Patent Law

Federal Circuit Refuses to Require Examiners to Perform Claim Construction as Part of the Examination/Rejection Process

By Dennis Crouch

In re Jung (Fed. Cir. 2011)

Ed Jung is a co-founder of intellectual ventures and Dr. Lowell Wood is a world renowned technologist. In 2004, the pair filed a patent application for a photo-detector array system. The examiner rejected the claims as obvious and the BPAI affirmed. Jung appealed to the Federal Circuit arguing 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."

Prima Facie Case: The patent office has the initial burden of presenting a prima facie case of invalidity. The prima facie case is shown by notifying the applicant of the reasons for its rejections so long as the explanation is not "so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." Chester v. Miller, 906 F.2d 1574 (Fed. Cir. 1990). This requirement comes straight from Section 132 of the Patent Act. 35 U.S.C. §132. Once a prima facie case is presented, the burden shifts to the applicant for rebuttal. Here, the Federal Circuit ruled that the examiner presented a prima facie case of invalidity based on his explanation that Jung's broadly drafted claim encompassed the prior art.

Here, the examiner's discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.

In the appeal, Jung argued that a prima facie case should require more than the notice of rejection outlined in § 132. Jung asked for a claim construction of the disputed claims – just like would be required in court. The Federal Circuit rejected that argument – seeing "no reason to impose a heightened burden on examiners beyond the notice requirement of § 132."

There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. "[Section 132] does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. As the statute itself instructs, the examiner must "notify the applicant," "stating the reasons for such rejection," "together with such information and references as may be useful in judging the propriety of continuing prosecution of his application." 35 U.S.C. § 132. Here, the examiner's discussion of the theory of invalidity (anticipation), the prior art basis for the rejection (Kalnitsky), and the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.

Jung's argument was clearly a long-shot in this case and not well presented if the sole intent was to make sure that Jung gets this patent. Of course, Intellectual Ventures is now one of the largest patent holders in the world and its actions are almost always strategic in nature.

Full post as published by Patently Obvious on March 30, 2011 (boomark / email).