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June 05, 2019

Comments

No comments yet (and not that surprising given the depth of the Tillis Congressional hearings), but I did want to point out that the proper application of the result of the Berkheimer case CANNOT rest with the challenge to the granted patent (or, for that matter, within the patent office prior to grant, the challenge to the application) based on "establishing" the factual determination as to whether or not something...

[and here I would stress that THAT something can be not only a single element, but also can be an ordered combination of elements that themselves INDIVIDUALLY may well be admittedly "conventional")

...is well-understood, routine, or conventional "GOES BEYOND WHAT WAS SIMPLY KNOWN IN THE PRIOR ART."

This contrasts with this article's notation of "in particular" which is at THE LOWER LEVEL of not even reaching the obviousness stage of "teaching."

The item to be stressed (and this points to a reason why Director Iancu created specific "off-ramps" in the new eligibility examination protocol) is that to SHOW the necessary factual predicates (per BOTH the Berkheimer decision, as well as standing APA requirements - as may be pointed out by Admin Law Expert Dave Boundy), the opponent to the granted patent (AND perhaps just as importantly, the examiners in the Office during examination) MUST show more than merely "known" or EVEN "taught" as would be typical under either of 35 USC 102 or 35 USC 103 - and for which, the typical "tools" of the examiner in the Office do NOT include the necessary rigor of establishing that basis.

Examiners typically only know how to cite prior art (and far too many only by "key word matching), and simply do not know HOW to establish that REQUIRED "goes beyond."

I would point out that in prosecution then, EVERY opportunity should be taken to challenge the lack of rigor for ANY rejection that does not rise to the REQUIRED factual establishment.

Far too often, examiners use a cut-N-paste boilerplate statement WITHOUT being challenged as to the sufficiency of what is actually required for any such boilerplate to properly apply. Just because an examiner CAN make a conclusory statement that a claim...

(and here, it is important to stress again that an ordered combination of a claim must have the factual predicate satisfied FOR THE ORDERED COMBINATION ITSELF and not just "individually for individual elements")

... is "only" well-understood, routine, or conventional, does NOT mean that this satisfies the requirements of examination FOR providing the REQUIRED meaning and level of the assertion of fact.

I would also point out that diligence in making sure that the Office does indeed answer the direct substance of this argument is necessary.

I cannot tell you how many times now (since the Berkheimer Memorandum was published), that the Office has attempted to NOT answer the argument. Part of that diligence (an easy part) is to stress to the Office that a "next action" in order to be complete on the merits MUST answer the substance of ALL of the applicant's arguments. The Office does not have the authority to NOT answer this point, even though "answering" the point may well show that the rejection itself cannot stand.

I take the time to publish this view, even though here this is a District Court case, and the point is most likely merely dicta, because this type of PUSH BACK during prosecution (and the publication of this tactic) is what I firmly believe to be one of the reasons WHY Director Iancu created express "off ramps" in the new eligibility examination protocol PRIOR TO when the factual basis of Berkheimer (and the APA) would come to bear FOR examiners.

I think that to be properly done, the challenge of any mere conclusory statement for any claimed FULL ordered combination would require a level of fact finding and substantiation that NO examiner would likely be able to sustain.

With this type of challenge, the "easy path" is actually made FAR more difficult than the traditional path of examination under the rubrics of 102/103 (and even of 112).

And while Director Iancu personally may not justifiably be labelled a "bully," there ARE many examiners who DO act like a bully. And just like any real world bully, fighting back is the last thing that a bully wants to encounter.

Omitted one thought:

"goes beyond" MEANS that whatever it is that is being claimed to be "conventional" MUST BE widely adopted.

When one understands that to show not just "knowledge of," not just "teaching of," but rising to show that the item actually has been widely adopted, is simply not an easy task.

And of course, to compound that difficulty, this "widely adopted" HIGHER LEVEL needs to be shown NOT JUST at any individual element level. This is where the subtle "trick" and trap for the unwary comes in with the Berkheimer Memorandum as written!

The Berkheimer Memorandum has a trick that basically permits examiners to "try" to get away with a mere conclusory statement as to the effect of a fully ordered combination of elements BEING at that "more required" state, and ONLY IF CHALLENGED, need the examiner actually then need to go out and do the necessary job -- for the fully ordered combination -- of finding the factual evidence of widely adopted.

...and another quick comment, but definitely worth highlighting, is reflected by the District Court's writing on page 4 (footnotes omitted):

35 U.S.C. § 282 establishes a presumption of validity for granted patents. “The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.” In an argument for invalidity, any fact “that is pertinent to the invalidity conclusion must be proven by clear and convincing evidence.”

Thus, here in the case of a post-grant situation, we have NOT ONLY the higher level than mere presence of knowledge, higher than even a teaching, that higher level being one of widespread adoption, but we have to have THIS level proven at the HIGHER LEVEL of "Clear and Convincing."

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