CAFC Pushes Back on PTO Actions

In Re McNeil-PPC, Inc., 2008-1546, July 31, 2009

McNeil owns a patent claiming a tampon for feminine hygiene with a solid fiber core in which the core is denser than the radially projecting "ribs" and the ribs are narrower at their bases than their distal ends. McNeil requested that the PTO reexamine its patent based on an unexamined Japanese application (Sasaki). The PTO rejected the patent as anticipated and obvious over Sasaki. McNeil appealed.

One of the issues surrounded McNeil's request for reconsideration, which the BPAI considered "untimely." While the first page of the Board's decision is marked "May 30, 2008", the image file wrapper ("IFW"), listed the "Mail Room Date" of the decision as June 2, 2008. McNeil filed the Notice of appeal on August 1, 2008.

McNeil presented a declaration from Jeffrey Nase, a now-retired member of the Board from 1996 to 2006, who had been employed by the PTO continuously before that going back to 1973.

The CAFC found Nase's declaration convincing:

The following is a summary of Nase's declaration: Historically, the date the PTO mailed a document was the date that triggered any response period. It is unclear why the opinion says "Decided: May 30, 2008" but was not mailed until June 2—perhaps the mail room was slow, or perhaps one of the members of the Board panel decided to revise the opinion or reconsider it over the weekend of May 31 and June 1, 2008. Before August 2006, the date decided was hand-stamped on the front of opinions; beginning only in August 2006 did the Board decision have the date decided typed on the front. Nase opines that if the PTO had intended this minor formatting change to have substantive effect, there would have been public notice (which there was not).

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Because the "Transaction History" page appears inaccurate, and because Nase's declaration provides the most plausible explanation for the conflicting evidence of when the Board took action on McNeil's request for reconsideration and is corroborated by the IFW entry, we find that the Board issued its decision on McNeil's request on June 2, 2008, and that the Board therefore decided this case on June 2, 2008, not May 30. McNeil's appeal is therefore timely.

On the merits of the rejection, the CAFC found that the PTO missed the boat regarding the claim language:

It is not entirely clear, however, that the Board understood McNeil's claim. In its initial decision, the Board stated, "We find that Sasaki's Figures 8 and 10 reasonably appear to depict the ribs of its tampon as being compressed less at their distal ends than at their ends proximal to the drawstring at the center of the drawn fiber strips." . . . McNeil's claim, however, states that the ribs are less dense than the core, not that the distal ends of the ribs are less dense than the proximal ends . . . the Board quoted a claim of Sasaki, which stated that "compressed masses [are] formed at equal intervals along the axial line direction on the outside circumferential surface of the tampon." . . . Sasaki makes no comparison between these "compressed masses" and any core. In fact, it is not clear that Sasaki contains a "core" at all. Instead, Figure 8 is drawn in such a way that suggests Sasaki's tampon is composed of six ribs and no core. There is not substantial evidence, indeed, no evidence, that Sasaki discloses [the claimed features].

The Board's rejection of claim 1 as anticipated lacks substantial evidentiary support and is therefore reversed. Because claims 1, 3, and 4 stood or fell together, the rejections of claims 3 and 4 are also reversed.

Download a copy of the opinion here (link)

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Jorge Taylor v. USPTO, 2009-1133, August 4, 2009 (Nonprecedential)

Taylor was a pro se inventor that obtained a patent on a chemical sealant device for repairing flat tires. When it came time to pay the maintenance fee, Taylor alleged that the PTO informed him by phone that his required fee was $1,030, which he paid by check. It turned out that the correct fee was supposed to be $1,040, and not $1030. Also, Taylor used the wrong form for transmitting his payment, and sent the payment to the Applications Branch rather than the Maintenance Fee branch.

After cashing the check, the PTO surmised that the PTO employee who processed the form may not have recognized this filing as an attempt to pay a maintenance fee, and may have processed it as a regular application filing fee.

When it came time to pay the 11 1/2 year fee, the PTO informed Taylor that the patent expired, and refused to accept his petitions to revive the application. The CAFC found that the PTO's handling of the application was "arbitrary and capricious":

The unrebutted record shows that the PTO did not inform Mr. Taylor that his January 2001 payment of $1030 was deficient by $10. Instead, the record shows that the PTO cashed Mr. Taylor’s check and still proceeded to consider his patent expired. These actions are inconsistent with the PTO’s obligation under MPEP § 2531 to provide a “Notice of Non-Acceptance of Patent Maintenance Fee” to the “fee submitter,” here Mr. Taylor.

[A]lthough the MPEP “does not have the force of law,” . . . it “has been held to describe procedures on which the public can rely.” . . . In this case, the MPEP notice to the fee submitter of maintenance fee insufficiency accords with the most basic notions of fairness and procedural due process. This court finds that the Office’s course of action in accepting Mr. Taylor’s deficient payment on the one hand, while on the other hand expiring his patent without notifying him under MPEP § 2531 that his payment was inadequate, was arbitrary and capricious. . . . In this case, equity would counsel that the PTO should reinstate Mr. Taylor’s patent upon receipt of his payment for all outstanding maintenance fees. This relief will remedy, to this court’s best estimation, the PTO’s arbitrary and capricious actions.

Read/download the opinion here (link)