Friday, April 6, 2007

Failure to Call a Witness for the Defense

Imagine yourself sitting in a courtroom, watching a murder trial.

The Prosecutor calls up a forensic "expert" to examine the blood trail, the collections of carpet fibers and to offer an expert opinion on how obvious it is that the Defendant did it. With that damning testimony in place, the Prosecution rests.

Now the Judge calls upon defense counsel. "You may call your first witness."

"We have no witnesses to call," the lawyer confesses. "We believe that overwhelming evidence and arguments are already in place for us to easily win the case. The Defense rests your Honor."

You rub your eyes. What? No witnesses? No testimony on behalf of the accused? Boy, this poor bastard is going to fry. What kind of self-proclaimed lawyer fails to mount a defense?

On very rare occasions the answer might be, a very clever one. However, in most cases, the lawyer would be a fool to not call up an expert of his own to counter what the other side's alleged expert found to be "obvious".

Time to de-suspend your not too suspended disbelief. This after all is a patent blog. So "obviously" we are not going to be talking about murder trials. But how about appeals in front of the USPTO's BOPAI? How often does the defense fail to call up an expert witness in rebuttal against what the PTO's "expert" (a.k.a the Examiner) found to be "obvious"? Answer: All too often.

Here is a case in point. The BOPAI rules as follows.

For the foregoing reasons and those stated in the Answer, we determine that the Examiner has established a prima facie case of obviousness in view of the reference evidence. Appellant has argued that unexpected results have been demonstrated. Therefore, we begin anew and consider the [totality of the record] evidence for and against obviousness. See In re Oetiker, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We do not find Appellant’s "evidence" persuasive for the following reasons. Expected beneficial results are evidence of obviousness, just as unexpected beneficial results are evidence of unobviousness. See In re Skoll, 187 USPQ 481, 484 (CCPA 1975); In re Skoner, 186 USPQ 80, 82 (CCPA 1975). Here [we find that the] Gleave [reference] teaches that improved results will occur by substituting the VAC thickener for a conventional PMM thickener (see factual finding (7) listed above). Additionally, Appellant’s "evidence" of nonobviousness that is not commensurate in scope with its claims cannot overcome the rejection of those claims. See In re Boesch, 205 USPQ 215, 219 (CCPA 1980) ... [rest of 103 affirmance is here.]

Now you might say to yourself, this is an aberration, not the norm. Actually, I took a quick sampling of several 103 affirmance cases decided in early April 2007 and found the same pattern repeated again and again. Look also here and here and here and here.


Anonymous said...

Its very common for applicants to submit Rule 132 declarations by experts to show evidence of secondary considerations (which is what the BPAI opinions you cite appear to be referring to). In fact, attorney argument can't be used to show secondary considerations (see MPEP 2143).

I think if the TSM test bites the dust in KSR we will see a lot more 132 declarations during prosecution (provided Graham is left untouched). 132 declarations tend to be expensive and time-consuming to acquire and unavailable in some situations (such as where the invention hasn't actually been reduced to practice).

Step Back said...

As of late, BOPAI panels seem to be swinging in favor of Examiner findings. If there is no "evidence" lodged on the Applicant's side, the case is pretty much over. The Federal Circuit cannot reverse. The Fed. is bound by the "substantial evidence" rule to give deference to agency findings.

Step Back said...

Here is another recent example where it appears the lawyers did not concern themselves with getting "evidence" into the record prior to appeal:

At page 5 of their Reply Brief, appellants acknowledge that Williamson was “not entered on the record. . . .” More specifically, the examiner finds (Answer, page 17), Williamson “is not disclosed in the specification, was not made of record in an information disclosure statement, and was not made of record in previous responses.” Stated differently, this reference was relied upon for the first time in the Brief. In this regard, we direct appellants’ attention to 37 C.F.R. § 41.33(d)(2), which states “[a]ll other affidavits or other evidence filed after the date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3) will not be admitted except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and 41.50(b)(1).”
On reflection, appellants admit that Williamson was available and “known” prior to appellants’ filing date; that Williamson is relevant to the subject matter at issue; and that Williamson was not made of record in the case. Since appellants failed to properly made of record in this case we deny appellants’ request for rehearing to consider Williamson.

Step Back said...

Here is yet another example. The following quotes are taken out of order, but the message should be clear:

The Examiner’s position is supported by the preponderance of the evidence of record. We therefore affirm the rejection of claims 1-5 and 8-10 under 35 U.S.C. § 103.

... we are not persuaded by the attorney argument indicating that these results would have been unexpected. In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) (“It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.”).

Step Back said...

Another one bites the dust:

35. Appellants cite no authority, whether testimony from a person knowledgeable in the art, review articles, technical encyclopedias, or handbooks, in support of their characterizations of the teachings of Okamoto or St-Pierre.
36. Moreover, Appellants do not address the level of ordinary skill in the art, nor do they discuss what sorts of problems those of ordinary skill in the art are reasonably expected to be able to solve.

Ex parte DAVID J. EDLUND,et al

Anonymous said...

Although Appellant argues that Zeng’s camera could not perform correctly with Miraldi’s photodetector mounting (Br. 10), Appellant has provided no evidence on this record to support this assertion apart from mere conclusory statements. It is well settled that mere lawyer’s arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Appellant has simply not persuasively rebutted the Examiner’s prima facie case in this regard. For the reasons noted above and given the inferences and creative steps that the skilled artisan would employ,4 we find ample reason on this record for the skilled artisan to couple the photodetectors to the ends of the detector elements 106 of Zeng, particularly noting the detector elements’ rectangular cross-section in Fig. 4.
For at least these reasons, we will sustain the Examiner’s rejection of representative claim 11. Since Appellant has not separately argued the patentability of claims 1, 2, 4, 5, 7-10, 13-15, 18, 19, and 21-25, these claims fall with representative claim 11. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987); see also 37 C.F.R. § 41.37(c)(1)(vii).


Anonymous said...

Ex parte ROBERT S. JACOBS Appeal 2007-05391 Application 10/264,026 Technology Center 1600 DECIDED: July 17, 2007

Nevertheless, attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974). Nor can it take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA 1977).
We find that the Examiner has established a sound basis for believing that the prior art compositions meet all the limitations of the present claims, properly shifting the burden to Appellants to show otherwise. We further find that Appellants have not adequately discharged their burden of rebuttal, by argument or evidence.

Step Back said...

Another one bites the dust:

Icon Health (Fed. Cir. 9/1/2007)

"The Board criticized Icon’s failure to provide any record evidence beyond attorney argument and thus read the claim as covering Teague’s mechanism."

Step Back said...

sorry, that should be "(Fed. Cir. 8/1/2007)"

Anonymous said...

Applicants have failed to submit evidence that crimping would have any adverse effect of a painted temperature sensitive indicator for example.


Anonymous said...

Ex parte LUKE A. KUTILEK Decided: October 9, 2007

Similarly, Kutilek's arguments that Chopin does not teach the heating
temperature, or specific dopants, or specific crystal structures (Br. at 5) do
not by themselves in the absence of supporting evidence explain or justify
Kutilek's conclusion that one of ordinary skill in the art would not have been
led to the present invention from the teachings of Chopin. Such an
abbreviated arguments amount to mere pleading and do not suffice to
counter the Examiner's evidence with evidence favoring Kutilek.
We conclude that Kutilek has not carried its burden of demonstrating
reversible error by the Examiner.

Anonymous said...

What's funny is that Examiner argument is considered to be evidence, but attorney argument isn't.

Step Back said...

"Funny is that Examiner argument is considered to be evidence"

Yes. That is because the Examiner serves as Jury as well as Judge and District Attorney in the "prosecution" of a patent application.

As the jury, the Examiner gets to make findings of fact. Whatever the Examiner finds becomes a fact (if not controverted).

So if the Examiner finds it to be a matter of fact that the ordinary artisan would have found it obvious to do this and to do that, such findings become facts of the case unless controverted in some way.

Anonymous said...

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Step Back said...

Sorry, I don't do RSS

Besides, blogging is time consuming
So I only post on rare occasions
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