NonObviousness: Analogous Arts Test Still Strong

Anderson v. Pella (Fed. Cir. 2008)(non-precedential)

Anderson sued Pella and WL Gore for infringement of its window screen patent. Apparently, the patented screen allows ventilation and blocks insects, but is easier to see through than traditional screens. The claims focus on the diameter and strength of the screen wires and as well as on the screen's "transmittance" and "reflectance" properties.

Prior to KSR, the district court had rejected the defendant's summary judgment motions on obviousness – finding that the prior art references lacked a motivation to combine. After KSR, the district court reversed course – this time granting summary judgment of invalidity based on obviousness of the claimed screen. In its analysis, the district court asked and answered the following question: "would an insect screen manufacturer of ordinary skill have found it obvious to use the [prior art] screening material, decrease its reflectance value, bond it, and place it in a window frame? The answer, plain and simple is 'Yes.'" According to the lower court, the prior art mesh was the "heart" of the claimed invention, and it was a "simple act of common sense" to slightly modify the mesh and apply it to a window. Although secondary factors of nonobviousness were shown, the lower court found they were not enough to rebut a strong showing of obviousness.

Analogous Arts: On appeal, the Federal Circuit vacated – finding material facts that prevent summary judgment of obviousness. In particular, the appellate panel found that the prior art mesh might not count as nonobviousness type prior art because it "outside the scope and content of the prior art." The court based its decision on three issues: (1) the prior mesh was not in the same "insect screen manufacturing field"; (2) there was some evidence that the prior mesh would not be useable for an insect screen (teaching away); and (3) the PTO specifically considered the reference before granting the patent and should be given some deference.

Upon our review of the record in the light most favorable to Andersen, we find support adequate to overcome summary judgment on the question of whether the TWP mesh was outside the scope and content of the prior art. Andersen put forth evidence in the record that, one, the TWP mesh was not part of the insect screen manufacturing field, and, two, an insect screen manufacturer would have read the prior art to teach away from using a mesh with the characteristics possessed by the TWP mesh. This field-of-invention and teaching-away evidence, combined with the deference owed to the PTO's issuance of this patent after reviewing the same prior art references that form the basis of this obviousness challenge, raises a genuine issue of material fact as to whether an ordinarily skilled insect screen designer would have found the combination of the TWP mesh with the other prior art references obvious.

Teaching away and price feasibility: One of the 'teaching away' arguments accepted by the Federal Circuit was that of price infeasibility. Anderson had argued that the prior mesh would not have been considered by a designer because it was quite "extraordinarily expensive." In its holding, the appellate panel gave backing to the notion that a high price would discourage consideration of a potential prior art reference.

As to the third characteristic, pricing, Andersen's expert, Laurence Armstrong, stated that the TWP mesh was "extraordinarily expensive in comparison with traditional insect screen material, costing about $75.00 per square foot." It is not unreasonable to suggest that a significant difference in cost could discourage an insect screen designer from using the more expensive mesh. . . . On the whole, we think, the record creates a genuine issue of material fact as to whether the durability, transparency, and pricing of the TWP mesh would have discouraged an ordinarily skilled artisan from incorporating the mesh into an insect screen.

Summary judgment vacated.

Comments

[pds]

"And notice here that even after all this there is no statement in the MPEP about considering the 'subject matter of the prior art as a whole', there is a statement about considering the 'prior art as a whole, i.e. including statements that teach away'."

A distinction without a difference.

Moreover, you haven't explained why this distinction makes any difference in your arguments.

As for your "teaching away," let me repeat (yet again), my comments to you were not directed to you "teaching away" arguments but as to your "as a whole" comments.

[JohnDarling]

"The pro-patent peddlers always love to stick their heads in the sand and act dumb as rocks. Why? Because that is what they do for a living"

Malcolm, can you tell us what you do for a living. Seriously. Do you represent accused infringers? Do you prosecute patent applications? Do you represent patentees in asserting their patents? What is it that you do exactly?

[JohnDarling]

"A distinction without a difference.

Moreover, you haven't explained why this distinction makes any difference in your arguments."

pds, you're wasting your time. I cited 6k a BPAI decision that completely blew away his whole "adequate traversal of Official Notice" nonsense and he came back and said, "Well, the Board said it wasn't the applicant's challenge that was adequate, it was the act of challenging that was adequate."

LOL

[Malcolm Mooney]

"A distinction without a difference."

Actually, pds, that "distinction without a difference" is what this pointless argument between you, JD and e6K is all about. JD got loose with his language, he got his chops busted, and now you struggle to prop him up. To what end?

Cracks me up that you three seem to love wrestling with each other over such pointless garbage. Let me know when you need more vegetable oil.

[Malcolm Mooney]

"What is it that you do exactly?"

I collect paychecks and watch the economy implode while doing my best not to contribute to the shxtpile of worthless words on paper.

[SF]

pds:

How can a PHOSITA ask himself/herself whether a secondary reference’s mesh C would be expensive to cover an opening A of a door B in the primary reference without contemplating the secondary reference’s mesh C covering the opening A of the door B in the primary reference?

How can a PHOSITA ask himself/herself whether a secondary reference’s mesh C would be durabble enough to cover an opening A of a door B in the primary reference without contemplating the secondary reference’s mesh C covering the opening A of the door B in the primary reference?

Now, if there was reason to believe that covering an opening with mesh was somehow an unpredictable art (and thus you could contemplate it without knowing whether it would work), maybe you'd have something, as I conceded above.

[breadcrumbs]

"...while doing my best not to contribute to the shxtpile of worthless words on paper."

Sorry Malcolm, you fail. No breadcrumbs for you.

[SM]

John Darling; could I trouble you to provide again the BPAI "traversal of Office Notice" decision you reference above.

I dealing w/such in a current appeal.

Thank you.

[MaxDrei]

Mr Darling I realise you are waiting for an exposition on how EPO PSA would be applied to this case. I am sorry to disappoint you. To do that would involve my first reading the app, the relevant art and all the evidence adduced, thoroughly enough to see off any criticisms you come back with, when I publish. You're not paying for my time and, frankly, I have more rewarding things to do today. Anyway, out of all the readers of this blog, it's only you who cares about PSA, isn't it?

[JohnDarling]

Max,

I wasn't asking for your analysis of this particular case. But as you've indicated that answering the question "obvious for what?" requires reviewing all the evidence adduced, that's all I need to know. I'm still not sure how that differs all that much from our obviousness analysis, but I have found EPO examiners much more willing to consider evidence/arguments of non-obviousness than USPTO examiners.

Of course I'm interested in PSA. I have plenty of cases pending in the EPO.

[JohnDarling]

SM,

See the paragraph briding pages 7-8 in the November 29, 2005 BPAI decision in U.S. Application 09/077,337.

[MaxDrei]

Thanks for that, Mr Darling. Good to know you're doing OK at the EPO. In that case, you will already know about "obvious for what". See in particular Agrevo T_0939/92, downloadable from the EPO website under Caselaw of the Boards of Appeal. To find the "what" out, I just need the app as filed and the "D1" prior art "starting point" reference. But to opine on the obviousness of the claim here in suit, I would want to assimilate first all the evidence. In the present case as I understand it, the technical field is insect screen mesh and so the PSA D1 would be the most promising springboard from which to start out, on the date of the claim, with no hindsight knowledge of the claimed solution, on the quest for the performance enhancement (greater transparency, wasn't it?) taught by the app as filed. If the D1 screen is somewhat opaque, what mods would the PHOSITA have made to D1 to make it more transparent? (OR: if the app says, ours is more robust, what was the state of the art back then telling PHOSITA would make the known screen robuster.) It is not that PSA eliminates the need for evidence, or even reduces the volume of evidence. It is just that it defines a framework in which the obviousness argument shall proceed in efficient, scientific and seemly fashion. Queensbury Rules produces a result, every time. Frankly, the EPO usually sees through such parameter claims. My suspicion is that this one would never have got to grant in the EPO. Remember what happened in the EPO to the Teleflex app in KSR. First EPO action issued, and we never again heard from the Applicant. End of story.

[smashmouth football]

"A helpful insight into the CAFC's error is right here.

"Recognizing that the Supreme Court in KSR cautioned us to not be too rigid in applying the TSM test, we may still consider evidence of teachings to combine (and, presumably, not to combine) because, according to the Supreme Court, they “capture[ ] a helpful insight” into the obviousness inquiry."

The "presumably not to combine" part is completely made up off the cuff and for no reason. The part about cost is a reason not to combine but it is not a teaching away, and those are the things which need to be considered in determining See Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 2005) (“[W]hether [the prior art] teaches toward or away from the claimed invention [[which is]] also is a determination of fact.”). And that is at least one place where this analysis goes all to heck.

Anyway, back to my smacking down such ridiculousness irl.

Posted by: 6 | Nov 20, 2008 at 03:14 PM"

With all due respect, didn't SCOTUS recognize the legitimacy of consideration of evidence of teachings NOT to combine in United States v. Adams, 383 U.S. 39 (1966), decided the same day as its more famous counterpart, Graham, 383 U.S. 1? Look especially at the discussion at 383 U.S. 351-52, and the following quote:

"This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness."

Id. at 352.

[Renegade Pro se]

Besides being an inventor, I happen to be a 35 year house carpenter. Anderson and Pella both make the best windows in the U.S.-hands down- I have a number of both brands in my contemporary A-frame. The next sunny day, I'm going to put both screens up to the sunlite and see what all the hoopla is about. Not today though-blowinga$$ snow and colder than a witch's tattoo out there. Got my patent and the biggest tool builder in the U.S. is currently evaluatiog for licensing. Time to put some more firewood in the woodstove.

[6]

""This is not to say that one who merely finds new uses for old inventions by shutting his eyes to their prior disadvantages thereby discovers a patentable innovation. We do say, however, that known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness.""

Again, that is a reason not to combine. That might be considered under the OBVIOUSNESS determination, which as we all know now involves a bunch of mess and common sense. Of course you must consider the reasons not to combine in determining if the combination was obvious, but the determination of whether common sense etc. leads towards obviousness and "[W]hether [the prior art] teaches toward or away from the claimed invention [[which is]] also is a determination of fact." are two separate things. They are two separate factors to consider in the overall consideration of obviousness. In fact, "[W]hether [the prior art] teaches toward or away from the claimed invention [[which is]] also is a determination of fact." is under the part of the analysis of what the scope and content of the prior art is, just as the CAFC noted.

In any event, it is hardly a huge deal.

[SM]

Thank you for the help, John Darling.

[breadcrumbs]

"In any event, it is hardly a huge deal."

Another way that 6 says "OK, you got me, I was wrong again".

[6]

Um no, I was referring to the fact that they got it wrong on some points and that not being a big deal since they got it right on some other points. This being because the decision to send it back to the lower court will not be changed.

That doesn't excuse them getting it wrong in part of their analysis. Funniest part about it is that they start off on the points they get wrong so well how they manage to go horribly awry I can't figure out.

[bubba]

It is a given that “known disadvantages in old devices which would naturally discourage the search for new inventions may be taken into account in determining obviousness”. United States v. Adams, 383 U.S. 39, 52 (1966). Adams elaborates that known disadvantages can discourage a person reasonably skilled in the prior art from investigating a combination of well known elements, and can include disadvantages relating to practicality, safety, and/or operability. Id. at 50-52.

Generally, can a (KSR-mandated common sensical) factual analysis of practicality not reasonably include evidence related to durability, required physical characteristics (e.g., transparency), and/or pricing?

If not, why not?

If so, is not most of this thread simply a "great minds can differ" situation, where some, like the district court, have "found that the teaching toward evidence outweighed the teaching-away evidence", and some, like the Federal Circuit panel, the contrary?

[MaxDrei]

Bubba my problem is with the line "It it's expensive, then it ain't obvious". Imagine any new polymeric material coming on the market. At first it's going to be expensive. But its (future) applicability to cheap applications might me immediately...wait for it...obvious.

[Erez Gur]

Bubba, less than "great minds differ" the differences in opinion are ideological.

For inventors, "obviousness" is a factual question: would the guy sitting at the bench come up a given solution.

Since there is no test for real obviousness, "obviousness" in the patent world is based on vague legal definitions based on various fallacies, e.g., Inventors are aware of and understand the significance of all publications in existence.

People who are anti-patent, for example because they believe patents retard technology, are ideologically or financially committed to see everything that is not novel as obvious.

People who are pro-patent, for example because they believe patents advance technology, are ideologically or financially committed to see everything that is not novel as not obvious.

The case of the screen door is a good example.

For an anti-patent ideologue, any see-through material with pores less than 3 mm diameter is suitable as an antifly screen and is therefore obvious to try. As a result, such people believe there is no patentable invention in the field of fly screens.

For a pro-patent ideologue, any antifly screen made of a material not already used is not obvious, because if it was obvious it would already exist.

I personally tend to be pro-patent because that is the result I want to achieve.

Since bringing an idea to market is much more than just writing a patent application, it should be relatively easy to receive a patent to allow an innovator (even of a fly screen) to develop his or her idea.

As long as the claims of the patent are novel, no damage can be done to society.

In this context, there is an uncomfortable feeling that Pella suddenly had an urge to produce screens using the Andersen technology only after Andersen proved how great these screens were. Why didn't Pella continue the old screens they were making before?

[Malcolm Mooney]

Erez "For an anti-patent ideologue, any see-through material with pores less than 3 mm diameter is suitable as an antifly screen and is therefore obvious to try. As a result, such people believe there is no patentable invention in the field of fly screens."

And there we have it again: the Big Lie. Can you get your head farther down in the sand, Erez? We're not convinced that you can.

There are undoubtedly many patentable inventions in the field of fly screens. There is possibly even a patentable invention lurking in the specification of the patent at issue in this case.

But the law == the law that we all agree on -- requires that the trier of fact focus on the invention as CLAIMED. And the claimed invention is obvious. The arguments about "durability" and "expense" are irrelevant as a matter of law because neither the specification nor the claims require any such advantage for the claimed screen. On the contrary, the specification quite plainly contemplates using the insect screen in areas where durability is not an issue. Because any obvious embodiment falling within the claims renders the claims obvious, then the obviousness of creating an expensive, see-through but not particularly durable fly screen using elements in the prior art is easily established. There are no relevant secondary considerations.

"there is an uncomfortable feeling that Pella suddenly had an urge to produce screens using the Andersen technology only after Andersen proved how great these screens were."

So what? It's just too bad that Anderson didn't hire a better patent attorney to protect their alleged invention.

[MaxDrei]

"As long as the claims of the patent are novel, no damage can be done to society."

Mr Gur, you cannot be serious. Pro-patent is all very well, but that's just weird. Oh, but just a minute, I think I've rumbled you. You're just being provocative, right.

[another xaminer]

SM & JD,

Not trying to restart the official notice war again, or even disagree with your interpretations, but I do not think that what JD cites is really saying what he wants it to say.

The board 1st prefaced their decision by reiterating that official notice "is limited to 'notice of facts beyond the record which, while not generally notorious, are capable of such instantaneous and unquestionable demonstration as to defy dispute.'" They then continued by saying "the appellants responded to the examiner's official notice argument by stating that the examiner has not supported the official notice with prior art rather than by stating that the noticed facts are not well known" and that the "the appellants' challenge to the official notice indicates that the facts officially noticed are not capable of such instantaneous and unquestionable demonstration as to defy dispute. Consequently, the examiner's official notice is improper."

This last sentence, taken in context of the whole, appears to more indicate that the board was saying the "taking" of official notice was "improper" (because the items were not capable of easy demonstration) rather than supporting the position that the applicant properly challenged the taking of official notice. Maybe a fine distinction, but there does appear to be one there.
(For what it's worth, I do agree with the board here that what the examiner took notice of was something that appears to be improper to be taking notice of. Taking official notice is supposed to be for things that are not "esoteric" and that one of ordinary skill would readily know to be true. These items do not appear to satisfy that criteria.)

The issues of "was the notice properly taken?" and "was the notice properly challenged?" are two different issues. Just like the issues of "was a prima facie case of obviousness made?" and "was that prima facie case properly rebutted?". If the 1st one fails, the 2nd question is never addressed. Here, it appears that the board never got by the 1st question, so they did not need to address the question of "did the appellant properly challenge the taking of official notice".

[6]

"Generally, can a (KSR-mandated common sensical) factual analysis of practicality not reasonably include evidence related to durability, required physical characteristics (e.g., transparency), and/or pricing?

If not, why not?"

Of course it can. Pricing gets about this | | much consideration, and that consideration is not directed to whether the prior art taught toward or away, it is directed to the overall common sense obviousness. Under a common sense analysis you can include the alignment of the stars if the analyst so choose to let you.

"As long as the claims of the patent are novel, no damage can be done to society."

Tell that to the other manufacturer being sued for infringment of a claim that has only mickey mouse differences from the nearest prior art. Sure, taking from the public that which is theirs is no problem, right?

For a quick little story I'll tell you about the time I had an application which claimed the basis of the art to which it pertained in the independent. Anyone of any stature in that art knew all about the founding works on which they were building. It just so happened a man came here to the office and gave a presentation on the very works which I dug up as prior art from the interwebz. In any event, after having dug down to the deps I eventually came upon some that were allowable so far as I could tell. The claims involved using some specific chemicals for a specific purpose. There were a few chemicals well known in that art that were used for the same purpose. In any event, after the long presentation I asked the guy for all the examples of chemicals which he could think of to use for that purpose. He quickly rattled off all the commonly used ones and I thanked him for his time. Many of those were not included in every publication but it would have been obvious to use all of those chemicals for this purpose for making those devices. The guy I talked to failed to mention anything about the chemicals claimed. So, failing finding anything in the art, I came to the conclusion that for once I felt 100% justified in having found the proper subject matter for, and issued a non-obvious patent. Bottom line is, novel \= non-obvious.

Disclosure doesn't mean that you advanced anything.

[6]

What case are you talking about xaminer? You are aware that posting under a name on these boards from a PTO computer using a name indicating you are an examiner is breeching the rules o the road, right?

[another xaminer]

6,

emphasis on "x"

[another xaminer]

I am talking about the official notice case JD cited, above. 09/077,337. Available on public PAIR.

[curious]

examiners are citing many more references which are not analogous these days because they are doing word searches instead of "shoe" searches.

[6]

"6,

emphasis on "x""

So then because you can't spell you get off the hook? I suggest dropping the last part. You know they're watching us in real time now right? So says the POPA conspiracy theorists. Though, I wouldn't doubt it.

Sorry I forgot about the case in this thread, I actually thought this was a different thread. In any event, yes, there's a distinction to be made, and if you read the rest of that decision by the board you'll find even more. In any event, prosecutors will come around shortly, as the one in that case did. Read his appeal, all the way through.

[6]

Also, why use PAIR? All the cool kids use the E danimal.

[Erez Gur]

Malcolm,

Thanks for your response.

You say that there exists a "the law we all agree on" but this is not true. For example, you do not agree with the law of design patents which you condemn at every turn.

As for patents, the meaning of "legal obviousness" has changed over the last few years, not because we are closer to some cosmic truth, but due to a public policy decision.

Again, I believe that according to "real word obviousness" in which inventors work, the Andersen screen is not obvious. The best evidence is that the one person (Scribo on November 20) we know who saw an Andersen screen was gobsmacked (that's for you Max).

That said, my gut feeling (without having really reviewed the evidence) is that if I were a judge I would rule that the Andersen claims are obvious under the current definition of "legal obviousness".

This does not change my belief that the current definition of "legal obviousness" does not achieve the goal of encouraging technological advancement, and it seems the court agrees with me: KSR (page 12) quoting A&P (page 12) says that the reason for the obviousness test is to prevent withdrawing what is already known from skillful men. Prior to the Andersen patent application we did not have the nifty Andersen screens, ergo not obvious.

E6K (3:53) Pella did not need to sell the Andersen screens. They could have kept on selling the old wire screens we are all quite happy with.

[bubba]

@: "But its (future) applicability to cheap applications" MIGHT BE "obvious."

- and -

@ "Pricing gets about this | | much consideration".

Given the procedural posture of this case, i.e., a motion for summary judgment by the defendant, and the requirement to review the record in the light most favorable to plaintiff, did the defendant raise no genuine issues of material fact? If so, why are the facts raised (including facts about pricing) not material, and/or why do they create no genuine issues?

@ "the law that we all agree on":

these threads suggest we ALL agree relatively rarely. Nevertheless, did not the Supremes, via their Adams opinion, state the law of the land? Has that opinion been overruled?

@ "arguments about 'durability' and 'expense' are irrelevant as a matter of law because neither the specification nor the claims require any such advantage for the claimed screen"

Then why did the Adams opinion, in its non-obviousness determination, focus on arguments about practicality, safety, and operability, even though these characteristics were not explicitly claimed?

@ "KSR (page 12) quoting A&P (page 12) says that the reason for the obviousness test is to prevent withdrawing what is already known from skillful men. Prior to the Andersen patent application we did not have the nifty Andersen screens, ergo not obvious."

Perhaps.

In fuller context, A&P stated: "Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950).

KSR quoted a portion of the above paragraph from A&P and added: "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."

Did not the Adams Court focus on predictability, as evidenced by facts relating to practicality, safety, and operability? Did not the Andersen court focus on predictability, as evidenced by facts relating to practicality, that is, facts relating to durability, required physical characteristics (e.g., transparency), and/or pricing?

How did the Andersen court err in following the law established by Adams, A&P, and KSR? How did the Andersen court err in following the the law of summary judgment?

[6]

"Given the procedural posture of this case, i.e., a motion for summary judgment by the defendant, and the requirement to review the record in the light most favorable to plaintiff, did the defendant raise no genuine issues of material fact? If so, why are the facts raised (including facts about pricing) not material, and/or why do they create no genuine issues?"

I have specifically stated that they did raise some GIMF's. Problem is, not all of what they said in the analysis was correct, and they gave more GIMF's than the party actually genuinely raised. The facts about pricing are not materials ONLY to the question of if the art teaches towards or away, which was GIMF which the court said that they bore relevance to. The facts about pricing may be material to a common sense analysis, but that's up to whoever is doing that analysis, and they would be overwhelmed by the rest of the common sense analysis as the DC noted.

"Then why did the Adams opinion, in its non-obviousness determination, focus on arguments about practicality, safety, and operability, even though these characteristics were not explicitly claimed?"

Because SCOTUS always did use common sense analyzing? Just a guess.

[6]

"The facts about pricing are not materials ONLY to the question of if the art teaches towards or away, which was GIMF which the court said that they bore relevance to. "

=

"The facts about pricing are not material ONLY to the question of if the art teaches towards or away, which was GIMF which the court said that they bore relevance to. "

It's early.

[MaxDrei]

Mr Gur, not sure whether it's my gob that has to be smacked but I will comment anyway on your "gobsmacked" point. A stunning "technical effect" is great evidence of non-obviousness in Europe, but only when the effect is the consequence of the technical features that characterize the claimed subject matter relative to the prior art starting point. Just as diamonds look stunning in the jewellery shop, so an insect screen will likely look amazingly transparent at a stand at a trade show. But so might the prior art, if similarly set up. Think of all those Before/After advertising comparison photos, where the model wears flattering clothes, make-up and posture, but only in the "After" photo.

As to your

"reason for the obviousness test is to prevent withdrawing what is already known"

I suppose that by "withdrawing" you mean "monopolising". Now that seems to be saying that we need obviousness because we haven't got a novelty filter. But that's not what you mean, is it?

[JohnDarling]

another xmainer,

We'll have to agree to disagree. I've never traversed the taking of Official Notice by explaining why, or even arguing that, the facts taken notice of are not well known. I've always simply requested the requisite documentary evidence from the examiner. I've never had an examiner declare such a "challenge" to be "inadequte."

I went back and looked at the memo from February, 2002 that Mr. Kunin issued regarding Official Notice. For the requirement that "[t]o adequately traverse such a finding, an applicant mus specifically point out the supposed errors in the examiner's action, which would include stating why the noticed fact is considered to be common knowledge or well-known in the art." For support, Mr. Kunin cited Rule 111(b) and Chevenard. Neither the rule nor that case require applicant to state why the noticed fact is not considered to be common knowledge or well-known in the art. Mr. Kunin simply made that up.

"But the law == the law that we all agree on -- requires that the trier of fact focus on the invention as CLAIMED."

I don't agree with that. I suspect that many others don't agree as well.

[JohnDarling]

another xmainer,

We'll have to agree to disagree. I've never traversed the taking of Official Notice by explaining why, or even arguing that, the facts taken notice of are not well known. I've always simply requested the requisite documentary evidence from the examiner. I've never had an examiner declare such a "challenge" to be "inadequte."

I went back and looked at the memo from February, 2002 that Mr. Kunin issued regarding Official Notice. For the requirement that "[t]o adequately traverse such a finding, an applicant mus specifically point out the supposed errors in the examiner's action, which would include stating why the noticed fact is considered to be common knowledge or well-known in the art." For support, Mr. Kunin cited Rule 111(b) and Chevenard. Neither the rule nor that case require applicant to state why the noticed fact is not considered to be common knowledge or well-known in the art. Mr. Kunin simply made that up.

"But the law == the law that we all agree on -- requires that the trier of fact focus on the invention as CLAIMED."

I don't agree with that. I suspect that many others don't agree as well.

[6]

"Neither the rule nor that case require applicant to state why the noticed fact is not considered to be common knowledge or well-known in the art."

As a matter of fact that rule states that:

"(b) In order to be entitled to reconsideration or further examination, the
applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must
reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. "

Note here that this is an office rule, and is entitled to Chevron deference if the PTO's interpretation is reasonable, which it is, and the statute does not speak directly to the issue, and it does not. Should you like to further challenge the interpretation and actually managed to win, then I'm sure we'd be happy to change the rule to better accomodate you.

Also note here that "supposed errors" is not limited errors of application of written publications or other more traditional prior art, or obviousness determinations, or official notices or anything. If you don't take issue with the official notice as being a supposed error then we assume you do not regard it as such.

If you prefer, we could simply not reconsider or further examine your application. Since we're as nice as we are about not holding you non-compliant though we simply inform you that you skipped completing distinctly and specifically pointing out what the supposed error with the examiner's official notice is and send you an action. We're a generous lot. You of course argue that there is no requirement to address why the supposed error is an error. However, it is axiomatic that in any indiation of an error that one must explain why it is an error or else your assertion will simply be overlooked for what it is, an assertion with no reasoning behind it. I get assertions like this about facts found in references occasionally and I answer them the same way I would an incomplete official notice traversal. I simply state the applicant has not provided any reason to believe that an error has been made, and that I can think of none, so it seems there is no reason to take the assertion of an error being made into account.

Also, you should note that:

http://www.uspto.gov/web/offices/pac/dapp/opla/documents/offnotice.pdf

relies on In re Soli in addition to Chevenard and Soli seems most relevant to the discussion at hand.

For your convience:

In re Soli, 317 F.2d 941, 945-46, 137 USPQ 797, 800 (CCPA 1963)

http://www.altlaw.org/v1/cases/827703

Therein they state: "This court has long held that wherever possible, issues should be crystallized before appeal to this court. It is neither the function of oral arguments nor briefs before this court to question for the first time the propriety of actions of the examiner or the board to which a response conveniently could have been made before the Patent Office. See In re Chevenard, 139 F.2d 711, 31 CCPA 802" when the applicant failed to "challenge" in the old school manner before appeal. Today we don't even require you to make a challenge. Simply point out an error and state why it is an error.

I note with particular glee this gem: "Even if we were to assume, arguendo, that the rule of this court were not as stated in the Chevenard case, we noted that appellant's attempt to refute what we think is the justifiable position of the Patent Office relating to the skill of the art consists merely of stressing what the Patent Office has admitted — that neither Strawinski nor Taggart discloses, by itself, the use of a control. On the question before us, we think that fact is not significant. It is well within ordinary skill of the art to use a control."

Lol, in that case fact was not significant. I'm rofling some mao over here.

As the final word on the matter, this change was a change to "patent examining policy" which, at least in the past, I have seen time and time again be used by the courts as a justification for holding for the office. I have yet to see a change to "policy" be successfully challenged in a decision and I would be interested to see any cases where this has occured.

[JohnDarling]

In re Soli, 317 F.2d 941, 945-46, 137 USPQ 797, 800 (CCPA 1963)

That's 1963. Enough said.