The Board as a “Super-Examiner:” Prima facie case met where applicant is on notice as to substance of the rejection

See http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1019.pdf

Issue(s): Did the Board of Patent Appeals and Interferences (“Board”) err in sustaining the invalidity of all but five claims of U.S. Patent Application No. 10/770,072 (“’072 application”) for anticipation or obviousness.?

IN RE EDWARD K. Y. JUNG and LOWELL L. WOOD, JR., (2010-1019) Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences in application Serial No. 10/770,072 (Decided: March 28, 2011); Before GAJARSA, LINN (Author), and DYK

Facts: On January 20, 2004, Jung filed the ’072 application directed to a photo-detector array system for transforming light inputs into electrical signals.  The dispute centers around the well-charge-level controller, designated 108. The application describes the functioning of the well-charge-level controller as follows:  Well-charge-level controller 108 typically gains knowledge of the detected accumulated charge level of charge well 102 from an output of well-charge-level detector 114. Well-charge-level detector 114 relatively continuously senses the level of charge in charge well 102 and generates the output indicative of that charge in a form appropriate to well-charge-level controller 108.  Jung noted that “[t]hose having ordinary skill in the art will appreciate that the specific devices and processes described herein are intended as merely illustrative of their more general counterparts.”

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”).  Kalnitsky et al. teach a first well-charge-well [sic] controller (340) operably coupled with said first charge pump.

Jung responded on January 17, 2006, amending claims 1 and 5 to incorporate the first well-charge-level controller limitation from original claim 4 and cancelling original claim 4. In his remarks, Jung block-cited Kalnitsky and concluded that the “‘well-charge-level controller’ recitations of [amended] Claim 1 are different from the ‘controller 340’ recitations of [Kalnitsky], and thus controller 340 of [Kalnitsky] does not match the ‘well-charge-level controller

Lower Court’s Disposition: Jung appealed to the Board. For the first time, he explained that the well-charge-level controller must “more or less continuously adjust[] the control signal inputs of active charge source 104 and/or active charge sink 112,” as disclosed “in one exemplary embodiment.” He argued that Kalnitsky disclosed only a reset controller, which did not “more or less continuously adjust the control signal inputs,” and therefore did not anticipate.

The Board, consistent with the examiner, construed the element “well-charge-level controller” as “any component that controls the charge level of a well,” and noted that Jung “had the opportunity to amend the claims to achieve more precise claim coverage, i.e., to limit the claim to the ‘exemplary process’ disclosed in the Specification, but did not do so.”

The Board, however, reversed the examiner’s rejection of claim 5, which included the further limitation that the well-charge-level controller include “a processor configured to control said first charge pump utilizing at least one of a proportional, integral, or derivative control,” because “[t]he examiner has not sufficiently explained how [Kalnitsky’s disclosure] amounts to proportional control, as that term is used in the control art.”

Jung filed a request for rehearing on November 21, 2008, asserting that the Board erred in failing to address whether the examiner had set forth a prima facie rejection. The Board rejected Jung’s argument, noting that the prima facie case requirement is merely a procedural mechanism of allocating the burden at different stages of the prosecution, and that the ultimate disposition on anticipation was properly addressed by the Board’s initial decision.

Findings on Appeal: Jung argues on appeal that (1) the examiner failed to make a prima facie case of anticipation, and (2) the Board acted as a “super-examiner” by performing independent fact-finding and applying an improperly deferential standard of review to the examiner’s rejections.

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. Jung admitted at oral argument that if this court finds that the examiner properly made out a prima facie case, then the decision of the Board should be affirmed. In other words, Jung does not challenge the substance of the prima facie rejection, but only the procedure.

As this court has repeatedly noted, “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.”  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 references as may be useful in judging of the propriety of continuing the prosecution of [the] application.”

Both the initial and final office actions specifically put Jung on notice that the examiner considered Jung’s “first well-charge-level controller” to read on Kalnitsky’s “controller 340,” citing the specific columns and lines in Kalnitsky that explained the functionality of “controller 340.”  Indeed, Jung’s understanding of the examiner’s rejection was manifested by his response to the office actions.  Whether Jung’s claims read on Kalnitsky is precisely the substantive basis upon which the examiner rejected Jung’s claims.

Jung, without any basis, would have this court impose additional prima facie procedural requirements and give applicants the right first to procedurally challenge 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 merits.

Jung also argues that the Board’s review was improper. After accusing the Board of improperly framing the issues before it as questions of claim construction and the reasonableness of the examiner’s decision, Jung himself frames the issue as whether the “examiner failed to reasonably construe the claims and failed to adduce any evidence or syllogistic argument in support of Kalnitsky’s alleged teachings, as opposed to Kalnitsky’s bare disclosure.”

This court is at a loss to identify the distinction between these two framings of the issue. What a reference “teaches” is reflected in its “disclosure,” and, as discussed above, the extent to which the examiner fails to provide “syllogistic argument” to fill the gaps between the prior art and the rejected claims is dependent upon a substantive showing that such gaps exist in the first place. Moreover, whether the examiner “reasonably construe[d] the claims”—which this court agrees is the true issue in this case—is without doubt a substantive issue, which the Board properly addressed in its opinion.

Jung does not and could not argue that the Board’s decision constituted a new ground of rejection such that further prosecution was required. Instead, Jung next argues that the Board assumed the position of “super-examiner” in making, among all its findings of facts, the following five findings relevant to the “well-charge-level controller” limitation.

Two things are immediately apparent from an examination of these findings of fact. First, they are simple factual assertions drawn from either the Kalnitsky reference or the application itself. Second, those assertions sourced from Kalnitsky are substantially the same, down to the line and column number, as the examiner’s objections. The Board merely made explicit in its “findings of fact” the bases for a rejection that would have been apparent to one with even a cursory command of prosecution practice from the examiner’s office actions.

To assert that the Board’s thoroughness in responding to his explanation put it in the position of a “super-examiner” would limit the Board to verbatim repetition of the examiner’s office actions, which would ill-serve the Board’s purpose as a reviewing body.  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.”

Before the examiner, Jung merely argued that the claims differed from Kalnitsky, and chose not to proffer a serious explanation of this difference. 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 Kalnitsky’s reset controller. In response to this argument, the Board further explained the examiner’s rejection, noting that nothing in the claims limited the controller to this embodiment.

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. 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.  For the reasons discussed above, this court affirms the decision of the Board.

Allen’s Observations: I am not sure what this appeal was supposed to accomplish.  It is a puzzling strategy.  The applicant admitted that if the procedural requirement of asserting a prima facie case had been met, then the claim would be anticipated by the reference; however, the prima facie argument only works where a reference does not read on each of the claim elements.  This argument seems doomed from inception by the art.  Anyway, as a side note, the appellant refers to the Board pejoratively as a “Super Examiner.”  The point of the USPTO is to protect the public against improper monopolies so a Super-Examiner is probably not such a bad thing.  Besides, just imagine what the superhero “Super-Examiner” would look like.

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About C. Allen Black, Jr.

I am a practicing patent attorney with a technical background in molecular biology and vaccinology. I have a Ph.D. in Immunology and teach the Biotechnology Law class at the University of Pittsburgh Law School as an adjunct professor.
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One Response to The Board as a “Super-Examiner:” Prima facie case met where applicant is on notice as to substance of the rejection

  1. incredulous says:

    This prosecution history should be studied in every law school in the country as a perfect example of what NOT to do during prosecution of a patent application. What an enormous waste of time and resources. Every applicant whose BPAI appeal was delayed as the APJ’s dealt with this heaping steaming pile is owed an apology by the knucklehead who prosecuted it.

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