In Re Morris Epstein

rebutted, every never be success could preliminary in- motion for

patentee whose right to exclude

junction denied loses place infringer from the market accused trial.

pending the reasons, we conclude the district

For these any harm which properly found that

court selling to Baker’s

Reebok suffers due 33,000 fully Olympian can

remaining shoes by money damages. Even

compensated irrepa- presumption

granting Reebok harm, successfully been rebutted.

rable has

CONCLUSION did not commit clear

The district court by finding that Reebok will not suffer

error mo-

irreparable harm from the denial of its injunction. so preliminary This is

tion for irreparable harm presuming with our

even findings failed to make

since the trial court success, which could have

on likelihood Although presumption.

raised such finding in neither facts on

district court erred nor, alternative,

likelihood of success

giving presump- Reebok the benefit of

tion, on this record the error was harmless.

Baker’s rebuttal evidence was sufficient

prevent being court’s from clear Therefore, error, legal despite its

error. court did not abuse its discretion

district harm-

denying the motion for the error was must be and is

less. Its decision therefore

AFFIRMED.

In re Morris EPSTEIN. 93-1283.

No. Appeals, States Court of

United

Federal Circuit.

Aug.

1561 Neff, Curtis, Safford,

Gregor N. Morris & P.C., City, argued appellant. New York for him on the brief was Adam L. Brook- With man. Barrett, Sol., E.

Lee Associate Office Sol., VA, Arlington, argued appellee. for him on the was Fred E. McKel- With brief vey, Sol. COWEN, PLAGER, Judge,

Before Circuit SCHALL, Judge, Circuit and Circuit Senior Judge.

SCHALL, Judge. Circuit appeal January This is from of the United States Patent and decision (PTO) Patent Trademark Office Board of (Board), Appeal Appeals and Interferences decision, the Board af- No. 92-2705. its rejection pending examiner’s of all firmed the 20-59) (1-13, 15, 17, appellant and claims application serial No. Epstein’s patent 07/326,749, 21,1989, for an “Inte- filed March Warehousing grated Parts and Electronic System Method.” Claim Distribution anticipated stands 102(b) (1988) by product a software U.S.C. which, Orders,” Placing as ev- which was filed No- SYSTEM” “CONTROL entitled catalog listing, was “in vember and issued March by a idenced 1988; year than more one before use or on sale” All stand re- filing date. claims appellant’s 2) 1,188,814 Epstein Patent No. Canada § 103 jected under 35 U.S.C. as obvious Method,” “Warehousing System (1988) by the CONTROL SYSTEM 11, 1985; on which issued June alone or in combination with product, either 3) brochure, product “EMPTOR” database We affirm. various references. dated 1983. Applicant responded April BACKGROUND cancelling two of the disallowed claims and Appellant’s patent application is directed amending sug- the other claim disallowed computerized a multi-ven- generally toward gested by examiner. parts concept The dor central warehouse. May subsequent In a office action dated fasteners, any type (e.g., parts of elec- 23, 1991, examiner, relying a new on several like), parts, supplies, office and the tronic newly publications, discovered withdrew the parts, on the from a at least information previous pending allowance and all single in number of vendors are stored a examiner, newly claims. As listed system system. enables a

warehouse The publications discovered were: buyer one-stop parts shopping to do via com- 1) “CONTROL SYSTEM 7.0” software puter system. system link has The product, as described in a database handling computerized features for various (no date), print-out which states a re- aspects buying, selling, storage and 1982; January lease date of parts in and retrieval of or from the ware- system.1 preferred house embodi- 2) product, software “SMART/SCSS” ment, buyers both and vendors can communi- Datapro Group described in a Research electronically computer cate with a central catalog February dated which from remote terminals. Vendors can list states a first installation date of Janu- them, parts buyers can available from and 1987; ary parts determine offer which vendors 3) product, “Pro-Search” software as de- place electronically. seek and their orders (no print-out scribed a database application date), filed the on March which a states release date of 21,1989. In a first office action dated March 1.08, October for and version Oc- 1.07; the examiner allowed all but three tober for version of fifty-eight then-pending claims over 4) system, “DIALOG” database as de- following prior art: scribed in a seminar book dated June

1)U.S. 4,734,858 Schlafly Patent No. which contains DIALOG file de- System scriptions separately

for “Data Terminal and dated March 1987 reads; illustrative; d) Application storing single system claim 1 is ain warehouse vendors; goods plurality electrically ordering of a 1. A method for selected items, e) physical comprising storing computer said method in said the identities of steps of: said vendors and the items stored said ven- a) providing computer storage a with data and system; dors in said warehouse station; equipment retrieval b) at a first f) displaying on said screen of one said ("I/O”) providing buyer inpul/output a de- buyer a devices list of vendors who store I/O display plurality vice with a at each of a screen pre-determined system; item in said warehouse stations, buyer each of which is remote from and said first station buyer at least one other of and said g) placing an order for said item from a select- stations; by transmitting ed one of the vendors listed c) providing electrically means for transmit- signal computer. to said ting receiving signals of said between each [JA 250.] computer; devices and said I/O (not sep- Appellant seeks from this Court reversal sample DIALOG searches of the Board’s decision and Order that the dated); arately Commissioner issue a Notice of Allowance. 5) prod- software SYSTEM” “CONTROL uct, Datapro in a Research as described DISCUSSION February catalog Group dated a first installation date which states I. ISSUES 1982; and March greatest import The issue of this case is is clear error in the Board’s whether there 6) product, as de- software “DCS2000” support legal conclusion fact its Group Datapro Research scribed third-party software that various February catalog dated “in or on sale” than one were use more of 1977. a first installation date states date, year appellant’s filing thus before DIALOG Only publications one of these —the properly prior considered art. These prior publication. art book—is a seminar are described various art publications other are admits, as the PTO are not abstracts rather, themselves; they allegedly evidence however, publications; the abstracts rejected products. The examiner prior products art do indicate that were “first 44) (claim year being anticipated prior installed” or “released” to one as one claim 102(b) appellant’s filing Appellant date. ar- before by the CONTROL under 35 U.S.C. that, gues only the as evi- with abstracts addition, product. In software SYSTEM dence, evidentiary its the PTO has met (1- rejected then-pending claims examiner all proving public the “in use or on burden of 20-59) 13, 15, being 17 and as obvious third-party prod- sale” status of the software one or more of the 35 U.S.C. 103 over by preponderance ucts of the evidence. (including, newly prior art items discovered Closely related to this issue is whether there least, software the CONTROL SYSTEM is, error, appellant argues is clear there product) in combination with one or more Board’s fact that the abstracts prior by previous art items cited ordinary skill in the art evidence the level examiner. made. at the time the invention was above, As indicated the Board affirmed in this ease is whether the Also at issue rejections In as to all the claims. examiner’s concluding as a matter of law in Board erred rejected appellant’s ar- doing, the Board so publications by the examiner that the used newly gument because several sufficiently enabling of the features for are prior products art software were discovered they are cited. claims that appli- writings dated after the described point. Finally, the Board erred on this there date, clearly filing cant’s such software Board the issue of whether the did, erred, sustaining appellant claims it prior art and properly were not considered rejection of the claims at is- the examiner’s competent of the level of were not evidence anticipated. as either obvious or sue in the art at the time of the invention. skill The also op. Board at 5-7. Board AB- SUBSEQUENTLY PUBLISHED II. publica- appellant’s argument that various OF “IN AS EVIDENCE STRACTS were not en- tions cited the examiner PRIOR PUBLIC USE OR ON SALE” abling of the features for which IN LEVEL OF SKILL ART AND Finally, appellant’s at 5. because cited. Id. THE ART prior not address the merits of the brief did rejec- prod rejections, prior software the Board sustained The cited art SYSTEM, CONTROL ucts—CONTROL tions. Id. at 7.2 addition, given previous jurisdic- to a examiner's that the deference the Board stated its duty outweighed of a appellant’s product is far con- work tion did not allow it to address patents. subsequent valid rejection previously examiner to issue cerns over the examiner's claims; nevertheless, op. Board at 4-5. the Board noted allowed DCS2000, SMART/SCSS, 102(b), 35, 7.0, provides in Section title SYSTEM described abstracts. pertinent part: person “A Pro-Search —are shall entitled 7.0 and Pro-Search SYSTEM CONTROL patent ... ... unless the invention was in undated abstracts which the are described country, use or on sale in this more computer from a data- examiner retrieved year prior appli than one the date SYSTEM, DCS2000, and base. CONTROL patent cation for in the United States....”5 are described in abstracts SMART/SCSS something “in Whether use Datapro Group Research cata- in a contained 102(b), meaning sale” within the of section February 1991. The PTO con- log dated art, properly and thus considered is a the abstracts themselves are not cedes question subsidiary of law with issues of fact. publication” “printed pro- prior art under Corp. Sys., Manville Sales v. Paramount 102(b). Each of section of the ab- vision Inc., 544, 549, 1587, USPQ2d 917 F.2d stracts, however, a “release” or “first asserts (Fed.Cir.1990). 102(b) section respective date for its installation” “public use” and “on are not limit sale” bars year appel- than one before product of more ed to sales or uses the inventor or one application. patent his The PTO lant filed control, under the inventor’s but result contends that the abstracts evi- therefore party from activities of a third which antici (1) following: dence the the software invention, pate the or render it obvious. An in the abstracts were “in described Hovey, drews v. 124 U.S. 8 S.Ct. meaning public use or on sale” within (1888); Porte, 31 L.Ed. 557 J.A. La 102(b) properly thus considered section Co., Dredging Inc. v. 787 F.2d (2) art,3 of skill in the art the level Norfolk (Fed.Cir.), cert. invention was made.4 at the time the denied, 479 U.S. 107 S.Ct. Board, appel- the Before the examiner and (1986); Caveny, L.Ed.2d 250 In re 761 F.2d steadfastly lant maintained the PTO 671, 676, 1, (Fed.Cir.1985); USPQ 226 4 evidentiary not meet its burden with could Akzona, Inc., Corp. Pennwalt v. 740 F.2d only support the abstracts as evidence. of 1573, 14, 833, USPQ 1580 n. 222 837 n. 14 arguments position, appellant its made as to (Fed.Cir.1984); General Elec. Co. v. United insufficient, why the and also abstracts were States, 55, 61-62, 228 192, 654 F.2d 211 Ct.Cl. speculated why the as to reasons information (1981). USPQ 867, 873 might in the abstracts not be accurate or however, Appellant, proffered rehable. no “[P]reponderance of the evidence is support of his evidence contentions. Con- the standard that must be met the PTO “In sequently, the Board held: the absence ” rejections.... making Caveney, In re 761 printed of evidence that the dates in the 674, USPQ F.2d at 226 at 3. We review public abstracts are not true dates of use of findings clearly Board fact the errone therein, systems accept the described we will ous standard. Id. “Under this standard of the abstracts as evidence of art and of review, findings ordinary only [Board] skill in are overturned level of the art.” Board op. at 6-6. if court is left with the definite firm 1, 17, 684, appeal, 693-94, 545, 3. On the PTO for the first time contends U.S. 86 S.Ct. 15 L.Ed.2d that, alternative, (1966). USPQ 148 467 The level of skill in described in the abstracts are art under the the art is measured as of the time the invention country" provi- "known or used others in this case, was made. Id. In this because there is no 102(a) sion of section and the "invention in this suggestion that an earlier time should be the abandoned, country by another who had not inquiry, focus of the the time relevant to the level suppressed provision or concealed it” of section filed, inquiry application is skill when the was 102(g). We do not consider such alternative March 1989. however, grounds, they were not asserted be- Margolis, fore the Board. See In re 785 F.2d (Fed.Cir.1986). year filing application USPQ 5.One before the 228 942 is purposes referred to as the “critical date” for 4. The level of skill in the art one of the under- measuring public the "in or use on sale” status. lying findings support factual of an obvious- Co., rejection. ness Graham v. John Deere asserted, prove truth has been made.” of the matter that a mistake conviction namely, v. the various software (citing Equip. S.A. United States Id. SSIH Comm’n, 718 F.2d were “in use or on sale” at a Int’l Trade time (Fed.Cir.1983) (Nies, J., years addi- some two before the date that views)). published. tional abstracts were Fed.R.Evid. See however, accept, per do not se We and note have reviewed the abstracts We hearsay rule that statements can never be Each abstract following about them. upon necessary relied to establish facts particular description of its soft- contains support rejection. product, including the various features ware upon by rejecting relied the examiner general rule is that administra identifies appellant’s claims. Each abstract agencies tive like the PTO are not bound provides by name and the software vendor govern judicial rules evidence phone number. the vendor’s address and proceedings. 2See Am.Jur.2d Administra provides information useful to Each abstract (1994); § tive Law at 350 H. Ernest contact, buyers, including who to potential Annotation, Schopler, Comment Note.— terms, documentation, warranties, price Hearsay Proceedings Evidence in Before Each abstract training and maintenance. Agencies, Federal Administrative product date that was first states the (1971); A.L.R.Fed. 76 also Fed.R.Evid. see installed, range which dates from released (omitting proceedings administrative Finally, January 1987. all the ab- 1977 to coming applicability within the Federal stracts, only excepting the abstract of Pro- Evidence). Agencies may provide Rules of 1.08, of current disclose the number Search rules, application for the of evidence as the users; range in from ten to these number provided patent PTO has so interference fifty-eight. 1.671(b) (1993), proceedings, 37 C.F.R. 1.292(a), proceedings, patent use id. primary argument ap Appellant’s partes both of which are inter in nature.6 peal the “release” and “first because not, however, provided The PTO has listed in the abstracts are installed” dates during parte application of evidence rules ex any exception hearsay hearsay not within examination. rules, rely properly could not on the Board proof products that the software the dates as inapplicability hearsay of evi “in at a noted were use or on sale” parte in PTO examination is dence rules ex time to the date the abstracts were light purpose and rea appropriate in of the published, particularly, more a time or hearsay son for the rule. As has been articu reason, For the same to the critical date. theory by Wigmore, of “[t]he lated Professor also can appellant argues that such evidence hearsay many possi ... rule is that in establish the level of skill inaccuracy ble sources of and untrustworthi appellant’s invention was made. the time may lie underneath the bare un ness which reliability attempts to illustrate the Appellant of a witness can best be tested assertion problem by arguing suppliers that software exist, exposed, they by if brought light to exaggerate an incentive to their claims have H. cross-examination.” 5 John the test of potential buyers. to attract Wigmore, in Trials at Common Evidence (James § Law at 251 H. Chadboum agree appellant that the state- We with 1974). During parte ex PTO examina in rev. of “release” and “first installation” ments tion, are, applicants investigate to hear generally speaking, are free the abstracts hear- say upon by an assertions relied examiner say statements. The statements are out-of- by during period to month avail- offered the PTO the three six court written assertions 2.122(a) (1993). provided application ceedings. 37 C.F.R. 6. The PTO has also pro- partes evidence rules in trademark inter They require the abstracts as unreliable would us respond to an office action. able engaging in right rebuttal evi- to assume that the vendors are to introduce also have (1993). misleading advertising, § 1.132 false or which—in the under 37 C.F.R. dence supporting Moreover, wish to cross-examine absence of evidence such —we will applicants if assertions, hearsay not assume. written authors of (1988) they may bring § 145 35 U.S.C. Thus, appear because the on abstracts States District action United a civil reliable, face to accurate and their be seeking District of Columbia Court for the appellant proffer any because has failed they adjudication that are entitled receive support arguments evidence to his action, testimony could patent. In such a contrary, we assume the truthfulness of the by subpoena under Federal compelled be various assertions in the abstracts. Howev- v. Rule 45. See Gould Civil Procedure er, assuming even the truthfulness of all the USPQ2d F.2d Quigg, 822 abstracts, information in the the Board’s con- (“While (Fed.Cir.1987) evidentiary regarding clusions “in or on sale” use the Board serves as the ‘evi- record before and evidence of skill in the art nevertheless pro- dentiary of the district court nucleus’ require two additional facts to be inferred action, parties ceeding in a section First, in- from the abstracts. it must be evidence”). to submit additional are entitled ferred time before critical reject appellant’s argument Accordingly, we date, products, the software and their various rely upon hearsay PTO can never that the PTO, initially features cited were not making rejections. evidence secrecy. released or installed under a veil of words, Moreover, Wig- as articulated Professor In other it must be inferred that the more, security products or cross-examina- and their [of the “test cited features either were use, may given superfluous; “public” purpose instance be sale for a tion] clear, instance, sufficiently experimental in that other than a bona fide one. Second, enough statement offered is free it must be inferred that the features inaccuracy products upon risk of and untrustwor- of the from the are relied thiness, so that test cross-examination the PTO were versions of the supererogation.” Wig- would be a work existed at time before the critical more, Here, at 251. supra, we have date. that the

no reason to believe abstracts sufficiency of “release” and “first install- the statements attacks the appearing supporting the abstracts are inaccurate the evidence ed” the existence of First, regarding or that the authors statements are these two facts. the in untrustworthy. nothing “public” There is on the face ferred nature of the as of date, suggests that appellant points of the documents the informa- the critical out that the any way. Although in tion altered abstracts do not has been state that the “first installa prepared it the “pub be that abstracts were tion” or “release” of the software was by prod- Appellant argu the vendors of the various software lic.” further buttresses its ucts, necessarily by pointing we do not think that this ment out that if prod a software Appellant, truly public makes them unreliable. as we uct had been released to the above, secrecy confidentiality prior have indicated contends that market- without or date, products publication bearing ers such software have an incen- critical a suffi exaggerate products’ capabilities ciently early publication the ought tive to date to be therefore, in argument assertions the ab- available. do not We find this acknowledge persuasive. stracts unreliable. that being are We As is clear from their exists; however, such an publicly having incentive we do not listed in abstracts sales infor accept mation, proposition products the that because in- the are in na the commercial evidence, any centive exists the assertions ture. In the therefore must absence other flatly reject attorney be argument, develop- inaccurate or unreliable. To than that the many initially known feature available on products was to wholesale the software ment of confidential, management pro- can discern distribution warehouse we kept secret finding grams. Typically, that abstracts in a the this feature is accessed no clear error keyword by searching taught by evidence that the software preponderant are CON- prod- System.... also commercial products were TROL in this case. This at the time critical ucts (Feb. 3.) Answer, 1992 Examiner’s by the “first supported release” conclusion evidence, any the absence of other than at- dates, as well as the cur- and “installed” torney argument, that earlier versions of the systems, both of of users of the rent number prior various art software did not appear which the abstracts. upon have certain features which the examin- relied, er has also can discern no clear we Next, regarding the inferred exis finding error in a that the abstracts are upon relied the PTO tence of the features preponderant evidence of the existence of the date, appellant points out of the critical cited features as of the time critical this what it was that the do show abstracts case. actually first installed or released. that was points out that the software also Accordingly, we find no clear error “first installed” or “re products that were respect Board’s fact with to the is- may have been' different from the leased” sues sale and the level of use/on later-published products as described Further, skill in the art. the facts —as set Again, in of evidence abstracts. the absence in, from, forth and inferred the abstracts— find support speculation, this we do not support legal prod- conclusion persuasive. appellant’s argument To ucts, including upon the features which the contrary, persuaded by the relative we are claims, reject PTO has relied to were “in prior art features importance of the various meaning public use or on sale” within the upon relies when those fea which PTO 102(b) prior section to the critical date. of the are considered the context tures they appear. in which Af art III. AND COMPETENCE reviewing the abstracts and the examin ter ENABLEMENT THE OF ease, positions appears in this to us er’s REFERENCES upon that the relied are not of the features

type over the life of the that would be altered Appellant argues later-published system product, upgrade or to either descriptions prod- abstracted the software existing bugs system. To eliminate SYSTEM, CONTROL SYS- ucts CONTROL contrary, relatively broad features DCS2000, SMART/SCSS, 7.0, and Pro- TEM upon relied the examiner relate to the Search, DIA- as well as the EMPTOR and purposes systems in central which the references, publication printed LOG appear. example, For the examiner features enabling disclosures of the all fail make concerning following the CON stated for which been cited. Ad- features have TROL SYSTEM reference: ditionally, respect refer- with to the DIALOG ence, the reference appellant contends System is used for

CONTROL features for completely fails to disclose the management and allows for di- warehouse it has cited. been entry (equiva- rect order on mainframe computer) by lent to the claimed custom- Turning the first

ers, dial-up phone link from PCs or via later-pub software described (equivalent to terminals at customer sites abstracts, arguments stations). parties’ the focus lished buyer Inventory, the claimed later-published abstracts upon whether the price inquiries per- can also and order be argu enabling disclosures. These ability make at remote sites. The formed these off, the First it is prede- a ments are misdirected. to view a list of vendors who store abstracts, products, that are in is a well- not the termined item a warehouse 1568 Further, publications, systems in the described in the we held earlier prior art.

the clearly appellant’s that the disclosure of not we find the Board did opinion that this system provide fails to the same detailed including the products, finding that err in concerning claimed inven- information in the examiner relied upon which features specific a tion. In the absence of such claims, in use or on were rejecting the anyone description, we assume that desir- “in use or on sale” Beyond this sale. ing carry computerized out such ware- an requirement no for en- finding, is there systems housing inventory control LaPorte, inquiry. J.A. ablement-type See equipment would know of the and tech- (“[0]ur 1583, USPQ at 439 229 F.2d at 787 Fox, niques used. In re 471 F.2d to be See question that is not holds precedent (CCPA 1973). 1405, USPQ 176 340 sale, sale, party even third whether at the time of the the invention ‘discloses’ op. Board at 5.7 sale, the sale relates to device but whether invention.”). clearly Appellant argues ruling that this that embodies the

erroneous because it contains the tacit ad- mission that the references would not be prior art respect With enabling appellant’s the fact that but for own must these references printed publications, specification enabling also an disclo- lacks placing allegedly dis enabling, thus disagree sure. with this characterization We public. possession matter in closed finding. Appellant’s of the Board’s claims Int’l Trade v. United States Akzo N.V. 112, under 35 U.S.C. 1471, 1479, Comm’n, USPQ 1 F.2d 2d 808 para. 1, lacking enabling an disclosure. (Fed.Cir.1986), denied, 1241, cert. 482 1245 appellant’s Nor did the Board indicate that 2490, 96 L.Ed.2d 382 S.Ct. 107 U.S. specification enabling lacks such an disclo- (1987). in have stated the context of As we Rather, sure. the Board’s observation that sufficiently enables a specification whether appellant provide type did not of detail in (1988), para. 1 claim under 35 U.S.C. specification argues his- that he now is neces- question of reviewed de is a law enablement sary supports art references subsidiary questions novo, may involve which Board’s one skilled the art Paperless for clear error. of fact reviewed implement would have known how to Bay Rapid v. Area Transit Accounting, Inc. features of the references and would have USPQ 231 652 Sys., F.2d concluded reference disclosures denied, (Fed.Cir.1986), 933,107 cert. U.S. enabling. would have been (1987). L.Ed.2d 764 The en S.Ct. of whether a issue the context ablement assignment Aside from his misdirected enabling of the prior art reference is features error, appellant attempt makes no to address it has been cited is likewise a why description the EMPTOR would have fact. question mixed of law and See In re non-enabling been of the features for which it Sasse, USPQ 107, 111 629 F.2d namely, has been an electronic order- cited— (CCPA 1980). (which ing system plurality for a of vendors inherently plurality buyer would have a enablement of the EMP- On the issue of stations) ability and the to view a list of (as DIALOG references well as the TOR and therefore, Appellant, vendors. has not met products), the software abstracts of his burden to rebut the board’s conclusion of follows: Board found as Sasse, enablement. See In re 629 F.2d at (“Whether respect appellant’s argument With those diagrams, publications possessed lack flow already skilled the art the nec- charts, essary precursors subject codes that would enable and source issue to a ordinary practice shifting proof.”). one of skill the art to burden of above, respect applies 7. As the abstracts of the soft- Board with to the EMPTOR and discussed proper ware are not the focus of the only. DIALOG references Thus, inquiry. finding of our review of this (Joint 114.) respect Appendix, With to the DIALOG refer at This search record ence, appellant (0.012 argu hours) makes the additional indicates the search time in a incompetent ment that the reference is both certain database —file which is “MAGA- non-enabling and because the reference com ZINE INDEX 1959-MARCH 1973-87 pletely fails to disclose the features for which MAR.” Because each search is billed it has been cited. The time, DIALOG reference database and the examiner found that against was cited claims 36 and only “‘DIALOG®’ records not how often a dependent which are claims and which recite database ... long is accessed but how it is following warehousing features of the accessed for.” printout The search further (i) (ii) system: keeping display track of and indicates that “30 Prints in Format 5” were ing particular the number of times a vendor made at a cost of The cost of a $6.00. displayed buyer. is Although to a $0.20; Board print therefore, Format 5 is the exam- specifically did not address the DIALOG ref correctly iner stated that “each full-record erence, accepted following statement of retrieval of a database record ... is recorded regarding the examiner the reference: for subsequent billing royalty customers and payment purposes.” Appellant has failed to Claims and 12 are directed to an point Further, to an error of the examiner. frequency tracking access scheme wherein appellant presented any has not evidence to computer every records occurrence general show that the examiner’s wherein buy- a vendor’s name is sent ato tracking “database is well-known in the art” type er’s station. This of database track- clearly is erroneous. ing example, is well-known in the art. For only “DIALOG®” records not how often a IV. THE MERITS OF THE ANTIC- INSPEC) (e.g. database is accessed but AND IPATION OBVIOUSNESS long how Additionally, it is accessed for. REJECTIONS each full-record retrieval of a database rec- INSPEC) (e.g. Appellant argues ord Format 5 retrieval that even if the subsequent new billing recorded for customers references are effective as art and royalty enabling disclosures, payment purposes. and contain An artisan do not dis suggest would close or appellant’s Ap have found claim 11 to invention. have been however, pellant, precluded obvious in arguing view of such well-known track- from ing systems taught by anticipation the substance of the and obvious “DIALOG®”. per appeal As ness issues on allowing claim because he did not vendor re- argue patentability trieve such data would have in his brief to the been an obvi- Board 1.192(c)(6)(iii) design required ous choice view of the fact that 37 C.F.R. (iv) (1993). Wiseman, computer already In re stores the See informa- (CCPA tion. F.2d 1979) (dismissing arguments not made first Board). We note that the Board These claims [36 37] are “Appellant’s stated: brief does not contain given the same reasons as above with re- any arguments directly pri- address the spect to claims 11 rejections appeal or art claims (Examiner’s (Feb. Answer, 6,10 24,1992).) 102(b) under 35 U.S.C. and 35 U.S.C. 103.” particular importance following Of is the challenge does not this statement. sample DIALOG search record contained appellant challenge any Nor does of the sub the reference: rejections stantive reasons for the detailed ?Logoff 23,1991 May office action or the Examin 19mar87 17:28:02 User013187 er’s Answer the Board. 0.012 Hrs Ffle47 $1.00 in Format 6 Types $0.00 2 Types $0.00 CONCLUSION 30 Prints in Format 5 $6.00 transaction(s) 1 Print $6.00 reasons, foregoing For the the decision of Dialnet $0.09 the Board is affirmed. cost Estimated this file $7.09 Estimated total session cost 0.015 Hrs. $7.20 AFFIRMED. LOGOFF: 12.4.6 B level 17:28:06 1570 misnomer, although prac- the name is a Judge, The

PLAGER, with whom Circuit meaning prima facie of joins, tice and the classic COWEN, Judge, Circuit Senior practice, the PTO have similarities. Under concurring. may persuasion of the PTO meet its burden majority. I opinion of the join I the why appli- initially by showing reasons the anomaly is an here. there write because patent. a This shifts is not entitled to cant applicant an that when Logic dictate would evidence) (of to the production the burden govern from the grant property1 seeks a wrong why PTO is applicant to show the —to of es bears the burden applicant the ment prima One function of the facie case. rebut That, grant. to that tablishing entitlement prima practice case is to the PTO’s facie law; however, patent the not the rule is specific to set forth force the PTO examiners is on persuasion that the burden rule is by appli- objections, can met the be not why applicant the is to show the PTO rejec- cant, just general not to make a Oetiker, 977 F.2d patent. In re to a entitled tion.2 (Fed.Cir.1992) (Plag 1443, USPQ2d 24 1443 Warner, illustrates, another function is J., F.2d As this case er, concurring); In re (CCPA 1967), responsibility 173, 177 of the to USPQ to relieve the PTO everything. denied, know all there is to know about 88 S.Ct. cert. 389 U.S. (1968); expect applicant the Caveney, It is not unreasonable to also In re L.Ed.2d 857 see (Fed.Cir. to know more about the work 761 F.2d 1985) than PTO examiner. Is it is relevant art the (“[P]reponderance of the evidence require applicant to do unreasonable to the must be met the PTO the standard that necessary legwork to assure the PTO rejections.”). the making legitimate questions that about that way explanation lies in the Perhaps the The alternative —ar- work are answered? person written: “A shall that is the statute require gued applicant here the to the —is patent unless —”. 35 U.S.C. to a be entitled any investigation sug- to do PTO examiners (1988). § a different rule Whether gested by available information. Since more said, if the statute “To be prevail would and more information is now available on applicant estab- patent, shall entitled to databases, computer require that could question purists can de- lish ...” is a investigators far in excess of the staff of ease, the the rule is now bate. Whatever currently available to the PTO. At resources well established. bottom, the issue in this case is who is to investigation the cost of further when bear attempt to relieve the PTO of In an investigation thought further warranted. rule, impact of this there are various the full panel, agreed The solution require applicant tell other rules concur, good faith with with which I is at least for now to what knows and to deal he (1993). See, immediately e.g., § 1.56 allow the PTO to use its avail- 37 C.F.R. PTO. identify legitimate ques- enforcing sources to problems But these able data there are answering, place requirements, efficacy tions that need and then and their matter, pri upon applicant questioned. practical burden As legalese mary anomaly prac those answers.3 this means for the corrective production, “prima facie case.” the PTO has met its burden of tice to as the referred out, (1988) majority applicant’s argu- ("Subject provi- points 3.As 1. 35 U.S.C. 261 reliability concerning computer title, ments patents sions of this shall have the attributes specifically, that the installation dates Reich, property.”); of real also Charles see abstracts — inaccurate, computer programs for the (1964). Property, New 73 Yale LJ. 733 installed, computer programs, as differ from abstracts, computer those described programs may "objections” "rejection" in their I here use subject have been to a veil of meaning, common as the terms technical secrecy when installed' —were unsubstantiated. Examining Pro- defined in the Manual Patent sufficiently Accordingly, applicant satis- failed to (1994). cedures 706.01 fy this burden. going production and now the burden applicant. The ease shifts to the

forward PTO can do this some

with which the may placing undercut the rule

measure PTO, and that

initial burden on practice could also be

as it should. abuse, way

subject to stall become something applicants. That

or harass and this court will

against which PTO guard. perhaps This case illustrates

have to paradigmatic case and the limits of

both the practice. ALEXANDER, L. David E. Barksa

Edwin Barley, III, P.

dale Donald L. Don Ca

tron, Greenier, Fernan, Richard J. Leo J. Hamilton, Roy Harrison,

Dave Calvin W. Harter, Himelrick,

Harold John James Kothmann, Hipple,

A. Charles Francisco Marren,

Lomas, Robert J. Terrance R.

McAda, Reynolds, Roy B. Lewis G. So

well, Craig Juan L. Wein Villareal

brenner, Plaintiffs-Appellants,

v. STATES, Defendant

The UNITED

Appellee.

No. 93-5156. Appeals,

United States Court of

Federal Circuit.

Aug.

Case Details

Case Name: In Re Morris Epstein

Court Name: Court of Appeals for the Federal Circuit

Date Published: Aug 17, 1994

Citation: 32 F.3d 1559

Docket Number: 93-1283

Court Abbreviation: Fed. Cir.