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« Redline Detection, LLC v. Star Envirotech, Inc. (Fed. Cir. 2015) | Main | Mortgage Grader, Inc. v. First Choice Loan Services Inc. (Fed. Cir. 2016) »

January 21, 2016


"Q: In Ariosa, why didn't the court focus on the fact that the claims were limited to the cell-free portion of maternal blood which previously was being thrown out?

Kevin: It didn't matter -- that is more an anticipation/obviousness argument which is not relevant under Mayo."

Of course, this raises the question: Why should an Examiner ever reject a claim under 35 USC 103.

Thanks to the Alice-Mayo test, pretty much any type of 35 USC 103 rejection an Examiner can make could be restated as a 35 USC 101 rejection. Plus, if an Examiner can't find a prior art reference teaching or suggesting a particular claim limitation, the Examiner can just call that limitation "an abstract idea" or "an application of a law of nature."

Also, by rejecting the claim under 35 USC 101, is free to reject the claim based purely on conclusory statements, something which KSR held cannot be done under 35 USC 103.

I also think similar things can be said about rejecting a Claim under 35 USC 101 in comparison to rejecting the claim under 35 USC 102 or for failing to fulfill the enablement requirement of 35 USC 101.

In all or vitually all situations I can think of, the 35 USC 101 rejection is easier to make for the Examiner and harder to rebut for the applicant.

"The examiners act under the Director's authority, so I think deference extends to their actions (provided that those actions are upheld on appeal or through grant, which puts the Director's imprimatur on them)."

Hm, that does not seem right to me. United States v. Mead, 533 U.S. 218, 221 (2001) held that the acts of customs inspectors are not entitled to Chevron deference, even though presumably the customs inspectors are acting under the authority of the head of customs. I think that it is hard to apply Chevron deference to low level agency officials, and that would include patent examiners.

Dear GrzeszDel: I can think of counter arguments but admin law is not my particular area of expertise. David Boundy, if you are listening can we have your take on this?

Thanks for the comment.

GrzeszDei is correct. Mead is the correct case. Not every bit of fluff coming out of an agency is entitled to high deference, only pronouncements made after full agency deliberation.

For findings of fact, the Federal Circuit gives "substantial evidence" deference to the Board, and the Board is supposed to (but doesn't always) review the examiner de novo.

Issues of law (where Chevron starts to apply) in decisions of the Board are typically reviewed de novo. I can imagine there are situations in which the Board's legal analysis gets weak Skidmore deference, but I can't think of one off the top of my head.

There are many constraints on Chevron that would exclude most issues in most Board decisions. The exclusion that would apply most often is "Chevron Step Zero" -- since most issues of law are substantive law, and the PTO has no substantive rule-making authority, the Board's decisions on issues of law are not entitled to Chevron deference.

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