Comments on: Benefit of the doubt? http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/ Academic commentary about patent law, i.p. law, creativity, and more Sun, 20 Jul 2008 17:18:27 +0000 http://wordpress.org/?v=2.5 By: The Fire of Genius » “Benefit of the Doubt?” - Redux http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/#comment-118584 The Fire of Genius » “Benefit of the Doubt?” - Redux Thu, 17 Jan 2008 15:23:55 +0000 http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/#comment-118584 [...] I first posted the below item in November 2006.  I’m reposting it now in response to a comment made to a recent post. [...] […] I first posted the below item in November 2006.  I’m reposting it now in response to a comment made to a recent post. […]

]]> By: Joe http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/#comment-9555 Joe Tue, 21 Nov 2006 15:16:14 +0000 http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/#comment-9555 Anon, You make some interesting policy arguments. Even if we assume that the text of sections 102 and 103 points to PTO burden on 102 and applicant burden on 103, we should ask: why would Congress allocate the burdens <i>that</i> way? Having pondered it a bit, I'm not sure I agree that allocating the burdens the way the text appears to rises to the level of absurdity or self-contradiction. For example, consider that an invalidating 102 reference can come from any art domain at all; it need not be pertinent to the art of the claimed invention under review. Perhaps it is reasonable to conclude that the PTO, which has expertise in searching art across many domains, is usually better positioned than the applicant to find anticipatory art in its vast library of information. Section 103 references, by contrast, must come from the art that is pertinent to the claimed invention. In that different context, one might reasonably conclude, the applicant is better positioned to explain why those most pertinent references would not have made the claimed invention obvious. Thanks, Joe Anon,

You make some interesting policy arguments. Even if we assume that the text of sections 102 and 103 points to PTO burden on 102 and applicant burden on 103, we should ask: why would Congress allocate the burdens that way?

Having pondered it a bit, I’m not sure I agree that allocating the burdens the way the text appears to rises to the level of absurdity or self-contradiction.

For example, consider that an invalidating 102 reference can come from any art domain at all; it need not be pertinent to the art of the claimed invention under review. Perhaps it is reasonable to conclude that the PTO, which has expertise in searching art across many domains, is usually better positioned than the applicant to find anticipatory art in its vast library of information. Section 103 references, by contrast, must come from the art that is pertinent to the claimed invention. In that different context, one might reasonably conclude, the applicant is better positioned to explain why those most pertinent references would not have made the claimed invention obvious.

Thanks,

Joe

]]> By: anon http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/#comment-9398 anon Mon, 20 Nov 2006 19:03:14 +0000 http://www.thefireofgenius.com/2006/11/18/benefit-of-the-doubt/#comment-9398 The problem is that once you accept that 102 places the burden on the examiner, placing the opposite burden in a 103 context leaves the statute self-contradictory. 103 is a more demanding standard for the applicant to satisfy. To illustrate, suppose there is no evidence in the record at all -- thus, apparently, the examiner has failed to satisfy his 102 burden, but the applicant has failed to satisfy his 103 burden, and I suppose the net result is a rejection. This makes the examiner's 102 burden entirely meaningless because every failed 102 rejection can be encompassed in a 103 rejection. The problem is that once you accept that 102 places the burden on the examiner, placing the opposite burden in a 103 context leaves the statute self-contradictory. 103 is a more demanding standard for the applicant to satisfy. To illustrate, suppose there is no evidence in the record at all — thus, apparently, the examiner has failed to satisfy his 102 burden, but the applicant has failed to satisfy his 103 burden, and I suppose the net result is a rejection. This makes the examiner’s 102 burden entirely meaningless because every failed 102 rejection can be encompassed in a 103 rejection.

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