Incorporations by Reference – Vol. 17

by Ryan Alley on November 29, 2012

in IP News and Commentary

Brief mentions of IP stories floating around in the past couple weeks that I haven’t addressed elsewhere.

-USPTO Director David Kappos announces his departure. [PatentlyO]

- . . . or perhaps his arrival? [IPWatchdog]

-The Republican Study Committee has released a fascinating policy memo suggesting bold reforms to curtail copyright excesses.  [Volokh]

-The Federal Circuit decision In re Lovin was petitioned for rehearing en banc by the Appellant and several amici well over a year ago. Did anything ever happen with this? [PatentlyO]

-IP law does not suffer from a want of commentators and bloggers. Even with the glut of opinion out there, every patent prosecutor should have Karen Hazzah‘s blog All Things Pros on their must-read list. There’s no better resource on how the USPTO is actually applying patent law and policy to applications. For example, her recent post on how the Board is interpreting functional computer claim elements is an excellent view of the Typhoon Touch case in action. [All Things Pros]

-Speaking of IP bloggers, you can vote for your favorite (nominee) in the ABA’s BLAWG 100 poll. [ABA]

Kip November 30, 2012 at 1:54 am

The CAFC denied the Lovin petition a long time ago. (Perhaps listing this denial as one among several other orders in the same document, as I recall?)

In my view, the petition emphasized too much its first argument (that the PTO/CAFC failed to identify an ambiguity in the regulation) at the cost of its second argument (that the PTO’s interpretation is contrary to law).

Lovin, like Jung, is an awful decision.

Ryan Alley November 30, 2012 at 9:49 am

Kip, thanks, that would explain why I was not able to find it. I was thinking the CAFC always listed orders separately, but I guess not.

AAA JJ November 30, 2012 at 9:07 am

The Lovin decision is a reminder to all practitioners and applicants that if the examiner fails to address a claim (other than including its number in the statement of rejection), you need to note that. And you need to emphasize that the OA fails to satisfy section 132 against any claim that is not specifically addressed, and that therefore no prima facie case has been established and the burden has not been shifted to Applicant.

I agree, it’s a horrible decision. But it’s clear that the Fed. Cir. is aware that the PTO is stuffed to the gills with incompetence and is really willing to allow the PTO to shift the burden with minimal efforts.

Kip November 30, 2012 at 4:35 pm

AAA JJ,

I don’t think that will be enough. Lovin (in combination with Jung) basically killed those sorts of technical, procedure, “hasn’t shifted the burden to me” arguments. If the Examiner says nothing about your claim in the final rejection (as in Lovin), and you simply say that the Examiner hasn’t made a rejection – you can lose. This is especially true if the Examiner supplements that deficiency with new analysis in the Examiner’s Answer (as in Lovin). If the Examiner does that, and you don’t file a reply brief to rebut, you can lose – as in Lovin.

The safest approach is to positively explore the teachings of the cited reference(s) and provide at least a paragraph or two of explanation about how they fail to meet the claim language. In the absence of analysis from the Examiner, build your favorite/weakest straw man version that you would like the Examiner to make – and then knock it down. You should have to do this. But Judge Dyk (on both Lovin and Jung) forces us to do so.

Kip November 30, 2012 at 4:37 pm

I meant “[y]ou shouldn’t have to do this.”

AAA JJ November 30, 2012 at 5:05 pm

The trend of what the examiners actually have to do to shift the burden to applicants is ever downward, as evidenced by Hyatt v. Dudas (holding that MPEP 2163.04(I)(B) as written is a lawful formulation of the prima facie standard for a lack of written description rejection), Jung and Lovin. But I don’t think they’ve lowered it so far that the examiner can get away without saying anything regarding a claim and successfully shift the burden. And I don’t think it will ever be lowered to the point where the examiner can say absolutely nothing and shift the burden. But I wouldn’t be surprised if the Fed. Cir. does lower it to that. :-)

I think the mistake the applicant in Lovin made was waiting to the appeal brief to address the examiner’s failure to provide anything substantive regarding the rejection of the dependent claims in question. And then just arguing that the claims recited the features. Should have been more agressive up front.

I ALWAYS file a reply brief. Given the number of awful, lifer APJ’s who like the “silence eqauls assent” cite (to Sullivan v. NYT or whatever that case is), I would consider it malpractice not to file one.

“In the absence of analysis from the Examiner, build your favorite/weakest straw man version that you would like the Examiner to make – and then knock it down.”

Or cite the “shooting arrows in the dark” quote from Oetiker. I’ve been citing Chester v. Miller’s “so uninformative” language recently.

Kip November 30, 2012 at 5:36 pm

“And I don’t think it will ever be lowered to the point where the examiner can say absolutely nothing and shift the burden.”

Well the question is (1) when does the Examiner have to say something, and (2), when does the burden shift? I would argue that we’re already at “the point where the examiner can say absolutely nothing and shift the burden.” Why? Because that’s what happened in Lovin.

Here’s the timeline in Lovin:

1. Final rejection with no analysis whatsoever of dependent claims
2. Appeal brief saying that there’s no analysis of the dependent claims and so no rejection to respond to
3. Examiner’s Answer with analysis of dependent claims
4. Declines to file a reply brief

When do you think the burden shifted to the applicant? I would say 2, because that is where the applicant needs to first present arguments and evidence for all rejections. Notice that if the applicant files the brief and NOAppeal on the same day, then the applicant can benefit from the looser standard for amendments/evidence under 1.116.

The only other option is that the burden shifted at the Examiner’s Answer. But that seems flat wrong and grossly unfair. It limits the applicant to mere lawyer argument in a reply brief. The reply brief is specifically designed to be optional. And the PTO gives the Examiner the option to create new grounds of rejection on appeal (which would avoid these problems). How can the Examiner shift the burden that late in appeal, when the Applicant is already supposed to present arguments and evidence for all rejections in the appeal brief. It just doesn’t make sense. See also the article:

http://www.ipwatchdog.com/2011/11/23/in-re-lovin/id=20568/

“I think the mistake the applicant in Lovin made was waiting to the appeal brief to address the examiner’s failure to provide anything substantive regarding the rejection of the dependent claims in question. And then just arguing that the claims recited the features. Should have been more agressive up front.”

This doesn’t seem to be consistent with what you write above (emphasizing arguing that the examiner hasn’t shifted the burden). What arguments could they have made at the appeal brief stage, when the Examiner gave them no analysis? All they could do is make up a straw man and knock it down, like I suggested above.

That said,

1. I agree: always file a reply brief
2. Thanks for the Sullivan cite about “silence” – wasn’t familiar with it
3. I’m not sure that a mere cite to Chester or Oetiker would overcome the Lovin rule in an appeal brief, for the reasons I explain above. At the very least, you may need to supplement that argument with further arguments in the reply brief, if the Ex.An. fills in the gaps.

AAA JJ December 11, 2012 at 9:21 am

The first time the examiner fails to shift the burden, I address it. I state quite clearly that the burden has not been shifted, and explain why, and then state that I’m not under any further obligation to respond.

6 December 1, 2012 at 9:30 pm

Good ole In re I’m Lovin’ It.

Kip December 4, 2012 at 2:33 am

That made me laugh so hard.

6 December 5, 2012 at 6:33 pm

It is as funny as the first day I posted it every time I read it again.

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