Monday, August 03, 2009

McNeil case: CAFC indicates BPAI misunderstood patent claim!

The case IN RE MCNEIL-PPC, INC. is a review of re-examination by the CAFC, and addresses
the issue of "from what day" a response period is measured, date of decision vs. date of mailing.
By a 2-1 vote, it was the latter, and McNeil won on the time issue, and then won on the substantive
patent issue. On this latter point, the CAFC made an understated criticism of the BPAI's (lack of) understanding
of the claim under consideration.

Of the date issue, McNeil obtained a declaration from a former USPTO employee: McNeil, however,
presented a declaration from Jeffrey
Nase, a now-retired member of the Board from 1996 to 2006, who had been employed
by the PTO continuously before that going back to 1973. The Director did not challenge
any of Nase's factual assertions.

Of the substance of patent law matters-->

The Examiner had rejected claims for both anticipation and obviousness: "In light of Sasaki, the examiner rejected claims 1 and 3 as anticipated and claim 4 as obvious. "

Curiously, in the appeal, the obviousness rejection disappeared ["Because McNeil argued claims 1, 3, and 4 together, the Board selected claim 1 as representative."] As a practice note, if one wants to keep all issues viable on appeal, one must argue the issues independently, NOT together.

Turning to the merits, we must determine whether substantial evidence supports
the Board's determination that Sasaki discloses a tampon with the characteristics
claimed by McNeil. See In re Graves, 69 F.3d 1147, 1151 (Fed. Cir. 1995).
Graves is an
anticipation case authored by Judge Rich, involving an appeal of a decision of the BPAI.

The CAFC did not find the BPAI analysis accurate:

The Board determined that Sasaki disclosed "a tampon wherein 'each of the ribs
is compressed less than the fiber core, thereby having a coarser capillary structure than
the fibre core.'" McNeil, 2007 WL 3325022 at *4. It is not entirely clear, however, that
the Board understood McNeil's claim.
In its initial decision, the Board stated, "We find
that Sasaki's Figures 8 and 10 reasonably appear to depict the ribs of its tampon as
being compressed less at their distal ends than at their ends proximal to the drawstring
at the center of the drawn fiber strips." Id. at *3 (emphasis added). McNeil's claim,
however, states that the ribs are less dense than the core, not that the distal ends of the
ribs are less dense than the proximal ends.

The text
-- It is not entirely clear, however, that the Board understood McNeil's claim. --
in light of the CAFC analysis seems to be putting
the situation mildly and reminds IPBiz of the subtle footnote in the Osram (atomic number)

The BPAI did not meet the "substantial evidence" standard:

There is not substantial evidence, indeed, no evidence, that Sasaki discloses ribs
"compressed less than the fiber core" or "a generally cylindrical compressed, solid fibre

**Judge Dyk dissented on the timing issue, and reached back to an 1899 case:

This precise issue has been addressed before and these prior decisions have
uniformly rejected the majority’s approach. In Burton v. Bentley, 14 App. D.C. 471,
1899 WL 16315 (C.A.D.C. 1899), the Court of Appeals for the District of Columbia, a
predecessor of the D.C. Circuit, addressed the time for appealing a decision of the
Patent Office when the mailing date and the date on the decision did not coincide. At
that time, the prior version of the rule required that appeals from the Patent Office “shall
be taken within forty days from the date of the ruling or order appealed from, and not
afterward.” Id. at *1.


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