In most cases, the distinction between appealable vs. petitionable issues at the USPTO is quite clear. For example, if you believe that a patent examiner has prematurely entered a final rejection, the appropriate avenue for relief is by way of petition. Indeed, the MPEP states such explicitly. MPEP 706.07(c). Yet, not all examination/reexamination disputes are so clear cut. (See earlier discussion on ex parte SNQ review process here)

The distinction between appealable vs. petitionable disputes is especially critical in post grant proceedings such as patent reexamination. This is because failure to appreciate the distinction between the two could potentially forfeit substantive patent rights.

Petitionable issues cannot be appealed to the Board of Patent Appeals and Interferences (BPAI). In other words, a failure to recognize petitionable issues, as they occur, can result in an inability to address them before the Office.

In deciding whether an issue is petitionable vs. appealable, the predecessor court of the CAFC explained, [t]here are a host of various kinds of decisions an examiner makes in the examination proceeding – mostly matters of a discretionary, procedural or non-substantive nature – which have not been and are not now appealable to the board or to this court when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner. In re Hengehold,440 F.2d 1395, 1403 (CCPA 1971).

Disputes that are “directly connected with the merits of the issues involving rejections of the claims” often times relate to matters of claim language and claim interpretation. Disputes over such matters are common in both application prosecution and patent reexamination. Whether or not these issues are appealable vs. petitionable can be especially confusing.

For example, this week in Ex Parte Taymac Corp. (2011-010682) the Board considered a question relating to a 112 rejection of new claims presented during patent reexamination. During a patent reexamination of U.S. Patent 5,763,831, the examiner rejected the new claims 44-47 as lacking written description support. The Patentee countered that the claim language rejected by the examiner was also found in the original claims, and that MPEP 2258 forbids such a rejection in patent reexamination.

In relevant part, MPEP 2258 provides:

Where new claims are presented or where any part of the disclosure is amended, the claims of the reexamination proceeding, are to be examined for compliance with 35 U.S.C. 112. Consideration of 35 U.S.C. 112 issues should, however, be limited to the amendatory (e.g., new language) matter. For example, a claim which is amended or a new claim which is presented containing a limitation not found in the original patent claim should be considered for compliance under 35 U.S.C. 112 only with respect to that limitation. To go further would be inconsistent with the statute to the extent that 35 U.S.C. 112 issues would be raised as to matter in the original patent claim.  . . If a limitation that appears in an existing patent claim also appears in a claim newly presented in a reexamination proceeding, that limitation cannot be examined as to 35 U.S.C. 112.

(emphasis added)

In addressing the Patentee’s argument, the Board explained that it need not consider the issue since it was a petitionable matter, citing 37 C.F.R. § 41.31(c). Nevertheless, the Board reversed the examiner rejection finding that support did in fact exist.

While ultimately the Board reversed the rejection, a 112 rejection that runs afoul of 35 U.S.C. § 301 seems to be more of a substantive rather than procedural issue. The fact that the MPEP describes a procedure/policy for handling such § 112 rejections, for consistency with the patent reexamination statute (35 U.S.C. § 301), would not seem to render the ultimate issue a procedural/petitionable matter.

Had the Board not found support for the claims on appeal, the Patentee would have been well past the time to petition the examiner’s decision under 37 C.F.R. § 1.181 (outside the two month window). While a later petition under 37 C.F.R. § 1.183 is possible, such relief requires extraordinary circumstances.

Clearly, Patentees and participating Third Party Requesters (IPX) need to closely consider such issues to avoid losing the opportunity for USPTO review.

In inter partes reexamination 95/000,034,Vanguard Identification Systems Inc., v Bank of America Corporation, the BPAI reversed the examiners obviousness rejection, emphasizing the difference between a proper obviousness determination for design and utility patents. (previous discussion here) 

The BPAI determined that the prior art reference of record did not show a data card containing any type of aperture, but secondary references did.  Nevertheless, the BPAI determiend that it would not be obvious to modify the primary references to include one of the circular apertures of the secondary references.  The Board explained that obviousness of a design patent requires an analysis of whether the design would have been obvious to a designer of ordinary skill who designs articles of the type involved and that there must be a reference, a something in existence, the design characteristics of which are basically the same as the claimed design in order to support a holding of obviousness.  

Vanguard then took the fight on to the CAFC in Vanguard Identification Systems Inc. v. David J. Kappos et al.

Unfortunately for Vanguard, the reversal of the BPAI was affirmed without comment (Rule 36, here). Clearly, that not all inter partes patent reexaminations end in defeat for Patentees. 

Interestingly, this is the first inter partes patent reexamination to make it through the full process (i.e., from initial filing to CAFC appeal) some 11 years after enactment of the inter partes patent reexamination statutes. Also interesting in that the USPTO was supporting the patentability determination here, as opposed to their usual role.

Yesterday, the Board of Patent Appeals & Interferences (BPAI) heard oral arguments in the longstanding dispute between Callaway Golf and Acushnet. Acushnet is the parent company of Titleist, maker of the ProV1 family of golf balls. Callaway asserts that the ProV1 balls infringe several of their patents (6,210,293, 6,503,156, 6,506,130, 6,595,873)

In 2006, Acushnet sought inter partes patent reexamination of the Callaway patents. To date, all claims of the Callaway patents were rejected by the USPTO. These rejections were considered by the Board yesterday.

In the co-pending litigation the patents were also found invalid. (March 2010 D.Del). Interestingly, despite a 1996 contractual agreement between the companies that mandated all proceedings be conducted in the Delaware court, Acushnet sought patent reexamination at the USPTO anyway. Late last week, the court reinstated a decision determining that the pursuit of patent reexamination by Acushnet was a breach of the contract. As a result of that decision (here) Callaway feverishly petitioned to delay the Board hearing, arguing that the Board should not help Acushnet break their contractual obligations; not surprisingly, the Board declined that invitation.

So, yesterday, the Board learned all about Acushnet, a company known for their balls.

The majority of the debate related to whether or not a certain hardness range recited in the claims referred to a characteristic of the material, used to construct the ball, or the ball itself. Callaway argued that the claims were directed to a ball, not ingredients. It was also argued that since a Markman Order on the meaning of the claim terms had been considered by the BPAI that this claim interpretation should be controlling on the USPTO. Callaway also referenced secondary indicia of non-obviousness that pointed to the sales success of the ProV1 golf balls.

Callaway emphasized to the Board that the claims reciting a polyurethane embodiment were of primary importance. When prompted by the Board as to whether or not Callaway was intending to waive the claims not including this feature, Callaway agreed to waive those claims on the spot. I am guessing the Board probably would have preferred that happen before reading all of the briefs and associated examiner positions.  Strange.

In rebuttal, Acushnet explained that the specifications of the patents were broad enough to cover a ball hardness interpretation and an ingredient hardness interpretation, thus the PTO was correct in rejecting the claims. Acushnet then explained that they (Titleist) sell more balls than anyone else because they are the market leader and that the Callaway evidence of secondary considerations had no meaningful nexus to the patented claims.

The dispute will inevitably head on to the CAFC no matter the decision of the Board. If the claims ultimately fall at the CAFC (my guess), I will be very interested in the outcome of the breach of contract issue. Can Acushent really breach the contract in view of CAFC indications that a patent is “void ab initio” when found unpatentable as a result of reexamination. Standard Havens Products Inc. v. Gencor Industries Inc., 996 F.2d 1236 (Fed. Cir. 1993) (per curiam). In other words, if the patent never existed….what about that contract?

In a separate action on November 11, 2008, GEOSPAN requested the U.S Patent Office to reexamine Pictometry’s U.S. Patent Number 7,424,133, entitled “Method and Apparatus for Capturing, Geolocating and Measuring Oblique Images.” This action is a procedure used by the U.S. Patent Office to allow the claims in existing patents to be contested (Ref. No. 95/001,110)

In its request, GEOSPAN set forth substantial new questions of patentability based upon  a September 5, 2002 printed publication by David Rattigan, a reported for a Boston newspaper. The USPTO ordered inter partes reexamination of the ‘133 Patent, and subsequently issued a Non-Final Office Action on February 2, 2009 rejecting claims 17-24 on anticipation and obviousness grounds. Currently, the rejections are on appeal to the BPAI.

On May 25, 2010, the patent owner filed its brief. On the appeal, the Patent Owner is contesting  the USPTO’s conclusion that the submitted declaration evidence filed under 37 C.F.R. § 1.131 (swear behind) is insufficient as well as the conclusion that declaration evidence filed under 37 C.F.R. § 1.132 is insufficient to disqualify the Rattigan publication based upon attribution. (MPEP 716.10). Of particular interest is the dispute between the USPTO and the Patent Holder as to whether declaration evidence can be used to disqualify a prior art reference as “attributed” to the  inventors’ work where none of the inventors is an author of the printed publication used to reject the claims. 

The USPTO has taken the position that some overlap must exist between inventorship and authorship of the prior art reference to properly be “attributed.” Conversely, the patent owner in its brief relies on In re Costello, 717 F.2d 1346, 1347 (Fed. Cir. 1983), Ex parte Nykoluk, Appeal No. 2008-1778, page 21 (Bd. App. & Int. 2008) and Ex parte 5872952 et al., Appeal No. 2005-2512 (Bd. App. & Int. 2006) in arguing that co-authorship is not a requirement for disqualifying a reference using a § 1.132 declaration.

PPG Comment:  Attribution typically involves co-authorship as inventions are often described in academic papers by the inventors along with other contributors. The idea behind attribution is that a description initially identified as prior art that is “attributable” to the inventors work, should be disqualified. Here, the description is by a reporter commenting on a promising technology that formed the basis for the patent, as demonstrated by the declaration evidence of record (Patent Owner Brief here). The Office appears to be requiring co-authorship of the news report not based upon any holding of the courts, but instead, based on commonly encountered fact patterns.

An Answer to the appeal briefing was issued last week (here). I was hoping for a bit more insight into the position of the Office. Unfortunately, the Answer simply incorporates the positions of the RAN (which, was of course written prior to the briefs). Very strange.

Back on May 26, 2010, the same mechanism was noticed in the Federal Register for ex parte patent reexamination appeals. Yesterday a notice was provided in the Federal Register adding inter partes reexamination to the BPAI review mechanism. These improvements should help avoid some of the more aggravating delays experienced in reexamination appeals to the BPAI. Of course, with a significant, and growing appeal backlog, any impact of this change may be offset by sheer numbers.

The claims cover pluripotent human embryonic stem cells (ES) cultured in vitro. The request for inter partes reexamination of the ’913 patent was filed on July 17, 2006 by the Public Patent Foundation (PubPat) on behalf of The Foundation for Taxpayer & Consumer Rights (FTCR), now known as Consumer Watchdog. The BPAI decision does not affect two other WARF embryonic stem cell patents (U.S. Patent Nos. 5,843,780 and 6,200,806) that were challenged by FTCR in reexamination proceedings resulting in confirmation of the patentability of their claims in reexamination certificates. However, the rejection of the ’913 patent claims may have a reverberating effect on the stem cell industry.

Following an order granting inter partes reexamination of the ’913 patent on September 29, 2006, the Examiner rejected claims 1-3 based on anticipation and obviousness rejections. However, in the Action Closing Prosecution of February 25, 2008 and the Right of Appeal Notice of June 8, 2008, the Examiner withdrew the rejections and found claims 1-3 allowable. On appeal the Third Party Requester (TPR) contended that the Examiner committed reversible error in improperly withdrawing the rejections of claims 1-3 made in the Examiner’s initial Office Action and in failing to adopt a rejection that had been proffered by the TPR in the request for inter partes reexamination. Claim 1 of the ’913 patent was amended several times during the reexamination proceeding. Claims 2 and 3 depend from claim 1 and were not separately argued for patentability on appeal. The narrowing of claim 1 by amendment, should the rejection of claim 1 be reversed on appeal, may result in intervening rights applying to these claims in any enforcement proceeding against a third party.

There were two issues to be decided by the BPAI in determining whether the claims should be properly rejected. 1) Whether the Williams patent (U.S. Patent No. 5,166,065) described and enabled the claimed embryonic stem cells derived from a pre-implementation embryo? 2) Whether the Williams patent disclosure of human ES cells is negated by the facts in the Cherny (Robert A. Cherny, Strategies for the Isolation and Characterization of Bovine Embryonic Stem Cells, 6 Reprod. Fertil. Dev. 569, 571 (1994)) article? The BPAI found that the Williams patent did describe and enable the claimed embryonic stem cells derived from a pre-implementation embryo and that Cherny did not negate the Williams patent disclosure of human ES cells.

As a consequence, the BPAI reversed the Examiner’s decision to withdraw the obviousness rejections of claims 1-3 based on the Williams patent alone and in combination with other prior art references. However, they affirmed the Examiner’s decision not to adopt proposed obviousness rejections of claims 1-3 based on the other prior art references without the Williams patent. In addition, the BPAI designated as new grounds of rejection the rejection of claims 1-3, as amended, based on the Williams patent alone and in combination with the same other prior art references comparable to the rejections withdrawn by the Examiner during the inter partes reexamination proceedings. By designating the adoption of TPR proposed rejections as new grounds of rejection under 37 C.F.R. § 41.77, the patent owner may either request that prosecution of the reexamination proceedings be reopened before the Examiner or rehearing by the BPAI on the same record.

Interestingly, in making its decision the BPAI interpreted § 41.77 to cover the situation where the examiner withdrew a rejection after the patent owner amended a claim rather than never having adopted the third party requesters proposed rejection as literally stated in the rule. Of course, once the patent owner amended claim 1 and the Examiner allowed claims 1-3, the TPR proposed that the claim be rejected, thus reserving its right to independently appeal the Examiner’s allowance of claims 1-3. So in essence, the Examiner decided not to make or adopt a rejection of the amended claims as proposed by the TPR, albeit by his withdrawal of his earlier rejection of the claims prior to amendment as of the time of the appeal.

According to Teddy Gron, who is of Counsel at Oblon Spivak and a former Administrative Patent Judge at the BPAI, “[o]nce the Board has jurisdiction under 35 U.S.C. 134(a),(b), or (c), it has jurisdiction to resolve patentability issues relating to the claimed subject matter and may act accordingly. New grounds of rejection may be raised and entered by the Board itself, e.g. 37 CFR §§ 41.50(b) or 41.77(a). The new grounds of rejection may be based on new evidence or, as in this case, based on new rationale (KSR) relating to evidence of record. The Board in this case acted well within its jurisdiction and raised a new, non-final ground of rejection based on the rationale in the Supreme Court’s decision in KSR.”

Reopening of prosecution before the Examiner permits the filing of an amendment and/or new evidence, whereas a rehearing before the BPAI to challenge the correctness of the decision is limited to the same record. In either case, expect that the patent owner will continue its fight against these rejections in order to obtain a favorable reexamination certificate at the end of the proceedings.

For FY 09 ending September 30, 2009 the BPAI docketed 119 ex parte reexamination appeals; disposed of 96 and ended the fiscal year with 78 ex parte reexamination appeals in inventory.

BPAI pendency was 5.9 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 27.7 months down .3 months from FY 08. The pendency of BPAI decided appeals from ex parte reexamination filing date was 58.2 months down 2.2 months from FY 08.

Inter partes reexamination appeals:

For FY 09 ending September 30, 2009 the BPAI docketed 15 inter partes reexamination appeals; disposed of 11 and ended the fiscal year with 10 inter partes reexamination appeals in inventory.

BPAI pendency was 7 months down 1.1 months in FY 08. The pendency from Notice of Appeal to decision was 32.1 months up 4.5 months from FY 08. The pendency of BPAI decided appeals from inter partes reexamination filing date was 67.3 months up 16.4 months from FY 08.