, “Bottom line, it appears that an IDS statement could be sufficient to trigger the inference, but the actual threshold is is unclear.” Of course it’s unclear. The concept that the contents of an IDS could support a holding of a motivation to combine requires a hop, a skip, and a jump to an implausible conclusion that no court has reached.
I respectfully suggest deleting this article so as not to lead future prosecutors away from good IDS habits.
It was pointed out to me by a colleague that 37 C.F.R. § 1.97(h) expressly states:
“(h) The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).”
Reyna, Stoll, and Stark represent a waste of black robes. Totally incompetent
Nearly a week ago at post 10, David John explicitly noted this (following my perhaps too cryptic for those who refuse to bother with the terrain comment at 7.1).
You are correct to call out Reyna. Maybe he needs a mental exam.
Maybe on his next prostrate exam
Hopefully this case represents the beginning of the rapid decline of the increasingly abused and increasingly absurd “analogous art” doctrine (at least as it’s been applied in the past few years). If you don’t want references from field X that disclose limitation Z to be cited against you then don’t recite limitation Z in your claim and admit that the other limitations are in “the art.” If you insist on doing that then be prepared to provide evidence of teaching away in “the art” and/or unexpected results.
You seem to building a pretty strawman there.
How much lipstick are you going to use?
Prosecutor cannot create motivation to combine where none existed previously, since prosecutors don’t qualify as being a POSITA sufficient to implicate client’s case as obvious anymore than a defense atty can make admissions not supported by the facts or client, otherwise lawyers could make confessions for Accused Persons, clearly impermissible. Motivation to combine must come from the prior art, not lawyers mis-statements made during zealous representation done in good faith.
I like your thought vector here Chrissy — however, the law does not work like that.
For example, applicant admitted prior art is deemed prior art against that applicant even if the statement so admitting is factually incorrect.
nah, pull out your black’s law dictionary, and re-read the entry for “Mistake.” Sometimes PTO and courts make Mistake, it is a frequent occurrence. Motivation to combine must come from the prior art, not your lawyer.
Except, legal Mistake does not apply to perfect people 🙂 I think it is a mistake to claim to be perfect, since in such instance one deprives themselves of a remedy for having made Mistake.
Forgive them.
Chrissy, your lack of being an attorney is shining through here.
Grabbing a copy of Black’s and looking up “mistake” just does not help you — for the reason of the very example that I provided to you (and provided to you expressly because I know that you are not an attorney and it is a patent concept you can grasp as a patent agent).
You’re right, attornment is not my gig. You can repeat that ad infinitum, as you seem prone to do, and, if it makes you happy, it can’t be that bad.
I don’t see patent law as being solely possessed of features of strict liability, since Applicant’s intent weighs heavily quite often. Maybe its more of a quasi-strict liability. Most of the cases I’ve seen involve Mistake, whether its addressed at that or not, patent law and the courts are replete with Mistake. In any event, motivation to combine must come from the prior art, and most are aware that all patents issued are in the prior art. Merely listing one on an IDS, should mean very little, particularly in view that most submitted IDS’s do not contain statements of the relevancy of the art cited in the IDS. IIRC, the rules of practice require an explanation be given of the prior art cited and its relevancy. I haven’t yet seen an IDS that does this, because apparently it has become custom and habit to not do so. Accordingly, perhaps this case cited by Prof. Dennis illustrates a good reason that practitioners should follow the rule, and give some statement of why the art was cited. In the current case, the reason for citing the problematic art, had it been proffered, would tend to teach away from how and why the reference was applied. Have a wonderful day, cupcake.
p.s. its 37 cfr 1.98 a) 3. (i), which I provide:
(i) A concise explanation of the relevance, as it is presently understood by the individual designated in § 1.56(c) most knowledgeable about the content of the information, of each patent, publication, or other information listed that is not in the English language. The concise explanation may be either separate from applicant’s specification or incorporated therein.
So, if an Applicant or their rep fails to provide the required statement of relevancy, that’s a Mistake. Is it fair for an Applicant to not follow the rules, and then later cry about negative outcomes from their not having followed the rules ?
I might predict, we see this come up in CLE’s, where the teacher says “now students, here are some cases where Applicant failed to follow rule 98, and the baaaad things which came from their recalcitrance” I’d wager we see more IDS’s containing the required statement of relevancy. Use it to your advantage !!
Meh, I say it less “to make me happy,” and more because it is directly on point to your shortcoming.
And being a bit fond of you, it rather makes me sad that you do not want to take my points as intended and correct your own shortcomings.
If the patent office thinks it’s obvious they shouldn’t have issued the patent in the first place.
“I want the works
I want the whole works
Presents and prizes and sweets and surprises
Of all shapes and sizes
And now
Don’t care how
I want it now
Don’t care how
I want it now”
You do realize that this comes across BADLY FOR YOU as an examiner, right Ben?
You want to act like applicants have not paid the agreed upon price for a full and proper examination?
Do
Your
F
N
Job.
Not sure I can agree with this rational.
That thunderous, herd-of-cattle-like roar you hear is 1,000’s of patent prosecutors knocking over their colleagues to stop their IDSs and Statement on Reasons for Allowance from being filed (no Friday early cutout for you).
That the CAFC would find yet one more way to further enlarge the patent mine field should surprise . . . no one.
“Intertwined?” Oh, you mean like the 102 / 103 / 112 intertwining the CAFC does with 101?
Congress: Time to shut this kangaroo court down. The experiment has failed.
Miserably.
(1) So, if you do not make an argument during prosecution, it could be an admission that the argument is invalid. The suggestion is that more arguments are better than fewer arguments, in contrast to the more conventional wisdom that the less said, the better.
(2) Using the Applicant’s disclosure, whether it is in the IDS or the specification, as evidence of obviousness, fits the classical definition of hindsight (both the prior classical legal definition and the dictionary definition of hindsight).
Regarding whether non-analogous art should be a consideration in obviousness analysis, note that the wording of 35 USC 103 (“one of ordinary skill in the art”), suggests that skill in another art (and therefore information in references that would not ordinarily be known to one of ordinary skill in “the” art) is not relevant to the question of obviousness, which is just common sense as to what the obviousness test should be. Making connections to arts that one ordinary skill is not aware of is clearly beyond that of one of ordinary skill.
It will be interesting to see if this new waiver rule applies to other “motivation to combine” arguments.
DL: “The suggestion is that more arguments are better than fewer arguments”
If you have a GOOD argument, then make it. That’s always best practice.
“contrast to the more conventional wisdom that the less said, the better.”
So best to say nothing at all? That’s ridiculous. The “conventional wisdom” is that you don’t make statements or arguments that aren’t going to help you or are extremely unlikely to help you or that are highly likely to be used against you later. Beyond that, you are just repeating a worthless aphorism.
And once again: the IDS was not used against the applicant here.
>If you have a GOOD argument, then make it. That’s always best practice.
We apparently come from different schools. I was taught to make ONE good argument, as making two just created unnecessary estoppel.
Traditionally anyway, bouncing rubble e.g., pointing out all fifteen errors in the Office Action may make you feel good, but hurt your client.
“And once again: the IDS was not used against the applicant here.”
From the reply brief:
“The reference that topped the IDS that Patent Owner provided to the examiner during prosecution was U.S. Patent No. 6,309,102 (“Stenfors”) entitled “Positioner for an x-ray examination apparatus.” Ex. 1002 at 87 (emphasis added). Stenfors disclosed an imaging device for rotateably mounting an x-ray tube so as to be rotateable about two axes “while retaining [an] imaginary isocenter.” Ex. 1029 (Stenfors) at Abstract. Ex. 1001 at 6:44-49. Clearly, Patent Owner felt that such a system was relevant to the application.”
The IDS was used against the applicant here.
Okay, it was “used against” the patentee but only for the purpose of pointing out that the applicant was full of s—t when it tried to assert there was no relevancy. The art at issue here was analogous art regardless of the IDS. In other words, the IDS did not create the “analogousness” of the art, nor was the IDS necessary for the CAFC’s conclusion, nor was the IDS relied on by the CAFC to reach its conclusion. It could have been relied on, I suppose, to sanction the patentee for flinging ridiculous b.s. ant the court and that would have been fully appropriate.
DC. “Elekta argued that a key difference made the imaging art inapplicable to therapy. In particular, the linear accelerator used for therapy is quite heavy and so support systems designed for imaging TYPICALLY will not work.”
ROTFLMAO
All imaging art is non-analogous because every single support system used for imaging purposes is way too flimsy except for the support systems that aren’t too flimsy. Oh and we don’t have any limitation in our claim about weight loads but that shouldn’t matter because reasons.
It’s hilarious to see all the patent maximalist bottom feeders coming out of the woodwork to whine about this case.
The problem here is not this case but the ridiculous cases that were construed to create some sort of magical loophole for removing “non-analogous” prior art. That’s the kind of nonsense that the bottom feeders eat up like candy because it is senseless and just wastes everybody’s time, with the potential of wasting everybody’s time all the way up the Supreme Court.
“Specifically, as explained above, during prosecution, the patentee notably did not argue that prior art references directed to imaging devices were not relevant art.”
Are applicants now required to proactively argue that cited, but unapplied, prior art from the examiner is not relevant?
I must be in this business too long. I could have sworn we had a black letter rule about this.
“The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).”
37 CFR 1.97(h)
To be clear, the CAFC did not hold otherwise.
The CAFC relied upon the inclusion of the references in the IDS to support a motivation to combine.
Only one. There were two other imaging references in the prosecution history – one in a rejection, and one as “relevant art” in the notice of allowance.
AiD – nice digging.
To be clear, the CAFC did in fact hold otherwise — even as they did so in a rather hamfisted manner.
Totally avoidable.
Add another chapter of patent profanity (see francis at 1.3 and my point(s) at 1.3.1 and 1.3.2.
Have any of these idiots ever prosecuted a patent application? This throws a huge wrench into the entire IDS process. It’s been designed from the beginning NOT to be considered an admission to anything–even that is prior art. And now a bunch of history and english majors are ignoring that history and screwing with the incentives. No wonder they want to get rid of the last competent Federal Circuit judge.
“ a bunch of history and english majors are ignoring that history and screwing with the incentives”
LOL
The incentive to disclose all relevant non-cumulative prior art is exactly the same as it was before.
Disclaimer should be based upon what Applicant says — not on what Applicant didn’t say.
When an Appeals Court reviews the arguments and determines one of Appellant’s arguments is valid, which makes all the other arguments moot, they (usually) don’t address the others.
When an applicant is able to overcome a reference (or combination of references) with one set of arguments, there is no need to address every error made by the Examiner. Moreover, that applicant did not acquiesce to every statement made by the Examiner.
Exactly.
The applicant also argued no reasonable expectation of success, and noted no finding of this by the PTAB. No worries! The CAFC found that it was implicitly argued.
“These and other of Elekta’s similar arguments also
were made in connection with whether a skilled artisan
would have been motivated to combine the prior art. In
these circumstances, the Board made no error in addressing the issues of motivation to combine and reasonable expectation of success in the same blended manner that
Elekta chose to present those very issues.
In finding that “persons of ordinary skill in the applicable art would have readily understood the advantages” of
Grady and would not have been dissuaded by the “difficulty
in accommodating heavy linacs” or concerns related to “precision” in targeting for radiation therapy in making that
combination, the Board implicitly addressed Elekta’s argument on reasonable expectation of success. See J.A. 35. On
this basis, we hold that the Board made a sufficient, implicit finding that a skilled artisan would have had a reasonable expectation of success in combining the prior art
references. See Merck, 808 F.3d at 836–37. “
The issue is not that the references were merely cited in IDS but that the allegedly non-analogous references were cited by the Examiner and the applicant either distinguished them on grounds unrelated to their alleged “non-analogousness” or did not contest the Examiner’s use of them. The fact is that the references ARE analogous and that conclusion is supported by (i.e., consistent with) the applicant’s silence on the matter during prosecution.
This is not complicated and it’s not even the least bit controversial UNLESS you are obsessed with the “magic bullet” (LOL) of “non-analogous” art which of course is a tendency of a certain subset of the patent bar who always gravitate toward trendy worthless arguments and run away from solutions that require actual work (like actually inventing something non-obvious and claiming it properly).
They made other arguments. Including that the PTAB did not assert a reasonable expectation of success. The CAFC found that omission not to be a problem. They just said it was implicit. Really? The burden is upon the USPTO, and the CAFC finds it was implicit? And you think that is fine?
Read the decision.
“The issue is not that the references were merely cited in IDS but that the allegedly non-analogous references were cited by the Examiner and the applicant either distinguished them on grounds unrelated to their alleged “non-analogousness” or did not contest the Examiner’s use of them. The fact is that the references ARE analogous and that conclusion is supported by (i.e., consistent with) the applicant’s silence on the matter during prosecution.”
I was curious, so I pulled the IPR’s docket. It’s a mix. The petitioner noted three imaging related references in the prosecution history – one in an IDS, one in a rejection, and one in the Examiners reasons for allowance in the NOA.
It seems impossible to disclaim a reference as non-analogous art. If it were not analogous, it would not be a reference in the first place. Abundance of caution or not: isn’t the inventor is assumed to be 1) aware of the reference if they cite the reference, and 2) a representative of PHOSITA? Wouldn’t that mean other PHOSITA would also have some occasion to have awareness of that reference?
Are inventors assumed to belong to the set of notional persons who define PHOSITA?
Ask your own attorney about the clause that n submitting references on an IDS that officially disclaims assertions [one way or another] as to such relevance.
Caveat: I have not caught up with this case yet as I am traveling, but I would not be all that surprised if the CAFC got this plainly wrong.
Damned if you cite references, and damned if you don’t.
Anything you say can and will be used against you.
As well as anything you don’t say, apparently.
Clearly the best derp practice is to argue that every reference in the world is non-analogous derp. Also never provide any references derp because an Examiner might cite one of them against you. Also never describe the invention derp, not even in the claims, because that’s the derp first thing Examiners look at when they try to invalidate you derp.
We have no duty of candor derp in Europe derp but that doesn’t stop me derp from insulting US practitioners derp.
Giving the patent prosecution crowd the “derp” term was a mistake. Prove me wrong.
No worse than the usual suspects using that term.
(sips coffee)
Prove me wrong.
>Specifically, as explained above, during prosecution, the patentee notably did not argue that [other] prior art references directed to imaging devices were not relevant art.
Hmm, I might have to rethink things a bit if there is going to be a broad waiver rule (i.e., not even limited to the specific references in the rejection). My traditional concerns were avoiding inequitable conduct, not creating unnecessary estoppel, and cost efficiency (of course).
The question going forward is whether one can sidestep this decision via more boilerplate? Or will they’ll require specific arguments/analysis??
On further reflection, the waiver here is even wider; it extends to art not of-record in the file history. That is, to an entire category of uncited art.
The strange thing is that the nonanalogous art test is so generous that the Board didn’t even need to go here. They wanted the broad waiver rule for some reason.
This is another idiotic decision by Reyna – with clueless Stoll and Stark agreeing
Yep.
This case could be seen as incentivize deciding not to disclose references deemed to be potentially non-analogous out of fear of an implied admission. But intentional non-disclosure could later then he argued to be inequitable conduct. Not to mention weaken the strength of the patent.
“Why would I fulfill my duty of disclosure if that could hurt me?” Kind of an odd question
This case suggests that an applicant’s abundance of caution in citing references can be used to show motivation to combine. How is that even sensible? Obviousness is supposed to be assessed as of the effective filing date (or the time of the invention for pre-AIA).
Time to eliminate the duty of disclosure. I was hopeful that it would have been eliminated once we provided for post-grant proceedings similar to European oppositions, and with no time limit for filing in the case of patents and printed publications.
Not sure that this case “suggests” what you say it does, Mom. A quick read through the Decision suggests to me that it was put to Applicant, from the get go, that there was ample motivation to combine the disparate references but that Applicant omitted to make in reply the “analogous” point now relied upon.
What this case therefore suggests to me is that it is advisable to make your full case at the outset. If you come out belatedly with the argument that you come to rely on to win the case, you might find that the court isn’t impressed by it one bit.
I see that the EPO granted family member EP-B- 1680023 only after protracted correspondence with the Applicant, but the EP claims at first glance look similar in scope. And nobody opposed them.
I suggest you read the case. Applicant advanced other arguments which were dismissed, including that no “reasonable expectation of success” was shown. No problem for the CAFC, it can be implicitly shown. Cool, no?
“These and other of Elekta’s similar arguments also
were made in connection with whether a skilled artisan
would have been motivated to combine the prior art. In
these circumstances, the Board made no error in addressing the issues of motivation to combine and reasonable expectation of success in the same blended manner that
Elekta chose to present those very issues.
In finding that “persons of ordinary skill in the applicable art would have readily understood the advantages” of
Grady and would not have been dissuaded by the “difficulty
in accommodating heavy linacs” or concerns related to “precision” in targeting for radiation therapy in making that
combination, the Board implicitly addressed Elekta’s argument on reasonable expectation of success. See J.A. 35. On
this basis, we hold that the Board made a sufficient, implicit finding that a skilled artisan would have had a reasonable expectation of success in combining the prior art references. See Merck, 808 F.3d at 836–37.”
And, the motivation came, in part, from the IDS listing the references.
“The Board supported this conclusion by reviewing “the prosecution of the ’648 patent,
[which demonstrated that] patents directed to imaging devices were cited, and were not distinguished based on an
argument that imaging devices were not relevant art.” J.A.
32. In addition, the Board framed the pertinent field as one
that “includes the engineering design of sturdy mechanical
apparatus[es] capable of rotationally manipulating heavy
devices in three dimensions oriented in a variety of approach angles with high geometrical accuracy, in the context of the radiation imaging and radiation therapy
environment.” ”
You have no duty of candor in Europe, if I recall correctly. You rely on the opposition procedure to flush out the art. And challengers only have 9 months to do so. It should be the same here, especially now that the CAFC is approving the using of an IDS listing to support an obviousness rejection.
Mom, I read your stuff but still it doesn’t persuade me. If the Applicant chooses NOT to put it to the PTO Examiner, in response to the objection to patentability over the prior art that imaging device prior art is not analogous, not relevant, then isn’t the PTO justified in proceeding on the basis that Applicant is accepting that the citation of imaging device prior art is legitimate. How does it go: what is not denied is admitted? Isn’t that a sort of Golden Thread in your jurisprudence? Or something like that. How can it reasonably be otherwise, if the system is to operate in an orderly way?
“How does it go: what is not denied is admitted? Isn’t that a sort of Golden Thread in your jurisprudence?”
Meh, not really.
Granted, still en route, so have not yet read the case, but most all responses have language to the effect of, “for at least these reasons” during prosecution.
As the burden is on the patent office, even one flaw in their position suffices, and — as others have noted — best practices in prosecution drives to NOT creating prosecution history.
That being said, your better practitioners do not follow this mantra blindly. I have had plenty of occasions in which a voluminous response detailing out MANY errors across a spectrum of degrees and kinds yields a next action allowance (as Examinersin the US are required to address ALL counterpoints presented in their next action if they want to maintain their position).
Of course, on the occasions that merit such rigor, volume is not to be confused with fluff, and each item presented is legitimate.
anon, I appreciate the efforts you make to enlighten me but for my part I find Malcolm’s 8.1.1 clear, Mom’s reply at 8.1.1.1 not, and yours here also not.
Never mind. It will have to do. My difficulties arise simply because I am not (and never will be) immersed in the subtleties and nuances of US practice and the governing case law. But the Patently-O blog and its threads are often quite illuminating.
You say that the drive is to refrain from creating prosecution history. But, here, the failure to deny that the art was analogous itself created prosecution history, or not?
For someone who insists on voicing their opinion on this US Patent law blog, the excuse that you “never will be” attempting to understand the nuance of US Patent law is more than a little disgusting.
Your opinion not only lacks merit — more likely than not it will be UNhelpful.
Perhaps my answer was too nuanced for you.
If we are going to assume that what is not argued is waived, then the Examiner’s failure to argue that there IS a reasonable expectation of success is an admission that there is not. But, no worries, the Federal Circuit said that was implicit.
“Time to eliminate the duty of disclosure.”
Long past time.
I am quite fine with the duty to disclose, and (assuming the asserted errors at the moment), such action can – and does – happen along pretty much any prosecution item. It does not follow that all prosecution items need be constrained.
It is common practice today to include in the IDS every reference cited in a search report of the foreign applications, if not the search reports themselves, without any comment as to their relevance. I understand the objective is to “play safe” vis-a-vis the duty of candor. However, this is not safe at all if the lack of comment is equated to an admission by applicantthat the cited references belong to analogous arts and can be combined by the skilled person.
This suggests a very selective approach to IDS, i.e. citing only references which clearly belong to the field of endeavor of the claims.
“not safe at all if the lack of comment is equated to an admission by applicantthat the cited references belong to analogous arts and can be combined by the skilled person.”
This part of the decision was clear legal error, as NO such “presumption” should have taken place — regardless of what was said and more specifically what was not said.
As I noted above — and expressly stated by David John at post 10:
“The filing of an information disclosure statement shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability as defined in § 1.56(b).”
37 CFR 1.97(h)
As to whether this clear legal rises to the level of reversible error might take some additional context – each of the original prosecution, the IPR (in which it appears that the PTAB was NOT a neutral arbiter, but rather appears to have slipped into a role of ‘super examiner’), and of the present CAFC judgment (appears to be well cited, but those should be checked).
All in all, the CAFC decision is a bit sloppy, and could have avoided this mess by simply stating that other evidence (i.e., the expert witness) sufficed.