Tafas v. Dudas (Fed. Cir. 2008).
- 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.
- 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.]
ek6 man,
Dude, you got to get to law school-you got a-1 patent litagator written all over you. If I ever have a infringement or any other patent problem I suspect I will in the future,I would hire you in a new york minute.If anyone could change white to black or vise-versa in front of a judge panel or jury-you the man-another Ray Niro diamond-in-the rough. You’ll have to be contingency fee based so us divorced inventors can afford you, but it will be worth your while. Get to law school-that’s an order.
Hmmm, I wasn’t aware of that. I mean, I was sure you have to cancel the claims sure, but I didn’t realize that preempted rejoinder, I guess they have to just be “withdrawn” for it to apply. I was pretty sure that this, in some form, goes on though. Maybe it’s not “rejoinder” so much as another situation where the claims are pulled back in. I’ll have to look into this more later. But in any case, maybe you’re right, maybe that takes away any smidgen of unfairness the rules might have had. Got a few complicated cases to go out here this evening gotta finish writtin’ up.
And nah, that’s not more complicated than it has to be if that’s how complicated it takes for you to understand why the rules are drafted precisely the way they are with each and every word or punctuation as carefully laid as they could be while still preserving some semblance of being concise. It’s a rather complicated mess trying to draft rules that will accomplish the goals of the office while still preserving the old ways the best they could.
I’m outta here for awhile, got lots to do tonight so I can go places tomorrow etc.
6k, you’re making this a whole lot more complicated than it has to be.
“The only really unfair thing about the rules, is what happens if the office makes a restriction, you file a DIV, continue the DIV, RCE the DIV, and then the office rejoins the DIV lolz.”
Another red herring, e#6k? You need to cancel the claims from the parent when you file a DIV, or refrain from prosecuting the species before the generic under In re Berg. 🙂
From FR 46732:
“If applicant cancels all of the claims directed to a non-elected invention before rejoinder occurs and files a divisional application, the restriction requirement will not be withdrawn and the non-elected claims that are now canceled will not be rejoined. This will preserve applicant’s rights under 35 U.S.C. 121 and § 1.78(d)(1)(ii). See MPEP § 821.04(b).”
Just because you allege that they fail by their very wording does not mean that they fail by their very wording.
“though I suspect it may not be of great importance because it would only give you a free RCE in a DIV after you filed 1) a CON of the DIV and 2) an RCE of the CON, by which time the proceedings in the DIV would likely though not necessarily be already resolved.)”
You still don’t get it. We’re talking about exempting the instant application from being required to file a petition, not creating an exemption for another application down the line (DIV2, CON3, CON4, DIV3, CON5 etc …) to have an RCE based on our applying this rule to CON2. The rules must be applied specifically, as written to every application. Not applying the rules to one case and assuming based on that application of the rules to that one case that another case magically gets the ability to file an RCE sans pet. to be proper.
The only things that you and I are agreeing on is that 1. I may be right (which in fact I am) and 2. that the rules are a bit wordy and hard to understand for some people. Upon inspection of your comments however I fear that your greatest misunderstanding of them may stem from the fact that each section 1, 2, 3 of 114f is a new sentence with i’s ii’s and iii’s just spread around them. Thus, what you’re left with is a bit confusing because you feel like the “not including…” portions apply to the iii portion rather than to the whole instant app. Perhaps you’d have a case for having them rewrite those exceptions as new sentences but that seems like a bit much trouble over something that can already be explained just fine.
Just so that we’re undeniably on the same page I’ll make you a little diagram of a fairly complicated case.
APP>DIV1>DIV2>DIV3>CONA>CONB>RCE0 an application split up 4 ways (3 unrelated inventions split off) and then has 2 con’s filed with the second one being RCE’d
DIV1>CON1>CON2>RCE1 Div one has 2 con’s filed and con2 gets RCE’d
DIV2>CON3>RCE2>CON4 Div two has 2 con’s filed and con3 gets RCE’d
DIV3>DIV4>DIV5>DIV6>DIV7>CON5>RCE3 Div three gets split into 5 species, proceeds with the first species, has a con filed and then RCE’s the con though Div 3 still has another CON available should it be needed.
DIV4>CON6>RCE4 Div 4 only has a CON filed and RCE’s the con though Div 4 has a con should it be needed.
DIV5>RCE5 Div 5 didn’t need to be CON’d and just RCE’d, though it could CON twice more if so desired.
DIV6> Div 6 didn’t require any RCE or CON’s, but could do one RCE and 2 cons if desired.
DIV7>CON1>CON2>RCE6>DIV8 Div 7 was a bit complicated and required 2 con’s and an RCE, further the claims are amended to include a product/method of manufacture leading to DIV8.
DIV8>RCE7>CON1>CON2> Div 8 had an RCE filed then two con’s.
The above chain would be proper according to the rules. Perhaps looking at RCE2 and/or more importantly RCE6 helps you understand why the rules are complicated, and perhaps more importantly, why the “not including any nonprov…” is included at the end of every section of 114f (to ensure RCE7 doesn’t count against RCE6’s being proper). Perhaps even more importantly you see how, if nothing else, the new rules encourage applicants to show us the actual different inventions in an application (or to simply file separate apps). And they do this by encouraging them to file suggested restriction req’s by giving the hope of securing more RCE’s/CON’s in the future. The only really unfair thing about the rules, is what happens if the office makes a restriction, you file a DIV, continue the DIV, RCE the DIV, and then the office rejoins the DIV lolz.
Also, I used A and B for the first two con’s in the chain before I thought about using numbers for the rest of the cons.
“And do you also think that that phrase exempts all CON’s of the DIV in ii part 2? Ridiculous. The whole argument is ridiculous. Come on man. You really should read link to uspto.gov page 46738 again.”
In my critical notes on 1.114(f)(2)(ii), I have a little “oops” in the margin*, so you might be right (though I suspect it may not be of great importance because it would only give you a free RCE in a DIV after you filed 1) a CON of the DIV and 2) an RCE of the CON, by which time the proceedings in the DIV would likely though not necessarily be already resolved.)
6k, the new Rules that were enjoined start on page 46835, under the heading “PART 1 – RULES OF PRACTICE IN PATENT CASES”. And you are correct in my view, that the Federal Register Notice at page 46738 says something very different from what the Rules at page 46841 say. This was the whole point of the web pages, that the PTO thinks (from e.g. the PowerPoint presentations and the Federal Register Notice) that the Rules (as promulgated in 37 CFR) operate in one way, but if you analyze the Rules (as promulgated in 37 CFR), then “almost incredibly” one will likely see that “they fail by their very wording to achieve the effects described by the USPTO in the Federal Register notice, the FAQs, and the public PowerPoint presentations which interpret them”, as indicated here:
link to nipra.org
*my margin notes at times poke fun at PTO attitudes or oversights… 🙂
Have a good weekend, 6k. I’ll try to e-mail Patent.Practice early next week, and will likely bcc you.
Nah, I just threw ya out a red herring because the explanation for that part is so simple I wanted to try to help you not look any worse. Alright look, it says “any other application” that claims the benefit of the divisional application, “not including” (i.e. to not include) any nonprovisional application that satisfies the conditions of being a proper DIV, CON or CONw/petition (OF THE INSTANT APPLICATION). I.e. this is exempting any RCE filed in a DIV (what would be DIV2? in your example) that spawns off of CON1 or CON2 (rather than the parent I), and all of “DIV2″‘s children CON’s (CON3? and CON4?), from counting as the RCE in DIV1’s little CON1/CON2 family. Because otherwise we’d have to count them as “any application that claims benefit of DIV1”. So, the specific exception is put in.
This is here to protect you when we make a DIV in a CON1 or CON2 case, so that those DIV’s can have RCE’s too. It’s not there to exempt DIV1’s own CON’s lolz. Also, noticably, this is why smart attorney’s were gearing up to trying to “force” as best they could, restriction req’s.
What should have been your biggest tip-off? I would say the preceding i and ii sections use of the exact same phrase. Or do you think that phrase exempts all CON’s of a parent when considering i from counting as an RCE’ed case? And do you also think that that phrase exempts all CON’s of the DIV in ii part 2? Ridiculous. The whole argument is ridiculous. Come on man. You really should read link to uspto.gov page 46738 again. This time, put your glasses on around the time it says “Section 1.114(f)(1) permits filing of a single request for continued examination without a petition under 1.114(g) in any one of applications “A”, “B”, or “C” ok? Read the part just under that that tells about how that “exception phrase” (not including any nonprovisional application that satisfies…) is interpreted in f1, now, keeping that in mind, re-read 1.114f3. It’s the exact same phrase, used the exact same way. Here, you’re a lawyer, let me hold your hand a bit and cite you some line no.’s and include some ()’s. Page 46738, 2nd column, line 61-64, read lines 50-70? for context, and read the whole page for even better context. Ok, now that you’ve read it, you see that in the explanation for fi part 3 it says not including divisional application “D” and its continuation applications “E” and “F” that spawned off of the application that is in question (in that case the parent “A”). Just because 46738 didn’t give you a specific breakdown for 1.114f3iii in column 3 is no excuse for you to go misconstruing phrases that they just got through using TWICE to designate a specific thing EXPLICITLY.
Armed with a reference, line no’s and ()’s I’m confident you will now understand rule 1.114f3iii. If you STILL have trouble understanding, I’m not sure there’s anything else I can do, we’ll have to take it to appeal.
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.
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.
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.
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.
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.
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
“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.
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).
Many, even most, Examiners do a great job. This is a management issue…
“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….]
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.
“(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)”.” (<<
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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))?
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”.
“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.
“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.
“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.
“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.
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.
…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.
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.
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.
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 $?
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.
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
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.
“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
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.
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.
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.
“If 6k is a real examiner”
Yes, Examiner#6K is a real examiner, and I assume e#6k is the same as Examiner#6K.
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.
“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.
“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.]
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.
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.
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.
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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. (<<
“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.
“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.]
“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.”)
I’m not getting into this with you until you answer the question pds. Get to pointing out some substantive matter please.
“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.
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.
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.
Also, RA, stop trying to pass of a “rebuttable” presumption as a “presumption”, it’s bad form between gentlemen at discussion.
“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.
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.
“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.
agent007, I remember you hit the nail on the head about 5 months ago. Well done.
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. 🙂
“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.
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.
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.
Do you think Cisco and its now defunct anonymous Patent Troll Tracker blog and Microsoft are birds of a feather with similar agendas?
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.)
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.
“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.
“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.
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”
It took exactly two days for the PTO to complain to Congress about the Tafas decision:
link to uspto.gov
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.
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(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.
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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.
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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.
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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.)
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?
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.
“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.
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.
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 $$$!!!
–frequency of multiple independent discoveries is way overstated– I agree. Derivation is far more common
“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.
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.”
“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.
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.
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.