In re Stepan Co. (Fed. Cir. 2011)
by Dennis Crouch
This is an important administrative patent law case holding that when the Board of Patent Appeals (BPAI) affirms a rejection based upon a new factual finding, it must identify the holding as a new ground for rejection. This holding benefits patent applicants because it creates a right to either reopen prosecution or request a rehearing based upon the new ground.
Here, the examiner rejected Stepan's claims as anticipated and obvious. Stepan had submitted a Rule 1.131 affidavit claiming a prior invention date in order to antedate one of the references. However, the examiner gave the affidavit no legal effect based upon the judgment that a prior public use of a portion of the invention qualified as 102(b) prior art because it occurred more than one year before the application filing date.
In the administrative appeal, the Board ruled that the applicant could claim priority to an earlier application and that, therefore the the prior art was no longer 102(b) prior art. However, the Board affirmed the rejection after holding that the prior use was still 102(a) prior art because the content of the Rule 1.131 affidavit was insufficient to prove Stepan's prior invention rights.
Writing for the Court of Appeals for the Federal Circuit, Judge Prost vacated the Board's decision — holding that the Board's factual finding on the sufficiency of the content of the affidavit was a new factual finding that was not a basis of the examiner's rejection being reviewed and, therefore, that the Board must identify the affirmed rejection as a new ground of rejection.
Notice does not focus on the applicant’s arguments divorced from the examiner’s rejections of record that are actually appealed to the Board. Instead, it focuses on the “adverse decisions of examiners” during prosecution which form the basis of the Board’s scope of review. 35 U.S.C. § 6(b). Because Stepan did not have prior notice of the Board’s intent to craft and rely on new findings of fact to support a §§ 102(a)/103(a) rejection and because it failed to identify this rejection as a new ground, Stepan’s notice rights were violated. 5 U.S.C. § 554(b)(3); 35 U.S.C. § 6(b). Had the Board labeled its rejection as a new ground of rejection, Stepan could have reopened prosecution to address the newly-alleged deficiencies in its Declaration with the examiner.
Note: Although this case involves an ex parte reexamination, the principles here apply equally with ordinary ex parte examination. However, the decision will not apply to the new post grant review proceedings under the Leahy-Smith AIA because the review goes directly to the Board (the newly named Patent Trial and Appeal Board or PTAB) rather than an examiner.
AAA JJ said “[I’ll pick 3 data points out of 78 to prove my point; maybe they’ll ignore the other 75].”
“[Then I’ll close the deal with a vague, unsubstantiated conclusion, without citation to any evidence].”
So, how is this type of argument working out for you in Requests for Rehearing?
Oh, sorry, you already said.
“Any way you want to spin it, zero reversals in a year is pretty good.”
Tell that to the APJ’s who just got b!tch slapped by the Fed. Cir. in Leithem, and Stepan, and the recent In re Klein decision.
But as those APJ’s don’t care, and face zero consequences for their terrible work product, they don’t have to consider another endeavor. They can just keep pumping out sh!tty decisions.
“we’re dealing with people who don’t understand the law, don’t want to understand the law, and face zero consequences for not understanding the law.”
Cogent, powerful, persuasive. Until you actually consider the evidence.
According to the CAFC’s own statistics, the reversal rate from the PTO over the past few years has ranged from zero to twenty-two per cent (14 per cent this past year). Any way you want to spin it, zero reversals in a year is pretty good.
Yeah, yeah, I know. The CAFC doesn’t understand the law, either. Nor does the Supreme Court. Especially not the Supreme Court.
I’m beginning to understand how somebody could have a 90+% failure rate. But for those who do, full-time consideration of another endeavor might be in order.
Simple, we’re dealing with people who don’t understand the law, don’t want to understand the law, and face zero consequences for not understanding the law. What do you think happened to the legal ignoramuses who decided Leithem and this case? Think their ratings were affected?
Probably not.
Thanks for the vote simple, but BPAI FYI is correct – I was yanking his chain.
This seems like MM, but doesn’t he have a thing about using sockpuppets?
The simple point here is that working off the current backlog cannot be taken in the vacuum originally presented because that does lead to a nonsense statement. Quite the reverse of the accusation here that everybody understands what BPAI FYI says – I understand clearly what anon is saying. The rest of the post about adding other qualifiers is pretty much straight up nonsense, which only goes to what anon points out.
No …. your reading comprehension leaves something to be desired.
What you are describing is working off the current and the FUTURE backlog. In fact, based upon the current difference between inputs and outputs, the backlog will NEVER be worked off. As such, to the extent that you are relying upon assumption of “‘work off [the] current backlog,” it can only mean the current backlog (excluding any future backlog) since the current and future backlog will never be worked off.
“the fact that the body cannot solely focus only on the existing backlog.”
Why do you say that? If the BPAI works on FIFO, the current backlog will be worked off before they touch the future backlog. Nothing nonsensical about it.
“There is no way ….”
Sure there is, it is called FIFO. Look it up. FYI — the USPTO and the BPAI mostly work on the FIFO principle. Although they are known to take some cases out of turn, they are rare instances.
FYI — smart readers don’t need all those qualifiers, and writers who care about their readers don’t feel the need to include all the assumptions into their statements.
For example, I see you didn’t take issue with the fact that I’m only discussing ex parte appeals (reexaminations and interferences are excluded). Additionally the new law is going to put additional burdens on the BPAI, so my at the “current rate” supposedly would need to be qualified as well. I guess I have to qualify my statement on the BPAI doesn’t have any attrition or additions — otherwise that will affect the current rate as well. I guess I also have to assume that there are the same number of working days in the year — 2012 is a leap year so we are adding another day — that’ll certainly affect the current rate as well. Sure … I could put all those unnecessary qualifiers into my statement, but why mess with a pretty f’n simple statement that was easily understood by everybody who read the post except you?
“Cogent, powerful, persuasive. I just don’t understand how you guys could have a 90+% failure rate.”
The USPTO cherry picks what cases go to the BPAI (and most don’t that get appealed) yet loses at nearly a 50% clip. Not impressive.
“Probably not.”
Cogent, powerful, persuasive. I just don’t understand how you guys could have a 90+% failure rate.
Fix tag please.
BPAI FYI, No…
The correction is still needed. Obviously.
There is no way to have a body, who is responsible for the current backlog and its continuing flow of input to be able to work off that “current backlog” without recognizing – and thus explicitly including, as I have so helpfully done – the fact that the body cannot solely focus only on the existing backlog. Your choice of words of “work off CURRENT backlog” is NOT sufficient for the task, as such would pre-suppose an impossibility and thus render your statement nonsensical. So you have a choice, continue to argue that you are correct, but making nonsense statements, or (correctly) graciously accepting my correction.
The appropriate response from you is: “Thank you.”
“Corrected.”
No … that was implied when I wrote “work off CURRENT backlog.” By stating CURRENT backlog, I was excluding any future backlog.
“How long it will take to work off current backlog at current pace with no new incoming cases”
Corrected.
It’s pretty evident that the correction added is no small concern, as the mountain of work continues to pile up at the Office (can anyone say paper shuffle?).
If nothing changes at the BPAI, it’s last year of existence will see its backlog grow at the given 7% differential to be 25,640 cases of applicants waiting for justice.
Of course, “if nothing changes” is a losing bet, as there will be plenty of changes in the next year as the Office must post for comment a tremendous amount of information in the transition mandated by the AIA. The birth of the PTAB will be closely watched and ther ewill be significant reactions to whatever happens.
BPAI’s final numbers for FY2011 were just posted.
Cases Received FY2010: 12380
Cases Received FY2011: 13501 (+9%)
Cases Disposed FY2010: 7133
Cases Disposed FY2011: 7292 (+2%)
Backlog FY2010: 17754
Backlog FY2011: 23963
How long it will take to work off current backlog at current pace: 3 years 4 months
Liking–
The “newness” of the grounds is not judged with reference to previous grounds, but to whether or not the applicant/patentee has had notice of, and the opportunity to respond to, those grounds.
In my example, the petition would in fact be granted on new grounds with respect to the applicant’s rights of notice and response. If 102 and 103 invalidity theories are advanced by the petitioner, supported respectively by a single 102 reference and two 103 references, and the PTAB decides invalidity on a 103 basis using one of the 103 references and the 102 reference, that is a new ground of rejection insofar as the applicant has had neither notice of, nor the opportunity to respond to, the specific 103 argument relied upon by the PTAB.
One can argue whether or not this type of action will be within the jurisdiction of the PTAB under a Leahy-Smith post-grant proceeding, inter partes or ex parte, but that is not the specific issue addressed by Dennis’ post. Leahy-Smith definitely broadens the jurisdiction of the PTAB beyond that established in 35 USC 6, and the real question is what the, sort of, necessary and proper powers of the new PTAB will be–can they, upon a finding of invalidity on “new grounds”, give effect to 5 USC 554 by handing the matter over to an examiner to enable and process the patentee’s response? Or, to give effect to 5 USC 554, MUST the PTAB now make what amounts to a preliminary finding of invalidity during the course of its proceedings, and give the patentee notice thereof and the opportunity to respond before the conclusion of those PTAB proceedings?
In any case, the APA must be honored, and that’s what this opinion was about. That will not change with Leahy-Smith–it is not a question of “if”, it is a question of “how”.
My guess is that the PTAB’s authority will be limited to only decisions accepting or rejecting the specific theories of invalidity advanced by the petitioner.
“Sorry, Liking, I guess I’m just not falling for the blog-bait on this site anymore. I’ve grown conditioned to the lures.”
Not sure what you are doing — apologizing or accusing me of being a troll?
Regardless, my point (simple as it was) is that new grounds is a grounds different than the grounds to which the applicant/patentee responded to when the application was rejected. If it goes directly to the renamed BPAI, there isn’t a first grounds from which the new grounds can differ. Whatever the BPAI initially comes up with is the first grounds.
Now you can get other “new grounds” after that, but I think this was Dennis’s point when he highlighted that “the review goes directly to the Board.”
Another point on “new grounds,” the real issue is whether Applicant/Patentee had an opportunity to respond to the grounds of the rejection. In the example you listed above, the granting of a petition on “a combination of submitted references different than that proposed by the petitioner” woud not be a new grounds, because Applicant/Patentee will have the opportunity respond to these grounds.
Does this mean that the first instance of an adverse grounds (and any first instance of presentation of these adverse grounds) will be by the new board?
The post-grant is obviously dealing with a patent, albeit with the new law a patent isn’t the same as today’s patent until the expiration of time for the post-grant process. I can see in these cases that there is not really an examiner involved (anymore). The “examiner” is the new board itself.
But what about inter partes? Is the new board the “examiner” here too? Is this in addition to the existing examiner?
What are the due process controls for applicants in this new scheme (I realize that the regs have not yet been written, so this is somewhat of a rheotrical question) when the applicant disagrees with the “examiner” when face with that “examiner’s” findings for the first time. Does an applicant somehow have less due process protection in a case where he has survived the first examiner and achieved patent rights?
Dennis–
What “rule” are you talking about? Are you talking about the “ruling” in this case?
If that is the “rule” to which you refer, what makes you think that it is limited “to the procedure for reviewing an examiner rejection” in view of 5 USC 554? Certainly not 35 USC 6.
“”new grounds” issues will be seen in a different light.”
Not necessarily. What is the difference, in view of 5 USC 554, whether a ground of rejection articulated in the first instance by the BPAI/PTAB is made upon review of an examiner’s findings or upon review of the submissions of interested parties in inter partes post-grant review, for instance? I don’t think there is any difference. “New grounds” are new grounds–the question is whether or not the PTAB has the authority to decide on those new grounds and, if so, what the practical effect of the decision is.
For instance, under Leahy-Smith, a petition for review can be made based upon 102 or 103 grounds, originating from a patent or printed publication. Let’s say the petitioner makes a case on both 102 and 103 grounds, combining multiple references in the 103 case. Would it not be within the purview of the PTAB to grant the petition upon a 103 finding based upon, say, a combination of submitted references different than that proposed by the petitioner?
That is the analogous situation. The question would be what would happen at that point if the PTAB were to decide based upon such a “new ground”, since the patent is already granted and the case can’t be sent back to an examiner. Would the PTAB suspend its ruling, and “send the case” back to itself for rehearing on the “new ground”? I don’t know.
But 5 USC 554 should apply, and should be respected. There might be some provision in administrative law that restricts the PTAB, when acting under Leahy-Smith, to consideration of only those specific theories advanced by a petitioner, in order to preserve the right of notice in 5 USC 554, among other things. This gets us into the murky waters of whether the proceedings are adversarial or not, and what the precise role of the PTAB is, in a legal sense, and what its legal obligations are to the interested parties.
The answer is far from being as clear as you would suggest, IMHO.
There will be no adverse examiner decision under the new inter partes and post-grant review systems that will become effective in September 2012.
IBP – I just saw this line of commentary and I suspect that you are missing my point, which is quite narrow.
The new inter partes review and post-grant review proceedings are not examiner-based. Instead, those proceedings will be handled by the re-named Patent Trial and Appeal Board (PTAB).
In those cases, PTAB is not charged with reviewing rejections issued by an examiner but instead will be developing a factual and legal decision on its own.
In this context, it simply does not make sense to apply a rule that applies to the procedure for reviewing an examiner rejection.
You cited 5 USC 554. That provision of the Administrative Procedures Act requires that a party be given an opportunity for hearing, etc. Those requirements of the APA regarding formal adjudication will certainly still apply to Board decisions. However, the Board will no longer be limited to “review[ing] adverse decisions of examiners.” And, as a consequence “new grounds” issues will be seen in a different light.
Does this make sense?
“ between the grounds because the Examiner will never have presented a grounds.”
If an application has never had any grounds presented by an Examiner, why again would the applicant be appealing to the board (new or old)?
Isn’t an application that has never had any grounds presented by an examiner called a Patent?
Sorry, Liking, I guess I’m just not falling for the blog-bait on this site anymore. I’ve grown conditioned to the lures.
Liking–
Your analysis is vastly incomplete. That sort of “at first glance” conclusion is unworthy of legal consideration, and is something of the type of statement expected from a layman, not an attorney.
Take a look at 5 USC 554, and Leahy-Smith, and think about it some more.
And I’d like to hear what Dennis thinks, since he is the one who advanced the suggestion in the first instance.
“I will ask again: can you please explain your statement.”
I cannot speak for Dennis, but I think the answer is obvious. A “new grounds” of rejection, as discussed in this case, is a grounds of rejection, at the BPAI, that differs from the rejection by the Examiner.
If the “new post grant review proceedings under the Leahy-Smith AIA because the review goes directly to the Board,” then you don’t have a difference between the grounds because the Examiner will never have presented a grounds.
Without getting into it, for good reasons, I believe the statement to be totally incorrect.
I will leave it to you to justify your conclusion, if you find it worth your time.
If not, the statement can be ignored for obvious reasons, and will remain as yet another example of something you have written on this blog that is, in the words of attorneys from Morgan Lewis, “unreliable and unsubstantiated.”
SMcP
I just when through Finger, looking for the Natchez Trace. Should have stopped and talked. Ever notice how the nozzles tremble on the gas pump when the train goes through town? It has to make you wonder.
anon: I wonder what you mean by “that qualifies…under.” Do you have something in mind that would be a disclosure, but would not qualify?
Great question and one that is going to burn up a lot of litigation cash. What is a disclosure under AIA?
The interplay between sale, secret use w/ commercial exploitation, non-secret use with and w/out commercial exploitation, public use, etc. is very arcane up to now, but it’s going to have to be sorted out. They are all disclosures, except maybe the “etc.”.
Check out CAFC on secret use w/ commercial exploitation = public use. Invitrogen Corp, 2005
Some AIA commentators are suggesting that only a publication would qualify as a disclosure under new 102(b)(1)(A), but I don’t see it. The CAFC’s definition of “disclosure” is not so cut and dried.
As you note, there is going to have to be some way for an applicant who has made a disclosure less than 1 year prior to the EFD to establish that point, either in the initial application, in a “swearing behind” sort of affidavit, or some other way.
anon: “Even though A disclosed, B’s filing prevents A from obtaining a patent (in some interpretations of the exception).”
That could very well be right.
The statute only bars one who files after another’s disclosure from getting a patent, it doesn’t bar one from filing, and the filing is the kiss of death under FTF. Is a first filing that cannot result in a patent enough to cut off the patent rights of the inventor who disclosed?
One would hope not. Otherwise, the whole idea that one can disclose 1 yr. prior to filing is bogus because any troublemaker could cut that person off by jumping in and filing. Even if a derivation proceeding is called, the troublemaker could just fold his cards and be happy that his filing alone was enough to prevent anyone from getting the patent.
Certainly Congress didn’t intend that an inventor’s disclosure followed by timely filing would be a kiss of death. But Leahy did such a psss poor job in drafting these statutes, these points won’t be clarified for a decade; i.e, another lawyers’ full employment statute.
I chose Red because I was understanding the Red seemed to care more about what the Constitution was all about.
I also am so angry at Dick Egan that Blue was a knee jerk reaction to Red. I really thought this Country cared about the rule of law. But I am sure there is a Lawyer out there somewhere that will!
But it seems that it is the color Green. 60 Years of Green. I am sure now that when Marcella died they would have told me who I was.. if I am adopted.. if Green was not the color. So I must be Adopted. Just like the last 16 Years of my Life .. Elementary is easy when you dissect all that has gone on. It is the only thing that makes sense to my BOX!
No Notarized Statement
The October 19th letter that where I sit seems to be the Argument in the room. If the cuff Drawing was all that important, and not (a universal Fender) as he stated then it would also be as unimportant as the letter stated in the Blue application where the first Claim Claim 1. A fender for a “BOAT!” Thin wide and elongated! Where I sit.. Thin wide and elongated..
_ _ _ _ ___
means just that. !_!_!_!_! or !___!. It is all one Fender.
So why did I cry over and over about the fact that what I thought B had done (abandoning my Application) that surely wasn’t even there)in the “First File of B’s making it look that way, and then coercing me into believing it. Only to slap a Strap I said no to on top of claims that are invalid? when they knew they were fired because I got no Office Action because that is how they played me.
And then we have the big Q who I know now rubs shoulders. And where I sit had no Right controlling me while rubbing those Shoulders! Jan 10 2012 plenty of time!
And my Copy Rights Those are mine! So why were they altered and dated later?
And my first Trademark why was it abandoned. And why is H.F. still there?
And how can someone erase me in the SS Administration saying I am dead…And then I might add (possibly do it for financial reasons) only to the delight of my Boxers.
And claim I assigned my Rights?
And on top of all that Knock me out and RAPE me! Was that for frosting?
So Dick Egan, I trusted you, enough said!
I could go on and on But I’ll wait till I get an Atty. that will work within the confines of the US CONSTITUTION!
Probably not.
I’m thinking Fail Safe measure… An Examiner that gets paid well because he knows the claims need to be addressed… And if he doesn’t then it was the Attorney that should have known how to write them.. so he writes.. Examiners says oh no.. do it again… Not to mention all the other facts that show both were truly blind folded by design.
You know Fail Safe.. Fail Stop.. or is it Mail Stop? I’m so confused. Circle this Jerk over and over till Pro Se .. I thought that meant I was in charge of my own destiny.. Not the other way around? And this has been going on for over Sixteen Years.. My Sides are Iron for Sure. This is not evveeeeenn about my IP. this is about what they wanted. My Life in a BOX.
Shhhh MaxDrei,
Don’t give away the secret.
If people realized that less than one percent of patents are actually litigated, the boogeyman of threatened lawsuits (which includes that dreaded “T” word) would be far less effective for introducing large scale changes to patent law, and our beloved leaders in Washington (the well-greased Congressmen and Senators) would have pockets far more empty than they are today. You do not really want to have those leaders turn their angry eyes towards you – who knows the US may decide to make laws governing behavior in other countries (oh, I don’t know, maybe like Trade Secret behavior in China, for example).
Follow the money – but don’t get in the way.
This discussion reminds me of that multitude of opposition cases in First to File Europe, in which there is a non-patent but nevertheless enabling prior disclosure that the EPO did not know about when issuing the patent.
Sometimes the novelty attack is even based on a prior use of something within the scope of the issued claim.
Of course, the patent stands, valid, presumed valid, till somebody chooses to dispute its validity. Often, that never happens. The involved parties usually find better solutions.
“Inventor A publicly discloses his invention in a publication that qualifies as a public disclosure under new 102(b)(1)(A).”
I wonder what you mean by “that qualifies…under.” Do you have something in mind that would be a disclosure, but would not qualify?
“Of course, examiner doesn’t know about A’s disclosure so she boots A’s appl in view of B.”
This does seem like a type of event that will occur with great frequency unless some sort of claim to a “disclosure date” can be made a part of the initial filing process. The Office may even decide to require the applicant to put on record any such first public disclosure at the time of filing. I wonder what would happen if applicants leave that line blank, and later claim an early disclosure (similar to a correctetable claim to priority?!?)
“n the side, it seems like there is some potential here for some entrepreneurial soul to set up an online publication so that inventors can make a “public disclosure” [say for $25] to give them that extra 1 year under new 102(b)(1)(A).”
That would entirely depend on the ultimate interpretation of the exception.
In your hypo, B did not derive and B filed before A. Even though A disclosed, B’s filing prevents A from obtaining a patent (in some interpretations of the exception). In fact, in the “only personal” interpretation, no swearing behind or affidavit of any kind would help, (especially given that currently we have B’s delcaring that he did not derive) and the A disclosure is shown for what it is – quite meaningless (for A’s patent hopes). We might have many situations where both A and B are hosed as to obtaining patents, but the world at large gets both disclosure and (otherwise non-functional) published applications.
One massive “Why buy the cow when you can get the milk for free” progam!
I would imagine in your scenario, that foreign filing is not being pursued (although that would be problematic in the hypo, if foreign filoing was desired, the hypo could be appropriately altered).
If one were to look at the subset of requests for rehearing where the applicant asked that an affirmance be designated a new ground of rejection, one would, apparently, be surprised.
And Babble Boob,
When my husband got to comfortable with the cushion that wasn’t his you set your Trap…. TOO BAD I had money in my Account. RAT ATAT RAT, RAT ATAT RAT. And look after all was said and done… The Doctor said I KNEW IT! It’s empty.
So Babble, was it you that concocted the story to tell me I had a double Patent, only to make it a real one? Cool move. But if you read my Files and what the Bars were given you will see the Circular BS is a Buzz Saw going straight through your head. I can hear it listen.. RAT ATAT RAT, RAT ATAT RAT.
“Rule 131 will eventually end under the AIA.”
Paul,I wonder if it will end . . . it will certainly be grossly altered, but I can see at least one pseudo-swearing behind scenario in AIA.
Inventor A publicly discloses his invention in a publication that qualifies as a public disclosure under new 102(b)(1)(A). 1 year later he timely files a provisional. 1 year after that he timely files a regular. He then seeks suspension of examination for a year.
When the examiner finally gets to the appl., 4.5 years after A’s initial disclosure, she finds that Inventor B filed an appl. just 6 months after A’s disclosure and that appl is pending. Or maybe it has issued. Of course, examiner doesn’t know about A’s disclosure so she boots A’s appl in view of B.
Assume B invented independently of A; therefore, this is not a derivation situation. B never saw A’s disclosure. A’s disclosure cuts B off under the new 102(a)(1) without the need for a derivation proceeding.
How does A make the point that B is SOL?
It seems that A will have to sort of “swear behind” B’s filing date in order to get his prior disclosure into the record, and an affidavit under an amended Rule 131 (or something along those lines) will still be needed to do that.
On the side, it seems like there is some potential here for some entrepreneurial soul to set up an online publication so that inventors can make a “public disclosure” [say for $25] to give them that extra 1 year under new 102(b)(1)(A).
“Of course, it’s extremely important that we not discuss what percent of requests for denials of rehearing are frivolous, at best.”
Of course, it would be nice to not discuss inane things or write frivolous posts … but that’s never stopped you in the past.
Any patent prosecutor with experience at the BPAI sees the value of this case and what it means to practice before the BPAI. If you don’t, just avoiding putting a foot in your mouth or a sock on your moniker and find someplace else to troll.
That would be “requests for rehearings”. Lulz overboard.
Of course, it’s extremely important that we not discuss what percent of requests for denials of rehearing are frivolous, at best.
“I see. One denial means there is a 90+% chance of failing.”
Have you ever filed a Request for Rehearing or 10 or 20? If you have you wouldn’t be doubting those numbers. Regardless, good case law was made, and I’m the happier for it.
“And it took about 10 seconds.”
Woo hoo … you can use an internet search engine.
Sarah, buck up, girl, and face it. You actually don’t exist. You never have. You are a robo hacker throwing random sour words into the PO blender to concoct syllabubs, which you serve tirelessly to thirsty readers who don’t read you because they know you don’t exist. What you see in the mirror is the ghost of Sarah future as imagined by Mickey Spillane.
Did I ever tell you the story about when we opened up an Account at the Bank?
We waited a long time to open up an Account that would award us a certain amount if we kept at least what we opened the Account with. And when it came time to give my information, a girl named Sarah could not find that I even existed. Imagine my distress. Of course I thought, this.. oh here we go again. And you know, it truly was a moment when I again knew something was going on in my life that could only be explained in SSN terms. But I never knew why. Like I was dropped down from the Sky. Like I never existed. like the Outer Limits… Perimeter!
If I said NO to the DEVICE APPLICATION!
And it was UNDERSTOOD that I had fired Them. And the reason so elementary “Watson” is because I never got an OA on the DEVICE. AND THIS IS BECAUSE THEY KNEW THEY HAD BEEN FIRED.” AND IF THEY KNEW THEY HAD BEEN FIRED, WHY ALL THE CIRCULAR BS? SO I SUPPOSE THIS ALL TELLS AN EVEN BIGGER STORY, THE REASON THEY DIDN’T WAS BECAUSE THEY KNEW THE WHOLE THING WAS A SCAM TO JUST STEAL MY PATENT(S).
Now I have two questions.. Who gave up the STRAP that was a secret because I never even showed it to Him, and who OK’D it?
“ finding one grant was more than sufficient to demonstrate error.‘
So I see that math is not your strong point either.
And it took about 10 seconds.
Based on the data you presented in support of the “90+%” theory, finding one grant was more than sufficient to demonstrate error.
“I found a grant of a request to designate a new ground of rejection.”
Proud of you.
I found a grant of a request to designate a new ground of rejection. So there’s a 50/50 chance of success.
btw, when you do your statistics, count requests for designation of new grounds separately from requests on the merits.
No, you really don’t see. I guess if Dennis has free time on his hands he can do a study of the success rate of requests for rehearing. But don’t be shocked when his research indicates that about 90+% of requests for rehearing are denied.
You could also read the decision on the request for rehearing in In re Leithem and see for yourself how ignorant and/or arrogant the APJ’s really are, and then ask yourself what benefit there is to be gained by asking for rehearing from such a bunch.
Up to you.
No clarification forthcoming?
That is, unfortunately, unsurprising.
I will ask again: can you please explain your statement.
I see. One denial means there is a 90+% chance of failing.
Why waste your time and money on requesting rehearing when it has a 90+% chance of failing?
Because it’s not that expensive and doesn’t take that much time.
As for “90%+ chance of failing,” I suppose you could ask the same question about the pending claims in this case.
They could have requested rehearing. Just like the applicant in In re Leithem did. And they could have been told by the panel of arrogant APJ’s that there was no new grounds. Just like the applicant in Leithem was told. And then they would have had to file a Fed. Cir. appeal anyway. Why waste your time and money on requesting rehearing when it has a 90+% chance of failing?
There are only two explanations for the behavior of these APJ’s: 1) they really don’t know what constitutes a new grounds or 2) they do know, but they don’t care, and they’re going to do the typical backstopping of a lousy examiner rejection that others have noted and not designate it a new grounds on the hope that the applicant won’t appeal to the Fed. Cir.
Neither explanation reflects well on the BPAI.
If you listen to the oral argument in Stepan Co., the late Judge Friedman, who did not participate in the decision, was troubled that the applicant had not requested rehearing at the Board. It was a risky appeal.
If the applicant had done a little research regarding the disposition of Board requests for rehearing to designate an affirmance a new ground of rejection, the money for the CAFC appeal might have gone for product development instead of lawyers. After all, what did the applicant gain at the CAFC? No more than what likely would have been gained by a request for rehearing at the Board.
Has that worked for you?
In order for the panel of APJ’s to designate a grounds as new, they would need to understand the law. As many of them do not (see, e.g., In re Leithem), I’m not sure that strategy would be very effective.
I’d be interested in hearing your results.
After getting burned on a petition for rehearing, started putting in a statement in Opening Briefs requesting the BPAI to explicitly state, if not allowed, whether a ground was a new ground and if not, why. At least brings awareness and gets something in the record.
Preach it, brother!!
“However, the appeal was risky because the Fed. Circuit panel could have chosen to follow its own precedents and not entertain arguments that could have been raised below.”
The rules don’t explicitly describe the mechanism by which Appellant is to argue a new grounds of rejection. As such, you are (improperly) assuming that these arguments could have been raised below.
37 CFR 41.52(a)(1) states that “[t]he request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” An argument concerning new grounds does not fit within this narrow description of what is to be argued in a Request for Rehearng.
“Thus, the Fed. Circuit was helping out an applicant that had put itself into a bad position.”
How was the Appellant putting itself into a bad position? It was the BPAI that raised the issue FOR THE FIRST TIME at the time of the decision. I cannot see how it was the Appellant’s fault?
FYI — you can appeal procedural defects by the BPAI.
Finally — as I’ve noted before, getting satsifaction at the Federal Circuit is FAR MORE LIKELY than getting satisfaction with a Request for Rehearing.
Actually, I’m assuming that the BPAI would have recognized their error and I’m also assuming that the BPAI would not have recognized their error.
True, the rules in effect at the relevant time did not require a request for rehearing to preserve the argument that an affirmance should have been designated a new ground of rejection. However, the appeal was risky because the Fed. Circuit panel could have chosen to follow its own precedents and not entertain arguments that could have been raised below, but were not. But following precedent would have yielded a hard result in this case, since the applicant can’t file an RCE in a Re-Exam. Thus, the Fed. Circuit was helping out an applicant that had put itself into a bad position.
The poster “history buff” is another proud graduate of the MM Malcolm Mooney School of Critical Legal Thinking.
“Suppose the applicant had requested rehearing at the Board. If the panel agreed that new grounds of rejection should have been designated, then rehearing would have been granted to that extent.”
True … but you are assuming that the BPAI would have recognized their error when pointed. I don’t give that much credit. I say this from experience, not speculation.
Also, as pointed out in the Federal Circuit opinion, they were not required to file a Request for Rehearing. In fact, the latest version of the Rules governing the BPAI have been changed to include an explicit statement that a failure to designate a new grounds is a valid reason for filing a Request for Rehearing.
Suppose the applicant had requested rehearing at the Board. If the panel agreed that new grounds of rejection should have been designated, then rehearing would have been granted to that extent. The designation of new grounds would have given the applicant the right of entry of new evidence and/or amendments (which sends the application back to the examiner). If the panel disagreed, applicant could still appeal but not have to sweat whether the CAFC would consider its arguments (because they were raised below). History would still be made.
I doubt if a rehearing would held, because a defective Rule 131 declaration either needs to be re-done with adding better evidence [too late to do that at the Board] or dropped in favor of new arguments and evidence distinguishing that prior art. Also, as “liking it” says the odds of winning a Board reconsideration are slim. [Unless there is something as dramatic as a new CAFC decision on point, like this one.]
“In this case, the end result might have been the same had the applicant merely requested rehearing of the decision at the Board, thereby avoiding an appeal.”
You caught upon the key word — “might.” The BPAI doesn’t like to admit it is wrong. I would like to see Dennis do a study on the result of Requests for Rehearings. My guess is that 90+% are denied.
FYI — all you need to do is look at the solicitor’s arguments. The BPAI is under the impression that so long as the same statutory grounds and references are cited, there isn’t a new grounds of rejection.
“was just helping out”
What kind of history are you a buff at? It certainly isn’t legal history. Or do you not realize that avoiding an appeal is not the way to make history (and make certain actions stop).
Seems like the Fed. Circuit was just helping out an applicant that had put itself into a bad position. Normally, the CAFC (and most courts of appeal) will not consider arguments that were not raised below. In this case, the end result might have been the same had the applicant merely requested rehearing of the decision at the Board, thereby avoiding an appeal.
Both this case and In re Leitham are a win for Appellants at the BPAI. The BPAI just loves to backstop bad rejections (by Examiners) with new findings, new claim constructions, new analysis. I don’t blame them — they are trying to make lemonade out of lemons. However, the BPAI does all this without designating all this new analysis as “new grounds.” These two cases, however, should put a stop to this game playing.
The BPAI will either be forced to designate more decisions as “new grounds,” which should preserve PTA and also make subsequent arguments before the Examiner easier to make or let bad rejections be reversed.
“I would think that a mere letter to the director may have resolved this issue…”
You’d be thinking wrong then. As usual.
“It’s funny that the PTO would have taken the position that they did in this case…”
Trust me, we’re all laughing at the Solicitor’s “position” in this case.
Rule 131 will eventually end under the AIA.
But if examiners did a better job of reviewing Rule 131 declaration sufficency to begin with, this and lots of other unfortunate situations would not occur until then. Especially, the way some applicants have been misslead into over-using 131 oaths by the lack of adequate examiner reviews as to what proof of a “prior invention” really means under 35 USC 102(g) and how rarely such patents will survive when tested later. That is, when patents obtained with a 131 oath turn out to be an erronious assumption that the cited prior art was not prior art, and that it was never distinguished over. Including the fact that a 131 oath only swears behind the filing date of a prior-filed application, not its unknown, and usually early, invention date.
It’s funny that the PTO would have taken the position that they did in this case because the official policy is that if you’re changing the grounds from 102a to b or vice versa then it’s a new grounds and unless the applicant wants to proceed up the chain then you send it back down so to speak. And the 103 is plainly based on references avail. under a or b in this case.
I would think that a mere letter to the director may have resolved this issue cheaper than sending an appeal to the CAFC. Either way, good to have that all in a modern decision.
“This new ground of rejection is visible from outer space”
Seriously.
Dennis: “However, the decision will not apply to the new post grant review proceedings under the Leahy-Smith AIA because the review goes directly to the Board (the newly named Patent Trial and Appeal Board or PTAB) rather than an examiner.”
Please clarify.
Because we remand to the Board, we express no opinion regarding the parties’ arguments as to whether Stepan’s showing of commercial success lacks a nexus with the claimed invention. Nor do we express an opinion regarding the sufficiency of Stepan’s Declaration in antedating Singh as § 102(a) prior art.
Seems like the PTO is trying to do Stepan a favor. Oh well. I guess if there is giant prize to be had for filling up the cup, might as well just keep pxssing in the wind.
This new ground of rejection is visible from outer space.
The associate Solicitor that argued this dog to the court is the same one that argued the In re Leithem dog ofa case a week or two back. She needs a vacation.
PTO closed today?
The willingness of the Solicitor’s office to embarrass itself in front of the Federal Circuit never ceases to amaze.
Comments are closed.