The Board of Patent Appeals and Interferences did something fascinating in Ex Parte Yudoovsky.  The Board sua sponte declined to consider an unauthorized new ground of rejection—even though the appellant never filed a petition. In footnote 3 (slip. op. 5), the Board held:
In the “Response to Arguments” section of the Answer, the Examiner, for the first time, expresses an alternative rationale for unpatentability, which is that it would have been obvious to one of ordinary skill in the art to transform the RT2 and RT3 devices of Ohshimo into a single device, citing In re Larson, 340 F.3d 965, 968 (CCPA 1965) (Ans. 10). This abstract rationale is completely unrelated to the claim interpretation rationale of the Examiner’s stated rejections. We decline to consider this new rationale because it implicitly constitutes an unauthorized new ground of rejection. The “Response to Arguments” section of the Answer is not an appropriate place to raise a new rationale for unpatentability.
In other words, the Board refused to consider a new ground of rejection, because the Examiner failed to designate the ground as “new.”
PTAB Vice-Chief Judge Moore at recent swearing in ceremony.
This is the final segment of my three-part interview with Chief Judge James Smith and Vice-Chief Judge James Moore of the Patent Trial and Appeal Board of the United States Patent and Trademark Office.
In Part I of the interview we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more. Part II of the interview picked up with a comparison between the operation of the PTAB and the Federal Circuit, and then goes on to discuss the working relationship between Chief and Vice-Chief.
In the finale, Part III (which is below), we talk about how cases are assigned to various panels, and we spend time chatting about how and why a case might be a good candidate for an expanded board. We also discussed when PTAB jurisdiction attaches. A light-bulb went off for me during that discussion with respect to the so-called mediation program that has as its goal the short-circuiting of appeals that ought to be unnecessary for the Board to consider.
Earlier today in the Federal Register the United States Patent and Trademark Office (USPTO) announced that it was seeking to form a partnership with the software community to enhance the quality of software-related patents.
Say it all together — Hakuna Matada! That will be a phrase you are going to want to keep handy throughout this article. Whenever you start to get dizzy or nauseated simply say — Hakuna Matada! I find that it sometimes helps, at least momentarily.
From the “oh my gosh, no way, are they really serious” department comes an announcement that the USPTO is forming a Software Partnership that will enable stakeholders to come together through a series of roundtable discussions to share ideas, feedback, experiences, and insights on software-related patents. Never has the word “stakeholders” been quite so ominous. I certainly hope the anti-patent “stakeholders” don’t show up with actual stakes, or perhaps pitch-forks, and proclaim themselves ready to storm the castle! Hakuna Matada!
PTAB Chief Judge Smith at recent swearing in ceremony.
This is Part II of my interview with the top two Administrative Patent Judges at the United States Patent and Trademark Office, Chief Judge James Smith and Vice-Chief Judge James Moore.
In Part I of the interview we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more. Part II (which appears below) picks up with a comparison between the operation of the PTAB and the Federal Circuit, and then goes on to discuss the working relationship between Chief and Vice-Chief.
QUINN: Okay – maybe at the moment while I have it in my head – I don’t know that I have a good sense of what either of your job descriptions really entails on a day-to-day basis. I know both of you, I see you out and about and I have a sense of what you do and it seems to me that neither one of you probably sleep very much. And it seems quite different probably than what you would expect from like say for example Judge Rader is the Chief Judge of the Federal Circuit who in a lot of those—and you clerked at the Federal Circuit so maybe you can speak to this. It seems that the Chief of a court like that is—it’s maybe not quite as heavy of an administrative lift as what you guys deal with, at least that’s my perception. So let me ask you first ,Your Honor, if you had to describe your day-to-day functions and I know they change depending on what’s on fire at the moment, how do you describe your day-to-day functions and then if you could go in talking, maybe compare to how the Federal Circuit operates which I think a lot more lawyers are probably more familiar with.
SMITH: I can do both of those things, I believe together. One clear difference between being Chief Judge of this Board and being Chief Judge of the Federal Circuit is that the size of our organization is substantially larger with roughly 200 judges and more than 120 support staff; we are 300 plus people to manage. I don’t think Judge Rader has quite that many.
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WASHINGTON — The U.S. Commerce Department’s United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO) today announced the formal launch of the Cooperative Patent Classification (CPC) system, a global classification system for patent documents.
An ambitious harmonization effort, CPC is the product of a joint partnership between the USPTO and the EPO to develop a common, internationally compatible classification system for technical documents used in the patent granting process that incorporates the best classification practices from both offices. It will be used by the USPTO and more than 45 patent offices – a user community totaling more than 20,000 patent examiners – all sharing the same classifications helping to establish the CPC as an international standard.
Patent Trial and Appeals Board: Chief Judge James Smith (left) and Vice-Chief Judge James Moore (right). November 28, 2012.
Happy New Year and welcome to 2013!
I want to start 2013 with a bang! Thus, I decided to make our first article of the year my interview with the top two Administrative Patent Judges at the United States Patent and Trademark Office — Chief Judge James Moore and Vice-Chief Judge James Smith.
On November 28, 2012, I interviewed Judges Smith and Moore on the Alexandria Campus of the USPTO in the Madison Building. We sat around a modest conference table in the office of Chief Judge Smith. We chatted for approximately 60 minutes with the tape recorder app on my iPhone running. By the time the interview was transcribed, verified and fact-checked we were up against the holiday, so I decided to lead off 2013 with this inside look at the The Patent Trial and Appeal Board (PTAB).
The PTAB was newly created on September 16, 2012, to replace the Board of Patent Appeals and Interferences. The name has changed to take into account the new workload on so-called post-grant procedures ushered in by Phase II of the America Invents Act, which went into effect on September 16, 2012. The Board, however, is still the Board, and Smith and Moore have been at the helm in charge of unprecedented growth in the number of Judges. In part the growth of the Board has been to push the appeals backlog down, but perhaps primarily to be ready to handle the new responsibilities thrust on the Board by Congress under the AIA.
For those who are looking for insight into how the board operates this interview series is mandatory reading. As a patent attorney I know about the Board, and I suspect you do as well. But only very few cases are ever appealed, although that number is unfortunately growing for a variety of reasons, so how well can any of us really know the Board? Smith and Moore give us a rare glimpse into the Board and the day-to-day inner workings of the two top Administrators who themselves also work hard to seek opportunities to stay engaged and join panels whenever possible. In Part I we talk about their daily roles, USPTO leadership, the battle to get funded to expand the Board and much more.
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