In Harari v. Hollmer, 2009-1406 (Fed. Cir. April 19, 2010) decided this past week, the Federal Circuit introduced a new standard, the “befuddled examiner” standard, in assessing whether an applicant’s actions were appropriate. The case concerned incorporation by reference language to a co-filed application in the primogenitor application and whether it was appropriate to amend the specification of the great-great-grandchild application to insert the assigned serial number for the incorporated by reference application many years after-the-fact. The court stated:
In addition to failing to compare the preliminary amendment to the initial parent disclosure, the Board appears to have applied the wrong standard in determining that the incorporation language was confusing. The disputed continuation application is at the initial filing stage, where the examiner is first presented with an original disclosure and a preliminary amendment. The proper standard by which to evaluate the sufficiency of incorporation by reference language, at this stage of the proceedings, is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented.2 In other words, the relevant inquiry is whether a reasonable examiner would be so befuddled by the language of the original disclosure, despite the explanation provided in the transmittal and preliminary amendment, that he could not determine what document was intended to be incorporated by reference. See In re Fouche, 439 F.2d 1237, 1239 (CCPA 1971); see also 37 C.F.R. § 1.57(g)(2).
During oral argument, the panel also discussed the “befuddlement” or lack thereof by the examiner: [Listen].
I think the “befuddled examiner” is probably the correct choice for this new standard. As I look at my thesaurus, other possible choices just don’t seem to have the exactitude required for a legal standard, for example:
“the confused examiner”
“the perplexed examiner”
“the confounded examiner”
“the discombobulated examiner”
“the bedeviled examiner”
“the bewildered examiner”
“the flummoxed examiner”
“the baffled examiner”
“the mystified examiner”
“the puzzled examiner.”
You can read the court’s opinion here: [Read].
You can listen to the entire oral argument here: [Listen].