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February 28, 2010



Nice analysis of this case. I'm sure you've had instances like I've had where the examiner mischaracterizes what one or more references fairly teach, making the obviousness rejection problematic. I view Chapman as primarily important for holding the examiner's (as well as the BPAI's) "feet to the fire" that they fairly characterize what the reference(s) say, or expect any obviousness determination to be deemed suspect. After the KSR "common sense" nonsense view of obviousness, we need cases like Chapman to be able to challenge the factual correctness of the underlying characterizations of the references.


Nice analysis of this case. I'm sure you've had instances like I've had where the attorney mischaracterizes what one or more references fairly teach, making the obviousness rejections fairly simple. I view Chapman as primarily important for holding nobody's feet to any fire that they fairly characterize what the references say, or expect any obviousness determination to be deemed suspect. After the common sense KSR view of obviousness, we need cases like Chapman to remind us that you can spend a lot of money challenging something only to have wasted that money.

Well played, 6. Of course, EG pitched you a softball right down the middle ...

Awww, Kevin, I was hoping for your take on the ultimate question of obviousness. I've never dealt with antibodies so I didn't know how big of a difference bond type and shape are in the field. To me, it seems that the BPAI included the facts in the opinion it felt it needed to reject the claims. If those facts are wrong...

6 and KIR,

I'm not saying that patent agents/patent attorneys don't also suffer from a similar issue. There are certainly instances where I've pushed the examiner to clarify what they believe the reference teaches and have realized that the examiner is on point so I don't push further. I also don't mind you disagreeing with my comment, but your respective responses don't advance the debate:

1. Even SCOTUS said in KSR International that an obviousness determination must be rationally supported by factual evidence (e.g., what the reference fairly teaches). If you don't believe me, note that SCOTUS cited with approval the passage in the Federal Circuit's In re Kahn case which basically says this. If the reference is mischaracterized for what it fairly teaches, you've got an evidentiary issue that, in view of Chapman, may undermine any obviousness ruling it's based on.

2. The fact is I've personally seen all too many instances where the examiner tries to make you guess at what the reference fairly teaches. One annoying tactic is to simply quote what’s in the claim (sometimes word for word) and then cite some passage in a reference that allegedly corresponds without ever identifying where the the specific claim elements are present in that passage. That doesn't even comply with 37 CFR 1.104(c)(2).

3. Another examiner favorite I've seen several times is to rely upon so much of the reference as supports the rejection, but then ignore other portions of the reference which teach away. I tell examiners who do this that the law is clear that you can't have it both ways.

4. One of the most hiliarious instances of mischaracterization of a reference I’ve experienced was an examiner who relied upon a drawing in a patent reference which appeared, at first blush, to be similar to a drawing in the patent application I was prosecuting. The problem was that each of the drawings represented entirely different and unrelated concepts, especially once you compared the text of the reference patent to the text in the patent application. Fortunately, the patent examiner got my “gentle hint” in my response that the reference drawing wasn’t as relevant as he thought it was, and dropped the rejection based on that reference drawing.

Again, I'm not dreaming up this mischaracterization of references issue that Chapman dealt with. In fact, other patent agents/patent attorneys have echoed what I've seen on other patent blogs.


One of the things I enjoy most about what we do is that it is always new - hard to get bored with a job where every time you open a case it's about something you (and almost everyone else) has never heard of before, at least for me.

But a consequence is that deciding how to claim a new invention properly, and deciding whether those claims are patentable, isn't easy. Thus the debate here and the problem in the case.

One of the worst reminders of the Dudas regime is the propensity - on both sides, examiners and applicants/attorneys - to demonize each other. Examiners are not (generally) lazy or incompetent; attorneys and applicants are not (generally) looking for invalid claims or to confuse the examiner or mischaracterize a reference. Most of the time, as in Chapman, there is a misunderstanding - a reference is honestly (but mistakenly) believed to disclose something that supports an argument of obviousness/non-obviousness (since anticipation tends to be (but is not always) a more yes or no situation).

We can all recite instances where the fact-finder isn't listening (remember the factual distinction Judge Rader did not credit in the Kubin case?), or an attorney doesn't/won't acknowledge a legitimate point and just amend the claims? I think the answer is to figure out a better way to make the point, or to suggest amendments that would avoid the reference. Expedite prosecution by determining what is patentable early, and then make sure that is on the record. Not a panacea, but "Examiner/applicant, you ignorant slut" isn't a very productive interaction.

Thanks for your comments.


Sorry if I came off as arguing that examiners are somehow "ignorant." That wasn't my point. My point is that if a reference is mischaracterized (like in Chapman), you've got a fundamental problem with any obviousness determination based on that mischaracterization.

And you're correct this mischaracterization phenomena was much more prevalent during the Dudas regime. But it was a very real problem that I saw too many instances of to say it was isolated phenomena during the Dudas regime that we're still burdened with until the current Kappos reforms take effect (hopefully soon).

Once SCOTUS undermined the TSM test, accurate (and fair) characterization of the references becomes even more important if you want to argue a claimed feature/element isn't present in the cited reference. Put differently, a patent prosecutor can't simply accept what he/she considers to be a mischaracterization of the reference and then expect to argue or amend the claims successfully. That's one of the unfortunate legacies of the prior Dudas regime.

Dear EG:

Didn't mean to scold; I understand the frustrations. And I agree that factual errors in interpreting what a reference teaches (which the PTO admitted had been made in the Chapman case) make it difficult to argue an obviousness rejection in the post-KSR world.

My point was that it should not be a hanging matter or a capital crime for someone (examiner or attorney) to make a mistake sometimes. If we start there, and if both sides spend less time snarling at one another, maybe we can more effectively get the process working again.

Thanks for the comment.


Peace, brother patent attorney.

EG I was tempted to knock the next softball you pitched me out of the park as well but I'm going to refrain.

Let me simply say this instead: There is no debate. Mischaracterization goes on. Period.

The irony is, as I tried to point out to you through my little play on your post, that it happens on both sides so your btching is unwarrented. Every single statement you have made in this thread regarding the Topic can be turned around 180 degrees to the attorney side and still be true.

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