Wednesday, November 02, 2022

Precedential No. 30: Finding No Error, TTAB Rejects Reconsideration Request Re "DEEP OPTO PROFILING" Descriptiveness Affirmance

The TTAB rejected Applicant Berkeley Lights' quixotic request for reconsideration of the Board's January 2022 decision [pdf here] affirming a Section 2(e)(1) mere descriptiveness refusal of DEEP OPTO PROFILING for various chemicals and for biochemical services. Berkeley unsuccessfully claimed that the Board both violated Berkeley's Constitutional due process rights and the requirements of the Administrative Procedure Act, and failed to follow Board precedent by not affording Berkeley the benefit of the doubt on the issue at hand. In re Berkeley Lights, Inc., 2022 USPQ2d 1000 (TTAB 2022) [precedential] (Opinion by Judge Christopher Larkin).

In a detailed review of the record and the decision, the Board found no substantive or procedural error. It rejected Berkeley's principal contention that the Board may not rely on "new arguments that the Examining Attorney never made" in reaching its decision. According to the TBMP, the Board "need not find that the examining attorney's rationale was correct in order to affirm the refusal to register, but may rely on a different rationale."

Although the Board may not rely on an "additional" or "new ground" for refusal - i.e., a different statutory ground than in the final action under appeal - the Board did not adopt a new ground for refusal.

[T]he mere descriptiveness refusal has remained the same since the first Office Action. Throughout prosecution and on appeal, the mere descriptiveness refusal was based on the meaning of the individual terms and their continued descriptive significance when used in combination in connection with Applicant’s goods and services. Applicant was provided with the evidence supporting the refusal as attachments to the Office Actions, and had the opportunity to address the Examining Attorney’s evidence and to provide evidence of its own in response, and Applicant did so.

The Board pointed out that, in any case, Berkeley could have addressed the "new arguments" in this request for reconsideration, but did not. Accordingly, the Board found no lack of notice of lack of due process here.

Finally, Berkeley's reliance on the so-called "rule of doubt" argument was misplaced, since the Board did not expressed any doubt in its decision.

To the contrary, based on our review of the record as a whole, including Applicant’s own materials, we had “no doubt that consumers of Applicant’s goods and services for testing cells on a microfluidic chip would immediately understand that DEEP OPTO PROFILING describes a key function and purpose of Applicant’s chemicals and assays, namely, a self-described ‘process’ involving the use of optofluidic technology that depends on microfluidics,” id. at 30-31, because the Examining Attorney had made of record sufficient evidence to establish a prima facie case for mere descriptiveness, and Applicant neither rebutted that evidence nor showed on this request for reconsideration why the Board’s decision relying on that evidence was wrong.

And so, the Board denied the request for reconsideration.

Read comments and post your comment here.

TTABlogger comment: The Board repeatedly cites to the TBMP, which of course is not the law. The TBMP even says so in its own Introduction.

Text Copyright John L. Welch 2022.


At 11:42 AM, Anonymous Anonymous said...

It is not clear to me from this decision that the Board truly understands the limits imposed by the APA on its ability to rely on a "different rationale" than the Examining Attorney. The Board's decision "take[s] this opportunity to clarify that this terminology does not mean that the Board may rely on a new ground for refusal." However, the question is a matter of degree that will, as has been made clear by the Federal Circuit, depend in part on whether the Board "relies on new facts and rationales not previously raised to the applicant by the examiner." The court explained:

When considering whether the Board issued a new ground of rejection, the "ultimate criterion" is "whether applicants have had fair opportunity to react to the thrust of the rejection." While the Board need not "recite and agree with the examiner's rejection in haec verba" to avoid issuing a new ground of rejection, mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board "relies on new facts and rationales not previously raised to the applicant by the examiner." A new ground of rejection, however, generally will not be found based on the Board "further explain[ing] the examiner's rejection" or the Board's thoroughness in responding to an applicant's argument.

Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A. de C.V., 865 F.3d 1348, 1357 (Fed. Cir. 2017) (italics in original; citations omitted).

So, it's not enough to say that the ground for refusal remained the same (that the mark is "merely descriptive" under Section 2(e)(1)), that there was evidence attached to the Office Actions, and that the components of the mark were at issue all throughout prosecution. See 2020 U.S.P.Q.2d at *16. One must look at the facts and rationale(s) asserted by the Examining Attorney to determine whether the applicant was truly put on notice. Now, I haven't gone through the prosecution history to form an opinion whether the Board impermissibly relied on a new rationale in this case; my point is simply that the Board appears to believe it has more latitude than it really does under the APA.


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