Dec 072012

Issuing a rejection that does not give an appellant a fair opportunity to react to the rejection deprives the appellant of the administrative due process rights.  In re Kronig, 539 F.2d 1300, 1302–1303 (CCPA 1976).  A provision that has recently been updated to accommodate for tolling the time to file a reply brief allows for filing a Petition to designate the new ground of rejection as such.  If granted, the Petition allows for prosecution to be reopened.

In general, an Examiner is not permitted to introduce a new ground of rejection in an Examiner’s Answer unless the Examiner designates the new rejection as such in the Examiner’s Answer.  37 C.F.R. §41.40 permits an appellant to seek review of an Examiner’s failure to designate a rejection as a new ground of rejection in an Examiner’s Answer by way of a Petition under 37 C.F.R. §1.181.  The test for what constitutes a new ground of rejection is whether a position or rationale changes the ‘basic thrust of the rejection’ in an Examiner’s Answer.  In re Kronig, 539 F.2d 1300, 1302–1303 (CCPA 1976).   A Petition under 37 C.F.R. §1.181 is timely if filed within two months from the entry of the Examiner’s Answer.  See 37 C.F.R. §41.40(a).

A Petition that is granted allows an appellant to reopen prosecution.  See 37 C.F.R. §41.40(b).  In a Notice of Appeal filed on or after January 23, 2012, a Petition that is not granted must be provided a two-month time period in which an appellant may file a reply brief under 37 C.F.R. §1.181.  See 37 C.F.R. §41.40(c), as amended by 76 Fed. Reg. 72298 on Nov. 22, 2011, and effective beginning January 23, 2012.  This is consistent with the amendments to 37 C.F.R. §41.41(a), which also became effective on January 23, 2012, indicating an appellant may file only a single reply brief to an Examiner’s Answer within the later of two months from the date of either the Examiner’s Answer, or a decision refusing to grant a petition under §1.181.

The Eighth Edition of the MPEP, which incorporates revision No. 9, provides seemingly contradictory information.  Specifically, MPEP §2107.03(IV) states that the filing of a petition under 37 C.F.R. §1.181 does not toll the time period for filing a reply brief.  However, this MPEP section refers to the previous version of 37 C.F.R. §41.40, which did not allow for tolling of the time to file a reply brief after a Petition was denied.


 Posted by at 4:27 pm
Dec 012012

An interesting case was decided at the Federal Circuit a couple weeks ago dealing with enablement and permanent injunctive relief.

Edwards sued CoreValve for infringing its patent related to a heart valve. CoreValve argued that the patent was not enabled because at the time of filing the patent application, the heart valve had only been tested in pigs. The district court upheld the patent as being enabled.

Additionally, the district court denied a permanent injunction against CoreValve. Both parties appealed.

Regarding enablement, the Federal Circuit affirmed the district court, holding that human testing is not necessary to enable use in humans. It reasoned that when experimentation on humans is inappropriate, enablement may be met by animal tests or in vitro data.

Next, the Federal Circuit criticized the district court’s denial of a permanent injunction, stressing that a patentee’s right to exclude is fundamental. The majority even went so far as to say that, “Absent adverse equitable considerations, the winner of a judgment of validity and infringement may normally expect to regain the exclusivity that was lost with the infringement.” The Supreme Court eBay decision in 2006 held that a patentee that wins an infringement action is not automatically entitled to an injunction. As the majority opinion appears to be testing the boundaries of eBay, the majority clarified how its holding is consistent with eBay.

Judge Prost concurred, but disagreed with the majority’s standard for injunctive relief. Prost argued that creating a presumption of an injunction once the plaintiff prevails, which must then be rebutted by the defendant, is not the law according to what she considered was clear after eBay. To Judge Prost, the creation of a right to exclude is distinct from the remedies for violations of that right.

In the ongoing patent dispute between Apple and Samsung, Apple filed a “statement of recent decision” to support a permanent injunction against Samsung.



 Posted by at 4:45 pm