Patently-O Bits and Bytes No. 92

  • New Commerce Secretary: Gary Locke. Former Washington State Governor, Partner at Davis Wright Tremaine. Gov. Locke is Chinese American and co-chairs the firm's China practice. He is also an Eagle Scout, a Yalie, and a Terrier.
  • USPTO Deferred Examination Comments Due February 26:

  • Cert Denied: The Supreme Court has denied certiorari in the following patent related cases.

    • Singleton v. Volkswagen (E.D. Texas Venue Case where 5th Circuit ordered transfer).
    • Forest Labs v. Caraco (Declaratory Judgment standing).
    • FTC v. Rambus (Duties of a patent holder in standard setting negotiations).
    • Burandt v. Dudas (When is a failure to pay "unavoidable").
    • Apotex v. Roche (reverse doctrine of equivalents).

  • Judge Linn recently gave a Keynote address to the PTO examiner's corps. [Read it here]. Judge Linn started as a patent examiner in 1965. The following are some quotes from the full speech:

    • "Your job is much harder now than it was for me all those years ago. The technology of today's inventions is immensely more complex than ever before. The length and breadth of applications is greater. The volume of prior art is much larger. The legal issues are more intricate and harder to comprehend. And the law is in a continual state of change. Compounding all of this is the perception among some individuals that the work of the PTO in general, and the examiners in particular, is somehow of secondary importance and questionable quality. It is commonly said that the real action in patents is in private or corporate practice."
    • "Your job is to grant patents—valid patents. And that takes a combination of skills, reasoning and informed judgment. The Examiner's task is to assess the patentable merits of each invention, as presented, and to grant patents where patents are due. No applicant wants an invalid patent. Similarly, no examiner wants to grant an invalid patent. Thus, both the applicant and the examiner play parallel and complementary—not contradictory— roles in seeing to it that valid patents are issued."
    • "[R]eading legal decisions, particularly those of the Board and the Federal Circuit, is not only the best way to learn how to make the tough decisions you are regularly called upon to make, but also the best way to make your job easier and more enjoyable. You might ask, "why should I bother to read decisions of the Board and the Federal Circuit? After all, I have all the guidance I need in the MPEP, and I don't have time to spend reading other cases that have nothing to do with me." The answer is that the cases bring to life the statutes and rules you are required to apply and give you real world examples of how those statutes and rules apply in similar cases. The MPEP has some guidelines, but they are just a sampling and cannot possibly reflect the full range of claims and circumstances you face every day. Keeping up with the law by reading decisions of the Board and the Federal Circuit will allow you to master your craft and will result in your standing out from your peers."
    • "The last point I want to make is to not forget about §112. … [I]t is not correct to trivialize or ignore these kinds of Informalities [such as claims that are vague and indefinite or lacking in support in the written description]. Indeed, these kinds of problems affect not only the applicant but the public as well in a significant way. … In case after case before my court, the central debate revolves around the meaning of claims terms that, for example, were added during prosecution and do not appear anywhere in the written description. For those cases, the meaning of the claim limitation has to be inferred from other words, leaving the issue open to unnecessary dispute and leading frequently to protracted and costly litigation. You have the authority and the responsibility to not let that happen and to insist that applicants use words in the claims that find unambiguous and full support in the written description."

53 thoughts on “Patently-O Bits and Bytes No. 92

  1. I had an attorney recite a photoresistant film and then define the term in a manner which would lead one of ordinary skill in the art to believe that the layer was photosensitive and not photo resistant. What kind of rejection could be used in this case. The applicant has acted as his own lexicographer and has clearly defined what he intended photo resistant to entail…but it goes against what one of ordinary skill would think of as being photo resistant. The applicant has done everything right as far as defining the term..but why not just say photosensitive and avoid the confusion??

    Reply
  2. Don, btw, you should know that it is against the rules of the road to post as an examiner from work comp at Patently O.

    Reply
  3. broje “You must have enjoyed having your field under attack for 101 issues”

    Huh?

    Reply
  4. MM: “I’m dealing mostly with Examiners who have Ph.D.s in biochemistry and chemistry and not creationist engineers and programmers.”

    So does that mean you are a biotech practitioner? If so, that would explain a lot about your attitude towards software. You must have enjoyed having your field under attack for 101 issues so much that you decided to “spread the love.” Or, to put it differently, you are deflecting criticism of your own art area onto a scapegoat. And that is how the cycle of villainization usaully progresses.

    If I got it wrong, then please do explain to us the source of your passion for attacking software as unpatentable subject matter.

    Reply
  5. 6, is this the talk you were referring to in the other thread? He didn’t mention Ex parte Miyazaki at all.

    Reply
  6. Mad,

    That case is a great example of the “record breaking quality” of the examination going on at the PTO.

    1584 days of PTA. For what?

    So we have a pretty good example of my approach to Rule 105 requests actually working. I really don’t need to provide one of my own. Though I easily could.

    All we need now is for 6 to post an example of his “open to almost anything” Rule 105 request and we’ll be all set.

    BTW, that case is a pretty good example of the BPAI blowing away that whole “adequate traversal of Offical Notice” garbage in the MPEP that 6 and the MostValuableStooge’s of the world cling to like a security blanket.

    But that’s another topic. :-)

    Reply
  7. “But if you’re looking for a good example of the dreaded power of the Rule 105 request, check out 09/077,337. Examiner made a request, and the applicant used my patented approach.

    See the results for yourself. They’re rather enlightening.”

    JD, thanks for the laughs. What’s even worse than how the PTO dragged their feet in the case is how a NOA took another two years after the attorney’s scathing response to the 105 request.

    Reply
  8. There certainly is some truth to the proposition that Applicants would much prefer to have a patent of uncertain validity over one whose validity is certain only by virtue of a narrowing of the claims to the point of worthlessness. And those types of patents seem to be the only ones the Office is willing to issue these days.

    I think the system worked better in the 90s when competing Applicants could both get patents of nebulous scope that forced cross-licensing. I think there was more incentive to innovate, perform R&D, and disclose through the patent system for defensive purposes. Now the incentive seems to be weighted heavily towards avoiding infringement. Avoiding infringment is a lot easier to do now. Sometimes, avoiding infrignement involves innovating, but I percieve a decreased incentive to file any patents. The prospect looms expensive and fruitless. And as patents become ever more narrow in scope, the need to innovate one’s way through or around the patent thicket decreases as well.

    Reply
  9. “No applicant wants an invalid patent.”

    This is a blatantly false statement, out of touch with the current state of the system. Many future litigants would be overjoyed to have an invalid patent if the alternative is no patent. Even an invalid patent carries the magical “presumption of validity” that’s frequently worth millions before the first MSJ is filed.

    Reply
  10. breadcrumbs,

    I can’t remember the post you’re referring to.

    But if you’re looking for a good example of the dreaded power of the Rule 105 request, check out 09/077,337. Examiner made a request, and the applicant used my patented approach.

    See the results for yourself. They’re rather enlightening.

    Reply
  11. “…with which I respectfully disagree.”

    LOL

    “MPEP’s author needs to provide some caselaw or something to back up their assertion.”

    ROFLMAO

    When I tell you the MPEP is full of it, what I hear from you, and your mid-level-(mis)management MostVapidStooge is, “But JD, it’s in the MPEP. We have our own legal experts over here you know.”

    “Basically opens it up to anything imo.”

    Right. And your legal opinion is so persuasive.

    “JD is fond of the f u approach and uses it every time.”

    I’ll make a deal with you, 6. You post one serial number of an application in which you used your super duper awesome powers to make a Rule 105 request and I’ll post one where I used my approach.

    Just one.

    But I’m pretty sure I know what your answer is going to be.

    Reply
  12. Absolutely. Back when J. Linn was an examiner, the POWERFUL COMPUTER BRAIN was mainly science fiction.

    Reply
  13. Come to think of it, Mooney tried to use that “reasoning” with me in an imaginary interview that we had.

    Needless to say I was nonplussed.

    Reply
  14. And, with the “brayin'” I think you’ve pegged the Dennis Miller meter again.

    Only a Nebraska farm boy would know what that means.

    Reply
  15. “I thought it was sort of funny.”

    It might have been if it wasn’t so sick…

    Reply
  16. “No applicant wants an invalid patent. ”

    This probably comes as a shock to Mooney.

    Reply
  17. The thing is, Brayin’, when I posted that quip I thought it was sort of funny. But every time you bring it up, it gets better. I’m sorry I mocked Saint Ronnie. ROTFLMAO.

    Reply
  18. “I simply do not believe that MM is a patent prosecutor.”

    LOL. Because a True Prosecutor believes that Examiners are evil and hates the PTO. Yes, I am aware that such bent-out-of-shape invididuals exist.

    I try to work with Examiners. I get allowances that way. Then again, I’m dealing mostly with Examiners who have Ph.D.s in biochemistry and chemistry and not creationist engineers and programmers. It helps when you can reason with people.

    Reply
  19. I simply do not believe that MM is a patent prosecutor. Rather, I think he is an examiner. No prosecutor would constantly regards patents with such bile, and be so utterly anti-patent. He claims patents are obvious pieces of crap based upon his own hindsight reasoning, without even knowing what art is out there. He seems to support the PTO’s current examining. In short, I just don’t buy it.

    Reply
  20. especially informative is

    “The authority for the Office to make such requirements arises from the statutory
    requirements of examination pursuant to 35 U.S.C. 131 and 132. An examiner or other
    Office employee may make a requirement for information reasonably necessary to the
    examination or treatment of a matter in accordance with the policies and practices set
    forth by the Director(s) of the Technology Center or other administrative unit to which
    that examiner or other Office employee reports. See Star Fruits S.N.C. v. United
    States, ”

    That might be where some additional authority Linn might be referring to may come from. 131 and 132.

    I like this part:
    “The terms “factual” and “facts” are included in 37 CFR 1.105 to make it clear that it is
    facts and factual information, that are known to applicant, or readily obtained after
    reasonable inquiry by applicant, that are sought, and that requirements under 37 CFR
    1.105 are not requesting opinions that may be held or would be required to be
    formulated by applicant.”

    with which I respectfully disagree. “factual” is in place because we don’t want opinions stinking up our requests for information, we want only things which can be used as factual evidence in court. MPEP’s author needs to provide some caselaw or something to back up their assertion.

    “I did not expect the SCOTUS to take the case, but I had hoped that someone would put Rambus in its place for being unethical motherf_____s”

    Hitmen are cheaper than courts imo. I think the CEO’s of the corps are just pansies.

    Reply
  21. “reasonably
    necessary to properly examine”

    I doubt clarification of a claim term is “reasonably necessary” when the examiner has 112 as a tool.

    Reply
  22. lol mah bad, factual information it is. Still, I would simply request what in fact the applicant believes a claim term to mean.

    “(ii) Interrogatories in the form of specific questions seeking applicant ’s factual
    knowledge; or”

    Basically opens it up to anything imo. I had forgotten that I had done that analysis in a previous post. I believe JD disagreed there. None the less, that’s what the rule states and surely the applicant knows the factual answer to: what is the applicant’s belief as to what x claim term means. The applicant can have a subjective opinion, but what that opinion is is a fact.

    Reply
  23. I did not expect the SCOTUS to take the case, but I had hoped that someone would put Rambus in its place for being unethical motherf_____s

    Reply
  24. “An examiner can reject a claim term as being indefinite. But can he “demand clarification of a claim term” without making a 112 rejection?”

    Yawn.

    Reply
  25. Um, requests for information are not restricted to factual information. Maybe you should brush up on this section sometime.

    “704.11 [R-3] What Information May Be Required
    Information which may be required under 37 CFR 1.105 is that information reasonably
    necessary to properly examine or treat a matter in a pending or abandoned application
    filed under 35 U.S.C. 111 (including a reissue application), in a pending or abandoned
    application that has entered the national stage under 35 U.S.C. 371, in a patent, or in a
    reexamination proceeding.”

    the http://www.meat.com is actually just short for me@yahoo.com (meatyahoo) which is my generically used email address for sites that require an address where I don’t feel like providing one.

    This thing didn’t post my big update post on my license endeavor. I ha te the new typepad.

    “I have misplaced my bookmark on the proper totality of responding to an official request for information ”

    37 CFR 1.105. Requirements for information.

    From what I understand though JD is fond of the f u approach and uses it every time.

    Reply
  26. An examiner can reject a claim term as being indefinite. But can he “demand clarification of a claim term” without making a 112 rejection?

    Reply
  27. breadcrumbs “I have misplaced my bookmark on the proper totality of responding to an official request for information (and what that request can properly be for).”

    Asking an applicant which of two meanings a term PROPOSED BY THE APPLICANT is the one that the applicant has in mind is not “an official request for information.”

    “he can’t “simply ask Applicants to define any new terms.”

    Actually, the Examiner certainly can do that. Whether you choose to answer or not is your decision. But I already addressed this silly fake issue re “asking” upthread already. You have either forgotten that or are choosing to ignore it. Whatever, Leo.

    Of course, if you like appealing cases as much as certain prosecutors do, you can fight every trivial issue presented before. It’s a good way to grab the client’s money, I suppose.

    Reply
  28. “I’m talking about an Examiner demanding clarification of a claim term whose meaning is ambiguous. You can keep tilting at the windmill as long as you please. Just be aware that on the other side of the blades is an evergrowing pile of meat.”

    Fine. But you’re still wrong. An examiner “may demand clarification” via a 112 rejection, as Judge Linn suggested. Or he may request factual information reasonably necessary to examine the case. But he can’t “simply ask Applicants to define any new terms.”

    But you’ve got the full support of 6 on your side. And he apparently likes meat too.

    Reply
  29. JohnDarling,

    I have misplaced my bookmark on the proper totality of responding to an official request for information (and what that request can properly be for).

    Since I’m fairly certain that this concept has been hashed out at least once prior on Patently-O, can you supply the link?

    Thanks!

    Reply
  30. “We probably officially do, under at least the request for information rule, but we might have to make it an official request if we want to throw authority behind it.”

    Funny.

    Talk about tilting at windmills.

    Reply
  31. “The above case law suggests to me that an examiner lacks the authority to define claim terms via correspondence with the applicant. ”

    Nobody contests that we do. MM suggests that we have the authority to demand a response to a request for clarification. We probably officially do, under at least the request for information rule, but we might have to make it an official request if we want to throw authority behind it.

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  32. “That’s not quite how I would have put it, but yes, that’s correct.”

    Well, you could do as MM suggests, but that’s a sure fire ticket to getting the 112 that the examiner just spared you.

    Reply
  33. “When a patentee acts as his own lexicographer in redefining blah blah blah ”

    I said nothing about “redefining” claim terms. I’m talking about an Examiner demanding clarification of a claim term whose meaning is ambiguous. You can keep tilting at the windmill as long as you please. Just be aware that on the other side of the blades is an evergrowing pile of meat.

    Reply
  34. See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “‘set out his uncommon definition in some manner WITHIN THE PATENT DISCLOSURE’…) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88, 21 USPQ2d 1383, 1386 (Fed. Cir. 1992)).

    Any special meaning assigned to a term “must be sufficiently clear IN THE SPECIFICATION that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998). See also Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999) and MPEP § 2173.05(a).

    See also Merck & Co., Inc., v. Teva Pharms. USA, Inc., 395 F.3d 1364(Fed. Cir. 2005), “When a patentee acts as his own lexicographer in redefining the meaning of particular claim terms away from their ordinary meaning, he must clearly express that intent IN THE WRITTEN DESCRIPTION.”).

    The above case law suggests to me that an examiner lacks the authority to define claim terms via correspondence with the applicant. But what do I know, I’m merely constructing strawmen.

    Reply
  35. “That’s nice, Leo. So when an Examiner asks you “Is the term ‘stabilized’ defined by the assay described on page 22 or is it used generically to mean any degree of stabilization,” you can simply tell the Examiner to fxck off because he has no “authority” to request that you define the term. Good luck with that, Leo.”

    That’s not quite how I would have put it, but yes, that’s correct. My point is that other than in the fairly narrow realm doctrine of prosecution disclaimer, which is applied after the patent is issued, definiteness, written description support, and claim scope are not defined by attorney argument.

    But so much for a civilized discussion.

    Reply
  36. ‘The standard for amendments to the claims under the “written description” requirement is different from, and in most cases a little looser than, the standard for amendments to the specification under the “new matter” requirement.’

    Pick your poison during prosecution and drink it during litigation. I prefer the “new matter” poison because it seems to rear its ugly head less often in the recent cases.

    Reply
  37. “As far as I know there is nothing in the statutes, regulations, or MPEP that gives the examiner the authority to compel an applicant to “pick a definition” or to proffer a definition for entry into the prosecution record.”

    That’s nice, Leo. So when an Examiner asks you “Is the term ‘stabilized’ defined by the assay described on page 22 or is it used generically to mean any degree of stabilization,” you can simply tell the Examiner to fxck off because he has no “authority” to request that you define the term.

    Good luck with that, Leo.

    “Prosecution disclaimer …is not an examination tool.”

    I have no idea what that that is supposed to mean but it’s plainly your strawman.

    Reply
  38. I have seen a jumbled mess of words without any punctuation receive a 112 2nd rejection, and only when the applicant responded by putting italics on one word in the response did it become clear. I wouldn’t say the 112 was improper though. If something is unclear to the examiner, it might be unclear to someone else reading the claim too.

    Reply
  39. “As Judge Linn said, Examiners ‘have the authority and the responsibility’ to force the issue. Get the terms defined. Remove the ambiguity.”

    Mixing prosecution disclaimer and Section 112 is a horrible idea, in my opinion. As far as I know there is nothing in the statutes, regulations, or MPEP that gives the examiner the authority to compel an applicant to “pick a definition” or to proffer a definition for entry into the prosecution record.

    The requirements of Section 112 are directed to the specification and claims, not to the prosecution file as a whole. A true Section 112 issue can’t (and shouldn’t) be cured by attorney statements or arguments. Prosecution disclaimer is applied after the fact, and is not an examination tool.

    Reply
  40. T: “Ask an attorney to define something, lol. Expect full compliance and a straight answer, lol.”

    I didn’t mean “ask” in the literal sense. I meant “require”, e.g., propose two definitions and ask the attorney to pick one of the definitions or choose another term.

    “A 112 … can elicit an actual meaningful response”

    Yes. On the other hand, I’ve seen plenty of prosecution histories where the response was no better than what existed before. As Judge Linn said, Examiners have “have the authority and the responsibility” to force the issue. Get the terms defined. Remove the ambiguity.

    Reply
  41. Ask an attorney to define something, lol. Expect full compliance and a straight answer, lol. A 112 has more weight than simply asking, and it can elicit an actual meaningful response that provides clarity instead of dragging out prosecution.

    Reply
  42. “In case after case before my court, the central debate revolves around the meaning of claims terms that, for example, were added during prosecution and do not appear anywhere in the written description. For those cases, the meaning of the claim limitation has to be inferred from other words, leaving the issue open to unnecessary dispute and leading frequently to protracted and costly litigation. You have the authority and the responsibility to not let that happen and to insist that applicants use words in the claims that find unambiguous and full support in the written description”

    Alternatively, Examiners need to simply ask Applicants to define any new terms to ensure that they are not later exploited by the applicant to reach subject matter that was not fairly disclosed or enabled in the specification.

    Reply
  43. “Cert Denied: The Supreme Court has denied certiorari in the following patent related cases:
    Apotex v. Roche (reverse doctrine of equivalents).”

    How shocking! ;)

    Reply
  44. “I’ve even had an Examiner issue a 112 against claims as originally filed becasue the language in the claims wasn’t in the detailed description verbatim. ”

    He was either new or old, from what I hear the originally filed claims didn’t used to be considered part of the written desc.

    “But it sounds to me like Judge Linn is asking Examiners to make it so the court doesn’t have to do its job.”

    Sounds to me like he wants 112 to be enforced so that disputes don’t happen outside the office so often. If lots of cases even have to go to his court then that is an indication that there is a problem.

    Reply
  45. dweller is a little off the mark. The standard for amendments to the claims under the “written description” requirement is different from, and in most cases a little looser than, the standard for amendments to the specification under the “new matter” requirement.

    And broje may have inadvertently taken an unnecessary risk.

    If the examiner is wrong, argue the point, don’t amend.

    Reply
  46. I’ve even had an Examiner issue a 112 against claims as originally filed becasue the language in the claims wasn’t in the detailed description verbatim. I had to amend the detailed description to include the claims as originally filed, verbatim, and still drew a new matter rejection. Only after I pointed out that the claims as originally filed are considered part of the specification, and quoted the MPEP verbatim, was the rejection withdrawn. This rejection is just one exmaple of how Examiners are overly zealous in this regard.

    But I guess I can’t complain too loudly. At least that Examiner read the entire specification. He must have been new.

    But it sounds to me like Judge Linn is asking Examiners to make it so the court doesn’t have to do its job.

    Reply
  47. If you’re using words in the claims that do not appear in the spec, then you should be perfectly comfortable adding those words into the spec.

    Adding words like that to the spec certainly wouldn’t be adding new matter, otherwise you wouldn’t be trying to add them to the claims. Right?

    Sometimes people are irrationally paranoid of amending the spec.

    Reply
  48. “In case after case before my court, the central debate revolves around the meaning of claims terms that, for example, were added during prosecution and do not appear anywhere in the written description. For those cases, the meaning of the claim limitation has to be inferred from other words, leaving the issue open to unnecessary dispute and leading frequently to protracted and costly litigation. You have the authority and the responsibility to not let that happen and to insist that applicants use words in the claims that find unambiguous and full support in the written description.”

    Ick. There is a reason that Europe is moving away from the practice of requiring claim amendments quote the specification.

    I think if an Examiner is going to require that the words added to the claims are exactly the same as those in the specification, then he has a duty to back off the kind of word games I see over and over again, in which the words are construed to an unreasonable breadth, or to mean something different from what was disclosed in the specification.

    Reply
  49. Does anyone know if former Governor Gary Locke favors a strong patent system?

    Reply
  50. A critical part of Judge Linn’s message was omitted from the above quotes:

    “Your job is much harder now than it was for me all those years ago. The technology of today’s inventions is immensely more complex than ever before. Since that time, we’ve witnessed remarkable advances in knowledge, such as the discovery that atoms will fall out of a wire if the wire’s end is held over a bucket.”

    Reply
  51. The Supreme Court did the right thing by cutting off the FTC rabid persecution of Rambus.

    By mid April, in Judge Kramer’s state court in San Francisco, Rambus will have a chance to put on the trial record lots and lots of incriminating evidence they discovered that will prove Rambus has sustained direct damage (of at least 4 billion dollars, before trebling!) due to the deliberate boycott (+ the already proven price fixing) of the RDRAM proprietary memory architecture in the late 90’s to early 00’s by the convicted, price fixing DRAM cartel.

    Once the trial record will develop and previous perjured testimonies exposed, many cartel past and present executives and directors including many US FTC/DOJ sycophantic/corrupt bureaucrats will have a LOT of explaining to do!

    The DRAM cartel is walking on the green mile…

    Reply

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