Tafas v. Dudas: Appeal and Legislation

Tafas v. Dudas (Fed. Cir. 2008).

  1. CAFC Appeal: PTO General Counsel James Toupin has reportedly indicated that the PTO will appeal the ruling to the Court of Appeals for the Federal Circuit (CAFC). On average, CAFC appeals take over one year. The average is raised for “important” cases where or caess where precedential opinions are issued.  However, there is a large variance between timing of the various judges. When on the panel, a couple of CAFC judges tend to greatly increase the expected time to judgment.
  2. Patent Reform: The pending Patent Reform Act includes language that would provide substantive rulemaking authority to the PTO. That provision would directly overrule yesterday’s decision. [UPDATE: To clarify, the version passed by the House (H.1908) includes additional regulatory authority. That portion is not in the current Senate bill.]

171 thoughts on “Tafas v. Dudas: Appeal and Legislation

  1. P.S. e#6k, the FR 46738 passage has been quoted at the bottom of the NIPRA web page (under the heading “Possible Federal Register Notice Errors”) since the very first day the page was posted on 10/13/07.

    link to nipra.org

    Obviously, you are correct the Office intended to cut off RCEs at one, which would be a substantive effect. But I think what the PTO intended and what the regulators accomplished through their “carefully crafted”, poorly written, convoluted, inexplicably verbose, and unnecessarily complex Rules (which you say are not substantive) are two very different things.

  2. e#6k said:

    “I’ll tell you why RA, the second you make RCE1 you had to abandon CON1 (an entire application), and start a whole new application RCE1.”

    and

    “Also, RA, it’s helpful to remember that RCE1 is a separate application from CON1.”

    and

    “Now read section 78d1iii4.”

    e#6k, first of all, there is no 78d1iii4, but I’ll grant you slack on that, since I’ve made plenty of errors with the new rules in that respect too. Second, what an RCE is is absolutely spelled out in the MPEP, in USPTO presentations, in the rules, and in the law – it is continued examimation of the same application (that is why the NIPRA diagrams had the arrows underneath the labelled shapes). I’m afraid this is Patent Academy 101. E.g.

    See link to uspto.gov which indicates:

    “Request for Continued Examination (RCE)

    *Nature of proceeding:

    *RCE – is in fact continued examination of the *same application*

    *CPA – is a continuing (new) application but is treated by the USPTO as continued examination of the same application

    *Section 1.129(a) – is further limited (continued) examination of the same application”

    See also:

    § 1.114 Request for continued examination.
    (a) If prosecution in an application is closed, an applicant may request continued examination of *the* application by filing a submission and the fee set forth in § 1.17(e) prior to the earliest of:
    (1) Payment of the issue fee, unless a petition under § 1.313 is granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals for the Federal Circuit under 35 U.S.C. 141, or the commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or civil action is terminated.

  3. Also, RA, it’s helpful to remember that RCE1 is a separate application from CON1. That’s probably where you went awry. Either that or you just weren’t paying attention to 78d1iii4.

  4. Ok RA I see what your problem is, you feel like 1.114f(3) specifically permits the RCE2 because CON2 satisfies the exemption rule of f(3)(iii). Okay, basically your analysis is wrong in only one area. Your discussion of (3) any other application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of that divisional application, not including any nonprovisional
    application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

    See here on pg. 46738 about f(3). This is the interpretation intended to be made from f(3). So we know what that is. link to uspto.gov
    “Section 1.114(f)(3) permits an applicant to file a single request for
    continued examination in a continuation application of a divisional
    application meeting the conditions set forth in § 1.78(d)(1)(ii) provided that no request for continued examination has been filed in the divisional application or any other continuation application of the divisional application” Now, I don’t believe this is up for dispute, this is what the office INTENDS for the rule to be interpreted as saying.

    Then we turn to saying ok, then why does i and ii seemingly not apply and (iii) seem to explicitely exempt the “any other continuation application of the divisional application” as they just stated?

    I’ll tell you why RA, the second you make RCE1 you had to abandon CON1 (an entire application), and start a whole new application RCE1. You already had CON2 filed also, so now you have CON1, RCE1, CON2 all claiming priority to DIV. Guess what that means? None of them now satisfies the conditions of the section of Rule 78d1(ii iii or vi, unless with a petition under vi). Read specifically 78d1 iii which is the continuation portion that you’re relying on. Now read section 78d1iii4. You have 3 (not 2) nonprov’s claiming priority to your DIV. Read em n weep boyz.

    Citation here for 78d1: link to patentdocs.us

    Now your CON1, nor more importantly RCE1 which is an application you have already filed in your scenario at the time of filing RCE2, is eligable for the exemption under 114f3iii because it no longer satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi). Sorry.

    Yes, it took me about 40 minutes to find this, it’s not easy. Time to edit your page. And again, like I said, the rules are complicated, but they’re not impossible to cipher out. I’d say they’re just about as hard as ciphering out the entire structure that is encompassed by a complicated means plus function limitation.

  5. Today, Robert Bahr indicated at the ABA-IPL Spring Conference that 1) the decision on whether to appeal the Tafas/GSK case has not yet been made (it must be made prior to 60 days from the judgment), and 2) the decision is not being made as an internal decision by the PTO, but rather it rests (at least in part?) externally with the administration.

  6. real anonymous, I agree with –Examiner 6K+1, there are still a lot of good Examiners at the PTO who have had no part in the current distress and who are trying to endure it just like you.–

    the rank and file examiners are not the problem, nor are the “rank and file” patent attorneys

  7. “Please explain how an ESD could be “rule-compliant” (as in my hypothetical) and yet be found “insufficient” and thus rejectable.”

    SF, did I say something wrong (I quoted the sentence I was commenting on, said you were correct, then quoted the rule verbatim and critiqued it)?

    As my SPE used to write on my production report, what gives? Sorry, I meant you no harm.

  8. CORRECTION: e#6K is wrong. Two RCEs are apparently permitted under 37 CFR 1.114(f)(3).

    RA (being momentarily mistaken):

    “Thank you, e#6k, I think you were right on one respect and I was wrong, regarding Scenario 1 on the divisionals page… so that page will be edited accordingly.”

    RA (correcting himself):

    Sorry, e#6k, you are wrong! And the divisionals page won’t be edited (yet). It’s just been some time since I looked at those crazy rules.

    e#6k (wrong):

    “Specifically the line that reads “(ii) DIV; and” needs to be FIXED to say “DIV or CON1 or I” and thus the whole thing fails ii.”

    See 37 CFR 1.114(f)(3) which says: “(ii) The divisional application; and”

    See, that’s were the rules are wrong: you were reading Rule 114(f)(1), but I was reading and quoting Rule 114(f)(3). The relevant sections, 114(f) and 114(f)(3) are reproduced below (see what happens when you make wise cracks about beginners? :-) )

    37 CFR 1.114

    (f) An applicant may file a request for continued examination under this section in an application without a petition under paragraph (g) of this section if the conditions set forth in at least one of paragraphs (f)(1), (f)(2), or (f)(3) of this section are satisfied:

    (3) The application is a continuation application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of a divisional application and satisfies the conditions set forth in § 1.78(d)(1)(iii), and a request for continued examination under this section has not been filed in any of:

    (i) The continuation application;
    (ii) The divisional application; and
    (iii) Any other application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such divisional application, not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).

  9. “Actually, I would like to see everyone at the PTO get the ax.”

    Examiner 6K+1, there are still a lot of good Examiners at the PTO who have had no part in the current distress and who are trying to endure it just like you.

    [As a secondary consideration, part of the problem with the PTO's "let the applicant do the examination work" attitude is that there may not be enough (qualified) folks on the outside to to the work of both the applicant and the examiner....]

  10. Actually, I would like to see everyone at the PTO get the ax. We should go to a straight publication system, and have specialized courts like tax courts hear patent cases. The PTO is bereft of the public trust, I don’t think there is anyone out there that thinks they are doing a good job. Might as well take it down and start over again from scratch.

  11. “(iii) any other application that claims priority to DIV, “not including any nonprovisional application that satisfies the conditions set forth in … 1.78(d)(1)(iii)”.” (<<

    ^btw, I wasn’t going to change it but I was wrong as to why I had originally thought their issue in example 2 was the same issue in example 1. It is the exact same very issue (“such application” misread), in addition to the problem I said needed to be fixed in the above. We see here they believe that section iii relates to all the applications which claim priority to the DIV and overrides ii. That’s them misinterpreting section iii’s “such application” as being limited to the DIV and then thinking CON1 is exempt under iii’s exemption like it is. The “such application” in iii refers to all of the I, DIV and the CON1, and so, even though the CON1 is exempt in iii’s special exemption it doesn’t matter since the RCE fails ii (i.e. CON2 claims priority to CON1). BUT, even them misinterpreting that does not prempt the fact that Example two fails section ii, which is specifically why RCE2 fails.

  12. P.S. I was joking about spreading my pennies out on the table for you (and I assume I know who you are, from your e-mail and from the patents you’ve issued).

    Thank you, e#6k, I think you were right on one respect and I was wrong, regarding Scenario 1 on the divisionals page… so that page will be edited accordingly. However, you didn’t clearly answer my question (remember, I’m not the sharpest knife in the drawer). So I have two questions now (really easy):

    1. Under the Starbucks scenario, do you get the pennies in the quadrant that is closer to me and on my left of the middle point?

    2. If not, how can 114(f) be interpreted any differently (the adjectives in Starbucks are identical to those in the three subsections (i), (ii), and (iii) of 114(f))?

  13. Btw, my reasoning is as sound as it’s going to get from anyone. The use of “such application” in ii and iii is readily apparent. To take it to be otherwise renders the whole of the rules meaningless as you so astutely point out. You know why it was put there, you know how it was meant to be taken and yet you fight on (For Great Justice?). For the record, I concur it could be made clearer for the beginners reading it.

    This took two breaks to type, so I’m done with PO for awhile, as my week is busy as well. Also, there are hurdles if I’m to meet you to talk about legal matters rather than “my identity”.

  14. “Nope, wrong again. RCE1 was filed in CON1 (not DIV). According to 1.114(f)(3)(iii), the filing of an RCE in CON1 (which itself was filed under 1.78(d)(1)(iii) will not preclude the filing of an RCE in CON2.”

    Nope, I’m right again, that’s why I told you to pay attention to the commas in my statement in the previous post (not in the rules themselves). Read my statement again, take out parenthetical? clauses in the commas. i.e. the con1 was where rce1 was filed, and CON2 claims priority to CON1. And again, this entire example hinges on the issue from example 1 being resolved improperly in their favor instead of in reality, they even acknowledge this in the example 2 though the put it in under the guise of a different issue. They claim the issue at hand is “Rule 78d1iii describes CON1 as being a “nonprov continuing patent application” so section 114fiii exempts it from being considered lolomfgroflmao!”. Hardly. The “issue” is them still misreading 114f “such application” although this time the misreading rears it’s ugly head in point ii instead of iii. Specifically, portion iii does NOT apply, since portion ii applies. Now, if we look at this, we see, CON1 is an application that the CON2 claims priority to (it is not the furthest priority back that it claims, but none the less it does claim priority back to it as you would see on the front of the issued patent if one was issued). You can’t argue that point, if it were different the chain wouldn’t be serial it would be in parallel since con1 and con2 would only claim benefit of the DIV or nonprov, instead you have CON2 claiming the priority of CON1 to make a series or serial connection/tree. Presuming that point is undeniably true, CON1 is an application whose benefit is claimed under 35 120 121 or 365 in such application (i.e. RCE2, “the application” from i) so RCE2 fails under point ii and thus it’s passing i or iii is irrelevant. Specifically the line that reads “(ii) DIV; and” needs to be FIXED to say “DIV or CON1 or I” and thus the whole thing fails ii. Again, the issue lies in the “such application” bs and to what they feel it is referring to, the answer is, it’s applicable to the ENTIRE application in i (and everything it claims priority to) if you’re discussing ii and the application in ii if you’re dicussing iii. The rule is applicable, as specifically written with all points intact, to every application, it does not discriminate based on loose determinations of which application is referred to as “the application” or “such application” made from a tree diagram, you must apply it to every application completely anew with every new app filed. I’ll give you that it’s a bit confusing on first blush, but I presume this is past your first, second, third, perhaps tenth blush. You should be getting it by now. Also, I had to put in the leet because this is getting plain stupd. Here let me state it for you very plainly. Example 2 fails 114fii because CON2 claims priority to CON1, and the misunderstanding arose because the people writing it are not the sharpest knives in the drawer and cannot understand “such application” encompasses.

  15. “Do you get any of the pennies in the quadrant that is closer to me and on my left of the middle point? (Your apple, worm, bacteria example is logically flawed, as I believe was your ODP analysis regarding ABCDJ(E)… I just can’t correct every mistake you make. :-)”

    Nah. The apple example was, as I pointed out, merely to show how the term “such” was being used, i.e. 2 refering to 1, 3 refering to 2, not to portray necessarily the relationship between apples worms and bacteria in relation to nonprov’s, con’s, and rce’s. Yea, my odp analysis might be incomplete in the case above, obviously you’d need a reference teaching at least J, or J(E) to make that abcdje combination odp over abcde and in the example it doesn’t exist, then again, in my exp. a google search will probably get you lucky with J. Luckily the odp issue wasn’t in the question at hand it was extraneous information provided.

  16. “Also, if you could take down those pages (if you’re in that org) we that are against promulgation of misinformation would be appreciative.”

    I hope you can see I’m not into spreading misinformation (I have better things to do with my time), but rather exposing it. I will e-mail Patent.Practice@uspto.gov again this week or next, linking the pages with the same info I gave you… and give them the opportunity to officially correct it again. Of course, their correction will be “on the record”, so to speak, and therefore the logic may need to be better than yours.

    ISSUE #1: Yes, you are absolutely correct, it revolves around the meaning of “such” in 37 CFR 1.114(f)(1)(iii), as was pointed out. If the “such” refers to the “any application” in subsection (ii), then the original PTO PowerPoint presentation was correct and there was no reason for them to change it. If it refers to the “the application” in subsection (i) and the “an application” in in paragraph (f), then the original PTO PowerPoint presentation was wrong and therefore it was changed for the September 18, 2007 presentation. (The change certainly evidences some kind of change of mind at the PTO, I think.)

    Irregardless, Examiner#6K, we’re going to meet at Starbucks, and I’m going to bring my penny collection. I’ll sit across the table from you, spread out the pennies to cover the whole table, and have you pick a penny somewhere in the middle (to define a middle point). Then I’ll give you:

    i) the penny;
    ii) any penny that is closer to you than such penny; and
    iii) any penny that is on your left of such penny.

    Do you get any of the pennies in the quadrant that is closer to me and on my left of the middle point? (Your apple, worm, bacteria example is logically flawed, as I believe was your ODP analysis regarding ABCDJ(E)… I just can’t correct every mistake you make. :-)

    ISSUE #2:

    “I believe they are presuming they were right in the first example”

    Nope. It’s independent.

    “which claims priority to an application (CON1), which claims priority to an application (parent or DIV), that has had an RCE filed in it (RCE1)”

    Nope, wrong again. RCE1 was filed in CON1 (not DIV). According to 1.114(f)(3)(iii), the filing of an RCE in CON1 (which itself was filed under 1.78(d)(1)(iii) will not preclude the filing of an RCE in CON2.

    SUMMARY:

    e#6k: “the PTO took specific care to craft [the Rules]”

    RA: “e#6k, you’re kidding, right?”

    examiner#6k: “Sometimes they seem to say stuff they don’t.”

    RA: “Well, I think that’s an understatement, Examiner#6K.”

    examiner#6k: “You’re hung up on the words… pay careful attention to commas”

    [Uggh, busy week, thanks for the dialog 6k....]

    Examiner 6K+1: I laughed so hard I had to stop reading.

  17. “These are the kind of Examiners who should be leaving the office.”

    Trust me, you don’t want anymore e’s leaving than already are. Semi-bad examination worse than no examination at all? Hmmm, tough call. You’ll spout off about it not being a tough call but you’ll know deep down that will be bs, because if we had even less examiners and congress saw the backlog then you know darn tootin’ there would be congressional action for reform POST HASTE. You’re always going to have employees that do the bare minimum and you know it Cave. In a perfect world where everyone is an overachiever at everything they do this wouldn’t be the case of course.

  18. LL, I was joking, I am a practioner who made a WAG about what is going on in the office. Thanks for confirming.

    However, the fact you have confirmed and added yet more details is more disturbing. The PTO is captured, and cases like Tafas v. Dudas show how far its gotten out of control.

    The CAFC needs to step in and take control of this renegade agency, the damage it is doing is worse than the FAA’s failure to maintain safety on our airlines but is harder to detect than cracks in fusilage. Off the record decisions are the antithesis of open government. Anyone that has suffered delay, costs or refusal to grant as a result of this illegal activity on the part of the PTO has a claim against the US government.

    Congress clearly is unable to undertand the problem, much less the PTO’s improper reaction. We need an investigative journalist to bring this to light. The US role as technology leader hangs in the balance. Companies that support the ill-advised patent “reform” would love to see small inventors killed off, so they can steal their ideas without fear of “patent trolls,” but behind every so-called patent troll is an inventor who has been ripped off. Tax their damages awards against such crooks at a higher rate if you will, but their rights are just as important (if not more so) than people with claims under social security, tort, or any other cause of action against US bureaucrats that seek to impose delay and costs on parties with valid claims in order to appease a special interest.

  19. …by the same token, a patent attorney that knows what they are doing can usually put the Examiner and any supervisor who is conspiring not to allow a case “because we think we’ve seen that before” or “that’s just too broad” up against the wall through deft practice. Again, its called aspiring to be good at what you do.

  20. LL you make a good point.

    Examiners who understand what their job is are refreshing to deal with because they are not coming from a place of fear. They know that in the rare event a case of theirs comes under scrutiny there will be no issue if they can support their actions. Therefore, they ensure that every action they take is supportable from the start.

    In other words, they know what they are doing and they do their job all the time. Its the folks who are not quite sure what they are doing, who are overwhelmed, who go through the motions until the 11th hour, such as when a Notice of Appeal is filed, before they even look at a case that they rejected out of the gate because the base claim didn’t pass the mythical “pencil test.”

    Oh and need I say that they copied the rejection, without change, in every action right up through final without reading or responding to the applicant’s remarks. These are the kind of Examiners who should be leaving the office.

  21. I might would LL, but let’s be honest, I probably wouldn’t be half as effective in most other arts, this is my bread and butter that I’ve studied for years and already know somewhat of what’s what. Sure I’m not an expert with 20 years, but I’m surely near “journeyman” or whatever else you want to call it. Sticking me in, oh, I don’t know, animal feed holders, lighting, etc. etc. would just be throwing myself back in the deep end.

  22. RA- Sure, first one, read 1.114(f)(1)(iii) there you will see there is a THIRD condition that must be met for 1 to apply. What is that third condition? “Any application that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of such application (<<< this refers to section 2 application NOT section i application), not including any nonprovisional application that satisfies the conditions set forth in § 1.78(d)(1)(ii), (d)(1)(iii) or (d)(1)(vi).”

    No RCE may be filed under 1 if there is an RCE filed in an application (left hand CON in the second Figure) that claims priority to the application (i.e. the parent) which the instant application (right side CON) is claiming priority to. Simple.

    You’re hung up on the words “such application” in (iii), they are referring back to the application to which priority has been claimed in (ii), not the application in (i) as “such application” in (ii) is directed to. The phrase “such application” in (iii) does not have a “carry over meaning” from (ii), it refers to specifically the application in the previous section i.e. ii. To illustrate the use of “such as here’s an example: I say 1. an apple 2. a worm in such apple 3. a bacteria in such worm (apple=parent, worm=con, bacteria = con of con. You’re right, maybe a bit hard to understand, but, not so hard that they’re struck down.

    In the next example I believe they are presuming they were right in the first example, which they weren’t, so the whole “argument” they’re making crumbles. I.e. the first figure under “scenario 1″ is improper because the RCE2 is being filed in an application (CON2) which claims priority to an application (CON1), which claims priority to an application (parent or DIV), that has had an RCE filed in it (RCE1). <<<< pay careful attention to commas.

    Also, if you could take down those pages (if you’re in that org) we that are against promulgation of misinformation would be appreciative.

    If you have any further questions on those matters np, but no more new freebies until you show me substantive matter in the rules.

    Also, you’re not very anon if you sign your name. Man, IBM, whirlpool, and Toyota hires you. Will they hire me? How much are we talking in terms of $?

  23. unfortunately the patent field may have unfriendlies all over this admin. a high level appointee made a crack about judge markey years ago back in our govt. contracts class. looking back, the anecdote actually put the late judge in a favorable light.

  24. Examiner 6K+1,

    While I know that some areas of the office are like that (most notably the business methods areas), there are a lot of areas that are not. Personally, I, as well as the SPEs in my area, do not arbitrarily kick back cases without a specific suggestion as to how the claims should be rejected (particularly with 2nd pair of eyes (which should be eradicated yesterday, or sooner)).

    And I have never kicked back a case, or even implied to an examiner, because a claim was “too short” or “too broad”. And I never had one kicked back for any such reason. To do so is not only wrong, it is (effectively) against the patent laws as we are supposed to allow patents UNLESS there is a legal reason that they should not be rejected (i.e., 101, 102, 103, 112).

    Unfortunately, too many managers (specifically the directors & SPEs) hear that the PTO has a quality goal to meet & $tupid1y interpret this to mean not to allow anything short or broad.

    More & more, I think that this actually comes from the minds of the directors & SPEs rather than the 10th floor, based on what I hear. They are afraid to allow something because they think that it will hurt their error rates. Which is SO $tupid that it is mind-numbing. As posted elsewhere, each examiner gets, at MOST 3-4 cases pulled a year by QR, and some get NONE (QR pulls less than 1 allowance & 1 IPR case per examiner in a TC each year, on average). So, the odds of any given vase being pulled is small to start with. And, most allowance errors come from stuff like 101, 112/2, and ODP NOT from prior art. And these things have VERY little to do with the breadth or length of a claim.
    And, in the meantime, the real IPR error rates are going through the roof because of all of the bad rejections being made.

    All that said, before you jump ship (E#6k too), maybe stick around a bit or find a new area to examiner (i.e., transfer arts) and try to get things improved from the inside. Otherwise, you become just like too many here complaining but not trying to do anything to make changes to the system (Personally, I speak up at about every meeting with upper & mid management that I can to make sure that they hear about these things. As well as other things…)

    thanks & good luck,

    LL

  25. I am also an examiner at the PTO, and I am about to be a former examiner. I have had it with being part of a bureaucracy where we are required to reject patent applications by an off-the-record internal review process, just in the hopes that the applicant will run out of money or that the BPAI will be able to find some reason to reject the claims when we can’t find any valid prior art. I would rather do something more moral, ethical and honest, like selling drugs or prostitution, than continue to be a part of this travesty.

  26. “Sometimes they seem to say stuff they don’t.”

    Well, I think that’s an understatement, Examiner#6K. If you would, I would very much appreciate it if you (or others at the PTO) could rebut the following web pages and indicate (briefly) why they are in error, so that the pages can be corrected as to their errors. I sent e-mails to Patent.Practice@uspto.gov in September or October on both these issues (because I could not resolve in my mind the wording and apparent effects of the rule sections with the wording of the Federal Register notices), but never did get any replies.

    Issue #1:

    From Federal Register at 46716:

    “Specifically, the Office is revising the rules of practice to require a justification for any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family.”

    But see here where two RCEs are apparently permitted in a patent family after parallel continuations:

    link to nipra.org

    Issue #2:

    From Federal Register at 46738:

    “Section 1.114(f)(3) permits an applicant to file a single request for continued examination in a continuation application of a divisional application meeting the conditions set forth in § 1.78(d)(1)(ii) provided that no request for continued examination has been filed in the divisional application or any other continuation application of the divisional application.”

    But see here where 2 RCE’s are apparently permitted in a patent family after a divisional:

    link to nipra.org

    I’d love to hear your rebuttal for either (or really, both), and stand to be corrected. Thank you.

    David Testardi

  27. Oh, and btw RA, that’s why it’s a One way test. If it were two way then it would fail at least halfway everytime in a backwards application of the test as you did, for the reason you just showed us. Seriously, you guys are supposed to be experts on this and you’re having trouble with simple DP issues. They’re small potatoes, so after saying “yes, I misapplied it” if you could include in your brief reply a showing of substantive matter in the new rules I’d be appreciative since that’s what I’ve been trying to get out of you guys the whole time.

  28. The ABC compound claim type is picking on my weakest of suites, chemistry, but it does seem to me, just at second blush, it seems you have your cases around backwards ABCDJ(E) case came SECOND, i.e. it is the child so it is the first “application” mentioned (not the abcde one) and abcde was the “parent” and thus is the second one mentioned in the above paragraph. Your unique feature is J(E). I’m telling you, your woes are a direct result of your own misunderstanding and inability to comprehend what is going on. Of course you can’t prove distinctness if the one-way test is applied arse backwards as you’re doing. If you still cannot understand, I’ll give you the number of my qas she’s real nice and patient with people who have troubles with such things.

    And no, I wouldn’t call dependent claims an “independent claim” I’m referring to restricting one dependent claim away from the other deps because they are independent of each other and they are apparently distinct and separate. All that remains is a srs burden amirite? The word independent in the phrase “independent and distinct” doesn’t mean that the claims must both be at the top of the claim tree. It means they must be independent from one another, i.e. not depending from one another. Group 1: C 1 and 2 Group 2: C 1 and 3 etc. etc. Your caselaw is weak, poorly contexted, and would merely lead to the undoing of all the bs you like to perpetrate with huge dep nos if taken to heart.

    “My guess is that e#6k resides in a state mental facility and he likes yanking our chains.”

    I wish, but I’ll not say I’m an examiner, heaven forbid an examiner support his superiors position or try to dispel the mass ignorance that exists around the rules. I will be honest with you though, it took a good bit of training by people very close to those who made the rules before I had even a small grip. They’re not easy, and they’re not easy to figure out on your own. Sometimes they seem to say stuff they don’t.

  29. I believe you are correct. Incredible, then, the level of incompetence and lack of sanity at the PTO. It would be better to oust current management and put senior, superior examiners in charge of everything.

  30. “If 6k is a real examiner”

    Yes, Examiner#6K is a real examiner, and I assume e#6k is the same as Examiner#6K.

  31. If 6k is a real examiner, would that not speak tomes about the incompetence and lack of sanity at the PTO and its management? My guess is that e#6k resides in a state mental facility and he likes yanking our chains.

  32. “Oh, so now any dependent claim that is a serious burden is automatically restrictable?”

    Sorry, I can’t resist, e#6k. To be restrictable, a claim has to be both “independent and distinct” under 35 USC 121. Now you will call dependent claims “independent”? I think Bill Clinton could learn a thing or two from you. :-) But why does that not surprise me? Black “is” white (and wrong “is” right) when it serves the purpose of those who defend the PTO regulators.

  33. “What if he does? First you call his SPE, then you call the director, then you call Dudas then we come to find out that they are indeed patentably distinct.”

    e#6k, your logic is absolutely correct (and we have, so to speak, “called” Dudas on this :-) ). But I think you (and Director Dudas and the person who wrote the rules) apparently don’t know or understand (or respect the power of) the law, and you probably cannot be brought up to speed.

    I’ll just rebut 1 of your misstatements: ABCDE and ABCDJ(E) are patentably indistinct since the test is/would be (according to the PTO) one-way distinctness (for which the MPEP Section is, as you imprecisely pointed out, 804(II)(B)(1)(a)). As such, ABCDJ(E) comprises ABCDE (or so was the intent of the question as presented), which renders ABCDE unpatentable over (i.e. “anticipated by” in a one-way test, again a fiction*) ABCDJ(E).

    *of course the anticipation is a fiction because ABCDE was filed before ABCDJ(E)

    The definition of “patentably indistinct claims” as it pertains to both 1.78(f)(3) and 1.75(b) is equated at FR 46753 (left column, first full paragraph).

    Here’s FR 46784:

    “As noted in [In re] Berg, 140 F.3d at 1434, 46 U.S.P.Q.2d at 1231, applicants achieve no advantage by choosing to file patentably indistinct claims in separate applications because the claims would be subject to a rejection under the one-way double patenting analysis.”

    Here’s FR 46785:

    “Response: The standard for ‘patentably indistinct’ as the term appears in § 1.78 is one-way distinctness in an obviousness-type double patenting analysis. See MPEP § 804(II)(B)(1)(a). The presumption under § 1.78(f)(2) may be rebutted by showing that the application claims are directed to a separate invention, or by pointing to a unique claim element(s) in the independent claim(s) that patentably distinguishes them [ABCDE] from the claims in the application(s) that gave rise to the § 1.78(f)(2) presumption [ABCDJ(E)].”

    [e#6k, the claim for ABCDE just doesn't have any unique claim elements that ABCDJ(E) doesn't have. For an insightful commentary on In re Berg, see e.g. link to oblon.com . Note also the new (main) purpose of terminal disclaimers even in our post-AIPA world, for applications filed on or after June 8, 1995.]

  34. RA, seriously man, I just took a good portion of your test. The questions are bogus. “what if an examiner declares abcde patentably indistinct from “abcdj(e)”. What if he does? First you call his SPE, then you call the director, then you call Dudas then we come to find out that they are indeed patentably distinct. UNLESS, of course, they are not patentably distinct. In which case you simply cancel the offending ones from the later filed case because we’re assuming that those claims really are patentably indistinct and you want a full 5 ind in the first app. Stop trying to claim all the obvious variants c hrist, you’d get hit with a ODP anyway (if you didn’t get hit with ODP then there was a problem if they were indistinct). In which case then you’d have to do the TD, which in this case would be rtarded to do to your new application which presumably contains a good new contribution abcdj and you don’t want to shorten that (unless you can do claim by claim TD’s idk about that, haven’t seen any but you might can, worth looking into). Of course, if you don’t need 5 claims in the first app then cancel a few and put some claims about abcdje.

    The one before it is equally st upid. Q suffered admin delay, cry cry cry. They didn’t suffer anything, they are subject to new rules. This happens all the time. It’s run of the mill, ho hum everyday stuff. You and the applicant are well aware of the new rules and you file an ESD in Q, bam, he copies the five counts. Simple as that. Learn to patent attorney. Or should I say, learn to stop trying to spin things your way.

    Your problem in question 13 is found >>> “after filing an RCE, you strategized”. Stop stratagizing and start claiming your invention, get down to business. If you have separate inventions file them separately, there should never be a voluntary div. A voluntary div is like sayin hai guys, I tried to pull one over on you and submit two applications in one! How about that!

    question 14, see the explanation on 121 w/respect to DP in the above posting.
    question 15, you still don’t understand the difference in distinct and patentably distinct. Let me clue you in. In order to be distinct two things must be significantly different. In order to be patentably distinct they must be different claims in such a way that must not have any issues arising from the statutes or rules determining patentability, this includes both issues of obviousness arising from new references found leading to the applications being put back together before issue, and issues of DP that are excluded from 121.

    All your questions and issues are a result of your own lack of ability in properly prosecuting patents. That’s not my problem, not the USPTO’s problem, that’s YOUR problem. We’d love to help you out, but we have our own problems. I.e. folks abusing RCE’s, don’t know any of those do you?

    I’m at 93%, one of the answers I clicked apparently, according to you, is incorrect. When actually I’m at 100% and you don’t know a dang thing, your questions are see through in their implications and all poorly founded in the reality of the rules, but are instead based on intentionally trying to skew them by presenting cases of poor prosecution by the applicant as legitimate, and portraying it as excused or “needing to be excused”. It is not. Your test is kind of boring and reminds me of that test I took and passed after the academy that was apparently scaled down from the one gs 12′s take, by a smidgen.

    I don’t mean to be mean, nor flame, but seriously. Also, you need to l2callyourlocalexaminer. Us newbie generation kids are willing to work with you, even if you don’t know what’s going on. Thank go d right? I could just ride the first action RCE train through a couple of years from now before some attorneys would get a grip.

  35. RA, seriously man, I just took a good portion of your test. The questions are bogus. “what if an examiner declares abcde patentably indistinct from “abcdj(e)”. What if he does? First you call his SPE, then you call the director, then you call Dudas then we come to find out that they are indeed patentably distinct. UNLESS, of course, they are not patentably distinct. In which case you simply cancel the offending ones from the later filed case because we’re assuming that those claims really are patentably indistinct and you want a full 5 ind in the first app. Stop trying to claim all the obvious variants c hrist, you’d get hit with a ODP anyway (if you didn’t get hit with ODP then there was a problem if they were indistinct). In which case then you’d have to do the TD, which in this case would be rtarded to do to your new application which presumably contains a good new contribution abcdj and you don’t want to shorten that (unless you can do claim by claim TD’s idk about that, haven’t seen any but you might can, worth looking into). Of course, if you don’t need 5 claims in the first app then cancel a few and put some claims about abcdje.

    The one before it is equally st upid. Q suffered admin delay, cry cry cry. They didn’t suffer anything, they are subject to new rules. This happens all the time. It’s run of the mill, ho hum everyday stuff. You and the applicant are well aware of the new rules and you file an ESD in Q, bam, he copies the five counts. Simple as that. Learn to patent attorney. Or should I say, learn to stop trying to spin things your way.

    Your problem in question 13 is found >>> “after filing an RCE, you strategized”. Stop stratagizing and start claiming your invention, get down to business. If you have separate inventions file them separately, there should never be a voluntary div. A voluntary div is like sayin hai guys, I tried to pull one over on you and submit two applications in one! How about that!

    question 14, see the explanation on 121 w/respect to DP in the above posting.
    question 15, you still don’t understand the difference in distinct and patentably distinct. Let me clue you in. In order to be distinct two things must be significantly different. In order to be patentably distinct they must be different claims in such a way that must not have any issues arising from the statutes or rules determining patentability, this includes both issues of obviousness arising from new references found leading to the applications being put back together before issue, and issues of DP that are excluded from 121.

    All your questions and issues are a result of your own lack of ability in properly prosecuting patents. That’s not my problem, not the USPTO’s problem, that’s YOUR problem. We’d love to help you out, but we have our own problems. I.e. folks abusing RCE’s, don’t know any of those do you?

    I’m at 93%, one of the answers I clicked apparently, according to you, is incorrect. When actually I’m at 100% and you don’t know a dang thing, your questions are see through in their implications and all poorly founded in the reality of the rules, but are instead based on intentionally trying to skew them by presenting cases of poor prosecution by the applicant as legitimate, and portraying it as excused or “needing to be excused”. It is not. Your test is kind of boring and reminds me of that test I took and passed after the academy that was apparently scaled down from the one gs 12′s take, by a smidgen.

    I don’t mean to be mean, nor flame, but seriously. Also, you need to l2callyourlocalexaminer. Us newbie generation kids are willing to work with you, even if you don’t know what’s going on. Thank go d right? I could just ride the first action RCE train through a couple of years from now before some attorneys would get a grip.

  36. Sorry to flame RA, my bad, but seriously I know you’re not so bad as to bring up bad arguments like that one above. This DP is illegal because of 121 stuff. Did you not read when 121 is not applicable?

    007- I was hoping you’d get around to the statute sooner or later, I set a bit of a trap because I was holding out on you.
    1. “The PTO has the power to make rules that are not inconsistent with law. In other words PTO has the power to make (presumably) ANY procedural rules that do not change or contradict the law.” True, but slightly fixed for you.
    2. T? (I’m not rock solid on the applicability of all case law, but yes, any deemed relavant by a judge is relavant)
    3. T
    4. F, Yes, there have been many applications that have been “effectively banned” from having a filing of an amendment accepted as bona fide because they refused to submit one. Matter of fact, this is kind of telling on what the RCE rule is about, we’re making you show us that your RCE is a bona fide attempt of sorts to promote the case to completion since you seem to be having so much trouble. Just tell us why you didn’t do x amendment before now, simple as that, if it’s legit, np. If it’s not, come on, why should we to allow an illegitimate RCE just yet? Because the statute says we “shall”? Oh, we will, just as soon as you send us a legitimate petition. More below.
    5. T I do. Page after page of “dog ate my homework” are routinely rejected by teachers across this land, wouldn’t you say adults could be a little more responsible and stick to real excuses?

    Dadum dadum dum dum … Drum roll plz.
    6. The law never says how hastily “applicants shall recieve unlimited continuations” (<<< not that it really says unlim either), what it DOES say is written in usc 132, a. if after recieving notice [of rejection] the applicant persists in his claim for a patent … the application SHALL be reexamined. b. THE DIRECTOR SHALL prescribe regulations to provide for the continued examination of applicants for patent at the request of the applicant. (<<

    You have only rights to RCE’s issued subject to Dudas’s regulation. The statute does not say WHEN the RCE shall commence, they leave that up to Dudas, and he says right after you tell us why you couldn’t submit the amend before now. Let’s be very clear on that, because that is all that is happening. Your argument is weaker than when you came. What else have you got?

  37. “e#6k, … other.”

    Not on your life. See below on DP. Good lo rd, this is basic stuff, for all you guys law schoolin blah blah, you need PTA more than you know. Just because the one cannot be used to reject the other in some cases under 121 does not mean that it is immune to DP. Where you people get this crp from I do not know. Probably the same bin of manu re you pulled out this “substantive” malarky.

    Gould… Oh, so now any dependent claim that is a serious burden is automatically restrictable? No need for how the claims are related what so ever? I’ll TAKE IT!

    If you can’t grasp the basics we’re going to have a real problem before getting into something as “hard” as how you somehow are purporting to have made 100.000000000% procedural rules into even .0000001% substantive rules.

    Ahhh yes, getting to the double patenting rejection. See section E F and possibly G in the section of 804 that talks about when 121 provisions are not applicable. Do your hw, goodness. You’re right pds, I can’t convince any lawyers here of anything because they don’t even know what the freak is going on in the law they purport to know so well. I’m going to clean up the floor with you guys after lawschool.

    “Hur, 121 r protect me from DP rejections, they r illegal” <<< these are the guys you entrust with your applications inventors? Trust me, don’t skimp on the extra 500 to let them read the MPEP, it is money WELL SPENT.

  38. “What of it?”

    If the false presumption isn’t rebutted, the Office has said it will make a “rejection based upon double patenting (including an obviousness-type double patenting rejection)”. See question 26. That would violate 35 USC 121, and be illegal.

    And you ask, “What of it?”

    [P.S. But you're right, e#6k, the silly little false presumption you make in the case of divisionals are really nothing compared with the other substantive problems with the rules... take our quiz. Good night.]

  39. “we say they’re distinct (not necessarily *patentably* distinct)”

    e#6k, two restricted inventions that are independent and distinct are ALWAYS patentably distinct because the term “invention” refers to the claim(s)*, and 35 USC 121 says that the restricted claims are ALWAYS statutorily able-to-be-patented separately, and that one invention may not be used to reject the patentability of the other.

    “stop trying to pass of a “rebuttable” presumption as a “presumption”"

    e#6k, should Congress have said in 35 USC 282, “A patent shall be rebuttably presumed valid” rather than passing off, “A patent shall be presumed valid” as they did? Does 35 USC 282 really give you the impression that the presumption of validity can’t be rebutted? The rebutting is (usually or always) understood in law. (Google shows a sum total of 25 hits for “dispositive presumption”, most of them saying it isn’t.)

    *See Gould, Inc. v. U.S., 579 F.2d 571, 576, 198 USPQ 156 (Ct. Cl. 1978) (“It is also important to keep in mind that each claim of a patent is a separate and distinct invention.”) See also In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) (“It is axiomatic that the claims define the invention which an applicant believes is patentable.”)

  40. I’m not getting into this with you until you answer the question pds. Get to pointing out some substantive matter please.

  41. “They are 100% procedural rules that cause large, substantial substantive side effects but that fact is completely 100% irrelevant since the rules are 100% procedural.”

    Wow. So all the PTO has to do to completely rewrite substantive patent law is to:

    1) Figure out the substantive effects desired

    2) Brilliantly draft procedural rules that will have these substantive effects

    3) Tell Congress, SCOTUS, CAFC, the patent bar, and Applicants to bug off, because the rules are procedural

    Let me know when adults are in charge of the PTO so that we can get reasonable PTO official input on necessary and desirable reforms.

  42. Ex6k, this issues here are really, really simple.

    1) The PTO has the power to make rules that are not inconsistent with law. The PTO does not have the power to change or contradict the law.

    2) There are only two sources for this law: statute and case law.

    3) If a PTO rule contradicts statute or case law, it is illegal.

    4) PTO rules governing completeness of replies are obviously consistent with statute and case law, so your example of completeness of replies is a non-issue. Can you even credibly make out a case that such rules “effectively ban” me from filing an amendment?

    5) Amazingly, you deny the effect of the continuations rule as a ban. I wasn’t expecting this level of disconnect from reality. My case that it was a ban rests on on the Federal Register. Page after page of possible reasons for filing extra continuations were specifically identified as being inadequate for granting of the required petition.

    6) Therefore, the effect of the continuations rule was to contradict the law, which explicitly allows for unlimited continuations. One this determination is made, it is irrelevant whether the continuation rule was written as a direct ban, or merely functioned as a near total ban by operation of procedures.

    Thus, it is trivial to distinguish the reply rules from the proposed continuation rule. Better luck with your next example.

    The ironic thing here is that I have quite a bit of sympathy for prosecution reform, including setting limits on claims and continuations. However, the patent office simply does not have the legal authority to make such changes, and this attempt has been an unmitigated disaster.

  43. 6k … go out and get a drink …. or 5 or 6. You definitely need it.

    Let me give you a hint …. you are not going to convince a single attorney on this board that you know what you are talking about. Not even MM. You couldn’t convince a 1L that you know what you are talking. Why you waste your time is beyond me.

    At first I found you irritating, now I just feel sorry for you.

  44. Also, RA, stop trying to pass of a “rebuttable” presumption as a “presumption”, it’s bad form between gentlemen at discussion.

  45. “e#6k, questions 14 and 15 in the quiz cover restricted, non-elected claims refiled in divisionals which will be presumed to be patentably indistinct from the claims that were elected, even though the Examiner (pursuant to 35 USC 121) deemed the [non-elected] claims both “independent” and “distinct” – else, he would have had no statutory basis for the restriction.*”

    ahh, ok after briefly looking over what you’re talking about, yes you’re right, that exists. It’s the ol’ “ok, we say they’re distinct (not necessarily *patentably* distinct) but here we see they’re both claims on the same specification, clearly you would have claimed everything relating to this specification which you considered to be one invention in the parent application right? Therefor, these claims must be patentably indistinct, rebut that statement if it’s false”. What of it? You believe the inventions to be one invention at time of filing right? Why are you relying on the office to determine such things? We tell you they look distinct at restriction time, you say in your DIV “here’s claims that describe the same invention as we set forth in the parent detailed desc.” so we assume they are patentably indistinct from the claims in the parent since, presumably, according to you, those claims particularly point out and distinctly claim what you regard you invention to be amirite? This hardly makes rules substantive. This the best you’ve got? “O noes I have to rebut that my claims are patentably distinct in my div’s, o noes”, that hardly took away a right or affected an obligation any more than requiring you to respond to an OA in a proper form before we’ll consider it does.

    Answer me, show me specifically somewhere in the rules there is a section that is per se substantive instead of as I say are per se procedural. This should be a basic, elementary function and yet no showing as been produced, there have been mere examples that backup precisely what I’ve been saying. They are 100% procedural rules that cause large, substantial substantive side effects but that fact is completely 100% irrelevant since the rules are 100% procedural.

  46. So, agent 007, what you’re saying is, the rule that mandates all replies, to be “complete” must contain certain specific elements or they will be sent back without response, and in the event of no completion and return of the amendments the application will be abandoned is “banning” amendments? Remember, those complete amendments must also be bona fide. Why is a request for continued examination being required to be accompanied by certain elements any different? You’re reading into the rules that the petition will never be granted, which, contrary to one man’s not being able to think, off the top of his head, of a situation that would facilitate a petition being granted, is hardly the case. That such petitions being granted might be extremely rare is ENTIRELY another matter.

    I have to fight a parking ticket I was improperly given (I left the space, came back later and was issued a ticket, I was not actually in the space for 2 hours). Guess what? He’s got prima facie evidence just by STATING I WAS THERE for over 2 hours. What the f is that? What’s my evidence going to be? Well, in my case I happened to go to a dinner and eat, so I’ll try to show my receipt with the date on it. What if that’s unconvincing? What am I going to do, spend 8+ hours of my life appealing this bs, driving to court, etc. etc.? Example of government doing something more unfair to a HUGE PORTION of it’s people, rather than a certain .00001% of it’s population “inventors”. Maybe you’ll join me in fighting this great injustice? You won’t? Is it because you have clients that are paying you? Hmmmm. I wonder why you have a hard time with this PARTICULAR perceived injustice?

    Let’s use a more telling example. This one is hypothetical. I go to the DMV and ask for a registration form to fill out. I fill out my name and take it up to the clerk. They say, please fill out the rest of the form telling us convincingly what is your business is here. I say ok, I go back and fill out my address and take it to the clerk. They say, no, no, please fill out the whole form. I go back and fill out the Vehicle serial no. with 1234ILOVEU and take it to the clerk. They say, no, please fill out the actual vehicle serial no. I go back, fill in 12, resubmit to clerk. After glancing at the page they see no filled in blanks. They say, “no, I’m not going over your application until you tell me why I should believe you actually filled it out now, and just what is the vehicle you want to register?”. I say, well, I have no reason, I don’t even know if I own a vehicle, I just wanted to register one.

    ^That is what you’re doing when you submit a petition without a good reason as to why the claims couldn’t have been presented earlier (in the majority of cases, in some cases you simply got amnesia and forgot that you owned a truck amirite?). So far as I know PTO is government, not your local “Prevent-a-competitor from Competing R US”, there are rules, they have substantive consequences if you fail to, or are unable to comply with them.

    “2) The 8/21/07 final rules by the PTO effectively banned 2nd and subsequent continuations.”

    Point no. 2 is false on it’s face and hardly needs anything said but “there is nothing in the rules effectively, or otherwise, banning any continuations, if the opposing point to any portion of the rules stating any implied, explicit, or in any other form effective, or otherwise, banning of anything then the PTO yields entirely. Failing this very simply rebuttal, PTO feels as if it’s position is made clear and it’s behavior in adopting these rules is perfectly acceptable and that the district court erred in broadly interpreting substantive to mean “potentially causing substantive effects”, especially since a huge number of agency rules in the myriad gov organizations have a large number of such “substantive” (under the DC’s ruling) procedural rules”. Goodness, that’s two lines since I was generous, I could have done it in 15 words or less. “Show the court anything banning, in any fashion, continuations, otherwise the rules are purely procedural”.

    Your point of “effective banning” is moot, unless you also argue that the rule prohibiting replies that are not bona fide are also substantive since they apparently “effectively” block amending your application. That one and nearly every other rule that matters to gov agencies that I can think of.

  47. “agent007, I remember you hit the nail on the head about 5 months ago. Well done.”

    Thanks. I was really happy to see the Cacheris decision follow this line of reasoning, because I think it gives the PTO no case on appeal. To change the result with respect to continuations, the following argument has to be overcome:

    1) It is inconsistent with the law for the PTO to ban 2nd and subsequent continuations.

    2) The 8/21/07 final rules by the PTO effectively banned 2nd and subsequent continuations.

    3) Therefore, the 8/21/07 final rules relating to continuations are illegal, and are thereby rendered null and void.

    I see no credible ways to attack points 1 or 2 above.

    The PTO faces a similar issue on the claims limit.

  48. e#6k, questions 14 and 15 in the quiz cover restricted, non-elected claims refiled in divisionals which will be presumed to be patentably indistinct from the claims that were elected, even though the Examiner (pursuant to 35 USC 121) deemed the [non-elected] claims both “independent” and “distinct” – else, he would have had no statutory basis for the restriction.*

    The questions quote the exact rule sections.

    Question 26 covers the “procedural” (lol) penalty for not rebutting the presumption that the claims in the parent and divisional cases are patentably indistinct.

    *Perhaps you all should consider 35 USC 121 more carefully with regard to your new Markush Rule 146: there is no statutory basis that would allow the PTO to restrict claims that are directed to a “single invention” (even if the breadth of the claims covers multiple species). Of course, if you wanted to wait to consider it till after the lawsuit is filed, well be my guest. :-)

  49. “Nobody has yet to point out a substantive provision in the new rules. People have pointed to substantive effects, and numerous other alleged problems with the rules, but they’ve yet to show me why there is not good grounds for appeal nor why the original reason behind the judgement (injunction based on them being substantive) would be upheld. Face it, there isn’t any.”

    Do you really believe this PTO propaganda you are spewing?

    Consider two rules:

    A) Second and subsequent RCEs and continuations are banned

    B) Second and subsequent RCEs and continuations require a petition (which will be denied)

    Distinguishing rules A and B based on A being substantive and B being procedural appears to be the PTO party line. This is a classic case of “distinction without a difference”, and that fig leaf of a useless petition was properly ignored by the court in this case.

    If banning second and subsequent RCEs and continuations is “inconsistent with law”, which it is, then the PTO has no power to enact either rule A or rule B. No sensible legal system could possibly arrive at differing conclusions depending on whether the ban is formulated as in rule A or as in rule B.

  50. Here again RA, you’re the one making the statement that “example, presuming claims in divisional applications filed under 35 USC 121 to be patentably indistinct” is the correct wording used in the rules. I do not believe it to be. There is still a reason for filing div’s, and it is not “div’s stand or fall with the patentability of the parent”. What is said I do believe is quite different than what you are portraying. Please, since you no doubt know right where it is, show us the section that might cause you grief so that I may explain it to you so that you will no longer feel quite as badly.

    As to your concerns about the complexity, I concur, they are complex. Regarding your concern about there is no good reason I disagree. Applicants submitting nigh on infinite claims without good reason is more than a good reason. The Office is here to examine applications, we cannot do that properly if applicants refuse to ever let their application leave. In the end it all boils down to applicants not being willing to accept that they need to assume some responsibility for the grant of their right to exclude. Doing so in this day and age involves more than the old timey, “hur write up an application”, “we’ll figure out what the invention is later hur”. Sorry, we just don’t have time for that bs anymore. We’d love to shoot bs back to you all day and get paid for it, no question about it. Good job security there. Problem is, we’re not accomplishing our constitutional mandate (even by the most loose interpretations of the mandate, i.e. promoting small businesses, disclosure etc.) if we allow the line, through our procedures of examination, to extend around a “block” that’s bigger than the perimeter of the District. Currently, our procedures are rather lax on requirements. Try doing what people do in the PTO at the DMV, Dept. of Agriculture etc, it would take you 3 years to get a license, registration, etc. Ordinary PTO applicant at the DMV: “Oh, well what I meant by “truck” was a red truck, oh, what I meant by a red truck was “a red truck that is a ranger”, oh, what I meant by a red ranger was “red ford ranger”, oh, what I meant by a red ford ranger was “a 2005 red ford ranger”"(<<< RCE’s), “Oh, what I meant by “red ford ranger” was “white ford suv” (<<< divisional, species restriction after final rejection)” If you persisted in the levels of ridiculousness I sometimes see in any other agency they’d likely have you escorted out of the building. At some point, reasonable people at the agency kind of need to have you stop wasting their time and tell them what your business there really is. Only in the sport of kings do we find such levels of tolerance as are found in the PTO, and only in re the PTO (that I know of) do we see people screaming bloody murder over the agency merely trying to keep itself running halfway functionally. Seems like in other agencies people understand sometimes things must be done to keep the system afloat, maybe even temporary things, maybe small things, maybe drastic things, but things none the less.

    I see you JAOI, and you obviously read my post since RA is addressing me, name your date/time. If you don’t like starbucks, or consider them to be pricey, we can hit potbellies.

  51. Sorry, I don’t know enough about Cisco (except that I won’t buy Linksys) – but do watch the gasket pressure and be careful not to get yourself stuck in the same kind of hole that PTT burrowed himself into if you decide to educate us.

  52. Do you think Cisco and its now defunct anonymous Patent Troll Tracker blog and Microsoft are birds of a feather with similar agendas?

  53. JAOI(TM), I do not know who AIC is, but I have seen enough to understand the motivation of the patent reform crowd… and to be puzzled as to why any thinking individual would let companies such as Microsoft [which a) doesn't innovate except by accident and b) is not overly well-known for fair business dealings] guide “fair” patent policy in America. Why not let research universities guide it, or any federal research lab… or do we think those folks will try to milk the public more than Microsoft? (Research universities and federal research labs certainly give this country more innovation than Microsoft, and their inventors are the epitome of those who the founding fathers were trying to reward.)

  54. Dear real,

    With all due respect, I disagree to this limited extent: Anonymous International Cockroaches (guess whom) would find “good reason” for the PTO rule changes – anything to screw up the American patent system fits right in with their corporate greed-at-any-cost, kill the patent system agendas.

  55. “I believe you’re taking that out of context, in context that was “for the purpose of determining the number of claims in the application.” Not “for purposes of determining patentability” otherwise there would be no point to divisionals.”

    e#6k, “patentably” is an adverb, from patent-able-ly… meaning able to be patented… a.k.a. patented-ability… a.k.a. patentability. There isn’t one “patentably distinct” for claim counting and one for patentability… unless the claim counting concoction is an utter fiction.

    Irregardless (without-without-regard, or with regard) to your quiz comments, the first 10 questions are super-easy; hypotheticals regarding the rules begin at 11.

    If you do sit down with questions 11ff, which I encourage everyone at the PTO who is still trying to push these rules to do, you will see that the rules create messes left and right, and for no good reason.

  56. “example, presuming claims in divisional applications filed under 35 USC 121 to be patentably indistinct”

    I believe you’re taking that out of context, in context that was “for the purpose of determining the number of claims in the application.” Not “for purposes of determining patentability” otherwise there would be no point to divisionals. I’m telling you, most of the adverse response to the rules (most, not all) is that people don’t understand them very well.

    “Why don’t you take our quiz on the effects of the rules (with hypos starting at question 11). You seem smart to me – I’ll give you a gold star if you get a 60%. :-)”

    That quiz appears to be different than a quiz on the rules in that it encompasses much more. It’ll have to wait. If all questions are similar in difficulty to the first 10 I should make around an 80. Of course, so many questions relate to specific personel specific issues that I’m not privey to the score could go way down.

    JAOI- still flamin’ away I see. Good for you, keep in there slugger! Oh, and hey, why not up the stakes a bit, 60000 that I’m not a higher up in the pto. Lunch is on me, bring your 60000, starbucks behind USPTO, name date/time.

    Medicine- Hmmm, I guess you think it’s a great thing to have to write up 4 different rejections for the same “inventionlol”. Fine with me, become an examiner, start writting a 25 pager for every application and get back to me ok? Let me know how your production is after your first bi week. Less than 50%? You’re fired? Awww, too bad, so sad.

    Nobody has yet to point out a substantive provision in the new rules. People have pointed to substantive effects, and numerous other alleged problems with the rules, but they’ve yet to show me why there is not good grounds for appeal nor why the original reason behind the judgement (injunction based on them being substantive) would be upheld. Face it, there isn’t any.

    If you’ll excuse me I have to copy/paste the rejection from a nonfinal into a final and say “applicant’s arguments are not persuasive. Any inquiry concerning … ”

    Lol, jk.

  57. what we need now is “good movies”, “good songs”, “good designs”, “good trademarks”, good blah, yada, wtf!

    what is a “good patent”? how about a “good bureaucrat”? even better, a “good politician” … oooh, a “good lobbyist” … then everything would be “good” …

    and, of course, the pto is complaining … anytime the court rules against you it has to be an activist judge … since we have “good speech”

    don’t rock the “good” apple cart … that might be too schumpeter-ish for the “good” of the status quo …

    imagine no future “good” only the present …

    “imagine no possessions … i wonder if you can”

  58. Dudas isn’t the only one who thinks “Reject, reject, reject” is the way to go:

    The European Patent Office received more patent applications than ever before last year, but the number of grants that it made was down by very nearly 13%, so says a press release issued by the office and now available on the front page of its website.
    Commenting on the decline, EPO president Alison Brimelow states: “The purpose of patents is to support the generation of economic benefits for society. However, large patent numbers are not necessarily indicative of growing R&D activity … What we therefore need is not more patents, but more good patents.” What’s more, she goes on to say: “The EPO aims to make sure that the patents it grants are relevant. The lower number of patents published in 2007 reflects this priority and is a step in the right direction. Putting the emphasis on quality over quantity in the granting of European patents is a key strategy for safeguarding the proper functioning of the European patent system. At the same time, it allows the EPO to continue to set the global benchmark in patenting.”
    Something to bear in mind when dissecting this information, however, is that during 2006 the number of patents granted by the EPO was over 62,000 a jump of close to 18% on the 2005 figure, when 53,300 patents were granted. By contrast, the number of applications in 2006 was just 5% higher than in 2005.

  59. ******

    (b) Effective Date- The amendment made by subsection (a) shall apply to any civil or criminal action for copyright infringement pending or filed before or after the date of enactment of this Act.

    ******

  60. JAOI(TM), not to worry – American justice can be had without confession. I’ll contact Senators Sessions and Reid right away to propose a change to the copyright laws. Having done this once before, I have reason to believe we shall be succe$$ful.

    ******

    SEC. 14. LIMITATION ON DAMAGES AND OTHER REMEDIES WITH RESPECT TO COPYRIGHTS FOR MATH BOOKS USED BY INVENTORS, INCLUDING ORDINARY INVENTORS.

    (a) Limitation- Section 302 of title 17, United States Code, is amended by adding at the end the following:

    (f) With respect to the reproduction by inventors, including ordinary inventors, of a math book that constitutes an infringement under subsection (a) of section 501, the provisions of sections 502, 503, 504, and 505 shall not apply against the inventor with respect to such a math book.

    ******

    There – see, justice still prevail$ (we just change its definition), and America has not become sick at the heart!

    (Oh, are we ever going to reap what we have sown.)

  61. Dear Jaoch(TM),

    Yes yes, I confess; confession is good for the heart—

    To whom should I turn myself in?, I do it right away, and then I can sit in the pokey and blog all day long.

    I don’t have bail money— will somebody bail me out?

    Anybody?, anybody?, Bueller?

  62. The USPTO has hired a flood of new examiners recently (I guess this was their plan B). And lo and behold, I am getting a bunch of first actions back now on my oldest cases. I don’t think I have any more unexamined cases more than 2.5 years old now. Imagine that Mr. Doll– new examiners=reduced pendency. Of course new examiners are untrained and never want to allow anything, but at least we still have RCE’s now so we can deal.

    Funny how instead of the common sense approach, the USPTO originally chose to waste 10 million dollars on some ludicrous and indecipherable rules which would have had little effect on pendency anyway.

    Keep hiring, USPTO, and next year I probably wont have any unexamined cases more than 2 years old. Consider opening a regional satellite office in Bethesda to attract examiners who live in the Maryland/Baltimore area.

  63. “I found the dusty book (copied it page by page since it wasn’t a lending library and the book was unavailable at the 42nd Street Library).”

    You what?!?!

    JAOI, never complain about anything, ever again. Don’t complain about big companies lacking respect for patents and patent law, or trying to subordinate IP laws to profit and convenience, for you are just as guilty.

  64. Dear Mr. rat,

    I had another thought regarding your sound advice about prior art searches being a good idea:

    I recall going to the Math Building at Columbia to look for an out-of-print book a math consultant recommended regarding an earlier aspect of our work (my patent attorney had retained the consultant). I found the dusty book (copied it page by page since it wasn’t a lending library and the book was unavailable at the 42nd Street Library), which was Greek to me, and mostly unintelligibly to my co-inventor.

    However, even so, I’ve found that by reading the text between the formidable formulae, I can sometimes catch the drift, and at times that has proven sufficient for my purposes.

    The lesson being, don’t be put off searching even if you are not a phosita.

  65. I think poor Rat was backed into a hole, and what were hearing is more convulsion than logic. Yes, Microsoft or others could pay for an independent-invention “study” to “back up” the hypothesis resonated by Rat… but I suspect the anti-patent powers have little room for wiggling against the Paris Convention, even if they hold the Constitution and the wisdom of the Founding Fathers in disregard in comparison to their own, or their own interests, in order to maximize current profits.

    And we’d be the only country in the world without patents (proving how dum ROW is, eh Rat? Just kidding, Max.)

    Viva $$$!!!

  66. –frequency of multiple independent discoveries is way overstated– I agree. Derivation is far more common

  67. “There is much to be said for doing a prior art search.”
    Not much of a help when you don’t know what the invention is. Moreover, once spending 1 year to come up with a solution, the cost of preparing/filing the patent application was probably the least of their concerns. Also, prior art searches do not help if the prior art was filed within 18 months of the search.

    “The frequency of independent discovery is one of the reasons I am sceptical about the the usefulness of the patent system.”
    Perhaps the reason for multiple independent discoveries is that the patent system provides the incentive for many people to invent. Such a simple concept, yet the anti-patent crowd continually ignores it. They think the frequency of invention will remain constant if the patent system is weakened/abolished. Communism was a failed experiment, and I doubt it will work for inventions.

    BTW: The frequency of multiple independent discoveries is way overstated. All one has to do is look at how infrequently interferences are declared.

  68. Dear Mr. rat,

    I thoroughly agree with you and I begin to run searches almost as soon as I get serious about most ideas. (BTW, for many ideas, google is more broadly telling than uspto.gov searches.)

    However, sometimes an idea is so powerful I prefer to write about it no matter what I think I might find, e.g., an energy invention: I had an energy-generation idea not too long ago, and I wrote about it even though my phenomenal prosecution patent attorney was confident prior to any searching that it would probably be old hat. By writing about it, however, I discover some nuances that might still be valuable—I haven’t abandoned the idea, but more pressing staying-alive matters often interfere with pressing intellectual pursuits.

    The lesson to be learned in this regard is that, nothing is as powerful as putting pen to paper – you never know what else will be produced, what lies lurking, waiting to jump out at you on the next sheet. Most superficial ideas yield much more after pen-to-paper in depth thinking. Schools such as Bard High School Early College, BHSEC, in Manhattan insist students write every day in almost every subject— I highly recommend such schools.

    In regard to my “invention that required about a year of continuous up-till-dawn struggle and research” only to discover it had already been invented: there was no way to prior art search it.

    That invention was in the coding error detection field, and neither my co-inventor, an amateur mathematician (which he had taught me described a serious by not professional mathematician) nor I, a more-than-capable logician but with no math skills beyond a good, basic high school education, had any idea of what we had, of if we had anything, until we made the break through.

    We had early-on working together invented a power mathematical research tool which we successfully used to analyze a few sticky questions in an ongoing fifteen-year project that led from one logic/mathematical challenge to another. Using our analytical tool, we proved that a potentially powerful and concise error detection & correction algorithm I postulated was so close to perfect, but no so, it made us nuts for a while. He finally made the mathematical breakthrough which to this day I don’t fully comprehend how he did it – he said it related to some kind of hyperbolic curve! Sounded silly to me, but he found the essentially simple yet perfect algorithm so close to what I initially postulated is was uncanny.

    Only some time later did we find out it was discovered decades earlier, and that it was a seriously important invention back then. Despite the prior invention, the journey we took was nonetheless exhilarating and more than worthwhile to both of us.

    The point being that neither of us had the prerequisite education to begin to know what to search, nor could we have afforded to hire the talent we could have consulted with even if we had known what to ask.

    I understand in mathematics some of the great break-through have been made by pure novices not unlike myself. That has always fascinated me, how one can invent in a field in which he is not a phosita, a person having ordinary skill in the art, nor does it affect patentability how an invention is made or comes about (35 USC 103 says Patentability shall not be negatived by the manner in which the invention was made).

    I expect you can understand why I do not share your skeptism “about the the usefulness of the patent system.”

  69. “an invention that required about a year of continuous up-till-dawn struggle and research by me and my co-inventor’s to ultimately make the break-through, only to discover it have already been invented.”

    There is much to be said for doing a prior art search.

    The frequency of independent discovery is one of the reasons I am sceptical about the the usefulness of the patent system.

  70. I saw John Whelan speak at a BADC meeting in April or May of 2006 and the legality of the rules was questioned and he said, “We’ve thought about that, and we think we have a 50-50 chance, so go ahead and take your best shot.” (That’s slightly paraphrased, but not much.)

    Thank you to Dr. Tafas and GSK for a great shot.

  71. Amen 007…I vividly remember the first speech given by Toupin to a committee meeting at the Spring 2006 AIPLA meeting in Chicago. He said, “I cannot envision a single circumstance where such a petition (permitting a 3rd cont. or 2nd RCE) would ever be granted,” referring of course to the procedural fig leaf- there was quite literally dead silence in a room filled with over 100 attorneys at this unabashedly definitive statement. Toupin also stated he didn’t care if there were 5 million negative comments (instead of about 500), stating- “these rules are going into effect whether you like it or not.”

    Funny how their own words always come back to haunt arrogant wannabes.

  72. Federally Curious,

    It looks like both complaints (Tafas and GSK) alleged jurisdiction in part under 1338. So it looks like it goes to the Fed Cir.

  73. “If Judge Moore had actually participated in the drafting of the rules, if the PTO had sought her advice at the time,”

    I guess we’ll never know if they did, in view of their claim to privilege.

  74. It’s remarkable that the proposition that the claims and continuation rules are merely procedural is still being defended.

    The RCE and continuation rules “merely” set forth circumstances under which these submissions would be accepted. However, the net effect was a hard ban.

    Similarly, the claims rules “merely” set forth additional procedural requirements if the claim limit was exceeded. However, the net effect was a hard limit.

    PTO management was well aware that these rule changes amounted to hard bans and limits.

    Their strategy makes perfect sense — try to get these substantive rule changes made by providing a procedural fig leaf. It it works in court, great. If it doesn’t, go whining to Congress for more authority.

    The PTO’s official position that these rule changes are merely procedural is simply a fairy tale, and it was most gratifying to see the rules shot down in court for precisely that reason.

  75. Dear Mr. anonymous et al.,

    I would like to ask a follow up question, below, stemming from these thoughts which I wrote for my family’s Christmas card:

    I believe in the collective sanctity of humanity. Together, we comprise power greater than one. Sanctity is achieved through principled Biblical behavior and by helping one another.

    Here’s the question:
    What could be more rewarding than having a purpose in life such as creating “new and useful” systems, methods and apparatus for others to benefit from?

    I hope that satisfactorily answers your question.

  76. Dear Mr. curious,

    Re:
    “How exactly did the Patent Troll Tracker screw you over if you are just a small independent inventor? Maybe I am missing something here…”

    My patent portfolio was worth more before Cisco’s highly problematic anti-patent activities. And my pending patents will also suffer. We are talking serious money damages. Why do you ask for clarification? Do you want to initiate a class action?

    * * * * *

    Dear Mr. anonymous,

    Thank you for asking,
    “what have you invented?”

    However, please allow me to answer with a question:

    If I may be so bold as to assume you are an attorney, and I then ask you, who do you represent?, can you think of fair reasons a professional such as yourself would be reluctant to answer?

    I, an inventor by profession for some forty years, also have fair reasons (different but related reasons) why I am reluctant to answer you question directly. I’d like very much to answer—what inventor wouldn’t like to disclose his inventions— and maybe someday I will have the unfettered prerogative to do so.

    That said, I am happy to address your question this way: over my 40 year career I probably have something over fifty patentable inventions disclosed in my published patent portfolio; I’ll characterize two:

    1) a super simple invention that took me some 20 years of specifically trying to invent, and which finally hit me in a flash in a dream – an invention that went undiscovered for centuries; and

    2) an invention that required about a year of continuous up-till-dawn struggle and research by me and my co-inventor’s to ultimately make the break-through, only to discover it have already been invented. It was nonetheless a more-than worthwhile journey.

    I’d bet most inventors, like myself, don’t measure success in dollars; we measure our success in part by accomplishments and by contributions we make – the intellectual legacy we leave our progeny et al.

  77. Jeez, I love the use in the Moore article of

    “continuations can “wear down” an Examiner and force him/her to issue a broad patent claim even though none is deserved.”

    Her ignorance of the system cannot be better shown.

    Examiners LOVE continuations. Love EM. Almost as much as RCEs.

    File that Con, art search already done, if the claims are narrower, DP rejection, 1 count, get the TD back in the first response, 2 counts.

    Sweet.

    I said it when she was first appointed – she’s dangerous because she’s got just enough knowledge to sound convincing in her “expertise.”

  78. @JAIO: How exactly did the Patent Troll Tracker screw you over if you are just a small independent inventor? Maybe I am missing something here…

  79. Dear johng,

    Re:
    “It’s good to see someone else that understands the dirty work that must be done, now.”

    You got that right.
    I hope I speak for the majority when I say, Patently-O has a true-blue Hero!:

    Let’s raise a toast–
    three cheers for our Hero, A VOICE FROM THE FOREST

  80. Dear gauntlet,

    Re:
    “Take a look at stupidfilter.org. Close enough?”

    Thanks for the heads-up: As Larry David might say: pretty, close, pretty, pretty close.

    I like this from stupidfilter.org: “The solution we’re creating is simple: an open-source filter software that can detect rampant stupidity in written English.”

  81. Thank you “A VOICE FROM THE FOREST | Apr 03, 2008 at 09:28 AM” It’s good to see someone else that understands the dirty work that must be done, now.

  82. Dear Patent Attorney,

    Re:
    “Moore is going to rip into patent law like a buzzsaw into wood. She will do anything—is my guess–to try to get a Supreme court appointment from the Republicans.”

    That’s what I was worried about. I hope & pray you are proven to be wrong. Judge Moore is young, beautiful and brilliant – why would she want to sell out We the American People when she grows up, and away from the sickly influence of elderly, wrong-minded mentors.

    * * * * *

    Dear A VOICE FROM THE FOREST et al.

    Regarding your spectacular comment on this link:
    link to patentlyo.com
    comprising:
    “So I say to you my fellow citizens, be careful about letting the Constitution of the United States of America to be undermined by the necessities of business and economics. There are greater pursuits than profit.”
    Posted by: A VOICE FROM THE FOREST | Apr 02, 2008 at 11:01 AM

    Your comment added fuel to my fire; my passionate patriotic patent philosophy is this:

    I consider the patent community in America to be a perfect microcosm in which to explore the results of International Big Organized Business IBOB hijacking our three branches of government.

    By way of example, consider this hijacking embodiment:
    What CISCO Systems, Inc. did was the tip of the iceberg. If We the People can hold Cisco fully accountable for their actions to the tune of revoking their license to practice, in one fell swoop, We the American People will have accomplished what needs to be done for openers. Ooops, maybe one two too many too Early.

    But the concept is now out of the bag. My patent portfolio, which took me most of my life to build, for example, has been cut to shreds, in contributory part by Cisco. I am among who knows, at this point anyway, how many myriad thousands are in my class (as in action) of inventors? And my pending patents won’t (A) issue at all, as they would have not too long ago [as the preponderance of the evidence indicates], and (B) if they do issue, they won’t be nearly as valuable. Why?; in my opinion in part because Cisco contributed to the unlawful and unscrupulous bad mouthing of a particular class of inventors, and it accomplished its mission I’ll bet even beyond its callously premeditated expectations.

    In all of American history, when was any inventor thought of as a horrid creature? People maybe thought of inventors as a bit daft, but in sort of a good way. Lemelson gamed the system, yes, and he got away with it for a while, until some of America’s finest patent attorneys killed the Lemelson scam. And a handful of others maybe got more than reasonable, but, all told, untold thousands of self-employed inventors got screwed by IBOB — where is the balance?

    It is my contention that the now-defunct blasphemous Cisco Patent Troll Tracker blog unduly, unfairly and unlawfully contributed to the ongoing turmoil facing the American patent system, and Cisco should atone for its sins: by way of punitive damages, no more license to practice anything in America, and divvy up its worth to the myriad thousands of American and foreign self-employed and otherwise employed patentees who have suffered damages. Well, even I think it may be a bit ambitious on my part to advance this idea, but an example should be made of Cisco to rein in IBOB and put its constituents in it their proper place, serving We the People and not just feathering their greedy executives’ beds, executives who raid the corporate coffers before the shareholder get theirs.

    What’s Cisco contributed to the damage of the American patent system (and my patent portfolio) is a microcosm in which We the American People can START TO TAKE BACK OUR GOVERNMENT AND reconstitute The United States Constitution.

    There, now I said it, and I feel better, much better, for expressing these, my fieriest opinions.

    And here is the irony of it all: By no stretch of anyone’s imagination am I, Jaoi, a patent troll— I’m Just an innocent bystander who got screwed nonetheless by Cisco et al’s. shenanigans!

    This is Jaoi(TM) and I stand by this my passionate patriotic patent microcosm message.

  83. Granting the authority to create rules as desired by Pto is a blank check for more inventor frauds and constrictions of incentives to create stieffling human advancement depending on who the person deciding is.Anti-inventor legislation already proposed is already sufficient to to stop any sembalence of fairness.I have an idea make the worlds only inventor the person to determine the new rules!

  84. Granting the authority to create rules as desired by Pto is a blank check for more inventor frauds and constrictions of incentives to create stieffling human advancement depending on who the person deciding is.Anti-inventor legislation already proposed is already sufficient to to stop any sembalence of fairness.I have an idea make the worlds only inventor the person to determine the new rules!

  85. In my humble opinion, Moore has zero chance at a Supreme Court appointment. Patent law is not significant enough to get her a spot and she has no record on the BIG constitutional issues that would get her past the conservative talk show hosts (remember the last potential appointment?)who would worry that she doesn’t have the “right” stuff. Where are her opinions on the death penalty, abortion, etc. that would proove she wouldn’t be the next Souter? The CAFC just doesn’t provide the caseload to groom a Supreme.

  86. Posted by: Malcolm Mooney | Apr 03, 2008 at 12:13 AM
    “I think many people thought (and still do think) that some changes to the rules would help stop certain abuses. But my gob only the most pessimistic among us realized how poorly prepared the PTO was to tackle such an assignment.”

    You can count me among that minority.

    Titanic Operator: Hey, I see an Iceberg.
    PTO Upper Management: Just keep going. We’ll just limit the size of the iceberg.

  87. I think that this all plays into Dudas’s hand. He wants substantive rule making as part of the reform package and wants a card to play for why he hasn’t “fixed” the PTO. He can just say, look Congress, you want me to fix the problems, but you haven’t given me the authority to do so.

    Do any of you really think this case means anything to Congress? You are lost in your own myoptic vision of what matters. Dudas is laughing at all of your comments. He hasn’t been spanked by the court. The court has issued him a ruling saying look Congress if you want the problems fixed give me the authority to do so. Dudas is going to wave this opinion in Congress’s face. I would guess that few of you have ever had much supervisory authority outside of law.

    What you guys seem to not realize is that Bush/Big Corp./Shill Dudas/Shill Moore have us in a pretty good position. The Congress is calling for reform because of the pendancy “problem” and the number of lawsuits “problem.” And the Supreme court believes the Hollywood version of what an invention is. Roberts is a shill for big corp and doesn’t care about case law unless it suits his needs.

    The big corporation lobbyist are killing us and all we have is old case law and Rader (and probably Newman and couple of other old hands) on our side.

    Without someone with the appeal like Rich we are going down, unless Bush and his ilk are replaced. My guess is that McCain will be more of the same. Romney is the only politician that I have heard that seems to understand patents. Probably because he has worked with start-ups.

    Moore is going to rip into patent law like a buzzsaw into wood. She will do anything—is my guess–to try to get a Supreme court appointment from the Republicans.

  88. Ok let me get this right. Doll drags his feet about providing to the examiner’s what they had rightfully wrought, a pay raise and then the management of the USPTO is wasting money appealing what is clearly the correct decision. Look if we don’t hold the management of the USPTO personally and professionally liable, we might be faced with this again. The political and professional carreers of these people must be ended or at least placed at risk. Mark my words we WILL pay for our complancey in the future.

  89. Dear Mr. Patent Medicine,

    I hope I’m not cast as the proverbial “pot calling the kettle black” (:p) but you will find that the annoyance level reading Patently-O drops to near nil when you do exactly what you postulated: “I can now skip every post you [6k] write in the future. Thank you.”

    You may be interested to note the wager I offered above:
    BTW, I bet anybody $100 that 6k is actually a high (meant in both senses) PTO mucky-muck asshole.

    Also, in this comment, I posed a possible invention:
    link to patentlyo.com
    “How about this for a software invention: A type of ‘spam’ filter but instead of spam, it searched for spelling and or grammar errors, and upon counting say, a dozen in a given submission, or a number which is determined in part or solely by the length (e.g., word count) of the submitted comment, to automatically, w/o human intervention, issue a ‘reject’ to the would-be poster. (If I decide to file an application, I understand I have a year to do so and claim priority to this comment posted today, but only in America, right?)
    (Or would this invention of mine be considered an unacceptable “profiling” scheme against those who are mentally-challenged ?) (o^õ)”

    If by chance this invention of mine patently panned out, I would have the better part of a year to file it. Would anybody care to offer this ordinary inventor free advice regarding its potential patentability?, and or its possible utility?

    過 好 一 天

    只 是 一 個 普 通 的 發 明(技 術 備 忘 錄)

  90. Anon E. Mouse, thanks for catching the mistake – I was tired and forgot that this was a VA decision, not a DC decision. Point is the same, though – I’m not sure that this appeal goes to the CAFC. Which would make moot the question of Moore recusing herself.

    And to the poster who said Moore’s got her eye on the Supremes: in 25+ years of the CAFC, no one’s ever gone from the CAFC to the SCOTUS. (Haven’t checked if anyone went from the CCPA to SCOTUS.)

  91. Please pardon jumping around a bit, but on the other “Tafas v. Dudas” thread, “PTO’s Proposed Limitations on Continuations and Claims are Invalid” thread, Mr. Patent Attorney asks:

    “And, has anyone else thought that Judge Moore probably has her sights set on the Supreme Court? Her actions are all probably geared to trying to nosey up to the Republican party.
    Posted by: Patent Attorney | Apr 03, 2008 at 07:06 AM “

    Above, my alter ego, “just curious” (although I recall that there may be more than one “just curious” commenters) posted this question to Anon E. Mouse et al., which question takes on new meaning in light of Mr. Patent Attorney’s question/concern (about Judge Moore maybe headed for the Supreme Court):

    “And I pose this question to you and others who may have an opinion:
    Do you think Judge Moore is (A) patent-friendly, (B) patent-neutral or (C) patent-averse?”

    Mr. Anon E. Mouse’s comment above about Judge Moore,
    link to patentlyo.com

    was rather in-depth, serious and scholarly; however, for some reason I can’t quite put my finger on, I don’t necessarily agree with Mr. Mouse’s import— my “jury” on this is still out.

    One of my jumping around philosophies is this:
    A strong American patent system is good for We the People in the US of America, but not what the big organized international cartels and international members thereof want (you know who I mean, e.g., in particular, I won’t name names but its initials are C.i.s.c.o.), and therefore We the People would be best served by patent-friendly Justices favoring a strong American patent system, and disfavoring globalizing, unitizing, pasteurizing, neuterizing “harmonization.”

  92. I’m not sure the definition of a “substantive” rule is overbroad. Judge Cacheris cited to the U.S. Supreme Court, Federal Circuit, and D.C. Circuit as to that definition, i.e. covering all of his bases.

    The main argument I see here is “then all procedural rules are substantive because they affect a right and/or obligation.” Let’s not go to extremes. Any rule will have some substance and some procedure. The question is how you label it. Here, the Continuation Rules did not say, “here’s how we’re going to implement a Congressionally passed law.” They were a means of making the law without going through Congress. That’s what made them substantive rather than procedural.

    E6K’s example of abandonment is a bad one b/c the rules there implement 35 USC 133, which says if you don’t prosecute in six months, the application is abandoned.

  93. “Anyway I’ve gotta finish up this dang amendment. It’s so hard to pick a piece of art when you have 4 pieces of art all showing some aspects past the ind. but none showing all of them. It’s like, write up the 102 on the ind. 4 times and then hit each dep as they come. So rtarded.”

    I think that about sums up everything I need to know about you. I can now skip every post you write in the future. Thank you.

  94. Federally Curious:

    Good point! We’re so used to everything going to the Fed. Cir., we forgot to read the statutes….

    Why not 4th Cir? Which statute would give DC Cir jurisdiction?

  95. Here is Mr. examiner’s full comment:

    “@metoo: You’re remarkably sensitive to insults for someone who posts on this blog. From what I’ve seen, a disproportionate number of posters here are assholes and/or raving egomaniacs; excuse me if I expect the population here to be a bit thick-skinned. But honestly, if I offended you, I’m sorry.
    Posted by: examiner | Apr 03, 2008 at 01:40 AM “

    BTW:
    I am thinking of giving up inventing for another similar profession, stand-up philosopher, as defined in “History of the World: Part I (1981)”:

    Dole Office Clerk: Occupation?
    Comicus: Stand-up philosopher.
    Dole Office Clerk: What?
    Comicus: Stand-up philosopher. I coalesce the vapors of human existence into a viable and meaningful comprehension.
    Dole Office Clerk: Oh, a *bullsh-t* artist!
    Comicus: Hmmmmmm…
    Dole Office Clerk: Did you bullsh-t last week?
    Comicus: No.
    Dole Office Clerk: Did you try to bullsh-t last week?
    Comicus: Yes!

  96. Dear Mr. Malcolm Mooney,

    I admire your post, and the improvement in your comments is remarkable, an inspiration to us all. No really, I do; no need to wait for the other shoe to fall ’cause there is no other shoe, at least not this time— it is a great post.

    I do, however, miss some (about 50%) of your humor and its unique style/presentation. Truth is we all need a good laugh now and again, especially America’s patent attorneys who tend to be too serious too much of the time. Laughing is good for one’s mental and physical health.

    BTW, I bet anybody $100 that 6k is actually a high (meant in both senses) PTO mucky-muck asshole.

    Re: Mr. examiner: On another thread, a real examiner, named “examiner,” was able say “a disproportionate number of posters here are assholes” (and not be blocked). Bravo Mr. examiner. Your comment was exemplary; you are a big man in my book. However, I disagree; the number of assholes here is aptly proportionate :p.

    Regarding your thought that the “disproportionate number of posters here are … raving egomaniacs” I have to say, you got that right. If any of you swellheads got a problem with that you can line up and kiss my patootie.

  97. “They are that way by design, the PTO took specific care to craft them in just such a manner, for the all but express purpose of making them not substantive.”

    e#6k, you’re kidding, right? The rules were so sloppily crafted as to their effects (for example, presuming claims in divisional applications filed under 35 USC 121 to be patentably indistinct) it wasn’t even funny.

    Why don’t you take our quiz on the effects of the rules (with hypos starting at question 11). You seem smart to me – I’ll give you a gold star if you get a 60%. :-)

    link to nipra.org

  98. The problem is that the rules as they were presented create certain undefined conditions within a family such as when a parent is abandoned or issues. Its as if an entry level systems analyst, knowing nothing about patent practice, sat down and tried to “design” a solution. Probably one of those snotty 22 year old MBAs with nothing but a sense of entitlement going for them.

  99. The PTO had no choice, but appeal. Failure to appeal would have prejudiced the PTO’s arguments in a likely Court challenge of the IDS rules and Appeals rules and would have made some Congressional staffers take a 2nd look at some of the ill-conceived and embarrassing provisions currently included in HR1908 and SR1145. A loss on appeal a year from now is far better than a concession now is probably what the PTO leadership thinking was.

  100. Does this appeal even go to the CAFC? The questions involved here are admin law questions, not unique to patent law (except that the (non)-enabling statute is the patent statute). Why wouldn’t this appeal go to the DC Circuit?

  101. I’ll give you “incomprehensible” MM, but arbitrary? Hmm, I’m going to have to disagree with you there. They’re not arbitrary as you’re likely trying to imply they are. As to setting the limits at a few RCE’s and 25 claims, you’re right, they’re arbitrary in that respect, arbitrary in their generosity. I.e. they were so generous they decided to give you a very generous buffer for f ups, and filing large numbers of claims. You’re not “entitled” to a dmn thing out of this system unless you can comply with the procedures. You know this.

    “But the reality is that the rules were appallingly poorly thought out.” I’ll give you that too, but they still did it as best they could, the whole matter is very complicated if you’re going to build in generosity. I won’t say they were the best for the job, but they did the best they could. Could it be done better? Very likely. Do we live in a perfect world? No? Hmmm.

    Anyway I’ve gotta finish up this dang amendment. It’s so hard to pick a piece of art when you have 4 pieces of art all showing some aspects past the ind. but none showing all of them. It’s like, write up the 102 on the ind. 4 times and then hit each dep as they come. So rtarded.

    Oh, and hey, come to think of it, nice strawman, good thing I battled it/chased the red herring. Address the issue please, was the ruling of them being substantive correct or incorrect?

  102. Ok Doc, since there are so many numerous problems that make the rules substantive, please, point me to even one place that is substantive in nature, that makes the rule a per se substantive rule, it only becomes substantive as a by product of non-compliance with the procedure, or inability to comply with the procedure. This is the same as any other rule we have on the books as far as I’m aware. For example, if you fail to reply completely, you have 1 month to do so, then it’s abandoned, I’m yet to hear qqing about this, though it is rumored if I lay this rule down on an applicant they will qq. I’m nearly 100% certain you cannot point me to a section in the rules that is actually substantive in nature (I haven’t seen any parts myself, and I’m not too bad at reading). It would be instructive for all the readers of the blog to see the specific passages that are substantive.

    numerous problems in a rule /= substantive rule. Numerous problems with substantive side effects /= substantive rule.

  103. “the PTO took specific care to craft them in just such a manner”

    The rules were flipping arbitrary and incomprehensible, ex6k. If the rules were actually reasonable and drafted so that they made sense and gave practitioners some assurance that Examiners would actually be able to make sense of the rules themselves, we might not be having this discussion right now.

    But the reality is that the rules were appallingly poorly thought out. Essentially the PTO just gave the middle finger to the entire world and defended its actions with vapid appeals to the emotions of people who didn’t understand what was at stake. Professionals saw right through it. What’s even more difficult to believe is that prior to the “final rules” there were “proposed rules” that were, to be put it bluntly, i*diotic and/or insane.

    I think many people thought (and still do think) that some changes to the rules would help stop certain abuses. But my gob only the most pessimistic among us realized how poorly prepared the PTO was to tackle such an assignment.

  104. “Of course they “may” but they’re generally not so lazy as that, nor should they be.”

    e#6k – I think the point is that there are other problems (vagueness, faulty notice-and-comment outgrowth rulemaking, exceeding Chevron deference, etc.) with the rules. The CAFC would have to jump all these hurdles to overrule Cacheris.

  105. e#6k:

    Patent practitioners who actually studied the new rules last fall detected numerous problems (which the Patent Office in effect admitted to with its October 10, 2007 clarification). Therefore, I would say that the rules were not so “craftily” worded. More importantly, Judge Cacheris would (and did) agree.

  106. Precisely my point Gwen, some people on here, and apparently in the world at large don’t seem to understand that, in context, the decision that handed down the “affect individual rights and obligations” quote was referring to any rule that specifically, within the rule itself, countermanded a “right or obligation” already legislatively codified (presumably). I.e. say, making a rule that says simply “Applicants may not obtain patents”, or even simply “Applicants may not request further examination”. This is a far cry from the very craftily worded new rules. The people will come around after the appeal sets it all out.

    We have a lot of rules that prempt “shall be granted a patent” in the legislated code based on how the procedure must be carried out, and they are procedural but they have very real substantive side effects if you fail to comply with the procedure. The District is in error in this case unfortunately.

  107. I don’t see people up in arms about rule 1.111 telling you what you must do to submit a complete reply or else have your application abandoned. I’m not sure if I see why someone thinks that placing a requirement on what you must do to file an RCE would be so far removed from this. Or, for that matter, many of the other rules. Apparently they’re all substantive and we had no right to implement them. You guys should totally challenge them.

  108. “The CAFC may affirm the decision of the Dist. Ct. under any rationale supported by the record. Thus, even if the CAFC finds something in the rules to be merely “procedural,” all of GSKTafas’s alternative arguments must still be disposed of as well. Does not look good for USPTO.”

    Of course they “may” but they’re generally not so lazy as that, nor should they be. I would say they will likely attempt what Cybertech states they will try to do. Problem with that though is that in so doing they’ll overrule the district court because frankly, the rules, though having substantive side effects are per se procedural in nature, and there is little controversy over this that I’m aware of, and if you can point me to any portion in the rules that are not specifically related only to procedure then I will be much obliged. They are that way by design, the PTO took specific care to craft them in just such a manner, for the all but express purpose of making them not substantive. The District court read “procedural rules that have substantive side effects” into what constitutes “substantive rules” it’s as simple as that. Funny how many lawyers ha te it when a result oriented jugement comes down on their side, but they fail to see one as being such when it’s in their favor.

  109. “Note to self: Always cite to material written by any and all judges that I don’t want hearing my case. This will cause automatic recusal.”

    Note to AC: Learning to read might be a better use of your time.

  110. e#6k-

    The CAFC may affirm the decision of the Dist. Ct. under any rationale supported by the record. Thus, even if the CAFC finds something in the rules to be merely “procedural,” all of GSKTafas’s alternative arguments must still be disposed of as well. Does not look good for USPTO.

  111. Overbreath is not necessarily reversible error.. for judicial economy reasons alone, my bet is that if appealed, the CAFC will affirm the decision and attempt to more clearly define in dicta what is substantive law in light of the USPTO’s authority as granted by Congress. In this respect, the District Court was correct in stating that the USPTO was not granted the authority to change the status quo for filing as provided by statute.

  112. “For example, if you asked 100 totally unbiased judges off the street to opine on an on-the-fence obviousness-issue, in theory you’d statistically get a 50/50 result.”

    Trick question – you will never find 100 unbiased judges. ;-)

    Actually, if the judge has any interest in the subject or any experience trying cases in the area, you will not find, nor should you find, an unbiased judge.

    If this were the first case for a judge with very little IP experience (including book-learnin’ here) the judge may be unbiased.

  113. Everyone seems to be ignoring the 800 lbs gorilla in the room when they spout off about how meritless any appeal might be. Dennis spelled it out for you, the weak spot in the reasoning for the case was an overbroad definition of substantive that renders pretty much any agency requirement for applicants/patrons/etc. to do ANYTHING is now substantive rather than merely procedural. There is grounds for an appeal, it is far from rock solid, but there is grounds. That definition of substantive is very open to a case portraying it as clearly in error, because frankly, it is. If the judge had gotten a bit more in depth as to what he felt in the rules is making them substantive than he did and stated it very clearly for the record then maybe there would be no grounds. As it is, he left it very broadly stated and indeed overbroadly stated.

  114. So what are the chances on appeal for the PTO? Seems slim to me. The right outcome seemed apparent even before yesterday’s decision, which seems very solid.

  115. “PTO General Counsel James Toupin has reportedly indicated that the PTO will appeal the ruling to the Court of Appeals for the Federal Circuit (CAFC).”

    I guess this is one way to maintain job security… file an appeal. Admittedly I’m biased, but I don’t see a basis for reversible error. In the current political climate, I would think the PTO would not to appear to be wasting public money on a meritless suit.

  116. Anon E. Mouse, I refer you to my comment above:
    link to patentlyo.com

    And I pose this question to you and others who may have an opinion:
    Do you think Judge Moore is (A) patent-friendly, (B) patent-neutral or (C) patent-averse?

  117. You guys/gals calling for J. Moore’s recusal are a laughable lot.

    (a) Have you even read the Lemley/Moore article cited? Quote: “Limiting the number of continuations that can be filed may require an act of Congress.” (citing In re Henriksen).

    The article continues “The Court of Customs and Patent Appeals, the Federal Circuit’s predecessor court, struck down the PTO regulation, concluding that s120 by its terms did not impose any limit on the number of continuations and that whether there should be such limits ‘is for Congress to decide.’”

    The paper concludes: “The world would probably be a better place if continuation applications were abolished. Recognizing, however, that the abuse of continuation practice is not as pervasive as some might think, we propose a number of means by which Congress and the courts could strengthen existing rules designed to limit their abuse while preserving the practice.”

    Note the absence of “USPTO” in that last paragraph.

    Here, the issue in front of the court isn’t whether limiting claims and continuations is a good idea, it is whether the PTO has the power to do it. Seems to me that the Moore/Lemley article correctly acknowledges the state of the law (as did the district court).

    (b) Many judges hear cases where the briefs cite *cases* written by the judge. That’s a much better insight to the biases of a judge with respect to the law than an academic paper exploring theoretical solutions.

    I certainly don’t agree with the Lemley/Moore article on what constitutes an abusive continuation, but J. Moore has not demonstrated the slightest inclination that the PTO has the power to implement the proposed continuation (and claims) rules.

    The Tafas case is an Admin Law case, not a Patent Law case. It has *nothing* to do with what is the best patent policy conceivable (even from an ivory tower), and everything to do with the extent of the PTO’s rulemaking authority. There’s no reason J. Moore can’t be on the panel that hears this case….and no reason to suspect that she’d do anything other than apply the law as it stands.

  118. “the version passed by the House (H.1908) includes additional regulatory authority.”

    As I recall the House verion of substantive rule making included a 60 day period for Congressional review. Further, I believe the judge also suggested that the PTO didn’t properly implement the procedures for substantive rule making for at least part of the rules package. Finally, there is the question of whether the grant or authority would retroactively apply to the enjoined rules even if they were enacted properly.

    Lots of hurdles to overcome before legislative action overturns the judge’s work.

  119. Note to self: Always cite to material written by any and all judges that I don’t want hearing my case. This will cause automatic recusal.

  120. “For a recusal, you need a specific comment on your case.”

    Again, in most cases I agree. This is the exception where the Judge is part of the litigation as she was instrumental in causing the rules to be proposed. Life is not black and white, and this ain’t judge shopping…

  121. “TJ, Consider a case where KSR issues are involved. Since the S. Ct. added “flexibility” to the obvious mix in an area that is, after all, primarily subjective, how would a judge who has preconceived views on obviousness and is not patent-friendly to begin with be able to offer blind justice if, in her/his heart s/he had preexisting personal bias. ”

    We agree, this has nothing to do with the Moore facts in this case.

  122. Anon-

    In the average case we agree on the recusal rules and former professors. This is not the average case and Moore has generated animosity in the patent community on exactly the issues before the court – that matters. If she were to overturn Cacheris her name would be mud to me and many practitioners – who might argue before her – forever. If many if not most of the lawyers think you should recuse, then the reasonable lawyer thinks you should (I hope you are not arguing my position is unreasonable). Or shall we take a survey?

  123. Proposed IDS Rules:

    Are the proposed IDS rules now on stand-by until the appeal is settled? Or, might the PTO still implement a subset of the IDS rules? The proposed rules did pass the OMB, if memory serves me correctly.

    If I was Toupin, I’d test the waters with a strictly “procedural” form of the IDS rules, in accordance with an interpretation of Tafas v. Dudas favorable to the PTO.

  124. TJ, Consider a case where KSR issues are involved. Since the S. Ct. added “flexibility” to the obvious mix in an area that is, after all, primarily subjective, how would a judge who has preconceived views on obviousness and is not patent-friendly to begin with be able to offer blind justice if, in her/his heart s/he had preexisting personal bias.

    For example, if you asked 100 totally unbiased judges off the street to opine on an on-the-fence obviousness-issue, in theory you’d statistically get a 50/50 result.

    So where is blind justice? In this KSR example, the federal circuit had it right, because teaching suggestion motivation TSM required some objective evidence one way or the other.

    So I ask, “Ok, but why is it a good thing for anybody other than infringers to have a federal circuit judge on the bench who does not like strong patents, and is against continuations which are of fundamental importance for an inventor to claim what s/he has invented and is entitled to?”

  125. “Are you sure about that? I mean, why have a trial if the judge already has a result-oriented decision in mind?”

    Because it’s not really result oriented, it’s “my point of view on this subject is” oriented.

  126. TJ, “For better or worse, litigants are not entitled to judge-shop just because judges’ votes are in some cases predictable.”

    Are you sure about that? I mean, why have a trial if the judge already has a result-oriented decision in mind? That does not seem to be blind justice.

  127. I think TJ’s generally right.

    All judges arrive on the bench with preexisting opinions about what the law is or should be on certain things.

    Several of the Supreme Court Justices are former professors, as is Judge Moore. It’s hard to be a professor of patent law without developing some strongly held views about patent law and without writing some of those down in in law review articles. If you’re an expert in something but have no opinions about it, there’s probably a part of your brain that doesn’t work.

    Anecdotally, Judge Moore’s law review articles are cited to the Federal Circuit and other courts fairly often, and much more so since she became a judge. One issue she’s written a lot about is claim construction, which is relevant somehow in almost every single patent case.

    The recusal standard is a bit fuzzy, but I think it’s generally unreasonable to expect judges to recuse based on their writings during their academic careers, even when those writings relate directly to the subject matter of the case. If Judge Moore had actually participated in the drafting of the rules, if the PTO had sought her advice at the time, or if she testified in Congress about it before becoming a judge, then yes, she should recuse. If, instead, the issue is just that she wrote a paper once that’s directly relevant, then I think the answer is no.

  128. Ok, but why is it a good thing for anybody other than infringers to have a federal circuit judge on the bench who does not like strong patents, and is against continuations which are of fundamental importance for an inventor to claim what s/he has invented and is entitled to?

  129. I think that comment was directed to me. Au contraie, most cases do have “the Judge’s writings” in their briefs, they are called citations to cases. And where there is an intra-circuit tension in appellate cases, you can pretty much pick which line the panel is going to come down on by seeing who is on it. Doesn’t mean you get to DQ the judges who wrote the cases that you don’t like. Nor do you DQ the judges who dissented from the cases you do like. Nor if they gave speeches on those cases. For a recusal, you need a specific comment on your case. For better or worse, litigants are not entitled to judge-shop just because judges’ votes are in some cases predictable.

  130. Just curious, your arguments seems a bit disingenuous. Most cases do not have the Judge’s writings in the briefs supporting one side or the other…

    She may turn out to be a phonemenal judge, or not, but that is irrelevant to her need (in my opinion) to recuse herself in this case.

  131. “Judge Moore is not patent-friendly, e.g., she is very much against allowing ‘continuations.’ Why shouldn’t she recuse herself from the federal circuit bench?”

    Because litigants are (for better or worse) not entitled to a judge who is free of opinions. They are entitled to a judge who does not have a very specific and announced biased on the precise issue in their case.

    For example, if I am a habeas petitioner, I would dearly love it if various conservative judges recused themselves because they are not “habeas-friendly”. I am not entitled to it.

  132. TJ’s, “People who say this is the “right thing to do” and praying for a recusal are being a little self-serving here.”

    Veteran Attorney’s, “Even if there is an argument that J. Moore does not have to recuse herself, it would be unseemly if she didn’t. Regardless of what you make think of her rulings, or her ability as a judge, let’s give her the benefit of the doubt on this one and assume she’ll do the right thing.”

    What’s wrong with self-serving, and serving your client’s interests?

    I recall that Judge Moore is not patent-friendly, e.g., she is very much against allowing “continuations.” Why shouldn’t she recuse herself from the federal circuit bench?

  133. “Well, your latest argument speaks for itself, and needs no rebuttal.”

    We can agree to disagree on what statements or actions a Judge can or should take, you seem to agree with Scalia on what he can/should say. I may think he has crossed the line…

  134. Well, the argument that Judge Moore needs to disqualify herself is “meritless”, though I’ll concede it is not absurd. Saying the PTO citing her article means she needs to recuse herself is like saying that the PTO citing a dissenting opinion by her means she has to recuse herself. Or that any time a litigant cites Justice Scalia’s book on statutory interpretation means that he has to recuse himself; or Breyer and Active Liberty; or Posner and his many works. Not the way it works.

    People who say this is the “right thing to do” and praying for a recusal are being a little self-serving here.

  135. Leopold – no problem. Its a pet peeve of mine when litigators call others arguments “meritless” or “absurd”.

  136. “your parsing of the rules could easily lead to disbarment…”

    Well, your latest argument speaks for itself, and needs no rebuttal.

    I’m pretty sure I didn’t call you names.

  137. Even if there is an argument that J. Moore does not have to recuse herself, it would be unseemly if she didn’t. Regardless of what you make think of her rulings, or her ability as a judge, let’s give her the benefit of the doubt on this one and assume she’ll do the right thing.

  138. The paper you cite led to the case. Mr. Bloom, methinks thou dost protest too much. You must be a partner and don’t like to hear how wrong you are…

    If Moore believes continuation practice is an abuse, that is enough by itself, her public statement certainly gives “me” a reasonable apprehension of bias.

    When you add the fact that her article did lead to, and was cited by the Office as a reason for, creating the rules that are the basis of the case that also violates the Canon.

    You really think the Canon would be applied by the ABA so that an attorney in a case could hear that case when he/she became a judge (a reasonalbe extension of your insane argument).

    You seem to differentiate between the cause of action on Appeal versus the underlying subject matter (an insane way to approach legal ethics, as the subject matter cannot be separated). I guess if the killer of the Judge’s spouse appears before the Judge on Appeal the Judge can rule on the constituionality of the the death penalty in that case, as he/she is not ruling on the merits? You are a crazy man…

    Finally, your silly rebuttal (remember, you started calling “me” names, you little …) does not seem to take into account the higher standard of the Judge’s conduct versus yours, where your parsing of the rules could easily lead to disbarment.

  139. “I really think Canaon 4(A)(1) applies to conduct prior to becoming a judge, especially public statements and conduct directly leading to the case before her.”

    Absurd. First, Canon 4(A)(1) clearly cannot apply to conduct prior to becoming a judge. Second, she didn’t make any public statements about the case, because there wasn’t a case. Third, what conduct “directly led” to the case? Stating an opinion about problems with patent pendency? Ridiculous. Fourth, the canon you cite prohibits activities if they cast reasonable doubt on the judge’s capacity to act impartially. The fact that you have doubts doesn’t make those doubts reasonable. Again, having an opinion about patent law doesn’t disqualify you from judging whether the patent office has authority under current law to promulgate this particular set of rules.

    What specific conduct or statements lead you to believe that Judge Moore is not capable of acting impartially in this case?

  140. ‘”Wouldn’t Moore have to recuse herself?”

    On what basis?’

    Her work is cited in the Claims and Continuations FR Notice at page 46718, and in one of the Pubpat amicus briefs (#228 on Justia, page 10).

    From FR 46718:

    “Commentators have noted that an applicant’s use of the unrestricted continuing application and request for continued examination practices may preclude the Office from ever finally rejecting an application or even from ever finally allowing an application. See Mark A. Lemley and Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64 (2004).”

    From Pubpat’s brief:

    1.The Final Rules Will Curtail Abuse Of Continuation Applications Continuation applications provide applicants who have had their patent applications finally rejected the ability to force the USPTO to revoke the finality of the rejection simply by paying a fee for a new filing. Thus, as one reference cited by the administrative record in this case found, it is impossible for an examiner to ever actually finally reject a patent application so long as the applicant has sufficient financial resources to keep paying for continuation applications. Final Rules at 46718 -19 (citing Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations , 84 B. U. L. Rev. 63 (2004)). This results in USPTO examiners who have repeatedly rejected an application facing the possibility of an endless stream of continuation applications being filed by the applicant that “may well succeed in ‘wearing down’ the examiner, so that the applicant obtains a broad patent not because he deserves one, but because the examiner has neither incentive nor will to hold out any longer.” Lemley & Moore, 85 B. U. L. Rev. at 65. Such “wearing down ” of examiners is an abhorrent abuse of continuation applications.

  141. By the way the opinion said that a practitioner had no obligation to search. Does this not mean, therefore, that the OED CANNOT discipline an attorney for failing to reand an ENTIRE reference that is submitted in an IDS. The reading is, in essence, a search of the document for ALL relevant material. In essence could it be said that the OED would be seeking to undermine the authority of the Federal Courts by implementing the provision that practitioners must read the entire reference that is submitted in an IDS?

  142. This is just to buy the people time while they looks for other jobs. These individuals who advanced these unlawful activites of the USPTO must be held accountable.

  143. It should disqualify her – what ethics rules are you reading?

    Judges are held to a higher standard than just us regular old lawyers, please see the Code of Judicial Conduct at the ABA. I really think Canaon 4(A)(1) applies to conduct prior to becoming a judge, especially public statements and conduct directly leading to the case before her. I guess she can argue that, but I would certainly not be her counsel, as I think she would lose…

    Can you really argue she does not have a dog in this fight?

    “A. Extra-judicial Activities in General. A judge shall conduct all of the judge’s extra-judicial activities so that they do not:

    (1) cast reasonable doubt on the judge’s capacity to act impartially as a judge;

    (2) demean the judicial office; or

    (3) interfere with the proper performance of judicial duties.”

  144. It should disqualify her – what ethics rules are you reading?

    Judges are held to a higher standard than just us regular old lawyers, please see the Code of Judicial Conduct at the ABA. I really think Canaon 4(A)(1) applies to conduct prior to becoming a judge, especially public statements and conduct directly leading to the case before her. I guess she can argue that, but I would certainly not be her counsel, as I think she would lose…

    Can you really argue she does not have a dog in this fight?

    “A. Extra-judicial Activities in General. A judge shall conduct all of the judge’s extra-judicial activities so that they do not:

    (1) cast reasonable doubt on the judge’s capacity to act impartially as a judge;

    (2) demean the judicial office; or

    (3) interfere with the proper performance of judicial duties.”

  145. “Her articles were cited by the Office publicly as a specific reason for the rules changes, and in those article she specifically advocated some of this nonsense.”

    Did she specifically advocate the PTO exceeding their authority? Maybe (I haven’t read the articles), but I doubt it.

    Having an opinion as to the need/desirability for any of the particular rules shouldn’t disqualify her to rule on whether (1) the PTO has substantive rule-making authority and (2) whether the rules are substantive.

  146. Her articles were cited by the Office publicly as a specific reason for the rules changes, and in those article she specifically advocated some of this nonsense.

    She and Lemley worked together…everyone knows this, right?

  147. Wouldn’t Moore have to recuse herself? If she does not maybe we can get someone to bring her up on an ethics violation…what bar is she a member of now…

  148. True, I do not have time to look, but the House version had it and the current Senate bill does not (I think).

    The Senate bill differs substantially (see patentdocs.us on both) and is likely to be either revoted on in the House, or if simialr enough might win out in conference.

  149. Even if the patent reform legislation passes and includes a grant of rulemaking authority to the PTO, I’m pretty sure that the PTO would have to start the rulemaking process over

  150. go to thomas.loc.gov and search Patent reform. 1908 on the House side and 1145 in the Senate

  151. Not the current Leahy bill, Dennis. The substantive rulemaking authority was out of the last bill I saw. Even the Seante does not trust these guys.

    Please double check this…

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