Monday, March 28, 2011

CAFC smacks down application of Intellectual Ventures

In re Jung and Wood is about US application 10/770,072 and the "Wood" in the caption is Lowell Wood, and yes CLARENCE T.
TEGREENE of Intellectual Ventures is one of the attorneys.

The bottom line of the case: Because the examiner properly established a prima facie
case of invalidity, and because the Board did not act
improperly as a “super-examiner,” this court affirms.

Patent applicants lose.

Procedurally, on September 14, 2005, the examiner issued a first
office action, rejecting all claims of the ’072 application for
anticipation or single-reference obviousness over U.S.
Patent No. 6,380,571 (“Kalnitsky”).

At the appeal:

Jung frames this appeal much as he framed the
appeal to the Board, as a challenge only to the existence
of a prima facie case of invalidity, as distinct from the
ultimate conclusion of invalidity.

Of the prima facie case:

As this court has repeatedly noted, “the prima facie
case is merely a procedural device that enables an appro-
priate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The
Patent and Trademark Office (“PTO”) satisfies its initial
burden of production by “adequately explain[ing] the
shortcomings it perceives so that the applicant is properly
notified and able to respond.” Hyatt, 492 F.3d at 1370. In
other words, the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies
35 U.S.C. § 132, in “notify[ing] the applicant . . . [by]
stating the reasons for [its] rejection, or objection or
requirement, together with such information and refer-
ences as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recog-
nizing and seeking to counter the grounds for rejection.”
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).

The patent applicant was clearly in trouble at the CAFC:

Jung, without any basis, would have this court
impose additional prima facie procedural requirements
and give applicants the right first to procedurally chal-
lenge and appeal the prima facie procedural showing
before having to substantively respond to the merits of
the rejection. Such a process is both manifestly inefficient
and entirely unnecessary. Indeed, Jung’s arguments as to
why the examiner failed to make out a prima facie rejec-
tion are the same arguments that would be made on the
There has never been a requirement for an examiner
to make an on-the-record claim construction of every term
in every rejected claim and to explain every possible
difference between the prior art and the claimed invention
in order to make out a prima facie rejection. This court
declines to create such a burdensome and unnecessary
requirement. “[Section 132] does not mandate that in
order to establish prima facie anticipation, the PTO must
explicitly preempt every possible response to a section 102
rejection. Section 132 merely ensures that an applicant
at least be informed of the broad statutory basis for the
rejection of his claims, so that he may determine what the
issues are on which he can or should produce evidence.”
Chester, 906 F.2d at 1578 (internal citation omitted).


It is well-established that the Board is free to affirm
an examiner’s rejection so long as “appellants have had a
fair opportunity to react to the thrust of the rejection.” In
re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). See also
In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (“In
calculating the overlapping values, the Board found facts
not found by the examiner regarding the differences
between the prior art and the claimed invention, which in
fairness required an opportunity for response.”). Before
the examiner, Jung merely argued that the claims dif-
fered from Kalnitsky, and chose not to proffer a serious
explanation of this difference. The examiner disagreed,
and rejected the claims, equating Kalnitsky’s controller
and the well-charge-level controller in the claims. It was
not until he arrived at the Board that Jung explained the
difference more thoroughly, implying that his claims
should be read as limited to a preferred embodiment
wherein the controller “more or less continuously adjust[s]
the control signal inputs,” in contradistinction to Kalnit-
sky’s reset controller.

An Ex parte Frye is cited:

Finally, Jung argues that the Board gave improper
deference to the examiner’s rejection by requiring Jung to
“identif[y] a reversible error” by the examiner, which
improperly shifted the burden of proving patentability
onto Jung. Decision at 11. This is a hollow argument,
because, as discussed above, the examiner established a
prima facie case of anticipation and the burden was
properly shifted to Jung to rebut it. Moreover, even
assuming that the examiner had failed to make a prima
facie case, the Board would not have erred in framing the
issue as one of “reversible error.” As recently acknowl-
edged by the Board, it has long been the Board’s practice
to require an applicant to identify the alleged error in the
examiner’s rejections, and the Board’s actions in this case
were entirely consistent with that long-standing practice.
See Ex Parte Frye, Appeal no. 2009-006013, at 9-10
(B.P.A.I. Feb. 26, 2010) (precedential), available at
6013.pdf (“The panel then reviews the obviousness rejec-
tion for error based upon the issues identified by appel-
lant, and in light of the arguments and evidence produced
thereon.”). See also Oral Arg. at 22:23-24:23, available at
1019_1142010.MP3 (acknowledging that “reversible
error” means that the applicant must identify to the
Board what the examiner did wrong, but that the Board
reviews the examiner de novo, and the examiner retains
the burden to show invalidity).


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