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January 05, 2017

Comments

I took a look at this case. It is another in a long line of cases where the PTAB cites the boilerplate of In re Keller for the proposition that the applicant "cannot attack the references individually." The usual pattern is the examiner acknowledges that reference A doesn't show claim feature X, cites reference B as disclosing something that is not feature X, and when applicant argues, "Reference B doesn't show feature X" the examiner responds that the argument isn't persuasive because the applicant "cannot attack the references individually when the rejection is based on the combined teachings of the references." Huh? If neither reference A nor reference B teach feature X, how does their combination teach it? The answer of course is: it doesn't.

Sad to see the PTAB rubber stamping such nonsense.

The Van Os slip opinion is only nine pages long, but every one is a gem. Judge Rich used to joke that the PTO should have a wallpaper runner printed to decorate the top of every examiner's office with a repeating scroll of the words "useful, novel, & nonobvious, useful, novel, & nonobvious... ." I think that they should update that decoration with another runner below that repeats "KSR did not extinguish the factfinder’s obligation to provide reasoned analysis," and the USPQ2d cite to the Van Os opinion.

"It is another in a long line of cases where the PTAB cites the boilerplate of In re Keller for the proposition that the applicant "cannot attack the references individually."

Hey AAA JJ,

I too see Keller cited in my Office Actions ad infinitum. Just so much malarkey as far as I'm concerned. I usually respond by saying we're not "attacking" references separately, but pointing out the impropriety combining the references without factual or legal support to do so.

Keller and McLaughlin (443 F.2d 1392, 1395, "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning...") are two of the worst cases that the CCPA ever handed down, not because there is anything wrong with the rule or the holding in either of them, but simply because of the misuse to which the PTO has put each of them. Those two cases have each become talismans by which Examiners are authorized to excuse themselves from having to think about Applicant's argument.

As soon as an Examiner sees a mention of an individual reference rather than "the cited art," Keller may be invoked to excuse the Examiner from reading (or thinking) any further. Similarly, as soon as the word "hindsight" appears in a response, the Examiner may simply recite "McLaughlin" and be excused from putting any further mental effort into understanding the argument that the Applicant advances.

Here's hoping that in some forthcoming case, the CAFC does to Keller and/or McLaughlin what Van Os just did to arguments about KSR and "common sense."

"Keller and McLaughlin (443 F.2d 1392, 1395, "Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning...") are two of the worst cases that the CCPA ever handed down"

Hey GrzeszDel,

Completely agree with your comment, including noting that McLaughlin is in the same inane class as Keller. Even PTAB misapplies Keller.

Newman's dissent raises an important issue: under what circumstances should the remedy be allowance instead of remand. Given that the applicant spent years of delay and tens of thousands of dollars on appeal, should the patent office get another chance to get it right?

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