As soon as I learned that the date for requesting rehearing or en banc consideration of the Federal Circuit ruling in the GSK and Tafas appeal of the claims and continuations rules was pushed back to June 3, 2009, I said to myself, of course! Important things always seem to pop up while I am on the road teaching the PLI Patent Bar Review Course, which makes it particularly surprising that the Supreme Court accepted cert. in Bilski last week while I could actually write about it in a thoughtful and deliberate way. I am sitting in the back of the classroom presently listening to John White, and will take the podium myself at about 1pm local time and be teaching until about 6pm, so a detailed analysis is not something I can provide at the moment, but I wanted to at least notify folks that Tafas has requested rehearing. Notwithstanding, here are a couple paragraphs from the Tafas filing that caught my attention and start to frame the debate:
The majority’s analysis of the PTO’s rulemaking jurisdiction was almost exclusively concerned with the PTO’s authority to enact “procedural” rules. See Tafas, 559 F.3d at 1353-54. Rather than conducting the required analysis described above, the majority concluded the rules were procedural because “[i]n essence, they govern the timing of and materials that must be submitted with patent applications.” Id. at 1356. By incorrectly limiting its jurisdictional inquiry to whether or not the Final Rules were procedural, the majority opinion ignored the express limiting language to Section 2(b)(2), which clearly states that the PTO may only enact regulations “not inconsistent with law”.
Although the majority correctly noted the principle that an agency’s determination of the scope of its own authority is not entitled to Chevron deference (Tafas, 559 F.3d at 1353), it nonetheless applied Chevron deference to the PTO’s position that the Final Rules are not inconsistent with the Patent Act. Id. at 1359 (`Because each of the rules is procedural, we must, as discussed above, give Chevron deference to the USPTO’s interpretation of the provisions of the Patent Act that relate to `proceedings in the Office “‘)(citation omitted). This was fundamental error. The jurisdiction of the PTO is limited to enacting rules that are “not inconsistent with law”. Thus, as part of its “Chevron Step Zero” analysis, the Court was required to consider whether or not the Final Rules were consistent with law and,
therefore, within the PTO’s jurisdiction. This analysis should have been done before granting Chevron deference to the PTO’s interpretation of the Patent Act, not after, as in the majority opinion.
35 U.S.C. § 131 mandates that “the Director shall issue a patent” if “it appears that the applicant is entitled to a patent under the law.” These conditions for patentability are expressed in non-ambiguous terms in 35 U.S.C. § 102 (“A person shall be entitled to a patent unless…”) and further defined by 35 U.S.C. § 103. However, Final Rule 75(b)(1) grants the PTO the right to withhold a patent on allowed claims in certain circumstances. Where no ESD was filed before the first Office Action on the merits, but six or more claims depending on a single independent claim are allowed by the Examiner if the applicant agrees to cancel the independent claim and rewrite each of the dependent claims in independent form, the applicant cannot receive patent protection on at least one of the allowed embodiments under Final Rule 75. This is contrary to 35 U.S.C. § 131. Furthermore, 35 U.S.C. § 131 requires that the PTO cause examination of an application filed by an applicant. No provision is made for the PTO to deny examination simply upon an examiner’s finding that one or more claims among commonly owned patents are patentably indistinct, as Final Rule 75(b)(4) allows.
Final Rule 265 (the “ESD rule”) sets forth a number of requirements that are inconsistent with law. Tafas, 559 F.3d at 1373-74 (Rader J., dissenting). Contrary to the majority’s finding that the ESD does “not require an applicant to make a prima facie case of patentability,” (Tafas, 559 F.3d at 1364), the PTO’s own comments to the Final Rule make it amply clear that Final Rule 265 does exactly that:
“Section 1.265(a)(4) requires that the examination support document set out with particularity, by reference to one or more specific claim limitations, why the claimed subject matter is not described in the references, taken as a whole. The applicant must explain why a person of ordinary skill in the art would not have combined the features disclosedin one reference with the features disclosed in another reference to arrive at claimed subject matter. The applicant must also explain why the claim limitations referenced render the claimed subject matter novel and non-obvious over the cited prior art. (JA.78).”
As clearly delineated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992), the patent statutes (in particular 35 U.S.C. § 102) place the initial burden, characterized as both the burden of production and persuasion, on the Examiner: “[T]he examiner bears the initial burden, on review of the prior art or any other round, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.” (emphasis added). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Warner, 379 F.2d 1011, 1016 (CCPA 1967).
Good luck Dr. Tafas! More analysis and reporting to come as this case continues to unfold.