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[NJ Patent1]

Patentatt:  Thx.  Just now in middle of SG's initial Cert breif (couldn't get a date 4 Saturday night  )  May modify my post slightly, and will consider ur comment if I do.  Caio.

[JustAnotherExaminer]

"Specifically, to build a case for consideration by a non-expert district judge may require evidence that would be superfluous before the PTO with its technical experts."

Ahahahaha. It's like those telephone interviews that start with the attorneys saying, "Your Office Action was amazing. That was really good art. But..."

Even though Hyatt has solid arguments, I really hope they lose.  Appealing to the DC and and filing a declaration that says "one of ordinary skill would know my specification supports the claimed subject matter".  Really? 

The entire thing sounds like it was literally a "No support", "Yeah huh", "Nuh uh", "Yeah huh", "Nuh uh", "yeah huh", "nuh uh" argument except for the BPAI's remarks.

[patentatt]

"Specifically, to build a case for consideration by a non-expert district judge may require evidence that would be superfluous before the PTO with its technical experts."

Ahahahaha. It's like those telephone interviews that start with the attorneys saying, "Your Office Action was amazing. That was really good art. But..."

Right.  Applicants think the PTO is a bunch of incompetent fools... until they issue your patent, then suddenly examiners are geniuses who can do no wrong!

Nevertheless, I think it's perfectly reasonable to think that applicants should be permitted to provide a district court judge with more evidence than than given to APJs.  District court judges might have a college degree in English and no technical training whatsoever.  Like my mother, they might have no idea how to download a file their desktop, much less understand the technology in a patent case.

More importantly, the whole point of a 145 action is to introduce new evidence.  If you're not going to introduce new evidence, then just go straight to the CAFC and avoid the extra trip and fees at district court.  The PTO responds that 145 permits you to submit evidence that you could not have presented before, but that fact situation is so rare that it would eviscerate the policy behind the statute.

Even though Hyatt has solid arguments, I really hope they lose.  Appealing to the DC and and filing a declaration that says "one of ordinary skill would know my specification supports the claimed subject matter".  Really? 

The entire thing sounds like it was literally a "No support", "Yeah huh", "Nuh uh", "Yeah huh", "Nuh uh", "yeah huh", "nuh uh" argument except for the BPAI's remarks.

As Hyatt's brief observes, the "new facts and rationales" in the BPAI decision constituted a new ground of rejection.  Unfortunately, Hyatt does not seem to have made that argument below - perhaps because Leithem and Stepan were decided afterwards.

As far I am concerned, Verizon's amicus brief gets this almost entirely right: WD support should be a question of law, not fact, and "evidence" that Hyatt wants to introduce now is essentially mere attorney argument, with reference to the specification, and not evidence in any traditional sense.  I don't understand why any judge "needs" the appellant to point to support in the specification - the judge is not blind or incompetent - he can read the spec and see if support is there himself.

[NJ Patent1]

"More importantly, the whole point of a 145 action is to introduce new evidence.  If you're not going to introduce new evidence, then just go straight to the CAFC and avoid the extra trip and fees at district court"

Patentatt:  Per previous post, no argument from me on that point.  Why have two separate but totally redundant judicial procedures? 

"As Hyatt's brief observes, the "new facts and rationales" in the BPAI decision constituted a new ground of rejection."

IMHO: I find no new “rationale” (but legal minds will differ on this point - SCOTUS, who is last, will tell us who is “right”).  All that happened is that Hyatt (or his attorney) was lazy, threw-together a perfunctory “table” saying these WORD(S) are on this page are here and here.  Could have easily - albeit tediously - at billable cost to Hyatt - developed the written description argument(s) that were ultimately presented as “evidence”.  Patentatt:  My view appears to comport with your ur statement “and "evidence" that Hyatt wants to introduce now is essentially mere attorney argument, with reference to the specification, and not evidence in any traditional sense.”  IMO such "argument" could have been presented to the PTO.  What might be "new evidence"?  Live expert testimony concening how PHOSITA would glean as disclosed in the spec ?

[Isaac]

I don't understand why any judge "needs" the appellant to point to support in the specification - the judge is not blind or incompetent - he can read the spec and see if support is there himself.

No, generally speaking the judge is not equipped to do any such thing.  The judge likely has a BA degree in political science who has been doing his best to duck math and science courses since finishing middle school.  He is going to rely heavily on reports of others and his trust in the PTO as the subject matter experts in determining whether there is support in the specification.   The judge is good at making the right decision once he's been educated by each side, but he should not be expected to be able to properly read a patent specification.

[JustAnotherExaminer]

"As Hyatt's brief observes, the "new facts and rationales" in the BPAI decision constituted a new ground of rejection."

IMHO: I find no new “rationale” (but legal minds will differ on this point - SCOTUS, who is last, will tell us who is “right”).  All that happened is that Hyatt (or his attorney) was lazy, threw-together a perfunctory “table” saying these WORD(S) are on this page are here and here.  Could have easily - albeit tediously - at billable cost to Hyatt - developed the written description argument(s) that were ultimately presented as “evidence”.  Patentatt:  My view appears to comport with your ur statement “and "evidence" that Hyatt wants to introduce now is essentially mere attorney argument, with reference to the specification, and not evidence in any traditional sense.”  IMO such "argument" could have been presented to the PTO.  What might be "new evidence"?  Live expert testimony concening how PHOSITA would glean as disclosed in the spec ?

I agree with there being no new grounds of rejection.  The claimed invention is either enabled (to a PHOSITA) by the written specification or not, regardless of what either side argues or has said in the past.

[patentatt]

I agree with there being no new grounds of rejection.  The claimed invention is either enabled (to a PHOSITA) by the written specification or not, regardless of what either side argues or has said in the past.

That's not the test for whether a ground of rejection is new.

Also, let's be careful not to conflate enablement and WD.

[NJ Patent1]

["i]That's not the test for whether a ground of rejection is new.[/i]"

Patentatt:  your confessed “pro-applicant” leanings acknowledged, I have to disagree on this one.  There are various terms-of-art involved here, tough to keep straight:  “new rejection” "new grounds”, “thrust of the rejection” and so forth.  Per Stepan “new grounds” is a question of law, and, as I read Stepan, turns on whether Applicant had a “full and fair” opportunity to address (litigate in the cites) the merits - admittedly a judgment call (i.e. what panel and what they had for breakfast), and, per JAE, there were no new findings of fact.  IMO Hyatt unquestionably had a “full and fair” opportunity to show WD of the (100+) claims, but chose not to.  It was simply too much work read too much $$$)

Unless I forgot what I read over the weekend, the “grounds” in Hyatt were, on the one hand, the content of the new claims, and on the other, Applicant’s explication of the WD of the new claims.  I may be wrong, but I thought burden was on Applicant - not on the Examiner or the Board - to point-out “support” (WD and/or enablement) in the spec for new or amended claims.?   

There is no 102(a) vs. 102(b) debate here as in Stepan, or what the PA taught as in Leithem.  I stand by my and JAE’s posts that, in this case, there were no new “grounds” (question of fact)  counter arguments. 

"Also, let's be careful not to conflate enablement and WD."

Agreed.  However there are lots of “sound bites” from CAFC decisions saying that the line is difficult to draw / often blurred.  And unless I screwed-up, Hyatt’s problem was straight WD. 

[patentatt]

["i]That's not the test for whether a ground of rejection is new.[/i]"

Patentatt:  your confessed “pro-applicant” leanings acknowledged, I have to disagree on this one.  There are various terms-of-art involved here, tough to keep straight:  “new rejection” "new grounds”, “thrust of the rejection” and so forth.  Per Stepan “new grounds” is a question of law, and, as I read Stepan, turns on whether Applicant had a “full and fair” opportunity to address (litigate in the cites) the merits - admittedly a judgment call (i.e. what panel and what they had for breakfast), and, per JAE, there were no new findings of fact.  IMO Hyatt unquestionably had a “full and fair” opportunity to show WD of the (100+) claims, but chose not to.  It was simply too much work read too much $$$)

Unless I forgot what I read over the weekend, the “grounds” in Hyatt were, on the one hand, the content of the new claims, and on the other, Applicant’s explication of the WD of the new claims.  I may be wrong, but I thought burden was on Applicant - not on the Examiner or the Board - to point-out “support” (WD and/or enablement) in the spec for new or amended claims.?   

There is no 102(a) vs. 102(b) debate here as in Stepan, or what the PA taught as in Leithem.  I stand by my and JAE’s posts that, in this case, there were no new “grounds” (question of fact)  counter arguments.

I've been pretty precise about the terms used here.  The classic test for whether a ground of rejection is new is found in Kronig:

“[T]he ultimate criterion of whether a rejection is considered ‘new’ in a decision by the board is whether appellants have had fair opportunity to react to the thrust of the rejection.”
In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976)

The CAFC has elaborated on that standard recently in Leithem and Stepan, using virtually identical language (even though, weirdly, neither case cites the other);

“Mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.”
In re Leithem, Appeal No. 2011-1030 (Fed. Cir. 2011) (slip op. 7)

“Mere reliance by the Board on the same type of rejection or the same prior art references relied upon by the examiner, alone, is insufficient to avoid a new ground of rejection where it propounds new facts and rationales to advance a rejection—none of which were previously raised by the examiner.”
In re Stepan, Appeal No. 2010-1261 (Fed. Cir. 2011) (slip op. 6)

Here, Hyatt did not have a fair opportunity because the BPAI relied on several new facts and rationales in its decision that were not earlier presented by the examiner.  Because Hyatt did not learn about these facts and rationales until the BPAI decision, there is no way that he could have earlier rebutted them.  He is hoping that the 145 action will provide the "fair opportunity" that he should have received earlier.

Remember, you're not just arguing with me here, you're arguing with Aaron Panner, the former Supreme Court clerk who authored Hyatt's brief.

[Simpletown]

I agree with patentatt. It would be nice if the court would find in favor of Hyatt. Unlike the history found in Stepan where the Board actually changed the statutory class of rejection, this one has been the same rejection all along. If Hyatt wins I hopefully never have to address the examiner's pathetic rejections again. Or even the boards. Then I only will only have to present my arguments to a court that actually matters. I doubt we will be so lucky however. The sad part is most clients probably won't want to pay for going to the district courts or federal circuit for every case and I'll be stuck responding to pathetic office actions anyway.

[NJ Patent1]

"I've been pretty precise about the terms used here."

Patentatt:  my comment was not an “accusation”, but rather a reminder (to myself too) that there are many terms-of-art here.  Pls don’t take umbrage.  In fact IMO you introduce yet another term into the recent exchange: “rational”.  Does a new “rational” mean that the “thrust” has changed?  What is the difference btw “basis for rejection” and “rational” for rejection?  But agreed ‘fair opportunity to address the thrust’ - whatever “thrust” is - is the standard. 

I just disagree with you and Panner whether Hyatt did/did not have a “fair opportunity” to address the “thrust”.  My PhD is in chemistry and I’m ill equipped technically to address Hyatt’s spec and claims as a PHOSITA.  So, in reading the Board decision, I only focused on the WD rejections that the Board affirmed.  I would agree with DDC that the Board appears to have gone foraging through the spec to FIND WD - in fact they overturned many WD rejections bcs they found WD. 

Maybe I set-off on a digression from ur OP (albeit a digression w/ practical implications for PTO appeals practice).  I would paraphrase the questions presented as: “to what extent do equitable principles - if they even spill-over from old 4915 into 146 - limit admissible evidence under FRE?  IMO judge Moore may have indeed gotten it right.  There is no reason to exclude relevant evidence from any FRCP 2 civil action.  But if the profferer was not vigilant, or had unclean hands (and in my personal opinion, subject to caveat above, Hyatt was at least non-vigilant), principles of equity - and DCs have equitable powers - might militate against credibility or weight. 

Simpletown: IMO, the outcome in Kapos v. Hyatt is unlikely to have much impact on “pathetic Office actions”.  Sorry - for both of us  .