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Prima Facie Case Established When Examiner Sufficiently Articulates Statutory Basis of Rejection and Identifies References Relied Upon

March 28, 2011

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Last Month at the Federal Circuit - April 2011

Judges: Gajarsa, Linn (author), Dyk

[Appealed from: Board]

In In re Jung, No. 10-1019 (Fed. Cir. Mar. 28, 2011), the Federal Circuit affirmed the Board’s ruling of invalidity, finding that the examiner properly established a prima facie case of invalidity, and that the Board did not act improperly as a “super-examiner” in its review of the examiner’s rejection. 

Edward K.Y. Jung and Lowell L. Wood, Jr. (collectively “Jung”) filed U.S. Patent Application No. 10/770,072 (“the ’072 application”) directed to a photo-detector array system for transforming light inputs into electrical signals.  The relevant claims at issue recite a well-charge-level controller of the system.  During prosecution, the examiner issued a first office action, rejecting all claims of the ’072 application in view of U.S. Patent No. 6,380,571 (“Kalnitsky”).  The examiner’s rejection, in addressing the claimed well-charge-level controller, cited by page and line number to a controller disclosed in Kalnitsky.  Jung responded to the office action, indicating that the well-charge-level controller recited in the claim was different from the controller in Kalnitsky.  The examiner found this argument unpersuasive and issued a final rejection of all pending claims, prompting Jung to appeal the rejection to the Board. 

On appeal to the Board, Jung argued for the first time that the well-charge-level controller must perform certain operations disclosed in an exemplary embodiment of the ’072 application.  The Board rejected this argument, noting that Jung had the opportunity to amend the claims to achieve more precise claim coverage, i.e., to limit the claim to the exemplary embodiment argued on appeal, but failed to do so.  Accordingly, the Board affirmed the examiner’s rejection of the independent claims, but reversed the examiner’s rejection of a dependent claim.  Jung filed a request for rehearing, alleging that the Board erred in failing to address whether the examiner had set forth a prima facie rejection, but the Board rejected Jung’s argument.  Jung appealed to the Federal Circuit, arguing that the examiner failed to make a prima facie case of anticipation, and that the Board acted as a “super-examiner” by performing independent fact-finding and applying an improperly deferential standard of review to the examiner’s rejections. 

On appeal, the Federal Circuit rejected Jung’s arguments, affirming the Board’s decision and holding certain claims of the ’072 application not patentable as anticipated.  First addressing Jung’s argument that the examiner failed to make a prima facie case of anticipation, the Court noted that Jung did not challenge the substance of the prima facie rejection, but only the procedure used in establishing a prima facie case.  The Court emphasized that the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.  The Court noted that the PTO satisfies its initial burden of establishing a prima facie case when a rejection satisfies 35 U.S.C. § 132, in notifying the applicant by stating the reasons for the rejection, together with such information and references as may be useful in determining whether to continue prosecution of the application.  The Court found that the examiner’s office actions satisfied this initial burden, as they put Jung on notice that the examiner considered Jung’s well-charge-level controller to equate to Kalnitsky’s controller. 

Jung argued for a heightened burden for establishing a prima facie case requiring an examiner to provide an on-the-record showing of a claim construction and a record of evidence bridging the facial differences between the claim construction and the purported anticipatory reference.  The Court rejected this argument, noting that there has never been such a requirement, and such additional procedural requirements would be both manifestly inefficient and entirely unnecessary.  As the Court noted, § 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of claims.  The Court held that the examiner’s discussion of Kalnitsky, with citations to specific column and line numbers, was more than sufficient to establish a prima facie case.

Additionally, the Court rejected Jung’s argument that the Board improperly assumed the position of a “super-examiner” in reviewing the examiner’s rejection.  The Court acknowledged the Board’s “findings of fact,” noting that each finding was a simple factual assertion drawn either from Kalnitsky or the ’072 application, and that the assertions from Kalnitsky were substantially the same, down to the line and column number, as the examiner’s citations.  As the Court observed, the Board merely made explicit in its “findings of fact” the bases for a rejection “that would have been apparent to one with even a cursory command of prosecution practice from the examiner’s office actions.”  Slip op. at 15.  The Court noted that to assert, as Jung did, that the Board’s thoroughness in responding to Jung’s appeal put it in the position of a “super-examiner” would limit the Board to verbatim repetition of the examiner’s office actions, which would ill-serve the Board’s purpose as a reviewing body. 

The Court concluded that Jung, when before the examiner, merely argued that the claim controller differed from Kalnitsky and chose not to proffer a serious explanation of the difference.  It was not until before the Board that Jung offered a more detailed explanation regarding how the claims differed from Kalnitsky.  To respond to this detailed explanation, the Board explained the examiner’s rejection in greater thoroughness.  The Court found that this thorough explanation by the Board did not change the rejection, that Jung had a fair opportunity to respond to the rejection, and that the Board did not act as a “super-examiner” in its decision.

Finally, the Court rejected Jung’s argument that the Board improperly deferred to the examiner’s rejection by requiring Jung to identify a reversible error by the examiner, which Jung alleged improperly shifted the burden of proving patentability onto Jung.  As the Court noted, the examiner properly established a prima facie case of anticipation, shifting the burden of rebuttal to Jung.  Furthermore, the Court acknowledged that it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections, and the Board’s actions in this case were entirely consistent with that long-standing practice.

Thus, the Court concluded that the examiner properly set forth a prima facie case of anticipation, and that the Board did not act as a “super-examiner” in reviewing the examiner’s rejection.  Accordingly, the Court affirmed the Board’s decision holding that certain claims of the ’072 application are anticipated.


Summary authored by Trenton J. Roche, Esq.