Ex parte Nakashima (BPAI 2010); Ex parte Borden (BPAI 2010)
Two recent expanded-panel BPAI decisions both consider the situation where a patent applicant presents arguments in a reply brief even though the arguments could have been raised by in the principal brief. Interpreting the regulations of 37 CFR 41, both decisions hold that the Board is not required “to consider such belated arguments” unless the applicant presents “good cause” for the delay in presentation.
“[W]e take this opportunity to explain that the regulations governing Appeals to the Board require that any argument not timely presented in the principal Brief, will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Principal Brief.” Nakashima.
Rule 41 does not discuss the potential content of a reply brief other than to note that the reply brief “shall not include any new or non-admitted amendment, or any new or non-admitted affidavit or other evidence. 37 C.F.R. § 41.41(a)(2) (2007). Prior to 1998, Rule 41 required that reply brief content focus only on points newly raised in an examiner’s answer. That limitation, however was eliminated in the 1998 rule modifications. Despite this change, the BPAI panels both held that the “scope of the reply brief was never expanded to include belated arguments or new arguments unaccompanied by a showing of good cause.”
No New Nuances: A no-new-arguments rule is a common rule in all types of court systems. However, the rule as implemented in Nakashima appears that it could be better stated as no-new-nuances. Nakashima argued in its principal brief that the examiner’s obviousness rejection was incorrect. The “new” argument presented in the reply brief still focused on obviousness and the same two references, but provided a new justification for a non-obviousness conclusion. In particular, Nakashima’s opening brief argued (1) that the examiner’s suggested combination of prior art teachings would “destroy” the functionality of the claimed vacuum apparatus and (2) that the examiner was incorrect in his assertion that one of the references taught a “inner belt.” The reply brief added the nuance that there is “no reason to combine” the two prior art references because the result would not have been desirable. According to the Board, the “no reason to combine” argument was new and therefore, the Board refused to address that issue.
Writing in dissent in Nakashima, Administrative Patent Judge Terry Owens argued that the patent applicant had a right to include new arguments in its reply brief. Owens quotes the PTO’s comments associated with the 1998 rule change found in 62 Fed. Reg. 53168: “The former practice of permitting reply briefs based solely on a finding of a new point of argument [in the examiner answer] is eliminated thereby preventing present controversies as to whether a new point of argument has been made by the primary examiner.”
Notes:
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On remand and after filing an RCE, Nakashima should be able to argue its new points to the examiner and perhaps reach the Board again in three-years.
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The Nakashima application is owned by Brother (Japan) and is being prosecuted by the Oliff & Berridge firm (DC).
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The Borden application is owned by Sharp (US) and is being prosecuted by the Chernoff firm (Oregon).
“TLDR, but presumably that wording is there so you can raise new issues in your reply brief in rebuttal of arguments in the examiner’s reply that you could not have foreseen.”
You can always use a reply to rebut the arguments raised by the Examiner in the Answer, forseen or otherwise. You don’t need this rule to do that. As stated by the Board in its decision, the rules at one time had language expressly limiting replies to rebuttals of arguments previously raised, but this prohibition was stricken when the rules were revised. When you strike the language preventing new arguments from being raised, and add language permitting a supplemental answer in the event that a new issue is raised in a reply brief, it isn’t at all a stretch to conclude that applicants will reasonably believe that they can raise new issues in a reply brief.
“Your appeal brief should include every argument you have at your disposal when you file your appeal brief, and that’s your only chance to present those arguments. They are not appropriate in a reply brief.”
This would be an excellent policy reason for a rule that precluded new arguments from being raise in a reply brief. But, there is no such rule. I don’t question that a promulgated rule limiting replies to arguments on record would be unassailable, or that there are valid justifications for that hypothetical rule. But you can’t just make the rule up in the middle of a case because you think it’s a good idea. An applicant raised an argument during an appeal. There was no rule prohibiting the applicant from making that argument at the time the applicant made it. An Appeal Board can’t just decide on the spot that it doesn’t have to consider the argument, regardless of its merits, out of some sense of fairness to either itself or the Examiner, particularly when the rules give both the Board and the Examiner the flexibility to raise new issues whenever they find it necessary to sustain a rejection.
The point being made here is not that an applicant has a due process right to raise new arguments in a reply brief, per se, it is that the applicant’s due process rights are violated when there is no rule prohibiting new arguments raised in a reply brief, when an applicant makes such an argument, and when the Board sua sponte decides that it won’t decide the issue.
“Specifically, I would like to see evidence as to why, if examiner 6tard rejects in the first action a claim under 102b in view of Smith, citing col. 23 lines 5-12 as teaching claim element H, when in fact claim element H is not taught at the cited portion but rather it is taught at col. 23 lines 27-35, examiner 6tard could not simply correct the column and line numbers in the final rejection. Assume in the above scenario that the different passages are both part of the dislosure of the same embodiment of the invention.”
I don’t disagree with you in this specific scenario. The only question I have about whether an Examiner can shift the 102 rejection during an appeal, without it being a new grounds of rejection, is if the Examiner is changing the claim interpretation or reading the terms on a wholly different feature disclosed by the cited prior art. Even in that circumstance, I think that a 102 rejection is arguable either way.
In a 103 rejection, however, the prima facie case includes a required explanation as to why the invention is obvious. If an applicant shows that the explanation given lacked merit, then the final rejection has to be reversed, regardles of whether it is replaced with an alternate grounds of rejection.
I wrote the request for rehearing in that case, and one of the regulations we relied upon was a rule that allowed the Examiner to submit a supplemental answer to address any new issue raised in a reply brief. We argued that this regulation indicated that the rules contemplated that an applicant could raise new arguments in a reply brief
TLDR, but presumably that wording is there so you can raise new issues in your reply brief in rebuttal of arguments in the examiner’s reply that you could not have foreseen.
Your appeal brief should include every argument you have at your disposal when you file your appeal brief, and that’s your only chance to present those arguments. They are not appropriate in a reply brief. Because, as someone (6?) said earlier, the appeal has to end sometime.
“Even with a 102 rejection, my understanding is that a final rejection is subject to the APA, and if the final rejection fails to spell out a novel claim interpretation that is being read on the prior art, or misdirects the applicant to other portions of the prior art than those that could plausibly be read as anticipating the claim, then the final rejection would be considered improper under the APA.”
Can you cite specific language that supports “your understanding”? Specifically, I would like to see evidence as to why, if examiner 6tard rejects in the first action a claim under 102b in view of Smith, citing col. 23 lines 5-12 as teaching claim element H, when in fact claim element H is not taught at the cited portion but rather it is taught at col. 23 lines 27-35, examiner 6tard could not simply correct the column and line numbers in the final rejection. Assume in the above scenario that the different passages are both part of the dislosure of the same embodiment of the invention.
I buy that changing from embodiment 1 to embodiment 2 at the final would likely be new grounds of rejection. I buy that combining features of two embodiments under 102 or 103 at the final would be improper if only a 102 had been made prior. I do not buy that simply changing citations necessarily qualifies as changing the grounds of rejection.
” It’s extra statutory so far as I know.”
Keep adding that “so far as I know” caveat and you’ll be OK, kid.
“They’re a second appeal. Sorry.
Why? Mainly because of just the issue we’re talking about. You can make more arguments after the ones in the pre-appeal don’t pan out. Not to mention you get to buy more and more and more, then finally A LOT more time before I get to write my frakin Answer and get a count.”
I’ll put this simply. The limitation that an Examiner’s rejection can be appealed once is a res judicata issue. It relates only to the finality of the disposal of the appeal, and has no bearing upon what procedures are made available during that appeal regarding what arguments can or cannot be raised by either teh applicant or Examiner, or the timing of those arguments. It certainly doesn’t relate to the time by which Examiners think they are entitiled to their “counts.”
You also should take a closer look at the regulations on the pre-appeal brief review process, in which which an applicant is limited to raising issues that are so clear that there would be no credible position for the Examiner to maintain before the Board. A decision by the review panel that there are issues upon which the appeal could be maintained is not synonymous with a determination that the Examiner is right or that the applicant is wrong. It just means that the panel can’t preempt the authority of the Board to decide plausible issues. As a practitioner, I would certainly not assume that I needed to present a new argument just because a review panel did not withdraw the final office action during that review. Moreover, raising additional arguments in an appeal brief, after the review process, is perfectly consonant with the reasons for the pre-brief review; it’s just that the applicant didn’t want to waste the panel’s time on something that it knew wouldn’t meet the stricter standard applied during the pre-brief review process.
“The problem is you percieve that it was a bad rejection. Or at least that such is implied or conceded. Such a perception is incorrect. It was a good rejection poorly laid out. Unfortunately, that doesn’t mean that the rejection itself was ever defective.”
This argument may possibly be true with respect to a 101 or 102 rejection, but certainly not with respect to a 103 rejection or even a 112 where the rationale to support the rejection is an integral part of the rejection itself. Even with a 102 rejection, my understanding is that a final rejection is subject to the APA, and if the final rejection fails to spell out a novel claim interpretation that is being read on the prior art, or misdirects the applicant to other portions of the prior art than those that could plausibly be read as anticipating the claim, then the final rejection would be considered improper under the APA.
“I advise you to either take a psudonym or stop posting before your examiners catch wind of your “thoughts” on these subjects. Were you practicing before me, well, the rules of engagement are well known as they say. ”
Can I assume that the reason that you post under a pseudonym is so that your supervisors or co-workers don’t catch wind of your thoughts on customer service?
“Raising a new argument on during appeal of an Examiner’s rejection is not a new “appeal.” ”
Keep tellin yourself that son, one day you’ll really believe it.
“Nor is the pre-appeal brief review process, which merely postpones submission of an appeal brief while the Examiner and a supervisory panel can decide whether they want to withdraw the rejection, add a new grounds of rejection, or proceed – all being procedures already allowed under the appeal rules. ”
They’re a second appeal. Sorry.
Why? Mainly because of just the issue we’re talking about. You can make more arguments after the ones in the pre-appeal don’t pan out. Not to mention you get to buy more and more and more, then finally A LOT more time before I get to write my frakin Answer and get a count. Then you propose that the last A LOT more time should be A LOT MORE AND THEN SOME. I may have left out a “more” in there somewhere. Stick another in.
What, precisely is an “appeal” to you sir? I’m not sure when the term lost all meaning and came to represent an arbitrarily determined “procedure”.
“Do only “desperate” Examiners wait until an appeal to provide an adequate rationale for an obviousness rejection in the Examiner’s Answer, or explain a particular definition used to interpret a claim limitation?”
And/or new examiners. And/or probably a few other things.
“Will “good examiners”, after reviewing an appeal brief and realizing that their explanation of obviousness in the final rejection won’t fly with the appeal board – but also realizing the existence of a secondary rationale, based on another portion of the cited prior art or a new definition of the claims than previously used – withdraw the case from appeal and issue a new office action?”
No, because attorneys nowadays have been bit ching that if examiners do that then we have somehow done a great evil in denying them their statutory “right” to appeal. No, I’m not shting you, that’s what they argue.
“If the Examiner adopts, for the first time on appeal, a brand new rationale, using brand new portions of the prior art, not only are the arguments considered, but the Examiner doesn’t even have to withdraw the previous rejection, meaning that the delay the applicant incurred in bringing the appeal over what was implicitly conceded to be a bad rejection gets wasted.
”
The problem is you percieve that it was a bad rejection. Or at least that such is implied or conceded. Such a perception is incorrect. It was a good rejection poorly laid out. Unfortunately, that doesn’t mean that the rejection itself was ever defective. That’s true whether you like it or not, you need to change your perception and practice, not bich.
For example, I have recently come to change my own perceptions on appeals. You would think that if the applicant’s arguments are defective or unpersuasive then the appeal should fail and the application stands rejected. Slam dunk right? High five right? But that is not so in reality. In reality, a rejection must withstand not only the applicant’s arguments in the brief but also review by a spe and appeals guy as well as the examiner himself before the appeal even goes up. Therefore, the appeal brief, though perhaps poorly argued, can still be quite effective. It’s just something you have to learn.
“What I’m seeing here is a double standard.”
Correct.
“The applicant, however, is forever stuck”
LOL WUT? Have trouble thinking of the letters RCE? The whole problem with this system as a whole, at its core, is that the applicant is never truly “forever stuck”.
“I consider myself to be a reasonably good patent prosecutor.”
Perhaps you are. But statements like this:
“Fairness to an Examiner is not even an issue.”
don’t do anything to convince anyone that you are.
I have no further time for you sir. I advise you to either take a psudonym or stop posting before your examiners catch wind of your “thoughts” on these subjects. Were you practicing before me, well, the rules of engagement are well known as they say.
One last thing though, you should consider that the behavior of the office and of the applicant is fundamentally different. That’s something that all too often is in the applicant’s favor. See “burden”, statutory ability to amend at least once, etc. In this case, it is not. Let us not spend time nor tears crying about it.
“35 USC 134 only provides for one appeal to be made and what you suggest is pretty much a second appeal in “the same appeal” clothing.”
Raising a new argument on during appeal of an Examiner’s rejection is not a new “appeal.” Nor is the pre-appeal brief review process, which merely postpones submission of an appeal brief while the Examiner and a supervisory panel can decide whether they want to withdraw the rejection, add a new grounds of rejection, or proceed – all being procedures already allowed under the appeal rules.
“good prosecutors whom I know all seem to file an RCE if they want to make more arguments. It’s the desperate ones that behave as you were there.”
Does this opinion apply to Examiners, as well? Do only “desperate” Examiners wait until an appeal to provide an adequate rationale for an obviousness rejection in the Examiner’s Answer, or explain a particular definition used to interpret a claim limitation? Will “good examiners”, after reviewing an appeal brief and realizing that their explanation of obviousness in the final rejection won’t fly with the appeal board – but also realizing the existence of a secondary rationale, based on another portion of the cited prior art or a new definition of the claims than previously used – withdraw the case from appeal and issue a new office action?
I just now finished reviewing an Examiner’s Answer, where the Examiner abandoned the portions of the primary reference that he was relying upon throughout examination, and is now citing a completely different feature of the prior art reference that he is reading the claims upon, and it is a credible, if creative, reading. Had the Examiner made this argument in the final office action I certainly would have filed an RCE, and probably would even now if there weren’t other claims on appeal at issue that we can still proceed with.
I consider myself to be a reasonably good patent prosecutor. My amendments are made with a cogent explanation not only of the cited prior art, but the reasoning as to why the claims are patentable over it. In many cases, what I get back is non-responsive to the arguments raised – in some instances mere word-for-word duplicates of the prior rejection, with no effort to respond to the arguments. Other Examiners might have a brief statement that the Examiner disagrees and provide bare citations to same lines or paragraphs of the prior art previously used, without any explanation of how the Examiner reads the claim terms on that disclosure.
This certainly isn’t an indictment of all Examiners. In fact, most that I have dealt with may give a barebones first rejection, but in a final or subsequent rejection provide the explanation that I need to intelligently amend the claims or respond with some more remarks. But often, the only way to get a decent explanation for a rejection is to file an appeal and present your arguments in a brief. And when faced with a situation where an Examiner for the first time bothers to respond to those arguments in an Answer on appeal, “belatedly” backs up the rejection with an actual rationale that he or she didn’t bother making in the final rejection, but “could have,” I see no problems in resorting to a secondary argument against that rejection, if necessary, and proceeding with the appeal.
The appeal rules state that, from the perspective of the Examiner, the rejection is simply the statutory grounds of rejection cited, along with the prior art. If the Examiner adopts, for the first time on appeal, a brand new rationale, using brand new portions of the prior art, not only are the arguments considered, but the Examiner doesn’t even have to withdraw the previous rejection, meaning that the delay the applicant incurred in bringing the appeal over what was implicitly conceded to be a bad rejection gets wasted.
What I’m seeing here is a double standard. The USPTO (either an Examiner or the Board) can adopt whatever reasoning or arguments it needs, so as to maintain a rejection, whenever it wants, even after briefing is finished in the case of the Board. I’ve heard of one instance where the Board actually did its own search to replace an Examiner’s rejection with another one. The USPTO also takes the position that, as long as neither the statutory grounds for rejection nor the prior art supporting it change, there is no new grounds of rejection, meaning no reversal of the rejection, and no adjustment to the patent term. The official position is that the applicant was put on notice of the disclosure of the prior art and should have been aware of the argument for unpatentablity.
The applicant, however, is forever stuck with the arguments raised in the appeal brief and, unlike the Examiner, can’t throw anything new out there for the Board’s consideration.
Remember, these are ex-parte proceedings, meaning that the Examiner is not a party to the appeal, has no due process rights, and doesn’t need to be given an opportunity to respond. Fairness to an Examiner is not even an issue. Given that the Board is competent enough to provide its own rejections in the first instance, or replace an Examiner’s rejection with a better one, the Board is certainly competent enough to evaluate an argument by an applicant without the benefit of an Examiner’s input.
Furthermore I note quite sadly Kurt that good prosecutors whom I know all seem to file an RCE if they want to make more arguments. It’s the desperate ones that behave as you were there. To put it politely.
“The obvious rejoinder is: “so what?” ”
We don’t like to bother them often. Supposedly they have important things to do, like reassign themselves to different AU’s from time to time.
I’m not sure about your various justifications Kurt, but I do know one thing. 35 USC 134 only provides for one appeal to be made and what you suggest is pretty much a second appeal in “the same appeal” clothing. I take issue with the pre-appeal “program” for the same reason. It’s extra statutory so far as I know.
The decision on rehearing in the Borden case was nonsensical. I wrote the request for rehearing in that case, and one of the regulations we relied upon was a rule that allowed the Examiner to submit a supplemental answer to address any new issue raised in a reply brief. We argued that this regulation indicated that the rules contemplated that an applicant could raise new arguments in a reply brief so long as they did not violate the prohibition on new evidence or new amendments (this latter regulation showing that the USPTO certainly knows how to limit the content of a reply brief when it wishes).
The response of the panel to this argument was simply to note that the Examiner had to get permission from a technology center supervisor before preparing a supplemental answer. The obvious rejoinder is: “so what?” The procedure is available. If the people upstairs don’t think it’s worth it to respond, they don’t have to. This is no different from the calculation an appplicant makes as to whether to pay the expense to prepare a reply brief, which is not required. If none is filed the Appeal Board decides the issues on the brief and the answer.
Even more eggregious was the fact that after quoting the regulation stating that the Board will not consider any argument not raised in either the appeal brief OR THE REPLY BRIEF, the decision, in the very next sentence asserted that the regulation required that an argument must have been first raised in the appeal brief to be considered. Anyone with basic reading comprehension skills can see that the regulation says no such thing.
The Board phrased the issue as to whether any rule (as they interpred them) required consideration of “belated” arguments, but if there is no regulation prohibiting an argument from being raised in a reply brief, the arguments were not belated in the first instance. The real issue is whether there is a rule that allows the Board refuse consideration of an argument first raised in a reply brief. The Board couldn’t find one, so they instead invented such a rule by first summarily calling the argument “belated”, and analyzing the issue as to whether a rule required them to have the graciousness to consider such “belated” arguments. The circularity of this reasoning is pretty easy to see.
As for the argument that the Board can’t reach a decision on a new argument without input from an Examiner, I’d only note that on several occaisions I’ve seen appeal boards discard an Examiner’s reasoning and adopt their own rationales to support a rejection, without any briefing on those new reasons. The Board of Appeals is certainly competent to evaluate arguments as to patentablilty on its own, without input from an Examiner.
7, the very reason they listen is EPO-PSA. Examiners at the EPO know with absolute certainty that the Technical Boards of Appeal that pass judgment over the decisions made by examining divisions and opposition divisions will be following EPO-PSA with absolute rigour. Thus, if their decisions are not grounded in reasoning that is absolutely in compliance with EPO-PSA they are going to get reversed, with the case coming back down with an order to invert their attitude. That hurts.
Rather than have that happen, they pay great attention to all the arguments put forward by the Applicant, and conscientiously address them all when coming to their decision.
You seem to hold wistfully to another theory, that EPO Examiners are simply nicer people. I don’t want to disillusion you, but I don’t believe your theory. EPO Examiners are nice people (mostly). USPTO Examiners are surely also nice people (mostly).
Certainly EPO-PSA is just the framework. I agree. But don’t knock it or belittle it. That framework is precious. Apart from anything else, it keeps Examiners and attorneys from falling out with each other. And it races through the obviousness issue PDQ.
The only ‘real’ difference between PSA and the clusterhump of an obvious standard we have here now is that EPO examiners will listen to reason when you explain why one of skill in the art wouldn’t modify a reference in a certain way, or wouldn’t combine two references.
Therefore, the difference is the examiners. PSA just provides a defined framework for both examiners and attorneys argue within.
Might there not be some long felt need then, 7, in an approach to the exploration of what was or was not obvious, that imposes on PTO examiners clear Rules as to what art references are legitimate to combine, and which not? One needs a Rule so simple and easy to apply that there’s no legitimate excuse to get it wrong.
This is where the multi-national EPO was, in 1978, when it first opened its doors and started examining for obviousness. What Rule did it come up with, that would discipline all those rookie Examiners, arriving in Munich, bright eyed, bushy-tailed, and bursting to apply the expertise already learned in their home Patent Office?
EPO-PSA.
How is EPO-PSA looking now, 30 years later? You tell me.
“When I say “run wild” I mean they willy nilly combine references directed to completely disparate technology areas to reproduce the claims, combine references in a way that one of skill in the art would never ever think to (or want to).”
Are you able to submit evidence to show that one of skill in the art would not combine the references? Or do you simply make allegations unsupported by any factual evidence about one of skill? You can go all out, like Nakashima, and wait until the reply brief to decide it is time to make unsupported allegations about one of skill in the art, then act in horror when the pto affirms the examiner.
When I say “run wild” I mean they willy nilly combine references directed to completely disparate technology areas to reproduce the claims, combine references in a way that one of skill in the art would never ever think to (or want to).
“Aren’t Examiners, on the contrary, just dutifully doing their best faithfully to follow the highest law in the land?”
MaxDrei, haven’t you yet followed the link I provided to show you how dutiful examiners can be?
In case you missed it:
link to just-n-examiner.livejournal.com
C’mon man – switch on your critical faculties already. If examiners (and the Office) were actually following the Law, you wouldn’t see so many of my posts on these boards (I would miss you too, but I would somehow manage).
Running “wild” 7? Aren’t Examiners, on the contrary, just dutifully doing their best faithfully to follow the highest law in the land?
KSR says that a new combination of old elements, without unexpected results (which, let’s be honest, can only occur in the chemical arts), is not patentable. Examiners run wild with this.
At 10.22 yesterday “7” wrote:
“You’re never winning on a “no reason to combine” argument alone anyway. The way to get an allowance or win an appeal is to show that some element is not in any of the cited references”
which alarms me because I had always supposed that most inventions are new combinations of old elements.
7 tells me that I’m just not going to get a US patent on any of these “inventions” (however much I narrow the claim by adding more and more elements). Can that really be right?
Or is “element” like “means” in that it has a special meaning for US patent attorneys, different from what it means to everybody else in the world?
“Responses to the prima facie case of obviousness are manifold and often related – where are the lines between teaching away and inoperability of a combination? change in operating principle? lack of stated advantages? nonanalogous arts?”
Feel free to send me a mail about your inquiries. 50$ a question till you get your wits about you, sound fair? If you need more in depth help I’m thinking about teaching patent law 201 here soon, only 200$ to reserve your seat.
“But why can’t you equally support the proposition that it is better to get all grounds *for* patentability addressed at appeal?”
Well, first of all there is no such thing as “grounds *for* patentability”.
Second, lol?
To be serious for a minute let us discuss this step by step.
We’re discussing the board itself raising a new grounds of rejection and no other situation. The board enters the new grounds, you get your appeal back, look at the new grounds and OH NOES have to decide whether or not to spend 1 whole THOUSAND dollars for an RCE, or appeal what is presumptively the best ground of rejection the office has to the CAFC.
“But why can’t you equally support the proposition that it is better to get all grounds *for* patentability addressed at appeal?”
I am all for that, but you put those arguments in the APPEAL BRIEF not the REPLY BRIEF just like I put my arguments etc. in the EXAMINER’S ANSWER as opposed to a further examiner’s answer after a reply brief from you. THE PROCESS MUST END AT SOME POINT.
Now, remember the part about the grand for an RCE? I’m going to be one hundred percent honest with you, if one thousand dollars is an issue for you then perhaps patents aren’t your bag baby, no.
“Just like new grounds of rejection, new arguments and rationales presented in the reply brief would be “limited to the facts [contents of the prior art, application, and applicable caselaw] that were already on the record.” ”
Sadly that is not the case. Attorneys can enter new evidence of secondary considerations, or perhaps cite new art in their reply. Even make allegations of a certain term being used in x manner all throughout the art. Etc. etc. etc. Attorneys arguments do not suffer such a setback. I wish they did.
Finally, you need to understand, the written record after final is not the place to have a lengthy back and forth. Finality is what is used to draw the process to a close. Talk about your issues before appeal.
And fyi, this is not “pro-office”, the basic ability to amend is one million times “pro-applicant”. Maybe a gazillion times. Throw RCE’s in there and you have an applicant’s HEAVEN with naught by some small stones that you could stub your toes on if you’re a jackarse.
All I have to say is that it’s a wonder why the good attorneys who practice before me never have such issues. A wonder. Truly.
there is no reasonable legal basis for these rulings”
Administrative agencies have to get something done at some point even besides the ornery court system constantly throwing more on it. If you have a problem, cry to them some more. Eventually your crying will break your own patent system, if you haven’t already.
“at applicant’s peril.”
PERIL? WAIT WHAT? PERIL? One whole thousand dollars worth of PERIL?
I think you need to look up the definition of the word “peril” and when it is truly appropriate to use it.
Our fees are dirt arse cheap, get over it.
And o yea, tldr, kthxbai.
“How about that” said: “How is the board supposed to evaluate an argument raised for the first time in a reply brief, unsupported by evidence, and without the benefit of the examiner’s insight? There are two sides to every argument, but raising an unsupported allegation in a reply brief would deprive the board of any critical evaluation of the argument by the examiner.”
Maybe there should be a procedure where the applicant pays a petition fee to have the examiner reply to this new argument, while everything is still fresh in everyone’s mind???
CC’d said “The damage avoided by allowing the board to enter a new ground of rejection is at least comparable to the damage incurred by requiring an applicant to refile her application to get a new argument on the record”
Makes sense.
“raising an unsupported allegation in a reply brief would deprive the board of any critical evaluation of the argument by the examiner”
The Board could have easily said, “this argument is considered and is found not persuassive because it lacks evidentiary support,” instead of “we won’t consider this argument at all.”
The board appears to say that the appellants did not present credible evidence in support of their argument, because evaluating if the combination requires undue experimentation can only be done with evidence that is not currently part of the record.
According to the board,
“Nakashima has not directed our attention to evidence in the record that indicates that the level of ordinary skill was such that the necessary modifications would have required undue experimentation.”
The board has a point here, evidence to support this argument has to be initially presented to the examiner. How is the board supposed to evaluate an argument raised for the first time in a reply brief, unsupported by evidence, and without the benefit of the examiner’s insight? There are two sides to every argument, but raising an unsupported allegation in a reply brief would deprive the board of any critical evaluation of the argument by the examiner.
CC’ed – let me respond on 6’s behalf:
“too long, didn’t read. just like yur AF responses. kthxbai”
To paraphrase Justice Potter Stewart, “I’ll know a new nuance when I see it”.
6 – I have no problem with your views being consistently pro-USPTO and your facts carefully filtered to support that bias, but I just couldn’t stomach this:
“The new grounds are limited to the facts that were already on the record now thanks to zurko. I don’t see anything particularly wrong with this situation. Applicant knows what info is available against him. You want to get the grounds of rejection as quick as possible. Would you rather have them in court after issue?”
You are, of course, correct that it is better to get all potential grounds for invalidity addressed at appeal, which is often the final stage of prosecution.
But why can’t you equally support the proposition that it is better to get all grounds *for* patentability addressed at appeal? Just like new grounds of rejection, new arguments and rationales presented in the reply brief would be “limited to the facts [contents of the prior art, application, and applicable caselaw] that were already on the record.” The damage avoided by allowing the board to enter a new ground of rejection is at least comparable to the damage incurred by requiring an applicant to refile her application to get a new argument on the record. Why completely dismiss damage to the applicant while endlessly guarding against damage to the (non-applicant) public and reputation of the PTO?
As you can probably tell, I don’t like these opinions at all. I think they are a cheap end-run for the Board to avoid work and generate PTO fees, completely at applicant’s peril. As posters mentioned above, there is no reasonable legal basis for these rulings and it’s unfair that they’ll now be applied to all applications in which briefing is complete. Further, after reading both opinions, I’m still not completely sure what exactly is a new, unjustified argument and what is simply a response for the same argument. Responses to the prima facie case of obviousness are manifold and often related – where are the lines between teaching away and inoperability of a combination? change in operating principle? lack of stated advantages? nonanalogous arts?
I have sympathy for the BPAI backlog and workload, but casting the burdens of this backlog completely on the applicant is not the way forward.
Dude, where’s my due process?
Do you really think it matters? You’re never winning on a “no reason to combine” argument alone anyway. The way to get an allowance or win an appeal is to show that some element is not in any of the cited references.
Isn’t there also the situation where an Examiner presents arguments in a BPAI answer even though the arguments could have been raised by the Examiner in the Final Office action? or even better, the First Office action?
The BPAI should just use the Examiner’s Final Office Action and Applicant’s Reply to the Final Office Action to make its decision. Can you imagine? If this were the case, does anyone thinK that the Examiners would start providing more full Office Actions?
============================
The examiner has the prima facie burdon of establishing a reason to combine prior art. Yet, the BPAI stated that the Applicant’s “no reason to combine” argument was new and therefore, the Board refused to address that issue.
Are you frigging kidding me?
“When an attorney behaves unreasonably then what do you expect good sir? It is well known amongst attorney-kind (my own irl conversations confirm) that to do such a thing is to seal your own fate. Woe be unto this attorney if their name should pop out. Especially if word gets around an AU. Even more so if it gets around a few AU’s. And even more so if it is young examiners involved in the whole thing.”
So, it was completely fine for the examiner to act unreasonably, but once the attorney retorts, he/she is the antichrist? Seems a double standard, no? 😉
I, personally, would have just called the examiner and asked what the fudge was going on here. I *do* know it’s not a good idea to piss off examiners, so I try to always be professional and courteous to them, and give them a chance to explain their actions.
Carry on, olde chap.
EG said: “Instead, the Board’s view of what is proper for a reply brief isn’t stated AT ALL in the current appeal brief rules, and thus what they require in this decision is in violation of the APA. What’s even worse about this decision is that it violates the current appeal rules themselves which require that the applicant be notified if the reply brief is non-compliant. Nothing suggests the applicant was even notified that the reply brief was non-compliant.”
Good points, EG.
“lightning has already struck Gene Quinn”
AHAHAHAHA! Too funny, Invent Help vs. Invent Yelp. No matter what happens, we win because one of them loses.
EG, I believe that the proposed appeal rules mentioned rule 1.52 specifically because the proposed rules changed a couple of things specified in Rule 1.52
Actually 7 if you go read the whole story it appears that wasn’t even the correct examiner.
“WHAT? A petty examiner who is now vowing vengeance after the practitioner who made him look like a fool? NEVER! According to you, all examiners are reasonable and would never do things like this.”
When an attorney behaves unreasonably then what do you expect good sir? It is well known amongst attorney-kind (my own irl conversations confirm) that to do such a thing is to seal your own fate. Woe be unto this attorney if their name should pop out. Especially if word gets around an AU. Even more so if it gets around a few AU’s. And even more so if it is young examiners involved in the whole thing.
“sounds almost like 6”
If that had been me I most certainly would not have been allowed to send out that non-compliant amendment. However, if I had managed to finagle it out the door I still would not promise revenge in such a manner. The rules of engagement are well known. Things simply happen.
Greg swears this was from an attorney of male sex. However, I can’t escape the similarities between the language Noise uses repeatedly, the amount of time the attorney has practiced before the Office and the overall feel of the letter. Her inane and asinine concern with PTA. It all smacks of her style. In fact, it simply reeks of her style. More than that, it practically has her name written all over it. I firmly expected to find her name at the end of the letter as I was reading it. I may have to investigate her docket for such a non-compliance action.
Like I said, the rules of engagement are well known. For example, Noise knows that if she owns up to it right now with me then nothing more unfortunate than what is already occurring will happen.
I note that lightning has already struck Gene Quinn, I would ha te to see it strike another of our resident ashole attorneys.
link to ipwatchdog.com
holy carp. read this link for the full story:
link to just-n-examiner.livejournal.com
that examiner should be fired on the spot for displaying such a massive level of unprofessionalism. sounds almost like 6… although i think 6 would be smart enough to keep on top of his docket.
Malcolm, it was the examiner. Read his oh so professional response.
“Greg,
I am guilty as charged. I had to move the case under time pressures and didn’t have the time because I had other things to work on — what I did under the rules is completely legit though I would have wasted a count and thrown away money by the system the PTO set up, not me . . . She’s not going to get much any more help from me so her *ss is going to be twisting in the wind from now on. I’m also going to email and let her know I’m pissed off about her bringing this up with Kappos.
She just jumped off a cliff in my eyes. You know, if she just called me and talked to me I could explain exactly what I did that – too late for that lady, you are going to wish you did not do that, believe me, you are going to regret it . . .[You] can also forget about an after final interviews — thats at the discretion of the examiner and my discretion from now on will be — no interview.
Good luck writing your future appeal briefs lady and your three year wait from the BPAI. You really should have thought long and hard about sending that to Kappos and not contacting me first.”
WHAT? A petty examiner who is now vowing vengeance after the practitioner who made him look like a fool? NEVER! According to you, all examiners are reasonable and would never do things like this.
Because the examiner was apparently unable to prepare a substantive response and wanted to get it off his docket in the required window for his response before incurring PTA and probably a demerit in his performance numbers.
Is it always the Examiner who does this or is there a cadre of folks in the office who review amended claims for such formalities before they get to the Examiner?
“Dear Mr. Kappos,
I have been practicing before the USPTO for 12 years now and have seen a lot of ridiculous stuff, but this takes the cake. Note the attached “Notice of Non-Compliant Amendment” and the grounds therefore — the period at the end of claim 1 was accidentally caught in the underline of the word processing selection when indicating the amended language.
Why did I receive this ridiculous response rather than the examiner merely noting it in a substantive response or making an examiner’s amendment to correct it? Because the examiner was apparently unable to prepare a substantive response and wanted to get it off his docket in the required window for his response before incurring PTA and probably a demerit in his performance numbers. (The notice was mailed 3 months and 4 days after our timely filed response.)
What is the impact of such manipulation of the internal system and this type of gamesmanship? Upset customers. My client is upset at the delay and added cost. I am upset at the inanity and the waste of my time — especially when the examiner has his own typographical error in the continuation sheet of the notice: the sentence ends with two periods. But do I have any recourse regarding the examiner’s poor grammar? No. Nor would I want to waste my time doing so. But here I am.
My request: instill some common sense and customer service attributes in the examining corp.”
Noise was that from you? Be honest.
link to 271patent.blogspot.com
You guys will get a kick out of the picture that went with that.
“look like a desperate fool”
A topic you know well Mooney. How is that “substantial fraction” working out for you?
“Um, I believe that 37 CFR 1.52 takes care of those concerns–even in appeals under the currently-applicable rules.”
Metoo,
Thanks for pointing that out. It might still have been nice for the appeal rules to make clear that the format of 37 CFR 1.52 governs the briefs. I believe in the proposed appeal rules that were pulled that briefs would require either a 12 or 14 font.
I don’t understand how anyone can assert that combining two references would break one of them, and not close with “therefore, there is no reason to combine”.
It could be the case that the breakage was not predicted or predictable.
There is a difference between non-obviousness due to a failure to present a reason for combining references versus the inoperability of a motivated combination.
What this case does show is that there is value in alleging a failure to provide a reason or motivation to combine in every 103 response.
Only if you don’t look like a desperate fool doing so. If you’ve got better arguments, you’re better off focusing on those.
“But we know the board has no problem rasing new grounds of rejection. I guess they think it’s fair because the Applicant should have anticipated every possible ground of rejection and traversed it in the original appeal brief. That’s the only conclusion I can draw.”
The new grounds are limited to the facts that were already on the record now thanks to zurko. I don’t see anything particularly wrong with this situation. Applicant knows what info is available against him. You want to get the grounds of rejection as quick as possible. Would you rather have them in court after issue?
“What this case does show is that there is value in alleging a failure to provide a reason or motivation to combine in every 103 response.
Hacks like Mooney won’t “get” this point.”
There is no value in doing something dishonest sir. Get some honor. K thx bye.
Both opinions link the result to an explanation of the “new ground of rejection” standard provided in 62 Fed. Reg. 53168. The panels first quote the FR’s explanation that:
[t]here is no new ground of rejection when the basic thrust of the rejection remains the same such that an appellant [in the principal brief] has been given a fair opportunity to react to the rejection. . . . . Where the examiner simply changes (or adds) a rationale for supporting a rejection, but relies upon the same statutory basis and evidence in support of the rejection, there is no new ground of rejection.”
and then conclude that “it is reasonable to accord similar latitude to arguments filed in a Reply Brief, but to decline to consider arguments with a ‘new thrust.'”
At first glance that’s a reasonable conclusion. However in my experience the examining corps considers the “basic thrust” to remain the same so long as the same combination of references is involved. I’ve had SPEs argue after a final rejection that the disclosure of a entirely different structure discussed 50 paragraphs away from that what was described in the final rejection justifies the original rejection and final status. You could even argue that their interptetation is consistent with the FR commentary if you buy the line that the prosecuting attorney must review the entirety of every cited reference. But I can’t reconcile that position with the result in the Nakashima application, where the reply brief cited only new portions of the same combination of references as an additional line of attack against the motivation/rationale to combine.
The USPTO cannot have it both ways. To paraphrase, “[w]here the applicant simply changes (or adds) a rationale rebutting a rejection, but relies upon the same theory of error and evidence in rebuttal of the rejection, there is no new argument.” Either “evidence” is the entirety of the applied references, or it is only the cited portions identified in the final rejections and in the appeal brief. Either an additional rationale concerning a theory such as motivation/rationale to combine, or a lack thereof, is a new argument/ground of rejection or it is not.
The Nakashima opinion acknowledges and addresses an argument presented in the appeal brief that attacked the motivation/rationale to combine. I cannot understand how the panels can quote the FR language concerning changed and additional rationales, yet dismiss those portions of the Nakashima reply brief which present an additional rationale supporting the same theory, even if it is a “new” rationale. The only apparent consistency in the opinions are the introductory comments that the examiner’s answers were substantially identical to the final rejections and did not make any additional findings of fact.
These opinions are going in my appeal brief preparation notes, along with David Boundy’s excellent summary of the law concerning new grounds of rejection (starting at page 76 of /media/docs/2007/11/boundy.pdf). We should take these panels at their word: “[a]bsent a new ground of rejection in the Examiner’s Answer, the record before the Board should remain fixed as of the date the appeal brief is filed so that a reasoned review of the record may efficiently take place.” (Nakashima opiniom p. 9, my emphasis). That means no substantial changes to arguments offered both in an appeal brief and in a final rejection. That second part would go a long way toward improving some of the lower-quality “final rejections” I’ve been seeing.
“P.S. This isn’t the only problem with the current appeal rules. For example, there’s nothing in them that requires the appeal or reply brief to be typed/printed, be in a particular size font, etc. In other words, these rules don’t preclude you from writing the briefs in crayon or using 8 point font. That’s how bad these rules are written.”
Um, I believe that 37 CFR 1.52 takes care of those concerns–even in appeals under the currently-applicable rules.
Adding a “reason to combine” argument hardly qualifies as a “nuance.” I guess I should not be surprised at this kind of thing coming from an academic who believes that the patent system is a “lottery.”
I think a patent attorney or agent would be ill advised not to add some value to existing arguments in an appeal brief. Refining and adding to existing arguments would be more along the lines of a true “nuance” and would be the exact kind of thing I would expect to have to do to claim my fee in good conscience, and, if I was in-house counsel or the client, that I would expect my patent attorney to do. Simply slapping the response to the final action into an appeal brief is something that I hope no one would think constitutes an adequate work product and that I hope that PatentlyO is not advocating.
What this case does show is that there is value in alleging a failure to provide a reason or motivation to combine in every 103 response.
Hacks like Mooney won’t “get” this point.
But we know the board has no problem rasing new grounds of rejection. I guess they think it’s fair because the Applicant should have anticipated every possible ground of rejection and traversed it in the original appeal brief. That’s the only conclusion I can draw.
I wonder how much concern the BPAI has for new arguments in an examiner’s answer. My guess would be none.
Here’s a tip: when the examiner applies a foreign reference, in your FIRST response cite MPEP 706.02 II (If the document is in a language other than English and the examiner seeks to rely on that document, a translation must be obtained so that the record is clear as to the precise facts the examiner is relying upon in support of the rejection) and demand a translation.
Sheesh.
The dissenting opinion’s point is well-taken. The prior appeal rules required that the reply brief address “new points of argument.” The problem with the current appeal rules is they don’t even address what is (or is not) a proper point, reason, nuance, etc., to bring up in a reply brief. All that 37 CFR 41.41 says about reply briefs is the folloiwng: (1) it should be filed within 2 months of the Examiner’s Answer; and (2) it can’t include “new or non-admitted amendment, or any new or non-admitted affidavit or other evidence.” In other words, it says nothing about what can or cannor be addressed by the reply brief.
Instead, the Board’s view of what is proper for a reply brief isn’t stated AT ALL in the current appeal brief rules, and thus what they require in this decision is in violation of the APA. What’s even worse about this decision is that it violates the current appeal rules themselves which require that the applicant be notified if the reply brief is non-compliant. Nothing suggests the applicant was even notified that the reply brief was non-compliant.
I’m sure the RCE route is the least expensive way to deal with this situation. But the Federal Circuit would have a field day trouncing the Board if this decision were appealed on APA grounds.
P.S. This isn’t the only problem with the current appeal rules. For example, there’s nothing in them that requires the appeal or reply brief to be typed/printed, be in a particular size font, etc. In other words, these rules don’t preclude you from writing the briefs in crayon or using 8 point font. That’s how bad these rules are written.
I don’t understand how anyone can assert that combining two references would break one of them, and not close with “therefore, there is no reason to combine”.
This is a rookie mistake that most people wouldn’t even make in a routine OA response, much less on appeal. Sucks that a do-over takes three years, but an argument isn’t an argument without a conclusion.
“6 – “clarify”? That sounds like saying something not previously said, which would be new. Or at least a nuance. Forbidden.”
Not necessarily, and even if it were, the board didn’t necessarily say “no new nuances”, that’s what D said. What the board was saying was basically no completely new theories as to why the invention was non-obvious. That does not mean you cannot further explain your original arguments. You just have to stay on topic. And I don’t mean broad arse topic like “obviousness”, I mean topic like “this combination isn’t obvious because I have an unexpected result” or “this combination isn’t obvious because the functionality of the primary would be destroyed”.
For example, I argue that the invention is non-obvious because the combination destroys the functionality of the primary reference in my original brief, the examiner says no that’s not the case because x, then I file a reply brief to say yeah huh it is the case because y. My reply brief is acceptable.
Also reply briefs are acceptable where there is a new grounds of rejection raised in the examiner’s answer.
Moose: “Here the Examiner was obviously still ‘refining’ his/her theories of the prior art as s/he wrote the Answer.”
Or, perhaps more credibly, the attorney’s arguments in the original brief all got trounced in the examiner’s answer, so they were making a last-ditch effort to save the claims at appeal.
6 – “clarify”? That sounds like saying something not previously said, which would be new. Or at least a nuance. Forbidden.
“This new rule seems to pretty much force the Reply Brief to repeat the arguments in the Appeal Brief. What’s the point?”
I had thought it was for the applicant to clarify his (we now know “original”) arguments already of record in light of what the examiner said.
“On remand and after filing an RCE, Nakashima should be able to argue its new points to the examiner and perhaps reach the Board again in three-years.
”
LOLOLOLOLOLOL
“On remand and after filing an RCE, Nakashima should be able to argue its new points to the examiner and perhaps reach the Board again in three-years.”
Subtle, and buried, but the most salient point: Pay up and wait, then the PTO will decide whether to apply the law and grant the patent the applicant in entitled to – unless they decide not to, in which case the recourse it to pay more and wait more. Here the Examiner was obviously still ‘refining’ his/her theories of the prior art as s/he wrote the Answer.
Listening to the CAFC oral argument in the Wyeth PTA case, Wyeth’s counsel briefly touched on the point that term granted at the end of the patent does -not- fully compensate for delay in issuing the patent. Three years of PTA are worthless if the technology has moved beyond the patent claims in the three years it takes to issue the thing.
What about where the Examiner makes new arguments/rationales/explanations/responses to arguments/”nuances” in the Answer? Can we make new counter-arguments in the Reply Brief? Do we have to explain good cause?
This new rule seems to pretty much force the Reply Brief to repeat the arguments in the Appeal Brief. What’s the point?
I suspect this is all just an expediency by the BPAI to more quickly affirm appeals and cut down on having to read reply briefs. No doubt they will apply this rule retroactively to reply briefs already filed before these rulings, so as to effectively ignore most currently pending reply briefs.
I urge the Director to consider regulations correcting these rulings.
What’s the point of a reply brief again?
Is it just to signify that the applicant hasn’t decided to withdraw the appeal in view the examiner’s answer?
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