You probably read the IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020) opinion and saw reference to the appeal concerning a five-reference rejection:
It is unclear why the Board found a skilled artisan would be motivated to combine the five separate references. It is also unclear precisely what the Board was using the different references for in this five-reference rejection.
IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020)(slip opinion at page 6 ).
There is more to the story. During the oral argument, Judge Moore highlighted that the rejection was a five-reference rejection and the concern that raised about hindsight bias:
So, here’s my problem — I feel like the Board’s opinion, for me, is troubling because it’s five references with wildly differently designed hearing aids. And, I don’t even understand really what it’s picking from some of the references that it says are missing in the primary reference. I don’t understand why it’s motivated to go to some of those references. And, I feel like there is a lot of hand-waving.
And, what I’m worried about is a five-reference rejection is the hindsight bias concern of just picking and choosing elements from lots of different random prior art and saying they work together. But here it’s even worse than that because I’m not sure which elements are being chosen from some of these references. I’m not sure what some of these references even add to the primary reference. That hasn’t been made clear to me. So, I am a little bit veiled in my understanding of the Board’s analysis.
Oral Argument of IN RE ANOVA HEARING LABS, INC., No. 2019-1507, beginning at 24:28.
But the limits of the drafters’ imagination supply no reason to ignore the law’s demands. When the express terms of a statute give us one answer and extratextual considerations suggest another, it’s no contest. Only the written word is the law . . . .
Bostock v. Clayton County, Georgia, __ U.S. _ (2020)(slip opinion at page 2).
Instead, when Congress chooses not to include any exceptions to a broad rule, courts apply the broad rule.
Bostock v. Clayton County, Georgia, __ U.S. _ (2020)(slip opinion at page 19).
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
It is always interesting to listen to the judges at the Federal Circuit express some reticence to taking judicial notice of something at the appellate level. In the oral argument of PEERLESS INDUSTRIES, INC. v. CRIMSON AV, LLC, No. 2018-2021 (Fed. Cir. June 2, 2020), Judge Moore was making a point to the parties about the court’s inability to entertain certain arguments when the topic of judicial notice with respect to Amazon.com being one of the largest retailers in the country came up:
In an oral argument from a few years ago in HIMPP v. HEAR-WEAR TECHNOLOGIES, LLC, No. 2013-1549 (Fed. Cir. May 27, 2014), Judge Lourie commented about judicial notice, as well:
Compare those comments to the court’s practice in performing a de novo review, under Alice Step 1, of whether a claim recites an abstract idea. You can decide for yourself whether you think the court is performing that pivotal Alice Step 1 analysis with the same safeguards it applies to taking judicial notice.
It would be helpful if the USPTO would publish guidance on how a §101 expert from the USPTO could be called in to assist an examiner during prosecution of a patent application. I was listening to the oral argument of BYTEMARK, INC. v. MASABI LTD., No. 2019-1628 (Fed. Cir. Feb. 10, 2020) yesterday and was interested to hear that the examiner had called in James Trammell as a section 101 expert during prosecution. The consultation between the examiner and Mr. Trammell resulted in allowance of the patent. It appears that the consultation with Mr. Trammell was initiated by the examiner and not the Applicant; but, one could easily imagine applicants requesting such conferences. It would certainly streamline prosecution in many instances.
In the Notice of Allowance, the Examiner noted the conference, stating:
You can read Bytemark’s brief discussing the conference here:
Back in 2011, I noted here that Judge Bryson argued many times at the Supreme Court, before he was appointed to the Federal Circuit. I believe that his first argument in front of the Supreme Court was PC Pfeiffer Co. v. Ford, 444 U.S. 69, 100 S. Ct. 328, 62 L. Ed. 2d 225 (1979). You can listen to his argument here:
One thing that I thought was interesting about the argument was the questioning by the Justices as to whether the “Director”* and the “Board”** were separate entities for appellate review. Here is part of the transcript relating to that exchange with then-attorney Bryson:
William H. Rehnquist:
Mr. Bryson, are those two separate entities or one entity for purposes of appellate review, the Director and the Board?
William C. Bryson:
For the purpose — well, they are clearly two different entities. The Director is the delegee of the Secretary of Labor who is charged with administering the Act and appears as a party seeking to in this case support the Board’s order.
Now, perhaps I didn’t understand your question–
William H. Rehnquist:
Where is the Director authorized to be a party in these proceedings? As I read Section 921 (c), application can be had at the Court of Appeals to set aside an award of the Benefits Review Board and copies are to be served on the Board and other parties. I can certainly see why the Board would be a party. Why is the Director a party?
William C. Bryson:
Well, the Director is designated to defend the Board’s orders and I do not know —
William H. Rehnquist:
By whom?
William C. Bryson:
I believe in the statute, there is a provision which provides —
William H. Rehnquist:
In the statute?
William C. Bryson:
In the statute there’s a provision which provides that the Secretary of Labor shall assign attorneys to administer the Act and to — I believe it says to defend the Board’s orders as well.
Now the —
William H. Rehnquist:
Why wouldn’t the Board nonetheless be the party, albeit defended by attorneys assigned by the —
William C. Bryson:
Well, there have been some cases in which the Board has been named as a party. Some of the cases — it’s come to be the fashion to characterize the Director as the party, but it could well be the Board as in the National Labor Relations Act cases.
William H. Rehnquist:
And you feel that’s immaterial?
William C. Bryson:
Here, because what happened here although there is some dispute as to whether the Board has the power — excuse me, the Director has the power — to seek review of a Board order which is contrary to the Director’s position — in this case, it was the Director’s position and the private party’s position that was sustained in the Court of Appeals and sustained in the Board, so that the Director’s standing is —
William H. Rehnquist:
There was no internal inconsistency?
William C. Bryson:
That’s right, no, not here. There have been cases in which there is internal inconsistency, but not here. In fact, the Board and the Director from the beginning have taken the same position with respect to the definition of the terms longshoring operation and maritime employment ….
You can listen to that excerpt here:
*Director of the Office of Workers’ Compensation Programs of the United States Department of Labor (the Director)
**Benefits Review Board of the Department of Labor (the Board)
Sandbox did not challenge the Examiner’s understanding; instead, in response, SandBox amended the claims of the ’518 patent to recite a “bottom[,]” J.A. 575, with SandBox explaining that although the claims “were rejected on the basis [that] they lack essential elements[,]” the claims were “being amended to include a bottom, and that the hatch is positioned closely adjacent to the bottom[,]” J.A. 580. The Examiner allowed the ’518 patent, based at least in part on his understanding that the claims of the ’518 patent were amended to include a “bottom wall on which the hatch is mounted.” J.A. 1007; see J.A. 1025 (Notice of Allowability) (the Examiner explaining that the prior art “fails to teach or suggest . . . a bottom[] and a hatch closely adjacent to the bottom”). SandBox’s failure to challenge the Examiner’s understanding amounts to a disclaimer. See Biogen Idec, Inc. v. GlaxoSmithKline LLC, 713 F.3d 1090, 1096 (Fed. Cir. 2013) (“If an applicant chooses, she can challenge an examiner’s characterization in order to avoid any chance for disclaimer, but the applicants in this case did not directly challenge the examiner’s characterization.”); TorPharm, Inc. v. Ranbaxy Pharm., Inc., 336 F.3d 1322, 1330 (Fed. Cir. 2003) (“[I]n ascertaining the scope of an issued patent, the public is entitled to equate an inventor’s acquiescence to the examiner’s narrow view of patentable subject matter with abandonment of the rest. Such acquiescence may be found where the patentee narrows his or her claims by amendment[.]” (internal citation omitted)). Thus, the prosecution history confirms that “bottom” refers to a “bottom wall.”
Sandbox Logistics, LLC et al. v. Proppant Express Investments LLC et al., 2019-1684 (Fed. Cir. May 18, 2020)(slip opinion at 11-12).
I think one area where many in-house patent programs could be improved is at the payment of the issue fee phase. Namely, a paper can be submitted, in conjunction with each issue fee payment, that indicates non-acquiescence in (at least) the examiner’s reasons for allowance and instead cites the scope of the claims as a whole as the applicant’s view as to why the claims are allowable. The time/cost to do so is not that significant.
Before you read below the break, ask yourself this question: “How would I go about trapping a bed bug?”
Before listening to today’s oral argument of the day, I really had no clue. In hindsight after listening to the oral argument, it is quite obvious how to catch a bed bug. I suppose that is the problem with hindsight perspectives — as we all know.
I thought this was an interesting sound bite from Judge Moore during the oral argument of ARCTIC CAT INC. v. BOMBARDIER RECREATIONAL PRODUCTS INC., No. 2019-1080 (Fed. Cir. Feb. 19, 2020). During a discussion of statutory interpretation, she described herself as a textualist:
Do you think the Federal Circuit treats “speed” consistently for purposes of §103 and §101? In a §103 rejection, the Federal Circuit seems to discount an inventor’s accomplishment of greater speed via his/her invention. MPEP §2144 (II) relies on the CAFC’s Dystar opinion and states:
II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker,702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar TextilfarbenGmbH & Co. Deutschland KGv. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) (“Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.”).
In the §101 cases, however, an invention’s “speed” seems to carry more weight:
Two recent cases inform our evaluation of whether the claims are “directed to” an abstract idea. In Enfish, we held claims reciting a self-referential table for a computer database were patent-eligible under Alice step one because the claims were directed to an improvement in the computer’s functionality. Id. at 1336. We explained that “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id. The specification described the benefits of using a self-referential table — faster searching and more effective data storage — and highlighted the differences between the claimed self-referential table and a conventional database structure. Id. at 1333, 1337. Based on this, we rejected the district court’s characterization of the claims as being “directed to the abstract idea of `storing, organizing, and retrieving memory in a logical table.'” Id. at 1337. We emphasized that the key question is “whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an `abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335-36. Moreover, it was appropriate to consider the technological improvement embodied in the claims at step one, we explained, because Alice does not “broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” Id. at 1335.
The complaint alleges that the claimed software uses less memory, results in faster processing speed, and reduces the risk of thrashing which makes the computer process forms more efficiently. J.A. 429 ¶ 39. These allegations suggest that the claimed invention is directed to an improvement in the computer technology itself and not directed to generic components performing conventional activities. We have repeatedly held that inventions which are directed to improvements in the functioning and operation of the computer are patent eligible. See, e.g., Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1258-59 (Fed. Cir. 2017); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Viewed in favor of Aatrix, as the district court must at the Rule 12(b)(6) stage, the complaint alleges that the claimed combination improves the functioning and operation of the 1128*1128 computer itself. These allegations, if accepted as true, contradict the district court’s conclusion that the claimed combination was conventional or routine. J.A. 26. Therefore, it was an abuse of discretion for the district court to deny leave to amend.
Aatrix Software v. Green Shades Software, 882 F.3d 1121, 1127-28 (Fed. Cir. 2018)(emphasis added).
Intellectual Ventures I LLc v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016)(Mayer, J., concurring)(emphasis added).
The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. (“There is no specific or limiting recitation of … improved computer technology …”); Brief for United States as Amicus Curiae 28-30. Nor do they effect an improvement in any other technology or technical field. See, e.g.,2360*2360Diehr, 450 U.S., at 177-178, 101 S.Ct. 1048.
Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2359 (2014).
This post is more of a musing than a completed thought. However, perhaps someone will take the idea and write further about it.
The Federal Circuit recently treated “speed” as a factor in its §101 analysis in MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021):
Through this shifted USF, the invention purports to “reduce restrictions affecting extended dynamic allocation with minimal effect on the existing prescript.” Id. at 2:44-46. It allows the mobile station to “transmit up to its physical slot limit.” Id. at 5:17-18. The present invention increases the capacity of networks to communicate data by allowing the network to use timeslots for transmission which, according to the patent, were not available in the prior art. The result is a system capable of a higher rate of data transmission.
MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021)(slip op. at 5-6)(emphasis added).
Like the claim in Packet Intelligence, claim 5 purports to solve a challenge unique to computer networks, or, more specifically, certain mobile stations using extended bandwidth allocation in a network: reducing restrictions to enable additional multislot configurations. It increases the rate of data transmission by enabling the use of timeslots for transmission that were not previously available.
MENTONE SOLUTIONS LLC v. DIGI INTERNATIONAL INC., No. 2021-1202 (Fed. Cir. Nov. 15, 2021)(slip op. at 12)(emphasis added).
Back in December, Chief Judge Prost recognized one of the long-time employees of the Federal Circuit, Mr. Reggie Walker. I’m not sure of his exact title; but, I believe he served as a courtroom officer. He apparently retired from service with the Federal Circuit at the end of last year. You can hear Chief Judge Prost’s comments along with those of Judges Dyk and Moore here:
When Chief Judge Rader (ret’d.) brought the Federal Circuit to sit in Denver a few years ago, I happened to be seated next to Mr. Walker at a dinner reception. I remember enjoying talking to him and how either he or one of the others from the court mentioned that Mr. Walker’s son has won two Emmy’s for producing shows on ESPN.
I was poking around the case law after reading the Galderma v. Amneal decision and was reminded of the Verizon v. Vonage case from 2007. That is today’s oral argument of the day.
What is particularly fun about the oral argument of Verizon v. Vonage is that then-attorney Taranto — now-Judge Taranto — argued the case in front of Chief Judge Michel and Judges Dyk and Gajarsa.
Here is one sound bite of Judge Dyk pressing then-attorney Taranto about a “present invention” statement in his client’s patent:
You can listen to the oral argument here:
You can read the Verizon v. Vonage opinion [here].
The oral argument of the day is from GALDERMA LABS., LP v. AMNEAL PHARMS. LLC, No. 2019-1021 (Fed. Cir. Mar. 25, 2020). I thought this argument was interesting for its discussion of prosecution disclaimer.
I thought it was particularly interesting for the discussion of American Piledriving Equipment v. Geoquip, Inc., 637 F.3d 1324 (Fed. Cir. 2011). For some reason, I seem to have heard American Piledriving mentioned in multiple oral arguments recently. That’s always interesting when multiple panels start talking about an old case — it tends to pique one’s interest.
A third point of interest was Judge Stoll’s questioning about how does a patent owner make clear to the public via the IPR file history a retraction of a limiting position that the patent owner took during the IPR, when the PTAB rules in favor of the patent owner without adopting the limiting position that the patent owner asserted for purposes of claim construction. The PTAB has the authority to refuse to enter a paper, unlike ex parte prosecution.
On a totally unrelated note, my great-grandfather had a patent on a pile driver. It’s fun to look back at old patents for the artistry of the drawings and the approach to the written description and claims: [Link].
You can listen to the oral argument of GALDERMA LABS., LP v. AMNEAL PHARMS. LLC here:
I think most patent prosecutors would be surprised to discover that Judge Newman authored the court’s opinion in In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991) which approved of a rejection of a design patent claim by combining 13 references.
Rather, I think most patent prosecutors would expect to hear her say what she said during the oral argument of CPI CARD GROUP-MINNESOTA, INC. v. MULTI PPACKAGING SOLUTIONS, INC., No. 2019-1616 (Fed. Cir. Mar. 16, 2020):
I have updated an earlier post where I am collecting comments by the Federal Circuit judges about rejections/arguments that rely on a large number of references for obviousness. Use this link to access that post: [Too Many References?].
The decision the other day in Cardionet, LLC et al. v. Infobionic, Inc. is significant. The decision solidifies that the Alice Step 1 inquiry is an issue of law based on underlying facts. Just as the Berkheimer case did a few years ago — stating that Alice Step 2 is an issue of law based on underlying facts — the Cardionet decision should breathe a little bit of sanity into future patent eligibility decisions by the Federal Circuit, district courts, and the Patent Office.
The appeal in Cardionet stems from a ruling by a district court judge on a 12(b)(6) motion. Apparently, the district court judge ruled that the claims were abstract ideas and granted the motion. The majority in Cardionet looked to the intrinsic evidence of the written description of the patent-at-issue to determine if there were any asserted advantages provided by the claimed invention. In doing so, the panel found several advantages recited in that patent’s written description. Normally, one would consider a patent’s written description to be intrinsic evidence in a case. The Cardionet majority also cited Visual Memory v. Nvidia for drawing factual inferences from a patent’s written description (specification): “Weighing ‘all factual inferences drawn from the specification . . . in favor of Visual Memory, the non-moving party,’ we reversed the district court’s decision that the claims were ineligible.” Slip Opinion at 15.
The panel performed a similar comparison with respect to the McRo v. Bandai case. Importantly, the panel stated: “In fact, the evidence in the record showed that the traditional process and claimed method produced realistic animations of facial movements in fundamentally different ways.” Slip Opinion at 16.
However, the panel did not limit itself to an assessment of the written description; it went even further by looking for other factual evidence in the record that the claimed diagnostic process had long been used. The majority stated:
Indeed, as discussed above, nothing in the record supports the district court’s fact finding (and InfoBionic’s assertion) that doctors long used the claimed diagnostic processes.
Slip Opinion at 17.
And, the panel looked to see if there was any record evidence to undermine the advantages presented in the written description. The panel concluded:
On a motion to dismiss under Rule 12(b)(6), however, the district court must construe all facts and draw all reasonable inferences in favor of CardioNet, the non-moving party. See Athena, 915 F.3d at 749. Here, there is no record evidence undermining the statements in the written description concerning the benefits of the claimed device.
Slip Opinion at 17.
Finally, having limited its analysis to Alice Step 1, the majority concluded:
Because we conclude under Alice step one that the as- serted claims of the ’207 patent are not directed to an abstract idea, we do not reach Alice step two. See Data Engine, 906 F.3d at 1011; Visual Memory, 867 F.3d at 1262. The claims are patent eligible under § 101.
Slip opinion at 18.
Responding to criticism from the dissent, the majority noted that it would be proper for a district court to assess extrinsic evidence for the Alice Step 1 analysis:
Contrary to the dissent’s suggestions, we do not hold today that it is impermissible for courts to “look[] outside the intrinsic evidence” as part of their Alice step one in- quiry, Dissent Op. 9, or that all evidence presented by the parties that doctors have long used the claimed techniques would be irrelevant to the inquiry in this case. It is within the trial court’s discretion whether to take judicial notice of a longstanding practice where there is no evidence of such practice in the intrinsic record. But there is no basis for requiring, as a matter of law, consideration of the prior art in the step one analysis in every case. If the extrinsic evidence is overwhelming to the point of being indisputable, then a court could take notice of that and find the claims directed to the abstract idea of automating a fundamental practice, see Bilski, 561 U.S. at 611—but the court is not required to engage in such an inquiry in every case.
Slip Opinion at 22.
Judge Dyk concurred in the reversal of the district court; but, his dissent favored remanding the issue back to the district court judge for consideration of other evidence before deciding the 12(b)(6) issue — which sounds a lot like making an even more in-depth factual determination before deciding the 12(b)(6) issue.
The decision should prove beneficial to patent owners in the future in their ability to defeat 12(b)(6) motions as well as summary judgment motions. Moreover, it should benefit patent owners at the appellate level, as well, in the same way it benefited the patent owner in this case. However, most importantly, it should help patent applicants during examination. Hopefully, the Director will now issue a memo to the examining corps that Alice Step 1 is an issue of law, but it is based on underlying issues of fact. Just like the Berkheimer memo. And, the PTO has to support its factual assertions with evidence.
There were several interesting sound bites during the oral argument. Judge Stoll commented:
Judge Dyk commented:
Judge Plager also added these comments:
Back in 2014, I submitted comments on the interim patent eligibility guidance. This is what I wrote back then:
————————————————————————————————
Dear Commissioner,
I am writing to suggest an addition to the 2014 Interim Guidance on Patent Subject Matter Eligibility. The views expressed below are my personal opinions and not necessarily those of any current, past, or future clients or colleagues. I am not submitting these views on behalf of anyone other than myself.
THE ASSERTION OF AN ABSTRACT IDEA SHOULD BE SUPPORTED BY CONCRETE EVIDENCE
The guidance currently does not instruct the examining corps that the assertion of an abstract idea must be supported by concrete evidence. This should be corrected. The Federal Circuit has noted that patent subject matter eligibility is a question of law informed by underlying facts. Moreover, in order for the Federal Circuit to review a determination of patent ineligibility, there must be substantial evidence supporting the administrative agency’s determination.
First, the Federal Circuit noted as early as 1992 that:
“Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming . . . .” Arrhythmia Research Technology v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
This standard is similar to other standards of patent examination. For example, with respect to utility under 35 U.S.C. §101, the MPEP states in section 2107:
IV. INITIAL BURDEN IS ON THE OFFICE TO ESTABLISH A PRIMA FACIE CASE AND PROVIDE EVIDENTIARY SUPPORT THEREOF
To properly reject a claimed invention under 35 U.S.C. 101, the Office must (A) make a prima facie showing that the claimed invention lacks utility, and (B) provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing. In re Gaubert, 524 F.2d 1222, 1224, 187 USPQ 664, 666 (CCPA 1975) “Accordingly, the PTO must do more than merely question operability – it must set forth factual reasons which would lead one skilled in the art to question the objective truth of the statement of operability.” If the Office cannot develop a proper prima facie case and provide evidentiary support for a rejection under 35 U.S.C. 101, a rejection on this ground should not be imposed. See, e.g., In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)
Similarly, with respect to obviousness under 35 U.S.C. §103 — which is also a question of law supported by underlying questions of fact — the MPEP states:
2142 Legal Concept of Prima Facie Obviousness [R-11.2013]
The legal concept of prima facie obviousness is a procedural tool of examination which applies broadly to all arts. It allocates who has the burden of going forward with production of evidence in each step of the examination process. See In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Saunders, 444 F.2d 599, 170 USPQ 213 (CCPA 1971); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971), amended, 448 F.2d 791, 171 USPQ 294 (CCPA 1971); In re Warner, 379 F.2d 1011, 154 USPQ 173 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit secondary evidence to show nonobviousness.
And, with respect to ornamentality, the MPEP section 1504.01(c) (II) states:
II. ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER 35 U.S.C. 171
To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing. The court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), stated that “the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”
These portions of the MPEP emphasize that factual issues should be supported by evidence. Thus, the assertion that a claim includes an abstract idea should similarly be supported by supplying evidence of the abstract idea.
Second, for a USPTO decision to withstand appellate review, there must be substantial evidence in the record. The Federal Circuit observed this with respect to reviewing an obviousness determination in In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001):
We cannot accept these findings by the Board. This assessment of basic knowledge and common sense was not based on any evidence in the record and, therefore, lacks substantial evidence support. As an administrative tribunal, the Board clearly has expertise in the subject matter over which it exercises jurisdiction. This expertise may provide sufficient support for conclusions as to peripheral issues. With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience — or on its assessment of what would be basic knowledge or common sense. Rather, the Board must point to some concrete evidence in the record in support of these findings.[2] To hold otherwise would render the process of appellate review for substantial evidence on the record a meaningless exercise. Baltimore & Ohio R.R. Co. v. Aderdeen & Rockfish R.R. Co., 393 U.S. 87, 91-92, 89 S.Ct. 280, 21 L.Ed.2d 219 (1968) (rejecting a determination of the Interstate Commerce Commission with no support in the record, noting that if the Court were to conclude otherwise “[t]he requirement for administrative decisions based on substantial evidence and reasoned findings — which alone make effective judicial review possible — would become lost in the haze of so-called expertise”). Accordingly, we cannot accept the Board’s unsupported assessment of the prior art.
This holding was repeated by the Federal Circuit less than a year ago in K/S HIMPP v. Hear-Wear Technologies, LLC, 751 F.3d 1362 (Fed. Cir. 2014):
We agree with Hear-Wear that the Board was correct to require record evidence to support an assertion that the structural features of claims 3 and 9 of the ‘512 patent were known prior art elements. The patentability of claims 3 and 9 with the limitation “a plurality of prongs that provide a detachable mechanical and electrical connection” presents more than a peripheral issue. See In re Zurko, 258 F.3d 1379, 1386 (Fed.Cir.2001) (“[Board] expertise may provide sufficient support for conclusions as to peripheral issues.”). The determination of patentability of claims with this limitation therefore requires a core factual finding, and as such, requires more than a conclusory statement from either HIMPP or the Board. See id. (“With respect to core factual findings in a determination of patentability, however, the Board cannot simply reach conclusions based on its own understanding or experience….”). HIMPP must instead “point to some concrete evidence in the record in support of these findings.” Id.
Clearly, for a factual determination by the Office to withstand appellate review, the Office must establish concrete evidence in the record. Therefore, the assertion by the Office that a claim recites an abstract idea — which is clearly a core factual finding — must be supported by concrete evidence in the record.
I hope you will tailor the interim guidance to reflect that an Examiner must support any assertion of an abstract idea by supplying factual evidence, just as you have previously required the examining corps to do in MPEP sections 2107, 2142, and 1504.01(c) (II).
Finally, I think it is wise to take to heart the remarks of Judge Lourie from the oral argument of K/S HIMPP v. Hear-Wear Technologies, LLC:
“We have an examination system based on citation of references. I may have used the word ’slippery slope’ already. But, I worry about that — where an examiner who is of some skill and training in a particular art could simply say ‘Aha, I think, I think, and it is my common knowledge . . . .’ And, they start rejecting claims based on what they ‘think.’ Isn’t that a serious departure from our system of citation of references to reject claims?”
Sincerely, William F. Vobach
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I look forward to seeing what the USPTO does with the Cardionet decision. Hopefully, they will instruct examiners to consult their inner-Joe-Friday:
You can listen to the recording of the Cardionet oral argument here:
Update: August 25, 2021
In AMERICAN AXLE & MANUFACTURING v. NEAPCO HOLDINGS, 966 F.3d 1347 (Fed. Cir. 2020), Judge Dyk wrote a concurring opinion in the denial of rehearing en banc. He notes that with respect to step one in the Alice inquiry there can be a factual issue.
“The step-one “directed to” inquiry in this case, as in O’Reilly, is what the claim says. As to that question, the panel does not suggest that there can never be a factual issue, but there is no such factual issue here.”
