“Is That the Case?”

Here’s a quick “self-training” question for some of you who are more experienced examiners (and others, of course): should trainees start reading case law?

“in training” had a comment in the “Strange Application” thread, which made me think about this question:

One thing I strongly advise you to do (while you still have time), is to *learn* as much as possible from examination, rather than just trying to get cases out the door as fast as possible. Seriously *READ THE MPEP* – there are sections in that thing that are not covered in any lectures, and are quite useful in examination. Also, read case law – not nearly as important or helpful as reading the MPEP, but being familiar with court precedent allows you to formulate some arguments that you might not be aware of. Finally, skim some office actions from your primaries. This will give you an idea of how things are typically done in your art – the format of the actions, the thoroughness of the rejections, the number (and type) of restrictions done, etc.

(bold and italics added)

While I can’t disagree with most of what he had to say, I am of two minds when it comes to self-studying case law. On the one hand, “in training” is right; you can learn a lot from case law. Judicial clarification of the issues could be a real asset when trying to decide what to do with a particular rejection or allowance.

On the other hand, most new examiners – and most examiners, I believe – are not lawyers. Case law is usually relevant when the fact pattern of your application/record matches that of the decision in the case you are attempting to apply. Determining whether or not the fact patterns match (or that there are such things as fact patterns) is probably an alien process to the majority of examiners. Second, the language used is very important, and we simply aren’t trained to interpret case law. People get paid to do that and give us guidance in the form of MPEP corrections and additions. They get paid well to do that. For example, the recent CAFC ruling regarding the doctrine of equivalents might easily be interpreted by a non-lawyer to apply also to obviousness determinations. Do I know if it does or not? No. (Of course, I haven’t read the case, either.)

Third: Do you think you’ll be able to convince your trainer or SPE that you’ve properly applied case law, especially if you can’t find corroboration in the MPEP?

Finally: Doesn’t applying case law open the examiner up to all kinds of problems? You’re arguing with a lawyer about applying case law, which they are much more trained to deal with than you are. You’re also making a determination that you can’t necessarily back up with anything published by the Office. Doesn’t that make you a sitting duck in terms of quality checks?

Now, there are some cases (like Graham v. Deere) that make good sense to read, since we use the Office’s interpretation of those decisions on a daily basis. So anything that helps you understand those factors better, while still being consistent with Office policy, seems like a good idea. Otherwise, aren’t you playing with fire? If there’s a generally applicable court decision, the Office should supply guidance on how to apply it… right?



8 thoughts on ““Is That the Case?””

  1. Further clarification of “read case law”:
    – again, the primary advantage of reading case law is to expose yourself to arguments that are not covered in lectures or the MPEP. Whether or not you cite to case law in your actual Office Actions, the additional knowledge should be of help.
    – a major component of reading case law is reading the cases cited in the MPEP. The interpretations that MPEP provides are typically cursory and incomplete. Reading the actual case law will grant further insight into when it is appropriate to apply it. This is especially true for certain types of obviousness rejections (e.g., “to make integral”, “duplication of parts”, etc.)
    – reading case law in a vacuum is unlikely to be of much use. You’re correct in that examiners, as a general rule, aren’t trained to interpret case law per se. As such, it’s good to start with case law that has already been interpreted for you. However, I think you’ll find that the more you read, the easier it becomes to understand. The most dangerous use of case law is taking things out of context; but, assuming you’ve read the entirety of the court decision and the background of the issue being argued, I don’t think it’s that difficult, even for non-attorney examiners, to determine whether the case law applies to a particular situation.

  2. Thanks for the clarification, in training. I think we largely agree. Your original comments reminded me of some conversations I have overheard from new examiners, who were, I think, less balanced in their view of applying case law.
    I hope you don’t think I was “calling you out,” btw. I just thought your comments could provide a good basis for discussion.


  3. Perhaps what they mean by “case law” is the standard boilerplate list of sample 103 rejections, in which various factors have been used by the courts to determine obviousness. They’re typically of the format “Ref A. discloses the claimed invention except (some difference). However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to (modify the reference to conform to the present invention), since it has been held that (this modification) involves only routine skill in the art. See A v. B, xx USPQ yy”.

  4. Relativity,

    Don’t bother with the case law. If you cite it to me, I’m just going to cite you MPEP 2144.04, and then shred your application of whatever case you’re relying on. The odds that the facts of the case you’re citing are sufficiently similar to the application are remote, if not non-existent, as anybody trained in the application of case law can always find some distinguishing fact(s).

    If you must cite case law, please at least read it before citing it. I get that In re Aller, In re Harza, In re Gazda, In re Leshin, etc. boilerplate cited to me all the time. I’m fairly confident that none of the examiners who cite it have ever actually read it. Don’t repeat their mistakes.

    “[I]t’sgood to start with case law that has already been interpreted for you,” is bad advice. You can’t have case law interpreted for you. It’s intepretation, i.e. application, is unique to each case. In re Aller did not hold that “it’s obvious to routinely expirement and optimize” as the little snippet in the MPEP would have you believe. The facts of In re Aller, using that case as an example, are specific to the facts of that particular case. If those facts aren’t sufficiently similar to the facts of the application you’re examining, you can’t rely on the court’s rationale.

    I once responded to an examiner’s application of case law by distinguishing the facts of the case with the application. The examiner responded with some nonsense to the tune of, “Well, everybody knows that this case is universally regarding as standing for the proposition that…” Puh-leeze. Don’t waste the applicant’s time, or your time, with such a ridiculous response.

    I enjoy your postings. Please keep up the entertaining work.


  5. Having trained a bunch of primaries and currently training a bunch of juniors, I don’t think that reading the caselaw will help you as much as reading and rereading the MPEP sections 700, 2100, 800 and 600. I actually am a lawyer and do read the caselaw. Mostly, the caselaw does not apply to the specifics of your case. I will say that the recent trend at the CAFC of affirming everything as obvious post KSR may be worthy of note, but only as a trend, not as a guide to any particular application.

    I also remember when one of my trainees got his first response, and was very persuaded by the argument. Until I pointed out where the argument relied upon something that was factually incorrect and, to be honest, misleading. While most attorneys do not mislead, when they have the time, the certainly argue their side of the case as persuasively as they can. The job of the examiner is to attempt to look at the facts objectively. If the attorney is right and there are no issues barring patentability, allow the case. If not, explain (as clearly as you can).

  6. WHen I first came on as an Examiner, the MPEP was not citable as a reason for doing something. I don’t personally believe it is now. THE MPEP uses the law, the rules and the case law for support. THis was the way I was trained over 20 years ago. THe MPEP was used to support your reason for doing something when challenged within the office not with the public. This has changed as examiners have become much less conversant with the case law. I used to read the PQ’s at lunch for fun, now I can barely find the link week to week on the PTO internal webpage.

    So, read the MPEP but remember that the MPEP is only a derivation of the law, the rules and the case law. It is like the difference between reading a general history book and reading the actual speeches of the presidents or the letters of civil war soldiers.

    My first SPE gave me great advice when he told me to read the law, the code and the MPEP as much as possible in that order.

    To really understand what is not boiler plate about being an Examiner an appreciation for the fluid nature of the case law is critical. To be able to stand up for one’s self when defending one’s position with respect to a rejection requires such understanding.

    Or so I believe. Do what you think is best and get the stuff out the door. That’s what they pay us for, isn’t it?

  7. Relativity,

    Yes you should try to read some of the case law, particularly if the case law is going to apply uniquely the area of art you will be specializing in. So if you are going to be examining say, computer-related inventions and determining whether claims pass muster under 101, you should read seminal cases in that area like In re Alapatt, State Street Bank, etc. rather than relying blindly on snippets in the MPEP that talk about “concrete results” and then demanding afterward that every Applicant who crosses paths with you has to toss a bag of cement into his claims.

    However, when reading case law, keep a few things in mind: (1) Many of the attorneys out there spent 3 years in law school learning how to read case law and then an additional 5, 10, 15, etc. years beyond law school perfecting their ability to read case law. (2) There is a hierarchy of authority as to who/what trumps whom in the world of statutes, case law and administrative agency publications. It goes something like this:

    Mother Nature (she trumps everybody)
    US Constitution
    Congressional Legislation (where title 35 USC is not the only one there)
    US Supreme Court decisions (in theory only)
    Fed Cir decisions
    Precedential Board of Appeals decisions
    The properly promulgated agency rules (37 CFR)
    The MPEP which is not even a rule but is rather a “guideline”

    As you can see, the MPEP is way down there on the bottom of the hierarchy list.

    You’re going to be doing a lot of 103 action if you stick around at the USPTO. So may I suggest that you read and re-read 35 USC 103 every day to make sure its language is known to you and understood by you everyday like the back of your hand.

    You’re going to be doing a lot of “giving notice” to Applicants if you stick around at the USPTO. So may I suggest that you read and re-read 35 USC 132 every day.

    May the force be with you. (Don’t sell out to the Dark side.)
    –Obee One Stepback Kanobee

  8. The Foreword to the MPEP states: This Manual is published to provide U.S. Patent and Trademark Office (USPTO) patent examiners, applicants, attorneys, agents, and representatives of applicants with a reference work on the practices and procedures relative to the prosecution of patent applications before the USPTO. It contains instructions to examiners, as well as other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application. The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations.

    As it states, the MPEP contains procedures which the examiners are required or authorized to follow in appropriate cases. In other words, the MPEP is binding on the examiners. Conversely, as it does not have the force of law or the rules, it is not binding on applicants or practitioners.

Leave a Reply

Your email address will not be published. Required fields are marked *