On 28 March 2011, The U.S. Court of Appeals for the Federal Circuit (CAFC) issued an opinion explaining how examiners are allowed to reject claims submitted in patent applications. In re Jung (Opinion 2010-1019). This opinion also teaches how to properly respond to rejections by examiners at the U.S. Patent & Trademark Office (USPTO).

The examiner, in a first and second rejection, equated a “well-charge-level controller” of claim 1 of U.S. Patent Application No. 10/770,072 (“’072 application”) with a “controller 340” of U.S. Patent No. 6,380,571 (“Kalnitsky”). Office Action of Apr. 18, 2006, at 10-12 (“Final Office Action”). Jung appealed. The examiner’s rejection of claim 1 is exemplary:

“Regarding Claim 1, Kalnitsky et al. teach (see Fig. 2, 3, 6) a system comprising a photo-detector array (array of pixel cells (200)-see Col. 2, lines 55-61) having a first charge well (214) (see Col. 5, lines 5-15), a first charge pump (320) (see Col. 5, lines 28-33, 37-39) operably coupled with the first charge well, and a first charge counter (330) (see Col. 6, lines 56-67) op-erably coupled with said first charge pump (through controller (340)) (see Col. 5, lines 28-33, 37-39 and Col. 6, lines 38-44, 64-66). . . .”

In response to the office actions, Jung argued that “Kalnitsky does not teach” the controller. For the first time on appeal (and sounds like Jung made a mistake – he should have argued to the examiner before appealing), Jung explained why his “controller” was not equivalent to the one described in Kalnitsky. In re Jung, at 6-7. As the court explained, it “was not until he arrived at the Board that Jung explained . . . difference[s] more thoroughly, implying that his claims should be read as limited to a preferred embodiment.” Op. at 15.

The CAFC found that the examiner provided sufficient information to “put Jung on notice that the examiner considered Jung’s . . . [controller] to read on Kalnitsky’s” controller, by citing to specific columns and lines in the reference, Kalnitsky. Op. at 10. As expressed here, one may say that an inventor’s proposed claims in a patent application “read on” a description of something similar. When this happens, an Examiner is justified on rejecting the claims as proposed.

Jung argued on appeal that the examiner failed to make a “prima facie case” of anticipation and that the burden had not shifted to Jung to rebut the rejection. The expression “prima facie” is a legal expression that explains who has the initial burden of proof to present sufficient evidence to make their case. Thus, Jung argued that he was not obligated to explain in detail on the record at the USPTO why Jung did not believe the examiner failed to sufficiently reject the claims.

The court explained that the USPTO “satisfies its initial burden of production [of evidence] by ‘adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.’” Hyatt v. Dudas, 492 F.3d 1365, 1369-70 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the patent] application.” 35 U.S.C. § 132. As stated by the court (at p. 9 of the opinion), Section 132 “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).

The court stated that there is “no reason to impose a heightened burden on examiners beyond the notice requirement of [35 U.S.C.] § 132.” Op. at 11. The court explained that 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,” and that 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 section 132 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.

The court explained that, “the examiner’s discussion of the theory of invalidity . . . ["anticipation" under 35 U.S.C. § 102], 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.” Op. at 12 (emphasis added).

From my experience, the vast majority of office actions from USPTO examiners meet this legal burden. However, I wish the minimum quality for a legally acceptable office action was a little higher. It is sometimes unclear as to what elements in the text of cited references map to the elements of the claims that I am presenting. Sometimes an examiner finds the exact words that are in my claims, but that upon careful reading, do not teach the same technology as I am attempting to claim. In these cases, I can just imagine an examiner performing an exact word search from the words in my claims! One lesson from this case (In re Jung) is that examiners have a fairly low burden to rejection claims presented to the USPTO.

Based on the language of precedent and as hinted at in this opinion, there is a particular style of arguing and submitting evidence to the record at the USPTO – a style that is distinct from presentation of evidence in traditional state and federal court cases. Experience in drafting responses to office actions from USPTO is essential to getting the right balance of presenting a strong case for allowance to the examiner without placing restrictions on claims – restrictions from the “history” of the case, and not from the explicit language in the final version of issued patent claims.

Toward the end of the Jung opinion, the court explained the true issue in this case was “whether the examiner ‘reasonably construe[d] the claims’”. Op. at 13. This issue is substantive and is proper grounds for appeal (and will be an issue to address in another blog post). Thus, as the court explained, this decision can and should be decided by evaluating the language of the claims in view of the language of Kalnitsky. The court found that the examiner and the board of appeals (“Board”) properly did that and rejected the claims as presented based on Kalnitsky. The court recognized that the Board “further explained the examiner’s rejection, . . . [and noted] that nothing in the claims limited the controller to this embodiment.” The lesson is that the language in the claims – as presented – is critical when making arguments to overcome references cited by an examiner to reject patent claims.

On any appeal, the court reminded patent practitioners that an applicant must show “reversible error” to the Board and show “what the examiner did wrong,” in order to win an appeal of a rejection by an examiner. The court explained that Board reviews the examiner de novo, and the examiner retains the burden to show invalidity. Op. at 16.