The shortest PTAB opinion yet? July 30, 2014Posted by Brian Schar in General, Patent prosecution, USPTO.
Ex parte Daimer may set a record for the shortest PTAB opinion to date. The actual opinion is a single paragraph and occupies about half a page of a document that is only 3 pages long.
Mr. Daimer claimed a carbothermic reduction furnace that has a “lining structure having a low Fe content of less than 0.1 % by weight.” The Examiner cited a reference that was completely silent as to the presence or absence of Fe in a lining structure, so he interpreted that silence as meaning that Fe was present at a 0% level – “less than 0.1% by weight.”
In response, the APJ cited a single line from a precedential Federal Circuit case, which is also a logical truism: “Of course, the absence of evidence is not the same as evidence of absence.” Porter v. Secretary of Health and Human Services, 663 F. 3d 1242, 1264 (Fed. Cir. 2011) (O’Malley, J., concurring-in-part, dissenting-in-part)(internal quotations and citations omitted). Therefore, the rejection was not supported by a preponderance of evidence, and was reversed.
This is a very useful opinion (as it its cite to Porter), because it provides another tool to use in those situations where an Examiner stretches a prior art reference too far to obtain a rejection. Where a cited reference is silent as to a claimed term, that silence cannot be used against the applicant.