In In re. Jung, Civ. Case No. 2010-1019 (Fed. Cir. March 28, 2011), Edward K.Y. Jung and Lowell L. Wood, Jr. (collectively, “Jung”) filed U.S. Patent Application No. 10/770,072 (“’072 application”) on January 20, 2004. On September 14, 2005, the Examiner rejected all claims of the ‘072 application as anticipated by Kalnitsky (U.S. Patent No. 6,380,571). Among other features, the Examiner indicated that Kalnitsky disclosed “a first well-charge-well [sic] controller (340) operably coupled with said first charge pump (see Col. 5, lines 37-39 and Col. 6, lines 38-44, 64-66)” which corresponded to the recited first well-charge-level controller. Jung responded by providing a block quote from Kalnitsky, and arguing that the “‘well-charge-level controller’ recitations of [amended] Claim 1 are different from the ‘controller 340’ recitations of [Kalnitsky], and thus controller 340 of [Kalnitsky] does not match the ‘well-charge-level controller’ of herein-amended Independent Claim 1.” No further explanation was provided.
After the Examiner again rejected the claims, Jung appealed to the Board of Patent Appeals and Interferences. On appeal, Jung argued that Kalnitsky’s controller 340 is a reset controller which does not “continuously adjust the control signal inputs” as does the recited well-charge-level controller. The Board rejected this argument, noting that the argument relies upon a feature not recited in the claims and finding that the broadest construction of the reset controller performs a function encompassed by the recited well-charge-level controller. Jung filed a Request for Rehearing on the grounds that the Board had not addressed Jung’s argument that the Examiner had not made a prime facie case for invalidity under 35 U.S.C. §102, and thus the rejection was procedurally improper under 35 U.S.C. §132. On rehearing, the Board found that the prima facie case requirement is merely a procedural mechanism for allocating burden, and that the anticipation case was adequately addressed in the original Board decision.
On appeal from the Board, the Federal Circuit outlined how the prima facie case burden is met and its purpose. Specifically, the Federal Circuit quoted Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) for the proposition that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” The Federal Circuit stated that this burden is met by “adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.” Id, at 1370. It is only “when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection” that the prima facie burden has not been met and the rejection violates the minimal requirements of 35 U.S.C. §132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In applying this standard to the instant application, the Federal Circuit declined to require that the prima facie case requires that the Examiner provide an explanation as to the broadest reasonable interpretation of each claim term, as well as evidence “bridging the facial differences between that reasonable claim construction and the purported anticipatory reference” as argued by Jung. Instead, the Federal Circuit found that the Examiner sufficiently notified Jung by identifying the specific element which anticipated the claim feature (i.e., the reset controller 340), as well as the column and line number explaining the functioning of the reset controller 340 as pertains to the claim feature. In this manner, the Examiner gave sufficient notice to Jung as to allow Jung the opportunity to respond. The Federal Circuit then noted that evidence that this notice was sufficient since Jung was able to reply and did not otherwise argue that the correlation between the controller 340 and the well-charge-level controller was not understood. The Federal Circuit noted that there was no reason to further require the Examiner to fill any gaps between the disclosed feature and the recited feature using evidence since, once the notice requirement of 35 U.S.C. §132 is met, the burden has properly shifted to the applicant. As such, the Federal Circuit held that “the identification of where each limitation of the rejected claims is shown in the prior art reference by specific column and line number was more than sufficient to meet this burden.”
Significance for Patent Applicants
While it is often tempting to reduce costs during prosecution by not addressing each potential defense to a rejection, Jung shows the importance of ensuring that each traversal is made during prosecution. This is especially true if the defense is based upon a lack of a prima facie case since the entire premise of this defense is that there is not enough evidence to even respond. Otherwise, the failure to raise the defense risks the Federal Circuit finding that the prima facie case had been met as evidenced by the applicants’ reply. Moreover, it also shows how low the bar is for the amount of evidence needed in the context of anticipation: mere notice. Thus, outside of issues relating to inherency, applicants need to account for Jung when contesting an anticipation rejection based solely on the Examiner’s lack of a prima facie case.