‘Nuf said
This morning, the Federal Circuit affirmed the PTO’s remand decision in In re Lee rejecting the claims as invalid for obviousness; the case had been argued just 14 days ago, on Jan 8. The court affirmed by a summary affirmance order, under Rule 36 … in other words, no opinion, just the word “Affirmed.”
In re Lee, in its prior trip to the Federal Circuit, gave the court a bit of a black eye: it was in Lee that the court opined that “[t]he ‘common knowledge and common sense’ on which the Board relied in rejecting Lee’s application are not the specialized knowledge and expertise contemplated by the Administrative Procedure Act. Conclusory statements such as those here provided do not fulfill the agency’s obligation.” 277 F.3d 1338, 1344 (Fed. Cir. 2002).
Compare KSR: “Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” 127 S. Ct. 1727, 1742-43.
Do you mean that in its prior trip to the Fed. Cir., the PTO got a black eye?
I don’t think you can view this as some sort of reversal of the original In re Lee decision, even considering the quote from KSR you provided, although I’m sure the blockheads running the PTO will.
All this decision seems to say (to me) is, “Well, yes PTO, you finally got it right.” But that doesn’t mean that the PTO, whether it be an examiner or the Board, can substitue fact finding with conclusory statements that something is “common sense.”
PTO fact findings must still be supported by substantial evidence.
Comment by JD — January 22, 2008 @ 10:09 am
“PTO fact findings must still be supported by substantial evidence.”
Agreed … any yet the issue remains, what evidentiary status do we give to an examiner’s statement that something would have been common sense to a phosita at the relevant time?
If we deny the statement any evidentiary weight, why bother having examiners with a technical background, and why bother routing applications to different art units?
The recently issued guidelines on examining for nonobviousness seem to me to be right on: “Office personnel fulfill the critical role of factfinder when resolving the Graham inquiries. … In certain circumstances, it may also be important to include explicit findings as to how a person of ordinary skill would have understood prior art teachings, or what a person of ordinary skill would have known or could have done. Factual findings made by Office personnel are the necessary underpinnings to establish obviousness.”
Equally important, the examiner’s express finding provides a sufficient basis for administrative review, doesn’t it? We know the reasoning, and we know the predicate findings on which it’s based.
So, perhaps I’m a blockhead. But KSR sends a pretty clear signal: the earlier panel opinion in In re Lee, much discussed in many KSR briefs at the Supreme Court, got it wrong.
Comment by Joe — January 22, 2008 @ 10:24 am
Anyone have a copy of the BPAI opinion for this latest go around by Lee? (not the 2002 version)
Comment by step back — January 22, 2008 @ 11:23 am
Joe,
Don’t think you’re a blockhead, but I’ll try to clarify.
And no offense, but I see a lot of commentary from people who don’t grind out prosecution day in and day out, as I do (unfortunately), and really aren’t in the habit, or practice, of responding to examiner’s Office Actions, and who truly don’t appreciate the nonsense that is flowing out of the PTO.
What I see a lot from examiners is this: Jones doesn’t disclose a strain gage as recited in claim 14, but strain gages are well known and therefore it would have been obvious, as a matter of common sense, to provide the device of Jones with a strain gage.
That’s nice, but a lot of examiners, and a lot of commenters (again, no offense, not talking about you in particular), seem to confuse the concept, and use, of common sense, with the requirement to provide substantial evidence.
In the example discussed above, I always demand evidence from the examiner that strain gages are known, and in particular known to those of ordinary skill in the pertinent art. Before the use of some feature or element can be “common sense” it has to be 1) known and 2) have some predictable use. You can’t conclude that it’s common sense to use an element for its 2) predictable use until you provide evidence of 1).
There’s also a very good reason to demand that the examiner provide the evidence: obviousness requires the consideration of the subject matter, including the prior art, as a whole. If you force the examiner to provide a reference, the reference may provide you with arguments against obviousness, e.g. teaching away, destroying/changing the operability of the refereneces, non-analogy, unpredictability, and my favorite, just down right silliness (i.e. no reasonable person would combine the references in the manner suggested by the examiner. Trust me, that one comes up all the time.)
I also get this in OA’s: Well, in response to applicant’s arguments, the examiner is one of ordinary skill in the art and to the examiner it would have been obvious.
Nice. But wrong.
Examiners are not PHOSITA. Yet about 99+% think they are. And there’s nobody over there in PTO management disabusing them of that notion.
You are correct, examiners are fact finders. Their job is to resolve (i.e. determine objectively) the level of ordinary skill. Not substitute their subjective opinion of what would have been obvious for a sound legal conclusion based upon objectively determined facts.
As for your question “what evidentiary status do we give to an examiner’s statement that something would have been common sense to a phosita at the relevant time,” I’ll give you another example. I’ve been in plenty of interviews with examiners where I hear, “Well, it would be common sense to do that” to which I’ll reply, “Why?” Usually what I get is DEAD SILENCE. I would submit to you that if the examiner can’t answer the very simple question, “But why would it be common sense to do it?” then their statement should get ZERO evidentiary value.
I read the KSR transcripts and was horrified at how utterly lame counsel for patentee was. When asked by the court, “What is this motivation thingamabob?” he could not answer. He truly didn’t know much about obviousness. The very simple answer to the question, “What is motivation?” is: Motivation is the answer to the question “Why would one of ordinary skill in the art do that?” and the ancillary question “Why would one of ordinary skill in the art pick/start out with this reference or these references?”
As somebody who responds to OA’s for a living, I can assure you that in the vast majority of rejections I see the answer to the question “Why would one of ordinary skill in the art combine these references?” is: Because if combined, the combination would “read on” the claim. Under the ‘Quality = Reject, Reject, Reject’ mentality that is running the Patent Office, that’s the only reason they need.
Just my $.02 of course.
Comment by JD — January 22, 2008 @ 11:56 am
JD,
Thanks for the very detailed comment. I appreciate it, and I’m sure others who stop by here appreciate it too.
The one thing, in all the reasonable observations you make, that stands out for me at the moment is this: I don’t think it’s a good idea to prohibit an examiner, or the Board, from finding something as a fact even though it isn’t reflected in a document exhibit at the examiner’s fingertips. There are many things that are true, and that are not written down anywhere in a readily accessible manner. It is a good check against arbitrariness to hire examiners with solid technological backgrounds and train them to cite to written evidence where its readily available, and to spell out the nature of their findings when the written evidence isn’t available. Put another way, there are applications that are correctly rejected for obviousness even when there is no written evidence from the time the invention was made that directly documents that obviousness. I don’t think it would be wise to sacrifice these meritorious rejections in a vain effort to bring the rate of erroneous denials down to zero.
Also, it’s true that I don’t prosecute patent applications. I never have, in fact. My exposure to them has been, first, as a Federal Circuit law clerk for two years, and then as a patent litigation lawyer for about four years. As a result, I bring a different perspective to the issues. (I think it’s a valid and helpful perspective, or I wouldn’t do any of this blogging stuff.) One challenge I have, I confess, is knowing what to do with what I perceive to be lots of examiner and PTO bashing, from folks who (by all appearances) prosecute applications for only the most groundbreaking, stunningly nonobvious inventions. (I’m not putting you in this camp, but rather just getting something off my chest.) The PTO gets it right thousands of times a day, rejecting applications for claims that are not valid under the patent laws and approving applications for claims that are valid. What I’m interested in is talking about how to make the whole process work better, structurally and systematically.
Joe
Comment by Joe — January 22, 2008 @ 1:44 pm
Joe,
I have to confess to some (okay, a lot of) examiner and PTO bashing. But they deserve a lot of it, especially when you read the 129 page Federal Register notice for the final continuation/claim examination rules that concludes: the 760,000+ application backlog and 32+ month pendency is entirely the fault of applicants and the patent bar. (I’m exaggerating. But not too much.)
Management deserves the lion’s share of the criticism. But those examiners that are ruthlessly gaming the production system and/or simply “following orders” in the “Quality = Reject, Reject, Reject” scheme of things deserve their fair share too.
I’ve had this debate with many examiners before, particularly with respect to Official Notice. And again, this goes back to the issue of examiners substituting “common sense” for fact finding. At the minimum, I expect the examiner to produce a reference, or combination of references, that at least arguably includes all of the elements I’m claiming. If the exact claimed relationships between the elements is not there, I’m okay with that, but let’s at least get all of the elements and then we can at least begin the discussion.
But what I get is exactly what I referenced earlier: the examiner admits that none of the references discloses some claimed element (e.g. a strain gage), but concludes that the element is “well known” (some are bold (foolish?) enough to take Official notice of such) and therefore “common sense” to use.
That’s what really gets me, the short circuiting of the analysis, a la, “it’s well known, therefore obvious to combine it as a matter of common sense.” I see that a lot. And I mean a lot.
“I don’t think it’s a good idea to prohibit an examiner, or the Board, from finding something as a fact even though it isn’t reflected in a document exhibit at the examiner’s fingertips.”
I have to disagree on this one. This is such a slippery slope that I don’t think we even want to tip toe to the edge. Any examiner who “finds” (i.e. merely states as a conclusion) that “widgets are well known devices used in examples” should be able to produce some evidence of such. If strain gages are so well known, then by goodness the examiner should be able to produce ONE reference. (I’m a little fixated on that app now, in case you couldn’t tell.)
One last thing, the use of “common sense” as a “reason” for modifying/combining references is to me, as somebody who prosecutes applications, the single greatest indicator of the weakness of the examiner’s rejection. Because all I have to do is ask, “But why? Why would one ordinary skill do what you suggest in your rejection?” Many times the examiner can’t answer that question, or the answer you get is: for the same reason the applicant did it. (Ah, thanks for admitting that the rejection is 100% hindsight. So much more effective than me arguing that it is.)
I would also submit that the APA, and the court’s decision in the Zurko case, prevents the examiner, or the Board, from finding something as a fact even though it isn’t reflected in a document exhibit at the examiner’s fingertips.
That’s a good thing. You’ll just have to trust me on that.
Comment by JD — January 22, 2008 @ 3:06 pm
“The PTO gets it right thousands of times a day, …”
Dear Professor,
Just by scribing that one line, you demonstrate to those of us out here who prosecute patent apps for a living that you never have prosecuted a case and don’t know what you’re talking about.
Let me explain why the exact opposite is true: the PTO gets it wrong 1,000 time a day.
1. A long complex application comes in.
2. Examiner doesn’t have time to read the thing.
3. Examiner peruses the claims and picks out a few words that he thinks are key.
4. Examiner types in the key words into search computer. Search computer tosses back a bunch of matches.
5. Examiner picks those that look most promising and tosses them at Applicant: Here. you go figure out what these say. (I have no idea.) Your invention is obvious in view of A combined with B and cross modulated with C.
1 out of 10 times the Examiner gets lucky and the references are indeed relevant.
9 out of 10 times the primary reference has nothing to do with the invention but it has a couple of words that by happenstance match with those used in your claims. Now you as the patent prosecutor have to decipher someone else’s mumbo jumbo and explain to the examiner why it doesn’t apply.
When the examiner gets your response, he doesn’t care what you said. He just issues a final rejection 9 out of 10 times because his clock is running out. He types: arguments fully considered but not persuasive. Now give me my disposition points. Give me an RCE.
That’s how the PTO gets it wrong 1000 times a day.
(Granted there are a few -very few- examiners who work hard and do their job right. But most of them just grind out boiler plate rejections without having given the case a thorough analysis. They simply don’t have time to do so. It’s nobody’s fault. The system sucks and gets it wrong 1000’s of times per day.)
Comment by step back — January 22, 2008 @ 3:24 pm
I think it pretty plain that the interests are lined up in a way that no minds will be changed:
1. Patent prosecutors, influenced no doubt by the availability heuristic, only remember the examiners who handed them a stupid office action. They think it is the greatest injustice in the world that they need to file a continuation or appeal for $20,000 to get the supposed travesty reversed.
2. Defense litigators, also influenced by the availability heuristic no doubt, only see the ridiculous patents that the examiner failed to catch the first time around. They think it is the greatest injustice in the world that a client has to shell out the $5 million cost of defense to get rid of that patent.
3. On the substantive issue at hand, which is whether PTO examiners are required to find a published reference for each and every last element and an explicit motivation to combine, no matter how plain and a matter of common sense. There plainly is room for reasonable debate:
a. On the one hand, it is true that if you really, really scour the Earth, its amazing what you can find in published references. So if you literally can’t find it anywhere after devoting millions of dollars to search, its a good bet that its not known.
b. On the other hand, if you are forcing examiners to spend one hour tracking down a published reference for each elementary element under the sun, those hours will quickly add up. It doesn’t take a genius to figure out that this is a great harassment tactic.
4. Can examiners abuse their power if we didn’t hold them to the express reference test? Sure. But applicants can also abuse the express reference requirement to gain undeserved patents by wearing down examiners through demanding ever more detail. And between the possibility of examiner abuse and applicant abuse, I would be inclined to favor examiners who are, after all, supposed to be serving the public interest. If anything, the PTO had an entirely misplaced incentive to allow patents since it got more funding, and for examiners an allowance got rid of a case far more quickly than a rejection did.
Comment by TJ — January 23, 2008 @ 1:53 am
TJ,
Many thanks. You’ve captured it elegantly!
Best,
Joe
Comment by Joe — January 23, 2008 @ 5:38 am
1. “They think it is the greatest injustice in the world that they need to file a continuation or appeal for $20,000 to get the supposed travesty reversed.”
No, TJ, we don’t thank that’s the greatest injustice. What we think is an injustice is when we spend $20k on an appeal, and the examiner pulls the old, “Okay, you got me, my rejection really is the piece of crap you’ve been telling me it is for 2 years, so I’m re-opening prosecution, and here you go, here’s a new rejection (that’s even worse than the one you spent $20K appealing).”
That’s an injustice. And it happens ALL THE TIME.
3. “On the substantive issue at hand, which is whether PTO examiners are required to find a published reference for each and every last element and an explicit motivation to combine, no matter how plain and a matter of common sense. There plainly is room for reasonable debate”
No debate really. Explicit motivation to combine is not required. Never was. But finding a reference for each and every element? No debate there either. Examiners are fact finders. “Finding” facts with no evidentiary support is not allowed. See the APA.
4.”Can examiners abuse their power if we didn’t hold them to the express reference test? Sure. But applicants can also abuse the express reference requirement to gain undeserved patents by wearing down examiners through demanding ever more detail. And between the possibility of examiner abuse and applicant abuse, I would be inclined to favor examiners who are, after all, supposed to be serving the public interest. If anything, the PTO had an entirely misplaced incentive to allow patents since it got more funding, and for examiners an allowance got rid of a case far more quickly than a rejection did.”
The flaw with your argument on this point is that examiners are REWARDED for abusing the process by the production system that is in place. Combine that with the utter incompetence of the PTO management, and their entrenched refusal to follow the law and obey their own published guidelines (e.g. the MPEP) and you get what we have now: 760,000+ case backlog and 32+ month pendency.
If I had a nickel for every post I’ve read from some anonymous examiner or PTO management hack that says, “If you think the rejection is improper, file a petition or appeal.”
Yeah, great. Advising my clients to take their cash, burn it, and warm their hands over the flames is better than that.
There is no recourse. The PTO can waste the applicant’s entire 20 year term with re-opened prosecution and petition grants that do nothing more than send the application back to the same examiner who has refused to follow the law throughout the entire prosecution.
And they know it.
Comment by JD — January 23, 2008 @ 5:55 am
Just popping in here for a moment to reinforce JD’s most recent point #1. I’ve got an application in hand that has been appealed (multiple times) and prosecution reopened (multiple times). I’d just like to point out that my client doesn’t particularly enjoy this, but they also have an invention that’s patentable and important to their business, so they’re not about to stop throwing money at these ridiculous rejections (the profits currently being greater than the losses).
And as to Joe’s @ comment 5: if something is sufficiently known and true that an examiner is going to rely on that fact as a phosita to make a rejection, you can bet that it’s on paper somewhere and they can find it. If they don’t assert it, they either haven’t looked (in which case you, as the patent prosecutor/stand-in for your client, better make them find it) or it doesn’t exist (in which case the rejection stinks). Patent litigators know that essentially everything important and relevant is on paper somewhere, and the examiner could find it, because the first thing we do in litigation is file a reexam and invalidate the claims with the art that the examiner missed; this art was often found in the first hour or two of our search.
Comment by Bryan — January 23, 2008 @ 8:35 am
Joe,
Do you have the BPAI decision? I’d be interested in comparing the former and latter decisions, but can’t find the result anywhere.
Comment by Bryan — January 23, 2008 @ 8:45 am
Bryan,
I don’t, actually. And I would like it too, for the same reason.
I’ll see if I can get a hold of it.
Best,
Joe
Comment by Joe — January 23, 2008 @ 8:50 am
A couple of notes here:
1. As to In re Lee, maybe if we locate Richard Stern he will be kind enough to share a copy of the BPAI decision with us (if his client allows him to).
2. If I were Stern (I’m not), I would probably have filed a continuation and submitted new evidence as to non-obviousness and then re-appealed the case based on such new evidence.
3. We are all speculating here as to whether KSR formed the basis of the new BPAI affirmation of the examiner’s rejection in In re Lee. Probably it did. And probably KSR came down (4/30/07) after Lee’s attorneys had filed their appeal brief. That raises a number of due process questions, i.e. did Lee get fair notice of the new ground of rejection based on KSR and an opportunity to reply? Same question applies to all appeals where KSR is cited for first time in the BPAI’s decision.
We live in interesting times.
Comment by step back — January 23, 2008 @ 9:31 am
[…] affirmed the Board’s decision yesterday, as I noted. Filed under: Patent Permalink | Trackback URL| […]
Pingback by The Fire of Genius » The Board’s Lee decision(s) — January 23, 2008 @ 11:58 am
Thanks, Joe, for getting the Lee decision. I don’t see a reference to KSR in there, do you? I did not that the Examiner apparently took the Fed Circuit’s criticism to heart and added another reference in response to the first Lee decision.
Your post made me curious: What have BPAI decisions looked like that cited both KSR and In re Lee? Westlaw shows 6 results, and this seems to be a common theme:
”
*4 Rejections on obviousness grounds cannot be sustained by mere conclusory statements. KSR, 27 S.Ct. at 1741 (citing Kahn, 441 F.3d 977, 988).
An obviousness analysis commences with a review and consideration of all the pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision on appeal, the Board must necessarily weigh all of the evidence and argument.†Oetiker, 977 F.2d at 1445. “[T]he Board must not only assure that the requisite findings are made, based on evidence of record, but must also explain the reasoning by which the findings are deemed to support the agency’s conclusion.†In re Lee , 277 F.3d 1338, 1344 (Fed. Cir. 2002).”"
I might have to file that one away for future use.
Comment by Bryan — January 23, 2008 @ 1:13 pm
I agree with Bryan. The Board said to the extent the original Lee decision (277 F. 3d 1338) was an admonishment to the examiner, the examiner has done what needed to be done.
Seems to confirm, or actually reaffirm, the original Lee decision, not reverse it.
IMHO of course.
Comment by JD — January 23, 2008 @ 1:21 pm
Agreed -
Joe
Comment by Joe — January 23, 2008 @ 2:58 pm